`
`
`
`
`Mail Stop Ex Parte Reexamination
`ATTN: Central Reexamination Unit
`Commissioner of Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`OF U.S. PATENT NO. 6,174,237 INCLUDING AMENDMENT
`
`7669387_5
`
`i 
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Request for Ex Parte Reexamination
`under 35 U.S.C. § 302 and
`37 C.F.R. § 1.510 with Amendment
`Pursuant to § 1.510(e)
` 
`
`
`
`|
`|
`|
`|
`|
`|
`|
`|
`|
`|
`|
`|
`|
`
`In re Ex Parte Reexamination of:
`
`U.S. Patent No. 6,174,237
`
`Inventor: John H. Stephenson
`
`Issue Date:
`
`
`
`
`
`For: Method for a Game of Skill
`
`Tournament
`
` 
`
`January 16, 2001
`App. No. 09/316,840
`Filed: May 21, 1999
`
`Game Show Network Ex. 1009
`IPR2013-00289
`
`Game Show Network Ex. 1009
`IPR2013-00289
`
`

`
` 
`
`
`I. 
`II.  
`III. 
`IV. 
`
`V. 
`
`VI. 
`
`VII. 
`VIII. 
`IX. 
`X. 
`XI. 
`
`
`
`
`Table of Contents
`
`Introduction ..................................................................................................................................... 1 
`Background of Relevant Technology ............................................................................................... 2 
`Procedural Background .................................................................................................................... 3 
`Relevant Legal Standards ................................................................................................................. 4 
`A. 
`Reliance on PTAB’s institution of inter partes review of the ‘237 Patent .......................... 4 
`Claims subject to the ex parte reexamination .................................................................... 4 
`B. 
`C. 
`Claim Interpretation ........................................................................................................... 5 
`D. 
`Substantial New Question Based on New Prior Art ............................................................ 8 
`E. 
`Anticipation ......................................................................................................................... 8 
`Statements Pointing Out Each Substantial New Question of Patentability Based on Prior Patents 
`and Printed Publications .................................................................................................................. 8 
`A. 
`Walker presents new, non‐cumulative, and relevant prior art technological teachings. .. 9 
`B. 
`There is a substantial likelihood that a reasonable Examiner would consider Walker 
`Publication important in deciding whether or not claim 1 of the ‘237 Patent are 
`patentable. .......................................................................................................................... 9 
`Identification of Every Claim for Which Reexamination is Requested, and a Detailed Explanation 
`of the Pertinence and Manner of Applying the Cited Prior Art to Every Claim for Which 
`Reexamination is Requested.......................................................................................................... 10 
`37 C.F.R. § 1.510(b)(3) ................................................................................................................... 14 
`37 C.F.R. § 1.510(b)(4) ................................................................................................................... 14 
`37 C.F.R. § 1.510(b)(5) ................................................................................................................... 15 
`PROPOSED AMENDMENTS ............................................................................................................ 15 
`SUMMARY ...................................................................................................................................... 19 
`
`ii 
`
`

`
` 
`
`I.
`
`Introduction
`
`U.S. Patent 6,174,237 (“the ‘237 Patent”) (Exhibit A) is the subject of pending litigation
`
`in District Court as well as a pending inter partes review. In the inter partes review, the Patent
`
`Trial and Appeal Board (“PTAB”) determined that there is a reasonable likelihood that the
`
`“Petitioner would prevail [in its invalidly assertion] with respect to claims 1-19 of the ‘237
`
`Patent.” PTAB November 19, 2013 Decision, Institution of Inter Partes Review, Case IPR2013-
`
`00289 (“PTAB Decision, Institution of Inter Partes Review”) (Exhibit B) at 2, 21. The inter
`
`partes review was instituted based upon prior art including WO 97/39811 to Walker Asset
`
`Management, L.P. (“Walker”) (Exhibit C), which was not previously considered by the Patent
`
`and Trademark Office (“PTO”).
`
`The fact that an inter partes review has been instituted on the ‘237 Patent is of critical
`
`relevance to the present request for ex parte reexamination. The legal standard for granting a
`
`request for an inter partes review is higher than the legal standard for granting a request for an ex
`
`parte reexamination (i.e., the “reasonable likelihood” of prevailing standard of the inter partes
`
`review is a more restrictive, higher standard than the “substantial new question of patentability”
`
`standard that governs ex parte reexaminations). Neste Oil Oyj v. Dynamic Fuels, LLC, No. 12-
`
`1744-GMS, 2013 U.S. Dist. LEXIS 92416, at *13-14 (D. Del. July 2, 2013) (Exhibit D);
`
`Capriola Corp. v. LaRose Indus., LLC, No. 8:12-cv-2346-T-23TBM, 2013 U.S. Dist. LEXIS
`
`65754, at *5-6 (M.D. Fla. Mar. 11, 2013) (Exhibit E).
`
`Therefore, when the PTAB determines that the standard for the institution of an inter
`
`partes review has been met, the standard for granting an ex parte reexamination is also met as a
`
`matter of law. The PTAB recently confirmed this in its Idle Free decision. Idle Free Systems,
`
`Inc. v. Bergstrom, Inc., Case IPR2012-00027 (JL) Patent 7,591,303, Patent Trial and Appeal
`
`7669387_5
`
`1
`
`

