Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Date: April 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`NEXRF CORP.,
`Patent Owner.
`
`IPR2022-00408
`Patent 8,747,229 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, FREDERICK C. LANEY, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 9
`Date: April 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`NEXRF CORP.,
`Patent Owner.
`
`IPR2022-00408
`Patent 8,747,229 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, FREDERICK C. LANEY, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. 42.122
`
`
`
`
`
`
`
`
`IPR2022-00408
`Patent 8,747,229
`
`I.
`
`INTRODUCTION
`
`A. Background
`On January 6, 2022, Aristocrat Technologies, Inc. (“Petitioner”) filed
`a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1, 6,
`7, 9, 14, 15, 17, 22, and 23 of U.S. Patent No. 8,747,229 (Ex. 1001, “the
`’229 patent”). Concurrently, Petitioner filed a Motion for Joinder seeking to
`be joined as a party to Playtika Ltd. and Playtika Holding Corp. v. NexRF
`Corp., IPR2021-00951 (“the Playtika IPR”). Paper 3 (“Mot.”). NexRF
`Corp. (“Patent Owner”) has not filed a Preliminary Response to the Petition
`and, according to Petitioner, does not oppose the Motion for Joinder.1 Ex.
`3001. We have authority and jurisdiction under 35 U.S.C. §§ 6, 314 and 37
`C.F.R. § 42.4.
`For the reasons discussed below, we determine institution of inter
`partes review is warranted on the same grounds instituted in the Playtika
`IPR, and grant Petitioner’s Motion for Joinder.
`B. Real Parties-in-Interest
`Petitioner identifies as the real parties-in-interest itself, Aristocrat
`International Pty Ltd., Big Fish Games, Inc., and Product Madness, Inc. Pet.
`72. Patent Owner identifies as the real party-in-interest itself, Michael Kerr,
`Marie Martin, David Steward, Lars Perry, and Richard Schultz. Paper 7, 1.
`C. Related Matters
`The parties identify NexRF Corp. v. Playtika Ltd., Case No. 3:20-cv-
`603 (D. Nev., Oct. 26, 2020) as related district court litigation. Pet. 73;
`Paper 7, 1. Patent Owner also identifies NexRF Corp. v. DoubleU Games
`
`
`1 We note that Patent Owner did not file an Opposition to the Motion for
`Joiner.
`
`2
`
`
`
`IPR2022-00408
`Patent 8,747,229
`Co., Ltd., Case No. 2:20-cv-01875 (W.D. Wash., Dec. 31, 2020), NexRF
`Corp. v. Aristocrat International Pty Ltd., Case No. 2:21-cv-00798 (W.D.
`Wash., June 11, 2021), NexRF Corp. v. Playtika Ltd., Case No. 21-2147
`(Lead) and 21-2219 (Member) (Fed. Cir., July 19, 2021) as related litigation.
`Paper 7, 1–2.
`D. The ’229 Patent
`The ’229 patent is titled “Gaming System Network and Method For
`Delivering Gaming Media.” Ex. 1001, code (54), 1:1–3 (emphasis omitted).
`Figure 7, reproduced below, shows a block diagram of a broadband gaming
`system. Id. at Fig. 7, 5:51.
`
`As shown in Figure 7 above, Broadband gaming system 36 (represented by
`an “L” shaped dashed box in the center of Figure 7) communicates with
`transactional system 38 represented a rectangular box on the left side of
`Figure 7) and with verification system 34 (represented by a dashed
`
`
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`IPR2022-00408
`Patent 8,747,229
`rectangular box in the upper right hand corner of Figure 7). Id. at Fig. 7,
`9:42–43. Verification system 34 includes a decryption module (not labeled,
`represented by a rectangular box) which sends data to a player verification
`(not labeled, represented by a rectangular box). Id. at Fig. 7.
`As further shown in the image above, broadband gaming system 36
`includes player buffer 80, countdown timer 82, gaming module 84 (which
`includes random number generator 86 and pay table module 88), gaming
`output module 90, memory 92, mini-video server 94, TCP/IP encoder 96,
`encryption module 100a, modulation module 102a, MPEG encoder 98,
`encryption module 100b, and modulation module 102b. Ex. 1001, Fig. 7,
`9:42–10:50. Except for mini-video server 94, which is represented by a
`cylinder, the modules in the broadband gaming system are all represented by
`rectangular boxes. Id. at Fig. 7. Countdown timer 82 is located at the upper
`left corner of the “L” shaped box representing the broadband gaming
`system. Id. Player buffer 80 is located below and to the right of countdown
`timer 82. Id. Random number generator 86 is located directly below player
`buffer 80 with pay table module 88 below it. Id. Gaming output 90 is
`located below pay table 88 with memory 92 located below it. Id. Mini-
`video server 94 is located below and to the right of memory 92 at the lower
`left corner of “L” shaped box 36. Id. Broadband gaming system 36 also
`includes two rows of three rectangular boxes to the right of memory 92. Id.
