Case: 22-1569 Document: 55 Page: 1 Filed: 08/30/2023
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`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`BOT M8 LLC,
`Appellant
`
`v.
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES PA-
`TENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2022-1569, 2022-1570
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2020-
`00726, IPR2020-01288.
`______________________
`
`Decided: August 30, 2023
`______________________
`
`Paul J. Andre, Kramer Levin Naftalis & Frankel LLP,
`Redwood Shores, CA, argued for appellant. Also repre-
`sented by James R. Hannah, Lisa Kobialka, Shreya Ram-
`chandani; Jeffrey Eng, Aaron M. Frankel, Cristina Martin
`
`

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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
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`ez, New York, NY.
`
` Abran J. Kean, Erise IP, P.A., Greenwood Village, CO,
`argued for appellee. Also represented by Eric Allan Bu-
`resh, Overland Park, KS.
`
` William LaMarca, Office of the Solicitor, United
`States Patent and Trademark Office, Alexandria, VA, for
`intervenor. Also represented by Michael S. Forman,
`Thomas W. Krause, Farheena Yasmeen Rasheed.
` ______________________
`
`Before PROST, REYNA, and CUNNINGHAM, Circuit Judges.
`CUNNINGHAM, Circuit Judge.
`Bot M8 LLC appeals from final written decisions is-
`sued in two Patent Trial and Appeal Board inter partes re-
`views that found claims 1–5 of U.S. Patent No. 8,112,670
`and claims 1–10 of U.S. Patent No. 7,664,988 (collectively,
`the “Challenged Claims” or “Challenged Patents,” respec-
`tively) to be unpatentable. Sony Interactive Ent. LLC v.
`Bot M8, LLC, IPR2020-00726, 2021 WL 4876235, at *1
`(P.T.A.B. Oct. 4, 2021) (“Decision I”); Sony Interactive Ent.
`LLC v. Bot M8, LLC, IPR2020-01288, 2022 WL 495115, at
`*1 (P.T.A.B. Feb. 15, 2022) (“Decision II”). On appeal, Bot
`M8 challenges the Board’s determinations based on its con-
`structions of the claim terms “fault inspection program”
`and “boot program.” We disagree that the Board adopted
`erroneous constructions of those terms and affirm.
`I. BACKGROUND
`The ’670 patent is a continuation of the ’988 patent and
`is entitled “Gaming Apparatus Having Memory Fault De-
`tection.”1 The Challenged Patents disclose “an information
`
`1 Because the Challenged Patents are related and
`share a specification, we generally cite to the ’670 patent.
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`process device in which it can be guaranteed that a fault
`inspection program properly operates even if a fault occurs
`in a memory device which is inspected through the fault
`inspection program.” ’670 patent col. 1 ll. 35–40. Among
`other things, the Challenged Patents accomplish this ob-
`jective by using a “fault inspection program” stored in one
`memory device that inspects faults in a second memory de-
`vice. Id. col. 1 ll. 41–65. Because the fault inspection pro-
`gram is not stored in the memory it inspects, it “properly
`operates” independent of whether that memory has a fault.
`Id. col. 1 ll. 60–65.
`Claim 1 of the ’670 patent recites:
`1. A gaming device configured to execute a game,
`the gaming device comprising:
`a mother board on which a first memory de-
`vice is provided;
`a second memory device configured to store
`a game application program, the second
`memory device being connected to the
`mother board; and
`a control device for executing a fault inspec-
`tion program for the second memory device
`to inspect whether or not a fault occurs in
`the second memory device;
`wherein the fault inspection program is
`stored in the first memory device, and the
`control device completes the execution of
`the fault inspection program before the
`game is started.
`Id. col. 4 l. 61–col. 5 l. 7 (emphasis added). Dependent
`claim 2 introduces a “boot program” and recites:
`2. The gaming device according to claim 1,
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
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`wherein the first memory device stores a
`boot program executed when the gaming de-
`vice is started to operate, and
`wherein the control device executes the
`fault inspection program after the boot pro-
`gram is executed.
`Id. col. 5 ll. 8–12 (emphases added). Independent claim 4
`contains similar requirements to claim 1, but it inspects
`faults in the “game application program” stored in the
`memory device, not the memory device itself, and recites:
`4. A gaming device configured to execute a game,
`the gaming device comprising:
`a ROM configured to store a fault inspec-
`tion program;
`a memory device which is electrically re-
`writable a game application program
`stored therein;
`a control device configured to execute the
`fault inspection program to inspect whether
`or not a fault occurs in the game application
`program stored in the memory device;
`wherein the control device executes the
`fault inspection program when the gaming
`device is started to operate and completes
`the execution of the fault inspection pro-
`gram before the game is started.
