UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD VSR INDUSTRIES, INC. Petitioner v. COLE KEPRO INTERNATIONAL, LLC Patent Owner U.S. Patent No. 6,860,814 Filing Date: September 23, 2002 Issue Date: March 1, 2005 Title: Gaming Apparatus Having Door Mounted Display Inter Partes Review Case No. (Pending) PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,860,814 UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.100 et seq. Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, Virginia 22313-1450
TABLE OF CONTENTS I. INTRODUCTION... 1 II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8... 1 A. Real Party-In-Interest... 1 B. Related Matters... 1 C. Lead And Back-Up Counsel... 2 D. Service Information... 2 III. POWER OF ATTORNEY UNDER 37 C.F.R. 42.10... 2 IV. REQUIREMENT UNDER 37 C.F.R. 42.22 AND 42.104... 3 A. Grounds For Standing... 3 B. Statement Of Precise Relief Requested And Identification Of Challenge... 3 V. CLAIMS 1-14 OF THE 814 PATENT ARE UNPATENTABLE... 4 A. The 814 Patent... 4 1. Overview... 4 2. Summary of the Prosecution History... 6 3. Level of Ordinary Skill in the Art... 10 B. Claim Construction... 10 C. Ground 1: Claims 1-14 Are Rendered Obvious Under 35 U.S.C. 103 By Fraley... 13 i
D. Ground 2: Claims 1-14 Are Rendered Obvious By Fraley In View Of Okada... 20 E. Ground 3: Claims 1-14 Are Rendered Obvious Under 35 U.S.C. 103 By Runte... 20 F. Ground 4: Claims 1-14 Are Rendered Obvious By Runte In View Of Okada... 28 G. Ground 5: Claims 1-3 And 5 Are Anticipated Under 35 U.S.C. 102(A) By Smith... 28 H. Ground 6: Claims 1-14 Are Rendered Obvious Under 35 U.S.C. 103 By Smith... 34 VI. CONCLUSION... 38 ii
TABLE OF EXHIBITS Exhibit VSR-1001 VSR-1002 VSR-1003 VSR-1004 VSR-1005 VSR-1006 VSR-1007 VSR-1008 VSR-1009 Description U.S. Patent No. 6,860,814 to Cole ( the 814 patent ) The file history for the 814 patent ( 814 File History ) U.S. Patent No. 3,796,433 to Fraley, et al. ( Fraley ) U.S. Patent No. 6,315,666 to Mastera, et al. ( Mastera ) U.S. Patent No. 5,851,148 to Brune, et al. ( Brune ) U.S. Patent No. 4,718,672 to Okada ( Okada ) U.S. Patent No. 6,454,649 to Mattice, et al. ( Mattice ) U.S. Patent No. 3,940,136 to Runte ( Runte ) U.S. Patent No. 5,351,176 to Smith, Stephen W., et al. ( Smith ) iii
I. INTRODUCTION VSR Industries, Inc. ( VSR ) petitions the Board to institute an inter partes review of claims 1-14 of U.S. Patent No. 6,860,814 ( the 814 patent ). II. MANDATORY NOTICES UNDER 37 C.F.R. 42.8 A. REAL PARTY-IN-INTEREST VSR is the real party-in-interest. VSR is a Nevada corporation without subsidiaries or a parent company. As discussed immediately below, VSR may seek to be indemnified for its fees and costs associated with the requested inter partes review and defending against the below-captioned district court proceeding. VSR would seek those fees and costs from Ortiz Gaming USA and/or Ortiz Gaming Europe ( Ortiz ). B. RELATED MATTERS The Patent Owner is asserting claims 1-14 of the 814 patent against VSR in an action pending in the U.S. District Court for the District of Nevada. The action is styled Cole Kepro International, LLC v. VSR Industries Inc., Civil Action 2:14- cv-01416-jcm-cwh. The Patent Owner has not yet served VSR with the complaint. Patent Owner is asserting that certain gaming cabinets made-to-order by VSR for Ortiz and to Ortiz s specifications infringe the 814 patent. Pursuant to Nevada s Uniform Commercial Code, a buyer who furnishes specifications to the -1-
seller must hold the seller harmless against any such claim which arises out of compliance with the specifications. NRS 104.2312. Accordingly, Ortiz may be responsible for VSR s fees and costs for the requested inter partes review and/or for defending the district court action. C. LEAD AND BACK-UP COUNSEL Lead Counsel Adam K. Yowell (Reg. No. 69,955) ayowell@watsonrounds.com Watson Rounds, P.C. 5371 Kietzke Lane Reno, Nevada 89511 Tel: 775.324.4100 Fax: 775.333.8171 Back-Up Counsel Marc D. Foodman (Reg. No. 32,110) mfoodman@watsonrounds.com Watson Rounds, P.C. 5371 Kietzke Lane Reno, Nevada 89511 Tel: 775.324.4100 Fax: 775.333.8171 D. SERVICE INFORMATION VSR served a copy of this petition, in its entirety, (i) to the address of the attorney of record for the 814 patent and (ii) to the address of the lead attorney for the Patent Owner in the district court action, as indicated in the attached Certificate of Service. VSR may be served at the lead counsel address provided above in Section II(C). VSR consents to electronic service by e-mail. III. POWER OF ATTORNEY UNDER 37 C.F.R. 42.10 VSR is filing, concurrently herewith, a power of attorney with the designation of counsel in accordance with 37 C.F.R. 42.10(b). -2-
IV. REQUIREMENT UNDER 37 C.F.R. 42.22 AND 42.104 A. GROUNDS FOR STANDING VSR certifies that the 814 patent is available for inter partes review. Neither VSR nor its privies have filed a civil action challenging the validity of any claims of the 814 patent. Neither VSR nor its privies have been served with a complaint alleging infringement. VSR is therefore not barred or estopped from requesting an inter partes review challenging claims 1-14 on the grounds identified in this petition. B. STATEMENT OF PRECISE RELIEF REQUESTED AND IDENTIFICATION OF CHALLENGE VSR requests that the Board institute an inter partes review of claims 1-14 of the 814 patent, and cancel those claims as invalid. VSR challenges claims 1-14 on the grounds listed in the table below. Ground Claims of the 814 Patent Basis for Challenge Ground 1 Claims 1-14 Obvious under 35 U.S.C. 103 by Fraley Ground 2 Claims 1-14 Obvious under 35 U.S.C. 103 by Fraley in view of Okada Ground 3 Claims 1-14 Obvious under 35 U.S.C. 103 by Runte Ground 4 Claims 1-14 Obvious under 35 U.S.C. 103 by Runte in view of Okada Ground 5 Claims 1-3, 5 Anticipated under 35 U.S.C. 102(a) by Smith Ground 6 Claims 1-14 Obvious under 35 U.S.C. 103 by Smith -3-
