PTAB

IPR2023-00268

DK Crown Holdings Inc v. Diogenes Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method for Conducting a Wagering Event
  • Brief Description: The ’779 patent discloses a system for conducting wagering events using real-time computer operations. The core functionality involves offering a participant the option to fully or partially "cash out" a wager before the conclusion of the wagering event.

3. Grounds for Unpatentability

Ground 1: Anticipation Over Scott - Claims 1-3, 5-10, 16-18, and 21-25 are anticipated by Scott.

  • Prior Art Relied Upon: Scott (Application # 2012/0309489).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Scott, which discloses a "Value Engine Providing Current Cash Value for Wagering Game Indicia," teaches every limitation of the challenged claims. Scott’s system, comprising a gaming machine, processor, and memory, corresponds to the ’779 patent’s claimed system. Scott's "value engine" was asserted to be the claimed "trading engine module," which receives a wager, continuously retrieves real-time game data, and recalculates the wager’s value based on changing odds. Petitioner contended that Scott’s core feature—presenting a player with "an option to take the current cash value" before the game has ended—directly maps to the ’779 patent’s "cash out" option. The generation and presentation of this cash-out option in Scott was argued to occur in real-time based on an evaluation of the player's eligibility to win an award, thus meeting the corresponding limitations of independent claims 1 and 16. The various dependent claims were also argued to be disclosed in Scott's detailed description of different game types (e.g., poker, keno), network configurations, and award types (e.g., credits, tickets).

Ground 2: Obviousness Over Scott and POSITA Knowledge - Claims 1-3, 5-10, 16-18, and 21-25 are obvious over Scott in view of the general knowledge of a Person of Ordinary Skill in the Art (POSITA).

  • Prior Art Relied Upon: Scott (Application # 2012/0309489) and the general knowledge of a POSITA.
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground serves as an alternative to Ground 1. Petitioner asserted that if Scott is found not to explicitly teach certain generic elements, such as storing wager information "in a record within a database" or implementing the system for a "plurality" of participants, these features would have been obvious additions. Scott discloses storing game-related information (including amounts wagered) in a memory device and discloses a "player tracking account," which a POSITA would understand implies a structured data record. Scott also discloses that its system may comprise "a number of players electronically connected."
    • Motivation to Combine: A POSITA would have been motivated to implement the information storage in Scott using a standard database for its well-known benefits of organizing, structuring, and efficiently retrieving data, which is its intended purpose. Similarly, adapting Scott's single-player-focused examples to a multi-player environment would be an obvious design choice to broaden the system's applicability, representing a simple scaling or duplication of existing components to accommodate more users.
    • Expectation of Success: A POSITA would have had a high expectation of success in making these modifications. Implementing a database for player tracking and scaling a wagering system to multiple users were routine, well-understood tasks in the gaming industry at the time, involving the use of conventional technology for predictable results.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial would be inappropriate under both 35 U.S.C. §314(a) and §325(d).
  • Against §314(a) Denial: Petitioner made a Sotera-style stipulation, agreeing not to pursue in the co-pending district court litigation any invalidity ground that was raised or could have been reasonably raised in this inter partes review (IPR).
  • Against §325(d) Denial: Petitioner presented a two-step argument under the Advanced Bionics framework. First, denial is improper because Scott is new prior art that was not previously presented to or considered by the Examiner during prosecution. Second, even if the Board were to proceed to step two, the Examiner committed a clear error during prosecution. Petitioner alleged the Examiner was persuaded during prosecution of a parent patent that claim language requiring "at least one of a buy-out offer and [a] partial buy-out offer" was conjunctive, requiring both options. However, the challenged ’779 patent uses plainly disjunctive language ("fully cash out or partially cash out"). Petitioner contended the Examiner erroneously carried over the prior conjunctive interpretation, failing to conduct a proper prior art search for references disclosing only a full cash-out option, like Scott.

5. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-3, 5-10, 16-18, and 21-25 of the ’779 patent as unpatentable.