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
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`
`
`
`
`
`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
`
`____________
`
`JOHN H. STEPHENSON’S
`PATENT OWNER’S RESPONSE
`UNDER 35 USC §316(a)(8) AND 37 C.F.R. §42.120
`
`

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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Response
`
`
`Table of Contents
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`INTRODUCTION ...................................................................................................1
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`STATEMENT OF PRECISE RELIEF REQUESTED ............................................5
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`BACKGROUND .....................................................................................................6
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`A.
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`B.
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`Procedural Background ................................................................................6
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`The '237 Patent is Directed to Playing Games in a Format that Allows
`Indexing The Absolute Skill of Players, Not Merely Playing Games Over
`the Internet Administered By A Computer ..................................................8
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`C. Walker Lacks Disclosure of Key Limitations and Is Fundamentally
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`Different From The '237 Patent's Claimed Inventions. ..............................16
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`i.
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`ii.
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`Walker fails to disclosure a player competing against a host
`computer opponent. ........................................................................16
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`Walker does not disclose a qualifying round that determines
`a player's performance level based on a single player's
`performance. ..................................................................................18
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`iii. Walker does not disclose performance level award increases
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`as a player qualifies for higher performance level classifications .19
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`ARGUMENT ........................................................................................................20
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`A.
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`B.
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`Level of Ordinary Skill In The Art ............................................................20
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`Claim Construction ....................................................................................21
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`1.
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`2.
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`"Game of Skill." .............................................................................22
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`"Playing A Game Of Skill In A Qualifying Round Between
`A Single Player And A Host Computer." ......................................23
`
`i.
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`The claim language requires competition between a
`single player and a host computer. .....................................23
`
`iii
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`I.
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`II.
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`III.
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`IV.
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`The specification supports the claim language's
`requirement of competition between the human player
`and a host computer. ..........................................................25
`
`Petitioners' basis for its proposed constructions ignores
`the claim language, the specification and ignores
`applicable claim construction principles. ...........................26
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`ii.
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`
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`iii.
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`
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`"Playing Said Game Of Skill In A Playoff Round Between Said
`Player And The Host Computer Simultaneously Along With
`Other Players." ...............................................................................29
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`Claim 1 Does Not Require An Order Of Steps (b) And (c). ..........31
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`"Said Game of Skill Is Based On The Memory Reaction Of
`The Player." ...................................................................................32
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`3.
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`4.
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`5.
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`A.
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`B.
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`C.
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`V. WALKER DOES NOT ANTICIPATE OR RENDER OBVIOUS ANY
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`CLAIM OF THE '237 PATENT. ...........................................................................33
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`VI.
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`Ground 1: Claims 1-3, 5, and 8-19 Are Not Anticipated By Walker
`Because Walker Does Not Disclose Qualification Based On Only a
`Single Player's Performance in a Qualifying Round .................................33
`
`Ground 1: Claims 1-3, 5, and 8-19 Are Also Not Anticipated By Walker
`Because Walker does Not Disclose Performance Of All The Method
`Steps Including Playing "Between" A Player And Host Computer And
`Thus Does Not Anticipate Any Claim Of The '237 Patent. .......................36
`
`Grounds 2 And 3: Claims 4, 6 And 7 Are Not Obvious In View of
`Walker Because Walker Is Missing Claim Elements and The Claimed
`Inventions Are Fundamentally Different. ..................................................38
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`1.
`
`2.
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`Claim 4 is not obvious in view of Walker. ....................................38
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`Claims 6 and 7 are not obvious in view of Walker under the
`proper constructions proposed by Stephenson. ..............................40
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`CONCLUSION ......................................................................................................43
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`iv
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
`
`Table of Authorities
`
`
`Aerotel, Ltd. v. T-Mobile USA, Inc., 2010 U.S. App. LEXIS
` 25835, 4-8 (Fed. Cir. Dec. 20, 2010) ......................................................... 31
`
`Ferguson Beauregard/Logic Controls v. Mega Systems,
` 350 F.3d 1327, 1338 (Fed. Cir. 2003) ........................................................ 22
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
` 256 F. 3d 1323 (Fed. Cir. 2001).................................................................. 31
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) ........ 21, 31, 32
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`Other cites:
`
`MPEP §21111.01(I) ...................................................................................... 21
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`
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`v
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`

`

`EXHIBIT LIST
`
`Description
`Definitions from Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1993)
`U.S. Patent No. 6,174,237 B1
`Ex. 2002
`November 19, 2013 Decision re Institution of Inter Partes Review
`Ex. 2003
`Rules of Card Games: Double Solitaire
`Ex. 2004
`Ex. 2005 Web page Solitarie.com
`Ex. 2006
`CV of Jim Whitehead
`Ex. 2007
`Expert Declaration of Stacy A. Friedman and Attached Exhibits A
`and B
`Deposition Transcript of E. James Whitehead, January 10, 2014
`Definitions from Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1993)
`
`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
`
`Filed
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`Exhibit
`Ex. 2001
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`Ex. 2008
`Ex. 2009
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`vi
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`I.
