PTAB

IPR2013-00289

Game Show Network LLC v. Stephenson John

Title: Method of Playing a Game of Skill Tournament
Brief Description: The ’237 patent describes a method for administering online tournaments over an interactive computer system. The method involves players participating in a qualifying round against a host computer, followed by a playoff round where qualified players compete simultaneously against the host and other human players.

Prior Art Relied Upon: Walker (International Publication No. WO 97/39811).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Walker, a reference not considered during prosecution, discloses every limitation of the challenged claims. Walker teaches a distributed electronic tournament system with a central controller (the claimed "host computer") and remote input/output devices (the "terminals") for players. The system administers tournaments with multiple game sessions that function as qualifying and playoff rounds. Petitioner asserted that Walker discloses evaluating player scores against pre-established performance levels to determine qualification for subsequent rounds and to award prizes, thereby teaching the classification, qualification, and award distribution steps of independent claim 1. Walker further describes playoff rounds with simultaneous player participation and the subsequent generation of player ratings based on performance, mapping to the remaining limitations of claim 1 and its dependents.

Prior Art Relied Upon: Walker (WO 97/39811).
Core Argument for this Ground:
- Prior Art Mapping: As an alternative to anticipation, Petitioner argued that any potential minor differences between Walker's disclosure and the claims would have been obvious to a person of ordinary skill in the art (POSITA). For instance, if Walker were interpreted as not expressly requiring a qualifying round between only a single player and the host, the modification would be an obvious design choice.
- Motivation to Combine (for §103 grounds): A POSITA would be motivated to implement a single-player qualifying round as claimed because Walker discloses both traditionally single-player games (e.g., trivia, crossword puzzles) and qualifying criteria based on achieving a minimum score (which does not require comparison to other players). This would avoid the needless complexity of converting a single-player game into a multi-player format for a qualifying stage.
- Expectation of Success: Petitioner contended that applying well-known tournament structures and game formats within the predictable environment of a networked computer system, as taught by Walker, would have resulted in a high expectation of success.

Prior Art Relied Upon: Walker (WO 97/39811), Demar (Patent 4,685,677), and Hamilton (Patent 4,666,160).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner addressed specific dependent claims. For claim 6, which requires four performance levels, Petitioner argued Walker’s disclosure of three distinct prize tiers (e.g., $100, $50, $25) inherently creates a fourth "no prize" tier. For claim 7, which requires qualification based on being in the top two performance levels, Petitioner argued this represents an obvious implementation choice for balancing tournament selectivity.
- Motivation to Combine (for §103 grounds): A POSITA would be motivated to establish a specific number of skill levels, such as four, to achieve a desired competitive balance, a concept explicitly encouraged by Walker's teaching of segmenting tournaments by skill level. This known practice was further evidenced by Demar (amusement devices with four award levels) and Hamilton (a skill game with four levels of play). Similarly, a POSITA would be motivated to set a reasonable advancement threshold (like the top two levels) to maintain player and spectator interest throughout the tournament.

"playing a game of skill in a qualifying round between a single player and the host computer": Petitioner proposed this phrase means a game including only one human player that is at least administered by the host, without requiring direct head-to-head competition. This construction was argued to be critical for showing that Walker's disclosure of single-player games like trivia, where the host is an administrator, meets the claim limitation.
"playing... in a playoff round... simultaneously along with other players": Petitioner proposed this requires all human players in the playoff round to play at the same preset time. This construction was used to align with Walker's disclosure of a flexible-timing qualifying round followed by a fixed, scheduled playoff round, which distinguishes the two stages of the tournament.
Steps (b) and (c) of Claim 1: Petitioner argued that the steps of (b) classifying a player within a performance level and (c) determining if the player qualifies for a specific performance level can be performed either sequentially or simultaneously as a single step. This broad construction was important to Petitioner’s argument that Walker's disclosure of a single event (e.g., advancing to the next round) inherently satisfies both limitations.

Petitioner argued for institution under 35 U.S.C. § 314(a) by emphasizing that its challenge was based on Walker, a dispositive prior art reference that the Patent Examiner never considered during the original prosecution. Petitioner asserted that had the Examiner been aware of Walker, the challenged claims would have been rejected as either anticipated or obvious.

Petitioner requested institution of an inter partes review and cancellation of claims 1-19 of the ’237 patent as unpatentable.