PTAB

CBM2015-00155

GSN Games Inc v. Bally Gaming Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Prize Redemption System for Game Apparatus
  • Brief Description: The ’918 patent discloses methods and systems for a prize redemption system for a generic game apparatus. The system allows players to pay money to play games, win "prize credits," and redeem those credits for prizes, while enabling an operator to manage the prize system to achieve a desired level of profitability.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. §101 - Claims 1, 3, 15-22, 24, 25, 28, 32-34, 39, 73-75, and 77 are unpatentable as directed to an abstract idea.

  • Prior Art Relied Upon: This ground is based on patent eligibility under 35 U.S.C. §101, not prior art.
  • Core Argument for this Ground: Petitioner argued that the challenged claims were unpatentable under the two-step framework from Alice Corp. v. CLS Bank Int'l. The petition was filed as a Covered Business Method (CBM) Review, which permits challenges under §101.
    • Alice Step One (Abstract Idea): Petitioner contended the claims were directed to the abstract idea of "profitably awarding prizes to game players." This was described as a fundamental economic concept and a long-standing practice in the gaming industry, analogous to other abstract ideas like managing a game of bingo or price optimization. The petition asserted that independent claim 1 merely recited the steps of receiving money from players, offering a prize list, receiving prize cost information, and determining the required prize credits to achieve a desired profitability. Petitioner further argued that the patent itself conceded in its "Background of the Invention" that these concepts were well-known and had long been practiced by arcade operators. The patent allegedly preempts this entire field of human activity, which has existed for decades in arcades and carnivals.
    • Alice Step Two (No Inventive Concept): Petitioner argued that the claims lacked an "inventive concept" sufficient to transform the abstract idea into a patent-eligible application. The claims added nothing beyond the abstract idea itself, as they were implemented using only generic and conventional components. The central piece of hardware, the "game apparatus," was described in the patent's specification as a "generic game apparatus" with a "generic architecture." Petitioner contended that the mere recitation of a generic computer or game machine to perform well-understood, routine activities—such as receiving money, displaying a list, and performing calculations—was insufficient to supply an inventive concept. Dependent claims were argued to add only other abstract or conventional concepts, such as calculating an average, using a generic network and server to download a prize list, displaying advertising, or playing a "game of skill," none of which improved the functioning of the computer itself or provided a technological solution to a technological problem.

4. Key Claim Construction Positions

  • "game apparatus": Petitioner argued for the broadest reasonable construction of this term to mean "a generic device for playing games." This construction was supported by the patent's specification, which repeatedly referred to the apparatus as "generic" and stated it could take a "variety of forms" using "typical" components. This construction was central to the argument that the claims merely applied an abstract idea using conventional, non-inventive hardware.
  • "receiving means for receiving monetary input from said player" (Claim 21): Petitioner construed this means-plus-function term's function as "receiving monetary input from a player." The corresponding structure disclosed in the specification was identified as a generic "monetary input device 14," which could be a coin slot, card reader, or bill acceptor.
  • "means for providing a prize selection menu on said display device" (Claim 21): Petitioner construed this means-plus-function term's function as "providing a prize selection menu on a display device." The corresponding structures were identified as Figures 6b and 6c of the patent, which depicted conventional textual or pictorial prize menus.

5. Key Technical Contentions (Beyond Claim Construction)

  • Claims Do Not Recite a "Technological Invention": A core contention throughout the petition was that the ’918 patent failed to claim a "technological invention," a requirement for a patent to be exempt from CBM review. Petitioner argued the patent did not solve a technical problem but rather a commercial one: how to manage prize redemption profitably. It was argued that the solution did not involve any novel or nonobvious technological features. Instead, it automated a long-standing business practice (bookkeeping for prize redemption) using well-known and generic gaming equipment, computers, and networks, all of which the patent admitted were part of the prior art.

6. Relief Requested

  • Petitioner requested institution of a CBM Review and cancellation of claims 1, 3, 15-22, 24, 25, 28, 32-34, 39, 73-75, and 77 of the ’918 patent as unpatentable under 35 U.S.C. §101.