Bot M8 LLC v. Sony Corporation Of America

Background

Bot M8 LLC asserted U.S. Patent Nos. 7,338,363 and 7,497,777 against Sony Corporation of America, Sony Corporation, and Sony Interactive Entertainment, LLC. The order addressed only claim 1 of the ’363 patent. That claim described a gaming machine connected to a server that receives and aggregates results from two gaming machines, determines a new “specification value” from the combined result, and replaces the prior value with the new one.

The patent described changing game conditions, such as jackpot odds or other rewards, based on the players’ combined results. Bot M8 asserted the patent against Sony’s PlayStation 4 and three video games, but sought summary judgment on infringement only as to the two Uncharted games. Sony argued that the claim was invalid under 35 U.S.C. § 101 because it covered an abstract idea without an inventive concept. Sony also argued that the games and MLB did not infringe.

Legal standard

Summary judgment is proper when no genuine dispute of material fact exists and the moving party is entitled to judgment under the law. The court first addressed subject-matter eligibility because a party cannot infringe an invalid patent claim.

Under the two-step framework from Alice Corp. v. CLS Bank International, the court first asks whether the claim is directed to an abstract idea. If it is, the court asks whether the claim’s elements, considered individually and together, contain an inventive concept that turns the abstract idea into a patent-eligible application.

The court’s analysis

At the first step, the court concluded that claim 1 recited the abstract idea of increasing or decreasing the risk-to-reward ratio, or the difficulty, of a multiplayer game based on previous combined results. More broadly, the claim instructed a game machine to update game conditions based on past results to maintain player engagement.

The court found that the claim described a desired result rather than a specific way to achieve it. The claim did not specify what game conditions should change, which variables should control the change, or what thresholds should trigger the change. Although the specification gave an example involving increased or decreased jackpot odds based on combined winnings, it remained vague about the thresholds and the method for changing the game conditions.

The court rejected Bot M8’s argument that connecting gaming machines to a server, transmitting results, aggregating the results, and recalculating game parameters constituted a specific technological improvement. It found no identified technological problem with connecting the machines or processing the data, and noted that the patent described conventional ways to connect the machines. The court characterized the problem addressed by the patent as maintaining human player enjoyment, rather than solving a technological problem.

At the second Alice step, the court found no inventive concept. The claim’s devices merely performed generic computer functions such as setting, transmitting, determining, gathering, manipulating, and replacing data. Placing those functions in the gaming-machine field did not make them unconventional. The court also found that Bot M8’s experts offered conclusory assertions rather than evidence identifying the relevant prior practice and the patent’s specific difference from it. The court did not rely on Sony’s challenged expert testimony.

Disposition

The court held that claim 1 of the ’363 patent recited an abstract idea without an inventive concept and therefore was invalid under Section 101. The court granted Sony’s motion for summary judgment. Because infringement of an invalid claim is impossible, the court denied as moot the remaining motions, including the parties’ remaining procedural, infringement, and noninfringement arguments. The order did not reach the merits of Sony’s argument that Bot M8’s infringement theory exceeded its required infringement contentions. The order also referred to remaining asserted claims and future discovery and dispositive motions.