UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`High 5 Games, LLC,
`
`Petitioner,
`
`v
`
`
`Konami Gaming, Inc.,
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`Patent Owner.
`
`Case IPR2015-01935
`
`U.S. Patent No. 8,096,869
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`PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.107(a)
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`TABLE OF CONTENTS
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`C.
`
`D.
`
`
`TABLE OF AUTHORITIES ................................................................................... iii
`I.
`Introduction ...................................................................................................... 1
`II.
`Claim Construction .......................................................................................... 2
`A.
`“Randomly Selected Anew” Requires No Construction ....................... 5
`B.
`“Notional, Non-visible Inner Reel” Is Construed as a Random
`Selection Algorithm .............................................................................. 9
`“Virtual Rotation” and “Virtual Spinning” is Construed as
`Execution of or Executing the Random Selection Algorithm of
`the Notional, Non-visible Inner Reel .................................................. 14
`“Subset of Said Plurality of Symbols” Requires No Construction
` ............................................................................................................. 16
`“Fixed for Each Game Played” Requires No Construction ................ 18
`E.
`“Identical Symbol” Requires No Construction ................................... 20
`F.
`“Probability of Selection” Requires No Construction ........................ 21
`G.
`III. The Petition filed against U.S. Patent No. 8,096,869 fails to meet the
`requirements of 37 C.F.R. §§ 42.104(b)(3) and (4) and Must Be Denied.
` ....................................................................................................................... 21
`IV. High5 Has Failed to Meet the Minimum Threshold Showing that it is
`Reasonably Likely to Prevail in Proving Obviousness of Any Claim .......... 22
`A. High5 Failed to Fully and Properly Consider the Asserted
`References as a Whole and the Proposed Combinations Do Not
`Disclose Each and Every Limitation ................................................... 24
`1.
`Grounds 1 & 2 Should Not Be Instituted Because High5
`Failed to Consider Sekine’s Teaching Away from the
`Proposed Combination .............................................................. 26
`Ground 1 Should Not Be Instituted Because Combination
`Fails to Disclose Each and Every Limitation as Claimed ........ 28
`Proposed Combination in Ground 2 Fails to Disclose Each
`and Every Limitation as Claimed and Ground 2 Should
`Not Be Instituted ....................................................................... 34
`
`2.
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`3.
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`
`i
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`

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`V.
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`4.
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`Grounds 3 and 4 Should Not Be Instituted Because the
`Combination Fails to Disclose Each and Every Limitation
`as Claimed ................................................................................. 39
`High5 Failed to Provide Sufficient Obviousness Rationales in
`View of KSR ........................................................................................ 43
`Conclusion ..................................................................................................... 46
`
`B.
`
`ii
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`

`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`AbTox Inc. v. Exitron Corp.,
`122 F.3d 1019 (Fed. Cir. 1997) .............................................................................. 3
`Ariosa Diagnostics, Inc. v. Verinata Health, Inc.,
`IPR2013-00277, Paper No. 10 (P.T.A.B. 2013) .................................................... 3
`Ball Aerosol v. Limited Brands,
`555 F.3d 984 (Fed. Cir. 2009) ..............................................................................45
`Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) .............................................................................. 4
`C.R. Bard. Inc. v. United States Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) ..............................................................................21
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) .............................................................................. 3
`Crocs Inc. v. International Trade Commission,
`598 F.3d 1294 (Fed. Cir. 2010) ............................................................................44
`Cross Med. Products, Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005) .............................................................................. 3
`Enzo Biochem. Inc. v. Applera Corp.,
`599 F.3d 1325 (Fed. Cir. 2010) ............................................................................25
`GE Lighting Solutions, LLC v. AgiLight, Inc.,
`750 F.3d 1304 (Fed. Cir. 2014) ............................................................................11
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................... 23, 24, 44
`Honeywell Int’l. Inc. v. Int’l Trade Comm’n,
`341 F.3d 1332 (Fed. Cir. 2003) ............................................................................25
`In re Chevalier,
`500 F. App'x 932 (Fed. Cir. 2013) .......................................................................46
`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ..............................................................................45
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 24, 26
`
`
`
`iii
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`

