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.,
`BUNGIE, INC.,
`Petitioners
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner
`____________________
`
`Case IPR2015-019721
`Patent 6,701,344
`__________________________________________________________
`
`PATENT OWNER’S MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00934, has been joined as a
`petitioner in this proceeding.
`
`
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`I.
`
`INTRODUCTION
`
`As set forth in Patent Owner’s Response, United States Patent No. 6,701,344
`
`(IPR2015-01970, Ex. 1001) (“the ‘344 Patent”) is valid over the prior art.
`
`However, in the event that the Board finds to the contrary despite the host of
`
`evidentiary and technical issues that warrant a finding of patentability,
`
`Acceleration Bay, LLC (“AB”) submits this Motion to Amend in order to amend
`
`certain claims of the ‘344 Patent which demonstrates the patentability of the
`
`substitute claims beyond any doubt.
`
`In the proceedings concerning the ‘344 Patent, the Board instituted inter
`
`partes review for sixteen claims of the ‘344 Patent in IPR2015-01970 and for
`
`fifteen claims of the ‘344 Patent in IPR2015-1972. IPR2015-01970, Paper No. 9,
`
`IPR2015-01972, Paper No. 8. Specifically in IPR2015-01970, the Board
`
`concluded that there is a reasonable likelihood that Petitioner would prevail in
`
`establishing the unpatentability of (1) claims 1–12 and 16 – 19 as obvious under 35
`U.S.C. § 103(a) over DirectPlay2 and Lin3, and (2) claims 1–11 and 16–19 as
`
`
`2 Bradley Bargen & Peter Donnelly, Inside DirectX®: In-Depth Techniques for
`Developing High-Performance Multimedia Applications (1998) (IPR2015-01970,
`Ex. 1003) (“DirectPlay”).
`3 Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low Message
`Overhead and High Reliability for Broadcasting on Small Networks, Technical
`Report No. CS1999-0637 (Univ. of Cal. San Diego, 1999) (IPR2015-01970, Ex.
`1004 (Exhibit B)) (“Lin”).
`
`1
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`obvious under 35 U.S.C. § 103(a) over Lin. In IPR2015-01972, the Board
`
`concluded that there is a reasonable likelihood that Petitioner would prevail in
`
`establishing the unpatentability of claims 1–11 and 16–19 as obvious under 35
`U.S.C. § 103(a) over Shoubridge.4 While the evidence in these proceedings
`demonstrates that the prior art does not render the ‘344 Patent invalid, if the Board
`
`determines that claim 1 is invalid, Patent Owner seeks to substitute claim 1 with
`
`claim 20. Likewise, if the Board determines that claim 7 is invalid, Patent Owner
`
`seeks to substitute claim 7 with claim 21. Finally, if the Board determines that
`
`claim 8 is invalid, then Patent Owner seeks substitute claim 8 with claim 22. See
`
`37 C.F.R. § 42.22(a)(2); see also 35 U.S.C. § 316(d). To be clear, AB’s request to
`
`amend the claims and propose substitute claims is contingent, and needs to be
`
`considered only if the Board finds that the there is sufficient testimonial and
`
`technical evidence in the record that demonstrates that the original claims are
`
`unpatentable.
`II. THE MOTION AND PROPOSED AMENDMENTS COMPLY WITH
`§ 42.121.
`Consistent with the requirements of 37 C.F.R. § 42.121, Patent Owner
`
`conferred with the Board on July 11, 2016. See 37 C.F.R. § 42.121(a); see also
`
`IPR2015-01970, Paper No. 28, IPR2015-01972, Paper No. 28. This Motion is
`
`
`4 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, 3
`IEEE INT’L CONF. ON COMMS. CONF. REC. 1381–86 (1997) (IPR2015-
`01972, Ex. 1105) (“Shoubridge”).
`
`2
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`timely filed. See 37 C.F.R. § 42.121(a)(1). In addition, Patent Owner has adhered
`
`to the requirements articulated by the Board in Idle Free Systems, Inc. v.
`
`Bergstrom, Inc., Case No. IPR 2012-00027 (Paper No. 26); Toyota Motor Corp. v.
`
`American Vehicular Science, LLC, Case No. IPR 2013-00422, (Paper No. 25); and
`
`MasterImage 3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040 (Paper No. 42) as
`
`the Board advised.
