United States Court of Appeals 

for the Federal Circuit ______________________

ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY 

LIMITED AND ARISTOCRAT TECHNOLOGIES, 

INC.,

Plaintiffs-Appellants,

v.

INTERNATIONAL GAME TECHNOLOGY AND IGT,

Defendants-Appellees.

______________________

2010-1426

______________________

Appeal from the United States District Court for the 

Northern District of California in No. 06-CV-3717, Senior 

Judge Ronald M. Whyte.

______________________

Decided: March 13, 2013

______________________

MEREDITH MARTIN ADDY, Brinks Hofer Gilson & 

Lione, of Chicago, Illinois, argued for plaintiffsappellants. With her on the brief were DOMINIC P.

ZANFARDINO, ROBERT G. PLUTA and JEREMY S. SNODGRASS. 

Of counsel on the brief were BLAIR M. JACOBS and 

BUREDEN J. WARREN, McDermott Will & Emery LLP, of 

Washington, DC; and TERRENCE P. MCMAHON and 

ANTHONY DE ALCUAZ, of Menlo Park, California. 
2 ARISTOCRAT TECH v. INTL GAME TECH

DEANNE E. MAYNARD, Morrison & Foerster, LLP, of 

Washington, DC, argued for defendants-appellees. With 

her on the brief were ALEXANDER J. HADJIS, BRIAN R.

MATSUI, MARC A. HEARRON and ADAM A. ELTOUKHY. Of 

counsel on the brief was JEFFREY S. LOVE, Klarquist 

Sparkman, LLP, of Portland, Oregon. 

______________________

Before O’MALLEY, BRYSON*, and LINN**, Circuit Judges.

O’MALLEY, Circuit Judge.

Aristocrat Technologies Australia PTY Limited and 

Aristocrat Technologies, Inc. (collectively, “Aristocrat”) 

and International Game Technology and IGT (collectively, 

“IGT”) compete in the casino gaming machine industry. 

In 2006, Aristocrat brought the current action against 

IGT in the Northern District of California alleging that 

IGT directly and indirectly infringes two of Aristocrat's 

patents—U.S. Patent No. 7,056,215 (“the ’215 patent”) 

and U.S. Patent No. 7,108,603 (“the ’603 patent”). The 

asserted patents generally relate to gaming machines, 

such as slot machines, and claim methods for awarding a 

progressive prize through a bonus game that may appear 

in addition to the main game. Aristocrat accuses IGT 

gaming devices that feature various bonus games in 

which a player may win progressive prizes. Following 

remand from a previous appeal, IGT moved for summary 

judgment of noninfringement. 

On May 13, 2010, the district court granted IGT’s motion for summary judgment of noninfringement as to all 

asserted claims of both patents explaining that IGT's 

* Circuit Judge Bryson assumed senior status on 

January 7, 2013.

** Circuit Judge Linn assumed senior status on 

November 1, 2012.

 
 ARISTOCRAT TECH v. INTL GAME TECH 3

accused products require two separate actors: (1) the 

casino via the gaming machine and (2) the player. Under 

our decision in Muniauction, the district court found that 

the lack of a single entity performing all of the steps of 

the asserted claims precludes direct infringement as a 

matter of law. See Muniauction, Inc. v. Thomson Corp., 

532 F.3d 1318, 1330 (Fed. Cir. 2008). While Aristocrat’s 

appeal of the district court’s claim construction and summary judgment ruling was pending, we issued our en banc 

decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012). We affirm the 

district court’s claim constructions and its ruling on direct 

infringement and, in light of our decision in Akamai, we 

vacate and remand the portion of the district court’s 

ruling on indirect infringement.

BACKGROUND

A. Patents In Suit

The ’215 patent, entitled “Slot Machine Game and 

System With Improved Jackpot Feature,” issued on June 

6, 2006. As described in the specification, the claimed 

invention related to a system of linked gaming machines 

through which an allegedly improved jackpot mechanism 

is provided to a player. Incremental jackpots, i.e., the 

payout of an additional prize from a slot machine based 

on predetermined conditions in combination with randomly selected criteria, are well known in the prior art. 

According to the ’215 patent, however, these prior art 

systems lack flexibility in both operator control and the 

ability to tailor the awarding of prizes to player preferences. As an improvement on these existing systems, the 

’215 patent describes a system wherein an additional 

prize is awarded to a player through a secondary feature 

game appearing after the main game is completed. 

Through the use of this secondary game to award a progressive jackpot, the ’215 patent provides a system by 

which progressive jackpots can be linked across gaming 
4 ARISTOCRAT TECH v. INTL GAME TECH

platforms (e.g., slot machines, cards, keno, bingo or pachinko), are awarded based on credits wagered, and can 

be adjusted without changing the main game. Claim 1 of 

the ’215 patent is exemplary for our purposes:

In a network of gaming machines, each of said 

gaming machines having a user interface activatable by a player to affect game display, each of 

said gaming machines being capable of accepting 

different wager amounts made by the player, a 

method of randomly awarding one progressive 

prize from a plurality of progressive prizes using a 

second game to select said one progressive prize, a 

display of said second game being triggered upon 

an occurrence of a random trigger condition having a probability of occurrence related to the 

amount of the wager, comprising:

making a wager at a particular gaming 

machine in the network of gaming machines;

initiating a first main game at said particular gaming machine;

causing a second game trigger condition to 

occur as a result of said first main game 

being initiated, said second game trigger 

condition occurring randomly and having 

a probability of occurrence dependent on 

the amount of the wager made at said particular gaming machine, said step of causing the second game trigger condition 

including:

(1) selecting a random number 

from a predetermined range of 

numbers;

(2) allotting a plurality of numbers 

from the predetermined range of 
 ARISTOCRAT TECH v. INTL GAME TECH 5

numbers in proportion to the 

amount of the wager made at said 

particular gaming machine, said 

step of allotting including allotting 

one number for each unit of currency of the amount wagered; and

(3) indicating the occurrence of the 

second game trigger condition if 

one of the allotted numbers 

matches the selected random 

number;

triggering a second game to appear at said 

particular gaming machine in response to 

said occurrence of said second game trigger condition, said second game appearing 

after completion of said first main game;

randomly selecting said one progressive 

prize from said plurality of progressive 

prizes that has been won;

displaying said second game to the player 

at said particular gaming machine in response to said triggering;

activating said user interface at said particular gaming machine by said player 

during said displaying of said second game 

to affect the display of said second game;

identifying to the player said one progressive prize from said plurality of progressive prizes that has been won; and

awarding said one progressive prize from 

said plurality of progressive prizes that 

has been won.

