USPTO & Section 101 Post Bilski

Has anyone successful secured a patent covering a live card or dice game (not an electronic gaming device version, but a live table game version) since the Bilski Sup. Court decision last Summer?

It appears that the USPTO has changed course since that decision in June of 2010 in that live games concepts were being issued patents provided they limited their scope to the use of "a physical deck of cards".

I have found several instances in patents issued prior to June 2010 in cases that the USPTO raised a Section 101 "abstract idea" rejection that was subsequently withdrawn/resolved when the claimant inserted the restriction on using "a physical deck of cards".

This week I found two instances in cases prosecuted in the last 12 months where the USPTO raised the same Section 101 "abstract idea" argument for rejection, was presented with revised claim language restricting the claims to the use of "a physical deck of cards" and is no longer considering this restriction sufficient to limit the game concept. As a result, the application is being rejecting as a set of rules to play a game is an abstract idea and not patentable material.

So what have the game developers & IP attorneys out there been experiencing in the last 12 months?

I am not sure what you are asking and worse yet what you have posted. The ignorance is mine, not yours. Is the USPTO
saying you can not patent rules to play a game or that such a patent can only apply to a game for a physical deck of cards?
I can understand if they said you could not patent a computer program or a mathematical algorithm, but surely a patent
for a physical game would cover a digital version of same, would it not ??
Probably not stating my question very cohesively, but perhaps someone else has an answer, or even a better question.

This may be a bit dated but my patent attorney said that as a result of Bilski it would be more likely for an application to be accepted if it were tied to technology somehow. For example, giving the player a button to press instead of indicating a decision with a hand signal. I have not heard of the "physical deck of cards" idea, but then again neither is this my area of expertise. It does sound like a good touch.

They say the only dumb question is the one you don't ask, so here goes. Since all table games can be played as a video game, like VP,
would a patent on a video game provide protect if that game way played in the physical world ? I mean even 100 deck VP can be played as a table game. Might require one hell of a big table and slow down the hands per hour, but it could be done, LOL

Seriously, if I patent a BJ game to be played on a platform like Digital 21, would I be protected against infringement if a casino offered it as a table game?? Perhaps Switch or Mr. Casino Games know the answer as their games are certainly applicable to both worlds ?
Goeff or Stephen, have a comment to share ?

From what I have seen (and I am not a patent attorney, just an applicant trying to get patents issued), the most recent patents are only being issued on games if they are electronic versions of the game.

Like you said Wiz, if the game is tied to technology (i.e. a machine or device), it is getting approved. If the application has patent claims that relate to a live table game method utilizing physical cards & a human dealer with no technology/machine, it appears to be getting rejected post Sup. Court Bilski.

Before Sup. Court Bilski (and after the 2008 Circuit Court of Appeals on Bilski), one way the USPTO appeared to be allowing live table game patents to be issued involving a human dealer, was by inserting language in to the claims that referenced playing the game with "physical playing cards". My guess is the USPTO was operating on the lines that if the game rules were tied to a real world operation of the game using "physical cards" then the idea went from being an unpatentable abstract idea to patentable subject matter.

Since June of 2010, it appears that they are no longer allowing this strategy of getting live games approved. Now it appears from what I have seen, unless it is an electronic gaming device version of the game, the application will be rejected on Section 101 grounds (i.e. unpatentable abstract idea).

But that is what I am seeing, hoping that others have seen or had their live game patents approved so that we all my be better able to understand what is acceptable to the USPTO in the area of live table game patent issuance.

This is a serious question for all of us who design live table games, and from my perspective, begs these additional questions:

1. As Buzzpaff suggested, does an approved application for an electronic version of a game provide 'backward compatibility' for a live version?

2. Does the Bilski ruling make existing live game patents vulnerable to challenge and successful 'knockoff?'

3. How are the big players (Shufflemaster, DEQ, Galaxy Gaming, etc.) responding to this threat to their proprietary rights?

4. How are the IP attorneys specializing in the gaming industry responding to this threat; e.g., are working together to help bring this issue to final resolution?

Of course, the big questions for those of us who are minor players is "What is the best course of action to take on expiring provisional and/or pending utility applications? And are there viable optional methods of proprietary protection, such as carefully-crafted copyrights? Or are we just out of business if this ruling stands?"

