IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`IGT,
`Petitioner,
`
`
`
`v.
`
`
`
`ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.,
`Patent Owner.
`
`
`
`Case No. to be Assigned
`U.S. PATENT NO. 8,298,064
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
`NO. 8,298,064 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100, et seq.
`
`
`
`
`
`
`
`

`
`
`I. 
`PRELIMINARY STATEMENT ..................................................................... 1 
`II.  MANDATORY NOTICES ............................................................................. 1 
`A. 
`Real Party-In-Interest ............................................................................ 1 
`B. 
`Related Matters ...................................................................................... 1 
`C. 
`Lead and Backup Counsel and Service Information ............................. 3 
`FEES ................................................................................................................ 3 
`III. 
`IV.  GROUNDS FOR STANDING ........................................................................ 4 
`V. 
`THE ’064 PATENT ......................................................................................... 4 
`VI.  STATUTORY GROUNDS FOR THE CHALLENGES ................................ 8 
`VII.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8 
`VIII.  CLAIM CONSTRUCTION ............................................................................ 8 
`A. 
`“Superimposed” ..................................................................................... 9 
`IX.  THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESEPCT TO AT LEAST ONE CLAIM OF
`THE ’064 PATENT ....................................................................................... 10 
`A. 
`Prior Art ............................................................................................... 10 
`1. 
`Legato ........................................................................................ 11 
`2. 
`AU-A-43488/99 (Timperley) .................................................... 13 
`3. 
`AU199917318 A1 (Bennett) ..................................................... 15 
`Ground I: Claims 1-6, 8-17, and 19-23 Are Unpatentable Under
`35 U.S.C. § 103 as Obvious Over the Combination of Legato
`and Timperley ...................................................................................... 16 
`1. 
`Claim 1 ...................................................................................... 16 
`2. 
`Claims Dependent on Claim 1 .................................................. 24 
`i
`
`B. 
`
`TABLE OF CONTENTS
`
`
`
`

`
`C. 
`
`Claim 13 .................................................................................... 31 
`3. 
`Claims Dependent on Claim 13 ................................................ 34 
`4. 
`Ground 2: Claims 7 and 18 Are Unpatentable Under 35 U.S.C.
`§ 103 as Obvious Over the Combination of Legato, Timperley,
`and Bennett .......................................................................................... 40 
`1. 
`Claims 7 and 18 Are Obvious ................................................... 40 
`CONCLUSION .............................................................................................. 42 
`
`X. 
`
`ii
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`

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`
`
`LIST OF EXHIBITS
`
`Exhibit
`1001
`1002
`1003
`
`1004
`
`1005
`1006
`
`1007
` 1008
` 1009
`
` Description
`U.S. Patent No. 8,298,064 to Bennett, et al. (“the ’064 Patent”)
`File History for U.S. Patent No. 8,298,064
`Legato, Frank, “World of Slots,” Casino Journal, Sept. 1998
`(“Legato”)
`Definition of “superimpose” in Merriam-Webster’s Collegiate
`Dictionary, Tenth Edition (1993)
`Australian Patent No. AU-A-43488/99 to Temperley (“Temperley”)
`Australian Patent Application No. AU199917318 A1 to Bennett
`(“Bennett”)
`Declaration of Richard Michaelson
`Richard Michaelson Curriculum Vitae
`Fey, Marshall; Slot Machines: A Pictorial History of the First 100
`Years (5th ed. 1997)
`
`iii
`
`

`
`I.
`
`PRELIMINARY STATEMENT
`The claimed “gaming machine” of U.S. Patent No. 8,298,064 (“the ’064
`
`Patent”) purports to add an inventive feature that bonus symbols remain in place
`
`while the reels are re-spun. Claims 1 and 13, the sole independent claims, were
`
`granted on the basis that the prior art did not disclose this feature.
`
`But, Legato, which was not before the Examiner during prosecution of the
`
`’064 Patent, discloses three different video slot machines that employ “scatter-pay”
`
`bonus symbols and “wild symbols” that remain in place for subsequent re-spins of
`
`the reels. (Ex. 1003, Legato, “World of Slots,” Casino Journal, Sept. 1998.) In
`
`light of Legato, the ’064 Patent claims nothing non-obvious over the prior art.
`
`To the extent that Legato does not disclose each limitation of the ’064 Patent
`
`claims, a person of ordinary skill in the art would have been motivated to combine
`
`Legato with additional prior art references rendering both independent Claims 1
`
`and 13 and all of the dependent claims obvious. Petitioner respectfully
`
`requests institution.
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`The real party-in-interest is IGT or Petitioner.
`
`B. Related Matters
`The ’064 Patent is currently the subject of litigation in the District of
`
`Nevada, captioned IGT v. Aristocrat Technologies, Inc. (Civil Action
`
`
`
`
`

