Case 3:03-cv-00063-LRH-VPC Document 51 Filed 06/15/15 Page 1 of 29
`
`
`Kevin W. Kirsch (pro hac vice)
`kkirsch@bakerlaw.com
`BAKER & HOSTETLER LLP
`312 Walnut Street, Suite 3200
`Cincinnati, OH 45202-4074
`Telephone:
`(513) 929-3499
`Facsimile:
`(513) 929-0303
`
`Jared A. Brandyberry (pro hac vice)
`jbrandyberry@bakerlaw.com
`BAKER & HOSTETLER LLP
`1801 California Street, Suite 4400
`Denver, CO 80212-2662
`Telephone:
`(303) 764-4072
`Facsimile:
`(303) 861-7805
`
`James J. Pisanelli, Bar No. 4027
`JJP@pisanellibice.com
`Christopher R. Miltenberger, Bar No. 10153
`CRM@pisanellibice.com
`PISANELLI BICE PLLC
`400 South 7th Street, Suite 300
`Las Vegas, Nevada 89101
`Telephone: (702) 214-2100
`Facsimile: (702) 214-2101
`
`Attorneys for Bally Gaming, Inc.
`UNITED STATES DISTRICT COURT
`
`
`BALLY GAMING, INC.,
`
`
`Plaintiff,
`
`
`v.
`
`
`EUNIVERSE, INC.,
`
`
`Defendant.
`
`
`BALLY GAMING, INC. ,
`
`Plaintiff,
`
`v.
`
`WORLDWINNER.COM., INC.,
`
` Defendant.
`
`
`
`
`
`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`
`
`
`
`DISTRICT OF NEVADA
`
`Lead Case No. 3:03-cv-0062-LRH-VPC
`
`Relevant to Case No. 3:03-cv-0063-LRH-VPC
`
`Judge Larry R. Hicks
`
`Magistrate Judge Valerie P. Cooke
`
`PLAINTIFF BALLY GAMING, INC.’S
`OPPOSITION TO DEFENDANT
`WORLDWINNER.COM, INC.’S MOTION
`TO DISMISS FOR FAILURE TO STATE A
`CLAIM PURSUANT TO FED. R. CIV. P. 12
`(b)(6)
`
`
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
`
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`COSTA MESA
`
`ATTORNEYS AT LAW
`
`BAKER & HOSTETLER LLP
`
`Intermix Media LLC Ex. 1007
`Intermix Media LLC v. RLT Acquisition, Inc.
`Case CBM2015-00154
`
`Page 1 of 78
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`

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`Case 3:03-cv-00063-LRH-VPC Document 51 Filed 06/15/15 Page 2 of 29
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`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ................................................................................................. 1
`
`STATEMENT OF FACTS ................................................................................... 4
`
`III.
`
`LEGAL STANDARDS ......................................................................................... 4
`
`IV.
`
`
`LEGAL SUPPORT ............................................................................................... 8
`
`a. Worldwinner Must Demonstrate by Clear and Convincing
`Evidence that the Patent-in-Suit Claims Unpatentable
`Subject Matter under 35 U.S.C. § 101 ................................................................. 8
`
`b. All Inferences Must Be Drawn In Favor of the Non-Moving
`Party on a Motion to Dismiss Subject Matter under 35 U.S.C. § 101 .............. 9
`
`c. Defendant’s Motion is Premature and Should be Denied
`because Claim Construction is Necessary to Adequately
`Evaluate Whether the Patent-In-Suit Claims Patentable
`Subject Matter under 35 U.S.C. § 101 ............................................................... 10
`
`d. 35 U.S.C. § 101 ..................................................................................................... 11
`
`i. Defendant’s Congress and the Courts Have Not
`Ruled that Business Methods and Software are
`Unpatentable Subject Matter under 35 U.S.C. § 101 .............. 13
`ARGUMENT ....................................................................................................... 14
`
`a. Alice Step One: The Claims of the ’918 Patent Are Not Directed
`To an Abstract Idea of Profitable Awarding Prizes to Game Players ........... 14
`i. Worldwinner Fails to Properly Apply the Alice Test .............. 14
`
`ii. Worldwinner Conflates Novelty with Patent Eligibility .......... 17
`
`iii. Worldwinner’s Arguments Rely on Unsupported
`Rhetoric ........................................................................................ 18
`
`iv. The ’918 Patent Is Not Directed to Abstract Ideas .................. 18
`b. Alice Step Two: The ’918 Patent Provides an Inventive Concept
`To Transform an Abstract Idea Into A Patent-Eligible Invention ................. 20
`
`CONCLUSION .................................................................................................... 22
`
`
`
`V.