`
`INTRODUCTION
`
`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
`
`The patent owner John Stephenson (“Stephenson” or “Patent Owner”), an
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`individual inventor and owner of Mega Dollar Games, LLC
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`(www.megadollargames.com), respectfully submits that the inventions claimed in
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`U.S. Patent No. 6,174,237 (“the ‘237 patent”) (“Ex. 2002”) are patentable over the
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`closest known prior art, including PCT Int’l Publ. No. WO 97/39811 to Walker
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`(“Walker”) (Ex. 1002), which was the sole basis for instituting this proceeding.
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`The inventions claimed in the ‘237 patent are fundamentally different from
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`Walker and the other prior art in at least two important respects: (1) they require a
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`single human to compete in a game of skill against a computer opponent in a
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`qualifying round, and (2) they determine whether a player qualifies to be classified
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`in a predetermined performance level based on a single player’s score against a
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`computer opponent in the qualifying round.
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`First, the ‘237 patent claims a tournament system where a human player
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`competes against a host computer opponent in a qualifying round and a playoff
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`round. This allows a player to obtain a reliable index to her skill level by removing
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`the variables caused by a human opponent. It also eliminates the need to have two
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`humans ready to play at the same time in a qualifying round because, in the
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`claimed invention, a human player competes against a host computer opponent,
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`1
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`

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`which can be ready to play whenever the human player is ready to play. In the
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`play-off round, a winner is determined by comparing who performed better against
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`her respective host computer opponents playing under like game conditions.
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`The claimed tournament structure has other benefits over the prior art as
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`well. The claimed invention reduces the risk of cheating by player collusion (e.g.,
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`a human player deliberately losing to another human player or working together in
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`the same game) because no two human players compete in a game together. It is
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`scalable to thousands of players at different skill levels without the complexities of
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`maintaining handicapping systems.
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`Second, the invention claimed in the ‘237 patent determines whether a
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`player qualifies for a predetermined performance level based on a single player’s
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`performance against a host computer. Thus, a player in the claimed invention can
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`stop playing the game once he obtains sufficient points to be classified in the top
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`performance level. Ex. 2002 at Col. 3:63-65. Walker and other prior art, in
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`contrast, qualifies people for a tournament based on relative performance against
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`other players.
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`Walker determines whether a player qualifies based on the relative
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`performance of every player in the qualifying round. Walker uses relative
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`performance to eliminate players. Also, like old systems, it attempts to negate the
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`2
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`

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`differences in skill level when comparing performance by using handicap systems
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`rather than determining an absolute index of a player’s skill and classifying her
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`with others of like predetermined skill levels. In Walker’s system, players are
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`eliminated or advanced based on relative performance of those human players
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`playing the game.
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`Petitioners argue that the inventions claimed in the ‘237 patent merely cover
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`administering a common tournament structure over networked computer systems.
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`These arguments are based on a selective reading of the ‘237 patent specification.
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`They take one sentence in the specification out of context and use a narrow version
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`of a game identified in a dependent claim to rewrite the requirement of a human
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`competing against a computer opponent to mean merely administering a game. As
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`shown below, the sentence cited by Petitioners to support their “at least
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`administer” construction is taken out of context and actually supports Stephenson’s
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`position.
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`Petitioners also fail to show that Walker anticipates claim 4, even if the
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`Board accepts Petitioners’ constructions of the terms in claim 1. Claim 4 requires
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`that “said performance level award increases as the player qualifies for higher
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`performance level classifications.” Thus, claim 4 requires that performance level
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`award increases are determined “as the player qualifies for higher performance
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`3
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`

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`level classifications.” Ex. 2002 at Claim 4 (emphasis added). The specification
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`makes clear that the performance level is determined in real time: “[o]nce a player
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`has obtained sufficient points which would classify him in the top most level of
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`performance, the player would not have to continue with the game or games.” Ex.
