SILICON VALLEY (May 11, 2011) — International law firm McDermott Will & Emery LLP has won a significant bench trial in a patent infringement lawsuit brought by Firm client Aristocrat Technologies Australia Pty Limited and Aristocrat Technologies, Inc. (Aristocrat) against defendants International Game Technology and IGT (IGT).
The case, which is pending before Judge Ronald M. Whyte in the U.S. District Court for the Northern District of California (San Jose Division), involves technology relating to progressive video slot machines and systems. The patents concern methods for triggering an improved jackpot feature.
In this trial, IGT sought to render Aristocrat’s valuable patent family related to progressive gaming systems unenforceable due to the alleged inequitable conduct of Aristocrat's former patent prosecutor. The court rejected IGT's inequitable conduct claims despite evidence showing that the patent prosecutor had allowed the parent application of that patent family to remain abandoned for 2.5 years, and evidence which led the court to conclude that the prosecutor "attempted to cover up" the abandonment.
In 2008, a unanimous panel of the U.S. Court of Appeals for the Federal Circuit also ruled in favor of McDermott and Aristocrat in an appeal against IGT in this case, where the Federal Circuit reversed the district court's grant of summary judgment of invalidity against Aristocrat based on the abandonment of the same parent application at issue in the current trial. The trial court decision was based on the "improper revival" of an unintentionally abandoned patent application before the U.S. Patent and Trademark Office (PTO). The Federal Circuit agreed with Aristocrat that "improper revival" is not "a cognizable defense in an action involving the validity or infringement of a patent."
On May 6, 2011, the court found that neither Aristocrat nor the prosecutor intentionally deceived the PTO in stating that the delay in reviving was unintentional. The Judge adopted many of Aristocrat’s proposed findings of facts and conclusions of law nearly verbatim, and agreed with Aristocrat’s theories.
“We are very pleased with this favorable ruling on behalf of our long-time client and proud of the great work the team has done to protect Aristocrat’s technology leadership,” said McDermott spokesman. “This ruling has preserved the enforceability of Aristocrat's valuable patent family against IGT and McDermott is pleased to work alongside Aristocrat as we seek to resolve their additional, ongoing disputes against IGT.”
The McDermott trial team was led by partner Terry Ahearn, with assistance from case manager Patricia Deneen, legal secretary Linda Rohrer, administrative assistant Jo Chorley, and trial coordinator Napoleon Cruz, and former partner Robert Blanch.
With 185 attorneys around the world, McDermott’s Intellectual Property practice is renowned for its broad trial, appellate, prosecution and transaction experience. More than 125 members of McDermott’s intellectual property team hold technical and/or scientific degrees and more than 100 are registered to practice before the U.S. Patent and Trademark Office. McDermott’s Intellectual Property practice includes numerous lawyers with valuable industry experience as well as former USPTO examiners and petition specialists.
About McDermott Will & Emery
McDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,000 lawyers, we have offices in Boston, Brussels, Chicago, Düsseldorf, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Rome, Silicon Valley and Washington, D.C. Extending our reach to Asia, we have a strategic alliance with MWE China Law Offices in Shanghai.