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
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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
`__________________________________
`
`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 IPR TBD
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`DECLARATION OF E. JAMES WHITEHEAD, Jr., Ph.D.,
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,174,237
`
`
`Game Show Network Ex. 1005
`IPR of U.S. Pat. 6,174,237
`
`
`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
`
`
`
`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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`Case IPR TBD
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`DECLARATION OF E. JAMES WHITEHEAD, Jr., Ph.D.,
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,174,237
`
`
`Game Show Network Ex. 1005
`IPR of U.S. Pat. 6,174,237
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`1.
`
`I, E. James Whitehead, Jr., Ph.D., have been retained by
`
`Knobbe, Martens, Olson & Bear, LLP, counsel for Game Show Network,
`
`LLC and WorldWinner.com, Inc. (collectively “GSN”). I understand that
`
`GSN has petitioned for inter partes review of U.S. Patent No. 6,174,237
`
`(“the ’237 Patent”) and requests that the United States Patent and
`
`Trademark Office cancel Claims 1-19 of the ’237 Patent as unpatentable.
`
`The following discussion and analyses address the bases for GSN’s
`
`petition.
`
`
`
`I. BACKGROUND AND QUALIFICATIONS, PREVIOUS TESTIMONY,
`AND COMPENSATION
`A. Background and Qualifications
`2.
`For more than 25 years, I have been developing professional
`
`and academic experience in the field of computer software engineering,
`
`including an emphasis in computer game design. I received a Bachelor of
`
`Science degree in Electrical Engineering from the Rensselaer Polytechnic
`
`Institute in May 1989, a Master of Science degree in Information and
`
`Computer Science from the University of California, Irvine in December
`
`1994, and a Doctor of Philosophy in Information and Computer Science
`
`from the University of California, Irvine in September 2000.
`
`-1-
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`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`3.
`
`From 1989 to 1992, I was an engineer in the Raytheon
`
`Equipment Division. At Raytheon, I developed software for an air traffic
`
`control system, a vessel traffic control system, and a prototype microwave
`
`airplane landing system.
`
`4.
`
`From July 2000 until the present, I have been a professor of
`
`Computer Science at the University of California, Santa Cruz (“UCSC”). In
`
`that capacity, I have taught undergraduate and graduate courses in
`
`computer software engineering and computer game design, and I have
`
`conducted research in the areas of software engineering of computer
`
`games, design of social network computer games, level design in computer
`
`games, procedural content generation for computer games, and Internet
`
`protocol design.
`
`5. My research has resulted in the publication of at least 12
`
`scientific articles
`
`in peer-reviewed
`
`journals and 64 peer-reviewed
`
`conference papers. In addition, I have served as a thesis advisor and
`
`graduated 8 doctoral candidates.
`
`6.
`
`I have authored or co-authored several publications that are
`
`directly related to computer game design. These publications include:
`
` Gillian Smith, Jim Whitehead, Michael Mateas, “Tanagra:
`
`Reactive Planning and Constraint Solving for Mixed-Initiative
`
`-2-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`IEEE Transactions on Computational
`
`Level Design.”
`
`
`
`Intelligence and Artificial Intelligence in Games (TCIAIG), vol. 3,
`
`no. 3, September 2011, pp. 201-205.
`
` Chris Lewis, Jim Whitehead, “Repairing Games at Runtime or,
`
`How We Learned to Stop Worrying and Love Emergence” IEEE
`
`Software, Vol. 28, No. 5, September/October 2011, pp. 53-59.
`
` Gillian Smith, Jim Whitehead, Michael Mateas, Mike Treanor,
`
`Jameka March, Mee Cha, "Launchpad: A Rhythm-Based Level
`
`Generator
`
`for 2-D Platformers"
`
`IEEE Transactions on
`
`Computational Intelligence and AI in Games (TCIAIG), Vol. 3,
`
`No. 1, March 2011.
`
` Gillian Smith, Alexei Othenin-Girard, Jim Whitehead, Noah
`
`Wardrip-Fruin. "PCG-Based Game Design: Creating Endless
`
`Web." Proceedings of the 2012 Foundations of Digital Games
`
`Conference (FDG 2012), Raleigh, NC, USA, May 30 - June 1,
`
`2012.
