Paper No. 21
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Playtika Ltd. and Playtika Holding Corp.,
`Petitioners,
`
`v.
`
`NexRF Corp.,
`Patent Owner.
`
`__________________
`
`Case IPR2021-00951
`Patent 8,747,229
`__________________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`Playtika Ltd. and Playtika Holding Corp.,
`Petitioners,
`
`v.
`
`NexRF Corp.,
`Patent Owner.
`
`__________________
`
`Case IPR2021-00951
`Patent 8,747,229
`__________________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2021-00951
`Patent 8,747,229
`
`
`TABLE OF AUTHORITIES ................................................................................... iii
`LIST OF EXHIBITS .................................................................................................. v
`I.
`INRODUCTION AND SUMMARY OF ARGUMENT ................................ 1
`II.
`THE ’229 PATENTED INVENTON .............................................................. 6
`A. Definition of a Person of Ordinary Skill in the Art ............................... 6
`B.
`Background of the Invention ................................................................. 7
`1.
`The ’229 Patent Claims and Describes a
`Centralized Gaming Server that Communicates a
`Plurality of Game Outcome Images to a Remote
`Player’s Network Access Device ................................................ 9
`III. ARGUMENT: THE BOARD SHOULD CONFIRM THE
`PATENTABILITY OF ALL CHALLENGED CLAIMS ............................. 12
`A.
`Joshi Does Not Render Claims 1, 9, and 17 Obvious
`(Ground 1) ........................................................................................... 12
`1.
`Element [1e]: Joshi’s Server Communicates Reel
`Position Numbers, Not a “plurality of images
`corresponding to the at least one random game
`outcome,” to a Network Access Device .................................... 12
`a.
`Petitioner’s Argument Misconstrues Joshi’s
`Reel Positions As a “plurality of images” ...................... 18
`In Joshi’s System, a Remote Player’s PC
`Converts Reel Positions into Images for
`Display, Not the Casino Server ...................................... 23
`Petitioner’s Argument that an HTTP Server
`“Can Be Used to Transmit Images” Fails as
`a Matter of Law .............................................................. 24
`
`b.
`
`c.
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`– i –
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`IPR2021-00951
`Patent 8,747,229
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`2.
`
`3.
`
`b.
`
`c.
`
`d.
`
`b.
`
`Element [1c]: Joshi Teaches a Decentralized
`System and Does Not Enable a “centralized
`gaming server” System ............................................................. 26
`a.
`Joshi Describes a Decentralized Gaming
`System ............................................................................. 27
`Joshi’s Prosecution History Describes a
`Decentralized System ..................................................... 29
`Joshi’s Suggestion to Have the Game
`Software “Reside in the Casino Server”
`Would Not Have Enabled a POSA to Create
`a New Centralized Gaming System
`Architecture .................................................................... 31
`The Wands Factors: Substantial
`Experimentation Required, with No
`Guidance, Working Examples, or
`Predictability For a POSA to Create a New
`Centralized System Architecture .................................... 33
`Element [1d]: Joshi Fails to Disclose, Teach, or
`Suggest “a paytable module associated with the
`centralized gaming server.” ...................................................... 42
`a.
`Joshi’s Slot Machine Determines the Payout,
`Not the Server ................................................................. 43
`Joshi Does Not Disclose the Claimed
`“paytable module” as Applied to Claims 9
`and 17 .............................................................................. 47
`Finlayson Adds Nothing to Petitioner’s Analysis
`(Ground 2) ........................................................................................... 49
`All of the Grounds in the Petition Fail with Grounds 1-2 ................... 55
`C.
`IV. CONCLUSION .............................................................................................. 55
`
`
`
`B.
