12/14/14

Planet Bingo: Abstract Idea of Managing Bingo Not Patent Eligible When Executed by Computer

Category: 101 
 
 
 
 
By: Abby Lin, Contributor 
 
CasePlanet Bingo, LLC v. VKGS, No. 2013-1663 (Fed. Cir. Aug. 26, 2014) (non-precedential).
Issues
1. Planet Bingo argues that “in real world use, literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program,” making it impossible for the invention to be carried out manually [and thus impossible to be done mentally, making it patent eligible].
Planet Bingo, at *4 (text added).
2. Planet Bingo argues that the patents recite “significantly more” than an abstract idea because the invention includes “complex computer code with three distinct subparts.”
Id. at *5.
Holdings
1. But the claimed inventions do not require [thousands of preselected Bingo numbers]… although the ’646 and ’045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of “solv[ing a] tampering problem and also minimiz[ing] other security risks” during bingo ticket purchases. This is similar to the abstract ideas of “risk hedging” during “consumer transactions,” Bilski, 130 S. Ct. at 3231, and “mitigating settlement risk” in “financial transactions,” Alice, 134 S. Ct. at 2356–57, that the Supreme Court found ineligible. Thus, we hold that the subject matter claimed in the ’646 and ’045 patents is directed to an abstract idea.
Id. at *4(text added, internal citations omitted).
2. [T]he claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, “the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, we hold that the claims at issue do not have an ‘inventive concept’ sufficient to ‘transform’ the claimed subject matter into a patent-eligible application.
Id. at *6.
 
 
 

Procedural History
Contributer Note: Relevant procedural history has been summarized below. See the opinion on pages 2-3 for this information.
Planet Bingo sued VKGS for infringement of patents 6,398,646 and 6,646045 in U.S. District Court for the Western District of Michigan. After Markman order, VKGS filed motion for summary judgment asserting that the claims were patent ineligible. Judge Bell granted summary judgment after applying Alice and determining that the claims were abstract ideas. Planet Bingo appealed to the Federal Circuit.

 

Legal Reasoning (Taranto, Bryson, and HUGHES)
Background
Legal Standard: Standard of Review and 101
We review the grant of summary judgment under the law of the regional circuit. Charles Mach. Works, Inc. v. Vermeer Mfg. Co., 723 F.3d 1376, 1378 (Fed. Cir. 2013). The Sixth Circuit reviews the grant or denial of summary judgment de novo. Tompkins v. Crown Corr, Inc., 726 F.3d 830, 837 (6th Cir. 2013). We review de novo whether a claim is valid under § 101. In re Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007).
Planet Bingo, at *3.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134 S. Ct. at 2354 (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). But the application of these concepts to new and useful ends remains eligible for patent protection. Id. at 2355. Accordingly, the Court has described a framework for identifying patent-eligible claims, wherein a court must determine whether the claims at issue are directed to a patent-ineligible concept and, if so, whether additional elements in the claims transform the claims into a patent-eligible application.
Id. at *3-4.
Patent ClaimsThe claims at issue recite computer-aided methods and systems for managing the game of bingo. Generally, the claims recite storing a player’s preferred sets of bingo numbers; retrieving one such set upon demand, and playing that set; while simultaneously tracking the player’s sets, tracking player payments, and verifying winning numbers.
Id. at *2.
Analysis
Organizing Human Activities Such as Bingo is An Abstract Idea[Aside from the claims not requiring thousands of Bingo numbers and only requiring two sets of numbers, ] the claims here are similar to the claims at issue in Bilski v. Kappos, 130 S. Ct. 3218 (2010), and Alice, 134 S. Ct. 2347, which the Supreme Court held were directed to “abstract ideas.” For example, the claims here recite methods and systems for “managing a game of Bingo.” ’646 patent col. 8 l. 46; see also id. col. 9 l. 33; ’045 patent col. 8 l. 64. This is similar to the kind of “organizing human activity” at issue in Alice, 134 S. Ct. at 2356. And, although the ’646 and ’045 patents are not drawn to the same subject matter at issue in Bilski and Alice, these claims are directed to the abstract idea of “solv[ing a] tampering problem and also minimiz[ing] other security risks” during bingo ticket purchases. Appellant’s Br. 10, 20. This is similar to the abstract ideas of “risk hedging” during “consumer transactions,” Bilski, 130 S. Ct. at 3231, and “mitigating settlement risk” in “financial transactions,” Alice, 134 S. Ct. at 2356–57, that the Supreme Court found ineligible. Thus, we hold that the subject matter claimed in the ’646 and ’045 patents is directed to an abstract idea.
Planet Bingo, at *5.
Abstract Idea Not Patentable If No Inventive Concept
Abstract ideas may still be patent-eligible if they contain an “‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1298 (2012)).
Id. at *5.
“[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ . . . that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). In this case, the claims recite a generic computer implementation of the covered abstract idea.
Id. at *6.
Planet Bingo argues that the patents recite “significantly more” than an abstract idea because the invention includes “complex computer code with three distinct subparts.” Appellant’s Br. 33, 38. We disagree. The ’646 and ’045 patents do not claim the “accounting program,” “ticket program,” and “verification program” that Planet Bingo identifies in its briefs. Instead, the claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. And, as was the case in Alice, “the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298).
Id. at *6.
Conclusion
Because a straightforward application of the Supreme Court’s recent holding in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), leads us to the same result [as the District Court’s finding of the claims failing to meet 101], we affirm.
Planet Bingo, at *2(text added).

 

Image Attribution Statement: Lisa Yarost, “Handmade bingo journal,” available under a  Creative Commons Attribution 2.0 Generic license, http://commons.wikimedia.org/wiki/File:Handmade_bingo_journal.jpg (last visited Dec. 7, 2014) (image edited). 

 

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