Planet Bingo, LLC v. Gametech Int'l, Inc., 472 F.3d 1338 (Fed. Cir. 2006)
Facts: the patents included a limitation for a progressive predetermined winning combination, but the parties disputed the specific game elements which must be predetermined before drawing the first bingo ball. The appellate court held that the limitation was properly construed to mean that the precise elements necessary to achieve bingo in a particular game be determined before the first bingo ball was drawn, and thus the competitor's game, which did not determine the winning combination until after the first ball was drawn, did not literally infringe the patents. The patent claims themselves specified that each individual game, rather than the rules for overall play, had a different winning combination, and the specification repeatedly explained that the game determined the winning combination before the first bingo ball was drawn, thus making it predetermined. Further, the determination of the winning combination immediately after, rather than immediately before, the first ball was drawn did not constitute an insubstantial variation from the patent claims, and thus there was no infringement by the doctrine of equivalents since the timing of the determination was a necessary limitation.
Procedural posture: Appellant, the exclusive licensee of patents claiming alternative methods of playing bingo by coupling numbers with other indicia such as colors, sued appellee competitor in the gaming industry, alleging that the competitor's bingo game infringed the licensee's patents. The license appealed the summary judgment of non-infringement entered in the United States District Court for the District of Nevada.
Holding- The summary judgment of non-infringement was affirmed.
Reasoning- On appeal, GameTech? argues that, the progressive predetermined winning combination limitation requires fixation of the entire winning combination before drawing the first bingo ball in any given bingo game. According to GameTech?, a player of a Planet Bingo game will know ahead of time that "red" squares will give the progressive bingo and the position of those red squares on the board, but a player of Rainbow Bingo will not know this information until after the first ball is drawn. Because the accused device marked the bingo card rather than the bingo balls, and assigned the specific winning combinations only after drawing the first bingo ball, the district court found no infringement-literal or under the doctrine of equivalents. The Supreme Court emphasizes that the doctrine of equivalents must not expand to eliminate a claim element entirely. The doctrine does provide additional coverage for the exclusive right to protect a patent holder in the event of an unforeseeable change. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. The alternative rule-allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim-also leads to higher costs.
Facts: the patents included a limitation for a progressive predetermined winning combination, but the parties disputed the specific game elements which must be predetermined before drawing the first bingo ball. The appellate court held that the limitation was properly construed to mean that the precise elements necessary to achieve bingo in a particular game be determined before the first bingo ball was drawn, and thus the competitor's game, which did not determine the winning combination until after the first ball was drawn, did not literally infringe the patents. The patent claims themselves specified that each individual game, rather than the rules for overall play, had a different winning combination, and the specification repeatedly explained that the game determined the winning combination before the first bingo ball was drawn, thus making it predetermined. Further, the determination of the winning combination immediately after, rather than immediately before, the first ball was drawn did not constitute an insubstantial variation from the patent claims, and thus there was no infringement by the doctrine of equivalents since the timing of the determination was a necessary limitation.
Procedural posture: Appellant, the exclusive licensee of patents claiming alternative methods of playing bingo by coupling numbers with other indicia such as colors, sued appellee competitor in the gaming industry, alleging that the competitor's bingo game infringed the licensee's patents. The license appealed the summary judgment of non-infringement entered in the United States District Court for the District of Nevada.
Holding- The summary judgment of non-infringement was affirmed.
Reasoning- On appeal, GameTech? argues that, the progressive predetermined winning combination limitation requires fixation of the entire winning combination before drawing the first bingo ball in any given bingo game. According to GameTech?, a player of a Planet Bingo game will know ahead of time that "red" squares will give the progressive bingo and the position of those red squares on the board, but a player of Rainbow Bingo will not know this information until after the first ball is drawn. Because the accused device marked the bingo card rather than the bingo balls, and assigned the specific winning combinations only after drawing the first bingo ball, the district court found no infringement-literal or under the doctrine of equivalents. The Supreme Court emphasizes that the doctrine of equivalents must not expand to eliminate a claim element entirely. The doctrine does provide additional coverage for the exclusive right to protect a patent holder in the event of an unforeseeable change. However, as between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure. The alternative rule-allowing broad play for the doctrine of equivalents to encompass foreseeable variations, not just of a claim element, but of a patent claim-also leads to higher costs.