`
` 
`
`Board Representative Orders, Decisions and Notices, 2013 Pat. App. LEXIS 6302, June 11,
`
`2013, Decided (Exhibit F). Here, the PTAB’s conclusion that there is a reasonable likelihood that
`
`the Petitioner, Game Show Network, LLC and WorldWinner.com. Inc. (collectively referred to
`
`herein as “Game Show Network”), will prevail in its invalidity assertion against the ‘237 Patent
`
`serves as the basis for the Inventor’s, John H. Stephenson, present request for ex parte
`
`reexamination.
`
`Included as part of the request for ex parte reexamination is an amendment (new claim
`
`20) filed in accordance with 37 C.F.R. 1.510(e). Applying the patentee’s proposed claim
`
`construction asserted in the inter partes review, new claim 20 clarifies the subject matter of
`
`original claim 1. New claim 20 is narrower in scope than claim 1 as construed by the PTAB and
`
`is patentable over Walker even if it is finally determined in the inter partes review that original
`
`claim 1 is not.
`
`The PTAB analysis is subject to change during the pending inter partes review based on
`
`the parties’ pleadings and arguments at the hearing. Further, any final decision of the PTAB is
`
`subject to appeal by either party. The statements made herein are not intended to waive any right
`
`to appeal or otherwise contest the PTAB finding in the inter partes review. Regardless of the
`
`outcome of the inter partes review, the present request for reexamination will not be moot. At
`
`the very least, an issue will remain as to whether new claim 20, which has a different scope than
`
`any of the claims pending in the inter partes review, is patentable over Walker.
`
`
`
`II.
`
`Background of Relevant Technology
`
`
`
`
`
`As explained in the PTAB’s Decision, Institution of Inter Partes Review:
`
`[T]he ‘237 Patent is related to tournament play having a qualifying round and a
`playoff round. The qualifying round is played between a player, through a
`
`2
`
`

`
` 
`
`computer terminal, and a host computer. The playoff round is played between
`those players obtaining a predetermined level of performance in the qualifying
`round and the host computer. The playoff round is played under the same rules
`and conditions as in the qualifying round, except that all the players are playing
`simultaneously within a specific time frame. Ex. 1001, 1:15-24. Awards are
`distributed to players in both the playoff and qualifying rounds.
`
`
`The PTAB Decision, Institution of Inter Partes Review, at 3.
`
`
`
`III.
`
`Procedural Background
`
`
`
`The inventor and patent owner, John Stephenson (“Stephenson”) manufactures and sells
`
`gaming products that are protected by the ‘237 Patent. In 2013, Stephenson asserted the ‘237
`
`Patent against Game Show Network in an infringement proceeding in the U.S. District Court of
`
`Delaware. Stephenson v. Game Show Network, LLC, No. 12-614-SLR (D. Del. Filed Mar. 27,
`
`2013). The Stephenson litigation has been stayed pending inter partes review of the ‘237 Patent.
`
`Prior to the stay, the parties had exchanged some discovery, but neither party had filed any
`
`substantive briefs.
`
`On May 17, 2013, Game Show Network filed a petition requesting inter partes review of
`
`claims 1-19 of the ‘237 Patent, citing Walker as new prior art not before the PTO during
`
`prosecution. On November 19, 2013, the PTAB granted Game Show Network’s request to
`
`institute inter partes review of the ‘237 Patent based upon Walker, alone and in combination
`
`with secondary references.
`
`Based upon guidance from the PTAB Board (see, e.g., the Idle Free decision),
`
`Stephenson decided to file the present request for ex parte reexamination, asking the PTO to
`
`consider a claim amendment adding new claim 20, which is fully supported by the specification
`
`of the ‘237 Patent. New claim 20 differs in scope from original claim 1. The limitations added to
`
`claim 20 further distinguish claim 20 from Walker.
`
`
`
`3
`
`

