The opinion
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
SAVVY DOG SYSTEMS, LLC, and : Civil No. 3:19-CV-01470
POM OF PENNSYLVANIA, LLC, :
:
Plaintiffs, :
:
v. :
:
PENNSYLVANIA COIN, LLC, and :
PA COIN HOLDINGS, LLC, :
:
Defendants. : Judge Jennifer P. Wilson
MEMORANDUM
Before the court are the parties’ proposed constructions for the disputed
claim terms of U.S. Patent No. 7,736,223 (“‘223 Patent). (Docs. 71, 72, 74, 85,
87.)
FACTUAL BACKGROUND AND PROCEDURAL HISTORY1
Plaintiffs Savvy Dog Systems, LLC (“Savvy Dog”) and POM of
Pennsylvania, LLC (“POM”) (collectively, “Plaintiffs”) initiated this action via
complaint on August 23, 2019, against Defendants Pennsylvania Coin, LLC and
PA Coin Holdings, LLC (collectively, “Defendants”). Defendants filed a motion
to dismiss, prompting Plaintiffs to file an amended complaint on November 1,
2019. (Docs. 21, 25.) The single count in the amended complaint sets forth a
1 Because the court is writing for the benefit of the parties and the court, limited factual
background and procedural history are detailed in this memorandum.
claim for patent infringement under 35 U.S.C. § 271 of Savvy Dog’s Patent
Number: US 7,736,233 (“‘223 Patent”). (Doc. 25.)
The technology at issue in this patent infringement lawsuit relates to an
“electronic gaming method and system with a game preview display.” (Doc. 71–3,
p. 2.)2 This technology transforms games of chance into games of skill, which
then allows skill-based amusement machines in jurisdictions where the use of
gambling devices, i.e. games of chance, are largely outlawed. (See id. at 12.)
Plaintiffs allege infringement of two independent claims within the ‘223 Patent,
claim 44 and claim 51, with additional dependent claims adding elements to the
independent claims. (See Doc. 25.)
On November 15, 2019, Defendants filed a motion to dismiss Plaintiffs’
amended complaint along with a supporting brief arguing that the ‘223 Patent
claims patent-ineligible subject matter pursuant to 35 U.S.C. § 101 and that the
amended complaint failed to state a plausible claim for patent infringement.
(Docs. 31–32.) Following briefing and oral argument, the court denied the motion
to dismiss finding that although the claim at issue is an abstract idea, Plaintiffs
adequately alleged an inventive concept sufficient to survive a motion to dismiss.
(Docs. 37–39, 49, 56, 57, 58–59, 61–62.) Thereafter, Defendants timely answered
Plaintiffs’ amended complaint. (Doc. 63.)
2 For ease of reference, the court utilizes the page numbers from the CM/ECF header.
On June 25, 2020, Defendants filed a motion to stay this action pending final
resolution of non-party Banilla Games, Inc.’s Covered Business Method Review
(“CBM”) proceeding before the United States Patent and Trademark Office, Patent
and Trial Appeal Board (“PTAB”). (Doc. 68.) Once ripe, the court ordered that
the motion would be held in abeyance until the PTAB decided whether to institute
review of the CBM petition. (Docs. 69, 70 ,77, 80.) The parties, as requested in
the court’s prior order, notified the court on November 24, 2020, that PTAB denied
Banilla Games, Inc’s petition for institution of CBM review. (Doc. 106.) Thus,
the court denied Defendants’ motion to stay this action on December 8, 2020.
(Doc. 109.)
While awaiting a PTAB decision, the court moved forward with the
schedule in this case, which included the filing of a joint claim construction
statement, technology tutorials, and opening and responsive claim construction
briefs by the parties. (Docs. 71, 72, 74, 86, 87, 93.) The court held a claim
construction hearing on September 15, 2020, and permitted letter briefs following
that hearing on specific issues not previously addressed in the claim constructing
briefing. (Docs. 98, 100–102.) Thus, the construction of the claims at issue in the
‘223 Patent is now ripe for review.
STANDARD OF REVIEW
Claim construction is a matter of law to be determined by the court.
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370 (1996). As the case moves forward, the court’s ruling
becomes the basis for jury instructions at a trial. AFG Indus., Inc. v. Cardinal IG
Co., 239 F.3d 1239, 1247 (Fed. Cir. 2001).
“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define
the invention to which the patentee is entitled the right to exclude.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Innova/Pure Water,
Inc. v. Safari Walter Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)).
Claim terms “are generally given their ordinary and customary meaning.” Id.