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`2002 at Col. 3:63-65. It is also consistent with the system determining whether a
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`player qualifies for a given performance level independent of other players’ scores.
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`In contrast, Walker does not teach a system where performance level award
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`increases as a player qualifies for higher performance level classifications. Instead,
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`Walker discloses determining in what performance level a player is placed only
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`after all players have completed their play and their relative scores are compared.
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`Ex. 1002 at 14. Walker’s teaching of completing relative performance
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`competitions to determine qualification, which is how typical prior art tournaments
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`operate, is contrary to claim 4. Thus, regardless of whether Petitioners’
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`construction of “between” in claim 1 is adopted, claim 4 is patentably distinct over
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`the prior art.
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`Petitioners rely on the expert declaration of James Whitehead to support
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`their arguments. However, there are significant issues with Dr. Whitehead’s
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`testimony. First, Dr. Whitehead admits his bias. Without even having the benefit
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`of Stephenson’s patentability evidence or analysis, Dr. Whitehead concludes that
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`4
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`

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`his opinion regarding unpatentability will not change and he will, regardless of the
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`evidence, opine the claims are unpatentable. Ex. 1005 at ¶ 72. He spent a total of
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`12.5 hours reviewing the ‘237 patent, the prior art (Walker, Demar, and Hamilton),
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`discussing the complex legal standards to apply in conducting his analysis,
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`conducting his analysis, and participating in the preparation of his 76 page
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`declaration. Moreover, Dr. Whitehead admitted having only some prior
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`knowledge of patent law principles before this project. Whitehead Depo. Tr. at
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`8:22-9:7 (Ex. 2008). The declaration was essentially spoon-fed to him by counsel.
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`Dr. Whitehead admitted he wrote less than 10 pages of his 76 page expert report.
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`Id. at 87:5-88:2. He did not conduct a sufficient independent analysis, or
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`sufficiently review and understand the issues or even what the attorneys wrote in
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`such a short amount of time. His “opinions” should be given little weight.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Patent Owner respectfully requests that the Board deny each ground upon
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`which this Trial was instituted and find patentable claims 1-19 of the ‘237 patent.
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`None of the claims of the ‘237 patent is either anticipated or obvious in view of
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`Walker as shown herein.
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`5
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`III. BACKGROUND
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`A. Procedural Background
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`Stephenson owns and operates a gaming website that competes with
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`
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`Petitioners. Stephenson’s website is www.megadollargames.com. Petitioners
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`operate www.worldwinner.com, which also provides internet games. Stephenson
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`sued Petitioners for infringing the ‘237 patent on May 17, 2012. Based on a
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`stipulation of the parties to this IPR and the lawsuit, the lawsuit has been stayed
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`pending the outcome of this proceeding.
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`On May 17, 2013, The Game Show Network, LLC and WorldWinner.com,
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`Inc. (“Petitioners”) filed a Petition for Inter Partes Review requesting the Board
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`cancel the claims of the ‘237 patent. Paper 1, “Pet.” Stephenson submitted a Patent
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`Owner Preliminary Response on August 29, 2013. In his preliminary response,
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`Stephenson argued that Petitioners incorrectly construed the phrase “play between”
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`to mean merely administering the game. Stephenson argued that “play between”
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`required competition between the human player and a host computer opponent.
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`The Board instituted Trial on November 19, 2013, relying exclusively on
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`Walker. Paper 8 “Decision” at 21. The Board found that Petitioners have
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`demonstrated that there is a reasonable likelihood that Petitioners will prevail with
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`respect to claims 1-3, 5 and 8-19 on the grounds that these claims are anticipated
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`6
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`by Walker. Id. at 13. However, the Board found that the Petitioners did not
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`demonstrate a reasonable likelihood that they would prevail with respect to claims
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`4 and 6 on the grounds that these claims are anticipated by Walker. Instead, the
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`Board found that Petitioners established a reasonable likelihood of prevailing as to
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`claims 4, 6 and 7 being obvious in view of Walker. Id. at 19-20. The Board
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`denied as redundant Petitioners’ grounds that claims 1-3, 5 and 8-19 are obvious in
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`view of Walker and that claims 6 and 7 are obvious in view of Walker in further
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`view of Demar and/or Hamilton. Id. at 20.
