UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________
`
`ACTIVISION BLIZZARD, INC. and RIOT GAMES, INC.
`Petitioners
`
`V.
`
`GAME AND TECHNOLOGY CO., LTD
`Patent Owner
`
`Patent No. 8,035,649
`
`Filing Date: June 28, 2005
`
`Issue Date: October 11, 2011
`
`Title: METHOD AND SYSTEM FOR RENEWING SCREEN
`
`_____________________________________________
`
`Inter Partes Review No.: To be Assigned
`
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1 – 16 OF U.S. PATENT NO. 8,035,649
`UNDER 35 U.S.C. §§ 311-319 AND C.F.R. § 42.100 ET SEQ.
`
`
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________
`
`ACTIVISION BLIZZARD, INC. and RIOT GAMES, INC.
`Petitioners
`
`V.
`
`GAME AND TECHNOLOGY CO., LTD
`Patent Owner
`
`Patent No. 8,035,649
`
`Filing Date: June 28, 2005
`
`Issue Date: October 11, 2011
`
`Title: METHOD AND SYSTEM FOR RENEWING SCREEN
`
`_____________________________________________
`
`Inter Partes Review No.: To be Assigned
`
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1 – 16 OF U.S. PATENT NO. 8,035,649
`UNDER 35 U.S.C. §§ 311-319 AND C.F.R. § 42.100 ET SEQ.
`
`
`
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1 I.
`
`II.
`
` REQUIREMENTS FOR INTER PARTES REVIEW – 37 C.F.R. § 42.104 . 4 III.
`
`TABLE OF CONTENTS
`
`A.
`Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1). ......................... 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2). ..................................... 1
`C. Designation of Lead and Back-Up Counsel and Service Information
`under 37 C.F.R. §§ 42.8 (b)(3) & (b)(4). .............................................. 2
`PAYMENT OF FEES – 37 C.F.R. § 42.103 ................................................... 3
`
`A. Ground for Standing under 37 C.F.R § 42.104(a). ............................... 4
`B.
`Identification of Challenge and Relief Requested under 37 C.F.R.
`§ 42.104(b). ........................................................................................... 4
` SUMMARY OF THE ‘649 PATENT ............................................................. 5
`A.
`‘649 Patent Claims. ............................................................................... 6
`B.
`Prosecution History Summary. ............................................................. 9
`V.
`
`CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .................. 14
`VI.
` LEVEL OF ORDINARY SKILL IN THE ART ........................................... 19
`
` THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE VII.
`CLAIM OF THE ‘649 PATENT IS UNPATENTABLE ............................. 19
`A. Ground 1: Claims 1-3, 7-9 & 11-16 are rendered Invalid as obvious
`under pre-AIA 35 U.S.C. § 103(a) by Pose in view of Bowen. .......... 20
`B. Ground 2: Claims 4-6 & 10 are rendered invalid as obvious under
`pre-AIA 35 U.S.C. § 103(a) by Pose in view of Bowen and Rogers. . 50
`List of Citations for Grounds 1 & 2 .................................................... 61
`C.
`VIII.
` CONCLUSION .............................................................................................. 62
`
`
`
`IV.
`
`i
`
`
`
`EXHIBITS
`
`Document
`
`Exhibit No.
`
`U.S. Patent No. 8,035,649
`
`Declaration of David Crane
`
`Excerpt of ‘649 Patent File History, Preliminary Amendment (Dec.
`27, 2006)
`
`Excerpt of ‘649 Patent File History, Office Action (Aug. 25, 2009)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under
`37 C.F.R. § 1.111 (Nov. 18, 2009)
`
`Excerpt of ‘649 Patent File History, Office Action (Feb. 1, 2010)
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under
`37 C.F.R. § 1.116 (Mar. 30, 2010)
`
`Excerpt of ‘649 Patent File History, Advisory Action (Apr. 14,
`2010)
`
`Excerpt of ‘649 Patent File History, Reply and Request for
`Continued Examination under 37 C.F.R. § 1.114 (Apr. 30, 2010)
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`Excerpt of ‘649 Patent File History, Office Action (June 22, 2010)
`
`1010
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under
`37 C.F.R. § 1.111 (Sept. 17, 2010)
`
`1011
`
`Excerpt of ‘649 Patent File History, Office Action (Dec. 13, 2010)
`
`1012
`
`Excerpt of ‘649 Patent File History, Reply and Amendment under
`37 C.F.R. § 1.116 (Feb. 21, 2011)
`
`1013
`
`ii
`
`
`
`Document
`
`Exhibit No.
