The concurrence endeavors to make two points: “First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation. Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

On December 28, 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in In re Marco Guldenaar Holding B.V. (2017-2465) in which the claims of a patent application directed to a dice game were held to be patent-ineligible for being directed to an abstract idea, with “the only arguable inventive concept relat[ing] to dice markings, which constitute printed matter.” The holding in the case is unsurprising post-Alice, but Judge Mayer’s concurrence reveals some concerning views on patent eligibility.

No Dice

According to the applicant, the patent application is directed to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.”

The applicant told the Federal Circuit that “the primary novelty of the claimed invention is the markings (or lack thereof) on the dice, which have only particular faces marked.” But according to the Federal Circuit, this makes the claims patent ineligible based on the “highly instructive” case of In re Smith, 815 F.3d 816 (Fed. Cir. 2016).

The Federal Circuit then discussed how the claims at issue also fail to recite non-conventional elements at the second step of the Alice inquiry, ultimately holding the claims to be patent-ineligible while noting that the only arguably non-conventional elements are nothing more than mere patent-ineligible printed matter because those additional elements are informational dice markings that do not have a patent-eligible function.

The Mayer Concurrence Examined

Not much of a shocker there, but what is more notable than anything is Judge Mayer’s concurrence, given how it exposes his views on patent eligibility. The concurrence endeavors to make two points: “First, subject matter eligibility under 35 U.S.C. § 101 is a pure question of law, one that can, and should, be resolved at the earliest stages of litigation. Second, claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”

As to his first point, Judge Mayer apparently believes the decision in Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018) is bad law. Judge Mayer begins by quoting Judge Reyna’s dissent in Berkheimer, where Judge Reyna observed that “[p]erhaps the single most consistent factor in this court’s § 101 law has been our precedent that the § 101 inquiry is a question of law. Stated differently, there is no precedent that the § 101 inquiry is a question of fact.”

Judge Mayer then goes on to state that “[p]anels of this court…are without authority to disregard established precedent” and subsequently references Alice, Myriad, Mayo, and Bilski when indicating that “[t]ellingly, the Supreme Court has taken up four subject matter eligibility challenges in recent years, but has never once suggested that the section 101 calculus includes any factual determinations…To the contrary, the Court has uniformly treated subject matter eligibility as a question of law.”

Thereafter, Judge Mayer discusses how questions of law are often resolved using dictionaries “and other publically available sources,” even invoking Justice Scalia’s majority opinion in the Supreme Court’s Second Amendment case of District of Columbia v. Heller, 554 U.S. 570 (2008). In that decision, Judge Mayer notes, the late Justice ascertained the meaning of the phrase “keep and bear Arms” using a dictionary from the founding period.

But two points on that. First, at least Justice Scalia managed to put his hands on some evidence when resolving a question of law. This is in contrast to many abstract idea opinions in, for instance, the software arts, where no evidence is cited in support of an apparently self-justifying statement that a claim essentially embodies an allegedly preexisting practice that has simply been automated.

Second, despite him joining the majority in Alice, Justice Scalia would caution the courts to actually follow the letter of the law set forth in the statute since he was a “textualist” first and foremost and an “originalist” only when the text of a statute was ambiguous. This is in contrast to abstract idea jurisprudence, which essentially involves ignoring the test set forth in the statute by only briefly acknowledging it at the beginning of a patent-eligibility analysis and then engaging in a much more comprehensive yet abuse-prone two-step abstract idea test that was never codified.

Next, Judge Mayer praises the Supreme Court as stepping in to “resuscitate” Section 101 to address “a scourge of meritless infringement suits” that “clogged the courtrooms and exacted a heavy tax on scientific innovation and technological change.” He then states that “[i]njecting factual inquiries into the section 101 calculus will topple the Mayo/Alice framework and return us to the era when the patent system stifled rather than ‘promote[d] the Progress of Science and useful Arts,’” apparently unaware of how abstract idea case law has stifled the legitimate inventions of patentees from the Patent Office all the way through the courts.

But, according to Judge Mayer, because Berkheimer made the Section 101 framework “so cumbersome and time-consuming that it will cease to function as an expeditious tool for weeding out patents clearly lacking any ‘inventive concept’…section 101 will no longer be a ‘threshold test’”. So apparently the “threshold test” dicta from Bilski was not meant in the sense of Section 101 being a cursory test for patent-eligibility, but instead in the sense of it being a comprehensive test resolved by judges rather than juries.

The concurrence then concludes by alleging that “Alice, for all intents and purposes, articulated a ‘technological arts’ test for patent eligibility.” But again, note how the statute itself intimates no such test: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

As you can see, the term “any” is pretty unequivocal in Section 101. The statute certainly does not hint at the sort of “technological arts” test that Judge Mayer would prefer and that Alice itself never required, despite Judge Mayer purportedly being concerned with precedent.

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