`
` Chris Lewis, Noah Wardrip-Fruin, Jim Whitehead. "Motivational
`
`Game Design Patterns of 'Ville Games." Proceedings of the
`
`2012 Foundations of Digital Games Conference (FDG 2012),
`
`Raleigh, NC, USA, May 30 - June 1, 2012.
`
`-3-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
` Gabriel Rivera, Kenneth Hullett, Jim Whitehead, "Enemy NPC
`
`Design Patterns in Shooter Games." Proceedings of the
`
`Workshop on Design Patterns in Games (DPG 2012), held with
`
`FDG 2012, Raleigh, NC, USA, May 30 - June 1, 2012.
`
` Robert Giusti, Kenneth Hullett, Jim Whitehead, "Weapon
`
`Design Patterns in Shooter Games." Proceedings of the
`
`Workshop on Design Patterns in Games (DPG 2012), held with
`
`FDG 2012, Raleigh, NC, USA, May 30 - June 1, 2012.
`
` Gillian Smith, Ryan Anderson, Brian Kopleck, Zach Lindblad,
`
`Lauren Scott, Adam Wardell, Jim Whitehead, Michael Mateas,
`
`"Situating Quests: Design Patterns for Quest and Level Design
`
`in Role-Playing Games." Fourth International Conference on
`
`Interactive Digital Storytelling
`
`(ICIDS 2011), Vancouver,
`
`Canada, November 28-December 1, 2011. Lecture Notes in
`
`Computer Science 7069 Springer, pp. 326-329.
`
` Chris Lewis, Jim Whitehead, "The Whats and Whys of Games
`
`and Software Engineering", in Proceedings of the Games and
`
`Software Engineering workshop (GAS 2011), co-located with
`
`the 2011 Int'l Conference on Software Engineering (ICSE
`
`2011), Honolulu, Hawaii, USA, May 21, 2011.
`
`-4-
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`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
` Gillian Smith, Elaine Gan, Alexei Othenin-Girard, Jim
`
`Whitehead, "PCG-Based Game Design: Enabling New Play
`
`Experiences
`
`through Procedural Content Generation",
`
`in
`
`Proceedings of the Second Int'l Workshop on Procedural
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`Content Generation in Games (PCGames 2011), co-located
`
`with the 2011 Foundations of Digital Games (FDG 2011)
`
`conference, Bordeaux, France, June 28, 2011.
`
` Chris Lewis, Jim Whitehead, Noah Wardrip-Fruin, "What Went
`
`Wrong: A Taxonomy of Video Game Bugs." Proceedings of the
`
`5th International Conference on the Foundations of Digital
`
`Games (FDG 2010), Monterey, California, USA, June 19-21,
`
`2010.
`
` Kenneth Hullett, Jim Whitehead, "Design Patterns in FPS
`
`Levels." Proceedings of the 5th International Conference on the
`
`Foundations of Digital Games
`
`(FDG 2010), Monterey,
`
`California, USA, June 19-21, 2010.
`
` Gillian Smith, Jim Whitehead, "Analyzing the Expressive Range
`
`of a Level Generator." Proceedings of the Workshop on
`
`Procedural Content Generation in Games (Co-located with
`
`FDG 2010), Monterey, California, USA, June 18, 2010.
`
`-5-
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`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
` Gillian Smith, Mike Treanor, Jim Whitehead, Michael Mateas,
`
`"Rhythm-Based Level Generation
`
`for 2D Platformers."
`
`Proceedings of the 2009 Int'l Conference on the Foundations of
`
`Digital Games (FDG 2009), Orlando, FL, April 26-30, 2009.
`
` Gillian Smith, Mee Cha, Jim Whitehead, "A Framework for
`
`Analysis of 2D Platformer Levels." Proceedings of ACM
`
`SIGGRAPH Sandbox Symposium 2008, Los Angeles, CA,
`
`August 9-10, 2008.