`
`No. 2:15-cv-00473). The Patent Owner, Aristocrat Technologies Australia Pty
`
`Ltd., is a party to that litigation, as is the Patent Owner’s U.S.-based corporate
`
`relative, Aristocrat Technologies, Inc. Aristocrat Technologies filed petitions for
`
`inter partes review of five IGT patents asserted in the same litigation—U.S. Patent
`
`Nos. 6,375,570, 6,702,675, 7,303,469, 6,932,701, and D503,951. To date, the
`
`Board has instituted IPR on three of the five IGT patents. On April 28, 2016, the
`
`Board instituted IPR on the ’570 Patent. See Case IPR2016-00181 (Claims 1-13);
`
`Case IPR2016-00182 (Claims 14-25). The Board also instituted IPR on the ’469
`
`Patent on the same day. See Case IPR2016-00252. And the Board instituted IPR
`
`on the ’675 Patent on May 17, 2016. See Case IPR2016-00305 (Claims 1-17, 33,
`
`and 34); Case IPR2016-00307 (Claims 18-32, and 35-37). The Board has not yet
`
`issued its institution decisions on IGT’s ’701 Patent or ’951 Patent.
`
`Petitioner is contemporaneously filing, with this petition, a petition
`
`addressing claims of U.S. Patent No. 7,326,113. The ’064 Patent is a continuation
`
`of the ’113 Patent.
`
`
`
`2
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`

`
`C. Lead and Backup Counsel and Service Information
`Lead Counsel
`Backup Counsel
`
`Holby M. Abern (Reg. No. 47,372)
`habern@ngelaw.com
`
`Postal and Hand-Delivery Address:
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle St., Suite 2200
`Chicago, IL 60602
`T: (312) 269-8428; F: (312) 980-0864
`
`Adam H. Masia (Reg. No. 35,602)
`amasia@ngelaw.com
`
`Postal and Hand-Delivery Address:
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle St., Suite 2200
`Chicago, IL 60602
`T: (312) 269-8048; F: (312) 980-0862
`
`Service information for lead and backup counsel is provided in the
`
`designation of lead and backup counsel above. Please address all correspondence
`
`to both lead and backup counsel. Counsel for Petitioner consents to service of all
`
`documents via electronic mail.
`
`III. FEES
`The undersigned authorizes the Office to charge $26,800 ($9,600 request fee
`
`and $17,200 post-institution fee) to Deposit Account No. 502261 for the fees set
`
`forth in 37 C.F.R. § 42.15(a) for this Petition for Inter Partes Review. The
`
`undersigned further authorizes payment for any additional fees that might be due in
`
`connection with this petition to be charged to the above-referenced deposit
`
`account.
`
`
`
`3
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`

`
`IV. GROUNDS FOR STANDING
`Petitioner certifies that the ’064 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims.
`
`V. THE ’064 PATENT
`The ’064 Patent issued from U.S. Patent Application No. 11/856,613 (“the
`
`’613 Application”). The ’613 Application was a continuation of U.S. Patent
`
`Application No. 10/182,318, which eventually issued as U.S. Patent No. 7,326,113.
`
`The ’613 Application claims priority to PCT Application No. PCT/AU01/00323,
`
`which was filed on March 23, 2001. The ’064 Patent also claims priority to
`
`Australian Application No. PQ 6637, filed on March 31, 2000. Thus, documents
`
`published before March 23, 2000 are prior art under 35 U.S.C. § 102(b). All of the
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`printed publications relied upon in this petition published before March 23, 2000
`
`and thus pre-date the earliest filing date for the ’064 Patent.
`
`Slot machine games discussed in the ’064 Patent include video simulations
`
`of spinning reel-type games. (Ex. 1001, ’064 Patent, Col. 1:53-55 (“The invention
`
`is intended particularly for spinning reel-type games and, more specifically, video
`
`simulations of such games.”).) The ’064 Patent describes a gaming machine that
`
`purportedly improves slot machine games with the addition of “special” or “bonus”
`
`symbols that are held in place while the reels that carried those symbols are re-
`
`
`
`4
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`

