Paper 65
`Trials@uspto.gov
`571-272-7822 Entered: September 7, 2018
`2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WARGAMING GROUP LIMITED and ACTIVISION BLIZZARD, INC.,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01082
`Patent 7,682,243 B2
`____________
`
`
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 7, 2018
`2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`WARGAMING GROUP LIMITED and ACTIVISION BLIZZARD, INC.,
`Petitioner,
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01082
`Patent 7,682,243 B2
`____________
`
`
`
`
`
`Before STACEY G. WHITE, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-01082
`Patent 7,682,243 B2
`
`
`I. INTRODUCTION
`
`In this inter partes review, Wargaming Group Limited
`
`(“Wargaming”) and Activision Blizzard, Inc. (“Activision”) (collectively,
`
`“Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent No.
`
`7,682,243 B2 (“the ’243 patent,” Ex. 1001), which is assigned to 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 Petitioner has proven by a preponderance of
`
`the evidence that claims 1–7 of the ’243 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 March 13, 2017, Wargaming filed a Petition (Paper 1 (“Pet.”))
`
`requesting inter partes review of claims 1–7 of the ’243 patent on two
`
`grounds of unpatentability based on the references below.
`
`Levine
`
`US 2003/0177187 A1 Sept. 18, 2003
`
`Ex. 1004
`
`DUNGEONS AND DRAGONS: PLAYER’S HANDBOOK: CORE
`RULEBOOK I V.3.5 (Julia Martin & John Rateliff eds.,
`2003) (“D&D Handbook”)
`
`Ex. 1005
`
`JOHN POSSIDENTE & DAVE ELLIS, MASTER OF ORION II:
`BATTLE AT ANTARES: THE OFFICIAL STRATEGY GUIDE
`(M. Scott Schrum ed., 1996) (“MOO Strategy Guide”)
`
`Ex. 1009
`
`
`
`2
`
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`IPR2017-01082
`Patent 7,682,243 B2
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`
`The grounds of unpatentability presented in the Petition are set forth
`
`in the table below.
`
`References
`
`Basis
`
`Claims Challenged
`
`Levine and D&D Handbook
`Levine and MOO Strategy Guide
`
`§ 103(a)
`§ 103(a)
`
`1–7
`1–7
`
`Patent Owner filed a Preliminary Response. Paper 8 (“Prelim.
`
`Resp.”). Petitioner filed a reply to the Preliminary Response. Paper 12; see
`
`Paper 11 (authorizing Petitioner to file reply limited to a particular issue).
`
`We instituted trial as to claims 1–7 on the ground of unpatentability
`
`based on Levine and D&D Handbook. Paper 14 (“Dec. on Inst.”), 36. We
`
`determined, however, that Wargaming had not established a reasonable
`
`likelihood of prevailing on the ground of unpatentability based on Levine
`
`and MOO Strategy Guide. Dec. on Inst. 35. Following the Supreme Court’s
`
`decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified
`
`the Decision on Institution to institute on all of the grounds presented in the
`
`Petition. Paper 47, 2.
`
`On May 22, 2018, the parties filed a Joint Motion to limit briefing and
`
`evidence as to the ground of unpatentability based on Levine and MOO
`
`Strategy Guide. Paper 52. Specifically, the parties requested that briefing
`
`and evidence on this ground be limited to what was submitted prior to the
`
`Decision on Institution. Id. at 2. We granted the parties’ Joint Motion, and
`
`we stated that “we do not deem the parties to have conceded patentability or
`
`unpatentability based on Ground 2 [(Levine and MOO Strategy Guide)] or to
`
`have waived any arguments based on that ground of unpatentability.”
`
`Paper 54, 3.
`
`
`
`3
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`IPR2017-01082
`Patent 7,682,243 B2
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`
`During the trial, the parties filed briefs addressing whether a real
`
`party-in-interest of Petitioner was served with a complaint alleging
`
`infringement of the ’243 patent more than one year before the Petition was
`
`filed. Paper 24, 25, and 28. Patent Owner also filed a Response (Paper 39,1
`
`“PO Resp.”), and Petitioner filed a Reply (Paper 53, “Pet. Reply”).
