Epic Tech v. Pen-Tech Associates: Derby Dash Patent Invalidated After 1,571-Day Fight
Epic Tech LLC filed suit in the Northern District of Georgia asserting U.S. Patent 8,545,317 against Pen-Tech Associates’ Derby Dash game. After more than four years, the court granted summary judgment for the defendant, declaring nine claims invalid as patent-ineligible subject matter under § 101 — a complete defeat for the patent holder.
§ 101 Kills Derby Dash Patent: A Complete Plaintiff Loss at Summary Judgment
Epic Tech LLC filed this infringement action on June 5, 2020 in the U.S. District Court for the Northern District of Georgia, asserting U.S. Patent No. 8,545,317 against Pen-Tech Associates, Inc. in connection with the Derby Dash game. The patent, applied for under application number US13/617105, covers electronic gaming or sweepstakes mechanics, and Epic Tech alleged that Pen-Tech’s product infringed claims spanning the core of that patent.
The case concluded on September 23, 2024, when Judge Victoria M. Calvert granted Pen-Tech’s cross-motion for summary judgment and denied Epic Tech’s motion. The court entered judgment against Epic Tech on all its claims, ordered that Epic Tech take nothing, and dismissed those claims. Critically, the court also granted Pen-Tech’s counterclaim for declaratory judgment, declaring Claims 1, 2, 4, 5, 7–10, and 18 of US8545317B2 invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Pen-Tech was also awarded costs.
At 1,571 days, this litigation ran notably long for a case ultimately resolved on a threshold § 101 invalidity question — suggesting the parties contested claim scope and eligibility vigorously before the court reached its ruling. The public record does not disclose the precise eligibility framework applied (Alice step one or step two), nor the quantum of costs awarded, leaving some analytical gaps. What is clear is that Epic Tech exhausted its first-instance remedies without prevailing on any asserted claim.
Filing to Case Dismissed in 1571 days
1,571 days — well above the ~900-day median for N.D. Georgia patent cases
Summary judgment for defendant: what the § 101 invalidity ruling means
§ 101 Invalidity: Patent-Ineligible Subject Matter at Summary Judgment
The court applied 35 U.S.C. § 101 — the patent-eligibility statute — to invalidate nine claims of US8545317B2. Under the Alice/Mayo framework, abstract ideas implemented on generic computer systems typically fail § 101. A summary judgment ruling means the court found no genuine dispute of material fact: the claims were ineligible as a matter of law, without needing a full trial.
§ 101 — Alice/Mayo frameworkEpic Tech Loses Enforcement Rights on All Asserted Claims
Epic Tech’s infringement claims were dismissed with a take-nothing judgment. The § 101 invalidity declaration strips the asserted claims of enforceability — not just against Pen-Tech, but as a matter of record across the patent’s life. Epic Tech may consider appeal to the Federal Circuit, but the Alice doctrine is well-established, raising the bar for reversal significantly.
Claims declared invalid — unenforceablePen-Tech Secures Invalidity Declaration Plus Cost Recovery
Pen-Tech Associates prevailed on its counterclaim for declaratory judgment, obtaining a formal court declaration that Claims 1, 2, 4, 5, 7–10, and 18 are invalid. This is a stronger outcome than a simple non-infringement finding — it neutralises the patent. Pen-Tech also recovers costs, partially offsetting its litigation expenditure over four-plus years.
Declaratory judgment — invalidity confirmedElectronic Gaming Patents Face Heightened § 101 Scrutiny Post-Ruling
This outcome reinforces that electronic gaming and sweepstakes mechanics implemented in software remain vulnerable to § 101 challenges. Companies operating in the gaming-technology space should audit patent portfolios for claims that could be characterised as abstract ideas on generic platforms. The Derby Dash ruling consistent with broader Alice-era invalidations of game-mechanic software patents.
Gaming-tech IP risk — § 101 exposureFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Epic Tech LLC | Company | Electronic gaming IP licensor — holder of US8545317B2 (Derby Dash game mechanics)Search in Eureka ↗ |
| Defendant | Pen-Tech Associates, Inc. | Company | Pen-Tech Associates, Inc. — gaming systems company and Derby Dash game operatorSearch in Eureka ↗ |
| Plaintiff counsel | Carl M. Davis , II | Attorney | Counsel for Epic Tech LLCSearch in Eureka ↗ |
| Plaintiff counsel | Jordana Oppenheim | Attorney | Counsel for Epic Tech LLCSearch in Eureka ↗ |
| Plaintiff counsel | L. Clint Crosby | Attorney | Counsel for Epic Tech LLCSearch in Eureka ↗ |
| Plaintiff counsel | Tyler Preston Bishop | Attorney | Counsel for Epic Tech LLCSearch in Eureka ↗ |
| Plaintiff law firm | Baker Donelson Bearman Caldwell & Berkowitz, P.C.-GA | Law Firm | Representing Epic Tech LLCSearch in Eureka ↗ |
| Plaintiff law firm | Baker, Donelson, Bearman, Caldwell & Berkowitz, PC- Atl | Law Firm | Representing Epic Tech LLCSearch in Eureka ↗ |
| Defendant counsel | Cynthia L. Counts | Attorney | Counsel for Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Defendant counsel | Richard M. Lehrer | Attorney | Counsel for Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Defendant counsel | Vincent C. Bushnell | Attorney | Counsel for Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Defendant law firm | FisherBroyles LLP -W. GA | Law Firm | Representing Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Defendant law firm | FisherBroyles, LLP – ATL | Law Firm | Representing Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Defendant law firm | Pierson Ferdinand, LLP | Law Firm | Representing Pen-Tech Associates, Inc.Search in Eureka ↗ |
| Presiding judge | Judge Victoria M. Calvert | Judge | Georgia Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The court’s order is unusually comprehensive: it simultaneously disposes of Epic Tech’s infringement claims on the merits (take-nothing judgment) and grants affirmative declaratory relief to Pen-Tech on invalidity. By specifying each invalidated claim by number — Claims 1, 2, 4, 5, 7–10, and 18 — the ruling creates a clear public record of which claims cannot be asserted. The costs award further underscores that the court viewed Pen-Tech as the unqualified prevailing party. The citation to 18 U.S.C. § 101 in the verdict appears to be a scrivener’s error; the operative statute for patent-eligible subject matter is 35 U.S.C. § 101.
