NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

SHFL ENTERTAINMENT, INC.,

Plaintiff-Appellant

v.

DIGIDEAL CORPORATION,

Defendant

______________________ 

2016-2705

______________________ 

Appeal from the United States District Court for the 

District of Nevada in No. 2:12-cv-01782-GMN-VCF, Judge 

Gloria M. Navarro.

______________________ 

Decided: May 2, 2018

______________________ 

 KIMBALL RICHARD ANDERSON, Winston & Strawn 

LLP, Chicago, IL, argued for plaintiff-appellant. Also 

represented by GEOFFREY P. EATON, Washington, DC; 

HOWARD I. SHIN, New York, NY.

______________________ 

Before DYK, TARANTO, and HUGHES, Circuit Judges.
2 SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION

HUGHES, Circuit Judge.

SHFL Entertainment, Inc. sued DigiDeal Corporation 

in the U.S. District Court for the District of Nevada for 

infringement of U.S. Patent Nos. 6,651,982 and 7,523,935. 

While the litigation was pending, the U.S. Patent and 

Trademark Office reexamined the patents, cancelling all 

originally asserted claims of the ’935 patent and confirming a new claim as patentable, and confirming all originally asserted claims of the ’982 patent in their amended 

form and two new claims as patentable. Based on the 

results of the reexaminations, the court found the entire 

suit moot and entered summary judgment against SHFL. 

The district court correctly found the case moot as to 

the cancelled claims of the ’935 patent. Suits based on 

cancelled claims must be dismissed for lack of jurisdiction, 

however. We thus vacate the entry of summary judgment 

as to the cancelled claims, and remand for the court to 

dismiss that part of the action for lack of jurisdiction. 

In addition, the court failed to determine whether the 

new and amended claims that emerged from the reexaminations of the two patents are substantially identical to 

the claims originally asserted in the action. We therefore 

vacate the grant of summary judgment as to those claims, 

and remand for the court to make that determination. 

I 

SHFL supplies gaming products, such as automatic 

card shufflers used in casinos. It owns the ’935 and ’982 

patents, which share a common specification that discloses card shuffling devices and methods of randomizing 

cards using the shuffling devices. DigiDeal similarly 

manufactures and markets gaming equipment, including 

an automatic single deck card shuffler known as the 

DigiShuffleTM (DigiShuffle). 

On October 10, 2012, SHFL sued DigiDeal for patent 

infringement, alleging that DigiDeal infringed and con-
SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION 3

tinued to infringe the ’935 and ’982 patents by “using and 

offering to sell” the DigiShuffle. On March 12, 2013,

SHFL served a “Disclosure of Asserted Claims and Infringement Contentions” on DigiDeal, disclosing that it 

was asserting claims 1–2, 9–11, and 14 of the ’935 patent 

and claims 1–3, 42–44, and 46 of the ’982 patent in the 

action. On March 14, 2013, the district court entered a 

stipulated scheduling order, which, among other things, 

retroactively provided that “Initial Disclosures pursuant 

to Fed. R. Civ. P. 26(a)(1)” be completed by March 12, 

2013 and separately that “Plaintiff’s disclosure of asserted 

claims and infringement contentions (LR 16.1-6) and 

accompanying production (LR 16.1-7)” also be completed 

by the same deadline. The scheduling order also provided 

that “[t]he deadline for filing motions to amend the pleadings or to add parties shall be July 11, 2013.”

On August 26, 2013, SHFL filed a motion for leave to 

amend its complaint, asserting that it has discovered that 

in addition to “using and offering for sale” the DigiShuffle, 

DigiDeal also infringes by “manufacturing” the product in 

the United States. On September 20, 2013, the court 

granted that motion. On September 25, 2013, SHFL 

amended its operative complaint, alleging that DigiDeal 

infringed and continued to infringe the asserted claims by 

“manufacturing, using, and offering to sell” the DigiShuffle.

