UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZYNGA INC.,
`
`Petitioner.
`v.
`
`IGT,
`
`Patent Owner.
`
`
`
`
`U.S. Patent No. 8,795,064
`
`
`Inter Partes Review Case No.: IPR2022-00200
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

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`TABLE OF CONTENTS
`
`IPR2022-00200
`
`V.
`
`B.
`
`C.
`
`Page
`Table of Authorities .................................................................................................. ii
`Exhibit List ............................................................................................................... iii
`I.
`Introduction ...................................................................................................... 1
`II.
`The ’064 Patent ................................................................................................ 1
`A.
`Summary of ‘064 Patent’s Disclosure ................................................... 1
`B.
`Prosecution History ............................................................................... 4
`C.
`Claims 7 and 15 are Canceled ............................................................... 4
`III. Legal Standards ............................................................................................... 4
`IV. Review of Prior Art ......................................................................................... 6
`A. Aristocrat ............................................................................................... 6
`B.
`Boushy ................................................................................................. 10
`Claim Constructions ...................................................................................... 10
`A.
`Elements (c) and (d) Define Operations that Must be Performed
`When Their Predicates are Met ........................................................... 10
`“Message” ........................................................................................... 13
`B.
`VI. Level of Skill ................................................................................................. 13
`VII. Argument ....................................................................................................... 14
`A.
`The Petition’s Indiscriminate Mix-and-Match Invalidity Challenge
`is Improper. ......................................................................................... 16
`The Petition Fails to Show that Steps (c)(ii) and (d)(ii) are
`Performed when their Respective Predicates are Met. ....................... 18
`The Petition Fails to Show that Aristocrat Operates Using Tracked
`Information “Associated with [an] Identified Player.” ....................... 27
`VIII. Conclusion ..................................................................................................... 35
`
`
`
`
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`
`i
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`

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`IPR2022-00200
`
`TABLE OF AUTHORITIES
`
`Statutes
`35 U.S.C. § 103 .......................................................................................................... 4
`35 U.S.C. § 312 ........................................................................................................ 17
`Agency Decisions
`Med-El Elektromedizinische Geräte Ges. M.B.H., v. Advanced Bionics AG,
`IPR2020-01016, Paper 42 (PTAB March 31, 2022). .......................................... 14
`Regulations
`37 C.F.R. § 42.104 ................................................................................................... 16
`
`
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`
`ii
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`

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`IPR2022-00200
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`EXHIBIT LIST
`
`Exhibit
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Description
`First Amended Complaint for Patent Infringement, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 7.
`
`Joint Notice of Agreed Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 38.
`
`Joint Notice Regarding Extension of Deadlines, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 55.
`
`Claim Construction Order, IGT et al. v. Zynga Inc., No. 6:21-cv-
`00331-ADA (W.D. Tex.), Dkt. 64.
`
`Britain Eakin, West Texas Judge Says He Can Move Faster Than
`PTAB, LAW360 (Nov. 27, 2019), https://www.law360.com/-
`articles/1224105/west-texas-judge-says-he-can-move-faster-than-
`ptab.
`
`Ryan Davis, Albright Says He’ll Very Rarely put Cases On Hold For
`PTAB, LAW360 (May 11, 2021), https://www.law360.com/–
`articles/1381597/albright-says-he-ll- very-rarely-put-cases-on-hold-
`for-ptab.
`
`Move Over Marshall, There’s a New Sheriff in Town―The Rise of
`Waco and the Western District of Texas, THE NATIONAL LAW
`REVIEW (Feb. 28, 2022), https://www.natlawreview.com/article/-
`move-over-marshall-there-s-new-sheriff-town-rise-waco-and-
`western-district-texas
`
`Q1 in Review: New Uncertainties Spark Further Change as Reform
`Momentum Builds, RPX (Apr. 30, 2019), https://www.rpxcorp.com-
`/intelligence/blog/q1-in-review-new-uncertainties-spark-further-
`change-as-reform-momentum-builds.
`
`Docket Report, IGT et al. v. Zynga Inc., No. 6:21-cv-00331- ADA
`(W.D. Tex.) (generated March 9, 2022).
`
`Order on Discovery, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-
`ADA (W.D. Tex.), Dkt. 61.
