Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 45
`Entered: October 4, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`FANDUEL, INC.
`DRAFTKINGS, INC.
`BWIN.PARTY DIGITAL ENTERTAINMENT PLC,
`Petitioner,
`
`v.
`
`CG TECHNOLOGY DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00902
`Patent RE39,818
`____________
`
`
`
`Before THOMAS L. GIANNETTI, BARRY L. GROSSMAN, and
`MITCHELL G. WEATHERLY, Administrative Patent Judges.
`
`
`GROSSMAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Incorporating Decision on
`Patent Owner’s Motion to Exclude Evidence
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`

`

`IPR2017-00902
`Patent RE39,818
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`FanDuel, Inc., DraftKings, Inc., and bwin.party Digital Entertainment
`
`PLC (collectively, “Petitioner”), filed a petition, Paper 1 (“Petition” or
`
`“Pet.”), to institute an inter partes review of claims 1, 16, 20, 21, 24, 25, 31,
`
`and 32 (the “challenged claims”) of U.S. Patent RE39,818 (the “’818
`
`patent”). 35 U.S.C. § 311. CG Technology Development, LLC (“Patent
`
`Owner”) timely filed a Preliminary Response. Paper 13 (“Prelim. Resp.”).
`
`We concluded that Petitioner satisfied the burden, under 35 U.S.C.
`
`§ 314(a), to show that there was a reasonable likelihood that Petitioner
`
`would prevail with respect to at least one of the challenged claims.
`
`Accordingly, on behalf of the Director (37 C.F.R. § 42.4(a)), we instituted
`
`an inter partes review of all the challenged claims on all of the grounds
`
`asserted in the Petition. Paper 14 (“Dec. Inst.”).
`
`Patent Owner filed a Response to the Petition (Paper 22, “PO Resp.”),
`
`and Petitioner filed a Reply (Paper 25, “Pet. Reply”).
`
`Petitioner submitted 30 exhibits (Exs. 1001–1127, 1031–1033).
`
`Petitioner relies, in part, on the Declaration testimony of Mr. Garry Kitchen
`
`(Ex. 1010).
`
`Patent Owner submitted three exhibits (Exs. 2001–2003). Patent
`
`Owner relies, in part, on the Declaration testimony of Dr. Robert Akl
`
`(Ex. 2002).
`
`Patent Owner filed a Motion to Exclude exhibits 1009, 1026, and
`
`1027. Paper 30 (“Mot. Excl.”). Petitioner filed a Response to the Motion to
`
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`IPR2017-00902
`Patent RE39,818
`
`Exclude. Paper 39 (Resp. Mot. Excl.). Patent Owner filed a Reply. Paper
`
`40 (Reply Mot. Excl.).
`
`A hearing was held July 16, 2018. Paper 44 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. We enter this Final Written
`
`Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`Petitioner has the burden of proving unpatentability of a claim by a
`
`preponderance of the evidence. 35 U.S.C. § 316(e).
`
`Based on the findings and conclusions below, we determine that
`
`Petitioner has proven by a preponderance of the evidence that claims 1, 16,
`
`20, 21, 24, 25, 31, and 32 would have been obvious and, thus, are
`
`unpatentable.
`
`B. Related Proceedings
`
`The parties state that the ’818 patent has been asserted in the
`
`following patent infringement lawsuits: CG Technology Development, LLC
`
`et al. v. DraftKings, Inc., Case No. 2:16-cv-00781 (D. Nevada); CG
`
`Technology Development, LLC et al. v. FanDuel, Inc., Case No. 2:16-cv-
`
`00801 (D. Nevada); CG Technology Development, LLC et al. v. bwin.party
`
`digital entertainment PLC et al., Case No. 2:16-cv-00871 (D. Nevada); CG
`
`Technology Development, LLC et al. v. Double Down Interactive, LLC, Case
`
`No. 2: 16-cv-00858 (D. Nevada); CG Technology Development, LLC et al.
`
`v. Big Fish Games, Inc., Case No. 2:16-cv-00857 (D. Nevada); CG
`
`Technology Development, LLC et al. v. 888 Holdings PLC, Case No. 2:16-
`
`cv-00856 (D. Nevada); and CG Technology Development, LLC et al. v.
`
`Zynga, Inc., Case No. 2:16-cv-00859 (D. Nevada). Pet. 1–2; Paper 34, 1–3.