`
`
`
`
`
`
`
`V.
`
`
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`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`- ii -
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
`
`
`
`Page 2 of 78
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`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`Cases
`
`AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Trust,
`
`764 F.3d 1366 (Fed. Cir. 2014) ................................................................................................. 9
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`
`728 F.3d 1336 (Fed. Cir. 2013) ............................................................................................... 10
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S.Ct. 2347 (June 19, 2014) ........................................................................................ passim
`
`
`Ameranth Inc. v. Genesis Gaming Solutions, Inc.,
`
`2014 WL 7012391 (C.D. Cal. November 12, 2014) ................................................................. 8
`
`Ameritox, Ltd. v. Millenium Health, LLC,
`
`2015 WL 728501 (W.D.Wis., February 19, 2015) ................................................................. 15
`
`Arrhythmia Research Technology v. Corazonix Corp.,
`
`958 F. 2d 1053 (Fed. Cir. 1992) ................................................................................................ 9
`
`Association for Molecular Pathology v. Myriad Genetics, Inc.,
`
`133 S. Ct. 2107 (2013) ............................................................................................................ 12
`
`Bancorp Servs., L.L.C. v. Sun Life Assurance Co.,
`
`687 F.3d 1266 (Fed. Cir. 2012) ............................................................................................... 10
`
`Bascom Research, LLC v. LinkedIn, Inc.,
`
`2015 WL 149480 (N.D. Cal. Jan. 5, 2015)) .......................................................................... 8, 9
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................. 9
`
`
`Bilski, v. Kappos,
`
`561 U.S. 593, 130 S. Ct. 3218 (2010) ...................................................................... 3, 11-14, 21
`
`California Institute of Technology v. Hughes Communications,
`
`2014 WL 5661290 (C.D.Cal., Nov. 3, 2014) .......................................................................... 14
`
`Certified Measurement, LLC v.. Centerpint Energy Houston Electric LLC,
`
`2015 WL 1432324 (E.D. Tex. March 19, 2015) ............................................................... 10, 11
`
`CLS Bank v. Alice Corp.,
`
`717 F.3d 1269 (Fed. Cir. 2013) ......................................................................................... 13, 17
`
`
`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`- iii -
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
`
`
`
`Page 3 of 78
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`

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`CMG Fin. Servs., Inc. v. Pac. Trust Bank, F.S.B.,
`
`50 F.Supp.3d 1306 (C.D. Cal. Aug. 9, 2014) ............................................................................ 8
`
`Data Distrib. Techs., LLC v. Brer Affiliates, Inc.,
`
`2014 WL 4162765 (D.N.J. Aug. 19, 2014) ............................................................................. 11
`
`DDR Holdings, LLC v. Hotels. Com, LP,
`
`773 F. 3d 1245 (Fed. Cir. 2014) ............................................................................................. 22
`
`Diamond v. Chakrabarty,
`
`47 U.S. 303 (1980). ............................................................................................................... 11
`
`Diamond v. Diehr,
`450 U.S. 175 (1980) ......................................................................................................... passim
`
`
`Email Link Corp. v. Treasure Island, LLC,
`
`2012 WL 4482576 (D. Nev. September 25, 2012) ................................................................... 9
`
`Funk Bros. Seed Co. v. Kalo Co.,
`
`333 US 127 (1948) .................................................................................................................. 12
`Helios Software, LLC v. SpectorSoft Corp.,
`
`2014 WL 4796111 (D. Del. Sept. 25, 2014) ........................................................................... 22
`
`In re Bilski,
`
`545 F.3d 943 (Fed. Cir. 2008). ................................................................................................ 12
`
`In re Stac Elecs. Sec. Litig.,
`
