WK Patent Owner's Response

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ELECTRONIC ARTS INC.,
Petitioner,
v.
WHITE KNUCKLE GAMING, LLC,
Patent Owner,
Case No. IPR2016-00634
Patent 8,540,575
WHITE KNUCKLE GAMING, LLC’S PATENT OWNER RESPONSE

IPR2016-00634
Patent Owner Response
ii
TABLE OF CONTENTS
Page
I. INTRODUCTION.......................................................................................... 1
II. THE ‘575 PATENT DISCLOSES A SPORTS VIDEO GAME WITH IN-
GAME UPDATING OF CHARACTERS ABILITIES DURING A SPORTS
SEASON......................................................................................................... 5
III. THE RELATED ART .................................................................................... 9
A. At the time of the invention of the ‘575 patent, EA admits that video
games were not configured to update based on “new or randomly
changing elements of the real world.”.................................................. 9
B. At the time of the invention, video game updates were used to fix
“bugs” in the software........................................................................ 12
IV. THE DOCUMENTS RELIED ON BY PETITIONER DO NOT SOLVE
THE PROBLEM ADDRESSED BY THE ‘575 PATENT.......................... 14
A. The Madden References teach aligning the video game rosters with
the NFL rosters, not aligning a video game character’s attributes with
the attributes of the real-life player. ................................................... 14
B. The Swanberg reference teaches a “trading card” that uses an online
system to update the stats on the trading card.................................... 16
V. CHALLENGE 1: THE CLAIMS OF THE ‘575 PATENT ARE
PATENTABLE OVER THE “MADDEN REFERENCES”........................ 18
A. The Madden References do not teach “a series of updated video game
character performance parameters” for “the particular real life sports
athlete” ............................................................................................... 19
B. The Madden References do not teach the updated performance
parameters in the series being based on different real-life
performances of the athlete during the season. .................................. 22
C. The Madden References fail to teach the video game character more
closely simulates the real-life performance attributes of the particular

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real-life athlete.................................................................................... 24
D. The Madden References fail to teach each and every element of
dependent claims 2, 5, and 11-12....................................................... 26
E. For claim 1, the Petition provides no motivation for modifying or
combining the teachings of the Madden References apart from how
the Madden video game and Updates actually functioned................. 28
VI. CHALLENGE 2: THE CLAIMS OF THE ‘575 PATENT ARE
PATENTABLE OVER THE “MADDEN REFERENCES” AND FIFA
NEWS........................................................................................................... 29
VII. CHALLENGES 3 AND 4: SWANBERG FAILS TO TEACH ALL THE
ELEMENTS OF THE CLAIM..................................................................... 32
A. Swanberg does not teach “a series of updated video game character
performance parameters” for “the particular real-life sports athlete”
and “during a sports season.” ............................................................. 33
B. Swanberg does not teach a game medium that is itself configured to
perform each of the method steps recited in the claims ..................... 33
C. Claims 18 and 32: No motivation to combine Swanberg and Hines . 35
VIII. THE CLAIMS OF THE ‘575 PATENT ARE NONOBVIOUS IN VIEW OF
SECONDARY CONSIDERATIONS .......................................................... 36
A. Those of Ordinary Skill in the Video Game Industry Praise Features
Practicing Claimed Invention as New and Innovative....................... 38
B. The Invention as Recited in the Claims has been Copied by Large
Corporations With Ample Resources in the Video Game Industry... 41
C. Both EA Sports and Take Two have Found Commercial Success and
Addressed a Long Felt but Unsolved Need in the Sports Video Game
Industry Using the Patent Owner’s Claimed Invention ..................... 43
D. There is a Nexus Between the claims of the ‘575 patent and the
Commercial Success found by EA and Take Two............................. 46
IX. CONCLUSION ............................................................................................ 48

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CERTIFICATE OF SERVICE ........................................................................... 49

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EXHIIBT LIST (37 C.F.R. § 42.63(e))
Exhibit
Description
2201 US Patent 8,540,575
2202 Pisanich
2203 FIFA 09 article – EA announces “in-game” updates (investor.ea.com)
2204 FIFA 09 article – aktualne.cz
2205 FIFA 09 article – aktualne.cz (English translation)
2206 FIFA 09 article – Live Season Guide (fifaencyclopedia).com
2207 FIFA 09 article – PSU forum – praising in-game updates (psu.com)
2208 FIFA 09 article – Taringa
2209 FIFA 09 article – Taringa (translation)
2210 FIFA 09 article – discussing player form fluctuation (softpedia.com)
2211 FIFA 09 article – user comments on Adidas Live (Eurogramer.net)
2212 FIFA 09 article – EA release on making FIFA 09 (youtube.com)
2213 FIFA 09 article (ign.com)
2214 FIFA 09 article – Wikipedia article for “FIFA 09” (Wikipedia.org)
2215 FIFA 09 blog – producer Joe Booth (fifa.com)
2216 NBA Live 09 article (gamezone.com)
2217 NBA Live 09 article (g4tv.com)
2218 NBA Live 09 article – producer blog by Sean O’Brien (easports.com)
2219 NBA Live 09 article – EA Sports news (easports.com)
2220 NBA Live 09 forum – forum discussion (operationsports.com)
2221 NBA 2K9 article – living rosters announcement (2ksports.com)
2222 NBA 2K9 article – feature list – (operationsports.com)
2223 NBA 2K9 article – reviews – (ign.com)
2224 NBA 2K9 article – living rosters (wired.com)
2225 NBA Live 10 article – dynamic season hands on (gamespot.com)
2226 Wikipedia article – 1999 Steelers (Wikipedia.com)
2227 Wikipedia article – FIFA series (Wikipedia.com)
2229 FIFA News
2230 Wikipedia entry for “patch_(computing)”

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2231 Screen Shots PlayoffWeek1 Update
2232 Screen Shots Super Bowl Update
2233 ESPN article regarding Nick Lowery of the Rams
2234 Deposition transcript of David Crane
2235 Deposition transcript of Ryan Ferwerda
2236 Declaration of David Jones
2237 Declaration of Andrew Hansen

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I. Introduction
Petitioner Electronic Arts (“EA”) fails to prove that the challenged claims
are unpatentable. EA provides four challenges, all of which are based on
obviousness under 35 U.S.C. § 103. Challenges 1 and 2 rely primarily on
documents discussing the use of the Madden NFL 2000 video game and Madden
Updates. The Madden Updates are “roster updates” available through Petitioner’s
website for updating the rosters of the Madden NFL 2000 game.
EA’s § 103 challenge based on Madden 2000 fails to prove the claims
unpatentable because there are numerous elements of the claims not taught in the
Madden References or Madden Updates. For instance, the Madden References and
Updates (i) do not teach a video game medium configured to perform the method
steps (i.e., in-game updates), rather the user performs the updating, (ii) do not teach
a “series of updated video game character performance parameters,” (iii) do not
teach the series of updates being based on “different real-life performances” of the
sports athlete “performing during the season,” and (iv) do not teach “simulating”
“player attributes” from performances of athletes “during the season.”
These missing elements in the Madden References and Updates are
important for creating dynamic sports video game characters that capture “the new
performance characteristics” of real sports athletes and “simulat[ing] the fresh new
events of the week” ‘575 patent 2:17-27.

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The third and fourth challenges rely primarily on US Patent publication
2002/0155893 (Swanberg), which was filed prior to the ‘575 patent but published
after. Swanberg teaches a “trading card” that works much like an electronic
baseball card. The user can trade players on a card using a website. The Swanberg
reference also fails to teach each and every element of the claim. For instance, it
(i) does not teach a “video game media” configured” to perform the method steps
(i.e., fails to teach “in-game” updates) (ii) fails to teach “a series of updated video
game character performance parameters” updated “during a sports season” and (iii)
fails to teach the video game configured to receive updates from a server over the
internet.
EA’s ignores these claims elements in an attempt to denigrate the invention
to nothing more than “updating a sports video game.” EA associates the stripped
down claims with the well-known practice of updating rosters and improving the
graphics of video games using “patches.” However, the ‘575 patent is not directed
to patches for fixing rosters and graphics. The ‘575 patent is directed at changing
the video game character attributes throughout the season to mirror the behavior of
the real life player. This invention also requires the video game itself to be
configured to do the updating (i.e., in-game updates). The combination of “in-
game” and “during season” updates the player attributes crates a new an novel
video game experience.

