An inventive concept allows an abstract idea to be patentable subject matter, but what facts are needed to allege such an inventive concept to survive dismissal? In Savvy Dog Systems, LLC v. Pennsylvania Coin, LLC, the Middle District of Pennsylvania considered whether allegations that a processor for a video game is as an inventive concept in initial pleadings were sufficient to survive a motion to dismiss under F.R.C.P. 12(b)(6). No. 3:19-cv-01470 (M.D. Pa. Apr. 1, 2020).
Plaintiffs Savvy Dog Systems, LLC sued Defendants Pennsylvania Coin, LLC and PA Coin Holdings, LLC for alleged infringement of U.S. Patent No. 7,736,233. Defendants filed a motion to dismiss under Rule 12(b)(6), alleging that the claims of the ‘233 patent are ineligible subject matter under 35 U.S.C. § 101. For a motion to dismiss, the Court accepts all factual allegations as true and determines whether there are sufficient facts pled to state a plausible claim.
The ‘233 patent is directed to a video game terminal and a game processor that incorporates elements of skill into an electronic game, satisfying state gambling laws that disallow games of chance. Claim 44 is representative and recites:
44. An electronic gaming system comprising:
an electronic game terminal including a touch screen display;a game processor for generating an interactive electronic game on the game terminal, the game processor configured for:
constructing a field having a plurality of elements for the interactive game display wherein each element includes a game symbol from a plurality of predetermined game symbols;
determining at least one winning combination for each play of the game;
testing the game field prior to displaying the game to the player to ensure that a winning combination more valuable than the determined winning combination is not generating inadvertently in completing the field;
automatically displaying an actual game to be played on the touch screen game display to a player prior to initiating activation of game play;
determining if the player has decided to play the displayed game; and
displaying an outcome resulting from play of the displayed game.
Under step one of the two-part Alice/Mayo test, the Court considered whether claim 44 of the ‘233 patent was directed an abstract idea. Defendants argued that claim 44 recites the abstract idea of playing a card game as a game of skill rather than a game of chance. The Court agreed, noting that claim 44 “does not create new technology [but] simply describes rules for playing a game….”
For step two of the Alice/Mayo test, the Court considered whether claim 44 recited an inventive concept, including whether “a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan.” Defendants argued that the “game processor” is merely a generic computer component and does not transform the abstract idea into an inventive concept. Plaintiffs alleged that a game processor that could insert skill into a game of chance was not conventional, well-understood, or routine at the time of filing of the ‘233 patent. Specifically, Plaintiffs alleged that there is a factual dispute about whether the firmware of the game processor is an inventive concept that satisfies 35 U.S.C. § 101.
To determine whether there are sufficient facts pled to state a plausible claim, the Court relied on Maxell Ltd. v. Huawei Device USA Inc., 297. F. Supp. 3d 668 (E.D. Tex. 2018). In Maxell, the Eastern District of Texas held that, viewing allegations in the plaintiff’s favor, a claimed invention directed to an improvement of a mobile handset is not a generic component performing conventional activities. The Court looked to the complaint’s pleadings that a game processor described in claim 44 was not conventional or routine and the oral argument explaining the specific technology to the Court. The Court denied Defendants’ motion, holding that there remained a question of fact of whether the game processor was an inventive concept, and this question of fact could not be determined at this early stage of litigation.
Lessons for Practice
Factual allegations are stubborn things, moving decisions on patent eligibility to later in litigation. Parties continue to refine their pleadings in light of courts looking for these factual allegations. In particular, courts are more closely considering the distinctions between the two steps of the Alice/Mayo test, providing an avenue for software claims that seem “abstract” at first glance. Drafting claims that emphasize the unconventional technological improvements, with ample description in the specification to explain the specific technology, can provide the factual allegations to survive dismissal.