`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`BOT M8, LLC,
`Patent Owner.
`____________________
`
`Case IPR2020-01218
`U.S. Patent No. 8,095,990
`__________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
` 
`
` 
`
` 
`
`B. 
`
`C. 
`
`Page
`Introduction .................................................................................................... 1 
`Overview of the ’990 Patent .......................................................................... 2 
`  Claim Construction ........................................................................................ 5 
`  Summary of Prior Art .................................................................................... 5 
`A.  Gazdic .................................................................................................. 5 
`B. 
`Ryan ..................................................................................................... 7 
`C. 
`Diamant ............................................................................................... 9 
`D. 
`Takeda ............................................................................................... 10 
`The Challenged Claims are Patentable ........................................................ 12 
`A.  Ground 1: Claims 1, 5, and 9 are Patentable Over Gazdic,
`Ryan, and Diamant ............................................................................ 12 
`1. 
`Petitioner has not Demonstrated That Gazdic in
`View of Ryan and Diamant Discloses the Claimed
`Mutual Authentication Program ............................................. 12 
`Petitioner has not Demonstrated That Gazdic in
`View of Ryan and Diamant Discloses Conditional
`Execution ................................................................................ 19 
`Petitioner has not Demonstrated That it Would be
`Obvious to Combine Gazdic and Ryan with
`Diamant ................................................................................... 20 
`Ground 2: Claims 4, 8, 9, and 10 are Patentable over
`Gazdic, Ryan, Diamant, and Alcorn ................................................. 21 
`Ground 3: Claims 2-3 and 6-7 are Patentable Over Ryan,
`Gazdic, Diamant, Alcorn, and Gatto ................................................. 21 
`D.  Ground 4: Claims 1, 5, and 9 are Patentable Over Takeda
`in view of Diamant ............................................................................ 22 
`
`2. 
`
`3. 
`
`- i -
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`1. 
`
`Petitioner has not Demonstrated That Takeda in
`View of Diamant Discloses the Claimed Mutual
`Authentication Program .......................................................... 22 
`Petitioner has not Demonstrated That it Would be
`Obvious to Combine Takeda with Diamant ........................... 25 
`  Conclusion ................................................................................................... 25
`
`2. 
`
`- ii -
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Arctic Cat Inc. v. Bombardier Rec. Prods. Inc.,
`876 F.3d 1350 (Fed. Cir. 2017) .......................................................................... 23
`Aventis Pharm. Inc. v. Amino Chems. Ltd.,
`715 F.3d 1363 (Fed. Cir. 2013) ............................................................................ 5
`K/S Himpp v. Hear-Wear Techs.,
`LLC, 751 F.3d 1362 (Fed. Cir. 2014) ........................................................... 14, 23
`Otsuka Pharm. Co. v. Sandoz, Inc.,
`678 F.3d 1280 (Fed. Cir. 2012) .......................................................................... 16
`Travelocity.com L.P. v. Cronos Techs., LLC,
`No. CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) .................................. 2
`Federal Statutes
`35 U.S.C. § 325(d) ..................................................................................................... 1
`Other Authorities
`PTAB Consolidated Trial Practice Guide, November 2019 ............................. 14, 23
`
`
`- iii -
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`Sony Interactive Entertainment LLC (“Sony” or “Petitioner”) submitted a
`
`Petition to institute inter partes review of Bot M8, LLC’s (“Bot M8” or “Patent
`
`Owner”) U.S. Patent No. 8,095,990 (EX. 1001, “the ’990 Patent”), challenging
`
`claims 1–10 (“the Challenged Claims”). The Board should deny institution of the
`
`inter partes review under 35 U.S.C. § 325(d) because Petitioner has not
`
`demonstrated a reasonable likelihood that any Challenged Claim is unpatentable.
`
`None of the proposed references include the mutual authentication limitation
`
`recited in all of the Challenged Claims.