’215 patent col. 8 l. 45 – col. 9 l. 25. Figure 2 of the ’215 

patent shows the algorithm by which the system awards a 
6 ARISTOCRAT TECH v. INTL GAME TECH

progressive prize to a player.

Through this algorithm, random numbers are generated 
 ARISTOCRAT TECH v. INTL GAME TECH 7

from a predetermined range based on the preferences of 

the operator. The system then selects a random number 

from that range and allocates a contribution to the progressive prize based on the number of credits wagered by 

the player. The player’s numbers are then selected, again 

based on the number of credits wagered, and compared to 

the random number generated in step 21. If the random 

number matches one of the player’s numbers, the system 

initiates the feature game through which the value of the 

progressive jackpot to be paid to the player is determined. 

If the feature game is not triggered—i.e., there is not a 

match between one of the player’s numbers and the 

random number—a new random number is selected and 

the system waits for the main game to be initiated again.

The ’603 patent, also entitled “Slot Machine Game 

and System With Improved Jackpot Feature,” issued on 

September 19, 2006 and is a continuation of the ’215 

patent. The claims of the ’603 patent are substantially 

similar for the purposes of this appeal to the claims of the 

’215 patent except that they lack the step of “activating 

said user interface at said particular gaming machine by 

said player during said displaying of said second game to 

affect the display of said second game.” The removal of 

this step means the progressive jackpot awarded to the 

player is selected randomly rather than based on input 

from the player.

B. Procedural History

On June 12, 2006, Aristocrat filed suit against IGT for 

infringement of the ’215 patent in the United States 

District Court for the Northern District of California. 

Aristocrat amended its complaint to assert infringement 

of the ’603 patent upon the issuance of that patent. After 

the parties completed claim construction briefing, IGT 

moved for summary judgment of invalidity based on a 

theory that the ’215 patent was abandoned and that 

Aristocrat failed to properly revive the application. In 
8 ARISTOCRAT TECH v. INTL GAME TECH

addition, according to IGT, the improperly revived ’215 

patent application anticipated the ’603 patent under 35 

U.S.C. § 102(b). The district court granted IGT's motion 

on June 13, 2007 and entered final judgment in favor of 

IGT. Aristocrat Techs. Austl. Pty, Ltd. v. Int’l Game Tech., 

No. 06-CV-3717, 2007 U.S. Dist. LEXIS 97582 (N.D. Cal. 

Sept. 4, 2007). Aristocrat timely appealed and, on September 22, 2008, we reversed the judgment of the district 

court finding “that improper revival may not be asserted 

as a defense in an action involving the validity or infringement of a patent.” Aristocrat Techs. Austl. Pty Ltd. 

v. Int’l Game Tech., 543 F.3d 657, 663 (Fed. Cir. 2008). 

Accordingly, we remanded the case to the district court.

On February 19, 2009, IGT filed a Motion for Summary Judgment of Noninfringement (IGT’s “Motion”) 

arguing, based on a joint infringement defense, that IGT 

performs some, but not all, of the claimed steps in the 

asserted patents. The district court held a claim construction hearing on March 18, 2009, based on the briefing filed prior to the first appeal. On May 14, 2009, the 

district court entered its claim construction order and 

ordered supplemental briefing on terms—including “making a wager” and “awarding”—at issue in this appeal. 

The parties addressed the supplemental terms in the 

remaining briefing on IGT’s Motion.

On May 13, 2010, the district court granted summary 

judgment in favor of IGT. The district court analyzed 

Aristocrat’s infringement contentions under the framework we set forth in Muniauction, whereby direct infringement requires a single party to perform every step 

of a claimed method and, where more than one party 

performs the steps of the claimed method, there can be no 

infringement absent direction or control over the entire 

process by the accused party. Aristocrat Techs. Austl. Pty, 

Ltd. v. Int’l Game Tech., 714 F. Supp. 2d 991, 995 (N.D. 

Cal. 2010). Finding it “undisputed that the ‘activating 

user interface’ step is performed by the player, not by the 
 ARISTOCRAT TECH v. INTL GAME TECH 9

gaming machine,” and thus the ’215 patent requires that

“at least one step must be performed by the player, and at 

least one step must be performed by the gaming machine,” the district court turned to the question of whether 

IGT exercised direction or control over the player’s performance of the “activating a user interface” step. Id. 

The district court first rejected Aristocrat’s theory 

that IGT’s provision of free credits to a player is sufficient 

direction or control such that a player’s actions are attributable to IGT. Next, the court addressed Aristocrat’s 

contention that IGT infringes the claimed methods 

through its testing of the accused machines by IGT employees. While the “testing” theory of infringement solved 

Aristocrat’s divided infringement problem with respect to 

the “activating a user interface” limitation, the district 

court found that IGT failed to practice the step of “awarding said one progressive prize from said plurality of 

progressive prizes that has been won” while testing the 

machines. As a matter of claim construction, the district 

court held that the “awarding” step “requires more than 

displaying the amount of the prize won.” Id. at 997. 

Thus, because “[i]t is undisputed that during the testing 

of gaming machines legal entitlement to a prize is never 

conferred upon IGT employees,” the district court found 

that the “awarding” step is not performed during testing. 

Id. 