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`
`
`In re McLaughlin,
`443 F.2d 1392 (CCPA 1971) ................................................................................45
`In re Rinehart,
`531 F.2d 1048, 189 USPQ 143 (CCPA 1976) .....................................................41
`International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc.,
`IPR2014-00099, Paper No. 12 (P.T.A.B. 2014) ..................................................23
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)........................................................................................... passim
`On Demand Mach. Corp. v. Ingram Indus.,
`442 F.3d 1331, 1344 (Fed. Cir. 2006) .................................................................... 4
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .............................................................................. 7
`Power MOSFET Techs., LLC v. Siemens AG,
`378 F.3d 1396, 1406 (Fed. Cir. 2004) ..................................................................25
`Primos, Inc. v. Hunter's Specialties, Inc.,
`451 F.3d 841 (Fed. Cir. 2006) ................................................................................ 3
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983) ..................................................43
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`358 F.3d 870 (Fed. Cir. 2004) ....................................................................... 18, 20
`Toro Co. v. White Consol. Indus.,
`199 F.3d 1295 (Fed. Cir. 1999) .............................................................................. 4
`United States v. Adams,
`383 U.S. 39 (1966) ...............................................................................................44
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983),
`cert. denied, 469 U.S. 851 (1984) ........................................................................27
`Statutes
`35 U.S.C. § 103 ........................................................................................................26
`35 U.S.C. § 103(a) ...................................................................................................23
`
`
`iv
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`
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`Other Authorities
`MPEP 2141 ..............................................................................................................45
`MPEP 2141.02 .........................................................................................................43
`MPEP 2143.02 .........................................................................................................41
`Office Patent Trial Practice Guide (“Trial Practice Guide”) ..................................... 2
`Regulations
`37 C.F.R. § 42.100(b) ................................................................................................ 2
`37 C.F.R. § 42.104(b)(3) ......................................................................... 9, 13, 20, 22
`37 C.F.R. § 42.104(b)(4) ......................................................................... 9, 13, 20, 22
`77 Fed. Reg. 48756 (Aug. 14, 2012).......................................................................... 2
`U.S. Patents
`U.S. Patent No. 6,159,096 ................................................................................ passim
`U.S. Patent No. 8,096,869 ................................................................................ passim
`United States Patent No. 8,246,047 ................................................................. passim
`United States Patent No. 8,360,840 ................................................................. passim
`U.S. Patent Publication 2003/0181240 ............................................................ passim
`
`
`
`v
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`

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`
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`I.
`
`Introduction
`
`The Petition filed by Petitioner High 5 Games (hereinafter referred to as
`
`“High5” or “Petitioner”) as to U.S. Patent No. 8,096,869, assigned to Konami
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`Gaming, Inc. (hereinafter referred to as “Konami” or “Patent Owner”) should not be
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`instituted because it fails to meet the threshold for instituting inter partes review of
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`the validity of the challenged claims. The Petition fails to demonstrate a reasonable
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`likelihood that at least one of the challenged claims is unpatentable based on the
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`proposed grounds of invalidity and the Petition offers faulty and legally insufficient
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`reasoning for combining the references cited in the Petition.
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`From a claim construction perspective, the Petition is fatally flawed because
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`High5 proposes claim constructions that violate the basic canons of claim
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`construction. First, High5 offers for construction terms that already have a readily
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`apparent meaning and do not require construction. Second, the proposed
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`constructions improperly import limitations from the specification into the claims
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`while ignoring the surrounding claim language in violation of basic claim
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`construction principles. Finally, these proposed constructions cannot withstand
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`basic scrutiny because the inconsistency with the surrounding claim language makes
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`other claim limitations redundant or superfluous, again in violation of black letter
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`law.
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`1
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`