`
`
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`– ii –
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`IPR2021-00951
`Patent 8,747,229
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`TABLE OF AUTHORITIES
`
`Cases
`Adidas AG v. Nike, Inc.,
`963 F.3d 1355 (Fed. Cir. 2020) .....................................................................53
`Apple Inc. v. Corephotonics, Ltd.,
`861 Fed. Appx. 443 (Fed. Cir. 2021) ............................................................32
`Arthrocare Corp. v. Smith & Nepthew, Inc.,
`406 F.3d 1365 (Fed. Cir. 2005) .....................................................................29
`Belden Inc. v. Berk–Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .................................................................3, 25
`Edwards Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322 (Fed. Cir. 2009) .....................................................................17
`Elan Pharms., Inc. v. Mayo Found.,
`346 F.3d 1051 (Fed. Cir. 2003) .....................................................................32
`Envtl. Designs, Ltd. v. Union Oil Co.,
`713 F.2d 693 (Fed. Cir. 1983) .......................................................................50
`Exacq Techs., Inc. v. JDS Techs., Inc.,
`IPR2016-00568 (PTAB June 14, 2016) ........................................................54
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................ 25, 26
`In re Wands,
`858 F.2d 731, 737 (Fed. Cir. 1988) ...............................................................32
`InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .....................................................................53
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007)................................................................................ 25, 26
`Micro-Tech Co., Ltd. v. Boston Scientific Scimed, Inc.,
`IPR2020-00185 (PTAB May 4, 2020) ..........................................................54
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`– iii –
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`Minnesota Mining and Mfg. Co. v. Chemque, Inc.,
`303 F.3d 1294 (Fed.Cir.2002) .......................................................................32
`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015) .....................................................................41
`Raytheon Techn’s v. General Electric Co.,
`993 F.3d 1374 (Fed. Cir. 2021) .................................................................4, 31
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) .....................................................................50
`Square, Inc. v. Cooper,
`IPR2014-00158, 2014 WL 2093424 (PTAB May 15, 2014) ........................52
`TF3 Ltd. v. Tre Milano, LLC,
`894 F.3d 1366 (Fed. Cir. 2018) .....................................................................17
`Winner Int’l Royalty Corp. v. Wang,
`202 F.3d 1340 (Fed. Cir. 2000) .....................................................................52
`Regulations
`37 C.F.R. § 42.65(a) .................................................................................................54
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`– iv –
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`LIST OF EXHIBITS
`
`2006
`
`Exhibit Description
`2001
`U.S. Patent No. 6,001,016 to Walker
`2002
`Prosecution File History for U.S. Pat. No. 8,747,229 to Kerr
`2003
`Prosecution File History for U.S. Pat. No. 7,470,196 to Joshi
`2004
`U.S. Patent No. 6,361,437 to Walker
`2005
`Judgment entered 7/7/2021 in NexRF Corp. v. Playtika Ltd., et al.,
`No. 3:20-cv-603-MMD-CLB (D. Nev.)
`Order dated 7/7/2021 in NexRF Corp. v. Playtika Ltd., et al., No.
`3:20-cv-603-MMD-CLB (D. Nev.)
`Declaration of Christopher Gosselin in support of Patent Owner’s
`Motion for Pro Hac Vice Admission
`Expert Declaration of Neil Spencer
`Curriculum Vitae of Neil Spencer
`Aristocrat Mk4/5XR Service Manual (excerpts)
`Slot Accounting System (“SAS”) Protocol Version 6.01 (excerpt)
`Transcript from the Deposition of Mr. Stacy Friedman, 3/8/2022
`
`2007
`
`2008
`2009
`2010
`2011
`2012
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`– v –
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`IPR2021-00951
`Patent 8,747,229
`NexRF Corp. (“Patent Owner”) submits the following Patent Owner
`
`Response to the Petition filed by Playtika Ltd. and Playtika Holding Corp.
`
`(“Petitioner”) requesting inter partes review of claims 1, 6, 7, 9, 14, 15, 17, 22, and
`
`23 of U.S. Patent No. 8,747,229 (“the ʼ229 patent”).
`
`I.
`
`INRODUCTION AND SUMMARY OF ARGUMENT
`
`The Board should uphold the patentability of NexRF’s ’229 patent claims
`
`over the challenges presented in Grounds 1 and 2, the only Grounds challenging
`
`the independent claims of the patent. Petitioner has failed to satisfy its burden of
`
`establishing, by a preponderance of evidence, that Joshi alone (Ground 1) and the
`
`combination of Joshi and Finlayson (Ground 2) disclose, teach, or suggest the
`
`recited combination of limitations in independent claims 1, 9, and 17 of the ’229
`
`patented invention. Three reasons support this conclusion, articulated below.
`
`Missing Claim Element [1e]1
`
`Joshi fails to disclose, teach or suggest “the centralized gaming server
`configured to access the memory module and communicate the
`plurality of images corresponding to the at least one random game
`outcome to the at least one network access device.”
