Interactive Games LLCDownload PDFPatent Trials and Appeals BoardMar 2, 2021IPR2020-01108 (P.T.A.B. Mar. 2, 2021) Copy Citation Trials@uspto.gov Paper 12 571-272-7822 Date: March 2, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DRAFTKINGS INC., A DELAWARE CORPORATION, Petitioner, v. INTERACTIVE GAMES LLC, Patent Owner. ____________ IPR2020-01108 Patent 8,974,302 B2 ____________ Before KEN B. BARRETT, GEORGE R. HOSKINS, and FREDERICK C. LANEY, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION Denying Petitioner’s Request on Rehearing of Decision Denying Institution of Inter Partes Review 37 C.F.R. § 42.71(d)(2) IPR2020-01108 Patent 8,974,302 B2 2 I. INTRODUCTION On January 6, 2021, we entered a Decision Denying Institution of Inter Partes Review, holding the Petition (Paper 1, “Pet.”) did not demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of U.S. Patent No. 8,974,302 B2 (“the ’302 patent”). See Paper 10 (“Decision” or “Dec.”). Petitioner timely filed a Request for Rehearing of the Decision. Paper 11 (“Petitioner’s Request” or “Req. Reh’g”). For the following reasons, Petitioner’s Request is denied. II. STANDARD FOR REHEARING When requesting a rehearing of a decision such as the Decision at issue here, the party challenging the decision has the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in the proceeding. Id. III. PETITIONER’S REQUEST Petitioner’s Request asks us to reconsider a claim construction that Petitioner asserts underlies the Decision, and institute the petitioned review of the ’302 patent. See Req. Reh’g 1, 4, 15. Petitioner’s Request also asks, in the alternative, that if we maintain review should not be instituted, we provide an express claim construction analysis of claims 1 and 22 “as requiring repeated mobile device and user authorization determinations.” Id. at 1–2, 4. IPR2020-01108 Patent 8,974,302 B2 3 IV. ANALYSIS A. Claims 1 and 22 Claim 1 recites, including Petitioner’s labeling scheme 1[a]–1[g] from Exhibit 1013, which Petitioner frequently references in the Request, and with our emphases added: 1. An apparatus comprising: [1[a]] a machine readable medium having stored thereon a set of instructions that are configured to cause a processor to: [1[b]] determine whether a mobile device is authorized to use a gaming service; [1[c]] determine whether a user of the mobile device is authorized to use the gaming service; [1[d]] to repeatedly: [1[e]] determine whether the mobile device is within or without a geographical area in which the user is allowed to engage in gaming activity on the mobile device; [1[f]] allow or disallow the user’s gaming activity based at least in part on the determination that the mobile device is authorized, the determination that the user is authorized, and the determination that the mobile device is located within or without (respectively) the gaming-allowed geographical area; and [1[g]] determine a period of time to elapse until the next repetition of determination whether the mobile device is within or without the gaming-allowed geographical area, the period of time to be based at least in part on a distance of the mobile device from a boundary of the gaming-allowed geographical area. Ex. 1001, 70:16–40 (emphases added). IPR2020-01108 Patent 8,974,302 B2 4 Petitioner’s Request acknowledges claim 1 is representative of the other independent claim 22, and all dependent claims, with respect to the issues raised by the Request. See, e.g., Req. Reh’g 4, 5 & n.2. Therefore, we need to address only claim 1 here. B. The Decision In the Decision, we determined the claim verbiage emphasized in limitations 1(d) and 1(f) above generates two requirements, which were not met by the combination of Nguyen and Lewin set forth in the Petition. See Dec. 12–22. First, the processor must repeatedly allow or disallow the user’s gaming activity based at least in part on the determination that the mobile device is authorized. See id. at 15–18. We concluded the Petition’s reliance on Nguyen as disclosing this first claim requirement was not supported by the evidence sufficiently to justify institution of trial. Id. at 18. Second, the processor must repeatedly allow or disallow the user’s gaming activity based at least in part on the determination that the user is authorized. Id. at 19–22. We concluded the Petition’s assertion that a person of ordinary skill would have been motivated to combine Nguyen and Lewin to perform this second claim requirement was not supported by the evidence sufficiently to justify institution of trial. Id. C. Petitioner’s Argument for Rehearing Petitioner’s Request asserts “the Decision misapprehended