Paper 10
`Enter: January 20, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERMIX MEDIA, LLC,
`Petitioner,
`
`v.
`
`BALLY GAMING, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00154
`Patent 5,816,918
`____________
`
`
`Before MICHAEL P. TIERNEY, PATRICK R. SCANLON, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Enter: January 20, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTERMIX MEDIA, LLC,
`Petitioner,
`
`v.
`
`BALLY GAMING, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00154
`Patent 5,816,918
`____________
`
`
`Before MICHAEL P. TIERNEY, PATRICK R. SCANLON, and
`HYUN J. JUNG, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2015-00154
`Patent 5,816,918
`
`INTRODUCTION
`I.
`Intermix Media, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”),
`
`requesting institution of a covered business method patent review of claims
`1–34, 38, 39, and 45–77 of U.S. Patent No. 5,816,918 (Ex. 1001, “the ’918
`patent”). Bally Gaming, Inc. (“Patent Owner”) filed a Preliminary Response
`(Paper 9, “Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324.
`
`We determine that information in the Petition does not demonstrate it
`is more likely than not that Petitioner would prevail with respect to claims
`1–34, 38, 39, and 45–77 of the ’918 patent. 35 U.S.C. § 324(a).
`Accordingly, we do not institute a covered business method patent review as
`to those claims for the reasons that follow.
`A. Related Proceedings
`
`The ’918 patent is the subject of Bally Gaming, Inc. v. eUniverse, Inc.,
`
`No. 3:03-cv-0062-LRH-VPC (D. Nev.) and Bally Gaming, Inc. v.
`Worldwinner.com Inc., No. 3:03-cv-0063-LRH-VPC (D. Nev.). Pet. 14;
`Paper 5, 1–2.
`
`The ’918 patent was also the subject of Reexamination No.
`90/006,601, and an ex parte Reexamination Certificate issued on June 30,
`2014 that canceled claims 35–37 and 40–44 and amended claims 34, 38, 39,
`45, and 46. Additionally, claims 1, 3, 15–22, 24, 25, 28, 32–34, 39, 73–75
`and 77 of the ’918 patent have been challenged in related covered business
`method patent review CBM2015-00155.
`B. The ’918 Patent (Ex. 1001)
`The ’918 patent relates to “redemption games allowing a player to
`
`receive one or more prizes in connection with playing the game.” Ex. 1001,
`1:16–19. Figure 1 of the ’918 patent is reproduced below.
`
`
`
`2
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`CBM2015-00154
`Patent 5,816,918
`
`
`
`
`Figure 1 is a block diagram of a game apparatus. Id. at 4:62–63,
`
`5:49–51. The ’918 patent states that “prize information is automatically
`determined for each of the prizes, the prize information being determined in
`view of a desired profitability of the game apparatus.” Id. at 4:1–4. Game
`unit 10 can include game processor 12; monetary input device 14 that, for
`example, can be a coin deposit slot or credit card reader; player input device
`16 such as buttons, keyboards, dials, joystick controls, touch screen, track
`ball, or any other input used in playing a game; game output device 18, such
`as display screen 56; universal ticket dispenser 20 that can dispense
`vouchers for redeeming prizes; specific prize ticket dispenser 22; and
`communication device 24 for optionally communicating with other game
`apparatuses. Id. at 6:10–14, 6:34–50, 7:4–10, 7:52–61, 8:13, 8:32–35,
`11:35–39.
