`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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`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
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`
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`
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`IPR Petition for USP 6,174,237
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`TABLE OF CONTENTS
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`Page No.
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`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)..........................1
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`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)............................1
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`Related Matters Under 37 C.F.R. § 42.8(b)(2) .....................................1
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`Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3) ...................1
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`Service Information Under 37 C.F.R. § 42.8(b)(4)...............................2
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`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
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`C. Walker, which the Patent Examiner did not consider,
`anticipates or renders obvious the claims of the ’237 Patent................4
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED ...................................8
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART.............................................9
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`VI. CLAIM CONSTRUCTION ............................................................................9
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`A.
`
`B.
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`C.
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`“game of skill”.......................................................................................9
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`“playing a game of skill in a qualifying round between a
`single player and the host computer”..................................................10
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`“playing said game of skill in a playoff round between said
`player and the host computer simultaneously along with
`other players” ......................................................................................13
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`D.
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`Steps (b) and (c) of Claim 1 ................................................................15
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`IPR Petition for USP 6,174,237
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`E.
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`F.
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`G.
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`“said game of skill is based on the memory reaction of the
`player” .................................................................................................17
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`Reservation of rights to rebut Stephenson claim construction............17
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`Reservation of rights to advocate different claim
`constructions, or that the claim phrases are indefinite, in
`district court litigation .........................................................................18
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`VII. EXPLANATION OF WHY THE CLAIMS ARE
`UNPATENTABLE........................................................................................18
`
`A.
`
`Claims 1-6 and 8-19 are Anticipated by Walker.................................18
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`1. Walker anticipates Claim 1.......................................................19
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`2. Walker anticipates Claim 2.......................................................30
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`3. Walker anticipates Claim 3.......................................................30
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`4. Walker anticipates Claim 4.......................................................31
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`5. Walker anticipates Claim 5.......................................................32
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`6. Walker anticipates Claim 6.......................................................32
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`7. Walker anticipates Claim 8.......................................................33
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`8. Walker anticipates Claim 9.......................................................33
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`9. Walker anticipates Claim 10.....................................................34
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`10. Walker anticipates Claim 11.....................................................35
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`11. Walker anticipates Claim 12.....................................................35
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`12. Walker anticipates Claim 13.....................................................36
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`13. Walker anticipates Claim 14.....................................................36
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`IPR Petition for USP 6,174,237
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`14. Walker anticipates Claim 15.....................................................37
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`15. Walker anticipates Claim 16.....................................................38
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`16. Walker anticipates Claim 17.....................................................38
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`17. Walker anticipates Claim 18.....................................................39
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`18. Walker anticipates Claim 19.....................................................39
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`B. Alternatively, Claims 1-6 and 8-19 Would Have Been
`Obvious in View of Walker ................................................................40
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`1.
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`Claim 1 would have been obvious even assuming
`minor differences between the Walker disclosure and
`Claim 1......................................................................................41
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`a.
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`b.
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`c.
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`d.
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`Claim 1 would have been obvious even
`assuming that Walker does not expressly
`disclose two separate steps (b) and (c) ...........................41
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`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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`IPR Petition for USP 6,174,237
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`TABLE OF CONTENTS
`(cont’d)
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`Page No.
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`e.
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`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
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`2.
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`3.
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`4.
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`C.
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`D.
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`Claim 7 Would Have Been Obvious in View of Walker....................50
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`Reservation of rights to rebut any other differences between
`Walker’s disclosure and the claims raised by Stephenson..................52
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`VIII. SECONDARY CONSIDERATIONS, EVEN IF CONSIDERED,
`FAIL TO OVERCOME THE EVIDENCE OF OBVIOUSNESS................53
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`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
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`X.
`
`CONCLUSION..............................................................................................55
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`IPR Petition for USP 6,174,237
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`TABLE OF AUTHORITIES
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`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
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`
`
`OTHER AUTHORITIES
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`35 U.S.C. § 102(b) .................................................................................................5, 8
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`35 U.S.C. § 103......................................................................................................8, 9
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`35 U.S.C. § 112........................................................................................................18
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`35 U.S.C. § 312..........................................................................................................1
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`35 U.S.C. § 314........................................................................................................54
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`37 C.F.R. § 42 ....................................................................................................1, 2, 9
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`IPR Petition for USP 6,174,237
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`EXHIBIT LIST
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
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`1006
`1007
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`
`
`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.
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`
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`Exhibit List, Page 1
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`
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`IPR Petition for USP 6,174,237
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`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
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`was issued on January 16, 2001 to John H. Stephenson.
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`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
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`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-
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`in interest for Petitioners.
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`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`Stephenson has asserted the ‘237 Patent against Petitioners in the civil action
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`John H. Stephenson v. Game Show Network, LLC and WorldWinner.com, Inc.,
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`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
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`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
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`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
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`to electronic service by email
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`to:
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`BoxGSN@knobbe.com.
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`II. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
`Petitioners certify that the ’237 Patent is available for inter partes review
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`and that Petitioners are not barred or estopped from requesting an inter partes
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`review challenging the patent claims on the grounds identified in this petition.
