FigureFun LLC

Patent Trials and Appeals Board

Sep 16, 2020

IPR2018-00755 (P.T.A.B. Sep. 16, 2020)

Trials@uspto.gov Paper No. 32
571-272-7822 Date: September 16, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

LEGO SYSTEMS, INC. and
WARNER BROS. HOME ENTERTAINMENT INC.,
Petitioner,
v.
FIGUREFUN LLC,
Patent Owner.

IPR2018-00755
Patent 7,338,377 B2

Before HYUN J. JUNG, GEORGE R. HOSKINS, and
KEVIN W. CHERRY, Administrative Patent Judges.

JUNG, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request for Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)

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Patent 7,338,377 B2
2
I. INTRODUCTION
A. Background
LEGO Systems, Inc. and Warner Bros. Home Entertainment Inc.
(collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting inter
partes review of claims 1, 3, 5, 7, 8, 10, and 25 of U.S. Patent No. 7,338,377
B2 (Ex. 1001, “the ’377 patent”). Petitioner contended that the challenged
claims were unpatentable under 35 U.S.C. § 103(a) over (1) Levy1 and Lee,2
(2) Katoh3 and Lee, and (3) Mawle4 and Lee. Pet. 16–17.
After we issued a Decision to Institute an inter partes review of the
challenged claims (Paper 8, 20), FigureFun LLC (“Patent Owner”) filed a
Patent Owner Response (Paper 12, “PO Resp.”), to which Petitioner replied
(Paper 17, “Pet. Reply”). Patent Owner also filed a Sur-Reply (Paper 18,
“PO Sur-reply”). Oral argument was conducted on June 24, 2019. See
Paper 27.
We entered our Final Written Decision on September 26, 2019, in
which we determined that Petitioner had shown by a preponderance of the
evidence that claims 1, 3, 5, 7, 10, and 25 of the ’377 patent were
unpatentable over each of the combinations, but not claim 8. Paper 30, 65
(“Final Dec.”). Patent Owner timely filed a Request for Rehearing in which
it asks that we modify the Final Written Decision to find challenged claims
1, 3, 5, 7, 10, and 25 not unpatentable. Paper 31, 1 (“Request,” or “Req.
Reh’g”).

1 U.S. Patent No. 5,190,285, issued March 2, 1993. Ex. 1003.
2 U.S. Patent No. 6,460,851 B1, issued October 8, 2002. Ex. 1004.
3 GB 2 365 796 A, published February 27, 2002. Ex. 1005.
4 U.S. Patent No. 7,081,033 B1, issued July 25, 2006. Ex. 1006.
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Patent 7,338,377 B2
3
For the reasons that follow, we deny Patent Owner’s Request to
modify our Final Written Decision.
B. Standard for Reconsideration
The party filing a request for rehearing of a final written decision has
the burden of showing a decision should be modified, and the request for
rehearing must specifically identify all matters the party believes the Board
misapprehended or overlooked and the place where each matter was
previously addressed in its papers. 37 C.F.R. § 42.71(d); see also Req.
Reh’g 1 (quoting from the rule). Therefore, Patent Owner bears the burden
of establishing that we misapprehended or overlooked the matters that it
requests that we review.