With respect to the ’603 patent—which lacks the “activating a user interface” limitation—the district court 

analyzed whether the “making a wager” step also requires 

some action by a player. Considering both the intrinsic 

evidence, in the form of the shared specification of the 

’215 and ’603 patents and the prosecution history of the 

’215 patent, and the extrinsic evidence, introduced 

through expert testimony submitted by Aristocrat, the 

district court rejected Aristocrat’s contention that “making a wager” means processing a bet. Rather, the court 

agreed with IGT and construed the term “to mean betting, 
10 ARISTOCRAT TECH v. INTL GAME TECH

which is an act performed by the player.” Id. at 1000. 

The court also noted that, until IGT brought its Motion, 

Aristocrat interpreted “making a wager” as a step performed by the player as opposed to the operator of the 

gaming machine. Id. Having previously considered and 

rejected Aristocrat’s contention that IGT directs or controls the players by providing free credits and that IGT 

performs the “awarding” step while testing the machines, 

the district court granted summary judgment of noninfringement in favor of IGT on both the ’215 and ’603 

patents.

On June 15, 2010, the district court granted Aristocrat's motion for entry of final judgment of noninfringement. Aristocrat timely appealed and we have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

On appeal, Aristocrat contests the district court’s construction of “making a wager” and “awarding said one 

progressive prize.” Aristocrat also argues that material 

issues of fact exist as to whether IGT performs the “making a wager” and “awarding” steps under the district 

court’s constructions. IGT contends, in turn, that the 

district court correctly construed these terms and that 

summary judgment of noninfringement is separately 

supportable because, in the accused devices, the bonus 

game appears before, rather than after, the conclusion of 

the main game, and thus does not satisfy the limitation 

that the “second game appears after completion of said 

first main game.”

A. Claim Construction

We review claim construction de novo. Cybor Corp. v. 

FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en 

banc). To interpret the claims, we look first to the intrinsic evidence in the record, including the claim language, 

the written description, and the prosecution history. 
 ARISTOCRAT TECH v. INTL GAME TECH 11

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 

(Fed. Cir. 1996). Although it is less significant than 

intrinsic evidence, a court can consider extrinsic evidence 

in the record, which “consists of all evidence external to 

the patent and prosecution history, including expert and 

inventor testimony, dictionaries, and learned treatises.” 

Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 

2005) (en banc) (internal quotation marks omitted)(citation omitted). A claim’s preamble may limit the 

claim when the claim drafter uses the preamble to define 

the subject matter of the claim. Allen Eng’g Corp. v. 

Bartell Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002). 

1. “awarding said one progressive prize”

In granting summary judgment for IGT, the district 

court found no evidence that the patentee intended the 

term “awarding said one progressive prize” to mean 

something other than its ordinary meaning. Thus, the 

court construed the “awarding prize” limitation as conferring rights to a prize as opposed to simply displaying for 

viewing the amount of the prize won. Specifically, the

district court found that the claims of the ’215 patent 

include both the steps of identifying the prize to a player 

and awarding said prize to the player; if the awarding 

step could be met by displaying the prize amount, the 

identifying step would be rendered superfluous. Because 

“[i]t is undisputed that during the testing of gaming 

machines, legal entitlement to a prize is never conferred 

upon IGT employees,” the district court determined that 

the “awarding step” was not performed by IGT during the 

testing of the machines and summary judgment in favor 

of IGT was appropriate. Aristocrat, 714 F. Supp. 2d at 

997.

Aristocrat argues on appeal that, contrary to the district court’s construction, the “awarding” step does not 

“require a transfer of legal entitlement to the prize” and 

that “awarding” means “presenting” or “display[ing]” to 
12 ARISTOCRAT TECH v. INTL GAME TECH

“the player the monetary amount determined to be due.” 

Appellant’s Br. at 31-32. Aristocrat first argues that “the 

intrinsic evidence shows that the ‘awarding’ step occurs 

when the gaming machine presents” or “display[s] to the 

player” a “monetary amount due.” Id. at 32. For example, because the preamble of each of the claims begins 

with: “In a network of gaming machines . . . ,” Aristocrat 

asserts that the specification confirms its understanding 

that the system itself, without involvement of the game 

operator or the player, performs the awarding step. 

Aristocrat also points to the statement that: 

[p]referably, the prize awarded in a jackpot game 

by the system of the present invention, is a monetary amount the value of which is incremented 

with each game played on each gaming machine 

or console in the system. Alternatively, the incrementation can take place on a per token bet 

basis.

’215 patent col. 4 ll. 45-50. And according to Aristocrat, 

that Figure 2 depicts a “prize awarding algorithm” that 

may be programmed into the gaming machine in an 

embodiment of the claimed method is further evidence 

that the system performs the awarding step without 

involvement of the player. Finally, Aristocrat argues that 

defining “awarding” in terms of conferring a “legal entitlement” produces an absurd result, wherein “claim scope 

could differ from jurisdiction to jurisdiction, depending on 

what constitutes ‘legal entitlement.’” Appellant’s Br. at 

36. The awarding step, therefore, could never be met “by 

a gaming machine in Utah or Hawaii because under their 

laws no person is legally entitled to an award by a slot 

machine.” Id. at 37. Yet, in other states where gambling 

is legal, Aristocrat argues, “that same person playing the 

same machine with the same outcome may be legally 

entitled to an award.” Id.

IGT counters that Aristocrat’s construction is “at odds 
 ARISTOCRAT TECH v. INTL GAME TECH 13

with the ordinary meaning of ‘awarding’” in that it fails to 

correspond to the dictionary definitions cited by Aristocrat. Appellee’s Br. at 33. IGT also contends that Aristocrat’s construction is inconsistent with the claim language 

surrounding the term at issue. Specifically, as did the 

district court, IGT points to the additional steps of “displaying” and “identifying” the prize as confirmation that 

awarding means conferring an entitlement, rather than 

“presenting” the amount due. Thus “awarding” must 

have a different meaning from those other terms and 

Aristocrat’s construction “would render the ‘identifying’ 

step superfluous.” Id. at 35 (citing Merck & Co. v. Teva 

Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) 

(“A claim construction that gives meaning to all the terms 

of the claim is preferred over one that does not do so.”)). 

