UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`CSC SERVICEWORKS, INC.,
`Petitioner,
`
`v.
`
`PAYRANGE, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`IPR2023-01188
`U.S. Patent No. 10,891,608
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`
`
`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
`
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................. 5
`
`I.
`
`INTRODUCTION ................................................................................ 6
`
`II. GROUNDS FOR STANDING ............................................................ 6
`
`III. NOTE ................................................................................................... 6
`
`IV. SUMMARY OF THE ‘608 PATENT .................................................. 7
`
`V.
`
`PROSECUTION HISTORY ................................................................ 9
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ................................. 9
`
`VII. CLAIM CONSTRUCTION ............................................................... 10
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ...................................................................... 10
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE ..... 11
`
`A. Discretionary denial under
`the Fintiv factors
`is not
`appropriate ............................................................................... 11
`
`B. Discretionary denial under General Plastic is not appropriate
` .................................................................................................. 12
`
`C. Discretionary denial under 35 U.S.C. § 325(d) is not
`appropriate ............................................................................... 12
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE
`UNPATENTABLE ............................................................................ 13
`
`A.
`
`B.
`
`Challenged Claims ................................................................... 13
`
`Statutory Grounds for Challenges ............................................ 13
`
`C. Ground 1: Claims 1-2, 5, 7-8, 11, 13-14, 17, 19-20 are
`obvious under 35 U.S.C. § 103 over Laaroussi in view of
`LeMay and Sugimoto ............................................................... 14
`
`1.
`
`Summary of Laaroussi ................................................... 14
`
`2
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`Summary of LeMay ....................................................... 16
`
`Summary of Sugimoto ................................................... 18
`
`Reasons to Combine Laaroussi and LeMay .................. 20
`
`Reasons to Combine Laaroussi and Sugimoto .............. 24
`
`Claim 1 ........................................................................... 26
`
`Claim 2 ........................................................................... 53
`
`Claim 5 ........................................................................... 59
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`Claim 7 ........................................................................... 60
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`2.
`
`3.
`
`4.
`
`5.
`
`6.
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`7.
`
`8.
`
`9.
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`10. Claim 8 ........................................................................... 61
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`11. Claim 11 ......................................................................... 62
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`12. Claim 13 ......................................................................... 62
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`13. Claim 14 ......................................................................... 64
`
`14. Claim 17 ......................................................................... 65
`
`15. Claim 19 ......................................................................... 65
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`16. Claim 20 ......................................................................... 68
`
`D. Ground 2: Claims 4, 6, 10, 12, 16, 18 are obvious over
`Laaroussi in view of LeMay, Sugimoto, and Okuniewicz ...... 69
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Laaroussi ................................................... 69
`
`Summary of LeMay ....................................................... 69
`
`Summary of Sugimoto ................................................... 69
`
`Reasons to Combine Laaroussi, LeMay, and Sugimoto
` ....................................................................................... 69
`
`5.
`
`Summary of Okuniewicz ............................................... 69
`
`3
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`Reasons to Combine Laaroussi and Okuniewicz .......... 71
`
`Claim 4 ........................................................................... 74
`
`Claim 6 ........................................................................... 77
`
`Claim 10 ......................................................................... 78
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`6.
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`7.
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`8.
`
`9.
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`10. Claim 12 ......................................................................... 78
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`11. Claim 16 ......................................................................... 78
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`12. Claim 18 ......................................................................... 79
`
`XI. CONCLUSION .................................................................................. 79
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`XII. MANDATORY NOTICES ................................................................ 80
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ............................................................... 80
`
`Related Matters ........................................................................ 80
`
`Lead and Back-up Counsel and Service Information .............. 80
`
`CERTIFICATE OF WORD COUNT ..................................................................... 82
`
`CERTIFICATE OF SERVICE ............................................................................... 83
`
`
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`4
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
`
`
`PETITIONER’S EXHIBIT LIST
`
`Ex. 1001
`
`U.S. Patent No. 10,891,608
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`Ex. 1002
`
`Prosecution History of U.S. Patent No. 10,891,608
`
`Ex. 1003
`
`[Declaration]
`
`Ex. 1004
`
`U.S. Patent Publication No. 2010/0227671A1 to Laaroussi et al.
