Takeaway: A “reference must include enabling disclosure in order to anticipate a claim,” but the reference need only “enable the portions of its disclosure alleged to anticipate the claimed invention.”

In its Final Written Decision, the Board held that Petitioner had shown by a preponderance of the evidence that all challenged claims, claims 1-11, of the ’885 patent are unpatentable. The ’885 patent relates to “a system and method of tracking a spatially manipulated controlling object/controller.”

Addressing claim construction, the Board stated that claims in an unexpired patent are given their broadest reasonable construction in light of the specification. The Board presumes that the “claim terms have their ordinary and customary meaning” unless the patentee gives the term “a particular meaning in the specification with ‘reasonable clarity, deliberateness, and precision.’”

The Board first addressed the construction of the term “controlling object.” In its Decision on Institution, the Board construed the term as it was explicitly defined in the specification to mean “user manipulated electronic device which serves to communicate with a computer.” Patent Owner argued that “‘communication’ requires ‘electronic communication’” such that a “controlling object” would require “more than a light on a stick,” and would require “both a light and a ‘user interface.’” In particular, Patent Owner cited examples in the ’885 patent specification as evidence that the “controlling object” must incorporate a light and “additional electronics for communication with a computer.” The Board was not persuaded, explaining that limitations from the specification cannot be imported into the claims.

Patent Owner also cited U.S. Patent No. 7,113,193 (“the ’193 patent”), which was incorporated by reference in the ’885 patent, as evidence distinguishing a “controlling object” from a “prop,” thereby allegedly requiring that the “controlling object” not be a passive object. The Board was not persuaded, however, noting that the “props” disclosed in the ’193 patent were not electronic devices included in its construction of “controlling object.” Thus, the Board maintained its previous construction, declining to adopt a more narrow construction as urged by Patent Owner. The Board similarly adopted the constructions of other terms as set forth in the Decision on Institution.

Turning to the analysis of the prior art, the Board first addressed the ground of anticipation of claims 1, 3, 4, 6, 7, 10, and 11 by Hashimoto, finding that Petitioner had shown by a preponderance of the evidence that the claims are anticipated. Patent Owner argued that Hashimoto is not an enabling reference and that Hashimoto does not disclose several claim elements, and therefore cannot anticipate the challenged claims. With respect to enablement, the Board agreed that a “reference must include enabling disclosure in order to anticipate a claim,” but as Petitioner noted, the reference “need not enable its full disclosure; it only needs to enable the portions of its disclosure alleged to anticipate the claimed invention.” Thus, arguments that Hashimoto “itself could not be implemented does not inform the question of whether a [person having ordinary skill in the art] could have combined the description of Hashimoto with her [or her] own knowledge to make the [claimed] invention.” The Board also pointed out that Patent Owner’s arguments related to the functional block diagram of Fig. 2 of Hashimoto were not persuasive because one of skill in the art “would recognize that the figures in Hashimoto are functional block diagrams, and that many illustrated blocks are logical components (i.e., software) that would not necessarily correspond to specific physical components.”

With respect to the alleged lack of disclosure in Hashimoto, the Board was not persuaded, finding that Patent Owner’s arguments primarily relied upon its non-adopted claim construction position or related to features that were not required by the challenged claims. Thus, the Board found claims 1, 3, 4, 6, 7, 10, and 11 to be anticipated by Hashimoto.

The Board then found that Petitioner established by a preponderance of the evidence that claims 2 and 9 are unpatentable as obvious over Hashimoto and Marks ’859. Patent Owner argued that several claim elements were not taught, there was no motivation to combine the references, and that there was an alleged long-felt need and copying.

The Board was not persuaded by Patent Owner’s arguments concerning the disclosure of the prior art, finding that the arguments relied upon an incorrect claim construction. The Board was also unpersuaded by Patent Owner’s argument that the references are not analogous and would not have been obvious to combine. In particular, the Board was persuaded that the references as well as the ’885 patent relate to “tracking the position of specific objects . . . using color data extracted for each pixel in the image of the background environment.” The Board was also persuaded that Petitioner had “set forth sufficient articulated reasoning with rational underpinning to support the combination of the prior art teachings.”

Turning to secondary considerations, the Board found that Patent Owner failed to discuss a nexus between the alleged evidence of nonobviousness and the challenged claims. Accordingly, the Board found the evidence of secondary considerations unpersuasive. Thus, claims 2 and 9 were found to be unpatentable as obvious over Hashimoto and Marks ’859.

Next, the Board found Petitioner had established by a preponderance of the evidence that claims 1, 3, 4, 6, 7, 10, and 11 are unpatentable as obvious over Wang and Hashimoto. The Board credited Petitioner’s arguments and evidence in finding Patent Owner’s arguments concerning the prior art unpersuasive. The Board also found Patent Owner’s argument regarding alleged teaching away unpersuasive, agreeing with Petitioner that a person of skill in the art would have recognized that the system of Wang would be improved based on the teachings of Hashimoto.

Finally, the Board found claims 5 and 8 to be unpatentable as obvious over Hashimoto and Marks ’126 for similar reasons discussed above.

Turning to Patent Owner’s Motion to Exclude Evidence, the Board denied the motion, indicating that the information subject to the motion had either not been relied upon by the Board or had been assigned the appropriate weight in view of the record.

Sony Computer Entertainment America LLC v. Game Controller Technology LLC, IPR2013-00634
Paper 32: Final Written Decision
Dated: April 14, 2015
Patent: 8,094,885 B2
Before: Kevin F. Turner, Mitchell G. Weatherly, and Jennifer M. Meyer
Written by: Meyer
Related Proceedings: Game Controller Technology LLC v. Sony Computer Entertainment America LLC, No. 1:13-cv-22795-CMA (S.D. Fla.)