`
`Inventors: Matthew KELLY, et al.
`
`Attorney Docket No. 024004-0000019
`PATENT
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`MAIL STOP:
`Patent Board
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`Patent Trial and Appeal Board
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`Issued Date: October 6, 1998
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`Reexamination Certificate Date: June
`30, 2014
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`Filing Date: November 14, 1996
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`)))
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`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`PURSUANT TO 35 U.S.C. §321, AIA §18, AND 37 C.F.R. §§42.300-42.304
`
`Case No.: Unassigned
`
`Patent No.: 5,816,918 C1
`
`Application No.: 08/746,755
`
`Reexamination Control No.:
`90/006,601
`
`For: PRIZE REDEMPTION SYS-
`TEM FOR GAMES
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`C.
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`Table of Contents
`PRELIMINARY STATEMENT .................................................................. 1
`I.
`II. GROUNDS FOR STANDING – 37 C.F.R. §42.304(a) ............................... 1
`A. At Least One Challenged Claim Is Unpatentable ................................. 1
`B.
`The ‘918 Patent Is a Covered Business Method Patent ........................ 1
`The ‘918 Patent Claims a Method or Apparatus Used in
`1.
`the Practice, Administration, or Management of a Financial
`Product or Service ....................................................................... 2
`The ‘918 Patent Is Not a Technological Invention ..................... 9
`2.
`Petitioner Has Been Sued for Infringement of the ’918 Patent and
`Is Not Estopped from Challenging the ‘918 Patent Claims ................ 12
`The Petition Is Timely Under 37 C.F.R. §42.303 ............................... 13
`D.
`Real Party-in-Interest .......................................................................... 13
`E.
`Related Matters .................................................................................... 14
`F.
`Lead and Back-Up Counsel; Service Information .............................. 14
`G.
`Supporting Evidence ........................................................................... 15
`H.
`III. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED ............................................................................ 15
`A.
`Claims for which Review is Requested .............................................. 15
`B.
`Statutory Grounds of Challenge .......................................................... 15
`C.
`Level of Ordinary Skill in the Art ....................................................... 16
`D.
`Claim Construction ............................................................................. 16
`1.
`“Game Apparatus” .................................................................... 17
`2.
`“Receiving Means for Receiving Monetary Input from Said
`Player” ....................................................................................... 18
`“Means for Providing a Prize Selection Menu on Said
`Display Device” ........................................................................ 19
`“Means for Providing a Specific Prize Goal During Said
`Game of Skill Played on Said Game Apparatus” ..................... 20
`“Means for Selecting a Prize Credit Game for Receiving
`Said Prize Credits Based on Said Game Score” ....................... 21
`“Means for Selecting a Tournament Game” ............................. 22
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`3.
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`4.
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`5.
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`6.
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`i
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`C.
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`IV. THE CHALLENGED CLAIMS ARE UNPATENTABLE ..................... 22
`A.
`The Challenged Claims Are Unpatentable under 35 U.S.C. §101 ...... 23
`B. None of the Independent Challenged Claims Are Directed to
`Patent Eligible Subject Matter ............................................................. 26
`Exemplary Claim – Claim 15 Claims Ineligible Subject
`1.
`Matter ........................................................................................ 26
`a.
`Claim 15 Claims an Abstract Idea .................................. 28
`b.
`Claim 15 Does Not Claim “Significantly More” than the
`Ineligible Concept Itself ................................................. 31
`Claim 1 Claims Ineligible Subject Matter ................................ 34
`2.
`Claim 21 Claims Ineligible Subject Matter .............................. 36
`3.
`Claims 34, 38, and 45 Claim Ineligible Subject Matter ........... 39
`4.
`Claim 39 Claims Ineligible Subject Matter .............................. 41
`5.
`Claim 47 Claims Ineligible Subject Matter .............................. 43
`6.
`Claim 59 Claims Ineligible Subject Matter .............................. 45
`7.
`Claim 73 Claims Ineligible Subject Matter .............................. 47
`8.
`The Dependent Claims Are Also Directed to Patent-Ineligible
`Subject Matter ..................................................................................... 50
`1.
`Claim 2 Claims Ineligible Subject Matter ................................ 50
`2.
