Trials@uspto.gov
`571-272-7822
`
`Paper No. 9
`Entered: November 20, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
` SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`v.
`BOT M8, LLC,
`Patent Owner.
`
`IPR2020-00963
`Patent 7,338,363 B2
`
`Before, KALYAN K. DESHPANDE, JAMES A. TARTAL, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
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`IPR2020-00963
`Patent 7,338,363 B2
`
`INTRODUCTION
`I.
`Sony Interactive Entertainment LLC (“Petitioner”) filed a Petition
`pursuant to 35 U.S.C. §§ 311–319 requesting an inter partes review of
`claims 1–27 (“the Challenged Claims”) of U.S. Patent No. 7,338,363 B2
`(Ex. 1001, “the ’363 patent”). Paper 1 (“Pet.”). Bot M8, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our
`prior authorization, Petitioner filed a Reply to the Patent Owner Preliminary
`Response (Paper 7, “Pet. Reply”) and Patent Owner filed a Sur-reply
`(Paper 8, “PO Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the
`Preliminary Response, Petitioner’s Reply, Patent Owner’s Sur-reply, and the
`evidence of record, we conclude that the information presented does not
`show a reasonable likelihood that Petitioner would prevail in showing the
`unpatentability of at least one of the Challenged Claims. Accordingly, we
`do not authorize an inter partes review to be instituted as to the Challenged
`Claims of the ’363 patent on the ground raised in the Petition. The Petition
`is denied.
`
`BACKGROUND
`II.
`The ’363 Patent
`A.
`The ’363 patent, titled “Gaming Machine, Server, and Program,”
`issued March 4, 2008, from an application filed on October 17, 2003, that
`asserts priority to a foreign application date of October 18, 2002. Ex. 1001,
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`Patent 7,338,363 B2
`codes (21), (22), (30), (45), (54). The ’363 patent is directed to “a gaming
`machine, a server, and a program.” Id. at 1:14–15. The ’363 patent explains
`that in conventional gaming machines “the big-hit shift probability, the
`payout, and the payout rate” are fixed, “do not vary during each game,” and
`“cannot vary by the game player himself.” Id. at 1:36–52. The ’363 patent
`also notes that a certain foreign application describes “a gaming machine
`with which plural specification values of the big-hit shift probability and the
`payout can be varied by the game player himself,” but states that “the game
`player could not feel a benefit or fun caused by changes in the specification
`values if the game player does not play the game under a game condition
`that a setting-variation effect discernibly appears.” Id. at 1:53–66.
`To purportedly improve the benefit or fun of a game player, the
`’363 patent describes a gaming machine “with at least one specification
`value based on the total result obtained by totalizing a game result achieved
`by a first gaming machine and a game result achieved by a second gaming
`machine.” Id. at 2:6–11. A specification value is set “as a control condition
`for game control.” Id. at 2:14–31; see also id. at 5:10–13 (stating that “the
`specification value comprises a big-hit shift probability, a payout, a payout
`rate, or a combination thereof”). The ’363 patent further explains that “the
`specification value may be improved even if the game result of the game
`player is bad since the game result of the another game player could be
`good.” Ex. 1001, at 2:45–47. As summarized by Petitioner, the ’363 patent
`describes that “multiple gaming machines send game results to a server,
`which server determines a total result from the game results of multiple
`gaming machines and sends the total result back to the multiple gaming
`machines.” Pet. 1 (citing Ex. 1001, 2:36–45).
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`Patent 7,338,363 B2
`Additionally, the ’363 patent states that “‘game result’ refers to a
`result after a game is carried out,” and “may contain not only the number of
`game media which have been paid out, but a combination of symbols after
`rotation, a result of a sub game carried out on a display device, the number
`of games having been played, and so on.” Id. at 5:27–32. The ’363 patent
`also states that “‘total result’ refers to a result obtained by adding or
`totalizing the game results of plural game players or plural gaming
`machines.” Id. at 5:33–35.
`Figure 21 of the ’363 patent is reproduced below.
