Epic Tech LLC v. Pen T

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Epic Tech, LLC (Delaware / Georgia)
  • Defendant: Pen-Tech Associates, Inc. (Georgia)
  • Plaintiff’s Counsel: Baker, Donelson, Bearman, Caldwell & Berkowitz, PC
• Case Identification: 1:20-cv-02428, N.D. Ga., 06/05/2020
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Georgia because Defendant is incorporated and has its principal place of business there, and has committed alleged acts of infringement within the district.
• Core Dispute: Plaintiff alleges that Defendant’s electronic gaming products, particularly the "Derby Dash" game, infringe a patent related to a method for enabling a secondary, networked "game-in-game" feature.
• Technical Context: The technology involves networked electronic gaming systems, specifically methods to enhance player engagement by offering a chance to win prizes from a communal, background game while playing a primary, individual game.
• Key Procedural History: The complaint alleges a prior, long-term business relationship (2004-2016) where Defendant's sister company, GTSource, Inc., acted as an outsourced assembly and installation provider for Plaintiff. Plaintiff claims this relationship gave Defendant's ownership and personnel intimate familiarity with Plaintiff's proprietary technology and products, which allegedly embody the patent-in-suit.

Case Timeline

Date	Event
2004-08-01	Start of alleged business relationship between Plaintiff and GTSource
2011-12-04	’317 Patent Priority Date
2013-10-01	’317 Patent Issue Date
2016-03-31	End of alleged business relationship between Plaintiff and GTSource
2020-06-05	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,545,317 - “Gaming System and Method”

• Issued: October 1, 2013 (’317 Patent)

The Invention Explained

• Problem Addressed: The patent background states that conventional electronic sweepstakes games "do not always keep the player engaged" (’317 Patent, col. 1:19-24).
• The Patented Solution: The invention describes a "game-in-game" system where a player at an individual terminal plays a primary game, and this play can earn them a "bonus time period" of eligibility to win a prize from a separate, secondary game that plays simultaneously in the background (’317 Patent, Abstract; col. 3:9-19). This secondary game is common to a plurality of networked terminals and can be triggered by events across the network, creating a communal prize opportunity that runs in parallel with the player's individual game (’317 Patent, col. 3:20-28). The system architecture is depicted in Figure 1, showing multiple game terminals (140, 170) networked to a central server (120) and a secondary game display (190) (’317 Patent, Fig. 1).
• Technical Importance: This method aims to increase player retention and spending by layering a communal, persistent prize opportunity on top of standard, individual electronic game play (’317 Patent, col. 3:17-19).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2, 4, 5, 7, 8, 9, and 10 (Compl. ¶52).
• The essential elements of independent claim 1 are:
  • Receiving a request from a player to play a game at a terminal.
  • Facilitating play of the game at the terminal.
  • Establishing a bonus time period for the player in response to the request.
  • Receiving an indication that a second game is played at a particular time.
  • Determining if the bonus time period coincides with the play of the second game.
  • Determining, while the first game is being played, if the second game results in a prize.
  • If the second game results in a prize during the bonus time period, awarding a portion of the prize to the player, where a server conducts all play of the second game without player input after it is triggered.

III. The Accused Instrumentality

Product Identification

• Defendant's game known as "Derby Dash" and potentially other unknown games sold under the "Encore Gaming Group" brand (Compl. ¶¶12, 29, 31).

Functionality and Market Context

• The complaint alleges that Derby Dash is a "networked, time-limited group game" offered on electronic gaming machines (Compl. ¶29). A photograph of a bank of gaming machines with a large overhead "Derby Dash" screen suggests its use in a commercial gaming environment (Compl. p. 9). The accused functionality involves players at individual terminals playing a primary game, which makes them eligible to win prizes from a secondary "Derby Dash Jackpot game" that is "triggered" to play periodically (Compl. ¶¶29, 38, 40; p. 11). The complaint alleges that these products are offered in the same gaming spaces as Plaintiff's own "Community Prize" game, making them direct competitors (Compl. ¶30). A screenshot from the accused game describes how play is increased "to collect more Shares of the Derby Dash Jackpots," suggesting a link between primary gameplay and secondary prize eligibility (Compl. p. 11).