or overlooked the language of” claim 1 in denying institution. Req. Reh’g 1. According to Petitioner, the Decision erred by construing claim 1 to require “repeated re-authorization determinations for ‘a mobile device’ (1[b]) and ‘user’ (1[c]).” Req. Reh’g 1 (emphasis by Petitioner). In particular, IPR2020-01108 Patent 8,974,302 B2 5 according to Petitioner, the Decision erred in interpreting “limitations 1[d] and 1[f] to require repetition of such determinations.” Id. at 1. In support, Petitioner asserts “limitations 1[b] and 1[c] . . . are not recited under the ‘to repeatedly’ language of limitation 1[d].” Id. at 6–7 (emphasis added). By contrast, limitation 1[e] is recited under the “to repeatedly” language of limitation 1[d]. Id. at 7. Based on this claim structure, and the fact that limitation 1[f] refers back to “the” three determinations previously recited in the claim (emphasis added), Petitioner asserts the express claim language “recites that the decision to allow or disallow user gaming activity [in limitation 1[f]] is repeated, but the express claim language of determining user and mobile device authorization does not recite re-authorization as stated in the Decision.” Id. at 7–8 (emphasis by Petitioner), 9, 10, 11. Petitioner concludes limitations 1[d] and 1[e] require repeated determinations of location authorization, and limitations 1[d] and 1[f] require repeated determinations of allowing or disallowing the user’s gaming activity, but the claim recites only one determination of mobile device authorization per limitation 1[b] and only one determination of user authorization per limitation 1[c]. See id. at 12–14 (applying Petitioner’s view of the scope of claim 1 to Nguyen and Lewin). Turning to the ’302 patent specification, Petitioner’s Request does not dispute the Decision’s finding that the ’302 patent “describes that device characteristic authorization and user authorization determinations ‘may be repeated during a gaming session[.]’” Id. at 14 (citing Dec. 3). However, Petitioner adds that the ’302 patent specification “describes many embodiments and expressly states that ‘[s]ome embodiments may include one or more actions that may be designed to provide some level of IPR2020-01108 Patent 8,974,302 B2 6 confidence regarding location, security, authenticity and/or any desired characteristics at the beginning of a gaming session, throughout a gaming session, and/or at points during a gaming session.’” Id. (quoting Ex. 1001, 40:51–55 (emphases added by Petitioner), and citing id. at 45:49–60). Petitioner also cites Patent Owner’s Complaint in Interactive Games LLC v. DraftKings Inc., Case No. 1:19-cv-01105-RGA (D. Del.), as establishing that Patent Owner “does not view” claim 1 as “requir[ing] repeated re-authorization of a mobile device (e.g., as recited in step 1[b]) or re-authorization of a user (e.g., as recited in step 1[c]).” Req. Reh’g 3, 8 (citing Ex. 1012 ¶¶ 57–62) (emphases by Petitioner). Petitioner contends the Decision therefore departs from Patent Owner’s understanding of the scope of claim 1. Id. at 3–4, 8–9, 12. Petitioner’s Request asserts “[t]he Decision did not construe any claim terms, and thus offered no claim construction analysis supporting its interpretation.”1 Req. Reh’g 4, 14 (citing Dec. 7). Petitioner states “[t]he public, and the parties, deserve express notice of the meaning of the claims in the form of an explicit claim construction.” Id. at 14 (emphasis by Petitioner). Thus, Petitioner “requests an express construction of the relevant claim language upon which the Decision relies,” to “aid the District Court and the parties in the co-pending patent litigation,” in the event we maintain review should not be instituted. Id. at 14–15. 1 This is not entirely true. The claim construction section of the Decision did indicate “no explicit construction of any claim term is needed to resolve the issues presented.” Dec. 6–7. However, the Decision’s analysis of Petitioner’s application of Nguyen and Lewin to claim 1 addressed claim construction in the context of arguments made in the Petition. See id. at 17–18, 21–22. IPR2020-01108 Patent 8,974,302 B2 7 D. Analysis At the outset, we disagree with Petitioner’s contention that the Decision applied a construction of claim 1 that requires repeated re-authorization determinations of mobile device authorization as recited in limitation 1[b], and of user authorization as recited in limitation 1[c]. Req. Reh’g 1; see also id. at 3–4, 8–9 (characterizing the Decision similarly). Instead, the Decision concluded Nguyen does not support the Petition’s contention that Nguyen discloses repeatedly allowing