throbber
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
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`Tel.: (949) 760-0404
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`Fax: (949) 760-9502
`
`Email: BoxGSN@Knobbe.com
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`Game Show Network, LLC and WorldWinner.com, Inc.,
`Petitioners,
`v.
`Patent Owner of
`U.S. Patent 6,174,237 to Stephenson
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`Case IPR TBD
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,174,237
`PURSUANT TO 35 U.S.C. § 312 AND 37 C.F.R. § 42.108
`
`
`
`

`
`IPR Petition for USP 6,174,237
`
`TABLE OF CONTENTS
`
`Page No.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)..........................1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)............................1
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .....................................1
`
`Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................1
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)...............................2
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a).....................2
`
`III.
`
`INTRODUCTION ...........................................................................................2
`
`A.
`
`B.
`
`The ’237 Patent relates generally to online tournaments......................2
`
`Stephenson merely extended a common tournament format
`to Internet games between human and computer players .....................3
`
`C. Walker, which the Patent Examiner did not consider,
`anticipates or renders obvious the claims of the ’237 Patent................4
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED ...................................8
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART.............................................9
`
`VI. CLAIM CONSTRUCTION ............................................................................9
`
`A.
`
`B.
`
`C.
`
`“game of skill”.......................................................................................9
`
`“playing a game of skill in a qualifying round between a
`single player and the host computer”..................................................10
`
`“playing said game of skill in a playoff round between said
`player and the host computer simultaneously along with
`other players” ......................................................................................13
`
`D.
`
`Steps (b) and (c) of Claim 1 ................................................................15
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`

`
`IPR Petition for USP 6,174,237
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`E.
`
`F.
`
`G.
`
`“said game of skill is based on the memory reaction of the
`player” .................................................................................................17
`
`Reservation of rights to rebut Stephenson claim construction............17
`
`Reservation of rights to advocate different claim
`constructions, or that the claim phrases are indefinite, in
`district court litigation .........................................................................18
`
`VII. EXPLANATION OF WHY THE CLAIMS ARE
`UNPATENTABLE........................................................................................18
`
`A.
`
`Claims 1-6 and 8-19 are Anticipated by Walker.................................18
`
`1. Walker anticipates Claim 1.......................................................19
`
`2. Walker anticipates Claim 2.......................................................30
`
`3. Walker anticipates Claim 3.......................................................30
`
`4. Walker anticipates Claim 4.......................................................31
`
`5. Walker anticipates Claim 5.......................................................32
`
`6. Walker anticipates Claim 6.......................................................32
`
`7. Walker anticipates Claim 8.......................................................33
`
`8. Walker anticipates Claim 9.......................................................33
`
`9. Walker anticipates Claim 10.....................................................34
`
`10. Walker anticipates Claim 11.....................................................35
`
`11. Walker anticipates Claim 12.....................................................35
`
`12. Walker anticipates Claim 13.....................................................36
`
`13. Walker anticipates Claim 14.....................................................36
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`

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`IPR Petition for USP 6,174,237
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`14. Walker anticipates Claim 15.....................................................37
`
`15. Walker anticipates Claim 16.....................................................38
`
`16. Walker anticipates Claim 17.....................................................38
`
`17. Walker anticipates Claim 18.....................................................39
`
`18. Walker anticipates Claim 19.....................................................39
`
`B. Alternatively, Claims 1-6 and 8-19 Would Have Been
`Obvious in View of Walker ................................................................40
`
`1.
`
`Claim 1 would have been obvious even assuming
`minor differences between the Walker disclosure and
`Claim 1......................................................................................41
`
`a.
`
`b.
`
`c.
`
`d.
`
`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose two separate steps (b) and (c) ...........................41
`
`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose determining that the player is classified
`within a qualifying performance level that is
`one of the performance levels recited in
`limitation (b) ...................................................................42
`
`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose a game in a qualifying round between a
`single player and the host computer ...............................44
`
`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose awarding performance level awards
`after a qualifying round ..................................................45
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`

