UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`IGT,
`Petitioner,
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`v.
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`ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.,
`Patent Owner.
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`Case IPR2016-01170
`U. S. Patent No. 7,326,113
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`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IGT,
`Petitioner,
`
`v.
`
`ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.,
`Patent Owner.
`
`Case IPR2016-01170
`U. S. Patent No. 7,326,113
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`I.
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`II.
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`IPR2016-01170
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`TABLE OF CONTENTS
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`Introduction. .................................................................................................... 1
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`The Declaration Of Petitioner’s Expert, A Recently Employed
`Member Of Its Legal Department, Is Entitled To No Weight........................ 2
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`III. The Invention Claimed In the ’113 Patent Involves the Novel Use Of
`Special Symbols That Overlie Symbols On A Reel And That Are
`Held In A Superimposed Representation In At Least One Further
`Game. .............................................................................................................. 5
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`IV. Petitioner’s Ground 1 Of Invalidity, That Claims 1−5 Are
`Unpatentable Over The Combination Of Legato And Timperley, Fail
`Without Mr. Michaelson’s Declaration. ......................................................... 6
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`A.
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`B.
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`C.
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`D.
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`Petitioner Has Failed To Show That Legato Is Prior Art Under
`35 U.S.C. § 102. ................................................................................... 7
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`The Teachings Of Legato And Timperley Fail To Render
`Challenged Claims 1−5 Unpatentable. ................................................. 8
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`Petitioner’s Reliance On A Former Employee’s Declaration To
`Favorably Interpret And Combine Legato With Timperley Is
`Insufficient To Render The Challenged Claims Unpatentable. ......... 11
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`Petitioner’s Reliance On Legato In Combination With
`Timperley In Further Combination With The Declaration Of
`Mr. Michaelson Is Insufficient To Render Claim 5
`Unpatentable. ...................................................................................... 14
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`V.
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`Petitioner’s Ground 2 Of Invalidity, That Claims 6−11 Are
`Unpatentable Over the Combination of Legato, Timperley, And
`Bennett, Fail Without Mr. Michaelson’s Declaration. ................................. 14
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`VI. Conclusion. ................................................................................................... 17
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`–i–
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`IPR2016-01170
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 16
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`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................................................................ 7
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`In re Wyer,
`655 F.2d 221 (C.C.P.A. 1981) .............................................................................. 7
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`Statutes
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`35 U.S.C. § 102 ................................................................................................ 7, 8, 15
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`Other Authorities
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`37 C.F.R. § 42.65(a) ........................................................................................... 12, 13
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`–ii–
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`IPR2016-01170
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`LIST OF EXHIBITS
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`EXHIBIT
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`DESCRIPTION
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`Ex. 2001
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`Complaint for Patent Infringement, IGT v. Aristocrat Techs., No.
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`2:15-cv-00473 (D. Nev. Mar. 16, 2015)
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`Ex. 2002
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`Declaration of Richard Michaelson, Aristocrat Techs. v. Int’l Game
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`Tech., No. 5:06-cv-03717 (N.D. Cal. June 2, 2009)
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`–iii–
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`I.
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`Introduction.
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`Patent Owner Aristocrat Technologies Australian Pty Ltd. (“Aristocrat” or
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`“Patent Owner”) hereby submits the following preliminary response to the Petition
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`filed by IGT (“IGT” or “Petitioner”) on June 8, 2016, requesting inter partes
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`review of claims 1−11 of U.S. Patent No. 7,326,113 (the “’113 Patent”). Aristocrat
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`requests that the Board deny inter partes review as to all grounds of IGT’s Petition.
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`As explained below, all grounds in IGT’s Petition fail to satisfy the legal standard
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`for instituting inter partes review. Moreover, Patent Owner submits that IGT’s
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`Petition relies on the biased statements of a recently-employed member of its legal
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`department, Richard Michaelson, who was in IGT’s legal department at the time
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`IGT analyzed and decided to file its lawsuit against Aristocrat. Mr. Michaelson’s
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`close association with Petitioner over the course of twenty years, including at
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`senior positions throughout the company, renders him a mere extension of
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`Petitioner. His declaration should be afforded little to no weight, and the
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`statements contained therein should be treated as Petitioner’s own opinions rather
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`than as impartial expert testimony. Absent Mr. Michaelson’s declaration,
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`Petitioner fails to provide a motivation to combine references to support its
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`obviousness claim.
