“Like certain shapeshifting characters in Dungeons & Dragons, GAT’s evolving arguments are difficult to track.” – CAFC opinion
Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reviewed an appeal of the Patent Trial and Appeal Board’s (PTAB’s) final decision that Game and Technology Co. Ltd.’s (GAT) Patent No. 7,682,243 (the ‘243 patent) was obvious over the prior art, and that inter partes review (IPR) was not barred under 35 U.S.C. § 315(b).
The CAFC held that the PTAB properly asserted that claims 1-7 of patent ‘243 were obvious in light of the prior art and that an IPR was not barred because the petitioner, Wargaming Group Limited (Wargaming), was not properly served with a complaint alleging infringement of the [‘243] patent over a year before it filed its petition for an IPR.
The ‘243 patent describes a “method and system for providing an online game, in which ability information of a unit associated with a pilot is enabled to change as ability information of the pilot changes.” The patent concedes that prior art allows a gamer to control both a character and an additional unit, but contends that in the prior art, these two entities act independently of each other. Because the two entities were separate, they would progress individually, thus decreasing the “gamer convenience and interest in the game.”
Patent ‘243 claims to improve upon this system by intermingling the progression of stats between the player character (pilot in the claim) and the secondary unit. This meant that if the stats of the player character went up, so too would the secondary unit’s. GAT further defined the two in its specification:
1) Pilot. A pilot used in the present specification is a player character representing a gamer who imports his/her feelings in a game to continue the game. The gamer may control motions of a unit through the pilot.
2) Unit. A unit used in the present specification is an object operated by a control of a gamer, and the unit may be an object for continuing a game substantially, for example, a robot character. The unit may be a target for the gamer to import his/her feelings. Also, a concept of item belonging to the gamer may be applied to the unit.
Further, it elaborates that a unit “may further include . . . a pet unit that accompanies a robot unit as another unit of the pilot, and helps a game progress.”
Claims 1-7 were at issue on appeal with claim 1 being illustrative of the independent claims, including independent claims 6 and 7. Because of the dependent nature of the dependent claims, GAT only argues the validity of claim 1.
GAT filed a complaint accusing Wargaming and its affiliate company, Wargaming.net, who is based out of the UK, of infringing on the ‘243 patent. GAT served the complaint and summons on Wargaming.net to its registered agent in the UK. The attached summons given to Wargaming.net “was not signed by the clerk of court and did not bear the court’s seal.” A copy of the same complaint and summons was sent to Wargaming’s office in Cyprus around the same time.
Wargaming’s counsel indicated to GAT in an email that they “do not believe that service was properly effected on either Wargaming entity,” but offered to waive service and defense to improper service if the response date was pushed back. No formal waiver was ever filed. Counsel for Wargaming later filed a motion to dismiss for improper venue or in the alternate for failure to state a claim.
Wargaming filed its petition for IPR, which stated that “Petitioner and real-parties-in-interest are not barred or estopped from requesting inter partes review… because they have not been served.” GAT, in its preliminary response, claimed the IPR petition was barred under 35U.S.C § 315(b) and provided a witness statement in support. The PTAB acknowledged that evidence would have to be developed to resolve the factual issues, but instituted the IPR in the interim. GAT stated that a “procedural printing error that caused the seal and signature to be missing from the copy of the summons … does not render the service ineffective.” The Board responded stating that it didn’t have the authority to deem a service to have an error if the district court ruled otherwise.
The Board concluded that “neither the UK service nor the Cyprus service sufficed to trigger § 315(b)’s time bar.” The PTAB determined that without the seal, both services were noncompliant with Rule 4(a) of the FRCP, reiterating that it didn’t have authority to “overlook defects in service of a complaint in district court[.]”
The Prior Art
Wargaming’s IPR petition argued that claims 1-7 of patent ‘243 were obvious, referencing Levine and the Dungeons & Dragons Player’s Handbook (The D&D Handbook).
Levine discloses a “computing grid for massively multiplayer online games[,]” including “an application database that stores state information about the users … participating in the interactive, multi-user application.” It also concedes that the rules of this game are guided by the paper and dice role-playing games such as Dungeons and Dragons.
