VSR Industries Inc.v.Cole Kepro International, LLC

Patent Trial and Appeal Board

Apr 28, 2016

10253151 (P.T.A.B. Apr. 28, 2016)

Trials@uspto.gov
571-272-7822
Paper 33
Entered: April 28, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
VSR INDUSTRIES, INC.,
Petitioner,
v.
COLE KEPRO INTERNATIONAL, LLC,
Patent Owner.
____________
Case IPR2015-00182
Patent 6,860,814 B2
____________
Before BENJAMIN D. M. WOOD, CARL M. DEFRANCO, and
TIMOTHY J. GOODSON, Administrative Patent Judges.
GOODSON, Administrative Patent Judge.
FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
VSR Industries, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting an inter partes review of claims 1–14 of U.S. Patent No.
6,860,814 B2 (“the ’814 patent,” Ex. 1001). Cole Kepro International, LLC
(“Patent Owner”) waived its right to file a preliminary response to the
Petition. See Paper 7. We instituted trial as to claims 1–14 of the ’814
patent on the following grounds of unpatentability:
A. Obviousness of claims 1–14 over Fraley;1
B. Obviousness of claims 1–14 over Fraley and Okada;2
C. Obviousness of claims 1–14 over Runte;3
D. Obviousness of claims 1–14 over Runte and Okada; and
E. Obviousness of claims 1–14 over Smith.4
Paper 8, 11 (“Dec. to Inst.”).
After institution, Patent Owner filed a Patent Owner Response5 (Paper
11, “PO Resp.”), and Petitioner filed a Reply6 (Paper 22, “Reply”). Patent
Owner also filed two motions to seal, which are addressed below. Papers
13, 25.
An oral hearing was conducted on January 27, 2016. A transcript of
the oral hearing is included in the record. Paper 29 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the
patentability of claims 1–14. For the reasons discussed below, Petitioner has

1 U.S. Patent No. 3,796,433, issued Mar. 12, 1974 (Ex. 1003, “Fraley”).
2 U.S. Patent No. 4,718,672, issued Jan. 12, 1988 (Ex. 1006, “Okada”).
3 U.S. Patent No. 3,940,136, issued Feb. 24, 1976 (Ex. 1008, “Runte”).
4 U.S. Patent No. 5,351,176, issued Sept. 27, 1994 (Ex. 1009, “Smith”).
5 A redacted version of the Patent Owner Response was filed as Paper 12.
6 A redacted version of the Reply was filed as Paper 23.
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demonstrated by a preponderance of the evidence that these claims are
unpatentable.
A. Related Proceedings
Petitioner indicates that Patent Owner asserted the ’814 patent against
Petitioner in a lawsuit in the U.S. District Court for the District of Nevada
styled Cole Kepro International, LLC v. VSR Industries Inc., No. 2:14-cv-
01416-JCM-CWH. Pet. 1. However, Petitioner states that Patent Owner has
not served the complaint on Petitioner. Id.
B. The ’814 Patent
The ’814 patent relates to a gaming apparatus housed in a cabinet.
Ex. 1001, Abstract. The Background of the Invention describes that a “wide
variety of devices are known for implementing games of skill and/or
chance.” Id. at 1:14–15. “[T]wo very common types of gaming devices”
are the mechanical type slot machine and the video gaming device. Id. at
1:15–17, 27–28. According to the Background, video gaming devices
include a cathode ray tube (CRT) for displaying information housed inside
of a cabinet. Id. at 1:28–29. “The CRT is supported on a shelf in a main
portion of the cabinet and [is] viewable through a[n] opening in the door.”
Id. at 1:35–37. A drawback that the ’814 patent identifies with prior art
gaming devices is that they are manufactured as distinct devices: “a
manufacturer custom designs one particular device to be configured as a
video gaming device, and custom designs another particular device to be a
mechanical reel type device.” Id. at 1:41–45. Another problem is the size
and weight of the devices: “CRT based video gaming devices are very large
because they must accommodate the CRT.” Id. at 1:56–57.
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The ’814 patent seeks to address these problems with a device that “is
readily configured to present one of several different games.” Id. at 2:20–
21. Figures 4 and 5 are reproduced below.

