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 PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`TABLE OF CONTENTS
`
`B. 
`
`
`TABLE OF AUTHORITIES .................................................................................... ii 
`EXHIBIT LIST .......................................................................................................... v 
`I. 
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 1 
`II. 
`KERR’S CLAIMED INVENTON .................................................................. 4 
`III.  THE UNADULTERATED DISCLOSURE OF JOSHI ................................. 7 
`IV.  THE ’229 PROSECUTION HISTORY DISTINGUISHED THE
`CLAIMED INVENTION OVER WALKER .................................................. 9 
`V.  ARGUMENT ................................................................................................. 14 
`A.  Ground 1 – Joshi Does Not Disclose the Claimed “paytable
`module associated with the centralized gaming server” ..................... 15 
`Ground 2 – The Combination of Joshi and Finlayson Does Not
`Disclose the Claimed “paytable module associated with the
`centralized gaming server” ................................................................. 19 
`Grounds 1 and 2 – Joshi Does Not Disclose, Teach, or Suggest
`the ’229 Patent’s Claimed Combination of Structures and
`Functions Involving the “centralized gaming server” ........................ 23 
`1. 
`Joshi Teaches a Gaming System of Physically
`Connected Slot Machines ......................................................... 23 
`Joshi Does Not Disclose, Teach, or Suggest the
`Claimed Combination of Structures and Functions
`Associated with the “centralized gaming server” .................... 26 
`VI.  OTHER GROUNDS FOR DENIAL OF INSTITUTION ............................ 29 
`A. 
`Playtika Is Collaterally Estopped from Commencing IPR
`Proceedings ......................................................................................... 29 
`Inter Partes Review Is Unconstitutional .............................................. 32 
`B. 
`VII.  CONCLUSION .............................................................................................. 34 
`
`C. 
`
`2. 
`
`– i –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`TABLE OF AUTHORITIES
`
`Cases 
`Adaptics Ltd. v. Perfect Co.,
`IPR2018-01596, Paper 20 (PTAB March 6, 2019) ....................................... 29
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2017-02202, 2018 WL 2065016 (PTAB May 1, 2018) .......................... 16
`B&B Hardware, Inc. v. Hargis Indus., Inc.,
`575 U.S. 13848 (2015) .................................................................................. 30
`Celgene Corp. v. Peter,
`931 F.3d 1342 (Fed. Cir. 2019) ..................................................................... 33
`Celgene Corp. v. Peter,
`No. 19-1074, 2020 WL 3405867 (U.S. June 22, 2020) ................................ 33
`DaVincia, LLC v. Enco Sys., Inc.,
`IPR2020-00690, 2020 WL 5551710 (PTAB Sept. 16, 2020) ....................... 16
`Envtl. Designs, Ltd. v. Union Oil Co.,
`713 F.2d 693 (Fed. Cir. 1983) ....................................................................... 21
`Enzo Life Sciences, Inc. v. Becton, Dickinson & Co.,
`2020 WL 1479888 (U.S. Oct. 30, 2019) ....................................................... 33
`Exacq Techs., Inc. v. JDS Techs., Inc.,
`IPR2016-00568, Paper 7 (PTAB June 14, 2016) .......................................... 22
`In re DBC,
`545 F.3d 1373 (Fed. Cir. 2008) ..................................................................... 32
`In re Freeman,
`30 F.3d 1459 (Fed. Cir. 1994) ................................................................ 30, 31
`Micro-Tech Co., Ltd. v. Boston Scientific Scimed, Inc.,
`IPR2020-00185, Paper 11 (PTAB May 4, 2020) .......................................... 22
`NEXRF Corp. v. Playtika Ltd.,
`No. 3:20-cv-00603-MMD-CLB, 2021 WL 2874114
`(D. Nev. July 7, 2021) ................................................................................... 29
`
`– ii –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`Rudolph Techs., Inc. v. Camtek Ltd.,
`2016 WL 8668504 (D. Minn. Aug. 8, 2016) ................................................. 31
`Ruiz v. A.B. Chance Co.,
`357 F.3d 1270 (Fed. Cir. 2004) ..................................................................... 21
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) ....................................................................... 4
`SSIH Equip. S.A. v. U.S. Int’l Trade Comm’n,
`718 F.2d 365 (Fed. Cir. 1983) ....................................................................... 30
`United States v. 103 Elec. Gambling Devices,
