Konami Gaming Inc. v. PTT, LLC

Filing 155

ORDER. IT IS ORDERED that 92 High 5 Games' Motion for Summary Judgment is GRANTED. The Clerk of Court is directed to enter judgment in favor of Defendant and Counterclaimant High 5 Games, LLC on all asserted claims. All other motions are denied without prejudice as moot. The Clerk of Court is instructed to close this case. Signed by Judge Richard F. Boulware, II on 2/21/2018., Case terminated. (Copies have been distributed pursuant to the NEF - ADR)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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***

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KONAMI GAMING, INC.,

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Plaintiff,

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Case No. 2:14-cv-01483-RFB-NJK
ORDER

v.
HIGH 5 GAMES, LLC,

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Defendant.

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I.

INTRODUCTION

Before the Court are Defendant’s Motion to Limit the Number of Patent Claims, ECF No.
60, Defendant’s Motion for Summary Judgment, ECF No. 92, and claim construction, as briefed
in ECF Nos. 86 and 91. For the reasons stated below, the Court grants summary judgment for
Defendants.

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II.

PROCEDURAL HISTORY

Plaintiff Konami filed the first Complaint on September 12, 2014. ECF No. 1. The
operative Amended Complaint was filed on February 29, 2016. ECF No. 53. The Amended
Complaint alleges four counts of infringement for four patents: Count I – Infringement of US
Patent No. 8,096,869; Count II – Infringement of US Patent No. 8,366,540; Count III –
Infringement of US Patent No. 8,662,810; Count IV – Infringement of US Patent No. 8,616,955.
High 5 Games filed an Answer and Counterclaims on March 14, 2016. ECF No. 54. Plaintiff
Konami filed an Answer to the counterclaims on March 28, 2016. ECF No. 55. Plaintiff Konami

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filed its opening claim construction brief on October 7, 2016. ECF No. 86. Defendant High 5 filed

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a Response on October 21, 2016, and Plaintiff filed a Reply on November 11, 2016. ECF Nos. 92,

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98. The Court approved the parties’ stipulated discovery plan and scheduling order, providing that

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discovery would not commence until after the claim construction hearing. ECF No. 52. Defendant

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filed a Motion for Summary Judgment on October 21, 2016. ECF No. 92. Defendant argued that

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the claims at issue are all invalid as indefinite under 35 U.S.C. § 112, and abstract under 35 U.S.C.

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§ 101. Plaintiff filed a Response on December 2, 2016, and Defendant filed a Reply on December

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23, 2016. ECF Nos. 99, 101.

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On May 31, 2017, June 1, 2017, June 2, 2017, and August 1, 2017, the Court held an

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omnibus hearing addressing claim construction and the Motion for Summary Judgment. In

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addition to the arguments of counsel, the Court heard testimony from Defendant’s expert witness

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Mark C. Nicely and Plaintiff’s expert witness John Acres. As laid out below, the witnesses testified

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as to the knowledge of one of ordinary skill in the art at the time the patents were issued, including

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industry standards and standard technology as relevant to the knowledge of one of ordinary skill

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in the art. In a minute order on July 10, 2017, the Court requested that the parties submit complete

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copies of the prosecution histories of the patents, as well as summary descriptions of the

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prosecutions. ECF No. 138. The parties did so on July 24, 2017. ECF Nos. 143-148.

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III.

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The parent patent, No. 8,096,869, is entitled “Gaming Machines with Runs of Consecutive

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Identical Symbols,” patented on January 17, 2012. The patent No. 8,366,540 was patented on

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February 5, 2013. The patent No. 8,616,955 was patented on December 31, 2013. The patent No.

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8,622,810 was patented on January 7, 2014. The patents disclose variations on a slot gaming device

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in which the simulated digital “reels” depict a consecutive run of identical symbols in one reel to

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heighten the player’s anticipation of a winning outcome, with the identical symbol changing for

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each “game.”

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BACKGROUND -- EXTRINSIC & INTRINSIC EVIDENCE

A. The Claims of the Four Patents
The Court’s analysis in this case focuses on the asserted claims of the four patents at issue.

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The independent claims are representative of the asserted claims for the patents at issue in this

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case. The following are the independent claims of the four patents:
Claim 1 of the ‘869 Patent: A gaming machine comprising: a processor configured to
execute a game displaying a matrix of symbol containing elements . . . said simulated
rotatable reel including at least one section in which a consecutive run of three or more of
said symbol containing elements is populated by an identical symbol . . . wherein said
identical symbol is selected by virtually spinning a notional, non-visible, inner reel
comprising a plurality of said symbols.
Claim 19 of the ‘869 Patent: A method for increasing probability of a winning outcome
on a gaming machine; wherein said winning outcome is determined by a game including
pre-defined arrangements of a plurality of symbols displayed in a matrix of symbol
containing elements comprising portions of simulated rotatable reels; said method
comprising a processor of a gaming machine configured to . . . arrange at least one of
said simulated rotatable reels with at least one consecutive run of three or more symbol
containing elements displaying an identical symbol . . . wherein said subset of said plurality
of symbols is arranged on a notional non-visible inner reel, such that said identical symbol
is randomly selected anew for each play of the game by virtual rotation of said notional
non-visible inner reel. (emphasis added).
Claim 1 of the ‘540 Patent: A gaming machine comprising: a display device; and, a
processor configured to execute a game displaying a matrix of symbol containing elements
. . . wherein said simulated rotatable reel including at least section in which a consecutive
run of two or more of said symbol containing elements is populated by a first identical
symbol; wherein said first identical symbol is used for a first play of said game; wherein a
second identical symbol is randomly selected, and wherein the first identical symbol is
replaced by the second identical symbol in said consecutive run of two or more of said
symbol containing elements, said second identical symbol being used for a second play of
said game. (emphasis added).
Claim 21 of the ‘540 Patent: A method for increasing probability of a winning outcome
on a gaming machine; wherein said winning outcome is determined by a game including
pre-defined arrangements of a plurality of symbols displayed, on a display device of said
gaming machine, in a matrix of symbol containing elements comprising portions of
simulated rotatable reels; said method comprising a processor configured to: arrange at
least one of said simulated rotatable reels including at least one section in which a
consecutive run of two or more of said symbol containing elements is populated by a first
identical symbol; said first identical symbol being used for a first play of said game;
randomly select a second identical symbol; and replace the first identical symbol by a
second identical symbol[.] (emphasis added).
Claim 1 of the ‘810 Patent: A gaming machine comprising: a memory device configured
to store data representing a reel . . . the reel having a run of consecutive symbol positions,
the run . . . being initially populated with a first identical symbol from the set of symbols .
. . a game controller configured to (i) initiate the first instance of a game using the reel,
(ii) randomly select a second identical symbol from the set of symbols, (iii) replace each
of the first identical symbols in the run of consecutive symbol positions of the reel with a
second identical symbol, and (iv) initiate a second instance of the game using the reel
having the run of consecutive symbol positions populated with a second identical symbol.
Claim 8 of the ‘810 Patent: A method comprising: storing data, in a memory device,

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representing a reel . . . initiating, via a game controller, the first instance of the game using
the reel; randomly selecting, via the game controller, a second identical symbol from the
set of symbols; replacing each of the first identical symbols in the run of consecutive
symbol positions of the reel with a second identical symbol; and initiating a second
instance of the game using the reel having the run of consecutive symbol positions
populated with a second identical symbol. (emphasis added).
Claim 15 of the ‘810 Patent: A non-transitory computer readable medium recording a
program for controlling a computer to function as a memory device configured to store
data representing a reel . . . the reel having a run of consecutive symbol positions . . .
initially populated with a first identical symbol . . . a game controller configured to (i)
initiate the first instance of a game using the reel, (ii) randomly select a second identical
symbol from the set of symbols; (iii) replace each of the first identical symbols in the run
of consecutive symbol positions of the reel with the second identical symbol, and (iv)
initiate a second instance of the game using the reel having the run of consecutive symbol
positions populated with the second identical symbol. (emphasis added).
Claim 1 of the ‘955 Patent: A gaming machine for providing a game to a player,
comprising: a memory device configured to store data representing a reel having a
predetermined number of symbol positions, wherein each symbol position has an
associated symbol from a set of symbols, the reel having a run of consecutive symbol
positions . . . a display device configured to display a matrix having a plurality of display
elements arranged in a column, a number of the display elements in the column being less
than the predetermined number of symbol positions in the reel . . . a game controller
configured to initiate the instance of the game using the reel during which the reel is spun
at a game speed, and the game controller being further configured to replace each of the
symbols associated with the run of consecutive symbol positions with an identical
replacement symbol during spinning of the reel . . . . (emphasis added)
Claim 10 of the ‘955 Patent: A method of comprising: storing data, in a memory device,
representing a reel, the reel having a predetermined number of symbol positions, wherein
each symbol position has an associated symbol from a set of symbols, the reel having a run
of consecutive symbol positions, wherein each of the symbol positions of the run of
consecutive symbol positions is initially populated, prior to initiation of an instance of a
game . . . ; display, via a display device, a matrix having a plurality of display elements
arranged in a column, the number of display elements in the column being less than the
predetermined number of symbol positions in the reel, and displaying a portion of the reel
such that the symbols associated with some of the symbol positions of the reel are displayed
in the matrix when the reel is in a stop position: initiating, via a game controller, play of
the instance of the game using the reel during which the reel is spun at a game speed . . .
(emphasis added).
Claim 19 of the ‘955 Patent: A non-transitory computer readable medium recording a
program for controlling a computer to function as a: a memory device configured to store
data representing a reel having a predetermined number of symbol positions, wherein each
element has an associated symbol from a set of symbols, the reel having a run of
consecutive symbol positions . . . a display device configured to display a matrix having a
plurality of display elements arranged in a column, a number of the display elements in the
column being less than the predetermined number of symbol positions in the reel . . . a
game controller configured to initiate the instance of the game using the reel during which

