Potential Claim Construction Error Is Harmless When Not Relied Upon by the Board

Written by: Ashley C. Morales & Hans L. Mayer

BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC

Before Prost, Reyna, and Cunningham. Appeal from the Patent Trial and Appeal Board.

Summary: A party challenging the Board’s decision by alleging claim construction errors must demonstrate the harmfulness of the alleged errors for the Board’s decision to be reversed.

Sony petitioned for IPR of Bot M8’s patent directed to a gaming machine that authenticates certain data. The Board determined that the independent claims of the patent were unpatentable as obvious over several references. The Board’s decision relied, in part, on a claim construction that permitted writing some data to the motherboard before authenticating the game program, as long as the entire game program was not written to the motherboard before authenticating the game program.

The Federal Circuit affirmed the Board’s decision. The Court rejected Bot M8’s assertion that the independent claims precluded writing any data, game program or not, to the motherboard before authenticating the game program. The Federal Circuit then considered whether the claims precluded writing any portion of the game program to the motherboard before authenticating the game program.  The Federal Circuit held that, even if Bot M8’s proposed construction was correct, the Board’s decision should still be affirmed because Bot M8 failed to demonstrate that the Board actually relied on a construction that permitted writing portions of the game program to the motherboard before authenticating the game program. The Federal Circuit concluded that the Board would not have needed to rely on the alleged incorrect construction because the invalidating prior art references each only wrote non-game programing data to the motherboard before authenticating the game program.

Editor: Paul Stewart