UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
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`GSN GAMES, INC., f/k/a WORLDWINNER.COM, INC.,
`Petitioner,
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`v.
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`BALLY GAMING, INC.,
`Patent Owner.
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`Case No. CBM2015-00155
`Patent No. 5,816,918
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`EVIDENCE UNDER 37 CFR § 42.64(b)(1)
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`BEFORE THE PATENT AND TRIAL AND APPEAL BOARD
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`GSN GAMES, INC., f/k/a WORLDWINNER.COM, INC.,
`Petitioner,
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`v.
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`BALLY GAMING, INC.,
`Patent Owner.
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`Case No. CBM2015-00155
`Patent No. 5,816,918
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`PATENT OWNER’S OBJECTIONS TO PETITIONER’S
`EVIDENCE UNDER 37 CFR § 42.64(b)(1)
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`Pursuant to 37 CFR § 42.64(b)(1), Patent Owner hereby objects to the
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`following evidence submitted by Petitioner in its Petition. These objections are
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`being served within ten (10) business days of the institution of trial by the Board as
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`required by rule.
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`Exhibit 1002, Declaration of William K. Bertram: Patent Owner objects to
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`this exhibit under FED. R. EVID. 602 as not being based on the personal knowledge
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`of the declarant, who has not even provided a curriculum vitae, much less been
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`qualified as an expert witness pursuant to FED. R. EVID. 702 and 703. Specifically,
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`while paragraph 4 of Mr. Bertram’s declaration references an attached CV, no such
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`CV was attached to the Petition or otherwise filed by Petitioner. Patent Owner
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`objects to paragraph 11 of the Bertram Declaration under Fed. R. Evid. 702 as
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`unreliable and not useful to the trier of fact in that it incorrectly states the law with
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`respect to 35 U.S.C. § 101. Additionally, Patent Owner objects to Mr. Bertram’s
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`testimony that comprises nothing more than legal argument without any additional
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`support and is therefore unreliable and not useful to the trier of fact under Fed. R.
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`Evid. 702 and inadmissible under Fed. R. Evid. 704. “Rule 704 was not intended
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`to allow experts to offer opinions embodying legal conclusions.” Bausch & Lomb,
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`Inc. v. Alcon Labs., Inc., 79 F. Supp. 2d 252, 255 (W.D.N.Y. 2000) (quoting
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`United States v. Scop, 846 F.2d 135, 139 (2d Cir. 1988)). Specifically, Patent
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`Owner objects to the following paragraphs of Mr. Bertram’s declaration on this
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`1
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`basis: ¶¶ 16-17, 25-26, 28-44, 48-49, 51, and 55-58. Patent Owner further objects
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`to ¶¶ 23 and 57 for lack of foundation under Fed. R. Evid. 901(a) with respect to
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`the references cited therein for the reasons set forth in greater detail below.
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`Exhibit 1004, I. Nelson Rose, Gambling and the Law (1986): Patent Owner
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`objects to this exhibit under Fed. R. Evid. 901(a) for lack of authentication.
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`Petitioner has failed to provide evidence of when this exhibit was actually
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`available to the public. The exhibit as provided is a book alleged to have been
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`published in 1986. The publication date, as well as any other information in the
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`Gambling and the Law book related to publication, is hearsay, and Petitioner has
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`made no argument that any exception or exclusion applies. See Emnos USA Corp.
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`v. dunnhumby LTD., IPR2015-00162, Paper 07 at 11 (PTAB Dec. 30, 2015).
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`Further, Petitioner has provided no evidence or foundation whatsoever as to
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`whether this document was available to the public and the date which it was made
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`available to the public. Whether a document is publicly accessible is a question of
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`fact based on the document’s disclosure to the public and is publicly available “if it
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`was ‘disseminated or otherwise made available to the extent that persons interested
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`and ordinarily skilled in the subject matter or art exercising reasonable diligence,
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`can locate it.” In re NTP, Inc., 654 F.3d 1279, 1296 (Fed. Cir. 2011) (quoting
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`Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1350 (Fed. Cir.
