The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board (PTAB) that the challenged claims of Bot M8 LLC’s gaming patent, U.S. Patent No. 8,078,540, were unpatentable.
Sony Interactive Entertainment LLC petitioned for Inter partes review (IPR) of claims 1-6 of the patent, which concerns a gaming machine that authenticates certain data and that has both a motherboard and a different board.
As the court noted, two aspects of the claim are relevant:
First, the independent claims (claims 1 and 4) require that the “game program” be written to the motherboard only after the game program has been authenticated. Second, the dependent claims (claims 2, 3, 5, and 6) require two different CPUs—one on the motherboard, one on a different board— for executing the “authentication program” and “preliminary authentication program” respectively.
The PTAB found the claims unpatentable.
Bot M8 appealed, arguing that the PTAB misconstrued the independent claims and that it erred in determining the dependent claims unpatentable for obviousness.
Bot M8 argued that the PTAB misconstrued claim 1 to find that prior art references disclosed the element that requires writing the game program to the motherboard only after authenticating the game program.
The court noted that claim 1 “undisputedly precludes writing the entire game program to the motherboard before authenticating the game program.”
However, Bot M8 maintained that claim 1 further precluded writing any data—game program or not—to the motherboard before authenticating the game program.
The PTAB found this argument inconsistent with the claim language. The Federal Circuit agreed, stating:
Although claim 1 precludes writing the game program to the motherboard before it’s authenticated, Bot M8 offers no persuasive reason to construe the claim to preclude writing other data to the motherboard before the game program is authenticated.
Bot M8 also argued that claim 1 at least precluded writing any portion of the game program to the motherboard before authenticating the game program. In attempting to show that the PTAB applied a contrary construction, Bot M8 pointed to a single sentence in the PTAB’s final written decision, where the Board stated:
[Bot M8] seeks to read into claim 1 a requirement that nothing related to, or any portion of, the gaming information be read into [the motherboard’s] RAM from the mass storage device of Johnson prior to authenticating the game program.
The Federal Circuit assumed for the sake of argument that Bot M8 was correct and that claim 1 did preclude writing any portion of the game program to the motherboard before authenticating the game program. However, the court still affirmed, finding that the PTAB’s errors, if any, was harmless:
Bot M8 fails to demonstrate that the Board, in making its unpatentability determinations, actually relied—or even might have relied—on a construction that permits writing portions of the game program to the motherboard before authenticating the game program. By all indications, the Board simply didn’t need to; it found that both [prior art references] disclose writing only non-game-program data to the motherboard before authenticating the game program.
The court concluded that substantial evidence supported the fact findings underpinning the PTAB’s obviousness determination, and otherwise saw no error in that determination.
