IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ARISTOCRAT TECHNOLOGIES, INC.,
Petitioner,
v.
IGT,
Patent Owner.
Case No. To Be Assigned
Patent No. D503,951

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D503,951

UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.100 et seq.

TABLE OF CONTENTS
Page
I.

Mandatory Notices (37 C.F.R. 42.8(a)(1)) ........................................................ 1

A.

Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) ........................................ 1

B.

Related Matters (37 C.F.R. 42.8(b)(2)) .................................................. 1

C.

Lead and Backup Counsel (37 C.F.R. 42.8(b)(3)) ................................. 1

D.

Service Information (37 C.F.R. 42.8(b)(4)) ........................................... 1

II.

Fees (37 C.F.R. 42.103) .................................................................................... 2

III.

Requirements for Inter Partes Review Under 37 C.F.R. 42.104 ...................... 2

IV.

V.

A.

Grounds for Standing (37 C.F.R. 42.104(a)) ......................................... 2

B.

Claims and Statutory Grounds (37 C.F.R. 42.104(b)(1) &

(b)(2)) ........................................................................................................ 2

C.

Unpatentability of the Claim (37 C.F.R. 42.104(b)(4)) ......................... 3

D.

Supporting Evidence (37 C.F.R. 42.104(b)(5)) ..................................... 3

Background and Introduction.............................................................................. 3

A.

Gaming Devices and Indicators ............................................................... 3

B.

The Irregular Pentagon (House) Shape .................................................... 8

Summary of the 951 Patent.............................................................................. 10

A.

Overview of the 951 Patent................................................................... 10

B.

Person of Ordinary Skill in the Art ........................................................ 12

C.

Claim Construction (37 C.F.R. 42.104(b)(3))...................................... 12

1.

Legal standard for claim construction of a design patent ........... 12

2.

Design elements ........................................................................... 14

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3.
VI.

BRC of the design claimed in the 951 Patent ............................ 23

There is a Reasonable Likelihood that Petitioner Will Prevail With

Respect to The Claim of the 951 Patent .......................................................... 23
A.

B.

C.

Legal Standards ...................................................................................... 23

1.

Anticipation.................................................................................. 23

2.

Obviousness ................................................................................. 25

Overview of the Prior Art ....................................................................... 27

1.

U.S. Patent No. 3,203,391 (Corwin) (Ex. 1003) ..................... 27

2.

Fey, Marshall, Slot MachinesA Pictorial History of The First

100 Years, 1989, Liberty Belle Books, 2nd Ed. (Fey) (Ex.
1004). ........................................................................................... 28

3.

Pollan, Michael, Jackpot!, Channels of Communications, Vol.

6, No. 3 (June 1986) (Pollan) (Ex. 1005)................................. 29

4.

U.S. Patent No. 4,674,748 (Wismer) (Ex. 1006)..................... 30

Detailed Explanation of the Grounds for Unpatentability ..................... 32

1.

Ground I: The Claim Is Invalid Under 35 U.S.C. 102(b) As

Anticipated by Corwin ................................................................. 33

2.

Ground II: The Claim Is Invalid Under 35 U.S.C. 103 As

Obvious Over Fey ........................................................................ 40

3.

Ground III: The Claim Is Invalid Under 35 U.S.C. 103 As

Obvious Over Pollan in View of Wismer ................................... 48

VII. Conclusion ......................................................................................................... 54

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TABLE OF AUTHORITIES
CASES

Pages(s)

Apple, Inc. v. Samsung Elecs. Co., Ltd.,

678 F.3d 1314 (Fed. Cir. 2012) ..........................................................................27
In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ......................................................................25, 26
State ex rel. Brett v. Four Bell Fruit Gum Slot Machines,
196 Okla. 44 (1945) ..............................................................................................5
Crocs, Inc. v. Intl Trade Commn,
598 F.3d 1294 (Fed. Cir. 2010) ..............................................................25, 33, 40
Door-Master Corp. v. Yorktowne, Inc.,
256 F.3d 1308 (Fed. Cir. 2001) ........................................................22, 25, 39, 40
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) ......................................................................25, 43
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) (en banc) ......................................................13, 24
Gorham Mfg. Co. v. White,
81 U.S. 511 (1871) ........................................................................................24, 39
H. K. Porter Co. v. Black & Decker Mfg. Co.,
No. 71 C 2859, 1974 WL 20209 (N.D. Ill. July 17, 1974), affd,
518 F.2d 1177 (7th Cir. 1975) ............................................................................24
In re Haruna,
249 F.3d 1327 (Fed. Cir. 2001) ..........................................................................25
In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993) ............................................................................26
High Point Design LLC v. Buyers Direct, Inc.,
730 F.3d 1301 (Fed. Cir. 2013) ..........................................................................13
Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ........................................................24, 25, 27, 39
- iii -

In re Klein by Klein,
987 F.2d 1569 (Fed. Cir. 1993) ..........................................................................33
Lee v. Dayton-Hudson Corp.,
838 F.2d 1186 (Fed. Cir. 1988) ..........................................................................19
MRC Innovations, Inc. v. Hunter Mfg.,
747 F.3d 1326 (Fed. Cir. 2014) ..............................................................26, 27, 52
Neo-Art Inc. v. Hawkeye Distilled Prods. Co.,
654 F. Supp. 90 (C.D. Cal. 1987) .......................................................................40
Payne Metal Enters., Ltd. v. McPhee,
382 F.2d 541 (9th Cir. 1967) ..............................................................................44
Philco Corp. v. Admiral Corp.,
199 F. Supp. 797 (D. Del. 1961)...................................................................19, 21
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) ............................................................................26
Schering Corp. v. Geneva Pharms., Inc.,
339 F.3d 1373 (Fed. Cir. 2003) ..........................................................................23
State v. Striggles,
210 N.W. 137 (Iowa, 1926) ..................................................................................5

STATUTES
35 U.S.C. 102 ..................................................................................................passim
35 U.S.C. 103 ..................................................................................................passim
35 U.S.C. 171 .........................................................................................................19
35 U.S.C. 314(a) ....................................................................................................23

OTHER AUTHORITIES
37 C.F.R. 42.100(b) ...............................................................................................13
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M.P.E.P. 1503.02 .......................................................................................15, 19, 21

M.P.E.P. 1504.02 .............................................................................................24, 40
M.P.E.P. 1504.03 ............................................................................................passim
M.P.E.P. 1504.05 ............................................................................................passim

-v-

LIST OF EXHIBITS
Exhibit

Description

Ex. 1001

U.S. Patent No. D503,951

Ex. 1002

File History for U.S. Patent No. D503,951

Ex. 1003

U.S. Patent No. 3,203,391 (Corwin)

Ex. 1004

Fey, Marshall, Slot MachinesA Pictorial History of The First

100 Years, 1989, Liberty Belle Books, 2nd Ed. (Fey).

Ex. 1005

Pollan, Michael, Jackpot!, Channels of Communications, Vol.

6, No. 3 (June 1986) (Pollan)

Ex. 1006

U.S. Patent No. 4,674,748 (Wismer)

Ex. 1007

U.S. Patent No. Des. 176,445 (Claire)

Ex. 1008

U.S. Patent No. 5,823,874 (Adams)

Ex. 1009

U.S. Patent No. 6,855,056 (Inoue)

Ex. 1010

UK Patent Publication GB 2 201 821 A (Pickardt)

Ex. 1011

U.S. Patent No. 6,142,873 ("Weiss")

Ex. 1012

U.S. Patent No. 6,162,121 (Morro)

Ex. 1013

U.S. Patent No. 1,720,946 (Doerr)

Ex. 1014

U.S. Patent No. 500,015 (Lighthipe)

Ex. 1015

Vienna Convention
(Convention)

Ex. 1016

Manual of Uniform Traffic Control Devices, 1971 edition, Part 7

Schools

Ex. 1017

UK Patent Publication GB 2 383 668 A (Short)

Ex. 1018

Declaration of Prof. Steven Visser

Ex. 1019

Curriculum vitae of Prof. Steven Visser

on

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Road

Signs

and

Signals,

1968

Docket No. 034786.0010-US07

I.

