Case: 23-1073 Document: 37 Page: 1 Filed: 03/21/2024
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`NOTE: This disposition is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`SAVVY DOG SYSTEMS, LLC, POM OF
`PENNSYLVANIA, LLC,
`Plaintiffs-Appellants
`
`v.
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`PENNSYLVANIA COIN, LLC, PA COIN HOLDINGS,
`LLC,
`Defendants-Appellees
`______________________
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`2023-1073
`______________________
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`Appeal from the United States District Court for the
`Middle District of Pennsylvania in No. 3:19-cv-01470-JPW,
`Judge Jennifer P. Wilson.
`______________________
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`Decided: March 21, 2024
`______________________
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`STEVEN G. HILL, Hill, Kertscher & Wharton LLP, At-
`lanta, GA, argued for plaintiffs-appellants. Also repre-
`sented by DAVID KEELER LUDWIG.
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` JOHN V. GORMAN, Morgan, Lewis & Bockius LLP, Phil-
`adelphia, PA, argued for defendants-appellees. Also repre-
`sented by JULIE S. GOLDEMBERG; AMY M. DUDASH,
`Wilmington, DE.
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`SAVVY DOG SYSTEMS, LLC v. PENNSYLVANIA COIN, LLC
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`Before TARANTO, CHEN, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`Savvy Dog Systems, LLC and POM of Pennsylvania,
`LLC (collectively, “Savvy Dog”) appeal from the United
`States District Court for the Middle District of Pennsylva-
`nia’s summary judgment holding the asserted claims of
`U.S. Patent No. 7,736,223 ineligible for patenting under
`35 U.S.C. § 101. Because we agree with the district court’s
`conclusion, we affirm.
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`BACKGROUND
`I
`“Tic-Tac-Fruit” is an electronic game in the prior art
`where—like tic-tac-toe—a player wins by having three
`symbols of the same type in a row. A game processor sets
`up the game by populating a three-by-three grid filled with
`symbols, selecting the winning combination(s), testing the
`display to ensure that the player cannot obtain a more val-
`uable winning outcome than the outcome determined by
`the game, and then displaying the grid to the player. The
`player then selects a “symbol to be replaced with a ‘Wild
`Card’ to obtain a winning game outcome.” J.A. 1485. Fig-
`ures 1A and 1B show the game display before and after a
`“Wild Card” is placed by a user.
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`SAVVY DOG SYSTEMS, LLC v. PENNSYLVANIA COIN, LLC
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`’223 patent Figs. 1A, 1B. In the prior art version of Tic-
`Tac-Fruit (“prior art Tic-Tac-Fruit”), the grid generation
`and testing occur after the player committed to playing.
`Appellants’ Br. 5 (citing J.A. 1510–11 (Harrigan Depo.
`at 112:5–113:8)).
`To address the rise in electronic gambling games, Ohio
`prohibited gambling games but permitted “skill-based”
`games, i.e., where “the outcome of play during the game
`must be controlled by the person playing the game and not
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`SAVVY DOG SYSTEMS, LLC v. PENNSYLVANIA COIN, LLC
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`by predetermined odds or random chance controlled by the
`machine.” ’223 patent col. 1 ll. 21–30.
`The ’223 patent, entitled “Electronic Gaming Method
`and System Having Preview Screen,” purports to be a more
`skill-based and less chance-based implementation of the
`prior art Tic-Tac-Fruit. See ’223 patent col. 3 ll. 59–63.
`The abstract describes displaying the game field “to the
`player as a preview for deciding whether or not to play the
`displayed game.” ’223 patent Abstract, col. 1 ll. 15–17. Un-
`like the prior art Tic-Tac-Fruit, the invention described in
`the ’223 patent previews the game to the player before the
`player commits to playing the game. ’223 patent col. 9
`ll. 56–64; see Appellants’ Br. 6; J.A. 1509–11 (Harrigan
`Depo. at 111:23–113:23). According to Savvy Dog, this pre-
`view reduces the role of chance in relation to the role of skill
`because “[t]he player would play the displayed game know-
`ing the outcome.” ’223 patent col. 11 ll. 23–25; see Appel-
`lants’ Br. 13.
`Representative claim 44 of the ’223 patent recites:
`44. An electronic gaming system comprising:
`an electronic game terminal including a
`touch screen display;
`a game processor for generating an interac-
`tive electronic game on the game terminal,
`the game processor configured for:
`constructing a field having a plurality of el-
`ements for the interactive game display
`wherein each element includes a game
`symbol from a plurality of predetermined
`game symbols;
`determining at least one winning combina-
`tion for each play of the game;
`testing the game field prior to displaying
`the game to the player to ensure that a
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`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.