`89 F.3d 1399 (9th Cir. 1996). .............................................................................................. 9, 10
`
`Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
`
`132 S. Ct. 1289 (2012) ................................................................................................... 3, 11-14
`
`Messaging Gateway Solutions, LLC v. Amdocs, Inc.,
`
`2015 WL 1744343 (D.Del., April 15, 2015)) .................................................................... 14-15
`
`Microsoft Corp. v. i4i LP,
`131 S. Ct. 2238 (2011) .......................................................................................................... 2, 8
`
`
`Nazomi Communications, Inc. v. Samsung Telecommunications, Inc.,
`
`2012 WL 967968 (N.D. Cal., July 5, 2012) ........................................................................... 15
`
`NL Indus., Inc. v. Kaplan,
`
`792 F.2d 896 (9th Cir.1986). ..................................................................................................... 9
`
`Rockwell Automation, Inc. v. Beckhoff Automation,
`
`23 F. Supp. 3d 1236 (D. Nev. May 30, 2014) ......................................................................... 10
`
`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`- iv -
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
`
`
`
`Page 4 of 78
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`Case 3:03-cv-00063-LRH-VPC Document 51 Filed 06/15/15 Page 5 of 29
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`
`Shelcore, Inc. v. Durham Indus., Inc.,
`
`745 F.2d 621 (Fed.Cir.1984) ................................................................................................... 16
`
`Smartflash LLC v. Apple Inc.,
`2015 WL 661174 (E.D. Tex., Feb. 13, 2015). ....................................................................... 15
`
`
`StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc.,
`
`2015 WL 518852 (M.D.Fla., February 9, 2015) ..................................................................... 16
`
`Tuxis Techs., LLC v. Amazon.com, Inc.,
`
`2014 WL 4382446 (D. Del. Sept. 3, 2014) ............................................................................... 8
`
`Ultramercial, Inc. v. Hulu, LLC,
`
`722 F.3d 1335 (Fed. Cir. 2013) ........................................................................................... 8, 10
`
`WildTangent, Inc. v. Ultramercial, LLC,
`
`134 S. Ct. 2870 (2014) ........................................................................................................ 8, 10
`
`Wolf v. Capstone Photography, Inc.,
`
`2014 WL 7639820 (C.D. Cal. October 28, 2014) ..................................................................... 8
`
`Statutes
`
`35 U.S.C. § 101 ...................................................................................................................... passim
`
`35 U.S.C. § 102 ....................................................................................................................... 13, 17
`
`35 U.S.C. § 103 ............................................................................................................................. 13
`
`35 U.S.C. § 282 ........................................................................................................................... 2, 8
`
`Rules
`
`Federal Rule of Civil Procedure 12(b)(6) ....................................................................... 1, 9, 10, 17
`
`Other Authorities
`
`U.S. Patent No 5,816,918 ....................................................................................................... passim
`Leahy–Smith America Invents Act,
`
`112 P.L. 29, § 14, 125 Stat. 284, 327–28 (2011) .................................................................... 14
`Mark J. Patterson & M. Andrew Pitchford, First to File,
`
`47 Tenn. B.J. 14, 16 (November 2011) ................................................................................... 14
`
`
`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`- v -
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
`
`
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`Page 5 of 78
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`

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`Case 3:03-cv-00063-LRH-VPC Document 51 Filed 06/15/15 Page 6 of 29
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`
`
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`In opposition to Defendant Worldwinner.com, Inc.’s (“Worldwinner”) motion to dismiss
`
`(the “Worldwinner Mot.”) for failure to state a claim pursuant to Fed. R. Civ. P. 12(b)(6) (Dkt.
