PTT, LLC v. GIMMIE GAMES et al
Filing
425
ORDER & OPINION OF THE SPECIAL MASTER; After considering the submissions of the parties, based upon the following, it is the opinion of the Special Master that HSGs motion is GRANTED; etc. Signed by Special Master Dennis M. Cavanaugh, U.S.D.J.(Ret) on 4/5/2019. (sms)
UNFED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
HIGHS GAMES, LLC, a Delaware Limited
Liability Company, f/k/a PTT, LLC,
Case No.: 2:1 3-CV-071 6 1-JMV-MF
Plaintiff/Counterclaim Defendant,
vs.
F
DANIEL MARKS, an individual; JOSEPH
MASCJ, an individual; BRIAN KAVANAGH,
an individual; MARKS STUDIOS, LLC, an
entity dib/a GIMME GAMES; ARISTOCRAT
TECHNOLOGIES, INC., an entity;
ARISTOCRAT TECHNOLOGIES
AUSTRALIA FEY LIMITED, an entity;
ARISTOCRAT LEISURE LIMITED, an
entity; PRODUCT MADNESS, INC., an
entity; GRANT BOLLING, an individual;
JORN SMITH(s) 1-7; and XYZ COMPANIES
1-7,
ORDER & OPINION OF TUE SPECIAL
MASTER
Defendants/Counterclaim Plaintiffs.
This matter comes before the Special Master upon Plaintiff High 5 Games, LLC’s
(“HSG”) motion to compel
discovery of technical
information relating to accused
insn-umentaliffes from defendants Daniel Marks, Joseph Masci, Brain Kavanagh, Grant Boiling,
Marks Studios, LLC (“Marks Studios”), Aristocrat Technologies, the. (“ATI”), Aristocrat
Technologies Austrnlia Pty Ltd. (“ATA”), Aristocrat Leisure Limited (“ALL”), and Product
Madness,
Inc.
(“Product Madness”)(colleetively, “Defendants”).
After considering the
submissions of the parties, based upon the following, it is the opinion of the Special Master that
HSG’s motion is GRANTED.
DISCUSSION
1. 8aekround
This is a trade secret misappropriations and patent infringement case. On November 26,
2013, H5G filed its initial Complaint alleging trademark inflingement, unfair competition, and
breach of contract. H5G asserted that Marks, Masci, and Kavanagh breached their contractual
obligations to H5G by utilizing H5G’s confidential, proprietary, and trade secret information
relating to its “Super Symbols” and “Super Stacks” games. H5G further alleged that Gimmie,
Marks, Masci, and Kavanagh used H5G’s confidential information relating to the Super Symbol
and Super Stacks games and then unfairly competed with H5G by creating, marketing, and
selling games to companies in the gaming industry, including Aristocrat, under the “Mega
Symbols” and “Max Stacks” names.
On July 1, 2014, H5G filed its First Amended Complaint, which added a patent
infringement claim against Aristocrat, claiming infringement of U.S Patent No. 8,734,223 (the
“‘223 patent”). The ‘223 patent was issued on May 27, 2014, and covers H5G’s “Super
Symbols” feature.
On January 24, 2017, H5G was granted leave to file its Second Amended Complaint
(“SAC”), which was based on the production of 500,000 documents in October, 2016. This
amendment added certain trade secret misappropriation and unfair competition claims, as well as
patent infringement claims relating to a second patent, U.S Patent No. 9,022,852 (the “852
patent”). The ‘852 patent covers H5G’s “Super Stacks” feature.
H5G now asserts that while it has long accused dozens of games of infringement, during
discovery it learned that Aristocrat offers other games (the “Undisclosed Games”) that also
incorporate the accused features that had not been previously disclosed by Defendants. By
2
correspondence dated April 30, 2018, H5G informed Defendants that it had become aware that
Defendants own, operate, license, andlor sell games with infringing features that had not been
disclosed in Defendants’ discovery responses. H5G then provided Defendants with a list of 87
Undisclosed Games that it believed appeared to include the infringing features.