`
`spun. (Id., Col. 2:13-15 (“The held special symbols may be superimposed over the
`
`underlying spinning reels when the reels are spun for succeeding games in the
`
`series of free games.”).) According to the specification, the bonus symbols are
`
`“superimposed” over the underlying spinning reel. (Id.)
`
`
`
`According to the Examiner, the ’613 Application was patentable because:
`
`There is no teaching or suggestion in the art of the claim limitations of
`method for operating a gaming machine comprising a plurality of symbols,
`wherein the gaming machine may visually depict at least one bonus symbol
`on the video display as being revealed to remain in place on the video
`display superimposed over a particular spinning reel while the particular
`spinning reel is re-spun a plurality of times in a series of games. In other
`words, in the event that after a bonus symbol is revealed at one of the reel
`display positions when the reel stops, the bonus symbol then continues
`thereafter to be revealed to remain in place at the same reel display position
`for a plurality of games that follow.
`(Ex. 1002, ’064 File History at 38, 6/25/12 Notice of Allowability.) The ’064
`
`Patent is quite similar to the ’113 Patent, which is the subject of a related and
`
`concurrently filed petition, in that the bonus symbols are held in place as the reel is
`
`re-spun for a subsequent series of games.
`
`Claim 1 of the ’064 Patent states:
`
`A method for operating a gaming machine having a video display unit to
`generate a video display, for providing a spinning reel game, the method
`comprising:
`controlling the video display unit to display on the video display
`representations of a plurality of spinning reels carrying symbols, including
`representing each of the spinning reels as stopping in a stopped position
`determined according to a random selection process for revealing a plurality
`
`
`
`5
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`

`
`of said symbols on the video display, and defining the plurality of spinning
`reels to carry at least one bonus symbol;
`if the revealed plurality of symbols represent a winning combination, paying
`a prize, wherein the display of said at least one bonus symbol affects
`whether the prize is paid;
`in response to said at least one bonus symbol being one of the revealed
`plurality of symbols on a particular one of said plurality of spinning reels,
`visually depicting the at least one bonus symbol on the video display as
`being revealed to remain in place on the video display superimposed over a
`particular spinning reel while the particular spinning reel is re-spun a
`plurality of times in a series of games; and
`during the series of games, displaying all bonus symbols that are revealed on
`any particular one of said plurality of spinning reels in a place on the video
`display superimposed over the particular spinning reel.
`(Ex. 1001, Claim 1.)
`
`
`
` The symbols of the ’064 Patent include a “bonus symbol” that remains in
`
`place “superimposed” when the reel is re-spun. The specification states that the
`
`“superimposed representation” can include bonus symbols that appear to “lift off”
`
`the reels and create the effect of the reels spinning behind the bonus symbols. (Id.,
`
`Col. 3:47-53 (“When the reels are spun, the bonus symbols appear to ‘lift’ off their
`
`reels and remain in place on the screen. The highlighted bonus symbols thus
`
`appear to be superimposed over the underlying reels so that the effect is of the reels
`
`spinning behind the bonus symbols.”).)
`
`Claims 2-12 are dependent claims that limit independent Claim 1 by adding
`
`further limitations.
`
`
`
`6
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`

`
`Claim 13, the other independent claim in the ’064 Patent, is similar to Claim
`
`1. The minor differences between the two are reflected below, with underlining
`
`where Claim 13 differs from Claim 1:
`
`A method for operating a gaming machine having a video display unit to
`generate a video display, for providing a spinning reel game, the method
`comprising:
`controlling the video display unit to display on the video display
`representations of a plurality of spinning reels carrying symbols, including
`showing each of the spinning reels as stopping in a stopped position
`determined according to a random selection process for revealing a plurality
`of said symbols on the video display, and defining the plurality of spinning
`reels to carry at least one bonus symbol;
`if the revealed plurality of symbols represent a winning combination, paying
`a prize, wherein the display of said at least one bonus symbol at a position
`where one of the symbols is revealed on a particular one of the plurality of
`spinning reels affects whether a prize is paid; and
`in response to said at least one bonus symbol being one of said revealed
`symbols on the particular spinning reel, visually depicting the at least one
`bonus symbol on the video display as being revealed to remain in place on
`the video display superimposed over a particular spinning reel so that it
`overlies a plurality of symbols during spinning on the particular spinning
`reel while the particular spinning reel is re-spun.
`(Id., Claim 13.)
`
`Claim 13 does not include the limitation at the end of Claim 1 that: “during
`
`the series of games, displaying all bonus symbols that are revealed on any
`
`particular one of said plurality of spinning reels in a place on the video display
`
`superimposed over the particular spinning reel.”
`
`
`
`7
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`