`The upper row (from left to right) shows TCP/IP encoder 96, encryption
`module 100a, and modulation module 102a. Id. The lower row (from left to
`right) shows MPEG encoder 98, encryption module 100b, and modulation
`module 102b. Id.
`Single headed arrows in the image above indicate the flow of data
`from countdown timer 82 and the unlabeled player verification module to
`
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`IPR2022-00408
`Patent 8,747,229
`player buffer 80. Ex. 1001, Fig. 7. A double headed arrow represents two-
`way communication between player buffer 80 and gaming output module 90
`and a single headed arrow indicated the flow of data from player buffer 80 to
`random number generator 86. Id. Single headed arrows also indicate the
`flow of data from random number generator 86 to pay table module 88, from
`pay table module 88, to gaming output 90, and from gaming output 90 to
`memory 92. Id. A two headed arrow indicates two-way communication
`between memory 90 and mini-video server 94. Id. Single headed arrows
`indicate the flow of data from memory 92 to TCP/IP encoder 96, from
`TCP/IP encoder 96 to encryption module 100a, encryption module 101a to
`modulation module 102a, from memory 92 to MPEG encoder 98, from
`MPEG encoder 98 to encryption module 100b, and from encryption module
`100b to modulation module 102b. Id.
`E. Illustrative Claim
`Independent challenged claim 1 is reproduced below with bracketed
`labels indicating Petitioner’s identifiers:
`1.
`[1p] A gaming server system configured to communicate
`with at least one network access device communicatively
`coupled to a network, the gaming server system comprising:
`[1a] a verification system configured to access a
`registration database having a plurality of registration data
`associated with each registered user;
`[1b] a memory module configured to store a plurality of
`images corresponding to at least one game outcome that are
`communicated to the at least one network access device;
`
`[1c] a centralized gaming server communicatively
`coupled to each of the at least one network access device, the
`centralized gaming server configured to generate at least one
`random game outcome by random generation at the centralized
`gaming server;
`
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`IPR2022-00408
`Patent 8,747,229
`[1d] a paytable module associated with the centralized
`gaming server, the paytable module configured to determine
`one or more prizes associated with a game outcome; and
`[1e] 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.
`Ex. 1001, 15:20–41.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 6, 7, 9, 14, 15, 17, 22, and 23 would
`have been unpatentable on the following grounds (Pet. 13):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1, 9, 17
`103
`Joshi2
`1, 9, 17
`103
`Joshi, Finlayson3
`6, 7, 14, 15, 22, 23
`103
`Joshi, Agasse4
`6, 7, 14, 15, 22, 23
`103
`Joshi, Finlayson, Agasse
`6, 14, 22
`103
`Joshi, Mighdoll5
`6, 14, 22
`103
`Joshi, Finlayson, Mighdoll
`7, 15, 23
`103
`Joshi, Dobner6
`7, 15, 23
`103
`Joshi, Finlayson, Dobner
`II. ANALYSIS
`A. Institution of Inter Partes Review
`Petitioner asserts that “[t]his petition is based on the same grounds of
`unpatentability as in IPR2021-00951, challenging the same claims based on
`the same prior art and evidence.” Pet. 1. Based on our independent review
`of the Petition, the petition filed in the Playtika IPR, and the evidence relied
`
`
`2 US 7,470,196 B1, iss. Dec. 30, 2008 (Ex. 1005).
`3 AU 199880869 B2, pub. Apr. 1, 1999 (Ex. 1009).
`4 EP 0934765 A1, pub. Aug. 11, 1999 (Ex. 1006).
`5 US 5,918,013, iss. June 29, 1999 (Ex. 1007).
`6 US 6,874,084 B1, iss. Mar. 29, 2005 (Ex. 1012).
`
`6
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`IPR2022-00408
`Patent 8,747,229
`on in both petitions we agree with Petitioner. Compare Pet. 3–
`72, with Playtika IPR, Paper 1 at 3–72.
