Overview

PATENT CASE OF THE WEEK 

Game and Technology Co., Ltd. v. Wargaming Group Ltd. et al., Appeal No. 2019-1171 (Fed. Cir. Nov. 19, 2019)

This week’s Case of the Week involves a patent for an online video game mechanic that, in inter partes review proceedings, was found obvious over the Dungeons & Dragons Player Handbook (v. 3.5), in combination with a patent application concerning massively multiplayer online games. At issue on appeal were the obviousness decision on the merits and Appellant-Patent Owner Game and Technology Co.’s (“GAT”) contention that the petition was time-barred under 35 U.S.C. § 315(b).

The Federal Circuit first checked Wargaming’s “not time-barred” roll against GAT’s “service of complaint” score. In this case, GAT had attempted service on both Wargaming and its affiliate more than one year prior to the filing of the Petition. Both service attempts suffered from procedural defects that Wargaming’s counsel had agreed to overlook, although no waiver of service was filed with the district court. The Court agreed with GAT that the Patent Trial and Appeal Board erred to the extent that it based its decision on the notion that it had no authority to overlook potential defects, and that “no district court has deemed service to have occurred,” as district courts rarely make such determinations. Instead, the Court held that the Board’s authority necessarily encompassed the ability to determine whether service was properly effectuated under Fed. R. Civ. P. 4 and other applicable authority.

However, as to whether service was in fact properly effected, the Court found that GAT’s inventory of “arguments raised before the Board” did not include the items required to complete its “non-waiver” quest. GAT’s arguments on appeal focused primarily on why the Board should not have instituted the IPR before resolving the time-bar question, which PTAB did not do until its final written decision. The Court noted that while it may have been error to do so, GAT had not preserved for appeal any meritorious argument as to why service was properly effected (and the Petition therefore time-barred). Specifically, GAT had argued before the Board and in its opening appeal brief only that the minor procedural deficiencies should be overlooked, and did not substantively address or refute the Board’s determination, based on the plain language of Fed. R. Civ. P. 4, that service had been insufficient. To the extent that GAT made further arguments in its briefing and at oral argument on appeal—including that Wargaming’s counsel’s agreement not to dispute service constituted a waiver under Rule 4(d)—the Federal Circuit found those arguments to be waived.

Turning to the merits, the Court found that the Board’s obviousness decision was supported by sufficient “substantial evidence” points to earn the “affirmance” achievement. The patent at issue claimed an online gameplay method whereby changes in the “ability” statistics of a player character (in the patent, a “pilot”) are automatically correlated with changes to the statistics of an associated “unit,” such as a mount or robot. The Board had found the claims to be obvious over the D&D Player Handbook’s disclosure of a “familiar,” a magical companion whose hit points are defined to be half the hit points of the player character, in combination with a patent application covering online gaming methods, which also disclosed that the rules of such games are frequently based on traditional dice games like Dungeons & Dragons. Relying on disclosures in the patent, including that the associated “unit” may be a “pet,” the Court rejected GAT’s argument that the “unit” must be “piloted” by the player character (as in the case of a mount), and found a D&D “familiar” to be analogous. The Federal Circuit also rejected GAT’s argument that D&D “hit points” did not disclose the “ability” limitation, pointing out the patent’s disclosure of a “brave points” embodiment that was not tied to any particular skill or action, and agreed with the Board’s finding “that a ‘hit point’ can plausibly be interpreted as the ‘ability’ of a character to withstand damage.”

The opinion can be found here.

ALSO THIS WEEK  

In re: IPR Licensing, Inc., Appeal No. 2018-1805 (Fed. Cir. Nov. 22, 2019)

In an appeal from an inter partes review proceeding finding a claim unpatentable, the Federal Circuit reversed. In a prior appeal, the Federal Circuit had found there was insufficient evidence of a motivation to combine the art. However, because it was unable to determine that the record was completely “devoid of any possible motivation to combine,” it remanded for further consideration by the PTAB. On remand, the parties agreed that the issues were limited to the one claim at issue, and a single ground upon which the PTAB instituted review. PTAB found the claim unpatentable again, relying on a particular piece of prior art. But that piece of prior art was not part of the instituted ground. Accordingly, the Court reversed rather than remanded for further proceedings.

The opinion can be found here.

TQ Delta, LLC v. Cisco Systems, Inc., Appeal Nos. 2018-1766 et al. (Fed. Cir. Nov. 22, 2019)

In this case, the Federal Circuit reversed a pair of inter partes review decisions invalidating patents of TQ Delta, finding that the Patent Trial and Appeal Board’s obviousness determinations were not supported by substantial evidence. The Court re-iterated the obligation of a reviewing court not to simply “rubber-stamp” factfinding by administrative agencies, and found that the Board’s factfinding regarding motivation to combine was based on conclusory expert testimony. After reviewing its precedent concerning conclusory expert testimony in the context of obviousness determinations, the Court determined that Petitioners’ expert’s unsupported and conclusory statements asserting that an ordinarily skilled artisan would have been motivated to combine the two asserted references was insufficient to support the Board’s obviousness determination.

The opinion can be found here. 

Pharma Tech Sols., Inc. v. LifeScan, Inc., Appeal No. 2019-1163 (Fed. Cir. Nov. 22, 2019) 

In this appeal from the United States District Court for the District of Nevada, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement under the doctrine of equivalents based on prosecution history estoppel. The Federal Circuit agreed with the district court that argument-based estoppel applied because the distinguishing features of the narrowed invention, i.e., converting and then comparing two different analyte measurements, features which were continuously used by the inventors to overcome the prior art, are the exact features that the accused equivalent lacks. The Court also agreed that amendment-based estoppel applied because the equivalent product at issue falls into the territory that the inventors surrendered via a narrowing amendment that was made to achieve patentability, and said amendment was made for reasons more than tangentially related to the equivalent at issue. Moreover, the fact that the inventors may have ceded more claim scope than necessary did not make their new limitations merely tangential to the equivalent.

The opinion can be found here.

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