`
`
`
`INTRODUCTION
`
`The Challenged Claims of the ’990 Patent cover a novel security technique
`
`for improving gaming machines. Recognizing that software located on gaming
`
`machines and removable media devices, such as CDs, DVDs, and USB drives, can
`
`be corrupted or replaced with malicious content, the ’990 Patent claims a system
`
`for performing bi-directional authentication between two authentication programs:
`
`(1) an authentication program located on the gaming machine for authenticating a
`
`mutual authentication program, and (2) the mutual authentication program located
`
`within gaming data on a removable media device for checking that the
`
`authentication program is legitimate. Using this bi-directional authentication
`
`technique, the ’990 Patent ensures that neither the gaming system nor the
`
`removable media device can be compromised.
`
`1
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`The Board should deny the Petition as Petitioner has not demonstrated that
`
`the cited references disclose the claimed bi-directional authentication technique.
`
`Specifically, Ryan, Gazdic, and Takeda each teach the well-known step of
`
`verifying data, but fails to disclose using one authentication program to
`
`authenticate another, let alone two mutually authenticating authentication
`
`programs, as claimed. Diamant does not cure these deficiencies because Diamant
`
`also fails to disclose mutually authenticating authentication programs.
`
`Although there are a variety of reasons why the ’990 Patent is valid over
`
`Petitioner’s asserted references, this Preliminary Response focuses on only limited
`
`reasons why inter partes review should not be instituted. See Travelocity.com L.P.
`
`v. Cronos Techs., LLC, No. CBM2014-00082, Paper 12 at 10 (P.T.A.B. Oct. 16,
`
`2014) (“[N]othing may be gleaned from the Patent Owner’s challenge or failure to
`
`challenge the grounds of unpatentability for any particular reason.”).
`
` OVERVIEW OF THE ’990 PATENT
`
`The technology underlying the ’990 Patent was developed by Universal
`
`Entertainment Corp (“UEC”), a Japanese gaming conglomerate with a history
`
`dating back to 1969. UEC is a leading provider of single and multiplayer video
`
`games used in arcade gaming halls and software for home gaming machines. Its
`
`offerings over the years included games for Sony’s PlayStation video game
`
`console, gaming software for personal computers, and electronic wagering
`
`2
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`machines such as slot machines. UEC is the successor company to Aruze Corp.,
`
`which released over two dozen home video games, including at least a dozen video
`
`games made for use with Petitioner’s PlayStation line of gaming machines.
`
`The ’990 Patent is directed to authenticating and loading gaming
`
`information stored in a removable storage medium, such as a CD, DVD, or USB
`
`drive. ’990 Patent, 1:18-23. Specifically, the ’990 Patent claims a bi-directional
`
`authentication technique. An authentication program located on a gaming machine
`
`authenticates gaming information, including a different mutual authentication
`
`program, stored in a removable storage medium, to ensure that the mutual
`
`authentication program has not been compromised. ’990 Patent, 13:13-16 (“the
`
`gaming system program 30b stored in the memory card 30 includes a mutual
`
`authentication program 30c...”); see also, id., 17:16-19.
`
`Additionally, the gaming machine is connected to a removable storage
`
`medium that stores the mutual authentication program. Id., 13:5-8. The mutual
`
`authentication program authenticates the authentication program to verify that it is
`
`a legitimate program. Id., 17:26-31. In this way, the ’990 Patent claims bi-
`
`directional authentication of two authentication programs to verify that each
`
`program has not been compromised. Figure 12 of the ’990 Patent, reproduced
`
`below, depict the process of bi-directional authentication.
`
`
`
`3
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`’990 Patent, FIG. 12 (annotated to show the execution of the authentication
`
`program in blue and to show the execution of the mutual authentication program in
`
`green, where each program authenticates the other).
`
`
`
`4
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
` CLAIM CONSTRUCTION
`
`Petitioner did not propose constructions for any terms. For purposes of this
`
`Preliminary Response, Patent Owner applies the ordinary and customary meaning
`
`of the claim terms as understood by a person of ordinary skill in the art at the time
`
`of the invention (“POSITA”). “There is a heavy presumption that claim terms are
`
`to be given their ordinary and customary meaning,” which should be the result
`
`here. Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir.
`
`2013).
