Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HIGH 5 GAMES, LLC,
`Petitioner,
`
`v.
`
`KONAMI GAMING, INC.,
`Patent Owner.
`
`Case IPR2015-01935
`Patent 8,096,869 B2
`
`Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`High 5 Games, LLC (“High 5”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1–9, 11, 14, and 19–22 (the
`“challenged claims”) of U.S. Patent No. 8,096,869 B2 (Ex. 1001, “the
`’869 patent”). 35 U.S.C. § 311. Konami Gaming, Inc. (“Konami”) timely
`
`
`Tel: 571-272-7822
`
`Paper 10
`Entered: March 22, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HIGH 5 GAMES, LLC,
`Petitioner,
`
`v.
`
`KONAMI GAMING, INC.,
`Patent Owner.
`
`Case IPR2015-01935
`Patent 8,096,869 B2
`
`Before JOSIAH C. COCKS, MEREDITH C. PETRAVICK, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. §§ 42.4, 42.108
`
`I.
`
`INTRODUCTION
`
`A. BACKGROUND
`High 5 Games, LLC (“High 5”) filed a petition (Paper 1, “Pet.”) to
`institute an inter partes review of claims 1–9, 11, 14, and 19–22 (the
`“challenged claims”) of U.S. Patent No. 8,096,869 B2 (Ex. 1001, “the
`’869 patent”). 35 U.S.C. § 311. Konami Gaming, Inc. (“Konami”) timely
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`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Institution of an
`inter partes review is authorized by statute when “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.”
`35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Based on our review of the record,
`we conclude that High 5 is not reasonably likely to prevail with respect to at
`least one of the challenged claims.
`High 5 contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 based on the following grounds (Pet. 13–59):
`
`References
`
`U.S. Patent Application No. 2003/0181240 A1
`(Ex. 1003, “Nagao”) in view of U.S. Patent No.
`8,246,047 B1 (Ex. 1004, “Sekine”)
`
`Claims challenged
`
`1–9, 11, 14, and
`19–22
`
`U.S. Patent No. 6,159,096 (Ex. 1005, “Yoseloff”) in
`view of Sekine
`
`1–9, 11, 14, and
`19–22
`
`Nagao in view of U.S. Patent No. 8,360,840 B2
`(Ex. 1006, “Bennett”)
`
`Yoseloff in view of Bennett
`
`1–9, 11, 14, and
`19–22
`
`1–9, 11, 14, and
`19–22
`
`Generally, Konami contends that the Petition should be denied in its
`entirety. For the reasons described below, we decline to institute inter partes
`review of the challenged claims on any of the alleged grounds of
`unpatentability.
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`B. RELATED PROCEEDINGS
`High 5 identified as a related proceeding the co-pending district court
`proceeding of Konami Gaming, Inc. v. PTT, LLC, d/b/a High 5 Games, Case
`No. 2:14-cv-01483-RFB-NJK (D. Nev.). Pet. 58. Konami identified the
`following additional matters as being related to this proceeding: Konami
`Gaming, Inc. v. Marks Studios, LLC d/b/a Gimmie Games, Case No. 2:15-
`cv-01485 (D. Nev.); IPR2015-01936 regarding related U.S. Patent No.
`8,366,540 B2; IPR2015-01937 regarding related U.S. Patent No. 8,616,955
`B2; and IPR2015-01939 regarding related U.S. Patent No. 8,622,810 B2.
`Paper 3, 2.
`C. THE ’869 PATENT
`The ’869 patent is titled “Gaming Machine with Runs of Consecutive
`Identical Symbols” and issued on Jan. 17, 2012, from an application filed on
`December 9, 2005. Ex. 1001, [22], [45], [54]. The ’869 patent discloses a
`gaming machine for the playing of
`games of chance. Id. at 1:13–14.
`Figure 1 of the ’869 patent, which
`depicts gaming machine 10, is
`reproduced at right. Id. at 4:14–16.
`Gaming machine 10 has display 12,
`which shows portions of adjoining
`simulated reels 26–30. Id. The
`simulated reels are divided into a
`number of elements 14, such as 256
`elements, and each element displays
`one symbol 32. Id. at 4:16–23.
