Aristocrat v. IGT - Petition for IPR

8/19/2019 Aristocrat v. IGT - Petition for IPR

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3. BRC of the design claimed in the ’951 Patent ............................ 23

VI. There is a Reasonable Likelihood that Petitioner Will Prevail WithRespect to The Claim of the ‘951 Patent .......................................................... 23

A.

Legal Standards ...................................................................................... 23

1. Anticipation .................................................................................. 23

2. Obviousness ................................................................................. 25

B. Overview of the Prior Art ....................................................................... 27

1. U.S. Patent No. 3,203,391 (“Corwin”) (Ex. 1003) ..................... 27

2. Fey, Marshall, Slot Machines—A Pictorial History of The First

100 Years, 1989, Liberty Belle Books, 2nd Ed. (“Fey”) (Ex.1004). ........................................................................................... 28

3. Pollan, Michael, “Jackpot!”, Channels of Communications, Vol.

6, No. 3 (June 1986) (“Pollan”) (Ex. 1005)................................. 29

4. U.S. Patent No. 4,674,748 (“Wismer”) (Ex. 1006) ..................... 30

C. Detailed Explanation of the Grounds for Unpatentability ..................... 32

1.

Ground I: The Claim Is Invalid Under 35 U.S.C. §102(b) AsAnticipated by Corwin ................................................................. 33

2. Ground II: The Claim Is Invalid Under 35 U.S.C. §103 As

Obvious Over Fey ........................................................................ 40

3. Ground III: The Claim Is Invalid Under 35 U.S.C. §103 As

Obvious Over Pollan in View of Wismer ................................... 48

VII. Conclusion ......................................................................................................... 54


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TABLE OF AUTHORITIES

CASES Pages(s)

Apple, Inc. v. Samsung Elecs. Co., Ltd.,

678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 27

In re Borden,90 F.3d 1570 (Fed. Cir. 1996) ...................................................................... 25, 26

State ex rel. Brett v. Four Bell Fruit Gum Slot Machines,196 Okla. 44 (1945) .............................................................................................. 5

Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294 (Fed. Cir. 2010) .............................................................. 25, 33, 40

Door-Master Corp. v. Yorktowne, Inc.,256 F.3d 1308 (Fed. Cir. 2001) ........................................................22, 25, 39, 40

Durling v. Spectrum Furniture Co.,101 F.3d 100 (Fed. Cir. 1996) ...................................................................... 25, 43

Egyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008) (en banc) ...................................................... 13, 24

Gorham Mfg. Co. v. White,

81 U.S. 511 (1871) ........................................................................................ 24, 39

H. K. Porter Co. v. Black & Decker Mfg. Co., No. 71 C 2859, 1974 WL 20209 (N.D. Ill. July 17, 1974), aff’d ,518 F.2d 1177 (7th Cir. 1975) ............................................................................ 24

In re Haruna,249 F.3d 1327 (Fed. Cir. 2001) .......................................................................... 25

In re Harvey,

12 F.3d 1061 (Fed. Cir. 1993) ............................................................................ 26

High Point Design LLC v. Buyers Direct, Inc.,730 F.3d 1301 (Fed. Cir. 2013) .......................................................................... 13

Int’l Seaway Trading Corp. v. Walgreens Corp.,589 F.3d 1233 (Fed. Cir. 2009) ........................................................24, 25, 27, 39


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In re Klein by Klein,987 F.2d 1569 (Fed. Cir. 1993) .......................................................................... 33

Lee v. Dayton-Hudson Corp.,838 F.2d 1186 (Fed. Cir. 1988) .......................................................................... 19

MRC Innovations, Inc. v. Hunter Mfg.,747 F.3d 1326 (Fed. Cir. 2014) .............................................................. 26, 27, 52

Neo-Art Inc. v. Hawkeye Distilled Prods. Co.,654 F. Supp. 90 (C.D. Cal. 1987) ....................................................................... 40

Payne Metal Enters., Ltd. v. McPhee,382 F.2d 541 (9th Cir. 1967) .............................................................................. 44

Philco Corp. v. Admiral Corp.,199 F. Supp. 797 (D. Del. 1961) ................................................................... 19, 21

In re Rosen,673 F.2d 388 (C.C.P.A. 1982) ............................................................................ 26

Schering Corp. v. Geneva Pharms., Inc.,339 F.3d 1373 (Fed. Cir. 2003) .......................................................................... 23

State v. Striggles,210 N.W. 137 (Iowa, 1926) .................................................................................. 5

STATUTES

35 U.S.C. §102 .................................................................................................. passim

35 U.S.C. §103 .................................................................................................. passim

35 U.S.C. §171 ......................................................................................................... 19

35 U.S.C. §314(a) .................................................................................................... 23

OTHER AUTHORITIES

37 C.F.R. §42.100(b) ............................................................................................... 13


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M.P.E.P. §1503.02 ....................................................................................... 15, 19, 21

M.P.E.P. §1504.02 ............................................................................................. 24, 40

M.P.E.P. §1504.03 ............................................................................................ passim

M.P.E.P. §1504.05 ............................................................................................ passim


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LIST OF EXHIBITS

Exhibit Description

Ex. 1001 U.S. Patent No. D503,951Ex. 1002 File History for U.S. Patent No. D503,951

Ex. 1003 U.S. Patent No. 3,203,391 (“Corwin”)

Ex. 1004 Fey, Marshall, Slot Machines—A Pictorial History of The First100 Years, 1989, Liberty Belle Books, 2nd Ed. (“Fey”).

Ex. 1005 Pollan, Michael, “Jackpot!”, Channels of Communications, Vol.6, No. 3 (June 1986) (“Pollan”)

Ex. 1006 U.S. Patent No. 4,674,748 (“Wismer”)

Ex. 1007 U.S. Patent No. Des. 176,445 (“Claire”)

Ex. 1008 U.S. Patent No. 5,823,874 (“Adams”)

Ex. 1009 U.S. Patent No. 6,855,056 (“Inoue”)

Ex. 1010 UK Patent Publication GB 2 201 821 A (“Pickardt”)

Ex. 1011 U.S. Patent No. 6,142,873 ("Weiss")

Ex. 1012 U.S. Patent No. 6,162,121 (“Morro”)

Ex. 1013 U.S. Patent No. 1,720,946 (“Doerr”)Ex. 1014 U.S. Patent No. 500,015 (“Lighthipe”)

Ex. 1015 Vienna Convention on Road Signs and Signals, 1968(“Convention”)

Ex. 1016 Manual of Uniform Traffic Control Devices, 1971 edition, Part 7 – Schools

Ex. 1017 UK Patent Publication GB 2 383 668 A (“Short”)

Ex. 1018 Declaration of Prof. Steven Visser

Ex. 1019 Curriculum vitae of Prof. Steven Visser


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I.

MANDATORY NOTICES (37 C.F.R. §42.8(a)(1))

A.

Real Party-In-Interest (37 C.F.R. §42.8(b)(1))

The real parties-in-interest for this petition for Inter Partes Review (“IPR”) are

Aristocrat Technologies, Inc. (“Petitioner”); Aristocrat International Pty Ltd.;

Aristocrat Technologies Australia Pty Ltd.; and Aristocrat Leisure Limited.

B.

Related Matters (37 C.F.R. §42.8(b)(2))

U.S. Patent No. D503,951 (“the ’951 Patent”) is currently the subject of

litigation against Aristocrat Technologies, Inc. in the District of Nevada, captioned

IGT v. Aristocrat Technologies, Inc. (Civil Action No. 2:15-cv-00473).

C.

Lead and Backup Counsel (37 C.F.R. §42.8(b)(3))

Lead Counsel Back-up Counsel

Andrea G. Reister (Reg. No. 36,253)

[email protected]

Postal and Hand-Delivery Address:Covington & Burling LLP

One CityCenter

850 Tenth Street, NW

Washington, DC 20001

T: (202) 662-5141; F: (202) 778-5141

Jay I. Alexander (Reg. No. 32,678)

[email protected]

Postal and Hand-Delivery Address:Covington & Burling LLP

One CityCenter

850 Tenth Street, NW

Washington, DC 20001

T: (202) 662-5622; F: (202) 778-5622

D.