In Section V below, VSR provides a full statement of the reasons for the relief requested, including how the challenged claims should be construed for purposes of this petition, and how the construed claims are unpatentable under the statutory grounds identified in the table above. V. CLAIMS 1-14 OF THE 814 PATENT ARE UNPATENTABLE A. THE 814 PATENT 1. Overview The 814 patent s point of novelty is directed to a cabinet having a reduced depth dimension resulting from a video display mounted in an opening in its door. (VSR-1001, Abstract) The patent has two independent claims and twelve dependent claims. (Id. at cols. 11:1-12:37). The key components of the independent claims and the alleged point of novelty are underlined below. Independent claim 1 recites a gaming apparatus configured to present one or more wager-based games comprising a cabinet. (Id. at col. 11:2-3 (emphasis added).) A door is connected to the cabinet. (Id. at col. 11:3-4 (emphasis added).) The door is moveable between a first position and a second position. (Id. at col. 11:4-5.) The door in the first position cooperates with the cabinet to define a generally closed interior space. (Id. at col. 11:5-7.) The door in the second position permits access to the interior space. (Id. at col. 11:7-8.) The door has an inner surface and an outer surface and an opening in it. (Id. at col. 11:8-9.) -4-
A generally planar video display is mounted to the inner surface of the door and is movable with the door when the door is moved between the first and second positions. (Id. at col. 11:9-12 (emphasis added).) The video display is aligned with the opening in the door to be viewable through it. (Id. at col. 11:12-14.) The gaming apparatus also comprises at least one gaming controller. (Id. at col. 11:14 (emphasis added).) The gaming controller is located in the interior space and is connected to the video display to provide game information for display by the video display. (Id. at col. 11:14-17.) Dependent claim 2 adds that a mount is connected to the door and the video display is supported by the mount. (Id. at col. 11:18-20.) Dependent claim 3 adds that the generally planar video display comprises an LCD display. (Id. at col. 11:21-23.) Dependent claim 4 adds that the cabinet has a front and a back and has a reduced dimension from the front to the back. (Id. at col. 11:24-26.) Dependent claim 5 adds that the door is located at a front of the cabinet. (Id. at col. 11:27-28.) The door in the first position comprises the front of the cabinet. (Id. at col. 11:28-30.) Dependent claim 6 adds that a plurality of player input buttons are mounted to the door and are located at the outer surface thereof. (Id. at col. 11:31-33.) -5-
Dependent claim 7 adds that the opening is located below a display area in the door at a top portion of the cabinet. (Id. at col. 11:34-36.) Independent claim 8 recites a gaming apparatus having a reduced depth dimension and comprising a cabinet having a first side, a second side, and a front and a back. (Id. at cols. 11:37-12:1.) The cabinet has a width from the first side to the second side which exceeds a depth of the cabinet from the front to the back. (Id. at col. 12:1-3.) The rest of the claim elements are identical to claim 1. Dependent claim 9 adds that a bracket is connected to the door support connected to the bracket. (Id. at col. 12:19-21.) The support defines a generally horizontal supporting surface upon which a lower edge of the video display is supported when connected to the door. (Id. at col. 12:21-23.) Dependent claims 10-14 are identical to claims 3-7. (Id. at col. 12:24-37.) 2. Summary of the Prosecution History The 814 patent issued from an application filed on September 23, 2002. (VSR-1002, pp. 1-37.) The application claimed priority to another application filed on March 3, 2000. (Id. at p. 1.) The application leading to the 814 patent included eight claims. (Id. at pp. 30-32.) Application claim 1, as amended during prosecution, corresponds to claim 1 of the 814 patent. (Id. at p. 30.) Application claim 5, as amended during prosecution, corresponds to claim 8 of the 814 patent. (Id. at p. 31.) -6-
Application claims 1 and 8, as originally filed, recited: 1. A gaming apparatus configured to present one or more wager-based games comprising a cabinet, a door connected to said cabinet, said door moveable between a first position and a second position, said door in said first position cooperating with said cabinet to define a generally closed interior space, said door in said second position permitting access to said interior space, said door having an inner surface and an outer surface, a generally planar video display mounted to said inner surface of said door and movable with said door when said door is moved between said first and second positions, said video display aligned with said opening in said door to be viewable therethrough, and at least one gaming controller, said gaming controller located in said interior space and connected to said video display to provide game information for display by said video display. * * * 5. A gaming apparatus having a reduced depth dimension and configured to present one or more wagerbased games comprises a cabinet having a first side, a second side, a front and a back, said cabinet having a width from said first side to said second side which exceeds a depth of said cabinet from said front to said back, a door connected to said cabinet, said door -7-
moveable between a first position and a second position, said door in said first position cooperating with said cabinet to enclose at least a portion of said front of said cabinet and define a generally closed interior space, said door in said second position permitting access to said interior space through said front of said cabinet, said door having an inner surface and an outer surface, a generally planar video display mounted to said inner surface of said door and movable with said door when said door is moved between said first and second positions, said video display aligned with said opening in said door to be viewable therethrough, said cabinet having a width from said first side to said second side which exceeds a depth of said cabinet from said front to said back, and at least one gaming controller, said gaming controller located in said interior space and connected to said video display to provide game information for display by said video display. (Id. at pp. 30-31.) The Assistant Examiner initially rejected application claims 1-8 for double patenting and as indefinite under 35 U.S.C. 112. (Id. at pp. 86-91.) In response, Applicant amended application claims 1 and 5 to add an opening in the door, added dependent application claims 9-14, and filed a terminal disclaimer. (Id. at pp. 94-104.) -8-