`
`Claims 14-23 are dependent claims that limit independent Claim 13 by
`
`adding further limitations.
`
`VI. STATUTORY GROUNDS FOR THE CHALLENGES
`This petition asserts the following challenges:
`
`Ground 1 Obviousness of Claims 1-6, 8-17, and 19-23 under 35 U.S.C. § 103
`based on Legato & Timperley
`Ground 2 Obviousness of Claims 7 and 18 under 35 U.S.C. § 103 based on
`Legato & Timperley & Bennett
`
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art (“POSA”) of the ’064 Patent at the time
`
`of the relevant priority date (March 2000) would have had at least three to five
`
`years of experience with designing and developing games for gaming machines, in
`
`particular games for gaming machines with video displays. (Ex. 1007, Declaration
`
`of Richard Michaelson, ¶ 45).
`
`VIII. CLAIM CONSTRUCTION
`In inter partes review, claim terms in an unexpired patent are construed
`
`according to their broadest reasonable interpretation in light of the specification of
`
`the patent in which they appear. 37 C.F.R. § 42.100(b); Office Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); In re Cuozzo Speed Techs.,
`
`LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015).1 Under that standard, claim terms
`
`
`1 On January 15, 2016, the United States Supreme Court granted certiorari in
`Cuozzo Speed Technologies to consider the appropriate claim-construction standard
`8
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`

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`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
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`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims should always be
`
`read in light of the specification and the teachings of the underlying patent.
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). Thus the
`
`claims “cannot be divorced from the specification and the record evidence.” Id.
`
`(internal quotes omitted).
`
`A.
`“Superimposed”
`The term “superimposed” appears in independent Claims 1 and 13, and thus
`
`in every one of the dependent claims of the ’064 Patent. The specification does not
`
`expressly define the term, but rather uses it consistently with its plain and ordinary
`
`meaning. (Ex. 1001, Cols. 1:55-57; 2:13-15 (“special symbol . . . to be
`
`superimposed over,” “special symbols may be superimposed over the underlying
`
`spinning reels”).) Thus, the specification uses the term “superimposed” to mean
`
`that a symbol appears “over” an underlying symbol or reel. The dictionary defines
`
`“superimpose” as “to place or lay over or above something.” (Ex. 1004, Merriam-
`
`Webster’s Collegiate Dictionary (10th ed. 1993).) A person of ordinary skill in the
`
`art would understand that “special symbols” could be displayed “superimposed”
`
`over the regular symbols in different ways: overlying to cover, overlying so that
`
`to be applied in IPR. The Court held oral argument on April 25, 2016. A decision
`is expected by the end of June 2016.
`
`
`
`9
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`

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`the underlying image is visible, and appearing to hover over the reel as it spins.
`
`(Ex. 1007, ¶¶ 47-49.) The broadest reasonable construction of “superimpose”
`
`should include laying over (i.e., flush with) the reel, not just laying above.
`
`(Id., ¶ 49.)
`
`IX. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESEPCT TO AT LEAST ONE CLAIM OF
`THE ’064 PATENT
`The subject matter of Claims 1-23 of the ’064 Patent is disclosed and taught
`
`in the prior art and, as explained in further detail below, the references and
`
`combinations utilized in Grounds I and II render obvious each of Claims 1-23
`
`pursuant to 35 U.S.C. § 103 and provide a reasonable likelihood that Petitioner will
`
`prevail on at least one claim. 35 U.S.C. § 314(a).
`
`A.
`Prior Art
`Paragraphs 24-44 of the Declaration of Richard Michaelson describe the
`
`state of the art of gaming machines and relevant features as of the 1999-2000
`
`timeframe. As his declaration and the relevant prior art make clear, the purported
`
`invention of the ’064 Patent was known and disclosed in the art before the priority
`
`date for the patent. For this petition, Petitioner relies on three main prior art
`
`publications: Legato, Timperley, and Bennett. A description of each is set forth
`
`below.
`
`
`
`10
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`

