PTAB

IPR2020-01260

Pen Tech Associates Inc v. Epic Tech LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: GAMING SYSTEM AND METHOD
  • Brief Description: The ’317 patent describes a method and system for networked electronic gaming. The system allows players at individual game terminals playing a primary game to become eligible for a prize from a separate, server-run secondary game for a defined "bonus time period."

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-2, 4-5, 7-10, 18-20, and 22 under 35 U.S.C. §102 over the ’423 Patent

  • Prior Art Relied Upon: ’423 Patent (Patent 7,758,423).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’423 patent discloses every limitation of the challenged claims. The ’423 patent teaches a networked gaming system with a "group bonus round game" (the second game) that can be played on a server while players engage in a primary game at their terminals. Petitioner contended that the ’423 patent’s requirement for players to have an "active value" on their machine to qualify for the bonus round is equivalent to the ’317 patent’s "bonus time period" for establishing eligibility. Furthermore, the bonus round in ’423 may be "non-modal," meaning it runs simultaneously with the primary game without interrupting it, mapping to the limitation that the prize determination occurs while the player is playing the first game. The central controller in ’423, which can operate the bonus game, was argued to meet the limitation of a server conducting play without player input.

Ground 2: Anticipation of Claims 1, 4-5, 7-10, 18-20, and 22 under 35 U.S.C. §102 over the ’121 Patent

  • Prior Art Relied Upon: ’121 Patent (Patent 7,713,121).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’121 patent, which describes a "Shared Progressive Gaming System," anticipates the challenged claims. The ’121 patent discloses a primary prize for a triggering player and a secondary prize shared among all other "active" players. Eligibility for the secondary prize requires maintaining an "active" status, which necessitates placing a wager within a specific time limit (e.g., 20 seconds) from the conclusion of the previous game. Petitioner argued this explicitly teaches the claimed "bonus time period." The secondary prize event is triggered by another player or a central controller, which maps to the server-run second game. The ’121 patent also discloses status indicators that notify players of their active status and remaining time, which Petitioner mapped to the claim limitations of establishing and decrementing the bonus period and notifying the player of an award.

Ground 3: Obviousness of Claims 1-2, 4-5, 7-10, 18-20, and 22 under 35 U.S.C. §103 over the ’423 Patent in view of the ’121 Patent

  • Prior Art Relied Upon: ’423 Patent (Patent 7,758,423) and ’121 Patent (Patent 7,713,121).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that even if the ’423 patent does not explicitly disclose "establishing a bonus time period for the player," this feature is taught by the ’121 patent. The ’423 patent discloses the core networked system with a group bonus round based on player eligibility. The ’121 patent clarifies this eligibility concept by explicitly defining an "active" status for a shared prize based on a time-limited wagering requirement (e.g., within 20 seconds). A person of ordinary skill in the art (POSITA) would have understood that the "active value" concept in ’423 serves the same function as the time-limited "active" status in ’121.
    • Motivation to Combine: A POSITA would combine the teachings because both patents address the same field of technology: networked gaming systems with a shared secondary prize. The ’121 patent is explicitly directed to increasing player interest by providing visible means (status indicators) to encourage players to remain active to qualify for a shared prize. A POSITA would have been motivated to incorporate the explicit, time-based eligibility mechanism from ’121 into the group bonus system of ’423 to achieve the predictable result of increased player engagement and revenue.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these known gaming features, as incorporating a time-based eligibility requirement into a bonus game system was a well-understood and predictable design choice in the art.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) based on the ’121 patent in view of the ’423 patent, which relied on similar arguments and design modification theories as Ground 3.

4. Key Claim Construction Positions

  • "a bonus time period" (claims 1, 5, 8, 9, 10, 18-20, 22): Petitioner argued this term is indefinite. However, should the Board construe it, Petitioner proposed it should mean: "A predetermined amount of time, which coincides at least partially with the play of the game at the gaming terminal, during which time the player may be eligible to receive a prize from the secondary game." This construction is central to Petitioner's argument that the "active value" of the ’423 patent and the time-limited "active" status of the ’121 patent meet this limitation.
  • "a server conducts all play of the second game without input from the player until play of the second game is terminated" (claim 1): Citing the prosecution history, Petitioner proposed this term should be construed to mean: "Play of the second game is conducted by an entity other than the player." This broader construction allows Petitioner to map the limitation to prior art systems where a central controller or even another player's actions trigger and resolve the secondary game or prize event.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-2, 4-5, 7-10, 18-20, and 22 of the ’317 patent as unpatentable.