[00:00:46] Speaker 01: Our next appeal is 17-2465. [00:00:49] Speaker 01: Inray Marco Gildenar Holding. [00:00:59] Speaker 01: Mr. Errett? [00:01:00] Speaker 00: Yes, Judge. [00:01:01] Speaker 00: Yes, whenever you're ready. [00:01:03] Speaker 00: Good morning, Your Honors, and may it please the Court. [00:01:06] Speaker 00: My name is Christian Errett, and I represent Marco Gildenar Holding with my colleague, Nate Propelka. [00:01:12] Speaker 00: We've reserved three minutes of time for rebuttal. [00:01:16] Speaker 00: We ask that this court reverse the patent office's decision, the board's decision, affirming the examiner's rejections under both section 101 and section 103. [00:01:26] Speaker 00: We'll take each rejection in turn, and I'll start with the section 101 rejections. [00:01:33] Speaker 00: The claims here are directed to a method of providing a new dice game using a new specifically claimed arrangement of die, at least three die. [00:01:42] Speaker 00: And for this reason, we think that the claims pass under the first prong of the ALICE test. [00:01:47] Speaker 00: However, I'd like to start with prong two for the reason that we believe that prong two is probative of other issues that arise in the section 103 context, notably the printed matter issues. [00:01:58] Speaker 00: And we believe that prong two is just the simpler ground to decide the ALICE issue on. [00:02:04] Speaker 00: Now, we believe that the Inray Smith case from 2016, this court's decision in Inray Smith, controls. [00:02:11] Speaker 00: And the facts in that case were a method of playing a card game using a standard 52 deck of cards. [00:02:18] Speaker 00: And what Judge Stoll found in that case, in that decision, was that although those claims were directed to an abstract idea of playing card games, and although they were ineligible under prong two for being conventional, [00:02:31] Speaker 00: that the outcome would potentially differ if a non-standard, non-conventional deck of 52 cards was used. [00:02:37] Speaker 00: And that's exactly what we have here. [00:02:39] Speaker 00: The PTO agrees that if the, in their brief, if the limitations on the die are given weight, that they do differ from conventional six-sided numerical one through six dice. [00:02:52] Speaker 00: So we believe that Inray Smith in that context controls a second Prong of Alice unconventional die [00:02:59] Speaker 00: That was just speculation, though. [00:03:01] Speaker 00: That was not the holding of the case. [00:03:03] Speaker 00: That's correct, Your Honor. [00:03:04] Speaker 00: So it doesn't control. [00:03:06] Speaker 00: True, Your Honor, and I apologize for saying it controlled. [00:03:08] Speaker 00: It's dicta, but we believe that it's a very persuasive opinion in Ray Smith. [00:03:13] Speaker 00: And in fact, the patent office actually agreed during all our argument that the Prong 2 analysis would be informed with a non-conventional, non-standard deck of cards. [00:03:22] Speaker 03: Would your position be different if the patent were directed to [00:03:28] Speaker 03: a set of three six-sided dice in which the numbers, the dots on the dice were exactly the same as the dots in the present typical die. [00:03:43] Speaker 03: But the rules of the game were that betting would apply to the number six on one of the dice, the numbers six and five on the second of the dice, [00:03:56] Speaker 03: and the numbers six, five, and four on the third of the dice. [00:04:00] Speaker 00: In that scenario, your honor, Judge Bryson, I believe that would be invalid because the claims, the dice themselves, would be conventional die. [00:04:08] Speaker 00: And the invention in that case would be directed to the rules of playing the game, the mental steps that are being performed by the dealer or the player in that instance to determine what those conventional die meant in the rules of that context. [00:04:20] Speaker 00: And here we have the stark difference in our claims is that [00:04:23] Speaker 00: The claims have a first die having a first die marking on only one side. [00:04:28] Speaker 00: And the claims say only. [00:04:29] Speaker 00: And that was an amendment made during the prosecution to specifically overcome the comparison to standard die. [00:04:35] Speaker 00: The second dice has a second die marking on only two sides. [00:04:38] Speaker 00: And the third die has a third die marking on only three sides. [00:04:42] Speaker 00: And so we believe that that language specifically differentiates from standard die. [00:04:47] Speaker 00: And under prong two of Alice, the invention lies in part [00:04:51] Speaker 00: in the arrangement of the indicia and the provision of those dice. [00:04:54] Speaker 00: So I do believe that it differs in that particular scenario, Your Honor. [00:04:57] Speaker 01: So your inventive concept, I guess, in these