On May 9, 2018, United States Magistrate Judge Mark Falk granted H5G’s motion for
leave to file a Third Amended Complaint (“TAC”).’ The TAC added new parties that are related
to defendant Aristocrat. On May 29, 2018, H5G sewed additional interrogatodes and requests
for production. The requests sought identification of all of Defendants’ games containing the
accused features. H5G also requested technical information related to the Undisclosed Games.
On July 10, 2018, H5G served similar discovery requests on the TAC Defendants. Defendants
objected to H5G’s discovery requests as beyond the scope of the litigation. The parties then
exchanged several correspondences.
Following this exchange, the parties submitted papers to the Special Master regarding
H5G’s request to serve Infringement Contentions based on the TAC and whether the new TAC
Defendants had to participate in discovery pending the District Court’s decision on Defendants’
appeal. On September 14, 2018, the Special Master denied Defendants’ request for a stay as to
Infringement Contentions and discovery with respect to the new TAC Defendants and ordered
Plaintiff to serve Infringement Contentions pursuant to Local Patent Rules 3.1 and 3.2,
Thereafter, on October 8, 2018, N5G served its Infringement Contentions on the TAC
Defendants and on October 9, 2018, filed a motion to amend its infringement contentions against
On January 4,2019, United States District Judge John Michael Vazquez affirmed Judge Falk’s May 9,2018,
Opinion and Order granting Plaintiffs motion for leave to amend.
3
the SAC Defendants. H5G maintains that it accused the Undisclosed Gaines of infringement in
these Infringement Contentions.
The parties appeared for a status conference before the Special Master on November 6,
2018. At the conference, the Special Master instructed Defendants to produce their outstanding
discovery within 30 days. On December 6, 2018, Defendants produced additional discovery.
However, H5G alleges that this production failed to include discovery relating to nearly all of the
Undisclosed Games.
On or about February 8, 2019, H5G filed a motion to compel discovery of technical
information relating to accused instrumentalities with thc Special Master. H5G seeks an order
compelling Defendants to provide complete responses to all intenogatories and requests for
production, including source code, related to the Undisclosed Games.
II. Arguments of the Parties
High 5 Garnes’Arguments
According to HSG, it has long maintained that ccrtain of Defendants’ games that use
repeated symbols organized in a stack and games that use certain oversized symbols infringe
H5G’s patents. H5G explains that those games were initially branded with Defendants’ “Max
Stacks” or “Mega Symbol” trademarks. However, H5G alleges that during discovery it learned
that Defendants had only identified a portion of the gamcs that incorporaled the features accused
of infringement. H5G explains that in or around April 2018, an H5G employee played one of
Defendants’ games that contained H5G’s Super Stacks game feature but did not bear
Defendants’ “Max Stacks” trademark. Thereafter, H5G performed due diligence in attempting to
identify additional games. H5G then requested that Defendants supplement their interrogatory
4
responses to identify missing games. Defendants responded that the Undisclosed Games were
beyond the scope of H5G’s discovery requests.
KSG argues that the Undisclosed Games are clearly within the scope of the TAC and
would also have been within the scope of the SAC. According to H5G, neither the TAC nor SAC
limited the infringement allegations to games marketed under the “Max Stacks” and “Mega
Symbols” trade name. HSG asserts that it would be nonsensical that HSG’s infringement
allegations would be limited to games with trade names chosen by Defendants. H5G argues that
nothing should preclude H5G from obtaining discovery on Defendants’ potentially infringing
games, especially when the Complaint already contemplates that Defendants may market these
games differently. H5G maintains that it is the operation of an accused product that determines
infringement, not the trademark that a defendant chooses.
