Full opinion text
MEMORANDUM OPINION SUE L. ROBINSON, District Judge. I. INTRODUCTION IGT (“plaintiff’) filed this action against Bally Gaming International Inc., Bally Technologies, Inc. and Bally Gaming, Inc. d/b/a Bally Technologies (collectively, “Bally” or “defendants”) on April 28, 2006, alleging infringement of U.S. Patent Nos. RE 38,812 (“the '812 patent”), RE 37,885 (“the '885 patent”), 6,832,958 (“the '2958 patent”), 6,319,125 (“the '125 patent”), 6,224,958 (“the '4958 patent”), 6,431,983 (“the '983 patent”), 6,607,441 (“the '441 patent”), 6,565,434 (“the '434 patent”), and 6,620,046 (“the '046 patent”). (D.I. I) Plaintiff alleges that defendants’ “Bally Power Bonusing®” slot machine technology infringes one or more claims of the asserted patents. On June 30, 2006, defendants filed their answer, and asserted counterclaims for a declaratory judgment of noninfringement, invalidity and unenforceability of each asserted patent (counts I — IX); attempted monopolization in violation of Section 2 of the Sherman Antitrust Act, 15 U.S.C. § 2 (count X); false representation in violation of the Lanham Act, 15 U.S.C. § 1125 (count XI); and “intentional interference with business relationships” (count XII). (D.I. 40) Plaintiff moved to dismiss defendants’ counterclaim counts X-XII. (D.I. 53) Plaintiff also moved for a preliminary injunction. (D.I. 75) The case was assigned to this judicial officer on April 2, 2007. Following a discovery conference, on June 21, 2007, plaintiffs pending motions were withdrawn. Discovery proceeded and has now since closed. (D.I. 160,175) On February 25, 2008, by agreement of the parties, all claims, defenses, and counterclaims related to the '125, '434, '4958, '046, and '2958 patents were dismissed. (D.I. 152) The parties entered into an agreement on May 14, 2008 removing the '441 patent from issue. (D.I. 165) Remaining at issue is infringement of the '812, '885, and '983 patents, defendants’ counterclaims of invalidity and unenforceability of these patents, and defendants’ counts X-XII. This case is set for a jury trial commencing May 26, 2009. Currently pending before the court are seven motions for summary judgment. Plaintiff has filed motions: (1) of infringement (D.I. 178); (2) of validity of the '885 and '812 patents (D.I. 180); and (3) that Bally does not have either an express or implied license to practice the '885, '812, or '983 patents (“no licensing defense”) (D.I. 182). Defendants have filed motions: (1) of noninfringement (D.I. 191); (2) of invalidity of the '983 patent (D.I. 193); (3) of invalidity of the '885 and '812 patents (D.I. 219); and (4) that Bally has a valid license defense with respect to the '983 patent (D.I. 221). The court has jurisdiction over these matters pursuant to 28 U.S.C. § 1338. II. BACKGROUND A. Technology at issue This suit relates to casino slot machine technology and player rewards. Casino slot machines may be networked together. Networking allows for advantages such as the casino’s ability to monitor patrons’ slot play and to extract accounting data from individual machines. (JA01631-32) Monitoring systems require the use of player-tracking cards (hereinafter “PTC” s) and machines equipped with card-tracking devices. Casinos typically issue PTCs to patrons who sign up for an account through the casino’s promotions department, and use PTCs to track play, allow players to obtain rewards or participate in promotions when their PTC is in use, and to enable players to access funds that they previously have deposited with the casino for use at a gaming device or table. The casino maintains a database of its patrons on a host computer. PTCs can be inserted into a tracking device that includes a magnetic card reader, display for messages and a keypad to accept any inputs from the patron; such devices are typically found on slot machines. Both parties in this case provide software products used by casinos to provide awards to players who are gambling on a networked gaming device such as a slot machine. Such “bonusing” increases player loyalty and entertainment, and can be provided in many ways, such as by special awards or free play credits. A “progressive” jackpot is a common jackpot that increases a small amount for every game played on the machines included within a certain network whereon the progressive is offered. Defendants manufacture a product suite called Bally Power Bonusing, which includes the following accused products: Power Winners, Power Rewards, Power Promotions, and Power Bank. These systems will be discussed in greater detail infra in connection with the court’s infringement analyses. Each comprises hardware and software to run on a slot network, the software having main components: a slot management system (or “SMS”) and a casino management system (or “CMS”). (D.I. 142 at 8) The SMS handles the slot accounting functions and collects player tracking data such as a player’s wages. The SMS provides this data to the CMS, which handles the marketing and reporting functions of the casino. (Id.) There are several components to the slot network. A “host computer” is located at the back end of the system in the control room and maintains a database of PTC holders. A slot interface board, or “controller,” is located between the gaming machine and the host computer; it receives and transmits instructions and messages between the components. Finally, the “player account” is the location on the network that records the amount of funds available to a player. Player accounts are often categorized according to the level of gaming activity by the player (e.g., silver, gold or platinum); defendants’ products are targeted to specific players as compared to specific gaming devices. (Id.) B. The Patents in Suit All three patents in suit share the same named inventors (John F. Acres, Alec Ginsburg, and David Wiebenson) and assignee (Acres Gaming Incorporated (“Acres”)) on the face of the patents. Plaintiff acquired each patent when it acquired Acres in 2003. 1. The '885 Patent The '885 patent is a reissue of U.S. Patent No. 5,752,882 (“the '882 patent”), issued May 19, 1998. The '882 patent was filed on June 6, 1995 as U.S. Patent Application 08/465,915, a divisional application claiming priority to U.S. Patent Application No. 08/322,172, filed October 12, 1994, now U.S. Patent No. 5,655,961 (“the '961 patent”). The reissue application (No. 09/573,470) leading to the '812 patent was filed on May 16, 2000. Plaintiff asserts that defendants’ products infringe claims 1, 10, 22, 33 and 46 of the '885 patent. All five independent claims share the backbone reproduced below. A method of operating gaming devices interconnected by a host computer having a user-operated input device comprising: associating each gaming device with a unique address code; preselecting less than all of the gaming devices interconnected by the host computer responsive to a user-effected action at the input device which identifies the preselected gaming devices with the respective associated address codes; using the network to track activity of the preselected gaming devices [ ... ] In addition to the foregoing, claims 1,10, 22, 33 and 46 contain additional limitations, as reproduced below. 