`
`Excerpt of ‘649 Patent File History, Examiner Interview Summary
`(Mar. 9, 2011)
`
`Excerpt of ‘649 Patent File History, Notice of Appeal from the
`Examiner to the Board of Patent Appeals and Interferences (Mar.
`14, 2011)
`
`Excerpt of ‘649 Patent File History, Pre-Appeal Brief Request for
`Review (Mar. 14, 2011)
`
`Excerpt of ‘649 Patent File History, Advisory Action (Mar. 16,
`2011)
`
`Excerpt of ‘649 Patent File History, Notice of Panel Decision from
`Pre-Appeal Brief Review (Mar. 25, 2011)
`
`Excerpt of ‘649 Patent File History, Reply and Request for
`Continued Examination under 37 C.F.R. § 1.114 (Apr. 12, 2011)
`
`Excerpt of ‘649 Patent File History, Examiner-Initiated Interview
`Summary (June 6, 2011)
`
`Excerpt of ‘649 Patent File History, Notice of Allowance (June 13,
`2011)
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`iii
`
`
`
`Document
`
`Exhibit No.
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Excerpt of ‘649 Patent File History, Post Allowance Communication
`(Sept. 8, 2011)
`
`U.S. Patent No. 5,841,439
`
`U.S. Patent No. 6,147,695
`
`U.S. Patent App. Pub. No. 2005/0137015
`
`List of Citations for Grounds 1 & 2
`
`OpenGL Reference Manual, Second Edition
`
`
`
`iv
`
`
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et. seq., the
`
`undersigned, on behalf of and representing Activision Blizzard, Inc. and Riot
`
`Games, Inc. (“Riot”) (collectively, “Petitioners”), hereby petition for inter partes
`
`review of claims 1-16 of U.S. Patent No. 8,035,649 (“the ‘649 Patent”) (Ex. 1001.)
`
`The ‘649 Patent was issued to NHN Corporation and is purportedly assigned to
`
`Game and Technology Co., Ltd. (“GAT”). Petitioners assert there is a reasonable
`
`likelihood of prevailing with respect to the claims challenged in this Petition.
`
` MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`I.
`A. Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1).
`Activision Blizzard, Inc.; Blizzard Entertainment, Inc. (“Blizzard”);
`
`Activision Publishing, Inc.; Activision Entertainment Holdings, Inc.; Riot; and
`
`Tencent Holdings Ltd. are the real parties-in-interest for this Petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2).
`GAT filed complaints against Petitioners alleging infringement of the ‘649
`
`Patent in the U.S. District Court for the Eastern District of Texas, on July 9,
`
`2015. (GAT v. Blizzard, No. 2:15-cv-1257-RWS-RSP; GAT v. Riot, No. 2:15-cv-
`
`1258-RWS-RSP.) Against Blizzard, GAT also alleged infringement of U.S. Patent
`
`Nos. 7,682,243 (“the ‘243 Patent”) and 8,235,743 (“the ‘743 Patent”). Against
`
`Riot, GAT also alleged infringement of the ‘743 Patent. On July 9, 2015, GAT
`
`filed further complaints alleging infringement of the ‘243 Patent against
`
`Wargaming Group Ltd. (GAT v. Wargaming, No. 2:15-cv-1260), and the ‘743
`
`1
`
`
`
`Patent against Valve Corporation (GAT v. Valve, 2:15-cv-1259), both in the U.S.
`
`District Court for the Eastern District of Texas. Each of the Blizzard, Riot, Valve,
`
`and Wargaming cases were consolidated for pretrial purposes in the Eastern
`
`District of Texas. On August 5, 2016, the Court transferred the Blizzard, Riot, and
`
`Wargaming cases to the Central District of California (GAT v. Riot, 2:16-cv-6486;
`
`GAT v. Blizzard, 2:16-cv-6499; GAT v. Wargaming, 2:16-cv-6554). The Court
`
`also transferred the Valve case to the Western District of Washington (GAT v.
`
`Valve, 2:16-cv-1382). The Blizzard, Riot, and Wargaming cases are all currently
`
`assigned to Judge Beverly O’Connell in the Central District of California.
`
`In addition to the present Petition, Activision Blizzard, Inc. is filing a
`
`petition for IPR on the ‘243 patent, and Petitioners are filing a petition for IPR on
`
`the ‘743 patent. (Case numbers to be determined.)
`
`Finally, U.S. Patent Application No. 14/731,006—a continuation of the
`
`application that matured into the ‘649 patent—is also currently being prosecuted
`
`before the USPTO.