`Claim 3 Claims Ineligible Subject Matter ................................ 51
`3.
`Claims 4 and 11 Claim Ineligible Subject Matter .................... 51
`4.
`Claims 5 and 62 Claim Ineligible Subject Matter .................... 53
`5.
`Claim 6 Claims Ineligible Subject Matter ................................ 54
`6.
`Claim 7 Claims Ineligible Subject Matter ................................ 54
`7.
`Claim 8 Claims Ineligible Subject Matter ................................ 55
`8.
`Claim 9 Claims Ineligible Subject Matter ................................ 56
`9.
`Claim 10 Claims Ineligible Subject Matter .............................. 56
`10. Claims 12 and 18 Claim Ineligible Subject Matter .................. 57
`11. Claims 13 and 19 Claim Ineligible Subject Matter .................. 58
`12. Claims 14, 58, and 72 Claim Ineligible Subject Matter ........... 59
`13. Claim 16 Claims Ineligible Subject Matter .............................. 60
`14. Claim 17 Claims Ineligible Subject Matter .............................. 60
`15. Claim 20 Claims Ineligible Subject Matter .............................. 61
`16. Claims 22 and 74 Claims Ineligible Subject Matter ................. 62
`17. Claims 23, 57, 60, and 61 Claim Ineligible Subject Matter ..... 62
`18. Claims 24 and 75 Claim Ineligible Subject Matter .................. 64
`19. Claim 25 Claims Ineligible Subject Matter .............................. 64
`20. Claim 26 Claims Ineligible Subject Matter .............................. 65
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`ii
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`21. Claims 27, 55, 70, and 76 Claim Ineligible Subject Matter ..... 66
`22. Claim 28 Claims Ineligible Subject Matter .............................. 67
`23. Claim 29 Claims Ineligible Subject Matter .............................. 68
`24. Claim 30 Claims Ineligible Subject Matter .............................. 68
`25. Claim 31 Claims Ineligible Subject Matter .............................. 69
`26. Claims 32, 33, and 77 Claim Ineligible Subject Matter ........... 69
`27. Claim 46 Claims Ineligible Subject Matter .............................. 70
`28. Claim 48 Claims Ineligible Subject Matter .............................. 71
`29. Claims 49 and 53 Claim Ineligible Subject Matter .................. 72
`30. Claims 50 and 51 Claim Ineligible Subject Matter .................. 73
`31. Claim 52 Claims Ineligible Subject Matter .............................. 74
`32. Claims 54 and 65 Claim Ineligible Subject Matter .................. 74
`33. Claims 56 and 71 Claim Ineligible Subject Matter .................. 75
`34. Claim 63 Claims Ineligible Subject Matter .............................. 76
`35. Claim 64 Claims Ineligible Subject Matter .............................. 76
`36. Claim 66 Claims Ineligible Subject Matter .............................. 77
`37. Claim 67 Claims Ineligible Subject Matter .............................. 78
`38. Claim 68 Claims Ineligible Subject Matter .............................. 78
`39. Claim 69 Claims Ineligible Subject Matter .............................. 79
`V. CONCLUSION, REQUEST FOR JUDGMENT, AND FEES ................ 80
`
`
`iii
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`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Cases
`Alice Corp. v. CLS Bank International,
`134 S. Ct. 2347 (2014) ................................................................................. passim
`Apple Inc. v. SightSound Techs., LLC,
`CBM2013-00020, Paper 14 (Oct. 8, 2013) ............................................... 6, 7, 8, 9
`Bally Gaming, Inc. v. eUniverse, Inc.,
`Case No. 3:03-cv-0062-LRH-VPC (D. Nev.) ............................................... 13, 14
`Bally Gaming, Inc. v. WorldWinner, Inc.,
`Case No. 3:03-cv-0063-LRH-VPC (D. Nev.) ...................................................... 14
`Bilski v. Kappos,
`130 S. Ct. 3218 (2010) .................................................................................. 23, 24
`Bloomberg Inc. v. Markets-Alert PTY Ltd.,
`CBM2013-00005, Paper 18 (Mar. 29, 2013) ....................................................... 10
`buySAFE, Inc. v. Google, Inc.,
`765 F.3d 1350 (Fed. Cir. 2014) ..................................................................... 25, 34
`Content Extraction v. Wells Fargo Bank,
`776 F.3d 1343 (Fed. Cir. 2014) ............................................................................ 24
`CRS Advanced Technologies v. Frontline Technologies, Inc.,
`CBM2012-00005, Paper 17 (Jan. 23, 2013) ................................................ 6, 7, 10
`CyberSource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) ..................................................................... 29, 52
`Diamond v. Diehr,
`450 U.S. 175 (1981) ...................................................................................... 30, 31
`EnOcean GmbH v. Face Int’l Corp.,
`742 F.3d 955 (Fed. Cir. 2014) .............................................................................. 18