`
`No. 50), Plaintiff Bally Gaming, Inc. (“Bally Gaming”) provides the following points and
`
`authorities in response in support of finding U.S. Patent No 5,816,918 (“the ’918 Patent”) valid
`
`under 35 U.S.C. § 101.
`
`POINTS AND AUTHORITIES IN RESPONSE
`
`II.
`
`INTRODUCTION
`
`
`
`The claims of the ‘918 patent stand apart from those patent claims invalidated as ineligible
`
`under Alice and its progeny of cases because the claims of the ’918 patent do not merely recite the
`
`performance of some business practice known from the pre-computer gaming world along with
`
`the requirement that such practice be performed on a computer. The claims of the ’918 patent
`
`introduce a new method that did not exist in any form prior to the invention. As summarized in
`
`the SUMMARY section of the ’918 patent, the invention generally pertains to “a prize
`
`redemption system and method for use with one or more game apparatuses. Players may win
`
`‘prize credits’ by playing the game apparatus, and then may select a prize from a prize menu
`offered on the game apparatus.” ’918 patent at 2:62-65.1 In some claimed embodiments, the
`invention generally provides 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.
`
`This invention thus solves a problem identified by the inventors that was unsolved prior to
`
`the introduction of computers to the gaming industry; namely, “[t]he operator knows the costs of
`prizes that he or she paid, and can thus estimate ticket costs with a rough profitability in mind,
`
`but the task can become overwhelming when a large variety of prizes are offered and many
`
`different types of games can be played, each game having a different ticket payout and difficulty
`level. Many arcade operators end up simply providing very gross estimates of what prizes should
`be worth in tickets, with no exact or global level of profitability in mind. This may lead to extra
`
`
`1 Attached as Exhibit 1. The reexamination certificate at the end of the ’918 patent issued on June 30, 2014 after the
`Supreme Court’s decision in Alice.
`Lead Case No. 3:03-cv-0063-LRH-RAM
`
`- 1 -
`
`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
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`or unknown costs which can be magnified over time when large numbers of prizes are redeemed
`
`by players.” Id. at 1:54-2:4 (emphasis added).
`The invention of the ‘918 patent allows gaming operators to accurately attribute gaming
`
`
`
`prize costs (in terms of gaming prize credits) where “said prize cost is determined in accordance
`
`with said desired amount of payout and is stored in said storage medium” as claimed, for
`
`example, in claim 15; and, further, where “said desired payout value … is a percentage of all
`
`monetary input received by said game apparatus that said operator desires to give back to said
`
`players in terms of prizes” as claimed, for example, in claim 24. Id. at 45:12-15 and 46:23-27.
`
`Such novel solutions to the long-standing problems were not only examined and found patentable
`
`by the USPTO once; but were re-confirmed by the USPTO in a subsequent reexamination.
`
`
`
`These ’918 patent claims, twice confirmed by the USPTO as valid, comprise patent
`
`eligible subject matter. The claims of the ’918 patent are sufficiently limited to a game apparatus
`
`and transform inputs to the game apparatus based on mathematical formula in a process similar to
`
`an invention the Supreme Court found patent eligible subject matter under 35 U.S.C. § 101 in
`
`Diamond v. Diehr, 450 U.S. 175 (1980). The Supreme Court’s recent decision in Alice Corp. Pty.
`
`Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (June 19, 2014) clarified the test for evaluating
`
`patentability under 35 U.S.C. § 101 and affirmed the precedent set forth in Diehr.
`
`Worldwinner’s conclusory arguments, lacking any substantive support at all—e.g., that
`
`the claim elements of the ’918 patent are all “well known” or “long practiced” in the casino
`
`gaming industry—fail to demonstrate by clear and convincing evidence that the ’918 patent is
`
`invalid under 35 U.S.C. § 101. In fact, Worldwinner completely disregards the presumption of
`
`validity given to the ’918 patent under 35 U.S.C. § 282 and that this presumption can only be
`
`overcome by clear and convincing evidence. Microsoft Corp. v. i4i LP, 131 S. Ct. 2238, 2242
`
`(2011). Instead of attempting to analyze the patentability of the ’918 patent on a claim by claim
`
`basis to meet the elevated burden, the Worldwinner Mot. relies on unsupported rhetoric and bare
`
`attorney argument. Therefore, this Court should deny Worldwinner’s motion.