`
`Patent Owner’s proposed amendments are responsive to a ground of
`
`unpatentability because trial was instituted on claims 1–12 and 16–19, and the
`
`proposed amendments are to claims 1, 7, and 8. See 37 C.F.R. § 42.121(a)(2)(i).
`
`In its two Institution Decisions involving the ‘344 Patent, the Board instituted inter
`
`partes review of claims 1, 7, and 8 on three grounds of unpatentability: (1) 35
`U.S.C. § 103(a) over DirectPlay and Lin5; (2) 35 U.S.C. § 103(a) over Lin; and (3)
`35 U.S.C. § 103(a) over Shoubridge. See IPR2015-01970, Paper No. 9 at 26,
`
`IPR2015-01972, Paper No. 8 at 23. In its Institution Decisions, the Board
`
`determined that Petitioner demonstrated a reasonable likelihood that it prevail in
`
`establishing the unpatentability of claims 1, 7, and 8 due, at least in part, to not
`
`recognizing that the originally-claimed m-regular, non-complete graph is a graph
`
`representing an overlay network and that the originally-claimed participants
`
`communicate at the application layer. See IPR2015-01970, Paper No. 9 at 17-18
`
`
`5 Patent Owner disputes whether Lin is prior art to the ‘344 Patent. Patent Owner
`further disputes whether Lin or Shoubridge were publically available prior to the
`priority date of the ‘344 Patent.
`
`3
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`(relying on Lin’s transport layer graph); IPR2015-01972, Paper No. 8 at 12-14
`
`(relying on Shoubridge’s network layer graph). The proposed amendments narrow
`
`claims 1, 7, and, 8 by clarifying that the participants are game participants that
`
`broadcast application-level gaming data to other participants and that the m-
`
`regular, non-complete graph is a graph of a network that overlays an underlying
`
`network.
`
`Also the amendments, which affect claims 1, 7, and 8 do not enlarge the
`
`scope of the claims or introduce any new subject matter. 37 C.F.R. §
`
`42.121(a)(2)(ii). Further, Patent Owner has presented a reasonable number of
`
`substitute claims: three substitute claims are proposed, one for each of claims 1, 7,
`
`and 8. 37 C.F.R. § 42.121(a)(3). Finally, this Motion includes a claim listing and
`
`sets forth the support in the original and earlier-filed disclosures for the proposed
`
`amendments. See 37 C.F.R. § 42.121(b)(1)-(2); see also Appendix A; § VII, infra.
`
`Accordingly, Patent Owner has met all requirements of 37 C.F.R. § 42.121.
`III.
`
` CLAIM LISTING
`
`Patent Owner’s claim listing is attached hereto as Appendix A. See 37
`
`C.F.R. § 42.121(a)-(b). The ‘344 Patent currently contains claims 1–19. Trial was
`
`instituted on claims 1–12 and 16–19. See IPR2015-01970, Paper No. 9, IPR2015-
`
`01972, Paper No. 8. The claim listing includes the proposed contingent substitute
`
`claims 20–22. The substitute, reformatted claims are shown below with: (1)
`
`underlining indicating inserted text, (2) italics indicating claim language previously
`
`incorporated by reference via a dependency clause and now explicitly recited, and
`
`(3) strikethrough indicating deleted text. Toyota Motor Corp. v. American
`
`4
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`Vehicular Sciences LLC, IPR2013-00244, Paper No. 25 at 2–3. Patent Owner
`
`proposes to substitute originally patented claims 1, 7, and 8 with substitute claims
`
`20–22. Patent Owner’s proposal to enter substitute claims 20–22 should be treated
`
`as contingent on a finding that originally patented claims 1, 7, and 8 are invalid.
`
`See id. at 2. Patent Owner does not propose to cancel any originally patented
`
`claims.
`IV. CLAIM CONSTRUCTION
`Proposed substitute claims 20–22 introduce a number of new terms.
`
`Although Patent Owner believes that the meanings of the following terms are clear
`
`in light of the specification, those new terms “which reasonably can be anticipated
`
`as subject to dispute” are construed below. See Toyota Motor Corp. at 5 (“If there
`
`is any new term used in a proposed substitute claim, the meaning of which
`
`reasonably can be anticipated as subject to dispute, the patent owner should
`
`provide a proposed claim construction in the motion to amend.”).