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). “[T]he ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the art in question at the
time of the invention.” Id. at 1313. Determining how a person of ordinary skill in
the art (“POSITA”) “understands a claim term provides an objective baseline from
which to begin claim interpretation.” Id.
The ordinary meaning of claim terms as understood by a POSITA may be
readily apparent to a lay person in some cases. Id. at 1314. However, in many
cases, “determining the ordinary and customary meaning of the claim requires
examination of terms that have a particular meaning in a field of art.” Id. The
court must look to “those sources available to the public that show what a
[POSITA] would have understood disputed claim language to mean.” Id. This is
primarily done by reviewing intrinsic evidence, which consists of the claim
language, the claim specification, and the prosecution history. Id. at 1312–17; see
also Arlington Indus. Inc. v. Bridgeport Fittings, Inc., No. 3:01-cv-0485, 2008 WL
542966, at *1 (M.D. Pa. Feb. 25 2008). “[T]he claims themselves provide
substantial guidance as to the meaning of particular claim terms.” Phillips, 415
F.2d at 1314 (citing Vitronics, 90 F.3d at 1582). However, the claims do not
“stand alone,” but are part of “a fully integrated written instrument,” which
consists “principally of a specification that concludes with the claims.” Id. at 1315
(quoting Markman, 52 F.3d at 978). The specification “is always highly relevant
to the claim construction analysis” and is generally dispositive as “the single best
guide to the meaning of a disputed term.” Id. (quoting Vitronics, 90 F.3d at 1582).
Further, the inventor’s lexicography will govern when the specification reveals “a
special definition given to a claim term by the patentee that differs from the
meaning it would otherwise possess.” Id. at 1316.
In addition to the claim terms and specification, the prosecution history of
the patent at issue “provides evidence of how the [Patent and Trademark Office]
and the inventor understood the patent.” Id. at 1317. However, the prosecution
history may lack the same clarity as the specification because it “represents an
ongoing negotiation” between the Patent and Trademark office and the patent
applicant. Id. “Nonetheless, the prosecution history can often inform the meaning
of the claim language by demonstrating how the inventor understood the invention
and whether the inventor limited the invention in the course of prosecution, making
the claim scope narrower than it would otherwise be.” Id.
The court may also consider extrinsic evidence, such as dictionaries,
treatises, and expert testimony, but such evidence “is less significant than the
intrinsic record in determining ‘the legally operative meaning of claim language’”
and “is unlikely to result in a reliable interpretation of patent scope unless
considered in the context of the intrinsic evidence.” Phillips, 415 F.3d at 1317–19
(citations omitted).
DISCUSSION
At the outset, the court notes that the parties generally agree that the
definition of a POSITA in this case is a person, in 2006, who had a bachelor’s
degree in engineering or computer science, or an equivalent thereof, and at least
two years of development experience in the electronic gaming industry.
Turning to the constructions, the parties agree upon two constructions in this
case. First, the parties agree that the term “prior to displaying” should be
construed as “before making visible on the touch screen display.” (Doc. 71-1, p.
1.) And second, the parties agree that the term “computer readable code” should
be construed as “code in a form that can be executed by the computer.” (Id.)
Because the parties agree to these constructions, the court will adopt the proposed
construction of both terms.
The parties submitted competing constructions for seven terms in the ‘223
Patent. (Doc. 71-2.) During briefing and argument, the parties narrowed their
disagreements regarding some of these terms. The court will address each term in
the order in which they were argued at the September 15, 2020 claim construction
hearing.
1. “Winning combination”
The term “winning combination” appears in 22 of the 75 claims in the ‘223
Patent. (See Doc. 71-2, pp. 2–3.) Initially, the parties set forth the following
proposed constructions for the term “winning combination”:
Plaintiffs: “array of symbols yielding a successful outcome or
corresponding to a prize.”3 (Doc. 71-2, p. 2.)
Defendants: “array of game symbols in the game field yielding a
successful outcome.” (Id.)
Following the submission of their opening claim construction briefs, Plaintiffs
revised their proposed construction to “narrow the scope of disagreement between
3 In all proposed claim constructions within this memorandum, the court underlines the
differences between the proposals for clarity.
the parties.” (Doc. 86, p. 12.) At that point, the proposed constructions were as
follows:
Plaintiffs: “array of game symbols yielding a successful outcome,
including the award of a prize.” (Id.)
Defendants: “array of game symbols in the game field yielding a
successful outcome.” (Doc. 87, p. 15.)