Frankly, I don't get this ruling in the first place. It's not rational to me that a patent application for an electronic version of a game has more validity than a live version of the same game (machine vs. human)? But silly me: where does reason come into play into today's bureaucratic legal environment?

Free advice is worth the price? But very welcome if you care to reply.

Quote: Lucky

This is a serious question for all of us who design live table games, and from my perspective, begs these additional questions:

1. As Buzzpaff suggested, does an approved application for an electronic version of a game provide 'backward compatibility' for a live version?

2. Does the Bilski ruling make existing live game patents vulnerable to challenge and successful 'knockoff?'

3. How are the big players (Shufflemaster, DEQ, Galaxy Gaming, etc.) responding to this threat to their proprietary rights?

4. How are the IP attorneys specializing in the gaming industry responding to this threat; e.g., are working together to help bring this issue to final resolution?

Of course, the big questions for those of us who are minor players is "What is the best course of action to take on expiring provisional and/or pending utility applications? And are there viable optional methods of proprietary protection, such as carefully-crafted copyrights? Or are we just out of business if this ruling stands?"

Frankly, I don't get this ruling in the first place. It's not rational to me that a patent application for an electronic version of a game has more validity than a live version of the same game (machine vs. human)? But silly me: where does reason come into play into today's bureaucratic legal environment?

My take, from a non-attorney but very invested standpoint:

1. Only the claims determine what's covered. If you say "an apparatus for playing a casino game comprising a processor and a display ..." and that apparatus plays a card game or dice game, you can't point at a physical table with that same game and say it's covered if there's no processor or display.

2. I'm not sure if Bilski has been used to claim a current patent is invalid under 101. Knockoff (design-around) is an entirely different issue -- that has nothing to do with Bilski, only the scope of the claims.

3) I don't know about this one.

4) I don't know that they are. An attorney's job is to be an adviser and advocate for his/her client, not to bring larger policy issues to a final resolution. Many of the gaming attorneys I know also know each other but I don't think there's any concerted effort to address Bilski. You should talk to your attorney about this one.

5) As far as the best course of action, that's definitely a question for your attorney. I personally make the decision based on my best estimate of ROI. The Bilski decision lowers the ROI of a new game invention, so I just take that into account. I am mostly focusing on machine games these days.

As to understanding the ruling, don't forget how the rest of the world works. In the UK or EPO nations, you simply cannot patent a method for playing a game. It says so right at the top of the patent act. You can't patent a business method or software either. There are many in the U.S. who would adopt the same policy, and many others (mostly big tech) who oppose it. The tiny table games industry is just along for the ride.

Quote: Lucky

3. How are the big players (Shufflemaster, DEQ, Galaxy Gaming, etc.) responding to this threat to their proprietary rights?

It seems to me these companies are putting less of an emphasis on new live table games and more on electronic forms of betting. This move predates Bilsiki, but may have been partially in preparation for it. Even without Bilsiki I think the new table game business is too crowded and the novelty of new games is wearing off.

I was able to get a case allowed on a dice game since bilski. The examiner asserted a bilski-based rejection under section 101, I submitted an argument against it and the examiner backed off without indicating why on the record. Otherwise, claims to gaming methods involving standard playing cards all seem to be receiving bilski rejections. So I've been analyzing my own cases as well as watching and analyzing a few of my fellow gaming patent attorney's cases with bilski rejections. I've even discussed strategies with a few of them as well, but just informally. I do have some ideas based on what I've learned, and a few responses out there that I'm waiting to hear back on, so perhaps if I'm lucky I'll figure out a successful strategy to overcoming the bilksi rejection. If not, my plan is to continue analyzing cases and build off those results until the bilski code is cracked, at least with respect to gaming methods involving cards.

Interestingly, the patent office including the appeals board seem to be fine with rejecting gaming methods under bilski as being non-statutory subject matter, while essentially sticking their head in the sand on the larger issue of what that practice might actually mean to the validity of all the existing gaming method patents and prior court decisions on infringement of those patents. This suggests to me that unless some successful strategy becomes apparent soon, further guidance to the patent office on this issue may be needed before the problem is resolved. One way that guidance may come is from a court's decision to a challenge on the validity of a gaming method patent based on bilski. I imagine some licensees may already be considering refusing to pay license fees, daring a licensor to file suit.