MANDATORY NOTICES (37 C.F.R. 42.8(a)(1))

A.

Real Party-In-Interest (37 C.F.R. 42.8(b)(1))

The real parties-in-interest for this petition for Inter Partes Review (IPR) are
Aristocrat Technologies, Inc. (Petitioner); Aristocrat International Pty Ltd.;
Aristocrat Technologies Australia Pty Ltd.; and Aristocrat Leisure Limited.
B.

Related Matters (37 C.F.R. 42.8(b)(2))

U.S. Patent No. D503,951 (the 951 Patent) is currently the subject of
litigation against Aristocrat Technologies, Inc. in the District of Nevada, captioned
IGT v. Aristocrat Technologies, Inc. (Civil Action No. 2:15-cv-00473).
C.

Lead and Backup Counsel (37 C.F.R. 42.8(b)(3))

Lead Counsel

Back-up Counsel

Andrea G. Reister (Reg. No. 36,253)

areister@cov.com
Postal and Hand-Delivery Address:
Covington & Burling LLP
One CityCenter
850 Tenth Street, NW
Washington, DC 20001
T: (202) 662-5141; F: (202) 778-5141

Jay I. Alexander (Reg. No. 32,678)

jalexander@cov.com
Postal and Hand-Delivery Address:
Covington & Burling LLP
One CityCenter
850 Tenth Street, NW
Washington, DC 20001
T: (202) 662-5622; F: (202) 778-5622

D.

Service Information (37 C.F.R. 42.8(b)(4))

Service information for lead and back-up counsel is provided in the

designation of lead and back-up counsel above. A power of attorney is submitted
with this Petition. Counsel for Petitioner consents to service of all documents via
electronic mail.
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Docket No. 034786.0010-US07

II.

FEES (37 C.F.R. 42.103)

The undersigned authorizes the Office to charge $23,000 ($9,000 request fee

and $14,000 post-institution fee) to Deposit Account No. 50-0740 for the fees set
forth in 37 C.F.R. 42.15(a) for this Petition for Inter Partes Review. The
undersigned further authorizes payment for any additional fees that might be due in
connection with this Petition to be charged to this Deposit Account.
III.

REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.

42.104
A.

Grounds for Standing (37 C.F.R. 42.104(a))

Pursuant to 37 C.F.R. 42.104(a), Petitioner certifies that the 951 Patent is

available for inter partes review and that Petitioner is not barred or estopped from
requesting an inter partes review challenging the 951 Patent on the grounds
identified in the present petition.
B.

Claims and Statutory Grounds (37 C.F.R. 42.104(b)(1) & (b)(2))

Petitioner respectfully requests review of the sole claim of the 951 Patent.
The specific prior art and statutory grounds for invalidity of the design claim
presented in this petition are outlined below.
Ground

Statutory Basis

Reference(s)

102(b)

Corwin (Ex. 1003)

II

103(a)

Fey (Ex. 1004)

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Docket No. 034786.0010-US07

III

103(a)
C.

Pollan (Ex. 1005) in view of Wismer (Ex. 1006)

Unpatentability of the Claim (37 C.F.R. 42.104(b)(4))

An explanation of how the Claim of the 951 Patent is unpatentable under the
statutory ground(s) identified above is provided in Section VI, below.
D.

Supporting Evidence (37 C.F.R. 42.104(b)(5))

The exhibit numbers of the evidence supporting the challenge and the
relevance of the evidence to the challenge raised, including identifying specific
evidence supporting the challenge, are provided below in the form of explanatory
text. An Exhibit List with the exhibit numbers and a brief description of each
exhibit is set forth above.
IV.

BACKGROUND AND INTRODUCTION

A.

Gaming Devices and Indicators

The sole claim in the 951 Patent is directed to an ornamental design for a
gaming device having a display with multiple indicators. See Ex. 1001, Claim.
Gaming devices, including slot machines, are not new and have existed for
over a century. See generally Fey, Marshall, Slot MachinesA Pictorial History of
The First 100 Years, 1989, Liberty Belle Books, 2nd Ed. (Ex. 1004). Charles Fey of
San Francisco, California, invented what is widely recognized as the first slot
machine sometime during the last decade of the 19th century. The machine used
three spinning reels to randomly display a combination from among five
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Docket No. 034786.0010-US07

symbolshorseshoes, diamonds, spades, hearts, and a Liberty Bell. See Ex. 1004 at
43. Around the same time, and also in San Francisco, Prussian-born Gustav F.W.
Schultze began inventing slot machines with wheels instead of reels. See Ex. 1004 at
30. Schultze modeled some of his designs after James Lighthipes 1893 Luck
Machine (pictured below), considered to be the first automatic payout wheel-based
slot machine. Id; Ex. 1014. Lighthipes 1893 device had a circular display with an
indicator at the 12:00 position to denote the symbol selected as a result of a wheel
spin. For over a century, slot machines had one or more rotating members like reels
or wheels. See Ex. 1018, 15; see also Ex. 1004 at 30, 36. In 1975, Walt Fraley
developed the first slot machine using a television screen, named Fortune Coin.
See Ex. 1004 at 213. Even today, slot machines use reels or wheels, whether
physical, electronically simulated, or in some cases, a combination of both. See Ex.
1018, 15.
Ex. 1004 at 30

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Docket No. 034786.0010-US07

As explained in the Declaration of Steven Visser, a professor of industrial
design at Purdue University, the gaming industry has a colorful history that has had
meaningful influences on design. Gaming machines were outlawed for a number of
decades in the early 20th century. See Ex. 1018, 16. Game designers quickly
learned how to disguise slot machines as ordinary objects like clocks, radios, or
dispensers, and gaming machine popularity grew rapidly in spite of the legal
obstacles. Id.; see also State v. Striggles, 210 N.W. 137, 138 (Iowa, 1926) (It
appears that in the early part of 1923 there was installed in several places of
business a gum or mint vending machine... [S]uch machine [is] a gambling
device.); State ex rel. Brett v. Four Bell Fruit Gum Slot Machines, 196 Okla. 44, 44
(1945) (the four (4) Bell Fruit Gum Slot Machines seized and involved herein [are]
slot machines.). In fact, camouflaging slot machines as gum dispensers became so
popular that the machines began being referred to as fruit machinesa term still used
today for gaming devices in some countries including the UK. See Ex. 1018, 16.
Contemporary slot machines continue to embody numerous design elements from the
prohibition era. The fruit symbols used on indicia, for instance, owe their origins to
the gum machine days. Id.
While slot machines have evolved over the years, at least one aspect from a
design perspectivenamely, indicatorshas remained unchanged. See id., 17.
Beginning with the earliest slot machines, like the 1893 Lighthipe machine,

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Docket No. 034786.0010-US07

indicators helped users identify the results of their play. See id., 15, 17. An
indicator in this gaming device context is nothing more than an arrow, see id., 17,
and any arrow that can point towards indicia on the slot machines rotating member
(i.e., a reel, drum, or wheel) can serve as an indicator. 1 Id. Arrows on gaming
devices come in many different shapes and sizes, as shown in the following
examples:
Ex. 1004 at 132

Ex. 1004 at 134

Ex. 1008, FIG. 4

Ex. 1004 at 122

Ex. 1007, FIG. 1

Ex. 1012, FIG. 7

Incorporating multiple arrows on gaming devices is also not a recent

phenomenon. See Ex. 1018, 18. Slot machinesregardless of whether they
employ reels or wheelshave featured more than one indicator for decades. Id.
Multiple indicators may be configured in a handful of ways, depending primarily on
1

This petition refers to indicators and arrows in the context of gaming

devices interchangeably.

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Docket No. 034786.0010-US07

whether they point toward a rectangular window or screen (displaying reels, for
instance) or toward a circular disc (i.e., a wheel). Id.
Ex. 1004 at 201

Ex. 1010, FIG. 1

Ex. 1011, FIG. 1

Ex. 1005

Ex. 1004 at 208

Ex. 1013, FIG. 1

As Prof. Visser explains, while arrows could conceivably be designed

artistically, at least certain aspects of the configuration of the arrows are functional
and governed by what the arrow needs to point toward. See Ex. 1018, 18-19. The
images above illustrate this point: Arrows that point toward a rectangular display are
parallel to (or opposite) one another, while arrows that point toward a circular display
are concentrically spaced around the wheel. Id.

