Trials@uspto.gov
`571-272-7822
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`Paper 8
`Entered: November 19, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAME SHOW NETWORK, LLC and WORLDWINNER.COM, INC.
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`
`
`
`Case IPR2013-00289
`Patent 6,174,237
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`571-272-7822
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`Paper 8
`Entered: November 19, 2013
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAME SHOW NETWORK, LLC and WORLDWINNER.COM, INC.
`Petitioners
`
`v.
`
`JOHN H. STEPHENSON
`Patent Owner
`
`
`
`Case IPR2013-00289
`Patent 6,174,237
`
`
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Case IPR2013-00289
`Patent 6,174,237
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`
`
`I.
`INTRODUCTION
`Game Show Network, LLC and WorldWinner.com, Inc. (collectively
`“Petitioner”) filed a petition requesting an inter partes review of claims 1-19 of
`U.S. Patent 6,174,237 (Ex. 1001, “the ’237 patent”). Paper 1, “Pet.” In response,
`John H. Stephenson (“Patent Owner”) filed a patent owner preliminary response on
`August 29, 2013. Paper 7, “Prelim. Resp.” We have jurisdiction under 35 U.S.C.
`§ 314.
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a) which provides as follows:
`THRESHOLDThe Director may not authorize an inter partes review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.
`
`Pursuant to 35 U.S.C. § 314, the Board authorizes an inter partes review to
`be instituted as to claims 1-19 of the ’237 patent.
`
`A. Related Proceedings
`
`Petitioner indicates that the ’237 patent is involved in co-pending litigation
`captioned John H. Stephenson v. Game Show Network, LLC and
`WorldWinner.com, Inc., Civil Action No. 1:12-cv-00614-SLR (D. Del.). Pet. 1.
`Petitioner certifies, and Patent Owner does not contest, that Petitioner was served
`with the complaint in the District Court action less than one year before the filing
`of the petition. Id. at 2.
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`B. The ’237 Patent
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`Case IPR2013-00289
`Patent 6,174,237
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`The ’237 patent is related to tournament play having a qualifying round and
`a playoff round. The qualifying round is played between a player, through a
`computer terminal, and a host computer. The playoff round is played between
`those players obtaining a predetermined level of performance in the qualifying
`round and the host computer. The playoff round is played under the same rules
`and conditions as in the qualifying round, except that all the players are playing
`simultaneously within a specific time frame. Ex. 1001, 1:15-24. Awards are
`distributed to players in both the playoff and qualifying rounds. Id. at 3:19-25.
`
`
`C. Exemplary Claim
`
`Of the challenged claims, claim 1 is the sole independent claim. Each of the
`dependent claims 2-19 depends either directly or indirectly from claim 1. Claim 1
`is exemplary of the claimed subject matter of the ’237 patent, and is reproduced as
`follows:
`
`1. A method of playing a game of skill tournament having a
`qualifying round and a playoff round, and played over an interactive
`computer system, said interactive computer system having a host
`computer system, a plurality of terminals computers and compatible
`software, said method comprising the following steps:
`a. playing a game of skill in a qualifying round between a
`single player and the host computer;
`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;
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`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;
`d. distributing to said player a performance level award, said
`performance level award being dependent upon the specific
`performance level obtained;
`e. playing said game of skill in a playoff round between said
`player and the host computer simultaneously along with other players,
`wherein each player has been classified within a qualifying
`performance level;
`f. evaluating the results of said playoff round to determine a
`tournament winner and subsequent ranking of players; and
`g. distributing tournament awards to tournament participants.
`
`D. Prior Art Relied Upon
`
`
`
`Petitioner relies upon the following prior art references:
`Hamilton U.S. Patent No. 4,666,160
`May 19, 1987
`Demar
`U.S. Patent No. 4,685,677
`Aug. 11, 1987
`Walker
`WO 97/39811
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`Oct. 30, 1997
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`(Ex. 1004)
`(Ex. 1003)
`(Ex. 1002)
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`E. The Asserted Grounds
`
`Petitioner asserts that the challenged claims are unpatentable based on the
`following grounds:
`1. Claims 1-6 and 8-19 are unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Walker;
`2. Claims 1-19 are unpatentable under 35 U.S.C. § 103 over Walker; and
`3. Claims 6 and 7 are unpatentable under 35 U.S.C. § 103 over Walker in view
`of Demar and/or Hamilton.