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ........................................................................................ 23, 29
`Mayo Collaborative Svcs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ................................................................................. passim
`OIP Technologies, Inc. v. Amazon.com, Inc.,
`No. 2012-1696, 2015 WL 3622181 (Fed. Cir. June 11, 2015) .................... passim
`Planet Bingo, LLC v. VKGS LLC,
`576 Fed. Appx. 1005 (Fed. Cir. 2014) (unpublished) .......................................... 33
`SAP America, Inc. v. Versata Development Group, Inc.,
`CBM2012-00001, Paper 70 (June 11, 2013) ........................................................ 16
`
`iv
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`
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ................................................................. 24, 25, 34
`Volusion, Inc. v. Versata Software, Inc.,
`CBM2013-00017, Paper (Oct. 24, 2013) ...........................................................8, 9
`Statutes, Codes, and Regulations
`35 U.S.C. §101 ................................................................................................. passim
`35 U.S.C. §112, ¶6 ................................................................................................... 18
`35 U.S.C. §321 ............................................................................................ 13, 15, 81
`35 U.S.C. §324 .............................................................................................. 1, 23, 80
`35 U.S.C. §325 ......................................................................................................... 13
`37 C.F.R. §42.300 .................................................................................................... 16
`37 C.F.R. §42.301 ..................................................................................................2, 9
`37 C.F.R. §42.302 ............................................................................................. 12, 13
`37 C.F.R. §42.303 ................................................................................................ i, 13
`37 C.F.R. §42.8 ................................................................................................. 13, 14
`AIA, §18 .............................................................................................................. 2, 15
`157 CONG. REC. S1364–65 ................................................................................. 7, 11
`157 CONG. REC. S5432 .............................................................................................. 2
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012). ........................................... 10, 12
`
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`
`
`v
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`LIST OF EXHIBITS
`
`Exhibit 1001
`
`U.S. Patent No. 5,816,918 to Kelly, et al.
`
`Exhibit 1002
`
`Ex Parte Reexamination Certificate for U.S. Patent No.
`5,816,918 C1 to Kelly, et al.
`
`Exhibit 1003
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`U.S. Patent No. 2,926,915 to Johns
`
`Exhibit 1004
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`U.S. Patent No. 5,443,259 to Segan, et al.
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`Exhibit 1005
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`U.S. Patent No. 4,813,675 to Greenwood
`
`Exhibit 1006
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`U.S. Patent No. 4,301,503 to Frederiksen
`
`Exhibit 1007
`
`
`
`Bally Gaming, Inc.’s Opposition to Defendant WorldWin-
`ner.com, Inc.’s Motion to Dismiss for Failure to State a Claim
`Pursuant to Fed. R. Civ. P. 12(b)(6) (D. Nev. Case No. 3:03-cv-
`0063-LRH-VPC)
`
`vi
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`I.
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`PRELIMINARY STATEMENT
`
`From a ring toss at a carnival, to poker in a casino, to skee-ball at an arcade,
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`game operators entice players to play their games by offering the opportunity to
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`win a prize. Claims 1-34, 38-39, and 45-77 (the “Challenged Claims”) of U.S. Pa-
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`tent No. 5,816,918 C1 (the “‘918 Patent,” Ex. 1001) are directed to this simple, ab-
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`stract concept that is the basis of centuries of gaming. The Challenged Claims lack
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`recitation of anything more than generic computing and gaming apparatuses.
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`Claiming only an abstract idea without anything more to transform the nature of
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`the claim, the Challenged Claims are unpatentable under 35 U.S.C. §101.