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`
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`The Petition is also fatally flawed because it sets forth a faulty and legally
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`insufficient rationale for combining the asserted prior art references. High5 relies
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`on four patents (Nagao, Yoseloff, Sekine, and Bennett) and presents four different
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`grounds combining two of these references in each ground. In each, High5 has failed
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`to fully and properly consider each reference as a whole. High5 simply cherry picks
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`certain selections without fairly determining the full scope and content of the prior
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`art, and without ascertaining the differences between the prior art and the claims at
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`issue. High5 relies on impermissible hindsight to reach the legal conclusion of
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`obviousness only based on facts gleaned from Konami’s disclosure and not from the
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`prior art as is required for a prima facie case of obviousness. Notwithstanding these
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`improprieties, even if the references could be combined, the combinations do not
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`disclose, teach, or suggest, each and every limitation as claimed.
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`Accordingly, the inter partes review should not be instituted.
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`II. Claim Construction
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`In an IPR proceeding, the Board construes claim terms according to their
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`broadest reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial
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`Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). The words of the
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`claim are the starting point and focal point of any claim construction analysis. The
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`inquiry begins and ends in all cases with the actual words of the claim. AbTox Inc.
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`2
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`

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`
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`v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). If the ordinary meaning of
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`the claim language is readily apparent, claim construction merely involves applying
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`the widely understood meaning of the words. Absent claim language carrying a
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`clear narrow meaning, the Board will not limit a claim based on the specification
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`unless it expressly disclaims the broader definition. See, e.g., Ariosa Diagnostics,
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`Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (P.T.A.B. 2013).
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`Further, a proposed construction is improper if it makes other terms redundant or
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`superfluous. Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir.
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`2006) (holding that the word “engaging” cannot mean the same thing as “sealing”;
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`if it did, one of the terms would be superfluous); Cross Med. Products, Inc. v.
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`Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1307 (Fed. Cir. 2005) (rejecting
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`construction that made claim language redundant.)
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`The Board should find that the proposed claim terms carry their ordinary and
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`customary meaning and require no construction where the patentee has not acted as
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`its own lexicographer in defining a claim term to have a special meaning. A heavy
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`presumption exists that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`Ordinary and customary meaning refers to the meaning the term would have to a
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`person of ordinary skill in the art. Such terms have been held to require no
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`3
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`
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`construction. See, e.g., Biotec Biologische Naturverpackungen GmbH & Co. KG v.
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`Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001).
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`Importantly, “[c]are must be taken lest word-by-word definition, removed
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`from the context of the invention, leads to an overall result that departs significantly
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`from the patented invention.” On Demand Mach. Corp. v. Ingram Indus., 442 F.3d
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`1331, 1344 (Fed. Cir. 2006). Claim terms are “not construed in a lexicographic
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`vacuum, but in the context of the specification and drawings.” Toro Co. v. White
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`Consol. Indus., 199 F.3d 1295, 1301 (Fed. Cir. 1999).
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`The Petitioner proposes constructions for the terms and phrases as
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`summarized in the table below, which also presents the Patent Owner’s responses
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`and identifies the claim(s) where the term or phrase is used.
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`Claim Term
`
`Randomly
`selected anew
`
`Notional, non-
`visible inner reel
`Virtual rotation /
`virtual spinning
`
`Subset of a said
`plurality of
`symbols
`
`Petitioner’s
`Construction
`Selected using a
`random selection
`algorithm for each
`game
`Look-up table
`
`Selecting with a
`random selection
`algorithm for each
`game
`A group of symbols
`that is part of a larger
`group of symbols
`
`Patent Owner’s
`Construction
`No construction
`required: plain &
`ordinary meaning
`
`Claim Nos.
`where used
`1, 19
`
`Random selection
`algorithm
`Execution or executing
`
`1, 19
`
`1, 19
`
`No construction
`required: plain &
`ordinary meaning
`
`1, 2, 19
`
`4
`
`

