Trials@uspto.gov
`571-272-7822
`
`
`Paper 51
`Entered: November 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAME SHOW NETWORK, LLC and WORLDWINNER.COM, INC.,
`Petitioner,
`
`v.
`
`JOHN H. STEPHENSON,
`Patent Owner.
`____________
`
`Case IPR2013-00289
`Patent 6,174,237
`____________
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`BENJAMIN D. M. WOOD, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`IPR2013-00289
`Patent 6,174,237
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`I. BACKGROUND
`
`Game Show Network, LLC and WorldWinner.com, Inc. (collectively
`“Petitioner”) filed a Petition (Paper 1; “Pet.”) seeking inter partes review of
`claims 1–19 of U.S. Patent No. 6,174,237 (“the ’237 patent”) pursuant to
`35 U.S.C. §§ 311–319. On November 19, 2013, we instituted an inter
`partes review of claims 1–19 on two grounds of unpatentability (Paper 8;
`“Dec. on Inst.”).
`Subsequent to institution, John H. Stephenson (“Patent Owner”) filed
`a Patent Owner Response (Paper 22; “PO Resp.”), and Petitioner filed a
`Reply (Paper 35; “Pet. Reply”).
`Patent Owner filed a Motion to Exclude (Paper 41; “Mot. to
`Exclude”) Exhibits 1011, 1012, 1013, 1014, and 1021. Petitioner filed an
`Opposition to the Motion to Exclude (Paper 43; “Exclude Opp.”), and Patent
`Owner filed a Reply (Paper 44; “Exclude Reply”).
`An oral hearing was held on July 10, 2014, and a transcript of the
`hearing is included in the record (Paper 50; “Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–19 of the ’237 patent are
`unpatentable.
`
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`IPR2013-00289
`Patent 6,174,237
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`A. The ’237 Patent
`
`The ’237 patent relates to tournament play having a qualifying round
`and a playoff round. The qualifying round is played between a player,
`through a computer terminal, and a host computer. The playoff round is
`played between those players obtaining a predetermined level of
`performance in the qualifying round and the host computer. The playoff
`round is played under the same rules and conditions as in the qualifying
`round, except that all the players are playing simultaneously within a
`specific time frame. Ex. 1001, 1:15–24.
`
`B. Illustrative Claim
`
`Claim 1 of the ’237 patent is the only independent claim:
`1. A method of playing a game of skill tournament
`having a qualifying round and a playoff round, and played over
`an interactive computer system, said interactive computer
`system having a host computer system, a plurality of terminals,
`computers and compatible software, said method comprising
`the following steps:
`a. playing a game of skill in a qualifying round between
`a single player and the host computer;
`b. evaluating the results of said qualifying round to
`determine if said player qualifies to be classified within a
`specific performance level from a plurality of performance
`levels ranging from a low performance level to a high
`performance level;
`c. evaluating the results of said qualifying round to
`determine if said player qualifies to be classified within a
`qualifying performance level taken from said plurality of
`performance levels;
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`d. distributing to said player a performance level award,
`said performance level award being dependent upon the specific
`performance level obtained;
`e. playing said game of skill in a playoff round between
`said player and the host computer simultaneously along with
`other players, wherein each player has been classified within a
`qualifying performance level;
`f. evaluating the results of said playoff round to
`determine a tournament winner and subsequent ranking of
`players; and
`g. distributing tournament awards to tournament
`participants.
`
`C. Prior Art
`
`The pending grounds of unpatentability in this inter partes review are
`based on the following prior art:
`PCT International Publication No. WO 97/39811, published
`Oct. 30, 1997 (“Walker”) (Ex. 1002).
`
`D. Pending Grounds of Unpatentability
`
`This inter partes review involves the following grounds of
`unpatentability:
`References
`Walker
`
`Claims
`Basis
`35 U.S.C. § 102(b) 1–3, 5, and 8–19
`
`Walker
`
`35 U.S.C. § 103
`
`4, 6, and 7
`
`
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`II. ANALYSIS
`
`A. Level of Skill of Person in the Art
`
`In support of its Petition, Petitioner relies on the testimony of
`
`its expert, Dr. E. James Whitehead, Jr. (e.g., Ex. 1005). In support of
`its Response, Patent Owner relies on the testimony of its expert, Stacy
`A. Friedman (e.g., Ex. 2007). Both Dr. Whitehead and Mr. Friedman
`testify as to the level of skill a person in the art would have had at the
`time of the invention. See, e.g., Ex. 1005 ¶ 25; Ex. 2007 ¶ 45. Mr.