claims is the markings or lack of markings on the face of the individual die? [00:05:07] Speaker 00: Judge Chen, I believe that the inventive concept here is a combination of the non-conventional dice in addition to the method of playing the game. [00:05:15] Speaker 00: And if you look at the steps of playing the rolling and the wagering steps, they do differ from the claims. [00:05:19] Speaker 00: Claim one is the broadest claim. [00:05:21] Speaker 00: The steps of the method interrelate the die markings. [00:05:25] Speaker 00: They use the die markings to play the game. [00:05:27] Speaker 00: So to answer your question directly. [00:05:29] Speaker 01: By getting back to your earlier colloquy with Jeff Bryson, it sounded like those kinds of interactions in playing the game, in your words, would be mental steps that therefore don't really [00:05:43] Speaker 01: get much weight in the whole inventive concept inquiry. [00:05:47] Speaker 01: I would think. [00:05:48] Speaker 00: You're right, Your Honor. [00:05:49] Speaker 00: The difference is that in the hypothetical that Judge Bryson gave me, some of the rules were to compare standard sets of dice faces to a set of rules that would apply in this game. [00:06:00] Speaker 00: And those were the mental steps that I was talking about. [00:06:02] Speaker 00: In Ray Smith, in fact, several of the claim method steps involve mental steps to be performed by the dealer, of determining if so-and-so happens in this game. [00:06:11] Speaker 00: And these claims actually all start with [00:06:13] Speaker 00: active gerunds, steps, physical steps, rolling, wagering, pain. [00:06:17] Speaker 00: So they are physical steps that are being claimed. [00:06:20] Speaker 00: And we think that in combination, if you look at step two of Alice and combining those steps with the provision of the non-conventional dye, it does satisfy prong two of Alice. [00:06:29] Speaker 00: And it is eligible for that reason. [00:06:31] Speaker 01: Well, my concern, or I guess which was the board's concern, is that your inventive concept hinges on printed matter. [00:06:40] Speaker 01: And then there's a printed matter doctrine. [00:06:43] Speaker 01: which has its origins, in fact, in section 101. [00:06:47] Speaker 01: And so what are we to do when, if we were to conclude there's an abstract idea here, the abstract idea of wagering, playing a game, and then the steps of rolling dice and paying out for a win are conventional steps, but then the inventive concept hinges on the information that's communicated [00:07:13] Speaker 01: to the players based on which side of the individual die faces upwards. [00:07:19] Speaker 01: And that runs it seemingly right into the printed matter doctrine where this court is held and predecessor courts have held that printed matter, these types of markings on the surface of objects is not accorded any patentable weight. [00:07:38] Speaker 01: And in isolation, if that's all there is, that is not eligible subject matter. [00:07:43] Speaker 01: So what's your response to that apparent challenge to these claims? [00:07:49] Speaker 00: I agree, Judge Chen, that the printed matter doctrine is informative of Section 101. [00:07:53] Speaker 00: In fact, the examiner and the board did not explicitly provide or apply printed matter to the 101 rejections, but we do agree that if the limitations aren't given weight, [00:08:02] Speaker 00: then problem two analysis has to fail. [00:08:04] Speaker 00: So I do agree with you, Judge Chen. [00:08:05] Speaker 00: We do believe the printed matter doctrine just does not apply here because we're not claiming the die markings for the informational content. [00:08:12] Speaker 00: It's the arrangement of the die markings on the dice. [00:08:14] Speaker 00: So the printed matter test has two steps, as this court laid out in rate of Stefano. [00:08:19] Speaker 00: The first step is very simple. [00:08:21] Speaker 00: Is this printed matter? [00:08:22] Speaker 00: Is this being claimed for the content or the informational content that's being conveyed? [00:08:28] Speaker 00: And we can answer that question in the negative here. [00:08:30] Speaker 00: Because the claims actually specify die markings, the specification makes clear that those markings could be a logo or any sort of indicia. [00:08:39] Speaker 00: The arrangement is what's important here. [00:08:41] Speaker 00: And so in the printed matter test, I think that we can satisfy both prongs. [00:08:45] Speaker 00: We satisfy the first prong by just simply not being printed matter and not being directed to informational content. [00:08:51] Speaker 00: Very similar to the web assets in rate of Stefano, which weren't given patentable weight by the patent office, but this court did. [00:08:58] Speaker 00: Because the origins of those web assets were not informational