Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: December 6, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PLAYTIKA LTD. and PLAYTIKA HOLDING CORP,
`Petitioner,
`
`v.
`
`NEXRF CORP,
`Patent Owner.
`
`IPR2021-00951
`Patent 8,747,229 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, TIMOTHY J. GOODSON, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2021-00951
`Patent 8,747,229
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`A. Background and Summary
`
`I.
`
`INTRODUCTION
`
`On May 26, 2021, Playtika Ltd. and Playtika Holding Corp.
`
`(“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 1, 6, 7, 9, 14, 15, 17, 22, and 23 (the “challenged claims”)
`
`of U.S. Patent No. 8,747,229 (Ex. 1001, “the ’229 patent”). On September
`
`9, 2021, NexRF Corp. (“Patent Owner”) filed a Preliminary Response (Paper
`
`8, “Prelim. Resp.”). With our prior permission, on September 27, 2021,
`
`Petitioner filed a Preliminary Reply (Paper 12, “Prelim. Reply”). Also with
`
`our prior permission, on October 4, 2021, Patent Owner filed a Preliminary
`
`Sur-Reply (Paper 13, “Prelim. Sur-Reply”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition filed under [35 U.S.C. §] 311 and any
`
`response filed under [35 U.S.C. §] 313 shows that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`B. Real Parties-in-Interest
`
`Petitioner identifies as the real parties-in-interest Playtika Ltd.,
`
`Playtika Holding Corp., Caesars Interactive Entertainment LLC, 888
`
`Atlantic Limited, 888 Holdings PLC, and Scientific Games Corporation.
`
`Pet. 72–73. Patent Owner identifies itself as the real-party-in-interest. 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) (“NexRF Corp.”) as related district court
`
`litigation. Pet. 73; Paper 7, 1. Patent Owner also identifies NexRF Corp. v.
`
`DoubleU Games Co., Ltd., Case No. 2:20-cv01875 (W.D. Wash., Dec. 31,
`
`2
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`IPR2021-00951
`Patent 8,747,229
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`2020), NexRF Corp. v. Aristocrat International Pty Ltd., Case No. 2:21-cv-
`
`00798 (WD. Wash., June 11, 2021), and 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. 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
`
`rectangular box in the upper right hand corner of Figure 7). Id. at Fig. 7,
`
`
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`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
`
`player buffer 80. Ex. 1001, Fig. 7. A double headed arrow represents two-
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`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:
`
`[1p] A gaming server system configured to communicate
`1.
`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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`[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
`1, 9, 17
`1, 9, 17
`6, 7, 14, 15, 22, 23
`6, 7, 14, 15, 22, 23
`6, 14, 22
`6, 14, 22
`7, 15, 23
`7,15, 23
`
`35 U.S.C. §
`103
`103
`103
`103
`103
`103
`103
`103
`
`Reference(s)/Basis
`Joshi1
`Joshi, Finlayson2
`Joshi, Agasse3
`Joshi, Finlayson, Agasse
`Joshi, Mighdoll4
`Joshi, Finlayson, Mighdoll
`Joshi, Dobner5
`Joshi, Finlayson, Dobner
`
`A. Collateral Estoppel
`
`II. ANALYSIS
`
`Patent Owner asserts that the “Petition is impermissible because
`
`collateral estoppel (i.e., issue preclusion) prohibits the party to a judgment
`
`from relitigating the same issue on which the judgment is based.” Prelim.
`
`Resp. 29. According to Patent Owner, “[w]hen an issue of fact or law is
`
`actually litigated and determined by a valid and final judgment, and the
`
`
`1 US 7,470,196 B1, iss. Dec. 30, 2008 (Ex. 1005).
`2 AU 199880869 B2, pub. Apr. 1, 1999 (Ex. 1009).
`3 EP 0934765 A1, pub. Aug. 11, 1999 (Ex. 1006).
`4 US 5,918,013, iss. June 29, 1999 (Ex. 1007).
`5 US 6,874,084 B1, iss. Mar. 29, 2005 (Ex. 1012).
