Aristocrat Technologies Inc v. PTT LLC

1. Case Identification

• Case #: To Be Assigned
• Patent #: 9,022,852
• Filed: January 23, 2018
• Petitioner(s): Aristocrat Technologies, Inc.
• Patent Owner(s): High 5 Games, LLC, f/k/a PTT, LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Symbol and Reel Substitution Methods for Multi-Line Slot Machines
• Brief Description: The ’852 patent relates to methods for electronic slot machines that modify reel contents before a game is played. The system replaces designated "reserved symbols" on multiple reels with other game symbols according to a randomly selected "schema" to enhance gameplay variety and player excitement.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Yoshimi in view of Hughes.

• Prior Art Relied Upon: Yoshimi (Application # 2006/0183534) and Hughes (Application # 2010/0124969).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yoshimi discloses the key features of the challenged claims, including a slot machine game where, before each spin, replacement symbols are substituted into pre-designated locations on a reel. Crucially, this substitution occurs after receiving a play command but before the reels are displayed to the player—the very feature that Petitioner contended led to the allowance of the ’852 patent. Yoshimi teaches using a table of replacement symbols (an "inner reel") to randomly determine which symbol will populate the designated substitution locations, which corresponds to the claimed "set of symbol replacement schemas."
  • Motivation to Combine: Petitioner asserted that while Yoshimi’s main embodiment describes symbol replacement on the leftmost reel, it explicitly suggests the method can be used for "at least one reel." A person of ordinary skill in the art (POSITA) would be motivated to extend this feature to all reels by consulting Hughes. Hughes expressly teaches applying a single replacement schema across all reels to increase the odds of winning combinations and thereby enhance player excitement. A POSITA would combine the teachings to apply Yoshimi's pre-spin replacement method across multiple reels to create a more engaging game with the potential for larger payouts, a well-known objective in the gaming industry.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination. Applying a known technique (multi-reel replacement from Hughes) to an existing system (Yoshimi's pre-spin replacement) was argued to be a predictable modification that involved nothing more than applying known design principles to achieve a desired, foreseeable result.

Ground 2: Claims 2, 13, and 16 are obvious over Yoshimi, Hughes, and Friedman '159.

• Prior Art Relied Upon: Yoshimi (Application # 2006/0183534), Hughes (Application # 2010/0124969), and Friedman '159 (Patent 8,257,159).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 and addresses dependent claims 2, 13, and 16, which further require the "reserved symbol" to be a "blank symbol." Petitioner asserted that even if the combination of Yoshimi and Hughes did not render this limitation obvious, adding Friedman ’159 would. Friedman ’159 discloses a method where blank symbols on reels are replaced with other symbols before being displayed. This is done to avoid the undesirable player experience of seeing a definitive losing symbol, thereby increasing game suspense.
  • Motivation to Combine: A POSITA implementing the system of Yoshimi and Hughes would need to define the content of the "reserved symbol" positions before substitution. Since this placeholder is never displayed to the player, there is no technical reason for it to have any visual content. A POSA would be motivated to use a literal blank symbol, as taught by Friedman '159, as the most logical placeholder. Friedman '159 provides the express rationale for replacing blank symbols—to improve game suspense—motivating its use as the reserved symbol in the Yoshimi/Hughes system.
  • Expectation of Success: Petitioner argued this was an obvious design choice from a finite number of predictable solutions. The placeholder could either be a symbol from the paying set or a non-paying/blank symbol. Given that a blank symbol requires no design effort and its replacement is taught to improve gameplay, a POSITA would have had a high expectation of success in implementing this feature.

4. Key Claim Construction Positions

• "reserved symbol": Petitioner argued this term should be construed as a placeholder for symbol positions where replacement will occur. It is not displayed to the player and does not require any specific visual content. This construction was central to mapping Yoshimi, which does not specify the pre-substitution content of its replacement positions, to the claims.
• "blank symbol": For dependent claims 2, 13, and 16, Petitioner argued for a broad construction of "blank symbol" to include not only a visually blank space but also a default or initial value (e.g., '0') in a software array representing the reels. This construction was key to Petitioner's argument that an obvious software implementation of Yoshimi would meet this limitation even without further modification.
• "a set of symbol replacement schemas...": Petitioner argued this phrase means a collection of at least two schemas, where each schema identifies a single replacement symbol to be applied to all reels. This construction allows Yoshimi's table of replacement symbols (where one symbol is chosen to populate runs on the reel(s)) to meet the limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner's primary technical contention, underpinning multiple arguments, was that a POSITA would have found it obvious to implement Yoshimi's game logic using a standard software array to represent the reel strips, a well-known practice in the art.
• In this common implementation, symbol positions designated for substitution would initially contain the array's default value (e.g., '0' in C++) before being populated with a replacement symbol. Petitioner argued this default value inherently and obviously functions as the claimed "reserved symbol" and, per its proposed construction, the "blank symbol," without needing explicit disclosure in the prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. It was asserted that the examiner had not substantively considered the prior art and arguments presented in the petition.
• Although a related Yoshimi ’944 application was cited during prosecution, it was never analyzed or relied upon in a rejection. More importantly, the primary combination references, Hughes and Friedman ’159, were never before the examiner. Therefore, Petitioner contended that the grounds relied upon new art and arguments that the PTO had not previously evaluated.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of Patent 9,022,852 as unpatentable.