Filed on Behalf of: Patent Owner John H. Stephenson
`By: Daniel W. McDonald
`
`Robert A. Kalinsky
`
`Merchant & Gould P.C.
`
`Counsel for Patent Owner
`P.O. Box 2903
`Minneapolis, Minnesota 55402-0903
`Telephone: (612) 332-5300
`Email: dmcdonald@merchantgould.com
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`
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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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`____________
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`GAME SHOW NETWORK, LLC AND WORLDWINNER.COM
`
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`
`Patent Owner
`
`____________
`
`Case IPR2013-00289
`
`Patent 6,174,237
`
`____________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW FOR U.S. PATENT NO.
`6,174,237 PURSUANT TO 35 U.S.C. §313 AND 37 CFR §42.107
`
`

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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
`
`
`Table of Contents
`
`
`INTRODUCTION ............................................................................................ 1 
`I. 
`II.  BACKGROUND .............................................................................................. 4 
`a.  The ‘237 Patent is Directed to Playing Games in a Format that Allows
`Gauging The Relative Skill of Players, Not Merely Playing Games Over
`the Internet. ................................................................................................... 4 
`b.  Walker Lacks Disclosure of the “Playing a game…Between” Limitations
`and Is Fundamentally Different From The ‘237 Patent’s Claimed
`Invention. ...................................................................................................... 6 
`c.  Petitioners’ Construction of the “Playing A Game. . . Between” Claim
`Elements Is Unduly Broad. ........................................................................... 7 
`d.  Stephenson Sued Petitioners For Patent Infringement. ................................ 9 
`III.  LEVEL OF ORDINARY SKILL IN THE ART ............................................ 10 
`IV.  STANDARD FOR GRANTING INTER PARTES REVIEW ........................ 10 
`V.  PETITIONERS’ LITIGATION-DRIVEN CLAIM CONSTRUCTIONS ARE
`NOT SUPPORTED BY THE CLAIM LANGUAGE OR THE
`SPECIFICATION ........................................................................................... 11 
`“Game of Skill.” .......................................................................................... 11 
`“Playing A Game Of Skill In A Qualifying Round Between A Single
`Player And A Host Computer.” .................................................................. 12 
`“Playing Said Game Of Skill In A Playoff Round Between Said Player
`And The Host Computer Simultaneously Along With Other Players.” ..... 15 
`d.  Claim 1 Does Not Require An Order Of Steps (a) And (c). ....................... 17 
`“Said Game Of Skill Is Based On The Memory Reaction Of The Player.”
`e. 
` ..................................................................................................................... 18 
`“Evaluating The Results Of Said Playoff Round To Determine Tournament
`Winners And Subsequent Ranking Of Players.” ........................................ 19 
`VI.  THE PETITION SHOULD BE DENIED BECAUSE NONE OF
`PETITIONERS’ THREE GROUNDS HAVE ANY REASONABLE
`LIKELIHOOD OF PREVAILING WITH RESPECT TO ANY
`CHALLENGED CLAIM AS PROPERLY CONSTRUED ........................... 20 
`
`a. 
`b. 
`
`c. 
`
`f. 
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`
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`i
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`

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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
`
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`a.  Ground 1 Fails Because Walker Does Not Disclose Performance Of All
`The Method Steps Including Playing “Between” A Player And Host
`Computer And Thus Does Not Anticipate Any Claim Of The ‘237 Patent.
` ..................................................................................................................... 20 
`b.  Grounds 2 And 3 Fail Because Petitioners Fail To Present Any Evidence
`Or Argument Showing That Walker Renders Obvious Any Claim Of The
`‘237 Patent Under Stephenson’s Proposed Constructions Of Elements (a)
`And (e) Of Claim 1. .................................................................................... 21 
`VII.  RESERVATION OF RIGHTS ....................................................................... 23 
`VIII. CONCLUSION ............................................................................................... 24 
`
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
`
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`EXHIBIT LIST
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`Exhibit No.
