Game and Technology Co., Ltd. v. Activision Blizzard Inc. , 926 F.3d 1370 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
GAME AND TECHNOLOGY CO., LTD.,
Appellant
v.
ACTIVISION BLIZZARD INC., RIOT GAMES, INC.,
Appellees
______________________
2018-1981
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
01885.
______________________
Decided: June 21, 2019
______________________
RICHARD ARTHUR CASTELLANO, DNL ZITO, Washing-
ton, DC, argued for appellant. Also represented by JOSEPH
J. ZITO.
SHARON A. ISRAEL, Shook, Hardy & Bacon, LLP, Hou-
ston, TX, argued for appellees. Also represented by TANYA
L. CHANEY, DAVID MOREHAN; JOHN D. GARRETSON, Kansas
City, MO.
______________________
2 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
Before PROST, Chief Judge, LOURIE and WALLACH, Circuit
Judges.
WALLACH, Circuit Judge.
Appellees Activision Blizzard Inc. and Riot Games, Inc.
(collectively, “Activision”) sought inter partes review
(“IPR”) of claims 1–11 (“the Challenged Claims”) of Appel-
lant Game and Technology Co.’s (“GAT”) U.S. Patent No.
8,253,743 (“the ’743 patent”). The U.S. Patent and Trade-
mark Office’s (“USPTO”) Patent Trial and Appeal Board
(“PTAB”) issued a final written decision determining, inter
alia, that the Challenged Claims were “obvious based on
the combined teachings” of the prior art references. Ac-
tivision Blizzard, Inc. v. Game & Tech. Co., No. IPR2016-
01885, 2018 WL 1358661, at *28 (P.T.A.B. Mar. 14, 2018).
GAT appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.
BACKGROUND
I. The ’743 Patent
Entitled “Method and System for Providing Character
Having Game Item Functions,” the ’743 patent relates to
the field of customizing Internet game characters in online
games by combining game items with layers of an avatar
in the game. ’743 patent col. 1 ll. 19–21. 1 Specifically, the
’743 patent discloses a method and system for providing
“game item[s]” to Internet game characters and generating
a type of avatar the patent refers to as a “gamvatar” that
is equipped with particular game items. Id. col. 1 ll. 20–23
(explaining that the patent discloses “a method and system
1 According to the ’743 patent, “[t]he character may
represent an animation character for performing the user’s
role in cyber[]space, includes an avatar, and supports the
user’s desire[d] identity in cyber[]space.” ’743 patent col. 2
ll. 20–22.
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 3
INC.
for servicing characters and having game item functions of
a specific game in the case of characters provided by an
online [website]”). A “gamvatar” is described by the patent
as both “an avatar for exclusive use in a game,” id. col. 3
ll. 10–11, and “an avatar that is capable of performing
game item functions,” id. col. 5 ll. 39–40. A “game item”
can include “a game tool, such as a money recovery item,”
id. col. 2 ll. 45–47, where “the user generally uses the game
item in a game after buying it at the game item shop 270
to receive merits according to the specific characteristics of
the item,” id. col. 2 ll. 50–52. According to the specification,
“[t]he game item function of the gamvatar includes the
function of charging and restoring cyber money, a function
of reinforcing power of the gamvatar, and a function of at-
tacking or defending other gamers.” Id. col. 6 ll. 18–21.
The ’743 patent also describes “combining” items with lay-
ers of an avatar, id., Abstract, and describes the layers of
an avatar in the context of “conventional avatar service
system[s],” where the user customizes the avatar’s appear-
ance using purchased avatar items, id. col. 2 ll. 33–37. Af-
ter “access[ing] the [website] . . . through the user
computer[,] . . . [the user] acquires or buys an avatar from
the avatar shop or the avatar server . . . and accesses the
game server . . . to play a game.” Id. col. 2 ll. 38–41.
Independent claim 1 is representative and recites:
A method for generating a character associated
with a character generating system comprising a
gamvatar provider, a gamvatar controller, and a
game server, the method comprising:
providing an avatar to a user accessing an
avatar shop via a network, the avatar com-
prising multiple layers for displaying ava-
tar functions or performing game item
functions by using the respective layers;
and
4 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
combining each of a plurality of game item
functions with the avatar by adding the re-
spective layers to the avatar to create a
gamvatar associated with the plurality of
the game item functions,
wherein the gamvatar is configured to be
used to perform the plurality of the game
item functions and each of the plurality of
game item functions being combined with
the respective layers is exhausted in re-
sponse to detection of each time of using the
each of the plurality of game item functions
associated with playing a game provided by
the game server.
