Docket Nos. 2017-2084-5, -2095-99, 2117-8 (relating to 12 IPRs, six FWDs)
PROST, MOORE, REYNA
Nov. 6, 2018
Brief summary: Board’s decisions finding certain of AB’s claims unpatentable and others patentable affirmed.
Summary: AB appealed final written decisions (FWDs) holding certain claims of US 6,829,634; 6,701,344; and 6,714,966 directed to broadcast techniques unpatentable. Blizzard appealed FWDs finding other claims of these patents patentable and that “the Lin article is not a printed publication under” § 102(a). Blizzard filed the 12 IPRs relating to this appeal in two sets, the first of which challenged the claims based on the “Shoubridge” article alone or with “DirectPlay” (the Shoubridge IPRs), and the second set being based on the Lin article alone or combined with Direct Play (the Lin IPRs). The FC panel reviewed the Board’s legal determinations de novo and its fact findings for substantial evidence (PPC Broadband, FC 2016; claim construction reviewed de novo, subsidiary fact findings for substantial evidence). The FC panel disagreed with AB’s argument that the Board erroneously construed the claim term “‘participant’ according to its plain meaning” since “[n]either the claims nor the specifications define or expressly describe the term” as AB requested. AB also argued that the preamble terms “game environment” and “information delivery service” “are limitations…because they provide structure for the remainder of the claims” (citing Rowe, FC 1997; Vizio, FC 2010). The FC panel disagreed, finding that the terms “merely describe intended uses for what is otherwise a structurally complete invention” (Catalina Mktg., FC 2002; Pitney Bowes, FC 1999). The FC panel also disagreed with AB “that the Board failed to determine whether Shoubridge discloses” the claimed “broadcast channel”, finding AB “again attempts to import structural limitations into claims lacking those limitations” (“While the specifications discuss a broadcast channel overlaying a network, the claims at issue are not so limited…The language in the specification falls far short of the language we have found sufficient to limit claims to configurations described in the specification.” (Blackbird, FC 2018)). The FC panel also found “[t]he Board did not err in concluding Lin is not a printed publication” under § 102(a) because Blizzard did not show “sufficiently that the UCSD CSR Technical Reports Library was searchable or indexed in a meaningful way so that a person of ordinary skill would have located Lin” (Jazz Pharm., FC 2018; In re Wyer, CCPA 1981; Voter Verified, FC 2012; “We will not disturb the Board’s weighing of the evidence.”)). The FC panel explained that this issue in this case “is not analogous to In re Lister” (FC 2009 (reference “publicly accessible as of the date it was included in ‘databases that permitted keyword searching of titles’”) “as Blizzard claims”, since “[t]he Board’s fact finding that, with available reports indexed only by author or year, Lin was not meaningfully indexed…such that an interested artisan would have found it” “is supported by substantial evidence” (In re Cronyn, FC 1989). Blizzard also argued the Board erred in finding claims 10-18 of the ‘634 patent patentable over Shoubridge but the FC panel disagreed, finding “no error in the Board’s construction of application of ‘indication’” and its refusal to consider part of the declaration that “raises a new obviousness argument…that could have been made in the petition” (SAS, US 2018; Intelligent Bio-Sys., FC 2016). The FC panel also found no error with the Board’s finding that AB’s substitute claims in each patent are patentable as it “properly focused on the ordinary meaning to determine the prior art did not disclose or render obvious” the same. The Board’s decisions were therefore affirmed.