`
` Jim Whitehead, "Introduction to Game Design in the Large
`
`Classroom." Proceedings of
`
`the Third Annual Microsoft
`
`Academic Days Conference on Game Development
`
`in
`
`Computer Science Education (GDCSE 2008), Miami, Florida,
`
`February 27-March 3, 2008.
`
`7.
`
`I currently serve as the Chair of the Computer Science
`
`department at the University of California, Santa Cruz (“UCSC”). I have
`
`held this position since 2010. I helped create the Computer Game Design
`
`program at UCSC. See generally http://www.cs.ucsc.edu/game-design. I
`
`also helped establish, and am a core faculty member of, the Center for
`
`Games
`
`and Playable Media
`
`at UCSC.
`
` See
`
`generally
`
`http://games.soe.ucsc.edu/games-and-playable-media. I also founded and
`
`-6-
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`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`am the board chair of the Society for the Advancement of the Science of
`
`Digital Games.
`
`8.
`
`I have been an expert in the field of computer software gaming
`
`since before 1999. I am qualified to provide an opinion as to what a person
`
`of ordinary skill in the art would have understood, known or concluded in
`
`the 1999 timeframe.
`
`9.
`
`Attached as Exhibit 1006 is my curriculum vitae setting forth my
`
`educational experience, employment history, professional affiliations, and
`
`publications.
`
`B. Previous Testimony
`10.
`I have not previously testified as an expert witness.
`
`C. Compensation
`11.
`I am being compensated for my time at a rate of $350 per hour,
`
`plus actual expenses. My compensation is not dependent in any way upon
`
`the outcome of GSN’s petition.
`
`II. MATERIALS CONSIDERED
`12. Attached as Exhibit 1007 is a listing of the documents that I
`
`have considered and
`
`reviewed
`
`in connection with providing
`
`this
`
`Declaration. I understand that the listed documents are attached as
`
`-7-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`Exhibits 1001-1004 to GSN’s Petition and that this Declaration is attached
`
`as Exhibit 1005 to GSN’s Petition.
`
`III. THE ’237 PATENT
`13. The
`’237 Patent
`
`(Ex. 1001) describes a method of
`
`administering a game of skill tournament between a host computer and
`
`human players. The tournament includes a qualifying round between a
`
`single human player and the host computer and a playoff round that is
`
`played simultaneously between the host computer and multiple human
`
`players. The ’237 Patent further describes that the players are categorized
`
`into performance levels and receive awards based upon their performance
`
`in the qualifying round and that tournament winners receive awards. The
`
`’237 Patent was filed as U.S. Patent Application No. 09/316,840 on May
`
`21, 1999, issued on January 16, 2001, and names John H. Stephenson as
`
`the inventor.
`
`14.
`
`I am informed that the claims of the ’237 Patent, which begin at
`
`the bottom of Column 5 of the ’237 Patent, define the claimed invention that
`
`GSN is challenging in its petition. The ’237 Patent includes one
`
`independent claim (Claim 1) and 18 dependent claims (Claims 2-19). I am
`
`informed that each of the dependent claims that depend directly from Claim
`
`1 (e.g., Claim 2) includes the subject matter recited in the particular
`
`-8-
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`
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`dependent claim and also incorporates the subject matter recited in Claim
`
`1. I understand that each of the dependent claims that depend from an
`
`intermediate dependent claim which, in turn, depends from Claim 1 (e.g.
`
`Claim 10 depends from Claim 9 which, in turn, depends from Claim 1)
`
`includes the subject matter recited in the particular dependent claim and
`
`incorporates both the subject matter recited in the intermediate dependent
`
`claim and the subject matter recited in Claim 1.
`
`IV. SUMMARY OF OPINIONS
`15.
`In my opinion, a person of ordinary skill in the art at the time of
`
`the invention would have found the subject matter of each claim of the ’237
`
`Patent to have been anticipated by, or obvious in view of, PCT International
`
`Publication No. WO 97/39811 to Walker Asset Management, L.P. (Ex.