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`II. ANALYSIS
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`A. Claim Construction
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`Patent 6,174,237
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`In an inter partes review, claim terms in an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b). Under the broadest reasonable construction
`standard, claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The following claim construction applies.
`
`game of skill (claim 1)
`Petitioner argues, directing attention to column 2, lines 9-13 of the ’237
`patent specification, that “game of skill” means “a game where 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.” Pet. 10. However, Patent Owner is correct that the proposed definition
`unnecessarily includes examples of different types of games of skill. Prelim. Resp.
`12. The definition of a “game of skill” is provided in the specification of the ’237
`patent with clarity, deliberateness, and precision to mean a “game where a player’s
`knowledge and experience influences the outcome of the game.” Ex. 1001, col.
`2:9-11. Although the specification of the ’237 patent includes “examples” of
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`games of skill, such as chess, poker, bridge, hearts, blackjack, a question/answer
`trivia game, or a strategy game, it is clear that these are examples and not part of
`the definition. Therefore, “game of skill” means “a game where a player’s
`knowledge and experience influences the outcome of the game.”
`
`playing a game of skill in a qualifying round between a single player and the
`host computer (claim 1)
`Petitioner argues that “playing a game of skill in a qualifying round between
`a single player and the host computer” excludes competition between two or more
`human players in a game in the qualifying round, and that the phrase requires a
`single human player and a host computer. Pet. 10. Patent Owner does not dispute
`that claim 1 requires a single human player and a host computer. Prelim. Resp. 13.
`Petitioner’s proposed construction of the disputed phrase as requiring a single
`human player and a host computer is reasonable and consistent with the
`specification.
`
`The parties, however, disagree as to the meaning of playing a game
`“between a single player and a host computer.” Petitioner argues that claim 1
`covers single-player games administered by a host computer and does not require
`head-to-head competition between the single player and the host computer. Pet.
`12. Patent Owner disagrees, and argues that claim 1 requires the host computer to
`play the game, not merely administer the game. Prelim. Resp. 13. For the reasons
`that follow, Petitioner’s construction is the more reasonable one in light of the
`specification, which includes the challenged dependent claims.
`The specification of the ’237 patent describes the host computer as having
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`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.” Ex.
`1001, col. 2:16-19. Both parties agree that sponsoring a game by keeping score,
`operating the game, monitoring the player’s progress and distributing awards is
`analogous to administering a game. Pet. 12-13; Prelim. Resp. 9. The specification
`of the ’237 patent describes the host computer as additionally having “the ability to
`act as another player if the game requires more than a single player.” Ex. 1001,
`col. 2:19-21. Thus, the computer sponsors or administers the game by keeping
`score, operating the game and monitoring progress, etc., and, if needed, it can act
`as another player. The specification of the ’237 patent provides that not all “games
`of skill” require two players. For example, the specification describes, as an
`example of a game of skill, the game of solitaire. Id. at col. 3:43. A person of
`ordinary skill in the art would have understood solitaire to be a single-player game
`with no head-to-head competition, or second player, involved. Therefore, for
`single-player games, such as solitaire, the host computer would not act as another
`player, but only would administer the game.
`Petitioner’s construction of the disputed phrase would include single-player
`game playing, such as solitaire, where the computer administers the game, but does
`not act as another player and play the game. As Petitioner points out, claim 10,
`which indirectly depends on claim 1, specifies that the game of skill is a card game
`that includes solitaire. Playing solitaire between a single player and the host
`computer cannot mean that there is head-to-head competition between the single
`player and the computer. In that regard, claim 10 sheds light on the meaning of the
`claim 1 disputed phrase “playing a game of skill in a qualifying round between a
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`single player and the host computer.” See Rexnord Corp. v. Laitram Corp., 274
`F.3d 1336, 1342 (Fed. Cir. 2001) (The use of a term in one claim may illuminate
`the meaning of the same term in other claims, because claim terms normally are
`used consistently throughout the patent.). Thus, the proper claim construction of
`that disputed phrase is one that is broad enough to include single-player game
`playing, in which case the host computer administers, but is not required to play,
`the game of skill.