`A.
`The broadest reasonable interpretation of the “gaming participant” is “a
`
`“gaming participant”
`
`game application program that interacts with a logical broadcast channel that
`
`overlays an underlying network.” Generally speaking, the ‘344 Patent uses the
`
`terms “participant” and “application program” to refer to the element that connects
`
`to a broadcast channel. See, e.g., ‘344 Patent at 1:44–51 (using the term
`
`“participants” to refer to the “processes on different computers [that] communicate
`
`via point-to-point connections”); id. at 4:23–30 (explaining that in the context of a
`
`broadcast channel, “a process executing on a computer is connected to four other
`
`5
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`processes executing on this or four other computers”); id. at 15:17–20 (“The
`
`broadcast channel is well suited for computer processes (e.g., application
`
`programs) that execute collaboratively….”).
`
`In the particular embodiment claimed in the ‘344 Patent, broadcast channels
`
`implement a distributed game environment in which the participants that connect
`
`to a broadcast channel are “game application programs:”
`In one embodiment, a game environment is implemented using
`broadcast channels. The game environment is provided by a game
`application program executing on each player’s computer that
`interacts with a broadcaster component. Each player joins a game
`(e.g., a first person shooter game) by connecting to the broadcast
`channel on which the game is played.
`‘344 Patent at 16:29–36 (emphasis added). Accordingly, in the context of the ‘344
`
`Patent, the term game participant is used to refer to game application programs that
`
`for an overlay network by interacting with a broadcast channel. Importantly, game
`
`participants exchange data at the application level applicable to the overlay
`
`network through the broadcast channel, rather than exchanging packets over
`
`physical components that exist at the network level. See, e.g., ‘344 Patent at
`
`15:18-19 (identifying application programs as a type of computer processes).
`B.
`The broadest reasonable interpretation of “gaming data” is the plain and
`
`“gaming data”
`
`ordinary meaning, which is the “game application data sent on the broadcast
`
`channel.” The ‘344 Patent identifies gaming data as game actions or messages
`
`broadcast on the game’s broadcast channel:
`
`6
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`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. When the game
`application program receives an indication of an action, either
`received on the broadcast channel or generated by the player at this
`computer, it updates its current state of the game.”
`‘344 Patent at 16:36-46 (emphasis added). A POSITA would understand from the
`
`specification that “gaming data” is the information that sent on the broadcast
`
`channel by the game application. Ex. 2094 (“Goodrich Decl. I”) at ¶¶ 44-45.
`
`Thus, the term gaming data is understood to mean game application data sent on
`
`the broadcast channel.
`C.
`The broadest reasonable interpretation of “overlay computer network that
`
`“overlay computer network that overlays an underlying network”
`
`overlays an underlying network” is the plain and ordinary meaning, which is “an
`
`overlay network that operates at the application layer, and that overlays an
`
`underlying network.” See ‘344 Patent at 4:23–30 (describing the graph of point-to-
`point connections between processes that overlays an underlying network system).
`
`A POSITA would understand that processes exchange data with other processes at
`
`the application layer. Ex. 2095 (“Goodrich Decl. II”) at ¶¶ 38, 42-44, 50.
`D.
`The broadest reasonable interpretation of “a game environment” is “a logical
`
`“game environment”
`
`broadcast channel on which a game is played that overlays an underlying
`
`network.” The intrinsic record fully supports AB’s claim construction as it is taken
`
`directly from the specification. The specification states that the “game
`
`7
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`environment that is implemented using broadcast channels.” ‘344 Patent at
`
`16:29-34 (emphasis added). The specification further provides that “[e]ach player
`joins a game (e.g. a first person shooter game) by connecting to the broadcast
`channel on which the game is played.” Id. at 16:34-36 (emphasis added).
`
`Moreover, the specification explicitly provides that the broadcast channel overlays
`
`an underlying network. Id. at Abstract (“[A] broadcast channel overlays a point-
`
`to-point communications network.”); id. at 4:14-26 (discussing the broadcast
`
`channel as an overlay of an underlying network system, such as the Internet); id. at
`
`4:30-34 (describing sending messages using the broadcast channel); id. at 17:17-32
`
`(describing broadcast channel and their connection to application programs).
