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
`____________
`
`Attorney Docket No. 024004-0000019
`____________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §42.71(d)
`
`
`
`4852-2040-3245.v4
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`INTERMIX MEDIA LLC
`Petitioner
`
`v.
`
`BALLY GAMING, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-00154
`Patent 5,816,918
`____________
`
`Attorney Docket No. 024004-0000019
`____________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. §42.71(d)
`
`
`
`4852-2040-3245.v4
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`LEGAL STANDARD ..................................................................................... 2
`II.
`III. THE PETITION DEMONSTRATED THAT THE CLAIMS ARE
`DIRECTED TO PATENT-INELIGIBLE ABSTRACT IDEAS .................... 2
`A.
`The Petition Identified The Abstract Idea In Each Claim .......... 4
`B.
`The Petition Confirmed The Abstractness Of Each Claim By
`Showing Each Claim Merely Automated A Manual Process ..... 5
`The Petition Showed That Each Claim Was Directed To An
`Abstract Idea, Both As A Whole And As Individual Elements . 6
`D. As To The Second Step Of The Alice Test, The Petition
`Showed That The Claims Do Not Include “Something More”
`That Renders Them Patent-Eligible ............................................ 7
`Representative Method Claim 15................................................ 7
`1.
`Representative Apparatus Claim 21 ......................................... 13
`2.
`The Remaining Challenged Claims .......................................... 15
`3.
`IV. CONCLUSION .............................................................................................. 15
`
`C.
`
`
`
`
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`4852-2040-3245.v4
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`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .............................................................................. 1, 2, 3, 7
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ............................................................................ 10
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .............................................................................. 5
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ................................................................................................. 5
`GSN Games, Inc. v. Bally Gaming, Inc.,
`CBM2015-00155 ..................................................................................... 1, 4, 5, 15
`Mortgage Grader, Inc. v. First Choice Loan Services, Inc.,
`– F.3d –, 2016 WL 362415 (Fed. Cir. Jan. 20, 2016) .......................................... 11
`OIP Technologies, Inc. v. Amazon.com, Inc.,
`No. 2012-1696, 2015 WL 3622181 (Fed. Cir. June 11, 2015) .............................. 9
`Planet Bingo, LLC v. VKGS LLC,
`576 Fed. Appx. 1005 (Fed. Cir. 2014) ........................................................ 5, 9, 15
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005) .............................................................................. 2
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) .............................................................................. 10
`Statutes and Codes
`35 U.S.C. §101 .......................................................................................... 2, 5, 11, 12
`37 C.F.R. §42.71 ....................................................................................................1, 2
`
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012)) ................................................. 10
`
`
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`I.
`
`INTRODUCTION
`
`Pursuant
`
`to 37 C.F.R. §42.71(d), Petitioner Intermix Media LLC
`
`(“Intermix”) hereby requests rehearing of the Board’s Decision (paper 10, Jan. 20,
`
`2016) denying institution of covered business method review of U.S. Patent No.
`
`5,186,918 (“the ’918 Patent”).
`
`Intermix’s Petition was directed to claims 1-34, 38-39, and 45-77 of the ’918
`
`Patent (“the Challenged Claims”) and demonstrated that it is more likely than not
`
`that at least one claim (and in fact all the Challenged Claims) of the ’918 Patent is
`
`directed to patent-ineligible subject matter. The Petition analyzed both steps set
`
`forth in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), and established that
`
`at least one claim (and in fact all the Challenged Claims) was both (1) directed to
`
`an abstract idea and (2) failed to recite anything more than the abstract idea itself.
`
`Respectfully, the Board misapprehended the nature of Intermix’s argument at least
`
`with regard to the second step of the Alice analysis. Intermix therefore respectfully
`
`requests that the Board grant rehearing of Intermix’s Petition and institute review
`
`of the ’918 Patent.1
`
`
`
`1 Intermix had intended to submit a Motion for Joinder with the granted Petition in
`
`GSN Games, Inc. v. Bally Gaming, Inc., Case CBM2015-00155. When Intermix
`
`requested authorization to file this request, the Board denied authorization to file
`
`the request at this point, with leave to make a second request for authorization if
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`II. LEGAL STANDARD
`A party requesting rehearing must show that a decision should be modified
`
`by identifying “all matters the party believes the Board misapprehended or
`
`overlooked, and the place where each matter was previously addressed in a motion,
`
`an opposition, or a reply.” 37 C.F.R. §42.71(d). The Board reviews requests for
`
`rehearing of a decision on institution under an abuse of discretion standard. 37
`
`C.F.R. §42.71(c). “An abuse of discretion occurs where the decision is based on an
`
`erroneous interpretation of the law, on factual findings that are not supported by
`
`substantial evidence, or represents an unreasonable judgment in weighing relevant
`
`factors.” Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005).
