Docket No. 2010-1426
O’MALLEY, BRYSON, LINN
March 13, 2013
Brief summary: For direct infringement, “the accused party must commit all of the acts necessary to infringe the patent, either personally or vicariously”. For indirect infringement, a party must “knowingly induce others to engage in acts that collectively practice the steps of the patented method.”
Summary: Aristocrat brought action against IGT alleging direct and indirect infringement of its patents related to casino gaming machines and methods for awarding prizes. The DC granted IGT’s motion for SJ of noninfringement because the accused products require actions by both a casino and a player (Muniauction, FC 2008 (direct infringement requires single party to perform and or direct / control every step of claimed method). The FC affirmed the decision based on its 2012 en banc Akamai decision. In its decision, the DC considered the question of whether IGT “exercised direction or control over the player’s performance” and found that it did not (e.g. the “making a wager”, “awarding” and / or “betting” steps). In this appeal, Aristocrat appealed the construction of the phrases “awarding said one progressive prize” and “making a wager”. The FC concluded (e.g., based on the specification and other claim language) that the “awarding” step referred to the conferring of a right from the casino to the player and not simply displaying the amount of the prize. “Making a wager” was construed by the DC “to mean betting, which is an act performed by a player” based on the specification and prosecution history (e.g., “By removing the reference to the actor that ‘allows’ the betting, Aristocrat, at best, introduced ambiguity into the claim. The amendment did not clearly limit the claim to activity by the machine as opposed to the player.”), and affirmed by the FC panel. Direct infringement under 35 U.S.C. § 271(a) was then considered (e.g., “the accused party must commit all of the acts necessary to infringe the patent, either personally or vicariously” (Akamai, FC 2012)). The FC panel concluded that “[u]nder the claim constructions…no single actor performs all of the steps of the claimed methods.” And the DC conclusion of no indirect infringement was vacated and remanded for consideration in view of Akamai (e.g., “[a] party who knowingly induces others to engage in acts that collectively practice the steps of the patented method…has had precisely impact on the patentee as a party who induces the same infringement by a single direct infringer”).