`
`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`PLR WORLDWIDE SALES LIMITED,
`
`Petitioner,
`
`
`v.
`
`FLIP PHONE GAMES INC.,
`
`Patent Owner.
`
`––––––––––
`Case No. IPR2024-00132
`
`U.S. Patent No. 9,731,202
`
`––––––––––
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,731,202
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`12393-00001/14456268.1
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`I.
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Standing ........................................................................................................... 2
`
`III.
`
`Identification of Challenge And Relief Requested .......................................... 2
`
`IV. Level Of Ordinary Skill In The Art ................................................................. 2
`
`V.
`
`The ’202 patent ................................................................................................ 3
`
`A. Overview ............................................................................................... 3
`
`B.
`
`Prosecution History of the ’202 patent .................................................. 3
`
`VI. Technology Background .................................................................................. 5
`
`A. Video Games ......................................................................................... 5
`
`B. Mobile Games ....................................................................................... 5
`
`C.
`
`Dynamic Content and In-Game Ads ..................................................... 7
`
`VII. Overview Of The Prior Art .............................................................................. 8
`
`A. Hays (Ex. 1005) ..................................................................................... 8
`
`B.
`
`C.
`
`Choi (Ex. 1006) ................................................................................... 10
`
`Chu (Ex. 1007) .................................................................................... 11
`
`D. Van Datta (Ex. 1009)........................................................................... 11
`
`E.
`
`Levkovitz (Ex. 1008) ........................................................................... 13
`
`VIII. Claim Construction ........................................................................................ 14
`
`IX. Detailed Explanation of Invalidity Grounds .................................................. 14
`
`A. Ground 1: Claims 1-9 and 11-24 are Rendered Obvious in View
`of Hays................................................................................................. 14
`
`1.
`
`Claim 1 ...................................................................................... 14
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`Claim 2: The method of claim 1, wherein the updated
`video-game content is promotional content. ............................. 21
`
`Claim 3: The method of claim 1, further comprising the
`step of checking whether the communications device
`should receive the updated video-game content before
`uploading the updated video-game content to the
`communications device. ............................................................ 21
`
`Claim 4: The method of claim 1, further comprising the
`step of sending information to the mobile communication
`device as part of the updated content, the information
`providing an in-game placement location associated with
`the updated video-game content. .............................................. 22
`
`Claim 5: The method of claim 1, further comprising the
`step of tracking what has been uploaded to the mobile
`communication device. ............................................................. 25
`
`Claim 6: The method of claim 1, wherein uploading
`updated video-game content to the mobile
`communication device further comprises displaying the
`video-game content within the game at a location based
`on user interaction. .................................................................... 26
`
`Claim 7: The method of claim 1, wherein the video-game
`content is displayed in the video game for a
`predetermined period of time. ................................................... 28
`
`Claim 8: The method of claim 1, wherein the video-game
`content is selected based on the location of the mobile
`communication device. ............................................................. 29
`
`Claim 9: The method of claim 1, wherein the video-game
`content is selected based on user information specific to a
`user of the mobile communication device. ............................... 30
`
`B.
`
`Ground 2: Claims 1-9 Are Rendered Obvious By Hays and
`Choi ..................................................................................................... 30
`
`1.
`
`Rationale to Combine Hays and Choi ....................................... 31
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`2.
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`3.
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`Limitation 1[b] .......................................................................... 35
`
`Claim 8 ...................................................................................... 36
`
`C.
`
`Ground 3: Claim 4 Is Rendered Obvious by Hays (or Hays and
`Choi) in Further View of Chu ............................................................. 36
`
`1.
`
`2.
`
`Rationale to Combine Hays (or Hays and Choi) with Chu ...... 37
`
`Claim 4 ...................................................................................... 39
`
`D. Ground 4: Claim 6 is Rendered Obvious by Hays (or Hays and
`Choi) in Further View of van Datta .................................................... 40
`
`1.
`
`Rationale to Combine Hays (or Hays and Choi) with van
`Datta .......................................................................................... 40
`
`2.