During the claim construction hearing, Defendants then revised their proposed
construction based on Plaintiffs’ revision. (See Doc. 98-2, p. 9.) The final
proposed constructions for “winning combination” are:
Plaintiffs: “array of game symbols yielding a successful outcome,
including the award of a prize.” (Doc. 86, p.12.)
Defendants: “array of game symbols in the game field constituting a
win.” (See Doc. 98-2, p. 9.)
Although Defendants contend that Plaintiffs’ constructions have “been a
moving target,” Plaintiffs’ revision narrowed the disagreement between the parties
while Defendants’ revision broadened that disagreement. In determining the
proper construction for “winning combination,” the court finds it appropriate to
construe the proposed constructions with the least disagreement, i.e. Plaintiffs’
revised construction with Defendants’ original construction. In fact, in their
responsive claim construction brief, Defendants argue that because Plaintiffs
concede certain language, the court should adopt Defendants’ original proposed
construction. (Doc. 87, p. 15.) The court is mindful that the construction
determined by the court will guide jury instructions in this matter, and Defendants’
revised construction creates more confusion than clarity. Thus, the court reviews
the following proposed constructions in this section:
Plaintiffs: “array of game symbols yielding a successful outcome,
including the award of a prize.” (Doc. 86, p. 12.)
Defendants: “array of game symbols in the game field yielding a
successful outcome.” (Doc. 87, p. 15.)
Plaintiffs argue that Defendants’ proposed insertion of “in the game field” is
unnecessary because a POSITA understands “that a winning combination can exist
regardless of whether it is in the game field,” and that “the specification rejects the
notion that ‘winning combination’ itself should be construed as symbols ‘in the
game field.’” (Doc. 86, p. 12.) They further argue that “winning line,” “complete
line,” and “winning combination” are used interchangeably in the specification,
and that the “preview embodiment” displays “merely ‘a winning or non-winning
combination’ of the game to be played.” (Id. at 12–13.) Conversely, Defendants
argue that the ‘223 Patent describes the “winning combination” of symbols in
relation to a constructed game field. (Doc. 72, pp. 20–21.)
The court turns to the intrinsic evidence for guidance. The abstract of the
‘223 Patent describes that the “player’s selection of the field element” ultimately
“determines and displays each winning combination of symbols.” (Doc. 71–3,
hereinafter “‘223 Patent”, Abstract.) Further, in numerous locations, the
specification describes that the “winning combination” is constructed within the
“game field,” “field element,” or “field of game symbols.” (‘223 Patent, 2:12–26,
2:40–45, 2:59–64, 2:59–4:25, 4:36–64, 5:15–67, 6:1–32; 9:49–11:13.) The claims
themselves similarly use this language. (‘223 Patent, 12:50–13:6; 13:20–31,
13:53–14:13, 14:61–15:21, 16:8–16:26, 16:47–17:2, 17:22–45, 18:1–27, 18:46–
19:11, 19:31–21:21.) Thus, reviewing the specification and claim language, the
court finds that including “in the game field” is consistent with the intrinsic
evidence.
As to “yielding a successful outcome, including the award of a prize,”
Plaintiffs argue that this construction eliminates any uncertainty of what constitutes
a “successful outcome.” (Doc. 86, p. 13.) They aver that without “including the
award of a prize,” jurors would be confused by combinations yielding low-value
prizes that “are not winning combinations, because the outcome is not successful
enough (e.g. where the prize awarded does not exceed the cost to play the game).”
(Id. (emphasis in original).) Defendants argue that language regarding “a prize” is
unnecessary and confusing because “prize” is not defined in the specification, nor
does Plaintiffs’ proposal define “prize.” (Doc. 72, pp. 21–22.)
Here, the court agrees with Defendants that inserting “including the award of
a prize” muddies the water, rather than defines successful outcome. Plaintiffs do
not point to intrinsic evidence within the ‘223 Patent specification or claims that
define “prize.” Furthermore, the court is not convinced that a POSITA or juror
would misunderstand or misinterpret a “successful outcome” to mean that a low-
value prize is not a successful enough of an outcome. Accordingly, following
review of the parties’ arguments and intrinsic evidence, the court will construe
“winning combination” to mean an “array of game symbols in the game field
yielding a successful outcome.”
2. “[Determining/determine/determined] at least one winning
combination for each play of the game”
The term “[determining/determine/determined] at least one winning
combination for each play of the game” appears in 9 of the 75 claims in the ‘223
Patent. (See Doc. 71-2, pp. 3–4.) Initially, the parties set forth the following
proposed constructions:
Plaintiffs: “establish[ing] or ascertain[ing] at least one array of symbols
yielding a successful outcome or corresponding to a prize for each game
to be played.” (Id. at 3.)
