UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

FANDUEL, INC. Petitioner

v.

INTERACTIVE GAMES LLC Patent Owner

____________

Case No. IPR2017-01491 Patent No. 8,771,058

____________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,771,058

IPR2017-01491 U.S. Patent No. 8,771,058

TABLE OF CONTENTS I. INTRODUCTION ............................................................................................. 1 II. SUMMARY OF THE ’058 PATENT ............................................................. 1

A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’058 PATENT ..................... 1 B. SUMMARY OF THE PROSECUTION HISTORY ....................................................... 4 C. CLAIM CONSTRUCTION ..................................................................................... 5 D. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART .............. 6

III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104 .................................................................................................................... 7

A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ................................. 7 B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) ....................... 7

IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE .......................................... 8

A. CARTER IN VIEW OF WALKER RENDERS CLAIMS 1, 7-9, AND 19 OBVIOUS ....... 8 B. CARTER IN VIEW OF WALKER IN FURTHER VIEW OF SLOT PAYOUT WEBPAGE RENDERS CLAIMS 1 AND 6 OBVIOUS .................................................................... 47 C. LUCIANO IN VIEW OF ALCORN RENDERS CLAIMS 1, 7-9, AND 19 OBVIOUS ..... 51 D. LUCIANO IN VIEW OF ALCORN IN FURTHER VIEW OF SLOT PAYOUT WEBPAGE RENDERS CLAIMS 1 AND 6 OBVIOUS .................................................................... 67

V. CONCLUSION ............................................................................................... 68 VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 70

A. REAL PARTIES-IN-INTEREST AND RELATED MATTERS ................................... 70 B. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ...................... 70

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I. INTRODUCTION

Petitioner FanDuel Inc. requests an Inter Partes Review (“IPR”) of claims 1,

6-9 and 19 (collectively, the “Challenged Claims”) of U.S. Patent No. 8,771,058

(“the ’058 Patent”) issued on July 8, 2014 to Alderucci, et al. EX1001.

II. SUMMARY OF THE ’058 PATENT

A. Description of the Alleged Invention of the ’058 Patent

The ’058 Patent generally describes changing the configuration of a

wagering game played on a mobile gaming device based on the location of the

device. EX1001,Abstract, 12:22-28. The ’058 Patent specification also refers to

“mobile gaming devices” as “gaming communication devices,” “hand-held

personal gaming devices,” “portable gaming devices,” “wireless gaming devices,”

and “hand-held wireless game players.” Id.,1:58-64, 13:45-61, 26:39-44, 42:53-

55, 50:53-55. For purposes of clarity, this Petition collectively refers to these

devices as “mobile gaming devices.”

The system includes users 12, 14 with mobile gaming devices 13 accessing a

server 18 over a communications network 16:

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Id., Fig. 1; see also, id.,13:45-61.

Mobile gaming devices may be “any suitable device for transmitting and

receiving electronic communications” such as “mobile phones, personal data

assistants (PDAs), computers, mini-computers, etc.” Id.,13:52-56. The mobile

gaming devices may be used to play games of chance such as “slot games, poker,

pachinko, multiple hand poker games, pai-gow poker, black jack, keno, bingo,

roulette, craps and a card game.” Id. at 51:3-7. The location of the mobile gaming

device is determined via “location verification technology” such as GPS and/or

triangulation, for example. Id.,17:23-29.

Different game configurations are applied to the game played on the mobile

gaming device based on the location of the device. Id.,12:1-27. A “game

configuration may include: (a) any rules or algorithms according to which

resolutions or outcomes are generated in the game; (b) any rules or algorithms

according to which information is presented in the game; (c) any information that

is presented in the game; (d) any rules or algorithms that determine how payouts

are awarded in a game; and any other rules or algorithms which influence the

results of a game, the manner in which a game is presented, or any other aspect of

the game.” Id.,11:60-12:1. For example, a game configuration may include a

payout percentage, a probability of a resolution or outcome, or a required bet

amount. Id.,12:1-14.

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The gaming area is divided into “zones.” Id.,2:13-16. Each zone is a

location associated with a specific game configuration. Id.,2:52-59. In one

embodiment, each “zone” corresponds to a different location within a casino

complex such as, the lobby, guest rooms, pool areas, shops, etc. Id.,19:59-66.

However, the system may also be used in a broader gaming area encompassing

many “gaming spots” including casinos 48, hotels 45, residential areas 40, or other

remote gaming areas:

Id.,Fig. 4; see also, id.,16:42-46.

Game configurations may be associated with locations/zones via a lookup

table. Id.,12:15-18. In one embodiment, the lookup table is stored on a casino

server that receives location information from a mobile gaming device and looks

up the location in the lookup table to determine the game configuration associated

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with the location. Id.,12:22-27. The server then transmits an indication of the

game configuration to the mobile gaming device. Id.,12:27-28. In another

embodiment, the lookup table is stored in the memory of the mobile gaming

device, which determines its location and uses the lookup table to determine the

associated game configuration. Id.,6:14-19.

B. Summary of the Prosecution History

The application that issued as the ’058 Patent was filed on February 15,

2007. EX1002,497. For purposes of this Petition, Petitioner is applying the

February 15, 2007 date to the Challenged Claims.

The primary reference considered during prosecution of the ’058 Patent was

U.S. Patent Publication No. 2004/0176162 to Rothschild (“Rothschild”). Id. at

359-366. Rothschild teaches a method of automatically reporting alterations to the

operation of a gaming machine to a gaming regulatory agency. EX1008,Abstract.

Rothschild teaches that the attributes that may be reported “vary from jurisdiction

to jurisdiction, common regulated attributes may include game theme changes,

game location changes, denomination changes, software code revisions, circuit

board changes that include new memory, and changes to the payout structure.”

Id.,[0040].

During prosecution, the Examiner found that Rothschild’s disclosure of

regulated attributes that vary from jurisdiction to jurisdiction meets the limitations

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of “determining a first game configuration associated with the first location” and

“determining a second game configuration associated with the second location.”

EX1002,333-334. In response, Applicant argued that the cited disclosure of

Rothschild “does not teach or suggest determining any game configuration

associated with any location” or that “any game configuration is associated with

any particular location at all.” Id.,350. However, the Examiner maintained the

rejection, and Applicant subsequently filed a Notice of Appeal. Id.,325.

During the appeal proceeding, Applicant argued “reporting changes to a

gaming machine to a regulatory authority” is “not a teaching or suggestion of that

[sic] any gaming configuration is associated with any location.” Id.,157.

Applicant also argued that the cited portion of Rothschild describing “attributes of

gaming machines” is related to reporting requirements and not game

configurations that can be used to generate game outcomes. Id.,86. The Board

agreed with Applicant and reversed. Id.,74-77. The Examiner subsequently issued

a Notice of Allowance, and the ’058 Patent issued on July 8, 2014. Id.,4, 57-61.

C. Claim Construction

In this proceeding, claim terms of an unexpired patent should be given their

“broadest reasonable construction in light of the specification.” 37 C.F.R. §

42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). All

claim terms should be given their broadest reasonable construction in light of the

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specification. Adherence to the rules of construction is not a waiver of any

argument, in any litigation, that claim terms in the ’058 Patent should not be

construed differently or are otherwise invalid (including under 35 U.S.C. § 112).

Independent claims 1 and 19 recite a first and a second “game

configuration.” EX1001,60:4-5, 60:18-20, 62:8-9, 62:19-21. Regarding the term

“game configuration” the ’058 Patent specification states:

[A] game configuration may include: (a) any rules or algorithms

according to which resolutions or outcomes are generated in the game;

(b) any rules or algorithms according to which information is

presented in the game; (c) any information that is presented in the

game; (d) any rules or algorithms that determine how payouts are

awarded in a game; and any other rules or algorithms which influence

the results of a game, the manner in which a game is presented, or any

other aspect of the game.

Id. at 11:60-12:1.

However, Claims 1 and 19 further require the claimed “game

configurations” to be used to generate a game outcome. Id.,60:6-7, 60:21-22,

62:10-11, 62:22-23. As such, the BRI of the term “game configuration” must at

least include “any rules or algorithms that influence resolutions, results or any

other outcome of a game.”

D. Level of Skill of a Person Having Ordinary Skill in the Art

A person having ordinary skill in the art at the time of the ’058 Patent would

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be a person with a Bachelor of Science Degree in Electrical Engineering or

Computer Engineering or equivalent, and at least two years of experience in the

design and development of video game-related hardware and software.

EX1011,¶51.

III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104

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

Petitioner certifies that the ’058 Patent is eligible for IPR; Petitioner is not

barred or estopped from requesting IPR; and this Petition is filed less than one year

after the Petitioner was served with a complaint alleging infringement of the ’058

Patent.

B. Identification of Challenge Under 37 C.F.R. § 42.104(b)

In view of the prior art and evidence, claims 1, 6-9 and 19 of the ’058 Patent

are unpatentable and should be cancelled based on the following grounds:

Claims Basis References

1, 7-9, and 19 103(a) Carter (EX1003) and Walker (EX1004)

1 and 6 103(a) Carter (EX1003), Walker (EX1004), and Slot

Payouts Webpage (EX1005)

1, 7-9, and 19 103(a) Luciano (EX1006) and Alcorn (EX1007)

19 103(a) Luciano (EX1006), Alcorn (EX1007), and the

Knowledge of a PHOSITA

1 and 6 103(a) Luciano (EX1006), Alcorn (EX1007), and

Slot Payouts Webpage (EX1005)

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Section IV identifies where each element of the Challenged Claims is found

in the prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the supporting

evidence relied upon to support the challenges are provided above and the

relevance of the evidence to the challenges raised are provided in Section IV. 37

C.F.R. § 42.104(b)(5).

IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS ARE UNPATENTABLE

A. Carter in view of Walker Renders Claims 1, 7-9, and 19 Obvious

U.S. Patent Publication No. 2002/0147049 to Carter (“Carter”) published on

October 10, 2002 and therefore qualifies as prior art with regard to the ’058 Patent

under 35 U.S.C. § 102(b) (pre-AIA). EX1003. Carter was not cited or considered

during prosecution of the ’058 Patent. EX1002. The ’058 Patent is generally

directed to methods and systems that use the location of a gaming device to affect

gaming operations. Supra,II.A. Carter similarly describes a location-based

gaming system including a mobile gaming unit that allows a user to play wagering

games while moving to different zones having different jurisdictional requirements

and gaming opportunities that influence the player’s gaming experience.

EX1003,[0049]. As such, Carter is in the same field of endeavor and is therefore

analogous to the claimed invention of the ’058 Patent.

U.S. Patent Application Publication No. 2004/005919 to Walker et al.

