‘Grand Theft Auto’ Game Makers Score Win at CAFC with Non-Infringement Ruling

“[C]ollateral consequences in a separate lawsuit do not fall within any exception to the mootness doctrine.” – CAFC

https://depositphotos.com/229492118/stock-photo-word-phrase-affirm-dictionary-highlighted.htmlOn October 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part the claim construction and summary judgment of non-infringement ruling made by the U.S. District Court for the District of Delaware and dismissed-in-part Acceleration Bay LLC’s appeal against the makers of the Grand Theft Auto video game as moot.

In July of 2000, Acceleration Bay filed four patents: U.S. Patent Nos. 6,701,344 (the ‘344 patent), 6,714,966 (the ‘966 patent), 6,910,069 (the ‘069 patent) and 6,920,497 (the ‘497 patent). The patents are unrelated but share a similar specification disclosing a networking technology that allegedly improves upon prior methods of communication. Specifically, the patents disclose a “broadcasting technique in which a broadcast channel overlays a point-to-point communication network.” On June 16, 2016, Acceleration Bay filed a patent infringement suit against 2K Sports, Inc., Rockstar Games, Inc. and Take-Two Interactive Software, Inc. (Defendants). Acceleration Bay accused Defendants of directly infringing the ‘344, ‘966, ‘069, and ‘497 patents by establishing networks for customers who play the video games Grand Theft Auto V, NBA 2K15, and 2K16.

Claim Construction

From 2017 to 2018, the district court issued several claim construction orders. In an August 2017 order, the district court construed the term “m-regular,” which was at issue in the ‘344 and ‘966 patents. The district court decided that “m-regular” meant “[a] state that the network is configured to maintain, where each participant is connected to exactly m neighbor participants.” In other words, if the network is not arranged to have each participant connected to m neighbors, that is fine, so long as the network tries to achieve that configuration where appropriate.

In a December 2017 order, the court construed the term “fully connected portal computer” in claim 1 of the ‘069 patent to mean a “portal computer connected to exactly m number participants.” This construction meant that claim 1 effectively included the “m-regular” limitation. In the same order, the district court construed “each participant being connected to three or more other participants” to mean “each participant being connected to the same number of other participants in the network, where the number is three or more.” The court explained again that this construction effectively included the “m-regular” limitation into the asserted claims of the ‘069 patent even though it was not explicitly claimed.

Finally, in a January 2018 claim construction order, the district court construed a term that appeared in claim 9 of the ‘497 patent: “a component in a computer system for locating a call-in port of a portal computer.” The district court adopted the construction of the word “component” to require hardware.

Summary Judgment

With this claim construction in hand, on March 23, 2020, the district court granted summary judgment of non-infringement on all four patents at issue. The district court first addressed Acceleration Bay’s theory of direct infringement of the ‘344, ‘966, and ‘497 patents by virtue of Take Two’s making, selling, and offering for sale the accused system under 35 U.S.C. §271(a). The court explained that “making a system under §271(a) requires a single entity to combine all the claim elements and that, if a customer, rather than an accused infringer, performs the final step to assemble the system, then the accused infringer has not infringed.” Applying this standard, the court observed that Take Two makes software, not computer networks or broadcasting channels. Instead, its customers must introduce those elements to the systems before the claims can be met. The court further explained that the asserted claims of the ‘344 and ‘966 patents require “participants” who form “connections” with each other, therefore, it is not Take Two, but the players who assemble the claimed system.

Acceleration Bay also put forth a “final assembler” infringement theory, which the district court rejected. Citing Centrak, the court explained that conduct may still be improper if an alleged infringer’s product does not include all elements of the asserted claims if there is evidence that the defendant installed the accused product for the customer. Centrak, Inc. v. Sonitor Technologies, Inc. 915 F.3d 1360 (Fed. Cir. 2019). However, the court reasoned that Acceleration Bay did not allege that Defendants ever installed the video games for customers, therefore, Centrak does not control here.

Additionally, the district court found that Take Two did not infringe the ‘069 patent. The district court recognized that although the asserted claims of the ‘069 patent did not explicitly recite the “m-regular” limitation, two separate terms of the ‘069 patent’s claims had been construed to include the limitation. The court then explained that this limitation was critical in the infringement analysis and that Acceleration Bay failed to show there was a genuine dispute as to whether the accused video games included this limitation. Following this decision, Acceleration Bay appealed, challenging the summary judgment of noninfringement with respect to the ‘344, ‘966, ‘498, and ‘069 patents.