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`Although the ‘918 Patent is the subject of district court litigation and was al-
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`ready subject to reexamination, the issues presented herein have not been decided
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`in either proceeding. Petitioner presents a single proposed basis involving only is-
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`sues of law in an effort to expedite these proceedings.
`
`II. GROUNDS FOR STANDING – 37 C.F.R. §42.304(a)
`A. At Least One Challenged Claim Is Unpatentable
`The Challenged Claims of the ‘918 Patent are unpatentable under 35 U.S.C.
`
`§101. The instant petition therefore should be granted and trial instituted because it
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`is “more likely than not that at least one of the claims [of the ’918 Patent] chal-
`
`lenged in the petition is unpatentable.” 35 U.S.C. §324(a).
`
`The ‘918 Patent Is a Covered Business Method Patent
`
`B.
`The ‘918 Patent qualifies as a “covered business method” (“CBM”) patent.
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`
`1
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`
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`The AIA defines covered business method patents as:
`
`(1) IN GENERAL.—For purposes of this section, the term ‘‘covered
`business method patent’’ means a patent that claims a method or cor-
`responding apparatus for performing data processing or other opera-
`tions used in the practice, administration, or management of a finan-
`cial product or service, except that the term does not include patents
`for technological inventions.
`
`AIA, §18(d)(1) (emphasis added). The PTAB has construed this definition broadly.
`
`The legislative history of the AIA supports such a broad interpretation:
`
`The plain meaning of ‘‘financial product or service’’ demonstrates
`that section 18 is not limited to the financial services industry. At its
`most basic, a financial product is an agreement between two parties
`stipulating movements of money or other consideration now or in the
`future.
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`157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer).
`
`The AIA, its legislative history, and 37 C.F.R. §42.301(a) broadly define a
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`“covered business method patent” as a patent that (1) claims a method or apparatus
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`for performing data processing used in the practice, administration, or management
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`of a financial product or service; and (2) is not a technological invention.
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`1.
`
`The ‘918 Patent Claims a Method or Apparatus Used in the
`Practice, Administration, or Management of a Financial
`Product or Service
`
`The ‘918 Patent relates to a prize redemption system for games that includes
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`a method of redeeming a prize, including a cash prize, based upon a user selection
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`2
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`
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`of the prize. The claims are all directed to a method or apparatus for distributing
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`prizes for playing games in exchange for monetary input from the player(s). In
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`many cases, the claims go beyond merely reciting the need for monetary income
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`from players, requiring further financial aspects, such as determining costs for
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`prizes, evaluating profitability of the game, and providing cash prizes.
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`For example, independent claim 1 recites a method for redeeming prizes (the
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`prizes having a prize cost) that includes receiving monetary income from players in
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`exchange for use of the game, and determining a prize cost based on a desired
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`profitability for the game:
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`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 includ-
`ing 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
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`determining on said game apparatus a prize cost to be associat-
`ed 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
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`3
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`
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`may select one of said prizes by exchanging a number of prize credits
`equal to said prize cost of said selected prize.
`
`Ex. 1001 at 43:33-52 (emphasis added). Independent claims 15, 21, 47, 59, and 73
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`likewise recite receiving monetary income/input from players (id. at 45:3-5, 45:63-
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`65, 48:10-12, 49:26-28, 50:60-62) and providing prizes with a prize cost (id. at
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`45:11-15, 46:5-11, 48:27-38, 49:25-26, 50:53-55). Independent claims 34, 38, 39,
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`and 45 each recite receiving monetary input from a player (Ex. 1002 at 1:28-30, 1:
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`49-51, 2:15-17, 2:36-38), allocating or contributing a portion of the monetary input
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`towards a prize (id. at 1:31-33, 1:52-54, 2:18-19, 2:39-41), and providing the prize
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`to one or more players (id. at 1:42-44, 2:4-6, 2:26-27, 2:50-52). Claim 39 also re-
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`cites that the prize is cash (id. at 2:28).
