`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________________________
`
`
`WARGAMING GROUP LIMITED and ACTIVISION BLIZZARD, INC.,
`Petitioners,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`___________________
`
`Case IPR2017-01082
`U.S. Patent No. 7,682,243
`___________________
`
`PETITIONERS’ REPLY
`
`

`

`TABLE OF CONTENTS
`
`I. OVERVIEW ........................................................................................................................... 1
`II. CLAIM CONSTRUCTION .................................................................................................... 2
`A.
`Level of Skill in the Art.................................................................................................... 2
`B.
`“Pilot” and “Unit Associated with Said Pilot” ................................................................. 2
`C.
`“Ability” ........................................................................................................................... 4
`1.
`The ’243 Patent Is Not Limited to RPG Terminology. ............................................ 6
`2.
`PO’s Construction Lacks Any Evidentiary Support................................................. 9
`3.
`PO’s Construction Contradicts the Claims and Embodiments. .............................. 10
`4.
`Even D&D Abilities Are Not Limited to “Basic Abilities.” .................................. 12
`5.
`PO’s Construction Is Contradicted by its Previous Positions. ............................... 13
`III. CLAIMS 1-7 ARE OBVIOUS UNDER ALL CONSTRUCTIONS. ................................... 14
`A.
`D&D and Levine Teaches Pilots and Units ................................................................... 14
`1.
`All Constructions of “Pilot” and “Unit” Are Satisfied. .......................................... 15
`2.
`PO’s Arguments Are Not Relevant to the Claims. ................................................. 16
`D&D and Levine Teaches Sync Points. ......................................................................... 17
`1.
`PO’s Obviousness Analysis Is Improper. ............................................................... 18
`2.
`HP Is an Ability Under all Constructions. .............................................................. 21
`3.
`The Druid’s Animal Companion Has a Sync Point. .............................................. 21
`IV. CLAIM 2 IS OBVIOUS. ...................................................................................................... 22
`V. THE PETITION IS NOT BARRED ..................................................................................... 25
`
`
`
`B.
`
`
`
`
`
`i
`
`

`

`PETITIONER’S UPDATED LIST OF EXHIBITS
`
`Ex.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`Description
`
`U.S. Patent No. 7,682,243 (“the ’243 Patent”)
`
`File History for U.S. Patent No. 7,682,243
`
`Declaration of Garry Kitchen
`
`U.S. Patent Application Publication No. 2003/0177187 A1 (“Levine”)
`
`Dungeons and Dragons Player’s Handbook Core Rulebook I v.3.5 (“D&D”)
`
`1005-S
`
`Dungeons and Dragons Player’s Handbook Core Rulebook I v.3.5 (“D&D”) (Text-
`Searchable Version)
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`
`
`Patent Owner’s Claim Chart for Blizzard World of Warcraft
`
`Patent Owner’s Preliminary Response to Petition Under 37 C.F.R. § 42.107 in Case
`IPR2016-01918
`
`Declaration of Ted Beckstead
`
`Master of Orion II: Battle at Antares: The Official Strategy Guide (“MOO”)
`
`Declaration of John Possidente
`
`Declaration of Roman Zanin
`
`Declaration of Kenneth Apple
`
`Joint Stipulated Motion for Partial Dismissal without Prejudice and to Substitute Parties
`
`Patent Owner’s Claim Chart for World of Tanks
`
`Patent Owner’s Claim Chart for World of Planes
`
`Certified Copy of Master of Orion II: Battle at Antares: The Official Strategy Guide from
`Library of Congress
`
`Declaration of Costas A Joannou
`
`Deposition Notice for Deposition of John Frederick Talbot
`
`ii
`
`

`

`Ex.
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`
`
`
`Description
`
`Picture of Office Lobby
`
`Picture of Kounnis Financial Group Pamphlet
`
`Kounnis Financial Group Pamphlet
`
`Mr. Joannou’s Business Card for The Caj Group
`
`Mr. Joannou’s Business Card for Kounnis and Partners
`
`Copy of Exhibit 2002 Supplemental Used at Mr. Talbot’s Deposition
`
`Deposition of John Talbot
`
`Order Voluntarily Dismissing Wargaming.net LLP without Prejudice
`
`Email Agreement to Waive Service
`
`Declaration of Winslow Taub
`
`Email from Christopher Bezak
`
`Deposition of Dr. Mark Claypool
`
`
`
`
`
`iii
`
`