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`determination is essential to the judgment, the determination is conclusive in
`
`a subsequent action between the parties, whether on the same or a different
`
`claim.” Id. at 30 (citing Restatement (Second) of Judgments § 27 (1982)
`
`(internal citation omitted)). Patent Owner asserts further that “where a
`
`single issue is before a court and an administrative agency, preclusion also
`
`often applies.” Id. (citing B&B Hardware, 575 U.S. at 148; In re Freeman,
`
`30 F.3d 1459, 1465-69 (Fed. Cir. 1994)). Patent Owner’s assertions are
`
`premised on its contention that for purposes of issue preclusion, patent
`
`validity is a single issue, whether invalidity is asserted under § 101 or § 103.
`
`Prelim. Sur-Reply 2–3. In addition, Patent Owner asserts that even though it
`
`“has appealed the District of Nevada’s judgment,6 the pendency of an appeal
`
`has no bearing on the issue-preclusion analysis. ‘[T]he law is well settled
`
`that the pendency of an appeal has no affect on the finality or binding effect
`
`of a trial court’s holding.’” Id. (quoting SSIH Equip. S.A. v. U.S. Int’l Trade
`
`Comm’n, 718 F.2d 365, 370 (Fed. Cir. 1983)). Patent Owner reiterates these
`
`arguments in its Preliminary Sur-Reply. Prelim. Sur-Reply 2–3.
`
`Petitioner responds that “[t]he collateral estoppel argument in the
`
`preliminary response[] should be rejected because none of the required
`
`elements of collateral estoppel are met.” Prelim. Reply 1. In particular,
`
`Petitioner argues that “the issue decided by the district court (eligibility
`
`under 35 U.S.C. § 101) and the issues before the Board (anticipation and
`
`obviousness under 35 U.S.C. § 1027 and 103) are different.” Id.
`
`
`6 In NexRF Corp. the district court, in granting Petitioner’s motion to
`dismiss, determined that the ’229 patent was invalid under § 101. Ex. 2006.
`Patent Owner’s appeal of this decision is pending.
`7 We note that all challenges set forth in the Petition are based on § 103.
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`As our reviewing court has explained, collateral estoppel precludes a
`
`party from relitigating an issue if: (1) a prior action presents an identical
`
`issue; (2) the prior action actually litigated and adjudged that issue; (3) the
`
`judgment in that prior action necessarily required determination of the
`
`identical issue; and (4) the prior action featured full representation of the
`
`estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir.
`
`2018) (quoting Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640,
`
`644 (Fed. Cir. 2012)).
`
`On the record before us, we agree with Petitioner that “none of the
`
`required elements of collateral estoppel are met” in this proceeding. Prelim.
`
`Reply 1. First, in its decision granting Petitioner’s motion to dismiss, the
`
`district court held that the ’229 patent was invalid under § 101. Ex. 2006.
`
`The validity of the ’229 patent under § 101 is not and cannot be contested in
`
`a petition for inter partes review. 35 U.S.C. § 311(b). Although a possible
`
`discretionary denial and not collateral estoppel was at issue, the facts in this
`
`proceeding are similar to those in Wyze Labs, Inc. v. Sensormatic Elecs.,
`
`LLC, IPR2020-01486, Paper 14 at 6–20 (PTAB Apr. 6, 2021) (“Wyze”). In
`
`Wyze, the Board reasoned that the district court’s § 101 ruling has no overlap
`
`with the challenges in the inter partes review. Wyze, Paper 14 at 7–8. The
`
`challenges in this proceeding are based on § 103, not § 101. Thus, the prior
`
`action does not present an identical issue (1) or necessarily require a
`
`determination of the identical issue (3). Given these facts, it is clear that the
`
`prior action did not actually litigate or adjudge the § 103 issues presented in
`
`this Petition (2) and that the prior action did not feature full representation of
`
`the estopped party (4) on the issues raised here. Accordingly, collateral
`
`estoppel does not apply to this proceeding.
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`B. Constitutionality of These Proceedings
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`Patent Owner “submits that subjecting a patent effectively filed before
`
`September 16, 2012 to inter partes review (when the relevant provisions of
`
`the Leahy-Smith America Invents Act went into effect) is an impermissibly
`
`retroactive, unconstitutional taking.” Prelim. Resp. 32. Patent Owner
`
`submits further that “subjecting a pre-AIA patent to inter partes review
`
`violates the Due Process Clause of the Fifth Amendment by eviscerating the
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`Patent Owner’s substantive vested rights.” Id. at 33.