1. [ ... ] initiating a bonus play period; issuing a command over the network to each of said preselected gaming devices responsive to initiation of the bonus play period; and paying a bonus at each of said preselected gaming devices in accordance with the command. 10. [ ... ] issuing a command over the network to one of said preselected gaming devices responsive to a predetermined event; and paying at said one gaming device in accordance with the command. 22. [ ... ] initiating a bonus play period; issuing a command over the network to each of said preselected gaming devices responsive to initiation of the bonus play period; and paying a bonus via each of said preselected gaming devices in accordance with the command. 33. [ ... ] initiating a bonus play period; generating a message including data related to a payment amount; transmitting the message over the network to at least one of said preselected gaming devices responsive to a predefined event; and paying via at least said one gaming device during the bonus play period in accordance with the message. 46. [ ... ] issuing a command over the network to at least one of said preselected gaming devices responsive to a predefined event; and paying via at least said one gaming device in accordance with the command. 2. The '812 Patent The '812 patent is a reissue of U.S. Patent No. 5,836,817 (“the '817 patent”), issued November 17, 1998. The '812 patent is related to the '855 patent; it was issued from divisional application 08/465,-717, the sister application to U.S. Patent Application 08/322,172 (issuing as the '961 patent). The reissue application (No. 09/574,632) leading to the '812 patent was also filed on May 16, 2000. Plaintiff asserts that defendants’ products infringe claims 21 and 44 of the '812 patent, as reproduced below. 22. A method of operating gaming devices interconnected by a computer network to a host computer having a user-operated input device comprising: preselecting less than all of the gaming devices interconnected by the computer network responsive to a user-effected action at the input device; using the network to track the amount of money played on the preselected gaming devices; allocating a predetermined percentage of the money played to a bonus pool; and issuing a command over the network to cause a bonus to be paid from the pool by one of said preselected gaming devices upon the occurrence of a predetermined event. 44. A method of operating gaming devices interconnected by a computer network to a host computer comprising: selecting a plurality of the gaming devices; generating a message including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event; transmitting the message over the network; storing the message in a memory connected to a controller associated with only one of the gaming devices; transmitting data indicative of gaming device activity from the gaming device to the controller; transmitting a pay command from the controller to the gaming device upon the occurrence of the predetermined event; and paying the bonus via the gaming device responsive to receipt of the pay command. 3. The '983 Patent The '983 patent issued from U.S. Patent Application No. 09/832,425, filed April 10, 2001, a continuation of U.S. Application No. 08/672,217, filed on June 25, 1996, now U.S. Patent No. 6,244,958. John Acres is the sole named inventor. Plaintiff asserts infringement of claim 1, which reads as follows: 1. A method for providing incentive to play gaming devices connected by a network to a host computer comprising: associating each gaming device with an input device for receiving player identification; associating unique player identification with a gaming device player; creating a player account accessible by the host computer; associating the unique player identification with the player account; applying a promotional credit to the player’s account; permitting the player to access the account; transferring promotional credit in the account to the gaming device; permitting the player to wager the promotional credit; and preventing the promotional credit from being cashed out by the player. III. STANDARD OF REVIEW A court shall grant summary judgment only if “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “Facts that could alter the outcome are ‘material,’ and disputes are ‘genuine’ if evidence exists from which a rational person could conclude that the position of the person with the burden of proof on the disputed issue is correct.” Horowitz v. Fed. Kemper Life Assurance Co., 57 F.3d 300, 302 n. 1 (3d Cir.1995) (internal citations omitted). If the moving party has demonstrated an absence of material fact, the nonmoving party then “must come forward with ‘specific facts showing that there is a genuine issue for trial.’ ” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (quoting Fed.R.Civ.P. 56(e)). The court will “view the underlying facts and all reasonable inferences therefrom in the light most favorable to the party opposing the motion.” Pa. Coal Ass’n v. Babbitt, 63 F.3d 231, 236 (3d Cir.1995). The mere existence of some evidence in support of the nonmoving party, however, will not be sufficient for denial of a motion for summary judgment; there must be enough evidence to enable a jury reasonably to find for the nonmoving party on that issue. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). If the nonmoving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). IV. DISCUSSION A. Infringement A patent is infringed when a person “without authority makes, uses or sells any patented invention, within the United States ... during the term of the patent.” 35 U.S.C. § 271(a). A court should employ a two-step analysis in making an infringement determination. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995). First, the court must construe the asserted claims to ascertain their meaning and scope. Id. Construction of the claims is a question of law subject to de novo review. See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1454 (Fed.Cir.1998). The trier of fact must then compare the properly construed claims with the accused infringing product. Markman, 52 F.3d at 976. This second step is a question of fact. See Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.Cir.1998). Literal infringement occurs where each limitation of at least one claim of the patent is found exactly in the alleged infringer’s product. Panduit Corp. v. Dennison Mfg. Co., 836 F.2d 1329, 1330 n. 1 (Fed.Cir.1987). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed.Cir.2000). If an accused product does not infringe an independent claim, it also does not infringe any claim depending thereon. Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed.Cir.1989). The patent owner has the burden of proving infringement and must meet its burden by a preponderance of the evidence. SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted). 