Defendants: “guaranteeing/guarantee/guaranteed at least one winning
combination that may be formed for each game to be played.” (Id.)
Again, following the submission of their opening claim construction briefs,
Plaintiffs revised their proposed construction so that the competing proposed
constructions are as follows:
Plaintiffs: “establish or ascertain at least one winning combination,
properly construed, for each game to be played.” (Doc. 86, p. 14.)
Defendants: “guaranteeing/guarantee/guaranteed at least one winning
combination that may be formed for each game to be played.” (Doc.
71-2, pp. 3–4.)
Plaintiffs submit that without “clear lexicography from the patentee,” which
is missing in this case, “guarantee” should not replace “determine.” (Doc. 86,
p. 14.) The ‘223 Patent only uses “guarantee” once in a non-definitional manner
and it is inconsistent with the way the ‘223 Patent uses “determine.” (Id.)
Conversely, construing “determine” as “establish or ascertain” is confirmed by the
claims and “stays true” to the usage of “determine” throughout the ‘223 Patent.
(Id.)
Defendants argue that defining “determine” as “establish[ing] or
ascertain[ing]” adds confusion by providing two different dictionary definitions of
“determine.” (Doc. 72, p. 24.) Plaintiffs’ proposed construction would also make
this term impermissibly broad because “it could be misunderstood to encompass a
basic award scheduled,” but the “[m]ere creation of an award schedule does not
guarantee that a winning combination will be [sic] actually be achievable by a
player in a given game, which is what the claim requires.” (Id. at 24–25.) While
providing many reasons for the court to disregard Plaintiffs’ proposed construction,
Defendants’ support for construing “determine” as “guarantee” is that the
specification uses “guarantees” once in describing that each game is winnable. (Id.
at 23.)
In construing this term, the court recognizes that it must review the entire
phrase, rather than a single word, because the “meaning of a phrase is often greater
than the sum of the individual words.” ADE Corp. v. KLA-Tencor Corp., 252 F.
Supp. 2d 40, 58 (D. Del. 2003). Furthermore, it is unnecessary that “each claim
read on every embodiment.” Baran v. Med. Device Techs., Inc., 616 F.3d 1309,
1316 (Fed. Cir. 2010). However, Defendants would like to court to adopt a
construction using a word that appears only once in the ‘223 Patent to replace a
word that appears throughout the specification and claims. (See ‘223 Patent, 4:20.)
In reviewing the ‘223 Patent claims, the court finds that adopting
Defendants’ proposed construction would be narrower than the plain and ordinary
meaning of “[determining/determine/determined] at least one winning combination
for each play of the game.” See Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d
1324, 1330 (Fed. Cir. 2012). The only time the court should narrow a claim term
beyond its plain and ordinary meaning is when: (1) “a patentee sets out a definition
and acts as its own lexicographer;” or (2) “the patentee disavows the full scope of a
claim term either in the specification or during prosecution.” Id. (quoting Thorner
v. Sony Comput. Ent. Am. L.L.C., 669 F.3d 1362, 1365 (Fed. Cir. 2012)). These
factors are not present in this case. Moreover, using “guarantee” would be
nonsensical in certain contexts of the ‘223 Patent. (See, e.g., ‘223 Patent, Fig 5,
Fig 6, Fig 8, 2:21–25, 4:28–31, 4:40–50, 7:6–10, 12:50–13:6.)
Thus, the court finds it appropriate to construe “[determining/determine/
determined] at least one winning combination for each play of the game” as
“establish or ascertain at least one winning combination, properly construed, for
each game to be played.”4 This construction “stays true to the claim language and
most naturally aligns with the patent’s description of the invention.” Renishaw
PLC v. Marposs Societa’s per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) (citing
Young Dental Mfg. Co. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1142 (Fed. Cir.
1997)).
3. “Test[ing] the game field prior to displaying the game to the player
to ensure that a winning combination more valuable than the
determined winning combination is not generated inadvertently in
completing the field”
This term appears in 9 of the 75 claims of the ‘223 Patent. (Doc. 71-2, pp.
4–5.) Plaintiffs’ initial proposed construction broke this term into three pieces.