`
`Claim 6 ...................................................................................... 43
`
`E.
`
`Ground 5: Claims 1-3 and 5-9 Are Rendered Obvious by
`Levkovitz ............................................................................................. 45
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 ...................................................................................... 45
`
`Claim 2: The method of claim 1, wherein the updated
`video-game content is promotional content. ............................. 48
`
`Claim 3: The method of claim 1, further comprising the
`step of checking whether the communications device
`should receive the updated video-game content before
`uploading the updated video-game content to the
`communications device. ............................................................ 48
`
`Claim 5: The method of claim 1, further comprising the
`step of tracking what has been uploaded to the mobile
`communication device. ............................................................. 49
`
`Claim 6: The method of claim 1, wherein uploading
`updated video-game content to the mobile
`communication device further comprises displaying the
`video-game content within the game at a location based
`on user interaction. .................................................................... 49
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`6.
`
`7.
`
`8.
`
`Claim 7: The method of claim 1, wherein the video-game
`content is displayed in the video game for a
`predetermined period of time. ................................................... 50
`
`Claim 8: The method of claim 1, wherein the video-game
`content is selected based on the location of the mobile
`communication device. ............................................................. 50
`
`Claim 9: The method of claim 1, wherein the video-game
`content is selected based on user information specific to a
`user of the mobile communication device. ............................... 51
`
`F.
`
`Ground 6: Claim 4 is Rendered Obvious by Levkovitz and Chu ....... 51
`
`1.
`
`2.
`
`Rationale to Combine Levkovitz with Chu .............................. 51
`
`Claim 4 ...................................................................................... 54
`
`G. Ground 7: Claim 6 is Rendered Obvious by Levkovitz in
`Further View of van Datta ................................................................... 55
`
`1.
`
`2.
`
`Rationale to Combine Levkovitz with van Datta ..................... 55
`
`Claim 6 ...................................................................................... 57
`
`X. Discretionary Denial ...................................................................................... 59
`
`A.
`
`35 U.S.C. §314(a) ................................................................................ 59
`
`B.
`
`35 U.S.C. §325(d)................................................................................ 60
`
`XI. Mandatory Notices And Fees ........................................................................ 61
`
`A.
`
`Real Party-In-Interest .......................................................................... 61
`
`B.
`
`C.
`
`Related Matters .................................................................................... 61
`
`Counsel and Service Information ........................................................ 61
`
`D.
`
`Payment of Fees .................................................................................. 63
`
`XII. Conclusion ..................................................................................................... 63
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`EXHIBIT LIST
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`Ex.
`
`Description
`
`1001
`
`U.S. Patent No. 9,731,202 (“’202 patent”)
`
`1002
`
`File History for U.S. Patent No. 9,731,202
`
`1003
`
`Declaration of Dr. José Zagal
`
`1004
`
`Curriculum Vitae of Dr. José Zagal
`
`1005
`
`U.S. Patent Pub. No. 2008/0102947 (“Hays”)
`
`1006
`
`U.S. Patent Pub. No. 2007/0174490 (“Choi”)
`
`1007
`
`U.S. Patent No. 7,698,178 (“Chu”)
`
`1008
`
`U.S. Patent Pub. No. 2007/0088801 (“Levkovitz”)
`
`1009
`
`U.S. Patent No. 9,129,301 (“van Datta”)
`
`1010
`
`Steven Kent, The Ultimate History of Video Games (2001)
`
`1011
`
`1012
`
`1013
`
`Frans Mayra, “Mobile Games,” in the International Encyclopedia
`of Digital Communications and Society, 1st ed. (2015)
`
`N. Leavitt, “Will wireless gaming be a winner?” in Computer, Vol.
`36, No. 1, pp. 24-27 (Jan. 2003)
`
`Jason Soh & Bernard Tan, “Mobile Gaming,” in Communications
`of the ACM, Vol. 51, No. 3, pp. 35-39 (Mar. 2008)
`
`1014 Michael Zyda et al., “Educating the Next Generation of Mobile
`Game Developers,” in IEEE Computer Graphics and Applications,
`Vol. 27, No. 2, pp. 92-96 (Mar./Apr. 2007)
`
`1015 Mark Andrejevic, “Productive Play 2.0: The Logic of In-Game
`Advertising” in Media International Australia, Vol. 130, No. 1, pp.