`
`We decline to consider Patent Owner’s constitutional challenges. We
`
`note that the Federal Circuit addressed the constitutional propriety of an
`
`inter partes review for a patent issued before the AIA’s enactment in
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`Celgene. See Celgene Corp. v. Peter, 931 F.3d 1342, 1362–63 (Fed. Cir.
`
`2019).
`
`C. Level of Skill in the Art
`
`Petitioner contends that a person of ordinary skill in the art at the time
`
`of the invention for the ’229 patent (a “POSITA”) “would have a bachelor’s
`
`degree in computer science, electrical engineering, computer engineering, or
`
`a related engineering discipline and two or more years of industry
`
`experience in the field of gaming devices and online gaming systems and
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`development thereof, or equivalent experience, education, or both.” Pet. 11
`
`(quoting Ex. 1001, 1:27–28, “[f]or purposes of this patent, the term ‘gaming’
`
`shall refer to either gambling and/or or gaming applications”). Patent Owner
`
`does not address the level of ordinary skill in the art. See, generally, PO
`
`Resp.
`
`On the record before us and for purposes of this decision, we agree
`
`with and adopt Petitioner’s definition of the level of ordinary skill in the art,
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`which is supported by the prior art of record.
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`D. Claim Construction
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`Because this inter partes review is based on a petition filed after
`
`November 13, 2018, we construe each claim “in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of
`
`ordinary skill in the art and the prosecution history pertaining to the patent,”
`
`the same standard used to construe the claim in a civil action. 37 C.F.R.
`
`§ 42.100(b) (2020). At this stage in the proceeding, we need only construe
`
`the claims to the extent necessary to determine whether to institute inter
`
`partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms
`
`‘that are in controversy, and only to the extent necessary to resolve the
`
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Petitioner asserts that “[n]o claim terms need to be construed by the
`
`Board at this time.” Pet. 12. Patent Owner does not address claim
`
`construction. See, generally, PO Resp. For purposes of this decision, we
`
`agree that no claim terms need to be construed at this time.
`
`E. Ground 1: Obviousness in view of Joshi
`
`Petitioner asserts that claims 1, 9, and 17 are unpatentable over Joshi.
`
`Pet. 13–42. Based on the current record and for the reasons discussed
`
`below, we find Petitioner has made an adequate showing that these claims
`
`are unpatentable over Joshi. We begin our discussion with a brief overview
`
`of Joshi.
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`1. Joshi
`
`Joshi is titled Method of Transferring Gaming Data On A Global
`
`Computer Network.” Ex. 1005, code (54). Joshi “relates generally to
`
`gaming machines and, more particularly, to a method of transferring data
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`from a gaming establishment to a player at a remote site via a global
`
`computer network.” Id. 1:8–11.
`
`Joshi’s global computing network is depicted as a block diagram
`
`shown in Figure 1 reproduced below:
`
`
`
`Ex. 1005, 2:7–9. As shown in Figure 1, Joshi’s network includes personal
`
`computer microprocessor 110 represented by a rectangle on the left side of
`
`Figure 1. Ex. 1005, Fig. 1. Below personal computer microprocessor 110 is
`
`a row three of rectangles each rectangle representing a computer peripheral.
`
`Id. The first rectangle (from the left) in this row represents monitor 116, the
`
`next or middle rectangle represents keyboard 114, and the final or right
`
`rectangle represents mouse 112. Id. Single headed arrows connecting
`
`personal computer microprocessor 110 to each of these peripherals indicates
`
`one way communication from personal computer microprocessor 110 to
`
`each of them. Id. A rectangle above personal computer microprocessor 110
`
`represents internet 120. Id. Two single headed arrows (pointing in opposite
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`11
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`directions) between personal computer microprocessor 110 and internet 120
`
`represent two-way communication between internet 120 and personal
`
`computer microprocessor 110. Id. Above internet 120 is a rectangle
`
`representing casino web site 130. Two single headed arrows (pointing in
`
`opposite directions) between internet 120 and casino web site 130 represent
`
`two-way communication between internet 120 and casino web site 130.
`
`
`
`As further shown in Figure 1, a rectangle below and to the right of
`
`casino web site 130 represents casino server 140. Ex. 1005, Fig. 1. Two
`
`single headed arrows (pointing in opposite directions) between casino web
`
`site 130 and casino server 140 indicate two-way communication between
`
`casino web site 130 and casino server 140. Id. Above casino server 140 is a
`
`row of three rectangles each rectangle representing a slot machine 160, 161,
`
`162. Id. Pairs of single headed arrows extend between each slot machine
`
`160, 161, 162 and casino server 140 indicating two-way communication
`
`between each slot machine 160, 161, 162 and casino server 140. Id.
