DCT
2:17-cv-02532
IGT v. Scrappy Elegant Gaming LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: IGT (Nevada)
- Defendant: Scrappy Elegant Gaming, LLC, Darryl Rosenblatt, and Jamie Leigh Klingler (Nevada)
- Plaintiff’s Counsel: McDonald Wilson LLP; Desmarais LLP
- Case Identification: 2:17-cv-02532, D. Nev., 09/29/2017
- Venue Allegations: Venue is alleged to be proper in the District of Nevada as the Defendants are residents of Nevada.
- Core Dispute: Plaintiff IGT seeks a declaratory judgment that its electronic gaming machines do not infringe Defendants' patent related to player-customizable game elements, and further seeks a declaration that the patent is invalid.
- Technical Context: The technology concerns the personalization of electronic slot machines, where players can substitute their own images or other media for standard in-game symbols and features.
- Key Procedural History: The complaint alleges that Defendants initiated contact in July 2017, claiming that IGT’s products infringed the patent-in-suit. Following communications between the parties, Defendants allegedly issued press releases and sent threatening communications intending to disrupt IGT's presence at the upcoming G2E gaming industry trade show. IGT filed this declaratory judgment action in response to those alleged threats. The complaint also seeks a declaration of invalidity, citing U.S. Patent 7,048,630 as invalidating prior art.
Case Timeline
| Date | Event |
|---|---|
| 2014-06-27 | '970 Patent Priority Date |
| 2017-02-28 | '970 Patent Issue Date |
| 2017-07-31 | Defendants allegedly first contact IGT via an intermediary (approx. "late July 2017") |
| 2017-08-22 | IGT receives letter from Defendants' counsel alleging infringement |
| 2017-09-12 | Counsel for IGT and Defendants meet to discuss allegations |
| 2017-09-24 | Defendants issue press release alleging infringement by IGT products |
| 2017-09-25 | IGT counsel receives anonymous text message regarding the dispute |
| 2017-09-25 | Defendant Rosenblatt issues a second press release threatening IGT's G2E presentations |
| 2017-09-29 | Complaint for Declaratory Judgment filed by IGT |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,582,970 - "Electronic Gaming Device and Method of Providing Games Having Player Provided Game Elements"
- Patent Identification: U.S. Patent No. 9,582,970, "Electronic Gaming Device and Method of Providing Games Having Player Provided Game Elements", issued February 28, 2017 (’970 Patent).
The Invention Explained
- Problem Addressed: The patent's background section notes that slot machine manufacturers spend millions of dollars on research and licensing fees to find symbols and brands that appeal to players, describing this as "guess work" in a costly "attempt to lure the player." (’970 Patent, col. 2:38-47).
- The Patented Solution: The invention proposes a system that allows players to personalize a gaming machine by using their own digital content—such as photos, music, or videos from a personal mobile device—to replace the machine's default game elements like reel symbols or background sounds (’970 Patent, Abstract; col. 3:25-34). The system receives this "player provided" content and incorporates it into the wagering game, creating a customized experience.
- Technical Importance: This approach aimed to increase player engagement and machine profitability by leveraging user-generated content from personal devices, thereby reducing the need for expensive, third-party licensed content. (’970 Patent, col. 2:50-56).
Key Claims at a Glance
- The complaint seeks a declaration of non-infringement of the ’970 Patent generally, without specifying claims. (Compl. ¶34). Independent claims 1, 9, and 17 are representative.
- Independent Claim 1 (System Claim) recites:
- A display device for displaying a game to a player.
- An input device for receiving player input.
- A database including game features and a list of game elements, where the list includes at least one "player provided game element" comprising data transmitted to the database before being associated with a game feature.
- A controller that initiates a game, retrieves a game feature, determines if a "player provided game element" is associated with it, randomly determines a game outcome, and displays the outcome including the "player provided game element."
III. The Accused Instrumentality
Product Identification
- The complaint identifies the "Accused Products" as IGT products that use the CrystalCurve™ ULTRA gaming machine, specifically naming the "ELLEN™" and "TMZ™" branded slot machines. (Compl. ¶¶18, 32).
Functionality and Market Context
- According to Defendants' alleged assertions described in the complaint, the accused functionality is a "feature for enabling players to replace a game symbol with a picture taken of the player." (Compl. ¶18). The complaint states that these products were to be featured at the Global Gaming Exposition ("G2E"), described as the "most important annual trade show for the gaming industry," highlighting their commercial importance to IGT. (Compl. ¶¶13-14).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. IGT denies that its products meet the limitations of the ’970 Patent’s claims, asserting specifically that "no Accused Product contains a 'player provided game element' as claimed in the '970 patent." (Compl. ¶34). The complaint alleges that Defendants have made public accusations of infringement through press releases and online videos. (Compl. ¶¶24, 26-28). One such video allegedly threatens "enhanced damages" and legal action against IGT's customers. (Compl. ¶27). The complaint also provides a screenshot of a text message sent to IGT's counsel from an anonymous number, which warns IGT to stop "playing games" and threatens "a tremendous amount of money and embarrassment." (Compl. p. 7).