Subsequently, the Assistant Examiner refused to enter the terminal disclaimer, finding it deficient, and again rejected the pending claims (1-14) for double patenting. (Id. at pp. 105-109.) The Assistant Examiner, however, noted that application claims 1-14 would be allowable upon the filing of a proper terminal disclaimer. (Id. at p. 108.) In response, Applicant filed a corrected terminal disclaimer. (Id. at pp. 114-115.) Subsequently, the Assistant Examiner again refused to enter the terminal disclaimer, again finding it deficient, and again rejected application claims 1-14 for double patenting. (Id. at pp. 116-119.) The Assistant Examiner also withdrew the indication of allowability and rejected (i) application claims 11 and 14 as indefinite under 35 U.S.C. 112 and (ii) application claims 1-14 as obvious under 35 U.S.C. 103(a) by Yamada (U.S. Patent No. 6,201,703) in view of Weiss (U.S. Patent No. 6,164,645). (Id. at pp. 119-125.) At this point, Applicant took aim at the Assistant Examiner. Applicant characterized the Assistant Examiner s actions as very irregular and inconsistent, stated that they raise[d] questions as to the propriety of the rejection and raise[d] substantial questions about the propriety of the action, and requested that the U.S. Patent Office address the substantial irregularities in the review of the application because applicant was concerned that such irregularities risk[ed] harm to the reputation of the Office and the important role of -9-
the Office in innovation in America. (Id. at pp. 132-134.) Applicant also submitted a declaration attempting to swear behind the Weiss reference. (Id. at pp. 141-143.) In the next Office Action, the Assistant Examiner dropped all rejections except the double patenting rejection (id. at pp. 161-166), and that rejection was eventually overcome when the Applicant s terminal disclaimer was accepted (id. at p. 202). 3. Level of Ordinary Skill in the Art A person having ordinary skill in the art for the 814 patent would have a high school or vocational school diploma and at least five years of experience designing and building cabinets and housings for electronic devices such as gaming and amusement devices, computers, televisions and radios, including selecting and installing electrical components. A person without a high school or vocational school diploma but at least seven years of experience designing and building these same types of cabinets and housings would also be considered a person of ordinary skill in the art. B. CLAIM CONSTRUCTION A claim subject to inter partes review is given its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. 42.100(b). Applying this standard, claim terms should be interpreted -10-
according to their ordinary and customary meaning consistent with the specification. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). VSR bases this petition on the broadest reasonable constructions of the claims of the 814 patent. In this petition, therefore, VSR applies the following broadest reasonable constructions of the claim language: 1 CRT: For purposes of this petition, CRT means cathode ray tube. (VSR- 1001, at col. 1:14-15.) gaming apparatus: For purposes of this petition, gaming apparatus means devices for implementing games of skill and/or chance. (VSR-1001, at col. 1:14-15.) 1 VSR s position regarding the scope of the claims of the 814 patent under the broadest reasonable construction standard is not VSR s position regarding the proper scope of the claims for purposes of litigation. The claim construction standard is different in District Court proceedings, and VSR reserves the right to propose different constructions in litigation. Moreover, the claims of the 814 patent are deficient based on various provisions in 35 U.S.C. 112, including indefiniteness and written description. VSR reserves its right to present these invalidity claims at any future proceedings. -11-
gaming controller: For purposes of this petition, gaming controller means hardware and/or software that can be programmed to control game play. (VSR- 1001, at col. 5:31-34, 63-65.) generally planar video display: For purposes of this petition, generally planar video display means a liquid crystal display screen, a plasma display panel, or another substantially planar or thin video display. (VSR-1001, at col. 8:30-33.) For purposes of this petition, generally planar video display does not include a cathode ray tube. (VSR-1001, at col. 8:37-38.) LCD: For purposes of this petition, LCD means liquid crystal display. (VSR-1001, at col. 8:31.) plasma display: For purposes of this petition, plasma display means plasma display panel or PDP. reduced depth dimension: For purposes of this petition, reduced depth dimension means the depth of the cabinet, i.e., the distance from the front to the back, is less than the width from side-to-side. (VSR-1001, at col. 4:11-13.) reduced dimension from said front to said back: For purposes of this petition, reduced dimension from said front to said back means the depth of the cabinet, i.e., the distance from the front to the back, is less than the width from side-to-side. (VSR-1001, at col. 4:11-13.) -12-
C. GROUND 1: CLAIMS 1-14 ARE RENDERED OBVIOUS UNDER 35 U.S.C. 103 BY FRALEY Fraley issued on March 12, 1974, which is prior to the earliest possible priority date of September 1999 for the 814 patent. (VSR-1001, at p.1.); (VSR- 1002, at p. 142). Fraley qualifies as prior art under 35 U.S.C. 102(a) (pre-aia). Fraley was not before the Patent Office during prosecution of the 814 patent. (VSR-1001, at p. 1.) Claims 1-14 of the 814 patent are rendered obvious under 35 U.S.C. 103 by Fraley. Fraley discloses a gaming apparatus configured to present one or more wager-based games, e.g., blackjack. (VSR-1003, at Abstract; Figs. 1-4; col. 2:4-40.) 2 A representative image of the gaming apparatus is shown in Figure 2 of Fraley, which is reproduced below. 2 As noted further herein, the gaming apparatus preamble is non-limiting but is discussed here for purposes of completeness. -13-
