IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`CASE NO. ........................................................................................................................... TBD
`U.S. PATENT NO .................................................................................................... 8,096,869
`PATENT ISSUE DATE .................................................................................... Jan. 17, 2012
`PATENT FILING DATE .................................................................................. Dec. 9, 2005
`FIRST NAMED INVENTOR .................................................................... Osamu Yoshimi
`TITLE ......................... “Gaming Machine with Runs of Consecutive Identical Symbols”
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`DECLARATION OF DR. WILLIAM BERTRAM IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,096,869
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`
`
`
`i
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`High5 Exhibit 1007, Page 1 of 70
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`

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`
`
`TABLE OOF CONTTENTS
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`
`
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`...................NIONS ......F MY OPINMARY OFAND SUMMUCTION AINNTRODU
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`
`...... 1
`I.
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`II. QQUALIFICCATIONS AAND EXPPERIENCEE .......................................................
`...... 3
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`III. MMATERIALLS CONSIIDERED .....................
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`.......................................
`...... 5
`...................
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`IV. AAPPLICABBLE LEGAAL STANDDARDS .....
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`.......................................
`...... 6
`...................
`V.
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`
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`TTHE ‘869 PPATENT——GAMINGG MACHINNE WITHH RUNS OFF
`...... 8
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`CONSEECUTIVE IDENTICCAL SYMBBOLS .........
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`..........................................................
`.... 10
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`VI. CCLAIMS OF THE ‘8669 PATENNT ...............
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`.......................................
`...................
`.... 12
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`VII. CCLAIM COONSTRUCTTION ..........................
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`.......................................
`...................
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`VIII. PPRIOR ARTT TO THEE ‘869 PATTENT .......
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`.......................................
`.... 18
`...................
` A.
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`
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`U.S. PPatent Appplication N
`
`
`agao)o. 2003/01181240 (Na
`18
`
`
`U.S. PPatent No.
` B.
`(Sekine)
` 8,246,047
`22
`
` C.
`
`U.S. PPatent No.
`(Yoseloff)
` 6,159,096
`23
`
` U.S. PD. Patent No.
`
`(Bennett)
` 8,360,840
`27
`ENCES .....T REFERERIOR ARTCOMBINNE THE PR
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`
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`IX. MMOTIVAT
`
`
`IONS TO
`.... 30
`X.
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`
`
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`
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`THE PRIOOR ART REENDERS TTHE ‘869 PPATENT OOBVIOUSS .................
`.... 34
`
` A.
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`lated Claimm 1: Randoomly Generrated Run oof Identicaal Symbols oon a Simul
`
`
`Reel from a Subset of Symbols
`34
`Symbols
`s Identical ssor SelectsClaimm 2: Proces
`B.
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`36
`
` C.
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`Claimm 3: Symbools in the S
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`
`36
`
` D.
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`ednt is SelecteClaimm 4: Winning Elemen
`37
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`
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` E.
`Claimm 5: Prize iis Awarded
`38
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` F.
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`39
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` G.
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`Claimm 7: Defauult Randomm Population
`40
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`
`
` H.
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`Claimm 8: Adaptted for Poteential Modi
`fication
`40
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`. .
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`Claimm 9: Leftwaardly Adjoiining Reel
`41
`
`
`J. .
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`Claimm 11: Left-Most Reel
`42
`K.
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`Claimm 14: Uppeer Secondary Display
`43
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`L.
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`imulated RReel from a Subset of Symbols
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`M.
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`ction lity of Selecubset havee a Probabil
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`d e
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`Claimm 6: Matrixx Comprises Five Coluumns and TThree Rowws
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`44
`46
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`n i
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`Claimm 19: Randdomly Geneerated Runn of Identiccal Symbolss on a
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`
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`Claimm 20: Matriix Comprisses Five Coolumns andd Three Roows
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`
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`ii
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`High5 Exhibit 1007, Page 2 of 70
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`A B C D
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`T AR B C D E F G H I
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`K LS M
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`

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`47
`Most Reel
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`Claimm 21: Left-
` N.
