Forte Labs Inc v. Pocketful Of QuArters Inc

1. Case Identification

• Case #: PGR2022-00058
• Patent #: Patent 11,189,131
• Filed: August 30, 2022
• Petitioner(s): Forte Labs, Inc.
• Patent Owner(s): Pocketful of Quarters, Inc.
• Challenged Claims: 1-20

2. Patent Overview

• Title: System and Method for Blockchain Tokens for Gaming
• Brief Description: The ’131 patent discloses a system for providing and managing blockchain-based tokens for use across a plurality of video games. The system aims to provide transaction flexibility while maintaining sufficient control to prevent adverse real-world effects, such as money laundering, that could arise from unrestricted exchanges.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-20 are directed to non-statutory subject matter.

• Prior Art Relied Upon: None.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner conducted a two-step analysis under Alice Corp. v. CLS Bank Int'l. Under Step One, it argued the claims are directed to the abstract ideas of using tokens for payment in gaming, which it characterized as a fundamental economic practice, and managing game mechanics. The concept of restricting token exchangeability was framed as merely structuring economic transactions to comply with law.
  • Motivation to Combine (for §103 grounds): Not applicable.
  • Expectation of Success (for §103 grounds): Not applicable.
  • Key Aspects: Under Step Two, Petitioner contended the claims lack an inventive concept because they merely implement the abstract ideas using generic and conventional computer components (e.g., servers, user devices, memory, processors) and well-known blockchain technology. The claims allegedly do not improve computer functionality or provide a specific technical solution, but rather recite abstract functional descriptions. Dependent claims were argued to add only conventional elements or post-solution activity that do not transform the claims into patent-eligible subject matter.

Ground 2: Anticipation by Cotta - Claims 1-6 and 8-20 are anticipated by Cotta.

• Prior Art Relied Upon: Cotta (Application # 2020/0202668).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Cotta discloses all limitations of the challenged claims. Cotta teaches a system for transacting "virtual assets" (argued to be equivalent to the claimed "tokens") for video games using a blockchain. Petitioner mapped Cotta's "digital asset exchange" to the claimed "server gateway" and its "blockchain logic" to the claimed "blockchain interface." Cotta's system was shown to connect multiple user devices, each with associated accounts, to facilitate virtual asset transactions, thereby disclosing the claimed system architecture.
  • Key Aspects: Petitioner argued that Cotta's disclosure of techniques to detect and prevent fraudulent activity—such as preventing trading from a fraudulent account—inherently teaches the claim limitation that tokens are not exchangeable between certain user accounts.

Ground 3: Obviousness over Knight and PoQ Whitepaper - Claims 1-6, 8, 14, and 15 are obvious over Knight in view of PoQ Whitepaper.

• Prior Art Relied Upon: Knight (Application # 2019/0299105) and PoQ Whitepaper (a 2018 publication from the Patent Owner).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Knight discloses a foundational system for transacting in-game digital assets and cryptocurrency tokens on a distributed ledger, including gaming servers, user devices with user interfaces, and wallets. The PoQ Whitepaper, a publication distributed by the Patent Owner, was argued to supply the specific concept of a "Game-agnostic Digital Currency" designed for use across multiple games. Petitioner asserted the PoQ Whitepaper explicitly teaches key limitations not fully detailed in Knight, such as the rule that "Players can only transfer Quarters [tokens] to approved developers and influencers. (No transfers between players)."
  • Motivation to Combine (for §103 grounds): A Person of Ordinary Skill in the Art (POSITA) would combine these analogous art references to augment Knight's general system with the specific, problem-solving features of the token ecosystem described in the PoQ Whitepaper. Both references use similar technologies (e.g., Smart Contracts, Ethereum), making the combination straightforward and predictable.
  • Expectation of Success (for §103 grounds): The direct similarities in technology and stated goals between the references would have provided a POSITA with a reasonable expectation of success in achieving the claimed system.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Cotta with Campbell for its sidechain disclosure (Claim 7), combining Knight/PoQ Whitepaper with Campbell (Claim 7), and combining Knight/PoQ Whitepaper with Cotta (Claims 9-13). Petitioner also asserted that claims 16-20 are anticipated by Knight.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not deny institution under 35 U.S.C. §325(d) because the unpatentability arguments rely on prior art references (Cotta, Knight, PoQ Whitepaper, and Campbell) that were never presented to or considered by the Examiner during prosecution. Petitioner noted that Patent Owner was aware of Cotta as an anticipatory reference from an International Search Report but failed to cite it.
• Petitioner also argued against discretionary denial under §324(a) (and related Fintiv factors) on the basis that there was no parallel district court litigation pending at the time of filing the petition.

5. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-20 of the ’131 patent as unpatentable.