`
`
`Figure 21 “is a flowchart of data communications between a server and two
`slot machines.” Id. at 6:31–32. The ’363 patent provides a detailed
`explanation of each of the steps shown in Figure 21, which include that
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`Patent 7,338,363 B2
`gaming machine 10A and gaming machine 10B both transmit “the data of
`the game result” to the server, the server “totalizes the game results” and
`transmits the total result data to each gaming machine. Id. at 20:13–22:27.
`Each gaming machine determines the specification values on the basis of the
`total result data received by “referring to the specification value determining
`table” and “renews the specification values,” which are “the probability data,
`the payout data and the payout rate data.” Id.
`Illustrative Claim
`B.
`Petitioner challenges claims 1–27 of the ’363 patent. Pet. 1.
`Claims 1, 4, 8, 11, 15, and 16 are independent. Ex. 1001, 23:61–28:11.
`Claims 2, 3, 7, and 14 depend from claim 1, claims 5 and 6 depend from
`claim 4, claims 9 and 10 depend from claim 8, claims 12 and 13 depend
`from claim 11, and claims 17–26 depend from claim 16. Id. at 13:26–46,
`14:25–49. Claim 1 is illustrative of the claimed subject matter and is
`reproduced below.
`1. A first gaming machine for transmitting/receiving data
`to/from a server, comprising:
`a specification value setting device for setting at least one
`specification value as a control condition for game control;
`a transmitting device for transmitting data of a game result to
`the server;
`a gaming machine determining device for determining a
`second gaming machine operated by a co-player;
`a total result data receiving device for receiving from the
`server data of a total game result achieved by the first
`gaming machine and the second gaming machine based on
`the data of the game result transmitted by the transmitting
`device;
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`IPR2020-00963
`Patent 7,338,363 B2
`a specification value determining device for determining a
`specification value based on the data of the total game
`result received by the total result data receiving device;
`and
`a specification value renewing device for renewing to replace
`the specification value set by the specification value
`setting device with the specification value determined by
`the specification value determining device.
`Id. at 23:61–24:15.
`Asserted Ground of Unpatentability
`C.
`Petitioner asserts that the Challenged Claims are unpatentable as
`under 35 U.S.C. § 1031 based on a single ground combination of
`Walker ’3322 (which incorporates by reference Walker ’8723, identified by
`Petitioner collectively as “Walker ’872/’332”) and Walker ’648.4 Pet. 6–7;
`see also Ex. 1006, 1:4–9 (stating that the application that issued as Walker
`’332 was a continuation-in-part of the application that issued as Walker ’872
`and that “the entirety” of Walker ’872 is “incorporated . . . by reference” in
`Walker ’332). Petitioner also relies on the supporting Declaration of
`Mr. Garry Kitchen, dated May 22, 2020. Ex. 1003.
`
`
`1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`that issued as the ’363 patent states that it was filed before March 16, 2013,
`we apply the pre-AIA versions of these statutes. See 35 U.S.C. § 100(i).
`2 U.S. Patent No. 6,312,332 B1, issued November 6, 2001 (Ex. 1006,
`“Walker ’332”).
`3 U.S. Patent No. 6,142,872, issued November 7, 2000 (Ex. 1005, “Walker
`’872”).
`4 U.S. Patent No. 6,328,648 B1, issued December 11, 2001 (Ex. 1007,
`“Walker ’648”).
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`Patent 7,338,363 B2
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`Related Proceedings
`D.
`The parties identify the ’363 patent as a subject of BOT M8, LLC v.
`Sony Corporation of America, 3:19-cv-07027 (NDCA). Pet. § VI.B5;
`Paper 4, 1.6
`
`Real Parties in Interest
`E.
`Petitioner identifies itself and Sony Corporation, Sony Corporation of
`America, and Sony Interactive Entertainment, Inc., as real parties in interest.
`Pet. § VI.A. Patent Owner identifies no additional real parties in interest.
`Paper 4, 1.
`
`III. ANALYSIS
`Legal Standards
`A.
