In re: Trading Technologies
15-1664
Fed. Cir.Mar 10, 2016Background
- Applicants Ray and Amanda Tears Smith filed U.S. Patent Application No. 12/912,410 for a “Blackjack Variation” wagering game using real or virtual standard playing cards.
- Representative claim 1 recited steps: shuffle and deal physical cards, accept wagers, deal two cards to each player and dealer, define a “Natural 0” based on specific card pairs, resolve wagers, allow players at most one hit, prescribe dealer hit/stand rules, score hands 0–9, and resolve wagers by closeness to 0.
- The Patent Examiner rejected claims 1–18 under 35 U.S.C. § 101 as directed to an abstract idea (a set of rules for a card game); the Board affirmed using the Alice two-step framework.
- The Board found the claims are directed to an abstract idea (rules for conducting a wagering game) and that shuffling and dealing physical cards are conventional steps that do not supply an inventive concept.
- Applicants appealed to the Federal Circuit, which reviewed the § 101 decision de novo and affirmed the Board’s rejection.
Issues
| Issue | Plaintiff's Argument (Smith) | Defendant's Argument (Board/USPTO) | Held |
|---|---|---|---|
| Whether the claimed method is directed to patent‑ineligible subject matter under § 101 | Claim covers a concrete method using physical playing cards and thus is patent eligible | Claim merely defines rules for a wagering game (an abstract idea) | Court: Directed to an abstract idea (rules for a wagering game) |
| Whether conventional physical implementation (shuffling/dealing cards) supplies an inventive concept under Alice step two | Reciting physical playing cards makes the claim a practical, eligible application | Shuffling and dealing a standard deck are purely conventional and routine | Court: Conventional steps do not supply an inventive concept; claim ineligible |
| Whether the PTO’s 2014 Interim Eligibility Guidance is unlawful or binds the Court | Guidance exceeds § 101/Alice and should not govern rejection | Guidance is nonbinding PTO guidance; rejections are based on substantive law | Court: Challenge not properly before it; Guidance is not binding on the Court |
| Whether similar gaming inventions could be patent eligible | Argues novelty in game rules and physical aspects could be patentable | Board: must show inventive concept beyond abstract rules and conventional acts | Court: Leaves open that nonconventional gaming elements (e.g., new deck) might survive step two, but these claims do not |
Key Cases Cited
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (establishes Mayo framework for patent eligibility and implicit exceptions)
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014) (two‑step test for determining patent eligibility; conventional implementation insufficient)
- Bilski v. Kappos, 561 U.S. 593 (2010) (method of hedging risk held an abstract idea)
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (de novo review of § 101 issues)
- OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (business‑practice‑style claims found abstract)
- Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014) (methods of managing a bingo game held abstract)
- In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) (PTO guidance not binding on the court)