IV. Analysis of Infringement Allegations

’317 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a. receiving a request from a player to play a game at a terminal;	The Derby Dash game allegedly receives a request from a player to play a game at a terminal (Compl. p. 9).	¶34	col. 11:46-48
b. at least partially in response to receiving the request, facilitating play of the game at the terminal;	In response to the player's request, the Derby Dash game facilitates play at the terminal.	¶36	col. 11:49-51
c. at least partially in response to receiving the request from the player, establishing a bonus time period for the player;	The complaint alleges the Derby Dash game establishes a "bonus time period" for the player, identifying a "sliding bar timer at the top of the game" as evidence of this feature (Compl. p. 11).	¶38	col. 11:52-54
d. receiving an indication that play of a second game occurs at a particular point in time;	The system receives an indication that the secondary "Derby Dash" game is triggered to play at a specific time. A screenshot with a callout states, "Derby Dash is triggered at a particular point in time" (Compl. p. 12).	¶40	col. 11:55-57
e. determining if the bonus time period runs coincident with the particular point in time;	The system determines if the "sliding bar timer" is active when the secondary game is triggered.	¶42	col. 11:58-60
f. determining, while the player is playing the first game, whether play of the second game results in a prize;	The system determines if the secondary game results in a prize. A screenshot with a callout states, "The Derby Dash game determines whether the play of the second game results in a prize" (Compl. p. 13).	¶44	col. 11:61-63
g. if play of the second game results in a prize and the bonus time period runs coincident with the particular point in time, awarding at least a portion of the prize to the player...a server conducts all play...without input from the player...;	The complaint alleges that if a prize results during the bonus period, a portion is awarded to the player, and that a server conducts the play of the second game. A screenshot shows prize awards being displayed (Compl. p. 14).	¶46	col. 11:64-col. 12:4

Identified Points of Contention

• Scope Questions: A central question will be whether the accused "sliding bar timer" (Compl. ¶38) meets the definition of a "bonus time period" as contemplated by the patent. The patent specification describes a "countdown timer" (’317 Patent, col. 6:52), and the court will need to determine if the claim language is limited to that specific embodiment.
• Technical Questions: Claim 1 requires that "a server conducts all play of the second game without input from the player" after being triggered. The complaint alleges this occurs (Compl. ¶46), but the evidence provided (screenshots of game outcomes) does not explicitly detail the underlying system architecture. A key factual dispute may arise over whether the accused system's architecture matches the claimed server-based, automated execution of the secondary game.

V. Key Claim Terms for Construction

The Term: "bonus time period"

• Context and Importance: This term is the gateway to prize eligibility and is central to the invention's method of engaging players. The infringement analysis hinges on whether the accused game's "sliding bar timer" (Compl. ¶38) constitutes a "bonus time period."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The plain language of claim 1 does not specify the form or features of the "bonus time period," only that one is "establish[ed]" in response to a player's request (’317 Patent, col. 11:52-54). This may support an interpretation covering any time-based window of eligibility.
  • Evidence for a Narrower Interpretation: The specification describes a specific embodiment as a "countdown timer 302" that changes color to indicate the time remaining (’317 Patent, col. 6:50-col. 7:5). A defendant may argue this detailed description limits the scope of the term to a timer that actively counts down.

The Term: "a server conducts all play of the second game without input from the player"

• Context and Importance: This limitation defines the automated, background nature of the secondary game and points to a specific client-server architecture. The validity of the infringement allegation depends on whether the accused Derby Dash system operates this way.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The term "server" is used throughout the specification to refer to a central component (e.g., "server 120") that manages game logic and data, suggesting a functional definition rather than a specific hardware configuration (’317 Patent, col. 4:26-33).
  • Evidence for a Narrower Interpretation: The patent's Figure 1 explicitly depicts a distinct "Server 120," "Secondary Game Terminal 130," and individual "Game Terminal 140," which a party could argue illustrates a specific, required architecture. The phrase "without input from the player" could be construed narrowly to mean absolutely no player interaction after the trigger, a standard that the accused product may or may not meet.

VI. Other Allegations

Indirect Infringement

• The complaint does not plead a separate count for indirect infringement under 35 U.S.C. § 271(b) or (c). The infringement allegations are for direct infringement under § 271(a) (Compl. ¶53; p. 16).

Willful Infringement

• The complaint alleges that Defendant's infringement has been and continues to be willful (Compl. ¶57). The factual basis for this allegation appears to be the prior business relationship where Defendant's affiliate, GTSource, allegedly became "intimately familiar" with Plaintiff's products, business model, and proprietary software, which Plaintiff claims embody the patented invention (Compl. ¶¶10-11). The complaint also alleges Defendant is "copying" Plaintiff's game feature (Compl. ¶28). These allegations suggest a claim of pre-suit knowledge and deliberate copying.

VII. Analyst’s Conclusion: Key Questions for the Case

This case presents a dispute between direct competitors with a history of a prior business relationship. The outcome will likely depend on the court’s resolution of several key questions:

• A core issue will be one of claim construction: Does the term “bonus time period,” as defined by the patent, read on the accused product’s “sliding bar timer”? Resolution will depend on whether the court adopts a broad, functional definition or one limited by the specific “countdown timer” embodiment described in the specification.
• A key evidentiary question will be one of technical architecture: Does the accused Derby Dash system utilize a “server” to conduct the secondary game automatically and “without input from the player” as strictly required by the claim language? This will necessitate discovery into the technical operation and source code of the accused product to determine if it aligns with the patent’s claimed method.
• A third central question will concern willfulness: Do the facts surrounding the prior business relationship between Plaintiff and Defendant’s affiliate, as alleged in the complaint, suffice to establish that Defendant had pre-suit knowledge of the patent and deliberately copied the claimed invention, thereby exposing it to enhanced damages?