`
`Wargaming also filed a Motion to Exclude Exhibit 2027 (Paper 30), to
`
`which Patent Owner filed an opposition (Paper 31) and in support of which
`
`Wargaming filed a reply (Paper 32).
`
`Following institution, Activision filed a petition for inter partes
`
`review of claims 1–7 of the ’243 patent and a motion for joinder.
`
`IPR2018-00157, Papers 1 and 3. We granted Activision’s motion for joinder
`
`and joined Activision as a party, on the petitioner side, to this inter partes
`
`review. Paper 46, 19.
`
`An oral hearing was held on July 10, 2018, a transcript of which
`
`appears in the record. Paper 64 (“Tr.”).
`
`B. Real Parties in Interest
`
`Wargaming identifies Wargaming Group Limited (formerly
`
`Wargaming Public Company Limited) and Wargaming.net LLP as real
`
`parties-in-interest. Pet. 72.
`
`Activision identifies the following real parties-in-interest: Activision
`
`Blizzard, Inc.; Blizzard Entertainment, Inc., Activision Publishing, Inc., and
`
`Activision Entertainment Holdings, Inc. IPR2018-00157, Paper 1, 1.
`
`
`1 Paper 39 is a corrected Response that Patent Owner filed to address a
`clerical error that occurred in the filing of Paper 36. Petitioner did not
`oppose the submission of Paper 39, and we authorized Patent Owner’s filing
`of Paper 39.
`
`
`
`4
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`Patent 7,682,243 B2
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`
`C. Related Matters
`
`Petitioner and Patent Owner cite the following judicial matters
`
`involving the ’243 patent: Game and Technology Co. Ltd v. Wargaming.net
`
`LLP, 2:16-cv-06554 (C.D. Cal.) and Game and Technology Co. Ltd v.
`
`Blizzard Entertainment, Inc., 2:16-cv-06499 (C.D. Cal.). Pet. 72; Paper 3.
`
`In addition, the Board previously denied a petition for inter partes review of
`
`the ’243 patent filed by Activision. Activision Blizzard, Inc. v. Game and
`
`Tech. Co., Case IPR2016-01918, slip op. at 18 (PTAB Mar. 21, 2017)
`
`(Paper 14).
`
`D. The ’243 Patent and Illustrative Claim
`
`The ’243 patent generally relates to “providing an online game, in
`
`which ability information of a unit associated with a pilot is enabled to
`
`change as ability information of the pilot changes.” Ex. 1001, 1:23–25. The
`
`’243 patent explains that a “pilot” in a game may have associated with it
`
`certain “ability information,” such as brave point, react point, faith point,
`
`capacity point, and mentality point. Ex. 1001, 6:1–4, Fig. 5. These pilot
`
`abilities may be linked to certain abilities of a unit.
`
`Information on the brave point (Bp) records the braveness of a
`pilot in a numerical value, and is associated with information on
`the attack power (ATP) 305 of a unit. Information on the react
`point (Rp) records agility or reaction of a pilot in a numerical
`value, and is associated with information on the evasion power
`(EVP) 306 of a unit. Information on the faith point (Fp) records
`faith about the pilot itself in a numerical value, and is associated
`with the defense power (DEF) 307 of a unit. Information on the
`capacity point (Cp) records potential capacity of a pilot in a
`numerical value, and may not be associated with any ability
`information of a unit. Information on the mentality point (Mp)
`records a mental ability of a pilot in a numerical value, and is
`associated with information on the hit power (HTP) 308 of a unit.
`
`
`
`5
`
`
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`IPR2017-01082
`Patent 7,682,243 B2
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`Ex. 1001, 6:4–18.