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the reel is spun at a game speed, and the game controller being further configured to
replace each of the symbols associated with the run of consecutive symbol positions with
an identical replacement symbol during spinning of the reel . . . . (emphasis added).

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The claims share common terms or significant phrases which are part of this Court’s

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analysis. These terms include: (a) “processor configured to”, (b) “game controller configured to”,

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(c) “display device configured to,” (d) “consecutive run of three or more said symbol containing

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elements,” and (e) “notional non-visible inner reel.” 1

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B. The Specification for the ‘869 Patent

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In analyzing invalidity, the Court has considered the patents in their entirety, as well as

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other cognizable evidence, including the prosecution history. The specifications of the four patents

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are substantially similar, and Plaintiffs have not asserted the existence of substantial structural

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differences between the patents. The ‘869 patent is the parent patent for the other three patents in

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this case. The Court therefore focuses its analysis in this Opinion on the specification and claims

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in the parent ‘869 patent with reference to the other patents as necessary or where they may slightly

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differ. See generally, Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999)

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(“When multiple patents derive from the same initial application, the prosecution history regarding

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a claim limitation in any patent that has issued applies with equal force to subsequently issued

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patents that contain the same claim limitation.”).

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The Court here identifies the most salient portions of the specification of the ‘869 patent

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that could plausibly relate to the disclosure of “structure” that may support the claimed invention:

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(1) “[I]n a first broad form of the invention, there is provided a gaming machine arranged to
display a matrix of symbol containing elements: each column of said matrix comprising a
portion of a simulated rotatable reel of said symbol containing elements; and wherein each
of said symbol containing elements of at least one consecutive run of said symbol
containing elements of at least one said reel is caused to display an identical symbol.
Preferably, said identical symbol is selected by a game controller from a subset of available
symbols.” ‘869, 2:9-14.
(2) “In a further broad form of the invention there is provided a method for increasing
probability of a winning outcome on a gaming machine . . . [p]referably, said identical
symbol is selected from a look-up table of said subset of identical symbols.” ‘869, 2:6667, 3:16-17.
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While the parties have asserted different constructions to these and other terms, even assuming Konami’s
construction of the terms analyzed in this order, the Court would still reach the same conclusions and holdings.

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(3) “In yet a further broad form of the invention there is provided a method of implementing a
game or gaming machine; said method including the steps of: (c) providing a gaming
machine with a control module; said module including a microprocessor, a working
memory and a data storage device connections means, (d) writing program code to said
data storage device, (e) connecting said data storage device to said control module. In a
still further broad form of the invention there is provided media for storing enabling digital
code retaining devices including, read only memory (ROM) and erasable programmable
read only memory (EPROM), compact flash cards and PCMCIA cards; said media further
including disc-based storage devices.” ‘869, 3:33-48.
(4) Figure 3, described by the patent as “a schematic representation of an ‘inner reel’ or lookup table.” ‘869, 3:58-59.
(5) [First Preferred Embodiment]: “A game controller (not shown) pre-selects at random, at
the initiation of a game sequence, a potential win element for each reel from the set of
elements. That is, the game controller predetermines which element, and therefore which
symbol, will be displayed at the end of the game, and may therefore contribute to a winning
outcome. . . . In this preferred embodiment, the number of elements in a run and the
location of the consecutive run or runs within the strip are predetermined and remain
constant for each game played on the machine. The identical symbol which populates these
consecutive run or runs of elements may be considered as one of a set of ‘inner reel’
symbols. The game controller (not shown) determines the identical symbol to be displayed
in each consecutive element of the run or runs of consecutive elements in which the symbol
is to be shown. The selection of the identical symbol is through a notional rotation of an
‘inner reel’ 34 shown as a strip of elements and symbols in FIG. 3. This ‘inner reel’ is in
effect a look-up table and is not displayed, but its simulated rotation and ‘coming to rest’
determines which symbol will populate the run or runs of consecutive elements of the
left-most reel. The symbols of the ‘inner reel’ or look-up table from which the selection is
made, are a sub-set of the set of symbols displayed in the remaining non-‘inner reel’
elements of the left-most reel.” ‘869, 4:26-61. (emphasis added).

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C. The Prosecution History

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The parties have invoked the prosecution history of the patents in this case, especially the

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‘869 patent, to support their arguments regarding the construction of central terms in the

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independent claims.

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The Court recognizes the legal significance of this history in construing the claims at issue

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in this case. See generally Lemelson v. General Mills, Inc., 968 F.2d 1202, 1206, (Fed. Cir.

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1992)(“The prosecution history gives insight into what the applicant originally claimed as the

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invention, and often what the applicant gave up in order to meet the Examiner's objections.”)

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Because the remaining patents are descendant or familial patents of the ‘869 patent, obtained with

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terminal disclaimers, the prosecution history of the ’869 patent, especially as it relates to

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disavowals or limitations of the claims, is controlling as to the claims of the other three familial

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patents in this case. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1333 (Fed. Cir.

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2003)(noting that “prosecution disclaimer may arise from disavowals made during the prosecution

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of ancestor patent applications”); see also Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340,

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1349 (Fed. Cir. 2004) (“[T]he prosecution history of one patent is relevant to an understanding of

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the scope of a common term in a second patent stemming from the same patent application.”)

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The Court finds the final stages of the prosecution history of the ‘869 patent instructive in

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this case. After an initial non-final rejection, and responsive amendments and arguments, the

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prosecution office issued a final rejection on January 26, 2010. In rejecting claims 1 and 21 as

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unpatentable over U.S. Patent Application Publication No. 2004/0058727 (“Marks”), the examiner

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stated:

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“The Examiner submits that Marks’s approach of using a random number generator . . .
where the gaming device stores random number generators for use in generating random
symbols, identical symbols, outcomes and the like[] is substantially equivalent for the same
purpose as the arrangement of spinning of a non-visible inner reel. Both function
substantially the same as to randomly determining identical symbols or replicator symbols
to be used in the game of chance. It appears that skilled artisan [sic] would have not only
found it equivalent but obvious to describe the effect of a random number generator in the
sense of spinning an inner non-visible reel as it appears to be only descriptive language
describing the functions of a common random number generator and look-up table or the
like . . . It would appear to be clear to a skilled artisan that both look-up tables and random
number generators are widely well known in the art and utilized in a majority of games of
chance to generate random outcomes.” ECF No 148, 10-11.
After requesting a continued examination, Plaintiff submitted a Response to the Final Action.
Plaintiff emphasized that its patent claimed a device in which the consecutive runs of identical
symbols are displayed and visible during “rotation” of the outer or simulated reels and the symbols
are selected by means of a unique process of spinning a non-visible inner reel. Following an
interview, the Patent Office issued a Notice of Allowability. Regarding the Marks prior art
reference, the examiner stated:

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“Marks discloses that a string of identical symbols may be displayed on a display device
(figure 3A), however, in Marks the string of identical symbols appears to be on a single
symbol containing element (i.e. symbol position) of the column or reel. On the contrary,
the claimed invention requires a consecutive string of three or more symbol containing
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elements (i.e. symbol positions) to be populated with the identical symbol. This allows the
perception of the same symbol to remain on the display device during rotation as the same
identical symbol is viewed multiple times. Moreover, Marks and the totality of the prior
art searched and cited of record appears to fail in disclosing a simulated rotatable reel
including sections that are fixed for each play of the game and at least one section of the
consecutive string of symbol containing elements that is populated with said identical
symbol anew for each play of the game. Further, such population of the identical symbol
occurs by a process in which a notional, non-visible inner reel is virtually rotated to select
one of a subset of symbols to populate the section of the consecutive string. Consequently,
as the totality of the claimed invention is not taught by the prior art, claims 1-5, 7-13, 1522, 24, 26, & 27 are allowed.” ECF No. 148, 13-14 (emphasis added).

