IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`
`Case No. To Be Assigned
`Patent No. 8,246,444
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,246,444
`UNDER 35 U.S.C. §§311-319 AND 37 C.F.R. §42.100 et seq.
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`

`
`Docket No. 034786.0010-US15
`
`LIST OF EXHIBITS
`
`
`Description
`U.S. Patent No. 8,246,444 (the “’444 Patent”)
`File History for U.S. Patent No. 8,246,444
`U.S. Patent No. 6,491,584 (“Graham”)
`U.S. Patent No. 6,648,758 (“Bennett”)
`World of Slots ’99, Casino Journal, September 1999 (“WOS”)
`U.S. Patent No. 6,174,235 (“Walker”)
`Declaration of Stacy A. Friedman
`Curriculum vitae of Stacy A. Friedman
`Slots For a New Millennium, Casino Player (1999)
`Something Fishy, Strictly Slots, Dec. 1998
`INTENTIONALLY LEFT BLANK
`John Grochowski, THE SLOT MACHINE ANSWER BOOK (1999)
`Latest Game Releases, NewsReel, Issue One 2001
`File History for U.S. Patent No. 6,913,532
`INTENTIONALLY LEFT BLANK
`INTENTIONALLY LEFT BLANK
`INTENTIONALLY LEFT BLANK
`INTENTIONALLY LEFT BLANK
`INTENTIONALLY LEFT BLANK
`Declaration of Scott Bennett
`Attachment A to Bennett Declaration (Ex. 1020): Curriculum
`vitae of Scott Bennett
`Attachment 1a to Bennett Declaration (Ex. 1020): Statewide
`Illinois Library Catalog Record for Casino Journal
`Attachment 1b to Bennett Declaration (Ex. 1020): University of
`Central Florida Library catalog record for Casino Journal
`Attachment 1c to Bennett Declaration (Ex. 1020): Copy of
`“World of Slots ’99” from the University of Central Florida
`Library
`Attachment 1d to Bennett Declaration (Ex. 1020): Copy of
`“World of Slots ’99” from Northeastern State University Library
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`Ex. 1012
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`- i -
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`Docket No. 034786.0010-US15
`
`TABLE OF CONTENTS
`I. Mandatory Notices (37 C.F.R. §42.8(a)(1)) ........................................................ 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest (37 C.F.R. §42.8(b)(1)) ........................................ 1
`
`Related Matters (37 C.F.R. §42.8(b)(2)) .................................................. 1
`
`Lead and Backup Counsel (37 C.F.R. §42.8(b)(3)) ................................. 1
`
`Service Information (37 C.F.R. §42.8(b)(4)) ........................................... 1
`
`II.
`
`Fees (37 C.F.R. §42.103) .................................................................................... 2
`
`III. Requirements for IPR Under 37 C.F.R. §42.104 ............................................... 2
`
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ......................................... 2
`
`B.
`
`C.
`
`Citation of Prior Art .................................................................................. 2
`
`Claims and Statutory Grounds (37 C.F.R. §§42.104(b)(1) &
`(b)(2)) ........................................................................................................ 3
`
`D. Unpatentability of the Construed Claims (37 C.F.R.
`§42.104(b)(4)) ........................................................................................... 3
`
`E.
`
`Supporting Evidence (37 C.F.R. §42.104(b)(5)) ..................................... 4
`
`IV. Background on Slot Machines ............................................................................ 4
`
`V.
`
`Summary of the ’444 Patent ................................................................................ 5
`
`A. Overview of the ’444 Patent ..................................................................... 5
`
`B.
`
`Person of Ordinary Skill in the Art .......................................................... 6
`
`VI. There is a Reasonable Likelihood that Petitioner Will Prevail With
`Respect to at Least One Claim of the ’444 Patent .............................................. 7
`
`A.
`
`Prior Art .................................................................................................... 7
`
`1.
`
`2.
`
`Graham (Ex. 1003) ........................................................................ 7
`
`Bennett (Ex. 1004) ......................................................................... 8
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`Docket No. 034786.0010-US15
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`3. World of Slots ’99 (“WOS”) (Ex. 1005)........................................ 9
`
`4. Walker (Ex. 1006) ........................................................................ 11
`
`B.