`
`1002) (“Walker”). Walker disclosed at least the following: (1) a method in
`
`which game of skill tournament is conducted on networked computers over
`
`the Internet; (2) playing a qualifying round of the tournament between a
`
`single player and the host computer; (3) evaluating the qualifying round to
`
`classify the player into a performance level; (4) also evaluating the
`
`qualifying round to determine whether the player qualifies for a qualifying
`
`performance level; (5) distributing to the player a performance level award
`
`based on which performance level he or she obtained; (6) playing a playoff
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`-9-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
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`round between the player, the host computer, and other players classified
`
`in the qualifying performance level; (7) evaluating the playoff round to
`
`determine a winner and subsequent ranking of players; and (8) distributing
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`tournament awards. Accordingly, Walker either anticipates the claims of
`
`the ’237 Patent or, to the extent there are any small differences, renders
`
`the claims of the ’237 Patent obvious.
`
`V.
`
`LEGAL STANDARDS
`16.
`I am informed that there are two basic ways in which a patent
`
`claim may be unpatentable in view of prior art to that claim: (1) the claim is
`
`anticipated by a single prior art reference, or (2) the claim would have
`
`been obvious to a person of ordinary skill in the art at the time of the
`
`invention in view of the prior art.
`
`17.
`
`I am informed that the first step in a patentability analysis—
`
`whether an anticipation analysis or an obviousness analysis—is to construe
`
`the claims to determine what they would have meant to a person of
`
`ordinary skill in the art at the time of the claimed invention. I am informed
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`that, in an inter partes review proceeding before the Patent Office, the
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`claims are to be construed in accordance with their broadest reasonable
`
`interpretation in view of the patent specification. Accordingly, I have given
`
`the claim terms their broadest reasonable construction in view of the
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`-10-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`specification as commonly understood by those having ordinary skill in the
`
`art at the time of the claimed inventions.
`
`18.
`
`I am informed that a patent or printed publication anticipates a
`
`claimed invention under 35 U.S.C. § 102(b) and, thus, renders the claimed
`
`invention unpatentable, if:
`
`the invention was patented or described in a printed publication
`in this or a foreign country of in public use or on sale in this
`country, more than one year prior to the date of the application
`for patent in the United States.
`
`19.
`
`I am informed that, to anticipate the claimed invention, a prior
`
`art printed publication must disclose each and every feature of the claimed
`
`invention, either explicitly or inherently. I am informed, however, that the
`
`prior art printed publication does not need to disclose the claimed invention
`
`using the exact words used in the patent claims.
`
`20.
`
`I am informed that 35 U.S.C. § 103 governs the determination
`
`of obviousness. According to 35 U.S.C. § 103:
`
`A patent may not be obtained though the invention is not
`identically disclosed or described as set forth in section 102 of
`this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as
`a whole would have been obvious at the time the invention was
`
`-11-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`made to a person having ordinary skill in the art to which the
`subject matter pertains.
`
`21.
`
`I am further informed that the first three factors to be
`
`considered in an obviousness inquiry are: (1) the scope and content of the
`
`prior art; (2) the differences between the prior art and the claims; and (3)
`
`the level of ordinary skill in the pertinent art.
`
`22.
`
`I am also informed that certain factors, sometimes known as
`
`“secondary considerations,” may rebut a finding of obviousness based on
`
`the factors described above. These secondary considerations include: (i)
`
`long-felt need, (ii) unexpected results, (iii) skepticism of the invention, (iv)
`
`teaching away from the invention, (v) commercial success, (vi) praise by
`
`others for the invention, and (vii) copying by other companies.
`
`23.
`
`I am informed that Walker published on October 30, 1997, more
`
`than one year before the ’237 Patent was filed on May 21, 1999. Thus, I
`
`am informed that Walker is a printed publication that is prior art to the ’237
`
`Patent within the meaning of 35 U.S.C. § 102(b) and that Walker also
`
`constitutes prior art for purposes of an obviousness analysis under 35
`
`U.S.C. § 103.
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`-12-
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`
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`VI. A PERSON OF ORDINARY SKILL IN THE ART
`24.