H5G also argues that Defendants have violated the Local Patent Rules by not producing
documents relating to the Undisclosed Games. H5G maintains that despite sewing infringement
contentions identifying the Undisclosed Games, Defendants still refuse to provide the requested
discovery in violation of Local Patent Rule 3.4. H5G explains that with respect to the ‘223
patent, HSG provided representative charts showing how certain of the Defendants’ oversized
symbol games infringed. The Undisclosed Games include this same feature and H5G identified
those games as infringing. Similarly, with respect to the ‘852 patent, H5G argues that it
submitted over 60 charts showing how Defendants’ games used a replacement schema to
implement the accused stacking feature. H5G also produced an additional representative chart,
discussing how the Undisclosed Games all include a similar stacking feature. H50 maintains that
it has provided detailed analysis showing the similarities of the games, yet Defendants have
5
provided no explanation why this voluminous analysis is not sufficient to put them on notice of
how the accused features infringe the asserted patents.
In addition, 1150 points to Aristocrat Techs. v. fm’s Game Tech, No. 5:06-cv-3717, 2009
WL 3573327, at •5 (N.D. Ca. Oct. 30, 2009), to assert that in a similar case—one in which
Defendants in this action were the plaintiffs—the District Court granted discovery on products
that “have the same or substantially similar features as the accused products.” Here, H5G argues
that there is no debate that the Undisclosed Games share substantially similar features to those
that were afready accused of infringement. According to H5G, all the games at issue are slot
machine-typc games. With respect to the ‘233 patent, both the accused and Undisclosed Games
include similar infringing over-sized symbols, which is a significant aspect in whether the games
infringe the ‘223 patent. Similarly, H5G argues that with respect to the ‘852 patent, the accused
and Undisclosed Gamcs each include stacks of symbols. H5G argues that analysis of source code
from some of Defendants’ games shows that Defendants used infringing replacement schemas to
create the stacks feature. l-15G asserts that based upon publicly available information,
information and belief, it appears that the Undisclosed Games operate similarly and infringe.
H5G thrther argues that Defendants were required to produce the requested documents in
response to the Special Master’s directive at the parties’ November 6, 2018, status conference.
1150 points out that Defendants did not file an appeal of this directive.
Finally, H5G argues that the Undisclosed Games are relevant to H5G’s trade secret and
misappropriation claims. H5G argues that documents produced in discovery show that the
misappropriation of H5G’s trade secrets permeates to other of Defendants’ entities. According to
1150, Defendants’ discovery shows that Mr. Boiling and Mr. Marks, both former 1150
employees, retained possession of 1150 trade secret material when they left 1150. 1150 believes
6
that these misappropriated trade secrets were then used to create games for Aristocrat. H5G
argues that it cannot bow the full extent of Defendants’ use or dissemination of its trade secrets
without further discovery of the Undisclosed Games.
Defendants Arguments
Defendants argue that the Undisclosed Games are not within the scope of the TAC.
Defendants maintain that the TAC, like all three prior pleadings, only accuses the Max Stacks
and Mega Symbols games, which were designed by Marks Studios, of infringement and trade
secret misappropriation. Therefore, Defendants assert that because no Aristocrat entity was a
party in 2013 when the original complaint was filed, it is logically and legally hnpossible that the
definition of Max Stacks and Mega Symbols games could retroactively be redefined to include
any games other than the Max Stacks and Mega Symbols games designed by Marks Studios.
Defendants argue that H5G’s original discovery requests were likewise limited to Max Stacks
and Mega Symbols games until H5G recently redefined the scope of the case. Defendants
believe that nothing until now has given them any notice that the Complaint was meant to
include any accused games other than the Max Stacks and Mega Symbols games.
