UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`ACTIVISION BLIZZARD, INC.
`Petitioner
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
`
`Case IPR2018-00157
`Patent 7,682,243
`
`_____________
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`
`
`As permitted under 37 C.F.R. § 42.107, Game and Technology Co., Ltd.
`
`
`
`(“Patent Owner”) timely submits this Preliminary Response to Petition Under 37
`
`C.F.R. § 42.107 (“Preliminary Response”). This Preliminary Response sets forth
`
`the reasons why the Petition for Inter Partes Review of U.S. Patent No. 7,682,243
`
`(“Petition”) should be denied and dismissed by the Patent Trial and Appeal Board
`
`(“Board”).
`
`
`
`
`
`
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`ACTIVISION BLIZZARD, INC.
`Petitioner
`
`v.
`
`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
`
`Case IPR2018-00157
`Patent 7,682,243
`
`_____________
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`
`
`As permitted under 37 C.F.R. § 42.107, Game and Technology Co., Ltd.
`
`
`
`(“Patent Owner”) timely submits this Preliminary Response to Petition Under 37
`
`C.F.R. § 42.107 (“Preliminary Response”). This Preliminary Response sets forth
`
`the reasons why the Petition for Inter Partes Review of U.S. Patent No. 7,682,243
`
`(“Petition”) should be denied and dismissed by the Patent Trial and Appeal Board
`
`(“Board”).
`
`
`
`
`
`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`I.
`
`INTRODUCTION
`
`For the reasons discussed below, Patent Owner, Game and Technology Co.,
`
`Ltd. (“GAT”), respectfully requests the Board to exercise its discretion to deny
`
`institution and dismiss the Petition because the Petition fails to demonstrate a
`
`reasonable likelihood that claims 1- 7 of the ‘243 Patent are unpatentable.
`
`II.
`
`JOINDER
`
`In the Motion for Joinder, Petitioner (Activision Blizzard) concedes that,
`
`when the Wargaming IPR was filed on March 13, 2017, “Petitioner was time-
`
`barred from filing any additional IPR petitions.” Motion for Joinder (Paper 3 at
`
`14). Absent joinder, this Petition should be denied as barred under 35 U.S.C. §
`
`315(b) and 37 C.F.R. § 42.101(b).
`
`GAT provides the following status updated regarding copending IPR2017-
`
`01082. Patent Owner filed a Response to Petitioner’s Motion for Joinder (Paper 9)
`
`on December 6, 2017, before Patent Owner’s discovery period had closed in
`
`copending IPR2017-01082. The Patent Owner’s discovery period in copending
`
`IPR2017-01082 has closed and Wargaming’s expert has already been deposed.
`
`II. NVIDIA FACTORS
`
`Absent joinder, the Board should use its discretion to deny institution
`
`because all the NVIDIA factors weigh against institution of the instant Petition for
`
`Inter Partes Review (IPR) filed by the same party, Activision Blizzard.
`
`
`
`1
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`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`Petitioner asserts that the NVIDIA follow-on factors weigh in favor of
`
`joinder:
`
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`
`2. whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it;
`
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s
`preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the
`first petition;
`
`4. the length of time that elapsed between the time the
`petitioner learned of the prior art asserted in the second
`petition and the filing of the second petition;
`
`5. whether the petitioner provides adequate explanation
`for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent;
`
`6. the finite resources of the Board; and
`
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue
`a final determination not later than 1 year after the date
`on which the Director notices institution of review.
`
`Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper
`
`19 at 6-7. However, the factors considered in determining whether to institute
`
`petitions of follow-on petitioners (“NVIDIA Factors”) weigh against institution.
`
`
`
`2
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`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
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`A. Petitioner Previously Filed a Petition Directed to the Same Claims of
`the Same Patent
`
`In General Plastic Industrial, the Board “noted that the same claims of the
`
`same patent were at issue in the follow-on petitions as in the first-filed petitions,
`
`where institutions were denied.” Gen. Plastic, Paper 19 at 10. In the instant case,
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`Petitioner previously filed the First Activision Blizzard IPR on the same claims of
`
`the ‘243 patent. See Motion for Joinder at 13 (citing Activision Blizzard, Inc. v.
`
`Game and Technology Co., Ltd, IPR2016-01918, Paper 1 (Sep. 30, 2016)). This
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`earlier petition was denied. Activision Blizzard, Inc. IPR2016-01918, Paper 14 at
`
`2.