`
`
`
`Also shown in Figure 1 below and to the right of casino server 140 is
`
`a larger square box representing data storage unit 150. Ex. 1005, Fig. 1.
`
`Inside data storage unit 150 and at the top corners of the box are two
`
`rectangular boxes. Id. The upper left box represents remote wagering
`
`database 152 and the upper right box represents slot machine database 153.
`
`Id. At the bottom of data storage unit 150 is a row of rectangular boxes. Id.
`
`The first or left box represents transaction database 156, the second or
`
`middle box represents casino player database 155, and the third or right box
`
`represents session database 154. Id.
`
`Joshi discloses “a method by which data can be transferred from a
`
`gaming establishment to a gaming player disposed in a remote location from
`
`the gaming establishment” in which “a player accesses the host gaming
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`12
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`establishment by use of a global computer network.” Ex. 1005, 2:24–28. In
`
`the embodiment shown in Figure 1, reproduced above, microprocessor 110
`
`is communicatively connected to casino server 140 and attached storage unit
`
`150 via casino website 130 which is controlled by casino server 140. Id. at
`
`5:27–30. “At least one slot machine 160 within the casino communicates
`
`outcome data to the casino server 140 for transfer to the casino web site 130
`
`and to the player.” Id. at 5:39–41. Outcome data includes all game-related
`
`activity “such as the position of the reels of a slot machine 160, an indication
`
`of whether the player has won or lost and the corresponding amount won or
`
`lost.” Id. at 5:43–45. Outcome data is “is passed from the individual slot
`
`machine 160 to the casino server 140 and subsequently to the casino web
`
`site 130 and player.” Id. at 46–48.
`
`In this embodiment “[e]ach slot machine 160 has unique identifying
`
`characteristics that allow the casino server 140 to distinguish the outcome
`
`data as being sent from a particular machine and to store and transmit that
`
`data with reference to that particular machine.” Ex. 1005, 5:49–53. “In
`
`response to the activation of the slot machine 160, the microprocessor’s
`
`random number generator generates a random number that corresponds to a
`
`given outcome,” a remote player “places a wager on the outcome of this
`
`random number generation, and “[t]he casino then transmits the outcome of
`
`the random number generation in either a predetermined format or a format
`
`selected by the player.” Id. at 6:21–29.
`
`Joshi also describes an alternative embodiment wherein “the casino
`
`server 140[] can generate random numbers and corresponding out comes to
`
`be transmitted to a player via a global computer network.” Ex. 1005, 11:37–
`
`40. In this embodiment “the game software for the slot machine 160 or
`
`other type of gaming machine would reside in the casino server 140.” Id.
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`at 40–42. This embodiment is not shown in any of Joshi’s Figures. Id. at
`
`Figs. 1–2b.
`
`2. Discussion
`
`Petitioner describes how Joshi allegedly discloses or suggests each
`
`limitation of claim 1. Pet. 21–35. Petitioner refers to this discussion for its
`
`challenge to claims 9 and 17.8 Id. at 35–42. In its response, Patent Owner
`
`argues claims 1, 9, and 17 together. Prelim. Resp. 15–23. We have
`
`reviewed Petitioner’s assertions for each limitation of claims 1, 9 and 17.
`
`We address claims 1, 9, and 17 together and in the interest of brevity we
`
`only discuss limitations argued by Patent Owner.
`
`Claim 1 requires “a paytable module associated with the centralized
`
`gaming server, the paytable module configured to determine one or more
`
`prizes associated with a game outcome.” Ex. 1001, 15:34–36. Petitioner
`
`asserts that Joshi discloses a payout structure for a slot machine that is
`
`maintained within a database record in the in an appropriate field. Pet. 32
`
`(quoting Ex. 1005, 9:66–10:7). Petitioner asserts further that “[t]he 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.” Id.
`
`(emphasis omitted). In addition, Petitioner asserts that “[a]lthough this
`
`particular excerpt refers to a payout received from a slot machine, Joshi
`
`
`8 For limitations [9b] and [9c] which differ from claim 1 in that they require
`a verification system that receives “user identification information
`associated with a player from at least one network access device” and
`verifies “the player accessing the network access device is a registered user
`by comparing the user identification information to the registration data,”
`Petitioner provides further explanation of how Joshi discloses or suggest
`these limitations. Pet. 36–38; Ex. 1001, 16:11–15. For claim 17, the
`Petition to this discussion as well as the discussion of its challenge to claim
`1. Pet. 40–42.