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(“Walker”) published on January 8, 2004 and therefore qualifies as prior art with

regard to the ’058 Patent under 35 U.S.C. § 102(b) (pre-AIA). EX1004. Walker

was not cited or considered during prosecution of the ’058 Patent. EX1002.

Walker teaches the allegedly patentable subject matter of associating game

configurations with specific locations. Specifically, Walker teaches “a method for

activating features for use on gaming devices.” EX1004,Abstract. Walker’s

features “may affect various operations of a game and/or a gaming device, such as

the way a game is played [and] . . . the way outcomes are determined in a game.”

Id.,[0061]. Walker’s gaming device may be “a portable handheld gaming device,”

and features may be activated based on the location of the gaming device.

Id.,[0218], [0264]. For example, “a feature may be enabled if the gaming device is

near a door of a casino floor, but may not be enabled if the gaming device is near a

poker room.” Id.,[0264]. Therefore, Walker teaches the allegedly patentable

limitation of a game configuration associated with a specific location that is used to

generate game outcomes.

Like the ’058 Patent, Walker is also directed to methods and systems that

use the location of a gaming device to affect gaming operations. As such, Walker

is in the same field of endeavor and is therefore analogous to the claimed invention

of the ’058 Patent.

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1. Claim 1

1. A method comprising:

Carter teaches a “a method of gaming via an exemplary location based

mobile gaming system.” EX1003,[0019].

[1(a)] determining a first location of a mobile gaming device;

Carter’s mobile gaming unit 102 is a mobile device such as a laptop, PDA,

or cell phone that a gambler uses to play wagering games:

In accordance with one aspect of the invention, a mobile gaming

system is provided wherein a gambler may use a mobile gaming unit

(e.g., 3G, PCS or cellular, two way pager, personal digital assistant,

and the like) to placing a wager on the outcome of an event.

Id.,[0012].

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Id.,Fig. 11.

On the other hand, the gambler may elect to play a game wherein the

results of the game are known virtually real-time (step 324). For

example, such games may include virtual slot machine, keno, poker,

black jack, craps, etc.

Id.,[0047]; see also, id.,[0022], [0026], [0046].

Carter teaches determining a first location of the mobile gaming unit. The

mobile gaming unit includes “conventional position location hardware and

software” used to determine its location. Id.,[0027], [0015]. The mobile gaming

unit sends its location data, such as latitude/longitude and/or a zone identifier, to a

game controller server. Id.,[0028], [0036], [0043], Claims 2, 3, 23, 26, Fig. 3 (step

310). In one embodiment, the server determines that the mobile gaming unit is

located in a first zone/location. Id.,[0049].

Further mobile gaming units 102 are suitably operable to include

conventional position location hardware and software. For example,

mobile units 102 may include combination of positioning technology

such as global position system (GPS), wireless assisted GPS, wireless

assisted protocol (WAP) based location, geography markoff language

(GML) based location.

The gaming unit may register its location with the local gaming

controller server or network.

1 Petitioner has removed the shading in Carter’s Figure 1 in order to improve legibility.

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Id. at [0027]-[0028].

Id. at Fig. 3 (excerpt) (emphasis added).

2. A system according to claim 1 wherein said wireless location based

system includes a location based mobile gaming unit, said mobile

gaming unit configured to communicate with said game controller

server via a wireless media.

3. A system according to claim 2, wherein said mobile gaming unit is

configured to provide location information correlative to the physical

location of the mobile gaming unit, said location information

comprising at least one of a longitude, latitude, or zonal indicia.

Id. at Claims 2-3 (emphasis added).

In addition, it should be understood that although the present system is

described with respect to a remote location based mobile gaming unit

which initiates a gaming experience while being within the

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transmitting area (e.g., zone) of a distinct local game server 208, the

invention contemplates the use of a location based mobile unit

which is roaming from one transmission zone to another. In this

instance, the user may be required to reinitiate the gaming experience

under the established protocols of the zone in which the user is

moving. As an example, where the user begins his gaming experience

in a first zone, but the user movers [sic] to a second zone, the user

may be required to restart his gaming experience under the protocol of

the second zone, which may have different jurisdictional restrictions

than the first zone. Alternatively, the invention contemplates that

various jurisdictions may establish agreements permitting the gaming

experience to be completed in the second zone even though the

gaming experience was initiated in the first zone.

Id.,[0049](emphasis added); see also, id.,[0015], [0036], [0043], Claims 23, 26.

The claim does not identify any specific component that must perform this

method step. As described above, the mobile gaming unit determines that it is

located in a first zone using positioning technology. Additionally, the ’058 Patent

specification discloses that the term “determining encompasses a wide variety of

actions and . . . . can include receiving (e.g., receiving information).”

EX1001,51:59-52:1. Therefore, Carter’s disclosure of the server receiving the

mobile gaming unit’s location data is also “determining” a location of the mobile

gaming unit within the meaning of the ’058 Patent. As such, the mobile gaming

unit meets this limitation when it uses positioning technology to determine its

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location, and the game controller server meets this limitation when it receives the

location data from the mobile gaming unit.

[1(b)] determining a first game configuration associated with the first location;

Carter’s game controller server uses the received location data to correlate

“the physical location of the gaming unit 102 and the gaming opportunities

permitted in the jurisdiction in which the unit is located.” EX1003,[0031]. To

accomplish this, the server matches the received location data with an associated

jurisdictional profile stored in a database. Id.,[0031], [0043]. The ’058 Patent

specification similarly discloses that the term “determining” includes “resolving,

selecting, choosing, establishing, and the like.” EX1001,51:59-52:4. Therefore,

the disclosure of Carter’s server selecting the jurisdictional profile associated with

the received location is “determining” an associated jurisdictional profile within

the meaning of the ’058 Patent.

The “jurisdictional profile” includes information relating to jurisdiction-

specific gaming opportunities as well as “any information relative to the gambling

restrictions and identification of the jurisdiction in from which a gambler may

place his bet.” EX1003,[0037], [0012], [0031]. After the mobile gaming unit’s

location is matched to the associated “jurisdictional profile,” the game controller

server provides the gambler’s profile and the jurisdictional information to a local

game server, which manages the gambler’s gaming experience in accordance with

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the jurisdictional information. Id.,[0037], [0043]-[0044], [0047], [0049], Fig. 3,

Claim 23. Each local game server corresponds to a location such as a jurisdiction

and/or casino. Id.,Fig. 2(ref. no. 208), [0040]. The area covered by each local

game server is referred to as a “zone,” and each zone may lie in a jurisdiction

having specific gaming restrictions and opportunities. Id.,[0049], [0012]. Carter

teaches an embodiment where the server determines that the mobile gaming unit is

located in a first zone subject to the restrictions and gaming opportunities of a first

jurisdiction (i.e., a first jurisdictional profile). Id.,[0049].

The gaming controller's server facilitates the storage and management

of the events via manipulation of gambler profiles and jurisdictional

profile (e.g., jurisdictionally permitted gaming opportunities) stored

on a gaming account database on a home gaming registry.

Id.,[0012].

Further, database 116 may suitably contain distinct location

information correlative to the physical location of the gaming unit 102

and the gaming opportunities permitted in the jurisdiction in which the

unit 102 is located.

Id.,[0031].

Local gaming server 208 may include any system configured to

receive transmissions from game controller 204 and provide a listing

of available gaming opportunities per the established jurisdiction. For

example, each distinct local gaming server 208 may be associated

with a distinct jurisdiction and/or casino, wherein the games made

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available to the user are restricted by the jurisdiction. That is, each

jurisdiction associated with the local gaming server 208 may restrict

the type of gaming activity which may be provided in that jurisdiction.

Id.,[0040].

Id. at Fig. 22.

If the user is authenticated (step 306), the HGR system 206 may

retrieve a gambler profile from an attendant database (step 308). 2 Petitioner has removed the shading in Carter’s Figure 2 in order to improve legibility.

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Further, the HGR system 310 may further retrieve identifying

information regarding the jurisdiction in which the gambler is located

(step 310). That is, the user may provide initiating location

information (e.g., longitude, latitude, etc.) which is correlative to the

jurisdiction in which the gambler (e.g., mobile gambling unit 102) is

located. Upon retrieving the location information the HGR system 206

may be matched to a distinct jurisdiction (e.g., jurisdictional

information).

The HGR system 206 may provide the gaming profile and/or the

jurisdictional information to the gaming controller 204, which may

further provide the information to the local gaming server 208 (step

314).

Id.,[0043]-[0044].

On the other hand, the gambler may elect to play a game wherein the

results of the game are known virtually real-time (step 324). For

example, such games may include virtual slot machine, keno, poker,

black jack, craps, etc. The game may be managed by the local server

208. Upon determining the results of the game, the gambler profile

and/or transactional account may be adjusted accordingly (step 328).

Id.,[0047].

As an example, where the user begins his gaming experience in a first

zone, but the user movers to a second zone, the user may be required

to restart his gaming experience under the protocol of the second

zone, which may have different jurisdictional restrictions than the first

zone. Alternatively, the invention contemplates that various

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jurisdictions may establish agreements permitting the gaming

experience to be completed in the second zone even though the

gaming experience was initiated in the first zone. By way of further

example, where a gambler initiates a gaming experience under the

established protocol of a first local server, the gambler may be

permitted to continue the gambler's gaming experience under the

protocol of a second local server, in the event the gambler moves from

the transmission area of the first local server to the second local

server.

Id.,[0049]; see also, id.,[0032], Claims 7-9, 23, 26, Fig. 3.

The BRI of the term “game configuration” must at least include “any rules

or algorithms that influence resolutions, results or any other outcome of a game.”

Supra,II.C. Carter generally describes the information stored in the jurisdictional

profile and discloses that the location-based gaming opportunities may correspond

to the specific games available in the jurisdiction. EX1003,[0044]. Carter also

discloses that each gaming opportunity is “characterized by a gaming outcome.”

Id.,Claim 23.

To the extent Claim 23 in Carter does not teach a jurisdictional profile

impacting the outcome of a particular game, Walker clearly teaches enabling one

or more location-specific “features” that affect the outcome of a wagering game

played on a gaming device. A feature “comprises an enhancement, option,

parameter or mode that may affect how a gaming device operates and/or may

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affect how a game operates on a gaming device.” EX1004,[0060]. “Features may

affect various operations of a game and/or a gaming device, such as the way a

game is played [and] . . . the way outcomes are determined in a game.” Id.,[0061].

Walker teaches that the features advantageously enhance the player’s experience

and can be used to provide a more satisfying entertainment experience to players:

In accordance with various embodiments of the present invention, the

operation of a gaming device (and/or of a game provided on the

gaming device) may be affected by various parameters, options, and

other features enabled for use on the gaming device. As discussed

herein, such features may enhance various aspects of a player's

experience at the gaming device. For example, a feature may be used

on a gaming device to alter a mode of operation of the gaming device

. . . .