`223 F.3d 1091 (9th Cir. 2000) ......................................................................... 5
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`469 U.S. 851 (1984)....................................................................................... 26
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ..................................................................... 26
`XpertUniverse, Inc. v. Cisco Sys., Inc.,
`No. 17-cv-03848-RS, 2018 WL 2585436
`(N.D. Cal. May 8, 2018) ................................................................................ 31
`Statutes 
`25 U.S.C. § 2701 ........................................................................................................ 4
`25 U.S.C. § 2721 ........................................................................................................ 4
`35 U.S.C. § 103 ............................................................................................. 1, 10, 21
`35 U.S.C. § 312(a)(3) ............................................................................................... 29
`35 U.S.C. § 314(a) ................................................................................................... 29
`Other Authorities 
`MPEP 2141.02.V ..................................................................................................... 26
`Regulations 
`37 C.F.R. § 42.104(b) .............................................................................................. 29
`
`– iii –
`
`

`

`IPR2021-00951
`IPR2021-00951
`U.S. Patent No. 8,747,229
`U.S. Patent No. 8,747,229
`37 C.F.R. § 42.65(a) ................................................................................................. 22
`22
`37 CAFR. § 42.65(a)scccccssccsssssessccesssssssccsssssuessccesssssesssesssusesesesssusetsesensnsetsesensssessecenen
`
`
`
`
`
`_
`
`—
`
`– iv –
`
`jv
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`EXHIBIT LIST
`
`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.)
`
`2006
`
`
`
`– v –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`Patent Owner NexRF Corp. (“Patent Owner”) submits the following Patent
`
`Owner Preliminary 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.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`Petitioner contends that U.S. Patent No. 7,470,196 (“Joshi,” Ex. 1005)
`
`invalidates the independent claims of the ’229 patent under 35 U.S.C. § 103
`
`(Grounds 1 and 2). But the system architecture of Joshi differs fundamentally
`
`from the claimed invention of the ’229 patent. Joshi connects remote gaming
`
`players to physical slot machines installed in a gaming establishment, whereas the
`
`invention in the ’229 patent eliminates physical slot machines and provides virtual
`
`gaming services through a scalable centralized gaming server. With the exception
`
`of six lines of text at the very end of the Joshi specification—tossed in without any
`
`accompanying explanation—all of Joshi’s descriptive embodiments, figures,
`
`claims, and prosecution history address Class III gaming systems that rely on game
`
`outcomes generated at physically connected slot machines.
`
`Cognizant that Joshi teaches a different system reliant on physically
`
`connected slot machines, Petitioner intentionally and improperly manipulates Joshi
`
`Figure 1 to remove all references to the slot machines. Petitioner cites only its
`
`doctored version of Figure 1, rather than the Figure 1 actually disclosed in Joshi,
`
`– 1 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`throughout the Petition. Although Petitioner argues that Joshi’s disclosure at
`
`column 11:35-40 (Ex. 1005) teaches a person of ordinary skill in the art (“POSA”)
`
`to combine the casino server and slot machines “into one unit,” Joshi says no such
`
`thing. See Pet. 14. The Petition does not cite any expert testimony in support of
`
`this foundational attorney argument. Id.
`
`Throughout the rest of the Petition, Petitioner repeatedly cites its
`
`manipulated version of Figure 1, the six lines of text from Joshi, and a conclusory
`
`expert declaration that is virtually identical to the Petition, to support its
`
`arguments. But Petitioner improperly relies on hindsight, working backward from
`
`the ’229 patent claim limitations to pick and choose selective teachings derived
`
`from a variety of sources that are taken out of context and combined without
`
`adequate explanation. Petitioner tries to jam those disparate teachings and gaming
`
`systems into Joshi’s general statement that the casino server “can generate random
`
`numbers and corresponding outcomes to be transmitted to a player …,” but
`
`Petitioner fails to provide an adequate motivation to combine them with a
`
`reasonable expectation of success.