`
`
`
`iii
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`IPR2022-00200
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`Exhibit
`
`2011
`
`Description
`Defendant’s Preliminary Invalidity Contentions, IGT et al. v. Zynga
`Inc., No. 6:21-cv-00331-ADA (W.D. Tex.) (served Sept. 1, 2021).
`
`2012
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`2013
`
`2014
`
`2015
`
`2016
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`2017
`
`2018
`
`2019
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`2020
`
`2021
`
`Defendant’s Opposed Motion to Transfer Venue to the Austin
`Division of the Western District of Texas, IGT et al. v. Zynga Inc.,
`No. 6:21-cv-00331-ADA (W.D. Tex.), Dkt. 63.
`
`ORDER GRANTING INTRA-DISTRICT TRANSFER OF VENUE,
`Datascape, Ltd. v. Dell Techs. Inc., No. 6:19-cv-00129-ADA
`
`E-mail to counsel re: IGT et al v. ZYNGA INC. (6:21-cv-00331-
`ADA) - Preliminary Constructions (Jan. 4, 2022).
`
`Docket Sheet, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.) (Apr. 18, 2022).
`
`Unopposed Motion to Withdraw Defendants Motion for Judgment on
`the Pleadings, IGT et al. v. Zynga Inc., No. 6:21-cv- 00331-ADA
`(W.D. Tex.), Dkt. 68.
`
`Defendant’s Final Invalidity Contentions, IGT et al. v. Zynga Inc.,
`No. 6:21-cv- 00331-ADA (W.D. Tex.).
`
`Declaration of Stacy Friedman
`
`Curriculum Vita of Stacy Friedman
`
`DICTIONARY OF COMPUTER AND INTERNET TERMS, 9th ed., pp. 256-7
`Barron’s (2006).
`
`IEEE STANDARD DICTIONARY OF ELECTRICAL AND ELECTRONICS
`TERMS, 6th ed., p. 500 (1996).
`
`2022
`
`Disclaimer in Patent Under 37 C.F.R. § 1.321(a)
`
`
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`iv
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`

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`IPR2022-00200
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`I.
`
`INTRODUCTION
`Patent Owner, IGT, respectfully requests that the Board reject the invalidity
`
`grounds proposed against claims 1-18 (the “Challenged Claims”) of U.S. Patent No.
`
`8,795,064 (the “’064 Patent”) because the prior art does not teach the subject matter
`
`of the Challenged Claims. An ordinarily-skilled worker, who reads the claims from
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`the perspective of a computer scientist, would not agree that the prior art teaches
`
`outputting multiple messages when the predicates of the Challenged Claims’ “if”
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`elements are met or that the prior art teaches outputting messages based on
`
`information tracked in association with an identified player. Moreover, the Board
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`should reject the proposed grounds because, as the Petition acknowledges, they
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`haphazardly cite to a of slew messages disclosed by the primary Aristocrat reference
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`in an indiscriminate mix-and-match fashion.
`
`II. THE ’064 PATENT
`A.
`Summary of ‘064 Patent’s Disclosure
`The ’064 Patent is a member of a large patent family directed to management
`
`of messaging at a gaming machine. See Ex. 1001, col. 1:5-2:27 (describing family).
`
`The “game machine [may] provide relevant information at appropriate times, and/or
`
`in response to appropriate events, to players using the game machine.” Id., Abstract.
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`The gaming machine is a “dynamic and flexible system adapted to interact with
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`1
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`IPR2022-00200
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`players on an individual basis” by providing “messages at a game machine [that]
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`enhance[] a player's overall gaming experience by selectively outputting helpful and
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`desirable messages to players while minimizing interference with the players'
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`gaming and to avoid overwhelming players with unsolicited, unwanted, and/or
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`irrelevant messages.” Id. The ’064 Patent and its brethren each claim different
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`aspects of the disclosed system.
`
`FIG. 3 is a block diagram of a gaming machine controller 102:
`
`
`’064 Patent (Ex. 1001), FIG. 3 (annotated)
`
`Id. col. 13:25-33. As is relevant to the ’064 Patent, the controller 102 tracks various
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`types of player information and stores it in a player database 308 (blue). Id. col.
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`17:48-52. The controller 102 maintains message databases 310-320 (purple) for
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`promotional messages, instructive messages, status messages, and the like. Id. col.