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`
`The parties also state that the ’818 patent is involved in an ownership
`
`dispute in Russell Slifer v. CG Technology Development, L.P., Case No.
`
`1:14-cv- 09661 (S.D.N.Y). Pet. 2; Paper 34, 2.
`
`C. Asserted Grounds of Unpatentability
`
`Petitioner challenges claims on the following three grounds (Pet. 5):
`
`References
`
`Basis
`
`Claims Challenged
`
`Walker1 and Kelly2
`
`Walker, Kelly, and
`Viescas4
`
`Kelly and Walker
`
`§ 103(a)3
`
`§ 103(a)
`
`§ 103(a)
`
`20, 21, 24, and 31, 32
`
`25
`
`1, 16
`
`The order in which references are listed is of no significance to the
`
`substance of the asserted basis of unpatentability. Thus, Petitioner’s
`
`Ground 1 and Ground 3 are the same and are considered as a single asserted
`
`basis of unpatentability. Dec. Inst. 3; see, e.g., In re Bush, 296 F.2d 491,
`
`496 (CCPA 1961) (“[i]n a case of this type where a rejection is predicated
`
`on two references each containing pertinent disclosure which has been
`
`pointed out to the applicant, we deem it to be of no significance, but merely
`
`a matter of exposition, that the rejection is stated to be on A in view of B
`
`
`1 U.S. Pat. 5,779,549, issued July 14, 1998. Ex. 1007.
`
`2 U.S. Pat. 5,816,918, issued Oct. 6, 1998. Ex. 1008.
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 296–07 (2011), took effect on September 16, 2012. Because the
`application for the patent at issue in this proceeding has an effective filing
`date before that date, we refer to the pre-AIA versions of the statute.
`
`4 John L. Viescas, The Official Guide to the Prodigy Service, Microsoft
`Press (1991). Ex. 1009.
`
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`
`instead of B in view of A, or to term one reference primary and the other
`
`secondary.”); see also In re Cook, 372 F.2d 563, 566 n.4 (CCPA 1967).
`
`Petitioner has no objection to combining its asserted grounds 1 and 3 into a
`
`single ground. Tr. 6:2–10 (“We don’t have an objection” to combining
`
`grounds 1 and 3 into a single ground.).
`
`Petitioner also adds the phrase “in further view of the Knowledge of a
`
`PHOSITA” to Petitioner’s Grounds 2 and 3. Pet. 5. This phrase is
`
`superfluous. The applicable statute states that the determination of
`
`patentability is based on whether “the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary
`
`skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a).
`
`Thus, the knowledge, skill, and creativity of a person having ordinary skill in
`
`the art (“PHOSITA”) is a factor in every determination of patentability
`
`under § 103(a). KSR Int’l v. Teleflex Inc., 550 U.S. 398, 406 (2007); see
`
`also id. at 421 (“A person of ordinary skill is also a person of ordinary
`
`creativity.”).
`
`Thus, in determining patentability of all asserted grounds and all
`
`challenged claims as defined by the Petition, we consider whether claims 1,
`
`16, 20, 21, 24, 31, and 32 would have been obvious based on Walker and
`
`Kelly; and whether claim 25 would have been obvious based on Walker,
`
`Kelly, and Viescas. Accordingly, this review is “[i]n accordance with or in
`
`conformance to the petition.” SAS Institute Inc. v. Iancu, 138 S. Ct. 1348,
`
`1356 (2018) (internal quotations omitted).
`
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`
`II. ANALYSIS
`
`A. The ’818 Patent
`
`The ’818 patent discloses an interactive video system, such as a video
`
`game system, that allows the system to recognize individual users and adjust
`
`the game to each individual player, such as by varying the skill level.
`
`Ex. 1001, 1:21–24; 2:55–57. Personalized operation is based on personal
`
`data transmitted from wireless game controllers. Id. at 1:49–53.
`
`The disclosed system includes standard computer components to
`
`operate the system, including a central processing unit (CPU) connected to a
`
`video screen, and a wireless game controller. Id. at 2:60–67. The wireless
`
`controller transmits control signals to the CPU. Id. at 2:67–3:1. The
`
`controller can include a number of inputs, or switches, for providing signals
`
`to operate a video game. Id. at 3:1–3.