1. Power Rewards a. The Power Rewards product Power Rewards gives players an opportunity to win rewards based on their gaming play. Its functionality has been described by the parties as “Play ‘X’, Get ‘Y’,” since an eligible patron that wagers ‘X’ dollars while a promotion is active will get ‘Y’ dollars as an award. A Power Rewards progressive promotion operates in four steps. In the first step, a casino operator sets up a Power Rewards promotion on the host computer by setting the relevant parameters for the promotion. In the Power Rewards context, these parameters are start and end date, the type of award credit, the amount of dollars the player must play to receive the award amount (“Play X”), the number of days the player has to reach the play amount, the award amount the player will receive upon reaching the play amount (“Get Y”), and the types of participating gaming devices. In step two, the casino operator selects a group of players (such as by account status) and assigns the Power Rewards promotion to those players. The promotion becomes active at the start time specified by the operator in step one. In step three, a qualified player places his PTC in a Power Rewards-eligible gaming device. At this time, the host computer sends “transaction # 151,” containing information about the promotion (such as the Play X, Get Y, and amounts already wagered by a player) to the controller associated with that gaming device. The controller then tracks the amount of credits played by that player during that playing session at that gaming device. At step four, once a player reaches the appropriate “Play X” amount, the controller causes the “Promo” function key associated with the gaming device to flash. The player can then press the Promo key and choose the amount of “Get Y” credits to put on the gaming device. If the player does not press the Promo key, the “Get Y” amount is stored in a “promotional detail file” at the host computer. b. Claim limitations at issue Plaintiff asserts that Power Rewards infringes claims 21 and 44 of the '812 patent and claims 1, 10, 22, 33 and 46 of the '885 patent. As a threshold matter, each of these claims requires that a “command” or “message” be issued over the network causing payment to be made to a player. The parties dispute whether transaction # 151 is such a “command” or “message.” The parties also dispute whether Power Rewards pays a “bonus” as that term is used in claims 1 and 22 of the '885 patent and claims 21 and 44 of the '812 patent. Claim 21 of the '812 patent requires “issuing a command over the network including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event.” Claim 44 of the '812 patent requires “generating a message including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event.” Assuming transaction # 151 is a “command,” the parties disagree about whether Power Rewards issues transaction # 151 “upon the occurrence of’ a “predetermined event,” as required by these claims. Claim 10 of the '885 patent similarly requires “issuing a command over the network to one of said preselected gaming devices responsive to a predetermined event.” The parties present the above arguments as to claim 10. In addition, the parties dispute whether Power Rewards issues transaction # 151 “responsive to initiation of the bonus play period” as required by claims 1 and 22 of the '885 patent. The parties also debate whether Power Rewards pays a reward “in accordance with” transaction # 151, as required by all asserted claims of the '885 patent. c. “Command” or “message” (claims 21 and 44 of the '812 patent and claims 1, 10, 22, 33 and 46 of the '885 patent) Plaintiff asserts that transaction # 151 of Power Rewards is the “command” or “message” containing such a command as defined by the court, which is “a command that rearranges the previous configuration of the gaming device so that the gaming device pays out extra money it would not have paid in its previous configuration.” Defendants assert that transaction # 151 is not a reconfiguration command because it does not alter the jackpot or winning payouts on a participating machine; it only provides that if a player “plays X” she will “get Y.” (D.I. 192 at 26) All regular payouts remain the same. The reconfiguration command can provide a variety of promotional bonuses described as multiple jackpot bonuses, mystery jackpot bonuses, progressive jackpot bonuses, or player-specific bonuses. ('812 patent, abstract; col. 3, 11. 10-21) Mystery jackpots, for example, may be paid “even when a jackpot was not won.” (Id., col. 36, 11. 55-64) The court has defined “bonus” as used in the claims as a payment that can be awarded regardless of the outcome on the gaming device. Consistent with this definition, the court does not limit a “reconfiguration command” to one directing additional payment on a jackpot or winning pull; any payment that the device would not have paid in its previous configuration will suffice. There is no genuine dispute that transaction # 151 is a “command” or “message” as described by the claims because it directs the machine to “pay Y,” or “extra money it would not have paid in its previous configuration.” Defendants’ expert, Mr. Dwight Crevelt, admits that “an eligible patron receives a Power Rewards reward merely by playing the required amount on eligible machines during the time period set for the promotion, regardless of whether that patron ever won a jackpot on any eligible machine during that promotion.” (D.I. 179 at 17, citing JA1904-05) That is, transaction # 151 provides for an award that a player would not receive during regular play (‘Y”). The fact that a player may not “Get Y,” in the event she does not “Play X,” does not change the fact that transaction # 151 was issued or transmitted to the gaming device to cause payment of “Y” under those circumstances. d. “Bonus” (claims 1 and 22 of the '885 patent and claims 21 and 44 of the '812 patent) For similar reasons, defendants’ argument that Power Rewards does not pay a “bonus” is unpersuasive. (D.I. 192 at 32) By its order of the same date, the court has construed “bonus” as a “reward or payment in addition to any payout specified by the normal gaming device pay table,” which “may be awarded to a player whether the outcome on the gaming device is a win, loss, or no outcome at all.” There is no dispute that “Get Y” is a reward or payment in addition to the standard gaming machine payouts; therefore, this limitation is met. e. “Upon the occurrence of’ or “responsive to” a “predetermined event” (claims 21 and 44 of the '812 patent, claim 10 of the '885 patent) Claim 10 of the '885 patent requires “issuing a command over the network to one of said preselected gaming devices responsive to a predetermined event.” In contrast, claims 21 and 44 of the '812 patent require issuing a “command” (claim 21) or “message” (claim 44) “including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event.” That is, in the context of the '812 patent, it is not the command itself that is generated in response to the predetermined event — the command contains data including the predetermined event upon which to pay the bonus. i. '885 patent With respect to the '885 patent, plaintiff argues that the player’s insertion of the PTC is the “predetermined event” that causes the “command” itself, transaction # 151, to be generated. (D.I. 239 at 10) Plaintiff cites Mr. Crevelt’s expert report, stating that “the transaction # 151 message is sent in response to an eligible patron inserting his card at one of the gaming machines preselected