PLR Worldwide Sales Ltd v. Flip Phone Games Inc

1. Case Identification

• Case #: IPR2024-00209
• Patent #: 9,427,662
• Filed: November 17, 2023
• Petitioner(s): PLR Worldwide Sales Ltd.
• Patent Owner(s): Flip Phone Games Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Methods and Systems for Providing In-Game Hot Spots
• Brief Description: The ’662 patent is directed to systems and methods for providing dynamically updated "hotspots" in mobile video games. These hotspots are in-game locations that, when activated by a player, trigger the display of hidden content, such as advertisements, which can be updated and downloaded from a server.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ho and Aoki - Claims 1-11 and 13-19 are obvious over Ho in view of Aoki.

• Prior Art Relied Upon: Ho (WO 2008/008038) and Aoki (Application # 2002/0120589).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ho discloses the core features of the challenged claims, including a mobile video game with server-updatable "interactive information elements" (i.e., hotspots). These elements, which can be non-promotional objects like in-game characters or items, trigger the display of hidden content such as advertisements when engaged by a player. Petitioner asserted that Aoki supplies the teaching of using specific coordinate information for placing such elements. Aoki discloses a game advertisement system where a server provides advertisement images along with "advertisement placement location data," including X and Y coordinates, to precisely position the ads within the game environment on objects like placards.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine these references to solve a problem expressly identified in Ho: the difficulty of incorporating "interactive and update-able advertisements into existing video games without a major revision of the source code." While Ho provides a high-level system for updateable elements, it lacks implementation details for their placement. A POSITA would look to known techniques, such as the coordinate-based placement system taught by Aoki, to implement Ho's concept predictably and effectively, allowing dynamic positioning of new ad elements from a server.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining Ho's server-based content update system with Aoki's well-known technique of using coordinate data for in-game object placement involves applying predictable and established game development principles.

Ground 2: Obviousness over Jiau and Aoki - Claims 1-20 are obvious over Jiau in view of Aoki.

• Prior Art Relied Upon: Jiau (WO 2000/070489) and Aoki (Application # 2002/0120589).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Jiau discloses a method for providing "hotspots" and "hotspaces" in a shared virtual world (i.e., a video game) where objects are fetched from a server. Activating a hotspot, for example by touching an object or walking through a specific area, triggers an action like displaying a pop-up advertisement. Jiau further teaches that its game objects are designed to be "changeable" and not predefined. As in Ground 1, Aoki provides the specific teaching of using server-provided coordinate information to place advertising content at precise locations within a game.
  • Motivation to Combine: The motivation to combine Jiau and Aoki is similar to that for Ground 1. Jiau's teaching of changeable, non-predefined objects fetched from a server necessitates a method for their dynamic placement. A POSITA would be motivated to use a simple and well-known technique for this purpose. Aoki provides such a technique, disclosing a server providing "placement location data" with X and Y coordinates. Applying Aoki's teachings would allow the changeable hotspots and objects in Jiau's system to be dynamically positioned at optimal locations in the game world.
  • Expectation of Success: Success would be expected as the combination merely applies a known positioning technique (Aoki) to a known type of dynamic game content system (Jiau), a straightforward integration for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Ho in view of Kim (Patent 6,928,414) and Jiau in view of Kim. In these grounds, Kim was argued to provide similar teachings to Aoki regarding the use of server-provided coordinate and time information to place interactive elements (e.g., monsters) and advertisements at specific times and locations in a game.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), providing a stipulation that if review is instituted, it will not pursue in the parallel district court litigation any ground raised or that could have reasonably been raised in the petition.
• Petitioner also argued against denial under §325(d), asserting that the prior art references relied upon (Ho, Jiau, Aoki, and Kim) were not considered during the original prosecution. Petitioner contended these references are not cumulative and are material, as they teach the very limitation—"displaying an object at the designated non-promotional location"—that the Examiner found missing from the prior art of record, which led to the patent's allowance.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’662 patent as unpatentable.