Case: 22-1291
`
`Document: 58
`
`Page:1_
`
`Filed: 05/09/2023
`
`GAnited States Court of Appeals
`for the Federal Circuit
`
`BOT M8 LLC,
`Appellant
`
`Vv.
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Appellee
`
`KATHERINEK. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARKOFFICE,
`Intervenor
`
`2022-1291
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`00922.
`
`Decided: May 9, 2023
`
`AARON M. FRANKEL, Kramer Levin Naftalis & Frankel
`LLP, New York, NY, argued for appellant. Also repre-
`sented by JEFFREY ENG; PAUL J. ANDRE, JAMES R. HANNAH,
`LISA KOBIALKA, Redwood Shores, CA.
`
`ABRAN J. KEAN,Erise IP, P.A., Greenwood Village, CO,
`
`
`
`Document: 58
`
`Page:1_
`
`Filed: 05/09/2023
`
`GAnited States Court of Appeals
`for the Federal Circuit
`
`BOT M8 LLC,
`Appellant
`
`Vv.
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Appellee
`
`KATHERINEK. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARKOFFICE,
`Intervenor
`
`2022-1291
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2020-
`00922.
`
`Decided: May 9, 2023
`
`AARON M. FRANKEL, Kramer Levin Naftalis & Frankel
`LLP, New York, NY, argued for appellant. Also repre-
`sented by JEFFREY ENG; PAUL J. ANDRE, JAMES R. HANNAH,
`LISA KOBIALKA, Redwood Shores, CA.
`
`ABRAN J. KEAN,Erise IP, P.A., Greenwood Village, CO,
`
`
`
`Case: 22-1291
`
`Document: 58
`
`Page:2_
`
`Filed: 05/09/2023
`
`2
`
`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`argued for appellee. Also represented by ERIC ALLAN
`BURESH, Overland Park, KS.
`
`WILLIAM LAMARCA, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, ar-
`gued for intervenor. Also represented by MICHAEL S.
`FORMAN,
`THOMAS W. KRAUSE,
`FARHEENA YASMEEN
`RASHEED, MEREDITH HOPE SCHOENFELD.
`
`Before PROST, REYNA, and CUNNINGHAM,Circuit Judges.
`
`Prost, Circuit Judge.
`
`Bot M8 LLC (“Bot M8”) appeals from a final written
`decision of the Patent Trial and Appeal Board (“Board”) in
`an inter partes review (“IPR”) determining all challenged
`claims of U.S. Patent No. 8,078,540 (“the ’540 patent”) un-
`patentable. Weaffirm.
`
`BACKGROUND
`
`Sony Interactive Entertainment LLC (“Sony”) peti-
`tioned for IPR of claims 1—6 of the 540 patent. The ’540 pa-
`tent concerns a gaming machine that authenticates certain
`data and that has both a motherboard and a different
`board. See, e.g.,’540 patent col. 5 ll. 25-89; id. at claim 1.
`Two aspects of the claims are relevant here. First, the in-
`dependent claims (claims 1 and 4) require that the “game
`program” be written to the motherboard only after the
`game program has been authenticated. Second, the de-
`pendent claims (claims2, 3, 5, and 6) require two different
`CPUs—oneon the motherboard, one on a different board—
`for executing the “authentication program” and “prelimi-
`nary authentication program”respectively.
`
`Claims 1 and 2 exemplify the issues on appeal concern-
`ing the independentclaims and dependentclaims,reciting:
`
`1. A gaming machine, comprising:
`
`
`
`
`
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
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`3
`
`(i) a board including a memory in which a game
`program for executing a game and an authentica-
`tion program for authenticating the game program
`are stored;
`
`(11) a motherboard whichis different from the board
`and connectsto the board, the motherboard includ-
`ing another memory which is different from the
`memory, said another memory configured to read
`out and store the game program stored in the
`memory; and
`
`(iii) a CPU which is provided on the motherboard,
`for executing the game based upon the gamepro-
`gram stored in said another memory,
`
`the CPU being configuredto:
`
`(a) read out the authentication program
`from the memory of the board, and then,
`store the read out authentication program
`in said another memory of the mother-
`board;
`
`(b) execute the authentication program
`stored in said another memory in the pro-
`cess (a), and then, authenticate the game
`program in the memory of the board, based
`upon the executed authentication program;
`
`(c) write the game program in the memory
`of the board, to said another memory of the
`motherboard, in a case where the game pro-
`gram in the memory of the board is authen-
`ticated as a result of the authentication
`process(b); and
`
`(d) execute the game based upon the game
`program written to said another memory of
`the motherboard in the process(c).