Id.,[0043].

Applicants have also recognized that enhancing the operation of a

gaming device by enabling and/or disabling the use of one or more

particular features (or combinations of features) on the gaming device

may serve to distinguish the gaming device, and may provide a more

satisfying entertainment experience to players, thus attracting more

players to such a gaming device.

Applicants have also recognized that, in some embodiments,

modifying the experience of a player at a gaming device, such as by

enabling and/or disabling the use of one or more particular features

with the gaming device, may serve to increase the player's use of the

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gaming device, leading to increased revenues for owners and

operators of gaming devices, and may increase the profitability of the

gaming device.

Id.,[0050]-[0051].

Walker’s features are “game configurations” within the meaning of the ’058

Patent at least because they affect the way outcomes are determined in a game.

Supra,II.C. For example, Walker teaches a feature that modifies the outcome

probabilities of a game. EX1004,[0100]. The ’058 Patent expressly discloses that

a game configuration may include modifying the probability of an outcome.

EX1001,12:5-9 (“A game configuration may include a probability of a resolution

or an outcome. For example, in a first configuration of a game, an outcome may

have a probability of 1/1000. In a second configuration of a game, the outcome

may have a probability of 1/1002.”). Walker also teaches that features may be

embodied in instructions, such as computer program code. EX1004,[0060].

Therefore, Walker’s modified outcome probability feature is a “game

configuration” because it includes instructions (i.e., “rules or algorithms”) “that

influence resolutions, results or any other outcome of a game.”

Like Carter, Walker’s gaming device may also be a mobile gaming device

such “as a portable handheld gaming device (e.g., a personal digital assistant or

NINTENDO® GAMEBOY®)” or “a user device such as a PDA or cell phone.”

EX1004,[0218]. In one embodiment, a server computer in wireless

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communication with the gaming device automatically activates game features

based on predetermined conditions including the location of the gaming device.

Id.,[0053], [0110], [0088]-[0089], [0196], [0264]. Specific features may be

associated with particular locations. Id.,[0264], [0282]-[0284]. For example, “a

feature may be enabled if the gaming device is near a door of a casino floor, but

may not be enabled if the gaming device is near a poker room.” Id.,[0264].

Additionally, certain features may be enabled at a first casino and disabled at a

second casino, and/or certain features may be enabled in a first jurisdiction and

disabled in a second jurisdiction. Id.,[0283]-[0284].

Applicants have also recognized that manufacturers, owners, and

operators of gaming devices may find it appealing to have a feature

automatically enabled or disabled on a gaming device and/or to have

the feature automatically displayed to a player at a gaming device for

selection, in accordance with various predetermined conditions.

Id.,[0053].

According to other embodiments, a gaming device or a server

computer may make a feature active on the gaming device.

Id.,[0089].

According to one or more embodiments of the present invention, a

feature may be enabled or disabled for use on one or more gaming

devices based on one or more rules. In one embodiment, such one or

more rules may be associated with, for example, a predetermined

condition, as described in FIG. 1D.

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Id.,[0110].

Referring now to FIG. 2A, a block diagram of a system 200 according

to at least one embodiment of the present invention includes a

computer 210 (e.g., a slot server of a casino) that is in communication,

via a communications network 220, with one or more gaming devices

230 (e.g., slot machines, video poker machines). The computer 210

may communicate with the devices 230 directly or indirectly, via a

wired or wireless medium such as the Internet, LAN, WAN or

Ethernet, Token Ring, or via any appropriate communications means

or combination of communications means.

Id.,[0196] (emphasis added).

Some examples of conditions include, but are not limited to: . . .

(x) A location of the gaming device (e.g., a feature may be enabled if

the gaming device is near a door of a casino floor, but may not be

enabled if the gaming device is near a poker room);

Id.,[0254]-[0264].

Examples of predetermined conditions related to information about a

casino that may need to be satisfied before a feature is enabled on the

gaming device include, but are not limited to:

(i) What casino operates a gaming device (e.g., a feature may be

enabled at a first casino but is to be disabled at a second casino, even

if the casinos are commonly owned or operated and may have access

to the same features);

(ii) A location or jurisdiction of a casino (e.g., a feature may be

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disabled within a first geographic region, such as the state of Nevada,

but enabled within a second geographic region, such as an American

Indian reservation in the state of Arizona);

Id.,[0282]-[0284]; see also, id.,[0298], Fig. 7.

Based on the teachings of Walker, it would have been obvious to a

PHOSITA to include Walker’s location-specific game features in Carter’s

jurisdictional profiles. EX1011,¶¶70-73. For example, it would have been

obvious to include Walker’s outcome probability feature as a first game

configuration in the jurisdictional profile associated with the first zone/location.

Id.,¶74. This modification would have predictably resulted in the server

determining a first game configuration, such as the outcome probability feature,

when selecting the jurisdictional profile associated with the first location of the

mobile gaming unit. Id.,¶76.

A PHOSITA would have understood that upon receiving the jurisdictional

profile information from the game controller server, the local game server could

incorporate the instructions enabling the feature into the software of the game.

Id.,¶77. By way of example, a PHOSITA would have understood that the outcome

probability feature could be applied to Carter’s virtual slot machine game. Id.,¶78.

In a slot machine game, each winning combination of symbols as defined by the

game’s payout table is an outcome having an associated probability. Id. The

probability of each outcome is dependent on the number of reels on the slot

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machine, the number of positions on each reel, and the number of each symbol on

each reel. Id. A PHOSITA would understand that when implementing Walker’s

outcome probability feature on Carter’s virtual slot machine game, it would be

obvious to configure the software to simulate a slot machine having the appropriate

number of reels, positions, and symbols on each reel to achieve the desired

probability for each winning outcome. Id.

As discussed above, Walker teaches location/casino-specific features such as

a feature enabled at a first casino, but not at a second casino. EX1004,[0283].

Walker also teaches that features “can be used by a casino . . . to enhance various

aspects of a player’s experience at a gaming device.” Id.,[0020]. Enhancing the

player’s gaming experience “may serve to increase the player’s use of the gaming

device, leading to increased revenues.” Id.,[0051]. Similarly, in one embodiment,

each of Carter’s zones and therefore jurisdictional profiles is associated with a

different casino (e.g., “MGM”, “Park Place,” etc.). EX1003,Fig. 2, [0040]. Based

on the teachings of Walker, it would have been obvious to include Walker’s

features in the jurisdictional profile corresponding to specific casinos in order to

provide casino-specific features thereby enhancing the gambler’s experience and

improving similar gaming systems in the same way. EX1011,¶70. For example, it

would have been obvious to enable the outcome probability feature at a first casino

in order to enhance the player’s gaming experience at that location by offering

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modified odds for hitting a jackpot. Id.,¶71, ¶74. As suggested by Walker, a

PHOSITA would understand that enhancing the player’s gaming experience may

lead to increased use of the mobile gaming device thereby resulting in increased

profits. Id.,¶70.

Walker also teaches that certain features may be enabled or disabled based

on the jurisdiction in which the gaming device is located. EX1004,[0282]-[0284].

Carter teaches that a jurisdictional profile includes any information relative to the

gambling restrictions in the jurisdiction. EX1003,[0037]. A skilled artisan would

appreciate that Walker’s features, including the outcome probability feature, could

be incorporated into the jurisdictional profile of the first zone in order to comply

with jurisdictional requirements. EX1011,¶¶72-73, ¶75. It is well known and

acknowledged by the ’058 Patent itself that outcome probabilities of a slot machine

game, for example, are directly related to the game’s payout percentage.

EX1001,8:2-6 (“There are several ways by which a higher payout percentage may

be achieved. These include . . . providing higher probabilities for one or more

winning outcomes . . . .”); see also, EX1011,¶75. Many jurisdictions require

minimum payout percentages for slot machine games. EX1011,¶40, ¶75.

Therefore, it would have been obvious to include an outcome probability feature

corresponding to a required payout percentage in the first zone’s jurisdictional

profile in order to comply with jurisdictional restrictions. Id.,¶75. A PHOSITA

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would have understood that failing to comply with all jurisdictional gaming

regulations could have resulted in fines, loss of gaming licenses, or even criminal

penalties. Id.,¶41, ¶73. Thus, a PHOSITA would have been motivated to

incorporate Walker’s outcome probability feature into Carter’s first jurisdictional

profile in order to comply with jurisdictional gaming regulations. Id.,¶73.

[1(c)] generating, by a computer system, a first game outcome using the first game configuration;

Carter’s local game servers, including the first local game server, are

computer systems including game software for managing and determining the

results (i.e., outcomes) of wagering games played on the mobile gaming units:

As such, gaming server 208 may only store the required information

(e.g., software) necessary for allowing the user to place a wager in

that jurisdiction.

EX1003,[0040].

The present invention may be described herein in terms of functional

block components and various processing steps. It should be

appreciated that such functional blocks may be realized by any

number of hardware and/or software components configured to

perform the specified functions.

Id.,[0020](emphasis added).

The game may be managed by the local server 208. Upon

determining the results of the game, the gambler profile and/or

transactional account may be adjusted accordingly (step 328).

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Id.,[0047](emphasis added); see also, id.,[0046], [0049] (disclosure of the first

local game server).

Walker defines an outcome as “compris[ing] at least one indicia that is

utilized to inform a player of whether a benefit (e.g., a payout) has been won by the

player as a result of playing a game. In a reeled slot machine game, for example, a

set of symbols displayed along a payline comprises an outcome of a game.”

EX1004,[0289]. Walker teaches generating a game outcome based on the selected

feature:

In step 180, an outcome is determined in accordance with the

selected feature. As discussed herein, some features provided for

enhancements or modifications to the way in which an outcome is

determined during play of a gaming device. In step 185 a payout is

determined based on the determined outcome.

Id.,[0128] (emphasis added); see also, id.,Fig. 1D.

For the reasons discussed above, it would have been obvious to incorporate

Walker’s outcome probability feature as a first game configuration in the

jurisdictional profile associated with the first zone. Supra,Claim 1(b). Walker’s

features, including the outcome probability feature, “affect . . . the way outcomes

are determined in a game.” EX1004,[0061]. Specifically, Walker’s outcome

probability feature affects the odds of achieving specific outcomes in a game.

Id.,[0063](“The size of the payouts may be adjusted by the size of the wager

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portion, or the probability of a winning outcome appearing could be

correspondingly lowered.”) (emphasis added); EX1011,¶78, ¶80. As such, it

would have been obvious to a PHOSITA to enable Carter’s first local game server

to generate a first game outcome using Walker’s outcome probability feature

because, by definition, the first local game server would need to use the outcome

probability feature to generate the game outcome. Id.,¶81.

