Changing a Game Risk/Reward Parameter Fails Patent-Eligibility at Summary Judgment: Bot M8 LLC v. Sony Corp. of America

A patent claim directed to adjusting an individual gaming machine control parameter (i.e., the risk/reward level) based on aggregate gaming machine results was held patent-ineligible at summary judgment under 35 U.S.C. § 101 and the Alice/Mayo test. Bot M8 LLC v. Sony Corporation of America, et al, No. C 19-07027 WHA (N.D. Cal., June 10, 2020.)

Background

The plaintiff Bot M8 sued defendant Sony for infringement of Bot M8’s Patents US 7,338,363 and US 7,497,777. Bot M8 moved for summary judgment on its infringement claims. Sony moved for summary judgment for invalidity of the patents under 35 U.S.C. § 101. The court identified claim 1 of the ‘363 patent as the remaining relevant claim.

The ‘363 patent discloses a method to adjust a controlling parameter of an individual gaming machine based on aggregate results from two or more gaming machines, and uses, as an example, two or more slot machines connected to a common server. In this manner “exciting gaming machines which give the game players incentive to play the game can be provided.” (‘363 patent at 2:41-45.)

Claim 1 of the ‘363 patent recites:

A first gaming machine for transmitting and receiving data to and from a server, comprising:

a specification value setting device that sets at least one specification vale as a control condition for game control;

a transmitting device that transmits data of a game result to the server;

a gaming machine determining device that determines a second gaming machine operated by a co-player;

a total result data receiving device that receives from the server data of a total game result achieved by the first gaming machine and the second gaming machine based on the data of the game result transmitted by the transmitting device;

a specification value determining device that determines a specification value based on the data of the total game result received by the total result data receiving device; and

a specification value renewing device that renews to replace the specification value set by the specification value setting device with the specification value determined by the specification value determining device.

Analysis

Under Alice step one, the Court held that claim 1 was directed to the abstract idea of updating game conditions based on past results. Initially, the court notes that the claim itself must “sufficiently capture the inventors’ asserted technical contribution to the prior art by reciting how the solution specifically improves the function of prior art. . . .” Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942, F.3e 1143, 1143, 1150-51 (Fed. Cir.2019) (emphasis added by the court).

Based on the specification, the abstract idea, in its most specific form is “how to increase or decrease the odds or difficulty of a gaming machine based upon the players’ winning or losses.” But, claim 1 does not actually teach how to increase or decrease the difficulty of the gaming machine based on prior art. How much do the two [players] need to win to increase the game parameter? How much do they need to lose to decrease it? When does the value get changed? Based on the specification, the goal is to increase player engagement. Changes could just as likely lose players’ engagement as increase it. A claim that doesn’t guide the artisan to the result does not “sufficiently capture the inventors’ asserted technical contribution to the prior art.” Id at 1151. Here, the claimed invention is directed to solving a human problem, not a technological one, and remains abstract.

Under step two of Alice, the court found no inventive concept to save the claim. The claimed invention uses only conventional computers and gaming machines. Transmitting data, determining a specification value and replacing a specification value are conventional computer tasks. Limiting claim 1 to a particular technological environment does not transform the application into a patent eligible application. Elec. Power Grp., LLC v. Alston S.A., 830 f.3d, 1350, 1354 (Fed. Cir. 2016). Performing standard industry practice on conventionally arranged, generic computer parts – even for the first time in the field – remains unpatentable. Alice, 573, U.S. 225-26.

Lessons for Practice

The claim here fails to explain how it changes the game parameters. A detailed algorithm, appearing in the claim, would have been the best chance of transforming this abstract idea to a patent-eligible invention. The court here further emphasizes that the claimed invention does solve a technological problem. but rather a human one. We patent practitioners need to specify the technological problems our inventions are solving.