Id. col. 11 l. 60–col. 12 l. 11 (emphases added).
II. The Relevant Prior Art
A. Diablo II Manual
A video game called Diablo II was sold with a user man-
ual (“Diablo II Manual”). J.A. 4354–415. Diablo II is an
action, role-playing game, and the Diablo II Manual de-
scribes the operation of Diablo II. J.A. 4354–56. The Dia-
blo II Manual includes pictures of a screen, or screenshots,
as they would appear during gameplay. J.A. 4354. The
Diablo II Manual describes a player customizing a charac-
ter by equipping it with game items such as armor and
weapons. J.A. 4365–66. For example, javelins are among
the items described by the manual that “can inflict great
damage when thrown.” J.A. 4413. Similarly, the Diablo II
Manual discloses that potions are “effective weapons when
placed in glass bottles and lobbed from a distance into
groups of enemies.” J.A. 4413; see J.A. 4367 (explaining
that “[s]ome potions can be used as weapons”). Addition-
ally, players can protect their avatars by “[w]earing
stronger armor [that] will make an opponent less likely to
land a damaging blow on [their] character.” J.A. 4413; see
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 5
INC.
4413–14. As such, the Diablo II Manual discloses that the
player can “equip weapons, armor, or other wearable
items” by “pick[ing] up the item from [their] inventory and
drop[ping] it onto the appropriate location on their charac-
ter.” J.A. 4366. These game items are all displayed virtu-
ally during gameplay in the top of an “[i]nventory screen,”
J.A. 4365, which includes a rectangular grid “near the bot-
tom of the screen,” that is the “character’s backpack.” J.A.
4366.
There are multiple ways of playing Diablo II: (1) as a
“single player”; (2) on the website “Battle.net”; or (3) in
“other multi-player” mode. J.A. 4358 (capitalization modi-
fied). Battle.net and other multi-player networks are the
“two multi-player options on the main menu.” J.A. 4374
(capitalization modified). The Diablo II manual discloses
that “Battle.net is Blizzard Entertainment’s free, on[]line
gaming network [which] . . . offers a place where gamers
can meet, chat, and adventure together.” J.A. 4374. 2 It
states that “Battle.net is the easiest and fastest way to play
Blizzard games on[]line” and, once a user is on Battle.net,
she “can find literally thousands of other gamers to team
up with (or compete against)” for gameplay. J.A. 4374. Fi-
nally, the Diablo II Manual defines “[a] Realm [a]s a Diablo
II game server that is hosted and maintained by Blizzard”
and it states that “[t]here are several Realms on Bat-
tle.net.” J.A. 4374. The Diablo II Manual discloses that
“[r]ealm [c]haracters are played exclusively on Diablo II
Realms over Battle.net and cannot play in Single Player,
Open, or TCP/IP[3] games.” J.A. 4374. According to the
2 The PTAB found that “in a game” is different than
playing “on . . . Battle.net.” J.A. 2035–36. GAT does not
dispute this distinction. See generally Appellant’s Br.
3 “TCP/IP provides a network-independent transport
layer while web clients . . . and servers . . . eliminate oper-
ating system dependencies.” J.A. 4595.
6 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
Diablo II Manual, if it “is [a player’s] first time logging onto
Battle.net with Diablo II, [she] will be asked to create a
character,” but “[i]f [the player] ha[s] previously created
multiple Realm characters, [she] can choose which charac-
ter [she] wish[es] to play from the Character Selection
screen.” J.A. 4375. The Diablo II Manual explains that
“[o]nce you have logged in to Battle.net and selected a char-
acter, you are placed into one of Battle.net’s Diablo II
Realm Chat Channels” where “character portraits, repre-
senting other players, appear at the bottom of the screen.”
J.A. 4375.