II. ANALYSIS
A. Whether the Board erred in not construing “token” to be limited to an
“item required to begin play of a game”
Patent Owner argues that the Final Written Decision “does not fully
resolve the parties’ dispute concerning the scope of the claimed ‘token,’”
and “overlooks the portion of Patent Owner’s proposed construction that
limits the claimed token to ‘an item required to begin play of a game.’” Req.
Reh’g 2–3; see also id. at 3 n.1 (citing arguments made at PO Resp. 11–14;
PO Sur-reply 2–5). In particular, Patent Owner argues that the Final Written
Decision overlooks portions of the Specification of the ’377 patent that limit
“token” to an “item required to begin play,” misapprehends the scope of the
challenged claims, and needs to provide a full claim construction in order to
decide the parties’ dispute. Id. at 3–7 (citing PO Resp. 12, 32; PO Sur-reply
2, 9–10; Final Dec. 31–33).
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The full record did not indicate to us that Patent Owner’s proposed
interpretation of “token” would have resolved the parties’ dispute. See Final
Dec. 12–13. Petitioner proposed interpreting “token” as a “game piece”
(Pet. 12–13; Pet. Reply 1), and Patent Owner argued the “term ‘token’ refers
to ‘a disk-like shaped item required to begin play of a game,” (PO Resp. 11–
12). In our Final Written Decision, we “agree[d] with Patent Owner that
‘token’ does not include a ‘figure.’” Final Dec. 12–13. We also determined
the claim language itself does “not require ‘token’ to be ‘a disk-like shaped
item required to begin play of a game,’” in part because the Specification of
the ’377 patent “states that a ‘shape of the abovementioned token with built-
in IC chip is not limited’ and that ‘it is preferably disk-shaped like an
ordinary token.’” Id. at 12 (citing Ex. 1001, 7:48–50). Then, we stated “we
need only determine that the term ‘token’ does not include a[] ‘figure.’” Id.
at 13.
The full record indicated to us that adopting Patent Owner’s proposed
interpretation of “token” as an “item required to begin play of a game” did
not distinguish over the asserted references. Patent Owner proposed
interpreting “game initial data” in claims 1 and 25 to mean “a data set
required for commencement of [a] game.” PO Resp. 15–16. In the Final
Written Decision, we explained why, even if we accepted Patent Owner’s
interpretation of “game initial data,” Petitioner shows by a preponderance of
the evidence that claim 1 is unpatentable over the asserted combinations of
the references. See Final Dec. 24–25, 34–35 (Levy and Lee); id. at 40–41,
48–49 (Katoh and Lee); id. at 54–55, 62–64 (Mawle and Lee). The same
analysis would apply to Patent Owner’s proposed interpretation of “token”
as an “item required to begin play of a game.”
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Moreover, Petitioner argued “the term ‘token’ is in the preamble and
should not limit the claim, especially under the broadest reasonable
interpretation requirement,” and “the body of the claims defines a
structurally complete invention, and the preamble is used only to state a
name (‘token’) and purpose or intended use of the invention (‘a token for a
gaming machine on which a player plays a game by controlling a
character’).” Pet. Reply 2–3. Petitioner further argued that Patent Owner’s
attempt to read “required to begin play of a game” into the meaning of
“token” is an attempt “to arbitrarily read in an additional functional
limitation on the use of a token without any basis, much less in accordance
with the BRI requirement.” Id. at 3. Patent Owner did not meaningfully
reply to Petitioner’s argument that “‘token’ is in the preamble,” “should not
limit the claim,” and states a “purpose or intended use.” See PO Sur-reply
2–4; see also Final Dec. 9–12 (summarizing the parties’ dispute regarding
“token”).
Also, the body of independent claims 1 and 25 recite structurally
complete inventions, and do not rely on the word “token,” from the
preamble, for any antecedent basis of terms in the body of the claim. The
deletion of this preamble language would not affect the structure of the
claimed inventions and confirms that the language of the preamble, which
names the machine or manufacture claimed as a token, and states its
intended use, is not limiting. See Am. Med. Sys., Inc. v. Biolitec, Inc., 618
F.3d 1354, 1358-59 (Fed. Cir. 2010).
Further, because the bodies of the claims, reciting an “integrated
circuit chip” (claim 1) and “storage section” (claim 25), fully define the
structure of the claimed tokens and do not rely on the “token” name of the
invention to recite the limitations of their structural components, the term
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“token” does not require construction. It is of no significance in assessing
the meaning of the claims. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999). Because the term “token” does not
require construction, and is of no significance in determining the meaning of
the claim language, we did not adopt Patent Owner’s additional limitation of
a token being required to begin play of a game.
B. Whether the Board misapprehended Lee and the showing that the Board
must make to satisfy a finding of obviousness.
Patent Owner argues that, as previously addressed in its papers, Lee
does not disclose a “token” under any reasonable construction of the term.
Req. Reh’g 7 (citing PO Resp. 3, 32; PO Sur-reply 9–10). Patent Owner
also argues “the Board misapprehended or overlooked its obligation to
provide an evidentiary basis for and articulate why it concluded the alleged
prior art teaches or otherwise discloses a ‘token.’” Id. at 8. According to
Patent Owner, the Final Written Decision “seems to identify Lee as allegedly
disclosing the claimed ‘token . . . being attachable to and detachable from a
figure,’” but “provides no explanation for why the Board contends the