`Id. col. 5 l. 15–col. 6 l. 10 (emphasis added).
`Claim 1 of the ’988 patent generally combines these re-
`quirements into a single claim:
`1. A gaming device configured to execute a game,
`the gaming device comprising:
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`a first memory device for storing a boot pro-
`gram executed when the gaming device is
`started to operate;
`a mother board on which the first memory
`device is provided;
`a second memory device for storing a game
`application program for the game, the sec-
`ond memory device being connected to the
`mother board; and
`a control device for executing a fault inspec-
`tion program for the gaming device to in-
`spect whether or not a fault occurs in the
`second memory device and the game appli-
`cation program stored therein,
`wherein the fault inspection program is
`stored in the first memory device, and the
`control device executes the fault inspection
`program when the gaming device is started
`to operate and completes the execution of the
`fault inspection program before the game is
`started.
`’988 patent col. 4 l. 55–col. 5 l. 5 (emphases added).
`In its final written decision for the IPR on the ’670 pa-
`tent, the Board concluded, among other things, that claims
`1–4 are unpatentable based on Sugiyama2 in combination
`with Gatto,3 and claim 5 is unpatentable based on
`Sugiyama in combination with Gatto and Yamaguchi.4 De-
`cision I at *2, *17. For the IPR on the ’988 patent, the
`
`Japanese Unexamined Patent Application Publica-
`2
`tion Disclosure No. JP 2000-35888 published Feb. 2, 2000.
`3 WIPO Int’l Publication No. WO 2004/004855 A1
`published Jan. 15, 2004.
`4 U.S. Patent No. 5,844,776 issued Dec. 1, 1998.
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`Board found, among other things, that claims 1–9 are un-
`patentable based on Sugiyama in combination with Gatto,
`and claim 10 is unpatentable based on Sugiyama in combi-
`nation with Gatto and Cheston.5 Decision II at *24.
`Bot M8 timely appealed. We have jurisdiction under
`28 U.S.C. § 1295(a)(4)(A).
`II. DISCUSSION
`“We review the Board’s legal conclusions de novo and
`its factual findings for substantial evidence.” Univ. of
`Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160
`(Fed. Cir. 2021) (citing Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987, 991 (Fed. Cir. 2017)). “The substantial evi-
`dence standard asks ‘whether a reasonable fact finder
`could have arrived at the agency’s decision,’ and ‘involves
`examination of the record as a whole, taking into account
`evidence that both justifies and detracts from an agency’s
`decision.’” Id. (quoting OSI Pharms., LLC v. Apotex Inc.,
`939 F.3d 1375, 1381–82 (Fed. Cir. 2019)).
`“Obviousness is a question of law based on underlying
`findings of fact.” Id. (quoting OSI Pharms., 939 F.3d at
`1382). Whether the prior art teaches a claim limitation and
`whether a skilled artisan would have been motivated to
`modify or combine prior art teachings are questions of fact.
`Id. (first citing Tech. Consumer Prods., Inc. v. Lighting Sci.
`Grp. Corp., 955 F.3d 16, 22 (Fed. Cir. 2020); and then citing
`OSI Pharms., 939 F.3d at 1382)). “The substantial evi-
`dence standard asks ‘whether a reasonable fact finder
`could have arrived at the agency’s decision,’ and ‘involves
`examination of the record as a whole, taking into account
`evidence that both justifies and detracts from an agency’s
`decision.’” Id. (quoting OSI Pharms., 939 F.3d at 1381–82).
`
`
`5 U.S. Patent Application Publication No. US
`2003/0135350 A1 published July 17, 2003.
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`Bot M8 argues that the Board’s decisions based on ob-
`viousness should be vacated or reversed because they are
`premised on an erroneous construction of “fault inspection
`program.” Appellant’s Br. 3. First, Bot M8 argues that the
`claims, specification, and prosecution history support de-
`fining the “fault inspection program” to be a distinct pro-
`gram from the “boot program.” Id. at 23–32. Second, Bot
`M8 argues that the claims, specification, and prosecution
`history confirm that the “fault inspection program” must
`inspect for faults in both hardware and software. Id. at 45–
`53. Separate from claim construction, Bot M8 argues that
`substantial evidence does not support the Board’s obvious-
`ness findings based on Sugiyama because it lacks a “fault
`inspection program” capable of inspecting faults in both
`hardware and software. Id. at 53–56. We address each
`argument in turn.6
`A. Other Than a Boot Program
`“When construing claim terms, we first look to, and pri-
`marily rely on, the intrinsic evidence, including the claims
`themselves, the specification, and the prosecution history
`of the patent, which is usually dispositive.” Sunovion
`Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,
`1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); and then
`citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
`1582 (Fed. Cir. 1996)). “The specification is always highly
`
`6 Bot M8 originally challenged the Board’s institu-
`tion decisions as allegedly violating the Constitution’s Ap-
`pointments Clause, but it withdrew that challenge before
`oral argument. ECF No. 51. Further, because we agree
`with the Board’s unpatentability determinations for all
`challenged claims based on Sugiyama, we do not reach Bot
`M8’s arguments challenging the Board’s unpatentability
`determinations based on U.S. Patent Application Publica-
`tion No. US 2004/0054952 A1.