`
`48
`dification
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` O.
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`Claimm 22: Adappted for Pootential Mod
`.... 48
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`XI. EEXHIBIT AAUTHENTTICATIONN STATEMMENTS ...........................................
`.... 49
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`XII. STATEMENT UNDEER U.S.C. SSECTIONN 1001 OF
`TITLE 18
` ..................
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`......................................ION..........XIII. CCONCLUS
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`.......................................
`.... 49
`...................
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`N O
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`iii
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`High5 Exhibit 1007, Page 3 of 70
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`
`I.
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`INTRODUCTION AND SUMMARY OF MY OPINIONS
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`1.
`
`I, William Bertram, have been retained as an expert in this matter by
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`counsel for Petitioner, High 5 Games, LLC (“Petitioner”). I understand that Konami
`
`Gaming, Inc., (“Patent Owner”) has asserted U.S. Patent No. 8,096,869, entitled
`
`Gaming Machine with Runs of Consecutive Identical Symbols (“the ‘869 Patent”)
`
`against Petitioner in Case No. 2:14-CV-01483-RFB-NJK. I also understand that
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`Petitioner has submitted the ‘869 Patent for Inter Partes Review at the United States
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`Patent Office’s Patent Trial and Appeal Board (“PTAB”).
`
`2.
`
`I have been asked by counsel for Petitioner to consider whether it would
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`be obvious to combine certain prior art and whether, alone or in combination, those
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`prior art references invalidate claims 1-9, 11, 14, and 19-22 (“the Challenged Claims”)
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`in the ‘869 Patent.
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`3.
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`After reviewing these claims, the ‘869 Patent specification and file
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`history, the four pieces of prior art—Nagao, Sekine, Yoseloff, and Bennett—and
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`other information referenced herein, in my opinion, it would be obvious to make at
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`least four different combinations of the prior art, and each of those combinations
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`would render the ‘869 Patent obvious.
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`4.
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`The opinions provided herein are my own and are based on my research
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`in this matter and the education, experience, training, and skill I have accumulated in
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`the gaming industry. Between now and such time that I may be asked to testify at
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`1
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`High5 Exhibit 1007, Page 4 of 70
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`

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`trial, I expect to continue my review, evaluation, and analysis of information
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`submitted by the parties, as well as the relevant evidence presented at trial.
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`5.
`
`I also expect to review all submissions related to this Petition and
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`expressly reserve the right to amend or supplement this report, as appropriate. I also
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`expressly reserve the right to amend or supplement this Declaration in response to
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`additional evidence that may come to light as a result of continuing investigation.
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`6.
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`My opinions have also been guided by how a person of ordinary skill in
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`the art (“POSITA”) would have understood the claims of the ‘869 Patent at the time
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`of the alleged invention, which I have been asked to assume is February 14, 2005, the
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`earliest filing date of an application that supports the ‘869 Patent claims. Based on my
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`experience and background, I consider myself to be a POSITA relevant to the alleged
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`inventions claimed in the ‘869 Patent. My opinions are also based on accepting as
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`correct the proposed construction of the claim terms “randomly selected anew,”
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`“notional, non-visible, inner reel,” “virtual rotation,” “subset of a said plurality of
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`symbols,” “fixed for each game played,” “identical symbol,” and “probability of
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`selection,” as set forth below in Section VII.
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`7.
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`I am over 18 years of age. I have personal knowledge of the facts stated
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`in this Declaration and could testify competently to them if asked to do so. My
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`testimony in this Declaration, and any offered in these proceedings, is given from the
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`perspective of a POSITA at the time of the filing of the ‘869 Patent––February 14,
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`2005.
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`2
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`High5 Exhibit 1007, Page 5 of 70
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`

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`II. QUALIFICATIONS AND EXPERIENCE
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`8.