`
` SUMMARY OF PRIOR ART
`
`This Petition is based on three references. As discussed below, each of the
`
`three references uses a paradigm that is fundamentally different from the invention
`
`of the Challenged Claims because none of references teach bi-directional
`
`authentication.
`
`A. Gazdic
`
`Gazdic (EX. 1008) is titled “Gaming Software Authentication” and discloses
`
`a method of verifying memory contents with an authentication program. Gazdic,
`
`Abstract. Specifically, Gazdic discloses a gaming machine that has a boot
`
`memory, a high capacity storage memory, and a serial read-write memory, as
`
`shown below:
`
`5
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`
`
`Gazdic, FIG. 2
`
`Gazdic teaches a continuous run-time authentication process. Gazdic,
`
`[0032]. In Gazdic, an authentication program in the gaming machine verifies
`
`executable data both during boot-up and during runtime. Id., [0027], FIG 5b,
`
`[0031]-[0032]. During boot-up, the authentication program stored in boot memory
`
`20 verifes executable game data files stored in the high capacity storage memory
`
`22 using digital signatures. Id., [0027]. After the executable game data files are
`
`verified, the authentication program loads each verified data file into the CPU
`
`component (e.g., system RAM) where the data file will reside and execute from
`
`during normal machine operation. Id., [0029].
`
`6
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`During run-time, the same authentication program performs continuous run-
`
`time authentication to ensure that the executable game data files loaded into RAM
`
`during the boot-up procedure have not been altered or changed. Id., [0032] (“The
`
`purpose of continuous run-time authentication is to ensure that the information that
`
`was loaded to system RAM during the boot process has not been altered and that
`
`the memories have not been changed.”).
`
`Unlike the ‘990 Patent, which teaches bi-directional authentication of two
`
`authentication programs, Gazdic teaches a fundamentally different process where a
`
`single authentication program verifies the same executable game data files on two
`
`occasions, once during boot-up and then continuously during run-time.
`
`B. Ryan
`
`Ryan (EX. 1009) is titled “Gaming Machine Having Targeted Run-Time
`
`Software Authentication” and is continuation-in-part of Gazdic (EX. 1008). Ryan,
`
`[0001]. Like Gazdic, Ryan discloses a boot memory, a high capacity storage
`
`memory, a serial read-write memory, and an authentication program that
`
`authenticates gaming software. Id., Abstract, FIG. 2. As shown below, in Ryan
`
`the authentication program 54 (indicated in the blue square) is stored in the Boot
`
`Memory and the game program (indicated in the green square) is stored in the high
`
`capacity storage memory:
`
`7
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`
`
`Id., FIG. 2.
`
`Ryan discloses a continuous run-time authentication process in the gaming
`
`machine that continuously authenticates gaming software. Id., [0043], [0054]-
`
`[0055]. Specifically, Ryan teaches that its continuous run-time authentication
`
`process authenticates in parallel the high capacity storage memory and the main
`
`EEPROM memory during run-time. Id., [0043]. However, unlike ‘990 patent
`
`which teaches bi-directional authentication of an authentication program and a
`
`mutual authentication program, Ryan teaches a fundamentally different process of
`
`authenticating memory and does not teach or suggest a bi-directional
`
`authentication process.
`
`8
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`C. Diamant
`
`Diamant (EX. 1006) discloses using an algorithm to evaluate the integrity of
`
`a verification program. Diamant, Abstract. Specifically, as shown below,
`
`Diamant teaches a Device 10 that has an Integrity Checker 24 stored in ROM and
`
`an attachable memory device 16 that stores an Integrity Checking Algorithm 22.
`
`Diamant is fundamentally different from the ’990 Patent because it does not teach
`
`bi-directional authentication.
`
`Diamant, FIG. 1
`
`
`
`In Diamant, Integrity Checker 24 checks the integrity of the code,
`
`instructions, data or programs of the Integrity Checking Algorithm 22. Id., [0015].