`2001
`
`Description
`Definitions from Merriam-Webster’s Collegiate Dictionary (10th
`ed. 1993)
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`iii
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`I.
`
`INTRODUCTION
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
`
`
`The patent owner John Stephenson (“Stephenson”), an individual inventor
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`and owner of Mega Dollar Games, LLC (www.megadollargames.com),
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`respectfully requests that the Board deny the Petition for Inter Partes Review filed
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`by Game Show Network, LLC and WorldWinner.com, Inc. (“Petitioners”)
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`challenging U.S. Patent No. 6,174,237 (“Ex. 1001”). The Petition should be
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`denied because PCT Int’l Publ. No. WO 97/39811 to Walker Asset Management,
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`L.P. (“Walker”) (Ex. 1002)—the reference upon which Petitioners’ rely for all of
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`their invalidity positions1—does not anticipate or render obvious any claim of the
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`‘237 patent under a proper construction of the claims.
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`Reason 1: Petitioners provide no argument or evidence under the proper
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`claim construction to support their anticipation or obviousness challenges and
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`therefore the petition should be denied. Every claim of the ‘237 patent depends
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`from claim 1, which recites a “method of playing a game … over an interactive
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`computer system . . . having a host computer system.” Every claim includes the
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`steps of “playing a game of skill” in a “qualifying round” and a “playoff round”
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`“between” a player “and the host computer.” Walker fails to disclose a system
`
`
`1 Petitioners rely on two other patents (“Demar” and “Hamilton”) in arguing that
`claims 6 and 7 of the ‘237 patent are obvious in view of Walker combined with
`Delmar and Hamilton. Pet. at p. 50. However, those obviousness arguments do not
`relate to the “playing . . . between” limitations.
`1
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`where a game of skill is played “between” a player and a host computer. Walker
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`does not disclose, teach or suggest a system where the host computer acts as a
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`computer opponent even once, let alone twice as required by every claim of the
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`‘237 patent.
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`Petitioners incorrectly argue that this “between” language in the claims of
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`the ‘237 patent broadly covers a computer system that merely “administers” a
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`game of skill tournament. Petitioners’ erroneous construction attempts to rewrite
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`the claim language from a method requiring a host computer playing against a
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`human player to a method where the computer system merely administers the
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`game tournament. The claims are not so broad. The computer system, through the
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`host computer, plays a game of skill against the human player. In other words, the
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`method requires the host computer to compete against or “play” the human player.
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`The broadest reasonable interpretation, in view of the claim language and other
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`intrinsic evidence, requires play between a human player and the host computer—
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`not simply that the host computer administers the game.
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`Because the Petition is based solely on a faulty claim construction, it should
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`be denied. Petitioners do not allege that Walker anticipates or renders obvious any
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`claim of the ‘237 patent under the proper construction of the claims. Petitioners
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`fail to even attempt to show that the claims, as properly construed to require play
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`2
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`“between” a host computer and human player in at least two claim elements, are
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`anticipated or obvious in view of Walker.
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`The claimed computer system provides unique advantages over Walker and
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`the other prior art by requiring play between a player and a host computer. Such
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`play addresses the “need for a tournament which allows for a player to compete
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`and obtain a reliable index as to his skill as compared to other competitors
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`competing under the same game conditions while simultaneously enjoying the
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`game.” Ex. 1001 at 1:59-63. Walker teaches a system lacking these elements and
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`thus is fundamentally different from every claim of the ‘237 patent. Because the
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`Petition fails to even attempt to show that Walker anticipates or renders obvious
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`any claim of the ‘237 patent under a proper claim construction, the Petition should
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`be denied.
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`The Petition also includes a number of proposed claim constructions that are
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`unduly narrow. These constructions are a transparent attempt to lay groundwork
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`for non-infringement arguments should the Petition fail. These constructions need
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`not be addressed if the Petition is denied on the grounds set forth above. If those
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`constructions are addressed, they should be rejected as set forth in more detail
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`below.