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`I earned a Bachelor of Business Science Degree from Colorado State
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`University. In 1965, I also earned a Master of Science Degree and a Doctor of
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`Philosophy Degree from the University of Michigan. I have over thirty (30) years of
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`casino industry experience, including working directly with the electronic design of
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`stepper motor slot machines, mathematical analysis of games of skill, and construction
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`and testing of random number algorithms. My work in this area resulted in being a
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`named inventor on fifteen issued U.S. patents related to casino related applications.
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`Since 1994, I have served as an expert witness in numerous patent infringement cases
`
`and trade secret cases. My current Curriculum Vitae, setting forth additional detail, is
`
`attached hereto as Exhibit A.
`
`9.
`
`Beginning in 1965, I spent two years as a Post-Doctorial Fellow at the
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`German Electronc Synchrotron Lab in Hamburg, Germany. In 1967, I became an
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`Assistant Professor of Physics at the University of Illinois, Urbana-Champaign for
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`one year. Then, starting in 1968, I spent five (5) years in the academic world
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`conducting research in high-energy electromagnetic interactions while I was an
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`Associate Professor of Physics at the Massachusetts Institute of Technology, in
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`Cambridge, Massachusetts. My work in this area lead to approximately twenty-five
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`(25) publications on Hi Energy Electromagentic Interactions.
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`3
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`High5 Exhibit 1007, Page 6 of 70
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`

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`10.
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`From 1973 to 1977, I was President and Founder of Bio-Dyne
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`Corporation. While there, I designed and manufactured a complete line of medical
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`bio-feedback instrumentation.
`
`11.
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`From 1978 to1982, I served as the Vice-President of Engineering at
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`Instream Incorporated in Reno, Nevada. I was responsible for the design and testing
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`of continuous weight equipment and process control systems.
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`12.
`
`From 1982 to 1996, I served as a Senior Project Engineer at
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`International Gaming Technology in Reno, Nevada. There I was responsible for the
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`electronic design of stepper motor slot machines. I also conducted mathematical
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`analysis for games of skill. I contributed to construction and testing of random
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`number algorithms.
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`13.
`
`In 1997, I founded WKB Associates Incorporated, of which I am
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`currently the sole proprietor. At WKB, I provide mathematical analysis and expert
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`witness testimony, often in patent infringement litigations. In this capacity I routinely
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`provide casino gaming specific random number generator algorithm testing. I also
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`contribute to gaming system design and performance optimization primarily using
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`optimum game theories to optimize the return to the player for various games. I have
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`also participated in new casino game demonstrations as well as pay table calculations.
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`14.
`
`I am being compensated at a rate of $250 per hour plus out of pocket
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`expenses for my work as Petitioner’s expert witness. I have no financial interest in the
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`4
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`High5 Exhibit 1007, Page 7 of 70
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`

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`outcome of this case nor is my compensation contingent upon the opinions I develop
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`in this matter.
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`III. MATERIALS CONSIDERED
`
`15.
`
`In forming my opinions, I reviewed the following documents:
`
`(cid:120) U.S. Patent No. 8,096,869 (“‘869 Patent”) (Ex. 1001);
`
`(cid:120) Prosecution History of U.S. Patent No. 8,096,869 (Ex. 1002);
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`(cid:120) U.S. Patent Publication No. 2003/0181240 (“Nagao”) (Ex. 1003);
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`(cid:120) U.S. Patent No. 8,246,047 (“Sekine”) (Ex. 1004);
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`(cid:120) U.S. Patent No. 6,159,096 (“Yoseloff”) (Ex. 1005);
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`(cid:120) U.S. Patent No. 8,360,840 (“Bennett”) (Ex. 1006);
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`(cid:120) U.S. Patent No. 6,604,999 to Ainsworth;
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`(cid:120) Copy of 35 U.S.C. § 103;
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`(cid:120) Copies of dictionary definitions for “virtual,” “subset” and “identical” in
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`Webster’s New College Dictionary, (2005), Wiley Publishing, Cleveland,
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`OH; Oxford Dictionary; and Dictionary.com.