`

`I.
`
`OVERVIEW
`
`Patent Owner (“PO”) invites the Board to error. Rather than defend the
`
`claims as written, PO attempts to rewrite the claims using extrinsic evidence,
`
`inserting limitations that appear nowhere in the ’243 patent—not even in its
`
`embodiments. Worse still, PO applies extrinsic evidence in contradictory ways,
`
`shifting its positions for different claim terms. For “pilot” and “unit,” PO argues
`
`the ’243 patent is about robot arcade games (Mazinger Z), and should be limited
`
`on that basis. But for “ability,” PO argues the patent should be limited to the
`
`fantasy role-playing game Dungeons & Dragons (“D&D”). Both positions are
`
`improper under the law.
`
`The Patent Owner Response relies on three improper constructions—for
`
`“pilot,” “unit,” and “ability”—which the Board has already rejected. See
`
`Paper[46], 6-7; Paper[14], 8-11; Paper[39] (“POR”).1 Even under PO’s
`
`constructions, the combination of D&D and Levine render all challenged claims
`
`obvious.
`
`
`1 The POR does not address other claim elements, such as database elements. Nor
`
`does it address claims 3-5.
`
`
`
`1
`
`

`

`II. CLAIM CONSTRUCTION
`A. Level of Skill in the Art
`
`Without explanation or support, PO contends a person of skill in the art
`
`(“POSITA”) must have “significant familiarity with role playing game
`
`mechanics.” POR, 16. The ’243 patent states otherwise: “the present invention may
`
`be applied to not only an online RPG but also an online racing game.” Ex[1001],
`
`3:37-40 (emphasis added). The patent explains that its “technical field” relates
`
`broadly to “online game[s].” Id., 1:17-22. Additionally, PO contradicts itself by
`
`arguing the ’243 patent is based on arcade games (MazingerZ). POR, 25-28.
`
`B.
`
`“Pilot” and “Unit Associated with Said Pilot”
`
`If construed, the broadest reasonable interpretation (“BRI”) of these terms
`
`should be based on the express definitions provided by the claims and
`
`specification. Ex[1001], 3:4-17. Elevating extrinsic evidence over intrinsic
`
`definitions, PO relies on dictionaries and expert opinion that are inconsistent with
`
`the intrinsic record. This is improper. See SkinMedica, Inc. v. Histogen Inc., 727
`
`F.3d 1187, 1195 (Fed. Cir. 2013).
`
`The claims contradict PO’s constructions, which require “unit” to be “a
`
`mount having [its] motion controlled by the pilot.” POR, 22. Dr. Claypool alleged
`
`that “the ‘243 patent requires that the pilot controls the unit, not the player”
`
`(Ex[1030], 136:17-22 (emphasis added)), thus “the claims of the ‘243 patent
`
`
`
`2
`
`

`

`[cannot] be satisfied when the player directly controls the motions of the unit.”
`
`Ex[1030], 120:8-15. The ’243 patent states the opposite. Each independent claim
`
`requires “said unit being a virtual object controlled by the player.” Ex[1001],
`
`11:19-20. Dr. Claypool’s opinions should be discounted. SkinMedica, 727 F.3d at
`
`1195 (“[A] court should discount any expert testimony that is clearly at odds with
`
`the claim construction mandated by the claims themselves…”).
`
`Ignoring the express definitions, PO contends “[t]he ‘243 Patent is explicit”
`
`and “makes clear that the piloted ‘unit’ may be either ‘a robot character or a
`
`vehicle character.’” POR, 23. However, PO quotes a sentence in column 1 of the
`
`specification, titled “BACKGROUND ART,” which its expert Dr. Claypool agrees
`
`is “just describing the background of the art, not the actual invention of the ‘243
`
`patent.” Ex[1030], 117:2-118:17.
`
`None of PO’s evidence supports its “mount” constructions; they do not even
`
`use that term. While PO’s construction applies “mount” to vehicles (id. ¶¶ 36, 50),
`
`Dr. Claypool does not recall “ever [having] heard of the term ‘mount’ applied to an
`
`airplane.” Ex[1030], 114:6-8, 113:12-15. Dr. Claypool admits PO’s constructions
`
`deviate from the common understanding of those terms. Ex[1030], 113:23-114:5
`
`(“A pilot would, in everyday parlance, would not usually be applied to a mount. In
`
`everyday parlance, you mount like a horse, so not usually.”).
`
`Dr. Claypool’s interpretation is contradictory and unreliable. While
`
`
`
`3
`
`

