Savvy Dog Systems, LLC

Patent Trials and Appeals Board

Nov 19, 2020

CBM2020-00014 (P.T.A.B. Nov. 19, 2020)

Trials@uspto.gov Paper No. 14
571.272.7822 Entered: November 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BANILLA GAMES, INC.,
Petitioner,

v.

SAVVY DOG SYSTEMS, LLC,
Patent Owner.
____________

CBM2020-00014
Patent 7,736,223 B2
____________

Before JOSIAH C. COCKS, MIRIAM L. QUINN, and
KEVIN W. CHERRY, Administrative Patent Judges.

CHERRY, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
35 U.S.C. § 324; 37 C.F.R. § 42.4

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I. INTRODUCTION
Banilla Games, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
seeking a covered business method (“CBM”) patent review of claims 1–75
of U.S. Patent No. 7,736,223 B2 (Ex. 1001, “the ’223 patent” or the
“challenged patent”) under section 18 of the Leahy-Smith America Invents
Act, Pub. L. No. 112–29, 125 Stat. 284, 331 (2011) (“AIA”). Patent Owner,
Savvy Dog Systems, LLC, filed a Preliminary Response (Paper 6, “Prelim.
Resp.”).
On September 15, 2020, pursuant to our authorization (Paper 8),
Petitioner filed a Reply Brief on the limited issue of whether we should
exercise our discretion and deny the Petition. Paper 8. Patent Owner filed a
Sur-Reply on September 22, 2020. Paper 10.
Under 35 U.S.C. § 324(a),1 a covered business method patent review
may not be instituted “unless . . . the information presented in the
petition . . . , if such information is not rebutted, would demonstrate that it is
more likely than not that at least 1 of the claims challenged in the petition is
unpatentable.” 35 U.S.C. § 324(a) (2018).
For reasons that follow, we determine that Petitioner has failed to
show that the challenged patent qualifies as a covered business method
patent. Accordingly, we decline to institute a covered business method
patent review of the challenged claims.

1 See 37 C.F.R. § 42.300(a).
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A. Related Matters
The ’223 patent has been asserted against third-parties in Savvy Dog
Sys. v. Pa. Coin Holdings, LLC, C.A. No. 3:19-cv-01470-JPW (M.D. Pa.,
filed Aug. 23, 2019). Pet. 5; Paper 4, 2.
B. The Challenged Patent
The ’223 patent, titled “Electronic Gaming Method and System
Having Preview Screen,” describes a method and system for providing a
game preview display to players of an amusement or entertainment
electronic game before playing the game.” Ex. 1001, code (54), 1:15–17.
The ’223 patent explains that
In one aspect of the invention, an electronic gaming
method with a game preview display is provided to
a player. A game field is constructed having a
plurality of elements on a game display wherein
each element is filled by a game symbol from a
plurality of available game symbols. The game
symbols for each element are automatically
determined such that there is no winning
combination without player interaction. The field
of game symbols is presented on the game display
to the player as a preview for deciding whether or
not to play the displayed game. If the player decides
to play the game, the player selects a field element
to turn the symbol displayed into a wild symbol.
The player’s selection of the field element for the
wild symbol location is received by the game
software which determines each winning
combination of symbols that is formed by such wild
symbol location selection. Each winning
combination of symbols on the field of game
symbols is displayed to the player. A new game
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field could then be constructed and presented on the
game display.
Id. at 2:10–27.
C. Illustrative Claim
Petitioner challenges all original seventy-five claims of the challenged
patent. Patent Owner filed a disclaimer of claims 2, 4, 8–10, 12, 14, 16, 17,
21, 23, 24, 26, 28, 32, 34–36, 43, 50, and 57–75 of the ’223 patent. Ex.
2001. Of the remaining claims, claims 1, 13, 19, 25, 37, 44, and 51 are
independent claims. Claim 1 is illustrative of the claimed subject matter:
1. An electronic gaming method comprising the steps of:
constructing a game field having a plurality of elements for an
interactive touch screen game display on an electronic
game terminal wherein each element is filled by a game
symbol from a plurality of predetermined game symbols,
wherein the game symbols for each element are
automatically determined such that there is at least one
winning combination for each play of the game but there
is no winning combination without player interaction with
the game display;
testing the game field prior to displaying the game to the player
to ensure that a winning combination more valuable than
the determined winning combination is not generated
inadvertently in completing the field;
automatically displaying an actual game to be played on the
touch screen display to a player prior to initiating
activation of game play;
receiving the player's selection of a field element as a location
for a wild symbol and determining each winning
combination of symbols that is formed by such selection;
and
displaying each winning combination of symbols on the touch
screen display.
Ex. 1001, 12:51–13:6.
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D. Asserted Ground of Unpatentability
Petitioner challenges claims 1–752 of the ’223 patent based on the
following ground of unpatentability:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1–75 101 Eligibility
1–75 112 ¶ 1 Written Description
13–24, 44–50, 64–69 112 ¶ 6 Insufficient Structure for
means plus function limitation
“game processor for”
25–36, 51–57, 70–75 112 ¶ 6 Insufficient Structure for
means plus function limitation
“program instructions that”
45, 46, 65 112 ¶ 6 Insufficient Structure for
means plus function limitation
“component for”
Pet. 17. Petitioner relies on the Declaration of Garry Kitchen (Ex. 1003) to
support its assertion of unpatentability.
II. DISCUSSION
A. CBM Patent Review Eligibility
Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
proceeding only for a CBM patent. A “covered business method patent” is a
patent that “claims a method or corresponding apparatus for performing data
processing or other operations used in the practice, administration, or