- ’970 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality (as characterized by IGT's denial) | Complaint Citation | Patent Citation |
|---|---|---|---|
| an electronic gaming device for allowing a player to play a game having player provided game elements, comprising: | The Accused Products are electronic gaming machines. | ¶32 | col. 16:57-59 |
| a database including ... a list of game elements including at least one player provided game element being associated with at least one of the plurality of game features | IGT asserts its Accused Products do not contain a "player provided game element" as claimed. | ¶34 | col. 17:1-6 |
| the player provided game element comprising data transmitted to the database prior to the player provided game element being associated with the at least one of the plurality of game features | The complaint's central non-infringement theory is that the Accused Products lack this element entirely. | ¶34 | col. 17:3-6 |
| a controller ... configured to: ... determine by the processor during the gaming session if the list of game elements includes a player provided game element associated with the retrieved game feature | Since IGT denies the existence of the "player provided game element," it implicitly denies that its controller performs this determination step as claimed. | ¶34 | col. 17:19-22 |
| display on the display device the outcome of the game including the retrieved game feature and the player provided game element associated with the retrieved game feature | IGT denies that its products display a "player provided game element" as claimed. | ¶34 | col. 17:26-29 |
- Identified Points of Contention:
- Scope Questions: A central dispute will be the proper construction of "player provided game element." The question is whether the functionality in IGT's machines (allegedly letting a player's photo become a symbol) falls within the scope of this term as defined by the patent's claims and specification.
- Technical Questions: The complaint raises the question of whether the accused IGT products actually "transmit" data to a "database" where it is stored "prior to" being "associated" with a game feature, as required by claim 1. The specific architecture and data handling method of the Accused Products will be compared against these claim requirements.
V. Key Claim Terms for Construction
- The Term: "player provided game element"
- Context and Importance: This term is the foundation of IGT's stated non-infringement position. (Compl. ¶34). The outcome of the infringement portion of the case may depend entirely on how this term is construed by the court. Practitioners may focus on this term because its definition distinguishes between a generic game and the personalized experience the patent claims to invent.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element broadly as "personalized elements such as, for example, photos, music, videos, and/or images from a personal mobile computing device" (’970 Patent, col. 3:25-30) and content that can be "emailed directly to the machine" or transmitted via a mobile "App" (col. 4:50-61). This could support a broad definition covering any player-sourced content.
- Evidence for a Narrower Interpretation: Independent claim 1 requires the "player provided game element" to be "data transmitted to the database prior to the player provided game element being associated with the at least one of the plurality of game features." (’970 Patent, col. 17:3-6). This language could be argued to require a distinct, two-step process of transmission/storage first, and association later, potentially excluding a system where an image is captured and used transiently in a single, integrated step.
VI. Other Allegations
The complaint does not allege infringement, but rather seeks a declaration of non-infringement and invalidity. It also contains several non-patent counts.
- Willful Infringement: While IGT, as the plaintiff, does not allege willfulness, it notes that Defendants have threatened "enhanced damages" in a publicly available video, which suggests Defendants' belief that any infringement by IGT would be willful. (Compl. ¶27).
- Unfair Competition and Tortious Interference: IGT brings counts for Unfair Competition, Tortious Interference with Prospective Economic Advantage, and Tortious Interference with Contractual Relations. (Compl. ¶¶44-62). These claims are based on allegations that Defendants made false and misleading public statements about IGT and its products, including in press releases and YouTube videos, with the intent to harm IGT's business relationships and disrupt its participation in the G2E trade show. (Compl. ¶¶54-56, 60).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the claim term "player provided game element," which the patent requires to be transmitted to a database prior to its association with a game feature, be construed to read on the functionality of IGT’s accused gaming machines?
- A key procedural question will be the basis for declaratory judgment: Do the Defendants' alleged pre-suit actions—including public press releases, YouTube videos threatening customers, and anonymous text messages—create a sufficiently "substantial, immediate, and real controversy" to give the court jurisdiction to hear IGT's case?
- A central validity question will be the impact of prior art: Does the cited Berg patent (U.S. Patent 7,048,630), or other available prior art, disclose the claimed invention of integrating player-provided content into a wagering game, thereby rendering the claims of the '970 patent invalid as either anticipated or obvious?