Service Information (37 C.F.R. §42.8(b)(4))

Service information for lead and back-up counsel is provided in the

designation of lead and back-up counsel above. A power of attorney is submitted

with this Petition. Counsel for Petitioner consents to service of all documents via

electronic mail.


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II.

FEES (37 C.F.R. §42.103)

The undersigned authorizes the Office to charge $23,000 ($9,000 request fee

and $14,000 post-institution fee) to Deposit Account No. 50-0740 for the fees set

forth in 37 C.F.R. §42.15(a) for this Petition for Inter Partes Review. The

undersigned further authorizes payment for any additional fees that might be due in

connection with this Petition to be charged to this Deposit Account.

III.

REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.

§42.104

A.

Grounds for Standing (37 C.F.R. §42.104(a))

Pursuant to 37 C.F.R. §42.104(a), Petitioner certifies that the ’951 Patent is

available for inter partes review and that Petitioner is not barred or estopped from

requesting an inter partes review challenging the ’951 Patent on the grounds

identified in the present petition.

B. Claims and Statutory Grounds (37 C.F.R. §§42.104(b)(1) & (b)(2))

Petitioner respectfully requests review of the sole claim of the ’951 Patent.

The specific prior art and statutory grounds for invalidity of the design claim

presented in this petition are outlined below.

Ground Statutory Basis Reference(s)

I §102(b) Corwin (Ex. 1003)

II §103(a) Fey (Ex. 1004)


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III §103(a) Pollan (Ex. 1005) in view of Wismer (Ex. 1006)

C. Unpatentability of the Claim (37 C.F.R. §42.104(b)(4))

An explanation of how the Claim of the ’951 Patent is unpatentable under the

statutory ground(s) identified above is provided in Section VI, below.

D.

Supporting Evidence (37 C.F.R. §42.104(b)(5))

The exhibit numbers of the evidence supporting the challenge and the

relevance of the evidence to the challenge raised, including identifying specific

evidence supporting the challenge, are provided below in the form of explanatory

text. An Exhibit List with the exhibit numbers and a brief description of each

exhibit is set forth above.

IV.

BACKGROUND AND INTRODUCTION

A.

Gaming Devices and Indicators

The sole claim in the ’951 Patent is directed to an “ornamental design for a

gaming device having a display with multiple indicators.” See Ex. 1001, Claim.

Gaming devices, including slot machines, are not new and have existed for

over a century. See generally Fey, Marshall, Slot Machines—A Pictorial History of

The First 100 Years, 1989, Liberty Belle Books, 2nd Ed. (Ex. 1004). Charles Fey of

San Francisco, California, invented what is widely recognized as the first slot

machine sometime during the last decade of the 19th century. The machine used

three spinning “reels” to randomly display a combination from among five


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symbols—horseshoes, diamonds, spades, hearts, and a Liberty Bell. See Ex. 1004 at

43. Around the same time, and also in San Francisco, Prussian-born Gustav F.W.

Schultze began inventing slot machines with wheels instead of reels. See Ex. 1004 at

30. Schultze modeled some of his designs after James Lighthipe’s 1893 “Luck

Machine” (pictured below), considered to be the first automatic payout wheel-based

slot machine. Id ; Ex. 1014. Lighthipe’s 1893 device had a circular display with an

indicator at the 12:00 position to denote the symbol selected as a result of a wheel

spin. For over a century, slot machines had one or more rotating members like reels

or wheels. See Ex. 1018, ¶ 15; see also Ex. 1004 at 30, 36. In 1975, Walt Fraley

developed the first slot machine using a television screen, named “Fortune Coin.”

See Ex. 1004 at 213. Even today, slot machines use reels or wheels, whether

physical, electronically simulated, or in some cases, a combination of both. See Ex.

1018, ¶ 15.

Ex. 1004 at 30


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As explained in the Declaration of Steven Visser, a professor of industrial

design at Purdue University, the gaming industry has a colorful history that has had

meaningful influences on design. Gaming machines were outlawed for a number of

decades in the early 20th century. See Ex. 1018, ¶ 16. Game designers quickly

learned how to disguise slot machines as ordinary objects like clocks, radios, or

dispensers, and gaming machine popularity grew rapidly in spite of the legal

obstacles. Id.; see also State v. Striggles, 210 N.W. 137, 138 (Iowa, 1926) (“It

appears that in the early part of 1923 there was installed in several places of

business… a gum or mint vending machine... [S]uch machine [is] a gambling

device.”); State ex rel. Brett v. Four Bell Fruit Gum Slot Machines, 196 Okla. 44, 44

(1945) (“the four (4) Bell Fruit Gum Slot Machines seized and involved herein [are]

slot machines.”). In fact, camouflaging slot machines as gum dispensers became so

popular that the machines began being referred to as fruit machines—a term still used

today for gaming devices in some countries including the UK. See Ex. 1018, ¶ 16.

Contemporary slot machines continue to embody numerous design elements from the

prohibition era. The fruit symbols used on indicia, for instance, owe their origins to

the gum machine days. Id .

While slot machines have evolved over the years, at least one aspect from a

design perspective—namely, indicators —has remained unchanged. See id . , ¶ 17.

Beginning with the earliest slot machines, like the 1893 Lighthipe machine,


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indicators helped users identify the results of their play. See id., ¶¶ 15, 17. An

indicator in this gaming device context is nothing more than an arrow, see id., ¶ 17,

and any arrow that can point towards indicia on the slot machine’s rotating member

(i.e., a reel, drum, or wheel) can serve as an indicator.1 Id . Arrows on gaming

devices come in many different shapes and sizes, as shown in the following

examples:

Ex. 1004 at 132 Ex. 1004 at 134 Ex. 1008, FIG. 4

Ex. 1004 at 122 Ex. 1007, FIG. 1 Ex. 1012, FIG. 7

Incorporating multiple arrows on gaming devices is also not a recent

phenomenon. See Ex. 1018, ¶ 18. Slot machines—regardless of whether they

employ reels or wheels—have featured more than one indicator for decades. Id .

Multiple indicators may be configured in a handful of ways, depending primarily on

1 This petition refers to “indicators” and “arrows” in the context of gaming

devices interchangeably.


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whether they point toward a rectangular window or screen (displaying reels, for

instance) or toward a circular disc (i.e., a wheel). Id .

Ex. 1004 at 201 Ex. 1010, FIG. 1

Ex. 1011, FIG. 1 Ex. 1005

Ex. 1004 at 208 Ex. 1013, FIG. 1

As Prof. Visser explains, while arrows could conceivably be designed

artistically, at least certain aspects of the configuration of the arrows are functional

and governed by what the arrow needs to point toward. See Ex. 1018, ¶¶ 18-19. The

images above illustrate this point: Arrows that point toward a rectangular display are

parallel to (or opposite) one another, while arrows that point toward a circular display

are concentrically spaced around the wheel. Id .


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B.

The Irregular Pentagon (House) Shape

The ’951 Patent claims pentagonally shaped indicators. Because the angles of

the indicator pentagons are not all equal (i.e., they are not each 108°), the indicators

are irregular pentagons. See id ., ¶ 19.

Using this kind of irregular pentagon as an arrow or indicator is not new. For

example, as vehicle drivers would recognize, direction signs are frequently designed

in this shape. Id . Indeed, the Vienna Convention on Road Signs and Signals

officially adopted the irregular pentagon shape in 1968 as the sign for “showing the

direction of a place.” Ex. 1015 at 52, 102. Irregular pentagons are also used as

“signs to indicate the direction and distance of the nearest emergency exits.” Id. at

54, 105. The irregular pentagon is also familiar as the shape of the commonly used

“SCHOOL AHEAD” road sign. See Ex. 1018, ¶¶ 19-20. In fact, since at least 1971,

the Federal Highway Administration has adopted this sign as the official “School

Advance” sign. See Manual of Traffic Signals, 1971 edition, Part 7 – Schools, 7B-9

(“The School Advance sign is intended for use in advance of locations where school

buildings or grounds are adjacent to the highway.” (emphasis added)) (Ex. 1016).