`66-76 (Feb. 2009)
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`U.S. Patent No. 9,731,202
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`1016
`
`1017
`
`1018
`
`Ilya Vedrashko, Advertising in Computer Games (Doc. No.
`123290221) [Master’s Thesis, Mass. Inst. of Technology],
`DSpace@MIT
`
`Exit Games, In-Game Advertising Goes Mobile [Press Release]
`(Mar. 21, 2006)
`
`Jussi-Pekka Partanen, Mobile Gaming: A Framework for
`Evaluating the Industry 2000-2005 (2001)
`
`
`
`
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`U.S. Patent No. 9,731,202
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`LIST OF CHALLENGED CLAIMS
`
`Limitation
`
`A method for providing updated video-game content to a mobile
`communication device for use in a mobile video game, the
`method comprising the steps of:
`
`receiving a request for the updated video-game content from the
`mobile communication device, the updated video-game content
`being usable in the video game that already exists on the mobile
`communication device;
`
`checking what updated video-game content to send based on one
`of the factors including a type of the mobile communication
`device, a telecom service associated with the mobile
`communication device, and a service provider of the telecom
`service; and
`
`uploading updated video-game content to the communications
`device, the video-game content being usable when the video
`game operates on the communications device.
`
`The method of claim 1, wherein the updated video-game content
`is promotional content.
`
`The method of claim 1, further comprising the step of checking
`whether the communications device should receive the updated
`video-game content before uploading the updated video-game
`content to the communications device.
`
`The method of claim 1, further comprising the step of sending
`information to the mobile communication device as part of the
`updated content, the information providing an in-game
`
`Claim
`
`1[pre]
`
`1[a]
`
`1[b]
`
`1[c]
`
`
`
`
`
`
`
`2
`
`3
`
`4
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`U.S. Patent No. 9,731,202
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`Claim
`
`Limitation
`
`placement location associated with the updated video-game
`content.
`
`
`
`
`
`
`
`
`
`
`
`5
`
`6
`
`7
`
`8
`
`9
`
`The method of claim 1, further comprising the step of tracking
`what has been uploaded to the mobile communication device.
`
`The method of claim 1, wherein uploading updated video-game
`content to the mobile communication device further comprises
`displaying the video-game content within the game at a location
`based on user interaction.
`
`The method of claim 1, wherein the video-game content is
`displayed in the video game for a predetermined period of time.
`
`The method of claim 1, wherein the video-game content is
`selected based on the location of the mobile communication
`device.
`
`The method of claim 1, wherein the video-game content is
`selected based on user information specific to a user of the
`mobile communication device.
`
`
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`I.
`
`INTRODUCTION
`
`PLR Worldwide Sales Limited (“Petitioner”) respectfully requests inter
`
`partes review of claims 1-9 (the “Challenged Claims”) of U.S. Patent No.
`
`9,731,202 (the “’202 patent”) pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.100.
`
`The ’202 patent, which has a filing date of June 26, 2007, claims a method
`
`for providing advertisements to be displayed in a mobile game based on factors
`
`such as the type of mobile device or the mobile device’s carrier. The simplicity of
`
`this description, which is reflected in the plain language of the claims, underscores
`
`the obviousness of the challenged claims as of 2007. Petitioner presents two
`
`references, Hays and Levkovitz, both of which alone disclose or render obvious
`
`every limitation of independent claims 1, and most or all of the dependent claims.
`
`For example, Hays describes a system for presenting advertisements within a
`
`game played on a game console, which includes mobile devices such as cellular
`
`phones. The game console requests an advertisement, and the system selects an
`
`advertisement based on numerous factors, including the type of mobile device and
`
`the demographics of the user. The advertisement is then displayed within the
`
`game, such as on a store front or on a car within the game.