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`3
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`II. BACKGROUND
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
`
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`a. The ‘237 Patent is Directed to Playing Games in a Format that
`Allows Gauging The Relative Skill of Players, Not Merely Playing
`Games Over the Internet.
`
`The ‘237 patent discloses tournament systems that, among other things,
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`
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`allow players to obtain a reliable measure of their skill. It does this by having a
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`human player play a game of skill in a qualifying round against a host computer
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`opponent. The player’s score is evaluated and the player is classified into a level
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`of performance that matches his results. Ex. 1001 at 3:66-4:5; see also 3:15-17
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`(“At least one player participates in the qualifying round 20 against a host
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`computer.”). Based on the player’s specific performance level, she may qualify to
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`play in a playoff round. Id. at 4:18-21. In the playoff round, players play the game
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`of skill against the host computer under the same game conditions along with other
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`players playing the game of skill against a host computer, and their scores are
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`compared to determine a winner and subsequent ranking. Id. 2:38-54.
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`Having the human player play against a host computer acts as a “control”
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`because the host computer provides a consistent opponent response to each
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`player’s like play. This method increases reliability and decreases the uncontrolled
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`variables of player evaluations that are otherwise inherent in evaluations based on
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`human players playing against one another. This novel method for playing a game
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`of skill tournament allows players to “obtain a reliable index as to his skill as
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`4
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`compared to other competitors competing under the same game conditions.” Id. at
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`1:59-62; see also Id. at Abstract (“method for a game of skill tournament that is
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`challenging and also provides the player a reliable gauge of his skill level as
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`compared to other players.”); Id. at 2:43-45 (“…play the game of skill against the
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`host computer under the same rules and conditions…”). This provides a better
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`system for determining a player’s skill by removing the variables and
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`inconsistencies caused by human opponents.
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`The ‘237 patent also has various levels of performance. Id. at 3:59-61.
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`Once the player completes his play against the host computer, the results are
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`analyzed to determine if they satisfy criteria that allow the player to be classified
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`into a specific level of performance. Id. at 3:66-4:5. Players within specific levels
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`of performance, who have qualified for the playoff round, play the game of skill
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`against the host computer a second time, and their results are evaluated to
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`determine a winner. Id. at 4:18-21, 39-51.
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`Petitioners support their erroneous argument as to the “inventive insight” of
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`Stephenson by paraphrasing a quote from the patent as “expressing need to allow
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`people to play competitive games ‘without traveling long distances and incurring
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`the expenses of meeting at a central contest site.’” Pet. at p. 4. Petitioners’
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`selective quote of the specification leaves out critical context that reveals that the
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`invention actually was directed to gauging skill levels compared to other players.
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`The entire sentence cited by Petitioners, with the omitted portion boldfaced, states
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`as follows: “There exists the need for a gaming format which allows a player
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`to gauge the level of skill he possesses as compared to other players, without
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`traveling long distances and incurring the expenses of meeting at a central contest
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`site.” Ex. 1001 at 1:28-32.
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`Petitioners thus improperly characterize Stephenson’s invention as merely
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`extending common tournament formats to the Internet. As shown above, the
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`invention is directed to gauging player abilities.
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`b. Walker Lacks Disclosure of the “Playing a game…Between”
`Limitations and Is Fundamentally Different From The ‘237
`Patent’s Claimed Invention.
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`The Walker reference discloses a different tournament system than the
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`inventions claimed in the ‘237 patent. First, Walker does not disclose that each
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`human player competes against the host computer player in their qualifying round.
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`Walker discloses no means by which results can be evaluated against other players
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`playing against a host computer. In the ‘237 patent, human players play against
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`the host computer, which can respond consistently to each player’s actions under
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`the same game conditions (i.e. the same shuffle, cards dealt, cards played, etc.),
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`and players may be more reliably evaluated and classified into performance levels.
