Federal Circuit Defines Term “Predetermined”

In Planet Bingo, LLC v. Gametech Int’l, Inc., 05-1476 (Fed. Cir. Dec.13, 2006), Planet Bingo was the exclusive licensee of both U.S. Patent No. 5,482,289 (the ‘289 patent) and U.S. Patent No. 5,727,786 (the ‘786 patent). The Federal Circuit affirmed the district court’s holding of non-infringement and patent invalidity against Planet Bingo’s  patents.

The ‘289 and ‘786 patents involved methods of playing and wagering on bingo.  Specifically, in addition to the normal method of play, the ‘289 patent claimed additional indicia or markings on the game balls.  The ‘786 patent claimed a marked flashboard.  These additions permitted winning additional jackpots by combining normal number sequences with colors. 

Gametech, a competitor, introduced “Rainbow Bingo”.  Rainbow Bingo included additional markings of colors assigned to columns of the bingo matrix board, and jewels or coins assigned to the rows.  A crucial additional element of Rainbow Bingo included randomly distributing extra winning color/number combinations after the first ball had been drawn. 

Planet Bingo sued Gametech, claiming infringement of certain claims of each patent.  Gametech countered that it did not infringe the indicia requirements on the game balls; that “Rainbow Bingo” did not invoke a predetermined winning combination; and that the prior art “Hotball” bingo game anticipated both patents.  A magistrate conducted Markman hearings, construing fourteen claims in favor of Gametech; the district court followed this construction in granting summary judgment for Gametech, finding no infringement. 

In a separate ruling, the district court found that claims 2 and 5 of the ‘289 patent were invalid as anticipated by “Hotball.”

Term “Predetermined” Defined In Light of Specification

Claim 2 of the ‘289 patent recites a “predetermined combination as a winning combination for the progressive jackpot pool.” Gametech argued that the predetermined requirement of claim 2 required fixing the entire winning combination before drawing the first game ball in any game.  Planet Bingo countered that predetermined merely required the player know the predetermined rules for winning the progressive jackpot.  The Federal Circuit, citing Phillips v. AWH Corp. F.3d 1303 (Fed Cir. 2005 (en banc), analyzed the predetermined claim language in light of the specification and agreed with Gametech.

Specifically, the Federal Circuit held that the claims specified each individual game would have a different winning combination, rather than the rules for overall game play.  That is, before the first ball is drawn, the particular combination of other indicia and locations dictates the winning combination.  Further, knowing the rules, a player would then know which color/number combination would win the game and that this could occur in a straight line, a diagonal or 4-corners.  These latter geometric arrangements would not change in any individual game, but the predetermined color/number combination would.  Claims of the ‘786 patent also indicated that the bingo game operator would designate at the beginning of each game which combinations of locations would be the winners.  The specification also supported this construction.

Since Gametech’s bingo game did not make this designation this until after the first ball was drawn, the Federal Circuit held that Gametech did not literally infringe. 

On the issue of infringement under the doctrine of equivalents, Planet Bingo argued that Gametech’s rules only insubstantially differed from the ‘289 claim language since the actual predetermined winning combination appeared immediately after, rather than before, drawing the first ball.  However, the Federal Circuit held that, since “Rainbow Bingo” did not reveal the predetermined winning combination of numbers until after the game had begun, it did not include a limitation corresponding to the claimed predetermined featured.  Further, since “before” and “after” are direct opposites, the Federal Circuit would not substitute the terms fearing such consideration would ignore the ‘289 claim limitation entirely.  Thus, the Federal Circuit upheld the district court’s finding of non-infringement.

On the issue of invalidity, the Federal Circuit upheld the district court’s finding of anticipation for claims 2 and 5 of the ‘289 patent were in view of “Hotball.”  Hotball is a bingo game variation involving wagering on the “Hotball” number—the final bingo ball needed to win a game.  In various methods of playing, either the bingo operator or the game player would pre-select the Hotball number from the hopper.  Achieving bingo as the last number using this Hotball would allow winning the Hotball jackpot. 

Planet Bingo asserted that Hotball was not based on a predetermined winning combination.  Instead, Hotball required a player to guess the Hotball such that there was no winning combination that was predetermined.  The Federal Circuit differed with this reasoning, however, noting that players of Hotball would know the predetermined Hotball number needed to win bingo.  Thus, since the Hotball number was known prior to the game, Hotball used a predetermined winning combination and anticipated claims 2 and 5 of the ‘289 patent.

 

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