Game Show Network, LLCv.John Stephenson

Patent Trial and Appeal Board

Nov 7, 2014

09316840 (P.T.A.B. Nov. 7, 2014)

Trials@uspto.gov Paper 51
571-272-7822 Entered: November 7, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GAME SHOW NETWORK, LLC and WORLDWINNER.COM, INC.,
Petitioner,

v.

JOHN H. STEPHENSON,
Patent Owner.
____________

Case IPR2013-00289
Patent 6,174,237
____________

Before SALLY C. MEDLEY, KEVIN F. TURNER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. BACKGROUND
Game Show Network, LLC and WorldWinner.com, Inc. (collectively
“Petitioner”) filed a Petition (Paper 1; “Pet.”) seeking inter partes review of
claims 1–19 of U.S. Patent No. 6,174,237 (“the ’237 patent”) pursuant to
35 U.S.C. §§ 311–319. On November 19, 2013, we instituted an inter
partes review of claims 1–19 on two grounds of unpatentability (Paper 8;
“Dec. on Inst.”).
Subsequent to institution, John H. Stephenson (“Patent Owner”) filed
a Patent Owner Response (Paper 22; “PO Resp.”), and Petitioner filed a
Reply (Paper 35; “Pet. Reply”).
Patent Owner filed a Motion to Exclude (Paper 41; “Mot. to
Exclude”) Exhibits 1011, 1012, 1013, 1014, and 1021. Petitioner filed an
Opposition to the Motion to Exclude (Paper 43; “Exclude Opp.”), and Patent
Owner filed a Reply (Paper 44; “Exclude Reply”).
An oral hearing was held on July 10, 2014, and a transcript of the
hearing is included in the record (Paper 50; “Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–19 of the ’237 patent are
unpatentable.

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A. The ’237 Patent
The ’237 patent relates to tournament play having a qualifying round
and a playoff round. The qualifying round is played between a player,
through a computer terminal, and a host computer. The playoff round is
played between those players obtaining a predetermined level of
performance in the qualifying round and the host computer. The playoff
round is played under the same rules and conditions as in the qualifying
round, except that all the players are playing simultaneously within a
specific time frame. Ex. 1001, 1:15–24.
B. Illustrative Claim
Claim 1 of the ’237 patent is the only independent claim:
1. A method of playing a game of skill tournament
having a qualifying round and a playoff round, and played over
an interactive computer system, said interactive computer
system having a host computer system, a plurality of terminals,
computers and compatible software, said method comprising
the following steps:
a. playing a game of skill in a qualifying round between
a single player and the host computer;
b. evaluating the results of said qualifying round to
determine if said player qualifies to be classified within a
specific performance level from a plurality of performance
levels ranging from a low performance level to a high
performance level;
c. evaluating the results of said qualifying round to
determine if said player qualifies to be classified within a
qualifying performance level taken from said plurality of
performance levels;
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d. distributing to said player a performance level award,
said performance level award being dependent upon the specific
performance level obtained;
e. playing said game of skill in a playoff round between
said player and the host computer simultaneously along with
other players, wherein each player has been classified within a
qualifying performance level;
f. evaluating the results of said playoff round to
determine a tournament winner and subsequent ranking of
players; and
g. distributing tournament awards to tournament
participants.
C. Prior Art
The pending grounds of unpatentability in this inter partes review are
based on the following prior art:
PCT International Publication No. WO 97/39811, published
Oct. 30, 1997 (“Walker”) (Ex. 1002).
D. Pending Grounds of Unpatentability
This inter partes review involves the following grounds of
unpatentability:
References Basis Claims
Walker 35 U.S.C. § 102(b) 1–3, 5, and 8–19
Walker 35 U.S.C. § 103 4, 6, and 7