The pentagonal arrow claimed in the ’951 Patent is shaped like a “traditional

house” with a pointed roof. See Ex. 1018, ¶ 20. As Prof. Visser explains,

Monopoly®, the classic board-game, features “houses” and “hotels” of similar

pentagonal shape. Id . The indicator in the ’951 Patent as well as several common


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articles featuring the irregular pentagon (house) shape are pictured below.

Ex. 1001, FIG. 8 Ex. 1015 at 102 Ex. 1015 at 105

Ex. 1018, ¶ 20 Ex. 1016 at 327 Ex. 1018, ¶ 20

Given that use of the irregular pentagon as an arrow is commonplace, see Ex.

1018, ¶ 19, and that most arrows can be used as indicators on gaming devices, it is

not surprising that many gaming devices feature indicators shaped as an irregular

pentagon. See Ex. 1018, ¶ 19. Below are a few examples:

Ex. 1004 at 222 Ex. 1006, FIG. 1 Ex. 1009, FIG. 4


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V.

SUMMARY OF THE ’951 PATENT

A.

Overview of the ’951 Patent

The ’951 Patent (Ex. 1001) is entitled “Gaming Device Having a Display with

Multiple Indicators.” The patent issued on April 12, 2005, from U.S. Patent

Application No. 29/187,659 (“the ’659 Application”), filed August 5, 2003. Thus,

publications made before August 5, 2002, are prior art under pre-AIA 35 U.S.C.

§102(b) with respect to the ’951 Patent. Further, U.S. patents that issued from

applications made in the United States before August 5, 2003, are prior art under pre-

AIA 35 U.S.C. §102(e) with respect to the ’951 Patent.

The Claim of the ’951 Patent recites, “The ornamental design for a gaming

device having a display with multiple indicators, as shown and described herein.”

See Ex. 1001, Claim. The drawing figures and description of the ’951 Patent make

clear that no part of the “gaming device,” including the display toward which the

indicators point, is actually claimed. Rather, only the ornamental design of the

indicators is claimed. See Ex. 1001, Figs. 1 – 19; see also Ex. 1001 description for

FIG. 3 (“[T]hat fragmentary portion of the gaming device shown in phantom is not

part of the design sought to be patented and is provided for environmental purposes

only.”).

The patent contains nineteen drawing figures disclosing sixteen embodiments

of the claimed design. Embodiment 1 is disclosed in four figures (FIGS. 1 – 4),


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while embodiments 2 – 16 are represented in their entirety by one figure each (FIGS.

5 – 19). None of the disclosed embodiments borrows or relies upon design elements

from another embodiment.2

The ’659 Application was originally filed with 26 embodiments disclosed in

29 drawing figures. See ’659 Application (Ex. 1002 at 62-66). In setting forth a

Restriction Requirement, the Examiner categorized the embodiments into three

groups, stating that “embodiments disclosed within each group have overall

appearances that are basically the same”; and that “the differences between them are

considered minor and patentably indistinct, or are shown to be obvious in view [of]

analogous prior cited art” and “are considered by the examiner to be obvious

variations of one another with the group.” See ’659 Application File History, Office

Action mailed on September 10, 2004 (Ex. 1002 at 22-24). Further, the Examiner

deemed that embodiments within one group differed from embodiments in other

2 This is evident from Patent Owner’s omission of a statement to that effect.

See U.S. Patent & Trademark Office, Manual of Patent Examining Procedure

§1504.05 (9th ed. rev. Nov. 2015) (“M.P.E.P.”) (“in the absence of such a statement

in the specification of an application as filed, the disclosure of one embodiment will

normally not be permitted to provide antecedent basis for any written or visual

amendment to the disclosure of other embodiments.”).


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groups such that “overall appearances [] are not basically the same, or if they are

basically the same, the differences are not minor and patentably indistinct or are not

shown to be obvious in view of analogous prior art.” Id. The Examiner directed the

Applicant to elect from among the three groups, and also offered an opportunity to

traverse the restriction requirement and present evidence showing the three groups

“to be obvious variations of one another.” Id.

In response, Applicant elected Group 1, embodiments 1 – 16, without traverse.

See ’659 Application File History, Response to Restriction Requirement dated

September 28, 2004 (Ex. 1002 at 17-19). The Examiner then cancelled embodiments

17 – 26 (FIGS. 20 – 29) and allowed the application, resulting in the grant of the ’951

Patent with only the first 16 of the originally filed embodiments.

B.

Person of Ordinary Skill in the Art

A person of ordinary skill in the art of the ’951 Patent at the time of the alleged

invention (“POSA”) would have had at least a degree in industrial design or

mechanical engineering, or related field, with one to two years of experience as a

designer of devices that include displays and indicators. Alternatively, the POSA

would have had five to ten years of experience in designing the ornamental

appearance of devices that include displays and indicators. Ex. 1018, ¶ 36.

C.

Claim Construction (37 C.F.R. §42.104(b)(3))

1.

Legal standard for claim construction of a design patent

A claim subject to IPR is given its “broadest reasonable construction in light of


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the specification of the patent in which it appears” (“BRC”). 37 C.F.R. §42.100(b).

For design patents, it is settled that a design is represented better by an illustration

than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.

Cir. 2008) (en banc). The scope of a design patent is defined by the solid lines (as

opposed to broken lines) depicted in the figures, in conjunction with their

descriptions. Id. at 680. Although a design patent claim is not construed by

providing a detailed verbal description, it may be “helpful to point out… various

features of the claimed design as they relate to the… prior art.” Id. at 679–80; cf.

High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1314–15 (Fed. Cir.

2013) (remanding to district court, in part, for a “verbal description of the claimed

design to evoke a visual image consonant with that design.”).

While a design patent may contain multiple embodiments, all embodiments

must involve the same invention, and may differ only in ways that do not make them

patentably distinct. See M.P.E.P. §1504.05 (“Embodiments that are patentably

distinct over one another do not constitute a single inventive concept and thus may

not be included in the same design application.”) (citations omitted). Each

embodiment must be fully disclosed using figures, and if “the disclosure of any

embodiment relies on the disclosure of another embodiment for completeness…, the

differences between the embodiments must be identified either in the figure

descriptions or by way of a special description in the specification of the application


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as filed.” Id. The specification should state that an embodiment “incorporate[s] the

disclosure of [another] embodiment, […and] in the absence of such a statement in the

specification of an application as filed, the disclosure of one embodiment will

normally not be permitted to provide antecedent basis for any written or visual

amendment to the disclosure of other embodiments.” Id.

Applying the above principles, Petitioner sets forth below a discussion of the

elements of the Claim of the ’951 Patent, followed by the broadest reasonable

construction of the Claim.3

2.

Design elements

a)

Multiple “house” shaped indicators

The ’951 Patent claims “[t]he ornamental design for a gaming device having a

display with multiple indicators, as shown and described herein.” See Ex. 1001,

Claim. The patent affirmatively disclaims “the gaming device shown in phantom.”

Id. at Description for FIGS. 1-19. It is apparent in the drawing figures of the ’951

Patent that nothing but indicators is shown in solid lines. See Ex. 1018, ¶¶ 21, 40.

Further, the description makes clear that the portion of the figures shown in broken

lines “is not part of the design sought to be patented and is provided for

3 Because claim terms may be construed differently according to different

standards in litigation and in IPR proceedings, Petitioner reserves its right to present

different constructions depending on the applicable standard and proceeding.


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environmental purposes only.” Ex. 1001 at Description for FIGS. 1-19.

