Paper 6
`
`Entered: September 2, 2016
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELECTRONIC ARTS INC.,
`Petitioner,
`
`v.
`
`WHITE KNUCKLE GAMING, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00634
`Patent 8,540,575 B2
`____________
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`CHRISTA A. ZADO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`This is a preliminary proceeding to decide whether inter partes review
`
`
`
`
`
`of U.S. Patent No. 8,540,575 B2 (“the ’575 patent”) should be instituted
`
`under 35 U.S.C. § 314(a). White Knuckle Gaming, LLC (“White Knuckle”)
`
`is the owner of the ’575 patent. Electronic Arts Inc. (d/b/a “EA Sports”)
`
`
`
`Entered: September 2, 2016
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ELECTRONIC ARTS INC.,
`Petitioner,
`
`v.
`
`WHITE KNUCKLE GAMING, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00634
`Patent 8,540,575 B2
`____________
`
`Before MICHAEL W. KIM, CARL M. DEFRANCO, and
`CHRISTA A. ZADO, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`
`This is a preliminary proceeding to decide whether inter partes review
`
`
`
`
`
`of U.S. Patent No. 8,540,575 B2 (“the ’575 patent”) should be instituted
`
`under 35 U.S.C. § 314(a). White Knuckle Gaming, LLC (“White Knuckle”)
`
`is the owner of the ’575 patent. Electronic Arts Inc. (d/b/a “EA Sports”)
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`filed a Petition (“Pet.”) seeking inter partes review of claims 1–35 of the
`
`’575 patent. White Knuckle passed on the option to file a Preliminary
`
`Response. Based on our review of the Petition, we determine that EA Sports
`
`has demonstrated a reasonable likelihood of showing at least independent
`
`claims 1, 23, and 32 to be unpatentable. Accordingly, we authorize inter
`
`partes review to proceed on all of the challenged claims.
`
`II. BACKGROUND
`
`
`
`A.
`
`The Related District Court Action and IPR Proceeding
`
`The ’575 patent is involved in a co-pending district court action,
`
`White Knuckle Gaming, LLC v. Electronic Arts Inc., No. 1:15-cv-00150 (D.
`
`Utah), which commenced on November 25, 2015.1 Pet. 6. In addition, a
`
`patent related to the ’575 patent, U.S. Patent 8,529,350, is currently involved
`
`in an inter partes review proceeding, IPR2015-01595, which was instituted
`
`on January 14, 2016.
`
`B.
`
`The ’575 Patent
`
`
`
`The ’575 patent describes a system and method for updating the
`
`parameters of a sports video game being played on a video game machine.
`
`Ex. 1001, 2:11–21. As described, the updated parameters are recorded onto
`
`a server and include the real-life performance statistics of a real-life athlete
`
`being simulated in the video game. Id. at 2:60–63, 3:8–14, 3:55–4:6, 6:10–
`
`13. A user playing the video game may connect to the server to download
`
`the updated parameters. Id. When downloaded to the video game machine,
`
`the updated parameters have the ability to change various attributes of the
`
`game to increase the realism of the game. Id. at 2:19–21, 4:4–6. For
`
`
`1 Recently, the district court issued a decision holding the ’575 patent invalid
`under 35 U.S.C. § 101 as drawn to a patent-ineligible abstract idea.
`
`2
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`example, if the video game is basketball, the real life parameter may be a
`
`player’s field-goal percentage, free-throw percentage, or blocks-per-game.
`
`Id. at 5:19–24. As acknowledged by the ’575 patent, “[o]ne skilled in the art
`
`will appreciate that the number and type of statistics stored will vary with
`
`the game and with the way the video game designer chooses to design the
`
`game.” Id. at 5:24–27.
`
`
`
`
`
`C.
`
`The Challenged Claims
`
`
`
`Of the challenged claims, three are independent—claims 1, 23, and
`
`32. Claims 1 and 32 are directed to a “game medium” configured to cause a
`
`video game machine to perform a method for “updating” the video game
`
`character parameters, and claim 23 is directed to a “method” for updating the
`
`video game character parameters as performed by a network server. The
`
`remaining claims depend, directly or indirectly, from these claims.
`
`
`
`Claim 1 is illustrative of the claims under challenge:
`
`A game medium configured to provide a sports
`1.