And, the “construction that Aristocrat would give to 

‘awarding,’ i.e., displaying to the player the amount to be 

awarded, is precisely the same action that is performed in 

the immediately preceding step[] [of] ‘identifying to the 

player said one progressive prize . . . that has been won.’” 

Appellee’s Br. at 35.

IGT also argues that the specification uses “award” 

and “pay” interchangeably. First, IGT points to the 

specification’s descriptions of prior art schemes for inducing play at slot machines: 

Many schemes have been devised in the past to 

induce players to play slot machines including 

schemes such as specifying periods during which 

jackpot prizes are increased or bonus jackpots 

paid. Other schemes involve awarding an additional prize to a first player to achieve a predetermined combination on a poker machine. 

’215 patent col. 1 ll. 13-18 (emphasis added); 

[O]ne . . . prior art arrangement . . . pays the jackpot prize when the count reaches some predetermined and randomly selected number. In a more 
14 ARISTOCRAT TECH v. INTL GAME TECH

recent prior art arrangement, . . . the prize is 

awarded to a machine when the game number it 

is allocated matches a preselected random number.

’215 patent col. 1 ll. 26-35 (emphasis added). IGT also 

refutes Aristocrat’s reliance on Figure 2 and argues that 

“Figure 2 and a discussion of it in the specification make 

clear that paying the award is part of the awarding process.” Appellee’s Br. at 37. IGT notes that the last step 

on the flowchart depicted in Figure 2 is to “wait for input 

to indicate prize paid and machine unlocked.” ’215 patent 

Fig. 2. In addition, IGT cites the specification’s discussion 

of Figure 2, which explains that: 

In the preferred embodiment, a prize is always 

awarded to the jackpot feature game, the feature 

game being used to determine the size of the prize 

to be awarded (see step 27). The winning machine 

is then locked up (see step 28) and the controller 

awaits an indication that the prize has been paid 

before allowing the machine to be unlocked (see 

step 29). In some embodiments, the machine will 

not be locked up in steps 28 and 19, but instead 

the prize will simply be paid . . . .

’215 patent col. 6 ll. 38-45. 

We agree with IGT and the district court that the 

awarding step must be construed as conferring rights 

from the operator of the game to the player. While Aristocrat does cite evidence suggesting that the “awarding” 

step is performed by a component within “a network of 

gaming machines,” that evidence fails to show that 

awarding means “presenting to the player the monetary 

amount determined to be due.” Aristocrat’s reliance on 

the statement in the summary of the invention that 

“[p]referably, the prize awarded in a jackpot game by the 

system of the present invention, is a monetary amount 

the value of which is incremented with each game played 
 ARISTOCRAT TECH v. INTL GAME TECH 15

on each gaming machine or console in the system” is 

misplaced because that sentence merely describes the 

character of the prize to be awarded; it does not define 

what constitutes the awarding step. ’215 patent col. 4 ll. 

44-48. 

Aristocrat’s proposed construction of the “awarding” 

step is also inconsistent with the surrounding claim 

language. As noted by the district court and IGT, this 

claim language shows that “the ‘awarding prize’ step 

cannot be met simply by displaying [or ‘presenting’] the 

amount of the prize won” because “this would render the 

‘identifying prize’ step superfluous.” Aristocrat, 714 F. 

Supp. 2d at 996. Aristocrat attempts to differentiate 

between these two steps by arguing that the “identifying” 

step involves “indicat[ing] which one of the four named 

progressive prizes is won” without displaying the amount 

of the prize, while the “awarding” step displays the 

amount of the prize. Appellant’s Br. at 34-35. This 

distinction lacks support in the intrinsic record and is 

inconsistent with the ordinary meaning of the terms 

“identifying” and “awarding.” Both steps use identical 

language to refer to the object of the claimed action: “said 

one progressive prize from said plurality of progressive 

prizes that has been won.” Yet, Aristocrat would have 

this language mean different things depending on the 

step in which it is used. In the “identifying” step, Aristocrat would have this language mean the “type” of progressive prize won, “e.g., grand, major, minor or mini.” Id. at 

34. With respect to the “awarding” step, Aristocrat would 

have the identical language mean the “amount” of the 

progressive prize won. The only difference in the language of the two steps, however, is that one begins with 

“identifying to the player,” while the other begins with 

“awarding.” Aristocrat does not explain how this distinction supports two distinct meanings of “said one progressive prize from said plurality of progressive prizes that 

has been won.”
16 ARISTOCRAT TECH v. INTL GAME TECH

Nor does the specification support such a distinction. 

The ’215 patent describes an embodiment in which the 

“feature jackpot screen and signs display which jackpot 

has been won,” but this description does not assign a 

different meaning to the “said one progressive prize” 

language depending on the step in which it appears. See

’215 patent col. 8 ll. 10-11. Rather, this embodiment 

demonstrates that Aristocrat’s construction of the “awarding” step would render the identifying step superfluous. 

Specifically, the above-cited description uses “display” to 

describe the action which Aristocrat claims is performed 

during the “identifying” step, i.e., indicating what type of 

prize was won. And, “display” is the same verb Aristocrat 

uses to describe the action performed during the “awarding” step. Compare ’215 patent col. 8 ll. 10-11 (“[T]he 

feature jackpot screens and signs display which jackpot 

has been won.”) (emphasis added), with Appellant’s Br. at 

35 (“The ‘awarding’ step occurs when the ‘monetary 

amount’ . . . is displayed to the player in a jackpot game . . 

. .”) (emphasis added). If one were to substitute “display” 

for both “identifying” and “awarding” in the claims, the 

only distinction between the steps would be the “to the 

player” language in the identifying step. The absence of 

“to the player” in the “awarding” step, however, cannot 

justify Aristocrat’s proposed dichotomy wherein one step 

involves displaying the monetary amount of the prize 

while the other displays the type of prize won. The district court’s—and our—construction does not suffer from 

the same infirmity. Under the correct construction, “said 

one progressive prize from said plurality of progressive 

prizes that has been won” would have the same meaning 

in both steps, and the “identifying” step is not superfluous.

