Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 1 of 26
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEVADA
`
`Plaintiff,
`
`CG TECHNOLOGY DEVELOPMENT, LLC,
`INTERACTIVE GAMES LIMITED, and
`INTERACTIVE GAMES LLC
`
`
`
`v.
`
`888 HOLDINGS, PLC,
`
`
`
`
`Defendant.
`
`
`
`
`
`
`Case No. 2:16-cv-00856-RCJ-EJY
`
`Member Case No. 2:16-cv-00871-RCJ-EJY
`
`ORDER
`
`Plaintiffs brought this matter alleging Defendant 888 Holdings, PLC (“888 Holdings”)
`
`infringed several of Plaintiffs’ patents relating to online gambling. Pending before the Court is
`
`Defendant 888 Holdings’ Motion for Summary Judgment. (ECF No. 191). Plaintiffs have
`
`responded. (ECF No. 198).
`
`Plaintiffs do not contest that 888 Holdings is entitled to summary judgment with respect to
`
`its claims related to the RE39,818; 9,355,518; and 9,306,952 patents. Accordingly, the only cause
`
`of action remaining against 888 Holdings is Plaintiff Interactive Games, LLC’s (“IG”) claim that the
`
`888 Casino and 888 Poker applications infringe Claim 17 of the 8,814,664 (‘664) patent. Having
`
`considered the pleadings, the undisputed facts presented in the record, and the written and oral
`
`arguments of the parties, the Court will grant 888 Holdings’ motion.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 2 of 26
`
`
`
`
`I.
`
`
`
`PROCEDURAL HISTORY
`
`Plaintiff CG Technology Development, LLC (“CG Tech”) is a wholly owned subsidiary of
`
`non-party CG Technology, L.P. (“CG Technology”), which provides technology solutions for
`
`lottery, gaming, racing, and sports wagering. (Am. Compl. ¶ 2, ECF No. 19). “[CG Technology]
`
`specializes in providing secure, scalable, mobile technology and risk management solutions to
`
`integrated resorts, gaming partners, race and sports books, and lottery industries.” (Id.). CG
`
`Technology and CG Tech produce mobile phone applications for real-money and social casino
`
`gaming, as well as account-based wagering systems. (Id.).
`
`
`
`CG Tech is the assignee of U.S. Patent No. RE39,818. Plaintiff Interactive Games Limited
`
`(“IG Ltd”) is the assignee of U.S. Patent Nos. 6,966,832; 6,899,628; 6,979,267; 7,029,394;
`
`8,342,924; and 9,111,417. Plaintiff Interactive Games LLC (“IG”) is the assignee U.S. Patent Nos.
`
`7,534,169; 8,771,058; 8,814,664; 9,306,952; and 9,355,518. Plaintiffs have sued 888 Holdings in
`
`this Court for direct and willful infringement via operation of 888 Holdings’ various online casino
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`games.
`
`15
`
`
`
`The Court has previously determined that the ‘832, ‘628, ‘267, ‘394, ‘924, ‘417, and ‘169
`
`16
`
`17
`
`Patents are patent-ineligible under 35 U.S.C. § 101 and Alice Corp. Pty. v. CLS Bank lnt’l, 134 S.
`
`Ct. 2347 (2014). (ECF No. 54).
`
`18
`
`
`
`The claims of four of the other patents-in-suit asserted against 888 Holdings (RE39,818,
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`‘058, ‘952, and ‘518) were found invalid as a result of IPR proceedings initiated by parties other
`
`than 888 Holdings. Those rulings are now final. See Joint Status Report, ECF No. 69 filed in Case
`
`No. 2:16-cv-00871. 888 Holdings is, accordingly, asking that the Court enter summary judgment
`
`regarding these patents. Plaintiffs have indicated they do not oppose this request. Accordingly, the
`
`Court will grant summary judgment in favor of 888 Holdings for Plaintiffs’ claims arising from the
`
`RE39,818; ‘058; ‘952; and ‘518 patents.
