`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioners,
`v.
`ACCELERATION BAY, LLC,
`Patent Owner.
`
`
`
`
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`
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`
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`Case IPR2015-019721
`Patent No. 6,701,344 B1
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`
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`
`
`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`
`PETITIONERS ACTIVISION BLIZZARD, INC., ELECTRONIC ARTS
`INC., TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K SPORTS INC.,
`AND ROCKSTAR GAMES, INC.’S NOTICE OF APPEAL
`
`
`
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`
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`1 Bungie, Inc., who filed Petition IPR2016-00934, has been joined as a petitioner in
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`this proceeding.
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`
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, VA 22313-1450
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Petitioners Activision Blizzard, Inc., Electronic Arts
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`Inc., Take-Two Interactive Software, Inc., 2K Sports Inc., and Rockstar Games,
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`Inc. (collectively, “Petitioners”) appeal to the United States Court of Appeals for
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`the Federal Circuit from the Final Written Decision of the Patent Trial and Appeal
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`Board (“Board”) entered on March 23, 2017 (Paper 108 (sealed), which was later
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`re-filed as Paper 111 (unsealed)) in IPR2015-01972, and from all underlying
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`orders, decisions, rulings, and opinions regarding this inter partes review of U.S.
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`Patent No. 6,701,344 (“’344 patent”). A copy of the Final Written Decision (Paper
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`111) is attached.
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`
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioners further indicate
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`that the issues on appeal include, but are not limited to, the following: (1) the
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`Board’s determination that substitute claim 21 of the ’344 patent is patentable; (2)
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`the Board’s construction of that claim; (3) the Board’s consideration of the expert
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`testimony, prior art, and other evidence in the record; (4) the Board’s factual
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`findings, conclusions of law or other determinations supporting or related to those
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`1
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`issues; as well as all (5) other issues decided adversely to Petitioners in any orders,
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`decisions, rulings, and opinions.
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`
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`Simultaneous with this submission, a copy of this Notice of Appeal is being
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`filed with the PTAB through the E2E System. In addition, copies of the Notice of
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`Appeal, along with the required docketing fee, are being filed with the Clerk’s
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`office for the United States Court of Appeals for the Federal Circuit.
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`
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`Dated: May 25, 2017
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`Respectfully submitted,
`
`By: /Andrew Thomases/
`Andrew Thomases (lead counsel)
`Reg. No. 40,841
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`P: 650-617-4712 / F: 650-566-4275
`andrew.thomases@ropesgray.com
`
`James L. Davis, Jr. (backup counsel)
`Reg. No. 57,325
`Ropes & Gray LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`P: 650-617-4794/F: 650-566-4147
`james.l.davis@ropesgray.com
`
`Counsel for Petitioners Activision Blizzard, Inc., Electronic Arts Inc., Take-Two
`Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc.
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`CERTIFICATE OF FILING
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`
`
`It is certified that, in addition to being filed electronically through the Patent
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`Trial and Appeal Board’s E2E System, a copy of PETITIONERS ACTIVISION
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`BLIZZARD, INC., ELECTRONIC ARTS INC., TAKE-TWO INTERACTIVE
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`SOFTWARE, INC., 2K SPORTS INC., AND ROCKSTAR GAMES, INC.’S
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`NOTICE OF APPEAL has been filed by hand on May 25, 2017, with the Director
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`of the United States Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`10B20, Madison Building East,
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`Dated: May 25, 2017
`
`Respectfully submitted,
`
`/Andrew Thomases/
`Andrew Thomases
`
`
`Counsel for Petitioners Activision Blizzard, Inc.,
`Electronic Arts Inc., Take-Two Interactive Software, Inc.,
`2K Sports, Inc., and Rockstar Games, Inc.