Figure 4 is a perspective view of gaming device 120 arranged in a
configuration as a video type gaming device. Id. at 3:27–28, 47–49. Figure
5 is a perspective view of gaming device 120 with door 34 in an open
position and certain components removed from the device. Id. at 3:29–32.
As depicted in Figures 4 and 5, door 34 includes window 66, through
which display 190 is visible. Id. at 8:55–56. The ’814 patent describes that
“[i]n a preferred embodiment, the display 190 comprises a liquid crystal
display (LCD) screen or other substantially planar or thin display.” Id. at
8:30–32. According to the ’814 patent, the configuration of gaming device
120 “is such that the total size of the device can be reduced substantially as
compared to similar devices utilized today.” Id. at 9:59–62. The ’814
further explains:
Advantageous [sic] are also realized by connecting the video
display to the door of the gaming device. In particular, because
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the display is connected to the door, no supports are needed in
the cabinet for the display, freeing up substantial space within
the cabinet 22 for other components, such as circuitry and the
like. Also, when the door is moved to its open position, the
display is moved out of the interior of the cabinet, making the
interior portion of the cabinet more accessible. The attachment
of the display to the door also renders the display more readily
accessible for servicing or removal.
Id. at 10:46–56.
C. Illustrative Claim
The ’814 patent includes claims 1–14. Claims 1 and 8 are
independent. Claims 2–7 depend from claim 1, and claims 9–14 depend
from claim 8. Claim 1 is illustrative of the challenged claims, and is
reproduced below, with line breaks and indentation added for clarity:
1. A gaming apparatus configured to present one or more
wager-based games comprising:
a cabinet,
a door connected to said cabinet,
said door moveable between a first position and a
second position,
said door in said first position cooperating with
said cabinet to define a generally closed
interior space,
said door in said second position permitting access
to said interior space,
said door having an inner surface and an outer
surface and an opening therein,
a generally planar video display
mounted to said inner surface of said door and
movable with said door when said door is moved
between said first and second positions,
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said video display aligned with said opening in
said door to be viewable therethrough, and
at least one gaming controller,
said gaming controller located in said interior
space and
connected to said video display to provide game
information for display by said video
display.
Ex. 1001, 11:2–17.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard,
and absent any special definitions, we give claim terms their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
1. “gaming apparatus [. . .] configured to present one or more
wager-based games”
The preambles of claims 1 and 8 recite “[a] gaming apparatus [. . .]
configured to present one or more wager-based games.” In our Decision to
Institute, we were not persuaded by Petitioner’s argument that this phrase
should be given no weight. Dec. to Inst. 5. We determined that the phrase
“is properly construed to require that the gaming apparatus be arranged such
that it presents one or more wager-based games.” Id. Patent Owner appears
to be in agreement with this construction. See PO Resp. 12, 41 n.9.
Petitioner’s Reply states that “Petitioner accepts the Board’s construction of
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this term.” Reply 2; see also Tr. 16:4–10. Therefore, for the reasons set
forth in the Decision to Institute, and in view of the parties’ agreement, we
maintain our construction of “gaming apparatus [. . .] configured to present
one or more wager-based games” in claims 1 and 8 as requiring that the
gaming apparatus is arranged such that it presents one or more wager-based
games.
2. “a reduced dimension from said front to said back”
Claim 4 recites a cabinet having “a reduced dimension from said front
to said back.” Our Decision to Institute determined that this limitation
“encompasses at least a cabinet having a width greater than its depth.” Dec.
to Inst. 6. Neither party disputes this construction. See Tr. 16:4–10; PO
Resp. 11–18. Accordingly, for the reasons set forth in the Decision to
Institute, and in the absence of any challenge from the parties, we maintain
our construction of this term.
3. “cabinet”
Patent Owner contends that the term “cabinet,” which appears in
independent claims 1 and 8, should be construed to mean “an upright cabinet
or housing.” PO Resp. 14. Patent Owner’s argument for this construction
points out that the figures of the ’814 patent show the front, sides, and back
of the cabinet arranged vertically. Id. at 13. Patent Owner also argues that
the usage of “cabinet” in the prior art supports its proposed construction,
insofar as Fraley describes its housing as a cabinet and depicts it as an
upright structure. Id. at 13–14 (citing Ex. 1003, 3:4–5, Fig. 2).
Petitioner disputes Patent Owner’s construction. Reply 2–3.
Petitioner argues that Patent Owner has been collecting royalties under the
’814 patent for devices that do not have upright cabinets, and therefore
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Patent Owner’s licensing conduct is inconsistent with Patent Owner’s
proposed construction. Id.
We are not persuaded that the term “cabinet” requires a housing that is
“upright,” as Patent Owner proposes. As an initial point, Patent Owner’s
proposal obfuscates the scope of this claim term rather than clarifying it, as
what it means for a cabinet to be “upright” is vague. At the hearing, Patent
Owner’s counsel indicated that “an upright cabinet is one that is going to
display the display . . . in a more vertical orientation as opposed to a
horizontal which is a table top.” Tr. 28:6–9. Patent Owner’s counsel also
argued that a cabinet must be taller than it is wide. Id. at 30:12–13; see also
id. at 29:5. It is unclear whether either of these features is sufficient, or if
both are necessary, for a cabinet to be “upright.” For example, it is unclear
if a cabinet that is taller than it is wide, that includes a display on a
horizontal top surface, would qualify as “upright” under Patent Owner’s
construction.
More significantly, the ’814 patent does not support Patent Owner’s
proposed construction. That the figures show cabinets that are taller than
they are wide is not sufficient, by itself, to limit the claim scope to only
cabinets having that feature. The Federal Circuit has repeatedly warned
against reading into the claims limitations from a preferred embodiment in
the specification. See, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.”); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
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description may not be read into a claim when the claim language is broader
than the embodiment.”).
Patent Owner does not identify any disclosure in the Specification
disclaiming non-upright cabinets or indicating that only upright housings
qualify as cabinets. See Tr. 31:1–32:17. The portion of the Specification on
which Patent Owner relies simply describes that the cabinet has a front and
back, which does not support Patent Owner’s proposal that a cabinet must be
upright. See id. (citing Ex. 1001, 3:58–65); PO Resp. 13 (citing Ex. 1001,
3:66–4:3). In any event, the Specification makes clear that this description
is of one embodiment (Ex. 1001, 3:55), and that “cabinet 22 need not have
the specific configuration illustrated.” Id. at 4:14–15. Indeed, the
Specification repeatedly emphasizes that the described embodiments are
merely illustrative and non-limiting. See id. at 3:37–42, 10:62–67. Patent
Owner’s arguments based on Fraley are also unpersuasive because the cited
portion of Fraley merely refers to “a box-like cabinet or housing 10” that is
shown in the figures as being taller than it is wide, but does not suggest that
a housing must be taller than it is wide in order to qualify as a cabinet. See
Ex. 1003, 3:4–5, Fig. 2.
Accordingly, we do not accept Patent Owner’s proposed construction
of “cabinet.” Having decided that a “cabinet” as recited in claims 1 and 8
need not be “upright,” we do not perceive that further explication of the
meaning of “cabinet” is necessary. See Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
construed that are in controversy, and only to the extent necessary to resolve
the controversy.”).
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4. “gaming controller”
Petitioner proposes that the term “gaming controller,” which appears
in claims 1 and 8, means “hardware and/or software that can be programmed
to control game play.” Pet. 12 (citing Ex. 1001, 5:31–34, 5:63–65). Patent
Owner proposes that the term should be construed as a “controller including
a random number generator and configured to provide data to the video
display for presenting wager-based game information and operate a plurality
of peripheral gaming devices.” PO Resp. 18.
Looking first at Patent Owner’s proposal, the intrinsic record does not
support that the features included therein are necessary to the meaning of a
gaming controller. Patent Owner’s construction is based primarily on the
Specification’s disclosure of capabilities that the controller “may” have. For
example, in support of the random number generator feature, Patent Owner
cites the ’814 patent’s disclosure that “the controller may be arranged to
generate a signal . . . based on a determined random outcome for the game.”
Id. at 17 (quoting Ex. 1001, 5:43–45) (emphasis added). Similarly, Patent
Owner’s proposal that the controller must operate a plurality of peripheral
devices is based on the disclosure that the controller “may” be arranged to
receive an input signal from a coin acceptor and bill acceptor and “may” also
control other mechanisms associated with the device. See id. at 17–18; Ex.
1001, 5:31–56. We are not persuaded that a skilled artisan would
understand these features, which are described as optional in the
Specification, to inhere in the meaning of a gaming controller. With respect
to providing data to the video display, we note that claims 1 and 8 expressly
recite as a separate limitation that the gaming controller is “connected to said
video display to provide game information for display by said video
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display.” It is, therefore, unnecessary to repeat this feature as part of the
construction of “gaming controller.”
Turning to Petitioner’s proposal, the Specification supports that the
controller can include software, hardware, or both. See Ex. 1001, 5:63–65.
Patent Owner argues that “a general purpose controller which ‘can be
programmed to control game play’ is not encompassed by a BRI of this
term” because the language of claims 1 and 8 indicates that the controller is
configured to provide game information to the video display. See PO Resp.
16. We agree with Patent Owner that hardware or software that has not been
programmed to control gaming but is capable of being so programmed is not
yet a gaming controller. Therefore, we construe “gaming controller” to
mean “hardware and/or software that is programmed to control game play.”
B. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must establish facts supporting its challenges by a preponderance
of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
unpatentable under § 103(a) if the differences between the claimed subject
matter and the prior art are such that the subject matter, as a whole, would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved based on underlying factual determinations, including: (1) the
scope and content of the prior art; (2) any differences between the claimed
subject matter and the prior art; (3) the level of skill in the art; and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere,
383 U.S. 1, 17–18 (1966). We also recognize that prior art references must
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be “considered together with the knowledge of one of ordinary skill in the
pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In
re Samour, 571 F.2d 559, 562 (CCPA 1978)).
We analyze the instituted grounds of unpatentability in accordance
with the above-stated principles.
C. Level of Skill in the Art
In determining the level of skill in the art, we consider the type of
problems encountered in the art, the prior art solutions to those problems, the
rapidity with which innovations are made, and the sophistication of the
technology. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d
955, 962 (Fed. Cir. 1986). Also, we are guided by the level of skill in the art
as reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d. 1350,
1355 (Fed. Cir. 2001).
Petitioner contends that a person of ordinary skill in the field of this
invention would have had a diploma from a high school or vocational school
and at least five years of relevant experience, or seven years of experience
without a diploma. See Pet. 10. Patent Owner argues that five years of
relevant experience is sufficient. See PO Resp. 11.
We note that the difference in the parties’ proposals is fairly minor.
Our analysis below, including the conclusions we reach, would be
substantially the same under either party’s proposal. Nevertheless, after
considering the evidence of record, we agree with Patent Owner that five
years of experience designing or developing gaming machines is sufficient
to qualify as a person of ordinary skill in the art, regardless of whether the
person also has a diploma. Thus, we adopt Patent Owner’s proposal of the
level of ordinary skill in the art.
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D. Obviousness over Fraley and Okada
Petitioner argues that claims 1–14 are unpatentable under 35 U.S.C.
§ 103(a) over Fraley alone, or over the combination of Fraley and Okada.
See Pet. 13–20; Reply 7–10. Patent Owner contests these arguments. See
PO Resp. 24–30. We have considered the arguments and evidence presented
by both parties, and we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–8 and 10–14 are unpatentable
over Fraley and Okada, but has not done so with respect to claim 9.7
1. Summary of Fraley
Fraley describes an electronic device for playing the game of
blackjack. Ex. 1003, 1:1–5. Figures 1–3 of Fraley are reproduced below:

Figures 1 and 2 are front elevation and perspective views,
respectively, of Fraley’s device. Id. at 2:46–49. Figure 3 is a vertical cross-
section of door 12 taken along the line 3–3 of Figure 2. Id. at 2:50–51.
Fraley’s device includes “a box-like cabinet or housing 10,” which