`
`Ground I: Claims 1−8, 11−16, 19−31, 34−36, 39−41, 44−46, and
`49−51 Are Unpatentable Under 35 U.S.C. §103 As Obvious Over
`the Combination of Graham, Bennett, and WOS .................................. 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 1 ......................................................................................... 12
`
`Claim 2 ......................................................................................... 24
`
`Claim 3 ......................................................................................... 26
`
`Claim 4 ......................................................................................... 28
`
`Claim 5 ......................................................................................... 28
`
`Claim 6 ......................................................................................... 30
`
`Claim 7 ......................................................................................... 31
`
`Claim 8 ......................................................................................... 32
`
`Claim 11 ....................................................................................... 33
`
`10. Claim 12 ....................................................................................... 39
`
`11. Claim 13 ....................................................................................... 39
`
`12. Claim 14 ....................................................................................... 40
`
`13. Claim 15 ....................................................................................... 40
`
`14. Claim 16 ....................................................................................... 40
`
`15. Claim 19 ....................................................................................... 40
`
`16. Claim 20 ....................................................................................... 44
`
`17. Claim 21 ....................................................................................... 45
`
`18. Claim 22 ....................................................................................... 46
`
`19. Claim 23 ....................................................................................... 47
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`Docket No. 034786.0010-US15
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`20. Claim 24 ....................................................................................... 48
`
`21. Claim 25 ....................................................................................... 48
`
`22. Claim 26 ....................................................................................... 48
`
`23. Claim 27 ....................................................................................... 49
`
`24. Claim 28 ....................................................................................... 49
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`25. Claim 29 ....................................................................................... 49
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`26. Claim 30 ....................................................................................... 49
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`27. Claim 31 ....................................................................................... 50
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`28. Claim 34 ....................................................................................... 50
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`29. Claim 35 ....................................................................................... 52
`
`30. Claim 36 ....................................................................................... 52
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`31. Claim 39 ....................................................................................... 52
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`32. Claim 40 ....................................................................................... 54
`
`33. Claim 41 ....................................................................................... 54
`
`34. Claim 44 ....................................................................................... 54
`
`35. Claim 45 ....................................................................................... 57
`
`36. Claim 46 ....................................................................................... 57
`
`37. Claim 49 ....................................................................................... 58
`
`38. Claim 50 ....................................................................................... 59
`
`39. Claim 51 ....................................................................................... 59
`
`C. Ground II: Claims 9−10, 17−18, 32−33, 37−38, 42−43, 47−48,
`and 52−53 Are Unpatentable Under 35 U.S.C. §103 As Obvious
`Over Combination of Graham, Bennett, WOS, and Walker ................. 59
`
`VII. Conclusion ......................................................................................................... 61
`
`- iv -
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`

`
`Docket No. 034786.0010-US15
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`I. MANDATORY NOTICES (37 C.F.R. §42.8(A)(1))
`A. Real Party-In-Interest (37 C.F.R. §42.8(b)(1))
`The real parties in interest for this petition for Inter Partes Review (“IPR”)
`
`are Aristocrat Technologies, Inc. (“Petitioner”); Aristocrat International Pty Ltd.;
`
`Aristocrat Technologies Australia Pty Ltd.; and Aristocrat Leisure Limited
`
`B. Related Matters (37 C.F.R. §42.8(b)(2))
`U.S. Patent No. 8,246,444 (“the ’444 Patent”) is currently the subject of
`
`litigation against Petitioner in the District of Nevada, captioned IGT v. Aristocrat
`
`Technologies, Inc. (Civil Action No. 2:15-cv-00473).
`
`C. Lead and Backup Counsel (37 C.F.R. §42.8(b)(3))
`Petitioner
`designates Andrea G. Reister
`(Reg. No.
`
`36,253,
`
`areister@cov.com) as lead counsel and Jay I. Alexander (Reg. No. 32,678,
`
`jalexander@cov.com) as back-up counsel, both of Covington & Burling LLP, One
`
`CityCenter, 850 Tenth Street, NW, Washington, DC 20001 (postal and hand
`
`delivery), telephone: 202-662-6000, facsimile: 202-662-6291.
`
`Service Information (37 C.F.R. §42.8(b)(4))
`
`D.
`Service information is provided in §I.C. A power of attorney is submitted
`
`with this Petition. Counsel for Petitioner consents to service of all documents via
`
`email.
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`Docket No. 034786.0010-US15
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`II.