A PHOSITA would understand that the outcome of each play in the virtual

slot machine game would be generated by the first local game server’s game

software simulating a spin of the virtual reels in order to generate a resulting set of

symbols that stop on the game’s payline. Id.,¶82. As such, a PHOSITA would be

motivated to enable the first local game server would use the virtual reel

configuration dictated by the outcome probability feature to simulate spinning the

reels, which would generate a first game outcome. Id.

[1(d)] instructing a display screen of the mobile gaming device to display an indication of the first game outcome;

Carter’s mobile gaming unit includes a display screen:

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EX1003,Fig. 1 (excerpt) (emphasis added).

Carter also teaches that the server may “report the outcome of the event to

the mobile gaming unit,” but does not expressly disclose that reporting an outcome

includes displaying an indication the outcome on the display screen. Id.,[0012].

Walker teaches a gaming device having a display screen, such as “an LCD

display of a personal digital assistant (PDA).” EX1004,[0233]. Walker expressly

discloses that the display screen displays indications of “outcomes of games played

on the gaming device,” such as the “a set of symbols along the payline” in a virtual

slot machine game, for example:

The display device 355 may comprise, for example, one or more

display areas. For example, one of the display areas may display

outcomes of games played on the gaming device (e.g., electronic reels

of a gaming device).

Id.,[0234].

Referring now to FIG. 11A, an embodiment 1100A of a plan view of

a gaming device 230 is illustrated. In the embodiment 1100A, the

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gaming device 230 comprises a five reel slot machine. The slot

machine 1100A comprises a display area 1105 in which an outcome

for a game of the slot machine is displayed to the player. The

display area 1105 may, for example, be a video display that

displays simulations of reels. . . . Display area 1105 is an exemplary

embodiment of the display device 355, described with respect to FIG.

3.

Id.,[0333] (emphasis added).

Id.,Fig. 11A (excerpt); see also, id.,[0289].

As described above, it would have been obvious to enable Carter’s first local

game server to generate a first game outcome using Walker’s outcome probability

feature as a first game configuration. Supra,Claim 1(c). Based on the teachings of

Walker, it would also have been obvious to a PHOSITA to enable Carter’s first

local game server to instruct the display screen of the mobile gaming unit to

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display an indication of the first game outcome. EX1011,¶86. For example, it

would have been obvious to enable the first local server to transmit instructions

causing the mobile gaming unit to display a simulation of reels in the virtual slot

machine game. Id. As taught by Walker, displaying the spinning reel simulation

on the display of the mobile gaming unit would have informed the user of the

resulting set of symbols displayed along a payline thereby reporting the first game

outcome to the user. Id. A skilled artisan would have further appreciated that

displaying an indication of the game outcome on the display screen of the mobile

gaming unit is an obvious way to report the game outcome to the user. Id. A

PHOSITA would have been motivated to make this combination in order to

effectively communicate to the user an indication of the outcome of the game. Id.

[1(e)] determining a first payout associated with the first game outcome;

Carter’s local game server determines the amount of the gambler’s winnings

(i.e., “payout”) based on the outcome of the game:

The game may be managed by the local server 208. Upon determining

the results of the game, the gambler profile and/or transactional

account may be adjusted accordingly (step 328).

EX1003,[0047].

In accordance with one aspect of the invention, the gambler is able

to place wagers on the outcome of the game or event based on the

gambling profile of the gambler. The gambling profile may be further

stored in a database, wherein the gambling profile provides the

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gambler with credits with which to gamble. . . . Where the gambler

successfully places a wager (e.g., correctly guesses the outcome of an

event) the amount of credits stored the gambling profile may be

increased accordingly to the amount of the gambler's winnings.

Contrariwise, were a gambler unsuccessfully places a wager, the

amount of credits stored in the gambling profile may be decreased

accordingly to the amount wagered by the gambler.

Id.,[0013](emphasis added).

While Carter could be understood to determine both the game outcome and

payout as a single step, Walker expressly teaches determining a payout for a

generated game outcome as a separate step:

In step 180, an outcome is determined in accordance with the selected

feature. As discussed herein, some features provided for

enhancements or modifications to the way in which an outcome is

determined during play of a gaming device. In step 185 a payout is

determined based on the determined outcome.

EX1004,[0128] (emphasis added); see also, id. at [0289], Fig. 1D.

It would have been obvious to enable Carter’s first local game server to

determine a first game outcome using Walker’s outcome probability feature as a

first game configuration. Supra,Claim 1(c). Based on the teachings of Walker, it

would have also been obvious to enable Carter’s first local game server to

determine a first payout based on the first game outcome. EX1011,¶89. A

PHOSITA would have been motivated to make this combination in order to ensure

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the payout accurately matched the game outcome. Id. In Carter’s virtual slot

machine game, for example, it would have been obvious to use the game’s payout

table to determine a first payout associated with the set of symbols resulting from

the spin of the virtual reels (i.e., “the first game outcome”). Id. A PHOSITA

would have expected Carter’s local game server to determine the payout based on

the game outcome in order to enable it to credit the correct amount to the player’s

account. Id.

[1(f)] crediting a player account with a first amount based on the first payout;

Carter’s local game server credits the gambler’s financial account with the

amount of the gambler’s winnings:

The game may be managed by the local server 208. Upon

determining the results of the game, the gambler profile and/or

transactional account may be adjusted accordingly (step 328).

That is, the credit or financial transaction account associated with

the gambler's gambling experience may be deducted or increased

according to the gambler's level of success. Once the game is

terminated and the wager is deducted or added to the transactional

account, the gambler may be given the opportunity to place another

wager on a game, or to terminate the gambling experience (step 330).

EX1003,[0047](emphasis added); see also, id.,[0012], [0013], [0033].

As discussed above, it would have also been obvious to enable the first local

game server to determine a first payout based on the first game outcome.

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Supra,Claim 1(e). Since Carter teaches that the local game server credits the

gambler’s financial account with the amount of the gambler’s winnings (i.e., the

payout), it would have been obvious for the first local server to credit the

gambler’s financial account with a first amount based on the first payout.

EX1011,¶91.

[1(g)] determining a second location of the mobile gaming device, wherein the second location is different from the first location;

Carter discloses determining the location of a mobile gaming unit.

Supra,Claim 1(a). Carter also discloses an embodiment where the mobile gaming

unit moves from a first zone/location to a second zone/location:

24.A method according to step 23 further comprising the step of

providing providing [sic] the home gaming register with a second

location of the location based mobile gaming unit;

correlating the second location of the location based mobile gaming

unit with a second local game server

EX1003,Claim 24(emphasis added);see also, id.,Claims 20, 27, [0043],

[0049] (player moves from first zone to a second zone).

Carter’s second location is different from the first location. Carter discloses

that the second location is in a zone associated with a second local game server.

Id.,Claim 24, [0049]. Each local game server corresponds to a different location,

such as a different jurisdiction and/or a different casino (e.g., “MGM,” “Park

Place”, etc.):

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Id.,Fig. 2(excerpt)(emphasis added).

Local gaming server 208 may include any system configured to

receive transmissions from game controller 204 and provide a listing

of available gaming opportunities per the established jurisdiction. For

example, each distinct local gaming server 208 may be associated

with a distinct jurisdiction and/or casino, wherein the games made

available to the user are restricted by the jurisdiction.

Id.,[0040](emphasis added).

[1(h)] determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration;

Carter’s game controller server uses the received location data to correlate

the second location of the mobile gaming unit with the jurisdictional profile

associated with the second zone/location. EX1003,[0031], [0049], [0043], Claims

20, 24, 27; see also, supra,Claim 1(b). The disclosure of Carter’s server selecting

the jurisdictional profile associated with the second location is “determining” a

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second jurisdictional profile within the meaning of the ’058 Patent. Supra,Claim

1(b).

Walker teaches location-specific features of wagering games including a

modified outcome probability feature that is a “game configuration” within the

meaning of the ’058 Patent. Supra,Claim 1(b). For reasons discussed above, it

would have been obvious to include Walker’s location-specific features, including

the modified outcome probability feature, in Carter’s jurisdictional profiles. Id.

For the same reasons, it would have been obvious to include Walker’s outcome

probability feature as a second game configuration in the jurisdictional profile

associated with the second zone/location. EX1011,¶94 This modification would

have predictably resulted in Carter’s server determining a second game

configuration associated with the second location of the mobile gaming device

when determining that the second location is associated with the second zone’s

jurisdictional profile. Id.,¶95.

Carter teaches that the second zone/location “may have different

jurisdictional restrictions than the first zone.” EX1003,[0049]. It was well known

and acknowledged by the ’058 Patent itself that outcome probabilities of a slot

machine game, for example, are directly related to the game’s payout percentage.

EX1001,8:2-6; see also,EX1011,¶75. Many jurisdictions required different

minimum payout percentages for slot machine games. EX1011,¶40, ¶75, ¶95. In

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order to comply with a payout percentage required by the second jurisdiction,

which is different than the first jurisdiction, it would have been obvious for the

second outcome probability feature to specify different probabilities for game

outcomes than the first outcome probability feature incorporated in the first

jurisdictional profile. Id.,¶95. For example, the outcome probability feature in the

first jurisdictional profile may specify a probability of 1 in 8,000 for an outcome of

triple 7s in a virtual slot machine game while the second game outcome probability

feature in the second jurisdictional profile may specify a probability of 64 in 8,000

for the same outcome. Id.,¶96. This is similar to an embodiment of the ’058

Patent where “in a first configuration of a game, an outcome may have a

probability of 1/1000” and “[i]n a second configuration of a game, the outcome

may have a probability of 1/1002.” EX1001,12:6-9.

For the reasons discussed above, a PHOSITA would have been motivated to

comply with all jurisdictional gaming regulations including those related to payout

percentages. Supra,Claim 1(b);EX1011,¶97. Therefore, PHOSITA would have

similarly been motivated to incorporate a second outcome probability feature

corresponding to the restrictions of the second jurisdiction into Carter’s second

jurisdictional profile. EX1011,¶97.

As discussed above, Walker also teaches location/casino-specific features

used to enhance the player’s gaming experience. EX1004,[0020], [0283].

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Similarly, in one embodiment, each of Carter’s zones and therefore jurisdictional

profiles is associated with a different casino (e.g., “MGM”, “Park Place,” etc.).

EX1003,Fig. 2, [0040]. It would have been obvious to a PHOSTA to include the

second outcome probability feature in the jurisdictional profile associated with a

second casino in order to enhance the player’s gaming experience at that location

by offering different odds for specific game outcomes. EX1011,¶98. As taught by

Walker, a PHOSITA would have expected that enhancing the player’s gaming

experience could lead to increased use of the mobile gaming unit thereby resulting

in increased profits. Id. It would have been obvious to improve similar gaming

systems in the same way in order to achieve the benefits taught by Walker. Id.

