 United States Court of Appeals for the Federal Circuit

                                        05-1476

                                 PLANET BINGO, LLC,

                                                      Plaintiff/Counterclaim Defendant-
                                                      Appellant,

                                          and

                                 GARY WEINGARDT,

                                                      Counter Defendant-Appellant,

                                           v.

                         GAMETECH INTERNATIONAL, INC.,

                                                      Defendant/Counterclaimant-
                                                      Appellee,

                                          and

              RICHARD FEDOR, GARY HELD and GRAHAM LEONARD,

                                                      Defendants-Appellees.



        Jeffrey Weiss, Weiss, Moy & Harris, P.C., of Washington, DC, argued for
plaintiff/counterclaim defendant-appellant and counter defendant-appellant.

       Claude M, Stern, Quinn Emanuel Urquhart Oliver & Hedges, LLP, of Redwood
Shores, California, argued for defendant/counterclaimant-appellee and defendants-
appellees.

Appealed from: United States District Court for the District of Nevada

Judge Philip M. Pro
United States Court of Appeals for the Federal Circuit
                                    05-1476

                             PLANET BINGO, LLC,

                                               Plaintiff/Counterclaim Defendant-
                                               Appellant,
                                       and

                              GARY WEINGARDT,

                                               Counter Defendant-Appellant,

                                        v.

                     GAMETECH INTERNATIONAL, INC.,

                                               Defendant/Counterclaimant-
                                               Appellee,

                                       and

          RICHARD FEDOR, GARY HELD and GRAHAM LEONARD,

                                               Defendants-Appellees.

                        ___________________________

                        DECIDED: December 13, 2006
                        ___________________________

Before NEWMAN, MAYER, and RADER, Circuit Judges.

RADER, Circuit Judge.

      The United States District Court for the District of Nevada determined that

GameTech International, Inc., did not infringe claims 3, 6-9 of U.S. Patent No.

5,482,289 (the '289 patent) and claims 1, 4, 7, 8, 11, 12, 15, 16, 19, 21, 24, 25,

28, 32, and 35-39 of U.S. Patent No. 5,727,786 (the '786 patent) belonging to

Planet Bingo, LLC. Planet Bingo, LLC v. GameTech Int'l, Inc., CV-S-01-1295-
PMP (D. Nev. Apr. 18, 2005) (Infringement Decision). The district court further

found in a separate order that prior art anticipated claims 2 and 5 of the '289

patent under 35 U.S.C. § 102(b). Planet Bingo, LLC v. GameTech Int'l, Inc., CV-

S-01-1295-PMP (D. Nev. May 6, 2005) (Invalidity Decision). Finding no error,

this court affirms the district court's findings.

                                                I.

       Planet Bingo, LLC (Planet Bingo) is the exclusive licensee of both the '289

and '786 patents. The patents claim alternative methods of playing bingo by

coupling numbers with additional "indicia" or "markings," such as colors or

shading patterns. See, e.g., '289 patent, col.5 ll.27-29; '786 patent, col.3 ll.48-52.

These additional designations overlay a traditional bingo game to produce more

winning combinations for more prizes. For example, a player may achieve a

classic bingo (e.g., a straight line) and then couple that line with an additional

indicator (e.g., a straight line that is also all red) to win a greater jackpot. The

additional designations come into play either with markings on the bingo balls in

the '289 patent or with a marked bingo flashboard in the '786 patent. '289 patent,

col.5 ll.20-25; '786 patent, col.4 ll.40-50. The patents also specify that players

might make a second, separate wager to access a progressive jackpot. '289

patent, col.3 ll.6-10; '786 patent, col. 3 ll.21-24. In this type of bingo with wagers,

the unclaimed purse in each round carries over to the next game (think

Powerball). See, e.g., '289 patent, col.3 ll.42-44. The bingo hall may also set

aside a portion of this second wager to pay winners of the progressive jackpots.

Id. at col.5 ll.38-51.




05-1476                                     2
       In August 2002, GameTech International, Inc. (GameTech), Planet Bingo's

competitor in the gaming industry, began to exhibit their own version of bingo at

trade shows. The accused version, "Rainbow Bingo," also includes an additional

layer of markings, with different colors assigned to the columns of a bingo matrix,

and jewels or coins assigned to the rows. The "Rainbow Bingo" game randomly

distributes the extra winning combinations only after drawing the first bingo ball.

