‘Tic Tac Fruit’ Gaming System Claims Fail CAFC’s Eligibility Analysis

“The invention is directed to a concept for overcoming the legal obstacles discussed in the Background section of the patent rather than providing a technological solution to a technological problem.” – CAFC opinion

eligibilityThe U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 21, affirmed a district court’s grant of summary judgment that claims of a patent for an electronic gaming system were ineligible under Section 101.

U.S. Patent No. 7,736,223 is owned by Savvy Dog Systems and POM of Pennsylvania (Savvy Dog) and is directed to a “more skill-based and less chance-based” version of an electronic game called “Tic Tac Fruit.” Savvy Dog sued Pennsylvania Coin and PA Coin Holdings (Pennsylvania Coin) for infringement in the Middle District of Pennsylvania. Pennsylvania Coin moved to dismiss the case, in part because it said the claims constituted patent ineligible subject matter.

The district court agreed, holding that “claim 44 describes the rules for playing a game, and is thus an abstract idea within the meaning of Alice step one.” However, the district court denied the motion to dismiss because determination of Alice step two, specifically, “[w]hether the technology embedded into the game processor is an improvement and ‘inventive concept’ is a question of fact that the court cannot determine at this early stage of litigation.” Following claim construction, Pennsylvania Coin moved for summary judgment, again arguing the claims were ineligible, and the court said at Alice step two “that none of the claimed elements of claim 44 individually, or in an ordered combination, transformed the abstract idea into an inventive concept,” thus granting summary judgment.

On appeal, the CAFC noted that Savvy dog disagreed with the district court’s characterization of claim 44 as being directed to the rules for playing a game and said instead that the claim is “actually directed to ‘a novel gaming terminal architecture’ that previews the game ‘before the player commits to play the game, thereby elevating skill and lessening the role of chance in the game.’”  But the CAFC said that, under either construction, the claim is directed to an abstract idea. Citing to In re Smith, the appellate court said it has “found similar game implementations to be patent ineligible” and that, even under Savvy Dog’s interpretation, “claim 44 is not directed to a technological solution to a technological problem.” Further citing to Chargepoint v. SemaConnect, the CAFC continued:

“Notably, the specification does not describe ‘overcoming some sort of technical difficulty’ in displaying the preview of the game before player commitment….

Indeed, the invention is directed to a concept for overcoming the legal obstacles discussed in the Background section of the patent rather than providing a technological solution to a technological problem.”

While Savvy Dog had argued that the invention solves the legal problems surrounding Ohio’s crackdown on electronic gambling games, after which only “skill-based” games in which “the outcome of play during the game must be controlled by the person playing the game and not by predetermined odds or random chance controlled by the machine,” the CAFC said the solution offered is not a technological one. “Rather the purported elevation in the player’s skill is due to when the game field is displayed, not how it is displayed,” wrote the court. “Stated differently, nothing in the claim or the specification describes a new technological way of displaying.”

At Alice step two, Savvy Dog argued that “the testing of the game field and the automatic previewing of the actual game to be played, whether individually or as an ordered combination, are inventive concepts,” according to the opinion. But the CAFC found that “these steps are abstract ideas themselves—whether viewed as part of a set of rules for playing a game or part of a game previewed to the player before committing to playing—and thus cannot be an inventive concept under Alice step two.”

Since all that is left of the claim after the abstract idea is identified are “generic and conventional computer components (e.g., a gaming terminal and touch screen display) that are used in a routine and conventional way,” the claim also fails at Alice step two, said the court.

Image Source: Deposit Photos
Author: miflippo
Image ID: 28667711 


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Join the Discussion

8 comments so far. Add my comment.

  • [Avatar for concerned]
    March 23, 2024 02:21 am


    You sound just like my attorney, and I agree with you 100%.

    However, your claim of turning lead into gold, although accomplished for the first time in the history of mankind, is just the abstract idea of becoming wealthy. Petition denied!

  • [Avatar for mike]
    March 22, 2024 04:34 pm

    Claim 44 should have been directed to “reducing game play processing cycles by previewing a game to potential players prior player commitment.”

