Rembrandt Gaming Technologies, LP v. Boyd Gaming Corporation et al

Filing 200

ORDER granting 186 motion for entry of final judgment. Clerk to enter judgment of non-infringement in favor of Defendants and close case. Signed by Judge Miranda M. Du on 4/5/16. (Copies have been distributed pursuant to the NEF - JC)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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***

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REMBRANDT GAMING TECHNOLOGIES, Case No. 2:12-cv-00775-MMD-GWF
LP,
Plaintiff,
v.
BOYD GAMING CORPORATION, et al.,

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ORDER
(Pltf’s Mot. For Entry of Final Judgment –
dkt. no. 186)

Defendants.

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Plaintiff Rembrandt Gaming Technologies, LP alleges defendants infringed

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Plaintiff’s “Electronic Second Spin Slot Machine” patent, U.S. Patent No. 6,641,477 (“the

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‘477 Patent”). (See dkt. no. 1.) Following a claim construction hearing, the Court issued

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an Order addressing disputed claim terms in claim 32 of the ‘477 Patent (“Claim

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Construction Order”). (Dkt. no. 185.) Plaintiff now moves for entry of final judgment

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(“Motion”). (Dkt. no. 186.) Defendants WMS Gaming Inc., Boyd Gaming Corporation and

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LV Gaming Ventures, LLC (collectively referred to as “Defendants”) have opposed (dkt.

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no. 187) and Plaintiff has replied (dkt. no. 188). For the reasons discussed below, the

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Motion is granted.

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Plaintiff seeks entry of final judgment to permit Plaintiff to appeal the Court’s

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Claim Construction Order. (Dkt. no. 186.) Plaintiff concedes that it cannot as a matter of

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law establish that the accused gaming products infringe claim 32 of the ‘477 Patent and

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stipulates to entry of non-infringement without waiving its appellate rights. (Id. at 3.)

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Defendants counter that the Court should enter judgment of non-infringement, but defer

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entering final judgment to allow Defendants to complete discovery and move for

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summary judgment on their affirmative defenses of invalidity and unenforceability, and to

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allow Defendants to seek attorney’s fees and costs. (Dkt. no. 187.)

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The Court has discretion to determine whether to address affirmative defenses of

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invalidity and unenforceability after a finding of non-infringement. See Multiform

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Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1481 (Fed. Cir. 1998) (declining to

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require the trial court to decide patent invalidity when the dispute has been disposed of

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on other grounds). Defendants argue that the Court should rule on their affirmative

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defenses because the issues of invalidity and unenforceability are clear and resolution at

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this stage would avoid the unnecessary costs of having these issues be decided in a

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subsequent appeal should the Federal Circuit reverse on the issue of non-infringement.

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However, Defendants’ request to complete discovery before moving for summary

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judgment undermines their suggestion that resolution of these is clear. The Court agrees

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with Plaintiff that continued litigation on Defendants’ affirmative defenses would

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unnecessarily increase costs for the parties. The Court will enter judgment as to non-

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infringement and decline to address the affirmative defenses of invalidity and

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unenforceability. See Bally Tech., Inc. v. Bus. Intelligence Sys. Solutions, Inc., No. 2:10-

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CV-00440-PMP-GWF, 2012 WL 3656495 at *12 (D. Nev. Aug. 23, 2012) (“A finding of

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no infringement renders moot an affirmative defense of invalidity of a patent infringement

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claim.”) (citing PODS, Inc. v. Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007)

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(declining to consider arguments relating to affirmative defense of invalidity because

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finding of non-infringement renders such affirmative defense moot).

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It is therefore ordered that Plaintiff’s motion for entry of final judgment (dkt. no.

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186) is granted. The Clerk is directed to enter judgment of non-infringement in favor of

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Defendants and close this case.

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DATED THIS 5th day of April 2016.

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MIRANDA M. DU
UNITED STATES DISTRICT JUDGE

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