United States: 12 Steps: May Still Not Be Enough For 101

Last Updated: May 8 2014
Article by George L. Kanabe

Gametek LLC v. ZYNGA Inc., Case No. 13-2546 (Judge Seeborg) (Related to Case Nos. 13-3089; 13-3472; and 13-3493)

Not every patent case must be litigated on the merits through summary judgment or trial in order to end with a finding of invalidity. Rather, at least when challenging § 101 patent eligibility, an early Rule 12(c) motion for judgment on the pleadings can stop a case before it even takes off, as Judge Seeborg's April 25, 2014 Order, finding Plaintiff Gametek's sole asserted patent invalid, makes clear.

The case involved U.S. Patent No. 7,076,445 directed to facilitation of in-game purchases "without interrupting the gaming action." Representative claim 1 recites "twelve steps" which Plaintiff believed to establish patent eligibility:

A method of managing the operation of a game which includes a game environment, and is programmed to control a gaming action for at least one of a plurality of users, said managing method using a programmed computer to effect the following steps:

  1. tracking the activity of the at least one user in the course of the gaming action;
  2. permitting the at least one user to create an account for receiving a consideration of the at least one user, the at least one user having a set of demographics;
  3. determining the eligibility of the at least one user to purchase at least one of a plurality of game objects, said eligibility determining comprises the following sub steps:

    1. permitting the at least one user to select the at least one game object,
    2. setting the purchase price of the at least one game object, and
    3. comparing the account balance of the at least one user's consideration with the set price of the at least one game object and, determining if the balance of the user's consideration is not less than the set price, determining the at least one user to be eligible to purchase the at least one game object;
  4. displaying in the game environment a purchase price of the at least one game object;
  5. presenting to the at least one user an offer to purchase the game object dependent upon a group of game parameters comprising the tracked activity of the at least one gaming action of the at least one user and, the one game environment or the one set of demographics of the at least one user
  6. permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user; and
  7. supplying the at least one purchased game object to the at least one user without interrupting the gaming action of the at least one user and incorporating the game object into the game.

Defendant Zynga and three additional gaming defendants from sister cases, Funzio Inc., Electronic Arts Inc., and Crowdstar International Limited, all disagreed. Defendants filed "separate but substantively identical" motions asserting that the '445 patent is invalid "as a matter of law for lack of patentable subject matter," and that Defendants are therefore entitled to judgment on the pleadings.

Despite reference to a general purpose computer in the claim preambles, according to Defendants "the [claimed] steps, though lengthy, recite nothing more than a basic purchasing transaction." In what may constitute the oldest prior art cited in a patent litigation, Defendants stressed to the Court that "the idea of incorporating money during game play has been around in ... gambling since at least 5000 BC."

One day after oral arguments, the Court issued its Order agreeing with Defendants and noting that the '445 patent "provides no meaningful limitations on the underlying abstract idea." In so ruling, Judge Seeborg found that the "twelve specific concrete steps" in the claims repeatedly emphasized by Gametek in opposing Defendants' motion fail to "leave[] any meaningful space for a third party to practice the abstract idea of allowing a user to purchase an object for use in the court of game play." On the contrary, these steps "are nothing more than a teased-out version of the basic steps of any commercial transaction: a seller offers an item for sale to an interested and able buyer, the buyer accepts that offer, and the seller then provides the item in exchange for valuable consideration."

The inclusion in the claims of an apparent computer requirement did not save the day for Gametek. Addressing the claimed "us[e of] a programmed computer" found in each independent claim's preamble, Judge Seeborg agreed with Defendants that the '445 patent ideas can be implemented with or without a computer because "the specification ... provides as non-computer illustrations ... the process by which a golfer might purchase the advantage of additional golf strokes during a match." The Court was ultimately not swayed by the mere recitation of a general computer, given the absence of "any details" on the claimed computer or how implementation with a computer would "substantively" differ from non-computer practice.

Judge Seeborg's Order does not appear to create any new law or guidance on how to analyze patentability under § 101. However, it serves as a powerful reminder that, as with many things, quality is more important than quantity when it comes to claim language. The Order also reminds and alerts patent defendants that they may be able to dispense with patent claims based on a § 101 defense without resort to summary judgment motions, expert reports, and possibly even without engaging in claim construction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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