IPR2021-00056
`U.S. Patent No. 7,061,488
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TAKE-TWO INTERACTIVE SOFTWARE, INC.
`Petitioner
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`v.
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`INFERNAL TECHNOLOGY, LLC and
`TERMINAL REALITY, INC.
`Patent Owner
`____________
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`Case No. IPR2021-00056
`U.S. Patent No. 7,061,488
`____________
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,061,488
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
`I.
`II. SUMMARY OF THE PATENT ......................................................................... 1
`A. Description of the Alleged Invention of the Patent ................................... 1
`B.
`Summary of the Patent’s Prosecution History ........................................... 4
`C. Level of Skill of a Person Having Ordinary Skill in the Art ..................... 5
`III. REQUIREMENTS FOR REVIEW UNDER 37 C.F.R. § 42.104 ...................... 5
`A. Grounds for Standing Under § 42.104(a) ................................................... 5
`B.
`Identification of Challenge Under § 42.104(b) and Relief Requested ...... 6
`C. Claim Construction Under § 42.104(b)(3) ................................................. 7
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ..................................................................11
`A.
`Scheibl and Snyder Render Claims 1-7, 9-10, 27-33, 35-37, and 50
`Obvious ..............................................................................................................11
`i. U.S. Patent No. 5,377,313 (“Scheibl”) ....................................................11
`ii. U.S. Patent No. 5,870,097 (“Snyder”) .....................................................14
`B. Limitation by Limitation Comparison .....................................................26
`i. Claim 1 .....................................................................................................26
`ii. Claim 27 ...................................................................................................44
`iii. Claims 2 and 28 ........................................................................................45
`iv. Claims 3 and 29 ........................................................................................48
`v. Claims 4 and 30 ........................................................................................49
`vi. Claims 5 and 31 ........................................................................................50
`vii. Claims 6 and 32 ........................................................................................51
`viii.Claims 7 and 33 .......................................................................................52
`ix. Claims 9 and 35 ........................................................................................53
`x. Claims 10 and 36 ......................................................................................54
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`xi. Claim 37 ...................................................................................................55
`xii. Claim 50 ...................................................................................................57
`V. THE BOARD SHOULD NOT DENY INSTITUTION UNDER 35 U.S.C.
`§§ 325(d), 314(a) ...............................................................................................58
`A. No Prior Art or Arguments Previously Presented ....................................58
`B. General Plastic Does Not Suggest Non-Institution .................................61
`VI. CONCLUSION .................................................................................................69
`VII. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ...........................70
`A. Real Party-In-Interest ...............................................................................70
`B. Related Matters ........................................................................................70
`C. Lead and Back-Up Counsel .....................................................................70
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`I.
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`U.S. Patent No. 7,061,488
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`INTRODUCTION
`Petitioner Take-Two Interactive Software, Inc. (“Petitioner”) requests an
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`Inter Partes Review of claims 1-7, 9-10, 27-33, 35-37, 50 (“Challenged Claims”)
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`of U.S. Patent No. 7,061,488 (“Patent”) (Ex. 1001). The Patent is directed to
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`shadow and light rendering techniques. The Patent itself explains that most steps
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`and techniques described by the Patent – combined in a particular order in the
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`claims – are conventional methods known in the art at the time of the alleged
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`invention of the Patent. The purported point of novelty of the Patent is the use of
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`an “accumulation buffer” to store particular information about light sources. But
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`such accumulation buffers were well-known in the art at the time of the Patent, as
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`were the particular order of steps recited in the claims.
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`II.
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`SUMMARY OF THE PATENT
`A. Description of the Alleged Invention of the Patent
`The Patent generally describes methods and systems for rendering shadows
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`and lighting in computer graphic simulations. Ex. 1001, 1:10-14. The Patent
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`explains that conventional methods are used to perform most steps of the alleged
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`invention. See id. at 6:55-59; 7:13-16; 8:5-10; 8:22-26; 8:41-44; 9:60-66.
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`Figure 2 of the Patent (reproduced below) depicts a scene 10 that includes at
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`least one three-dimensional (“3D”) object 12, viewed from a camera perspective
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`14. Id. 6:30-39.