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`The ‘918 Patent discloses that the invention described therein includes a
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`“monetary input device” that allows users to contribute money to play games in
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`various forms, including cash, debit and credit cards, electronic money, and direct
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`transfers from bank accounts. For example, the ‘918 Patent specification states:
`
`Monetary input device 14 is used to receive monetary input that is
`inserted by a player into the game apparatus in the gaming envi-
`ronment. For example, coins can be received in return for the player's
`use of the game apparatus. A coin deposit slot can accept standard
`currency coins, bills, or game tokens that may be available in the
`gaming environment, and also typically includes a coin return button
`and coin return slot. … Alternatively, other monetary input devices
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`
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`4
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`
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`can be used, such as debit card or credit card readers well known
`to those skilled in the art, or “smart card” readers which can read
`and write electronic information to and from the card. For exam-
`ple, “E-cash”, “cybercash” or other electronic monetary forms
`can be used. In other embodiments, user verification or validation
`can be input by the player, such as a player identification and/or
`password that, for example, allows a monetary value to be billed
`to a player or deducted from a player's monetary account at a
`bank or other institution. …
`
`Ex. 1001 at 6:34-59 (emphasis added). Other portions of the ‘918 Patent disclosing
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`the invention as being directed to activities that are financial in nature, incidental to
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`a financial activity, or complementary to a financial activity are:
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` “A game is provided on a game apparatus for a player to play in exchange
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`for monetary input….” Id. at Abstract;
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` “The operator can provide cost and prize data and a desired level of profita-
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`bility…” Id. at 3:1-3;
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` “Game output devices 18 can also include a coin return slot for returning
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`coins … or providing other cash prizes after a game is played.” Id. at 8:7-9;
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` “The tournament prize can be cash….” Id. at 18:27;
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` “[A] player may be remotely awarded the tournament prize from a prize dis-
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`tributor, e.g., … a player's bank account can be credited, etc.” Id. at 18:34-
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`37; and
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`5
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` “[T]he tournament prize can be in a form of currency, such as prize credits,
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`vouchers, or cash that are exchangeable for other prizes.” Id. 29:25-28.
`
`The PTAB has consistently found that patents like the ‘918 Patent qualify as
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`reviewable under the Covered Business Method Review transitional program, be-
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`cause they claimed a method or apparatus used in the practice, administration, or
`
`management of a financial product or service. PTAB precedent states that “‘finan-
`
`cial product or service’ should be interpreted broadly.” Apple Inc. v. SightSound
`
`Techs., LLC, CBM2013-00020, Paper 14 at 11 (Oct. 8, 2013). For example, in CRS
`
`Advanced Technologies v. Frontline Technologies, Inc., CBM2012-00005, the
`
`PTAB found a patent that recited a method of performing substitute fulfillment for
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`a plurality of organizations, including a number of different organizations such as
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`banks (e.g., substitute bank tellers), to be a covered business method patent:
`
`[I]n considering public comments during the rulemaking process, the
`Office stated that the legislative history supported the notion that the
`definition of covered business method patents be broadly interpreted
`to encompass patents claiming activities that are financial in nature,
`incidental to a financial activity, or complementary to a financial ac-
`tivity. 77 Fed. Reg. 157 (August 14, 2012) 48734, 48735. The Office
`also stated that it did not adopt the suggestion that the term financial
`product or service be limited to the products or services of the finan-
`cial services industry as it ran contrary to the intent behind §18(d)(1).
`Id. at 48736. Nothing in the statute, its legislative history, or the rules
`requires that a covered business method patent include claim elements
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`
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`6
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`
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`that map directly to financial products or services as Patent Owner
`seems to suggest.
`
`CRS Advanced Technologies v. Frontline Technologies, Inc., CBM2012-00005,
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`Decision to Institute, Paper 17 (Jan. 23, 2013), at 7-8. The legislative history con-
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`firms this broad interpretation, indicating that CBM review is applicable to patents
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`covering “any ancillary activities related to a financial product or service, includ-
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`ing . . . marketing, customer interfaces, Web site management and functionality,
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`transmission or management of data, servicing, underwriting, customer communi-
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`cations, and back office operations-e.g., payment processing, stock clearing.” 157
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`CONG. REC. S1364–65.