`We have considered Patent Owner’s arguments for a construction that would
`exclude the host computer administering, but not necessarily playing, the game of
`skill. Patent Owner’s construction would require both the computer and the single
`human player to play the game, such “that there is competition between a single
`human player and the host computer.” Prelim. Resp. 13. However, Patent
`Owner’s arguments are not responsive to Petitioner’s position. Patent Owner does
`not address Petitioner’s argument that the specification of the ’237 patent, which
`includes claim 10, sheds light on the meaning of claim 1, such that claim 1 is broad
`enough to include the host computer administering, but not playing necessarily, the
`game of skill.
`Patent Owner relies on a dictionary definition for the word “between” and
`various descriptions in the specification of the ’237 patent where the term
`“against” is used interchangeably with “between” in support of the argument that
`the host computer is not just administering the game, but competing in the game.
`Prelim. Resp. 14. The Patent Owner is correct that the specification of the ’237
`patent describes, as examples, games of skill that require the computer to compete,
`by playing the game of skill, against the human player. However, Patent Owner
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`has not shown why claim 1 should be construed to exclude the described single-
`player game embodiments, where the host computer is not required to play the
`game, but only administers the game.
`For these reasons, “playing a game of skill in a qualifying round between a
`single player and the host computer” means playing a game of skill in a qualifying
`round, where the game includes only one human player and is at least administered
`by a host computer.
`
`playing said game of skill in a playoff round between said player and the
`host computer simultaneously along with other players (claim 1)
`Petitioner argues that the broadest reasonable construction of the above
`phrase is “playing the game of skill in a playoff round at least administered by the
`host computer and in which the human player involved in the qualifying round and
`at least two other human players are playing at the same time.” Pet. 15. Patent
`Owner disagrees with Petitioner’s proposed construction for the same reasons
`discussed previously. Prelim. Resp. 16. Specifically, Patent Owner argues that
`playing a game between the player and the host computer requires the host
`computer to play the game. For reasons provided above, Petitioner’s arguments
`reflect the broadest reasonable interpretation of the phrase. Claim 1 encompasses
`game playing whereby the host computer administers the game, but is not required
`to play the game.
`Moreover, Petitioner’s proposed construction requiring that the same human
`player involved in the qualifying round plays in the playoff round, at the same time
`as at least two other human players, is reasonable and consistent with the
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`specification. See, e.g., Ex. 1001, 4:30-43 and 5:45-47. Although Patent Owner
`argues that simultaneously does not mean at the same time, Patent Owner does not
`explain why that is so. The plain meaning of simultaneous is happening at the
`same time.1 Therefore, the disputed phrase means playing the game of skill in a
`playoff round at least administered by the host computer and in which the human
`player involved in the qualifying round and at least two other human players are
`playing at the same time.
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`Steps (b) and (c) of claim 1
`Claim 1 includes the following steps:
`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;
`
`
`Petitioner argues that the broadest reasonable construction in light of the
`specification is one that covers a process in which steps (b) and (c) are either
`performed sequentially, in two separate steps, or are performed simultaneously, in
`a single step. Pet. 16. Patent Owner agrees that claim 1 should be construed to
`cover a process where the steps (b) and (c) may be performed simultaneously, but
`
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`1 http://www.merriam-webster.com/dictionary/simultaneous.
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`disagrees that the claim excludes step (c) being performed prior to step (b).
`Prelim. Resp. 17-18. Patent Owner argues that under the broadest reasonable
`construction, claim elements (b) and (c) can be performed in any order or
`simultaneously. Id.
`The steps of a method are not limited to a specific order unless the claim
`explicitly or implicitly so requires. Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512
`F.3d. 1338, 1345 (Fed. Cir. 2008). Here there is no apparent reason to read into
`the claim a specific order. Claim 1 is construed such that elements (b) and (c) may
`be performed in any order or simultaneously.
`
`evaluating the results of said playoff round to determine a tournament
`winner and subsequent ranking of players (claim 1)
`Petitioner does not provide a proposed construction for this phrase.
`However, in the context of applying the prior art to the claims, Patent Owner
`argues that Petitioner conflates “ranking of players” with a player’s rating. Patent
`Owner argues that ranking means “relative standing or position” and that a player’s
`ranking is something other than a player’s rating. Prelim. Resp. 19. Although we
`agree with Patent Owner’s proposed definition of ranking as meaning relative
`standing or position, we disagree that the disputed term excludes rating. One
`definition of rating is “a classification according to order, or grade; ranking.”2
`Thus, we disagree that ranking a player does not encompass rating a player.
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`2 http://www.thefreedictionary.com/rating.