`
`A POSITA would understand from reading the specification of the ‘344
`
`Patent that, under the proper construction, a game environment would operate at
`
`the application layer of the OSI Model (which can include the presentation and
`
`session layers). Goodrich Decl. I ¶ 50; ‘344 Patent at 16:29-34 (“[A] game
`
`environment is implemented using broadcast channels. The game environment is
`
`provided by a game application program executing on each player's computer that
`
`interacts with a broadcaster component..”); ’344 Patent at 16:47-56 (“To facilitate
`
`the creation of games for the game environment, an application programming
`
`interface (“API”) is provided to assist game developers..”); id. at 16:61-65 (“When
`
`joining a game, the user would download the broadcaster component and the
`
`game application program from the web server.”) (emphasis added). In fact,
`
`every example of the game environment in the specification involves gaming
`
`applications. Id. at 16:29-17:64.
`
`8
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`“broadcast channel”
`
`E.
`The term “broadcast channel” is properly construed as a “logical channel
`
`that overlays an underlying point-to-point communications network.” ‘344 Patent
`
`at 4:18-21 (defining a “broadcast channel” as a logical network “implemented
`
`using an underlying network system that sends messages on a point-to-point
`
`basis”).
`F.
`The term “connection” is properly construed as “an edge between two game
`
`“connection”
`
`application programs connected to a logical broadcast channel that overlays an
`
`underlying network.” In the context of the ‘334 Patent, the term “connection”
`
`refers to the edges connecting the participants, or “game application programs” of
`
`a game environment. See, e.g., ‘344 Patent at 4:51–53 (“[E]ach of the edges
`
`represents an ‘edge’ connection between two computers of the broadcast
`
`channel.”).
`G.
`The term “dynamic, overlay computer network” is properly construed as “an
`
`“dynamic, overlay computer network”
`
`overlay network at the application layer that overlays an underlying network in
`
`which the participants can join and leave the overlay network using a broadcast
`
`channel.” In the context of the ‘344 Patent, the term “dynamic, overlay computer
`
`network” refers to the overlay computer network at the application layer that
`
`allows participants to connect and disconnected from the overlay network. See
`
`‘344 Patent at 4:19–26 (broadcast channel overlays the underlying network
`
`system); see also id. at 5:11-16 and 16:34-36 (overlay network allows participates
`
`9
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`to join and disconnect through the broadcast channel); id. at 7:60–63 (explaining
`
`dynamic nature of broadcast channel).
`V. LEVEL OF ORDINARY SKILL
`The following analysis assumes the level of ordinary skill as asserted by Dr.
`
`Goodrich which is “someone with a bachelor’s degree in computer science or
`
`related field, and either (1) two or more years of industry experience and/or (2) an
`
`advanced degree in computer science or related field.” Goodrich Decl. II ¶ 25.
`
`However, the same analysis applies if Petitioner’s expert, Dr. David
`
`Karger’s, level of ordinary skill is adopted. See Declaration of Karger I (IPR2015-
`
`01970, Ex. 1019) at ¶ 19; Declaration of Karger II (IPR2015-01972, Ex. 1119) at ¶
`
`19.
`
`With particular relevance to the proposed amendments located in proposed
`
`substitute claims 20–22, the hypothetical POSITA would have been aware of
`
`foundational textbooks on the subject of computer networking. One such textbook,
`
`Andrew S. Tanenbaum & David J. Weatherall, COMPUTER NETWORKS (3d ed.
`1996) is cited in this case as Exhibit 2046 (“Tanenbaum”).6 In particular, the
`POSITA would have understood the various computer network “reference
`
`models,” of which OSI and TCP/IP are the most well known, and the various
`
`functionalities and protocols associated with each layer in these reference models.
`
`
`6 In fact, the Second Edition of Tanenbaum was cited as a reference in the
`Shoubridge paper cited against the ‘344 Patent in Case No. IPR2015-01972.
`Shoubridge at 1386.
`
`10
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`See generally Tanenbaum at 28-34. An understanding of these concepts would
`
`translate to an understanding of (1) how an “overlay network” differs from the
`
`underlying network on which it operates and (2) that because the participants in the
`
`claimed “overlay network” are “application programs,” messages broadcast to
`
`participants connected to the overlay network are understood to communicate at
`
`the application layer of the OSI model or the Internet protocol suite.