`
`2
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 3 of 26
`
`
`
`
`
`
`The only remaining claim against 888 Holdings is that its 888 Poker and 888 Casino online
`
`games infringe Claim 17 of U.S. Patent No. 8,814,664 (the ‘664 Patent) assigned to IG. (ECF No.
`
`19, Am. Complaint, ¶¶ 117-132). Defendant argues that it is entitled to summary judgment because
`
`neither 888 Casino nor 888 Poker infringe Claim 17 under its common and ordinary meaning.
`
`II.
`
`
`
`BACKGROUND1
`
`Beginning in 2013, Defendant has operated state-licensed online and mobile casino real
`
`money gambling (RMG) platforms in New Jersey, Nevada, Delaware and Pennsylvania.2
`
`Registered and verified players using a mobile device that is physically located in an RMG location3
`
`can access Defendant’s RMG platform through the Defendant’s 888 Casino and 888 Poker
`
`applications. The process for determining the mobile device’s location, generally referred to as
`
`“geolocation,” uses services and methods that are well-known in the industry.4 A geolocation is
`
`performed when a player launches either the 888 Casino or 888 Poker application on a mobile device.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`
`
`In both applications, players can purchase virtual chips with real money. If the mobile device
`
`14
`
`15
`
`is in an RMG location, players can access and play an RMG game, and place wagers allowing them
`
`to win virtual chips. The players can then redeem their virtual chips for real money.
`
`16
`
`
`
`The 888 Casino and 888 Poker applications also offer free-to-play (“FTP”) simulated gaming
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to registered and verified players.5 Players can access and play the FTP games on these applications
`
`
`1
`The following summary is of those facts which are either undisputed or, if disputed, are
`construed in favor of Plaintiffs as the non-moving party.
`
`2
`For brevity and consistency with the language used in patent claim, the Court will generally
`refer to these states as RMG locations.
`
`3
`Under its licenses, Defendant is required to verify that a mobile device accessing its RMG
`platform is physically located within the respective RMG jurisdiction.
`
`23
`
`4
`
`Defendant contracts with a third party for this service.
`
`24
`
`5
`888 Holdings has represented to the Court, and IG has not disputed, that it discontinued FTP
`gaming from its 888 Poker application on June 12, 2020. For purposes of clarity and brevity only,
`3
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 4 of 26
`
`
`
`
`from anywhere in the United States; that is, both within and outside of RMG locations. When
`
`playing an FTP game, players can only win FTP chips. Players cannot redeem the FTP chips for
`
`real money or any other prize and cannot transfer their FTP chips to any third party.
`
`A. Application Behavior in an RMG location.
`
`
`
`When the applications are launched on a mobile device that is determined to be in an RMG
`
`jurisdiction, the Defendant’s applications present the player with a lobby screen, similar to the
`
`following:
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`
`
`17
`
`18
`
`19
`
`From this lobby screen, with the toggle switch set to Real Money, a player can select one of several
`
`available RMG games. After the player starts an RMG game, the player can place wagers for real
`
`money.
`
`20
`
`
`
`A player can also make the initial selection necessary to access and play an FTP game by
`
`21
`
`22
`
`23
`
`24
`
`sliding the toggle bar to “Play Money.” After a player moves to the FTP gaming lobby, the player
`
`can select one of several available FTP games. After the player starts an FTP game, the player can
`
`
`the Court will discuss the claim against 888 Holdings’ applications as if they both applications
`continued to offer FTP gaming.
`
`4
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 5 of 26
`
`
`
`
`place wagers for FTP chips. Other than the initial geolocation performed when the applications are
`
`launched, the applications do not perform a geolocation when the player accesses the FTP lobby or
`
`an FTP game.
`
`B. Application Behavior in an FTP-only Location
`
`
`
`When the applications are launched on a mobile device that is determined to be in a location
`
`that does not allow real money wagers, the applications present the player with the same “lobby.”
`
`The record does not indicate whether, outside of a real money gaming jurisdiction, the toggle switch
`
`is set to “Play Money” (as shown in the following screen) or whether it remains set to “Real Money.”