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`Accordingly, “subsequent ranking of players” means the relative standing or
`position of the players, which does not exclude the rating of a player.
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`said game of skill is based on the memory reaction of the player (claim 15)
`Claim 15 depends directly on claim 1 and recites “wherein said game of skill
`is based on the memory reaction of the player.” Petitioner explains that “memory
`reaction” does not appear in the specification of the ’237 patent, and that “memory
`reaction” is not a term of art in the field pertaining to the ’237 patent. Pet. 17
`(citing Ex. 1005 ¶ 48). Petitioner argues that based upon the ordinary meaning of
`the individual terms “memory” and “reaction,” the broadest reasonable
`construction of the disputed phrase is “the game of skill involves assessing both a
`player’s memory and how quickly the player reacts.” Id. Patent Owner argues that
`Petitioner’s construction is not the broadest reasonable interpretation because
`Petitioner’s construction requires assessing two things (e.g., “memory” and
`“reaction”), not one (e.g., reaction involving memory). Prelim. Resp. 18.
`Patent Owner does not explain why Petitioner’s proposed claim
`construction, based on an assessment of both memory and reaction, is incorrect or
`how the phrase should be interpreted. Rather, Patent Owner argues that the phrase
`needs no construction. Prelim. Resp. 18. That argument is not persuasive.
`Accordingly, “said game of skill is based on the memory reaction of the player”
`means that the game of skill involves assessing both a player’s memory and how
`quickly the player reacts.
`
`All other terms are given their ordinary and customary meaning that those
`terms would have to a person of ordinary skill in the art in light of the ’237 patent
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`specification.
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`B. Claims 1-6 and 8-19 – Anticipated by Walker
`
`Petitioner argues that claims 1-6 and 8-19 are unpatentable under 35 U.S.C.
`§ 102(b) as anticipated by Walker. Petitioner explains, with supporting evidence
`(e.g., Ex. 1005, which is a declaration of Dr. E. James Whitehead, Jr.), how each
`claim limitation is met by Walker. Pet. 18-40 (citing Ex. 1005). Upon review of
`Petitioner’s analysis and supporting evidence, and taking into account Patent
`Owner’s preliminary response, we determine that Petitioner has demonstrated that
`there is a reasonable likelihood that it would prevail with respect to claims 1-3, 5
`and 8-19 on the ground that these claims are anticipated by Walker. However,
`Petitioner has not demonstrated that there is a reasonable likelihood that it would
`prevail with respect to claims 4 and 6 on the ground that these claims are
`anticipated by Walker.
`
`Walker describes a method and system for a distributed electronic
`tournament system in which remotely located players participate in a tournament
`through input/output devices connected to a central controller that manages the
`tournament. Ex. 1002, Abstract.
`Figure 1 of Walker, reproduced below, illustrates a portion of the electronic
`tournament system.
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`Case IPPR2013-002289
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`Patent 66,174,237
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`tournamment softwaare applicaations, inclluding runnning tournaament gammes, registeering
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`Figuree 1 depicts a distributted electro
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`utput (I/O) of input/ouplurality oer shows a Figure 11 of Walke
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`devices 1004, 106
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`(pluralitty of termiinals) connnected to a
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`central conntroller 1002 (host commputer)
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`throughh a networkk 108, suchh as the Intternet. Id.
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`runs thee central coontroller haardware annd controlss and coorddinates all
`of the
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`rize paymeent. Id.
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`players,, acceptingg entry feess, and coorrdinating p
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`PPlayers mayy participaate in vario
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`us strategyy games (ggames of skkill), such aas
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`chess, ccheckers, bbridge, or ppuzzles likee crossworrd or jigsaww. Id. at 155; 16:4-5.
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`Walker describes a “qualifyiing round”” of play inn which a pplayer mayy qualify too
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`advancee to the nexxt level. Idd. at 14:6-115. The hoost computter 102 parrticipates inn
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`the quallifying rouund by admministering the game,
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`such as byy keeping aa player’s
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`nic tournamment systeem.
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`score and determining whether the player qualifies to advance to the next round
`(e.g., playoff round). Id. at 15:15-20. Walker describes single-player games, such
`as trivia and crossword puzzles. Id. at 3:3-10; 15:11; 17-18. For the example of
`trivia play, Walker describes a single human player having completed twenty
`questions of the first round (qualifying round), and that the host computer then
`would determine, based on the player’s performance, whether the player had
`qualified to advance to the next round. Id. at 15:15-20.