Fraley discloses that the gaming apparatus is comprised of a cabinet. (VSR- 1003, at Figs. 1-3.) Specifically, [t]he apparatus is housed in a compact, attractive, utilitarian cabinet. (VSR-1003, at col. 3:4-5.) Moreover, [t]he apparatus is comprised of a box-like cabinet or housing 10. (VSR-1003, at Fig. 2; col. 3:6-7.) Fraley discloses that the gaming apparatus is comprised of a door connected to said cabinet. Specifically, [c]abinet 10 has a door or front panel 12 pivotly secured thereto by hinge 14. (VSR-1003, at Figs. 2-3; col. 3:10-11.) -14-
Fraley discloses that said door is moveable between a first position and a second position. Specifically, Door 12 can be locked in a closed position by means of latch 16 and lock 18. (VSR-1003, at Figs. 2-3; col. 3:11-13.) Fraley discloses that said door in said first position cooperates with said cabinet to define a generally closed interior space. Specifically, [c]abinet 10 and door 12 provide a closed dust and moisture proof container for the operating components of the device and prevent tampering by unauthorized persons. (VSR-1003, at Figs. 2-3; col. 3:13-16.) Fraley discloses that said door in said second position permits access to said interior space. (VSR-1003, at Fig. 2.) Fraley also discloses that said door has an inner surface and an outer surface and an opening therein. (Id.) Fraley discloses that the gaming apparatus is comprised of a generally planar analogue display mounted to said inner surface of said door and movable with said door when said door is moved between said first and second positions. Specifically, [d]oor 12 is constructed with an upper recessed vertical display panel 60 upon which the progress and results of the game are displayed. (VSR- 1003, at Figs. 1-3; col. 3:60-62.) As stated in Fraley: Each of the card indicators in dealer card display 70 and player card display 72, and the special condition indicators are each separately illuminated by lamps placed behind the indicators to vividly indicate the play -15-
of a particular card or the existence of a particular condition. These lamps and the attendant electrical circuitry are located in an enclosed box 66 in the upper section of door 12. (VSR-1003, at col. 4:40-48.) Further, the display disclosed by Fraley is mounted to the inner surface of the door and the display moves with the door when opened and closed. (VSR-1003, at Figs. 1-3.) Focusing upon the display, Fraley also discloses that the generally planar analogue display may be modified and that other display panel layouts can be employed without materially altering the game described herein. (VSR-1003, at col. 4:49-51.) It was well-known to a person of ordinary skill prior to September 1999 (the earliest potential priority date for the 814 patent (VSR-1002, p. 142)) that a gaming or other electronic device display could be implemented with a CRT, LCD or plasma display. (Mastera, VSR-1004 at col. 6:2-7 ( The video displays 221 and 223 are preferably high resolution flat panel LCDs, cathode ray tubes, projection type LCDs, plasma displays ); see also col. 8:41-44.) (Brune, VSR- 1005 at col. 2:25-28 ( As shown in Fig. 3, the gaming device 312 includes the display screen 114 (such as a cathode ray tube CRT, liquid crystal display LCD, and/or a display based upon light emitting diodes LEDs). )). Thus, using a LCD or plasma display for the gaming apparatus described in Fraley would have been a mere non-patentable design choice. -16-
Fraley discloses that said display is aligned with said opening in said door to be viewable therethrough. Specifically, [d]oor 12 is constructed with an upper recessed vertical display panel 60 upon which the progress and results of the game are displayed. (VSR-1003, at Figs. 1-3; col. 3:60-62.) Fraley discloses that the gaming apparatus is comprised of at least one gaming controller. (VSR-1003, at Figs. 5-7; cols. 4:65-5:16.) Fraley discloses that said gaming controller is located in said interior space and connected to said video display to provide game information for display by said video display. Specifically: Cabinet 10 can be provided with a vertical interior partition 20 that divides the cabinet into separate compartments for housing the electronic components and the disk-handling equipment. The computer and electronic control circuitry is of the solid state, printed circuit type mounted on a number of plugboards 22, seven such plug boards being employed in the illustrated embodiment. (VSR-1003, at Fig. 2; col. 3:16-23.) In addition, Fraley discloses in various places how its computer and control system provides game play information for display of the game of blackjack. (VSR-1003 cols. 5:17-7:47) Claim 2: Fraley discloses that the display is attached to the door. (VSR- 1003, generally, at Figs. 1-3.) In particular, the display disclosed by Fraley must -17-
necessarily be and is mounted in some fashion to the disclosed door. A mount is a well-known and obvious way to attach a device to a door. Therefore Fraley discloses a mount for the display through inherency, or at a minimum a mount would be obvious. Claim 3: Fraley discloses that the generally planar analogue display may be modified and that other display panel layouts can be employed without materially altering the game described therein. (VSR-1003, at col. 4:49-51.) As discussed above, it would have been obvious to one of ordinary skill in the art to use an LCD panel for the Fraley display. Claim 4: Fraley discloses a game apparatus with a reduced depth dimension. (Okada, VSR-1006, at Fig. 2.) Specifically, Fraley discloses an apparatus in which the depth of the cabinet, i.e., the distance from the front to the back, is less than the width from side-to-side. (Fraley, VSR-1003, at Fig. 2.) Claim 5: Fraley discloses that said door is located at a front of said cabinet. Specifically, [c]abinet 10 has a door or front panel 12 pivotly secured thereto by hinge 14. (VSR-1003, at Figs. 2-3; col. 3:10-11.) Fraley also discloses that said door in said first position comprises said front of said cabinet. (Id.) Claim 6: Fraley discloses that a plurality of player input buttons are mounted to said door and located at said outer surface thereof. Specifically, -18-