`
`C. Designation of Lead and Back-Up Counsel and Service
`Information under 37 C.F.R. §§ 42.8 (b)(3) & (b)(4).
`Petitioners provide the following designation of counsel:
`
`2
`
`
`
`LEAD COUNSEL: For Petitioners:
`
`BACK-UP COUNSEL: For Petitioners:
`
`John D. Garretson (Reg. No. 39,681)
`
`Tanya Chaney (Reg. No. 55,080)
`
`(jgarretson@shb.com)
`
`(tchaney@shb.com)
`
`Shook, Hardy & Bacon L.L.P.
`
`Shook, Hardy & Bacon L.L.P.
`
`2555 Grand Blvd.
`
`600 Travis St., Suite 3400
`
`Kansas City, MO 64108-2613
`
`Houston, TX 77002-2926
`
`Phone: (816) 474-6550
`
`Phone: (713) 227-8008
`
`Fax: (816) 421-5547
`
`
`Fax: (713) 227-9508
`
`As identified in the Certificate of Service, a copy of the present petition, in
`
`its entirety, is being served to the addresses of the attorneys or agents of record.
`
`Petitioners may be served at the lead counsel address provided above. In addition,
`
`a power of attorney is being filed with the designation of counsel in accordance
`
`with 37 C.F.R. § 42.10(b).
`
` PAYMENT OF FEES – 37 C.F.R. § 42.103
`II.
`This Petition for inter partes review requests review of claims 1-16 of the
`
`‘649 Patent and is accompanied by the required Petition fee. Thus, this Petition
`
`meets the fee requirements under 35 U.S.C. § 312(a)(1). Petitioners hereby
`
`authorize charging Deposit Account 19-2112 in the amount of the required Petition
`
`fee and further authorize any additional charges that may be necessary (or any
`
`credit of overpayment) to that account.
`
`3
`
`
`
` REQUIREMENTS FOR INTER PARTES REVIEW – 37 C.F.R.
`III.
`§ 42.104
`A. Ground for Standing under 37 C.F.R § 42.104(a).
`Petitioners certify that the ‘649 Patent is eligible for inter partes review, and
`
`that Petitioners are not barred or estopped from requesting this review challenging
`
`the ‘649 Patent claims on the identified grounds. Blizzard was served with a
`
`Complaint asserting the ‘649 Patent on October 13, 2015, and Riot was served with
`
`a Complaint asserting the ‘649 Patent on October 14, 2015. This petition is being
`
`filed on September 23, 2016.
`
`B.
`
`Identification of Challenge and Relief Requested under 37 C.F.R.
`§ 42.104(b).
`Petitioners request inter partes review of claims 1-16 of the ‘649 Patent on
`
`the grounds set forth below and request that each of the claims be found
`
`unpatentable and cancelled. Petitioners’ detailed statement of the reasons for relief
`
`requested is set forth in section VII.
`
`Ground
`
`1
`
`2
`
`Index of References
`Pose in view of Bowen, as rendering the
`asserted claims obvious under pre-AIA 35
`U.S.C. § 103(a)
`
`‘649 Patent Claims
`
`1-3, 7-9 & 11-16
`
`Pose in view of Bowen in view of Rogers, as
`rendering the asserted claims obvious under pre-
`AIA 35 U.S.C. § 103(a)
`
`4-6 & 10
`
`4
`
`
`
`Each prior art reference relied upon qualifies as prior art. Specifically, U.S.
`
`Patent No. 5,841,439 (“Pose”) is a patent that has a filing date of April 24, 1997,
`
`and an issue date of November 24, 1998, which qualifies Pose as prior art under at
`
`least pre-AIA 35 U.S.C. § 102(e)(2). (Ex. 1023.) U.S. Patent No. 6,147,695
`
`(“Bowen”) is a patent that has a filing date of August 26, 1998, and an issue date of
`
`November 14, 2000, which qualifies Bowen as prior art under at least pre-AIA 35
`
`U.S.C. § 102(e)(2). (Ex. 1024.) U.S. Patent App. Pub. No. 2005/0137015
`
`(“Rogers”) is a patent application that has a filing date of August 19, 2004, and a
`
`publication date of June 23, 2005, which qualifies Rogers as prior art under at least
`
`pre-AIA 35 U.S.C. § 102(e)(1). (Ex. 1025.)
`
`IV.
