SCIBETTA et al v. SLINGO, INC. et al

Filing 24

OPINION. Signed by Judge John Michael Vazquez on 1/17/18. (cm, )

Not for Publication
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

JOSEPH SCIBETTA and JOSEPH SCIBETTA,
alicia BANKERS & BROKERS, a sole
proprietorship,
Civil Action No. 16-8175 (JMV)
Plaintiff

OPINION
V.

SLFNGO, INC. et al.,
Defendants.

John Michael Vazguez, U.S.D.J.
This case concerns the alleged unauthorized use, offer, and sale of the “Bankers & Brokers”
online game. Plaintiffs Joseph Scibetta (“Scibetta”) and Joseph Scibetta a/k/a BANKERS &
BROKERS (“Bankers & Brokers”) bring causes of action for patent infringement, trademark
infringement, misappropriation, and unjust enrichment. Currently pending before the Court is a
motion to dismiss (D.E. 9) Plaintiffs’ Complaint (D.E. 1) pursuant to Rule 12(b)(6) by Defendant
Slingo. Inc. (“Slingo”) and Defendant RealNetworks, Inc.’s (“RealNetworks”) (collectively,
“Defendants”). The Court reviewed the submissions in support and in opposition,1 and considered
the motion without oral argument pursuant to Fed. R. Civ. P. 78(b) and L. Civ. R. 78.1(b). For the

‘Plaintiffs’ Complaint will be referred to hereinafter as “Compl.” (D.E. 1); Defendants’ brief in
support of its motion to dismiss the Complaint will be referred to hereinafter as “Defs. Br.” (D.E.
9); Plaintiffs’ brief in opposition to Defendants’ motion to dismiss the Complaint will be referred
to hereinafter as “Pls. Opp.” (D.E. 15); Defendants’ reply brief will be referred to hereinafter as
“Defs. Reply.” (D.E. 17).

reasons stated below, Defendants’ motion to dismiss is GRANTED IN PART and DENIED IN
PART. Counts One, Two, Three, Four, and five are dismissed with prejudice. Counts Six, Seven,
and Nine are dismissed without prejudice to allow Plaintiffs the opportunity to file an amended
complaint. Count Eight remains.
I.

FACTUAL BACKGROUND2

Plaintiff Joseph Scibetta is a resident of Jersey City, New Jersey. Compi. at

¶ 1. Bankers

& Brokers is Scibetta’s sole proprietorship and has its principal place of business in New Jersey.
Id. at ¶ 2. Defendant Slingo was a New Jersey corporation with its principal place of business in
New Jersey. Id. at

¶ 3. Defendant RealNetworks is a Washington corporation, with its principal

place of business also in Washington. Id. at
July 2013, Id. at

¶ 4. RealNetworks acquired the stock of Slingo in

¶ 31, and accordingly, Slingo is currently a wholly-owned subsidiary of

RealNetworks, Id. at ¶ 6.
a. The Patents at Issue

This case centers on patents for a game called BANKERS & BROKERS. Id. at ¶ 23. The
electronic version of the game (“B&B Game”) is directly at issue in this case, but Plaintiffs also
sold a board version, a tower version, and a casino version of the game. Id. at ¶ 23. Plaintiffs sold
the games under the “BANKERS & BROKERS” wordmark and a corresponding logo
(collectively, the “B&B Mark”). Id. at ¶ 24.

The factual background is taken from the Complaint as well as from the attached patents (D.E.
1). ‘When reviewing a motion to dismiss, the Court accepts as true all well-pleaded facts in the
complaint, Fowler v. UPliCShadyside, 57$ F.3d 203, 210 (3d Cir. 2009), and may also consider
“exhibits attached to the complaint and matters of public record,” Pension Ben. Gitar. Corp. v.
White Consol. Indus., Inc., 99$ F.2d 1192, 1196 (3d Cir. 1993). Both parties rely on the patents
in making their arguments.

2

2

Plaintiffs are the exclusive owner of all rights and title to six total patents related to the
game—five of which are relevant to this case. Id. at

¶ 25.

Between April 2001 and December

2010, Plaintiffs were issued the five patents at issue here: United States Patent Nos. 6,220,597
(“the ‘597 patent”), 6,626,433 (“the ‘433 patent”), 7,331,580 (“the ‘580 patent”), 7,618,044 (“the
‘044 patent”), and 7,857,314 (“the ‘314 patent”). Id. at ¶J 14, 16-21; Id. at Ex. A-E. The specific
patent claims relevant to the current motion and highlighted by the parties are described below.
i. The ‘597 Patent

The ‘597 patent, issued on April 24, 2001, contains five claims, one of which is
independent. Compi. at Ex. E (the “597 patent”). Claim 1 of the ‘597 patent claims steps for
conducting a game:
1. A method for playing a wagering card game comprising the
steps of:
Providing a shuffled stack of playing cards where the cards
are touched only by the dealer during the game comprising at least
one deck thereof
providing a planar game playing surface comprising a
plurality of separately delineated areas adapted for the placement
of bets;
establishing odds for payout of winning bets placed in any
of the aforesaid plurality of separated and delineated areas;
establishing an initial order of play where players are
designated as first player, and so on to a last player;
initiating a round of play by a first player establishing a bet
by placing a wager in a designated space on the table near a pot
designated and marked onto a surface for displaying a face-up side
of a card dealt to each said player;
dealing a stack of six face-down cards as a player’s pot
concealing the faces of each dealt card from each player and a
dealer, to the first player and any other player in the game;
dealing a stack of six face-down cards, concealing the faces
each dealt card from each player and the dealer, to the dealer as
of
a dealer’s pot;
then, only the dealer turning the dealer’s pot over an
turning over the pots over for each player one at a time;

3

then the dealer immediately determining a player’s winning status
or loss status by comparing a face-up card dealt to each player and
a now face-up card dealt to the dealer in the dealer’s pot;
after comparing a dealer’s face-up card to a player’s face-up
card, paying any winning bets placed by each player in the game;
collecting the played or turned up cards from each pot after
bets are paid and placing these cards in a discarded cards
designated area on the table;
determining whether the turned-up dealer’s card matches
the corresponding turned-up player’s card, whereby at any time
during the game or before the dealer may imposed step of
disqualifying and discarding any got touched by a player.
‘597 Patent, 7:8-44. The dependent claims, Claims 2-5, provide additional steps for the game.

For example, claim 2 claims:
2. The method for playing a wagering card game of chance
according to claim 1 further comprising using at least one deck of
shuffled, unviewed, face-down cards and also using a substantially
flat playing surface having a forward edge and a rearward edge and
adapted for playing a game of cards using a deck of cards, the
surface further comprising: (a) a primary array of betting spots
arranged near the forward edge of the playing surface; (b) a
secondary array of spaced apart spaces for placing stacks of dealt
cards located on said playing surface between the primary array
and the rearward edge, the secondary arraying comprising at least
two polygonal areas, one for a player’s card pot and another for a
dealer’s card pot, each area having nearby a different identify
symbol displayed nearby and on the playing surface; (c) a machine
for shuffling and dealing a deck of cards located on the playing
surface; and, (d) a receptacle for discarded cards located on the
playing surface.
‘597 Patent, 7:45-8:10. Claim 5 claims:

5. The method for playing a wagering card game of chance
according to claim 1 further comprising using game apparatus in
combination with a deck of playing cards and the additional step of
allowing one or more persons to participate as players wherein one
person acts as a dealer, and further comprising the step of using the
game apparatus wherein said apparatus further comprises:
a playing surface having a forward periphery and a rear
periphery;

4

a portion of the surface adjacent the forward periphery
thereof having thereon a plurality of player betting areas at spaced
apart locations where each player is to be stationed during a game;
means associated with the playing surface at each of said
plurality of player betting areas for designating a player’s stack of
dealt cards;
a portion of the surface adjacent the rearward periphery
thereof having thereon a single area and means associated with the
playing surface located in front of the dealer for designating a
dealer’s stack of dealt cards;
means for storing cards associated with the playing surface
for identifying a specific location for discarded or played cards;
and a machine means for shuffling and dealing cards associated
with the playing surface for identifying a specific location for said
machine means.
‘597 Patent, 8:23-49.
ii. The ‘433 Patent