7 Given our determination that these claims would have been obvious based
on Fraley and Okada, we see no need to separately address whether the
claims would also have been obvious based on Fraley alone.
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“has a door or front panel 12 pivotly [sic] secured thereto by hinge 14.” Id.
at 3:6–11. Fraley teaches that “[d]oor 12 is constructed with an upper
recessed vertical display panel 60 upon which the progress and results of the
game are displayed.” Id. at 3:60–62. “The display and control panels can be
conveniently enclosed by the top and side members of the door which
provide some privacy for the player and tend to isolate the display and
control panels from adjacent machines.” Id. at 3:65–4:2.
Display panel 60 includes a dealer card display and a player card
display, both of which are comprised of fifty-two indicators representing
specific cards. See id. at 4:4–7, 21–24. Fraley describes:
Each of the card indicators in dealer card display 70 and player
card display 72, and the special condition indicators are each
separately illuminated by lamps placed behind the indicators to
vividly indicate the play of a particular card or the existence of a
particular condition. These lamps and the attendant electrical
circuitry are located in an enclosed box 66 in the upper section
of door 12.
Id. at 4:39–46. Fraley further teaches that the arrangement shown in the
figures “may be modified and that other display panel layouts can be
employed without materially altering the game described herein.” Id. at
4:46–50.
2. Summary of Okada
Okada discloses a slot machine having main body 1 and front door 2.
Ex. 1006, 2:47–51, Fig. 1. Door 2 includes display windows 6, 7, 8. Id. at
2:51–56, Fig. 2. Okada describes that liquid crystal panel 90 can be
mounted at the back of display windows 6, 7, 8. Id. at 5:58–61, Fig. 8.
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3. Analysis of Claims 1, 3–8, and 10–14
Petitioner contends that Fraley discloses a cabinet, door, and gaming
controller as claimed. Specifically, Petitioner asserts that Fraley’s “box-like
cabinet or housing 10” corresponds to the claimed “cabinet” (Pet. 14 (citing
Ex. 1003, 3:6–7, Fig. 2)), Fraley’s “door or front panel 12” corresponds to
the claimed “door” (id. at 14–15(citing Ex. 1003, 3:10–16, Figs. 2–3)), and
that the computer and electronic control circuitry described in Fraley
corresponds to the claimed “gaming controller” (id. at 17 (citing Ex. 1003,
3:16–23, 5:17–7:47)).
With respect to the “video display,” Petitioner contends that Fraley’s
display includes all of the features recited in claim 1, except that it is a
“generally planar analogue display” rather than a video display. Id. at 15–
17; Reply 7. Petitioner argues that it would have been obvious to modify
Fraley’s display to use an LCD or plasma video display instead, because by
the time of the invention, it was well-known that a gaming device could be
implemented with a CRT, LCD, or plasma display. Pet. 16 (citing Ex. 1004,
6:2–7, 8:41–44; Ex. 1005, 2:25–28). Petitioner notes that Fraley discloses
that its display “may be modified and that other display panel layouts can be
employed without materially altering the game described herein.” Id.
(quoting Ex. 1003, 4:49–51).
Except for two limitations discussed below, Patent Owner’s Response
does not dispute Petitioner’s contentions that the subject matter of claim 1 is
disclosed or rendered obvious by Fraley. See PO Resp. 24–30; see also
37 C.F.R. § 42.23(a) (providing, with respect to oppositions, that “[a]ny
material fact not specifically denied may be considered admitted”);
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37 C.F.R. § 42.120(a) (“A patent owner response is filed as an opposition.”).
Further, the evidence supports Petitioner’s contentions on the undisputed
limitations.
Turning to the limitations in claim 1 that Patent Owner argues are not
disclosed or obvious in view of Fraley’s disclosure, Patent Owner argues
that Fraley does not teach or suggest a “video display” as recited in claim 1.
PO Resp. 19–20. Patent Owner asserts that Fraley teaches a static image of
cards, which is not a video display. Id. (citing Ex. 2001 ¶ 22). Moreover,
according to Patent Owner, Fraley’s disclosure that other display panel
layouts could be employed is only referring to replacing the static panel with
another static panel having a different layout. Id. at 25 (citing Ex. 2001
¶ 28). Patent Owner also contends that Fraley does not provide a motivation
to replace the static display with a video display. Id. at 28–29. And Patent
Owner argues that the proposed modification would require a complete
redesign of Fraley. Id. at 29–30.
Although Patent Owner is correct that Fraley’s display is static, we
agree with Petitioner that it would have been obvious to replace Fraley’s
static display with an LCD display. The evidence of record supports
Petitioner’s assertion that LCDs and plasma displays were known
alternatives for displays in gaming devices. See Ex. 1004, 6:2–7, 8:41–44;
Ex. 1005, 2:25–28.8 Patent Owner agreed with this point at oral argument.

8 Although the ground being discussed does not identify Exhibits 1004 or
1005 as references that would have rendered the claims obvious, “[a]rt can
legitimately serve to document the knowledge that skilled artisans would
bring to bear in reading the prior art identified as producing obviousness.”
Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir.
2015) (citing Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.
2013)).
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See Tr. 23:1–6. And, as Petitioner argues, substitution of one known
component for another is likely to be obvious when doing so yields only
predictable results. Reply 7; see also KSR, 550 U.S. at 416 (“[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.”).
Patent Owner’s argument that Fraley’s disclosure does not motivate
replacement of static panel with video display (see PO Resp. 28–29; Tr.
36:20–37:12) is not persuasive because it assumes that the motivation for a
proposed modification must be provided by the cited prior art reference
itself. The Supreme Court has rejected that approach to obviousness as
overly rigid. KSR, 550 U.S. at 415. Petitioner has articulated a reason why
a skilled artisan would have substituted an LCD display for Fraley’s static
display that is supported by rational underpinnings—namely, that the
substitution would have enhanced Fraley’s device with the capability to
display a video. See Reply 7–8.
We also are not persuaded that the proposed modification to Fraley is
beyond the level of skill in the art. Patent Owner quotes the following
testimony of Mr. Lewin:
[I]t would not be obvious for one skilled in the art to improve a
lights and glass based game to a game that uses a digital video
display. . . . It is like comparing a railroad to an airplane—both
are modes of transportation, but you can’t easily put wings on a
train and expect it to fly.
PO Resp. 29 (quoting Ex. 2001 ¶ 23). We do not find this analogy apt. Mr.
Lewin does not explain any technical challenges to placing an LCD panel on
the door of a gaming cabinet that are remotely akin to making a train fly.
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The challenges that Mr. Lewin identifies are making changes to the
door and cabinet to support the LCD and replacing Fraley’s electronics with
components that are designed for an LCD video display. Ex. 2001 ¶ 23. In
our view, these tasks would have been within the abilities of a person of
ordinary skill in the art at the time of the invention. We note that the ’814
patent does not describe the alleged technical difficulties or the solutions
thereto. For example, the ’814 patent does not describe a particular hinge
design or panel mounting configuration that is capable of supporting the
additional weight of an LCD display. Rather, the ’814 patent indicates that
the same support 74 used to support window glass 68 in the mechanical reel
embodiment can also be used to support video display 190 in the video game
embodiment. Ex. 1001, 7:21–22, 8:42–44. With respect to the
configuration of the electronics in the video game embodiment, the ’814
patent merely describes that a controller is used that is adapted to present a
video game and that display 190 includes interface cable 192 for connection
to the controller. See id. at 8:26–29, 56–58. The terseness of this
description supports Petitioner’s position that the tasks necessary to modify
a cabinet to include an LCD display were within the level of ordinary skill in
the art. See Reply 8–9; In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988)
(“For obviousness under § 103, all that is required is a reasonable
expectation of success.”).
Patent Owner also argues that Fraley’s display is not “mounted to an
inner surface of a door” as recited in claim 1. PO Resp. 24. Instead,
according to Patent Owner, Fraley’s glass panel is mounted to the outer
surface of the door. Id. at 25–26. Patent Owner further argues that in the
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prior art, gaming displays were typically disposed within a cabinet, not
mounted to an inner surface of a cabinet door. Id. at 26–28.
Fraley does not expressly state whether display panel 60 is mounted to
an inside or outside surface of door 12, but it is clearly mounted to the door.
See Ex. 1003, Figs. 1–3. In replacing Fraley’s panel 60 with an LCD
display, a skilled artisan would have only a few options of which surface of
the door to attach the LCD to. One option would be an inner surface. As
Petitioner correctly notes, Okada discloses mounting a liquid crystal panel
90 at the back of display windows 6, 7, 8, which are attached to the inside of
door 2. Reply 8–9 (citing Ex. 1006, 5:58–61, Fig. 2). Moreover, Fraley
describes that display panel 60 is recessed and enclosed by top and side
members of the door, “which provide some privacy for the player and tend
to isolate the display and control panels from adjacent machines.” See Ex.
1003, 3:65–4:2; Tr. 38:21–39:14. Attaching the LCD display to the inside
surface of the door, as opposed to the outside surface, would tend to promote
Fraley’s preference for privacy and isolation because doing so would keep
the display as recessed as possible. In view of the limited options for
surfaces on which to attach an LCD to Fraley’s door, Okada’s teaching of
attaching an LCD panel to the inside of a door, and Fraley’s preference for
recessing the display toward the interior of the machine to promote privacy,
we agree with Petitioner that in the proposed modification of Fraley,
attaching the LCD to the inner surface of the door would have been obvious.
Independent claim 8 shares many of the same features as claim 1, and
adds that the gaming apparatus has a “reduced depth dimension.” See Ex.
1001, 11:37; Tr. 24:13–16. We agree with Petitioner that Fraley’s machine
has a “reduced depth dimension” because it is shown as having a depth that
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is less than its width. See Pet. 19 (citing Ex. 1003, Fig. 2). Patent Owner’s
arguments regarding claim 8 are the same as its arguments regarding claim
1, which we have discussed above. See PO Resp. 24–29.
With respect to dependent claims 3–7 and 10–14, Petitioner explains
how the subject matter of these claims would have been obvious in view of
Fraley and Okada. See Pet. 18–20. Patent Owner does not rebut Petitioner’s
arguments and evidence regarding these claims, separate from its arguments
for claims 1 and 8 from which they depend. See 37 C.F.R. §§ 42.23(a),
42.120(a). Upon reviewing the unchallenged contentions and supporting
evidence in the Petition, we are persuaded that Petitioner has shown by a
preponderance of the evidence that these dependent claims would have been
obvious in view of Fraley and Okada.
Thus, even subject to the secondary considerations discussed below,
we conclude that Petitioner has shown by a preponderance of the evidence
that each of claims 1, 3–8, and 10–14 would have been obvious in view of
the disclosure of Fraley and Okada.
4. Claim 2
Claim 2 depends from claim 1 and further recites that “a mount is
connected to said door and said video display is supported by said mount.”
Petitioner argues that in Fraley, the display is mounted in some fashion to
the door, and a mount is a well-known way to attach a door. Pet. 17–18.
Thus, according to Petitioner, this limitation is either inherent in Fraley or
obvious. Pet. 17–18. Petitioner also argues that Okada discloses this
feature. Reply 10 (citing Ex. 1006, 2:63–68, 5:58–61).
Patent Owner argues that Fraley does not teach this feature because
“Fraley only teaches a static glass panel (60) that is recessed within or
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supported by the door, as opposed to by a separate mount that is connected
to the door.” PO Resp. 54. Further, Patent Owner argues that a mount
would not have been obvious “because ‘the requirements for mounting glass
to the outside of a cabinet (as Fraley) . . . are very different than mounting a
planar video display to the inner surface of the door.’” Id. at 55 (quoting Ex.
2001 ¶ 35).
In the broad fashion in which Patent Owner has claimed this feature,
we agree with Petitioner that the combination of Fraley and Okada teaches
this limitation. Neither party has proposed a construction for “mount.” See
Tr. 25:8–17. It is difficult to imagine any manner of attaching a video
display to a door that would not include some structure that would qualify as
a “mount” in the ordinary meaning of that term. Patent Owner’s argument
that the requirements for a mount that would support a glass panel are
markedly different from a mount that supports a video display is
unpersuasive because, as noted above, the ’814 patent indicates that the
same support 74 used to support window glass 68 in the mechanical reel
embodiment can also be used to support video display 190 in the video game
embodiment. Ex. 1001, 7:21–22, 8:42–44. In addition, Okada discloses that
“liquid crystal panel 90 is mounted at the back of the display windows.” Ex.
1006, 5:59–60 (emphasis added).
Even subject to the secondary considerations discussed below, we
conclude that Petitioner has shown by a preponderance of the evidence that
claim 2 would have been obvious in view of the disclosure of Fraley and
Okada.
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5. Claim 9
Claim 9 depends from claim 8 and adds the feature that “a bracket [is]
connected to said door support connected to said bracket, said support
defining a generally horizontal supporting surface upon which a lower edge
of said video display is supported when connected to said door.” Petitioner
argues that “adding a bracket to solidify a horizontal support is a well-
known practice in cabinet making that would be obvious” to a skilled
artisan. Pet. 20. However, as Patent Owner points out, Petitioner does not
cite any evidence in the record to support this attorney argument. PO Resp.
57.9 Thus, we agree with Patent Owner that Petitioner has not shown by a
preponderance of the evidence that claim 9 would have been obvious in
view of the disclosure of Fraley and Okada.
E. Obviousness over Runte
Petitioner argues claims 1–14 are unpatentable under 35 U.S.C.
§ 103(a) over Runte alone, or over the combination of Runte and Okada.
Pet. 20–28. Patent Owner challenges those arguments. PO Resp. 30–36.
As explained below, after considering the arguments and evidence presented
by the parties, we determine that Petitioner has shown by a preponderance of
the evidence that claims 1–14 are unpatentable over Runte.10