`
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`CERTIFICATE OF FILING
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`
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`It is certified that, a copy of PETITIONERS ACTIVISION BLIZZARD,
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`INC., ELECTRONIC ARTS INC., TAKE-TWO INTERACTIVE SOFTWARE,
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`INC., 2K SPORTS INC., AND ROCKSTAR GAMES, INC.’S NOTICE OF
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`APPEAL was filed electronically through the United States Court of Appeals for
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`the Federal Circuit’s CM/ECF system on May 25, 2017 and one paper copy
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`delivered by hand on May 25, 2017, with the Clerk of the Court of the Federal
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`Circuit, at the following address:
`
`Clerk of the Court
`717 Madison Place, N.W.
`Room 401
`Washington D.C. 20439
`
`
`Dated: May 25, 2017
`
`Respectfully submitted,
`
`/Andrew Thomases/
`Andrew Thomases
`
`
`Counsel for Petitioners Activision Blizzard, Inc.,
`Electronic Arts Inc., Take-Two Interactive Software, Inc.,
`2K Sports, Inc., and Rockstar Games, Inc.
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies that a true and copy of the foregoing
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`PETITIONERS ACTIVISION BLIZZARD, INC., ELECTRONIC ARTS INC.,
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`TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K SPORTS INC., AND
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`ROCKSTAR GAMES, INC.’S NOTICE OF APPEAL was served on May 25,
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`2017 in its entirety by causing the aforementioned document to be electronically
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`mailed, pursuant to the parties’ agreement, to the following attorneys of record:
`
`James Hannah
`Reg. No. 56,369
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: 650-752-1712
`Fax: 650-752-1812
`jhannah@kramerlevin.com
`
`Michael Lee
`Reg. No. 63,941
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: 650-752-1716
`Fax: 650-752-1812
`mhlee@kramerlevin.com
`
`Shannon Hedvat
`Reg. No. 68,417
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: 212-715-9185
`Fax: 212-715-8000
`
`5
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`shedvat@kramerlevin.com
`
`Jeffrey Price
`Reg. No. 69,141
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: 212-715-7502
`Fax: 212-715-8000
`jprice@kramerlevin.com
`svdocketing@kramerlevin.com
`
`Paul J. Andre (Pro hac vice)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: 650-752-1710
`Fax: 650-752-1810
`pandre@kramerlevin.com
`svdocketing@kramerlevin.com
`
`Counsel for Patent Owner Acceleration Bay
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Jose C. Villarreal
`Reg. No. 43,969
`WILSON SONSINI GOODRICH & ROSATI
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`jvillarreal@wsgr.com
`Counsel for Petitioner Bungie, Inc.
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`Case IPR2015-01972
`Patent No. 6,701,344 B1
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`
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`Dated: May 25, 2017
`
`Respectfully submitted,
`
`/Andrew Thomases/
`Andrew Thomases
`
`
`Counsel for Petitioners Activision Blizzard, Inc.,
`Electronic Arts Inc., Take-Two Interactive Software, Inc.,
`2K Sports, Inc., and Rockstar Games, Inc.
`
`
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`7
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`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper 111
`Entered: March 23, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-019721
`Patent 6,701,344 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION2
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00934, has been joined as a
`petitioner in this proceeding.
`2 A sealed “Parties and Board Only” version of this Decision was entered on
`March 23, 2017. Pursuant to notice from the parties that this Decision may
`be made publicly available without any redactions, the Decision is reissued
`as a public version.
`
`
`
`IPR2015-01972
`Patent 6,701,344 B1
`
`I. INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`Software, Inc., 2K Sports, Inc., Rockstar Games, Inc., and Bungie, Inc.
`(collectively, “Petitioner”) challenge claims 1–11 and 16–19 (“the
`challenged claims”) of U.S. Patent No. 6,701,344 B1 (Ex. 1101, “the
`’344 patent”), owned by Acceleration Bay, LLC (“Patent Owner”). We
`have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`reasons discussed below, Petitioner has shown by a preponderance of the
`evidence that the challenged claims are unpatentable.
`
`A. Procedural History
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc., filed a Petition for
`inter partes review of claims 1–19 of the ’344 patent. Paper 2 (“Pet.”).