`
`The Board should deny institution for two reasons.
`
`First, Joshi does not disclose or teach the claimed “paytable module
`
`associated with the centralized gaming server.” Instead, the paytables in Joshi
`
`always reside on the slot machines. In this respect, Joshi is cumulative of U.S. Pat.
`
`– 2 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`No. 6,001,016 (“Walker,” Ex. 2001), one of the references cited by the Examiner
`
`throughout prosecution. Joshi and Walker bear uncanny similarity to one another.
`
`Despite having different inventors and prosecuting attorneys, the language and
`
`structure of the two specifications track one another in near verbatim fashion,
`
`disclosing the same paytable embodiments.
`
`Petitioner recognizes this shortcoming and picks a secondary reference
`
`(Finlayson) in Ground 2 for the sole purpose of choosing a server-based paytable
`
`in the prior art. But Petitioner makes no effort to analyze Finlayson’s “ticket”
`
`gaming system in the context of Joshi’s disclosed gaming system or in view of the
`
`inventive combination of limitations recited in the ’229 patent claims as a whole.
`
`Petitioner devotes just one paragraph to the Finlayson reference in its explanation
`
`of the Ground. See Pet. 33. Petitioner has not shown that Finlayson’s Java-based
`
`structure is compatible with Joshi’s system architecture. Petitioner offers only a
`
`conclusory, boilerplate motivation to combine Joshi and Finlayson that fails to
`
`explain why a POSA would be motivated to combine the references. Because
`
`Petitioner’s expert declaration is a verbatim repeat of its attorney argument, it fails
`
`to provide meaningful technical support for a motivation to combine the references
`
`with a reasonable expectation of success.
`
`Second, evaluating the inventive combination of the ’229 patent claims as a
`
`whole, the six lines of cited text at the end of Joshi do not disclose or teach the
`
`– 3 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`claimed combination of the recited structures and functions associated with a
`
`“centralized gaming server.” For example, Joshi’s final “embodiment” (Ex. 1005,
`
`11:35-40) does not disclose or teach the combination of “a memory module
`
`configured to store a plurality of images corresponding to at least one game
`
`outcome,” “a paytable module associated with the centralized gaming server,” and
`
`a “centralized gaming server configured to access the memory module and
`
`communicate [a] plurality of images corresponding to the at least one random
`
`game outcome to the at least one network access device,” as recited in independent
`
`claims 1, 9, and 17. Moreover, Joshi’s final “embodiment” stands alone; a POSA
`
`cannot simply assume compatibility with other gaming machine-based
`
`architectures, including Joshi’s five physically connected slot machine
`
`embodiments.
`
`Petitioner has not demonstrated that any prior art combination of disparate
`
`embodiments and systems would work together to render obvious the claimed
`
`invention of the ’229 patent as a whole. See Sanofi-Synthelabo v. Apotex, Inc., 550
`
`F.3d 1075, 1086 (Fed. Cir. 2008) (“The determination of obviousness is made with
`
`respect to the subject matter as a whole, not separate pieces of the claim.”).
`
`II. KERR’S CLAIMED INVENTON
`
`In 1988, Congress adopted the Indian Gaming Regulatory Act (“IGRA”), 25
`
`U.S.C. § 2701-2721, which permitted Native American tribes to offer commercial
`
`– 4 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`gaming “as a means of promoting tribal economic development.” The IGRA
`
`created three classifications of gaming, later adopted by the gaming industry at
`
`large. Class I consists of traditional Native American games or social games;
`
`Class II includes bingo and games similar to bingo, and Class III comprises all
`
`other games, including slot machines of any kind. See United States v. 103 Elec.
`
`Gambling Devices, 223 F.3d 1091, 1095 (9th Cir. 2000).