We also reject Aristocrat’s contention that the district 

court’s construction would result in inconsistent treatment of the patent in different jurisdictions. Gambling 

may be tolerated to a greater or lesser extent in different 
 ARISTOCRAT TECH v. INTL GAME TECH 17

states but we do not construe the awarding step—or view 

the district court’s determination—so narrowly as to be 

dependent on a particular state’s gambling regulations. 

The critical aspect of the construction of the “awarding” 

step is the transfer of the right to a prize from the casino 

operator to the player—a transfer that not even Aristocrat alleges occurs during IGT’s testing of their equipment. That a particular state’s law may complicate a 

player’s ability to enforce collection of their prize does not 

affect the operation of the system claimed in the asserted 

patents or our construction of the “awarding” step.

Finally, while we see no reason to resort to consideration of extrinsic evidence, given the clarity of the claim 

term itself and the support within the specification, we 

note that our construction is fully consistent with the 

dictionary definitions put forward by both parties. Aristocrat argues that, in relying on the dictionary definition, 

the district court imported an extraneous limitation into 

the claims. But, contrary to this contention, the district 

court simply used the provided definitions to inform its 

understanding of the “ordinary and customary” meaning 

of the word “award.” See Phillips, 415 F.3d at 1322-23

(“Dictionaries or comparable sources are often useful to 

assist in understanding the commonly understood meaning of words and have been used both by our court and the 

Supreme Court in claim interpretation.”); see also id.

(“[J]udges are free to consult dictionaries . . . at any time 

in order to better understand the underlying technology 

and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does 

not contradict any definition found in or ascertained by a 

reading of the patent documents.”) (internal quotation 

marks omitted)(citation omitted).

2. “making a wager”

The claims of the asserted patents describe a network 

of gaming machines, “each of said gaming machines being 
18 ARISTOCRAT TECH v. INTL GAME TECH

capable of accepting different wager amounts made by a 

player.” ’603 patent col. 8 ll. 8-10; see also ’215 patent col. 

8 ll. 47-49, col. 9 ll. 28-30. As interpreted by the district 

court, this claim language “indicates that gaming machines accept wagers, while players make wagers.” Aristocrat, 714 F. Supp. 2d 991, 994 (N.D. Cal. 2010)

(emphasis in original). Thus, the district court construed 

“‘making a wager’ to mean betting, which is an act performed by the player.” Id. at 1000. Aristocrat contends 

that the district court improperly added the limitation 

that the act is performed by the player and that “making 

a wager” is merely carrying out a bet. Under Aristocrat’s 

proposed construction, all of the steps would have been 

performed by a single actor during normal play. 

Aristocrat argues on appeal that the district court 

failed to recognize that when the claims require that a 

step be performed by the player—namely the “activating 

step” of the ’215 patent—the claim explicitly states “by 

the player” and that claim 4 of the ’215 patent—the 

method of claim 2 wherein the step of making a wager 

includes betting a plurality of credits—confirms that the 

gaming machine itself carries out a bet. Aristocrat’s 

contentions are inconsistent with the specification, however. For example, when describing the algorithm used 

by the gaming machine, the Abstract makes clear that 

credits are bet by the player:

Prior to each game, the gaming machine (10) selects a random number from a range of numbers 

and during each game, the machine allocates the 

first n numbers in the range, where n is the number of credits bet by the player in that game. 

’215 patent at [57]. In addition, when describing prior art 

machines, the specification speaks in terms of the player 

as the actor doing the betting:

With some prior art combination based trigger arrangements there is a serious disadvantage in 
 ARISTOCRAT TECH v. INTL GAME TECH 19

that the player betting a single token per line, is 

just as likely to achieve a jackpot as the player 

playing multiple tokens per line. This has the effect of encouraging players playing for the bonus 

jackpot to bet in single tokens, rather than betting 

multiple tokens per game.

Id. col. 1 ll. 42-48 (emphasis added). The specification 

also appears to use “playing” and “betting” synonymously, 

referring, in both cases, to actions of the player:

Typically, it would be expected that the game return (RTP) is independent of the number of coins 

bet per line. With conventional progressive jackpot games though, increasing the credits bet per 

line creates a relative disadvantage as far as RTP 

is concerned. Lets [sic] say the start-up amount 

for a feature jackpot is $10000. A player who is 

playing 1 credit per line has a chance for $10000 

for each credit played, whereas a player playing 5 

credits per line only has a chance for $2000 for 

each credit played. This creates a scale of diminishing returns. The smart player who gambles for 

the feature jackpot only, will always cover all 

playlines, but will only bet 1 credit per line because the prize paid for the feature jackpot is the 

same irrespective of the bet.

Id. col. 2 ll. 3-16 (emphasis added). The above passages 

show that: (1) “betting” is an action performed by the 

player; and (2) contrary to Aristocrat’s contention, the 

term “credits bet” refers to credits that were bet by the 

player.

Nor does the prosecution history support Aristocrat’s position that the machine itself makes the bet. As 

originally drafted, the “making a wager” step made clear 

that “betting” is performed by the player and that the 

machine “allows” such betting: “allowing the player to bet 

a plurality of credits for a single play at a gaming ma-
20 ARISTOCRAT TECH v. INTL GAME TECH

chine in the bank of gaming machines.” J.A. 575 (emphasis added). Through an amendment, Aristocrat modified 

the above language as follows, resulting in the language 

that issued as the “making a wager” step: “allowing the 

player to bet a plurality of credits for a single play making 

a wager at a particular gaming machine in the bank 

network of gaming machines.” J.A. 629 (emphasis and 

strikethrough in original). By removing the reference to 

the actor that “allows” the betting, Aristocrat, at best, 

introduced ambiguity into the claim. The amendment did 

not clearly limit the claim to activity by the machine as 

opposed to the player. 