`I am informed that certain issues related to patentability are
`
`analyzed from the perspective of a hypothetical person of ordinary skill in
`
`the art at the time of the invention. For example, in analyzing what a prior
`
`art reference discloses, the prior art reference is interpreted from the
`
`perspective of the person of ordinary skill in the art. In addition, the
`
`question of whether the claimed invention would have been obvious is
`
`analyzed from the perspective of the person of ordinary skill in the art at the
`
`time of the invention.
`
`25.
`
`In my opinion, a person of ordinary skill in the art related to the
`
`’237 Patent would have had a bachelor of science degree in computer
`
`science, at least two years of experience developing computer gaming
`
`applications, and significant first-hand experience observing, administering,
`
`and/or participating in competitive tournaments.
`
`26. My opinions concerning the ’237 Patent claims, as set forth
`
`herein, are from the perspective of a person of ordinary skill in the art, as
`
`set forth above, at the time of the invention. Thus, for example, when I
`
`state my opinion that a particular claim of the ’237 Patent would have been
`
`obvious, I mean that the claim would have been obvious to a person of
`
`ordinary skill in the art at the time of the invention.
`
`-13-
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`VII. CLAIM CONSTRUCTION
`27.
`I have reviewed the claims and specification of the ’237 Patent
`
`in order to determine the broadest reasonable construction of the claims in
`
`view of the patent’s specification. In my opinion, many of the claim terms
`
`would be understood by a person of ordinary skill in the art to have their
`
`common, ordinary meanings and, thus, those claim terms do not require
`
`any specific construction in order to be understood. Accordingly, I have not
`
`set forth herein a construction for every claim term in the ’237 Patent. In
`
`my opinion, the claim terms set forth in Paragraphs 28-48 herein have the
`
`meanings set forth in those paragraphs, under their broadest reasonable
`
`construction in view of the specification.
`
`A.
`
`“game of skill”
`
`28.
`
`In my opinion, the broadest reasonable construction of the
`
`claim phase “game of skill” is “a game in which a player’s knowledge and
`
`experience influences the outcome of the game, such as a game of chess,
`
`poker, bridge, hearts, blackjack, a question/answer trivia game, or a
`
`strategy game.” The specification of the ‘237 Patent defines a game of skill
`
`“for purposes of the present invention” as “any game where a player’s
`
`knowledge and experience influences the outcome of the game.” ‘237
`
`Patent at 2:9-11. Further, the specification explicitly lists examples of
`
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
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`games that are games of skill, indicating that “games of skill include but are
`
`not limited [to] chess, poker, bridge, hearts, blackjack and question/answer
`
`trivia games.” Id. at 2:12-13. The specification additionally lists strategy
`
`games as examples of games of skill. ’237 Patent at 3:33-35. Examples of
`
`strategy games
`
`include, among others, “player participation sports
`
`including but not limited to virtual sporting events, video sporting events,
`
`and computer based sporting events” and “player participation action
`
`games.” Id. at 3:51-58. Therefore, in my view, the broadest reasonable
`
`construction of the claim phrase “game of skill” is “a game in which a
`
`player’s knowledge and experience influences the outcome of the game,
`
`such as a game of chess, poker, bridge, hearts, blackjack, a
`
`question/answer trivia game, or a strategy game.”
`
`B.
`
`“playing a game of skill in a qualifying round between a
`single player and the host computer”
`
`29.
`
`In my opinion, the broadest reasonable construction of the
`
`
`
`claim phrase “playing a game of skill in a qualifying round between a single
`
`player and the host computer” is “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 by the host computer.”
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`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
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`30.
`
`It is my opinion, in view of the claim language and the
`
`specification, that the phrase “single player” excludes competition between
`
`two or more human players in a game in the qualifying round. Rather, each
`
`game of the qualifying round is limited to a single human player and the
`
`host computer.
`
`31. The specification makes clear that the phrase “single player”
`
`means only one human player. For example, the specification states that
`
`“the host computer has the ability to act as another player if the game
`
`requires more than a single player.” ‘237 Patent at 2:19-21. Further, the
`
`specification states that “[q]ualifying round 20 can be only a single game or
`
`a series of games” (Id. at 3:62-63), thereby indicating that Stephenson
`
`used the term “single” to explicitly distinguish “only one” from “more than
`
`one.”