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`2
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`2008) and In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)) (internal
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`U.S. Patent No. 5,816,918
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`quotes omitted).
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`Exhibit 1005, Anthony N. Cabot, The Games People Play: Is it Time for A
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`New Legal Approach to Prize Games? Patent Owner objects to this exhibit under
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`Fed. R. Evid. 402 and 403 for lack of relevance. This exhibit is alleged to having
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`been published in Winter 2003/2004, long after the accorded priority date of the
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`‘918 Patent, so its relevance is not apparent from its face. Petitioner has presented
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`no evidence that would establish its relevance to the present petition. Patent
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`Owner additionally objects to this exhibit under FED. R. EVID. 901(a) for lack of
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`authentication. Petitioner has failed to provide evidence of when this exhibit was
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`actually available to the public. The exhibit as provided is an alleged reprint of a
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`Nevada Law Journal article that appears to have been printed from a Westlaw
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`website in 2015. It is not the actual article. See Standard Innovation Corp. v. Lelo,
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`Inc., IPR2014-00148, Paper 42 at 10 (PTAB Apr. 23, 2015), “[T]he Board has
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`stated that ‘[t]o authenticate printouts from a website, the party proffering the
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`evidence must produce some statement or affidavit from someone with knowledge
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`of the website . . .”) Petitioner has provided no evidence or foundation whatsoever
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`as to whether this document was available to the public and the date which it was
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`made available to the public.
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`3
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`Exhibit 1006, I. Nelson Rose, Gambling and the Law – Update (1993):
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`Patent Owner objects to this exhibit under Fed. R. Evid. 901(a) for lack of
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`authentication. Petitioner has failed to provide evidence of when this exhibit was
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`actually available to the public. The exhibit as provided is an alleged reprint of a
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`Hastings Communication and Entertainment Law Journal article that appears to
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`have been printed from a Westlaw website in 2015. The exhibit is not the actual
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`article. Petitioner has provided no evidence or foundation whatsoever as to
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`whether this document was available to the public and the date which it was made
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`available to the public, or whether any hearsay exception applies to the alleged
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`dates of publication.
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`All of the objections above go to the admissibility of the exhibits objected to
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`as evidence affirmatively supporting Petitioner’s petition and are not intended to
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`bar use of these exhibits by Patent Owner for purposes of impeachment.
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`Respectfully submitted,
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`/John M. Mueller/
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`Dated: February 4, 2016
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`John M. Mueller, Reg. No. 44,248
`CBM2015-00155@bakerlaw.com
`Baker & Hostetler LLP
`312 Walnut St., Suite 3200
`Cincinnati, OH 45202-4074
`Tel: (513) 929-3413
`Fax: (513) 929-0303
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`4
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`CBM2015-00155
`U.S. Patent No. 5,816,918
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of PATENT OWNER’S
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`OBJECTIONS TO PETITIONER’S EVIDENCE UNDER 37 CFR
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`§ 42.64(b)(1) is being served on February 4, 2016, via electronic email, to counsel
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`of record for Petitioner GSN Games Inc. f/k/a Worldwinner.com, Inc. at the
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`addresses below:
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`Brenton R. Babcock (Reg. No. 39,592)
`brent.babcock@knobbe.com
`Ted M. Cannon (Reg. No. 55,036)
`ted.cannon@knobbe.com
`Michelle E. Armond (Reg. No. 53,954)
`michelle.armond@knobbe.com
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Email: BoxGSN14@knobbe.com
`Tel: 949-760-0404
`Fax: 949-760-9502
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`
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`/John M. Mueller/
`John M. Mueller, Reg. No. 44,248
`CBM2015-00155@bakerlaw.com
`Baker & Hostetler LLP
`312 Walnut Street
`Suite 3200
`Cincinnati, OH 45202-4074
`Tel: (513) 929-3413
`Fax: (513) 929-0303
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`5
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