`
`B. At the Time of Filing of the First Petition, Petitioner Should Have
`Known of the Prior Art Asserted in the Second Petition
`
`Petitioner alleges unawareness of the prior art—Levine and Dungeons and
`
`Dragons—in the Wargaming IPR, despite (1) Petitioner’s assertion of “Dungeons
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`& Dragons Player’s Handbook Core Rulebook I” (“Dungeons & Dragons”) on
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`June 10, 2016, as shown in the Defendants’ Joint Invalidity Contentions served in
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`Civil Action No.: 2:15-cv-01257-RWS-RSP (Ex[2001] at 24 & 27-34), and (2) a
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`skilled searcher conducting a diligent prior art search (Motion for Joinder at 13).
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`However, in the Petition for Inter Partes Review of this Second Activision
`
`Blizzard IPR, Petitioner asserts “Dungeons and Dragons created the RPG genre
`
`and has been hugely influential.” IPR2018-00193, Paper 8 at 5 (emphasis added).
`
`
`
`3
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`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
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`As a result, Petitioner’s position is, at best, internally inconsistent with its
`
`former actions, and it is unclear why a skilled searcher would have been unable to
`
`have located Dungeons & Dragons. Equally unclear is the absence of Levine, a
`
`published U.S. patent application (U.S. Pub. 2003/0177187), which should have
`
`been located upon diligent search.
`
`C. At the Time of Filing, Petitioner Had Knowledge of Patent Owner's
`Preliminary Response to the First Petition and the Board’s Decision
`on Whether to Institute Review in the First Petition
`
`GAT filed its Preliminary Response in the First Activision Blizzard IPR on
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`January 9, 2017, and the Board denied institution on March 21, 2017. IPR2016-
`
`01918, Papers 11, 14. Petitioner filed the instant Petition for Inter Partes Review
`
`on November 6, 2017. As such, Petitioner’s knowledge of the Preliminary
`
`Response and the Board’s Decision in this third factor weighs against joinder in
`
`this subsequent Petition.
`
`D. Eight Months Elapsed Between the Time the Petitioner Learned of
`the Prior Art Asserted in the Second Petition and the Filing of the
`Second Petition
`
`Petitioner acknowledges delay of approximately eight months after learning
`
`of Levine and Dungeons & Dragons before filing the subsequent Petition for Inter
`
`Partes Review. Motion for Joinder at 14.
`
`
`
`4
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`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`E. Petitioner Provides No Adequate Explanation for the Time Elapsed
`Between the Filings of Multiple Petitions
`
`Petitioner states that the Petition for Inter Partes Review in the Second
`
`Blizzard IPR was timely filed. See Motion for Joinder at 14. Notably, however,
`
`Petitioner waited until the last possible day to file such Petition. The Wargaming
`
`IPR petition was filed on March 13, 2017, and Petitioner could have filed anytime
`
`between then and November 6, 2017, yet only acted on the final day.
`
`F. Petition Should be Denied to Conserve the Resources of the Board
`
`Petitioner concedes the Petition is time-barred under 35 U.S.C. § 315(b).
`
`See Motion for Joinder at 14; § III.E, infra. Allowing Petitioner to join the
`
`Wargaming IPR can only demand further time and energy from the Board.
`
`G. Institution Will Endanger Compliance with the Requirement Under
`35 U.S.C. § 316(A)(11) to Issue a Final Determination Not Later
`Than 1 Year After the Date on Which the Director Notices Institution
`of Review
`
`As discussed in Patent Owner’s Opposition to the Motion for Joinder (Paper
`
`9), granting Petitioner’s motion for joinder (Paper 3) and allowing Petitioner to
`
`utilize an independent expert will lead to an extension of Patent Owner’s discovery
`
`period, thereby impacting the Board’s ability to satisfy the statutory requirements.
`
`III. ABILITY
`
`Although Patent Owner does not provide herewith extensive arguments
`
`regarding the merits of this Petition in view of the procedural issues discussed
`
`above and in the Opposition to the Motion for Joinder (Paper 9), Patent Owner
`
`
`
`5
`
`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`provides the following arguments that demonstrate how the Petition fails to
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`demonstrate a reasonable likelihood that claims 1- 7 of the ‘243 Patent are
`
`unpatentable. In particular, asserted combination of Levine and Dungeons &
`
`Dragons does not disclose or suggest all of the limitations of claims 1-7 at least
`
`because the combination cannot meet the limitations of independent claims 1, 6,
`
`and 7:
`
`(1) “said ability of unit is changed proportionally to changes in ability of the
`
`pilot by referring to said sync point,” and
`
`(2) the “sync point information is a ratio of which changes in said ability of
`
`pilot are applied to said ability of unit.”
`
`A. Construction of “ability”
`
`The Petitioner asserts that “ability” means “a numeric representation of an
`
`attribute.” Petition (Paper 1) at 14. The Petitioner’s proposed construction of
`
`“ability” as encompassing any attribute is overly broad because the Petitioner’s
`
`proposed construction is taken out of proper context of the ‘243 Patent and is
`
`divorced from what would have been understood by the skilled artisan in the art in
`
`light of the ‘243 Patent.
