Filed on behalf of Patent Owner John H. Stephenson
`
`By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Merchant & Gould P.C.
`
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: dmcdonald@merchantgould.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`
`Patent Owner
`
`____________
`
`Case IPR2013-00289
`
`Patent 6,174,237
`
`____________
`
`DECLARATION OF STACY AARON FRIEDMAN IN SUPPORT OF
`
`PATENT OWNER’S RESPONSE
`
`
`
`By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Merchant & Gould P.C.
`
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: dmcdonald@merchantgould.com
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`
`Patent Owner
`
`____________
`
`Case IPR2013-00289
`
`Patent 6,174,237
`
`____________
`
`DECLARATION OF STACY AARON FRIEDMAN IN SUPPORT OF
`
`PATENT OWNER’S RESPONSE
`
`
`
`1.
`
`I, Stacy A. Friedman, have been retained by Merchant & Gould P.C.,
`
`counsel for patent owner, John Stephenson (“Stephenson”). I understand that the
`
`Game Show Network, LLC and WorldWinner.com, Inc. (Collectively “GSN”)
`
`petitioned for inter partes review of U.S. Patent No. 6174,237 (“the ‘237 Patent”)
`
`asking the that the United States Patent and Trademark Office cancel claims 1-19
`
`of the ‘237 patent as unpatentable. The following discussion and analysis responds
`
`to GSN’s expert, its petition for IPR and the Board’s Decision (Paper No. 8)
`
`instituting trial.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS, PREVIOUS
`TESTIMONY AND COMPENSATION
`
`A. Background And Qualifications.
`2.
`As a professional game designer and mathematician, I am intimately
`
`familiar with the issues and technology relating to computer-implemented games.
`
`As shown below, I have personally designed, implemented, tested, and analyzed
`
`many games, including dozens of single- and multi-player wagering games for
`
`both Internet and land-based casinos. I am qualified by my background and
`
`experience to provide expert testimony on matters involving networked gaming
`
`systems and technologies.
`
`3.
`
`I am the President of Olympian Gaming, LLC in Beaverton, Oregon, a
`
`position that I have held for over ten years. In that capacity, I have consulted in the
`
`gaming industry regarding, among other things, game design and development, slot
`1
`
`
`
`
`
`machine and table game mathematics, gaming software development, and gaming
`
`patent infringement and validity. I have over a dozen years of professional
`
`experience developing regulated casino games, over fifteen years of experience in
`
`gaming math, and over fifteen years of professional software design expertise.
`
`4.
`
`In 1996, I earned my Bachelor of Arts Degree in Computer Science,
`
`magna cum laude, from Harvard College, Harvard University, Cambridge,
`
`Massachusetts.
`
`5.
`
`From 1998 to 2000, I designed casino wagering games, worked on
`
`gameplay, and performed mathematical analyses for new slot machines at the
`
`pioneering video slot developer Silicon Gaming, Inc., Palo Alto, California, before
`
`it was acquired by International Game Technology (“IGT”). Silicon Gaming
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`designed and developed interactive slot machines. Its products were used in
`
`casinos and other gaming establishments, and combined advanced multimedia
`
`platforms with software-based games. Silicon Gaming’s product line included
`
`networked multimedia gaming platforms, hardware, and software. While there, I
`
`worked on the designs of video slot games, video keno games, and video poker
`
`games; helped produce dozens of innovative new games for the Odyssey™
`
`platform; and engaged regulatory agencies to achieve regulatory approval for the
`
`mathematics used in the games.
`
`
`
`2
`
`
`
`6.
`
`In 2001, I started an independent casino game design and analysis
`
`consultancy, Olympian Gaming. Based on my experience designing, developing,
`
`and placing dozens of games in Las Vegas, Reno, and Atlantic City casinos, I
`
`advise Internet casino software vendors, new game inventors, and casino game
`
`manufacturers in the fields of wagering gameplay design, mathematical analysis,
`
`and statistical verification. Especially relevant to the present matter, I have been
`
`engaged in the design of both stand-alone and networked gaming systems for over
`
`twelve years. I have also testified as an expert in many matters related to
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`networked gaming systems, including twice at the request of counsel on behalf of
`
`Multimedia Games in patent infringement matters related to its system for
`
`operating the central determinant network for the New York State Lottery.