`Friedman testified, however, that he disagreed with Dr. Whitehead’s
`assessment that a person in the art would have had an undergraduate
`degree and significant first-hand experience observing, administering,
`and/or participating in competitive tournaments. Ex. 2007 ¶¶ 46–47.
`According to Mr. Friedman, a person of ordinary skill in the art at the
`time of the invention would have had either (1) a degree in computer
`science and one year of experience designing computer gaming, or (2)
`no formal degree and three to four years of experience designing
`computer gaming applications.
`
`It is not necessary for us to resolve the apparent dispute to reach
`a determination on the merits, and both parties agree that we need not
`resolve, between Mr. Friedman and Dr. Whitehead, who is correct.
`Tr. 7–8, 25–27. For purposes of this decision, we find that the level of
`ordinary skill in the art is reflected by the prior art of record. Okajima
`v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art itself
`can reflect the appropriate level of skill in the art.)
`
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`B. Claim Interpretation
`
`Consistent with the statute and legislative history of the Leahy–Smith
`America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), the
`Board interprets claims using the “broadest reasonable construction in light
`of the specification of the patent in which [they] appear[].” 37 C.F.R.
`§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012). There is a “heavy presumption” that a
`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Also, we must be
`careful not to read a particular embodiment appearing in the written
`description into the claim if the claim language is broader than the
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`(“limitations are not to be read into the claims from the specification”).
`
`1. “Playing a game of skill in a qualifying round between
`a single player and the host computer”
`
`In the Decision on Institution, based on the arguments presented by
`Petitioner in the Petition and by Patent Owner in its Preliminary Response,
`we interpreted the above quoted claim 1 term to mean playing a game of
`skill in a qualifying round, where the game includes only one human player
`and is at least administered by a host computer. Dec. on Inst. 6–9.
`Petitioner agrees with this interpretation. Pet. 13; Pet. Reply 7. Patent
`Owner argues that the interpretation is incorrect, and that “playing a game of
`skill in a qualifying round between a single player and the host computer”
`means “playing a game of skill in a qualifying round where a single human
`player plays against a host computer opponent;” or stated another way, the
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`phrase requires both the single player and host computer to play the game in
`competition with each other. PO Resp. 23.1 The interpretation proposed by
`Patent Owner would exclude single-player games of skill2 while the original
`interpretation would include single-player games of skill. We are not
`persuaded that our original interpretation should be modified.
`We begin with the language of claim 1, the sole independent claim.
`The preamble of claim 1 recites a method of playing a game of skill
`tournament having a qualifying round and a playoff round, and played over
`an interactive computer system. The first step of the method recites “playing
`a game of skill in a qualifying round between a single player and the host
`computer.” Thus, claim 1 requires playing a game of skill between a single
`player and the host computer.
`Both parties agree that “between” means “by the common action of:
`jointly engaging.” PO Resp. 24 (citing Ex. 2001, 109); Pet. Reply 10.
`Patent Owner argues that the word “between” means that both the human
`player and host computer are playing the game as opponents or in
`competition. PO Resp. 24. As Petitioner points out, however, the definition
`of “between” includes cooperation—not just competition—between two
`parties. Pet. Reply 10; Ex. 1020, 91:2–13. The word between, in the
`context of claim 1, does not mean necessarily that the host computer is in
`competition with the single player. Nor are we persuaded by Patent Owner’s
`
`
`1 The parties also refer to this concept (e.g., playing the game in competition
`with each other) as “head-to-head competition.” See, e.g., Pet. 12; PO
`Resp. 17; Pet. Reply 10–11.
`2 Single-player games of skill refers to those games where only one person is
`in competition (no opponent), such as traditional solitaire, trivia, crossword
`puzzles, etc. See, e.g., Pet. 12; PO Resp. 24–25; Pet. Reply 8.
`
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`argument that “playing” a game requires the computer to play the game as a
`computer opponent. PO Resp. 24, 27; Ex. 2007 ¶¶ 58–59. Claim 1 does not
`require the computer to play the game as an opponent or for the single player
`and the host computer to compete against each other. As we determined in
`the Decision on Institution, claim 1 encompasses playing games of skill
`where a single player plays the game of skill, e.g., “single-player games”
`while the computer can “play” by administering the game, e.g., by keeping
`score, operating the game, and monitoring the player’s progress. Dec. on
`Inst. 7.
