Ata v. International Game Technology, C06-3717 MJJ.

Decision Date13 June 2007
Docket NumberNo. C06-3717 MJJ.,C06-3717 MJJ.
PartiesARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED and Aristocrat Technologies, Inc., Plaintiffs, v. INTERNATIONAL GAME TECHNOLOGY and IGT, Defendant.
CourtU.S. District Court — Northern District of California

Anthony R. Dealcuaz, Terrence Patrick McMahon, Arturo Esteban Sandoval, Robert J. Blanch, Jr., McDermott Will & Emery LLP, Palo Alto, CA, for Plaintiffs.

Jeffrey Stewart Love, Garth Alan Winn, Kristin L. Cleveland, Lane M. Chitwood, Patrick Marshall Bible, Samir N. Pandya, Stephanie Sue Irvine, Klarquist Sparkman, LLP, Portland, OR, Adam Randal Wichman, Klarquist Sparkman, LLP, Seattle, WA, Gabriel M. Ramsey, Orrick Herrington & Sutcliffe LLP, Menlo Park, CA, for Defendant.

ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF INVALIDITY ON GROUNDS THAT THE '215 APPLICATION WAS ABANDONED UNDER 35 U.S.C. § 371 AND § 133.

MARTIN J. JENKINS, District Judge.

I. INTRODUCTION

Before the Court is Defendants International Game Technology and IGT's (collectively "Defendants") Motion for Summary Judgment of Invalidity on Grounds that the '215 Patent Was Abandoned Under 35 U.S.C. § 371 and § 133.1 Plaintiffs Aristocrat Technologies Australia Pty Limited ("ATA") and Aristocrat Technologies, Inc. ("ATI") (collectively "Plaintiffs" or "Aristocrat") oppose the motion. For the following reasons, the Court GRANTS Defendants' Motion for Summary Judgment.

II. FACTUAL BACKGROUND

This action presents a patent infringement dispute pertaining to certain technology related to electronic gaming machines. Unless otherwise noted, for purposes of the pending motion, the Court finds the following facts to be undisputed.

A. The Parties

Plaintiff ATA is an Australian company with its principal place of business in Australia. (First Amended Complaint ("FAC") ¶ 1; Def.'s Ans. ¶ 1.) ATA provides a range of gaming solutions such as software, systems, and hardware, including electronic gaming machines. (FAC ¶ 1.) Plaintiff ATI is a Nevada corporation with its principal place of business in Las Vegas, Nevada. (FAC ¶ 2; Def.'s Ans. ¶ 1.) ATI develops and distributes ATA products. (FAC ¶ 2.)

Defendants International Game Technology and IGT are Nevada corporations with their principal places of business in Reno, Nevada. (FAC ¶¶ 3-4; Def.'s Ans. ¶¶ 3-4.) IGT designs and manufactures electronic gaming machines for sale in the United States, including the State of California. (Def.'s Ans. ¶ 5.) The parties are in dispute as to the particular type of business conducted by International Game Technology. (FAC ¶ 5; Def.'s Ans. ¶ 5.)

B. The Operative Claims and Counterclaims

On December 15, 2006, Plaintiffs filed their First Amended Complaint alleging two claims: (1) Infringement of U.S. Patent No. 7,056,215 B1 ("the '215 Patent"); and (2) Infringement of U.S. Patent No. 7,108,603 B2 ("the '603 Patent").2 On January 2, 2007, Defendants filed their responsive pleading consisting of an answer, a list of affirmative defenses, and six counterclaims: (1) Declaration of Non-Infringement as to the '215 Patent; (2) Declaration of Patent Invalidity as to the '215 Patent; (3) Declaration of Patent Unenforceability as to the '215 Patent; (4) Declaration of Non-Infringement as to the '603 Patent; (5) Declaration of Patent Invalidity as to the '603 Patent; and (6) Declaration of Patent Unenforceability as to the '603 Patent.3

C. The File History

On July 8, 1997 and September 9, 1997, Plaintiffs filed in Australia provisional patent applications PO 7780 and PO 9090, respectively. (Joint Statement of Undisputed Fact ("JS") at ¶¶ 1-2.) One year later, on July 8, 1998, Plaintiffs filed in Australia, under the Patent Cooperation Treaty ("PCT")4, an international application ("PCT Application") claiming priority to the above-referenced provisional applications. (Id. at ¶¶ 3-4.)5 As more fully described below, the July 8, 1998 international PCT Application ultimately issued in the United States in 2006 as the '215 Patent.

The World Intellectual Property Organization published the PCT Application on January 21, 1999. (Id. at ¶ 5.) The resulting deadline for Plaintiffs to file the national fee for the U.S. national stage of its PCT Application in the United States Patent & Trademark Office ("PTO") was January 10, 20006. (Id. at ¶ 6.) One day after the deadline expired, on January 11, 2000, the PTO received the national fee for the U.S. national stage of Plaintiffs' PCT Application. (Id. at ¶ 7.) Accordingly, the PTO gave Plaintiff's PCT Application a filing date of January 11, 2000. (Id.)

