Legal Case Summary

. The specification here clearly discloses a structure capable of performing the claim functions. It is not a generic microprocessor or any type of gaming machine, it's specific. It is a microprocessor-based gaming machine with appropriate programming. So already, this specification defines a specific purpose machine for performing the claim functions. In coupled with the undisputed knowledge of the person of ordinary skill in the art, concerning the durability of the easily program of functions that are claimed, under this court's precedent and all voice, apenal docile and many others, that is enough to render the claim definite. Aristocrats expert define a person of ordinary skill in the art as one having several years of experience in the design of the microprocessor in the design of games in the gaming industry with typically a B.S. and engineering, and with the ability to program microprocessors. In the record below established, without dispute we believe that the destruction described in the specification, which is microprocessor-based gaming machines, was the standard at the time the 102 application was 5-1994. Aristocrats chief technology officer, that was Mr. Phillips, testified without contradiction that microprocessor-controlled video slot machines have been common in the gaming industry since the 1990s

. It was common practice to build on existing game platforms and to modify the software when needed as a J.A. 732. In Aristocrats expert state, it again without contradiction for microtetees expert, that such modifications to the software here would be a simple and straightforward programming task, well within the capabilities of person of ordinary skill. So, in this case, we believe is on all fours with docile, and app, and all voice, and others. For example, in all voice, this court quoted with approval the declaration of the pantheist technical expert that a skilled artisan reading the specification would recognize that preparing the software instruction at issue would be a trivial matter, well within the reach of the person of ordinary skill. And so quoting the court's finding in KSR that a person of ordinary skill is also a person of ordinary creativity, not on a time of time. The court in all voice reverse, the finding of indefiniteness, holding that the person of ordinary skill would understand the bounds of the claim. And that is true here as well. The specification discloses a gaming machine using a microprocessor with appropriate programming, and it was undisputed that one of skill in the art could easily implement that process. So, the appropriate programming, I guess, is the catch

. What I mean, appropriate really is awfully open-ended. It's pretty much the same as saying anything it works, as far as I can say. But again, gets us into the basic problem here, which is we're dealing with, both in this case, and in the last one, the problem of functional claim. And we know that Congress did not want to have pure functional claim. So, they put some significant, we think, restraints on functional claims. To say appropriate programming suggests functionality is all you need to have. I don't believe so, Your Honor. Because here, the specification clearly describes a microprocessor-based gaming machine as the structure with appropriate programming. Now, the appropriate programming is the functions that are defined. I think we didn't have the right microprocessor. This is the consequence of a high-tech program

. We need a filter on the envelope, but the functions, there are three specific functions. And this is not a question of any microprocessor-based gaming machine, per se, with fault in the scope of the claim. There are very specific identified functions here. In particular, the function of how the program or the microprocessor defines the winning opportunities is based on a specific formula. It's set forth in the specification. Indeed, it's set forth in the claim. So, this is not, I believe, a question of simply any program will do. It has to be the program that's implemented in the claim function. Now, in the DOSO case, this court made clear that if algorithms or if programming is routine and known to a person of ordinary skill, they are specific programs, which perform those functions, do not mean to be disclosed. That's what the DOSO said. As long as known algorithms exist, here appropriate programming falls within the same scope of the DOSO case, because the testimony was undisputed that a person of ordinary skill would easily be able to understand and write a program that could implement the claim functions