`
`In a subsequent decision, the PTAB found a patent with a claim reciting
`
`methods of transmitting digital audio signals to be a covered business method pa-
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`tent. Apple, Inc. v. Sightsound Technologies, LLC, CBM2013-00019, Decision to
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`Institute, Paper 17 (Oct. 8, 2013). The claims at issue in that proceeding recited
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`transferring money electronically via a telecommunication line. The PTAB held
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`that a patent need have only one claim directed to a covered business method to be
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`eligible for review, and that the legislative history indicates that “financial product
`
`or service” should be interpreted broadly. Relying on the legislative history ex-
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`cerpted above, the PTAB held that, although claim 1 “does not relate to a financial
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`services business, it does recite the electronic movement of money between finan-
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`
`
`7
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`
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`cially distinct entities, which is an activity that is financial in nature.” Id. at 12.
`
`The PTAB has also found claims reciting methods of representing a plurality
`
`of items in a database hierarchically (and a hierarchy for representing a plurality of
`
`items) to be a covered business method, even though the claims did not recite any
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`transfer of money, or otherwise did not relate to a financial product or service.
`
`Volusion, Inc. v. Versata Software, Inc., CBM2013-00017, Decision to Institute,
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`Paper 8 (Oct. 24, 2013). The PTAB reasoned that the specification described the
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`invention as having application in the field of e-commerce, in the form of e-
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`catalogs used by potential buyers. In addition, the patent specification stated that
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`“[m]any embodiments of the present invention have application to a wide range of
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`industries” including “financial services.” Id. at 5. The PTAB held that this was
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`sufficient to qualify the patent for covered business method review: “[W]e are per-
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`suaded that at least one claim covers data processing or other operations used in
`
`the practice, administration, or management of a financial service.” Id. at 6.
`
`The PTAB therefore has taken an expansive approach in assessing whether a
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`patent qualifies as a covered business method patent. The ‘918 Patent clearly quali-
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`fies in this regard because it is useful in determining and modifying the profitabil-
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`ity of gaming apparatuses and methods, it claims methods and apparatuses that ac-
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`cept transfers of money (electronically and in other forms) from users, and it
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`claims methods and apparatuses that pay out prizes in the form of money (electron-
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`
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`8
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`
`
`
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`ically and otherwise) to players for their participation in games. Ex. 1001; see Ap-
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`ple, Inc. v. Sightsound Technologies, LLC, CBM2013-00019, Decision to Institute,
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`Paper 17 (Oct. 8, 2013), at 12; Volusion, Inc. v. Versata Software, Inc., CBM2013-
`
`00017, Decision to Institute, Paper (Oct. 24, 2013) at 6. Accordingly, the ‘918 Pa-
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`tent includes at least one claim to a method or apparatus used in the practice, ad-
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`ministration, or management of a financial product or service.
`
`The ‘918 Patent Is Not a Technological Invention
`
`2.
`The definition of “covered business method patent” in Section 18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” To determine
`
`whether a patent is for a technological invention, the PTAB considers “whether the
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`claimed subject matter as a whole recites a technological feature that is novel and
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`unobvious over the prior art; and solves a technical problem using a technical solu-
`
`tion.” 37 C.F.R. §42.301(b). The following claim drafting techniques, for example,
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`typically do not render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as computer hard-
`ware, communication or computer networks, software, memory, com-
`puter-readable storage medium, scanners, display devices or data-
`bases, or specialized machines, such as an ATM or point of sale de-
`vice.
`(b) Reciting the use of known prior art technology to accomplish a
`process or method, even if that process or method is novel and non-
`obvious.
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`9
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`(c) Combining prior art structures to achieve the normal, expected, or
`predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48763-64 (Aug. 14, 2012).
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`The ‘918 Patent claims do not recite any technological feature that is novel
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`and unobvious over the prior art, or that solves a technical problem using a tech-
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`nical solution. Although a generic computer device, server, and network are recited
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`in some claims, there is nothing unique about that technology per se. To be a
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`“technological invention,” a claim must recite elements that are novel and not well-
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`known components. See Bloomberg Inc. v. Markets-Alert PTY Ltd., CBM2013-
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`00005, Paper 18 at 6-7 (Mar. 29, 2013); CRS Advanced Technologies v. Frontline
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`Technologies, Inc., CBM2012-00005, Decision to Institute, Paper 17 (Jan. 23,
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`2013), at 9 (requiring more than generic hardware). The ‘918 Patent claims can be
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`carried out using conventional software and hardware components. No special
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`technical solution is required.
