NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition 

is not citable as precedent. It is a public record.

United States Court of Appeals for the Federal Circuit

05-1203 

SHUFFLE MASTER, INC., 

Plaintiff-Appellee, 

v. 

VENDINGDATA CORPORATION, 

 

 Defendant- Appellant. 

___________________________ 

DECIDED: December 27, 2005 

___________________________ 

Before MAYER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and BRYSON, Circuit 

Judge. 

Opinion for the court filed by Circuit Judge BRYSON. Dissenting opinion filed by Circuit 

Judge MAYER. 

BRYSON, Circuit Judge. 

 This is an appeal from the grant of a preliminary injunction in a patent case. The 

United States District Court for the District of Nevada ruled for the patentee, Shuffle 

Master, Inc., and entered a preliminary injunction barring the appellant VendingData 

Corporation from selling its accused product, a playing card shuffling machine. Shuffle 

Master, Inc. v. VendingData Corp., No. CV-S-04-1373-JCM (LRL) (D. Nev. Dec. 7, 

2004). Although the scope of our review of orders granting or denying motions for 
05-1203 2 

preliminary injunctions is narrow, we conclude that, in light of the critical importance of 

claim construction to the outcome here, the district court should have provided an 

explicit claim construction before entering its injunctive order. We therefore vacate the 

order enjoining VendingData from selling its accused product and remand to the district 

court for further proceedings. 

I 

 Shuffle Master owns U.S. Pat. No. 6,655,684 (“the ’684 patent”), which is entitled 

“Device and Method for Forming and Delivering Hands from Randomly Arranged Decks 

of Playing Cards.” Only claim 20 of the ’684 patent is at issue here. Shuffle Master 

alleges that one of VendingData’s automatic shufflers, the PokerOne, infringes that 

claim. VendingData contends that the PokerOne does not fall within the scope of the 

claim, as properly construed. 

 Automatic card shufflers, which have been available for some time, deliver hands 

of randomly mixed playing cards. Claim 20 of the ’684 patent recites a particular 

method for delivering shuffled hands, which comprises: 

 providing at least one deck of playing cards; 

 forming at least one set of cards within the apparatus from the at 

least one deck of playing cards; 

 delivering to a delivery tray from the at least one set of cards within 

the apparatus a first individual set of randomly mixed playing cards for a 

game; 

 delivering the first individual set of randomly mixed playing cards 

from the delivery tray of the apparatus, with all cards in the first individual 

set delivered at the same time, and then providing a second individual set 

of randomly mixed playing cards into the delivery tray. 

 For present purposes, the critical claim limitation is the one that recites “forming 

at least one set of cards within the apparatus from the at least one deck of playing 

cards.” Before the district court, VendingData contended that the PokerOne does not 
05-1203 3 

form a “set of cards within the apparatus” within the meaning of that phrase in the 

asserted claim. 

VendingData offered evidence that the PokerOne operates by randomly ejecting 

cards from an unshuffled deck to form an “internal stack” within the apparatus. The 

random ejection process continues until the internal stack contains at least 21 cards. 

When the number of cards required for at least two hands of the game that is being 

played have been collected in the internal stack, the device begins the dealing process. 

The PokerOne deals by delivering cards to the output tray, one-by-one from the bottom 

of the internal stack, until a complete hand is formed in the output tray. When that first 

hand of cards is removed from the output tray, the dealing process begins again, and 

new cards are delivered, one-by-one from the bottom of the internal stack, to the output 

tray to form a second hand. After each hand of cards is removed from the output tray, 

additional cards are ejected from the unshuffled deck into the internal stack, while at the 

same time new cards are delivered to the output tray to form another hand. 

 Shuffle Master argued to the district court that the internal stack formed in the 

PokerOne falls within the limitation requiring that “at least one set of cards [be formed] 

within the apparatus.” In its papers opposing the motion for a preliminary injunction, 

VendingData argued that the specification and the prosecution history make clear that 

the internal stack formed within the PokerOne device does not read on that limitation, 

because the “set of cards” limitation covers only a set of cards constituting a single hand 

or a part of a hand. Consequently, according to VendingData, the internal stack is not a 

“set of cards,” because no hands or portions of hands are formed there. Instead, cards 

simply accumulate in the internal stack until the stack contains at least 21 cards, and 
05-1203 4 

the dealing process does not begin until the number of cards in the internal stack is 

equal to at least two hands of cards. The hands, according to VendingData, are formed 

for the first time when cards are delivered, one-by-one, to the output tray. 