As Prof. Visser explains, the indicators appear to have a consistent “house”

shape in all of the embodiments of the patent. Ex. 1018, ¶ 41. The general

proportions of the façade of the indicator are those of a square, but the height of the

“walls” is approximately half the width of the “foundation.” See id., ¶ 25. The walls

and foundation appear perpendicular to each other, and the “foundation” appears

faintly arced. Id. Finally, the pitch of the “roof” is approximately 40° off of

horizontal. Id. The use of straight line shading as opposed to oblique line shading

means that the indicators of the ’951 Patent are opaque and that the claimed design

does not include any “highly polished or reflective surfaces, such as a mirror.” Id., ¶

35; see also M.P.E.P. §1503.02 (II).

Ex. 1001, FIG. 8

b) Orientation, angles, and number of indicators

The three attributes of orientation, angle, and number of indicators differ in the

various embodiments. The ’951 Patent claims a number of orientations from

pointing downward, to pointing upward, and several angles in between. See Ex.

1018, ¶ 34. The angles of the indicators are rotated in 12 different configurations. Id,


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¶ 24. While some embodiments in the ’951 Patent have two indicators, others have

three. Id, ¶ 29.

Ex. 1001, FIG. 13 Ex. 1001, FIG. 3 Ex. 1001, FIG. 10

Because all of the embodiments of the ’951 Patent must involve the same

claimed invention, the differences in orientation, angle, and number of indicators are

either not part of the claimed design or they are insignificant such that the

embodiments are obvious variations of one another. M.P.E.P. §1504.05. It therefore

follows that the BRC of the Claim does not require any specific angle, orientation, or

number of indicators.

c) Spacing and angular relationship between the

indicators

In the ’951 Patent, the spacing and angular relationships between indicators

also vary in the embodiments. As to spacing between indicators: some embodiments

have arrows closer together while others have them farther apart. See Ex. 1018, ¶ 31;

compare, e.g., Ex. 1001, FIG. 13 with Ex. 1001, FIG. 10. As to angular relationship

between indicators: some embodiments have arrows at an angle of approximately

33° relative to each other, while other embodiments have the arrows at an angle of


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approximately 66° relative to each other. Id, ¶ 33. Because these embodiments are

obvious variants of one another, it follows that the BRC of the Claim does not require

any specific differences in spacing and angular relationship.

Moreover, the spacing and angular relationship of the indicators are functional

elements, and are dictated by what the indicators need to point to, in or on the display

of the gaming device. For example, placing arrows concentrically around a circular

display (as the ’951 Patent does) is an ordinary way to have arrows point at items on

the display, and placing arrows next to each other is an ordinary way to have arrows

point at items on a rectangular display. Even if a curved placement of arrows around

a rectangular screen (such as is illustrated below on the left) were argued to be

motivated in part by aesthetics, placing arrows such that they point directly toward

the screen (such as is illustrated below on the right) is common sense and functional.

See Ex. 1018, ¶¶ 30, 43.

Ex. 1017, FIG. 1 Ex. 1004 at 201


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Ex. 1017, FIG. 1 (enlarged) Ex. 1004 at 201 (enlarged

and rotated)

The common-sense way to place arrows that point toward a circular screen

would be to place them concentrically around the circle and pointing toward the

center, the way the ’951 Patent discloses or, for instance, Pickardt (Ex. 1010)

discloses. Failure of the arrows to point toward the center would prevent them from

lining up properly with the items they need to point to (i.e., in the case of Pickardt,

they would fail to point to “just one slice of the pie”). See Ex. 1018, ¶ 43.

Ex. 1010, FIG. 1 Enlarged

In view of the foregoing, the spacing and angular relationship between the

arrows of the ’951 Patent are functional, and cannot be claimed design elements. See


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35 U.S.C. §171 (granting protection for “any new, original, and ornamental design

for an article of manufacture” (emphasis added)); Lee v. Dayton-Hudson Corp., 838

F.2d 1186, 1188 (Fed. Cir. 1988) (“Design patents do not and cannot include claims

to the structural or functional aspects of the article.”); M.P.E.P. §1504.03.

d)

Specific thickness or depth of the indicators

The ’951 Patent also cannot be construed under the BRC as requiring a

specific thickness or depth to the indicators. Although some embodiments disclose

noticeable depth, others show only a very slight three-dimensionality, if any. See Ex.

1018, ¶¶ 26-28, 44-45. Embodiment 3 disclosed in FIG. 6 is an example of the

former; and FIG. 19, which provides the only view of embodiment 16, is an example

of the latter. Both are pictured below. It is impermissible to extrapolate that the

indicators have a certain depth but that such depth is hidden from view, given the

perspective. See M.P.E.P. §1503.02 (“As the drawing or photograph constitutes the

entire visual disclosure of the claim, it is of utmost importance that the drawing or

photograph be clear and complete, and that nothing regarding the design sought to be

patented is left to conjecture.”); see also Philco Corp. v. Admiral Corp., 199 F. Supp.

797, 801 (D. Del. 1961) (“A design patent must disclose… so fully, clearly and with

such certainty as to enable those skilled in the art to make the article without being

forced to resort to conjecture.”).


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Ex. 1001, FIG. 6 Ex. 1001, FIG. 19

Embodiments 3 and 7 are another example. Despite FIG. 6 and FIG. 10 being

front perspective views, the indicators therein differ significantly in thickness:

Ex. 1001, FIG. 6

Ex. 1001, FIG. 10


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As Prof. Visser explains, the horizon line appears to be near the center of the circular

display with a vanishing point on the near right side. Ex. 1018, ¶ 27. Therefore, if

the two embodiments had similar depth, the drawings would have been mirror

images of each other. Id. Yet, indicator thickness in embodiment 3 in FIG. 6 is

almost double the indicator thickness in embodiment 7 in FIG. 10.

If the claimed design for indicators in the ’951 Patent required a specific depth,

the patent should have clearly taught the degree of depth. Philco Corp., 199 F. Supp.

at 801. The ’951 Patent fails to present any side views of the indicators, and also

fails to disclose “a sufficient number of views to constitute a complete disclosure of

the appearance of the design” of embodiments 2 through 16 (FIGS. 5 – 19).

M.P.E.P. §1503.02. Each of these fifteen embodiments is disclosed in one figure

each, and embodiments that suggest that the indicators have depth (e.g., embodiment

3 disclosed in FIG. 6) are not “permitted to provide antecedent basis for any written

or visual amendment to the disclosure of [] embodiments” that barely show any depth

(e.g., embodiment 16 disclosed in FIG. 19). See M.P.E.P. §1504.05. If a specific

thickness were “an integral part” of the design of the ’951 Patent, failure to portray

such thickness would be “fatal to the patent, regardless of its intended scope.”

Philco Corp., 199 F. Supp. at 802.

Furthermore, the specific thickness of the indicators is hidden from sight. See,

e.g., Ex. 1001, FIG. 2. As a matter of law, features that are hidden should not “be


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given any patentable weight.” Door-Master Corp. v. Yorktowne, Inc., 256 F.3d

1308, 1313 (Fed. Cir. 2001) (“generally concealed features are not proper bases for

design patent protection because their appearance cannot be a ‘matter of concern’”);

see also M.P.E.P. §1504.03.

Ex. 1001, FIG. 2 Enlarged view of wheel

Therefore, a POSA might understand that the indicators in the ’951 Patent

have some three-dimensionality and dip down (i.e., increase in thickness) at the

“roof” as compared with the base ( see Ex. 1018, ¶ 44), but, as Prof. Visser points out,

under the BRC standard, a POSA would not understand the claimed design as

requiring a specific depth or thickness because the patent fails to teach a specific


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depth or thickness. See Ex. 1018, ¶¶ 44-45 .

3.

BRC of the design claimed in the ’951 Patent

In view of the foregoing, the ’951 Patent should be construed for purposes of

this IPR proceeding as claiming at least two opaque house-shaped arrows, as

depicted in FIGS. 1–19, that are three-dimensional and spaced concentrically around

a circle. The patent does not claim any specific orientation, angle, or number of

arrows, or any specific spacing or angular relationship between arrows. Finally,

although the arrows dip down, i.e., increase in thickness toward the “roof” of the

“house,” no specific depth or thickness to the arrows is claimed.