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Docket No. 034786.0010-US07

B.

The Irregular Pentagon (House) Shape

The 951 Patent claims pentagonally shaped indicators. Because the angles of
the indicator pentagons are not all equal (i.e., they are not each 108), the indicators
are irregular pentagons. See id., 19.
Using this kind of irregular pentagon as an arrow or indicator is not new. For
example, as vehicle drivers would recognize, direction signs are frequently designed
in this shape. Id. Indeed, the Vienna Convention on Road Signs and Signals
officially adopted the irregular pentagon shape in 1968 as the sign for showing the
direction of a place. Ex. 1015 at 52, 102. Irregular pentagons are also used as
signs to indicate the direction and distance of the nearest emergency exits. Id. at
54, 105. The irregular pentagon is also familiar as the shape of the commonly used
SCHOOL AHEAD road sign. See Ex. 1018, 19-20. In fact, since at least 1971,
the Federal Highway Administration has adopted this sign as the official School
Advance sign. See Manual of Traffic Signals, 1971 edition, Part 7 Schools, 7B-9
(The School Advance sign is intended for use in advance of locations where school
buildings or grounds are adjacent to the highway. (emphasis added)) (Ex. 1016).
The pentagonal arrow claimed in the 951 Patent is shaped like a traditional
house with a pointed roof.

See Ex. 1018, 20.

As Prof. Visser explains,

Monopoly, the classic board-game, features houses and hotels of similar

pentagonal shape. Id. The indicator in the 951 Patent as well as several common

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Docket No. 034786.0010-US07

articles featuring the irregular pentagon (house) shape are pictured below.
Ex. 1001, FIG. 8

Ex. 1015 at 102

Ex. 1015 at 105

Ex. 1018, 20

Ex. 1016 at 327

Ex. 1018, 20

Given that use of the irregular pentagon as an arrow is commonplace, see Ex.
1018, 19, and that most arrows can be used as indicators on gaming devices, it is
not surprising that many gaming devices feature indicators shaped as an irregular
pentagon. See Ex. 1018, 19. Below are a few examples:
Ex. 1004 at 222

Ex. 1006, FIG. 1

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Ex. 1009, FIG. 4

Docket No. 034786.0010-US07

V.

SUMMARY OF THE 951 PATENT

A.

Overview of the 951 Patent

The 951 Patent (Ex. 1001) is entitled Gaming Device Having a Display with
Multiple Indicators.

The patent issued on April 12, 2005, from U.S. Patent

Application No. 29/187,659 (the 659 Application), filed August 5, 2003. Thus,
publications made before August 5, 2002, are prior art under pre-AIA 35 U.S.C.
102(b) with respect to the 951 Patent. Further, U.S. patents that issued from
applications made in the United States before August 5, 2003, are prior art under preAIA 35 U.S.C. 102(e) with respect to the 951 Patent.
The Claim of the 951 Patent recites, The ornamental design for a gaming
device having a display with multiple indicators, as shown and described herein.
See Ex. 1001, Claim. The drawing figures and description of the 951 Patent make
clear that no part of the gaming device, including the display toward which the
indicators point, is actually claimed. Rather, only the ornamental design of the
indicators is claimed. See Ex. 1001, Figs. 1 19; see also Ex. 1001 description for
FIG. 3 ([T]hat fragmentary portion of the gaming device shown in phantom is not
part of the design sought to be patented and is provided for environmental purposes
only.).
The patent contains nineteen drawing figures disclosing sixteen embodiments
of the claimed design. Embodiment 1 is disclosed in four figures (FIGS. 1 4),

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Docket No. 034786.0010-US07

while embodiments 2 16 are represented in their entirety by one figure each (FIGS.
5 19). None of the disclosed embodiments borrows or relies upon design elements
from another embodiment.2
The 659 Application was originally filed with 26 embodiments disclosed in
29 drawing figures. See 659 Application (Ex. 1002 at 62-66). In setting forth a
Restriction Requirement, the Examiner categorized the embodiments into three
groups, stating that embodiments disclosed within each group have overall
appearances that are basically the same; and that the differences between them are
considered minor and patentably indistinct, or are shown to be obvious in view [of]
analogous prior cited art and are considered by the examiner to be obvious
variations of one another with the group. See 659 Application File History, Office
Action mailed on September 10, 2004 (Ex. 1002 at 22-24). Further, the Examiner
deemed that embodiments within one group differed from embodiments in other
2

This is evident from Patent Owners omission of a statement to that effect.

See U.S. Patent & Trademark Office, Manual of Patent Examining Procedure
1504.05 (9th ed. rev. Nov. 2015) (M.P.E.P.) (in the absence of such a statement
in the specification of an application as filed, the disclosure of one embodiment will
normally not be permitted to provide antecedent basis for any written or visual
amendment to the disclosure of other embodiments.).

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Docket No. 034786.0010-US07

groups such that overall appearances [] are not basically the same, or if they are
basically the same, the differences are not minor and patentably indistinct or are not
shown to be obvious in view of analogous prior art. Id. The Examiner directed the
Applicant to elect from among the three groups, and also offered an opportunity to
traverse the restriction requirement and present evidence showing the three groups
to be obvious variations of one another. Id.
In response, Applicant elected Group 1, embodiments 1 16, without traverse.
See 659 Application File History, Response to Restriction Requirement dated
September 28, 2004 (Ex. 1002 at 17-19). The Examiner then cancelled embodiments
17 26 (FIGS. 20 29) and allowed the application, resulting in the grant of the 951
Patent with only the first 16 of the originally filed embodiments.
B.

Person of Ordinary Skill in the Art

A person of ordinary skill in the art of the 951 Patent at the time of the alleged
invention (POSA) would have had at least a degree in industrial design or
mechanical engineering, or related field, with one to two years of experience as a
designer of devices that include displays and indicators. Alternatively, the POSA
would have had five to ten years of experience in designing the ornamental
appearance of devices that include displays and indicators. Ex. 1018, 36.
C.

Claim Construction (37 C.F.R. 42.104(b)(3))

1.

Legal standard for claim construction of a design patent

A claim subject to IPR is given its broadest reasonable construction in light of

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Docket No. 034786.0010-US07

the specification of the patent in which it appears (BRC). 37 C.F.R. 42.100(b).
For design patents, it is settled that a design is represented better by an illustration
than a description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.
Cir. 2008) (en banc). The scope of a design patent is defined by the solid lines (as
opposed to broken lines) depicted in the figures, in conjunction with their
descriptions.

Id. at 680.

Although a design patent claim is not construed by

providing a detailed verbal description, it may be helpful to point out various

features of the claimed design as they relate to the prior art. Id. at 67980; cf.
High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 131415 (Fed. Cir.
2013) (remanding to district court, in part, for a verbal description of the claimed
design to evoke a visual image consonant with that design.).
While a design patent may contain multiple embodiments, all embodiments
must involve the same invention, and may differ only in ways that do not make them
patentably distinct.

See M.P.E.P. 1504.05 (Embodiments that are patentably

distinct over one another do not constitute a single inventive concept and thus may
not be included in the same design application.) (citations omitted).

Each

embodiment must be fully disclosed using figures, and if the disclosure of any
embodiment relies on the disclosure of another embodiment for completeness, the
differences between the embodiments must be identified either in the figure
descriptions or by way of a special description in the specification of the application

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Docket No. 034786.0010-US07

as filed. Id. The specification should state that an embodiment incorporate[s] the
disclosure of [another] embodiment, [and] in the absence of such a statement in the
specification of an application as filed, the disclosure of one embodiment will
normally not be permitted to provide antecedent basis for any written or visual
amendment to the disclosure of other embodiments. Id.
Applying the above principles, Petitioner sets forth below a discussion of the
elements of the Claim of the 951 Patent, followed by the broadest reasonable
construction of the Claim.3
2.

