Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 6
`Entered: July 1, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`_______________
`
`Case IPR2016-00491
`Patent 6,932,701
`_______________
`
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2016-00491
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`I.
`
`INTRODUCTION
`Background
`A.
`Aristocrat Technologies, Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–37 of U.S. Patent No. 6,932,701
`(Ex. 1001, “the ’701 patent”). Paper 1 (“Pet.”). IGT (“Patent Owner”) filed
`a Preliminary Response (Paper 5; “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Upon consideration of the Petition and Preliminary Response, we determine
`that the information presented in the Petition demonstrates a reasonable
`likelihood that Petitioner would prevail in showing that claims 1–35 are
`unpatentable.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following district court
`proceedings concerning the ’701 patent: IGT v. Aristocrat Technologies,
`Inc., 2:15-cv-00473 (D. Nev.). Pet. 1; Paper 4, 2; Prelim. Resp. 6.
`
`The ’701 Patent
`C.
`According to the ’701 patent, gaming machines currently exist with
`bonus schemes where players are able to receive various awards associated
`with various events in a bonus game. Ex. 1001, 2:2–6. To that end, the ’701
`patent sets forth a purportedly novel bonus game which includes a plurality
`of groups of symbols displayed to a player. Ex. 1001, 2:28–30. An
`embodiment of such a bonus game is set forth a below in Figure 3.
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`Figure 3 is a top plan view of selection groups 100a–100e in
`one embodiment of a bonus scheme.
`Potential outcomes associated with symbols S in Figure 3 include bonus
`value outcomes, group-win outcomes, and termination outcomes. Ex. 1001,
`2:39–41.
`
`
`Figure 3D is a top plan view of selection groups 100a–100e in
`one embodiment of a bonus scheme.
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`More specifically, using the above-illustrated Figure 3D as an example, a
`player’s first choice in first symbol group 100a is indicated by a blocked
`selection and is win-group outcome 128a. Ex. 1001, 7:55–58. Win-group
`outcome 128a provides all bonus values 130a, 130b, 130c, 130d in group
`100a to the player. Ex. 1001, 7:58–62. The game may reveal all bonus
`values 130a, 130b, 130c, 130d in group 100a to the player, and also reveal
`terminator symbol 116b. Ex. 1001, 7:62–65. As win-group outcome 128a
`also indicates “move up,” the player may then select one of the choices or
`selections in selection group 100b located above selection group 100a.
`Ex. 1001, 7:65–67. This process continues until the players picks a selection
`in one of groups 100a–100e having an associated terminator 116b–116f or a
`selection in each of groups 100a–100e. Ex. 1001, 8:5–8. If the player picks
`a selection in each of groups 100a–100e without selecting any terminator
`116b–116f, an achievement bonus value 102 is provided to the player.
`Ex. 1001, 8:8–11.
`
`Illustrative Claim
`D.
`Independent claim 1 is reproduced below:
`1. A gaming device having a bonus game comprising:
`a plurality of groups of symbols;
`a plurality of bonus values associated with the symbols;
`at least one win-group outcome associated with at least
`one of the symbols in at least one of the groups, the win-group
`outcome including a change group outcome and a plurality of the
`bonus values in said group;
`at least one termination outcome associated with at least
`one of the symbols in at least one of the groups;
`an achievement outcome;
`a display device which displays the symbols; and
`a processor in communication with the display device,
`which: (a) enables a player to select at least one symbol in one of
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`said groups; (b) provides the player with any bonus values
`associated with the selected symbol; (c) provides the player with
`the win-group outcome if the player picks the symbol including
`said win-group outcome; (d) changes to another of said groups
`of symbols based on the change group outcome associated with
`said win-group outcome and repeats (a) to (d) for said another
`group if the player picks the symbol including said win-group
`outcome; (e) terminates the bonus game if the player picks any
`symbol having the termination outcome; and (f) provides the
`player with the achievement outcome if the player picks at least
`one symbol in each of said groups without picking any symbol
`having the termination outcome.
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges claims 1–5, 7–35 on the following grounds.