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`Petitioners certify that they were served with the complaint in the District Court
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`Action less than one year before the filing of this Petition.
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`III.
`
`INTRODUCTION
`A. The ’237 Patent relates generally to online tournaments
`In general terms, the ’237 Patent describes a system and method of
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`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
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`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
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`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
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`the human player into a performance level and determines if the player qualifies
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`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
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`addition, the system distributes awards to the player based upon the level of
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`performance the player achieves in the qualifying round and distributes awards to
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`the ultimate tournament winners.
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`B.
`
`Stephenson merely extended a common tournament format to
`Internet games between human and computer players
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`There is nothing new about the basic tournament format of the ’237 Patent—
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`a qualifying round followed by a playoff round, with awards given to the best
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`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
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`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
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`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
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`Thus, Stephenson cannot credibly claim that he invented tournaments with
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`qualifying and playoff rounds, classification of players by skill level, or providing
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`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
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`and a host computer. Stephenson’s supposed inventive insight was that in-person
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`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
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`play competitive games “without traveling long distances and incurring the
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`expenses of meeting at a central contest site.”).
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`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.
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`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
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`could very well have rejected the claims as obvious. Nevertheless, the Patent
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`Office allowed the ’237 Patent over the prior art considered by the Patent
`
`Examiner.
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`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
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`allowed the ’237 Patent. The Patent Examiner never considered PCT International
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`IPR Petition for USP 6,174,237
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`Publication No. WO 97/39811 to Walker Asset Management, L.P. (Ex. 1002)
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`(“Walker”), a PCT publication that anticipates or renders obvious the claims of the
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`’237 Patent. Walker was published on October 30, 1997, and therefore it is prior
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`art to the ’237 Patent under 35 U.S.C. § 102(b).
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`More than one year before Stephenson’s filing date, Walker had the same
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`common-sense insight that purportedly inspired Stephenson’s alleged invention.
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`Walker explains that, while competitive tournaments are very popular, in-person
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`tournaments “suffer from several drawbacks,” including that “participants may
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`have to travel considerable distance to get to the playing site and may require
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`expensive overnight accommodations when the tournament lasts more than one
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`day.” Ex. 1002 at 1:20-23. Not surprisingly, Walker reached the identical solution
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`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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`IPR Petition for USP 6,174,237
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`
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`The illustrated central controller (102) is the host computer that controls game play
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`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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`IPR Petition for USP 6,174,237
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`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.
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`Ex. 1002 at 15:11-20.
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`Walker further discloses evaluating the results of the qualifying round to
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`classify each player within at least two performance levels and to determine
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`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.
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`Id. at 14:6-15.
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`In addition, Walker discloses distributing awards based on the players’
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`performance, both in the qualifying round and in the playoff round:
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`IPR Petition for USP 6,174,237
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`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.
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`Id. at 15:20-21 & 15:30-16:2.
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`In addition to the foregoing, Walker also discloses, or renders obvious, the
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`other claim limitations of the ’237 Patent, as fully set forth below in Section V of
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`this Petition. Accordingly, the Board should cancel Claims 1-19 of the ’237 Patent
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`as unpatentable in view of Walker.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED
`The ’237 Patent is subject to the first-to-invent prior art rules in effect prior
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`to the implementation of the America Invents Act. Accordingly, all references to
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`35 U.S.C. §§ 102(b) and 103 set forth herein refer to those sections in effect prior
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`to the implementation of the America Invents Act.
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`Petitioners respectfully request that the Board cancel Claims 1-19 of the
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`’237 Patent on the following grounds of unpatentability:
`
`Ground 1. Claims 1-6 and 8-19 of the ’237 Patent are unpatentable under
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`35 U.S.C. § 102(b) as anticipated by PCT International Publication No. WO
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`97/39811 to Walker Asset Management, L.P. (“Walker”);
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`IPR Petition for USP 6,174,237
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`Ground 2. In the alternative, Claims 1-6 and 8-19 of the ’237 Patent are
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`unpatentable under 35 U.S.C. § 103 because they would have been obvious, to a
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`person of ordinary skill in the art, in view of Walker; and
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`Ground 3. Claim 7 of the ’237 Patent is unpatentable under 35 U.S.C. §
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`103 because it would have been obvious, to a person of ordinary skill in the art, in
`
`view of Walker.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`In the field of the alleged invention, a person of ordinary skill in the art
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`would have had a bachelor of science degree in computer science, at least two
`
`years of experience developing computer gaming applications, and significant
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`first-hand experience observing, administering, and/or participating in competitive
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`tournaments. Ex. 1005 ¶ 25.
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`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
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`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,
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`blackjack and question/answer trivia games.” Id. at 2:12-13. The specification
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`additionally lists strategy games as examples of games of skill. Id. at 3:33-35.
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`Examples of strategy games include, among others, “player participation sports
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`including but not limited to virtual sporting events, video sporting events, and
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`computer based sporting events” and “player participation action games.” Id. at
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`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”
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`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
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`between two or more human players in a game in the qualifying round. Rather,
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`each game of the qualifying round is limited to a single human player and the host
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`computer. Ex. 1005 ¶ 30.
