A Curious Section 101 Comment in a Case Called Smith


Just how “new” do medical diagnostic or software inventions have to be to get patented? As “new” as a game using a new or original deck of cards? 

Practitioners who’ve been trying to get such patents through the Patent and Trademark Office – not to mention the U.S. district courts and Federal Circuit – might be surprised to hear that they haven’t been playing with a new deck when it comes to their inventions – at least not where the PTO has been concerned. 

On March 10, the Federal Circuit held that a variation on blackjack using standard playing cards is not patent-eligible. In re Smith, No. 2015-1664 (Fed. Cir. March 10, 2016). 

The game at issue failed Alice step one because playing a wagering game is an abstract idea. It failed step two because “shuffling and dealing a standard deck of cards are purely conventional activities.” However, the court also said – and noted that the PTO “acknowledged as much during oral argument” – that “claims directed to conducting a game using a new or original deck of cards” could potentially satisfy step two. 

Medical and software practitioners might well think they have been presenting inventions comparable to “a new or original deck of cards” all along – while still being soundly rejected under 35 U.S.C. §10, the section of the U.S. code governing patentable inventions. 

The two U.S. Supreme Court cases that supplied the notorious two-part test are instructive. 

In Mayo Collaborative Servs. v. Prometheus Labs. Inc., 132 S. Ct. 1289, 2012 BL 66018, 101 U.S.P.Q.2d 1961 (2012), the corresponding “conventional activities” — essentially limitations that were unable to save the diagnostic claims — were “administering” a drug and “analyzing” its effects. One could argue that those functions are comparable to “shuffling and dealing” such that inventions on “administering and analyzing” a “new or original drug” would be patent-eligible. But they weren’t. 

In Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2014 BL 170103, 110 U.S.P.Q.2d 1976 (2014), the activities that fell short of step two were “electronic recordkeeping” and computer-based functions that “obtain data, adjust account balances, and issue automated instructions.” It could be that it’s harder to put a “new or original” label on records, data, balances and instructions. But that is precisely what the patent owner argued: that “shadow records” were new. But apparently, not new enough.

Perhaps it’s time for the PTO and/or the court to clarify the “acknowledged” exception to patent ineligibility in Smith.