The ‘433 patent, issued on September 30, 2003, is a continuation in part of the ‘597 patent.
It contains twenty-two claims, five of which are independent. Compl. at Ex. D (the “433 Patent”).
Claim 1 of the ‘433 patent claims steps for conducting a game:
1. A method for playing a game wherein said game includes a
plurality of game positions having a plurality of player positions and
a dealer position, the method comprising of steps of:
b) accepting a wager on at least one of said plurality of player
positions made by at least one player;
c) dealing at least one card to each of said wagered positions
and said dealer position from at least one deck of cards;
d) initiating at least one round of play where in each round
of play a single outcome for each of said wagered positions is
available, said single outcome being whether at least one upturned
card at a wagered position has a higher ranking than at least one
upturned card at said dealer position, said at least one round of play
comprising the step of comparing the at least one upturned card at
said dealer position from among said at least one card dealt to said
dealer position with the at least one upturned card from among said
at least one card dealt to each of said wagered positions, wherein the
number of said at least one upturned card from among said at least
one card dealt to each of said wagered positions is less than or equal
to the number of cards dealt to each of said wagered positions; and

5

e) determining a winning or loss status for each of said
wagered positions, wherein a winning status is detennined for a
wagered position when said at least one upturned card dealt to said
wagered position has a higher ranking than said at least one upturned
card dealt to said dealer position.
‘433 Patent, 15:58-16:21. Independent claim 14 of the ‘433 patent claims:
14. A card game wherein a game participant selects one or more
player positions from plurality of displayed player positions to
compare a card dealt to each of said selected player positions with a
card dealt to a dealer position, said card game comprising:
means for identifying each of said plurality of player positions
and said dealer position to the game participant;
means for accepting a wager made by the game participant on
at least one of said identified plurality of player positions;
means for dealing at least one card to each of said wagered
positions and said dealer position;
means for displaying at least one upturned card from said at
least one card dealt to each of said wagered positions;
means for initiating at least one round of play where in each
round of play a single outcome for each of said wagered positions is
available, said single outcome being whether at least one upturned
card at a wagered position has a higher ranking than at least one
upturned card at said dealer position;
and means for playing the at least one round of play by
comparing the at least one upturned card from said at least one card
dealt to each of said wagered positions with the at least one upturned
card of said dealer position, wherein the number of said at least one
upturned card from said at least one card dealt to each of said
wagered positions is less than or equal to the number of cards dealt
to each of said wagered positions, and determining a winning or loss
status of said game participant.
‘433 Patent, 17:31-62. Claim 15 of the ‘433 patent depends from claim 14 and claims:
15. The card game of claim 14 further comprising: means for
awarding a game participant a predetermined amount of credit based
on said wager when the means for comparison determines a winning
status for said game participant.
‘433 Patent, 17:63-67.

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iii. The ‘580 Patent

The ‘580 patent, issued on February 19, 2008, is a continuation in part of the ‘705 patent
(not at issue here), which was a continuation in part of the ‘433 patent. Compi. at Ex. A (the “580
Patent”). It has twenty-one claims, two of which are independent. Claim 1 of the ‘580 patent
claims:
1. A method for playing a game wherein said game includes a
plurality of game positions having at least one player position and
at least one dealer position, the method comprising the steps of:
identifying each of said at least one player position and said
at least one dealer position to a player; accepting a wager
corresponding to at least one of said at least one player position from
the player;
providing the player an option to place an additional wager
whether at least one of a plurality of predetermined combinations
on
will be formed by the cards dealt to said wagered and non-wagered
player positions;
dealing at least one card to each of said wagered and nonwagered player positions and said at least one dealer position from
at least one deck of cards;
comparing an upturned card at said dealer position from
among said at least one card dealt to said at least one dealer position
with an upturned card from among said at least one card dealt to at
least one wagered position;
determining a winning or loss status for the at least one
wagered position, wherein a winning status is determined for the at
least one wagered position when said upturned card dealt to said at
least one wagered position has a higher ranking than said upturned
card at said at least one dealer position; and
resolving whether at least one of the plurality of
predetermined combinations were formed by said cards dealt to said
wagered and non-wagered player positions if the player placed the
additional wager.
‘580 Patent, 18:60-19:22. Claim 17 is independent and provides additional rules for the game.
Claims 2-6, 10-17, and 19-2 1 are dependent and also provide additional rules for the game.

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iv. The ‘044 Patent
The ‘044 patent, issued on November 17, 2009, is a continuation of the ‘580 patent. Compi.
at Ex. B (the “044 Patent”). It has twenty-four claims, three of which are independent. Claim I
is similar to the ‘580 patent’s Claim I in that it is a “method for playing a game,” however it adds
a “physical deck of cards” and “determining whether at least one of the plurality of predetermined
combinations were formed by said cards dealt to said wagered and non-wagered player positions
if the player placed the additional wager.” ‘044 Patent, 18:13-47. Independent Claim 15 of the
‘044 patent is also similar to the ‘580 patent’s Claim 1, however Claim 15 is directed to a
“computer device comprising a processor for executing a set of programmable instructions for
playing a card game,” ‘044 Patent, 19:35-20:4, and Claim 22 is directed to a “computer readable
medium storing a set of programmable instructions capable of being executed by a processor for
playing a card game,” ‘044 Patent, 20:34-21:3. Claims 2-14, 16-21, and 23-24 are dependent and
provide additional rules for the game.
v. The ‘314 Patent
The ‘314 patent, issued on December 28, 2010, is a continuation in part of the ‘044 patent.
Compl at Ex. C (the “314 Patent”). It has twenty-two claims, four of which are independent. The
independent claims in the ‘314 patent recite rules for playing a wagering card game. However,
both claims 1 and 8 of the ‘314 patent refer to “a processor for executing a set of programmable
instructions for playing a card game.”

‘314 Patent, 18:19-49, 19:19-50. Claims 12 and 19 refer

to “a display in operative communication with said processor” and “input means in operative
communication with said processor for receiving at least one input from a player during play of
the card game.” ‘314 Patent, 19:65-20:35, 21:5-22:14.

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b. All Patents

—

Background of the Invention

All patents contain a section entitled either “Background” or “Background of the
Invention.” The patents state that they are directed to, respectively, “casino games, and more
particularly.

.

.

to a wagering game employing a standard deck of 52 cards, shuffled and then

played and dealt in a specific sequence in combination with participating players betting against a
dealer or the house that the participating player has a higher card winning hand,” ‘597 Patent, 1:613, “table and electronic wagering games, and more particularly.

..

to a table and electronic card

game,” ‘433 Patent, 1:11-13, and “wagering games, and more particularly

.

.

.

to a card game,”

‘580 Patent, 1:20-22; ‘044 Patent 1:23-24; ‘314 Patent, 1:26-27.
All patents acknowledge that “[g]ames of chance employing a deck of 52 cards are as old
as the invention of cards themselves,” ‘597 Patent, 1:15-16; ‘433 Patent, 1:15-16; ‘580 Patent,
1:24-25; ‘044 Patent 1:26-27; ‘314 Patent, 1:29-30. The patents further assert that “[t]he concept
of using high cards in which to play and wager in card games is also old.” ‘597 Patent, 1:16-18;.
‘433 Patent, 1:16-18; ‘580 Patent, 1:25-27; ‘044 Patent 1:27-29; ‘314 Patent, 1:30-32.
The patents indicate that the game is intended to simplify and speed-up play when
compared to existing card games. For example, the ‘580 patent references “relatively complex
card game[s], such as blackjack, baccarat or stud poker[.]” ‘580 Patent, 1:40-41. The ‘044 patent
describes existing card games as having “complexity disadvantages[.]” ‘044 Patent 2:67.

In

other words, the game described in the patents is intended to be a “card game that is simple to learn
and play and that results in simpler, more expedient wagering decisions per hour.” ‘433 Patent,
2:52-58; ‘580 Patent, 2:61-67; ‘044 Patent 2:65-3:3; ‘314 Patent, 2:61-67. The ‘597 patent further
states that the game is “intended to give a novel and new look and feel to the currently popular
card games, yet have simplified rules and procedures designed both to encourage use by novice

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gamblers and to increase the betting decisions per hour to maximize casino profit.” ‘597 Patent,
4:5-10.
c. The Alleged Infringement

Plaintiffs claim that “as early as November 2010 through at least february 2015, Defendant
Slingo was offering for use and sale, and selling on its website, www.slingo.com, the electronic
version of Plaintiffs’ BANKERS & BROKERS game
B&B Mark

—

—

and doing so blatantly using Plaintiffs’

without the consent, authorization or license from Plaintiffs, while possessing actual

knowledge of Plaintiffs patents. Compl. at

¶J 28,

30. In July 2013, Defendant RealNetworks

acquired Defendant Slingo’s stock, at which time Slingo had multiple electronic games on its
website. Id. at

¶

31. Plaintiffs further claim that as “part of the acquisition, Defendant Slingo

purported to ‘sell’ to Defendant RealNetworks ownership of or other rights in BANKERS &
BROKERS and the B&B Mark which.

.

.