`
`Joshi never mentions storage of images, access to images, or communication
`
`of images across a network, and thus in no way discloses, teaches, or suggests
`
`claim element [1e]. Joshi’s system was not designed to store any images or
`
`
`1 NexRF adopts Petitioner’s claim element convention for ease of reference.
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`– 1 –
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`Patent 8,747,229
`communicate any images to a network access device (e.g., a PC). Joshi’s
`
`databases, in particular its slot machine database 153, do not have fields for storing
`
`images. Instead, Joshi’s gaming machine sends “outcome data” to the casino
`
`server and on to the remote player’s PC.
`
`When the gaming machine is a slot machine, Joshi specifies that “outcome
`
`data includes the visual representation of the outcome, i.e. reel positions,” which
`
`are numbers not images. For example, slot machine reel position numbers 3-2-3
`
`(representing cherry-bar-cherry) are generated by a slot machine and transmitted to
`
`the casino server. Joshi’s casino server retransmits reel position numbers to a
`
`remote player’s PC. The PC links the reel position numbers to images stored on
`
`the PC (not on the slot machine or casino server) and converts the numbers 3-2-3
`
`into images for cherry-bar-cherry displayed on the remote player’s monitor. Given
`
`the system’s absence of image storage and Joshi’s use of the modifier “i.e.” to
`
`define the visual representation of transmitted outcome data as reel position
`
`numbers, Joshi does not “communicate the plurality of images . . . to the network
`
`access device” as recited in element [1e] of the ’229 patent.
`
`Petitioner attempts to fill the gaping hole in its obviousness argument by
`
`citing two additional references, Nielsen and Wiltshire (Pet. 29-30), which do not
`
`form part of any Ground asserted by Petitioner. See Pet. 13 (summary of
`
`Grounds). Petitioner argues that a conventional HTTP server, such as those
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`– 2 –
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`referenced in Nielsen or Wiltshire, “can be used to transmit images” (Pet. 29)
`
`(emphasis added), but “obviousness concerns whether a skilled artisan not only
`
`could have made but would have been motivated to make the combinations or
`
`modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk–
`
`Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to offer evidence
`
`of why a POSA would have been motivated by Nielsen or Wiltshire to use Joshi’s
`
`casino server in Joshi’s system to communicate a plurality of game outcome
`
`images to a remote player’s device, given that Joshi’s system was not designed to
`
`store, send, or receive such images. Petitioner’s silence is fatal to the Petition and
`
`fails as a matter of law.
`
`Missing Claim Element [1c]
`
`Joshi fails to enable “a centralized gaming server communicatively
`coupled to each of the at least one network access device.”
`
`Referring to column 11, lines 35-44, Joshi discloses:
`
`in accordance with further
`is also contemplated
`It
`embodiment of the present invention that the casino server
`140 itself (or an auxiliary server coupled to the casino server
`140) can generate random numbers and corresponding
`outcomes to be transmitted to a player via a global computer
`network. In other words, the game software for the slot
`machine 160 or other type of gaming machine would reside
`in the casino server 140. Also, the server 140 and casino
`web site 130 may be associated with a gaming establishment
`other than a casino.
`
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`The Board stated in its Institution Decision that “this disclosure . . . at least
`
`suggest[s] including all of the gaming software on the casino server, not just the
`
`software pertaining to the generation of random numbers and corresponding
`
`outcomes.” Paper 14 at 16-17. Even so, Joshi’s skimpy disclosure would not have
`
`enabled a POSA to achieve a centralized gaming server system as required by
`
`element [1c] without undue experimentation.
`
`First, the Petitioner attempts to convert Joshi’s “decentralized,” client-
`
`centric architecture into a “centralized,” system-centric architecture, as Mr.
`
`Friedman suggests in his reimagined Figure 1 of Joshi. Mr. Friedman provides no
`
`technical analysis to explain how or why a person of ordinary skill in the art in
`
`2001 would have used Joshi’s decentralized architecture in Figure 1 to implement
`
`a “centralized gaming server” system without physically connected slot machines.
`
`Mr. Freidman’s analysis relies improperly on the benefit of hindsight, gained from
`
`his reading of the ’229 patent.