`(“Laaroussi”)
`
`Ex. 1005
`
`U.S. Patent No. 4,374,557 to Sugimoto et al. (“Sugimoto”)
`
`Ex. 1006
`
`Ex. 1007
`
`U.S. Patent No. 10,121,318 to LeMay et al. (“LeMay”)
`
`U.S. Patent No. 6,840,860 to Okuniewicz (“Okuniewicz”)
`
`Ex. 1008
`
`Reserved
`
`Ex. 1009
`
`Reserved
`
`Ex. 1010
`
`Waiver of Service of Complaint (July 18, 2022)
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`
`
`
`Specification of the Bluetooth System, Version 1.2
`(November 5, 2003)
`
`Specification for RFID Air Interface, Version 1.2.0 (October 23,
`2008)
`
`Curriculum Vitae of Dr. Clifford Neuman
`
`
`
`5
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`
`
`I.
`
`INTRODUCTION
`
`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
`
`
`CSC ServiceWorks, Inc. (“Petitioner” or “CSC”) respectfully requests the
`
`Board institute inter partes review of and cancel claims 1-2, 4-8, 10-14, 16-20 (“the
`
`Challenged Claims”) of U.S. Patent No. 10,891,608 (“the ‘608 patent,” Ex.1001).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ‘608 patent is eligible for IPR and that Petitioner
`
`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a). This petition is timely because Petitioner first filed a waiver of
`
`service of a complaint asserting the ‘608 patent on July 18, 2022, which means
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`Petitioner was served with a complaint alleging infringement of the ‘608 patent not
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`more than one year ago. Ex.1010; FRCP 4(d)(4) (complaint is deemed “served at the
`
`time of filing the waiver”); see also Brinkmann Corp. v. A&J Mfg., LLC, IPR2015-
`
`00056, Paper 10 at 6–7 (PTAB March 23, 2015) (holding that the date a waiver of
`
`service is filed with the district court is the date that a petitioner is deemed to have
`
`been served).
`
`III. NOTE
`
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`IV. SUMMARY OF THE ‘608 PATENT
`
`The ‘608 patent is titled “Method and System for an Offline-Payment
`
`Operated Machine to Accept Electronic Payments” and issued on January 12, 2021.
`
`Ex.1001, codes (45), (54). The ‘608 patent describes retrofitting an offline-payment
`
`operated machine with a payment module to facilitate electronic transactions. See
`
`id., Abstract; 9:16-27; 39:38-46:5; Figs. 28A-B, 29A-B, 30. Figure 28A of the ‘608
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`patent is illustrative and reproduced below.
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`Figure 28A illustrates a block diagram of the offline-payment operated machine
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`1500. Id., 39:38-48. “[T]he offline-payment operated machine 1500 (e.g., a form of
`
`the machine 120) is an electro-mechanical machine capable of accepting currency
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`(e.g., coins), which is not connected to any networks (e.g., telephone, cellular, or
`
`Wi-Fi). Id., 39:40-44. The offline-payment operated machine includes, among other
`
`components, a coin microswitch 1502 and a control unit 1506. Id., 39:49-56.
`
`Microswitch 1502 includes a lever 1504 in the coin slot of the offline-payment
`
`operated machine. Id., 39:57-65. When a coin enters the coin slot, lever 1504 is
`
`depressed, closing the microswitch 1502 and sending a pulse to control unit 1506.
`
`Id., 39:61-40:6. “[W]hen the control unit 1506 receives a preset sequence of payment
`
`acceptance signals indicative of a preset number of coins being received by the
`
`microswitch 1502, the control unit 1506 initiates the operation of the offline-
`
`payment operated machine 1500.” Id., 40:7-11.
`
`
`
`The machine is retrofitted with a payment module 1520 and functions to
`
`“accept electronic payments.” Id., 40:22-26. In certain embodiments, payment
`
`module 1520 has a first interface module 1522 configured to output to control unit
`
`1506 one or more electrical pulses emulating analog signals generated by coin
`
`receiving microswitch 1502 when coins of a predetermined value pass through. Id.,
`
`40:35-49. When the control unit 1506 receives a certain number of pulses it may
`
`initiate operation of the offline-payment operated machine. See id. The payment
`
`module 1520
`
`further
`
`includes a short-range communication capability
`
`corresponding to a short-range protocol and is configured to communicate with one
`
`or more mobile devices. Id., 41:4-20.