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`Unlike the ‘237 patent, the computer in Walker simply sponsors or administers
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`game play—but does not act as an opponent. Ex. 1002 at p. 15, lines 13-15 (“Each
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`game session is further broken down into one or more challenges, which are the
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`puzzles, trivia questions, or games in which the players compete.”) (emphasis
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`added). Walker does not disclose a computer system that acts as an opponent—it
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`either sponsors a game, such as trivia, or allows human players to compete directly
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`against one another.
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`Walker is directed to competition between human players: “Player curiosity
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`as to which team was really the best would not be satisfied without a head to head
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`competition.” Ex. 1002 at p. 5, lines 10-12. This is also confirmed in Walker’s
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`Summary of The Invention where it states that a player’s “unique identifier allows
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`other players to know whom they are competing against.” Ex. 1002 at p. 6, lines
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`15-16. Walker also discloses that the database can store information about a
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`player’s favorite opponents. Ex. 1002 at p. 13, lines 8-11. Nothing in Walker
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`suggests any benefit to, or reason for, players playing against the computer.
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`These and other fundamental differences lead Petitioners to incorrectly
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`construe the claims and also cause their anticipation and obviousness arguments to
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`fail.
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`
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`c. Petitioners’ Construction of the “Playing A Game. . . Between”
`Claim Elements Is Unduly Broad.
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`Petitioners’ construction of the “playing a game . . . between” language in
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`elements (a) and (e) of claim 1 is incorrect and not supported by the claim
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`language or specification. Elements (a) and (e) of claim 1 both require play
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`between a human player and a host computer. Ex. 1001 at 6:5-6, 20-23. Petitioners
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`argue that this “playing a game … between” language simply requires that the host
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`computer “at least administer” the game. Pet. at p. 13; see also Pet. at p. 12. This
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`construction thus includes methods in which the computer merely sponsors the
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`game.
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`Petitioners’ construction is overbroad for several reasons. One, it ignores
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`the ordinary meaning of the claim language “playing a game . . . between” a player
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`and a host computer. “Playing” ordinarily does not include administering a game.
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`Players are the ones actually playing a game; administrators run a game but do not
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`play it.
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`Implicitly acknowledging their definition is contrary to the ordinary meaning
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`of “playing a game . . . between,” Petitioners cite the specification. However, the
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`sentences quoted by Petitioners contradict their position. The sentences state:
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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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`Pet. at p. 12 (emphasis added). This language shows two alternative modes of
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`Case No. IPR2013-00289
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`Patent Owner Preliminary Response
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`operation of the computer: either as a “game sponsor” or acting as “another
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`player.” The word Petitioners propose, “administering,” is nowhere to be found.
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`Administering is, however, analogous to sponsoring, as both words suggest
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`keeping score and operating and monitoring the game. However, those very
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`activities are contrasted with and different from playing in the cited excerpt. Thus,
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`the specification contradicts Petitioners’ proposed definition and supports the plain
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`meaning of “playing,” which excludes merely administering or sponsoring the
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`game.
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`In short, Petitioners fail to show any support in the intrinsic record for
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`varying the meaning of “playing a game . . . between” a player and a host
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`computer. Both the human player and the host computer play the game. These
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`claim elements do not encompass a computer which merely administers the game
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`without playing it. Petitioners’ proposed construction should be rejected.
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`d. Stephenson Sued Petitioners For Patent Infringement.
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`Stephenson owns and operates a gaming website that competes directly with
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`Petitioners. Stephenson’s website is www.megadollargames.com. Petitioners
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`operate www.worldwinner.com, which also provides internet games. Stephenson
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`sued Petitioners for infringing the ‘237 patent on May 17, 2012. Petitioners filed
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`their request for inter partes review on May 17, 2013.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`Petitioners overestimate the level of skill a person of ordinary skill in the art
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`would possess. The Patent Owner reserves the right to challenge the skill level
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`should this petition proceed. This Preliminary Response demonstrates the Petition
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`should be denied under any assumed level of skill in the art, and thus the standard
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`is not challenged herein.