`
`With the advent and growing popularity of the Internet, game operators
`
`began offering Class II and Class III gaming online. For example, in 2001, the
`
`state of Nevada signed a bill authorizing legalized gambling over the Internet. (Ex.
`
`1001, 1:53-58). Much of the prior art in this space prior to Mr. Kerr’s claimed
`
`invention, including Joshi, concerned methods for directly implementing Class III
`
`gaming over the Internet. These systems connected players on remote devices to
`
`physical slot machines located in traditional casinos, which allowed those players
`
`to play games (and gamble) from the convenience of their own home using a
`
`laptop computer, or other network access device, via the Internet.
`
`The ’229 patent went in a different direction. The ’229 patented invention
`
`abandons the traditional Class II-III architecture, and its corresponding adherence
`
`to a 1:1 ratio between a player and a physical slot machine that could not be
`
`disconnected from the system. Mr. Kerr’s claimed invention includes a
`
`verification system that provides access to a plurality of simultaneously connected
`
`– 5 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`users. By using a centralized gaming server, and bringing the functions previously
`
`associated with individual physical gaming machines, e.g. slot machines, under
`
`one umbrella, Mr. Kerr achieved unparalleled scalability. His system could offer
`
`the same platform-agnostic play experience to a wide range of network accessed
`
`players, while assuring a secure, reliable, and easily updated gaming environment.
`
`The ’229 patent has three independent claims. Claim 1, reproduced below,
`
`recites a system for a centralized gaming server capable of verifying and serving a
`
`scalable number of players, without the need for physically connected gaming
`
`machines.
`
`1. [preamble]. 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;
`[1d] a paytable module associated with the centralized
`gaming server, the paytable module configured to
`
`– 6 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`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.
`III. THE UNADULTERATED DISCLOSURE OF JOSHI
`
`All eight Grounds in the Petition rely on Joshi as the primary reference.
`
`Petitioner challenges the independent claims of the ’229 patent (claims 1, 9 and 17)
`
`based on Joshi alone (Ground 1), and the combination of Joshi and Finlayson
`
`(Ground 2). Pet. 13. Grounds 3-8 address the dependent claims. Id. at 13, 42-68.
`
`Joshi discloses six embodiments. The Petition ignores the system
`
`architecture of Joshi disclosed in detail in the first five embodiments, which
`
`account for all but six lines of the Joshi specification and all of its figures. Those
`
`five embodiments are Class III gaming systems with slot machines physically
`
`connected to a casino server, implemented over a network (the Internet) for remote
`
`gaming by network accessed players. Joshi’s stated premise is to provide “a
`
`method of transferring data from a gaming establishment to a player at a remote
`
`site” via the Internet. Ex. 1005, 1:8-11.
`
`Petitioner’s silence regarding the system architecture of Joshi is an
`
`acknowledgement that Joshi’s Class III gaming system, primary slot machine
`
`embodiment (id. at 5:10-9:59 and Figs. 1, 2a, 2b), and four alternative slot machine
`
`– 7 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`embodiments (id. at 9:60-11:34) do not disclose the ’229 patent’s “centralized
`
`gaming server configured to generate at least one random game outcome by
`
`random generation at the centralized gaming server.” In Joshi’s Class III slot
`
`machine gaming system, Joshi randomly generates game outcomes only in the slot
`
`machines, not in a centralized gaming server.
`
`Petitioner argues that Joshi discloses “combining the casino server 140 and
`
`the slot machine game software functions into one unit …” citing six lines of text
`
`in Joshi (Ex. 1005) at 11:35-40. Pet. 14. Petitioner’s asserted “combination,” from
`
`which it derives a doctored representation of Joshi Figure 1 to remove the
`
`physically connected slot machines, is an unwarranted sleight of hand. Pet. 15.
`
`
`
`Cognizant that Joshi teaches a system reliant on physical slot machines,
`
`Petitioner intentionally manipulates Figure 1 to remove all references to the slot
`
`machines, and then discusses and cites its own modified Figure 1 “combination”
`
`throughout the Petition, rather than citing Figure 1 as actually disclosed in Joshi.
