Case: 22-1291 Document: 58 Page: 1 Filed: 05/09/2023
United States Court of Appeals
for the Federal Circuit
______________________
BOT M8 LLC,
Appellant
v.
SONY INTERACTIVE ENTERTAINMENT LLC,
Appellee
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1291
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2020-
00922.
______________________
Decided: May 9, 2023
______________________
AARON M. FRANKEL, Kramer Levin Naftalis & Frankel
LLP, New York, NY, argued for appellant. Also repre-
sented by JEFFREY ENG; PAUL J. ANDRE, JAMES R. HANNAH,
LISA KOBIALKA, Redwood Shores, CA.
ABRAN J. KEAN, Erise IP, P.A., Greenwood Village, CO,
Case: 22-1291 Document: 58 Page: 2 Filed: 05/09/2023
2 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
argued for appellee. Also represented by ERIC ALLAN
BURESH, Overland Park, KS.
WILLIAM LAMARCA, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for intervenor. Also represented by MICHAEL S.
FORMAN, THOMAS W. KRAUSE, FARHEENA YASMEEN
RASHEED, MEREDITH HOPE SCHOENFELD.
______________________
Before PROST, REYNA, and CUNNINGHAM, Circuit Judges.
PROST, Circuit Judge.
Bot M8 LLC (“Bot M8”) appeals from a final written
decision of the Patent Trial and Appeal Board (“Board”) in
an inter partes review (“IPR”) determining all challenged
claims of U.S. Patent No. 8,078,540 (“the ’540 patent”) un-
patentable. We affirm.
BACKGROUND
Sony Interactive Entertainment LLC (“Sony”) peti-
tioned for IPR of claims 1–6 of the ’540 patent. The ’540 pa-
tent concerns a gaming machine that authenticates certain
data and that has both a motherboard and a different
board. See, e.g., ’540 patent col. 5 ll. 25–39; id. at claim 1.
Two aspects of the claims are relevant here. First, the in-
dependent claims (claims 1 and 4) require that the “game
program” be written to the motherboard only after the
game program has been authenticated. Second, the de-
pendent claims (claims 2, 3, 5, and 6) require two different
CPUs—one on the motherboard, one on a different board—
for executing the “authentication program” and “prelimi-
nary authentication program” respectively.
Claims 1 and 2 exemplify the issues on appeal concern-
ing the independent claims and dependent claims, reciting:
1. A gaming machine, comprising:
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 3
(i) a board including a memory in which a game
program for executing a game and an authentica-
tion program for authenticating the game program
are stored;
(ii) a motherboard which is different from the board
and connects to the board, the motherboard includ-
ing another memory which is different from the
memory, said another memory configured to read
out and store the game program stored in the
memory; and
(iii) a CPU which is provided on the motherboard,
for executing the game based upon the game pro-
gram stored in said another memory,
the CPU being configured to:
(a) read out the authentication program
from the memory of the board, and then,
store the read out authentication program
in said another memory of the mother-
board;
(b) execute the authentication program
stored in said another memory in the pro-
cess (a), and then, authenticate the game
program in the memory of the board, based
upon the executed authentication program;
(c) write the game program in the memory
of the board, to said another memory of the
motherboard, in a case where the game pro-
gram in the memory of the board is authen-
ticated as a result of the authentication
process (b); and
(d) execute the game based upon the game
program written to said another memory of
the motherboard in the process (c).
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4 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
2. The gaming machine according to claim 1,
wherein:
a preliminary authentication program for
authenticating the authentication program
is further stored in the memory of the board
and another CPU which is different from
the CPU, said another CPU configured to
execute the preliminary authentication pro-
gram, is provided on the board, said an-
other CPU being configured to, prior to
performing the process (a):
(e) execute the preliminary authen-
tication program stored in the
memory of the board, and then, au-
thenticate the authentication pro-
gram stored in the memory of the
board, based upon the preliminary
authentication program.
’540 patent claims 1 & 2 (emphasis added).
In its final written decision, the Board determined that
the independent claims are unpatentable based on as-
serted combinations of (1) Johnson and Martinek and
(2) Morrow ’952, Morrow ’771, and Diamant. 1 Sony Inter-
active Ent. LLC v. Bot M8, LLC, No. IPR2020-00922, Pa-
per 26, 2021 WL 6335602, at *29 (P.T.A.B. Nov. 22, 2021)
(“Final Written Decision”); cf. id. at *20, *25 (determining
that the independent claims are unpatentable based on
each of Johnson and Morrow ’952 alone). It determined
that the dependent claims are unpatentable based on the
1 U.S. Patent No. 6,565,443 (“Johnson”); U.S. Patent
App. Pub. No. 2003/0130032 (“Martinek”); U.S. Patent
App. Pub. No. 2004/0054952 (“Morrow ’952”); U.S. Patent
App. Pub. No. 2003/0064771 (“Morrow ’771”); U.S. Patent
App. Pub. No. 2006/0101310 (“Diamant”).