9 Petitioner attempted to shore up this deficiency at the hearing by citing
other references that it had not discussed in its briefing. See Tr. 16:14–17:9.
In evaluating Petitioner’s challenge to claim 9, we do not consider the
references that were not discussed in Petitioner’s briefing. See Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (“A patent owner . . . is
undoubtedly entitled to notice of and a fair opportunity to meet the grounds
of rejection.”).
10 Given our determination that these claims would have been obvious based
on Runte alone, we see no need to separately address whether the claims
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1. Summary of Runte
Runte describes that “amusement devices” are well known in which a
CRT is used to produce an image and players manipulate knobs to give the
illusion of controlling some device. Ex. 1008, 1:5–10. Runte explains that
most of these devices are mounted on a wall or set up in a console, but that
console-type devices are disadvantageous in a bar setting because patrons
leave their table to go to the console. Id. at 1:10–11, 21–23. This inhibits
patrons from consuming food and beverages and makes service more
difficult. Id. at 1:17–27. Accordingly, Runte describes a device that forms a
table. Id. at 1:40. Figures 1 and 3 are reproduced below:

Figure 1 is a perspective view of video amusement device 10. Id. at
2:10–11. Figure 3 is “an enlarged fragmentary perspective view” of device

would also have been obvious based on the combination of Runte and
Okada.
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10 with its table top 16 raised. Id. at 2:16–18. Runte describes that
amusement device 10 includes table top 16 hingedly mounted on housing 14
and cathode ray tube 18 mounted on the interior of table top 16. Id. at 2:42–
45. The screen of cathode ray tube 18 is visible through aperture 44 in the
center of table top 16. Id. at 2:63–64, 3:33–35. Runte teaches that an
advantage of this construction is that it facilitates maintenance of the device:
[T]he tube 18 and the associated electronic circuitry 20 is
mounted on the underside of table top 16. When it is necessary
to perform any maintenance, the lock 74 is released so that top
16 may pivot about hinge 56. Pivoting of the top is limited by
bracket 66. When the table top is pivoted to the attitude shown
in FIG. 3, all of the parts are presented for ready servicing. It is
not necessary for the service personnel to engage in a
disassembly of a large number of parts in order to get at a given
part.
Id. at 5:6–17.
2. Analysis of Claims 1, 3–8, and 10–14
Petitioner contends that Runte discloses a cabinet, door, and gaming
controller as recited in claim 1. Specifically, Petitioner asserts that Runte’s
housing 14 corresponds to the claimed “cabinet” (Pet. 22 (citing Ex. 1008,
2:41–43, 58–62, Figs. 1, 3)), Runte’s table top 16, which is hingedly
mounted on housing 14, corresponds to the claimed “door” (id. at 23 (citing
Ex. 1008, 2:41–44, 3:10–11, Figs. 1, 3)), and that Runte’s electronic
circuitry 20 and solid-state printed circuit logic board 21 corresponds to the
claimed “gaming controller” (id. at 17 (citing Ex. 1008, 2:47–50)). With
respect to the “video display,” Petitioner contends that it would have been
obvious to substitute for Runte’s cathode ray tube 18 an LCD or plasma
display because those were known alternatives for gaming displays. Id. at
24 (citing Ex. 1004, 6:2–7, 8:41–44; Ex. 1005, 2:25–28).
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Patent Owner argues that several limitations in claim 1 would not
have been obvious based on Runte’s disclosure. Patent Owner’s arguments
are addressed below. With respect to the limitations in claim 1 that Patent
Owner does not address, the evidence supports Petitioner’s contention that
these limitations would have been obvious in view of Runte. See also
37 C.F.R. §§ 42.23(a), 42.120(a).
First, Patent Owner argues that Runte describes an amusement device
and, therefore, does not disclose the requirement of being “configured to
present one or more wager-based games.” PO Resp. 30–31 (emphasis
added). Patent Owner emphasizes that “amusement devices are not subject
to the strict manufacturing or regulatory requirements gambling (wagering)
machines are required to meet.” Id. at 31 (quoting Ex. 2001 ¶ 44).
Petitioner’s initial position was that this claim phrase, which appears in the
preamble, is not a limitation on the claim. Pet. 22. However, as discussed in
Section II.A.1., we construe the phrase to require that the gaming apparatus
is arranged such that it presents one or more wager-based games. Petitioner
also argues that “games of skill or chance can be played for credits, tokens,
prizes, or currency, and so fall within the scope of wager-based games” (Pet.
22) and “[e]ven if Runte is not a wager-based game, wager-based games are
well-known to those skilled in the art.” Reply 10 (citing Ex. 1001, 1:14–17).
Based on the record before us, we agree with Petitioner that it would
have been obvious to configure Runte’s device to present a wager-based
video game. Runte describes a device in which users insert coins in order to
activate play and then interact with the video game through control knobs.
Ex. 1008, Abstract, 4:36–44. The specific video game that Runte discloses
is “similar to ping pong,” (id. at 4:40), but we see no reason why configuring
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Runte to display a wager-based video game would have been anything other
than a predictable use of prior art elements according to their established
functions. See KSR, 550 U.S. at 417. As Petitioner points out, the ’814
patent describes that video gaming devices “for implementing games of skill
and/or chance” were known in the prior art. See Ex. 1001, 1:14–16, 27–28.
Regarding Mr. Lewin’s testimony regarding the unique manufacturing
and regulatory requirements for gambling devices (Ex. 2001 ¶¶ 44–46),
Patent Owner does not explain why these special requirements make it
nonobvious to apply the teachings of housings for non-gambling video
gaming devices in making a housing for a wager-based video game. And we
agree with Petitioner that the lack of detail in the ’814 patent regarding how
to program a controller for wager-based gaming undermines Patent Owner’s
reliance on the regulatory requirements of wager-based gaming to
distinguish over Runte’s amusement gaming device. See Reply 10 (“Either
a suitable gaming controller was well-known, in such case it would have
been obvious to use one in Runte, or the ’814 patent fails to meet its
obligations under § 112.”). Based on our review of the ’814 patent, the
overwhelming focus of the Specification is on the mechanical arrangement
of its cabinet to allow the cabinet to be adaptable for different types of
games, conserve space, and facilitate servicing. Regarding the controller,
the Specification lists various functions that the controller may carry out,
discusses where the controller can be located, and discloses that the
controller for the video gaming embodiment is different than that of the
mechanical reel slot machine embodiment. See Ex. 1001, 5:32–6:10, 8:25–
29. The Specification does not describe any specific algorithms or
programming details that permit the controller to successfully operate a
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wager-based gaming device. The ’814 patent’s cursory discussion of the
controller supports the view that configuring a controller for wager-based
gaming, or obtaining a controller that was already so configured, was within
the knowledge of a person of ordinary skill in the art. See id. at 3:42–44
(describing that “well-known features have not been described in detail so as
not to obscure the invention”).
Relatedly, Patent Owner argues that Runte does not disclose a
“gaming controller” as claimed. PO Resp. 33–34. To the extent this
argument differs from the argument just discussed, it is based on Patent
Owner’s position that “gaming controller” should be construed to require a
random number generator. See id. As discussed in section II.A.4., we
disagree with Patent Owner’s claim construction proposal and instead
construe the term to mean “hardware and/or software that is programmed to
control game play.” We agree with Petitioner that Runte discloses a gaming
controller under the construction we have adopted. Ex. 1008, 2:47–50.
Patent Owner also argues that Runte does not disclose an upright
cabinet. PO Resp. 31–32. As discussed in section II.A.3., we do not
interpret the term “cabinet” to require a housing that is “upright.” We agree
with Petitioner that Runte’s housing 14 is a “cabinet.” See Pet. 22.
Next, Patent Owner argues that there is no motivation in Runte to
replace a CRT with a substantially planar video display. PO Resp. 34–35.
Petitioner argues that replacing Runte’s CRT with a flat panel would reduce
the space needed for the display, thereby increasing leg-room for patrons.
Pet. 26. Patent Owner counters that “Runte expressly states that the table
top amusement device is already comfortable for its patrons.” PO Resp. 35
(citing Ex. 1008, 4:67–5:5). Petitioner’s stated reasoning for the proposed
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modification is supported by rational underpinnings. Runte’s disclosure that
its device is comfortable does not indicate that user comfort could not be
further enhanced by additional legroom. Regarding Patent Owner’s
argument that LCD or plasma displays were more expensive than CRT
displays (PO Resp. 34 (citing Ex. 2001 ¶ 49)), we are not persuaded that this
indicates that replacing a CRT with an LCD would not have been obvious.
See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (“That a given
combination would not be made by businessmen for economic reasons does
not mean that persons skilled in the art would not make the combination
because of some technological incompatibility. Only the latter fact would be
relevant.”).
Patent Owner additionally argues that Petitioner’s proposed
modification would require a complete redesign of Runte to an upright
configuration and to have various other features of a wager-based gaming
device. PO Resp. 35–36 (citing Ex. 2001 ¶ 51). This argument is based on
Patent Owner’s claim construction proposals that we have not adopted.
Because we do not agree that claim 1 requires a cabinet that is upright,
Runte would not need to be modified to a different orientation for the
purpose of rendering the claimed subject matter obvious. Thus, we do not
agree with Patent Owner that Petitioner’s proposed modification would
change Runte’s principle of operation. See id. at 36.
As noted above, independent claim 8 shares many of the same
features as claim 1, and adds that the gaming apparatus has a “reduced depth
dimension.” See Ex. 1001, 11:37; Tr. 24:13–16. We agree with Petitioner
that the proposed modification of Runte would result in a “reduced depth
dimension” because the flat panel would allow the depth of the housing to be
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reduced such that its depth is less than its width. See Pet. 27. Patent
Owner’s arguments regarding claim 8 are the same as its arguments
regarding claim 1, which we have discussed above. See PO Resp. 30–36.
With respect to dependent claims 3–7 and 10–14, Petitioner explains
how the subject matter of these claims would have been obvious in view of
Runte. See Pet. 26–27. Patent Owner does not rebut Petitioner’s arguments
and evidence regarding these claims, separate from its arguments for claims
1 and 8 from which they depend. See 37 C.F.R. §§ 42.23(a), 42.120(a).
Upon reviewing the unchallenged contentions and supporting evidence in
the Petition, we are persuaded that Petitioner has shown by a preponderance
of the evidence that these dependent claims are obvious in view of Runte.
Thus, even subject to the secondary considerations discussed below,
we conclude that Petitioner has shown by a preponderance of the evidence
that each of claims 1, 3–8, and 10–14 would have been obvious in view of
the disclosure of Runte.
3. Claim 2
We agree with Petitioner that Runte discloses the subject matter of
dependent claim 2 insofar as it teaches “a conventional cathode ray tube 18
mounted on the interior of table top 16.” Pet. 25 (quoting Ex. 1008, 2:44–
45). Patent Owner’s argument that Runte’s CRT is mounted on a table top
rather than the door of an upright cabinet (PO Resp. 56) is unpersuasive
because it is based on Patent Owner’s proposed construction, which we have
declined to adopt, that claim 1 requires a cabinet that is upright. Patent
Owner also argues that Runte does not teach a substantially planar display
and, therefore, does not teach a mount supporting the substantially planar
display. Id. This argument is unpersuasive because, for the reasons
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discussed above with respect to claim 1, we agree with Petitioner that it
would have been obvious to modify Runte to include a substantially planar
LCD or plasma video display. Patent Owner does not present any evidence
or argument that Runte’s CRT mount would have been inappropriate for
mounting a LCD or plasma display.
Accordingly, even subject to the secondary considerations discussed
below, we conclude that Petitioner has shown by a preponderance of the
evidence that claim 2 would have been obvious in view of the disclosure of
Runte.
4. Claim 9
With respect to dependent claim 9, Patent Owner argues that using a
bracket to solidify a horizontal support is appropriate for mounting a display
to the front door of an upright cabinet but not to a table top as in Runte. PO
Resp. 58 (citing Ex. 2001 ¶ 54).
We agree with Petitioner that a bracket as recited in claim 9 would
have been obvious based on Runte’s disclosure. The testimony of Patent
Owner’s own declarant confirms this view. Mr. Lewin testifies that a skilled
artisan
would understand that a CRT is too heavy to be mounted solely
by supporting the lower edge of the display. Rather[,] mounting
the CRT display of Runte requires equally supporting all four
edges of the CRT in order to securely hold the CRT in place and
to insure that it remains parallel to the tabletop.
PO Resp. 58–59 (quoting Ex. 2001 ¶ 54). Thus, when table top 16 is in the
open position as shown in Figure 3, a skilled artisan would understand that
the lower edge of the display rests on a horizontal supporting surface, in
accordance with claim 9. We note that claim 9 does not indicate that the
horizontal supporting surface must be the sole source of support for the
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display. As such, the presence of supports on the other three edges of the
display do not preclude the subject matter of claim 9 from being disclosed.
Even subject to the secondary considerations discussed below, we
conclude that a preponderance of the evidence supports Petitioner’s
contention that claim 9 would have been obvious in view of Runte.
F. Obviousness over Smith
Petitioner contends that claims 1–14 are unpatentable under 35 U.S.C.
§ 103(a) over Smith. Pet. 34–38. Patent Owner opposes Petitioner’s
arguments. PO Resp. 36–46. As discussed below, we determine that
Petitioner has shown by a preponderance of the evidence that claims 1–8 and
10–14 are unpatentable over Smith, but has not done so with respect to claim
9.
1. Summary of Smith
Smith relates to a display mounted in a hinged front panel of a
computer. Ex. 1009, 1:9–10. Smith explains that computers can be
mounted in racks when space is at a premium and when there is a need to
quickly repair or replace a unit upon failure. Id. at 1:22–24, 33–37. Certain
components in a standard computer, including the display, require large
amounts of space, making standard computers undesirable for rack mounted
applications. Id. at 1:37–42. Smith teaches a front panel display that
minimizes the need for rack space “while still providing an internal display
and maximum access to computer controls.” Id. at 1:44–47. Figure 4 of
Smith is shown below:
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Figure 4 depicts computer front panel 10 with display portion 14 in
the open position. Id. at 2:35–38, 53–55. Smith describes that “display
portion 14 is pivotably secured to panel portion 12 via hinge 38 and includes
display 39 and display window 40.” Id. at 4:39–41. Display 39 is a flat
panel display, such as “a color thin film transistor active matrix LCD