`
`Second, and importantly, a standalone Section 103 reference must enable the
`
`portions of its disclosure relied upon, without undue experimentation, to support an
`
`obviousness finding. See Raytheon Techn’s v. General Electric Co., 993 F.3d
`
`1374, 1381 (Fed. Cir. 2021). Joshi fails to meet the enablement requirement.
`
`Notably, in 2001, there were significant technical challenges to moving the “game
`
`software for the slot machine” into Joshi’s casino server. Joshi offers no guidance,
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`– 4 –
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`explanation, or working examples for how to do it, at a time when online gaming
`
`systems were in their infancy. None of the techniques available to a POSA at the
`
`time would have worked without significant experimentation and uncertain results.
`
`For example, transplanting “game software” or hardware from the slot machine
`
`directly into the casino server, or using emulator software to simulate the gaming
`
`hardware, or modifying “game software” to function in a server, would all have
`
`posed serious technical challenges and impracticalities well beyond routine
`
`implementation. A POSA, moreover, would not have undertaken the very
`
`substantial effort of creating a new centralized gaming system that undermines the
`
`advantages of a decentralized system utilizing physically connected gaming
`
`machines. After all, Joshi himself insisted that physically connected gaming
`
`machines were the foundation of his invention.
`
`Missing Claim Element [1d]
`
`Joshi Fails to Disclose, Teach, or Suggest “a paytable module
`associated with the centralized gaming server.”
`
`Joshi does not disclose, teach, or suggest claim limitation [1d]. Instead,
`
`Joshi discloses a conventional paytable located in the gaming machines, which are
`
`separate and distinct from the casino server. It is undisputed that Joshi discloses
`
`only a paytable on a slot machine, not a “paytable module associated with the
`
`centralized gaming server,” as claimed in the ’229 patent. Even under Petitioner’s
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`vision of the gaming machines and casino server in Joshi combined into “one
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`– 5 –
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`unit,” Joshi does not disclose the claimed “paytable module” with respect to
`
`independent claims (9 and 17), which require a system capable of serving a
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`“plurality of network access devices.”
`
`Petitioner tries to cover the deficiency by arguing the combination of Joshi
`
`and Finlayson (Ground 2), which consists of a single conclusory paragraph in the
`
`Petition. See Pet. 33 (citing Ex. 1003, ¶73). Petitioner and Mr. Friedman offer a
`
`“solution” in search of a problem, but they never articulate a persuasive motivation
`
`to explain why or how a POSA would have used Finlayson’s system, which uses a
`
`digital electronic “ticket” to communicate with a pre-loaded Java applet, to modify
`
`Joshi. They simply pluck Finlayson’s paytable from an incompatible system and
`
`insert it into Joshi’s modified “one unit” system without ever explaining why a
`
`POSA would have been motivated to do so.
`
`Finally, because the Petition offers no other analysis of the independent
`
`claims in Grounds 3-8, the entire Petition falls with the rejection of the arguments
`
`in Grounds 1 and 2.
`
`II. THE ’229 PATENTED INVENTON
`A. Definition of a Person of Ordinary Skill in the Art
`
`In its institution decision, the Board preliminary adopted Mr. Friedman’s
`
`definition of a POSA, as someone who “would have a bachelor’s degree in
`
`computer science, electrical engineering, computer engineering, or a related
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`engineering discipline and two or more years of industry experience in the field of
`
`gaming devices and online gaming systems and development thereof, or equivalent
`
`experience, education, or both.” Paper 14 at 9.
`
`Patent Owner disagrees with the portion of Mr. Friedman’s definition of a
`
`POSA that would include two or more years of experience in “online gaming
`
`systems,” at least as Mr. Friedman appears to understand that term. Mr. Friedman
`
`appears to understand “online gaming” to include experience with video games and
`
`computer games such as “Warcraft: Orcs vs. Humans.” Ex. 1003, ¶9. In 2001, the
`
`development of online gaming systems associated with traditional land-based
`
`casinos was considered an emerging capability with a very limited number of
`
`companies and individuals having established expertise or even basic
`
`understanding of the technology. Ex. 2008, ¶52. In Mr. Spencer’s opinion, a
`
`person of ordinary skill in the art with experience in the field of gaming devices
`
`would have had two years of experience in networked gaming systems of the type
`
`used in land-based casinos for the management of data from slot machines, rather
`
`than experience with online video and computer games generally. Ex. 2008, ¶39.
