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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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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`Case IPR2013-00289
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`Filed on behalf of Game Show Network, LLC and WorldWinner.com, Inc.
`By: Brenton R. Babcock
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`Ted M. Cannon
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`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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`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`TERMINATE, OR TO ALTERNATIVELY STAY, THE EX PARTE
`REEXAMINATION OF THE ’237 PATENT
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`IPR2013-00289
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`Stephenson’s attempt to pursue his proposed amended claims in an ex parte
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`reexamination undermines the promptness, efficiency, and finality of the IPR
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`process. This tactic is a transparent bid to circumvent the more rigorous scrutiny
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`of this IPR, hoping for a second chance to salvage his patent and subject
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`Petitioners (and hence the PTO) to further protracted and costly legal proceedings.
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`Contrary to Stephenson’s assertions (Opp. at 3), the PTAB has not
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`encouraged patent owners to file an ex parte reexamination to sidestep an IPR for
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`routine claim amendments that could readily be handled in an IPR. In Idle Free,
`the PTAB explained that a patent owner can submit a reasonable number of
`substitute claims in the IPR, but that 23 substitute claims was not a reasonable
`number for just two existing claims. IPR2012-00027, Paper 26 at 11. The PTAB
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`explained that such a complex claim set could be pursued outside the IPR:
`If a patent owner desires a complete remodeling of its claim structure
`according to a different strategy, it may do so in another type of
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`proceeding before the Office.
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`Id. at 6. Idle Free is not a broad endorsement to file an ex parte reexamination to
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`pursue an uncomplicated claim set that can easily be handled in the IPR process.
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`Further, Stephenson’s assertion that this Panel encouraged him to pursue his
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`proposed claims in an ex parte reexamination (Opp. at 3) is incorrect. The Panel
`authorized a motion to amend in the IPR, and indicated that Stephenson could file
`an ex parte reexamination if he sought a “complete remodeling of claim structure.”
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`Stephenson did not follow the Panel’s clear guidance. His proposed claims
`are not a “complete remodeling of claim structure.” Indeed, Stephenson argued
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`- 1 -
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`IPR2013-00289
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`that proposed Claim 20 “is largely identical to Claim 1 of the ’237 patent” (Ex.
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`1009 at 17), clearly showing that Claim 20 could have been submitted as a
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`substitute for existing Claim 1. Similarly, each of proposed Claims 22-28 could
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`have been submitted as a substitute for one of the existing dependent claims.
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`Because the proposed claims include new limitations, Stephenson argues
`that he seeks a complete remodeling of his existing claims. Opp. at 1-2. This
`argument is flawed because the rules require substitute claims to include new
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`limitations that narrow the claims, as well as to respond to a ground of invalidity.
`See 37 C.F.R. § 42.121(2). Mere compliance with these rules does not remodel the
`claims at all, let alone completely remodel them. And while the new claims are a
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`bit narrower, Stephenson exaggerates the differences. Computers and humans
`played “against each other” long ago, and Stephenson did not invent reacting to
`an opponent’s moves or simply taking turns. Ex. 1009 at 15-16 (Claims 20-22).
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`Stephenson could have—and should have—submitted his proposed claims
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`in this IPR to allow the PTAB to decide whether those claims are patentable.
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`Thus, he has no basis to complain that termination of the ex parte reexamination
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`would unfairly deprive him of the right to pursue new claims. He disregarded the
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`Panel’s guidance and instead filed the ex parte reexamination, in a transparent
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`attempt to avoid more rigorous scrutiny in this IPR, thereby undermining the
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`promptness, efficiency, and finality of the IPR process. The PTAB should not
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`countenance this tactic, which would allow Stephenson (and encourage likely
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`untold numbers of future patent owners) to flagrantly and unabashedly circumvent
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`IPR proceedings. Thus, the Board should terminate the ex parte reexamination.
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`IPR2013-00289
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`Dated: March 12, 2014
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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` 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.
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`IPR2013-00289
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of PETITIONERS’ REPLY IN
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`SUPPORT OF THEIR MOTION TO TERMINATE, OR TO
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`ALTERNATIVELY STAY, THE EX PARTE REEXAMINATION OF THE
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`‘237 PATENT is being served on March 12, 2014, via email pursuant to 37 C.F.R.
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`§ 42.6(e) per agreement of the parties, to counsel for Stephenson at the email
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`address set forth below:
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`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, MN 55402-0903
`stephensonIPR@merchantgould.com
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`Dated: March 12, 2014
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`17436099
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`VIA EMAIL
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`/Brenton R. Babcock/
`Brenton R. Babcock
`Reg. No. 39,592
`Attorney for Petitioners
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