DCT
3:19-cv-07027
Bot M8 LLC v. Sony Corp Of America
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Bot M8 LLC (Delaware)
- Defendant: [Sony Corp](https://ai-lab.exparte.com/party/sony-corp) OF AMERICA (New York); Sony Corp (Japan); Sony Interactive Entertainment LLC (California)
- Plaintiff’s Counsel: Kramer Levin Naftalis & Frankel LLP
- Case Identification: 3:19-cv-07027, S.D.N.Y., 08/12/2019
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant [Sony Corp](https://ai-lab.exparte.com/party/sony-corp) OF AMERICA is a New York corporation with its headquarters and a regular and established place of business within the District. Venue over the other Sony entities is based on their alleged regular and substantial business related to the acts of infringement within the District.
- Core Dispute: Plaintiff alleges that Defendant’s PlayStation 4 video game consoles, the PlayStation Network, and associated video games infringe six patents related to multiplayer matchmaking, software authentication, memory fault detection, and in-game character control systems.
- Technical Context: The technologies at issue concern core functionalities of modern networked video game consoles, including systems for ensuring fair online competition, securing software against tampering, and managing complex in-game character interactions.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2002-10-18 | ’363 Patent Priority Date |
| 2003-06-19 | ’777 Patent Priority Date |
| 2004-08-25 | ’988 and ’670 Patents Priority Date |
| 2005-04-19 | ’540 and ’990 Patents Priority Date |
| 2008-03-04 | ’363 Patent Issue Date |
| 2009-03-03 | ’777 Patent Issue Date |
| 2010-02-16 | ’988 Patent Issue Date |
| 2011-12-13 | ’540 Patent Issue Date |
| 2012-01-10 | ’990 Patent Issue Date |
| 2012-02-07 | ’670 Patent Issue Date |
| 2013-11-15 | PlayStation 4 Launch Date |
| 2019-08-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,338,363 - “Gaming Machine, Server, and Program”
The Invention Explained
- Problem Addressed: The patent describes a problem with conventional gaming machines (such as slot machines) where game parameters like payout rates are fixed, failing to cater to different player motivations and providing a limited sense of anticipation (’363 Patent, col. 1:40-52).
- The Patented Solution: The invention proposes a networked system where multiple gaming machines report their results to a central server. The server calculates a "total result" from the collective outcomes and uses it to determine and update "specification values" (e.g., payout probability) for the connected machines. This allows a player's performance to potentially influence the game conditions for another player, creating a dynamic and shared experience (’363 Patent, Abstract; col. 2:14-31).
- Technical Importance: This approach introduced a method for dynamically adjusting game parameters based on collective player performance in a networked environment, aiming to increase player engagement beyond traditional single-machine gameplay (’363 Patent, col. 2:41-56).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶35).
- The essential elements of Claim 1 include:
- A first gaming machine for transmitting and receiving data to and from a server.
- A "specification value setting device" that sets at least one "specification value" as a control condition.
- A "transmitting device" that sends game result data to the server.
- A "gaming machine determining device" that determines a second gaming machine for a co-player.
- A "total result data receiving device" that receives a total game result from the server based on results from the first and second machines.
- A "specification value determining device" that determines a new specification value based on the total result.
- A "specification value renewing device" that replaces the old specification value with the new one.
U.S. Patent No. 8,078,540 - “Gaming Machine, Gaming Information Authentication and Acquisition Device, and Gaming Information Acquisition Device”
The Invention Explained
- Problem Addressed: The patent addresses the security risk of gaming information being illegally manipulated or duplicated when stored on detachable media, which could compromise the integrity of the game (’540 Patent, col. 1:40-51).
- The Patented Solution: The invention discloses a "double authentication" system to enhance security. Before the primary authentication program is used to verify the actual gaming information, a separate "preliminary authentication" is first performed on the authentication program itself. This two-step process ensures that the tool of authentication has not been compromised, thereby increasing the reliability of the entire security check (’540 Patent, Abstract; col. 2:5-23).
- Technical Importance: This layered authentication method provides a more robust security architecture for platforms using removable media by protecting against attacks that target the authentication software itself, a potential vulnerability in simpler security schemes (’540 Patent, col. 2:5-23).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶59).
- The essential elements of Claim 1 include:
- A gaming machine comprising "a board" with a memory storing a game program and an authentication program.