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`A first light source 16 and a second light source 18 illuminate the scene 10. Id. at
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`6:39-43. An x, y, z “world space” coordinate system 20 defines the 3D object 12
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`and two light sources 16, 18. Id. at 6:51-55.
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`The Patent’s Figure 4 (reproduced below) shows, in flowchart form, a
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`computer system’s 40 process 100 for rendering lighting and shadows for the scene
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`10. Id. at 8:40-42.
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`The process 100 “begins by rendering the camera’s view using ‘conventional
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`methods,’ producing camera image 51A and camera depth 51B.” Ex. 1007, 6
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`(citing Ex. 1001, 8:42-44). In step 104, the light source view from one of the light
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`sources is rendered. Ex. 1001, 8:44-46. In step 106, a pixel 60 in the camera
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`image 51A is transformed or otherwise used to determine a corresponding pixel
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`60’ in light #1’s image 51C (and light #1’s depth 51D) using transformation
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`calculations. Id. at 8:48-59. In step 108, if a transformed pixel 60’ is illuminated,
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`the corresponding pixel data value in the light image is added to the light
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`accumulation buffer 51G. Id. at 8:60-63. Step 110 shows that steps 106 and 108
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`are repeated for each pixel in the camera image 51A. Id. at 9:4-6. As mentioned
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`in step 112, after all pixels in the camera image 51A have been processed, the
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`process is repeated for each additional light source. Id. at 9:6-8. Next, in step 114,
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`a pixel data value from the camera image is multiplied by a corresponding pixel
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`data value from the light accumulation buffer 51G and the results are stored. Id. at
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`9:16-20. Step 116 shows that step 114 is repeated for each pixel in the camera
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`image. Id. at 9:21-22. In step 118, the resulting camera image is rendered and
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`displayed. Id. at 9:22-25.
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`Summary of the Patent’s Prosecution History
`B.
`The Application that resulted in the Patent was filed on December 6, 2001,
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`as U.S. App. No. 10/010,776 (the “’776 Application). See Ex. 1002, 2-3. The
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`’776 Application was filed as a continuation of U.S. App. No. 09/268,078, filed on
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`March 12, 1999, which issued as U.S. Patent No. 6,362,822 (the “’822 Patent”) on
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`March 26, 2002. See id. at 4. The ’776 Application was rejected twice by the
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`USPTO for double patenting over the ’822 Patent, to which the ’776 Application
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`claims priority. See id. at 179-82, 238-42. In response, the applicant amended the
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`claims and removed the term “computer screen” from numerous claims and filed a
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`terminal disclaimer. See id. at 244-61, 264-65. The ’488 Patent issued on June 13,
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`2006. Ex. 1001. The applicants did not cite, and the Examiner did not consider,
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`either Scheibl or Snyder, which form the grounds for cancellation stated herein.
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`C. Level of Skill of a Person Having Ordinary Skill in the Art
`A person having ordinary skill in the art (PHOSITA) at the time of the
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`Patent would have had a Bachelor’s of Science degree in electrical engineering,
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`computer science, software engineering, or equivalent, with at least two years of
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`work experience in the field of three-dimensional computer graphics. See Ex.
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`1007, 12; see also Stevenson Decl. (Ex. 1003), ¶ 61. Additional industry
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`experience or technical training may offset less formal education, while advanced
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`degrees or additional formal education may offset lesser levels of industry
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`experience. Id.
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`III. REQUIREMENTS FOR REVIEW UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing Under § 42.104(a)
`Petitioner certifies that the Patent is available for IPR and that the Petitioner
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`is not barred or estopped from requesting IPR challenging the claims of the Patent
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`because: (i) Petitioner is not the Patent’s owner, (ii) Petitioner has not filed a civil
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`action challenging the validity of any claim of the Patent, and (iii) this Petition is
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`filed less than one year after Patent Owner1 served Petitioner with a complaint
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`alleging infringement of the Patent.
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`B.
