Are Physical Card or Chance Games Patentable?
Takeaway: A physical card or chance game may be patentable if it includes new or original physical elements, such as a new or original deck of cards but generally, “a set of rules for a game” are per se patent-ineligible
In In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016) (opinion by Judge Stoll, joined by Judges Hughes and Moore), the Federal Circuit agreed with the USPTO’s rejection of claims for “the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.”
In October 2010, Ray and Amanda Tears Smith filed a U.S. patent application for a method of conducting their “Pacific Rim Blackjack” card game, including steps such as having the dealer accept wagers from the players and shuffling and dealing the initial cards to each player and the dealer. In June 2011, the Examiner rejected the patent application for failing to satisfy the “machine-or-transformation” test from the case Bilski v. Kappos, 561 U.S. 593 (2010).
Despite the Smiths’ efforts in amending their claims, the Examiner continued to reject their amended claims directed to the physical version of the game, leading the Smiths to appeal the Examiner’s decision to the PTAB.
The PTAB found that the claimed method was directed to a set of rules for conducting a wagering game and therefore unpatentable for trying to claim a patent-ineligible abstract idea. Further, the PTAB explained that the manipulations of the deck of cards (e.g., shuffling, dealing) were conventional steps in playing a wagering game and were insufficient to transform the recited methods into patent-eligible subject matter.
In reviewing the claims, the Federal Circuit alluded that claims drawn to no more than “a set of rules for a game” are per se patent-ineligible but also emphasized that not "all inventions in the gaming arts would be foreclosed from patent protection under § 101.” The court provided any example of a potentially patent-eligible invention—a game using a new or original deck of cards might survive the second step of the two-step test of Alice.
The Alice ruling spelled the determination of patent eligibility as a two-part test: (1) determine whether the claims are directed to a patent-ineligible concept; and (2) determine whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application. The Federal Circuit affirmed the PTAB and the Examiner in rejecting the claims directed to the physical version of “Pacific Rim Blackjack” under the two-step test.
Had the “Pacific Rim Blackjack” been claimed as a computer-based game, the Federal Circuit most likely would have found that the mere inclusion of a conventional processor would be insufficient to transform the recited methods into patent-eligible subject matter, like in Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014).
Therefore, games in the physical realm should focus on new or original physical elements and games in the virtual realm should focus on how the game utilizes a computer system to achieve functionality not otherwise possible, or to solve a specific technological problem.