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II. ANALYSIS
A. Level of Skill of Person in the Art
In support of its Petition, Petitioner relies on the testimony of
its expert, Dr. E. James Whitehead, Jr. (e.g., Ex. 1005). In support of
its Response, Patent Owner relies on the testimony of its expert, Stacy
A. Friedman (e.g., Ex. 2007). Both Dr. Whitehead and Mr. Friedman
testify as to the level of skill a person in the art would have had at the
time of the invention. See, e.g., Ex. 1005 ¶ 25; Ex. 2007 ¶ 45. Mr.
Friedman testified, however, that he disagreed with Dr. Whitehead’s
assessment that a person in the art would have had an undergraduate
degree and significant first-hand experience observing, administering,
and/or participating in competitive tournaments. Ex. 2007 ¶¶ 46–47.
According to Mr. Friedman, a person of ordinary skill in the art at the
time of the invention would have had either (1) a degree in computer
science and one year of experience designing computer gaming, or (2)
no formal degree and three to four years of experience designing
computer gaming applications.
It is not necessary for us to resolve the apparent dispute to reach
a determination on the merits, and both parties agree that we need not
resolve, between Mr. Friedman and Dr. Whitehead, who is correct.
Tr. 7–8, 25–27. For purposes of this decision, we find that the level of
ordinary skill in the art is reflected by the prior art of record. Okajima
v. Bourdeau, 261 F.3d. 1350, 1355 (Fed. Cir. 2001) (the prior art itself
can reflect the appropriate level of skill in the art.)
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B. Claim Interpretation
Consistent with the statute and legislative history of the Leahy–Smith
America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), the
Board interprets claims using the “broadest reasonable construction in light
of the specification of the patent in which [they] appear[].” 37 C.F.R.
§ 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
48,756, 48,766 (Aug. 14, 2012). There is a “heavy presumption” that a
claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Also, we must be
careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“limitations are not to be read into the claims from the specification”).
1. “Playing a game of skill in a qualifying round between
a single player and the host computer”
In the Decision on Institution, based on the arguments presented by
Petitioner in the Petition and by Patent Owner in its Preliminary Response,
we interpreted the above quoted claim 1 term to mean playing a game of
skill in a qualifying round, where the game includes only one human player
and is at least administered by a host computer. Dec. on Inst. 6–9.
Petitioner agrees with this interpretation. Pet. 13; Pet. Reply 7. Patent
Owner argues that the interpretation is incorrect, and that “playing a game of
skill in a qualifying round between a single player and the host computer”
means “playing a game of skill in a qualifying round where a single human
player plays against a host computer opponent;” or stated another way, the
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phrase requires both the single player and host computer to play the game in
competition with each other. PO Resp. 23.1 The interpretation proposed by
Patent Owner would exclude single-player games of skill2 while the original
interpretation would include single-player games of skill. We are not
persuaded that our original interpretation should be modified.
We begin with the language of claim 1, the sole independent claim.
The preamble of claim 1 recites a method of playing a game of skill
tournament having a qualifying round and a playoff round, and played over
an interactive computer system. The first step of the method recites “playing
a game of skill in a qualifying round between a single player and the host
computer.” Thus, claim 1 requires playing a game of skill between a single
player and the host computer.
Both parties agree that “between” means “by the common action of:
jointly engaging.” PO Resp. 24 (citing Ex. 2001, 109); Pet. Reply 10.
Patent Owner argues that the word “between” means that both the human
player and host computer are playing the game as opponents or in
competition. PO Resp. 24. As Petitioner points out, however, the definition
of “between” includes cooperation—not just competition—between two
parties. Pet. Reply 10; Ex. 1020, 91:2–13. The word between, in the
context of claim 1, does not mean necessarily that the host computer is in
competition with the single player. Nor are we persuaded by Patent Owner’s