content. [00:09:02] Speaker 00: It was where they came from. [00:09:03] Speaker 00: And very similar in this case, the arrangement of the die markings are not informational content. [00:09:09] Speaker 00: It's where they're arranged on a die. [00:09:12] Speaker 00: Now moving to the prong two, we think that prong one is the clearest way to decide the printed matter issue. [00:09:16] Speaker 00: But moving to prong two, whether they're structurally or functionally related to the die, the answer is absolutely. [00:09:23] Speaker 00: What we have here is very similar to the inregulac facts. [00:09:26] Speaker 00: in where the indicia, the markings, exploit the multi-sided nature of the dye and exploit the multiplicity of the dye. [00:09:34] Speaker 00: In Regulec, the printed matter was digits. [00:09:37] Speaker 00: It was specific digits that met an equation. [00:09:39] Speaker 00: And the substrate, the specimen, was a band, a circular band. [00:09:45] Speaker 00: And what this court found is although the claim specified the informational content, [00:09:50] Speaker 00: that the claims themselves were directed to a functional relationship between the information, the endless sequence of digits, and the endless continuous nature of a circle, of a band. [00:10:00] Speaker 00: And therefore, the digits were given weight. [00:10:03] Speaker 00: And we think that's exactly the case here. [00:10:04] Speaker 00: A die is not a piece of paper. [00:10:06] Speaker 00: It's a multi-sided object. [00:10:08] Speaker 00: And the fact that we have one dice with a die marking on only one side, second dice with a die marking on only two sides, and the same for the third die marking, shows that [00:10:18] Speaker 00: the claims the inventor have actually exploited the multiplicity and multi-sided nature of the dice. [00:10:23] Speaker 00: Not only three dice, but dice with at least, in this case, four sides, or it could be six sides, depending on the claims that you look at. [00:10:31] Speaker 00: So we do believe this pretty matter is just not an issue. [00:10:34] Speaker 00: And again, the patent office didn't explicitly apply it to section 101. [00:10:38] Speaker 00: I agree that it is informative. [00:10:40] Speaker 00: It's just not an issue for us. [00:10:41] Speaker 00: And when we get to moving down to the section 103 issues, the obviousness issue, [00:10:47] Speaker 00: That's all there is in the record. [00:10:49] Speaker 00: The patent office and the board wholly relied on printed matter. [00:10:52] Speaker 00: There's no evidence that these claims are obvious. [00:10:57] Speaker 03: Let me ask you a question about the relationship between the 103 and 101 arguments. [00:11:05] Speaker 03: If we were to agree with you on 101, but agree with the board on 103, I take it that that would leave several claims [00:11:17] Speaker 03: unrejected. [00:11:18] Speaker 03: Is that correct? [00:11:19] Speaker 03: So 103, standing by itself, will not dispose of this case. [00:11:24] Speaker 00: Is that correct? [00:11:24] Speaker 00: That's correct, Your Honor. [00:11:26] Speaker 00: The board did find that claims 2, 10, 18, 24, 25, and 26 were not rejected with substantial evidence at the examination level. [00:11:36] Speaker 00: So the board did open that up. [00:11:37] Speaker 00: OK. [00:11:38] Speaker 03: As far as the interrelation between those... Those are still in play, in other words. [00:11:43] Speaker 03: You haven't abandoned those claims. [00:11:45] Speaker 03: It wasn't entirely clear to me from the brief square what the status of those cases, but you've clarified it. [00:11:50] Speaker 00: Thank you. [00:11:51] Speaker 00: Correct, Your Honor. [00:11:51] Speaker 00: And to the extent that the court finds the case to be unconventional, then there's no evidence that shows that they're obvious. [00:11:58] Speaker 00: I do think that while these inquiries are separate, and they must be separate, is that what we have here for claims 210, 18, 24, 25, and 26 is an admission that there's no evidence to show obviousness. [00:12:09] Speaker 00: And without that evidence, we don't see how it can be possibly conventional under Section 101. [00:12:14] Speaker 00: There's only one prior reference that's cited. [00:12:16] Speaker 00: That's the Carol reference. [00:12:17] Speaker 00: And Carol talks about numerical dice, number one through six. [00:12:21] Speaker 00: And that is all it teaches. [00:12:23] Speaker 00: There's no teaching, suggestion, or motivation in Carol to lead one skilled in the art to make these very specifically arranged die, to arrange this die in the context of the game. [00:12:33] Speaker 00: And we believe that these, there's no motivation because Carol wouldn't work with that. [00:12:37] Speaker 00: If you look at Carol, there's betting fields where users bet on numbers one through six. [00:12:41] Speaker 