While the litigation was pending, the PTO granted 

DigiDeal’s requests for ex parte reexaminations of the 

’935 and ’982 patents. On April 17, 2014, the district 

court entered an order granting a stipulation by the 

parties staying the litigation pending the final disposition 

of the ex parte reexaminations. As part of that stipulation, DigiDeal also agreed to a preliminary injunction, 

which provided that “[d]uring the pendency of the stay of 

this action” it “shall not manufacture, market, lease, offer 

to sell, sell, or place with any customer the accused 

DigiDeal card shuffler (i.e., the DigiShuffle), or any sub-
4 SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION

stantially similar automatic card shuffler, including the 

manufacture of the components of the DigiShuffle for 

assembly outside of the United States” and also “shall 

immediately take steps to remove any DigiShuffle card 

shuffler that is currently operating and/or has been 

installed for any customer.” Appx 226.1

The PTO initially found all asserted claims of the ’935 

patent invalid as obvious, see Appx 455, 457, 469–72, and 

all asserted claims of the ’982 patent invalid as anticipated or obvious, see Appx 421, 423, 433–48. In response, 

SHFL cancelled all asserted claims of the ’935 patent and 

added a new claim 15 to the patent, and amended all 

asserted claims of the ’982 patent and added two new 

claims 52 and 53 to the patent. The PTO then issued

reexamination certificates for the ’935 patent after cancelling asserted claims 1–2, 9–11, and 14 as requested and 

confirming new claim 15 as patentable, Appx 78–80, and

for the ’982 patent after confirming asserted claims 1–3, 

42–44, and 46 in their amended form and new claims 52 

and 53 as patentable, Appx 72–75.

On December 18, 2015, the district court lifted the litigation stay and directed the parties to file “an appropriate request for dispositive adjudication based on the 

results of the reexamination” of the patents. Appx 22–23. 

On January 7, 2016, SHFL served a “First Amended 

Disclosure of Asserted Claims and Infringement Contentions” on DigiDeal, disclosing that it continues to assert 

the originally asserted claims of the ’935 and ’982 patents, 

and additionally asserts claim 15 of the ’935 patent and 

claims 1–3, 42–44, 46, and 52–53 of the ’982 patent—

claims that emerged from the reexaminations. Rather 

than amend the operative complaint to assert post-

 

1 “Appx” refers to Appendix, attached to SHFL’s 

brief. 
SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION 5

reexamination accused infringing activities against 

DigiDeal, SHFL opted to assert such allegations through 

the amended disclosure served on DigiDeal.2

On January 8, 2016, DigiDeal filed a motion for summary judgment, arguing that the case was moot as to all 

asserted claims. Appx 23, 232–33. In support, DigiDeal

declared that “[it] has not made, used, offered to sell, or 

sold any automatic card shuffler, including without limitation DigiDeal’s DigiShuffle device” subsequent to the 

stay entered on April 17, 2014 or since the issuance of the 

reexamination certificates for the ’935 and ’982 patents. 

Appx 234. DigiDeal also moved the district court to

vacate the preliminary injunction entered on April 17, 

2014, when the court had stayed the matter pending the 

reexaminations. Id.

On March 30, 2016, the district court granted the motions, entering summary judgment against SHFL and 

vacating the preliminary injunction entered on April 17, 

2014. Appx 25–26; see also Appx 23 n.1. The court first 

noted that we have held in Fresenius USA, Inc. v. Baxter 

Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013), that “‘if the 

original claim is cancelled or amended to cure invalidity

[in a reexamination], the patentee’s cause of action is 

extinguished and the suit fails.’” Appx 25 (quoting Fresenius, 721 F.3d at 1340). The court then observed that as 

a result of the reexaminations, the asserted claims of the 

’935 patent “were cancelled in their entirety” and the 

asserted claims of the ’982 patent “were either amended 

to cure invalidity or dependent on an amended claim.” 