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`relevant to the claim construction analysis and is, in fact,
`the single best guide to the meaning of a disputed term.”
`Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359,
`1363 (Fed. Cir. 2016) (cleaned up); see also Phillips, 415
`F.3d at 1315.
`“The words of a claim are generally given their ordi-
`nary and customary meaning as understood by a person of
`ordinary skill in the art when read in the context of the
`specification and prosecution history.” Thorner v. Sony
`Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citing Phillips, 415 F.3d at 1313). One exception is
`“when a patentee sets out a definition and acts as his own
`lexicographer.” Id. “‘To act as its own lexicographer, a pa-
`tentee must clearly set forth a definition of the disputed
`claim term other than its plain and ordinary meaning’ and
`must ‘clearly express an intent to redefine the term.’” Hill-
`Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`Cir. 2014) (quoting Thorner, 669 F.3d at 1365).
`The patentee defined “fault inspection program,” such
`that lexicography applies here. The specification states
`that “a program for inspecting whether or not a fault such
`as damage, change or falsification occurs in the programs
`or data” is “hereinafter, abbreviated as” a “fault inspection
`program.” ’670 patent col. 1 ll. 20–27. See, e.g., Abbott
`Lab’ys v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed.
`Cir. 2007) (explaining “as used herein, means” to be defini-
`tional); Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1306 (Fed.
`Cir. 2017) (finding “refers to” and “as defined herein” to be
`definitional); Kyocera Senco Indus. Tools Inc. v. Int’l Trade
`Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022) (finding “re-
`ferred to herein” to be definitional). The Board correctly
`adopted this definition as the construction for the “fault in-
`spection program” claim term. Decision I at *4; Decision II
`at *6.
`Citing Becton, Dickinson & Co. v. Tyco Healthcare
`Group, LP, Bot M8 argues that because the claims
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`separately list “fault inspection program” and “boot pro-
`gram,” the claim language supports finding that those ele-
`ments are “distinct components.” Appellant’s Br. 23–24
`(citing 616 F.3d 1249, 1254 (Fed. Cir. 2010)); see also ’670
`patent col. 4 l. 61–col. 5 l. 7 (claim 1) (requiring “fault in-
`spection program”); id. col. 5 ll. 8–12 (claim 2) (adding “boot
`program” and executing “fault inspection program after the
`boot program is executed”); ’988 patent col. 4 l. 55–col. 5 l.
`5 (claim 1) (requiring both “fault inspection program” and
`“boot program”). In Bot M8’s view, the claim language re-
`quires that the “fault inspection program” must be “a pro-
`gram ‘other than’ the boot program,” i.e., that these two
`limitations must be performed by distinct programs rather
`than by an integrated program. Appellant’s Br. 25–26; see
`also Oral Arg. at 6:25–7:01, available at https://oralargu-
`ments.cafc.uscourts.gov/default.aspx?fl=22-1569_0405202
`3.mp3.
`We are not persuaded that the claim language supports
`modifying the patentee’s definition of “fault inspection pro-
`gram” to add “other than a boot program.” In Becton, we
`stated “[w]here a claim lists elements separately, the clear
`implication of the claim language is that those elements
`are distinct components of the patented invention.” 616
`F.3d at 1254 (cleaned up) (citations omitted). But part of
`our rationale in Becton was that it would render the as-
`serted claims “nonsensical” for the claimed “spring means”
`to be connected to the “hinged arm” if they were the same
`structure. Id. at 1255. No similar “nonsensical” result
`arises here, where the claims merely list “fault inspection
`program” and “boot program” separately or require the ex-
`ecution of the fault inspection program after the boot pro-
`gram. See, e.g., ’670 patent claims 1–2; ’988 patent claim
`1; see also Oral Arg. at 7:02–7:09 (Bot M8’s counsel agree-
`ing it is possible to run features sequentially even within
`the same program). Thus, we disagree that Becton requires
`that the “fault inspection program” and “boot program”
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`must be performed by distinct programs to be “‘distinct
`component[s]’ of the patented invention.” 616 F.3d at 1254.
