Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

In Re: Marco Guldenaar Holding B.V., Appeal No. 2017-2465 (Fed. Cir. Dec. 28, 2018)

The Federal Circuit affirmed the final written decision of the Patent Trial and Appeal Board (“PTAB”) finding claims directed to a dice game ineligible for patenting under 35 U.S.C. § 101.  The case is more remarkable for the concurring decision, discussed below, than the holding.

The patent application related to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.”  The novelty of the claimed invention asserted was the markings on the dice, which had only particular faces marked. The Board affirmed the patent examiner’s rejection of certain claims as being directed to patent-ineligible subject matter under § 101 as well as obvious under the printed matter doctrine.

The Court recited the two-step framework to determine whether claimed subject matter is patent-eligible set in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).  The Court held that Marco’s claimed “method of playing a dice game” was directed to a method of conducting a wagering game, with the probabilities based on dice rather than on cards and, therefore, directed to an abstract idea.

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Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Cristin Wagner