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This particular sequence of rejection and subsequent allowance is instructive as to the process or

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steps that can be claimed regarding the “notional non-visible inner reel” referenced in the ‘869

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patent. This is to say that the “notional non-visible inner reel” cannot simply represent the use of

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a random number generator with a look-up table to randomly select symbols—some of which

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would be identical—to appear on a display device with simulated digital reels. The January 26,

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2010 rejection with its reference to known prior art in Marks makes this clear. While the examiner

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did note the difference in the ‘869 patent versus Marks with regard to the appearance of the

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“consecutive string of three or more symbol containing elements,” the examiner emphasized the

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“process”, i.e., the structure for the selection and placement of these symbols, taught by the

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invention was the virtual rotation of a “non-visible inner reel.” Indeed, the examiner could not

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have allowed the patent based simply upon the manner or configuration of the slot symbols as they

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appeared to the player on the digital simulated reels as this would have reflected unallowable “pure

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functional claiming.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed Cir. 2009).

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Rather, the patent was allowed based upon the “totality of the claimed invention,” which includes

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the claimed virtual rotation process, which is the process by which the matrix of symbols is created

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and selected for display on the simulated rotating reels. Thus, one of the central questions that

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remains for this order is whether the “process” of a “notional non-visible inner reel” “virtually”

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rotating is actually disclosed in the claims or specification of the ‘869 patent. This question and

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the inquiry into whether all of the claimed functions have associated structure is explored below.

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D. Factual Findings and Expert Testimony

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Both parties’ experts testified as to the knowledge of one of ordinary skill in the art at the

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time the ‘869 patent and other patents were issued, including industry standards and standard

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technology. Based on this testimony and the record of the hearing, the Court makes the following

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findings of fact.

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First, there were a limited number of game development “kits” used by game developers.

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The kits included random number generators or other random selection mechanisms using known

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mathematical formulas. Importantly, these random number generators provide different options

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for a developer in terms of the range of numbers that can be provided and the extent of true

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randomness of the numbers generated. A game developer would need to know the specific

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requirements of the game(s) to determine which random number generators would properly serve

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the needs of the game(s). Moreover, random number generators still require individual

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programming or customization based upon the needs of the developer. As the Plaintiff’s expert

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conceded and the Court finds, different game designers could implement random number generator

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methodologies in different ways. This is to say that random number generators are not all

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equivalent and they do not all perform equally. While state law regulations, such as those in

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Nevada, set requirements for randomness, this does not establish the programming required for the

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random number generator. That programming is predominantly a function of the requirements or

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algorithm of the game for which the random number generator is being used.

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Additionally, and perhaps more importantly, a slot machine game such as the invention

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disclosed in the ‘869 patent and related patents requires separate programming or a specific

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algorithm to translate the “seed” number generated by a random number generator into either a

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symbol element, a stop position on a reel strip layout, or some other randomly chosen aspect of

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the final simulated reel display seen by the player. As Plaintiff’s own expert testified, and the

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Court finds, there must be, after the generation of a large number from the random number

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generator, a “process to turn [this large number] into a random selection that would compress that

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number into a random selection within the range of positions on each reel.” The aforementioned

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“process” is not a standard part of a random number generator’s programming or a standard part

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of game developer kits for slot machines. This process is not a standard algorithm or set of

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programming associated with a generic “processor” or “game controller” in the industry that is

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known to one of ordinary skill in the art. As Plaintiff’s expert acknowledged, different

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mathematical operations could “be employed to transform the randomly selected number into a

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reel stop position.” The Court finds that, to one of ordinary skill in the art of slot machine game

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design, this process entails specific programming or a specific algorithm that cannot be determined

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simply by knowing the final display of game symbols on a simulated digital reel display.

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The Court also finds based upon the expert testimony and record that look-up tables may

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be used and relied upon in different ways to determine the final display of symbols on a simulated

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digital reel. For example, in this case, the two parties have implemented a similar outcome on a

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simulated reel—the repeated depiction of an identical symbol—yet they have achieved that

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outcome by a different ordering and use of look-up tables or templates in conjunction with

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probability tables/formulae.

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The Court further finds that to one of ordinary skill in the art the term “game controller”

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would be a generic description of the combination of a processor, memory and input/output device

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but would not connote or identify specific algorithms or programming except that such games

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must have some dynamic process of random selection of symbols. The game controller simply

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allows the interaction of inputs/outputs with the processor and related memory. A game controller

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would not have standard algorithms or programming for a game itself. The Court finds that there

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is no commercially-available or generic processor or game controller that comes with standard

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programming to perform—without additional programming and coding—all of the various

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functions associated with a generic slot game.

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MEANS-PLUS-FUNCTION

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IV.

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High 5 argues that the asserted claims of all of the patents are invalid as indefinite under

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35 U.S.C. § 112.

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A. Legal Standard

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1. General

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Sections (a), (b), and (f) of 35 U.S.C. § 112 provide:

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“(a) In general.--The specification shall contain a written description of the invention, and
of the manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and shall set forth the best mode contemplated
by the inventor or joint inventor of carrying out the invention.” 35 USC § 112(a).
“(b) The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor regards as the
invention.” 36 USC § 112(b).
“(f) Element in claim for a combination.--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.” 36 USC § 112(f) 2

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Subsection (f), often referred to as “means-plus-function” claiming, applies to claims that

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describe a function or outcome of an invention, rather than the “structure” or means of obtaining

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that outcome. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). “In

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exchange for the ability to use a generic means expression for a claim limitation, the applicant

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must indicate in the specification what structure constitutes the means. Such structure must be

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clearly linked or associated with the claimed function. Failure to specify the corresponding

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structure in the specification amounts to impermissible pure functional claiming. Although [§ 112

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¶ 6] statutorily provides that one may use means-plus-function language in a claim, one is still

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subject to the requirement that a claim ‘particularly point out and distinctly claim’ the invention.

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If an applicant does not disclose structure for a means-plus-function term, the claim is indefinite.”

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Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012)(emphasis

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added).

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“The dispositive question in an indefiniteness inquiry is whether the claims, not particular

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claim terms, read in light of the specification delineating the patent, and the prosecution history,

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Courts have sometimes referred to this as subsection (6) or ¶6. As it appears in this Opinion, 6 and (f) are used
interchangeably.

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fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

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Cox Communication, Inc. v. Sprint Communication Company LP, 838 F.3d 1224, 1231 (Fed. Cir.

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2016) (internal citations and quotation marks omitted).

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2. Applicability of Means-Plus-Function Analysis

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“Use of the word ‘means’ creates a presumption that § 112 ¶ 6 applies.” Williamson, 792

6

F.3d at 1348. “When a claim term lacks the word ‘means’ the opposite presumption applies. The

7

presumption can be overcome where a claim fails to recite sufficient definite structure or else

8

recites function without reciting sufficient structure for performing that function.” Id.

9

“By contrast, if the claim merely recites a generic nonce word and the remaining claim

10

language, specification, prosecution history, and relevant external evidence provide no further

11

structural description to a person of ordinary skill in the art, then the presumption against means-

12

plus-function claiming is rebutted . . . if a claim recites a generic term that, properly construed in

13

light of the specification, lacks sufficiently definite structure to a person of ordinary skill in the

14

art, the presumption is overcome and the patentee has invoked means-plus-function claiming.” Id.

15

3. Adequacy of Structure if Means-Plus-Function Applies

16

“Construing a means-plus-function claim term is a two-step process. The court must first

17

identify the claimed function. Then, the court must determine what structure, if any, disclosed in

18

the specification corresponds to the claimed function. Where there are multiple claimed functions

19

. . . the patentee must disclose adequate corresponding structure to perform all of the claimed

20

functions. If the patentee fails to disclose adequate corresponding structure, the claim is

21

indefinite.” Williamson, 792 F.3d at 1351-52 (internal citations and quotation marks omitted).