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`In one embodiment, the sequence of symbols in the element remains
`fixed except for, on the first or left-most reel, at least one run of identical
`symbols in each of a number of consecutive elements. Id. at 4:23–25, 4:33–
`46. Figure 2 of the ’869 patent is reproduced below.
`
`
`
`Figure 2 depicts a schematic representation of the symbols of simulated reel
`26. Simulated reel 26 has three runs 31, 32, and 33 of five elements having
`identical crown symbols. Id. at 4:33–48. The selection of the identical
`symbol is made “through a notional rotation of an ‘inner reel,’” which “is in
`effect a look-up table and is not displayed.” Id. at 4:52–57. The selection of
`the identical symbol is performed anew for each new play of the game. Id.
`at 4:65–5:2. The identical symbol is selected from a subset of game symbols
`that appear on simulated reel 26 and each symbol in the subset is assigned a
`probability of selection. Id. at 4:58–61, 5:3–9; Fig. 3.
`As the reels spin during a play of the games, a player will notice the
`runs of identical symbols passing through the display and have a heightened
`interest because the odds of a winning arrangement appearing on the display
`will increase. Id. at 5:10–16. In an alternative embodiment, simulated reels
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`27–30 of gaming machine 10 may also have at least one run of consecutive
`identical elements. Id. at 5:21–6:3.
`The ’869 patent has two independent claims. Independent claim 1
`recites a gaming machine, Ex. 1001, 7:52, and independent claim 19 recites
`a “method for increasing probability of a winning outcome on a gaming
`machine,” id. at 8:64–65. Claim 1 is illustrative of the subject matter at
`issue and is reproduced below with line breaks inserted for clarity.
`1. A gaming machine comprising:
`a processor configured to execute a game displaying a matrix of
`symbol containing elements having a plurality of rows and a
`plurality of columns;
`at least one column of said matrix comprising a portion of a
`simulated rotatable reel of a plurality of said symbol
`containing elements;
`said simulated rotatable reel comprising sections of symbol
`containing elements displaying a plurality of symbols that
`are fixed for each game played on said gaming machine;
`said simulated rotatable reel including at least one section in
`which a consecutive run of three or more of said symbol
`containing elements is populated by an identical symbol
`so that, as the simulated rotatable reel rotates, a
`consecutive string of said same identical symbol is
`sequentially displayed within said consecutive string of
`symbol containing elements; and
`said identical symbol is randomly selected anew for each play
`of said game,
`wherein said identical symbol is selected by virtually spinning a
`notional, non-visible, inner reel comprising a subset of said
`plurality of symbols.
`Id. at 7:52–8:2.
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`II. ANALYSIS
`A. CLAIM INTERPRETATION
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d
`1268, 1278 (Fed. Cir. 2015), cert. granted sub nom., Cuozzo Speed Techs.
`LLC v. Lee, 84 U.S.L.W. 3218 (Jan. 15, 2016) (No. 15-446) (“We conclude
`that Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA.”). When applying that standard, we interpret
`the claim language as it would be understood by one of ordinary skill in the
`art in light of the specification. In re Suitco Surface, Inc., 603 F.3d 1255,
`1260 (Fed. Cir. 2010). Thus, we give claim terms their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the meaning that
`the term would have to a person of ordinary skill in the art in question.’”).
`Only terms which are in controversy need to be construed, and then only to
`the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`High 5 proposes interpretations for “randomly selected anew,”
`“notional, non-visible, inner reel,” “virtual rotation,” “virtually spinning,”
`“subset of a said plurality of symbols,” “fixed for each game played,”
`“identical symbol,” and “probability of selection.” Pet. 8–12. Konami
`either disputes High 5’s proposed interpretations or argues that the terms do
`not require explicit interpretation. Prelim. Resp. 2–21. We conclude that no
`explicit interpretation of any of these terms is necessary to resolve issues
`presented by the parties at this stage of the proceeding.
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`B. THE CHALLENGES TO THE CLAIMS
`High 5 challenges the patentability of claims 1–9, 11, 14, and 19–22
`on the grounds that the claims are obvious in light of either Nagao or
`Yoseloff combined with either Sekine or Bennett. The Supreme Court in
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), reaffirmed the
`framework for determining obviousness as set forth in Graham v. John
`Deere Co., 383 U.S. 1 (1966). The KSR Court summarized the four factual
`inquiries set forth in Graham that we apply in determining whether a claim
`is reasonably likely to be unpatentable as obvious under 35 U.S.C. § 103(a)
`as follows:
`1. determining the scope and content of the prior art,
`2. ascertaining the differences between the prior art and the claims at
`issue,
`3. resolving the level of ordinary skill in the pertinent art, and
`4. considering objective evidence indicating obviousness or
`nonobviousness.