`
` 
`
`
`
`IV.
`
`Relevant Legal Standards
`
`A.
`
`Reliance on PTAB’s institution of inter partes review of the ‘237 Patent
`
`The reasonable likelihood of prevailing legal standard for granting an inter partes review
`
`is a higher, more restrictive standard than the substantial new question of patentability legal
`
`standard that governs reexaminations. Neste Oil Oyj v. Dynamic Fuels, LLC, No. 12-1744-GMS,
`
`2013 U.S. Dist. LEXIS 92416, at *13-14 (D. Del. July 2, 2013) (Exhibit D); Capriola Corp. v.
`
`LaRose Indus., LLC, No. 8:12-cv-2346-T-23TBM, 2013 U.S. Dist. LEXIS 65754, at *5-6 (M.D.
`
`Fla. Mar. 11, 2013) (Exhibit E). The PTAB recently confirmed that in situations where the
`
`PTAB has determined that the standard for the institution of a inter partes review has been met,
`
`the reexamination standard is also met as a matter of law. Idle Free Systems, Inc. v. Bergstrom,
`
`Inc., Case IPR2012-00027 (JL) Patent 7,591,303, Patent Trial and Appeal Board Representative
`
`Orders, Decisions and Notices, 2013 Pat. App. LEXIS 6302, June 11, 2013, Decided (Exhibit F).
`
`The PTAB explicitly held:
`
`[A] patent owner may file a request for ex parte reexamination, relying on the
`Board's conclusion of a petitioner's having shown reasonable likelihood of
`success on certain alleged grounds of unpatenatability as raising a substantial new
`question of unpatentability.
`
`
`Id. at 6.
`
`
`
`B.
`
`Claims subject to the ex parte reexamination
`
`Under 37 C.F.R. § 1.510(e), a patent owner may include a proposed amendment with his
`
`or her request. Any such amendment must be in accordance with 37 C.F.R. §§ 1.530(d)–(j). See
`
`MPEP § 2250 for requirements of an amendment in a reexamination proceeding. If an
`
`amendment is submitted to add claims to the patent being reexamined, then excess claims fees
`
`
`
`4
`
`

`
` 
`
`pursuant to 37 C.F.R. 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added
`
`claims. See MPEP § 2250.03. Amendments may also be proposed by patent owners in a
`
`statement under 37 C.F.R. 1.530(b) and (c) or during the ex parte reexamination prosecution (37
`
`C.F.R. 1.550(b)). See also MPEP §§ 2234 and 2250.
`
`The request should be decided on the wording of the patent claims in effect at that
`time (without any proposed amendments). The decision on the request will be
`made on the basis of the patent claims as though the proposed amendment had not
`been presented. However, if the request for reexamination is granted, all
`subsequent reexamination prosecution and examination should be on the basis of
`the claims as amended.
`
`
`MPEP § 2221.
`
`
`
`C.
`
`Claim Interpretation
`
`Although the PTAB preliminary claim construction from the inter partes review is both
`
`subject to change and also appealable by either party, it is highly relevant to the present request
`
`because the PTAB uses the same standard for claim construction in an inter partes review as it
`
`does for ex parte reexaminations. Based on the PTAB Decision, Institution of Inter Partes
`
`Review, the claim terms were “given their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).” Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and customary meaning,
`
`as would be understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`
`claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994).” Similarly, “during reexamination, claims are given the
`
`broadest reasonable interpretation consistent with the specification and limitations in the
`
`specification are not read into the claims. (In re Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed.
`
`
`
`5
`
`

