Konami Gaming, Inc. v. Marks Studios, LLC

KONAMI GAMING, Inc., a Nevada corporation, Plaintiff v. MARKS STUDIOS, LLC d/b/a Gimmie Games, a Georgia limited liability company, Defendant.

2:14-cv-01485-JAD-CWH

UNITED STATES DISTRICT COURT DISTRICT OF NEVADA

July 25, 2017

Claim-Construction Order

This is a patent-infringement suit over digital slot machines. Konami Gaming, Inc. patented a game design that added a new twist: instead of the player watching a random assortment of symbols spin by on the slot's reels, Konami's design displays large clusters of identical symbols to the player. Konami contends that some of Marks Studios, LLC's games incorporate Konami's patented design, so it sues Marks for infringing four patents. In addition to disagreeing about how several of the patents' terms should be construed, the parties dispute whether the term "game controller" as used in two of the patents is indefinite under 35 U.S.C. § 112(f). Having reviewed the parties' extensive claim-construction briefs and after a two-day Markman hearing, I construe some terms that need construction, conclude that several others need no construction, and hold that the term "game controller" is indefinite here.

Background

A. The field of invention

Konami's patents teach a new concept for playing digital slot machines. When a player sits down to play slots, he normally sees several columns (or "reels") of symbols displayed on the screen. These virtual reels mimic the slot machines of old Las Vegas, which displayed symbols to the playerby spinning mechanical wheels that had symbols printed on their outside frame.¹ In the new digital machines, the player places his bet and pushes a button to start the game.² He then watches the display as a random assortment of symbols spins by on the virtual reels.³ The reels eventually stop and, if the symbols on the reels match in a pay line, the player wins.⁴

Konami's patents involve a slight variation on this concept. Instead of seeing a random assortment of symbols while the reels are spinning, the player sees clusters of identical symbols flash by on the reels. This design is intended to build the player's anticipation: he thinks he has a better chance of getting a line of matching winning symbols because he sees groups of identical symbols while the reels are spinning, not a random assortment.⁵ Konami contends that having these identical symbol groups—or "runs" as the patent refers to them—increases the player's excitement and thus increases the time a player spends in front of its machines.⁶

This infringement dispute concerns precisely how Konami's invention operates to select and display these identical symbol clusters on the slot machine's screen. There appears little dispute that Marks's games infringe on the generic concept of displaying identical runs of symbols to players during slot games. The question is whether Marks's games do so in a way that infringes Konami's patents.

B. Konami's invention for displaying identical-symbol runs

Konami obtained four patents on its design, all stemming from the same application and all sharing nearly identical specifications.⁷ Konami's patents teach a digital slot machine that spins "simulated rotatable reels." The parties extensively dispute precisely how Konami's invention selects the symbols it displays on these reels. Because the slot machine is a digital display that mimics a real slot machine, obviously the symbols on these reels (as well as the instructions for displaying them) are bits of data stored on the machine's processor.⁸ "Each reel is divided into a given number of elements, for example, 256 elements," where each element is a position on the simulated reel that will be populated with a symbol.⁹

The reels are divided into two sections of elements (or symbol positions): (1) sections that are designated to contain an assortment of different symbols, and (2) sections that are designated to contain identical clusters of symbols.¹⁰ The patents explain that there is a key difference between these two sections. The symbols that populate the sections of the reel that contain the non-identical symbols are stored in a predefined list;¹¹ generally, "the sequence of [these] symbols . . . remains fixed for all games played."¹² But the symbols in the identical-symbol sections of the reel changeeach game using a process involving "virtually spinning" a "notional, non-visible, inner reel."¹³ In practice, this inner reel is a table of different symbols stored on a computer, and spinning this "inner reel" involves using some sort of algorithm to select symbols from the table. This "virtual[] spinning" to select the identical symbol is done by a "game controller"—a computer processor with memory programmed to carry out the patent's steps. Before the reels start spinning, the game controller selects which symbol to display as the identical-run symbol for that game using the "notional, non-visible, inner reel." The symbol is then populated into the identical-symbol portion of the reel, and the reels are displayed to the player on the screen.