`
`FEES (37 C.F.R. §42.103)
`
`The undersigned authorizes the Office to charge $44,800 ($15,600 request
`
`fees and $29,200 post-institution fees) to Deposit Account No. 50-0740 for the fees
`
`set forth in 37 C.F.R. §42.15(a) for this Petition. The undersigned further
`
`authorizes payment for any additional fees due with this Petition to be charged to
`
`this Deposit Account.
`
`III. REQUIREMENTS FOR IPR UNDER 37 C.F.R. §42.104
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Pursuant to 37 C.F.R. §42.104(a), Petitioner certifies that the ’444 Patent is
`
`available for Inter Partes Review (“IPR”), and that Petitioner is not barred or
`
`estopped from requesting an IPR challenging the ’444 Patent on the grounds
`
`identified below.
`
`B. Citation of Prior Art
`Exhibit
`Reference
`
`Publication
`
`Availability
`
`or Filing Date
`
`as Prior Art
`
`Ex. 1003 U.S. Patent No. 6,491,584
`
`Filed March
`
`§102(e)
`
`(“Graham”)
`
`29, 2001
`
`Ex. 1004 U.S. Patent No. 6,648,758
`
`Filed July 25,
`
`§102(e)
`
`(“Bennett”)
`
`2001
`
`Ex. 1005 World of Slots ’99, Casino Journal,
`
`Published
`
`§§102(a)&(b)
`
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`Docket No. 034786.0010-US15
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`September 1999 (“WOS”)
`
`Sept. 1999
`
`Ex. 1006 U.S. Patent No. 6,174,235
`
`Filed Dec. 30,
`
`§102(e)
`
`(“Walker”)
`
`1997
`
`
`
`C. Claims and Statutory Grounds (37 C.F.R. §§42.104(b)(1) & (b)(2))
`The relief requested by Petitioner is that claims 1−53 of the ’444 Patent be
`
`found unpatentable and cancelled on the grounds below.
`
`Ground Claims
`
`Basis
`
`Under 35 U.S.C. §103 as obvious over combination of
`
`Graham, Bennett, and WOS
`
`Under 35 U.S.C. §103 as over combination of Graham,
`
`Bennett, WOS, and Walker
`
`I
`
`II
`
`1−8, 11−16,
`19−31,
`34−36,
`39−41,
`44−46,
`49−51
`9−10,
`17−18,
`32−33,
`37−38,
`42−43,
`47−48,
`52−53
`
`D. Unpatentability of the Construed Claims (37 C.F.R. §42.104(b)(4))
`An explanation of how Claims 1−53 of the ’444 Patent are unpatentable
`
`under the statutory grounds identified above, is provided in §VI.
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`Docket No. 034786.0010-US15
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`Supporting Evidence (37 C.F.R. §42.104(b)(5))
`
`E.
`The exhibit numbers of the supporting evidence relied upon to support the
`
`challenge and the relevance of the evidence to the challenge raised, including
`
`identifying specific portions that support the challenge, are provided below. An
`
`Exhibit List with the exhibit numbers and a brief description of each exhibit is set
`
`forth above.
`
`IV. BACKGROUND ON SLOT MACHINES
`Traditionally, game designers often focused on gameplay, including the use of
`
`various “bonus games” (or “secondary games”), as a means for differentiating a
`
`gaming device from the competition. Ex. 1007, ¶¶14−23. To attract players,
`
`designers often imitated popular gameplay elements and incorporated them into new
`
`gaming devices. Id.
`
`One earlier type of game, often referred to as “Australian-style slots” because
`
`of its origin, offered scatter pays, second screen bonuses, multiple paylines, and
`
`allowed multiple coins to be bet per payline. Id., ¶¶21−22, 89; Ex. 1012, 65; Ex.
`
`1005, 62. For example, Aristocrat’s highly successful line-up of second screen bonus
`
`games included “Indian Dreaming” and “Queen of the Nile.” Ex. 1007, ¶¶21−22.
`
`Both were multiple payline video slot games with themes; for example, “Queen of
`
`the Nile” had an ancient Egypt/Cleopatra theme and offered a base game where the
`
`Cleopatra symbol was a “wild” symbol. Id. The games also offered a free-spin
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`Docket No. 034786.0010-US15
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`bonus game in which the bonus game could be re-triggered (additional spins
`
`awarded) if a specified number of scattered pyramid symbols appeared. Id.
`
`V.