`
`
`
`
`
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`
`
`4
`
`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`2. The gaming machine according to claim 1,
`wherein:
`
`a preliminary authentication program for
`authenticating the authentication program
`is further stored in the memoryof the board
`and another CPU which is different from
`the CPU, said another CPUconfigured to
`execute the preliminary authentication pro-
`gram,
`is provided on the board, said an-
`other CPU being configured to, prior to
`performingthe process(a):
`
`(e) execute the preliminary authen-
`tication program stored in the
`memory of the board, and then,au-
`thenticate the authentication pro-
`gram stored in the memory of the
`board, based upon the preliminary
`authentication program.
`
`540 patent claims 1 & 2 (emphasis added).
`
`In its final written decision, the Board determined that
`the independent claims are unpatentable based on as-
`serted combinations of (1) Johnson and Martinek and
`(2) Morrow ’952, Morrow ’771, and Diamant.! Sony Inter-
`active Ent. LLC v. Bot M8, LLC, No. IPR2020-00922, Pa-
`per 26, 2021 WL 6335602, at *29 (P.T.A.B. Nov. 22, 2021)
`(“Final Written Decision”); cf. id. at *20, *25 (determining
`that the independent claims are unpatentable based on
`each of Johnson and Morrow ’952 alone).
`It determined
`that the dependent claims are unpatentable based on the
`
`1 U.S. Patent No. 6,565,448 (“Johnson”); U.S. Patent
`App. Pub. No. 2003/01300382 (“Martinek”); U.S. Patent
`App. Pub. No. 2004/0054952 (“Morrow ’952”); U.S. Patent
`App. Pub. No. 2003/0064771 (“Morrow ’771”); U.S. Patent
`App. Pub. No. 2006/0101310 (“Diamant”).
`
`
`
`
`
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENTLLC
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`5
`
`asserted combination of Johnson, Martinek, and Diamant.
`Id. at *29.
`
`Bot M8 timely appealed. We havejurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`
`DISCUSSION
`
`Wereview the Board’s decision in accordance with the
`Administrative Procedure Act
`(“APA”), 5 U.S.C. § 706.
`E.g., Hunting Titan, Inc. v. DynaEnergetics Eur. GmbH,
`28 F.4th 1371, 1879 (Fed. Cir. 2022). We review claim con-
`struction de novo and any subsidiary factfindings based on
`extrinsic evidence for substantial evidence. E.g., Apple Inc.
`v. MPH Techs. Oy, 28 F.4th 254, 259 (Fed. Cir. 2022). Sub-
`stantial evidence “is such relevant evidence as a reasonable
`mind might accept as adequate to support a conclusion.”
`Novartis AG v. Torrent Pharms. Litd., 853 F.3d 1316,
`1323-24 (Fed. Cir. 2017) (cleaned up). What the prior art
`discloses and whether a person of ordinary skill in the art
`would have been motivated to combine prior-art references
`are both fact questions that we review for substantial evi-
`dence. E.g., Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th
`1373, 1378 (Fed. Cir. 2023).
`
`Bot M8 raises two issues on appeal.? First, it argues
`that the Board misconstrued the independent claims. Sec-
`ond, it argues that the Board erred in determining the de-
`pendent claims unpatentable for obviousness. We address
`each issuein turn.
`
`I
`
`As to the independent claims, Bot M8 argues that the
`Board misconstrued claim 1 to find that both Johnson and
`
`Bot M8originally raised a third issue—a challenge
`2
`to the Board’s institution decision as allegedly violating the
`Constitution’s Appointments Clause—butit withdrew that
`challenge before oral argument. ECF No. 54.
`
`
`
`
`
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`
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`6
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`Morrow ’952 disclose the element that requires writing the
`game program to the motherboard only after authenticat-
`ing the game program.? The dispute concerns what data
`may be written to the motherboard before authenticating
`the game program.
`
`Claim 1 undisputedly precludes writing the entire
`game program to the motherboard before authenticating
`the game program. See Final Written Decision, 2021 WL
`6335602, at *19 (describing this as “a point not in dispute”);
`accord Appellant’s Br. 24; Appellee’s Br. 17.