    Then, what should have been argued (or provided) at the outset was that, by playing a preview of the game on a game terminal prior to a player committing to play the game, a potential player can achieve an elevated skill in game play prior to playing a game, and as such, the claim limitations provide for a reduction in processing cycles on the game terminal not having the technology, because, in order for a player to gain the elevated skill on a terminal not having the technology, such a terminal would require the player to first actually play a game to learn how the game operates, and then only after playing the game, the player can then play the game again with the elevated skill. Such a presentation of claim 44 might demonstrate how it solves a technical problem (processing cycles and power savings).

    Much like how Super Mario Bros on NES previews game pla…oh wait. At least you’ve overcome 101. Now overcome 103.

  • [Avatar for IP Nerd]
    IP Nerd
    March 22, 2024 11:58 am

    Here is Claim 44 for the interested parties

    44. An electronic gaming system comprising:

    an electronic game terminal including a touch screen display;

    a game processor for generating an interactive electronic game on the game terminal, the game processor configured for:

    constructing a field having a plurality of elements for the interactive game display wherein each element includes a game symbol from a plurality of predetermined game symbols;

    determining at least one winning combination for each play of the game;

    testing the game field prior to displaying the game to the player to ensure that a winning combination more valuable than the determined winning combination is not generated inadvertently in completing the field;

    automatically displaying an actual game to be played on the touch screen game display to a player prior to initiating activation of game play;

    determining if the player has decided to play the displayed game; and

    displaying an outcome resulting from play of the displayed game.

  • [Avatar for KenF]
    March 22, 2024 11:18 am

    @Pro Say

    As someone who handled a lot of gaming-machine patents for a decade, I wish that were so. Sadly, it isn’t. As I decried in an appeal brief I recently filed,

    Stunningly, of the 518 words in this claim, 447 – i.e., 86% – are underlined [as
    allegedly constituting the abstract idea], and the examiner blithely reduces
    those 447 words down to nothing more than “the abstract idea of at least a
    certain method of organizing human activities,” e.g., “the abstract idea of
    providing/conducting a game for a player . . . by following rules or
    instructions.” With no analysis or meaningful explanation at all, the
    examiner then analogizes the concept recited in those 447 words to “[a]t
    least a certain method of organizing human activities (e.g., managing
    personal behavior or relationships or interactions between people
    (including social activities, teaching, and following rules or instructions)” or
    “fundamental economic principles or practices (including hedging,
    insurance, mitigating risk)[.]” The only terms that have not been underlined

    • An information processing system, comprising a storage device containing therein data defining a plurality of predefined stage-progression scenarios and state-of-stages data, a display, and a controller programmed to execute on the display

    • the storage device

    • wherein the controller is programmed (five times)

    • from the storage device; and

    • in the storage device

    Sadly, the whole pursuit has become a fool’s errand. No matter HOW many limitations you put into the claim, and no matter WHAT benefit the claim-recited concept might afford, the examiner will just go through and pre-ordain you to failure by pre-assigning every limitation other than pure hardware to the allegedly abstract concept. (In many respects, this reminds me of differential equations, where you guess the solution and work backwards; here, the “solution” for the examiner is that the claim is not patent-eligible, and every bit of MPEP boilerplate “poo” they monkey-fling at you flows from that decision at the outset.)

    I have taken to recommending just kicking the can down the road and waiting for Congress to act……. I have also taken to trying to turn lead into gold…… sigh….

  • [Avatar for Model 101]
    Model 101
    March 22, 2024 11:17 am

    Conventional computer… they should have invented some new computer.

    IBM, Apple, Google, Microsoft ….only companies who can get past that one.

    It’s a big tech limitation if there ever was one.

  • [Avatar for Anon]
    March 22, 2024 09:50 am

    …a simple request:

    Please list the panel members (it does matter).

    Here: Before TARANTO, CHEN, and STOLL, Circuit Judges.
    STOLL, Circuit Judge.

  • [Avatar for Anon]
    March 22, 2024 09:48 am


    There is no such thing as a “technological arts” test.

  • [Avatar for Pro Say]
    Pro Say
    March 21, 2024 06:18 pm

    Will the CAFC shame never end?

    Even under the Congress-usurping, unconstitutional Alice, this was not a close call, as claim 44 was unquestionably eligible.

    Because the fix was in, the patent owner never had a chance.

    Where are you, Congress? Where the h.e.l.l. are you?

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