`
`Of the challenged claims, claims 1, 15, 21, 34, 38, 39, 45, 47, 59, and
`73 are independent, and claims 34, 38, 39, and 45 were amended during
`reexamination. Claim 1 is reproduced below:
`
`
`
`3
`
`
`
`CBM2015-00154
`Patent 5,816,918
`
`
`1. A method for providing a prize redemption system for
`a game apparatus, said prize redemption system being
`customizable by an operator, said method comprising:
`receiving a prize list on a game apparatus, said prize list
`including names of a plurality of prizes available to be won by
`playing said game apparatus, wherein said game apparatus
`receives monetary income from players in exchange for use of
`said game apparatus, and wherein said players may win prize
`credits by playing said game apparatus;
`receiving a cost of each of said prizes on said game
`apparatus; and
`determining on said game apparatus a prize cost to be
`associated with each of said plurality of prizes, said prize cost
`being in terms of prize credits and determined in view of a
`desired profitability of said game apparatus, and wherein a player
`of said game apparatus may select one of said prizes by
`exchanging a number of prize credits equal to said prize cost of
`said selected prize.
`
`C. Challenge
`
`Petitioner solely challenges claims 1–34, 38, 39, and 45–77 as
`
`unpatentable under 35 U.S.C. § 101. Pet. 1, 15–80.
`
`II. ANALYSIS
`A. Asserted Ground Under 35 U.S.C. § 101
`
`On the merits, the information in the Petition does not demonstrate it
`is more likely than not that claims 1–34, 38, 39, and 45–77 of the ’918
`patent are unpatentable under 35 U.S.C. § 101.
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`Supreme Court clarified the process for analyzing claims to determine
`whether claims are directed to patent-ineligible subject matter. In Alice, the
`Supreme Court applied the framework set forth previously in Mayo
`
`
`
`4
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`CBM2015-00154
`Patent 5,816,918
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`Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
`(2012), “for distinguishing patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that claim patent-eligible
`applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
`the analysis is to “determine whether the claims at issue are directed to one
`of those patent-ineligible concepts.” Id. If they are directed to a patent-
`ineligible concept, the second step in the analysis is to consider the elements
`of the claims “individually and ‘as an ordered combination”’ to determine
`whether there are additional elements that “‘transform the nature of the
`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
`1297, 1298,). In other words, the second step is to “search for an ‘inventive
`concept’––i.e., an element or combination of elements that is ‘sufficient to
`ensure that the patent in practice amounts to significantly more than a patent
`upon the [ineligible concept] itself.’” Id. (alteration in original)
`(quoting Mayo, 132 S. Ct. at 1294). Further, the “prohibition against
`patenting abstract ideas ‘cannot be circumvented by attempting to limit the
`use of the formula to a particular technological environment’ or adding
`‘insignificant postsolution activity.”’ Bilski v. Kappos, 561 U.S. 593, 610–
`11 (2010) (quoting Diamond v. Diehr, 450 U.S.175, 191–92 (1981)).
`For the first step of the Alice test, Petitioner argues that (1)
`independent claim 15 is directed to the abstract idea of “receiving money
`from a player, allowing a player to play a game, providing a dynamic set of
`prizes to the player based on various factors, and allowing the player to
`choose and redeem a prize”; (2) independent claim 1 is directed to the
`abstract idea of “providing a list of prizes to game players, where the cost of
`each prize is determined based on the number of credits and desired
`
`
`
`5
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`CBM2015-00154
`Patent 5,816,918
`
`profitability of the apparatus”; (3) independent claim 21 is directed to the
`abstract idea of “providing prizes for a game, where the cost of the prizes is
`determined based on the desired payout and profitability of the game”; (4)
`independent claims 34, 38, and 45 are directed to the abstract idea of
`“providing a tournament for a game of skill over a network” and “providing
`a menu for presenting and selecting prizes based on prize credits”; (5)
`independent claim 39 is directed to the abstract idea of “providing a
`tournament game”; (6) independent claim 47 is directed to the abstract idea
`of “providing a list of prizes to game players, where the cost of each prize is
`automatically determined based on the number of credits and desired payout
`and profitability of the apparatus”; (7) independent claim 59 is directed to
`the abstract idea of “providing a list of prizes to game players, where the
`cost of each prize is automatically determined based on the number of
`credits and desired payout and profitability of the apparatus”; and (8)
`independent claim 73 is directed to the abstract idea of “providing prizes for
`a game, where the cost of the prizes is determined based on the desired
`payout.” Pet. 28, 35, 37, 40–41, 42, 44, 46, 48–49. Petitioner additionally
`asserts abstract ideas for each of the challenged dependent claims. Id. at 50–
`80.
