“Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope,” wrote Decide Moore. “We see no beneficial purpose to be served by failing to include a transition word in a claim… and we caution patentees against 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 beneath 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 determination, 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”, “game environment” and “information delivery 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 individuals, every participant having connections to at the least three neighbor individuals, whereby an originating participant sends knowledge to the opposite members 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 individuals is a minimum of two higher than m thus ensuing in 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 in reality 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 “game environment” and “information” 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 any transition in the declare, successfully making the whole declare the physique of the declare. “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope,” wrote Decide Moore. After discovering that the phrases in query have been, in reality part of the preamble, Decide Moore cautioned practitioners: “We see no beneficial purpose to be served by failing to include a transition word in a claim to clearly delineate the claim’s preamble from the body, and we caution patentees against doing so.”
Lastly, Acceleration Bay argued that the Board did not determine a broadcast channel, a component in the claims, in 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 lacking those limitations.” The courtroom discovered that “[t]he language in the specifications falls far short of the language we have found sufficient to limit claims to configurations described in the specification.”
Blizzard’s cross-appeal introduced three arguments difficult the Board’s choice. 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 evidence that [the reference] was disseminated to the public”, and “public accessibility requires more 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 indexed” 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 isn’t ‘has the reference been indexed?’ We’ve 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 obtainable 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 in the petition. “Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to,” Decide Moore wrote.
Lastly, Blizzard challenged the patentability of sure substitute claims based mostly on the Board’s development of the time period “participants can join and leave the network using the broadcast channel.” The Courtroom discovered no error in the Board’s development, noting that “Blizzard provided no construction below, or on appeal, for this claim limitation. The Board, therefore, properly focused on the ordinary meaning . . . .” 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 “meaningful” 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 abnormal 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 in the PLI Patent Bar Assessment Course and an lawyer with Widerman Malek. Gene’s specialty is in the world 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 america 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 the USA Courtroom of Appeals for the Federal Circuit. CLICK HERE to ship Gene a message.
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