`KSR, 550 U.S. at 406. A determination of obviousness cannot be based on
`mere conclusory statements; “instead, there must be some articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). With these
`standards in mind, we address each challenge below.
`1. Overview of the Asserted Prior Art
`a) Nagao
`Nagao is a U.S. patent application publication titled “Method of
`Controlling Gaming Machine, Gaming Machine, and Gaming Machine
`Control Program.” Ex. 1003, [54]. Nagao discloses a gaming machine that
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`displays symbols in symbol display sections 7–9.
`Id. ¶ 83. A player wins the game when a
`predetermined combination of symbols is
`displayed on a pay line. Id. ¶ 85. Figure 3 of
`Nagao is reproduced at right and depicts a layout
`of symbol display sections 7–9. Id. ¶ 75. The
`symbols are selected by a lottery device. See id.
`¶¶ 53, 125. The Figure illustrates that the symbols
`in display sections 7–9 include a variable symbol.
`Id. ¶ 92. When the variable symbol stops on the pay line, Nagao randomly
`selects a value from 0 to 9 to appear for that variable symbol. Id. ¶¶ 92–93.
`In this regard, Nagao states:
`Namely, at the moment of operating the start lever 11, the symbol
`to be displayed and stopped on the symbol display sections 7 to
`9 is determined by the selection. When the variable symbol is to
`be displayed and stopped according to the result of the selection,
`the further selection is performed to determine the numeral from
`the range of 0 to 9. Specifically, it is determined to display and
`stop the variable symbol on the active line (i.e. pay line) of the
`symbol display section 7 according to the selection, one numeral
`is determined from the range of 0 to 9. Further, it is determined
`to display and stop the variable symbol on the active line (i.e. pay
`line) of the symbol display section 8 according to the selection,
`one numeral which is equal to or greater than the numeral
`determined at the symbol display section 7 and falls within range
`of 0 to 9 is determined. Further, it is determined to display and
`stop the variable symbol stand still on the active line (i.e. pay
`line) of the symbol display section 9 according to the selection,
`one numeral which is equal to or greater than the numeral
`determined at the symbol display section 8 and falls within range
`of 0 to 9 is determined. For these determining processing, the
`CPU 30 executes the program while transmitting and receiving
`the signal to and from the ROM 31, RAM 32 and the random
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`number generating circuit 34. Therefore, these processing is
`performed in an instant.
`Id. ¶ 93.
`
`b) Yoseloff
`Yoseloff is a U.S. patent titled “Method and Apparatus for
`Configuring a Slot-type Wagering Game.” Ex. 1005, [54]. Yoseloff disclose
`an electromechanical reel-slot wagering device that has a plurality of
`mechanical reels rotatable about a central axis and mounted for rotation in a
`cabinet, a visual display with a pay line, and a microprocessor. Id. at 4:21–
`26, 5:20–26. “Electromechanical reel-slot machines are equipped with
`random number generators which select numbers assigned to each angular
`position on the reel. Electromechanical reel-slot machines include a device
`to stop the reel at the selected angular position.” Id. at 1:66–2:3. Yoseloff’s
`preferred embodiment has three mechanical reels with twenty physical reel-
`stop positions and “[t]he microprocessor determines the symbols that will be
`displayed, and then instructs a braking device to stop the reel at a position
`corresponding to the selected symbol.” Id. at 5:30–35, 12:60–61.
`The microprocessor is programmed with a plurality of game outcome
`templates, which are “a combination of X variables which are defined by the
`random selection of symbols from a subset of game symbols assigned to the
`selected template.” Id. at 4:29–31, 4:60–61, 6:38–41. Each outcome
`template represents one or more possible combinations of symbols, some of
`which produce a win, from which the microprocessor selects an outcome for
`a game. See id. at 6:41–43, 13:7–9.
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`c) Sekine
`Sekine is a U.S. patent titled “Display for
`Game and Gaming Machine.” Ex. 1004, [54].