 In making its claim construction argument in the district court, VendingData 

referred to the portion of the specification in which the patentee described the operation 

of the claimed shuffler. According to the specification, the device described in Shuffle 

Master’s patent randomly places cards into slots or compartments. Each of those slots 

or compartments, according to the specification, “may therefore be identified and 

treated to receive individual hands of defined numbers of randomly selected cards or 

the slots may be later directed to deliver individual cards into a separate hand forming 

slot or tray.” ’684 patent, col. 4, ll. 62-65. In the first case, “a hand of cards is removed 

as a group from an individual slot.” Id. col. 4, ll. 66-67. In the second case, “each card 

defining a hand is removed from more than one compartment (where one or more cards 

are removed from a slot), and the individual cards are combined in a hand-receiving tray 

to form a randomized hand of cards.” Id. col. 4, line 67 through col. 5, line 4. 

VendingData also relied on the prosecution history to support its proposed 

construction of the “set of cards” limitation. VendingData argued that the patentee 

restricted the method to “forming hands inside the unit.” In particular, VendingData 

noted that in response to a rejection by the patent examiner, the patentee stated that 

claim 20 requires sets of cards to be formed within the apparatus and requires individual 

hands to be formed from those sets, “either with one set of cards being a complete hand 

or by sets of cards being combined to form a complete hand.” 
05-1203 5 

Following arguments by counsel regarding the request for a preliminary 

injunction, the district court issued an injunction barring the sale of the Poker One. 

Although the question of the proper construction of claim 20 was clearly in dispute, the 

court did not address the claim construction arguments made by VendingData and did 

not provide an explicit construction of the critical claim language. Rather, the court 

simply concluded that Shuffle Master was likely to succeed on the merits in proving that 

the operation of the PokerOne infringes Shuffle Master’s rights under claim 20 of the 

’684 patent. The district court also found that Shuffle Master was likely to succeed on 

the merits in proving that the ’684 patent is valid, that Shuffle Master showed that the 

effect of sales of the PokerOne would result in irreparable harm to Shuffle Master, and 

that the public interest in protecting patent rights supported the issuance of a 

preliminary injunction. 

 VendingData subsequently made requests for modification and clarification of the 

preliminary injunction order. VendingData also requested a stay of the injunction 

pending appeal. In its request for a stay, VendingData argued that the district court had 

failed to construe the critical language of claim 20 and that its failure to do so 

undermined its conclusion that the operation of the PokerOne likely infringed the claim. 

The district court denied each of those requests. A panel of this court, however, 

granted a stay of the injunction pending the disposition of the appeal, noting that the 

district court had failed to construe the claim. 

II 

As its principal ground for appeal, VendingData asserts that this case turns on 

the proper construction of the limitation that requires the formation of “at least one set of 
05-1203 6 

 

cards within the apparatus.” Accordingly, VendingData contends, the district court’s 

failure to provide any explicit construction of that claim language renders the preliminary 

injunction improper. 

A 

Shuffle Master argues at the outset that VendingData did not preserve its present 

argument that the district court should have conducted at least a preliminary claim 

construction. We have reviewed the parties’ submissions to the district court, and we 

conclude that VendingData adequately preserved its argument on that point. First, 

VendingData featured its claim construction argument in its papers in opposition to the 

preliminary injunction. Second, in its motion to the district court for a stay of the 

preliminary injunction order, filed approximately three weeks after the original order was 

entered, VendingData complained that the district court “did not analyze any specific 

claim or claim element of the patent.” Third, VendingData made the same point in its 

reply memorandum to the district court in support of its motion for a stay.1

 

From our review of the record, including those pleadings, it is evident that the 

definition of the term “set of cards” played a prominent role in the proceedings. In 

particular, VendingData made it clear that the outcome of the case would likely depend 

on the court’s construction of claim 20. VendingData raised the claim construction issue 

1

 In support of its argument that VendingData waived its right to contest the 

district court’s failure to conduct an adequate claim construction, Shuffle Master points 

to VendingData’s submission of a proposed order in the injunction proceedings. The 

submission of such an order does not constitute a waiver of challenges to the propriety 

of entering the injunction. The order simply reflected VendingData’s understanding of 

the grounds for the court’s ruling. In any event, when it submitted a proposed order 

granting the injunction, VendingData stated that it “reserve[d] its right to challenge” the 

court’s findings of fact and conclusions of law “at a later time.” 
05-1203 7 

prior to the court’s ruling and protested the inadequacy of the court’s claim construction 

after the ruling. For that reason, we do not agree with Shuffle Master that VendingData 

has waived its right to raise on appeal the district court’s failure to provide a sufficient 

construction of the claim language. 