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). In Graham v. John Deere Co., 383 U.S. 1 (1966), the Supreme
`Court set out a framework for assessing obviousness under § 103 that
`requires consideration of four factors: (1) the “level of ordinary skill in the
`pertinent art,” (2) the “scope and content of the prior art,” (3) the
`“differences between the prior art and the claims at issue,”
`and (4) “secondary considerations” of nonobviousness such as “commercial
`
`5 We refer to the section in the citation because the Petition identifies § VI as
`page “1,” however, § VI follows page 64 and there is a preceding page also
`labeled page “1,” making the page numbering of the Petition ambiguous.
`6 Patent Owner refers to the “’670 patent” in its mandatory notices, however,
`we understand that to be a typographical mistake intended to be the “’363”
`patent at issue in this proceeding.
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`success, long felt but unsolved needs, failure of others, etc.” Id. at 17–18;
`KSR, 550 U.S. at 407. Neither Petitioner nor Patent Owner presents
`evidence or argument directed to secondary considerations.
`Level of Ordinary Skill in the Art
`B.
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(citation omitted).
`Petitioner contends that a person of ordinary skill in the art at the time
`of the invention would have had “the equivalent of at least an undergraduate
`degree in computer science, computer engineering, electrical engineering, or
`a similar technical field, and with two or more years of experience in the
`field of network gaming,” where “[a]dditional education may substitute for
`less experience and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 41–43). Patent
`Owner does not dispute Petitioner’s proposed level of ordinary skill. See,
`generally, Prelim. Resp.
`We find that the ’363 patent and the cited prior art references reflect
`the appropriate level of skill at the time of the claimed invention and that the
`level of appropriate skill reflected in these references and the ’363 patent is
`consistent with the definition of a person of ordinary skill in the art proposed
`by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). Accordingly, we adopt Petitioner’s asserted level of ordinary
`skill in the art.
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`Claim Construction
`C.
`“In an inter partes review proceeding, a claim of a patent . . . shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
`§ 42.100(b) (2019). That standard “includ[es] construing the claim in
`accordance with the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id.; see also Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`As Patent Owner correctly argues, it is Petitioner’s burden to identify
`in the Petition both “[h]ow the Challenged Claim is to be construed” and
`“[h]ow the construed claim is unpatentable.” Prelim. Resp. 6; 37 C.F.R.
`§ 42.104(b). Petitioner contends that no term needs to be construed to
`resolve this proceeding, because “[t]he invalidity theories presented in this
`Petition would satisfy either of the parties’ proposed claim constructions in
`the co-pending district court case.” Pet. 7, n. 1. Petitioner’s argument is
`fundamentally flawed, because we cannot make a determination of whether
`Petitioner’s “invalidity theories” satisfy “either of the parties’ proposed
`claim constructions in the co-pending district court case” when Petitioner
`does not set forth in the Petition any proposed construction and does not
`even state how the parties proposed to construe claim language in district
`court.
`With regard to whether any claim language is in dispute in this
`proceeding, Patent Owner argues that “Petitioner knew the construction of
`‘specification value’ would be disputed because it was disputed in the
`District Court proceedings.” Id. at 6 (citing Ex. 2002, 2). Patent Owner
`further asserts that the Petition should be denied for failing to propose a
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`construction for a term expected to be in dispute. Id. (citing Orthopediatrics
`Corp. v. K2M, Inc., No. IPR2018-01548, Paper 9, 9–11 (PTAB Mar. 1,
`2019)). The nonprecedential decision cited by Patent Owner was limited to
`the circumstances of that case, which included the petitioner advocating for
`a different construction from the district court case of a claim term that had
`to be expressly construed to resolve issues in dispute in the proceeding,
`leading to a determination that the petition failed to show sufficiently how
`the claim was to be construed. Id. We are not persuaded, as explained
`below, that Petitioner’s failure to offer an express claim construction
`necessitates denial of the Petition under the specific circumstances of this
`case.
