United States District Court, S.D. California
CLAIM CONSTRUCTION ORDER
ROGER T. BENITEZ, District Judge.
In this patent infringement action, the parties seek construction of ten claim terms, as well as dispute the order of the claim elements in three claims, found in U.S. Patent No. 7, 076, 445. Having considered the papers filed by the parties and oral argument, the Court construes the terms as follows.
Plaintiff GameTek LLC is the assignee of the entire right, title, and interest in U.S. Patent No. 7, 076, 445 ("the 445 patent"), entitled "System and Methods for Obtaining Advantages and Transacting the Same in a Computer Gaming Environment." The 445 patent relates to the creation, use, and selling of "advantages" within a gaming context. ( See 445 patent, at Abstract, 11:54-14:62.) In the context of the 445 patent, "an advantage is a feature or element within an environment that one is not intended to have or does not normally have access to that provides an edge in overcoming a presented challenge." ( Id. at 1:33-36.)
According to the specification, "gaming enthusiasts are willing to pay for the opportunity to obtain an advantage." ( Id. at 1:54-55.) At the time of invention, "there [we]re no comprehensive systems and methods for the creation, integration, and transaction of advantages." ( Id. at 2:20-22.) Rather, gaming enthusiasts found advantages by "searching for free shortcuts and tricks (i.e. advantages) in on-line chat rooms... or  purchas[ing] and subscrib[ing] to publications" in the gaming context. ( Id. at 2:23-25.)
The 445 patent relates to methods of selling game objects that confer benefits on the purchaser in a computer game. ( See id. at 11:54-58, 13:34-48, 14:8-12.) Examples of such game objects include "weapons, " "ammunition, " "skill, " "information about the game environment, " and "ability to speed." ( Id. at 13:17-23.) The patent claims a computer program that permits creation of a user account, maintains a balance of real or virtual currency, and collects and stores demographic information. ( See id. at 11:61-63, 13:41-42, 14:17-18.) The program tailors offers to purchase game objects based on tracked activity, the current game environment, and the user's demographics. ( See, e.g., id. at 11:59-60, 12:13-19.)
In addition, the 445 patent claims a method for creating, transacting in, and integrating game objects, which generally requires the following steps: (1) determining the user's eligibility to purchase an item by allowing the user to select an object, setting the purchase price of the object (potentially determined by the user's prior purchase history or actions), and comparing the user's account balance to the price of the object; (2) displaying the purchase price of the object; (3) presenting the user with an offer to purchase the object; (4) permitting the user to purchase the object without interrupting the user's playing of the game; and (5) incorporating the purchased object into the game without interrupting the user's playing of the game. ( See id. at 11:67-12:27, 13:43-64, 14:15-39; see also id. at 2:65-3:3, 3:20-44, 3:54-58, 5:35-38, 6:21-26, 6:40-48.)
GameTek brings this action for infringement of the 445 patent. Specifically, GameTek asserts claims 1, 2, 4, 12, 13, 14, 15, and 17 against Defendant Big Viking Games Inc. f/k/a Tall Tree Games. GameTek originally brought suit against 21 defendants. Big Viking Games is the only remaining defendant, as all other defendants have been either dismissed or severed from the action.
The parties have submitted competing constructions for ten claim terms found in the 445 patent. In addition, the parties dispute the order of the claim elements in claim 1, claim 15, and claim 17.
I. LEGAL STANDARD
"It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (internal quotation marks omitted). Courts determine the meaning of disputed claim terms from the perspective of a person of ordinary skill in the art at the time the patent is filed. Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1335 (Fed. Cir. 2008). Claim terms "are generally given their ordinary and customary meaning." Phillips, 415 F.3d at 1312 (internal quotation marks omitted).
When construing claim terms, the court should first look to sources in the intrinsic record. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). First, "the claims themselves provide substantial guidance as to the meaning of particular claim terms." Phillips, 415 F.3d at 1314. Second, the claims "must be read in view of the specification, of which they are a part." Id. at 1315 (internal quotation marks omitted). The specification is usually "dispositive, " as "it is the single best guide to the meaning of a disputed term." Id. (internal quotation marks omitted). Third, the court should consider the patent's prosecution history, which is the record of proceedings before the Patent and Trademark Office ("PTO") and includes the prior art cited during the patent examination. Id. at 1317. However, "because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes." Id.
If the intrinsic evidence resolves the ambiguity in the disputed claim terms, then "it is improper to rely on extrinsic evidence." Vitronics, 90 F.3d at 1583. If ambiguities in the claim terms remain, however, courts may consider extrinsic evidence. Id. at 1584. Extrinsic evidence includes expert testimony, inventor testimony, dictionaries, and scientific treatises. Phillips, 415 F.3d at 1317.