`Patent Owner filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On
`March 24, 2016, we instituted an inter partes review of claims 1–11 and 16–
`19 of the ’344 patent on the ground of obviousness under 35 U.S.C.
`§ 103(a)3 over Shoubridge.4 Paper 8, 23 (“Dec.”).
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’344 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102 and 103.
`4 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks,
`3 IEEE INT’L CONF. ON COMMS. CONF. REC. 1381-86 (Montreal, 1997)
`(Ex. 1105) (“Shoubridge”).
`
`2
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`IPR2015-01972
`Patent 6,701,344 B1
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`Subsequent to institution, Bungie, Inc. filed a Petition and Motion for
`Joinder with the instant proceeding. Bungie, Inc. v. Acceleration Bay, LLC,
`IPR2016-00934, Papers 2, 3. On July 8, 2016, we instituted an inter partes
`review and granted the Motion, joining Bungie, Inc. as a petitioner in this
`inter partes review. Paper 26.
`Thereafter, Patent Owner filed a Patent Owner Response (“PO
`Resp.”). Paper 31 (confidential), Paper 103 (redacted). Petitioner filed a
`Reply to the Patent Owner Response (“Pet. Reply”). Paper 59. Patent
`Owner also filed a Contingent Motion to Amend requesting substitution of
`various claims in the event certain claims in the ’344 patent were found to be
`unpatentable. Paper 32 (“Mot. Am.”). Petitioner filed an Opposition to
`Patent Owner’s Contingent Motion to Amend. Paper 57 (“Opp. Mot. Am.”).
`Patent Owner then filed a Reply in support of its Contingent Motion to
`Amend. Paper 72 (“Reply Mot. Am.”). Patent Owner also filed a Motion
`for Observation on Cross-Examination. Paper 80 (“Mot. Obsv.”). Petitioner
`filed a Response to Petitioner’s Motion for Observation. Paper 89 (“Resp.
`Obsv.”)
`An oral hearing was held on December 7, 2016.5 A transcript of the
`hearing has been entered into the record. Paper 102 (“Tr.”).
`
`B. Related Matters
`Petitioner identifies the following pending judicial matters as relating
`to the ’344 patent: Activision Blizzard, Inc. v. Acceleration Bay LLC, Case
`No. 3:16-cv-03375 (N.D. Cal., filed June 16, 2016); Electronic Arts Inc. v.
`
`
`5 A consolidated hearing was held for this proceeding and IPR2015-01951,
`IPR2015-01953, IPR2015-01964, IPR2015-01970, and IPR2015-01996.
`See Paper 84 (hearing order).
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`IPR2015-01972
`Patent 6,701,344 B1
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`Acceleration Bay LLC, Case No. 3:16-cv-03378 (N. D. Cal., filed June 16,
`2016); Take-Two Interactive Software, Inc. v. Acceleration Bay LLC, Case
`No. 3:16-cv-03377 (N.D. Cal., filed June 16, 2016); Acceleration Bay LLC
`v. Activision Blizzard, Inc., Case No. 1:16-cv-00453 (D. Del., filed June 17,
`2016); Acceleration Bay LLC v. Electronic Arts Inc., Case No. 1:16-cv-
`00454 (D. Del., filed June 17, 2016); and Acceleration Bay LLC v. Take-Two
`Interactive Software, Inc., Case No. 1:16-cv-00455 (D. Del., filed June 17,
`2016). Paper 20, 2–3.
`Petitioner and Patent Owner also identify five other petitions for inter
`partes review filed by Petitioner challenging the ’344 patent and similar
`patents: IPR2015-01970 (the ’344 patent); IPR2015-01951 and IPR2015-
`01953 (U.S. Patent No. 6,714,966 B1); and IPR2015-01964 and IPR2015-
`01996 (U.S. Patent No. 6,829,634 B1). Pet. 4; Paper 5, 1. Trials were
`instituted in those proceedings as well.