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`discloses that ‘the casino server 140 itself . . . can generate random numbers
`
`and corresponding outcomes to be transmitted to a player via a global
`
`computer network.” Id. (quoting Ex. 1005, 11:35–40). According to
`
`Petitioner, “a POSITA would understand that the payout structure and the
`
`payout table are located inside the casino server 140, which is the centralized
`
`gaming server.” Id. (citing Ex. 1003 ¶ 71).
`
`Petitioner also asserts that “Joshi discloses that ‘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’” and “that ‘[t]he 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.’” Id. at 32–33 (quoting Ex. 1005, 10:5–7, 13–17) (emphasis
`
`omitted). Based on these disclosures, Petitioner asserts that “[a] POSITA
`
`would understand that ‘the payout of ten coins’ corresponds to one or more
`
`prizes associated with a game outcome.” Id. at 32 (quoting Ex. 1003 ¶ 72).
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`Patent Owner responds by arguing that Joshi does not disclose the
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`claimed paytable and that Joshi does not disclose the centralized gaming
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`server. Prelim. Resp. 15–19, 23–29. We address each of these arguments in
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`turn.
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`a. Alleged Failure to Disclose the Claimed Paytable Module
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` Patent Owner responds that Joshi does not disclose9 a paytable
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`module associated with the centralized gaming server asserting that
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`
`9 We note that this challenge is based on obviousness. Accordingly, the
`question before us is not whether Joshi discloses this limitation, but rather,
`whether Joshi would have suggested this limitation to one of ordinary skill
`in the art at the time of the invention. In re Keller, 642 F.2d 413, 425
`(CCPA 1981) (“The test for obviousness is not whether . . . the claimed
`invention must be expressly suggested in any one or all of the references”).
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`“Petitioner derives the argument from its flawed, hypothetical combination
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`of Joshi’s physically connected slot machine embodiments with a casino
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`server ‘into one unit.’” Prelim. Resp. 15 (citing Pet. 14). According to
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`Patent Owner, Petitioner “presumes to combine Joshi’s slot machine payout
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`embodiment with the disclosure regarding the generation of random
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`numbers and corresponding outcomes at the casino server” and that “[t]he
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`Joshi specification does not support Petitioner’s argument, because the cited
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`Joshi embodiment says nothing about generating prizes and referencing a
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`paytable module associated with the casino server.” Id. at 15–16. Patent
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`Owner asserts further that “Petitioner’s only support is a single conclusory
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`sentence that is parroted, verbatim, by its expert Mr. Friedman.” Id. at 16
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`(citing Pet. 32; Ex. 1003 ¶ 71). Thus, according to Patent Owner,
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`“Petitioner’s unsupported conclusion that a POSA would modify Joshi to
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`match the claims of the ’229 patent suffers from hindsight bias, and should
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`be given no weight.” Id. at 16–17 (citing Apple Inc. v. Uniloc Luxembourg
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`S.A., IPR2017-02202, Paper 8 at 6 (PTAB May 1, 2018); DaVincia, LLC v.
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`Enco Sys., Inc., IPR2020-00690, Paper 9 at 27 (PTAB Sept. 16, 2020)).
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`Describing an alternative embodiment of its method, Joshi states:
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`It is also contemplated in accordance with a further
`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.
`
`Ex. 1005, 11:35–42 (emphasis added). Although this disclosure is brief, it
`
`describes a method wherein the gaming software, which resides in the slot
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`machine in the previously described embodiment, resides in the casino
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`server for this embodiment. Id. On the record before us, we understand this
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`disclosure to at least suggest including all of the gaming software on the
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`casino server, not just the software pertaining to the generation of random
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`numbers and corresponding outcomes. For this reason, we credit Mr.
