PTAB

IPR2023-00954

Sony Interactive Entertainment LLC v. Quantum Imaging LLC

Key Events

Petition

petition

Title: System and Method for Integrating Business-related Content into an Electronic Game
Brief Description: The ’028 patent describes methods for seamlessly integrating business-related content, such as advertisements, from a secondary electronic device (e.g., a web server) into a locally executed game on a primary electronic device during gameplay. The invention aims to solve the problem of advertisers having limited opportunities to capture a player's attention, which is typically focused on the game itself.

Prior Art Relied Upon: Angles (Patent 5,933,811).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Angles taught a method for delivering customized advertisements within interactive communications systems, including online games. The "consumer computer" in Angles corresponded to the claimed primary electronic device, while the "content provider computer" and "advertisement provider computer" corresponded to the secondary electronic device. Petitioner asserted that Angles disclosed automatically integrating customized ads (the "business-related content") directly into game offerings, such as on signs and billboards in an interactive car race. The claimed re-direction of a user was taught by Angles’ disclosure of hyperlinks in advertisements that transport a user to an advertiser's website.
- Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner contended that Angles alone disclosed all claimed elements, and any minor differences would have been obvious modifications to a Person of Ordinary Skill in the Art (POSITA) based on general knowledge.
- Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success as Angles provided a complete system for integrating advertisements into online games.

Prior Art Relied Upon: Robinson (Patent 7,168,051).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Robinson disclosed a network-enabled 3D computing environment, which could be configured for online games, running on a client machine (the primary device). This environment integrated business-related content, such as advertisements retrieved from a server (the secondary device), into a "Persistent Client Window" displayed during user activity. Petitioner argued this integration was automatic upon system startup. Robinson allegedly taught re-direction by disclosing that clicking on an advertisement could activate a full-screen interactive environment or link to a product-ordering website. For dependent claims, Robinson was shown to teach branded content, dynamic updates, and the creation of user profiles for targeted marketing.
- Motivation to Combine (for §103 grounds): As a single-reference ground, Petitioner argued that Robinson taught a system with all the core features of the challenged claims.
- Expectation of Success (for §103 grounds): A POSITA would have reasonably expected to implement the claimed method based on Robinson's detailed disclosure of a 3D desktop environment for e-commerce and advertising.

Prior Art Relied Upon: Angles (Patent 5,933,811), Robinson (Patent 7,168,051), and Ginter (Patent 5,949,876).
Core Argument for this Ground:
- Prior Art Mapping: This ground specifically targeted claim 6, which required that a "player profile is disseminated to providers of business-related content." While Angles and Robinson taught generating player profiles for targeted advertising, Petitioner introduced Ginter to explicitly teach the dissemination of user profile information. Ginter described systems for secure transaction management that provide a "distributed virtual distribution environment" to control and monitor the use of "disseminated information," including user profiles.
- Motivation to Combine (for §103 grounds): A POSITA would combine Ginter’s secure dissemination techniques with the advertising and user-profiling systems of Angles or Robinson. The motivation was to improve the prior art systems by allowing user profiles to be securely leveraged by multiple advertisers for more effective targeted advertising, which was a known business objective.
- Expectation of Success (for §103 grounds): Success was expected because it involved applying a known technique (secure data dissemination from Ginter) to a known system (the advertising platforms of Angles or Robinson) to achieve a predictable result.

Petitioner argued against discretionary denial under 35 U.S.C. §325(d), stating that none of the prior art references relied upon in the petition were previously presented to or considered by the USPTO during the prosecution of the ’028 patent.
Petitioner also argued against discretionary denial under Fintiv, asserting that the parallel district court case was in a very early stage, with fact discovery having just begun. Petitioner noted that the earliest possible trial date was April 2024, well after the statutory deadline for a Final Written Decision in the IPR, and that the trial date was likely to be delayed further. The limited investment by the court and parties in the parallel proceeding, coupled with Petitioner’s commitment to cease asserting the IPR grounds in district court if instituted, were presented as factors weighing heavily against denial.

Petitioner requests institution of an inter partes review and cancellation of claims 1 and 3-9 of the ’028 patent as unpatentable.