`Sekine discloses a gaming machine, such as a
`pachinko gaming machine or a slot machine. Id.
`at 1:7–9. The gaming machine has three
`rotatable reels 4L, 4C, 4R in a cabinet with reel
`sheets 100L, 100C, and 100R attached to the
`three rotatable reels. Id. at 5:26–28, 6:20–26.
`The gaming machine also has display window 3
`having a plurality of winning lines 5. Id. at 6:8–
`10, Fig. 2. Figure 1 of Sekine is reproduced at
`right and depicts reel sheets 100L, 100C, and 100R. Arranged on the reel
`sheets are a predetermined sequence of a plurality of symbols. Id. at 5:28–
`33. The Figure illustrates that the sequence includes a set of sequential
`identical symbols, such as a bell, plum, or cherry. Id. at 3:36–49, 5:50–58.
`A player can sequentially stop the three reels from rotating using three
`stop buttons 6L, 6C, and 6R. Id. at 6:43–46. For example, a player may
`first push button 6L and stop reel 4L at a time when a plum symbol appears
`in a winning line of display window 3. Id. at 6:53, Fig. 3. The player next
`attempts to push button 6C to stop reel 4C at a time when one of the three
`plum symbols of reel 4C appears on the winning line. Id. at 6:62–7:4,
`Fig. 4. The player then attempts to win by pushing button 6R so that reel 4R
`stops at a time when a plum symbol appears on the winning line. Id.
`at 7:15–17, Fig. 5. Recognition of symbols becomes easier for a player
`because of the sequential placement of a plurality of identical symbols. Id.
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`at 8:27–30. A player can try to stop the reel so that one of the identical
`symbols is or is not on the pay line as needed to form a winning
`combination. See id. at 8:33–52.
`d) Bennett
`Bennett is a U.S. patent titled “Gaming Machine with Enhanced
`Feature Indicator.” Ex. 1006, [54]. Bennett discloses a gaming machine
`with a display and gaming controller that controls images of symbols on the
`display during games. Id. at 1:43–46. Bennett describes a spinning reel
`game, which simulates the rotation of a number of spinning reels, with a
`bonus feature. Id. at 2:15–16, 3:48–49. The bonus feature may be a series
`of free spinning reel games with a special symbol substituted for an existing
`symbol on a reel. Id. at 2:15–26. The substitute symbol may be “positioned
`adjacent a prior occurrence of the substitute symbol on the reel strip so that
`it becomes, visually, readily apparent to the player that at least one further
`substitute symbol has been
`added.” Id. at 2:33–37. Figure 4,
`reproduced at right, depicts a
`display screen after a first bonus
`game following a base game. Id.
`at 3:33–34. As can be seen from
`the above, the display screen
`shows two consecutive substitute
`diamond symbols 58. Id. at
`4:36–37; 5:39–41. For successive bonus games, more consecutive substitute
`symbols may be added to the reel to increase the chances of winning. Id. at
`6:14–59.
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`2. Obviousness in View of Nagao and Sekine
`High 5 contends that claims 1–9, 11, 14, and 19–22 are unpatentable
`as obvious over a combination of Nagao and Sekine. Pet. 15–27. It is not
`disputed that Nagao fails to disclose a reel having a consecutive run of three
`or more identical symbols. High 5 relies upon Sekine as describing this
`claim limitation. Pet. 15 (citing Ex. 1004, 5:22–24, 5:47–49). Sekine
`discloses reel sheets attached to mechanical reels. Ex. 1004, 5:26–28, 6:20–
`26. Arranged on the reel sheets are a predetermined sequence of a plurality
`of symbols, which includes a set of sequential identical symbols, such as a
`bell, plum, or cherry. Id. at 3:36–49, 5:28–33, 50–58.
`Sekine does not disclose randomly selecting the identical symbols
`anew for each play of the game. High 5 relies upon Nagao to teach this
`limitation. Pet. 17–18 (citing Ex. 1003 ¶¶ 90, 93). High 5 equates Nagao’s
`variable symbol to the claimed randomly selected identical symbol. Pet. 16–
`17.