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`By way of example, the ‘918 Patent specification discusses a game appa-
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`ratus, but quickly qualifies that the game apparatus is “generic:”
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`FIG. 1 is a block diagram of a generic game apparatus or “game
`unit” 10 suitable for use with the prize redemption system of the pre-
`sent invention. It should be noted that a variety of game architec-
`tures can be used to provide game play functions as well as access
`other game units and servers through networks, as described be-
`low. The particular architecture shown is a generic architecture us-
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`
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`10
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`
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`ing components typical to game apparatuses suitable for use with
`the present invention. Game unit 10 can take a variety of forms, in-
`cluding a video game apparatus having one or more display screens, a
`mechanical game having playing pieces and/or other moving mechan-
`ical parts, a personal computer system, a “network computer”, a tele-
`vision including or connected to a microprocessor (e.g. a “set top
`box”) for Internet or other information access, or other apparatus.
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`Ex. 1001 at 5:49-63 (emphasis added). The ‘918 Patent does not describe any spe-
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`cific hardware or software needed to carry out the invention beyond such generic
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`elements as a microprocessor, display, and network. The ‘918 patent is not one of
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`“those patents whose novelty turns on a technological innovation . . . and are con-
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`cerned with a technical problem which is solved with a technical solution and
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`which requires the claims to state the technical features which the inventor desires
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`to protect,” and thus is eligible for CBM review. 157 CONG. REC. S1364.
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`Certainly, there is no “technological invention” in the context of the covered
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`business method patent definition in automating game prize distribution using un-
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`specified general computer network components. Specifically, there is no “tech-
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`nical problem” because the claims of the ‘918 Patent merely automate the previ-
`
`ously-manual process of calculating prize costs and profitability and distributing
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`prizes accordingly. See, e.g., Ex. 1001 at claim 1. The fact that doing such calcula-
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`tions was administratively difficult (but not technically difficult) does not trans-
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`form an otherwise non-technical problem into a technical one.
`
`
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`11
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`
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`Likewise, there is no “technical solution.” The physical features recited in
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`the ‘918 Patent claims are limited to things such as (1) an admittedly “generic”
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`game apparatus that was admittedly well-known to those in the art (id. at 5:49-63);
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`(2) generic computer servers and networks, which were well-known to those of or-
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`dinary skill in the art before the filing of the ‘918 Patent and which the USPTO has
`
`already indicated are insufficient to find a “technical solution (see Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. at 48763-64 (an invention is not a “technologi-
`
`cal invention” simply due to the “[m]ere recitation of known technologies, such as
`
`computer hardware, communication or computer networks.”)); (3) well-known ge-
`
`neric computer or equipment components, like a “coin slot,” “processor,” or “ticket
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`dispenser,” all of which were well known in various contexts well before the prior-
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`ity date of the ‘918 Patent. See, e.g., U.S. Patent Nos. 2,926,915 (Ex. 3) &
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`5,443,259 (Ex. 4), discussed in Section IV.B.3, below.
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`Consistent with the recent PTAB decisions, the ‘918 Patent claims are not
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`for a technological invention. Thus, all of the ‘918 Patent claims are available for
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`review under the Covered Business Method review transitional program.
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`C.
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`Petitioner Has Been Sued for Infringement of the ’918 Patent and
`Is Not Estopped from Challenging the ‘918 Patent Claims
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`Petitioner must also satisfy 37 C.F.R. §42.302, which requires the Petitioner:
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`(a) to have either been sued or charged with infringement; and (b) to not be es-
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`topped from challenging the claims. Petitioner has been sued for infringement of
`
`
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`12
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`
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`the ‘918 Patent. The ‘918 Patent was asserted against Petitioner by Bally Gaming,
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`Inc. in Bally Gaming, Inc. v. eUniverse, Inc., Case No. 3:03-cv-0062-LRH-VPC
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`(D. Nev.). Petitioner is not estopped from challenging the ‘918 Patent claims under
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`35 U.S.C. §325. Petitioner satisfies the re