Prosecution History Estoppel Limits Fantasy-Football Patent
April 24, 2002
Last Month at the Federal Circuit - May 2002
Judges: Lourie (author), Newman, and Friedman
In Fantasy Sports Properties, Inc. v. Sportsline.com, Inc., No. 01-1217 (Fed. Cir. Apr. 24, 2002), the Federal Circuit affirmed a district court’s grant of SJ of noninfringement with respect to Yahoo!, Inc. (“Yahoo”) and ESPN/Starwave Partners (“ESPN”). Concerning Sportsline.com, Inc. (“Sportsline”), the Federal Circuit vacated the district court’s grant of SJ of noninfringement because a genuine issue of material fact exists as to whether Sportsline’s Commissioner.com product infringes U.S. Patent No. 4,918,603 (“the ‘603 patent”).
Fantasy Sports Properties, Inc. (“Fantasy”) filed suit against the Defendants alleging that their computerized games infringed the ‘603 patent, which is directed to playing a “fantasy” football game on a computer. The game permits players to operate fantasy teams with actual football players that are selected by the game players. A game player receives points based on performance, such as when its football players score a touchdown, field goal, or point after touchdown. Claim 1 of the ‘603 patent also requires that the game players receive bonus points.
The specification of the ‘603 patent teaches that bonus points may be awarded based on, inter alia, the difficulty of play. However, during prosecution of the ‘603 patent, Fantasy distinguished over a 1987 article describing a paper-based fantasy-football game that gave points for distance scoring and total yardage. Although Fantasy argued that the 1987 article was not a computer-based game, it still amended claim 1 to overcome the 1987 article by adding the bonus-points limitation. Based on the prosecution history, the district court had construed bonus points to mean additional points, above and beyond standard scoring for plays not typically associated with the position of the scoring player. The district court had interpreted the amendment to claim 1 as disclaiming bonus points for distance scoring and total yardage, the broader construction sought by Fantasy. The district court’s construction effectively narrowed claim 1 to require out-ofposition scoring, such as when a quarterback receives a pass or runs for a touchdown.
Each of the Defendants filed separate motions for SJ of noninfringement, each arguing that it did not infringe the ‘603 patent because it did not satisfy the bonus-points limitation. The district court agreed and granted the motions.
On appeal, the Federal Circuit reviewed the district court’s claim construction of the bonus-points limitation.
The Federal Circuit concluded that Fantasy surrendered any broader interpretation of “bonus points” that includes the distance scoring and total yardage teachings of the 1987 article. To reach that conclusion, the Federal Circuit looked to the Examiner’s rejection of claim 10 that included computer and player-grouping limitations with an additional limitation requiring points for yardage, i.e., essentially the broader construction sought by Fantasy on appeal. The Federal Circuit noted that the Examiner’s rejection of claim 10 indicated that the use of a computer or a grouping of players was known in the art or obvious therefrom. The Federal Circuit also noted that Fantasy responded by canceling claim 10, allowing claims 13-15 to issue with the bonus-points limitation, which were rewritten by Fantasy as claims 1-3 of the issued ‘603 patent. The Federal Circuit viewed this as a clear indication that Fantasy had acquiesced in the face of the Examiner’s rejection.
Fantasy also argued that the district court had erred because the doctrine of claim differentiation requires a broader construction of claim 1 than the one adopted by the district court. In particular, Fantasy’s dependent claim 2 defines bonus points as “complex or difficult plays,” and dependent claim 3 further defines claim 2 as including “extra points for a quarterback who receives or runs for a touchdown.” The district court’s claim construction essentially gave claims 1 and 3 the same scope. The Federal Circuit stated that Fantasy’s disclaimer of the subject matter when it cancelled rejected claim 10 overcomes any presumption under the doctrine that claims must have a different scope.
In view of its claim construction, the Federal Circuit agreed with the district court that ESPN and Yahoo did not infringe the ‘603 patent because neither awards bonus points for out-of-position scoring. However, Fantasy offered a declaration suggesting that Sportsline’s Commissioner.com product is customizable to include the same out-of-position, bonus-scoring system claimed in the ‘603 patent. The Federal Circuit thus concluded that the district court had erred in granting SJ of noninfringement because a genuine issue of material fact exists with respect to the Sportsline’s Commissioner.com product.