`
`III. THE PETITION DEMONSTRATED THAT THE CLAIMS ARE
`DIRECTED TO PATENT-INELIGIBLE ABSTRACT IDEAS
`
`“The first step in the [Alice] analysis is to ‘determine whether the claims at
`
`issue are directed to one of those patent-ineligible concepts.’” Decision at 5
`
`(quoting Alice, 134 S. Ct. at 2355); see also Petition at 23 (“The first step in a 35
`
`
`
`this Request for Rehearing is granted. See Paper No. 11. To the extent the Board
`
`is inclined to grant this Request for Rehearing only for those claims at issue in
`
`CBM2015-00155, Intermix will stipulate to such limited review and would
`
`promptly file a motion for joinder to simplify the issues for the parties and the
`
`Board.
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`U.S.C. §101 analysis is determining if an invention falls within one of the four
`
`statutorily-defined categories.”). The Petition analyzed the Challenged Claims,
`
`identified the abstract idea in each claim and demonstrated that each claim was
`
`directed to a patent-ineligible abstract idea, thereby satisfying step one of the Alice
`
`test. Petition at 17-20, 26-43. The Board’s Decision denying institution is not based
`
`on any purported failure to satisfy step one of the Alice test. See Decision at 7-8.
`
`If the claims are directed to a patent-ineligible concept, then the analysis
`
`proceeds to the second step: determining whether the claims contain an element or
`
`combination of elements sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself. Petition at 25
`
`(citing Alice, 134 S. Ct. at 2355); see also Decision at 5 (same). The Board’s
`
`Decision found the Petition did not adequately address the second step of the Alice
`
`test. Decision at 7-8. The Board concluded that the Petition “asserts cursory and
`
`conclusory arguments with no or insufficient evidence that the additional claim
`
`elements are well known or recite generic structure.” Id. Intermix respectfully
`
`submits that the Decision misapprehended Intermix’s evidence and arguments
`
`regarding the second step of the Alice test. Specifically, the Board overlooked the
`
`overwhelming evidence that Intermix presented in the sections of the Petition
`
`related to claim construction and the first step of the Alice test, which were cited
`
`and relied upon in the Petition’s analysis of the second step of the Alice test.
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`A. The Petition Identified The Abstract Idea In Each Claim
`
`Intermix satisfied the first step of the Alice test in the Petition by identifying
`
`the abstract idea recited in each Challenged Claim. For example, claim 15 directed
`
`to a “method for providing a prize redemption system for a game apparatus,” the
`
`Petition identified the abstract idea as “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.” Petition at
`
`28. Claim 21, directed to a “game apparatus providing a prize redemption system,”
`
`recites a similar abstract idea, namely “providing prizes for a game, where the cost
`
`of the prizes is determined based on the desired payout and profitability of the
`
`game.” Petition at 37. By way of further example, for method claims 34, 38, and
`
`45, the Petition identified the abstract idea as “providing a tournament for a game
`
`of skill over a network,” with 38 and 45 further including the abstract idea of
`
`“providing a menu for presenting and selecting prizes based on prize credits”
`
`Petition at 40-41. Likewise, for method claim 39, the Petition identified the
`
`abstract idea as simply “providing a tournament game.” Petition at 41. The Petition
`
`made similar identifications for the remaining claims of the ’918 Patent, including
`
`each of the claims raised in the co-pending granted petition filed by GSN Games
`
`(CBM2015-00155). See generally Petition at 28-80.
`
`The common thread running through each of these abstract ideas is that they
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`broadly recite a concept that, by itself, does not require a technical solution. The
`
`concept of providing a tournament game for money and providing prizes to
`
`winners does not have its basis in computing technology. Cf. Planet Bingo, LLC v.
