Bot M8 LLC v. Sony Interactive Entertainment LLC (USPTO as Intervenor)
Docket No. 2022-1291 (IPR2020-00922) (https://cafc.uscourts.gov/opinions-orders/22-1291.OPINION.5-9-2023_2123766.pdf)
DYK, BRYSON, PROST
May 9, 2023
Brief Summary: Board IPR claim construction and obviousness determination affirmed; any error in claim construction found to be harmless.
Summary: Bot M8 appealed Board IPR finding that all challenged claims of US 8,078,540 relating to a gaming machine that authenticates certain data and that has both a motherboard and a different board. The claimed machines require “the ‘game program’ be written to the motherboard only after the game program has been authenticated” and “two different CPUs—one on the motherboard, one on a different board— for executing the ‘authentication program’ and ‘preliminary authentication program’ respectively.” The Board’s final written decision found the independent claims unpatentable as obvious in view of two different combinations of prior art (Johnson and Martinek; and, Morrow ‘952, Morrow ‘771, and Diamant). The FC panel review the Board’s “claim construction de novo and any subsidiary factfindings based on extrinsic evidence for substantial evidence” (Apple, FC 2022; Novartis AG, FC 2017; Intel, FC 2023). Bot M8 argued that Board misconstrued the independent claims and determining the claims to be unpatentable. It was undisputed that the claims “preclude writing the entire game program to the motherboard before authenticating the game program”, but Bot M8 argued that “writing any data—game program or not [or any portion of the game program]—to the motherboard before authenticating the game program.” The FC panel agreed with the Board that this reading is inconsistent with the claim language. It further explained that even “[a]ssuming (for argument’s sake) that Bot M8 is correct”, its “review under the APA is subject to a harmless-error rule… and the party challenging the Board’s decision must demonstrate the harmfulness of the alleged error” (Shinseki, US 2009; Vicor, FC 2017). The FC panel explained that the Board “found that both Johnson and Morrow ’952 disclose writing only non-game-program data to the motherboard before authenticating the game program” and did not need to rely on Bot M8’s reading of the claim, and therefore any error by the Board was harmless. Bot M8 also argued against a motivation to combine the cited art but the FC panel wrote that “Bot M8 fail[ed] to persuade us why no reasonable factfinder could have found as the Board did—that given Sony’s expert’s explanation and the references themselves, it nonetheless would have been obvious to a person of ordinary skill in the art to combine the references to yield the claimed invention” and therefore that substantial evidence supported the Board’s conclusion. The Board decision was therefore affirmed.