Aristocrat further argues that the district court erroneously treated “wager”—as it appears in the phrase 

“making a wager”—and “wager amount”—as it appears in 

the preamble of claim 2 of the ’215 patent—as synonymous. According to Aristocrat, this error led the court to 

conclude that, because the preamble states that “wager 

amounts” are made by a player, “wagers” must also be 

made by a player. In doing so, Aristocrat contends, “the 

district court improperly rendered meaningless the term 

‘amount’ in the preamble, and read the limitation ‘by a 

player’ into the phrase ‘making a wager.’” Appellant’s Br.

at 45. In Aristocrat’s view, the player identifies a “wager 

amount” while the gambling machine “carrie[s] out” a 

“‘wager’ (or bet).” Id.

Aristocrat’s arguments lack merit. As the district 

court found, the use of “amounts” is necessary in the 

preamble passage but not in the “making a wager” step. 

An asserted purpose of the patented invention was to 

overcome a disadvantage in the prior art in which a 

player had no incentive to bet more than a single credit 

per game because the odds of winning the bonus were the 

same regardless of the number of credits bet. The patentee overcame this disadvantage by tying the odds of winning the bonus to the number of “credits bet,” i.e., the 

wager amount, made by the player. Thus, for the inven-
 ARISTOCRAT TECH v. INTL GAME TECH 21

tion to work, the gaming machine must be “capable of 

accepting different wager amounts made by the player,” 

as the preamble recites; if a gaming machine could accept 

only one wager amount, e.g., a single credit, the machine 

could not perform the asserted purpose of the invention, 

i.e., varying the probability of the appearance of the 

feature game based on the number of credits bet. ’603

patent col. 8 ll. 9-10, ’215 patent col. 8 l. 48. Similarly, the 

“causing a second game trigger condition” step discusses 

the “amount of the wager” because, as in the preamble, 

the inclusion of “amount” was necessary to explain the 

relationship between the value of the wager and the 

probability of the feature game appearing. ’215 patent

col. 8 ll. 59-64; col. 8 ll. 22-25 (“causing a second game 

trigger condition to occur . . . said second game trigger 

condition occurring randomly and having a probability of 

occurrence dependent on the amount of the wager made at 

said gaming machine . . .”) (emphasis added). 

In the “making a wager” step it is unnecessary to 

refer to “amounts” because the step does not discuss tying 

the odds of the feature game’s appearance to the amount 

of the wager. Thus, contrary to Aristocrat’s contention, 

the district court did not treat “wager” as synonymous 

with “wager amounts.” Rather, it recognized that “wager 

amount” referred to the amount (or value) of the wager—

i.e., the number of credits bet—whereas, standing alone, 

“wager” simply referred to a bet. The preamble makes 

clear that the player chooses “different wager amounts” 

and, absent contrary evidence, it is reasonable to conclude 

that the same actor that chooses “wager amounts” also 

makes “wagers.” 

Aristocrat also claims that the district court “improperly disregarded” its expert’s declaration as conclusory. We agree with the district court’s characterization of 

Mr. Crevelt’s declaration and see nothing improper in 

discounting conclusory statements as “not useful.” See

Phillips, 415 F.3d at 1318 (“[E]xtrinsic evidence in the 
22 ARISTOCRAT TECH v. INTL GAME TECH

form of expert testimony can be useful to a court for,” 

inter alia, the purpose of “establish[ing] that a particular 

term in the patent or the prior art has a particular meaning in the pertinent field. However, conclusory, unsupported assertions by experts as to the definition of a claim 

term are not useful to a court.”) (citations omitted). While 

Crevelt’s declaration explains, at length, how a gambling 

machine’s software “carr[ies] out or implement[s] a bet by 

executing computer code,” it fails to explain whether the 

patent’s use of “making a wager” refers to: (1) the steps 

performed by the gaming machine when it implements a 

bet; or (2) to the antecedent acts performed by the player 

when she places a bet. See J.A. 442-43. Instead, Crevelt’s 

declaration “assumes that ‘making wager’ means processing a bet” and then explains how the machine performs the processing. The district court explained the 

circularity of Crevelt’s reasoning as follows:

Crevelt explains that microprocessors have been 

used to control gaming machines since the early 

1980s, and whenever a bet is placed, microprocessors must carry out a sequence of programming 

steps, in particular, the step of transferring credits from the credit meter to the bet meter. Crevelt 

Decl. ¶¶ 6, 11. Since microprocessor involvement 

is required to process a bet, Crevelt concludes that 

“making a wager” necessarily refers to the procedure by which microprocessors transfer credits 

from the credit meter to the bet meter. See id. at 

¶ 6 (“IGT's proposed construction, in effect, would 

divest the gaming machine of any function related 

to processing a wager amount.”). This reasoning, 

however, begs the question since it assumes that 

“making a wager” means processing a bet. If 

“making a wager” refers to processing a bet, one

may infer that “making a wager” describes this 

microprocessor step. On the other hand, if “making a wager” refers to the act of betting, then it 
 ARISTOCRAT TECH v. INTL GAME TECH 23

would describe an act by the player rather than 

the microprocessor. 

Aristocrat, 714 F. Supp. 2d at 999 (footnote omitted). 

Aristocrat urges us to find that Phillips requires only 

that an expert explain “how” a person of ordinary skill in 

the art would understand the term, but that an expert 

need not explain “why” a person of ordinary skill in the 

art would understand a term in a particular manner. 

This argument ignores Phillips’s teaching that “conclusory, unsupported assertions by experts as to the definition 

of a claim term are not useful to a court.” 415 F.3d at 

1318 (emphasis added). By failing to explain why a 

person of ordinary skill in the art would understand 

“making a wager” to describe the steps performed by the 

microprocessor in processing the bet, Crevelt failed to 

support his assertion that “making a wager,” as understood by a person of ordinary skill in art, “means transfer 

of credits from the credit meter to the bet meter by the 

game software.” J.A. 443. We find that the district court 

properly applied Phillips when it discounted Crevelt’s 

declaration.1

1 In its reply brief, Aristocrat attempts to bolster 

Crevelt’s declaration by citing, for the first time, a Pennsylvania gambling regulation that describes a gaming 

machine configured to wager credits:

A slot machine approved for use in a licensed 

facility must be configured to wager credits 

available for play in the following order: (1) 

Noncashable credits. (2) Cashable credits.