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There is overwhelming evidence that in-game updates to player attributes to
mirror real life players during the season was not known prior to the filing of the
‘575 patent and was not commercially developed until 2008 with the release of
FIFA 09 and NBA Live 09 video games, produced by Petitioner and NBA 2k9
produced by Petitioner’s competitor, Take Two Interactive. See Exhs. 2203-25.
The evidence is clear and voluminous. By way of example, Exhibit 2203 is a
copy of EA’s announcement to its investors of the “new” features in EA’s FIFA 09
video game. EA’s announcement is titled, “EA Unveils New Adidas Live Season
for FIFA Soccer 09 That Will Dynamically Update Player Attributes In-Game to
Mirror Real World Performance.” The article says,
The Adidas Live Season service is based on how real players
performed in the most recent real-world matches. Gameplay will
change dynamically as the performance of players and soccer teams in
the real world experience the highs and lows during the campaigns.”
“This is an ambitious and completely unique feature that has never
been attempted before for football video games,” said Andrew
Wilson, Vice President & Executive Producer for the franchise.”
(WK-2203-1) (emphasis added)
This quote is just the tip of the iceberg of evidence showing that in-game
updates of player attributes during the season is a unique and important feature that
was not commercialized until 2008 to great acclaim and success by EA and its
competitor Take Two.

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The comparison between Petitioner’s evidence and Patent owner’s evidence
could not be more stark. Petitioner’s evidence is a cryptic, ambiguous phrase
(“adjusted rosters and player abilities”) found in a “ReadMe” file buried in a “zip”
file of a download page archived on the wayback machine. EA then hires an expert
to interpret the phrase to mean something that allegedly covers the claim (but only
when stripped down). In contrast, Petitioner’s evidence is clear and unambiguous,
describing the features in details and with words that make it clear how the feature
functions. And the evidence is available from numerous sources including EA
itself. EA’s speculative allegations should not trump the unambiguous evidence
showing that in-game updating of player attributes during a season was non-
obvious at the time the ‘575 patent was filed.
Finally, even if the Board were to find the challenged claims obvious in
view of the Madden References or Swanberg, board should find the claims
patentable based on secondary considerations. The features of the claimed
invention embodied in FIFA 09 and NBA Live 09 received industry praise,
customer praise, an industry award for “best innovation,” and was copied by large
corporations. These praises and accomplishments of the NBA Live 09 and FIFA 09
video games are compelling evidence that the claims of the ‘575 patent are non-
obvious.

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II. THE ‘575 PATENT DISCLOSES A SPORTS VIDEO GAME WITH
IN-GAME UPDATING OF CHARACTERS ABILITIES DURING A
SPORTS SEASON
The ’575 patent deals with an improvement to the realism of video game
characters in sports video games—namely giving the video game characters player
attributes that change during a season.
As described in the ’575 patent, conventional video games have static video
game player performance parameters that are based on an average of the previous
season’ real-life athletic performances. The ‘575 patent states:
Video game producers typically produce professional sports video
games once per year. The performance parameters and visual aspects
are typically specified based on the most recent year. For example,
Barry Bonds of the San Francisco Giants baseball team had a
homerun average of (73 homeruns)/(476 at bats):15.3 percent during
the 2001 season. This average can be used to set a video game
parameter so that the video game character Barry Bonds has a similar
tendency to hit homeruns. (WK 2201, 1:23–26).
In contrast, the ‘575 patent describes the present invention as providing
video game character performance parameters that are actively updated during an
athletic sport season using real-life performance data. As stated in the ‘575 patent,
“[i]nstead of playing with last season’s teams, video gamers get a simulation of
fresh new events of the week, day, or hour.” col. 2, lines 24–26.

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The ‘575 patent recognizes that performance characteristics of real life
sports players “change throughout the year”; “athletes’ performances change over
the course of a season, or even a day.” Id. 1:42–44 and 63–64. The ‘575 patent
teaches a sports video game that “matches the professional sport performance
characteristics.” The ‘575 patent includes a system and method for “changing the
parameters of the video game.” Id. 2:11–12. “As events occur in the real-world that
may influence a game attribute, a parameter is recorded on a server. A video game
player may connect to the server and download the parameter. The parameter is
stored by the video game and changes an attribute of the video game.” Id. 12–16.
Originally drafting and filing the patent application pro se, the inventor of
the ‘575 patent, Mr. Angelopoulos (“Tom”), recognized the previous problems
with programing the sports video game characters using the previous year’s
averages—namely video game characters programed with prior season averages
lack the dynamically unpredictable nature of real life. Id. 5: 14–18. Tom lamented
in the ‘575 patent that the “dichotomy between video game and real life is
frustrating to many video game players.” Id. Moreover, in real life, teams and
players frequently perform differently than their statistical average. Indeed, athletic
performances that differ from the previous statistical averages create enormous
excitement in sports. Athletes and teams that defy the statistics are said to have
caused “an upset,” be “religiously” followed as an “underdog,” or even later

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referred to as a “miracle.” The possibility and frequency with which upsets occur
in real-life sports based on the variations athletic performance is significant and
provides a deep-rooted reason for fans to follow and watch these ongoing real-life
athletic performances, which was recognized by Tom as having particular
relevance to the ‘575 patent’s during season updates to the sports video game
characters.
In order to enable the video game parameters to be updated throughout the
season, the ‘575 patent recites software structures and hardware configurations that
allow the video game itself to do the updating (i.e., in-game updates). The patent
describes recording data on a server of a sports related “historical event.” Id. 2:64.
Examples of events include “World Cup soccer game” or an “American football
game.” Id. 2:58–60. The data represents performance attributes of an athlete, such
as “quarterback’s completion percentage, a basketball player’s freethrow[sic]
percentage, or any other outcome of a realistic event.” Id. 2:66 – 3:3. The data is
recorded on a network server, the video game machine downloads the data from
the server, and the data is used in the video game to “more accurately simulate[]
the real world.” Id. “This makes the video game more enjoyable to the user, adding
increased realism. As real life professional players’ performances change, users
can still play with statistically accurate players.” Id., col. 3, lines 8–14.

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Figure 3 is a block diagram that shows a video game system configured to
provide dynamic video game characters. The data server 82 directly coordinates
and stores “new statistical results or parameters” for use in the video game. Id.
3:55–59. As Tom explained when he originally drafted and filed the patent
application in 2002, “[w]hen a real professional athlete changes a performance
rating, the changed performance rating can be stored on the data server 82.” Id.
“The changed statistic may be stored as the actual number that the statistic
represents…or may be stored on the data server as a parameter of a video game.”
“The parameter can then be used to effect[sic] how the video game character
interacts with the video game environment.” Id. 3:64 – 4:6.
The ‘575 patent also describes how the game medium itself is configured to
to accomplish the updating. Importantly, the “game medium” and the “parameter”
stored on the data server 82 are two different components of the system. The auto-
update process is illustrated in Figures 8 and 9, reproduced below. The video game
causes the video game machine to initialize a modem, (243) request data from the
server (245), display a menu for playing the game (255), load the game engine
(270) and play the game with the requested data (305).