Defendant Slingo had no right to sell.” Id. at ¶ 32. On

february 11, 2015, Plaintiffs sent Defendants a letter requesting Defendants cease and desist the
use, sale or offer for sale of the B&B Game and/or the B&B Mark. Id. at

¶ 37.

After receiving

the letter, Defendants removed all electronic versions of the B&B Game and B&B Mark. Id. at ¶

38.
Plaintiffs bring nine separate causes of action in this suit. Id. at

¶J 42-94.

Counts One

through five allege infringement Plaintiffs’ following patents: the ‘580 Patent (Count One), the
‘044 Patent (Count Two), the ‘314 Patent (Count Three), the ‘433 Patent (Count four), and the
‘597 Patent (Count Five). Count Six claims a violation of Section 43 of the Lanharn Act, 15 U.S.C.

§

1125(a). Count Seven alleges trademark infringement of the B&B Mark. Count Eight alleges

misappropriation of the B&B Game and the B&B Mark.
enrichment.

10

Lastly, Count Nine claims unjust

II. PROCEDURAL HISTORY

On November 11, 2016, Plaintiffs filed a Complaint against Defendants. D.E. 1. On
December 12, 2016, Defendants filed this motion to dismiss Plaintiffs’ Complaint pursuant to Rule
12(b)(6). D.E. 9. Plaintiffs filed a brief in opposition on February 6, 2017, D.E. 15, to which
Defendants filed a brief in reply on February 27, 2017, D.E. 17.
III. LEGAL STANDARD

Rule 12(b)(6) governs motions to dismiss for “failure to state a claim upon which relief
can be granted.” For a complaint to survive dismissal under the rule, it must contain sufficient
factual matter to state a claim that is plausible on its face. Ashcroft

Iqbal, 556 U.S. 662, 678

(2009) (quoting Belt Ad. Corp. v. Twomblv, 550 U.S. 544, 570 (2007)). A claim is facially
plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged.” Id. Although the plausibility
standard “does not impose a probability requirement, it does require a pleading to show more than
a sheer possibility that a defendant has acted unlawfully.” Connelly v. Lane Const. Corp., $09
F.3d 780, 786 (3d Cir. 2016) (internal quotation marks and citations omitted). As a result, a
plaintiff must “allege sufficient facts to raise a reasonable expectation that discovery will uncover
proof of [his] claims.” Id. at 789.
In evaluating the sufficiency of a complaint, district courts must separate the factual and
legal elements. fowter v. UFYC Shadvside, 578 F.3d 203, 210-211 (3d Cir. 2009). Restaternents
of the elements of a claim are legal conclusions, and therefore, not entitled to a presumption of

truth. Burtch v. Mitberg factors, Inc., 662 F.3d 212, 224 (3d Cir. 2011). The Court, however,
“must accept all of the complaint’s well-pleaded facts as true.” Fowler, 578 F.3d at 210. In
deciding a motion to dismiss the Court may also consider any “document integral to or explicitly

11

relied upon in the complaint.” Schmidt v. Skotas, 770 F.3d 241, 249 (3d Cir. 2014) (citing In re
Burlington Coat Factory Sec. Litig., 114 F.3d 1410, 1426 (3d Cir. 1997) (quotation & emphasis
omitted)). Even if plausibly pled, however, a complaint will not withstand a motion to dismiss if
the facts alleged do not state “a legally cognizable cause of action.” Tttrner

IF. Morgan Chase

& Co., No. 14-7148, 2015 WL 12826480, at *2 (D.N.J. Jan. 23, 2015).
IV. ANALYSIS
Defendants first argue that Plaintiffs’ patent infringement claims (Counts One, Two, Three,
Four, and Five) are directed at a patent-ineligible subject matter. Second, Defendants contend that
Plaintiffs’ trademark claims (Counts Six and Seven) fail to state a claim for relief pursuant to
Twombly’s pleading standards. Lastly, Defendants argue that Plaintiffs’ state law claims (Counts
Eight and Nine) are frivolous. The Court examines each argument in turn.
a. Plaintiffs’ Patent Infringement Claims (Count One, Count Two, Count Three,
Count Four, and Count Five)
Counts One through Five allege infringement of Plaintiffs following patents: the ‘580
Patent (Count One), the ‘044 Patent (Count Two), the ‘314 Patent (Count Three), the ‘433 Patent
(Count Four), and the ‘597 Patent (Count Five). Compi. at ¶J 42-71. Defendants argue that these
counts should be dismissed because Plaintiffs’ patents are directed at a patent-ineligible idea under
35 U.S.C.

§ 101: a card wagering game played with a standard deck of cards.

Section 101 of the United States Patent Act, 35 U.S.C.

§ 101, defines the subject matter

eligible for patent protection. Section 101 states that “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title.” “[Ajll issued patent claims receive a statutory presumption of validity.” C’LS Bank Int’l
v. Alice Corp. Ftv., 717 F.3d 1269, 1284 (Fed. Cir. 2013), affd, 134 S.Ct. 2347 (2014).
12

However, the Supreme Court has “long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. Ply. v. C’LS Bank Int’l, 134 S.Ct. 2347, 2354 (2014) (“Alice”) (quoting Ass’n for
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). At the same time, the

Molecular Pathology

Supreme Court has recognized “that too broad an interpretation of this exclusionary principle could
eviscerate patent law.

.

.

.

[because] all inventions at some level embody, use, reflect, rest upon,

or apply laws of nature, natural phenomena, or abstract ideas.” Mayo Collaborative Sen’s. v.
Prometheus Labs., Inc., 566 U.S. 66, 71(2012). The final category is often referred to as an
unpatentable abstract idea. “Thus, an invention is not rendered ineligible for patent simply because
it involves an abstract concept.” Alice, 134 S.Ct. at 2354. “Applications of such concepts to a
new and useful end.

.

.

remain eligible for patent protection.” Id. (internal quotation marks and

brackets omitted).

To determine whether a patent claims eligible subject matter, courts employ a two-step
analysis. The two steps are often called the Alice steps, or the Alice/ivlayo steps, based on the
Supreme Court decisions that announced the process. See Alice Corp. Ply. v. CLS Bank Int’l, 134
S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). First
a court should “detenriine whether the claims at issue are directed to one of those patent-ineligible
concept[.] Alice. 134 S.Ct. at 2355 (internal citations and quotations omitted). If the claims do
concern such a concept, then the second step requires to determine whether patent contains an
“inventive concept.” In detenriining whether there is an inventive concept, a court must ask “what
else is there in the claims before us? To answer that question, [a court shall] consider the elements
of each claim both individually and as an ordered combination to determine whether the additional
elements transform the nature of the claim into a patent-eligible application.” Id.

13

(internal

citations and quotations omitted); see Eagle View Techs., Inc. v. Xactware Sols., Inc., 2016 WL
4154136, at *2 (D.N.J. Aug. 2, 2016) (“In evaluating whether a patent claims patent eligible
subject matter under

§ 101, the Court undertakes a two-step inquiry to determine: (1) whether the

patent claims the aforementioned laws of nature, natural phenomena, or abstract ideas; and (2) if
so, whether the ‘elements of each claim both individually and ‘as an ordered combination’
‘transform the nature of the claim’ into a patent-eligible application.” (quoting Alice, 134 S.Ct. at
2355)). As noted, step two has been described “as a search of an ‘inventive concept’—i.e., an
element or combination of elements that is sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the [ineligible concept] itself.” Alice, 134 S.Ct. at 2355.
(internal quotations and citations omitted).
Before conducting the two-step analysis set forth in Alice, the Court will address Plaintiffs’
contentions that reviewing patent eligibility is inappropriate at the motion to dismiss stage. First,
Plaintiffs argue that discovery and claims construction should take place before any determination
of patent eligibility. Plfs. Opp. at 13-14. However, Plaintiffs’ contention is not tenable in light of
the controlling law. Courts have repeatedly held that the determination of whether a concept is
patent-eligible under Section 101 is a matter of law and may be resolved at the motion to dismiss
stage. See Fair Warning IF, LLC v. Jatric 5ys., Inc., 839 F.3d 1089, 1097 (Fed. Cir. 2016) (“We
have repeatedly recognized that in many cases it is possible and proper to determine patent
eligibility under 35 U.S.C.

