In an interesting case decided last week, the Federal Circuit ruled that it cannot address whether the US Patent and Trademark Office’s 2014 Interim Guidance on Patent Subject Matter Eligibility exceeds the scope of the Supreme Court’s decisions in this area.

This case was an appeal from a final decision of the PTO’s Patent Trial and Appeal Board denying a patent application directed to a card game variant of blackjack.  The Board ruled that the patent application was nothing more than an attempt to cover patent ineligible subject matter.  The Circuit Court agreed, reasoning that “the claims cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.”  See, In re: Ray Smith, Amanda Tears Smith.

Whether the Section 101 patent eligibility question was properly decided is almost irrelevant – although, from my read of the case I do agree with the holding.  The much more interesting aspect of the case is the question not addressed by the Court, namely whether the USPTO’s 2014 Guidance exceeds the scope of Section 101 and the Supreme Court’s controversial 2014 Alice Corp. decision.  In refusing to address this important question, was the deck unfairly stacked against the patent Applicants?

The Court bluntly stated that “Applicants’ challenge to the Guidelines is not properly before us in this appeal.”  The Court also referred to language in the Guidance itself stating that it “is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the [Patent] Office.  Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable” (emphasis added by Court).  However, this reasoning seems a bit circular – almost like a card game of clock solitaire.  The Court then went on to reveal its final trump card by concluding that “even if the Applicants had properly challenged the Guidance, we have previously determined that such Guidance is ‘not binding on this Court’.”  Is the Court telling the unlucky inventors to “Go fish?”

Although the decision does not bode well for future appellants attempting to challenge the Guidance, at least the Court did indicate that not all inventions in the gaming arts would be foreclosed from patent protection under Section 101.

– Anthony D. Sabatelli, PhD, JD

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