`
` SUMMARY OF THE ‘649 PATENT
`U.S. Patent No. 8,035,649 was filed June 28, 2005 and issued October 11,
`
`2011. (Ex. 1001 at Cover.) The U.S. Patent claims priority to Korean Patent
`
`Application No. 10-2004-0049556 filed on June 29, 2004. (Id.) The sole inventor
`
`of the ‘649 Patent is Dae Il Kim. The ‘649 Patent has sixteen claims, three of
`
`which are independent. (Id.)
`
`The ‘649 Patent describes a method and system for updating images on a
`
`display device. (Id. at Abstract.) The method comprises steps of independently
`
`generating two images at varying frame rates and compositing the two images to
`
`form a single image. (Id.) One of the images, the first image, is generated via
`
`5
`
`
`
`rendering while the other, the second image, is not. (Id. at cl. 1.) The ‘649 Patent
`
`provides that rendering “may be used for generating an actual graphic image by
`
`realizing a three-dimensional texture such as variance in colors and density.” (Id.
`
`at 9:59-62.) Further, the data to update each of these images, image resource data,
`
`is stored in different memory locations during the image generation process. (Id. at
`
`3:42-47.)
`
`The purported invention of the ‘649 Patent aims to prevent “the update
`
`speed of the full image from being reduced together with a slowest process.” (Id.
`
`at 2:26-27.) Namely, the ‘649 Patent claims to solve the problem of “a freeze
`
`picture” being displayed to a gamer caused by delay in the display of the full image
`
`due to the lag times of different portions of the image. (Id. at 2:5-10.)
`
`A.
` ‘649 Patent Claims.
`The ‘649 Patent includes three analogous independent challenged claims:
`
`claims 1, 13, and 15. As explained below, all of the challenged claims are directed
`
`towards updating images on a display device.
`
`Claim 1 is directed to a method of updating images on a display device,
`
`comprising steps of identifying image resource data when an update event occurs,
`
`loading image resource data into a buffer by frame, generating a first image at a
`
`first frame rate by sequentially rendering the loaded image resource data,
`
`generating a second image at a second frame rate when a second update event
`
`6
`
`
`
`occurs, compositing the first and second images, and updating the display device to
`
`display the composite image. (Id. at cl. 1.) Importantly, the generation of the
`
`second image is limited to “being substantially independent from the generation of
`
`the first image such that image resource data of the second image is not loaded in
`
`the buffer space[.]” (Id.) Also, the claim requires that “the second image is
`
`generated without being rendered.” (Id. at 12:12-13.) Claim 12 is a computer
`
`readable medium with a program for executing the method of claim 1. Claims 13
`
`and 15 are systems reciting similar limitations as claim 1, comprising various
`
`modules or means, respectively.
`
`Further, the ‘649 Patent also contains 12 challenged dependent claims.
`
`Dependent claims 2, 14, and 16 are all similar in that all three require that “the first
`
`frame rate is less than the second frame rate.” (Id. at cls. 2, 14 & 16.) Claims 3
`
`and 8 are similar in that both call for the generation of an image as long as the
`
`associated update event lasts. (Id. at cls. 3 & 8.) Further, claims 5 and 9 are
`
`similar in that both call for generation of an update event based on a user input.
`
`(Id. at cls. 5 & 9.) Claim 5 specifically requires “generating the update event for
`
`the first image by a screen update request of one of changing the operation of a
`
`three-dimensional image or a user input, wherein the screen update request
`
`comprises moving a position or action of the first image,” while claim 9 requires
`
`“wherein a user input initiates the update event for the second image.” (Id.)
`
`7
`
`
`
`Claims 4 and 10 are similar in that both call for specific embodiments of the
`
`first and second images. (Id. at cls. 4 & 10.) Claim 4 requires “the first image is
`
`an image including a three dimensional object for displaying one of a player
`
`character, a Non-Player Character (NPC), and a dynamic scene in a three
`
`dimensional network game” and claim 10 requires “the second image is an image
`
`for displaying user interface input associated with one of a mouse point, a chatting
`
`window including chatting text, and an item selecting window including item state
`
`information.” (Id.) Claim 7 further requires “the step of compositing the first
`
`image with the second image includes a step of generating the entire image by
`
`overlapping the first with the second image.” (Id. at cl. 7.) Claim 11 requires
`
`“when only the update event for the first image occurs, only the first image is
`
`updated and the full image is updated at the first frame rate, when only the update
`
`event for the second image occurs, only the second image is updated and the full
`
`image is updated at the second frame rate, and when the first image and the second
`
`image are simultaneously updated, the full image includes a first area updated at
`
`the first frame rate and a second area updated at the second frame rate.” (Id. at cl.
`
`11.)