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`
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`Claim Term
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`Fixed for each
`game played
`
`Petitioner’s
`Construction
`An arrangement of
`symbols that remains
`constant for every
`game
`Identical symbol The same symbol
`
`Probability of
`selection
`
`The likelihood that a
`given symbol will be
`selected
`
`Patent Owner’s
`Construction
`No construction
`required: plain &
`ordinary meaning
`
`No construction
`required: plain &
`ordinary meaning
`No construction
`required: plain &
`ordinary meaning
`
`Claim Nos.
`where used
`1
`
`1, 8, 9, 10,
`12, 19, 22
`
`3
`
`A.
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`“Randomly Selected Anew” Requires No Construction
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`The Board should deny institution and reject the Petitioner’s proposed
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`construction for “randomly selected anew.” High5 proposes to construe “randomly
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`selected anew” as “selected using a random selection algorithm for each game.”
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`This proposed construction introduces further limitation on ‘how’ and ‘when’ the
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`selection is performed. The proposed construction substitutes “using a random
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`selection algorithm” in place of the claimed “randomly,” and substitutes “for each
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`game” in place of the claimed “anew.” These further ‘how’ and ‘when’ limitations
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`are simply not present in the original claim term and there is no justification to
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`introduce them through claim construction. High5 provides no support justifying
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`these substitutions and additions, which are redundant and contraindicated by other
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`language in the claims.
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`Claim 1 claims “a gaming machine comprising,” in pertinent part, a
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`“simulated rotatable reel including at least one section in which a consecutive run of
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`5
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`

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`three or more of said symbol containing elements is populated by an identical
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`symbol so that, as the simulated rotatable reel rotates, a consecutive string of said
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`same identical symbol is sequentially displayed within said consecutive string of
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`symbol containing elements; and said identical symbol is randomly selected anew
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`for each play of said game…” Ex. 1001 at 7:60-67. Additionally, claim 19, which
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`claims “a method for increasing probability of a winning outcome on a gaming
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`machine,” defines the method to include, among other things, a subset of a plurality
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`of symbols “arranged on a notional non-visible inner reel, such that said identical
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`symbol is randomly selected anew for each play of the game by virtual rotation of
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`said notional non-visible inner reel.” Ex. 1001 at 9:22-10:3.
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`The proper analysis begins by looking at the language of the claims itself. The
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`ordinary meaning of the phrase “randomly selected anew” as understood by a person
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`of skill in the art is readily apparent (even to lay persons and judges). This phrase
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`simply does not require construction. Further, when examining the actual words of
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`the claim, no language remotely exists suggesting a narrow construction. Therefore,
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`no construction is required, and “randomly selected anew” should be given its
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`ordinary and customary meaning.
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`High5’s proposed construction unnecessarily seeks to limit “when” the
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`random selection occurs. In adding “for each game” into the subject phrase, High5
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`is overriding the explicit claim language. Further, in so doing, High5 fails to
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`6
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`

