Federal Circuit Upholds Invalidity of Video Game Patent Despite Board's Incorrect Claim Construction
CG Technology Development, LLC (CG Tech) appealed the Patent Trial and Appeal Board's Final Written Decision holding that the claims of U.S. Patent RE39,818 would have been obvious. The Federal Circuit found that even though the disputed limitations in the claims were improperly construed, the claims were nevertheless invalid under the proper construction.
Initially, FanDuel, Inc., DraftKings, Inc., and bwin.party Digital Entertainment, PLC (collectively, Appellees) petitioned for inter partes review of U.S. Patent No. RE39,818. The '818 patent describes a video game system with personalized wireless controllers that allow for custom operation of an interactive video system based on a user's personal data. Although the specific language in each claim varies, each of the challenged claims recites a limitation authorizing or allowing a user to play a specific game based on the age of the user. For example, claim 1 reads:
1. A video game system comprising:
a processor unit for executing game instructions and displaying video images on a display screen, the processor includes a receiver for receiving wireless identification and control signal transmissions; and
a personalized portable control comprising:
a plurality of control switches for generating game control signals;
a non-volatile memory for storing personalized identification information corresponding to a user of the controller, the personalized identification information comprises a user age, and historical game performance data; and
a transmitter for wireless transmitting of the personalized identification and game control signals to the processor unit, wherein the processor unit authorizes game execution based on the user age, further the processor unit comprises a transmitting for transmitting the historical game performance data to the portable controller.
Appellees petitioned for inter partes review on the basis that the challenged claims would have been obvious in view of several combinations of references, each of which relied in part on the disclosure in U.S. Patent No. 5,816,918 to Kelly.
Kelly describes that a player can choose to play a non-tournament (i.e., prize credit) game or to participate in a tournament. Players can also be required to meet certain conditions before participating in certain games or tournaments. The operator may designate further characteristics of tournaments, such as participation based on predefined characteristics, age, or other characteristics.
The Board construed the "authorize play based on age" limitations to mean "a control that either prohibits or adjusts operation of a video game based on the user's age" and found that Kelly discloses the "authorize play based on age" limitations.
On appeal, what a reference teaches is a question of fact reviewed for substantial evidence.
CG Tech argued that the Board erred in including "or adjusts" in its construction of the claim term "authorize play based on age". Rather than challenge CG Tech's position as to the propriety of the language "or adjusts" in the Board's claim construction, Appellees instead argued that the inclusion of "or adjusts" had no impact on the Board's analysis. Appellees argued that the Board's finding that Kelly discloses the "authorize play based on age" limitations was based on the unchallenged part of the Board's construction because it found Kelly "prohibit[s] operation of a game" based on age.
The Federal Circuit agreed with CG Tech that the Board erred in construing the "authorize play based on age" limitations. The Board's construction was found to fail to distinguish the two embodiments described in the claims and the specification: authorizing and adjusting. "Authorize" indicates only prohibiting (or not prohibiting) the player from playing the game, a concept distinct from "adjusting" the game. The claims also distinguish between "authorizing" game execution based on user age and "adjusting" the game.
The specification similarly distinguishes between authorizing and adjusting game play. The specification describes a controller that ensures "amusement games designed for a specific age group [are] not operated by an inappropriate user" such that a "video game can be prohibited based on the user age." But it separately explains that "educational video 'games' can be adjusted to the age of the user." The intrinsic record thus supports the conclusion that the "authorize play based on age" limitations do not include adjustment and therefore are properly construed as requiring "a control that prohibits operation of a video game based on the user's age."
Although the Board incorrectly construed the "authorize play based on age" limitations, its findings regarding Kelly were limited to Kelly's disclosure of "prohibiting" game play based on age. The incorrect claim construction was therefore found to be harmless error since substantial evidence supported the Board's finding.
The Board found that Kelly discloses that meeting a predefined prerequisite is used in some embodiments to prohibit operation of a game for failure to meet the established prerequisite and further found it "discloses using the age of the game player as a prerequisite to playing a particular game." The Board thus found Kelly discloses "a control that prohibits operation of a video game based on the user's age."
Though the disclosures in Kelly are in separate portions of the specification, they nonetheless support the Board's finding that a person of ordinary skill in the art would understand that Kelly discloses prohibiting credit game and tournament play based on age. Thus, because substantial evidence supported the Board's finding that Kelly teaches these limitations under the proper construction, the Federal Circuit affirmed the Board's decision.
CG Technology Development, LLC v. Fanduel, Inc. (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges Clevenger and Moore
Opinion by Circuit Judge Moore