display.” Id. at 4:44–48.
2. Analysis of Claims 1, 3–8, and 10–14
Petitioner contends that Smith discloses a cabinet, door, and generally
planar video display as recited in claim 1. Specifically, Petitioner asserts
that Smith’s computer housing 16a corresponds to the claimed “cabinet”
(Pet. 29–30 (citing Ex. 1009, Fig. 4, 3:48–50)), Smith’s front panel 10,
which includes panel portion 12 and pivotable display portion 14,
corresponds to the claimed “door” (id. at 30 (citing Ex. 1009, Fig. 1, 2:53–
56)), and Smith’s display 39 corresponds to the claimed “generally planar
video display” (id. at 31 (citing Ex. 1009, 4:44–48)). With respect to the
claimed “gaming controller,” Petitioner asserts that Smith discloses a CPU
with internal memory, circuitry to communicate with peripheral equipment
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and user interface circuitry. Id. at 32 (citing Ex. 1009, 3:6–14, 3:27–31).
Petitioner contends that it would have been obvious to use Smith’s computer
as a gaming apparatus configured to present wager-based games. Id. at 35.
Patent Owner’s arguments that claim 1 would not have been obvious
based on Smith’s disclosure are addressed below. With respect to the
limitations in claim 1 that Patent Owner does not address, the evidence
supports Petitioner’s contention that these limitations would have been
obvious in view of Smith. See also 37 C.F.R. §§ 42.23(a), 42.120(a).
First, Patent Owner argues that Smith should not be considered in the
obviousness analysis because it is non-analogous art. PO Resp. 37 (citing In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)). In this regard, Petitioner
contends that Smith is reasonably pertinent to the problem faced by the
inventor of the ’814 patent because it is concerned with providing a display
within a space-constrained enclosure while still permitting access for
maintenance and repair. Pet. 36; Reply 11. Patent Owner counters that
Smith is not in the same field of endeavor because it relates to front panel
display construction for computers, not a gaming apparatus for a wager-
based game. PO Resp. 37. Patent Owner further argues that Smith is not
pertinent to the problem of the ’814 patent because Smith is concerned with
minimizing vertical rack space, whereas the ’814 patent’s main objective is
to reduce the depth of the cabinet. Id. at 38–39, 45–46.
We agree with Petitioner that Smith is reasonably pertinent to the
problem with which the inventor was concerned. The Federal Circuit has
explained that:
A reference is reasonably pertinent if . . . it is one which, because
of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his
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problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem, and
that fact supports use of that reference in an obviousness
rejection.
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1359 (Fed. Cir.
2014) (quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637F.3d 1314,
1321 (Fed. Cir. 2011)). When the problem an invention is designed to solve
is not unique to the specific field of the invention, it is not improper to
consider whether a person of ordinary skill would consult a different art in
order to solve the problem. See, e.g., In re Paulsen, 30 F.3d 1475, 1481–82
(Fed. Cir. 1994) (affirming rejection of a laptop computer hinge as obvious
over hinged cabinets, piano lids, etc., because the problems “were not unique
to portable computers”).
Here, one of the problems facing the inventor of the ’814 patent was
reducing the size of electronic gaming machines. Ex. 1001, 1:56–2:6; 9:59–
10:8. Another problem was facilitating maintenance and repair by providing
access to components within the machine. Ex. 1001, 2:7–14, 10:51–56.
Smith is concerned with these same problems, albeit in the context of rack
mounted computer equipment rather than gaming machines. Ex. 1009,
1:33–50. In our view, Smith’s problem is sufficiently similar to the problem
facing the inventor of the ’814 patent that Smith would have commended
itself to the inventor’s attention in considering his problem.
Next, Patent Owner argues that it would not have been obvious to use
Smith’s design for a gaming apparatus “configured to present one or more
wager-based games,” as recited in claim 1. Petitioner’s explanation for why
it would have been obvious to do so is that such games are software
applications stored and run by a CPU. Pet. 35 (citing Ex. 1004, Figs. 5–6,
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8:15–25; Ex. 1005, Fig. 1, 1:66–2:4). According to Petitioner, Smith’s
“front panel display computer possesses all of the necessary components for
presenting a wager-based game and it would be well within the prior
knowledge of one skilled in the art to modify Smith in this way.” Id.; Reply
12. In response, Patent Owner argues that Smith’s device is of the wrong
size and shape for a gaming machine, is not capable of supporting necessary
gaming peripherals, and is not in compliance with appropriate casino gaming
regulatory requirements. PO Resp. 41 (citing Ex. 2001 ¶ 60). Relatedly,
Patent Owner argues that Smith’s general computing device does not contain
or suggest a “gaming controller.” Id. at 43. According to Patent Owner,
gaming machines use custom CPUs, so a general CPU as in Smith does not
teach this limitation. Id. at 43–44 (citing Ex. 2001 ¶ 66).
We agree with Petitioner that it would have been within the level of
ordinary skill in the art to apply Smith’s design in a gaming machine that
presents wager-based games, and to utilize a gaming controller in that
device. Although wager-based games for a casino environment may
typically have a different size and shape than Smith, and may include other
peripherals such as a coin hopper, those features are not required by claim 1.
Thus, in these respects, Patent Owner’s arguments are not commensurate
with the scope of claim 1.
Regarding a gaming controller, Patent Owner’s arguments are
unpersuasive for reasons similar to those discussed above with respect to
Runte. The ’814 patent describes that video gaming devices were known in
the prior art (Ex. 1001, 1:14–16, 27–28), and Petitioner has presented
evidence that gaming controllers for video gaming devices were also known.
See Ex. 1004, 8:16–25; Ex. 1005, 1:66–2:4. Patent Owner’s declarant
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testifies that the “custom gaming CPU” disclosed in these references shows
why it would not have been obvious to use a general purpose computing
device for a wager-based game. Ex. 2001 ¶ 67. Yet the availability and use
of such custom gaming controllers, which Mr. Lewin indicates were “the
norm for IGT and other slot machine manufacturers in the early 2000’s”
(id.), supports Petitioner’s contention that substituting such a known gaming
controller into Smith’s general purpose computing device would have been a
predictable use of prior art elements according to their established functions.
See KSR, 550 U.S. at 417. Further, as discussed in greater detail in Section
II.E.2., the cursory discussion of the controller in the ’814 patent supports
the view that configuring a controller for wager-based gaming, or obtaining
a controller that was already so configured, was within the knowledge of a
person of ordinary skill in the art.
Patent Owner also argues that Smith does not disclose an upright
cabinet. PO Resp. 42. As discussed in section II.A.3., we do not interpret
the term “cabinet” to require a housing that is “upright.” We agree with
Petitioner that Smith’s housing 16a is a “cabinet.” See Pet. 29–30.
Patent Owner further argues that Smith does not teach a “display
mounted to an inner surface of a door,” as recited in claim 1. Specifically,
Patent Owner asserts that Smith’s Figure 7 shows display 39 mounted within
the door, not to the inner surface of the door. PO Resp. 44–45; Tr. 23:21–
24, 46:10–19. Petitioner contends that Smith’s display 39 is mounted by
screws 71 to an inside surface of door 68. Pet. 31; Reply 13; Tr. 6:23–7:13.
Although neither party proposed an express construction for the
phrase “an inner surface of the door,” the crux of the disagreement is
whether there can be only one inner surface of the door, as Patent Owner
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contends, or if more than one inner surface is permissible, as Petitioner
contends. See Tr. 46:14–16. The claim recites “said door having an inner
surface and an outer surface and an opening therein.” As recently reiterated
by our reviewing court, the Federal Circuit
has “repeatedly emphasized that an indefinite article ‘a’ or ‘an’
in patent parlance carries the meaning of ‘one or more’ in open-
ended claims containing the transitional phrase ‘comprising.’”
The exceptions to this rule are “extremely limited: a patentee
must ‘evince [] a clear intent’ to limit ‘a’ or ‘an’ to ‘one.’”
Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir.
2016) (internal citations omitted). Although “‘having’ does not convey the
open-ended meaning as strongly as ‘comprising,’” the use of “having” as a
transitional term can also make a claim open. Crystal Semiconductor Corp.
v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001)
(citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1573
(Fed. Cir. 1997)). Patent Owner does not direct us to, and we do not find,
any indication in the Specification or the file history that the door must
include only one inner surface. Thus, we agree with Petitioner that the claim
does not preclude the presence of more than one inner surface of the door.
We also agree with Petitioner that the surface to which Smith’s display 39 is
mounted by screws 71 is an inner surface of the door, insofar as it is interior
of the exterior surface of the door, which is the rightmost edge shown in
Figure 7. See Ex. 1009, Fig. 7.
As noted above, independent claim 8 shares many of the same
features as claim 1, and adds that the gaming apparatus has a “reduced depth
dimension.” See Ex. 1001, 11:37; Tr. 24:13–16. Petitioner argues that it
would have been obvious to apply Smith’s teachings of saving space by
configuring the cabinet with a reduced depth dimension rather than a
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reduced vertical dimension when implementing Smith’s device as a gaming
machine. See Pet. 36, 38. Patent Owner’s arguments regarding claim 8 are
the same as its arguments regarding claim 1, which we have discussed
above. See PO Resp. 37–46. Petitioner’s evidence and arguments are
sufficient to support a finding that claim 8 would have been obvious in view
of Smith.
With respect to dependent claims 3–7 and 10–14, Petitioner explains
how the subject matter of these claims would have been obvious in view of
Smith. See Pet. 34–38. Patent Owner does not rebut Petitioner’s arguments
and evidence regarding these claims, separate from its arguments for claims
1 and 8 from which they depend. See 37 C.F.R. §§ 42.23(a), 42.120(a).
Upon reviewing the unchallenged contentions and supporting evidence in
the Petition, we are persuaded that Petitioner presents sufficient evidence to
support a finding that these dependent claims would have been obvious in
view of Smith.
Thus, even subject to the secondary considerations discussed below,
we conclude that Petitioner has shown by a preponderance of the evidence
that each of claims 1, 3–8, and 10–14 would have been obvious in view of
the disclosure of Smith.
3. Claim 2
Petitioner argues that Smith discloses a mount as recited in dependent
claim 2. Pet. 33–34 (citing Ex. 1009, Figs. 4, 7, 6:16–22). Patent Owner
disputes this assertion, arguing that Smith uses screws 71 to secure display
39 to window receiver 70, not a mount. PO Resp. 56. In the broad fashion
in which Patent Owner has claimed this feature, we agree with Petitioner
that the limitation is disclosed by the arrangement shown in Smith’s Figure 7
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for connecting display 39 to the door. Thus, even subject to the secondary
considerations discussed below, we conclude that Petitioner has shown by a
preponderance of the evidence that claim 2 would have been obvious in
view of Smith.
4. Claim 9
Similar to its challenge to claim 9 based on Fraley and Okada,
Petitioner’s argument that claim 9 would have been obvious based on Smith
relies on unsupported attorney argument that “adding a bracket to solidify a
horizontal support is a well-known practice in cabinet making that would be
obvious to one skilled in the art.” Pet. 38. Lacking any citation to record
evidence supporting this assertion, Petitioner has not shown by a
preponderance of the evidence that claim 9 would have been obvious in
view of Smith.
G. Secondary Considerations
Patent Owner argues that secondary considerations in the form of
commercial success and licensing establish the nonobviousness of
independent claims 1 and 8. PO Resp. 46–54.
Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
Notwithstanding what the teachings of the prior art would have suggested to
a skilled artisan, the totality of the evidence submitted, including objective
evidence of nonobviousness, may lead to a conclusion that the challenged
claims would not have been obvious to one with ordinary skill in the art. In
re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Secondary
considerations, when present, must always be considered as part of an
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obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012).
Secondary considerations may include any of the following: long-felt but
unsolved need, failure of others, unexpected results, commercial success,
copying, licensing, and praise. See Graham, 383 U.S. at 17–18; Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
To be accorded substantial weight, there must be a nexus between the
merits of the claimed invention and the evidence of secondary
considerations. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
“Nexus” is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in determining nonobviousness. Demaco
Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir.
1988). The burden of showing that there is a nexus lies with the Patent
Owner. Id.; see In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
1. Commercial Success
Patent Owner argues that the commercial success of its product
embodying the ’814 patent supports the nonobviousness of the claimed
invention. PO Resp. 47–49. Patent Owner’s arguments regarding
commercial success rely on the testimony of Frederick Cook, Jr., Patent
Owner’s Chief Executive Officer. See id.; Ex. 2002 ¶ 1. Mr. Cook testifies
that “from the time of their introduction, sales of the Patented Product have
increased over 750% from a volume of 2000 machines per year to over
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15,000 machines per year in 2015.”11 Ex. 2002 ¶ 7. Mr. Cook further
testifies that before the invention of the ’814 patent, gaming machines
predominantly used CRT displays, but after the invention, the “Patented
Product” quickly became Patent Owner’s largest selling product. Id. ¶¶ 5–6.
Mr. Cook testifies that “[c]ustomers quickly began issuing purchase orders
to Cole Kepro specifying gaming machines having cabinets with the
configuration of the ’814 patent.” Id. ¶ 7. According to Mr. Cook, the
commercial success of the Patented Product was due to the invention
allowing for a smaller cabinet and easier servicing. Id. ¶ 4. Mr. Cook
testifies that “[t]hese and other benefits have resulted in a current market
share . . . of about 85% for gaming machines employing the invention of the
’814 patent.” Id.
We agree with Petitioner that Mr. Cook’s secondary considerations
testimony is unsupported and fails to show the required nexus. See Reply
13. Patent Owner’s arguments concerning commercial success lack many
important details that would enable evaluation of whether the product is an
embodiment of the claimed invention, and whether any commercial success
is due to the unique characteristics of the claimed invention. Patent Owner
does not present evidence, such as photographs, engineering drawings, or
product literature, showing the design or operation of the Patented Product.
Indeed, Patent Owner does not even provide the name of the Patented
Product. Also absent is any explanation of how the Patented Product
includes every limitation of any claim in the ’814 patent. Without this