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Barrie,1 Banana-Rama,2 and
`Luigi’s Pizzeria3
`
`§ 103(a) 1–26 and 29–35
`
`Barrie, Banana-Rama, and
`Luigi’s Pizzeria, and Walker4
`
`§ 103(a) 27, 28, 36, 37
`
`
`
`
`1 GB 2 144 644A, published Mar. 13, 1985 (Ex. 1013; hereinafter “Barrie”).
`2 Silicon Gaming: Raising the Bar, Casino Journal, Sept. 1998 (Ex. 1005;
`hereinafter “Banana-Rama”).
`3 Sigma Game Something for Everyone, Casino Journal, Sept. 1999
`(Ex. 1017; hereinafter “Luigi’s Pizzeria”).
`4 U.S. Patent No. 6,174,235 B1 filed Dec. 30, 1997 (Ex. 1011).
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`II. ANALYSIS
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v.
`Lee, No. 15–446, 2016 WL 3369425, at *12 (U.S. June 20, 2016) (holding
`that 37 C.F.R. § 42.100(b) “represents a reasonable exercise of the
`rulemaking authority that Congress delegated to the . . . Office”). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`claim term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). 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. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`“win-group outcome”
`1.
`Independent claims 1, 8, 13, 15, 18, 21, 24, 25, 29, and 33 each recite
`“win-group outcome.” Petitioner proposes construing “win-group outcome”
`as “an outcome defined to include at least one award of a bonus value that is
`associated with at least one different symbol within the same selection
`group.” Pet. 10–12 (citing Exs. 1001, 1014). Patent Owner asserts that
`Petitioner’s proposed construction is too narrow in that it improperly
`includes the word “different,” and counters that “win-group outcome”
`should be construed as “an outcome defined to include at least one award of
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`a bonus value that is associated with at least one symbol within the same
`selection group.” Prelim. Resp. 24–28 (citing Ex. 1001). We agree with
`Patent Owner.
`Specifically, we do agree with Petitioner that the vast majority of the
`embodiments of the ’701 patent disclose that a “win-group outcome”
`involves “a plurality of bonus values in a group.” Ex. 1001, 2:15–16, 46–48.
`The ’701 patent also discloses, however, that “[i]nstead of displaying win-
`group symbol 128a, the gaming device may reveal a value in place of
`symbol 110” (Ex. 1001, 10:1–3) and discloses further that:
`In another alternative of this embodiment, once a player picks a
`symbol associated with a bonus value, the gaming device makes
`this bonus value unavailable to the player even if the player later
`picks a symbol in that group which is associated with a win-
`group outcome. In this embodiment, the win-group outcome
`functions as a win-remaining outcome because the player only
`receives values associated with symbols which the player has not
`already picked.
`Ex. 1001, 3:12–20. When these two portions of the ’701 patent are read
`together, we find that the ’701 patent discloses a scenario where the only
`bonus value taken into account is that associated with the symbol
`corresponding to the “win-group outcome” itself. Only Patent Owner’s
`construction accounts for this scenario.
`To that end, Petitioner does make a valid point that “bonus value
`outcome” should ideally be differentiated from “win-group outcome,” and
`arguably, under Patent Owner’s construction, the two are one and the same.
`Nevertheless, we discern that there is a subtle distinction. Specifically, we
`discern that “bonus value outcome” expressly accounts for the bonus value
`of only the selected symbol itself, and does not account for bonus values
`associated with more than one symbol. By contrast, “win-group outcome”
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`accounts for potential bonus values in multiple symbols making up the
`“same selection group,” with the fact that sometimes the practical outcome
`is that of those multiple symbols, only the “win-group outcome” symbol
`itself has a bonus value.
`Accordingly, we construe “win-group outcome” as “an outcome
`defined to include at least one award of a bonus value that is associated with
`at least one symbol within the same selection group.”
`“change group outcome”
`2.
`Independent claims 1, 8, 13, 15, 21, 24, and 25 each recite “change-
`group outcome.” Petitioner proposes construing “change group outcome” as
`“an outcome that requires the player to make the next selection from a
`different selection group.” Pet. 12–13 (citing Exs. 1001, 1014). Patent
`Owner agrees with Petitioner’s construction. We agree also that Petitioner’s
`proffered construction is correct.