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`2
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`IPR2022-00200
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`14:38-49; see generally, id. FIGS. 5-10 and cols. 18:15-20:64. The controller 102
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`maintains a trigger condition database 322 (yellow) that stores data defining “a
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`condition that, upon its occurrence or satisfaction, results in a controller outputting
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`a message at a game machine.” Id. col. 10:35:37. The controller 102 further
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`maintains a message queue database 328 (orange) that may “control[] the order that
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`messages are output to a player.” Id. col. 22:29-38.
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`A trigger condition is “useful in determining when to output a message to a
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`player.” Id. col. 21:11-12. An exemplary trigger condition database 322A is shown
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`in FIG. 11A:
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`’064 Patent (Ex. 1001), FIG. 11A (annotated)
`
`
`
`In this example, the database’s trigger conditions 1100A define when messages are
`
`to be output from the system. The database 328 also identifies, for each trigger
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`condition, what message(s) are to be output. In one example, highlighted in orange,
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`3
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`IPR2022-00200
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`a common trigger condition causes several queued messages to be output from the
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`system. Messages may be placed in the message queue database 328 based on a
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`variety of factors, including tracked player information. Id. col. 58:33-59:59.
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`Different types of tracked information may cause different messages to be output.
`
`B.
`Prosecution History
`The ’064 Patent was filed as application no. 13/680,852 in November 2012.
`
`The Challenged Claims were allowed on a first office action.
`
`C. Claims 7 and 15 are Canceled
`Dependent claims 7 and 15 are canceled herewith. Ex. 2022.
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`III. LEGAL STANDARDS
`A claim is obvious when “the differences between the subject matter sought
`
`to be patented and the prior art are such that the subject matter as a whole would
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`have been obvious at the time the invention was made to a person having ordinary
`
`skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
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`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level of
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`ordinary skill in the art; and (4) when available, objective evidence such as
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`commercial success, long-felt but unsolved needs, and failure of others. Graham v.
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`4
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`IPR2022-00200
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`John Deere Co., 383 U.S. 1, 17-18 (1966); see KSR Int’l Co. v. Teleflex Inc., 550
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`U.S. 398, 407 (2007) (the Graham “factors continue to define the inquiry that
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`controls.”).
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`Obviousness is not shown merely by showing that the prior art includes
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`separate references covering separate limitations of a challenged claim. Forest
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`Labs., LLC v. Sigmapharm Labs., LLC, 918 F.3d 928, 934 (Fed. Cir. 2019); Unigene
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`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, it must be
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`shown that a person of ordinary skill at the time of the invention “would have
`
`selected and combined those prior art elements in the normal course of research and
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`development to yield the claimed invention.” Id. As a corollary, a reference
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`“teach[es] away when a person of ordinary skill … would be led in a direction
`
`divergent from the path that was taken by the applicant.” Polaris Indus., Inc. v.
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`Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018).
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`In an IPR, the Board must remain aware “of the distortion caused by hindsight
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`bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550
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`U.S. at 421. “[A] court must view the prior art without reading into that art the
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`patent’s teachings.” Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1564
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`(Fed. Cir. 1984). For this reason, the obviousness test “focuses on evidence before
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`the time of invention.” In re Translogic Tech., Inc., 504 F.3d 1249, 1260 (Fed. Cir.
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`2007).
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`5
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`IPR2022-00200
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`IV. REVIEW OF PRIOR ART
`A. Aristocrat
`Aristocrat discloses a control system for a slot machine that communicates
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`information to a player via an animated interface character, “Mr. Cashman:”
`
`
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`Aristocrat (Ex. 1004), FIGS. 6, 13, 18
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`
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`Ex. 1004 at 2:24-28. The character may “indicate to the player any game and feature
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`prizes won as a result of playing the respective game.” Id. It also may “randomly
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`award[] a game feature specific to the game being played.” Id. at 4:5-7. The
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`character may be triggered by, among other things, “one or more specific game
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`states,” “one or more specific console states,” or “specific player activity.” Id. at
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`11:8-16. Overall, Aristocrat’s goal is to “add interest to the games provided on such
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`machines in order to keep the players amused and therefore willing to continue
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`paying the game.” Id. at 1:7-12.
