Acceleration Bay v. Activision Blizzard Books CAFC Chief Judge Sharon Prost Claim Scope Courts Federal Circuit Guest Contributors inter partes inter partes review IP News IPR IPWatchdog Articles Articles Judge Jimmie Reyna Judge Kimberly Moore patent Patent Litigation Patent Trial and Appeal Board Patents preamble printed publications PTAB

Federal Circuit affirms PTAB Mixed Decision in Acceleration Bay v. Activision Blizzard

Federal Circuit affirms PTAB Mixed Decision in Acceleration Bay v. Activision Blizzard

“Acceleration’s poor declare drafting won’t be an excuse for it to infuse confusion into its declare scope,” wrote Decide Moore. “We see no useful function to be served by failing to incorporate a transition phrase in a declare… and we warning patentees towards doing so.”

Acceleration Bay appealed the ultimate written selections of the Board holding claims 1-9 of U.S. Patent No. 6,829,634, claims 1-11 and 16-19 of U.S. Patent No. 6,701,344, and claims 1-11 and 16-17 of U.S. Patent No. 6,714,966 all unpatentable. Petitioners Activision Blizzard, Inc., Digital Arts Inc., Take-Two Interactive Software program, Inc., 2k Sports activities, Inc., and Rockstar Video games, Inc. (collectively, “Blizzard”) additionally cross-appealed parts of the Board’s selections holding patentable claims 10-18 of the `634 patent, in addition to substitute claims 19 of the `966 patent, 21 of the `344 patent, and 25 of the `634 patent. Blizzard additionally cross appealed the Board’s selections holding that one specific reference — the Lin article — was not a printed publication underneath 35 U.S.C. § 102(a). In an opinion authored by Decide Moore and joined by Chief Decide Prost and Decide Reyna, the Federal Circuit affirmed the PTAB choice, discovering that each Acceleration Bay’s and Blizzard’s arguments have been with out benefit. See Acceleration Bay, LLC v. Activision Blizzard, Inc., Nos. 2017-2084, 2017-2085, 2017-2095, 2017-2096, 2017-2097, 2017-2098, 2017-2099, 2017-2117, 2017-2118, 2018  (Fed. Cir. Nov. 6, 2018).

Patent Proprietor Appeals

On attraction, Acceleration Bay challenged the development of sure claims phrases, particularly “participant”, “recreation setting” and “info supply service”.

Declare 1 of the `966 patent was thought-about consultant of the declare development disputes in Acceleration’s attraction:

1. A pc community for offering an info supply service for a plurality of members, every participant having connections to at the least three neighbor individuals, whereby an originating participant sends knowledge to the opposite individuals by sending the info by way of every of its connections to its neighbor individuals and whereby every participant sends knowledge that it receives from a neighbor participant to its different neighbor individuals, additional whereby the community is m-regular, the place m is the precise variety of neighbor individuals of every participant and additional whereby the variety of members is no less than two higher than m thus leading to a noncomplete graph.

Acceleration Bay argued that the Board erred by construing the time period “participant” based on its plain which means. The Courtroom rejected this place noting that neither the claims nor the specification outlined the time period with detailed structural info, which was the truth is admitted throughout oral argument. Thus, it was not error for the Board to depend on the plain which means of the time period “participant”.

Acceleration Bay additionally argued that “recreation setting” and “info” must be given patentable weight. Acceleration Bay argued that it was improper to think about these phrases to be part of the preamble as a result of there isn’t a transition within the declare, successfully making all the declare the physique of the declare. “Acceleration’s poor declare drafting won’t be an excuse for it to infuse confusion into its declare scope,” wrote Decide Moore.  After discovering that the phrases in query have been, actually part of the preamble, Decide Moore cautioned practitioners: “We see no useful objective to be served by failing to incorporate a transition phrase in a declare to obviously delineate the declare’s preamble from the physique, and we warning patentees towards doing so.”

Lastly, Acceleration Bay argued that the Board did not determine a broadcast channel, a component within the claims, within the prior artwork. The Courtroom rejected this argument as a result of it discovered that Acceleration Bay was trying to once more “import structural limitation into claims missing these limitations.” The courtroom discovered that “


Petitioners Cross-Appeals

Blizzard’s cross-appeal introduced three arguments difficult the Board’s determination. First, Blizzard challenged the Board’s discovering that a reference was not a printed publication. The Courtroom agreed with the Board’s reasoning that “there was no proof that [the reference] was disseminated to the general public”, and “public accessibility requires greater than technical accessibility.” Right here the reference in query — the Lin reference —was listed solely by writer identify and yr. Whereas which will make the reference technically accessible, the Courtroom agreed with the PTAB that the reference was not “meaningfully listed” and that the search capabilities of the index fell in need of making the reference publicly accessible, as in accord with an extended line of earlier Federal Circuit selections.