1 The parties also refer to this concept (e.g., playing the game in competition
with each other) as “head-to-head competition.” See, e.g., Pet. 12; PO
Resp. 17; Pet. Reply 10–11.
2 Single-player games of skill refers to those games where only one person is
in competition (no opponent), such as traditional solitaire, trivia, crossword
puzzles, etc. See, e.g., Pet. 12; PO Resp. 24–25; Pet. Reply 8.
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argument that “playing” a game requires the computer to play the game as a
computer opponent. PO Resp. 24, 27; Ex. 2007 ¶¶ 58–59. Claim 1 does not
require the computer to play the game as an opponent or for the single player
and the host computer to compete against each other. As we determined in
the Decision on Institution, claim 1 encompasses playing games of skill
where a single player plays the game of skill, e.g., “single-player games”
while the computer can “play” by administering the game, e.g., by keeping
score, operating the game, and monitoring the player’s progress. Dec. on
Inst. 7.
Dependent claim 10, which indirectly depends from claim 1, specifies
that the game of skill is a card game that includes solitaire. Ex. 1001, 6:64.
In the Decision on Institution, we determined that playing solitaire does not
require head-to-head competition. Dec. on Inst. 7. Patent Owner argues,
and Petitioner does not disagree, that solitaire can be played by two
players—“double solitaire.” PO Resp. 24; Pet. Reply 10; Ex. 2004; Ex.
2005. It is not disputed, however, that “solitaire” is traditionally a single-
player game, and that the Specification of the ’237 patent does not describe a
two-player version of solitaire. Ex. 2007 ¶ 59; Ex. 1020, 102:8–9, 109:23–
110:11. We are not persuaded by Patent Owner’s argument that claim 10 is
limited to a two-player version of solitaire, but excludes the traditional
single-player version of solitaire. PO Resp. 24. There is nothing in the
Specification of the ’237 patent that would have indicated to a person of
ordinary skill in the art that Patent Owner intended to exclude traditional
single-player versions of games of skill. Moreover, Patent Owner’s
argument is based on the premise that we should construe narrowly claim 1
to exclude single player games, and then to make all other dependent claims
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fit that narrow construction. Patent Owner’s position is contrary to the legal
requirements of claim construction. Rather, we look to the use of terms in
other claims, such as dependent claims, to ascertain the meaning of terms in
broader independent claims. See 35 U.S.C. 112, ¶ 4; Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); Tr. 35 (“Mr. Leach: . .
. And the fact that a claim has a specific limitation in claim 1, you don’t
broaden it out just because it may not capture every variant that’s in a
dependent claim. Judge Turner: Well, I think I do. I think that’s what the
court is telling me I have to do, doesn’t it?”).
We next look to the specification to determine if our construction is
consistent with the specification. Patent Owner argues that the Specification
uses the terms “between” and “against” interchangeably, and that the
Specification describes embodiments where the computer is competing
against a single player. PO Resp. 24 (citing Ex. 2002, Abstract). Even so,
we disagree, that “against” should be read into the claim in place of
“between” as Patent Owner urges us to do. Claim 1 recites “between” not
“against” and Patent Owner has not shown that it defined the term
“between” in the Specification of the ’237 patent with reasonable clarity,
deliberateness, and precision to mean “against.” See In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
At issue in this case, is the meaning of the following portion of the
Specification of the ’237 patent:
The qualifying round is played between a single player through
a computer terminal and a host computer. The host computer
has the ability to act as a game sponsor by keeping score,
operating the game, monitoring the player’s progress and to
distribute awards when appropriate. Also, the host computer
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has the ability to act as another player if the game requires more
than a single player.
PO Resp. 27–28 (citing Ex. 1001, col. 2, ll. 7–15).
Petitioner argues that the above paragraph is consistent with the “at
least administered by the host computer” construction, because the second
and third sentences describe an embodiment where the host computer acts as
a sponsor by administrating the game, but does not act necessarily as an
opponent for single player games. Pet. 12; Pet. Reply 7–8. Patent Owner
argues that the above paragraph is consistent with its construction that the
host computer acts as an opponent, because the paragraph describes that the
computer acts as an opponent at all times. PO Resp. 27–29. In other words,
Patent Owner interprets the first sentence to mean that the host computer
plays as an opponent, the second sentence to mean that the host computer
additionally can act as a game sponsor, and the third sentence to mean that
the computer additionally can act as yet another opponent (e.g., as a team
against the single player) if the game requires more than a single computer
player. PO Resp. 28–29; Ex. 2007 ¶¶ 62–66.
We have reviewed the expert testimony from both sides with respect
to how a person of ordinary skill in the art would interpret the above
paragraph. See, e.g., Ex. 1005 ¶ 35; Ex. 2007 ¶¶ 62–66; We give more
weight to Dr. Whitehead’s testimony3 than we do to Mr. Friedman’s
testimony, because we find that Dr. Whitehead’s testimony is consistent
with the words from the above recited paragraph of the Specification, while