`
`Figures 1 and 2 of the ’818 patent, reproduced below, illustrate the
`
`disclosed invention (Figure 2) in comparison to the prior art (Figure 1).
`
`Figure 1 illustrates a prior art video game system. Id. at 2:20.
`
`
`
`
`
`Figure 2 illustrates a video game system of the invention disclosed in the
`
`’818 patent. Id. at 2:21. In these figures, the only difference illustrated is
`
`that prior art game controller 104 is connected to CPU 100 by control wire
`
`106 (id. at 2:44–55), whereas game controller 126 of the disclosed invention
`
`is connected wirelessly to CPU 122 (id. at 2:60–3:1).
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`
`As explained in the Specification, another significant difference is that
`
`prior art controller 104 is “not personalized” (id. at 2:54–55), whereas
`
`controller 126 includes non-volatile memory 134 used to store personal
`
`information about the user of the controller (id. at 3:26–34).
`
`How and where the personal data is stored and retrieved, and what
`
`personal data is stored and retrieved, are the key disputes between the
`
`parties.
`
`In one disclosed embodiment, the controller includes a non-volatile
`
`memory device used to store personal information regarding the user, such
`
`as name, age, previous video game scores and statistics, and current skill
`
`level for a video game. Ex. 1001, 3:29–37. Each user can have a
`
`“personalized controller.” Id. at 3:41–42. By including the age of a user as
`
`part of the stored personal information, operation of a video game can be
`
`prohibited based on the user’s age, or adjusted to the age of the user.
`
`Id. at 3:42–48. According to Patent Owner, this provides a form of “parental
`
`control” for the video game. Tr. 38:20–23; see also Ex. 1001, 3:42–46 (“By
`
`including the age of a user, it will be appreciated that amusement games
`
`designed for a specific age group is not operated by an inappropriate user.
`
`Thus, operation of a video game can be prohibited based on the user age.”).
`
`Patent Owner admitted, however, that the claims were not limited to parental
`
`control devices, but also could apply to “situations other than parents
`
`protecting their children from unwanted content.” Id. at 44:6–20.
`
`In another embodiment, the CPU also may contain a memory device
`
`that also stores personal data corresponding to the personal data stored in the
`
`controller. This allows the wireless controller to transmit a user
`
`identification code to the CPU, which allows the CPU to retrieve stored
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`IPR2017-00902
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`personalized information for a specific user from the CPU memory.
`
`Ex. 1001, 3:49–58.
`
`In yet another embodiment, wireless controller 126 stores the detailed
`
`personalized data in its non-volatile memory 134. Id. at 3:66–67.
`
`Controller 126 transmits this data to CPU 122, where it is stored in the
`
`CPU’s memory 136 “for use during the operation of the game.” Id. at3:67–
`
`4:2. In this embodiment, memory 136 located in CPU 122 can be volatile or
`
`non-volatile because the personalized data does not have to be stored beyond
`
`the operation of a game. Id. at 4:14–18. Non-volatile memory 134 in
`
`controller 126 remains as the location for “permanent storage of
`
`personalized user data.” Id. at 4:3–4. Thus, this embodiment requires that
`
`the CPU transmit updated information to the controller via transmitter 140
`
`for updating the data stored in the “permanent” memory in the wireless
`
`controller.
`
`Restricting access to a game based on the user’s age is recited in all
`
`the challenged claims. E.g., see claim 1, Ex. 1001, 5:55–56 (“the processor
`
`unit authorizes game execution based on the user age”). Whether the cited
`
`references disclose a control based on age, as claimed in the challenged
`
`claims, is a significant dispute between the parties.
`
`B. Illustrative Claims
`
`The challenged claims are all independent. They are directed to a
`
`“video game system” (claim 1); a “method of operating an interactive video
`
`system” (claim 16); a “game apparatus” (claim 20); a “method of playing an
`
`interactive game” (claim 21); a “gaming system” (claims 24 and 25); a
`
`“method of playing a game” (claim 31); and a “method of operating a game”
`
`(claim 32). Ex. 1001, 5:40–8:48. All challenged claims include a limitation
`
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`that authorizes or permits a player (“user” in claim 1) to play a game based
`
`at least in part on the age of the game player or whether the player’s age falls
`
`within a defined age group.