`
`VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) (unpublished) (cited in Petition
`
`at 33). Nor does allowing a player to choose a prize or to price prizes at a
`
`profitable level. Id. Instead, the breadth of these ideas shows that they are the type
`
`of building block of ingenuity that is barred from patent-eligibility by §101.
`
`Indeed, the Board came to that very conclusion in the co-pending review filed by
`
`GSN Games. See CBM2015-00155 (Paper 8) at 15.
`
`B.
`
`The Petition Confirmed The Abstractness Of Each Claim By
`Showing Each Claim Merely Automated A Manual Process
`
`Continuing its analysis, Intermix examined the claims through the lens of
`
`their implementation as a manual process. The Federal Circuit has stated that
`
`“methods which can be performed mentally, or which are the equivalent of human
`
`mental work, are unpatentable abstract ideas — the ‘basic tools of scientific and
`
`technological work’ that are open to all.” CyberSource Corp. v. Retail Decisions,
`
`Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (quoting Gottschalk v. Benson, 409 U.S.
`
`63, 67 (1972)) (quoted in Petition at 29). As to the Challenged Claims, Intermix
`
`again used claim 15 as the exemplar and identified in the Petition how each recited
`
`element could be performed without any computer technology. Petition at 28-29.
`
`As support, Intermix cited directly to statements in the ’918 Patent’s “Background
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`of the Invention” section admitting that the claimed steps had previously been
`
`performed in the absence of computer automation. Petition at 29-30 (citing ’918
`
`Patent at 1:40-48).
`
`Based on its showing that claim 15 satisfied step one of the Alice test, the
`
`Petition relied on that analysis for the remaining independent Challenged Claims.
`
`For example, with regard to method claims 34, 38, and 45, the Petition again
`
`demonstrated that the only recited structures were “generic” apparatuses, such as a
`
`“computerized game apparatus” and a “network.” Id. at 40-41. Likewise for
`
`method claim 39, Intermix pointed out the claim’s even more threadbare recitation
`
`of structure – the admittedly “generic” “game apparatus.” Id. at 42. In each case,
`
`the Petition compared the claim to a computer-independent embodiment – a
`
`standard “poker or blackjack game.” Id. at 41, 42. The Petition similarly analyzed
`
`the remaining Challenged Claims. See generally Petition at 28-80.
`
`C. The Petition Showed That Each Claim Was Directed To An
`Abstract Idea, Both As A Whole And As Individual Elements
`
`After identifying the abstract idea and demonstrating that the abstract idea
`
`could be performed in the absence of any computing technology, Intermix
`
`assembled those two pieces of the puzzle to demonstrate that the claims at issue
`
`were directed to an abstract idea. See, e.g., Petition at 30-31. Intermix’s analysis
`
`looked both to the claims as a whole (by identifying the abstract idea recited by
`
`each claim) and as individual elements (by demonstrating that each recitation of
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`the claims could be performed mentally or in the absence of computing
`
`technology, but for the generic structural recitations). Id. Thus, the Petition
`
`demonstrated that the claims were directed to an abstract idea. Importantly, the
`
`Board’s Decision denying institution is not based on any purported failure to
`
`satisfy the first step of the Alice test. See Decision at 7-8.
`
`D. As To The Second Step Of The Alice Test, The Petition Showed
`That The Claims Do Not Include “Something More” That
`Renders Them Patent-Eligible
`
`Step two of the Alice test requires review of the claim to determine whether
`
`there is an element or combination of elements that “amounts to significantly more
`
`than a patent upon the [ineligible concept] itself.” Petition at 25 (citing Alice, 134
`
`S. Ct. at 2355); see also Decision at 5 (same). By necessity, and consistent with
`
`binding precedent, the Petition examined the language in the claims in search of
`
`anything that might be legally sufficient to constitute “significantly more” than the
`
`patent-ineligible abstract idea identified in the first step of the Alice test. Petition at
`
`31-34. However, the claims are devoid of anything that would rise to that level.
`
`1.
`
`Representative Method Claim 15
`
`Representative method claim 15 is directed to an 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. Petition at 28. The claim includes nine steps, [a]-[i], that the ‘918
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`Patent admits merely automate a manual process. Petition at 26-27, 29-30 (citing
`
`‘918 Patent at 1:22-2:59). One well-known prior art example of performing these
`
`nine steps by hand is an operator of a traditional arcade with non-computer-based
`
`games (e.g., a carnival game like a ring toss or an arcade game like skee-ball).