`
`See Pet. 3, 15, 21, 22, 23, 28, 31, 35, 36, and 37. Joshi Figure 1 appears in the
`
`– 8 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`Petition just once (at page 15), and the impression is that Petitioner is running
`
`away from the clear depiction of connected slot machines in Joshi Figure 1,
`
`reproduced below.
`
`
`
`IV. THE ’229 PROSECUTION HISTORY DISTINGUISHED THE
`CLAIMED INVENTION OVER WALKER
`
`Patent Owner filed application No. 12/981,403 on December 29, 2010, as a
`
`continuation in a chain of applications dating back to a provisional application
`
`filed on February 6, 2001. On July 19, 2011, the Examiner issued the first
`
`substantive Office Action rejecting the application claims. The Office Action
`
`raised issues of double patenting, anticipation by Kowalick (U.S. Pat. No.
`
`– 9 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`7,107,245), and obviousness based on the combination of Kowalick and Walker
`
`(Ex. 2001, U.S. Pat. 6,001,016). Ex. 2002, 132-143.
`
`In remarks dated October 19, 2011, Patent Owner noted that “the operative
`
`game described by Kowalick relies on a player registering and moving from
`
`machine to machine.” Id. at 161 (Remarks at 9). Patent Owner further argued that
`
`in Walker, “[p]ayout table 284 resides on the slot machine,” whereas “Applicant
`
`previously claimed the paytable module residing on the server-side.” Id. at 164
`
`(Remarks at 12 (original emphasis)). Patent Owner amended the independent
`
`claims to recite several additional limitations. Id. at 154-159 (Remarks at 8).
`
`On November 3, 2011, the Examiner issued a second office action and again
`
`raised double patenting and § 103 obviousness issues based on the combination of
`
`Kowalick and Walker. Id at 173-187. Patent Owner responded with amendments
`
`and remarks dated February 1, 2012. Patent Owner rebutted the obviousness
`
`rejection by emphasizing that Walker does not teach a “centralized gaming server
`
`configured to access the memory module and communicate the plurality of images
`
`corresponding to the at least one game outcome to the valid network access
`
`device.” Id. at 210 (Remarks at 11 (original emphasis)). Patent Owner again
`
`pointed out that in Walker, outcome data originated from the connected gaming
`
`devices not the server:
`
`Walker, therefore, teaches that the gaming device (slot
`machine) may communicate a particular game outcome
`
`– 10 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`(symbolized as a reel position) to the server, but does not
`teach or suggest that the server may communicate a
`particular game outcome to the gaming device (slot
`machine). Accordingly, Walker also does not teach or
`suggest a centralized gaming server configured to access
`the memory module and communicate the plurality of
`images corresponding to the at least one game outcome
`to the valid network access device, as recited in claim 21.
`Id. (Remarks at 11 (original emphasis)).
`
`The next correspondence from the Examiner, an office action dated
`
`October 9, 2013, indicated that the “claims can be placed in condition for
`
`allowance by limiting the scope of the claimed invention to random game outcome
`
`generation by random generation at the gaming server.” Id. at 264 (Office Action
`
`at 4).
`
`In a response dated January 9, 2014, Patent Owner drafted and submitted
`
`“new independent claims includ[ing] the limitation of ‘random game outcome
`
`generation by random generation at the gaming server.’” Id. at 287 (Remarks at
`
`11). The ’229 patent duly issued on June 10, 2014.
`
`It is also worth noting that the specifications in Joshi and Walker have
`
`uncanny similarities, even appearing at times to have been written by the same
`
`hand. Both references rely on physical slot machines to communicate outcome
`
`data to a casino server, and both systems harvest this data using uniquely assigned
`
`identifying numbers. Key disclosures at the heart of how the system operates, are
`
`virtually identical across the two references. For example:
`
`– 11 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`Joshi Ex. 1005, 9:9-18
`
`Walker Ex. 2001, 10:20-30
`
`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
`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.