`
`Claim 6 requires “the three dimensional network game comprises a
`
`Massively Multi-player Online Role Playing Game (MMORPG) comprising a
`
`8
`
`
`
`plurality of users simultaneously participating via online in a broadband game
`
`area.” (Id. at cl. 6.)
`
`B.
`Prosecution History Summary.
`The prosecution history of the challenged claims of the ‘649 Patent is
`
`particularly relevant to the validity of the challenged claims. The Applicant
`
`submitted a preliminary amendment amending claims 1-8 and adding new claims
`
`9-12. (Ex. 1003 at 5-9; Ex. 1002 at ¶ 40.) The Examiner rejected original claims
`
`1-12 as being obvious under 35 U.S.C. § 103(a) by U.S. Pat. App. No.
`
`2005/0184993 (“Ludwin”) in view of U.S. Pat. App. No. 2003/0080971
`
`(“Hochmuth”). (Ex. 1004 at 4-8; Ex. 1002 at ¶ 41.) The Examiner found that
`
`Ludwin in view of Hochmuth disclosed all of the limitations of all of the claims.
`
`(Id.)
`
`In response, the Applicant argued that the claims distinguished the invention
`
`of the ‘649 Patent over the prior art. (Ex. 1005 at 12-14; Ex. 1002 at ¶ 41.) In
`
`particular, the Applicant explained that neither Ludwin nor Hochmuth disclosed
`
`the limitation “identifying image resource data associated with an update event for
`
`a first image from a basic recording space when the update event for the first image
`
`occurs.” (Id.; Ex. 1002 at ¶ 42.)
`
`In an Office Action, the Examiner rejected amended claims 1-12 as rendered
`
`obvious under 35 U.S.C. § 103(a) by Ludwin in view of Hochmuth and the
`
`9
`
`
`
`Examiner disagreed with the Applicant’s arguments. (Ex. 1006 at 3 & 5; Ex. 1002
`
`at ¶ 43.)
`
`In response, the Applicant presented arguments regarding how the amended
`
`claims overcome the prior art. (Ex. 1007 at 6-10; Ex. 1002 at ¶ 44.) The Applicant
`
`argued that Ludwin did not disclose the limitation regarding the “second image
`
`being substantially independent from the generation of the first image” in light of
`
`the limitation “loading the identified image resource data [of the first image] in a
`
`buffer space.” (Ex. 1007 at 9; Ex. 1002 at ¶ 44.)
`
`The Examiner stated, in an Advisory Action, that the application was not in
`
`condition for allowance because the “Applicant’s arguments filed on 03/30/2010
`
`have been fully considered but they are not persuasive.” (Ex. 1008 at 3; Ex. 1002
`
`at ¶ 45.)
`
`In response to the Advisory Action, the Applicant filed a Request for
`
`Continued Examination, proposed amendments to amended claim 1, and proposed
`
`the addition of new claim 13. (Ex. 1009 at 2-6; Ex. 1002 at ¶ 46.) The Applicant
`
`amended claim 1 to include the limitation of “such that image resource data of the
`
`second image is not loaded in the buffer space.” (Ex. 1009 at 2; Ex. 1002 at ¶ 46.)
`
`New claim 13 included the limitation “[t]he method of claim 1, wherein the second
`
`image is generated without being rendered.” (Ex. 1009 at 5; Ex. 1002 at ¶ 46.)
`
`The Applicant represented that amended claim 1 and new claim 13 were not
`
`10
`
`
`
`disclosed in Ludwin or Hochmuth. (Ex. 1009 at 8-10; Ex. 1002 at ¶ 46.) The
`
`Applicant reiterated an argument regarding the second image being generated
`
`without rendering. (Id. at 7-8; Ex. 1002 at ¶ 46.)
`
`In an Office Action dated June 22, 2010, the Examiner rejected claims 1-12
`
`as obvious under 35 U.S.C. § 103(a) by Ludwin in view of Hochmuth and further
`
`in view of U.S. Pat. No. 5,047,755 (“Morita”). (Ex. 1010 at 5; Ex. 1002 at ¶ 47.)
`
`The Examiner explained that Morita disclosed the limitation of the “image
`
`resource data of the second image is not loaded in the buffer space.” (Ex. 1010 at
`
`7-8; Ex. 1002 at ¶ 47.) For new claim 13, the Examiner rejected the claim as
`
`obvious under 35 U.S.C. § 103(a) by Ludwin in view of Hochmuth in view of
`
`Morita and further in view of U.S. Pat. App. No. 2004/0051920 (“Cameron”). (Ex.
