High 5 Games, a recognized pioneer in the slot game industry, including online games, has created hundreds of games that are played on six continents in more than 150 countries. High 5 Games’ robust library of virtual slot games includes some of the most complex math features in the electronic gaming industry.
Electronic gaming competitor, Konami Gaming Inc. (Konami), sued High 5 Games claiming that High 5 Games’ leading and patented line of Super Stacks slot games infringe 52 claims of four Konami patents. Konami had previously procured licenses under these patents from other stakeholders in the gaming industry. In its lawsuit filed in the United States District Court for the District of Nevada, Konami sought an injunction to prevent High 5 Games from using or licensing the accused game feature, Super Stacks, as well as unspecified damages.
High 5 Games aggressively disputed Konami’s patent infringement claims and brought a motion for summary judgment challenging all of Konami’s 52 asserted patent claims as invalid. High 5 Games attacked the Konami patents as “indefinite” because the patents did not disclose sufficient information for how to structure the game software and as “patent-ineligible subject matter” under 35 U.S.C. §§ 112 (6) (Pre-AIA) and 101.
The Court heard oral arguments during a four-day omnibus Claim Construction and Summary Judgment hearing in Las Vegas last July and August. On February 21, the Honorable Judge Boulware, II, issued an Order granting High 5 Games’ Motion for Summary Judgment, holding invalid all 52 of Konami’s patent claims from four asserted patents. Accepting High 5 Games’ arguments, the Court held:
“The Konami patents’ claimed [slot game] functions, enumerated previously, can be divided into to two basic categories: (a) game display functions and (b) game symbol selection/placement functions. The Court finds based upon the expert testimony and evidence presented at the hearing that the figures [and text] disclosed in the '869 patent (which are similarly disclosed in the subsequent patents) would not indicate to one of ordinary skill in the art sufficient [software] structure for the functions disclosed [and claimed] in the patents.” (Court Op. at 22-29).
With regard to patent ineligibility, the Court found:
“[T]he primary focus of the patents, as acknowledged even by Konami, is displaying a consecutive run of a randomly selected identical symbol[s] 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. 815 F.3d at 818. The Court thus finds 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.” (Court Op. at 32-33).
“The Court’s ruling that Konami’s patent claims are invalid for failure to disclose a software algorithm places patent applicants and owners on renewed notice that their patent applications and resulting patents cannot merely claim game functions to be performed by undisclosed game software and procure an enforceable patent claiming those functions,” said Robert C. Ryan, lead counsel for High 5 Games.
“High 5 Games prides itself in developing the most innovative and unique math features in the world. We are the proven hit makers that all aspiring video slot content studios benchmark themselves against; Konami’s claim was not entirely surprising as many of our direct competitors would like to assume credit or strive to mimic our industry-leading gameplay models,” says Jon Fallon, General Counsel and VP of Legal Affairs of High 5 Games. Many thanks to the team at Holland & Hart for helping us win this judgment, as we believe this will be the first of many future patent litigation victories for High 5 Games.”
High 5 Games was represented by Holland & Hart’s IP litigation team, led by Bob Ryan, and including Chris Hadley (now at Jones Waldo), Teague Donahey, Jennifer Junkin, Joshua Randall, Tamara Reid, Ken Broda-Bahm, Nick Bouck, and Pamela Miller. High 5 Games’ Jon Fallon was also a leading participant in the Summary Judgment hearing.