[00:00:01] Speaker 01:
May it please the court.

[00:00:10] Speaker 02:
I think it's important to start with what the claims state in this case.

[00:00:14] Speaker 02:
And that is there has to be an apparatus.

[00:00:18] Speaker 02:
the apparatus is connected to a mobile gaming device and that the apparatus increments a counter as the user engages in wager-based gaming activity via the gaming device from within an approved gaming area.

[00:00:33] Speaker 02:
And then the apparatus stops the counter when the gaming device moved to an improved area.

[00:00:38] Speaker 02:
So everyone acknowledges that Wells nor Harkin expressly disclosed counter.

[00:00:44] Speaker 02:
Wells does disclose a mobile device and that's the thing that the board said met the mobile gaming device of the claims

[00:00:50] Speaker 02:
But the board simply went from there to asserting that the concept of measuring time in Harcum could be done with a counter.

[00:00:57] Speaker 02:
It simply said that it could be turned on and off if a mobile device entered or left an approved area.

[00:01:02] Speaker 02:
And then critically, when it fabricated this counter that's not found in any of the prior art, it stuck it in the wrong place.

[00:01:09] Speaker 02:
It stuck that counter, it says, in Wells' mobile device, even though the claims are quite clear that the incrementing is being done by the apparatus and not the mobile device.

[00:01:20] Speaker 02:
The point is that there is simply no disclosure of a counter anywhere in any of this product.

[00:01:28] Speaker 02:
And we know that they fabricated one when combining them, because they couldn't even put the counter that they do fabricate into the right location.

[00:01:37] Speaker 02:
Moreover, if anything, the fact that when they stuck the counter in the wrong spot in their combined analysis demonstrates, if anything, that putting the counter where it is actually located in the claims is not obvious.

[00:01:51] Speaker 02:
Otherwise, they would have presumably put the counter in the location that's required by the claims.

[00:01:57] Speaker 02:
Moreover, there's really no good reason to modify Wells.

[00:02:02] Speaker 02:
essentially entirely based upon hindsight bias.

[00:02:06] Speaker 02:
There is no reason that you'd want to make Wells have a timer that's keeping track of time so that you can keep people from gambling.

[00:02:16] Speaker 02:
Parkham has in it the assumption that there's going to be need to have a limitation on time to keep problem gambling from occurring.

[00:02:25] Speaker 02:
Wells is entirely the opposite.

[00:02:27] Speaker 02:
The whole point of Wells is to increase gambling.

[00:02:31] Speaker 02:
The entire document is all about how do we make more gambling happen.

[00:02:36] Speaker 02:
So when you say a practice for higher art that's talking about let's make more gambling occur and say, well, let's combine it with something that will slow down gambling.

[00:02:46] Speaker 01:
But it still recognizes there are needs for limitations, right?

[00:02:50] Speaker 01:
It especially discloses limitations.

[00:02:53] Speaker 01:
So you're right, but maybe the thrust of it is, let's do more gaming.

[00:02:57] Speaker 01:
It's kind of like reminded me when I'm driving and listening to all of these gaming commercials on TV.

[00:03:03] Speaker 01:
And they go on and on and talk about how wonderful gambling is and how you should do it.

[00:03:08] Speaker 01:
And at the end, they have, and I don't know if they may be required to do that by law, saying, by the way, we don't want you to gamble too much.

[00:03:17] Speaker 01:
So I mean, there's an inherent recognition that is accepted for all kinds of the right reasons.

[00:03:23] Speaker 01:
that we don't want people to overdo this gambling stuff.

[00:03:26] Speaker 01:
But that doesn't mean that Wells says,

[00:03:29] Speaker 01:
forget any limits.

[00:03:31] Speaker 01:
All we care about is doing as much gambling as possible, no matter what.

[00:03:35] Speaker 02:
Yes, but the way that Wells approaches it is that the limits on gambling are obstacles that it has to overcome.

[00:03:43] Speaker 02:
It recognizes that there's been problems, that you want to be able to ensure people are gambling in legal locations.

[00:03:50] Speaker 02:
Those are obstacles that Wells tries to address, and that's the whole point of the patent claims.

[00:03:55] Speaker 02:
In contrast, it's not an objective that Wells wants achieved.

[00:04:00] Speaker 02:
Wells does not say, slow down your gambling.

[00:04:02] Speaker 02:
Whereas Harkham, it does.

[00:04:04] Speaker 02:
Harkham has limitations.

[00:04:06] Speaker 02:
So Wells doesn't take it as a, it takes the limitations on gambling as a problem, not something that we should also insert into it.

[00:04:15] Speaker 02:
And that's the fundamental flaw in trying to combine the two.

[00:04:18] Speaker 01:
Teaching away is a pretty hefty standard.

[00:04:20] Speaker 01:
I mean, because even if it doesn't, and I'm not sure I agree with you entirely,

[00:04:25] Speaker 01:
that it doesn't include anything that could be determined as a limitation or a limit on play.

[00:04:34] Speaker 01:
But even if it didn't, it doesn't say, and therefore there should be no limit.

[00:04:40] Speaker 01:
It doesn't affirmatively say there should never be any limitations on game.

[00:04:44] Speaker 01:
And you should just gain as much as you want.

[00:04:47] Speaker 02:
To be sure.

[00:04:48] Speaker 02:
But if you're going to combine two references, it was up to the board to say why you should actually combine two references that are pointing at different directions.

[00:04:58] Speaker 02:
And the sole reason that the board came up with it.

[00:05:02] Speaker 01:
I guess I'm not clear on what pointing in different directions are.

[00:05:05] Speaker 01:
When we combine references, we're combining two different things.

[00:05:12] Speaker 01:
So they're often dealing with something a little different.

[00:05:18] Speaker 02:
Right.

[00:05:19] Speaker 02:
And what I'm saying, what I meant by point of two directions is one system is trying to increase gaming.

[00:05:25] Speaker 02:
The other system is trying to decrease gaming.

[00:05:27] Speaker 02:
Why would you combine those two things?

[00:05:29] Speaker 02:
And the sole reason the board came up with for why you might want to do so is because there are design choices.

[00:05:37] Speaker 02:
People make design choices.

[00:05:38] Speaker 02:
It's quite a different thing to say that there's trade-offs to be had in any given system and so we have to figure out how to best and optimally design something.

[00:05:47] Speaker 02:
It's quite different to say these two references are teaching

[00:05:52] Speaker 02:
have the whole reason for the two references are fundamentally at odds with each other.

[00:05:56] Speaker 02:
That's not a design choice anymore.

[00:05:58] Speaker 02:
That's just choosing between two options.

[00:06:00] Speaker 02:
And so therefore, there's really no reason that was given by the board in its decision as why to provide such a motivation.

[00:06:08] Speaker 02:
It just is said that there would be a good reason to combine them.

[00:06:13] Speaker 02:
And that's insufficient.

[00:06:14] Speaker 02:
Just like there was insufficient reasoning as to why you would either start or stop a timer.

[00:06:20] Speaker 02:
The timer, to be clear, as the board thinks, was started by the Wells art and then stopped by the Parkham art.

[00:06:30] Speaker 02:
The only reason you get to a timer, a counter at all, in these prior art references, is by looking at the claims and using the claims as a map to where to find things in the prior art.

[00:06:41] Speaker 02:
And that's inappropriate.

[00:06:42] Speaker 01:
There's simply- The start-stop limitation doesn't add anything inventive

[00:06:50] Speaker 01:
I mean, that was all known in the art, right?

[00:06:52] Speaker 02:
There's nothing that was disclosed in any of the prior art of record that shows a counter.

[00:06:57] Speaker 02:
And neither Harcum nor Wells has a counter.

[00:07:00] Speaker 02:
And no one agrees.

[00:07:02] Speaker 02:
Everyone admits that it does neither expressly demonstrate a counter.

[00:07:07] Speaker 02:
It's simply the concept of keeping track of time in some way.

[00:07:10] Speaker 02:
A counter here in the claims is an incremental one.

[00:07:15] Speaker 02:
You increment the counter when you're gaming on the mobile device and you're inside the gaming zone.

[00:07:21] Speaker 02:
You stop incrementing the counter when you leave the zone.

[00:07:25] Speaker 02:
So it's a very specific claim language that requires a very specific type of counter, an incrementing one that does a very specific thing.

[00:07:34] Speaker 02:
It doesn't mean just a general clock.

[00:07:35] Speaker 02:
It doesn't mean just a general taking differences in time.

[00:07:38] Speaker 02:
It's an incremental counter.

[00:07:40] Speaker 02:
And that was what is found in the claims.

[00:07:43] Speaker 02:
And that is the thing that the PTAB assumed existed.

[00:07:47] Speaker 02:
And if we look at page 37, where they did so, they go on for page after page

[00:07:53] Speaker 02:
Without any citations to any any art or anything any evidence They just say that we think that this would have been an obvious thing to do There's nothing in there.

[00:08:05] Speaker 02:
That's actually saying well Here's where the counters found or where that where the counters turned on and off rather they invent this count they say it would have been obvious to have it and then when they finally get around to saying where does this kind of live and

[00:08:19] Speaker 02:
That's on page A38.

[00:08:20] Speaker 02:
They say, this suggests a portable gaming device that increments a counter.

[00:08:24] Speaker 02:
That's not what the claims require.

[00:08:26] Speaker 02:
The claims require that the separate apparatus increment the counter.

[00:08:31] Speaker 02:
So they can't even put the counter that they imagine exists somewhere to be even in the right place.

[00:08:39] Speaker 02:
And therefore, there's just no substantial evidence to support the view that this counter is found anywhere in this priority.

[00:08:46] Speaker 00:
You would probably assume that the 967 patent has a substantial and lengthy discussion of a counter.

[00:09:03] Speaker 00:
It does not.

[00:09:05] Speaker 00:
The word counter does not appear in the specification of the patent at all.

[00:09:09] Speaker 00:
Incrementing a counter does not appear in specification at all.

[00:09:13] Speaker 00:
It only appeared in the claims, and it appeared in the claims three years after the original filing date.

[00:09:18] Speaker 00:
Let me, if I may, describe for you what is in the 9-6-7 patent.

[00:09:27] Speaker 00:
At appendix 70, at lines 48 through 53 of column 10, it says, the period of time or amount of time may be cumulatively determined

[00:09:39] Speaker 00:
For example, an activity may only be permitted for a period of five hours, comma, collectively.

[00:09:47] Speaker 00:
Time counting toward the five hours might stop and start depending upon the location of the user.

[00:09:55] Speaker 00:
So what's been described here is a five hour playing time, a cumulative period of time out of some larger amount of time, and you start and stop in order to figure out what that cumulative amount of time is.

[00:10:07] Speaker 00:
Let's go first to what is disclosed in Wells.

[00:10:11] Speaker 00:
Wells has a reference in addition to many other restrictions.

[00:10:15] Speaker 00:
At appendix 2185 in paragraph 110, it says, as another example, the gaming machine may terminate a wireless gameplay session after a certain number of games, after a certain amount of time, or after a period of inactivity, a reference to time and a limitation.

[00:10:38] Speaker 00:
We now turn to Harcum.

[00:10:42] Speaker 00:
Remember the original patent, 967 talked about five hours of cumulative time start and stop in order to figure it.

[00:10:50] Speaker 00:
At appendix 2205, the Harcum reference, it says in paragraph 33, in one embodiment, user is optimally prompted to designate a playing limit in terms of playing frequency or playing time.

[00:11:08] Speaker 00:
For example, the user may limit his or her playing time to a maximum of five hours within a seven-day period or no more than once within a day.

[00:11:19] Speaker 00:
When the user's playing time or playing frequency exceeds the limit, the user is asked to exit the game.

[00:11:26] Speaker 00:
So incredibly, what we have is the entire disclosure in the 9-6-7 patent and the prior art literally describe this idea of time limitation to a five-hour period in which you start and stop in order to figure out what that is over time.

[00:11:43] Speaker 00:
So where did counter come in in all this language in the patent?

[00:11:48] Speaker 00:
Claim one.

[00:11:50] Speaker 00:
Well, that came up during prosecution, and in prosecution,

[00:11:57] Speaker 00:
At appendix 1125, the examiner used the idea of a counter as synonymous with a timer.

[00:12:09] Speaker 00:
So this idea of a special software counter that needs to be incremented or stopped and so forth, all we're doing is we have something that measures time, that starts and stops, and comes up in a cumulative.

[00:12:23] Speaker 00:
So substantial evidence certainly supports the board's decision.

[00:12:28] Speaker 00:
The suggestion that they fabricated this counter in Harcum is, in fact, wrong.

[00:12:34] Speaker 00:
The fabrication actually occurs in suggesting that there's some special structure.

[00:12:39] Speaker 00:
And that only appears in their argument and their reply, where they, for the first time, claimed that there was some special counter that needed to be incremented and started and stopped per the claim language.

[00:12:52] Speaker 00:
But the interpretation of that claim language is certainly and should be completely understood to simply mean a timer that can be started and stopped, which is clearly in the prior art.

[00:13:02] Speaker 00:
In fact, it's incredible that they both use the same five-hour time period.

[00:13:07] Speaker 00:
There's also a reference, I believe, in which they say the location of the board did indicate that the counter was in the portable device.

[00:13:18] Speaker 00:
If you look in the substance of the

[00:13:20] Speaker 01:
And is your argument that that was just harmless error?

[00:13:24] Speaker 00:
That was harmless error, Your Honor.

[00:13:27] Speaker 00:
It goes on for pages after page in which the board refers to the location of the timer as being within the

[00:13:44] Speaker 00:
The wireless game player server.

[00:13:47] Speaker 00:
And that's an appendix 28, 31, 31 through 32, 39 and 40.

[00:13:52] Speaker 00:
So there's substantial evidence to support this.

[00:13:57] Speaker 00:
Given the length, the 60 page decision, the idea that there's an error in it somewhere, I think certainly understandable.

[00:14:03] Speaker 00:
But the substance of the decision certainly places the activity of the server.

[00:14:12] Speaker 00:
teaching away, the suggestion that Wells teaches away?

[00:14:18] Speaker 00:
Well, it literally, you cannot have a teaching away argument when literally the reference teaches the opposite.

[00:14:26] Speaker 00:
And as I've already read in the record, I can pull it up again.

[00:14:32] Speaker 00:
Wells teaches the idea of putting a limitation

[00:14:37] Speaker 00:
Let's see.

[00:14:39] Speaker 00:
Again.

[00:14:41] Speaker 01:
But Wells is, I mean, I think your friend's argument is the essence of Wells is it's, the point of Wells is to increase gambling opportunities and allowing gamblers to keep up.

[00:14:53] Speaker 00:
But as the court has already recognized that any sort of responsible gambling activity that is condoned and licensed by a state is also subject to restriction against excessive gambling.

[00:15:05] Speaker 00:
And Wells is no different, makes a note of that in paragraph 110, where it again says, as another example, the gaming machine may terminate a wireless game play session after a certain number of games, after a certain amount of time, or after a period of inactivity.

[00:15:23] Speaker 00:
So you cannot have a teaching away when the reference expressly teaches that fact.

[00:15:32] Speaker 00:
Any other questions?

[00:15:35] Speaker 00:
Thank you.

[00:15:38] Speaker 02:
It's true that Wells and Harkham talk about time in general.

[00:15:45] Speaker 02:
The claim requires more than just time in general.

[00:15:48] Speaker 02:
The claim requires, specifically, you increment a counter as a user engages in at least one wager-based gaming activity via the gaming device from within the proved gaming area.

[00:16:00] Speaker 02:
The claim then requires stop incrementing the counter when you leave the area.

[00:16:04] Speaker 02:
So concepts of general, while there's time here, there's time there, which DraftKings just pointed to, doesn't tell you anything about that there's a timer or counter or an incrementing counter that starts at a certain time and stops at a certain time.

[00:16:18] Speaker 02:
And certainly, it's clear that the counter

[00:16:21] Speaker 02:
found in the apparatus it's not found in the mobile gaming device so when the board said the opposite as DraftKings just admitted that was error and it is not harmless error because it's a claim limitation it is reading out a claim limitation by doing so so every claim limitation matters this specific one matters the board when trying to figure out and

[00:16:45] Speaker 02:
Having an extended discussion without citations to any evidence, decided, well, we think there ought to be a counter.

[00:16:51] Speaker 02:
It would be obvious to have a counter.

[00:16:53] Speaker 02:
Put it in the wrong location.

[00:16:54] Speaker 02:
And if you're going to do that, if you're going to fabricate and say it's obvious, and you can't even put it in the right location as required by the claim, you've committed something more than just harmlessly.

[00:17:03] Speaker 01:
So you think we should send, remand this entire case back to the board so they can tell us and confirm that there was a wording there on what they did?

[00:17:11] Speaker 02:
It's not just a wording error, Your Honor.

[00:17:13] Speaker 02:
There is no evidence of a counter anywhere.

[00:17:16] Speaker 02:
So they had to make one up.

[00:17:17] Speaker 02:
And so when they did, they put it in the wrong spot.

[00:17:20] Speaker 02:
So it is further proof that the opinion itself was sloppily written.

[00:17:27] Speaker 02:
But it was also proof that there's just no counter to be found.

[00:17:30] Speaker 02:
They couldn't find one in the references.

[00:17:32] Speaker 02:
So they invented one, and then they put it in the wrong spot.

[00:17:35] Speaker 02:
And so that demands reversal, because the limitations just aren't met.

[00:17:40] Speaker 01:
That's a little harsh to say.

[00:17:42] Speaker 01:
The opinion was sloppy.

[00:17:45] Speaker 02:
Fair enough, Ron.