In Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 22-1291 (Fed. Cir. May 9, 2023), the Federal Circuit affirmed a final written decision from the Patent Trial and Appeal Board determining all challenged claims of Bot M8’s gaming machine patent unpatentable. There were two issues before the Federal Circuit on appeal: (1) whether an erroneous claim construction tainted the Board’s unpatentability determination regarding the independent claims; and (2) whether the cited references’ lack of a limitation precluded the Board’s obviousness finding regarding the dependent claims.

On the first issue, the Federal Circuit found that even if the Board misconstrued the type of data that may be written to the motherboard before authenticating the game program, Bot M8 failed to show that the Board relied on that construction in finding the independent claims unpatentable. Thus, the Court explained that any error was harmless and affirmed the Board’s obviousness determination as to the independent claims. On the second issue, the Federal Circuit found that substantial evidence supported the Board’s finding of a motivation to combine based the references themselves and the explanation of Sony’s expert. The Court further found no error in the Board’s determination that even though none of the references taught using two different computers for two separate authentication processes as claimed, one of ordinary skill in the art would have nevertheless been motivated to combine the references to yield the claimed system. Thus, the Court also affirmed the Board’s unpatentability determination as to the dependent claims.