B. Rogers
Entitled “Systems and Methods for a Role-Playing
Game Having a Customizable Avatar and Differentiated
Instant Messaging Environment,” U.S. Patent Application
Publication No. 2005/0137015 A1 (“Rogers”) (J.A. 4570–
605) relates to online, interactive games or instant messag-
ing environments where the player is represented by a cus-
tomizable avatar. J.A. 4570. Rogers discloses that players
in a game can use virtual resources to customize their ava-
tars and to change the avatars’ appearance by adding “fa-
cial expressions, bodily movements, animations performed
by the avatars, or clothing or accessories worn by the ava-
tars.” J.A. 4589. Rogers explains that avatar customiza-
tion uses graphical layering techniques using a “graphics
sub-system 340.” J.A. 4596. This sub-system “comprises a
[three-dimensional (‘3D’)] avatar component 342” that “ad-
dresses several significant problems associated with dis-
playing 3D objects using current high-end graphics cards.”
J.A. 4596. Importantly, Rogers teaches layering tech-
niques to customize the avatar “since the sys-
tem . . . uniquely allows users to place clothing on the
avatar and further allows clothing to be layered, the 3D ob-
jects (body and clothing) must be layered to avoid a first
image from visibly bleeding through when a subsequent
image is placed over the first image.” J.A. 4596–97.
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 7
INC.
DISCUSSION
GAT challenges the PTAB’s construction of two terms,
“gamvatar” and “layers,” see Appellant’s Br. 18–22, as well
as its determination that the Challenged Claims would
have been obvious, see id. at 23–31. After stating the ap-
plicable standard of review, we address each argument in
turn.
I. Standard of Review
“We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo.” Redline Detec-
tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015) (citation omitted). “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence,” meaning that “[i]t is such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” In re NuVasive, Inc., 842
F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation
marks and citations omitted). “If two inconsistent conclu-
sions may reasonably be drawn from the evidence in rec-
ord, the PTAB’s decision to favor one conclusion over the
other is the epitome of a decision that must be sustained
upon review for substantial evidence.” Elbit Sys. of Am.,
LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. Cir.
2018) (internal quotation marks, brackets, and citation
omitted).
II. Claim Construction
A. Legal Standard
At the time it issued the Final Written Decision, the
PTAB gave “[a] claim . . . its broadest reasonable construc-
tion in light of the specification of the patent in which it
appears.” 37 C.F.R. § 42.100(b) (2016). A specification “in-
cludes both the written description and the claims” of the
patent. In re Packard, 751 F.3d 1307, 1320 n.11 (Fed. Cir.
2014). “A patent’s specification, together with its
8 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
prosecution history,[4] constitutes intrinsic evidence to
which the PTAB gives priority when it construes claims.”
Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d 1358,
1361−62 (Fed. Cir. 2018) (citation omitted). We review the
PTAB’s assessment of the intrinsic evidence de novo. See
id. at 1362.
B. The PTAB Properly Construed the “Gamvatar” and
“Layers” Terms
1. “Gamvatar”
The PTAB determined “that the ‘gamvatar’ of the ’743
patent is a combination of ‘the conventional avatar with the
game item function,’ rather than a combination of a ‘con-
ventional gamvatar’ with a game item function, as sug-
gested by ” GAT. Activision, 2018 WL 1358661, at *5. GAT
asserts that “the [PTAB] erred in construing ‘gamvatar’ to
mean avatar.” Appellant’s Br. 17 (capitalization modified).
GAT asserts that under the broadest reasonable interpre-
tation (“BRI”), the “gamvatar” “is concurrently usable
on[]line and in-game” and that the “claims do not need to
recite the additional language of ‘representing a user on a
website’” because that “requirement is inherent in the
plain and ordinary meaning of gamvatar as evidenced
by . . . the claims and specification.” Id. at 19. GAT asserts
that the BRI of the claims is, therefore, narrower than the
PTAB’s construction. We disagree with GAT.
The ’743 patent’s claims and specification teach that
“gamvatar” is not limited to meaning concurrently usable
online and in the game. We begin our analysis with the
claim language. In re Power Integrations, Inc., 884 F.3d
4 A patent’s prosecution history “consists of the com-
plete record of the proceedings before the [US]PTO,” which
provides “evidence of how the [US]PTO and the inventor
understood the patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1317 (Fed. Cir. 2005) (en banc) (citations omitted).
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 9
INC.