`
` 
`
`Cir. 1984)).” MPEP § 2258(I)(G). Accordingly, the standard used to construe claims in an inter
`
`partes review is the same standard used in ex parte reexaminations. Some of the terms of the
`
`claims of the ‘237 Patent have been construed by the PTAB, as summarized in the chart below.
`
`PTAB Preliminary Claim Construction
`No relevant PTAB construction
`
`The PTAB construed “game of skill” as meaning
`“a game where a player’s knowledge and
`experience influences the outcome of the game.”
`Decision at 6. It construed this claim element “as
`requiring a single human player and a host
`computer” excluding competition between two or
`more human players in a game in the qualifying
`round. Decision at 6. In addition, contrary to
`Patentee’s position, the PTAB construed this
`element to not require head-to-head competition
`between the single player and the host computer
`(i.e., not requiring that the host computer play the
`game). Decision at 6. In summary, the PTAB
`construed this element as “playing a game of skill
`in a qualifying round, where the game includes
`only one human player and at least administered
`by a host computer.” Decision at 9.
`
`
`
`‘237 Patent Claim Elements
`1. A method of playing a game of skill
`tournament having a qualifying round
`and a playoff round, and played over
`an interactive computer system, said
`interactive computer system having a
`host computer system, a plurality of
`terminals computers and compatible
`software, said method comprising the
`following steps:
`a. playing a game of skill in a
`qualifying round between a single
`player and the host computer;
`
`
`
`6
`
`

`
`PTAB Preliminary Claim Construction
`The PTAB construed steps b and c to be
`performed in any order including simultaneously.
`Decision at 11.
`
`
`
`No relevant PTAB construction
`
`The PTAB construed “playing said game of skill
`in a playoff round between said player and the
`host computer simultaneously along with other
`players” as “playing the game of skill in a playoff
`round at least administered by the host computer
`and in which the human player involved in the
`qualifying round and at least two other human
`players are playing at the same time.” Decision at
`9. The PTAB decided that this claim language
`does “not require the computer to play the game
`in the sense that there is head-to-head competition
`between the computer and the single (human)
`player.” Decision at 15.
`The PTAB construed “subsequent ranking of
`players” as “the relative standing or position of
`the players, which does not exclude the rating of
`a player.” Decision at 12.
`No relevant PTAB construction
`
` 
`
`‘237 Patent Claim Elements
`b. evaluating the results of said
`qualifying round to determine if said
`player qualifies to be classified within
`a specific performance level from a
`plurality of performance levels ranging
`from a low performance level to a high
`performance level;
`
`c. evaluating the results of said
`qualifying round to determine if said
`player qualifies to be classified within
`a qualifying performance level taken
`from said plurality of performance
`levels;
`
`d. distributing to said player a
`performance level award, said
`performance level award being
`dependent upon the specific
`performance level obtained;
`e. playing said game of skill in a
`playoff round between said player and
`the host computer simultaneously
`along with other players, wherein each
`player has been classified within a
`qualifying performance level;
`
`f. evaluating the results of said playoff
`round to determine a tournament
`winner and subsequent ranking of
`players; and
`g. distributing tournament awards to
`tournament participants.
`
`
`
`
`7
`
`

`
` 
`
`D.
`
`Substantial New Question Based on New Prior Art
`
`A substantial new question of patentability is raised when the teaching of the prior art
`
`would “be important in deciding whether or not the claim is patentable.” MPEP § 2242. A
`
`substantial new question need only be raised as to one claim of the patent. Id. A prima facie case
`
`of unpatentability need not exist in order for a substantial new question of patentability to exist.
`
`Id. In other words, even if the Examiner would not necessarily reject the claim as anticipated or
`
`obvious in view of the prior art, a substantial new question may still be present. Id.
`
`
`
`E.
`
`Anticipation
`
`A claim is anticipated “if each and every element as set forth in the claim is found, either
`
`expressly or inherently described in a single prior art reference.” MPEP § 2131; see also Hazani
`
`v. ITC, 126 F.3d 1473, 1479 (Fed. Cir. 2003). An anticipatory reference need not use identical
`
`wording to that found in the patent at issue. MPEP § 2131 (“[I]dentity of terminology is not
`
`required.”); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir.
`
`1991) (The “anticipatory reference…need not duplicate word for word what is in the claims.”).
`
`
`
`V.
`
`Statements Pointing Out Each Substantial New Question of Patentability Based on Prior
`Patents and Printed Publications
`
`
`
`A substantial new question is raised when the teaching of the prior art would “be
`
`important in deciding whether or not the claim is patentable.” MPEP § 2242(I). Here, the PTAB,
`
`in a pending inter partes review, has taken the position that the new art, Walker, presents a prima
`
`facie case of unpatentability. The PTAB Decision, Institution of Inter Partes Review is objective
`
`evidence supporting the conclusion that Walker creates a substantial new question of
`
`patentability.
`
`
`
`8
`
`