According to Defendants, the TAC identified the games allegedly infringing the ‘852
patent as “games marketed under the name or trademark ‘Max Stacks’ and also other infringing
games that may he marketed under a different name or trademark.” The TAC identified the
games allegedly infringing the ‘233 patent as “games marketed under the name or trademark
‘Mega Symbols’ and also other infringing games that may be marketed under a different name or
trademark.” Defendants argue that the phrase “and also other infringing games that may be
marketed under a different name or trademark” is a catchall, which did not give Defendants
notice that any games other than the specified Max Stacks and Mega Symbols games were at
7
issue. Defendants believe that H5G’s own conduct in recently redefining its discovery requests
confirm that this was never its own understanding of the case either. Defendants argue that such
stealth pleading obviates the pleading requirements of Jqbal and Twombly. Defendants maintain
that if N5G wished to add new games to its pleadings, it easily could have done so when it filed
its First, Second, or Third Amended Complaints. Defendants argue that allowing H5G to take
discovery or pursue claims concerning products outside the scope of the Complaint not only
would double the scope of the case to include the new individuals and methods unrelated to those
involved in creating the Max Stacks and Mega Symbols games, it compounds the problem that
serious jurisdiction and or venue issues exist for the corporate defendants.
Second, Defendants argue that the Local Patent Rules do not require production of
documents for non-accused games. Defendants argue that Local Patent Rule 3.4 only requires
Defendants to produce “documentation sufficient to show operation, composition, or structure of
any aspects or elements of an Accused instrumentality identified by the party asserting patent
infringement in its L. Pat. R. 3.2(c) chart.” Plaintiff argues that Local Patent Rule 3.1(c) requires
a plaintiff to provide a “chart identifying specifically where each limitation of each asserted
claim is found within each Accused Instrumentality..
.“
Defendants point to Drone Techy., Inc. v.
Parrot S.A., 838 F.3d 1283 (Fed. Cir. 2016), to argue that because 1-150 did not include the
Undisclosed Games in its Local Patent Rule 3.1(c) chart, Local Patent Rule 3.4 plainly fails to
provide a basis to require Defendants to produce documentation concerning the Undisclosed
Games. Defendants further argue that not only has H5G failed to chart the Undisclosed Games
for which it seeks discovery, it withdrew its contentions concerning the supposedly exemplary
games.
S
With respect to the ‘852 Supplemental Contentions, H5G identified 116 games: 54 Max
Stacks and 62 other stacked symbol games. However, Defendants argue the ‘852 Supplemental
Contentions only include 55 claim charts. Defendants argue that apart from the “representative
chart,” each chart pertains to the Max Stacks games. With respect to the other 62 games, H5G
included a single exemplary chart, proving only boilerplate language that is void of any actual
analysis. Defendants believe the claim chart only offers unsupported conclusoiy statements that
the games “operate in the same relevant fashion.”
With respect to the ‘223 Supplemental Contentions, Defendants argue that H5G accuses
all Mega Symbols games along with any of Defendants’ games that contain an oversized symbol
of infringement. According to Defendants, the ‘223 Supplemental Contentions identify 27
games: 13 of the games are Mega Symbols Games and 14 are other oversized symbol games.
However, Defendants assert that the ‘223 Supplemental Contentions only include claim charts
for two of the accused games. H5G asserts that these two games are exemplary of all other
accused games. Defendants argue that the ‘223 Supplemental Contentions contain no explanation
as to why either of these games is exemplary or representative of the non-Mega Symbols games.
Third, Defendants argue that to authorize discovery, there still must be a showing that the
non-accused products are “reasonably similar.” Defendants argue that even if Drone were not
followed, courts have only permitted the type of discovery sought if the non-accused products
are reasonably similar to the accused products and there is a nexus between this similarity and
the asserted patent. Defendants assert that H5G’s soie argument is that the Undisclosed Games
contain stacked symbols. However, H5G has never explained how the existence of stacked
symbols in a game is in any way related to the claims of the ‘852 patent. Defendants further
argue that H5G has never explained how cach of the Undisclosed Games that contain oversized
9
symbols meet the other limitations of claims of the ‘223 patent. Defendants argue that the mere
fact that a game has oversized symbols cannot be a basis for an accusation of infringement.