. Now, what does IGT say? They don't really seriously contest that the specification contains the structure of a microprocessor-based gaming machine with appropriate program. Instead, they rely on the district course reliance on a supposed bright line rule that IGT itself advocated that there must be a specific program or algorithm disclosed in the specification else that claims invalid. But the cases that the district court relied on are WMS gaming and Harris, and neither WMS gaming nor Harris, discussed indefiniteness at all. The cases that you address indefiniteness are the DOSO case, the medical instrumentation case, the intel case, where this court is confirmed that as long as a person of ordinary skill would be easily able to implement the program, that are associated with the functions, that that is enough to satisfy the definition requirement. This court has never established to our knowledge a rigid algorithm rule that must be applied in every means plus function case. Rather, instead, it has considered each case on a specific fast and has always focused on the knowledge of the one of ordinary skill in the art. And as we've explained here, there was simply no dispute that one of the skill could program the disclosed microprocessor-based gaming machine to perform the claim functions. In fact, if you compare the disclosure here to the disclosure in WMS gaming, the patent, in that case, very similar technology, of course, the disclosure here contains the mathematical formula, the defines the winning opportunity selections, and it contains tables of examples, which, if anything, is more explicit than the single figure, or figure six in the WMS gaming machine. Well, yes, you're supposed to, I'm a competitor, and I want to achieve the same function as your patent achieves, but I want to do it with a different way of getting there with a microprocessor. Is there any way I can do that without infringing your claim, your patent? It's a question of infringement here, Art. Well, I know it is, but what I'm really asking is, of course, do you cover all means conceivable disclosed or possibly arising the future for getting to the function? We would believe that as long as it is a microprocessor-based gaming machine that is performing the claim functions and that therefore falls within the scope of the claim, then arguably that would fall within the scope of this claim

. Can you think of an example where it wouldn't be? I can't think of an example, but it certainly could be later down the road that some technology would be developed, and then the question is whether- Keeping within the microprocessor. Yeah, keeping within the microprocessor? No, I believe the answer to that question is no, it would fall within the scope of the claim. The question of indefiniteness, of course, is one that's asked as of 1994. And in 1994, again, the testimony was under bugged that any knowledge and personal or any skill will be able to implement this invention. If 10 years from now there becomes a question about what would be equivalent to its disclosed and specification, that would be a question we'd have to answer later down the road, but for the purposes of indefiniteness. We believe that the disclosure is sufficient. If I heard your earlier answer, I don't think you'd ever get to an equivalence question. What I think your earlier answer was that there would be literal infringement. And there's nothing that's employed a microprocessor to achieve these functions. A microprocessor that has been programmed to implement these three functions in the gaming machine, I believe, in fall and scope of that claim. You did it earlier

. I wanted to briefly address the issue, which is simply whether or not there has been sufficient linking to the disclosure and specification with the claim functions. And again, this must be viewed through the eyes of the person of ordinary skill. And as this course stated in Biamondino, it's not a high bar. All that is necessary is that one skill in the R and be able to understand what structure disclosing specification performs the function. Here, the specification stated at the very beginning of the death of the preferred embodiments that the methodology of the embodiments would be introduced on any standard microprocessor-based gaming machine. And we believe that it would be common sense to a person several years of experience in the gaming industry that they would clearly be able to link the claim functions to that microprocessor-based gaming machine. If there are no further questions, I'd like to say my remaining time for a while. We'll do that, Mr. Ferguson. Mr. Sous

. Morning, Your Honor, Mr. Jeffrey Sous, for the Apple E's, may I please the court? I think your presence question hit on the fundamental defect here, which is the use of the word appropriate to modify programming. All gaming machines today are run by programmed microprocessors, which distinguishes them in addition to the functions is the program. Simply putting the word appropriate before a program is the same as claiming any computer-based gaming machine that performs the reciting functions as Mr. Ferguson just conceded. And yet there could be dozens of different ways to perform these functions. If you allow this patent to cover all of them, that's going to per close inventors from developing superior programs and therefore has been a hard innovation. Under aristocrats theory, you could obtain a device patent just by imagining a novel function. You just state the function in the claim followed by a means term and then in the written description you throw in microprocessor-based gaming machine with appropriate programming. If there were a patent infringement suit, how would you compare the accused devices to the patent? As long as it performs the functions produced the results that you're looking for, it would automatically infringe under their theory or at least as probably the only reasonable meaning of the term appropriate is that it works. It's functional

