Aristocrat Technologies Inc v. NEXRF Corp

1. Case Identification

• Case #: IPR2022-00408
• Patent #: 8,747,229
• Filed: January 6, 2022
• Petitioner(s): Aristocrat Technologies, Inc.
• Patent Owner(s): NEXRF Corp.
• Challenged Claims: 1, 6, 7, 9, 14, 15, 17, 22, and 23

2. Patent Overview

• Title: Gaming Server System and Method for Generating a Game Outcome
• Brief Description: The ’229 patent discloses a gaming server system and method where a central server, connected to one or more network access devices (e.g., computers, mobile phones), verifies a player's identity and then generates a random game outcome. The system communicates images corresponding to the outcome to the player's device.

3. Grounds for Unpatentability

Ground 1: Obviousness of Independent Claims - Claims 1, 9, and 17 are obvious over Joshi in view of Finlayson.

• Prior Art Relied Upon: Joshi (Patent 7,470,196) and Finlayson (Australian Patent No. 721645).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Joshi disclosed the core elements of the challenged independent claims. Joshi taught a remote gaming system with a central "casino server" connected to remote terminals (network access devices) over the Internet. This server included a verification system that authenticated players using a user ID and password against a "casino player database" (the claimed registration database). Post-verification, Joshi’s server generated random numbers, used a "payout structure" (the claimed paytable module) to determine a game outcome, and transmitted a "visual representation of the outcome" (the claimed images) to the player’s device. Petitioner contended that Finlayson was cited to expressly disclose a server-side "pay table" for determining game payouts, in the event Joshi was found not to explicitly place its "payout structure" on the server.
  • Motivation to Combine: Petitioner asserted that a Person of Ordinary Skill in the Art (POSITA) would combine Finlayson's server-side pay table with Joshi's remote gaming system. This combination was presented as a simple substitution of a known element to yield predictable results, namely server-side generation of a random game outcome. Given the limited design choices for locating a pay table (server or client), moving it to the server as taught by Finlayson would have been an obvious design choice to consolidate game logic and enhance security.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in this combination because it involved applying a known server-side game logic element (Finlayson's pay table) to a known remote gaming architecture (Joshi's system), a straightforward reconfiguration of a known system.

Ground 2: Obviousness of Dependent Claims with Encoding/Encryption - Claims 6, 7, 14, 15, 22, and 23 are obvious over Joshi and Finlayson in view of Agasse.

• Prior Art Relied Upon: Joshi (Patent 7,470,196), Finlayson (Australian Patent No. 721645), and Agasse (European Patent Application No. EP 0 934 765 A1).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Joshi/Finlayson combination to address dependent claims requiring an "encoding module" and an "encryption module." Petitioner argued that Agasse supplied these missing elements. Agasse disclosed an interactive gaming system that encoded audiovisual game outcome data into an MPEG-2 stream for broadcast to various devices, including televisions with set-top boxes. Agasse also explicitly taught encrypting these transmissions to ensure security. Petitioner mapped Agasse’s MPEG compression system to the claimed "encoding module" and its security features to the "encryption module."
  • Motivation to Combine: A POSITA would have been motivated to add Agasse’s encoding and encryption functionalities to the Joshi system to improve it. The motivation for encoding stemmed from the need to format game outcome images for different types of client devices (e.g., PCs, televisions, mobile devices), a known problem with a known solution as taught by Agasse. The motivation for adding encryption was driven by well-understood market forces and design incentives to enhance the security and reliability of online gambling, a concern explicitly acknowledged in the ’229 patent's specification.
  • Expectation of Success: Combining these features was argued to be predictable. Implementing known encoding standards (like MPEG) and encryption methods to transmit data from a server to various clients was a well-established practice in the art, ensuring a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations using Mighdoll (Patent 5,918,013) as an alternative to Agasse for teaching an "encoding module" via transcoding images for different display requirements, and Dobner (Patent 6,874,084) as an alternative for teaching an "encryption module" via the use of secure HTTPS/SSL protocols.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) (based on Fintiv factors) would be improper. This petition was filed with a motion for joinder to a previously instituted IPR (IPR2021-00951) on the same grounds. Furthermore, the parallel district court litigation against Petitioner had been dismissed and was on appeal, meaning no trial date was scheduled, which heavily disfavors denial under Fintiv.
• Petitioner also argued that denial under 35 U.S.C. §325(d) would be improper because the asserted prior art, particularly Joshi, was never cited or considered during the original prosecution. Petitioner contended the art is materially different from the prosecution art because Joshi explicitly discloses the very feature—a centralized server generating the random game outcome—that the applicant added to the claims to overcome the examiner's rejections and secure allowance.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1, 6, 7, 9, 14, 15, 17, 22, and 23 of the ’229 patent as unpatentable.