On March 5, 2020, the United States District Court for the District of Delaware issued an Opinion granting defendant’s motion for judgment on the pleadings based on patent-ineligible subject matter. CG Tech. Dev., LLC v. Fanduel, Inc.
, Case No. 1:17-cv-01041-RGA (D. Del. Mar. 5, 2020). The Court rejected plaintiff’s law-of-the-case argument and held that the claim-at-issue failed the Supreme Court’s two-step Alice
test, and was therefore unpatentable under 35 U.S.C. §101.
As articulated, for example, in the Supreme Court’s Musacchio
decision, the “law-of-the-case” doctrine provides that when a court decides upon a rule of law in a case, that decision should continue to govern the same issues in subsequent stages of the same case. See Musacchio v. United States
, 136 S. Ct. 709, 716 (2016).
With respect to patent eligibility, the Supreme Court has set out a two-step framework:
Alice Corp. v. CLS Bank Int’l
- determine whether the claims at issue are directed to one of the patent-ineligible concepts (such as an abstract idea); and if so, then
- determine whether the elements of the claim, considered both individually and as an ordered combination, recite an “inventive concept”—i.e., an element or combination of elements that is sufficient to ensure that the practice amounts to significantly more than a patent upon the [ineligible concept] itself.
, 573 U.S. 208, 217–18 (2014) (internal quotation and citation omitted).
In the instant case, the patent was directed to determining game configurations on a mobile device based on the location of that device. The sole asserted claim, claim 6, depended from claim 1. Together, the claims required:
- A method comprising:
determining a first location of a mobile gaming device;
determining a first game configuration associated with the first location;
generating, by a computer system, a first game outcome using the first game configuration;
instructing a display screen of the mobile gaming device to display an indication of the first game outcome; determining a first payout associated with the first game outcome;
crediting a player account with a first amount based on the first payout;
determining a second location of the mobile gaming device, wherein the second location is different from the first location;
determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration;
generating, by the computer system, a second game outcome using the second game configuration;
instructing the display screen of the mobile gaming device to display an indication of the second game outcome;
determining a second payout associated with the second game outcome; and
crediting the player account with a second amount based on the second payout.
6. The method of 1, in which determining the first game configuration includes:
accessing a lookup table which contains an ordered list of locations and associated game configurations;
finding within the lookup table the first location; and
determining that the configuration is associated with the first location.
After claim construction—where the Court construed “lookup table” to mean “an array or matrix of data that contains items that are searched”— defendant moved for judgment on the pleadings, per Fed. R. Civ. P. 12(c), asserting that claim 6 was patent ineligible because it (i) fell within the category of methods of organizing human activity that the Federal Circuit has routinely found is directed to abstract ideas, and (ii) lacked an inventive concept, as it simply relied on generic computer components.
Plaintiff countered first, that the Section 101 argument was precluded by the law-of-the-case doctrine because a prior court already decided that the claims of the patent were not directed to an abstract idea, and second, that the asserted claim was not patent ineligible, regardless. Plaintiff’s law-of-the-case argument was premised on the fact that defendant’s case had been consolidated with another case, in which the prior court found the claims not patent ineligible at the motion-to-dismiss stage. (Plaintiff originally brought the case against defendant in another district court, which then transferred the case to the District of Delaware.)
The Court rejected both arguments.
According to the Court, the law-of-the-case doctrine was inapplicable because defendant was not a party to the prior Section 101 decision. Rather, its case was merely consolidated for pre-trial purposes after the decision was rendered, and the decision did not address or mention the defendant’s case.
As to patent eligibility, the Court walked through the Alice
Step One, the Court found that asserted claim 6 was directed at the abstract idea of using a computer to automate a method of organizing human activity. The Court distinguished claim 6 from claims in other Federal Circuit decisions which used computers as tools to solve problems or to improve the functionality of networks themselves. Instead, claim 6 merely uses a lookup table—which, as noted above, the Court construed as “an array or matrix of data that contains items that are searched”—to determine game configuration associated with location. Under the Court’s construction, claim 6 encompasses several abstract ideas, including determining the location of a mobile gaming device, determining the game configuration associated with that location, and implementing that game configuration, which independently use computers as tools. Thus, the Court ruled that claim 6 was directed to the abstract idea of “determining game configuration based on location.”
Step Two, the Court found that claim 6 does not have a particular arrangement of elements that creates an inventive concept, but instead teaches the basic steps for using a conventional lookup table. A lookup table itself, which is a conventional and well-known data structure, is not an inventive structure. Further, in claim 6, the lookup table is used in a conventional way, as it is searched to find the game configuration associated with a location. Accordingly, viewed separately or in combination, the elements of claim 6 do not recite an inventive concept that would render eligible a claim directed to an abstract idea.
The Court’s decision is a yet another example of claims that do not improve the functioning of a computer being patent ineligible, and even though it has become easier to create questions of fact to defeat motions to dismiss and motions for judgment on the pleadings, many courts are still resolving Section 101 issues at the pleading stage.