`
`SUMMARY OF THE ’444 PATENT
`A. Overview of the ’444 Patent
`The ’444 Patent (Ex. 1001), which issued on August 21, 2012, is entitled
`
`“Gaming Device Having a Re-Triggering Symbol Bonus Scheme.” The ’444
`
`Patent claims priority to U.S. Patent Application No. 09/981,133, filed October 15,
`
`2001, which subsequently issued as U.S. Patent No. 6,913,532 (the “’532 Patent”).
`
`Thus, publications made public before October 15, 2000 are prior art under 35
`
`U.S.C. §102(b). Further, U.S. patents that issued from a U.S. application before
`
`October 15, 2001 are prior art under 35 U.S.C. §102(e).
`
`The ’444 Patent is directed to a “gaming device.” Ex. 1001, Title. As used
`
`in the patent, “gaming device” is a broad term that includes, among other things,
`
`video slot machines in which a player places a wager and then “spins” virtual
`
`reels—depicted by simulated movement of a reel on a video screen under the
`
`control of a processor—and receives awards if the reels display certain predefined
`
`symbol combinations when the reels stop. Ex. 1007, ¶¶27−28; see Ex. 1001,
`
`3:3−18.
`
`The initial reel spin is called the “primary” or “base” game. Ex. 1007,
`
`¶¶27−28, 31. The ’444 Patent describes prior art gaming machines that also
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`Docket No. 034786.0010-US15
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`included secondary or “bonus” games that differed from the primary game. See Ex.
`
`1001, 1:32−35; Ex. 1007, ¶¶29−30, 32.
`
`The goal of the ’444 Patent is to provide “players with new and different
`
`gaming devices with new and different bonus schemes for the enjoyment and
`
`entertainment of players.” Ex. 1001, 1:36–38. As the specification notes, “[i]n
`
`many [then presently available] games, a triggering event such as a symbol or
`
`combination of symbols yield one or more opportunities or chances in a bonus or
`
`secondary game, which is played in addition to the base game.” Id., 1:32−35. The
`
`purported innovation concerns the retriggering of a bonus game from within that
`
`bonus game. Id., 2:23−24 (“It is therefore an advantage to provide a gaming
`
`device having a re-triggering symbol bonus scheme.”). The “present invention” is
`
`directed to making the retriggering event “more likely to occur in the bonus game”
`
`than the initial triggering event in the base game. Id., 1:61−67; Ex. 1007, ¶¶33−37.
`Person of Ordinary Skill in the Art
`B.
`A person of ordinary skill in the art of the ’444 Patent at the time of the
`
`alleged invention (“POSA”) would have had at least three to five years of
`
`experience with designing and developing gaming device systems with electronic
`
`video displays. Ex. 1007, ¶13. A POSA’s experience also would include working
`
`with a multi-disciplinary team including creative artists, mechanical and electrical
`
`engineers, design and regulatory specialists to develop a working, approvable
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`Docket No. 034786.0010-US15
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`gaming device. Id.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’444 PATENT
`
`The subject matter of claims 1-53 of the ’444 Patent is disclosed and taught
`
`in the prior art as explained below. The references and combinations utilized in
`
`Grounds I−II render obvious each of claims 1−53 pursuant to 35 U.S.C. §103 and
`
`provide a reasonable likelihood that the Petitioner will prevail on at least one
`
`claim. 35 U.S.C. §314(a).
`
`Prior Art
`
`A.
`Paragraphs 14−26 of the Friedman Declaration, Ex. 1007, describe the state
`
`of the art in the gaming industry before October 2001. As that discussion and the
`
`prior art make clear, the purported innovation of the ’444 Patent was well known
`
`before the patent was filed. A discussion of the disclosures of the key prior art
`
`relied upon follows.
`
`1. Graham (Ex. 1003)
`Graham was filed on March 29, 2001 and issued on December 10, 2002.
`
`The examiner cited Graham during prosecution of the ’532 Patent, but did not raise
`
`or resolve the same issues presented in this Petition. See Ex. 1014. Graham
`
`qualifies as prior art under at least pre-AIA 35 U.S.C. §102(e).
`
`Graham describes a gaming machine wherein a “trigger condition” in the
`
`base game such as “the appearance of three scatter symbols anywhere on the
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`Docket No. 034786.0010-US15
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`display means” awards an “initial series of free games” along with a “bonus
`
`feature.” Ex. 1003, 1:29−45, 2:24−25. Graham discloses that “any types of base
`
`games [can be] played on a gaming machine” but that “the invention would be
`
`particularly applicable in respect of spinning reel-type base games[.]” Id., 2:16−20.