VI.

THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER

WILL PREVAIL WITH RESPECT TO THE CLAIM OF THE ‘951

PATENT

The subject matter of the Claim of the ’951 Patent is disclosed and taught in

the prior art as explained below. As set forth in §VI.C, the references and

combinations relied on in Grounds I-III anticipate or render obvious the Claim under

pre-AIA 35 U.S.C. §§102-103 and provide a reasonable likelihood that the Petitioner

will prevail on at least one claim. 35 U.S.C. §314(a).

A.

Legal Standards

1.

Anticipation

“A patent is invalid for anticipation if a single prior art reference discloses

each and every limitation of the claimed invention.” Schering Corp. v. Geneva

Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Prior art under §102(b)


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includes subject matter that was “patented or described in a printed publication in this

or a foreign country… more than one year prior to the date of the application for

patent in the United States.” 35 U.S.C. §102(b). For anticipation, it is “immaterial”

whether the prior art references belong to an analogous field. H. K. Porter Co. v.

Black & Decker Mfg. Co., No. 71 C 2859, 1974 WL 20209, at *20 (N.D. Ill. July 17,

1974), aff'd , 518 F.2d 1177 (7th Cir. 1975) (prior art that taught the design for a

kitchen appliance anticipated the design for a lawn tool); see also Application of

Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956) (“so far as anticipation by a single prior

art disclosure is concerned, there can be no question as to nonanalogous art in design

cases.”).

The test for determining invalidity of a design patent under 35 U.S.C. §102 is

the “ordinary observer test.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589

F.3d 1233, 1240 (Fed. Cir. 2009). This test “does not require that the claimed design

and the prior art be from analogous arts when evaluating novelty.” M.P.E.P.

§1504.02. In an invalidity analysis, the designs to be compared are the design as

claimed and the prior art reference. Id. (citing Egyptian Goddess, 543 F.3d at 676).

Applying the “ordinary observer test,” a court must find a design patent invalid if, “in

the eye of an ordinary observer, giving such attention as a purchaser usually gives,

two designs are substantially the same, if the resemblance is such as to deceive such

an observer, inducing him to purchase one supposing it to be the other.” Gorham


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Mfg. Co. v. White, 81 U.S. 511, 528 (1871); Door-Master Corp. v. Yorktowne, 256

F.3d 1308, 1313 (Fed. Cir. 2001). This comparison takes into account only

significant differences between two designs, and “minor differences cannot prevent a

finding of anticipation.” Int’l Seaway, 589 F.3d at 1243; Door-Master , 256 F.3d at

1312-13. It is the “overall visual effect” of the designs in question that is used to

determine whether the claimed design and prior art are substantially the same to an

ordinary observer. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed.

Cir. 2010).

2.

Obviousness

A patent is invalid as obvious if “the differences between the subject matter

sought to be patented and the prior art are such that the subject matter as a whole

would have been obvious at the time the invention was made to a person having

ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. §103(a).

“Section 103 applies to design patents in much the same manner as it applies to

utility patents.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re Borden,

90 F.3d 1570, 1574 (Fed. Cir. 1996) (“Design patents are subject to the same

conditions on patentability as utility patents, including the nonobviousness

requirement of 35 U.S.C. §103.”).

The obviousness inquiry for a design patent involves three steps. First, a

“primary reference” is to be identified. Durling v. Spectrum Furniture Co., 101 F.3d


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100, 103 (Fed. Cir. 1996). To do this, the PTAB must “(1) discern the correct visual

impression created by the patented design as a whole; and (2) determine whether

there is a single reference that creates ‘basically the same’ visual impression.” Id.

The primary reference is, therefore, “a something in existence, the design

characteristics of which are basically the same as the claimed design.” In re Rosen,

673 F.2d 388, 391 (C.C.P.A. 1982).

Second, once the primary reference (or the Rosen reference) is found, “other

references may be used to modify it to create a design that has the same overall visual

appearance as the claimed design.” See In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir.

1993). “In order for secondary references to be considered, there must be some

suggestion in the prior art to modify the basic design with features from the

secondary references.” M.P.E.P. §1504.03 (citing In re Borden, 90 F.3d 1570, 1572

(Fed. Cir. 1996)). It is appropriate to use a secondary reference to modify the

primary reference if they are “so related that the appearance of certain ornamental

features in one would suggest the application of those features to the other.” MRC

Innovations, Inc. v. Hunter Mfg., 747 F.3d 1326, 1334 (Fed. Cir. 2014) (finding that

similarity in appearance is sufficient to suggest that one should apply certain features

to the other design). The features of the secondary reference are thus combined with

the Rosen reference to create a “hypothetical” third reference. Id. at 1334–35.

In the third and final step, the hypothetical reference is compared with the


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claimed design to determine whether the design is obvious. MRC Innovations, 747

F.3d at 1331 (affirming the lower court’s finding of a design patent to be invalid as

obvious in light of the prior art). The hypothetical reference may also be arrived at

by “modify[ing] a single prior art reference” rather than combining primary and

secondary references. Int’l Seaway, 589 F.3d at 1240. A patented design is obvious

(i) if the claimed design as a whole is substantially the same, or has the same overall

visual appearance, as the hypothetical reference to an ordinary observer, id., or (ii) if

“a designer of ordinary skill who designs articles of the type involved” would find

the claimed design obvious over the hypothetical reference. Apple, Inc. v. Samsung

Elecs. Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012). The hypothetical reference

need not be “identical to [the] patented design since there may be no motivation to

change the prior art to achieve such identity.” Int’l Seaway, 589 F.3d at 1240.

Instead, it is similarity of the “overall design” that matters; de minimis differences are

inconsequential. See MRC Innovations, 747 F.3d at 1335.

B.

Overview of the Prior Art

1.

U.S. Patent No. 3,203,391 (“Corwin”) (Ex. 1003)

Corwin, a United States Patent titled “Air Navigation Instrument,” was

issued on August 31, 1965. It therefore qualifies as prior art under pre-AIA 35

U.S.C. §102(b) with respect to the ’951 Patent. Corwin discloses an aviation

instrument that, among other things, measures time. The instrument illustrated in


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FIG. 1 of Corwin contains a clock centerpiece (with other measurements around it)

and two house-shaped indicators spaced concentrically on the outer rim of the

instrument on the left side.

Ex. 1003, FIG. 1 Indicators depicted (Enlarged)

Corwin was not considered by the USPTO during prosecution of the ’659

Application.

2. Fey, Marshall, Slot Machines—A Pictorial History of The

First 100 Years, 1989, Liberty Belle Books, 2nd Ed. (“Fey”)

(Ex. 1004).

Fey is a publication from 1989, and is therefore prior art under pre-AIA 35

U.S.C. §102(b) with respect to the ’951 Patent. Fey traces the evolution of slot

machines since they were invented in the 1890s. It discloses a slot machine called

“Double Bonus” by Takasago Distribution Co. that contains two upward-pointing


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house-shaped indicators spaced at a distance.

Ex. 1004 at 222 Indicators depicted (Enlarged)

While a single page (page 13) of a later edition of this book was presented to

the USPTO, the sections of the book Petitioner is relying upon here were not

considered by the Examiner during prosecution of the ’659 Application. In

particular, the USPTO did not consider the disclosure regarding “Double Bonus”

during prosecution.

3. Pollan, Michael, “Jackpot!”, Channels of Communications,

Vol. 6, No. 3 (June 1986) (“Pollan”) (Ex. 1005)

Pollan is an article in Channels Magazine published in June 1986. It therefore

qualifies as prior art under pre-AIA 35 U.S.C. §102(b) with respect to the ’951 Patent.


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Pollan describes the popular game show on television, “Wheel of Fortune,” and

includes photographs of the gaming device used on the show. One photograph

depicts three players standing by the device with three large indicators in red, yellow,

and blue.

Ex. 1005

Pollan was not considered by the USPTO during prosecution of the ’659

Application.

