PTAB

CBM2018-00005

Bally Gaming Inc v. New Vision Gaming & Development Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Method of Playing a Bonus Wager
  • Brief Description: The ’806 patent discloses methods of playing a wagering game with a deck of cards. The core concept is providing a player the opportunity to place a bonus wager on a "bonus hand" formed by selecting one card from each of a subset of other dealt hands, with a payout awarded if the bonus hand achieves a predetermined rank.

3. Grounds for Unpatentability

Ground 1: Claims 1-12 are unpatentable under 35 U.S.C. §101 as being directed to patent-ineligible subject matter.

  • Authorities Relied Upon: Petitioner’s argument centered on the two-step framework from Alice Corp. Pty v. CLS Bank Int’l and supporting precedent, particularly In re Smith, which found rules for a wagering card game to be an abstract idea.
  • Core Argument for this Ground: Petitioner contended that the claims of the ’806 patent fail both steps of the Alice test for patent eligibility. The claims are directed to an abstract idea, and they lack any inventive concept that could transform them into a patent-eligible application.
    • Alice Step 1: Abstract Idea: Petitioner argued the claims are directed to the abstract idea of allowing bonus wagers in a wagering game. This constitutes a set of rules for a game, which the Federal Circuit has held is an abstract concept. The claims define fundamental economic practices—placing wagers and paying winnings—based on the probabilities of card distributions, which is analogous to other abstract financial concepts like hedging risk or exchanging financial obligations. The focus of the claims is on the game's rules and structure, not on a technological improvement. Dependent claims were characterized as merely adding minor, conventional variations to these abstract rules, such as limiting the bonus hand to a poker hand or specifying the payout as a multiple of the wager.
    • Alice Step 2: Lack of Inventive Concept: Petitioner asserted that the claims, viewed individually or as an ordered combination, provide no inventive concept. The limitations simply recite well-understood, routine, and conventional activities associated with card games. The patent itself acknowledged that bonus bets were well-known in casino games. The core elements—a standard deck of cards, players, dealing, forming hands, and comparing them to a pay table—are all generic and conventional. The physical components mentioned (cards, players) and the recited actions (dealing, paying) are insufficient to transform the abstract game rules into a patent-eligible invention. Furthermore, the dependent claims were argued to add nothing more than other conventional gaming options, such as forming a bonus hand from face-up cards or from a combination of player and banker hands.

4. Key Claim Construction Positions

  • Petitioner contended that claim construction was immaterial to the §101 analysis, as any reasonable interpretation would result in the claims being directed to an abstract idea.
  • However, for CBM eligibility and to reinforce the abstract nature of the claims, Petitioner provided definitions for key financial terms:
    • wager: Involves risking money or a monetary equivalent on an uncertain event.
    • payout: Involves the payment of money or a monetary equivalent to a winning player.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the ’806 patent does not claim a "technological invention." This argument supported both the patent's eligibility for CBM review and its failure under the §101 analysis.
  • Petitioner argued the claims are written at a conceptual level and recite no technological elements or solutions to a technical problem. The only physical aspects recited (cards, players) are conventional and non-technological.
  • While the specification suggests the game may be implemented on generic hardware like a video poker machine or personal computer, such implementation is not required by the claims. Petitioner asserted that even if it were, the mere recitation of generic, conventional hardware to perform the abstract game rules would not render the claims technological or patent-eligible.

6. Relief Requested

  • Petitioner requested the institution of a Covered Business Method (CBM) patent review and the cancellation of claims 1-12 of the ’806 patent as unpatentable under 35 U.S.C. §101.