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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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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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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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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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
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`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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`
`
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`Case IPR2013-00289
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`TABLE OF CONTENTS
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`Page No.
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`INTRODUCTION ........................................................................................... 1
`I.
`II. WALKER ANTICIPATES CLAIMS 1-3, 5, AND 8-19 ................................ 1
`A. Walker discloses the “evaluating the results of said
`qualifying round” limitations of claim steps (b) and (c) ....................... 2
`1. Walker discloses the evaluating steps as properly construed ..... 2
`2. Walker discloses the evaluating steps even as construed by
`Stephenson .................................................................................. 5
`B. Walker discloses the playing a game limitation ................................... 6
`1.
`Stephenson’s explanation that the host computer acts as another
`player “if the game requires more than a single player” on a
`team is untenable ......................................................................... 7
`The claim term “solitaire” includes a single-player game .......... 9
`Common usages of “playing . . . between” and “playing
`against” do not require competition .......................................... 10
`Stephenson admitted to the PTO and a court that the claims do
`not require head-to-head competition with a computer ............ 13
`5. Walker discloses the playing a game limitation ....................... 14
`In Walker, an interactive computer system performs the
`method ................................................................................................. 14
`III. CLAIMS 4, 6, AND 7 WOULD HAVE BEEN OBVIOUS ......................... 14
`A.
`Claim 4 would have been obvious in view of Walker ........................ 14
`B.
`Claims 6 and 7 would have been obvious in view of
`Walker ................................................................................................. 15
`IV. CONCLUSION .............................................................................................. 15
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`2.
`3.
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`4.
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`C.
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`IPR2013-00289
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`I. INTRODUCTION
`Walker invalidates every claim of the ’237 Patent. The proper focus of the
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`validity analysis is whether Walker discloses or renders obvious the limitations
`actually recited in the claims. That analysis—when properly focused on the actual
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`claim limitations—is straightforward because Walker plainly discloses or renders
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`obvious all of the broad functional limitations of the claims of the ’237 Patent.
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`Stephenson seeks to distract the validity inquiry from the actual claim
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`language, devoting pages of his Response to purported features or advantages of
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`the invention that are simply found nowhere in the claims. Stephenson’s expert
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`candidly admitted that many of these alleged features and advantages Stephenson
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`touts are simply not required by the claims. See, e.g., Ex. 1020 at 75:9-76:3;
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`77:23-78:3; 78:5-9; 78:15-18; 78:23-79:1; 79:7-16; 79:22-80:2. Thus, many
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`alleged features of the invention are distractors that the PTAB should ignore.
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`Of particular significance, Stephenson incorrectly asserts that the claims
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`require (1) evaluation of a qualifying round based solely upon a single player’s
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`performance, and (2) head-to-head competition of a human player and the host
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`computer. These proposed constructions are unreasonably narrow, and contrary to
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`Stephenson’s positions in earlier litigation and representations to the PTO. Walker
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`discloses or renders obvious every limitation as properly construed.
`II. WALKER ANTICIPATES CLAIMS 1-3, 5, AND 8-19
`With respect to most of the ’237 Patent’s claim limitations, Stephenson has
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`not even attempted to refute the evidence of anticipation set forth in the Petition.
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`Instead, Stephenson identifies just three alleged distinctions between his claims
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`IPR2013-00289
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`and Walker. Paper 22 at 33-38. Those alleged distinctions are illusory. Indeed,
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`they are based upon flawed claim construction, flawed interpretation of Walker, or
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`both. When the claims and Walker are properly interpreted, Walker clearly
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`anticipates them. GSN addresses Stephenson’s three alleged distinctions below.
`A. Walker discloses the “evaluating the results of said qualifying
`round” limitations of claim steps (b) and (c)
`Stephenson’s first argument of no anticipation is that “Walker does not
`disclose qualification based on a single player’s performance in a qualifying
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`round.” Paper 22 at 33. Stephenson’s argument is flawed because the phrase
`“based on a single player’s performance” is nowhere to be found in any claim of
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`the ’237 Patent. Rather than quote actual claim language, however, Stephenson
`fabricates a non-existent claim limitation—that qualification must be based on a
`single player’s performance—and then argues that Walker does not disclose this
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`fabricated claim limitation. Paper 22 at 33. Ironically, although this limitation is
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`not required by the claims, Walker discloses even this fabricated claim limitation.