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`Identification of Challenge Under § 42.104(b) and Relief
`Requested
`37 C.F.R. § 42.104(b)(1)-(2): In view of the prior art and evidence
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`presented, IPR of claims 1-7, 9-10, 27-33, 35-37, 50 should be granted and such
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`claims should be found unpatentable and cancelled.
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`Proposed Grounds of Unpatentability
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`1 Claims 1-7, 9-10, 27-33, 35-37, 50 are § 103(a) obvious over
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`Exhibits
`Ex. 1004,
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`U.S. Patent No. 5,377,313 to Scheibl (“Scheibl”) in view of
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`Ex. 1005
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`U.S. Patent No. 5,870,097 (“Snyder”).
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`1 Without waiver, and expressly reserving all rights, defenses, and arguments,
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`Petitioner defines “Patent Owner” for these proceedings to include Terminal
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`Reality, Inc. and Infernal Technology, LLC. Infernal Technology, LLC identifies
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`Terminal Reality, Inc. as the Patent’s owner. Ex. 1020, at 8, n.1; Ex. 1008, at ¶¶ 2,
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`9 (“Infernal v. Take-Two Amended Complaint”). Infernal Technology, LLC asserts
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`that it is the exclusive licensee of all substantial interests in the Patent. Id.
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`2 Claims 1-7, 9-10, 27-33, 35-37, 50 are § 103(a) obvious over
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`Ex. 1004
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`U.S. Patent No. 5,377,313 to Scheibl (“Scheibl”) in view of
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`knowledge possessed by a PHOSITA.
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`§ 42.104(b)(4): Section IV below identifies where each element of the
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`Challenged Claims is found in the prior art.
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`§ 42.104(b)(5): The exhibit numbers of the evidence relied upon to support
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`the challenges are provided above and in Section IV, and the relevance of the
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`evidence is further provided in Section IV. Exhibits 1001–1044 are attached and
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`cited herein.
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`C. Claim Construction Under § 42.104(b)(3)
`In an IPR, a patent claim “shall be construed using the same claim
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`construction standard that would be used to construe the claim in a civil action
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`under 35 U.S.C. 282(b), including construing the claim in accordance with the
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`ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
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`§ 42.100(b) (as amended, effective Nov. 13, 2018); see also Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
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`For terms not listed below, Petitioner submits that no specific construction is
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`necessary for this proceeding.2 Although a district court’s construction of claim
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`terms is “instructive,” the Board is not bound by that construction. See Google Inc.
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`v. ContentGuard Holdings, Inc., Case No. CBM2015-00040, Paper No. 48 at 33
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`(PTAB Feb. 19, 2019); see also Power Integrations, Inc. v. Lee, 797 F.3d 1318,
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`1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound
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`by a prior judicial construction of a claim term.”). “Any prior claim construction
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`determination concerning a term of the claim in a civil action, or a proceeding
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`before the International Trade Commission, that is timely made of record in the
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`inter partes review proceeding will be considered.” 37 C.F.R. § 42.100(b).
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`In this Petition, Petitioner applies the claim construction adopted previously
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`by the district courts. See Ex. 1012; Ex. 1009; Ex. 1013. Petitioner does not waive
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`any argument in any litigation that claim terms in the Patent are indefinite or
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`2 Petitioner notes that the same claim construction order was issued in each of the
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`following cases: Infernal Technology, LLC v. Microsoft Corp., No. 2:18-cv-00144,
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`(E.D. Tex. Sep. 6, 2019), ECF No. 128 (Ex. 1009); Infernal Technology, LLC v.
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`Crytek, No. 2:18-cv-00284 (E.D. Tex. Sep. 6, 2019), ECF No. 57 (Ex. 1010);
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`Infernal Technology, LLC v. Activision Blizzard Inc., No. 3:18-cv-01397 (N.D.
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`Tex. Sep. 6, 2019), ECF No. 105 (Ex. 1011).
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`otherwise invalid, nor does Petitioner waive its right to raise additional issues of
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`claim construction in any litigation. Applicable constructions previously adopted
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`by the district court and/or agreed to by Patent Owner are summarized in the chart
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`below.
