Acceleration Bay, LLC v. Activision Blizzard Inc. , 908 F.3d 765 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
ACCELERATION BAY, LLC,
Appellant
v.
ACTIVISION BLIZZARD INC., ELECTRONIC ARTS
INC., TAKE-TWO INTERACTIVE SOFTWARE, INC.,
2K SPORTS, INC., ROCKSTAR GAMES, INC.,
Cross-Appellants
BUNGIE, INC.,
Appellee
______________________
2017-2084, 2017-2085, 2017-2095, 2017-2096, 2017-2097,
2017-2098, 2017-2099, 2017-2117, 2017-2118
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
IPR2015-01951, IPR2015-01953, IPR2015-01964,
IPR2015-01970, IPR2015-01972, IPR2015-01996,
IPR2016-00933, IPR2016-00934, IPR2016-00935,
IPR2016-00936, IPR2016-00963, IPR2016-00964.
______________________
Decided: November 6, 2018
______________________
PAUL J. ANDRE, Kramer Levin Naftalis & Frankel
LLP, Menlo Park, CA, argued for appellant. Also repre-
sented by JAMES R. HANNAH.
2 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
JAMES LAWRENCE DAVIS, JR., Ropes & Gray LLP, East
Palo Alto, CA, argued for cross-appellants. Also repre-
sented by ANDREW N. THOMASES; DOUGLAS HALLWARD-
DRIEMEIER, Washington, DC.
MICHAEL T. ROSATO, Wilson, Sonsini, Goodrich &
Rosati, PC, Seattle, WA, for appellee. Also represented by
JOSE CARLOS VILLARREAL, Austin, TX; RICHARD TORCZON,
Washington, DC.
______________________
Before PROST, Chief Judge, MOORE and REYNA, Circuit
Judges.
MOORE, Circuit Judge.
Patent owner Acceleration Bay, LLC (“Acceleration”)
appeals the final written decisions of the Patent Trial and
Appeal Board holding unpatentable claims 1–9 of U.S.
Patent No. 6,829,634, claims 1–11 and 16–19 of U.S.
Patent No. 6,701,344, and claims 1–11 and 16–17 of U.S.
Patent No. 6,714,966. Activision Blizzard, Inc., Electronic
Arts Inc., Take-Two Interactive Software, Inc., 2k Sports,
Inc., and Rockstar Games, Inc. (collectively, “Blizzard”)
cross-appeal portions of the Board’s decisions holding
patentable claims 10–18 of the ’634 patent, as well as
substitute claims 19 of the ’966 patent, 21 of the ’344
patent, and 25 of the ’634 patent. Blizzard also cross-
appeals the Board’s decisions holding that the Lin article
is not a printed publication under 35 U.S.C. § 102(a). For
the following reasons, we affirm.
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 3
BACKGROUND
The patents at issue are directed to a broadcast tech-
nique in which a broadcast channel overlays a point-to-
point communications network. See, e.g., ’966 patent at
4:3–5. 1 The communications network consists of a graph
of point-to-point connections between host computers or
“nodes,” through which the broadcast channel is imple-
mented, represented in Figure 1. Id. at 4:23–26, 48–49.
Figure 1 illustrates a broadcast channel that is “4-regular,
4-connected.” Id. at 4:48–49. It is “4-regular” because
1 The specifications are similar but contain sections
unique to each patent, such as: ’966 patent at 16:24–
17:26 (discussing “an information delivery service”); ’344
patent at 16:29–17:11 (discussing “a distributed game
environment”); ’634 patent at 2:45–67 (providing a “sum-
mary of the invention”).
4 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
each node is connected to exactly four other nodes, re-
ferred to as “neighbors.” Id. at 4:26–30, 38–42, 49–53. It
is “4-connected” because it would take the failure of four
nodes to divide the graph into two separate sub-graphs.
Id. at 4:42–47. One node sends a message to each of its
three neighbors, and they send the message to their
neighbors, thus broadcasting the message to each node.
Id. at 4:30–38.
Blizzard filed six inter partes review (“IPR”) peti-
tions—two for each of the ’344, ’966, and ’634 patents—
based principally on two different prior art references: one
set of IPRs challenged claims based on the Shoubridge
article 2 alone or combined with a prior art book Direct-
Play 3 (“Shoubridge IPRs”), and another set of IPRs chal-
lenged claims based on the Lin article 4 alone or combined
with DirectPlay (“Lin IPRs”). The Board instituted IPR
on each petition, on many of the grounds and claims
raised, 5 and rendered six final decisions. In the
2 Peter J. Shoubridge & Arek Dadej, Hybrid Rout-
ing in Dynamic Networks, 3 IEEE INT’L CONF. ON COMMS.