`1. Walker discloses the evaluating steps as properly construed
`To assess anticipation, the PTAB must look at the actual claim language—
`not the “based on a single player’s performance” language that is not in the
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`claims. The actual claim language includes two closely related limitations—(b)
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`and (c)—that require “evaluating the results of said qualifying round” to classify a
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`player into a performance level and to see if the player is in a qualifying level.
`While these evaluating limitations recite broadly defined functions, they say
`nothing about what criteria is used to perform the evaluation. Thus, the claims
`cover any evaluation criteria. Contrary to Stephenson’s arguments, the evaluating
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`limitations do not require qualification based on a single player’s performance,
`and they do not require qualification based on predetermined and absolute
`qualifying performance levels. The terms “predetermined” and “absolute,” like
`the phrase “based on a single player’s performance,” are simply not in the claims.
`When the evaluating limitations are properly construed to use any
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`evaluation criteria, including either absolute or relative criteria, Walker discloses
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`those limitations. Indeed, because Stephenson concedes that Walker discloses both
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`absolute and relative performance level classifications for the awarding of prizes
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`(Ex. 2007 ¶¶ 84, 88), there is no dispute that Walker discloses limitation (b).
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`Further, Stephenson admits that Walker discloses relative qualification criteria.
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`Paper 22 at 35; Ex. 2007 ¶ 85. Thus, when limitation (c) is construed under the
`BRI standard—as it should be—to cover any evaluation criteria, Walker discloses
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`limitation (c), as well.
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`Recognizing that he needs a narrow interpretation of the evaluating steps to
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`avoid anticipation, Stephenson argues that those steps must use predetermined and
`absolute performance criteria based on a single player’s performance. Paper 22
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`at 33-36. Stephenson’s expert admitted that steps (b) and (c) do not explicitly
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`recite any such limitation. Ex. 1020 at 69:17-20; 75:2-7. Instead, Stephenson’s
`expert inferred that qualifying criteria must be predetermined and absolute from
`the claim requirement that the game in a qualifying round includes a single player.
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`Id. at 69:6-16; 69:21-70:15; 72:10-73:4; 74:16-75:1.
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`Stephenson’s inference is fundamentally flawed, however, because steps (b)
`and (c) evaluate the qualifying round, not just the game between a single player
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`and the host computer. See Ex. 1020 at 57:16-58:6. The PTAB found that the “the
`game”—not the qualifying round—“includes only one human player.” Paper 8 at
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`9. Further, Stephenson’s expert conceded that the qualifying round may include
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`multiple games involving multiple players. Ex. 1020 at 58:8-60:16. Indeed, the
`qualifying round necessarily includes more than one game involving more than
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`one player because limitation (e) requires the playoff round to be “between said
`player and other players” that have each qualified. In his Response, Stephenson
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`admits that the playoff round includes at least two human players that have each
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`qualified in the qualifying round. Paper 22 at 30.
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`the “qualifying
`the evaluating steps evaluate
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`Accordingly, because
`round”—which necessarily includes more than one game and more than one
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`player—the evaluating steps can take into account the multiple performances of
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`the multiple players that participated in the qualifying round. Thus, under the BRI
`standard, the evaluating limitations cover either an absolute evaluation of a single
`player’s performance or a relative evaluation of multiple players’ performances.
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`Nothing in the specification is contrary to this interpretation. Indeed, the
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`specification states that the qualifying round can include multiple players.
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`Specifically, the “maximum number of participants during the qualifying round 20
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`is open-ended,” and, in one example, “[f]our players start the qualifying round.”
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`Ex. 1001 at 3:27-29; 5:12-13. Further, the specification expressly disclaims
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`Stephenson’s attempt to incorporate, into the claims, example features—such as
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`predetermined and absolute criteria—that are described in the specification but not
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`claimed. Ex. 1001 at 4:55-57; 5:59-64 (the examples “are not intended to limit the
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`IPR2013-00289
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`scope of the invention” and “the invention is to be limited only by the claims”).
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`There is no dispute that Walker discloses the evaluating steps when properly
`construed to cover any manner of “evaluating the results of said qualifying round.”
`2. Walker discloses the evaluating steps even as construed by
`Stephenson
`Further, Walker discloses the evaluating limitations even if they required
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`qualification based on a single player’s performance using predetermined and
`that Walker discloses relative
`absolute criteria.
` Stephenson’s argument
`qualification criteria only—and that it does not also disclose absolute qualification
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`criteria—ignores one of Walker’s expressly disclosed preferred embodiments.
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`Stephenson’s Response focuses on just one embodiment of Walker, in which
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`the player’s “score is compared to the scores obtained by all of the other players in
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`the same session” to determine player advancement. Paper 22 at 35 (quoting Ex.