B 

 We have held that a district court does not have to conduct a comprehensive and 

final claim construction in a preliminary injunction proceeding. Sofamor Danek Group, 

Inc. v. DePuy-Motech, Inc., 74 F.3d 1216, 1221 (Fed. Cir. 1996). Similarly, it is not 

necessary for a court to conduct an explicit claim construction if the claim construction 

issue is a simple one that needs no analysis, or in which there is no reasonable ground 

for dispute as to claim meaning. Toro Co. v. Deere & Co., 355 F.3d 1313, 1322 (Fed. 

Cir. 2004). However, a district court in a preliminary injunction proceeding has the duty 

to determine whether the movant is likely to prevail on the merits, and if that question 

turns on a contested issue of claim construction, the court must give the claim 

construction issue the attention necessary to determine the likelihood of success. In 

this case, the dispute over the meaning of the “set of cards” limitation is central to 

determining whether Shuffle Master is likely to prevail on the merits of its infringement 

claim. The district court was therefore required to provide some form of claim 

construction, even if abbreviated, preliminary, or tentative. 

 Shuffle Master argues that the phrase “at least one set of cards within the 

apparatus” means any number of cards that serve as the source from which the 

apparatus delivers hands to the delivery tray. Under that construction, it appears likely 

that the PokerOne device would infringe, since the internal stack in the PokerOne forms 
05-1203 8 

within the device and serves as the source from which dealing begins after the 

collection reaches a size equal to two hands of cards of the game being played. On the 

other hand, VendingData argues that the “set of cards within the apparatus” must be 

construed to refer to a set consisting of no more than one hand of cards. Under that 

interpretation, it appears likely that the PokerOne device would not infringe, since the 

internal stack accumulates cards until it contains at least two hands of cards before 

dealing begins. Thus, resolution of the claim construction issue framed by the parties is 

of critical importance to the issue of infringement. 

 Seizing on the fact that the dealing process in the PokerOne device begins as 

soon as the internal stack contains the number of cards needed for two hands, Shuffle 

Master contends that the PokerOne therefore operates in accordance with claim 20, 

even under VendingData’s proposed construction, because the PokerOne “forms two 

hands of cards within the apparatus as the source for the delivery of the first and 

second hands of cards to the tray.” In other words, Shuffle Master argues that the 

PokerOne device infringes even under VendingData’s proposed claim construction (or 

at least the construction put forth before the district court). That, however, does not 

appear likely to be the case. 

In the court below, VendingData argued that claim 20 requires “that a hand (or 

partial hand) of cards be formed inside the shuffler from a deck of cards” and that “no 

hands are formed within the PokerOne.” VendingData further argued that the 

PokerOne “does not form a hand (or partial hand) until the number of cards required for 

a hand have been delivered one-at-a-time to the external output tray.” In other words, 

under VendingData’s proposed construction the PokerOne likely does not infringe 
05-1203 9 

because no hand or hands are actually formed within the apparatus; the accumulation 

of a number of cards equal to two hands is not the same as the formation of a hand or 

hands within the device. Accordingly, in the absence of any claim construction by the 

district court we cannot accept Shuffle Master’s argument that the dispute over claim 

construction is immaterial to the outcome of this case and that Shuffle Master is likely to 

succeed on the merits regardless of which claim construction is ultimately adopted. 

 While claim construction is a question of law, the district court’s analysis is 

important to the process of claim construction, and in this context, as in others, we 

decline to construe the claim without the guidance of the district court’s construction. 

See Nazomi Commcns., Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 

2005) (“This court’s review of a district court’s claim construction, albeit without 

deference, nonetheless is not an independent analysis in the first instance. Moreover, 

in order to perform such a review, this court must be furnished ‘sufficient findings and 

reasoning to permit meaningful appellate scrutiny.’”); Anchor Wall Sys., Inc. v. 

Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003) (“In order to 

review the court’s finding of noninfringement, we must know what meaning and scope 

the district court gave to the asserted claims.”); Gechter v. Davidson, 116 F.3d 1454, 

1460 (Fed. Cir. 1997) (vacating and remanding decision of the Board of Patent Appeals 

and Interferences because it failed to “set forth . . . specific findings of fact and 

conclusions of law adequate to form a basis for . . . review”; noting that “[c]laim 

construction must . . . be explicit, at least as to any construction disputed by [the] 

parties”); Graco, Inc. v. Binks Mfg. Co., 60 F.3d 785, 791 (Fed. Cir. 1995) (“entire 

omission of a claim construction analysis from the opinion . . . provide[s] an independent 
05-1203 10 

basis for remand”). We therefore vacate the preliminary injunction and remand this 

case to the district court for further proceedings consistent with this opinion. 
NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition is 

not citable as precedent. It is a public record. 