. And so this is again claiming in functional terms. But there's a lot of disclosure here. Well, there isn't a lot of disclosure here. In terms of structure, you've got a microprocessor-based gaming machine which they all are. You have a program that's undefined, could be any program. And if that is all programs, any program that produces these functions. Now, it's true on appeal that aristocrat has pointed to figures and tables in the patent. They didn't raise that below a structure. But even if it's not waived, all you have to do is look at those figures and tables and you will see that they are nothing except examples of a raise of selected symbol positions and paylines. In other words, what aristocrat calls winning opportunities. They don't give you a clue as to what the machine would have to do in order to determine what those paylines would be or how it would pay a price by figuring out whether the selected symbol positions matched up with the pre-determined paylines

. There's nothing whatsoever to give you an idea of what steps the program would have to go through in order to achieve that. And that's why it's just way too broad because as Judge Breisen pointed out, it would cover any computer-based gaming machine that performs these functions. And that's not disclosure of structure. In fact, the impact of allowing use of a boundless term like appropriate would extend beyond the gaming machine industry. I mean, you can start having MPF claims, a means plus function claims disclosing only appropriate transmission systems or appropriate connectors. And this is in conflict with the mandate of the patent laws, the distinct and particulary requirement. And I think that's why this court has insisted that computer-generated means plus function claims disclose a special purpose computer. Something that's more limited in terms of what the computer will do rather than just the generic general purpose computer as is disclosed in the 102. Tells what case do you think or what case or what cases in this court most definitely clearly in your view unequivocally state that requirement? That's three adjectives. I think if you look at the WMS gaming and Harris cases, I mean, there are a little different, every case is a little different. You say look at those in tandem. If you look at WMS gaming, there was one algorithm disclosed. And this court said, well, look, you can't claim structure that's broader than that single algorithm. And it was very similar in the Harris case. There was a two-step algorithm disclosed that said you couldn't claim structure over all algorithms, including one step one. Well, here where there's no algorithm disclosed or no limitation on the program, what's so ever, how could you have structure that's so broad that it would cover any and all computer-based gaming machines that perform this function? So I think based on those precedents, the algorithm rule that the district courts have adapted really follows from those precedents. But I don't think that it's necessary for this court to adopt that rule in order to affirm. All that's actually necessary is for you to say that appropriate programming is not sufficient disclosure of structure because the word appropriate is not really a limitation. Now if a standard micro-processed base is not sufficient structure, what do you need here? What should they have had? Programming, source code, object code? What is the problem? No, I don't think it's necessary to have a source code, but something to indicate what steps the program would go through. And one of the district courts suggested that a flow chart might sell it. So what's not necessary, like council mentioned that in DOSL, this court said that you don't need an algorithm. What court actually said in DOSL is that you don't need a mathematical algorithm

. If you look at WMS gaming, there was one algorithm disclosed. And this court said, well, look, you can't claim structure that's broader than that single algorithm. And it was very similar in the Harris case. There was a two-step algorithm disclosed that said you couldn't claim structure over all algorithms, including one step one. Well, here where there's no algorithm disclosed or no limitation on the program, what's so ever, how could you have structure that's so broad that it would cover any and all computer-based gaming machines that perform this function? So I think based on those precedents, the algorithm rule that the district courts have adapted really follows from those precedents. But I don't think that it's necessary for this court to adopt that rule in order to affirm. All that's actually necessary is for you to say that appropriate programming is not sufficient disclosure of structure because the word appropriate is not really a limitation. Now if a standard micro-processed base is not sufficient structure, what do you need here? What should they have had? Programming, source code, object code? What is the problem? No, I don't think it's necessary to have a source code, but something to indicate what steps the program would go through. And one of the district courts suggested that a flow chart might sell it. So what's not necessary, like council mentioned that in DOSL, this court said that you don't need an algorithm. What court actually said in DOSL is that you don't need a mathematical algorithm. But if you look at the word algorithm in the broad sense of at least laying out what steps the computer has to go through, I mean consider what the functions were in this patent of predetermining these pay lines. They're figuring out how to pay a price based on the selected simple positions by the player. There has to be some indication of what the computer would do to perform those functions, what the program would do. Because otherwise, as Judge Bryson said, every computerized gaming machine that produces these functions is covered and that's way too broad. I'm going to ask you an unusual follow-up question. Did you look at the 951 patent in the first case? Not carefully. I think if that had a lot of boxes and directions. Yeah, well, again, this patent has other things in it, but all of them are functioning. In fact, if you look at Aristocrest's library at page 24, it describes the figures and tables as merely, and this is a quote, corresponding illustrations of the performed functions. Well, these are just illustrations of the functions that can't be structured because structured can't be disclosed in functional terms as this course is implemented. I certainly understand you already know about how function cannot be allowed to be the essential or practical predicate for patentability solely

