Free Proposed Pretrial Order - District Court of Delaware - Delaware

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TAB 4
GTECH’S STATEMENT OF ISSUES OF
LAW THAT REMAIN TO BE LITIGATED
If any statement included herein as an issue of law properly should be considered
an issue of fact, it should be so considered.
I. INFRINGEMENT
l. Whether Scientific Games’ PlayCentral Kiosk includes, either
literally or under the doctrine of equivalents, each and every element of claim 18 ofthe
’624 patent as those claims are properly interpreted. 35 U.S.C. § 271; Wai·nei·—Jenkins0n
C0. v. Hilton Davis Chem. C0., 520 U.S. 17, 29-30 (1997).
2. Whether Scientific Games’ PlayCentral Kiosk includes, either
literally or under the doctrine of equivalents, each and every element of claims 20 and/or
21 ofthe *337 patent as those claims are properly interpreted. 35 U.S.C. § 271; Warner-
Jenkinson C0. v. Hilton Davis Chem. C0., 520 U.S. 17, 29-30 (1997).
H. VALI])ITY
1. Whether Scientific Games can establish by clear and convincing
evidence that the subject matter of claim 18 ofthe ’624 patent was anticipated by prior
art. 35 U.S.C. § 282; 35 U.S.C. § 102.
2. Whether Scientific Games can establish by clear and convincing
evidence that the subject matter as a whole of claim 18 ofthe ’624 patent would have

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been obvious to a person having ordinary skill in the art as of its priority date. 35 U.S.C.
§ 282; 35 U.S.C. § 103; Graham v. John Deere C0., 383 U.S. 1 (1966).
3. Whether Scientific Games can establish by clear and convincing
evidence that the subject matter of either of claims 20 and 21 of the ’337 patent were
anticipated by prior art. 35 U.S.C. § 282; 35 U.S.C. § 102.
4. Whether Scientific Games can establish by clear and convincing f W
evidence that the subject matter as a whole of either of claims 20 and 21 of the ’337
patent would have been obvious to a person having ordinary skill in the art as of its
priority date. 35 U.S.C. § 282; 35 U.S.C. § 103; Graham v. John Deere C0., 383 U.S. 1
(1966).
5. Whether Scientific Games can establish by clear and convincing
evidence that claim 18 ofthe ’624 patent is invalid for indefiniteness. 35 U.S.C. § 282;
35 U.S.C. § 112 'll 2.
IH. PATENT DAMAGES
1. The amount of prejudgment interest to which GTECH is entitled.
35 U.S.C. § 284.
2. Whether GTECH is entitled to increased damages for Scientific
Games’ willful infringement. 35 U.S.C. § 284.
3. The amount of increased damages to which GTECH is entitled for
Scientific Games’ willful infringement. 35 U.S.C. § 284; Read v. Portec, [nc., 970 F.2d
816 (Fed. Cir. 1992).
4. Whether GTECH is entitled to attorneys’ fees. 35 U.S.C. § 285.

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5. Whether GTECH satisfied the notice requirements of 35 U.S.C. §
287.
6. Whether Scientific Games is entitled to attorneys fees. 35 U.S.C.
§ 285.
IV. INJUNCTIVE RELIEF I zi
l. Whether GTECH is entitled to injunctive relief enjoining Scientific
Games from further infringement ofthe ’337 patent. 35 U.S.C. § 283.
2. Whether GTECH is entitled to injunctive relief enjoining Scientific
Games from further infringement ofthe ’624 patent. 35 U.S.C. § 283.

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