`
`Petitioner asserts “Dungeons and Dragons created the RPG genre and has
`
`been hugely influential.” IPR2018-00193, Paper 8 at 5 (emphasis added). In
`
`Dungeons & Dragons, “ability” is a term of art having particular meaning. “Your
`
`
`
`6
`
`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`character has six abilities: Strength (abbreviated Str), Dexterity (Dex), Constitution
`
`(Con), Intelligence (Int), Wisdom (Wis), and Charisma (Cha). Each of your
`
`character’s above-average abilities gives you a benefit on certain die rolls, and
`
`each below-average ability gives you a disadvantage on other die rolls. When
`
`creating your character, you roll your scores randomly, assign them to the abilities
`
`as you like, and raise and lower them according to the character’s race. Later, you
`
`can increase them as your character advances in experience.” Dungeons &
`
`Dragons (Ex 1005) at 11. In fact, “ability” is expressly defined in the Dungeons &
`
`Dragons glossary: “[o]ne of the six basic character qualities: Strength (Str),
`
`Dexterity (Dex), Constitution (Con), Intelligence (Int), Wisdom (Wis), and
`
`Charisma (Cha). Dungeons & Dragons (Ex 1005) at 308.
`
`Establishing a character’s abilities is a foundational part of Dungeons &
`
`Dragons. Dungeons & Dragons (Ex 1005) at 11 (“Just about every dice roll you
`
`make is going to be modified based on your character’s abilities.”) Abilities define
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`interactions between a player character and the world, define interactions between
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`the player character and other player characters or objects, and determine how
`
`easily a player character performs tasks and impact how difficult challenges are for
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`the player character. Dungeons & Dragons (Ex 1005) at 9.
`
`The skilled artisan familiar with Role Playing Games (RPGs), therefore,
`
`would have understood “ability” to connote a basic, foundational ability, for
`
`
`
`7
`
`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`example as defined Dungeons & Dragons. Notably, an “ability” in the context of
`
`an RPG is the use of the basic (i.e., “innate”) (Dungeons & Dragons (Ex 1005) at
`
`26) “ability” to determine (i.e., calculate, derive) other characteristics or statistics
`
`of a player character. Dungeons & Dragons (Ex 1005) at 10-11.
`
`The ‘243 Patent relates to an online RPG that draws inspiration from
`
`Dungeons & Dragons. Indeed, the “ability information” in the ‘243 Patent is
`
`similar to the basic abilities in Dungeons & Dragons. First, both the ‘243 Patent
`
`and Dungeons & Dragons employ the same term “ability.” Upon its face, owing
`
`to the common use of the terminology “ability,” the skilled artisan would have
`
`understood that the “ability information” in the ‘243 Patent to be similar to the
`
`“ability” in Dungeons & Dragons.
`
`Second, both the ‘243 Patent and Dungeons & Dragons describe similar
`
`foundational abilities. The ‘243 Patent’s “brave point (Bp) records the braveness
`
`of a pilot in a numerical value, and is associated with information on the attack
`
`power (ATP)” of the unit (’243 Patent (Ex. 1001) at 6:4-7), while Dungeons &
`
`Dragons describes the Strength ability, which “measures your character’s muscle
`
`and physical power” and the Strength ability is associated with effectiveness when
`
`attacking an opponent (Dungeons & Dragons (Ex. 1005) at 12). The ‘243 Patent’s
`
`“react point (Rp) records agility or reaction of a pilot in a numerical value and is
`
`associated with evasion power (EVP)” of the unit (‘243 Patent (Ex. 1001) at 6: 7-
`
`
`
`8
`
`
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`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`10), while Dungeons & Dragons describes the Dexterity ability, which “measures
`
`hand-eye coordination, agility, reflexes, and balance” and affects “[r]eflex saving
`
`throws, for avoiding fireballs and other attacks that you can escape by moving
`
`quickly” (Dungeons & Dragons (Ex. 1005) at 12). Because both the ‘243 Patent
`
`and Dungeons & Dragons similarly describe “agility,” the skilled artisan would
`
`have understood the react point, which would also have been important for
`
`characters requiring high skill, to be similar to Dexterity.
`
`The ‘243 Patent’s “the faith point (Fp) records faith about the pilot itself in
`
`a numerical value” (‘243 Patent (Ex. (1001) at 6: 10-12), while Dungeons &
`
`Dragons describes the Wisdom ability, which “describes a character’s willpower,
`
`common sense, perception, and intuition” (Dungeons & Dragons (Ex. 1005) at 13).