`
`1010 at 11; Ex. 1002 at ¶ 47.) In particular, the Examiner stated that Cameron
`
`disclosed the limitation of “the second image is generated without being rendered.”
`
`(Ex. 1010 at 11; Ex. 1002 at ¶ 47.)
`
`In response to Office Action, the Applicant proposed new claims 14-17.
`
`(Ex. 1011 at 5-7; Ex. 1002 at ¶ 48.) Claims 14-17 added limitations regarding the
`
`generation of an update event, use of networking to create a Massively Multi-
`
`Player Online Role Playing Game, varying the frame rate of the composite image.
`
`(Ex. 1011 at 5-6; Ex. 1002 at ¶ 48.) The Applicant represented that the new claims
`
`were fully supported by the specification. (Ex. 1011 at 7; Ex. 1002 at ¶ 48.)
`
`11
`
`
`
`The Applicant argued claim 13 was not disclosed by Cameron, as explained
`
`below:
`
`“‘Without full rendering’ does not teach the claim feature of
`
`‘without rendering.’ One of ordinary skill in the art would
`
`understand ‘without full rendering’ to mean ‘with something less
`
`than full rendering, but with some rendering nonetheless,’ which
`
`does not mean ‘without rendering.’ Therefore, claim 13 is patentable
`
`at least for this additional reason that Cameron does not disclose or
`
`suggest what it is being relied upon by the Office Action to disclose.”
`
`(Ex. 1011 at 12; Ex. 1002 at ¶ 49.)
`
`In an Office Action, the Examiner rejected claims 1-12, 14, and 16-17 as
`
`obvious under 35 U.S.C. § 103(a) by Ludwin in view of Hochmuth and further in
`
`view of Morita. (Ex. 1012 at 6; Ex. 1002 at ¶ 50.) The Examiner also rejected
`
`claim 15 as obvious under 35 U.S.C. § 103(a) by Ludwin in view of Hochmuth in
`
`view of Morita and further in view of U.S. Pat. App. No. 2007/0099702
`
`(“Tupper”). (Ex. 1012 at 13; Ex. 1002 at ¶ 50.) The Examiner stated that claim 13
`
`contained allowable subject matter based on the Applicant’s remarks. (Ex. 1012 at
`
`14; Ex. 1002 at ¶ 50.)
`
`In response, the Applicant proposed amending claims 7 and 11 to include a
`
`similar limitation present in Claim 1: “second image data not being loaded on a
`
`12
`
`
`
`buffer.” (Ex. 1013 at 3-5 & 7; Ex. 1002 at ¶ 51.) As previously argued, the
`
`Applicant stated that Ludwin in view of Hochmuth and Morita did not disclose the
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`limitation in claims 1, 7, or 11. (Ex. 1013 at 8-10; Ex. 1002 at ¶ 51.)
`
`In an Examiner Interview, the parties were not able to “reach an agreement
`
`regarding patentability of the claimed subject matter.” (Ex. 1014 at 2; Ex. 1002 at
`
`¶ 52.) The Applicant filed a Notice of Appeal from the Examiner to the Board of
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`Patent Appeals and Interferences and Pre-Appeal Brief Request for Review for
`
`claims 1-12, 14, 15-17. (Ex. 1015 at 1; Ex. 1016 at 1; Ex. 1002 at ¶ 52.)
`
`The Examiner explained, in an Advisory Action, that the arguments for
`
`claims 1-12 and 14-17 were considered but that the arguments were not persuasive.
`
`(Ex. 1017 at 3; Ex. 1002 at ¶ 53.) Shortly thereafter, the Panel of Examiners
`
`decided that the appeal should proceed to the Board of Patent Appeals and
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`Interferences. (Ex. 1018 at 2; Ex. 1002 at ¶ 53.)
`
`In response, the Applicant filed a Reply and Request for Continued
`
`Examination to cancel claim 13 and amend claims 1, 7, and 11 to contain the
`
`following limitation present in Claim 13: “wherein the second image is generated
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`without being rendered.” (Ex. 1019 at 2-7; Ex. 1002 at ¶ 54.) The Applicant
`
`represented that the limitation did not contain new subject matter. (Ex. 1019 at 7-
`
`9; Ex. 1002 at ¶ 54.)
`
`13
`
`
`
`In an Examiner-Initiated Interview on June 6, 2011, the parties agreed to
`
`amend Claim 6 to include “non-transitory.” (Ex. 1020 at 2; Ex. 1002 at ¶ 55.) A
`
`Notice of Allowance was issued On June 13, 2011 which included an Examiner
`
`Amendment discussed in the Examiner-Initiated Interview. (Ex. 1021 at 5-7; Ex.