`
`The ’243 patent describes the use of a “sync point” to update unit
`
`ability information as pilot ability information changes. Ex. 1001, 5:7–11,
`
`7:41–8:19. The specification of the ’243 patent explains that “[t]he sync
`
`point 304 is information indicating a numeric relationship between a unit
`
`and its associated pilot, that is, information indicating a ratio or proportion
`
`of which changes in pilot ability information are applied to unit ability
`
`information.” Ex. 1001, 5:7–11. The ’243 patent provides an example
`
`showing how the sync point is used to update a unit’s attack power ability
`
`information when a pilot’s brave point ability information changes.
`
`Ex. 1001, 7:51–8:19. In this example, the value of the pilot’s “brave point”
`
`increases from 80 to 90, resulting in an increase of 10. Ex. 1001, 8:1–5.
`
`This increase (10) is multiplied by 0.8, which is the sync point in the
`
`example, to arrive at 8, which is the proportional increase by which the
`
`attack power of the unit is changed. Ex. 1001, 7:60–8:15. In the example,
`
`the previous attack power of the unit was 70, so the new attack power is
`
`calculated by adding the proportional increase of 8 to the previous value 70
`
`to arrive at 78. Ex. 1001, 8:15–19.
`
`Of the challenged claims, claims 1, 6, and 7 are independent. Claim 1
`
`is illustrative and is reproduced below:
`
`An online game providing method for providing a pilot
`1.
`and a unit associated with the pilot at an online game, the method
`comprising the steps of:
`controlling an online game such that a player can
`manipulate a pilot and a unit associated with said pilot, said pilot
`being a game character operated by a player, said pilot
`representing the player, said unit being a virtual object controlled
`by the player;
`
`
`
`6
`
`
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`IPR2017-01082
`Patent 7,682,243 B2
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`
`the unit
`information database,
`maintaining a unit
`information database recording unit information on said unit, in
`which the unit information includes ability of said unit and sync
`point information;
`maintaining a pilot information database, the pilot
`information database recording pilot information on said pilot, in
`which the pilot information includes a unit identifier indicating
`said unit associated with said pilot, ability of said pilot and the
`ability of said unit associated with said pilot;
`receiving a request for update on first pilot ability
`information of a first pilot;
`searching for unit identifier information associated with
`the first pilot by referring to the pilot information database;
`searching for sync point information associated with the
`searched unit identifier information by referring to the unit
`information database; and
`updating and recording the first pilot ability information
`and unit ability information associated therewith in accordance
`with the searched sync point information such that said ability of
`unit is changed proportionally to changes in ability of the pilot
`by referring to said sync point,
`wherein said sync point information is a ratio of which
`changes in said ability of pilot are applied to said ability of unit,
`and said steps of searching for unit identifier information and of
`searching for sync point information are performed by a
`processor.
`
`
`
`II. ANALYSIS
`
`A. 35 U.S.C. § 315(b)
`
`1. Background
`
`Under 35 U.S.C. § 315(b), “[a]n inter partes review may not be
`
`instituted if the petition requesting the proceeding is filed more than 1 year
`
`after the date on which the petitioner, real party in interest, or privy of the
`
`petitioner is served with a complaint alleging infringement of the patent.”
`
`The Petition states that “Petitioner and real-parties-in-interest are not barred
`
`
`
`7
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`IPR2017-01082
`Patent 7,682,243 B2
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`or estopped from requesting inter partes review of any claim of the ’243
`
`Patent on the grounds set forth herein because they have not been served.”
`
`Pet. 72–73. In support, Petitioner cites a declaration of its general counsel,
`
`Roman Zanin, who provides testimony regarding attempted service on
`
`Wargaming entities abroad (Ex. 1011 ¶ 3) and further testifies that
`
`“Wargaming.net LLP and Wargaming Group Limited . . . were never
`
`served” (Ex. 1011 ¶ 6).
