Trials@uspto.gov Paper: 35
`571-272-7822 Entered: March 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ACTIVISION BLIZZARD, INC. and RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01885
`Patent 8,253,743 B2
`____________
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822 Entered: March 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`ACTIVISION BLIZZARD, INC. and RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01885
`Patent 8,253,743 B2
`____________
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2016-01885
`Patent 8,253,743 B2
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`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314 and
`37 C.F.R. § 42.108, Activision Blizzard, Inc. and Riot Games, Inc.
`(collectively “Petitioner”) challenge the patentability of claims 1–11 of U.S.
`Patent No. 8,253,743 B2 (“the ’743 patent,” Ex. 1001), which is owned by
`Game and Technology Co., Ltd. (“Patent Owner”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed below, we determine that Petitioner has proven by a
`preponderance of the evidence that claims 1–11 of the ’743 patent are
`unpatentable. See 35 U.S.C. § 316(e) (“In an inter partes review instituted
`under this chapter, the petitioner shall have the burden of proving a
`proposition of unpatentability by a preponderance of the evidence.”).
`A. Procedural History
`On September 23, 2016, Petitioner requested inter partes review of
`claims 1–11 of the ’743 patent. Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 12 (“Prelim. Resp.”). Trial was instituted as
`to claims 1–11 of the ’743 patent on the following grounds of
`unpatentability:
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`1. Whether claims 1–11 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the Diablo II Manual1 alone or in combination with
`Rogers;2 and
`2. Whether claims 1–11 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over the DAoC Manual3 alone or in combination with
`Rogers.
`Paper 15 (“Dec. on Inst.”), 25–26.
`During the trial, Patent Owner filed a Response (Paper 18, “PO
`Resp.”), and Petitioner filed a Reply (Paper 22, “Reply”). In addition,
`Petitioner filed a Motion to exclude evidence. Paper 26. Patent Owner filed
`an Opposition to Petitioner’s Motion to Exclude (Paper 30), and Petitioner
`filed a Reply in support of its Motion to Exclude (Paper 31).
`An oral hearing was held on November 29, 2017, a transcript of which
`appears in the record. Paper 34 (“Tr.”).
`
`
`1 Diablo II Game Manual (Ex. 1013), © 2000 Blizzard Entertainment.
`Petitioner argues that the Diablo II Manual is a prior art printed publication
`under 35 U.S.C. § 102(b). See Pet. 5–6 (citing Exs. 1002, 1013, 1014, 1018,
`1021); Dec. on Inst. 3 n.1. Patent Owner does not raise any arguments
`regarding the prior art status of the Diablo II Manual. Based on our review
`of the evidence of record, we determine the Diablo II Manual is a prior art
`printed publication within the meaning of 35 U.S.C. § 102(b). See
`Exs. 1013, 1014, 1018, 1021.
`2 U.S. 2005/0137015 A1, filed Aug. 19, 2004, published June 23, 2005
`(Ex. 1017).
`3 Dark Age of Camelot Game Manual (Ex. 1015), © 2001–02 Mythic
`Entertainment, Inc. Petitioner argues that the DAoC Manual is a prior art
`printed publication under 35 U.S.C. § 102(b). See Pet. 6 (citing Exs. 1015,
`1016, 1019); Dec. on Inst. 4 n.2. Patent Owner does not raise any arguments
`regarding the prior art status of the DAoC Manual. Based on our review of
`the evidence of record, we determine the DAoC Manual is a prior art printed
`publication within the meaning of 35 U.S.C. § 102(b). See Exs. 1015, 1016,
`1019.
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`B. Real Parties in Interest
`Petitioner identifies the following additional real parties in interest:
`Blizzard Entertainment, Inc., Activision Publishing, Inc., Activision
`Entertainment Holdings, Inc., and Tencent Holdings Ltd. Pet. 1.
`C. Related Matters
`Petitioner and Patent Owner cite a number of judicial and
`administrative matters involving the ’743 patent and other patents owned by
`Patent Owner. Pet. 1–2; Paper 5, 2–3; Paper 11, 1–2.