[d]oor 12 is constructed with an inclined control panel 62 located immediately below display panel 60. (VSR-1003, at Fig. 1; col. 3:61-64.) Claim 7: It would have been obvious to one of ordinary skill in the art to modify the Fraley device to include, for example, a display area or signage above the generally planar video display. It was well-known in the art at the time the 814 patent was filed to include such features in gaming terminals. (Okada, VSR- 1006, at Fig. 1); (Mattice, VSR-1007, at Fig. 1, col. 4:44-46 ( regions 124, 126 for providing various components such as signage, instructions, attract displays, progressive game displays and the like. ).) That feature is simply unpatentable. Allowing display room above the opening for the video display as set forth in claims 7 and 14 is therefore obvious. Claims 8-14 of the 814 patent are nearly identical to claims 1-7 except that the reduced depth dimension limitation is added into independent claim 8 and claim 9 contains a bracket supporting a horizontal support. (VSR-1001, p. 11.) As stated above, Fraley discloses a gaming apparatus with a reduced depth dimension. (VSR-1003, at Fig. 2.) Moreover, Fraley discloses that the generally planar analogue display may be modified and that other display panel layouts can be employed without materially altering the game described herein. (VSR-1003, at col. 4:49-51.) Modifying the generally planar display with any thin display panel would allow the Fraley cabinet s depth dimension to be reduced even further. -19-
Also, adding a bracket to solidify a horizontal support is a well-known practice in cabinet making that would be obvious to one skilled in the art. Consequently, Fraley renders claims 1-14 obvious. D. GROUND 2: CLAIMS 1-14 ARE RENDERED OBVIOUS BY FRALEY IN VIEW OF OKADA Claims 1-14 are also rendered obvious by Fraley in view of Okada. Even if it was not generally known that the use of a CRT, LCD or plasma display was a simple design choice for electronic devices, including gaming devices which it was then claims 1-14 are obvious over Fraley in view of Okada. Okada disclosed in January, 1988 that LCD panels could be used in gaming devices to display computer generated information, i.e., flashing lights on the computer identified winning patterns. (Okada, VSR-1006, at Abstract, Fig. 8, cols. 5:58-6:4.) It would have been obvious to combine the LCD panel of Okada with the door of Fraley given their known use in gaming devices. Consequently, Fraley in view of Okada renders claims 1-14 obvious. E. GROUND 3: CLAIMS 1-14 ARE RENDERED OBVIOUS UNDER 35 U.S.C. 103 BY RUNTE Runte issued on February 24, 1976, which is prior to the earliest possible priority date of September 1999 for the 814 patent. (VSR-1001, p.1.); (VSR- 1002, at p. 142). Runte qualifies as prior art under 35 U.S.C. 102(a) (pre-aia). Runte was not before the Patent Office during prosecution of the 814 patent. -20-
(VSR-1001, at p. 1.) Claims 1-14 of the 814 patent are rendered obvious under 35 U.S.C. 103 by Runte. Runte discloses an amusement device configured to present one or more games, e.g., a game similar to ping pong. (VSR-1008, at Abstract; Figs. 1 and 3; col. 4:40.) Further, Runte discloses that the device is coin operated. (VSR-1008, at col. 2:39.) A representative image of the amusement device is shown in Figure 3 of Runte, which is reproduced below. -21-
To begin with, the gaming apparatus language of claim 1 is a non-limiting preamble that the Board should not consider in its obviousness analysis. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) ( where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation ); see also MPEP 2111.02(II). Even if the gaming apparatus preamble were limiting, however, a properly defined gaming apparatus in the 814 patent includes games of skill such as those disclosed in the Runte amusement device. A person skilled in the art knows that games of skill or chance can be played for credits, tokens, prizes, or currency, and so fall within the scope of wager-based games. Runte discloses that the amusement device is comprised of a cabinet. (VSR- 1008, at Figs. 1, 3, and 9.) Specifically, [a]musement device 10 generally consists of a support 12, a housing 14 mounted on the support 12. (VSR-1008, at Figs. 1 and 3; col. 2:41-43.) Moreover, [t]he housing 14 includes a floor 25, fixed to the upper end of column 26. The housing includes eight side walls 28, 30, 32, 34, 36, 38, 40 and 42. The side walls have their adjacent edges sealingly fixed to each other and to the floor to form an open-ended housing. (VSR-1008, at Figs. 1, 3, and 9; col. 2:58-62.) -22-
Runte discloses that the disclosed device is comprised of a tabletop door connected to said cabinet. Specifically, [a]musement device 10 generally consists of a support 12, a housing 14 mounted on the support 12, a table top 16 hingedly mounted on the housing 14. (VSR-1008, at Figs. 1, 3, and 9; col. 2:41-44.) Runte discloses that said door is moveable between a first position and a second position. Specifically, [t]he table top 16 is pivotedly connected to the housing 14 by a piano hinge 56. (VSR-1008, at Figs. 1 and 3; col. 3:10-11.) Moreover, [b]racket 66 limits the movement of table top 16 relative to the housing. (VSR-1008, at col. 3:19-20.) Runte discloses that said door in said first position cooperates with said cabinet to define a generally closed interior space. (VSR-1008, at Figs. 1 and 9.) Runte discloses that said door in said second position permits access to said interior space. Specifically, [w]hen it is necessary to perform any maintenance, the lock 74 is released so that top 16 may pivot about hinge 56. Pivoting of the top is limited by bracket 66. When the table top is pivoted to the attitude shown in FIG. 3, all of the parts are presented for ready servicing. (VSR-1008, at Fig. 3; col. 5:10-15.) Runte discloses that said door has an inner surface and an outer surface and an opening therein. Specifically, [t]he table top 16 has its upper surface flat, and -23-
