IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ARISTOCRAT TECHNOLOGIES, INC.,

Petitioner,

v.

IGT,
Patent Owner.

Case No. IPR 2016-00767

Patent No. D503,951

IGTS PRELIMINARY RESPONSE TO

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
NO. D503,951 UNDER 35 U.S.C. 311-319 AND 37 C.F.R. 42.100, et seq.

Mail Stop PATENT BOARD

Patent Trial and Appeal Board
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

Case No. IPR 2016-00767

U.S. Patent No. D503,951

I.

TABLE OF CONTENTS
Introduction...................................................................................................... 1

II.

Overview of the 951 Patent ............................................................................ 2

III.

Legal Principles for Design Patents................................................................. 4

IV.

V.

VI.

A.

Anticipation ........................................................................................... 4

B.

Obviousness........................................................................................... 5

The Board Should Deny Institution Because the Petition is Fatally

Flawed .............................................................................................................. 6
A.

Mr. Visser is neither an ordinary observer nor an ordinary

designer in the relevant art .................................................................. 6

B.

Aristocrats proposed broadest reasonable construction is

unreasonable and erroneous .................................................................. 8

Aristocrat is Not Reasonably Likely to Prevail on Ground I, Because

the Claim of the 951 Patent is Not Anticipated by Corwin ......................... 14
A.

Description of Corwin ......................................................................... 14

B.

The indicating member disclosed in Corwin comprises three

interconnected structures that create a substantially different
appearance than the indicators claimed by the 951 Patent ................ 16

C.

Corwin does not disclose indicators with three-dimensionality, as

claimed by the 951 Patent .................................................................. 18

D.

The indicators of Corwin do not anticipate the 951 Patent because

the angle of the indicators is different ................................................. 22

Aristocrat Is Not Reasonably Likely to Prevail on Ground II, Because

the Claim of the 951 Patent Is Not Obvious Over Fey ................................ 24
A.

Description of Fey ............................................................................... 24

B.

Aristocrat cannot show that a designer of ordinary skill would

modify Fey to create the claimed design of the 951 Patent ............... 25
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C.

The pentagons in Fey do not reveal any thickness or depth ............... 28

VII. Aristocrat Is Not Reasonably Likely to Prevail on Ground III, Because

the Claim of the 951 Patent Is Not Obvious Over Pollan in View of
Wismer ........................................................................................................... 30
A.

Description of Pollan and Wismer ...................................................... 30

B.

Aristocrat does not show a motivation to combine Pollan and

Wismer................................................................................................. 31

C.

Neither Pollan nor Wismer shows three-dimensional indicators ........ 33

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TABLE OF AUTHORITIES
Cases
Colida v. Sony Corp.,
70 F.3d 130 (Fed. Cir. 1995) ................................................................................16
Dobson v. Dornan,
118 U.S. 10 (1886) .................................................................................................9
Durling v. Spectrum Furniture Co.,
101 F.3d 100 (Fed. Cir. 1996) ............................................................... 5, 8, 25, 26
Egyptian Goddess, Inc. v. Swisa, Inc.,
543 F.3d 665 (Fed. Cir. 2008) ......................................................................... 9, 18
Gorham Mfg. Co. v. White,
81 U.S. 511 (1871) .............................................................................................5, 8
In re Borden,
90 F.3d 1570 (Fed Cir. 1996) .................................................................................6
In re Harvey,
12 F.3d 1061 (Fed. Cir. 1993) ................................................................................6
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) ...........................................................................5, 7
Intl Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233 (Fed. Cir. 2009) ....................................................................... 4, 17
Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
688 F.3d 1342 (Fed. Cir. 2012) ............................................................... 26, 28, 29
Motorola, Inc. v. Alexander Mfg. Co.,
786 F. Supp. 808 (N.D. Iowa 1991) .....................................................................25
OraLabs, Inc. v. Kind Grp. LLC,
No. 13-CV-00170-PAB-KLM, 2015 WL 4538444 (D. Colo. July 28, 2015) .......5
Statutes
35 U.S.C. 103 ..........................................................................................................5
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Rules
37 C.F.R. 42.100(a)...............................................................................................20
37 C.F.R. 42.65(a).................................................................................................20
Fed. R. Evid. 705 .....................................................................................................21
Regulations
77 Fed. Reg. at 48,763 .............................................................................................20
Other Authorities
Manual of Patent Examining Procedure 1503.01 (8th ed. 2001) ...........................9

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LIST OF EXHIBITS
Exhibit
Description
Ex. 2001 U.S. Patent No. D332,470.
Ex. 2002 U.S. Patent No. 6,336,863
Ex. 2003 U.S. Patent No. 5,823,874

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I.

Introduction
The Board should deny Aristocrats Petition for Inter Partes Review of U.S.

Patent No. D503,951 (the 951 Patent) (Ex. 1001) because the Petition fails to
show a reasonable likelihood that Aristocrat would prevail with respect to the
challenged claim.
First, the 951 Patent covers the ornamental design for a gaming machine.
In support of its argument that the 951 Patents claimed design is invalid,
Aristocrat relies exclusively on the declaration of a paid technical consultant,
Steven Visser, who has never designed, developed, purchasedor perhaps even
playeda gaming machine. That one of the largest developers and manufacturers
of gaming machines in the world could not identify a single qualified gaming
machine designer to opine on the validity of the 951 Patent is telling. Lacking
even passing knowledge of what makes designs for gaming machines attractive or
novel, Mr. Visser offers conclusory and unsupported opinions about what an
ordinary purchaser of gaming machines might or might not consider when
evaluating such articles. But because Mr. Visser is not himself an ordinary
purchaser or one of skill in the pertinent art, his opinions are not relevant. Devoid
of any qualified opinions regarding either anticipation or obviousness, Aristocrats
Petition necessarily fails.