CONF. REC. 1381–86 (Montreal, 1997).
3 Bradley Bargen & Peter Donnelly, Inside Di-
rectX®: In-Depth Techniques for Developing High-
Performance Multimedia Applications (Microsoft Press,
1998).
4 Meng-Jang Lin, et al., Gossip versus Deterministic
Flooding: Low Message Overhead and High Reliability for
Broadcasting on Small Networks, Technical Report No.
CS1999-0637 (Univ. of Cal. San Diego, 1999).
5 The Board did not institute IPR on all challenged
claims and grounds. In SAS Institute, Inc. v. Iancu, 138
S. Ct. 1348, 1353 (2018), the Court held that 35 U.S.C.
§ 318(a) prohibits the Board from instituting IPR on fewer
than all challenged claims. No party, however, has asked
us to reopen or remand any portion of a non-instituted
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 5
Shoubridge IPRs, the Board determined the following
claims are unpatentable: ’966 patent claims 1–11 and 16–
17; ’344 patent claims 1–11 and 16–19; and ’634 patent
claims 1–9. In the Lin IPRs, the Board concluded that
Lin is not a printed publication under 35 U.S.C. § 102(a)
and thus determined Blizzard failed to show the chal-
lenged claims are unpatentable over Lin.
Acceleration appeals portions of the Board’s decisions
in the Shoubridge IPRs, and Blizzard cross-appeals por-
tions of the Board’s decisions in the Shoubridge IPRs and
the Lin IPRs. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo
and its fact findings for substantial evidence. PPC
Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
815 F.3d 747, 751 (Fed. Cir. 2016). In IPR, the Board
gives claims their broadest reasonable interpretation
consistent with the specification. Id. We review claim
construction de novo except for subsidiary fact findings,
which we review for substantial evidence. Id.
I.
Acceleration challenges three aspects of the Board’s
decisions. Claim 1 of the ’966 patent is representative of
the claim construction disputes in Acceleration’s appeal
(emphases added):
1. A computer network for providing an infor-
mation delivery service for a plurality of par-
ticipants, each participant having connections to
petition, and we see no reason to independently do so.
See, e.g., PGS Geophysical AS v. Iancu, 891 F.3d 1354,
1359–62 (Fed. Cir. 2018); Jazz Pharm., Inc. v. Amneal
Pharm., LLC, 895 F.3d 1347, 1354–55 (Fed. Cir. 2018).
6 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
at least three neighbor participants, wherein an
originating participant sends data to the other
participants by sending the data through each of
its connections to its neighbor participants and
wherein each participant sends data that it re-
ceives from a neighbor participant to its other
neighbor participants, further wherein the net-
work is m-regular, where m is the exact number of
neighbor participants of each participant and fur-
ther wherein the number of participants is at
least two greater than m thus resulting in a non-
complete graph.
Acceleration argues the Board erred by construing the
term “participant” according to its plain meaning. It
argues the terms “game environment” and “information
delivery service,” appearing in the ’344 and ’966 patents,
respectively, should have been given patentable weight.
Finally, it argues the Board failed to identify a broadcast
channel in Shoubridge in its anticipation and obviousness
analyses. We address each argument in turn.
A.
Acceleration argues the Board erred by construing the
term “participant” according to its plain meaning. It
argues the proper construction of “participant” is an
“application program that interacts with a logical broad-
cast channel which overlays an underlying network.”
Appellant’s Br. 26–27.
We see no legal error in the Board’s refusal to import
detailed structural information into the term “partici-
pant.” See, e.g., J.A. 42–44. Neither the claims nor the
specifications define or expressly describe the term in this
manner, a fact Acceleration conceded at oral argument.
Oral Arg. at 4:20–5:10. The specifications, for example,
describe “participant” without reference to an application
program. See, e.g., ’634 and ’966 patents at Abstract; ’634
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 7
patent at 2:45–67. We conclude, therefore, that the Board
properly construed “participant.”
B.
Acceleration argues the claim terms “game environ-
ment” and “information delivery service” are limitations
despite appearing in the preambles because they provide
structure for the remainder of the claims. Appellant’s Br.
35–38 (citing, e.g., Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997); Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d
1330, 1341 (Fed. Cir. 2010)); Appellant’s Reply Br. 26.