`
`B.
`
`Background of the Invention
`
`In 2001, only a small percentage of the United States had access to
`
`broadband internet and online gaming had not yet been legitimized. Ex. 2008, ¶53.
`
`The gaming industry, in particular, lagged behind modern advances in technology.
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`Casinos, hesitant to embrace the Internet, did not allow remote access to their
`
`financial information, servers, or game machines. Id. at ¶52. Game
`
`manufacturers, in turn, enjoyed high profit margins on the sale of physical gaming
`
`machines, and did not license their software for other uses. Id. at ¶101. In 2001,
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`the gaming industry was content to remain firmly on the ground.
`
` Gaming machines in 2001 communicated externally using physical cables,
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`with slow data transfer rates compared with today’s technology. Ex. 2008, ¶46.
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`Standardized protocols established by the industry allowed these machines to
`
`transfer short, efficient, messages to a server, communicating code representing
`
`events such as the opening of a cabinet door, or the status of wagers won or lost.
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`Id. at ¶¶46, 56-59. Gaming machines of the time could not communicate sounds,
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`images, or other substantive data during live gameplay. Id. at ¶47.
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`The ’229 patent disposed entirely of the old terrestrial casino model, and
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`instead described fully remote, system-centric gameplay controlled by a
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`centralized server system, free from the constraints of connected gaming machines.
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`The system of the ’229 patent enables a heterogenous mix of clients to connect to a
`
`centralized gaming server, even if the clients are connected with different types of
`
`devices (Ex. 1001, 6:11-28) and/or playing different games, over a broad
`
`geographic area (id. at 4:20-22). All gameplay functions, including determining a
`
`prize, associating that prize with images, grouping players by outcome, and
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`communicating the images across a network to remote players, are controlled by a
`
`single centralized gaming server.
`
`1.
`
`The ’229 Patent Claims and Describes a Centralized
`Gaming Server that Communicates a Plurality of Game
`Outcome Images to a Remote Player’s Network Access
`Device
`
`The ’229 patent claim 1 recites a “memory module” that “stores a plurality
`
`of images corresponding to at least one game outcome.” Ex. 1001, 15:20-40
`
`(emphasis added). During game play, a “centralized gaming server [is] configured
`
`to generate at least one random game outcome,” and a “paytable module
`
`associated with the centralized gaming server” is “configured to determine one or
`
`more prizes associated with the game outcome.” The centralized gaming server is
`
`also “configured to access the memory module and communicate the plurality of
`
`images corresponding to the at least one random game outcome to the at least one
`
`network access device.” Thus, the ’229 patent claims recite a centralized server
`
`system that includes a paytable module and requires storage, access, and
`
`communication of game outcome images from the centralized server to a remote
`
`player’s network access device.
`
`The ’229 patent specification also describes the distinction between image
`
`IDs, which are alphanumeric representations of images, and the images
`
`themselves. With reference to Figure 7, below, the “paytable module 88 also
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`– 9 –
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`includes an image ID that is associated with the outcome determined by the
`
`paytable module 88.” Id. at 10:11-13; see also id. at 13:21-26.
`
`The ’229 patent specification continues:
`
`
`
`By way of example, when the game is engaged the memory
`module 92 begins the process of finding the applicable images
`associated with the image IDs in the mini-video server 94 and
`transferring the images to the fast memory module 92. Thus,
`when the gaming output is received by the memory, the images
`are stored in the fast memory module 92. In one embodiment,
`the memory module 92 then broadcasts the images to encoders
`96 and 98. . . .
`
`The appropriate encoder then receives the images and converts
`them to a format which meets the requirements for the
`appropriate network access device. By way of example, an IP
`encoder 96 encodes a plurality of JPEG images for viewing on
`a conventional web browser, and an MPEG encoder 98 encodes
`the plurality of JPEG images into an MPEG stream that is
`viewed on a television via an interactive set-top box. Id. at
`10:25-42 (emphasis added).
