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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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00289
`
`
`
`
`
`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
`
`
`Irvine, CA 92614
`
`Tel.: (949) 760-0404
`
`Fax: (949) 760-9502
`
`Email: BoxGSN@Knobbe.com
`
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF THEIR MOTION TO
`TERMINATE, OR TO ALTERNATIVELY STAY, THE EX PARTE
`REEXAMINATION OF THE ’237 PATENT
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2013-00289
`
`
`Stephenson’s attempt to pursue his proposed amended claims in an ex parte
`
`reexamination undermines the promptness, efficiency, and finality of the IPR
`
`process. This tactic is a transparent bid to circumvent the more rigorous scrutiny
`
`of this IPR, hoping for a second chance to salvage his patent and subject
`
`Petitioners (and hence the PTO) to further protracted and costly legal proceedings.
`
`Contrary to Stephenson’s assertions (Opp. at 3), the PTAB has not
`
`encouraged patent owners to file an ex parte reexamination to sidestep an IPR for
`
`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
`
`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
`
`proceeding before the Office.
`
`Id. at 6. Idle Free is not a broad endorsement to file an ex parte reexamination to
`
`pursue an uncomplicated claim set that can easily be handled in the IPR process.
`
`Further, Stephenson’s assertion that this Panel encouraged him to pursue his
`
`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.”
`
`Stephenson did not follow the Panel’s clear guidance. His proposed claims
`are not a “complete remodeling of claim structure.” Indeed, Stephenson argued
`
`- 1 -
`
`

`

`IPR2013-00289
`
`that proposed Claim 20 “is largely identical to Claim 1 of the ’237 patent” (Ex.
`
`1009 at 17), clearly showing that Claim 20 could have been submitted as a
`
`substitute for existing Claim 1. Similarly, each of proposed Claims 22-28 could
`
`have been submitted as a substitute for one of the existing dependent claims.
`
`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
`
`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
`
`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).
`
`Stephenson could have—and should have—submitted his proposed claims
`
`in this IPR to allow the PTAB to decide whether those claims are patentable.
`
`Thus, he has no basis to complain that termination of the ex parte reexamination
`
`would unfairly deprive him of the right to pursue new claims. He disregarded the
`
`Panel’s guidance and instead filed the ex parte reexamination, in a transparent
`
`attempt to avoid more rigorous scrutiny in this IPR, thereby undermining the
`
`promptness, efficiency, and finality of the IPR process. The PTAB should not
`
`countenance this tactic, which would allow Stephenson (and encourage likely
`
`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.
`
`- 2 -
`
`

`

`IPR2013-00289
`
`
`
`
`
`Dated: March 12, 2014
`
`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.
`
`- 3 -
`
`

`

`IPR2013-00289
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of PETITIONERS’ REPLY IN
`
`SUPPORT OF THEIR MOTION TO TERMINATE, OR TO
`
`ALTERNATIVELY STAY, THE EX PARTE REEXAMINATION OF THE
`
`‘237 PATENT is being served on March 12, 2014, via email pursuant to 37 C.F.R.
`
`§ 42.6(e) per agreement of the parties, to counsel for Stephenson at the email
`
`address set forth below:
`
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, MN 55402-0903
`stephensonIPR@merchantgould.com
`
`
`
`Dated: March 12, 2014
`
`
`
`
`17436099
`
`VIA EMAIL
`
`/Brenton R. Babcock/
`Brenton R. Babcock
`Reg. No. 39,592
`Attorney for Petitioners
`
`
`
`
`
`
`
`

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