Planet Bingo, LLC v. Vkgs LLC

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
PLANET BINGO, LLC,
Plaintiff-Appellant,
v.
VKGS LLC (doing business as Video King),
Defendant-Appellee.
______________________
2013-1663
______________________
Appeal from the United States District Court for the
Western District of Michigan in No. 12-CV-0219, Judge
Robert Holmes Bell.
______________________
Decided: August 26, 2014
______________________
KAREN J.S. FOUTS, Weiss & Moy, P.C., of Grand Rap-
ids, Michigan, argued for plaintiff-appellant. With her on
the brief were VERONICA-ADELE R. CAO and KENNETH M.
MOTOLENICH-SALAS, of Scottsdale, Arizona.
STEVEN L. UNDERWOOD, Price Heneveld LLP, of
Grand Rapids, Michigan, argued for defendant-appellee.
With him on the brief was MATTHEW J. GIPSON.
______________________
2 PLANET BINGO, LLC v. VKGS LLC
Before TARANTO, BRYSON, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
Planet Bingo, LLC, owns two patents for computer-
aided management of bingo games. After Planet Bingo
filed an infringement action against VKGS, LLC, the
district court granted summary judgment of invalidity,
concluding that the patents do not claim patentable
subject matter under 35 U.S.C. § 101. Because a straight-
forward application of the Supreme Court’s recent holding
in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347(2014), leads us to the same result, we affirm.
I
Planet Bingo alleged that VKGS infringed U.S. Patent
Nos. 6,398,646 and 6,656,045. The ’045 patent states that
it is a continuation of the ’646 patent. The claims at issue
recite computer-aided methods and systems for managing
the game of bingo. Generally, the claims recite storing a
player’s preferred sets of bingo numbers; retrieving one
such set upon demand, and playing that set; while simul-
taneously tracking the player’s sets, tracking player
payments, and verifying winning numbers. See, e.g., ’646
patent col. 8 l. 45–col. 9 l. 18, col. 9 l. 33–col. 10 l. 13.
Variations between the claims include display capabilities
and options to purchase sets of bingo numbers.
Following a Markman order, VKGS filed a motion for
summary judgment that the asserted claims are directed
to a patent-ineligible concept. Applying the majority
opinion’s approach in CLS Bank International v. Alice
Corp., 685 F.3d 1341 (Fed. Cir. 2012) (en banc), the dis-
trict court determined that “each method claim encom-
passes the abstract idea of managing/playing the game of
Bingo.” Planet Bingo, LLC v. VKGS, LLC, 961 F. Supp.
2d 840, 851 (W.D. Mich. 2013). The district court deter-
mined that the use of a computer in the method claims
“adds nothing more than the ability to manage . . . Bingo
PLANET BINGO, LLC v. VKGS LLC 3
more efficiently,” id. at 852, and that “the limitations of
the system claims are the same as the limitations of the
method claims that failed to result in an ‘inventive con-
cept,’” id. at 854. The district court stated that the sys-
tem claims employ a computer “only for its most basic
functions,” including “storing numbers, assigning identifi-
ers, allowing for basic inputs and outputs, printing of a
receipt, displaying of numbers, and/or matching . . . for
verification.” Id. at 854–55. The court granted summary
judgment on the grounds that all of the asserted claims
are invalid under § 101. Id. at 857.
Planet Bingo appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
II
We review the grant of summary judgment under the
law of the regional circuit. Charles Mach. Works, Inc. v.
Vermeer Mfg. Co., 723 F.3d 1376, 1378 (Fed. Cir. 2013).
The Sixth Circuit reviews the grant or denial of summary
judgment de novo. Tompkins v. Crown Corr, Inc., 726
F.3d 830, 837 (6th Cir. 2013). We review de novo whether
a claim is valid under § 101. In re Nuijten, 500 F.3d 1346,
1352 (Fed. Cir. 2007).
A patent may be obtained for “any new and useful
process, machine, manufacture, or composition of matter,
or any new and useful improvement thereof.” 35 U.S.C.
§ 101. The Supreme Court has “long held that this provi-
sion contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 134 S. Ct. at 2354 (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2116 (2013)); see also Gottschalk v. Benson, 409 U.S.
63, 67 (1972) (“Phenomena of nature, though just discov-
ered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific
and technological work.”). But the application of these
concepts to new and useful ends remains eligible for
4 PLANET BINGO, LLC v. VKGS LLC
patent protection. Id. at 2355. Accordingly, the Court
has described a framework for identifying patent-eligible
claims, wherein a court must determine whether the
claims at issue are directed to a patent-ineligible concept
and, if so, whether additional elements in the claims
transform the claims into a patent-eligible application.
Id.