`D. The ’743 Patent and Illustrative Claim
`The ’743 patent generally relates to providing game characters having
`game items functions by combining an avatar with a game item function to
`create a gamvatar. Ex. 1001, Abstract. As examples of game item
`functions, the ’743 patent identifies “the function of charging and restoring
`cyber money, a function of reinforcing power of the gamvatar, and a
`function of attacking or defending other ga[m]ers.” Ex. 1001, 6:18–21.
`Figure 5 of the ’743 patent, reproduced below, illustrates gamvatars
`530 and 540.
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`Figure 5 depicts “characters having a game item function according to an
`embodiment of the present invention.” Ex. 1001, 4:66–67. The ’743 patent
`states:
`
`FIG. 5 shows avatars (gamvatars) having a game item
`function according to an embodiment of the present invention,
`and it exemplifies gamvatars 530 and 540 generated by
`combining an avatar 510 which wears clothes purchased at the
`avatar shop 430 and a game item 520 purchased at the item shop
`440. The gamvatar 530 shows the avatar 510 wearing the item
`520, and the gamvatar 540 shows that the item 520 is not attached
`to the avatar 510 but is arranged in the background layer. As
`described above, it is possible for the avatar 510 to wear the item
`520 or not to wear the item 520 depending on the user’s setting.
`Ex. 1001, 6:33–43. Thus, the ’743 patent describes that both gamvatars 530
`and 540 have items arranged in a layer, but in gamvatar 540 the layer is a
`background layer, so the item is not attached to the gamvatar.
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`The ’743 patent has 11 claims, of which claims 1, 3, 6, 7, and 9 are
`independent. Claim 1 is illustrative and is reproduced below:
`
`A method for generating a character associated with a
`1.
`character generating system comprising a gamvatar provider, a
`gamvatar controller, and a game server, the method comprising:
`providing an avatar to a user accessing an avatar shop via
`a network, the avatar comprising multiple layers for displaying
`avatar functions or performing game item functions by using the
`respective layers; and
`combining each of a plurality of game item functions with
`the avatar by adding the respective layers to the avatar to create
`a gamvatar associated with the plurality of the game item
`functions,
`wherein the gamvatar is configured to be used to perform
`the plurality of the game item functions and each of the plurality
`of game item functions being combined with the respective
`layers is exhausted in response to detection of each time of using
`the each of the plurality of game item functions associated with
`playing a game provided by the game server.
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`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Citing the testimony of its declarant, Mr. David Crane, Petitioner
`argues that the level of ordinary skill in the art is “(1) at least a four-year
`Bachelor of Science degree OR at least 5 years of professional experience as
`a video game designer/developer; and (2) a working understanding of
`computer programming, either through education or experience of the
`equivalent thereof.” Pet. 13–14 (citing Ex. 1002 ¶ 20). Patent Owner
`contends “that the skilled artisan during the time frame of the priority date of
`the ‘743 Patent (2004), would have possessed a four-year Bachelor of
`Science degree in computer science and a working understanding of online
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`computer gaming, attained through either education or experience.” PO
`Resp. 9, n.1.
`Based on the evidence of record, including the testimony of
`Petitioner’s declarant, the subject matter at issue, and the prior art of record,
`we determine that Petitioner’s proposed skill level is the appropriate lens
`through which to evaluate obviousness in this proceeding. In particular, we
`find persuasive Petitioner’s argument that a person of ordinary skill in the art
`may have professional experience as a video game designer/developer in
`lieu of a formal degree, and we also agree with Petitioner that a person of
`ordinary skill in the art would have had a working understanding of
`computer programming. Pet. 13–14; Ex. 1002 ¶ 20. In Patent Owner’s
`proposal, it is not clear whether “a working understanding of online
`computer gaming” requires experience with the design and development of
`video games or merely experience playing video games.