disclosure of Lee teaches the claimed ‘token.’” Id. at 8–9 (citing Final Dec.
22–23, 31–32, 37–39, 46–47, 52–53, 59–62); see also id. at 9–10 (“the
‘transducer’ of Lee does not satisfy the claimed ‘token’ . . . because the
transducer is not required to begin game play”).
As discussed above, Patent Owner misunderstands the basis of our
Final Written Decision, which finds that each of the combinations (Levy and
Lee, Katoh and Lee, and Mawle and Lee) discloses the limitations of claims
1, 3, 5, 7, 10, and 25 (Final Dec. 19–33, 36–48, 50–62, 64–65), that one of
ordinary skill in the art would have combined the references in the manner
asserted by Petitioner and as claimed (id. at 34–35, 48–49, 62–65), and thus,
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Petitioner’s proposed combination of references would have rendered
obvious the “token” of the challenged claims.
A separate showing, in only one reference, of a “token,” as asserted
by Patent Owner, is unnecessary and would be incorrect, because the
claimed token is fully described in the body of the claims. For the reasons in
the Final Written Decision, based on the full record, Petitioner persuades us
by a preponderance of the evidence that the recited limitations in the bodies
of claims 1 and 25 are found in the prior art. See Final Dec. 19–33, 36–48,
50–62, 64–65.
Patent Owner further argues that our Final Written Decision fails to
explain, and misapprehends the disclosure of Lee, as to dependent claims 7
and 10 (Req. Reh’g 9), because the “transducer disclosed by Lee is a simple
electronic component; it is not a ‘token’ under any reasonable construction
of the term” (id. at 10). As stated in the Final Written Decision (see, e.g.,
Final Dec. 30, 32), Patent Owner did not present any arguments specifically
for the dependent claims. See generally PO Resp. We could not have
misapprehended or overlooked a matter not previously presented.
Moreover, the claim language does not support Patent Owner’s
argument presented in the Request. Claim 1 recites a “token” that comprises
only the “integrated circuit chip” recited in the body of the claim. Ex. 1001,
23:67–24:2. Claims 7 and 10 each recite “[t]he token according to claim 1,”
with the remainder of the claim being a “wherein” clause. Id. at 24:26–28,
24:36–38. Claim 7 recites that “the token is attachable to the figure by
insertion into a recess in a surface of the figure,” and claim 10 recites that
“the token is securable in a recess formed in a bottom face of a base portion
of the figure.” Id.
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Patent 7,338,377 B2
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Claim 1 only requires a single structure, the recited “integrated circuit
chip,” and claims 7 and 10 do not require any structure other than the
“integrated circuit chip” of claim 1. See id. at 23:58–24:2, 24:26–27,
24:36–38. These claims also do not require a separate token from the
integrated circuit chip. See id. Thus, the scope of claims 1, 7, and 10 would
encompass a mere integrated circuit chip that is attachable to a figure or
securable in a recess. See id.
In view of the claim language, Patent Owner’s argument in its
Request does not show that we misapprehended or overlooked its arguments
related to “token.” See Req. Reh’g 9–10. Also, for the reasons discussed in
the Final Written Decision, we would still determine that Petitioner
persuades us by a preponderance of the evidence that each combination of
references teaches or suggests the limitations of claims 1, 3, 5, 7, 10, and 25
(Final Dec. 19–33, 36–48, 50–62, 64–65) and that one of ordinary skill in
the art would have combined the references in the manner asserted by
Petitioner (id. at 34–35, 48–49, 62–65).
C. Whether the Final Written Decision lacks a rationale for modifying or
combining the alleged prior art to achieve the claimed subject matter
Patent Owner argues that the Final Written Decision “does not explain
why one of skill in the art would have included the references’ integrated
circuit in a token that is attachable to and detachable from a figure (as is
required by the claims).” Req. Reh’g 11. This is based on Patent Owner’s
view that “the correct interpretation of the challenged claims is that they
require a token (as opposed to merely an integrated circuit/storage) being
attachable to and detachable from a figure.” Id. at 11–12 (citing PO Resp.
21–22; Final Dec. 12). Patent Owner also argues that the reason for
combining each combination of references “is too broad and generic to
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Patent 7,338,377 B2
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support the conclusion that one of ordinary skill in the art would have
modified Levy/Katoh/Mawle to arrive at the subject matter of claims 1, 3, 5,
7, 10, and 25.” Id. at 12–13 (citing Final Dec. 34–35, 49, 63–64). More
specifically, Patent Owner contends:
It is not enough to show that one of skill in the art would have
had a reason to make the integrated circuit of Levy, Katoh, or
Mawle detachable. The claims require a “token” (not merely an
integrated circuit) “being attachable to and detachable from a
figure.[”] An integrated circuit, by itself, is not a “token”
(indeed, it is a separately claimed element), and the Board offers
no explanation for how making the integrated circuit of
Levy/Katoh/Mawle detachable makes the disclosed integrated
circuit a “token . . . that is attachable to and detachable from a
figure.”
Id. at 13–14.
We disagree with Patent Owner, because the arguments are not
commensurate with the scope of the claims. Claim 1 and its dependent
claims recite that the token is, at least, an “integrated circuit chip” having
attributes, such as being detachable from a figure, and claim 25 similarly
recites that the token is, at least, a “storage section” that is detachable.