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`IV. STANDARD FOR GRANTING INTER PARTES REVIEW
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`Congress, under 35 U.S.C. §314(a), limited the Board’s authority to institute
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`inter partes review to those circumstances where “the information presented in the
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`petition . . . and any response . . . shows that there is a reasonable likelihood that
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`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition.” See also 37 C.F.R. §42.108(c). Petitioners have the burden of showing
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`that this statutory threshold has been met. See, e.g., Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (“The Board . . . may institute a trial
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`where the petitioner establishes that the standards for instituting the requested trial
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`are met….”).
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`While Petitioners may present expert testimony in support of a petition for
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`inter partes review—as they have done here—an expert’s opinion is entitled to no
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`weight when based on the wrong claim construction. Liquid Dynamics Corp. v.
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`Vaughan Co., 449 F.3d 1209, 1224 n. 2 (Fed. Cir. 2006) (affirming exclusion of
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`expert testimony "because it was based on an impermissible claim construction.");
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`Case No. IPR2013-00289
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`Patent Owner Preliminary Response
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`Hochstein v. Microsoft Corp., Case No. 04-73071, 2009 U.S. Dist. LEXIS 57698
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`*2-5 ( E.D. Mich. July 7, 2009) (Excluding all portions of expert testimony that
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`conflicted with court’s claim construction). Because the Petitioners’ expert
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`testimony is based on erroneous claim constructions, and fails to make the required
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`showing under the proper construction of the claims, the testimony fails to meet
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`the Petitioners’ burden.
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`V.
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`PETITIONERS’ LITIGATION-DRIVEN CLAIM
`CONSTRUCTIONS ARE NOT SUPPORTED BY THE CLAIM
`LANGUAGE OR THE SPECIFICATION
`
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`The claim terms of the ‘237 patent are to be given their broadest reasonable
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`construction in light of the specification. 37 C.F.R. §42.100(b). Petitioners’
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`proposed constructions of the “playing a game … between” limitations and certain
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`other limitations intended to ensnare the Walker reference are too broad. Several
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`other proposed constructions, obviously proffered in the hopes of assisting non-
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`infringement positions in litigation, are too narrow. Others are also unsupported
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`by the intrinsic record. Each of the disputed constructions is addressed above or
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`below.
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`a. “Game of Skill.”
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`The phrase “game of skill” is defined in the specification and means “a game
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`in which a player’s knowledge and experience influences the outcome of the
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`game.” Ex. 1001 at 2:9-11 (“For the purposes of the present invention, a game of
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`Case No. IPR2013-00289
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`skill is defined as any game where a player’s knowledge and experience influences
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`the outcome of the game.”). This definition accords with the plain meaning of the
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`term and is well supported by the intrinsic record. Petitioners acknowledge that
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`this language should be part of the definition of “game of skill.” Pet. at p. 9.
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`Petitioners propose the following construction, which goes beyond the
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`above-stated definition: “a game in which a player’s knowledge and experience
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`influences the outcome of the game, such as a game of chess, poker, bridge,
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`hearts, blackjack, a question/answer trivia game, or a strategy game.” Pet. at p.
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`10 (emphasis added). The additional, emphasized language proposed by
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`Petitioners is merely a nonexclusive list; it is not a definition. The cited support in
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`the specification for the list of games is not a definition. The additional “such as”
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`language goes beyond the express definition in the specification. It also is likely to
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`make the definition less clear rather than clearer, as it adds many words to the
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`definition without changing its scope. The additional, example-specific language
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`in Petitioners’ construction should be rejected.
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`b. “Playing A Game Of Skill In A Qualifying Round Between A
`Single Player And A Host Computer.”