`
`video game in conjunction with a video game machine, the
`sports video game including video game rules and video game
`character parameters, the video game character parameters
`including video game character performance parameters
`associated with individual video game characters, the game
`medium being configured to cause the video game machine to
`perform a method comprising:
`
`
`
`loading video game data stored by the game medium into
`a random access memory of the video game machine for
`playing the video game, the video game data including the
`video game rules and a particular video game character
`performance parameter associated with a particular individual
`video game character associated with a particular real-life
`sports athlete, wherein the particular video game performance
`parameter is based at least in part on a real-life performance of
`the particular real-life sports athlete playing in one or more real-
`
`3
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`
`life sporting events, the particular video game character
`performance parameter affecting the manner in which the
`particular individual video game character performs in the
`sports video game;
`
`
`
`during a single sports season, receiving a series of
`update video game character performance parameters from a
`data server via a network including the Internet, wherein each
`of the updated video game character performance parameters
`in the series is based at least in part on one or more different
`real-life performances of the particular real-life sports athlete
`in one or more sporting events performed during the single
`sports season;
`
`
`
`updating the sports video game with each of the updated
`video game character performance parameters received,
`wherein each update changes the manner in which the
`particular individual video game character performs in the
`sports video game such that the particular individual video
`game character more closely simulates real-life performance
`attributes of the particular real-life athlete in the sports video
`game; and
`
`
`
`enabling a user to control the particular individual video
`game character in the sports video game using a video game
`controller connected to the video game machine.
`
`Ex. 1001, 8:11–51 (emphases added).
`
`D.
`
`The Asserted Grounds of Unpatentability
`
`
`
`In the Petition, EA Sports specifies four grounds on which it purports
`
`the challenged claims are unpatentable for obviousness under 35 U.S.C.
`
`§ 103, namely,
`
`(1) claims 1–3, 5, 6, 8, 11–12, 14–17, 22–25, and 27–31 would
`have been obvious in view of Madden NFL 2000 Manual,2
`
`
`2 Electronic Arts, Inc., EA Sports Madden NFLTM 2000 Reference Manual
`(1999) (“Madden NFL 2000 Manual”) (Ex. 1018).
`
`4
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`
`Madden NFL 2000 Reference Card,3 Madden 2000 Updates,4
`Playoff Week 1 Update,5 and Super Bowl Update;
`
`
`
`(2) claims 4, 7, 9, 10, and 21 would have been obvious in view
`of the same references as ground 1 plus FIFA 2001 News;6
`
`
`
`(3) claims 1–3, 11, 12, and 23–31 would have been obvious in
`view of Swanberg;7 and
`
`
`
`(4) claims 13, 18–20, and 32–35 would have been obvious in
`view of Swanberg and Hines.8
`
`
`
`Pet. 21–22.
`
`III. ANALYSIS
`
`
`
`In this preliminary proceeding, we decide whether EA Sports has
`
`made a threshold showing, supported by sufficient evidence, of a reasonable
`
`likelihood that the challenged claims are unpatentable. Initially, we note that
`
`EA Sports proffers several declarations in support of the publication and
`
`authenticity of the “Madden NFL 2000” and “FIFA 2001” references in
`
`terms of qualifying as prior art. See Exs. 1010, 1023–1035. At this
`
`preliminary stage, the declarations submitted by EA Sports persuade us that
`
`
`3 Electronic Arts, Inc., EA Sports Madden NFLTM 2000 Reference Card
`(1999) (“Madden 2000 Card”) (Ex. 1017).
`4 Electronic Arts, Inc., EASports.com Madden 2000 Downloads, archived at
`Wayback Machine on March 2, 2000 (“Madden 2000 Updates”) (Ex. 1015).
`5 Electronic Arts, Inc., EA Sports Madden NFL(TM) 2000 Roster Update–
`Playoff Week 1 (01/07/00) (“Playoff Week 1 Update”) (Ex. 1016).
`6 FIFA 2001 Online—News Archive for September 2000, October 2000,
`November 2000, December 2000, January 2001, February 2001, March
`2001, April 2001, May 2001, June 2001, archived at Wayback Machine on
`June 17, 2001, Apr. 25, 2001, and July 26, 2001 (“FIFA 2001 News”)
`(Exs. 1007, 1008, 1009).