1370, 1376 (Fed. Cir. 2018) (“Claim construction must
begin with the words of the claims themselves.” (internal
quotations, brackets, and citation omitted)). Representa-
tive claim 1 discloses that the “gamvatar” is created by
“providing an avatar” and “combining each of a plurality of
game item functions with the avatar.” ’743 patent col. 11
l. 64–col. 12 l. 11 (emphases added). As such, the “gamva-
tar” is created by combining an avatar with game item
functions having additional characteristics. Claim 1,
therefore, does not require the gamvatar to represent a
user both in a game and on a website, but rather recites a
“gamvatar” configured to have certain features. The rest
of the Challenged Claims provide various descriptions of
how the gamvatar is configured. See id. col. 12 l. 12–col. 14
l. 26; see Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d
1374, 1381 (Fed. Cir. 2018) (“Because claim terms are nor-
mally used consistently throughout the patent, the usage
of a term in one claim can often illuminate the meaning of
the same term in other claims.” (internal quotation marks
and citation omitted)). For instance, claim 2 recites that
“the gamvatar is selectively editable,” id. col. 12 ll. 12–13,
“and claim 5 describes” the “gamvatar [as] configured to
generate a predetermined facial expression or a motion to
perform the game item function in response to detection of
an input of a button or an emoticon,” id. col. 12 ll. 38–41.
The Challenged Claims, therefore, explain that the
“gamvatar” is an avatar combined with game item func-
tions having characteristics as provided by the claims and
thus supports the PTAB’s construction. See Id. col. 12 ll. 5–
11.
The broader specification similarly demonstrates that
“gamvatar” is not limited to concurrent use online and in-
game and is actually broader in scope. 5 For example, the
5 “[T]he specification is always highly relevant to the
claim construction analysis and is, in fact, the single best
10 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
specification explains that “the gamvatar according to the
embodiments of the present invention combines the con-
ventional avatar with the game item function” and, there-
fore, “the gamvatar described in the embodiments of the
present invention is substantially an avatar that is capable
of performing game item functions.” Id. col. 5 ll. 35–40.
The specification additionally explains that “a gamvatar,
which is an avatar for exclusive use in a game and has fea-
tures and personalities particularly associated with that
game, has been introduced,” id. col. 3 ll. 10–12 (emphasis
added), and it “concurrently functions as a game character
in a network game being played over the Internet, and as
an avatar on the [website],” id. col. 3 ll. 13–15. As such,
the specification confirms that the “gamvatar” is properly
construed as a combination of “the conventional avatar
with the game item function” because the claims and spec-
ification both show that the “gamvatar” is not equivalent
to an “avatar” because the “gamvatar” requires the combi-
nation of game item functions, while the “avatar” does not.
See Pickholtz v. Rainbow Techs., Inc., 284 F.3d 1365, 1373
(Fed. Cir. 2002) (explaining that “computer” and “computer
system” are used as synonyms when “they are used inter-
changeably in the . . . patent”). 6
guide to the meaning of a disputed term.” See Trs. of Co-
lumbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed.
Cir. 2016) (internal quotation marks and citation omitted).
6 GAT also asserts that a “gamvatar” must represent
a user on a website outside a game because “an avatar rep-
resent[s] a user in cyberspace.” Appellant’s Br. 19. This is
a new argument on appeal. See J.A. 6166–207 (Patent
Owner Response). Therefore, this argument is waived.
Singleton v. Wulff, 428 U.S. 106, 120 (1976) (“It is the gen-
eral rule, of course, that a federal appellate court does not
consider an issue not passed upon below.”).
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 11
INC.
2. “Layers”
The PTAB construed the term “layers” to mean that
“‘layers’ encompasses ‘graphics regions for displaying
graphical objects’ and ‘constructs for holding graphics,’” as
proposed by GAT. Activision, 2018 WL 1358661, at *5. The
PTAB, however, explained that “the term ‘layers’ does not
require further construction.” Id. at *6. GAT asserts that
the PTAB erred by construing “‘layer’ to mean display re-
gion.” Appellant’s Br. 17 (capitalization modified). In-
stead, GAT argues the PTAB should have construed
“layers” to mean “graphics regions for displaying graphical
objects” because “‘layers’ means ‘constructs’ for displaying
graphical objects.” Id. at 22. We disagree with GAT.
We begin our analysis with the claim language. In re
Power Integrations, 884 F.3d at 1376. Claim 1 recites an
“avatar comprising multiple layers for displaying avatar
functions or performing game item functions.” ’743 patent
col. 11 ll. 65–67 (emphases added); see CIAS, Inc. v. All.
Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) (“In
the patent claim context[,] the term ‘comprising’ is well un-
derstood to mean ‘including but not limited to.’”). The
claim’s use of the term “comprising,” combined with the use
of the disjunctive conjunction “or” supports the construc-
tion that “displaying” and “performing game functions” are
two alternatives for layers. See SkinMedica, Inc. v. Histo-
gen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The dis-
junctive ‘or’ plainly designates that a series describes
alternatives.”). Thus, the Challenged Claims require more
than one layer.
The specification further supports the PTAB’s con-
struction by explaining that there may be several layers for
displaying graphics on an avatar and other layers for dis-
playing “additional items or background” that may be dis-
played separately from the avatar. ’743 patent col. 2 l. 65–
col. 3 l. 4. For example, Figure 5 of the ’743 patent shows
two embodiments of the “gamvatar” created by combining
12 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
the avatar 510 with one game item function 520. Id., fig.
5. This demonstrates how the background layers of an av-
atar may depict game item functions separate from the av-
atar itself. Id.; see id. col. 4 ll. 66–67 (explaining that
Figure 5 “shows characters having a game item function
according to an embodiment of the present invention”).
The specification explains that “[t]he gamvatar 530 shows
the avatar 510 wearing the item 520, and the gamvatar 540
shows that the item 520 is not attached to the avatar 510
but is arranged in the background layer.” Id. col. 6 ll. 38–
41. As such, the specification suggests that one or more
items may be displayed at different regional layers of the
background. See id. col. 2 l. 65–col. 3 l. 4 (explaining that
“the avatar has multiple layers to display the respective
avatar items [and] . . . each item may have a single layer or
multiple layers” and that “upper layers 1 to 15 are provided
for accessories, layers 16 to 45 are provided for the body of
the avatar and items . . . given to the body of the avatar,
and lower avatars are provided for additional items or
background”). This indicates that the ’743 patent discloses
at least one embodiment where the layers of the avatar do
not display game item functions on the avatar itself. See
id. Therefore, the layers do not have to be displayed on the
gamvatar’s image, but rather in a different graphical re-
gion of the screen.
The prosecution history confirms the PTAB’s construc-
tion of the claims. During prosecution of the ’743 patent,
an examiner rejected all then-pending claims over Rogers
either alone or in combination with other prior art, includ-
ing a webpage describing Diablo II. J.A. 6022. The Exam-
iner allowed the Challenged Claims only after the
independent claims were amended to overcome Rogers by
adding the limitation reciting a “plurality of game item
functions being combined with the respective layers is ex-
hausted in response to detection of each time of using the
each of the plurality of game item functions.” J.A. 4334;
see J.A. 4341 (explaining the exhausted limitation). As
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 13
INC.
such, the prosecution history demonstrates that the claims
do not require the layers to be displayed on the avatar be-
cause the gamvatar is used to perform the game item func-
tions alone or each of the game item functions in
combination with the respective layers based on the “ex-
hausted” limitation. See Shire Dev., LLC v. Watson
Pharm., Inc., 787 F.3d 1359, 1362–64 (Fed. Cir. 2015) (af-
firming the district court’s claim construction and explain-
ing that, although an examiner originally determined the
claims were obvious, the prosecution history supported the
district court’s construction where the claims were only al-
lowable after they were amended to overcome the exam-
iner’s rejection). Therefore, the term “layers”
“encompasses ‘graphics regions for displaying graphical ob-
jects’ and constructs for holding graphics,” and the claims
do not require that the layers be displayed on the avatar.
See Activision, 2018 WL 1358661, at *6.
GAT’s primary counterargument is unavailing. GAT
asserts “the Diablo II Manual does not disclose a gamvatar
having ‘layers for performing game item functions,’” mean-
ing the proper construction requires the “layers” displaying
graphical objects on the gamvatar. Appellant’s Br. 26–27
(capitalization modified and ellipsis omitted). However,
the PTAB correctly explained that “layers” “encompasses
graphics regions for displaying graphical objects” and “con-
structs for holding graphics” because the ’743 patent de-
scribes the display of items in various layers and regions.
Activision, 2018 WL 1358661, at *5 (emphasis omitted) (cit-
ing ’743 patent col. 6 ll. 33–43). The use of “or” in the claims
demonstrates the intent of the patentee that “displaying”
and “performing game functions” are two alternatives for
layers. See SkinMedica, 727 F.3d at 1199. Similarly, the
’743 patent discloses “layers” displaying game item func-
tions on the avatar and other layers for displaying “addi-
tional items or background” that can be displayed
separately from the avatar. ’743 patent col. 2 l. 65–col. 3 l.