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`All of the claims of the ‘237 patent require the claim limitation “playing a
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`game of skill in a qualifying round between a single player and the host computer.”
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`Ex. 1001 at 6:5-6. The broadest reasonable interpretation of this phrase, in light of
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`the specification, is its plain meaning: “playing a game of skill in a qualifying
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`round where a single human player plays against a host computer.” This
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`construction also is supported by the claim language and the specification, as set
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`forth above and discussed in further detail below.
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`The claim language dictates the Patent Owner’s proposed construction by
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`using the words “playing a game . . . between a single player and the host
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`computer.” Id. at 6:5-6 (emphasis added). The entire claim phrase means that
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`there is competition between a single human player and the host computer—not
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`simply that the host computer administers the game. The claims use the term
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`“between” to specify who is playing the game—the human player and the host
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`computer. The term “between” means “by the common action of: jointly
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`engaging.” Merriam Webster’s Collegiate Dictionary 109 (10th ed. 1993) (Ex
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`2001 at p. 109). The language chosen by the inventor to describe his invention
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`dictates that both the human player and the host computer “jointly engage” in
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`playing the game.
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`The specification also supports this construction. In describing the invention
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`the specification makes clear that a human player plays against a host computer.
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`Ex. 1001 at 2:39-42 (“…he would be eligible to play the game of skill against the
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`host computer in the playoff round”); 2:43-45 (“…play the game of skill against
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`the host computer under the same rules and conditions…”); 3:15-17 (“At least one
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`Case No. IPR2013-00289
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`player participates in the qualifying round 20 against a host computer.”). The
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`specification uses the term “against” interchangeably with “between” confirming
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`that the host computer is not just administering the game, but competing in the
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`game. Compare Id. at 2:2-3 (“Generally, the qualifying round is played between a
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`single player and a host computer.”) with 3:26-28 (“The game of skill tournament
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`first begins with at least one player playing a game of skill against the host
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`computer in the qualifying round.”). The patent figures also confirm this
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`interpretation by stating that “Player Plays GOS vs. Host Computer.” Ex. 1001 at
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`Fig. 1.
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`Petitioners’ proposed construction is “playing a game of skill in a qualifying
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`round, where the game includes only one human player and is at least administered
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`by the host computer.” Pet. at p. 13. This proposed construction should be
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`rejected for the reasons set forth above. It attempts to rewrite the claim, ignoring
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`the word “between,” and giving the limitation an entirely different meaning from
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`its plain meaning.
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`There is no support in the intrinsic record for Petitioners’ proposed
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`construction. The word “administer” does not appear anywhere in the ‘237 patent
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`in any form. Petitioners cite a sentence from the specification which refers to a
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`computer acting as a “game sponsor by keeping score, operating the game,
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`monitoring the player’s progress and to distribute [sic] awards when appropriate.”
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`Pet. at p. 12. Activities like keeping score and operating and monitoring a game
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`are “administering” a game. “Administer” means “to manage or supervise the
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`execution, use or conduct of.” Merriam Webster’s Collegiate Dictionary 15 (10th
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`ed. 1993) (Ex. 2001 at p. 15) (Ex. 2001 at p. 15). These sponsorship/administering
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`words, however, are contrasted with playing a game between a player and a host
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`computer, as the next sentence states, “[a]lso, the host computer has the ability to
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`act as another player if the game requires more than a single player.” Ex. 1001 at
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`2:19-21(emphasis added). The cited language thus supports the narrower plain
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`meaning construction of play “between” a player and a host computer as excluding
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`mere administration.
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`c. “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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`All of the claims of the ‘237 patent also require the claim limitation “playing
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`
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`said game of skill in a playoff round between said player and the host computer
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`simultaneously along with other players.” Id. at 6:20-22. The broadest reasonable
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`interpretation of this phrase, in light of the specification, is “playing the game of
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`skill in a playoff round where said human player plays against a host computer,
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`simultaneously along with other players.” This construction is supported by the
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`claim language and the specification.