`
`Friedman’s testimony that “a person of ordinary skill in the art would
`
`understand that the payout structure and the payout table are located inside
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`the casino server 140” and that “[a] person of ordinary skill in the art would
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`have understood that ‘the payout of ten coins’ corresponds to one or more
`
`prizes associated with a game outcome.” Ex. 1003 ¶¶ 71–72. Moreover, we
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`find that Uniloc and DaVincia are distinguishable from the facts in this
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`proceeding, because Joshi provides the factual basis (i.e. evidentiary
`
`support) for Mr. Freidman’s testimony. Accordingly, we do not agree at this
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`stage that Petitioner’s challenge is based on improper hindsight reasoning.
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`b. Alleged Failure to Disclose the Claimed Centralize Gaming
`Server
`Patent Owner responds that Joshi teaches a gaming system comprising
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`physically connected slot machines. Prelim. Resp. 23. This fact is not in
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`dispute. In its first embodiment Joshi discloses such a system. See Ex.
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`1005, 5:34–38, Fig. 1. Patent Owner responds further that “Joshi’s
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`specification does not disclose, teach, or suggest the claimed combination of
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`recited structures and functions associated with the ‘centralized gaming
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`server’ in the ’229 patent claims.” Id. at 27. According to Patent Owner,
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`“Joshi’s disclosure at column 11:35-40 does not somehow magically convert
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`Joshi from a decentralized slot machine system into a centralized server
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`system.” Id. at 27–28. For the reasons discussed above we disagree. On the
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`record before us, we understand Joshi’s disclosure to at least suggest moving
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`all of the gaming software to the casino server. Such modification would
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`result in a casino server that meets the centralized server limitations of
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`claim 1.
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`c. Conclusion Regarding Ground 1
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`Based on the current record and for purposes of this Decision, we
`
`determine that Petitioner has demonstrated a reasonable likelihood of
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`prevailing in showing that Joshi discloses or suggests each limitation of
`
`claim 1. Pet. 21–35. Having review Petitioner’s challenges to claims 9 and
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`17 (Pet. 35–42), which were argued together with claim 1, we likewise
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`determine that Petitioner has demonstrated a reasonable likelihood of
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`prevailing in showing that claims 9 and 17 are also unpatentable over Joshi.
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`Thus, we determine that Petitioner has demonstrated a reasonable likelihood
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`of prevailing for Ground 1.
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`F. Ground 2: Unpatentability Based on Joshi and Finlayson
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`Petitioner asserts that “[i]n the event the Patent Owner argues that
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`Joshi does not disclose ‘a paytable module associated with the centralized
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`gaming server,’ Finlayson discloses it.” Pet. 33. Specifically, Petitioner
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`asserts that “Finlayson discloses that ‘[t]he pay out, including bonus (if any
`
`and as explained below) is determined by the game server by using
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`random number(s) in a specific algorithm to determine if a win is achieved.
`
`If so, a pay table is used to determine the pay out.’” Id. (quoting Ex.
`
`1009, 6). Based on this assertion, Petitioner reasons that “[a] POSITA
`
`would have been motivated to combine Joshi and Finlayson, as explained
`
`above.” Id. (citing Pet. 10–20; Ex. 1003 ¶ 73).
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`Patent Owner responds that “[t]he asserted combination of Joshi and
`
`Finlayson in Ground 2 is nothing more than Petitioner’s hindsight-based
`
`selection of Finlayson’s ‘paytable’ tacked onto the purportedly ‘combined’
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`system of Joshi in Ground 1, without adequate motivation or explanation.”
`
`Prelim. Resp. 20. Patent Owner responds further that “Petitioner has not
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`shown that Finlayson’s Java-based structure is compatible with Joshi’s
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`system architecture or that the proposed combination would be operable”
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`and that “Petitioner and its expert also do not explain how or why a POSA
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`would use Finlayson’s server-based ticket system.” Id.
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`As we determine that Petitioner has demonstrated a reasonable
`
`likelihood of prevailing in showing that claims 1, 9, and 17 are unpatentable
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`over Joshi, we decline to further address whether or not these claims are also
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`unpatentable over the combined teachings of Joshi and Finlayson at this
`
`time.
`
`G. Grounds 3 and 4: Claims 6, 7, 14, 15, 22, and 23
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`Petitioner asserts that claims 6, 7, 14, 15, 22, and 23 are unpatentable
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`over Joshi and Agasse (Ground 3) or Joshi, Finlayson, and Agasse (Ground
`
`4). Pet. 42–55. Patent Owner does not address these Grounds. See
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`generally, Prelim. Resp. We have reviewed these challenges and, based on
`
`the current record, find Petitioner has made an a