`’223 patent col. 16 l. 46–col. 17 l. 2.
`II
`Savvy Dog filed suit against Pennsylvania Coin, LLC
`and PA Coin Holdings, LLC (collectively, “Appellees”) in
`the Middle District of Pennsylvania for allegedly infringing
`certain claims of the ’223 patent.
`Appellees moved to dismiss, arguing—among other
`things—that the asserted claims of the ’223 patent were
`directed to ineligible subject matter under 35 U.S.C. § 101.
`After reviewing representative claim 44’s language, the
`parties’ arguments, and case law, the district court “con-
`clude[d] that claim 44 describes the rules for playing a
`game, and is thus an abstract idea within the meaning of
`Alice step one.” Savvy Dog Sys., LLC v. Penn. Coin, LLC,
`No. 3:19-cv-01470, 2020 WL 1550676, at *4–6 (M.D. Pa.
`Apr. 1, 2020) (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208, 218 (2014)). The district court, however, de-
`nied the motion to dismiss because “[w]hether the technol-
`ogy 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.” Id.
`at *8.
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`During claim construction, the district court construed
`the claim limitation “an actual game to be played” to mean
`“the constructed game field of the game to be played.”
`Savvy Dog Sys., LLC v. Penn. Coin, LLC, No. 3:19-cv-
`01470, 2020 WL 7488878, at *9 (M.D. Pa. Dec. 21, 2020)
`(Claim Construction Op.).
`Appellees later filed a motion for summary judgment,
`again arguing that the asserted claims were patent ineligi-
`ble under § 101. For Alice step one, the district court relied
`on its previous analysis from its motion to dismiss ruling.
`Savvy Dog Sys., LLC v. Penn. Coin, LLC, No. 3:19-cv-
`01470, 2022 WL 4349829, at *5 (M.D. Pa. Sept. 19, 2022)
`(Summary Judgment Op.). The district court then deter-
`mined for 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.
`Id. at *9. The district court accordingly granted Appellees’
`motion for summary judgment.
`Savvy Dog appeals. We have jurisdiction under
`28 U.S.C. § 1295(a)(1).
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`DISCUSSION
`We apply regional circuit law when reviewing a district
`court’s grant of summary judgment. C R Bard Inc. v. An-
`gioDynamics, Inc., 979 F.3d 1372, 1378 (Fed. Cir. 2020).
`Applying Third Circuit law, we review the district court’s
`grant of summary judgment de novo. Id. (citing Acumed
`v. Adv. Surgical Servs., 561 F.3d 199, 211 (3d Cir. 2009)).
`Summary judgment is appropriate when “there is no genu-
`ine dispute as to any material fact and the movant is enti-
`tled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
`see C R Bard, 979 F.3d at 1378.
`Patent eligibility under § 101 is a question of law that
`may involve underlying questions of fact. See Mortg.
`Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
`1314, 1325 (Fed. Cir. 2016). We review the district court’s
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`ultimate conclusion on patent eligibility de novo. See In-
`tell. Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332,
`1338 (Fed. Cir. 2017). The Supreme Court established a
`two-step test to determine whether a claim is eligible for
`patenting under § 101. See Alice, 573 U.S. at 217–18. For
`Alice step one, we must assess whether the claims at issue
`are directed to a patent-ineligible concept, i.e., a law of na-
`ture, natural phenomenon, or abstract idea. Id. at 217. If
`the answer is yes, we proceed to Alice step two to consider
`the claim elements, both individually and as an ordered
`combination, to determine whether these elements contain
`an “inventive concept” sufficient to “‘transform the nature
`of the claim’ into a patent-eligible application.” Id. at 217–
`18 (quoting Mayo Collaborative Servs. v. Prometheus
`Lab’ys, Inc., 566 U.S. 66, 72–73, 78 (2012)). With Alice step
`two, we must determine whether the claims recite addi-
`tional features that are more than “well-understood, rou-
`tine, conventional activity” to render the claims eligible for
`patenting. Mayo, 566 U.S. at 79–80.
`Addressing Alice step one, the district court character-
`ized claim 44 of the ’223 patent as being directed to “rules
`for playing a game.” Summary Judgment Op., 2022 WL
`4349829, at *4. Savvy Dog contends that claim 44 is actu-
`ally 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.” Appellants’ Br. 23 (emphasis omit-
`ted); see also Appellants’ Br. 17.
