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`Filed on behalf of Patent Owner John H. Stephenson
`By: Daniel W. McDonald
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`Robert A. Kalinsky
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`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
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
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`Petitioners
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`v.
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`JOHN H. STEPHENSON
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`Patent Owner
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`____________
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`Case IPR2013-00289
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`Patent 6,174,237
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`____________
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`OPPOSITION TO PETITIONERS’ MOTION TO TERMINATE,
`OR TO ALTERNATIVELY STAY,
`THE EX PARTE REEXAMINATION OF THE ‘237 PATENT
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`Game Show Network Ex. 1015
`IPR2013-00289
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`IPR2013-00289
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`Patent Owner John Stephenson (“Stephenson”) hereby opposes Petitioners’
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`Motion to Terminate, or To Alternatively Stay, the Ex Parte Reexamination of the
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`‘237 Patent (“Ex Parte Reexamination Request”). See Paper 27.
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`I.
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`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
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`Reexamination Request should be denied. Clear precedent authorizes the use of the
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`ex parte reexamination process as the preferred method for seeking claim
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`amendments while inter partes review is pending. See Idle Free Systems, Inc. v.
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`Bergstrom, Inc., IPR2012-00027 (“Idle Free”). This case is no exception.
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`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
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`parte reexamination are nearly identical to the original claims of the ’237 Patent,”
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`and “this IPR is the proper proceeding for minor claim amendments.” Paper 27, pp.
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`2 and 3. This characterization of the amended claims is wrong.
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`The Board has explicitly noted that ex parte reexamination is the preferred
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`approach when, as here, a party seeks a “remodeling of its claim structure
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`according to a different strategy.” Idle Free, Paper 26, p. 6.
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`New claim 20 of the Ex Parte Reexamination Request recites “playing a
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`game of skill in a qualifying round between a single player and the host computer,
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`wherein said playing includes the single player and host computer playing
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`against each other.” Ex. 1009. The emphasized portion of claim 20 represents a
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`wholly new limitation that significantly changes the scope of any claim in the
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`present inter partes review as construed by the Panel. This subject matter will
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`therefore not be considered by the Panel in the inter partes review.
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`Further, Petitioners fail to even address the significant remodeling
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`represented by the limitations of claims 21-28. For example, claim 21 further limits
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`claim 20 by reciting “said host computer tailors the host computer’s play to the
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`player’s chosen play.” Id. This concept (i.e., the host tailoring its play to the
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`player’s play) falls squarely outside any of the granted claims of the ‘237 patent
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`and the issues in the present inter partes review. Other dependent claims, such as
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`claim 22, further remodel the existing claim structure and differentiate from the
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`inter partes review subject matter by reciting “said player’s turn and said host
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`computer’s turn alternate, one after another.”
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`The new limitations of claim 20, as well as those of dependent claims 21-28,
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`represent a significant change from the original claims of the ‘237 Patent that are
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`currently before the Panel. The Ex Parte Reexamination Request is thus well
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`within the guidelines for the filing of reexaminations provided in Idle Free.
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`B. Amendment of claims in Ex Parte Reexamination is
`consistent with this Board’s guidance and precedent;
`dismissal would unfairly prejudice the Patent Owner
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`Stephenson’s actions are consistent with this Panel’s guidance. Specifically,
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`Stephenson discussed the possibility of filing an ex parte reexamination to seek
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`claim amendments during the conference call of January 16, 2014. See Paper 21.
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`The Patent Owner specifically stated it would likely amend to recite the player
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`playing “against” the computer, as recited in proposed claim 20. The Panel’s Order
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`summarizing this conference call states, “Patent Owner may pursue new claims in
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`another type of proceeding before the Office during the trial.” Paper 21, p. 2.
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`If Petitioners’ motion is granted Patent Owner would be greatly prejudiced,
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`especially as the deadline for amendment in the inter partes review has passed.
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`Stephenson would be unfairly denied an opportunity to seek claim amendments
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`using the very process suggested in numerous Board decisions and this Panel’s
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`guidance in this case.
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`Further, Stephenson’s Ex Parte Reexamination Request is not contrary to
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`Congressional intent. Because the new claims are significantly different in scope,
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`allowing the reexamination to proceed, contrary to Petitioners’ assertion, will
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`ensure the present inter partes review reaches a “prompt, efficient, and final
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`determination of the patentability of the ’237 Patent.” See Paper 27, p. 1.
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`Nothing about Stephenson’s filing of the Ex Parte Reexamination Request
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`taints the present process. Rather, had Stephenson presented the new claims in the
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`present inter partes review, that would have added complexity and potential
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`delays. Stephenson was proactive about disclosing its intent to file an ex parte
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`reexamination with claims consistent with what it filed in fact, and was
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`appropriately guided that such a filing was a proper alternative.
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`C. There is no duplicate effort for the Ex Parte Reexamination
`Petitioner alleges duplication of effort between the inter partes review and
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`the ex parte reexamination processes. Petitioner fails to even specify the additional
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`distinctions of claims 21-28, let alone support its allegation of duplicated effort.
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`Because the changes are substantial, there is no little or no duplicate effort by
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`either tribunal, since each is examining different “inventions” (i.e., claim sets).
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`Petitioners’ conclusory allegations do not prove the contrary.
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`Petitioner claims it is “inevitable” that it will seek a second inter partes
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`review if its motion is denied. Paper 21 at p. 4. Any patent, and certainly one that
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`goes through an inter partes review and reexamination process, is presumed valid.
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`Petitioners’ assumption that any new claim will be the subject of a second inter
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`partes review and later found to be invalid regardless of its scope is as unwarranted
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`as the requested relief.
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`II.
`Petitioners’ Request for Termination is Without Precedent
`The Board has given clear direction to patent owners: the ex parte
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`reexamination process is permitted and even preferred for claim amendments. Idle
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`Free. Petitioner cites no precedent supporting its request, highlighting its
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`extraordinary nature and increasing prejudice to Stephenson should it be granted.
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`III. Any Stay Prior to Institution of the Ex Parte Reexamination is
`Premature
`Petitioners alternatively seek to stay the Ex Parte Reexamination Request.
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`The request is premature. In Invue Security Products Inc. v. Merchandising Techs.,
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`Inc., IPR2013-00122, the panel denied a stay of an ex parte reexamination (which
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`was to be spawned from a supplemental examination request) during an inter
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`partes review, in part because a stay before reexamination was ordered was
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`premature. Id. at Paper 11, fn. 1.
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`As this Board knows, Stephenson is willing to entertain a stay once the Ex
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`Parte Reexamination Request has been granted and the new claims entered into the
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`proceeding, to ensure he may pursue the proposed claims through reexamination.
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`Any decision to stay prior to that time is premature and unfairly prejudicial.
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`IV. Conclusion
`Petitioners’ request for termination or, alternatively, stay of the Ex Parte
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`Reexamination Request should be denied.
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`Respectfully submitted,
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`Date: March 5, 2014
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` /Robert A. Kalinsky/
`Robert A. Kalinsky, Reg. No. 50,471
`Attorneys for Patent Owner Stephenson
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Opposition To
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`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.
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`Date: March 5, 2014
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`Respectfully submitted,
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`(612) 332-5300
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`
` /Robert A. Kalinsky/
`Name: Robert A. Kalinsky
`Reg. No.: 50471
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