00: What number is going to turn up when you roll these dice? [00:12:44] Speaker 00: And if you have that, that's the bedding fields in Carroll, that wouldn't work with these dyes. [00:12:49] Speaker 00: So there's really no interrelation between this. [00:12:51] Speaker 00: And the patent office has one point on obviousness aside from printed matter. [00:12:56] Speaker 00: It's that it would be an obvious rearrangement of indicia. [00:12:58] Speaker 00: And there's no evidence to that. [00:12:59] Speaker 00: There's absolutely no evidence or reasoning of why that would be. [00:13:03] Speaker 00: KSR is cited just generically, and Inrei Saeed is cited for the premise that arrangement of indicia would be obvious per se. [00:13:11] Speaker 00: Inrei Saeed dealt with [00:13:13] Speaker 00: whether or not a figure that was identified by the applicant was indeed recited in the claims. [00:13:18] Speaker 00: It was a matter of whether or not the limitations were claimed, not so much, as the Patent Office says, of an obvious rearrangement of indicia. [00:13:26] Speaker 00: So we don't believe that there's evidence there to make that connection between the Section 103 rejections and the 101 rejections. [00:13:34] Speaker 01: You're into your rebuttal. [00:13:35] Speaker 01: Thank you, Your Honor. [00:13:36] Speaker 01: Do you want to save some into your time, please? [00:13:38] Speaker 01: All right. [00:13:39] Speaker 01: Let's hear from the Patent Office. [00:13:40] Speaker 01: Miss Kelly? [00:13:43] Speaker 02: Good morning, Your Honors. [00:13:44] Speaker 02: May I place the court? [00:13:47] Speaker 02: Mr. Goldenar's dice are simply not inventive enough to transform the claim gambling method into something that's patent-eligible. [00:13:55] Speaker 02: And even if it were, his claims are obvious. [00:13:59] Speaker 03: But again, we can't decide this case on obviousness grounds alone. [00:14:04] Speaker 03: I take it you don't disagree with him on that. [00:14:07] Speaker 03: Oops. [00:14:10] Speaker 03: Sounds like maybe you do. [00:14:13] Speaker 02: I agree that the board said the examiner hadn't provided enough evidence that DICE tumblers and DICE cops are well-known. [00:14:28] Speaker 03: But from where we are at this point, some claims would remain if we decided this case only on 103. [00:14:35] Speaker 03: If we, for example, reversed on 101 and therefore 103 doesn't carry the day for you. [00:14:41] Speaker 03: Correct? [00:14:41] Speaker 02: Correct. [00:14:42] Speaker 02: It doesn't carry the day for me. [00:14:44] Speaker 02: Although I would submit that the examiner could easily find those references. [00:14:48] Speaker 02: Should you remand the examiner, it could easily find references to establish that dice cups and tumblers are old and well-known. [00:14:55] Speaker 03: It doesn't matter for this appeal. [00:14:57] Speaker 03: But that opportunity has passed, right? [00:15:00] Speaker 03: I mean, these claims would issue, I take it, if we were to say the claims that were struck down on 103 [00:15:11] Speaker 03: are affirmed, but the remaining claims have not been adjudicated against the applicant. [00:15:18] Speaker 03: And therefore they would issue, would they not? [00:15:22] Speaker 02: The claims that are on appeal before you are the claims that the board rejected. [00:15:26] Speaker 02: Right. [00:15:27] Speaker 03: But the claims that are not rejected, I take it, are open to issuance if we should reverse on 101. [00:15:34] Speaker 03: Isn't that correct? [00:15:36] Speaker 03: They're open to issuance. [00:15:37] Speaker 03: It doesn't mean that they will in fact issue. [00:15:41] Speaker 03: Okay. [00:15:42] Speaker 03: I'm not sure I exactly understand what the process would mean. [00:15:46] Speaker 03: You think that the examiner would get another shot? [00:15:47] Speaker 02: I don't believe that they're appealing that part of the opinion. [00:15:51] Speaker 03: No, no, they won that part. [00:15:53] Speaker 03: So they won the various claims. [00:15:57] Speaker 03: So I don't see that there's a process, maybe there is that I'm not aware of, but that the examiner would get another shot at this. [00:16:03] Speaker 02: I understand your point. [00:16:05] Speaker 02: I understand what you're saying. [00:16:07] Speaker 01: Your point is that the examiner has the discretion to reopen prosecution and perhaps do another prior art search and find more prior art. [00:16:16] Speaker 01: I think that would be the case. [00:16:17] Speaker 01: Let me finish. [00:16:19] Speaker 01: Then what he found in the first instance, because apparently he didn't find these particular claim elements. [00:16:26] Speaker 01: The agency has the discretion to reopen prosecution. [00:16:31] Speaker 01: Is that the point you're making? [00:16:34] Speaker 02: The point I'm making is that they wouldn't