`
`
`
`9
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`If the Integrity Checking Algorithm 22 is valid, the Integrity Checking Algorithm
`
`22 verifies the integrity of functional code or other software, data, graphics,
`
`content, or firmware of the Device 10. Id. Diamant, thus, at most, only teaches
`
`one-way authentication where a first program located on the Device 10 verifies a
`
`second program located on the attachable memory device, and does not teach or
`
`suggest that the second program also authenticates the first program. Thus, there is
`
`no bi-directional authentication performed in Diamant.
`
`D. Takeda
`
`Takeda (EX. 1005) discloses a system and method for providing security in
`
`a video game system. Takeda, Abstract. Specifically, Takeda teaches a main unit
`
`52 that verifies some or all portions of a video game program located on an
`
`external storage unit. Id., 29:66-30:4.
`
`10
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`
`
`Id., FIG. 17.
`
`Takeda is fundamentally different from the ’990 Patent because, unlike the
`
`’990 Patent, Takeda does not teach the bi-directional authentication performed by
`
`two different authentication programs.
`
`11
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
` THE CHALLENGED CLAIMS ARE PATENTABLE
`A. Ground 1: Claims 1, 5, and 9 are Patentable Over Gazdic, Ryan,
`and Diamant
`
`The Board should decline to institute inter partes review at least because
`
`claims 1, 5, and 9 are patentable over and not rendered obvious by Gazdic, Ryan,
`
`and Diamant.
`
`1.
`
`Petitioner has not Demonstrated That Gazdic in View of
`Ryan and Diamant Discloses the Claimed Mutual
`Authentication Program
`
`Independent claim 1 of the ’990 Patent recites a bi-directional authentication
`
`process where two separate authentication programs that are stored in two different
`
`locations authenticate each other:
`
`
`
`
`
`
`
`a loading device including a connection unit configured to
`be connected to a removable storage medium storing
`therein gaming
`information
`including a mutual
`authentication program;
`the program storage unit configured to store therein an
`authentication program for authenticating the gaming
`information stored in the storage medium;
`the mutual authentication unit configured to execute a
`mutual authentication process for the authentication
`program to check that the authentication program is a
`legitimate
`program
`according
`to
`the mutual
`authentication program
`included
`in
`the gaming
`information authenticated by the authentication unit;
`
`12
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`’990 Patent at Claim 1. Petitioner asserts that these claim limitations are obvious
`
`over Gazdic in view of Ryan alone as well as over Gazdic in view of Ryan and
`
`further in view of Diamant. See, e.g., Petition at 13–19.
`
`Gazdic, Ryan, and Diamant, alone and in combination, do not disclose any
`
`of these claim limitations. Tellingly, the Petition relies upon the same disclosure
`
`of an “authentication program” from Gazdic as teaching both the claimed
`
`“authentication program” and the claimed “mutual authentication program.”
`
`Compare Petition at 14 with Petition at 25 (both relying on the same disclosure
`
`from Gazdic, Fig. 2). Petitioner asserts that Gazdic’s disclosure of using its
`
`authentication program to perform “run-time authentication” is a different program
`
`than the authentication program that operates during a system boot process. See
`
`Gazdic, FIGs. 5-6. It is not.
`
`Gazdic only refers to one authentication program that performs both boot-up
`
`authentication and the continuous run-time process. Gazdic, [0019], [0030] (“The
`
`authentication procedure then proceeds to the final stage—continuous run-time
`
`authentication.”). Indeed, instead of pointing to two different authentication
`
`programs in Gazdic or Ryan, Petitioner only relies on its expert to manufacture a
`
`separate mutual authentication program:
`
`A PHOSITA would understand that the run-time
`authentication program of Gazdic’s Fig. 6 uses a
`different program from the one stored in boot memory,
`
`13
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`but Gazdic/Ryan does not disclose the location of this
`program.” A PHOSITA, however, would have found it
`obvious to include the run-time authentication program in
`the executable game/OS files on high capacity storage
`memory.
`Petition at 15 (emphasis added). It is improper for the Petition to rely solely on
`
`expert testimony in this way to back-fill missing elements from the Challenged
`
`Claims. See PTAB Consolidated Trial Practice Guide, November 2019, at 36
`
`(“Expert testimony, however, cannot take the place of a disclosure in a prior art
`
`reference, when the disclosure is required as part of the unpatentability analysis.”);
`
`K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014)
`
`(conclusory assertions from a third party about general knowledge in the art
`
`cannot, without supporting evidence of record, supply a limitation that is not
`
`evidently and indisputably within the common knowledge of those skilled in the
`
`art).