`Walker also describes that the tournament system evaluates the results of
`play, and as the tournament progresses, more and more players are eliminated.
`Moreover, when a player advances from one game session to the next, the player
`may qualify for a prize or recognition. Id. at 15: 29 to 16:2. Lastly, a tournament
`winner is determined after a final round of an elimination tournament and prizes
`are awarded. Id. at 15:20-21.
`Patent Owner argues that Walker does not teach the “playing a game
`between” limitations recited in steps (a) and (e) of claim 1. Prelim. Resp. 6-7; 20-
`21. Patent Owner’s arguments are based on a narrow interpretation of the “playing
`a game between” limitations. For reasons provided in the claim construction
`section, Patent Owner’s proposed construction is too narrow, and is not the
`broadest reasonable construction of the “playing a game between” limitations. The
`claims do not require the computer to play the game in the sense that there is head-
`to-head competition between the computer and the single (human) player. Rather,
`the claims encompass a computer administering a game to the single player.
`Patent Owner acknowledges that Walker administers, or sponsors, a game, such as
`trivia, to a single player. Prelim. Resp. 7.
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`Patent Owner argues that absent from the petition is a description of what is
`purportedly performing the claimed method and that such absence highlights the
`requirement of the claims that the computer system plays the game as required by
`every claim. Prelim. Resp. 21. The argument is not persuasive because the
`argument is not commensurate in scope with the claim language. Claim 1 does not
`recite that “the computer system plays the game.” Moreover, Patent Owner has not
`shown specifically what is missing from the petition, or that the petition does not
`address how the Walker reference anticipates claim 1. Claim 1 is a method claim
`and recites various steps. The method steps do not recite which of the components
`of the “interactive computer system” are performing the steps. Rather, the method
`steps are primarily functional in nature. Therefore, it was reasonable for Petitioner
`to focus on the functional language of the claims in its petition.
`As to challenged dependent claims 2, 3, 5 and 8-19, Petitioner provides
`sufficient evidence to show that Walker discloses the additional recited limitations
`in those claims. Pet. 30-39. For example, as to claim 2, Walker describes that the
`I/O devices are connected to the central controller and that such connection may be
`through a ground-based network 108 such as the Internet. Ex. 1002, 9:10-13. As
`another example, claim 9, which depends on claim 1, recites “wherein said game
`of skill is further defined as a card game requiring skill and knowledge.” Walker
`describes bridge as an example of strategy games that may be played using the
`tournament system. Id. at 15:10-11. Petitioner also provides sufficient evidence to
`show that Walker anticipates claim 10 for the same reason, because claim 10
`recites bridge as one of the card games that may be selected. Patent Owner’s
`arguments are directed to claim 1, and Patent Owner does not address claims 2, 3,
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`5 and 8-19 with separate, specific arguments.
`Petitioner, however, has not demonstrated that there is a reasonable
`likelihood that claims 4 and 6 are anticipated by Walker. Claim 4 depends on
`claim 1 and recites “wherein said performance level award increases as a player
`qualifies for higher performance level classifications.” The “said performance
`level award” refers to the performance level award of claim 1 step (d), which is
`dependent upon the performance level obtained in a qualifying round. Thus, the
`performance level award is an award contemplated after the qualifying round.
`Petitioner has not demonstrated that in Walker the performance level awards
`awarded after a qualifying round increase as claimed. Petitioner is correct that
`Walker describes that a player may be awarded a prize after a qualifying round.
`Ex. 1002, 16:1-2. However, we disagree that Walker necessarily describes that an
`award a player may receive after a qualifying round “increases as a player qualifies
`for higher performance level classifications,” as claimed. For example, the
`description in Walker that Petitioner relies on of awarding prizes for “$100 for the
`player getting the top score, $50 for the player with the second highest score, and
`$25 for the third highest score” (Ex. 1002, 13:29-30) has not been shown to apply
`necessarily to prizes that may be awarded after a qualifying round, as opposed to
`after a playoff round.
`Claim 6 depends on claim 1 and recites “wherein said plurality of
`performance levels is further defined as having four performance levels ranging
`from a low performance level to a medium-low performance level to a medium-
`high performance level to a high performance level.” The four performance levels
`are associated with the claim 1 step of evaluating the results of the qualifying
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`round, not the final or playoff round. For similar reasons discussed above with
`respect to claim 4, Petitioner has not demonstrated that the description in Walker
`that Petitioner relies on for showing the four performance levels applies necessarily
`to a qualifying round, as opposed to a playoff round.