be allowed to reopen prosecution on this particular reference, just the Carol alone, but they could on a new combination, Carol and other references, that would back up the examiners. [00:16:51] Speaker 03: I understand. [00:16:53] Speaker 03: I'm sorry, I wasn't clear at the first time. [00:16:57] Speaker 03: I think I'm satisfied that I've got the answer. [00:17:01] Speaker 02: I did want to address two points raised by my friend across the aisle. [00:17:08] Speaker 02: The first is when you look at the Bullock and Miller cases, the difference in those cases was that it really mattered what the markings were, and it really mattered where they were on physical objects supporting them. [00:17:25] Speaker 02: Here, that's not the case. [00:17:27] Speaker 02: In Bullock, you had a measuring cup. [00:17:30] Speaker 02: Now, you could put the markings on that measuring cup. [00:17:34] Speaker 02: You know, the measuring cup allowed you to double and half recipes and triple and so on. [00:17:39] Speaker 02: You could put the markings on the cup so that they face the user or away from the user or often to the side. [00:17:47] Speaker 02: But they still had to designate specific volumes on the cup. [00:17:52] Speaker 02: So they needed to be placed on the cup at specific levels. [00:17:56] Speaker 02: And they needed to [00:17:57] Speaker 02: contain specific words, maybe they might use the metric system and maybe they might use the English system, but they needed to provide certain information. [00:18:08] Speaker 02: And in the case of the wristband, you couldn't change what those numbers were, you couldn't change their location, otherwise that wristband wouldn't function. [00:18:20] Speaker 02: In this case, the die markings, and they admit the die markings could be any [00:18:26] Speaker 02: The die markings only tell you whether it's a winning face or not. [00:18:31] Speaker 02: And the die markings can appear anywhere on the dice. [00:18:36] Speaker 02: The only thing is you need to know how many faces on the dice the marking or markings appear, because that allows you to calculate the probabilities of winning. [00:18:45] Speaker 02: That's pure printed matter. [00:18:48] Speaker 02: And that's something that conventional dice do, which shows that this method. [00:18:54] Speaker 01: I guess the other side is saying, well, [00:18:56] Speaker 01: they regard this as a structural relationship between the indicia and the structure of the dye because in these instances, you're either increasing or decreasing the chances of winning based on the number of sides you put any kind of printed matter on. [00:19:16] Speaker 01: And so to that extent, by limiting the number of sides you put a marking on, [00:19:21] Speaker 01: you've designed the success rate into the game. [00:19:28] Speaker 02: Well, that argument fails for the same reason provided in Judge Bryson's hypothetical, because you don't need to change the dice to change the probabilities of winning. [00:19:38] Speaker 02: You could just say on the first die, if you get a six, that's the winning face, and you win on that die. [00:19:43] Speaker 02: On the second die, you get a six or a five, and your probability is now one and three. [00:19:49] Speaker 02: On the last die, [00:19:52] Speaker 02: You could say winning sides are 4, 5, and 6, and then your probability of winning is 1 and 2. [00:19:58] Speaker 02: So it doesn't change the probability. [00:20:00] Speaker 02: I mean, there's nothing about it that changes the probability. [00:20:02] Speaker 02: You could still perform this exact method with a conventional dice. [00:20:09] Speaker 02: And that's the method of Carroll. [00:20:12] Speaker 02: What do you have to say about the Smith case that he put so much weight on? [00:20:17] Speaker 02: What I would say about the Smith case is what [00:20:20] Speaker 02: you correctly pointed out, which that was Dicta and Smith. [00:20:23] Speaker 02: The court didn't say that a new set of cards would make the invention at issue in that case patent eligible. [00:20:34] Speaker 02: It merely said we could envision that someone might come up with a set of cards that was so inventive when that would occur. [00:20:44] Speaker 02: But the court didn't say that [00:20:48] Speaker 02: I'm just having a new set, a deck of cards would be enough to get you over the second step of Alice. [00:20:54] Speaker 03: Well, maybe this example, which is, I think, taken from one of the board's cases, you might be able to help me on this. [00:21:04] Speaker 03: The board case, I think, involved a chess game that added a piece, actually two pieces, which I think called Esquires. [00:21:14] Speaker 03: So they moved in a way different from the Knights, Bishops, Rooks, Kings and Queens and Ponds. [00:21:18] Speaker 03: All right, so with the 10 by 10 board. [00:21:21] Speaker 03: And