`
`In its Preliminary Response, Patent Owner argued that the Petition,
`
`which was filed March 13, 2017, is time barred under 35 U.S.C. § 315(b)
`
`because Wargaming.net LLP, a real party-in-interest to Petitioner, “was
`
`served with a complaint alleging infringement of the ‘243 patent on
`
`December 14, 2015, in accordance with the laws of England and Wales”
`
`pursuant to the Hague Convention. Prelim. Resp. 4 (citing Exs. 2001 and
`
`20022). In support, Patent Owner cites a “Witness Statement of Service”
`
`signed by John Frederick Talbot stating that a complaint for infringement of
`
`the ’243 patent was served on Wargaming.net LLP and that the “deemed
`
`date of service” under English court rules is December 14, 2015. Ex. 2002;
`
`see also Ex. 2002 (Supplemental), 1.
`
`On August 11, 2017, a conference call was held with the Board and
`
`counsel for the parties to discuss Petitioner’s request to file a reply limited to
`
`addressing Patent Owner’s assertion that Wargaming.net LLP was served
`
`with a complaint for infringement of the ’243 patent more than one year
`
`
`2 Patent Owner filed Exhibits 2001 and 2002 with its Preliminary Response.
`On July 19, 2017, Patent Owner filed supplemental exhibits 2001 and 2002,
`which purport to include the attachments referred to in the originally-filed
`exhibits. See Paper 9, Ex. 2001 (Supplemental), Ex. 2002 (Supplemental).
`
`
`
`8
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`IPR2017-01082
`Patent 7,682,243 B2
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`before the filing of the Petition in this proceeding. We authorized Petitioner
`
`to file a reply to provide more information on this issue. See Paper 11.
`
`Petitioner, in its reply to the Preliminary Response, “denies that
`
`Wargaming.net LLP was served in the manner described by Mr. Talbot,”
`
`and it submits a declaration of Mr. Costas A. Joannou (Ex. 1017), the
`
`individual upon whom Patent Owner alleges service of the complaint was
`
`made. Paper 12, 1. Mr. Joannou states that he is the vice chairman of
`
`Wargaming.net LLP’s former accounting and auditing firm. Ex. 1017 ¶ 2.
`
`Mr. Joannou testifies that he “reviewed Supplemental Exhibits 2001 and
`
`2002 from Game and Technology” and that he “cannot recollect ever
`
`meeting Mr[.] John Talbot, confirming anything to Mr[.] Talbot, or
`
`receiving any documents from Mr[.] Talbot.” Ex. 1017 ¶¶ 3–4. Mr.
`
`Joannou further testifies that his diary entry from December 10, 2015,
`
`“shows that most likely I wasn’t in the office during the time Mr[.] Talbot
`
`says that he ‘left’ the documents with me.” Ex. 1017 ¶ 5 (citing Ex. C). Mr.
`
`Joannou also testifies as to his firm’s “long-established practice” for
`
`handling any documents received on behalf of Wargaming.net LLP or any
`
`other client, stating that he “would have immediately arranged to forward
`
`those letters via courier service to the client as this is the standard practice in
`
`our firm.” Ex. 1017 ¶ 6. Mr. Joannou provides an activity log for
`
`Wargaming.net LLP as Exhibit B to his declaration and notes that there are
`
`no courier fees after October 5, 2015 for Wargaming.net LLP. Ex. 1017 ¶ 7.
`
`In the Decision on Institution, we stated:
`
`The current record presents competing evidence as to
`whether Wargaming.net LLP was served more than one year
`before the filing of the Petition. We determine that this record
`needs to be developed further before a determination can be
`
`
`
`9
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`IPR2017-01082
`Patent 7,682,243 B2
`
`
`made as to this issue. Thus, on this record, we do not deny
`institution of the Petition as time barred under 35 U.S.C.
`§ 315(b). We reserve our determination on this issue pending
`further development of the record during trial.
`
`Dec. on Inst. 7.
`
`In an Order setting the schedule for this proceeding, we set several
`
`early deadlines for discovery and briefing on the issue of whether
`
`Wargaming.net LLP was served with a complaint more than one year before
`
`the Petition was filed. Paper 16, 4. The parties agreed to conduct
`
`depositions of Messrs. Joannou and Talbot in London on November 2, 2017.
