“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 “
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.
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.
is a Patent Lawyer and Editor and founding father of IPWatchdog.com. 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.
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.
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