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`IPR Petition for USP 6,174,237
`
`TABLE OF CONTENTS
`(cont’d)
`
`Page No.
`
`e.
`
`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose generating subsequent player rankings
`after a tournament...........................................................47
`
`Dependent Claims 2-6 and 8-19 would have been
`obvious even assuming minor differences between the
`disclosure of Walker and Claim 1.............................................47
`
`Claim 4 would have been obvious even assuming that
`Walker does not explicitly disclose multiple levels of
`awards after a qualifying round ................................................48
`
`Claim 6 would have been obvious even assuming that
`Walker does not expressly disclose exactly four
`performance levels ....................................................................48
`
`2.
`
`3.
`
`4.
`
`C.
`
`D.
`
`Claim 7 Would Have Been Obvious in View of Walker....................50
`
`Reservation of rights to rebut any other differences between
`Walker’s disclosure and the claims raised by Stephenson..................52
`
`VIII. SECONDARY CONSIDERATIONS, EVEN IF CONSIDERED,
`FAIL TO OVERCOME THE EVIDENCE OF OBVIOUSNESS................53
`
`IX. THE GROUNDS FOR UNPATENTABILITY RELY ON NEW
`PRIOR ART NEVER CONSIDERED BY THE PATENT OFFICE
`AND RAISE NEW ISSUES IN WHICH PETITIONERS WILL
`LIKELY PREVAIL.......................................................................................54
`
`X.
`
`CONCLUSION..............................................................................................55
`
`- iv -
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`

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`IPR Petition for USP 6,174,237
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`Leapfrog Enters. Inc. v. Fisher-Price, Inc.,
`485 F.3d 1157 (Fed. Cir. 2007) ..........................................................................53
`
`Newell Cos., Inc. v. Kenney Mfg. Co.,
`864 F.2d 757 (Fed. Cir. 1988) ............................................................................53
`
`
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 102(b) .................................................................................................5, 8
`
`35 U.S.C. § 103......................................................................................................8, 9
`
`35 U.S.C. § 112........................................................................................................18
`
`35 U.S.C. § 312..........................................................................................................1
`
`35 U.S.C. § 314........................................................................................................54
`
`37 C.F.R. § 42 ....................................................................................................1, 2, 9
`
`
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`

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`IPR Petition for USP 6,174,237
`
`EXHIBIT LIST
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`
`1006
`1007
`
`
`
`Description
`U.S. Patent No. 6,174,237 (the “’237 Patent”)
`PCT International Publication No. WO 97/39811 to Walker Asset
`Management, L.P. (“Walker”)
`U.S. Patent No. 4,685,677 to Demar et al. (“Demar”)
`U.S. Patent No. 4,666,160 to Hamilton (“Hamilton”)
`Declaration of E. James Whitehead, Jr., Ph.D., in Support of
`Petition for Inter Partes Review of U.S. Patent No. 6,174,237
`Curriculum Vitae of E. James Whitehead, Jr., Ph.D.
`Materials Considered by E. James Whitehead, Jr., Ph.D.
`
`
`
`Exhibit List, Page 1
`
`

`
`IPR Petition for USP 6,174,237
`
`Game Show Network, LLC and WorldWinner.com, Inc. (collectively,
`
`“Petitioners”) request inter partes review under 35 U.S.C. § 312 and 37 C.F.R.
`
`§ 42.108 of Claims 1-19 of U.S. Patent No. 6,174,237 (“the ’237 Patent”), which
`
`was issued on January 16, 2001 to John H. Stephenson.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`As set forth below and pursuant to 37 C.F.R. § 42.8(a)(1), the following
`
`mandatory notices are provided as part of this Petition:
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Game Show Network, LLC and WorldWinner.com, Inc. are the real parties-
`
`in interest for Petitioners.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Stephenson has asserted the ‘237 Patent against Petitioners in the civil action
`
`John H. Stephenson v. Game Show Network, LLC and WorldWinner.com, Inc.,
`
`Civil Action No. 1:12-cv-00614-SLR (D. Del.) (“the District Court Action”).
`
`C. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Pursuant to 37 C.F.R. ¶¶ 42.8(b)(3) and 42.10(a), Petitioners provide the
`
`following designation of counsel:
`
`Lead Counsel
`Brenton R. Babcock (Reg. No. 39,592)
`Brent.Babcock@knobbe.com
`Postal/Hand Delivery Address:
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`
`Back-up Counsel
`Ted M. Cannon (Reg. No. 55,036)
`Ted.Cannon@knobbe.com
`Postal/Hand-Delivery Address:
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`
`
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`

