Claim Construction

Special Master’s Markman Order Upheld in Gaming System Patent Found Not Invalid as Indefinite

Epic Tech, LLC v. Pen-Tech Associates, Inc., Civil Action No. 1:20-cv-02428-VMC (N.D. Ga., Jan. 18, 2023)

Judge Victoria Calvert overruled the Defendant’s objection to a claim construction order in favor of the Special Master’s Report and Recommendation which found the Plaintiff’s gaming system patent was not invalid as indefinite.

The patent-in-suit, U.S. Patent No. 8,545,317 (“the ’317 Patent”), is generally directed to an electronic sweepstakes-style game that enables a player to play a game on one game terminal while simultaneously allowing another game to be played on the same terminal by the same player, thus allowing the player two chances to win the prize. Complaint, Civil Action No. 1:20-cv-02428-VMC, Dkt. 1 at 5 (N.D. Ga. June 5, 2020). The Plaintiff, Epic Tech, LLC, accuses Pen-Tech Associates of “actively selling its competing products (including the infringing products . . . ) to Epic Tech’s customers where Pen-Tech’s competing and infringing products sit side-by-side with Epic Tech’s products,” and of “using the knowledge and information obtained by its sister company . . . as an outsourced provider to Epic Tech, to . . . market and sell Pen-Tech’s infringing products to Epic Tech’s customers.” Id. at 4.

The Special Master’s Markman order recommended the Court interpret 12 out of the 13 disputed claims as having their “plain and ordinary meaning.” Order, Civil Action No. 1:20-cv-02428-VMC, Dkt. 54 (N.D. Ga. June 3, 2022).

During a Markman determination, “[i]n construing claims, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point out and distinctly claim the subject matter which the patentee regards as his invention.’ ”

Interaction Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001).

Pen-Tech objected to the Special Master’s claim construction on three grounds. First, the Defendant asserts the Report erroneously omitted, misstated, or conflated facts related to the term “play of” a game that would have supported a finding of indefiniteness. Second, the Defendant asserts the Report’s finding on a “bonus time period” is indefinite as a matter of law. And, finally the Defendant asserts the Report is contrary to the law due to inconsistencies. Motion, Civil Action No. 1:20-cv-02428-VMC, Dkt. 55 at 1-2 (N.D. Ga. June 24, 2022).

Nonetheless, the Court sided with the Special Master. First, the Court agreed with the Special Master’s conclusion that “play a game” is not indefinite because a POSITA would know how to differentiate the meaning. Order, Civil Action No. 1:20-cv-02428-VMC, Dkt. 62 at 5 (N.D. Ga. Jan. 18, 2023). Next, the Court agreed with the Special Master’s conclusion that, “‘play a game’ cannot be limited to ‘start a game’ because ‘[i]mporting a limitation from the specification into Claims 1 and 18 is fraught with “danger” and is generally not permitted, absent a clear disclosure that the patentee intended the claim to be limited as shown.’” Id. And, agreeing that the questioned term is not indefinite for lack of an antecedent, the Count found “no basis to conclude that ‘the first game’ could be the ‘electronic game’ from the preamble, or . . . the ‘game’ from step a, [so] the term is afforded its plain and ordinary meaning.” Id. at 6-7.

The patent having survived Pen-Tech’s § 112 challenge, the parties will now proceed with discovery and adjudication of Epic Tech’s claims of infringement.

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