3 Patent Owner argues that the Board should give Dr. Whitehead’s testimony
little weight. PO Resp. 9–10. We are not persuaded by the arguments,
because the evidence to which we are directed does not support the
conclusion that Dr. Whitehead’s declaration was “spoon-fed” to him as
asserted. Id.
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Mr. Friedman’s testimony is not. The first sentence is a general description
and the second and third sentences explain the role of the host computer in
the context of the first sentence. Importantly, the third sentence explains
that “if the game requires more than a single player” the host computer has
the ability to act as another player beyond the “single [human] player.” We
disagree with Patent Owner that reference to “single player” in the third
sentence means “single [computer] player” as Patent Owner asserts. PO
Resp. 28–29. We agree with Petitioner and its expert that a person of
ordinary skill in the art would have read the paragraph to mean that the game
that may be played by the system can be a single player game, where the
computer merely sponsors the game but does not play as an opponent.
Moreover, there are several examples of games listed in the Specification
that even Patent Owner’s expert Mr. Friedman recognizes are traditionally
single player games, such as solitaire, word search, crossword puzzles, and
trivia games. Ex. 1001, 3:43–52; Ex. 2007 ¶ 59; Ex. 1020, 102:8–9, 109:23–
110:11. The description of these traditional single player games further
supports the reading of the above paragraph to include single player games
where the host computer would not play the game in competition, but would
merely administer the game. The Specification is, therefore, consistent with
our previous interpretation. Dec. on Inst. 6–9.
Applying the broadest reasonable interpretation of the claims in light
of the Specification of the ’237 patent, “playing a game of skill in a
qualifying round between a single player and the host computer” means
playing a game of skill in a qualifying round, where the game includes only
one human player and is at least administered by a host computer.
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2. “Playing said game of skill in a playoff round between
said player and the host computer simultaneously along with other players”
In the Decision on Institution, based on the arguments presented by
Petitioner in the Petition and by Patent Owner in its Preliminary Response,
we interpreted the above quoted claim 1 term to mean “playing the game of
skill in a playoff round at least administered by the host computer and in
which the human player involved in the qualifying round and at least two
other human players are playing at the same time.” Dec. on Inst. 9–10.
Petitioner agrees with this interpretation. Pet. 15. Patent Owner argues that
the interpretation is incorrect, because the phrase does not require at least
two other human players are playing (in addition to the “said player”) at the
same time. PO Resp. 30. Patent Owner argues that “other players” means
“at least one other player.” In addition, Patent Owner argues that the claim
requirement “simultaneously” should be construed to mean that there is
some overlap in play.4 Id.
Patent Owner is arguing for a broader interpretation than the one in
the Decision on Institution. Instead of our construction of “at least two other
human players,” Patent Owner’s proposed broader construction includes “at
least one other human player.” We need not resolve this issue for purposes
of this decision. Patent Owner’s broader construction encompasses our
narrower construction and would include at least two other human players.