`
`Levkovitz similarly describes presenting advertisements for game
`
`applications running on a mobile device. The mobile device may request an
`
`advertisement from the ad server, which selects an advertisement based on the type
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`of mobile device and the demographics of the user. The advertisement is then
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`displayed within the application.
`
`II.
`
`STANDING
`
`Petitioner certifies that the ’202 patent is available for IPR and that Petitioner
`
`is not barred or estopped from presenting the grounds identified in this Petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`
`Petitioner requests cancellation of claims 1–9 (“Challenged Claims”) on the
`
`following grounds:
`
`Ground
`
`Reference(s)
`
`Hays
`
`Hays, Choi
`
`Hays (or Hays/Choi), Chu
`
`Hays (or Hays/Choi), van
`Datta
`
`Claims
`
`Basis
`
`§103
`
`§103
`
`§103
`
`§103
`
`1-9
`
`1-9
`
`4
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Levkovitz
`
`Levkovitz, Chu
`
`Levkovitz, van Datta
`
`§103
`
`1-3, 5-9
`
`§103
`
`§103
`
`4
`
`6
`
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`A person of ordinary skill in the art (“POSITA”) as of June 26, 2007 would
`
`have had an undergraduate degree in game design or development, computer
`
`science, computer engineering, or a related field, with at least two years of
`
`experience working with computer gaming systems or software application
`
`development. Ex. 1003, ¶¶66-70. Less work experience may be compensated by a
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`higher level of education or vice versa. Id. Petitioner’s expert, Dr. José Zagal,
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`exceeds this definition. Id., ¶71.
`
`V. THE ’202 PATENT
`
`A. Overview
`
`U.S. Pat. No. 9,731,202 (the “’202 patent”) is directed to “updating content of
`
`a mobile video game [that] allow for mobile communication devices to receive
`
`updated content for video games that operate on the devices.” Ex. 1001, Abstract.
`
`These “updates may be promotional in nature,” i.e. advertisements. Id. The ’202
`
`patent explains that “[a]fter server 120 receives a communication request from
`
`mobile communication device 110, server 120 may check whether updated content
`
`is available for one or more mobile video games.” Id., 5:56-59. The server
`
`determines “whether updated content should be sent to the particular mobile
`
`communication device 110,” and “user information may also be utilized to determine
`
`which updated content to download, such as the sex, age, or interests of the user.”
`
`Id., 5:64-6:5; Ex. 1003, ¶¶55-58.
`
`When
`
`the “updated content has been downloaded by
`
`the mobile
`
`communication device 110, the content may be placed in-game (i.e., within the video
`
`game environment).” Ex. 1001, 6:11-13; Ex. 1003, ¶59.
`
`B.
`
`Prosecution History of the ’202 patent
`
`The ’202 patent was filed on June 26, 2007 as Application No. 11/768,892.
`
`Ex. 1001.
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`U.S. Patent No. 9,731,202
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`During prosecution of the ’202 patent, the examiner made a number of
`
`rejections. Ex. 1003, ¶¶60-61. In response to those rejections, applicant generally
`
`did not amend its claims (except to add the limitation “video-game”). Id. Following
`
`a second final rejection on August 18, 2014, applicant filed an appeal to the Patent
`
`Trial and Appeal Board. Ex. 1002, 67-85. On February 2, 2017, the Board reversed
`
`the examiner, finding that the reference US 2006/0136297 A1 (“Willis”) does not
`
`disclose “checking what updated video-game content to send based on ... a type of
`
`mobile communication device.” Id., 41. The Board found that Willis only
`
`“discloses that advertising content is sent based on the physical geographic location
`
`of the gamer,” and “not based on the console type.” Id., 42. The Board also agreed
`
`that Willis’s content “could be adapted by the mobile communication device, rather
`
`than by a separate device that provides or uploads the updated content to the mobile
`
`communication device, as required by Appellant’s claims.” Id. Following the
`
`Board’s decision, the patent issued on April 7, 2017. Ex. 1003, ¶¶62-63.
`
`Both of Petitioner’s primary references, Hays and Levkovitz, disclose a server
`
`selecting an advertisement based on the type of the mobile communication device.