`
`The only claim term Patent Owner argues should be construed is
`“specification value.” Patent Owner asserts in this proceeding that
`“specification value” means “a value based on game results that also
`controls part of the game.” Prelim. Resp. 7 (citing Ex. 1001, 2:14–20, 2:41–
`45, 3:25–38). Patent Owner also asserts that the construction it proposes “is
`the same” as the position it has taken in the district court proceeding. Id.
`at 7 n. 2. The district court Joint Claim Construction and Pre-hearing
`Statement provided by Patent Owner, however, indicates that in district
`court Patent Owner states for “specification value” as follows: “No
`construction necessary – Plain and ordinary meaning.” Ex. 2002, 2. Patent
`Owner fails to explain why it argues an express construction was not
`necessary in district court, but is essential in this proceeding, or how those
`two positions are necessarily consistent.
`Patent Owner also asserts that Petitioner has taken “inconsistent
`positions” on the meaning of “specification value” in district court from this
`proceeding. Prelim. Resp. 7 n. 2. The district court Joint Claim
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`Construction and Pre-hearing Statement indicates that in district court
`Petitioner proposed constructions of “specification value” as follows: “‘a
`big-hit probability, a payout, a payout rate, or a combination thereof’
`Alternatively: Indefinite.” Ex. 2002, 2. In this proceeding Petitioner did not
`propose an express construction of “specification value” under the heading
`for “Claim Construction” in the Petition; however, the Petition explicitly
`states in its description of the ’363 patent that a “specification value” is
`“based on the total result obtained by totalizing a game result,” and that a
`“specification value is set as a control condition for game control and can
`include a ‘big-hit shift probability, a payout, a payout rate, or a combination
`thereof.’” Pet. 1 (citing Ex. 1001 2:6–17; 5:10–13).
`Patent Owner fails to explain how there is an inconsistency between
`how Petitioner expressly proposed to construe “specification value” in
`district court and how Petitioner has explained in the Petition the meaning of
`“specification value.” Although Petitioner apparently contends in district
`court, in the alternative, that “specification value” is indefinite,
`indefiniteness is not a ground upon which unpatentability may be asserted in
`an inter partes review proceeding, and we find no inconsistency with
`Petitioner’s arguments in this proceeding and its assertion in district court
`that, in the alternative, a claim term is indefinite.
`Patent Owner also fails to identify the significance between its
`proposed construction of “specification value” in this proceeding–“a value
`based on game results that also controls part of the game”– and Petitioner’s
`explanation that a “specification value” is “based on the total result” and “is
`set as a control condition for game control and can include a ‘big-hit shift
`probability, a payout, a payout rate, or a combination thereof.’” We find that
`Patent Owner has not explained how its proposed construction is materially
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`different from Petitioner’s contentions and that Petitioner has sufficiently
`shown how it contends the ’363 patent uses “specification value.”
`Accordingly, we determine that it is not necessary to address the express
`interpretation of “specification value,” or any other claim term, beyond the
`discussion provided above for purposes of this Decision. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`Scope and Content of the Prior Art
`D.
`Petitioner relies on Walker ’332, Walker ’872, and Walker ’648, each
`of which we briefly summarize in part below.
`Summary of Walker ’332
`1.
`Walker ’332, titled “Method and Apparatus for Team Play of Slot
`Machines,” is directed to a method of operating slot machines in which “the
`machine is grouped with other slot machines and subject to bonus conditions
`dependent on the team play.” Ex. 1006, codes (54), (57). More specifically,
`Walker ’332 describes “a method and system for operating slot machines” as
`follows:
`identifying at least two slot machines for team play, determining
`a set of bonus conditions for the team play including a bonus
`payout if the bonus conditions are satisfied by the team play,
`initiating a bonus time period during which the bonus conditions
`are active, and analyzing outcomes from the first and second slot
`machines to determine if the bonus conditions are met during the
`bonus time period.
`Id. at 3:17–26. Walker ’332 incorporates by reference Walker ’872. Id.
`at 1:4–9.
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`Summary of Walker ’872
`2.
