US Appeals Court Applies Alice, Finds Bingo Software Patents Invalid

On August 26, 2014, the United States Court of Appeals for the Federal Circuit (the Court) issued judgment in Planet Bingo LLC v. VKGS LLC (Planet Bingo), a patent infringement case where the Court upheld a decision granting summary judgment of invalidity to the Defendant on the basis that the patents at issue lacked eligible subject matter under to 35 USC §101. The method and system claims of the patents at issue (US Patent Nos. 6,398,646 and 6,656,045 (together, the patents)) recite storing a player’s set (or sets) of bingo numbers, retrieving that set and playing that set in a game of bingo, while simultaneously tracking the bingo sets, tracking player payments and verifying winning numbers. The Court found that these claims “consisted solely of mental steps which can be carried out by a human using pen and paper.” Consequently, in the Court’s view, the patents’ claims recited nothing more than the kind of patent-ineligible abstract idea recently examined by the US Supreme Court in Alice Corporation v CLS Bank International (Alice). In Alice (a case previously reported on by ETIPS ®), the US Supreme Court held that merely adding a computer element to an otherwise patent-ineligible abstract idea will not be sufficient, on its own, to confer patent eligibility. The Court described a two-step approach to this analysis, comprised of determining (1) whether a claim is directed to a patent-ineligible concept, and, if so; (2) whether additional elements in the claim transform the claim into a patent-eligible invention. Although Planet Bingo LLC argued that “literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program,” thereby making it impossible for the method to be performed mentally by a human, the Court found that the claims themselves were in no way limited to an application involving such vast numbers. The Court did not comment on what impact, if any, such a limitation in the claims would have had on the analysis. After considering the inclusion of computer elements in the claims, the Court held that the claims did not have an inventive concept sufficient to transform the ineligible subject matter claimed into a patent-eligible invention. Summary by: Michael House