[1(i)] generating, by the computer system, a second game outcome using the second game configuration;

Each of Carter’s local game servers (including the second local game server)

is a computer system that generates game outcomes. Supra,Claim 1(c). Walker

also teaches generating a game outcome based on the enabled feature. Id. For the

reasons discussed above, it would have been obvious to include Walker’s outcome

probability feature as a second game configuration in the jurisdictional profile

associated with the second zone/location. Supra,Claim 1(h). For the same reasons

as discussed with regard to claim limitation 1(c), it would have been obvious to a

PHOSITA to enable Carter’s second local game server to generate a second game

outcome using the second outcome probability feature as a second game

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configuration. Supra,Claim 1(c); see also, EX1011,¶100.

[1(j)] instructing the display screen of the mobile gaming device to display an indication of the second game outcome;

Carter’s mobile gaming unit includes a display screen and teaches that the

server may “report the outcome of the event to the mobile gaming unit,” but does

not expressly disclose that reporting a game outcome includes instructing the

display screen to display an indication the outcome. Supra,Claim 1(d). Walker

teaches a gaming device having a display screen that displays indications of

“outcomes of games played on the gaming device,” such as the electronic reels of a

virtual slot machine game. Id.

It would have been obvious to enable Carter’s second local game server to

determine a second game outcome using the second outcome probability feature as

a second game configuration. Supra,Claim 1(i). For the same reasons as discussed

above with regard to claim limitation 1(d), it would have also been obvious to a

PHOSITA to enable Carter’s second local game server to instruct the display

screen of the mobile gaming unit to display an indication of the second game

outcome. Supra,Claim 1(d); see also, EX1011,¶102.

[1(k)] determining a second payout associated with the second game outcome; and

Carter’s local game server determines the amount of the gambler’s winnings

based on the outcome of the game (i.e., “payout”). Supra,Claim 1(e). Walker

teaches separately determining a payout for a particular outcome in the game based

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on the enabled feature(s). Id.

It would have been obvious to enable Carter’s second local game server to

determine a second game outcome using the second outcome probability feature as

a second game configuration. Supra,Claim 1(i). For the same reasons as discussed

above with regard to claim limitation 1(e), it would also have been obvious to

enable the second local game server to determine a second payout based on the

second game outcome. Supra,Claim 1(e); see also, EX1011,¶104.

[1(l)] crediting the player account with a second amount based on the second payout.

As discussed above, it would have been obvious to enable the second local

game server to determine a second payout based on the second game outcome.

Supra,Claim 1(k). Carter’s local game server credits the gambler’s financial

account with the amount of the gambler’s winnings. Supra,Claim 1(f). For the

same reasons as discussed above with regard to claim limitation 1(f), it would have

been obvious for the second local server to credit the gambler’s financial account

with a second amount based on the second payout. Supra,Claim 1(f); see also,

EX1011,¶106.

2. Claim 7

7. The method of 1 further including: transmitting to the mobile gaming device, after determining the second location, an indication of the second game configuration.

Carter teaches wirelessly transmitting an indication of the available gaming

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opportunities to the mobile gaming device after learning the mobile device’s

location. EX1003,[0043]-[0044], Fig. 3 (steps 310-318). Walker teaches a server

computer 400 that enables a feature on a gaming device by transmitting an

“indication of a feature for use by the gaming device” to the gaming device:

The gaming device database may be used by computer 400 to, for

example, communicate with one or more gaming devices and to

identify a gaming device that data is being transmitted to or received

from. For example, the computer 400 may instruct a gaming device

as to which features should be enabled and/or made active at the

gaming device, transmit a random number to the gaming device,

transmit an indication of a feature for use by the gaming device . .

. .

EX1004,[0293](emphasis added).

Referring again to process 100A (FIG. 1A), if the feature should be

enabled, in step 115 the feature is enabled on the at least one gaming

device. In some embodiments, enabling the feature may comprise

storing an indication in a database (e.g., a software flag) and/or

transmitting a signal to a gaming device or peripheral device.

Id.,[0116](emphasis added); see also, id.,[0240], Fig. 1A.

Walker also teaches that it is beneficial to display indications of

active/enabled features on the gaming device’s display:

Applicants have further recognized that, in some embodiments,

players may benefit from a display device operable to display an area

containing game information and at least one area containing

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information related to one or more features available and/or active

on a gaming device.

Id.,[0045](emphasis added).

Also a component of slot machine 1100A is another display area

1135, for outputting information to a player. The display area 1135

may be utilized, for example, to inform a player of which features

are currently active on the slot machine 1100A and/or may provide a

way for the player to deactivate an active feature.

Id.,[0338](emphasis added).

Id.,Fig. 11A(excerpt).

It would have been obvious to include a second outcome probability feature

as a second game configuration in the jurisdictional profile associated with the

second zone/location. Supra,Claim 1(h). It would have also been obvious to a

PHOSITA to enable Carter’s second local server to transmit signals to the mobile

gaming unit causing it to display an indication of the currently active feature (i.e.,

“an indication of the second game configuration”) as taught by Walker.

EX1011,¶110.

Upon determining that the player has moved from the first zone/location to

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the second zone/location, the game controller server would send the second

jurisdictional profile to the second local game server. Id. At this point, it would be

obvious to a PHOSITA to enable the second local game server to transmit an

indication of the second outcome probability feature to the mobile gaming unit for

display. Id. Walker teaches it is beneficial to the players to display indications of

active features on the display of the gaming device. EX1004,[0045]. It would

have been obvious to also enable Carter’s mobile gaming unit to display the

received indication of the second outcome probability feature in order to achieve

this same benefit thereby improving similar gaming systems in the same way.

EX1011,¶110.

3. Claim 8

8. The method of 7 further including: instructing the mobile gaming device to display the indication of the second game configuration.

As discussed above, it would have been obvious to a PHOSITA to enable

Carter’s second local game server to transmit signals to the mobile gaming unit

instructing it to display an indication of the second outcome probability feature as

taught by Walker. Supra,Claim 7;EX1011,¶111.

4. Claim 9

9. The method of 1 further including transmitting to the mobile gaming device software for rendering the second game outcome according to the second game configuration.

The ’058 Patent specification discloses that “software for rendering a game

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according to a particular configuration may include software for displaying images

in the game according to the particular configuration, software for displaying a

sequence of images according to the particular configuration (e.g., software for

displaying an animated sequence according to the particular configuration).”

EX1001,12:34-40.

Walker’s “[f]eatures may affect . . . the way information about outcomes are

displayed or otherwise communicated to a player.” Id.,[0061]. In a slot machine

game embodiment, Walker teaches displaying “outcomes of games played on the

gaming device (e.g., electronic reels of a gaming device)” via “a video display that

displays simulations of reels.” Id.,[0234], [0333].

Walker enables features on a gaming device by “providing appropriate

instructions (e.g., in computer program code) to the gaming device that the gaming

device may execute in order to provide the feature.” EX1004,[0080]. Instructions

(i.e., “software”) may be provided by a remote computer to the gaming device’s

processor via transmission media such as “coaxial cables, copper wire and fiber

optics, . . . [or] acoustic or light waves, such as those generated during radio

frequency (RF) and infrared (IR) data communications.” Id.,[0221]-[0222].

Based on the teachings of Walker, it would have been obvious to enable

Carter’s second local server to transmit appropriate instructions (i.e., “software”) to

the mobile gaming unit enabling it to render the second game outcome according

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to the second outcome probability feature. EX1011,¶114. For example, it would

have been obvious to a PHOSITA to enable the second local game server to

transmit software to the mobile gaming unit causing it to display a video

simulation of the reel configuration dictated by the outcome probability feature of

the second jurisdictional profile in order to improve similar gaming systems in the

same way. Id.

5. Claim 19

19. A computer system comprising:

[19(a)] a processor operable to execute a set of instructions; and

Carter discloses a plurality of servers including a game controller server,

local servers, and a Home Gaming Register (HGR) (collectively, “the server

system”). EX1003,[0012], [0020], [0025], [0030], [0035], Figs. 1-2. Each server

includes a microprocessor operable to execute software/instructions that carry out

functions related to the management of wagering games played on mobile gaming

units:

It should be appreciated that such functional blocks may be realized

by any number of hardware and/or software components

configured to perform the specified functions. For example, the

present invention may employ various integrated circuit (IC)

components, e.g., memory elements, processing elements, logic

elements, look-up tables, and the like, which may carry out a variety

of functions under the control of one or more microprocessors or

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other control devices.

Id.,[0020](emphasis added).

[19(b)] a memory having stored thereon the set of instructions, in which the set of instructions, when executed by the processor, cause the computer system to perform a method comprising:

Each server in the server system includes a memory storing

software/instructions that when executed carry out functions related to the

management of wagering games played on mobile gaming units:

It should be appreciated that such functional blocks may be realized

by any number of hardware and/or software components configured to

perform the specified functions. For example, the present invention

may employ various integrated circuit (IC) components, e.g., memory

elements, processing elements, logic elements, look-up tables, and the

like, which may carry out a variety of functions under the control

of one or more microprocessors or other control devices.

Id.,[0020] (emphasis added); see also, id.,[0012], [0030], [0038], [0040].

[19(b)(i)] determining a first location of a mobile gaming device,

See,Claim 1(a).

[19(b)(ii)] determining a first game configuration associated with the first location,

See,Claim 1(b).

[19(b)(iii)] generating a first game outcome using the first game configuration,

See,Claim 1(c).

[19(b)(iv)] determining a first payout associated with the first game outcome,

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See,Claim 1(e).

[19(b)(v)] crediting a player account with a first amount based on the first payout,

See,Claim 1(f).

[19(b)(vi)] determining a second location of the mobile gaming device, wherein the second location is different from the first location,

See,Claim 1(g).

[19(b)(vii)] determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration,

See,Claim 1(h).

[19(b)(viii)] generating a second game outcome using the second game configuration,

See,Claim 1(i).

[19(b)(ix)] determining a second payout associated with the second game outcome, and

See,Claim 1(k).

[19(b)(x)] crediting the player account with a second amount based on the second payout.

See,Claim 1(l).

B. Carter in view of Walker in further view of Slot Payout Webpage Renders Claims 1 and 6 Obvious

The Slot Payout Webpage was published on the InsiderVLV website at least

as early as July 4, 2005. EX1005. The Slot Payout Webpage is an archived copy

that is currently accessible via the “Internet Archive” website (https://archive.org/

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a/k/a "Wayback Machine"), and the authenticity of the Slot Payout Webpage is

evidenced by the affidavit of Christopher Butler, dated May 12, 2017. Id.; see, e.g.,

Creston Elecs., Inc. v. Intuitive Building Controls, Inc., IPR2015-01460, Paper 14

(PTAB Jan. 14, 2016) at 12-15 (Internet Archive's affidavit of authenticity is

sufficient to authenticate documents as prior art). The Slot Payout Webpage

therefore qualifies as prior art with regard to the ’058 Patent under 35 U.S.C. §

102(b) (pre-AIA).

