Sony beats appeal over video game authentication patent's invalidation
2023 IPDBRF 0059
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By Patrick H.J. Hughes
WESTLAW Intellectual Property Daily Briefing
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May 11, 2023
(May 11, 2023) - A company that said Sony's PlayStation 4 video game console infringed an assortment of "gaming machine" patents for use at casinos and arcades has failed to persuade the top patent appeals court to revive one of those patents.
The U.S. Court of Appeals for the Federal Circuit on May 9 affirmed a decision by a tribunal at the Patent and Trademark Office that found Bot M8 LLC's video game authentication patent was invalid as obvious pursuant to Section 103 of the Patent Act, 35 U.S.C.A. § 103.
Among its many problems with the appeal, the appellate panel said Bot M8 did not counter the testimony of Sony Interactive Entertainment LLC's expert, who explained how certain prior art references proved the disputed technology was unpatentable.
Infringement considered first, then validity
Bot M8 filed its first infringement contentions in August 2019 in the U.S. District Court for the Southern District of New York, claiming Sony infringed six patents covering technologies incorporated in computerized game players ranging from slot machines to handheld devices.
U.S. Patent No. 8,078,540, which describes a combination of programs that "authenticate the game program in the memory of the board," was one of the patents Bot M8 said was infringed by the PS4 console, which at the time was the most updated version of Sony's video game player.
Judge Alsup found Bot M8 failed to state a plausible claim that Sony's game player incorporated an authentication system that had the connection to a motherboard the '540 patent required.
In May 2020, while Judge Alsup's determination was on appeal, Sony filed a petition asking the Patent Trial and Appeal Board for an inter partes review of the '540 patent.
"While a plaintiff need not prove infringement at the pleading stage, here, the [amended complaint] contains too much rather than too little, to the point that Bot M8 has essentially pleaded itself out of court," U.S. Circuit Judge Kathleen M. O'Malley wrote for the Federal Circuit panel. "It is the quality of the allegations, not the quantity, that matters."
In its appeal, Bot M8 tried to show the PTAB erred by failing to recognize how a certain aspect of the authentication process works as described by the '540 patent.
The Federal Circuit panel, however, said that any error the PTAB could have made in interpreting that aspect was harmless.
In fact, U.S. Circuit Judge Sharon Prost, who wrote for the unanimous panel, said in a footnote that Bot M8's own explanation "bolsters this conclusion," because in explaining the "data" that must be authenticated, it neglected to specify the process that it claimed the PTAB misunderstood.
She said Bot M8's objections to Sony's expert were unfounded, as it failed to show why the PTAB should not have considered the expert's testimony "favorably" with regard to the motivation required to have a skilled artisan invent what the '540 patent disclosed.
"Bot M8 fails to persuade us why no reasonable factfinder could have found as the board did," Judge Prost concluded.