`
`1002 at ¶ 55.) In a post-allowance communication, the Applicant submitted a
`
`comment on the Notice of Allowance. (Ex. 1022 at 1; Ex. 1002 at ¶ 55.)
`
`Thus, the allegedly novel aspect of the claimed invention is the “second
`
`image is generated without being rendered” limitation. (Ex. 1002 at ¶ 56.)
`
`As discussed below, the prior art cited herein clearly discloses these
`
`supposed points of novelty, as well as other claimed limitations. Accordingly,
`
`claims 1-16 should be found unpatentable as obvious.
`
`V.
`
` CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(b)(3)
`A claim subject to inter partes review is given its “broadest reasonable
`
`interpretation consistent with the specification, and . . . claim language should be
`
`read in light of the specification as it would be interpreted by one of ordinary skill
`
`in the art.” In re NTP, Inc., 654 F.3d 1268, 1274 (Fed. Cir. 2011). However,
`
`“[w]hen the applicant states the meaning that the claim terms are intended to have,
`
`the claims are examined with that meaning, in order to achieve a complete
`
`exploration of the applicant's invention and its relation to the prior art.” In re Zletz,
`
`893 F.2d 319, 321 (Fed. Cir. 1989). This Petition shows that claims 1-16 of the
`
`14
`
`
`
`‘649 Patent are rendered obvious by the prior art identified herein. When
`
`challenged, these claims are to be given their broadest reasonable interpretation in
`
`light of the specification.
`
`Further, use of the term “means for” in a claim limitation creates a rebuttable
`
`presumption that [35 U.S.C.] § 112 ¶ 6 applies. CBS Interactive Inc. v. Helferich
`
`Patent Licensing, LLC, No. IPR2013-00033, Paper No. 21 at 14 (P.T.A.B. March
`
`25, 2013). The relevant Pre-AIA statute states that “an element in a claim for a
`
`combination may be expressed as a means or step for performing a specified
`
`function without the recital of structure, material, or acts in support thereof, and
`
`such claim shall be construed to cover the corresponding structure, material,
`
`or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112
`
`¶ 6 (emphasis added). The broadest reasonable interpretation (“BRI”) of a
`
`limitation including means-plus-function language is “statutorily mandated in
`
`paragraph six” and the U.S. Patent and Trademark Office “may not disregard the
`
`structure disclosed in the specification corresponding to such language when
`
`rendering a patentability determination.” In re Donaldson Co., 16 F.3d 1189,
`
`1194-95 (Fed. Cir. 1994).
`
`For terms not specifically listed and construed below, and in the absence (to
`
`date) of arguments from GAT concerning claim construction, Petitioners interpret
`
`15
`
`
`
`them, for the purposes of this IPR only, in accordance with their plain and ordinary
`
`meaning.
`
` “image resource data” (claims 1, 13, and 15) has a meaning that at least
`
`encompasses “data used to update an image” (Ex. 1001 at 3:43-47 & 8:41-
`
`42; Ex. 1002 at ¶¶ 59-62.)
`
` “update event” (claims 1, 3, 5, 8, 9, 11, 13, and 15) has a meaning that at
`
`least encompasses “action changing the operation of an image on a screen”
`
`(Ex. 1001 at 5:15-18, 5:24-27 & 6:5-7; Ex. 1002 at ¶¶ 63-67.)
`
` “basic recording space” (claims 1, 13, and 15) has a meaning that at least
`
`encompasses “memory for storing image data” (Ex. 1001 at 8:39-42; Ex.
`
`1002 at ¶¶ 68-71.)
`
` “buffer” (claims 1, 13, and 15) has a meaning that at least encompasses
`
`“temporary storage area” (Ex. 1001 at 3:37-40 & 5:59-62; Ex. 1002 at ¶¶
`
`72-76.)
`
` “rendering/rendered” (claims 1, 13, and 15) has a meaning that at least
`
`encompasses “[generating an image/generated] by using three-dimensional
`
`texturing” (Ex. 1001 at 9:58-62; Ex. 1002 at ¶ 77.)
`
`16
`
`
`
` “player character” (claim 4) has a meaning that at least encompasses “an
`
`entity or object that is controlled by a player” (Ex. 1001 at 5:23-28 ;Ex.
`
`1002 at ¶¶ 78-81.)
`
` “non-player character” (claim 4) has a meaning that at least encompasses
`
`“an entity or object that is not controlled by a player” (Id.)
`
` “screen update request” (claim 5) has a meaning that at least encompasses
`
`“a request to update a game screen due to a change in the first image” (Ex.