§ 101 on a Rule 12(b)(6) motion.” (internal quotation omitted));

see

also Genetic Techs. Ltd. v. MerialL.L.C., 81$ F.3d 1369, 1374 (fed. Cir. 2016), cert. denied, 137
S. Ct. 242 (2016); C’ontent Extraction & Transmission LLC v. Wells

Fargo Ban/c Nat. Assz, 776

F.3d 1343, 1349 (Fed. Cir. 2014); In re BRCA 1— and BRCA2-Based Hereditaiy Cancer Test Patent

Litig., 774 F.3d 755, 759 (Fed. Cir. 2014); cf Eagle View, 2016 WL 4154136, at *2 (“Although

14

the determination of patent eligibility requires a full understanding of the basic character of the
claimed subject matter, claim construction is not an inviolable perquisite to a validity
determination under

§ 101.

.

.

.

But, it will ordinarily be desirable—and often necessary—to

resolve claim construction disputes prior to a

§ 101 analysis.” (internal quotations and citations

omitted)). As described below, the Court has undertaken a comprehensive and diligent analysis
of all of Plaintiffs’ claims and finds that it possesses a “full understanding of the basic character
of the claimed subject matter” and, therefore, claim construction is unnecessary.
Plaintiffs next argue that Defendants did not address each and every claim and that the
large number of claims at issue preclude dismissal at this stage. Plfs. Opp. at 12-14. However,
the controlling case law provides that if “claims of the asserted patents are substantially similar in
that they recite little more than the same abstract idea,” a court may treat those patent claims as
representative. See, e.g., Content Extraction, 776 F.3d at 1348; Affinity Labs of Texas, LLC v.
Amazon.com Inc., 83$ F.3d 1266, 1268 n.2 (Fed. Cir. 2016) (treating one claim as representative
of 20 claims), cert. denied, 137 S.Ct. 1596 (2017). A large number of patent claims also does not
preclude a court from ruling on a motion to dismiss. See, e.g., Content Extraction & Transmission
LLCv. Wells Fargo Bank, Nat. Ass’n, 2013 WL 3964909, at *5 (D.N.J. July 31, 2013), affd, 776
F.3d 1343 (Fed. Cir. 2014) (finding that 242 claims in four patents were directed at ineligible
subject matter after examining representative claims).
Plaintiffs also contend that the statutory presumption of a patent’s validity militates against
dismissing Plaintiffs’ claims. Plfs. app, at 12-13. Under Section 101. “all issued patent claims
In Content Extraction, the parties stipulated to representative claims. Here, Plaintiffs have not
stipulated that any claims are representative and argue that this is not possible given the facts of
this case. As a result, the Court will address the claims cited by Plaintiffs as preventing a motion
to dismiss and will construe those patent claims in “the manner most favorable” to Plaintiffs. Id.
at 134$.
15

receive a statutory presumption of validity” and that this “presumption applies when [Section] 101
is raised as a basis for invalidity in district court proceedings.” Alice, 717 f.3d at 1284. However,
the Alice court, in its next sentence, confirmed that district courts may detenTline patent invalidity
before claim construction, finding “that the district court correctly held that the asserted claims
are not patent eligible and are hence invalid under [Section] 101.” Id.
Plaintiffs also point to Data Distribution Techs., LLC v. BRER Affiliates, Inc., 2014 WL
4162765 (D.N.J. Aug. 19, 2014), in which the court cautioned that if a court “is going to invalidate

[a patent] on subject matter eligibility grounds before claim construction, then Defendants must
‘establish that the only plausible construction [i]s one that, by clear and convincing evidence
render[s] the subject matter ineligible (with no factual inquiries).” Id. at *6 (alterations in
original) (citing Clear with Computers, LLC v. Dick Sporting Goods, Inc., 2014 WL 923280, *3
(E.D.Tex. Jan. 21, 2014)). Yet, the court also recognized that “[a]lternatively, the Court may
adopt{] a construction most favorable to the patentee.” Id. (quotation omitted) (some alterations
in original); see Content Extraction, 776 F.3d at 1349 (finding a district court’s examination of
patent claims “in the maimer most favorable” to the patentee at the pleading stage was proper).
Here, the Court follows this standard and examines these patents while adopting a construction
most favorable to Plaintiffs. Therefore, the Court moves to considering whether Plaintiffs’ patents
claim patent eligible subject matter under Section 101.
1.

Alice Step One

Alice step one requires a court to “determine whether the claims at issue are directed to one

of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355 (internal citations and quotations
omitted). In In re Smith, the federal Circuit considered similar patent claims directed at a game
of chance based on a standard card deck and determined that the claims related to the game were

16

unpatentable abstract ideas under the first step.4 In re Smith, $15 F.3d $16 (Fed. Cir. 2016), cert.
denied sub nom., Trading Techs. Int’l, Inc. v. Lee, 137 S.Ct. 453 (2016). Following the Supreme

In In re Smith, the first claim of the patent provided as follows:
1. A method of conducting a wagering game comprising:
[a] ) a dealer providing at least one deck of physical
playing cards and shuffling the physical playing cards to form a
random set of physical playing cards;
[b] ) the dealer accepting at least one first wager from each
participating player on a player game hand against a
banker’s/dealer’s hand;
tc] ) the dealer dealing only two cards from the random set
of physical playing cards to each designated player and two cards
to the banker/dealer such that the designated player and the
banker/dealer receive the same number of exactly two random
physical playing cards;
[d] ) the dealer examining respective hands to detemrine in
any hand has a Natural 0 count from totaling count from cards,
defined as the first two random physical playing cards in a hand
being a pair of 5’s, 10’s, jacks, queens or kings;
[e] ) the dealer resolving any player versus dealer wagers
between each individual player hand that has a Natural 0 count and
between the dealer hand and all player hands where a Natural 0 is
present in the dealer hand, while the dealer exposes only a single
card to the players;
[fj ) as between each player and the dealer where neither
hand has a Natural 0, the dealer allowing each player to elect to
take a maximum of one additional card or standing pat on the
initial two card player hand, while still having seen only one dealer
card;
[g] ) the dealer/banker remaining pat within a first certain
predetermined total counts and being required to take a single hit
within a second predetermined total counts, where the first total
counts range does not overlap the second total counts range;
[h] ) after all possible additional random physical playing
cards have been dealt, the dealer comparing a value of each
designated player’s hand to a final value of the banker’s/dealer’s
hand wherein said value of the designated player’s hand and the
banker’s/dealer’s hand is in a range of zero to nine points based on
a pre-established scoring system wherein aces count as one point,
tens and face cards count as zero points and all other cards count as
their face value and wherein a two-digit hand total is deemed to
have a value corresponding to the one’s digit of the two-digit total;
...

17

Court’s reasoning in Alice and Bilski, the Circuit found that the applicants’ claims regarding “rules
for conducting a wagering game

[] compare to other ‘fundamental economic practice[s]’ found

abstract by the Supreme Court.” In re Smith, 815 f.3d at 818 (Fed. Cir. 2016). The Federal Circuit
detern-iined that the “applicants’ claimed ‘method of conducting a wagering game’ is drawn to an
abstract idea much like” the claims found to be patent ineligible in Alice and BilskL5 Id. at 819.
In light of the federal Circuit’s holding in In re Smith, this Court concludes that Plaintiffs’
patent claims are directed towards an unpatentable abstract idea under step one of the Alice
analysis. See PlanetBingo, LLCv. VKGS, LLC, 961 F. Supp. 2d 840, 857, $54(W.D. Mich. 2013)
(holding that patent claims for managing a bingo game were drawn to patent-ineligible subject
matter under Alice step one), affd, 576 F. App’x 1005 (Fed. Cir. 2014). The Court finds that there
is no meaningful distinction between, on the one hand, the unpatentable abstract idea found in In
re Smith and, on the other hand, the method and system claims or between the independent and

dependent claims of Plaintiffs’ patents. In short, the Court does not see any material difference in
any of the patents to preclude the application of the In re Smith court’s ruling.6 In re Smith and

[i] ) the dealer resolving the wagers based on whether the
designated player’s hand or the banker’s/dealer’s hand is nearest to
a value of 0.
In re Smith, 815 F.3d at 817—18.

In Alice, the Supreme Court held that “a method of exchanging financial obligations was drawn
to an abstract idea.” In re Smith, 815 F.3d at 819 (citing Alice, 134 S.Ct. at 2356—57). InBilski,
the Supreme Court “determined that a claim to a method of hedging risk was directed to an
abstract idea.” In re Smith, 815 F.3d at $19 (citing Bilski v. Kappos, 561 U.S. 593, 612 (2010)).
The In re Smith Court found that the applicants’ method of conducting a wagering game was
analogous to the abstract ideas in Alice and Bilski.
Plaintiffs argue that In re Smith does not suggest that all card games are patent ineligible. Plfs.
Opp. at 15. This is accurate. The In re Smith court observed that its holding

6

is not [meant] to say that all inventions in the gaming arts would be
foreclosed from patent protection under § 101. We could envisage,
1$

the current case both concern patents directed towards a wagering game using at least one standard
deck of cards.
Plaintiffs argue that Defendants oversimplify the focus of Plaintiffs’ claims.7 However,
these arguments are unconvincing. F or example, Plaintiffs rely on independent claim 14 of the
‘433 patent and compare it with claim 1 of the ‘433 patent, arguing that “[t]he form and scope of
claim 14

.