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`II.
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`IPR2016-01170
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`The Declaration Of Petitioner’s Expert, A Recently Employed Member
`Of Its Legal Department, Is Entitled To No Weight.
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`Petitioner relies on the declaration of Richard Michaelson to challenge the
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`claims of the ʼ113 Patent as unpatentable based on a combination of references.
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`Given Mr. Michaelson’s long tenure with IGT, his work in patent enforcement for
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`IGT in the months leading up to the filing of the patent infringement lawsuit
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`against the Patent Owner in the present proceeding, and his immediate retention by
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`IGT as a “consultant” upon his retirement, Mr. Michaelson’s testimony cannot
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`reliably be credited. Rather, Mr. Michaelson’s testimony should be considered
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`nothing more than the biased opinion of his long-time employer, IGT.
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`Mr. Michaelson was an IGT employee for twenty years, and retired from
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`IGT only last year, in 2015. Michaelson Decl., Ex. 1007, ¶¶ 10, 16–19. Mr.
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`Michaelson first worked for IGT as an engineer from 1981 through 1985. Id. at
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`¶ 10. When he returned to IGT in 2000, he did so as a “Staff Engineer,” a position
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`Mr. Michael describes as “the highest classification of engineer at IGT at the time.”
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`Id. at ¶ 16. In 2004, he moved from his senior engineering position to a role in
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`IGT’s Intellectual Property Management (“IPM”) department, a group IGT created
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`“to systematically evaluate, categorize, and maintain IGT’s substantial portfolio of
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`intellectual property.” Id. at ¶ 17. Mr. Michaelson spent the remaining eleven
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`years of his career at IGT (from 2004 through 2015) working to support IGT’s
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`patent programs. Id. at ¶¶ 17, 19. For the last eight of those years (from 2007
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`IPR2016-01170
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`through 2015), he worked alongside IGT’s in-house lawyers in the legal
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`department. Id. at ¶ 18. His responsibilities in this role included, among others,
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`“examination of competitor machines to identify infringements of IGT patents.”
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`Id. After devoting more than a decade of his career to assisting IGT with its patent
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`portfolio management and enforcement programs, Mr. Michaelson retired in 2015.
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`Id. at ¶ 19. He continues, however, to serve as a consultant to IGT. Id.
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`Petitioner IGT filed its complaint for patent infringement against Patent
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`Owner on March 16, 2015. Ex. 2001. As a member of IGT’s legal department in
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`the months leading up to filing of the lawsuit, Mr. Michaelson would have been
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`involved with, or at a minimum had access to, the decision to bring suit against
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`Patent Owner. Mr. Michaelson’s transition from an IGT employee to “independent
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`expert” occurred approximately concurrently with the start of the litigation.
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`The Petition involves a patent that Patent Owner asserted against IGT in a
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`counter-claim in response to IGT’s lawsuit. Although the parties are continuing to
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`litigate U. S. Patent No. 8,298,064 (“the ’064 Patent”) which is related to the ’113
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`Patent in the litigation along with several other Aristocrat and IGT patents, IGT
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`has not disclosed Mr. Michaelson as an expert in the litigation or indicated that
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`IGT intends to use him in those proceedings. Accordingly, at least at this time, it
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`appears IGT is using Mr. Michaelson only in IPR proceedings before the Board.
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`IPR2016-01170
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`In addition to being a recent IGT-insider, Mr. Michaelson also has served as
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`Petitioner IGT’s company representative in litigation adverse to Patent Owner. In
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`2009, Mr. Michaelson testified at deposition as IGT’s corporate representative and
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`submitted declarations on behalf of Petitioner in patent litigation against Patent
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`Owner. See, e.g., Ex. 2002 at 1 (“On May 28, 2009, I testified on behalf of
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`defendants
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`in a Rule 30(b)(6) noticed by
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`the Aristocrat plaintiffs[.]”).
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`Accordingly, his present declaration simply revives his role as the company’s
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`designated spokesman against Patent Owner.