`
`IPR Petition for USP 6,174,237
`
`Back-up Counsel
`Telephone: (949) 760-0404
`Fax: (949) 760-9502
`
`Lead Counsel
`Telephone: (949) 760-0404
`Fax: (949) 760-9502
`
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`D.
`Please address all correspondence to the lead counsel at the address shown
`
`above.
`
` Petitioners also consent
`
`to electronic service by email
`
`to:
`
`BoxGSN@knobbe.com.
`
`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Petitioners certify that the ’237 Patent is available for inter partes review
`
`and that Petitioners are not barred or estopped from requesting an inter partes
`
`review challenging the patent claims on the grounds identified in this petition.
`
`Petitioners certify that they were served with the complaint in the District Court
`
`Action less than one year before the filing of this Petition.
`
`III.
`
`INTRODUCTION
`A. The ’237 Patent relates generally to online tournaments
`In general terms, the ’237 Patent describes a system and method of
`
`administering an online tournament over the Internet. Humans play games of the
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`tournament at computer terminals connected to a central host computer. The host
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`computer at least administers the games, such as, for example, by dealing cards to
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`players and enforcing game rules. In games that require more than one opponent,
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`the host computer can also participate as one or more opponents of a human player.
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`IPR Petition for USP 6,174,237
`
`The host computer administers a typical elimination tournament in which
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`players first play a qualifying round to try to qualify for a subsequent playoff
`
`round. The qualifying round is played between the host computer and a single
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`human player. Based upon the results of the qualifying round, the system classifies
`
`the human player into a performance level and determines if the player qualifies
`
`within a qualifying performance level. The human players that qualify then play in
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`a playoff round that includes both the host computer and other human players. In
`
`addition, the system distributes awards to the player based upon the level of
`
`performance the player achieves in the qualifying round and distributes awards to
`
`the ultimate tournament winners.
`
`B.
`
`Stephenson merely extended a common tournament format to
`Internet games between human and computer players
`
`There is nothing new about the basic tournament format of the ’237 Patent—
`
`a qualifying round followed by a playoff round, with awards given to the best
`
`performers in each round. For example, amateur and professional sports leagues
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`have long conducted an annual “regular season,” in which teams compete to
`
`qualify for the playoffs. The qualifying teams then compete in an elimination
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`playoff, in which winners advance and losers are eliminated, until a tournament
`
`winner is ultimately declared. Beyond sports leagues, this common tournament
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`format has long been widely used for every level of competition and almost any
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`type of game.
`
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`

`
`IPR Petition for USP 6,174,237
`
`Thus, Stephenson cannot credibly claim that he invented tournaments with
`
`qualifying and playoff rounds, classification of players by skill level, or providing
`
`awards to the best players. Instead, Stephenson apparently asserts that he invented
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`a method of playing such tournaments over the Internet between human players
`
`and a host computer. Stephenson’s supposed inventive insight was that in-person
`
`tournaments required people to travel too far and spend too much money to meet at
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`a central location. See Ex. 1001 at 1:31-32 (expressing need to allow people to
`
`play competitive games “without traveling long distances and incurring the
`
`expenses of meeting at a central contest site.”).
`
`Stephenson’s insight was not inventive in the least. It was merely a
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`common-sense application of the well-known fact that the Internet allows people to
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`interact remotely in events that previously required in-person interaction.
`
`Accordingly, because Stephenson merely implemented an Internet version of a
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`tournament format that had long been used in the physical world, the Patent Office
`
`could very well have rejected the claims as obvious. Nevertheless, the Patent
`
`Office allowed the ’237 Patent over the prior art considered by the Patent
`
`Examiner.
`
`C. Walker, which the Patent Examiner did not consider, anticipates
`or renders obvious the claims of the ’237 Patent
`
`The Patent Examiner did not know about the closest prior art when he
`
`allowed the ’237 Patent. The Patent Examiner never considered PCT International
`
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`

`
`IPR Petition for USP 6,174,237
`
`Publication No. WO 97/39811 to Walker Asset Management, L.P. (Ex. 1002)
`
`(“Walker”), a PCT publication that anticipates or renders obvious the claims of the
`
`’237 Patent. Walker was published on October 30, 1997, and therefore it is prior
`
`art to the ’237 Patent under 35 U.S.C. § 102(b).
`
`More than one year before Stephenson’s filing date, Walker had the same
`
`common-sense insight that purportedly inspired Stephenson’s alleged invention.
`
`Walker explains that, while competitive tournaments are very popular, in-person
`
`tournaments “suffer from several drawbacks,” including that “participants may
`
`have to travel considerable distance to get to the playing site and may require
`
`expensive overnight accommodations when the tournament lasts more than one
`
`day.” Ex. 1002 at 1:20-23. Not surprisingly, Walker reached the identical solution
`
`allegedly invented by Stephenson—playing tournaments over the Internet between
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`human players and a host computer.
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`Figure 1 of Walker illustrates the networked computers upon which
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`tournaments are played over the Internet:
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`