.

.

is quite distinct from the form and scope of claim 1.” Plfs.

Opp. at

17. Plaintiffs

point to the fact that the ‘433 patent describes “means” for identifying player/dealer positions,
accepting a wager, dealing, displaying cards, initiating at least one round of play, and playing one
round while determining the winning or loss status of a participant. Plfs. Opp. at 18. However,
these aspects do not change the fact that the game itself stems from a patent ineligible abstract
idea. The same is true of Plaintiffs’ contention that dependent claim 15 of the ‘433 patent shows

for example, claims directed to conducting a game using a new or
original deck of cards potentially surviving step two of Alice. The
Government acknowledged as much during oral argument [citing
section of oral argument.]
815 f.3d. at 819. Turning to the recording of the oral argument, the government, in fact, posits
that “any set of rules for game” are an abstract idea under step one, but suggests that a game like
Skip-Bo® could pass muster under step two. See In re Smith Oral Argument at 14:59-15:31,
available at http://oralarguments. cafe. uscoitrts.gov/defatilt. aspx?fl=201 6-2303. mp3.
However, Plaintiffs also argue that “the USPTO continues to issue patents directed to
conventional card games in the wake of Smith,” thereby showing In re Smith’s limited holding.
Plfs. Opp. at 15. The In re Smith court itself explains that it is possible for a card game to
survive step two of Alice if a claim has an “inventive concept’ sufficient to ‘transform’ the
claimed subject matter into a patent-eligible application of the abstract idea.” In re Smith, 815
F.3d at 819. The Court cannot delegate its duty to conduct an appropriate review of the patents
to the USPTO.
Plaintiffs make these arguments in reference to Alice step one, however they are better suited
for step two analysis. Even considering Plaintiffs’ arguments under step two, the Court finds
them unpersuasive because the claims do not include inventive concepts that transform the
abstract concept into patent eligible claims.
19

that it is a patent eligible concept. Plfs.

Opp.

at 19-20. Therefore, the Court considers all of the

claims within the five relevant patents together for the purposes of this analysis, and finds that the
patents are directed at a patent ineligible abstract idea under Alice step one.
ii.

Alice Step Two

Because the claims at issue are directed at a patent ineligible abstract idea, the Court turns
to the second Alice step. Step two requires a court to “consider the elements of each claim both
individually and as an ordered combination to determine whether the additional elements
transform the nature of the claim into a patent-eligible application.” Alice, 134 S.Ct. at 2355
(internal citations and quotations omitted). Plaintiffs claim that even if its patent claims are
directed to an unpatentable abstract idea under step one, the claims nevertheless satisfy Alice step
two because certain claims “provide meaningful structural limits on the scope of the claims to
claim substantially less than the abstract idea itself,” Plfs. Opp. at 21-22 (referring to the ‘597
patent), and because other claims add “limiting, inventive concepts,” Plfs. Opp. at 22-26 (referring
to the ‘580, ‘044, and ‘314 patents). Plaintiffs point to claim 1 of the ‘580 patent by way of
example. Plfs. Opp. at 24. Plaintiffs argue that claim 1 of the ‘580 patent “provides a player with
the opportunity to make multiple wagers: at least one wager corresponding to a comparison of the
values of cards dealt to the at least one player position and at least one dealer position

.

.

.

and an

additional wager corresponding to a combination of card values dealt to both the wagered and to
non-wagered player positions.” Plfs. Opp. at 24. Relying on Bascom Glob. Internet Sen’s., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (fed. Cir. 2016), Plaintiffs argue that claim I provides a
“specific, discrete, and technical implementation that improves the speed of play while
maintaining player interests.” Plfs. Opp. at 25.

20

Plaintiffs further indicate that the remaining claims in the ‘580 patent, ‘044 patent, and
‘314 patent each “claims a method, computer device or associated computer readable medium that
enable a player to engage in multiple wagers.” Plfs.

Opp. at 25.

Plaintiffs continue that the wagers

consist of at least one wager based on the player and dealer’s cards as well as at least one wager
concerning the player’s cards vis-à-vis “one or more of a payout table of cards and/or cards dealt
to the dealer positions.” Plfs. Opp. at 25. The Court finds that Plaintiffs’ patent claims do not
transform the nature of the claims into a patent-eligible application.
a. Alice Step Two Generally
-

Under Alice step two, a court “consider[s] the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements ‘transfonri the nature of
the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (internal citation omitted).
The Supreme Court has described this step “as a search for an ‘inventive concept’—i. e., an element
or combination of elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the ineligible concept itself.” Id. (internal quotation marks
and citations omitted). “A claim that recites an abstract idea must include ‘additional features’ to
ensure that the claim is more than a drafling effort designed to monopolize the abstract idea.

.

[T]ransfonriation into a patent-eligible application requires more than simply stating the abstract
idea while adding the words ‘apply it.” Id. at 2357 (internal quotations and citations omitted).
“Simply appending conventional steps, specified at a high level of generality, [is] not enough to
supply an ‘inventive concept.” Id. (internal citations and quotations omitted); see In re Smith,
815 F.3d at $19 (finding that “appending purely conventional steps to an abstract idea does not
supply a sufficiently inventive concept”). In other words, pursuant to the Alice framework, “a
claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot

21

rely on the novelty of that discovery for the inventive concept necessary for patent eligibility;
instead, the application must provide something inventive, beyond mere ‘well-understood, routine,
conventional activity.” Genetic Techs., 818 F.3d at 1376 (quoting Mayo, 132 S.Ct. at 1294).
Plaintiffs’ game here is one of wagering, using at least one standard deck of cards, with a
dealer and one or more players (in certain “positions”), in which players can make one or more
wagers.

Such a game reflects well-understood, routine, and conventional wagering activity.

Plaintiffs made no technical improvement on the original abstract idea of a card wagering game
using a standard deck of cards. In fact, Plaintiffs repeatedly emphasize the simplistic nature of the
game, stating that it “provides the advantage of simple, easy-to-learn rules enabling rapid play and
higher volumes of wagering[.]” Plfs. Opp. at 24 (citing the ‘580 Patent, 2:64-67). The Court finds
that the ability to place multiple wagers is the exact type “well-understood, routine, conventional
activit[ies] previously known to the industry” that fails to transform Plaintiffs’ patent ineligible
concept into a patent eligible concepts. See, e.g., Alice, 134 S.Ct. at 2359 (internal quotation and
citation omitted). In fact, Plaintiff cites a number of games that already allow placing multiple
wagers. See ‘314 Patent, 1:41-42, 1:62-64, 2:3-5 (describing prior art). In short, the ability to
place multiple wagers is not the type of “additional elements” sufficient to “transform the nature
of the claim into a patent-eligible application.” Alice, 134 S.Ct. at 2355 (internal citations and
quotations omitted). Taking the patent claims in the light most favorable to Plaintiffs, there is
simply no way to read the claims as adding any technical improvement to the patent-ineligible
abstract concept.
b. Use of Computer and Related Devices

As described above, Plaintiffs next argue that claims in the ‘580 patent, ‘044 patent, and
‘314 patent each “claim a method, computer device or associated computer readable medium that

22

enable a player to engage in multiple wagers” and that “fact issues remain as to whether these
discrete limitations transform what Defendants characterize as an abstract idea into patentable
subject matter under Alice step 2.” Plfs. Opp. at 25. However, Supreme Court precedent is clear
that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea
into a patent-eligible invention.” Alice, 134 S. Ct. at 2358.
In Alice, the Supreme Court examined patent claims directed at “a computer-implemented
scheme for mitigating ‘settlement risk’ (i.e., the risk that only one party to a financial transaction
will pay what it owes) by using a third-party intermediary.” Id. at 235 1—52. After finding that the
patent claims were “directed to the abstract idea of intermediated settlement,” id. at 2357, the Court
moved to step two and found that the “method claims simply recite the concept of intermediated
settlement as performed by a generic computer,” Id. at 2359. The Alice Court explained its
reasoning by observing that “[g]iven the ubiquity of computers

.

.