`
` Even granting Petitioner’s unsupported position that Gazdic’s “run-time
`
`authentication program…uses a different program from the one stored in the boot
`
`memory”, Petitioner admits that Gazdic and Ryan fail to disclose the location of
`
`the alleged run-time authentication program. Petition at 15. Rather, Petitioner
`
`asserts, with no evidence, that it would have been obvious “to include the run-time
`
`authentication program in the executable game/OS files on high capacity storage
`
`14
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`memory.” Petition at 15-16; ’990 Patent, Claim 1 (“a removable storage medium
`
`storing therein gaming information including a mutual authentication program”).
`
`In doing so, Petitioner asks the Board to accept two meritless assertions supporting
`
`its argument that these claim elements are obvious over Gazdic and Ryan.
`
`First, Petitioner asks the Board to accept that Gazdic’s run-time
`
`authentication procedure is a different program from the authentication program
`
`that Petitioner maps to the claimed authentication program. Petition at 15. The
`
`Petitioner must show that Gazdic discloses two authentication programs to meet
`
`the limitations of Claim 1. However, Petitioner cannot show this because Gazdic
`
`only teaches a single authentication program that performs both boot-up and
`
`continuous run-time authentication processes. Gazdic, [0019], [0030]
`
`Second, Petitioner asks the Board to accept that a POSITA would modify or
`
`infer into Gazdic to store the alleged run-time authentication program on a “high
`
`capacity storage memory.” Petition at 15-16. Claim 1, however, requires that the
`
`mutual authentication program be stored on a removable storage medium. Thus,
`
`the run-time authentication program would need to be stored on a removable
`
`storage medium to meet Claim 1. Gazdic does not teach this, and instead only
`
`discloses one authentication program that is stored in boot memory 20 of the
`
`gaming machine, which Gazdic does not describe as removable. Gazdic, [0019].
`
`15
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`Thus, the Board should reject both of Petitioner’s assumptions because they
`
`are not disclosed anywhere in Gazdic, as demonstrated above, and further
`
`demonstrate that Petitioner is using hindsight bias to try to backfill the portions of
`
`Claim 1 that are not taught by the combination of the three asserted references.
`
`Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The
`
`inventor's own path itself never leads to a conclusion of obviousness; that is
`
`hindsight. What matters is the path that the person of ordinary skill in the art would
`
`have followed, as evidenced by the pertinent prior art.”).
`
`
`
`Petitioner’s alternate theory that the bi-directional authentication technique
`
`of the challenged claims is obvious over Gazdic and Ryan in view of Diamant also
`
`fails because Petitioner’s proposed combination does not result in two bi-
`
`directional authentication programs. Specifically, Diamant does not teach the
`
`mutual authentication program, and instead only teaches a one-way authentication
`
`program, so even in combination with Gazdic and Ryan, only one authentication
`
`program would be authenticated with Diamant as Petitioner admits:
`
`“Diamant teaches a first verification program that can be
`stored on an external storage medium (e.g., high capacity
`memory of Gazdic) to evaluate the authenticity of a second
`verification program that, in turn is used to evaluate the
`authenticity of the software stored on the external storage
`medium.”
`
`16
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`Petition at 17 (admitting that Diamant only discloses one-way
`
`authentication).
`
`Diamant teaches an integrity checker 24 that is stored in ROM 14 and an
`
`integrity checking algorithm 22 that is stored in attachable memory device 16, as
`
`shown below.
`
`Diamant, FIG. 1. Integrity checker 24 “check[s] the integrity of the code,
`
`instructions, data or programs that include or are included in integrity checking
`
`algorithm 22.” Id., [0015], FIG. 1. If the Integrity Checking Algorithm 22 is
`
`
`
`17
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`valid, than “integrity checking algorithm 22 [] may check and verify the integrity
`
`of functional code or other software, data, graphics, content or firmware 20 that
`
`may be stored on for example memory device 16.” Id.