United States Court of Appeals for the Federal Circuit 

 

05-1203 

SHUFFLE MASTER, INC., 

Plaintiff-Appellee, 

v. 

VENDINGDATA CORPORATION, 

Defendant-Appellant. 

MAYER, Circuit Judge, dissenting. 

While I agree that trial courts should provide an express claim construction, I do 

not believe this case requires vacatur and remand. Instead, because the trial court 

would not have abused its discretion in granting the preliminary injunction under either 

party’s proposed claim construction, I would affirm. 

We have recognized that the lack of an express claim construction by the trial 

court may require a remand in certain circumstances. See Graco, Inc. v. Binks Mfg. 

Co., 60 F.3d 785, 791 (Fed. Cir. 1995). However, common sense dictates that if a 

likelihood of infringement is established under both parties’ proposed constructions, 

then the trial court did not abuse its discretion in granting the preliminary injunction, so 
long as all other criteria were met.*

 Cf. Toro Co. v. Deere & Co., 355 F.3d 1313, 1322 

(Fed. Cir. 2004) (affirming an infringement finding in the absence of an express claim 

construction because no claim construction was offered that would avoid infringement); 

Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334 n.4 (Fed. Cir. 2000)

(reviewing a noninfringement judgment on the merits based on a claim construction 

inferentially set forth by the trial court). Here, bearing in mind that the application of the 

claims to the accused device is a question of fact upon which we afford deference to the 

trial court, Bai v. L & L Wings, 160 F.3d 1350, 1353 (Fed. Cir. 1998), I believe a finding 

of likelihood of infringement under either party’s proposed claim construction is fully

supported. 

It is clear from the evidence, as the court concedes, ante at 6-7, that Shuffle 

Master established a likelihood of infringement under its own proposed construction. 

The disputed contention, however, is whether infringement was shown to be likely under

VendingData’s proposed construction. VendingData contends that “a set of cards” 

means “a discrete hand or part of a hand.” Under that construction, however, the trial 

court could have determined that the internal stack consisted of multiple sets, wherein 

each set consisted of no more than one hand of cards. This determination is possible 

since the claims clearly allow more than one set of cards within the apparatus. See

U.S. Patent No. 6,655,684 claim 20 (requiring “at least one set of cards within the

apparatus” (emphasis added)). Although the sets are not physically divided, they are 

 

 *

 Although the trial court must independently construe the claims and may reject 

either party’s proposed claim construction, it appears that the only possible 

constructions here are those alternatives argued by the parties. 

05-1203 2
arranged or organized in the internal stack.** Moreover, requiring that the sets be 

physically separated, such as placed into slots or trays as in the embodiment disclosed 

in the specification, would amount to reading a claim limitation into the claims from the 

specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) 

(“[A]lthough the specification often describes very specific embodiments of the 

invention, we have repeatedly warned against confining the claims to those 

embodiments.” (citations omitted)). 

This understanding is further supported by the fact that the PokerOne recognizes 

each set within the internal stack as separate and distinct. In particular, the PokerOne 

delivers the first set, which is a single hand of cards, from the internal stack to the 

output tray. After the first hand is removed from the output tray, a second set, which 

also constitutes a single hand of cards, is delivered to the output tray. Therefore, a 

factual determination by the trial court that the PokerOne is likely to infringe under 

VendingData’s construction is not reversible error. 

Finally, despite VendingData’s arguments to the contrary, I believe that Shuffle 

Master sufficiently established the remaining criteria necessary for a preliminary

injunction, including irreparable harm. In particular, Shuffle Master presented evidence

that its commercial product under the patent accounts for 50% of its business and that 

VendingData sought to significantly decrease pricing. This evidence is sufficient to 

 

 ** After the trial court issued its injunction, the magistrate conducted a claim 

construction analysis and issued his recommendations to the district court. 

VendingData Corp. v. Shuffle Master, Inc., No. 04-1373 (D. Nev. Sept. 26, 2005) 

(Report & Recommendation). Although these recommendations were not before the 

trial court when issuing the preliminary injunction and have not yet been accepted by 

the trial court, it is worth noting that the parties appear to have agreed that “forming”

means “create” where “create” includes “arranging,” “organizing,” and “ordering.” Id. at 

4 n.1.

05-1203 3
support a finding of irreparable harm and the remaining factors are not challenged on 

appeal. Therefore, bearing in mind that “[t]he decision to grant a preliminary injunction 

is within the sound discretion of the district court,” Ranbaxy Pharms., Inc. v. Apotex,

Inc., 350 F.3d 1235, 1239 (Fed. Cir. 2003) (citations omitted), I dissent. 

05-1203 4