`
`1.
`Legato
`Legato is an article published in the Casino Journal trade publication in
`
`September 1998. The Casino Journal publication is widely disseminated
`
`throughout the gaming industry, including throughout the United States. (Ex.
`
`1007, ¶ 50.) Casino Journal is published by BNP Media based in Troy, Michigan.
`
` Legato discusses and discloses three slot machines in “video versions” that
`
`employ a “hold-and-spin” feature: “Tequila Sunrise,” “Sweet Hearts II,” and
`
`“Chicken.” (Ex. 1003 at 52.) The article describes these games as follows:
`
`‘Tequila Sunrise’ is a five-line, 25-coin video version of a game released
`previously as a three-reel, three-coin game in both video and stepper-reel
`versions. According to Causley, the game is one of two featuring a ‘hold-
`and-spin’ feature for the scatter-pay symbol. If three cactus scatter-pay
`symbols land on adjacent reels, those symbols are held in place for three free
`spins. If a fourth or fifth scatter-symbol appears during one of the free spins,
`the symbol is also held in plays [sic] for a four or five symbol payoff, along
`with any other jackpot accumulated during the bonus spins. Moreover, as
`with other games, scatter wins are multiplied by the total number of coins
`bet—which can result in huge jackpots, notes Causley.
`
`The other game incorporating the hold-and-spin feature is ‘Sweet Hearts II,’
`a nine-line, 90-coin game incorporating wild symbols in the primary game
`and a Valentine scatter-pay symbol—a pulsating heart with Cupid’s arrow
`through it. Only two of these symbols are required for a jackpot, after which
`they are held for three free spins. Other scatter symbols that appear during
`the free spins trigger another three free spins, with those symbols also held
`in place.
`*
`*
`*
`
`
`
`
`
`According to Causley, one of the strongest games to be introduced to the
`U.S. Market at the World Gaming Congress is called ‘Chicken.’
`
`
`
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`11
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`‘This has become our flagship second-screen animation game,’ he says,
`‘because it has two separate bonus features—a hold-and-spin ‘chicken’ wild
`symbol and a second screen when you line up five.’
`
`As with the other hold-and-spin games, the scatter-pay symbols stay in place
`for the three free spins. But five of them, either on a normal spin or through
`accumulated free spins, trigger the second screen.
`
`
`(Id.)
`
` “Tequila Sunrise,” “Sweet Hearts II,” and “Chicken” as disclosed in Legato
`
`necessarily include video screens that display the games, with a processor that
`
`controls the spinning of the multiple reels. (Ex. 1007, ¶ 56.) All three gaming
`
`machines were Aristocrat gaming machines, but neither the games of these gaming
`
`machines themselves—nor any written description of the games—were disclosed
`
`to the U.S. Patent Office during prosecution.
`
`“Tequila Sunrise” enters the “hold-and-spin” feature if “three cactus scatter-
`
`pay symbols” land on adjacent reels, awarding three free spins. The cactus scatter-
`
`pay symbols remain in place, while the reels spin again with the potential that more
`
`scatter-symbols may appear during these bonus spins. Similarly, “Sweet Hearts II”
`
`uses a “Valentine scatter-pay symbol,” wherein two of these symbols are required
`
`for a jackpot in which the symbols remain in place for three free spins. If more
`
`scatter symbols appear during the free spins, the “Sweet Hearts II” gaming
`
`machine will trigger another three spins with the symbols held in place. In
`
`“Chicken,” the special symbol “chicken” wild symbols are held in place, and if
`
`
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`12
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`