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Importantly, the video game itself is originally configured to receive the
updated parameters by forming a direct connection with the data server, requesting
the parameter stored on the server, receiving the performance parameter from the
server, and using that parameter to change how a video game character performs in
the video game. Appx119, col. 5, line 40 – col. 6, line 13.
III. THE RELATED ART
A. At the time of the invention of the ‘575 patent, EA admits that
video games were not configured to update based on “new or
randomly changing elements of the real world.”
A person skilled in the art (POSA) at the time of the invention did not
recognize the need to provide parameters that were updated based on changing
US. Patent Sep. 24, 2013 Sheet 8 0f 14 US 8,540,575 B2
Fig. 8
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real-life events. Rather, sports video games in the late 1990s and early 2000s were
only adding static features that simulated real life sports.
Contemporaneous with the filing date of the ‘575 patent, EA published its
own patent application in which EA states, “[c]onventional gaming architectures
are only designed to take advantage of the known conditions within which the
game will operate, and are not designed to account for new or randomly changing
elements of the real world.” WK-2202, p. 10, lines 10-12. EA’s patent application
further points out the problem with these architectures: “Conventional games
deprive the player of the excitement and variability that real world conditions
provide.” “[A] new gaming architecture is needed in which real world events,
environments, actors, and objects can be incorporated during a gaming experience,
providing a player with the true simulation of a real world experience, and also the
added excitement of taking part in actual real world events as they occur.” Id. at
12-15.
EA’s own statements demonstrate that at the time of the ‘575 invention,
video games did not update based on real world events as they occur. This fact
was confirmed again in 2007 when EA stated that FIFA 07 season “was the first
time EA SPORTS has been able to update the content of one of its sports titles in
the middle of the season.” WK-2215-1. And as mentioned above, the first time EA

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was able to have the video game be configured to perform the updating (i.e., in-
game updateding) was with FIFA 09. (see WK-2203-1).
These developments in 2007-2008 culminated in the release of NBA Live 09
and FIFA 09, which was matched by EA’s competitor Take Two Interactive.
Sports enthusiasts engaged in a discussion about whether Take Two copied EA or
vice versa. (see WK-2218 and 2221). EA won “Best Innovation of 2008” at the E3
video game conference for the dynamic updating features of NBA Live 09. WK-
2224. Customers made purchasing decisions on the feature (WK-2225, customer
posted the following comment: “I need a basketball game. I see many comments
about 2K beating EA – could someone briefly explain why it is better? Do they
have something similar like Dynamic player updates?”). And the documents
describing how the features of the game work are many. The features are
described by video gaming sites including fifaencyclopdedia.com, psu.com,
softpedia.com, eurogamer.net, ign.com, fifa.com, operationsports.com, wried.com,
gamespot.com, and Petitioner’s own websites, easports.com, ea.com, and fifa.com.
The features were so successful and important that they are prominent features of
the Wikipedia entries for the video games (see WK-2214).
Yet EA’s Petition argues that during season updates of player attributes was
already commercially available five years earlier with the Madden 2000 updates.
However, the only evidence of this new feature is the cryptic, ambiguous statement

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– “adjusted rosters and player abilities” – from a ReadMe file associated with a
roster update available in an archive on the Wayback machine. Given the
enthusiasm for realism in EA’s games and bombardment of information that
happened in 2008 when FIFA 09 and NBA Live 09 adopted the features of the
‘575 patent, it seems highly improbable that Madden 2000 had these features.
There is no explanation for how a feature so important to FIFA 09 and NBA Live
09 could go unnoticed by the developers and players of the Madden 2000. Instead
the board is asked to rely on expert testimony by David Crane who testifies that
one of skill in the art would recognize that the Madden Updates teach these
features. EA-1004. EA’s own admissions and the overwhelming abundance of
publically available documents from 2008 suggest EA and its expert are wrong
about the development of during season updates of performance attributes.
B. At the time of the invention, video game updates were used to fix
“bugs” in the software.
At the time of the invention, sports video games were notorious for having
errors and inconsistencies in the features that were supposed to mimic real life. For
instance, FIFA 96 had incorrect rosters for the Brazilian teams and left out the
Major League Soccer teams for the American league. See WK-2227-4. The error
in the Brazilian leagues was fixed in FIFA 99, but the Major League Soccer
deficiency was not fixed until FIFA 2000. Id. Game publishers would release
these games fully aware of their problems and then promise to provide “patches” to

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fix them. For example, the Cricket World Cup video game, discussed by Petitioner,
had a bug with regard to “left hand players.” CWC FAQ teaches “They[EA] were
aware of the ‘bug’ before its release…”. EA-1026, p. 6, section 4.1.
These “bugs” bothered video game players. For example, CWC FAQ says,
“The weather/pitch conditions do not change *during* play, and this may be
corrected with a patch, along with all the other annoying bugs.” (emphasis added)
Id. at p. 7, ll. 1-2. The FIFA News article mentions “The playing field has, after so
many prayers, finally been enlarged.” WK-2229-12. Players expected these errors
to be corrected through “patches.”
In this context the Madden NFL Updates, cited by Petitioner, were released.
The Madden NFL Updates were “patches” that updated the video game “roster”.
Indeed, the file name for the ea.com ftp server calls the updates a “patch.” (see EA-
1028 ¶ 10 (e.g., ftp.ea.com/pub/easports/patches/madden2000/PlayoffWeek1.zip)
(emphasis added). And the readme file associated with the patch has a “summary”
which says, “This update brings the Madden NFL(TM) 2000 Rosters into
alignment with the actual NFL team rosters.” (EA-1016 p. 2).
A “patch” is not a feature of the video game itself. A patch is software
designed to improve or fix something in a software program. (see WK-2230
available at https://en.wikipedia.org/wiki/Patch_(computing)). In order to use a

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patch, the user had to manually download the patch file (i.e., the .dat file in EA-
1016) and then manually modify the video game file using the patch file.
IV. THE DOCUMENTS RELIED ON BY PETITIONER DO NOT SOLVE
THE PROBLEM ADDRESSED BY THE ‘575 PATENT
A. The Madden References teach aligning the video game rosters
with the NFL rosters, not aligning a video game character’s
attributes with the attributes of the real-life player.
As discussed above, the present invention is concerned with creating video
game characters that simulate the changing attributes of a real life sports character
during a sports season. In contrast, the Madden References are concerned with
fixing “rosters” in a sports video game. The explicit purpose of the Madden
Updates is to “bring[]the Madden NFL(TM) 2000 Rosters into alignment with the
actual NFL team rosters.” (EA-1016 p. 2).
The plain and ordinary meaning of a “roster” is “a list giving each person’s
name and duties” WORLD BOOK DICTIONARY 1813 (1979). In the context of a
sports video game, a “roster” is the list of players on a particular sports team and
the player’s position.
For instance, as described in the Madden Update, “Kordell Stewart” was on
the roster for the real-life “Pittsburg Steelers” and his position was “wide receiver”
or “wide out” (which allegedly was previously quarterback).
Exhibit 2231-1 is a screen shot of the Madden 2000 video game showing
video game data for “Kordell Stuart” from the Playoff Week1 .dat file.

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The screen shot shows Kordell Stuart on the Steelers team in the WR or wide
receiver position (i.e., “wide out”). He is not at QB position. see WK-2231-2.
The Madden Update also establishes the fact that the roster updates are not
always the same as real life. For instance, the PlayoffWeek1 .txt file for the
Madden Update say “Kordell was not left at the QB position because of position
inflexibility.” EA-1016, p. 2. In other words, despite the fact that the real Kordell
Stuart played both quarterback and wide receiver in real life, the inflexibility of the
video game did not allow for the Kordell video game character to be slotted in both
positions. Thus, the PlayoffWeek1 update has Kordell removed from the QB
position even though in real life Kordell Stuart was rostered in both positions.1
Other roster changes in the Madden Updates appear to reflect real life. For
instance, in real life, the 2000 NFL Super Bowl champion (Rams) signed a new
1
The “final team roster” for the 1999 Steelers Football team lists Kordell
Stewart as a “quarterback” and indicates he is also a wide receiver. WK-2226
(available at https://en.wikipedia.org/wiki/1999_Pittsburgh_Steelers_season).