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 5
asserted combination of Johnson, Martinek, and Diamant.
Id. at *29.
Bot M8 timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s decision in accordance with the
Administrative Procedure Act (“APA”), 5 U.S.C. § 706.
E.g., Hunting Titan, Inc. v. DynaEnergetics Eur. GmbH,
28 F.4th 1371, 1379 (Fed. Cir. 2022). We review claim con-
struction de novo and any subsidiary factfindings based on
extrinsic evidence for substantial evidence. E.g., Apple Inc.
v. MPH Techs. Oy, 28 F.4th 254, 259 (Fed. Cir. 2022). Sub-
stantial evidence “is such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316,
1323–24 (Fed. Cir. 2017) (cleaned up). What the prior art
discloses and whether a person of ordinary skill in the art
would have been motivated to combine prior-art references
are both fact questions that we review for substantial evi-
dence. E.g., Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th
1373, 1378 (Fed. Cir. 2023).
Bot M8 raises two issues on appeal. 2 First, it argues
that the Board misconstrued the independent claims. Sec-
ond, it argues that the Board erred in determining the de-
pendent claims unpatentable for obviousness. We address
each issue in turn.
I
As to the independent claims, Bot M8 argues that the
Board misconstrued claim 1 to find that both Johnson and
2 Bot M8 originally raised a third issue—a challenge
to the Board’s institution decision as allegedly violating the
Constitution’s Appointments Clause—but it withdrew that
challenge before oral argument. ECF No. 54.
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6 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
Morrow ’952 disclose the element that requires writing the
game program to the motherboard only after authenticat-
ing the game program. 3 The dispute concerns what data
may be written to the motherboard before authenticating
the game program.
Claim 1 undisputedly precludes writing the entire
game program to the motherboard before authenticating
the game program. See Final Written Decision, 2021 WL
6335602, at *19 (describing this as “a point not in dispute”);
accord Appellant’s Br. 24; Appellee’s Br. 17.
Bot M8 maintains that claim 1 further precludes writ-
ing any data—game program or not—to the motherboard
before authenticating the game program. See Appellant’s
Br. 34. The Board rejected such an interpretation as incon-
sistent with the claim language. See, e.g., Final Written
Decision, 2021 WL 6335602, at *18. We likewise reject
such an interpretation. Although claim 1 precludes writing
the game program to the motherboard before it’s authenti-
cated, Bot M8 offers no persuasive reason to construe the
claim to preclude writing other data to the motherboard
before the game program is authenticated.
Bot M8 also argues, more modestly, that claim 1 at
least precludes writing any portion of the game program to
the motherboard before authenticating the game program.
Appellant’s Br. 23. And, in attempting to show that the
Board applied a contrary construction—one that permits
portions of the game program to be written to the mother-
board before authenticating the game program—Bot M8
3 Although Sony argues that Bot M8 forfeited its
claim-construction arguments on this element by not pre-
serving them before the Board, Appellee’s Br. 12–17, we
need not reach that argument because, as explained below,
we reject Bot M8’s claim-construction arguments on the
merits.
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 7
fixates on what appears to be a single sentence in the
Board’s final written decision, where the Board stated:
“[Bot M8] seeks to read into claim 1 a requirement that
nothing related to, or any portion of, the gaming infor-
mation be read into [the motherboard’s] RAM from the
mass storage device of Johnson prior to authenticating the
game program.” 4 Final Written Decision, 2021 WL
6335602, at *17 (second emphasis added); see, e.g., Appel-
lant’s Br. 17, 25 (quoting this sentence).
Assuming (for argument’s sake) that Bot M8 is cor-
rect—that claim 1 does preclude writing any portion of the
game program to the motherboard before authenticating
the game program—we still affirm. Our review under the
APA is subject to a harmless-error rule, see, e.g., 5 U.S.C.
§ 706 (“[D]ue account shall be taken of the rule of prejudi-
cial error.”), and the party challenging the Board’s decision
must demonstrate the harmfulness of the alleged error, see
Shinseki v. Sanders, 556 U.S. 396, 406, 409–10 (2009); ac-
cord Vicor Corp. v. SynQor, Inc., 869 F.3d 1309, 1325
(Fed. Cir. 2017). Bot M8 fails to do so here.
4 We will assume (for argument’s sake) that when
the Board said “gaming information” here, it was contem-
plating “game program.” But even that is far from clear.
The ’540 patent distinguishes between “gaming infor-
mation” and “game program,” with “gaming information”
including both a “game program” and a “game system pro-
gram.” See ’540 patent col. 5 ll. 34–39; id. at col. 6 ll. 53–55;
id. at col. 12 ll. 51–53. So, when suggesting that a portion
of the “gaming information” may be written to the mother-
board before authenticating the game program, the Board
was not necessarily even referring to a portion of the game
program specifically. Nevertheless, for argument’s sake,
we will assume that the Board’s use of “gaming infor-
mation” in this context contemplated “game program.”