Acceleration alternatively argues that these terms appear
in the body of the claims because there is no transition
phrase denoting a preamble. See, e.g., Appellant’s Br. 38;
Oral Arg. at 7:22–7:36.
“A claim typically contains three parts: the preamble,
the transition, and the body.” 3 Chisum on Patents § 8.06
(2018). Acceleration’s poor claim drafting will not be an
excuse for it to infuse confusion into its claim scope. We
conclude that “game environment” and “information
delivery service” are part of the preamble of the claims.
We see no beneficial purpose to be served by failing to
include a transition word in a claim to clearly delineate
the claim’s preamble from the body, and we caution
patentees against doing so.
Because the terms at issue appear in preambles, we
must determine whether the terms are limitations. A
preamble limits the invention if it recites essential struc-
ture or steps, or is “necessary to give life, meaning, and
vitality” to the claim. Catalina Mktg. Int’l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182
F.3d 1298, 1305 (Fed. Cir. 1999)). “[A] preamble is not
limiting ‘where a patentee defines a structurally complete
invention in the claim body and uses the preamble only to
state a purpose or intended use for the invention.’” Id.
(citing Rowe, 112 F.3d at 478).
8 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
We agree with the Board that the claim terms “game
environment” and “information delivery service” are non-
limiting because they merely describe intended uses for
what is otherwise a structurally complete invention.
They do not impart any structure into or serve as ante-
cedents for the claims at issue. Instead, they simply
provide an intended use for what is otherwise a claim for
a network.
C.
Finally, Acceleration argues the Board determined
that the canceled claims of the ’344 and ’966 patents
describe a broadcast channel and acknowledged that the
specifications explain the “broadcast channel overlays a
point-to-point communications network.” It argues,
however, that the Board failed to determine whether
Shoubridge discloses such a broadcast channel.
Acceleration again attempts to import structural limi-
tations into claims lacking those limitations. The Board’s
statement that the claims “recite[] a structurally complete
invention (i.e., ‘a broadcast channel’)” did not import a
broadcast channel overlaying a point-to-point network
into the claims. See J.A. 41–42; J.A. 168. While the
specifications discuss a broadcast channel overlaying a
network, the claims at issue are not so limited. The
specifications do not contain the sort of precise and clear
language that would warrant reading a limitation to a
broadcast channel overlaying a point-to-point communica-
tions network into the claims at issue. Appellant’s Br. 41
(citing ’966 patent at 4:3–5 (noting such an arrangement
“is provided”); ’634 patent at 4:29–31 (same); ’344 patent
at 4:3–5 (same)). The language in the specifications falls
far short of the language we have found sufficient to limit
claims to configurations described in the specification.
See, e.g., Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d
1374, 1377 (Fed. Cir. 2018) (collecting cases, including
those found to contain limiting language in the specifica-
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 9
tion such as “the present invention” and “essential ele-
ment among all embodiments or connotations of the
invention”). The specifications further explain “the inven-
tion is not limited except by the claims.” E.g., ’344 patent
at 29:23–24. Because the claims at issue do not contain
the broadcast channel limitation argued for by Accelera-
tion, the Board did not err by failing to identify such a
broadcast channel in Shoubridge. We have considered
Acceleration’s remaining arguments and find them un-
persuasive. Accordingly, we affirm the Board’s determi-
nations with regard to issues raised in Acceleration’s
appeal.
II.
Claim 10 of the ’634 patent, and substitute claim 19 of
the ’966 patent, J.A. 81, are representative of the issues in
Blizzard’s cross-appeal (emphases added):
10. A non-routing table based broadcast channel for
participants, comprising:
a communications network that provides peer-to-
peer communications between the participants
connected to the broadcast channel; and
for each participant connected to the broadcast
channel, an indication of four neighbor par-
ticipants of that participant; and
a broadcast component that receives data from a
neighbor participant using the communications
network and that sends the received data to its
other neighbor participants to effect the broad-
casting of the data to each participant of the to
broadcast channel, wherein the network is m-
regular and m-connected, where m is the number
of neighbor participants of each participant, and
further wherein the number of participants is at
least two greater than m thus resulting in a non-
complete graph.
