[email protected] Paper 11 571-272-7822 Entered: January 14, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE ______

BEFORE THE PATENT TRIAL AND APPEAL BOARD ______

ELECTRONIC ARTS INC., Petitioner,

v.

WHITE KNUCKLE IP, LLC, Patent Owner. ______

Case IPR2015-01595 Patent 8,529,350 B2 ______

Before MICHAEL W. KIM, CARL M. DEFRANCO, and CHRISTA A. ZADO, Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.

DECISION TO INSTITUTE 37 C.F.R. § 42.108

IPR2015-01595 Patent 8,529,350 B2

I. INTRODUCTION This is a preliminary proceeding to decide the threshold question of whether inter partes review of U.S. Patent No. 8,529,350 B2 (“the ’350 patent”) should be instituted under 35 U.S.C. § 314(a). Specifically, Inc. (d/b/a “EA Sports”) filed a Petition (“Pet.”) seeking inter partes review of claims 1–23 of the ’350 patent, which is owned by White Knuckle IP, LLC (“White Knuckle”). In lieu of a Preliminary Response, White Knuckle filed a statutory disclaimer of claims 11, 17–20, and 22, and, thus, those claims are no longer under consideration.1 With respect to remaining claims at issue, except for claim 21, we conclude that EA Sports has demonstrated a reasonable likelihood of showing they are unpatentable on grounds of obviousness. Accordingly, we authorize institution of inter partes review of claims 1–10, 12–16, and 23. However, we decline to institute on the challenge against claim 21 because it is unclear what is being claimed. II. BACKGROUND A. The ’350 Patent 2 The ’350 patent describes a system and method for updating the parameters of a video sports game. Ex. 1001, 2:20–30. As described, the updated parameters are recorded onto a server. Id. A user of the video game may then connect to the server to download the updated parameters. Id. When downloaded, the updated parameters are stored on the video game

1 See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims”). 2 The ’350 patent is involved in a co-pending district court action, White Knuckle IP, LLC v. Electronic Arts Inc., No. 1:15-cv-00036 (N.D. Utah), filed Feb 24, 2015. Pet. 5.

2 IPR2015-01595 Patent 8,529,350 B2 unit and have the ability to change various attributes of the game to allow for a more realistic game experience. Id. at 2:28–30, 4:13–15. For example, an updated parameter may include real-life performance statistics of a particular character or athlete in the video game. Id. at 3:2–5, 3:17–23, 3:65–4:15, 5:29–34, 6:20–23. An updated parameter may also include real-life visual images of a particular stadium or field for the game. Id. at 4:49–67. The ’350 patent describes the same system architecture and methods for downloading and updating the different parameters of the video game, be they performance parameters or stadium and field parameters. Id. at 5:50– 6:23, 7:48–8:6. B. The Challenged Claims Of the remaining challenged claims, three are independent, namely, claims 1, 21, and 23. Claim 1 is directed to a “game medium” configured to perform a specific method, and claims 21 and 23 are directed to the method itself. The remaining claims depend, directly or indirectly, from claim 1. Claim 1 is illustrative of the claims under challenge: 1. A game medium including read only memory (ROM) or random access memory (RAM) configured to provide a in conjunction with a video game machine, the sports video game including video game rules, video game character parameters, and video game stadium or field parameters, the game medium having rules and parameters stored thereon and being configured to cause the video game machine to perform a method comprising: loading video game data stored by the game medium into memory for playing the video game, the video game data including one or more video game characters associated with corresponding real-life sports athletes, and one or more video game stadium or field parameters, the video game stadium or field parameters including a video game field or stadium

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attribute in the video game that corresponds to a real-life attribute of a real-life sports stadium or field; receiving an updated video game stadium or field parameter from a data server via the network including the Internet, wherein the updated video game stadium or field parameter includes data that corresponds to a real-life change in the real-life sports stadium or field attribute; changing a stadium or field parameter in the video game based on the updated video game stadium or field parameter received such that the video game stadium or field attribute more closely represents the changed real-life stadium or field attribute; and enabling a user to control the one or more video game characters using a video game controller connected to the video game machine.

