PTAB

IPR2020-00922

Sony Corp v. Bot M8 LLC

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1. Case Identification

2. Patent Overview

  • Title: Gaming Machine, Gaming Information Authenticating and Loading Device, and Loading Device
  • Brief Description: The ’540 patent describes a gaming system that authenticates the game program itself, rather than just the storage medium it is on. The system uses an authentication program stored on a first circuit board along with the game program, and a processor on a separate motherboard executes the authentication program to verify the game program's integrity before execution.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 4 are obvious over Johnson in view of Martinek.

  • Prior Art Relied Upon: Johnson (Patent 6,565,443) and Martinek (Application # 2003/0130032).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Johnson taught the core elements of a gaming machine that verifies the contents of a mass storage device before allowing access. This included a "verification module" (authentication program) and a "gaming application module" (game program) on a storage device, a motherboard with a CPU, and system RAM. However, Johnson did not explicitly place the storage device on a separate "board." Martinek was alleged to supply this missing element by teaching a system for secure storage and verification using a separate Read Only Memory (ROM) board that connects to a motherboard and stores game code. Petitioner contended that implementing Johnson's mass storage device as a separate board, as taught by Martinek, would have been obvious.
    • Motivation to Combine: A POSITA would combine Johnson and Martinek to improve the security and expandability of the gaming system. Johnson noted the need for large storage, and Martinek provided an easily expandable board with multiple ROM elements. Using a separate, removable board for game and authentication software was a known and simple design choice that offered flexibility and enhanced security, which were common goals in the art.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing known components (circuit boards, memory, CPUs) using well-established methods (electrical connections between a motherboard and a daughterboard) to achieve the predictable result of a secure, functioning gaming machine.

Ground 2: Claims 2-3 and 5-6 are obvious over Johnson in view of Martinek and Diamant.

  • Prior Art Relied Upon: Johnson (Patent 6,565,443), Martinek (Application # 2003/0130032), and Diamant (Application # 2006/0101310).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the Johnson/Martinek combination from Ground 1 to address dependent claims requiring a "preliminary authentication program" and a second CPU on the board to authenticate the primary authentication program. Petitioner argued that Diamant taught a two-stage verification process where a first program verifies the integrity of a second verification program before the second program is used to verify the main software. Martinek was argued to provide the hardware basis for this by disclosing a separate board that can include its own "processing intelligence" (i.e., another CPU) separate from the motherboard's CPU.
    • Motivation to Combine: A POSITA would be motivated to add the teachings of Diamant and Martinek to the Johnson system to enhance security. By using a preliminary authentication process as taught by Diamant, the system could ensure that the primary authentication program itself had not been compromised before it was loaded into system RAM and executed by the main CPU. This would act as a gate, protecting the motherboard and main system from malicious code, a benefit expressly articulated in Martinek.
    • Expectation of Success: This was presented as a simple substitution of one known authentication routine for another on Martinek's board, yielding the predictable result of a more secure, multi-layered authentication system.

Ground 3: Claims 1 and 4 are obvious over Morrow in view of Morrow '771 and Diamant.

  • Prior Art Relied Upon: Morrow (Application # 2004/0054952), Morrow ’771 (Application # 2003/0064771), and Diamant (Application # 2006/0101310).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this as an alternative challenge to the independent claims. Morrow was alleged to teach a gaming machine with a removable, persistent storage medium (e.g., a flash memory board) containing both a game program and verification software. Morrow '771, by the same inventor, was cited for its disclosure of a similar system explicitly using a "Pentium motherboard" with socketed flash memory. This combination established the claimed board/motherboard architecture. Diamant was again relied upon for teaching that a verification program can and should be loaded into RAM only after its integrity is confirmed, preventing unverified programs from running.
    • Motivation to Combine: A POSITA would combine Morrow and Morrow '771 to implement the verification system on a standard, well-understood motherboard architecture. The motivation to incorporate Diamant's teachings was to increase system security by preventing the loading of unverified game programs into RAM, thereby protecting the main memory from potential corruption or malicious access, a known problem in the field.
    • Expectation of Success: Combining these highly similar systems would have been straightforward. Implementing Diamant’s verification-before-loading step was a known security enhancement that would predictably lead to a more robust system.

4. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of the ’540 patent as unpatentable.