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`
`
`
`
`Regardless of the default position of the toggle switch when the applications are launched, the
`
`applications allow a player to make the necessary selections to access and play an FTP game, and
`
`then allow the player to place wagers for FTP chips. Other than the initial geolocation performed
`
`when the applications are launched, the applications do not perform a geolocation when the player
`
`accesses the FTP lobby or an FTP game.
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`5
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 6 of 26
`
`
`
`
`
`
`However, if the player attempts to make a real money wager outside of an RMG location,
`
`both the 888 Casino and 888 Poker applications will block the attempt. Instead, the player’s mobile
`
`device will receive and display a “cease and desist” message similar to the following:
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`
`
`
`
`14
`
`After receiving this message, the player is returned to the application’s gaming lobby area.
`
`15
`
`
`
`In the 888 Casino application, players can play virtual slot machines, virtual scratch card
`
`16
`
`17
`
`games, virtual roulette, and virtual video poker. Players can also play virtual blackjack, virtual table
`
`poker and virtual baccarat, though these latter games involve only the player and a virtual dealer.
`
`18
`
`
`
`The 888 Poker application is a virtual poker room in which players can engage in various
`
`virtual poker games against other human players. The 888 Poker application permits players to
`
`select a virtual poker table at which to play. The application presents the player with a lobby of
`
`available tables, providing details of the tables including the screen name of other players already
`
`seated at the table, in a display similar to the following:
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`6
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 7 of 26
`
`
`
`
`
`
`
`
`When a player is seated at a virtual poker table, the 888 Poker application will show the
`
`screen name of the other players seated at the same table, with a screen similar to the following:
`
`
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 8 of 26
`
`
`
`
`C. Claim 17 of the ‘664 Patent
`
`Claim 17 of the ‘664 patent recites:
`
`17. An apparatus comprising:
`
`a non-transitory medium having stored thereon a plurality of instructions that
`when executed by a computing device, cause the computing device to:
`
`determine that a mobile device associated with a first player is located in a
`first location that is designated as a non-monetary, points only
`wagering area;
`
`in response to determining that the mobile device is located in the first
`location, automatically enable points wagering and automatically
`disable monetary wagering from the mobile device while the mobile
`device remains in the first location;
`
`receive, from the mobile device, a challenge by the first player, in which the
`challenge identifies an amount of points selected by the player and a
`second player selected by the player against whom to place the
`challenge;
`
`in response to receiving the challenge, identify the challenge to the second
`player;
`
`receive an acceptance of the challenge from the second player;
`
`in response to receiving the acceptance, form a wager between the first
`player and the second player based on the challenge;
`
`adjust points in an account of a winning player of the challenge in response
`to determining an outcome of the challenge;
`
`determine mobile device is located in a second location that is designated as
`a monetary wagering area; and
`
`in response to determining that the mobile device is located in the second
`location, automatically enable monetary wagering and automatically
`disable points wagering from the mobile device while the mobile
`device remains in the second location;
`
`wherein the second location is geographically different from the first
`location.
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 9 of 26
`
`
`
`
`III.
`
`LEGAL STANDARDS
`
`A. Summary Judgment
`
`In considering a motion for summary judgment, the court performs “the threshold inquiry of
`
`determining whether there is the need for a trial—whether, in other words, there are any genuine
`
`factual issues that properly can be resolved only by a finder of fact because they may reasonably be
`
`resolved in favor of either party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); United
`
`States v. Arango, 670 F.3d 988, 992 (9th Cir. 2012). To succeed on a motion for summary judgment,
`
`the moving party must show (1) the lack of a genuine issue of any material fact, and (2) that the
`
`court may grant judgment as a matter of law. Fed. R. Civ. Pro. 56(c); Celotex Corp. v. Catrett, 477
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`U.S. 317, 322 (1986); Arango, 670 F.3d at 992.