Defendants also argue that H5G has failed to show that it used all publicly available
information in its Supplemental Contentions. Defendants maintain that H5G and its witnesses
have repeatedly admitted that a user would be able to detect the difference between games that
use the claims of the ‘852 patent and ‘223 patent, and ones that do not. Accordingly, Defendants
argue that HSG cannot in good faith argue that it needs confidential documents to determine
whether it has a basis to accuse a game of infringement.
Fourth, Defendants argue that 1150’s trade secret allegations do not justi’ discovery on
the Undisclosed Games. Defendants explain that the two alleged trade secrets at issue in this
litigation are the Super Stacks and Super Symbols. According to Defendants, the Super Stacks
trade secret is an implementation of the ‘852 patent and the Super Symbols trade secret is
identical to the ‘223 patent. Thus Defendants argue the trade secret allegations have no
talismanic significance to justify discovery of the Undisclosed Games.
Finally, Defendants argue that they have not violated the Special Master’s prior orders or
directives.
Defendants assert that on November 14, 2018, they produced documents in
accordance with Local Patent Rule 3.4(a). Defendants argue that they also produced the email
production as directed on Dcccmber 6, and II, 2018. Accordingly, Defendants argue they have
produced thc required documents.
High 5 Games’Reply Arguments
H5G retorts that it specifically identified the Undisclosed Games by name to Defendants
almost 10 months ago, provided discovery requests directed to the Undisclosed Games, and
identified the Undisclosed Games in its Local Patent Contentions. H5G points to Hologram USA,
10
Inc. v. Pulse Evolution Corp., No. 2:14-CV-0772-GMN-NJ}ç 2015 WL 13238450, at *1 (D.
Nev. Dec. 18, 2015) and argues that Defendants have been on notice regarding the Undisclosed
Games since April 2018, and that H5G has provided a flail explanation as to how the Undisclosed
Games are reasonably similar to those accused in its Infringement Contentions.
H5G further argues that it is not just seeking Defendants’ games that contain stacked
symbols and oversized symbols. H50 asserts that its motion explicitly states that analysis of
source code from Defendants’ games shows that Defendants use infringing replacement schemas
to create the stacks feature. H5G argues that this description links H5G’s allegations with its
intellectual property. In other words, it is not just that the game has stack features, but how the
game implements the stack feature—by way of both the asserted ‘852 patent as well as H5G’s
Super Stack trade secret. H5G further argues that the Undisclosed Games meet the asserted claim
elements of the ‘223 patent, which Defendants did not rebut in their opposition.
H5G also maintains that the Undisclosed Games are reasonably similar to other accused
products and that a nexus exists. H5G alleges that it provided an explanation of this in its
Infringement Contentions. H5G asserts that its Infringement Contentions demonstrate that it will
need Defendants’ confidential and proprietary combination sheets and source code to establish
infringement.
Additionally, H5G retorts that Defendants’ assertion, that the trade secrets at issue are
within the scope of the patent infringement claims, is incorrect. H5G argues that it is thus entitled
to discovery showing the extent to which Marks Studios shored its trade secrets with Aristocrat
and whether Aristocrat used those trade secrets in the Undisclosed Games.
11
Opinion
Under Rule 26 of the Federal Rules of Civil Procedure, “[p]arties may obtain discovery
regarding any nonpdvilcged matter that is relevant to any party’s claim or defense and
proportional to the needs of the case.” See Fed. R. Civ. P. 26(b)(1). While discovery is broadly
available, it is not unlimited, Sec ii The court must balance the relevance and necessity of the
requested discovery with the potential hardship that might be incurred in producing it. See
Thsswal Sys. Corp. v. Hydro-Air Eng’g, 813 F.2d 1207, 1210 (Fed. Cir. 1987); Micro Motion,
Inc. v. Kane Steel Co., 894 F.2d 1318, 1323 (Fed. Cir. 1990). Discovery is “designed to assist a
party to prove a claim it reasonably believes to be viable without discovery, not to find out if it
has any basis for a claim.” See Micro Motion inc., 894 F.2d at 1327.