`“achievement outcome”, “achievement award”,
`3.
`“achievement bonus value”, and “achievement bonus”
`Independent 1 claim recites “achievement outcome.” Dependent
`claim 10 recites “achievement award.” Independent claim 21 recites
`“achievement bonus value.” Independent claim 25 recites “achievement
`bonus.” Petitioner proposes that these “achievement” claim terms be
`construed as “a reward for advancing through all available selection groups
`without selecting a termination outcome.” Pet. 13–15 (citing Exs. 1001,
`1014). Patent Owner disagrees, and asserts that these “achievement” claim
`terms should be construed as “a bonus value for reaching the end of the
`bonus game without selecting a termination outcome.” Prelim. Resp. 29–30
`(citing Ex. 1001). We agree with Patent Owner.
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`Specifically, we agree with Patent Owner that the ’701 patent does not
`contemplate a “reward” other than a bonus value. We agree further with
`Patent Owner that neither the specification nor the claims requires
`“advancing through all available selection groups” in order to obtain the
`bonus value, as asserted by Petitioner.
`Accordingly, we construe the aforementioned “achievement” claim
`terms as “a bonus value for reaching the end of the bonus game without
`selecting a termination outcome.”
`other claim terms
`4.
`We determine that no express construction of any other claim terms is
`necessary at this time.
`
`Claims 1–26 and 29–35 as Unpatentable over
`B.
`Barrie, Banana-Rama, and Luigi’s Pizzeria
`Petitioner contends that claims 1–26 and 29–35 are unpatentable over
`a combination of Barrie, Banana-Rama, and Luigi’s Pizzeria. Pet. 21–58
`(citing Exs. 1001, 1005, 1006, 1013, 1014, 1016–1018, 1020). Patent
`Owner disagrees. Prelim. Resp. 30–49 (citing Exs. 1002, 1005, 1013, 1017).
`Claims 1, 8, 13, 15, 18, 21, 24, 25, 29, and 33 are independent.
`1.
`Barrie (Ex. 1013)
`Barrie discloses electronic video amusement games having an element
`of chance. Ex. 1013, 1:6–9. Specifically, Barrie discloses a series of
`successive screens each with a plurality of doors, where one of those
`plurality of doors is selected. Ex. 1013, 2:28–34, Fig. 3.
`The selected door is randomly assigned to a lose class or a win
`class. If the door selected is assigned to the lose class then, as
`illustrated in Fig. 4, the selected door appears to open and display
`a tiger 46 ready to spring out and eat up the prince, ending the
`game. If the selected door is assigned to a win class as illustrated
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`in Fig. 5, then the door appears to open and show a view of a
`hallway 48. A new scene is subsequently displayed featuring
`five doors 52 in a wall, such as those illustrated in Fig. 6. At this
`time the display informs the player that he has alternatives. The
`player may terminate the game by operating the select button 20
`during a designated time interval and receive a designated reward
`from the pay in, pay out 22. Alternatively, he may continue
`playing by selecting a new door with the possibility of winning
`a larger reward.
`Ex. 1013, 2:35–46. The door selected may also be a “reward class,” in
`which case the player is given a reward and the game ends. Ex. 1013, 2:64–
`68.
`
`Banana-Rama (Ex. 1005)
`2.
`Banana-Rama discloses:
`The game features an entertaining bonus screen depicting
`15 oyster shells on three shelves of an oyster bar. They all have
`moving eyes. Each oyster shell hides a bonus amount and the
`player selects shells, accumulating bonus coins, until he finds the
`“collect” symbol. In a unique twist, if the player finds the shell
`hiding the “collect” symbol on the first try, it becomes a “Super
`Collect,” and he wins all of the bonus amounts.
`Ex. 1005 (p. 75).
`
`Luigi’s Pizzeria (Ex. 1017)
`3.