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`As shown below, each of these functionalities and concepts claimed by the
`
`‘608 patent were previously known in the art. Ex.1003, ¶¶3, 31-33.
`
`V.
`
`PROSECUTION HISTORY
`
`The ‘608 patent application was filed as Application Number 15/878,352 on
`
`January 23, 2018. Ex.1001, codes (21), (22). The ‘608 patent claims priority through
`
`a chain of continuations and continuation-in-parts to Provisional Application
`
`Number 61/917,936, filed on December 18, 2013. Id., codes (63), (60). It is
`
`unnecessary to determine whether the ‘608 patent is entitled to its earliest alleged
`
`priority date because the prior art relied upon herein pre-dates the earliest alleged
`
`priority date.
`
`During prosecution of the application issuing as the ‘608 patent, the Applicant
`
`faced only one rejection based on 35 U.S.C. § 101 and nonstatutory double patenting
`
`with respect to U.S. Patent No. 9,875,473. Ex.1002, 173-84. Applicant later filed a
`
`terminal disclaimer to this patent to overcome the double patenting rejection and
`
`amended the claims in response to the rejection under 35 U.S.C. § 101. Id., 250-60.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) of the ‘608 patent in
`
`December of 2013 would have had a bachelor’s degree in electrical engineering,
`
`computer engineering, computer science, or equivalent training, and approximately
`
`three years of experience with electronic payment systems, vending machine
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`technologies, or distributed network systems. Lack of work experience can be
`
`remedied by additional education, and vice versa. Ex.1003, ¶¶18-20.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “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), including 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.” 37 C.F.R. § 42.100(b). The Board
`
`only construes the claims to the extent necessary to resolve the underlying
`
`controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes of this
`
`proceeding, the terms of the challenged claims should be given their plain and
`
`ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶30.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and cancel
`
`the Challenged Claims in view of the analysis below.
`
`
`1 Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
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`10
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
`
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`Under the “Interim Procedure for Discretionary Denials in AIA Post-Grant
`
`Proceedings with Parallel District Court Litigation, dated June 21, 2022 (“Interim
`
`Guidance”), “the PTAB will not discretionarily deny institution of an IPR or PGR
`
`in view of parallel district court litigation where a petitioner stipulates not to pursue
`
`in a parallel district court proceeding the same grounds as in the petition or any
`
`grounds that could have reasonably been raised in the petition.” Interim Guidance,
`
`7. Referred to as a Sotera stipulation, “[t]his clarification avoids inconsistent
`
`outcomes between the PTAB and the district court and allows the PTAB to review
`
`grounds that the parallel district court litigation will not resolve.” Id., 7–8. The
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`Interim Guidance is “binding agency guidance” to the Board. Id., 3.
`
`Consistent with this guidance, Petitioner stipulates that, if the instant IPR is
`
`instituted, it will not pursue against the ‘608 patent in the parallel district court
`
`proceeding the same grounds as in the petition or any grounds that could have
`
`reasonably been raised in the petition.
`
`Furthermore, (1) the parallel district court litigation between PayRange Inc.
`
`(“PayRange” or “Patent Owner”) and CSC that is currently pending in the District
`
`of Delaware is at the pleading stage and no scheduling order has been entered (See
`
`PayRange Inc. v. CSC ServiceWorks, Inc., 1:23-cv-00278-MN (D. Del.) (“PayRange
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`Litigation”)); (2) Petitioner intends to seek a stay of the PayRange Litigation pending
`
`IPR; and (3) the Petition presents compelling evidence of unpatentability in light of
`
`the combinations of prior art references, such that, if unrebutted in trial, would lead
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`to a conclusion that the Challenged Claims are unpatentable by a preponderance of
`
`the evidence. Interim Guidance, 4-5. Accordingly, the Board should not
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`discretionarily deny institution under Fintiv.
`
`B. Discretionary denial under General Plastic is not appropriate
`
`The General Plastic factors also weigh heavily against discretionary denial.