Rainbow Bingo also features progressive jackpots by carrying over prize

amounts into the next game until a winner claims the jackpot associated with a

particular color, coin, or jewel.    Though Rainbow Bingo can be played on

conventional bingo cards using a specialized flashboard, GameTech also

envisioned linking many bingo halls through electronic bingo cards. This feature

made very large progressive prizes possible, including a "life changing prize" for

a ruby bingo.

       Planet Bingo brought suit against GameTech on November 2, 2002. The

complaint specified that GameTech offered an infringing version of Rainbow

Bingo for sale. Planet Bingo charged infringement of certain claims of the '289

patent and the '786 patent. GameTech asserted that Rainbow Bingo did not

infringe two limitations from each patent: (1) using indicia to mark the bingo balls

(in the '289 patent) or the bingo board (in the '786 patent), and; (2) establishing a

predetermined winning combination (in both the '289 patent and the '786 patent).

GameTech further challenged that a prior art bingo game anticipated these

patents.




05-1476                                  3
       A magistrate judge held a Markman hearing and construed fourteen claim

limitations in favor of GameTech. Planet Bingo, LLC v. GameTech Int'l, Inc., CV-

S-01-1295-JMC (D. Nev. Nov. 3, 2004). The district court later adopted this

claim construction to support its finding of no infringement.         Infringement

Decision, slip op. 10. 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. Id. at 11, 17. The district court relied on the

winning combination limitation alone to reach this result. Id. The district court,

therefore, granted summary judgment for GameTech. Id. at 17.

       The district court considered the counterclaim of invalidity in a separate

motion in limine. To challenge claims 2 and 5 of the '289 patent, GameTech

relied on an antecedent game known as “HOTBALL,” a form of progressive bingo

developed in 1991. Invalidity Decision, slip op. 9. Planet Bingo appeals the

district court's non-infringement and invalidity findings.

                                              II.

       “This court reviews the district court's grant or denial of summary judgment

under the law of the regional circuit.” MicroStrategy, Inc. v. Bus. Objects, S.A.,

429 F.3d 1344, 1349 (Fed. Cir. 2005) (citation omitted). The United States Court

of Appeals for the Ninth Circuit, "reviews a district court's summary judgment

order de novo, viewing all facts and reasonable inferences therefrom in the light

most favorable to the nonmoving party." Diruzza v. County of Tehama, 323 F.3d

1147, 1153 (9th Cir. 2003).




05-1476                                   4
                                 INFRINGEMENT

       Infringement entails a two-step process: "First, the court determines the

scope and meaning of the patent claims asserted . . . [and second,] the properly

construed claims are compared to the allegedly infringing device." Cybor Corp.

v. FAS Tech. Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc) (citations

omitted). "Step one, claim construction, is a question of law, that we review de

novo. Step two, comparison of the claims to the accused device, is a question of

fact, and requires a determination that every claim limitation or its equivalent be

found in the accused device." N. Am. Container, Inc. v. Plastipak Packaging,

Inc., 415 F.3d 1335, 1344 (Fed. Cir. 2005) (citations omitted).

       The district court construed the limitation "progressive . . . predetermined

winning combination" to mean the precise elements necessary to achieve bingo

in a particular game are known before the first bingo ball is drawn. Infringement

Decision, slip op. 10. All of the asserted claims contain this limitation. The

district court's opinion for both non-infringement and invalidity rested on its

reading of this limitation.

       Claim 2 of the '289 patent shows this limitation in context:1

       2. The method of playing a game of bingo comprising:

           a) providing a player with a bingo card having a plurality of
           numbered spaces formed as a matrix having five rows and five
           columns used in the play of a five-by-five bingo game;

           b) providing a plurality of bingo balls, each having individual
           numbers corresponding to the numbered spaces on the bingo
           card;

       1
             The district court found this claim invalid in view of HOTBALL but
offered no decision regarding infringement of this claim.


05-1476                                  5
          c) a player making a first wager to be eligible for the five-by-five
          bingo game[;]

          d) a player making a second wager to be eligible for a
          progressive jackpot;

          e) randomly selecting consecutive bingo balls;

          f) awarding a first preselected amount when the player
          achieves a predetermined winning combination on the five-by-
          five matrix of the bingo card;

          g) designating a portion of the second wager to a separate
          progressive jackpot pool;

          h) establishing a predetermined combination as a winning
          combination for the progressive jackpot pool; and

          i) awarding the progressive jackpot pool to the player when he
          achieves the predetermined winning combination on the bingo
          card.


'289 patent, col.7 ll.31-55 (emphasis added).