Decide Moore additional defined:

The check for public accessibility shouldn’t be ‘has the reference been listed?’ We’ve got defined that the place indexing is worried, whether or not on-line or in tangible media, the last word query is whether or not the reference was out there to the extent that individuals and ordinarily expert in the subject material or artwork, exercising affordable diligence, can find it.

(citations and quotations omitted).

Second, Blizzard argued that the Board erred by not crediting its skilled testimony that a prior artwork reference disclosed a component in Acceleration Bay’s challenged patent. The Courtroom rejected this argument as a result of it discovered that the Board’s determination was supported by substantial proof. The Courtroom additionally discovered it was correct for the Board to not contemplate this argument as a result of it was improperly raised for the primary time in Blizzard’s reply, nevertheless it might have and will have been raised within the petition. “Blizzard, as petitioner, had a chance to current this argument in its petition, however selected to not,” Decide Moore wrote.

Lastly, Blizzard challenged the patentability of sure substitute claims based mostly on the Board’s development of the time period “individuals can be a part of and depart the community utilizing the printed channel.” The Courtroom discovered no error within the Board’s development, noting that “Blizzard offered no development under, or on attraction, for this declare limitation. The Board, subsequently, correctly targeted on the unusual which means . . . .” Finally, the Courtroom decided that the Board didn’t err in figuring out sure claims and substitute claims are patentable over the prior artwork.

Take Away

When figuring out if a reference was a printed publication mere indexing is inadequate – you have to show that the indexing was “significant” sufficient to offer entry to the general public. Additionally, when difficult substitute claims throughout an IPR, the Petitioner should present declare development if it is very important their invalidity argument; in any other case, it isn’t error for the Board to concentrate on the peculiar which means of the substitute declare language.  


Picture Supply: Federal Circuit.

Gene Quinn

Gene Quinn

is a Patent Lawyer and Editor and founding father of Gene can also be a principal lecturer within the PLI Patent Bar Evaluation Course and an lawyer with Widerman Malek. Gene’s specialty is within the space of strategic patent consulting, patent software drafting and patent prosecution. He consults with attorneys dealing with peculiar procedural points on the Patent Workplace, advises buyers and executives on patent regulation modifications and pending litigation issues, and works with start-up companies all through the USA and all over the world, primarily coping with software program and pc associated improvements. Gene is admitted to follow regulation in New Hampshire, is a Registered Patent Lawyer and can also be admitted to follow earlier than america Courtroom of Appeals for the Federal Circuit. CLICK HERE to ship Gene a message.

Gene Quinn

Robert Schaffer

is an mental property companion at Troutman Sanders. Bob applies greater than 30 years of expertise to IP counseling and litigation. His work consists of patent procurement, strategic planning and transactional recommendation, due diligence investigations, district courtroom patent instances, and Federal Circuit appeals. He often handles complicated and high-profile home and worldwide patent portfolios, mental property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed courtroom instances Bob’s work consists of representing and counseling shopper in ANDA litigations, complicated patent infringement instances and appeals, and multidistrict and worldwide instances. In disputed Patent Workplace issues his work consists of representing and counseling shoppers in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For extra info and to contact Bob please go to his profile web page on the Troutman Sanders web site.

Gene Quinn

Joseph Robinson

has over 20 years of expertise in all elements of mental property regulation. He focuses his follow within the pharmaceutical, life sciences, biotechnology, and medical gadget fields. His follow encompasses litigation, together with Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in quite a lot of patent and trademark disputes in many various jurisdictions, and has additionally served as appellate counsel earlier than the Courtroom of Appeals for the Federal Circuit. Joe additionally focuses on complicated inter partes issues earlier than the united statesPatent and Trademark Workplace, inventorship disputes, reexaminations and reissues. His expertise consists of quite a few interferences, a specific benefit in new U.S. Patent and Trademark Workplace post-grant proceedings. He additionally counsels on patent–associated U.S. Meals and Drug Administration points, together with citizen petitions, Orange Ebook itemizing, and trademark points. For extra info and to contact Joe please go to his profile web page on the Troutman Sanders web site.

Gene Quinn

Dustin Weeks

is an affiliate within the mental property follow group at Troutman Sanders. His follow spans all areas of mental property regulation, together with patent prosecution, patent litigation (together with Hatch-Waxman litigation), and shopper counseling. He represents shoppers starting from start-ups and solo inventors to Fortune 500 corporations. Dustin works intently together with his shoppers to study their enterprise aims in order that he can tailor methods to acquire, shield, and implement their mental property. Dustin focuses on post-grant proceedings (e.g. Inter Partes Evaluations) earlier than the Patent Trial and Attraction Board (PTAB) the place he has in depth expertise representing each patent house owners and petitioners throughout a variety of applied sciences, together with wi-fi networking, prescription drugs, MEMs units, medical units, and electro-mechanical shopper units. Dustin’s broad expertise in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended follow of post-grant proceedings.

For extra info or to contact Dustin, please go to his Agency Profile Web page.

About the author