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`6
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`IPR2022-00200
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`Zynga’s Petition focuses on messages that are output from the machine. See
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`Pet. at 18 (bonus award message), 33-41 (more messages). Aristocrat’s control
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`system employs a state machine that determines when messages are output to
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`players:
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`Aristocrat (Ex. 1004), FIG. 12 (annotated)
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`
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`An amorphous mode 80 (yellow) is a “normal or reset state for the state machine” in
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`which an “interface character 50 [is] either not being present or being present in an
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`amorphous form 50 that does not obstruct operation of the main game.” Ex. 1004 at
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`23:32-35. The control system exits the amorphous mode 80 to one of two other
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`states: An analysis mode 81 (orange), where the state machine “conduct[s] an
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`analysis of console status to determine of any actions are required” (id. at 24:4-7),
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`IPR2022-00200
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`or an attendant mode 84 (gray) that “is only entered when an attendant enters a
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`special code or uses a special key” (id. at 25:27-29).1 From the analysis mode 81
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`(orange arrows), the control system 81 transitions to either an assistant mode 82
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`(light blue), an award mode 83 (brown), or a promotional mode 85 (purple) and,
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`thereafter, returns to the amorphous mode 80. Id. FIG. 12. Aristocrat does not
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`disclose that the control system transitions, for example, from the award mode 83 to
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`the promotional mode 85 or vice versa.
`
`The state machine transitions to the assistant mode 82 (light blue) when it
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`determines that “the player is playing in an unusual manner or … the player has
`
`delayed in making a decision.” Id. at 24:26-30. In the assistant mode 82, the
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`interface character morphs into a suitable form that provides help to the player or to
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`“offer suggestions on optimizing returns if the player is rejecting high return options
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`or not maximizing their chances of progressive prizes.” Id. at 24:31-34. “Once the
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`advice has been offered, the state machine will return to the amorphous mode” (light
`
`blue arrow). Id.
`
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`1 The Petition makes no reference to Aristocrat’s attendant mode 84 and, therefore,
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`it is not addressed further on this Response.
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`8
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`IPR2022-00200
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`The state machine may transition to the award mode 83 (brown) to make an
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`award to a winning player or, at times, to a losing player. Id. at 24:13-18, 24:35-
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`25:12. In this mode, “the interface character will morph to a new character
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`depending upon the type of award.” Id. at 24:35-36. For example, a losing streak
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`may result in an award of bonus games. Id. at 17:1-16, 30:20-23. “Once the award
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`is completed, the state machine will again return to the Amorphous mode 80” (brown
`
`arrow). Id. at 25:17-18.
`
`The state machine may transition to the promotional mode 85 (purple) to
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`encourage play pattern modification, for example, “if [the] player is detected as
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`playing slowly or betting in increments that do not optimize their chance of
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`winning.” Id. at 24:19-21. “When in the promotional mode 85, the character will
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`morph into a form suitable for the message being delivered.” Id. at 25:19-20. “Once
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`a single promotional message has been given, the state machine will undergo a
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`transition to Amorphous mode 80” (purple arrow). Id. at 25:25-26.
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`Beyond its role in the state machine of FIG. 12, Aristocrat discloses that Mr.
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`Cashman may alter gameplay at a slot machine. For example, Mr. Cashman may:
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` nudge a wheel into a winning position (id. at 17:23-25),
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` spin a random wheel (id. at 27:3-12);
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` award a random bonus prize (id. at 27:27-31); and
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`9
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`IPR2022-00200
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` generate wild symbols for games (id. at 27:32-28:2).
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`Aristocrat discloses these features are triggered “random[ly] and weighted by the
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`desired hit rate of the feature.” Id. at 26:3-23. The Petition does not assert that these
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`game features are relevant to the proffered invalidity ground.
`
`B.
`Boushy
`Boushy describes a customer tracking and recognition system for affiliated
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`casino properties. Ex. 1005, Abstract. Boushy describes a system in which customer
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`data is accumulated from a variety of casino properties that participate in an affiliate
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`program. Id. col. 2:5-23. Boushy teaches to provide the accumulated data to
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`employees of the affiliated casinos for use in extending comps to the customers when
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`they play in the employees’ casinos. Id. col. 2:50-3:3. Boushy does not disclose
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`(and the Petition does not assert) that any such data is to be used in automated
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`messaging provided to players at casino games.
