Federal Circuit Awaits 'Bonus Points' to Defendants-Claim Limited by 'Acquiescence'

Author:Mr Paul Devinsky
Profession:McDermott Will & Emery

In affirming the district court's claim construction, the U.S. Court of Appeals for the Federal Circuit found that acquiescence during prosecution limited the broad or plain meaning of the claim term "bonus points" as used in a claim directed to a fantasy football game. Fantasy Sports Properties, Inc. v. Sportsline.com Inc., Case Nos. 01-1217, -122 (Fed. Cir., April 24, 2002). Fantasy is the assignee of U.S. Patent No. 4,918,603, which relates to a method of and apparatus for playing a "fantasy" football game on a computer. The game is played by a number of "owners" or "managers" who operate fantasy "teams" or "franchises" based on actual football players. Points are awarded to each team based upon the performance of its players in actual professional football games for categories such as touchdowns, field goals and points after touchdowns. The total points for each team are tabulated utilizing a database containing the relevant statistics for each player, which is automatically updated after the actual football games are played each week. The specification teaches that, in addition to the standard points given for a particular play in an actual game, "bonus points" may be awarded based upon, inter alia, "the difficulty of the play."The district court initially interpreted the "bonus points" limitation to mean points that are awarded "in addition to the normal points for a scoring play" and determined that Fantasy disclaimed any game that awards additional points for distance scoring and total yardage by amending the claim in issue to add the "bonus points" limitation in order to overcome a rejection based upon a prior art publication. Based on its construction, the court granted summary judgment that the Yahoo! product, which only awards points equal to the points given in an actual professional football game, does not infringe the patent as a matter of law.Two others accused infringers, ESPN and SportsLine, thereafter filed separate motions for summary judgment of noninfringement based on the court's initial claim construction. The district court then clarified its previous construction of the term "bonus points" to mean "additional points, above and beyond standard scoring, that are based upon the difficulty of the play," (i.e., "for scoring plays not typically associated with the position of the scoring player") and determined that ESPN's Fantasy Football game did not infringe as a matter of law because that product does not award additional points for...

To continue reading