`Dependent claim 10, which indirectly depends from claim 1, specifies
`that the game of skill is a card game that includes solitaire. Ex. 1001, 6:64.
`In the Decision on Institution, we determined that playing solitaire does not
`require head-to-head competition. Dec. on Inst. 7. Patent Owner argues,
`and Petitioner does not disagree, that solitaire can be played by two
`players—“double solitaire.” PO Resp. 24; Pet. Reply 10; Ex. 2004; Ex.
`2005. It is not disputed, however, that “solitaire” is traditionally a single-
`player game, and that the Specification of the ’237 patent does not describe a
`two-player version of solitaire. Ex. 2007 ¶ 59; Ex. 1020, 102:8–9, 109:23–
`110:11. We are not persuaded by Patent Owner’s argument that claim 10 is
`limited to a two-player version of solitaire, but excludes the traditional
`single-player version of solitaire. PO Resp. 24. There is nothing in the
`Specification of the ’237 patent that would have indicated to a person of
`ordinary skill in the art that Patent Owner intended to exclude traditional
`single-player versions of games of skill. Moreover, Patent Owner’s
`argument is based on the premise that we should construe narrowly claim 1
`to exclude single player games, and then to make all other dependent claims
`
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`fit that narrow construction. Patent Owner’s position is contrary to the legal
`requirements of claim construction. Rather, we look to the use of terms in
`other claims, such as dependent claims, to ascertain the meaning of terms in
`broader independent claims. See 35 U.S.C. 112, ¶ 4; Rexnord Corp. v.
`Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); Tr. 35 (“Mr. Leach: . .
`. And the fact that a claim has a specific limitation in claim 1, you don’t
`broaden it out just because it may not capture every variant that’s in a
`dependent claim. Judge Turner: Well, I think I do. I think that’s what the
`court is telling me I have to do, doesn’t it?”).
`We next look to the specification to determine if our construction is
`consistent with the specification. Patent Owner argues that the Specification
`uses the terms “between” and “against” interchangeably, and that the
`Specification describes embodiments where the computer is competing
`against a single player. PO Resp. 24 (citing Ex. 2002, Abstract). Even so,
`we disagree, that “against” should be read into the claim in place of
`“between” as Patent Owner urges us to do. Claim 1 recites “between” not
`“against” and Patent Owner has not shown that it defined the term
`“between” in the Specification of the ’237 patent with reasonable clarity,
`deliberateness, and precision to mean “against.” See In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`At issue in this case, is the meaning of the following portion of the
`Specification of the ’237 patent:
`The qualifying round is played between a single player through
`a computer terminal and a host computer. The host computer
`has the ability to act as a game sponsor by keeping score,
`operating the game, monitoring the player’s progress and to
`distribute awards when appropriate. Also, the host computer
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`has the ability to act as another player if the game requires more
`than a single player.
`PO Resp. 27–28 (citing Ex. 1001, col. 2, ll. 7–15).
`Petitioner argues that the above paragraph is consistent with the “at
`least administered by the host computer” construction, because the second
`and third sentences describe an embodiment where the host computer acts as
`a sponsor by administrating the game, but does not act necessarily as an
`opponent for single player games. Pet. 12; Pet. Reply 7–8. Patent Owner
`argues that the above paragraph is consistent with its construction that the
`host computer acts as an opponent, because the paragraph describes that the
`computer acts as an opponent at all times. PO Resp. 27–29. In other words,
`Patent Owner interprets the first sentence to mean that the host computer
`plays as an opponent, the second sentence to mean that the host computer
`additionally can act as a game sponsor, and the third sentence to mean that
`the computer additionally can act as yet another opponent (e.g., as a team
`against the single player) if the game requires more than a single computer
`player. PO Resp. 28–29; Ex. 2007 ¶¶ 62–66.
`We have reviewed the expert testimony from both sides with respect
`to how a person of ordinary skill in the art would interpret the above
`paragraph. See, e.g., Ex. 1005 ¶ 35; Ex. 2007 ¶¶ 62–66; We give more
`weight to Dr. Whitehead’s testimony3 than we do to Mr. Friedman’s
`testimony, because we find that Dr. Whitehead’s testimony is consistent
`with the words from the above recited paragraph of the Specification, while
`
`3 Patent Owner argues that the Board should give Dr. Whitehead’s testimony
`little weight. PO Resp. 9–10. We are not persuaded by the arguments,
`because the evidence to which we are directed does not support the
`conclusion that Dr. Whitehead’s declaration was “spoon-fed” to him as
`asserted. Id.