.

wholly generic computer

implementation is not generally the sort of ‘additional feature’ that provides any practical
assurance that the process is more than a drafting effort designed to monopolize the abstract idea
itself.” Id. at 2358 (internal citations and quotations omitted). Considering the claims as a whole,
the Alice Court observed the following as to the method claims before it:
[The] claims do not, for example, purport to improve the functioning
Nor do they effect an improvement in
of the computer itself.
Instead, the claims at
any other technology or technical field.
‘nothing significantly more’ than an instruction to
issue amount to
apply the abstract idea of intermediated settlement using some
unspecified, generic computer.... Under our precedents, that is not
‘enough’ to transform an abstract idea into a patent-eligible
invention.
.

.

.

.

.

.

Id. at 2359—60 (internal quotations and citations omitted). The Supreme Court similarly found the

media and system claims at issue in the case failed for similar reasons—namely, because they

23

simply “recite a handful of generic computer components configured to implement the same idea.”
Id. at 2360.

A number of other courts have similarly found that a patent’s claim for implementation via
a computer (or related elements and devices) does not transform unpatentable abstract ideas into
patent eligible material under Alice step two. In Content Extraction, the Federal Circuit reviewed
patent claims directed at “extracting data from hard copy documents using an automated digitizing
unit such as a scanner,.

.

.

recognizing specific information from the extracted data, and.. storing

that information in a memory.

.

.

.

.

using software on an automated teller machine (ATM).” 776

F.3d at 1345. The Content Extraction court, after finding that the asserted patent claims were
directed at patent ineligible abstract ideas under Alice step one, found that under Alice step two,
the claims “contain no limitations—either individually or as an ordered combination—that
transform the claims into a patent-eligible application.” Id. at 1348. The Content Extraction court
continued further observed as follows:
F or the role of a computer in a computer-implemented invention to
be deemed meaningful in the context of this analysis, it must involve
more than performance of well-understood, routine, and
conventional activities previously known to the industry.
Further, the mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention.
.

Id. at 1347—48 (internal quotations, citations, and brackets omitted).

In Intellectual Ventitres, the Federal Circuit considered three patents, “the first two of
which generally relate to activities on the Internet, and the third of which generally relates to
photography organization using a computer.” Intellectual Ventures I LLC

V.

Capital One Bank

(USA), 792 F.3d 1363, 1365 (Fed. Cir. 2015). Finding that the patents were ineligible under Alice
step two, the Intellectual Ventitres court made clear that “merely adding computer functionality to
increase the speed or efficiency of the process does not confer patent eligibility on an otherwise
24

abstract idea.”

Id. at 1370.8

In that case, the patent-holder “argue[d] that [their claimed]

‘interactive interface’ is a specific application of the abstract idea that provides an inventive
concept.” Id. However, the Intellectual Ventures court found that “nowhere does [the patentholder] assert that it invented an interactive interface that manages web site content. Rather, the
interactive interface limitation is a generic computer element.” Id. (emphasis added).
In fair Warning, the Federal Circuit reviewed claims related “to a system and method of
detecting fraud and/or misuse in a computer environment based on analyzing data such as in log
files, or other similar records, including user identifier data.” 839 f.3d 1089, 1093. Afier the
fair Warning court first found that the claims were directed at patent ineligible abstract ideas under
Alice step one, Id. at 1094 (“FairWarning’s claims merely implement an old practice in a new

environment”), the court moved to Alice step two and detennined “that there [was] nothing claimed
in the patent—either by considering the claim limitations individually or as an ordered
combination—that [made] its claims patent eligible.” Id., at 1097. The court explained that the
claims provided “nothing sufficient to transform the nature of the claim into a patent-eligible
application,” Id. at 1095 (internal quotations and citations omitted), because “the use of generic
computer elements like a microprocessor or itser interface do not alone transform an otherwise

abstract idea into patent-eligible subject matter,” Id. at 1096 (emphasis added).9

8

See also CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) affd,
134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) (“[S]imply appending generic computer functionality to
lend speed or efficiency to the performance of an otherwise abstract concept does not
meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)); Bancorp
Servs., LLCv. Sun LifeAssurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact
that the required calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”).

The Fair Warning court further explained that:
[w]hile it is not always true that related system claims are patent
ineligible because similar method claims are, when they exist in
25

Lastly, in Planet Bingo, the Federal Circuit examined “two patents for computer-aided
management of bingo games.” Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1006 (Fed.
Cir. 2014). In that case, “[a]part from managing a game of bingo, the claims at issue also require[d]
‘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.” Id. at 100$ (citing patents at issue). These computer 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.” Id. (citing patents at issue).
The Planet Bingo court explained that while the patent-holder “argu[ed] that the patents recite
significantly more than an abstract idea because the invention includes complex computer code
with three distinct subparts,” the Federal Circuit disagreed, and found that the “patents do not claim
the ‘accounting program,’ ‘ticket program,’ and ‘verification program’ that Planet Bingo identifies
in its briefs.” Id. at 1008-09. Instead, according to the Circuit, “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
Accordingly, the Planet

the computer at each step of the process is purely conventional.” Id.

the same patent and are shown to contain insignificant meaningful
The
limitations, the conclusion of ineligibility is inescapable.
claims here are decidedly not the exception to that rule. The
limitations added in FairWarning’s system claims merely grafi
generic computer components onto otherwise-ineligible method
claims. As such, these claims are patent ineligible along with
claim 1 and its dependents.
.

$39 F.3d at 1096 (internal quotations and citations omitted).

26

.

.

Bingo court found that at the second step, the claims did not sufficiently transform the ineligible

abstract idea into a patent-eligible application. Id.
Here, Plaintiffs’ most sophisticated and intricate patent claims related to computer
technology are included in the ‘314 patent. In claim 1, the patent claims
A computer device comprising:
a processor for executing a set of programmable instructions
for playing a card game, said card game including the steps of:
identifying each of said at least one player position and said
at least one dealer position to a player;
accepting a wager corresponding to at least one of said at
least one player position from the player;
providing the player an option to place an additional wager
on whether at least one of a plurality of predetermined combinations
will be formed with said at least one card dealt to each of said
wagered and non-wagered player positions;
dealing at least one card to each of said wagered and nonwagered player positions and said at least one dealer position from
at least one deck of cards;
comparing an upturned card at said dealer position from
among said at least one card dealt to said at least one dealer position
with an upturned card from among said at least one card dealt to at
least one wagered position;
determining a winning or loss status for the at least one
wagered position, wherein a winning status is determined for the at
least one wagered position when said upturned card dealt to said at
least one wagered position has a higher ranking than said upturned
card at said at least one dealer position; and
resolving whether at least one of the plurality of
predetermined combinations were formed with said at least one card
dealt to each of said wagered and non-wagered player positions if
the player placed the additional wager.
‘314 Patent, 18:19-49. Claim 12 of the ‘314 patent claims
A computer device comprising:
a processor for executing a set of programmable instructions
for playing a card game;
a display in operative communication with said processor;
and
input means in operative communication with said processor
for receiving at least one input from a player during play of the card
game;
27

wherein the card game entails the processor performing the
steps of:
identifying at least one player position and at least one dealer
position to a player;
accepting a wager corresponding to at least one of said at
least one player position from the player;
providing the player an option to place an additional wager
on whether at least one of a plurality of predeterniined combinations
will be formed with said at least one card dealt to each of said
wagered and non-wagered player positions;
dealing at least one card to each of said wagered and nonwagered player positions and said at least one dealer position from
at least one deck of cards;
comparing an upturned card at said dealer position from
among said at least one card dealt to said at least one dealt position
with an upturned card from among said at least one card dealt to at
least one wagered position;
determining a winning or loss status for the at least one
wagered position, wherein a winning status is determined for the at
least one wagered position when said upturned card dealt to said at
least one wagered position has a higher ranking than said upturned
card at said at least one dealer position; and
resolving whether at least one of plurality of predetermined
combinations were formed with said at least one card dealt to each
of said wagered and non-wagered player positions if the player
placed the additional wager.
‘314 Patent, 19:65-20:35.
The ‘433 patent also contains a claim for a “computer device comprising a processor for
executing a set of instructions for playing a card game[.]” ‘433 Patent, 18:1-3. The patent further
claims a “computer-readable medium storing a set of instructions for playing a card garnet.]” Id.
at 18:48-49. The ‘580 patent claims playing the game by way of”an electronic gaming device,”
and “Internet[.]” ‘580 Patent, 19:46-5 1. The ‘044 patent has claims similar to those of the ‘433
patent. ‘044 Patent, 19:35-37; 20:34-36.
These claims, representing the most sophisticated and intricate claims related to a computer
technology, amount to no more than “the mere recitation of a generic computer” or related
elements that has been repeatedly described as inadequate to “transform a patent-ineligible abstract
28

idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358. Just as in Alice, the claims do
nothing more than simply describe the application of the game-related abstract ideas to a generic
computer system. See id. at 23 59—60 (“The method claims do not, for example, purport to improve
the functioning of the computer itself.