`
`Id. at 3–4; Ex. 3001. Petitioner took the deposition of Mr. Talbot on
`
`November 2, 2017, and Petitioner entered the transcript in the record as
`
`Exhibit 1025. Patent Owner did not take the deposition of Mr. Joannou. See
`
`Paper 21 (Patent Owner’s Notice of Withdrawal of Deposition of Costas A.
`
`Joannou).
`
`As noted above, the parties filed briefs addressing whether a real
`
`party-in-interest of Petitioner was served with a complaint alleging
`
`infringement of the ’243 patent more than one year before the Petition was
`
`filed. Paper 24, 25, and 28. On December 29, 2017, we denied without
`
`prejudice Patent Owner’s request to dismiss the Petitioner as time-barred
`
`under 35 U.S.C. § 315(b), noting that “the evidence before us is not
`
`conclusive as to whether a proper summons was included in the papers that
`
`purportedly were delivered to Wargaming.net LLP.” Paper 33, 2. Patent
`
`Owner further briefed the issue in its Response, and Petitioner briefed it in
`
`the Reply. PO Resp. 1–12; Pet. Reply 25–27.
`
`With this background, we turn to the merits of the issue.
`
`
`
`10
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`2. Discussion
`
`Petitioner maintains that Wargaming.net LLP was not properly served
`
`with a complaint alleging infringement of the ’243 patent. Paper 24, 3–10;
`
`Pet. Reply 25–27. Patent Owner argues service occurred in the following
`
`two ways: (1) personal service on Mr. Joannou as the registered agent of
`
`Wargaming.net LLP in the UK (Paper 25, 1–7), and (2) service by mail to
`
`Wargaming in Cyprus (id. at 7–9). We address each of these below.
`
`a. Alleged personal service on Mr. Joannou
`
`As an initial matter, there is conflicting evidence as to whether any
`
`documents at all were delivered by Mr. Talbot to Mr. Joannou. Mr. Talbot
`
`testified in his deposition that he served documents on Mr. Joannou.
`
`Ex. 1025, 73:3–23. Mr. Talbot testified that the first page of Exhibit 2002
`
`(Supplemental) is his “proof of service,” which he signed on December 13,
`
`2015. Ex. 1025, 22:25–23:15, 25:24–26:3; Ex. 2002 (Supplemental)
`
`(“Witness Statement of Service”). The date of alleged service was
`
`December 10, 2015, according to Mr. Talbot’s proof of service. Ex. 2002
`
`(Supplemental), 1.
`
`Mr. Joannou testifies that he “cannot recollect receiving any copies of
`
`any of the materials referred to in Exhibits 2001 or 2002” and “cannot
`
`recollect ever meeting Mr[.] John Talbot, confirming anything to Mr[.]
`
`Talbot, or receiving any documents from Mr[.] Talbot.” Ex. 1017 ¶ 4. Mr.
`
`Joannou also provides testimony further explaining his whereabouts on
`
`December 10, 2015, when service was alleged to have been made. Ex. 1017
`
`¶ 5. Mr. Joannou’s testimony, however, was provided on August 7, 2017,
`
`according to the signature on Exhibit 1017. This is more than one and a half
`
`years after the alleged service took place.
`
`
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`11
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`On one hand, therefore, we have Mr. Talbot’s Witness Statement of
`
`Service, which was signed only three days after the alleged service took
`
`place on December 10, 2015, and testimony from Mr. Talbot confirming that
`
`the first page of Exhibit 2002 (Supplemental) is his “proof of service.” On
`
`the other hand, we have testimony from a witness more than one and a half
`
`years after the alleged service stating that he does not recall having received
`
`documents from Mr. Talbot. We do not find either Mr. Talbot’s or
`
`Mr. Joannou’s testimony to lack credibility, but Mr. Joannou’s testimony is
`
`inconclusive at best. Based on our review of the evidence, we credit
`
`Mr. Talbot’s testimony that he delivered some documentation to
`
`Mr. Joannou. For the reasons explained below, however, we find that
`
`service was not effected in accordance with the Federal Rules of Civil
`
`Procedure.