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`Mr. Friedman’s testimony is not. The first sentence is a general description
`and the second and third sentences explain the role of the host computer in
`the context of the first sentence. Importantly, the third sentence explains
`that “if the game requires more than a single player” the host computer has
`the ability to act as another player beyond the “single [human] player.” We
`disagree with Patent Owner that reference to “single player” in the third
`sentence means “single [computer] player” as Patent Owner asserts. PO
`Resp. 28–29. We agree with Petitioner and its expert that a person of
`ordinary skill in the art would have read the paragraph to mean that the game
`that may be played by the system can be a single player game, where the
`computer merely sponsors the game but does not play as an opponent.
`Moreover, there are several examples of games listed in the Specification
`that even Patent Owner’s expert Mr. Friedman recognizes are traditionally
`single player games, such as solitaire, word search, crossword puzzles, and
`trivia games. Ex. 1001, 3:43–52; Ex. 2007 ¶ 59; Ex. 1020, 102:8–9, 109:23–
`110:11. The description of these traditional single player games further
`supports the reading of the above paragraph to include single player games
`where the host computer would not play the game in competition, but would
`merely administer the game. The Specification is, therefore, consistent with
`our previous interpretation. Dec. on Inst. 6–9.
`Applying the broadest reasonable interpretation of the claims in light
`of the Specification of the ’237 patent, “playing a game of skill in a
`qualifying round between a single player and the host computer” means
`playing a game of skill in a qualifying round, where the game includes only
`one human player and is at least administered by a host computer.
`
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`2. “Playing said game of skill in a playoff round between
`said player and the host computer simultaneously along with other players”
`
`In the Decision on Institution, based on the arguments presented by
`Petitioner in the Petition and by Patent Owner in its Preliminary Response,
`we interpreted the above quoted claim 1 term to mean “playing the game of
`skill in a playoff round at least administered by the host computer and in
`which the human player involved in the qualifying round and at least two
`other human players are playing at the same time.” Dec. on Inst. 9–10.
`Petitioner agrees with this interpretation. Pet. 15. Patent Owner argues that
`the interpretation is incorrect, because the phrase does not require at least
`two other human players are playing (in addition to the “said player”) at the
`same time. PO Resp. 30. Patent Owner argues that “other players” means
`“at least one other player.” In addition, Patent Owner argues that the claim
`requirement “simultaneously” should be construed to mean that there is
`some overlap in play.4 Id.
`Patent Owner is arguing for a broader interpretation than the one in
`the Decision on Institution. Instead of our construction of “at least two other
`human players,” Patent Owner’s proposed broader construction includes “at
`least one other human player.” We need not resolve this issue for purposes
`of this decision. Patent Owner’s broader construction encompasses our
`narrower construction and would include at least two other human players.
`
`
`4 The disputed term includes language that is similar to step (a) regarding the
`playing between a player and computer. Patent Owner, however, does not
`present arguments regarding playing a game between a player and the host
`computer in the context of the disputed limitation. To the extent that Patent
`Owner does make such arguments, the analysis for both steps (a) and (e)
`regarding playing a game of skill between a player and host computer would
`be the same.
`
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`Moreover, we need not resolve the issue of whether “simultaneously” means
`that there is some overlap in play, because our construction of
`simultaneously to mean at the same time would include some overlap in play
`and even Patent Owner recognizes that the distinction is minor. PO
`Resp. 31.
`Applying the broadest reasonable interpretation of the claims in light
`of the Specification of the ’237 patent, “playing said game of skill in a
`playoff round between said player and the host computer simultaneously
`along with other players” means playing the game of skill in a playoff round
`at least administered by the host computer and in which the human player
`involved in the qualifying round and at least two other human players are
`playing at the same time.
`
`3. “Evaluating the results of said qualifying round”
`
`Claim 1 recites “evaluating the results of said qualifying round” in
`steps (b) and (c). Patent Owner argues that the “evaluating the results” steps
`mean that a single human player is evaluated based solely on the single
`human player’s performance (against the computer) and not based on
`comparing that performance against any other player who played a game of
`skill. PO Resp. 33–34. Petitioner disagrees with Patent Owner’s proposed
`construction and argues that there is no requirement in the claims that the
`“evaluating the results” steps are based on a single player’s performance
`(e.g., “absolute criteria”). Pet. Reply 2–3. Petitioner argues that the claim
`does not preclude evaluating the results of the qualifying round based on
`evaluating multiple performances of multiple players that participated in a
`qualifying round. Petitioner concludes that the evaluating limitations cover
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`either an absolute evaluation of a single player’s performance or a relative
`evaluation of multiple players’ performances. Id. at 4.