4.

U.S. Patent No. 4,674,748 (“Wismer”) (Ex. 1006)

Wismer, a United States patent titled “Method and Means for Randomly

Selecting a Plurality of Groups of Numbers,” was issued on June 23, 1987. It

therefore qualifies as prior art under pre-AIA 35 U.S.C. §102(b) with respect to


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the ’951 Patent. Wismer discloses a gaming device, useful for selecting numbers

in Lotto games, with three house-shaped “indicator marks.” Wismer does not teach

use of all three marks together; rather, it teaches using either the “indicator mark” or

the “alternative indicator marks.” Ex. 1006 at 4:60. Wismer teaches that the “base

disc” that bears the indicator marks—including the two alternative indicator marks—

rotates. Id. at 4:45.

Ex. 1006, FIG. 1


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Indicators depicted (Enlarged, callout lines & numbers hidden)

Wismer was not considered by the USPTO during prosecution of the ’659

Application.

C. Detailed Explanation of the Grounds for Unpatentability

The ’951 Patent is anticipated under pre-AIA 35 U.S.C. §102 and obvious

under pre-AIA 35 U.S.C. §103. The references and grounds cited are not cumulative

to or redundant over one another: Ground I advances an invalidity argument based on

anticipation under 35 U.S.C. §102(b). Ground II advances an invalidity argument

based on obviousness under 35 U.S.C. §103, relying on prior art different from that

in Ground I and on Petitioner’s claim construction position that the BRC of the ’951

Patent claim does not require a specific spacing and angular relationship between

the indicators, or a specific thickness or depth to the indicators. Ground III

advances an obviousness argument based on prior art different from that in the two

preceding grounds and that discloses any specific spacing, angular relationship, or

thickness that the BRC of the Claim may require. This petition demonstrates a


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reasonable likelihood that Petitioner will prevail on all grounds, separately.

Petitioner has focused the discussion herein on certain embodiments of the

’951 Patent claim (specifically, embodiment 14 in Ground I, embodiment 8 in

Ground II and embodiment 1 in Ground III), with the understanding, consistent with

the law, that a determination that one embodiment of the ’951 Patent claim is

unpatentable would render the entire ’951 Patent claim unpatentable. See, e.g., In re

Klein by Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993) (“[t]he board correctly stated

that the single claim covers plural alternative embodiments and that the §103

rejection is proper if the prior art demonstrates the obviousness of any one of them”).

Petitioner’s arguments below are supported by the analysis presented in the

accompanying Declaration of Prof. Steven Visser, who has taught and worked in the

field of industrial design for nearly 30 years.

1.

Ground I: The Claim Is Invalid Under 35 U.S.C. §102(b) As

Anticipated by Corwin

Corwin was issued in 1965, and is therefore prior art under pre-AIA 35 U.S.C.

§102(b) with respect to the ’951 Patent. As discussed above, Corwin was not

considered by the USPTO during prosecution of the ’659 Application. Corwin

discloses an instrument with multiple indicators having an “overall visual

appearance” that is substantially the same as embodiment 14 depicted in FIG. 17 of

the ’951 Patent. Therefore, Corwin anticipates the claim of the ’951 Patent. See

Crocs, Inc., 598 F.3d at 1303.


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As Prof. Visser explains, FIG. 1 in Corwin discloses an instrument consisting

of a clock at the center (and other measurements around it) with a pair of rotatable

pentagonal indicators on the left. See Ex. 1018, ¶ 51; see also Ex. 1003 at 2:30

(“Each indicating means includes a pointer support 58 which rides on the rim.”).

The indicators are also shown in dashed lines, rotated to the opposite side of the

display. See Ex. 1018, ¶ 51; Ex. 1003 at FIG. 1.

Indicators depicted (enlarged) Ex.

1003, FIG. 1

Hypothetical position of

indicators (depicted in dashed

lines) (enlarged) Ex. 1003, FIG. 1

Thus, like embodiments 10 and 14 of the ’951 Patent (FIGS. 13 and 17,

respectively), Corwin shows two indicators concentrically located around a circular


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display that has a raised rim around the outer portion of the display. See Ex. 1018,

¶ 53. FIGS. 13 and 17 of the ’951 Patent are shown below.

Ex. 1001, FIG. 13 Ex. 1001, FIG. 17

Prof. Visser compares Corwin with embodiment 14 (FIG. 17) of the ’951

Patent. Ex. 1018, ¶ 53. As he explains, though FIG. 1 of Corwin is a true front view

and FIG. 17 of the ’951 Patent is a front perspective view (Ex. 1018, ¶ 56), a person

of ordinary skill would understand that there is no meaningful distortion due to

perspective foreshortening to the shape of the indicators in FIG. 17 of the ’951

Patent, and that FIG. 17 may be accurately compared with FIG. 1 of Corwin. In the

illustration by Prof. Visser reproduced below, the front surface of the circular display

in FIG. 17 of the ’951 Patent follows a perfect circle as shown in green, and the two

claimed indicators are shown in blue.


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Ex. 1018, ¶ 56

Upon scaling the indicators in FIG. 1 of Corwin to match the same overall size

as the ’951 Patent, and leaving the relative proportions, angles and spacing

unchanged, it is possible to place the Corwin indicators on the unclaimed display

portion in the ’951 Patent. See Ex. 1018, ¶¶ 54-55. Doing so assists in comparing

the indicators disclosed in Corwin, the prior art, with the indicators claimed in the

’951 Patent.


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Ex. 1018, ¶ 54

It is apparent from the image above, showing indicators disclosed in the prior

art (Corwin, on the left) and indicators in the ’951 Patent (on the right), that the prior

art design and the claimed design share numerous common visual elements. For

example:

• Both have two indicators;

• Both have indicators spaced apart from each other;


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• Both have irregular pentagon (“house”) shaped indicators;

• Both have indicators around a circular display;

•

Both have indicators that are concentric with the display;

• The length of the indicator “foundation” relative to the indicator height

is similar in both;

• The height of the indicator “walls” is similar in both (namely, the height

is nearly half the width of the “foundation”);

•

Both have indicators with parallel “walls,” perpendicular to the

“foundation”;

• Both have three-dimensional indicators;

• Both have indicators that are opaque;

• Both have indicators with angular change of arrow direction; and

• Both have indicators that dip down at the roof.

Ex. 1018, ¶ 57. As Prof. Visser points out, a close scrutiny reveals certain

differences between the claimed design and the design of Corwin. Corwin’s

indicators dip down at the “roof” by bending toward the screen, rather than becoming

thicker as in the ’951 Patent. See id., ¶ 58. Also, Corwin’s indicators have a flat base

while the base of the indicators in the ’951 Patent appears to be faintly arced. Id .

Finally, Corwin’s indicators are slightly smaller relative to the spacing, as compared

with the claimed design. Id .


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Under the BRC of the claim, these differences are too “minor [to] prevent a

finding of anticipation.” Int’l Seaway, 589 F.3d at 1243. As Prof. Visser explains, a

side-by-side comparison reveals that the shape and proportions of Corwin’s

indicators are practically identical to the claimed design. The Corwin indicator is

shown below on the left, the indicator in the ’951 Patent is shown on the right, and

the two are overlaid on each other in the middle:

Ex. 1018, ¶ 59

Given the identity of shape and of proportions, an ordinary observer wishing

to purchase a gaming device, giving “such attention as a purchaser usually gives,”

would likely not notice these differences—and would find that the design disclosed

in Corwin and the claimed design are “substantially the same.” Gorham Mfg. Co. v.

White, 81 U.S. 511, 528 (1871); Door-Master Corp. v. Yorktowne, 256 F.3d 1308,

1313 (Fed. Cir. 2001); see also Ex. 1018, ¶ 59. As Prof. Visser explains, the

resemblance is sufficient to deceive the ordinary observer, “inducing him to

purchase” a gaming device with indicators from the prior art “supposing it to be” a

gaming device with indicators claimed in the ’951 Patent. Gorham Mfg. Co., 81 U.S.