58 Pa. Code § 461a.7(x) (2010). This extrinsic evidence of industry-specific usage was not part of the record 

before the District Court, and Aristocrat cannot raise it 

for the first time on appeal—let alone in reply. See, e.g., 

 
24 ARISTOCRAT TECH v. INTL GAME TECH

For the reasons stated above, we agree with the district court that the term “making a wager” should be 

construed to mean “betting, which is an act performed by 

the player.”

B. Direct Infringement

Having construed the disputed claims, we turn to the 

district court’s grant of summary judgment of noninfringement. This court “reviews the district court’s grant 

or denial of summary judgment under the law of the 

regional circuit.” Bd. of Trs. of Leland Stanford Junior 

Univ. v. Roche Molecular Sys., 583 F.3d 832, 839 (Fed. 

Cir. 2009), aff'd, 131 S. Ct. 2188, 180 L. Ed. 2d 1 (2011) 

(internal quotation marks omitted)(citation omitted). The 

Ninth Circuit reviews de novo a district court’s grant or 

denial of summary judgment. Humane Soc'y of the US v. 

Locke, 626 F.3d 1040, 1047 (9th Cir. 2010).

To establish liability for direct infringement of a 

claimed method or process under 35 U.S.C. § 271(a), a 

patentee must prove that each and every step of the 

method or process was performed. BMC Res., Inc. v. 

Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007); 

Muniauction, 532 F.3d 1318. In the recent en banc decision of this court in Akamai, we addressed the requirements for infringement under 35 U.S.C. § 271(b) but 

found that “we have no occasion at this time to revisit any 

of those principles regarding the law of divided infringement as it applies to liability for direct infringement 

under 35 U.S.C. § 271(a).” Akamai, 692 F.3d at 1307. 

Thus, “for a party to be liable for direct patent infringement under 35 U.S.C. § 271(a), that party must commit 

all the acts necessary to infringe the patent, either personally or vicariously.” Id. (citing Cross Med. Prods., Inc. 

v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311 

Conoco, Inc. v. Energy & Envtl. Int'l, L.C., 460 F.3d 1349, 

1358-59 (Fed. Cir. 2006).

 
 ARISTOCRAT TECH v. INTL GAME TECH 25

(Fed. Cir. 2005); Fromson v. Advance Offset Plate, Inc., 

720 F.2d 1565, 1568 (Fed. Cir. 1983)). 

For method claims—such as those at issue here—a 

patent holder must establish that an accused infringer 

performs “all the steps of the claimed method, either 

personally or through another acting under his direction 

or control. Direct infringement has not been extended to 

cases in which multiple independent parties perform the 

steps of the method claim.” Id. at 1307. We have stated 

previously that “the control or direction standard is 

satisfied in situations where the law would traditionally 

hold the accused direct infringer vicariously liable for the 

acts committed by another party that are required to 

complete performance of a claimed method.” Muniauction, 532 F.3d at 1330.

Under the claim constructions discussed above, no 

single actor performs all of the steps of the claimed methods. With respect to the ’215 patent, Aristocrat admits 

that a player, rather than the casino or game operator, 

performs the step of “activating said user interface at said 

particular gaming machine by said player during said 

displaying of said second game to affect the display of said 

second game.” See, e.g., Appellant’s Br. at 43, 46-7. 

Similarly, as recited in all the asserted claims, a player, 

rather than the game operator, “makes a wager.” Thus, 

to be liable for direct infringement, IGT must exercise 

direction or control over a player playing the game.

The district court correctly determined that no material issue of fact existed as to IGT’s lack of direction or 

control over the player. In opposition to IGT’s motion for 

summary judgment, Aristocrat argued that IGT controls 

or directs the behavior of players by providing free credits 

to players to induce them to gamble at IGT's machines. As 

the district court found, “[w]hile providing players with 

free credits might encourage some people to gamble at 

IGT's machines, players are not obligated to use their free 
26 ARISTOCRAT TECH v. INTL GAME TECH

credits, nor are players acting on behalf of IGT when they 

use their free credits on IGT's machines.” Unable to 

“discern any legal theory under which IGT is vicariously 

liable for players’ actions as a general matter,” the district 

court appropriately found no direct infringement. On 

appeal, Aristocrat contends that “[t]he player’s entire 

gaming experience is dictated by IGT’s programming of 

the gaming machine” and that IGT causes the player to 

make a wager and activate a user interface. Thus, according to Aristocrat, the player’s actions are the “natural, 

ordinary, and reasonable consequences” of IGT's conduct.2

Our case law does not recognize the test that Aristocrat proposes and we decline to so extend it here. As we 

stated in Akamai, “this court has rejected claims of liability for direct infringement of method claims in cases in 

which several parties have collectively committed the acts 

necessary to constitute direct infringement, but no single 

party has committed all of the required acts.” Akamai, 

692 F.3d at 1307 (citing BMC, 498 F.3d at 1381 (“Direct 

infringement is a strict-liability offense, but it is limited 

to those who practice each and every element of the 

claimed invention.”); Muniauction, 532 F.3d at 1329 

(same)). One party’s direction or control over another in a 

2 Aristocrat argues for the first time in reply that the 

direction and control test is satisfied under the now 

vacated panel decision in Akamai because “the casino is 

contractually obligated to the player to properly run the 

game once a wager is made.” Appellant’s Reply Br. at 22

(citing Akamai, 629 F.3d at 1319 (“[J]oint infringement 

occurs when a party is contractually obligated to the 

accused infringer to perform a method step.”) We find 

this argument to be untimely raised, see Carbino v. West, 

168 F.3d 32 (Fed. Cir. 1999), as well as unavailing. Even 

if we assume a contractual obligation on the part of the 

casino to pay the player, that would not make the player’s 

actions those of the casino.