`Luigi’s Pizzeria discloses:
`“Throw the Dough” is a clever multiline game built around
`the theme of “Luigi’s Pizzeria.” Three or more pizza symbols
`take you to a second screen. “The number of pizza symbols you
`land will determine how many different toppings you get to put
`on your pizza,” Jackson says. “There are eight to 10 toppings on
`the screen, and you can have as many as five. Each will have a
`random bonus value associated with it, which will change for
`every game. After you choose the toppings, ‘Luigi’ will finish
`making your pie, put it in the oven, and when it comes out you
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`get a bonus multiplier for your accumulated bonus amount, from
`2X to 5X.”
`Ex. 1017, 154
`
`Analysis
`2.
`Petitioner contends that claims 1–26 and 29–35 are unpatentable over
`a combination of Barrie, Banana-Rama, and Luigi’s Pizzeria. Pet. 21–58.
`For example, independent claim 1 recites “[a] gaming device having a bonus
`game.” Petitioner admits that Barrie does not disclose a bonus game per se,
`but then provides an analysis as to why “a POSA would be motivated to
`implement it as such.” Pet. 21–24. Independent claim 1 recites further “a
`plurality of groups of symbols; a plurality of bonus values associated with
`the symbols.” Petitioner cites Barrie for disclosing a series of successive
`screens each with a plurality of doors for selection, with some doors being
`“reward class.” Pet. 24–25. Independent claim 1 recites additionally “at
`least one win-group outcome associated with at least one of the symbols in
`at least one of the groups, the win-group outcome including a change group
`outcome and a plurality of the bonus values in said group.” Petitioner cites
`the “win class” door of Barrie as corresponding to the recited “change group
`outcome,” and asserts further that “a POSA would be motivated to modify
`the door so that it also gives the player all of the other awards in the group,”
`for example, as disclosed by Banana-Rama. Pet. 25–29. Independent claim
`1 recites also “at least one termination outcome associated with at least one
`of the symbols in at least one of the groups.” Petitioner cites the “lose class”
`door of Barrie as corresponding to the recited “termination outcome.” Pet.
`29. Independent claim 1 recites further “an achievement outcome.”
`Petitioner asserts that it would have been known to modify Barrie to include
`an additional award at the end of a selection group, for example, as disclosed
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`by Luigi’s Pizzeria. Pet. 29–31. Petitioner provides similar analysis for
`claims 2–25 and 29–35. Pet. 31–58.
`Patent Owner asserts that Petitioner has not shown adequately that it
`would have been obvious to modify Barrie to implement it as a bonus game
`under two theories. Under the first theory, Patent Owner asserts that
`Petitioner’s position “that bonus games were well known at the time and the
`bonus games enhance excitement and enjoyment” is too generic, and does
`not account properly for the fact that the base game of Barrie is designed to
`minimize awards, which is contrary to the purpose of a bonus game which
`“provide a greater expectation of winning than the base game.” Prelim.
`Resp. 33 (citing Ex. 1002, 206). On this record and at this juncture in the
`proceeding, we are unpersuaded that Petitioner’s position is overly generic,
`and are further unpersuaded there is an irreconcilable conflict between
`minimizing awards in a base game while generating a greater expectation of
`winning in a bonus game. Indeed, the two would appear to be
`complementary.
`Under the second theory, Patent Owner asserts that modifying Barrie
`as indicated by Petitioner does not account adequately for the alterations that
`would need to be made on the complicated math model on which Barrie is
`built. In particular, Patent Owner asserts that “Aristocrat’s generic rationale
`substantially discounts the significant difference between a wagering game
`played for money [as recited in the claimed invention] and a video game not
`played for any money [as disclosed in Barrie].” Prelim. Rep. 34. Patent
`Owner’s assertions are misplaced, as Banana-Rama, the basis of the
`proffered modification of Barrie, is a monetary wagering game similar to the
`claimed invention. Thus, we are persuaded that Petitioner has provided
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`sufficient analysis and supporting evidence, at this juncture in the
`proceeding, that one of ordinary skill would have modified Barrie’s math
`model in view of the wagering considerations of Banana-Rama. Ex. 1005,
`74–75. Upon institution, Patent Owner will have an opportunity to present
`counter-evidence, cross-examine Petitioner’s expert, and provide further
`analysis as to why Petitioner’s analysis and supporting evidence does not
`meet the requisite standard.
