Konami Gaming, Inc. v. High 5 Games, LLC (D. Nev.)

by McDonnell Boehnen Hulbert & Berghoff LLP
Contact

Slot Machine Patent Invalidated As Being Directed to Ineligible Subject Matter

Konami sued High 5 Games for patent infringement of U.S. Patent Nos. 8,096,869; 8,366,540; 8,662,810; and 8,616,955.  The '869 patent, which is entitled "Gaming Machines with Runs of Consecutive Identical Symbols," issued on January 17, 2012, and is the parent patent for the other three patents in this case.  The patents disclose 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."

The District Court granted summary judgment for High 5 Games, finding that the patents were directed to ineligible subject matter, i.e., an abstract idea equated to rules of a game.  While the Federal Circuit has noted that a "game using a new or original deck of cards" could potentially survive a § 101 challenge, the claims at issue here were found to only be directed to changes to game rules of a generic slot machine using conventional technology—thus, lacking a new/original "deck of cards" (i.e., new technology).

Patents At Issue

The '869 patent describes that there is provided a gaming machine arranged to display a matrix of symbols containing elements: each column of the matrix comprising a portion of a simulated rotatable reel of the symbol containing elements, and each of the symbol containing elements of at least one consecutive run of the symbol containing elements of at least one reel is caused to display an identical symbol.  Preferably, the identical symbol is selected by a game controller from a subset of available symbols.  Figure 1 of the '869 patent, reproduced below, shows a gaming machine with a display having a matrix of elements and symbols comprising portions of simulated rotatable reels.

Figure 1
A game controller pre-selects at random, at the initiation of a game sequence, a potential win element for each reel from the set of elements.  That is, the game controller predetermines which element, and therefore which symbol, will be displayed at the end of the game, and may therefore contribute to a winning outcome.  In this preferred embodiment, the number of elements in a run and the location of the consecutive run or runs within the strip are predetermined and remain constant for each game played on the machine.  The identical symbol which populates these consecutive run or runs of elements may be considered as one of a set of inner reel symbols.

The selection of the identical symbol is through a notional rotation of an inner reel, which is in effect, a look-up table and is not displayed, but its simulated rotation and coming to rest determines which symbol will populate the run or runs of consecutive elements of the left-most reel.  The symbols of the inner reel or look-up table from which the selection is made, are a sub-set of the set of symbols displayed in the remaining non-inner reel elements of the left-most reel.

Claim 1 of the '869 patent is representative of the asserted claims for the patents at issue in this case.

1.  A gaming machine comprising:
    a processor configured to execute a game displaying a matrix of symbol containing elements having a plurality of rows and a plurality columns;
    at least one column of said matrix comprising a portion of a simulated rotatable reel of a plurality of said symbol containing elements;
    said simulated rotatable reel comprising sections of symbol containing elements displaying a plurality of symbols that are fixed for each game played on said gaming machine;
    said simulated rotatable reel including at least one section in which a consecutive run of three or more of said symbol containing elements is populated by an identical symbol so that, as the simulated rotatable reel rotates, a consecutive string of said same identical symbol is sequentially displayed within said consecutive string of symbol containing elements; and
    said identical symbol is randomly selected anew for each play of said game, wherein said identical symbol is selected by virtually spinning a notional, non-visible, inner reel comprising a subset of said plurality of symbols.

Section 101 Challenge

High 5 argued that the claims are invalid as abstract under 35 U.S.C. § 101.  Specifically, High 5 argued that the claims at issue here are directed towards what are essentially game rules, albeit in the context of a computerized "game," and that the abstract concept of the manner in which the "game" is played or depicted, or the arrangement of the symbols in the course of the game, is not patentable, even if it is executed through the use of various technological components, generically recited.

Konami responded and emphasized that the claims cover a gaming machine that displays virtual reels having sections of identical, repeating symbols separated by sections of non-identical and thus non-repeating symbols, so that the displayed sections of repeating symbols heighten player anticipation of a potential win.  Konami argued that this functionality overcomes a problem recognized in the industry in which machines and games can offer novel and stimulating variations.

