Case: 22-1569 Document: 55 Page: 1 Filed: 08/30/2023
NOTE: This disposition is nonprecedential.
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 PA-
TENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1569, 2022-1570
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2020-
00726, IPR2020-01288.
______________________
Decided: August 30, 2023
______________________
Paul J. Andre, Kramer Levin Naftalis & Frankel LLP,
Redwood Shores, CA, argued for appellant. Also repre-
sented by James R. Hannah, Lisa Kobialka, Shreya Ram-
chandani; Jeffrey Eng, Aaron M. Frankel, Cristina Martin
Case: 22-1569 Document: 55 Page: 2 Filed: 08/30/2023
2 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
ez, New York, NY.
Abran J. Kean, Erise IP, P.A., Greenwood Village, CO,
argued for appellee. Also represented by Eric Allan Bu-
resh, Overland Park, KS.
William LaMarca, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
intervenor. Also represented by Michael S. Forman,
Thomas W. Krause, Farheena Yasmeen Rasheed.
______________________
Before PROST, REYNA, and CUNNINGHAM, Circuit Judges.
CUNNINGHAM, Circuit Judge.
Bot M8 LLC appeals from final written decisions is-
sued in two Patent Trial and Appeal Board inter partes re-
views that found claims 1–5 of U.S. Patent No. 8,112,670
and claims 1–10 of U.S. Patent No. 7,664,988 (collectively,
the “Challenged Claims” or “Challenged Patents,” respec-
tively) to be unpatentable. Sony Interactive Ent. LLC v.
Bot M8, LLC, IPR2020-00726, 2021 WL 4876235, at *1
(P.T.A.B. Oct. 4, 2021) (“Decision I”); Sony Interactive Ent.
LLC v. Bot M8, LLC, IPR2020-01288, 2022 WL 495115, at
*1 (P.T.A.B. Feb. 15, 2022) (“Decision II”). On appeal, Bot
M8 challenges the Board’s determinations based on its con-
structions of the claim terms “fault inspection program”
and “boot program.” We disagree that the Board adopted
erroneous constructions of those terms and affirm.
I. BACKGROUND
The ’670 patent is a continuation of the ’988 patent and
is entitled “Gaming Apparatus Having Memory Fault De-
tection.” 1 The Challenged Patents disclose “an information
1 Because the Challenged Patents are related and
share a specification, we generally cite to the ’670 patent.
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 3
process device in which it can be guaranteed that a fault
inspection program properly operates even if a fault occurs
in a memory device which is inspected through the fault
inspection program.” ’670 patent col. 1 ll. 35–40. Among
other things, the Challenged Patents accomplish this ob-
jective by using a “fault inspection program” stored in one
memory device that inspects faults in a second memory de-
vice. Id. col. 1 ll. 41–65. Because the fault inspection pro-
gram is not stored in the memory it inspects, it “properly
operates” independent of whether that memory has a fault.
Id. col. 1 ll. 60–65.
Claim 1 of the ’670 patent recites:
1. A gaming device configured to execute a game,
the gaming device comprising:
a mother board on which a first memory de-
vice is provided;
a second memory device configured to store
a game application program, the second
memory device being connected to the
mother board; and
a control device for executing a fault inspec-
tion program for the second memory device
to inspect whether or not a fault occurs in
the second memory device;
wherein the fault inspection program is
stored in the first memory device, and the
control device completes the execution of
the fault inspection program before the
game is started.
Id. col. 4 l. 61–col. 5 l. 7 (emphasis added). Dependent
claim 2 introduces a “boot program” and recites:
2. The gaming device according to claim 1,
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4 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
wherein the first memory device stores a
boot program executed when the gaming de-
vice is started to operate, and
wherein the control device executes the
fault inspection program after the boot pro-
gram is executed.
Id. col. 5 ll. 8–12 (emphases added). Independent claim 4
contains similar requirements to claim 1, but it inspects
faults in the “game application program” stored in the
memory device, not the memory device itself, and recites:
4. A gaming device configured to execute a game,
the gaming device comprising:
a ROM configured to store a fault inspec-
tion program;
a memory device which is electrically re-
writable a game application program
stored therein;
a control device configured to execute the
fault inspection program to inspect whether
or not a fault occurs in the game application
program stored in the memory device;
wherein the control device executes the
fault inspection program when the gaming
device is started to operate and completes
the execution of the fault inspection pro-
gram before the game is started.
