Filed on behalf of Game Show Network, LLC and WorldWinner.com, Inc.
`By: Brenton R. Babcock
`
`Ted M. Cannon
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
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`
`Irvine, CA 92614
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`Tel.: (949) 760-0404
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`Fax: (949) 760-9502
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`Email: BoxGSN@Knobbe.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, Inc.,
`Petitioners,
`v.
`Patent Owner of
`U.S. Patent 6,174,237 to Stephenson
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`PETITIONERS’ MOTION TO TERMINATE, OR TO ALTERNATIVELY
`STAY, THE EX PARTE REEXAMINATION OF THE ’237 PATENT
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`Case IPR2013-00289
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`By: Brenton R. Babcock
`
`Ted M. Cannon
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`
`
`Irvine, CA 92614
`
`Tel.: (949) 760-0404
`
`Fax: (949) 760-9502
`
`Email: BoxGSN@Knobbe.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`Game Show Network, LLC and WorldWinner.com, Inc.,
`Petitioners,
`v.
`Patent Owner of
`U.S. Patent 6,174,237 to Stephenson
`
`
`
`
`
`
`
`
`
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`PETITIONERS’ MOTION TO TERMINATE, OR TO ALTERNATIVELY
`STAY, THE EX PARTE REEXAMINATION OF THE ’237 PATENT
`
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`Case IPR2013-00289
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`IPR2013-00289
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`
`I.
`Petitioner requests that the PTAB terminate, or, in the alternative, stay, ex
`
`RELIEF REQUESTED
`
`parte reexamination no. 90/013,148, pursuant to 35 U.S.C. § 315(d).
`II.
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Congress intended for a single IPR proceeding to resolve the
`parties’ patentability dispute based on printed prior art
`Congress established IPR to create an “inexpensive substitute for district
`
`court litigation.” Ex. 1008 at S5319. Thus, the IPR statute includes several
`mechanisms to ensure that a single IPR would expeditiously resolve the parties’
`entire patentability dispute based on printed prior art. For example, the PTAB
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`issues a patentability decision within a year of instituting trial. Further, the
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`estoppel provisions ensure that the parties’ patentability dispute over printed prior
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`art will be determined in this IPR, not in other parallel and/or later proceedings.
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`Similarly, the statute’s substitute claim provision contemplates that the
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`patentability of substitute claims will be determined in this IPR, not in another
`proceeding. This ensures a fair inter partes process in which both parties
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`participate, and promotes finality and efficiency. These advantages lead many
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`petitioners to choose the IPR process to challenge patents. Here, Petitioners spent
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`nearly $25,000 in filing fees to petition for IPR, with the expectation that the IPR
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`process would be fair and would lead to a prompt, efficient, and final
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`determination of the patentability of the ’237 Patent based on printed prior art. The
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`ex parte reexamination will undermine this fairness, efficiency, and finality. It will
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`exclude Petitioners, will likely take years to complete, and will result in a non-final
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`determination that will likely be challenged in a subsequent litigation and/or IPR.
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`- 1 -
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`
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`IPR2013-00289
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`B.
`
`Stephenson seeks to obtain, in ex parte reexamination, claims that
`he should have submitted as substitute claims in this IPR
`The eight proposed claims that Stephenson seeks in the ex parte
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`reexamination are nearly identical to the original claims of the ’237 Patent.
`Indeed, Stephenson admits that proposed independent Claim 20 “is largely
`identical to Claim 1 of the ’237 patent.” Ex. 1009 at 17. The only difference is
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`that Claim 20 recites “the single player and host computer playing against each
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`other.” Id. Proposed Claims 21-28 make similarly minor changes. Id. at 18-19.
`
`
`Stephenson could have – and should have – submitted these same claims as
`substitute claims in this IPR. Stephenson contemplated this very amendment long
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`before the February 3 deadline, even spending considerable time on this issue in
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`cross-examining GSN’s expert. Indeed, after specifically discussing a claim
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`amendment like that in Claim 20, this Panel authorized Stephenson to file a motion
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`to amend. And Stephenson could have – and should have – submitted each of the
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`seven dependent claims as a substitute for one of the existing dependent claims of
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`the ’237 Patent. Stephenson’s proposed claims fall squarely within the PTAB’s
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`Idle Free guidance for appropriate substitute claims in this IPR.
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`
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`Stephenson’s purely strategic decision to instead pursue the proposed claims
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`through ex parte reexamination is inconsistent with the Panel’s guidance. While
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`the Panel indicated that a “complete remodeling of [] claim structure according to a
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`different strategy” may be pursued in ex parte reexamination, this IPR is the proper
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`proceeding for minor claim amendments. But while Stephenson assured the Panel
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`that he did not intend to pursue minor claim amendments in a parallel ex parte
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`reexamination, his proposed claims are just that – minor amendments to the claims.
