Following Judge Lourie's plurality opinion in the recent CLS Bank case heard en banc by the Federal Circuit, the court in Planet Bingo v. VKGS, No. 1:12-CV-219 (W.D. Mich. Aug. 19, 2013), held that claims directed to a computerized bingo game were not patent eligible under 35 U.S.C. § 101. Specifically, the claims of U.S. Patent Nos. 6,398,646 and and 6,656,045 were directed to “managing a Bingo game while allowing a repeat player to play the same sets of numbers in multiple games of Bingo” and “storing preselected Bingo numbers, which allows players to play the same sets of Bingo numbers in multiple sessions.” The court held that these claims were directed to an abstract concept and granted the defendant's motion for summary judgment of invalidity.
The court had previously denied a motion for summary judgment of Section 101 invalidity, saying that the defendant had a strong argument, but that performing claim construction before deciding the patent-eligibility issue would be helpful. The court then performed claim construction, and also invalidated certain claims of the patents-in-suit as indefinite under 35 U.S.C. §112(b). The defendant renewed its motion based on Section 101, which the court this time granted.
The court began its analysis by looking for the proper legal test for patent-eligibility, which was obscured by the “Federal Circuit's own confusion on the matter.” Considering the various CLS Bank opinions, the court discussed whether to select what the court referred to as Judge Lourie's “Integrated Approach” test, or what the court called Chief Judge Rader's “Meaningful Limitations Approach.” Under Judge Lourie's test, the court would consider the claim as a whole and look for an “inventive concept” that went beyond “the mere recitation of a disembodied fundamental concept,” and that constituted “a genuine human contribution to the claimed subject matter.” Chief Judge Rader's test, in contrast, would look at the claim element-by-element to determine “whether a claim includes meaningful limitations restricting it to an application, rather than merely an abstract idea.”
Judge Lourie's approach, in the view of the present court, “accurately reflects the current state of Supreme Court jurisprudence.” Under Supreme Court precedent, “claims must be considered as a whole when assessing patent eligibility.” Chief Judge Rader's test, which would allow any structural limitation limiting a claim's scope to confer patent eligibility, essentially amounts to the machine-or-transformation test, which the Supreme Court has said is not a dispositive test.
In adopting Judge Lourie's approach, the court addressed the concern (voiced by Circuit Judge Moore in CLS Bank) that numerous issued patents would be invalidated. The court disagreed that all business methods, software, and telecommunications patents would be invalidated. Further, the court approvingly quoted commentators who have “written about the need to use § 101 to reign [sic] in the broad number of software patents currently being issued.” The court thought that “there is nothing inherently wrong with invalidating current patents which cover unpatentable subject matter and should not have been issued in the first place.”
Applying Judge Lourie's approach to the instant claims was not a difficult exercise:
all of the method claims recite a computer-aided method for playing the game of Bingo which allows for the storage of a player's preferred sets of Bingo numbers, the retrieval of one such set upon demand, and the playing of such a set, while simultaneously allowing a Bingo operator to track these sets and verify winning numbers.
Accordingly, it was plain that “each method claim encompasses the abstract idea of managing/playing the game of Bingo.” The claims did not recite “additional substantive limitations” relating to Bingo “so that each claim does not cover the full abstract idea itself.” In particular, use of a computer was not in additional substantive limitation. Indeed, these claims could of been carried out using a pen and paper.
Citing dicta in Research Corp. Technologies, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), the patent owner argued “that the Court must take into account the commercial success of the invention for the abstractness analysis.” However Research Corp. provided no support for this proposition, and the court could not “find any instance where the Supreme Court has ever indicated that commercial applicability plays a role in determining abstractness.”
Turning to the system claims of the patents-in-suit, the court found that they “recite the same basic process as the method claims.” Therefore, the system claims were unpatentable under Section 101 for the same reasons as the method claims. Moreover, none of the dependent claims are patentable because they were all nothing more than “slight variations on the independent claims.”