`7 U.S. Pat. Pub. No. 2002/0155893, pub. Oct. 24, 2002 (“Swanberg”)
`(Ex. 1011).
`8 U.S. Pat. Pub. No. 2003/0234787 A1, pub. Dec. 25, 2003 (“Hines”)
`(Ex. 1020).
`
`5
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`the “Madden NFL 2000” and “FIFA 2001” references likely qualify as prior
`
`art. See Pet. 22–23.
`
`Also, EA Sports asks us to construe a particular phrase recited in
`
`dependent claims 24 and 25—“the at least weekly transmissions.” Pet. 15–
`
`16. In our view, we can measure the reasonable likelihood of proving
`
`unpatentability of the challenged claims without making an express
`
`construction of that phrase at this time.
`
`A.
`
`The Challenge Against Claims 1–12, 14–17, 21–25, and 27–31
`As Premised on the Madden NFL 2000 References
`
`Our analysis of this challenge focuses on independent claim 1, which
`
`
`
`recites various hardware and software requirements for “loading” a sport
`
`video game into the memory of a video game machine, “enabling” a user to
`
`control the performance of a video game character associated with a real-life
`
`sports athlete, and “updating” the performance parameters of the video game
`
`character based on real-life performances of the particular real-life athlete.
`
`In challenging claim 1, EA Sports proffers a collection of prior art
`
`publications describing the sports video game, “Madden NFL 2000,” and
`
`argues that, together, they render obvious the claimed invention. Pet. 25–40.
`
`To begin, EA Sports relies on two user manuals—Madden NFL 2000
`
`Reference Manual and Madden NFL 2000 Reference Card—for teaching the
`
`“loading” and “enabling” features of claim 1. Pet. 28–33. From our initial
`
`review, the Madden NFL 2000 user manuals collectively describe a football
`
`video game simulating real-life NFL gameplay on a personal computer. See
`
`Ex. 1018, 18 (“Set up your game to match that of a real NFL game.”), 29
`
`(“Make history by replaying 10 great NFL games.”). According to the user
`
`manuals, the video game displays a “depth chart” and “players stats” from
`
`6
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`which a user can select and substitute various players. Id. at 17–18
`
`(instructing the user on how “To control your own subs or re-arrange the
`
`depth chart” and “View game and player stats”), 22 (instructing on how to
`
`“Manage Rosters” and “View player and team stats”). The depth chart,
`
`shown in a screenshot from the video game, permits the user to select real-
`
`life NFL players (e.g., “B. Sanders,” “T. Davis,” etc.) for the game based on
`
`various “Player attributes.” Id. at 28, 32. Those descriptions persuade us, at
`
`this stage, that a skilled artisan would have understood the Madden NFL
`
`2000 user manuals to describe a sports video game with character
`
`parameters “associated with a particular real-life sports athlete” and “based
`
`at least in part on a real-life performance of the particular real-life sports
`
`athlete,” as required by the “loading” and “enabling” limitations of claim 1.
`
`See Ex. 1004 ¶¶ 100–101.
`
`With respect to “updating” the performance parameters of the
`
`simulated real-life sports athlete, as also required by claim 1, EA Sports
`
`points to several archived webpages—Madden 2000 Updates, Playoff Week
`
`1 Roster Update, and SuperBowl Update—which describe zipfiles for
`
`downloading from a remote server to update the video game. Pet. 31–32
`
`(citing Exs. 1015, 1016, 1019). As described, the zipfiles provide the user
`
`with the ability to update player rosters on the Madden NFL 2000 game with
`
`the latest real-life performance statistics of a particular NFL player. For
`
`instance, the archived webpages inform the user that the zipfile contains
`
`“adjusted rosters and player abilities leading into the NFL playoffs” and
`
`direct the user to “[c]opy the roster update file into your Madden2000\Roster
`
`directory.” Ex. 1016, 2 (emphasis added). The webpages further instruct
`
`that “[t]his update brings the Madden NFL™ 2000 Rosters into alignment
`
`7
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`with the actual NFL team rosters” and “[e]ach week the roster file will be
`
`updated to denote player performance in each eligible teams playoff game.”
`
`Id. (emphases added); see also Ex. 1004 ¶¶ 122–125, 132–138. Those
`
`disclosures evince a sports video game capable of “receiving a series of
`
`updated video game character performance parameters from a data server”
`
`and “updating the sports video game with each of the . . . performance
`
`parameters received,” as required by claim 1.