`
`Worldwinner’s over-the-top claim that the ’918 patent is a product of a bygone era when
`
`the United States Patent and Trademark Office (“USPTO”) neglected its duty and issued
`Lead Case No. 3:03-cv-0063-LRH-RAM
`BALLY GAMING’S OPPOSITION TO
`- 2 -
`WORLDWINNER’S MOTION TO DISMISS
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`Page 7 of 78
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`thousands of patents claiming unpatentable subject matter under 35 U.S.C. § 101 is a baseless
`
`allegation. This is simply yet another unsupported attorney argument by Worldwinner—typical
`
`of Worldwinner’s entire motion as it is conclusory statement lacking factual or legal support.
`
`Worldwinner fails to account for the statistical evidence that shows the USPTO granted more
`
`patents in the same classification as the ’918 patent in recent years after the Supreme Court
`
`decisions in Bilski, Mayo, and Alice. The ’918 patent originally issued in 1998 along with 324
`other patents in class 463.2 In 2012 the USPTO granted 1999 patents in class 463. In 2013 that
`number rose to 2125 patent and in 2014 the count again rose to 2214 patents. Clearly, the
`
`USPTO disagrees that the Supreme Court’s decisions have nullified the patentability of
`
`inventions in the same field as the ’918 patent.
`
`
`
`Worldwinner’s motion is further defective as premature because claim construction is
`
`necessary to determine the patentability of the claims of the ’918 patent under 35 U.S.C. § 101.
`
`Worldwinner has failed to propose any constructions for the claim elements in the ’918 patent and
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`the construction of the claims certainly impacts the Court’s analysis of whether the claims are
`
`directed to patent eligible subject matter. Because of this deficiency the Court should deny
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`Worldwinner’s motion.
`
`
`
`Finally, the arguments put forth by Worldwinner constitute an overbroad reading of the
`
`recent Supreme Court cases concerning 35 U.S.C. § 101 that would potentially shake the gaming
`
`industry to its core by shifting the foundation upon which many of the industries companies have
`
`built their business—their patent portfolios. The District of Nevada has not yet ruled on the
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`validity of a patent under 35 U.S.C. § 101 under the standard clarified by the Supreme Court in
`
`Alice. Therefore, a ruling on the ’918 patent will potentially impact gaming patent portfolios
`
`across the state. As with any technological industry, patents have played a crucial role in the
`
`growth of the in-casino and online gaming industry. Worldwinner should have to introduce more
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`than bare conclusory, premature attorney arguments when seeking to invalidate gaming patent
`
`
`2 Underlying data can be viewed at http://www.uspto.gov/web/offices/ac/ido/oeip/taf/cbcby.htm.
`The ’918 patent was classified under class 463 titled “Amusement Devices: Games.”
`Lead Case No. 3:03-cv-0063-LRH-RAM
`BALLY GAMING’S OPPOSITION TO
`- 3 -
`WORLDWINNER’S MOTION TO DISMISS
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`claims which have been confirmed as valid by the United States Patent & Trademark Office on
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`two separate occasions.
`III.
`
`
`STATEMENT OF FACTS
`
`The ’918 patent was examined for patentability not only when it was initially granted on
`
`October 6, 1998, but it was subjected to reexamination for over 10 years after institution of this
`
`district court action. Both times the USPTO found the claims of the ’918 patent to be valid under
`
`the Patent Act.
`
`
`
`The invention disclosed in the ’918 patent solved a problem in the gaming industry
`
`involving the complex probabilities related to payouts for tournament games.