to be a part of the Power Rewards promotion.” {Id., citing D.I. 237 at JA1903, ¶¶ 237-38) By its order of the same date, the court has construed the “issuing a command over the network to one of said preselected gaming devices responsive to a predetermined event” limitation as “issuing a command in reply or reaction to the occurrence of one or more conditions chosen in advance.” The court does not limit the term, as defendants suggested, by requiring a determination of what time the triggering condition will occur. (D.I. 218 at 19) While the predetermined event must obviously be “predetermined,” or contemplated in advance, its occurrence may be random and still satisfy the court’s construction. Put another way, it is the fact of the occurrence, not the timing of the occurrence, that is dispositive. That the event may not happen at all does not mean that the event was not a condition “chosen in advance.” Under the court’s construction, the insertion of a PTC qualifies as a “predetermined event” regardless of the fact that the precise time that this may occur is unknown. The parties do not dispute that the insertion of an eligible PTC causes transaction # 151 to be sent to the gaming device. Defendants essentially concede infringement under this construction. (D.I. 218 at 19-20) ii. '812 patent With respect to the '812 patent, plaintiff argues that “Play X” is the “predetermined event,” or the precedent contained within transaction # 151 that triggers payment (“Get Y”). (D.I. 239 at 4-6) More specifically, the Power Rewards User’s Guide provides that Power Rewards “directly eredit[s] slot machines with either cashable or non-cashable credits upon playing to a variable set amount in order to achieve the reward.” {Id., citing D.I. 237 at JA2074) In plaintiffs view, Power Rewards “pays ‘upon the occurrence’ of the predetermined event [Play X] because the player is paid at the gaming device ‘automatically’ (i.e., ‘non-manually’) ‘upon playing to the variable set amount’.” {Id. at 6) The debate between the parties centers around the construction of the full limitation: “issuing a command over the network including data establishing criteria to cause a bonus to be paid via one of said selected gaming devices upon the occurrence of a predetermined event.” Plaintiff argues that, properly read, the “upon the occurrence of a predetermined event” modifies the “bonus to be paid,” rather than the command or message. (D.I. 213 at 28) Defendants assert that “upon the occurrence” modifies the word “command.” In their view, Power Rewards “does not infringe because the ‘command’ is not sent ‘responsive to’ or ‘upon the occurrence of the start time of the promotion [the ‘predetermined event’].’ ” (D.I. 192 at 29) As indicated previously, and as reflected in the court’s claim construction order, the court agrees with plaintiff that “it is the payment of the bonus, as opposed to the command, that responds to the predetermined event” pursuant to claims 21 and 44. (D.I. 213 at 28) Removing the adverbial phrases, the limitation reads: “issuing a command ... to cause a bonus to be paid ... upon the occurrence of a predetermined event.” The plain import of the phrase is that the bonus is paid upon the occurrence of the predetermined event. In the case at bar, the parties do not dispute that “Get Y” (the “bonus”) is paid upon the occurrence of “Play X” (the “predetermined event”). The court notes that “predetermined event” appears later in claims 21 and 44, which also require “transmitting a pay command from the controller to the gaming device upon the occurrence of the predetermined event.” The court has construed this limitation as “transmitting an instruction related to payment from the controller to the gaming device in response or reply to the occurrence of one or more conditions chosen in advance.” Plaintiff characterizes the “pay command” as “credit the slot machine with the ‘Get-This-Amount’ converted to credits” identified in the Power Rewards manual. (D.I. 179 at 15, citing D.I. 237 at JA2076) This instruction follows the player’s pressing of the “PROMO” key. That is, the manual provides that if the “Amount-Already-Played” “gets greater than or equal to the ‘Play-This-Amount,’ flash the PROMO button key and stop the accumulation”; thereafter, “[i]f the PROMO button is pressed while it is flashing, credit the slot machine with the ‘Get-This-Amount’ .... ” (D.I. 237 at JA2076) In their opening brief, defendants argue that a pay command is not transmitted “upon the occurrence of’ “Play X” because a player must initiate the withdrawal of funds by pressing the PROMO button. (D.I. 192 at 31; D.I. 218 at 10) Defendants consistently interpret both “upon the occurrence of’ and “in accordance with” as being synonymous with the term “automatic.” With respect to the '812 patent, defendants argue that the reward withdrawal process (initiated by pressing the PROMO button) is an intervening step between “Get Y” and the receipt of the reward, bringing Power Rewards outside of the claims. Defendants cite a single sentence in the specification in support of their construction: that “a need remains for an automated method and apparatus to provide bonusing for gaming devices.” (D.I. 218 at 12, citing '885 patent, col. 22, 11. 25-27) The patents are directed to eliminating the technique of “having an attendant manually pay out the additional payout amount,” and do not describe (or claim) any particular manner of automated payout. ('812 patent, col. 2, 11. 21-22) Defendants point to no express disclaimers over a method of payment comprising a withdrawal process with more than one step. The patents are not directed to a precise method of automated redemption. For these reasons, the court declines to limit the claims to require an “automatic” payment in the manner advocated by defendants. f. “Issuing a command over the network to each of said preselected gaming devices responsive to initiation of the bonus play period” (claims 1 and 22 of the '885 patent) Claims 1 and 22 of the '885 patent require that the command be issued “responsive to the initiation of the bonus play period.” By its order of the same date, the court has construed “bonus play period” as “the period during which the bonus promotion is active.” According to defendants, the “bonus play period” is the “time during which Power Rewards is configured to start and stop.” (D.I. 192 at 27) Plaintiff asserts that the “bonus play period” is initiated when an eligible player inserts his PTC. (D.I. 179 at 26) That is, inserting the PTC causes transaction # 151, including the “Play X, Get Y” pay instruction to be generated. (Id.) The specification states that a bonus can play until the bonus payout exceeds the bonus pool — an unspecified amount of time. (’885 patent, col. 37,11. 