`For reasons provided above, Petitioner establishes a reasonable likelihood of
`prevailing on the ground of unpatentability of claims 1-3, 5, and 8-19 as
`anticipated by Walker under 35 U.S.C. § 102(b), but does not establish a
`reasonable likelihood of prevailing with respect to claims 4 and 6.
`
`C. Claims 4, 6, 7 – Obvious over Walker
`
`Claim 4
`Claim 4 depends on claim 1 and recites “wherein said performance level
`award increases as a player qualifies for higher performance level classifications.”
`The “said performance level award” refers to the performance level award of claim
`1 step (d), which is dependent upon the performance level obtained in a qualifying
`round. Thus, the performance level award is an award contemplated after the
`qualifying round.
`As discussed above, Walker does describe that a player may be awarded a
`prize after a qualifying round. Ex. 1002, 16:1-2. Moreover, Walker describes that
`an award a player may receive at the end of a tournament (after the playoff round)
`increases as a player qualifies for higher performance level classifications. Id. at
`13:29-30. However, Walker does not describe necessarily that an award a player
`may receive after a qualifying round “increases as a player qualifies for higher
`performance level classifications,” as recited in claim 4.
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`Petitioner argues that if Walker does not describe explicitly multiple award
`levels after a qualifying round, it nonetheless would have been obvious to provide
`multiple levels of prizes after a qualifying round. Pet. 48. The purported reason
`for doing so would be to promote competition by providing an incentive to perform
`at the highest possible level during the qualifying round. Pet. 48; Ex. 1005 ¶ 78.
`Patent Owner’s arguments are directed to claim 1, and Patent Owner does not
`address claim 4 with separate, specific arguments. Based on the record before us,
`Petitioner establishes a reasonable likelihood of prevailing on the ground of
`unpatentability of claim 4 as obvious over Walker.
`
`Claim 6
`Claim 6 depends on claim 1 and recites “wherein said plurality of
`performance levels is further defined as having four performance levels ranging
`from a low performance level to a medium-low performance level to a medium-
`high performance level to a high performance level.” The “plurality of
`performance levels,” further defined as having four performance levels, are
`associated with the claim 1 step of evaluating the results of the qualifying round,
`not the final or playoff round. For similar reasons discussed above with respect to
`claim 4, Petitioner has not demonstrated that Walker describes four performance
`levels associated with a qualifying round.
`Petitioner provides a reason for modifying Walker such as to provide any
`number of performance levels desired, including four levels, depending on the
`desired competitive balance and logistical factors. Pet. 49, Ex. 1005 ¶ 84. Patent
`Owner’s arguments are directed to claim 1, and Patent Owner does not address
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`claim 6 with separate, specific arguments. Based on the record before us,
`Petitioner establishes a reasonable likelihood of prevailing on the ground of
`unpatentability of claim 6 as obvious over Walker.
`
`Claim 7
`Claim 7 depends on claim 6, which depends on claim 1. Claim 7 recites
`“wherein said qualifying performance level is further defined as being the medium-
`high and highest performance levels.” Petitioner recognizes that Walker does not
`disclose that there is a qualifying performance level that is further defined as being
`the medium-high and highest performance levels. Pet. 51. Petitioner provides a
`reason for modifying Walker to provide two high level performance levels as the
`qualifying level to promote competition and provide an incentive for all players to
`strive for the highest possible performance level in order to qualify for another
`round of competition. Id., Ex. 1005 ¶ 86. Patent Owner’s arguments are directed
`to claim 1, and Patent Owner does not address claim 7 with separate, specific
`arguments. Based on the record before us, Petitioner establishes a reasonable
`likelihood of prevailing on the ground of unpatentability of claim 7 as obvious over
`Walker.
`
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`D. Other Asserted Grounds
`Petitioner also asserts that claims 1-3, 5 and 8-19 are unpatentable under
`35 U.S.C. § 103 over Walker and that claims 6 and 7 are unpatentable under
`35 U.S.C. § 103 over Walker in view of Demar and/or Hamilton. Pet. 42-52.
`Those asserted grounds are denied as redundant in light of the determination that
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`there
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