`
`7.
`
`In 2011, I was engaged by Double Down Interactive, a social
`
`(Internet) casino game developer whose products are available via Facebook and
`
`mobile platforms, to improve its casino game designs. These designs included
`
`multi-player blackjack and roulette games, as well as slot machines and slot
`
`machine tournaments. I consulted with Double Down for approximately one year
`
`until it was acquired by IGT in early 2012. IGT is the largest U.S. slot machine
`
`manufacturer. IGT retained my services as a Strategy Specialist for Double Down
`
`in March of 2012 through mid-2013. I am currently engaged as a consultant to
`
`
`
`3
`
`
`
`several Internet-based social gaming companies whose products include online slot
`
`machines and online bingo games.
`
`8.
`
`I have invented and applied for patents on over two dozen gaming
`
`methods and systems and, together with my patent attorney and frequent co-
`
`inventor, control a patent portfolio of approximately fifty issued and/or pending
`
`patents across several categories of the gaming industry. The following table lists
`
`a sampling of the issued patents in this portfolio:
`
`U.S. Patent Number,
`Issue Date, Category
`7,686,668 (3/30/10)
`Networked gaming
`management systems
`
`7,727,067 (6/1/10)
`Electronic gaming
`machines
`
`8,308,544 (11/13/12);
`8,113,938 (2/14/12);
`8,075,383 (12/13/11);
`7,682,239 (3/23/10)
`
`
`
`Title, Brief Description
`
`Method, apparatus, and computer readable
`
`storage to determine and/or update slot machine
`configurations using historical, and/or current, and/or
`predicted future data
`A casino floor management system that captures and
`analyzes gaming data from throughout the casino network
`and automatically adjusts gaming machine settings
`appropriately.
`Wagering Game Allowing Player to Wager on
`Iterative Simultaneous Independent Wagers with
`Different Variances
`A wagering game allowing players to allocate their
`wager among different propositions with different
`variances, and that awards aggregate performance.
`Video Games Adapted for Wagering
`Methods for converting traditional video games into
`wagering propositions, including methods to wager on
`driving or racing games, first-person shooters, and top-
`down scrolling games. This is the ultimate future of
`electronic wagering games once the market moves past
`4
`
`
`
`U.S. Patent Number,
`Issue Date, Category
`Electronic gaming
`machines
`8,257,159 (9/4/2012)
`Electronic gaming
`machines
`
`7,335,099 (2/26/08)
`Table games
`
`8,074,992 (12/13/11);
`7,651,096 (1/26/10)
`Table games
`
`Title, Brief Description
`
`virtual spinning reels and symbol matching games.
`
`Slot Machine with Synchronized Spinning Reels
`A slot machine featuring reels that spin together
`(synchronously), including one step at a time, enabling a
`different award distribution and greater suspense.
`Method for Playing Wagering Games /
`“Twist’em®”
`A novel table game played with standard double-six
`dominoes. Also readily suitable for EGM/video-poker-
`style implementation. Demo at
`http://www.olympiangaming.com/twistem/.
`Bad Beat Blackjack / “Bad Beat Blackjack®”
`A side wager for blackjack based on losing with a
`good hand. Approved in NV, MS, and WA. Demo at
`http://www.olympiangaming.com/bad-beat-blackjack/.
`
`
`9.
`
`I have received regulatory agency approval in Nevada and Mississippi
`
`for casino operation of my wagering methods described in United States Patent
`
`Numbers 7,377,513
`
`(“Odd and Even Craps®”), 7,651,096
`
`(“Bad Beat
`
`Blackjack®”), 7,661,677 (“Hard Pass® Craps”), and 7,316,397 (“Roulette UP!,”
`
`formerly known as “Uppercut Roulette”). I have licensed rights to Bad Beat
`
`Blackjack to several gaming distributors and, through them and through my own
`
`
`
`5
`
`
`
`efforts, versions of Bad Beat Blackjack have also been approved in and are being
`
`played in several states and on the Internet.
`
`B.
`
`10.
`
`Previous Testimony
`
`I have provided expert testimony at both deposition and trial within
`
`the past four years, and a curriculum vitae setting forth my relevant employment
`
`history, educational background, publication history, and expert consulting
`
`experience is attached hereto as Exhibit A.