However, Plaintiffs revised their proposed construction in their responsive brief so
that the competing constructions are as follows:
Plaintiffs: “test[ing] the game field prior to displaying the game to the
player to ensure that the anticipated outcome corresponding to the
winning combination, properly construed, is not superseded by a better
4 Because neither party had addressed this issue, during the claim construction hearing, the court
questioned the parties regarding the addition of “properly construed” and “that may be formed”
in each party’s respective proposed construction of this term. Neither party put forth argument
or evidence that convinces the court to include “that may be formed” in the construction of the
term “[determining/determine/ determined] at least one winning combination for each play of the
game.” As to “properly construed,” the court believes this will be a helpful reminder to the
jurors that a term within a term has been construed by the court. Therefore, the court includes
“properly construed” within its construction of this term.
outcome, such as a higher prize level, in making the field from the
plurality of predetermined game symbols.” (Doc. 86, p. 16.)
Defendants: “test[ing] the previously constructed field prior to
displaying the actual game to be played to the player to ensure that a
winning combination more valuable than the previously determined
winning combination is not generated inadvertently when the player
completes a winning combination during play of the game.” (Doc. 71-
2, pp. 4–5.)
Plaintiffs argue that using “the game field” is clear, versus “the previously
constructed field,” which is surplusage, and not consistent with the intrinsic
evidence of the ‘223 Patent. (Doc. 86, pp. 16–17.) Defendants’ proposed
construction is limiting because “[f]ield construction and testing can be
overlapping processes prior to displaying a game field on the screen.” (Doc. 74,
p. 32.) As to “prior to displaying the game to the player” versus “prior to
displaying the actual game to be played to the player,” Plaintiffs again argue that
“the actual game to be played” language is surplusage and limiting because “‘the
game’ being tested may not actually be displayed to the player, depending on the
results of testing.” (Doc. 86, p. 17; Doc. 74, p. 32.) Next, Plaintiffs submit that
“more valuable than” should be construed similar to its proposed construction for
“winning combination” as “having a better outcome, such as a higher prize level.”
(Doc. 86, p. 18.) Finally, as to “completing the field,” Plaintiffs argue that
Defendants cannot point the court to any lexicography showing that “the patentee
intended to limit” this term strictly to “the player complet[ing] a winning
combination during play of the game.” (Id. at 19.) Rather, the patent uses
“complete field” and “field completely filled” to describe the system-created field.
(Id.)
Defendants submit that the court should construe the disputed term as a
single phrase because that is “consistent with the way the ‘223 Patent uses the
phrase and will preserve internal coherence in the patent.” (Doc. 72, p. 27.)
Breaking the term down into the disputed portions, Defendants argue that using
“the previously constructed field” clarifies that this “testing” step refers to the
game field constructed in the previous step. (Id. at 28.) Using “displaying the
actual game to be played” ensures that a POSITA understands that the game is the
one displayed to the player in the “automatically displaying” step. (Id.)
Defendants further interpret “the determined winning combination” to be
consistent with the “determining” step by construing it as the “previously
determinized winning combination.” (Id. at 29.) Lastly, Defendants argue that
their construction for “in completing the field” is consistent with the intrinsic
evidence of the patent. (Id.)
At the outset, the court notes that although Plaintiffs point out reasons that
the court should decline to adopt Defendants’ construction of the “testing
limitation” term, they fail to provide sufficient support for their proposed
constructions in many instances. Notwithstanding this, the court finds it
appropriate to construe the “testing limitation” as a whole, in a manner consistent
with the other constructions in this case, and following the specification and claim
language. Doing so, the court holds that the “testing limitation” shall be construed
as follows: “test[ing] the game field prior to displaying the actual game to be
played to the player to ensure that a winning combination more valuable than the
previously determined winning combination, properly construed, is not generated
inadvertently when the player completes a winning combination during play of the
game.”
4. “Automatically display[ing] an actual game to be played on the touch
screen game display to a player prior to initiating activation of game
play”
The term “automatically display[ing] an actual game to be played on the
touch screen game display to a player prior to initiating activation of game play”
appears in 9 of the 75 claims of the ‘223 Patent. (Doc. 71-2, pp. 5–6.) Initially,
the parties set forth the following proposed constructions:
Plaintiffs: “programmatically instruct[ing] the terminal display on the
touch screen the identification of the next game to the player, including
showing the player an otherwise unknown system-generated attribute
of the next game before the player commits to play the next game.”
(Doc. 71-2, pp. 5–6.)
Defendants: “automatically display[ing] an actual game to be played on
the touch screen game display to the player before the player commits
to play the displayed game.” (Id.)
Plaintiffs again revised their proposed construction in their responsive brief so that
the competing proposed constructions are as follows:
Plaintiffs: “automatically display[ing] an actual game to be played,
properly construed, on the touch screen game display to the player
before the player commits to play the displayed game.” (Doc. 86,
p. 21.)