`
`C. The ’344 Patent
`The ’344 patent relates to a “broadcast technique in which a broadcast
`channel overlays a point-to-point communications network.” Ex. 1101, 4:3–
`5. The broadcast technique overlays the underlying network system with a
`graph of point-to-point connections between host computers or nodes
`through which the broadcast channel is implemented. Id. at 4:23–26.
`Figure 1 of the ’344 patent is reproduced below:
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`4
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`IPR2015-01972
`Patent 6,701,344 B1
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`
`Figure 1 illustrates a broadcast channel represented by a “4-regular,
`4-connected” graph. Id. at 4:48–49. The graph of Figure 1 is “4-regular”
`because each node is connected to exactly four other nodes (e.g., node A is
`connected to nodes E, F, G, and H). Id. at 4:38–39, 4:49–53. A node in a
`4-regular graph can only be disconnected if all four of the connections to its
`neighbors fail. Id. at 4:39–42. Moreover, the graph of Figure 1 is
`“4-connected” because it would take the failure of four nodes to divide the
`graph into two separate sub-graphs (i.e., two broadcast channels). Id. at
`4:42–47.
`To broadcast a message over the network, an originating computer
`sends the message to each of its four neighbors using the point-to-point
`connections. Id. at 4:30–32. Each computer that receives the message sends
`it to its other neighbors, such that the message is propagated to each
`computer in the network. Id. at 4:32–38. The minimum number of
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`IPR2015-01972
`Patent 6,701,344 B1
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`connections needed to traverse any two computers in the network is known
`as the “distance” between them, while the maximum of the distances in the
`network is called the “diameter” of the broadcast channel. Id. at 4:57–5:3.
`In Figure 1, the diameter is 2 because a message originating at any node
`(e.g., A) traverses no more than 2 connections to reach every other node.
`Id. at 5:3–6.
`In one embodiment described in the ’344 patent, a distributed game
`environment is implemented using broadcast channels. Id. at 16:30–31.
`Each player’s computer executes a game application program, and a player
`joins a game by connecting to the broadcast channel on which the game is
`played. Id. at 16:31–36. Each time a player takes an action in the game, a
`message representing that action is broadcast on the game’s broadcast
`channel. Id. at 16:36–38.
`
`D. Illustrative Claim
`Among the claims of the ’344 patent at issue in this proceeding,
`claims 1, 16, and 18 are independent. Claim 1, reproduced below, is
`illustrative of the claimed subject matter:
`1. A computer network for providing a game environment
`for a plurality of participants, each participant having
`connections to at least three neighbor participants, wherein an
`originating participant sends data to the other participants by
`sending the data through each of its connections to its neighbor
`participants and wherein each participant sends data that it
`receives from a neighbor participant to its other neighbor
`participants, further wherein the network is m-regular, where m
`is the exact number of neighbor participants of each participant
`and further wherein the number of participants is at least two
`greater than m thus resulting in a non-complete graph.
`
`Id. at 29:26–37.
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`IPR2015-01972
`Patent 6,701,344 B1
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`II. DISCUSSION
`
`A. Principles of Law
`
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including: (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`The level of ordinary skill in the art may be reflected by the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`B. Level of Ordinary Skill in the Art
`
`Citing its declarant, Dr. David R. Karger, Petitioner contends that a
`person having ordinary skill in the art at the time of the invention would
`have had a minimum of (1) a bachelor’s degree in computer science,
`computer engineering, applied mathematics, or a related field of study; and
`(2) four or more years of industry experience relating to networking
`protocols or network topologies. Pet. 15; Ex. 1119 ¶ 19. Petitioner also
`contends that additional graduate education could substitute for professional
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`IPR2015-01972
`Patent 6,701,344 B1
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`experience, or significant experience in the field could substitute for formal
`education. Pet. 15–16; Ex. 1119 ¶ 19.
`Patent Owner’s expert, Dr. Michael Goodrich, opines that a person of
`ordinary skill in the art would have had (1) a bachelor’s degree in computer
`science or related field, and (2) two or more years of industry experience
`and/or an advanced degree in computer science or related field. Ex. 2022
`¶ 25. Dr. Goodrich also states that his opinions would be the same if
`rendered from the perspective of a person of ordinary skill in the art as set
`out by Dr. Karger. Id. ¶ 28.