Pursuant to Alice Corp., the Court first determined whether the patents were directed toward a patent-ineligible concept, such as an abstract idea.  Here, the Court found that the patents at issue in this case are directed toward a patent-ineligible concept regarding "rules of a game," i.e., slot machine game rules.  High 5's analogy to game rules was compelling.  As laid out above, the patents recite essentially generic computing components, within the pre-existing framework of the "game" of a slot machine.  These components perform the functions of what may be described as an aesthetic variation on a play of the game—the game is played such that the reels display consecutive runs of the same symbol.  The primary focus of the patents, as acknowledged even by Konami, is displaying a consecutive run of a randomly selected identical symbol in one reel of the simulated digital reels in each iteration of a game as a means of increasing interest in the game and "increasing probability of a winning outcome."  As the Federal Circuit found in In re Smith, claims directed to new game rules or variations of a game are directed to an abstract patent-ineligible concept.  The Court thus found that the four patents at issue in this case are directed to altering the rules of the game regarding slot games, and are thus directed to a patent-ineligible concept.

Konami argued that, even if the claims are deemed to recite generic computer system components that are not in themselves inventive, the Court should find the "ordered combination" of the limitations, comprising a game in which "as the simulated rotatable reel rotates, consecutive string of the identical symbol . . . is sequentially displayed," to be sufficient.  Konami noted that in In re Smith, the Court posited in dicta that a novel game employing an original deck of cards (e.g., novel game using new technology) might be patentable.  Konami asserted that their patents are equivalent to a new deck of cards; they cover a new and original virtual reel for a slot machine.  Konami argued that in gaming systems prior to this invention, reels did not exhibit identical symbols in consecutive positions, nor where symbols on the reel randomly selected to change from game to game, and while some of the individual computer hardware components may be conventional, the limitations defining this inventive concept all depend on the unconventional configuration recited in the claims.

Thus, the Court's inquiry did not end with a finding that the patents are directed toward a patent-ineligible concept.  As Konami pointed out, the Court in In re Smith provided the explicit caveat that the invention of a "game using a new or original deck of cards" could potentially survive the second-step inquiry under Alice.  These patents may thus overcome a finding of invalidity for abstractness if they nonetheless disclose an "inventive concept sufficient to transform the claimed abstract idea into a patent-eligible" invention.

However, the Court did not find that the claims here individually, collectively, or in ordered combination disclose an "inventive concept".  The Court rejected Konami's argument that the ordered combination of claims results in an inventive concept by virtue of the unique display or configuration of symbols on the simulated reels.  While the claims at issue here may disclose a different configuration of the displayed symbols in a slot machine game, they do not disclose a new game or a new technology directed to the slot game.  The claims both individually and in an ordered combination disclose "purely conventional steps to an abstract idea."  Selecting an identical symbol for a consecutive run of symbols in one simulated digital reel, at least as disclosed in the asserted claims here, does not represent a new form of selection or derive from a new technology associated with slot games.  This selection process, as conceded by Konami, relies upon the use of random number generators and look-up tables.  While these technological components require programming, as the Examiner noted in his initial rejection of the patent application, the patents' use of these components does not represent a nonobvious ordered combination.

Moreover, the Court did not agree that the mere configuration of a consecutive run of symbols in one simulated reel represents something more than changing the rules of the game.  A generic slot game, as noted by experts in this case, has ever changing symbols selected at random.  Realigning and altering the display of symbols on simulated spinning reels is the very essence of the generic slot game.  Changing how often a symbol appears and where it appears in a slot game without more is simply altering the manner of display of random symbols -- i.e., changing the rules of the game.  Changes to game rules of a generic slot machine using conventional technology are not patentable.

The Court noted that the '869 patent was allowed inter alia because it disclosed an alleged unique method of random selection -- virtual spinning of a notional non-visible inner reel.  However, a review of the specification and asserted claims indicates that the inventor never actually provided the structure or programming for this process.  Consequently, Konami cannot establish that this selection process represents an inventive concept or new technology (or selection process) directed to a generic slot game.

Thus, the Court found that Konami's patents' claims individually and collectively are invalid for abstractness.

Konami Gaming, Inc. v. High 5 Games, LLC (D. Nev.)
Order by District Judge Richard F. Boulware, II

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP
Contact
more
less

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.