Defendants: “automatically display[ing] an actual game to be played on
the touch screen game display to the player before the player commits
to play the displayed game.” (Doc. 71-2, p. 5.)
At the claim construction hearing, the parties agreed that they no longer
dispute the construction to this term, but rather, only dispute the construction of
“an actual game to be played” within the term “automatically display[ing] an
actual game to be played on the touch screen game display to the player before the
player commits to play the displayed game.” Accordingly, the court construes this
claim, with agreement of the parties, as: “automatically display[ing] an actual
game to be played, properly construed, on the touch screen game display to the
player before the player commits to play the displayed game.”5
5. “An actual game to be played”
The term “an actual game to be played” appears within the previously
construed term and 9 of the 75 claims of the ‘223 Patent. (Doc. 71-3, pp. 6–7.)
The parties’ initial proposed constructions were as follows:
5 For the same reasons detailed in footnote 4, the court includes “properly construed” within this
term for clarity to the jurors.
Plaintiffs: “the identification of the next game, including at least an
otherwise unknown system-generated attribute of the next game.” (Id.
at 6.)
Defendants: “the constructed game field of the game to be played.”
(Id.)
Once again, Plaintiffs revised their proposed construction in their responsive brief
so that the competing constructions are now as follows:
Plaintiffs: “the game to be played, including an otherwise unknown
system-generated attribute of it.” (Doc. 86, p. 21.)
Defendants: “the constructed game field of the game to be played.”
(Doc. 71–3, p. 6.)
Plaintiffs argue that with their revised construction, the only dispute is
“whether the term should be limited to the preview embodiment, where the game
preview screen is ‘the constructed field of the game to be played.’” (Doc. 86,
p. 22.) They aver that inserting “constructed field of” would narrow the broader
claim language of an “actual game to be played” improperly. (Id.) Whereas, “the
unknown system-generated attribute of” the game to be played that a player is
shown in advance of the game “could be a completely constructed game field,” but
“it is not the only way a game to be played can be previewed to lessen the role of
chance and ‘stay[] true’ to the invention.” (Id. (emphasis in original).)
Defendants argue that the court is not required to construe a claim to capture
every disclosed embodiment of the invention. (Doc. 87, p. 30.) Additionally, the
Plaintiffs’ referenced embodiments suggest that an “actual game” displayed to a
player is something different than “the constructed game field to be played.” (Id.
at 31.) Instead, Defendants aver that all embodiments are consistent with their
construction “in that the actual game to be played involves display of the
constructed game field.” (Id.) They cite to six embodiments in support of their
argument and conclude that none of the embodiments show “an actual game to be
played” in anything other than “the constructed game field.” (Id. at 31–34.)
At the hearing, Plaintiffs further illuminated the disagreement between the
parties’ construction:
The difference between the parties’ constructions is that the
Defendants’ construction requires the display of the game to be played
to have a fully constructed game field of that game for the user to see.
Whereas, we believe that it is adequate that it describe the game and
provide the user with at least one key attribute of the upcoming game
to be played that does not have to show a fully constructed game field.
(Transcript of Claim Construction Hearing at 76.)6
The court is mindful that “an actual game to be played” does not exist in the
‘223 Patent specification, but was introduced for the first time during the
prosecution of this patent. Thus, while the court can review the specification for
context, it cannot derive the meaning of this term therefrom. However, the
prosecution history is helpful to the court because it “informs the meaning of the
claim language by demonstrating how the inventor understood the invention and
6 While the parties did not request a transcript of the September 15, 2020 claim construction
hearing, the court obtained an unofficial copy for reference in drafting this memorandum.
whether the inventor limited the invention in the course of prosecution, making the
claim scope narrower than it would otherwise be.” Phillips, 415 F.3d at 1317
(citing Vitronics, 90 F.3d at 1582–83.) Further, “a patentee’s ‘use of “i.e.” signals
an intent to define the word to which it refers.’” SkinMedica, Inc. v. Histogen Inc.,
727 F.3d 1187, 1200 (Fed. Cir. 2013) (quoting Edwards Lifesciences LLC v. Cook
Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009)) (referencing the patent’s specification).
The court finds the use of “i.e.” within the prosecution history to be
instructive here. The January 26, 2010 Amendment provides: “This recitation
clarifies that the actual game to be played (i.e. the game field constructed in the
first recited step) is automatically displayed to the player in order for the player to
decide whether to initiate play of the game displayed.” (Doc. 71-4, p. 190.)