`
`C. Compensation
`
`
`11. My compensation for time, study, and preparation of testimony
`
`relating to the opinions set forth below is currently $425.00 per hour. None of my
`
`compensation depends upon the outcome of the case.
`
`II. MATERIALS CONSIDERED
`
`
`12. Attached as Exhibit B is a listing of the documents that I have
`
`considered and reviewed in connection with providing this Declaration.
`
`III. THE ‘237 PATENT
`
`
`13. U.S. Patent 6,174,237 (“the ‘237 patent”) (Ex. 2002) to Stephenson is
`
`directed toward a method for a game of skill tournament that determines a player’s
`
`absolute skill by having them compete in a game of skill against a consistent
`
`
`
`6
`
`
`
`computer opponent. It provides a player with a reliable measure of their skill
`
`independent of other players. Ex. 2002 at col. 1:59-63.
`
`14. The tournament is set up to have two rounds, a qualifying round and a
`
`playoff round. Id. at Col. 1:65-67. Both the qualifying round and playoff round
`
`are played over an interactive computer system by players individually competing
`
`against a host computer. The primary difference between rounds is that, unlike the
`
`qualifying round, the playoff round is played simultaneously by those players who
`
`qualified in the qualifying round.
`
`15.
`
`In the qualifying round, a single player competes against the host
`
`computer opponent to obtain a reliable measure of their skill and attempts to be
`
`classified into one of a plurality of predetermined levels of performance. These
`
`levels of performance are used to determine both (a) which players qualify for the
`
`playoff round at which skill level, and (b) which players earn an award and how
`
`much. The qualifying round is played in a continuous manner over a broad
`
`timeframe such that the player selects the day and time in which to attempt to
`
`qualify during that timeframe. Id. at 4:30-38. Thus, one player may attempt to
`
`qualify on Monday and another player may attempt to qualify on Tuesday. Id.
`
`Whether any player qualifies is independent of how any other player performs in
`
`the qualifying round. In other words, qualifying into a level of performance is
`
`determined solely by a single player’s performance as they compete against the
`
`
`
`7
`
`
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`host computer opponent. Therefore, the qualifying performance levels are both
`
`predetermined and absolute.
`
`16. Because qualifying performance
`
`levels are predetermined and
`
`absolute, a player’s qualification into a level of performance is independent of, and
`
`not affected by, whether another player qualifies into a given performance level.
`
`Moreover, it allows a player to know they have qualified for a given performance
`
`level as they play (rather than after all players have finished) because qualification
`
`is determined by their play and not affected by other players. For example, the
`
`‘237 patent illustrates a preferred embodiment of the invention where “[o]nce a
`
`player has obtained sufficient points which would classify him in the top most
`
`level of performance, the player would not have to continue with the game or
`
`games.” Ex. 2002 at col. 3:63-65. Moreover, if a player does not qualify they can
`
`try again. Ex. 2002 at col. 4:12-17.
`
`17. Another goal of the qualifying round is to score a sufficient number of
`
`points to win an award. The number of points required to win an award may be
`
`different from the number of points required to qualify for a playoff round.
`
`18.
`
` During the qualifying round, a player that demonstrates a level of
`
`performance that qualifies him to participate in the playoff round is eligible to do
`
`so.
`
`
`
`8
`
`
`
`19. During the playoff round, qualifying players of a given performance
`
`level compete against a host computer opponent in a game under the same
`
`conditions as during the qualifying round, except those players all play during the
`
`same timeframe. Ex. 2002 at col. 4:39-51. Unlike the qualifying round, where a
`
`player may stop playing if they have surpassed the predetermined threshold for the
`
`highest performance level, in the playoff round, there is no predetermined
`
`threshold for highest performance. Instead, at the end of the playoff timeframe,
`
`players’ performances are ranked, so the goal is to obtain as high a score as
`
`possible.
`
`20.
`
`In short, multiple players play individually against a host computer
`
`opponent where their scores accurately represent their level of skill and allow them
`
`to be sorted according to predetermined performance levels. Based on their
`
`scores, players may qualify for an award, advancement into a playoff round, both
`
`or neither. The final portion of the tournament is at least one playoff round where
`
`players who qualified for the playoff round again compete against the host
`
`computer opponent and their final scores are evaluated to determine a tournament
`
`winner and subsequent ranking of players.