`We also disagree that Bot M8’s citations to the specifi-
`cation support requiring a distinct “fault inspection pro-
`gram” and “boot program.” See Appellant’s Br. 27–29
`(citing ’670 patent col. 2 ll. 46–52, col. 3 l. 59–col. 4 l. 14,
`col. 4 ll. 1–32, Fig. 1). Bot M8’s citations merely show the
`existence of a “boot program storing area 13a” and a “fault
`inspection program storing area 13b” in memory, not that
`each limitation must be contained in a distinct program.
`Bot M8 further supports its arguments by citing to the
`prosecution history of the ’988 patent where the applicant
`distinguished the prior art by arguing that “the boot pro-
`gram and the fault inspection program are distinct.” Ap-
`pellant’s Br. 29–32; see also J.A. 1568–69 (’988 patent
`Prosecution History, Applicant Remarks dated Jul. 30,
`2009). We are not persuaded by Bot M8’s reliance on the
`prosecution history. Even assuming the patentee’s state-
`ments for the ’988 patent apply equally to both Challenged
`Patents, we do not agree that the applicant’s statement—
`that “the boot program and the fault inspection program
`are distinct”—means the boot program and the fault in-
`spection program are distinct programs. See J.A. 1568–69
`(’988 patent Prosecution History, Applicant Remarks dated
`Jul. 30, 2009). After the examiner’s earlier rejection, the
`applicant amended the claims to require that the “fault in-
`spection program” is executed “for the gaming device” and
`inspects faults in the “game application program.” J.A.
`1563–66 (’988 patent Prosecution History, Amended
`Claims dated Jul. 30, 2009) (emphasis added to indicate
`added text). We agree with Sony that the applicant’s state-
`ments, in context, merely specify that the amended claim
`language is directed to the function of the “fault inspection
`program” (i.e., to be executed for the gaming device to in-
`spect a game application program) rather than suggesting
`or changing the definition of the “fault inspection program”
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`to require that it be a distinct program from the “boot pro-
`gram.” Appellee’s Br. 29–30; J.A. 1563–64, 1569.
`Accordingly, we agree with the Board that the proper
`construction of “fault inspection program” does not require
`that it be a distinct program from the boot program.
`B. Inspecting Hardware and Software
`As discussed above, the patents define the “fault in-
`spection program” as “a program for inspecting whether or
`not a fault such as damage, change or falsification occurs
`in the programs or data.” ’670 patent col. 1 ll. 20–27; see
`also ’988 patent at col. 1 ll. 18–26. The specification also
`teaches that the “present invention” relates to an “infor-
`mation process device in which a fault in hardware or soft-
`ware is inspected.” ’670 patent col. 1 ll. 17–18; ’988 patent
`col. 1 ll. 15–16. Thus, the specification supports construing
`“fault inspection program” to require inspecting faults in
`hardware or software.
`Bot M8 argues that because some claims require in-
`specting faults in hardware (e.g., ’670 patent claim 1); some
`claims require inspecting faults in software (e.g., ’670 pa-
`tent claim 4); and some claims require inspecting faults in
`both hardware and software (e.g., ’988 patent claim 1), then
`it is “tautological” that “fault inspection program must be
`capable of inspecting for both types of faults.” Appellant’s
`Br. 46–48. Sony argues that the claims already specify
`what the “fault inspection program” must inspect—hard-
`ware or software—such that Bot M8’s additional require-
`ment would be “redundant.”7 Appellee’s Br. 27–28. We
`agree with Sony.
`
`
`7 Bot M8 also argues that Sony argued in parallel lit-
`igation in the Northern District of California that the “fault
`inspection program” should be construed to inspect faults
`in both hardware and software. Appellant’s Br. 52–53; see,
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`Bot M8’s “capable of” argument fundamentally misun-
`derstands the structure of the claims, which are not drawn
`to the capability of the fault inspection program. Bot M8
`readily agrees that the surrounding claim language speci-
`fies whether the “fault inspection program” inspects faults
`in hardware, software, or both. Appellant’s Br. 46–47; see
`also Decision II at *6 (“[T]he claims of the ’988 patent ex-
`pressly require a ‘fault inspection program’ to inspect for
`faults in both the second memory device (hardware) and
`the game application program (software).”). Thus, Bot
`M8’s arguments would render certain claim language su-
`perfluous by repeating the requirement of the claims that
`the “fault inspection program” inspects both hardware and
`software in each claim. See ’988 patent claim 1; Intel Corp.