5-48) For this reason, the court did not limit its construction of “bonus play period” to a pre-specified period of time, as defendants advocated. Nevertheless, the court finds plaintiffs infringement evidence deficient under the court’s construction. Power Rewards has a defined start time, specified by the casino operator in step one. Plaintiff does not dispute this point. (D.I. 213 at 3 & n. 3; D.I. 179 at 8) Power Rewards thus becomes “active” at the predetermined start time-regardless of whether any players have inserted their PTCs at that time. There is no indication that a Power Rewards promotion commences upon the insertion of a PTC; rather, the insertion of a PTC during an active promotion simply enrolls the player in the promotion. Insertion of the PTC may initiate transaction # 151, but there is no direct link between the start of Power Rewards (by the casino operator in step one) and transaction # 151 (following the insertion of a PTC during an active promotion). Plaintiff points to no such evidence. (D.I. 179 at 27; D.I. 213 at 24; D.I. 239 at 7-8) g. Paying “in accordance with” the “command” or “message” (claims 1, 10, 22, 33 and 46 of the '885 patent) The asserted claims of the '885 patent require paying a bonus “in accordance with” the command or message. Defendants assert that Power Rewards does not pay an award in accordance with transaction # 151 because it is undisputed that a player must initiate a series of funds-withdrawal commands on a machine (starting with pressing the PROMO button) in order to actually obtain the award. (D.I. 192 at 30) Defendants assert that payment must be made “automatically” upon the receipt of the command. (D.I. 171) Plaintiff asserts that this limitation is met when transaction # 151 makes the bonus available, regardless of the subsequent withdraw! step(s). (D.I. 213 at 26) According to plaintiff, the relevant innovative aspect of the '885 patent is the automation of the payment process; thus, “automatic” payment is made when a player is eligible for payment at the gaming device without having to receive a manual payout. (Id.) As indicated previously, the court finds plaintiffs position more convincing, and has provided in its claim construction order that “the command or message makes the bonus available. The claims do not require that the bonus is paid ‘automatically’ or without any subsequent withdrawal steps upon receipt of the pay command.” The specification does not support effectively narrowing the claims to require “automatic” payment of the bonus. Defendants point out that the specification does describe a bonus as being “automatically paid,” without further detail, but this phrase was contained in a paragraph describing “another embodiment of the bonus time promotion.” (D.I. 190 at 35, citing '885 patent, col. 26:24-31) Again, the patents are directed to eliminating manual payouts, and do not describe particular methods of automated payouts. In their claim construction brief, defendants cite several statements made to the examiner during prosecution of the '885 patent, in which the applicants distinguished the “automatic” payment of the invention from “payment to the player by the cashier.” (D.I. 190 at 36-37) None of these statements specifically disclaim or distinguish an automated payment that is immediately usable by the player with one that requires any withdrawal steps. The applicants’ use of the word “automatic” in this context is not controlling, especially considering the context of discussing “automated” payments. Defendants point to no express disclaimers over a method of payment comprising a withdrawal process with more than one step. Based on the foregoing, the court does not restrict the claim to the “automatic” availability of the promotional reward as defendants suggest. The claims require only that the “command” or “message” (transaction # 151) provides for the payment of the bonus at the gaming device. There is no dispute that a player who “Plays X” will “Get Y” and that the “Get Y” award is available on the gaming device. h. Conclusion For the aforementioned reasons, the court finds the following. Summary judgment of infringement is appropriate on claims 10, 33, and 46 of the '885 patent, insofar as Power Rewards meets the following contested limitations: “command” (claims 10, 46); “message” (claim 33); “initiating a bonus play period” (claim 33); “responsive to a predetermined event” (all claims); “paying at said one gaming device in accordance with the command” (claim 10); and “paying ... in accordance with the message” (claims 33, 46). Summary judgment of noninfringement is appropriate on claims 1 and 22 of the '885 patent, insofar as Power Rewards does not issue a “command” (claim 1) or “message” (claim 22) that is “responsive to initiation of the bonus play period” as required by those claims. Summary judgment of infringement is appropriate on claims 21 and 44 of the '812 patent, insofar as Power Rewards meets the following contested limitations: “command” (claim 21); “message” (claim 44); “issuing a command ... to cause a bonus to be paid ... upon the occurrence of a predetermined event” (claim 21); and “generating a message ... to cause a bonus to be paid ... upon the occurrence of a predetermined event” (claim 44). 2. Power Winners a. The Power Winners product Power Winners allows a casino operator to create and run progressive jackpot promotions. Power Winners has two main components: the Power Winners Manager and the Promotional Progressive Engine (“PPE”). The Power Winners Manager includes software that performs “front end” processing. It provides the user interface that the casino marketing manager uses to set a promotion, polls the PPE for promotions that have ended and are ready for a winner to be picked, selects the winning player(s) at the end of the promotion, and calculates the payouts. The PPE performs the “back end” processing for Power Winners; it uses random numbers to periodically check for a winner and, if one is not picked, the progressive jackpot is increased. A Power Winners progressive promotion operates in six steps. In step one, the casino operator configures the promotion. Similar to Power Rewards, step one includes the operator’s entering the parameters for the promotion (including time, date, average win amount, average length of the promotion, player eligibility information, gaming devices to be included, and payment type). In the second step of Power Winners, these parameters are passed to the PPE, which stores them so that it can process the promotion as its intended start time. The PPE processes the promotion in the third step. It divides the total approximate time for the promotion into 125 separate “time slices.” At each slice, a “ticket” is drawn from a pool of 1,000,000 tickets and if the drawn ticket is a winner, the progressive ends. If the drawn ticket is not a winner, the PPE increases the size of the progressive jackpot and proceeds to the next time slice. In defendants’ first version of the PPE, if no winning ticket had been picked by the 125th time slice, the PPE would end the promotion. In Power Winners’ current version, the promotion continues until the winning ticket is picked. In step four, the PPE notifies the host computer that a winning ticket has been picked. The Power Winners application on the host computer then randomly picks a winning player. There are two platforms upon which its SMS and CMS systems can run: the SDS/CMP platform, and the ACSC platform. Power Winners operates differently based on the underlying platform. In the SDS/CMP version of Power Winners, the jackpot is placed in the winning player’s account if the promotion is