Although the Federal Circuit found “i.e.” most instructive within the patent’s
specification, it is reasonable to apply that to the prosecution history when the
applicant is the one using “i.e.” to provide a definition. Accordingly, the court
finds that there is intrinsic evidence for construing “actual game to be played” to
mean “the constructed game field of the game to be played” and will construe it as
such.7
7 As an aside, the court notes that an additional reason to reject Plaintiffs’ proposed construction
is that it provides more confusion than clarity. It is hard to imagine a juror being aided by
“actual game to be played” being interpreted as “the game to be played, including an otherwise
unknown system-generated attribute of it.”
6. “Game processor”
Defendants contend that “game processor,” which appears in 12 of the 75
claims in the ‘223 Patent, but specifically claim 44, is a “means-plus-function”
(“MPF”) term under 35 U.S.C. § 112(f). Thus, the court must first determine if
“game processor” is an MPF term before construing it as such or reviewing
Plaintiffs’ proposed construction and Defendants’ alternative construction.
Section 112(f) provides:
An element in a claim for a combination may be expressed as a means
or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
The court’s first step is to determine whether section 112(f) applies to the term at
issue. MPF treatment applies only to “purely functional limitations that do not
provide the structure that performs the recited functions.” DuPuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 469 F. 3d 1005, 1023 (Fed. Cir. 2006). There is a
rebuttable presumption that section 112(f) does not apply when the claim does not
use the term “means.” Williamson v. Citrix Online, LLC, 792 F. 3d 1339, 1348
(Fed. Cir. 2015). However, this presumption can be overcome “if the challenger
demonstrates that the claim term fails to ‘recite[] sufficiently definite structure’ or
else recites ‘function without reciting sufficient structure for performing that
function.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000))
(alterations in original). Prior to Williamson v. Citrix Online, LLC, this
presumption was characterized as “strong” and very difficult to overcome. Id. at
1348–49. Williamson reevaluated this “strong” presumption and held that the
heightened burden was “unjustified.” Id. at 1349. Instead, the court reiterated the
standard to be:
[W]hether the words of the claim are understood by person of ordinary
skill in the art to have a sufficiently definite meaning as the nature for
structure. When a claim term lacks the word “means,” the presumption
can be overcome and [§ 112(f)] will apply if the challenger
demonstrates that the claim term fails to “recite sufficiently definite
structure” or else recites “function without reciting sufficient structure
for performing that function.”
Id. (internal citations omitted). Generic terms, characterized as “nonce” words, are
tantamount to stating “means” and must be construed as such. Id. at 1350.
Defendants argue that the “game processor” cited in the claims performs
specific claimed functions without describing the structure for the “game
processor.” (Doc. 72, pp. 14–15.) Similarly, the specification’s reference to
“game processor” details nondescript and nonstructural components for performing
various functions. (Id. at 15.) Thus, Defendants argue that “[b]ecause the ‘223
Patent treats ‘game processor’ as a generic placeholder for a nondescript device
that simply performs the recited functions, it is a means-plus-function limitation.”
(Id.) According to Defendants, a POSITA’s understanding of a “game processor”
as a conventional CPU or microprocessor would be still be an insufficient
disclosure of structure to avoid MPF treatment. (Id.) Rather, disclosure of an
algorithm is needed. (Id. at 15–16.) Further, Defendants aver that the fact that the
‘223 Patent’s claims do not use the term “means” does not save them from MFP
treatment because district courts have found “processor” to be a substitute for
“means.”
Plaintiffs argue that there is a presumption that “game processor” is not
subject to MPF treatment because it does not use the term “means.” (Doc. 74, p.
13.) Since Williamson, Plaintiffs’ submit that courts have recognized that
“processor” is more analogous to “circuit” than to “means.” (Id. at 13–16.)
Applying the case law to claim 44 of the ‘223 Patent, Plaintiffs aver that claim 44
provides “appropriate objective, context and componentry,” as well as an
“algorithm imparting structure.” (Id. at 17–20.)
Applying Williamson and reviewing the case law provided by the parties as
applied to claim 44, the court finds that “game processor” provides sufficiently
definite structure such that Defendants have not overcome the presumption of a
non-“means” term. Specifically, the court finds several cases instructive. In
Realtime Adaptive Streaming LLC v. Adobe System, the defendant argued that it
overcame the presumption because the claims at issue only described “processors”
in functional terms. No. CV 18-9344, 2019 U.S. Dist. LEXIS 125180, at *45
(C.D. Cal. July 25, 2019). The court held that the defendant did “not offer any
evidence to show that a person of ordinary skill in the art would not understand the
word ‘processor’ itself to connote a class of structures.” Id. at 45–46 (citing
Zeroclick, LLC v. Apple, Inc., 891 F.3d 1003, 1007–08 (Fed. Cir. 2018)). In
Odyssey Wireless, Inc. v. Apple Inc., the court noted that Williamson did not
identify “processor” as a nonce word. No. 15-CV-1735-H, 2016 WL 3055900, at
*11 (S.D. Cal. Mar. 30, 2016). However, other courts since Williamson have held
that “‘processor’ connotes structure.” Id. (quoting Syncpoint Imaging, LLC v.