A
As a preliminary matter, we agree with the district
court that there is no meaningful distinction between the
method and system claims or between the independent
and dependent claims. See Planet Bingo, 961 F. Supp. 2d
at 854, 857. The system claims recite the same basic
process as the method claims, and the dependent claims
recite only slight variations of the independent claims.
In this case, the claims at issue are drawn to patent-
ineligible subject matter. The ’646 and ’045 patents claim
managing a bingo game while allowing a player to repeat-
edly play the same sets of numbers in multiple sessions.
The district court correctly concluded that managing the
game of bingo “consists solely of mental steps which can
be carried out by a human using pen and paper.” Planet
Bingo, 961 F. Supp. 2d at 851. Claim 7 of the ’646 patent,
for example, recites the steps of selecting, storing, and
retrieving two sets of numbers, assigning a player identi-
fier and a control number, and then comparing a winning
set of bingo numbers with a selected set of bingo numbers.
’646 patent col. 9 l. 33–col. 10 l. 13. Like the claims at
issue in Benson, not only can these steps be “carried out
in existing computers long in use,” but they also can be
“done mentally.” 409 U.S. at 67.
Planet Bingo argues that “in real world use, literally
thousands, if not millions of preselected Bingo numbers
are handled by the claimed computer program,” making it
impossible for the invention to be carried out manually.
Appellant’s Reply Br. 14. But the claimed inventions do
PLANET BINGO, LLC v. VKGS LLC 5
not require as much. At most, the claims require “two
sets of Bingo numbers,” “a player,” and “a manager.” ’646
patent col. 8 ll. 54–55, col. 9 l. 17; see also ’045 patent
col. 9 ll. 5–6. We need not, and do not, address whether a
claimed invention requiring many transactions might tip
the scales of patent eligibility, as the claims fall far short
of capturing an invention that necessarily handles “thou-
sands, if not millions” of bingo numbers or players.
Moreover, the claims here are similar to the claims at
issue in Bilski v. Kappos, 130 S. Ct. 3218 (2010), and
Alice, 134 S. Ct. 2347, which the Supreme Court held
were directed to “abstract ideas.” For example, the claims
here recite methods and systems for “managing a game of
Bingo.” ’646 patent col. 8 l. 46; see also id. col. 9 l. 33; ’045
patent col. 8 l. 64. This is similar to the kind of “organiz-
ing human activity” at issue in Alice, 134 S. Ct. at 2356.
And, although the ’646 and ’045 patents are not drawn to
the same subject matter at issue in Bilski and Alice, these
claims are directed to the abstract idea of “solv[ing a]
tampering problem and also minimiz[ing] other security
risks” during bingo ticket purchases. Appellant’s Br. 10,
20. This is similar to the abstract ideas of “risk hedging”
during “consumer transactions,” Bilski, 130 S. Ct. at 3231,
and “mitigating settlement risk” in “financial transac-
tions,” Alice, 134 S. Ct. at 2356–57, that the Supreme
Court found ineligible. Thus, we hold that the subject
matter claimed in the ’646 and ’045 patents is directed to
an abstract idea.
B
Abstract ideas may still be patent-eligible if they con-
tain an “‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294,
1298 (2012)).
6 PLANET BINGO, LLC v. VKGS LLC
Apart from managing a game of bingo, the claims at
issue also require “a computer with a central processing
unit,” “a memory,” “an input and output terminal,” “a
printer,” in some cases “a video screen,” and “a program
. . . enabling” the steps of managing a game of bingo. ’646
patent col. 8 ll. 45–53, col. 9 l. 29. These elements, in
turn, select, store, and retrieve two sets of numbers,
assign a player identifier and a control number, and then
compare a winning set of bingo numbers with a selected
set of bingo numbers.
“[I]f a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on . . .
a computer,’ . . . that addition cannot impart patent
eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132
S. Ct. at 1301). In this case, the claims recite a generic
computer implementation of the covered abstract idea.
Planet Bingo argues that the patents recite “signifi-
cantly more” than an abstract idea because the invention
includes “complex computer code with three distinct
subparts.” Appellant’s Br. 33, 38. We disagree. The ’646
and ’045 patents do not claim the “accounting program,”
“ticket program,” and “verification program” that Planet
Bingo identifies in its briefs. Instead, the claims recite a
program that is used for the generic functions of storing,
retrieving, and verifying a chosen set of bingo numbers
against a winning set of bingo numbers. And, as was the
case in Alice, “the function performed by the computer at
each step of the process is ‘[p]urely conventional.’” Alice,
134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298).
Accordingly, we hold that the claims at issue do not
have an ‘inventive concept’ sufficient to ‘transform’ the
claimed subject matter into a patent-eligible application.
III
We have considered Planet Bingo’s remaining argu-
ments and find them unpersuasive. Applying the Su-
PLANET BINGO, LLC v. VKGS LLC 7
preme Court’s precedents, the claims at issue are invalid
under § 101.
AFFIRMED