4. The background layers of an avatar may depict game
14 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
item functions separately from the avatar itself as shown
by Figure 5, which depicts two embodiments of the gamva-
tar. Id. col. 6 ll. 33–43. Therefore, the Challenged Claims
demonstrate that there may be several layers, or regions,
for displaying graphics on the gamvatar and other layers
for “additional items or background,” that may be dis-
played separately from the gamvatar. See generally ’743
patent. As such, the PTAB did not err during claim con-
struction.
III. Obviousness
A. Legal Standard
A patent claim is invalid “if the differences between the
subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been
obvious at the time the invention was made to a [person
having ordinary skill in the art (‘PHOSITA’)].” 35 U.S.C.
§ 103(a) (2006). 7 Obviousness “is a question of law based
on underlying findings of fact.” See In re Gartside, 203 F.3d
1305, 1316 (Fed. Cir. 2000). Those underlying findings of
fact include (1) “the scope and content of the prior art,”
(2) “differences between the prior art and the claims at is-
sue,” (3) “the level of ordinary skill in the pertinent art,”
and (4) the presence of objective indicia of nonobviousness
such “as commercial success, long felt but unsolved needs,
failure of others,” and unexpected results. Graham v. John
7 Congress amended § 103 when it enacted the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112-29, § 3(c), 125 Stat. 284, 287 (2011). However, because
the application that led to the ’743 patent never contained
(1) a claim having an effective filing date on or after March
16, 2013, or (2) a reference under 35 U.S.C. §§ 120, 121, or
365(c) to any patent or application that ever contained such
a claim, the pre-AIA § 103 applies. See AIA, § 3(n)(1), 125
Stat. at 293.
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 15
INC.
Deere Co. of Kan. City, 383 U.S. 1, 17 (1966); see United
States v. Adams, 383 U.S. 39, 50–52 (1966). In assessing
the prior art, the PTAB also “consider[s] whether a
PHOSITA would have been motivated to combine the prior
art to achieve the claimed invention and whether there
would have been a reasonable expectation of success in do-
ing so.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (internal quotation marks, brackets, and
citation omitted).
B. Substantial Evidence Supports the PTAB’s Findings
Regarding Obviousness.
The PTAB held that the Challenged Claims would have
been obvious “over the Diablo II Manual alone and also
over the Diablo II Manual in combination with Rogers.”
Activision, 2018 WL 1358661, at *17–22, *28. The PTAB
explained that “the Diablo II Manual teaches a gamvatar
that represents the user both in a game and on a [website]
(e.g., Battle.net).” Id. at *16. Moreover, the PTAB found
that the Diablo II Manual discloses “graphics regions for
displaying graphical objects,” which is within the scope of
the claimed “layers.” Id. at *5. GAT does not dispute that
the Diablo II Manual discloses an avatar, but rather as-
serts that the Challenged Claims are nonobvious because
the use of an avatar in “Battle.net” is the use “in a specific
game.” Appellant’s Br. 24. GAT further contends that the
PTAB “erred in finding that the Diablo II Manual, alone or
in combination with Rogers, discloses a ‘gamvatar’ [having
multiple] . . . ‘layers,’” id. at 23 (capitalization modified),
because “neither Diablo II nor Rogers disclose a gamvatar,”
id. at 24 (capitalization modified), having “layers for per-
forming game item functions,” id. at 26 (capitalization
modified) (emphasis added). We disagree with GAT.
Substantial evidence supports the PTAB’s conclusion
that the Diablo II Manual discloses that the gamvatar can
be used on Battle.net, which is distinct from standalone
games, and that there are multiple layers representing
16 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
different graphical regions in the specific game. First, the
Diablo II Manual discloses that characters represent a user
in a game and on Battle.net, which is “[GAT]’s free, on[]line
gaming network.” J.A. 4374. The Challenged Claims
“provid[e] an avatar to a user accessing an avatar shop via
a network” where the avatar has “multiple layers for dis-
playing avatar functions or performing game item func-
tions by using the respective layers.” ’743 patent col. 11
l. 60–col. 12 l. 11. The Diablo II Manual explains that a
user “can play [m]ulti-player games on the Internet over
Battle.net.” J.A. 4358. When a user logs onto Battle.net,
she must create a character or choose a previously created
character to play the game. J.A. 4374–75; see J.A. 2035.