11 By way of comparison to the overall market for electronic gaming
machines, in his deposition, Mr. Cook estimated that between
machines are sold per year. Ex. 1013, 40:7–18.
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underlying information, Patent Owner’s assertion that the Patented Product
embodies the claimed invention lacks evidentiary support.12
Relatedly, Patent Owner does not provide any corroborating evidence
to support Mr. Cook’s testimony that the commercial success of the Patented
Product was due to the innovative feature of ’814 patent. Mr. Cook testifies
that after Patent Owner introduced the Patented Product in the fall of 1999,
customers quickly began issuing purchase orders specifying gaming
machines having the patented configuration and that customer demand was
due to the benefits of a door mounted display. Ex. 2002 ¶¶ 6–8. Yet Mr.
Cook testified that he did not become involved with Patent Owner or the
gaming industry until 2011, more than ten years after the Patented Product
was introduced. See Ex. 1013, 5:5–6, 6:12–15. Patent Owner did not
submit any purchase orders, customer communications, or other
documentation supporting Mr. Cook’s testimony that the innovative feature
was the reason for customer demand. The underlying basis for Mr. Cook’s
testimony regarding the nexus between commercial success and the patented
invention is, therefore, unclear. We find that the lack of corroborating
evidence diminishes the weight that should be accorded to Mr. Cook’s
testimony regarding nexus. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.”).

