PTAB

IPR2023-01235

Interactive Communications Intl Inc v. Blackhawk Network Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System and Method of Selling Pre-Printed Lottery Tickets
  • Brief Description: The ’135 patent discloses systems and methods for selling pre-printed, random-draw lottery tickets using a retailer's standard point-of-sale (POS) terminal. The technology enables scanning a ticket at a POS terminal, communicating with a remote lottery administration system for activation, and printing the draw details on a standard sales receipt.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over Szrek

  • Prior Art Relied Upon: Szrek (Patent 7,627,497)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Szrek, which discloses a system for selling and activating preprinted lottery tickets, teaches every limitation of the challenged claims. Independent claim 1 recites a method involving scanning a pre-printed ticket at a POS terminal, transmitting its unique information to a lottery administration system, receiving payment confirmation, receiving draw details back from the lottery system, and printing them on a receipt. Petitioner asserted Szrek discloses these exact steps, referring to its POS terminal as a "cash register" and its lottery administration system as a "game provider." For claims 2 and 6, which add a "transaction processor" intermediary, Petitioner mapped this limitation to Szrek’s "store back office," which is disclosed as an intermediary computer that processes and forwards communications between the cash register and the game provider. Dependent claims were argued to be obvious for reciting conventional system components or data formats also disclosed or suggested by Szrek.
    • Key Aspects: Petitioner emphasized that a continuation of the ’135 patent was previously found unpatentable over Szrek alone in PGR2020-00084, a decision affirmed by the Federal Circuit, arguing the claims and prior art analysis are substantively identical.

Ground 2: Claims 1-6 are obvious over Llach in view of Szrek

  • Prior Art Relied Upon: Llach (Application # 2013/0041768) and Szrek (Patent 7,627,497)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Llach discloses a general framework for activating pre-printed stored value cards (e.g., gift cards) that is analogous to the claimed invention. Llach’s system includes a POS terminal for scanning a card, a "transaction computer" (transaction processor), and a "card issuer's authorization system" (lottery administration system) that communicates to activate the card. Petitioner argued that Szrek provides the specific teachings for adapting Llach's general activation system to lottery tickets. Specifically, Szrek teaches using a pre-printed lottery ticket, identifying unique product information from it, and having the remote system return lottery-specific "draw details" to be printed on the receipt. The combination of Llach’s architecture with Szrek’s lottery-specific functionality was alleged to render the claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Llach and Szrek to enable a single, unified POS system to handle both gift card and lottery ticket activations. This modification would create known benefits for retailers, including increased revenue streams, simplified operations, and improved customer satisfaction, by avoiding the need for separate, dedicated lottery terminals. Szrek itself teaches its lottery activation process is analogous to activating phone cards, making the combination with Llach’s similar gift card system a predictable and logical step.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because the systems are highly compatible. Both Llach and Szrek disclose the use of EAN-128 barcodes, meaning Llach's POS terminals could already scan Szrek's tickets with minimal modification. Implementing the well-known lottery activation functions described in Szrek (e.g., checking activation status, returning draw details) into Llach's authorization system would be a trivial and predictable task for a skilled artisan.

4. Key Claim Construction Positions

  • "transaction processor": Petitioner proposed this term be construed according to its plain meaning as "a processor that processes transactions between two devices." This construction is critical for claims 2 and 6. Petitioner argued the term should not be limited to a "third-party" processor, as suggested by the patent owner in a related proceeding, because the claims do not specify ownership and the specification’s reference to a third party is merely one permissive embodiment. Petitioner asserted that Szrek’s "store back office" meets this construction.
  • "data package": For claim 3, Petitioner proposed this term be given its plain meaning, resisting a narrower construction that would require a specific "packaging syntax" or more than one datum. Petitioner argued the claim only requires the package to contain "at least the draw details" and the specification broadly allows for communication in the form of an "image, text or any other message format deemed appropriate," supporting a broad interpretation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-6 of the ’135 patent as unpatentable.