`
`While there has been one prior PGR challenging the ‘608 patent, CSC is a different
`
`petitioner than the petitioner in that proceeding. See PGR2021-00084. Furthermore,
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`CSC was not involved in any prior suit involving the petitioner in PGR2021-00084.
`
`The Board routinely finds that General Plastic does not apply to the circumstances
`
`here, where the petitioner was sued independently, was sued on largely different
`
`products, and has no significant relationship with the prior petitioner. See, e.g.,
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`NetNut Ltd. v. Bright Data Ltd., IPR2021-00465, Paper 11 at 8-11 (Aug. 12, 2021).
`
`C. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
`
`this petition are neither cumulative nor redundant to the prosecution of the ‘608
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`petition.
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
`
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Petitioner challenges claims 1-2, 4-8, 10-14, 16-20 of the ‘608 patent.
`
`B.
`
`Statutory Grounds for Challenges
`
`Grounds
`
`Claim(s)
`
`Basis
`
`#1
`
`#2
`
`1-2, 5, 7-8, 11,
`13-14, 17, 19-20
`
`are obvious over Laaroussi in view of
`LeMay and Sugimoto
`
`4, 6, 10, 12, 16,
`18
`
`are obvious over Laaroussi in view of
`LeMay, Sugimoto, and Okuniewicz
`
`
`
`X.
`
`
`
`U.S. Patent Publication No. 2010/0227671 to Laaroussi et al. (“Laaroussi,”
`
`Ex.1004) was filed on May 29, 2009 and published on September 9, 2010. Laaroussi
`
`is thus prior art under at least U.S.C. § 102(a)(1).
`
`
`
`U.S. Patent No. 10,121,318 to LeMay et al. (“LeMay,” Ex.1006) was filed on
`
`September 9, 2011. LeMay is thus prior art under at least U.S.C. § 102(a)(2).
`
`U.S. Patent No. 4,374,557 to Sugimoto et al. (“Sugimoto,” Ex.1005) was filed
`
`on November 14, 1980. Sugimoto is thus prior art under at least U.S.C. § 102(a)(2).
`
`
`
`U.S. Patent No. 6,840,860 to Douglas M. Okuniewicz (“Okuniewicz,”
`
`Ex.1007) was filed on August 15, 2000. Okuniewicz is thus prior art under at least
`
`U.S.C. § 102(a)(2).
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`13
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`
`C. Ground 1: Claims 1-2, 5, 7-8, 11, 13-14, 17, 19-20 are obvious
`under 35 U.S.C. § 103 over Laaroussi in view of LeMay and
`Sugimoto
`
`1.
`
`Summary of Laaroussi
`
`Similar to the ‘608 patent, Laaroussi relates to an offline payment-operated
`
`machine retrofitted with a payment module configured for wireless communication
`
`and coin pulse emulation. Laaroussi discloses “a currency media reader hub adapted
`
`to be retrofitted in a gaming machine and to interconnect various existing
`
`components thereof.” Ex.1004, [0002]. Laaroussi teaches that the currency media
`
`reader hub (“CMRH”) is retrofitted to these gaming machines and adapted to (1)
`
`connect to a “peripheral component” such as a coins receiving module, (2)
`
`communicate with “virtual currency holding media” such as RFID-enabled devices,
`
`and (3) communicate wirelessly with a network. Id., Abstract. This arrangement is
`
`shown in an annotated version of Figure 3 below:
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`IPR2023-01188 Petition
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`coins receiving module
`
`
`currency media
`reader hub
`
`
`
`gaming machine
`
`
`The CMRH “comprises a plurality of modules interacting together” to allow
`
`numerous functionalities, such as cashless payments. It is adapted for cashless
`
`transactions with “virtual currency holding media suitable to carry virtual money,”
`
`such as an “RFID device” or a “chip-equipped card.” Id., [0061].