`
`Claims 1 and 16 recite that at least some player data, including at least
`
`the player’s age, and previous video game scores and/or statistics (“historical
`
`game performance”) is stored on the controller. E.g., claim 1, id. at 5:45–52
`
`(“a personalized portable control comprising . . . a non-volatile memory for
`
`storing personalized identification information corresponding to a user of the
`
`controller”); claim 16 id. at 7:8–9 (“storing the updated personalized
`
`information in a memory of the controller”).
`
`Claims 20, 21, 24, 31, and 32 recite that player data is stored on the
`
`processor of a remote server. E.g., claim 20, id. at 7:25–30 (signals are
`
`transmitted from the wireless transmitter “to a processor,” with the
`
`identification code signal being “used by the processor” to retrieve
`
`identification data).
`
`Claims 1 and 20, reproduced below, are representative.
`
`1. A video game system comprising:
`
`a processor unit for executing game instructions and
`displaying video images on a display screen, the processor
`includes a receiver for receiving wireless identification and
`control signal transmissions; and
`
`a personalized portable control comprising:
`
`a plurality of control switches for generating game control
`signals;
`
`storing personalized
`for
`a non-volatile memory
`identification information corresponding to a user of the
`controller, the personalized identification information comprises
`a user age, and historical game performance data; and
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`
`a transmitter for wireless transmitting of the personalized
`identification and game control signals to the processor unit,
`wherein the processor unit authorizes game execution based on
`the user age, further the processor unit comprises a transmitting
`[sic] for transmitting the historical game performance data to the
`portable controller.
`
`Ex. 1001, 40–59 (emphases added).
`
`20. A game apparatus comprising:
`
`a wireless transmitter to transmit both an identification
`code and game control signals to a processor executing a game,
`the identification code is used by the processor to retrieve
`identification data and authorize game play based at least in part
`on an age of a player; and
`
`a plurality of input controls to allow the player to interact
`with the processor to play the game.
`
`Id. at 7:25–32 (emphases added).
`
`C. Claim Construction
`
`The Petition was filed March 13, 2017. Paper 5. The ’818 patent is a
`
`reissue of U.S. Patent No. 6,342,010 (“’010 patent). Ex. 1001, INID Code
`
`(64).5 The ’010 patent was filed on November 14, 1997, and issued on
`
`January 29, 2002. Id. Accordingly, the ’818 patent was in force when the
`
`Petition was filed, but is now expired, having expired on November 14,
`
`2017. 35 U.S.C. § 154(a)(2) (“such grant shall be for a term beginning on
`
`
`5 “INID” is an acronym for “Internationally agreed Numbers for the
`Identification of (bibliographic) Data.” It provides a means whereby the
`various patent data in languages foreign to the reader can be identified
`without knowledge of the language used. INID codes are used by most
`patent offices throughout the world. They have been applied to U.S. patents
`since August 4, 1970. MPEP 901.05(b). INID Code (64) refers to an earlier
`publication which is “reissued.”
`
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`the date on which the patent issues and ending 20 years from the date on
`
`which the application for the patent was filed in the United States”); § 251
`
`(“the Director shall . . . reissue the patent . . . for the unexpired term of the
`
`original patent.”).
`
`When a patent in an IPR expires during the pendency of the
`
`proceeding, as here, the Board construes claims of the expired patent in
`
`accordance with Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc). See Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272,
`
`1279 (Fed. Cir. 2017). Under that standard, words of a claim are generally
`
`given their ordinary and customary meaning. Phillips, 415 F.3d at 1312
`
`(“the words of a claim are generally given their ordinary and customary
`
`meaning”) (citations and internal quote marks omitted). “[T]he ordinary and
`
`customary meaning of a claim term is the meaning that the term would have
`
`to a person of ordinary skill in the art in question at the time of the
`
`invention.” Id. at 1313. Importantly, the person of ordinary skill in the art is
`
`deemed to read the claim term not only in the context of the particular claim
`
`in which the disputed term appears, but in the context of the entire patent,
`
`including the specification. Id.
`
`Only terms that are in controversy need to be construed expressly, and
`
`then only to the extent necessary to resolve the controversy. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Because 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 (Phillips, 415 F.3d at 1312–14 (citing
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)),
`
`we first address the level of ordinary skill in the art.
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`
`1.