The character then represents the user on Battle.net,
which is separate from the games themselves. See
J.A. 4375 (“Once you have logged in to Battle.net and se-
lected a character, you are placed into one of Battle.net’s
Diablo II Realm Chat Channels . . . [where] character por-
traits, representing other players, appear at the bottom of
the screen.”). The Diablo II Manual also explains that
when in the Battle.net chat channels a user “can meet and
talk to other players and join or create multi-player
games.” J.A. 4375 (emphasis added). Because players can
“join or create” games from Battle.net, the PTAB properly
determined that the Diablo II Manual renders the Chal-
lenged Claims obvious because Battle.net is distinct from
the games and not in a specific game.
Second, the Diablo II Manual teaches “layers” that dis-
play graphical items and “perform the plurality of game
item functions.” The disclosed layers in the Diablo II Man-
ual display game items and perform the game item func-
tions. See J.A. 4411–15. For example, the Diablo II
Manual discloses “layers” for both displaying and using
game item functions and states that the “[i]nventory screen
contains several boxes representing the different areas of
your character that can hold equipment [and] . . . [t]he rec-
tangular grid at the bottom of the [i]nventory represents
GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD 17
INC.
your backpack.” J.A. 4365. These boxes disclose multiple
layers of the game because they disclose multiple graphics
regions for displaying graphical objects. See J.A. 4071–74
(explaining, by Activision’s expert, that “[t]he[] functional-
ities [of the avatar with multiple layers] are implemented
through the ‘Inventory screen’”). Additionally, the Diablo
II Manual also lists “javelins” and “throwing potions”
among the “weapons” list in the game. J.A. 4413. The Di-
ablo II Manual teaches using various “equipment areas” on
a character such as the body “where [a user] equip[s] body
armor to better protect [her] character” and a left arm
“where [a user] normally equip[s] a shield.” J.A. 4365. Ac-
cording to Activision’s expert “the ‘slots’ or ‘boxes’ [of the
inventory screen] would necessarily teach a [PHOSITA] an
exemplary method of achieving said avatar [by] . . . creat-
ing ‘slots’ or ‘boxes’ and layering onto those areas game
item functions like weapons and armor items using the re-
spective layers.” J.A. 4081. Thus, the Diablo II Manual
describes multiple layers used within the game. Similarly,
the Diablo II Manual provides that there are “numerous
weapons available to those who wish to keep their limbs
intact, some better than others for dealing with threats.”
J.A. 4411. The Diablo II Manual describes one way of “at-
tack[ing]” as when a user “position[s] the cursor over the
monster [she] wish[es] to attack . . . [t]he monster glows
slightly [so the user] . . . can always tell which monster
[she] ha[s] targeted for [her] attack.” J.A. 4356 (emphases
added); see ’743 patent col. 6 ll. 18–21 (identifying “attack-
ing” as an example of a “game item function of the gamva-
tar”). Therefore, the weapons disclosed in the Diablo II
Manual are used to “perform the plurality of game item
functions” and the layers of multiple graphical regions in
the Challenged Claims are taught by the Diablo II Manual.
GAT’s counterargument lacks merit. GAT’s assertion
that “a single reference . . . cannot support obviousness,”
Appellant’s Br. 23, is wrong as a matter of law. “[A] patent
can be obvious in light of a single prior art reference if it
18 GAME AND TECHNOLOGY CO., LTD. v. ACTIVISION BLIZZARD
INC.
would have been obvious to modify that reference to arrive
at the patented invention.” Arendi S.A.R.L. v. Apple Inc.,
832 F.3d 1355, 1361 (Fed. Cir. 2016); see Therasense, Inc.
v. Becton, Dickinson & Co., 593 F.3d 1325, 1336–37 (Fed.
Cir. 2010) (affirming an invalidity judgment where claims
were held obvious over a single reference). As such, the
PTAB did not err in concluding that the Diablo II Manual,
alone or in combination with Rogers, renders the Chal-
lenged Claims obvious.
CONCLUSION
We have considered GAT’s remaining arguments and
find them unpersuasive. Accordingly, the Final Written
Decision of the U.S. Patent and Trademark Office’s Patent
Trial and Appeal Board is
AFFIRMED