they said, yeah, I guess that was permitted, was issued. [00:21:30] Speaker 03: But if you just change the traditional black and white colors to red and blue, then I guess you'd say that isn't enough to constitute a new game as long as the [00:21:47] Speaker 03: moves of the parties were still the same. [00:21:51] Speaker 02: Correct, Your Honor. [00:21:52] Speaker 02: In fact, my son has a green and brown chess board at home. [00:21:57] Speaker 02: And so that is a conventional chess board. [00:22:00] Speaker 02: It does nothing more than with chess boards or checker boards. [00:22:04] Speaker 03: But would you agree with the extra piece being patentable post-Alice? [00:22:13] Speaker 02: I think that's a tough question. [00:22:16] Speaker 03: almost doesn't really fit very well to this category of cases, does it? [00:22:23] Speaker 03: Candidly. [00:22:23] Speaker 02: Well, I mean, no one case fits all fact patterns. [00:22:29] Speaker 02: But I don't think that there are any cases that would support what we have here. [00:22:35] Speaker 02: I mean, if you looked at a case like Mayo, what we have here is essentially like in Mayo, where you're really talking about [00:22:46] Speaker 02: some combination of mental steps and some instructions about how you correlate instructions about how to dose certain medication based on lab results. [00:23:00] Speaker 02: And so here, you're just saying, okay, well, if you, here's how you parlay this bet throughout this method. [00:23:07] Speaker 02: You're simply saying, you know, we are going to parlay a bet across three sets of dye, which is all conventional. [00:23:14] Speaker 02: You're going to identify winning faces. [00:23:17] Speaker 02: The probabilities of you getting a winning die face will increase as you roll each of the three die. [00:23:28] Speaker 02: And my saying that, when I'm giving that example now, I'm realizing that one of the things that Appellant has argued in his brief is that Mayo talks about a preemptive effect, and this wouldn't have a preemptive effect. [00:23:45] Speaker 02: No, but that isn't dispositive. [00:23:48] Speaker 02: That doesn't control what's going on in this case. [00:23:51] Speaker 02: I'm sorry. [00:23:51] Speaker 03: Go ahead, please. [00:23:52] Speaker 01: There's a games art unit at the PTO, right? [00:23:56] Speaker 01: Yes. [00:23:56] Speaker 01: And I guess, what are they allowing these days? [00:23:59] Speaker 01: Do you have any idea? [00:24:01] Speaker 01: I mean, what kinds of games possess an inventive concept at this point? [00:24:07] Speaker 02: I don't know per se, but I know that from cases that this court has handled, [00:24:14] Speaker 02: like the WMS case and things like that, that as far as gaming devices are concerned, those claims issue on gaming devices. [00:24:25] Speaker 03: But those are all computerized devices, if I recall. [00:24:28] Speaker 03: And we have a lot of those cases. [00:24:30] Speaker 03: But aren't those all just slot machine type cases with different ways of playing the game where the focus is on the technology? [00:24:41] Speaker 03: This is an area where there is no technological ingredient. [00:24:46] Speaker 02: Agreed. [00:24:47] Speaker 02: In fact, by admission, in appellant specification, we're talking about if there is a technology, it's a technology that goes back 5,000 years to the literal rolling of bones here. [00:25:00] Speaker 02: So this is a different situation. [00:25:04] Speaker 02: So if our gaming arts unit is still up and running, [00:25:10] Speaker 02: slot machines are one example of a sort of invention, a gaming device that they would allow to proceed. [00:25:18] Speaker 01: This is a follow-on question. [00:25:19] Speaker 01: I saw that the examiner first characterized the abstract idea as methods of organizing human activity. [00:25:27] Speaker 01: Ward made reference to that characterization as well. [00:25:32] Speaker 01: Do you have an idea of what the agency regards as a method of organizing human activity? [00:25:38] Speaker 01: What's their [00:25:39] Speaker 01: understanding of that phrase in terms of how they apply it to hundreds of thousands of applications each year? [00:25:46] Speaker 01: I mean, obviously, not every application gets a 101 rejection, but I'd like to know what you can tell us about how the agency understands that phrase. [00:25:55] Speaker 02: Well, I'd like to give you both a general and a specific answer. [00:25:58] Speaker 02: I'll start with a specific answer. [00:26:00] Speaker 02: The specific answer is rules for playing a game. [00:26:04] Speaker 02: It tells... [00:26:08] Speaker 02: how this particular invention is viewed. [00:26:11] Speaker 02: We're just talking about rules for playing a particular game, and that was the case in Smith. [00:26:18] Speaker 02: In a larger sense of the word, I mean, methods