Interactive Games LLC

Patent Trials and Appeals Board

Mar 2, 2021

IPR2020-01108 (P.T.A.B. Mar. 2, 2021)

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)
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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.
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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).
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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,
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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
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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.
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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
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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
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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
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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.
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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
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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.
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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
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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.
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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