`v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is
`highly disfavored to construe terms in a way that renders
`them void, meaningless, or superfluous.” (quoting Wasica
`Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288
`n.10 (Fed. Cir. 2017))).
`In other instances, Bot M8’s arguments would lead to
`improperly importing requirements from some claims into
`others by requiring the “fault inspection program” to have
`the capability to inspect faults in both hardware and soft-
`ware, despite those claims only requiring the fault inspec-
`tion program to inspect one kind of fault. See, e.g., ’670
`patent claims 1 and 4; see also Phillips, 415 F.3d at 1314
`(“Other claims of the patent in question, both asserted and
`unasserted, can also be valuable sources of enlightenment
`
`
`e.g., Sony Mot. to Dismiss at 12–13, Bot M8 LLC v. Sony
`Corp. of Am., No. 3:19-CV-07027-WHA (N.D. Cal. Dec. 19,
`2019). We disagree. Any alleged inconsistencies identified
`by Bot M8 merely reflect that the claims of the ’988 patent
`require the inspection of both kinds of faults, which is con-
`sistent with Sony’s arguments here. See Appellee’s Br. 30–
`32.
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`as to the meaning of a claim term.”); Unwired Planet, LLC
`v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“If the
`patentee intended to restrict the claims-at-issue to require
`a voice input to travel over a particular type of channel, it
`could have included that same limitation.”). We decline to
`add limitations to the claims that the patentee did not.
`We agree with the Board that the construction of “fault
`inspection program” does not require it to inspect both
`hardware and software.
`C. Prior Art
`Having rejected both of Bot M8’s proposed construc-
`tions of “fault inspection program,” we turn to whether the
`Board’s analysis of the prior art is supported by substantial
`evidence. We conclude that it is.
`First, Bot M8 argues that the Board failed to identify
`“two distinct programs” in the Sugiyama-based combina-
`tion of prior art. Appellant’s Br. 33–37; Appellant’s Reply
`Br. 12. Bot M8’s arguments are premised on its claim con-
`struction argument requiring the “fault inspection pro-
`gram” to be “other than the boot program,” which we reject
`as explained above.
`Second, Bot M8 also challenges whether substantial
`evidence supports the Board’s findings for those claims
`from the ’988 patent that require inspecting faults in both
`hardware and software.8 Appellant’s Br. 54. Bot M8
`
`
`8 Outside of its claim construction argument that the
`“fault inspection program” must inspect both hardware
`and software, Bot M8 does not appear to challenge that
`substantial evidence supports the Board’s finding as to the
`’670 patent. Appellant’s Br. 54 (“[T]he claim construction
`alone is dispositive for the ’670 Patent because the Board’s
`obviousness determination was based on rejecting Bot M8’s
`construction.”); see also Oral Arg. at 10:48–11:34 (“That
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`BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
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`argues that “Sugiyama can only determine that an abnor-
`mality occurred, not whether it occurred in” hardware or
`software. Id. at 55. Bot M8 agrees that Sugiyama can de-
`tect “hardware abnormalities, like memory failures,” but
`argues that it “cannot detect software faults.” Id. at 55–56.
`We conclude that the Board’s analysis is supported by
`substantial evidence. As to the ’988 patent, the Board
`found that Sugiyama alone teaches inspecting both hard-
`ware and software faults. Decision II at *13. The Board
`relied on Sugiyama’s disclosure that it can identify
`whether there is “damage to the hard disk drive 24 itself”
`(i.e., hardware) or “[i]f there is no damage to the hard disk
`drive itself, for example, when the stored data is destroyed”
`(i.e., software). Id. at *9 (internal quotations omitted), *13;
`see also Sugiyama ¶¶ 23–24. We agree that substantial
`evidence supports the Board’s factual findings underlying
`the unpatentability determinations for Sony’s Sugiyama-
`based grounds.
`
`III. CONCLUSION
`We have considered Bot M8’s remaining arguments
`and find them unpersuasive. For the above reasons, we
`affirm.
`
`AFFIRMED
`
`
`argument, that it had to be both hardware and software,
`does not apply to the ’670 [patent].”). To the extent Bot M8
`challenges the Board’s findings that Sugiyama in combina-
`tion with Gatto renders the claims of the ’670 patent un-
`patentable as obvious, we conclude that substantial
`evidence supports the Board’s factual findings underlying
`its unpatentability determinations. Decision I at *7–11.
`
`