See id. (citations omitted). Applying “the binding holding 

in Fresenius” to the undisputed fact that “the asserted 

claims were either cancelled or amended to cure invalidity 

 

2 SHFL also appears to have presented such activities as hypothetical scenarios amounting to infringement.
6 SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION

during reexamination,” the court then found SHFL’s 

entire “cause of action . . . extinguished.” Id. 

SHFL appeals. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(1).3

II

We apply the law of the regional circuit when reviewing a district court’s grant of summary judgment. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 

(Fed. Cir. 2016). Summary judgment in the Ninth Circuit

is appropriate when, after drawing all reasonable inferences in favor of the non-moving party, there remains no 

genuine issue of material fact precluding the grant of

summary judgment. See Comite de Jornaleros de Redondo Beach v. City of Redondo Beach, 657 F.3d 936, 942 (9th

Cir. 2011).

We review a district court’s dismissal for mootness 

de novo. Ford Motor Co. v. United States, 688 F.3d 1319, 

1323 (Fed. Cir. 2012) (citing King Pharms., Inc. v. Eon 

Labs, Inc., 616 F.3d 1267, 1282 (Fed. Cir. 2010)). “[T]o 

avoid dismissal for mootness, an actual controversy must 

remain at all stages, not merely at the time the complaint 

is filed.” Gerdau Ameristeel Corp. v. United States, 519 

F.3d 1336, 1340 (Fed. Cir. 2008) (citing Steffel v. Thompson, 415 U.S. 452, 460 n.10 (1974)). 

A 

We first turn to the cancelled claims of the ’935 patent. The originally asserted claims of the patent were 

cancelled as a result of the reexamination, and the district 

court found the action moot as to those claims. We agree

with that determination. 

 

3 DigiDeal has not participated in this appeal. 
SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION 7

Fresenius makes clear that “when a claim is cancelled, 

the patentee loses any cause of action based on that claim, 

and any pending litigation in which the claims are asserted becomes moot.” 721 F.3d at 1340. It is undisputed 

that claims 1–2, 9–11, and 14 of the ’935 patent, the 

originally asserted claims of the patent, were all cancelled 

during the reexamination. The district court, therefore, 

correctly found the case moot as to those cancelled claims.

Suits based on cancelled claims must be dismissed for 

lack of jurisdiction, however. Foster v. Carson, 347 F.3d 

742, 745 (9th Cir. 2003) (“Mootness is a jurisdictional 

issue, and federal courts have no jurisdiction to hear a 

case that is moot, that is, where no actual or live controversy exists. If there is no longer a possibility that an 

appellant can obtain relief for his claim, that claim is 

moot and must be dismissed for lack of jurisdiction.”

(citations and quotation marks omitted)); see also Target 

Training Int’l, Ltd. v. Extended Disc N. Am., Inc., 645 F. 

App’x 1018, 1023 (Fed. Cir. 2016) (upholding the district 

court’s dismissal for lack of jurisdiction because Fresenius

rendered the suit moot as to the claims cancelled after 

reexamination). Accordingly, we vacate the entry of 

summary judgment as to the cancelled claims of the ’935 

patent, and remand for the district court to dismiss the 

claims from the action for lack of jurisdiction. 

B 

We next turn to the new claim 15 of the ’935 patent, 

and the new claims 52–53 and amended claims 1–3, 42–

44, and 46 of the ’982 patent, claims that emerged from 

the reexaminations of the two patents. The district court 

merely addressed the originally asserted claims of the 

’982 patent. Relying on Fresenius, the court found the 

case moot as to those claims because the claims were

amended to cure invalidity. Appx 25. SHFL argues that 

the court erred by failing to determine whether the new 

and amended claims that emerged from the reexamina-
8 SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION

tions are substantially identical to the originally asserted 

claims of the patents. We agree. 

As an initial matter, the court’s reliance on Fresenius

is misplaced. Fresenius involved only cancelled claims. 