`Patent Owner asserts further that Barrie does not disclose the recited
`“change group outcome,” construed above as “an outcome that requires the
`player to make the next selection from a different selection group,” because
`Barrie allows a player the option of cashing-out instead of making another
`selection from a different selection group. As an in initial matter, we
`disagree that the aforementioned construction of “change group outcome”
`requires a selection in every scenario; it only requires a next selection, if it is
`made, to be from a different selection group. To that end, Petitioner asserts,
`and we agree at this stage of the proceeding, that:
`The combination of Barrie with Banana-Rama renders
`obvious this limitation. Barrie, itself, discloses that a winning
`door of the win subclass acts as a change group outcome by
`advancing the player to a new group of doors to select from. See,
`e.g. Ex. 1013, 2:41-52 (describing a player selecting a “win
`class” door and advancing to a new group of doors); Ex. 1014,
`¶71. The win subclass door is a change group outcome because
`should the player decided to continue he must make the next
`selection from a different selection group. Ex. 1014, ¶67. While
`the win subclass door does allow the player to terminate the game
`instead of advancing, the player of any gaming machine always
`has this option as the player can walk away from a gaming
`machine or cash out. Id. Accordingly the win-class door is a
`“change group outcome” because the player’s next selection is
`from a different selection group. See §V.C.2; Ex. 1014, ¶67.
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`Pet. 25–26. Additionally, Patent Owner’s assertion is misplaced, as the
`option of cashing-out subsequent to selecting a “win class” door in Barrie is
`a “next selection from a different selection group.”
`Patent Owner asserts additionally that Banana-Rama does not disclose
`the recited “change group outcome.” Patent Owner’s assertion is misplaced,
`as Petitioner cites Barrie’s “win class” door as corresponding to the recited
`“change group outcome.”
`Patent Owner asserts also that modifying the “win class” door of
`Barrie in view of the “Super Collect” of Banana-Rama would not result in
`the recited “win-group outcome,” because the “Super Collect” of Banana-
`Rama is a terminator. Patent Owner’s assertion is misplaced, as Petitioner is
`not making a wholesale replacement of the “win class” door of Barrie with
`the “Super Collect” of Banana-Rama; the proffered modification retains the
`features of the “win class” door of Barrie and merely adds the “Super
`Collect” feature of Banana-Rama.
`Patent Owner asserts further that Petitioner’s proffered combination of
`Barrie and Luigi’s Pizzeria does not result in the recited “achievement
`outcome,” construed above as “a bonus value for reaching the end of the
`bonus game without selecting a termination outcome,” because the
`multiplier in Luigi’s Pizzeria, the alleged “achievement outcome,” is applied
`automatically, and not subject to the condition of “reaching the end of the
`bonus game without selecting a termination outcome.” Patent Owner’s
`assertion is misplaced, as Petitioner proffers the following concerning the
`relevant modification of Barrie in view of Luigi’s Pizzeria:
`A POSA would be motivated to modify the end of Barrie’s
`selection group game so that the game culminated in a more
`exciting ending and provided the player an additional award.
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`The Barrie game ends in a final selection group where the player
`selects between two doors: one reveals a lady bearing money,
`the other reveals a termination outcome: a tiger that eats the
`player. Ex 1013, 2:69-76, Fig. 8; Ex. 1014, ¶81. Barrie does not
`describe the number of doors in the penultimate selection group
`and therefore a POSA would recognize that this ending—in
`terms of its looks and gameplay—may be similar to the
`preceding selection group. Ex. 1014, ¶81. For example, the
`penultimate selection group could also contain two doors. See
`id. Moreover, other selection groups described by Barrie already
`contained doors with a lady bearing money and a tiger that eats
`the player. See Ex. 1013, 2:53-68; Ex. 1014, ¶81. This similarity
`might cause player confusion as to whether he had reached, and
`selected the winning door from the last group in the game. Ex.
`1014, ¶82.
`A POSA would see an opportunity to provide a more
`engaging end sequence. Id. A more engaging ending that
`presents a player with additional story elements and an additional
`reward—that is, an achievement outcome—for advancing
`through all available selection groups without selecting a
`termination outcome would increase player excitement and
`motivate a player to play again. Ex. 1014, ¶82.
