By Michael Borella --
Planet Bingo is the assignee of U.S. Patent Nos. 6,398,646 and 6,656,045, both directed to computer-implemented methods and systems for managing bingo games. Planet Bingo filed an infringement action in the United States District Court for the Western District of Michigan, alleging that VKGS infringed both patents. The District Court granted VKGS's motion for summary judgment of non-infringement, on the grounds that the asserted claims fail to meet the patentable subject matter requirements of 35 U.S.C. § 101.
Applying the plurality holding from the Federal Circuit's en banc decision in CLS Bank v. Alice Corp., the District Court found that the use of a computer in the method claims "adds nothing more than the ability to manage Bingo more efficiently," and that "the limitations of the system claims are the same as the limitations of the method claims that failed to result in an inventive concept." The District Court further determined that the system claims employ a computer "only for its most basic functions," including "storing numbers, assigning identifiers, allowing for basic inputs and outputs, printing of a receipt, displaying of numbers, and/or matching for verification."
Planet Bingo appealed. The Federal Circuit panel of Judges Taranto, Bryson, and Hughes heard the case and affirmed.
An exemplary claim of the '646 patent recites:
1. A system for managing a game of Bingo which comprises:
(a) a computer with a central processing unit (CPU) and with a memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory of the computer; and
(c) a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are preselected by a player to be played in at least one selected game of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected by the player as a group in the memory of the computer;
(iii) assignment by the computer of a player identifier unique to the player for the group having the sets of Bingo numbers which are preselected by the player wherein the player identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of the sets of Bingo numbers preselected by the player and stored in the memory of the computer as the group for play in a selected game of Bingo in a specific session of Bingo wherein a number of sets of Bingo numbers selected for play in the selected game of Bingo is less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set of Bingo numbers selected for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of Bingo numbers which is preselected and selected by the player, a price for the set of Bingo numbers which is preselected, a date of the game of Bingo and optionally a computer identification number; and
(viii) output for verification of a winning set of Bingo numbers by means of the control number which is input into the computer by a manager of the game of Bingo.
Writing for a unanimous panel, Judge Hughes applied the two prong test from the recent Supreme Court Alice Corp. v. CLS Bank opinion to determine the patent-eligibility of the claims. First, he found that the claims were directed to the abstract idea of "managing a game of Bingo." In supporting this point, Judge Hughes noted that Planet Bingo's invention was similar to the methods of organizing human activity that were found to be abstract ideas in CLS Bank as well as Bilski v. Kappos.
With respect to the second prong of the test, Judge Hughes noted that the claims require physical components including "a computer with a central processing unit," "a memory," "an input and output terminal," "a printer," and so on. However, one of the outcomes of CLS Bank is that implementing an abstract idea on generic computer hardware "cannot impart patent-eligibility." Consequently, Judge Hughes found that the claims lacked an inventive concept that would transform them into a patent-eligible application of the incorporated abstract idea.
Given the Supreme Court's patent-eligibility test in CLS Bank, as well as the nature of Planet Bingo's claim language, this conclusion is not surprising. Unfortunately, the panel doesn't provide any further insight into the nature of an "abstract idea" or an "inventive concept."
Nonetheless, in an interesting side-issue, Judge Hughes wrote that "[t]he district court correctly concluded that managing the game of bingo consists solely of mental steps which can be carried out by a human using pen and paper." Thus, like the claims in Gottschalk v. Benson, the steps could be performed by "existing computers long in use" as well as mentally.
Planet Bingo argued that "in real world use, literally thousands, if not millions of preselected Bingo numbers are handled by the claimed computer program," thus rendering the invention impossible to be carried out manually. However, as pointed out by Judge Hughes, the claims do not require this volume of transactions. Instead, the claims require at most "two sets of bingo numbers" and "a player." He wrote "[w]e need not, and do not, address whether a claimed invention requiring many transactions might tip the scales of patent eligibility, as the claims fall far short of capturing an invention that necessarily handles thousands, if not millions of bingo numbers or players."
So, the Federal Circuit appears to be leaving open an avenue of establishing the patent-eligibility of computer-implemented claims directed to an abstract idea -- so long as those claims recite a volume of transactions or processing that would be impossible or impractical for a human to perform mentally or on paper. But how would one claim such an invention? Merely adding a limitation along the lines of, e.g., "wherein at least 100,000 transactions are processed" might not be enough. In addition to such language, the patentee would likely have to explain in the patent's specification what types of results are possible to obtain using at least 100,000 transactions that might not be obtainable without computer implementation. Or, that these results can be obtained in a time frame that is required from a user experience point of view (e.g., the 5 or fewer seconds that a web page takes to load), but cannot be performed manually in anywhere near that time frame. In another possible angle, the patentee could potentially establish, preferably in claim language, that the computer-implemented invention has an accuracy that is superior to any known manual or automated technique for solving the same problem, and that this accuracy allows the invention to be applied in new ways.
As far as I know, these types of arguments have never been addressed by the Federal Circuit. Given Judge Hughes' treatment of this issue, however, it may just be a matter of time before such an issue is brought before the Court.
Planet Bingo, LLC v. VKGS LLC (Fed. Cir. 2014)
Panel: Circuit Judges Taranto, Bryson, and Hughes
Opinion by Circuit Judge Hughes