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`five such symbols are accumulated, the player is awarded play of a second screen
`
`game.
`
`In sum, Legato discloses the use of “special symbols” that award or result in
`
`free games or bonus spins, in which the special symbols remain in place while the
`
`reels of the game are re-spun.
`
`2.
`AU-A-43488/99 (Timperley)
`The Australian Patent Application AU-A-43488/99 entitled Gaming Console
`
`with Transparent Sprites (“Timperley”) was published on March 2, 2000.
`
`Timperley relates to gaming machines, including the video simulation of slot
`
`machines, using a set of reels. (Ex. 1005, Timperley Australian Patent Application,
`
`Col. 4:22-25 (“The present invention is applicable to video gaming consoles of the
`
`traditional poker machine style (also known as slot machines or fruit machines) in
`
`which the display means comprises a video simulation of a set of rotatable reels,
`
`each carrying a plurality of symbols.”).)
`
`Timperley discloses that images or symbols on gaming machines can be
`
`superimposed on top of one another, including the use of transparent images so that
`
`the underlying image is visible:
`
`The present invention consists in a gaming console having display means,
`and game control means arranged to control images displayed on the display
`means, the game control means being arranged to play a game wherein a
`plurality of symbols are randomly selected and displayed on the display
`means and, if a winning combination results, the console pays a prize, the
`game being characterized in that the displayed images include a first
`13
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`

`
`image component which displays basic game features and a second
`image component which displays image features which appear
`superimposed on the first image component, the second image
`component being transparent, whereby the first image component is
`visible through the second image component under the control of the
`control means.
`
`
`(Id., Col. 3:17-27.) (emphasis added.) In addition to the concept that images or
`
`symbols can be superimposed and transparent, Timperley also discloses that the
`
`underlying symbol can be completely covered by the symbol on top, or
`
`alternatively visible. Timperley states: “The second image may be variably
`
`transparent, and may be varied in transparency from ‘solid’ where the underlying
`
`first image is totally obliterated, to a faint ghost like image where the underlying
`
`image is clearly visible through the second image.” (Id., Cols. 3:3-6; 6:13-16.)
`
`Figure 3 in Timperley shows an embodiment in which the transparent second
`
`image of a ghost is seen superimposed over a still visible “K” symbol underneath
`
`it. This superimposition of a symbol is the same in the ’064 Patent, as reflected
`
`below, with the Timperley ghost symbol shown at left and Figure 5b of the ’064
`
`Patent—showing the word “Bonus” superimposed over a “J”—at right:
`
`
`
`14
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`