of organizing human activity certainly wouldn't be restricted to games. [00:26:26] Speaker 02: It might be rules for a particular dance. [00:26:32] Speaker 02: uh... it might be you know i mean that is an organizing people could be a lot of arrangements uh... business arrangements i guess that's yes that it could be business arrangements um... they uh... mcdonald's has its the qvc thing quality you know uh... it it it's uh... it how it tells its employees interact with customers are certain things you do how you greet a customer and so on all those things and [00:27:01] Speaker 01: I guess I'm wondering if there's some kind of policy document that's written up that explains, here's, we are the PTO, this is how we understand methods of organizing human activity. [00:27:15] Speaker 02: One is being prepared and it should issue in the next couple of months. [00:27:22] Speaker 02: I'm sure you're aware and I feel that maybe this is what your question is getting to. [00:27:26] Speaker 02: that Director Ianku issued a statement last Monday stating that outlining the different types of patent eligible subject matter and how the agency would view these things moving forward. [00:27:44] Speaker 02: What's happened in this case is that future guidance will not affect this case at all, even though the guidance is [00:27:56] Speaker 02: is not complete. [00:27:59] Speaker 02: We have discussed this case with people within the agency who are preparing and reviewing that guidance. [00:28:10] Speaker 03: Okay. [00:28:11] Speaker 03: So I have one more question. [00:28:13] Speaker 03: I just really find it difficult to apply 101 in this setting, but I understand that it's there and we have to try. [00:28:20] Speaker 03: But with respect to the rules of games, I suppose I [00:28:27] Speaker 03: go over to the patent office and I say, I have a new game. [00:28:30] Speaker 03: It looks a lot like Monopoly, but it's updated. [00:28:34] Speaker 03: I've got, instead of Mr. Moneybags, I have Warren Buffett or whatever, and I have redesigned the various properties. [00:28:46] Speaker 03: Now, setting aside 103, would my new game be patentable? [00:28:54] Speaker 03: I have different little characters. [00:28:56] Speaker 03: I don't have the thimble. [00:28:57] Speaker 03: I have a spaceship or something like that. [00:29:00] Speaker 03: Would that be patentable? [00:29:06] Speaker 02: Probably not. [00:29:07] Speaker 02: Not the method of playing. [00:29:09] Speaker 03: Even if I had a Tesla instead of a little car and so forth. [00:29:20] Speaker 03: So the implements were different. [00:29:23] Speaker 02: In essence, your implements would be conventional implements. [00:29:29] Speaker 02: I mean, what you described alone would not be enough to move the method of playing that game into something that's patent eligible. [00:29:45] Speaker 03: Could I ask you the same question, Mr. Allen? [00:29:47] Speaker 00: Sure, Your Honor. [00:29:48] Speaker 03: Would that game, my game, be patentable? [00:29:51] Speaker 00: I believe so, Your Honor. [00:29:52] Speaker 00: And in fact, the Patent Office does issue patents on board games, even to this day. [00:29:57] Speaker 03: Right. [00:29:58] Speaker 03: And the fact that, what would make the difference? [00:30:00] Speaker 03: The fact that I put different names on the properties, that I added new tokens? [00:30:08] Speaker 00: Judge Bryson, it would be the new pieces. [00:30:10] Speaker 00: It would be the kit, essentially, to play the game in combination with the gameplay. [00:30:14] Speaker 00: The indicia or the markings, you couldn't claim them for what they said, what the price was, what the property was on Monopoly. [00:30:21] Speaker 00: But overall, with the kit and the pieces, it does... It's a new manufacture? [00:30:27] Speaker 00: Absolutely, or a process that uses unconventional means. [00:30:31] Speaker 00: So we do believe that that would be eligible. [00:30:33] Speaker 00: And go back to your point on Ex Parte Stolorovic, I believe is the name, the board case from 2013 that... This is the 10 square, 10 by 10 chessboard? [00:30:43] Speaker 00: Exactly. [00:30:44] Speaker 00: And that case, Your Honor, is exactly in line with Inray Smith, which came out from this court three years later. [00:30:49] Speaker 00: where I found that if you took a game and changed something about the physical arrangement of the game, that's a new game, and that is unconventional. [00:30:56] Speaker 00: So we do agree that ex parte Stavorovic is indicative of this case. [00:31:01] Speaker 00: I do want to talk about printed matter really quickly. [00:31:04] Speaker 00: Judge Bracey, you mentioned that alice jurisprudence does not fit to this case very well. [00:31:08] Speaker 00: And I agree with that. [00:31:10] Speaker 03: Go back to the Stavorovic case. [00:31:11] Speaker 03: I