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`In sum, Petitioner’s “expert” is its longtime employee who spent more than
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`half of his 20-year career managing and enforcing IGT’s intellectual property as a
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`member of Petitioner’s IPM and legal departments—including at the time
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`Petitioner analyzed and launched the lawsuit that led to this Petition—and who has
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`a history of being adverse to Patent Owner in patent litigation. Petitioner cannot
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`credibly claim that swapping Mr. Michaelson’s employee hat for a consulting hat
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`suddenly renders him an unbiased expert. Mr. Michaelson’s close association with
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`Petitioner makes him akin to a party witness, and his testimony should be accorded
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`no weight.
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`III. The Invention Claimed In the ’113 Patent Involves the Novel Use Of
`Special Symbols That Overlie Symbols On A Reel And That Are Held
`In A Superimposed Representation In At Least One Further Game.
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`The ’113 Patent is directed to the improvement of a game played on a
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`gaming machine in which a “special” or “bonus symbol[,]” when it appears on the
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`display device, is held in a superimposed representation in a symbol position
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`during the play of a spinning-reel game while the underlying reel is re-spun for at
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`least one further game. See, e.g., Ex. 1001 at claim 1.
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`Petitioner and its declarant, Richard Michaelson, acknowledge that the prior
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`art historically taught to hold symbols in place by holding the entire reel in place.
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`See Ex. 1007, ¶¶ 40−44 (describing the history of games with “held reels” and
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`noting that the ’113 Patent “holds symbols rather than entire reels”) (emphasis
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`added). This prior art did not involve superimposed symbols held over the reels.
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`See id. In fact, it did not involve superimposed symbols in any form. See id.
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`The prior art that disclosed superimposed symbols did not use these symbols
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`during subsequent games during which the symbols would be held in a
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`superimposed representation of a symbol position. To the contrary, as noted by
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`Petitioner and Mr. Michaelson, the state of the art warned against superimposing
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`images “if they obliterate a part of the game image that would be used to display
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`the outcome of the game[.]” Pet. at 20 (citing Ex. 1007, ¶ 69 and Ex. 1005 at
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`3:5−11); Ex. 1007, ¶ 69 (citing Ex. 1005 at 3:5−7). As a result, the use of
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`IPR2016-01170
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`superimposed images at the time of the invention was limited and included (1)
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`animated characters, e.g., “sprites,” that would move about the screen and (2)
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`functional images, such as “Reserved” messages, displayed when a game was
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`dormant. See Ex. 1005 (Timperley) at 4:28−5:2.1
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`Unlike the prior art, the ’113 Patent requires that “during the play of the
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`game the reels are spun to cause the symbols to be randomly displayed on the
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`display means” wherein the game has “one or more special symbols which
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`randomly appear on the display means, each special symbol when it appears,
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`overlying one of the symbols on the reel game, said special symbol, when it
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`appears, having the capacity to alter the results of the game.” Ex. 1001 at claim 1
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`(emphasis added). The ’113 Patent further requires that the “special symbol . . .
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`[be] held in a superimposed representation” “for at least one further game . . . .” Id.
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`(emphasis added).
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`IV. Petitioner’s Ground 1 Of Invalidity, That Claims 1−5 Are Unpatentable
`Over The Combination Of Legato And Timperley, Fail Without Mr.
`Michaelson’s Declaration.
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`Petitioner alleges that the “purported invention of the ’113 Patent was
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`known and disclosed in the art before the priority date for the patent.” Pet. at 10.
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`1 Timperley (Ex. 1005) was published on March 2, 2000, just a few days before the
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`March 31, 2000 priority date of the ’113 Patent.
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`IPR2016-01170
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`Petitioner’s argument improperly relies on hindsight and the declaration of its
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`former employee to cherry-pick features from the prior art using the claims of
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`the ’113 Patent as a guide. Petitioner fails to identify any reason to modify Legato
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`(Ex. 1003) and Timperley (Ex. 1005) other than the unsupported statements of its
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`former employee to arrive at the claimed invention.
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`A.
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`Petitioner Has Failed To Show That Legato Is Prior Art Under 35
`U.S.C. § 102.
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`Legato is a two-page document, only a portion of which includes a high-
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`level description of three hold-and-spin games manufactured by Aristocrat:
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`“Tequila Sunrise,” “Sweet Hearts II,” and “Chicken.” See Ex. 1003. Petitioner
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`relies on Legato as its primary reference.
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`Petitioner has failed to show that Legato qualifies as a “printed publication,”
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`and consequently, has failed to show that it is prior art under pre-AIA 35 U.S.C.