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U.S. Patent No. D503,951
Second, even accepting Mr. Vissers qualifications for sake of argument,
none of the art he cites anticipates or renders obvious the claim of the 951 Patent.
Aristocrats primary reference, Corwin (Ex. 1003), is a patent that relates to
aeronautical instruments and discloses indicators of patentably distinct placement,
shape, and dimension; it therefore does not plausibly suggest the relevant attributes
that make the indicators of the gaming wheel of the 951 Patent novel. Corwins
indicators resemble those claimed by the 951 Patent only insofar as both show
indicatorson a wheel in the 951 Patent and on a circular navigational scale in
Corwin. As the Patent Office itself concluded, that is not enough. Aristocrats
obviousness arguments are even less persuasive, as they rely solely on Mr. Vissers
hindsight opinion that one of skill in the gaming art (with which Mr. Visser has no
experience) would substantially modify and combine portions of indicators from
different references to arrive at the 951 Patents claimed invention.
For these and the reasons set forth below, Aristocrats Petition should be
rejected and institution denied.
II.

Overview of the 951 Patent

The 951 Patent, titled Gaming Device Having a Display with Multiple

Indicators, issued April 12, 2005. (Ex. 1001.) Kimberly Karstens is the sole
named inventor. The 951 Patent claims [t]he ornamental design for a gaming
device having a display with multiple indicators, as shown and described in the
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specification. (Id.) The specification itself comprises nineteen drawn figures
depicting sixteen embodiments of the claimed invention. Each of the drawings
shows either two or three indicators arranged around the wheel of a gaming
machine, with each indicator having a specific spatial and angular relation to the
other indicator(s). The specific gaming machine shown in phantom in each
drawing in the 951 Patent is not claimed.
The 951 Patent issued from U.S. Patent Application No. 29/187,659 filed
August 5, 2003 (the 659 Application). (Ex. 1002.) The 659 Application
contains twenty-nine drawn figures. (Id. at 62-95.) During examination, the
Patent Examiner subjected the 659 Application claim to a restriction requirement.
(Id. at 22-23.) Specifically, the Examiner concluded that the embodiments
disclosed in the 659 Application divided into three patentably distinct groups of
designs. (Id. at 23.) The Examiner determined that [t]he embodiments disclosed
within each group have overall appearances that are basically the same, and that
the differences among the embodiments in each group are considered minor and
patentably indistinct, or are shown to be obvious in view of analogous prior art
cited. (Id.) The Examiner further determined, however, that the different
number and placement of indicators patentably distinguishes each group from the
other(s). (Id.) Representative examples from each patentably distinct group from

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U.S. Patent No. D503,951
the 659 Application cited by the Examiner are reproduced below:

Group I

Group II

Group III

The Examiner concluded that the overall appearances of these three

distinct embodiments are not basically the same, or if they are basically the same,
the differences are not minor and patentably indistinct or are not shown to be
obvious in view of analogous prior art. (Id.)
In response to the restriction requirement, Applicant elected Group I,
without traverse, for examination on the merits. (Id. at 18.) Based on that
restriction, the Examiner deemed the claimed design to be patentable over the
references cited. (Id. at 8.)
III.

Legal Principles for Design Patents

A.

Anticipation

As with infringement, the test for anticipation of a design patent is whether

in the eye of an ordinary observer ... two designs are substantially the same. Intl
Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239 (Fed. Cir. 2009).
Any analysis of an anticipatory reference must take account of the design as a
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whole, and differences in proportion and overall shape may create a different
overall visual impression. OraLabs, Inc. v. Kind Grp. LLC, No. 13-CV-00170PAB-KLM, 2015 WL 4538444, at *13 (D. Colo. July 28, 2015). A court may find
a design patent anticipated if, in the eye of an ordinary observer, giving such
attention as a purchaser usually gives, two designs are substantially the same, if the
resemblance is such as to deceive such an observer, inducing him to purchase one
supposing it to be the other. Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871).
B.

Obviousness

In the design patent context, the ultimate inquiry under 35 U.S.C. 103 is
whether the claimed design would have been obvious to a designer of ordinary
skill who designs articles of the type involved. In re Rosen, 673 F.2d 388, 390
(C.C.P.A. 1982). More specifically, the inquiry is whether one of ordinary skill
would have combined teachings of the prior art to create the same overall visual
appearance as the claimed design. Durling v. Spectrum Furniture Co., 101 F.3d
100, 103 (Fed. Cir. 1996). [T]he first step in an obviousness analysis for a design
patent requires a search of the prior art for a primary reference. This requires the
trial court to: (1) discern the correct visual impression created by the patented
design as a whole; and (2) determine whether there is a single reference that
creates basically the same visual impression. Id. If an appropriate primary
reference is identified, other references may be used to modify it to create a design
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that has the same overall visual appearance as the claimed design. See In re
Harvey, 12 F.3d 1061, 1063 (Fed. Cir. 1993). These secondary references may
only be used to modify the primary reference if they are so related [to the primary
reference] that the appearance of certain ornamental features in one would suggest
the application of those features to the other. In re Borden, 90 F.3d 1570, 1575
(Fed Cir. 1996).
IV.

The Board Should Deny Institution Because the Petition is Fatally

Flawed
A.

Mr. Visser is neither an ordinary observer nor an ordinary

designer in the relevant art

Aristocrats Petition is based almost exclusively on the opinions of Steven

Visser; indeed, the arguments in the Petition are taken nearly verbatim from Mr.
Vissers Declaration (or vice-versa). The Petition should be rejected, because Mr.
Visser is neither a person of skill in the relevant art, nor an ordinary observer,
designer, or purchaser of the relevant article. In its Petition, Aristocrat suggests
that a person of ordinary skill in the art is a designer of devices that include
displays and indicators, without any reference to experience such designer might
have regarding the subject matter of the patent: gaming machines. (Pet. at 12.)
The 951 Patent, entitled Gaming Machine Having a Display with Multiple
Indicators, is specifically directed to an ornamental design for a gaming machine,
and all of the art cited and relied on during prosecution of the 951 patentwhich
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the Patent Office deemed analogous prior art (Ex. 1002 at 23.)related to or
disclosed specific gaming machines or designs for gaming machines. See In re
Rosen, 673 F.2d at 390 (analyzing obviousness of table design not by reference to
designs of flat objects that also hold things up, like pedestals, but instead stating
that the issue before us is whether appellants table design from the standpoint of
its appearance as a whole would have been obvious to one of ordinary skill in
designing tables or other closely related contemporary furniture.) (emphasis
added). Aristocrat has ignored the requirement that the designer be of skill in the
art related to the articles in question.
Based on the disclosures in his declaration and curriculum vitae, Mr. Visser
has never designed, worked on, developed, repaired, implemented concepts for,
purchased, or even played a gaming machine. (Ex. 1019.) Instead, he has selfprofessed expertise designing devices with arrow shaped indicators, such as,
apparently, cell phones and a USB Drive. (Ex. 1018 at 5-6.) According to Mr.
Visser and Aristocrat, one of skill in the art of creating the ornamental design for
a gaming machine does not require any experience designing gaming machines.
They are wrong.
In evaluating validity of design patents, two related concepts come into play:
the ordinary observer or purchaser of the patented article and the designer of
ordinary skill. For example, to prove anticipation, Aristocrat must show that an
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ordinary observer, giving such attention as a purchaser usually gives would be
deceive[d] and induc[ed]to purchase one supposing it to be the other.
Gorham Mfg., 81 U.S. at 528. And in assessing whether a design patent is invalid
for obviousness, the question is whether the claimed design would have been
obvious to a designer of ordinary skill who designs articles of the type involved.
Durling, 101 F.3d at 103. Mr. Visser is not a designer or purchaser of ordinary
skill. He has no experience at all designing or purchasing gaming machines.
Because Aristocrat presents no valid testimony or evidence regarding a designer or
purchaser of ordinary skill, its Petition should be rejected for that reason alone.1
B.

Aristocrats proposed broadest reasonable construction is

unreasonable and erroneous

Aristocrats proposed construction for the claimed design of the 951 Patent,
which Aristocrat advances in an effort to capture irrelevant prior art, is overly
broad. As an initial matter, as the Supreme Court and Federal Circuit have long

In an effort to establish any connection at all to gaming machines, Mr.

Visser states that he is the named inventor on three patents titled Video Game
Controller. (Ex. 1018 at 7.) In truth, those patents are entitled Video Game
Controller for Use With an Exercise Apparatus, and even a cursory review shows
the controllers are unrelated to the gaming machines disclosed in the 951 Patent.
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recognized, a design is better represented by an illustration than it could be by any
description and a description would probably not be intelligible without the
illustration. Dobson v. Dornan, 118 U.S. 10, 14 (1886); see also Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed. Cir. 2008) (finding that
courts should recognize the risks entailed in such a description, such as the risk of
placing undue emphasis on particular features of the design and the risk that a
finder of fact will focus on each individual described feature in the verbal
description rather than on the design as a whole); Manual of Patent Examining
Procedure 1503.01 (8th ed. 2001) ([A]s a rule the illustration in the drawing
views is its own best description.). The drawings in the 951 Patent specification
are all the description that is necessary to find that the patent is valid over the prior
art Aristocrat cites in its Petition.
Aristocrat argues that the broadest reasonable construction for the 951
Patent claim is at least two opaque house-shaped arrows, as depicted in FIGS. 1
19, that are three-dimensional and spaced concentrically around a circle. (Pet. at
23.) Aristocrat suggests that [t]he patent does not claim any specific orientation,
angle, or number of arrows, or any specific spacing or angular relationship
between arrows. (Id.) Aristocrat is wrong.
First, the 951 Patent claims an orientation whereby the indicator points to
the center of a circle or wheel. Every embodiment shows arrows directed to the
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center of a circle or wheel. The951 Patent issued over prior art showing arrows
that pointed away from the center of the wheel, including U.S. Patent D332,470
(Ex. 2001, at left below) and U.S. Patent 6,336,863 (Ex. 2002, at right):

Second, the indicators claimed by the 951 Patent are pointed indicators set
at specific angles one to the other. Each embodiment shows two or three indicators
positioned evenly spaced across an arc of about 70. Contrary to Aristocrats
position that [t]he patent does not claimany specific spacing or angular
relationship between arrows, the Patent Office found that such specific angular
relationships between arrows was a factor in concluding that the 659 Application
included three patentably distinct groups. Specifically, the Patent Office
determined that the angular relationship of the indicators rendered the
embodiments patentably distinct: indicators opposite each other on a wheel (at
180) constituted a different overall appearance than indicators more closely
adjacent to each other:

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(Ex. 1002 at 23.)

Even Aristocrat recognizes that the angular relationship of indicators creates
a distinct visual impression. For example, Aristocrat acknowledges, at least
implicitly, that the Wismer referencewhich Aristocrat cites as a secondary
reference for the shape of the indicators onlyis distinct from the alignment of the
indicators claimed by the 951 Patent:

(Ex. 1006.)
Aristocrat claims that the spacing and angular relationship of the indicators
in the 951 Patent are functional elements that are dictated by what the
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indicators need to point to. (Pet. at 17-18.) But that argument is belied by both
Aristocrats Petition and the patent itself. As the Petition repeatedly points out, the
particular gaming machineand specifically the particular wheel on the gaming
machineis not claimed. (Pet. at 10.) Since the particular wheel on the gaming
machine is not claimed, the spacing and angular relationship of the indicators
cannot be functional. They are proper design claim elements.
The embodiments depicted in the 951 Patent show that the patent claims
any two, or all three, of the indicators positioned evenly spaced across an arc of
about 70, as reflected below from Figures 3, 5, and 6 of the 951 Patent:

Third, the 951 Patent claims two or three indicators around the wheel. A
wheel with one, or four or more, indicators is beyond the scope of the claim. For
example, the 951 Patent issued over references showing just a single arrow on a
wheel of a gaming machine (see, e.g., U.S. Patent No. 5,823,874) (Ex. 2003), as
well as references showing twelve indicators (GB 2 201 821 A) (Ex. 1010). The
Patent Examiner specifically found that the different number of indicators shown
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in the different groups of embodiments depicted in the 659 Application rendered
them patentably distinct. (Ex. 1002 at 23.)
Finally, Aristocrat argues that the 951 Patent indicators do not show
uniform depth, and thus prior art indicating
any depth at all constitutes relevant, related
art. (Pet. at 21.) Aristocrats argument
misconstrues the drawings in the
specification, which indicate depth through
the vantage point of the observer. For
example, in Figure 5 (shown at right), the
wheel (in phantom) is shown to have a certain depth on the left side, but none on
the right. (Ex. 1001.) Obviously this indicates that the drawing is being viewed
from the vantage point of an individual standing to the left of the gaming machine.
The drawings plainly depict that each claimed indicator has a relative thickness or
three-dimensionality at the pointer end.
For purposes of evaluating Aristocrats Petition, to the extent any verbal
description is even necessary, the proper broadest reasonable construction of the
951 Patent claim is: Two or three opaque, pointed indicators that are threedimensional at their point and positioned concentrically and evenly spaced across
an arc of about 70 of a circle, as depicted in Figs. 1-19.
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V.

Aristocrat is Not Reasonably Likely to Prevail on Ground I, Because the

Claim of the 951 Patent is Not Anticipated by Corwin
A.

Description of Corwin

Corwin is a utility patent entitled Air Navigation Instrument that issued on

August 31, 1965. (Ex. 1003.) Corwin discloses a device that pilots can use to
track time and distance in flight. The navigational instrument is compact and can
be easily installed on the control panel of an aircraft. (Id. at 1:14-16.) More
specifically, Corwin describes a circular time scale with a rotatable circular
distance scale mounted to it. (Id. at 1:17-21.) The rotatable distance scale
includes [i]ndicating members, which are mounted for movement along the
rotatable circular distance scale. (Id.) The indicating members of Corwin
comprise three connected structures: a checkpoint identifying member 46, a
pointer support 58, and a pointer 60, as shown below:

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(Id. at Fig. 1.)
The entire indicating member with its three components moves along the
rim of the rotatable distance scale when the operator manually moves the
indicatoras shown by indicators 3 and 4 shown in phantom on the right side of
the wheel above. (Id. at 2:5-14; Fig. 1.) The dimensionality of the indicator in
Corwin is arrayed in a step-shape configuration, as indicated by Figure 5 in the
patent, which shows the checkpoint identifying member, pointer support, and
pointer from a side-view:

The checkpoint identifying member 46 (the cross-hatched square) is

shown in the shape of a cube, the pointer support 58 rides the rim of the
distance scale 22, and the pointer 60 (the roof of the long pentagonal
indicator) has no thickness at all; it lies flat against the distance scale. (Id. at 2:1822; 2:30-33; Fig. 5.)
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Aristocrat concedes that the indicators of Corwin differ from those of the
951 Patent, but, in conclusory fashion supported by its unqualified declarant, says
that these differences are not sufficient to distinguish the designs to an ordinary
observer. Aristocrat has not met its burden to show that success is reasonably
likely for three independent reasons set forth in sections (B), (C), and (D) below.
B.

The indicating member disclosed in Corwin comprises three

interconnected structures that create a substantially different
appearance than the indicators claimed by the 951 Patent

In evaluating an anticipatory reference, one compares the overall

appearance of the [951] patent design with the overall appearance of a prior art
reference. If the prior art reference merely suggests the components of the [951]
patent design but not its overall appearance, the design is not anticipated under
section 102. Colida v. Sony Corp., 70 F.3d 130 (Fed. Cir. 1995).
In an effort to advance its anticipation arguments, Aristocrat substantially
alters the indicators shown in Corwin to try to make them appear more like the
claimed indicators of the 951 Patent. Most significantly, Aristocrat removes,
without explanation, the checkpoint identifying member 46 from the indicating
member disclosed in Corwin. The actual indicating member disclosed in Corwin
is shaped as below:

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This elongated pentagonal shapewhere the walls of the house are nearly
twice as long as the baseis substantially different from what is disclosed in the
951 Patent, as is readily apparent from a side-by-side comparison of the surface
shapes of the two indicators:

Faced with this obvious and substantial distinction, Aristocrat uses a digital
cropping tool to remove a considerable portion of the Corwin indicator to change
its appearance. Aristocrats argument is disingenuous. It is like saying that a
rectangle anticipates a square because the rectangle can be squared off with a
(digital) saw.
The ordinary observer test requires consideration of the design as a whole.
See Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1243 (Fed.
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U.S. Patent No. D503,951
Cir. 2009); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 677 (Fed. Cir.
2008). Even if Mr. Visser were a relevant ordinary observer of designs for gaming
machinesand he is nothe gives no explanation for why an ordinary observer
would simply ignore a substantial portion of the indicator in Corwin to create an
indicator with a fundamentally different visual appearance and thus become
confused by the designs of these arrows or purchase the [Corwin indicator]
thinking it is the [951 Patent indicator]. (Ex. 1018 at 33.) Nor does he explain
why an ordinary observer intent on fundamentally altering the Corwin indicator
would elect to lop off just the checkpoint identifying member 46why not the
pointer support 58 as well? The reason for Aristocrats, and Mr. Vissers,
convenient cropping of the Corwin reference is clear: both are beginning with the
indicator claimed by the 951 Patent and trying to create a match in the prior art
that does not in fact exist. Aristocrats anticipation argument with respect to
Corwin fails for this reason alone.
C.

Corwin does not disclose indicators with three-dimensionality, as

claimed by the 951 Patent

The claimed indicator in the 951 Patent has a thickness at the roof of the
pentagon shape that appears over the wheel, as shown below:

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(Ex. 1001 at Fig. 3.)

Comparing the indicator of the 951 Patent to the Corwin indicator, Mr.
Visser states: Both have three-dimensional indicators. (Ex. 1018 at 32.) That is
misleading at best, and simply wrong for purposes of his anticipation analysis. The
varying dimensionality shown in Corwin is the opposite of what is shown in the
951 Patent. In Corwin, the only three-dimensionality on the indicator appears at
the base of the pentagon (the checkpoint identifying member), as shown in Fig. 5
of Ex. 1003:

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In direct contrast to the indicator in the 951 Patent, where the roof of the
pentagon has substantial thickness, Corwin shows the roof of the indicator
completely flat against the display (the distance scale). Even Aristocrat
concedes in its Petition that the indicators in the 951 Patent have some threedimensionality and dip down (i.e. increase in thickness) at the roof as compared
to the base. (Pet. at 22.) (emphasis in original) Corwin shows just the opposite
of what Aristocrat itself says is claimed in the 951 Patent. The only way that the
roofs of the indicators of Corwin are three-dimensional is in the sense that all
physical objects are three-dimensional, but in no way in the sense of the design of
the 951 Patent.
In an effort to evade these substantial differences in appearance, Mr. Visser
states in purely conclusory terms that an ordinary observer wishing to purchase a
gaming device, would be confused by the designs of these arrows and would
purchase one thinking it is the other. (Ex. 1018 at 33.) As discussed above, Mr.
Visser is not an ordinary observer in the art who could make such a determination,
but even if he were he must provide some evidence to support his bald assertions.
37 C.F.R. 42.65(a) (testimony must disclose the underlying facts or data on
which it is based; otherwise it is entitled to little or no weight); see 37 C.F.R.
42.100(a) (establishing that inter partes review is subject to the procedures set
forth in subpart A of this part including 42.65); see also 77 Fed. Reg. at 48,763
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(explaining that [t]he Board expects that most petitions . . . will rely upon
affidavits of experts, but [a]ffidavits expressing an opinion of an expert must
disclose the underlying facts or data upon which the opinion is based (citing
42.65 and Fed. R. Evid. 705).
Mr. Visser provides no evidence at all how anyone is, has been, or would be
misled into believing that an indicator having substantial thickness at the roof (i.e.,
the point of the arrow) was the same as an indicator that lies flat against a display
with no thickness. Indeed, Mr. Vissers declaration shows the opposite is true. He
claims that the pointer in Corwin is shown as bending to lie flat againstnear
the surface ofthe display in order to reduce parallax. (Ex. 1018 at 26.) Mr.
Visser does not and cannot dispute that the indicator claimed by the 951 Patent
has substantial thickness at the roof (or point) of the arrow. Put differently, in
Corwin, the indicator lies directly atop the display and with essentially no
thickness, while in the 951 Patent the indicator
extends from slightly above the rimand thus far
above the wheel or displaydown toward the
wheel, exhibiting substantial relative thickness.
The difference is readily seen at right, where the
red lines indicate the dimensionality of the pointer tip of the 951 Patent indicators
relative to Corwins pointer 60 shown in Fig. 5 of Corwin. (Ex. 1003.)
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The indicator of Corwin (which lies flat against the display) and the
indicator from the 951 Patent (in red, which has thickness at the roof causing
the pointer to appear above the wheel) are oppositenot substantially the
samedesigns. Aristocrats anticipation argument with respect to Corwin fails
for this reason alone.
D.

The indicators of Corwin do not anticipate the 951 Patent

because the angle of the indicators is different

The 951 Patent claims any two, or all three, of the indicators positioned
evenly spaced across approximately a 70 arc. The indicators in Corwin are not
fixed at either angle, as can be seen when overlaying Corwins aeronautical
instrument over the 951 gaming machine.

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Mr. Visser tries to overcome this substantial difference in appearance by
changing the angle of the indicators in his graphic. On page 29 of his declaration,
he places the Corwin indicators onto the wheel of the gaming machine depicted in
the 951 Patent. (Ex. 1018 at 29.) But in doing so, he misleadingly mimics the
angular relation disclosed in and claimed by the 951 Patent rather than the angular
relation of the indicators from Corwin in their original form. At left below are the
indicators as disclosed in Corwin; at right (on the left side of the wheel) are those
indicators as modified and re-positioned by Mr. Visser to try to support his
anticipation argument:

As with the artful cropping of the Corwin indicator discussed above, this
deception cannot save Aristocrats argument. Nor can Mr. Vissers conclusory
assertion that, despite the significant differences between the indicators claimed by
the 951 Patent and those disclosed in Corwin, an ordinary purchaser of gaming
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machines would be deceived into believing that the indicators were the same.
Because Mr. Visser is not an ordinary designer or purchaser, and because he offers
no evidence regarding any alleged purchaser confusion, Aristocrats claim that
Corwin anticipates the 951 Patent design should be rejected. Aristocrats
anticipation argument with respect to Corwin fails for this reason alone.
VI.

Aristocrat Is Not Reasonably Likely to Prevail on Ground II, Because

the Claim of the 951 Patent Is Not Obvious Over Fey
A.

Description of Fey

Fey is a book charting the early history of the gaming machine industry. It
includes pictures of dozens and dozens of different gaming machines. (Ex. 1004.)
None shows the design claimed by the 951 Patent. Instead, Aristocrat points to a
faintly obscured photograph of a single gaming machine, Double Bonus by
Takasago Distribution Co., which Aristocrat says contains two upward pointing
house-shaped indicators spaced at a distance. (Pet. at 28-29) While two
pentagonal shaped images do appear on the cabinet of the Double Bonus gaming
machine shown in Fey, they do not act as indicators; each points to what appears
to be a series of unchanging numbers, rather than to a symbol or number that
changes as a reel or wheel spins. (Ex. 1004 at 115.) The pentagonal shapes
themselves appear to have writing on them, although the picture is too fuzzy to
discern what it is. (Id.)

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B.

Aristocrat cannot show that a designer of ordinary skill would

modify Fey to create the claimed design of the 951 Patent

Because the overall appearance of the design in Fey does not remotely
suggest the ornamental design claimed by the 951 Patent, Aristocrat relies on the
unqualified Mr. Visser to fill the gaps. He claims, without support, that it would
be obvious to place the arrows concentrically (rather than parallel to each other) so
as to ensure that each indicator points only to one segment on the wheel. (Pet. at
45; Ex. 1018 43, 64) But such a fundamental change to the design of Fey
among the many other changes that would be necessary to render obvious the 951
Patentis not an obvious variation. The substantial changes to Fey that Aristocrat
and Mr. Visser suggest are changes that would be made only by one using
hindsight to try to create an obviousness argument.
In any obviousness analysis, the inquiry is whether one of ordinary skill
would have combined teachings of the prior art to create the same overall visual
appearance as the claimed design. Durling v. Spectrum Furniture Co., 101 F.3d
100, 103 (Fed. Cir. 1996). Aristocrat has the burden to establish the level of
ordinary skill in the relevant art, and it must be established that Mr. Visser
possesses the necessary skill in the relevant art to evaluate obviousness. Motorola,
Inc. v. Alexander Mfg. Co., 786 F. Supp. 808, 814 (N.D. Iowa 1991). It is
improper to rely solely on hindsight to reconstruct references to come up with the

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patented design. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
1368 (Fed. Cir. 2012) (court must still be careful not to allow hindsight
reconstruction of references to reach the claimed invention without any
explanation as to how or why the references would be combined to produce the
claimed invention) (citations omitted).
Aristocrat has not met its burden. First, Mr. Visser is not one of skill in the
art of designing gaming machines. He has never designed a gaming machine in his
entire career, nor has he ever been involved in making purchasing decisions for
gaming machines. Based on his own disclosures, the first time Mr. Visser ever
evaluated the design of a gaming machine was when he signed up to be
Aristocrats paid expert in this proceeding. Given his lack of relevant experience,
his opinions regarding what a designer of ordinary skill might or might not do
are entitled to no weight. Durling, 101 F.3d at 103.
Second, given his lack of experience with gaming machines, Mr. Visser
relies solely on hindsight to suggest that an actual game designer (which he is not)
would be motivated to use the pentagonal shapes in Fey as indicators on the wheel
of a gaming machine, and, further, that this hypothetical game designer would
place such indicators in the same position as claimed by the 951 Patent.
Mr. Visser does not provide any evidence or basis for why one of skill in the
art would place pentagons around a wheel as disclosed in the 951 Patent. For
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example, Mr. Visser does not say why it would be obvious to place the pentagonal
shapes disclosed in Fey pointing toward the center of the wheel rather than away
from the center of the wheel, as shown in analogous prior art cited to the Examiner.
(Exs. 2001, 2002.). Both could point to a number or symbol on a wheel, but Mr.
Visser does not say why some hypothetical designer of skill in the art would
choose one over the other.
Moreover, Mr. Visser does not say why one of skill in the art modifying Fey
would be motivated to adopt the placement of indicators as claimed by the 951
Patent. During prosecution, the Examiner determined that the placement of
indicators in Groups II and III of the 659 Application created overall
appearances of those embodiments that were not basically the same or not
patentably indistinct from the embodiments disclosed in the issued 951 Patent.
(Ex. 1002 at 22-23.) The 659 Application shows various patentably distinct ways
to place the indicators around the wheel of a gaming machine. Mr. Visser does not
say why a developer of ordinary skill in gaming machines would be motivated to
place indicators in the position claimed by the 951 Patent rather than in the
numerous patentably distinct positions shown in the 659 Application.
The only basis Mr. Visser has for concluding that it would be obvious to
modify Fey to place pentagonal shapes around a wheel in the same way as claimed

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in the 951 Patents invention is hindsight, and that is improper. Kinetic Concepts,
688 F.3d at 1368.
C.

The pentagons in Fey do not reveal any thickness or depth

The pentagonal shapes in Fey are not three-dimensional; they are images
drawn onto the console of a gaming machine. And even the images themselves do
not reveal any dimensionality, as close scrutiny reveals.2 (Ex. 1004 at 115.)
Because the indicators lack any dimensionality, Mr. Visser states that [i]n any
eventit would have been obvious to a designer of skill in the art to apply the
design of Feys indicators to a three-dimensional display, which would lead to
indicators with three-dimensionality. (Pet. at 46.) Mr. Visser does not provide
any basis for his conclusory assertion. Instead, he states that a designer of
ordinary skill would be familiar with three-dimensional displays with threedimensional indicators, because such displays and indicators were prevalent in the
prior art. (Ex. 1018 at 46.) Mr. Visser then takes his opinion a step further and
states, again without support, that it would be obvious to include a dip at the roof

Mr. Visser claims that the indicators in Fey have some three-

dimensionality (Double Bonus uses drop shadows to indicate visual thickness)

(Ex. 1018 at 39), but he rightly walks back that claim, since no depth is apparent
in the Fey pentagons.
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of the indicators, such that the roof is thicker than the base. (Id.) Mr. Visser
claims that this is one of two design choices available to a designerthe other
being to not dip or bend the indicator. (Id. at 47.)3
As with the placement of the indicators, designers of ordinary skill would
recognize various alternatives for the possible dimensionality of any indicator on a
wheel: it could lay flat against the wheel (as in Corwin (Ex. 1003)), or it could
have thickness, as in the 951 Patent. (Ex. 1001.) Mr. Visser does not state why
one of skill in the art would choose to adopt the 951 Patent design rather than the
distinct Corwin design. Mr. Visser does not say why a designer of skill in the art
intent on modifying the Fey reference would elect to add dimensionality to the tip
rather than lying it flat against the wheel. Clearly, Mr. Visser is again improperly
relying on hindsight to fundamentally alter the dimensionality of the Fey pentagons
to make them fit the dimensionality of the 951 Patent indicators. Kinetic
Concepts, 688 F.3d at 1368.

As is evident from Mr. Vissers declaration, bending and dipping the

indicator are alternatives, not the same thing. To bend the indicator around the
rim allows the pointer to rest on the display, as in Corwin. To dip the indicator is
to maintain thickness at the point, as in the 951 Patent.
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VII. Aristocrat Is Not Reasonably Likely to Prevail on Ground III, Because
the Claim of the 951 Patent Is Not Obvious Over Pollan in View of
Wismer
A.

Description of Pollan and Wismer

The Pollan reference purports to be an article from a June 1986 issue of

Channels magazine. (Ex. 1005.) It shows a picture of the popular and well-known
Wheel of Fortune television game, which Pollan calls a national obsession and
which he estimates will earn its producers more than $100 million in 1986. (Id. at
24.) Pollan shows three contestants standing around a large spinning wheel. As
was well known, each participant in Wheel of Fortune takes a turn spinning the
wheel trying to obtain money amounts, which the contestant can secure by
correctly guessing letters in a word or phrase.
The indicators disclosed in Pollan and used in the Wheel of Fortune
television game are fundamentally different from the indicators disclosed in the
951 Patent, as Aristocrat acknowledges. The most significant differencewhich
neither Aristocrat nor Mr. Visser discussis that the actual indicators in Pollan are
a moveable inverse teardrop- (or ice cream cone-), shaped pointer appended to a
large triangle. The teardrop indicator ticks along pegs attached to the spinning
wheel, much like a classic prize wheel. It is the point of the teardrop-shaped
indicator that informs the player which dollar figure she may win with a correct
guess of a letterregardless of whether the tip of the triangle points to that same
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value. The excitement from the Wheel of Fortune game displayed in Pollan
occurred when the wheel began to slow down and the participant and audience
wondered whether, for example, the below yellow tear-drop indicator would stay
on $900 or come to rest on the lower $250 amount:

Wismer is a 1987 utility patent directed to randomly selecting groups of

numbers. (Ex. 1006.) It discloses a wheel with three indicator marks, which are
used to help select numbers in a lotto game. The indicator marks lie flat against
the wheel; they have no appreciable thickness.
B.

Aristocrat does not show a motivation to combine Pollan and

Wismer

To the extent Pollan is deemed a relevant primary reference for an

obviousness analysis, it does not support Aristocrats arguments, because
Aristocrat does not show why a designer of skill in the art would combine Pollan
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with Wismer. Nor would such a combination, even if done, create an overall
visual impression that would be confusingly similar to the first embodiment of the
951 patent, as Mr. Visser claims. (Ex. 1018 at 49.)
Even though Aristocrat does not accurately describe the indicators in Pollan
(which include flat, teardrop-shaped arrows), Aristocrat goes on to concede that
Pollan does not disclose the 951 Patent indicators. Instead, citing Mr. Visser,
Aristocrat argues:
A POSA would be motivated to use the shape of the Wismer
indicators on the Pollan reference to create a hypothetical prior art
reference because the POSA would appreciate that other indicator
designs, such as house-shaped arrows, exist in the prior art that may
provide an equally or more pleasing design and may serve a
functional purpose, for example, by making the selection more visible
to observers or game contestants because a house-shaped arrow is
more clearly aligned with the segments relative to a triangle-shaped
arrow.
(Pet. at 53.)
Mr. Visser does not explain why one of skill in the art would be motivated to
modify the design of an indicator used in a hugely successful, national obsession
game show. (Ex. 1005 at 24.) Presumably, a designer of skill in the art would be
motivated to mimic that design, not fundamentally alter it. Modifying the moving
teardrop-shaped moving indicator disclosed in Pollan would diminish the
excitement associated with the uncertainty of where the pointer would ultimately
land. Removing this uncertainty and the suspension it creates would run contrary
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to the contestants experience and destroy one of the features that contributed to
such a national obsession game show. Moreover, Mr. Visser does not cite any
evidence that the teardrop-shaped indicator in Pollan was not a pleasing design,
or that it created any difficulty with visibility amongst observers or game
contestants. (Ex. 1018 at 48.) As with his opinion on the Fey reference, Mr.
Visser is relying 100% on hindsight to cobble together references that he deems
similar to the 951 Patent design. His legally impermissible efforts should be
rejected.
C.

Neither Pollan nor Wismer shows three-dimensional indicators

Further relying on hindsight, Mr. Visser claims that an ordinary designer

would be motivated not only to change the fundamental shapes of the Pollan
indicators (the teardrop appended to the triangle), but also to add dimensionality
that does not exist in either Pollan or Wismer. He states: it would be obvious to
include a dip at the roof of the indicators, such that the roof is thicker than the
base. (Id. at 48.) He again claims that such modification would be a wellknown technique for reducing parallax, (id.) but as an individual who has never
designed or worked on a gaming machine, he cannot credibly claim that parallax
even presents an issue, much less one that would motivate an actual gaming
machine designer to substantially modify prior art indicators. Nor does he present
any evidence from anyone who designs or purchases gaming machines that
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parallax ever presented a problem to be addressed. In fact, all of the evidence
suggests the oppositethat game designers of ordinary skill in the art do not view
parallax as an issue in the design of gaming machines. In particular, other than in
the 951 Patent, Aristocrat has not shown any prior art that incorporates the
geometry and dimensionality of the 951 Patent. Aristocrat cannot credibly claim
that it would have been obvious to mimic a design that did not exist until Kimberly
Karstens invented it in 2003.
Aristocrats Petition should be denied.

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RESPECTFULLY SUBMITTED this 15th day of June, 2016.
NEAL, GERBER & EISENBERG LLP

By: /s/ Holby M. Abern

Holby M. Abern
Registration No. 47,372
Lead Counsel for Patent Owner
Neal, Gerber & Eisenberg LLP
Two North LaSalle Street, Suite 2200
Chicago, IL 60602
Telephone: 312-269-8428
Facsimile: 312-980-0864
E-mail: habern@ngelaw.com

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CERTIFICATE OF SERVICE (37 C.F.R. 42.6(e))
The undersigned hereby certifies that the foregoing IGTS
PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES
REVIEW OF U.S. PATENT NO. D503,951 UNDER 35 U.S.C. 311-319 AND
37 C.F.R. 42.100, et seq. was served electronically via e-mail on June 15, 2016,
in its entirety on the following counsel of record for Petitioners:

Andrea G. Reister
Covington & Burling LLP
areister@cov.com
One City Center
850 Tenth Street, NW
Washington, DC 20001

Jay I. Alexander
Covington & Burling LLP
jalexander@cov.com
One City Center
850 Tenth Street, NW
Washington, DC 20001
Respectfully submitted,
/s/ Holby M. Abern
Holby M. Abern
Registration No. 47,372
Lead Counsel for Patent Owner
Neal, Gerber & Eisenberg LLP
Two North LaSalle Street, Suite 2200
Chicago, IL 60602
Telephone: 312-269-8428
Facsimile: 312-980-0864

Case No. IPR 2016-00767

U.S. Patent No. D503,951
CERTIFICATE OF COMPLIANCE
Pursuant to 37 C.F.R. 42.24(d) (Amendments to the Rules of Practice for
Trials Before the Patent Trial and Appeal Board, published April 1, 2016, and
effective May 2, 2016), Patent Owner hereby certifies that its response to petition
contains 6,842 words, not including the parts of the response exempted by 37
C.F.R. 42.24(a)(1).
Respectfully submitted,
/s/ Holby M. Abern
Holby M. Abern
Registration No. 47,372
Lead Counsel for Petitioner
Neal, Gerber & Eisenberg LLP
Two North LaSalle Street, Suite 2200
Chicago, IL 60602
Telephone: 312-269-8428
Facsimile: 312-980-0864