mean, you're not suggesting that if I go over [00:31:17] Speaker 03: PTO and I submit a chess game in which you can't take pawns en passant that I am entitled to claim that that's a new invention, right? [00:31:28] Speaker 00: Absolutely not, Your Honor. [00:31:29] Speaker 03: Setting aside 103, it would be invalid under 101? [00:31:33] Speaker 00: Yes, that would be a rule. [00:31:34] Speaker 00: So your invention there or the inventive concept would be a rule, an abstract idea. [00:31:37] Speaker 00: And what's left for second prong of Alice in that circumstance would be nothing. [00:31:43] Speaker 00: There would be nothing left except a conventional chessboard [00:31:46] Speaker 00: with conventional chess pieces. [00:31:48] Speaker 03: So if I change the knight from being a knight with a horse's head and turn it into an elephant, actually the elephant looks like a rook, so if I change it by putting a peacock in where the knight is, then that would be a change in the pieces that would be sufficient to be patentable? [00:32:07] Speaker 00: Potentially. [00:32:08] Speaker 00: I don't think that would be patentable, Your Honor, because the peacock, in that instance, [00:32:11] Speaker 00: It's still a conventional item. [00:32:13] Speaker 00: It doesn't really affect the game play. [00:32:14] Speaker 00: It's a different piece. [00:32:15] Speaker 03: It's a different... In Ex Parte Stavorovic, they added an additional... I understand that, but I'm backing off from Ex Parte Stavorovic. [00:32:23] Speaker 00: I struggle with that hypothetical of Judge Bryson because I do not think that that would add much... That's not the inventive concept there. [00:32:29] Speaker 00: You're still playing the game of chess and you're still using the pieces just because one piece changes in appearance. [00:32:35] Speaker 00: I don't think that would really affect the analysis. [00:32:37] Speaker 00: I think ex parte Stavorovic is really interesting because they added the column in row to the chessboard, which affected the game play and affected the article manufacturer. [00:32:46] Speaker 00: On the printed matter issue, I think that the Patent Office skipped the first prong of the printed matter test. [00:32:55] Speaker 00: Went straight to Gulak and Ray Miller talking about the structural and functional relationship. [00:32:59] Speaker 00: Like I said before, I don't think we get there. [00:33:01] Speaker 00: We don't get to the second prong. [00:33:02] Speaker 00: But if we do, let's look at the second prong, [00:33:05] Speaker 00: What the patent office said was that the die markings convey winning or losing, and that's simply not the case. [00:33:12] Speaker 00: Winning or losing depends on the wager, depends on how the game is set up. [00:33:15] Speaker 00: What the die markings convey is just that they exist. [00:33:17] Speaker 00: And if we reach a point in the printed matter jurisprudence where simply existing is conveying information, we're back to in-rate to Stefano, where the web assets existed. [00:33:27] Speaker 00: It doesn't mean that they convey information. [00:33:29] Speaker 00: A chair exists, and it conveys the fact that it's a chair. [00:33:32] Speaker 00: And that's exactly the logic that's being applied to the dice in this case. [00:33:38] Speaker 00: We think that we have on the second prong much more than the claims in Inrei Gulak and Inrei Miller. [00:33:45] Speaker 00: So Gulak actually dealt with the digits on the circular band. [00:33:49] Speaker 00: Miller was the volumetric indicia on a container on a vessel. [00:33:55] Speaker 00: And that's indicia that's printed on the side of a vessel. [00:33:58] Speaker 00: While it's surely functionally related to the volumetric measurements in that vessel, we have much more in this case. [00:34:04] Speaker 00: We have a multi-sided dye that have a very specific arrangement of indicia. [00:34:08] Speaker 00: So to the extent that we get past that first prong of printed matter, and we actually do look at the structural or functional relationship, and I emphasize that it's really not necessary that we clearly have that functional structural relationship more so than Miller, more so than Gulag. [00:34:24] Speaker 00: And then finally, [00:34:26] Speaker 00: The Patent Office mentioned Smith. [00:34:28] Speaker 00: And to your point, Judge Mayer, the fact that Smith, we're using the negative rule from Smith, the dicta, if you will. [00:34:34] Speaker 00: In that case, however, the court specifically asked the Patent Office, during oral argument, if they agreed with that position. [00:34:41] Speaker 00: And the Patent Office agreed. [00:34:42] Speaker 00: And all we're asking for this is that rule to be applied to these set of facts. [00:34:47] Speaker 00: OK, thank you. [00:34:47] Speaker 00: Thank you so much. [00:34:48] Speaker 00: Case is submitted.