Id. col. 5 l. 15–col. 6 l. 10 (emphasis added).
Claim 1 of the ’988 patent generally combines these re-
quirements into a single claim:
1. A gaming device configured to execute a game,
the gaming device comprising:
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 5
a first memory device for storing a boot pro-
gram executed when the gaming device is
started to operate;
a mother board on which the first memory
device is provided;
a second memory device for storing a game
application program for the game, the sec-
ond memory device being connected to the
mother board; and
a control device for executing a fault inspec-
tion program for the gaming device to in-
spect whether or not a fault occurs in the
second memory device and the game appli-
cation program stored therein,
wherein the fault inspection program is
stored in the first memory device, and the
control device executes the fault inspection
program when the gaming device is started
to operate and completes the execution of the
fault inspection program before the game is
started.
’988 patent col. 4 l. 55–col. 5 l. 5 (emphases added).
In its final written decision for the IPR on the ’670 pa-
tent, the Board concluded, among other things, that claims
1–4 are unpatentable based on Sugiyama 2 in combination
with Gatto, 3 and claim 5 is unpatentable based on
Sugiyama in combination with Gatto and Yamaguchi. 4 De-
cision I at *2, *17. For the IPR on the ’988 patent, the
2 Japanese Unexamined Patent Application Publica-
tion Disclosure No. JP 2000-35888 published Feb. 2, 2000.
3 WIPO Int’l Publication No. WO 2004/004855 A1
published Jan. 15, 2004.
4 U.S. Patent No. 5,844,776 issued Dec. 1, 1998.
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6 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
Board found, among other things, that claims 1–9 are un-
patentable based on Sugiyama in combination with Gatto,
and claim 10 is unpatentable based on Sugiyama in combi-
nation with Gatto and Cheston. 5 Decision II at *24.
Bot M8 timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
“We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence.” Univ. of
Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160
(Fed. Cir. 2021) (citing Pers. Web Techs., LLC v. Apple, Inc.,
848 F.3d 987, 991 (Fed. Cir. 2017)). “The substantial evi-
dence standard asks ‘whether a reasonable fact finder
could have arrived at the agency’s decision,’ and ‘involves
examination of the record as a whole, taking into account
evidence that both justifies and detracts from an agency’s
decision.’” Id. (quoting OSI Pharms., LLC v. Apotex Inc.,
939 F.3d 1375, 1381–82 (Fed. Cir. 2019)).
“Obviousness is a question of law based on underlying
findings of fact.” Id. (quoting OSI Pharms., 939 F.3d at
1382). Whether the prior art teaches a claim limitation and
whether a skilled artisan would have been motivated to
modify or combine prior art teachings are questions of fact.
Id. (first citing Tech. Consumer Prods., Inc. v. Lighting Sci.
Grp. Corp., 955 F.3d 16, 22 (Fed. Cir. 2020); and then citing
OSI Pharms., 939 F.3d at 1382)). “The substantial evi-
dence standard asks ‘whether a reasonable fact finder
could have arrived at the agency’s decision,’ and ‘involves
examination of the record as a whole, taking into account
evidence that both justifies and detracts from an agency’s
decision.’” Id. (quoting OSI Pharms., 939 F.3d at 1381–82).
5 U.S. Patent Application Publication No. US
2003/0135350 A1 published July 17, 2003.
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 7
Bot M8 argues that the Board’s decisions based on ob-
viousness should be vacated or reversed because they are
premised on an erroneous construction of “fault inspection
program.” Appellant’s Br. 3. First, Bot M8 argues that the
claims, specification, and prosecution history support de-
fining the “fault inspection program” to be a distinct pro-
gram from the “boot program.” Id. at 23–32. Second, Bot
M8 argues that the claims, specification, and prosecution
history confirm that the “fault inspection program” must
inspect for faults in both hardware and software. Id. at 45–
53. Separate from claim construction, Bot M8 argues that
substantial evidence does not support the Board’s obvious-
ness findings based on Sugiyama because it lacks a “fault
inspection program” capable of inspecting faults in both
hardware and software. Id. at 53–56. We address each
argument in turn. 6
A. Other Than a Boot Program
“When construing claim terms, we first look to, and pri-
marily rely on, the intrinsic evidence, including the claims
themselves, the specification, and the prosecution history
of the patent, which is usually dispositive.” Sunovion
Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,
1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp.,
415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); and then
citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). “The specification is always highly
6 Bot M8 originally challenged the Board’s institu-
tion decisions as allegedly violating the Constitution’s Ap-
pointments Clause, but it withdrew that challenge before
oral argument. ECF No. 51. Further, because we agree
with the Board’s unpatentability determinations for all
challenged claims based on Sugiyama, we do not reach Bot
M8’s arguments challenging the Board’s unpatentability
determinations based on U.S. Patent Application Publica-
tion No. US 2004/0054952 A1.