A detennination of relevance implicates substantive patent law and therefore the court
must look to Federal Circuit law rather than regional circuit law in determining relevance. Micro
Motion, Inc. v. Kane Steel Co., Inc., 894 F.2d 1318, 1326 n.8 (Fed. Cir. 1990) (citing to Truswal
Sys. Corp. v. Hydro—Air Eng’g, inc., 813 F.2d 1207, 1211—12 (Fed. Cir. 1987)). In Hologram
USA, Inc. v. Pulse Evolution Corp., No. 2I4CVOO772GMNNJK, 2016 WL 3353935, at *3
Qa.
Nev. June 10, 2016), the court explained that in patent cases, two prominent methods have arisen
for determining the relevancy of requests for discovery.
Under the first method, the scope of discovery is limited to
products specifically identified in the infringement contentions.
icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., 2014 WL
4593338, at *2_*4 (ND. Cal. 2014) (denying patentee’s motion to
compel accused infringer to produce discovery on nonaccused
models of its products and requiring patentee to amend its
infringement contentions); Meidatek, inc. v. Freescale
Semiconductor, Jnc., 2013 WL 588760, *2 & *4 (N.D. Cal. 2013)
(denying patentee’s motion to compel discovery on products of the
accused infringer that the patentee had not specifically identified in
its infringement contentions). This view is grounded in the concern
that local patent rules place the burden of specifically identif’ing
12
accused devices on the plaintiff. Infineon Tech. AG v. Volterra
Semiconductor Corp., 2012 WL 6184394, at *3 (N.D. Cal. Dec.
Il, 2012). Tt is premised on the idea that allowing overbroad
discovery would allow a patent plaintiff to “transfer the burden of
identifying accused products to the defendant” and defeat the
purpose of the local patent rules. Mediatek, Inc., 2013 WL 588760,
at *4
Under the second method, the scope of discovery is expanded to
include products reasonably similar to those accused in the
infringement contentions. Dr. Sys,, Inc. v. Fujifilm Med. Sys. USA,
Inc., 2008 WL 1734241, at *3 (S.D. Cal. Apr. 10, 2008); L(feNet
Health v. LifeCell Corp., 2014 WL 4162113, at *7 (E.D. Va. 2014)
(granting patentee’s motion to compel accused infringer to produce
discovery on nonaccused products, but limiting the scope of
products to those having a sufficient nexus to the accused
products). This approach is premised on the broad scope of Federal
Rule of Civil Procedure 26(b) and the idea that “the general
contours of a desire for broad discovery apply as much in patent
cases as in any other.” JS Products, Inc. v. Kabo Tool Co., 2012
WL 5288175, at *5 (13. Nev. Oct. 23, 2012) (citation omitted).
Underlying this view is the notion that a party may be able to
amend its contentions as it acquires information during discovery.
Honeywell Int’l Inc. v. Acer Am. Corp., 655 F. Supp. 2d 650, 655
(E.D. Tex. 2009) (citing 02 Micro Int’l Ltd. v. Monolithic Power
Sys,, mc,, 467 F.3d 1355, 1366 (Fed. Cir. 2006), which discusses
the high standard for amending infringement contentions). As a
result, “{n]o bright line rule governs whether discovery can be
obtained only for the products expressly accused in infringement
contentions.” EPOS Techs. v, Pegasus Techs., 842 F. Supp. 2d 31,
33 (D.D.C. 2012) (quoting Dr. Sys., Inc., 2008 WL 1734241, at *3
(S.D. Cal. Apr. 10, 2008) (collecting cases)). Thus, this approach
extends discovery to nonaceused products reasonably similar to the
accused instrumentalities. Id. In requesting information regarding
such devices, however, the discovering party must provide a
mechanism for the responding party to determine whether a
particular device is reasonably similar. Hologram USA, Inc. v.
Pulse Evolution Corp., 2015 U.S. Dist. LEXIS 170151, *12. (13.