or disallowing gaming activity based on determining the user is authorized, as is recited in limitations 1[d] and 1[f]. See Dec. 12–18. The Decision also concluded the evidence does not support the Petition’s contention that Nguyen and Lewin combine to disclose or suggest repeatedly allowing or disallowing gaming activity based on determining the mobile device is authorized, as is recited in limitations 1[d] and 1[f]. See Dec. 18–22. We discern nothing in the Decision that construed claim 1 to repeat the determinations recited in limitations 1[b] and 1[c]. Petitioner’s contrary characterization of the Decision relies principally on the Decision’s discussion on page 17 of a “second user authorization requirement,” and on page 22 of a “second device authorization requirement.” See Req. Reh’g 3–4, 8–9. These phrases are taken out of context, however, to support Petitioner’s arguments. The Decision at page 17 is representative in this regard. There, the Decision first discusses the user authorization determination recited in limitation 1[c]. See Dec. 17, lines 9–12 (citing Ex. 1001, 70:21–22). The Decision next discusses how “claim 1 then goes on to require, in addition to the first user authorization determination, ‘repeatedly’ allowing or disallowing the user’s gaming IPR2020-01108 Patent 8,974,302 B2 8 activity based on the determination that the user is authorized,” as recited in limitations 1[d] and 1[f]. Id. at 17, lines 12–15 (emphasis added) (citing Ex. 1001, 70:23–33). The ensuing references to a “second” claim requirement thereby refer to the structural order of limitations recited in claim 1—specifically, limitations 1[d] and 1[f], in reciting “repeatedly . . . allow[ing] or disallow[ing] the user’s gaming activity based at least in part on . . . the determination that the user is authorized,” is the second reference in claim 1 to the user authorization determination, following the initial introduction of the determination in limitation 1[c]. The reference to a “second user authorization requirement” did not construe limitations 1[d] and 1[f] to require a second determination of user authorization, as Petitioner would have it. Similarly, the reference on page 22 of the Decision to a “second device authorization requirement” referred to the structural order of limitations in claim 1, and did not construe claim 1 to require a second determination of device authorization. Id. at 21–22. Petitioner also excerpts phrases from the Decision’s consideration of the Petition’s reliance on Nguyen and Lewin as disclosing or obviously leading to the subject matter recited in claim 1. See Req. Reh’g 8–9 (citing Dec. 15, 20). Petitioner, again, takes phrases out of the context of the discussions in which they appear. We address these aspects of Petitioner’s Request, and the corresponding portions of the Decision, by applying the subject matter organization of the Decision. 1. Whether Nguyen Discloses Repeatedly Allowing or Disallowing Gaming Activity Based On Determining the User is Authorized The Decision concluded Nguyen does not support the Petition’s contention and Mr. Williams’s testimony that Nguyen discloses repeatedly IPR2020-01108 Patent 8,974,302 B2 9 allowing or disallowing gaming activity based on determining the user is authorized. See Dec. 12–18. To be sure, as part of this analysis, the Decision concluded “Mr. Williams’s testimony that the process of Figure 4 [of Nguyen] repeatedly performs this user authorization step is not supported by the cited disclosures in Nguyen.” Dec. 15 (citing Ex. 1003 ¶¶ 129, 132–133, 136); id. at 15–17 (providing reasons in support of this determination). However, we did not thereby construe claim 1 to be limited to require repeated re-authorization determinations, as Petitioner’s Request would have it. Id. at 15 (line 3) – 17 (line 3). Rather, we explained why Mr. Williams’s testimony lacked sufficient evidentiary support in the record for the contention that Nguyen repeatedly performs user authorizations, which was one way Petitioner asserted Nguyen discloses limitations 1[d] and 1[f]. See id. To the extent this discussion involved claim construction, it simply accepted Mr. Williams’s view that repeated user authorizations was one way to satisfy limitations 1[d] and 1[f]; we did not conclude repeated user authorizations was the only way to satisfy limitations 1[d] and 1[f]. See id. This is demonstrated by the Decision’s ensuing discussion, providing reasons why we determined “Petitioner’s and Mr. Williams’s reliance on Nguyen’s single user authentication at the initiation of a gaming session, as satisfying the requirement in claim 1 