Ex. 1001, 8:20–50 (emphasis added). C. The Asserted Grounds of Unpatentability Of the claims that have not been disclaimed, EA Sports asserts five grounds of unpatentability under 35 U.S.C. § 103, namely, (1) claims 1–5, 7–9, 12, 14–16, and 23 are unpatentable over FIFA 2001 News,3 FIFA 2001 MRA Support,4 FIFA 2001 Manual,5 and FIFA 2001 Guide6; (2) claim 21 is

3 FIFA 2001 Online—News Archive for September 2000, October 2000, November 2000, December 2000, January 2001, February 2001, March 2001, April 2001, May 2001, June 2001, archived at Wayback Machine on June 17, 2001, Apr. 25, 2001, and July 26, 2001 (“FIFA 2001 News”) (Exs. 1007, 1008, 1009). 4 FIFA-MRA, Support System—Installation, Loading Files (Games, Patches & Favorites), Launching the MRA, and Skins, archived at Wayback Machine on Mar. 3, 2001, Apr. 22, 2001, and Apr. 23, 2001 (“FIFA MRA Support”) (Exs. 1012, 1013, 1014). 5 Electronic Arts, Inc., EA Sports FIFA 2001 Major League SoccerTM Manual (2000) (“FIFA 2001 Manual”) (Ex. 1011). 6 Electronic Arts, Inc., FIFA 2001 Major League SoccerTM Install Guide (2000) (“FIFA 2001 Guide”) (Ex. 1026).

4 IPR2015-01595 Patent 8,529,350 B2 unpatentable over FIFA 2001 News and FIFA 2001 MRA Support; (3) claims 1, 2, 8, 10, 13, 16, and 23 are unpatentable over Pisanich,7 Madden 2000 Manual,8 and Madden 2000 Card;9 (4) claim 21 is unpatentable over Pisanich and Madden 2000 Manual; and (5) claims 6 and 15 are unpatentable over Pisanich, Madden 2000 Manual, Madden 2000 Card, Madden 2000 Updates,10 and Playoff Week 1 Update.11 Pet. 19. III. ANALYSIS In this preliminary proceeding, we decide whether EA Sports has made a threshold showing, supported by sufficient evidence, of a reasonable likelihood that the challenged claims are unpatentable. Initially, we note that EA Sports proffers several declarations to confirm the publication and authenticity of the “FIFA 2001” and “Madden 2000” exhibits insofar as their qualification as prior art. See Exs. 1010, 1027–1030. At this preliminary stage, the declarations submitted by EA Sports persuade us that the “FIFA 2001” and “Madden 2000” exhibits likely qualify as prior art. A. Claim 21—Unable to Determine Claim Scope We are unable to perform a proper analysis of claim 21 due to the lack of clarity and definiteness of claim scope. EA Sports proposes that the updated video game “performance parameter,” as recited in claim 21, be

7 PCT Int’l Pub. No. WO 02/062436 A2, pub. Aug. 15, 2002 (Ex. 1006). 8 Electronic Arts, Inc., EA Sports Madden NFLTM 2000 Reference Manual (1999) (“Madden 2000 Manual”) (Ex. 1018). 9 Electronic Arts, Inc., EA Sports Madden NFLTM 2000 Reference Card (1999) (“Madden 2000 Card”) (Ex. 1017). 10 Electronic Arts, Inc., EASports.com Madden 2000 Downloads, archived at Wayback Machine on March 2, 2000 (“Madden 2000 Updates”) (Ex. 1015). 11 Electronic Arts, Inc., EA Sports Madden NFL(TM) 2000 Roster Update– Playoff Week 1 (01/07/00) (“Playoff Week 1 Update”) (Ex. 1016).

5 IPR2015-01595 Patent 8,529,350 B2 construed to mean an updated “stadium or field parameter” because “no other parameter is discussed in this claim” and it would otherwise lack antecedent basis. Pet. 13–14 (emphasis added). We agree with EA Sports that the term “performance parameter” lacks antecedent basis within the body of claim 21. However, we decline to adopt a construction of a term that would conflict with its proper construction in light of the specification. If a claim term, when properly construed, results in a lack of clarity when read in the context of the claim as a whole, then so be it. We will not force an improper construction on a claim that otherwise would be indefinite. Here, claim 21 recites that an updated stadium or field parameter is transmitted to a video game unit, thereby enabling the unit to change the appearance of the video game’s stadium or field “based on change in the updated video game performance parameter.” Read carefully, however, this step does not make much, if any, sense because, according to the specification, a “performance parameter” relates solely to the statistical performance of an athlete or character in the game, not the visual appearance of the stadium or field. See Ex. 1001, 3:2–5, 3:17–23, 3:65– 4:15, 5:29–34, 6:20–23. Fundamentally, it is unclear how a change in an athlete’s performance parameter can result in, or be the basis of, a change in the appearance of the stadium or field, as required by claim 21. Nor do we discern any description in the specification that might support such a result. Indeed, in every instance, the specification makes clear that the stadium or field in the video game is changed solely in response to updating the “stadium or field parameter,” not a performance parameter. See id. at 4:40– 67; compare Fig. 4 (“Stadiums” parameter), with Fig. 5 (“Players” parameter).