The D&D Handbook is a guide that provides rules and information on the tabletop roleplaying game, Dungeons and Dragons. The D&D Handbook describes that a character can have a companion known in the game as a “familiar.” The D&D Handbook describes a dependency of that stats of the familiar to the stats of the player character.
The PTAB rejected GAT’s argument that a “unit” must be a robot or a vehicle that the pilot rides. The specification simply claims that a “unit” is “an object operated by a control of a gamer[,]” indicating that a “pet unit” is also outlined in the specification. The specifications demonstrated that the “unit” does not necessarily have to be controlled by the pilot.
The PTAB found that GAT’s description of a unit was too similar to that of a “’familiar,’ or a magical beast companion that enhances the abilities of its master” outlined in The D&D Handbook. It also found that Levine mentions both the “database” and “online gaming” limitations outlined by the ‘243 patent. “[T]he Board found that a person of ordinary skill in the art would have sufficient motivation to combine the two references.” This would lead a person versed in both games to combine the two, leaving the ‘243 patent obvious. GAT appealed to the Federal Circuit.
Was the Petition Time-Barred?
GAT first asserted that the PTAB erred in instituting the IPR because Wargaming’s petition was time-barred under Section 315(b). The CAFC first turned to the PTAB’s assertion that it held no authority in regards to service errors. They agreed that the PTAB is both able and sometimes required to determine whether service of an infringement complaint was proper. Because Section 315(b) does not specify what “served with a complaint” means legally, Rule 4 and common law dictate its interpretation. Because service is construed liberally and no legislature has been passed otherwise, the CAFC agreed with GAT on this matter.
GAT also argued that a decision on the time-bar should have been rendered prior to institution of the IPR. While the Federal Circuit agreed on this point, it said that GAT would only have been harmed by this error “if the IPR was in fact time barred.” Citing Cuozzo Speed Techs., LLC v. Lee, the Court explained that “[t]he gravity of this purported error is thus entirely dependent on the merits of GAT’s substantive time-bar arguments,” which it ultimately found insufficient.
GAT merely stated that it provided service more than a year before Wargaming filed a petition and that Wargaming had already waived their defense of an improper service, and the CAFC concluded that this level of detail was below the required standard to uphold on appeal.
GAT also failed to preserve its argument that Wargaming’s counsel waived service, triggering the time bar under Rule 4(d). Because GAT did not bring this issue to the PTAB, they waived their right for appeal. The Court stated that GAT failed to preserve its arguments under appeal, concluding that, “[l]ike certain shapeshifting characters in Dungeons & Dragons, GAT’s evolving arguments [were] difficult to track.”
Obviousness Finding Upheld
GAT also contended that the PTAB erred in finding claims 1-7 of the ‘243 patent obvious. “GAT focuse[d] its arguments on the Board’s construction of the terms ‘unit,’ ‘pilot,’ and ‘ability.'” GAT first argued that the unit must be piloted by the pilot and that The D&D Handbook describes no such thing. The CAFC reviewed the definition of “pilot,” finding “the gamer may control motions of a unit through the pilot.” The operative word “may” strongly implied that the pilot does not necessarily have to control the unit. The CAFC further agreed with the PTAB that a “pet unit” mirrors The D&D Handbook’s representation of a familiar. Thusly, the CAFC concluded that the PTAB was correct in its position.
GAT lastly argued that Levine is only directed towards computer processes and not the game rules attributed to roleplaying games. The Court noted that GAT’s argument focused on the fact that the D&D Handbook provides the rules for a dice game and that “’[a] dice game manual cannot reasonably be interpreted as disclosing’ the claim elements.” However, “the question in an obviousness inquiry is whether it would have been obvious to a person of ordinary skill in the art to combine the relevant disclosures of the two references, not whether each individual reference discloses all of the necessary elements,” said the Court. “GAT’s argument therefore misses its mark,” ultimately holding that, between Levine and The D&D Handbook, the overlap made claims 1-7 of patent ‘243 obvious.
The CAFC thusly concluded that the PTAB did not err in instituting the IPR and furthermore, that claims 1-7 were obvious over the prior art.
Image Source: Deposit PHotos
Image ID: 58207249