. But if you look at the word algorithm in the broad sense of at least laying out what steps the computer has to go through, I mean consider what the functions were in this patent of predetermining these pay lines. They're figuring out how to pay a price based on the selected simple positions by the player. There has to be some indication of what the computer would do to perform those functions, what the program would do. Because otherwise, as Judge Bryson said, every computerized gaming machine that produces these functions is covered and that's way too broad. I'm going to ask you an unusual follow-up question. Did you look at the 951 patent in the first case? Not carefully. I think if that had a lot of boxes and directions. Yeah, well, again, this patent has other things in it, but all of them are functioning. In fact, if you look at Aristocrest's library at page 24, it describes the figures and tables as merely, and this is a quote, corresponding illustrations of the performed functions. Well, these are just illustrations of the functions that can't be structured because structured can't be disclosed in functional terms as this course is implemented. I certainly understand you already know about how function cannot be allowed to be the essential or practical predicate for patentability solely. But on the other end of the spectrum, we have examples of cases in which the structure is so obvious and is usual in some cases, at least not really part of the inventive, or like a better term point of novelty, that it's unclear to me where we draw the line with respect to those kinds of inventions. For example, suppose you have a machine which is described in the patent as a device that's designed to show the person their total winnings and the more they won, the larger the numbers appear before the person on the top of the slot machine. Part of the claim says a computer microprocessor programmed with appropriate programming to add up the winnings. That's so simple that you hardly need to have a description of any detail of the process of adding numbers in a micropudent. Would that be enough to invalidate that claim? I think it depends. I mean, if it suggests the steps that we have to go through some adding steps, there's a lot of things to do. Sure, one of the steps is adding. It's at least the process winnings. The limitation. But I think it could be a concern there too, because couldn't somebody come along and invent a microprocessor based gaming machine that adds figures more efficiently. So some kind of limitation, if you're looking for some kind of a rule, there needs to be some limitation

. But on the other end of the spectrum, we have examples of cases in which the structure is so obvious and is usual in some cases, at least not really part of the inventive, or like a better term point of novelty, that it's unclear to me where we draw the line with respect to those kinds of inventions. For example, suppose you have a machine which is described in the patent as a device that's designed to show the person their total winnings and the more they won, the larger the numbers appear before the person on the top of the slot machine. Part of the claim says a computer microprocessor programmed with appropriate programming to add up the winnings. That's so simple that you hardly need to have a description of any detail of the process of adding numbers in a micropudent. Would that be enough to invalidate that claim? I think it depends. I mean, if it suggests the steps that we have to go through some adding steps, there's a lot of things to do. Sure, one of the steps is adding. It's at least the process winnings. The limitation. But I think it could be a concern there too, because couldn't somebody come along and invent a microprocessor based gaming machine that adds figures more efficiently. So some kind of limitation, if you're looking for some kind of a rule, there needs to be some limitation. For example, in the DOSL case, which the risk to correct relies on so heavily, there were a couple of disclosures there that are much more limiting than those here. It disclosed known algorithms used to solve standard equations. Well, that's pretty broad, but it's a lot narrower than appropriate programs. In addition, the DOSL case disclosed an algorithm of a series of steps, namely data reception, computation, solving equations, performing matrix and pseudo-conversion operations, and output to a display. There's just nothing like that here at all. All you've got is appropriate programming. And so in DOSL, you had a special purpose computer, as this court has defined it. You did not have the generic computer that they're claiming here as a way of foreclosing anybody else in the industry from developing a game that could perform similar functions. Now, a risk to create relies heavily on its experts' declarations. Declarations that he could have implemented, the game control means through the disclosures in the 102. Well, first of all, the test is in whether he could have implemented them, the test is whether the specification discloses them