Design elements
a)

Multiple house shaped indicators

The 951 Patent claims [t]he ornamental design for a gaming device having a
display with multiple indicators, as shown and described herein. See Ex. 1001,
Claim. The patent affirmatively disclaims the gaming device shown in phantom.
Id. at Description for FIGS. 1-19. It is apparent in the drawing figures of the 951
Patent that nothing but indicators is shown in solid lines. See Ex. 1018, 21, 40.
Further, the description makes clear that the portion of the figures shown in broken
lines is not part of the design sought to be patented and is provided for
3

Because claim terms may be construed differently according to different

standards in litigation and in IPR proceedings, Petitioner reserves its right to present
different constructions depending on the applicable standard and proceeding.

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Docket No. 034786.0010-US07

environmental purposes only. Ex. 1001 at Description for FIGS. 1-19.
As Prof. Visser explains, the indicators appear to have a consistent house
shape in all of the embodiments of the patent. Ex. 1018, 41. The general
proportions of the faade of the indicator are those of a square, but the height of the
walls is approximately half the width of the foundation. See id., 25. The walls
and foundation appear perpendicular to each other, and the foundation appears
faintly arced. Id. Finally, the pitch of the roof is approximately 40 off of
horizontal. Id. The use of straight line shading as opposed to oblique line shading
means that the indicators of the 951 Patent are opaque and that the claimed design
does not include any highly polished or reflective surfaces, such as a mirror. Id.,
35; see also M.P.E.P. 1503.02 (II).
Ex. 1001, FIG. 8

b)

Orientation, angles, and number of indicators

The three attributes of orientation, angle, and number of indicators differ in the
various embodiments.

The 951 Patent claims a number of orientations from

pointing downward, to pointing upward, and several angles in between. See Ex.
1018, 34. The angles of the indicators are rotated in 12 different configurations. Id,
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Docket No. 034786.0010-US07

24. While some embodiments in the 951 Patent have two indicators, others have
three. Id, 29.
Ex. 1001, FIG. 13

Ex. 1001, FIG. 3

Ex. 1001, FIG. 10

Because all of the embodiments of the 951 Patent must involve the same
claimed invention, the differences in orientation, angle, and number of indicators are
either not part of the claimed design or they are insignificant such that the
embodiments are obvious variations of one another. M.P.E.P. 1504.05. It therefore
follows that the BRC of the Claim does not require any specific angle, orientation, or
number of indicators.
c)

Spacing and angular relationship between the

indicators

In the 951 Patent, the spacing and angular relationships between indicators
also vary in the embodiments. As to spacing between indicators: some embodiments
have arrows closer together while others have them farther apart. See Ex. 1018, 31;
compare, e.g., Ex. 1001, FIG. 13 with Ex. 1001, FIG. 10. As to angular relationship
between indicators: some embodiments have arrows at an angle of approximately
33 relative to each other, while other embodiments have the arrows at an angle of
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Docket No. 034786.0010-US07

approximately 66 relative to each other. Id, 33. Because these embodiments are
obvious variants of one another, it follows that the BRC of the Claim does not require
any specific differences in spacing and angular relationship.
Moreover, the spacing and angular relationship of the indicators are functional
elements, and are dictated by what the indicators need to point to, in or on the display
of the gaming device. For example, placing arrows concentrically around a circular
display (as the 951 Patent does) is an ordinary way to have arrows point at items on
the display, and placing arrows next to each other is an ordinary way to have arrows
point at items on a rectangular display. Even if a curved placement of arrows around
a rectangular screen (such as is illustrated below on the left) were argued to be
motivated in part by aesthetics, placing arrows such that they point directly toward
the screen (such as is illustrated below on the right) is common sense and functional.
See Ex. 1018, 30, 43.
Ex. 1017, FIG. 1

Ex. 1004 at 201

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Docket No. 034786.0010-US07

Ex. 1017, FIG. 1 (enlarged)

Ex. 1004 at 201 (enlarged

and rotated)

The common-sense way to place arrows that point toward a circular screen
would be to place them concentrically around the circle and pointing toward the
center, the way the 951 Patent discloses or, for instance, Pickardt (Ex. 1010)
discloses. Failure of the arrows to point toward the center would prevent them from
lining up properly with the items they need to point to (i.e., in the case of Pickardt,
they would fail to point to just one slice of the pie). See Ex. 1018, 43.
Ex. 1010, FIG. 1

Enlarged

In view of the foregoing, the spacing and angular relationship between the
arrows of the 951 Patent are functional, and cannot be claimed design elements. See

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Docket No. 034786.0010-US07

35 U.S.C. 171 (granting protection for any new, original, and ornamental design
for an article of manufacture (emphasis added)); Lee v. Dayton-Hudson Corp., 838
F.2d 1186, 1188 (Fed. Cir. 1988) (Design patents do not and cannot include claims
to the structural or functional aspects of the article.); M.P.E.P. 1504.03.
d)

Specific thickness or depth of the indicators

The 951 Patent also cannot be construed under the BRC as requiring a
specific thickness or depth to the indicators. Although some embodiments disclose
noticeable depth, others show only a very slight three-dimensionality, if any. See Ex.
1018, 26-28, 44-45. Embodiment 3 disclosed in FIG. 6 is an example of the
former; and FIG. 19, which provides the only view of embodiment 16, is an example
of the latter. Both are pictured below. It is impermissible to extrapolate that the
indicators have a certain depth but that such depth is hidden from view, given the
perspective. See M.P.E.P. 1503.02 (As the drawing or photograph constitutes the
entire visual disclosure of the claim, it is of utmost importance that the drawing or
photograph be clear and complete, and that nothing regarding the design sought to be
patented is left to conjecture.); see also Philco Corp. v. Admiral Corp., 199 F. Supp.
797, 801 (D. Del. 1961) (A design patent must disclose so fully, clearly and with
such certainty as to enable those skilled in the art to make the article without being
forced to resort to conjecture.).

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Docket No. 034786.0010-US07

Ex. 1001, FIG. 6

Ex. 1001, FIG. 19

Embodiments 3 and 7 are another example. Despite FIG. 6 and FIG. 10 being
front perspective views, the indicators therein differ significantly in thickness:
Ex. 1001, FIG. 6

Ex. 1001, FIG. 10

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Docket No. 034786.0010-US07

As Prof. Visser explains, the horizon line appears to be near the center of the circular
display with a vanishing point on the near right side. Ex. 1018, 27. Therefore, if
the two embodiments had similar depth, the drawings would have been mirror
images of each other. Id. Yet, indicator thickness in embodiment 3 in FIG. 6 is
almost double the indicator thickness in embodiment 7 in FIG. 10.
If the claimed design for indicators in the 951 Patent required a specific depth,
the patent should have clearly taught the degree of depth. Philco Corp., 199 F. Supp.
at 801. The 951 Patent fails to present any side views of the indicators, and also
fails to disclose a sufficient number of views to constitute a complete disclosure of
the appearance of the design of embodiments 2 through 16 (FIGS. 5 19).
M.P.E.P. 1503.02. Each of these fifteen embodiments is disclosed in one figure
each, and embodiments that suggest that the indicators have depth (e.g., embodiment
3 disclosed in FIG. 6) are not permitted to provide antecedent basis for any written
or visual amendment to the disclosure of [] embodiments that barely show any depth
(e.g., embodiment 16 disclosed in FIG. 19). See M.P.E.P. 1504.05. If a specific
thickness were an integral part of the design of the 951 Patent, failure to portray
such thickness would be fatal to the patent, regardless of its intended scope.
Philco Corp., 199 F. Supp. at 802.
Furthermore, the specific thickness of the indicators is hidden from sight. See,
e.g., Ex. 1001, FIG. 2. As a matter of law, features that are hidden should not be

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Docket No. 034786.0010-US07

given any patentable weight. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d
1308, 1313 (Fed. Cir. 2001) (generally concealed features are not proper bases for
design patent protection because their appearance cannot be a matter of concern);
see also M.P.E.P. 1504.03.
Ex. 1001, FIG. 2

Enlarged view of wheel

Therefore, a POSA might understand that the indicators in the 951 Patent
have some three-dimensionality and dip down (i.e., increase in thickness) at the
roof as compared with the base (see Ex. 1018, 44), but, as Prof. Visser points out,
under the BRC standard, a POSA would not understand the claimed design as
requiring a specific depth or thickness because the patent fails to teach a specific

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Docket No. 034786.0010-US07

depth or thickness. See Ex. 1018, 44-45 .
3.