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`1002 at 14). But the Response misleadingly crops the quoted paragraph to exclude
`Walker’s disclosure of “a number of preferred embodiments for the qualifying
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`criteria.” Ex. 1002 at 14:11-12 (emphasis added). Walker discloses that the
`“preferred embodiments for the qualifying criteria” include “a minimum required
`score, a minimum average score over the last several game sessions, or the
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`maximum score within a sub-group of players in the game session.” Id. at 14:12-
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`14 (emphasis added). Therefore, Walker’s preferred embodiments include both
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`relative and absolute qualifying criteria.
`Tellingly, Stephenson’s Response simply ignores the minimum required
`score expressly disclosed in Walker, and does not refute that the minimum
`required score is an absolute qualifying criteria. See Paper 22 at 33-36.
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`Stephenson’s expert speculates—without any support from the text of Walker—
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`that maybe the minimum required score is, like a cut in golf competitions,
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`determined by comparing players’ scores after a few rounds of play. Ex. 2007 ¶
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`90. Stephenson did not consider his expert’s unsubstantiated speculation to be
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`worthy of inclusion in his Response. See Paper 22 at 33-36.
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`Despite any effort to twist its plain meaning, the phrase “minimum required
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`score” would be understood by a skilled artisan to mean a simple measure of
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`whether a player achieved the minimum required score to advance, regardless of
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`the scores of other players. See Ex. 1005 ¶ 57 (pp. 31-32). For example, if the
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`minimum required score for a qualifying round is 25 points, every player that
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`scores at least 25 points in the qualifying round would advance, regardless of
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`whether other players scored 50 points or 5 points. Thus, a skilled artisan would
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`understand that Walker discloses an absolute qualifying criterion. See id.
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`In addition, Walker also discloses that the performance criteria for awarding
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`prizes can be “fixed, however, with prizes paid to any player exceeding a certain
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`score,” and that “being able to advance from one game session to the next game
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`session can also be considered a prize.” Ex. 1002 at 13:24-25; 14:3-5. A skilled
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`artisan would understand that Walker expressly teaches absolute performance
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`criteria for awarding the prize of player advancement. See Ex. 1005 ¶ 57 (p. 36).
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`Thus, Walker discloses
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`the evaluating steps even
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`if
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`they require
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`predetermined, absolute qualifying criteria based on a single player’s performance.
`B. Walker discloses the playing a game limitation
`Stephenson’s second argument of no anticipation is that Walker allegedly
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`does not disclose “playing a game of skill in a qualifying round between a single
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`player and the host computer.” Paper 22 at 36-38. The PTAB correctly construed
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`the playing a game limitation to mean “playing a game of skill in a qualifying
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`round, where the game includes only one human player and is at least administered
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`by a host computer.” Paper 8 at 9.
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`Stephenson insists that the PTAB’s claim construction is incorrect, and that
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`the playing a game limitation requires the host computer to compete head-to-head
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`with the player. Stephenson’s construction is not the broadest reasonable
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`construction and, thus, it is incorrect. The PTAB’s construction is correct under
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`the BRI standard. Further, because there is no dispute that Walker discloses the
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`playing a game limitation under the PTAB’s claim construction, the PTAB should
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`adopt its preliminary finding that Walker discloses the playing a game limitation.
`1.
`Stephenson’s explanation that the host computer acts as
`another player “if the game requires more than a single
`player” on a team is untenable
`The specification contradicts Stephenson’s position that the playing a game
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`limitation requires the host computer to compete head-to-head with the player.
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`The specification describes two alternative ways that the “qualifying round is
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`played between a single player through a computer terminal and a host computer”:
`The host computer has the ability to act as a game sponsor by keeping
`score, operating the game, monitoring the player’s progress and to
`distribute awards when appropriate. Also, the host computer has the
`ability to act as another player if the game requires more than a single
`player.
`Ex. 1001 at 2:14-21. As shown by the first alternative, the specification expressly
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`contemplates that one way that a game can be played between the player and the
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`host computer is that the host computer can “act as a game sponsor.” In that
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`alternative, playing a game between the player and the host computer clearly does
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`not require the host computer to compete head-to-head with the player.