. For example, in the DOSL case, which the risk to correct relies on so heavily, there were a couple of disclosures there that are much more limiting than those here. It disclosed known algorithms used to solve standard equations. Well, that's pretty broad, but it's a lot narrower than appropriate programs. In addition, the DOSL case disclosed an algorithm of a series of steps, namely data reception, computation, solving equations, performing matrix and pseudo-conversion operations, and output to a display. There's just nothing like that here at all. All you've got is appropriate programming. And so in DOSL, you had a special purpose computer, as this court has defined it. You did not have the generic computer that they're claiming here as a way of foreclosing anybody else in the industry from developing a game that could perform similar functions. Now, a risk to create relies heavily on its experts' declarations. Declarations that he could have implemented, the game control means through the disclosures in the 102. Well, first of all, the test is in whether he could have implemented them, the test is whether the specification discloses them. But in addition, suppose that he could implement a program. Again, the same problem is there, as long as the claim is any computer-based gaming machine with appropriate program, nobody else could come along and come up with a better program. And that's the fundamental defect with allowing the word like appropriate to define a program. A computer-based can not be sufficient structure for at least for a gaming machine these days. It's got to be programmed. And if you don't have any indication that the limit on the program is, then it just does not meet the definite requirement. I wanted to point out one other thing that struck me as I was preparing for this argument. When you look at the patent, it describes game control means by using another means term. It says by means of appropriate program. And so game control means asserted in the claim amounts to an appropriate program in means. And that's what it's wordplay

. But in addition, suppose that he could implement a program. Again, the same problem is there, as long as the claim is any computer-based gaming machine with appropriate program, nobody else could come along and come up with a better program. And that's the fundamental defect with allowing the word like appropriate to define a program. A computer-based can not be sufficient structure for at least for a gaming machine these days. It's got to be programmed. And if you don't have any indication that the limit on the program is, then it just does not meet the definite requirement. I wanted to point out one other thing that struck me as I was preparing for this argument. When you look at the patent, it describes game control means by using another means term. It says by means of appropriate program. And so game control means asserted in the claim amounts to an appropriate program in means. And that's what it's wordplay. It's not structure. And it doesn't meet the mandate of the statute. Finally, I just wanted to respond to aristocrats' arguments in their briefs that the district court aired by not engaging in a full Markman claim construction before leaning on a definiteness. Aristocrat has no authority for formalistic requirement, but more important, it just wouldn't have made any difference here because for purposes of this motion, we can accept aristocrats' construction of the functions in full. And yet you're still left with the only structure disclosed as a computer with appropriate programming. And that just doesn't suffice. And in granting summary judgment, the district court took the heart of this court said in Honeywell, which is that it claims and valid as indefinite if it's not amenable to construction. So to conclude, I would just say that the impact on the public and on innovation would be intolerable if you could get a patent just by disclosing a computer with appropriate programming. The district court is ruling that such a patent is spedily indefinite who's consistent with the statute with this court's precedence and with sound policy and should be affirmed. Thank you, Mr. Sells

. It's not structure. And it doesn't meet the mandate of the statute. Finally, I just wanted to respond to aristocrats' arguments in their briefs that the district court aired by not engaging in a full Markman claim construction before leaning on a definiteness. Aristocrat has no authority for formalistic requirement, but more important, it just wouldn't have made any difference here because for purposes of this motion, we can accept aristocrats' construction of the functions in full. And yet you're still left with the only structure disclosed as a computer with appropriate programming. And that just doesn't suffice. And in granting summary judgment, the district court took the heart of this court said in Honeywell, which is that it claims and valid as indefinite if it's not amenable to construction. So to conclude, I would just say that the impact on the public and on innovation would be intolerable if you could get a patent just by disclosing a computer with appropriate programming. The district court is ruling that such a patent is spedily indefinite who's consistent with the statute with this court's precedence and with sound policy and should be affirmed. Thank you, Mr. Sells. Mr. Ferguson has some time left to rebut. Thank you, Your Honor. I want to clear a couple things. First of all, Aristocrat's expert didn't say that he could program the functions he said that a person of ordinary skill in the art could easily program the functions. And that's really the inquiry. The inquiry is what the person of ordinary skill in the art could do upon reading the specification and what he or she would understand. Secondly, the... Well, but aren't those two different questions? I mean, it seems to me that you could have enabled

