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. IPR2016-01171
`U.S. Patent No. 8,298,064
`
`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 No. IPR2016-01171
`U.S. Patent No. 8,298,064
`
`PATENT OWNER PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`IPR2016-01171
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`Table of Contents
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`
`I.
`
`II.
`
`Introduction. .................................................................................................... 1
`
`The Declaration Of Petitioner’s Expert, A Recently Employed
`Member Of Its Legal Department, Is Entitled To No Weight........................ 2
`
`III. The Invention Claimed In The ’064 Patent Involves The Novel Use
`Of “Bonus” Or “Special” Symbols That Are Displayed To Remain In
`Place Superimposed Over a Reel While The Reel Is Re-Spun. .................... 5
`
`IV. Petitioner’s Ground 1 Of Invalidity, That Claims 1−6, 8−17, And
`19−23 Are Unpatentable Over The Combination of Legato And
`Timperley, Fail Without Mr. Michaelson’s Declaration. ............................... 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`Petitioner Has Failed To Show That Legato Is Prior Art Under
`35 U.S.C. § 102. ................................................................................... 7
`
`The Teachings Of Legato And Timperley Fail To Render
`Challenged Claims 1−6, 8−17, And 19−23 Unpatentable. .................. 9
`
`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. ......... 12
`
`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
`
`V.
`
`Petitioner’s Ground 2 Of Invalidity, That Claims 7 And 18 Are
`Unpatentable Over The Combination Of Legato, Timperley, And
`Bennett, Fail Without Mr. Michaelson’s Declaration. ................................. 15
`
`VI. Conclusion. ................................................................................................... 19
`
`
`
`–i–
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`
`
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`Table Of Authorities
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`IPR2016-01171
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` Page(s)
`
`Cases
`KSR Int’l. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 17
`
`Kyocera Wireless Corp. v. Int’l Trade Comm’n,
`545 F.3d 1340 (Fed. Cir. 2008) ............................................................................ 8
`
`In re Wyer,
`655 F.2d 221 (C.C.P.A. 1981) .............................................................................. 8
`
`Statutes
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`35 U.S.C. § 102 ................................................................................................ 7, 8, 16
`
`Other Authorities
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`37 C.F.R. § 42.65(a) ........................................................................................... 13, 14
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`
`
`
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`–ii–
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`
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`IPR2016-01171
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`List of Exhibits
`
`EXHIBIT
`
`DESCRIPTION
`
`Ex. 2001
`
`Complaint for Patent Infringement, IGT v. Aristocrat Techs., No.
`
`2:15-cv-00473 (D. Nev. Mar. 16, 2015)
`
`Ex. 2002
`
`Declaration of Richard Michaelson, Aristocrat Techs. v. Int’l Game
`
`Tech., No. 5:06-cv-03717 (N.D. Cal. June 2, 2009)
`
`Ex. 2003
`
`IGT v. Aristocrat Techs. Aus. Pty Ltd., Case No. IPR2016-01170,
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`Paper 1 (Petition for Inter Partes Review of U.S. Patent No.
`
`7,326,113) (P.T.A.B. June 8, 2016)
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`
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`–iii–
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`IPR2016-01171
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`I.
`
`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 1−23 of U.S. Patent No. 8,298,064 (the “’064 Patent”). Aristocrat
`
`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
`
`Petition relies on the biased statements of a recently-employed member of its legal
`
`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
`
`senior positions throughout the company, renders him a mere extension of
`
`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
`
`obviousness claim.
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`–1–
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`IPR2016-01171
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`II. The Declaration Of Petitioner’s Expert, A Recently Employed Member
`Of Its Legal Department, Is Entitled To No Weight.
`
`Petitioner relies on the declaration of Richard Michaelson to challenge the
`
`claims of the ʼ064 Patent as unpatentable based on a combination of references.
`
`Given Mr. Michaelson’s long tenure with IGT, his work in patent enforcement for
`
`IGT in the months leading up to the filing of the patent infringement lawsuit
`
`against the Patent Owner in the present proceeding, and his immediate retention by
`
`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
`
`nothing more than the biased opinion of his long-time employer, IGT.
`
`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
`
`years of his career at IGT (from 2004 through 2015) working to support IGT’s
`
`patent programs. Id. at ¶¶ 17, 19. For the last eight of those years (from 2007
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`–2–
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`IPR2016-01171
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`through 2015), he worked alongside IGT’s in-house lawyers in the legal
`
`department. Id. at ¶ 18. His responsibilities in this role included, among others,
`
`“examination of competitor machines to identify infringements of IGT patents.”