 
 ARISTOCRAT TECH v. INTL GAME TECH 27

principal-agent relationship or like contractual relationship operates as an exception to this general rule, but 

absent that agency relationship or joint enterprise, we 

have declined to find one party vicariously liable for 

another’s actions. See Akamai, 692 F.3d at 1307; Cross 

Med. Prods., 424 F.3d at 1311 (no liability for direct 

infringement if the party that is directly infringing is not 

acting as an agent of, or at the direction of, the accused 

infringer). IGT has no such relationship with the player. 

Neither is the agent of the other, nor can we discern a 

theory under which one would be vicariously liable for the 

other’s actions.

Finally, Aristocrat argues that a reasonable jury could 

find that IGT directly infringes during the testing of its 

machines because, “even under the district court’s construction requiring ‘legal entitlement,’ the ‘awarding’ step 

is satisfied when the credits increment on the credit 

meter indicating that the player is entitled to the amount 

due.” Appellant’s Reply Br. at 10. Aristocrat cites 

Crevelt’s declaration for the proposition that IGT’s machines are programmed to “automatically increment the 

credit meter to include the progressive prize.” Id. at 9. 

Crevelt’s testimony, however, does not speak to whether 

an IGT employee actually would be entitled to claim any 

prize that the machine displays. There is no evidence in 

the record that testers are given the right to use any 

credits added to the credit meter or claim any prizes won 

in the course of such use. Because Aristocrat failed to 

establish a genuine fact dispute regarding the employee’s 

entitlement to a prize, the district court properly granted 

summary judgment in IGT’s favor on the issue of infringement during testing.

For these reasons, we affirm the district court’s grant 

of summary judgment of noninfringement with respect to 

liability under 35 U.S.C. § 271(a).
28 ARISTOCRAT TECH v. INTL GAME TECH

C. Indirect Infringement

Neither the parties, nor the district court in its summary judgment order, expend significant time on the 

question of indirect or induced infringement. The district 

court premised its grant of summary judgment of noninfringement on its finding of no direct infringement under 

our decision in Muniauction. Based on our en banc decision in Akamai, we must vacate and remand the portion 

of the order relating to indirect infringement on that 

basis. As we stated in Akamai, “[r]equiring proof that 

there has been direct infringement as a predicate for 

induced infringement is not the same as requiring proof 

that a single party would be liable as a direct infringer.” 

Akamai, 692 F.3d at 1308-09 (emphasis in original). 

Thus, “[a] party who knowingly induces others to engage 

in acts that collectively practice the steps of the patented 

method—and those others perform those acts—has had 

precisely the same impact on the patentee as a party who 

induces the same infringement by a single direct infringer; there is no reason, either in the text of the statute or 

in the policy underlying it, to treat the two inducers 

differently.” Id. at 1309.

Like the plaintiffs in the cases underlying our en banc 

decision in Akamai, Aristocrat deserves the opportunity to 

press its indirect infringement theory with the benefit of 

our clarification regarding inducement. While we express 

no opinion on the ultimate merits of Aristocrat’s indirect 

infringement position, the adduced evidence could support 

a judgment in its favor on a theory of induced infringement. Therefore we vacate and remand the district 

court’s grant of summary judgment as it relates to indirect infringement.

D. Alternative Grounds for Noninfringement

IGT argues that we may affirm the district court’s 

grant of summary judgment of noninfringement, and 

avoid remand of this case on indirect infringement, on the 
 ARISTOCRAT TECH v. INTL GAME TECH 29

basis that the bonus game in the accused machines appears during the main game as opposed to after it. The 

’215 and ’603 patent claims include a limitation requiring 

the “triggering [of] a second game to appear at said particular gaming machine in response to said occurrence of 

said second game trigger condition, said second game 

appearing after completion of said first main game.” ’215 

patent col. 9 ll. 10-13; ’603 patent col. 8 ll. 36-39. The 

district court, after a motion for reconsideration, construed the term “completion” to mean “after a determination of a winning or losing result on the first main game 

pursuant to the rules of the first main game.” J.A. 2644.3 

IGT contends that, in the accused machines, the appearance of the Fort Knox bonus game pauses the main game 

and that the results of the main game are not displayed to 

the player until after the conclusion of the bonus game. 

Citing gaming industry regulations, IGT asserts that a 

game is not “complete” until the credits that have been 

wagered and won are transferred to a player’s credit 

meter. 

Aristocrat, citing Trading Technologies International, 

lnc. v. eSpeed, lnc., 595 F.3d 1340, 1359 (Fed. Cir. 2010), 

first responds that we review a denial of a summary 

judgment motion for an abuse of discretion and that, 

under that standard, we should affirm the district court’s 

judgment. Aristocrat also contends that it presented 

substantial expert testimony relating to the source code 

responsible for triggering the bonus game and that the 

trigger only occurs upon the completion of the main game. 

As stated above, we review a district court’s grant or 

denial of summary judgment under the law of the regional circuit, Board of Trustees of Leland Stanford Junior 

University, 583 F.3d at 839, and the Ninth Circuit reviews 

both grants and denials of summary judgment de novo. 

3 Neither party contests the district court’s construction of “completion” on appeal.

 
30 ARISTOCRAT TECH v. INTL GAME TECH

See, e.g., Humane Soc’y, 626 F.3d at 1047. We see no 

reason to depart from that general rule here. 

Regardless, we agree with Aristocrat that the district 

court correctly found disputed issues of material fact with 

respect to the limitation at issue. Nothing in the district 

court’s construction of the term “completion” references 

the display of results to the player and we decline to 

construe the district court’s construction—especially 

where IGT does not directly appeal that construction—to 

include that limitation. Nor does our review of the record 

below or here on appeal reveal a substantive challenge to 

Aristocrat’s expert testimony regarding the timing and 

operation of the accused machines. We therefore agree 

with the district court that a material issue of fact exists 

as to when the main game completes. 

CONCLUSION

For the reasons stated above, we affirm the district 

court’s constructions of “making a wager” and the “awarding step,” affirm the district court’s grant of summary 

judgment with respect to direct infringement, and vacate 

and remand the district court’s judgment with respect to 

indirect infringement.

AFFIRMED IN PART, VACATED AND REMANDED 

IN PART