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kicker, Nick Lowery, between week 1 of the playoffs and the Super Bowl (see
WK-2233). Lowery was signed due to injury and poor performance by Wilkins. Id.
The Madden Update, Super Bowl Roster, has Nick Lowery at the kicker position
but the PlayoffWeek1 does not. (compare list of kickers in WK-2231-4 with WK-
2232-5). These examples illustrate that the Madden Updates dealt with solving a
problem with rosters, not creating dynamic video game.
B. The Swanberg reference teaches a “trading card” that uses an
online system to update the stats on the trading card.
The Swanberg reference is directed to “a computerized trading card system.”
Swanberg describes the hobby of collecting and trading sports cards as having
been performed for decades. EA-1011 ¶ [0004]. Swanberg recognized that the
prior art had previously created computer games for electronically collecting and
trading sports cards. Id. ¶ [0005]. Swanberg’s contribution was to create a trading
card game that used “a smart card that is read by a local computer.” Id. ¶[0006].
The trading cards in Swanberg were capable of being updated with statistics.
The statistics were related “to the actual performance of the player represented by
the trading card” so that “holders of the card may evaluate the performance of a
player and use the information for making trading decisions.” Id. ¶[0040]. In other
words, the purpose of the statistics on the card was informational.
Swanberg’s smart trading card displays an actual picture of the sports player
and “various statistics” about the sports player on front and back sides of the card

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“in the format of conventional trading card.” Id. ¶[0030]. The front and back of a
card are illustrated in Figures 1A and 1B, reproduced below:
Swanberg describes several different games that can be played using the the
cards. Swanberg describes in detail a “fantasy baseball game,” a “Wizards and
Spell game,” and a “Battle Software” game. see Id. ¶¶ [0055]-[0082].
Swanberg then describes another embodiment, shown in “Fig. 16,” which
describes a “team card”. Id. ¶[0083]. In the team card embodiment, a website is
provided for the user to trade players on the card. Id. ¶[0088]. The player can then
decide to play an “arcade-style game” or a “fantasy baseball game.” Id. ¶¶ [0095]
and [0096], respectively. As mentioned, the arcade and fantasy games in this
embodiment are played using a website see Id. ¶[0084].
Importantly, for purposes of the arcade-style game, the “abilities of the
players on the card” reflect the “current statistics of the corresponding live player
combined with the skill of the user playing the game.” Thus, the “abilities” on the
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IPR2016-00634
18
card are not just the abilities of the players reflected in real life, but are a
combination of real and not-real abilities.
If the user chooses to play the arcade style video game, statistics are loaded
on the card (¶0095) and presumably combined with the skill of the user (¶[0086])
to reflect the “abilities of the players on the card”.
Swanberg does not describe the arcade-style video game software other than
to say that the players are the same as the ones on the team card and they perform
according to the statistics. Importantly, the video game characters do not perform
according to the “abilities” on the card, which are a combination of the “statistics”
and the user “skill”; rather, the players perform according to the statistics.
Updating the statistics for the video game based on user skill is optional.
Based on the disclosure in Swanberg, the problem being solved in Swanberg
is updating the smart card, including what the smart card has stored on it, and how
the user visualizes the smart card information to make decisions for playing games.
Swanberg is not concerned with updating a simulated sports video game and
in fact does not describe any features of the sports video game other than to note
that in one embodiment the statistics downloaded to the card are the same statistics
used for the performance of the player in the video game.
V. CHALLENGE 1: THE CLAIMS OF THE ‘575 PATENT ARE
PATENTABLE OVER THE “MADDEN REFERENCES”

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The Petition challenges claims 1-3, 5-6, 8, 11-12, 14-17, 22-25, and 27-31
based on a combination of the Madden 2000 Manual, Madden 2000 Card, Madden
2000 Updates (the Madden 2000 FIFA References). This challenge fails to make a
prima facie showing of obviousness because the Madden References (1) do not
teach “a series of updated video game character performance parameters” based on
a performances of “a particular real-life athlete,” (2) do not teach “each of the
updated video game character performance parameters in the series is based at
least in part on one or more different real-life performances of the particular real-
life sports athlete in one or more sporting events performed during the single
sports season,” and (3) do not teach “each update changes the manner in which the
particular individual video game character performs in the sports video game such
that the particular individual video game character more closely simulates real-life
performance attributes.” ‘575 patent 8:20-47.
In addition, Petition’s Challenge 1 does not render obvious dependent claims
2, 5, and 11-12. The Challenge fails to establish that the additional elements in
these claims is taught in the Madden References.
A. The Madden References do not teach “a series of updated video
game character performance parameters” for “the particular real
life sports athlete”

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Claim 1 requires, “receiving a series of updated video game character
performance parameters” based on performances of “the particular real-life sports
athlete.”
The Madden References individually or in combination, do not teach a
“series of updated video game character performance parameters” based on
performances of “a particular real-life sports athlete.” EA alleges that the player
ratings (e.g., “Catching Ability, Ball Carrying Ability, Throwing Accuracy,
Kicking Accuracy, etc”) are “performance parameters” and identifies individual
players in the Madden game. Pet., p. 25. However, EA provides no evidence that
the Madden Updates disclose updating these ratings in a series for a particular
athlete.
EA incorrectly concludes that because the Madden roster updates are
allegedly a “series,” then the “adjusted player abilities” within those updates are
also a series. EA’s logic is flawed. There is no reason why a change in a particular
player’s ratings in one week requires a subsequent change in another week. And
EA does not even make an attempt to say where the Madden Updates provide a
series of updated parameters for a particular player.
And EA’s evidence does not support a “series of updated parameters” for a
“particular real-life athlete”. The Madden Updates only identifies one player,
Kordell Stewart. EA-1016-2. According to the Madden Updates, Stewart’s abilities

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changed when he was removed from the QB position in the video game. Id. But
one update is not a “series”. EA provides no evidence that Stewart’s abilities were
updated more than once and as mentioned above they did not change between
Playoff Week1 and the Super Bowl. cf. WK-2231-3 with WK-2232-2. And this
despite there being changes in the Super Bowl update (e.g., addition of Lowey).
This example demonstrates that a series of roster updates does not produce a series
of updated character performance parameters for a particular player.
During EA’s redirect of its own declarant Ryan Ferwerda, Mr. Ferwerda
identified a video game character, Dorsett, whose ratings are different in the
PlayoffWeek1 update compared to the Super Bowl update. WK-2235, p. 43, lines
20-21; see also, WK-2231-4 cf. WK-2232-3. However, similar to the Stewart
update, there is no evidence that Dorsett’s ratings changed more than one time in
the Madden Updates and therefore is not a “series” as required by the claims.
The combination of the updates to Stewart and Dorsett also do not read on
the claims because the updates were for different players. The claims require “a
series of updated video game character performance parameters” based on
performances of “the particular real-life athlete.” A series of updates for different
players is not a series based on performances of a particular athlete. This feature is
an important part of the problem being solved in ‘575 patent, which is to create a
video game character that changes throughout a season to perform like its

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corresponding real life character. The dynamic behavior of the video game
character is lost if the series of updates is single updates for different players.
Mr. Crane’s testimony does not cure the deficiencies of the evidence. Mr.
Crane did not analyze the Madden Updates to see what was in them even though
he could have.2
Because Crane does not know what parameters changed his
testimony that the updates includes a series for a particular athlete is speculative
and not reliable.
Claim 23 is an independent claim directed to a method performed by a
server computer. Similar to claim 1, claim 23 requires “during a single sports
season storing a plurality of updated video game character performance
parameters …based at least in part on a performance of a particular real-life
athlete…” Thus, claim 23 requires more than one updated performance parameter
for a “particular real-life athlete. The Madden references fail to teach this element
based on the same reasoning described with regard to claim 1.
B. The Madden References do not teach the updated performance
parameters in the series being based on different real-life
performances of the athlete during the season.
2
Mr. Crane testified, “I often analyze data, and the tools that I use to look at
data are the same tools that I would use to analyze the data. And if I would have
been asked to spend the time to determine which specific parameters were being
updated I might have been able to determine that from the data file, but it wasn’t
appropriate in this venue.” Crane Deposition, p. 93-94.