`
`Graham also explains that the “initial series of free games” may be, for example,
`
`ten free games. Id., 3:9−10. During the initial series of free games, if another
`
`trigger condition occurs, a subsequent series of free games including a bonus
`
`feature is awarded and implemented immediately. Id., 1:29−45.
`
`
`
`A “trigger condition” triggers both the initial series of free games and
`
`subsequent series of free games. Id., 1:36−40, 2:21−22. Graham explains that “[t]he
`
`trigger condition which triggers the subsequent and any further series of free games is
`
`the same as the trigger condition which triggered the initial series of free games.” Id.,
`
`2:22−23 (emphasis added). Graham further explains that the frequency of the
`
`“trigger condition” can be “adjusted as necessary or required” by “changing the
`
`length or layout of the reel strips.” Id., 3:59−64. For example, the “trigger frequency
`
`may decrease for at least some of the series of free games by changing the length or
`
`layout of the reel strips.” Id.
`
`Bennett (Ex. 1004)
`
`2.
`Bennett was filed on July 25, 2001, and issued on November 18, 2003.
`
`Bennett qualifies as prior art under at least pre-AIA 35 U.S.C. §102(e). Bennett
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`Docket No. 034786.0010-US15
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`was not considered during prosecution of the ’444 Patent.
`
`
`
`Bennett is directed to a spinning reel-type game. Ex. 1004, 3:28−34.
`
`Bennett discloses a free spin bonus game that is triggered during the base game.
`
`See id., 1:29−45. The base game in Bennett is “typically a video reel game (a
`
`video simulation of spinning reels)[.]” Id., 3:66−4:1. The bonus game may be
`
`triggered by the “occurrence of a predetermined combination of symbols on the
`
`display” such as “a specific picture symbol on the first reel and a different specific
`
`picture symbol on the last reel.” Id., 4:1−17. In one embodiment, Bennett
`
`discloses that when the bonus game is triggered, “the player may choose to add
`
`extra symbols to the [bonus] feature games that did not appear in the base game.”
`
`Id., 4:65−67 (emphasis added). In another embodiment, Bennett discloses that
`
`players “may alter the quantity of a certain symbol that appears on the virtual reels
`
`of the video reel game.” Id., 5:1−3.
`
`3. World of Slots ’99 (“WOS”) (Ex. 1005)
`WOS is an article published in the September 1999 edition of Casino Journal
`
`magazine. Ex. 1005, 56. Among other games, WOS describes an Aristocrat game
`
`called “Queen of the Nile” that included a re-triggering feature. Ex. 1005, 62; Ex.
`
`1007, ¶¶70−76.
`
`WOS indicates a publication date of September 1999. Ex. 1005, 1. In
`
`addition, the cover page and table of contents of the copy included as Exhibit 1005
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`Docket No. 034786.0010-US15
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`bears a stamp of the University of Central Florida Library (“UCFL”) dated October
`
`4, 1999. Id., 1−2. The cover page also bears an address label to UCFL, as well as
`
`a stamp identifying the document as “Presorted and Printed Matter” that had “US
`
`Postage Paid” in Las Vegas Nevada under Permit #2543. Id. These indicia on the
`
`face of the magazine indicate that WOS was published more than one year before
`
`the effective priority date of the ’444 Patent, and thus WOS is prior art under both
`
`pre-AIA 35 U.S.C. §§102(a)&(b). WOS was not considered during prosecution of
`
`the ’444 Patent.
`
`
`
`Moreover, the Bennett Declaration (Ex. 1020) provides “competent
`
`evidence” to show that WOS qualifies as a “printed publication” under pre-AIA 35
`
`U.S.C. §102. In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986); Ex. 1020, ¶¶19−27.
`
`A reference is a “printed publication” if it was publicly accessible to persons
`
`concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221,
`
`227 (C.C.P.A. 1981). A 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 1340, 1350 (Fed. Cir. 2008). One way of showing public
`
`accessibility is by pointing to “competent evidence of the general library practice” to
`
`establish an approximate time when a reference became available to the public. Hall,
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`Docket No. 034786.0010-US15
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`781 F.2d at 899. For example, evidence of receiving, date-stamping, cataloguing,
`
`and shelving an item may be reliable proof in determining whether a document is a
`
`publicly accessible “printed publication.” In re NTP, Inc., 654 F.3d 1279, 1295 (Fed.
