By Joseph Arshawsky, J.D.
The Patent Trial and Appeal Board properly construed "participant" according to its plain meaning and gave no patentable weight to the terms "game environment" and "information delivery service," the United States Court of Appeals for the Federal Circuit held, affirming the result of six inter partes review proceedings challenging various claims of three patents directed to a broadcasting technique. The court also concluded that substantial evidence supported the PTAB’s findings underlying its conclusion that an article in the record was not Section 102 prior art because it was not published, and that certain claims and substitute claims were patentable over the relevant prior art (Acceleration Bay, LLC v. Activision Blizzard Inc., November 6, 2018, Moore, K.).
The patents at issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network. Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, "Blizzard") filed six inter partes review ("IPR") petitions—two for each patent at issue (U.S. Patent Nos. 6,829,634, 6,701,344, and 6,714,966) based principally on two different prior art references. One set of IPRs challenged claims based on an article by Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, 3 IEEE INT’L CONF. ON COMMS. CONF. REC. 1381–86 (Montreal, 1997) ("Shoubridge article") alone or combined with a prior art book titled Bradley Bargen & Peter Donnelly, Inside DirectX ®: In-Depth Techniques for Developing High-Performance Multimedia Applications (Microsoft Press, 1998) ("DirectPlay") (collectively, the "Shoubridge IPRs"). A second set of IPRs challenged claims based on an article by Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low Message Overhead and High Reliability for Broadcasting on Small Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego, 1999) (the "Lin article") alone, or combined with DirectPlay (collectively, the "Lin IPRs"). The PTAB instituted IPR on each petition, on many of the grounds and claims raised and rendered six final decisions.
In the Shoubridge IPRs, the PTAB determined the following claims are unpatentable: U.S. Patent No. 6,714,966 claims 1–11 and 16–17; U.S. Patent No. 6,701,344 claims 1–11 and 16–19; and U.S. Patent No. 6,829,634 claims 1–9. In the Lin IPRs, the Board concluded that Lin is not a printed publication under 35 U.S.C. § 102(a) and thus determined Blizzard failed to show the challenged claims are unpatentable over Lin. Patent owner Acceleration Bay, LLC ("Acceleration") appealed the final written decisions of the PTAB holding unpatentable claims 1–9 of the ’634 patent, claims 1–11 and 16–19 of the ’344 patent, and claims 1–11 and 16–17 of the ’966 patent. Blizzard cross-appealed portions of the PTAB’s decisions holding patentable claims 10–18 of the ’634 patent, as well as substitute claims 19 of the ’966 patent, 21 of the ’344 patent, and 25 of the ’634 patent. Blizzard also cross-appealed the PTAB’s decisions holding that the Lin article is not a printed publication under 35 U.S.C. § 102(a). The Federal Circuit affirmed the PTAB’s decision.
Acceleration’s appeal. Acceleration argued that the PTAB erred by construing the term "participant" according to its plain meaning. Acceleration argued that the proper construction of "participant" is an "application program that interacts with a logical broadcast channel which overlays an underlying network." The Federal Circuit saw no error in the PTAB’s refusal to import detailed structural information into the term "participant." Acceleration conceded that neither the claims nor the specifications define or expressly describe the term in this manner. The Federal Circuit concluded that the PTAB properly construed "participant."
Acceleration next argued that the claim terms "game environment" and "information delivery service" are limitations despite appearing in the preambles because they provide structure for the remainder of the claims. The Federal Circuit agreed with the PTAB that the claim terms "game environment" and "information delivery service" are non-limiting because they merely describe intended uses for what is otherwise a structurally complete invention.
Finally, Acceleration argued that the PTAB determined that the canceled claims of the ’344 and ’966 patents describe a broadcast channel and that the specifications explain the "broadcast channel overlays a point-to-point communications network." Because the claims at issue do not contain the broadcast channel limitation argued for by Acceleration, the PTAB did not err by failing to identify such a broadcast channel in Shoubridge. Accordingly, the Federal Circuit affirmed the PTAB’s determinations of the issues raised in Acceleration’s appeal.
Blizzard’s cross-appeal. Blizzard cross-appealed three issues. First, it argued the PTAB erroneously concluded that Lin is not a printed publication under § 102(a). The PTAB found that despite some indexing and search functionality on the website, Lin was not publicly accessible. The PTAB found the website allowed a user to view a list of technical reports indexed only by author or year. The PTAB determined that Blizzard "has not shown sufficiently that the [database] was searchable or indexed in a meaningful way so that a person of ordinary skill in the art would have located Lin." The Federal Circuit held the PTAB did not err in concluding Lin is not a printed publication. The PTAB’s fact finding that, with available reports indexed only by author or year, Lin was not meaningfully indexed, is supported by substantial evidence. The Federal Circuit agreed that Lin is not a printed publication under § 102.
Second, Blizzard argued the PTAB erroneously determined ’634 patent claims 10–18 were not anticipated or rendered obvious by Shoubridge. Blizzard challenged the application of the definition of "indication." The Federal Circuit saw no error in the PTAB’s construction or application of "indication." The PTAB did not err in determining that "an ‘indication’ requires more than the existence of neighbors," and substantial evidence supports its finding that Shoubridge does not disclose "something that serves to indicate" despite the fact that Shoubridge discloses nodes connected to each other. The PTAB also did not abuse its discretion in declining to consider the cited paragraphs in a reply declaration submitted by Blizzard that raised a new obviousness argument for this limitation that could have been made in the petition. The Federal Circuit concluded that the PTAB did not abuse its discretion in not considering the reply declaration in its analysis.
Third, and finally, Blizzard argued that the PTAB erred in determining that various amended claims were patentable over the prior art. The PTAB held substitute claims 19 of the ’966 patent, 21 of the ’344 patent, and 25 of the ’634 patent patentable. These substitute claims contain the limitation "participants can join and leave the network using the broadcast channel." The Federal Circuit saw no error in the PTAB’s analysis of this limitation. Blizzard provided no construction for this claim limitation. The PTAB properly focused on the ordinary meaning to determine the prior art did not disclose or render obvious joining the network "using the broadcast channel." Accordingly, the Federal Circuit affirmed the PTAB’s determinations with regard to issues raised in Blizzard’s cross-appeal.
Attorneys: Paul J. Andre (Kramer Levin Naftalis & Frankel LLP) for Acceleration Bay, LLC. Michael T. Rosato (Wilson, Sonsini, Goodrich & Rosati, PC) for Activision Blizzard Inc., Electronic Arts Inc. and Take-Two Interactive Software, Inc.
Companies: Acceleration Bay, LLC; Activision Blizzard Inc.; Electronic Arts Inc.; Take-Two Interactive Software, Inc.
MainStory: TopStory Patent FedCirNews
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