`We did not construe the meaning of the term “evaluating the results of
`said qualifying round” in connection with the Decision on Institution. We
`do so here, because it is an issue that is germane to our patentability
`determination.
`We begin with the plain language of the claim. First, we agree with
`Petitioner that there is nothing in the language itself that explains how the
`evaluating is performed. That is, there is nothing in claim 1 itself that
`suggests that the evaluating must be done based on the single player’s
`performance of the game of skill in isolation of any other factors or criteria.
`Thus, we are not persuaded by Patent Owner’s argument that the disputed
`language means evaluating a single player “into predetermined, absolute
`performance levels independent of their performance relative to others in the
`qualifying round.” PO Resp. 36. The claim is based on evaluating the
`results of the qualifying round, not the results of the one single game that the
`one single human player played. There is nothing in the claim language that
`specifies that the qualifying round is based on a single game played by a
`single human player despite Patent Owner’s argument to the contrary. See
`Id. at 33. While the “game of skill” recited in step (a) refers to a game
`played by a single player, the qualifying round is not so limiting. The
`qualifying round may include other single players playing their own games
`of skill between themselves and the host computer. Claim 1 does not put
`limits on what constitutes the qualifying round or the evaluating of a
`qualifying round. Indeed, step (e) of claim 1 recites the playoff round to be
`“between said player . . . and other players” that qualified from the
`
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`qualifying round, which could include the participation of multiple human
`players in the qualifying round. As Petitioner points out, too, Patent
`Owner’s expert admitted that the qualifying round could include multiple
`players. Pet. Reply 4; Ex. 1020, 58:8–60:16. Based on the plain language of
`claim 1, the evaluating steps evaluate the qualifying round, which could
`include more than one game and more than one player. Accordingly, the
`evaluating steps may be based (1) on the multiple performances of the
`multiple players that participated in the qualifying round or (2) on the
`absolute evaluation of a single player’s performance. Claim 1 is broad and
`covers both scenarios.
`We have considered the examples in the specification to which Patent
`Owner directs our attention regarding evaluating a single player’s
`performance based on whether the player has scored a sufficient number of
`points to qualify for the qualifying round—an absolute criterion. However,
`those are examples and there is nothing in the Specification which suggests
`that we should limit our reading of claim 1 to include them. Claim 1 is silent
`with respect to how a player’s performance is evaluated, and, based on the
`record before us, we decline to read limitations from the specification into
`the claims.
`Applying the broadest reasonable interpretation of the claims in light
`of the Specification of the ’237 patent, the steps of “evaluating the results of
`said qualifying round” may be based (1) on the multiple performances of the
`multiple players that participated in the qualifying round or (2) on the
`absolute evaluation of a single player’s performance.
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`4. “Performance level award increases as a player qualifies for higher
`performance level classifications”
`
`Claim 4 depends directly from claim 1 and recites “wherein said
`performance level award increases as a player qualifies for higher
`performance level classifications.” The “said performance level award” is in
`reference to the performance level award of claim 1 step (d) which is
`dependent upon the performance level obtained in connection with a
`qualifying round. Patent Owner argues that the limitation “as a player
`qualifies” requires that the higher performance level classification be
`determinable while the player is playing, not after the qualifying round is
`complete. PO Resp. 39. Stated another way, Patent Owner argues that the
`player must be able to know that they have qualified for a higher
`performance level award as they are playing, not afterwards. Id. Petitioner
`disagrees and argues that claim 4 says nothing about when the player knows
`that he or she has qualified for a higher performance level. Pet. Reply 14.
`We did not construe the meaning of the term “wherein said
`performance level award increases as a player qualifies for higher
`performance level classifications” in connection with the Decision on
`Institution. We do so here, because it is an issue that is germane to our
`patentability determination.
`There is no requirement, in the claims themselves, that specifies when
`the performance level classification is determined—it could be during, or
`after the player has played the qualifying round. We disagree with Patent
`Owner that the plain language of “as a player qualifies” means that the
`determination is performed while the player is playing the game of skill.
`The term “as a player qualifies” does not mean “as a player plays the game.”
`
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`The Specification of the ’237 patent supports the construction that the
`performance level classification may be determined after the player has
`played the qualifying round because it describes that “after each player has
`completed the qualifying round, the results are analyzed.” Ex. 1001, 5:23–
`24.