`Walker ’872, titled “Method and Apparatus for Team Play of Slot
`Machines,” is directed to “enabling team play by a plurality of slot machine
`players.” Ex. 1005, codes (54), (57). More specifically, Walker ’872
`describes a plurality of slot machines and a slot server that enable the “game
`results of each player on a given team” to be “combined in a predefined
`manner to obtain a team game result” on a “per-spin” or “per-session” basis.
`Id. at 2:44–53. On a per-spin basis, for example, team players may receive
`an award based on “the ‘best team game result.’” Id. at 5:17–22.
`Summary of Walker ’648
`3.
`Walker ’648, titled “Electronic Amusement Device and Method for
`Propagating a Performance Adjustment Signal,” describes a “slot machine”
`that “conducts a game,” “determines whether a propagation criteria has been
`achieved and outputs a propagation signal, indicating a performance
`adjustment, to at least one other slot machine.” Ex. 1007, codes (54), (57).
`Thus, Walker ’648 describes a system whereby the performance of a “source
`slot machine” may be “propagated to associated recipient slot machines.”
`Id. at 4:61–65. Walker ’648 also describes a slot machine that “receives a
`propagation signal indicating a performance adjustment,” and “adjust the
`performance level accordingly.” Id. at code (57). A “slot server” may be
`used “for communicating an indication of adjusted performance between at
`least two slot machines.” Id. at 2:53–56.
`Alleged Obviousness over Walker ’872/’332 and Walker ’648
`E.
`Petitioner contends that the subject matter of the Challenged Claims
`would have been obvious over the combination of Walker ’872/’332 and
`Walker ’648. Pet. 8–64. Petitioner’s contentions are supported by
`Mr. Kitchen. Ex. 1003 ¶¶ 100–195. Patent Owner disputes these
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`contentions, primarily arguing that the asserted references fail to teach
`“determining a specification value based on aggregated game results.”
`Prelim. Resp. 21–24. For the reasons provided below, we agree with Patent
`Owner that Petitioner fails to show a reasonable likelihood that the asserted
`art teaches each limitation of any Challenged Claim.
`Independent Claim 1
`1.
`Petitioner contends claim 1 would have been obvious over
`Walker ’872/’332 and Walker ’648. Pet. 14–34. We analyze below
`Petitioner’s contentions with respect to claim 1, along with Patent Owner’s
`arguments in opposition, and determine that Petitioner fails to show
`sufficiently how the asserted art teaches a “specification value determining
`device,” as required by claim 1.
`A first gaming machine for transmitting/receiving data
`to/from a server, comprising:
`Petitioner contends that Walker ’872 teaches slot machines 300–303,
`presumably one of which corresponds to the recited “first gaming machine”
`that transmits and receives data over slot network 110 through slot
`server 200, corresponding to the recited “server.” Pet. 14–15 (citing, e.g.,
`Ex. 1005, 3:64–4:2, 6:57–58, 9:64–20:2, Fig. 1).
`a specification value setting device for setting at least one
`specification value as a control condition for game
`control;
`Petitioner contends that Walker ’872 teaches that a CPU of the slot
`machine corresponds to “a specification value setting device” that sets
`“probability and payout tables to be used during gameplay (i.e., as a control
`condition for game control).” Pet. 15–17 (citing, E.g., Ex. 1005, 8:1–44).
`According to Walker ’872, data storage device 320 stores “the payouts
`associated with each winning game result for a number of team sizes” and
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`“the probability that a given game result will occur for a number of team
`sizes.” Ex. 1005, 8:3–21. “CPU 310 is operable to retrieve, interpret and
`execute” instructions stored on data storage device 320 and or/ ROM. Id.
`at 8:32–34.
`a transmitting device for transmitting data of a game result to
`the server;
`Petitioner contends that Walker ’872 teaches slot network
`interface 376, which corresponds to the recited “transmitting device,”
`because it provides “a communication path between the representative slot
`machine 300 and the slot server 200.” Pet. 17 (citing Ex. 1005, 7:63–67,
`9:64–10:2, Fig. 3). Additionally, according to Petitioner, Walker ’872
`teaches that “[e]ach slot machine 300–303 being utilized by a team player
`can signal the slot server 200 with each player’s net result,” corresponding to
`the recited “transmitting data of a game result to the server.” Pet. 17 (citing
`Ex. 1005, 9:31–34).
