In Re: Smith
815 F.3d 816
Fed. Cir.2016Background
- Applicants Ray and Amanda Smith appealed the Patent Trial and Appeal Board’s rejection of claims 1–18 of U.S. Patent Application No. 12/912,410, titled “Blackjack Variation.”
- Claim 1 recites a method of conducting a wagering game using physical playing cards with specified shuffling, dealing, hand-evaluation, hit/stand rules, and a scoring system where outcomes are resolved based on closeness to 0.
- The examiner rejected the claims under 35 U.S.C. § 101 as directed to an abstract idea (a new set of rules for a card game); the Board affirmed using the Alice two-step framework.
- At Alice step one, the Board and court found the claims are directed to an abstract idea—rules for conducting a wagering/financial-exchange-type game.
- At Alice step two, the Board and court held the claimed recitation of shuffling and dealing physical cards are conventional, so the claims lack an inventive concept and remain ineligible.
- The court declined to address Applicants’ challenge to the PTO’s Interim Eligibility Guidance as not properly before the court.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims are directed to patent-eligible subject matter under § 101 | Claims involve physical cards and a concrete card game method; therefore patent eligible | Claims merely recite rules for a wagering game (abstract idea); physical-card steps are conventional | Claims are directed to an abstract idea (game rules) and are ineligible |
| Whether the physical-card limitations supply an "inventive concept" under Alice step two | Shuffling and dealing physical cards transforms the abstract idea into a patent-eligible application | Shuffling/dealing are conventional gambling practices and do not add inventive concept | Physical-card steps are conventional and insufficient to confer eligibility |
| Whether the PTO’s 2014 Interim Guidance is invalid/applicable to this appeal | Applicants argued the Guidance exceeds § 101 and Alice | PTO relied on Board rejection under § 101; Guidance not binding here | Court refused to consider challenge to the Guidance (not properly before it) |
| Whether similar gaming inventions could be patent eligible | Applicants suggested their claims are novel within gaming arts | Court acknowledged some game-related inventions (e.g., new deck design) might pass step two | Court left open that nonconventional gaming elements could be eligible, but these claims fail |
Key Cases Cited
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (establishes two-step test for patent-eligibility and limits on appending conventional activity)
- Bilski v. Kappos, 561 U.S. 593 (2010) (method for hedging risk found abstract; foundational on business-method eligibility)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (articulates the implicit exceptions to § 101 and the need for an inventive concept)
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (standard for de novo review of § 101 questions)
- OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (method for price optimization held abstract)
- In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) (agency guidance not binding on the court)