Federal Circuit affirms PTAB Mixed Decision in Acceleration Bay v. Activision Blizzard

“Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope,” wrote Judge Moore. “We see no beneficial purpose to be served by failing to include a transition word in a claim… and we caution patentees against doing so.”

Federal Circuit affirms PTAB Mixed Decision in Acceleration Bay v. Activision BlizzardAcceleration Bay appealed the final written decisions of the Board holding claims 1-9 of U.S. Patent No. 6,829,634, claims 1-11 and 16-19 of U.S. Patent No. 6,701,344, and claims 1-11 and 16-17 of U.S. Patent No. 6,714,966 all unpatentable. Petitioners Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, “Blizzard”) also cross-appealed portions of the Board’s decisions holding patentable claims 10-18 of the `634 patent, as well as substitute claims 19 of the `966 patent, 21 of the `344 patent, and 25 of the `634 patent. Blizzard also cross appealed the Board’s decisions holding that one particular reference — the Lin article — was not a printed publication under 35 U.S.C. § 102(a). In an opinion authored by Judge Moore and joined by Chief Judge Prost and Judge Reyna, the Federal Circuit affirmed the PTAB decision, finding that both Acceleration Bay’s and Blizzard’s arguments were without merit. See Acceleration Bay, LLC v. Activision Blizzard, Inc., Nos. 2017-2084, 2017-2085, 2017-2095, 2017-2096, 2017-2097, 2017-2098, 2017-2099, 2017-2117, 2017-2118, 2018  (Fed. Cir. Nov. 6, 2018).

Patent Owner Appeals

On appeal, Acceleration Bay challenged the construction of certain claims terms, specifically “participant”, “game environment” and “information delivery service”.

Claim 1 of the `966 patent was considered representative of the claim construction disputes in Acceleration’s appeal:

1. A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant sends data to the other participants by sending the data through each of its connections to its neighbor participants and wherein each participant sends data that it receives from a neighbor participant to its other neighbor participants, further wherein the network is m-regular, where m is the exact number of neighbor participants of each participant and further wherein the number of participants is at least two greater than m thus resulting in a noncomplete graph.

Acceleration Bay argued that the Board erred by construing the term “participant” according to its plain meaning. The Court rejected this position noting that neither the claims nor the specification defined the term with detailed structural information, which was in fact admitted during oral argument. Thus, it was not error for the Board to rely on the plain meaning of the term “participant”.

Acceleration Bay also argued that “game environment” and “information” should be given patentable weight. Acceleration Bay argued that it was improper to consider these terms to be a part of the preamble because there is no transition in the claim, effectively making the entire claim the body of the claim. “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope,” wrote Judge Moore.  After finding that the terms in question were, in fact a part of the preamble, Judge Moore cautioned practitioners: “We see no beneficial purpose to be served by failing to include a transition word in a claim to clearly delineate the claim’s preamble from the body, and we caution patentees against doing so.”

Finally, Acceleration Bay argued that the Board failed to identify a broadcast channel, an element in the claims, in the prior art. The Court rejected this argument because it found that Acceleration Bay was attempting to again “import structural limitation into claims lacking those limitations.” The court found that “[t]he language in the specifications falls far short of the language we have found sufficient to limit claims to configurations described in the specification.”


Petitioners Cross-Appeals

Blizzard’s cross-appeal presented three arguments challenging the Board’s decision. First, Blizzard challenged the Board’s finding that a reference was not a printed publication. The Court agreed with the Board’s reasoning that “there was no evidence that [the reference] was disseminated to the public”, and “public accessibility requires more than technical accessibility.” Here the reference in question — the Lin reference —was indexed only by author name and year. While that may make the reference technically accessible, the Court agreed with the PTAB that the reference was not “meaningfully indexed” and that the search capabilities of the index fell short of making the reference publicly accessible, as in accord with a long line of previous Federal Circuit decisions.

Judge Moore further explained:

The test for public accessibility is not ‘has the reference been indexed?’ We have explained that where indexing is concerned, whether online or in tangible media, the ultimate question is whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

(citations and quotations omitted).

Second, Blizzard argued that the Board erred by not crediting its expert testimony that a prior art reference disclosed an element in Acceleration Bay’s challenged patent. The Court rejected this argument because it found that the Board’s decision was supported by substantial evidence. The Court also found it was proper for the Board to not consider this argument because it was improperly raised for the first time in Blizzard’s reply, but it could have and should have been raised in the petition. “Blizzard, as petitioner, had an opportunity to present this argument in its petition, but chose not to,” Judge Moore wrote.

Finally, Blizzard challenged the patentability of certain substitute claims based on the Board’s construction of the term “participants can join and leave the network using the broadcast channel.” The Court found no error in the Board’s construction, noting that “Blizzard provided no construction below, or on appeal, for this claim limitation. The Board, therefore, properly focused on the ordinary meaning . . . .” Ultimately, the Court determined that the Board did not err in determining certain claims and substitute claims are patentable over the prior art.

Take Away

When determining if a reference was a printed publication mere indexing is insufficient – you must prove that the indexing was “meaningful” enough to provide access to the public. Also, when challenging substitute claims during an IPR, the Petitioner must provide claim construction if it is important to their invalidity argument; otherwise, it is not error for the Board to focus on the ordinary meaning of the substitute claim language.  


Image Source: Federal Circuit.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Gene Quinn

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Gene Quinn

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently No Comments comments.