`
`Petition at 28-29. See also Petition at 38-39 (citing U.S.P. 2,926,915 (Ex. 1003)
`
`teaches an automatic ticket-dispensing skee-ball machine; U.S.P. 5,443,259 (Ex.
`
`1004) describing a multi-purpose gaming apparatus that includes target bowling
`
`(i.e., skee-ball)).2 See also Petition at 32 (step of dispensing a physical indication
`
`of a prize was well known in the prior art) (citing ‘918 Patent at 1:34-48). The only
`
`structure recited in claim 15 is a “generic computer implementation” of the method
`
`on a “game apparatus” with a “storage medium” and a “display” and the
`
`“dispensing [of] a physical indication of said selected prize.” Petition at 32; see
`
`also Petition at 17-18 (construing claimed term “game apparatus” as “any
`
`apparatus used to provide game functions, including a video game apparatus
`
`having one or more display screens, a mechanical game having playing pieces
`
`and/or other moving mechanical parts, a personal computer system, a network
`
`computer, a set top box connected to a television for Internet or other information
`
`access”) (citing ‘918 Patent at 5:49-63).
`
`The “something more” required by step two of the Alice test is not present in
`
`
`
`2 Exs. 1003 and 1004 were identified as Exs. 3 and 4 on the cited pages.
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`
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`claim 15 because the “something more”:
`
`(1) Cannot arise from the individual steps or the combination of steps, all
`
`of which were known in the art. Petition at 32-33; see also id. at 29-30
`
`(citing ‘918 Patent at 1:22-2:59); id. at 28-29 (prior art example of
`
`carnival game like a ring toss or an arcade game like skee-ball); id. at
`
`38-39 (citing prior art U.S.P. 2,926,915 (Ex. 1003) and 5,443,259 (Ex.
`
`1004); id. at 32 (citing ‘918 Patent at 1:34-48).
`
`(2) Cannot rest on the argument that the claims are directed to an
`
`apparatus that automates the abstract concept of the claim to perform
`
`the recited steps more quickly or accurately. Petition at 30 (citing ‘918
`
`Patent at 1:40-2:4, 3:1-7, 4:40-55; and OIP Technologies, Inc. v.
`
`Amazon.com, Inc., No. 2012-1696, 2015 WL 3622181 at *3 (Fed.
`Cir. June 11, 2015); Petition at 32-33.
`
`(3) Cannot be founded on an unclaimed algorithm for “determining a
`
`prize cost” as recited in the claim. Petition at 30 (responding to Patent
`
`Owner suggestion in Ex. 1007 at 2, 6-7, that claim is patentable due to
`
`patent disclosure of algorithms).
`
`(4) Cannot be based on the generic computer-related components recited
`
`in the claim: “game apparatus,” “storage medium,” “display”. Petition
`
`at 31; see also id. at 33 (citing Planet Bingo, Alice, OIP, Ultramercial,
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`
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`Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), and buySAFE, Inc.
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`v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)); id. at 9 (claim
`
`drafting techniques that do not render patent a “technological
`
`invention” include “(a) Mere recitation of known technologies, such
`
`as computer hardware, … computer-readable storage medium, …
`
`display devices …” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48763-64 (Aug. 14, 2012)).
`
`Respectfully, Intermix submits that the Board overlooked all this evidence
`
`and the accompanying legal analysis because it was presented in part in sections of
`
`the Petition relating to claim construction (see Petition at 17-18, construing “game
`
`apparatus”) and step one of the Alice test (see Petition at 28-31) that formed the
`
`factual predicate for the legal analysis addressing step two of the Alice test. See,
`
`e.g., Petition at 32-33 (“Each of these elements [of claim 15] purportedly
`
`automates abstract concepts that were well known in the art. None present a
`
`‘technical problem’ and none claim a ‘technical solution.’”); Petition at 32 (“The
`
`only structure recited in Claim 15 is a ‘generic computer implementation’ of the
`
`method on a ‘game apparatus’ with a ‘storage medium’ and a ‘display’ and the
`
`‘dispensing a physical indication of said selected prize.’”). Indeed, the Decision
`
`does not cite to or otherwise discuss these earlier sections in the Petition. See
`
`Decision at 7-8.
