13 May 2014

Game not Patentable in the United States

I came across the interesting case of Gametek LLC v Zynga, Inc (25 April 2014) recently. This matter was heard in the US District Court, San Francisco Division.

Gametek sued Zynga and some other defendants for the infringement of US Patent 7,076,445.

The relevant claim reads as follows:

1. 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:
a) tracking the activity of the at least one user in the course of the gaming action;
b) 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;
c) 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:
i) permitting the at least one user to select the at least one game object,
ii) setting the purchase price of the at least one game object, and
iii) 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;
d) displaying in the game environment a purchase price of the at least one game object;
e) 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 least one user
f) 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
g) 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.

Notable is the court's statement that "the specification suggests the method may be performed with or without a computer,...". Also neither "the claim nor the specification provides any details on the "programmed computer" or how implementation of the method steps by means of a computer would differ substantively from non-computer practice."

Gametek did try to make something of the 12 steps in the above claim. However, the court held that "these twelve 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." While the practice of these steps might be facilitated by use of a computer, a computer is not necessary. The court cited CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), in which it was held that “methods which can be performed manually, or which are the equivalent of human mental work, are unpatentable abstract ideas”.

The Machine-or-Transformation test was also applied. In short a "claim in meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter". To cite the famous Bilski decision: "When assessing computer implemented claims, while the mere reference to a general purpose computer will not save a method claim from being deemed too abstract to be patent eligible, the fact that a claim is limited by a tie to a computer is an important indication of patent eligibility.”

Gametek contended that the processes in the claim cannot be, and never were, performed by a human absent a computer. But Gametek offered no explanation of "why these seemingly obvious steps have never been and could never be performed by a computer.

The court concluded that the claims were unpatentable.

The message here is clear. You are going to have problems in the United States (and probably in Australia as well) if your invention does not depend on the operation of some form of data processing apparatus. You need to be sure to provide your patent attorney with plenty of technical information to support an argument that a some form of machine plays an important and significant role in the exercise of your invention,

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