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`V. CLAIM CONSTRUCTIONS
`A. Elements (c) and (d) Define Operations that Must be Performed
`When Their Predicates are Met
`Although the Petition purports to apply the plain and ordinary meaning of all
`
`claim terms (Pet. at 14-15), it fails to acknowledge that elements (c) and (d) of
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`independent claims 1 and 9 recite actions (sub-steps (i)-(ii)) that are performed when
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`the predicates of those elements are met. Using claim 1 as an example, it recites:
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`10
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`IPR2022-00200
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`(c) if [1] a first set of information associated with the identified player is
`tracked and [2] a message trigger condition occurs in association with
`the identified player:
`(i) determine, based at least in part on the first set of tracked
`information, a first message, and
`(ii) output the determined first message to the identified player, and
`(d) if [1] a second, different set of information associated with the
`identified player is tracked and [2] the message trigger condition occurs
`in association with the identified player:
`(i) determine, based at least in part on the second set of tracked
`information, a second, different message, and
`(ii) output the determined second message to the identified player.
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`Ex. 1001, claim 1 (blue annotations added); see also id. claim 9. These ordinary
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`recitations would be well understood by a POSITA—a computer scientist with two
`
`years professional experience in the gaming industry. Pet. at 20. A POSITA would
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`recognize that steps (c)(i) & (ii) are performed when the predicates specified in
`
`element (c)’s if clause are met and that steps (d)(i) & (ii) are performed when the
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`predicates recited in element (d)’s if clause are met. Ex. 2018 ¶¶ 70-71; see also Ex.
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`2020 (if: a “keyword … that specifies that different actions are to be performed
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`depending on the result of some test”), Ex. 2021 (if: a “branch that defines a
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`condition and specifies the processing to be performed if the condition is met.”). A
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`11
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`IPR2022-00200
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`POSITA further would understand that, when both if clauses are met, steps (c)(i)-
`
`(ii) and (d)(i)(ii) all are performed. Id.
`
`The if clauses of elements (c) and (d) both share one condition in common:
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`“a message trigger condition occurs in association with the identified player”
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`(clauses (c)[2] and (d)[2] above). Each if clause recites another condition that is
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`unique: A “first set of information associated with the identified player is tracked”
`
`(clause (c)[1]), and “a second, different set of information associated with the
`
`identified player is tracked” (clause (d)[1]). Thus, by the claim’s plain language,
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`when a “message trigger condition occurs,” a system that tracks both “a first set of
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`information associated with the identified player” and “a second, different set of
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`information associated with the identified player” outputs two determined messages
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`to the identified player, as recited in elements (c)(ii) and (d)(ii). This interpretation
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`is mandated by the plain meaning of the claim language.
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`The Petition fails to acknowledge this requirement of the claims. Indeed, the
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`Petition’s entire invalidity challenge relies on an incorrect claim interpretation,
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`namely, that it is sufficient to find prior art where, “[i]f a certain message trigger
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`condition occurs, [a] system outputs one of a first or second message to a player,
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`depending on the information being tracked.” Pet. at 1 (emphasis added). To the
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`contrary, the claims’ plain language requires two different messages to be output to
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`a player when the predicates recited in elements (c) and (d) both are met.
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`12
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`IPR2022-00200
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`B.
`“Message”
`The Decision to Institute construed the term “message” to encompass “any
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`communication, in any form, intended to be presented to a player or other party”
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`including presentation in a combination “of different forms, including text, audio,
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`video, and images.” Dec. Inst. at 19. Although Patent Owner respectfully disagrees
`
`with this construction, the issue is moot because the patentability grounds identified
`
`in this Petition apply even when the Board applies its construction of “message.”
`
`VI. LEVEL OF SKILL
`The Board defined the level of ordinary skill in the art as follows:
`
`A POSITA in the technology field of the ’064 patent would have had a
`bachelor’s degree in computer science or a similar discipline and 2 years
`of professional programming experience in the gaming software industry.
`This POSITA would be aware of and generally knowledgeable about
`casino gaming systems as of the priority date for the ’064 patent, including
`the networks connecting various casino gaming machines and the manner
`in which casino gaming machines tracked player information and delivered
`messages to players.