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`– 10 –
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`
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`In this embodiment, the system’s paytable module associates the game
`
`outcomes to image IDs, which in turn correlate to images stored in the centralized
`
`gaming server’s memory. The images, once identified, are transferred to a fast
`
`memory module while the system groups together player outputs having the same
`
`image IDs. Id. at 10:14-35. The images are then encoded and encrypted as a
`
`plurality of JPEG images for broadcast over the internet to be viewed on a remote
`
`player’s network access device(s), as further described in connection with Figure
`
`11. Id. at 13:32-39, 13:58-14:18.
`
`The ’229 patent provides other examples of how the paytable module uses
`
`image IDs to represent game outcomes. For example, in a slot machine
`
`embodiment, different prize payouts correlate to certain combinations of images
`
`such as “three cherries,” “four cherries,” “3 oranges,” or “4 oranges.” These
`
`images, not the image identifiers, are transmitted and displayed on the remote
`
`player’s network access device. Id. at 14:53-15:14.
`
`In short, the claimed invention recites the communication of a plurality of
`
`images across a network, not a numerical representation of an image.
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`– 11 –
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`Patent 8,747,229
`III. ARGUMENT: THE BOARD SHOULD CONFIRM THE
`PATENTABILITY OF ALL CHALLENGED CLAIMS
`
`A.
`
`Joshi Does Not Render Claims 1, 9, and 17 Obvious (Ground 1)
`
`1. Element [1e]: Joshi’s Server Communicates Reel Position
`Numbers, Not a “plurality of images corresponding to the at
`least one random game outcome,” to a Network Access Device
`
`Joshi never mentions storage, access, or communication of images
`
`corresponding to a game outcome across a network, and thus in no way discloses,
`
`teaches, or suggests claim element [1e].2 Specifically, Joshi’s casino server was
`
`not designed to store and communicate a plurality of images corresponding to a
`
`game outcome to a remote player’s network access device (e.g., a PC). Instead,
`
`Joshi’s slot machines transmit “outcome data” to the casino server in the form of
`
`“reel position” numbers. The casino server re-transmits the reel position numbers
`
`to a remote player’s PC, and the PC links the reel position numbers to images
`
`stored on the PC using a lookup table.
`
`In contrast, the ’229 patent clearly distinguishes between image IDs, which
`
`are numerical representations of images, and the images themselves. In the ’229
`
`patent, the software “groups the players according to the image ID” in order to
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`facilitate real-time transmission of images to many players during gameplay. Ex.
`
`
`2 The arguments in this Section apply to all three independent claims, which have
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`the same or substantially the same claim language (compare 1[e], 9[g], & 17[e]).
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`– 12 –
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`IPR2021-00951
`Patent 8,747,229
`1001, 10:14-20. After retrieving the images associated with each image ID from a
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`fast memory module, the software encodes the images into the requirements for the
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`appropriate network access device; for example, converting pictures into JPEG
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`format for a web browser, or into MPEG format for an interactive set-top box. Id.
`
`at 10:36-43. The “images” being communicated in the independent claims of the
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`’229 patent are not representative numbers, but the actual images themselves.
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`Joshi simply does not use, or teach, this type of architecture.
`
`Joshi’s ‘Field of the Invention’ characterizes the scope of the invention as
`
`relating to “gaming machines, and more particularly, to a method of transferring
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`data from a gaming establishment to a player at a remote site via a global computer
`
`network.” Ex. 1005,1:8-11 (emphasis added). Both figures in Joshi depict a
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`decentralized system reliant on physical gaming machines. Figure 1, reproduced
`
`below, depicts a set of three slot machines within the casino:
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`– 13 –
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`IPR2021-00951
`Patent 8,747,229
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`
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`The specification explains that at “least one slot machine 160 within the casino
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`communicates outcome data to the casino server 140 for transfer to the casino
`
`website 130 and to the player.” Id. at 5:39-41 (emphasis added).
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`Joshi does not describe or depict the storage, processing, or transmission of
`
`images, animations, videos, or graphics. With regard to storage, Joshi describes
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`the several databases in Data Storage Unit 150. Id. at 6:45-7:13 (Fig. 1). None of
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`those databases, including the slot machine database 153, are described as storing
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`graphical images or videos. The slot machine database includes fields for storing
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`identifying information for each slot machine, including machine type and
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`denomination, maximum coins allowed, outcome data, “and for reel games, reel
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`positions and payout,” but not images or video. Id. at 7:4-13. In short, there is no
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`database of images in Joshi’s system to transmit to a remote player.