`

`defending one opinion, Dr. Claypool testified that “the word ‘vehicle’ doesn’t need
`
`clarification because a person of ordinary skill in the art would have understood it
`
`to mean ship, aircraft or spacecraft.” Ex[1030], 114:23-115:4. “Vehicle” would not
`
`include animals such as a horse or dragon. Ex[1030], 115:6-13. While defending
`
`another opinion, Dr. Claypool testified that “the ‘form of a vehicle’ [could] include
`
`a horse,” “a dog,” or “a pony.” Ex[1030], 152:3-11.
`
`C.
`
`“Ability”
`
`PO does not cite any intrinsic evidence that supports its construction;
`
`instead, PO argues the “ability” claimed by the ’243 patent should be narrowed
`
`using extrinsic evidence—the prior art reference D&D—that is neither cited nor
`
`mentioned anywhere in the patent. Specifically, PO and its expert contend that the
`
`’243 patent should be limited to the same abilities as D&D. Ex[1030], 66:19-25:
`
`Q Does “ability” have a specific meaning in the ‘243
`patent?
`
`A Yes.
`
`Q What is the specific meaning of “ability” in the ‘243
`patent?
`
`A As in Dungeons & Dragons, it’s the same -- period.
`It’s the same.
`
`See also Ex[1030], 99:17-25 (“The abilities in the ‘243 patent are synonymous
`
`with abilities in Dungeons & Dragons.”).
`
`
`
`4
`
`

`

`Incredibly, PO argues the ’243 patent should be limited to D&D terminology
`
`because “both the ‘243 Patent and D&D employ the same term ‘ability.’” POR, 31.
`
`PO argues that “ability” is a term of art in D&D that typically—but not always—
`
`refers to the six “basic abilities.” Compare POR 29-30 with POR 33-34. “The
`
`skilled artisan in RPGs, therefore, would have understood ‘ability’ to connote a
`
`basic, foundational ability.” POR, 30. Relying on the (incorrect) assumption that
`
`the field of the ’243 patent is RPGs, PO imports a limitation from the prior art,
`
`proposing a construction that literally inserts “innate” into the claim:
`
`
`
`POR, 36, 30 (emphasis added). As made clear by PO’s arguments and its expert,
`
`this construction equates “ability” from the ’243 patent with the basic abilities of
`
`D&D. See Ex[1030], 90:25-91:8 (“The ‘243 patent abilities are the same as the
`
`Dungeons & Dragons abilities. They are innate base abilities, and you derive other
`
`aspects in the role-playing game of the character or unit from those abilities.”).2
`
`
`2 PO also proposes an alternative construction, “a numeric representation of an
`
`innate attribute,” but never explains how this differs from its primary construction.
`
`See POR, 36. PO does not cite anything in the ’243 patent that distinguishes
`
`
`
`5
`
`

`

`The ’243 patent never uses the word “innate.” See Ex[1001]. Moreover, as
`
`PO’s expert admits, “Dungeons & Dragons doesn’t appear in the cited references
`
`in the ‘243 patent,” and in fact “[t]he ‘243 patent doesn’t mention Dungeons &
`
`Dragons anywhere at all.” Ex[1030], 152:12-24 (emphasis added).
`
`PO invites the Board to error. PO cites no case law for the notion that a
`
`patent may be limited to the terminology of prior art, and the Federal Circuit has
`
`warned against rewriting claims using extrinsic evidence. See Nystrom v. TREX
`
`Co., 424 F.3d 1136, 1143 (Fed. Cir. 2005) (“undue reliance on extrinsic evidence
`
`poses the risk that it will be used to change the meaning of claims in derogation of
`
`the ‘indisputable public records consisting of the claims, the specification and the
`
`prosecution history,’ thereby undermining the public notice function of patents.”).
`
`This danger would be especially acute here because the ’243 patent does not
`
`reference D&D, and the public would have zero notice that “ability” as recited in
`
`the ’243 patent should be limited to the basic abilities of D&D. PO’s construction
`
`introduces several additional problems, explained below.
`
`1.
`
`The ’243 Patent Is Not Limited to RPG Terminology.
`
`PO’s construction assumes the field of the ’243 patent is limited to RPGs.
`
`POR, 30. Dr. Claypool admitted his distinction between abilities and attributes
`
`between “ability” and “attribute.” PO’s alternative construction relies on the same
`
`arguments and should similarly be rejected.
`
`
`
`6
`
`