`We instituted inter partes review of claims 1, 6, 7, 9, 14, 15, 17, 22,
`and 23 of the ’229 patent based on the petition filed in the Playtika IPR on
`December 6, 2021. Playtika IPR, Paper 14 (“Decision on Institution”). For
`the same reasons discussed in our Decision on Institution in the Playtika
`IPR, we find Petitioner has demonstrated a reasonable likelihood of showing
`at least one claim of the ’229 patent is unpatentable. Id. We, therefore, find
`the Petition warrants institution of inter partes review of all challenged
`claims on all grounds raised.
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which states:
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`Procedurally, a motion for joinder must be filed “no later than one
`month after the institution date of any inter partes review for which joinder
`is requested.” 37 C.F.R. § 42.122(b) (2019). Petitioner filed its Motion for
`Joinder on January 6, 2022, one month after our December 6, 2021 decision
`granting review of the challenged claims in the Playtika IPR that Petitioner
`seeks to join. Mot. 9; Playtika IPR, Paper 14.
`To ensure the just, speedy, and inexpensive resolution of every
`proceeding, a motion for joinder should (1) set forth reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
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`IPR2022-00408
`Patent 8,747,229
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`Petitioner argues Joinder is appropriate in this proceeding because the
`Petition “challenges the same claims, on the same grounds, and relies on the
`same prior art and evidence, including a declaration from the same expert
`that is identical to the declaration filed in the 951 Proceeding.” Mot. 1.
`Petitioner asserts that “[i]n the event that Aristocrat is permitted to join the
`proceedings, it will act in a limited ‘silent understudy’ role and will not
`assume an active role unless Playtika ceases to participate.” Id. Petitioner
`asserts further that “[a]llowing Aristocrat to join the proceedings will
`promote judicial efficiency in determining the patentability of the ’229
`Patent and will not prejudice Patent Owner” and that “[j]oinder will have no
`impact on the current schedule, will not add any new substantive issues, will
`not increase the burden on any deponents, and will avoid the need for
`duplicative proceedings.” Id. at 1–2.
`Upon considering Petitioner’s arguments and the evidence presented,
`we are persuaded that it is appropriate under these circumstances to join
`Petitioner to the Playtika IPR. Petitioner challenges the same claims that are
`challenged in the Playtika IPR on the same grounds using the same prior art
`and evidence. See Pet. 3–72. Petitioner asserts it will take an “understudy”
`role in the Playtika IPR and only assume a primary role should Playtika
`cease participation in the Playtika IPR. See Mot. 1. Thus, joinder to the
`Playtika IPR would result in the just, speedy, and inexpensive resolution of
`Petitioner’s challenge. See 37 C.F.R. § 42.1(b).
`
`8
`
`
`
`IPR2022-00408
`Patent 8,747,229
`Accordingly, for the reasons discussed above, we grant Petitioner’s
`Motion for Joinder and join Petitioner to the Playtika IPR.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1, 6, 7, 9, 14, 15, 17, 22, and 23 of the ’229 patent is hereby
`instituted on the grounds presented in the Petition; and
`FURTHER ORDERED that the Motion for Joinder with IPR2021-
`00951 is granted, and Petitioner is joined as a petitioner to IPR2021-00951;
`FURTHER ORDERED that Petitioner’s role in IPR2021-00951 shall
`be limited as stated by Petitioner in the Motion for Joinder unless and until
`Playtika ceases to participate in IPR2021-00951;
`FURTHER ORDERED that the case caption in IPR2021-00951 shall
`be changed to reflect joinder of Aristocrat Technologies, Inc. as a petitioner
`in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2021-00951.
`
`
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`IPR2022-00408
`Patent 8,747,229
`For PETITIONER:
`
`David Garr
`David Cho
`COVINGTON & BURLING LLP
`dgarr@cov.com
`djcho@cov.com
`
`For PATENT OWNER:
`
`Eugene LeDonne
`Brian Murphy
`Jonathan Herstoff
`HAUG PARTNERS LLP
`eledonne@haugpartners.com
`bmurphy@haugpartners.com
`jherstoff@haugpartners.com
`
`
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`IPR2022-00408
`Patent 8,747,229
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PLAYTIKA LTD., PLAYTIKA HOLDING GROUP CORP., and
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`NEXRF CORP.,
`Patent Owner.
`_____________
`
`IPR2021-009511
`Patent 8,747,229 B2
`_______________
`
`
`
`
`
`
`
`
`
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`
`
`1Aristocrat Technologies, Inc. was joined as a party to this proceeding via
`Motion for Joinder in IPR2022-00408.
`
`11
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