- A "motherboard" which is different from the board and includes "another memory".
- A CPU on the motherboard configured to:
- Read the authentication program from the board's memory and store it in the motherboard's memory.
- Execute the stored authentication program to authenticate the game program on the board.
- Write the authenticated game program to the motherboard's memory.
- Execute the game based on the game program written to the motherboard's memory.
U.S. Patent No. 8,095,990 - “Gaming Machine, Gaming Information Authentication Loading Device and Gaming Information Loading Device”
- Technology Synopsis: The patent describes a system for increasing the reliability of authenticating gaming information. It proposes a "mutual authentication" process where, before a mutual authentication unit executes an authentication program to verify the actual gaming information, it first checks that the authentication program itself is a legitimate, non-manipulated program (Compl. ¶17).
- Asserted Claims: At least Claim 9 (Compl. ¶85).
- Accused Features: The accused functionality is the PlayStation 4's alleged use of a "double authentication" process to verify gaming information, wherein a preliminary authentication is performed on the authentication program before that program is used to authenticate the game itself (Compl. ¶87).
U.S. Patent No. 7,664,988 - “Gaming Apparatus Having Memory Fault Detection”
- Technology Synopsis: The patent relates to a device for inspecting faults (e.g., damage, falsification) in hardware or software. To increase reliability, a fault inspection program and a boot program are stored in a memory device that is different from the memory device where the game application program is stored, with both connected to the same motherboard. This separation ensures that if the game application memory is damaged, the fault inspection program remains unaffected (Compl. ¶19).
- Asserted Claims: At least Claim 1 (Compl. ¶110).
- Accused Features: The complaint alleges that the PlayStation 4 practices this invention by storing its boot program on a serial flash memory (the first memory device) while storing game application programs on an internal hard drive (the second memory device), where the CPU executes a fault inspection program from the first to test the second (Compl. ¶¶113, 115, 116). A diagram of the PlayStation 4 motherboard is provided to identify the locations of the "256Mb flash memory" (first memory device) and connections for the hard drive (second memory device) (Compl. p. 40).
U.S. Patent No. 8,112,670 - “Gaming Apparatus Having Memory Fault Detection”
- Technology Synopsis: The patent describes an information processing device for inspecting hardware or software faults. The fault inspection program is stored in a memory device that is different from the memory device storing the boot program. The separation is intended to increase fault detection reliability, as damage to the memory holding the game application would not affect the inspection program (Compl. ¶21).
- Asserted Claims: At least Claim 1 (Compl. ¶129).
- Accused Features: The accused features are the same as those for the ’988 Patent: the PlayStation 4's use of separate flash memory and a hard drive to store the boot/fault-inspection programs and game applications, respectively (Compl. ¶¶132, 134-135).
U.S. Patent No. 7,497,777 - “Gaming Machine and Computer-Readable Program Product”
- Technology Synopsis: The patent aims to "augment interests in a game" by managing character actions in a battle. The invention involves a gaming program that calculates an execution order for actions of multiple characters, but allows for "combination action" where the actions of different characters can be independent of that calculated order (Compl. ¶23).
- Asserted Claims: At least Claim 1 (Compl. ¶148).
- Accused Features: The accused system is the functionality in Sony video games, such as Uncharted 4, that allows a player to control allied characters ("Side Kicks") and for the software to determine the turn order of actions for making combination attacks (Compl. ¶¶151, 157). A screenshot from Uncharted 4 depicts a 'Loadouts' screen where players can select and equip allied 'Sidekicks,' which are alleged to be the 'ally character[s]' of the asserted claim (Compl. p. 53).
III. The Accused Instrumentality
Product Identification
- The accused products and services are the PlayStation 4, PlayStation 4 Slim, and PlayStation 4 Pro consoles; the Sony PlayStation Network online service; and various Sony-developed video games, with Uncharted 4 cited as a representative example (Compl. ¶30).
Functionality and Market Context
- The PlayStation 4 is a home video game console that functions as a hardware platform containing a motherboard, CPU, network processors, a hard drive, and flash memory (Compl. ¶¶31, 63-66). The complaint provides a diagram of the PlayStation 4 motherboard, labeling components such as the network processor and Ethernet controller alleged to perform data transmission (Compl. p. 12). The PlayStation Network is an online service providing multiplayer gaming, matchmaking, and a digital store for downloading games and content (Compl. ¶32). The complaint alleges Sony has sold over 100 million PlayStation 4 consoles (Compl. ¶31).