.

.

.

Nor do they effect an improvement in any other

technology or technical field.... Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of intermediated settlement using some unspecified,
generic computer.” (internal quotations and citations omitted)).

As the Faii-Warning court

indicated, “the use of generic computer elements like a microprocessor or user interface do not
alone transfonn an otherwise abstract idea into patent-eligible subject matter. $39 F.3d at 1096.
The claims here do not indicate that they are improving the functioning of the computer (or its
elements). In sum, the claims concerning computers and related elements are well-known, routine,
and conventional.
Plaintiffs argue that at least certain claims survive pursuant to Bascom. In Bascom, the
court found that the relevant claims “recite[d] a specific, discrete implementation of the abstract
idea” because the “particular arrangement of elements [was] a technical improvement over prior
art.” Bascom Glob. Internet Sen’s., Inc. v. AT&Tliobiflty LLC, $27 F.3d 1341, 1350 (Fed. Cir.

2016) (emphasis added). The Bascom court considered patent claims for a method and system for
filtering Internet content. When examining the claims under Alice step two, the court found that
“[t]he claims do not merely recite the abstract idea of filtering content along with the requirement
to perform it on the Internet, or to perform it on a set of generic computer components.” Bascom,
827 F.3d at 1350. Instead, the claims “recite a specific, discrete implementation of the abstract
idea of filtering content. Filtering content on the Internet was already a known concept, and the
patent describes how its particular arrangement of elements is a technical improvement over prior

29

art ways of filtering such content.” Id.

The claims at issue here offer no such technical

improvement. Bascom is not applicable.
c. Considering Patent Claims Individually and in
an Ordered Combination
A court must consider the relevant claims both individually and as an ordered combination
to determine if the claims add something “that is not already present when the steps are considered

separately.” Alice, 134 S. Ct. at 2359 (internal quotations and citations omitted). For example, as
discussed, the Content Extraction court found that relevant patent claims considered either
individually or as an ordered combination did not transform the claims into a patent eligible
concept because the claims merely considered the application of the abstract idea using existing
and common technology. 776 f.3d at 1348 (“CET’s claims merely recite the use of this existing
scanning and processing technology to recognize and store data from specific data fields such as
amounts, addresses, and dates.

.

.

.

There is no ‘inventive concept’ in CET’s use of a generic

scanner and computer to perform well-understood, routine, and conventional activities commonly
used in industry.

.

.

.

At most, CET’s claims attempt to limit the abstract idea of recognizing and

storing information from hard copy documents using a scanner and a computer to a particular
technological enviromnent. Such a limitation has been held insufficient to save a claim in this
context.” (internal citations omitted)).’°

10

Additionally, as to the effect of any dependent claims, while these claims have by definition a
narrower scope than the independent claims, none of the independent or dependent claims
contain an “inventive concept” that transforms the corresponding claim into a patent-eligible
application of the otherwise ineligible abstract idea described in Plaintiffs’ five relevant patents.
See Content Extraction, 776 F.3d at 1349 (“CET argues on appeal that certain dependent claims
recite additional steps, such as extracting and detecting specific data fields, repeating some steps,
and storing data as images or text, rendering those claims patent-eligible.
This limitation
merely describes generic optical character recognition technology, which CET conceded was a
routine function of scanning technology at the time the claims were filed.
Indeed, all of the
additional limitations in the claims cited in CET’s appeal brief recite well-known, routine, and
.

.

.

30

.

.

.

The Court finds that when considering Plaintiffs’ patent claims either individually, or as
an ordered combination, there is nothing to transform the claims into patent-eligible material.
After an exhaustive examination of Plaintiffs’ claims both individually and as an ordered
combination, just as in Alice and fair Warning, the Court sees no meaningful difference between
Plaintiffs’ method, system, computer, game, and media claims.

Plaintiffs have simply not

provided any “additional elements [to] transform the nature of the claim[s] into a patent-eligible
application of[an] abstract idea.” Content Extraction, 776 F.3d at 1347 (citing Alice, 134 S. Ct. at
2355).

For the foregoing reasons, Counts One, Two, Three, Four, and Five are dismissed with
prejudice.
b. Plaintiffs’ Trademark Infringement Claims (Count Six and Count Seven)

Count Six alleges a violation of Section 43 of the Lanham Act, 15 U.S.C.
Count Seven alleges trademark infringement of the B&B Mark. Compl. at

§

1125(a), while

¶ 72-86. Defendants

argue that Plaintiffs fail to plead facts that are sufficient to state valid claims for trademark
infringement under Section 43 of the Lanham Act or under state common law.
To state a valid claim for trademark infringement, Plaintiffs “must show (1) ownership of
a valid and legally protectable mark; (2) that defendant used the mark ‘in commerce’ (3) in
connection with the sale, offering for sale, distribution, or advertising of goods and services (4) in
a manner likely to confuse customers.” 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d
273, 28 1—82 (D.N.J. 2006) (internal quotations and citations omitted). In this matter, Plaintiffs’

conventional functions of scanners and computers. Thus, while these claims may have a
narrower scope than the representative claims, no claim contains an “inventive concept” that
transforms the corresponding claim into a patent-eligible application of the otherwise ineligible
abstract idea.” (internal citations omitted)).
31

mark was not registered. “With respect to ownership of unregistered marks, the first party to adopt
a trademark can assert ownership rights, provided it continuously uses it in commerce.” ford
Motor Co. v. Summit Motor Prod., Inc.. 930 F.2d 277, 292 (3d Cir. 1991). The elements of
Plaintiffs’ claims in Count Six and Count Seven are identical and are therefore considered together.
SeeJ&JSnackfoods, Corp. v. Earthgrains Co., 220 F. Supp. 2d 358, 374 (D.N.J. 2002) (“[T]he
elements for a claim for trademark infringement under the Lanharn Act are the same as the
elements for

.

.

.

claims of trademark infringement

.

.

.

under New Jersey statutory and common

law.”).
Defendant argues that Plaintiffs “offer no well-pled allegations of fact that they used in
commerce an version of the B&B Mark prior to 2003.” Defs. Br. at 31. The Court finds that
Defendants argue that Plaintiffs

Plaintiffs’ allegations about prior use are sufficiently pled.

“nakedly allege that they ‘used the B&B Mark in U.S. interstate commerce prior to Defendants’
first use of the mark,” Defs. Br. at 31 (quoting Compl. at

¶

76), but Plaintiffs’ Complaint is

actually more specific. The Complaint provides that “Plaintiffs currently use the B&B Mark in
U.S. interstate commerce and have continuously used the B&B Mark nationwide, since at least
the 1990’s,” Compi. at

¶

75 (emphasis added), and that “Plaintiffs used the B&B Mark in U.S.

interstate commerce prior to Defendants’ first use of the mark,” Id. at ¶ 76. Courts have found that
this amount of specificity is sufficient to put Defendants on enough notice to satisfy Rule 8 and
Iqbal/Twombly. Advanced BaseballAcad., LLCv. Google, Inc., 2015 WL 1440656, at *5 (D. Kan.
Mar. 30, 2015) (“To comply with Rule 8(a)(2), plaintiff is

not

required to provide the specific date

or time that it first used the [mark at issue].” (citing Erickson v. Pardus, 551 U.S. 89, 93 (2007))).

Defendants indicate that Slingo used the B&B Mark in 2003, Defs. Br. at 31, a fact that is not
mentioned in the Complaint. Of course, this is a motion to dismiss, in which the Court must
accept the factual pleadings as accurate with a few exceptions. More importantly, the Complaint
“

32

However, Defendants also argue that the Complaint does not show that Plaintiffs made
continuous use of a single term.