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`– 14 –
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`IPR2021-00951
`Patent 8,747,229
`Figure 2 in Joshi depicts the general operation of the system in a flowchart.
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`Id. at 7:14-16. The second half of the process is shown in Figure 2b, below:
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`
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`Joshi Figure 2b unambiguously describes a process wherein the casino server
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`selects a game running on a gaming machine in a casino for play (step 250),
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`receives outcome data from that machine (step 255), and “proceeds to transmit, at
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`step 260, the outcome data for those selected slot machines to the casino web site
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`130 and then to the player.” Id. at 9:19-21 (emphasis added). The casino server
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`transmits the same outcome data received from the slot machines to the casino
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`website, and then on to the player. Id.; Ex. 2008, ¶74. Joshi also states that
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`“[o]utcome data shall be understood to include information including, but not
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`– 15 –
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`IPR2021-00951
`Patent 8,747,229
`limited to, all game related activity such as the position of the reels of a slot
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`machine 160, an indication of whether the player has won or lost and the
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`corresponding amount won or lost.” Ex. 1005, 5:41-45 (emphasis added). This
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`definitional sentence refers to data or information, not images, animations, videos,
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`or sounds. Mr. Friedman agrees, with respect to Figure 2b in Joshi, that a POSA
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`would not have expected “outcome data” to include images. Ex. 2012, 104:25-
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`105:11.
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`Joshi describes the transmission of outcome data (reel position numbers)
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`from the slot machine to the casino server and on to the player as follows :
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`[T]he casino server 140 searches the slot machine
`database 153 for a slot machine(s) that matches (or most
`nearly matches) the play preferences, at step 250,
`inputted by the player. The casino then selects that
`machine(s) for use. The casino server 140 may select slot
`machines that are currently in use by live players (players
`physically present at the slot machines) of those that are
`not in use by live players. The selected slot machine(s)
`randomly generates outcome data for transmission to the
`casino server 140. When generating the outcome data
`for a remote player, the slot machine does not visually
`display the outcome data or the generation of the
`outcome data on the slot machine itself. Such visual
`presentations by the slot machine itself are reserved for
`live players physically present at the slot machine.
`The casino server 140 receives the outcome data from the
`selected slot machines. Where the outcome data includes
`the visual representation of the outcome, i.e. reel
`positions, the reel positions may be received by the
`casino server 140. Furthermore, so that the casino server
`140 can identify which of the received outcome data
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`– 16 –
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`IPR2021-00951
`Patent 8,747,229
`
`corresponds to which slot machine, the slot machine
`transmits the outcome data, at step 255, along with its
`machine identification number. In alternate
`embodiments, other machine identifying information
`may be transmitted with the outcome data.
`The casino server140 proceeds to transmit, at step 260,
`the outcome data for those selected slot machines to the
`casino web site 130 and then to the player. Ex. 1005,
`8:62-9:22 (emphasis added).
`In the quote above, Joshi defines his terms such that when the gaming
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`machine is a slot machine, “the outcome data includes the visual representation of
`
`the outcome, i.e. reel positions,” which are numbers not images. The shorthand
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`“i.e.” is short for “id est” meaning “in other words, reel positions” and is
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`definitional, rather than exemplary. See TF3 Ltd. v. Tre Milano, LLC, 894 F.3d
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`1366, 1372 (Fed. Cir. 2018) (“The usage ‘i.e.’ (‘id est’ or ‘that is’), ‘signals an
`
`intent to define the word to which it refers.’”) (citing Edwards Lifesciences LLC v.
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`Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009)).
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`In Joshi’s system, the slot machine generates reel position numbers, for
`
`example 3-2-3 (representing cherry-bar-cherry) and transmits that data to the
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`casino server. Ex. 2008, ¶149. Joshi’s casino server retransmits the reel position
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`numbers 3-2-3 to a remote player’s PC, and the PC links the reel position numbers
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`to images stored on the PC for display on the remote player’s monitor as cherry-
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`bar-cherry. Id. at ¶150. In summary, Joshi’s system transmits outcome data—reel
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`position numbers—from the slot machine to the casino server and then across the
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`– 17 –
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`IPR2021-00951
`Patent 8,747,229
`internet to a remote player. Joshi does not “co
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