`

`only applies in the context of RPGs. Ex[1030], 65:19-23 (“Q So you’re using
`
`‘attribute’ to be a, kind of a generic term? A In everyday parlance, ‘attribute’ and
`
`‘ability’ might be synonymous. In role-playing games, they are not.”).
`
`However, PO relies on a single reference, D&D, with no evidence that D&D
`
`abilities reflect the broader RPG genre. See POR, 29-30. Dr. Claypool identified
`
`four videogames that were “inspired by D&D”: “EverQuest, Zelda, Diablo series,
`
`[and] World of Warcraft.” Ex[1030], 54:17-22. But he did not know whether any
`
`of these implemented the same abilities as D&D, and he admitted that they
`
`“probably [did] not” implement the core rules of D&D. Ex[1030], 49:2-16
`
`(Everquest), 49:25-50:17 (Zelda), 50:18-51:8 (Diablo), 51:9-22 (WoW).
`
`Moreover, the ’243 patent expressly states that its field is not limited to
`
`RPGs. See supra, Section II(A). For this reason alone, PO’s construction should be
`
`rejected.
`
`The notion that the ’243 patent should be limited to RPG terminology is
`
`further contradicted by the POR, which in the previous section argued the ’243
`
`patent should be limited based on the “arcade game” MazingerZ, an action game
`
`featuring robots and “arcade-style” controls. POR, 27-28:
`
`
`
`7
`
`

`

`
`
`For “pilot” and “unit,” PO argued “the MazingerZ video game is instructive
`
`as to that which would have been understood by the skilled artisan.” POR, 25. But
`
`for “ability,” PO argues the ’243 patent should be limited to RPGs—specifically
`
`the medieval fantasy game D&D. See Ex[2032], ¶¶25-26. PO’s contradictions
`
`highlight one of the reasons why the Federal Circuit has cautioned against the use
`
`of extrinsic evidence—that a virtually unbounded universe of potential extrinsic
`
`evidence can be used to change the meaning of claims in opportunistic and
`
`unpredictable ways, leaving the public to wonder if the ’243 patent should be
`
`limited to robot arcade games or fantasy RPGs. See Nystrom, 424 F.3d at 1143.
`
`
`
`8
`
`

`

`2.
`
`PO’s Construction Lacks Any Evidentiary Support.
`
`PO’s construction attempts to read “innate” into the claims. That word,
`
`however, does not appear in the ’243 patent. See Ex[1001]. Nor is “innate” defined
`
`in D&D. Ex[1030], 85:11-22 (objections omitted):
`
`that “the broadest reasonable
`So when you say
`interpretation of ‘ability’ consistent with specification is
`a numeric representation of an innate attribute,” the
`definition of “innate” from this paragraph 79 comes from
`Dungeons & Dragons, correct?
`
`THE WITNESS: Dungeons & Dragons does not define --
`neither “innate” nor “attribute.” They define “ability”
`very clearly.
`
`Dr. Claypool did not define “innate” in his declaration either. Ex[1030],
`
`84:16-22 (“Q The fact that these statistics are derived from other statistics does not
`
`in itself prevent them from being innate? THE WITNESS: So I’m not defining the
`
`term ‘innate’ in this paragraph, nor in my declaration, actually…”); Ex[1030],
`
`85:5-8 (“Q I see, so you’re not actually trying to define ‘innate’ in your
`
`declaration? A That word by itself, I am not trying to define, correct.”). When
`
`pressed on the meaning of “innate,” Dr. Claypool distanced himself from the
`
`proposed construction. See Ex[1030], 98:23-99:2 (“Q Have you disclosed in your
`
`declaration a part of the ‘243 patent where the requirement of ‘innate’ comes from?
`
`A Those aren’t the words I’ve used…”) (emphasis added).
`
`
`
`9
`
`