`
`Id. After devoting more than a decade of his career to assisting IGT with its patent
`
`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
`
`involved with, or at a minimum had access to, the decision to bring suit against
`
`Patent Owner. Mr. Michaelson’s transition from an IGT employee to “independent
`
`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 the ’064 Patent in the litigation along with several other Aristocrat and IGT
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`patents, IGT has not disclosed Mr. Michaelson as an expert in the litigation or
`
`indicated that IGT intends to use him in those proceedings. Accordingly, at least at
`
`this time, it appears IGT is using Mr. Michaelson only in IPR proceedings before
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`the Board.
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`–3–
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`IPR2016-01171
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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
`
`Owner. See, e.g., Ex. 2002 at 1 (“On May 28, 2009, I testified on behalf of
`
`defendants
`
`in a Rule 30(b)(6) noticed by
`
`the Aristocrat plaintiffs[.]”).
`
`Accordingly, his present declaration simply revives his role as the company’s
`
`designated spokesman against Patent Owner.
`
`In sum, Petitioner’s “expert” is its longtime employee who spent more than
`
`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
`
`Petitioner analyzed and launched the lawsuit that led to this Petition—and who has
`
`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
`
`suddenly renders him an unbiased expert. Mr. Michaelson’s close association with
`
`Petitioner makes him akin to a party witness, and his testimony should be accorded
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`no weight.
`
`–4–
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`IPR2016-01171
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`III. The Invention Claimed In The ’064 Patent Involves The Novel Use Of
`“Bonus” Or “Special” Symbols That Are Displayed To Remain In Place
`Superimposed Over a Reel While The Reel Is Re-Spun.
`
`The ’064 Patent is directed to the improvement of a game played on a
`
`gaming machine in which a “special” or “bonus symbol[,]” when it appears on the
`
`display device, is displayed to remain in place superimposed over a reel while the
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`reel is re-spun for at least one further game. See, e.g., Ex. 1001 at claims 1, 13.
`
`Petitioner and its expert, Richard Michaelson, acknowledge that the prior art
`
`historically taught to hold symbols in place by holding the entire reel in place. See
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`Ex. 1007, ¶¶ 40−44 (describing the history of games with “held reels” and noting
`
`that the ’064 Patent “holds symbols rather than entire reels”) (emphasis added).
`
`This prior art did not involve superimposed symbols displayed to remain in place
`
`over the reels. See id. In fact, it did not involve superimposed symbols in any
`
`form. See id.
`
`The prior art that disclosed superimposed symbols did not use these symbols
`
`during subsequent games during which the symbols would remain in place in a
`
`superimposed representation. To the contrary, as noted by Petitioner and Mr.
`
`Michaelson, the state of the art warned against superimposing images “if they
`
`obliterate a part of the game image that would be used to display the outcome of
`
`the game[.]” Pet. at 22−23 (citing Ex. 1007, ¶ 69 and Ex. 1005, 3:5−11); Ex. 1007,
`
`¶ 69 (citing Ex. 1005, 3:5−7). As a result, the use of superimposed images at the
`
`–5–
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`IPR2016-01171
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`time of the invention was limited and included (1) animated characters, e.g.,
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`“sprites,” that would move about the screen and (2) functional images, such as
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`“Reserved” messages, displayed when a game was dormant. See Ex. 1005
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`(Timperley) at 4:28−5:2.1
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`Unlike the prior art, the ’064 Patent requires “representing each of the
`
`spinning reels as stopping in a stopped position determined according to a random
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`selection process for revealing a plurality of said symbols on the video display”
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`wherein the game “defin[es] the plurality of spinning reels to carry at least one
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`bonus symbol[,]” and “if the revealed plurality of symbols represent a winning
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`combination, paying a prize, wherein the display of said at least one bonus symbol
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`affects whether the prize is paid[.]” Ex. 1001 at claim 1 (emphasis added).
`
`The ’064 Patent further requires “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[.]” Id. (emphasis added); see also
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`id. at claim 13 (requiring depicting the bonus symbol to “remain in place on the
`
`video display superimposed over a particular spinning reel so that it overlies a
`
`
`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 ’064 Patent.
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`–6–
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`IPR2016-01171
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`plurality of symbols during spinning on the particular spinning reel while the
`
`particular spinning reel is re-spun” (emphasis added)).
