PTAB

PGR2020-00084

Interactive Communications Intl Inc v. Blackhawk Network

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1. Case Identification

2. Patent Overview

  • Title: METHODS FOR SELLING PRE-PRINTED ONLINE LOTTERY TICKETS
  • Brief Description: The ’894 patent discloses a system and method for selling pre-printed, random-draw lottery tickets through a retailer’s existing point-of-sale (POS) infrastructure without requiring specialized lottery hardware. The invention centers on a transaction processor that facilitates data exchange between a retailer’s POS terminal and a central lottery administration system to activate the tickets at the time of purchase.

3. Grounds for Unpatentability

Ground 1: Claims 1-19 and 21-53 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 taught all material elements of the challenged claims. Szrek disclosed a method for selling pre-printed lottery tickets that are inactive until purchased at a standard POS cash register. Szrek’s system featured a "store back office" that functioned as a transaction processor, communicating between the POS terminal and a central "game provider system" (lottery administration system). The process involved scanning a ticket's barcode at the POS, sending the unique identifier to the game provider for activation, receiving back an activation confirmation with draw details, and printing this information on the customer's receipt. Petitioner asserted this architecture and process flow directly corresponded to the limitations of independent system claim 1 and method claim 7 of the ’894 patent.
    • Motivation to Combine (for §103 grounds): While primarily argued as anticipating, Petitioner asserted that to the extent any minor element was not explicit (e.g., website/mobile access in dependent claims 4, 5, 9, and 10), it would have been obvious to a Person of Ordinary Skill in the Art (POSA). A POSA would combine Szrek’s system with well-known web and mobile interfaces for checking lottery results to provide enhanced customer convenience, a known objective in the field.
    • Expectation of Success: A POSA would have a high expectation of success in making such minor modifications, as it involved the routine application of conventional and ubiquitous web and mobile technologies to a known system.

Ground 2: Claims 1-19, 21-29, and 31-53 are obvious over Llach in view of Szrek

  • Prior Art Relied Upon: Llach (Application # 2013/0041768), Szrek (Patent 7,627,497)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Llach disclosed a generic POS activation system architecture for stored-value cards, such as gift cards. Llach’s system used a transaction computer to mediate communications between a POS terminal and a card issuer’s back-end authorization system. While Llach taught the general framework, it was not specific to lottery tickets. Szrek provided the specific teaching of applying this exact POS activation model to pre-printed lottery tickets. Petitioner argued the combination of Llach’s general architecture with Szrek’s specific application rendered the challenged claims obvious.
    • Motivation to Combine (for §103 grounds): A POSA would be motivated to combine the references because Szrek explicitly analogized its lottery activation method to the process of selling phone cards at a cash register. This created a direct rationale for applying the known POS activation system of Llach to the specific product type taught by Szrek. The combination represented the predictable application of a known technique in a similar field to achieve well-understood benefits of retail integration.
    • Expectation of Success: The combination would have yielded predictable results, as it involved integrating two well-established systems (general POS activation and lottery management) using conventional and widely available hardware and software components.

Ground 3: Claims 20 and 43 are obvious over Szrek in view of Gilmore

  • Prior Art Relied Upon: Szrek (Patent 7,627,497), Gilmore (Application # 2005/0233797)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner targeted claims 20 and 43, which specifically required the generation of random lottery numbers ("quick picks") at the time the ticket is purchased at the POS. Petitioner argued that Szrek taught using tickets where the numbers were determined prior to purchase (i.e., pre-printed). Gilmore was introduced to supply the missing element, as it explicitly disclosed a system for generating quick-pick numbers at the time of purchase. In Gilmore, a game monitor detects a request at the POS and generates a quick-pick transaction, sending the data to an off-site lottery computer.
    • Motivation to Combine (for §103 grounds): A POSA would combine Gilmore’s on-demand number generation with Szrek’s POS-activated lottery system to add a valuable and well-known feature. The motivation would be to enhance Szrek's system by offering customers the popular "quick pick" option directly at the checkout, thereby increasing convenience and functionality. This modification aligns with known industry goals of distributing processing from a central office and improving the customer experience.
    • Expectation of Success: A POSA would have a high expectation of success in this combination. Generating random numbers at a terminal was a ubiquitous and simple software function, making its integration into the existing architecture of Szrek a straightforward and predictable modification.

4. Relief Requested

  • Petitioner requested institution of Post-Grant Review and cancellation of claims 1-53 of Patent 10,769,894 as unpatentable under 35 U.S.C. §103.