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`IPR Petition for USP 6,174,237
`
`
`
`The illustrated central controller (102) is the host computer that controls game play
`
`in the Internet tournament system disclosed by Walker. The illustrated I/O devices
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`(104, 106) are the computer terminals upon which the individual players play.
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`Walker discloses the same tournament format claimed in the ’237 Patent. In
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`general terms, Walker discloses a three-round tournament that includes at least one
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`qualifying round and at least one playoff round:
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`Each tournament has one or more game sessions which are sub-units
`of the tournament. After completion of the first game session, one or
`more players may be eliminated from the tournament. Each game
`session is further broken down into one or more challenges, which are
`the puzzles, trivia questions, or games in which the players compete.
`A trivia tournament, for example, may have three game sessions
`scheduled for start times of 1:00 PM, 2:00 PM, and 3:00 PM. Each
`game session may have twenty challenges—in this case multiple-
`choice questions. After a player completed the twenty questions of
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`

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`IPR Petition for USP 6,174,237
`
`the first game session, the central controller would determine whether
`or not the player had qualified to advance to the next round at 2:00
`PM.
`
`Ex. 1002 at 15:11-20.
`
`Walker further discloses evaluating the results of the qualifying round to
`
`classify each player within at least two performance levels and to determine
`
`whether the player qualifies for a playoff round:
`
`Another preferred embodiment includes the step of determining
`whether a player has qualified for advancement to the next game
`session. This includes the step of the central controller reviewing the
`player’s score after the just-concluded game session. This score is
`compared to the scores obtained by all of the other players in the same
`session. Based on these scores, the central controller produces a list
`of those participants qualifying for the subsequent session. There are
`a number of preferred embodiments for the qualifying criteria,
`including, for example, a minimum required score, a minimum
`average score over the last several game sessions, or the maximum
`score within a sub-group of players in the same session. Only those
`on the qualified list would be allowed to continue to play in the
`subsequent game session.
`
`Id. at 14:6-15.
`
`In addition, Walker discloses distributing awards based on the players’
`
`performance, both in the qualifying round and in the playoff round:
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`

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`IPR Petition for USP 6,174,237
`
`After the twenty questions of the 3:00 PM game session a winner
`would be determined and prizes would be awarded.
`* * *
`Although the final game session typically determines the winners for
`the tournament, merely advancing from one game session to the next
`may qualify the player for a prize or recognition.
`
`Id. at 15:20-21 & 15:30-16:2.
`
`In addition to the foregoing, Walker also discloses, or renders obvious, the
`
`other claim limitations of the ’237 Patent, as fully set forth below in Section V of
`
`this Petition. Accordingly, the Board should cancel Claims 1-19 of the ’237 Patent
`
`as unpatentable in view of Walker.
`
`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`The ’237 Patent is subject to the first-to-invent prior art rules in effect prior
`
`to the implementation of the America Invents Act. Accordingly, all references to
`
`35 U.S.C. §§ 102(b) and 103 set forth herein refer to those sections in effect prior
`
`to the implementation of the America Invents Act.
`
`Petitioners respectfully request that the Board cancel Claims 1-19 of the
`
`’237 Patent on the following grounds of unpatentability:
`
`Ground 1. Claims 1-6 and 8-19 of the ’237 Patent are unpatentable under
`
`35 U.S.C. § 102(b) as anticipated by PCT International Publication No. WO
`
`97/39811 to Walker Asset Management, L.P. (“Walker”);
`
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`

