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From Intellectual Property Law Daily, February 23, 2018

Slot machine display claims were invalid for indefiniteness and abstractness

By Thomas Long, J.D.

Four patents disclosing a new way to display the symbols in a slot machine game were invalid for indefiniteness and for failure to state patent-eligible subject matter, the federal district court in Las Vegas has decided. The patents’ claims were focused on outcomes—how the slot machine symbols were displayed or arranged, or responded to inputs—but neither the claims nor the specifications described algorithms or other structures to indicate how these outcomes were to be carried out. Therefore, the patents’ means-plus-function claims were invalid under 35 U.S.C. §112(f). In addition, the claims were directed to variations in game rules—an abstract idea—and were implemented by generic means, making them ineligible for patent protection under 35 U.S.C. §101. The patent owner’s infringement suit against a competing casino game developer was dismissed on summary judgment (Konami Gaming, Inc. v. High 5 Games, LLC, February 22, 2018, Boulware, R.).

Patents-in-suit. Plaintiff Konami Gaming, Inc., alleged that defendant High 5 Games, LLC, infringed four patents: US Patent Nos. 8,096,869 "the ’869 patent"); 8,366,540; 8,662,810; and 8,616,955. The ’869 patent, titled "Gaming Machines with Runs of Consecutive Identical Symbols," was the parent patent of the group. The specifications of the patents were substantially similar. The patents disclosed variations on a slot gaming device in which the simulated digital "reels" depict a consecutive run of identical symbols in one reel to heighten the player’s anticipation of a winning outcome, with the identical symbol changing for each "game." High 5 moved for summary judgment, asserting that the claims at issue were invalid as indefinite under 35 U.S.C. §112 and were directed to abstract subject matter that was unpatentable under 35 U.S.C. §101.

Indefiniteness—means-plus-function. The court noted that Section 112(f) provided for "means-plus-function" claiming, which described a function or an outcome of an invention, rather than the "structure" or means of obtaining that outcome. In order to take advantage of Section 112(f) and use a generic means expression for a claim limitation, the applicant must indicate in the specification what structure constituted the means. The structure described in the specification must be clearly linked or associated with the claimed function. If an applicant does not disclose structure for a means-plus-function limitation, the claim is indefinite and invalid. For computer software, structure could be expressed through an outline of an algorithm, a flowchart, or a specific set of instructions or rules.

High 5 argued that the asserted claims were expressed in functional terms and generally spoke to outcomes—that is, how the symbols were displayed or arranged, or responded to inputs—and did not provide in the claims or the specification sufficient technological or algorithmic structure to support those functions. The court agreed that the asserted claims were means-plus-function claims, even though they did not use the word "means." The court also agreed with High 5 that the specifications disclosed various functions without disclosing or teaching a corresponding structure for the functions. The asserted claims focused almost exclusively on the output or manner of display of the symbols on the simulated rotated reels, without disclosing the underlying programming or algorithms that create the structure for the "process" of "virtually spinning" the "notional non-visible inner reel" or the "process" for random selection from a subset of symbol elements.

The court observed that the specification of the ’869 patent referred to a "game controller" that pre-selected at random, at the initiation of a game sequence, a potential win element for each reel. The patents also referred to a "game controller," "memory device," and "control module," all of which, along with the "processor," performed various functions disclosed by the claims. The specifications and asserted claims for the four patents, however, did not disclose sufficient structure to accomplish all of the functions noted, the court said. The patents did not disclose an algorithm or flowchart or customized step-by-step random selection process. Although the patents contained figures or drawings, they did not individually or collectively represent flowcharts or algorithms that could adequately serve as a basis for programming software for the computer related devices in the invention. The court pointed out that the specification of the ‘869 patent explicitly conceded that the process for selection of symbols by means of the "game controller" was "not shown" in the specification (or the claims). In addition, the related process for "populat[ing]" the symbols in the symbol positions by means of "spinning" the "inner reel" which "is in effect a look-up table" was "not displayed." These processes were not disclosed in any further detail in the descendant patents.

The court rejected Konami’s argument that "processor" and "game controller" were terms connoting adequate structure for the associated functions to individuals with ordinary skill in the art of slot machine design. Konami did not present persuasive evidence of the existence of commercial processors that could perform the identified functions associated with invention. The court found that the expert testimony and other evidence did not establish the existence of off-the-shelf commercial processors that could readily and adequately perform the claimed functions. To the contrary, the expert testimony indicated that the multiple functions and outcomes associated with the invention would require unique and specific programming based on a customized algorithm or specific flowchart (or multiple algorithms and flowcharts) to accomplish the functions. Although commercially available slot machine game design kits might perform some of the noted functions, there was no evidence that kits or other "off-the-shelf" processors could be readily and adequately programmed to perform the functions disclosed in the four patents.

Accordingly, the court concluded that the claims were invalid as indefinite under Section 112(f).

Abstract idea. The court also determined that the patents’ claims individually and collectively were invalid for abstractness under Section 101. The claims at issue were directed toward what are essentially game rules, which were patentable, even if they were executed through the use of various technological components, generically recited. The patents recited essentially generic computing components, within the pre-existing framework of the "game" of a slot machine. The four patents-in-suit were directed to altering the rules of the game regarding slot games. The Federal Circuit had held that claims directed to new game rules or variations of a game were directed to an abstract patent-ineligible concept. The claims did not contain inventive concepts rendering them patentable. They did not disclose a new game or a new technology directed to the slot game; rather, the claims both individually and in an ordered combination disclosed "purely conventional steps to an abstract idea." Therefore, the court concluded that the claims were unpatentable under Section 101.

Because the asserted claims were invalid, High 5’s motion for summary judgment was granted, and the court closed the case.

The case is No. 2:14-cv-01483-RFB-NJK.

Attorneys: Christopher Worrel (Howard & Howard Attorneys PLLC) for Konami Gaming Inc. Christopher Brett Hadley (Dart, Adamson & Donovan) for High 5 Games, LLC.

Companies: Konami Gaming Inc.; High 5 Games, LLC

MainStory: TopStory Patent NevadaNews

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