10 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
19. (Proposed Substitute for Claim 7) A computer
network for providing an information delivery service for
a plurality of participants, each participant having con-
nections to at least three neighbor participants,
wherein an originating participant sends data to
the other participants by sending the data
through each of its connections to its neighbor
participants and wherein each participant sends
data that it receives from a neighbor participant
to its other neighbor participants,
further wherein the network is m-regular, where
m is the exact number of neighbor participants of
each participant,
further wherein the number of participants is at
least two greater than m thus resulting in a non-
complete graph,
further wherein the connections are peer-to-peer
connections,
further wherein the network is formed through a
broadcast channel that overlays an underlying
network,
further wherein the information delivery service
is provided by at least one information delivery
service application program executing on each
computer of the computer network that interacts
with the broadcast channel,
and further wherein participants can join and
leave the network using the broadcast chan-
nel.
Blizzard cross-appeals three issues. First, it argues
the Board erroneously concluded that Lin is not a printed
publication under § 102(a). Second, it argues the Board
erroneously determined ’634 patent claims 10–18 were
not anticipated or rendered obvious by Shoubridge.
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 11
Third, it argues the Board erred in determining that
various amended claims were patentable over the prior
art. We consider each in turn.
A.
Whether a reference qualifies as a printed publication
under § 102 is a legal conclusion based on underlying fact
findings. 6 Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895
F.3d 1347, 1356 (Fed. Cir. 2018); accord Cooper Cameron
Corp. v. Kvaerner Oilfield Prod., Inc., 291 F.3d 1317, 1321
(Fed. Cir. 2002). One such fact question is public accessi-
bility, which we review for substantial evidence. Jazz
Pharm., 895 F.3d at 1356. “Because there are many ways
in which a reference may be disseminated to the interest-
ed public, ‘public accessibility’ has been called the touch-
stone in determining whether a reference constitutes a
‘printed publication’ . . . .” Id. (quoting In re Hall, 781
F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is consid-
ered publicly accessible if it was “disseminated or other-
wise made available to the extent that persons interested
and ordinarily skilled in the subject matter or art, exercis-
ing reasonable diligence, can locate it.” Id. at 1355–56
(citing In re Wyer, 665 F.2d 221, 226 (CCPA 1981)). As
petitioner, Blizzard had the burden to prove Lin is a
printed publication. See id. at 1356.
The Board found that Lin was not publicly accessible
before the critical date. See J.A. 10–22; J.A. 114–127; J.A.
141–153. Based on the testimony of Glenn Little, a
Systems Administrator at the Computer Science and
Engineering (“CSE”) department of the University of
California, San Diego (“UCSD”), the Board found that Lin
had been uploaded to the CSE Technical Reports Li-
6 Because the applications for each of the patents at
issue were filed before March 16, 2013, the pre-Leahy-
Smith America Invents Act version of § 102 applies.
12 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
brary’s website as of November 23, 1999, which is not
challenged on appeal. See, e.g., J.A. 11–13. As the Board
explained, according to Mr. Little, “the CSE department
regularly maintains electronic technical reports and
records concerning those reports, and a staff member
assigns a unique identifier to each report based on the
year it was uploaded and the relative order it was upload-
ed in comparison to other papers.” J.A. 11.
The Board then correctly noted that “public accessibil-
ity” requires more than technical accessibility. J.A. 13.
Because there was no evidence that Lin was disseminated
to the public, the Board focused on whether an interested
skilled artisan, using reasonable diligence, would have
found Lin on the CSE Technical Reports Library website.
J.A. 13–14 (citing Voter Verified, Inc. v. Premier Election
Sols., Inc., 698 F.3d 1374, 1380–81 (Fed. Cir. 2012)). The
Board found that despite some indexing and search
functionality on the website, Lin was not publicly accessi-
ble. See J.A. 15–19. It found the website allowed a user
to view a list of technical reports indexed only by author
or year and that there was no evidence as to how many
reports were in the Library’s database in 1999. See J.A.
16–17, 22. The Board determined that at best, Blizzard’s
evidence “suggests that an artisan might have located Lin
by skimming through potentially hundreds of titles in the
same year, with most containing unrelated subject mat-
ter, or by viewing all titles in the database listed by
author, when the authors were not particularly well
known.” J.A. 17. The Board also found the website’s
advanced search form to be deficient. It found that while
the advanced search form appeared to allow a user to
search keywords for author, title, and abstract fields,
evidence demonstrated that functionality was not reliable.
J.A. 18–19, 22. In sum, the Board determined that Bliz-
zard “has not shown sufficiently that the UCSD CSE
Technical Reports Library was searchable or indexed in a
meaningful way so that a person of ordinary skill in the
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 13
art would have located Lin.” J.A. 22. The Board, there-
fore, concluded Lin is not a printed publication under
§ 102(a). J.A. 22.