Defendants note that while Plaintiffs’ Complaint cites

“BANKERS & BROKERS” and its corresponding logo as the relevant word mark, Plaintiffs
provide exhibits that show a number of word variations including “Bankers and Brokers,”
“*Ba;kers and Brokers*,” “Bankers & Brokers,” Bankers and Brokers 7 CARD,” “Bankers $
Brokers,” “Banker Broker,” and “Bankers Broker.” See Compi. at Ex. B, D, F, G. Plaintiffs’
Complaint also provides exhibits showing various logos. See Compl. at

¶J 24, 28,

75; Compl. at

Ex. F. Plaintiffs respond that these differences are immaterial and that the doctrine of tacking
applies. Pls. Opp. at 28-30. However, Plaintiffs’ tacking argument is in direct contradiction to
Plaintiffs’ contention in the Complaint that they marketed and sold the game under the work mark
“BANKERS & BROKERS.” Compl. at24. Simply put, Plaintiffs fail to include any information
to support their tacking argument in their Complaint. The Court finds that Plaintiffs’ pleadings
regarding continuous use of the B&B Mark do not provide Defendants with sufficient notice of
Plaintiffs’ claimed continuous use of the B&B Mark under the requirements of Rule 8 and
Iqbal/Twomblv. Therefore, the Court grants Defendants’ motion to dismiss Counts Six and Seven
without prejudice.
c. Plaintiffs’ State Law Claims (Count Eight and Count Nine)

Plaintiffs’ Count Eight alleges misappropriation of the B&B Game and the B&B Mark and
Count Nine alleges unjust enrichment. Compl. at ¶ 8 7-94. Defendants argue that Plaintiffs’ claim

alleges that Plaintiffs have been using the mark before 2003. Plaintiffs also state in their
opposition that they did have a “license agreement [with Defendants] which was later revoked.”
Plfs. Opp. at 28, n.8. The license agreement is also not referenced in the Complaint. Because
Counts Six and Seven are dismissed without prejudice in order to allow Plaintiffs to correct their
pleadings, Plaintiffs should address this apparent license agreement in their Amended Complaint
because it is likely directly relevant to Plaintiffs’ alleged continuous use of the B&B Mark.
33

for misappropriation fails because the patents are not valid and because the claim is preempted by
federal patent law.

Defendants further contend that Plaintiffs’ unjust enrichment claim fails

because Plaintiffs fail to allege that Defendants were enriched or that Plaintiffs had any reason to
expect payment from Defendants. Opp. Br. at 33-36.
i. Misappropriation (Count Eight)

Defendants argue that Plaintiffs’ claim for misappropriation should fail because the
patents are invalid and because it is preempted by federal law.12 Defs. Br. at 34.

In their

Complaint, Plaintiffs fail to cite a statute or any other legal authority for their misappropriation
claim. See Compl. at ¶J 87-90. In their opposition brief, Plaintiffs cite to one case that discusses
misappropriation as an act that can constitute unfair competition under New Jersey’s Unfair
Competition statute, N.J.S.A. 56:4-1 etseqi3 Plfs.

Opp. at 32 (citingMaterial Techs. v.

Carpenter

Tech. Corp., 2004 U.S. Dist. LEXIS 28892, at *54 (D.N.J. Dec. 14, 2004) (“Generally, [unfair
competition under the statute] consists of the misappropriation of one’s property by another—
property which has some sort of commercial or pecuniary value. The misappropriation usually

Defendants dedicate one sentence (and a string-citation to three cases) to arguing that federal
preemption bars Plaintiffs’ misappropriation claim. See Defs. Br. at 34 (“[Plaintiffs’
misappropriation claim] also fails for the additional reason that it is pre-empted by federal patent
law.”). In reply, Defendants again mention this argument in passing, instead focusing on the
position that Plaintiffs’ state law claims are derivative of its patent claims. See Defs. Reply at
14-15. Federal preemption is a complex area of law not susceptible to passing arguments.
Therefore, Defendants have not sustained their burden demonstrating that federal preemption
applies.
12

N.J.S.A. 56:4-1 states that “[n]o merchant, firm or corporation shall appropriate for his or their
own use a name, brand, trade-mark, reputation or goodwill of any maker in whose product such
merchant, firm or corporation deals.” N.J.S.A. 56:4-2 provides a remedy for a violation of
N.J.$.A. 56:4-1 and states that “[a]ny person, finTi or corporation violating any of the provisions
of section 56:4-1 of this title shall be liable, at the suit of the maker of such branded or trade
marked products, or any other injured person, to an injunction against such practices, and shall
be liable in such suit for all damages, directly or indirectly caused, to the maker by such
practices, which damages may be trebled in the discretion of the court.”
13

34

takes the form of ‘palming off another’s goods as your own, although the mothts operandi is not
essential.” (internal quotations and citations omitted))). “Under New Jersey law, information that
does not rise to the level of a trade secret may nevertheless be entitled to protection and may serve
as the basis for a tort action.” Thomas & Betts Corp. v. Richards Mfg. Co., 342 F. App’x 754, 758
(3d Cir. 2009) (citing Lamorte Burns & Co. v. Walters, 167 N.J. 285, 299 (N.J. 2001)); see
Platinum Mgmt., Inc. v. Dahms, 285 N.J. Super. 274, 295, 666 A.2d 102$, 103$ (Law. Div. 1995)

(“Under New Jersey law, to be judicially protected, misappropriated information need not rise to
the level of the usual trade secret, and indeed, may otherwise be publicly available.”).
Defendants similarly cite no authority to support their claim that a cause of action for
misappropriation of a patent under New Jersey law would “presumably require, at a minimum,
establishing federal patent infringement.” Defs. Reply at 14; see Defs. Br. at 34. The Court denies
Defendants’ motion. While both parties fail to provide the Court with pertinent information,
Defendants have not sufficiently demonstrated how Plaintiffs fail to state a cause of action for
misappropriation under the New Jersey Unfair Competition statute.

Therefore, Defendants’

motion to dismiss Count Eight is denied.
ii. Unjust Enrichment (Count Nine)

Defendants argue that Plaintiffs do not state a valid claim for unjust enrichment because
Plaintiffs fail to allege that Defendants were enriched. Defendants add that Plaintiffs did not have
a valid basis to expect payment from Defendants. Defs. Br. at 34-36. “To prove a claim for unjust
enrichment, a party must demonstrate that the opposing party received a benefit and that retention
of that benefit without payment would be unjust.” Thieme v. Aucoin-Thieme, 227 N.J. 269, 288
(N.J. 2016) (internal quotation and citation omitted); see Stewart v. Beam Glob. Spirits & Wine,
Inc., 877 F. Supp. 2d 192, 196 (D.N.J. 2012) (“For an unjust enrichment claim to succeed, there

35

must be a showing that the plaintiff expected remuneration from the defendant, or if the true facts
were known to plaintiff, he would have expected remuneration from defendant, at the time the
benefit was conferred.” (internal quotation and citation omitted)). The “quasi-contact doctrine also
requires that plaintiff show that it expected remuneration from the defendant at the time it
performed or conferred a benefit on defendant and that the failure of remuneration enriched
defendant beyond its contractual rights.” Id. (internal quotation and citation omitted). “Since a
plaintiff must confer a benefit on the defendant to support an unjust enrichment claim, this element
has been interpreted by New Jersey courts as a requirement that “the plaintiff allege a sifflciently
direct relationship with the defendant to support the claim.” Snyder v. Farnam Companies, Inc.,

792 F. Supp. 2d 712, 724 (D.N.J. 2011) (emphasis added) (quoting Nelson v. Xacta 3000 Inc.,
2009 WL 4119176, at *3 (D.N.J. Nov. 24, 2009)).
Here, the Court finds that Plaintiffs fail to plausibly allege a sufficient “direct relationship”
with Defendants. See, e.g., Cooper v. SamsttngEtecs. Am., Inc., 2008 WL 4513924, at *10 (D.N.J.
Sept. 30, 2008), aff’d, 374 F. App’x 250 (3d Cir. 2010) (dismissing unjust enrichment claim
because a consumer’s purchase was through a retailer, and therefore there was no relationship
conferring any direct benefit on the manufacturer); Union Tr. Co. ofMaiyland v. Wakefern food
Corp., 1989 WL 120756, at *21 (D.N.J. Sept. 8, 1989) (“unjust enrichment requires a relationship
or course of dealings between parties which, if lefi undisturbed by the intervention of the law,
pen-nits one party to obtain ‘unjust enrichment or unconscionable advantage’ over the other.”
(citation omitted)); Catlano v. Oakwood Park Homes Corp., 91 N.J. Super. 105, 109—10 (App.
Div. 1966) (finding that unjust enrichment requires “either some direct relationship between the
parties or a mistake on the part of the person conferring the benefit”). Because such relationship

3

is a requirement of unjust enrichment under New Jersey law, Count Nine is dismissed without
prejudice.
V. CONCLUSION

Defendants’ motion to dismiss is GRANTED IN PART and DENIED IN PART. Counts
One, Two, Three, Four, and Five are dismissed with prejudice. Counts Six, Seven, and Nine are
dismissed without prejudice to allow Plaintiffs an opportunity to file an amended complaint. Count
Eight remains. Plaintiffs have thirty (30) days to file an amended complaint, if they so choose,
consistent with this Opinion. If Plaintiffs fail to file an amended complaint, the dismissal of Counts
Six, Seven, and Nine will also be with prejudice. An appropriate Order accompanies this opinion.

Dated: January 17, 2018

QoJ7 /
John Michael Vazqi(, U.D.J.

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