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`Term (claims)
`“providing” (claims 1-7, 9-10, 27-33,
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`Proposed Construction
`“making available”
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`35-36)
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`“observer data of a simulated multi-
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`“data representing at least the color of
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`dimensional scene” / “observer data
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`objects in a simulated multi-
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`associated with a simulated multi-
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`dimensional scene as viewed from an
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`dimensional scene” (claims 1-7, 9-10,
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`observer’s perspective”
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`27-33, 35-37, 50)
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`“light image data” (claims 1-7, 9-10,
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`“for each of the plurality of light
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`27-33, 35-37, 50)
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`sources, 2D data representing the light
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`emitted by the light source to
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`illuminate the scene as viewed from the
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`light source’s perspective”
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`“light accumulation buffer” (claims 1-
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`“memory for storing the light image
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`7, 9-10, 27-33, 35-36)
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`data for cumulative light falling on a
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`“comparing …”
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`“storing …”
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`region in the observer image
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`corresponding to the modeled point”
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`the comparing and storing steps are
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`completed before beginning the
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`“combining …” (claims 1-7, 9-10, 27-
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`combining step3
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`33, 35-36)
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`“outputting resulting image data”
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`“outputting for presentation to a user
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`(claims 1-7, 9-10, 27-33, 35-36)
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`the image data resulting from
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`combining at least a portion of the light
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`accumulation buffer with the observer
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`data”
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`See Ex. 1013, 1-3. Ex. 1012, 14, 19, 29-31; Ex. 1009, 49-52.
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`3 Petitioner notes, however, that Patent Owner’s Complaint against Petitioner
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`purports to construe the “comparing . . . ,” “storing . . . ,” and “combining” steps
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`such that the combining step may occur before the completion of the comparing
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`and storing steps. See claim limitations [1(c)], [1(d)], infra.
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`Scheibl and Snyder Render Claims 1-7, 9-10, 27-33, 35-37, and 50
`A.
`Obvious
`U.S. Patent No. 5,377,313 (“Scheibl”)
`i.
`Scheibl was filed on January 29, 1992, issued on December 27, 1994, and
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`thus is prior art under at least 35 U.S.C. § 102(b) (pre-AIA). Neither the Examiner
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`nor the Board has considered Scheibl in connection with the Patent.
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`Scheibl is directed to generating shadows in computer graphics display
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`systems. Ex. 1004, Abstract. Scheibl describes systems and methods for rendering
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`a scene having shadows produced by at least one light source. Id. Scheibl
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`addresses improving the processing time for enhancements in image quality,
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`namely generating shadows cast when objects block the illumination of one or
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`more light sources in a scene to be rendered. Id. at 1:38-42. Using lighting
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`equations, Scheibl determines the color and intensity of light for a selected pixel
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`due to a specific light source. See, e.g., id. at 12:45-65, 5:40-50. Scheibl
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`accomplishes shadowing in a cumulative manner by accumulating lighting values
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`from multiple light sources on an image. Id. at 8:41-54, Abstract.
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`The shadow generation process taught by Scheibl accumulates the lighting
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`data in the frame buffer by taking multiple passes through the data structure. Id. at
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`7:19-22. In a first pass, Scheibl renders the scene to the frame buffer and updates
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`the first z-buffer (viewpoint z-buffer), but the first pass lighting calculation uses
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`only the ambient component of the light specification to determine the lighting
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`values to be stored. Id. at 7:22-27. For each defined light source, two additional
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`processing passes are completed in combination. Id. at 7:57-58. In the first of
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`these additional passes (i.e., second pass), a “transformation matrix is set up in
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`such a way that the viewpoint is moved to the position of a light source.” Id. at
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`7:59-61. The approach maintains a mapping between a viewpoint and a light
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`source by interpolating the respective z-buffer addresses into dual z-buffers. Id. at
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`13:27-30. The frame buffer is not updated in this pass, but the second z-buffer
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`(light source view z-buffer) resulting from the transformation calculation is now
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`used. Id. at 7:61-64.