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`The second alternative—that “the host computer has the ability to act as
`another player if the game requires more than a single player”—also expressly
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`contemplates games in which the host computer does not compete head-to-head
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`with the player. Stephenson’s expert conceded that this sentence, in isolation, can
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`reasonably be read to implicitly refer to strictly single-player games with no
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`opponent. Ex. 1020 at 131:14-132:2. However, the expert strained to find
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`“context” to justify rewriting the sentence to refer to “supplying another computer
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`player (as opposed to a host computer opponent) if the game requires more than a
`single player on a team.” Ex. 2007 ¶ 65 (emphasis added); see also Ex. 1020 at
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`131:14-132:2; Paper 22 at 28-29.
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`The specification does not support Stephenson’s strained interpretation. If
`Stephenson had intended to describe the computer acting as another player on a
`team, he would have expressed that simple concept in simple terms. But he did not
`do so. The on a team concept is entirely missing from the specification. The
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`straightforward interpretation—that the specification includes strictly single-player
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`games that do not include an opponent—is the broadest reasonable interpretation.
`Stephenson’s on a team interpretation rests upon a false premise that the
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`specification lists only two-player games as examples of games of skill. Ex. 2007
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`¶ 65 (citing Ex. 1001 at 2:11-13). This is false for at least two reasons. First, the
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`cited statement is explicitly non-exhaustive. Ex. 1001 at 2:11-13 (“Examples of
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`IPR2013-00289
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`games of skill include but are not limited [to] . . .”). Indeed, hundreds or
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`thousands of games meet the ’237 Patent’s definition of “game of skill.” Ex. 1020
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`at 124:2-6. Second, the cited statement neither limits “games of skill” to multi-
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`player games nor excludes single-player games. Id. at 124:8-19. There are many
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`single-player games of skill, and the cited statement itself lists games—poker and
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`trivia—that have single-player variants. Id. at 124:21-125:5; 126:13-19; 127:4-7.
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`Thus, the playing a game limitation covers strictly single-player games.
`2.
`The claim term “solitaire” includes a single-player game
`The PTAB correctly found that the ’237 Patent’s identification of solitaire as
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`a game of skill requires the construction of the playing a game limitation to be
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`“broad enough to include single-player game playing, in which case the host
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`computer administers, but is not required to play, the game of skill.” Paper 8 at 8.
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`The PTAB further noted that “Patent Owner has not shown why claim 1 should be
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`construed to exclude the described single-player game embodiments.” Id. at 8-9.
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`Stephenson’s explanation of why Claim 1 should be interpreted to exclude
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`single-player games like solitaire is not credible. Stephenson argues that, because
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`Claim 1 allegedly requires the host computer to compete head-to-head with the
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`player, all references to “solitaire” in the specification and claims must necessarily
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`refer exclusively to multi-player solitaire. Stephenson’s claim construction
`methodology is demonstrably unsound. Stephenson simply assumes that his claim
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`construction is correct, then forces common terms like solitaire to take on
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`unreasonably narrow and unusual definitions to fit his desired construction.
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`The proper methodology is to give the claim term “solitaire” its broadest
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`IPR2013-00289
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`reasonable interpretation. It is undisputed that solitaire is “traditionally” a single-
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`player game, and that the specification does not describe a two-player
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`implementation of solitaire or any other traditionally single-player game. Ex. 2007
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`¶ 59; Ex. 1020 at 102:8-9; 109:23-110:11. Thus, it is entirely untenable for
`Stephenson to use the unmodified term “solitaire” to refer exclusively to obscure
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`multi-player versions. Rather, as GSN’s expert testified, if Stephenson meant to
`refer only to multi-player solitaire, he would have used a phrase such as “double
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`solitaire” to distinguish his intended meaning from common usage. Ex. 2008 at
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`113:1-21; see also Ex. 1020 at 104:17-105:4. Indeed, the evidence Stephenson
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`relies upon expressly uses the phrase “Double Solitaire” to distinguish it from
`“regular Solitaire.” Ex. 2005. The use of the phrase “regular Solitaire” highlights
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`that the ordinary meaning of solitaire is a single-player game.
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`Therefore, the broadest reasonable interpretation of the claim term
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`“solitaire” includes the traditional single-player game of solitaire.
`3.
`Common usages of “playing . . . between” and “playing
`against” do not require competition
`The claims recite “playing a game . . . between a single player and the host
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`computer.” Stephenson argues, and his expert agrees, that “‘between’ means ‘by
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`the common action of: jointly engaging.” Paper 22 at 24 (citing Ex. 2007 ¶ 56);
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`Ex. 1020 at 88:14-23. This definition, which reflects common usage, includes
`cooperation—not just competition—between two parties. See Ex. 1020 at 91:2-13
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`(Stephenson’s expert explaining that two people can have “a conversation between
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`themselves” and that it is “not a competitive act.”). Thus, the common usage of
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`“between” contradicts Stephenson’s position that Claim 1 requires the host
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`computer to compete head-to-head with the player.