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`(cid:120) Konami Gaming, Inc.’s Disclosure of Asserted Claims and Infringement
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`Contentions in the Nevada Litigation (“Konami Contentions”) (Ex.
`
`1008);
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`(cid:120) The Complaint for Patent Infringement (including its Exhibits) in
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`Konami Gaming, Inc. v. PTT, LLC d/b/a/ High 5 Games., Case No. 2:14-
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`5
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`High5 Exhibit 1007, Page 8 of 70
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`

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`CV-01483-RFB-NJK (“Nevada Litigation”) (Ex. 1009);
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`(cid:120) Petition for Inter Partes Review of U.S. Patent No. 8,096,869 (the
`
`“Petition”);
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`(cid:120) Petition for Inter Partes Review of U.S. Patent No. 8,366,540, all related
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`exhibits, and the Declaration of Dr. William Bertram in support thereof;
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`(cid:120) Petition for Inter Partes Review of U.S. Patent No. 8,616,955, all related
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`exhibits, and the Declaration of Dr. William Bertram in support thereof;
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`and
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`(cid:120) Petition for Inter Partes Review of U.S. Patent No. 8,622,810, all related
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`exhibits, and the Declaration of Dr. William Bertram in support thereof.
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`IV. APPLICABLE LEGAL STANDARDS
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`16. While I have general lay familiarity with patent law principles from my
`
`experience patenting inventions and providing expert opinions in other unrelated
`
`cases, I do not consider myself an expert on patent law. Therefore, counsel for
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`Petitioner has provided me with additional guidance on legal principles relating to
`
`patents and patent invalidity that govern the issues on which I was asked to opine.
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`17.
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`I understand that in order to decide whether a patent claim is invalid, the
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`claim terms must be properly interpreted, and then the properly interpreted claims
`
`must be applied to the patent-at-issue on an element by element basis.
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`6
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`High5 Exhibit 1007, Page 9 of 70
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`

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`18.
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`I understand that there are two types of patent claims: independent and
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`dependent claims. An independent claim does not refer back to any other claim of
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`the patent. Invalidity of an independent claim is considered separately and without
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`regard to any other claim.
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`19.
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`I understand that a dependent claim includes reference to another claim
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`in the patent. A dependent claim incorporates all of the limitations of the claims to
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`which the dependent claim refers. Thus, for each dependent claim at issue, one must
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`consider all of the limitations in the dependent claim, as well as the limitations in the
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`claim(s) from which it depends when resolving the question of invalidity.
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`20.
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`I understand that a patent is invalid if a prior art reference discloses
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`every limitation in the claimed invention.
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`21.
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`I also understand that a claimed combination is obvious, and therefore
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`not patentable, if the differences between the subject matter patented and the prior art
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`are such that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said subject
`
`matter pertains. Whether the subject matter would have been obvious depends on:
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`(1) the scope and content of the prior art, (2) the differences between the prior art and
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`the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant
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`secondary considerations, such as commercial success, long-felt but unsolved needs,
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`and the failure of others.
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`7
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`High5 Exhibit 1007, Page 10 of 70
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`22.
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`I also understand that if a technique has been used to improve one
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`device, and a POSITA would have recognized that it would improve similar devices in
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`the same way at the time of invention, using the technique can be obvious unless its
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`actual application is beyond his or her skill. There may also be a specific teaching,
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`suggestion, or motivation in the prior art, the nature of the problem to be solved, or
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`knowledge of the POSITA to combine prior art references. Such a teaching,
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`suggestion, or motivation to combine the references can be the express or implicit,
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`and such inherent disclosures of a prior art reference may be relied upon. I also
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`understand that if a POSITA can implement a predictable variation, and would have
`
`seen the benefit of doing so, the claimed combination is likely obvious under § 103 .