`Based on the foregoing, we determine that the skill level of a person
`of ordinary skill in the art would have been that of a person having (1) at
`least a four-year Bachelor of Science degree in computer science, computer
`engineering, electrical engineering, or a related field OR at least 5 years of
`professional experience as a video game designer/developer; and (2) a
`working understanding of computer programming, either through education
`or experience of the equivalent thereof. Ex. 1002 ¶ 20. However, we note
`that our analysis would be the same if we adopted either party’s proposed
`level of ordinary skill.
`
`B. Claim Construction
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
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`[they] appear[].” 37 C.F.R. § 42.100(b). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). This presumption may be rebutted when a
`patentee, acting as a lexicographer, sets forth an alternate definition of a
`term in the specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The Decision on Institution provided discussions addressing the
`broadest reasonable interpretations of various claim terms. Dec. on Inst. 5–
`10. Based on the parties’ arguments during the trial, we provide the
`following analysis with respect to the broadest reasonable interpretations of
`several claim terms.
`
`1. “Avatar”
`Both parties assert that “avatar” means “a representation of a user in a
`game.” Pet. 13 (citing Ex. 1001, 2:27–28; Ex. 1002 ¶¶ 48–49); PO Resp. 9
`(citing Ex. 1001, 1:37–48;4 Ex. 2003, 15:11–25). Although an avatar may
`represent a user in a game, the ’743 patent indicates that an avatar may
`represent a user more broadly, such as “in cyber space.” Ex. 1001, 2:27–28
`(“In internet gaming, however, avatar has come to indicate a 2D or 3D
`character that represents a user in cyber space.”). We see no reason to
`import the qualification “in a game” into the definition of an avatar.
`We determine that the term “avatar” does not require further
`construction.
`
`
`4 Although Patent Owner cites col. 1, lines 37–28, based on the context, we
`understand Patent Owner’s citation to be to lines 37–48 of column 1.
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`2. “Gamvatar”
`The term “gamvatar” appears in all claims of the ’743 patent. In the
`Decision on Institution, the Board addressed the parties’ pre-institution
`arguments regarding the broadest reasonable interpretation of “gamvatar.”
`Dec. on Inst. 7–9. In particular, the Board
`determine[d] that the claims themselves sufficiently define
`“gamvatar.” For example, claim 1 recites “combining each of a
`plurality of game item functions with the avatar by adding the
`respective layers to the avatar to create a gamvatar associated
`with the plurality of the game item functions.” The “gamvatar”
`of claim 1, therefore, results from the “combining” step. The
`other independent claims recite similar combining operations.
`See claims 3, 6, 7, and 9.
`Dec. on Inst. 8.
`Patent Owner argues that this preliminary determination leaves out
`allegedly required features of the claimed “gamvatar.” PO Resp. 5–7, 24–
`25. According to Patent Owner, a “conventional gamvatar” “represents the
`user both ‘in the game’ and ‘on the web site.’” PO Resp. 5 (citing Ex. 1001,
`3:13–22). Patent Owner maintains that these features must be present in the
`claimed “gamvatar” but that the claimed “gamvatar” requires more, namely
`the combination of game item functions with a layer of the avatar. PO Resp.
`5–7, 24–25. In particular, Patent Owner argues that
`the gamvatar of the ‘743 Patent is distinguishable from both the
`conventional avatar due to its association outside the game (i.e.,
`“on the web site,” ‘743 Patent, 2:15-18), and the gamvatar of the
`‘743 Patent is distinguishable from the conventional gamvatar
`due to its combination of a game item function of a game item
`for use “in
`the game” (‘743 Patent, 2:15-18) with a
`corresponding layer of the avatar.
`PO Resp. 7. Patent Owner argues, therefore, that the preliminary
`determination leaves out the allegedly required feature that the claimed
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`“gamvatar” represent the user both in a game and on a web site. PO
`Resp. 5–7, 24–25.
`As an initial matter, the claims of the ’743 patent do not recite any
`requirement for the “gamvatar” to represent the user on a web site. See Tr.