22

“Structure disclosed in the specification qualifies as ‘corresponding structure’ if the

23

intrinsic evidence clearly links or associates that structure to the function recited in the claim. Even

24

if the specification discloses corresponding structure, the disclosure must be of ‘adequate’

25

corresponding structure to achieve the claimed function. Under 35 U.S.C. § 112, paras. 2 and 6,

26

therefore, if a person of ordinary skill in the art would be unable to recognize the structure in the

27

specification and associate it with the corresponding function in the claim, a means-plus-function

28

clause is indefinite.” Id. at 1352 (internal citations omitted)(emphasis added).

- 12 -

1

“The party alleging that the specification fails to disclose sufficient corresponding structure

2

must make that showing by clear and convincing evidence.” TecSec, Inc. v. Int’l Business

3

Machines Corp., 731 F.3d 1336, 1349 (Fed. Cir. 2013).

4

The Federal Circuit has provided more specific guidance as to determining structure for

5

computer-related or computer software-based inventions. The Federal Circuit has noted that “to

6

one of skill in the art, the structure of computer software is understood through, for example, an

7

outline of an algorithm, a flowchart, or a specific set of instructions or rules.” Apple Inc. v.

8

Motorola Inc., 757 F.3d 1286, 1298-99 (Fed. Cir. 2014) (internal citations and quotation marks

9

omitted)(emphasis added).

10

“Structure may also be provided by describing the claim limitation's operation, such as its

11

input, output, or connections. The limitation's operation is more than just its function; it is how the

12

function is achieved in the context of the invention.” Id. at 1299.

13

In Aristocrat Technologies Australia Pty Ltd. v. Int’l Game Technology, 521 F.3d 1328

14

(Fed. Cir. 2008), a case relied on heavily by Defendant, the Federal Circuit reviewed a means-

15

plus-function analysis for a claim pertaining to a novel form of slot machine. “The game disclosed

16

in the . . . patent purportedly increases player interest in slot machines by providing the player with

17

greater control over the definition of winning opportunities. It allows the player to define the

18

winning opportunities based on symbols displayed on the top and side of a multi-line screen

19

representing slot machine reels. Using the invention on a 3x5 screen, for example, the player can

20

define numerous different arrangements that will allow the player to win for some subset of the

21

243 possible winning combinations.” Id. at 1330. The patentee argued that the disclosure in the

22

specification of a “general purpose, programmable microprocessor,” or “standard microprocessor

23

base gaming machine with appropriate programming,” was sufficient to support the means-plus-

24

function claim. The Federal Circuit disagreed. The court ultimately concluded that simple

25

references to computer processors in the specification provided insufficient structure to support

26

the claim, reasoning:

27
28

“In cases involving a computer-implemented invention in which the inventor has
invoked means-plus-function claiming, this court has consistently required that the
structure disclosed in the specification be more than simply a general purpose computer or
- 13 -

1

11

microprocessor. The point of the requirement that the patentee disclose particular structure
in the specification and that the scope of the patent claims be limited to that structure and
its equivalents is to avoid pure functional claiming . . . For a patentee to claim a means for
performing a particular function and then to disclose only a general purpose computer as
the structure designed to perform that function amounts to pure functional claiming.
Because general purpose computers can be programmed to perform very different tasks in
very different ways, simply disclosing a computer as the structure designated to perform a
particular function does not limit the scope of the claim to ‘the corresponding structure,
material, or acts’ that perform the function, as required by section 112 paragraph 6. . .“[A]
general purpose computer programmed to carry out a particular algorithm creates a new
machine because a general purpose computer in effect becomes a special purpose computer
once it is programmed to perform particular functions pursuant to instructions from
program software. The instructions of the software program in effect create a special
purpose machine for carrying out the particular algorithm. Thus, in a means-plus-function
claim in which the disclosed structure is a computer, or microprocessor, programmed to
carry out an algorithm, the disclosed structure is not the general purpose computer, but
rather the special purpose computer programmed to perform the disclosed algorithm.” Id.
at 1333 (internal citations and quotation marks omitted).

12

Importantly, in Aristocrat the Federal Circuit ultimately concluded that it was immaterial

13

if one skilled in the art could create the program or algorithm from scratch—the relevant inquiry

14

is whether one skilled in the art, having reviewed the disclosed specification of the patent, “would

15

have understood that disclosure to encompass software to perform the function, and been able to

16

implement such a program.” Id. at 1337.

2
3
4
5
6
7
8
9
10

17

Other cases have addressed the algorithm requirement and the circumstances under which

18

a “general purpose computer” provides sufficient structure for a means-plus-function claim. In

19

Ergo Licensing, the Federal Circuit found that the claim for “programmable control means” for an

20

infusion system used to meter and deliver multiple fluid sources into a patient’s body, could not

21

be supported by the “recitation of ‘control device’ throughout the specification.” 673 F.3d at 1363.

22

The Ergo Licensing court reasoned that such a “control device” was the equivalent of a general

23

purpose computer that precedent had found insufficient to support a claim without the disclosure

24

of an algorithm. Id. at 1364. The court noted that a general purpose computer may be sufficient

25

where the function can be carried out by a computer without any special programming, but that

26

occurs only in “rare circumstances.” Id. at 1365. The court reiterated that while algorithms may be

27

described “in prose,” it must still constitute “a step-by-step procedure for accomplishing a given

28

result.” Id. (emphasis added).

- 14 -

1

Importantly for this case, in Williamson, the Court rejected the argument that depictions of

2

“a representative display from the presenter computer system” constituted supporting structure,

3

reiterating the necessity of the underlying method in the form of an algorithm. Williamson, 792

4

F.3d at 1354.

5
6
7

B. DISCUSSION
1. The Parties’ Arguments

8

High 5 does not make particularized arguments as to each claim it asserts is invalid. Rather,

9

High 5 argues that the asserted claims and limitations are expressed in functional terms, and

10

generally speak to outcomes—how the symbols are displayed or arranged, or respond to inputs,

11

without providing in the claims or the specification sufficient technological or algorithmic

12

structure to support those functions. High 5 relies extensively on Aristocrat Technologies Australia

13

Pty Ltd. and its progeny to support the claim that the complex electronic display functions at issue

14

here require technical supporting structure, specifically algorithms or sufficient explanations to

15

construct supporting algorithms.

16

High 5 argues that the word “processor” in and of itself is not sufficient structure to support

17

the claimed functions. High 5 asserts that it is undisputed that the claimed functions cannot be

18

performed without software, and therefore merely claiming a “processor” is insufficient. The

19

specification does not provide any description or discussion of the type of processor, or any

20

software, algorithm, or code. The named inventor admitted that the “processor” at issue is an

21

“ordinary” processor in his deposition.

22

High 5 also argues that the term “game controller” similarly is not sufficient to perform the

23

claimed functions as no algorithm or software code is disclosed in any of the patents. High 5 asserts

24

that in the ‘810 and ‘955 patents, the asserted claims use “game controller” instead of “processor.”

25

The specification does not describe the game controller, but does state that it is “not shown.”

26

Yoshimi, the inventor, characterized the “game controller” as being a “CPU” that “may also have

27

ROM or RAM.” High 5 asserts that this indicates that the game controller is also a generic

28

processing device or processor with no underlying structure disclosed.

- 15 -

1

Konami argues principally that the Aristocrat line of cases does not apply, as terms such

2

as “processor” and “game controller” are well-known names for definite structures, and that they

3

adequately support the claims such that the presumption against means-plus-function is not

4

overcome. Konami cites to Apple Inc.: “Hence, where a claim is not drafted in means-plus-

5

function format, the reasoning in the Aristocrat line of cases does not automatically apply, and an

6

algorithm is therefore not necessarily required. The correct inquiry, when ‘means’ is absent from

7

a limitation, is whether the limitation, read in light of the remaining claim language, specification,

8

prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person

9

of ordinary skill in the art. Here, the answer is yes.” 757 F.3d at 1298.

10

Konami further cites to Typhoon Touch Technologies v. Dell, Inc., 659 F.3d 1376 (Fed.

11

Cir. 2011) for the assertion that structure for software functions can consist of “an outline of an

12

algorithm, a flowchart, or a specific set of instructions or rules,” and “need only disclose sufficient

13

structure for a person of skill in the field to provide an operative software program for the specified

14

function.” Id. at 1385 (analyzing means-plus-function claim).