2 Patent Owner disclaimed claims 2, 4, 8–10, 12, 14, 16, 17, 21, 23, 24, 26,
28, 32, 34-36, 43, 50, and 57–75. See Ex. 2001. Given our disposition of
this proceeding, we list the grounds as originally presented in the Petition for
the sake of simplicity.
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management of a financial product or service, except that the term does not
include patents for technological inventions.” AIA § 18(d)(1); see also 37
C.F.R. § 42.301 (defining “[c]overed business method patent” and
“[t]echnological invention”). To determine whether a patent is eligible for a
CBM patent review, the focus is on the claims. Blue Calypso, LLC v.
Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (“[Section] 18(d)(1)
directs us to examine the claims when deciding whether a patent is a
[covered business method] patent.”); Unwired Planet, LLC v. Google Inc.,
841 F.3d 1376, 1382 (Fed. Cir. 2016) (CBM patents “are limited to those
with claims that are directed to methods and apparatuses of particular types
and with particular uses ‘in the practice, administration, or management of a
financial product or service’” (emphasis added)). One claim directed to a
CBM is sufficient to render the patent eligible for CBM patent review. See
Transitional Program for Covered Business Method Patents—Definitions of
Covered Business Method Patent and Technological Invention; Final Rule,
77 Fed. Reg. 48,734, 48,736 (Comment 8) (Aug. 14, 2012).
A CBM patent can be interpreted broadly to encompass patents
claiming activities that are financial-in-nature. Transitional Program for
Covered Business Method Patents—Definitions of Covered Business
Method Patent and Technological Invention, 77 Fed. Reg. at 48735; Blue
Calypso, 815 F.3d at 1338–41 (determining that a patent was a covered
business method patent because it claimed activities that are financial in
nature); Unwired Planet, 841 F.3d at1380 n.5 (stating, “we endorsed the
‘financial in nature’ portion of the standard as consistent with the statutory
definition of ‘covered business method patent’ in Blue Calypso”); Versata
Dev. Grp, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015)
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(“[The statute] on its face covers a wide range of finance-related
activities.”).
B. Effect of a Statutory Disclaimer on CBM Eligibility
Petitioner cites to a number of claims of the ’223 patent in support of
its contention that the ’223 patent claims a financial product or service.
However, as noted above, claims 2, 4, 8–10, 12, 14, 16, 17, 21, 23, 24, 26,
28, 32, 34-36, 43, 50, and 57–75 of the ’223 patent have been disclaimed
pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a). See Ex. 2001.
Patent Owner argues that these disclaimed claims cannot provide the basis
for eligibility for a covered business method patent review, because they
have been disclaimed. Prelim. Resp. 21–22. We agree with Patent Owner.
“The Federal Circuit has held consistently that claims disclaimed under
§ 253(a) should be treated as though they never existed.” Facebook, Inc. v.
Skky, LLC, CBM2016–00091, Paper 12, at 8 (PTAB Sept. 28, 2017)
(informative) (citing Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379,
1383 (Fed. Cir. 1998)). “The decision whether to institute a CBM patent
review is based on whether a patent ‘is’ a covered business method patent,
which in turn is based on what the patent ‘claims’ at the time of the
institution decision, not as the claims may have existed at some previous
time.” Id. at 6. Accordingly, as dependent claims 2, 4, 8–10, 12, 14, 16, 17,
21, 23, 24, 26, 28, 32, 34–36, 43, 50, and 57–75 are disclaimed by the time
of this decision, they cannot provide the basis for eligibility for a covered
business method patent review.
C. Analysis of Remaining Claims
The disclaimer leaves Petitioner’s analysis of claims 1, 6, 7, 13, 25,
37, and 44 for our consideration in determining whether Petitioner has
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shown the ’223 patent meets the “financial product or service” requirement.
See Pet. 8. Petitioner argues that the remaining claims “cover methods and
systems for ‘electronic gaming’ where the game provides the player with an
opportunity to win value by forming a ‘winning combination’ of symbols
presented on a game field.” Pet. 8. Petitioner asserts that