`
`Konami persuasively argues that neither Nagao nor Sekine describe
`randomly selecting any symbol “anew for each play” of the game as
`required in both independent claims. Prelim. Resp. 28–31. Sekine describes
`mechanical reels having a fixed set of symbols that never change during
`game play. Ex. 1004, 5:31–46. Nagao describes a reel that includes a
`position occupied by a “variable symbol.” Ex. 1003 ¶ 92. Nevertheless, the
`value of Nagao’s “variable symbol” is not randomly selected for every
`game. Rather, Nagao randomly selects the value of its variable symbol only
`when its reel stops with the variable symbol on the “pay line.” Ex. 1003
`¶¶ 92, 93, 97, 98.
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`Both independent claims recite that the “identical symbol is randomly
`selected anew for each play” of the game. Ex. 1001, 7:66–67 (claim 1),
`9:23–10:2 (claim 19). Nagao may or may not select a value for its variable
`symbol during any particular play of the game. The claims require more,
`namely, that “for each play” of the game, the “identical symbol is randomly
`selected anew.” We conclude that combination of Nagao and Sekine fails to
`describe this requirement of the challenged claims. This reason alone
`warrants a denial of High 5’s challenge to claims 1–9, 11, 14, and 19–22 as
`being unpatentable as obvious in view of the combination of Nagao and
`Sekine.
`Additionally, we conclude that High 5 fails to provide adequate
`rationale for why a skilled artisan would have found it obvious to randomly
`select the identical symbol anew for each play of the game in light of the
`teachings of Nagao and Sekine. See Pet. 16–17; Ex. 1007 ¶¶ 50–62, 77–82.
`High 5 contends:
`It would have been obvious to a [skilled artisan] to use the
`express suggestion in Nagao to combine its random selection
`lottery system, performed by a microprocessor, with a machine
`that allows for the stoppage of symbols in a column by displaying
`rows of those symbols, like Sekine, to arrive at the claimed
`invention in the ‘869 Patent.
`Pet. 16 (citing Ex. 1007, ¶¶ 50–62, 77–82). High 5 further argues that “it
`would have been obvious to apply the randomized generation of symbols in
`Nagao with the displaying of sequential identical symbols in Sekine with a
`reasonable expectation of successfully increasing player interest.” Id. at 17
`(citing Ex. 1007, ¶¶ 50–62, 77–82).
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`Similarly, Dr. Bertram testifies:
`it would have been obvious to a [skilled artisan] at the time of
`invention to combine (i) Nagao’s “random number generating
`circuit” to select symbols from a range of symbols to fill variable
`symbol positions in the display “at the moment of operating the
`start lever” (Nagao [0093]) with (ii) Sekine’s consecutive run of
`identical symbols on the substituted rotatable reel as claimed in
`Claim 1.
`Ex. 1007, ¶ 87; see also id. ¶ 115 (stating substantially same opinion
`regarding independent claim 19). As can be seen from the above, High 5
`and Dr. Bertram assert that a skilled artisan would combine Nagao and
`Sekine, but they fail adequately to explain how or why it would have been
`obvious to a skilled artisan to combine Nagao and Sekine to arrive at the
`claimed simulated reel that has a group of three consecutive identical
`symbols that is randomly selected anew for each play of the game as
`required in both independent claims 1 and 19.
`For the reasons expressed above, we conclude that High 5 has failed
`to demonstrate a reasonable likelihood of establishing that the combination
`of Nagao and Sekine renders claims 1–9, 11, 14, and 19–22 unpatentable as
`obvious.
`
`3. Obviousness in View of Nagao and Bennett
`High 5 contends that the combination of Nagao and Bennett renders
`claims 1–9, 11, 14, and 19–22 unpatentable as obvious. Pet. 37–48. High 5
`relies upon Nagao for the same purposes as set forth in its challenge to the
`claims based upon Nagao and Sekine. Compare id. at 37–48 with id. at 15–
`27. High 5 relies upon Bennett as teaching the claimed “consecutive run of
`three or more” of an “identical symbol.” Id. at 39–41 (citing Ex. 1006,
`4:54–5:21). Bennett also describes varying a reel to add consecutive
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`DIAMOND symbols during “bonus games” to increase the chance of that
`reel stopping on a DIAMOND symbol. Ex. 1006, 5:34–7:2. Accordingly,
`we determine that Bennett discloses a reel having a consecutive run of three
`or more identical symbols.