15

Konami argues that even if the terms “processor” and “controller” appear generic to a lay

16

person, they convey sufficient structure to one with skill in the art. Konami argues that these terms,

17

in conjunction with, for example, “display device,” “memory device,” and “memory device used

18

to store data,” provide sufficient structure to one of ordinary skill. “In common parlance in the

19

gaming arts, “processor,” and “game controller”—which includes a processor, a memory, and

20

inputs/outputs—do not invoke means-plus-function and should be held to be definite for all the

21

reasons discussed below.”

22

Konami argues that “method claims that parallel apparatus claims do not invoke means-

23

plus-function.” Konami argues that its process claims must be distinguished from apparatus

24

claims. See O.I. Corp. v. Tekmar Co., Inc., 115 F.3d 1576, 1583 (Fed. Cir. 1997) (“But claiming

25

a step by itself, or even a series of steps, does not implicate section 112, ¶ 6. Merely claiming a

26

step without recital of a function is not analogous to a means plus a function . . . If we were to

27

construe every process claim containing steps described by an “ing” verb, such as passing, heating,

28

reacting, transferring, etc. into a step-plus-function limitation, we would be limiting process claims

- 16 -

1
2

in a manner never intended by Congress.”).
Konami argues that claim 19 of the ‘869 patent and claim 21 of the ‘540 patent, recite “a

3

processor of the gaming machine configured to . . .” while claim 10 of the ‘955 patent and claim

4

8 of the ‘810 recite the step of “initiating, via the game controller.” Konami argues that these are

5

steps to an end, rather than “functions” and as such 112(f) should not apply. Konami argues that

6

both “processor” and “game controller” provide sufficient structure to support the claims of which

7

they are a part.

8

Konami notes that only claim 1 of ‘869 (the first independent claim of the parent patent),

9

recites a “processor configured to” and argues that the language “to execute” in that claim provides

10

sufficient structure. Konami argues that the specifications’ reference to a “control module” that

11

includes “microprocessor and working random access memory” provides additional structure that

12

supports these claims, and that one of ordinary skill would understand that “control module” and

13

“game controller” are synonymous. Providing as an example claim 1 of the ‘810 patent, Konami

14

argues that “a commercially available off-the-shelf processor is capable of imitating an instance

15

of the game” and “random selection.” Konami argues that the functions recited in the claims,

16

including “to initiate,” “to randomly select” and “to replace,” would be understood by one of

17

ordinary skill in the art, as functions that an ordinary “game controller” would be capable of

18

producing.

19

Finally, Konami asserts that even if 112(f) applies, the specification sufficiently describes,

20

“in prose” the underlying algorithms, to support the claim. Focusing on the specification in the

21

‘955 patent, Konami argues the following algorithm in prose exists:

22
23
24
25
26
27
28

“The first step is to ‘pre-select at random, at the initiation of a game sequence, a potential
win element for each reel from the set of elements.’ ‘955 Patent, 4:29-31. Secondly, ‘at
least one reel, the first left-most reel, is arranged to have at least one run of an identical
symbol in each of a number of consecutive elements,’ where the game controller
‘determines the identical symbol to be displayed in each consecutive element of the run or
runs of consecutive elements in which the symbol is to be shown.’ ‘955 Patent, 4:36-39,
52-55. The specification further discloses the procedure for the random selection of the
identical symbol as being ‘selected from a look-up table of [the] subset of available
symbols;’ and in terms of a “notional rotation of an ‘inner reel’ 34 shown as a strip of
elements and symbols in FIG. 3 [and where] this inner reel is in effect a lookup
table…’” ‘955 Patent, 3:16-17; 4:52-60.”

- 17 -

1
2
3

Konami asserts that this disclosure offers sufficient structure to one of ordinary skill in the art.
2. Discussion
a. Means-Plus-Function Applies

4

The Court finds that the presumption against means-plus-function claiming has been

5

rebutted as to the specifications and asserted claims in the four patents at issue in this case. There

6

is no dispute that the relevant specifications and respective terms do not use the word “means.”

7

The Court nonetheless finds that the specifications in this case disclose various functions without

8

disclosing or teaching a corresponding structure for these functions. This finding arises from a

9

review of all the patents, beginning first with an analysis of the specification of the ‘869 parent

10

patent. The asserted claims focus almost exclusively on the output or manner of display of the

11

symbols on the simulated rotated reels visible to the player without disclosing the underlying

12

programming or algorithms which create the structure for the “process” of “virtually spinning” the

13

“notional non-visible inner reel” or the “process” for random selection from a subset of symbol

14

elements. Specifically, for example, the asserted claims and specification of the ‘869 disclose a

15

number of functions for which there must a concomitant adequate disclosure of structure. Claim

16

1 discloses a “gaming machine comprising: a processor configured to execute a game displaying

17

a matrix of symbol containing elements” on a simulated reel with at least “one section in which a

18

consecutive run of three or more of said symbol containing elements is populated by an identical

19

symbol.” Claim 1 then describes a function or process by which “said identical symbol is randomly

20

selected anew for each play of the game, wherein said identical symbol is selected by virtually

21

spinning a notional, non-visible inner reel comprising a subset of said plurality of symbols.”

22

(emphasis added). Claim 19 of this patent further discloses that the selection process of the

23

processor including the run of consecutive symbols must represent a “method for increasing

24

probability of a winning outcome” while still maintaining the consecutive run of symbols and

25

ensuring that “all other remaining symbols containing elements of said simulated rotatable reel

26

[sic] are populated with fixed symbols from the plurality of symbols for each play of the game”

27

where the “subset of said plurality of symbols is arranged on a notional non-visible inner reel, such

28

that said identical symbol is randomly selected anew for each play of the game by virtual rotation

- 18 -

1

of said notional non-visible inner reel.” (emphasis added).

2

The asserted claims for the ‘869 patent and the descendant patents disclose other terms

3

possibly related to accomplishing the above-noted and other functions for the slot game invention

4

for the four patents. For example, the specification for the ‘869 patent discloses that a “game

5

controller (not shown) pre-selects at random, at the initiation of a game sequence, a potential win

6

element for each reel.” ‘869, 4:26-32. The ‘869 patent also discloses a “gaming machine with a

7

control module; said module including a microprocessor, a working memory and a data storage

8

device.” ‘869, 3:33-48. Claim 1 of the ‘540 patent discloses a “processor configured to execute a

9

game” with similar functional output. Claim 1 of the ‘810 patent discloses a “gaming machine

10

comprising: a memory device configured to store data representing a reel” and a “game controller

11

configured to.” Claim 19 of the ‘955 patent discloses a “memory device configured to store data

12

representing a reel,” a “display device configured to display a matrix [of symbols],” and a “game

13

controller configured to initiate the instance of a game.”

14

Importantly, regardless of the terms disclosed in the respective specifications or asserted

15

claims, the Court finds that the four patents all disclose that the gaming machine “processor”

16

(and/or “game controller” and/or “memory device” and/or “display device” and/or “control

17

module”) must perform, at least, the following functions:

18

(a) display a “matrix” of “simulated rotatable reel[s]” and determine the manner of the

19

display in terms of the number of rows or columns or other manner of visual arrangement,

20

(b) maintain an identifiable “subset” of “a plurality of symbols” to be placed in symbol

21

positions on the digital display of “simulated reels,”

22

(c) “pre-select” which symbols will appear in whatever chosen matrices of display exist

23

for the duration of each play of the game,

24

(d) determine based upon an “assigned” “hierarchy of probability” the “winning

25

arrangement of symbols” over multiple iterations of the game and then determine the

26

display and selection of the set of symbols for each play of the game,

27

(e) maintain and follow a flowchart or algorithm identifying the “fixed” or pre-determined

28

“symbol element” positions of the displayed symbols on the “simulated reel[s]” including

- 19 -

1

a “pre-select[ed]” “win element,” a “consecutive run” of “identical symbols,” and a

2

“random” selection of symbols from the subset of symbols “pre-select[ed]” for the entire

3

iteration of a game for the non-identical symbol positions,

4

(f) randomly determine when the “consecutive run” of “identical symbols” will be a part

5

of the winning selection of the game, and

6

(g) “increase[e] probability of a winning outcome” in direct relation to the consecutive run

7

of identical symbols or the matrix of symbols appearing with the consecutive run of

8

symbols.

9

And these functions only represent the essential functions disclosed in the four patents. This list is

10

not intended to be a complete list of all of the functions associated with the four patents at issue

11

in this case.