The Board did not err in concluding Lin is not a print-
ed publication. Substantial evidence supports its findings
that Lin was not publicly accessible, including that Lin
was not indexed in a meaningful way and that the web-
site’s advanced search form was deficient. Mr. Little
testified he does not know how the search works or how
keywords are generated, that he never searched for Lin
using the advanced search form, and that it was not the
CSE department’s practice to verify the advanced search
capability for title and abstract when a new article was
uploaded. See J.A. 18; J.A. 7034–35. Mr. Little also
admitted it was possible the search function did not work.
J.A. 7035–36. Acceleration presented evidence that a
recent advanced search for keywords in the title and
abstract of Lin failed to produce any results. J.A. 7035–
36; J.A. 7991–94. Blizzard argues these results are
unauthenticated hearsay and are based on searches
conducted years after the critical date, but Mr. Little
testified that as to the website, “[i]t’s pretty much the
same, actually, between [1999] and now. We’re running
the same software.” J.A. 7031 at 19:15–20:23; see also
J.A. 18–19. We will not disturb the Board’s weighing of
the evidence. Substantial evidence supports the Board’s
finding that there “is insufficient evidence of record to
support a finding that a person of ordinary skill in the art
in 1999 could have located Lin using the CSE Library
website’s search function.” See J.A. 19.
In light of these facts, this case is not analogous to In
re Lister, 583 F.3d 1307 (Fed. Cir. 2009), as Blizzard
claims. In Lister, we explained that “[a] reasonably
diligent researcher with access to a database that permits
the searching of titles by keyword would be able to at-
tempt several searches using a variety of keyword combi-
nations,” and thus concluded that the manuscript at issue
14 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
was publicly accessible as of the date it was included in
“databases that permitted keyword searching of titles.”
583 F.3d at 1315–16. Unlike in Lister, here the record
supports the Board’s finding that the CSE Library web-
site’s advanced search function did not successfully per-
mit keyword searching of titles, a key feature in Lister.
See id. The Board’s fact finding that, with available
reports indexed only by author or year, Lin was not
meaningfully indexed, is supported by substantial evi-
dence.
Blizzard argues we need not even consider the web-
site’s search functionality because Lin was indexed by
title for a given year, author name, and unique sequence
number, which is sufficient for public accessibility under
In re Hall, 781 F.2d 897 (Fed. Cir. 1986). We do not
agree.
The test for public accessibility is not “has the refer-
ence been indexed?” We have explained that where
indexing is concerned, whether online or in tangible
media, the “ultimate question is whether the reference
was ‘available to the extent that persons interested and
ordinarily skilled in the subject matter or art, exercising
reasonable diligence, can locate it.’” Voter Verified, 698
F.3d at 1380; accord In re Klopfenstein, 380 F.3d 1345,
1348 (Fed. Cir. 2004) (“Even if the cases cited by the
appellants relied on inquiries into distribution and index-
ing to reach their holdings, they do not limit this court to
finding something to be a ‘printed publication’ only when
there is distribution and/or indexing. Indeed, the key
inquiry is whether or not a reference has been made
‘publicly accessible.’”). Here, the Board found that alt-
hough Lin was indexed by author and year, it was not
meaningfully indexed such that an interested artisan
exercising reasonable diligence would have found it,
which is a proper consideration under our precedent. See,
e.g., In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989)
(“We conclude that in the present case, as in Bayer and
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 15
unlike Hall, the three student theses were not accessible
to the public because they had not been either cataloged
or indexed in a meaningful way. . . . Here, the only re-
search aid was the student’s name, which, of course, bears
no relationship to the subject of the student’s thesis.”). In
light of the Board’s fact findings, which are supported by
substantial evidence, we agree that Lin is not a printed
publication under § 102.
B.
Blizzard argues the Board erroneously determined
claims 10–18 of the ’634 patent are patentable over
Shoubridge. Independent claim 10 contains the limita-
tion, “for each participant connected to the broadcast
channel, an indication of four neighbor participants of
that participant.” The Board construed “indication”
according to its ordinary meaning as “something that
serves to indicate,” J.A. 253–54, which is not disputed on
appeal. Blizzard disputes the Board’s application of the
term to Shoubridge. Specifically, it argues its expert, Dr.
David Karger, explained “a participant must know the
identities of its neighbors in order to send messages to
them,” and the Board applied an unspecified narrower
construction that requires something more than each
participant “know[ing] the identities of its neighbors” in
determining Shoubridge did not disclose or render obvious
this limitation. Cross-Appellants’ Br. 58–60.