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We are required to construe claim terms in light of the specification in which they appear. Here, the specification informs us that a “performance parameter” is different from a “stadium or field parameter,” and any attempt to construe them as being one in the same is improper. And when we apply that proper construction, we can only conclude that claim 21’s recitation of changing the appearance of the stadium or field on the basis of an update to the performance parameter of an athlete or character is non-sensical and lacks clarity when read in light of the specification. As such, we cannot discern exactly what claim 21 is defining as the invention. Without the benefit of clarity and definiteness of claim scope, we cannot analyze whether the limitations of the claim are met by the asserted prior art. We can only analyze, as a matter of law, a claim that particularly points out and distinctly claims the invention as a whole. An analysis that accounts for only partial scope of the claim is speculative and improper. Lacking the ability to determine the full scope of the claim, we decline to institute on the challenge against claim 21. See 35 U.S.C § 311(b) (inter partes review may assess patentability “only on a ground that could be raised under section 102 or 103”). B. Claims 1–5, 7–9, 12, 14–16, and 23—Obviousness Over FIFA 2001 News, FIFA MRA Support, FIFA 2001 Manual, and FIFA 2001 Guide

In challenging claims 1–5, 7–9, 12, 14–16, and 23, EA Sports relies on a collection of publications that describe the video soccer game, “FIFA 2001.” Pet. 21–48. To begin, EA Sports points to FIFA 2001 News, a compendium of webpages from the website, www.fifa2001.com, which describes a variety of “updates” for download by users of the FIFA 2001 game and which EA Sports asserts it published online in 2000 and 2001.

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See Exs. 1007, 1008, 1009. As a secondary reference, EA Sports relies on FIFA MRA Support, a collection of webpages from the publicly accessible website, www.-mra.com, which describes a number of “patches” available for the FIFA 2001 game in the relevant time frame. See Exs. 1012, 1013, 1014. Finally, EA Sports relies on FIFA 2001 Manual and FIFA 2001 Guide for their descriptions of various hardware and software requirements of the FIFA 2001 game. See Exs. 1011, 1026, respectively. In a detailed claim chart, EA Sports identifies where the FIFA 2001 game publications teach the capability of accessing and downloading updated stadium or field parameters over the internet, as required by the challenged claims. Pet. 29–38. EA Sports also relies on the declaration of Mr. David P. Crane to explain why a skilled artisan would have combined the respective teachings of the FIFA 2001 game publications to arrive at the claimed invention. Ex. 1003 ¶¶ 117–171. After careful consideration, we are persuaded that EA Sports has shown a reasonable likelihood that claims 1–5, 7–9, 12, 14–16, and 23 are unpatentable in view of the aforementioned FIFA 2001 game publications. Notably, FIFA 2001 News and FIFA MRA Support disclose numerous updates and patches to the original parameters of the FIFA 2001 game, many of which reflect actual changes in the visual aspects of real life FIFA-league stadiums, including, for example, advertising boards, flags, seated fans, turfs, and field conditions. Ex. 1007, 4, 16, 20, 60, 73–74, 97; Ex. 1008, 20, 44–45; Ex. 1012, 7; Ex. 1003 ¶¶ 93, 96, 97. According to FIFA 2001 News, these updates to real life FIFA-league stadiums were posted on the “EA server” for downloading to a video game unit, such as a personal computer (“PC”). Ex. 1007, 37; Ex. 1003 ¶¶ 96, 100. A video

8 IPR2015-01595 Patent 8,529,350 B2 game user could link the PC, via the internet, to a “Downloads section” or a “Patches Database” on the FIFA 2001 website to retrieve the updated stadium or field parameter. Ex. 1007, 23; Ex. 1008, 4, 17; Ex. 1003 ¶ 92, 101. On this record, EA Sports persuades us that FIFA 2001 News and FIFA 2001 MRA Support disclose a sports video game that includes real-life stadium and field parameters that are capable of being updated, via the internet, to correspond with real-life changes to attributes of the stadium or field, as required by independent claims 1 and 23. See Ex. 1003 ¶¶ 124–128. We are also persuaded EA Sports has made a sufficient showing as to other aspects of the challenged claims. For example, with respect to “the game controller” in each of claims 1, 8, and 23, both FIFA 2001 News and FIFA 2001 Manual describe various types of game controllers from which the user can manipulate the game characters and choose several options for the game, such as receiving updated parameters. Ex. 1011, 2, 4, 12–14 (describing input devices such as keyboard, mouse, Microsoft SidewinderTM, and Gravis GamepadTM Pro); Ex. 1007, 37 (“click on Start . . . Check for Update”). The controller is capable of being “automatically connected to the EA server” to download the updated parameters, which are “automatically install[ed] . . . in the FIFA 2001 directory” on the PC. Ex. 1007, 37; see also Ex. 1003 ¶¶ 100, 110, 112, 129 (attesting to the game controller). On this record, we are persuaded of a reasonable likelihood EA Sports will prevail in showing that a skilled artisan would have been led to combine the teachings of FIFA 2001 News and FIFA MRA Support, with the game controller taught by FIFA 2001 Manual, because the references speak to the same video game system—the FIFA 2001 game—and illustrate,