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at 528; Door-Master Corp., 256 F.3d at 1313; see also Ex. 1018, ¶ 59. Further, the

ordinary observer would find that the “overall visual effect” of the designs is

“substantially the same.” Ex. 1018, ¶ 59; see also Crocs, Inc., 598 at 1303.

Petitioner notes that Corwin discloses an aviation instrument that includes a

clock. But, as Prof. Visser explains, designers have historically looked at objects

such as clocks and radios to design gaming devices. Ex. 1018, ¶ 16. In any event,

however, even if Corwin is considered not to be in the same field as the ’951 Patent,

“[a]nticipation does not require that the claimed design and the prior art be from

analogous arts.” M.P.E.P. §1504.02; see also Neo-Art Inc. v. Hawkeye Distilled

Prods. Co., 654 F. Supp. 90, 94 (C.D. Cal. 1987) (“The Court is aware of no

case…in which a court has held that simply designing one product to look like

another, the design of which has long been in the public domain, entitles the designer

to patent protection.”).

In view of the foregoing, the Claim of the ’951 Patent is anticipated by Corwin

under 35 U.S.C. §102(b). Petitioner has established a reasonable likelihood that it

will prevail on this ground.

2.

Ground II: The Claim Is Invalid Under 35 U.S.C. §103 As

Obvious Over Fey

Fey is a publication from 1989, and is therefore prior art under pre-AIA 35

U.S.C. §102(b) with respect to the ’951 Patent. As discussed above, the portion of

Fey relied on for this ground was not considered by the USPTO during prosecution


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of the ’659 Application. Fey discloses a gaming device called “Double Bonus”

featuring a display with multiple indicators. As Prof. Visser explains, “Double

Bonus” is “a reel style slot machine with a pair of indicators spaced apart on the

upper display area.” Ex. 1018, ¶ 60. The two indicators point upward toward a

rectangular display area. Id. The shape of the indicators is “strikingly similar” to

that shown in the ’951 Patent, and the indicators also have an illusion of shallow

thickness. Id. As discussed below, the overall design of Fey’s indicators is such that

embodiment 8 of the ’951 Patent would have been obvious to a designer of ordinary

skill who designs devices with displays and indicators.

Images of “Double Bonus” and its pair of house-shaped indicators are

reproduced above, see supra § VI.B.2, and below is a side-by-side comparison of the

indicators in embodiment 8 of the ’951 Patent (with disclaimed environment

removed, and rotated clockwise about 15°) and Fey’s indicators featured on the

Double Bonus game (enlarged):

Ex. 1018, ¶ 62 Ex. 1004 at 222

Prof. Visser compares the design in Fey with embodiments 4 and 8 of the ’951

Patent (FIGS. 7 and 11). Ex. 1018, ¶ 61. To facilitate this comparison, Prof. Visser

has combined the Fey design and drawings from the ’951 Patent into single


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combined images, arranging the gaming devices in both to be of similar size. The

combined images are reproduced below.

Ex. 1018, ¶ 61 Ex. 1018, ¶ 61

Below is side-by-side comparison of Fey’s indicators (on the left) and those in

the ’951 Patent (on the right). The two are overlaid on each other in the middle:

Ex. 1018, ¶ 63


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It is apparent from the images above that the prior art design and the claimed

design share numerous common visual elements, as follows:

•

Both have two indicators;

• Both have indicators spaced apart from each other;

• Both have irregular pentagon (“house”) shaped indicators;

• Both have indicators about a display;

• The length of the indicator “foundation” relative to the indicator height

is similar in both;

• The height of the indicator “walls” is similar in both (namely, the height

is nearly half the width of the “foundation”);

• Both have indicators with parallel “walls,” perpendicular to the

“foundation”;

• Both have indicators that have some three-dimensionality (Double

Bonus uses drop shadows to indicate visual thickness); and

• Both have indicators that are opaque.

Ex. 1018, ¶ 63. The “visual impression” of Fey’s indicators is “basically the same”

as the claimed design. Durling , 101 F.3d at 103. Fey, therefore, qualifies as a

suitable primary reference for an obviousness analysis. Ex. 1018, ¶ 63.

Prof. Visser notes that under close scrutiny, Fey’s indicators have certain

differences from embodiment 8 of the ’951 Patent. See id., ¶ 64. As explained


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below, however, none of these differences renders the claimed design non-obvious.

a) Spacing and angular relationship between indicators

Fey does not disclose indicators concentric with a circular display; instead, the

indicators in Fey are parallel to each other. Id. Fey’s indicators are also spaced more

closely together than are the ’951 Patent’s indicators. Id . But, these differences in

the spacing and angular relationship between the indicators do not make the claimed

design non-obvious. First, as discussed above in the context of claim construction,

the spacing and angular relationship between the indicators in the ’951 Patent vary

between the various embodiments. See supra V.C.2(c). Necessarily, therefore,

variations in spacing and angular relationship are obvious. See M.P.E.P. §1504.05

(“The obviousness standard under 35 U.S.C. 103 must be applied in determining

whether multiple embodiments may be retained in a single application”).

Second, as also discussed above, the positioning of the indicators in the ’951

Patent is attributable to the indicators pointing to a circular display—rather than to a

rectangular display (as in Fey). See Ex. 1018, ¶ 64. The spacing and angular

relationship between the indicators in the ’951 Patent are therefore functional features

that “cannot be relied upon to support [the ’951 Patent’s] patentability.” M.P.E.P.

§1504.03. The display itself is not claimed in the ’951 Patent, and an “element” that

is no more than a functional by-product of the disclaimed display does not justify

patentability over the prior art. See Payne Metal Enters., Ltd. v. McPhee, 382 F.2d


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541, 546 (9th Cir. 1967) (a feature that was “dictated primarily by the functional

requirements” could not prevent a finding of invalidity where the resulting visual

effect “was only an inadvertent byproduct and any pleasing aesthetic effect [] a minor

windfall”).

Third, even assuming the positioning of the indicators is ornamental and not

functional, it would be obvious to use Fey’s indicators around a circular rather than a

rectangular display. As discussed above, both circular and rectangular displays are

commonly used in gaming devices, and an indicator would be used in both types of

displays to indicate the results of a spin of a reel or wheel or other rotating structure.

See supra § IV.A; Ex. 1018, ¶ 64. In using Fey’s indicators around a wheel, it would

be obvious to place the indicators concentrically (rather than parallel to each other) so

as to ensure that each indicator points only to one segment on the wheel. Ex. 1018,

¶¶ 43, 64; see also, e.g., Ex. 1005 (showing multiple concentric indicators around a

wheel); Ex. 1006, Fig. 1 (same); Ex. 1010, Fig. 1 (same). Using Fey’s indicators

concentrically around a wheel is therefore a combination of two known elements

with predictable results.

b) Thickness or depth of arrows

As discussed above, under the BRC, the ’951 Patent does not require any

specific depth or thickness to the indicators. See supra V.C.2(d). Fey uses “drop

shadows” to indicate visual thickness, which would suggest any thickness that may


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be required by the ’951 Patent claim. See Ex. 1018, ¶ 65.

In any event, as Prof. Visser points out, it would have been obvious to a

designer of skill in the art to apply the design of Fey’s indicators to a three-

dimensional display, which would lead to indicators with three-dimensionality. A

designer of ordinary skill would be familiar with three-dimensional displays with

three-dimensional indicators, because such displays and indicators were prevalent in

the prior art. Id.; see also, e.g., Ex. 1005; Ex. 1007, Fig. 1; Ex. 1009, Fig. 1; Ex.

1012, Fig. 7; Ex. 1013, Figs. 1 and 3; Ex. 1014, Fig. 11. Therefore, such a design

would be a combination of well-known elements in a common-sense and predictable

manner.

c) Increased thickness at “roof”

As discussed above, the claimed indicators in the ’951 Patent typically dip

down (increase their thickness) in the roof portion of the arrow. See Ex. 1018, ¶ 66;

supra § V.C.2(d). Fey’s indicators do not have a similar dip. However, in a three-

dimensional implementation of Fey’s design, it would be obvious to include a dip at

the roof of the indicators, such that the roof is thicker than the base. Ex. 1018, ¶ 66.