`
`Thus, Diamant fails to cure the deficiencies of Gazdic and Ryan because
`
`Diamant does not teach or suggest “a mutual authentication process for the
`
`authentication program to check that the authentication program is a legitimate
`
`program,” as recited in Claim 1.
`
`That is, Diamant does not disclose that Integrity Checking Algorithm 22
`
`checks that Integrity Checker 24 (i.e. the element that Petitioner maps to the
`
`claimed authentication program) “is a legitimate program.” See ’990 Patent, Claim
`
`1 (“a mutual authentication process for the authentication program to check that
`
`the authentication program is a legitimate program according to the mutual
`
`authentication program”). Rather, Integrity Checking Algorithm 22 verifies the
`
`integrity of the functional code or firmware the Attachable Memory Device 16.
`
`Diamant, [0015].
`
`In fact, Diamant does not even teach that Integrity Checking Algorithm 22
`
`authenticates or verifies any portion of ROM 14, the memory storing Integrity
`
`Checker 24. Accordingly, Gazdic in view of Ryan in further view of Diamant fails
`
`to teach or suggest the claimed mutual authentication program.
`
`18
`
`

`

`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
`
`Independent claim 5 and 9 recite limitations similar to those recited in claim
`
`1, and Petitioner’s arguments as to those claims fail for the same reasons discussed
`
`above.
`
`2.
`
`Petitioner has not Demonstrated That Gazdic in View of
`Ryan and Diamant Discloses Conditional Execution
`
`Independent claim 1 of the ’990 Patent recites the following limitation that
`
`executes a game action only after the mutual authentication program executes:
`
`“the process device includes an action controlling unit
`configured to control the game action executing device
`according to the written gaming information so that the
`game action executing device executes the game action,
`when the mutual authentication unit has executed the
`mutual authentication process.”
`’990 Patent, Claim 1.
`
`Gazdic in view of Ryan fails to teach or suggest this conditional claim
`
`limitation.1 As previously discussed, Petitioner maps Gazdic’s disclosure of “run-
`
`time authentication” to the claimed mutual authentication program. See Petition at
`
`17 (“rendering the run-time authentication program a ‘mutual authentication
`
`program.”). Petitioner also asserts that Gazdic’s “run-time authentication”
`
`
`1 Petitioner does not rely on Diamant or Ryan for this claim limitation. Petition at
`
`35-36.
`
`19
`
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`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
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`discloses the conditional claim limitation. Petition at 35-36 (“Gazdic/Ryan …
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`teaches that game program execution occurs or continues only after the
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`authentication process (i.e., continuous run-time authentications or first verification
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`program from Diamant) verifies the authentication program and the authentication
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`program verifies the game program.”). However, a run-time program by definition
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`is executing during run time (i.e. after a program has already begun executing).
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`Gazdic, [0031] (“run-time authentication…will take place following completion of
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`the system boot process.”).
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`Accordingly, Petitioner’s theory that Gazdic’s disclosure of “run-time
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`authentication” renders above the above limitation should be rejected because the
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`executable files of Gazdic have already begun executing when the continuous run-
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`time process begins. Thus, Gazdic in view of Ryan in further view of Diamant fail
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`to teach or suggest the conditional execution limitation of Claim 1.
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`3.
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`Petitioner has not Demonstrated That it Would be Obvious
`to Combine Gazdic and Ryan with Diamant
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`Gazdic and Ryan are a separate system from the system of Diamant that a
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`POSITA would not have been motivated to combine. Here, Petitioner gives a
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`high-level and vague explanation as to why a POSITA would allegedly be
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`motivated to combine Gazdic and Ryan with Diamant. Petition at 20. However,
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`Petitioner has not demonstrated any basis in Gazdic or Ryan for incorporating the
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`authentication technique of Diamant into Gazdic or Ryan. Indeed, there is no basis
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`20
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`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
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`because neither Gazdic nor Ryan recognize that its authentication program can be
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`corruptible and needs to be verified. Gazdic states that its verification operation is
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`“not necessary” after its boot-up authentication process executes. Gazdic, [0032].
