PTAB

IPR2024-00133

PLR Worldwide Sales Ltd v. Flip Phone Games Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Methods and Systems for Providing In-Game Hot Spots
  • Brief Description: The ’089 patent discloses systems and methods for dynamically updating "hot spots" within mobile video games. These hot spots are in-game locations that, when activated, trigger the display of hidden promotional content, such as advertisements, which can be periodically updated from a server.

3. Grounds for Unpatentability

Ground 1: Claims 1-3 and 6-8 are obvious over Ho, Jiau, and Choi

  • Prior Art Relied Upon: Ho (WO 2008/008038), Jiau (WO 2000/070489), and Choi (2007/0174490).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Ho taught the foundational system of a mobile video game with interactive, updatable in-game elements that trigger on-screen presentations like advertisements when engaged by a player. Jiau was argued to supply known details for implementing these elements as "hotspots" or "hotspaces" (interactive locations on objects or background areas) that are fetched from a server. Choi was asserted to add the capability of targeting this promotional content based on user-specific data, such as the mobile device's model, location, or service provider, which is communicated to the server. Together, these references were alleged to disclose all limitations of the independent claims, including storing hot spot information on a server, receiving a request from a mobile device, and uploading the determined hot spot information, which includes a non-promotional background object and hidden promotional content.
    • Motivation to Combine: A POSITA would combine these references to improve the engagement and monetization of the mobile game described in Ho. Jiau provided well-known techniques for creating dynamic and customizable virtual worlds, while Choi provided established methods for targeted advertising to increase revenue. Petitioner asserted all references are analogous art from the same field of in-game advertising.
    • Expectation of Success: The combination involved implementing conventional client-server communications and well-known software functions common in video game development, leading to a high expectation of success.

Ground 2: Claims 4-5 and 9-10 are obvious over Ho, Jiau, Choi, and Ellis

  • Prior Art Relied Upon: Ho (WO 2008/008038), Jiau (WO 2000/070489), Choi (2007/0174490), and Ellis (8,825,521).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1 by adding Ellis to address the limitations of tracking and billing in claims 4-5 and 9-10. Petitioner contended that Ellis taught a dynamic advertisement system where an ad server logs information about ad delivery, such as which ads were sent to which game client. This logged information is then expressly used for "billing the advertiser each time an ad is inserted into a video game." This directly maps to the claim limitations requiring tracking of downloaded hot spot information and using that tracked information for billing a third party.
    • Motivation to Combine: A POSITA developing the advertising system from Ground 1 would have been motivated to incorporate a method for monetization. Ho itself taught that tracking ad engagement was valuable. Ellis provided a known and detailed implementation for tracking and billing, which is a necessary commercial component of any in-game advertising system.
    • Expectation of Success: Ellis's tracking and billing functions were described as using standard server-side logging and could be straightforwardly integrated with the server system of the primary Ho-Jiau-Choi combination.

Ground 3: Claims 1-10 are obvious over Sturman and Ho

  • Prior Art Relied Upon: Sturman (WO 2006/071246) and Ho (WO 2008/008038).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sturman disclosed the primary system: an advertisement delivery scheme for mobile games where a server delivers targeted ads to specific, predefined in-game locations called "ad units" (e.g., billboards, posters). These ad units could be interactive. Ho was then combined to teach making Sturman's potentially passive ad units fully interactive "hot spots" that display hidden promotional content only upon player interaction. Ho also taught that these interactive elements are non-promotional background objects until activated, satisfying a key claim limitation. This combination was argued to render all challenged claims obvious, as Sturman also taught tracking ad delivery for billing purposes.
    • Motivation to Combine: A POSITA would have been motivated to modify Sturman's system to increase player engagement with the advertisements. Ho explicitly taught that passive, static ads (like Sturman's billboards) are a "major disadvantage" because players "gloss over" them. Ho provided the solution by teaching the use of interactive elements, creating a clear reason to apply Ho's teachings to improve the effectiveness of Sturman's ad delivery system.
    • Expectation of Success: The proposed modification was argued to be a straightforward implementation. Sturman's server already delivered the ad content and its location; combining Ho merely required a minor change in the game client's logic to hide the ad until the player interacted with the specified location.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §314(a) based on Fintiv, asserting that a provided Sotera-type stipulation, the early stage of a parallel district court case, and the strong merits of the petition all weigh against denial.
  • Petitioner also argued against denial under §325(d), contending that the prior art references relied upon in the petition (Ho, Jiau, Choi, Ellis, and Sturman) were neither cited nor considered during the original prosecution of the ’089 patent.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-10 of Patent 8,688,089 as unpatentable.