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It's no dice at the Federal Circuit for a patent owner who claimed to have invented a unique new casino game.

A three-judge panel of the U.S. Court of Appeals for the Federal Circuit ruled Friday that a game employing specially marked dice was not eligible for protection under Section 101 of the Patent Act. Casino game developer Marco Guldenaar had argued his arrangement, which includes dice with some faces left blank, provides for a wider range of odds and wagers.

Judge Raymond Chen wrote that while there's no categorical rule against patenting casino games, Guldenaar's patent claims “do not recite an 'inventive concept' sufficient to 'transform' the claimed subject matter into a patent eligible application of the abstract idea.”

Chen's opinion in In re Marco Guldenaar Holding B.V. was notable for criticizing the notion that “methods of organizing human activity” generally can't be patented. That formulation is often used by courts and the Patent and Trademark Office as a shorthand for unpatentable abstract ideas.

Judge Raymond Chen.
Photo: Diego M. Radzinschi/ALM

“We agree that this phrase can be confusing and potentially misused, since, after all, a defined set of steps for combining particular ingredients to create a drug formulation could be categorized as a method of organizing human activity,” Chen wrote. While the PTO had used the phrase in rejecting Guldenaar's application, Chen wrote, it also identified a more specific abstract idea: the rules for playing a game.

Judge Haldane Mayer, meanwhile, contributed a concurring opinion that was sharply critical of a Federal Circuit Section 101 precedent that's currently pending review at the U.S. Supreme Court.

Mayer wrote that the court's Berkheimer v. HP decision was mistaken when it held the patent eligibility inquiry may contain underlying issues of fact that can't be resolved on the pleadings. “Subject matter eligibility under 35 U.S.C. Section 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation,” Mayer wrote.

Berkheimer has stirred debate in the patent bar and within the Federal Circuit over the proper timing of Section 101 motions. Judge Kimberly Moore held in Berkheimer that whether something was truly inventive or simply routine and conventional to a skilled artisan at the time of the patent will sometimes require fact-finding to resolve.

The Supreme Court is scheduled at its Jan. 4 conference to decide whether to review Berkheimer. Technology, telecom and banking interests are urging the court to grant certiorari.

Mayer is a senior judge and therefore didn't have an opportunity to weigh in when the full court denied HP's petition for en banc review. He is now on record supporting Judge Jimmie Reyna's dissent from denial of en banc review.

“Injecting factual inquiries into the Section 101 calculus,” Mayer wrote, “will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than 'promote[d] the progress of science and useful arts.'”