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8 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
relevant to the claim construction analysis and is, in fact,
the single best guide to the meaning of a disputed term.”
Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359,
1363 (Fed. Cir. 2016) (cleaned up); see also Phillips, 415
F.3d at 1315.
“The words of a claim are generally given their ordi-
nary and customary meaning as understood by a person of
ordinary skill in the art when read in the context of the
specification and prosecution history.” Thorner v. Sony
Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (citing Phillips, 415 F.3d at 1313). One exception is
“when a patentee sets out a definition and acts as his own
lexicographer.” Id. “‘To act as its own lexicographer, a pa-
tentee must clearly set forth a definition of the disputed
claim term other than its plain and ordinary meaning’ and
must ‘clearly express an intent to redefine the term.’” Hill-
Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
Cir. 2014) (quoting Thorner, 669 F.3d at 1365).
The patentee defined “fault inspection program,” such
that lexicography applies here. The specification states
that “a program for inspecting whether or not a fault such
as damage, change or falsification occurs in the programs
or data” is “hereinafter, abbreviated as” a “fault inspection
program.” ’670 patent col. 1 ll. 20–27. See, e.g., Abbott
Lab’ys v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed.
Cir. 2007) (explaining “as used herein, means” to be defini-
tional); Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1306 (Fed.
Cir. 2017) (finding “refers to” and “as defined herein” to be
definitional); Kyocera Senco Indus. Tools Inc. v. Int’l Trade
Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022) (finding “re-
ferred to herein” to be definitional). The Board correctly
adopted this definition as the construction for the “fault in-
spection program” claim term. Decision I at *4; Decision II
at *6.
Citing Becton, Dickinson & Co. v. Tyco Healthcare
Group, LP, Bot M8 argues that because the claims
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 9
separately list “fault inspection program” and “boot pro-
gram,” the claim language supports finding that those ele-
ments are “distinct components.” Appellant’s Br. 23–24
(citing 616 F.3d 1249, 1254 (Fed. Cir. 2010)); see also ’670
patent col. 4 l. 61–col. 5 l. 7 (claim 1) (requiring “fault in-
spection program”); id. col. 5 ll. 8–12 (claim 2) (adding “boot
program” and executing “fault inspection program after the
boot program is executed”); ’988 patent col. 4 l. 55–col. 5 l.
5 (claim 1) (requiring both “fault inspection program” and
“boot program”). In Bot M8’s view, the claim language re-
quires that the “fault inspection program” must be “a pro-
gram ‘other than’ the boot program,” i.e., that these two
limitations must be performed by distinct programs rather
than by an integrated program. Appellant’s Br. 25–26; see
also Oral Arg. at 6:25–7:01, available at https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=22-1569_0405202
3.mp3.
We are not persuaded that the claim language supports
modifying the patentee’s definition of “fault inspection pro-
gram” to add “other than a boot program.” In Becton, we
stated “[w]here a claim lists elements separately, the clear
implication of the claim language is that those elements
are distinct components of the patented invention.” 616
F.3d at 1254 (cleaned up) (citations omitted). But part of
our rationale in Becton was that it would render the as-
serted claims “nonsensical” for the claimed “spring means”
to be connected to the “hinged arm” if they were the same
structure. Id. at 1255. No similar “nonsensical” result
arises here, where the claims merely list “fault inspection
program” and “boot program” separately or require the ex-
ecution of the fault inspection program after the boot pro-
gram. See, e.g., ’670 patent claims 1–2; ’988 patent claim
1; see also Oral Arg. at 7:02–7:09 (Bot M8’s counsel agree-
ing it is possible to run features sequentially even within
the same program). Thus, we disagree that Becton requires
that the “fault inspection program” and “boot program”
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10 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
must be performed by distinct programs to be “‘distinct
component[s]’ of the patented invention.” 616 F.3d at 1254.
