PTAB

CBM2015-00155

GSN Games v. Bally Gaming Inc

Log In

1. Case Identification

2. Patent Overview

  • Title: Prize Redemption System for a Game Apparatus
  • Brief Description: The ’918 patent discloses methods and systems for a prize redemption system used with a game apparatus. The system allows an operator to manage the awarding of prizes by setting a desired profitability level, which the apparatus then uses to calculate the number of "prize credits" required for a player to redeem specific prizes.

3. Grounds for Unpatentability

Ground 1: Patent-Ineligible Subject Matter - Claims 1, 3, 15-22, 24, 25, 28, 32-34, 39, 73-75, and 77 are unpatentable under 35 U.S.C. §101

  • Prior Art Relied Upon: Petitioner’s argument relied primarily on legal precedent establishing the framework for patent eligibility, including Alice Corp. v. CLS Bank Int’l, Planet Bingo, LLC v. VKGS LLC, and OIP Technologies, Inc. v. Amazon.com, Inc., as well as the patent’s own admissions and an expert declaration (Bertram Decl.).
  • Core Argument for this Ground: Petitioner argued that the challenged claims fail both steps of the test established in Alice.
    • Alice Step One (Abstract Idea): The petition asserted that all challenged claims are directed to the patent-ineligible abstract idea of "profitably awarding prizes to game players." This was framed as a fundamental economic practice and a form of business bookkeeping, analogous to managing a game of bingo or optimizing prices, which courts have previously found to be abstract. The petition contended that the core concept involves receiving money from players, offering a prize list, receiving prize cost information, and determining prize credits to achieve a desired profitability—all longstanding, conventional activities in the gaming industry, as conceded in the ’918 patent’s own "Background of the Invention" section. For example, claim 34 was characterized as merely applying this abstract concept to the well-known variation of a tournament game.
    • Alice Step Two (Inventive Concept): The petition argued that the claims lack any inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recited implementing the abstract idea on a "generic game apparatus" with "generic architecture" and other conventional components like servers and networks. The petition asserted that the ’918 patent itself describes its components as generic and well-known. The individual claim limitations were argued to be nothing more than a collection of purely conventional activities, such as receiving money for a game, displaying prizes, calculating averages, or dispensing redeemable tickets. Petitioner contended that the recitation of a generic computer or game apparatus to perform these well-understood activities does not provide the necessary inventive concept to satisfy §101.

4. Key Claim Construction Positions

  • "game apparatus": Petitioner proposed this term should be construed as "a generic device for playing games." This construction was central to the argument that the claims lack an inventive concept under Alice Step 2, as the mere implementation of an abstract idea on a generic, conventional device is insufficient for patentability. The petition highlighted language in the ’918 patent describing the apparatus as having a "generic architecture" and taking "a variety of forms," including well-known video game consoles and personal computers.
  • "receiving means for receiving monetary input from said player" (Claim 21): Petitioner argued this is a means-plus-function term with the function of "receiving monetary input from a player." The corresponding structure was identified as the "monetary input device 14" disclosed in the specification, which included conventional structures like a coin slot or card reader. This supported the argument that the claim elements are not novel or inventive.
  • "means for providing a prize selection menu on said display device" (Claim 21): Petitioner identified this as a means-plus-function term with the function of "providing a prize selection menu on a display device." The corresponding structures were identified as Figures 6b and 6c of the patent, which depict standard text-based and pictorial menus. This was used to further demonstrate that the claims rely on conventional, rather than inventive, technology.

5. Key Technical Contentions (Beyond Claim Construction)

  • Not a "Technological Invention": A central contention of the petition was that the ’918 patent does not qualify for the "technological invention" exception to Covered Business Method (CBM) review. Petitioner argued the patent fails both prongs of the test for this exception. First, it was argued that the claims do not recite a technological feature that is novel and nonobvious, instead relying on admittedly "generic" and "well-known" game apparatuses, servers, and networks. Second, the petition asserted that the patent does not solve a technical problem but rather a commercial one: the business challenge of managing prize redemptions to maintain profitability. The alleged problem was framed as bookkeeping, which can be performed by a human, not a technical challenge requiring a technical solution.

6. Relief Requested

  • Petitioner requested institution of a Covered Business Method 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.