4 The disputed term includes language that is similar to step (a) regarding the
playing between a player and computer. Patent Owner, however, does not
present arguments regarding playing a game between a player and the host
computer in the context of the disputed limitation. To the extent that Patent
Owner does make such arguments, the analysis for both steps (a) and (e)
regarding playing a game of skill between a player and host computer would
be the same.
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Moreover, we need not resolve the issue of whether “simultaneously” means
that there is some overlap in play, because our construction of
simultaneously to mean at the same time would include some overlap in play
and even Patent Owner recognizes that the distinction is minor. PO
Resp. 31.
Applying the broadest reasonable interpretation of the claims in light
of the Specification of the ’237 patent, “playing said game of skill in a
playoff round between said player and the host computer simultaneously
along with other players” means playing the game of skill in a playoff round
at least administered by the host computer and in which the human player
involved in the qualifying round and at least two other human players are
playing at the same time.
3. “Evaluating the results of said qualifying round”
Claim 1 recites “evaluating the results of said qualifying round” in
steps (b) and (c). Patent Owner argues that the “evaluating the results” steps
mean that a single human player is evaluated based solely on the single
human player’s performance (against the computer) and not based on
comparing that performance against any other player who played a game of
skill. PO Resp. 33–34. Petitioner disagrees with Patent Owner’s proposed
construction and argues that there is no requirement in the claims that the
“evaluating the results” steps are based on a single player’s performance
(e.g., “absolute criteria”). Pet. Reply 2–3. Petitioner argues that the claim
does not preclude evaluating the results of the qualifying round based on
evaluating multiple performances of multiple players that participated in a
qualifying round. Petitioner concludes that the evaluating limitations cover
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either an absolute evaluation of a single player’s performance or a relative
evaluation of multiple players’ performances. Id. at 4.
We did not construe the meaning of the term “evaluating the results of
said qualifying round” in connection with the Decision on Institution. We
do so here, because it is an issue that is germane to our patentability
determination.
We begin with the plain language of the claim. First, we agree with
Petitioner that there is nothing in the language itself that explains how the
evaluating is performed. That is, there is nothing in claim 1 itself that
suggests that the evaluating must be done based on the single player’s
performance of the game of skill in isolation of any other factors or criteria.
Thus, we are not persuaded by Patent Owner’s argument that the disputed
language means evaluating a single player “into predetermined, absolute
performance levels independent of their performance relative to others in the
qualifying round.” PO Resp. 36. The claim is based on evaluating the
results of the qualifying round, not the results of the one single game that the
one single human player played. There is nothing in the claim language that
specifies that the qualifying round is based on a single game played by a
single human player despite Patent Owner’s argument to the contrary. See
Id. at 33. While the “game of skill” recited in step (a) refers to a game
played by a single player, the qualifying round is not so limiting. The
qualifying round may include other single players playing their own games
of skill between themselves and the host computer. Claim 1 does not put
limits on what constitutes the qualifying round or the evaluating of a
qualifying round. Indeed, step (e) of claim 1 recites the playoff round to be
“between said player . . . and other players” that qualified from the
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qualifying round, which could include the participation of multiple human
players in the qualifying round. As Petitioner points out, too, Patent
Owner’s expert admitted that the qualifying round could include multiple
players. Pet. Reply 4; Ex. 1020, 58:8–60:16. Based on the plain language of
claim 1, the evaluating steps evaluate the qualifying round, which could
include more than one game and more than one player. Accordingly, the
evaluating steps may be based (1) on the multiple performances of the
multiple players that participated in the qualifying round or (2) on the
absolute evaluation of a single player’s performance. Claim 1 is broad and
covers both scenarios.
We have considered the examples in the specification to which Patent
Owner directs our attention regarding evaluating a single player’s
performance based on whether the player has scored a sufficient number of
points to qualify for the qualifying round—an absolute criterion. However,
those are examples and there is nothing in the Specification which suggests
that we should limit our reading of claim 1 to include them. Claim 1 is silent