US8545317B2 — Electronic Gaming / Derby Dash Sweepstakes Mechanics
U.S. Patent No. 8,545,317 (application no. US13/617105) covers electronic gaming mechanics associated with the Derby Dash game — a sweepstakes-style system likely involving computerised random outcome determination or display. The patent was asserted in its entirety by Epic Tech, with the litigation ultimately focusing on claims 1, 2, 4, 5, 7–10, and 18. The court found these claims directed to patent-ineligible subject matter under § 101, consistent with the Alice framework’s treatment of abstract ideas implemented through generic computing.
For competitors and developers in the electronic gaming, amusement, and sweepstakes sectors, this patent’s invalidation significantly reduces the IP landscape barrier that US8545317B2 previously represented. However, the ruling applies only to the declared invalid claims — any surviving claims of the patent (those not enumerated in the order) technically retain validity unless separately challenged. Companies developing similar game mechanics should note which claims were not addressed and evaluate residual exposure accordingly.
Should you run an FTO against US8545317B2?
Any company developing electronic gaming platforms, sweepstakes systems, or Derby Dash-style game mechanics should review this ruling carefully. While Claims 1, 2, 4, 5, 7–10, and 18 of US8545317B2 have been declared invalid, not every claim in the patent was expressly adjudicated in this proceeding. R&D teams building gaming software with computerised race or outcome-display mechanics face residual risk from unadjudicated claims.
PatSnap Eureka’s FTO Search Agent can map your product’s feature set against the full claim landscape of US8545317B2, identify which claims survive this ruling, surface continuation or related patents that Epic Tech may assert, and benchmark your exposure against Alice-era invalidation precedent in the gaming software space — giving your team a defensible clearance position before launch.
Run a freedom-to-operate analysis on US8545317B2 to assess your product’s exposure
Run FTO in Eureka →Similar § 101 Gaming Software Patent Cases in U.S. District Courts
Cases involving § 101 invalidity challenges to electronic gaming and sweepstakes software patents in U.S. district courts, including N.D. Georgia.
What this case signals for the electronic gaming IP landscape
The Derby Dash ruling is a cautionary data point for any IP strategy built around software-implemented gaming patents in U.S. district courts.
Software gaming patents remain acutely vulnerable to § 101 at summary judgment
Epic Tech’s defeat without trial confirms that district courts are willing to resolve patent-eligibility as a matter of law on gaming software claims. If your portfolio includes sweepstakes or electronic game mechanic patents, a pre-litigation § 101 audit is not optional — it is a baseline risk-management step before asserting any claim.
Defendants should lead with § 101 counterclaims in gaming patent disputes
Pen-Tech’s successful counterclaim for declaratory invalidity — rather than relying solely on non-infringement — produced a stronger, more durable outcome. Any defendant facing a gaming or sweepstakes software patent should evaluate a § 101 invalidity counterclaim as a primary defensive strategy, not a fallback.
Epic v Pen-Tech — key questions answered
The Northern District of Georgia granted summary judgment for Pen-Tech Associates, declaring Claims 1, 2, 4, 5, 7–10, and 18 of U.S. Patent 8,545,317 invalid under 35 U.S.C. § 101 for claiming patent-ineligible subject matter. Epic Tech’s infringement claims were dismissed and the court awarded costs to Pen-Tech.
The court declared Claims 1, 2, 4, 5, 7, 8, 9, 10, and 18 of U.S. Patent No. 8,545,317 invalid under § 101. The verdict order specifies these claims by number. Claims not listed in the order were not expressly adjudicated in this proceeding and technically retain their validity status absent further challenge.
A § 101 ruling means the asserted claims were found directed to an abstract idea without adding an inventive concept sufficient to confer patent eligibility under the Alice/Mayo framework. This is a threshold invalidity — independent of novelty or obviousness — and renders the claims unenforceable. For gaming software patents, it reflects courts’ continued skepticism of abstract computer-implemented game mechanics.
Yes. Epic Tech may appeal the Northern District of Georgia’s final judgment to the U.S. Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent appeals. However, Federal Circuit § 101 jurisprudence broadly follows Alice, and reversals of district court § 101 summary judgments on software patents are relatively uncommon, suggesting a challenging appellate path.
A district court invalidity ruling creates a public record and strong persuasive precedent, but is not technically binding on courts in other jurisdictions. However, any future defendant facing assertion of US8545317B2’s invalidated claims could invoke this ruling as collateral estoppel or at minimum as persuasive authority, significantly reducing Epic Tech’s ability to re-litigate the § 101 question on the same claims.
PatSnap Eureka searches patents and litigation data to answer instantly.