We also disagree that Bot M8’s citations to the specifi-
cation support requiring a distinct “fault inspection pro-
gram” and “boot program.” See Appellant’s Br. 27–29
(citing ’670 patent col. 2 ll. 46–52, col. 3 l. 59–col. 4 l. 14,
col. 4 ll. 1–32, Fig. 1). Bot M8’s citations merely show the
existence of a “boot program storing area 13a” and a “fault
inspection program storing area 13b” in memory, not that
each limitation must be contained in a distinct program.
Bot M8 further supports its arguments by citing to the
prosecution history of the ’988 patent where the applicant
distinguished the prior art by arguing that “the boot pro-
gram and the fault inspection program are distinct.” Ap-
pellant’s Br. 29–32; see also J.A. 1568–69 (’988 patent
Prosecution History, Applicant Remarks dated Jul. 30,
2009). We are not persuaded by Bot M8’s reliance on the
prosecution history. Even assuming the patentee’s state-
ments for the ’988 patent apply equally to both Challenged
Patents, we do not agree that the applicant’s statement—
that “the boot program and the fault inspection program
are distinct”—means the boot program and the fault in-
spection program are distinct programs. See J.A. 1568–69
(’988 patent Prosecution History, Applicant Remarks dated
Jul. 30, 2009). After the examiner’s earlier rejection, the
applicant amended the claims to require that the “fault in-
spection program” is executed “for the gaming device” and
inspects faults in the “game application program.” J.A.
1563–66 (’988 patent Prosecution History, Amended
Claims dated Jul. 30, 2009) (emphasis added to indicate
added text). We agree with Sony that the applicant’s state-
ments, in context, merely specify that the amended claim
language is directed to the function of the “fault inspection
program” (i.e., to be executed for the gaming device to in-
spect a game application program) rather than suggesting
or changing the definition of the “fault inspection program”
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 11
to require that it be a distinct program from the “boot pro-
gram.” Appellee’s Br. 29–30; J.A. 1563–64, 1569.
Accordingly, we agree with the Board that the proper
construction of “fault inspection program” does not require
that it be a distinct program from the boot program.
B. Inspecting Hardware and Software
As discussed above, the patents define the “fault in-
spection program” as “a program for inspecting whether or
not a fault such as damage, change or falsification occurs
in the programs or data.” ’670 patent col. 1 ll. 20–27; see
also ’988 patent at col. 1 ll. 18–26. The specification also
teaches that the “present invention” relates to an “infor-
mation process device in which a fault in hardware or soft-
ware is inspected.” ’670 patent col. 1 ll. 17–18; ’988 patent
col. 1 ll. 15–16. Thus, the specification supports construing
“fault inspection program” to require inspecting faults in
hardware or software.
Bot M8 argues that because some claims require in-
specting faults in hardware (e.g., ’670 patent claim 1); some
claims require inspecting faults in software (e.g., ’670 pa-
tent claim 4); and some claims require inspecting faults in
both hardware and software (e.g., ’988 patent claim 1), then
it is “tautological” that “fault inspection program must be
capable of inspecting for both types of faults.” Appellant’s
Br. 46–48. Sony argues that the claims already specify
what the “fault inspection program” must inspect—hard-
ware or software—such that Bot M8’s additional require-
ment would be “redundant.” 7 Appellee’s Br. 27–28. We
agree with Sony.
7 Bot M8 also argues that Sony argued in parallel lit-
igation in the Northern District of California that the “fault
inspection program” should be construed to inspect faults
in both hardware and software. Appellant’s Br. 52–53; see,
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12 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
Bot M8’s “capable of” argument fundamentally misun-
derstands the structure of the claims, which are not drawn
to the capability of the fault inspection program. Bot M8
readily agrees that the surrounding claim language speci-
fies whether the “fault inspection program” inspects faults
in hardware, software, or both. Appellant’s Br. 46–47; see
also Decision II at *6 (“[T]he claims of the ’988 patent ex-
pressly require a ‘fault inspection program’ to inspect for
faults in both the second memory device (hardware) and
the game application program (software).”). Thus, Bot
M8’s arguments would render certain claim language su-
perfluous by repeating the requirement of the claims that
the “fault inspection program” inspects both hardware and
software in each claim. See ’988 patent claim 1; Intel Corp.
v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is
highly disfavored to construe terms in a way that renders
them void, meaningless, or superfluous.” (quoting Wasica
Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288
n.10 (Fed. Cir. 2017))).