`
`21. The invention disclosed in Stephenson’s ‘237 patent has several
`
`significant advantages over the prior art. For example, players are not waiting on
`
`other players to start play, but rather can play at their time of choice because they
`
`
`
`9
`
`
`
`always compete against a host computer opponent. The invention provides an
`
`accurate index of one’s absolute skill because the host computer opponent is
`
`uniform. The invention also reduces the risk of cheating by player collusion
`
`because no two human players compete in the same game. It is scalable to
`
`thousands of players at different many skill levels and provides fair competition
`
`within each skill level. Finally, it provides an alternative to handicapping in that it
`
`does not require accurate records of past performance to make competitions fair.
`
`IV. LEGAL PRINCIPLES
`
`
`22.
`
`I have been informed of and relied on the following legal principles in
`
`conducing my analysis and forming my opinions.
`
`A. A Person Of Ordinary Skill In The Art
`
`23.
`
`I have been informed and understand that “a person of ordinary skill
`
`in the art” is a hypothetical person who is presumed to have known the relevant art
`
`at the time of the invention. Factors that may be considered in determining the
`
`level of ordinary skill in the art may include: (A) "type of problems encountered in
`
`the art;" (B) "prior art solutions to those problems;" (C) "rapidity with which
`
`innovations are made;" (D) "sophistication of
`
`the
`
`technology; and" (E)
`
`"educational level of active workers in the field. In a given case, every factor may
`
`not be present, and one or more factors may predominate."
`
`
`
`10
`
`
`
`24.
`
`I am informed that a person of ordinary skill in the art is also a person
`
`of ordinary creativity, not an automaton. In many cases a person of ordinary skill
`
`will be able to fit the teachings of multiple patents together like pieces of a puzzle.
`
`This person may also take into account the inferences and creative steps that a
`
`person of ordinary skill in the art would employ.
`
`25.
`
`I have been informed and understand that the hypothetical person
`
`having ordinary skill in the art to which the claimed subject matter pertains would,
`
`of necessity have the capability of understanding the scientific and engineering
`
`principles applicable to the pertinent art.
`B. Claim Construction
`26.
`I understand that in this matter the claim terms of the ‘237 patent are
`
`to be given their broadest reasonable construction as understood by one of ordinary
`
`skill in the art in light of the specification. I further understand that under a
`
`broadest reasonable interpretation, words of the claim must be given their plain
`
`meaning, unless such meaning is inconsistent with the specification. Moreover, I
`
`understand that unless the steps of a method actually recite an order, the steps are
`
`not ordinarily construed to require one.
`C.
`
`Invalidity
`
`I understand that, under the patent laws, a patent is valid only if the
`
`27.
`
`invention claimed in the patent is new and not obvious in light of which came
`
`
`
`11
`
`
`
`before; and that which came before is referred to as “prior art.” The claims of a
`
`patent are invalid if they are anticipated by the prior art, and/or are obvious in light
`
`of the prior art.
`
`28.
`
`It is my understanding that the potential prior art includes: (1) patents
`
`that issued (a) before the inventors made the inventions of the Asserted Claims or
`
`(b) more than a year before a patent application supporting the Asserted Claims
`
`was filed; (2) printed publications (i.e., references accessible to those interested in
`
`the field even if difficult to find) having a publication date (a) before the inventors
`
`made the inventions of the Asserted Claims or (b) more than a year before a patent
`
`application supporting the Asserted Claims; (3) U.S. patents having a filing date
`
`(a) before the inventors made the inventions of the Asserted Claims or (b) more
`
`than a year before a patent application supporting the Asserted Claims;
`
`(4) anything in public use or on sale in the United States more than a year before a
`
`patent application supporting the Asserted Claims was filed; (5) anything that was
`
`publicly known or used by others in this country before the inventors made the
`
`inventions of the Asserted Claims; and (6) an invention that was made (and not
`
`abandoned, suppressed or concealed) in the United States by another person
`
`before the inventors made the inventions of the Asserted Claims. With respect to
`
`the latter the person who first conceived of a claimed invention and first reduced it
`
`to practice is the first inventor. If one person conceived of the claimed invention
`
`
`
`12
`
`
`
`first, but reduced it to practice, that person is the first inventor only if s/he (a)
`
`began to reduce the claimed invention to practice before the other party conceived
`
`of it and (b) continued to work diligently to reduce it to practice.