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Claim 1 requires, “each of the updated video game character performance
parameters in the series is based at least in part on one or more different real-life
performances of the particular real-life sports athlete in one or more sporting
events performed during the single sports season.”
There is no evidence that the Madden Updates had player ratings or abilities
that changed based on performances of real life athletes during the single sports
season.
As discussed above, EA alleges that the “player ratings” in the Madden 2000
video game and the “player abilities” in the Madden Updates are “video game
player performance parameters.” Pet. at 26 and 28. The only evidence of a player
ability/rating being updated are the ratings for Kordell Stewart and A. Dorsett.
While the roster updates may change the ratings/abilities for Stewart and Dorsett,
there is no evidence that these rating changes were based on performance of
Stewart and Dorsett in a real-life sporting event.
The change in the player ratings for Stewart and Dorsett were caused by the
roster change, not a change in a performance attribute of Stewart or Dorsett
performing in a real-life sporting event during the season.
Stewart was moved from quarterback to wide receiver and his abilities
retained some but not all of his quarterback attributes due to “inflexibility” of the

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video game. These changes do not reflect real life because the real-life Kordell
Stewart did not lose just some of his quarterback abilities.
Similar to Stewart, the change in Dorsett ratings is tied to a change in
position. Dorsett went from being “LCB” to “FS.” There is no evidence that the
ratings were based on his performance in a game during the season. The real-life
Dorsett was moved into a new starting role due to an injured player. WK-2236.
The Super Bowl Update is dated 1/28/2000, which actually preceded the real Super
Bowl by two days, which means the performance could not have been based on his
performance in that game.
Claim 23 also requires the plurality of updated performance parameters in to
be based on different real-life performances of the athlete during the season.
Because there is no evidence showing that each of the updated performance
parameters in the series is based on “different real-life performances” of the
particular sports athlete “during the season,” Challenge 1 for claims 1 and 23 fail.
C. The Madden References fail to teach the video game character
more closely simulates the real-life performance attributes of the
particular real-life athlete
Claim 1 requires updating the video game using the series received,
“wherein each update changes the manner in which the particular individual video
game character performs in the sports video game such that the particular
individual video game character more closely simulates real-life performance

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attributes of the particular real-life athlete”. The Madden References do not teach
updated parameters that simulate the actual performance attributes of real-life
athlete.
The Madden References do not teach simulating performance attributes of a
real-life athlete. Madden Updates only teach bringing “the Madden NFL 2000
Rosters into alignment with the actual NFL team rosters. EA-1016-02.
The Petition alleges simulating performance attributes is taught because, “[a]
POSA understands, as acknowledged by the ‘575 Patent, that each of these
downloaded and installed Updates, including ‘adjusted player abilities’, changed
the manner in which particular individual characters performed in Madden NFL
2000 to more closely simulate the actual performance attributes of the
corresponding real-life athlete during NFL regular season and playoff games.” Pet.
at 32.
EA’s argument relies on inherency: if the player attributes are adjusted then
the simulation of the performance attribute is inherent. But for an element to be
inherent, it must necessarily be present. The fact that a certain result or
characteristic may occur or be present in the prior art is not sufficient to establish
the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993). However, adjusting the “abilities” does not necessarily mean that
the player abilities more closely simulate the performance attributes of the

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26
particular real-life athlete. Player abilities can be adjusted for any number of
reasons using values that may or may not more closely simulate performance
attributes of the athlete.
For instance, player abilities can be adjusted to make the game function
better or to fix an error. Or like in the case of Kordell Stewart, the abilities may
change to reflect a different position or inflexibility in the video game. And the
updated abilities may or may not have anything to do with the current changes in a
real-life player. For instance, when Dorsett’s abilities changed in the Super Bowl
update, his abilities could be an average of statistics from previous years. Indeed,
the ‘575 Patent is evidence that at the time of Madden 2000, the parameters of
sports video games were calculated from averages of the previous season. There is
nothing in the Madden References that indicates the player abilities were
calculated any other way. Consequently, there is no evidence that the updated
video game characters in Madden References would more closely simulate the
performance attributes of the particular athlete.
Claim 23 also require updated performance parameters that more closely
simulate the real-life performance parameters of the athlete. Thus, Challenge 1
fails for this additional reason.
D. The Madden References fail to teach each and every element of
dependent claims 2, 5, and 11-12.

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Claim 2 requires, “wherein receipt of the updated video game performance
parameters in the series occurs at least weekly.” There is no evidence that the
Madden Updates were received on a weekly basis. The dates associated with the
zip files from the Madden Updates are dates that the files were created or stored on
the ftp server. The dates associated with the NFL season are the dates that the
roster data was generated. There is no evidence that the files were received weekly.
EA’s declarant Ryan Ferwerda confirmed that he was not aware of who maintains
control of the zip files. (FW depo p. 19 lines 22-25.) When questioned about his
knowledge of the files he confirmed he did not have “any knowledge, other than
the file date.” He could “tell a date when the file was packaged.” (depo: p. 41 at 9-
21). It is not obvious to update the performance parameter of a particular character
weekly because roster updates for a particular player do not change weekly. The
weekly updates in the claimed invention are non-obvious because the purpose is to
simulate the changing performance attribute of the real life player during the
season, which is an un-recognized problem in the Madden references.
Claim 5 requires the “game medium being further configured to cause the
video game machine to perform the method further comprising: … connect to the
data server via the internet.” col. 9, lines 3-9. The Madden References do not
teach the video game medium (e.g., the CD in the case Madden) configured to
connect the video game machine to a server to receive the updated parameters.

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Rather the updates were provided as “patches” on an FTP server and accessed
using the EAsports.com website (available through the Wayback Machine). There
is no rationale for modifying the Madden References to configure the video game
medium to cause the video game to perform the update. At the time of the
invention a POSA did not recognize the value this feature has when combined with
updates that simulate during season attributes of players. These changes were too
frequent for players to learn and track and having a system that can pull the
updates itself is highly advantageous and non-obvious.
Claims 12 and 30 require an “updated video game character performance
parameter [to be] associated with a performance of a real-life opponent … [in a ]
sports event during the single sports season.” EA argues this element is taught in
the Madden Updates because “[a] POSA would understand that the described
Updates include updated character performance parameters based in part on
performances of real-life athletes on opposing teams….” EA’s argument is a
flawed inherency argument. In essence EA is arguing that because a performance
parameter could be associated with a performance of a real-life opponent then it
would be. “Could” is not enough to show inherency. In re Rijckaert, 9 F.3d 1531,
1534 (Fed. Cir. 1993). Thus, EA’s challenge of claims 12 and 30 fail.
E. For claim 1, the Petition provides no motivation for modifying or
combining the teachings of the Madden References apart from
how the Madden video game and Updates actually functioned

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29
The Petition relies on the actual functionality of the Madden Video game and the
intended use of the Madden Updates (i.e., .dat files) as a basis for combining the references. see
Pet. at 28. The Petition states, “because the references are written to be combined, evidence of
the reasonableness of the combination, predictably[sic] of the solution and probability of success
is firmly and undisputedly established.” Id.
Throughout the challenge of claim 1, EA relies on this argument to support its rationale
for combining the Madden References under 35 U.S.C. § 103. This rationale does not support a
prima facie case of obviousness for anything that is not an express or inherent features of the
Madden References. Because EA provides no motivation to modify the features described in
Madden References, EA is now precluded from making such arguments. Any challenges to
claim 1 and relying on modifications to the Madden References would lack a proper rationale
and would therefore fail.
VI. CHALLENGE 2: THE CLAIMS OF THE ‘575 PATENT ARE
PATENTABLE OVER THE “MADDEN REFERENCES” AND FIFA
NEWS
The Petition challenges claims 4, 7, 9-10, and 21 in view of the Madden
References (discussed in Challenge 1) in view of FIFA 2001 News. Each of these
claims depends from claim 1 and is therefore patentable for at least the same
reasons that claim 1 is patentable (as discussed above).
Claim 7 requires the game medium to be “configured to cause the video
game machine to perform the method periodically and automatically in response to
an input received from the user.” ‘575 patent 9:16-19.