`Whether viewed as being directed to a set of rules for
`playing a game or to a game previewed to the player before
`committing to playing, we agree with the district court that
`claim 44 is directed to an abstract idea. We have found
`similar game implementations to be patent ineligible. See,
`e.g., In re Smith, 815 F.3d 816, 818–19 (Fed. Cir. 2016)
`(concluding that the claimed “method of conducting a wa-
`gering game” was directed to an abstract idea); In re Marco
`Guldenaar Holding B.V., 911 F.3d 1157, 1160–61
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`(Fed. Cir. 2018) (concluding the claimed “method of playing
`a dice game” was directed to an abstract idea).
`Even if claim 44 is viewed as being directed to display-
`ing the game field before the player commits to play the
`game, claim 44 is not directed to a technological solution to
`a technological problem. Notably, the specification does
`not describe “overcoming some sort of technical difficulty”
`in displaying the preview of the game before player com-
`mitment. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
`759, 768 (Fed. Cir. 2019); see, e.g., ’223 patent col. 11 l. 65–
`col. 12 l. 20. For example, the disclosed processor is merely
`a means for setting up and playing the game. See, e.g., ’223
`patent col. 2 ll. 28–45 (“A game processor generates an
`electronic game display on a game terminal . . . .”); id. at
`col. 4 ll. 40–43. The specification “never suggests” that the
`processor “is improved from a technical perspective, or that
`it would operate differently than it otherwise could.”
`ChargePoint, 920 F.3d at 768.
`Indeed, the invention is directed to a concept for over-
`coming the legal obstacles discussed in the Background
`section of the patent rather than providing a technological
`solution to a technological problem. See ’223 patent col. 1
`ll. 18–60. Although Savvy Dog argues that the invention
`solves this legal or business problem by elevating skill and
`lessening chance, the purported solution is not a technolog-
`ical one. Rather the purported elevation in the player’s
`skill is due to when the game field is displayed, not how it
`is displayed. Stated differently, nothing in the claim or the
`specification describes a new technological way of display-
`ing. The idea of displaying before a player starts the
`game—instead of after the player starts the game—is ab-
`stract. Accordingly, even under Savvy Dog’s characteriza-
`tion of what the claim is directed to, claim 44 is directed to
`an abstract idea.
`Turning to Alice step two, we agree with the district
`court’s determination that the additional claim elements of
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`claim 44 “fail[ed] to contain an inventive concept” to trans-
`form the claim into a patent-eligible application. Summary
`Judgment Op., 2022 WL 4349829, at *5–6. Savvy Dog as-
`serts that the testing of the game field and the automatic
`previewing of the actual game to be played, whether indi-
`vidually or as an ordered combination, are inventive con-
`cepts. Appellants’ Br. 33–34.
`We determine that these steps are abstract ideas them-
`selves—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.
` BSG Tech LLC
`v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
`(“It has been clear since Alice that a claimed invention’s
`use of the ineligible concept to which it is directed cannot
`supply the inventive concept that renders the invention
`‘significantly more’ than that ineligible concept.”).
`After identifying the abstract idea at Alice step one, we
`are to consider what remains in the claims at Alice step
`two. Id. at 1290. Here, all that remain are generic and
`conventional computer components (e.g., a gaming termi-
`nal and touch screen display) that are used in a routine and
`conventional way. “If a claim’s only ‘inventive concept’ is
`the application of an abstract idea using conventional and
`well-understood techniques, the claim has not been trans-
`formed into a patent-eligible application of an abstract
`idea.” Id. at 1290–91.
`For the above reasons, we conclude that representative
`claim 44 is directed to an abstract idea and that “the par-
`ticular elements of the claim, considered both individually
`and as an ordered combination,” fail to “transform the na-
`ture of the claim into a patent-eligible application.” TecSec,
`Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020)
`(quotations and citations omitted). We therefore affirm the
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`district court’s summary judgment that the asserted claims
`of the ’223 patent are ineligible for patenting.1
`CONCLUSION
`We have considered Savvy Dog’s remaining arguments
`and find them unpersuasive. Because the district court
`correctly concluded that the ’223 patent claims are directed
`to ineligible subject matter, we affirm.
`AFFIRMED
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`1 Savvy Dog also asserts on appeal that the district
`court erred in its construction of the term “an actual game
`to be played.” See Claim Construction Op., 2020 WL
`7488878, at *9. As acknowledged by Savvy Dog’s counsel,
`we need not address this claim construction issue because
`we agree with the district court’s § 101 analysis. See Oral
`Arg. at 1:00–1:10, https://oralarguments.cafc.uscourts.gov/
`default.aspx?fl=23-1073_03042024.mp3.
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