. Mr. Ferguson has some time left to rebut. Thank you, Your Honor. I want to clear a couple things. First of all, Aristocrat's expert didn't say that he could program the functions he said that a person of ordinary skill in the art could easily program the functions. And that's really the inquiry. The inquiry is what the person of ordinary skill in the art could do upon reading the specification and what he or she would understand. Secondly, the... Well, but aren't those two different questions? I mean, it seems to me that you could have enabled. But that doesn't necessarily mean that you've described with specificity, the particular structure, you've described, I mean, you could have a very specific description of one embodiment and then say, and we also claim anything else that performs the function that we clearly be involved. Now, even though it would be enabled for purposes of that one embodiment. I don't necessarily know if it would be in valid and light of that because under this court's precedence and under the statute, what is required is that the claim term, the functions, be construed to cover the corresponding structure that's described in the specific... The structure I just described is number one, a particular structure, and number two, any other structure under the sun which performs this function. Clearly in valid, right? I think in that case, it would come down to a question of what the person of ordinary skill in the art would understand to be any other structure. I don't believe that we want to encourage panties to disclose things so broadly in that sense. And I think that that is consistent with what the court said, and I believe the biomedino case, where the structure that was disclosed was essentially no structure at all, simply said equipment. Here, there is a specific structure, a microprocessor-based machine. So we have a specific purpose computer already, and under this court's precedent in DOSL and others, simply disclosing that appropriate programming or known algorithms can perform, the claim functions is enough in certain circumstances as long as one of ordinary skill would understand how to implement those programs

. But that doesn't necessarily mean that you've described with specificity, the particular structure, you've described, I mean, you could have a very specific description of one embodiment and then say, and we also claim anything else that performs the function that we clearly be involved. Now, even though it would be enabled for purposes of that one embodiment. I don't necessarily know if it would be in valid and light of that because under this court's precedence and under the statute, what is required is that the claim term, the functions, be construed to cover the corresponding structure that's described in the specific... The structure I just described is number one, a particular structure, and number two, any other structure under the sun which performs this function. Clearly in valid, right? I think in that case, it would come down to a question of what the person of ordinary skill in the art would understand to be any other structure. I don't believe that we want to encourage panties to disclose things so broadly in that sense. And I think that that is consistent with what the court said, and I believe the biomedino case, where the structure that was disclosed was essentially no structure at all, simply said equipment. Here, there is a specific structure, a microprocessor-based machine. So we have a specific purpose computer already, and under this court's precedent in DOSL and others, simply disclosing that appropriate programming or known algorithms can perform, the claim functions is enough in certain circumstances as long as one of ordinary skill would understand how to implement those programs. And to answer a council's question, that the claim may be broad, doesn't mean it's indefinite. If we look at the... This court's precedent in the Intel case, 319F31357, this court said that the fact that one may design around the invention or one may design around the invention by using a different protocol, but not by simply changing a circuit that uses the same protocol that's claimed in that particular argument. The same thing is true here. There is a specific function that's claimed, it's based on the mathematical formula of KI through KM, where K is the number of rows selected in each column of N and columns. First, a competitor could design around this pattern by not implementing that specific formula, but if a competitor does implement that formula in the context of a microprocessor-based gaming machine, then we are entitled, as long as the prior art allows it, we are entitled to claim the covers those functions. And from an infringement standpoint, we believe that we would be entitled to applying in an infringement. So, I see him pass my time. Oh, you're not quite that good

. Well, if there are no other questions, we would ask that the court reverse or at the minimum vacate the finding of summary judgment, and we would also ask that if there is any remand, that it would be made clear that the district court is finding with respect to international game technologies and infringement or lack of infringement should be remanded for further consideration as well. Thank you Mr. Ferguson, in case you take another question