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`Accordingly, a POSITA would not be motivated to supplement Gazdic and Ryan
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`with Diamant’s system for verifying its authentication program.
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`B. Ground 2: Claims 4, 8, 9, and 10 are Patentable over Gazdic,
`Ryan, Diamant, and Alcorn
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`Petitioner has not demonstrated a reasonable likelihood that independent
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`claims 1, 5, and 9 are obvious over Ryan, Gazdic, and Diamant and does not assert
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`that Alcorn (EX. 1007) cures any of the above-noted deficiencies. Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood that claims 4, 8, 9, and 10
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`of the ’990 Patent, which depend from claims 1, 5, and 9, are unpatentable over
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`Gazdic, Ryan, Diamant, and Alcorn.
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`C. Ground 3: Claims 2-3 and 6-7 are Patentable Over Ryan, Gazdic,
`Diamant, Alcorn, and Gatto
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`Petitioner has not demonstrated a reasonable likelihood that claims 1, 5, and
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`9 are obvious over Ryan, Gazdic, and Diamant and does not assert that Alcorn or
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`Gatto (Ex. 1027) cures any of the above-noted deficiencies. Accordingly,
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`Petitioner has not demonstrated a reasonable likelihood that claims 2-3 and 6-7 of
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`the ’990 Patent, which depend from claims 1, 5, and 9, are unpatentable over
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`Gazdic, Ryan, Diamant, Alcorn, and Gatto.
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`21
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`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
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`D. Ground 4: Claims 1, 5, and 9 are Patentable Over Takeda in view
`of Diamant
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`The Board should decline to institute inter partes review at least because
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`claims 1, 5, and 9 are patentable over and not rendered obvious by Takeda in view
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`of Diamant.
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`1.
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`Petitioner has not Demonstrated That Takeda in View of
`Diamant Discloses the Claimed Mutual Authentication
`Program
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`As previously discussed, independent Claim 1 of the ’990 Patent recites two
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`separate authentication programs, an authentication program and a mutual
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`authentication program, which perform bi-directional authentication to authenticate
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`each other. See supra § V.A.1. Neither Takeda nor Diamant teaches the claimed
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`mutual authentication program.
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`Petitioner admits that Takeda does not disclose the claimed mutual
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`authentication program:
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`Instruction/data block 500 included in the video game
`program 502, thus, can contain executable instructions,
`but does not itself authenticate Takeda’s ‘software
`authentication program’ so as to qualify as the claimed
`‘mutual authentication program.’” Nonetheless, it would
`have been obvious to supplement instruction/data block
`500 to provide a program that authenticates the ‘software
`authentication program.
`Petition at 56 (emphasis added).
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`22
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`IPR2020-01218 (U.S. Patent No. 8,095,990)
`Patent Owner’s Preliminary Response
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`Despite Petitioner’s assertions above that it would be obvious to modify
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`Taketa, it would not be obvious to modify Takeda with a claimed mutual
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`authentication program. See PTAB Consolidated Trial Practice Guide, November
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`2019, at 36 (“Expert testimony, however, cannot take the place of a disclosure in a
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`prior art reference, when the disclosure is requires as part of the unpatentability
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`analysis.”); K/S Himpp, 751 F.3d at 1365. First, Takeda discusses several methods
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`of authenticating game programs that were available before its priority date, yet it
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`fails to disclose a mutual authentication program, confirming such a modification
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`was not obvious. Takeda, 30:23-63.
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`Second, Takeda teaches away from supplementing its disclosure with a
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`mutual authentication program. See Arctic Cat Inc. v. Bombardier Rec. Prods.
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`Inc., 876 F.3d 1350, 1360 (Fed. Cir. 2017) (“[P]rior art teaches away when a
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`person of ordinary skill, upon reading the reference, would be discouraged from
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`following the path set out in the reference, or would be led in a direction divergent
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`from the path that was taken by the applicant."). Takeda describes several
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`considerations for choosing an authentication technique including, and each of
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`these consideration