similar to the claims in Versata which covered making a
valuation determination (i.e., the price of a product based on
organizational groups), the ’223 patent’s claims cover
determining something of value (i.e., a ‘determined winning
combination’) as well as making a valuation determination (i.e.,
by testing the game field for ‘more valuable’ inadvertently
generated winning combinations) to manage and administer what
payouts a player can win.”
Id. Petitioner contends that “[i]n particular, each claim of the ’223 patent
requires, prior to the player initiating game play, ‘determin[ing] . . . at least
one winning combination for each play of the game’ and ‘testing the game
field prior to displaying the game to the player to ensure that a winning
combination more valuable than the determined winning combination is not
generated inadvertently in completing the field.’” Id. at 10 (emphasis
omitted) (citing Ex. 1001 at claims 1, 13, 25, 37, 44, 70). Petitioner argues
that “[g]enerating and redeeming value brings a claim within the ambit of
CBM review jurisdiction.” Id. Petitioner further argues that “each ‘winning
combination’ recited in the claims is to some extent ‘valuable’ and,
according to the ’223 patent, that value corresponds to a monetary value,
such as the ‘associated payout’ referenced in claim 10, 21, and 32.” Id.
Petitioner cites to Table 1 of the ’223 patent, which is reproduced below, as
illustrating this relationship.
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Table 1 of the ’223 patent shows the values assigned to various symbols
used in the Tic-Tac Fruit game of the preferred embodiment. Id. at 10–11
(citing Ex. 1001, 5:35–41, 5:27–31).
Petitioner submits that because each claim of the ’223 patent recites a
game that determines an intended “determined winning combination” and
purports to administer and manage the game so as to ensure that a winning
combination “more valuable than the determined winning combination” is
not inadvertently generated, all claims are used in the practice,
administration, and management of a financial product or service, and, thus,
render the ’223 patent eligible for a CBM review. Id. at 11 (emphasis
omitted).
Patent Owner responds that under the definition of “financial product
or service” found in Unwired Planet, the limitations “determining . . . a
winning combination” and “testing the game field prior to displaying the
game to the player to ensure that a winning combination more valuable than
the determined winning combination is not generated inadvertently in
completing the field” are not financial in nature and do not support CBM
jurisdiction. Prelim. Resp. 22–64.
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We agree with Patent Owner that the limitations “determining a
winning combination” and “testing the game field . . . to ensure that a
winning combination more valuable . . .” are not financial in nature.
Beginning with “winning combination,” we agree with Patent Owner that
“winning,” by itself, is not necessarily monetary in nature. Prelim. Resp. 28.
Indeed, other games include the step of determining whether a combination
is a “winning combination” or not without necessarily involving any kind of
prize or payout. See id. at 29–30. Instead, as is shown in the ’223 patent,
some additional step after the determination of who won is necessarily if
there is going to be some monetary payout corresponding to the win. See
Ex. 1001, Fig. 6 (showing Step 630 of “Redeem Payout and Credit
Balance”), Fig. 8 (showing Step 820 of “Redeem Payout and Credit
Balance”), 6:34–40 (explaining a player “may” redeem points earned in the
game for cash). Petitioner identifies nothing in the specification requiring
that money be paid for just winning.
Moreover, the ’223 patent makes clear that the games are intended
broadly for “entertainment” and “amusement” and not just for gambling.
See id. at 1:13–15 (explaining patent is related to “amusement and
entertainment electronic gaming”). As Patent Owner explains, the
’223 patent expressly discusses the use of the games in Ohio, which
prohibits gambling, but permits the use of games of skill for entertainment
purposes. See Prelim. Resp. 52–58 (discussing Ohio’s laws in detail);
Ex. 1001, 1:18–33 (describing Ohio’s laws prohibiting gambling, but
allowing “games of skill”). Thus, at best, “winning combination” relates
