- Electronic Arts Inc. v. White Knuckle IP, LLCAll claims unpatentablePTAB · Jan 12, 2017 · IPR2015-01595 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–10, 12–16, and 23 are unpatentable under §103 as obvious over the FIFA 2001 References and over Pisanich with the Madden References.
RulingsFinal written decision- Obviousness (§103) › Analogous artNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“White Knuckle also argues that EA failed to provide a rationale for combining the FIFA 2001 References. PO Resp. 14. That is not the case. As explained in the Petition, the FIFA 2001 References are all directed to solving the same problem, namely, providing the most realistic gaming experience through the availability of updates to various parameters of the video game, including updates that reflect changes to the real-life stadiums and fields depicted in the game. See Pet. 28–29. A skilled artisan would have realized the benefit of combining the FIFA 2001 References from the references themselves, as they describe features of the same video game system, FIFA 2001, and illustrate contemporaneously how actual users were playing the game. Ex. 1003 ¶ 118. Indeed, FIFA 2001 News cross-references FIFA MRA Support extensively, even providing direct links to relevant pages of the MRA website.12 Ex. 1008, 1, 4, 6 (“MRA Patches Database,” “the MRA site”); Ex. 1009, 1, 3 (same).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“[A]n inventor’s testimony, standing alone, is insufficient to prove conception—some form of corroboration must be shown.” Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993) (citation omitted). “An evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Id. at 1195 (citation omitted). Here, to corroborate Mr. Angelopoulos’s testimony, White Knuckle introduces the declaration of the co-worker, Mr. Huffaker, with whom Mr. Angelopoulos met and first described his invention. Ex. 2010. Mr. Huffaker testifies that he was a licensed attorney engaged by Mr. Angelopoulos to assist him in reducing the invention to practice and drafting the application for the ’350 patent. Id. ¶¶ 4(a), 5(a). Accompanying the declarations of Mr. Huffaker and Mr. Angelopoulos is a series of exhibits, consisting of emails and attachments sent around the time of their meeting, which White Knuckle submits as additional evidence of corroboration, namely Exhibits 2004, 2006, 2007, and 2008.13 slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“Although there is a presumption of nexus when the patent owner shows the asserted praise or success is tied to a specific product embodying the claimed invention, that presumption is rebuttable when the patent challenger “respond[s] by presenting evidence that shows the proffered objective evidence was due to extraneous factors other than the patented invention.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329–1330 (Fed. Cir. 2016) (internal quotes and citation omitted). Here, EA responds with evidence from the MIT article itself, which touts the NCAA Football 2008 game’s success as due in part to “many other new features,” including “new trick plays, a highlight reel, and advanced animations,” as well as the fact that “[t]he game is playing far smoother than it [was] a year ago.” Reply 20 (citing Ex. 2012, 2). White Knuckle offers no rebuttal to EA’s evidence that the MIT article ascribes the game’s success to these extraneous features. Thus, EA succeeds in rebutting the presumption of nexus. See Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312–13 (Fed. Cir. 2006) (evidence that success was due to “unclaimed or non-novel features” of product “clearly rebuts the presumption that [product’s] success was due to the claimed and novel features”). In the absence of any further proof, White Knuckle falls short of tying the success of NCAA Football 2008 to the claimed invention. As such, we attribute little, if any, weight to White Knuckle’s evidence of commercial success and industry praise. Furthermore, even assuming the success and praise of NCAA Football 2008 was attributable to the live-weather update feature, the evidence shows that live-weather feeds for video games already existed in the prior art, as reflected in Pisanich. Evidence of industry praise attributable to a feature already known in the prior art is not a persuasive secondary consideration. South Alabama Med. Sci. Found. v. Gnosis S.P.A., 808 F.3d 823, 826–27 (Fed. Cir. 2015). Here, Pisanich (which is prior art, as determined above) illustrates that a live-weather feed for a sports video game was well-known. Ex. 100616; see also Ex. 1003 ¶¶ 179–183. As such, White Knuckle’s evidence of success and praise, insofar as it concerns live-weather feeds for video games, must fail because it is “focused on conventional features in the prior art.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). In the end, upon weighing all the evidence, we conclude that White Knuckle’s relatively weak evidence of commercial success and industry praise fails to undermine our initial findings of obviousness with respect to the ground based on the FIFA 2001 References, as well as the grounds based on Pisanich and the Madden References.” slip op. at 20
Patent outcomesUS 8,529,350 unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,529,350 - Enovate Medical, LLC v. Intermetro Industries CorporationAll claims unpatentablePTAB · May 11, 2016 · IPR2015-00300 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 27, 28, 88, 101, and 108 are unpatentable as obvious over Dell, Sweere, and Allan, with Planar additionally applied to claim 108.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (internal citations omitted). Generally, “the ‘real party-in-interest’ [on the petitioner side] is the party that desires review of the patent. Thus, the ‘real party-in-interest’ may be the petitioner itself, and/or it may be the party or parties at whose behest the petition has been filed.” Id.” slip op. at 8
- ExcludeMotion to exclude, grantedGranted
“IV. MOTIONS TO EXCLUDE Petitioner filed a Motion to Exclude Exhibits 2003–2006. Paper 33. Each of Exhibits 2003–2005 is a license agreement, and Exhibit 2006 is a Declaration by Robert A. Sobie. All of this evidence was submitted by Patent Owner as objective evidence of secondary considerations. Because we do not rely on any of that evidence in a manner adverse to Petitioner, we dismiss the Motion as moot. Patent Owner filed a Motion to Exclude Exhibit 1007, which is a declaration by T.E. Schlesinger, Ph.D., which Petitioner filed with its Reply. Paper 35. Because we do not rely on Exhibit 1007 in any manner, we dismiss the Motion as moot.” slip op. at 28
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“entity. It was filed without our authorization because it was filed with Patent Owner’s Opposition to Petitioner’s Motion to Exclude despite that Exhibit 202316 is not responsive to the Motion to Exclude. Paper 42 (“Opp. to Pet. Mot. to Excl.”). In fact, Patent Owner’s Opposition requests that we enter into the record “new Exhibit 2023, which was finalized subsequent to Patent Owner’s Response.” Opp. to Pet. Mot. to Excl. 1. A request for relief should not be made in an opposition brief. It should be made in a motion. 37 C.F.R. § 42.20(a) (“Relief, other than a petition requesting the institution of a trial, must be requested in the form of a motion.”). Further, a motion (and, thus, a request for relief) may be filed only if authorization has been obtained. 37 C.F.R. § 42.20(b) (“A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability or during the proceeding.”). Consequently, Exhibit 2023 shall be expunged because it was filed without our authorization. See 37 C.F.R. § 42.7.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“No limitation requires an express construction for purposes of the patentability challenge at issue here. See Pet. 6–7 (offering only one proposed construction, which was not material to the patentability challenge);8 PO Resp. 11 (“Patent Owner agrees that the claim terms involved in the [instituted Grounds] do not require construction for purposes of resolving this [inter partes review (IPR)].”).” slip op. at 7
Patent outcomesUS 6,721,178 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,721,178
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.