Nintendo of Am. Inc., No. 2015-CV-00247, 2016 WL 55118, at *20 (E.D. Tex. Jan.
5, 2016)). The court continued stating “several district courts post-Williamson
have concluded that the term ‘processor’ sufficiently connotes a definite structure
to a person of ordinary skill in the art, and, therefore, found that § [112(f)] did not
apply to a claim or claims that used the term ‘processor.’” Id. at *11–12 (citing
Syncpoint Imaging, LLC, 2016 WL 55118 at *18–21; Smartflash LLC v. Apple
Inc., No. 6:13-CV-447, 2015 WL 4208754, at *3 (E.D. Tex. July 7, 2015); Finjan,
Inc., v. Proofpoint, Inc., No. 13-CV-05808, 2015 WL 7770208, at *10–11 (N.D.
Cal. Dec. 3, 2015); Nomadix, Inc. v. Hosp. Core Servs. LLC, No. CV 1408256,
2016 WL 344461, at *5–8 (C.D. Cal. Jan. 27, 2016)).
Here, the court finds that Defendants have not rebutted the presumption for
“game processor” within claim 44 to be construed as a MPF term. Thus, the court
turns to Plaintiffs’ proposed construction and Defendants’ alternative constructions
as follows:
Plaintiffs: “a CPU or microprocessor with input/output circuitry that
executes program instructions to generate a game.” (Doc. 71-2, p. 1.)
Defendants: “a conventional CPU or microprocessor processor that
executes program instructions to generate a game.” (Id. at 2.)
Plaintiffs submit that adding “conventional” is unsupported by the intrinsic
evidence but fails to cite any authority for the same. (Doc. 74, p. 21.) However,
they additionally argue that including “conventional” would prejudice Plaintiffs to
the jury in determining the issue of patentable subject matter and be inconsistent
with the court’s prior ruling on patent invalidity. (Id.; Doc. 61, pp. 18–19.)
Plaintiffs further argue that omitting “input/output circuitry” is a mistake as it is
“an essential part of a ‘game processor’ as understood by a POSITA.” (Id.)
Defendants argue that “conventional” should be included because there is an
“absence of any intrinsic evidence specifying the game processor to have
specialized structure, or itself constituting an innovation.” (Doc. 72, p. 19.)
Additionally, Plaintiffs’ inclusion of “input/output circuitry” is inappropriate
because it adds a limitation that is not mentioned in the patent nor prosecution
history. (Id.)
In applying the principles from Phillips, the court finds that including
“conventional” and “input/output circuitry” are unsupported by the intrinsic record.
Thus, the court will construe “game processor” as “a CPU or microprocessor that
executes program instructions to generate a game.”
7. “Program instructions”
Similar to “game processor,” Defendants submit that “program instructions,”
which is included in 13 of the 75 claims, is a MPF term. (Doc. 72, p. 39.)
Defendants argue that the claims do not specify any structure for the “program
instructions,” and merely replace the term “means” with “program instructions.”
(Id. at 40.) This “functional claiming” invokes section 112(f) because “simply
disclosing software . . . without providing some detail about the means to
accomplish the function, is not enough.” (Id. at 41 (citation and quotations
omitted).) Conversely, Plaintiffs argue that Defendants are simply reprising their
“game processor” argument. (Doc. 74, p. 41.) They direct the court to claim 51
and compare “program instructions” to “computer code” arguing that “instruction”
and “code” are both defined terms of art. (Id. at 41–42.)
Applying Williamson, the court finds that Defendants have not overcome the
presumption by demonstrating that the claim term fails to “recite sufficiently
definite structure” or else recites “function without reciting sufficient structure for
performing that function.” See Williamson, 792 F. 3d at 1349. Thus, the court will
adopt the agreed-upon alternative construction provided by the parties:
“conventional commands that can be executed by a computer.”
CONCLUSION
For the reasons stated herein, the court will construe the disputed claims as
detailed in this memorandum. An appropriate order shall issue.
s/Jennifer P. Wilson
JENNIFER P. WILSON
United States District Court Judge
Middle District of Pennsylvania
Dated: December 21, 2020