`
` THE ‘869 PATENT—GAMING MACHINE WITH RUNS OF
`V.
`CONSECUTIVE IDENTICAL SYMBOLS
`
`23.
`
`The ‘869 Patent is directed to a gaming machine displaying simulated
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`rotatable reels with randomly selected symbols where at least one reel has at least one
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`run with an identical symbol randomly selected from a subset of symbols each play of
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`the game. Ex. 1001, Abstract.
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`24.
`
`The ‘869 Patent issued from U.S. Patent Application No. 20060183534
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`filed on August 17, 2006. The patent claims priority to Australian Provisional Patent
`
`Application 2005900681 filed on February 14, 2005.
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`25.
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`The ‘869 Patent discloses five preferred embodiments of the invention.
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`The “First Preferred Embodiment” arranges the left most reel “to have at least one
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`8
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`High5 Exhibit 1007, Page 11 of 70
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`run of an identical symbol in each of a number of consecutive elements.” Id., 4:33-36.
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`The “Second Preferred Embodiment” modifies the second reel “to include at least
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`one run of consecutive elements displaying the same ‘inner reel’ symbols as that used
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`to populate the elements of the consecutive runs or runs of the left-most reel.” Id.,
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`5:21-26. In the “Third Preferred Embodiment,” “a player is made aware of the
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`populating of one or more consecutive runs of the left-most reel with the identical
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`symbol.” Id., 6:7-9. In the “Fourth Preferred Embodiment,” “the number of
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`elements comprising a run of identical ‘inner reel’ symbols and the number of such
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`runs in any given reel is not constant but may be determined a number of ways.” Id.,
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`6:30-32. The “Fifth Preferred Embodiment” envisions the symbols to be non-
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`rectangular. Id., 6:46-7:7.
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`26.
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`I have considered the level of ordinary skill in the art related to the ‘869
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`Patent, around the time of the invention in 2005. It is my opinion that a person of
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`ordinary skill in this art would be expected to have a computer science degree and/or
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`a technical degree and practical experience involving electronic slot machines. This
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`person would have at least four years of practical experience programming electronic
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`slot machines and a demonstrated history and competence of casino game play. This
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`person would also have working knowledge of statistical analyses of electronic slot
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`machines. I have performed my analysis as I believe a person of ordinary skill in the
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`art would have, and as stated, believe I am a POSITA in this slot machine gaming art.
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`9
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`High5 Exhibit 1007, Page 12 of 70
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`VI. CLAIMS OF THE ‘869 PATENT
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`27.
`
`I understand that the Challenged Claims are claims 1-9, 11, 14, and 19-
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`22, with claims 1 and 19 being independent.
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`28.
`
`Claim 1 of the ‘869 Patent recites the following:
`
`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
`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.
`
`29.
`
`Claim 19 of the ‘869 Patent recites the following:
`
`19. A method for increasing probability of a winning outcome on
`a gaming machine;
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`10
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`High5 Exhibit 1007, Page 13 of 70
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`wherein said winning outcome is determined by a game including
`pre-defined arrangements of a plurality of symbols displayed in a matrix
`of symbol containing elements comprising portions of simulated
`rotatable reels;
`said method comprising a processor of the gaming machine
`configured to:
`(a) arrange at least one of said simulated rotatable reels with at
`least one consecutive run of three or more symbol containing elements
`displaying an identical symbol;
`said identical symbol selected from a subset of said plurality of
`symbols so that, as the simulated rotatable reel rotates, a consecutive
`string of the same identical symbol is sequentially displayed in said
`consecutive run of three or more symbol containing elements within a
`column defined by the simulated rotatable reel; and
`(b) randomly select one of the plurality of symbols from each one
`of said simulated rotatable reels as a potential win element; wherein, said
`at least one consecutive run of three or more symbol containing
`elements comprises a section of said simulated rotatable reel, such that
`all other remaining symbol containing elements of said simulated
`rotatable reel are populated with fixed symbols from the plurality of
`symbols for each play of the game; and
`wherein said subset of said plurality of symbols is arranged on a
`notional non-visible inner reel, such that said identical symbol is
`randomly selected anew for each play of the game by virtual rotation of
`said notional non-visible inner reel.