`25:11–13 (Patent Owner: “The claims do not themselves describe the
`distinction of occurring within a game and outside of a game.”). The
`specification of the ’743 patent describes gamvatars in various places. In the
`“Background of the Invention” section, the ’743 patent states:
`Recently, a gamvatar, which is an avatar for exclusive use
`in a game and has features and personalities particularly
`associated with that game, has been introduced.
`The gamvatar concurrently functions as a game character
`in a network game being played over the Internet, and as an
`avatar on the web site. That is, the gamvatar purchased or
`configured on the web site is applicable to the game, and the
`gamvatar purchased or configured in the game is applicable to
`the web site. In this instance, the gamvatar—the combination of
`the game and the avatar—indicates a game character having the
`format of an avatar or an avatar having the format of a game
`character, and is personalized by the same member ID accessible
`to a predetermined game and the web site 200.
`Ex. 1001, 3:10–22.
`In describing the invention, the ’743 patent states:
`The avatar having a game item function according to an
`embodiment of the present invention does not represent a
`gamvatar that is a conventional avatar for exclusive use of a
`game but represents a gamvatar that is an avatar for performing
`a game item function. That is, the conventional gamvatar
`indicates an avatar used for a specific game, and the gamvatar
`according to the embodiments of the present invention combines
`the conventional avatar with the game item function. Hence, the
`gamvatar described in the embodiments of the present invention
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`is substantially an avatar that is capable of performing game item
`functions.
`Ex. 1001, 5:30–40 (emphasis added). This passage explains that the
`“gamvatar” of the ’743 patent is a combination of “the conventional avatar
`with the game item function” rather than a combination of a “conventional
`gamvatar” with a game item function, as suggested by Patent Owner’s
`arguments. See PO Resp. 5–7.
`Based on the intrinsic record, we are not persuaded that the broadest
`reasonable interpretation of “gamvatar” requires that it represent the user
`both in a game and on a web site. Rather, we maintain the Board’s initial
`determination that the claims themselves define the term “gamvatar.” Dec.
`on Inst. 8. We also note that, as explained below, the prior art teaches a
`gamvatar that represents a user both in a game and on a web site, and,
`therefore, our determinations of unpatentability would be the same if we
`adopted Patent Owner’s construction that a “gamvatar” must “represent the
`user both in a game and on a web site.”
`3. “Layers”
`In the Decision on Institution, the Board determined that the phrase
`“layers for . . . performing game item functions” did not require an express
`construction. Dec. on Inst. 10–11. In its Response, Patent Owner argues the
`term “layers” means “graphics regions for displaying graphical objects.” PO
`Resp. 9–10 (citing Ex. 1001, 2:65–3:4; Ex. 1002 ¶¶ 72–73; Ex. 2003, 16:20–
`17:3, 19:14–24, 21:21–24; Ex. 2004, 289). During oral argument, Patent
`Owner offered a slightly different interpretation, arguing that “[l]ayers are
`constructs for holding graphics objects.” Tr. 40:12; see also Tr. 41:9–10
`(“Layer itself must have a meaning. It is a construct. And patent owner’s
`position is a construct for holding graphics.”).
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`We agree with Patent Owner that the broadest reasonable
`interpretation of “layers” encompasses “graphics regions for displaying
`graphical objects” and “constructs for holding graphics” because the ’743
`patent describes the display of items in layers, as in Figure 5. Ex. 1001,
`6:33–43, Fig. 5. Based on the plain language of the claims, however, the
`meaning of “layers” is not so limited. For example, claim 1 recites “the
`avatar comprising multiple layers for displaying avatar functions or
`performing game item functions by using the respective layers” (emphasis
`added). The other independent claims recite similar limitations. The claims,
`therefore, recite “displaying” as one of two alternatives for layers, the other
`being “performing game item functions.”