      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.      Planet Bingo responds that "progressive . . .

predetermined winning combination" merely requires that the participants in the

game know, before the start of play, the predetermined rules for winning a

progressive jackpot. Planet Bingo argues that the disclosure only requires that




05-1476                                  6
the player know in advance that he (according to claim 2 of the '289 patent) is

playing for a red bingo to win the progressive prize, not what the exact location

on the board the red squares will be before the game begins. Thus, the claims

recite a "progressive . . . predetermined winning combination," but the parties

dispute what must be predetermined before drawing the first bingo ball.

      The claim language governs claim meaning. Phillips v. AWH Corp., 415

F.3d 1303,1312 (Fed. Cir. 2005) (en banc). In this case, the claim language

supports GameTech's construction.        The claims recite a "progressive . . .

predetermined winning combination" not merely "predetermined rules" for

identifying a winning combination. The rules may dictate that a "red bingo" will

win the progressive game.      The winning combination, however, identifies the

particular squares, colored red, that will produce the progressive bingo.

      Further, the claim's preamble calls for "a game" of bingo. While the rules

for a particular progressive jackpot may require achieving bingo with red squares,

the winning combination for that game is something different; i.e., a straight red

bingo, a diagonal red bingo, a four corners red bingo, etc. Each game will have a

particular "progressive . . . predetermined winning combination."      The claims

themselves specify that each individual game, rather than the rules for overall

play, will have a different winning combination.

       The specification often supplies the critical context to construe the claim

language. Philips, 415 F.3d at 1315.     In this case, again, the discussion of the

disputed term in the specification supports the district court's construction.

Repeatedly the specification explains that the game determines the "winning




05-1476                                  7
combination" before the first bingo ball is drawn, thus making it "predetermined."

For example, the '289 patent states: "The operator of the bingo game will

designate at the beginning of the game which particular combination or

combinations of covered spots will be winning combinations for that particular

game." Col.1 ll.34-37. The '289 patent states that, in the preferred embodiment,

"[a] winning combination is established for the progressive jackpot pool and bingo

balls are randomly selected." Col.6 ll.12-13. The '289 patent uses this exact

same phrase again to describe an alternative embodiment. Col.6 ll.28-29.

      Likewise, the '786 patent states: "The operator of the bingo game will

designate at the beginning of the game which particular combination or

combinations of covered spots will be winning combinations for that particular

game." Col.1 ll.41-45. The '786 patent goes on to describe a feature of the

invention, the electronic display board, noting that "[p]rior to each game, some of

the numbers on the display board are specifically designated with the first

distinctive marking and a smaller portion of the numbers on the display board are

specifically designated with the second distinctive marking." Col.3 ll.12-15.

      The summary of the invention for the '786 patent states: "At the beginning

of each game, an electronic random number generator selects a predetermined

group of bingo numbers" which will be blue, green, red, and so forth. Col.3 ll.37-

40. The '786 patent goes on to state that the electronic board illuminates the

colors so that "[e]ach player can then see at the beginning of a game which of

the bingo numbers have the various distinctions." Col.5 ll.31-33. Finally the '786

patent reiterates: "The only modification that a bingo establishment needs to




05-1476                                  8
undertake to practice the method of the present invention is to install the

electronic reader board that can show different designations on the numbers on

the board as well as a random number generator to predetermine which numbers

are going to have which designations in a particular game." Col.5 l.64-Col.6 l.3.

Thus, these passages inform the meaning of "progressive . . . predetermined

winning combination," specifying both what it is and when it occurs. Specifically,

the specification invariably fixes the winning combinations before a game starts.

         The district court determined that GameTech did not infringe either literally

or under the doctrine of equivalents because the accused device does not

determine the winning combination until after the first bingo ball is drawn; i.e.,

until after the game begins. Infringement Decision, slip op. 11-12, 17. This court

affirms the district court's ruling that Rainbow Bingo does not literally infringe

these claims because it does not determine the winning combination until after

drawing the first ball.    Rainbow Bingo certainly contains a "progressive . . .

predetermined winning combination," indeed it would be impossible to play

without one. However, the '289 and '786 patents use this term to set that winning

combination before the game begins. In this sense, Rainbow Bingo does not

disclose to a player the predetermined winning combination until after the game

is underway. Thus, Rainbow Bingo does not contain a necessary limitation. The

district court correctly found that GameTech does not literally infringe the claims.

See Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.

2000).




05-1476                                    9
       Asserting infringement under the doctrine of equivalents, Planet Bingo

argues that the Rainbow Bingo game incorporates only an insubstantial variation

from the claims because the progressive predetermined winning combination

appears right after, rather than right before, the first bingo ball is drawn.