BRC of the design claimed in the 951 Patent

In view of the foregoing, the 951 Patent should be construed for purposes of
this IPR proceeding as claiming at least two opaque house-shaped arrows, as
depicted in FIGS. 119, that are three-dimensional and spaced concentrically around
a circle. The patent does not claim any specific orientation, angle, or number of
arrows, or any specific spacing or angular relationship between arrows. Finally,
although the arrows dip down, i.e., increase in thickness toward the roof of the
house, no specific depth or thickness to the arrows is claimed.
VI.

THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER

WILL PREVAIL WITH RESPECT TO THE CLAIM OF THE 951
PATENT
The subject matter of the Claim of the 951 Patent is disclosed and taught in

the prior art as explained below.

As set forth in VI.C, the references and

combinations relied on in Grounds I-III anticipate or render obvious the Claim under
pre-AIA 35 U.S.C. 102-103 and provide a reasonable likelihood that the Petitioner
will prevail on at least one claim. 35 U.S.C. 314(a).
A.

Legal Standards
1.

Anticipation

A patent is invalid for anticipation if a single prior art reference discloses

each and every limitation of the claimed invention. Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Prior art under 102(b)
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Docket No. 034786.0010-US07

includes subject matter that was patented or described in a printed publication in this
or a foreign country more than one year prior to the date of the application for
patent in the United States. 35 U.S.C. 102(b). For anticipation, it is immaterial
whether the prior art references belong to an analogous field. H. K. Porter Co. v.
Black & Decker Mfg. Co., No. 71 C 2859, 1974 WL 20209, at *20 (N.D. Ill. July 17,
1974), aff'd, 518 F.2d 1177 (7th Cir. 1975) (prior art that taught the design for a
kitchen appliance anticipated the design for a lawn tool); see also Application of
Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956) (so far as anticipation by a single prior
art disclosure is concerned, there can be no question as to nonanalogous art in design
cases.).
The test for determining invalidity of a design patent under 35 U.S.C. 102 is
the ordinary observer test. Intl Seaway Trading Corp. v. Walgreens Corp., 589
F.3d 1233, 1240 (Fed. Cir. 2009). This test does not require that the claimed design
and the prior art be from analogous arts when evaluating novelty.

M.P.E.P.

1504.02. In an invalidity analysis, the designs to be compared are the design as

claimed and the prior art reference. Id. (citing Egyptian Goddess, 543 F.3d at 676).
Applying the ordinary observer test, a court must find a design patent invalid if, in
the eye of an ordinary observer, giving such attention as a purchaser usually gives,
two designs are substantially the same, if the resemblance is such as to deceive such
an observer, inducing him to purchase one supposing it to be the other. Gorham

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Docket No. 034786.0010-US07

Mfg. Co. v. White, 81 U.S. 511, 528 (1871); Door-Master Corp. v. Yorktowne, 256
F.3d 1308, 1313 (Fed. Cir. 2001).

This comparison takes into account only

significant differences between two designs, and minor differences cannot prevent a
finding of anticipation. Intl Seaway, 589 F.3d at 1243; Door-Master, 256 F.3d at
1312-13. It is the overall visual effect of the designs in question that is used to
determine whether the claimed design and prior art are substantially the same to an
ordinary observer. See Crocs, Inc. v. Intl Trade Commn, 598 F.3d 1294, 1303 (Fed.
Cir. 2010).
2.

Obviousness

A patent is invalid as obvious if the differences between the subject matter

sought to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. 35 U.S.C. 103(a).
Section 103 applies to design patents in much the same manner as it applies to
utility patents. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re Borden,
90 F.3d 1570, 1574 (Fed. Cir. 1996) (Design patents are subject to the same
conditions on patentability as utility patents, including the nonobviousness
requirement of 35 U.S.C. 103.).
The obviousness inquiry for a design patent involves three steps. First, a
primary reference is to be identified. Durling v. Spectrum Furniture Co., 101 F.3d

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Docket No. 034786.0010-US07

100, 103 (Fed. Cir. 1996). To do this, the PTAB must (1) discern the correct visual
impression created by the patented design as a whole; and (2) determine whether
there is a single reference that creates basically the same visual impression. Id.
The primary reference is, therefore, a something in existence, the design
characteristics of which are basically the same as the claimed design. In re Rosen,
673 F.2d 388, 391 (C.C.P.A. 1982).
Second, once the primary reference (or the Rosen reference) is found, other
references may be used to modify it to create a design that has the same overall visual
appearance as the claimed design. See In re Harvey, 12 F.3d 1061, 1063 (Fed. Cir.
1993). In order for secondary references to be considered, there must be some
suggestion in the prior art to modify the basic design with features from the
secondary references. M.P.E.P. 1504.03 (citing In re Borden, 90 F.3d 1570, 1572
(Fed. Cir. 1996)). It is appropriate to use a secondary reference to modify the
primary reference if they are so related that the appearance of certain ornamental
features in one would suggest the application of those features to the other. MRC
Innovations, Inc. v. Hunter Mfg., 747 F.3d 1326, 1334 (Fed. Cir. 2014) (finding that
similarity in appearance is sufficient to suggest that one should apply certain features
to the other design). The features of the secondary reference are thus combined with
the Rosen reference to create a hypothetical third reference. Id. at 133435.
In the third and final step, the hypothetical reference is compared with the

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Docket No. 034786.0010-US07

claimed design to determine whether the design is obvious. MRC Innovations, 747
F.3d at 1331 (affirming the lower courts finding of a design patent to be invalid as
obvious in light of the prior art). The hypothetical reference may also be arrived at
by modify[ing] a single prior art reference rather than combining primary and
secondary references. Intl Seaway, 589 F.3d at 1240. A patented design is obvious
(i) if the claimed design as a whole is substantially the same, or has the same overall
visual appearance, as the hypothetical reference to an ordinary observer, id., or (ii) if
a designer of ordinary skill who designs articles of the type involved would find
the claimed design obvious over the hypothetical reference. Apple, Inc. v. Samsung
Elecs. Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012). The hypothetical reference
need not be identical to [the] patented design since there may be no motivation to
change the prior art to achieve such identity. Intl Seaway, 589 F.3d at 1240.
Instead, it is similarity of the overall design that matters; de minimis differences are
inconsequential. See MRC Innovations, 747 F.3d at 1335.
B.

Overview of the Prior Art

1.

U.S. Patent No. 3,203,391 (Corwin) (Ex. 1003)

Corwin, a United States Patent titled Air Navigation Instrument, was

issued on August 31, 1965. It therefore qualifies as prior art under pre-AIA 35
U.S.C. 102(b) with respect to the 951 Patent. Corwin discloses an aviation
instrument that, among other things, measures time. The instrument illustrated in

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Docket No. 034786.0010-US07

FIG. 1 of Corwin contains a clock centerpiece (with other measurements around it)
and two house-shaped indicators spaced concentrically on the outer rim of the
instrument on the left side.
Ex. 1003, FIG. 1

Indicators depicted (Enlarged)

Corwin was not considered by the USPTO during prosecution of the 659
Application.
2.

Fey, Marshall, Slot MachinesA Pictorial History of The

First 100 Years, 1989, Liberty Belle Books, 2nd Ed. (Fey)
(Ex. 1004).

Fey is a publication from 1989, and is therefore prior art under pre-AIA 35
U.S.C. 102(b) with respect to the 951 Patent. Fey traces the evolution of slot
machines since they were invented in the 1890s. It discloses a slot machine called
Double Bonus by Takasago Distribution Co. that contains two upward-pointing
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Docket No. 034786.0010-US07

house-shaped indicators spaced at a distance.
Ex. 1004 at 222

Indicators depicted (Enlarged)

While a single page (page 13) of a later edition of this book was presented to
the USPTO, the sections of the book Petitioner is relying upon here were not
considered by the Examiner during prosecution of the 659 Application.