`
`The CMRH is retrofitted between a peripheral component of the gaming
`
`machine and the electrical components of the gaming machine, such that the CMRH
`
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`IPR2023-01188 Petition
` Inter Partes Review of U.S. 10,891,608
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`is “adapted to emulate a standard payment acceptance module such as a bill acceptor
`
`module or coin acceptor module” and communicate those signals to the gaming
`
`machine. Id., [0010-11], [0017]. Once connected, the CMRH “act[s] as a gateway
`
`and a translator between peripherals (bill acceptor, coin acceptor, etc.) and the
`
`gaming machine.” Id., [0024]. When transferring data such as cashless transaction
`
`information to the gaming machine, the CMRH “emulates a receiving module” such
`
`as a coins receiving module and, through a communication board module/port, uses
`
`“pulse string communication” to transmit that data to the electrical components of
`
`the gaming machine. Id., [0058-60]. Ex.1003, ¶¶34-38.
`
`2.
`
`Summary of LeMay
`
`LeMay relates to a “gaming system compatible with patron-controlled
`
`portable electronic devices, such as smart phones or tablet computers.” Ex.1006,
`
`Abstract. Like the ‘608 patent, the electronic gaming machine of LeMay may include
`
`a “retrofit device” that communicates with a portable electronic device using a
`
`wireless interface and short-range communication protocols such as Bluetooth and
`
`near-field communication (“NFC”). See id., Abstract, 6:34-7:6, 22:64-23:11, Fig.
`
`3A.
`
`LeMay explains that the “wireless interface 18 can be configured to receive
`
`information, such as information associated with a virtual ticket voucher, from a
`
`portable electronic device” using short-range communication protocols such as the
`
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`IPR2023-01188 Petition
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`NFC protocol. Id., 6:34-50. Like the “payment module” in the ‘608 patent, the
`
`“[w]ireless interface 18 can be also used to accept information from a digital wallet
`
`application, such [as] an E-wallet application.” Id., 6:51-62. The electronic gaming
`
`machine with the wireless interface configured to communicate with a portable
`
`electronic device is illustrated in annotated Figure 1 below:
`
`With respect to the “retrofit device,” LeMay explains that it can be configured
`
`to perform the virtual ticket voucher and E-wallet processing and wireless interface
`
`
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`IPR2023-01188 Petition
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`control. Id., 23:43-52, 26:47-65. Furthermore, the retrofit device can be configured
`
`to perform “device emulation” to respond to the controller 50 of the electronic
`
`gaming machine “as if it were another device on the [machine]” such as a bill
`
`validator. Id., 24:14-27.
`
`As in the ‘608 patent, LeMay also teaches that operation information is
`
`received from the game controller and sent to the mobile device via the short-range
`
`wireless transceiver in response to the initial wireless request. See id., 4:53-5:4, 9:33-
`
`45, 10:27-40, 11:20-24, 15:52-56, 38:58-39:11. The internal components of the
`
`electronic gaming machine are depicted in annotated Figure 3A. Ex.1003, ¶¶39-42.
`
`3.
`
`Summary of Sugimoto
`
`
`
`Sugimoto relates to vending machine circuitry and, in particular, the
`
`mechanical and electrical signals transmitted between coin switches and machine
`
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`IPR2023-01188 Petition
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`controller circuitry. Sugimoto discloses a coin changer for a vending machine
`
`comprising a coin changer main part and an electronic type coin discrimination
`
`device. Ex.1005, Abstract. Like the “coin receiving switch” in the ‘608 patent, the
`
`coin changer main part of Sugimoto “comprises coin switches for detecting coins of
`
`respective denominations” with a receiving device for “receiving the coins which
`
`have passed through the coin switches.” Id.
`
`The coin changer first sorts out coins by denomination, and then transfers the
`
`coins to the main part of the coin changer through passages 23A, 23B, and 23C. Id.,
`
`4:13-33. “Coin switches 24A, 24B, and 24C are provided in these passages 23A,
`
`23B and 23C.” Id. Like the “coins receiving switch” in the ‘608 patent, “[e]ach of
`
`the coin switches 24A, 24B and 24C is actuated in response to passing of each coin
`
`and produces a coin detection pulse corresponding to weight of the coin of each
`
`denomination (i.e., amount of the coin).” Id.; see also id., 7:30-51.