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`11
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`High5 Exhibit 1007, Page 14 of 70
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`
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`VII. CCLAIM COONSTRUCCTION
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`30.
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`For cclaim construction gennerally, I haave been innstructed thhat, as a
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`POSITAA, I shouldd first consider whetheer these terrms have a
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`plain and oordinary
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`meaningg or a uniquue meaningg in the art.. Second, II should coonsider wheether the pllain
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`and ordiinary meanning, or uniique meaninng in the arrt, is alteredd by either
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`abandonmment
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`history. I
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`also
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`or a cleaar definitionn to the contrary in thhe patent sppecificationn or its file
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`understaand that whhen the pattentee has aacted as hiss/her own
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`lexicograp
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`her and
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`providedd a definition of a termm, that deffinition appplies.
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`1.
`3
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` I furrther under
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`stand that iin decidingg whether tto institute
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`inter partes
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`review,
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`“A claim inn an unexp
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`ired patentt shall be giiven its brooadest reasoonable
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`construcction in lighht of the sppecificationn of the pattent in whicch it appeaars.” 37 C.FF.R.
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`§ 42.1000(b). I undderstand thaat this claimm constructtion standaard is differrent from, aand
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`can be bbroader thaan, that appplied in disttrict court.
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` I further uunderstandd that “the
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`broader standard sserves to identify ambbiguities in tthe claims
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`throughh claim ameendments.”” Final Rules, 77 Fed.. Reg. at 488699.
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`AA.
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`Petittioner’s Proposed Coonstructioons
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`“randommly selectedd anew”
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`32.
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`To a POSITA ““randomly selected annew” is connstrued as ““selected ussing
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`a randomm selectionn algorithmm for each ggame.” Theere is no unnique meanning for thee
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`terms “rrandomly selected aneew” in the ggaming art
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`. This connstruction, aaccording tto
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`the Patentt Owner’s
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`12
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`High5 Exhibit 1007, Page 15 of 70
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`contentions in the Nevada Litigation and the specification of the ‘869 Patent. See Exs.
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`1001 and 1008, 16. The Patent Owner defines a “notional [sic], non-visible inner
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`reel” as a “random selection algorithm” and cites to the ‘869 Patent specification,
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`4:55-5:12. Id.
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`33.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “randomly selected anew” is “selected using a random selection algorithm for
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`each game.”
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`“notional, non-visible, inner reel”
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`34.
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`To a POSITA, a “notional, non-visible, inner reel” is construed as “a
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`look-up table.” There is no unique meaning for this term in the gaming art, and this
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`construction is consistent with the specification of the ‘869 Patent. The specification
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`defines an “inner reel” as an “‘inner reel’ or look-up table.” Ex. 1001, 4:58. While the
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`Applicant expressly disclaimed a template to distinguish Yoseloff during prosecution,
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`there is no difference between a “notional, non-visible, inner reel” and a look-up
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`table. Ex. 1002, Resp. to Ofc. Act., 154. Furthermore, in the Nevada Litigation, the
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`Patent Owner defined “notional [sic], non-visible inner reel” as a “random selection
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`algorithm” and cited to the ‘869 Patent specification, 4:55-5:12. See Ex 1008, 16. The
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`below block quote contains multiple citations to a look-up table as the notional, non-
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`visible reel:
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`This “inner reel” is in effect a look-up table and is not
`displayed, but its simulated rotation and “coming to rest” determines
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`13
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`High5 Exhibit 1007, Page 16 of 70
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`which symbol will populate the run or runs of consecutive elements of
`the left-most reel.