9 IPR2015-01595 Patent 8,529,350 B2 contemporaneously, the steps and actions of users who were actually playing the FIFA 2001 game. Ex. 1003 ¶¶ 117, 118. Insofar as the type of storage medium recited in claims 1 and 16, FIFA 2001 Guide describes that the FIFA 2001 game is stored on a CD- ROM, which, in turn, is installed in the PC and includes various files that are loaded into memory for executing and playing the game on the PC. Ex. 1026, 1, 4–7, 14, 16; Ex. 1003 ¶ 119. On this record, we are persuaded that storing a sports video game on a CD-ROM was well-known in the relevant time frame, as taught by FIFA 2001 Guide, and that such a game medium would have been an obvious and predictable choice for loading and executing the video soccer game described in FIFA 2001 News in the memory of a PC. See Ex. 1003 ¶¶ 120–123. Also, with respect to claim 5’s recitation that the stadium feature being updated is “ivy,” we are persuaded by EA Sports’ assertion that it simply would have been an obvious design choice to select from a finite number of plantings in a sports venue, such as the “turf” disclosed in FIFA News 2001, in order to make for a more realistic game experience. See Ex. 1003 ¶¶ 97, 146. At this juncture, we conclude that EA Sports has demonstrated a reasonable likelihood of proving that claims 1–5, 7–9, 12, 14–16, and 23 are unpatentable. C. Claims 1, 2, 8, 10, 13, 16, and 23—Obviousness Over Pisanich, Madden 2000 Manual, and Madden 2000 Card

EA Sports contends that the combination of Pisanich, Madden 2000 Manual, and Madden 2000 Card renders obvious claims 1, 2, 8, 10, 13, 16, and 23. Pet. 42. In support, EA Sports sets forth specifically where each limitation of the claims is taught or suggested by Pisanich, Madden 2000

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Manual, and Madden 2000 Card. Id. at 48–55. EA Sports also proffers the declaration of Mr. Crane to explain why a skilled artisan would have combined Pisanich with Madden 2000 Manual and Madden 2000 Card to arrive at the claimed invention. Id. at 48, 50–52 (citing Ex. 1003). To begin, EA Sports relies on Pisanich and its disclosure of a video game “in which real world events, environments, actors, and objects can be incorporated during a gaming experience, providing a player with the true simulation of a real world experience, and also the added excitement of taking part in actual real world events as they occur.” Id. at 42–43 (citing Ex. 1006, 2:11–14, Fig. 2). Although Pisanich describes the real world gaming experience in terms of a flight simulator game, it also recognizes applications to “other sporting events” such as “a football game.” Ex. 1006, 7:9–16, 48:8–11; see also id. at 5:1–5 (“the present invention is not limited herein and can easily be extended to other games such as car racing, ship racing, bike racing, skiing, or any other type of competitive outdoor gaming activity”). With respect to providing “updated” parameters to the video game, as required by independent claims 1 and 23, Pisanich discloses that the video game includes a game data server that gathers and stores air-traffic and weather information in real-time from various data providers for downloading to the video game unit “via the internet or through some other communications means.” Id. at 5:13–6:2, 7:17–8:4, Figs. 1–2. “As a player [ ] plays the computer game [ ],” Pisanich explains, “the game will make requests for air traffic and weather data corresponding to the change in location and in time of the player’s gaming unit” and “in response to choices

11 IPR2015-01595 Patent 8,529,350 B2 and control inputs by the player.” Id. at 8:8–15, Fig. 2. More specifically, according to Pisanich, an application module receives a location selection from a player. The location selection selects a geographic location within which the game is to take place, for example, San Francisco. The application module then retrieves real world information . . . [and] generates simulated real world constructs responsive to the real world information . . . In one embodiment, the application module determines whether the information for the location has changed since it was last retrieved . . . If [the information] has changed, the simulated constructs are regenerated responsive to the information.