`
`IPR Petition for USP 6,174,237
`
`Ground 2. In the alternative, Claims 1-6 and 8-19 of the ’237 Patent are
`
`unpatentable under 35 U.S.C. § 103 because they would have been obvious, to a
`
`person of ordinary skill in the art, in view of Walker; and
`
`Ground 3. Claim 7 of the ’237 Patent is unpatentable under 35 U.S.C. §
`
`103 because it would have been obvious, to a person of ordinary skill in the art, in
`
`view of Walker.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`In the field of the alleged invention, a person of ordinary skill in the art
`
`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. Ex. 1005 ¶ 25.
`
`VI. CLAIM CONSTRUCTION
`The claim terms in the ’237 Patent are to be given their broadest reasonable
`
`construction in light of the specification of the ‘237 Patent. 37 C.F.R. § 42.100(b).
`
`“game of skill”
`
`A.
`Every claim of the ‘237 Patent includes the claim phrase “game of skill.”
`
`The specification of the ’237 Patent defines a game of skill “[f]or purposes of the
`
`present invention” as “any game where a player’s knowledge and experience
`
`influences the outcome of the game.” Ex. 1001 at 2:9-11. Further, the
`
`specification explicitly lists examples of games that are games of skill, indicating
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`IPR Petition for USP 6,174,237
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`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. Id. 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. Accordingly, 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.” Ex. 1005 ¶ 28.
`
`B.
`
`“playing a game of skill in a qualifying round between a single
`player and the host computer”
`
`Every claim of the ’237 Patent includes the claim phrase “playing a game of
`
`skill in a qualifying round between a single player and the host computer.” In view
`
`of the claim language and the specification, this claim phrase 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
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`computer. Ex. 1005 ¶ 30.
`
`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.”
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`IPR Petition for USP 6,174,237
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`Ex. 1001 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
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`“more than one.” Ex. 1005 ¶ 31.
`
`Further, in the context of other claim language, Stephenson distinguished the
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`game in the qualifying round from the game in the playoff round on the basis that
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`the game in the qualifying round has a “single player” but the game in the playoff
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`round includes “said player . . . along with other players.” Thus, by claiming a
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`game in the qualifying round “between a single player and the host computer,”
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`Stephenson chose to limit the game in the claimed qualifying round to a game that
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`includes only one human player. Ex. 1005 ¶ 32.
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`Specification language suggesting that the qualifying round could have more
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`than one participant does not override Stephenson’s choice to limit each game of
`
`the claimed qualifying round to a “single player.” Indeed, this specification
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`language is consistent with Stephenson’s clear choice, in the claim language, to
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`limit the game in the qualifying round to a “single player.” The specification states
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`that “[at] least one player participates in the qualifying round 20 against a host
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`computer” (Ex. 1001 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
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`IPR Petition for USP 6,174,237
`
`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.” Ex. 1005 ¶ 33. While Stephenson possibly could have claimed a
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`game in a qualifying round including at least one player, Stephenson chose to limit
`
`the game in the qualifying round to a single player. Id. ¶ 34.
`
`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.
`
`Ex. 1001 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, the claim limitation “playing a game of skill in a qualifying round
`
`between a single player and the host computer” should be construed broadly
`
`- 12 -
`
`

`
`IPR Petition for USP 6,174,237
`
`enough to encompass a single-player game administered by the host computer. Ex.
`
`1005 ¶ 35.
`
`Therefore, in view of the specification, 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 round,
`
`where the game includes only one human player and is at least administered by the
`
`host computer.” Ex. 1005 ¶ 36.
`
`C.
`
`“playing said game of skill in a playoff round between said player
`and the host computer simultaneously along with other players”
`
`Every claim of the ‘237 Patent includes the claim phrase “playing said game
`
`of skill in a playoff round between said player and the host computer
`
`simultaneously along with other players.” In accordance with its broadest
`
`reasonable construction, this claim limitation requires the playoff round to include
`
`the player involved in the qualifying round and at least two other players. Ex.
`
`1005 ¶ 38. In addition, as with the qualifying round, the host computer must at
`
`least administer the playoff round. Id. ¶ 39.
`
`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.” Ex. 1005 ¶ 40. The
`
`specification supports this ordinary meaning. The specification contrasts the
`
`qualifying round, which does not require simultaneous play, with the playoff
`
`- 13 -
`
`

`
`IPR Petition for USP 6,174,237
`
`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.
`
`Ex. 1001 at 4:30-38 (emphasis added). With respect to the playoff round, by
`
`contrast, the specification states:
`
`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 (italics emphasis added). Ex. 1005 ¶ 40.
`
`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.” Ex. 1001 at 4:60-63. The
`
`specification then explains that one of the qualifying players, Player C, plays the
`
`- 14 -
`
`

`
`IPR Petition for USP 6,174,237
`
`playoff round “[a]t the predetermined time on Saturday . . . simultaneously with
`
`other Gold level players.” Id. at 5:45-47; Ex. 1005 ¶ 41.
`
`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. Ex. 1005 ¶ 42.
`
`In view of the foregoing, 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.” Ex. 1005 ¶ 43.
`
`Steps (b) and (c) of Claim 1
`
`D.
`Every claim of the ’237 Patent includes the following limitations (recited in
`
`Claim 1):
`
`b. evaluating the results of said qualifying round to determine
`if said player qualifies to be classified within a specific performance
`level from a plurality of performance levels ranging from a low
`performance level to a high performance level;
`c. evaluating the results of said qualifying round to determine
`if said player qualifies
`to be classified within a qualifying
`performance level taken from said plurality of performance levels;
`
`- 15 -
`
`

`
`IPR Petition for USP 6,174,237
`
`Ex. 1001 at 6:7-15. Under the broadest reasonable construction in view of the
`
`specification standard, these 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.
`
`Ex. 1005 ¶ 44.
`
`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
`
`

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