`
`As a reason for combining the Madden NFL 2000 Updates with the
`
`Madden NFL 2000 User Manuals, EA Sports relies on the declaration of
`
`David Crane, who testifies that the Madden NFL 2000 references describe
`
`features and operation of the same video game “whose teachings are
`
`intended to be combined to allow full functionality and realism of the video
`
`game.” Ex. 1004 ¶ 127. That testimony, along with the disclosures of the
`
`Madden NFL 2000 references themselves, persuade us of a reasonable
`
`likelihood that at least claim 1 of the ’575 patent is unpatentable for
`
`obviousness. And because independent claim 23 is similar in scope to
`
`independent claim 1, the same analysis discussed above with respect to
`
`independent claim 1 applies as well to independent claim 23.
`
`Having decided that the Madden NFL 2000 references evince a
`
`reasonable likelihood that at least one of the claims challenged in the
`
`Petition is unpatentable, we exercise our discretion under 37 C.F.R. § 42.108
`
`to have the review proceed on all of the challenged claims on which the
`
`Madden NFL 2000 references serve as the basis for unpatentability. In
`
`doing so, we seek to achieve finality of review at the Board and avoid
`
`parallel or serial review in the district court, at least with respect to EA
`
`Sports and the Madden NFL 2000 references proffered in the Petition. See
`
`8
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`Intex Recreation Corp. v. Bestway Inflatables & Material Corp., IPR2016-
`
`00180, Paper 13, at 8–11 (PTAB Jun. 6, 2016); see also Synopsys, Inc. v.
`
`Mentor Graphics Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016) (stating that
`
`“[t]he validity of claims for which the Board did not institute inter partes
`
`review can still be litigated in district court”).
`
`B.
`
`
`
`The Challenge Against Dependent Claims 4, 7, 9, 10, and 21
`As Premised on the Madden NFL 2000 References and
`FIFA 2001 News
`
`
`
`We are also persuaded EA Sports has made a sufficient threshold
`
`showing as to its second challenge, which simply builds on its first challenge
`
`by combining the Madden NFL 2000 references with FIFA 2001 News. See
`
`Pet. 40–45. Specifically, dependent claims 4, 9, and 10 add that the update
`
`be to visual aspects of the “stadium” in which the video game is played,
`
`claim 7 adds that the update be performed “periodically and automatically,”
`
`and claim 21 adds that the video game be a “soccer” game.
`
`FIFA 2001 News describes a video soccer game in which the game is
`
`played in a simulated real-life soccer stadium. Ex. 1007, 3, 4, 10, 12, 16.
`
`As part of playing the game, the user can download and update the visual
`
`parameters of the stadium, including real-life changes to the field,
`
`advertising boards, and team flags. Id. at 60, 73, 74, 97; see also Ex. 1008,
`
`20, 44, 45. The updates can be “automatically install[ed] . . . in the FIFA
`
`2001 directory on a periodic basis.” Id. at 37.
`
`As support for combining FIFA 2001 News with the video football
`
`game of the Madden NFL 200 references, EA Sports relies on its declarant,
`
`Mr. Crane, who testifies that, because “there is no technological difference”
`
`between updating the performance parameters of a simulated video character
`
`over updating the visual parameters of a simulated stadium or field, it would
`
`9
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`have been obvious to select from a finite number of updatable parameters for
`
`a particular sport to increase realism within the simulated game. Ex. 1004
`
`¶ 202. On this record, we are persuaded of a reasonable likelihood that EA
`
`Sports will succeed in challenging the patentability of claims 4, 7, 9, 10, and
`
`C.
`
`The Challenge Against Claims 1–3, 11, 12, and 23–31 As
`Premised on Swanberg
`
`For the challenge based on Swanberg, we again focus on independent
`
`21.
`
`
`
`claim 1. EA Sports contends that Swanberg teaches or suggests each of the
`
`limitations of claim 1 and proffers the declaration of Mr. Crane in support
`
`thereof. Pet. 45–50 (citing Ex. 1004 ¶¶ 214–231). Based on our initial
`
`review, Swanberg discloses a video game system capable of simulating
`
`“major league” sports games, such as “baseball, football, [or] basketball.”