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`Intermix’s application of step two of the Alice test is consistent with recent
`
`precedent. For example, in Mortgage Grader, Inc. v. First Choice Loan Services,
`
`Inc., – F.3d –, 2016 WL 362415 (Fed. Cir. Jan. 20, 2016), the Federal Circuit
`
`affirmed summary judgment of patent-ineligibility. Regarding step one of the Alice
`
`test, the Federal Circuit found the asserted claims are directed to the abstract idea
`
`of “anonymous loan shopping.” Id. at *7. Regarding step two of the Alice test, the
`
`Federal Circuit held that the claims did not include an “inventive concept” that
`
`would render them patent-eligible. Id. The claims added only generic computer
`
`components such as an “interface,” “network,” and “database” that “do not satisfy
`
`the inventive concept requirement.” Id. (citations omitted). “Nor do the claims
`
`solve a problem unique to the Internet.” Id. (citations omitted). “In addition, the
`
`claims are not adequately tied to a particular machine or apparatus.” Id. (citation
`
`and inner quotation marks omitted). “Because the asserted claims are directed to an
`
`abstract idea and nothing in the claims adds an inventive concept, the claims are
`
`not patent-eligible under §101.” Id.
`
`Precisely the same structured analysis applies here and was in fact
`
`performed in the Petition as demonstrated above. Claim 15 includes only generic
`
`computer components such as an “game apparatus,” “storage medium” and
`
`“display” that do not satisfy the inventive concept requirement. Petition at 32. Nor
`
`does the claim purport to solve any problem unique to playing a game on a game
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`apparatus; instead the claim simply automates the manual process to reduce time
`
`and perform the recited steps more quickly or accurately. Petition at 29-30 (citing
`
`‘918 Patent at 1:40-2:4, 3:1-7, 4:40-55). In addition, the claim is not adequately
`
`tied to a particular machine or apparatus; instead according to the specification and
`
`claim, games are played on a generic game apparatus (i.e., any apparatus used to
`
`provide game functions, including a video game apparatus having one or more
`
`display screens, a mechanical game having playing pieces and/or other moving
`
`mechanical parts, a personal computer system, a network computer, a set top box
`
`connected to a television for Internet or other information access). Petition at 18
`
`(citing ’918 patent at 5:49-63).
`
`Because the claim is directed to an abstract idea and nothing in the claim
`
`adds an inventive concept, the claim is not patent-eligible under §101. Indeed,
`
`because there is nothing else in claim 15 that could possibly save claim 15 from a
`
`conclusion that it is patent-ineligible, no additional analysis is necessary or even
`
`possible at this stage in the proceeding. Intermix’s Petition did not give the Alice
`
`step two analysis short shrift, but supported its analysis with:
`
`(1)
`
`construction of claimed terms based on specific citations to the
`
`specification;
`
`(2)
`
`citations to the specification admitting the invention merely automates
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`prior art games;
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`(3)
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`examples of prior art carnival and arcade games that practice the
`
`claim without a “game apparatus”;
`
`(4)
`
`citations to the specification admitting and otherwise proving generic
`
`nature of the components used to automate such prior art games; and
`
`(5)
`
`case law citations reaching the same conclusion in analogous cases.
`
`See Petition at 17-18, 28-29, 40-42. Respectfully, the Board appears to have
`
`overlooked the specific factual and legal support in Intermix’s Petition.
`
`2.
`
`Representative Apparatus Claim 21
`
`The Petition next provided analysis of representative apparatus claim 21.
`
`For claim 21, Intermix incorporated its exemplary analysis for claim 15, before
`
`analyzing the ’918 Patent’s specification for each of the additional recited
`
`structural elements in claim 21. Petition at 37-38. As was true of the analysis of
`
`claim 15, the Petition’s Alice step two analysis of claim 21 relied on earlier
`
`sections in the Petition construing the claim terms to demonstrate that “something
`
`more” cannot be based on the generic computer-related components recited in
`
`claim 21. Id. at 17-20 (construing “game apparatus,” “receiving means for
`
`receiving monetary input from said player,” “means for providing a prize selection
`
`menu on said display device”). The analysis of claim 21 also construed other claim
`
`terms as necessary, including “input device,” “output device,” and “prize output
`
`device.” Id. at 38 (citing ‘918 Patent at 6:64-7:18, 7:52-8:12, 8:31-38).