`Joshi, Ex. 1005, 9:9-18
`
`[T]he slot network server 4 receives
`live outcome data from the selected
`slot machines 2. Where the live
`outcome data includes the visual
`representation of the outcome, i.e. reel
`positions, the reel positions may be
`received by the server 4 one at a time
`or all three at once. Furthermore, so
`that the server 4 can identify which of
`the received outcome data corresponds
`to which slot machine 2, the slot
`machine 2 transmits the outcome data
`along with its machine ID number. In
`alternate embodiments, other machine
`identifying information may be
`transmitted with the outcome data.
`Walker, Ex. 2001, 10:20-30
`
`The casino server 140 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. In the present embodiment, the
`remote monitor 116 displays the
`outcome, such as the reel positions (or
`card values for video poker machines)
`
`[T]he slot network server 4 proceeds to
`transmit the live outcome data for those
`selected slot machines 2 to the remote
`wagering terminal . . . . In the present
`embodiment, the remote wagering
`terminal 5 displays the outcome, such
`as the reel positions (or card values for
`video poker machines) (as stored in
`
`– 12 –
`
`

`

`as well as the payout information, if
`any. Furthermore, the remote
`monitor 116 may simulate play of the
`selected slot machine based upon the
`received outcome data by generating a
`graphical display of spinning reels in
`the same manner as a conventional slot
`machine. In alternate embodiments
`employing gaming devices other than
`slot machines, the remote
`monitor 116 similarly may simulate
`play, such as the graphical dealing of
`cards or spinning of a roulette wheel.
`
`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`field 4467), as well as the payout
`information (as stored in field 4468), if
`any. . . . . Furthermore, the remote
`wagering terminal 5 simulates play of
`the selected slot machine 2 based upon
`the received live outcome by
`generating a graphical display of
`spinning reels in the same manner as a
`conventional slot machine 2. In
`alternate embodiments employing
`gaming devices other than slot
`machines 2, the remote wagering
`terminal 5 similarly simulates play,
`such as the graphical dealing of cards
`or spinning of a roulette wheel.
`
`The similarity between Joshi and Walker is clearly evident in the three
`
`passages cited by Petitioner (Pet. 32-33) as evidence for the existence of the
`
`“paytable module” limitation, as can be seen in the side-by-side comparison below:
`
`Joshi Ex. 1005, 9:66-10:7 (Pet. 32)
`The casino server 140 generates the
`accurate visual representation of the
`outcome by accessing the slot machine
`database 153 and, based upon the
`machine identification information
`transmitted with the payout, the record
`
`Walker Ex. 2001, 11:43-48
`The server 4 generates the accurate
`visual representation of the outcome by
`accessing the slot machine database
`449 and, based upon the machine ID
`number transmitted with the payout
`4497, the record for that slot machine
`
`– 13 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`
`2. A payout structure for that particular
`slot machine 2 is maintained within the
`record in field 4495.
`
`Walker, Ex. 2001, 11:46-50
`A payout structure for that particular
`slot machine 2 is maintained within the
`record in field 4495. The payout
`structure, like the payout table 284 in
`the slot machine 2, correlates the
`payout received from slot machine 2 to
`a possible set of reel positions
`Walker, Ex. 2001, 11:57-58, 62-64
`The server 4, by [] accessing the
`payout structure, correlates the payout
`of ten coins back into a set of reel
`positions. . . . Thus, the server 4
`generates a visual representation of the
`outcome of the slot machine . . . .
`
`for that slot machine. A payout
`structure for that particular slot
`machine is maintained within the
`record in the appropriate field.
`Joshi, Ex. 1005, 10:3-7 (Pet. 32)
`A payout structure for that particular
`slot machine is maintained within the
`record in the appropriate field. The
`payout structure, like the payout table
`in the slot machine, correlates the
`payout received from the slot machine
`to a possible set of reel positions.