`
`The skilled artisan would have understood the faith point, which represents the
`
`inner faith about the character itself—namely a character’s determination—to be
`
`similar to Wisdom.
`
`The ‘243 Patent’s “mentality point (Mp) records a mental ability of a pilot in
`
`a numerical value” (‘243 Patent (Ex. 1001) at 6:15-18), while Dungeons &
`
`Dragons describes the Intelligence ability, which “determines how well your
`
`character learns and reasons” (Dungeons & Dragons (Ex. 1005) at 13). The
`
`skilled artisan would have understood the mental point, which describes the mental
`
`
`
`9
`
`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`ability of a character, to be similar to Intelligence, which also describes the mental
`
`ability to learn and reason.
`
`Thus, the skilled artisan would have understood the “ability” of the ‘243
`
`Patent (Ex. 1001) at 11:20-29) to refer to foundational abilities, similar to the basic
`
`abilities of the RPG genre established by Dungeons & Dragons. Consequently,
`
`Petitioner’s proposed construction is overly broad as any and all “attributes” of a
`
`character in a computer game would be encompassed under Petitioner’s proposed
`
`construction of “ability.” Thus, at minimum, the broadest reasonable interpretation
`
`of “ability” should be limited to only “a numeric representation of an innate
`
`attribute”—namely those original, basic attributes of a character.
`
`B. No Synchronization of “abilities”
`
`As discussed above, there are six basic abilities in Dungeons & Dragons:
`
`Strength, Dexterity, Constitution, Intelligence, Wisdom and Charisma. See e.g.,
`
`Dungeons & Dragons (Ex. 1005) at 12-14, 308. Abilities are innate to a character
`
`(e.g., a high Charisma ability score means a character is attractive) and establish
`
`modifiers to some of the characters actions (e.g., a high Dexterity increases the
`
`proficiency of riding a horse) or statistics (e.g., hit points). See Dungeons &
`
`Dragons (Ex. 1005) at 12-14.
`
`There is no teaching or suggestion of “said ability of unit is changed
`
`proportionally to changes in ability of the pilot by referring to said sync point,” as
`
`
`
`10
`
`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`required by the claims of the ‘243 Patent because Dungeons & Dragons does not
`
`disclose linkage or correspondence of the ability of the player character—Strength,
`
`Dexterity, Constitution, Intelligence, Wisdom and Charisma—to the ability of the
`
`unit (e.g., pet, mount, familiar, animal companion, etc.). In other words, the ability
`
`of the unit (e.g., Strength, Dexterity, Constitution, Intelligence, Wisdom and
`
`Charisma) is independent from, and is not synchronized to, the ability of the player
`
`character. See e.g., Dungeons & Dragons (Ex. 1005) at 40, 49, 57 describing
`
`abilities of animal companion, Paladin’s mount, and familiar based on character
`
`“level”—not ability—of player character; see Dungeons & Dragons (Ex. 1005) at
`
`310 defining “character level.”
`
`Therefore, the Petition fails to demonstrate a reasonable likelihood that
`
`claims 1- 7 of the ‘243 Patent are unpatentable.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Patent Owner requests the Board to deny
`
`institution.
`
`
`
`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: February 28, 2017
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/John M. Bird/ # 46,027, John M. Bird for
`
`_______________________
`William H. Mandir
`Registration No. 32,156
`
`
`
`
`
`11
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`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the attached PRELIMINARY
`
`RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107 and EX. 2001 was sent
`
`via e-mail on February 28, 2018, to the following:
`
`Sharon Israel (Reg No. 41,867)
`sirael@shb.com
`
`John Garretson (Reg. No. 39,681)
`jgarretson@shb.com
`
`Tanya Chaney (Reg. No. 55,080)
`tchaney@shb.com
`
`Harper Batts (Reg. No. 56,160)
`harper.batts@bakerbotts.com
`
`Jeffrey Liang (Reg. No. 69,043)
`jeffrey.liang@bakerbotts.com
`
`
`
`
`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: February 28, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/John M. Bird/
`
`
`
`_______________________
`John M. Bird
`Registration No. 46,027
`
`
`
`12
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`
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`IPR2018-00157
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this
`
`PRELIMINARY RESPONSE TO PETITION UNDER 37 C.F.R. § 42.107
`
`complies with the type-volume limitation of 37 C.F.R. § 42.24(b). The word count
`
`application of the word processing program used to prepare this paper indicates
`
`that the paper contains 2,453 words, excluding the parts of the brief exempted by
`
`37 C.F.R. § 42.24(b).
`
`
`
`
`
`
`
`
`
`
`
`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: February 28, 2018
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/John M. Bird/
`
`_______________________
`John M. Bird
`Registration No. 46,027
`
`
`
`
`
`
`
`13
`
`
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