In other instances, Bot M8’s arguments would lead to
improperly importing requirements from some claims into
others by requiring the “fault inspection program” to have
the capability to inspect faults in both hardware and soft-
ware, despite those claims only requiring the fault inspec-
tion program to inspect one kind of fault. See, e.g., ’670
patent claims 1 and 4; see also Phillips, 415 F.3d at 1314
(“Other claims of the patent in question, both asserted and
unasserted, can also be valuable sources of enlightenment
e.g., Sony Mot. to Dismiss at 12–13, Bot M8 LLC v. Sony
Corp. of Am., No. 3:19-CV-07027-WHA (N.D. Cal. Dec. 19,
2019). We disagree. Any alleged inconsistencies identified
by Bot M8 merely reflect that the claims of the ’988 patent
require the inspection of both kinds of faults, which is con-
sistent with Sony’s arguments here. See Appellee’s Br. 30–
32.
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BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC 13
as to the meaning of a claim term.”); Unwired Planet, LLC
v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“If the
patentee intended to restrict the claims-at-issue to require
a voice input to travel over a particular type of channel, it
could have included that same limitation.”). We decline to
add limitations to the claims that the patentee did not.
We agree with the Board that the construction of “fault
inspection program” does not require it to inspect both
hardware and software.
C. Prior Art
Having rejected both of Bot M8’s proposed construc-
tions of “fault inspection program,” we turn to whether the
Board’s analysis of the prior art is supported by substantial
evidence. We conclude that it is.
First, Bot M8 argues that the Board failed to identify
“two distinct programs” in the Sugiyama-based combina-
tion of prior art. Appellant’s Br. 33–37; Appellant’s Reply
Br. 12. Bot M8’s arguments are premised on its claim con-
struction argument requiring the “fault inspection pro-
gram” to be “other than the boot program,” which we reject
as explained above.
Second, Bot M8 also challenges whether substantial
evidence supports the Board’s findings for those claims
from the ’988 patent that require inspecting faults in both
hardware and software. 8 Appellant’s Br. 54. Bot M8
8 Outside of its claim construction argument that the
“fault inspection program” must inspect both hardware
and software, Bot M8 does not appear to challenge that
substantial evidence supports the Board’s finding as to the
’670 patent. Appellant’s Br. 54 (“[T]he claim construction
alone is dispositive for the ’670 Patent because the Board’s
obviousness determination was based on rejecting Bot M8’s
construction.”); see also Oral Arg. at 10:48–11:34 (“That
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14 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC
argues that “Sugiyama can only determine that an abnor-
mality occurred, not whether it occurred in” hardware or
software. Id. at 55. Bot M8 agrees that Sugiyama can de-
tect “hardware abnormalities, like memory failures,” but
argues that it “cannot detect software faults.” Id. at 55–56.
We conclude that the Board’s analysis is supported by
substantial evidence. As to the ’988 patent, the Board
found that Sugiyama alone teaches inspecting both hard-
ware and software faults. Decision II at *13. The Board
relied on Sugiyama’s disclosure that it can identify
whether there is “damage to the hard disk drive 24 itself”
(i.e., hardware) or “[i]f there is no damage to the hard disk
drive itself, for example, when the stored data is destroyed”
(i.e., software). Id. at *9 (internal quotations omitted), *13;
see also Sugiyama ¶¶ 23–24. We agree that substantial
evidence supports the Board’s factual findings underlying
the unpatentability determinations for Sony’s Sugiyama-
based grounds.
III. CONCLUSION
We have considered Bot M8’s remaining arguments
and find them unpersuasive. For the above reasons, we
affirm.
AFFIRMED
argument, that it had to be both hardware and software,
does not apply to the ’670 [patent].”). To the extent Bot M8
challenges the Board’s findings that Sugiyama in combina-
tion with Gatto renders the claims of the ’670 patent un-
patentable as obvious, we conclude that substantial
evidence supports the Board’s factual findings underlying
its unpatentability determinations. Decision I at *7–11.