`VI. SCOPE OF SUBSTITUTE CLAIMS
`The proposed substitute claims retain all of the features of the corresponding
`
`original claims, and only add various additional features, therefore complying with
`
`37 C.F.R. § 42.121(2)(ii). Furthermore, Patent Owner explains herein how the
`
`substitute claims are novel and non-obvious over the references cited against the
`
`challenged claims in Case Nos. IPR2015-01970 and IPR2015-01972. Therefore
`
`the amendments comply with 37 C.F.R. § 42.121(2)(i) because they “respond to a
`
`ground of unpatentability involved in the trial.”
`VII. SUPPORT IN THE INITIAL DISCLOSURE FOR EACH PROPOSED
`AMENDED CLAIM
`Support under 37 C.F.R. § 42.121(b)(1) for the language of claim of original
`
`claims 1, 7, and 8 can be found in the originally filed specification of the ‘344
`
`Patent. The claim chart presented below maps exemplary disclosures from the
`
`‘344 Patent to the claim elements of originally patented claims 1, 7, and 8:
`
`Claim Element
`1[a] A computer network for
`providing a game
`environment for a plurality
`of participants,
`
`Disclosure from the ‘344 Specification
`“In one embodiment, a game environment is
`implemented using broadcast channels. The game
`environment is provided by a game application
`program executing on each player's computer that
`
`11
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`interacts with a broadcaster component. Each
`player joins a game (e.g., a first person shooter
`game) by connecting to the broadcast channel on
`which the game is played.” ‘344 Patent at 16:30–
`36.
`“In one embodiment, each computer is connected to
`four other computers, referred to as neighbors.
`(Actually, a process executing on a computer is
`connected to four other processes executing on this
`or four other computers.).” ‘344 Patent at 4:26–30.
`
`“FIG. 1 illustrates a graph that is 4-regular and 4-
`connected which represents the broadcast channel.”
`‘344 Patent at 4:48–49.
`“To broadcast a message, the originating computer
`sends the message to each of its neighbors using its
`point-to-point connections. Each computer that
`receives the message then sends the message to its
`three other neighbors using the point-to-point
`connections. In this way, the message is propagated
`to each computer using the underlying network to
`effect the broadcasting of the message to each
`computer over a logical broadcast channel.” ‘344
`Patent at 4:30–38.
`“In one embodiment, each computer is connected to
`four other computers, referred to as neighbors.
`(Actually, a process executing on a computer is
`connected to four other processes executing on this
`or four other computers.).” ‘344 Patent at 4:26–30.
`
`“A graph in which each node is connected to four
`other nodes is referred to as a 4-regular graph.”
`‘344 patent at 38–39.
`
`“FIG. 1 illustrates a graph that is 4-regular and 4-
`connected which represents the broadcast channel.”
`‘344 Patent at 4:48–49.
`FIG. 1 shows a non-complete 4-regular graph
`where the number of participants (9) is at least two
`greater than m (4).
`
`12
`
`1[b] each participant having
`connections to at least three
`neighbor participants,
`
`1[c] 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,
`1[d] further wherein the
`network is m-regular, where
`m is the exact number of
`neighbor participants of each
`participant and
`
`1[e] further wherein the
`number of participants is at
`least two greater than m thus
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`resulting in a non-complete
`graph.
`
`
`“FIG. 1 illustrates a graph that is 4-regular and 4-
`connected which represents the broadcast channel.”
`‘344 Patent at 4:48–49.
`
`7. The computer network of
`claim 1 wherein the
`connections are peer-to-peer
`connections.
`
`
`“One advantage of the broadcast channel, however,
`is that no computer has global knowledge of the
`broadcast channel. Rather, each computer has local
`knowledge of itself and its neighbors. This limited
`local knowledge has the advantage that all the
`connected computers are peers (as far as the
`broadcasting is concerned) and the failure of any
`one computer (actually any three computers when
`in the 4-regular and 4-connect form) will not cause
`the broadcast channel to fail.” ‘344 Patent at 13:26–
`34.
`“In one embodiment, the broadcast technique
`establishes the computer connections using the
`TCP/IP communications protocol, which is a point-
`to-point protocol, as the underlying network. The
`TCP/IP protocol provides for reliable and ordered
`delivery of messages between computers.” ‘344
`Patent at 6:25–29.