with respect to how a player’s performance is evaluated, and, based on the
record before us, we decline to read limitations from the specification into
the claims.
Applying the broadest reasonable interpretation of the claims in light
of the Specification of the ’237 patent, the steps of “evaluating the results of
said qualifying round” may be based (1) on the multiple performances of the
multiple players that participated in the qualifying round or (2) on the
absolute evaluation of a single player’s performance.
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4. “Performance level award increases as a player qualifies for higher
performance level classifications”
Claim 4 depends directly from claim 1 and recites “wherein said
performance level award increases as a player qualifies for higher
performance level classifications.” The “said performance level award” is in
reference to the performance level award of claim 1 step (d) which is
dependent upon the performance level obtained in connection with a
qualifying round. Patent Owner argues that the limitation “as a player
qualifies” requires that the higher performance level classification be
determinable while the player is playing, not after the qualifying round is
complete. PO Resp. 39. Stated another way, Patent Owner argues that the
player must be able to know that they have qualified for a higher
performance level award as they are playing, not afterwards. Id. Petitioner
disagrees and argues that claim 4 says nothing about when the player knows
that he or she has qualified for a higher performance level. Pet. Reply 14.
We did not construe the meaning of the term “wherein said
performance level award increases as a player qualifies for higher
performance level classifications” in connection with the Decision on
Institution. We do so here, because it is an issue that is germane to our
patentability determination.
There is no requirement, in the claims themselves, that specifies when
the performance level classification is determined—it could be during, or
after the player has played the qualifying round. We disagree with Patent
Owner that the plain language of “as a player qualifies” means that the
determination is performed while the player is playing the game of skill.
The term “as a player qualifies” does not mean “as a player plays the game.”
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The Specification of the ’237 patent supports the construction that the
performance level classification may be determined after the player has
played the qualifying round because it describes that “after each player has
completed the qualifying round, the results are analyzed.” Ex. 1001, 5:23–
24.
Applying the broadest reasonable interpretation of claim 4 in light of
the Specification of the ’237 patent, “wherein said performance level award
increases as a player qualifies for higher performance level classifications”
includes determining the higher performance level classification, and thus
the award, after a player plays the game.
5. “Said game of skill is based on the memory reaction of the player”
Claim 15 depends directly from claim 1 and recites “wherein said
game of skill is based on the memory reaction of the player.” In the
Decision on Institution, based on the arguments presented by Petitioner in
the Petition and by Patent Owner in its Preliminary Response, we interpreted
the above quoted claim 15 term to mean that the game of skill involves
assessing both a player’s memory and how quickly the player reacts. Dec.
on Inst. 12. Patent Owner disagrees that “memory reaction” involves the
assessment of two things—memory and reaction, but involves the
assessment of “reaction involving memory.” PO Resp. 32–33. We see no
distinction between the two constructions, and in any event, the construction
of claim 15 does not matter to our determination of the patentability of that
claim. Accordingly, we adopt our previous construction. Dec. on Inst. 12.
Neither party contests the Decision on Institution construction for the
claim 1 phrase “game of skill,” “evaluating the results of said playoff round
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to determine a tournament winner and subsequent ranking of players” or the
order of steps (b) and (c) construction of claim 1, and we discern no reason
on the record before us to change the construction of these terms. Dec. on
Inst. 5–6, 10–12. Accordingly, we adopt those constructions here.
C. Claims 1–3, 5, and 8–19 are Anticipated by Walker
With respect to the alleged anticipation of claims 1–3, 5, and 8–19
over Walker, we have reviewed the Petition, Patent Owner Response, and
Petitioner Reply, as well as the evidence discussed in each of those papers.
We are persuaded, by a preponderance of the evidence, that claims 1–3, 5,
and 8–19 are unpatentable under 35 U.S.C. § 102(b) as anticipated by
Walker.
1. Walker
Walker describes a method and system for a distributed electronic
tournament system in which remotely located players participate in a
tournament through input/output devices connected to a central controller
that manages the tournament. Ex. 1002, Abstract.
Figure 1 of Walker, reproduced below, illustrates a portion of the
electronic tournament system.