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`Once these analog detection pulses representing a single coin of a
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`predetermined type are produced through actuation of the coin switches, the pulses
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`“are applied to an up-down counter 37 in which an amount of deposited coins is
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`counted by cumulatively adding amounts of the deposited coins.” Id., 5:31-66. A
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`“vend control circuit 38 compares contents of the counter 37 (the amount of the
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`deposited coins) [obtained by the analog coin pulses generated by the coin switches]
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`with a preset vend price of the article to be [v]ended and thereupon supplies a vend
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`possible signal to a vender unit” which “dispenses the selected article in response to
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`this vend possible signal.” Id. This methodology is depicted in annotated Figures 1
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`and 2. Ex.1003, ¶¶43-45.
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`4.
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`Reasons to Combine Laaroussi and LeMay
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`
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`A POSITA would have been motivated to combine the teachings of Laaroussi
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`with those of LeMay. It would have been obvious, beneficial, and predictable for
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`Laaroussi’s CMRH to account for currency values into and out of the gaming machine
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`via a patron-controlled portable electronic device such as a smart phone. Ex.1003,
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`¶50. Doing so would have further enhanced the stated objectives of Laaroussi’s
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`system, including to “provide[] a [CMRH] adapted to account an amount of money
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`stored in a virtual currency media,” to “emulat[e] a gaming machine to accept money
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`from peripherals installed thereon,” and “to transfer an amount of money from the
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`virtual currency holding media to a gaming machine either automatically or by user
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`request.” Ex.1004, [0015], [0021], [0023], Ex.1003, ¶50.
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`One of ordinary skill in the art when considering the teachings of Laaroussi
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`would have also considered the teachings of LeMay. Both Laaroussi and LeMay
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`relate to gaming machines with retrofit devices for accepting virtual currency. See
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`Ex.1004, [0010], [0061]; Ex.1006, Abstract, 1:8-12, 4:19-22. In particular, both
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`describe in detail virtual currency devices that are retrofitted between the gaming
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`machine controller and a peripheral component such as a currency (e.g., bill, coin,
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`ticket) acceptor and capable of emulating, for example, a bill acceptor or coin
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`module. See Ex.1004, [0017], [0031], [0059-60]; Ex.1006, 24:14-27, 24:52-64. As
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`such, both Laaroussi and LeMay are analogous art to each other and to the ‘608
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`patent. Compare Ex.1004, [0002], [0010-11], [0013], [0017], [0021], [0023-24],
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`[0031-32]; and Ex.1006, Abstract, 22:64-23:11, 23:44-52, 24:52-64, 25:39-56 with
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`Ex.1001, 1:41-52, 5:50-61, 6:1-8, 8:4-7; Ex.1003, ¶51.
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`LeMay identifies and solves known issues with accounting labor and
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`materials costs from using physical currency in electronic gaming machines
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`(“EGMs.”) For instance, LeMay explains that labor costs tied to cash/coin
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`transactions are significant Ex.1006, 1:41-51. LeMay describes systems for
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`providing virtual ticket voucher functionality that eliminates many of these cost-
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`related disadvantages Id., 15:9-25. A POSITA would have been motivated to modify
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`Laaroussi in view of LeMay’s teachings to achieve the reductions in labor and
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`material costs described by LeMay. Ex.1003, ¶52.
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`Laaroussi describes that objects of the invention include providing a CMRH
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`adapted to account an amount of money stored in a virtual currency holding media
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`and providing a system adapted to manage gaming machines using only cash-in and
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`cash-out transactions. Ex.1004, [0015], [0025]. Laaroussi acknowledges that gaming
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`machines accept payment in the form of tickets, but does not specifically address how
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`virtual ticket currency would be handled in a way that satisfies its objectives. Id.,
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`[0003]. LeMay provides detail about how a retrofit device can be configured to accept
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`virtual ticket vouchers, issue virtual ticket vouchers, maintain soft meters (e.g., v-
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`ticket-in, v-ticket-out, total value meters), and report soft meter values to a remote
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`device via a wireless interface. Ex.1006, 23:53-63, 21:19. A POSITA would have
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`recognized that the teachings of LeMay were helpful in achieving the objectives
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`stated by Laaroussi. Ex.1003, ¶53.