`
`Level of Ordinary Skill
`
`The level of skill in the art is “a prism or lens” through which we view
`
`the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001) (“the level of skill in the art is a prism or lens
`
`through which a judge, jury, or the Board views the prior art and the claimed
`
`invention”).
`
`Factors pertinent to a determination of the level of ordinary skill in the
`
`art include: (1) educational level of the inventor; (2) type of problems
`
`encountered in the art: (3) prior art solutions to those problems; (4) rapidity
`
`with which innovations are made; (5) sophistication of the technology, and
`
`(6) educational level of workers active in the field. Environmental Designs,
`
`Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing
`
`Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376,
`
`1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every
`
`case, and one or more of these or other factors may predominate in a
`
`particular case. Id. Moreover, these factors are not exhaustive but are
`
`merely a guide to determining the level of ordinary skill in the art. Daiichi
`
`Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`
`In determining a level of ordinary skill, we also may look to the prior art,
`
`which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.
`
`Additionally, the Supreme Court informs us that “[a] person of ordinary skill
`
`is also a person of ordinary creativity, not an automaton.” KSR, 550
`
`U.S. at 421.
`
`Petitioner asserts that as of November 14, 1997, “a person having
`
`ordinary skill in the art (PHOSITA)” would have had a B.S. degree in
`
`Electrical Engineering or Computer Engineering, or equivalent, and
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`possessed at least two years of experience in the design and development of
`
`video game-related hardware and software.” Pet. 10 (citing Ex. 1010,
`
`¶¶ 48–49).6 Mr. Kitchen testifies that in forming his opinion he considered
`
`“the type of problems encountered in the art, the solutions to those problems,
`
`the rapidity with which innovations are made in the field, the sophistication
`
`of the technology, and the education level of active workers in the field.”
`
`Ex. 1010 ¶ 48. He also “placed [himself] back in the time frame of the
`
`claimed invention” and “considered the colleagues with whom [he] had
`
`worked at that time.” Id.
`
`Patent Owner agrees with Petitioner’s proposed level of skill except
`
`for limiting the experience of the person of ordinary skill to experience in
`
`designing and developing “video game-related hardware and software.”
`
`PO Resp. 3–4 (emphasis added (citing Ex. 2002 ¶ 16)). 7 Dr. Akl testifies
`
`
`6 Exhibit 1010 is a declaration from Mr. Garry Kitchen. Mr. Kitchen is an
`engineer, video game designer, and consultant. Ex. 1010 ¶ 3. Mr. Kitchen
`has over 35 years of experience running game development companies, with
`experience “in all game genres, including console, PC retail and download,
`online, mobile, and dedicated electronic.” Id. at ¶¶ 4, 7, 9–12, 14. He has
`designed hundreds of commercially-released video game products, across a
`breadth of hardware platforms. Id. He has received numerous awards and
`industry recognition for his work. Id. at ¶¶ 8, 9, 16. We find that
`Mr. Kitchen is qualified, based on his experience, training, and education to
`testify in the form of an opinion on issues where his scientific, technical, and
`other specialized knowledge will help the Board, as trier of fact, understand
`the evidence or to determine a fact in issue. Fed. R. Evid. 702.
`
`7 Exhibit 2002 is a declaration from Dr. Robert Akl. Dr. Akl studied, taught,
`practiced, and researched in the field of computer hardware/software, e.g.,
`mobile computing, telecommunications, computer security, and mobile
`applications for over twenty years. Ex. 2001 ¶ 2. He is a tenured Associate
`Professor in the Department of Computer Science and Engineering at the
`University of North Texas, in Denton, Texas. Id. at ¶ 7. He also serves as
`
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`that he “considered factors such as the educational level and years of
`
`experience of those working in the pertinent art; the types of problems
`
`encountered in the art; the teachings of the prior art; patents and publications
`
`of other persons or companies; and the sophistication of the technology.”
`
`Ex. 2002 ¶ 14. Based on these factors, Dr. Akl’s opinion is that a person of
`
`ordinary skill “would have had at least a B.S. degree in Electrical
`
`Engineering, Computer Engineering, Computer Science or similar field, and
`
`possessed around two years’ experience in design, development, and/or
`
`analysis of hardware and software, or equivalent.” Id. at ¶ 15. Thus, Dr.
`
`Akl does not limit the experience factor to video games. Dr. Akl opines that
`
`the person of ordinary skill would have general experience working with
`
`“hardware and software.” Id.