`
`Neither reference was cited or considered by the examiner. Ex. 1003, ¶64.
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`U.S. Patent No. 9,731,202
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`VI. TECHNOLOGY BACKGROUND
`
`A. Video Games
`
`The history of video games spans decades. For example, in 1961, students at
`
`MIT programmed an early, very expensive, very large computer to play a game they
`
`titled “Spacewar,” which simulated duels between rocket ships in space. Ex. 1003,
`
`¶44; Ex. 1010 at 34-35. Video games rose in popularity and entered the mainstream
`
`in the 1970s and 1980s, particularly with the development and release of coin-
`
`operated arcade machines and home video game consoles, such as the Magnavox
`
`Odyssey, the Atari Video Computer System, the Nintendo Entertainment System,
`
`and the Sega Master System. Ex. 1003, ¶45; Ex. 1010 at 42, 124, 140-166, 295, 320.
`
`By the end of the 1980s, video games were already a multi-billion dollar business.
`
`Ex. 1003, ¶45; Ex. 1010 at 429.
`
`B. Mobile Games
`
`Portable video game systems began to launch at roughly the same time as
`
`home video game consoles. For example, in the late 1970s, Nintendo released its
`
`“Game & Watch” series of watch-shaped portable video games. Ex. 1003, ¶46; Ex.
`
`1010 at 296; Ex. 1011 at 2. Ten years later, in 1989, Nintendo released the Game
`
`Boy, one of the first handheld video game systems that supported multiple games by
`
`way of interchangeable cartridges. Ex. 1003, ¶46; Ex. 1010 at 430; Ex. 1011 at 2.
`
`Video games began appearing on mobile phones in the late 1990s. For
`
`example, in 1997 Nokia began pre-installing a mobile version of the game Snake on
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`its mobile handsets. Ex. 1003, ¶47; Ex. 1011 at 2; Ex. 1012 at 2. As mobile phones
`
`incorporated increasingly more powerful hardware, demand for mobile games
`
`increased and more mobile game developers emerged to meet that demand. Ex.
`
`1003, ¶47; Ex. 1012 at 2; Ex. 1013 at 2. Following that trend, in 2003, handset
`
`manufacturer Nokia released a portable gaming device built on a mobile phone,
`
`called the N-Gage. Ex. 1003, ¶47; Ex. 1013 at 4. Market analysts in the early 2000s
`
`considered mobile games to be one of the fastest growing segments in the video
`
`game industry, and established video game publishers invested hundreds of millions
`
`of dollars to acquire a presence in that market. Ex. 1003, ¶48; Ex. 1014 at 1. Indeed,
`
`as the ’202 Patent acknowledges, by its priority date “[m]any mobile communication
`
`devices … [were] capable of operating video games,” and “gaming on mobile
`
`communication devices [had] become a popular mode of entertainment.” Ex. 1001,
`
`1:13-16, 1:25-27.
`
`Although mobile game development posed some unique challenges, hardware
`
`manufacturers and software developers quickly adapted to meet these challenges.
`
`Ex. 1003, ¶¶48-49. For example, Intel and NVIDIA developed hardware and
`
`software specifically designed to support 3D graphics on mobile phones; handset
`
`manufacturers such as Ericsson and Motorola defined software interfaces to support
`
`standard functions used in video games; and platform developers such as Oracle and
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`Qualcomm released software development platforms to facilitate programming of
`
`mobile games. Ex. 1003, ¶49; Ex. 1012 at 3; Ex. 1013 at 2-3; Ex. 1014 at 1.
`
`C. Dynamic Content and In-Game Ads
`
`Game developers embraced the idea of updateable games even before mobile
`
`games became popular. Ex. 1003, ¶52. Many game publishers released expansion
`
`packs for popular games that added new levels or new in-game characters or items
`
`to keep players interested. Id. For example, in 2001, Nokia launched a subscription
`
`service that allowed members to download new levels for certain mobile games. Id.;
`
`Ex. 1018 at 52.