`
`As for the second step of the Alice test, Petitioner contends that any
`recited structures are generic, the remaining claim elements are directed to
`the abstract idea or well known, or the claims do not recite a technical
`solution to a technical problem. Pet. 31–33 (claim 15), 35–36 (claim 1), 37–
`39 (claim 21), 41 (claims 34, 38, 45), 42–43 (claim 39), 44–45 (claim 47),
`47 (claim 59), 49 (claim 73), 50–80 (dependent claims 2–14, 16–20, 22–33,
`
`
`
`6
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`CBM2015-00154
`Patent 5,816,918
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`46, 48–58, 60–72, 74–77). For example, with respect to claim 15, Petitioner
`states
`
`- Element [a] claims the abstract idea of displaying a prize table.
`- Element [b] claims the abstract idea of receiving an input of the
`prizes available for players of the games, and the ability to
`receive money from players, both of which the ‘918 Patent
`admits were commonly known and which are computer
`implementations of previously-manual processes.
`- Element [c] claims the abstract idea of receiving payout input
`from the operator, which is expressed in terms of the monetary
`value of the prizes versus the amount of money received.
`- Element [d] claims the abstract idea of determining cost of each
`prize in accordance with the desired payout and profitability.
`- Element [e] claims the abstract idea of receiving monetary
`input.
`- Element [f] claims the abstract idea of implementing the game
`process and providing a player with a score.
`- Element [g] claims the abstract idea of displaying a prize
`selection screen with a plurality of prizes and a prize cost (i.e., a
`price list).
`- Element [h] claims the abstract idea of the player selecting a
`prize that has a cost less than the number of credits the player
`has.
`- Element [i] claims the abstract idea of the player receiving a
`redemption coupon or other indication for redeeming a prize.
`
`
`Id. at 32–33.
`Petitioner fails to provide a credible analysis considering the elements
`of the challenged claims “individually and ‘as an ordered combination”’ to
`determine whether the additional elements transform the nature of the
`challenged claims into a patent-eligible application in accordance with the
`second step of the Alice analysis. The Petition fails to provide a credible and
`sufficient explanation as to whether an element or combination of elements
`is sufficient to ensure that the ’918 patent in practice amounts to
`
`
`
`7
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`CBM2015-00154
`Patent 5,816,918
`
`significantly more than a patent upon the ineligible concept itself. The
`Petition, instead, asserts cursory and conclusory arguments with no or
`insufficient evidence that the additional claim elements are well known or
`recite generic structure. See Pet. 31–80. Petitioner’s failure to do a full
`analysis under Alice constitutes a breach of 37 C.F.R. § 42.304(b)(4), as well
`as 35 U.S.C. § 322(a)(3), which requires identifying the grounds “with
`particularity.”
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information in the
`Petition does not demonstrate that it is more likely than not that claims 1–34,
`38, 39, and 45–77 of the ’918 patent are unpatentable in the sole challenge
`under 35 U.S.C. § 101.
`
`
`IV. ORDER
`Accordingly, it is ORDERED that the Petition is denied for the
`reasons discussed, and no trial is instituted.
`
`
`
`
`
`
`
`
`8
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`
`
`CBM2015-00154
`Patent 5,816,918
`
`For PETITIONER:
`Evan Finkel
`Christopher K. Dorsey
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`evan.finkel@pillsburylaw.com
`christopher.dorsey@pillsburylaw.com
`
`For PATENT OWNER:
`Barry Bretschneider
`BAKER & HOSTETLER LLP
`bbretschneider@bakerlaw.com
`
`
`
`9
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