Software Patents Considered: PLANET BINGO, LLC v. VKGS LLC 2013-1663 (Fed. Cir. 2014)

Claims of US patents 6,398,646 and 6,656,045 in the name of Planet Bingo, LLC were found not to be patent eligible subject matter under 35 USC 101 because the claims are directed to the abstract idea of managing a game of bingo, which is merely implemented on a computer executing purely conventional functions.

PLANET BINGO, LLC v. VKGS LLC 2013-1663 (Fed. Cir. 2014)

Broad description of the invention

The patents claims recite computer-aided methods and systems for managing a game of bingo. Generally, the claims at issue recite storing a player’s preferred sets of bingo numbers; retrieving one such set upon demand, and playing that set; while simultaneously tracking the player’s sets, tracking player payments, and verifying winning numbers. Also claimed are display capabilities and options to purchase sets of bingo numbers.

Characteristic Claim

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

(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.

Their Honours noted that the US statute 35 U.S.C. 101 states that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter”. The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena and abstract idea are not patentable,” Quoting Alice 134 S. Ct at 2354. In Gottschalk v Benson, 409 U.S. 63, 67 (1972) it was noted that “Phenomena of nature, though just discovered, mental processes, and abstract idea intellectual concepts are not patentable, as they are the basic tools of scientific and technological work”. A framework comprising a two-step test was developed in Molecular Pathology v. Myriad Genetics, Inc, 133 S. Ct. 2107, 2116 (2013), and Alice, for identifying patent-eligible claims, wherein a court must determine whether the claims at issue are directed to a patent-ineligible concept, and, if so, whether additional elements in the claims transform the claims into a patent-eligible application.

Their Honours agreed that the claims are drawn to patent ineligible subject matter, in that they are directed to managing a bingo game while allowing a player to repeatedly play the same sets of numbers in multiple sessions, and “consists solely of mental steps which can be carried out by a human using pen and paper.” Not only can these steps be “carried out in existing computers long in use,” but they also can be “done mentally”.

Their Honours refused to consider the enabling characteristic of the use of the computer, in which literally thousands, if not millions, of preselected Bingo numbers are handled by the computer program. The patentee alleged that it was impossible for the invention to be carried out manually. The consideration was refused because the claims did not explicitly require a large quantity of Bingo numbers, however neither did their Honours find that this enabling characteristic would never result in patent eligibility.

Their Honours considered that “managing a game of bingo” was similar to the kind of “organizing human activity” at issue in Alice. The claims are directed to the abstract idea of “solving a tampering problem and also minimizing other security risks: during bingo ticket purchases, which are similar to the abstract ideas of “risk hedging” during “consumer transactions” in Bilski, 130 S. Ct. at 3231 and “mitigating settlement risk” in “financial transactions,” in Alice.

Abstract ideas may still be patent-eligible if they contain an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application Alice and Mayo. However, the patent’s recitation of a computer amounts to a mere instruction to implement an abstract idea on a computer, and that cannot impart patent eligibility Alice and Mayo. In this case, the claims recite a generic computer implementation of the covered abstract ideas.

The claims do not feature the “accounting program”, “ticket program”, and “verification program” which the patentee argues are “significantly more” than an abstract idea. The claims recite a program that is used for the generic functions of storing, retrieving, and verifying a chosen set of bingo numbers against a winning set of bingo numbers. The function performed by the computer at each step of the process if purely conventional Alice and Mayo.