C. The claim-construction proceedings

The parties filed extensive claim-construction briefing.¹⁴ I then conducted a two-day Markman hearing.¹⁵ Both Konami and Marks offered expert testimony related both to their proposed constructions and Marks's indefiniteness challenge.¹⁶ Because the parties had not adequately briefed the issue of whether the "game controller" term is indefinite, I ordered and received supplemental briefs on this point.¹⁷

Discussion

I first address whether the "game controller" term is indefinite because the disputed terms in the '810 and '955 patents depend on "game controller" being valid. Because I conclude that "game controller" is indefinite, I do not reach the remaining terms in those two patents. I then offer constructions on the remaining disputed terms in the '869 and '540 patents.

A. "Game controller" and 35 U.S.C. § 112(f)

35 U.S.C. § 112(f) gives patentees the option of drafting a patent using functional terms (what the claimed invention does) instead of implementation terms (how the claimed invention operates).¹⁸ Congress enacted § 112(f) to empower patentees to use functional claiming if they can ensure that the public knows how that function can be accomplished.¹⁹ So when a patentee uses functional language in a patent, he must also disclose in the specification what structure, or which devices, can be used to carry out the function. A classic example of functional claiming is the term "a means for fastening," which would allow a patent to cover various ways for fastening (e.g., using glue, using bolts) without having to list them all out. Determining whether § 112(f) applies is a two-step process: (1) the court decides whether a term is functional; if it is, then (2) the court must determine if the patentee has satisfied § 112(f) by sufficiently describing "the structure, material, or acts" to perform the function. If a patentee uses a functional term without sufficiently disclosing the structure, the term is indefinite and cannot be enforced in an infringement action.

1. Is "game controller" a functional term?

Whether a patentee is using functional language that triggers § 112(f)'s structure-disclosure obligation is not always apparent. Using the word "means" in the claim language is a recognized clue. But the term "means" is not in Konami's claim language, so I must start with the presumption that the term is not functional and that § 112(f)'s requirements do not apply.

This presumption was once believed to be "a strong one that [was] not readily overcome."²⁰ But two years ago, the Federal Circuit held in Williamson v. Citrix Online that this "heightenedburden is unjustified" and that there was no reason to "characteriz[e] that presumption as strong."²¹ Now, courts must simply ask whether "the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure."²² If the patentee claims a function without fairly telling the public what sort of structure can be used to carry out that function—regardless of whether the word "means" appears in the claim—the patentee must satisfy § 112(f)'s disclosure requirement.²³

Determining whether a term is functional can be particularly difficult when the term is a computer-implemented one, such as a processor programed to carry out a task. On one hand, "processor" evokes a physical device. On the other, if the patentee is in effect claiming the programming on that processor, the term may trigger § 112(f) because it would be the same as claiming "a programming means" for carrying out a computer function.

Whether Konami's term "game controller" is functional is answered by Williamson. In Williamson, the Federal Circuit addressed the similar processor-related term "distributed learning control module."²⁴ Although the patent did not include the word "means," the court held that the term "control module" triggered § 112(f) because it merely claimed a generic processor for carrying out computer functions, not a specific processor structure.²⁵

The Williamson court first found persuasive the fact that "control module" was drafted in the "same format" as a traditional means-plus-function claim.²⁶ The court pointed out that "distributed learning control module" could easily be replaced with the word "means" because the patent taught that the module simply performs several functions.²⁷ In other words, the term set forth "the same black box without recitation of structure for providing the same specified function as did 'means.'"²⁸

The court also emphasized that "control module" referred to a generic processor and that there was little in the patent explaining how this processor operated or interacted with other parts of the invention that might lend additional structure. It acknowledged that "control module" referred to some sort of processor programmed to carry out computer functions, so it did generally refer to some sort of generic...