`
`Ex. 1011 ¶ 5; see also id. ¶¶ 43, 83–84 (describing the video game in the
`
`context of baseball and basketball). As taught by Swanberg, the video game
`
`utilizes a smart card that stores data about real-life sports figures and their
`
`actual performance in real-life games. Id. ¶¶ 30, 32, 40, 83–85, Figs. 1A,
`
`1B, 1C. Notably, and similar to the ’575 Patent, updated statistics reflecting
`
`the sports figures’ most recent performance are stored in a database of a
`
`remote server. Id. ¶¶ 40, 41, 48–49, 85, 95, Fig. 2. When the user wishes to
`
`play the video sports game, the updated performance statistics are
`
`downloaded from the remote server to the smart card such that, when game
`
`play begins, the sports figure will perform in the video game based upon
`
`their updated statistics. Id. ¶¶ 32, 36, 41, 49, 85, 95.
`
`
`
`On this record, we are persuaded that a skilled artisan would have
`
`understood Swanberg as teaching the ability to update the video character
`
`10
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`parameters of a video sports game to reflect real-life changes in the
`
`performance of the simulated real-life player in the video game, as required
`
`by claim 1. See Ex. 1004 ¶¶ 223–231. Accordingly, we determine that EA
`
`Sports has demonstrated a reasonable likelihood of proving that at least
`
`independent claim 1 is unpatentable for obviousness over Swanberg.
`
`Having reached that conclusion, we exercise our discretion to institute inter
`
`partes review on all of the claims challenged on the basis of Swanberg,
`
`specifically, claims 1–3, 11, 12, and 23–31.
`
`D.
`
`The Challenge Against Claims 13, 18–20, and 32–35 As
`Premised On Swanberg and Hines
`
`For this challenge, we turn our attention to independent claim 32,
`
`
`
`
`
`which recites the video game in the context of “basketball” and the updated
`
`statistics as including “free-throw completion percentage.” As discussed
`
`above, Swanberg discloses “basketball” as one of the simulated games,
`
`however, it does not speak specifically to the types of statistics that might be
`
`updated on the video game, at least not expressly, as claim 32 does. For
`
`that, EA Sports relies on Hines, which teaches, as a matter of common sense,
`
`that one of the statistics stored in a system for tracking and updating the
`
`performance of real-life basketball players would be “free throws made and
`
`attempted.” Ex. 1020 ¶¶ 15, 19.
`
`Combining the teaching of Hines with the basketball video game of
`
`Swanberg, EA Sports contends “it is simply a design choice to select from a
`
`finite number of specific, known mathematical statistics in each of a finite
`
`number of sports” and that “choosing one statistic . . . over another statistic”
`
`would have been obvious. Ex. 1004 ¶ 269. On this record, we determine
`
`that EA Sports has demonstrated a reasonable likelihood of proving that
`
`11
`
`
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`independent claim 32 is unpatentable over Swanberg and Hines. Having
`
`made that determination, we exercise our discretion to institute inter partes
`
`review on all of the claims challenged on the basis of Swanberg and Hines,
`
`specifically, claims 13, 18–20, and 32–35.
`
`IV. CONCLUSION
`
`After considering the evidence and arguments presented in the
`
`Petition, we determine that EA Sports has demonstrated a reasonable
`
`likelihood of proving that at least independent claims 1, 23, and 32 of the
`
`’575 patent are unpatentable. And, in keeping with our mission of resolving
`
`patent validity disputes in a just, speedy, and inexpensive manner, we
`
`exercise our discretion to institute inter partes review on all of the claims as
`
`challenged in the Petition.
`
`Accordingly, it is hereby:
`
`V. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1–35 of the ’575 patent is instituted; and
`
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37
`
`C.F.R. § 42.4(b), inter partes review of the ’575 patent shall commence on
`
`the entry date of this Order, and notice is hereby given of the institution of a
`
`trial.
`
`
`
`12
`
`
`
`13
`
`IPR2016-00634
`Patent 8,540,575 B2
`
`
`FOR PETITIONER:
`
`
`
`Patrick D. McPherson
`Christopher J. Tyson
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`cjtyson@duanemorris.com
`
`
`
`FOR PATENT OWNER:
`
`
`
`Andrew S. Hansen
`HANSENIP, LLC
`andrew@hansenip.org
`
`
`
`David A. Jones
`david@whiteknucklegaming.org
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