II. THE 445 PATENT
The parties have submitted competing constructions for ten claim terms found in the 445 patent. In addition, the parties dispute the order of the claim elements of claim 1, claim 15, and claim 17. Each claim term and set of claim elements will be addressed in turn.
A. "gaming action"
The parties dispute the term "gaming action." The parties propose the following constructions. The Court's adopted construction is highlighted.
The Court will first address "gaming action." This term is used in independent claims 1, 15, and 17, and in dependent claims 2, 9, 10, 16, and 18. Claim 1 is representative:
A method of managing the operation of a game which... is programmed to control a gaming action for at least one of a plurality of users, said managing method using a programmed computer to effect the following steps:
a) tracking the activity of the at least one user in the course of the gaming action;
e) presenting to the at least one user an offer to purchase the game object dependent upon a group of game parameters comprising the tracked activity of the at least one gaming action of the at least one user...
f) permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user; and
g) supplying the at least one purchased game object to the at least one user without interrupting the gaming action of the at least one user....
(445 patent, at 11:54-12:26 (emphasis added).)
During the claim construction hearing, the parties agreed that the term "gaming action" should be construed as "the game being played." (Hearing Tr. [Docket No. 210], at 8-9, 11.) The parties disagreed only as to whether the purchase of a game object is part of the "gaming action." ( Id. at 9.) Big Viking Games argued that it is not part of the gaming action, while GameTek argued that it is. ( Id. at 9, 11-12.) Because the parties agreed that only this one dispute remains, the Court will address only the arguments relating to whether the purchase of a game object is part of the gaming action.
The Court finds that the purchase of a game object is not part of the gaming action. The claim language distinguishes between gaming action and the purchase of a game object. For instance, claim 1 provides: "f) permitting the at least one user to purchase the at least one game object at the set purchase price without interrupting the gaming action of the at least one user." (445 patent, at 12:20-22 (emphasis added); see also, e.g., id. at 8:23-25 (distinguishing between "gaming content" and "advantages dialog box" in Fig. 2).) "Gaming action" cannot interrupt itself, so purchasing a game object must be distinct from "gaming action." See Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (to maintain "internal coherence... the use of two terms in a claim requires that they connote different meanings").
In addition, the prosecution history supports this construction. In the Notice of Allowability, the patent examiner explained how the 445 patent could be distinguished from the prior art. The notice provided:
Some of the prior art gaming systems offer continuation' where play is resumed after a loss of game lives (e.g. SoulCalibur), an options screen where a player can obtain new gaming objects (e.g. Age of Empires), and/or an in-game object select option (e.g. Shrek 2). None of these systems, however, disclose offering a game object to a user for a price and allowing said user to access and incorporate said object in a game without interrupting the game. ...
To one of ordinary skill... the closest prior art teaching to Applicant's claims is a combination of the Martinez et al., Roskowski et al., and Heckel teachings where a user is presented, in a game environment, with an ad for a game object based on gameplay, the user downloads the object and the object is incorporated into the game. However, the instant invention is distinguished from the prior art singly or in combination as the system tracks a user's gaming action, the system determines whether a user is eligible to purchase a game object based on the user's account balance, the system presents an offer to the user to purchase the game object based on at least said tracked gaming action, the user purchases and is supplied with the game object without interrupting the gaming action, and the object is incorporated into the game.
(Gaedt Decl., Exh. C, at 4-6 (emphasis added).) This shows that the 445 patent could be distinguished from the prior art based on the way the user could purchase and be supplied with game objects without interrupting the gaming action, among other things. As discussed above, because "gaming action" cannot interrupt itself, purchasing a game object must be distinct from "gaming action."
GameTek argues that there are examples of purchasing in the specification that are part of the gaming action. First, GameTek points to the section of the specification that provides that "in a simulation role playing game, real world products and/or services advertisements may be integrated in the game's landscape such that a user may interact with the cyber world advertisements to transact real world products and/or services. " (445 patent, at 8:57-62 (emphasis added).) As an example of this, the user can enter the ABC Pizza Shop in order to purchase ABC Pizza. The ABC Pizza Shop is referred to as "interactive content 405" in the specification. ( Id. at 8:66.) According to GameTek, this means that the action of the game includes "interaction" with ABC Pizza Shop.
In the same vein, GameTek points to Figure 2 and Figure 4A. Both figures are "screen shots that display various features of the advantages and interactive advertisements system." ( Id. at 8:18-20.) Specifically, they are examples of how a user may be offered the opportunity to purchase more ammunition in a shooting game. In Figure 2, a dialogue box appears asking the user if he or she would like to purchase additional ammunition. The specification describes Figure 2 as depicting an "interactive game" comprising an "interactive advertisements system" embodied in advantages dialogue box 210. ( Id. at 8:20-38.) In regards to Figure 4, the specification provides that "[a]s the participating user runs low on ammunition (or some other ...