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`A material fact is one required to prove a basic element of a claim. Anderson, 477 U.S. at
`
`248. The failure to show a fact essential to one element, however, "necessarily renders all other
`
`facts immaterial." Celotex, 477 U.S. at 323. Additionally, “[t]he mere existence of a scintilla of
`
`evidence in support of the plaintiff’s position will be insufficient.” United States v. $133,420.00 in
`
`U.S. Currency, 672 F.3d 629, 638 (9th Cir. 2012) (quoting Anderson, 477 U.S. at 252).
`
`“[T]he plain language of Rule 56(c) mandates the entry of summary judgment, after adequate
`
`time for discovery and upon motion, against a party who fails to make a showing sufficient to
`
`establish the existence of an element essential to that party’s case, and on which that party will bear
`
`the burden of proof at trial.” Celotex, 477 U.S. at 322. “Of course, a party seeking summary
`
`judgment always bears the initial responsibility of informing the district court of the basis for its
`
`motion, and identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and
`
`admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of
`
`a genuine issue of material fact.” Id. at 323. As such, when the non-moving party bears the initial
`
`burden of proving, at trial, the claim or defense that the motion for summary judgment places in
`
`9
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 10 of 26
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`issue, the moving party can meet its initial burden on summary judgment “by ‘showing’–that is,
`
`pointing out to the district court–that there is an absence of evidence to support the nonmoving
`
`party’s case.” Id. at 325. Conversely, when the burden of proof at trial rests on the party moving
`
`for summary judgment, then in moving for summary judgment the party must establish each element
`
`of its case.
`
`Once the moving party meets its initial burden on summary judgment, the non-moving party
`
`must submit facts showing a genuine issue of material fact. Fed. R. Civ. Pro. 56(e); Nissan Fire &
`
`Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099, 1103 (9th Cir. 2000). As summary
`
`judgment allows a court “to isolate and dispose of factually unsupported claims or defenses,”
`
`Celotex, 477 U.S. at 323-24, the court construes the evidence before it “in the light most favorable
`
`to the opposing party.” Adickes v. S. H. Kress & Co., 398 U.S. 144, 157 (1970). The allegations or
`
`denials of a pleading, however, will not defeat a well-founded motion. Fed. R. Civ. Pro. 56(e);
`
`Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986). That is, the
`
`opposing party cannot “‘rest upon the mere allegations or denials of [its] pleading’ but must instead
`
`produce evidence that ‘sets forth specific facts showing that there is a genuine issue for trial.’” Estate
`
`of Tucker v. Interscope Records, 515 F.3d 1019, 1030 (9th Cir. 2008) (quoting Fed. R. Civ. Pro.
`
`56(e)). In this matter, Plaintiffs have the burden of demonstrating that there is a genuine issue of
`
`fact on “whether [Defendant’s] accused device is encompassed by the claim[].” Pitney Bowes, Inc.,
`
`19
`
`182 F.3d at 1304.
`
`20
`
`B. Deferring Summary Judgment
`
`21
`
`
`
`Under Federal Rule of Civil Procedure 56(d), a party opposing a summary judgment motion
`
`22
`
`23
`
`24
`
`may request that a district court delay ruling on the motion in order to obtain additional discovery
`
`without which “it cannot present facts essential to justify its opposition.” Fed. R. Civ. P. 56(d). The
`
`party seeking relief must support its request with an affidavit or declaration. Id., see also Michelman
`
`10
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 11 of 26
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`v. Lincoln Nat. Life Ins. Co., 685 F.3d 887, 899 (9th Cir. 2012). Rule 56(d) “provides a device for
`
`litigants to avoid summary judgment when they have not had sufficient time to develop affirmative
`
`evidence.” United States v. Kitsap Physicians Serv., 314 F.3d 995, 1000 (9th Cir. 2002). The
`
`requesting party must show: (1) it has set forth in affidavit form the specific facts it hopes to elicit
`
`from further discovery; (2) the facts sought exist; and (3) the sought-after facts are essential to
`
`oppose summary judgment. Fam. Home & Fin. Ctr., Inc. v. Fed. Home Loan Mortg. Corp., 525
`
`F.3d 822, 827 (9th Cir. 2008). If the requesting party makes such a showing, the Court may “(1)
`
`defer considering the motion or deny it; (2) allow time to obtain affidavits or declarations or to take
`
`discovery; or (3) issue any other appropriate order.” Fed. R. Civ. P. 56(d).