The Slot Payout Webpage is reasonably pertinent to the problem faced by

the inventors of the ’058 Patent. Specifically, the ’058 Patent, which is entitled

“Zone Dependent Payout Percentage,” is concerned with associating different

payout percentages with different locations. EX1001,1:42-47. The Slot Payout

Webpage presents an ordered list of locations and the associated payout

percentages of slot machine games at each location. EX1005. Therefore, the Slot

Payout Webpage is analogous to the claimed invention of the ’058 Patent.

1. Claim 6.

6. The method of 1, in which determining the first game configuration includes:

[6(a)] accessing a lookup table which contains an ordered list of locations and associated game configurations;

Carter’s jurisdictional profiles are stored in a database, which “may employ .

. . look-up tables, and the like.” EX1003,[0020], [0031]. The jurisdictional

profile includes “any information relative to the gambling restrictions and

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identification of the jurisdiction in from which a gambler may place his bet.”

Id.,[0037]. A jurisdiction is a location. Id.,[0010]. For the reasons discussed

above, it would have been obvious to a PHOSITA to include Walker’s location-

specific features in Carter’s jurisdictional profiles. Supra,IV.A.1, Claim 1(b).

Specifically, it would have been obvious to include Walker’s outcome probability

feature as a first game configuration in the jurisdictional profile associated with the

first zone/location. Id. Therefore, Carter in view of Walker teaches a look-up

table containing locations and associated game configurations.

Carter does not expressly disclose storing the locations associated with the

jurisdictional profiles in an ordered list. However, it would have been obvious to a

PHOSITA to store Carter’s jurisdictional profiles in a look-up table including an

ordered list of locations and associated jurisdictional information. EX1011,¶117.

The ’058 Patent discloses that an ordered list of locations “may be listed from East

to West, in alphabetical order, or in any other fashion.” EX1001,12:18-20. A

PHOSITA would have understood that ordered lists were extremely well-known as

a way to organize information for many years prior to the ’058 Patent.

EX1011,¶117. For example, the Slot Payout Webpage teaches an ordered list of

jurisdictions (cities/states) in alphabetical order with each jurisdictional entry

including a sub-list of locations within the jurisdiction and their associated slot

payout percentages:

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EX1005.

It would have been an obvious design choice to similarly store Carter’s

jurisdictional profiles in alphabetical order based on the name of the

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jurisdiction/location. EX1011,¶118.

[6(b)] finding within the lookup table the first location; and

Carter teaches that the HGR system searches a database containing “distinct

location information correlative to the physical location of the gaming unit 102 and

the gaming opportunities permitted in the jurisdiction in which the unit is located.”

EX1003,[0031]; see also, id.,[0043]. Carter further discloses storing such location

information in a lookup table. Id.,[0020]. The HGR system must find a first

jurisdiction in the look-up table in order to match it to the received location data.

[6(c)]determining that the first game configuration is associated with the first location.

Carter teaches matching the first location information to a first jurisdictional

profile. Supra,IV.A.1, Claim 1(b).

C. Luciano in view of Alcorn Renders Claims 1, 7-9, and 19 Obvious

In co-pending litigation, PO is alleging that permitting access to or

restricting use of different types of games based on the location of a mobile device

is determining a game configuration associated with a location. EX1032,6, 12.

Petitioner disagrees with PO’s broad interpretation of a “game configuration” as it

reads the word “configuration” out of the claim. To the extent determining a game

configuration associated with a location is broad enough to encompass determining

a type of game associated with a location, however, U.S. Patent No. 7,035,626 to

Luciano, Jr. (“Luciano”) discloses the “game configuration” limitations.

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Luciano was filed on November 12, 2003 and issued on April 25, 2006.

EX1006. Luciano therefore qualifies as prior art with regard to the ’058 Patent

under 35 U.S.C. §§ 102(a) and (e) (pre-AIA). The ’058 Patent is generally

directed to methods and systems that use the location of a gaming device to affect

gaming operations. Supra,II.A. Luciano discloses a cell phone enabling remote

participation in games of chance. EX1006,1:13-14, 1:49-52. Luciano’s gaming

system uses the location of the cell phone to determine a betting configuration

associated with the location. Id.,1:62-65. As such, Luciano is in the same field of

endeavor and is therefore analogous to the claimed invention of the ’058 Patent.

U.S. Patent No. 6,104,815 to Alcorn et al. (“Alcorn”) issued on August 15,

2000 and therefore qualifies as prior art with regard to the ’058 Patent under 35

U.S.C. § 102(b) (pre-AIA). EX1007. Alcorn also discloses a location-based

gaming system where a user participates in wagering games using a remote user

terminal, which may be a laptop or a “self-contained single unit that is portable and

communicates via radio waves . . . to a host server.” Id.,Abstract. The server uses

the location of the user terminal to determine whether or not to grant access to the

gaming system. Id.,7:13-20. Therefore, Alcorn’s gaming system also uses the

location of a gaming device to affect gaming operations. As such, Alcorn is in the

same field of endeavor and is therefore analogous to the claimed invention of the

’058 Patent.

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1. Claim 1

1. A method comprising:

Luciano discloses a “method allowing remote . . . betting using a cell

phone.” EX1006,1:49-52.

[1(a)] determining a first location of a mobile gaming device;

Luciano discloses a cell phone (i.e., “mobile gaming device”) enabling

remote participation in games of chance based on the location of the phone.

Id.,Abstract, 1:13-19, Fig. 1. The phone is E-911 compliant and able “to report the

phone’s location within a specified number of yards.” Id.,3:6-9. For example, the

phone may use GPS, triangulation and/or other location determination technology

to determine its position:

This invention pertains generally to games of chance played using

remote location technologies. More particularly, the present invention

allows a player to participate in remote bet placement, while

simultaneously providing location information on the bettor so that

the casino or other game provider can enforce wagering only from

places jurisdictions) where it is legal.

Id. at 1:13-19.

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Id. at Fig. 2.

The phone transmits its location data to a casino/virtual casino server

system. Id.,1:62-65, 4:8-17. The casino system includes a database that “uses the

E-911 location system to determine a current physical location of the caller.”

Id.,6:3-5. In one embodiment, the casino system determines the phone is located in

Massachusetts (i.e., “a first location”). Id.,1:67-2:2 (“If calling from a

Massachusetts location, the restrictions will both age-related and be limited to the

purchase of lottery tickets.”); see also, id.,2:18-22.

[1(b)] determining a first game configuration associated with the first location;

Luciano’s casino system determines the “allowed betting configuration”

associated with the phone’s location. Id.,2:11-18. In one embodiment, the casino

system determines that Massachusetts is associated with a “betting configuration”

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only allowing participation in lottery games (i.e., “a first game configuration”):

The system further comprises additional software that uses the

location and age data to determine applicable gaming or lottery

restrictions (in some jurisdictions, this will be applicable to betting on

live events such as horse racing, dog racing, etc.). In one preferred

embodiment, there will be a look-up tree or table which maps each

state (plus the District of Columbia) and a cut-off age (typically

either 18 or 21) to an allowed betting configuration. For example, a

call originating from within Massachusetts where the caller

provided an initial identifier that maps to an age of “greater than or

equal to 21” would allow the purchase of lottery tickets only.

Id.,2:11-22 (emphasis added).

Database machine 210 carries the data needed by the software running

on receiver 208 to make decisions about a caller's location (what

gaming may be done, if any, in the caller’s jurisdiction). Note that the

plurality of gaming servers 212 a–212 x can be used to provide games

allowed in different jurisdictions, such as full Nevada-style games

(Class III games), lottery and lottery-style games (central-

determination based games), bingo-based games (Class II games), or

any other classification allowed by U.S. jurisdictions (such as the

Texas hybrid games). Once a caller’s location has been determined

using the location/jurisdiction data in database 210 (including the

determination of which games, lotteries, or events to allow or not

allow the caller to place bets on), some check on the caller's age may

be made.

Id.,4:20-33.

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Database 504 uses the E-911 location system to determine a current

physical location of the caller, maps the location to a jurisdiction, and

then to that jurisdiction's gambling laws.

Id.,6:3-6.

[1(c)] generating, by a computer system, a first game outcome using the first game configuration;

Luciano’s casino system includes a plurality of gaming servers “used to

provide games allowed in different jurisdictions, such as full Nevada-style games

(Class III games), lottery and lottery-style games (central-determination based

games), bingo-based games (Class II games), or any other classification allowed by

U.S. jurisdictions (such as the Texas hybrid games).” Id.,4:23-29; see also,

id.,Figs. 2, 4-5. The game servers are computer systems that generate game results

(i.e., “outcomes”) for the games allowed by the betting configuration of the

jurisdiction. Id.,6:13-16 (“For security reasons, one preferred embodiment will

have all game play results be determined at the central server sites; the results are

then sent and displayed on the player's cell phone.”); see also, id.,4:13-19, 4:23-33,

Fig. 2. For example, a lottery game server runs the lottery game allowed by

Massachusetts (i.e., “the first game configuration”) and generates the results of the

lottery drawing (i.e., “first game outcome”). Id.,4:23-27, 5:24-27, 5:54-55, Fig. 4.

In one embodiment, the user’s “purchased tickets are kept on the lottery telephony

database, along with player ID data. Applications programs running on the same

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computer as the database can then check for winning entries.” Id.,7:19-24.

[1(d)] instructing a display screen of the mobile gaming device to display an indication of the first game outcome;

Luciano’s phone includes a display screen. Id. at Fig. 1 (showing a phone

with a display screen). After the winning numbers (i.e., “the first game outcome”)

are generated, the system notifies the user by “download[ing] the winning numbers

to the phone,” which brings any winning numbers to the player’s attention.

Id.,3:60-4:1. Display software may be “downloaded to the phone to show the

results of the game play in a realistic manner” thereby instructing the display

screen of the phone to display an indication of the first game outcome. Id.,6:10-13;

see also, id.,6:13-16 (“For security reasons, one preferred embodiment will have

all game play results be determined at the central server sites; the results are then

sent and displayed on the player's cell phone.”) (emphasis added).

[1(e)] determining a first payout associated with the first game outcome;

Luciano teaches storing a record of the player’s winnings (i.e., “payouts”) on

the phone. Id.,3:48-51. Luciano also teaches crediting and withdrawing money

from a player account. Id.,6:20-27 (“[I]n one preferred embodiment database 506

will also be an EFT account for casino players. A player . . . will maintain an on-

going balance as games are played. This is greatly preferred over attempting to

constantly make credits and withdrawals to a credit card or checking account.”).