`
`Federal Rule of Civil Procedure 4(c)(1) provides that “[a] summons
`
`must be served with a copy of the complaint.” Federal Rule of Civil
`
`Procedure 4(a)(1) provides that “[a] summons must . . . (F) be signed by the
`
`clerk; and (G) bear the court’s seal.” Included within Exhibit 2002
`
`(Supplemental) is a summons signed by the clerk for the United States
`
`District Court for the Eastern District of Texas and bearing that Court’s seal,
`
`but there appears to be no dispute that this signed and sealed summons was
`
`not part of the documentation delivered by Mr. Talbot to Mr. Joannou.
`
`Mr. Joseph Zito, one of the Patent Owner’s counsel in this proceeding
`
`(see Paper 59), executed a declaration stating the following:
`
`I am an attorney at DNL Zito in Washington, D.C., and am
`lead counsel for Game and Technology Co., Ltd. in the litigation
`GAME AND TECHNOLOGY CO., LTD., v. WARGAMING
`
`
`
`12
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`GROUP LIMITED, 2:16-cv-06554 BRO (SKx) in the U.S.
`District Court for the Central District of California.
`
`GAT Exh 2019 is a true copy of a letter and attachments
`that Legal Language Services sent to me in January 2016
`regarding the service of Wargaming Group Limited (previously
`named Wargaming.net.LLP) in the U.K..
`
`I recently obtained the original documents from storage. I
`then filed a copy of the documents with the U.S. District Court
`for the Central District of California on November 10, 2017, and
`served these documents on counsel for Wargaming on November
`10, 2017. GAT Exh 2020 is a copy the documents that were filed
`and served.
`
`Ex. 2021 ¶¶ 1–3. Each of Exhibits 2019 and 2020 includes two copies of an
`
`unsigned and unsealed summons, but nowhere within these exhibits is a
`
`signed and sealed summons. Ex. 2019, 7–8, 21–22; Ex. 2020, 10–11,
`
`24–25. Patent Owner’s evidence, therefore, shows that a proper summons
`
`was not delivered to Mr. Joannou.
`
`Patent Owner acknowledges as much and argues that a “mere
`
`procedural printing error that caused the seal and signature to be missing
`
`from the copy of the summons properly served by Mr. Talbot does not
`
`render the service ineffective.” PO Resp. 7; Paper 25, 7. We disagree
`
`because, under the Federal Rules of Civil Procedure, a signed and sealed
`
`summons must be served with the complaint to effect service.
`
`Fed. R. Civ. P. 4. Patent Owner also cites various cases and authorities
`
`supporting the proposition that a Court may overlook defects in service. See
`
`PO Resp. 5–7; Paper 25, 5–7. We, however, have no authority to overlook
`
`defects in service of a complaint in district court litigation and deem service
`
`to have occurred. Furthermore, the parties confirmed during oral argument
`
`
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`13
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`that no district court has deemed service to have occurred. Tr. 14:8–12,
`
`34:15–25.
`
`Based on the foregoing, we determine that the delivery of documents
`
`to Mr. Joannou did not effect service on Wargaming.net LLP because the
`
`documents did not include a signed and sealed summons as required under
`
`Federal Rule of Civil Procedure 4.
`
`b. Alleged service by mail in Cyrpus
`
`Patent Owner further argues that it properly served by mail a
`
`complaint alleging infringement of the ’243 patent on Wargaming Group
`
`Limited in Cyprus. PO Resp. 7–10; Paper 25, 7–9. As evidence of service,
`
`Patent Owner proffers Mr. Zito’s testimony that he “mailed the same
`
`documents as GAT Exh 2022, GAT Exh 2026 and Complaint to Wargaming
`
`Group Limited in Cyprus in December 2015.” Ex. 2027 ¶ 2. Exhibit 2026
`
`is a signed and sealed summons directed to Wargaming Public Company
`
`Limited. Patent Owner argues that service by mail to an entity in Cyprus is
`
`permitted under the Hague Convention and that “the mailing of a summons
`
`and complaint to Wargaming Public Company Limited is effective service
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`on newly named Wargaming Group Limited.” PO Resp. 8–9; Paper 25, 8.