`The levels of ordinary skill proposed by the parties do not differ
`significantly, as suggested by Dr. Karger’s testimony that his opinions
`would be the same under either party’s proposal. See id. Both parties’
`proposed descriptions require at least an undergraduate degree in computer
`science or related technical field, and both require at least two years of
`industry experience (although Petitioner proposes four years), but both agree
`that an advanced degree could substitute for work experience. For purposes
`of this Decision, we adopt Petitioner’s proposed definition as more
`representative, but note that our analysis would be the same under either
`definition.
`
`C. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`their “broadest reasonable construction in light of the specification of the
`patent in which they appear.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016). Under the broadest reasonable
`construction standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
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`IPR2015-01972
`Patent 6,701,344 B1
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`1. “m-regular”
`Petitioner proposes the term “m-regular,” recited in at least
`independent claim 1, means “each node is connected to exactly m other
`nodes.” Pet. 14 (citing Ex. 1101, 4:38–39, 14:65-15:7). Patent Owner does
`not offer a construction of this term. Prelim. Resp. 13; PO Resp. 17–23. For
`purposes of institution, we agreed that Petitioner’s proposed construction
`accords with the broadest reasonable construction consistent with the
`specification, which, for example, describes a graph in which each node is
`connected to four other nodes as a 4-regular graph. Ex. 1101, 4:38–39. We
`see no need to alter that construction here. Accordingly, we construe “m-
`regular” to mean “each node is connected to exactly m other nodes.”
`
`2. “m-connected”
`Petitioner proposes the term “m-connected,” recited in at least
`dependent claims 4 and 5, means “dividing the network into two or more
`separate parts would require the removal of at least m nodes.” Pet. 14 (citing
`Ex. 1101, 4:42–46). Patent Owner does not offer a construction of this term.
`Prelim. Resp. 13; PO Resp. 17–23. The portion of the specification cited by
`Petitioner describes the 4-connected graph as having the property that it
`would take the failure of at least 4 nodes to divide the graph into disjoint
`subgraphs. Ex. 1101, 4:42–46. Because Petitioner’s construction accords
`with the specification description, we see no reason to alter that construction
`here. Accordingly, we construe “m-connected” to mean “dividing the
`network into two or more separate parts would require the removal of at
`least m nodes.”
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`IPR2015-01972
`Patent 6,701,344 B1
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`3. “game environment”
`Patent Owner contends that the term “game environment,” recited in
`independent claims 1, 16, and 18, should be construed as a “logical
`broadcast channel on which a game is played, which overlays an underlying
`network.” PO Resp. 18. Patent Owner also contends the term is not
`followed by a transition phrase such as “comprising” or “consisting of,” and
`is, therefore, not part of a preamble. Id. at 29–30. Patent Owner further
`contends that, even if “[a] computer network for providing a game
`environment for a plurality of participants” is considered a preamble, it
`provides antecedent basis for the terms “the network” and “participants,”
`and, therefore, should be treated as a limitation. Id. at 30–31. We do not
`agree with Patent Owner.
`“It is well settled that the recitation of a new intended use for an old
`product does not make a claim to that old product patentable.” In re
`Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); see also In re Zierden, 411
`F.2d 1325, 1328 (CCPA 1969) (“[A] mere statement of a new use for an
`otherwise old or obvious composition cannot render a claim to the
`composition patentable.”). The facts of Schreiber are particularly relevant to
`the issue here. There, the apparatus claim at issue recited: “A dispensing top
`for passing only several kernels of a popped popcorn at a time from an
`open-ended container filled with popped popcorn, having a generally
`conical shape . . . .” Schreiber, 128 F.3d at 1475 (emphasis added). The
`Federal Circuit held that, although the “[prior art did] not address the use of
`the disclosed structure to dispense popcorn,” the absence of such disclosure
`did not defeat anticipation. Id. at 1477. In other words, the court
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`determined that the recitation of the popcorn dispensing use did not have
`patentable weight. Id.