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Figure 1 depicts a distributed electronic tournament system.
Figure 1 of Walker shows a plurality of input/output (I/O) devices
104, 106 (plurality of terminals) connected to central controller 102 (host
computer) through network 108, such as the Internet. Id. at 9. Operating
system software runs the central controller hardware and controls and
coordinates all tournament software applications, including running
tournament games, registering players, accepting entry fees, and
coordinating prize payment. Id.
Players may participate in various strategy games (games of skill),
such as chess, checkers, bridge, or puzzles like crossword or jigsaw. Id. at
15, 16:4–5. Walker describes a “qualifying round” of play in which a player
may qualify to advance to the next level. Id. at 14:6–15. Host computer 102
participates in the qualifying round by administering the game, such as by
keeping a player’s score and determining whether the player qualifies to
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advance to the next round (e.g., playoff round). Id. at 15:15–20. Walker
describes single-player games, such as trivia and crossword puzzles. Id. at
3:3–10, 15:11, 17–18. For the example of trivia play, Walker describes a
single human player having completed twenty questions of the first round
(qualifying round), and that the host computer then would determine, based
on the player’s performance, whether the player had qualified to advance to
the next round. Id. at 15:15–20.
Walker also describes that the tournament system evaluates the results
of play, and as the tournament progresses, more and more players are
eliminated. Moreover, when a player advances from one game session to
the next, the player may qualify for a prize or recognition. Id. at 15:29–16:2.
Lastly, a tournament winner is determined after a final round of an
elimination tournament and prizes are awarded. Id. at 15:20–21.
2. Claim 1
Petitioner relies on Walker as teaching the method of playing a game
of skill tournament limitations of claim 1. Pet. 19–29. Patent Owner argues
that Walker does not anticipate claim 1 because Walker does not describe
1) the steps (b) and (c) of “evaluating the results of said qualifying round”
and 2) playing a game of skill in a qualifying round between a single player
and the host computer.
a. Evaluating the results of said qualifying round
Patent Owner argues that Walker does not describe that the evaluating
of results of the qualifying round is determined based on a single player’s
performance. PO Resp. 35. Patent Owner argues that Walker instead
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describes that the evaluating is determined based on the player’s
performance as well as the performance of other players in the qualifying
round, directing attention to the following description in Walker:
Another preferred embodiment includes the step of determining
whether a player has qualified for advancement to the next
game session. This includes the step of the central controller
reviewing the player’s score after the just-concluded game
session. This score is compared to the scores obtained by all of
the other players in the session.
PO Resp. 35 (citing Ex. 1002, 14 (emphasis added by Patent Owner)).
Patent Owner’s argument is based on its proposed construction of
claim 1. As discussed above in the claim construction section, we disagree
with Patent Owner that the broadest reasonable interpretation of the
evaluating steps is based on any particular criteria. No criteria are claimed.
Rather, the “evaluating the results of said qualifying round” steps are broad
and may be based (1) on the multiple performances of the multiple players
that participated in the qualifying round or (2) on the absolute evaluation of
a single player’s performance.
As Patent Owner has highlighted with respect to the above passage
from Walker, Walker describes evaluating the results based on the multiple
performances of the multiple players that participated in the qualifying
round, and, therefore, Walker describes the disputed limitation.
b. “Playing a game of skill in a qualifying round between
a single player and the host computer”
Patent Owner argues that Walker does not describe a host computer
acting as an opponent playing a human player in either a qualifying round or
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playoff round. PO Resp. 37. Patent Owner’s arguments are based on a
narrow claim interpretation that we have not adopted.
As discussed above in the claim construction section, we disagree
with Patent Owner that the broadest reasonable interpretation of the “playing
a game of skill . . . between a single player and the host computer” means
that the host computer competes against the single player. Applying the
broadest reasonable interpretation of the claims in light of the Specification
of the ’237 patent, “playing a game of skill in a qualifying round between a
single player and the host computer” means playing a game of skill in a
qualifying round, where the game includes only one human player and is at
least administered by a host computer.
Petitioner has shown, by a preponderance of the evidence, that Walker
describes the disputed limitation. Pet. 20–21. For example, Walker
describes a “qualifying round” of play in which a player may qualify to
advance to the next level. Ex. 1002, 14:6–15. Host computer 102
participates in the qualifying round by administering the game, such as by
keeping a player’s score and determining whether the player qualifies to
advance to the next round (e.g., playoff round). Id. at 15:15–20.
Patent Owner argues that absent from the Petition is a description of
what is performing the claimed method, and that such absence highlights the
requirement of the claims that the computer system plays the game as
required by every claim. PO Resp. 37–38. The argument is not persuasive
because it is not commensurate in scope with what is claimed. None of the
claims recite that “the computer system plays the game.” Moreover, Patent
Owner has not shown specifically what is missing from the Petition, or that
the Petition does not address how the Walker reference anticipates claim 1,
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for example. Claim 1 is a method claim and recites various steps. The
method steps do not recite which of the components of the “interactive
computer system” are performing the steps. Rather, the method steps
primarily are functional in nature. The Petition focuses on this functional
language of the claims in its Petition. See, e.g., Pet. 19–29.