`

`Failing to cite any intrinsic or extrinsic evidence—or even support from its
`
`own expert—PO lacks any evidentiary support for its construction requiring an
`
`“innate” ability or attribute.
`
`3.
`
`PO’s Construction Contradicts the Claims and
`Embodiments.
`
`PO argues “hit points are not innate” because they “are merely a statistic
`
`derived from ‘your class and level, and your Constitution modifier.’” POR, 65;
`
`Ex[1030], 88:10-17. “Using a statistic for a character that is derived from an ability
`
`is not an ability.” Id., 95:23-97:14.
`
`This, however, would exclude the sync point limitations of the ’243 patent,
`
`which require that “sync point information is a ratio of which changes in said
`
`ability of pilot are applied to said ability of unit.” Ex[1001]. The claims thus
`
`require the unit’s “ability” to be calculated and derived from the pilot’s ability.
`
`PO’s construction prevents this type of sync point relationship.
`
`PO’s construction also excludes embodiments from the ’243 patent. PO
`
`argues that a prior art disclosure of hit points (“HP”) is not an ability because HP is
`
`not one of the basic abilities of D&D. POR, 52, 65. However, the ’243 patent
`
`discloses different abilities than D&D, and by limiting the patent to D&D’s basic
`
`abilities, PO excludes several abilities disclosed by the specification. PO
`
`attempts—but fails—to map the ’243 patent abilities on to the basic D&D abilities,
`
`and in doing so, illustrates the differences between them:
`
`
`
`10
`
`

`

`
`
`See POR, 31-33; Ex[1030], 153:7-21 (listing abilities), 154:24-155:2 (“Does
`
`Dungeons & Dragons disclose an ability called Capacity Point? A It does not.”),
`
`155:25-156:6, 158:22-159:4, 161:13-18 (“I have not identified an ability in the
`
`‘243 patent -- a named ability in the ‘243 patent that maps to the named ability
`
`Charisma.”), 164:18-22 (same for Constitution).
`
`Contrary to Dr. Claypool’s opinion that the ’243 patent abilities are “the
`
`same” as D&D, PO’s attempted mapping shows the abilities to be different. PO’s
`
`attempt to limit the ’243 patent would exclude a number of abilities in its
`
`embodiments.
`
`
`
`11
`
`

`

`4.
`
`Even D&D Abilities Are Not Limited to “Basic Abilities.”
`
`Even if the ’243 patent were limited to D&D terminology, PO’s
`
`characterization of abilities in D&D is contradicted by the D&D Player’s
`
`Handbook. According to PO, “ability” in D&D is a term of art referring to the six
`
`basic (allegedly “innate”) abilities. However, PO admits the D&D discloses several
`
`other abilities such as a “Spell Ability” and “Special Abilities,” which “are not
`
`basic abilities.” POR, 33-34. Even in D&D, “ability” is not limited to basic or
`
`innate abilities.
`
`D&D is replete with “abilities” beyond the basic six, including “natural
`
`ability”; “supernatural ability (Su)”; “extraordinary ability (Ex)”; “spell resistance”
`
`which is a “special defensive ability”; and regeneration ability. Ex[1005], 314,
`
`316-318. While PO relies on D&D for the premise that all RPG abilities must be
`
`“innate,” D&D provides several examples to the contrary. For example, PO admits
`
`Spell Ability can be transferred or imbued to others. POR, 33-34.
`
`Nor are all abilities in D&D foundational. PO argues “Armor Class” is not
`
`an ability because it is a statistic derived from a basic ability. POR, 30. The
`
`Player’s Handbook states otherwise, defining Armor Class as an ability: “Armor
`
`Class (AC): A number representing a creature’s ability to avoid being hit in
`
`combat.” Ex[1005], 309 (emphasis added).
`
`
`
`12
`
`