`
`32. Further, in the context of other claim language, Stephenson
`
`distinguished the game in the qualifying round from the game in the playoff
`
`round on the basis that the game in the qualifying round has a “single
`
`player” but the game in the playoff round includes “said player . . . along
`
`with other players.” Thus, by claiming a game in the qualifying round
`
`“between a single player and the host computer,” Stephenson chose to limit
`
`-16-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`the game in the claimed qualifying round to a game that includes only one
`
`human player.
`
`33.
`
`I note that there is specification language suggesting that the
`
`qualifying round could have more
`
`than one participant
`
`in some
`
`embodiments. This specification language is consistent with Stephenson’s
`
`clear choice, in the claim language, to limit the game in the qualifying round
`
`to a “single player.” The specification states that “[at] least one player
`
`participates in the qualifying round 20 against a host computer” (‘237
`
`Patent at 3:14-16) and that the “maximum number of participants during the
`
`qualifying round 20 is open-ended” (Id. at 3:27-29). The claim language
`
`allows multiple participants in the qualifying round in the sense that the
`
`qualifying round could include multiple games. However, the claim
`
`language is clear that each game in the qualifying round is “between a
`
`single player and the host computer.”
`
`34. Stephenson possibly could have claimed an embodiment in
`
`which multiple players could compete against each other in a single game
`
`of the qualifying round. For example, Stephenson could have claimed
`
`“playing a game of skill in a qualifying round between at least one player
`
`and the host computer.” Instead, however, Stephenson chose claim
`
`language that is limited to playing a game of skill in a qualifying round
`
`-17-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`between a single player and the host computer. Therefore, it is my
`
`opinion that each game in the qualifying round cannot include more than
`
`one human player.
`
`35.
`
`In my opinion, while each of the claimed games in the qualifying
`
`round is limited to a single player and the host computer, the claims do not
`
`require head-to-head competition between the single player and the host
`
`computer. Rather, in view of the specification, the claim phrase is broader,
`
`encompassing single-player games administered by the host computer. In
`
`particular, the specification states that:
`
`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.
`
`‘237 Patent at 2:16-21. Further, both the specification (Id. at 3:43) and
`
`Claim 10 of the ‘237 Patent indicate that the game of skill may be a single-
`
`player game, such as solitaire, for which the host computer is not a head-
`
`to-head opponent of the human player. Thus, in my view, the claim
`
`limitation “playing a game of skill in a qualifying round between a single
`
`player and the host computer” should be construed broadly enough to
`
`encompass a single-player game administered by the host computer.
`
`-18-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`36. Therefore, in my view, the broadest reasonable construction, in
`
`view of the specification, of the claim phrase “playing a game of skill in a
`
`qualifying round between a single player and the host computer” is “playing
`
`a game of skill in a qualifying round, where the game includes only one
`
`human player and is at least administered by the host computer.”
`
`C.
`
`“playing said game of skill in a playoff round between said
`player and the host computer simultaneously along with
`other players”
`
`37.
`
`In my opinion, the broadest reasonable construction, in view of
`
`
`
`the specification, of the claim phrase “playing said game of skill in a playoff
`
`round between said player and the host computer simultaneously along
`
`with other players” is “playing the game of skill in a playoff round at least
`
`administered by the host computer and in which the human player involved
`
`in the qualifying round and at least two other human players are playing at
`
`the same time.”
`
`38.
`
`In accordance with its broadest reasonable construction, the
`
`claim language indicating that the playoff round includes “said player . . .
`
`along with other players” requires the playoff round to include the player
`
`involved in the qualifying round and at least two other players.
`
`-19-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`39. As with the qualifying round, it is my opinion that the
`
`requirement that the game is “between said player and the host computer”
`
`means that the host computer must at least administer the playoff round.
`
`40.