12

The specifications and asserted claims for the four patents, however do not disclose

13

sufficient structure to accomplish all of the functions noted. This is especially true of the selection

14

of symbols functions noted. First, it is undisputed that no algorithm or flowchart or customized

15

step-by-step random selection process is disclosed in any of the patents. While the various patents

16

contain figures or drawings, they do not individually or collectively represent flowcharts or

17

algorithms that could adequately serve as a basis for programming software for the computer

18

related devices in the invention. Indeed, the specification of the ‘869 patent explicitly concedes

19

that the process for selection of symbols by means of the “game controller” is “not shown” in the

20

specification (or the claims). (emphasis added). The specification further acknowledges in the

21

first preferred embodiment that the related process for “populat[ing]” the symbols in the symbol

22

positions by means of “spinning” the “inner reel” which “is in effect a look-up table” is also “not

23

displayed.” These processes are not disclosed in any further detail in the descendant patents. Thus,

24

the very processes or structures that are essential to the selection and display functions of the

25

invention are not, by explicit acknowledgment, disclosed in the patents.

26

Second, the Court rejects Konami’s argument that “processor” and “game controller” are

27

terms connoting adequate structure for the associated functions to individuals with ordinary skill

28

in the art of slot machine design and that such structure may be observed in “off-the-shelf”

- 20 -

1

processors known to individuals in the industry. Konami did not present competent or persuasive

2

evidence of the existence of such commercial processors that could perform the identified

3

functions associated with invention. The Court finds that the expert testimony and record in this

4

case did not establish the existence of such off-the-shelf commercial processors which could

5

readily and adequately perform the functions noted above and disclosed in the asserted claims.

6

Quite the contrary, the expert testimony confirmed that the multiple functions and outcomes

7

associated with the invention would require unique and specific programming based on a

8

customized algorithm(s) or specific flowchart(s) to accomplish the range of functions disclosed in

9

the slot machine invention of the four patents at issue in this case. While slot machine game design

10

kits might perform some of the noted functions, there was no evidence presented that such kits or

11

other “off-the-shelf” processors could be readily and adequately programmed to perform the

12

functions disclosed in the four patents.

13

Konami’s argument represents a conflation of the capabilities of a generic processor with

14

the standard structure associated with an “off-the-shelf” commercially available process. The fact

15

that a commercially available processor, like a general computer, has the capacity to be

16

programmed to perform the functions disclosed in the patent does not mean that the specific

17

programming or software necessary to perform the specific functions of the invention are a

18

standard component or aspect of these generic processors. As noted, in fact, to one of ordinary

19

skill in the art, it is and would be understood that such standard processors or game controllers or

20

game kits would require particular additional programming or coding to perform the functions of

21

the patents in this case.

22

For the reasons noted (and for the additional reasons following) 3 , the Court finds that

23

means-plus-function analysis applies to the specifications and claims of the four patents at issue

24

in this case.
b. Means-Plus-Function Analysis

25
26
27
28

3

The Court notes that there is some tension and overlap between the initial inquiry as to whether meansplus-function applies to the construction of the claims and the subsequent inquiry as to whether the claims and/or
specification disclose sufficient structure to avoid a finding of indefiniteness. For this reason, the Court’s
determinations and reasoning on both inquiries should be considered conjunctively and not discreetly.

- 21 -

1

As noted, means-plus-function analysis involves a two-step process. “The court must first

2

identify the claimed function. Then, the court must determine what structure, if any, disclosed in

3

the specification corresponds to the claimed function. Where there are multiple claimed functions

4

. . . the patentee must disclose adequate corresponding structure to perform all of the claimed

5

functions.” Williamson, 792 F.3d at 1351-52. (internal citations and quotation marks omitted). In

6

cases like this one “involving a special purpose computer-implemented means-plus-function

7

limitation” federal law requires that “the structure disclosed in the specification be more than

8

simply a general purpose computer or microprocessor.” Noah Sys. Inc. v. Intuit Inc., 675 F.3d

9

1302, 1313 (Fed. Cir. 2012)(internal citations and quotations omitted).

10

The Court has already identified functions disclosed in the invention which serve as the

11

basis for the analysis in this opinion. See supra Section IV.B.2.a. These functions, enumerated

12

previously, can be divided into to two basic categories: (a) game display functions and (b) game

13

symbol selection/placement functions. The Court further elaborates here on why the patents do not

14

disclose sufficient associated structure in relation to the specific functions taught in the patents.

15

The Court finds that the “processor” in Claims 1 and 19 of the ‘869 patent, the “processor”

16

in Claims 1 and 21 of the ‘540 patent, the “game controller” in Claims 1, 8 and 15 of the ‘810

17

patent and the “game controller” and “memory device” in Claims 1, 10 and 19 of the ‘955 patent

18

are not meaningfully distinguishable from the “general purpose computer” without structure noted

19

in Aristocrat. 521 F.3d at 1333. As the specification notes, the structure or outline of the process

20

of the “game controller” is “not shown” in the patents. And the specifications certainly do not

21

disclose an algorithm or flowchart or other structure for the programming of a general purpose

22

computer. For example, Claim 1 of the ‘869 Patent teaches a “gaming machine comprising: a

23

processor configured to execute a game displaying a matrix of symbol containing elements.” This

24

language does not suggest anything beyond a general purpose processor or computer. The Claim

25

goes on to describe what appears on the “display”: “a simulated rotatable reel comprising sections

26

of symbol containing elements” with “at least one section in which a consecutive run of three or

27

more of said symbol containing elements is populated by an identical symbol so that, as the

28

simulated rotatable reel rotates, a consecutive string of said same identical symbol is sequentially

- 22 -

1

displayed.” This language does not provide clear instruction or direction as to an algorithm or

2

programming to create or generate what is on “display.” The description of what is displayed in

3

terms of a consecutive run of symbols on one reel of a set of simulated rotating reels does not itself

4

suggest or indicate sufficient underlying structure or programming for the processor, since there

5

may be, as noted by experts here, multiple ways to achieve these displays. Noah Sys. Inc., 675

6

F.3d at 1317 (noting that the fact that “various methods might exist to perform a function is

7

precisely why the disclosure of specific programming is required”)(internal citations and

8

quotations omitted).

9

Similarly, Claim 19 of the ‘869 patent discloses a “method for increasing probability of a

10

winning outcome on a gaming machine” with said method comprising a processor of the gaming

11

machine configured to “arrange” a display of symbols “as the simulated rotatable reel rotates” as

12

the player is watching. Beyond merely stating that the symbols would be “randomly” selected

13

while still maintaining a consecutive run of symbols in one reel, this claim also does not disclose

14

a specific algorithm, code or programming to program the “processor” to increase the probability

15

of winning while still performing the various functions disclosed in the invention. Merely

16

describing a sequence of visual outcomes does not provide structure as to how the software

17

displays, selects and tracks the selection and placement of symbols in the symbol positions. As the

18

Federal Circuit noted in Williamson, simply offering a “representative display” of the outcome of

19

programming or software coding does not itself disclose sufficient structure to avoid a finding of

20

impermissible functional claiming. 792 F.3d at 1354.

21

Indeed, the Court finds based upon the expert testimony of the witnesses in this case that

22

specific forms of look-up tables, such as the inner reel layout presented by Konami at the hearing

23

or the staggered interactive tables presented by High 5, in conjunction with an enumeration of the

24

timing of the selection of symbols, are the types of flowcharts with a set of probabilities and a

25

programmed random number generator(s) that would need to be disclosed to identify the

26

associated underlying structure. Based upon the record here, including the testimony of both

27

experts, the Court does not find that a person of ordinary skill in the art would understand the

28

specifications to disclose sufficient or adequate structure in terms of an algorithm or flowchart(s)

- 23 -

1

to support the identified functions in the four patents at issue in this case.

2

The few intimations of structure in the patents are insufficient to completely address all of

3

the disclosed functions in the patents. For example, there is a reference in Claim 19 to a process

4

by which “said identical symbol is randomly selected anew for each play of said game.” The

5

reference to “random” selection would suggest the use of a random number generator in the

6

process of choosing the symbols that appear on the display of simulated rotatable reels. Even this

7

assumption of the use of a RNG does not sufficiently disclose the associated structure. First, this

8

claim goes on to indicate that the process for random selection is “by virtually spinning a notional,

9

non-visible, inner reel comprising a plurality of said symbols.” (emphasis added). The asserted

10

claims of the ‘869 patent, however, never disclose what this “virtual” process consists of – not

11

even a single step let alone the “step-by-step procedure for accomplishing a given result” that is

12

required for identifying structure. Ergo Licensing, 673 F.3d at 1365.