Nev. Dec. 18, 2015).
In this matter, H5G served supplemental interrogatories and requests for production on
May 29, 2018. Interrogatory No. 34 requests that Defendants: “Identify each game created, sold,
marketed, or used by the SAC Defendants that includes (a) the Stacked Symbol Feature; (b) the
13
Oversized Symbol Feature; or (c) Invisible Stacks Feature and identify which games utilizes
each of those features.” The requests to produce seek a number of documents related to “every
game that includes the Stacked Symbol Feature, the Oversized Symbol Feature, or thc Invisible
Stacks Feature.” These requests thus seek identification of all of Defendants’ games containing
elements of the accused features. On July 10, 2018, H5G served similar discovery requests on
the TAC Defendants. Thereafter, on October 8, 2018, H5G sewed its Infringement Contentions
on the TAC Defendants and on October 9, 2018, filed a motion to amend its Infringement
Contentions against the SAC Defendants.
The Special Master first notes that Defendants were directed to respond to H5G’s
discovery requests at the parties’ November 6, 2018, status conference. Neither party sought
appeal of that directive. Even if the Special Master had not previously directed Defendants to
respond to these requests, the Special Master believes the 1)ndisclosed Games are within the
scope of the TAC. The Special Master agrees that the TAC does not limit infringement
allegations to games marketed under Defendants’ “Max Stacks” and “Mega Symbols” Wade
names. As H5G points out, with respect to the ‘223 Patent, the TAC alleges infringement by
Defendants with games which include “games marketed under the name or trademark ‘Mega
Symbols’ and also other infringing games that may be marketed under a different name or
trademark.” ECF No. 318 at ¶127. With respect to the ‘852 patent, the TAC alleges that the
infringing Max Stacks Games include “games marketed under the name or trademark ‘Max
Stacks’ and also other infringing games that may be marketed under a different name or
trademark.” ECF No. 318 at ¶145. Additionally, prior to the filing of the TAC, by
correspondence dated April 30, 2018, H5G informed Defendants that it had become aware of
additional games that appeared to contain the infringing features. H5G specifically listed 87
14
games in this correspondence. 1-150 subsequently served supplemental discovery requests to
obtain information related to these Undisclosed Games.
It is the opinion of the Special Master that even if the Undisclosed Games were not yet
formally accused of infringement in H5G’s Infringement Contentions when H5G served its
supplemental discovery requests in May 2018, Defendants should have responded to the
discovery requests as the Undisclosed Games share reasonably similar features and a nexus with
those games specifically accused of infringement. The Special Master is guided by the second
method described in Hologram USA, [tic. v. Pulse Evolution Corp., as the concern underlying the
first method—that the burden of specifically identifying accused devices is on the plaintiff—is
not present as H5G specifically identified the 87 Undisclosed Games which it believes contain
infringing features and for which it seeks discovery. Thus the Special Master is persuaded that
the more appropriate method in this instance is to allow discovery to include products reasonably
similar to those accused in H50’s prior Infringement Contentions. The Special Master finds
H5G’s requests appropriate as the discovery requests seek information on products using the
specific features, the Stacked Symbol feature and Oversized Symbol feature, which are the same
features 1450 alleges were infringed by Defendants in 1-150’s prior infringement Contentions.
Furthermore, the Special Master finds Drone Techs., Inc. v. Parrot S.A., 838 F.3d 1283
(Fed. Cir. 2016), inapposite to the present situation. In Drone, the defendant provided over twothousand pages of documents with its Initial Disclosure that, in its view, sufficiently
demonstrated how its accused products operate, consistent with the requirements of the local
rule. The plaintiff then filed a motion to compel seeking among other things, the defendants “on
board” source code. Following motion practice and the defendant’s continued refusal to supply
the “on board” source code, the District Court issued a contempt sanction that imposed a default
15
judgment on the defendant. The Federal Circuit reversed the contempt sanction. The Federal
Circuit found that under the circumstances, the “on-board” source code was not shown to be
necessary to comply with the document production requirements of the local patent rule as the
local rule only required producing documents that were “sufficient to show” how the accused
product operated. The Federal Circuit faulted the District Court for failing to make a finding as
to why the 2000 pages of documents produced by the accused infringer was not sufficient to
show how the accused product operated or why the source code was required to show how the
accused product operated. It also faulted the District Court for requiring production of the source
code versus making the source code available for inspection, as is typically done with source
code.