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8 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
Specifically, Bot M8 fails to demonstrate that the
Board, in making its unpatentability determinations, actu-
ally relied—or even might have relied—on a construction
that permits writing portions of the game program to the
motherboard before authenticating the game program. By
all indications, the Board simply didn’t need to; it found
that both Johnson and Morrow ’952 disclose writing only
non-game-program data to the motherboard before authen-
ticating the game program. See, e.g., Final Written Deci-
sion, 2021 WL 6335602, at *16 (“[Sony] also shows that
Johnson expressly teaches loading only enough of the oper-
ating system that is needed to access the files stored on the
mass storage device 211 and perform the verification oper-
ations, which would have been understood not to include
game programs.” (emphasis added) (cleaned up)); id. (quot-
ing favorably Sony’s expert’s testimony that, in one John-
son embodiment, “the application module files (i.e., game
program) are also not loaded or written into [the mother-
board’s] RAM until the verification procedure successfully
completes” (quoting J.A. 856–57 ¶ 183)); id. at *27 (discuss-
ing Morrow ’952). We review these factfindings for sub-
stantial evidence, and Bot M8 has not shown that they
were lacking in that regard. Given these findings, then,
there would have been no occasion for the Board to apply a
construction that permits writing portions of the game pro-
gram to the motherboard before authenticating the game
program. We therefore conclude that any error in the
Board’s suggestion that claim 1 permits as much was
harmless. 5
5 Although the foregoing discussion suffices, we fur-
ther note that Bot M8’s own explanation of Johnson and
Morrow ’952 bolsters this conclusion. For example, when
explaining why it believes that these references don’t dis-
close the relevant claim element, Bot M8 tends to say only
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 9
Bot M8’s challenge concerning the independent claims
depends on its arguments of claim-construction error. Be-
cause we conclude that the Board did not err in this respect
or that any error was harmless, we affirm as to the inde-
pendent claims.
II
As to the dependent claims, Bot M8 argues that the
Board erred in determining them unpatentable for obvious-
ness because a person of ordinary skill in the art would not
have been motivated to combine Johnson, Martinek, and
Diamant to yield the invention of claim 2.
Again, as relevant here, claim 2 requires two different
CPUs—one on the motherboard, one on a different board—
for executing the “authentication program” and “prelimi-
nary authentication program” respectively.
The Board found that Martinek discloses a board (dif-
ferent from the motherboard) with a CPU (different from
the motherboard’s CPU) that can execute an authentica-
tion program. See Final Written Decision, 2021 WL
that they write “data” to the motherboard before authenti-
cating the game program—without clearly specifying what
“data” it’s talking about. See Appellant’s Br. 31–34. And,
when articulating why it believes the Board incorrectly
found that these references disclose the relevant claim ele-
ment, Bot M8 identifies as “erroneous” the Board’s inter-
pretation that claim 1 does not preclude any and all data
from being written to the motherboard before the game
program is authenticated. See Appellant’s Br. 34 (regard-
ing Morrow ’952); id. at 32 (regarding Johnson). This
simply reinforces that Bot M8’s real issue with the Board’s
interpretation is that it allowed for some data—even non-
game-program data—to be written to the motherboard be-
fore the game program is authenticated. As already dis-
cussed, Bot M8 has not shown error in that interpretation.
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10 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
6335602, at *21–22. The Board also found that Diamant
discloses a preliminary authentication program. See id.
And although the Board acknowledged Bot M8’s argument
that, in Diamant, the analogous “authentication program”
and “preliminary authentication program” are both exe-
cuted on the same CPU, id. at *22, *24, the Board credited
(among other things) Sony’s “persuasive reasons why a per-
son of ordinary skill in the art would have understood a
benefit of combining [the references’] teachings to arrive at
a process that uses two CPUs,” id. at *24. In particular,
the Board quoted favorably the testimony of Sony’s expert,
who explained that “using processor 505 of Martinek to
first authenticate Johnson’s verification module before
loading it into [the motherboard’s] RAM accomplishes the
goal expressly described in Martinek of acting as a gate to
‘allow data to enter a host computer only after validation.’”
Id. at *23 (quoting J.A. 872 ¶ 212 (quoting J.A. 983
at [0114] (Martinek))). That is, the Board credited Sony’s
expert’s explanation of why Martinek itself supplies a mo-
tivation. Id.; see also id. at *24 (finding “for the reasons
explained above that the express disclosures in the as-
serted references provide reasons and motivations that
support the asserted combination”).
On appeal, Bot M8 again stresses that “no reference of
record[] shows using two different CPUs for two separate
authentication processes.” Appellant’s Br. 36. But Bot M8
fails to persuade us why no reasonable factfinder could
have found as the Board did—that given Sony’s expert’s ex-
planation and the references themselves, it nonetheless
would have been obvious to a person of ordinary skill in the
art to combine the references to yield the claimed inven-
tion. We conclude that substantial evidence supports the
factfindings underpinning the Board’s obviousness deter-
mination, and we otherwise see no error in that determina-
tion.
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 11
CONCLUSION
We have considered Bot M8’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED