- Legal Update re Pokerstars 'Zoom Poker' 573 Application
- May 22, 2014
- Law Firm: Dentons Canada LLP - Toronto Office
In a surprising turn of events, after multiple decisive rejections, Pokerstars' "Zoom Poker" patent application (11/316,573, published as US 2007/0155460A1) has been allowed as amended by the United States Patent and Trademark Office ("USPTO"). A patent entitled "Computer Gaming Device and Method for Computer Gaming" will issue on May 20, 2014, as U.S. Patent No. 8,727,850.
Pokerstars obtained the rights to the '573 application as part of its July 27, 2012 settlement agreement with the United States Department of Justice, resolving civil money laundering and forfeiture claims arising from Pokerstars' operation of online gambling websites in the United States. Part of Pokerstars' $731 Million forfeiture payment to the United States was earmarked to pay balances owed by Full Tilt Poker to non-U.S. players, and Full Tilt Poker agreed, in its own settlement with the United States, to assign its intellectual property to Pokerstars.
At the time of this settlement, the original claims of the '573 application had been repeatedly rejected by the original patent examiner as being obvious over previously filed applications covering methods of assigning game players to new game tables.
The first rejection dates back to December 7, 2008. At that time the Examiner found all of Pokerstars' independent claims as being anticipated by an earlier patent application by Oliveras which taught a game machine system configured to automatically move a player at a first table to a second table. The Examiner also saw nothing novel in using a processor to take seat location at the first table into account when reassigning a player to the next table.
On March 16, 2009, amended claims emphasizing the use of a queue to "automatically" reassign players to a new virtual table were submitted by Pokerstars' predecessor, Full Tilt Poker. These claims were rejected on June 6, 2009. The Examiner observed that the Oliveras system was capable of automatically moving a first player to a second table and that "it would have been obvious to one of ordinary skill in the art to offer a queue of new players where new players can join to wait for an open seat."
On September 22, 2009, a request for continued examination was filed by Full Tilt Poker, Pokerstars' predecessor, together with a response claiming that Oliveras did not disclose a processor configured to move a player from the table to a queue. Three and a half years passed with no further action on the application by the USPTO. In the meantime, Pokerstars filed numerous submissions of additional patent and nonpatent literature references, including refusal of its counterpart application for Zoom Poker by the European Patent Office (March 26, 2013, Pokerstars' European Patent Application No. 06836201.1, which claimed priority to the '573 application, was refused for lacking an inventive step.)
On February 19, 2013, Pokerstars initiated an interview, and discussed the June 2009 rejections with a new Examiner from the USPTO. Pokerstars agreed to try to modify their claims again to more precisely reflect their claimed inventive concepts.
On March 28, 2013, Pokerstars withdrew all of its 51 previous claims and submitted 53 new ones. Pokerstars' original claims were for a game machine system comprised of a processor configured to provide a first table, to provide cards for the first hand at the first table, an interface coupled to the processor to receive a request to fold, and a processor configured to automatically move the first player to a second table. The new claims were narrower in that the request to fold was specified as "made out of turn" and that the folding player would be moved automatically to a second virtual table "while the first-hand is still active."
On January 31, 2014, the new Examiner rejected all of Pokerstars' claims as unpatentable over previously filed patents and applications. Citing applicable patent law, the Examiner observed that "It would have been obvious to one having ordinary skill in the art at the time the invention was made to move the first player automatically to a second virtual table of a second group of players to play a second hand while that first-hand is still active, since it has been held that broadly providing a mechanical automatic means to replace manual activity which has accomplish the same result involves only routine skill in the art."
On March 4, 2014 and March 13, 2014, the Examiner conducted a second interview with Pokerstars' attorneys, leading to discussions of an amendment proposed by the Examiner to which Pokerstars agreed.
On March 31, 2014, the Examiner proposed changes including changing folding "out of turn" to folding "when gameplay is at a position of another one of the first plurality of players." The Examiner also added language restricting the claims to "poker card games." In addition, the Examiner added, to each independent claim, the following language (underscored):
...in response to the request to fold, move the first player automatically to a second virtual table of the second plurality of players to play a secondhand while the first hand is still active for at least one of the other players at the first table, wherein once the first player is moved, the server prevents the first player from playing the first-hand.
According to Bill Gantz, a gaming and intellectual property lawyer at Dentons, "the Examiner found and cited both prior art and common sense in the January 31, 2014 rejection for every step of the claimed invention with the exception of configuring the server to prevent a player from playing the folded hand. It is truly surprising here that the Pokerstars application survived multiple wholesale rejections, and that this patent appears to have issued because the prior art available to the Examiner simply did not teach that a game server should be configured to prevent a player who folds from playing the hand they just folded. Everyone knows a fold means you are out of the hand. It is also surprising that the patent issued over prior art cited by the Examiner teaching taking a fold 'out of turn.' The amendments which allowed this patent to issue should seem obvious to the entire poker industry, and there should be ample grounds for vigorously challenging this patent."
In view of public statements made previously by Pokerstars general counsel Paul Telford, Pokerstars might assert its impending patent against operators of online fast fold poker games (wagering and free play) in the United States. The market for real money online fast fold poker in the United States seems only nascent, and the issuance of this patent will have no impact on considerable fast fold poker business conducted in Europe or otherwise outside of the United States. In the United States, operators of free play fast fold poker websites, such as leading operator Zynga, might be affected.