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`On January 16, 2014, a conference call was held between counsel for the
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`respective parties and Judges Medley, Turner, and Wood regarding Patent Owner
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`possibly filing a motion to amend. Paper 21 at 1-2. Based in part on the Board’s
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`guidance, Patent Owner has elected to pursue amended claims in an ex parte
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`reexamination proceeding and not in this proceeding. Patent Owner anticipates
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`filing a request for ex parte reexamination of the ‘237 patent. Patent Owner will
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`also file an updated mandatory notice pursuant to 37 C.F.R. §42.8(a)(3) as
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`requested by the Board.
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`7
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
`
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`B. The ‘237 Patent is Directed to Playing Games in a Format that
`Allows Indexing The Absolute Skill of Players, Not Merely
`Playing Games Over the Internet Administered By A Computer.
`
`The ‘237 patent discloses tournament systems that, among other things,
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`
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`allow players to obtain a reliable measure of their skill. Ex. 2007 “Friedman
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`Declaration”1 at ¶ 13. Petitioners’ expert, Dr. Whitehead confirms that is how one
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`of skill in the art would understand the ‘237 patent. Ex. 2008 “Whitehead Depo.
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`Tr.” at 114:13-115:1. It does this by having a human player compete in a game of
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`skill in a qualifying round against a host computer opponent. Ex. 2002 at Abstract
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`(“In the qualifying round, a player competes against a host computer.”); Ex. 2008
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`at 104:1-7 (Petitioners’ expert, Dr. Whitehead, agreeing that the ‘237 patent
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`discloses where a computer plays head-to-head against a human in a game of skill);
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`Ex. 2007 at ¶ 14. The player’s score is evaluated and the player is classified into a
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`predetermined level of performance that matches his results. Ex. 2007 at ¶ 15; Ex.
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`2002 at 3:66-4:5; see also 3:15-17 (“At least one player participates in the
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`qualifying round 20 against a host computer.”). In the ‘237 patent, the player is
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`classified into a predetermined level of performance based on absolute criteria—
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`not criteria relative to other players’ performance. Ex. 2007 at ¶ 15; Ex. 2008 at
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`116:1-13 (Dr. Whitehead agreeing that the ‘237 patent addresses player’s playing a
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`1 Submitted herewith as Exhibit 2007 is the Declaration of Stacy Aaron Friedman
`In Support of Patent Owner’s Response.
`8
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`host computer opponent and using that as a gauge of absolute skill); see also Ex.
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`2008 at 114:13-115:1.
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`For example, the ‘237 patent illustrates a preferred embodiment of the
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`invention where “[o]nce a player has obtained sufficient points which would
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`classify him in the top most level of performance, the player would not have to
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`continue with the game or games.” Ex. 2002 at Col. 3:63-65. In the ‘237 patent,
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`the score of the other players does not matter in determining what level of
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`performance is achieved—a qualifying performance level is not relative to other
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`players. Ex. 2007 at ¶ 16. Figure 1 illustrates an example tournament according to
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`the invention where a player competes against a host computer and is classified
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`into a level of performance independent of other players:
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`9
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`Ex. 2002 at Fig. 1.
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`Figure 1 of the ‘237 patent shows that a player competes in a game of skill
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`versus a host computer in box 22. Id. The system analyzes the player’s results in
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`box 24 and based on that player’s results determines if the player meets
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`predetermined criteria to classify them in a predetermined level of performance
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`(“LOP”). Id. If a player is classified into an appropriate level of performance, an
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`10
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`award is distributed to them. Id. The system also determines, based on
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`predetermined criteria, whether the level of performance obtained is sufficient to
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`qualify them to play in a playoff round. Id; Ex. 2007 at ¶ 18. The summary of the
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`invention explains that the “qualifying round is played between a single player and
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`a host computer.” Id. at Col. 2:2-3. The summary of the invention states that if that
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`single player, in the qualifying round, “satisfies a predetermined criteria specific to
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`a level of performance, the player would then be classified a player of that level.”
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`Id. at Col. 2:32-34 (emphasis added). As shown by in the summary of the
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`invention, all embodiments require a single human playing against a host computer
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`opponent in a qualifying round. In every embodiment of the invention, the player
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`is classified into a level of performance by the single player’s competition against a
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`host computer opponent in the qualifying round. Id. at Col. 2:2-3 (“qualifying
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`round is played between a single player and a host computer), 2:32-36 (qualifying
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`round performance determines level of performance classification).