`
`Cir. 2011).
`
`Exhibit 1005 (also Exhibit 1024) includes a library date stamp indicating that
`
`the September 1999 issue of Casino Journal was processed by the UCFL on October
`
`4, 1999. Ex. 1020, ¶¶23−24. The stamp indicates that the September 1999 issue of
`
`Casino Journal was mailed to the UCFL before October 4, 1999, and became
`
`accessible no later than mid-October 1999. Id., ¶25. Further, there is sufficient
`
`evidence of cataloguing and indexing of this issue by UCFL and several other
`
`libraries. Id., ¶¶20−21.
`
`4. Walker (Ex. 1006)
`Walker is a United States Patent that was filed on December 30, 1997, and
`
`issued on January 16, 2001. Because Walker was filed before the effective priority
`
`date of the ’867 Patent, it is prior art under at least pre-AIA U.S.C. §102(e). Walker
`
`was not considered in the prosecution of the ’444 Patent.
`
`B. Ground I: Claims 1−8, 11−16, 19−31, 34−36, 39−41, 44−46, and
`49−51 Are Unpatentable Under 35 U.S.C. §103 As Obvious Over
`the Combination of Graham, Bennett, and WOS
`
`Independent claims 1, 11, 19, 34, and 39 generally require that a certain
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`symbol combination that triggers and re-triggers a secondary game be “more likely
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`to occur” in the secondary game than in the primary game. Independent claims 44
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`and 49 generally require a secondary game triggered by the display of a
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`“predetermined combination” of secondary game triggering symbols in a primary
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`game, wherein the secondary game may be re-triggered if a “designated number” of
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`secondary game triggering symbols is displayed in the secondary game. As
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`explained below, claims 1−8, 11−16, 19−31, 34−36, 39−41, 44−46, and 49−51
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`would have been obvious over the combination of Graham (Ex. 1003), Bennett (Ex.
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`1004), and WOS (Ex. 1005).
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`Claim 1
`
`1.
`[1 preamble] “A method of operating a gaming system, said method
`comprising:”
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`[1a] “causing at least one processor to operate with at least one display device
`and at least one input device to:”
`
`Graham discloses
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`these
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`limitations
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`because
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`it discloses a gaming machine
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`containing a processor to operate with a display
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`device and input device. Graham describes a
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`“gaming machine” and “[m]ore particularly …
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`an improvement to a game played on such a
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`gaming machine.” Ex. 1003, 1:6−9. This
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`gaming machine includes “a display means and
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`a game control means arranged to control images displayed on the display means[.]”
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`Id., 1:29−31. Figure 1 of Graham discloses a gaming machine 10 which “includes a
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`console 12 having a video display unit 14 on which a game 16 is played[.]” Id.,
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`2:39−42. Therefore, Graham discloses “a gaming system” with “at least one display
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`device” as recited in the claim preamble and limitation [1a]. Ex. 1007, ¶¶38−40.
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`Graham also discloses “at least one
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`input device”: “A midtrim 20 of the
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`machine 10 houses a bank 22 of buttons for
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`enabling a player to play the game.” Ex.
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`1003, 2:44−46; see also
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`id., 2:46−48
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`(“[M]idtrim 20 also houses a credit input
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`mechanism 24 including a coin input chute
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`24.1 and a bill collector 24.2.”). Graham
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`also describes (referencing Figure 2) a
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`“processor 42” which “forms part of a controller 44 which drives the screen of the
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`video display unit 14 and which receives input signals from sensors 46,” including
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`“sensors associated with the bank 22 of buttons and touch sensors mounted in the
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`screen.” Id., 2:57−61. Graham therefore discloses “at least one processor” which
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`“operate[s] with at least one display device and at least one input device” as required
`
`by limitation [1a]. Ex. 1007, ¶¶38−40, 42.
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`[1b] “display a play of a primary game upon a wager by a player, said
`primary game having a plurality of primary game symbols including a
`plurality of secondary game triggering symbols, wherein the secondary game
`triggering symbols can form a plurality of designated combinations of the
`secondary game triggering symbols; and”
`
`
`Graham discloses this limitation because it discloses a primary game played
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`upon the placing of a wager in which there are a plurality of game symbols, including
`
`a plurality of symbols that trigger a secondary game. Graham describes a “base
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`game” (or “primary game”, Ex. 1007, ¶43) that is displayed on a video display unit
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`14. Ex. 1003, 2:16−17, 2:42−44, 3:7−9.