Equivalents are questions of fact reviewed under the clearly erroneous standard.

Insta-Form Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 702 (Fed.

Cir. 1990). Planet Bingo bears the burden of showing that the accused method

may perform substantially the same step, in substantially the same way, with

substantially the same result. Toro Co. v. White Cons. Ind., 266 F.3d 1367, 1370

(Fed. Cir. 2001).

       According to Planet Bingo, the timing of the predetermined winning

combination does not affect the game's prize amounts, odds, or other essential

characteristics.    Further, Planet Bingo argues, players of Rainbow Bingo will

know of the blue, purple, ruby, and emerald progressive combinations before the

first bingo ball is drawn. The only thing, argues Planet Bingo, that a player of

Rainbow Bingo will not know before the first bingo ball is drawn is where those

progressive combinations will be locked in.      GameTech in turn argues that

waiting for the first ball to be drawn does make a substantial difference in the

game because it increases the excitement.

       The district court found, contrary to Planet Bingo's assertion, that "after"

and "before" are very different. Infringement Decision, slip op. 16. The district

court determined that it could not substitute this change without ignoring entirely

the claim limitation. Id. at 13 (citing Cooper Corp. v. Kvaerner Oilfield Prods.,




05-1476                                 10
Inc., 291 F.3d 1317, 1322 (Fed. Cir. 2002)). The district court also relied on a

line of cases from this court construing the doctrine of equivalents "narrowly."

Infringement Decision, slip op. 14-15 (citing Asyst Techs., Inc. v. Emtrak, Inc.,

402 F.3d 1188 (Fed. Cir. 2005); Moore U.S.A., Inc. v. Standard Register Co., 229

F.3d 1091 (Fed. Cir. 2000); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d

1420 (Fed Cir. 1997)). The district court determined that the game method in

which the winning combination is not known until after the game begins cannot

be equivalent to a game method where this occurs before because "after is

opposite of before, not equivalent." Infringement Decision, slip op. 16.

       The Supreme Court emphasizes that the doctrine of equivalents must not

expand to eliminate a claim element entirely. Warner-Jenkinson v. Hilton Davis

Chem. Co., 520 U.S. 17, 29 (1997).             The doctrine does provide additional

coverage for the exclusive right to protect a patent holder in the event of an

unforeseeable change. Sage Prods., 126 F.3d at 1425 ("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. . .

. [T]he 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.") (citation omitted). Here, the patents contain

a distinct limitation, which was part of the bargain when the patent issued. This

court cannot overlook that limitation or expand the doctrine of equivalents beyond




05-1476                                   11
its purpose to allow recapture of subject matter excluded by a deliberate and

foreseeable claim drafting decision. See Id.

       Further, the cases Planet Bingo cites in support of a broad interpretation

to the doctrine of equivalents, specifically Ethicon Endo-Surgery, Inc. v. United

States Corp., 149 F.3d 1309 (Fed. Cir. 1998), and Wright Medical Technology v.

Ostenoics Corp., 122 F.3d 1440 (Fed. Cir. 1997), do not alter this court's present

analysis. In Wright Medical, this court remanded the district court's decision of

summary judgment under the doctrine of equivalents because evidence showed

that the accused medical device that only passed through part of the femur,

rather than through the femur, may be found to be equivalent because it

achieves at least some of the functionality of the claimed invention. 122 F.3d at

1446. Further, in Ethicon, this court found that the accused device infringed

under the doctrine of equivalents because of the length of time a restraint

structure contacted a barrier was minimal.      149 F.3d at 1313.      The court in

Ethicon distinguished Sage Prods., noting that in Sage Prods. "no subtlety of

language or complexity of the technology, nor any subsequent change in the

state of the art, such as later-developed technology, obfuscated the significance

of the limitation at the time of its incorporation into the claim." Ethicon, 149 F.3d

at 1318 (quoting Sage Products, 126 F.3d at 1425).             Arguably, the facts

surrounding the inventions (both medical devices) in both Wright and Ethicon

made the disputed differences less foreseeable at the time the patent was

drafted.




05-1476                                  12
       Further, the Ethicon and Wright cases dealt only with questions of small

variations in the degree of achieving a claimed limitation. See Ethicon, 149 F.3d

at 1321; Wright, 122 F.3d at 1445. In this case, the proposed application of the

doctrine of equivalents would change "before" to "after," a more marked

difference. This court has refused to apply the doctrine in other cases where the

accused device contained the antithesis of the claimed structure. For example,

in Moore, this court refused to find infringement under the doctrine of equivalents

for an accused product with only a minority of adhesive strips where the claim

called for a majority. 229 F.3d at 1106. Similarly, in Asyst Technologies, an

unmounted computer was not an equivalent to a claim limitation requiring a

mounted computer. 402 F.3d at 1195. Finally, in Sage, an elongated slot within,

rather than on top of, the claimed container did not infringe under the doctrine of

equivalents. 126 F.3d at 1425-26.