In

particular, the USPTO did not consider the disclosure regarding Double Bonus
during prosecution.
3.

Pollan, Michael, Jackpot!, Channels of Communications,

Vol. 6, No. 3 (June 1986) (Pollan) (Ex. 1005)

Pollan is an article in Channels Magazine published in June 1986. It therefore

qualifies as prior art under pre-AIA 35 U.S.C. 102(b) with respect to the 951 Patent.
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Docket No. 034786.0010-US07

Pollan describes the popular game show on television, Wheel of Fortune, and
includes photographs of the gaming device used on the show. One photograph
depicts three players standing by the device with three large indicators in red, yellow,
and blue.
Ex. 1005

Pollan was not considered by the USPTO during prosecution of the 659
Application.
4.

U.S. Patent No. 4,674,748 (Wismer) (Ex. 1006)

Wismer, a United States patent titled Method and Means for Randomly
Selecting a Plurality of Groups of Numbers, was issued on June 23, 1987. It
therefore qualifies as prior art under pre-AIA 35 U.S.C. 102(b) with respect to
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Docket No. 034786.0010-US07

the 951 Patent. Wismer discloses a gaming device, useful for selecting numbers
in Lotto games, with three house-shaped indicator marks. Wismer does not teach
use of all three marks together; rather, it teaches using either the indicator mark or
the alternative indicator marks. Ex. 1006 at 4:60. Wismer teaches that the base
disc that bears the indicator marksincluding the two alternative indicator marks
rotates. Id. at 4:45.
Ex. 1006, FIG. 1

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Docket No. 034786.0010-US07

Indicators depicted (Enlarged, callout lines & numbers hidden)

Wismer was not considered by the USPTO during prosecution of the 659
Application.
C.

Detailed Explanation of the Grounds for Unpatentability

The 951 Patent is anticipated under pre-AIA 35 U.S.C. 102 and obvious
under pre-AIA 35 U.S.C. 103. The references and grounds cited are not cumulative
to or redundant over one another: Ground I advances an invalidity argument based on
anticipation under 35 U.S.C. 102(b). Ground II advances an invalidity argument
based on obviousness under 35 U.S.C. 103, relying on prior art different from that
in Ground I and on Petitioners claim construction position that the BRC of the 951
Patent claim does not require a specific spacing and angular relationship between
the indicators, or a specific thickness or depth to the indicators.

Ground III

advances an obviousness argument based on prior art different from that in the two
preceding grounds and that discloses any specific spacing, angular relationship, or
thickness that the BRC of the Claim may require. This petition demonstrates a

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Docket No. 034786.0010-US07

reasonable likelihood that Petitioner will prevail on all grounds, separately.
Petitioner has focused the discussion herein on certain embodiments of the
951 Patent claim (specifically, embodiment 14 in Ground I, embodiment 8 in
Ground II and embodiment 1 in Ground III), with the understanding, consistent with
the law, that a determination that one embodiment of the 951 Patent claim is
unpatentable would render the entire 951 Patent claim unpatentable. See, e.g., In re
Klein by Klein, 987 F.2d 1569, 1570 (Fed. Cir. 1993) ([t]he board correctly stated
that the single claim covers plural alternative embodiments and that the 103
rejection is proper if the prior art demonstrates the obviousness of any one of them).
Petitioners arguments below are supported by the analysis presented in the
accompanying Declaration of Prof. Steven Visser, who has taught and worked in the
field of industrial design for nearly 30 years.
1.

Ground I: The Claim Is Invalid Under 35 U.S.C. 102(b) As

Anticipated by Corwin

Corwin was issued in 1965, and is therefore prior art under pre-AIA 35 U.S.C.
102(b) with respect to the 951 Patent. As discussed above, Corwin was not
considered by the USPTO during prosecution of the 659 Application. Corwin
discloses an instrument with multiple indicators having an overall visual
appearance that is substantially the same as embodiment 14 depicted in FIG. 17 of
the 951 Patent. Therefore, Corwin anticipates the claim of the 951 Patent. See
Crocs, Inc., 598 F.3d at 1303.
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Docket No. 034786.0010-US07

As Prof. Visser explains, FIG. 1 in Corwin discloses an instrument consisting
of a clock at the center (and other measurements around it) with a pair of rotatable
pentagonal indicators on the left. See Ex. 1018, 51; see also Ex. 1003 at 2:30
(Each indicating means includes a pointer support 58 which rides on the rim.).
The indicators are also shown in dashed lines, rotated to the opposite side of the
display. See Ex. 1018, 51; Ex. 1003 at FIG. 1.
Indicators depicted (enlarged) Ex.
1003, FIG. 1

Hypothetical position of
indicators (depicted in dashed
lines) (enlarged) Ex. 1003, FIG. 1

Thus, like embodiments 10 and 14 of the 951 Patent (FIGS. 13 and 17,
respectively), Corwin shows two indicators concentrically located around a circular

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Docket No. 034786.0010-US07

display that has a raised rim around the outer portion of the display. See Ex. 1018,
53. FIGS. 13 and 17 of the 951 Patent are shown below.
Ex. 1001, FIG. 13

Ex. 1001, FIG. 17

Prof. Visser compares Corwin with embodiment 14 (FIG. 17) of the 951
Patent. Ex. 1018, 53. As he explains, though FIG. 1 of Corwin is a true front view
and FIG. 17 of the 951 Patent is a front perspective view (Ex. 1018, 56), a person
of ordinary skill would understand that there is no meaningful distortion due to
perspective foreshortening to the shape of the indicators in FIG. 17 of the 951
Patent, and that FIG. 17 may be accurately compared with FIG. 1 of Corwin. In the
illustration by Prof. Visser reproduced below, the front surface of the circular display
in FIG. 17 of the 951 Patent follows a perfect circle as shown in green, and the two
claimed indicators are shown in blue.

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Docket No. 034786.0010-US07

Ex. 1018, 56

Upon scaling the indicators in FIG. 1 of Corwin to match the same overall size
as the 951 Patent, and leaving the relative proportions, angles and spacing
unchanged, it is possible to place the Corwin indicators on the unclaimed display
portion in the 951 Patent. See Ex. 1018, 54-55. Doing so assists in comparing
the indicators disclosed in Corwin, the prior art, with the indicators claimed in the
951 Patent.

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Docket No. 034786.0010-US07

Ex. 1018, 54

It is apparent from the image above, showing indicators disclosed in the prior
art (Corwin, on the left) and indicators in the 951 Patent (on the right), that the prior
art design and the claimed design share numerous common visual elements. For
example:

Both have two indicators;

Both have indicators spaced apart from each other;

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Docket No. 034786.0010-US07

Both have irregular pentagon (house) shaped indicators;

Both have indicators around a circular display;

Both have indicators that are concentric with the display;

The length of the indicator foundation relative to the indicator height

is similar in both;

The height of the indicator walls is similar in both (namely, the height
is nearly half the width of the foundation);

Both have indicators with parallel walls, perpendicular to the

foundation;

Both have three-dimensional indicators;

Both have indicators that are opaque;

Both have indicators with angular change of arrow direction; and

Both have indicators that dip down at the roof.

Ex. 1018, 57.

As Prof. Visser points out, a close scrutiny reveals certain

differences between the claimed design and the design of Corwin.