`

`5.
`
`PO’s Construction Is Contradicted by its Previous
`Positions.
`
`While PO now contends a POSITA would have interpreted “ability” based
`
`on its specific meaning in RPGs and D&D, there was no mention of this in PO’s
`
`preliminary response, which proposed an entirely different construction. Paper[8],
`
`17. PO’s previous claim construction section does not mention RPGs or D&D. See
`
`id. 7-18.
`
`Furthermore, PO’s construction
`
`is contradicted by
`
`its
`
`infringement
`
`contentions, which allege World of Warcraft’s “riding skill” is a pilot ability, even
`
`though it is not one of the D&D basic abilities. See Ex[1006], 003. In fact,
`
`according to PO’s contentions, riding skill is not innate or foundational because
`
`“WOW Patch 1.12.1 first introduces [the] riding skill concept” in “September
`
`2006,” years after the game launched. Id., 008.
`
`For World of Tanks, PO contends “Recon skill” is an “ability of pilot” and
`
`“View Range” is an “ability of unit.” Ex[1014], 11. Both relate to tank operation;
`
`neither corresponds with the abilities in D&D. Neither are these innate attributes.
`
`Recon skill is not a basic attribute of crew members; only those with the
`
`commander qualification can learn it. Id., 8. The View Range of a tank is not
`
`innate to the tank: its base value is set by the particular turret (id., 12) and is further
`
`derived from other statistics, “cumulative with the effects of any Radio Operator's
`
`Situational Awareness Skill and/or with any installed Coated Optics or Binocular
`
`
`
`13
`
`

`

`Telescope equipment.” Id., 14.
`
`These representations, made by PO in district court litigation, contradict the
`
`representations PO has made to the Board, including the notion that an “ability”
`
`must be a “basic (i.e., innate) ‘ability’” that is not calculated or derived from other
`
`statistics. POR, 30, 36. Therefore PO’s construction should be rejected.
`
`III. CLAIMS 1-7 ARE OBVIOUS UNDER ALL CONSTRUCTIONS.
`
`Despite admitting that “the tabletop world of D&D naturally morphed into
`
`electronic form” (POR, 13), PO myopically focuses on the explicit disclosures for
`
`tabletop D&D, as if analyzing anticipation. But the instituted ground is based on
`
`obviousness, and PO fails to address what a POSITA would have found obvious in
`
`a videogame inspired by the teachings of D&D and Levine. PO barely mentions
`
`Levine in its obviousness section and devotes an entire section to differentiating
`
`tabletop D&D from computer games “based on D&D.” POR, 40-41. This mistake
`
`permeates PO’s brief, undermining its arguments for pilots, units, and sync points.
`
`A. D&D and Levine Teaches Pilots and Units
`
`PO does not dispute that pilots and units are satisfied under the Board’s
`
`claim construction in the Institution Decision. See Ex[1030], 135:9-136:6
`
`(admitting obviousness opinions, sections IX(A) and (B) of expert declaration, rely
`
`on PO’s construction). The claims state that the unit is “controlled by the player.”
`
`Ex[1001], 11:19-20. PO admits D&D teaches players controlling animal units.
`
`
`
`14
`
`

