Playing croquet with live flamingos and hedgehogs is undoubtedly novel, but is it patentable?1 What if those flamingos and hedgehogs were following instructions processed by a computer? The U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International and its successors may feel like a “very difficult game”2 of managing a flamingo-mallet to those looking to file new patents in the gaming industry — especially video games.
And like Wonderland’s oft-wandering hedgehog balls, the two-step framework for patent eligibility under Section 101 of the Patent Act sometimes seems fraught with uncertainty in its course and outcome. This article aims to provide a brief strategy guide from recent court decisions — some of which cleared the Alice wicket and some of which rolled astray in the end. While it, like any strategy guide, cannot guarantee success, understanding the rules can improve a patent applicant or patent owner’s chances of victory in the end.
Section 101 of the Patent Act states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Patent eligibility is determined under the two-step framework of Mayo Collaborative Services v. Prometheus Laboratories Inc.3 and Alice.4
First, a court must determine whether the claims are directed to a patent-ineligible concept, such as abstract ideas. If so, the court must then consider the elements of each claim both individually and “as an ordered combination” to determine whether the elements “transform the nature of the claim” into a patent-eligible matter.5
For video games, this framework alone may not provide the clearest path to victory. But recent examples, including McRO Inc. v. Bandai Namco Games America Inc. and PalTalk Holdings Inc. v. Riot Games Inc., in which patents passed the Alice test, and RecogniCorp LLC v. Nintendo Co., In re Smith, In re Marco Guldenaar Holding BV, and iLife Technologies Inc. v. Nintendo of America Inc., in which patents were held ineligible, can help patent owners navigate the map to victory and provide lessons for patent owners.
In McRO,6 the U.S. Court of Appeals for the Federal Circuit held that patents directed to automatic computer synchronization and manipulation of animated facial expressions were not directed toward an abstract concept. The McRO patents explained that, in the prior art, a human animator would subjectively identify facial movement and map the movement to keyframes to match the digital model’s mouth with the shape a human mouth to mimic the look of natural speech.
According to McRO’s patents, this approach required extensive work by an animator who would have to subjectively identify facial sequences and manually alter the animations by adding the appropriate keyframes. McRO’s patent claimed programming rules to automatically set the keyframes at the correct place in the animation to depict more realistic facial patterns during speech.
Although the district court found that McRO’s patents were ineligible under Alice, the Federal Circuit reversed, holding that the district court oversimplified the claims by failing to account for the specific requirements of the claims. The Federal Circuit cautioned that courts “must look to the claims as an ordered combination, without ignoring the requirements of the individual steps” at both steps of the Alice framework.7
In McRO, the claims recited a combined order of specific rules that rendered information into a specific format that is used to create a specific desired result. The fact that the result may not be a tangible product did not preclude patentability under Section 101, because in McRO, the underlying concern was “not tangibility, but preemption.” Because the claims were directed to a specific process, the court found they were patent eligible and did not preempt all future development in automatically animating characters.
Similarly, in PalTalk,9 a district court held that patents directed to a method of providing group communications to several host computers connected via a network, such as for multiplayer gaming, were patent eligible. The district court rejected arguments that the patents used computers "merely as a tool,” finding that the claimed solution was specifically directed to technical challenges, like “reducing the overall message rate and reducing latency,” unique to the virtual world.10
Because the claims were “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” the district court found the claims patent eligible under step one of Alice.11 Specificity and solving unique software problems underlie the courts’ eligibility findings in both McRO and PalTalk. Prospective patent owners must balance between putting enough specificity in their claims to comply with the Alice framework, yet also cover the full scope of the invention to prevent design-arounds by competitors.
As with gaming, examining the pitfalls, traps and mistakes of past losses can guide you to litigation success in the future. In RecogniCorp,12 the Federal Circuit found that, unlike McRO’s patent-eligible facial image claims, RecogniCorp’s patent directed to building “composite facial image[s] using constituent parts” was ineligible under Section 101.13 RecogniCorp alleged that Nintendo’s Miis — avatars created by players to visually represent them in various games — infringed RecogniCorp’s patent directed to breaking down facial features into element codes, which it could use to reconstruct the avatar image using a mathematical formula.14
On appeal, the Federal Circuit held that the claims were “directed to the abstract idea of encoding and decoding image data” and had “no material difference” from other patent-ineligible claims directed to transforming information, even though they included a mathematical formula.15 The court emphasized that RecogniCorp’s claims were not directed to an abstract idea merely because they included a mathematical formula, but rather because they only transformed data from one form to another without including an inventive concept.16
For example, the Federal Circuit explained that the claims did not even require the use of a computer, and thus the invention could be practiced by a human, such as verbally or with a telephone. Such generalized claims failed to meet the inventive concept threshold of Alice step two thus were not patent eligible.