`
`According to Patent Owner, including specific reference to “video
`
`game-related” experience is effectively “meaningless” because “anyone with
`
`two years’ experience in design, development, and/or analysis of hardware
`
`and software would have the ‘videogame-related’ experience.” PO Resp. 4
`
`(emphasis added) (citing Ex. 2002¶ 16). Thus, Patent Owner does not assert
`
`that Petitioner’s proposed level of skill is wrong, only that it is
`
`“unnecessary” because it is inherent or already included in the more general
`
`
`Associate Chair of Graduate Studies in this Department. Id. Dr. Akl
`authored and co-authored over 75 journal publications, conference
`proceedings, technical papers, book chapters, and technical presentations in
`a broad array of communications-related technologies, including networking
`and wireless communication. Id. at ¶ 11. We find that Dr. Akl is qualified,
`based on his experience, training, and education to testify in the form of an
`opinion on issues where his scientific, technical, and other specialized
`knowledge will help the Board, as trier of fact, understand the evidence or to
`determine a fact in issue. Fed. R. Evid. 702.
`
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`statement of experience favored by Patent Owner. Id. Patent Owner also
`
`states, however, that including specific reference to “video-game related”
`
`experience in the level of ordinary skill is a distinction without a substantive
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`difference, because it “should not impact the outcome of these proceedings.”
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`Id. (citing Ex. 2002, ¶ 16 (Dr. Akl specifying that his opinions would be the
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`same regardless of which definition is applied)). Petitioner agrees that to the
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`extent that Petitioner’s and Patent Owner’s proposed levels of skill are
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`different, that difference is not outcome determinative in this case. Tr. 28:1–
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`9 (“I think the outcome is the same.”).
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`Each of the challenged claims refers to a “game.” E.g., see, Ex. 1001,
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`5:40, 51–52 (claim 1, reciting “A video game system,” and referring to
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`“historical game performance data”). The two references, Walker and Kelly,
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`relied on by Petitioner to establish unpatentability of all the challenged
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`claims, refer specifically to games. See Ex. 1007 (Walker), 1:5–6 (“The
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`present invention relates generally to games. And more particularly to online
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`electronic tournament games.”) and Ex. 1008 (Kelly), Abstract (“A game is
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`provided on a game apparatus for a player to play in exchange for monetary
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`input, and prize credits are credited to the player based on the game
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`outcome.”).
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`The parties have not directed us to any evidence in the record before
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`us of the educational level of the inventor; rapidity with which innovations
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`are made; or the educational level of workers active in the field. Based on
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`the type of problems encountered in the art, as discussed in the ’818 patent,
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`prior art solutions to those problems, the sophistication of the technology,
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`and the testimony of Mr. Kitchen and Dr. Akl, all as discussed above, and
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`IPR2017-00902
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`further discussed below, we adopt Petitioner’s proposed level of ordinary
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`skill.
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`We find that a person of ordinary skill in a technology relevant to the
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`challenged claims would have had a B.S. degree in Electrical Engineering or
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`Computer Engineering, or equivalent, and also would have had at least two
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`years of experience in the design and development of video game-related
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`hardware and software.
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`2.
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`Authorize Play Based on Age
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`Petitioner asserts “that all claim terms be given their ordinary and
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`customary meanings and that no explicit claim constructions are necessary.”
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`Pet. 10.
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`Patent Owner does not assert any specific claim construction. In
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`arguing its position on the merits of the asserted grounds, however, Patent
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`Owner states Petitioner’s analysis ignores the “plain and ordinary meaning”
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`of the claim language. PO Resp. 16; see also id. at 17. This suggests that
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`Patent Owner and Petitioner agree that we should apply the plain, ordinary,
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`and customary meaning to claim construction. They just differ on what is
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`that meaning. The parties also fail to articulate their position on the ordinary
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`and customary meaning of key claim terms in dispute.
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`In our Decision to Institute an IPR trial, we stated:
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`We determine that an explicit construction of the claims is not
`necessary for the purposes of determining whether there is a
`reasonable likelihood that the Petitioner would prevail with
`respect to at least one of the claims challenged in the Petition.