`
`Dec. Inst. at 15-16. This definition should be revised to exclude reference to
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`“track[ing] player information” because it infuses within the definition a hindsight
`
`bias toward the claimed subject matter. The Board has rejected such goal-oriented
`
`definitions in an analogous context, because the “issue [is] more appropriately
`
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`13
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`IPR2022-00200
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`addressed in the context of the scope and content of the prior art, rather than the
`
`definition of one of ordinary skill in the art.” See Med-El Elektromedizinische
`
`Geräte Ges. M.B.H., v. Advanced Bionics AG, IPR2020-01016, Paper 42 at 12-13
`
`(PTAB March 31, 2022).
`
`Patent Owner’s expert exceeds the level of skill of a POSITA under either
`
`definition. See Exs. 2018, § I.A, 2019.
`
`VII. ARGUMENT
`The Petition maps the “message triggering condition” to the Aristocrat
`
`reference in two ways, both of which should be rejected. The “message triggering
`
`condition” (red) purportedly occurs either when a game ends or when a
`
`determination is made that a rate of play has fallen below a predetermined threshold:
`
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`14
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`IPR2022-00200
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`Table 1 (Pet. at 39 (annotated))
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`Table 2 (Pet. at 40 (annotated))
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`
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`
`
`Under its first theory, the Petition argues that Aristocrat discloses four sets of
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`“tracked information” (blue) and four output messages (green). Under its second
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`theory, the Petition argues that Aristocrat discloses two sets of “tracked information”
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`(also blue) and two possible “messages” (green). Zynga applies these features
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`indiscriminately to elements (c) and (d), arguing that “any two combinations using
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`the same message trigger consideration (either end of game or rate of play falling
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`below a threshold) could be used to satisfy these limitations.” Pet. at 37.
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`A. The Petition’s Indiscriminate Mix-and-Match Invalidity
`Challenge is Improper.
`At the outset, Patent Owner objects to the Petition’s indiscriminate application
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`of the prior art. It is unfair to Patent Owner and the Board for Zynga to apply prior
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`art in such a haphazard fashion. Instead, a “petition must specify where each element
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`of the claim is found in the prior art patents or printed publications relied upon” and
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`“identify[] specific portions of the evidence that support the challenge.” 37 C.F.R.
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`§ 42.104(b). The Petition fails this standard because, by its own admission, it seeks
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`to apply “any two combinations using the same message trigger consideration (either
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`end of game or rate of play falling below a threshold) [] to satisfy” elements (c) and
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`(d). Pet. at 37. The Petition refers to still other messages that do not appear in Table
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`1 or Table 2 without explaining how these messages might be related to the claims’
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`tracked “information” or “message trigger condition[s].” See Pet. at 16 (graphical
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`examples), 34 (a player would have won with another Ace). This approach
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`prejudices Patent Owner because, as demonstrated below, the Petition does not
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`allege and Aristocrat does not disclose that a “determined first message” and a
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`different “determined second message” both are output to a player when the
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`predicates of elements (c) and (d) both are met.
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`Petitioner’s motivation to combine analysis confirms this haphazard
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`approach. See id. at 62-64. Petitioner’s blanket assertion that a “POSITA would
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`have found it obvious to combine various embodiments of Aristocrat” (id. at 62)
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`fails to identify what embodiments are to be combined, why they are to be combined,
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`or how they are to be combined. The Petition identifies, among these embodiments,
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`other messages, namely, “offers of prizes or bonus games,” a “bonus reel,” and a
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`“busker” (id. at 63), that the Petition omits from its element-for-element analysis of
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`the Challenged Claims. See, for example, id. at 32-41 (no mention of offers, bonus
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`reels, or buskers in analysis of claim 1, elements (c) or (d)), 53-54 (not mentioned
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`either in analysis of claim 9, elements (c) or (d)). The Petition simply lists these
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`messages, again, making no effort to explain how they relate, if at all, to the
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`“message trigger conditions” and tracked “information associated with the identified
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`player” recited in the Challenged Claims.
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`Petitioner’s next brief may attempt to show some combination of determined
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`first and second messages that are output as required by the claims. The Board
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`should reject any argument that presents a new combination of messages not
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`presented already in analysis of element (c) and (d) of claims 1 and 9.
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`Petitioner bears the burden to identify its invalidity grounds with particularity.
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`35 U.S.C. § 312(a)(2). The Petition’s mix-and-match approach is insufficiently
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`particularized, however, and it should be rejected.