`An additional award at the end of a selection group was a
`known concept and taught, for example, by Luigi’s Pizzeria. In
`Luigi’s Pizzeria’s bonus game, the player is presented a selection
`group of eight to ten symbols represented as pizza toppings. Ex.
`1014, ¶83; Ex. 1017 at 154. Each topping has an associated
`award value. Ex. 1014, ¶83; Ex. 1017 at 154. Depending on how
`much was wagered, the player selects up to five toppings and
`“accumulate[s]” the associated awards. Ex. 1014, ¶83; Ex. 1017
`at 154. Then, after the last selection in the selection group, a
`virtual chef named “‘Luigi’ will finish making your pie, put it in
`the oven, and when it comes out you get a bonus multiplier for
`your accumulated bonus amount.” Ex. 1014, ¶83; Ex. 1017 at
`154.
`
`A POSA would at once recognize that adding a similar
`additional reward after the player had avoided all termination
`outcomes in all selection groups (i.e. surviving to the last
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`selection group and selecting the door with the lady) would make
`the end sequence of the Barrie game more engaging, provide
`more lucrative payouts, and add enjoyment to the player. Ex.
`1014, ¶84. A POSA would easily fit this additional award into
`the theme of Barrie. Id. For example, when the player selects
`the winning door in the last round, the player’s character, a
`prince, could kiss or “run off” with the lady to an exotic
`destination as the player receives an additional award, much like
`the player receives his additional, achievement award when
`Luigi bakes the pizza. Id. Regardless of the precise form of
`implementation, a POSA would expect success in increasing the
`player’s excitement and entertainment level as he nears and then
`receives the achievement bonus. Id.
`Pet. 29–31. On this record and at this juncture in the proceeding, we are
`persuaded that Petitioner has provided sufficient analysis and supporting
`evidence showing that one of ordinary skill would have made the proffered
`modification. Upon institution, Patent Owner will have an opportunity to
`present counter-evidence, cross-examine Petitioner’s expert, and provide
`further analysis as to why Petitioner’s analysis and supporting evidence does
`not meet the requisite standard.
`For dependent claims 2 and 3, Patent Owner asserts that Petitioner’s
`proffered modifications are impermissible hindsight conclusions with no
`evidentiary support. On this record and at this juncture in the proceeding,
`we are persuaded that Petitioner has provided sufficient evidence and
`analysis in support of their proffered modifications for these claims.
`Dependent claim 5 recites “wherein the win-group outcome includes
`all of the bonus values associated with the symbols in said group not
`previously selected by the player.” Patent Owner asserts:
`With respect to Claim 5, for example, Aristocrat baldly (and
`confusingly) states that “if the player selects [a] door on the win
`subclass (as modified with a win-group outcome as taught by
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`
`Banana-Rama), this will be the player’s first and only selection
`from among that group of doors.” Id. at 37. Not only is this
`statement impenetrable, it finds no support in the prior art.
`Prelim. Resp. 42–43. We disagree. Petitioner asserts, and we agree at this
`stage of the proceeding, that in the scenario where a player selects only one
`door in a group in Barrie, and that door, as modified by Banana-Rama, is a
`“Super Collect,” the player will collect all bonus values behind every door in
`that group, as no other door in that group was previously selected.
`For dependent claim 7, Patent Owner objects to the use of the words
`“would” and “should” in conjunction with conclusions untethered to
`evidence. We, however, are unpersuaded that “would” and “should” are
`improper in the context of obviousness, and in any case, Petitioner does cite
`to portions of Barrie in support of its conclusions concerning the
`obviousness of dependent claim 7.
`Patent Owner makes assertions for claims 8–26 and 29–35 similar to
`those set forth above for claims 1–7. They are unpersuasive for the same
`reasons as set forth supra.
`
`Conclusion
`3.
`On this record, we are persuaded that Petitioner has shown a
`reasonable likelihood that claims 1–26 and 29–35 are unpatentable over a
`combination of Barrie, Banana-Rama, and Luigi’s Pizzeria.
