Wargaming Group Limited v. Game and Technology Co., LTD.
Patent Trial and Appeal Board, Case IPR2017-01082

September 7, 2018


On September 7, 2018, the Patent Trial and Appeal Board (PTAB) issued a final written decision holding U.S. Patent No. 7,682,243 (the ‘243 Patent) unpatentable as obvious. The ‘243 Patent had been asserted by Game and Technology (GAT) against Activision Blizzard, Inc. and Wargaming Group Ltd. in a patent infringement lawsuit. For more information on the original complaint click here. Activision Blizzard and Wargaming responded to GAT’s allegations by each filing separate petitions for Inter Partes Review of the ‘243 Patent. Activision Blizzard was joined to Wargaming’s petition, and its own petitions were dismissed. The ‘243 Patent relates to a “pilot” or player character controlling a “unit,” like an animal mount or vehicle. According to the patent, the invention allowed for the unit to level up according to the pilot’s level. The ‘243 Patent is specifically related to online multiplayer games, especially MMORPGs. Claim 1 reads:

1. An online game providing method for providing a pilot and a unit associated with the pilot at an online game, the method comprising the steps of:

controlling an online game such that a player can manipulate a pilot and a unit associated with said pilot, said pilot being a game character operated by a player, said pilot representing the player, said unit being a virtual object controlled by the player;

maintaining a unit information database, the unit information database recording unit information on said unit, in which the unit information includes ability of said unit and sync point information;

maintaining a pilot information database, the pilot information database recording pilot information on said pilot, in which the pilot information includes a unit identifier indicating said unit associated with said pilot, ability of said pilot and the ability of said unit associated with said pilot;

receiving a request for update on first pilot ability information of a first pilot;

searching for unit identifier information associated with the first pilot by referring to the pilot information database;

searching for sync point information associated with the searched unit identifier information by referring to the unit information database; and

updating and recording the first pilot ability information and unit ability information associated therewith in accordance with the searched sync point information such that said ability of unit is changed proportionally to changes in ability of the pilot by referring to said sync point,

wherein said sync point information is a ratio of which changes in said ability of pilot are applied to said ability of unit, and said steps of searching for unit identifier information and of searching for sync point information are performed by a processor. (‘243 Patent, col. 11, line 13).

The PTAB found claims 1-7 in the ‘243 Patent to be obvious based on the combined teachings of Dungeons & Dragons Player’s Handbook Core Rulebook I v.3.5 (“D&D Rulebook”) and U.S. Patent Publication N0. 2003/0177187 (“Levine”). Levine was a patent application for a massively multiplayer online game. While the D&D Rulebook lays out the rules for a table-top board game, the PTAB held it would have been obvious to a person of ordinary skill in the art to combine the lessons from Levine with the D&D Rulebook because many video games implement rules similar to D&D, and Levine expressly references D&D. As a result, the PTAB found the ‘243 Patent to be an obvious combination of the prior art teachings of Levine and the D&D Rulebook.

Wargaming’s petition had also challenged the claims as obvious over the D&D Rulebook in view of a strategy guide for Master of Orion. The PTAB denied this part of the challenge since, in the PTAB’s view, the MOO strategy guide did not show increasing a pilot’s abilities. Nonetheless, the patent stands invalid because the PTAB found the first combination rendered the claims obvious.

One interesting aspect of this case is the unusual dispute over whether Wargaming had been served with a copy of the complaint in the corresponding lawsuit. The date of service on a party is extraordinarily important in IPRs because a Petitioner must file its IPR petition within one year of service of a patent infringement complaint. GAT produced evidence it said showed that its representative, Mr. Talbot, had served the complaint to an accounting and auditing firm used by Wargaming in England, through Mr. Joannou. Mr. Joannou denied meeting Mr. Talbot, and said he was out of the office on the date of alleged service. The PTAB instituted the IPR and allowed the parties to depose Mr. Talbot and Mr. Joannou, who both corroborated their side’s positions. The PTAB struggled to figure out who was remembering the situation more clearly, but noted that some time had passed between when Mr. Joannou was allegedly served the complaint and when he prepared his statement.

Ultimately, the PTAB punted on the he-said/he-said question and decided that GAT’s service (even if it had taken place) was deficient since the included summons was not sealed and signed. Thus, Wargaming’s petition was not time-barred. With this ruling, the ‘243 Patent is the second GAT owned patent to be invalidated by the PTAB this year. In March, the PTAB invalidated GAT’s U.S. Patent No. 8,253,743 (the ‘743 Patent), titled “Method and system for providing character having game item functions.” For more information click here. Both patents were involved in the lawsuits against Wargaming and Activision Blizzard, and those cases had been stayed pending the outcome of the IPRs. Only the ‘243 and ‘743 Patents remained in the case, but GAT has the opportunity to appeal the PTAB’s decision finding the claims unpatentable. If GAT cannot get the Federal Circuit to overturn the PTAB’s decisions, then this case is effectively over for now.