Patent on city building mobile game survives review, barely. GREE v. SUPERCELL

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention. In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention. A patent grants its owner the exclusive right to make, use, sell and import the invention in the United States.

After a patent is granted it is still subject to review. The subject matter to which the invention relates is one of the grounds on which a patent can be invalidated. Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof is eligible for patent protection. §35 U.S.C. 101 There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas. Patents that have been granted in the past can be deemed invalid if court precedent changes the definition of these judicially created exceptions.

Whether computer software is eligible subject matter for patent protection is an evolving question. Computer software typically takes algorithms, which can be considered an abstract idea, and applies these algorithms to perform a task. The first United States patent on a piece of computer software was issued in April 23, 1968. Since that time the definition of eligible subject matter has changed significantly, first enlarging and then shrinking the definition of what is considered patent eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) articulates the present test to determine if computer software is eligible for patent protection. The first step in the Alice test is to determine whether the claims of the patent are directed to a patent-ineligible concept, like an abstract idea. If the first step is true, then each patent claim is reviewed both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application. Understanding how the Alice test is applied can be difficult to grasp, therefore it is helpful to study case precedent.

GREE, INC., v. SUPERCELL OY, 2019-1864 (C.A.F.C. 2020) demonstrates a case where some claims of a patent were found to be ineligible as abstract while other claims survived review.

GREE is the assignee of U.S. Patent No. 9,597,594 titled “Computer Control Method, Control Program and Computer.” The specification of the ’594 patent describes the invention in the context of “city building games,” in which a player builds a city within a game space provided in the game program” in a computer.

Supercell petitioned for post-grant review of the ’594 patent in November 2017, asserting that claims 1–20 are patent ineligible under 35 U.S.C. § 101. The Patent Trial and Review Board found that the claims of the ’594 patent are directed to the abstract idea of creating and applying a template of positions of one or more game contents, therefore step one of the Alice test was true. The Board compared the patent to the practice of playing chess by mail. With respect to the section step of the Alice test, the Board concluded that several of the claims of the patent contained an inventive concept but the majority of the challenged claims did not. Both parties appealed the Boards decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit agreed with the Board that the claims of the ’594 patent were directed to the abstract idea of creating and applying a template of positions of one or more game contents. The Federal Circuit agreed that the invention described in the patent was analogous to playing chess by mail and that step one of the Alice test was satisfied. For step two of the Alice test the Federal Circuit held that a majority of the patent claims were broadly directed to the automation of the well-understood, routine, conventional activity of playing chess by mail. However, claims 5 – 7 of the patent demonstrated an inventive concept because a specific method of dealing with mismatched game templates was described. Playing chess by mail does not account for dealing with game templates that are mismatched and the patent only claimed specific methods to solve the problem. Of the 20 claims in the ’594 patent the Federal Circuit held that only claims 5-7 were eligible for patent protection.

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