On March 10, 2016, the U.S. Court of Appeals for the Federal Circuit affirmed a Decision by the Patent Trial and Appeal Board (PTAB), holding that claims directed to a “Blackjack variation” card game are not patent eligible. This case breaks the USPTO’s tradition of granting patents for card games. The court in this recent case (In Re Smith, 2015-1664) found the claimed method for conducting a wagering game to be analogous to methods determined to be abstract ideas and not patent eligible under 35 U.S.C. §101 by the Supreme Court in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), and Bilski v. Kappos, 561 U.S. 593 (2010).
During the examination phase, the examiner concluded that, “an attempt to claim a new set of rules for playing a card game…qualifies as an abstract idea.” The Board applied the two-step test outlined in Alice and affirmed the examiner’s rejection of the claims. The Board concluded that claim 1 (see below) is directed to a set of rules for conducting a wagering game which constitutes an abstract idea. Applying step two of the Alice test, the Board concluded that shuffling and dealing cards does not add enough to the claims to make the claims patentable as significantly more than the abstract idea.
The Federal Circuit applied the same two-part test in its review of the Board’s Decision. The court concluded that the Applicants’ claims compare to other fundamental economic practices found abstract by the Supreme Court. The court agreed with the Board that a wagering game is a method of exchanging and resolving financial obligations based on probabilities created during distribution of the cards. The court compared this method of exchanging and resolving financial obligations to the Supreme Court’s decisions in Alice (method of exchanging financial obligations was drawn to an abstract idea) and Bilski (method of hedging risk was directed to an abstract idea) and determined that the method is an abstract idea.
The Applicants argued that the claims are nonetheless patent eligible because the claims require shuffling and dealing physical playing cards. Applying the second part of the test, the court determined that the claims do not contain and inventive concept sufficient to transform the claimed abstract idea into a patent eligible application because the steps of shuffling and dealing physical playing cards are purely conventional steps.
This case adds a new hurdle for card game patent applications, but the decision is narrow enough to leave hope for new Applicants. The court noted that claims directed to conducting a game with a new or original deck of cards could potentially survive part two of the Alice test. In addition, the court’s decision in this case was based on a claimed method of gambling (exchanging and resolving financial obligations based on probabilities created during the distribution of cards) being analogous to previous Supreme Court decisions such as Alice and Bilski.
This holding clearly does not exclude all card games from patent eligibility. Perhaps the way to work around this holding in drafting future card game patent applications is to avoid the financial language, and avoid claiming card games as a form of wagering (abstract idea). Going forward, card game patent drafters might think about claiming the method even more broadly by simply reciting the steps required to win the game.
A representative method claim:
Claim 1. A method of conducting a wagering game comprising:
a dealer providing at least one deck of…physical playing cards and shuffling the physical playing cards to form a random set of physical playing cards;
the dealer accepting at least one first wager from each participating player on a player game hand against a banker’s/dealer’s hand;
the dealer dealing only two cards from the random set of physical playing cards to each designated player and two cards to the banker/dealer such that the designated player and the banker/dealer receive the same number of exactly two random physical playing cards;
the dealer examining respective hands to determine if any hand has a Natural 0 count from totaling count from cards, defined as the first two random physical playing cards in a hand being a pair of 5’s, 10’s, jacks, queens, or kings;
the dealer resolving any player versus dealer wagers between each individual player hand that has a Natural 0 count and between the dealer hand and all player hands where a Natural 0 is present in the dealer hand, while the dealer exposes only a single card to the players;
as between each player and the dealer where neither hand has a Natural 0, the dealer allowing each player to elect to take a maximum of one additional card or standing pat on the initial two card player hand, while still having seen only one dealer card;
the dealer/banker remaining pat within a first certain predetermined total counts and being required to take a single hit within a second predetermined total counts, where the first total counts range does not overlap the second total counts range;
after all possible additional random physical playing cards have been dealt, the dealer comparing a value of each designated player’s hand to a final value of the banker’s/dealer’s hand wherein said value of the designated player’s hand and the banker’s dealer’s hand is in a range of zero to nine points based on a pre-established scoring system wherein acres count as one point, tens and face cards count as zero points and all other cards count as their face value and wherein a two-digit hand total is deemed to have a value corresponding to the one’s digit of the two-digit total;
the dealer resolving the wagers based on whether the designated player’s hand or the banker’s/dealer’s hand is nearest to a value of zero.