- Bungie, Inc. v. Acceleration Bay, LLCRehearing deniedPTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing
The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A. Principles of Law When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 10, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 8, and 11–13 obvious over Francis and Gilbert.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed. Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element. Petitioner explains that Francis teaches rendezvous hosts that allow hosts joining a group to find other hosts already in the tree-mesh, and that Francis randomly selects “neighbors” (simply other network members) for every node. See Pet. 53– 55. Petitioner further argues that Gilbert, like Francis, teaches the concept of multifunctional nodes that can execute the steps of adding a new node to the network. According to Petitioner, modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Pet. 55. In our view, however, Petitioner fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“Still further, the disputed phrase requires that the edge connection request be sent to a “number of randomly selected” neighboring participants to which the seeking participant is to connect. Petitioner asserts that Francis provides for random selection of neighbors for every node. Pet. 55; Ex. 1005, 14. Merely choosing neighboring participants in a random manner to connect to, as Francis does here, is not the same as sending a request to a number of randomly selected neighboring participants. Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.” For all of the above reasons, we are not persuaded that Petitioner has established a reasonable likelihood that Petitioner would prevail in its challenge to independent claim 1, or to dependent claims 2–5, 7, 8, and 11–13.” slip op. at 12
§ 103 obviousnessPatents in suitUS 6,910,069 - Bungie, Inc. v. Acceleration Bay, LLCInstitution deniedPTAB · Jan 9, 2018 · IPR2017-01601 · APJ Lynne E Pettigrew · IPR · Institution
Institution was denied for claims 19–24 because the petition did not show a reasonable likelihood that Gilbert and Francis render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner that Petitioner fails to demonstrate that Gilbert in view of Francis teaches “requesting the located portal computer to provide an indication of neighbor participants to which the participant can be connected,” as required by claim 19. See Prelim. Resp. 41–44. First, contrary to Petitioner’s argument, the various “portal computer” embodiments in Gilbert relied on by Petitioner do not describe a joining node requesting the portal computer to provide an indication of two adjacent nodes (i.e., the claimed “neighbor participants”) to which the joining node can connect. In the first example cited by Petitioner, see Pet. 47, a new node contacts a node it knows to be already on the network, which Petitioner alleges is the claimed “portal computer.” Ex. 1021, 6:33–34. That node then provides information regarding an adjacent node. Id. at 6:40–42. Thus, as Patent Owner correctly points out, the alleged portal computer identifies only a single adjacent node. See Prelim. Resp. 41. Although Gilbert describes a joining node contacting two adjacent nodes in the network and then connecting to those two nodes, the “two adjacent nodes” are the alleged portal computer and one of its adjacent nodes, not two nodes adjacent to the portal computer, as Petitioner suggests. See Ex. 1021, 6:32–49, Fig. 7. Thus, the node seeking to join the network does not request the portal computer to provide an indication of neighbor participants to which it can be connected, as required by claim 19, but instead only requests an indication of one neighbor participant.” slip op. at 10
§ 103 obviousnessPatents in suitUS 6,829,634
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.