13

Perhaps most importantly, the ‘869 patent was allowed based upon the examiner finding

14

that the process of a “notional non-visible inner reel” “virtually” spinning represented a unique

15

process apart from simply the use of a random number generator with a look-up table. That is, the

16

inventor overcame the examiner’s final rejection based upon obviousness in relation to the prior

17

art of the Marks patent application by convincing the examiner that this process of “virtual

18

spinning” of a “notional non-visible inner reel” was not simply use of a look-up table and random

19

number generator as disclosed in Marks but something more and/or different. Indeed, the examiner

20

explicitly referenced the “process in which a notional, non-visible inner reel is virtually rotated to

21

select one of a subset of symbols to populate the section of the consecutive string process” as a

22

basis for allowing the patent in reference to Marks. Konami cannot now claim that this “notional

23

non-visible inner reel” is actually nothing more than the use of a random number generator with a

24

look-up table when the inventor specifically disavowed this to obtain the patent. General Mills,

25

Inc., 968 F.2d at 1206, (noting that “[t]he prosecution history gives insight into what the applicant

26

originally claimed as the invention, and often what the applicant gave up in order to meet the

27

Examiner's objections.”). Importantly, this disavowal and this Court’s finding that the inventor of

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the ‘869 patent disclosed a unique process beyond a simple random number generator and look-

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1

up table applies to the subsequent patents as well. Raytek Corp., 334 F.3d at 1333 (noting that

2

“prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent

3

applications”).

4

Konami also argues that general “processor”-type terms have been held to constitute

5

sufficient structure to support a claim. In Cox Communication, the Federal Circuit reviewed a

6

claim for invalidity where the parties had stipulated that means-plus-function analysis did not

7

apply. The Court found that “processing system” did not render the claim indefinite. However, in

8

so doing the court emphasized that the novelty protected by the patent consisted of the “method”

9

and “steps of these methods, not with the machine that performs them.” Cox Communication, 838

10

F.3d at 1229. Moreover, “the specification provides certain algorithmic details.” Id. at 1233.

11

Konami’s reliance on Cox is misguided, particularly where the Federal Circuit has made clear that

12

invalidity applies to a claim in its entirety, and a vague term will not necessarily invalidate a claim

13

where that term is not relevant to the novelty that is the protected invention, and where the term is

14

clarified by the specification. See id. at 1233. Here, however, the inventor claimed a specific

15

process for virtually spinning a notional non-visible inner reel, yet he never actually disclosed the

16

process or algorithm for this selection process—a process which is central to the alleged novelty

17

of the invention.

18

Even if the virtual spinning of a notional non-visible inner reel was construed as nothing

19

more than use of a random number generator and a look-up table, this would still not provide

20

sufficient guidance to one of ordinary skill in the art to understand the associated structure for the

21

patented slot game. As noted previously, the patents would need to further disclose some form of

22

flowchart or algorithm beyond simply describing the outcome displayed on the visible digital reels.

23

The Court finds, based upon the evidence adduced in this case, that the mere disclosure of the use

24

of a random number generator does not itself disclose a particular structure, as the random number

25

generator must itself be programmed or chosen based upon how it will be used by the algorithm

26

or flowcharts for the slot game.

27

Konami’s illustrative reference to the ‘955 patent’s “steps” in terms of when symbols are

28

selected is unpersuasive as to structure. The patents do not disclose sufficient structure describing

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how the symbol selected by the “inner reel” is populated into the “outer reel.” It says nothing about

2

how the technology used for the “outer reels”—possibly templates defining the reels, along with

3

random number generation and look-up tables to determine stopping positions, though this too, is

4

undefined—would interact with or incorporate the “inner reel,” such that the consecutive runs are

5

filled with the repeated symbol selected by the inner reel. The patents do not disclose how the

6

standard technology for the outer reels may or may not be modified in some way in order to

7

incorporate the symbol selected by the inner reel. The asserted claims and specifications provide

8

scant information at all about how the inner and outer reels relate, and how they must be modified

9

in order for one to be used to “populate” the other. Merely using the word “populate” is not

10

sufficient, particularly where the patent does not disclose any details as to the technology

11

supporting the remainder of the machine, including any detail as to the templates, random number

12

generators, and look-up tables that may support the “spinning” of the “outer,” or visible reels. Even

13

if one of ordinary skill could figure out how to perform this function, the proper inquiry is whether

14

one of ordinary skill “would have understood that disclosure [of the patent] to encompass software

15

to perform the function and been able to implement such a program.” Aristocrat, 521 F.3d at 1337.

16

“[I]t is not proper to look to the knowledge of one skilled in the art apart from and unconnected to

17

the disclosure of the patent.” Id. (internal quotation marks omitted).

18

Furthermore, the Court finds that the figures and drawings in the patents not only provide

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26
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28

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1

insufficient illustrative structure but they actually render the asserted claims and specification more

2

confusing and difficult to discern for one of ordinary skill in the art. For example, unlike the

3

depictions of the repeated symbol disclosed in the prior art in the Marks, figure 1 in the ‘869 patent

4

(and other patents) does not actually depict a consecutive run of an identical symbol on one

5

simulated reel.

6
7

[Fig. 3C – Marks – U.S. Patent Application Publication – US 2004/0058727]

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9
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12
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14
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18
19

[Fig. 1 – U.S. Patent No. – US 8,096,869 B2]

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21

The ‘869 patent allegedly discloses in Figure 2 a “schematic representation of the elements and

22

symbols of portions of the first or left-most rotatable reel of FIG. 1”, but the reel appears to be

23

displayed horizontally and does not correspond to the numbering or stop positions in Figure 1 or

24

the symbols actually displayed in Figure 1. As Konami acknowledged at the hearing in this case,

25

these two figures present a confusing and inchoate disclosure of underlying structure associated

26

with the patents in this case.

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28

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1
2
3
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7
8
9

[Fig. 2 – U.S. Patent No. – US 8,096,869 B2]

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11

Figure 3 of the ‘869 patent dislcoses no further guidance as to a flowchart or algorithm to

12

one of ordinary skill in the art. While it purports to disclose “a schematic representation of an

13

‘inner reel’ or look-up table”, the disclosure is inadequate and incomplete to establish the details

14

of flowchart or algorithm to program the slot machine game. Unlike the reel strip layout Konami

15

presented at the hearing in this case, Figure 3 does not disclose sufficient detail about the full range

16

of symbol positions including the consecutive run of symbols and the process of their random

17

selection along with that of the remaining symbols for the reel positions.

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[Fig. 3 – U.S. Patent No. – US 8,096,869 B2]

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2
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7
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9
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14

[Konami Hearing Exhibit – Reel

15

Strip Layout]

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17

The Court finds based upon the expert testimony and evidence presented at the hearing that the

18

figures disclosed in the ‘869 patent (which are similarly disclosed in the subsequent patents) would

19

not indicate to one of ordinary skill in the art sufficient structure for the functions disclosed in the

20

patents.

21
22

ABSTRACT IDEA

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High 5 argues that the claims are invalid as abstract under 35 U.S.C. § 101.

24
25
26

C. Legal Standard
A defendant must prove invalidity by clear and convincing evidence. See Microsoft Corp.
v. 141 Ltd. Partnership, 564 U.S. 91, 95 (2011).

27

“In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012),

28

[the Supreme Court] set forth a framework for distinguishing patents that claim laws of nature,

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1

natural phenomena, and abstract ideas from those that claim patent-eligible applications of those

2

concepts. First, we determine whether the claims at issue are directed to one of those patent-

3

ineligible concepts. If so, we then ask, what else is there in the claims before us? To answer that

4

question, we consider the elements of each claim both individually and as an ordered combination

5

to determine whether the additional elements transform the nature of the claim into a patent-

6

eligible application. We have described step two of this analysis as a search for an inventive

7

concept—i.e., an element or combination of elements that is sufficient to ensure that the patent in

8

practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice Corp

9

Pty. Ltd. v. CLS Bank Inter., 134 S. Ct. 2347, 2355 (2014). In Alice Corp Pty. Ltd., the Supreme

10

Court reviewed patents held ineligible as abstract. These included an algorithm for converting

11

binary-coded decimal numerals into pure binary form, Gottschalk v. Benson, 409 U.S. 63, 71-72

12

(1972); a mathematical formula for computing “alarm limits” in a catalytic conversion process,

13

Parker v. Flook, 438 U.S. 584, 594-94 (1978); a method for hedging against financial risk of price

14

fluctuation, Bilski v. Kappos, 561 U.S. 593 (2010); a “blackjack variation,” with standard playing

15

cards, laying out discrete rules and a step-by-step process for the dealer to follow, In re Smith, 815

16

F.3d 816, 817-18 (Fed. Cir. 2016); and claims “adding conventional computer components to

17

well-known business practices.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir.