only to the possibility that a monetary payout could be received, not that a
player necessarily will receive anything of monetary value for playing the
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game. This possibility is insufficient to meet the financial product or service
requirement. See Unwired Planet, 841 F.3d at 1382 (noting “it cannot be the
case that a patent covering a method and corresponding apparatuses
becomes a CBM patent because its practice could involve a potential sale of
a good or service” and “[i]t is not enough that a sale has occurred or may
occur, or even that the specification speculates such a potential sale might
occur”).
As for the limitation “testing the game field prior to displaying the
game to the player to ensure that a winning combination more valuable than
the determined winning combination is not generated inadvertently in
completing the field,” we also agree with Patent Owner that this limitation is
also not necessarily financial in nature. See Prelim. Resp. 34–44. Petitioner
relies heavily on two points in making its case that “valuable” in this
limitation implies a monetary value: (1) the preferred embodiment’s
discussion of the payouts for different symbols (as shown in Table 1
reproduced above), and (2) a dictionary definition that “valuable” means,
among other things, “having monetary value.” See Pet. 10–11 & n.2 (citing
Ex. 1008). However, as Patent Owner points out, and discussed above, the
games disclosed in the ’223 patent are not limited to the preferred
embodiment and encompass games used for entertainment purposes only
without monetary payouts. See Prelim. Resp. 39–44, 52–58. Thus, the
embodiment discussed in relation to Table 1 is not dispositive. Additionally,
Patent Owner notes that the dictionary definition relied on by Petitioner also
defines “valuable” as “having desirable or esteemed characteristics or
qualities.” Prelim. Resp. 31 n.6 (citing Ex. 1008). As Patent Owner
persuasively explains, games involving multiple possible winning
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possibilities, such as poker, commonly assign values to those different
possibilities and a comparison to determine the hand or arrangement with the
highest relative value must be done. Id. at 34–40 (citing Ex. 2002 ¶¶ 55, 61,
96; Ex. 2007, 1–3; Ex. 2008, 1; Ex. 2009, 7–10). We agree with Patent
Owner that the broader understanding of “valuable”—as including non-
monetary comparisons — comports most closely with the claims and
specification as would be understood by one of ordinary skill in the gaming
arts. Id. at 35–37. Thus, we agree with Patent Owner that the limitation,
“testing the game field prior to displaying the game to the player to ensure
that a winning combination more valuable than the determined winning
combination is not generated inadvertently in completing the field,” is not
necessarily financial in nature either. Accordingly, because we agree with
Patent Owner that neither of the limitations relied upon by Petitioner in the
remaining claims is necessarily financial in nature, we agree with Patent
Owner that Petitioner has failed to meet its burden of showing that the
remaining claims of the ’223 patent claim a financial product or service.
D. Summary
Because Petitioner has failed to show that the remaining claims of the
’223 patent claim a financial product or service, we determine that Petitioner
has failed to show that at least one of the remaining claims of the ’223 patent
qualifies as covered business method.
III. CONCLUSION
On this record, we determine that Petitioner has not sufficiently
demonstrated that the ’223 patent is a CBM patent because the remaining
claims do not claim a financial product or service. Accordingly, we decline
to institute a CBM patent review.
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IV. ORDER
For the foregoing reasons, it is
ORDERED that the Petition for covered business method patent
review is denied.

For PETITIONER:
Dion M. Bregman
Kenneth J. Davis
Ahren C. Hsu-Hoffman
MORGAN, LEWIS & BOCKIUS LLP
dion.bregman@morganlewis.com
kenneth.davis@morganlewis.com
ahren.hsu-hoffman@morganlewis.com

For PATENT OWNER:

Brenton R. Babcock
D. Scott Sudderth
WOMBLE BOND DICKINSON (US) LLP
brent.babcock@wbd-us.com
ssudderth@wcsr.com

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