`
`Requiring even greater maintenance is the setting and adjustment of ticket costs or
`prices of the prizes. The operator must determine how many tickets are paid, on
`average, by each game in the arcade and then determine the price of each prize in
`terms of tickets and in view of a desired profitability level. The operator knows the
`cost of the prizes that he or she paid, can come up with a crude estimate of average
`ticket payouts to players, and can thus estimate ticket costs with a rough
`profitability in mind, but the task can become overwhelming when a large variety
`of prizes are offered and many different types of games can be played, each game
`having a different ticket payout and difficulty level. Many arcade operators end up
`simply providing very gross estimates of what prizes should be worth in tickets,
`with no exact or global level of profitability in mind. This may lead to extra or
`unknown costs which can be magnified over time when large numbers of prizes
`are redeemed by players.
`’918 patent at 1:54-2:4.3 This problem was also applicable for tournaments designed for players
`participating at home over a computer network, such as The Internet.
`
`However, although a wide array of options are available for home game players,
`players typically cannot play games from home to receive prizes. Players may
`often desire to receive a prize after playing a game or participating in a
`tournament, but no standardized prize redemption system is provided to home
`players. Any administrator of such a prize redemption system faces the same
`problems and overhead as described above when attempting to organize ticket
`winnings and offer prizes at ticket costs adjusted for a desired profitability.”
`’918 patent at 2:50-59. The solution claimed in the ’918 patent brought certainty for tournament
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`operators by allowing the operators to accurately determine tournament payouts.
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`“The operator can provide cost and prize data and a desired level of profitability,
`and prize credit costs for prizes are automatically determined. These improvements
`greatly reduce the time and costs of maintaining a redemption system for games,
`
`
`3 Attached as Exhibit 1.
`Lead Case No. 3:03-cv-0063-LRH-RAM
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`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
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`and thus allow redemption games to be offered in wholly new, non-traditional
`redemption and gaming environments.”
`’918 patent at 3:1-7. As amended during the reexamination, the ’918 patent has 69 total claims,
`including ten independent claims—claims 1, 15, 21, 34, 38, 39, 45, 47, 59, and 73.4 Although it
`is difficult to determine from reviewing the Worldwinner Mot., it appears that Worldwinner is
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`requesting a motion finding every claim of the ’918 patent invalid under 35 U.S.C. § 101, yet the
`Worldwinner Mot. fails to specifically address 50 of the claims of the ’918 patent.5
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`There are two different sets of claims in the ’918 patent. One set, including independent
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`claims 1, 15, 34, 38, 39, 45, 47 and 59, is directed to combinations of detailed steps for
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`implementing a customizable prize redemption system on a gaming apparatus. The other set of
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`claims, which includes independent claims 21 and 73, requires a specific gaming apparatus.
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`Neither set of claims is directed to an abstract idea.
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`For example, independent claim 15 reads:
`
`15. A method for providing a prize redemption system for a game apparatus, said
`prize redemption system being customizable by an operator, the method
`comprising:
`
`displaying a prize table on a display of said game apparatus;
`
`receiving prize input from said operator which is stored on a storage medium of
`said game apparatus and displayed in said prize table, said prize input describing a
`plurality of prizes that are to be available in said redemption system to players of
`said game apparatus, wherein said game apparatus receives monetary income from
`players in exchange for use of said game apparatus;
`
`receiving payout input from said operator which is stored on said storage medium,
`said payout input indicating a desired amount of payout that said operator wishes
`to provide back to players of said game apparatus in terms of a monetary value of
`said plurality of prizes;
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`determining a prize cost for each of said plurality of prizes in terms of said prize
`credits winnable by playing a game on said game apparatus, wherein said prize
`cost is determined in accordance with said desired amount of payout and is stored
`in said storage medium;
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`receiving monetary input from a player on said game apparatus;
`
`4 Claims 35-37 and 40-44 were cancelled during the reexamination.   
`5 The relief requested in the Worldwinner Mot. fails to list the specific claims that allegedly claim
`unpatentable subject matter. Furthermore, the Worldwinner Mot. only addresses the following
`claims—claims 15-22, 24-25, 28, 32-34, 39, 73-75, and 77., which are the claims listed in Bally
`Gaming’s disclosures under LR 16.1-6.