`
`In my opinion, the broadest reasonable construction of the
`
`claim term “simultaneously” requires that all players in the playoff round
`
`play at the same time. The ordinary meaning of “simultaneously” is “at the
`
`same time.” The specification supports this ordinary meaning. The
`
`specification contrasts the qualifying round, which does not require
`
`simultaneous play, with the playoff round, which does require simultaneous
`
`play. With respect to the qualifying round, the specification states:
`
`Typically the qualifying round is played in a continuous manner.
`By this it is meant that the player selects the day and time in
`which to participate. The only limitations to this time frame is if
`the qualifying round is not active. An example of this is
`illustrated as follows: The tournament is open for qualifying
`round play from Monday at noon to Saturday at midnight. Any
`player would have the ability to participate in the qualifying
`round at the time of his choice as long as it was between the
`pre-established time frame.
`
`’237 Patent at 4:30-38 (emphasis added). With respect to the playoff
`
`round, by contrast, the specification states:
`
`-20-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`
`The playoff round 40 will begin at a preset time with those
`player who have qualified by a specific cut-off date and time
`playing the game of skill against the host computer, as shown
`in box 42. The playoff round will continue for a preset amount
`of time, as shown in step 43.
`
`Id. at 4:39-43 (second emphasis added).
`
`41. Similarly,
`
`the
`
`“EXAMPLE OF
`
`THE
`
`PREFERRED
`
`EMBODIMENT” section provides an example in which the “qualifying round
`
`is open for play seven days a week, twenty-four hours per day,” but the
`
`“playoff round is to be played on each Saturday from 6 p.m. to 8 p.m.
`
`GMT.” Id. at 4:60-63. The specification then explains that one of the
`
`qualifying players, Player C, plays
`
`the playoff
`
`round
`
`“[a]t
`
`the
`
`predetermined time on Saturday . . . simultaneously with other gold level
`
`players.” Id. at 5:45-47.
`
`42. Accordingly, according to the specification, while a player may
`
`choose when to play the qualifying round (within a broad time period), all
`
`players of the playoff round must play the round simultaneously, starting at
`
`a specific predetermined time and continuing for a preset amount of time.
`
`43.
`
`In view of the foregoing, it is my opinion that the broadest
`
`reasonable construction, in view of the specification, of the claim phrase
`
`“playing said game of skill in a playoff round between said player and the
`
`-21-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`host computer simultaneously along with other players” is “playing the
`
`game of skill in a playoff round at least administered by the host computer
`
`and in which the human player involved in the qualifying round and at least
`
`two other human players are playing at the same time.”
`
`D.
`
`steps (b) and (c) of Claim 1
`
`44.
`
`In my opinion, under the broadest reasonable construction in
`
`view of the specification, steps (b) and (c) of Claim 1 cover a process in
`
`which steps (b) and (c) are either performed sequentially in two separate
`
`steps or are performed simultaneously in a single step. This construction is
`
`supported by the claim language and the specification. The claim language
`
`does not specify whether steps (b) and (c) are performed sequentially in
`
`two steps or simultaneously as a single step. That omission from the claim
`
`language indicates that Claim 1 covers either sequential performance or
`
`simultaneous performance as a single step.
`
`45. Further, the fact that dependent Claim 8 explicitly recites that
`
`“said step (b) and step (c) are performed simultaneously” supports a
`
`construction in which steps (b) and (c) of Claim 1 can be performed either
`
`sequentially or simultaneously. Claim 1, the base claim of dependent
`
`Claim 8, must be broader than Claim 8. Accordingly, Claim 1 must be
`
`-22-
`
`
`
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Game Show Network Petition - IPR of U.S. Pat. No. 6,174,237
`
`construed to cover at least the embodiment of Claim 8, in which step (b)
`
`and step (c) are performed simultaneously.
`
`46. This construction is also supported by the specification of the
`
`’237 Patent, which states:
`
`If a player obtains a result that qualifies him to be classed into a
`level of performance that qualifies him to be able to participate
`in the playoff round, he would be eligible to play the game of
`skill against the host computer in the playoff round.
`
`’237 Patent at 2:37-42. The preceding statement from the patent
`
`specification discloses an embodiment in which the classification of the
`
`player into a performance level and the de
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