`D. Anticipation
`29.
`I have been informed and understand that Petitioners contend that the
`
`claim of the ‘237 patent are anticipated by the Walker prior art reference. I have
`
`been informed and understand that, in order for a person to be entitled to a patent,
`
`the invention must actually be “new”; and that, in general, inventions are new
`
`when they have not been made, used or disclosed before. 35 U.S.C. §102(b).
`
`30.
`
`I have been informed and understand that invalidity by anticipation
`
`requires the presence, in a single prior art disclosure or thing, of all requirements,
`
`or elements, arranged in a claim. For a claim to be anticipated, each claim element
`
`must be included or disclosed, either expressly or inherently, in a single prior art
`
`reference or device, and the claimed arrangement or combination of those elements
`
`must also be included or disclosed, either expressly or inherently, in the same prior
`
`art reference or device.
`E. Obviousness
`31.
`I have been informed and understand that Petitioners contend that the
`
`claims of the ‘237 patent are invalid as being obvious, whether or not they are also
`
`anticipated.
`
`
`
`13
`
`
`
`32.
`
`I have been informed and understand that in order to be patentable, an
`
`invention must not have been obvious to one of ordinary skill in the art at the time
`
`the invention was made. 35 U.S.C. §103.
`
`33.
`
`I have been informed and understand that the issue is whether the
`
`invention would have been obvious to one of ordinary skill in the art at the time the
`
`invention was made; and that in determining whether this is so, I should first
`
`determine the scope and content of the prior art.
`
`34.
`
`I also have been informed and understand that I should then consider
`
`the differences, if any, between the prior art and each claim; and that in doing so,
`
`although it is proper to consider differences between the claimed invention and the
`
`prior art, I should not focus on only the differences, because the test is whether the
`
`claimed invention as a whole would been obvious over all of the prior art. I also
`
`understand that each claim of the patent must be considered separately and in its
`
`entirety.
`
`35.
`
`I have been informed and understand that the next step is to determine
`
`the level of ordinary skill in the art to which the claimed invention pertains at the
`
`time the invention was made; and that factors to be considered in determining the
`
`level of ordinary skill in the pertinent art include:
`
` The educational level of the inventor and of others working in the field;
`
` The types of problems encountered in the art at the time of the invention;
`
`
`
`14
`
`
`
` The activities of others;
`
` Prior art solutions to the problems encountered by the inventor; and
`
` The sophistication of the technology.
`
`36.
`
`I have been informed and understand that a person of ordinary skill in
`
`the art is presumed to have knowledge of the relevant prior art at the time of the
`
`claimed invention; and that if I find that the available prior art shows each of the
`
`elements of the asserted claims, I should determine whether it then would have
`
`been obvious to combine or coordinate these elements in the same manner as the
`
`claim.
`
`37.
`
`I have been informed and understand that a patent composed of
`
`several elements is not proved obvious merely by demonstrating that each of its
`
`elements was independently known in the art, but that I must determine whether a
`
`person of ordinary skill has simply implemented a predictable variation of prior art
`
`elements or, conversely, whether he or she has made an improvement that is more
`
`than the predictable use of prior art elements according to their established
`
`functions.
`
`38.
`
`I have been informed and understand that where there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, a person of ordinary skill in the art has good reason to pursue
`
`the known options within his or her technical grasps, and that if this leads to the
`
`
`
`15
`
`
`
`anticipated success, it is likely the product, not of innovation, but of ordinary skill
`
`and common sense. In that instance the fact that a combination was obvious to try
`
`might show that it is obvious.
`
`39.
`
`I have been informed and understand that any need or problem known
`
`in the field of endeavor at the time of the invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed.
`
`40.
`
`I have also been informed and understand that a person of ordinary
`
`skill in the art, is also a person of ordinary creativity; and that, in many cases, a
`
`person of ordinary skill in the art will be able to fit the teachings of multiple
`
`patents or other prior art together like the pieces of a puzzle.
`
`41.