Alcorn teaches a similar remote gaming system with a casino server that

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determines a “winning amount” (i.e., payout) associated with a game outcome:

[O]nce the communication link has been established and

authenticated, and the user is authorized to play a game . . . he can

immediately commence play by making an appropriate input via

keyboard/joystick 12. . . . In response thereto, PC 11 will display on

its monitor 18 a representation of the game being played and

communicate the player input to the server 15. The server will in turn

energize a random number generator, determine a game output, and

communicate the output back to the PC . . . . In the case of a win, the

casino server will have credited the player's account with the winning

amount after having initially decremented the player's account by the

amount originally wagered.

EX1007,8:3-20.

Based on the teachings of Alcorn, it would have been obvious to a

PHOSITA to enable Luciano’s lottery game server to determine a first payout

amount associated with a first game outcome. EX1011,¶127. For example, it

would have been obvious to enable the application programs running on Luciano’s

lottery database computer to determine a first payout after determining that the

user’s lottery ticket is a winning entry. Id. A PHOSITA would have expected

Luciano’s lottery game server to determine the payout based on the game outcome

in order to enable it to credit the correct amount to the player’s account. Id.

[1(f)] crediting a player account with a first amount based on the first payout;

Luciano generally teaches crediting a player’s account based on the player’s

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gaming activities. EX1006,8:18-20 (“The player's accounts are updated (credited

or billed, . . . ) in accordance with the player's choice of billing types.”). Alcorn

teaches a server that determines the outcome of a game, determines the winning

amount corresponding to the outcome, and credit’s the player’s account with the

winning amount. EX1007,8:3-20.

As discussed above, it would have also been obvious to enable Luciano’s

Luciano’s lottery game server to determine a first payout based on the first game

outcome. Supra,Claim 1(e). Based on the teachings of Alcorn, it would have also

been obvious to a PHOSITA to enable Luciano’s casino system to credit the

player’s account with the first payout amount after determining the lottery game

outcome. EX1011,¶129. Cashless gaming systems were well known for many

years prior to the ’058 Patent. Id. As such, it would have been obvious to

incorporate known cashless gaming methods, such as taught by Alcorn, into

Luciano’s gaming system in order to improve similar gaming systems in the same

way. Id.

[1(g)] determining a second location of the mobile gaming device, wherein the second location is different from the first location;

Luciano’s server uses the E-911 location data of the phone to determine the

phone’s physical location. Supra,Claim 1(a). In one embodiment, the server

determines the phone is located in Nevada (i.e., “a second location”), which is

different from Massachusetts (i.e., “the first location”). EX1006,1:65-67.

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[1(h)] determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration;

Luciano’s casino system determines the “allowed betting configuration”

associated with the phone’s location. Supra,Claim 1(b). In one embodiment, the

casino system determines that Nevada is associated with a “betting configuration”

allowing participation in “full Nevada-style games (Class III games), lottery and

lottery-style games (central-determination based games), bingo-based games

(Class II games), or any other classification allowed by U.S. jurisdictions (such as

the Texas hybrid games)” (i.e., “a second game configuration”). EX1006,1:65-67,

4:20-33. The Nevada betting configuration (i.e., “the second game configuration”)

is different from the Massachusetts betting configuration (“i.e., “the first game

configuration”):

The system receives the phone call data (location data and initial

identifier), and makes a determination of the applicable laws

regarding the purchase of lottery tickets or placing bets at a casino (or

virtual casino) accordingly. For example if the caller is calling from a

Nevada location, the only applicable restriction is the caller’s age. If

calling from a Massachusetts location, the restrictions will both age-

related and be limited to the purchase of lottery tickets.

Id.,1:62-2:2; see also, id.,4:20-33.

[1(i)] generating, by the computer system, a second game outcome using the second game configuration;

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Luciano’s casino system includes a plurality of gaming servers “used to

provide games allowed in different jurisdictions.” Id.,4:23-25; see also, id. at Figs.

2, 4-5. The game servers are computer systems that generate game results (i.e.,

“outcomes”) for the games allowed by the betting configuration of the jurisdiction.

Supra,Claim 1(c). For example, a casino game server runs a Class III “Nevada-

style game” in accordance with the Nevada betting configuration (i.e., “the second

game configuration”) and generates the game play results (i.e., “a second game

outcome”). EX1006,6:13-16.

[1(j)] instructing the display screen of the mobile gaming device to display an indication of the second game outcome;

The casino game server instructs software on the phone to display the game

play results (i.e., “an indication of the second game outcome”) on the phone’s

display screen:

Casino game play is enabled by a level 2 cell phone, which allows

display software to be downloaded to the phone to show the results of

the game play in a realistic manner. For security reasons, one

preferred embodiment will have all game play results be determined at

the central server sites; the results are then sent and displayed on

the player's cell phone.

Id.,6:10-16(emphasis added).

[1(k)] determining a second payout associated with the second game outcome; and

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As discussed above, Luciano teaches storing a record of the player’s

winnings (i.e., “payouts”) on the phone and teaches crediting and withdrawing

money from a player credit account. Supra,Claim 1(e). Alcorn teaches a similar

remote gaming system with a casino server that generates a “winning amount”

(i.e., payout) associated with a game outcome. Id.

Based on the teachings of Alcorn, it would have been obvious to a

PHOSITA to enable Luciano’s casino game server to determine a second payout

amount associated with the second game outcome. EX1011,¶131. For example, it

would have been obvious to enable the software running on the game server to

determine a second payout amount after generating the second game outcome

thereby improving similar gaming systems in the same way. Id.

[1(l)] crediting the player account with a second amount based on the second payout.

Luciano generally teaches crediting a player’s account based on the player’s

gaming activities. Supra,Claim 1(f). Alcorn teaches a casino server that

determines the outcome of a play in the game, determines the winning amount

corresponding to the outcome, and credit’s the player’s account with the winning

amount. Id.

As discussed above, it would have been obvious to enable Luciano’s lottery

game server to determine a second payout based on the second game outcome.

Supra,Claim 1(k). Based on the teachings of Alcorn, it would also have been

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obvious to a PHOSITA to enable Luciano’s casino system to credit the player’s

account with the second payout amount after determining the casino game

outcome. EX1011,¶133.

2. Claim 7

7. The method of 1 further including:

[7(a)] transmitting to the mobile gaming device, after determining the second location, an indication of the second game configuration.

After determining the phone is located in a jurisdiction allowing casino

games, such as Nevada (i.e., “the second location”), Luciano’s casino system

transmits “specific game software real-time” to the phone or “enable[s] game play

at the virtual casino end only on allowed games and signal[s] the cell phone which

game or games can be played (i.e., a bit string turning certain games on or off).”

EX1006,7:57-64; see also, id. at Fig. 7 (step 708). Both the game software and

signals indicating which game or games can be played are “an indication of the

second game configuration.”

3. Claim 8

8. The method of 7 further including:

[8(a)] instructing the mobile gaming device to display the indication of the second game configuration.

As discussed with regard to Claim 7, Luciano’s casino system transmits

game software to the phone, which is “an indication of the second game

configuration.” Supra,Claim 7. The game software can include “display software

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to be downloaded to the phone to show the results of the game play in a realistic

manner” thereby displaying an indication of the second game configuration.

EX1006,6:10-13.

4. Claim 9

9. The method of 1 further including transmitting to the mobile gaming device software for rendering the second game outcome according to the second game configuration.

After determining the phone is located in a jurisdiction allowing casino

games, such as Nevada (i.e., “the second location”), Luciano’s casino system

transmits “specific game software real-time” to the phone in accordance with the

Nevada’s betting configuration (i.e., “the second game configuration”). Id.,7:57-

60. The game software can include “display software to be downloaded to the

phone to show the results of the game play in a realistic manner” (i.e., “software

for rendering the second game outcome”). Id.,6:10-13.

5. Claim 19

19. A computer system comprising:

[19(a)] a processor operable to execute a set of instructions; and

Luciano’s casino system includes one or more computers (i.e., “processors”)

executing software (i.e., “a set of instructions”) implementing gaming system

functions:

Inside casino 204 the incoming call is connected to a

receiver/processor 208. Receiver 208 is operably connected to a LAN

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inside the casino (or virtual casino), being able to communicate with

database machine 210 and individual gaming units (servers) 212 a

through 212 x. Depending on the size of the installation, the entities

shown as separate computers on a LAN my be larger or fewer in

number, scaled to the services to be provided.

Id.,4:12-19 (emphasis added).

The system further comprises additional software that uses the

location and age data to determine applicable gaming or lottery

restrictions (in some jurisdictions, this will be applicable to betting on

live events such as horse racing, dog racing, etc.).

Id.,2:11-15.

Database machine 210 carries the data needed by the software running

on receiver 208 to make decisions about a caller's location (what

gaming may be done, if any, in the caller's jurisdiction).

Id.,4:20-23; see also, id.,3:17-19.

[19(b)] a memory having stored thereon the set of instructions, in which the set of instructions, when executed by the processor, cause the computer system to perform a method comprising:

A PHOSITA would understand that Luciano’s one or more computers

executing software would be based on a Von Neumann Architecture, which

requires a computer’s tasks to be programmed by instructions stored in memory as

a list of operations to be executed by the computer(s). EX1011,¶136. Therefore,

Luciano’s one or more computers inherently meet this claim limitation. Id.

Alternatively, it would have been obvious to a PHOSITA to store software

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executed by a computer system on a memory. Id.,¶137.

[19(b)(i)] determining a first location of a mobile gaming device,

See,Claim 1(a).

[19(b)(ii)] determining a first game configuration associated with the first location,

See,Claim 1(b).

[19(b)(iii)] generating a first game outcome using the first game configuration,

See,Claim 1(c).

[19(b)(iv)] determining a first payout associated with the first game outcome,

See,Claim 1(e).

[19(b)(v)] crediting a player account with a first amount based on the first payout,

See,Claim 1(f).

[19(b)(vi)] determining a second location of the mobile gaming device, wherein the second location is different from the first location,

See.Claim 1(g).

[19(b)(vii)] determining a second game configuration associated with the second location, wherein the second game configuration is different from the first game configuration,

See,Claim 1(h).

[19(b)(viii)] generating a second game outcome using the second game configuration,

See,Claim 1(i).

[19(b)(ix)] determining a second payout associated with the second game outcome, and

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See,Claim 1(k).

[19(b)(x)] crediting the player account with a second amount based on the second payout.

See,Claim 1(l).