`
`Bot M8 maintains that claim 1 further precludes writ-
`ing any data—game program or not—to the motherboard
`before authenticating the game program. See Appellant’s
`Br. 34. The Board rejected such an interpretation as incon-
`sistent with the claim language. See, e.g., Final Written
`Decision, 2021 WL 6335602, at *18. We likewise reject
`such an interpretation. Although claim 1 precludes writing
`the game program to the motherboardbeforeit’s authenti-
`cated, Bot M8 offers no persuasive reason to construe the
`claim to preclude writing other data to the motherboard
`before the game program is authenticated.
`
`Bot M8 also argues, more modestly, that claim 1 at
`least precludes writing any portion of the game program to
`the motherboard before authenticating the game program.
`Appellant’s Br. 23. And, in attempting to show that the
`Board applied a contrary construction—one that permits
`portions of the game program to be written to the mother-
`board before authenticating the game program—Bot M8
`
`3 Although Sony argues that Bot M8 forfeited its
`claim-construction arguments on this element by not pre-
`serving them before the Board, Appellee’s Br. 12-17, we
`need not reach that argument because,as explained below,
`we reject Bot M8’s claim-construction arguments on the
`merits.
`
`
`
`Case: 22-1291
`
`Document: 58
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`Page:7
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`Filed: 05/09/2023
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENTLLC
`
`7
`
`fixates on what appears to be a single sentence in the
`Board’s final written decision, where the Board stated:
`“(Bot M8] seeks to read into claim 1 a requirement that
`nothing related to, or any portion of,
`the gaming infor-
`mation be read into [the motherboard’s] RAM from the
`mass storage device of Johnson prior to authenticating the
`game program.”
`Final Written Decision, 2021 WL
`6335602, at *17 (second emphasis added); see, e.g., Appel-
`lant’s Br. 17, 25 (quoting this sentence).
`
`Assuming (for argument’s sake) that Bot M8is cor-
`rect—that claim 1 does preclude writing any portion of the
`game program to the motherboard before authenticating
`the game program—westill affirm. Our review under the
`APAis subject to a harmless-errorrule, see, e.g., 5 U.S.C.
`§ 706 (“[D]ue account shall be taken of the rule of prejudi-
`cial error.”), and the party challenging the Board’s decision
`must demonstrate the harmfulnessof the alleged error, see
`Shinseki v. Sanders, 556 U.S. 396, 406, 409-10 (2009); ac-
`cord Vicor Corp. v. SynQor, Inc., 869 F.3d 13809, 1825
`(Fed. Cir. 2017). Bot M8fails to do so here.
`
`Wewill assume (for argument’s sake) that when
`4
`the Board said “gaming information”here, it was contem-
`plating “game program.” But even that is far from clear.
`The ’540 patent distinguishes between “gaming infor-
`mation” and “game program,” with “gaming information”
`including both a “game program” and a “game system pro-
`gram.” See’540 patentcol. 5 ll. 34-89;id. at col. 6 Il. 58-55;
`id. at col. 12 ll. 51-53. So, when suggesting that a portion
`of the “gaming information” may be written to the mother-
`board before authenticating the game program, the Board
`wasnot necessarily even referring to a portion of the game
`program specifically. Nevertheless, for argument’s sake,
`we will assume that the Board’s use of “gaming infor-
`mation”in this context contemplated “game program.”
`
`
`
`
`
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`
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`8
`
`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`Specifically, Bot M8 fails to demonstrate that the
`Board, in makingits unpatentability determinations,actu-
`ally relied—or even might have relied—on a construction
`that permits writing portions of the game program to the
`motherboard before authenticating the game program. By
`all indications, the Board simply didn’t need to; it found
`that both Johnson and Morrow ’952 disclose writing only
`non-game-program data to the motherboard before authen-
`ticating the game program. See, e.g., Final Written Deci-
`sion, 2021 WL 6335602, at *16 (“[Sony] also shows that
`Johnson expressly teaches loading only enoughof the oper-
`ating system that is neededto accessthefiles stored on the
`mass storage device 211 and perform the verification oper-
`ations, which would have been understood not to include
`game programs.” (emphasis added)(cleaned up)); id. (quot-
`ing favorably Sony’s expert’s testimony that, in one John-
`son embodiment, “the application module files G.e., game
`program) are also not loaded or written into [the mother-
`board’s] RAM until the verification procedure successfully
`completes” (quoting J.A. 856-57 J 188)); id. at *27 (discuss-
`ing Morrow ’952). We review these factfindings for sub-
`stantial evidence, and Bot M8 has not shown that they
`were lacking in that regard. Given these findings, then,
`there would have been no occasion for the Board to apply a
`construction that permits writing portionsof the gamepro-
`gram to the motherboard before authenticating the game
`program. Wetherefore conclude that any error in the
`Board’s suggestion that claim 1 permits as much was
`harmless.