Although the above examples deal with electronic data processing in gaming, the Federal Circuit has also considered the patent eligibility of gameplay mechanics. In Smith,17 the Federal Circuit held that a patent application directed to rules for playing a gambling game covered only abstract rulesets supplemented by conventional shuffling and dealing a standard deck of cards.
The Federal Circuit held that these claims were directed to fundamental economic practices of wagering similar to patent-ineligible “exchanging ... financial obligations based on probabilities created during the distribution of cards.”18
While the claims at issue were found to be patent ineligible, the Federal Circuit clarified that “not ... all inventions in the gaming arts [are] foreclosed from patent protection under §101” and that it “could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”19
Smith’s application, however, recited only purely conventional limitations of shuffling and dealing a regular deck of playing cards, which did not render the claims patent eligible.20
Similarly to the Smith case, the court in Guldenaar21 held that a dice-wagering game’s ruleset was directed to an abstract idea involving economic transactions based on probability. The Federal Circuit considered whether the dice markings claimed in the Guldenaar application rendered it patent eligible but found that the markings fell within the printed-matter doctrine that precludes eligibility.
The printed-matter doctrine generally stands for the principle that “claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight.”22 Because the patent owner’s patentability arguments turned on the markings on various dice faces indicating a player’s victory or losses, they fell outside the scope of patent eligibility under Section 101.23
Recently, in iLife,24 the U.S. District Court for the Northern District of Texas granted judgment as a matter of law — overturning a jury verdict — that a video game patent directed to a sensor that detected a body’s dynamic and static acceleration were unpatentably abstract. The patent owner alleged that defendant Nintendo’s Wii and Wii U, when used with certain games, infringed upon the asserted patent.
The court found that iLife’s patent was directed to the abstract idea of gathering, processing and transmitting information. Although the claims referred to specific data types, such as dynamic and static body accelerations, to generate new data, merely identifying data types was insufficient to make the claims nonabstract. Because the claims did not recite specific data processing for analyzing the information, the court found they were “essentially [a] mental process within the abstract-idea category” of Alice step 1.25
The iLife court additionally found that the claims did not contain an inventive concept, but rather recited only routine data collection, analysis and transmission steps. It rejected the patent owner’s argument that the specification described steps for distinguishing between “normal and abnormal accelerative events” and between other physical factors, such as “temperature, pressure, force, sound, light, [and] relative position,” that rendered the claims patent eligible.26
The court emphasized that such concepts “must be apparent in the claim language” to be considered when determining patent eligibility.27 Having found the patent to be directed toward an abstract idea without any further inventive concepts, the court found iLife’s claims ineligible for patent protection.
While RecogniCorp, Smith, Guldenaar and iLife illustrate some of the uneven terrain in obtaining patent protection for gaming-related technologies in the post-Alice landscape, McRO and PalTalk provide a set of wickets to guide patent applicants and owners through challenges related to patent-eligible subject matter in the gaming industry.
The quest toward patentable subject matter in the gaming industry is certainly not unachievable, even if not perfectly smooth. While each case turns on its own facts, and there may not be a clear shortcut to guarantee patentable subject matter in all cases, Alice’s ruleset can be approached like any other rulebook put into practice: with proficient understanding of the contours, ample preparation and a clear strategy.
1 See Lewis Carroll, Alice in Wonderland, Chapter 8 (1865) (“The chief difficulty Alice found at first was in managing her flamingo … and when she had got its head down, and was going to begin again, it was very provoking to find that the hedgehog had unrolled itself, and was in the act of crawling away …, Alice soon came to the conclusion that it was a very difficult game indeed.”)
3 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)
4 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
5 Id. at 209.
6 McRO Inc. v. Bandai Namco Games Am., Inc, 837 F.3d 1299 (Fed. Cir. 2016).
7 Id. at 1313.
8 Id. at 1315.
9 PalTalk Holdings, Inc. v. Riot Games, Inc., No. 16-1240-SLR, 2017 U.S. Dist. LEXIS 73181 (D. Del. May 15, 2017).
10 Id. at *13.
11 Id. at *14.
12 RecogniCorp LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017).
13 Id. at 1324.
15 Id. at 1324, 1326.
16 See id. at 1328 (“The addition of a mathematical equation that simply changes the data into other forms of data cannot save it.”)
17 In re Smith, 815 F.3d 816 (Fed. Cir. 2016).
18 Id. at 818.
19 Id. at 819.
21 In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).
22 Id. at 1161.
24 iLife Technologies Inc. v. Nintendo of Am. Inc., 2020 U.S. Dist. LEXIS 10018 (N.D. Tex. Jan. 17, 2020).
25 Id. at *6.
26 Id. at *11-12
27 Id. at *12.
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