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`Nevertheless, Stephenson’s expert opined that the playing a game limitation
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`requires competition because “the nature of a game is competitive.” Id. at 89:6-24.
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`Stephenson’s expert is incorrect to suggest that the playing a game limitation
`excludes cooperative games played “by the common action of” a human player
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`and a host computer “jointly engaging” in game play, with the human player
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`issuing game play commands and the host computer carrying out game actions and
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`otherwise administering the game. The specification supports this usage, stating
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`that “[t]hrough a series of two-way communications, the game of skill is conducted
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`between the players and the host computer system.” Ex. 1001 at 5:19-21. In
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`addition, the specification explains that the host computer “jointly engages” the
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`human player in game play by “act[ing] as a game sponsor by keeping score,
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`operating the game, monitoring the player’s progress and to distribute awards
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`when appropriate.” Ex. 1001 at 2:16-19.
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`Stephenson tries to substitute the phrase “playing against”—which is not in
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`the claim—for the claim phrase “playing a game . . . between,” by asserting that
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`the specification uses the terms “between” and “against” interchangeably. Paper
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`22 at 24. Even if that were true, it would not follow that the playing a game
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`limitation requires head-to-head competition because neither “between” nor
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`“against,” as interpreted under the BRI standard, require competition. In fact, the
`common phrase “play against the house” does not mean that the house competes as
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`a player in a game, as shown by the following book excerpt:
`When you play craps, you play against the house. When you play
`blackjack, you play against the house. When you play baccarat, slots,
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`video poker, keno, big wheel, or flip-it, you play against the house.
`Ex. 1019 at 216. Stephenson’s expert conceded that craps, slots, video poker, and
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`keno are all traditionally single-player games in which the house does not act as a
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`player in head-to-head competition. Ex. 1020 at 25:16-17; 28:21-22; 35:6-7;
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`39:12-18; 40:6-9; 40:11-17; 41:10-12; 41:13-22; 159:9-161:21; see also Ex. 1018;
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`Ex. 1020 at 164:8-167:25 (Let it Ride is also “played against the house,” but the
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`house does not compete as a player). In forming his claim construction opinion,
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`Stephenson’s expert did not consider this usage of “play against the house.” Id. at
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`162:24-163:7. He did not even consider the usage of “play against the house” to
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`be relevant to his claim construction. Id. at 163:9-24. Thus, his claim construction
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`is flawed because it failed to take into account evidence contrary to his opinion.
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`The common usage of the phrase “race against the clock” also contradicts
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`Stephenson’s position that “against” requires head-to-head competition. Ex. 1020
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`at 168:1-3 (the phrase does not mean that the clock literally runs in the race).
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`Further, Stephenson’s expert used the phrase “play against” inconsistently with his
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`own claim construction opinion, admitting that “Walker discloses a tournament
`structure where multiple players play against each other, or against a natural
`yardstick like time.” Ex. 2007 ¶ 81. Of course, a yardstick does not compete with
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`the players.
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`Accordingly, common usage of “between” and “against” contradicts
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`Stephenson’s position that the playing a game limitation requires the host
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`computer to compete head-to-head with the player.
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`4.
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`Stephenson admitted to the PTO and a court that the claims
`do not require head-to-head competition with a computer
`In a reexamination request, Stephenson proposed Claim 21 to add “wherein
`said playing includes the single player and host computer playing against each
`other” to limitation (a). Ex. 1009 at 15. Stephenson then told the PTO:
`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.
`Ex. 1015 at 2 (emphases added). This representation—that Claim 21 is a
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`“significant change” from Claim 1—is a clear admission that existing Claim 1 does
`not require “the single player and host computer playing against each other.”
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`Also, Stephenson sued MVP Network, alleging that MVP infringed the ’237
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`Patent by selling a computer golf game called Golden Fairway. Ex. 1012. In that
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`lawsuit, Stephenson sought and obtained a permanent injunction against MVP.
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`Exs. 1013, 1014. The injunction prohibited MVP from selling Golden Fairway and
`other prohibited products, including products that did not have a computer
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`opponent that competed head-to-head with a human player. Ex. 1014 at 2. A first-
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`hand observer testifies in this IPR that Golden Fairway did not have a computer
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`opponent that competed head-to-head with a human player. Ex. 1021 ¶¶ 3, 5.