`
`In Water Splash, Inc. v. Menon, the Supreme Court held that, “in
`
`cases governed by the Hague Service Convention, service by mail is
`
`permissible if two conditions are met: first, the receiving state has not
`
`objected to service by mail; and second, service by mail is authorized under
`
`otherwise-applicable law.” 137 S. Ct. 1504, 1513 (2017). Considering the
`
`second prong first, Patent Owner argues that Federal Rule of Civil Procedure
`
`4(c) permits service by “[a]ny person who is 18 years old and not a party.”
`
`PO Resp. 9. Patent Owner contends, therefore, that Mr. Zito’s mailing of
`
`
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`14
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`IPR2017-01082
`Patent 7,682,243 B2
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`the complaint was authorized by law because he “is the plaintiff’s attorney
`
`and is not a party to the litigation.” PO Resp. 9. This provision of Federal
`
`Rule of Civil Procedure 4(c), however, does not speak to the manner of
`
`service, and it does not authorize service by mail. Another provision of the
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`Federal Rules of Civil Procedure does authorize service of a defendant by
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`mail in a foreign country “using any form of mail that the clerk addresses
`
`and sends to the individual and that requires a signed receipt.” FED. R. CIV.
`
`PROC. 4(f)(2)(C)(ii). Mr. Zito testifies, however, that he mailed the
`
`documents to Wargaming Group Limited in Cyprus. Ex. 2027 ¶ 2. Thus,
`
`the requirement that the clerk address and send the summons and complaint
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`was not satisfied by Mr. Zito’s mailing of documents. As Petitioner points
`
`out, there also is no evidence that Mr. Zito used a form of mail that requires
`
`a signed receipt. Pet. Reply 27; Paper 28, 2–3.
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`Based on the foregoing, we determine that Mr. Zito’s mailing of
`
`documents to Wargaming Group Limited in Cyprus did not effect service of
`
`a complaint alleging infringement of the ’243 patent.
`
`c. Other considerations
`
`On November 10, 2017, Patent Owner filed in the United States
`
`District Court for the Central District of California a “Notice of Service,”
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`which is signed by Joseph Zito. Ex. 2020. This Notice describes a call
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`made by counsel for Wargaming to counsel for Game and Technology on
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`February 11, 2016, and states that Wargaming’s counsel “confirmed service
`
`[of] their client in the UK and in Cypr[us] (although the Cypr[us] service
`
`was informal) and stated that Wargaming would not be challenging service.”
`
`Ex. 2020, 2. This statement, however, conflicts with a contemporaneous
`
`email dated February 11, 2016, from counsel for Wargaming to counsel for
`
`
`
`15
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`IPR2017-01082
`Patent 7,682,243 B2
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`Game and Technology stating, “we still do not believe that service was
`
`properly effected on either Wargaming entity.” Ex. 1027.
`
`The Notice of Service also says that a status conference was held on
`
`March 15, 2016,3 and that “Wargaming’s counsel made an appearance on
`
`behalf of Defendant” but “did not raise any issue of improper service.”
`
`Ex. 2020, 2. Wargaming filed a Motion to Dismiss for Improper Venue on
`
`April 1, 2016. Ex. 2020, 2. Both of these dates are within one year of the
`
`March 13, 2017, filing date of the Petition and, therefore, would not bar
`
`institution of the proceeding. See Paper 7 (according a filing date of March
`
`13, 2017).
`
`3. Conclusion
`
`Because neither Wargaming nor Wargaming.net LLP was served with
`
`a complaint alleging infringement of the ’243 patent more than one year
`
`before Wargaming filed the Petition, 35 U.S.C. § 315(b) does not bar
`
`institution of this inter partes review.