`Substitute claim 20 incorporates the features of original claim 1 and adds the
`
`8. The computer network of
`claim 1 wherein the
`connections are TCP/IP
`connections.
`
`following features, which clarify the nature of the invention. The following chart
`
`maps exemplary disclosures from the ‘344 Patent to the newly added claim
`
`elements recited in substitute claims 20–22.
`
`13
`
`

`
`Claim Element
`20[a] A dynamic, overlay
`computer network that
`overlays an underlying
`network
`
`21[a] further wherein the
`network is a broadcast
`channel that overlays an
`underlying network
`
`22[a] A dynamic, overlay
`computer network… wherein
`the dynamic, overlay
`network overlays an
`underlying network
`
`20[b] each gaming
`participant being a gaming
`application program
`
`21[b] further wherein the
`game environment is
`provided by at least one
`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`Disclosure from the ‘344 Specification
`“A broadcast technique in which a broadcast
`channel overlays a point-to-point communications
`network is provided.” ‘344 Patent, Abstract.
`
`“Thus, the broadcast technique effectively provides
`a broadcast channel using an underlying network
`system that sends messages on a point-to-point
`basis. The broadcast technique overlays the
`underlying network system with a graph of point-
`to-point connections (i.e., edges) between host
`computers (i.e., nodes) through which the broadcast
`channel is implemented.” ‘344 Patent at 4:19–26.
`
`“The broadcast technique includes (1) the
`connecting of computer to the broadcast channel
`(i.e., composing the graph), (2) the broadcasting of
`messages over the broadcast channel (i.e.,
`broadcasting through the graph), and (3) the
`disconnecting of computers from the broadcast
`channel (i.e., decomposing the graph) composing
`the graph.” ‘344 Patent at 5:11-16.
`
`“Each player joins a game (e.g., a first person
`shooter game) by connecting to the broadcast
`channel on which the game is played.” ‘344 Patent
`at 16:34-36.
`
`“Because of the dynamic nature of the broadcast
`channel and because there are many possible
`connection paths between computers, the messages
`may be received out of order.” ‘344 Patent at 7:60–
`63.
`“In one embodiment, a game environment is
`implemented using broadcast channels. The game
`environment is provided by a game application
`program executing on each player's computer that
`interacts with a broadcaster component.” ‘344
`Patent at 16:30–34.
`
`14
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`game application program
`executing on each computer
`of the computer network that
`interacts with the broadcast
`channel
`
`22[b] each gaming
`participant being a gaming
`application program
`20[c] wherein gaming data
`includes an action in the
`game broadcast on the
`broadcast channel
`21[d] wherein gaming
`participants can join and
`leave the network using the
`broadcast channel
`
`“Each time a player takes an action in the game a
`message representing that action is broadcast on the
`game's broadcast channel.” ‘344 Patent at 16:36–
`38.
`“Each player joins a game (e.g., a first person
`shooter game) by connecting to the broadcast
`channel on which the game is played.” ‘344 Patent
`at 16:34–36.
`
`“The broadcast technique includes (1) the
`connecting of computer to the broadcast channel
`(i.e., composing the graph), (2) the broadcasting of
`messages over the broadcast channel (i.e.,
`broadcasting through the graph), and (3) the
`disconnecting of computers from the broadcast
`channel (i.e., decomposing the graph) composing
`the graph.” ‘344 Patent at 5:11-16.
`
`“The game may terminate when one of the players
`reaches a certain score, defeats all other players, all
`players leave the game, and so on.” ‘344 Patent at
`16:43–46.
`The foregoing charts demonstrate that the originally patent claims and the
`
`proposed substitute claims enjoy explicit support in the specification of the ‘344
`
`Patent as required under 37 C.F.R. § 42.121(b)(1).
`
`15
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`VIII. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`PRIOR ART IN GENERAL
`None of the prior art of record or otherwise known to Patent Owner teach or
`
`suggest a gaming environment implemented with an m-regular, non-complete
`
`graph overlay network that with gaming participants broadcasting gaming data to
`
`the other gaming participants by sending the game data through each of its
`
`connections. It is the combination of all these elements that led to unexpected and
`
`dramatic results of the ‘344 Patent. The invention disclosed and claimed in the
`‘344 Patent solves the issue of providing a reliable, low-latency communications
`
`network in the context of large, widely distributed networks of processes of the
`
`type now commonly used in multiplayer gaming environments. Goodrich Decl. II
`
`¶ 45.