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`§ 102(a) or (b). A reference is considered to be a “printed publication” provided
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`the publication was publicly accessible to persons concerned with the art to which
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`the document relates. See In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981). A
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`reference is publicly accessible “upon a satisfactory showing that such document
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`has been disseminated or otherwise made available to the extent that persons
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`interested and ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
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`1340, 1350 (Fed. Cir. 2008) (internal quotation marks omitted).
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`IPR2016-01170
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`Petitioner submits a photographed copy of Legato (Ex. 1003). Legato has a
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`footer, “Casino Journal September 1998,” but no other information is provided on
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`the face of the document regarding its publication. The photographed copy does
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`not even identify the name of the author of the article. Petitioner offers the
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`statements of Mr. Michaelson that “Casino Journal” was “widely distributed and
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`widely-read [] in the gaming industry . . . [as] one of several trade publications that
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`a POSA would have read on a regular basis in order to keep abreast of
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`developments in the industry.” Ex. 1007, ¶ 50. Solely on the basis of unsupported
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`statements by Mr. Michaelson, who has no apparent connection to the “Casino
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`Journal” magazine, Petitioner concludes that Legato was published in September
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`1998. See Pet. at 10. Petitioner proffers no evidence regarding the public
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`accessibility of Legato prior to the critical date and has failed to show that it
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`qualifies as a “printed publication” under pre-AIA 35 U.S.C. § 102(a) or (b). As
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`such, all grounds based on Legato should be denied.
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`B.
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`The Teachings Of Legato And Timperley Fail To Render
`Challenged Claims 1−5 Unpatentable.
`According to Legato, “Tequila Sunrise” and “Sweet Hearts II” have scatter-
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`pay symbols that, if they appear on the reels, are “held in place for three free spins.”
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`Ex. 1003 at 52. Legato similarly describes “Chicken” as featuring “scatter-pay
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`symbols [that] stay in place for [] three free spins.” Id. at 53.
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`IPR2016-01170
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`Petitioner acknowledges that Legato does not disclose claim 1’s requirement
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`that the “special symbol[,] when it appears, [is] overlying one of the symbols on
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`the reel game[.]” (internal quotation marks omitted). Pet. at 18 (“The limitation
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`that the ‘special symbol’—when it appears—is ‘overlying one of the symbols on
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`the reel game’ is not explicitly stated in Legato.”). Petitioner further admits that
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`Legato does not disclose the “special symbol being held in a superimposed
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`representation in that position.” (internal quotation marks omitted). Id. at 21
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`(“Legato does not explicitly disclose that the ‘special symbol’ is held in a
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`‘superimposed representation.’”). In addition, Petitioner waivers on whether the
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`additional limitation of claim [1b] that the “special symbol, when it appears,
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`having the capacity to alter the results of the game” is actually disclosed by Legato.
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`Id. at 18 (internal quotation marks omitted). Unable to find any explicit disclosure
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`of these limitations in Legato, Petitioner relies on the declaration of Mr.
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`Michaelson to satisfy these missing limitations by combining Legato with
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`Timperley.
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`Timperley discloses an image that can be superimposed over another symbol.
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`See Ex. 1005 at 3:17−27. But as Petitioner admits, Timperley does not disclose
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`claim 1’s requirement of holding the bonus symbol for at least one further game
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`while the reels are re-spun. See Pet. at 14−15 (noting the Examiner’s finding that
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`IPR2016-01170
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`Timperley “did not disclose the limitation that symbols are held in position for a
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`subsequent game” is “appropriate”).2
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`Petitioner fails to identify any suggestion in either Legato or Timperley that
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`would lead a POSA to combine the references. To the contrary, as Mr. Michaelson
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`acknowledges, Timperley cautions that regulations impose limits on the use of
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`superimposed symbols, particularly those that interfere with a “game image that
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`would be used to display the outcome of a game.” Ex. 1007, ¶ 69 (citing Ex. 1005
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`at 3:5−7). In contrast, the ʼ113 Patent requires the superimposed symbols to have
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`“the capacity to alter the results of the game.” Ex. 1001 at claim 1.