`

`POR, 43, 46. The additional limitation of the pilot controlling the unit comes from
`
`PO’s proposed construction. POR, 19, 22. This is also satisfied by D&D.
`
`1.
`
`All Constructions of “Pilot” and “Unit” Are Satisfied.
`
`Even under PO’s proposed construction, D&D and Levine teaches numerous
`
`ways for player characters to control their animal units. See Paper[1], 23-27. Player
`
`characters ride their animal units3 as mounts. Id., 24-25. PO does not dispute the
`
`obviousness of, e.g., a sorcerer riding her familiar, which satisfies PO’s proposed
`
`construction because the pilot controls the motions of the unit, and the animal unit
`
`is a mount whose motions are steered by the player through her character. Id., 26-
`
`27. PO admitted the pilot/unit relationship is satisfied by a “game character (pilot)”
`
`riding a dragon. See Ex[1006], 2:
`
`
`3 Dr. Claypool admitted that animals can be “units.” Ex[1030], 115:24-116:2
`
`(admitting “unit” can include animals), 115:14-18, 116:13-15.
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`15
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`2.
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`PO’s Arguments Are Not Relevant to the Claims.
`
`PO raises several irrelevant arguments about D&D animals, arguing “the
`
`familiar and the player character do not see the same things,” that they talk to each
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`other and other animals, and that the familiar is not as smart as the sorcerer. POR,
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`45. However, none of these distinctions are relevant to the claims. Dr. Claypool
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`admitted that he had not “connected that back to a claim requirement” or disclosed
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`“a requirement in the claim… that prevents” these situations. See Ex[1030], 146:2-
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`147:15, 175:25-176:11.
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`PO argues the druid’s commands for her animal companion “may be
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`unsuccessful.” POR, 46-47. But its expert admitted he had not “disclosed anything
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`in the ‘243 patent that prevents a pilot from controlling a unit using a percentage
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`likelihood of success.” Ex[1030], 144:12-17.
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`B. D&D and Levine Teaches Sync Points.
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`The combination teaches at least two sync points: the sorcerer familiar’s HP
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`and the druid animal companion’s bonus tricks.4 Changes in the sorcerer’s HP are
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`applied by a sync point ratio of 1/2 to the familiar’s HP. See Paper[1], 15. “When a
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`character advances… dice are rolled to increase the maximum hit point of a
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`character.” Ex[2031] 103:22-104:14. “[T]he amount that is rolled, which is the
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`amount to be added to the hit point value of the main character, 50 percent of that
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`amount based on the sync point, .5, is then added to the hit point maximum value
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`of the familiar.” Id. This “enables the sorcerer’s hit points and the familiar’s hit
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`point’s associated therewith to interoperate” (id., 104:18-105:2), as required by the
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`claims and described in the specification. See Ex[1001], 3:19-24.
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`PO does not dispute this. PO’s obviousness analysis does not mention the
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`construction adopted in the Institution Decision. POR, 50-66. Instead, PO and its
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`expert rely on PO’s new construction of “ability,” arguing HP is not an “innate”
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`ability or attribute. See Ex[1030], 61:25-62:8 (applying PO’s construction). PO’s
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`attempt to rewrite the claims through claim construction, using extrinsic evidence
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`mentioned nowhere in the patent, invites legal error and should be rejected (see
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`supra Section II(C)), leaving PO without any rebuttal to the sorcerer’s familiar as
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`4 The druid is explained infra Section III(B)(3).
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`teaching the sync point element.
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`1.
`
`PO’s Obviousness Analysis Is Improper.
`
`The POR never analyzes whether HP is an “ability” as used in the ’243
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`patent. Instead, PO’s entire argument against the sorcerer’s familiar is based on a
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`mistake: PO conflates the terminology of the patent with the prior art, arguing HP
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`is not an “ability” of the ’243 patent because it is not one of the six basic abilities
`
`defined in D&D. PO relies on its construction, which limits the ’243 patent to the
`
`six basic abilities of D&D—and only those six. See, e.g., POR, 30, 52; Ex[1030],
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`104:20-105:8 (emphasis added):
`
`Q And have you expressed an opinion in your declaration
`as to why hit points in Dungeons & Dragons do not meet
`the ability limitation of the ‘243 patent?
`
`A The abilities in the ‘243 patent are the same as those
`in Dungeons & Dragons, so they have the same role,