`The symbols of the “inner reel” or look-up table from which
`the selection is made, are a sub-set of the set of symbols displayed in the
`remaining non-“inner reel” elements of the left-most reel. Thus, where
`the symbols are those of a suit of cards, the “inner reel” symbols may be
`those of the Ace, King, Queen and Jack, sometimes called the trump or
`court cards. The look-up table could also include a “wild” or “scatter”
`symbol. As previously noted, the arrangement or ordering of the
`symbols in the elements of the reel, other than the consecutive run or
`runs of elements, remain constant for every game, only the selection of
`the identical symbol from the look-up table is performed anew for each
`new play of a game.
`The symbols 36 of the look-up table 34 need not all have the
`same probability of selection but may be assigned a hierarchy of
`probability. Thus for example, those symbols for which a winning
`combination confers on the player of a game a relatively higher value
`prize, such as the ace and the king, may have an inversely proportional
`probability of being selected as an “inner reel” symbol.
`Ex. 1001, 4:54-5:10 (emphasis added).
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`35.
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` Additionally, the definition of “notional,” from a common dictionary at
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`the time of the ‘869 Patent filing or 2005, is “of, expressing, or consisting of notions,
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`or concepts.” See Exhibit B, attached hereto, Webster’s New College Dictionary
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`(2005).
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`High5 Exhibit 1007, Page 17 of 70
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`36.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “notional, non-visible, inner reel” is “a look-up table.”
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`“virtual rotation” / “virtually spinning”
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`37.
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`To a POSITA, “virtual rotation” or “virtually spinning” are construed as
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`“selecting with a random selection algorithm for each game.” There is no unique
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`meaning for the terms “virtual rotation” or “virtually spinning” in the gaming art.
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`This construction is consistent with the Patent Owner’s contentions in the Nevada
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`Litigation (see Ex 1008, 16), where it defined the “notional [sic], non-visible inner reel”
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`as a “random selection algorithm” and cited to the ‘869 Patent, 4:55-5:12. Id. As
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`shown above, a “notional, non-visible inner reel” is consistently referred to as a look-
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`up table. Therefore, I assume the Patent Owner meant the “virtual rotation” or
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`“virtually spinning” of the “notional, non-visible inner reel” is performed through a
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`“random selection algorithm.”
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`38.
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`Additionally, the definition of “virtual,” from a common dictionary at
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`the time of the ‘869 Patent filing or 2005, is “being such practically or in effect,
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`although not in actual fact or name.” See Exhibit B, attached hereto, Webster’s New
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`College Dictionary (2005).
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`39.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “virtual rotation” and “virtually spinning” is “selecting with a random selection
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`algorithm for each game.”
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`High5 Exhibit 1007, Page 18 of 70
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`“subset of a said plurality of symbols”
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`40.
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`To a POSITA, a “subset of a said plurality of symbols” is construed as
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`“a group of symbols that is part of a larger group of symbols.” There is no unique
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`meaning for this term in the art, and the ordinary meaning of the term “subset” is
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`defined as: a part or portion of a larger set or group. Exhibit B, attached
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`hereto. Patent Owner defines “subset” as “A set consisting of elements of a given set
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`that can be the same as the given set or smaller.” Ex. 1011, 16. However, the
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`specification gives the example, “where the symbols are those of a suit of cards, the
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`‘inner reel’ symbols may be those of the Ace, King, Queen and Jack . . . .” (Ex. 1001,
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`4:58-63). The specification and the ordinary English meaning of this term, are
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`consistent with a part or portion of a larger set or group, and not one that can be the
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`same as the given set. See, Ex. B, attached hereto. The specification example symbols
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`are a subset (a set comprising less than) a larger set of symbols set forth in the
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`specification. Id.