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`Petitioner argues that the references themselves provide the motivation to
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`combine because both “describe similar gaming machines with ‘game control
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`means’ and ‘display means’ . . . [and] each employs ‘special symbols’ and ‘special
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`or bonus symbols’ that can lead to variations in subsequent games and/or affect the
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`outcome of the games.” Pet. at 18. (citing Exs. 1001, 1005). But almost all
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`gaming machines require a control means and a display means, and Mr.
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`Michaelson admits that special symbols such as “wild” symbols have been used
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`“for decades.” Ex. 1007, ¶ 38. The ʼ113 Patent claims special symbols with
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`2 The Examiner considered Timperley in the prosecution of the ’113 Patent,
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`ultimately finding that the claimed invention was not obvious. See Pet. at 14−15.
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`IPR2016-01170
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`particular characteristics, and the “similarities” shared by Legato and Timperley
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`fall far short of providing a motivation to combine the references in a manner that
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`results in the claimed invention.
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`Petitioner ultimately is forced to rely on a multi-page narrative from Mr.
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`Michaelson offering his opinions and conclusions to create a motivation to
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`combine the references that is not present in the references themselves. See, e.g.,
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`Pet. at 19 (citing Ex. 1007, ¶¶ 30−32, 59, 67, 70); id. at 22 (citing Ex. 1007, ¶¶ 47,
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`49, 59, 67−68; id. at 23−24 (citing Ex. 1007, ¶¶ 43−44).
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`C.
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`Petitioner’s Reliance On A Former Employee’s Declaration To
`Favorably Interpret And Combine Legato With Timperley Is
`Insufficient To Render The Challenged Claims Unpatentable.
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`Petitioner cites to Mr. Michaelson’s declaration no fewer than 15 times to
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`support its allegation that a POSA would have been motivated to modify the prior
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`art to include a special symbol having the claimed characteristics. See Pet. at
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`19−24 (citing to Ex. 1007, ¶¶ 30−32, 43−44, 47, 49, 57, 59, 63−70). At the outset,
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`Mr. Michaelson was a long-term employee of Petitioner who spent the past decade
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`working in Petitioner’s Intellectual Property Management and legal departments.
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`See Section II, supra. Petitioner’s former employee thus bears all the hallmarks of
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`a biased witness and his opinions should be given little or no weight. See id.
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`Without the support of Mr. Michaelson’s declaration, Petitioner’s argument
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`collapses as Petitioner’s only other support for a motivation to combine are
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`IPR2016-01170
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`conclusory statements that (1) both references share generic hardware common to
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`almost all gaming machines and (2) both use special symbols (albeit differently
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`and for different purposes). See Pet. at 18 (“[I]t would have been obvious to a
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`POSA to combine Legato with Timperley . . . Both [references] describe similar
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`gaming machines with ‘game control means’ and ‘display means.’”).
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`Moreover, Mr. Michaelson’s declaration should be given little or no weight
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`according to 37 C.F.R. § 42.65(a) because it fails to provide evidentiary support for
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`his proposed modifications to align the prior art with the claim limitations. Instead
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`of citing to concrete extrinsic evidence, Mr. Michaelson’s declaration is filled with
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`unsupported opinions.
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`Mr. Michaelson’s opinion regarding a motivation to combine begins with
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`statements in Timperley regarding the desirability of “increas[ing] appeal to
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`players” by “‘provid[ing] complexity in the numbering and combinations of indicia
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`which [can] result in a win’” in order to “‘keep their interest in a particular game.’”
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`Ex. 1007, ¶ 67. The goal of keeping a player interested in a game using complex
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`numbering and combinations did not lead Timperley to the claimed invention, and
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`it provides no motivation to modify Legato which had its own features for
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`generating player interest.
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`Mr. Michaelson’s declaration then turns to the ʼ113 Patent itself and
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`compares an image in the ʼ113 Patent with an image from Timperley. See Ex.
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`1007, ¶¶ 67−68 (comparing Figure 5b from the ’113 Patent with Figure 3 from
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`Timperley). But despite visual similarities while the images are static, the image
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`from Timperley does not meet the claim’s requirement that the symbols be held in
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`subsequent games to alter the results of a game. See Ex. 1001 at claim 1.
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`Mr. Michaelson admits in his very next paragraph that Timperley warns
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`about “certain regulations [that] prohibit using certain symbols to obliterate other
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`symbols on the reel that ‘display the outcome of a game.’” Ex. 1007, ¶ 69 (citing
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`Timperley (Ex. 1005) at 3:5−7). The ʼ113 Patent claims require the opposite—i.e.,
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`the superimposed symbol must “alter the results of the game.” Ex. 1001 at claim 1.