`
` 
`
`Walker is prior art, it is new, it is not cumulative, and, according to the PTAB
`
`Decision, Institution of Inter Partes Review, it discloses all of the limitations of claim 1. None
`
`of the references found to be prior art and previously considered by the Examiner during the
`
`original prosecution or the subsequent reexamination included all of the limitations of claim 1.
`
`The PTAB Decision, Institution of Inter Partes Review states that Walker anticipates and at
`
`the very least, renders obvious claim 1. Decision at 4. Accordingly, Walker presents a
`
`substantial new question of patentability of claim 1 of the ‘237 Patent.
`
`
`
`A. Walker presents new, non-cumulative, and relevant prior art technological
`teachings.
`
`Walker was published on October 30, 1997, which is more than one year prior to the
`
`filing date of May 21, 1999 for the ‘237 Patent. Walker therefore qualifies as prior art under 35
`
`U.S.C. § 102(b).
`
`Walker was not cited in the original prosecution history. It is therefore a new prior art
`
`reference.
`
`Walker is not cumulative. As indicated in the Decision, Institution of Inter Partes
`
`Review, Walker demonstrates features found absent from the prior art considered by the
`
`Examiner during prosecution, which will be discussed in further detail below.
`
`
`
`B.
`
`There is a substantial likelihood that a reasonable Examiner would consider
`Walker Publication important in deciding whether or not claim 1 of the ‘237
`Patent are patentable.
`
`The PTAB’s November 19, 2013 Decision, Institution of Inter Partes Review, finds that
`
`Walker discloses the same method that is the subject of claim 1 of the ‘237 Patent. As discussed
`
`herein, Walker discloses a method and system for a distributed electronic tournament system in
`
`
`
`9
`
`

`
` 
`
`which remotely located players participate in a tournament through input/output devices
`
`connected to a central controller that manages the tournament. According to the PTAB
`
`construction of claim 1 and the PTAB interpretation of Walker, Walker anticipates claim 1 of the
`
`‘237 Patent.
`
`
`
`VI.
`
`Identification of Every Claim for Which Reexamination is Requested, and a Detailed
`Explanation of the Pertinence and Manner of Applying the Cited Prior Art to Every
`Claim for Which Reexamination is Requested
`
`Requester requests reexamination of claim 1 of the ‘237 Patent. The following is a
`
`detailed explanation of the pertinency and manner of applying the prior art cited above in Section
`
`V to every claim for which reexamination is requested.
`
`
`
`Independent claim 1 of the ‘237 Patent recites:
`
`A method of playing a game of skill tournament having a qualifying round
`1.
`and a playoff round, and played over an interactive computer system, said
`interactive computer system having a host computer system, a plurality of
`terminals computers and compatible software, said method comprising the
`following steps:
`
`a. playing a game of skill in a qualifying round between a single player
`and the host computer;
`
`b. evaluating the results of said qualifying round to determine if said
`player qualifies to be classified within a specific performance level from a
`plurality of performance levels ranging from a low performance level to a high
`performance level;
`
`c. evaluating the results of said qualifying round to determine if said
`player qualifies to be classified within a qualifying performance level taken from
`said plurality of performance levels;
`
`d. distributing to said player a performance level award, said performance
`level award being dependent upon the specific performance level obtained;
`
`e. playing said game of skill in a playoff round between said player and
`the host computer simultaneously along with other players, wherein each player
`has been classified within a qualifying performance level;
`
`f. evaluating the results of said playoff round to determine a tournament
`winner and subsequent ranking of players; and
`
`g. distributing tournament awards to tournament participants.
`
`10
`
`
`
`
`
`