IV. Analysis of Infringement Allegations
U.S. Patent No. 7,338,363 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first gaming machine for transmitting and receiving data to and from a server... | The PlayStation 4 console, which transmits and receives data from the PlayStation Network servers for multiplayer gaming purposes. | ¶40 | col. 2:14-16 |
| a specification value setting device that sets at least one specification value as a control condition... | The PlayStation 4 operating system and software modules, which set specification values such as "Skill Rating" or "Rank Points" as a condition for matchmaking. | ¶¶43, 45 | col. 2:16-18 |
| a transmitting device that transmits data of a game result to the server... | The PlayStation 4 console's network processor, Ethernet controller, and wireless communication module, which transmit specification data to PlayStation Network servers. | ¶40 | col. 2:18-19 |
| a gaming machine determining device that determines a second gaming machine operated by a co-player... | The PlayStation Network and PlayStation 4 operating system, which provide a matchmaking service to match a player with a plurality of available game players. | ¶39 | col. 2:19-21 |
| a total result data receiving device that receives from the server data of a total game result... | The PlayStation Network interface on the console, which receives total game results (e.g., offensive score, who won/lost) from the PlayStation game server. A screenshot from the game Uncharted 4 is included to show the display of "total result data" such as "Offense Score" and "Support Score" after a match (Compl. p. 13). | ¶41 | col. 2:21-25 |
| a specification value determining device that determines a specification value based on the data of the total game result... | The PlayStation Network and PlayStation 4 operating system, which determine a new specification value (e.g., Skill Rating) based on the received total game result data. | ¶42 | col. 2:25-28 |
| a specification value renewing device that renews...the specification value set...with the specification value determined... | The PlayStation 4, which renews the specification value (e.g., Skill Rating) after each multiplayer match based on the newly calculated value. | ¶¶48, 49 | col. 2:28-31 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether online gaming metrics like "Skill Rating" and "Rank Points" (Compl. ¶¶45-46) qualify as a "specification value" that serves as a "control condition for game control" as contemplated by the patent. A defendant could argue these are merely matchmaking inputs, distinct from the patent's examples of parameters that directly alter in-game mechanics like "big-hit shift probability" or "payout" for a slot machine (’363 Patent, col. 1:33-36).
- Technical Questions: The complaint alleges that the PlayStation Network and the PlayStation 4 console collectively function as the claimed "gaming machine determining device" (Compl. ¶39). The analysis may focus on whether this distributed server-client architecture meets the limitations of a single "device" as claimed.
U.S. Patent No. 8,078,540 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a board including a memory in which a game program for executing a game and an authentication program...are stored | The PlayStation 4 motherboard contains flash memory, which is alleged to store the authentication program for the hard drive, operating system, and games. A close-up image of the PlayStation 4 motherboard highlights the specific serial flash memory chip alleged to store the authentication program (Compl. p. 22). | ¶¶64, 70 | col. 3:56-62 |
| a motherboard which is different from the board and connects to the board, the motherboard including another memory which is different from the memory... | The PlayStation 4 platform is built to execute game programs from a hard drive while utilizing temporary memory such as RAM or Flash memory on the motherboard. | ¶63 | col. 4:26-30 |
| a CPU which is provided on the motherboard, for executing the game... | The PlayStation 4 includes an 8-core x86-based CPU on its motherboard for executing game programs. | ¶¶63, 65 | col. 4:26-28 |
| (a) read out the authentication program from the memory of the board, and then, store the read out authentication program in said another memory... | The PlayStation 4 allegedly reads an authentication program from one memory of the motherboard (e.g., flash) and stores it in another memory of the motherboard (e.g., RAM). | ¶62 | col. 5:29-37 |
| (b) execute the authentication program stored in said another memory...and then, authenticate the game program... | Before the motherboard loads the authentication program to authenticate actual gaming information, a preliminary authentication is allegedly carried out to confirm that the authentication program itself is legitimate. | ¶62 | col. 5:38-48 |
| (c) write the game program...to said another memory...in a case where the game program...is authenticated... | The PlayStation 4 writes the game program into the memory of the motherboard, pulling it from the internal hard drive. | ¶69 | col. 5:49-57 |
| (d) execute the game based upon the game program written to said another memory... | The PlayStation 4 platform is built to execute game programs stored on an internal hard drive or optical disk. | ¶63 | col. 5:58-61 |
- Identified Points of Contention:
- Scope Questions: The infringement theory appears to depend on mapping the patent's two-component structure ("a board" and "a motherboard") onto the PlayStation 4's single, integrated motherboard architecture. A dispute may arise over whether different memory types (e.g., flash memory, RAM) on the same physical circuit board can satisfy the claim requirement of being on "a board" and "a motherboard which is different from the board".