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`Mr. Michaelson’s declaration then opines, without factual support, as to
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`what he “believes,” what he considers a “straightforward and obvious way to
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`depict a symbol,” and what he thinks would be “visually appealing for the player.”
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`Ex. 1007, ¶ 70. These opinions are devoid of any “underlying facts or data on
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`which the opinion is based.” 37 C.F.R. § 42.65(a).
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`The biased and unsupported statements in Mr. Michaelson’s declaration are
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`insufficient to establish a motivation to combine Legato and Timperley, and
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`Petitioner fails to identify any other supporting evidence to support its proposed
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`combination. The Petition as to claims 1−5 should, therefore, be denied.
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`IPR2016-01170
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`D.
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`Petitioner’s Reliance On Legato In Combination With Timperley
`In Further Combination With The Declaration Of Mr. Michaelson
`Is Insufficient To Render Claim 5 Unpatentable.
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`Petitioner admits that neither Legato nor Timperley disclose the additional
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`limitation of claim 5 that the special symbol, “when it occurs in a bought, base
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`game is held for a predetermined number of succeeding bought, base games.” Pet.
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`at 27. Petitioner argues that “it would have been obvious to a POSA to modify
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`Legato to have the gaming machine hold the special symbols during bought, base
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`games.” Id. To support this argument, Petitioner relies exclusively on a single
`
`paragraph in Mr. Michaelson’s declaration. See id. (citing Ex. 1007, ¶ 39). But
`
`this paragraph is nothing more than Mr. Michaelson’s opinion that “[w]ild symbols
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`are very popular with players.” Ex. 1007, ¶ 39. Even if true, the popularity of wild
`
`symbols is irrelevant to the limitation of claim 5 that the special symbol, “when it
`
`occurs in a bought, base game is held for a predetermined number of succeeding
`
`bought, base games.” Ex. 1001 at claim 5. Petitioner fails to link the popularity of
`
`wild symbols with the additional limitation of claim 5, and thus the Petition as to
`
`claim 5 should be denied on this additional basis.
`
`V.
`
`Petitioner’s Ground 2 Of Invalidity, That Claims 6−11 Are
`Unpatentable Over the Combination of Legato, Timperley, And
`Bennett, Fail Without Mr. Michaelson’s Declaration.
`
`Claim 6 depends on claim 1, and claims 7−11 further depend on claim 6.
`
`Because Petitioner has failed to show that claim 1 is obvious in light of Legato and
`
`
`
`–14–
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`IPR2016-01170
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`Timperley, the Petition as to claims 6-11 should also be denied. See Section IV.A,
`
`supra.
`
`In addition to the deficiencies regarding claim 1, Petitioner fails to meet its
`
`burden that the combination of Legato (Ex. 1003), Timperley (Ex. 1005), and
`
`Bennett (Ex. 1006) renders challenged claims 6−11 unpatentable. Claim 6 adds
`
`the limitation that “a trigger condition, independent of the special symbols,
`
`commences a series of free games during which all special symbols that are spun
`
`up are held.” Ex. 1001 at claim 6. Petitioner admits that neither Legato (Ex. 1003)
`
`nor Timperley (Ex. 1005) discloses claim 6. See Pet. at 28−30 (noting that “[t]he
`
`predetermined trigger condition in Legato, unlike Claim 6 of the ’113 Patent, is
`
`based on the special symbols” and making no mention of Timperley). Petitioner
`
`once again relies on impermissible hindsight and uses the claims of the ’113 Patent
`
`as a guide to find this additional limitation in the prior art.3
`
`Petitioner fails to show a motivation to combine Legato and Timperley and
`
`Bennett. Similar to Ground 1, the Petitioner refers to generic hardware and basic
`
`3 As explained above in Section IV.A, Petitioner proffers no evidence regarding the
`
`public availability of Legato prior to the critical date and has failed to show that it
`
`qualifies as prior art under 35 U.S.C. § 102. Ground 2 should also be denied on
`
`this basis alone.
`
`
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`
`
`–15–
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`IPR2016-01170
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`features that it contends are shared by Legato and Bennett. Pet. at 30 (citing to Exs.