`
`I have been informed and understand that, in determining whether the
`
`asserted claims would have been obvious to a person of ordinary skill in the art
`
`and, therefore, are invalid, I should not apply any rigid test or formula, but rather
`
`should use my common sense to determine whether the claimed invention is truly
`
`innovative, or merely a combination of known elements to achieve predictable
`
`results.
`
`42.
`
`I have been informed and understand that, in my analysis, I should be
`
`aware of the distortion caused by hindsight bias, that is, of relying upon a hindsight
`
`combination of the prior art; and should cast my mind back to the time of the
`
`inventions and consider whether the inventions as a whole would have been
`
`
`
`16
`
`
`
`obvious to a person of ordinary skill in the art, taking into consideration any
`
`interrelated teachings of the prior art, the effects of demands known to the
`
`marketplace, and the background knowledge possessed by a person having
`
`ordinary skill in the art, all in order to determine any known elements in the
`
`fashion claimed by the patent at issue.
`F.
`43.
`
`Secondary Considerations
`I have been informed that in making my decision only as to the
`
`obviousness of the asserted claims, I should consider the following objective
`
`evidence which may tend to show non-obviousness of the claims at issue:
`
` Commercial success or lack of commercial success of products covered by
`the asserted claims;
`
` A long felt need in the art that was satisfied by the invention of the asserted
`claims;
`
` The prior art teaches away from the claimed invention.
`
`
`
` The failure of others to make the invention;
`
` Copying of the inventions by others in the field;
`
` Unexpected results achieved by the invention;
`
` Praise of the invention by others in the field;
`
` Expressions of disbelief or skepticism by those skilled in the art upon
`learning of the inventions;
`
` The taking of licenses under the patents or others.
`
`
`
`17
`
`
`
`44.
`
`I have been informed and understand that there must be a nexus or a
`
`connection between the evidence showing these factors and the inventions of the
`
`asserted claims, if this evidence is to be given weight in arriving at a conclusion on
`
`the obviousness issue; for example, if commercial success is due to market
`
`position, advertising, promotion, salesmanship or the like, or is due to features of
`
`the products other than those described in the asserted claims, then any commercial
`
`success may have no relation to the issue of obviousness.
`
`V. A PERSON HAVING ORDINARY SKILL IN THE ART
`45.
`It is my opinion that a person having ordinary skill in the art related to
`
`the ‘237 Patent at the time of its invention would have had either (1) a degree in
`
`computer science and one year of experience designing computer gaming
`
`applications, or (2) no formal degree and three to four years of experience
`
`designing computer gaming applications.
`
`46.
`
`I disagree with Dr. Whitehead’s assessment that a person having
`
`ordinary skill in the art would, in 1999, necessarily have been a graduate of a
`
`computer science department. I was personally working in the gaming industry in
`
`1999, in the San Francisco Bay Area, during the time known as the “dot-com
`
`boom”. At that time, a great many technology startups were hiring as quickly as
`
`they could to take advantage of the nascent Internet gold rush, and a significant
`
`
`
`18
`
`
`
`minority of software engineers at that time were self-taught or had not completed
`
`undergraduate training in college.
`
`47.
`
`I further disagree with Dr. Whitehead’s assessment that the person of
`
`ordinary skill would have had significant first-hand experience observing,
`
`administering, and/or participating in competitive tournaments. In my opinion, one
`
`of ordinary skill in the art designing computer network games for distributed play
`
`would not have been experienced in structuring or running tournaments.
`
`48. My opinions herein regarding the ‘237 patent are from the perspective
`
`of one of ordinary skill in the art, as set forth above, at the time of the invention.
`
`For example, my opinions regarding what a prior art reference teaches or whether
`
`it renders any claim of the ‘237 patent anticipated or obvious is from the
`
`perspective of a person of ordinary skill in the art at the time of the invention.
`
`VI. CLAIM CONSTRUCTION
`49.
`I have reviewed the claims and the specification of the ‘237 patent to
`
`determine the broadest reasonable construction of the claim terms to one of
`
`ordinary skill in the art in view of the patent’s specification. In my opinion, many
`
`of the claim terms would be understood by a person of ordinary skill in the art and
`
`do not require construction as their common, ordinary meaning is apparent. Thus,
`
`I have not set forth a construction for every claim term in the ‘237 patent. My
`
`opinions regarding the broadest reasonable construction of certain claim terms
`
`
`
`19
`
`
`
`used in the ‘237 patent are provided below. My opinions below as to the
`
`construction of these claim terms are from the perspective of one of ordinary skill
`
`in the art at the time of the invention giving the claim terms their broadest
`
`reasonable construction in view of the specification.