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Patent 7,338,377 B2
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III. CONCLUSION
For the above reasons, we deny the Patent Owner’s request.
Outcome of Decision on Rehearing:
Claims
35
U.S.C.
§
References/Basis Denied Granted
1, 3, 5, 7,
10, 25
103(a) Levy, Lee 1, 3, 5, 7,
10, 25

1, 3, 5, 7,
10, 25
103(a) Katoh, Lee 1, 3, 5, 7,
10, 25

1, 3, 5, 7,
10, 25
103(a) Mawle, Lee 1, 3, 5, 7,
10, 25

Overall
Outcome
1, 3, 5, 7,
10, 25

Final Outcome of Final Written Decision after Rehearing:
Claims
35
U.S.C.
§
References/Basis
Claims
Shown
Unpatentable
Claim Not
Shown
Unpatentable
1, 3, 5, 7,
8, 10, 25
103(a) Levy, Lee 1, 3, 5, 7, 10,
25
8
1, 3, 5, 7,
8, 10, 25
103(a) Katoh, Lee 1, 3, 5, 7, 10,
25
8
1, 3, 5, 7,
8, 10, 25
103(a) Mawle, Lee 1, 3, 5, 7, 10,
25
8
Overall
Outcome
1, 3, 5, 7, 10,
25
8

IV. ORDER
Accordingly, it is ORDERED that Patent Owner’s Request for
Rehearing is denied.

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Patent 7,338,377 B2
11
For PETITIONER LEGO Systems, Inc.:
David Fehrman
Rose Lee
MORRISON & FOERSTER LLP
dfehrman@mofo.com
roselee@mofo.com

For PETITIONER Warner Bros. Home Entertainment Inc.:

Wayne Smith
Lavanya Rau
WARNER BROS. ENTERTAINMENT INC.
wayne.smith@warnerbros.com
lavanya.rau@warnerbros.com

For PATENT OWNER:

Jonathan Szarzynski
SZARZYNSKI PLLC
jon@patentdallas.com

Matthew Juren
Barry Bumgardner
NELSON BUMGARDNER ALBRITTON P.C.
matthew@nbafirm.com
barry@nbafirm.com