`
`1003 and 1006). Even accepting that both Legato and Bennett have “‘game
`
`control means’ and ‘display means’” and both have “special symbols” and
`
`“triggering conditions/events,” Petitioner does not point to any teaching in Legato
`
`or Bennett that discloses a “game control means” that uses “special symbols” and
`
`“triggering conditions/events” to operate according to the claim limitations. Id.
`
`With the exception of a passing mention to the unremarkable proposition
`
`that both Timperley and Bennett teach that it is desirable to develop “innovative
`
`game features,” Mr. Michaelson’s declaration on the combination of Legato,
`
`Timperley and Bennett cites exclusively to Bennett. See Ex. 1007, ¶¶ 73−76. Mr.
`
`Michaelson refers to the disclosure in Bennett that a “triggering event may be the
`
`random display of one or more particular symbols” or “a separate random prompt
`
`unrelated to the symbols displayed on the display means.” Id. at ¶ 76 (calling the
`
`latter type a “mystery trigger”) (internal quotation marks and citations omitted).
`
`But these quotes from yet a third reference to meet the requirements of the
`
`additional limitation of claim 6 do not establish a motivation to combine. See KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “a patent
`
`composed of several elements is not proved obvious merely by demonstrating that
`
`each of its elements was, independently, known in the prior art”).
`
`
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`–16–
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`IPR2016-01170
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`Mr. Michaelson concludes that a POSA would have been motivated to
`
`modify “the gaming machines in Legato, which utilize symbol-driven trigger
`
`events” to instead implement a “mystery trigger” because “both kinds of
`
`triggers . . . were well known.” Ex. 1007, ¶ 77. At the outset, Mr. Michaelson
`
`cites no evidence to support his statements that both kinds of trigger events were
`
`“well known” or that making this substitution would require only a “minor
`
`modification,” even if both were known. Id. In fact, Mr. Michaelson never
`
`discusses whether the gaming systems disclosed in Legato and Bennett share any
`
`commonalities that would allow a feature from one to be imported into the other.
`
`Further, Legato teaches that the “scatter-pay symbols” are special precisely
`
`because they can trigger 3 free games. Ex. 1003 at 52−53. Mr. Michaelson fails to
`
`explain why a POSA would be motivated to strip away the very characteristic that
`
`makes the symbols special in the first place.
`
`The conclusory statements of Mr. Michaelson do not provide a motivation
`
`to combine Legato, Timperley, and Bennett, and the Petition as to claims 6−11
`
`should therefore be denied.
`
`VI. Conclusion.
`Petitioner has failed to show that there is a reasonable likelihood that at least
`
`one of the challenged claims is unpatentable. For this reason, the Petition should
`
`be denied in its entirety.
`
`
`
`–17–
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`
`
`Date: September 9, 2016
`
`Respectfully submitted,
`
`IPR2016-01170
`
`
`
`An ea G. Reistef
`Registration No; 36,253
`Jay 1. Alexander
`Registration No.2 32,678
`Laura E. Muschamp
`Registration No.: 45,693
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
`
`_1g._
`
`
`
`IPRZOI6-01170
`
`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)
`
`I certify that the foregoing complies with the type-volume limitation of 37
`
`C.F.R. § 42.24 and contains 4,041 words based on the word count indicated by the
`
`word—processing system used to prepare the paper, and excluding those portions
`
`exempted by §§ 42.24(a) and (b).
`
`Date: September 9, 2016
`
`/
`
`a’
`
`«»
`
`I W“
`if
`I
`
`~ an
`
`Andrea G. Re’ er, Esq.
`Reg. No.: 36,353
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016—01170
`
`Pursuant
`
`to 37 C.F.R. §42.6,
`
`I hereby certify that on this 9th day of
`
`September 2016, the foregoing Patent Owner Preliminary Response Pursuant to 37
`
`C.F.R. § 42.107 and Exhibits 2001-2002 were served by electronic mail, by
`
`agreement of the parties, on the following counsel of record for Petitioner:
`
`Holby M. Abern (habern@ngelaw.com)
`Adam H. Masia (amasia@ngelaw.com)
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 2200
`
`Chicago, IL 60602
`
`Date: September 9, 2016
`
`
`Andrea G. Reister, Esq. I
`RegistrationlNo.: 36,253
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