So, until there's some clarity I think it makes good sense to file gaming method patents as provisional applications first and wait the full year or otherwise prolong prosecution to the extent possible.

My take on this does follow the Wiz's observation with the added motivation that such "Computerized" versions are far more profitable to operate.

So this begs the follow-up question, " How long will it take for your local Casino to offer multi-seated Computer dealt poker, no chips no Dealer, just you and eight or nine opponents around a video table?"

N&B guesses 3-5 years

Part of that emphasis is partly due to the lack of innovation in the pits of table games. Look how much more profitable slots have
become in the past few years. Ticket In Ticket Out did away with the change girl and hard count entirely in many casinos. No more
carrying buckets of coins to a counter, having someone run them thru a counter to pay you off. TITO also allows you to put your
tickets in a machine to cash out, while the only ones at the redemption counter are mostly table game players players cashing in chips.
Non smoking policies allowed casinos to drastically cut the people cleaning up after smokers on the floor while in the pits it just added idle time for supervisors. Players cards track and allow a casino to keep customers. At the BJ table they are still asking how
much you bought in for, taking your card, in some places keeping the card till you leave, etc.
And much as I hate to admit it as an ex-dealer tipping does affect your winnings and losings. You can walk away from a machine without ever feeling guilty that you did not tip. Or having to put up with a lousy dealer just because you did not want to switch tables,
Plus $5 BJ is non-existent most places on weekends, At $15 or $25 what chance has a table game like BJ have to attract a player with a limited bankroll. But penny slots can provide entertainment for $20, Poker tables have buy-ins of $30 or $40, and poker tournament promise hours of entertainment in most cases,
Electronic tables never go on vacation, call in sick, go on strike, etc.. In no way do I mean to diminish the value of a courteous and knowledgeable, entertaining BJ dealer. But in this world of instant gratification and the promise of big rewards, BJ"s largest payoff is 3 to 2. While it still lasts LOL

N&B guesses 3-5 years Preety good guess I think.

Other thoughts after reading the one page summary of the pdf file.

A physical deck of cards is either mechanically sorted, electro-mechanically sorted, and/or humanly sorted into a new order of cards. The invented rules of the card-game therefore reward and/or penalize the Contestant's grouping of such cards. Sorting the order of cards is transformational upon each sorting process.

Somehow I think this falls far short of the intentions of Ss 100b and 101.

N&B

Quote: RichN

I was able to get a case allowed on a dice game since bilski....

Good post Rich!

The opinion recognizes that Section 101 patent eligibility is "only a threshold test." To be patentable, the invention must also "be novel, see §102, nonobvious, see §103, and fully and particularly described, see §112."

Hopefully future courts will take this into consideration.

Good, I'm glad to the Supreme Court stated this plainly.
Therefore, I must presume that "Invented Rules of [card, dice, ect] Games" falls under Copyright Protection, and optionally Trademark Protection. The implementation of such Copyrighted material to physical means of operation falls under the auspices of Patentable Processes.

Any thoughts on this?

N&B (edited for sp.)

I am at my limit of knowledge here. I do know the amicus curi, Friends of the court, were organizations that want all software to be free per Wikipedia. I am sure software developers would gladly spend there money and time just to provide these free loaders with
free video games, tax software, business programs, etc
This seems to be why some people advice about adding a button, switch, or lever to your patent. Idiotic it seems, but often the law is an ASS.

I would presume therefore, Microsoft, Apple, Google, Sun Microsystems, Adobe, et al. An oligarchy of software ne apps developers.
While the axiom that free is good generally holds-up... the consequences of free is not always good. Even the 99 cent app store has a few consequences, lest we forget the $199 Operating System for the use of said free/inexpensive app/software.

It seems to distill in favor of very few entities amongst a very large population.

N&B

Thanks Rich for sharing your thoughts.