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`The specification makes clear that the phrase “single player” means only one
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`human player. For example, the specification states that “the host computer has
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`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
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`can be only a single game or a series of games” (Id. at 3:62-63), thereby indicating
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`that Stephenson used the term “single” to explicitly distinguish “only one” from
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`“more than one.” Ex. 1005 ¶ 31.
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`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
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`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
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`during the qualifying round 20 is open-ended” (id. at 3:27-29). The claim
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`language allows multiple participants in the qualifying round in the sense that the
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`IPR Petition for USP 6,174,237
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`qualifying round could include multiple games. However, the claim language is
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`clear that each game in the qualifying round is “between a single player and the
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`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
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`the game in the qualifying round to a single player. Id. ¶ 34.
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`While each of the claimed games in the qualifying round is limited to a
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`single player and the host computer, the claims do not require head-to-head
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`competition between the single player and the host computer. Rather, in view of
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`the specification, the claim phrase is broader, encompassing single-player games
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`administered by the host computer. In particular, the specification states that:
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`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.
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`Ex. 1001 at 2:16-21. Further, both the specification (id. at 3:43) and Claim 10 of
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`the ‘237 Patent indicate that the game of skill may be a single-player game, such as
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`solitaire, for which the host computer is not a head-to-head opponent of the human
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`player. Thus, the claim limitation “playing a game of skill in a qualifying round
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`between a single player and the host computer” should be construed broadly
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`IPR Petition for USP 6,174,237
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`enough to encompass a single-player game administered by the host computer. Ex.
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`1005 ¶ 35.
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`Therefore, in view of the specification, the broadest reasonable construction
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`of the claim phrase “playing a game of skill in a qualifying round between a single
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`player and the host computer” is “playing a game of skill in a qualifying round,
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`where the game includes only one human player and is at least administered by the
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`host computer.” Ex. 1005 ¶ 36.
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`C.
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`“playing said game of skill in a playoff round between said player
`and the host computer simultaneously along with other players”
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`Every claim of the ‘237 Patent includes the claim phrase “playing said game
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`of skill in a playoff round between said player and the host computer
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`simultaneously along with other players.” In accordance with its broadest
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`reasonable construction, this claim limitation requires the playoff round to include
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`the player involved in the qualifying round and at least two other players. Ex.
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`1005 ¶ 38. In addition, as with the qualifying round, the host computer must at
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`least administer the playoff round. Id. ¶ 39.
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`The broadest reasonable construction of the claim term “simultaneously”
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`requires that all players in the playoff round play at the same time. The ordinary
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`meaning of “simultaneously” is “at the same time.” Ex. 1005 ¶ 40. The
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`specification supports this ordinary meaning. The specification contrasts the
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`qualifying round, which does not require simultaneous play, with the playoff
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`IPR Petition for USP 6,174,237
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`round, which does require simultaneous play. With respect to the qualifying
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`round, the specification states:
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`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.
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`Ex. 1001 at 4:30-38 (emphasis added). With respect to the playoff round, by
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`contrast, the specification states:
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`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.
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`Id. at 4:39-43 (italics emphasis added). Ex. 1005 ¶ 40.
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`Similarly, the “EXAMPLE OF THE PREFERRED EMBODIMENT”
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`section provides an example in which the “qualifying round is open for play seven
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`days a week, twenty-four hours per day,” but the “playoff round is to be played on
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`each Saturday from 6 p.m. to 8 p.m. GMT.” Ex. 1001 at 4:60-63. The
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`specification then explains that one of the qualifying players, Player C, plays the
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`IPR Petition for USP 6,174,237
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`playoff round “[a]t the predetermined time on Saturday . . . simultaneously with
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`other Gold level players.” Id. at 5:45-47; Ex. 1005 ¶ 41.
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`Accordingly, according to the specification, while a player may choose
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`when to play the qualifying round (within a broad time period), all players of the
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`playoff round must play the round simultaneously, starting at a specific
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`predetermined time and continuing for a preset amount of time. Ex. 1005 ¶ 42.
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`In view of the foregoing, the broadest reasonable construction, in view of the
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`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
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`the host computer and in which the human player involved in the qualifying round
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`and at least two other human players are playing at the same time.” Ex. 1005 ¶ 43.
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`Steps (b) and (c) of Claim 1
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`D.
`Every claim of the ’237 Patent includes the following limitations (recited in
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`Claim 1):
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`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;
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`IPR Petition for USP 6,174,237
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`Ex. 1001 at 6:7-15. Under the broadest reasonable construction in view of the
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`specification standard, these steps (b) and (c) of Claim 1 cover a process in which
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`steps (b) and (c) are either performed sequentially in two separate steps or are
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`performed simultaneously in a single step. This construction is supported by the
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`claim language and the specification. The claim language does not specify
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`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
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`covers either sequential performance or simultaneous performance as a single step.
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`Ex. 1005 ¶ 44.
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`Further, the fact that dependent Claim 8 explicitly recites that “said step (b)
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`and step (c) are performed simultaneously” supports a construction in which steps
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