`same function in the game. So if Dungeons & Dragons -
`- the hit points in Dungeons & Dragons are not an
`ability. If you were to use the ‘243 patent and make a
`game, and that game had hit points as used in a role-
`playing game, they would not be abilities in the context
`of the ‘243 patent either.
`
`However, at his deposition Dr. Claypool conceded that “the features of the
`
`Dungeons & Dragons role-playing game, particularly for computer media… can
`
`be adapted. The… mechanic of having abilities in Dungeons & Dragons, these
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`innate features/characteristics of a character, can be adapted in a different role-
`
`playing game to suit the vision of the game designer, so they would not
`
`necessarily be limited to those six. They could expand them. They could remove
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`some. They can add some.” Ex[1030], 68:24-69:18 (emphasis added).
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`Regardless, PO’s entire argument is legally erroneous. Whether the prior art
`
`considers HP to be an “ability” under its lexicography is irrelevant to whether HP
`
`is an “ability” as used by the ’243 patent. The scope of a patent is defined by its
`
`claims, not by extrinsic glossaries. HP can be an “ability” of the ’243 patent
`
`regardless of whether it is defined as one of the basic abilities of D&D. If, as PO
`
`contends, the ’243 patent can be limited using the D&D glossary, then any accused
`
`product could avoid infringement by redefining patent claims using its own
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`glossary. World of Warcraft could rebut PO’s contention that “riding skill” is an
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`ability by defining “ability” in its glossary to exclude it.
`
`PO fails to analyze whether HP is an “ability” under the ’243 patent. When
`
`PO argues that HP is not an “ability,” it refers to the basic abilities of D&D,
`
`relying on ¶165 of Dr. Claypool’s declaration, which, as he testified at his
`
`deposition, analyzes whether HP is an ability in D&D—not the ’243 patent.
`
`Ex[1030], 72:12-22, 74:4-25, 77:2-13 (“So my description in 165 and everything
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`I've been talking about are talking about hit points in Dungeons & Dragons.”);
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`POR, 65-66.
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`Dr. Claypool’s obviousness analysis is replete with errors and contradicts
`
`basic principles of patent law. Aside from limiting “ability” to extrinsic definitions,
`
`he additionally limits the ’243 patent to its embodiments, concluding that HP is not
`
`an ability under the ’243 patent because the patent does not use the term HP.
`
`Ex[1030], 103:25-104:14 (objections omitted; emphasis added):
`
`Q And does paragraph 133 contain an opinion that hit
`points are not an “ability” as that term is used in the ‘243
`patent?
`
`THE WITNESS: The ‘243 patent doesn’t use the term
`“hit points.”
`
`Q And therefore hit points cannot be an “ability” as that
`term is used in the ‘243 patent?
`
`A Hit points are not a term used in the ‘243 patent, so
`therefore, you can’t add a term to it and say that’s
`what hit points are. I’m sorry. Then that’s -- therefore,
`you basically have added a term to the patent that’s not
`there.
`
`The ’243 patent states that its disclosed abilities are exemplary. Ex[1001], 6:1-3
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`(using “may”), 10:26-28(explaining “may include” is synonymous with “optional”
`
`as opposed to “required”).
`
`Lastly, PO argues that, if HP was an ability, its sync point would need to
`
`apply to other abilities such as the “familiar’s Intelligence ability.” POR, 53. This
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`misunderstands the obviousness ground, whereby the pilot and unit HP abilities are
`
`connected through a sync point ratio of 1/2. Paper[1], 15. This sync point does not
`
`connect intelligence and other abilities. Id.
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`2. HP Is an Ability Under all Constructions.
`
`An ability is “a numeric representation of an attribute.” Paper[14], 12. HP
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`satisfies this construction. Id., 24. PO did not address it.
`
`Even under PO’s construction, HP is an “innate” ability or attribute.5 PO
`
`admits that HP is a “measure of how much damage the character can take before
`
`falling unconscious or dying.” POR, 65; see Ex[1005], 139. Thus HP is the
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`“innate” ability to take damage. See Paper[14], 24; Paper[1], 2. PO states that HP
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`is “derived from ‘your class and level, and your Constitution modifier.’” POR, 65.
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`All of these are “innate” to a character.
`
`PO contends HP is not innate because it is derived from other characteristics.
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`POR, 65, 30. This argument is improper and contradicted by the evidence. See
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`supra Section II(C)(4). PO never explains where such a requirement appears in the
`
`’243 patent.
`
`3.
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`The Druid’s Animal Companion Has a Sync Point.
`
`Each time the druid gains one feat, her animal gains one bonus trick.
`
`5 Dr. Claypool admitted “an innate attribute in the context of the ‘243 patent [is
`
`not] limited to the six basic abilities of D&D.” Ex[1030], 68:24-69:18.
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`Paper[1], 15-18. Thus changes in the druid’s ability are applied at a 1:1 sync point
`
`ratio to the animal unit’s ability. Id. PO offers no rebuttal to Mr. Kitchen’s
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`testimony that a POSITA would have found it obvious to program this as a ratio
`
`formula in an online game.
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`Instead, PO argues that both abilities