`Lead Case No. 3:03-cv-0063-LRH-RAM
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`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
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`implementing a game process and receiving input from said player during said
`game process, wherein said player is provided with a game score based on an
`outcome of said game process, wherein said player is provided with a number of
`prize credits based on said game score;
`
`displaying a prize selection screen on said display, said prize selection screen
`portraying a plurality of prizes and a prize cost for each of said prizes;
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`receiving a selection from said player selecting at least one of said prizes, wherein
`said selected prize has a prize cost less than or equal to said number of prize
`credits provided to said player; and
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`dispensing a physical indication of said selected prize to said player, wherein said
`player is able to redeem at least one of said prizes with said dispensed indication
`’918 patent, claim 15.
`
`Claim 15 is not merely an abstract process. It requires a specific series of steps to be
`
`implemented on a gaming apparatus, including, inter alia, displaying a prize table on the gaming
`
`apparatus itself, receiving, storing and displaying prize input from an operator in the gaming
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`apparatus, receiving and storing payout input from an operator on the gaming apparatus,
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`determining a prize cost, receiving monetary input from the player, playing the actual game using
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`input from a player and providing a score and a number of prize credits based on that score,
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`displaying a prize selection screen on the gaming apparatus including the display of the prize
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`cost, receiving the user’s selection of prizes, and outputting a physical indication of the prize
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`selected such as a ticket or voucher, from the gaming apparatus. Id. This detailed and specific
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`combination of steps clearly does not pre-empt the entire field of game prize redemption as
`
`alleged by Worldwinner. Rather, the combination of steps set forth a particular process for
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`customizing prize redemption on a gaming apparatus having certain physical attributes, including
`
`a display and memory. This process ultimately results in the generation of a physical result—a
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`voucher or other physical indication the prize selected.
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`Similarly, independent claim 21 is specifically directed to a gaming apparatus, not a
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`generic method:
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`21. A game apparatus providing a prize redemption system, the game apparatus
`comprising:
`
`
`Lead Case No. 3:03-cv-0063-LRH-RAM
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`BALLY GAMING’S OPPOSITION TO
`WORLDWINNER’S MOTION TO DISMISS
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`a game processor for controlling a game on said game apparatus, said game
`providing a number of prize credits to a player in connection with said player
`playing said game;
`
`receiving means for receiving monetary input from said player, said receiving
`means being coupled to said game processor;
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`an input device coupled to said game processor and providing commands to said
`game from said player;
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`an output display device coupled to said game processor for providing visual
`feedback for said game;
`
`means for providing a prize selection menu on said display device, said prize
`selection menu presenting a plurality of prizes, each of said prizes having a prize
`credit cost which has been determined in accordance with a desired payout value
`of an operator of said game apparatus, wherein said player selects one of said
`prizes using said input device, said selected prize having a prize credit cost less
`than or equal to said prize credits awarded to said player; and
`
` a
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` prize output device coupled to said game processor for outputting an indication
`of said selected prize to said player such that said player may use said indication to
`redeem said selected prize.
`Claim 21 includes six separate physical requirements including a game processor, input devices
`
`for receiving monetary input and instructions from the player, an output display device, prize
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`outputting devices, and means for providing a prize selection on the menu. While certain claim
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`limitations use “means plus function” language, it is well-established under the law that such
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`language is linked to the structures disclosed in the specification. 35 U.S.C. 112, ¶6. Thus, again
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`the apparatus claims like claim 21 are not merely generic concepts that seek to pre-empt the field
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`of prize redemption, but instead cover apparatuses with specific physical requirements.
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`
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`Dependent claim 24 further narrows the operations of the game apparatus of claim 21 by
`
`reciting:
`
`A game apparatus as recited in claim 21 wherein said desired payout value
`24.
`of said operator is a percentage of all monetary input received by said game
`apparatus that said operator desires to give back to said players in terms of prizes.
`This additional p