`Thus, although Patent Owner’s proposed constructions are within the
`broadest reasonable interpretation of “layers,” the term is not so limited. We
`determine that the term “layers” does not require further construction. We
`also note that, as explained below, the prior art teaches displaying
`information, and, therefore, our determinations of unpatentability would be
`the same if we adopted Patent Owner’s construction that “layers” are
`“constructs for holding graphics.”
`4. “Game Item Functions”
`In the Decision on Institution, the Board determined that the phrase
`“game item functions” did not require an express construction. Dec. on
`Inst. 10–11. In its Response, Patent Owner argues the phrase “game item
`functions” means “game functions of game items used in a game.” PO
`Resp. 10–11 (citing Ex. 1001, 2:44–54, 3:6–9, 6:14–21, 7:40–46; Ex. 2003,
`77:4–6). As stated in the Decision on Institution, this “proposed
`construction[] do[es] little more than restate the language of the claims.”
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`Dec. on Inst. 10. We maintain that the phrase “game item functions” does
`not require an express construction.
`5. “Exhausted”
`The term “exhausted” appears in the independent claims of the ’743
`patent. Claims 1, 3, 6, and 7 recite “each of the plurality of game item
`functions being combined with the respective layers is exhausted in response
`to detection of each time of using the each of the plurality of game item
`functions.” (Emphasis added).5 In the Decision on Institution, the Board
`determined that exhaustion in the claims refers to game item functions rather
`than disappearance of layers and further determined that the term
`“exhausted” did not require an express construction. Dec. on Inst. 9–10. In
`its Response, Patent Owner argues that, in view of the claims, the
`specification, and the prosecution history of the ’743 patent, “the skilled
`artisan would have understood the term ‘exhausted’ to mean, ‘disappear’
`regarding the game item displayed on the layer and ‘consumed’ regarding
`the associated function of the game item.” PO Resp. 11–14.
`With respect to the claim language, Patent Owner argues that the
`phrase “the plurality of game item functions being combined with the
`respective layers” is a compound subject preceded by “each of” and,
`therefore, that the verb “is exhausted” applies to the entire phrase, including
`
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`5 Independent claim 9 recites “a gamvatar controller to control whether the
`gamvatar is to be used to perform the game item functions or each of the
`game item functions being combined with the respective layers is
`exhausted.” (Emphasis added). Therefore, the exhaustion in claim 9 is
`recited as one of two alternative functions of the “gamvatar controller.”
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`“functions” and “layers.” PO Resp. 12 (citing Ex. 2002,6 10). Patent Owner
`cites Strunk and White’s The Elements of Style (hereinafter “Strunk and
`White”) as supporting its assertion regarding a compound subject. See
`Ex. 2002, 10. The excerpt from Strunk and White advises that “compound
`subjects qualified by each or every” “take a singular verb,” but it does not
`support the proposition that the phrase “being combined with” between two
`nouns forms a compound subject. Ex. 2002, 10. It states that “[a]
`compound subject formed of two or more nouns joined by and almost
`always requires a plural verb.” Ex. 2002, 10. The claim language, however,
`does not recite “each of the plurality of game item functions and the
`respective layers is exhausted in response to detection of each time of using
`the each of the plurality of game item functions.” Patent Owner does not
`direct us to evidence showing that “being combined with” is a phrase that
`forms a compound subject.
`According to Patent Owner, “[t]o construe otherwise would
`impermissibly read out the limitation ‘being combined with the respective
`layers’ from the claim.” PO Resp. 12. We disagree. The phrase “being
`combined with the respective layers” still has meaning within the claims
`because it particularly identifies which game item functions are exhausted,
`namely those that have been combined with respective layers.
`Patent Owner also cites the following excerpt from the prosecution
`history of the ’743 patent that describes disappearing game characters and
`game items in a prior art reference:
`
`
`6 Although Patent Owner cites Exhibit 2004, based on the context, we
`understand Patent Owner’s citation to be to Exhibit 2002.