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`
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`consider the claim language surrounding the phrase. The claim language
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`surrounding the disputed term is often highly instructive in construing the disputed
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`term. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). The
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`surrounding claim language itself recites “for each play of the game.” Ex. 1001 at
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`7:67, 10:1-2. Therefore, it would be improper for the Board to adopt the proposed
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`construction contradicting or reading out other limitations in the claim language.
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`Likewise, High5 proposes to create an additional limitation by construing
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`“randomly” as “using a random selection algorithm” and to redefine the claimed
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`“how” when no such construction is necessary. The words “using a random
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`selection algorithm” simply are not within this phrase, and claim construction cannot
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`put them there. Rather, focusing on the claim language itself, as is required, shows
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`that the meaning of the term “randomly” is readily apparent, and requires no extra
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`words and certainly no additional limitation. High5 again here ignores the
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`surrounding language where the claim already recites that the random selection is
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`“by virtual rotation of said notional non-visible inner reel.” Ex. 1001 at 10:2-3; see
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`also, 8:1-2. Therefore, it again would be improper for the Board to adopt the
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`proposed construction contradicting or reading out other limitations in the claim
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`language.
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`For support, High5 submits an expert declaration that repeats, substantially
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`word-for-word, the attorney argument presented in the Petition for this construction,
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`7
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`
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`merely making the same legal conclusion in the form of an opinion. Paper No. 1 at
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`9. High5 (and their expert) cite generally to the ‘869 patent as whole, but fatally for
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`their position can point to no specific language in the specification or the prosecution
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`history of the ‘869 patent in support of this construction. Id.
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`Finally in attempted support of their proposed construction, High5 cites to
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`Konami’s contentions in a related litigation in Nevada. Id. However, those
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`contentions do not present any construction of “randomly selected anew,” as no
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`construction is required, but merely presents a dictionary definition of “random.”
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`High5 has failed to establish that the claim phrase “randomly selected anew” should
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`be construed other than its plain and ordinary meaning, and as such no construction
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`is required.
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`The Board should deny this Petition for the further reason that High5 has
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`failed to provide any discussion or explanation of this proposed construction in
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`relation to the asserted prior art references. Rather, High5 merely repeats the claim
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`language of the ‘869 patent and cherry picks a selection of text from the asserted
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`references with no discussion, application, or incorporation of the proposed
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`construction at all. Paper No. 1, at 19-20, 26, 30-31, 36, 41, 47, 50-51, 57. For this
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`reason, the Petition fails to satisfy the requirements of 37 C.F.R. §§ 42.104(b)(3) and
`
`(b)(4), requiring the Petition to specifically set forth how the challenged claim is to
`
`be construed, and how the construed claim is unpatentable.
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`8
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`

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`
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`B.
`
`“Notional, Non-visible Inner Reel” Is Construed as a Random
`Selection Algorithm
`
`The Board should decline to adopt the Petitioner’s proposed construction for
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`“notional, non-visible inner reel” and instead construe this term to mean “a random
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`selection algorithm.” High5 proposes to construe “notional, non-visible inner reel”
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`as a “look-up table” by importing limitations from the specification and limiting the
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`phrase to one of the disclosed embodiments. Basic rules of claim construction
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`prohibit importing such limitations. High5 misrepresents the specification and relies
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`primarily on a deeply flawed expert declaration and legal conclusion in support for
`
`its proposed construction.
`
`High5 materially misrepresents the specification of the ‘869 patent by
`
`contending that the specification states that the “notional, non-visible reel” is a
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`“look-up table.” Paper No. 1 at 10. The specification actually states, however, that
`
`the “notional, non-visible inner reel” is “in effect a look-up table.” Ex. 1001 at 4:49-
`
`57 (emphasis added).
`
`Clarifying that “[t]his ‘inner reel’ is in effect a look-up table” makes clear that
`
`the selection process for the identical symbol does not involve the use of a reel or a
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`table, necessarily or exclusively. Contrary to High5’s contentions, Examiner Shah
`
`was correct when, during prosecution of the ‘869 patent, explaining this phrase is
`
`equivalent to and describes “the effect of a random number generator in the sense of
`
`spinning an inner non-visible reel….” Ex. 1002 at 118.
`
`9
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`

