By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Thomas J. Leach
`Merchant & Gould P.C.
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: stephensonipr@merchantgould.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`____________
`
`Case IPR2013-00289
`Patent 6,174,237
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`EVIDENCE SUBMITTED BY GAME SHOW NETWORK, LLC AND
`WORLDWINNER.COM UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`Robert A. Kalinsky
`
`Thomas J. Leach
`Merchant & Gould P.C.
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: stephensonipr@merchantgould.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`____________
`
`Case IPR2013-00289
`Patent 6,174,237
`____________
`
`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
`EVIDENCE SUBMITTED BY GAME SHOW NETWORK, LLC AND
`WORLDWINNER.COM UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00289
`Patent No. 6,174,237
`
`Petitioners’ reply illustrates why Exhibits 1011-14 and 1021 should be
`
`excluded. First, the exhibits are not relevant to claim construction, which is
`
`determined based on the claims, specification and file history as a matter of law.
`
`Petitioners admit they seek to use information about a case that was never litigated
`
`to “factually undermine” Patent Owner John H. Stephenson’s (“Stephenson”)
`
`claim construction. Response at 5 (emphasis in original). Therefore, even by
`
`Petitioners’ admission, the factual “evidence” of Exhibits 1011-14 and 1021 is
`
`irrelevant to claim construction.
`
`Second, Petitioners argument that Stephenson made admissions in a case
`
`where default judgment was entered without an answer or any discovery is flawed.
`
`Nothing in the pleadings of the prior case constitutes an admission as to the scope
`
`of the claims and Petitioners’ logic simply does not follow. In fact, Petitioners fail
`
`provide sufficient foundation for the proposed exhibits and the inferences they
`
`allegedly support. Therefore, the Board should exclude each of Exhibits 1011-14
`
`and 1021.
`
`I.
`
`Exhibits 1011-14 and 1021 are Irrelevant to the Board’s Inquiry.
`
`The exhibits have no relevance to claim construction. Claim construction is
`
`a question of law, based on the language of the claims, the patent specification, and
`
`the file history. Markman v. Westview Instruments, Inc., 517 US 370, 384 (1996);
`
`Phillips v. AWH Corp., 415 F. 3d 1303, 1314 (Fed. Cir. 2005). As they must,
`
`
`
`1
`
`
`
`Petitioners don’t even argue that legal estoppel applies. Instead, Petitioners admit
`
`that they present Exhibits 1011-14 and 1021 to argue questions of fact related to
`
`claim construction. Response at 5. Claim construction is not determined based on
`
`some inference made from pleadings in a different case, involving some unknown
`
`version of a different product, and which no discovery about that product was
`
`taken.
`
`Petitioner’s allegation of “admission” by Stephenson is legally irrelevant. In
`
`their Response, Petitioners ignore the legal requirements of claim construction to
`
`argue that Stephenson has made certain “admissions” regarding the ‘237 claims.
`
`Even if Stephenson had made statements outside of this proceeding and outside of
`
`the prosecution of the ’237 patent, those statements are irrelevant. Claim
`
`construction is a legal question based on the claims, specification, and patent file
`
`history. Any outside statements made by Stephenson have no effect on this
`
`inquiry. See Phillips v. AWH Corp., 415 F. 3d at 1314.
`
`However, Stephenson’s MVP lawsuit is not the admission Petitioners claim.
`
`These admissions are not actual admissions, but are, instead vague inferences that
`
`depend on a factual determination of the actual gameplay of Golden Fairway. In
`
`order for the Board to lend credence to Petitioners’ argument, the Board would
`
`first need to make a factual determination of all the play options in Golden
`
`Fairway. Such a determination is appropriate to a federal court, but not part of an
`
`
`
`2
`
`
`
`inter partes review. Exhibits 1011-14 and 1021 are factual documents related to
`
`the gameplay of MVP’s Golden Fairway and the alleged statements made by
`
`Stephenson.
`
`II. Exhibits 1011-14 and 1021 Lack Foundation and Do Not
`Represent Admissions by Stephenson.