`It is worth noting that in Schreiber, similar to here, the claim lacked
`the transitional phrase “comprising” or “consisting of” to indicate whether
`the statement was part of a preamble. Indeed, there was no discussion of
`whether the statement of intended use in Schreiber (i.e., “for passing only
`several kernels of popped popcorn”) was a preamble statement or not.
`Whether the statement of intended use appears in the body of the claim or
`the preamble is immaterial. See In re Anderson, Nos. 2016-1156 and 2016-
`1157, 2016 WL 5940057, *4 (Fed. Cir. Oct. 13, 2016) (holding “for use”
`statements in the body of the claim do not add structural limitations).
`We consider whether the circumstances here compel a different result
`than in Schreiber. Patent Owner is correct that the terms “network” and
`“participant,” used in the body of the claims, find their antecedent basis in
`the opening term that includes the disputed game environment (i.e., “[a]
`computer network for providing a game environment for a plurality of
`participants”). However, although this suggests “computer network” and
`“plurality of participants” are essential structure within the claim, the
`suggestion does not extend to “game environment,” which, we determine, is
`not essential to understanding the structurally complete invention otherwise
`recited in the claims. See Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289
`F.3d 801, 810 (Fed. Cir. 2002) (holding the phrase “located at predesignated
`sites such as consumer stores” not essential to understand limitations or
`terms in the claim).
`In making this determination, we have also considered the
`specification. See id. at 808 (noting that the specification may underscore
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`certain structure or steps as important). The abstract of the ’344 patent
`describes the invention as a “broadcast technique” used in a communications
`network without any reference to a “game environment.” Ex. 1101, at [57].
`When the specification does refer to a “game environment,” it explains that
`“a game environment is implemented using broadcast channels” in one
`embodiment of the disclosed invention. Id. at 16:30–31 (emphasis added).
`It further provides:
`Each player joins a game (e.g., a first person shooter game) by
`connecting to the broadcast channel on which the game is
`played. Each time a player takes an action in the game a
`message representing that action is broadcast on the game’s
`broadcast channel. In addition, a player may send messages
`(e.g., strategy information) to one or more other players by
`broadcasting a message.
`
`Id. at 16:34–40 (emphasis added). Thus, the ’344 patent describes a “game
`environment” as a use of a broadcast channel on a communications network.
`The specification consistently describes a broadcast channel in terms
`of the structural elements recited in claim 1. For example, similar to
`claim 1, Figure 1 is described as “a graph that is 4-regular and 4-connected
`which represents a broadcast channel.” Ex. 1101, 2:45–46 (emphasis
`added); see id. at 2:47–61 (referring to the interconnected computers in the
`networks of Figures 2–5B as broadcast channels); id. at 4:23–26 (describing
`the broadcast channel as “a graph of point-to-point connections (i.e., edges)
`between host computers (i.e., nodes)”). In view of these descriptions, we
`conclude that claim 1 recites a structurally complete invention (i.e., “a
`broadcast channel”), which may be used to provide a “game environment.”
`Patent Owner submits that a person of ordinary skill in the art reading
`a description of a “game environment” in the ’344 patent would understand
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`that a game environment operates at the “application layer.” PO Resp. 19.
`This contention, however, merely reinforces our view that “game
`environment” does not add essential structure to claim 1, but instead is a
`term describing an application, i.e., a use, of the structure set forth in
`claim 1.
`In view of the foregoing, we decline to adopt Patent Owner’s
`proposed construction of “game environment” and, instead, determine that
`the term is a statement of intended use not entitled to patentable weight. See
`Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (holding that a preamble
`is not limiting “where a patentee defines a structurally complete invention in
`the claim body and uses the preamble only to state a purpose or intended use
`for the invention”).