`a gaming machine determining device for determining a
`second gaming machine operated by a co-player;
`Petitioner contends that Walker ’872 teaches a slot machine that
`utilizes databases that “provide information about other gaming machines,”
`that determine “whether there is an active record for that player’s team in a
`transaction database, and that, “[d]uring play, . . . displays the names and
`results of each player on the team.” Pet. 18 (citing Ex. 1005, 5:22–26, 6:35–
`39, 9:8–10, 9:21–31, 9:38–41, 11:1–20, 15:5–20, Figs. 9, 10, 17A).
`Petitioner does not suggest that Walker ’872 describes “determining a
`second gaming machine.” Id. at 22. Petitioner instead argues that this
`limitation is taught by Walker ’332, which describes a slot machine that
`“accesses a transaction database that identifies each machine on the team to
`determine if there is an ‘OPEN’ position on an existing team,” and, if not, to
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`determine “if a machine is ‘AVAILABLE,’ i.e., not on a team, with which
`the requesting machine may form a team.” Pet. 19–22 (citing, e.g.,
`Ex. 1006, 9:57–10:2, 10:36–42, 10:52–58, Figs. 7, 9).
`a total result data receiving device for receiving from the
`server data of a total game result achieved by the first
`gaming machine and the second gaming machine based
`on the data of the game result transmitted by the
`transmitting device;
`Petitioner contends that Walker ’872 teaches a slot machine network
`interface, corresponding to the recited “total result receiving device.” Id.
`at 24–27. According to Petitioner, “the net results of each individual gaming
`machine on a team . . . are transmitted to the slot server through a network
`interface of the slot machine” and the slot server analyzes the “net result of
`each team player” to obtain the team result by, for example, “adding the
`individual results of multiple players of plural gaming machines.” Id. at 25
`(citing Ex. 1006, 2:49–3:11, 4:46–59, 5:38–65, 9:32–37, 14:54–62, 16:33–
`37). The team result is then allegedly transmitted by the slot server and
`“received by each slot machine via its network interface.” Id. at 25–26
`(citing, e.g., Ex. 1006, 15:58–60, 16:24–38, Fig. 17C).
`a specification value determining device for determining a
`specification value based on the data of the total game
`result received by the total result data receiving device;
`and
`Petitioner fails to persuasively show how the asserted references
`purportedly teach the recited “specification value determining device.” See
`Pet. 27–32. In particular, we agree with Patent Owner that Petitioner fails to
`sufficiently show that Walker ’872, Walker ’332, or Walker ’648, alone or in
`combination, teaches determining a specification value based on a total
`game result. See Prelim. Resp. 21–24.
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`First, Petitioner argues as follows:
`Walker ’872/’332 teaches that probability and payout
`tables (i.e., each a specification value) are set by the slot machine
`CPU based on team results (i.e., data of the total game result) that
`are received by the slot machine network interface (i.e., total
`result receiving device). See, e.g., Walker ’872/’332 applied to
`Elements [1(a)-(d)]. Although Walker ’872/’332 does not
`expressly describe adjusting these other specification values
`based on the team results, implementing such a functionality
`would have been obvious in view of Walker ’648.