721 F.3d at 1336. SHFL also asserted in the action the 

new and amended claims that emerged from the reexaminations.4 The district court failed to consider the effect of 

those claims before finding the action moot.

Relevant statutory provisions set forth the essential 

inquiry relevant to the new and amended claims. Section 

307(b) makes clear that “[a]ny proposed amended or new

claim determined to be patentable and incorporated into a 

patent following a reexamination proceeding will have the 

same effect as that specified in section 252 for reissued 

patents on the right of” any accused infringer. 35 U.S.C. 

 

4 Local Rules effective at the time permitted a party 

to amend its infringement contentions for good cause at 

any time before the discovery cut-off date. See D. Nev. 

L.R. 16.1-12 (effective Aug. 1, 2011, through Apr. 30, 

2016) (“Amendment of initial disclosures required by 

these Rules may be made for good cause without leave of 

Court anytime before the discovery cut-off date. Thereafter, the disclosures shall be final and amendment of the 

disclosures may be made only by order of the Court upon 

a timely showing of good cause.”) (currently D. Nev. 

Patent L.R. 1-12, effective May 1, 2016). Because discovery never closed in this action, SHFL properly amended 

its initial disclosure of the asserted claims when it served 

a “First Amended Disclosure of Asserted Claims and 

Infringement Contentions” on January 7, 2016. Indeed, 

service on the parties, without filing with the court, 

appears to suffice. See D. Nev. L.R. 16.1-6 (“[A] party 

claiming patent infringement shall serve on all parties a 

‘Disclosure of Asserted Claims and Infringement Contentions.’”) (currently D. Nev. Patent L.R. 1-6).
SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION 9

§ 307(b). Section 252 in turn provides that “in so far as 

the claims of the original and reissued patents are substantially identical, such [reissue of the original patent] 

shall not affect any action then pending nor abate any 

cause of action then existing . . . .” Id. § 252. Read conjunctively, amended or new claims incorporated into 

reexamined patents do not automatically abate—let alone 

moot—any pending action against the accused infringer 

based on the patents if the amended or new claims are 

“substantially identical” to the original claims. See also 

Bloom Eng’g Co. v. N. Am. Mfg. Co., 129 F.3d 1247, 1250 

(Fed. Cir. 1997) (“Unless a claim granted or confirmed 

upon reexamination is identical to an original claim, the 

patent can not be enforced against infringing activity that 

occurred before issuance of the reexamination certificate.”). Fresenius itself required this, stating that “the 

reexamination statute restricts a patentee’s ability to 

enforce the patent’s original claims to those claims that 

survive reexamination in ‘identical’ form.” 721 F.3d at 

1339. To determine whether a claim change is substantially identical, “it is necessary to analyze the claims of the 

original and the reexamined patents in light of the particular facts, including the prior art, the prosecution 

history, other claims, and any other pertinent information.” Laitram Corp. v. NEC Corp., 952 F.2d 1357, 

1362–63 (Fed. Cir. 1991) (emphasis added); see also R+L 

Carriers, Inc. v. Qualcomm, Inc., 801 F.3d 1346, 1350 

(Fed. Cir. 2015) (indicating that whether the scope of the 

reexamined claim is “substantially identical” to the scope 

of the original claim is “based on a normal claim construction analysis”). 

The question of whether SHFL’s case is moot as to the 

new and amended claims that emerged from the reexaminations of the two patents, therefore, necessarily depends 

on whether those claims are substantially identical to the 

originally asserted claims. The district court, however, 

failed to undertake that evaluation. Accordingly, we
10 SHFL ENTERTAINMENT, INC. v. DIGIDEAL CORPORATION

vacate the grant of summary judgment as to those claims, 

and remand for the court to make that determination in 

the first instance. 

III

We have considered SHFL’s remaining arguments 

and find them unpersuasive. Based on the foregoing, we 

vacate the district court’s grant of summary judgment 

against SHFL and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

No costs.