IPR2013-00289
`
`Filed on behalf of Patent Owner John H. Stephenson
`By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Thomas J. Leach
`Merchant & Gould P.C.
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: stephensonipr@merchantgould.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`
`Patent Owner
`
`____________
`
`Case IPR2013-00289
`
`Patent 6,174,237
`
`____________
`
`OPPOSITION TO PETITIONERS’ MOTION TO TERMINATE,
`OR TO ALTERNATIVELY STAY,
`THE EX PARTE REEXAMINATION OF THE ‘237 PATENT
`
`
`
`Filed on behalf of Patent Owner John H. Stephenson
`By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Thomas J. Leach
`Merchant & Gould P.C.
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: stephensonipr@merchantgould.com
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`
`Patent Owner
`
`____________
`
`Case IPR2013-00289
`
`Patent 6,174,237
`
`____________
`
`OPPOSITION TO PETITIONERS’ MOTION TO TERMINATE,
`OR TO ALTERNATIVELY STAY,
`THE EX PARTE REEXAMINATION OF THE ‘237 PATENT
`
`
`
`IPR2013-00289
`
`
`Patent Owner John Stephenson (“Stephenson”) hereby opposes Petitioners’
`
`Motion to Terminate, or To Alternatively Stay, the Ex Parte Reexamination of the
`
`‘237 Patent (“Ex Parte Reexamination Request”). See Paper 27.
`
`I.
`
`The Board Explicitly Authorized the Ex Parte Reexamination
`Process as the Preferred Vehicle for Claim Amendments
`Petitioners’ request to terminate or, alternatively, stay the Ex Parte
`
`Reexamination Request should be denied. Clear precedent authorizes the use of the
`
`ex parte reexamination process as the preferred method for seeking claim
`
`amendments while inter partes review is pending. See Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., IPR2012-00027 (“Idle Free”). This case is no exception.
`
`A. The claims of the Ex Parte Reexamination Request
`constitute a “remodeling of [the] claim structure”
`Petitioners state, “The eight proposed claims that Stephenson seeks in the ex
`
`parte reexamination are nearly identical to the original claims of the ’237 Patent,”
`
`and “this IPR is the proper proceeding for minor claim amendments.” Paper 27, pp.
`
`2 and 3. This characterization of the amended claims is wrong.
`
`The Board has explicitly noted that ex parte reexamination is the preferred
`
`approach when, as here, a party seeks a “remodeling of its claim structure
`
`according to a different strategy.” Idle Free, Paper 26, p. 6.
`
`New claim 20 of the Ex Parte Reexamination Request recites “playing a
`
`game of skill in a qualifying round between a single player and the host computer,
`
`
`
`1
`
`
`
`IPR2013-00289
`
`wherein said playing includes the single player and host computer playing
`
`against each other.” Ex. 1009. The emphasized portion of claim 20 represents a
`
`wholly new limitation that significantly changes the scope of any claim in the
`
`present inter partes review as construed by the Panel. This subject matter will
`
`therefore not be considered by the Panel in the inter partes review.
`
`Further, Petitioners fail to even address the significant remodeling
`
`represented by the limitations of claims 21-28. For example, claim 21 further limits
`
`claim 20 by reciting “said host computer tailors the host computer’s play to the
`
`player’s chosen play.” Id. This concept (i.e., the host tailoring its play to the
`
`player’s play) falls squarely outside any of the granted claims of the ‘237 patent
`
`and the issues in the present inter partes review. Other dependent claims, such as
`
`claim 22, further remodel the existing claim structure and differentiate from the
`
`inter partes review subject matter by reciting “said player’s turn and said host
`
`computer’s turn alternate, one after another.”
`
`The new limitations of claim 20, as well as those of dependent claims 21-28,
`
`represent a significant change from the original claims of the ‘237 Patent that are
`
`currently before the Panel. The Ex Parte Reexamination Request is thus well
`
`within the guidelines for the filing of reexaminations provided in Idle Free.
`
`
`
`2
`
`
`
`IPR2013-00289
`
`B. Amendment of claims in Ex Parte Reexamination is
`consistent with this Board’s guidance and precedent;
`dismissal would unfairly prejudice the Patent Owner
`
`Stephenson’s actions are consistent with this Panel’s guidance. Specifically,
`
`Stephenson discussed the possibility of filing an ex parte reexamination to seek
`
`claim amendments during the conference call of January 16, 2014. See Paper 21.