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`
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`Figure 3 (reproduced here and colorized) is a flowchart that indicates that the
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`base game is played only upon placing of a wager by the player. Id. at Fig. 3 (“wait
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`for player bet & then play a game”); Ex. 1007, ¶43. The base game may include
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`“any type[] of base game[] played on a gaming machine” including a “spinning reel-
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`type base game[.]” Ex. 1003, 2:16−20. A POSA would understand that the
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`“spinning reel-type base game” in Graham includes a “plurality of primary game
`
`symbols because it has been well known in the art for decades that spinning reel-type
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`games may include a variety of different symbols. Ex. 1007, ¶44. Moreover,
`
`Graham discloses that a “gaming machine” can have a “game control means [that is]
`
`arranged to play a game wherein random events are caused to be displayed on the
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`display means[.]” Ex. 1003, 1:29−34. The “random event[]” may be a “predefined
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`winning event” such as a “trigger condition” which “results in an initial series of free
`
`games awarded to a player[.]” Id., 1:33−38. A POSA would understand that the
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`“random event” described in Graham typically consists of combinations of different
`
`symbols being displayed in the game (in this case, the primary game). Ex. 1007,
`
`¶¶46−47.
`
`
`
`Graham discloses that the “trigger condition” can be in the form of secondary
`
`game triggering symbols such as “the appearance of three scatter symbols anywhere
`
`on the display means[.]” Ex. 1003, 2:24−25. Because nothing in Graham limits the
`
`“trigger condition” to only three scatter symbols, a POSA would understand that in
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`Graham, three, four, or more scatter symbols can appear “anywhere on the display
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`means” to form a plurality of designated combinations of secondary game triggering
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`symbols because this was a well-known feature in the art. Id., 2:24−25; Ex. 1007,
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`¶¶22, 52, 60 (describing “Indian Dreaming”). Accordingly, Graham discloses
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`scatter symbols that can form a plurality of designated combinations of secondary
`
`game triggering symbols as required by limitation [1b]. Ex. 1007, ¶¶57−58.
`
`
`
`To the extent Graham does not expressly disclose this limitation, a POSA
`
`would have found it obvious to modify Graham in view of WOS (Ex. 1005) to meet
`
`this limitation. In the “Queen of the Nile” video slot machine game disclosed in
`
`WOS, Ex. 1005, 62, “three or more scattered Pyramid symbols send the game into
`
`15 free spins[.]” Id.; Ex. 1007, ¶77. WOS thus teaches a plurality of designated
`
`combinations of triggering symbols that may trigger a bonus game. Ex. 1007, ¶¶73,
`
`77. Each of the designated combinations of the secondary game triggering
`
`symbols may include, for example, three, four, or more scattered Pyramid symbols.
`
`Id.
`
`
`
`A POSA would have reason to combine the references because game
`
`manufacturers were incentivized to draw upon the success of other games and their
`
`gameplay when developing gaming devices. Id., ¶¶83−84. Game designers were
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`constantly looking for exciting gameplay options to hold the interest of players and
`
`entice players to play again. Id. The multiple trigger conditions disclosed by
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`WOS may give players an indication that there is a relatively high chance of
`
`triggering the bonus game. Id. Triggering the bonus game with “three or more
`
`Pyramids” would thus stand out to a POSA as an attractive gameplay option that
`
`should be implemented in Graham. Ex. 1005, 62 (emphasis added); Ex. 1007,
`
`¶¶83−84. This feature in “Queen of the Nile” would help attract players excited by
`
`this feature to the game, and the POSA would expect success in incorporating this
`
`feature. Ex. 1007, ¶¶83−84.
`
`[1c] “causing the at least one processor to operate with the at least one display
`device to:”
`
`Graham discloses this limitation for the same reason as limitation [1a].
`
`[1d] “when one of said designated combinations of the secondary game
`triggering symbols occurs in said play of the primary game, provide a
`designated number of plays of a secondary game associated with said
`designated combination of the secondary game triggering symbols, wherein
`the secondary game has a plurality of secondary game symbols including the
`plurality of secondary game triggering symbols, and”
`
`
`Graham discloses this limitation because it discloses that the occurrence of the
`
`“trigger condition” in the primary game results in the player being awarded a
`
`designated number of spins in a secondary game that includes a plurality of
`
`secondary game symbols (of which some are the symbols that