At the outset, the CAFC recognized that Article III of the Constitution limits federal courts’ jurisdiction to actual cases and controversies. Citing Already, the CAFC reasoned that “[a] case becomes moot—and therefore no longer a ‘Case’ or ‘Controversy’ for the purposes of Article III—when the issues presented no longer ‘live’ or the parties lack a legally cognizable interest in the outcome.” Already, LLC v. Nike, Inc., 568 U.S. 85, 91 (2013). Mootness, the court reasoned may occur at any stage of the litigation.

Here, Take Two argued that Acceleration Bay’s appeal with respect to the ‘344 and ‘966 patents is moot and therefore should have been dismissed because Acceleration Bay only challenged one of multiple independent grounds that the district court cited in their summary judgment grant. Specifically, according to Take Two, the district court granted summary judgment because (1) the accused video game did not include the “m-regular” limitation, and (2) Acceleration Bay’s “final assembler” theory failed for lack of supporting case law. Therefore, Take Two asserts that the CAFC cannot grant Acceleration Bay “effectual relief” even if it agreed with Acceleration Bay’s final assembler theory because a reversal on this ground would not overturn the separate “m-regular” ground. In response, Acceleration Bay did not dispute the fact that the court granted summary judgment on the independent “m-regular” limitation. Instead, Acceleration Bay argued that the CAFC’s reversal on the “final assembler” issue would grant them effectual relief, and thereby avoid mootness, because it would help Acceleration Bay oppose Take Two’s forthcoming “exceptional case motion.” The CAFC was not persuaded by Acceleration Bay’s reply, finding that Acceleration Bay forfeited any challenge to the district court’s summary judgment of non-infringement on the basis that the accused products failed to satisfy the “m-regular” limitation of the ‘344 and ‘966 patents. As a result of the forfeiture, the appeal is moot with respect to the ‘344 and ‘966 patents.

Alternatively, Acceleration Bay argued that the case is not moot because a favorable decision here would influence other pending cases. The CAFC did not find this argument persuasive either. Citing Citizen, the CAFC stated that “collateral consequences in a separate lawsuit do not fall within any exception to the mootness doctrine.” Citizens for Responsible Gov’t State Pol. Action Comm. v. Davidson, 236 F.3d 1174, 1184 (10th Cir. 2000).

The ‘069 Patent

Acceleration Bay challenged the district court’s grant of summary judgment of non-infringement of the ‘069 patent. Acceleration Bay argued that the asserted claims do not explicitly contain the “m-regular” limitation, and the district court erroneously interpreted the claim term “fully connected portal computer” to include that limitation. In response, Take Two asserted that Acceleration Bay’s appeal must fail because it did not challenge the full basis for the district court’s claim construction. Take Two pointed out that the district court did not only construe the term “fully connected portal computer” to include the limitation, but it also construed the term “each participant being connected to three or more participants” to include it. The CAFC therefore concluded that the summary judgment must be affirmed because even if Acceleration Bay were to prove its argument, the summary judgment would remain intact based on the separate claim term.

The ‘497 Patent

Acceleration Bay argued that it had asserted a viable “final assembler” theory of direct infringement and therefore the district court erred in granting summary judgment of non-infringement. Acceleration bay asserted that even though Take Two did not “make” the hardware that its customers used to play the accused video games, as is required to satisfy their theory, Take Two nevertheless directly infringes by “making” the claimed system because Take Two qualifies as the “final assembler.” Citing Centrak, the CAFC concluded that Acceleration Bay misinterpreted the case law that controls the “final assemble” theory analysis. In Centrak, the accused infringer made the hardware for the products and installed them by connecting them to an existing network. 915 F.3d 1360 (Fed. Cir. 2019). This case, the CAFC reasoned, is distinguishable from Centrak, because Acceleration Bay does not contend that Take Two makes and installs hardware into an existing network to complete a claimed system. Therefore, the CAFC affirmed the summary judgment granting non-infringement.

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Author: sharafmaksumov
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