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`B.
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`The Petition Fails to Show that Steps (c)(ii) and (d)(ii) are
`Performed when their Respective Predicates are Met.
`The Board should reject the proffered Ground because the Petition fails to
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`show that the prior art teaches that first and second determined messages are output
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`to a player when the predicate conditions of elements (c) and (d) are met. Claims 1
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`and 9 recite these features as follows:
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`Claim
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`Claim 1:
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`Claim 9:
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`Claim Text
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`(c) if [1] a first set of information associated with the identified
`player is tracked and [2] a message trigger condition occurs in
`association with the identified player:
`(i) determine, based at least in part on the first set of tracked
`information, a first message, and
`(ii) output the determined first message to the identified
`player, and
`(d) if [1] a second, different set of information associated with the
`identified player is tracked and [2] the message trigger condition
`occurs in association with the identified player:
`(i) determine, based at least in part on the second set of tracked
`information, a second, different message, and
`(ii) output the determined second message to the identified
`player.
`(c) if [1] a first set of information associated with the identified
`player is tracked and [2] a message trigger condition occurs in
`association with the identified player:
`(i) causing the at least one processor to execute the plurality of
`instructions to determine, based at least in part on the first
`set of tracked information, a first message, and
`(ii) causing at least one output device to output the determined
`first message to the identified player, and
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`Claim
`
`Claim Text
`(d) if [1] a second, different set of information associated with the
`identified player is tracked and [2] the message trigger condition
`occurs in association with the identified player:
`(i) causing the at least one processor to execute the plurality of
`instructions to determine, based at least in part on the
`second set of tracked information, a second, different
`message, and
`(ii) causing the at least one output device to output the
`determined second message to the identified player.
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`As explained, both claims require that the first and second messages are output when
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`the predicates of elements (c) and (d) both are met. See § V.A supra.
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`On the merits, the Petition fails to show that the prior art, even if considered
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`in combination, discloses all claim elements, particularly, the requirement that a
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`“determined first message” and a “determined second message” both are output to a
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`player (steps (c)(ii) & (d)(ii)) when the predicates of elements (c) and (d) both occur.
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`The Petition argues that Aristocrat discloses six types of “tracked information” (blue
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`in Tables 1 & 2) across two “message trigger conditions” (red); this is the basis for
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`Petitioner to argue that conditions (c)[1] and (d)[1] are met. Pet. at 39-40. But
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`Aristocrat’s system outputs only one message to the player when any message
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`trigger condition occurs. Thus, although the Petition alleges that Aristocrat meets
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`the predicate clauses of elements (c) and (d) in full, Aristocrat does not disclose
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`performing both steps (c)(ii) and (d)(ii). Aristocrat outputs only a single message—
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`not a “determined first message” and a different “determined second message”—to
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`a player.
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`A POSITA would recognize that Aristocrat’s system outputs a single message
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`to a player using the state machine (Ex. 1004, FIG. 12) to which the Petition cites
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`(Pet. at 17). Ex 2018 ¶¶ 86-93. Aristocrat discloses that messages are output to
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`players from the assistant mode 82 (light blue), the award mode 83 (brown), and the
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`promotional mode 85 (purple):
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`Aristocrat (Ex. 1004), FIG. 12 (annotated)
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`
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`But Aristocrat discloses that each mode outputs a single message and thereafter
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`returns to the amorphous mode 80 (yellow). See Ex. 1004 at 24:33-34 (Assistant
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`Mode 82: “Once the advice has been offered, the state machine will return to the
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`amorphous mode.”), 25:17-18 (Award Mode 83: “Once the award is completed, the
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`state machine will again return to the Amorphous mode 80”), 25:25-26 (Promotional
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`Mode 85: “Once a single promotional message has been given, the state machine
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`will undergo a transition to Amorphous mode 80”). The Petition never argues that
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`Aristocrat discloses outputting multiple messages when a common “message trigger
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`condition occurs in association with the identified player.”
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`Consider Petitioner’s first invalidity theory, which alleges that a “message
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`trigger condition” is the end of a game. Pet. at 33; see also Table 1 above. The
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`Petition alleges that Aristocrat discloses four types of “tracked information:”
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`(1) player losses, (2) player bets, (3) whether a player has earned a b