On or about June 13, 2000, the PTO mailed a "Notice of Abandonment" of the '215 Application to Plaintiffs' attorney of record, Mr. Islam.7 (Id. at ¶ 9, Ex. 9.) The "Notice of Abandonment" included the following statements:

COMMUNICATION

The above-identified application was ABANDONED on 11 January 2000 for failure to pay the basic national fee 30 month [sic] from the priority date for international application no. PCT/ AU98/00525.

RECOMMENDATION

Applicants may wish to consider filing a petition to the Commissioner under 37 CFR 1.137(a) or (b) requesting that the application be revived. Any petition filed under 37 CFR 1.137(a) and/or a petition under 37 CFR 1.137(b) requesting that the application be revived must meet the criteria in the recent revision of 37 CFR 1.137. See 62 Fed.Reg. 53131 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63 (October 21, 1997) (Effective Date: 01 December 1997).

Under 37 CFR 1.137(a), a petition requesting that the application be revived on the grounds of unavoidable delay must be filed promptly after applicant becomes aware of the abandonment and such petition must be accompanied by: (1) an adequate showing of the cause of unavoidable delay, (2) a proper reply, (3) the petition fee required by law and (4) a terminal disclaimer and fee in all applications filed before 08 June 1995.

Under 37 CFR 1.137(b), a petition requesting that the application be revived on the grounds of unintentional delay must be accompanied by: (1) a proper reply; (2) the petition fee required by law, (3) a statement that the "entire delay in filing the required reply from the due date for the reply to the filing of a grantable petition pursuant to this paragraph was unintentional" and (4) any terminal disclaimer and fee required pursuant to 37 CFR 1.137(c). The Commissioner may require additional information where there is a question whether the delay was unintentional. The petition fee required by law is $1210.00 for a small entity.

The filing of any petition under the unintentional standard cannot be intentionally delayed. A person seeking revival due to unintentional delay cannot make a statement that the delay was unintentional unless the entire delay was unintentional. A statement that the delay was unintentional is not appropriate if the petitioner intentionally delayed the filing of a petition for revival under 37 CFR 1.137(b). There are three periods to be considered during the evaluation of a petition under 37 CFR 1.137:(1) the delay in the reply that originally resulted in the abandonment; (2) the delay in filing an initial petition under 37 CFR 1.137 to revive the application; and (3) the delay in filing a grantable petition under 37 CFR 1.137 to revive the application. See 62 Fed.Reg. 53131 (October 10, 1997); 1203 Off. Gaz. Pat. Office 63 (October 21, 1997).

This recommendation to file a petition under 37 CFR 1.137(a) or (b) should not be construed as an indication as to whether or not any such petition(s) will be favorably considered.

(Id. at ¶ 10, Ex. 2.)

On September 15, 2000, Mr. Islam filed a "Petition Under 27 C.F.R. § 1.10(c) or § 1.10(d) to Correct Date — In' of the '215 Application." (Id. at ¶ 11.) On or about June 5, 2001, the PTO issued a notice addressed to Plaintiffs' attorney of record, Mr. Islam, denying Plaintiffs' petition to change the "date-in" of the '215 Application and reaffirmed abandonment of the '215 Application. (Id. at ¶ 14, Ex. 3.) The notice stated, among other things:

On March 21, 2000, the United States Designated /Elected Office (DO/EO/US) mailed a Notification of Missing Requirements (Form PCT/DO/EO905) and Notification of a Defective Oath or Declaration (Form PCT/DO/EO/917) indicating that the declaration was not executed in accordance with 37 CFR 1.66 or 37 CFR 1.68. The notification set a one-month time limit to respond. On 10 April 2000, applicant filed a Response to Notification of Missing requirements Under 35 U.S.C. 371 in the United States Designated/Elected Office (DO/ EO/US' which was accompanied by executed declaration and power of attorney. On 13 June 2000, the PCT Legal Office mailed Communication and Notification of Abandonment. On 19 September, 2000 applicant filed present petition stating that `we are filing this petition under 37 CFR 1.10(c) or 1.10(d) to amend the "date in" to reflect the actual date the undersigned deposit with the United States Postal Express Mail under 37 Cfr [sic] 1.10(a) the application and requisite national fee.... For the reasons discussed above, applicant's request that the office accept the national application papers as filed on 10 January 2000 is DISMISSED without prejudice. The application remains ABANDONED. Any reconsideration on the merits of this petition must be filed within TWO (2) MONTHS from the mail date of this decision. Any reconsideration request should include a cover letter entitled "Renewed Petition Under 37 CFR 1.182. No petition fee is required. Extensions of time may be obtained under 37 CFR 1.136(a).

(Id. at ¶ 15, Ex. 3.) The PTO determined that Mr. Islam's petition to correct the "Date-In" had not provided sufficient corroborative evidence under 37 C.F.R. 1.10 such as "a copy of the Express Mail Label,"8 or "a statement from a USPS employee having firsthand knowledge of the time of the last pickup on 10 January 2000." (Id.)9 Neither Mr. Islam or anyone else filed any additional written papers with...

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