Id. at 2:18–3:15 (emphasis added). We are persuaded by EA Sport’s assertions that a skilled artisan would have understood Pisanich as disclosing a method of updating the parameters of a video game in real-time to reflect any real-life changes in the appearance of the simulated location of the game. Acknowledging that Pisanich may not expressly disclose updating the appearance of an NFL stadium or field per se, EA Sports relies on Madden 2000 Manual for its teaching of a video game that incorporates parameters representing the appearance of real-life NFL stadiums, including the weather within the stadium. Pet. 46, 49–52 (citing Ex. 1018, 9, 18–20). EA Sports’ declarant, Mr. Crane, explains that a skilled artisan would have found it obvious to implement Pisanich’s real-time video game updating with the real-life stadium and field parameters taught by Madden 2000 Manual, because Pisanich expressly recognizes that real-time updating can be incorporated into a football game and “doing so would involve nothing more than applying a known technique to a known device ready for improvement to

12 IPR2015-01595 Patent 8,529,350 B2 yield predictable results of increased realism.” Ex. 1003 ¶ 203; see also id. ¶ 208. Also, EA Sports acknowledges that Pisanich does not describe the specific memory requirements recited by claims 1 and 16, but relies on Madden 2000 Card for teaching that such requirements were well known in the art of computerized video games. Pet. 47, 48. According to Madden 2000 Card, the computerized video game, Madden NFL 2000, was stored on a CD-ROM, requires “32 MB RAM” and “at least 50 MB free hard drive space,” and includes various program files loaded into memory for playing the game. Ex. 1017, 1, 4–7, 9. EA Sports’s declarant, Mr. Crane, explains that a skilled artisan would have deemed it obvious to implement the real- time updating feature of Pisanich’s football game within the game medium taught by Madden 2000 Card because “it was well known to sell conventional sports video games on such a medium, and to load and execute such sports video games in memory of a computer.” Ex. 1003 ¶ 200. On this record, we determine that EA Sports has shown a reasonable likelihood that claims 1, 2, 8, 10, 13, 16, and 23 would have been unpatentable as obvious over Pisanich, Madden 2000 Manual, and Madden 2000 Card. D. Claims 6 and 15—Obvious Over Pisanich, Madden 2000 Manual, Madden 2000 Card, Madden 2000 Updates, and Playoff Week 1 Update

Claim 6 recites simply that the stadium or field parameters are updated a plurality of times “during a single real-life sports season.” Claim 15 likewise recites that the updates are “based on a real-life season.” EA Sports relies on Madden 2000 Updates and Playoff Week 1 Update as teaching weekly updates to the parameters of the Madden NFL 2000 game,

13 IPR2015-01595 Patent 8,529,350 B2 albeit to the team roster, and not the stadium or field. Ex. 1015, 1 (“Download the latest Madden NFL(TM) roster now”); Ex. 1016, 2 (“Each week the roster file will be updated to denote player performance in each eligible teams playoff game.”). Nonetheless, we are persuaded, at this juncture, that EA Sports has shown adequately that a skilled artisan would have been led to implement Pisanich’s architecture for updating the parameters of the simulated venue of a game such that the updates occurred over the course of a single NFL season, as taught by Madden 2000 Updates, “because doing so would involve nothing more than applying a known technique to a known device ready for improvement to yield the predictable result of increased realism in the football game.” Ex. 1003 ¶¶ 263–266. Accordingly, we determine that EA Sports has established a reasonable likelihood that claims 6 and 15 are unpatentable. IV. CONCLUSION Based on our review of the evidence and arguments presented in the Petition, we determine that EA Sports has demonstrated a reasonable likelihood of succeeding in proving that challenged claims 1–10, 12–16, and 23 are unpatentable on grounds of obviousness. As such, we institute inter partes review of those claims. We decline to institute on the challenge against claim 21 due to its lack of clarity in claim scope, and we have not considered the challenge against claims 11, 17–20, and 22 as a result of White Knuckle’s statutory disclaimer.

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V. ORDER Accordingly, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–10, 12–16, and 23 of the ’350 patent is instituted; FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.71(a), the challenge against claim 21 is denied; FURTHER ORDERED that, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R. § 42.107(e), the challenge against claims 11, 17–20, and 22 has not been considered as those claims have been disclaimed; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), inter partes review of the ’350 patent shall commence on the entry date of this Order, and notice is hereby given of the institution of a trial.

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FOR PETITIONER:

Patrick D. McPherson Christopher J. Tyson DUANE MORRIS LLP [email protected] [email protected]

FOR PATENT OWNER:

Andrew S. Hansen David Jones HANSENIP, LLC [email protected] [email protected]

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