`
`IV. Petitioner’s Ground 1 Of Invalidity, That Claims 1−6, 8−17, And 19−23
`Are Unpatentable Over The Combination of Legato And Timperley,
`Fail Without Mr. Michaelson’s Declaration.
`
`Petitioner alleges that the “purported invention of the ’064 Patent was
`
`known and disclosed in the art before the priority date for the patent.” Pet. at 10.
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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 ’064 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.
`
`A.
`
`Petitioner Has Failed To Show That Legato Is Prior Art Under 35
`U.S.C. § 102.
`
`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.
`
`§ 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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`–7–
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`IPR2016-01171
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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
`
`has been disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art exercising reasonable
`
`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).
`
`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. 1005, ¶ 50. Solely on the basis of unsupported
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`statements by Mr. Michaelson, who has no apparent connection to the “Casino
`
`Journal” magazine, Petitioner concludes that Legato was published in September
`
`1998. See Pet. at 11. Petitioner proffers no evidence regarding the public
`
`accessibility of Legato prior to the critical date and has failed to show that it
`
`qualifies as a “printed publication” under pre-AIA 35 U.S.C. § 102(a) or (b). As
`
`such, all grounds based on Legato should be denied.
`
`–8–
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`IPR2016-01171
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`B.
`
`The Teachings Of Legato And Timperley Fail To Render
`Challenged Claims 1−6, 8−17, And 19−23 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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`Claim limitations [1c] and [13c] require that the bonus symbol remains in
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`place “superimposed over a particular spinning reel.” Petitioner does not cite to
`
`any teaching in Legato that the symbols are superimposed, and Legato contains no
`
`such teaching. Instead, Petitioner contends that a POSA “would understand that
`
`the ‘bonus symbol’ would appear superimposed” based on Mr. Michaelson’s
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`opinion as to how a game designer might implement the scatter-pay symbols in
`
`Legato. See Pet. at 20−21, 32-33 (citing Ex. 1007, ¶¶ 67, 70). Petitioner also
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`relies on Mr. Michaelson to argue that Legato combined with Timperley provides
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`the missing “superimposed” limitation. See id.
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`Petitioner admits that Legato does not disclose claim limitation [13c]’s
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`requirement of the “bonus symbol” “overl[ying] a plurality of symbols during
`
`spinning on the particular spinning reel.” (internal quotation marks omitted). Id. at
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`32 (“The limitation that the ‘bonus symbol’ when it appears ‘overlies a plurality of
`
`symbols during spinning on the particular spinning reels’ is not explicitly stated in
`
`Legato.’”). Petitioner also waivers on whether the limitations of claims [1b] and
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`–9–
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`IPR2016-01171
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`[13b] that the “display of said at least one bonus symbol [. . .] affects whether the
`
`prize is paid” are actually disclosed by Legato. Id. at 18, 32. Petitioner again
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`relies on the declaration of Mr. Michaelson to satisfy these missing limitations by
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`combining Legato with Timperley.
`
`Petitioner relies on Timperley for its disclosure that an image may be
`
`superimposed over another symbol. See Ex. 1005, 3:17−27. Petitioner does not
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`contend that Timperley discloses superimposed symbols that “remain in place”
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`while the “reel is re-spun a plurality of times in a series of games” as required by
`
`the claims, and indeed, Timperely contains no such suggestion. The Examiner
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`considered Timperley in the prosecution of the ’064 Patent, ultimately finding that
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`the claimed invention was not obvious. See Pet. at 15.2
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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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`2 Petitioner admits in its Petition for Inter Partes Review of the related ’113 Patent
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`(IPR2016-01170, Paper 1) that Timperley does not disclose claim 1’s requirement
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`of holding the bonus symbol for at least one further game while the reels are re-
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`spun. See Ex. 2003 at 14−15 (noting the Examiner’s finding that Timperley “did
`
`not disclose the limitation that symbols are held in position for a subsequent game”
`
`is “appropriate”).
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`–10–
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`IPR2016-01171
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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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`3:5−7). In contrast, the ʼ064 Patent requires the superimposed symbols to “affect[]
`
`whether the prize is paid[.]” Ex. 1001 at claims 1, 13.