       Similarly, in this case, the difference in timing creates a difference of

knowing the winning combination before the game starts or after the game starts.

Rainbow Bingo always determines the winning combination after start of the

game. Therefore, it cannot be "predetermined." This court upholds the district

court's refusal to find infringement by equivalents.

                                   ANTICIPATION

       In a separate order, the district court held claims 2 and 5 of the '289 patent

invalid as anticipated by the prior art bingo game HOTBALL. Invalidity Decision,

slip op. 8-9. Claim 2 is produced in its entirety above. Claim 5, an independent

claim, is identical to claim 2 except that claim 2 additionally requires a five-by-five




05-1476                                   13
bingo matrix card. '289 patent, col.7 ll.39-40; col.8 ll.29-30. HOTBALL is a prior

art bingo game that was marketed to gaming operators in July 1991.              The

applicant did not cite, and the Patent and Trademark Office did not consider, this

prior art bingo method.

       HOTBALL is a bingo game in which, before the start of the game, the

player places a wager to play the conventional bingo game, and then places a

second wager to play HOTBALL.            Originally, HOTBALL was marketed as a

method in which the player would pick the HOTBALL number. However, some

bingo halls played HOTBALL differently. Under the alternative method, the game

operator would select the HOTBALL number by drawing a bingo ball out of the

hopper, announcing it as the HOTBALL. If the player achieved bingo with the

selected HOTBALL number as the last number that formed the pre-selected

winning combination, the player won a separate HOTBALL jackpot. A July 1991

promotional letter described this alternative method of playing HOTBALL.

       A claim is anticipated and thus invalid if each and every limitation of a

claim is found, expressly or inherently, in a single prior art reference. Schering

Corp. v. Geneva Pharm., 339 F.3d 1373, 1379 (Fed. Cir. 2003). The district

court determined that HOTBALL disclosed each and every limitation of claim 2

and 5. In particular, the district court determined that both HOTBALL and claims

2 and 5 required a "predetermined winning combination" before the start of the

game. Invalidity Decision, slip op. 8.

       At the district court, the parties agreed that HOTBALL disclosed every

limitation of claim 2 and 5 of the '289 patent except for step (d), which requires "a




05-1476                                   14
player making a second wager to be eligible for a progressive jackpot", step (g),

which requires "designating a portion of the second wager to a separate

progressive jackpot pool", and step (h), which states "establishing a

predetermined combination as a winning combination for the progressive jackpot

pool."    Id. at 6.   The district court determined that the HOTBALL method

contained the steps requiring a second wager and designating a portion of this

wager to the progressive jackpot.      Id. at 7.   In addition, the district court

determined that while nothing in the claims of the '289 patent require the

"progressive . . . predetermined winning combination" to be determined by the

game hall, the game can be played in this way. Id. Thus, at least when the

game hall operator discloses the HOTBALL number at the outset, that prior

selection met the "progressive . . . predetermined winning combination" limitation

because the winning combination would be a straight line with the HOTBALL

number as the last number in the winning combination. Id.

         On appeal, Planet Bingo argues that HOTBALL does not disclose the

precise elements of the winning combination before the first ball is drawn.

Specifically, Planet Bingo argues that the progressive jackpot in HOTBALL is not

based on a "predetermined winning combination" but rather on a player's ability

to guess the last number needed for a bingo win.

         HOTBALL requires that either a player or bingo hall operator pick a

number before the start of the game that, if drawn as the final component of a

bingo combination, gives the winner an additional progressive prize associated

with that number (the HOTBALL number).             The predetermined winning




05-1476                                15
combination in the claims of the '289 patent does not require the player to know

the numbers that will form the predetermined winning combination, only that the

combination of one or more spaces on the bingo card matrix, which, when

covered by a player, represents a bingo win; together with other necessary

predetermined winning criteria. Here, a player of HOTBALL will know that they

need a particular pattern to represent a bingo win and a predetermined

HOTBALL number on the last ball to win the progressive prize. Thus, this court

affirms the district court's finding that the HOTBALL method anticipates claims 2

and 5 of the '289 patent.

                                    COSTS

      Each party shall bear its own costs.

                                  AFFIRMED




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