`
`10
`
`C. Patent Infringement
`
`11
`
`
`
`“[I]n every infringement analysis, the language of the claims, as well as the nature of the
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`accused product, dictates whether an infringement has occurred.” Fantasy Sports Props.v.
`
`Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). “[T]o infringe a claim that recites
`
`capability and not actual operation, an accused device ‘need only be capable of operating’ in the
`
`described mode.” Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010)
`
`(quoting Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991)). Software is
`
`“reasonably capable” of performing a recited capability if it is written such that the code, if executed
`
`without modification, would cause the computer to execute the recited capability, regardless of
`
`whether the relevant code “is activated or utilized in any way.” Fantasy Sports, 287 F.3d at 1118.
`
`However, the reasonable capability test does not apply where the “claim language clearly specifies
`
`a particular configuration.” Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
`
`984, 994 (Fed. Cir. 2009). Rather, “infringement occurs only if the accused product is configured”
`
`23
`
`as specified in the claim. Id.
`
`24
`
`11
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 12 of 26
`
`
`
`
`
`
`“Claim terms are generally given their ordinary and customary meaning as understood by a
`
`person of ordinary skill in the art when read in the context of the specification and prosecution
`
`history.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1358 (Fed. Cir. 2016).
`
`IV.
`
`ANALYSIS
`
`A. Rule 56(d) Request
`
`
`
`IG has not met its burden of demonstrating that the Court should defer, deny, or otherwise
`
`issue an appropriate order regarding the pending motion for summary judgment pursuant to Rule
`
`56(d). In support of their request, IG asserts that the parties dispute the plain and ordinary meaning
`
`of certain claim terms. This argument does not warrant relief because 888 Holdings has agreed that,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`for purposes of their motion, IG’s proffered “plain and ordinary meaning” for each of the claim
`
`11
`
`terms at issue should govern.
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`IG also asserts that their expert requires “further source code review to investigate 888[
`
`Holdings’] non-infringement theories and the uncontroverted statements made in the Sherman
`
`declaration and analyze differences in the source code of the accused platforms since this litigation
`
`was stayed in 2017.” In support, IG offers only the affidavit of its former counsel who generally
`
`only repeats this language. IG has not shown how an analysis of the differences in the source code
`
`since this litigation was stayed is essential to its opposition. IG has also not shown that further
`
`source code review to investigate the uncontroverted statements made by Sherman in his declaration
`
`is essential to its opposition. The only example cited by former counsel is to paragraphs 13 and 14
`
`of the Sherman declaration. Sherman’s statements concern user inputs to engage in RMG, not the
`
`code. IG has disputed the accuracy of this statement as applied to at least one circumstance.
`
`However, the accuracy of Sherman’s statements can be readily determined through observation of
`
`the applications by any person using the applications. Indeed, IG’s expert has relied upon a
`
`screenshot of the 888 Poker application to assert that the applications apply a default position to the
`
`12
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 13 of 26
`
`
`
`
`toggle switch in the lobby when launched on a mobile device that is in an RMG location. Neither
`
`IG’s former counsel nor its expert offers any explanation as to why source code review is required
`
`to dispute Sherman’s statements in paragraphs 13 and 14 of his declaration. Finally, further evidence
`
`regarding the user input discussed by Sherman in these paragraphs is not essential for IG’s
`
`opposition. IG had sufficient evidence to support its dispute and the Court has, for purposes of this
`
`summary judgment motion, construed the behavior of the applications in favor of IG, and has
`
`assumed that the application behaves in the manner that IG has represented to the Court.