not configured to manually pay out the jackpot. In the ACSC version of Power Winners, Power Rewards is the jackpot notification and partial delivery mechanism. In step five, the host computer notifies the winners. The parties do not dispute that “transaction # 151 is the Power Rewards, ‘Play X, Get Y’ transaction used by Power Winners to facilitate the transfer of the progressive jackpot to the winning player. After the ACSC Power Winners application randomly selects a winning player, it sends the ‘Play X, Get Y’ transaction to the controller associated with the gaming device that hosts the winning player. In this case, the ‘Play X’ amount is $0 and the ‘Get Y’ amount is the Power Winners progressive jackpot.” (D.I. 192 at 16-17; D.I. 213 at 6, n. 6) In the last step, the winning player withdraws the jackpot. In SDS/CMP Power Winners, the jackpot is withdrawn at this step from the player’s account through a series of withdrawal steps at the gaming device; in ACSC Power Winners, a Power Rewards transaction is sent and the player must initiate the withdrawal process by pressing the “PROMO” button on the gaming device, which also involves a series of withdrawal steps. In either format, the winner may withdraw less than the total jackpot awarded. b. Claim limitations at issue Plaintiff asserts that Power Winners infringes claims 10, 33 and 46 of the '885 patent. Specifically, the parties dispute whether Power Winners issues a “command” (claims 10, 46) or “message” (claim 33) over the network “responsive to a predefined event” (claim 33, 46) or to a “predetermined event” (claim 10). The parties also contest whether Power Winners pays a reward “in accordance with” the command or message (all claims) and/or pays “during the bonus play period” (claim 33). c. “Command” or “message” (all claims) Plaintiff asserts that the “command” or “message” is transaction # 151 for ACSC Power Winners, and “DM33” for SDS/ CMP Power Winners. (D.I. 213 at 6) For the reasons previously stated, the court agrees that transaction # 151 is a “command” or “message” under its construction. In the context of Power Winners, transaction # 151 provides a jackpot that was not available under the machine’s normal gaming pay table. The court will proceed to address DM33. The court first notes that plaintiff does not identify DM33 in its infringement claim chart. Plaintiff asserts that the “command” or “message” relating to payout is made by the PPE in response to the drawing of a winning ticket. (D.I. 179 at 31 (claim chart)) In support, plaintiff cites defendants’ “Promotional Progressive Engine (PPE) Installation Guide,” dated 2006, which provides that the PPE determines a winner when a winning ticket is drawn, but does not describe a particular instruction to pay an award. (Id, citing D.I. 237 at JA2227-28) Plaintiff also cites Mr. Crevelt’s expert report, in which he states that, after a winning patron is selected, “the winning patron is notified that they have won the jackpot[.]” (Id, citing D.I. 237 at JA1799, 20 39) Plaintiff does not identify any evidence describing DM33 in any detail. According to defendants, “DM33 is a notification sent by the host computer to the display on the gaming device that informs the player that they have won Power Winners. It is not a reconfiguration command and does not contain one.” (D.I. 192 at 16) In support, defendants cite the expert report of Dr. Kelly, which states that Power Winners “formulates and sends a message to the GMU associated with the gaming device that hosts the winning patron. This message includes the patron’s first name and winning amount. The message is displayed to the player at the Player Tracking Display associated with the gaming device.” (Id., citing D.I. 237 at JA4412-13, ¶ 93) Additionally, Dr. Kelly stated at his deposition that he had not analyzed whether DM33 rearranges the previous configuration of the gaming device, and was not sure that it did. (D.I. 237 at JA3564, 150:17-23) Plaintiff did not refute defendants’ arguments in its answering brief, only arguing that defendants themselves agree that DM33 is an “instruction” that would infringe under a broader claim interpretation. (D.I. 213 at 6) There is no indication of record that DM33 does anything other than inform a player of his bonus winnings. A message that simply informs the Winning Powers player that he has won is not a “command” or “message” as defined by the court, that is, it does not rearrange the previous configuration of the gaming device so that it pays out extra money it would not have paid in its previous configuration. Summary judgment of noninfringement is granted with respect to SDS/CMP Power Winners. d. issuing a “command” (claims 10, 46) or “message” (claim 33) “responsive to a predetermined event” (claim 10) or “responsive to a predefined event” (claim 33, 46) As stated previously, the parties agree that in Power Winners, transaction # 151 is sent to the controller associated with the gaming device with the “Play X” ($0), “Get Y” (jackpot) instruction. (D.I. 192 at 16-17; D.I. 213 at 6, n. 6) The dispositive question is whether transaction # 151 is issued responsive to a “predetermined” or “predefined” event. The event, or “trigger,” according to plaintiff, is the “ ‘pull from the hat’ that has a number less than or equal to the number from the Winning Ticket Table” by the PPE. (D.I. 179 at 32, citing D.I. 237 at JA2227-28 (PPE Installation Guide)) The parties do not dispute that the winning “pull from the hat” causes the issuance of transaction # 151, rather, the parties primarily dispute whether knowing what occurrence will cause the command to be issued (the pull from the hat), without necessarily knowing the time of that occurrence, suffices to make the event “predetermined” or “predefined.” As with Power Rewards, plaintiff argues that the fact that an event will occur upon a set of conditions is all that need be known in advance, while defendants argue that more concrete information must be ascertainable. As discussed previously, the court finds plaintiffs interpretation more convincing. An event may be “predetermined” or “predefined” notwithstanding that the precise time of its occurrence is unascertainable. Defendants also argue that transaction # 151 is not sent “responsive to” the winning ticket pull, it is sent “responsive to” the selection of a winning player. (D.I. 192 at 19-20) That is, “the random winning player selection process is a major intervening step between [when] the PPE picks a random winning “ticket”... and when ... transaction # 151 ... is sent.” (Id. at 21) In defendants’ logic, “if events A, B, C, D, and E occur in order, E is ‘responsive to’ D, D is ‘responsive to’ C, and so on.” (Id. at 20) Defendants essentially advocate a definition of “responsive to” that includes within its definition a time limit requirement, that is, an immediate result between events. Defendants, however, do not support their reading with any evidence, either in the specification, prosecution history of the patents, or otherwise, and the court declines to effectively limit the claims on this record. e. Paying “in accordance with” the “command” or “message” (claims 1, 10, 22, 33 and 46) Defendant reiterates its arguments