- Technical Questions: The analysis may scrutinize the allegation that the PS4 reads an authentication program from one memory and stores it in "another memory of the motherboard" (Compl. ¶62). A key factual question will be whether the standard computing practice of loading a program from non-volatile storage (flash) into volatile memory (RAM) for execution meets the specific "read out...and then, store" limitation as described in the patent.
V. Key Claim Terms for Construction
Term: "specification value" (’363 Patent, Claim 1)
Context and Importance: The definition of this term is central to the infringement analysis of the ’363 patent. The case may turn on whether modern matchmaking parameters like "Skill Rating," which influence player pairings, fall within the scope of a term developed in the context of gambling machine payout mechanics.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim defines the term functionally as "a control condition for game control," which is not explicitly limited to a specific type of game (’363 Patent, col. 24:1-2). The specification also provides a list of examples ending with "or a combination thereof," which may suggest the list is not exhaustive (’363 Patent, col. 5:12-14).
- Evidence for a Narrower Interpretation: The patent's abstract, background, and all specific embodiments exclusively discuss slot machines, "medals," "payouts," and "big-hit shift probability" (’363 Patent, Abstract; col. 1:33-52). This context may support an interpretation limiting the term to parameters that directly control probabilistic outcomes or rewards within the game itself, rather than external matchmaking systems.
Term: "a board" and "a motherboard which is different from the board" (’540 Patent, Claim 1)
Context and Importance: Infringement of the ’540 patent hinges on whether the PlayStation 4's single-board architecture embodies this two-component limitation. The construction will determine if functionally distinct memory areas on one physical board can satisfy the claim language.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define "board" or "motherboard" as requiring physically separate printed circuit boards. A party could argue that the term "different" can refer to functionally distinct sections or components on a single substrate, such as a flash memory chip versus the main system RAM.
- Evidence for a Narrower Interpretation: The common technical understanding of a "motherboard" is the primary circuit board containing the CPU, and a "board" is often a separate card (e.g., a graphics card or, as described in the patent, a "gaming board") that connects to it. The claim requires the CPU to be "on the motherboard," which could imply the "board" is a component without a CPU that plugs into the main system board, a physical arrangement potentially different from the PlayStation 4's architecture (’540 Patent, col. 13:5-7).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement for all asserted patents. The allegations are based on Sony's control over its customers' use of the accused products through user license agreements, which allegedly instruct users to operate the PlayStation 4 system and its software in an infringing manner while prohibiting modification (Compl. ¶¶53-57, 79-83, 104-108, 123-127, 142-146, 162-166).
- Willful Infringement: The prayer for relief seeks a determination of willful infringement and treble damages (Compl. p. 60, ¶D). However, the body of the complaint does not plead specific facts alleging that Sony had pre-suit knowledge of the asserted patents or their alleged infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
This case will likely present several key questions for judicial determination, including:
- A core issue will be one of definitional scope: can the term "specification value", rooted in the patent's context of gambling machine payout rates, be construed to cover modern skill-based matchmaking parameters like "Skill Rating" used in online video games?
- Another central issue will be one of architectural mapping: does the PlayStation 4's integrated, single-motherboard design, which utilizes different types of memory (flash, RAM, HDD), satisfy the two-component "a board" and "a motherboard which is different from the board" architecture required by the '540 patent?
- A broader thematic question will concern technological evolution: the case will require applying patents from the early-to-mid 2000s, largely focused on casino-style gaming machines, to the significantly more complex and interconnected technology of a modern home video game console, raising questions about whether the accused products practice the specific claimed inventions or achieve similar results through fundamentally different means.