has a rectangular screen aperture 44 in its center. (VSR-1008, at Figs. 1-3; col. 2:63-64.) Runte discloses that the amusement device is comprised of a video display mounted to said inner surface of said door and movable with said door when said door is moved between said first and second positions. Specifically, a conventional cathode ray tube 18 mounted on the interior of table top 16, with a conventional shield 19 (shown in dotted form) covering the tube. (VSR-1008, at Figs. 1, 3, and 9; col. 2:44-47.) As noted previously, it was well-known in the art prior to 1999 that a gaming or other electronic device display could be implemented with a CRT, LCD or plasma display. (Mastera, VSR-1004 at col. 6:2-7; col. 8:41-44); (Brune, VSR- 1005 at col. 2:25-28.) Again, using a LCD or plasma display for the Runte amusement apparatus would have been a mere non-patentable design choice. Runte discloses that said video display is aligned with said opening in said door to be viewable therethrough. Specifically, [t]he cathode ray tube 18 has a conventional screen 84, which is positioned adjacent to glass 46 in aperture 44. The screen is parallel to the table top 16. (VSR-1008, at Figs. 1-3 and 9; col. 3:33-35.) Runte discloses that its device is comprised of at least one gaming controller located in the interior space. Specifically, electronic circuitry 20 mounted on the -24-
interior of table top 16, a solid-state printed circuit logic board 21 mounted in housing 14 and electrically connected to the electronic circuitry. (VSR-1008, at Figs. 3 and 9; col. 2:47-50.) Moreover: As was mentioned above, the tube 18 is connected to electronic circuitry 20, the construction of which circuitry is well-known in the art and is commercially available, as is the tube. Appropriate sections of the electronic circuitry are controlled by manual control devices. There are four manual control devices 86, 88, 90 and 92. The electronic circuitry is connected to the logic board 21, which is mounted on a pair of rails 93 on the floor of the housing. (VSR-1008, at col. 3:35-44.) Further, game information is provided by the game controller for display on the video display. (VSR-1008, Abstract: A logic board is mounted in the housing and is connected to the electronic circuitry to generate the image of a ball moving across the screen and images of a plurality of paddles to give the appearance of a paddle striking the ball and returning it. ) Claim 2: Runte discloses that a mount is connected to said door and said video display is supported by said mount. Specifically, a conventional cathode ray tube 18 mounted on the interior of table top 16. (VSR-1008, at Figs. 1 and 3; col. 2:44-45.) -25-
Claim 3: As discussed above, it would have been obvious to one of ordinary skill in the art to modify the CRT display of Runte with a LCD panel. Claim 4: It would have been obvious to one of ordinary skill in the art that a known design choice of replacing the Runte display with a flat panel display, as discussed above, would have numerous benefits, including that such a modification would eliminate the space needed for the tube-portion of the cathode ray tube. Without a cathode ray tube, the housing under the table top of Runte could be reduced, increasing the amount of leg-room for patrons and users of the Runte device. Specifically, one of ordinary skill in the art would appreciate that, without the CRT, the Runte housing could be reduced in (i) circumference, (ii) depth, or (iii) both dimensions. Claim 5: Runte discloses that said door is located at a top of said cabinet. Specifically, a table top 16 hingedly mounted on the housing 14. (VSR-1008, at Fig. 1; col. 2:43-44.) Runte discloses that said door in said first position comprises said top of said cabinet. (Id.) Runte also discloses that similar amusement devices are generally mounted on a wall or are set up in a console. (VSR-1008, at col. 1:10-11.) It would have been known to one of ordinary skill in the art that the Runte device could be oriented in the traditional fashion i.e., as an upright console and in such an orientation the top of the Runte cabinet would constitute the front of the device. -26-
Claim 6: Runte discloses that a plurality of player input buttons are mounted to said door and located at said outer surface thereof. Specifically, [a]ppropriate sections of the electronic circuitry are controlled by manual control devices. There are four manual control devices 86, 88, 90 and 92. (VSR-1008, at Fig. 1; col. 3:39-42.) Claim 7: It would have been obvious to one of ordinary skill in the art to modify the Runte device to include, for example, a display area or signage above the generally planar video display. In particular, it would have been obvious to include such a display area or signage on the Runte device when oriented as an upright console. As noted, it was well-known in the art at the time the 814 patent was filed to include such features in gaming terminals. (Okada, VSR-1006, at Fig. 1); (Mattice, VSR-1007, at Fig. 1, col. 4:44-46 ( regions 124, 126 for providing various components such as signage, instructions, attract displays, progressive game displays and the like. ).) Claims 8-14 of the 814 patent are nearly identical to claims 1-7 except that the reduced depth dimension limitation is added into independent claim 8 and claim 9 contains a bracket supporting a horizontal support. (VSR-1001, p. 11.) As discussed above, replacing the Runte display with a known flat panel display would have numerous benefits, including that such a modification would allow the depth of the housing to be reduced. Also, adding a bracket to solidify a horizontal -27-
support is a well-known practice in cabinet making that would be obvious to one skilled in the art. Consequently, Runte in view of the prior art renders claims 1-14 of the 814 patent obvious. F. GROUND 4: CLAIMS 1-14 ARE RENDERED OBVIOUS BY RUNTE IN VIEW OF OKADA Claims 1-14 are rendered obvious by Runte in view of Okada. As noted with respect to Fraley, even if it was not generally known that a CRT, LCD or plasma display were a simple design choice for electronic devices, including gaming devices, claims 1-14 are invalid in view of Okada. Okada disclosed in January, 1988 that LCD panels could be used in gaming devices to display computer generated information. (Okada, VSR-1006, at Abstract; Fig. 8; cols. 5:58-6:4) It would have been obvious to combine the LCD panel of Okada with the door of Runte to reduce cabinet width. Consequently, Runte in view of Okada renders claims 1-14 obvious. G. GROUND 5: CLAIMS 1-3 AND 5 ARE ANTICIPATED UNDER 35 U.S.C. 102(a) BY SMITH Smith issued on September 27, 1994, which is prior to the earliest possible priority date of September 1999 for the 814 patent. (VSR-1001, p. 1); (VSR- 1002, at p. 142). Smith qualifies as prior art under 35 U.S.C. 102(a) (pre-aia). -28-