Accordingly, we determine that Petitioner has shown by a
preponderance of the evidence that the claim 1 is unpatentable.
3. Dependent Claims 2, 3, 5, and 8–19
Patent Owner makes no arguments regarding the additional limitations
recited in dependent claims 2, 3, 5, and 8–19. PO Resp. 33–38. Upon
review of Petitioner’s evidence and analysis, we are persuaded that
Petitioner has demonstrated that Walker discloses the limitations of
dependent claims 2, 3, 5, and 8–19. Pet. 30–40. Accordingly, we determine
that Petitioner has shown by a preponderance of the evidence that the
dependent claims 2, 3, 5, and 8–19 are unpatentable.
D. Claims 4, 6, and 7 are Obvious in View of Walker
With respect to the alleged obviousness of claims 4, 6, and 7 over
Walker, we have reviewed the Petition, Patent Owner Response, and
Petitioner Reply, as well as the evidence discussed in each of those papers.
We are persuaded, by a preponderance of the evidence, that claims 4, 6, and
7 are unpatentable under 35 U.S.C. § 103 as obvious in view of Walker.
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1. Dependent Claim 4
Claim 4 depends directly from claim 1 and recites “wherein said
performance level award increases as a player qualifies for higher
performance level classifications.” The “said performance level award”
refers to the performance level award of claim 1 step (d), which in turn
refers to the performance level obtained in a qualifying round. In other
words, claim 1 step (d) requires, “distributing to said player a performance
level award, said performance level award being dependent upon the specific
performance level obtained” in a qualifying round. Thus, the performance
level award recited in claim 4 is dependent on the performance level
obtained from the qualifying round.
Walker describes that a player may be awarded a prize after a
qualifying round. Ex. 1002, 16:1–2. Walker further teaches that an award a
player may receive at the end of a tournament (after the playoff round)
increases as a player qualifies for higher performance level classifications.
Id. at 13:29–30. The difference, however, between claim 4 and Walker is
that Walker does not describe that an award a player may receive after a
qualifying round “increases as a player qualifies for higher performance
level classifications.” Petitioner argues that it would have been obvious to
provide multiple levels of awards after a qualifying round because doing so
would promote competition by providing an incentive to perform at the
highest possible level during the qualifying round. Pet. 48; Ex. 1005 ¶ 78.
Patent Owner argues that Walker does not describe using a pre-
established absolute list of performance levels for determining advancement
to a subsequent playoff round. PO Resp. 40. The argument is based on
Patent Owner’s proposed construction of the terms of claim 4. In particular,
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Patent Owner argues that claim 4 requires that the higher performance level
classification be determinable while the player is playing, not after the
qualifying round, which would result in using a pre-established list of
performance levels for determining advancement to a subsequent playoff
round. Id. at 39.
Patent Owner’s arguments are based on a narrow interpretation of
claim 4. As discussed above in the claim construction section, we disagree
with Patent Owner that the plain language of “as a player qualifies” means
that the determination is performed while the player is playing the game of
skill. The term “as a player qualifies” does not mean “as a player plays the
game.” As discussed above, “wherein said performance level award
increases as a player qualifies for higher performance level classifications”
includes determining the higher performance level classification, and thus
the award, after a player plays the game. Moreover, as discussed above in
the claim interpretation section, there is nothing in claim 1 that limits how
the evaluating is performed and claim 1 could include evaluating each player
that played in a qualifying round based on each other’s performances (e.g.,
relative) and not necessarily based on an absolute evaluation as Patent
Owner argues.
Patent Owner’s arguments are based on a narrow claim construction.
We decline to adopt such a construction for the reasons provided above.
Patent Owner makes no other arguments regarding the propriety of
Petitioner’s obviousness showing with respect to claim 4.
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2. Dependent Claims 6 and 7
Although Patent Owner categorizes claims 6 and 7 separately, the
arguments are directed to claim 1. PO Resp. 40–42. We have addressed
those arguments.
E. Patent Owner’s Motion to Exclude
Patent Owner moves to exclude Exhibits 1011, 1012, 1013, 1014, and
1021. Mot. to Exclude 1. In its Reply, Petitioner relies on the exhibits to
show alleged inconsistent positions taken by Patent Owner in connection
with the meaning of “playing a game of skill between a single player and a
host computer” in an earlier district court proceeding involving Patent
Owner and a third party. Pet. Reply 13. We did not and need not consider
such arguments or evidence in connection with the Reply. We have
determined that Petitioner has demonstrated, by a preponderance of the
evidence, that all of the claims 1–19 are unpatentable, without considering
Petitioner’s arguments regarding the alleged inconsistent positions taken by
Patent Owner in the earlier district court proceeding.5 Accordingly, we
dismiss Patent Owner’s Motion to Exclude.
III. CONCLUSION
We conclude that Petitioner has demonstrated by a preponderance of
the evidence that claims 1–3, 5, and 8–19 are anticipated under 35 U.S.C.

5 During oral hearing, counsel for Petitioner represented that it was his
expectation that the Board would not, nor need not, rely on the Exhibits
1011, 1012, 1013, 1014, and 1021 to render a final decision. Tr. 15:3–7,
18:16–20.
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§ 102 by Walker, and that claims 4, 6, and 7 would have been obvious under
35 U.S.C. § 103 over Walker.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–19 of the ’237 patent have been shown by a
preponderance of the evidence to be unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2.

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For PETITIONER:

Brenton R. Babcock
Ted M. Cannon
KNOBBE MARTENS OLSON & BEAR, LLP
2BRB@knobbe.com
2tmc@knobbe.com

For PATENT OWNER:

Daniel W. McDonald
Thomas Leach
Robert A Kalinsky
MERCHANT & GOULD, P.C.
dmcdonald@merchantgould.com
stephensonIPR@merchantgould.com
tleach@merchantgould.com
rkalinsky@merchantgould.com