PTAB

IPR2024-00171

PLR Worldwide Sales Ltd v. Flip Phone Games Inc

Key Events

Petition

petition

Title: System and Method for Providing Updated Content for a Mobile Video Game
Brief Description: The ’958 patent describes a system and method for delivering updated content, specifically pre-selected in-game advertisements, to a mobile video game. The system involves a server that receives a request from a mobile device, checks what advertising to send, and then transmits the advertising to the device for display within the game.

Prior Art Relied Upon: Hays (Application # 2008/0102947)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Hays disclosed all limitations of the challenged claims. Hays described an advertisement delivery system for video games on multiple platforms, including mobile devices. This system included a server (advertisement server) with a storage medium (database components) for storing pre-selected advertisements. The game device (advertisement recipient client) requested advertisements, and the server utilized information in the request (e.g., client type) to check which advertisement to send from its stored inventory. The selected advertisement was then sent to the device for in-game display. Petitioner asserted this maps directly to the system and method of independent claims 1 and 8.
- Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner argued that all claimed elements were present in Hays, making the claims obvious without combination. For any elements a Person of Ordinary Skill in the Art (POSITA) might consider implicit, such as a network interface, Petitioner argued it would have been an obvious and routine component of any networked server at the time.
- Expectation of Success (for §103 grounds): As all elements were allegedly disclosed in Hays, a POSITA would have had a high expectation of success in implementing the claimed system.

Prior Art Relied Upon: Hays (Application # 2008/0102947), Chu (Patent 7,698,178)
Core Argument for this Ground:
- Prior Art Mapping: This ground specifically addressed claims 3 and 10, which required the server to send information regarding the in-game placement location of the advertisement as part of the updated content. Petitioner contended that Hays already taught a system with pre-designated in-game locations for ads ("available ad units"). Chu explicitly taught a system where a video game requested ads for "specified locations within the game" and received a "location object" representing where the ad should appear.
- Motivation to Combine (for §103 grounds): A POSITA would combine Chu’s teaching of sending explicit location data with Hays's system to gain the well-known benefits of more precise ad targeting and placement control. This would allow advertisers to better target ads to relevant in-game locations (e.g., a soft drink ad in an in-game restaurant), thereby increasing advertising revenue. Petitioner characterized this as the predictable application of a known technique (sending location data) to a known system (Hays's ad delivery platform).
- Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success because incorporating Chu’s simple method for sending location data into Hays’s existing framework for using in-game ad locations would be a straightforward modification.

Prior Art Relied Upon: Levkovitz (Application # 2007/0088801)
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued Levkovitz, like Hays, disclosed all limitations of the challenged claims. Levkovitz described a system for placing advertisements within applications, such as games, on mobile phones. The system featured an "ad server" with a "content items repository" (storage medium) that stored advertisements. A mobile device sent a "content request" over a network, and the ad server utilized the request to "selectively serve content items" based on parameters in the request, such as the handset model. The server then sent the selected advertisement to the device for presentation within the game.
- Motivation to Combine (for §103 grounds): This ground is based on a single reference. Petitioner argued that Levkovitz alone rendered the claims obvious.
- Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as all claimed elements were allegedly taught by the single Levkovitz reference.
Additional Grounds: Petitioner asserted that claims 3 and 10 are obvious over Levkovitz in view of Chu, relying on a motivation-to-combine theory parallel to that presented in Ground 2.

Petitioner argued that the Board should not exercise discretionary denial. Under 35 U.S.C. §314(a), Petitioner provided a Sotera-type stipulation, agreeing not to pursue in district court any ground raised or that could have been reasonably raised in the petition. Petitioner argued this stipulation and the early stage of the parallel litigation weighed against denial under the Fintiv factors.
Under 35 U.S.C. §325(d), Petitioner argued that denial would be improper because the primary references relied upon (Hays, Chu, and Levkovitz) were neither cited nor considered by the Examiner during the prosecution of the ’958 patent.

Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of Patent 10,617,958 as unpatentable.