Corwins

indicators dip down at the roof by bending toward the screen, rather than becoming
thicker as in the 951 Patent. See id., 58. Also, Corwins indicators have a flat base
while the base of the indicators in the 951 Patent appears to be faintly arced. Id.
Finally, Corwins indicators are slightly smaller relative to the spacing, as compared
with the claimed design. Id.
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Docket No. 034786.0010-US07

Under the BRC of the claim, these differences are too minor [to] prevent a
finding of anticipation. Intl Seaway, 589 F.3d at 1243. As Prof. Visser explains, a
side-by-side comparison reveals that the shape and proportions of Corwins
indicators are practically identical to the claimed design. The Corwin indicator is
shown below on the left, the indicator in the 951 Patent is shown on the right, and
the two are overlaid on each other in the middle:
Ex. 1018, 59

Given the identity of shape and of proportions, an ordinary observer wishing

to purchase a gaming device, giving such attention as a purchaser usually gives,
would likely not notice these differencesand would find that the design disclosed
in Corwin and the claimed design are substantially the same. Gorham Mfg. Co. v.
White, 81 U.S. 511, 528 (1871); Door-Master Corp. v. Yorktowne, 256 F.3d 1308,
1313 (Fed. Cir. 2001); see also Ex. 1018, 59. As Prof. Visser explains, the
resemblance is sufficient to deceive the ordinary observer, inducing him to
purchase a gaming device with indicators from the prior art supposing it to be a
gaming device with indicators claimed in the 951 Patent. Gorham Mfg. Co., 81 U.S.
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Docket No. 034786.0010-US07

at 528; Door-Master Corp., 256 F.3d at 1313; see also Ex. 1018, 59. Further, the
ordinary observer would find that the overall visual effect of the designs is
substantially the same. Ex. 1018, 59; see also Crocs, Inc., 598 at 1303.
Petitioner notes that Corwin discloses an aviation instrument that includes a
clock. But, as Prof. Visser explains, designers have historically looked at objects
such as clocks and radios to design gaming devices. Ex. 1018, 16. In any event,
however, even if Corwin is considered not to be in the same field as the 951 Patent,
[a]nticipation does not require that the claimed design and the prior art be from
analogous arts. M.P.E.P. 1504.02; see also Neo-Art Inc. v. Hawkeye Distilled
Prods. Co., 654 F. Supp. 90, 94 (C.D. Cal. 1987) (The Court is aware of no
casein which a court has held that simply designing one product to look like
another, the design of which has long been in the public domain, entitles the designer
to patent protection.).
In view of the foregoing, the Claim of the 951 Patent is anticipated by Corwin
under 35 U.S.C. 102(b). Petitioner has established a reasonable likelihood that it
will prevail on this ground.
2.

Ground II: The Claim Is Invalid Under 35 U.S.C. 103 As

Obvious Over Fey

Fey is a publication from 1989, and is therefore prior art under pre-AIA 35
U.S.C. 102(b) with respect to the 951 Patent. As discussed above, the portion of
Fey relied on for this ground was not considered by the USPTO during prosecution
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Docket No. 034786.0010-US07

of the 659 Application. Fey discloses a gaming device called Double Bonus
featuring a display with multiple indicators. As Prof. Visser explains, Double
Bonus is a reel style slot machine with a pair of indicators spaced apart on the
upper display area. Ex. 1018, 60. The two indicators point upward toward a
rectangular display area. Id. The shape of the indicators is strikingly similar to
that shown in the 951 Patent, and the indicators also have an illusion of shallow
thickness. Id. As discussed below, the overall design of Feys indicators is such that
embodiment 8 of the 951 Patent would have been obvious to a designer of ordinary
skill who designs devices with displays and indicators.
Images of Double Bonus and its pair of house-shaped indicators are
reproduced above, see supra VI.B.2, and below is a side-by-side comparison of the
indicators in embodiment 8 of the 951 Patent (with disclaimed environment
removed, and rotated clockwise about 15) and Feys indicators featured on the
Double Bonus game (enlarged):
Ex. 1018, 62

Ex. 1004 at 222

Prof. Visser compares the design in Fey with embodiments 4 and 8 of the 951
Patent (FIGS. 7 and 11). Ex. 1018, 61. To facilitate this comparison, Prof. Visser
has combined the Fey design and drawings from the 951 Patent into single

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Docket No. 034786.0010-US07

combined images, arranging the gaming devices in both to be of similar size. The
combined images are reproduced below.
Ex. 1018, 61

Ex. 1018, 61

Below is side-by-side comparison of Feys indicators (on the left) and those in
the 951 Patent (on the right). The two are overlaid on each other in the middle:
Ex. 1018, 63

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Docket No. 034786.0010-US07

It is apparent from the images above that the prior art design and the claimed
design share numerous common visual elements, as follows:

Both have two indicators;

Both have indicators spaced apart from each other;

Both have irregular pentagon (house) shaped indicators;

Both have indicators about a display;

The length of the indicator foundation relative to the indicator height

is similar in both;

The height of the indicator walls is similar in both (namely, the height
is nearly half the width of the foundation);

Both have indicators with parallel walls, perpendicular to the

foundation;

Both have indicators that have some three-dimensionality (Double

Bonus uses drop shadows to indicate visual thickness); and

Both have indicators that are opaque.

Ex. 1018, 63. The visual impression of Feys indicators is basically the same
as the claimed design. Durling, 101 F.3d at 103. Fey, therefore, qualifies as a
suitable primary reference for an obviousness analysis. Ex. 1018, 63.
Prof. Visser notes that under close scrutiny, Feys indicators have certain
differences from embodiment 8 of the 951 Patent. See id., 64. As explained
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Docket No. 034786.0010-US07

below, however, none of these differences renders the claimed design non-obvious.
a)

Spacing and angular relationship between indicators

Fey does not disclose indicators concentric with a circular display; instead, the
indicators in Fey are parallel to each other. Id. Feys indicators are also spaced more
closely together than are the 951 Patents indicators. Id. But, these differences in
the spacing and angular relationship between the indicators do not make the claimed
design non-obvious. First, as discussed above in the context of claim construction,
the spacing and angular relationship between the indicators in the 951 Patent vary
between the various embodiments. See supra V.C.2(c). Necessarily, therefore,
variations in spacing and angular relationship are obvious. See M.P.E.P. 1504.05
(The obviousness standard under 35 U.S.C. 103 must be applied in determining
whether multiple embodiments may be retained in a single application).
Second, as also discussed above, the positioning of the indicators in the 951
Patent is attributable to the indicators pointing to a circular displayrather than to a
rectangular display (as in Fey). See Ex. 1018, 64. The spacing and angular
relationship between the indicators in the 951 Patent are therefore functional features
that cannot be relied upon to support [the 951 Patents] patentability. M.P.E.P.
1504.03. The display itself is not claimed in the 951 Patent, and an element that
is no more than a functional by-product of the disclaimed display does not justify
patentability over the prior art. See Payne Metal Enters., Ltd. v. McPhee, 382 F.2d

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541, 546 (9th Cir. 1967) (a feature that was dictated primarily by the functional
requirements could not prevent a finding of invalidity where the resulting visual
effect was only an inadvertent byproduct and any pleasing aesthetic effect [] a minor
windfall).
Third, even assuming the positioning of the indicators is ornamental and not
functional, it would be obvious to use Feys indicators around a circular rather than a
rectangular display. As discussed above, both circular and rectangular displays are
commonly used in gaming devices, and an indicator would be used in both types of
displays to indicate the results of a spin of a reel or wheel or other rotating structure.
See supra IV.A; Ex. 1018, 64. In using Feys indicators around a wheel, it would
be obvious to place the indicators concentrically (rather than parallel to each other) so
as to ensure that each indicator points only to one segment on the wheel. Ex. 1018,
43, 64; see also, e.g., Ex. 1005 (showing multiple concentric indicators around a
wheel); Ex. 1006, Fig. 1 (same); Ex. 1010, Fig. 1 (same). Using Feys indicators
concentrically around a wheel is therefore a combination of two known elements
with predictable results.
b)

Thickness or depth of arrows

As discussed above, under the BRC, the 951 Patent does not require any
specific depth or thickness to the indicators. See supra V.C.2(d). Fey uses drop
shadows to indicate visual thickness, which would suggest any thickness that may

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Docket No. 034786.0010-US07

be required by the 951 Patent claim. See Ex. 1018, 65.
In any event, as Prof. Visser points out, it would have been obvious to a
designer of skill in the art to apply the design of Feys indicators to a threedimensional display, which would lead to indicators with three-dimensionality. A
designer of ordinary skill would be familiar with three-dimensional displays with
three-dimensional indicators, because such displays and indicators were prevalent in
the prior art. Id.; see also, e.g., Ex. 1005; Ex. 1007, Fig. 1; Ex. 1009, Fig. 1; Ex.
1012, Fig. 7; Ex. 1013, Figs. 1 and 3; Ex. 1014, Fig. 11. Therefore, such a design
would be a combination of well-known elements in a common-sense and predictable
manner.
c)