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`Petitioner argues that the references themselves provide the motivation to
`
`combine because both “describe similar gaming machines with ‘game control
`
`means’ and ‘display means’ . . . [and each] employ[s] ‘special symbols’—‘special
`
`or bonus symbols’ . . . that can lead to variations in subsequent games and/or affect
`
`the outcome of the games.” Pet. at 33 (citing Exs. 1001, 1005). But almost all
`
`gaming machines require a control means and a display means, and Mr.
`
`Michaelson admits that special symbols such as “wild” symbols have been used
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`“for decades.” Ex. 1007, ¶ 38. The ʼ064 Patent claims special symbols with
`
`particular characteristics, and the “similarities” shared by Legato and Timperley
`
`fall far short of providing a motivation to combine the references in a manner that
`
`results in the claimed invention.
`
`Petitioner ultimately is forced to rely on a multi-page narrative from Mr.
`
`Michaelson offering his opinions and conclusions to create a motivation to
`
`combine the references that is not present in the references themselves. See, e.g.,
`
`–11–
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`IPR2016-01171
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`Pet. at 21 (citing Ex. 1007, ¶ 70); id. at 22 (citing Ex. 1007, ¶¶ 67−70); id. at 23
`
`(citing Ex. 1007, ¶ 69); id. at 33−34 (citing Ex. 1007, ¶¶ 49, 59, 67−70, 72.
`
`C.
`
`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.
`
`Petitioner cites to Mr. Michaelson’s declaration no fewer than 20 times to
`
`support its allegation that a POSA would have been motivated to modify the prior
`
`art to include a special symbol having the claimed characteristics. See, e.g., Pet. at
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`18−24 (citing to Ex. 1007, ¶¶ 38−39, 44, 67−70); id. at 32−34 (citing to Ex. 1007,
`
`¶¶ 49, 59, 67−70, 72). At the outset, Mr. Michaelson was a long-term employee of
`
`Petitioner who spent the past decade working in Petitioner’s Intellectual Property
`
`Management and legal departments. See Section II, supra. Petitioner’s former
`
`employee thus bears all the hallmarks of a biased witness and his opinions should
`
`be given little or no weight. See id. Without the support of Mr. Michaelson’s
`
`declaration, Petitioner’s argument collapses as Petitioner’s only other support for a
`
`motivation to combine are conclusory statements that (1) both references share
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`generic hardware common to almost all gaming machines and (2) both use special
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`symbols (albeit differently and for different purposes). See Pet. at 33 (“[I]t would
`
`have been obvious to a POSA to combine Legato with Timperley . . . Both
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`[references] describe similar gaming machines with ‘game control means’ and
`
`‘display means.’”).
`
`–12–
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`IPR2016-01171
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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
`
`his proposed modifications to align the prior art with the claim limitations. Instead
`
`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
`
`numbering and combinations did not lead Timperley to the claimed invention, and
`
`it provides no motivation to modify Legato which had its own features for
`
`generating player interest.
`
`Mr. Michaelson’s declaration then turns to the ʼ064 Patent itself and
`
`compares an image in the ʼ064 Patent with an image from Timperley. See Ex.
`
`1007, ¶ 68 (comparing Figure 5b from the ’064 Patent with Figure 3 from
`
`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 remain in
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`place in subsequent games to affect whether a prize is paid. See Ex. 1001 at claims
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`1, 13.
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`–13–
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`IPR2016-01171
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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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`Ex. 1005, 3:5−7). The ʼ064 Patent claims require the opposite—i.e., the
`
`superimposed symbol must “affect[] whether the prize is paid.” Ex. 1001 at claims
`
`1, 13.
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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
`
`which the opinion is based.” 37 C.F.R. § 42.65(a).
`
`The biased and unsupported statements in Mr. Michaelson’s declaration are
`
`insufficient to establish a motivation to combine Legato and Timperley, and
`
`Petitioner fails to identify any other supporting evidence to support its proposed
`
`combination. The Petition as to claims 1−6, 8−17, and 19−23 should, therefore, be
`
`denied.
`
`D.
`
`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.
`Petitioner admits that neither Legato nor Timperley disclose the additional
`
`limitation of claim 5 that the bonus symbol is “configured to be revealed during
`
`–14–
`
`
`
`IPR2016-01171
`
`play of a bought, base game and is held for a predetermined number of succeeding
`
`bought, base games.” See Pet. at 26. Petitioner argues that “it would have been
`
`obvious to a POSA to modify Legato to have the gaming machine hold the special
`
`symbols during bought, base games.” Id. To support this argument, Petitioner
`
`relies exclusively on a single paragraph in Mr. Michaelson’s declaration. See id.