`
`Timperley was before the Examiner during the prosecution of the ’064
`
`
`
`Patent.
`
`3.
`AU199917318 A1 (Bennett)
`The Australian Patent Application AU199917318 A1 entitled Slot machine
`
`game with randomly-designated special symbols (“Bennett”) was published on
`
`September 9, 1999.
`
`Bennett claims a gaming machine like the ’064 Patent, including the use of
`
`“special symbols” and “triggering event[s].” (Ex. 1006, Bennett Australian Patent
`
`Application, Col. 2:9-19.) Bennett also makes clear that it applies to “video
`
`gaming machines . . . in which the display means comprises a video simulation of a
`
`set of rotatable reels, each carrying a plurality of symbols.” (Id., Col. 3:24-27.)
`
`
`
`Based on the “predetermined triggering event, a game feature [of Bennett] is
`
`invoked wherein a sprite randomly designates one or more of the symbols
`
`displayed on the display means to be treated as special symbols for that particular
`
`
`
`15
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`game and a prize is awarded for winning combinations formed with one or more of
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`the special symbols.” (Id., Col. 9:6-10.)
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`Bennett also discloses that the “triggering event” can result from a) “the
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`random display of one or more particular symbols in a particular arrangement on
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`the display means” or b) “a separate random prompt unrelated to the symbols
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`displayed on the display means.” (Id., Col. 2:24-27.)
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`B. Ground I: Claims 1-6, 8-17, and 19-23 Are Unpatentable Under
`35 U.S.C. § 103 as Obvious Over the Combination of Legato and
`Timperley
`1.
`Claim 1
`[1 preamble] A method for operating a gaming machine having a
`video display unit to generate a video display, for providing a
`spinning reel game, the method comprising:
`[1a] controlling the video display unit to display on the video
`display representations of a plurality of spinning reels carrying
`symbols, including representing each of the spinning reels as
`stopping in a stopped position determined according to a random
`selection process for revealing a plurality of said symbols on the
`video display, and defining the plurality of spinning reels to carry
`at least one bonus symbol;
`These limitations describe any generic video slot machine. (Ex. 1007, ¶ 56.)
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`Legato discloses three such video slot machines:
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`(a) “‘Tequila Sunrise’ is a five-line, 25-coin video version of a game released
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`previously as a three-reel, three-coin game in both video and stepper-reel
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`versions.” (Ex. 1003 at 52.)
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`(b) “‘Sweet Hearts II,’ a nine-line, 90-coin game incorporating wild
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`symbols in the primary game and a Valentine scatter-pay symbol—a pulsating
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`heart with a Cupid’s arrow through it.” (Id. at 52.)
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`(c) “Chicken,” which describes a gaming machine where special symbol
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`scatter-pay “chicken” symbols are held in place, and if five such symbols are
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`accumulated, the player is awarded play of a second screen game. (Id. at 53.)
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`
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`The three Aristocrat gaming machines described in Legato are video
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`versions of spinning reel games with multiple reels. (Ex. 1007, ¶ 56.) Such video
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`versions of spinning reel games were well known in 1998 at the time Legato was
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`published; they necessarily include “controlling the video display unit to display on
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`the video display representations of a plurality of spinning reels carrying symbols.”
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`(Id.) “Tequila Sunrise” includes different symbols where, depending on the final
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`symbols displayed, the game can award “four or five symbol payoff,” “other
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`jackpot[s] accumulated during the bonus spins,” and “scatter wins” resulting in
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`“huge jackpots.” (Ex. 1003 at 52.) Likewise, “Sweet Hearts II” incorporates wild
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`symbols in the primary game and Valentine scatter-pay symbols which, depending
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`on the bonus symbols displayed, can result in various jackpots. (Id.) In
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`“Chicken,” hold-and-spin “chicken wild symbols” may result in game play on a
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`second screen. (Id. at 53.)
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`17
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`The video versions of the slot machine games disclosed in Legato also
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`disclose reels that carry at least one bonus symbol. The games employ “scatter-
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`pay” special symbols and “wild symbols” that are held in place for subsequent free
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`games. (Id. at 52.) “Tequila Sunrise” includes cactus scatter-pay symbols, “Sweet
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`Hearts II” utilizes Valentine scatter-pay symbols, and “Chicken” includes hold-
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`and-spin “chicken wild symbols.”
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`[1b] if the revealed plurality of symbols represent a winning
`combination, paying a prize, wherein the display of said at least
`one bonus symbol affects whether the prize is paid;
`The special symbols disclosed in Legato may “affect[]” whether the prize is
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`paid. For example, the special “hold-and-spin” “chicken” symbol in at least the
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`“Chicken” game described in Legato describes this limitation. The “chicken”
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`symbol is described as a “wild” symbol, which necessarily has the capacity to alter
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`the results of the game. It has long been known and is well understood in the art
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`that “wild” symbols act as “substitute” symbols that substitute for other symbols
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`on the reel. (Ex. 1007, ¶ 38.) Thus, a wild symbol may result in a winning line
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`where another symbol would not. (Id.)
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`To the extent Legato does not disclose a special symbol that “affects whether
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`the prize is paid,” such bonus symbols—which substitute for other symbols—were
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`widely used and disclosed in numerous publications at the time, including
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`Timperley. For example, Timperley teaches the use of a special symbol
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`superimposed over another game play symbol which, when “acting as a wild card
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`symbol, . . . may appear to be happy and excited when it causes winning
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`combinations to occur.” (Ex. 1005, Col. 4:19-21; Fig. 3.) It would have been
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`obvious to one of skill in the art to combine Legato with Timperley to hold special
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`or bonus symbols on the reel that “affect[] whether the prize is paid.” (Ex. 1007,
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`¶ 67.) A POSA recognizes that bonus or wild symbols increase the excitement of a
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`game and can result in game loyalty and extended play, because they increase, or
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`appear to increase, the likelihood of a winning payline. (Id., ¶¶ 39, 44.) While
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`Legato discloses the holding of symbols that “affect[] whether the prize is paid,” it
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`would also have been obvious to one of skill in the art to substitute wild or bonus
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`symbols (as disclosed in Timperley and well-known in the art) for the held symbols
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`in Legato because doing so would increase player excitement and enjoyment and
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`lead to increased plays of the game. (Ex. 1007, ¶ 67.) Specifically, a POSA would
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`understand that using special wild symbols increases the quantity of winning
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`symbol combinations, since the presence of a wild symbol may turn a non-winning
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`symbol combination into a winning symbol combination. (Id., ¶¶ 39, 44.)
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`[1c] in response to said at least one bonus symbol being one of the
`revealed plurality of symbols on a particular one of said plurality
`of spinning reels, visually depicting the at least one bonus symbol
`on the video display as being revealed to remain i