`High 5 reasserts its contention that Nagao describes randomly
`selecting this “identical symbol” anew for each play of the game. Pet. 41
`(claim 1), 47 (claim 19). As we explained in part II.B.2 above, we determine
`that Nagao fails to describe randomly selecting any symbol anew for each
`play of the game as required in all challenged claims. As with High 5’s
`challenge based on Nagao and Sekine, High 5 and Dr. Bertram assert that a
`skilled artisan would combine Nagao with Bennett, but they fail adequately
`to explain how or why it would have been obvious to a skilled artisan to
`combine Nagao with Bennett to arrive at the claimed simulated reel that has
`a group of three consecutive identical symbols that is randomly selected
`anew for each play of the game as required in both independent claims 1 and
`19. Accordingly, we conclude that High 5 has failed to demonstrate a
`reasonable likelihood of establishing that the combination of Nagao and
`Bennett renders claims 1–9, 11, 14, and 19–22 unpatentable as obvious.
`4. Obviousness in View of Yoseloff with Either Sekine or Bennett
`High 5 contends that claims 1–9, 11, 14, and 19–22 are unpatentable
`over Yoseloff and Sekine, Pet. 24–29, and, alternatively, that those claims
`are unpatentable over Yoseloff and Bennett, id. at 48–52. Konami disputes
`High 5’s contention by arguing that none of Yoseloff, Sekine, or Bennett
`discloses a simulated reel having a consecutive run of three or more identical
`symbols that is randomly selected anew for each play of the game. Prelim.
`Resp. 34–43. High 5 relies upon Yoseloff as disclosing the claimed random
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`selection of the identical symbol. Pet. 30, 50–51 (citing Ex. 1005, 4:63–67,
`10:13–20, 12:42–47, 13:3–7, 13:10–14). According to High 5, “in Yoseloff,
`reel templates contain positional restrictors (symbol changers) that are
`initially activated before populating the rest of the reel.” Pet. 30, 34, 51, 56.
`High 5 contends that Yoseloff, therefore, meets the limitation in all claims
`that the “identical symbol is randomly selected anew for each play” of the
`game. Id.
`High 5’s argument is not persuasive. Yoseloff discloses mechanical
`reels with physical reel-stop positions and a microprocessor that then
`instructs a braking device to stop the reel at a reel-stop position
`corresponding to selected symbols. Ex. 1005, 5:30–35, 12:60–61. Yoseloff
`also discloses “outcome templates,” which are “a combination of X variables
`which are defined by the random selection of symbols from a subset of
`games symbols assigned to the selected template.” Id. at 4:29–31, 4:60–61,
`6:38–41. Each outcome template represents one or more possible
`combinations of symbols, some of which produce a win. See id. at 6:41–43,
`13:7–9. The microprocessor selects the symbols at which to stop each reel.
`See id. at 12:49–13:9. The symbols on Yoseloff’s fixed mechanical reels,
`however, never change during game play. Yoseloff’s “outcome templates”
`are merely a mechanism to tailor the probability of winning the game by
`permitting the casino to define what constitutes a winning combination. It is
`undisputed that neither Sekine nor Bennett disclose randomly selecting any
`symbol on their respective reels.
`Accordingly, we conclude that High 5 has failed to demonstrate a
`reasonable likelihood of establishing that the combinations of Yoseloff with
`
`16
`
`
`
`IPR2015-01935
`Patent 8,096,869 B2
`
`either Sekine or Bennett render claims 1–9, 11, 14, and 19–22 unpatentable
`as obvious.
`
`III. ORDER
`For the reasons given, it is:
`ORDERED that High 5’s Petition for inter partes review of the
`patentability of claims 1–9, 11, 14, and 19–22 of the ’869 patent is denied.
`
`17
`
`
`
`IPR2015-01935
`Patent 8,096,869 B2
`
`PETITIONER:
`
`Robert C. Ryan
`Christopher B. Hadley
`Jennifer L. Junkin
`HOLLAND & HART LLP
`rcryan@hollandhart.com
`cbhadley@hollandhart.com
`jljunkin@hollandhart.com
`
`PATENT OWNER:
`
`Kristopher K. Hulliberger
`James R. Yee
`Christopher J. Worrel
`HOWARD & HOWARD ATTORNEYS PLLC
`KKH@h2law.com
`JRY@h2law.com
`CJW@h2law.com
`
`18
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