`
`5 Although the foregoing discussion suffices, we fur-
`ther note that Bot M8’s own explanation of Johnson and
`Morrow ’952 bolsters this conclusion. For example, when
`explaining why it believes that these references don’t dis-
`close the relevant claim element, Bot M8 tends to say only
`
`
`
`
`
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENTLLC
`
`9
`
`Bot M8’s challenge concerning the independent claims
`depends on its argumentsof claim-construction error. Be-
`cause we conclude that the Board did noterr in this respect
`or that any error was harmless, we affirm as to the inde-
`pendentclaims.
`
`II
`
`As to the dependent claims, Bot M8 argues that the
`Board erred in determining them unpatentable for obvious-
`ness because a person of ordinary skill in the art would not
`have been motivated to combine Johnson, Martinek, and
`Diamantto yield the invention of claim 2.
`
`Again, as relevant here, claim 2 requires two different
`CPUs—oneon the motherboard, one on a different board—
`for executing the “authentication program” and “prelimi-
`nary authentication program”respectively.
`
`The Board found that Martinek discloses a board (dif-
`ferent from the motherboard) with a CPU (different from
`the motherboard’s CPU) that can execute an authentica-
`tion program.
`See Final Written Decision, 2021 WL
`
`that they write “data” to the motherboard before authenti-
`cating the game program—withoutclearly specifying what
`“data” it’s talking about. See Appellant’s Br. 31-34. And,
`when articulating why it believes the Board incorrectly
`found that these references disclose the relevant claim ele-
`ment, Bot M8 identifies as “erroneous” the Board’s inter-
`pretation that claim 1 does not preclude any andall data
`from being written to the motherboard before the game
`program is authenticated. See Appellant’s Br. 34 (regard-
`ing Morrow ’952);
`id. at 32 (regarding Johnson). This
`simply reinforces that Bot M8’s real issue with the Board’s
`interpretation is that it allowed for some data—even non-
`game-program data—to be written to the motherboard be-
`fore the game program is authenticated. As already dis-
`cussed, Bot M8 has not shownerrorin that interpretation.
`
`
`
`
`
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`
`
`10
`
`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`6335602, at *21—-22. The Board also found that Diamant
`discloses a preliminary authentication program. See id.
`Andalthough the Board acknowledged Bot M8’s argument
`that, in Diamant, the analogous “authentication program”
`and “preliminary authentication program” are both exe-
`cuted on the same CPU,id. at *22, *24, the Board credited
`(amongotherthings) Sony’s “persuasive reasons whya per-
`son of ordinary skill in the art would have understood a
`benefit of combining[the references’] teachingsto arrive at
`a process that uses two CPUs,”id. at *24.
`In particular,
`the Board quoted favorably the testimony of Sony’s expert,
`who explained that “using processor 505 of Martinek to
`first authenticate Johnson’s verification module before
`loading it into [the motherboard’s] RAM accomplishes the
`goal expressly described in Martinek of acting as a gate to
`‘allow data to enter a host computeronly after validation.”
`Id. at *23 (quoting J.A. 872 § 212 (quoting J.A. 983
`at [0114] (Martinek))). That is, the Board credited Sony’s
`expert’s explanation of why Martinek itself supplies a mo-
`tivation.
`Id.; see also id. at *24 (finding “for the reasons
`explained above that the express disclosures in the as-
`serted references provide reasons and motivations that
`support the asserted combination’).
`
`On appeal, Bot M8 again stresses that “no reference of
`record|] shows using two different CPUs for two separate
`authentication processes.” Appellant’s Br. 36. But Bot M8
`fails to persuade us why no reasonable factfinder could
`have found as the Board did—that given Sony’s expert’s ex-
`planation and the references themselves, it nonetheless
`would have been obvious to a personof ordinary skill in the
`art to combine the references to yield the claimed inven-
`tion. We conclude that substantial evidence supports the
`factfindings underpinning the Board’s obviousness deter-
`mination, and we otherwise see noerror in that determina-
`tion.
`
`
`
`
`
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`
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
`
`11
`
`CONCLUSION
`
`We have considered Bot M8’s remaining arguments
`and find them unpersuasive. For the foregoing reasons, we
`affirm.
`
`AFFIRMED
`
`
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