`
` 
`
`According to the PTAB’s November 19, 2013 Decision, Institution of Inter Partes
`
`Review, Walker anticipates claim 1 as it discloses each and every element of the claim. For the
`
`PTAB detailed analysis, see the chart below.
`
` 
`
`‘237 Patent Claim Element
`
`1. A method of playing a game of skill
`tournament having a qualifying round
`and a playoff round, and played over
`an interactive computer system, said
`interactive computer system having a
`host computer system, a plurality of
`terminals computers and compatible
`software, said method comprising the
`following steps:
`
`
`PTAB’s Analysis in Support its Conclusion That There is a Reasonable Likelihood That
`Claim 1 is Anticipated by the Walker Prior Art Reference
`
`PTAB Claim Construction and Analysis of the
`Walker Reference
`The PTAB found that “Walker describes a
`method and system for distributed electronic
`tournament system in which remotely located
`players participate in a tournament through
`input/output devices connected to a central
`controller that manages the tournament. Ex. 1002,
`Abstract.” Decision at 13. More particularly, the
`PTAB found that “[f]igure 1 of Walker shows a
`plurality of input/output (I/O) devices 104, 106
`(plurality of terminals) connected to a central
`controller 102 (host computer) through a network
`108, such as the Internet. Id. At 9. Operating
`system software runs the central controller
`hardware and controls and coordinates all of the
`tournament software applications, including
`running tournament games, registering players,
`accepting entry fees, and coordinating prize
`payment. Id.” Decision at 14.
`
`Note: Ex. 1002, which is referenced in the above
`quote is a copy of the ‘237 Patent, which is
`attached hereto as Exhibit A. The PTAB cited to
`the Petition for Inter Partes Review as well as
`Ex. 1005 of the Petition for the evidence
`supporting its conclusion that Walker anticipates
`claim 1. The Petition for Inter Partes Review
`along with its exhibits are attached as Exhibit G.
`The PTAB construed “game of skill” as meaning
`“a game where a player’s knowledge and
`experience influences the outcome of the game.”
`Decision at 6. It construed this claim element “as
`requiring a single human player and a host
`
`a. playing a game of skill in a
`qualifying round between a single
`player and the host computer;
`
`
`
`11
`
`

`
` 
`
`‘237 Patent Claim Element
`
`
`PTAB’s Analysis in Support its Conclusion That There is a Reasonable Likelihood That
`Claim 1 is Anticipated by the Walker Prior Art Reference
`
`PTAB Claim Construction and Analysis of the
`Walker Reference
`computer” excluding competition between two or
`more human players in a game in the qualifying
`round. Decision at 6. In addition, contrary to
`Patentee’s position, the PTAB construed this
`element to not require head-to-head competition
`between the single player and the host computer
`(i.e., not requiring that the host computer play the
`game). Decision at 6. In summary, the PTAB
`construed this element as “playing a game of skill
`in a qualifying round, where the game includes
`only one human player and at least administered
`by a host computer. Decision at 9.
`
`The PTAB found that Walker discloses that
`“[p]layers may participate in various strategy
`games (games of skill), such as chess, checkers,
`bridge, or puzzles like crossword or jigsaw. Id. at
`15; 16:4-5. Walker describes a ‘qualifying round’
`of play in which a player may qualify to advance
`to the next level. Id. at 14:6-15. The host
`computer 102 participates in the qualifying
`rounds by administering the game….” Decision at
`14.
`The PTAB construed steps b and c to be
`performed in any order including simultaneously.
`Decision at 11.
`
`The PTAB found that Walker discloses that “[t]he
`host computer 102 participates in the qualifying
`round by administering the game, such as by
`keeping a player’s score and determining whether
`the player qualifies to advance to the next round
`(e.g., playoff round.). Id. At 15:15-20. Walker
`describes single-player games, such as trivia and
`crosswords puzzles. Id. At 3:3-10; 15:11; 17-18.
`For the example of trivia play, Walker describes a
`single human player having completed twenty
`questions of the first round (qualifying round),
`and that the host computer then would determine,
`based on the player’s performance, whether the
`
`b. evaluating the results of said
`qualifying round to determine if said
`player qualifies to be classified within
`a specific performance level from a
`plurality of performance levels ranging
`from a low performance level to a high
`performance level;
`
`c. evaluating the results of said
`qualifying round to determine if said
`player qualifies to be classified within
`a qualifying performance level taken
`from said plurality of performance
`levels;
`
`
`
`12
`
`