of repeatedly allowing or disallowing gaming activity based at least in part on determining the user is authorized, is an unpersuasive attempt to ignore the claim term ‘repeatedly.’” See id. at 17 (line 4) – 18 (line 4) (citing Pet. 33 and Ex. 1003 ¶ 137). Here, we focused on the claim term “repeatedly” because Petitioner and Mr. Williams overlooked that claim term in limitation 1[d], when they addressed the IPR2020-01108 Patent 8,974,302 B2 10 subject matter recited in limitation 1[f], which is recited under limitation 1[d]. See Pet. 33; Ex. 1003 ¶ 137; Req. Reh’g 7 (“limitations 1[d]–1[g] recite that the instructions are configured to cause the processor ‘to repeatedly:’ . . . ‘allow or disallow the user’s gaming activity’ (1[f])”). Nonetheless, we take Petitioner’s Request as an opportunity to discuss this aspect of the Decision further here. The precise problem we discerned with the position taken in the Petition at page 33 and in the Williams Declaration at paragraph 137 is the lack of sufficient explanation as to how Nguyen might disclose repeatedly allowing or disallowing gaming activity based on the determination that the user is authorized. In our view, this claim language expressly requires something more than performing one user authorization determination when a player initially begins a gaming session, and thereafter allowing gaming activity to proceed without some sort of repeated inquiry into whether the user is authorized (regardless of whether the inquiry is of previous determinations of user authorization or new determinations of user authorization). Otherwise, the repeated allowing / disallowing of gaming activity is not based on the determination that the user is authorized. Any other understanding of claim 1 would read out the phrase “based at least in part on . . . the determination that the user is authorized” in limitation 1[f]. Ex. 1001, 70:28–31. This is demonstrated, for example, by Petitioner’s inaccurate characterization of limitation 1[f] as being limited to reciting “allow or disallow the user’s gaming activity.” Req. Reh’g 7. The combination of limitations 1[d] and 1[f], when the latter is read as a whole, requires something more. IPR2020-01108 Patent 8,974,302 B2 11 This “based on” claim term is open to different kinds of repeated inquiries into user authorization. Repeated re-authorization determinations is one embodiment, which is expressly disclosed in the ’302 patent. See, e.g., Dec. 3; Req. Reh’g 14. But, claim 1 is not limited to require repeated re-authorization determinations. We denied institution of review because the Petition did not explain how Nguyen disclosed repeated inquiries into user authorization, as is plainly required by limitations 1[d] and 1[f], not because the Petition failed to explain how Nguyen disclosed repeated re-authorization determinations, specifically. Patent Owner’s Complaint (Exhibit 2012) does not persuade us that the foregoing understanding of the scope of claim 1 is in error. The Complaint provides notice pleading in support of Patent Owner’s contention that Petitioner’s products and/or systems infringe claim 1 of the ’302 patent. Id. ¶ 53. For example, the Complaint alleges Petitioner’s “daily fantasy sports platform includes ‘allow[ing] or disallow[ing] the user’s gaming activity based at least in part on . . . the determination that the user is authorized . . . .’” Id. ¶ 61. The Complaint also references, as an “example,” how Petitioner’s platform verifies that the user is authorized to grant access to gaming services. Id. However, the Complaint does not provide any more detail regarding the alleged infringement of claim 1 in this regard, much less provide a claim construction position in support. See id. Petitioner’s Request finally discusses the Petition’s arguments and Mr. Williams’s testimony comparing the disclosure of Nguyen with the subject matter recited in limitations 1[d] and 1[f]. See Req. Reh’g 12–14. However, these arguments and testimony were addressed in the Decision, and for the reasons provided in the Decision as supplemented above in IPR2020-01108 Patent 8,974,302 B2 12 response to Petitioner’s Request, we continue to conclude that the evidence of record does not support, sufficiently to justify institution of trial, Petitioner’s contention and Mr. Williams’s testimony that Nguyen discloses repeatedly allowing or disallowing gaming activity based on the determination that the user is authorized. 