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`In the playoff round, the player will play against a host computer and her
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`score—for the first time—will be compared to others in her playoff round to
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`determine a playoff winner and player rank. Id. at Col. 5:33-58. In the playoff
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`round, players play the game of skill against the host computer under the same
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`game conditions along with other players playing the game of skill against a host
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`11
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`computer, and their scores are compared to determine a winner and subsequent
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`Case No. IPR2013-00289
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`Patent Owner’s Response
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`ranking. Id. 2:38-54; Ex. 2007 at ¶¶ 19-20.
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`Having a single human player compete against a host computer opponent in
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`a qualifying round to determine absolute skill is a significant advancement over the
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`prior art. Ex. 2007 at ¶ 21. The claimed invention acts as a “control” because the
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`host computer provides a consistent opponent response to each player’s like play.
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`Id. This method increases reliability and consistency and decreases the
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`uncontrolled variables of player evaluations that are otherwise inherent in
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`evaluations based on human players playing against one another. Id. This novel
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`method for playing a game of skill tournament allows a player to “obtain a reliable
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`index as to his skill as compared to other competitors competing under the same
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`game conditions.” Id. at 1:59-62; see also Id. at Abstract (“method for a game of
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`skill tournament that is challenging and also provides the player a reliable gauge of
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`his skill level as compared to other players.”); Id. at 2:43-45 (“…play the game of
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`skill against the host computer under the same rules and conditions…”). This
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`provides a better system for determining a player’s skill by removing the variables
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`and inconsistencies caused by human opponents. Ex. 2007 at ¶¶ 21, 122.
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`Walker recognized that handicap systems popular in golf are problematic as
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`a player’s results must be tracked over a series of games to be useful. Ex. 1002 at
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`12
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`4. Walker attempts to solve the problem of maintaining a player’s handicap by
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner’s Response
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`using a computer tournament and database to administer games and thus track
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`players’ performance and handicaps. Ex. 2007 at ¶¶ 77, 109. Walker discloses a
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`computer-based tournament system and database that more easily and accurately
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`implements an old way of accounting for differences in players’ skill levels. Id.
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`However, Walker’s computer implementation of the old handicapping
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`systems faces new challenges administering tournaments over a distributed
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`network. For example, players can create fake user names and register for
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`tournaments without their handicap. Id. at ¶ 77. This allows unscrupulous players
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`to unfairly compete against players of much lower skill without being subject to
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`the equalization of the handicap system. Id.
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`Stephenson’s claimed invention took an entirely novel approach and forces
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`tournament participants to compete against a host computer which classifies them
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`based on absolute skill independent of handicaps. It provides a reliable index as to
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`a player’s performance by removing the human element from the competition; it
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`reduces collusion among players and is scalable both in terms of players and
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`various skill levels. Id. at ¶ 21. Because awards are involved, human players have
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`an incentive to “game” the system. A computer opponent, however, does not. By
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`eliminating the second human from the qualifying process, the opportunities for
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`fraud are reduced accordingly. Ex. 2007 at ¶ 21; see also Ex. 2008 at 206:10-16
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`(Petitioners’ expert admitting that this human-to-computer competition reduces
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`cheating).
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`The ‘237 patent also has various levels of performance. Ex. 2002 at 3:59-
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`61. In the qualifying round it classifies players into predetermined performance
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`levels. In one embodiment, the system monitors the player’s performance in the
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`qualifying round and “[o]nce the player has obtained sufficient points which would
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`classify him in the top most level of performance, the player would not have to
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`continue with the game.” Id. at 3:63-65. In another embodiment, once the player
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`completes his play against the host computer, the results are analyzed to determine
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`if they satisfy criteria that allow the player to be classified into a specific level of
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`performance. Id. at 3:66-4:5. Players within specific levels of performance, who
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`have qualified for the playoff round, play the game of skill a second time against a
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`host computer, and their results are compared to determine a winner. Id. at 4:18-21,
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`39-51.