Increased thickness at roof

As discussed above, the claimed indicators in the 951 Patent typically dip
down (increase their thickness) in the roof portion of the arrow. See Ex. 1018, 66;
supra V.C.2(d). Feys indicators do not have a similar dip. However, in a threedimensional implementation of Feys design, it would be obvious to include a dip at
the roof of the indicators, such that the roof is thicker than the base. Ex. 1018, 66.
This well-known technique is used where a display has a border or frame that sits
above the display (i.e., the border is closer to the observer) and the base of the
indicator sits on top of the border or frame. Id.; see also, e.g., Ex. 1003, Fig. 1. As
Professor Visser explains, a designer of ordinary skill would appreciate that adding a

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Docket No. 034786.0010-US07

dip to the indicators reduces the space between each indicator and the display, which
thereby reduces parallax. Ex. 1018, 66. Indeed, this is one of two design choices
available to a designerthe other being to not dip or bend the indicator (i.e., ignore
the parallax). Id. Given these alternative design choices, which would be familiar to
a designer of ordinary skill, it would be obvious to incorporate any dip that the
BRC of the Claim may require.
Accordingly, the 951 Patent is obvious over Fey. As discussed above, Feys
indicators are nearly identical in shape and proportion to the indicators in the 951
Patent, as shown in Prof. Vissers side-by-side comparison (Ex. 1018 63). Further,
Fey readily suggests to a designer of ordinary skill the alterations necessary to
arrive at a hypothetical reference that is substantially the same as the claimed
design. Ex. 1018, 68. To the extent that the BRC of the Claim requires the
indicators to be positioned in a specific way and/or to have a specific thickness and a
dip-down, a designer of ordinary skill in the art who designs devices with displays
and indicators would need only ordinary skill, knowledge, and common sense to
visualize a hypothetical reference that addresses these differences. Id. In the eye of
an ordinary observer, giving such attention as a purchaser usually gives, the
indicators in such hypothetical reference derived from Fey are substantially the same
as those in the 951 Patent, and capable of inducing the ordinary observer to purchase
one supposing it to be the other. Ex. 1018, 67.

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Docket No. 034786.0010-US07

Therefore, embodiment 8 of the 951 Patent is obvious over Fey, and
Petitioner has established a reasonable likelihood that it will prevail on this ground.
3.

Ground III: The Claim Is Invalid Under 35 U.S.C. 103 As

Obvious Over Pollan in View of Wismer

To the extent that the Board considers the BRC of the 951 Patent claim as
requiring a specific spacing and angular relationship between the indicators, and/or
a specific thickness or depth to the indicators, and finds that those elements are not
obvious in light of Fey, the Claim is still invalid as obvious over Pollan in view of
Wismer. This ground is not redundant because it relies on different prior art than
in the preceding grounds, and presents arguments not advanced therein.
Pollan was published in 1986, and is therefore prior art under pre-AIA 35
U.S.C. 102(b) with respect to the 951 Patent. As noted above, Pollan was not
considered by the USPTO during prosecution of the 659 Application.

Pollan

describes the Wheel of Fortune television game show, and discloses a rotating
wheel with three multiple indicators spaced concentrically around the wheel. While
Pollans indicators are triangular and not pentagonal, the size, proportions, and
placement of the indicators on the wheel are virtually identical to that in embodiment
1 of the 951 Patent. Pollan combined with Wismer, which has three pentagonal
shaped indicators on a gaming device, would lead to a hypothetical reference that
would render the 951 Patent claim obvious to a designer of ordinary skill in the art.
As mentioned above, Pollan discloses an image in which three players stand
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Docket No. 034786.0010-US07

by a wheel with three large indicators in bright colors: red, yellow, and blue. Ex.
1018, 68. In the image below, Prof. Visser omits the contestants and pedestal,
leaving the wheel and the indicators. Id.
Ex. 1018, 68

Embodiment 1 of the 951 Patent as shown in FIG. 3 is reproduced below

(rotated clockwise approximately 15):

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Docket No. 034786.0010-US07

Ex. 1001, FIG. 3

Pollan is a suitable primary reference for an obviousness analysis.

Pollan, like the 951 Patent, discloses a gaming device consisting of a wheel with
multiple indicators at the periphery. Pollans indicators, unlike those in the 951
Patent, are triangular. Nevertheless, Pollan and embodiment 1 of the 951 Patent
have numerous visual similarities. As can be seen from the above images, the first
embodiment of the 951 patent and Pollan share the following common visual
elements:
Both have three indicators;
Both have indicators spaced apart from each other;
Both have indicators around a circular display;
Both have indicators that are concentric with the display;
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Docket No. 034786.0010-US07

The length of the indicator foundation relative to the indicator height
is similar in both;
Both have three-dimensional indicators;
Both have indicators with angular change of arrow direction; and
Both have indicators that appear opaque.
Ex. 1018, 72. The shape of the indicators in Pollan differs from the 951 Patent, but
changing the shape of Pollans indicators would have been obvious. A designer of
ordinary skill who makes devices with displays and indicators would appreciate that
any arrow that can point can be used as an indicator. Id.; see also supra IV. As
discussed above, use of pentagon (house) shaped arrows was common at the time
the 659 Application was filed. See supra IV.B; M.P.E.P. 1504.03 (case law has
held that a designer skilled in the art is charged with knowledge of the related art;
therefore, the combination of old elements, herein, would have been well within the
level of ordinary skill.) (citations omitted). Specifically, as explained below, a
POSA would combine Pollan with Wismer to arrive at a hypothetical reference
substantially the same as the 951 Patent.
Wismer is a United States patent that discloses a gaming device, in Lotto
games, for randomly selecting a plurality of groups of numbers.

Images of

Wismers gaming device are reproduced above, see supra VI.B.4, and below is an

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Docket No. 034786.0010-US07

image of Wismers indicators with the callout lines and numbers removed for clarity.
Ex. 1018, 73

Wismer and Pollan are so related that the appearance of certain ornamental
features in one would suggest the application of those features to the other. MRC
Innovations, 747 F.3d at 1334 (finding that similarity in appearance is sufficient to
suggest that one should apply certain features to the other design). Like Pollan,
Wismer discloses a gaming device for randomly selecting numbers, having a circular
display with multiple indicators placed concentrically at the periphery of the display.
A designer of ordinary skill who designs such devices would find Wismer and Pollan
to be sufficiently similar such that the features of one should be applied to the other.
Ex. 1018, 74; MRC Innovations, 747 F.3d at 1334.
A hypothetical reference created by combining Pollan and Wismer renders
embodiment 1 of the 951 Patent claim obvious. A designer of ordinary skill would
visualize a hypothetical reference that contains three indicators arranged in the

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Docket No. 034786.0010-US07

familiar Wheel of Fortune manner (as disclosed in Pollan) using the well-known
pentagonal arrow as the shape of the indicators (as disclosed in Wismer). Ex. 1018,
76. A POSA would be motivated to use the shape of the Wismer indicators on the
Pollan reference to create a hypothetical prior art reference because the POSA would
appreciate that other indicator designs, such as house-shaped arrows, exist in the
prior art that may provide an equally or more pleasing design and may serve a
functional purpose, for example, by making the selection more visible to observers or
game contestants because a house-shaped arrow is more clearly aligned with the
segments relative to a triangle-shaped arrow. Id.
Further, incorporating a dip at the roof of the indicator would be an obvious
design choice for a designer of ordinary skill. As discussed above in VI.C.2(c),
supra, this would be one of two choices available where the indicators sit above the
displaythe other being to not dip or bend the indicator (i.e., ignore the parallax).
See Ex. 1018, 66; see also, e.g., Ex. 1003, Fig. 1. Given these alternative design
choices, which would be familiar to a designer of ordinary skill, it would be obvious
to incorporate any dip that the BRC of the Claim may require.
This combination therefore leads to a hypothetical reference that has three
opaque house-shaped arrows, that are three-dimensional with an increased thickness
at the roof, and that are spaced concentrically around a circle. Ex. 1018, 76. This
hypothetical reference would be substantially the same as the claimed design, and

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