`
`B. Level of Ordinary Skill in the Art
`
`Citing the testimony of its declarant, Mr. Garry Kitchen, Petitioner
`
`argues:
`
`A person of ordinary skill in the art (“POSITA”) would
`have had (1) at least a four-year Bachelor of Science degree in
`computer science or a commensurate degree OR at least 5 years
`of professional experience as a video game designer/developer;
`and (2) a working understanding of computer programming and
`the videogame industry.
`
`Pet. 8 (citing Ex. 1003 ¶ 74). Patent Owner contends that “[t]he skilled
`
`artisan at the time of the invention would have had (1) a Bachelor of Science
`
`
`3 Although the Notice of Service states that the status conference occurred
`on March 15, 2017, we understand that it occurred in 2016.
`
`
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`16
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`Patent 7,682,243 B2
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`degree in computer science or commensurate degree or five years of
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`professional experience in the field of computer game development, and
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`(2) significant familiarity with role playing game mechanics.” PO Resp. 16.
`
`Neither party explains in detail why its proposed level of ordinary
`
`skill in the art should be adopted nor how the different levels affect the
`
`parties’ analyses. The parties’ assertions as to education level and
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`experience in lieu of education are very similar. Petitioner points out that
`
`the ’243 patent is not limited to role playing games and disputes Patent
`
`Owner’s asserted level of ordinary skill in that regard. Pet. Reply 2 (citing
`
`Ex. 1001, 1:17–22, 3:37–40). We agree with Petitioner on this point
`
`because the ’243 patent states that “it will be apparent to those of ordinary
`
`skills in the related art that the technical spirits of the present invention may
`
`be applied to not only an online RPG but also an online racing game in
`
`which a game makes progress through two and more player characters.”
`
`Ex. 1001, 3:35–40. As such, we determine that a person of ordinary skill in
`
`the art need not have significant familiarity with role playing game
`
`mechanics. Rather, we are persuaded by Petitioner’s contention that a
`
`person of ordinary skill in the art would have had “a working understanding
`
`of computer programming and the videogame industry.” Pet. 8 (citing Ex.
`
`1003 ¶ 74).
`
`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 the skill level of a person of ordinary skill in the art would
`
`have been that of a person having: (1) a four-year Bachelor of Science
`
`degree in computer science or a commensurate degree or five years of
`
`professional experience as a video game designer/developer; and (2) a
`
`
`
`17
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`Patent 7,682,243 B2
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`working understanding of computer programming and the videogame
`
`industry. Ex. 1003 ¶ 74. We note, however, that our conclusions would not
`
`differ regardless of which party’s proposed level of ordinary skill we
`
`adopted.
`
`C. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which 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
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`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.
`
`8–17. Based on the parties’ arguments during the trial, we provide the
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`following analysis with respect to the broadest reasonable interpretations of
`
`several claim terms.
`
`1. “Unit”
`
`With respect to the term “unit,” each independent claim recites “said
`
`unit being a virtual object controlled by the player.” In a section entitled
`
`“Explanation of Terms used in the Present Specification,” the ’243 patent
`
`states:
`
`
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`18
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`IPR2017-01082
`Patent 7,682,243 B2
`
`
`A unit used in the present specification is an object
`operated by a control of a gamer, and the unit may be an object
`for continuing a game substantially, for example, a robot
`character. The unit may be a target for the gamer to import
`his/her feelings. Also, a concept of item belonging to the gamer
`may be applied to the unit.
`
`Ex. 1001, 3:12–18.
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`Based on the claim language and the disclosure of the ’243 patent, we
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`agreed with Petitioner that the term “unit” encompasses “an object operated
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`by control of a gamer,” noting also that it must be a virtual object, as
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`expressly recited in the claims. Dec. on Inst. 11.
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`In its Response, Patent Owner contends that this interpretation “is
`
`taken out of proper context of the ‘243 Patent” and “is broad enough to read
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`on almost any object in the game, regardless of whether such object is being
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`‘piloted’ or steered by a pilot.”
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