This well-known technique is used where a display has a border or frame that sits

above the display (i.e., the border is closer to the observer) and the base of the

indicator sits on top of the border or frame. Id.; see also, e.g., Ex. 1003, Fig. 1. As

Professor Visser explains, a designer of ordinary skill would appreciate that adding a


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dip to the indicators reduces the space between each indicator and the display, which

thereby reduces parallax. Ex. 1018, ¶ 66. Indeed, this is one of two design choices

available to a designer—the other being to not dip or bend the indicator (i.e., ignore

the parallax). Id . Given these alternative design choices, which would be familiar to

a designer of ordinary skill, it would be obvious to incorporate any “dip” that the

BRC of the Claim may require.

Accordingly, the ’951 Patent is obvious over Fey. As discussed above, Fey’s

indicators are nearly identical in shape and proportion to the indicators in the ’951

Patent, as shown in Prof. Visser’s side-by-side comparison (Ex. 1018 ¶ 63). Further,

Fey readily suggests to a designer of ordinary skill the alterations necessary to

arrive at a hypothetical reference that is substantially the same as the claimed

design. Ex. 1018, ¶ 68. To the extent that the BRC of the Claim requires the

indicators to be positioned in a specific way and/or to have a specific thickness and a

dip-down, a designer of ordinary skill in the art who designs devices with displays

and indicators would need only ordinary skill, knowledge, and common sense to

visualize a hypothetical reference that addresses these differences. Id. In the eye of

an ordinary observer, giving such attention as a purchaser usually gives, the

indicators in such hypothetical reference derived from Fey are substantially the same

as those in the ’951 Patent, and capable of inducing the ordinary observer to purchase

one supposing it to be the other. Ex. 1018, ¶ 67.


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Therefore, embodiment 8 of the ’951 Patent is obvious over Fey, and

Petitioner has established a reasonable likelihood that it will prevail on this ground.

3.

Ground III: The Claim Is Invalid Under 35 U.S.C. §103 As

Obvious Over Pollan in View of Wismer

To the extent that the Board considers the BRC of the ’951 Patent claim as

requiring a specific spacing and angular relationship between the indicators, and/or

a specific thickness or depth to the indicators, and finds that those elements are not

obvious in light of Fey, the Claim is still invalid as obvious over Pollan in view of

Wismer. This ground is not redundant because it relies on different prior art than

in the preceding grounds, and presents arguments not advanced therein.

Pollan was published in 1986, and is therefore prior art under pre-AIA 35

U.S.C. § 102(b) with respect to the ’951 Patent. As noted above, Pollan was not

considered by the USPTO during prosecution of the ’659 Application. Pollan

describes the “Wheel of Fortune” television game show, and discloses a rotating

wheel with three multiple indicators spaced concentrically around the wheel. While

Pollan’s indicators are triangular and not pentagonal, the size, proportions, and

placement of the indicators on the wheel are virtually identical to that in embodiment

1 of the ’951 Patent. Pollan combined with Wismer, which has three pentagonal

shaped indicators on a gaming device, would lead to a hypothetical reference that

would render the ’951 Patent claim obvious to a designer of ordinary skill in the art.

As mentioned above, Pollan discloses an image in which three players stand


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by a wheel with three large indicators in bright colors: red, yellow, and blue. Ex.

1018, ¶ 68. In the image below, Prof. Visser omits the contestants and pedestal,

leaving the wheel and the indicators. Id .

Ex. 1018, ¶ 68

Embodiment 1 of the ’951 Patent as shown in FIG. 3 is reproduced below

(rotated clockwise approximately 15°):


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Ex. 1001, FIG. 3

Pollan is a suitable primary reference for an obviousness analysis.

Pollan, like the ’951 Patent, discloses a gaming device consisting of a wheel with

multiple indicators at the periphery. Pollan’s indicators, unlike those in the ’951

Patent, are triangular. Nevertheless, Pollan and embodiment 1 of the ’951 Patent

have numerous visual similarities. As can be seen from the above images, the first

embodiment of the ’951 patent and Pollan share the following common visual

elements:

Both have three indicators;•

Both have indicators spaced apart from each other;•

Both have indicators around a circular display;•

Both have indicators that are concentric with the display;•


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The length of the indicator “foundation” relative to the indicator height•

is similar in both;

Both have three-dimensional indicators;•

Both have indicators with angular change of arrow direction; and•

Both have indicators that appear opaque.•

Ex. 1018, ¶ 72. The shape of the indicators in Pollan differs from the ’951 Patent, but

changing the shape of Pollan’s indicators would have been obvious. A designer of

ordinary skill who makes devices with displays and indicators would appreciate that

any arrow that can point can be used as an indicator. Id.; see also supra § IV. As

discussed above, use of pentagon (house) shaped arrows was common at the time

the ’659 Application was filed. See supra § IV.B; M.P.E.P. §1504.03 (“case law has

held that a designer skilled in the art is charged with knowledge of the related art;

therefore, the combination of old elements, herein, would have been well within the

level of ordinary skill.”) (citations omitted). Specifically, as explained below, a

POSA would combine Pollan with Wismer to arrive at a hypothetical reference

substantially the same as the ’951 Patent.

Wismer is a United States patent that discloses a gaming device, in Lotto

games, “for randomly selecting a plurality of groups of numbers.” Images of

Wismer’s gaming device are reproduced above, see supra § VI.B.4, and below is an


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image of Wismer’s indicators with the callout lines and numbers removed for clarity.

Ex. 1018, ¶ 73

Wismer and Pollan are “so related that the appearance of certain ornamental

features in one would suggest the application of those features to the other.” MRC

Innovations, 747 F.3d at 1334 (finding that similarity in appearance is sufficient to

suggest that one should apply certain features to the other design). Like Pollan,

Wismer discloses a gaming device for randomly selecting numbers, having a circular

display with multiple indicators placed concentrically at the periphery of the display.

A designer of ordinary skill who designs such devices would find Wismer and Pollan

to be sufficiently similar such that the features of one should be applied to the other.

Ex. 1018, ¶ 74; MRC Innovations, 747 F.3d at 1334.

A hypothetical reference created by combining Pollan and Wismer renders

embodiment 1 of the ’951 Patent claim obvious. A designer of ordinary skill would

visualize a hypothetical reference that contains three indicators arranged in the


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familiar “Wheel of Fortune” manner (as disclosed in Pollan) using the well-known

pentagonal arrow as the shape of the indicators (as disclosed in Wismer). Ex. 1018,

¶ 76. A POSA would be motivated to use the shape of the Wismer indicators on the

Pollan reference to create a hypothetical prior art reference because the POSA would

appreciate that other indicator designs, such as house-shaped arrows, exist in the

prior art that may provide an equally or more pleasing design and may serve a

functional purpose, for example, by making the selection more visible to observers or

game contestants because a house-shaped arrow is more clearly aligned with the

segments relative to a triangle-shaped arrow. Id.

Further, incorporating a dip at the roof of the indicator would be an obvious

design choice for a designer of ordinary skill. As discussed above in § VI.C.2(c),

supra, this would be one of two choices available where the indicators sit above the

display—the other being to not dip or bend the indicator (i.e., ignore the parallax).

See Ex. 1018, ¶ 66; see also, e.g., Ex. 1003, Fig. 1. Given these alternative design

choices, which would be familiar to a designer of ordinary skill, it would be obvious

to incorporate any “dip” that the BRC of the Claim may require.

This combination therefore leads to a hypothetical reference that has three

opaque house-shaped arrows, that are three-dimensional with an increased thickness

at the “roof,” and that are spaced concentrically around a circle. Ex. 1018, ¶ 76. This

hypothetical reference would be substantially the same as the claimed design, and


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Aristocrat v. IGT - Petition for IPR