`
`C. Dependent Claims 26, 27, 36, and 37 as
`Unpatentable over Barrie, Banana-Rama, Luigi’s Pizzeria, and
`Walker
`Petitioner contends that dependent claims 26, 27, 36, and 37 are
`unpatentable over and combination of Barrie, Banana-Rama, Luigi’s
`Pizzeria, and Walker. Pet. 58–60 (citing Exs. 1011, 1014). Specifically,
`
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`IPR2016-00491
`Patent 6,932,701
`
`dependent claims 26, 27, 36, and 37 each recite “data network,” and
`Petitioner cites Walker for disclosing that data network. Patent Owner does
`not make specific assertions concerning dependent claims 26, 27, 36, and 37,
`other than to say that Walker does not remedy the aforementioned
`deficiencies of Barrie, Banana-Rama, Luigi’s Pizzeria with respect to the
`independent claims from which claims 26, 27, 36, and 37 depend. PO Resp.
`49–50. As set forth above, however, we are unpersuaded that there are such
`deficiencies.
`On this record, we are persuaded that Petitioner has shown a
`reasonable likelihood that dependent claims 26, 27, 36, and 37 are
`unpatentable over and combination of Barrie, Banana-Rama, Luigi’s
`Pizzeria, and Walker.
`
`Assignor Estoppel and Judicial Estoppel
`D.
`Patent Owner asserts that the equitable doctrines of judicial estoppel
`and assignor estoppel apply to Petitioner, and, thus, on that basis, the instant
`proceedings should be denied. Prelim. Resp. 7–15.
`
`Assignor Estoppel
`1.
`Turning first to assignor estoppel, while Patent Owner acknowledges
`that other panels of the Board have declined to apply assignor estoppel,
`Patent Owner asserts that those panels were in error, and requests that this
`panel apply assignor estoppel in the instant proceeding. We decline to do so
`based on our agreement with the reasoning set forth in other Board
`decisions. See B/E Aerospace, Inc. v. MAG Aerospace Indus., LLC, Case
`IPR2014-01513, slip. op. at 20–21 (PTAB Mar. 18. 2016) (Paper 104);
`Arista Networks, Inc. v. Cisco Sys., Inc., Case IPR2015-00978, slip. op. at 7–
`8 (PTAB Oct. 6, 2015) (Paper 7).
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`
`Patent Owner further cites to American Fence Co. v. MRM Security
`Systems, Inc., 710 F. Supp. 37 (D. Conn. 1989) for the proposition that
`assignor estoppel prevents Petitioner from benefiting from any putative
`claim cancellation it may be able to obtain from the Office concerning the
`patent at issue. Prelim. Resp. 14. Patent Owner’s assertions are misplaced.
`In American Fence Co., the district court determined the manner in which
`assignor estoppel would be applied in the district court proceeding. Indeed,
`we note that in that proceeding, the district court did not opine on the ability
`of the Office to apply assignor estoppel, nor did the district court prevent the
`continuation of the reexamination proceeding.
`2.
`Judicial Estoppel
`Our analysis concerning judicial estoppel is similar to that concerning
`assignor estoppel, namely, that absent express statutory authority, we are
`unpersuaded that judicial estoppel is applicable in inter partes review
`proceedings. See Ceramtec GMBH v. Ceramedic LLC, Case IPR2015-
`01328, slip. op. at 15 (PTAB Dec. 16, 2015) (Paper 23).
`Moreover, even if it were applicable, we are unpersuaded that the
`underlying facts support a determination that judicial estoppel would be
`appropriate in this case. Specifically, Patent Owner evidently asserts that the
`following two positions taken by Petitioner are in conflict: (1) that in
`arguing there was no need for an injunction to prevent Petitioner from filing
`an IPR petition on the ’701 patent, and other related patents, Petitioner told
`Article III courts that the likelihood of cancellation of IGT’s patents in the
`IPR were “remote and speculative”; (2) that in the Petition, Petitioner
`certified that there is a “reasonable likelihood” that Petitioner will succeed in
`having one or more claims of the ’701 patent cancelled as unpatentable.
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`IPR2016-00491
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`Prelim. Resp. 7. As an initial matter, we are unclear as to the exact theory
`under which Patent Owner asserts judicial estoppel is applicab