We see no error in the Board’s construction or applica-
tion of “indication.” The Board did not err in determining
that “an ‘indication’ requires more than the existence of
neighbors,” and substantial evidence supports its finding
that Shoubridge does not disclose “something that serves
to indicate” despite the fact that Shoubridge discloses
nodes connected to each other. J.A. 254; J.A. 271–72.
Blizzard also argues the Board abused its discretion
by failing to consider paragraphs 193–205 of Dr. Karger’s
reply declaration because it constituted new evidence for
16 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
its obviousness argument that could have been presented
in the petition. See, e.g., Cross-Appellants’ Br. 60 (citing
J.A. 40569–74 ¶¶ 193–205)). It argues the declaration
directly responds to Acceleration’s construction of “indica-
tion” and explains a skilled artisan’s understanding of the
prior art regarding this limitation. It also argues it raised
backup obviousness arguments for claims 1–18 over
Shoubridge in its petition. We review the Board’s eviden-
tiary rulings for abuse of discretion. Belden Inc. v. Berk-
Tek LLC, 805 F.3d 1064, 1078 (Fed. Cir. 2015).
The Board did not abuse its discretion in declining to
consider the cited paragraphs in Dr. Karger’s reply decla-
ration. See J.A. 271–72. The declaration raises a new
obviousness argument for this limitation that could have
been made in the petition. The Board correctly noted this
argument was not made in the petition, which proposed
that Shoubridge rendered obvious a number of other claim
limitations. Blizzard, as petitioner, had an opportunity to
present this argument in its petition, but chose not to.
See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018)
(noting “the petitioner is master of its complaint”); id. at
1358 (noting the statute “makes the petition the center-
piece of the proceeding both before and after institution”).
As we recently explained,
[i]t is of the utmost importance that petitioners in
the IPR proceedings adhere to the requirement
that the initial petition identify “with particulari-
ty” the “evidence that supports the grounds for the
challenge to each claim.” 35 U.S.C. § 312(a)(3).
“All arguments for the relief requested in a motion
must be made in the motion. A reply may only re-
spond to arguments raised in the corresponding
opposition or patent owner response.” 37 C.F.R.
§ 42.23(b). Once the Board identifies new issues
presented for the first time in reply, neither this
court nor the Board must parse the reply brief to
determine which, if any, parts of that brief are re-
ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC. 17
sponsive and which are improper. As the Board
noted, “it will not attempt to sort proper from im-
proper portions of the reply.” Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug.
14, 2012).
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821
F.3d 1359, 1369 (Fed. Cir. 2016). We conclude that the
Board did not abuse its discretion in not considering the
cited paragraphs of the reply declaration in its analysis.
C.
Finally, Blizzard argues that certain substitute claims
are unpatentable. The Board held substitute claims 19 of
the ’966 patent, 21 of the ’344 patent, and 25 of the ’634
patent patentable. These substitute claims contain the
limitation “participants can join and leave the network
using the broadcast channel.” Blizzard argues the Board
inconsistently and erroneously construed the join-leave
limitation. It argues the Board applied the correct con-
struction when analyzing whether the motions to amend
identified written description support in the original
disclosure for the new limitation, but that it applied an
unspecified, narrower construction when comparing the
claims to the prior art.
We see no error in the Board’s analysis of this limita-
tion. Blizzard provided no construction below, or on
appeal, for this claim limitation. The Board, therefore,
properly focused on the ordinary meaning to determine
the prior art did not disclose or render obvious joining the
network “using the broadcast channel.” We see no error
or inconsistent treatment of this claim limitation in the
Board’s analyses concerning written description and
invalidity. We have considered Blizzard’s remaining
arguments and find them unpersuasive. Accordingly, we
affirm the Board’s determinations with regard to issues
raised in Blizzard’s cross-appeal.
18 ACCELERATION BAY, LLC v. ACTIVISION BLIZZARD INC.
CONCLUSION
We conclude the Board properly construed “partici-
pant” according to its plain meaning and gave no patent-
able weight to the terms “game environment” and
“information delivery service.” We also conclude substan-
tial evidence supports the Board’s findings underlying its
conclusion that Lin is not § 102 prior art, and that the
Board did not err in determining certain claims and
substitute claims are patentable over the prior art.
Accordingly, we affirm.
AFFIRMED
COSTS
No costs.