12 We note that Mr. Cook’s declaration states that the display was mounted
to the inner surface of the door, but does not address other limitations of
claims 1 or 8, such as the requirement for a gaming controller connected to
the display. See Ex. 2002 ¶ 6.
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We also take into account that Mr. Cook is an interested witness,
insofar as he is the CEO of Patent Owner. Ex. 2002 ¶ 1. Thus, Mr. Cook’s
testimony regarding the importance and value of the invention is due less
weight than a more objective source. Cf. In re Cree, No. 2015-1365, 2016
WL 1085247, at *6 (Fed. Cir. Mar. 21, 2016) (“While ‘praise in the industry
for a patented invention, and specifically praise from a competitor tends to
“indicate that the invention was not obvious,”’ self-serving statements from
researchers about their own work do not have the same reliability.”) (quoting
Power-One v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010)).
Moreover, Mr. Cook’s testimony that the Patented Product became
more popular and displaced sales of cabinets for gaming machines with CRT
displays (Ex. 2002 ¶ 6) is not probative that consumer demand was driven
by the unique feature of the claimed invention—which, according to Mr.
Cook’s testimony, is attaching a thin panel display to the inside of the door
of a gaming cabinet. See id. ¶ 4; Ex. 1013, 7:20–22. Neither Mr. Cook’s
testimony nor any other evidence adequately accounts for the possibility that
the popularity of the Patented Product was due to its smaller size, which
advantage is attributable to adoption of flat panel displays in lieu of CRT
displays, not to the ’814 patent’s innovation of attaching the panel to the
inside of the door. Mr. Cook testified that LCD flat panel displays are “the
next generation” of CRT displays and thin flat-panel LCDs have become
increasingly prevalent in the place of CRT displays. Ex. 1013, 8:13–20. An
LCD panel occupies less space than a CRT panel of comparable display size.
Id. at 13:8–10. Therefore, the use of an LCD panel in place of a CRT panel
allows a gaming cabinet to have a smaller depth. Id. at 18:11–24; 19:19–23.
This advantage of a smaller footprint is not attributable to the unique feature
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of the invention, because a cabinet could be configured to house a flat panel
without attaching the panel to the inside of the door. Id. at 18:3–6.
Patent Owner has worked on cabinets made by others in which the
LCD is not attached to the door, and Mr. Cook was aware of one instance in
which a customer requested Patent Owner to reconfigure a cabinet so that
the panel was mounted inside the housing rather than attached to the inside
of the door. Id. at 24:19–25:12. But as for cabinets with upright displays
that Patent Owner itself designs, Mr. Cook testified that
Id. at
27:4–6; see also id. at 27:21–28:1. Because the evidence of record indicates
that Patent Owner generally does not sell gaming cabinets for flat panel
displays that do not include the display attached to the door, its customers
are not selecting between a cabinet for a flat panel that has the unique
feature of the ’814 patent and one that does not have the unique feature.
Accordingly, the significance of mounting the display on the door as a factor
in driving sales of the Patented Product cannot be isolated from other
factors, such as the size reduction made possible by a flat panel. Cf. Apple
Inc. v. Samsung Elecs. Co., No. 2015-1171, 2016 WL 761884, at *12 (Fed.
Cir. Feb. 26, 2016) (holding that nonobviousness of slide-to-unlock feature
was not demonstrated by studies in which customers preferred to purchase a
device with a slide-to-unlock feature because “the evidence does not show
what alternative device consumers were comparing that device to. For
example, it is not clear whether the alternative device had any unlocking
feature”).
Mr. Cook’s testimony regarding the 85% market share of gaming
devices that employ the patented invention is based on the products of Patent
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Owner’s products in addition to the products of Patent Owner’s licensees.
Ex. 2002 ¶ 4; Ex. 1013, 38:24–40:1. Patent Owner’s licensing of the ’814
patent as secondary evidence of nonobviousness is discussed in the next
section.
2. Licensing
Patent Owner argues that licensing of the ’814 patent by others
constitutes objective indicia of non-obviousness. PO Resp. 51–53.
Specifically, Patent Owner asserts that the vast majority of the gaming
machine market has taken a license to the ’814 patent. Id. at 51 (citing Ex.
2002 ¶ 14). Patent Owner submitted nine exemplary licenses. Ex. 2002
¶ 11, Exs. A–I.13 According to Patent Owner, the licenses arose out of
recognition by competitors that they could not effectively compete without
offering the feature of a door mounted flat panel display. PO Resp. 52
(citing Ex. 2002 ¶ 10). Patent Owner emphasizes that market leaders, such
as IGT and Bally’s, have taken a license. Id. at 52–53. And Patent Owner
argues that “[e]ach of the licensing agreements involving the ’814 Patent has
a total value exceeding a reasonable estimate of potential litigation costs at
the time of the agreement” and that the licenses were not entered into for the
purpose of settling patent infringement litigation. Id. at 53 (citing Ex. 2002
¶ 10).