2. Whether it Would Have Been Obvious to Combine Nguyen and Lewin to Repeatedly Allow or Disallow Gaming Activity Based On Determining the Mobile Device is Authorized The Decision also concluded the evidence of record does not support the Petition’s contention and Mr. Williams’s testimony that it would have been obvious to combine Nguyen with Lewin to repeatedly allow or disallow gaming activity based on determining the mobile device is authorized. See Dec. 18–22. However, we did not thereby construe claim 1 to be limited to require repeated re-authorization determinations, as Petitioner’s Request would have it. Id. Instead, the Decision provided reasons why we determined the Petition and Mr. Williams had failed “to provide a motivation for repeatedly allowing or disallowing the user’s gaming activity in Nguyen, based on determining that the device is authorized, given that Lewin discloses only a single (not a repeated) device authorization determination.” Id. at 19–22. As with the user authorization component of claim 1 discussed above, the precise problem we discerned with the position taken in the Petition and the Williams Declaration with respect to the device authorization component of claim 1 is the lack of sufficient explanation as to how Nguyen might disclose repeatedly allowing or disallowing gaming activity based on determining the device is authorized. IPR2020-01108 Patent 8,974,302 B2 13 In our view, this claim language expressly requires something more than performing one device authorization determination when a player initially begins a gaming session, and thereafter allowing gaming activity to proceed without some sort of additional inquiry into the device’s authorization. Otherwise, the repeated allowing / disallowing of gaming activity is not based on the determination that the device is authorized. Any other understanding of claim 1 would read out the phrase “based at least in part on the determination that the mobile device is authorized” in limitation 1[f]. Ex. 1001, 70:28–30. This is demonstrated, for example, by Petitioner’s inaccurate characterization of limitation 1[f] as being limited to reciting “allow or disallow the user’s gaming activity.” Req. Reh’g 7. The combination of limitations 1[d] and 1[f], when the latter is read as a whole, requires something more. This “based on” claim term is open to several different kinds of repeated inquiries into device authorization. Repeated re-authorization determinations is one embodiment, which is expressly disclosed in the ’302 patent. See, e.g., Dec. 3; Req. Reh’g 14. But, claim 1 is not limited to require repeated re-authorization determinations. We denied institution of review because the Petition did not explain how Nguyen and Lewin combine to lead obviously to repeated inquiries into device authorization, as is plainly required by limitations 1[d] and 1[f], not because the Petition failed to explain how Nguyen disclosed repeated re-authorization determinations, specifically. Patent Owner’s Complaint (Exhibit 2012) does not persuade us that the foregoing understanding of the scope of claim 1 is in error, as is IPR2020-01108 Patent 8,974,302 B2 14 discussed above in connection with the user authorization component of claim 1. Petitioner’s Request finally discusses the Petition’s arguments and Mr. Williams’s testimony comparing the disclosures of Nguyen and Lewin with the subject matter recited in limitations 1[d] and 1[f]. See Req. Reh’g 12–14. However, these arguments and testimony were addressed in the Decision, and for the reasons provided in the Decision as supplemented above in response to Petitioner’s Request, we continue to conclude that the evidence of record does not support, sufficiently to justify institution of trial, Petitioner’s contention and Mr. Williams’s testimony that it would have been obvious to combine Nguyen with Lewin to repeatedly allow or disallow gaming activity based on the determination that the mobile device is authorized. V. CONCLUSION AND ORDER For the reasons provided, after considering Petitioner’s Request, we have decided to maintain the outcome of the Decision. Accordingly, IT IS HEREBY ORDERED that Petitioner’s Request for Rehearing is denied. IPR2020-01108 Patent 8,974,302 B2 15 PETITIONER: G. Hopkins Guy III Jamie R. Lynn Clarke W. Stavinoha Michael E. Knierim Andrew Wilson BAKER BOTTS L.L.P. hop.guy@bakerbotts.com jamie.lynn@bakerbotts.com clarke.stavinoha@bakerbotts.com michael.knierim@bakerbotts.com andrew.wilson@bakerbotts.com PATENT OWNER: Timothy P. McAnulty Robert F. Shaffer (pro hac vice) Anthony J. Berlenbach Courtney A. Bolin FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP timothy.mcanulty@finnegan.com robert.shaffer@finnegan.com anthony.berlenbach@finnegan.com courtney.bolin@finnegan.com Copy with citationCopy as parenthetical citation