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30
Neither the Madden References nor the FIFA News teaches a video game
configured to automatically update. As described in the ‘575 the auto-update
feature is a feature of the video game itself. Importantly, the video game medium
itself is configured to cause the video game machine to request the update from the
server, in addition to generating the sports video game. In other words, the same
software that produces the video game also obtains the update. In this sense the
video game has an “auto-update.” The auto-update process is illustrated in
Figures 8 and 9, reproduced below:
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31
The video game causes the video game machine to initialize a modem, (243)
request data from the server (245), display a menu for playing the game (255), load
the game engine (270) and play the game with the requested data (305).
Neither the Madden References nor the FIFA references teach a video game
configured to cause the video game machine to update the video game itself. The
FIFA News describes the is a process that facilitates installing patches. A patch is
not an automatic update because someone or something else is causing the files to
be written to the roster file. writing over the video game.
EA’s claim interpretation is unreasonably broad because it fails to recognize
that the game medium is what causes the video game machine to perform the
update. The Petition states, “it would have been obvious to a POSA to use the
architecture taught in FIFA 2001 News to automatically download and install these
updates.” However, the architecture in FIFA 2001 News is not a video game
medium. EA’s allegations of obviousness do not provide a rational for configuring
the game medium (e.g., Madden 2000) to perform the updating as required by
claim 7. Consequently, the challenge of claim 7 is insufficient and claim 7 is
patentable in view of Madden References and FIFA 2001 News.

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32
Claim 10 requires “an updated video game stadium parameter [] associated
with an appearance of the stadium that has changed at least once during the3
single
sports season.” None of the FIFA News features teaches updating a video game
stadium parameter in association with an appearance of the stadium that has
changed during the single sports season. The Petition fails to address the “during
the single season” aspect of claim 10 and fails to provide a rationale why one of
skill in the art would modify the combination of Madden References and FIFA
News to arrive at the claimed invention. Updating a stadium parameter in
association with an appearance of the stadium during the season is not a mere
design choice because the change reflects more accurately how the stadium looks
right then, not what people might think is the most accepted look of the stadium.
VII. CHALLENGES 3 AND 4: SWANBERG FAILS TO TEACH ALL THE
ELEMENTS OF THE CLAIM
Petitioner has failed to demonstrate that the cited prior art discloses certain elements of
the claims. See e.g., St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1380-81 (Fed.
Cir. 2013) (rejecting obviousness argument where prior art failed to disclose claimed feature).
The Challenge in view of Swanberg (alone or in combination with Hines) fails because
Swanberg (1) does not teach a “a series of updated video game character performance
parameters” based on a performances of “a particular real-life athlete,” and (2) does not teach a
game medium that is itself configured to perform each of the method steps recited in the claims.
3
Claim 10 issued with the phrase “a single sports season”. Claim 10 depends from claim 1, which also
uses “a single sports season.” Claim 10 has been clarified though a certificate of correction to read “the single sports
season.” Therefore, the claim is not indefinite. Claim 4 has also been clarified through a certificate of correction.

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A. Swanberg does not teach “a series of updated video game
character performance parameters” for “the particular real-life
sports athlete” and “during a sports season.”
As discussed above with reference to Challenge 1, the ‘575 claims require “a series” of
updated video game character performance parameters for “the particular real-life sports athlete.”
Swanberg does not teach a series of updated performance parameters for a particular character
during a sports season. Swanberg has one paragraph that mentions updating “Roger Clements”.
see 1011, ¶[0095]. However, one update is not a series. Moreover, there is no mention that the
series of updates happen within the season.
The Petition points to paragraph [0048] for its teaching of “frequent” updating.
However, the “frequent” updating relates to the numbers stored on the database, not the
frequency with which the video game is being updated. If EA argues in the alternative that the
video game machine is the server, then the Challenge fails because there is no updating between
server and video game machine using the Internet.
Finally, Swanberg does not teach the “series of updated performance parameters” being
based on “different real life performances” of the athlete.
The Petition fails to identify where these elements are taught in Swanberg and provides
no motivation for modifying the references to include these features. Consequently, Challenges 2
and 3 fail and the Board should find the claims of the ‘575 patent valid.
B. Swanberg does not teach a game medium that is itself configured
to perform each of the method steps recited in the claims
Claim 1 is directed to “[a] game medium”. And the game medium “is configured to
cause a video game machine to perform a method comprising….” Thus, the game medium itself

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must be configured to cause the video game machine to perform the method, not just allow
someone or something else to do it. That is, the game medium itself must be configured to:
1. [cause the video game machine to] “load[] video game data stored by the game medium
into a random access memory of the video game machine…
2. [cause the video game machine to] “receive[] a series of updated video game character
performance parameters from a data server via a network including the Internet…”
3. [cause the video game machine to] “update[] the sports video game with each of the
updated video game character performance parameters received…”
[cause the video game machine to] “enable[] a user to control the particular individual
video game character in the sports video game using a video game controller connected to the
video game machine.”
The petition fails to show where Swanberg teaches this limitation. The part of Swanberg
that mentions updating player statistics is with reference to the “team card” embodiment
described with reference to Figure 16. EA-1011, ¶¶ [0083]-[0097]. The video game software for
this embodiment is running on server (see ¶ [0084]). However, Swanberg does not describe the
arcade style video game software at all. The software is just referred to when saying that the
game is played with the statistics. In constructing the challenge to the claims, EA says that the
video game machine is the local PC. Patent Owner disputes this fact. The embodiment in
¶¶[0083]-[0097] make no mention of an arcade style video game running on the local PC (and
neither do the other paragraphs of Swanberg). Indeed, when Swanberg uses a server for
selecting a game, the server is used for producing the game. (cf. ¶[0054] with ¶[0052]). Thus, if
there is a computer generating an arcade style game using a statistic, the computer is on the
server. And since the video game software is running on the server and the statistics are stored

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35
on the server there would be no need to transfer the statistics to the video game machine over the
Internet.
Under these facts, the video game machine does not receive the updated performance
parameters over the internet. Therefore, the game medium is not configured to cause the video
game machine to receive the updated performance parameters.
This situation illustrates the problem with Swanberg as a reference for challenging the
claims. Swanberg is not concerned with updating the parameters of a sports video game.
Swanberg is concerned with updating a trading card and getting users to trade players on the
card. Consequently, Swanberg does not explain how the video game software itself is
configured. EA attempts to fill in the gaps using expert testimony. However, Swanberg has not
describe the invention in a way that needs expert testimony. Rather, the expert testimony is being
used to construct a system that could read on the claims. This approach (i.e., establishing what
“could” be the prior art) is impermissible hindsight. Swanberg simply does not describe the
configuration of the arcade style software because that is not his invention. His invention is a
trading card.
The Petition fails to show that a single game medium of Swanberg causes the video game
machine to perform all the elements of claim 1. As such, the Petition has failed to demonstrate
the sufficiency of Challenges 3 and 4.
C. Claims 18 and 32: No motivation to combine Swanberg and Hines
Moreover, claims 18 and 32 provide a further example of the lack of motivation to
combine Swanberg and Hines for the claimed series of updates to the particular player of a real-
life team. Claim 18 requires a “game medium … wherein the video game is a basketball sports
video game including video game basketball courts, video game basketball teams, and video

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36
game basketball characters associated with real-life basketball courts, real-life basketball teams,
and real-life basketball athletes respectively.” Similarly, claim 32 requires that “the basketball
sports video game includes video game basketball courts, video game basketball teams, and
video game characters associated with real-life basketball courts, real-life basketball teams, and
real-life basketball athletes respectively….”
While Hines might suggest a system for compiling statistics from real-life basketball
teams, the basketball teams of Swanberg are “created” from a collection of various real-life
basketball players from various different basketball teams.
For example, paragraph [0098] defines a “common theme between the baseball and robot
games is that each game requires an entity (robot or team) that has several components (clawed
feet, laser rifle, or individual players). Each card contains at least one of these constituent parts,
and the parts are combined in the computer to create the entity [i.e. a team] during game play.
Other entity/component combinations such as party/character and machine/part are possible, and
further variations would be obvious to one of ordinary skill in the art.” Thus, the baseball and
robot games of Swanberg are irrelevant to the athletic exchange information system of Hines
with particular regards to claim 18 and 32 as Hines and Swanberg are directed to entirely
different technological problems and solutions.
VIII. THE CLAIMS OF THE ‘575 PATENT ARE NONOBVIOUS IN VIEW
OF SECONDARY CONSIDERATIONS
Even though the claimed invention is patentable for the reasons set forth in
sections V-VII above, the claimed invention is also nonobvious based on
secondary considerations. Evidence of “secondary considerations” can include