`
`4. “participant”
`Patent Owner contends that the term “participant” should be construed
`as “a game application program that interacts with a logical broadcast
`channel which overlays an underlying network.” Id. at 21. Patent Owner
`contends that the specification’s statement that a game environment “is
`provided by a game application program executing on each player’s
`computer that interacts with a broadcaster component,” as well as
`descriptions of players connecting to a broadcast channel and the broadcast
`channel overlaying a point-to-point network, support its construction. Id.
`(citing, e.g., Ex. 1101, 16:34–36, 4:14–26, 1:44–57). Accordingly, Patent
`Owner contends, the term “‘participant’ differentiates between the physical
`computers of an underlying network and the gaming applications that
`actually participate in a particular broadcast channel.” Id. at 22 (citing, e.g.,
`Ex. 1101, 1:44–57, 16:30–46).
`
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`Petitioner contends the specification uses “participant” without
`imposing any such limitations. Pet. Reply 2 (citing Ex. 1101, 1:44–49,
`1:40–43, 1:54–67, 2:14–20, 2:31–38). Accordingly, Petitioner contends,
`under the broadest reasonable interpretation, the term “participant” should
`receive its plain meaning (“participant in the network”). Id. at 3.
`As an initial matter, we observe that Patent Owner’s proposed
`construction, “a game application program that interacts with a logical
`broadcast channel which overlays an underlying network,” builds on its
`proposed construction of “game environment” by requiring a participant to
`be a “game application program” that interacts with a logical broadcast
`channel. However, as set forth above, “game environment” is an intended
`use of the computer network recited in the claims. Thus, adding an
`application program requirement to “participant” is an attempt to add a
`further limitation (i.e., “application program”) to the intended use that, we
`determine, is not a claim limitation.
`On the other hand, claim 9, which depends from claim 1, recites that
`“each participant is a process executing on a computer.” Ex. 1101, 29:54–
`55. The ’344 patent uses the term “process” in describing both application
`programs and parts of programs. See, e.g., id. at 15:29–36 (“Computer 600
`includes multiple application programs 601 executing as separate processes.
`. . . Alternatively, the broadcaster component may execute as a separate
`process or thread from the application program.”), Fig. 9 (“Contact
`process”). Thus, as used in claim 9, participant encompasses more than
`application programs—the limitation Patent Owner seeks to impose on
`“participant” in claim 1. By imposing a narrower limitation on
`“participant,” for purposes of claim 1, than the limitation imposed by
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`claim 9, Patent Owner’s proposed claim construction is inconsistent with the
`specification.6
`Petitioner proposes that “participant” be construed to have its “plain
`meaning.” Pet. Reply 3 (“participant in the network”). For reasons
`discussed below, we agree that the plain meaning of the term “participant,”
`including the various constraints placed on it by the claims themselves,
`would be sufficiently clear to a person of ordinary skill in the art for
`purposes of the analysis.
`
`5. “connection”
`Patent Owner contends the term “connection” should be construed as
`“an edge between two game application programs connected to a logical
`broadcast channel that overlays an underlying network.” PO Resp. 22–23
`(citing Ex. 1101, 4:51–53, 11:22–23, claims 1 and 19).
`As discussed above, we disagree with Patent Owner’s attempt to
`introduce a “game application program” limitation into claim 1. When
`
`
`6 Patent Owner contends that its constructions are “unrebutted” and that
`Petitioner’s declarant, Dr. Karger, testified that he had no understanding of
`the terms Patent Owner seeks to construe. PO Resp. 22–23 (citing, e.g.,
`Ex. 2033, 100:23–101:8, 51:14–52:9). We disagree. Petitioner “interpreted
`[terms] for purposes of this review with their plain and ordinary meaning
`consistent with the specification of the ’344 patent.” Pet. 13; Pet. Reply 3.
`Moreover, we have reviewed portions of Dr. Karger’s testimony cited by
`Patent Owner (see PO Resp. 26–28; Mot. Obsv. 2, 5, 7-9), and do not agree
`that he had no understanding of the terms. Although Dr.
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