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`In the next pass over the data, the shaded image and shadows are generated
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`in parallel without consideration of ambient lighting. Id. at 8:8-9. Scheibl
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`specifically teaches determining whether the pixel is visible to the light source by
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`comparing the pixel’s transformed depth value in the light source view with a
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`stored value in the corresponding location of the second z-buffer. Id. at 12:45-65.
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`If the selected pixel is both visible and lit, then the frame buffer is updated in a
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`cumulative manner with each computed lighting value for the pixel being added to
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`the contents already there. Id. at 12:45-65, 8:41-54. Figure 4C2 represents a
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`relevant portion of the shadow generation process in Scheibl:
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`Once all light sources have been processed, the “frame buffer contains the
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`sum of color intensities due to any ambient light and each of the defined light
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`sources (i), including any shadows defined thereby. Id. at 13:13-17. “In this way,
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`multiple light sources are accumulated on the image.” Id. at 8:48-50. The
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`cumulatively lit image is subsequently displayed on a monitor. Id. at 8:48-52.
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`Scheibl is reasonably pertinent to the Patent at least because it seeks to solve
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`a similar problem as the Patent, namely generating graphics allowing for multiple
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`light sources to be modeled in a more efficient and realistic manner. Ex. 1001,
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`2:65-3:3. As their similar titles suggest—Scheibl is “Computer Graphics Display
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`Method and System with Shadow Generation” and the Patent is “Lighting and
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`Shadowing Methods and Arrangements for Use in Computer Graphic
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`Simulations—Scheibl and the Patent both focus on methods for generating
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`shadows in computer graphics. Ex. 1003, ¶ 78. For example, Scheibl seeks to
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`improve problems with known shadow rendering techniques by enhancing
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`processing times where multiple light sources are involved “so that user
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`interactiveness with the graphics system is optimized.” Ex. 1004, 3:65-4:11. The
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`Patent similarly suggests that when there are multiple light sources, prior methods
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`can prove to be too burdensome, “diminishing the effectiveness of the resulting
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`interactive real-time graphics.” Ex. 1001, 2:57-63. For at least this reason, Scheibl
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`is analogous to the Patent. Ex. 1003, ¶ 78.
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`U.S. Patent No. 5,870,097 (“Snyder”)
`ii.
`Snyder was filed on June 27, 1996, issued on February 9, 1999, and thus is
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`prior art under at least 35 U.S.C. § 102(a) and (e) (pre-AIA). Snyder is directed to
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`“improved methods and graphics rendering systems for shadowing images.” Ex.
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`1005, at 4:28-29. To create shadows, the system “includes three passes through
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`the graphics rendering pipeline: 1) shadow depth map rendering; 2) usual scene
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`rendering; and 3) shadow filtering.” Id. at 86:22-27.
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`In the first pass, a scene is rendered from the perspective of a light source to
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`compute a shadow depth map. Id. at 4:42-44, 86:28-30. For multiple light sources,
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`shadow depth maps are created for each lighting source and are stored. Id. at 4:45-
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`60, 86:59-87:2. In the second pass, the scene is rendered “from the perspective of
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`the viewpoint and transforms the pixel coordinates and depth values to light space
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`coordinates.” Id. at 4:61-64. In the third pass, the transformed depth value for a
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`pixel in the rendered scene from the perspective of the light source is compared to
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`the shadow depth map to compute an attenuation coefficient, which is a filter as a
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`function of position in the shadow depth map corresponding to which portions of a
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`surface are in shadow based on computed depth values. Id. at 4:64-5:19, 87:13-20.
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`The attenuation coefficient is then applied to the pixel data, including for example
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`light color values, at a corresponding pixel location in an image illuminated by the
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`light source and rendered from the perspective of the viewpoint. Id. at 4:67-5:3,
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`87:13-40.
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`Snyder is reasonably pertinent to the Patent because it seeks to solve a
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`similar problem as the Patent, namely generating graphics allowing for multiple
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`light sources to be modeled in a more efficient and realistic manner. Ex. 1001 at
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`2:65-3:3. As their similar titles suggest—Snyder is titled “Method and System for
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`Improving Shadowing in a Graphics Rendering System” and the Patent is titled
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`“Lighting and Shadowing Methods and Arrangements for Use in Computer
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`Graphic Simulations”—Snyder and the Patent both focus on methods for
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`generating shadows in computer graphics. See id. at Abstract; Ex. 1005, Abstract.