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`41.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “subset of a said plurality of symbols” is “a group of symbols that is part of a
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`larger group of symbols.”
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`“fixed for each game played”
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`42.
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`To a POSITA, “fixed for each game played” is construed as “an
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`arrangement of symbols that remains constant for every game.” There is no unique
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`meaning for the term “fixed for each game played” in the gaming art. The
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`High5 Exhibit 1007, Page 19 of 70
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`specification states, “With some exceptions, as explained below, the sequence of
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`symbols within the elements of a reel remains fixed for all games played.” Ex. 1001,
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`4:23-25 (emphasis added). The specification further states, “the arrangement or
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`ordering of the symbols in the elements of the reel, other than the consecutive run or
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`runs of elements, remain constant for every game.” Id., 4:66-5:1 (emphasis added).
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`43.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “fixed for each game played” is “an arrangement of symbols that remains
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`constant for every game.”
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`“identical symbol”
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`44.
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`To a POSITA, “identical symbol” is construed as “the same symbol.”
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`The specification states, “at least one reel… is arranged to have at least one run of an
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`identical symbol in each of a number of consecutive elements.” Id., 4:33-36. The
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`specification further points to FIG. 2 wherein “a run of kings (crown symbol) is
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`arranged for display in runs of five consecutive elements 30 at three locations 31 to 33
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`respectively.” Id., 4:38-39.
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`45.
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`Additionally, there is no unique meaning in the gaming art for the term
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`“identical symbol”; and the definition of “identical,” from a common dictionary at the
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`time of the ‘869 Patent filing or 2005, is “the very same . . . exactly alike or equal.” See
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`Exhibit B, attached hereto, Webster’s New College Dictionary (2005).
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`46.
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`Accordingly, in my opinion, the broadest reasonable construction of the
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`term “identical symbol” is construed as “the same symbol.”
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`High5 Exhibit 1007, Page 20 of 70
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`“probabbility of seleection”
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`447.
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`To a POSITA, ““probabilitty of selectiion” has noo unique mmeaning in tthe
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`gaming art is consttrued accorrding to its ordinary EEnglish meaaning as “thhe likelihoood
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`that a giiven symbool will be seelected.” TThis construuction is coonsistent wwith the Pateent
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`Owner’ss contentioons in the NNevada Litiigation. Exx 1008, 16.
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`448.
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`Accoordingly, in my opinionn, the broaadest reasonnable consttruction of f the
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`term “probability oof selectionn” is constrrued as “thee likelihoodd that a givven symbol
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`VIII. PPRIOR ARRT TO THHE ‘869 PAATENT
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`449.
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`As paart of my innvestigationn for this mmatter, I revviewed sevveral prior aart
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`referencces. I have also taken
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`into accouunt my overr thirty (300) years of eexperience
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`in
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`the gamming industrry, as explaiined in moore detail abbove.
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`A.
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`U.S. Patent Appplication No. 2003//0181240 (NNagao)
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`A 5
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`0. Nagaao is directeed to “any mmachine wwhich enablees sequentiial stoppagee of
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`symbolss of respecttive columnns …, by mmeans of suuccessively
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`displaying
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`of
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`rows of f symbols.” Ex. 1003, Nagao [00081]. “Wheen one or mmore activee lines are
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`specifiedd by a playeer’s bettingg operation
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` and the staart lever 111 is actuate
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`display ssections 7 tto 9 successively displlay symbolss.” Id. [00885]. “[E]acch of the
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`symbol display secctions 7 to 99 can displaay a variablle symbol:
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`numeralls 0 to 9, annd other syymbols.” Idd. [0092]. ““When a vaariable symmbol has comme
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`to a stanndstill at ann active linee (i.e., a payy line) in thhe symbol ddisplay secttion 7, any oone
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`High5 Exhibit 1007, Page 21 of 70
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`numeral value is selected from the range of 0 to 9 by lottery and thus-selected value is
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`determined.” Id.