`
`A.
`
`
`50.
`
`“game of skill”
`
`In my opinion, one of ordinary skill in the art at the time of the
`
`invention, giving the terms its broadest reasonable construction, would understand
`
`“game of skill” to mean “a game in which a player’s knowledge and experience
`
`influences the outcome of the game.” This construction is explicitly supported by
`
`the specification. Ex. 2002 at col. 2:9-11 (“For the purposes of the present
`
`invention, a game of skill is defined as any game where a player’s knowledge and
`
`experience influences the outcome of the game.”). This definition is consistent
`
`with the plain meaning of the phrase and is well supported by the specification.
`
`51. Dr. Whitehead acknowledges that this language should be part of the
`
`definition of “game of skill.” Ex. 1005 ¶28. However, in my opinion, Dr.
`
`Whitehead unnecessarily includes examples of games of skill. These examples do
`
`not belong in the construction of “game of skill”.
`
`52. Moreover, I have reviewed the Board’s decision on this point (Paper
`
`8, “Decision” at 5-6) and I agree with the Board’s construction of this term.
`
`
`
`20
`
`
`
`“Playing A Game Of Skill In A Qualifying Round Between A
`Single Player And A Host Computer.”
`
`B.
`
`
`53.
`
`In my opinion, the broadest reasonable interpretation of this phrase to
`
`one of ordinary skill in the art, in light of the specification, is “playing a game of
`
`skill in a qualifying round where a single human player competes against a host
`
`computer opponent.”
`
`54.
`
`I understand that the Board preliminarily determined that this phrase
`
`means “playing a game of skill in a qualifying round, where the game includes
`
`only one human player and is at least administered by a host computer.” Paper 8 at
`
`9. I respectfully disagree with the Board, as its construction is too broad.
`
`55.
`
`In my opinion, one of ordinary skill in the art at the time of the
`
`invention, giving the phrase its broadest reasonable construction in view of the
`
`specification, would conclude that the words “playing a game . . . between a single
`
`player and the host computer” required competition between a single player and a
`
`host computer opponent. Ex. 2002 at col. 6:5-6 (emphasis added). To one of skill
`
`in the art the claim phrase means that there is competition between a single human
`
`player and the host computer. It does not mean simply that the host computer
`
`administers the game.
`
`56. The claims use the term “between” to specify who is playing the
`
`game: The human player and the host computer opponent. The term “between”
`
`means “by the common action of: jointly engaging.” Merriam Webster’s
`21
`
`
`
`
`
`Collegiate Dictionary, 109 (10th ed. 1993), Ex 2009 at 109. Moreover, the
`
`specification equates “between” with both “against” and “versus.” The term
`
`“against” means “in competition with” or “in opposition or hostility to.” Merriam
`
`Webster’s Collegiate Dictionary, 21 (10th ed. 1993), Ex 2009 at 21. Dr. Whitehead
`
`and I agree that “between” and “against” are used synonymously in the
`
`specification. Whitehead Depo. Tr., Ex. 2008 at 225:1-4. Figure 1, numeral 22
`
`also recites “PLAYER PLAYS GOS vs. HOST COMPUTER.” It is well-known
`
`that “vs.” is the abbreviation for the word “versus” which is literally defined as
`
`“against.” Merriam Webster’s Collegiate Dictionary 1313 (10th ed. 1993), Ex.
`
`2009 at 1313. Thus, the specification and claims all refer to the same concept: the
`
`player competes against a computer opponent.
`
`57. Thus, the claim language dictates that both the human player and the
`
`host computer “jointly engage” in playing the game. The language used makes
`
`clear that the human player is in “competition with” or in “opposition or hostility
`
`to” the host computer opponent. The claim language makes clear that the host
`
`computer must do more than simply “at least administer the game” but must
`
`compete against the host computer opponent. It is consistent with the ‘237 patent’s
`
`abstract—“In the qualifying round the player competes against a host computer.”
`
`Ex. 2002 at Abstract (emphasis added).
`
`
`
`22
`
`
`
`58.
`
`
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