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`By asserting the ’237 Patent against Golden Fairway, Stephenson conceded
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`that the claims of the ’237 Patent do not require that the host computer compete
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`head-to-head with a human player. Because Stephenson’s expert did not even
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`consider Stephenson’s patent assertion against Golden Fairway (Ex. 1020 at
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`171:14-21; 172:3-18), the expert’s opinion is unreliable and based on incomplete
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`information. Further, Stephenson’s representations to the court in the prior MVP
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`-13-
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`IPR2013-00289
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`litigation squarely contradict his proposed claim construction in this IPR.
`5. Walker discloses the playing a game limitation
`For the foregoing reasons, the evidence confirms that the PTAB’s
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`
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`construction of the playing a game limitation is reasonable and should be adopted.
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`Under that construction, the Petition establishes that Walker discloses the playing a
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`game limitation. Paper 1 at 20-21; Ex. 1005 ¶¶ 57, 58. Moreover, Stephenson has
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`not even attempted to refute GSN’s evidence that Walker discloses the playing a
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`game limitation under the PTAB’s claim construction. Therefore, the PTAB
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`should find that Walker discloses the playing a game limitation.
`C.
`In Walker, an interactive computer system performs the method
`Stephenson argues that the Petition does not indicate “what [in Walker] is
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`purportedly performing the claimed method.” Paper 22 at 37-38. This argument is
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`meritless. Page 19 of the Petition explains that Walker discloses an “interactive
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`computer system” that performs the claimed method steps. Paper 1 at 19.
`III. CLAIMS 4, 6, AND 7 WOULD HAVE BEEN OBVIOUS
`A. Claim 4 would have been obvious in view of Walker
`A skilled artisan would interpret Claim 4 to mean, simply, that there is a
`
`direct relationship between the player’s performance level and the amount of
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`performance level award that he or she receives. See Ex. 1005 ¶ 77. That is, the
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`player receives a higher award for higher performance and a lower award for lower
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`performance. See id. This relationship is illustrated by Table 1 of the ’237 Patent.
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`Contrary to Stephenson’s interpretation (see Paper 22 at 39), Claim 4 says
`nothing about when the player knows that he or she has qualified for a higher
`performance level. The player does not need to be able to know that he or she has
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`IPR2013-00289
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`qualified during the qualifying round. Indeed, the specification flatly contradicts
`Stephenson’s interpretation, stating that “[a]fter each player has completed the
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`qualifying round, the results are analyzed.” Ex. 1001 at 5:23-24. Thus,
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`Stephenson’s proposed claim construction is simply incorrect.
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`As properly construed, Claim 4 would have been obvious. As the Petition
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`shows, Walker expressly discloses increasing prize levels for higher performance,
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`and a skilled artisan would think to award the increasing prize levels in a
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`qualifying round to promote competition. Paper 1 at 48; Ex. 1005 ¶ 78. Awarding
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`the prizes to high performers in the qualifying round would not interfere with the
`
`elimination of low performers, contrary to Stephenson’s argument (Paper 22 at 40).
`B. Claims 6 and 7 would have been obvious in view of Walker
`Stephenson does not argue that the added limitations of Claims 6 and 7
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`remder those claims non-obvious over Walker. See Paper 22 at 40-42. Instead, he
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`relies entirely upon the alleged distinctions between Claim 1 and Walker. Id. For
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`the reasons stated in the Petition and above, however, Walker anticipates Claim 1.
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`Further, the Petition establishes—without any refutation by Stephenson—that
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`Claims 6 and 7 would have been obvious in view of Walker. Paper 1 at 48-52.
`IV. CONCLUSION
`As shown in the Petition and this Reply, Walker invalidates every claim.
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`
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`Respectfully submitted,
`
`Dated: April 21, 2014
`
`By: /Ted M. Cannon/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg No. 55,036
`Email: BoxGSN@Knobbe.com
`Attorneys for Petitioners
`-15-
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`IPR2013-00289
`GSN v. Stephenson
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of PETITIONERS’ REPLY
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`TO PATENT OWNER’S RESPONSE is being served on April 21, 2014, via
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`email pursuant to 37 C.F.R. § 42.6(e) per agreement of the parties, to counsel for
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`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
`
`
`
`Dated: April 21, 2014
`
`
`
` /Ted M. Cannon/
`Ted M. Cannon
`Reg. No. 55,036
`Attorney for Petitioners
`
`
`
`
`17694154
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