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`15
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`This claim element is similar to claim, 1 element (a) and the analysis above
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`applies except that this limitation requires playing a game of skill between the
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`player and the host computer in a playoff round rather than in a qualifying round.
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`The same analysis as set forth above applies here, supporting Patent Owner’s
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`proposed construction and refuting Petitioners’ proposed construction. The added
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`language in claim 1, element (e) not found in element (a) (directed to the
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`qualifying round) is “simultaneously along with other players.” Id. at 6:21-22.
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`
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`Petitioners propose the following construction: “playing the game of skill in
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`a playoff round at least administered by the host computer and in which the human
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`player involved in the qualifying round and at least two other human players are
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`playing at the same time.” Pet. at p. 15. This proposed construction is unduly
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`broad because of its substitution that the game is “at least administered by” the
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`host computer instead of addressed to “playing said game . . . between” the human
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`player and host computer. For the reasons cited in the previous section and above,
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`Petitioners’ proposed construction of the “playing said game . . . between”
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`limitation is not supported by the intrinsic record and overbroad.
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`Petitioners also attempt to reconstrue the additional phrase “simultaneously
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`along with other players” in claim 1, element (e) with different words. The
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`specification does not support this alternative construction. The specification does
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`not refer to such play as play “at the same time,” and thus Petitioners’ construction
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`is unsupported and does not meaningfully contribute to the construction beyond the
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`plain language of the claim. A construction is not necessary where the words of
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`the claim are clear on their face. The difference in the two proposed constructions
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`appears to be relatively minor, but Stephenson’s plain-meaning construction is
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`better supported by the intrinsic record.
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`d. Claim 1 Does Not Require An Order Of Steps (a) And (c).
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`Petitioners argue that the broadest reasonable interpretation of claim 1 is that
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`elements (b) and (c) must be performed either sequentially or simultaneously. This
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`proposed construction apparently does not allow step (b) to follow step (c).
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`Petitioners impermissibly narrow the claim scope, and it is not the broadest
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`reasonable interpretation. Unless the steps of a method actually recite an order,
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`the steps are not ordinarily construed to require one. Interactive Gift Express, Inc.
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`v. Compuserve, Inc., 256 F. 3d 1323 (Fed. Cir. 2001); see also Loral Fairchild
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`Corp. v. Sony Corp., 181 F.3d 1313, 1322, 50 U.S.P.Q.2D (BNA) 1865, 1870
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`(Fed. Cir. 1999) (stating that “not every process claim is limited to the performance
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`of its steps in the order written.”). Alpha-numeric identifiers inserted before
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`method steps, such as (1) or (a), are not considered indicative of an explicit order.
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`See Aerotel, Ltd. v. T-Mobile USA, Inc., 2010 U.S. App. LEXIS 25835, 4-8 (Fed.
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`Cir. Dec. 20, 2010) (Court analyzed order of method steps even though each
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`method step was preceded by an alpha-numeric identifier).
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`Nothing in the claims requires that step (b) come before step (c). Moreover,
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`Case No. IPR2013-00289
`U.S. Patent No. 6,174,237
`Patent Owner Preliminary Response
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`nothing in the specification requires an order. Indeed, Petitioners acknowledge
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`that an order is not required by including the simultaneous performance of these
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`steps within the scope of their proposed construction. Under the broadest
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`reasonable construction, claim elements (b) and (c) can be performed in any order
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`or simultaneously.
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`e. “Said Game Of Skill Is Based On The Memory Reaction Of The
`Player.”
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`The claim phrase “said game of skill is based on the memory reaction of the
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`
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`player” requires no construction. The plain and ordinary meaning is easily
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`understood by lay persons. Phillips v. AWH Corp, 415 F.3d 1303, 1314 (Fed. Cir.
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`2005) (en banc) (“In some cases, the ordinary meaning of claim language as
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`understood by a person of skill in the art may be r