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`For example, Snyder seeks to improve problems with known shadow rendering
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`techniques “to achieve smoother transitions between shadowed and un-shadowed
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`portions of an image, even for lower resolution shadow maps.” Ex. 1005, 5:28-31.
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`The Patent similarly suggests that when there are multiple light sources, prior
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`methods can prove to be too burdensome, “diminishing the effectiveness of the
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`resulting interactive real-time graphics.” Ex. 1001 at 2:58-64. Therefore, Snyder
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`is analogous prior art to the Patent.
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`1. Motivation to Combine and Expectation of Success
`It would have been obvious to a PHOSITA at the time of the alleged
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`invention to modify the image rendering system described by Scheibl to include an
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`accumulation buffer for storing light image data according to the teachings of
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`Snyder. Both Scheibl and Snyder address problems associated with image
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`rendering, including shadowing involving light image data from multiple light
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`sources. Ex. 1004, 1:6-12; Ex. 1005, 4:40-5:3. Specifically, both references
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`involve processes for accumulating light image data related to multiple light
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`sources. Ex. 1004, 13:13-15; Ex. 1005, 79:58-67, 80:12-21. Both references
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`similarly teach the combination of light image data with object data to render a
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`display image. Ex. 1004, 8:46-50, Ex. 1005, 87:13-20. The main difference
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`between the two references is where the light image accumulation memory sits in
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`the processing system; specifically, either (a) outside the repeated computing steps
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`to save processing time by utilizing memory or (b) within the repeated computing
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`steps to save memory at the cost of processing time. This is a routine trade-off in
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`the field known as the “time-memory trade-off.” Ex. 1003, ¶¶ 50-54, 82.
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`Alternating between options (a) and (b) was a conventional design choice for a
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`PHOSITA at the time of the alleged invention. Id.
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`A PHOSITA also would have been motivated by the teachings of, inter alia,
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`Williams to modify the rendering method of Scheibl according to the teachings of
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`Snyder to place the light image accumulation buffer and stored light image data
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`outside the repeated computing steps and make the process more efficient by
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`utilizing memory to reduce computations. Ex. 1003, ¶ 83; Ex. 1005, 86:59-87:2;
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`Ex. 1021, at 270. Such a combination is the application of a known technique of
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`the time-memory trade-off to a known process of shadow rendering that would not
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`have required undue experimentation and would have yielded predictable results.
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`Ex. 1003, ¶ 83. A PHOSITA would have known of this routine trade-off at the
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`time of the alleged invention and would have been motivated to make such a
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`modification in order to reduce the processing time (and amount of computations)
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`necessary to carry out the shadow rendering method, a benefit expressly suggested
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`by Williams. Id.
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`A PHOSITA would have had a reasonable expectation of success in making
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`such modifications to Scheibl because Scheibl and Snyder both describe a similar
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`series of steps involved in image rendering systems. Id. at ¶ 84. A PHOSITA
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`would have understood at the time of the alleged invention that there are a finite
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`number of solutions to the time-memory trade-off, and storing data outside
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`repeated computations to combine at the end of the computation steps is a known
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`and straightforward technique to modify to Scheibl. Id. Furthermore, Scheibl and
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`Snyder both describe a similar series of steps involved in graphics display systems.
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`For example, the process of Scheibl would be largely unchanged in combination
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`with Snyder—the only change would be that the light image data would be
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`accumulated on intermediate memory (i.e., a light accumulation buffer) before
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`being combined with the observer data. Id. Therefore, the combination of Scheibl
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`and Snyder would not have required undue experimentation and would have
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`yielded predictable results. Id.