Smith was not before the Patent Office during prosecution of the 814 patent. (VSR-1001, p. 1.) Smith anticipates claims 1-3 and 5. Smith discloses a front panel display construction for computers. (VSR- 1009, at Abstract; Figs. 1, 3-4; col. 1:53-63.) The present invention relates to front panel display construction for computers. More particularly, the present invention relates to a front panel display mounted in a hinged front panel of the computer. (VSR-1009, at col. 1:7-10.) A representative image of the front panel display computer is shown in Figure 4 of Smith, which is reproduced below. As noted previously in petitioner s analysis under Runte, the gaming apparatus limitation is a non-limiting preamble that the Board should not consider in its anticipation analysis. Assuming that to be the case, Smith discloses that the front panel display computer is comprised of a cabinet. Specifically, [i]n one -29-
embodiment, computer assembly 16 may be adapted for rack mounting, as shown in FIG. 4. (VSR-1009, at Fig. 4; col. 3:38-39.) As noted, preferably, computer housing 16a of computer assembly 16 is configured, dimensioned and adapted for rack mounting. (VSR-1009, at Fig. 4; col. 3:48-50.) Smith discloses that the front panel display computer is comprised of a door connected to said cabinet. Specifically, [r]eferring to FIG. 1, the computer front panel 10 of the present invention includes panel portion 12 and pivotable display portion 14. Panel portion 12 is secured to computer assembly 16 by screws 18. (VSR-1009, at Fig. 1; col. 2:53-56.) Smith discloses that said door is moveable between a first position and a second position, that said door in said first position cooperates with said cabinet to define a generally closed interior space, and that said door in said second position permits access to said interior space. Specifically: The front panel assembly comprises panel means releasably secured to the computer, and having an opening formed therein so as to provide access to internal components of the computer and display means for displaying images. The display means is pivotably secured to the panel means such that when the display means is pivoted to an open position, the opening in the panel means is exposed to a user. When the display -30-
means is pivoted to a closed position, access to the opening in the panel means is inhibited. (VSR-1009, at Fig. 4; col. 1:54-63.) Smith also discloses that said door has an inner surface and an outer surface and an opening therein. (VSR-1009, at Figs. 1, 3-4 and 7.) Smith discloses that the front panel display computer is comprised of a generally planar video display mounted to said inner surface of said door and movable with said door when said door is moved between said first and second positions. Specifically, Smith discloses that the video [d]isplay 39 may be any known flat panel display medium. An example of a suitable flat panel display medium is a color thin film transistor active matrix LCD display, model number LQ10DH11 manufactured by Sharp Electronics. (VSR-1009, at Figs. 3-4; col. 4:44-48.) Moreover, Smith discloses that the [d]isplay 39 is secured to window receiver 70 by screws 71 so that display surface 39a of display 39 is in cooperative alignment with window 40 to form a display zone sufficient to allow viewing of the display. (VSR-1009, at Fig. 7; col. 6:52-55.) Finally, Smith discloses [t]he display means is pivotably secured to the panel means such that when the display means is pivoted to an open position, the opening in the panel means is exposed to a user. When the display means is pivoted to a closed position, access to the opening in the panel means is inhibited. (VSR-1009; at Fig. 4; col. 1:58-63.) -31-
Smith discloses that said video display is aligned with said opening in said door to be viewable therethrough. Specifically, display surface 39a of display 39 is in cooperative alignment with window 40 to form a display zone sufficient to allow viewing of the display. (VSR-1009, at Fig. 7; col. 6:53-55.) Smith discloses that the front panel computer is comprised of at least one gaming controller as defined. Specifically: The computer assembly includes a microprocessor assembly (CPU) with internal memory (e.g., read only memory and random access memory), stored programs including application and system control programs, mass storage devices (e.g., fixed and removable drives), circuitry to communicate with periphery equipment (e.g., communication ports) and user interface circuitry (e.g., video interface and keyboard interface circuitry), all of which are known in the art. (VSR-1009, at col. 3:6-14.) Further, game information is or may be displayed on the video display. Specifically, display panel 10 of the present invention is operatively connected to CPU 90 via video interface circuit 104, both of which facilitate user interaction with the computer assembly. (VSR-1009, at col. 3:27-31.) -32-
Smith discloses that said gaming controller is located in said interior space and connected to said video display to provide game information for display by said video display. Specifically: Another functional example, is that the pivotable display portion of the front panel allows easy access to the internal components of the computer, while maintaining the environmental integrity of the computer. The terms environmental integrity, environmentally sealed, environmental construction or like terms represent a construction of the front panel of the present invention which prevents the ingress or egress of electric, magnetic and/or other energy fields with respect to the computer assembly. In addition, this definition also includes a construction which prevents moisture, dust and the like from entering the computer assembly. (VSR-1009, at Fig. 4; cols. 2:61-3:5.) Moreover, display panel 10 of the present invention is operatively connected to CPU 90 via video interface circuit 104, both of which facilitate user interaction with the computer assembly. (VSR-1009, at col. 3:27-31.) In sum, Smith anticipates claim 1 of the 814 patent. Claim 2: Smith discloses that a mount is connected to said door and said video display is supported by said mount. Specifically: Turning now to FIG. 7, the mounting configuration of display 39 and display window 40 within display housing -33-