I also think there are some issues for the larger companies on getting challenged on the payment of license fees, but then again, the casino's are going to have to weigh that against the damage that will do with their vendors. If the courts end up reversing the current USPTO position and you are a property that has told SMI/Galaxy/DEQ/Gaming Network to pound sand and have been playing knock offs of their games in the meantime, you are going to be in a world of hurt if the courts does come down on the side of enforcing exisiting live game patents. I can see the big boys justifiably not doing business with you or commanding all the back fees and interest, etc. before allowing you to put their "re-protected" games back on the floor. Not sure too many properties are going to want to be in that position, plus the fact that it is just plain wrong to be using IP without paying for it.

When ultimately this issue is resolved, I believe the courts will allow game methods provided they are tied/restricted to practical application of using cards and dice as "devices". I almost understand the position that a set of game rules is an upatentable abstract idea without limiting it to the use of physical cards or physical dice. But once you restrict the game rules to be practically implemented by the drawing of cards and/or rolling of dice, it seems the only distinction the USPTO is making between human dealt live games and electronic versions of the same live games is that electronic RNG's are patentable methods and games involving human powered random number generation are not patentable.

This seems like a very odd place to draw the line between the abstract and patentable subject matter and one that I believe the USPTO will end up losing on review by the court system. But it looks like between now and then, electronic games are what is available and relying on some "equivalents" doctrine to protect against using a electronically protected version of a game to prohibit live play without license payments seems like a tough place to be for game developers.

Good point about operators, but they're not the only licensees. Besides, they never get named in a complaint even if they have an infringing install. In fact, I can't think of any patent infringement suits filed by a manufacturer against an operator. Just manufacturer vs manufacturer. Perhaps if the infringement was egregious it might happen. Actually, it's kind of surprising how many operators already offer patented games without paying license fees. They're usually small ones in the boonies but it happens and the manufacturers know it. Well I know of 2 of the majors that know it but have not filed suit and don't plan on it. That being said, from my experience it seems that while they may not like the fact that they need each other, both sides, operator and manufacturer, generally operate above board.

Funny you should bring up the doctrine of equivalents because I initially thought about using the DOE as part of a strategy to avoid bilski issues. I even discussed it with a few other patent attorneys that do gaming work. The strategy was to file gaming method applications with claims directed only to electronic versions of the gaming method, which would presumably satisfy the machine prong of the machine or transformation test and allow the prosecution on the merits to move forward sans bilski issues. The claims would have to be carefully worded and even more carefully amended but once the patent issued, the patentee would have a literal infringement argument against electronic versions of the game and a DOE argument against live versions. It's not without risk and relying on the DOE to fill out an infringement argument is never a first choice. There are also some decisions that I feel negatively impact the viability of this as a strategy. But more importantly I feel as you do, that is, that gaming methods will, if tested, be determined to be patent eligible and not abstract - which the supremes never defined for patent eligibility purposes anyway. So I can't recommend anything else other than describe and claim all embodiments, electronic platform, live, online, etc. and as I mentioned earlier delay prosecution in a way which doesn't cause a loss of rights, such as filing a provisional.

Rich -

This is new info to me, and I was starting to worry, until I saw your first post. Your responses have already made me feel better.

---

Gang -

With only 9 posts, you might not know who RichN is. He's Richard Newman, a patent attorney specializing in gaming, among other things.

Based upon recommendations from several members here, he's the lawyer I chose to do my patent work for Poker For Roulette.

DJ,

RichN will know for sure, but you may be in better shape since a Roulette Wheel feels more like something that would pass the machine test than the dealing of cards or rolling of dice. But then again, who knows!

No problem.

The fact that the one lawyer who responded happens to be the lawyer that I hired, makes me confident.

I.E. If it were some other laywer that responded, I'd have to ask Rich if I need to be concerned with this.

Quote:

I almost understand the position that a set of game rules is an upatentable abstract idea without limiting it to the use of physical cards or physical dice. But once you restrict the game rules to be practically implemented by the drawing of cards and/or rolling of dice, it seems the only distinction the USPTO is making between human dealt live games and electronic versions of the same live games is that electronic RNG's are patentable methods and games involving human powered random number generation are not patentable.

What is it that makes a mathematical algorithm patentable for a P-RNG and not for a hedging strategy? Is it that the P-RNG uses a physical method of random-seed like spontaneous fission of an atom (natural process)?

N&B