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`Petitioners support their erroneous argument as to the “inventive insight” of
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`Stephenson by paraphrasing a quote from the patent as “expressing need to allow
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`people to play competitive games ‘without traveling long distances and incurring
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`the expenses of meeting at a central contest site.’” Pet. at p. 4. Petitioners’
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`selective quote of the specification leaves out critical context that reveals that the
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`invention actually was directed to gauging skill levels better than the prior art,
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`including (like Walker) art which used handicapping to correct for varied skill
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`levels. The entire sentence cited by Petitioners, with the omitted portion
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`boldfaced, states as follows: “There exists the need for a gaming format which
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`allows a player to gauge the level of skill he possesses as compared to other
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`players, without traveling long distances and incurring the expenses of meeting at
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`a central contest site.” Ex. 2002 at 1:28-32. The specification goes on to criticize
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`the prior art and state:
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`These [prior art] references do not allow a player to gauge his level of
`performance by allowing the player to test his skill and ability against
`the tournament sponsor and other players during the same
`tournament. There is a need for a tournament which allows for a
`player to compete and obtain a reliable index as to his skill as
`compared to other competitors competing under the same game
`conditions…
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`Id. at Col. 1:55-63 (emphasis added). Thus, when read as a whole, the
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`specification supports the construction of the claims as directed to players
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`competing against the host computer, not the computer merely administering the
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`game.
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`Petitioners thus improperly characterize Stephenson’s invention as merely
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`extending common tournament formats to the Internet. As shown above, the
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`invention is directed to gauging player’s absolute abilities.
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`C. Walker Lacks Disclosure of Key Limitations and Is
`Fundamentally Different From The ‘237 Patent’s Claimed
`Inventions.
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`The Walker reference discloses a different tournament system than the
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`inventions claimed in the ‘237 patent.
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`i. Walker fails to disclose a player competing against a host
`computer opponent.
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`First, Walker does not disclose that each human player competes against the
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`host computer opponent in her qualifying round. Ex. 2007 at ¶ 78. Walker
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`discloses no means by which results can be evaluated against other players
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`competing against a host computer. In the ‘237 patent, human players play against
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`the host computer, which can respond consistently to each player’s actions under
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`the same game conditions (i.e., the same shuffle, cards dealt, cards played, etc.),
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`and players may be more reliably evaluated and classified into performance levels
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`with less risk of cheating. Unlike the ‘237 patent, the computer in Walker simply
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`sponsors or administers game play—but does not act as an opponent. Ex. 1002 at
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`13-15 (“Each game session is further broken down into one or more challenges,
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`which are the puzzles, trivia questions, or games in which the players compete.”)
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`(emphasis added). Walker does not disclose a computer system that acts as an
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`opponent—it either sponsors a game, such as trivia, or allows human players to
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`compete directly against one another. Petitioners’ expert agreed that the reference
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`to trivia in Walker did not disclose that the human competes against a host
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`computer. Ex. 2008 at 173:1-175:12 (“Q. So would you agree with me that if the
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`facilitation of the game has an ability to adapt to or react to the human player’s
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`play, you would consider that to be head-to-head competition between the human
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`player and the computer player? A. No, I would not consider that head-to-head
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`competition.”); 164:20-165:7.
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`Walker is directed to competition between human players. Indeed Walker
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`highlights such human-to-human competition as necessary: “Player curiosity as to
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`which team was really the best would not be satisfied without a head to head
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`competition.” Ex. 1002 at 5:10-12. Walker’s Summary of The Invention confirms
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`the importance of human-to-human competition where it states that a player’s
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`“unique identifier allows other players to know whom they are competing against.”
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`Ex. 1002 at 6:15-16. Walker also discloses that the database can store information
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`about a player’s favorite opponents. Ex. 1002 at 13: 8-11. Walker teaches that
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`humans playing humans addresses the problems purportedly solved by Walker.
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`Nothing in Walker suggests any benefit to, or reason for, players competing
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`against a computer opponent.
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`ii. Walker does not disclose a qualifying round that determines
`a player’s performance level based on a single player’s
`performance.
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`Walker also does not disclose a tournament system that determines if a
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`
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`player qualified based on a single player’s performance. Rather Walker teaches
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`determining if a player qualified based on his relative performance compared to
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`other players in the qualification round. Walker specifically teaches that
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`qualification is determined after all players are done playing and bases its
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`determination on the relative performance of the players in the qualifying round:
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`Another preferred embodiment includes the step of determining
`whether a player has qualified for advancement to the next game
`session. This includes the step of the central controller reviewing the
`player’s score after the just-concluded game session. This score is
`compared to the scores obtained by all of the other players in the same
`session.
`Ex. 1002 at 14. One of skill in the art reading this paragraph, including the
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`preferred “qualifying criteria” would understand those to be relative to all of the
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`players in the game session. Ex. 2007 at ¶ 86. Walker does not disclose, teach or
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`suggest a tournament method that determines