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`With each of the means-plus-function elements of claim 21, the Petition
`
`showed that those elements were directed to generic computer devices and
`
`specifically identified the portions of the ’918 Patent’s specification providing the
`
`claimed structure for the recited function. Petition at 18-20. Claim 21’s recited
`
`“receiving means for receiving monetary
`
`input from said player” has
`
`corresponding structure that can be in almost any form for receiving paper money,
`
`coins, credit cards, or electronic transfers of money. Petition at 18-19. Thus, the
`
`Petition demonstrated that this means-plus-function element has no unique
`
`technical aspects, and can take almost any form. Id. The same analysis is true for
`
`Claim 21’s “means for providing a prize selection menu on said display device,”
`
`which was a screen, prize selection unit, or other structure recited in the
`
`specification. Id. at 20. The Petition included similar analysis for the means-plus-
`
`function elements in Claims 23 and 26. Id. at 20-22.
`
`This analysis involved elements that were previously analyzed in the claim
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`construction section of the Petition and, for brevity, Intermix did not duplicate its
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`earlier analysis, instead incorporating that analysis by reference. Petition at 38
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`(citing id. at 18-20). Indeed, Intermix’s analysis also relied on several patent
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`references showing that the recited components were known for decades before the
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`’918 Patent. Petition at 38-39 (citing Exs. 1003, 1004). Respectfully, the Board
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`appears to have overlooked this analysis in stating in the Decision that the Petition
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`Page | 14
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`4852-2040-3245.v4
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`
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`is “cursory and conclusory” on this point. Decision at 7-8.
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`3.
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`The Remaining Challenged Claims
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`Likewise, with claims 34, 38, 39, and 45, Intermix identified the only
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`structural elements of the claims, just at it had for claims 15 and 21. Petition at 41,
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`42-43. In each case, the recited structural elements were things such as a
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`“[computerized] game apparatus” and a “network.” Id. The Petition showed that
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`the “structural” recitations of these claims are nearly identical to those Intermix
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`analyzed in detail in Claims 15 and Claim 21, and found not to satisfy Alice step
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`two in Planet Bingo. Id. Thus, Intermix did not repeat the same analysis, but
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`referred back to and incorporated the work it had done for the earlier claims. Id.
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`Intermix did likewise for the remaining independent and dependent claims of the
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`’918 Patent. See generally Petition at 28-80.
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`IV. CONCLUSION
`Intermix respectfully requests that the Board grant rehearing and institute
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`review.
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`
`
`Date: February 19, 2016
`
`Direct: (213) 488-7307
`Main: (213) 488-7100
`Fax: (213) 226-4058
`
`Customer No. 909
`
`
`
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`
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`
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`
`
`By:
`
`Respectfully submitted,
`
`/ Evan Finkel /
`Evan Finkel
`Registration No. 49,059
`Attorney for Petitioner
`Pillsbury Winthrop Shaw Pittman LLP
`725 South Figueroa Street, Suite 2800
`Los Angeles, CA 90017
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`Page | 15
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`4852-2040-3245.v4
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing “PETITIONER’S REQUEST FOR
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`REHEARING PURSUANT TO 37 C.F.R. §42.71(d)” was served this 19th day of
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`February, 2016 via electronic mail in its entirety on the patent owner at:
`
`Barry Bretschneider
`BAKER & HOSTETLER LLP
`bbretschneider@bakerlaw.com
`
`
`John M. Mueller
`BAKER & HOSTETLER LLP
`CBM2015-00154@bakerlaw.com
`
`
`
`Date: February 19, 2016
`
`
`Direct: (213) 488-7307
`Main: (213) 488-7100
`Fax: (213) 226-4058
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`Respectfully submitted,
`
`/ Evan Finkel /
`Evan Finkel
`Registration No. 49,059
`Attorney for Petitioner
`Pillsbury Winthrop Shaw Pittman LLP
`725 South Figueroa Street, Suite 2800
`Los Angeles, CA 90017
`
`Page | 16
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`4852-2040-3245.v4
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