13 Instead of filing each of the licenses as an individually numbered exhibit,
Patent Owner filed the licenses as Exhibits A–I to the Cook Declaration,
resulting in a 90-page Exhibit 2002 with nine sub-exhibits, each having its
own separate pagination. In future cases, we suggest that the parties avoid
agglomerating several different sub-exhibits together into a single exhibit
because it hinders the panel’s review and makes citation to specific portions
of the documents unnecessarily awkward.
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Petitioner counters that only one of the licenses that Patent Owner has
submitted sets out a specific royalty for the ’814 patent, and every other
license covers at least one other patent without apportioning a royalty for the
’814 patent. Reply 14 (citing Ex. 2002, Ex. C). In addition, Petitioner
argues that there is no evidence of how much revenue was actually paid
under any per-unit royalty license. Id. at 14. With reference to the license to
Bally’s, Petitioner cites the testimony of Mr. Cook that the licensee sells the
gaming unit for in comparison to which the royalty of
Id. at 14 (citing Ex. 1013, 37:5–38:8). Further, Petitioner
argues that, contrary to Patent Owner’s assertion, at least some of the
licenses Patent Owner submitted appear to have been entered into as part of
a litigation settlement. Id. at 14–15 (citing Ex. 2002, Ex. D; Ex. 1013, 35:3–
7).
Based on our review of the evidence and arguments, the large
proportion of the relevant industry that has taken a license to the ’814 patent
weighs in Patent Owner’s favor. However, the significance of the licensing
evidence as a secondary consideration of nonobviouness is weakened by
several factors. First, all of the licenses that Patent Owner submitted convey
rights beyond the ’814 patent. See Ex. 2002, Ex. A, § I.C.; id. at Ex. B,
§ 2.1; id. at Ex. C, § 1; id. at Ex. D, § 2; id. at Ex. E, § 2.1; id. at Ex. F,
§§ 1.1, 2.1; id. at Ex. G, §§ 1.1–1.3, 2; id. at Ex. H, § 2.1; id. at Ex. I, § 1.2,
Ex. A. Thus, the value of the licenses is not entirely attributable to the ’814
patent. See Cree, 2016 WL 1085247, at *7. Further, as Petitioner points
out, most of the licenses do not separately apportion the royalty rate for the
’814 patent, making a determination of how much of the value of the license
is attributable to the ’814 patent somewhat speculative.
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Moreover, the per-unit royalty amounts appear to be quite small
compared to the value of the machine. Particularly compelling in this regard
is Mr. Cook’s deposition testimony concerning the royalty paid by Bally’s, a
market leader whose decision to take a license Patent Owner touted as a
demonstration of the ’814 patent’s value (PO Resp. 52–53):
Ex. 1013, 37:22–25. Similarly,
the license to WMS Gaming, Inc. required a one-time payment of
See Ex. 2002 ¶ 11. This lump-sum amount is difficult to square with Patent
Owner’s assertion that the total value of each of the licenses exceeded
potential litigation costs. See PO Resp. 53.
The Federal Circuit has long recognized that licensing programs “are
not infallible guides to patentability. They sometimes succeed because they
are mutually beneficial to the licensed group or because of business
judgments that it is cheaper to take licenses than to defend infringement
suits, or for other reasons unrelated to the unobviousness of the licensed
subject matter.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907–
08 (Fed. Cir. 1985). More recent Federal Circuit decisions continue to
“specifically require affirmative evidence of nexus where the evidence of
commercial success presented is a license, because it is often ‘cheaper to
take licenses than to defend infringement suits.’” Iron Grip Barbell Co. v.
USA Sports, Inc., 392 F.3d 1317, 1324 (Fed. Cir. 2004); see also ABT
Systems, LLC v. Emerson Elec. Co., 797 F.3d 1350, 1361–62 (Fed. Cir.
2015) (“While licenses can sometimes tilt in favor of validity in close cases,
they cannot by themselves overcome a convincing case of invalidity without
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showing a clear nexus to the claimed invention.”). In this case, Patent
Owner relies on the testimony of Mr. Cook to show a nexus. For the reasons
discussed in the preceding section, we do not find the evidence of nexus to
be persuasive.
3. Summary
We acknowledge that Patent Owner’s evidence of secondary
considerations carries some weight in tending to show the nonobviousness
of the ’814 patent. However, on balance, for the reasons discussed above,
we determine that Petitioner’s evidence of obviousness outweighs the
evidence of secondary considerations of nonobviousness submitted by
Patent Owner. We find applicable here the Federal Circuit’s recent reminder
that “‘weak secondary considerations generally do not overcome a strong
prima facie case of obviousness.’ This is particularly true when an invention
involves nothing more than ‘the predictable use of prior art elements
according to their established functions.’” Apple, 2016 WL 761884, at *10
(internal citations omitted).
H. Patent Owner’s Motions to Seal
Patent Owner filed two motions to seal under 37 C.F.R. § 42.54.
Paper 13; Paper 25. The first motion moves to seal a confidential version of
Patent Owner Response and a confidential version of the Declaration of
Frederick Cook, Jr., including exhibits thereto. Paper 13, 2. The first
motion includes, as Exhibit A, a Joint Proposed Protective Order, which is
identical to the default protective order in the Office Patent Trial Practice
Guide except that it identifies this particular proceeding in the first sentence.
See id. at 5, Ex. A. The information sought to be sealed constitutes financial
terms of Patent Owner’s licensing agreements. Id. at 3–4. Patent Owner has
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also filed redacted versions of the documents sought to be sealed. See Paper
12; Ex. 2002. Paper 25 moves to seal seventeen pages of Exhibit 1013,
which is the transcript of Mr. Cook’s deposition. The portions sought to be
sealed discuss the terms of the licensing agreements that are the subject of
the first motion to seal. Id. A public, redacted version of the transcript has
been filed. See Ex. 1013. Both motions to seal are unopposed.
We have reviewed the exhibits at issue and find that Patent Owner has
made a sufficient showing that they contain confidential information.
Accordingly, we enter the Stipulated Protective Order submitted as Exhibit
A of Paper 13 and grant Patent Owner’s motions to seal (Paper 13; Paper
25).
This Decision discusses information that is the subject of the motions
to seal. See supra Section II.G.2. Accordingly, we have entered this
Decision in the Board’s PRPS system as “Board and Parties Only.” If either
Party believes that any portion of the Decision should be maintained under
seal, the Party must file, within five business days of the entry of this
Decision, a motion to seal portions of this Decision. The motion must
include a proposed redacted version of the Decision, accompanied by an
explanation as to why good cause exists to maintain under seal each redacted
word or phrase. In the absence of a motion to seal by the specified deadline,
the full version of this Decision will become public.
III. CONCLUSION
We conclude that Petitioner has shown by a preponderance of the
evidence that claims 1–8 and 10–14 would have been obvious in view of
Fraley and Okada. However, Petitioner has not shown that claim 9 would
have been obvious in view of Fraley and Okada.
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We further conclude that Petitioner has shown by a preponderance of
the evidence that claims 1–14 would have been obvious in view of Runte.
Finally, we conclude that Petitioner has shown by a preponderance of
the evidence that claims 1–8 and 10–14 would have been obvious in view of
Smith. However, Petitioner has not shown that claim 9 would have been
obvious in view of Smith.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–14 of the ’814 patent are held unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Seal is
granted;
FURTHER ORDERED that the Board’s default Protective Order
appearing in the Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,769–
71 (Aug. 14, 2012), is hereby entered in this proceeding; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Adam K. Yowell
Watson Rounds, P.C.
ayowell@watsonrounds.com
ayowell@bhfs.com

Marc D. Foodman
Watson Rounds, P.C.
mfoodman@watsonrounds.com

Michael Rounds
mrounds@bhfs.com

Steven Caloiaro
scaloiaro@bhfs.com

PATENT OWNER:

John S. Artz
DICKINSON WRIGHT PLLC
jsartz@dickinsonwright.com

Bryan Schomer
DICKINSON WRIGHT PLLC
bschomer@dickinsonwright.com