`
`The invention disclosed and claimed in the ‘334 Patent, which “is
`
`implemented using broadcast channels,” provides the best of both worlds: reliable
`
`message delivery and low latency communications. In particular, the ‘334 Patent
`
`discloses computer networks that take advantage of an underlying network, such as
`
`the Internet. See ‘344 Patent at 6:25–28. Implementing a computer network with a
`
`broadcast channel in which each participant sends data it receives to its neighbor
`
`participants improves reliability even over the underlying network. See ‘334
`
`Patent at 7:50–55. The same technique also reduces latency in communications by
`
`providing built-in alternative pathways for messages broadcast from one
`
`participant to the other participants. ‘344 Patent at 7:55–58. These benefits arise
`
`from the particular combination of an m-regular, non-complete overlay graph in
`
`16
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`which the participants communicate by sending data via their neighboring
`
`participants. Goodrich Decl. I ¶ 44.
`
`The features newly added to proposed substitute claims 20–22 serve to
`
`clarify the context in which the ‘344 Patent operates, and it is that context—
`
`namely, that the claimed application layer broadcasting technique is practiced on
`
`an m-regular, non-complete, overlay network that is dynamic —that the fruits of
`
`the invention are fully realized. For example, each proposed substitute claim
`
`clarifies that the invention involves the use of an “overlay” network that overlays
`
`an underlying network. Additionally, clarifying that the participants that connect to
`
`the overlay network are “application programs” drives home the fact that the
`
`broadcast technique occurs at the application layer rather than at the network layer
`
`like much of the prior art. Furthermore, each proposed claim provides that the
`
`network is dynamic, namely that participates can join and leave the network.
`H. The Substitute Claims are Patentable Over the Prior Art of
`Record
`The Board recently explained that the “prior art of record” refers to “any
`
`material art in the prosecution history of the patent… in the current proceeding…
`
`and in any other proceeding before the Office involving the patent.” MasterImage
`
`3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040 (Paper No. 42). Without
`
`conceding that any prior art approach anticipates or renders obvious any proposed
`
`substitute claim of the ’344 patent—or, indeed that these references actually
`
`qualify as prior art under pre-AIA §§ 102(a)–102(f)—the material art of record
`
`17
`
`

`
`Patent Owner’s Motion to Amend
`IPR2015-01972 (U.S. Patent No. 6,701,344)
`
`includes: (1) Lin (cited in IPR2015-01970); (2) DirectPlay (cited in IPR2015-
`
`01970, IPR2015-01972); (3) Shoubridge (cited in IPR2015-01972); (4) Alagar, S.
`
`and Venkatesan, S., “Reliable Broadcast in Mobile Wireless Networks,”
`
`Department of Computer Science, University of Texas at Dallas, Military
`
`Communications Conference, 1995, MILCOM '95 Conference Record, IEEE San
`
`Diego, California, Nov. 5-8, 1995 (pp. 236-240) (“Alagar,” IPR01972, Ex. 1109);
`
`(5) PR Newswire, "Microsoft Boosts Accessibility to Internet Gaming Zone with
`
`Latest Release," Apr. 27, 1998, pp. 1 (“IGZ,” IPR01972, Ex. 1110).
`
`1.
`
`Lin
`
`Lin does not teach the substitute claims because Lin’s proposed protocol is
`
`applied at the transport layer, not the application layer. Lin at 00009 (discussing
`
`Lin’s techniques for routing data at the transport layer); see also Goodrich Decl. I
`
`¶¶ 67, 107. As such, Lin does not teach the substitute claim elements of “each
`
`gaming participant being a gaming application program,” or “wherein the game
`
`environment is provided by at least one game application program executing on
`
`each computer of the computer network that interacts with the broadcast channel”
`
`because it does not teach applying its protocol at the application layer.
`
`Moreover, a POSITA would not have thought to modify Lin to operate at the
`
`application layer for a multiplayer game environment because Lin’s modified
`
`rumor mongering protocol does not scale well and has poor latency characteristics.
`
`See e.g., G