Aristocrat Techs. Australia PTY Ltd. v. Int'l Game Tech.

Decision Date13 March 2013
Docket NumberNo. 2010–1426.,2010–1426.
PartiesARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED and Aristocrat Technologies, Inc., Plaintiffs–Appellants, v. INTERNATIONAL GAME TECHNOLOGY and IGT, Defendants–Appellees.
CourtU.S. Court of Appeals — Federal Circuit

OPINION TEXT STARTS HERE

Meredith Martin Addy, Brinks Hofer Gilson & Lione, of Chicago, IL, argued for plaintiffs-appellants. With her on the brief were Dominic P. Zanfardino, Robert G. Pluta and Jeremy S. Snodgrass. Of counsel on the brief were Blair M. Jacobs and Bureden J. Warren, McDermott Will & Emery LLP, of Washington, DC; and Terrence P. McMahon and Anthony De Alcuaz, of Menlo Park, CA.

Deanne E. Maynard, Morrison & Foerster, LLP, of Washington, DC, argued for defendants-appellees. With her on the brief were Alexander J. Hadjis, Brian R. Matsui, Marc A. Hearron and Adam A. Eltoukhy. Of counsel on the brief was Jeffrey S. Love, Klarquist Sparkman, LLP, of Portland, OR.

Before O'MALLEY, BRYSON*, and LINN **, Circuit Judges.

O'MALLEY, Circuit Judge.

Aristocrat Technologies Australia PTY Limited and Aristocrat Technologies, Inc. (collectively, Aristocrat) and International Game Technology and IGT (collectively, IGT) compete in the casino gaming machine industry. In 2006, Aristocrat brought the current action against IGT in the Northern District of California alleging that IGT directly and indirectly infringes two of Aristocrat's patents—U.S. Patent No. 7,056,215 (“the '215 patent”) and U.S. Patent No. 7,108,603 (“the '603 patent”). The asserted patents generally relate to gaming machines, such as slot machines, and claim methods for awarding a progressive prize through a bonus game that may appear in addition to the main game. Aristocrat accuses IGT gaming devices that feature various bonus games in which a player may win progressive prizes. Following remand from a previous appeal, IGT moved for summary judgment of noninfringement.

On May 13, 2010, the district court granted IGT's motion for summary judgment of noninfringement as to all asserted claims of both patents explaining that IGT's accused products require two separate actors: (1) the casino via the gaming machine and (2) the player. Under our decision in Muniauction, the district court found that the lack of a single entity performing all of the steps of the asserted claims precludes direct infringement as a matter of law. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1330 (Fed.Cir.2008). While Aristocrat's appeal of the district court's claim construction and summary judgment ruling was pending, we issued our en banc decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed.Cir.2012). We affirm the district court's claim constructions and its ruling on direct infringement and, in light of our decision in Akamai, we vacate and remand the portion of the district court's ruling on indirect infringement.

Background
A. Patents In Suit

The '215 patent, entitled “Slot Machine Game and System With Improved Jackpot Feature,” issued on June 6, 2006. As described in the specification, the claimed invention related to a system of linked gaming machines through which an allegedly improved jackpot mechanism is provided to a player. Incremental jackpots, i.e., the payout of an additional prize from a slot machine based on predetermined conditions in combination with randomly selected criteria, are well known in the prior art. According to the '215 patent, however, these prior art systems lack flexibility in both operator control and the ability to tailor the awarding of prizes to player preferences. As an improvement on these existing systems, the '215 patent describes a system wherein an additional prize is awarded to a player through a secondary feature game appearing after the main game is completed. Through the use of this secondary game to award a progressive jackpot, the '215 patent provides a system by which progressive jackpots can be linked across gaming platforms (e.g., slot machines, cards, keno, bingo or pachinko), are awarded based on credits wagered, and can be adjusted without changing the main game. Claim 1 of the '215 patent is exemplary for our purposes:

In a network of gaming machines, each of said gaming machines having a user interface activatable by a player to affect game display, each of said gaming machines being capable of accepting different wager amounts made by the player, a method of randomly awarding one progressive prize from a plurality of progressive prizes using a second game to select said one progressive prize, a display of said second game being triggered upon an occurrence of a random trigger condition having a probability of occurrence related to the amount of the wager, comprising:

making a wager at a particular gaming machine in the network of gaming machines;

initiating a first main game at said particular gaming machine;

causing a second game trigger condition to occur as a result of said first main game being initiated, said second game trigger condition occurring randomly and having a probability of occurrence dependent on the amount of the wager made at said particular gaming machine, said step of causing the second game trigger condition including:

(1) selecting a random number from a predetermined range of numbers;

(2) allotting a plurality of numbers from the predetermined range of numbers in proportion to the amount of the wager made at said particular gaming machine, said step of allotting including allotting one number for each unit of currency of the amount wagered; and

(3) indicating the occurrence of the second game trigger condition if one of the allotted numbers matches the selected random number;

triggering a second game to appear at said particular gaming machine in response to said occurrence of said second game trigger condition, said second game appearing after completion of said first main game;

randomly selecting said one progressive prize from said plurality of progressive prizes that has been won; displaying said second game to the player at said particular gaming machine in response to said triggering;

activating said user interface at said particular gaming machine by said player during said displaying of said second game to affect the display of said second game;

identifying to the player said one progressive prize from said plurality of progressive prizes that has been won; and

awarding said one progressive prize from said plurality of progressive prizes that has been won.

'215 patent col. 8 l. 45—col. 9 l. 25. Figure 2 of the '215 patent shows the algorithm by which the system awards a progressive prize to a player.

IMAGE

Through this algorithm, random numbers are generated from a predetermined range based on the preferences of the operator. The system then selects a random number from that range and allocates a contribution to the progressive prize based on the number of credits wagered by the player. The player's numbers are then selected, again based on the number of credits wagered, and compared to the random number generated in step 21. If the random number matches one of the player's numbers,the system initiates the feature game through which the value of the progressive jackpot to be paid to the player is determined. If the feature game is not triggered—i.e., there is not a match between one of the player's numbers and the random number—a new random number is selected and the system waits for the main game to be initiated again.

The '603 patent, also entitled “Slot Machine Game and System With Improved Jackpot Feature,” issued on September 19, 2006 and is a continuation of the '215 patent. The claims of the '603 patent are substantially similar for the purposes of this appeal to the claims of the '215 patent except that they lack the step of “activating said user interface at said particular gaming machine by said player during said displaying of said second game to affect the display of said second game.” The removal of this step means the progressive jackpot awarded to the player is selected randomly rather than based on input from the player.

B. Procedural History

On June 12, 2006, Aristocrat filed suit against IGT for infringement of the ' 215 patent in the United States District Court for the Northern District of California. Aristocrat amended its complaint to assert infringement of the ' 603 patent upon the issuance of that patent. After the parties completed claim construction briefing, IGT moved for summary judgment of invalidity based on a theory that the '215 patent was abandoned and that Aristocrat failed to properly revive the application. In addition, according to IGT, the improperly revived '215 patent application anticipated the '603 patent under 35 U.S.C. § 102(b). The district court granted IGT's motion on June 13, 2007 and entered final judgment in favor of IGT. Aristocrat Techs. Austl. Pty, Ltd. v. Int'l Game Tech., No. 06–CV–3717, 2007 U.S. Dist. LEXIS 97582 (N.D.Cal. Sept. 4, 2007). Aristocrat timely appealed and, on September 22, 2008, we reversed the judgment of the district court finding “that improper revival may not be asserted as a defense in an action involving the validity or infringement of a patent.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 543 F.3d 657, 663 (Fed.Cir.2008). Accordingly, we remanded the case to the district court.

On February 19, 2009, IGT filed a Motion for Summary Judgment of Noninfringement (IGT's “Motion”) arguing, based on a joint infringement defense, that IGT performs some, but not all, of the claimed steps in the asserted patents. The district court held a claim construction hearing on March 18, 2009, based on the briefing filed prior to the first appeal. On May 14, 2009, the district court entered its claim construction order and ordered supplemental briefing on terms—including “making a wager” and “awarding”—at issue in this appeal. The parties addressed the supplemental terms in the remaining briefing on IGT's Motion.

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