18

2016).

19

In Enfish, the Court reviewed patents falling into the final category: “[T]he claims at issue

20

in Alice and Versata can readily be understood as simply adding conventional computer

21

components to well-known business practices. See Alice, 134 S. Ct. at 2358–60; Versata Dev.

22

Grp., 793 F.3d at 1333–34 (computer performed “purely conventional” steps to carry out claims

23

directed to the “abstract idea of determining a price using organization and product group

24

hierarchies”); see also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,

25

1324–25 (Fed. Cir. 2016) (claims attaching generic computer components to perform “anonymous

26

loan shopping” not patent eligible); Intellectual Ventures I LLC v. Capital One Bank (USA), 792

27

F.3d 1363, 1367–69 (Fed. Cir. 2015) (claims adding generic computer components to financial

28

budgeting); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714–17 (Fed. Cir. 2014) (claims

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1

applying an exchange of advertising for copyrighted content to the Internet); buySAFE, Inc. v.

2

Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (claims adding generic computer

3

functionality to the formation of guaranteed contractual relationships.” Enfish, LLC v. Microsfot

4

Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016).

5

In In re TLI Communications LLC Patent Litigation, the Federal Circuit explained that

6

“generalized steps to be performed on a computer using conventional computer activity” are not

7

“directed to an improvement in the functioning of a computer” and as such are “directed to an

8

abstract idea.” 823 F.3d 607, 612 (Fed Cir. 2016). The TLI Court determined that “the claims here

9

are not directed to a specific improvement to computer functionality. Rather, they are directed to

10

the use of conventional or generic technology in a nascent but well-known environment, without

11

any claim that the invention reflects an inventive solution to any problem presented by combining

12

the two.” Id. In rejecting the subject patent in step two of the analysis, the Court noted that “[i]t is

13

well-settled that mere recitation of concrete, tangible components is insufficient to confer patent

14

eligibility to an otherwise abstract idea. Rather, the components must involve more than

15

performance of well-understood, routine, conventional activities previously known to the

16

industry.” Id. at 613 (internal citations and quotation marks omitted).

17
D. Discussion

18

The Court finds that Konami’s (i.e. the original inventor’s) patents’ claims individually

19
20

and collectively are invalid for abstractness.

21

High 5 argues that the claims at issue here are directed towards what are essentially game

22

rules, albeit in the context of a computerized “game,” and that pursuant to In re Smith, and In re

23

TLI Communications LLC Patent Litigation, the abstract concept of the manner in which the

24

“game” is played or depicted, or the arrangement of the symbols in the course of the game, is not

25

patentable, even if it is executed through the use of various technological components, generically

26

recited.

27

Konami, emphasizing the burden of proof, argues that “[t]he Konami claims cover a

28

gaming machine that displays virtual reels having sections of identical, repeating symbols

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1

separated by sections of non-identical and thus non-repeating symbols, so that the displayed

2

sections of repeating symbols heighten player anticipation of a potential win. The Court here

3

should determine that the claimed solution overcomes a problem recognized in the industry in

4

which ‘machines and games therefore that offer novel and stimulating variations . . . are eagerly

5

sought.’”

6

Konami further argues that, even if the claims are deemed to recite generic computer

7

system components that are not in themselves inventive, the Court should find the “ordered

8

combination” of the limitations, comprising a game in which “as the simulated rotatable reel

9

rotates, consecutive string of the identical symbol . . . is sequentially displayed,” to be sufficient.

10

Konami notes that in In re Smith, the Court posited in dicta that a novel game employing an

11

original deck of cards might be patentable. Konami asserts that their patents are equivalent to a

12

new deck of cards; they cover a new and original virtual reel for a slot machine. “In gaming systems

13

prior to this invention, reels did not exhibit identical symbols in consecutive positions, nor where

14

symbols on the reel randomly selected to change from game to game... While some of the

15

individual computer hardware components may be conventional, the limitations defining this

16

inventive concept all depend on the unconventional configuration recited in the claims.”

17

Pursuant to Alice Corp., the Court first asks whether the patents are directed toward a

18

patent-ineligible concept, such as an abstract idea. The Court finds that the patents at issue in this

19

case are directed toward a patent-ineligible concept regarding “rules of a game,” i.e. slot machine

20

game rules. High 5’s analogy to game rules is compelling. As laid out above, the patents recite

21

essentially generic computing components, within the pre-existing framework of the “game” of a

22

slot machine. These components perform the functions of what may be described as an aesthetic

23

variation on a play of the game—the game is played such that the reels display consecutive runs

24

of the same symbol. As explained here previously in significant detail, the primary focus of the

25

patents, as acknowledged even by Konami, is displaying a consecutive run of a randomly selected

26

identical symbol in one reel of the simulated digital reels in each iteration of a game as a means of

27

increasing interest in the game and “increasing probability of a winning outcome.” As the Federal

28

Circuit found in In re Smith, claims directed to new game rules or variations of a game are directed

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1

to an abstract patent-ineligible concept. 815 F.3d at 818. The Court thus finds that the four patents

2

at issue in this case are directed to altering the rules of the game regarding slot games and are thus

3

directed to a patent-ineligible concept.

4

This Court’s inquiry does not end with a finding that the patents are directed toward a

5

patent-ineligible concept. As Konami points out, the Court in In re Smith provided the explicit

6

caveat that the invention of a “game using a new or original deck of cards” could potentially

7

survive the second-step inquiry under Alice. In re Smith, 815 F.3d at 817-18. These patents may

8

overcome a finding of invalidity for abstractness if they nonetheless disclose an “inventive concept

9

sufficient to transform the claimed abstract idea into a patent-eligible” invention. Id. at 819.

10

The Court does not find that the claims here individually, collectively, or in ordered

11

combination disclose an “inventive concept” as explained in In re Smith. The reasoning in that

12

case is equally applicable to the facts of this case. The Court rejects Konami’s argument that the

13

ordered combination of claims results in an inventive concept by virtue of the unique display or

14

configuration of symbols on the simulated reels. While the claims at issue here may disclose a

15

different configuration of the displayed symbols in a slot machine game, they do not disclose a

16

new game or a new technology directed to the slot game. The claims both individually and in an

17

ordered combination disclose “purely conventional steps to an abstract idea.” Id. Selecting an

18

identical symbol for a consecutive run of symbols in one simulated digital reel, at least as disclosed

19

in the asserted claims here, does not represent a new form of selection or derive from a new

20

technology associated with slot games. This selection process, as conceded by Konami, relies upon

21

the use of random number generators and look-up tables. While these technological components

22

require programming, as the examiner noted in his initial rejection of the patent application, the

23

patents’ use of these components does not represent a nonobvious ordered combination.

24

Moreover, the Court does not agree that the mere configuration of a consecutive run of

25

symbols in one simulated reel represents something more than changing the rules of the game. A

26

generic slot game, as noted by experts in this case, has ever changing symbols selected at random.

27

Realigning and altering the display of symbols on simulated spinning reels is the very essence of

28

the generic slot game. Changing how often a symbol appears and where it appears in a slot game

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1

without more is simply altering the manner of display of random symbols – i.e. changing the rules

2

of the game. Changes to game rules of a generic slot machine using conventional technology are

3

not patentable.

4

Ironically, the claims fail this second step inquiry in part for the same reasons that they

5

failed the means-plus-function analysis. Specifically, the parent ‘869 patent was allowed inter alia

6

because it disclosed an alleged unique method of random selection – virtual spinning of a notional

7

non-visible inner reel. However, a review of the specification and asserted claims indicates that

8

the inventor never actually provided the structure or programming for this process. Consequently,

9

Konami cannot establish that this selection process represents an inventive concept or new

10

technology (or selection process) directed to a generic slot game.

11
12

V.

CONCLUSION

13

IT IS ORDERED that High 5 Games’ Motion for Summary Judgment, ECF No. 92, is

14

GRANTED. The Clerk of Court is directed to enter judgment in favor of Defendant and

15

Counterclaimant High 5 Games, LLC on all asserted claims. All other motions are denied without

16

prejudice as moot. The Clerk of Court is instructed to close this case.

17
18

DATED this 21st day of February, 2018.

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20

__________________________________
RICHARD F. BOULWARE, II
UNITED STATES DISTRICT JUDGE

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