`
`Dynamic content updates also allowed advertisers to expand into video
`
`games. Ex. 1003, ¶53. By 2006, a number of different advertising companies
`
`offered in-game advertising networks that allowed game developers to incorporate
`
`dynamic ads from third parties into their games, including mobile games. Id.; Ex.
`
`1015 at 1-2; Ex. 1016 at 22-23; Ex. 1017 at 1. Many of these in-game ads took the
`
`form of billboards and similar passive advertisements within the game world;
`
`however, interactive ads were also incorporated into games, requiring the user to
`
`interact with an in-game object in order to trigger advertising content to appear. Ex.
`
`1013, ¶53; Ex. 1016 at 45. At least some of the grounds presented in this petition
`
`rely on prior art references originating at several of the in-game advertisement
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`network companies from that era. Ex. 1003, ¶54; see also, e.g., Ex. 1006; Ex. 1007.
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`VII. OVERVIEW OF THE PRIOR ART
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`The below is an overview of the asserted prior art. All of the below references
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`relate to provision and display of advertisements in a video game, and typically a
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`video game running on a mobile communication device. Ex. 1003, ¶¶74-75. Thus,
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`all of these references would be obvious sources that a POSITA would have
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`considered when seeking to improve the provision of updated content to a mobile
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`video game, as they all relate to the same field of endeavor, i.e., systems and methods
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`for delivering updated content, such as advertisements, to video games. Id.
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`A. Hays (Ex. 1005)
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`U.S. Patent Pub. No. 2008/0102947 (“Hays”) was filed on March 8, 2005 and
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`is therefore prior art under pre-AIA §102(e).
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`Hays is directed to “[a]n advertisement delivery scheme and associated
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`facility provide targeted advertisements for multiple video games without
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`advertisers having to specify specific game titles in which they would like their
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`advertisements placed.” Ex. 1005, Abstract. In particular, Hays describes “[a]n
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`advertisement delivery scheme and associated computerized facility” that “allow
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`advertisers to deliver their campaign messages to specific audiences they wish to
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`target across one or more multiple game titles played across multiple platforms (e.g.,
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`PC, console, mobile, etc.).” Id., ¶17. This is done by the “game playing device ...
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`request[ing] and receiv[ing] advertisements from the advertisement management
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`service system.” Id., ¶51. The advertisement management service system selects
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`which advertisements to deliver using “an advertising matching and weighting
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`system,” which “calculate[s] [a] weight of each advertisement based on several
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`factors including ... information regarding the specific client type.” Id., ¶43.
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`When the video game receives the advertisement, they are “presented in the
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`appropriate available ad units at the appropriate time during game play.” Id., ¶21.
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`For example, “a game character [that] may move around a screen holding a can of
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`Pepsi and ask player if they would like a drink.” Id., ¶79. The below annotated
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`Figure 1A shows the relationship between Hays’s various systems. Ex. 1003, ¶¶76-
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`78.
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`
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`B. Choi (Ex. 1006)
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`U.S. Patent Pub. No. 2007/0174490 (“Choi”) was filed on January 19, 2007
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`and claims priority to several provisional applications filed in 2006. It is therefore
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`prior art under pre-AIA §102(e).
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`Choi is directed to “[m]ethods and systems for managing distribution and
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`retrieval of data (for example advertising content and viewing statistics) ... into pre-
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`existing mobile applications” such as “portable game consoles.” Ex. 1006, Abstract,
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`¶3. In selecting advertisements to deliver to the mobile game, Choi describes using
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`“demographic information from the carrier” of the mobile device as well as using
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`U.S. Patent No. 9,731,202
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`“GPS location information to request location-specific advertising.” Ex. 1006, ¶¶84,
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`43. Choi obtains demographic information from the carrier by inference because “a
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`users’ carrier implies a certain demographic.” Id., ¶86, ¶96 (“[S]ome carriers have
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`users that are older, younger, businesses, family, etc.”); Ex. 1003, ¶¶79-80
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`C. Chu (Ex. 1007)
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`U.S. Patent No. 7,698,178 (“Chu”) was filed on November 22, 2005 and
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`published on April 20, 2006. It is therefore prior art under pre-AIA §102(a), (b) and
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`(e).