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`-3-
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`
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`IPR2013-00289
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`C.
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`Stephenson’s attempt to obtain substitute claims through ex parte
`reexamination undermines IPR as an effective litigation substitute
`through ex parte
`Stephenson’s attempt
`to obtain substitute claims
`reexamination is a transparent attempted end-run around the inter partes process.
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`Stephenson clearly hopes to obtain substitute claims in an ex parte process which
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`is less rigorous than the claims would be subjected to in this IPR. If this attempted
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`end-run succeeds, it will undermine IPR as an effective substitute for litigation.
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`A concurrent ex parte reexamination would cause duplicated USPTO effort
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`and inefficiency. The PTAB and CRU (even before granting the ex parte request)
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`would be evaluating and applying the same prior art (Walker) and nearly identical
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`claims and patentability issues. Further, the PTAB and CRU could set forth
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`inconsistent analyses, including prior art evaluations, claim constructions, and
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`patentability determinations. Even the CRU’s initial analysis granting or denying
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`the requested re-examination, which could issue within weeks given the “special
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`dispatch” nature of reexaminations, could be used by Stephenson in this IPR. And
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`if the CRU later determines that the proposed amended claims are patentable,
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`Stephenson would inevitably pursue subsequent litigation, and Petitioners would
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`then file a second IPR, addressing the same claims that Stephenson could have
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`sought here. By contrast, had Stephenson timely submitted the substitute claims in
`this IPR, this panel would have determined the patentability of the original and the
`substitute claims in this proceeding, avoiding a potential second round dispute.
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`In addition, allowing the ex parte reexamination to proceed would inevitably
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`incentivize many patent owners to adopt the same strategy of seeking minor claim
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`amendments via ex parte reexamination and altogether avoid the more rigorous
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`-4-
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`IPR2013-00289
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`inter partes review. In addition to potentially creating a veritable flood of ex parte
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`reexaminations for the CRU, this “IPR end-run” strategy would likely spawn
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`subsequent litigation for the District Courts and follow-on future IPRs for the
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`PTAB upon the allowance of the slightly amended claims, thereby undermining
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`Congress’ goal of resolving printed prior art validity challenges in one IPR.
`Termination of the ex parte reexamination is the proper remedy
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`D.
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`Here, termination of the ex parte reexamination is an appropriate remedy.
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`Stephenson seeks to use ex parte reexamination as a sort of “safety net” to obtain
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`“largely identical” new claims to assert against Petitioners even after the original
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`claims are likely to be deemed unpatentable in this IPR. Stephenson revealed this
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`strategy by conceding that he opposes an immediate stay of the ex parte
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`reexamination so that “no matter what happened in the IPR there would be at least
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`some claims surviving.” Ex. 1010 at 28:4-5. The ex parte reexamination process
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`should not be used as a placeholder for minor IPR-induced claim amendments.
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`The PTAB should terminate the ex parte reexamination to prevent
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`Stephenson’s attempted end-run of the IPR process. Stephenson had a fair chance
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`to submit substitute claims in this IPR, but voluntarily gave up that opportunity.
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`The deadline for Stephenson to submit its minor claim amendments in this IPR was
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`February 3, and, thus, the February 10 amendments would have been untimely
`here. Stephenson should not be permitted to belatedly seek the same claims in an
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`ex parte process that should have been sought here. The PTAB should not allow
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`Stephenson to pursue substitute claims in the ex parte reexamination to save him
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`from his decision to not pursue those claims in this IPR.
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`-5-
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`
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`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
` By:/Brenton R. Babcock/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg No. 55,036
`Email: BoxGSN@Knobbe.com
`Attorneys for Petitioners
`Game Show Network, LLC and
`WorldWinner.com, Inc.
`
`-6-
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`IPR2013-00289
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`
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`Dated: February 21, 2014
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`
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`IPR2013-00289
`GSN v. Stephenson
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of PETITIONERS’ MOTION
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`TO TERMINATE, OR TO ALTERNATIVELY STAY, THE EX PARTE
`
`REEXAMINATION OF THE ‘237 PATENT is being served on February 21,
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`2014, via email pursuant to 37 C.F.R. § 42.6(e) per agreement of the parties, to
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`counsel for Stephenson at the email address set forth below:
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`VIA EMAIL
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`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, MN 55402-0903
`stephensonIPR@merchantgould.com
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`
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`Dated: February 21, 2014
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`
`
`/Brenton R. Babcock/
`Brenton R. Babcock
`Reg. No. 39,592
`Attorney for Petitioners
`
`
`
`
`17310633
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