` Joshi, Ex. 1005, 10:13-17 (Pet. 33)
`The casino server 140, by accessing the
`payout structure, correlates the payout
`of ten coins back into a set of reel
`positions and generates a visual
`representation of the outcome of the
`slot machine . . . .
`
`
`V. ARGUMENT
`
`The Petition presents eight grounds. Ground 1 relies on Joshi alone, while
`
`Ground 2, which Petitioner briefs together with Ground 1, combines Joshi and
`
`Finlayson. The only reference to Finlayson appears on page 33 of the petition as
`
`an alternative argument for claim limitation [1d]. With the exception of this one
`
`– 14 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`paragraph, the entirety of Grounds 1 and 2—the only Grounds challenging the
`
`independent claims of the ’229 patent—rely on Joshi alone.
`
`The other Grounds (3-8) combine Grounds 1 and 2 with additional
`
`references to challenge certain dependent claims. Because Joshi fails to disclose
`
`certain key limitations recited in the independent ’229 patent claims 1, 9, and 17,
`
`and because Petitioner fails to provide anything more than conclusory statements
`
`of an alleged motivation to combine Joshi with Finlayson, Grounds 1-8 fail to raise
`
`a reasonable likelihood of unpatentability.
`
`A. Ground 1 – Joshi Does Not Disclose the Claimed “paytable
`module associated with the centralized gaming server”
`
`Petitioner argues that “Joshi discloses a gaming server system comprising a
`
`paytable module associated with the centralized gaming server.” Pet. 32. Joshi
`
`does not, in fact, disclose this claim limitation recited in independent claims 1, 9
`
`and 17 of the ’229 patent. Petitioner derives the argument from its flawed,
`
`hypothetical combination of Joshi’s physically connected slot machine
`
`embodiments with a casino server “into one unit.” Pet. 14.
`
`First, Petitioner cites to a passage from Joshi that Petitioner admits “refers to
`
`a payout received from a slot machine.” Pet. 32 (citing Ex. 1005, 9:66-10:7).
`
`Petitioner then presumes to combine Joshi’s slot machine payout embodiment with
`
`the disclosure regarding the generation of random numbers and corresponding
`
`outcomes at the casino server, in an effort to satisfy the “paytable module” claim
`
`– 15 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`limitation of the ’229 patent. Pet. 31-32 (citing modified Joshi Fig. 1, Ex. 1005,
`
`11:35-42). The Joshi specification does not support Petitioner’s argument, because
`
`the cited Joshi embodiment says nothing about generating prizes and referencing a
`
`paytable module associated with the casino server. Petitioner does not even cite
`
`any expert testimony in support of this hindsight-driven combination of Joshi’s
`
`sixth embodiment with Joshi’s slot machine embodiment. See Pet. 14-16.
`
`Petitioner’s only support is a single conclusory sentence that is parroted,
`
`verbatim, by its expert Mr. Friedman. Pet. 32 (citing Ex. 1003 ¶71). Mr. Friedman
`
`provides no analysis to explain how or why a POSA would understand that the
`
`“payout table,” which resides in the slot machine (as Petitioner admits, see Ex.
`
`1005, 10:5-7), would be located in the casino server in Joshi’s connected slot
`
`machine system. Petitioner’s unsupported conclusion that a POSA would modify
`
`Joshi to match the claims of the ’229 patent suffers from hindsight bias, and should
`
`be given no weight. See, e.g., Apple Inc. v. Uniloc Luxembourg S.A., IPR2017-
`
`02202, 2018 WL 2065016, at *6 (PTAB May 1, 2018) (declining to give weight to
`
`an expert declaration that “consists only of an unsupported verbatim statement” in
`
`support of petitioner’s argument, and denying institution of IPR); see also
`
`DaVincia, LLC v. Enco Sys., Inc., IPR2020-00690, 2020 WL 5551710, at *27
`
`(PTAB Sept. 16, 2020) (declining to give weight to a declaration where the
`
`– 16 –
`
`

`

`IPR2021-00951
`U.S. Patent No. 8,747,229
`declarant “identifies no factual basis for his conclusory