`
`The Patent Owner specifically stated it would likely amend to recite the player
`
`playing “against” the computer, as recited in proposed claim 20. The Panel’s Order
`
`summarizing this conference call states, “Patent Owner may pursue new claims in
`
`another type of proceeding before the Office during the trial.” Paper 21, p. 2.
`
`If Petitioners’ motion is granted Patent Owner would be greatly prejudiced,
`
`especially as the deadline for amendment in the inter partes review has passed.
`
`Stephenson would be unfairly denied an opportunity to seek claim amendments
`
`using the very process suggested in numerous Board decisions and this Panel’s
`
`guidance in this case.
`
`Further, Stephenson’s Ex Parte Reexamination Request is not contrary to
`
`Congressional intent. Because the new claims are significantly different in scope,
`
`allowing the reexamination to proceed, contrary to Petitioners’ assertion, will
`
`ensure the present inter partes review reaches a “prompt, efficient, and final
`
`determination of the patentability of the ’237 Patent.” See Paper 27, p. 1.
`
`Nothing about Stephenson’s filing of the Ex Parte Reexamination Request
`
`
`
`3
`
`
`
`IPR2013-00289
`
`taints the present process. Rather, had Stephenson presented the new claims in the
`
`present inter partes review, that would have added complexity and potential
`
`delays. Stephenson was proactive about disclosing its intent to file an ex parte
`
`reexamination with claims consistent with what it filed in fact, and was
`
`appropriately guided that such a filing was a proper alternative.
`
`C. There is no duplicate effort for the Ex Parte Reexamination
`Petitioner alleges duplication of effort between the inter partes review and
`
`the ex parte reexamination processes. Petitioner fails to even specify the additional
`
`distinctions of claims 21-28, let alone support its allegation of duplicated effort.
`
`Because the changes are substantial, there is no little or no duplicate effort by
`
`either tribunal, since each is examining different “inventions” (i.e., claim sets).
`
`Petitioners’ conclusory allegations do not prove the contrary.
`
`Petitioner claims it is “inevitable” that it will seek a second inter partes
`
`review if its motion is denied. Paper 21 at p. 4. Any patent, and certainly one that
`
`goes through an inter partes review and reexamination process, is presumed valid.
`
`Petitioners’ assumption that any new claim will be the subject of a second inter
`
`partes review and later found to be invalid regardless of its scope is as unwarranted
`
`as the requested relief.
`
`II.
`Petitioners’ Request for Termination is Without Precedent
`The Board has given clear direction to patent owners: the ex parte
`
`
`
`4
`
`
`
`IPR2013-00289
`
`reexamination process is permitted and even preferred for claim amendments. Idle
`
`Free. Petitioner cites no precedent supporting its request, highlighting its
`
`extraordinary nature and increasing prejudice to Stephenson should it be granted.
`
`III. Any Stay Prior to Institution of the Ex Parte Reexamination is
`Premature
`Petitioners alternatively seek to stay the Ex Parte Reexamination Request.
`
`The request is premature. In Invue Security Products Inc. v. Merchandising Techs.,
`
`Inc., IPR2013-00122, the panel denied a stay of an ex parte reexamination (which
`
`was to be spawned from a supplemental examination request) during an inter
`
`partes review, in part because a stay before reexamination was ordered was
`
`premature. Id. at Paper 11, fn. 1.
`
`As this Board knows, Stephenson is willing to entertain a stay once the Ex
`
`Parte Reexamination Request has been granted and the new claims entered into the
`
`proceeding, to ensure he may pursue the proposed claims through reexamination.
`
`Any decision to stay prior to that time is premature and unfairly prejudicial.
`
`IV. Conclusion
`Petitioners’ request for termination or, alternatively, stay of the Ex Parte
`
`Reexamination Request should be denied.
`
`Respectfully submitted,
`
`Date: March 5, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Robert A. Kalinsky/
`Robert A. Kalinsky, Reg. No. 50,471
`Attorneys for Patent Owner Stephenson
`
`
`
`
`
`
`
`5
`
`
`
`IPR2013-00289
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Opposition To
`
`Petitioners’ Motion To Terminate, Or To Alternatively Stay, The Ex Parte
`Reexamination Of The ‘237 Patent was/were served on March 5, 2014 by filing the
`document(s) through the Patent Review Processing System and delivering a copy
`via electronic mail at BoxGSN@knobbe.com. Petitioners have agreed to accept
`service electronically.
`
`
`
`
`
`
`
`
`
`
`
`Date: March 5, 2014
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`(612) 332-5300
`
`
` /Robert A. Kalinsky/
`Name: Robert A. Kalinsky
`Reg. No.: 50471
`
`
`
`
`
`
`
`1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