`
`
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`Generally, a random selection algorithm is a computation designed to generate
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`a sequence of selections that cannot be predicted, randomly selecting from among
`
`the individual symbols based upon assigned probabilities for each such symbol. This
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`concept of random selection is clearly communicated to those having skill in the art
`
`of slot wagering games using terminology and concepts conventional in the art. See,
`
`Ex. 1002 at 118 (“It would be clear to a skilled artisan that both look-up tables and
`
`random number generators are widely well known in the art and utilized in a majority
`
`of games of chance to generate random outcomes”). This understanding is consistent
`
`with the pervasive usage of “inner reel” as set off by quotation marks, repeatedly
`
`characterized as ‘notional,’ and being described as ‘in effect a look-up table.’ Ex.
`
`2001 at ¶ 16-21. Furthermore, this understanding is evidenced and supported by the
`
`inventor’s testimony in a related litigation matter, that the “notional, non-visible
`
`inner reel” is a random generator that selects the symbols for the consecutive run.
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`Ex. 2002 at 141:6-149:2.
`
`In a further attempt to receive a tortured construction, High5 also
`
`misrepresents the Patent Owner’s remarks presented during the prosecution of the
`
`‘869 patent in a futile attempt to assert disavowal or disclaimer. Paper No. 1 at 9.
`
`Simply stated, the applicant’s reference to Yoseloff’s template was merely asserting
`
`that it did not disclose or teach the subject matter of claim 1; it in no way was a
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`disavowal or disclaimer of claim scope. Ex. 1002 at 154. As discussed further
`
`10
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`

`
`
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`below, Yoseloff employs a template to produce many different combinations of
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`game outcomes, or outcome templates, by using groupings of symbols, even though
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`the reels are mechanical and have fixed symbols on the reels. The outcome template
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`is a combination of variables, which are defined by the selection of symbols from a
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`subset of game symbols assigned to the selected template. Ex. 1005 at 6:38-41. As
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`such, the reference to Yoseloff is not a disclaimer or disavowal of claim scope as
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`High5 contends.
`
`Applicable law fully supports the conclusion that this prosecution statement
`
`does not rise to the level of disclaimer or disavowal of claim scope as relates to the
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`“notional, non-visible inner reel.” The law requires that any disclaimer must be
`
`found in a clear and unambiguous statement made by the applicant. GE Lighting
`
`Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014)
`
`(“[D]isavowal requires that the specification or prosecution history make clear that
`
`the invention does not include a particular feature.” (internal citations omitted)).
`
`In response to a non-final rejection over U.S. Patent No. 6,159,096 to
`
`Yoseloff, the Applicant argued, “Yoseloff is selecting the symbols randomly from a
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`template which does not disclose or teach the notional not-visible rotatable inner reel
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`as required by Claim 1.” Ex. 1002 at 154. Such statement does not serve as a clear
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`disavowal or disclaimer of claim scope. Rather, this statement asserts that the
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`random selection of symbols as disclosed in Yoseloff using a template does not teach
`
`11
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`