`
`IG’s assertion that its expert requires further source code review to investigate 888 Holdings’
`
`non-infringement theories is a general, rather than a specific, statement of facts that IG hopes to
`
`elicit from further discovery. Undoubtably, evidence regarding the source code for 888 Holdings’
`
`application is relevant to IG’s claim. However, IG has only requested further review of the source
`
`code without identifying the specific facts to be elicited from that discovery. 888 Holdings notes
`
`that IG’s expert was provided, and engaged in, an initial two days of access to the source code that
`
`IG had requested. IG then identified additional source code for review by its expert. 888 Holdings
`
`provided, and the expert engaged in, an additional two days of access to and review of the additional
`
`source code. 888 Holdings also provided IG’s expert with 440 pages of printed source code.
`
`Following that production, and before this matter was stayed, IG did not identify or request that 888
`
`Holdings produce any additional source code for review by its expert.
`
`The Court also notes that, in his declaration, IG’s expert does not assert that he requires
`
`additional access to IG’s source code or that he requires additional printed pages of source code.
`
`Rather, he offers only the general assertion that he has not had an opportunity to complete his review.
`
`Under these circumstances, the Court finds that IG has not set forth the specific facts its hopes to
`
`elicit from additional discovery regarding 888 Holdings’ source code. As a result, IG has necessarily
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`13
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 14 of 26
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`failed to establish that undiscovered facts concerning the source code exist that are essential to its
`
`defense.
`
`Finally, IG asserts that it requires additional discovery, primarily Rule 30(b)(6) depositions,
`
`on “various subjects,” which it then broadly outlines. This broad outline of subjects does not satisfy
`
`the requirement that IG set forth the specific facts that it hopes to elicit from further discovery.
`
`Again, having failed to identify the specific facts to be elicited from additional discovery, IG fails to
`
`establish that the facts essential to its opposition exist.
`
`B. 888 Holdings’ Accused Products
`
`Claim 17 of the ‘664 patent is an apparatus claim. Specifically, IG claims “[a]n apparatus
`
`comprising: a non-transitory medium having stored thereon a plurality of instructions that when
`
`executed by a computing device, cause the computing device to” perform various specified
`
`functions. However, as suggested by the parties’ written and oral arguments, Claim 17 is, in practical
`
`terms, a claim concerning the software code for a computer program or application.6 Plaintiff asserts
`
`that the software code for the 888 Casino and 888 Poker applications infringes Claim 17.
`
`Because Claim 17 is an apparatus claim for an application that causes a computer to perform
`
`several specified functions, it is a claim that “recites capability and not actual operation.”
`
`Accordingly, at issue is whether the 888 Casino or 888 Poker applications, as coded, are “reasonably
`
`capable” of performing each limitation as recited in Claim 17, not whether they use or even activate
`
`19
`
`the code that would execute each limitation.
`
`20
`
`21
`
`22
`
`23
`
`24
`
`
`6
`Strictly speaking, Claim 17 is for a computer program that is stored on a non-transitory
`medium. The parties do not dispute that 888 Holdings’ 888 Casino and 888 Poker applications are
`stored on a non-transitory medium. Further, both parties generally identify the accused products as
`being the 888 Casino and 888 Poker applications without reference to the storage of those
`applications on a “non-transitory medium.” Accordingly, for consistency and brevity, I will also
`treat these applications as being the accused products.
`14
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 15 of 26
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`At the outset, the Court notes that IG has the burden of raising a triable issue of fact whether
`
`the code includes instructions that, when executed, would meet the Claim 17 limitations. IG has
`
`not, however, offered any code into evidence to meet that burden. Neither has IG offered expert
`
`opinion that specifically relies on the software code. To be certain, this failure to offer direct
`
`evidence of infringing code is not, of itself, fatal to IG’s opposition. IG can meet its burden by
`
`proffering evidence from which inferences can be drawn that raise triable issues of fact whether the
`
`applications’ software code include instructions that meet Claim 17. IG relies solely on the behavior
`
`of the applications, as would be observed by a person using the applications on a mobile device.
`
`Similarly, IG’s expert relies on the observed behavior of the applications in forming his opinions.
`
`Accordingly, as the instructions included in software code are not in the record, the issue before the
`
`Court is whether the actual behavior of the applications raises a permissible inference that the
`
`software code for the applications include sets of instructions that infringe Claim 17.