with respect to ACSC Power Winners that the act of pressing the “PROMO” button to obtain a bonus award means that the award is not paid “in accordance with” the “command” or “message.” For reasons discussed supra, the court disagrees. f. “Paying via at least said one gaming device during the bonus play period in accordance with the message” (claim 33) Claim 33 of the '885 patent requires that the gaming device is paid “during the bonus play period in accordance with the message.” As noted previously, the court has construed “bonus play period” as “the period during which the bonus promotion is active.” According to defendants, the Power Winners jackpot is paid after — not during — the bonus play period insofar as the Power Winners promotion ends when the PPE picks a winner. (D.I. 192 at 24) Dr. Kelly reflects in his expert report that “CMP Power Winners Manager allows up to 10 players to be chosen as winners when the promotion ends [ACSC Power Winners Manager chooses only one winner].” (Id., citing D.I. 237 at JA440708, ¶ 85) That is, “if the drawn ticket is one among the winning tickets, the progressive ends. This idea is implemented in the source code, for example, PPE version 1.0[.]” (Id., citing D.I. 237 at JA4415, ¶ 103) A winning patron receives the message and win amount on the display associated with the gaming device; “[i]n response to the message, the player may choose to withdraw the winning amount onto the credit meters of the gaming device.” (Id., citing D.I. 237 at JA4415, ¶ 93) According to defendants, there is no indication that the player may make this withdrawal during the bonus play period, because that has ended prior to the award notification. (Id.) Plaintiff points out that Dr. Kelly, during his deposition, stated that the bonus play period is still active while a player is in the process of bring paid. (D.I. 213, citing D.I. 237 at JA3588, 245-46) Plaintiff generally argues that “every Power Winners promotion continues until these two components [the PPE and Power Winners Manager] have performed their respective processing,” but the PPE Installation Guide, cited by plaintiff, does not directly support its interpretation. (Id., citing D.I. 237 at JA2222-23) Clearly, the PPE “only functions ... to add money to a growing time-based progressive and determine when the award is won.” (D.I. 237 at JA2225) The Power Winners Manager (“casino-side software”), after being notified that there is a winner and the value of the pot, is responsible for the selection of the winner (id.) and Power Rewards is the mechanism by which the winner is paid (D.I. 192 at 16-17; D.I. 213 at 6, n. 6). The dispositive question is not what software is active and when, but at what point the bonus promotion ceases to be “active.” In ACSC Power Winners, after the PPE determines that an award is won and after the Power Winners Manager notifies the winner, there is no bonus available to other players. Presumably, to make another bonus available, the casino operator would have to configure another promotion. Plaintiff points to no evidence suggesting that the promotion, a randomized award contest amongst eligible players, continues past the selection and notification of the winner. (D.I. 213 at 20; D.I. 239) On this record, the court declines to find that ACSC Power Winners pays the winning player “during the bonus play period.” g. Conclusion For the aforementioned reasons, the court grants summary judgment of infringement of claims 10 and 46 of the '885 patent with respect to ACSC Power Winners, insofar as ACSC Power Winners issues a “command” (claims 10, 46) “responsive to a predefined event” (claim 46) or to a “predetermined event” (claim 10), and pays a reward “in accordance with” the command (claims 10, 46). Summary judgment that ACSC Power Winners does not infringe claim 33 of the '885 patent is appropriate insofar as ACSC Power Winners does not pay “during the bonus play period.” Summary judgment of noninfringement is granted with respect to SDS/ CMP Power Winners (all claims), because DM33 is not a “command” or “message” under the court’s construction. 3. Power Promotions a. The Power Promotions product Power Promotions allows two-way transfers of promotional credits awarded to a player account by the casino to the credit meter on the gaming device. With Power Promotions, casino operators can apply a promotional credit to a player’s account in a variety of ways, such as directly crediting the account or awarding credits based on an amount of play. For example, a casino may set up a system whereby “Gold” members earn one point per dollar spent, and “Platinum” members earn two points per dollar spent. Power Promotions allows the casino to convert earned points into credits. Credits, which may be designated cashable or non-eashable, may also be awarded by the casino at its discretion, for example, on a player’s birthday. Power Promotions points or credits are not automatically transferred onto a gaming device when a player’s PTC is inserted. Instead, the player must draw them down onto the gaming device by proceeding through a system-specific withdrawal process. Once withdrawn, a player can wager the promotional credit to play the gaming device. A player is free to transfer credits back to his player account at any time. b. Infringement analysis Plaintiff asserts that Power Winners infringes claim 1 of the '983 patent. The limitation at issue in this regard is “transferring promotional credit in the account to the gaming device.” By its order of the same date, the court has defined this limitation as “applying the promotional credit in the player account to a credit meter on the gaming device in response to the insertion of a player card alone or with a wager.” Plaintiff argued against the inclusion of the “in response to ...” language, and did not argue in its briefing that credits are applied “in response to” the insertion of a player card. (D.I. 179 at 36-37, D.I. 213 at 32; D.I. 239 at 16-17) Plaintiff only argues that Power Promotions generally applies the credit from the account to the credit meter. Plaintiff cites defendants’ “SDS 9 Slot Data Systems Marketing User Guide,” dated March 3, 2006, which provides that Power Promotions allows the withdrawal of player funds as follows: “Once a card is issued, the player inserts the card into any promotional electronic enabled slot machine to download credits. When the card is inserted, the casino’s greeting scrolls across the display. Using the keypad, the player selects a transaction type and then follows the instructions that scroll across the display.” (D.I. 179 at 35 (claim chart); D.I. 188, ex. 29 at BALLY11835) This selection demonstrates that the transfer of credits is not automatic. The court stops short of specifically equating the “in response to” language of claim 1 with the term “automatic,” as defendants suggest, however, plaintiff does not clearly iterate how a multi-step withdrawal process satisfies the “in response to” limitation. Dr. Kelly acknowledged in his report that a “patron may choose to withdraw funds from the player’s account” when his PTC is in use. , (D.I. 237 at JA04431, ¶ 142) Plaintiff also cites Mr. Crevelt’s rebuttal report, stating that “SDS Power Promotions allows two-way transfers of promotional credits awarded to the patron’s club account by the casino to the credit meter on the gaming device” and that “Bally’s ACSC Power Promotions is similar to that of SDS Power Promotions!)]” (D.I. 188, ex. 8 at ¶¶ 125, 130) Neither statement relates to the “in response to” question at hand. In short, plaintiff has failed to raise a genuine issue of material fact with respect to whether credits are applied “in response to” the insertion of a player card in Power Promotions, and judgment must be entered for defendants. 