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`As admitted by the ‘608 patent, there was a large development effort around
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`bringing mobile payment to the retail sector in an effort to provide options to the user
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`and to increase convenience, and mobile payment was a logical extension of use for
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`Internet-connected mobile devices. Ex.1001, 1:64-2:2; Ex.1003, ¶54. LeMay
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`describes such an effort for bringing mobile payments via smart phones and tablets
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`to gaming machines. Ex.1006, Abstract, 2:12-28, 31:39-59, 32:7-18. LeMay’s
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`device is retrofit into an existing electronic gaming machine that does not provide
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`virtual ticket voucher functionality, such that the gaming controller remains
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`unmodified. Id., 15:31-35, 22:64-23:1. LeMay describes that the retrofit device is
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`interposed between the bill validator and the game controller and performs
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`emulation of these peripheral devices. Id., 27:11-31. Similarly, Laaroussi describes
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`that the CMRH may be connected in series between a bill acceptor and the electronic
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`system of the gaming machine and performs similar emulation. Ex.1004, [0059-61].
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`Modifying Laaroussi’s CMRH to include the virtual ticket voucher functionality and
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`short-range wireless interfaces of the retrofit device taught by LeMay would have
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`been well within the level of ordinary skill in the art and would have been predictable
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`without undue experimentation. Ex.1003, ¶54.
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`Accordingly, the combination of Laaroussi and LeMay represents applying a
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`known technique (accepting and issuing virtual ticket vouchers at a retrofit device
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`and accounting for tickets and ticket values in and out of a gaming machine) to a
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`known device ready for improvement (Laaroussi’s CMRH) to yield predictable
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`results (a retrofit device for a gaming machine that handles multiple forms of virtual
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`currency and communicates wirelessly with a mobile device for the purpose of
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`cashless transactions on the gaming machine). Ex.1003, ¶55.
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`5.
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`Reasons to Combine Laaroussi and Sugimoto
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`A POSITA would also have been motivated to combine the teachings of
`
`Laaroussi with those of Sugimoto. First, it would have been obvious, beneficial, and
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`predictable to use Sugimoto’s coin switches in Laaroussi’s “coins receiving module.”
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`Ex.1003, ¶56. Where Laaroussi’s system describes “an amusement machine or a
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`gaming machine adapted to receive bills and coins respectively with a bills receiving
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`module 164.1 and a coins receiving module 164.2” and that “[t]he receiving modules
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`164.1, 164.2 are operatively connected with the gaming machine 180 using either a
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`pulse string communication mode 202 or a serial port communication mode 204,”
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`Sugimoto provides teachings for such a mechanism generating pulses based on the
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`denominations of specific coins Ex.1004, [0058]; Ex.1003, ¶56.
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`One of ordinary skill in the art when considering the teachings of Laaroussi
`
`would have also considered the teachings of Sugimoto. Both Laaroussi and
`
`Sugimoto relate to coin receivers for unattended retail machines that communicate
`
`via pulse strings. See Ex.1004, [0058-60]; Ex.1005, 1:5-8, 2:64-3:4, 5:31-66. As
`
`such, both Laaroussi and Sugimoto are analogous art to each other and to the ‘608
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`patent. Compare Ex.1004, [0002], [0010-11], [0013], [0017], [0021], [0023-24],
`
`[0031-32], [0058-60]; and Ex.1005, 1:5-8, 2:64-3:4, 5:31-66 with Ex.1001, 1:32-52,
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`5:50-61, 6:1-29, 8:4-7, 15:66-16:22. Ex.1003, ¶57.
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`As discussed above, Sugimoto describes a coin changer for a vending
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`machine. In particular, Sugimoto describes coin receiving modules with detail
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`regarding how coin switches generate electrical pulses from the passing of a physical
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`object, such as a coin, through the switch. Ex.1005, 1:9-40, 5:30-66. A POSITA
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`would have been motivated to modify Laaroussi in view of Sugimoto’s teachings at
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`least because Sugimoto provides additional detail about a known component in
`
`Laaroussi (e.g., a coins receiving module). Because Laaroussi relies on the same
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`component for receiving coins described in Sugimoto, a POSITA would have been
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`motivated to modify Laaroussi with the teachings of Sugimoto to further enhanc