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37
"commercial success, long felt but unsolved needs, [and] failure of others."
Graham, 383 U.S. at 17.” See also MPEP 2145.
It is well established that “evidence of secondary considerations must be
considered if present.” Trimed, Incorporated v. Stryker Corp. Decision 2009-
1423 (Fed. Cir. June 9, 2010) (emphasis added). While secondary considerations
often come later (or secondary) in time, that does not mean they are “secondary” in
importance. Truswall Sys. Corp. v. Hydro-Air Engineering, Inc., 813 F.2d 1207,
1212 (Fed. Cir. 1987). With regard to secondary considerations, the Federal
Circuit has held they “may often be the most probative and cogent evidence in the
record.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983).
The claimed invention is non-obvious in view of secondary considerations
related to EA’s NBA Live 09, FIFA 09, and Take Two’s NBA2K9 basketball
video games. EA’s video game used technology called “Dynamic DNA” and “Live
Seasons”. Take Two called its similar technology “Living Rosters.” These
technologies and their video games incorporated the claimed feature of a in-game
updating of player attributes during the season to reflect real life player
performance during a sports season. 4
4
See Litton Systems, Inc. v. Honeywell, Inc., 87 F.3d 1559 (Fed. Cir. 1996) (skilled scientists’ tributes and
infringer’s praise was evidence of non-obviousness); see also Allen Archery, Inc. v. Browning Manufacturing Co.,
819 F.2d 1087 (Fed Cir. 1987) (The un-obviousness of the patented invention of a compound bow was supported by
the copying of and praise for the advantages of that bow by the infringer).

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The evidence shows (a) people in the industry praised the technology as new
and innovative, (b) large corporations with ample resources in the video game
industry copied the technology, and (c) the claimed invention found commercial
success and long felt but unsolved needs in the sports video game commercial
market.
A. Those of Ordinary Skill in the Video Game Industry Praise
Features Practicing Claimed Invention as New and Innovative
In July of 2008, more than 5 years after the filing date of the ‘575 patent,
Petitioner EA announced its Dynamic DNA feature for NBA Live 09 at the video
game industry’s predominant video game convention, the Electronic Entertainment
Expo (or “E3”). As described in the NBA Live 09 Review, Exhibit 2216,
“Dynamic DNA is the biggest new feature offered in NBA Live 09. Using the
NBA Live 365 persistent online element, this great new feature allows players to
have access to constantly updating stats for all of the players and teams in the
game that reflect their performance in the real-world and applies it to the
game.” (Emphasis added).
In fact, as shown in Exhibit 2217, Dynamic DNA won the “Best of E3: Best
Innovation” awarded by X-Play’s Best of E3 2008. (Emphasis added). In fact,
NBA Live’s Producer, Sean O’Brien, refers to Dynamic DNA as a
“groundbreaking idea” as shown in his blog Exhibit 2218 (emphasis added).
And, EA Sports announced on July 11, 2008 that “NBA Live 09 has rewritten the

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rules and fundamentally shifted the way you look at sports simulation games.
Dynamic DNA emulates – with absolute precision – an NBA player in every sense
of the word.” Ex. 2219 (emphasis added). Thus, those of ordinary skill in the video
game industry have recognized the ‘575’s claimed feature, as implemented in
Dynamic DNA, as new and innovative in 2008.
In addition, those who play sports video games clearly think the ‘575
patent’s invention as implemented by Dynamic DNA is new and innovative. For
Example, Exhibit 2220 is a blog posting available at www.operationsports.com in
which video game players posted over 100 entries commenting on the Dynamic
DNA feature of NBA Live 09. These blog posts were made in the weeks after
Dynamic DNA was announced, but before 2K’s Living Rosters was announced.
As seen in the blog, the overall consensus was very positive. Several of the blog
entries specifically point out the innovative nature of the Dynamic DNA feature;
examples of which include the following:
Post #1
“These are HUGE new features IMO. They put a big amount
of pressure on 2K. Real-time updates on rosters, injuries, line-
ups, statistics, AI, etc.”
Post # 124
“I haven’t played Live since 2001, 2k ever since. But this stuff
sounds down right revolutionary.”
Post #144

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“This feature is revolutionary because it ties the game to the
NBA. Not just code its ACTUAL tendencies. I personally
never thought of that idea, great ADD EA… other basketball
games gotta think outside the box….” (emphasis in original)
Post #146 (in response to Post #144)
“Isn’t it amazing what getting your butt kicked by another
company for the past 5 years can do? Look at how the
basketball games are progressing and pushing each other to
grab the consumer, the hockey titles as well; and compare them
to the snails pace that baseball and football have moved.”
Subsequently, Take Two announced their competing feature to Dynamic
DNA, which they call “Living Rosters,” and which implements Patent Owner’s
claimed invention as well.
Thus, those of ordinary skill in the art, including those who make sports
video games and those who use sports video games both praise the claimed
invention as implemented in Dynamic DNA as new and innovative. It logically
follows, that Petitioner’s position that such features set forth by the claimed
invention are old, obvious, or not innovative is in direct contrast to the position of
those of ordinary skill in the video game industry who identify such features as
new, ground breaking, fundamentally different, revolutionary, and innovative.
Therefore, Patent Owner cites to the tribute and praise of those of ordinary skill in
the sports video game industry as secondary evidence of patentability of the

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41
claimed invention. Patent owner also cites to the general consensus by those of
ordinary skill in the industry that the features are new and innovative as additional
evidence of patentability of the challenged claims.
Contemporaneously with NBA Live 09 and NBA 2K9, EA also released
FIFA 09 with its “Living Seasons” feature that “dynamically update[s] player
attributes in-game to mirror real-world performance.” WK-2203-01. The game is
B. The Invention as Recited in the Claims has been Copied by Large
Corporations With Ample Resources in the Video Game Industry
Both EA Sports and Take Two have implemented the claimed invention in
their video games. And, the industry, as well as EA Sports, has speculated as to
which company came up with the idea first. However, it is clear that the Patent
Owner filed this patent application more than five years before EA Sports
announced the Dynamic DNA feature and over five years before Take Two
announced the Living Roster feature.
It has been held that copying by a large corporation with ample resources of
a claimed invention rather than using a prior art device is strong evidence of
nonobviousness.5
However, “it is not necessary for the patentee to prove that the
customer knew of and desired every attribute set out in the patent document.”6
5
Panduit Corp v. Dennison Mfg. Co. 774 F.2d 1082 (Fed Cir. 1985) (emphasis added), remanded, 475 U.S.
809 (1986), on remand, 810 F.2d 1561 (Fed. Cir. 1987), cert denied, 481 U.S. 1052 (1987); see also Windsurfing
International, Inc. v. AMF Inc., 782 F.2d 995 (Fed. Cir. 1986, cert denied, 477 U.S. 905 (1986).
6
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675 (Fed. Cir. 1998).