68 of display portion 14 will be described. Generally, display housing 68 includes interior enclosure 69, display window receiver 70, display window retainer 72 and panels 75 and 77, which maintain the display in a fixed, environmentally sealed relation to window 40. (VSR-1009, at Figs. 4 and 7; col. 6:16-22.) Claim 3: As discussed above, Smith discloses that the generally planar video display comprises an LCD display. Specifically, Smith discloses that the video [d]isplay may be any known f[l]at panel display, including a LCD. (VSR- 1009, at col. 4:44-47.) Claim 5: Smith discloses that said door is located at a front of said cabinet. (VSR-1009, at Figs. 1, 3-4.) Smith also discloses that said door in said first position comprises said front of said cabinet. (Id.) patent. For each of the above reasons, Smith anticipates claims 1-3 and 5 of the 814 H. GROUND 6: CLAIMS 1-14 ARE RENDERED OBVIOUS UNDER 35 U.S.C. 103 BY SMITH Smith anticipates claims 1-3 and 5 of the 814 patent for all of the reasons set forth immediately above in Section V(G). In the alternative, claims 1-3 and 5 are rendered obvious under 35 U.S.C. 103 by Smith. Further, claims 4 and 6-14 are also rendered obvious under 103 by Smith. Every element not disclosed in -34-
Smith was a well-known, standard component of gaming devices. A person of skill in the art would know that Smith only requires different design choices to meet every element of claims 1-14 of the 814 patent. Accordingly, Smith renders claims 1-14 obvious. The preamble of claim 1 is non-limiting as previously argued. Should the Board, however, find that the preamble does further limit the 814 patent s claims, one of ordinary skill in the art would have recognized that the Smith front panel display computer could be used as a gaming apparatus configured to present one or more wager-based games. In particular, the games presented by, for example, Mastera and Brune, and the 814 patent are, generally, software applications stored and run by a CPU. (Mastera, VSR-1004, Figs. 5-6, col. 8:15-25; Brune, VSR- 1005, Fig. 1, cols. 1:66-2:4; VSR 1001, col. 5:32-47.) The Smith front panel display computer possesses all of the necessary components for presenting a wager-based game and it would be well within the prior knowledge of one skilled in the art to modify Smith in this way. Claim 4: Smith discloses the space-saving advantages of the front panel display computer. In particular, Smith discloses that the device can save space in a server rack where space is at a premium, especially rack space. (VSR-1009; at col. 1:33-35.) And [t]he front panel display assembly of the present invention permits use of minimal rack space while still providing an internal display and -35-
maximum access to computer controls, status indicators and mass storage devices. (VSR-1009, col. 1:44-48.) One of ordinary skill in the art would recognize that the space-saving teachings of Smith in which height is the primary concern in a server rack environment could be applied when a game was presented on the Smith device. See, e.g., In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (a reference is analogous art to the claimed invention if the reference is reasonably pertinent to the problem faced by the inventor); see also Stevenson v. Int l Trade Comm., 612 F.2d 546, 550 (CCPA 1979) ( In a simple mechanical invention a broad spectrum of prior art must be explored and it is reasonable to permit inquiry into other areas where one of ordinary skill in the art would be aware that similar problems exist. ); MPEP 2141(a). In such a configuration, the height of the device would need to be about eye-level with the players, as was well-known in the art. Therefore, one of ordinary skill in the art would recognize that the space savings would best come in relation to the depth of the device, i.e., the device could be thin yet still house all of the components necessary to present the wager-based game. Claim 6: It would have been obvious to one of ordinary skill in the art to include player input buttons on the Smith device, such that players could interact with a wager-based game presented on the device. This is no different than keyboard placement. Moreover, mounting those buttons on the front of the -36-
machine, on the outer surface of the door would be the logical place to position such buttons, such that players could view the screen while using the buttons. Such placement of buttons was well-known in the art prior to the prosecution of the 814 patent. (Fraley, VSR-1003, at Fig. 1; col. 3:61-64 ( Door 12 is constructed with an inclined control panel 62 located immediately below display panel 60 ); Runte, VSR-1008, at Fig. 1; col. 3:39-42 ( Appropriate sections of the electronic circuitry are controlled by manual control devices. There are four manual control devices 86, 88, 90 and 92. ).) Modifying Smith in this way would be an obvious design choice well within the knowledge of one skilled in the art. Claim 7: It would have been obvious to one of ordinary skill in the art to modify the Smith device to include, for example, a display area or signage above the generally planar video display. In particular, it would have been obvious to include such a display area or signage on the Smith to attract players or otherwise advertise a wager-based game presented on the device. It was well-known in the art at the time the 814 patent was filed to include such features in gaming terminals. (Okada, VSR-1006, at Fig. 1); (Mattice, VSR-1007, at Fig. 1, col. 4:44-46.) Modifying Smith in this way would be an obvious design choice well within the knowledge of one skilled in the art. -37-