Here, H5G served specific discovery requests seeking information related to Defendants’
Undisclosed Games. Drone dealt with discovery necessary to comply with Initial Disclosures
pursuant to the Local Patent Rules. In this matter, the parties have proceeded past the initial
stages of litigation and have served specific discovery requests. Moreover, in Drone, the Federal
Circuit did not make a determination as to relevancy, and instructed that on remand, the plaintiff
would have a chance to make a showing of need and relevance for the on-board source code.
Accordingly, within 30 days of the date of this Order, Defendants are ordered to provide
the discovery of technical information relating to Defendants’ accused instrumentalities,
including the requested discovery relating to Defendants’ games utilizing the “Stacked Symbol
Feature” as defined in the Plaintiff’s discovery demands, which include; African Big 5, Tarzan,
Mariah Carey, The Game of Thrones Fire & Blood, Timber Wolf Grand, Mighty Link Zorro,
Mighty Link Ted, Outback Jack Adventures in the Bush, The Big Lebowski, Candy Land, Mr.
and Mrs. Caslunan, Tim McGraw, My Cousin Viimy, Downtown Abbey, Mystery Date, Batgirl
16
and Catwoman, Bettie Page, 5 Dragons Grand, Elvira Mistress of the Dark, Fast Cash, Batman
Rogues Gallery, Buffalo Grand, The Big Bang Theory, Good Fortune, The Walking Dead, Can
Can de Paris, Tarzan and Jane, Dragons on the Lake, Buffalo Stampede, Player’s World Classics
(Miss Kitty, Wild Panda, 50 Lions, 100 Lions), Goblins Gold, Wonder 4 Jackpots, Spin ii Grand,
Pure Gold, Pure Magic, Hit it Hot Jackpots, Dragon Bucks, Quick Fire (Panda Paradise,
Pharaoh’s Ransom, Electric Boogaloo, Golden Peach), Sugar Hit Jackpots, Gold Stacks (Golden
Prosperity, Golden Zodiac), Gold Pays (Golden Princess, Golden Festival), Wonder 4 Wonder
Wheel, Diamond Storm, Super Wheel Blast (Lions of Venice, Miss Liberty), Cash Explosion,
Jackpot Streak (Sparkling Royal, Gardcn of Amazon), Jackpot Reel Power (Lucky Pig, Sun
Tigcr, White Tiger), and Cash Fusion.
Within 30 days of the date of this Order, Defendants are also ordered to provide the
discovery of technical information relating to Defendants’ accused instrumentalities, including
the requested discovcry relating to Defendants’ games utilizing the “Oversized Symbol Feature”
as defined in the Plaintiffs discovery demands, which include: The Big Bang Theory, Cash
Explosion, Red Moon-Immortal Dawn. Red Moon-Full Eclipse, Storm Queen -Frost Queen,
Storm Queen-Sand Queen, The Walking Dead 1, The Walking Dead II, Superman The Movie,
Batman Classic TV Serics, Happy Lantern, Sahara Gold, Goddess Sisters Princess Viper,
Goddess Sisters Queen Coral, Mythos Aquatic Dreams, Mythos heavenly Pride, Mythos
Savannah Magic, Mythos Forest of Wonder, The Romance of Fire & Rain, Dream Rose, Mighty
Link Ted, and Sons of Anarchy.
Date: 4/5/19
DENNIS M. CAVANAUGH, U.S.D.J. (Ret.)
Special Master
17
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?