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`
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`or disclose the claimed invention as defined in claim 1. The “notional, non-visible
`
`inner reel” recited in claims 1 and 19 should be construed as a “random selection
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`algorithm.” The algorithm may involve the use of a template or other random
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`selection, because such scope has not been clearly and unambiguously disclaimed
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`or disavowed.
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`High5’s reliance on its conclusory expert declaration in support of its
`
`proposed construction of “notional, non-visible inner reel” as “a look-up table” is
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`equally ineffective and improper. Paper No. 1 at 9. Specifically, High5 cites
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`paragraphs 34-36 of the expert declaration, which merely repeats, substantially
`
`word-for-word, the attorney arguments presented in the petition, making the same
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`legal conclusion as a supposed opinion. Paper No. 1 at 9-10, Ex. 1007 at ¶ 34-36.
`
`The declaration further adds, with no explanation or discussion of relevance or
`
`application, a dictionary definition for “notional.” Id.
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`In any event, High5’s expert declaration actually contradicts High5’s own
`
`proposed construction as “a look-up table” in discussing the prior art. In addressing
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`Yoseloff, Bertram asserts: “The Applicant and the Examiner fail to understand that
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`there is no difference between a ‘notional not-visible rotatable inner reel’ [SIC] and
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`a ‘random selection of symbols’ and a ‘template’ as defined in Yoseloff.” Ex. 1013
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`at ¶ 66. Clearly, the “expert” explicitly contravenes his own previous assertion that
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`the claimed “notional, non-visible inner reel” is a “look-up table” by stating that
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`there is “no difference between a ‘notional not-visible inner reel’ [SIC] and a
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`‘random selection of symbols’ and a ‘template.’” Bertram’s analysis actually
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`supports the Patent Owner’s construction. Given these contradictions and
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`inconsistencies, the Board should give little, if any, consideration to Bertram’s
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`declaration.
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`Finally, the Petition is fatally flawed and must be denied for failure to satisfy
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`the requirements of 37 C.F.R. §§ 42.104(b)(3) and (b)(4), requiring the petition to
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`specifically set forth how the challenged claim is to be construed; and how the
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`construed claim is unpatentable. Nowhere in the asserted ground of invalidity does
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`High5 set forth how the proposed claim construction is mapped to the disclosure of
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`the asserted prior art references. Paper No. 1, at 20, 26, 31, 35, 41, 47, 51, and 57.
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`High5 relies on Nagao and Yoseloff in order to argue that the claim element
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`of the “notional, non-visible inner reel” is anticipated. Id. If High5 was correct,
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`which it is not, that the “notional, non-visible inner reel” is construed as a look-up
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`table, neither Nagao nor Yoseloff would anticipate this element because neither
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`Nagao nor Yoseloff disclose the use of a look-up table. Indeed, Nagao discloses the
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`use of a “random lottery device” consisting of a CPU and a random number
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`generation circuit in order to perform a random selection. Ex. 1003 at ¶ [0089].
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`Likewise, as recognized by both the Examiner and High5, Yoseloff does not
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`teach or suggest a look-up table, but rather discloses the use of a gaming device that
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`randomly selects a template of game outcomes and populates the template with
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`symbols assigned to the template based on the selected outcome. Ex. 1005, at
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`Abstract, 4:8-35. Nowhere in either prior art reference is a ‘look-up’ table mentioned
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`or even suggested.
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`For all of these reasons, the petition is fatally flawed and must be denied.
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`C. “Virtual Rotation” and “Virtual Spinning” is Construed as
`Execution of or Executing the Random Selection Algorithm of the
`Notional, Non-visible Inner Reel
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`The Board should decline to adopt the Petitioner’s proposed construction and
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`adopt Patent Owner’s proposed construction for “virtual rotation” and “virtual
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`spinning.” High5 proposes “selecting with a random selection algorithm for each
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`game” and Patent Owner proposes “execution” or “executing” as the proper
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`construction. High5’s construction should be rejected because it makes other claim
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`terms superfluous and again seeks to add a new “when” and “how” limitations even
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`though these are covered by other claim language.
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`First, the surrounding claim language itself recites that the “identical symbol
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`is randomly selected anew for each play of said game” in claim 1, and the “identical
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`symbol is randomly selected anew for each play of the game by virtual rotation of
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`said notional non-visible inner reel” in claim 9. There is nothing in the claims itself
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`for “virtual rotation” or “virtually spinning” to add the additional limitation “for each
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`game.” Said differently, other language in the claim provides the “when” limitation
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`and it is improper to add High5’s additional language to these terms.
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`Second, High5 attempts to add “with a random selection algorithm” which is
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`improper since this limitation is covered by other language in the claims. As
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`discussed above, the proper construction of “notional, non-visible inner reel” is as a
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`“random selection algorithm” and so such a limitation should not be imported into
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`the claim terms “virtual rotation” and “virtually spinning.”
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`Patent Owner submits that its proposal is consistent with how one of ordinary
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`skill would have understood this term based on the ‘869 patent. At the time of the
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`invention, mechanical slot machines were quite common and the terms used in the
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`Konami Patents reflect this parlance. When mechanical slots had physical reels
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`inside the machine, these inner reels would be rotated. The terms used herein,
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`including “virtual rotation,” were based on the experiences from the mechanical slot
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`machines. Since the inner reel is notional, i.e., not real, there is nothing to rotate,
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`hence, the use of “virtual,” not real. One would understand that virtual rotation is
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`the execution that causes the identical symb