4. Power Bank a. “Promotional credit” Power Bank allows patrons to make deposits into their player accounts on the host computer for subsequent access at the gaming device. As with Power Promotions, the parties dispute whether Power Bank allows the transfer of promotional credits, rather than money, between a player’s account and a gaming machine. According to defendants, Power Bank does not involve the transfer of noncashable credits; it is directed to player-deposited money that is always cashable. Plaintiff states that there are two versions of Power Bank-SDS Power Bank and ACSC Power Bank. (D.I. 179 at 37) Only the latter is accused of infringement. (Id. at 9) ACSC Power Bank, plaintiff argues, is marketed as handling both patron-deposited money as well as casino-awarded promotional credits. (Id.) According to the “ACSC 10.0 Power Bank User’s Guide” (May 1, 2007) cited by plaintiff, Power Bank enables patrons to play “cashless” by depositing funds with the casino cage to be used later via their PTCs. (D.I. 188, ex. 20) “The SMS allows patrons to redeem these credits (via the cash-out button) or, if supported by the manufacturer’s protocol, play only credits (noncashable) which may -be played at that specific game.” (Id.) (emphasis added) Dr. Kelly testified that he reviewed the source code and has identified functionality allowing Power Bank to download both cashable and non-cashable credits to the gaming device. (D.I. 188, ex. 57 at 264-66) In contrast, Mr. Crevelt states in his rebuttal declaration that “Power Bank has nothing at all to do with non-cashable credits”; the code for Power Promotions cannot be compiled with code conferring ACSC Power Bank capability. (D.I. 188, ex. 8 at ¶ 140) Dr. Kelly testified that he has seen documents in which the code for both products was compiled together. (D.I. 237 at JA3595, 273-76) Defendants cite marketing materials that indicate that Power Bank allows patrons to deposit and later access their money via their PTC. Defendant also cites plaintiffs interrogatory response, stating the same. (D.I. 218 at 22, citing JA05021-25) These documents do not contradict the Power Bank manual, which clearly indicates that ACSC Power Bank may also, depending on manufacturer protocol, transfer promotional (non-cashable) credits. Defendants argue, without support, that the “source code for transferring non-cash-able credits actually belongs to Power Promotions, not Power Bank.” (Id. at 23) Defendants also assert that a casino could not run both Power Promotions and Power Bank together without a “license key,” however, they have never sold a “license key” for Power Bank; “ACSC Power Bank is only operational at two casinos,” which have not purchased Power Promotions. (D.I. 192 at 23-24) Defendants do not point to any supporting evidence (or testimony by Mr. Crevelt) on this point. These bare assertions do not raise a genuine issue of material fact. See Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed.Cir.2001) (“[A]n accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation.”). b. “In response to” the insertion of a PTC Defendants’ alternate non-infringement argument is that Power Bank does not “transfer[ ] promotional credit in the account to the gaming device” because, as with Power Promotions, a player must initiate the withdrawal of credits; withdrawal is not automatic. (D.I. 192 at 37) Plaintiff relies on the same evidence discussed with respect to Power Promotions, the “SDS 9 Slot Data Systems Marketing User Guide,” for its infringement analysis of both Power Promotions and Power Bank. (D.I. 179 at 35 (claim chart)) As an initial matter, the court is not inclined to apply this document — clearly labeled for “Power Promotions” — to Power Bank. Notwithstanding, as discussed previously, there is no indication from this document that the promotional credit is applied “in response to insertion of a player card.” Plaintiff presents no specific arguments vis-a-vis Power Bank in this regard. (D.I. 179 at 35, 37-38; D.I. 213 at 33-35; D.I. 239 at 18-19) Because there is no indication of record that the transfer of credits, where it is provided for by manufacturer protocol, occurs “in response to insertion of a player card,” judgment must be entered for defendants. 5. Conclusion regarding infringement For the foregoing reasons, Power Rewards infringes claims 10, 33 and 46 of the '885 patent and claims 21 and 44 of the '812 patent, and does not infringe claims 1 and 22 of the '885 patent. ACSC Power Winners infringes claims 10 and 46 of the '885 patent and does not infringe claim 33 of the '885 patent. SDS/CMP Power Winners does not infringe the asserted claims. Power Promotions and Power Bank do not infringe the asserted claims. B. Validity 1. Standards Issued patents are presumed valid, and the “underlying determination of invalidity ... must be predicated on facts established by clear and convincing evidence.” Rockwell Int’l Corp. v. United States, 147 F.3d 1358, 1362 (Fed.Cir.1998) (citations omitted). The Federal Circuit has stated that “[t]his burden is especially difficult when the [asserted] prior art was before the PTO examiner during prosecution of the application.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467 (Fed.Cir.1990) (citation omitted). “The presumption of validity under 35 U.S.C. § 282 carries with it a presumption that the examiner did his duty and knew what claims he was allowing.” Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1054 (Fed.Cir.1989) (citation omitted). a. Anticipation An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. See Key Phar. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed.Cir.1998). Second, the finder of fact must compare the construed claims against the prior art. See id. Proving a patent invalid by anticipation “requires that the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys. Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000) (citations omitted). The Federal Circuit has stated that “[t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.Cir.1991). The elements of the claimed invention must be arranged or combined in the same manner as in the claim, but the reference need not satisfy an ipsissimis verbis test. In re Gleave, 560 F.3d 1331, 1334 (Fed.Cir.2009) (citations omitted). “In determining whether a patented invention is [explicitly] anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described.” Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed.Cir.1995). The prosecution history and the prior art may be consulted “[i]f needed to impart clarity or avoid ambiguity” in ascertaining whether the invention is novel or was previously known in the art. Id.