`
`1001 at 5:15-19; Ex. 1002 at ¶¶ 82-84.)
`
` “chatting window including chatting text” (claim 10) has a meaning that at
`
`least encompasses “an interface for users to communicate with each other”
`
`(Ex. 1001 at 6:47-52 & 7:43-50; Ex. 1002 at ¶¶ 85-88.)
`
` “an identification means for identifying image source data associated with
`
`an update event for a first image from the basic recording space in case
`
`that the update event for the first image occurs” has a meaning that at least
`
`encompasses “a software module and its equivalents for identifying image
`
`source data associated with an update event for a first image from the basic
`
`recording space in case that the update event for the first image occurs” (Ex.
`
`1001 at 5:29-32, 5:37-40, 8:43-48, 10:51-62, Figs. 2 & 5; Ex. 1002 at ¶¶ 89-
`
`94.)
`
`17
`
`
`
` “a loading means for sequentially loading the identified image resource
`
`data for each buffer by frame in a buffer space including a plurality of the
`
`buffers” (claim 15) has a meaning that at least encompasses “a software
`
`module and its equivalents for sequentially loading the identified image
`
`resource data for each buffer by frame in a buffer space including a
`
`plurality of the buffers” (Ex. 1001 at 3:35-41, 6:63-67, 8:49-52, 10:51-62,
`
`Figs. 2 & 5; Ex. 1002 at ¶¶ 89-94.)
`
` “a first image generating means for sequentially determining the image
`
`resource data loaded on the buffer, rendering the determined image
`
`resource data, and generating the first image at a first frame rate” has a
`
`meaning that at least encompasses “a software module and its equivalents
`
`for sequentially determining the image resource data loaded on the buffer,
`
`rendering the determined image resource data, and generating the first image
`
`at a first frame rate” (Ex. 1001 at 2:39-56, 3:13-17, 4:18-21, 6:14-20, 8:53-
`
`59, 9:57-10:23, 10:51-62, Figs. 2 & 5; Ex. 1002 at ¶¶ 89-94.)
`
` “a second image generating means for generating a second image
`
`associated with a second image update event at a second frame rate in case
`
`that the update event for the second image occurs” has a meaning that at
`
`least encompasses “a software module and its equivalents for generating a
`
`second image associated With a second image update event at a second
`
`18
`
`
`
`frame rate in case that the update event for the second image occurs” (Ex.
`
`1001 at 10:51-62; Ex. 1002 at ¶¶ 89-94.)
`
` “a display means for generating an entire image by compositing the first
`
`image with the second image and displaying the entire image on a
`
`predetermined display means” has a meaning that at least encompasses “a
`
`software module and its equivalents for generating an entire image by
`
`compositing the first image With the second image and displaying the entire
`
`image on a predetermined display means” (Ex. 1001 at 4:18-21, 7:26-29,
`
`9:6-10, 9:57-65, 10:51-62, Figs. 2 & 5; Ex. 1002 at ¶¶ 89-94.)
`
`VI.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`Petitioners submit that the applicable POSITA during the time frame of the
`
`priority date of the ‘649 Patent (2004), would possess: (1) at least a four-year
`
`Bachelor of Science degree OR at least 5 years of professional experience as a
`
`video game designer/developer; and (2) a working understanding of computer
`
`programming, either through education or experience of the equivalent thereof.
`
`(Ex. 1002 at ¶ 18.)
`
` THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`VII.
`CLAIM OF THE ‘649 PATENT IS UNPATENTABLE
`As detailed below, all of the limitations of claims 1-16 of the ‘649 Patent
`
`were well-known in the prior art. None of the references relied upon in this
`
`19
`
`
`
`Petition were considered by the Examiner during prosecution of the ‘649 Patent;
`
`accordingly, none of the § 103(a) obviousness combinations presented as grounds
`
`of rejection were considered during prosecution of the ‘649 Patent.
`
`A. Ground 1: Claims 1-3, 7-9 & 11-16 are rendered Invalid as
`obvious under pre-AIA 35 U.S.C. § 103(a) by Pose in view of
`Bowen.
`Pose was filed more than seven years prior to the filing date of the ‘649
`
`Patent. (Ex. 1023 at Cover; Ex. 1002 at ¶ 145.) Pose discloses a three-dimensional
`
`image, or first image, which includes foreground objects, and is composited with
`
`other images. (Id. at 4:32-37, 8:53-9:2 & 14:51-55; Ex. 1002 at ¶ 147.) The first
`
`image is upda
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