`
`Taken in its best light, Petitioners’ argument requires that they show that
`
`Golden Fairway lacked computer-controlled opponents in all versions going back
`
`to 2003, and that Stephenson knew and understood that it lacked such features.
`
`They have shown neither. Petitioners have failed to provide sufficient foundation
`
`to show the actual gameplay of all possible Golden Fairway games, and have failed
`
`to show how Stephenson’s level of knowledge regarding those games constitutes
`
`an admission.
`
`Petitioners fail to provide a foundation for Mr. Johnson’s statements.
`
`Exhibits 1011 and 1021, Mr. Johnson’s review and affidavit, never claim that Mr.
`
`Johnson looked at all the versions of the Golden Fairway game. Mr. Johnson also
`
`does not explain how he could tell whether the opponents with whom he was
`
`playing were controlled by players or by the computer. Mr. Johnson would not be
`
`the first game player to mistake computer “bots” for human opponents. He makes
`
`no claim that Golden Fairway specifically stated that no players could be computer
`
`opponents, only that he did not know of any such players.
`
`
`
`3
`
`
`
`Furthermore, Mr. Johnson’s alleged experience with Golden Fairway is very
`
`time-limited. Mr. Johnson refers to playing the game “shortly” prior to writing the
`
`review in November, 2009. Exhibit 1021 ¶4. Petitioners then attempt to refer Mr.
`
`Johnson’s statements to all possible versions of Golden Fairway. Stephenson was
`
`eligible to seek damages for all versions of the Golden Fairway game going back
`
`six years from the time of filing. Mr. Johnson does not address any other versions
`
`of Golden Fairway, other than the one that existed in November, 2009, and
`
`provides no insight as to how he knew that version, or any other, excluded
`
`computer opponents.
`
`Finally, Petitioners incorrectly assume that Stephenson must have known the
`
`intimate details of the Golden Fairway golf game before filing suit. Petitioners
`
`argue that it would have been unethical for Stephenson to file a lawsuit without
`
`such details. Response at 1. That is untrue. Stephenson’s attorney was required to
`
`have a good faith basis to believe that the claims were infringed by Golden
`
`Fairway. Fed. R. Civ. P. 11. Stephenson was, however, entitled to plead the facts
`
`known to him and seek additional details, such as comprehensive source code and
`
`gameplay details for all previous versions, in discovery. In this case, Stephenson
`
`never got the chance. Therefore, the mere fact of Stephenson’s filing cannot be
`
`interpreted as factual evidence of the content of the game or Stephenson’s intent
`
`with regard to claim construction.
`
`
`
`4
`
`
`
`III. Conclusion
`
`Petitioner admitted that it was not providing Exhibits 1011-14 and 1021 for
`
`a legal question of claim construction. Petitioner is not even seeking to use them
`
`for estoppel. Therefore, any use of the documents regarding that lawsuit is
`
`irrelevant and should be excluded under Rules 401 and 403. Petitioner also fails to
`
`provide the foundation necessary to submit Exhibits 1011-14 and 1021. Any
`
`miniscule relevance of these materials is outweighed by their creation of confusion
`
`and prejudice. Accordingly, Stephenson respectfully requests the Board grant its
`
`Motion to Exclude Exhibits 1011-1014 and 1021.
`
`
`
`Date: June 16, 2014
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Daniel W. McDonald/
`Daniel W. McDonald, Reg. No. 32,044
`
`
`
`Attorneys for Patent Owner Stephenson
`
`
`
`
`
`5
`
`
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`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE EVIDENCE
`SUBMITTED BY GAME SHOW NETWORK, LLC AND
`WORLDWINNER.COM UNDER 37 C.F.R. § 42.64 was served on June 16, 2014
`by filing the document(s) through the Patent Review Processing System and
`delivering a copy via electronic mail at BoxGSN@knobbe.com. Petitioners have
`agreed to accept service electronically.
`
`Respectfully submitted,
`MERCHANT & GOULD P.C.
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`(612) 332-5300
`
`
`/Daniel W. McDonald/
`Name: Daniel W. McDonald
`Reg. No.: 32,044
`
`
`
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`1
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`Date: June 16, 2014
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