`Pet. 27 (emphasis omitted). On its face, merely citing Petitioner’s own
`contentions with regard to how Walker ’872/’332 allegedly teaches other
`limitations of claim 1 (i.e., “Elements [1(a)-(d)]”) is insufficient to show
`how the references teach the limitation at issue. Petitioner’s argument also
`appears to be internally inconsistent, first contending that Walker ’872/’332
`teaches “probability and payout tables . . . based on team results,” and then
`conceding that “Walker ’872/’332 does not expressly describe adjusting
`these other specification values [i.e., probability and payout tables] based on
`the team results.” Not only does Walker ’872/’332 fail to “expressly” teach
`this limitation, Petitioner fails to show how it implicitly teaches the
`limitation or otherwise renders the limitation obvious to a person having
`ordinary skill in the art. To the contrary, Petitioner’s explanation,
`reproduced below, of how Walker ’872/’332 operates does not show that it
`makes any determination based on a team result:
`Walker ’872/’332 teaches that the team game result is
`received by a slot machine from the slot server. See Walker
`’872/’332 applied to Element [1(d)]. Walker ’872/’332 also
`teaches awarding bonuses (through the use of a bonus payout
`database) in the context of team play of gaming machines based
`on the performance of a team. Walker ’332 at Abstract; 3:18-31;
`4:20-24; see also Walker ’872 at 16:39-53. Specifically, upon
`obtaining a specific outcome during team play, such as a flush in
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`IPR2020-00963
`Patent 7,338,363 B2
`poker or a specific outcome cherry/cherry/cherry in a slot
`machine, a signal is transmitted to the other players on the team
`indicating that a bonus condition has been satisfied and each
`player monitors and totals outcomes to determine whether the
`required number of outcomes according to a bonus database have
`been satisfied. Walker ’332 at 3:27-33; 6:16-20; 7:53-62; 12:52-
`64; 13:14-28; 13:62-14:2. If sufficient bonus outcomes are
`obtained by the team, a bonus is awarded to each team member
`according to a bonus database. Id. at 6:21-37; Fig. 7. However,
`Walker ’872/’332 does not expressly describe rewarding
`performance by using a different probability and payout table.
`Pet. 27–28. Thus, while Walker ’872/’332 has a CPU that sets a probability
`and payout table to be used during game play depending, for example, on the
`number of team players, Petitioner does not show how Walker ’872/’332
`teaches a “device for . . . determining a specification value based on the data
`of the total game result.” See, e.g., Ex. 1005, code (57) (describing slot
`machines grouped together and “subject to bonus conditions dependent on
`the team play,” not determining a specification value based on the “total
`game result”).
`To overcome the absence of any teaching in Walker ’872/’332,
`Petitioner purports to rely on Walker ’648, but again fails to show that it
`teaches or suggests a “device for . . . determining a specification value based
`on the data of the total game result.” Pet. 28–32. According to Petitioner,
`Walker ’648 teaches that a “performance level” is “used to determine an
`appropriate payout table or probability table for gameplay.” Id. at 29 (citing
`Ex. 1007, 4:10–18, 6:52–56, 7:50–63, Fig, 6). Petitioner then contends that
`the “performance level and associated probability and payout tables can be
`adjusted based on the performance of the slot machine or another linked slot
`machine.” Id. (citing Ex. 1007, Abstract, 4:61–65, 7:21–65). Petitioner
`does not contend, much less show, that Walker ’648 teaches the use of a
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`IPR2020-00963
`Patent 7,338,363 B2
`specification value determining device to make a determination based on a
`“total game result,” as required by claim 1. In this regard we have
`considered the supporting testimony of Mr. Kitchen cited by Petitioner and
`find that it reflects the same arguments addressed above. See Pet. 30 (citing
`Ex. 1003 ¶¶ 135–147; see also Ex. 1003 ¶ 136 (stating that
`“Walker ’872/’332, however, does not describe using different payout or
`probability tables for subsequent play based on performance of the team”);
`¶ 141 (stating that in Walker ’648 “[t]he performance of a slot machine can
`be adjusted based on its own performance or that of a linked slot machine”).
`We agree with Patent Owner that “Walker ’648 is limited to the
`disclosure of adjusting a performance level of neighboring slot machines
`based on the performance of a single ‘source’ slot machine, and not based on
`any team result as alleged by Petitioner.” Prelim. Resp. 24 (citing Ex. 1007,
`10:34–11:11). Thus, Petitioner’s evidence and argument fails to show that
`any of the asserted references, alone or in combinati