D. Luciano in view of Alcorn in further view of Slot Payout Webpage Renders Claims 1 and 6 Obvious

1. Claim 6.

6. The method of 1, in which determining the first game configuration includes:

[6(a)] accessing a lookup table which contains an ordered list of locations and associated game configurations;

Luciano teaches that determining the betting configuration for

Massachusetts (i.e., “the first game configuration”) includes accessing “a look-up

tree or table which maps each state . . . to an allowed betting configuration:”

In one preferred embodiment, there will be a look-up tree or table

which maps each state (plus the District of Columbia) and a cut-off

age (typically either 18 or 21) to an allowed betting configuration.

For example, a call originating from within Massachusetts where the

caller provided an initial identifier that maps to an age of “greater than

or equal to 21” would allow the purchase of lottery tickets only.

EX1006,2:15-22.

Luciano does not expressly disclose storing the states in the look-up table in

an ordered list. However, it would have been obvious to a PHOSITA to configure

Luciano’s look-up table to include an ordered list of states and their associated

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betting configurations. EX1011,¶140. The ’058 Patent discloses that an ordered

list of locations “may be listed . . . in alphabetical order.” EX1001 at 12:18-20. A

PHOSITA would have understood that ordered lists were extremely well-known as

a way to organize information for many years prior to the ’058 Patent.

EX1011,¶140. For example, the Slot Payout Webpage teaches an ordered list of

jurisdictions (cities/states) in alphabetical order with each jurisdictional entry

including a sub-list of locations within the jurisdiction and their associated slot

payout percentages. EX1005. It would have been an obvious design choice to

similarly store Luciano’s states in alphabetical order. EX1011,¶141.

[6(b)] finding within the lookup table the first location; and

Luciano discloses finding Massachusetts (i.e., “the first location”) in the

look-up table. EX1006,2:15-22.

[6(c)]determining that the first game configuration is associated with the first location.

Luciano casino system determines that Massachusetts is associated with a

“betting configuration” only allowing participation in lottery games (i.e., “a first

game configuration”) by mapping each state (i.e., location) to a betting

configuration. Supra,IV.C.1, Claim 1(b).

V. CONCLUSION

For the forgoing reasons, Petitioner respectfully requests inter partes review

of the Challenged Claims.

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Respectfully submitted, ERISE IP, P.A. BY: /s/ Eric A. Buresh Eric A. Buresh, Reg. No. 50,394 Megan J. Redmond, (pro hac vice to be submitted) Callie A. Pendergrass, Reg. No. 63,949 COUNSEL FOR PETITIONER ___

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VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)

A. Real Parties-In-Interest and Related Matters

FanDuel Inc. and FanDuel Limited are the real parties-in-interest. The ’058

Patent is presently the subject of a patent infringement lawsuit asserted on June 13,

2016 by CG Technology Development, LLC et al. in the United States District

Court for the District of Nevada, Case No. 2:16-cv-00801. See, EX1031. In

addition to the aforementioned District Court case involving Petitioner and the

inventor, the ’058 Patent has also been asserted in the following related matters:

• CG Technology Development, LLC et al. v 888 Holdings PLC, Case

No. 2:16-cv-00856 (D. Nevada); and

• CG Technology Development, LLC et al. v Bwin Party Digital

Entertain., Case No. 2:16-cv-00871 (D. Nevada).

B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)

Petitioner provides the following designation and service information for

lead and back-up counsel. 37 C.F.R. § 42.8(b)(3) and (b)(4).

Lead Counsel Back-Up Counsel Eric A. Buresh (Reg. No. 50,394) eric.buresh@eriseip.com Postal and Hand-Delivery Address: ERISE IP, P.A. 6201 College Blvd., Suite 300 Overland Park, Kansas 66211 Telephone: (913) 777-5600 Fax: (913) 777-5601

Megan J. Redmond (pro hac vice to be submitted) megan.redmond@eriseip.com Postal and Hand-Delivery Address: ERISE IP, P.A. 6201 College Blvd., Suite 300 Overland Park, Kansas 66211 Telephone: (913) 777-5600 Fax: (913) 777-5601

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Callie A. Pendergrass (Reg. No. 63,949) callie.pendergrass@eriseip.com Postal and Hand-Delivery Address: ERISE IP, P.A. 6201 College Blvd., Suite 300 Overland Park, Kansas 66211 Telephone: (913) 777-5600 Fax: (913) 777-5601

IPR2017-01491 U.S. Patent No. 8,771,058

APPENDIX OF EXHIBITS

Exhibit 1001 U.S. Patent No. 8,771,058 to Alderucci, et al. Exhibit 1002 File History of U.S. Patent No. 8,771,058 Exhibit 1003 U.S. Patent Application Publication No. 2002/0147049 to Carter

Sr. Exhibit 1004 U.S. Patent Application Publication No. 2004/0005919 to Walker,

et al. Exhibit 1005 Affidavit of Christopher Butler Dated May 12, 2017 and Exhibit A

Slot Machine Payouts by Casino / City / State (July 4, 2005). Retrieved from Internet Archive: https://web.archive.org/web/20050704083535/http://www.insidervlv.com:80/slotspayouts.html

Exhibit 1006 U.S. Patent No. 7,035,626 to Luciano, Jr. Exhibit 1007 U.S. Patent No. 6,104,815 to Alcorn, et al. Exhibit 1008 U.S. Patent Publication No. 2004/0176162 to Rothschild Exhibit 1009 International Casino Law Third Edition, Institute for the Study of

Gambling and Commercial Gaming (Anthony N. Cabot, William N. Thompson, Andrew Tottenham, & Carl G. Braunlich eds., 1999)

Exhibit 1010 No Gambling on Trains, The News Journal (Wilmington, Delaware), May 12, 1910, at 4

Exhibit 1011 Declaration of Mr. Garry Kitchen Exhibit 1012 Curriculum Vitae of Mr. Garry Kitchen Exhibit 1013 Peter S. Greenberg, Cruise Ships Find Place for Casinos, Los

Angles Times, May 19, 1985, at Part VII, 2 and 7 Exhibit 1014 Ships with Slots in Violation, The Brownsville Herald, February

11, 1977, at 8A Exhibit 1015 Paul Jacobs, Bill Tries to Sink Floating Casinos, Los Angles

Times, June 8, 1992, at A3 and A15 Exhibit 1016 U.S. Patent No. 5,618,232 to Martin Exhibit 1017 Nevada Gaming Regulation 5 Exhibit 1018 Dwight and Louise Crevelt, Slot Machine Mania, Gollehon Press,

Inc. (1988) Exhibit 1019 Jim Kilby and Jim Fox, Casino Operations Management, John

Wiley & Sons, Inc. (1998)

IPR2017-01491 U.S. Patent No. 8,771,058

Exhibit 1020 BingoStar Products Webpage (April 22, 1999). Retrieved from Internet Archive: http://web.archive.org/web/19990422015740/http://www.fortunet.com/products.html#PORTABLE

Exhibit 1021 BingoStar Webpage (April 21, 1999). Retrieved from Internet Archive: http://web.archive.org/web/19990421233711/http://www.fortunet.com/bingostar.html

Exhibit 1022 Ryan Nakashima, Nevada OKs gambling on the go, The Courier-Journal (Louisville, Kentucky), April 2, 2006 at D7

Exhibit 1023 Fox Butterfield, Coming to a Nevada casino soon: Playing the slots wirelessly, The Arizona Republic, July 4, 2005 at A21

Exhibit 1024 Nevada Approves New Mobile Gambling Rules Exhibit 1025 Minutes of the Meeting of the Assembly Committee on Judiciary

Seventy-Third Session, April 8, 2005 Exhibit 1026 Elizabeth White, Guinn gives OK to wireless gaming devices in

casinos, Las Vegas Sun, June 2, 2005 (https://lasvegassun.com/news/2005/jun/02/guinn-gives-ok-to-wireless-gaming-devices-in-casin/) Retrieved Feb. 7, 2017

Exhibit 1027 Naomi Graychase, Diamond I Rolls the Dice, February 23, 2005 (http://www.wi-fiplanet.com/columns/article.php/3485206/Diamond-I-Rolls-the-Dice.htm) Retrieved February 6, 2017

Exhibit 1028 U.S. Patent Application No. 2004/0162124 to Barton Exhibit 1029 The Von Neumann Computer Model (http://www.c-

jump.com/CIS77/CPU/VonNeumann/lecture.html) Retrieved May 30, 2017

Exhibit 1030 Jon Neumann, First Draft of a Report on the EDVAC, The University of Pennsylvania (June 30, 1945)

Exhibit 1031 First Amended Complaint in CG Technology Development, LLC et al. v. FanDuel, Inc., Case No. 2:16-cv-00801 (District of Nevada)

Exhibit 1032 Exhibit 2 to Plaintiffs’ Initial Infringement Contentions

IPR2017-01491 U.S. Patent No. 8,771,058

CERTIFICATION OF WORD COUNT

The undersigned certifies pursuant to 37 C.F.R. §42.24 that the foregoing

Petition for Inter Partes Review, excluding any table of contents, mandatory notices under 37 C.F.R. §42.8, certificates of service or word count, or appendix of exhibits, contains 13,917 words according to the word-processing program used to prepare this document (Microsoft Word). Dated: May 31, 2017 Respectfully submitted, BY: /Eric A. Buresh/_______________ Eric A. Buresh, Reg. No. 50,394 Megan J. Redmond, (pro hac vice pending)

Callie A. Pendergrass, Reg. No. 63,949 6201 College Blvd., Suite 300 Overland Park, KS 66211 P: (913) 777-5600

F: (913) 777-5601 eric.buresh@eriseip.com megan.redmond@eriseip.com callie.pendergrass@eriseip.com COUNSEL FOR PETITIONER

IPR2017-01491 U.S. Patent No. 8,771,058

CERTIFICATE OF SERVICE ON PATENT OWNER

UNDER 37 C.F.R. § 42.105(a) Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies

that on May 31, 2017, a complete and entire copy of this Petition for Inter Partes Review and Exhibits were provided via Federal Express to the Patent Owner by serving the correspondence address of record for the ’058 Patent and Patent Owner’s litigation counsel: INNOVATION DIVISION Cantor Fitzgerald, L.P. 110 East 59th Street (6th Floor) New York, NY 10022 Robert F. Shaffer Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Avenue, NW Washington, DC 20001-4413 Respectfully submitted, ERISE IP, P.A. BY: /Eric A. Buresh/_______________ Eric A. Buresh, Reg. No. 50,394 Megan J. Redmond, (pro hac vice pending)

Callie A. Pendergrass, Reg. No. 63,949 6201 College Blvd., Suite 300 Overland Park, KS 66211 P: (913) 777-5600

F: (913) 777-5601 eric.buresh@eriseip.com megan.redmond@eriseip.com callie.pendergrass@eriseip.com COUNSEL FOR PETITIONER