PTAB

IPR2018-00755

Lego Systems Inc v. FigureFun LLC

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1. Case Identification

2. Patent Overview

  • Title: Token for Gaming Machine, Gaming Machine, and Game Providing Method
  • Brief Description: The ’377 patent discloses a token for a gaming machine that incorporates a built-in integrated circuit (IC) chip. This chip stores a "game initial data set," which can include character attributes and an optional "bonus data set" that provides a player with a predetermined benefit or advantage in the game. The token can be integrated with a three-dimensional object, such as an action figure, that represents a game character.

3. Grounds for Unpatentability

Ground 1: Obviousness over Levy and Lee - Claims 1, 3, 5, 7-8, 10, and 25 are obvious over Levy in view of Lee.

  • Prior Art Relied Upon: Levy (Patent 5,190,285) and Lee (Patent 6,460,851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Levy discloses the core limitations of the challenged claims. Levy teaches an electronic baseball game using a plurality of "intelligent" game pieces, each shaped like a player figurine and containing an integrated, re-programmable memory chip. This chip stores player statistics (e.g., batting average, home runs) that constitute the "game initial data." Petitioner asserted that statistics which give a player a greater chance of a favorable outcome, like home runs, meet the "bonus data set providing a predetermined profit" limitation. Levy, however, discloses the memory chip as being integral to the figurine. Lee was argued to cure this deficiency by disclosing a system where a transducer (token) can be attached to and detached from a preexisting figure to interact with a game.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Levy and Lee to improve Levy's device. Lee explicitly teaches the benefit of making the data-bearing component detachable so that it can be used with various preexisting action figures. Applying this known technique to Levy's game pieces to gain the same benefit would have been an obvious design choice.
    • Expectation of Success: The combination involved applying a known technique (Lee's detachable token) to a similar device (Levy's game piece with an integral chip) to achieve a predictable result, leading to a high expectation of success.

Ground 2: Obviousness over Katoh and Lee - Claims 1, 3, 5, 7-8, 10, and 25 are obvious over Katoh in view of Lee.

  • Prior Art Relied Upon: Katoh (UK Patent Appl. GB2365796) and Lee (Patent 6,460,851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Katoh discloses a game system where a toy (e.g., a model car) contains a contactless IC card that stores "toy information" and "play information" used in a video game. The IC card functions as the claimed token with a storage section. Katoh’s disclosure of a "tune-up degree" that increases a car's maximum speed was argued to be a "bonus data set providing a predetermined profit." Like Levy, Katoh discloses the IC card as being integrally "placed in the toy." Lee was again relied upon for its teaching of a game token that is attachable to and detachable from a figure.
    • Motivation to Combine: The motivation was identical to Ground 1. A POSITA would have been motivated to modify Katoh's integrated toy by incorporating Lee's detachable token concept. This would allow the IC card to be used with a variety of different toy figures, a clear advantage taught by Lee.
    • Expectation of Success: Combining Katoh and Lee represented the straightforward application of a known design for a predictable purpose, ensuring an expectation of success.

Ground 3: Obviousness over Mawle and Lee - Claims 1, 3, 5, 7-8, 10, and 25 are obvious over Mawle in view of Lee.

  • Prior Art Relied Upon: Mawle (Patent 7,081,033) and Lee (Patent 6,460,851).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Mawle discloses an interactive toy figure with an integrated circuit that stores character data, including predetermined attributes like skills, power type, and available weapons. These attributes, which vary from figure to figure and provide in-game advantages, were argued to satisfy the "bonus data" limitation. As with the other primary references, Mawle's memory is integral to the toy figure. Lee's teaching of a detachable transducer was cited to supply the missing "attachable to and detachable from a figure" limitation.
    • Motivation to Combine: The reasoning paralleled the other grounds. A POSITA would have recognized the benefit of making Mawle's integrated memory detachable, as taught by Lee, to allow for greater interchangeability between the memory token and various toy figures.
    • Expectation of Success: The combination was presented as a simple substitution of one known element (an integral chip) with another known element (a detachable chip) to obtain predictable results.

4. Key Claim Construction Positions

  • "token": Petitioner proposed this term be construed as "a game piece." The petition argued that while the specification discloses a token that can be inserted into slots like a medal, the broadest reasonable interpretation, in light of its use with game figures, is simply any game piece.
  • "game initial data": Petitioner proposed the construction "plural kinds of data identifying different characteristics of a game character." This was based on the specification's description and figures showing data sets with multiple fields for character capabilities.
  • "bonus data set providing a predetermined profit": Petitioner proposed this phrase be construed as "an item of data that is included in a token as part of plural items of game initial data and that provides a benefit to a player of the game using the token." Petitioner argued the specification provides no clear distinction between standard capability values and "bonus" values, other than that the bonus data is advantageous and provides a benefit.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 3, 5, 7-8, 10, and 25 of the ’377 patent as unpatentable.