In Re: Marco Guldenaar Holding B.V.
911 F.3d 1157
Fed. Cir.2018Background
- Marco Guldenaar Holding B.V. (Appellant) appealed the Patent Trial and Appeal Board’s final decision affirming rejection of multiple claims of U.S. Patent Application No. 13/078,196 under 35 U.S.C. § 101.
- Representative claim 1 is a method of playing a dice gambling game: dice with one, two, or three faces marked, placing wagers on face-up outcomes, rolling, and paying payouts.
- Examiner and Board concluded claims were directed to the abstract idea of rules for playing a game (a method of organizing human activity) and lacked an inventive concept under Alice/Mayo.
- Appellant emphasized novelty in the dice markings (specific faces marked), arguing those dice were unconventional and provided “significantly more.”
- The Board treated claim 1 as representative; Appellant had not provided distinct substantive arguments for each dependent claim.
- Federal Circuit affirmed: the claims are directed to an abstract idea (wagering rules) and the only arguably unconventional aspect—die markings—constitutes printed matter not given patentable weight under § 101.
Issues
| Issue | Plaintiff's Argument (Guldenaar) | Defendant's Argument (USPTO/Board) | Held |
|---|---|---|---|
| Whether claims are directed to patent-eligible subject matter under § 101 | Claims recite a physical dice game and specially marked dice; markings and claimed dice are unconventional and amount to "significantly more" than an abstract idea | Claims are directed to the abstract idea of rules for playing a dice wagering game (method of organizing human activity); steps are conventional | Claims are directed to an abstract idea (rules for playing a dice game) — ineligible at step one |
| Whether claim elements supply an "inventive concept" under Alice step two | Marked dice themselves are inventive and transform the abstract idea into patent-eligible subject matter | The dice markings are printed matter (information) lacking a functional relationship to the dice substrate and therefore do not provide inventive concept | No inventive concept: printed matter cannot salvage eligibility under § 101 |
| Whether physical/mental nature of steps precludes abstraction | Physical gameplay steps mean claims are not abstract | Physical actions do not prevent a claim from being abstract; prior cases show physical operations can still be abstract ideas | Physical steps do not change the abstract nature; still ineligible |
| Whether Board erred in treating claim 1 as representative | Appellant argued dependent claims add limitations (e.g., electronic tumbler) and deserved separate analysis | Appellant’s briefing to the Board failed to present substantive, distinct arguments for the dependent claims; Rule 41.37 permits a representative claim decision | No error: Board properly treated claim 1 as representative given insufficient separate arguments |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (two-step framework for patent-eligibility and requirement that mere conventional activity does not supply inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) (establishing step-one/step-two framework and caution against patenting laws/abstract ideas)
- Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013) (scope of patent-ineligible subject matter: laws of nature, natural phenomena, abstract ideas)
- In re Smith, 815 F.3d 816 (Fed. Cir. 2016) (method of conducting a wagering game held an abstract idea; analogous to present dice-game claims)
- OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (claims directed to abstract ideas in non-technological contexts)
- Bilski v. Kappos, 561 U.S. 593 (2010) (business-method/hedging claims as abstract ideas; eligibility limits)
- AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010) (printed matter doctrine relevance to § 101)
- Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024 (Fed. Cir. 2018) (information-content limitations lacking functional relationship carry no patentable weight)
- In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) (printed matter given weight where functional relationship to substrate exists)
- Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (discussing when factual issues might arise in § 101, but not outcome-determinative here)