`
` 
`
`
`PTAB’s Analysis in Support its Conclusion That There is a Reasonable Likelihood That
`Claim 1 is Anticipated by the Walker Prior Art Reference
`
`PTAB Claim Construction and Analysis of the
`Walker Reference
`player had qualified to advance to the next round.
`Id. At 15:15-20.” Decision at 14-15.
`
`
`‘237 Patent Claim Element
`
`d. distributing to said player a
`performance level award, said
`performance level award being
`dependent upon the specific
`performance level obtained;
`
`e. playing said game of skill in a
`playoff round between said player and
`the host computer simultaneously
`along with other players, wherein each
`player has been classified within a
`qualifying performance level;
`
`The PTAB found that Walker “describes that the
`tournament system evaluates the results of play,
`and as the tournament processes, more and more
`players are eliminated. Moreover, when a player
`advances from one game session to the next, the
`player may qualify for a prize or recognition. Id.
`at 15:29 to 16:2.” Decision at 15.
`The PTAB construed “playing said game of skill
`in a playoff round between said player and the
`host computer simultaneously along with other
`players” as “playing the game of skill in a playoff
`round at least administered by the host computer
`and in which the human player involved in the
`qualifying round and at least two other human
`players are playing at the same time.” Decision at
`9. The PTAB decided that this claim language
`does “not require the computer to play the game
`in the sense that there is head-to-head competition
`between the computer and the single (human)
`player.” Decision at 15.
`
`The PTAB found that “Walker administers, or
`sponsors, a game, such as trivia, to a single
`player.” Decision at 15.
`f. evaluating the results of said playoff The PTAB construed “subsequent ranking of
`
`
`
`13
`
`

`
` 
`
`‘237 Patent Claim Element
`
`round to determine a tournament
`winner and subsequent ranking of
`players; and
`
`
`PTAB’s Analysis in Support its Conclusion That There is a Reasonable Likelihood That
`Claim 1 is Anticipated by the Walker Prior Art Reference
`
`PTAB Claim Construction and Analysis of the
`Walker Reference
`players” as “the relative standing or position of
`the players, which does not exclude the rating of
`players.” Decision at 12.
`
`The PTAB found that Walker discloses ranking
`of players. Decision at 15.
`The PTAB found that according to Walker “a
`tournament winner is determined after a final
`round of an elimination tournament and prizes are
`awarded. Id. At 15:20-21.” Decision at 15.
`
`g. distributing tournament awards to
`tournament participants.
`
`
`
`VII.
`
`37 C.F.R. § 1.510(b)(3)
`
`
`
`37 C.F.R § 1.510(b)(3) requires that any request for reexamination requires filing “[a]
`
`copy of every patent or printed publication relied upon or referred to in paragraph (b)(1) and (2)
`
`of this section accompanied by an English language translation of all the necessary and pertinent
`
`parts of any non-English language patent or printed publication.” Copies of each patent relied on
`
`in accordance with this section are being filed herewith as Exhibit C.
`
`
`
`VIII. 37 C.F.R. § 1.510(b)(4)
`
`
`
`37 C.F.R § 1.510(b)(4) requires that any request for reexamination requires filing “[a]
`
`copy of the entire patent including the front face, drawings, and specification/claims (in double
`
`column format) for which reexamination is requested, and a copy of any disclaimer, certificate of
`
`correction, or reexamination certificate issued in the patent. All copies must have each page
`
`plainly written on only one side of a sheet of paper.” A copy of the ‘237 Patent in accordance
`
`with this section is being filed herewith as Exhibit A.
`
`
`
`14
`
`

`
` 
`
`
`
`IX.
`
`37 C.F.R. § 1.510(b)(5)
`
`
`
`37 C.F.R § 1.510(b)(5) requires filing “[a] certification that a copy of the request filed by
`
`a person other than the patent owner has been served in its entirety on the patent owner at the
`
`address as provided for in § 1.33(c). The name and address of the party served must be indicated.
`
`If service was not possible, a duplicate copy must be supplied to the Office.” This request is
`
`made by the patent owner; therefore the section 1.510(b)(5) service requirements do not apply.
`
`
`
`X.
`
`PROPOSED AMENDMENTS
`
`In accordance with 37 C.F.R. § 1.510(e), should the Examiner grant the Request for
`
`Reexamination, the following new claims 20-28 are proposed:
`
`A method of playing a game of skill tournament having a qualifying round
`20.
`and a playoff round, and played over an interactive computer system, said
`interactive computer system having a host computer system, a plurality of
`terminals computers and compatible software, said method comprising the