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`Applicant respectfully submits that “combining
`each of a plurality of game item functions with the avatar
`by adding the respective layers to the avatar to create a
`gamvatar associated with a game item functions” and
`“each of the plurality of game item functions being
`combined with the respective layers is exhausted in
`response to detection of each time of using the each of the
`plurality of game
`item
`functions” viz., creating
`“gamvatar” and disappearing “gamvatar” cannot be read
`on mere appearing or disappearing game character as the
`Office Action suggests on page 16 by citing Blizzard Items
`(“The Arreat Summit - Items: Basic Item Information”,
`2003) i.e., “Don’t leave items and Gold lying on the
`ground any longer than necessary. Regular items and
`Gold disappear in about 15 minutes.” This is simply
`because that Blizzard Items are not created by “combining
`each of a plurality of game item functions with the avatar
`by adding the respective layers to the avatar to create a
`gamvatar associated with a game item functions” nor
`disappearing viz., “the plurality of game item functions
`being combined with the respective layers is exhausted in
`response to detection of each time of using the each of the
`plurality of game item functions.”
`Ex. 1010, 12–13 (quoted at PO Resp. 13–14 (emphases removed)).
`According to Patent Owner, this excerpt “identified game items in the prior
`art—namely ‘Blizzard Items’—that are not exhausted” and “also identified a
`deficiency of such game items, which when combined with a layer do not
`disappear upon use thereof.” PO Resp. 14 (citing Ex. 1010, 12–13). We
`disagree that this passage supports Patent Owner’s construction. Rather, the
`applicant’s argument in this portion of the prosecution history refers to a
`“disappearing ‘gamvatar,’” and Patent Owner is not arguing, in this
`proceeding, that a gamvatar disappears. Rather, Patent Owner is arguing
`that a game item disappears per the “exhausted” limitation. PO Resp. 14.
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`Patent Owner also cites the following passage of the ’743 patent that it
`alleges is consistent with the arguments made during prosecution: “The
`black night gamvatar has an avatar function, and the purchased gamvatar can
`be put on in the My Wardrobe of the avatar, and the avatar of the gamvatar
`disappears from the My Wardrobe after twenty four hours during which the
`game item function is used or passed.” Ex. 1001, 10:61–65 (cited at PO
`Resp. 14). This passage, however, does not refer to disappearance of a game
`item upon use, as Patent Owner suggests. PO Resp. 14. Rather, this passage
`refers to disappearance of “the avatar of the gamvatar” after 24 hours, i.e.,
`based on the passage of time, “during which the game item function is used
`or passed.” Ex. 1001, 10:61–65.
`The specification of the ’743 patent uses both the term “exhaust” and
`the term “disappear.” For example, the ’743 patent states: “[A] plurality of
`different game item functions can be combined with the avatar, and the
`corresponding game item function can be exhausted each time the game item
`function is used. In this instance, the avatar may disappear when the final
`game item function is used.” Ex. 1001, 7:41–46. This passage refers to
`exhaustion of a game item function, as the independent claims recite, but it
`does not state that the game items disappear. The ’743 patent uses the term
`“disappear” throughout to describe disappearing avatars, gamvatars, and
`game items. Ex. 1001, 6:29–32 (gamvatar’s “disappearance”), 6:62 (“game
`item disappears”), 7:20 (“the gamvatar avatar may disappear”), 9:34
`(“disappearance of the gamvatar”), 10:28 (“the avatar of the gamvatar
`disappears”). But the term “disappear” is noticeably absent from the claims
`of the ’743 patent. Rather, the claims use the term “exhausted,” which is
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`separately used in the ’743 patent. Ex. 1001, 4:48–50, 6:1–5, 7:40–46,
`9:23–27, 9:55–58, 10:44–47.