`This determination does not preclude the parties from arguing
`their proposed constructions of the claims during trial. Indeed,
`the parties are hereby given notice that claim construction, in
`general, is an issue to be addressed at trial. Claim construction
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`will be determined at the close of all the evidence and after any
`hearing. The parties are expected to assert all their claim
`construction arguments and evidence in the Petition, Patent
`Owner’s Response, Petitioner’s Reply, or otherwise during trial,
`as permitted by our rules.
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`Dec. Inst. 7 (emphasis added). Notwithstanding this notice, neither party
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`submitted a specific construction of the ordinary and customary meaning of
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`clearly disputed claim terms.
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`Claim construction also was discussed at the hearing. E.g. Tr. 13:21–
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`14:26. The Board pointed out that the parties failed to articulate the ordinary
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`and customary meaning of claim terms where it was clear the parties had
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`different views of the ordinary and customary meaning of these terms. Id.
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`Following the hearing, neither party requested authorization to further
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`address claim construction issues.
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`The meaning of the “authorize play based on age” clause in each of
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`the challenged claims (see discussion below) is a claim term on which the
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`parties have different positions. In their merits arguments, the parties have
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`argued their respective claim constructions, even if they have not been
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`labeled as such. The dispute between the parties concerning the “authorize
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`play based on age” clause centers on the word “authorize.”
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`According to Patent Owner, “restricting tournament participation,” as
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`disclosed in Kelly, is not the same as “authorizing game execution,” as
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`recited in the challenged claims. PO Resp. 14; see generally id. at 14–17
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`(discussing Patent Owner’s position on this issue). Patent Owner argues:
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`[t]he plain and ordinary meaning of the claim language ties the
`authorization to a game—not to features after access has already
`been allowed. This is supported by the specification of the
`RE’818 patent, which explains, for example, that “operation of a
`video game can be prohibited based on the user age.”
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`PO Resp. 16. (citing Ex. 1001, 3:45–46 (emphasis added by Patent Owner);
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`Ex. 2002, ¶ 57. Dr. Akl, Patent Owner’s expert, merely repeats Patent
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`Owner’s argument without any additional underlying facts or data on which
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`Dr. Akl’s opinion is based. See Ex. 2002 ¶ 57. Dr. Akl admitted, however,
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`that his declaration testimony was not “articulating an exact definition.”
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`Ex. 1031, 24:6–8). 8
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`Dr. Akl testified at his deposition that he had “done the analysis”
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`(id. at 24:7) on what the claim term “authorizing” means (id. at 23:19–
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`24:12); that he stated an opinion in his Declaration in this case that the
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`challenged claims are different from the Kelly reference based on the word
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`“authorize” (id. at 24:13–16); but did so “without articulating an exact
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`definition” (id. at 24:6–8). He refused, however, to state a specific
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`construction of the claim term “authorizing” at his deposition. Id. at 23:19–
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`24:12. Without disclosing the underlying facts or data on which his opinion
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`is based, Dr. Akl’s declaration and deposition testimony on claim
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`construction for the “authorize play based on age” clause are entitled to
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`minimal weight. 37 C.F.R. § 42.65(a).
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`Neither the Petition nor Petitioner’s Reply state a specific claim
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`construction for the “authorize play based on age” clause in each of the
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`challenged claims. Petitioner’s Reply, however argued that “PO’s [Patent
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`Owner’s] narrow claim interpretation should be rejected.” Pet. Reply 4.
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`Petitioner asserts that “PO contends ‘authorizing’ gameplay as used in
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`8 Exhibit 1031 is the transcript of Dr. Akl’s deposition. Each page of
`Exhibit 1031 includes four reduced-size transcript pages. To provide
`specific citations to this deposition transcript, we cite to the transcript page
`number and line number, rather than to the exhibit page number.
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`claims 1 and 16 requires ‘restricting/authorizing game play in its entirety,
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`based on an age of a player.’ Id. at 4–5 (citing PO Response, 15 (emphases
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`added by Petitioner)). It is Petitioner’s position that “the plain language of
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`the claims does not support” Patent Owner’s argument. Pet. Reply 5.
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`According to Petitioner, “there is no requirement that gameplay be
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`“restricted/authorized . . . in its entirety” as alleged by PO.” Id. Thus,
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`Petitioner argues what the claim term does not mean, without stating what it
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`does mean.
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`It is clear that there is a fundamental dispute between the parties as to
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`whether authorizing or allowing a user to play a game based on the age of
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`the user, as recited in all the challenged clai