March 09, 2022
The Patent Trial and Appeal Board concluded in a recent inter partes review—DraftKings Inc. v. Interactive Games LLC— that DraftKings’ proposed combination of prior art would have been obvious when Interactive Games’ mobile game patent was filed, and was therefore not patentable. The outcome of this case demonstrates the ineffectiveness of the argument that there is no motivation to change the main reference because it works as is, as well as the importance of understanding whether a feature of the invention is really necessary and whether its deletion would render the invention unusable. for its destination.
Interactive Games is the owner of U.S. Patent No. 9,430,901 (‘901 patent), for a wireless, mobile gaming system that allows a user to participate in gaming activities remotely, and incorporates software that utilizes a wireless network wire to ensure that the user is located in an area where gambling (e.g. sports betting) is legal.
Interactive filed an action in the United States District Court for the District of Delaware against DraftKings Inc., a sports betting and competition company, for allegedly infringing the ‘901 patent. DraftKings filed a motion seeking inter partes examination of the ‘901 patent.
CASE BEFORE THE PATENT TRIAL AND APPEAL BOARD
DraftKings’ IPR request relied on two prior art references. The primary reference, Wells (US Patent Publication No. 2003/0064805 A1), relates to a wireless gaming device whose use is limited to certain areas of a casino using GPS location. Wells’ goal is to ensure compliance with gambling regulations while enabling gameplay beyond the casino. The secondary reference, Bahl (US Patent No. 6,799,047 B1), relates to locating and tracking wireless network users using a wireless local area network (WLAN), and specifically teaches that GPS has Limited functionality in indoor environments due to obstructed view of GPS satellites.
DraftKings argued that (1) a combination of the references teach elements of Interactive’s claims, (2) Wells discloses GPS location-based wagering activity, (3) Bahl discloses enhanced location determinations through the use of a wireless network, and (4) the proposed combination is a simple substitution for using a WLAN instead of GPS. DraftKings further argued that Bahl expressly taught advances in WLAN location verification systems, with specific advantages over Wells’ GPS.
Instead of challenging DraftKings’ assertion that all elements of the claims were found to be in the state of the art, Interactive focused on Wells’ existing system as “adequate” for its intended function of determining whether a device is located in a casino. He argued that there would be no motivation to alter Wells to include Bahl’s teachings, since Wells already adequately determines the location, and that since tracking lost or stolen devices with GPS was an important goal of the invention, the proposed substitution of a WLAN system would inappropriately eliminate the necessary functionality.
The Patent Trial and Appeal Board (PTAB), however, was unconvinced and concluded that “[t]he contended that Wells’ “adequacy” does not negate the obviousness of the improvements from the point of view of a person skilled in the art at the time of the invention. » The PTAB explained that the combination of art proposed by DraftKings would be obvious to improve the accuracy and reliability of Wells’ existing system to improve the stated goal of regulatory compliance, particularly in light of Bahl’s teaching. on the advantages of a WLAN location determination system over GPS. technology when used indoors.
The PTAB further rejected Interactive’s arguments that GPS tracking of stolen or lost devices was necessary. Wells’ discussion of stolen devices leaving the casino focused on the use of radio frequency (RF)-capable theft prevention devices, not GPS tracking. The PTAB considered that this characteristic may occur, and that eliminating the ability to track stolen devices beyond the range of a WLAN system would not render Wells unusable and would not deter a person of ordinary skill in the art from performing the combination proposed.
TAKE AWAY FOOD
This case highlights that the argument that there is no motivation to change the master reference because it works well (or even very well) as is, rarely, if ever, works. This case also demonstrates the importance of considering and understanding whether a proposed combination of art would render the primary reference inoperative before arguing that a modified feature is a necessary object of the reference. Interactive based its arguments on using GPS to track stolen devices, which the PTAB said was unnecessary because it may or may not be used for this purpose. Indeed, Wells suggested that if GPS could be used to track devices leaving the casino, RF devices could be a useful alternative.
When developing arguments against a proposed modification, it is essential to understand and consider the intended purpose of the invention, which in this case was to ensure compliance with gaming regulations while allowing a gambling beyond the casino.
If you have any questions or would like more information about the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman (SV) or Andrew N. Dietrick (PH), or one of the following attorneys at Morgan Lewis. issuance process team:
Joshua M. Dalton
city of the century
Andrew V. Devkar
C. Erik Hawes
Louis W. Beardell, Jr.
Brent A. Hawkins
Andrew J. Gray IV
Ahren C. Hsu-Hoffman
Michael J. Lyons
Jeffrey G. Killian, Ph.D.
Robert Smyth, Ph.D.
 Interactive Games LLCIPR2020-01107, p. 3 (PTAB 4 Jan. 2022).
 Identifier. at age 40 (citing elect. general. Co. vs. United Techs. Corp., IPR2016-00531, Paper 42, slip op., 15 (June 26, 2017); Microsoft Corp. against Koninklijke Philips NVIPR2018-00185, Paper 7, slip op., 12 (22 May 2018)).