United States District Court, D. New Jersey
HIGH 5 GAMES, LLC, a Delaware Limited Liability Company, f/k/a PTT, LLC, Plaintiff/Counterclaim Defendant,
DANIEL MARKS, an individual; JOSEPH MASCI, an individual; BRIAN KAVANAGH, an individual; MARKS STUDIOS, LLC, an entity d/b/a GIMME GAMES; ARISTOCRAT TECHNOLOGIES, INC., an entity; ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LIMITED, an entity; ARISTOCRAT LEISURE LIMITED, an entity; PRODUCT MADNESS, INC., an entity; GRANT BOLLING, an individual; JOHN SMITHs 1-7; and XYZ COMPANIES 1-7, Defendants/Counterclaim Plaintiffs.
ORDER & OPINION OF THE SPECIAL MASTER
M. CAVANAUGH, U.S.D J. (Ret.) Special Master
matter comes before the Special Master upon Plaintiff High 5
Games, LLC's ("H5G") motion to compel discovery
of technical information relating to accused
instrumentalities from defendants Daniel Marks, Joseph Masci,
Brain Kavanagh, Grant Boiling, Marks Studios, LLC
("Marks Studios"), Aristocrat Technologies, Inc.
("ATI"), Aristocrat Technologies Australia Pty Ltd.
("ATA"), Aristocrat Leisure Limited
("ALL"), and Product Madness, Inc. ("Product
Madness")(collectively, "Defendants"). After
considering the submissions of the parties, based upon the
following, it is the opinion of the Special Master that
H5G's motion is GRANTED.
a trade secret misappropriations and patent infringement
case. On November 26, 2013, HSG filed its initial Complaint
alleging trademark infringement, unfair competition, and
breach of contract. H5G asserted that Marks, Masci, and
Kavanagh breached their contractual obligations to H5G by
utilizing H5G's confidential, proprietary, and trade
secret information relating to its "Super Symbols"
and "Super Stacks" games. H5G further alleged that
Gimmie, Marks, Masci, and Kavanagh used H5G's
confidential information relating to the Super Symbol and
Super Stacks games and then unfairly competed with H5G by
creating, marketing, and selling games to companies in the
gaming industry, including Aristocrat, under the "Mega
Symbols" and "Max Stacks" names.
1, 2014, H5G filed its First Amended Complaint, which added a
patent infringement claim against Aristocrat, claiming
infringement of U.S Patent No. 8, 734, 223 (the
'"223 patent"). The '223 patent was issued
on May 27, 2014, and covers H5G's "Super
January 24, 2017, H5G was granted leave to file its Second
Amended Complaint ("SAC"), which was based on the
production of 500, 000 documents in October, 2016. This
amendment added certain trade secret misappropriation and
unfair competition claims, as well as patent infringement
claims relating to a second patent, U.S Patent No. 9, 022,
852 (the '"852 patent"). The '852 patent
covers H5G's "Super Stacks" feature.
asserts that while it has long accused dozens of games of
infringement, during discovery it learned that Aristocrat
offers other games (the "Undisclosed Games") that
also incorporate the accused features that had not been
previously disclosed by Defendants. By correspondence dated
April 30, 2018, H5G informed Defendants that it had become
aware that Defendants own, operate, license, and/or sell
games with infringing features that had not been disclosed in
Defendants' discovery responses. H5G then provided
Defendants with a list of 87 Undisclosed Games that it
believed appeared to include the infringing features.
9, 2018, United States Magistrate Judge Mark Falk granted
H5G's motion for leave to file a Third Amended Complaint
("TAC"). The TAC added new parties that are related
to defendant Aristocrat. On May 29, 2018, H5G served
additional interrogatories and requests for production. The
requests sought identification of all of Defendants'
games containing the accused features. H5G also requested
technical information related to the Undisclosed Games. On
July 10, 2018, H5G served similar discovery requests on the
TAC Defendants. Defendants objected to H5G's discovery
requests as beyond the scope of the litigation. The parties
then exchanged several correspondences.
this exchange, the parties submitted papers to the Special
Master regarding H5G's request to serve Infringement
Contentions based on the TAC and whether the new TAC
Defendants had to participate in discovery pending the
District Court's decision on Defendants' appeal. On
September 14, 2018, the Special Master denied Defendants'
request for a stay as to Infringement Contentions and
discovery with respect to the new TAC Defendants and ordered
Plaintiff to serve Infringement Contentions pursuant to Local
Patent Rules 3.1 and 3.2.
on October 8, 2018, H5G served its Infringement Contentions
on the TAC Defendants and on October 9, 2018, filed a motion
to amend its infringement contentions against the SAC
Defendants. H5G maintains that it accused the Undisclosed
Games of infringement in these Infringement Contentions.
parties appeared for a status conference before the Special
Master on November 6, 2018. At the conference, the Special
Master instructed Defendants to produce their outstanding
discovery within 30 days. On December 6, 2018, Defendants
produced additional discovery. However, H5G alleges that this
production failed to include discovery relating to nearly all
of the Undisclosed Games.
about February 8, 2019, H5G filed a motion to compel
discovery of technical information relating to accused
instrumentalities with the Special Master. H5G seeks an order
compelling Defendants to provide complete responses to all
interrogatories and requests for production, including source
code, related to the Undisclosed Games.