`
`C. The Geolocation Limitations
`
`888 Holdings asserts that its products do not infringe the Claim 17 limitation for applications
`
`that “automatically enable monetary wagering and automatically disable points wagering.”
`
`However, in making this argument, 888 Holdings argues that the “basic facts concerning the
`
`operation of 888 Casino and 888 Poker . . . makes it clear that the location of the user device during
`
`FTP games is not being determined.” The argument is irrelevant on the issue whether the
`
`applications infringe the “automatically enable monetary wagering and automatically disable points
`
`20
`
`wagering” limitation.
`
`21
`
`22
`
`23
`
`24
`
`Claim 17 does recite an FTP geolocation limitation: “determine that a mobile device
`
`associated with a first player is located in a first location that is designated as a non-monetary, points
`
`only wagering area;” and an RMG geolocation limitation: “determine mobile device is located in a
`
`second location that is designated as a monetary wagering area.” Neither geolocation limitation, nor
`
`15
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 16 of 26
`
`
`
`
`any other limitation in Claim 17, requires that a geolocation must be performed during FTP gaming.
`
`The issue is not whether the applications geolocate the mobile device during FTP gaming but
`
`whether they are reasonably capable of performing a geolocation in both an FTP and an RMG
`
`location.
`
`888 Holdings acknowledges facts showing that both applications are reasonably capable of
`
`meeting both geolocating limitations: the applications will “initial a location verification request”
`
`when a player “manually selects ‘Real Money’ gaming using a virtual toggle.” 888 Holdings
`
`acknowledges that a player can initial this request in an RMG location. As monetary wagering is
`
`permitted in RMG locations, the player can engage in monetary wagering on the applications. If a
`
`player initials this request in an FTP location, the applications will display the “cease and desist”
`
`notice and preclude the player from monetary wagering. Accordingly, both applications are
`
`reasonably capable of performing both the FTP and the RMG geolocation limitations.
`
`D. The “Automatically Enable Monetary Wagering and Automatically Disable Points
`Wagering” Limitation.
`
`Claim 17 includes the following limitation: “in response to determining that the mobile
`
`device is located in [an RMG] location, automatically enable monetary wagering and automatically
`
`disable points wagering from the mobile device while the mobile device remains in the [RMG]
`
`location.”
`
`For purposes of its summary judgment motion, 888 Holdings has agreed in its reply to the
`
`“plain and ordinary meaning” proffered by IG for claim terms. The parties agree that the claim term
`
`“automatically” should be construed to mean “without player input.” They also agree that “enable”
`
`should be construed to mean “to cause to operate, activate,” and that “disable” should be construed
`
`to mean “to make ineffective or inoperative, deactivate.” IG further notes, in its opposition brief,
`
`that the Cambridge Online Dictionary defines “disable” as: “to turn off a part of a computer system,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`16
`
`

`

`Case 2:16-cv-00856-RCJ-EJY Document 210 Filed 03/01/22 Page 17 of 26
`
`
`
`
`or stop it from working in the normal way,” and that the Macmillan Online Dictionary defines
`
`“disable” as: “to stop a machine or piece of equipment from working properly.”
`
`This limitation has three parts, each of which must be satisfied to find that the 888 Casino
`
`and 888 Poker applications meet the limitation. While Claim 17 is stated as a claim for an apparatus
`
`with several specified capabilities, this limitation within Claim 17 recites a configuration of
`
`functions that must be performed as specified in response to a specified event. To show that 888
`
`Holdings’ applications meet the first element of the limitation—the “in response” clause—IG must
`
`show that the applications actually perform this limitation whenever the mobile device performs a
`
`geolocation and determines the mobile device is in an RMG location.
`
`To meet the second element of the limitation, the “automatically enable” element, the
`
`application must “automatically enable monetary wagering . . . from the mobile device while the
`
`mobile device remains in the [RMG] location.” To meet the third element of the limitation, the
`
`“automatically d