`
`(citing Ex. 1007, ¶ 43). But this paragraph is nothing more than Mr. Michaelson’s
`
`opinion that “[h]eld reels are very popular with players.” Ex. 1007, ¶ 43. Mr.
`
`Michaelson cites no evidence to support his opinion that that held reels were “very
`
`popular,” but even if accepted as true, the claim requires holding symbols in
`
`succeeding bought, base games, but Legato discloses symbols that are “held in
`
`place for three free spins.” Ex. 1003 at 52−53 (emphasis added). Mr. Michaelson
`
`refers to different variations of held reels dating back to 1967, but fails to explain
`
`why Legato, which bears a September 1998 date some thirty-years later, did not
`
`disclose this feature despites its “decades” old existence that should have
`
`motivated Legato to do so under Mr. Michaelson’s rationale. Ex. 1007, ¶¶ 40−42.
`
`Thus the Petition as to claim 5 should be denied on this additional basis.
`
`V.
`
`Petitioner’s Ground 2 Of Invalidity, That Claims 7 And 18 Are
`Unpatentable Over The Combination Of Legato, Timperley, And
`Bennett, Fail Without Mr. Michaelson’s Declaration.
`Claim 7 depends on claim 6, and claim 18 depends on claim 17. Because
`
`Petitioner has failed to show that claims 6 and 17 are unpatentable in light of
`
`–15–
`
`
`
`IPR2016-01171
`
`Legato and Timperley, the Petition as to claims 7 and 18 should also be denied.
`
`See Section IV.A, supra.
`
`In addition to the deficiencies regarding claims 6 and 17, Petitioner fails to
`
`meet its burden that the combination of Legato (Ex. 1003), Timperley (Ex. 1005),
`
`and Bennett (Ex. 1006) renders challenged claims 7 and 18 unpatentable. Claims 7
`
`and 18 add the limitation that the “occurrence of the trigger condition is
`
`independent of the revealing of said at least one bonus symbol.” Ex. 1001 at
`
`claims 7, 18. Petitioner admits that neither Legato (Ex. 1003) nor Timperley (Ex.
`
`1005) discloses claims 7 and 18. See Pet. at 40−42 (noting that “[t]he
`
`predetermined trigger condition in Legato, unlike Claims 7 and 18 of the ’064
`
`Patent, are based on the bonus symbols” and making no mention of Timperley).
`
`Petitioner once again relies on impermissible hindsight and uses the claims of
`
`the ’064 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.
`
`–16–
`
`
`
`IPR2016-01171
`
`features that it contends are shared by Legato and Bennett. Pet. at 41−42 (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 condition[s],” 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.
`
`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, ¶¶ 74−78. 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 ¶ 77 (calling the
`
`latter type a “mystery trigger”). But these quotes from yet a third reference to
`
`meet the requirements of the additional limitation of claims 7 and 18 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”).
`
`–17–
`
`
`
`IPR2016-01171
`
`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, ¶ 78. 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 7 and 18
`
`should therefore be denied.
`
`–18–
`
`
`
`IPR2016—0l17l
`
`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.
`
`Date: September 15, 2016
`
`Respectfully submitted,
`
`
`
`By
`
`Andrea G. Reister ,~
`
`Registration No.: 36,253
`Jay 1. Alexander
`Registration No.: 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
`
`
`
`IPR2016-01171
`
`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)
`
`I certify that the foregoing complies with the type—Vo1ume limitation of 37
`
`C.F.R. § 42.24 and contains 4,281 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 15, 2016
`
`5
`
`Andrea G. Re; er, Esq.
`Reg. No.: 36{253
`
`<it§i5'<m‘;?/itjiliiii
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-01171
`
`Pursuant to 37 C.F.R. §42.6, I hereby certify that on this 15th day of
`
`September 2016, the foregoing Patent Owner Preliminary Response Pursuant to 37
`
`C.F.R. § 42.107 and Exhibits 2001-2003 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(a1nasia@nge1aw.co1n)
`Neal, Gerber & Eisenberg LLP
`Two North LaSalle Street, Suite 2200
`
`Chicago, IL 60602
`
`Date: September 15, 2016
`
`‘*
`
`'ster, Esq.
`Andrea G.
`Registration No.: 36,253
`
`£6
`
`
`
`ii
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