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`2. No Objective Evidence of Non-Obviousness
`First, evidence of secondary considerations has not been presented at trial
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`either in the related litigation between Petitioner and Patent Owner, or in any prior
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`trial in which Patent Owner asserted the Patent. No district court trial on the issue
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`of secondary considerations (or any other issue) has taken place. Thus, unlike the
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`circumstances in Stryker, where “the secondary considerations evidence was
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`developed fully during the Arthrex Litigation,” here there is no similar litigation
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`record, verdict, and appeal available to Petitioner that requires comment at this
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`stage. Cf. Stryker Corp. v. KFX Medical, LLC, IPR2019-00817, Paper 10 at 27-29
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`(Sept. 16, 2019) (“Because the secondary considerations evidence was developed
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`fully during the Arthrex Litigation, and the Federal Circuit affirmed the jury’s
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`verdict that the same claims (including independent claim 1) are not obvious based
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`in-part on the evidence of secondary considerations, it is appropriate for us to
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`consider this evidence in determining whether to exercise our discretion to deny
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`institution.”) (emphasis added). Petitioner is not required to guess which
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`arguments Patent Owner might make, if any, about secondary considerations. Cf.
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`Petroleum Geo-Services Inc. v. Western Geco LLC, IPR2014-01477 (PTAB, Mar.
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`17, 2015) (Paper 18, 32) (finding “at the time of filing of the present Petition, no
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`evidence of secondary indicia of non-obviousness in the record of this proceeding”
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`and “the evidence of secondary indicia of non-obviousness must be first developed
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`in this proceeding by Patent Owner”) (emphasis added).
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`The limited proceedings in the related litigation include briefing, argument,
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`and resolution of one motion under Federal Rule of Civil Procedure 12. Discovery
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`has not begun. Unless the Patent Owner provides evidence in the current IPR
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`proceeding, secondary indicia of non-obviousness are not at issue.
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`Second, even in an IPR proceeding, it is the patentee’s burden to offer
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`evidence of a nexus:
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`In order to accord substantial weight to secondary considerations in an
`obviousness analysis, “the evidence of secondary considerations must
`have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually
`sufficient connection’ between the evidence and the patented
`invention.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324,
`1332 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff
`Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “The patentee
`bears the burden of showing that a nexus exists.” WMS Gaming Inc.
`v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). “To
`determine whether the patentee has met that burden, we consider the
`correspondence between the objective evidence and the claim scope.”
`Henny Penny, 938 F.3d at 1332.
`Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2020) (emphasis
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`added).
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`Third, Patent Owner in the related litigation does not make clear whether
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`Patent Owner contends it or its alleged licensees sold any products that could form
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`the basis for an argument about secondary considerations. For example, Patent
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`Owner explained in its opposition to Petitioner’s Rule 12 motion in the underlying
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`litigation: “Take-Two [i.e., Petitioner] has not shown that Plaintiffs’ Amended
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`Complaint admits facts establishing that it is undisputed that Plaintiffs [i.e., Patent
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`Owner] or their licensees sold any products that practiced the patented
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`inventions….” Ex. 1014, at 19 (emphasis added). And on September 28, 2020,
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`Patent Owner explained to the district court: “And, in fact, if this was a motion for
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`summary judgment, we would introduce evidence showing that . . . there were no
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`patented articles sold by the plaintiffs or their licensees during the lifetime of the
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`patents [i.e., the Patent and related U.S. Patent No. 6,362,822]. . . .” Ex. 1015,
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`25:6-10 (emphasis added). Patent Owner further noted, with regard to its games:
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`“We produced that source code, which shows that those games did not actually
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`embody the inventions that are claimed in the asserted patents.” Id. at 30:11-13.
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`Fourth, turning to other IPR proceedings (as opposed to lawsuits), to the
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`extent any evidence of secondary considerations discussed there can be deemed
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`proper for consideration here and now, such would be insufficient to suggest non-
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`obviousness. Patent Owner has not offered evidence of, e.g., a nexus between
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`alleged objective indicia of non-obviousness and the merits of the claims.
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`“‘When the thing that is commercially successful is not coextensive with the
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`patented invention—for example, if the patented invention is only a component of
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`a commercially successful machine or process,’ the patentee is not entitled to a
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`presumption of nexus.” Fox, 944 F.3d at 1373 (emphasis added). When there is
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`no presumption of nexus (like here), the patentee must show that the evidence of
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`secondary co