`Patent Owner’s construction, therefore, seeks to rewrite the claim to
`include a requirement that a game item displayed on a layer must disappear
`from the display. We determine that the broadest reasonable interpretation
`of the term “exhausted,” in light of the specification of the ’743 patent, does
`not require disappearance of game items on layers. Rather, having
`considered the record developed during trial, we maintain that the initial
`determination of the Board in the Decision on Institution is correct that
`exhaustion in the claims refers to game item functions rather than
`disappearance of layers. Dec. on Inst. 9–10. We further determine that the
`term “exhausted” does not require an express construction. We also note
`that, as explained below, the prior art teaches game items that disappear
`upon use and exhaustion of their corresponding game item functions, and,
`therefore, our determinations on unpatentability would be the same if we
`adopted Patent Owner’s construction that the “exhausted” limitation requires
`disappearance of the game item.
`
`6. “Using”
`Patent Owner contends that “the skilled artisan would have
`understood ‘using’ recited in the claims to mean activation of the game item
`function associated with a game item.” PO Resp. 15–16 (citing Ex. 1001,
`7:9–13, 11:6–11; Ex. 2003, 77:4–6, 100:5–11, 100:24–101:10, 102:9–16).
`The ’743 patent does not use the term “activate” or its derivatives, and we
`see no reason to redefine a well-understood word such as “using” absent
`compelling intrinsic evidence, such as, for example, an express definition in
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`the specification of the ’743 patent. We determine that the term “using”
`does not require an express construction.
`7. “Avatar Shop”
`In the Decision on Institution, the Board rejected both parties’
`proposed constructions of the phrase “avatar shop.” In particular, the Board
`determined that an avatar shop need not be “an area of a video game,” as
`asserted by Petitioner. Dec. on Inst. 5–6. The Board also did not agree with
`Patent Owner’s arguments that an avatar shop must be “Internet-accessible”
`and must require the purchase of an avatar, rather than just the acquisition of
`one. Dec. on Inst. 6–7 (citing Ex. 1001, 2:38–40 (emphasis added) (“[A]
`user having accessed the Web site 200 through the user computer 100
`acquires or buys an avatar from the avatar shop or the avatar server 260.”)).
`During trial, the parties did not address the Decision on Institution’s
`discussion of “avatar shop” nor provide express constructions for the term.
`Having considered the full record developed during trial, we adopt the
`discussion of the broadest reasonable interpretation of “avatar shop” from
`the Decision on Institution (Dec. on Inst. 5–7), and we determine that the
`term does not require an express construction.
`8. Remaining Terms
`Based on the record developed during trial, we determine that the
`remaining terms of the challenged claims do not require express
`constructions.
`
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Obviousness over Diablo II Manual
`
`Petitioner contends claims 1–11 of the ’743 patent are unpatentable
`under 35 U.S.C. § 103(a) as having been obvious over the Diablo II Manual.
`Pet. 4, 15–38.
`
`1. Overview of the Diablo II Manual
`The Diablo II Manual is a user manual for the video game “Diablo II,”
`and it describes game functionality that allows a user to choose a character,
`which then can be equipped with various items. Ex. 1013, 10, 21, 30. A
`screenshot from the Diablo II Manual is reproduced below.
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`The screenshot reproduced above shows the game play area on the left and
`the inventory screen on the right. Ex. 1013, 21. The Diablo II Manual
`explains: “The top part of the Inventory screen contains several boxes
`representing the different areas of your character that can hold equipment.
`The rectangular grid at the bottom of the Inventory represents your
`backpack.” Ex. 1013, 21. The Diablo II Manual discloses that the character
`equipment areas include head, body, right arm, left arm, hands, waist, feet,
`neck, fingers, and backpack, and it gives examples of the use of each of
`these. Ex. 1013, 21–22. For instance, the right arm “is where you equip a
`weapon such as a sword or a bow,” and the head is for a helmet. Ex. 1013,
`21. At the bottom of the screenshot is a belt, which “is designed to allow
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`quick and easy access to the potions your character finds or buys.”
`Ex. 1013, 22.
`
`2. Independent Claim 1
`The independent claims recite similar subject matter of providing an
`avatar having layers and combining game item functions with the avatar to
`create a gamvatar and further recite limitations
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