Ray and Amanda Smith applied for a patent on a method of playing a wagering card game. The title of their patent application was “Blackjack Variation.” The court of appeals noted that the Smiths’ claim were directed to rules for playing a wagering game using conventional shuffling and dealing of a standard deck of cards. As such, the court of appeals found the Smiths’ claims were not patent eligible in In Re Smith, No. 2015-1664 (Fed. Cir. 2016).
The court found that the Smiths’ claim were similar to other fundamental economic practices previously found abstract. The court agreed with the reasoning of the patent office that “[a] wagering game is, effectively, a method of exchanging and resolving financial obligations based on the probabilities created during the distribution of cards.”
The court also found that the claims did not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible subject matter. The shuffling and dealing of physical playing cards from a standard card deck were purely conventional activities, according to the court.
However, the court noted that some inventions in the gaming arts could be patent-eligible. The court said “claims directed to conducting a game using a new or original deck of cards potentially” could be patent eligible.
Data Engine Technologies (DET) sued Google claiming that it infringed several claims of U.S. Patents 5,590,259, 5,784,545, 6,282,551 directed to tabbed-spreadsheets, among others. The patents claim system and methods for making complex electronic spreadsheets more accessible by providing familiar, user-friendly interface objects–specifically notebook tabs–to navigate through spreadsheets.
Google asserted that the claims of these patents were directed to abstract ideas and did not provide an inventive concept. The Federal Circuit disagreed finding claims directed to the tabbed spreadsheet were patent eligible in Data Engine Technologies LLC v. Google LLC, No. 2017-1135 (Fed. Cir. 2018).
Figure 4D of the ‘259 patent shows tabs at the bottom of each sheet.
Figure 2D provides an enlarged view of the tabs.
The court notes that while these tabbed spreadsheet interfaces are common now, “Quattro Pro, the first commercial embodiment of the claimed invention, was highly acclaimed as having revolutionized three-dimensional electronic spreadsheets.” The court goes on to review articles from PC World and Info World touting the advantages of the tabs in improve navigation of three-dimensional sheets.
The Court found that the claims were directed to a specific method for navigating through three-dimensional electronic spreadsheets. And provided a solution to the then-existing technological problems in computers and prior art electronic spreadsheets. The claimed invention solved a known technological problem in a particular way.
Ultimately the court rejected Google’s assertion that the claims were directed to the abstract idea of indexing information because the claims were directed to “an improved user interface for computer devices” and “a particular manner of summarizing and presenting information in electronic devices.”
Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”
Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.'”
The court found that the claims of the ‘298 patent were invalid as being directed to an abstract idea under 35 USC 101. Intellectual Ventures I LLC v. Erie Indemnity Company, No. 2017-1147 (Fed. Cir. 2017).
One factor the court considers in determining whether a claim is directed to an abstract idea is whether the claim “could be performed in the human mind or by a human using a pen and paper.” Here, the ‘298 patent described that a human could manually perform the first two selection criteria claimed for identifying errant files. The court used this admission in concluding that the claim was abstract.
It would have been better if the ‘298 patent did not describe that any of the selection criteria could be performed manually by a human. Generally it is good to describe alternative versions and ways of implementing your invention in the patent application. This can help broaden the scope of protection offered under the patent claims.
However, when the invention is computer implemented, describing that any of the steps could be done manually or have in the past been done manually by a person, could be used against you in a patent eligibility challenge,