CAFC affirms Acceleration Bay cases: "Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope."

The outcome:



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 crossappeals
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.



Interesting language in the CAFC decision:



“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.



As to printed publication



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 accessibility,
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 interested
public, ‘public accessibility’ has been called the touchstone
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 considered
publicly accessible if it was “disseminated or otherwise
made available to the extent that persons interested
and ordinarily skilled in the subject matter or art, exercising
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-
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 uploaded
in comparison to other papers.” J.A. 11.
The Board then correctly noted that “public accessibility”
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 accessible.
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 matter,
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 Blizzard
“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
art would have located Lin.” J.A. 22. The Board, therefore,
concluded Lin is not a printed publication under
§ 102(a). J.A. 22.
The Board did not err in concluding Lin is not a printed
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 website’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.


The SAS case also arises:



The Board did not abuse its discretion in declining to
consider the cited paragraphs in Dr. Karger’s reply declaration.
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 centerpiece
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 particularity”
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 respond
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-
sponsive and which are improper. As the Board
noted, “it will not attempt to sort proper from improper
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.



QUERY: What happens if the Board relies on an argument not
briefed by the petitioner?