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`Chu is directed to “[A]n online game advertising system ... for enabling ...
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`interactive advertisements ... that appear within an online video game.” Ex. 1007,
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`Abstract. Chu discloses “advertising metadata and schedules that determine what
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`advertisements are to display in specified locations within the game,” and in turn
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`receiving advertisements that include “[a] location object (530, 630) [that] represents
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`the location within a game at which advertisements are to appear.” Ex. 1007, 14:20-
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`15:5; Ex. 1003, ¶¶81-82.
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`D. Van Datta (Ex. 1009)
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`U.S. Patent No. 9,129,301 (“van Datta”) was June 13, 2006 and published on
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`April 5, 2007. It also claims priority to application No. 11/241,229, filed on
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`September 30, 2005. It is therefore prior art under pre-AIA §102(a) and (e).
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`U.S. Patent No. 9,731,202
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`Van Datta is directed to “[a] system and method for placing an advertisement
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`in a digital environment based upon a user’s choice, subject to certain predetermined
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`parameters.” Ex. 1009, Abstract. In general, van Datta describes “objects ... in a
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`video game [that] may be ‘tagged,’ these ‘tagged’ areas being subject to the insertion
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`or placement of advertising content.” Id., 2:59-61. For example, “the face of a
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`billboard 100 may be ‘tagged’ (110) to indicate that an advertisement may be
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`embedded in that location.” Id., 2:61-64. Such “dynamic advertising content may
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`be pushed ... into the video game ... via, for example, an ... advertising server.” Id.,
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`3:5-7. This includes provision of advertisements “to a portable media device or
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`cellular phone.” Id., 11:13.
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`Van Datta further discloses that, when the video game receives the
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`advertisement, “the user may select particular advertising content for insertion in a
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`digital environment,” such as particular locations on “a vehicle” or “a uniform.” Ex.
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`1009, 5:62-6:2. Moreover, “[t]he user may ... drag-and-drop an advertisement ...
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`into the particular advertising asset displayed in the environment window,” such that
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`“a particular shape of billboard ... may be populated with a particular advertisement”
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`selected by a user. Id., 7:55-8:9. The below figures from van Datta depict in-game
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`locations for which the user can select a particular advertisement to display. Ex.
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`1003, ¶¶83-85.
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`Petition for Inter Partes Review
`U.S. Patent No. 9,731,202
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`E.
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`Levkovitz (Ex. 1008)
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`U.S. Patent Pub. No. 2007/0088801 (“Levkovitz”) was filed on May 4, 2006
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`and published on April 19, 2007. It is also claims priority to application No. 11/250,
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`476, which was filed on October 17, 2005. It is therefore prior art under §102(a) and
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`(e).
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`Levkovitz is directed to “contextual and/or noncontextual placement of
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`content, e.g., advertisements or banners, within an application executed by a cellular
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`phone, a mobile phone, or other wireless communication device.” Ex. 1008, ¶5. The
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`application could be “games for mobile phones.” Id., ¶6; see also ¶123 (“The
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`application 176 may be ... a game”), ¶127 (“a first application 176 (e.g., a chess
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`game)”, “a second application 176 (e.g. a racing game).”).
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`Advertisements are delivered by the mobile game “request[ing] content” from
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`an “ad server” which will “selectively serve content items to the content client, based
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`on parameters related to the mobile phone, e.g., manufacturer identifier, model
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`identifier, available memory, presentation capabilities, or the like..” Ex. 1008, ¶6,
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`see also id., ¶126 (“[A]d server 110 may select one or more content items which
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`may be adequately presented by device 170 based on properties of device 170, e.g.,
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`handset model ...”). The “ad server” then “serve[s] content items directed for
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`presentation using a first application 176 (e.g., a chess game).” Ex. 1008, ¶127. The
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`“[d]evice 170 may present the content item(s),” such as “within application 176,
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`during or together with the execution of application 176.” Id., ¶131. For example,
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`“the user may co