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42
As discussed above, in 2007 EA Sports first updated sports video game
character performance parameters of video game characters during a single sports
season in connection with their FIFA 08 video game. Subsequently, EA Sports
came out with the feature Dynamic DNA in July of 2008. And, only two months
thereafter Take Two announced an analogous feature called Living Roster for
their NBA 2K9 sports video game. Similar to EA’s references that Dynamic DNA
is new and innovative, Take Two also referred to Living Roster as “new” and
“innovative” as shown by their announcement in Exhibit 2221.
Both EA Sports and Take Two have argued over who came up with the
novel feature first. See Ex. 2218, 2221. And, even “[t]he [video gaming]
community is starting to wonder if the NBA 2K9 development team copied the
idea from the NBA Live folks or if it was the other way around.” Ex. 2222
(emphasis added). Whether EA Sports copied Take Two or vice-versa, it is clear
that those skilled in the art believe the feature was copied by one of them. This
belief is evident from the importance of the feature to the 2008 video game
releases, the similarities in the features offered, and the closeness in time in which
they were announced (i.e., less than two months).
Users of the video have also confirmed that, in their opinions, the features of
the currently claimed invention were copied in 2008. For example, on an ign.com
blog, a fan of NBA Live 09 that goes by the name “BBGamer24” accused Take

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Two of copying EA’s Dynamic DNA feature, which implements the claimed
invention. BBGAmer24 disparages Take Two’s game for copying. BBGamer’s
post states the following:
“I don’t see how so many people love this game. How is it better than
Live 09? 2K basically copied EA for a number of reasons. First of all,
the Living Rosters feature sounds creepy and while its cool its just a
rip-off of NBA Live 09`s Dynamic DNA and NBA 365 features. I
mean 2K Sports shouldn’t be copying EA, that’s just being stupid.
And Live 09 has TMobile as a sponsor but so does 2K. The game has
awful graphics except for the pre-game show and the fans. The dunk
contest is fun but unrealistic. Really, if it weren’t for the game modes
this game would be terrible, although it isnt a bad game, just copy-
catish.”
Ex. 2223 (emphasis added).
The public’s alleged copying by either EA Sports or Take Two of updating
sports video game character performance parameters during a single sports season
such that the video game characters more closely simulate real life performance of
the real life athletes is further evidence of nonobviousness of the claimed invention
directed to this feature as described the ‘575 patent almost six years prior. Thus,
claims 29-36, 39-42, 46-48, 51-55, 57-61 and 68-71 are believed to be allowable
based on these secondary considerations as well.
C. Both EA Sports and Take Two have Found Commercial Success
and Addressed a Long Felt but Unsolved Need in the Sports Video
Game Industry Using the Patent Owner’s Claimed Invention

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Both the Dynamic DNA feature by EA Sports and the Living Roster feature
by Take Two have found sweeping success and addressed a long felt need in the
industry for sports video games to more closely simulate the real-life attributes of
athletes during a sports season. And, both Dynamic DNA and Living Roster have
been seen as an overwhelming success by those who design the sports video
games, those who designate a video game feature as the Best Innovation of 2008,
as well as their customers who play the sports video games.
As previously discussed, when introduced at the most prominent gathering
for video game technology, the Electronic Entertainment Expo (or E3), the
Dynamic DNA feature was recognized as the best innovation of 2008. And,
within two months, the feature Living Roster was introduced such that Take Two’s
2K9 basketball game could compete with the same feature of Dynamic DNA. The
customer response to both features was extremely positive, and since, many
comparative articles have been published indicating that the commercial success of
the competing video games depends on the relative quality and implementation of
the Living Roster and Dynamic DNA features. See Ex. 2224. Moreover, the
importance of the feature can be further realized through the posts that explain the
relevant consumer market’s interest in the Dynamic DNA and Living Roster
features as shown in Exhibit 2225. Examples of such posts include:

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- “It seems like a great feature from last year and I am glad that they have
improved on it” – Ronin893
- “dude that dynamic season sounds awesome!!! J” - NuKkU
- “I have always been a fan of NBA Live games, but stoped playing in
2004 or something like that. Now I’ve got PS3 and I need a basketball
game. I see many comments about 2K beating EA – could someone
briefly explain why is it better ? Do they have something similar like
Dynamic player updates? Any interesting modes? Better multiplayer?
What is it about?” –Kubilius
- “This Dynamic DNA feature is quite interesting and makes me
reconsider my pre-order of NBA 2K10 only for the fact that 2K9
lacked any real comprehensive feature such as this. I’ll end up going
with 2k10 in the end probably but if Live can really hit this one the
spot then they may just be ‘in the game’” – pengselim
(Emphasis added).
In fact, it appears that the Dynamic DNA and Living Roster features are one
of the most important features which form the basis of consumer purchasing
decisions between the two competing video games. Other important features
discussed in these blogs include the detail of the imagery depicting the players and
the realistic movement of the characters in the video games. Therefore, the
commercial success of both EA Sports and Take Two’s use of the claimed
invention is further secondary evidence of nonobviousness of the claimed
invention.

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46
D. There is a Nexus Between the claims of the ‘575 patent and the
Commercial Success found by EA and Take Two
A nexus between the claims of the ‘575 patent and the secondary
considerations based on NBA Live 09 and NBA 2K9 is presumed because these
products are covered by the ‘575 patent. (PPC Broadband, 815 F.3d 734, 747
(Fed. Cir. 2016) (“Because the evidence shows that the SignalTight connectors are
"the invention disclosed and claimed in the patent," we presume that any
commercial success of these products is due to the patented invention. This is true
even when the product has additional, unclaimed features. See, e.g., Ecolochem,
Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1378 (Fed.Cir. 2000) (applying
presumption even through commercial embodiment had unclaimed mobility
feature)).
EA’s NBA Live 09 incorporates the features of the claimed invention as
evidenced by the video game being an accused product in the related district court
litigation and based on the statements made by EA and others in publically
available documents such as Exhibits 2016-20, and 2225. For example,
Gamezone.com describes the Dynamic DNA feature of NBA Live 09 as a “great
new feature” that “allows player to have access to constantly updating stats for all
of the players and teams in the game that reflect their performance in the real-
world and applied it to the game.” WK-2216-01. “If one player is on a roll for a
game or two, the game will update his stats, and adversely if he plays poorly, the

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47
game will reflect that.” These and other evident from the exhibits and evidence
discussed above illustrate that NBA Live 09 incorporates the features of the ‘575
patent.
Exhibits 2203 and 2214 and describe the features of FIFA 09 as including
the same features as the claimed invention in ‘575 patent.
Live Season will redefine the soccer videogame experience by
dynamically updating player form in-game on a weekly basis so that
player attributes mirror real-world performances. FIFA Soccer 09 will
now feel and play differently throughout the entire 2008-2009 season
matching the weekly rhythm of soccer. The new service will be
available … on Playstation 3. The game will feel and play differently
each week. With addidas Live Seasons if Ronaldinho has a great
match on the weekend you’ll feel the difference when you pick up the
controller as his in-gam attributes increase. A global network of
scouts will monitor every player in the Adidas Live Season leagues
througout the season to supply accurate and in-depth player and team
data each week. Player attributes will be impacted and player
performance will change dynamically. The Adidas Live Season
service is downloaded into FIFA Soccer 09 each week and will run
from the launch of the game to the end of the 2008-2009 season.
WK-2203-1
NBA 2K9 incorporates the features of the claimed invention as
evidenced by exhibits WK-2220-24 and the fact that NBA 2K is accused of
being a copy (or vice versa) of NBA Live 09.

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Because these features of the foregoing video games were new, innovative,
praised by industry and customers, copied, and commercially successful,
notwithstanding the lack of a prima facie case of obviousness in the challenged
claims, there are multiple and substantial grounds for finding the claims non-
obvious based on secondary considerations.
IX. CONCLUSION
For at least the above reasons, the Board should deny Petitioner’s ground of
unpatentability. EA has failed to show numerous claimed features to be in the prior
art, and provided no rationale for modifying the prior art to achieve those features.
Therefore, the combination of the references does not render claims 1-35 of the
‘575 patent obvious.
Respectfully submitted,
DATE: December 16, 2016
By /Andrew S. Hansen/
Andrew S. Hansen (Reg. No. 56,370)
In-House Counsel
Patent Owner
White Knuckle Gaming, LLC

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CERTIFICATE OF SERVICE
Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
that on December 16, 2016, a complete and entire copy of this Patent Owner White
Knuckle Gaming, LLC’s Patent Owner’s Response was provided via email, to the
Petitioner by serving the correspondence address of record as follows:
Marc Kaufman
Gerard Donovan,
John Bovich
Reed Smith LLP
Email: mkaufman@reedsmith.com
gdonovan@reedsmith.com
jbovich@reedsmith.com
/s/ Andrew S. Hansen
Andrew S. Hansen,
Reg. No. 56,370
In-House Counsel
White Knuckle Gaming, LLC
Telephone (801) 671-3621

WK Patent Owner's Response

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