`
`Applying the broadest reasonable interpretation of claim 4 in light of
`the Specification of the ’237 patent, “wherein said performance level award
`increases as a player qualifies for higher performance level classifications”
`includes determining the higher performance level classification, and thus
`the award, after a player plays the game.
`
`5. “Said game of skill is based on the memory reaction of the player”
`
`Claim 15 depends directly from claim 1 and recites “wherein said
`game of skill is based on the memory reaction of the player.” In the
`Decision on Institution, based on the arguments presented by Petitioner in
`the Petition and by Patent Owner in its Preliminary Response, we interpreted
`the above quoted claim 15 term to mean that the game of skill involves
`assessing both a player’s memory and how quickly the player reacts. Dec.
`on Inst. 12. Patent Owner disagrees that “memory reaction” involves the
`assessment of two things—memory and reaction, but involves the
`assessment of “reaction involving memory.” PO Resp. 32–33. We see no
`distinction between the two constructions, and in any event, the construction
`of claim 15 does not matter to our determination of the patentability of that
`claim. Accordingly, we adopt our previous construction. Dec. on Inst. 12.
`Neither party contests the Decision on Institution construction for the
`claim 1 phrase “game of skill,” “evaluating the results of said playoff round
`
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`to determine a tournament winner and subsequent ranking of players” or the
`order of steps (b) and (c) construction of claim 1, and we discern no reason
`on the record before us to change the construction of these terms. Dec. on
`Inst. 5–6, 10–12. Accordingly, we adopt those constructions here.
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`C. Claims 1–3, 5, and 8–19 are Anticipated by Walker
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`With respect to the alleged anticipation of claims 1–3, 5, and 8–19
`over Walker, we have reviewed the Petition, Patent Owner Response, and
`Petitioner Reply, as well as the evidence discussed in each of those papers.
`We are persuaded, by a preponderance of the evidence, that claims 1–3, 5,
`and 8–19 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Walker.
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`1. Walker
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`Walker describes a method and system for a distributed electronic
`tournament system in which remotely located players participate in a
`tournament through input/output devices connected to a central controller
`that manages the tournament. Ex. 1002, Abstract.
`Figure 1 of Walker, reproduced below, illustrates a portion of the
`electronic tournament system.
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`Figure 1 depicts a distributed electronic tournament system.
`Figure 1 of Walker shows a plurality of input/output (I/O) devices
`104, 106 (plurality of terminals) connected to central controller 102 (host
`computer) through network 108, such as the Internet. Id. at 9. Operating
`system software runs the central controller hardware and controls and
`coordinates all tournament software applications, including running
`tournament games, registering players, accepting entry fees, and
`coordinating prize payment. Id.
`Players may participate in various strategy games (games of skill),
`such as chess, checkers, bridge, or puzzles like crossword or jigsaw. Id. at
`15, 16:4–5. Walker describes a “qualifying round” of play in which a player
`may qualify to advance to the next level. Id. at 14:6–15. Host computer 102
`participates in the qualifying round by administering the game, such as by
`keeping a player’s score and determining whether the player qualifies to
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`advance to the next round (e.g., playoff round). Id. at 15:15–20. Walker
`describes single-player games, such as trivia and crossword puzzles. Id. at
`3:3–10, 15:11, 17–18. For the example of trivia play, Walker describes a
`single human player having completed twenty questions of the first round
`(qualifying round), and that the host computer then would determine, based
`on the player’s performance, whether the player had qualified to advance to
`the next round. Id. at 15:15–20.
`Walker also describes that the tournament system evaluates the results
`of play, and as the tournament progresses, more and more players are
`eliminated. Moreover, when a player advances from one game session to
`the next, the player may qualify for a prize or recognition. Id. at 15:29–16:2.
`Lastly, a tournament winner is determined after a final round of an
`elimination tournament and prizes are awarded. Id. at 15:20–21.
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`2. Claim 1
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`Petitioner relies on Walker as teaching the method of playing a game
`of skill tournament limitations of claim 1. Pet. 19–29. Patent Owner argues
`that Walker does not anticipate claim 1 because Walker does not describe
`1) the steps (b) and (c) of “evaluating the results of said qualifying round”
`and 2) playing a game of skill in a qualifying round between a single player
`and the host computer.
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`a. Evaluating the results of said qualifying round
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`Patent Owner argues that Walker does not describe that the evaluating
`of results of the qualifying round is determined based on a single player’s
`performance. PO Resp. 35. Patent Owner argues that Walker