Paltalk Holdings, Inc. v. Riot Games, Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: June 16, 2020
• Docket: 19-2035
• Status: Unpublished

Opinion

Case: 19-2035 Document: 50 Page: 1 Filed: 06/16/2020

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

PALTALK HOLDINGS, INC., Appellant

v.

RIOT GAMES, INC., VALVE CORPORATION, Appellees ______________________

2019-2035, 2019-2036, 2019-2037, 2019-2038 ______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2018- 00129, IPR2018-00130, IPR2018-00131, IPR2018-00132, IPR2018-01238, IPR2018-01241, IPR2018-01242, IPR2018-01243. ______________________

Decided: June 16, 2020 ______________________

DOUGLAS R. WILSON, Armond Wilson LLP, Austin, TX, for appellant. Also represented by MICHELLE ARMOND, Newport Beach, CA.

CONSTANTINE L. TRELA, JR., Sidley Austin LLP, Chi- cago, IL, for appellee Riot Games, Inc. Also represented by NATHANIEL C. LOVE, JOHN WEATHERBY MCBRIDE; SCOTT BORDER, SAMUEL DILLON, Washington, DC. Case: 19-2035 Document: 50 Page: 2 Filed: 06/16/2020

SHARON A. ISRAEL, Shook, Hardy & Bacon, LLP, Hou- ston, TX, for appellee Valve Corporation. Also represented by KYLE E. FRIESEN; PATRICK A. LUJIN, Kansas City, MO; REYNALDO BARCELO, Barcelo, Harrison & Walker, LLP, Newport Beach, CA. ______________________

Before PROST, Chief Judge, MAYER and LOURIE, Circuit Judges. PROST, Chief Judge. PalTalk Holdings, Inc., appeals four final written deci- sions by the Patent Trial and Appeal Board (“Board”) in inter partes review proceedings related to U.S. Patent Nos. 5,822,523 and 6,226,686. The Board concluded that all challenged claims are unpatentable under 35 U.S.C. § 103 as obvious over the cited prior art. See Riot Games, Inc. v. PalTalk Holdings, Inc., No. IPR2018-00129, Paper 37, at 66 (P.T.A.B. May 14, 2019); Riot Games, Inc. v. PalTalk Holdings, Inc., No. IPR2018-00130, Paper 37, at 72 (P.T.A.B. May 14, 2019); Riot Games, Inc. v. PalTalk Holdings, Inc., No. IPR2018-00131, Paper 37, at 50 (P.T.A.B. May 14, 2019); Riot Games, Inc. v. PalTalk Hold- ings, Inc., No. IPR2018-00132, Paper 36, at 66 (P.T.A.B. May 14, 2019). 1 PalTalk timely appealed. PalTalk challenges the Board’s obviousness determination only with respect to certain dependent claims. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

1 During the course of the inter partes review pro- ceedings, the Board joined petitioner Valve Corp. and its instituted inter partes reviews (respectively Case Nos. IPR2018-01238, IPR2018-1241, IPR2018-01242, and IPR2018-01243) to each of the four proceedings. Case: 19-2035 Document: 50 Page: 3 Filed: 06/16/2020

PALTALK HOLDINGS, INC. v. RIOT GAMES, INC. 3

We review the Board’s ultimate legal conclusion of ob- viousness de novo and its underlying factual determina- tions for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). “Substantial evidence is some- thing less than the weight of the evidence but more than a mere scintilla of evidence.” In re NuVasive, Inc., 842 F.3d 1376, 1379–80 (Fed. Cir. 2016). PalTalk appeals the Board’s obviousness determina- tion with respect to two subsets of dependent claims. First, PalTalk argues that substantial evidence does not support the Board’s conclusion that the prior art renders obvious certain dependent claims requiring a group messaging “server.” Specifically, dependent claims 4–5, 34–37, and 41–42 of the ’523 patent require a host computer send a message to the group messaging server to “create,” “join,” or “leave” a message group. And dependent claims 30, 34, 35, 49, 53, 54, 66, and 70 of the ’686 patent require that a server receives a message to “connect,” “disconnect,” or “close” a message group. We disagree with PalTalk. Sub- stantial evidence, including expert testimony and express disclosures in the prior art, supports the Board’s conclusion that the claimed “server” is disclosed and that the claims are rendered obvious. Second, PalTalk argues that substantial evidence does not support the Board’s conclusion that the prior art ren- ders obvious dependent claim 11 of the ’523 patent and de- pendent claims 22, 41, and 58 of the ’686 patent. Each of these claims recites a limitation requiring that the group messaging server perform “echo suppression,” which en- sures that a host does not receive copies of the messages it is sent. PalTalk contends that substantial evidence does not support the Board’s conclusion that the prior art dis- closes the “echo suppression” limitation. We disagree with PalTalk. Substantial evidence, including express disclo- sures in the prior art, supports the Board’s conclusion that the claimed “echo suppression” is disclosed and that the claims are rendered obvious. We further disagree with Case: 19-2035 Document: 50 Page: 4 Filed: 06/16/2020

PalTalk to the extent it additionally argues the Board le- gally erred by failing to provide sufficient findings to sup- port its obviousness determination for the “echo suppression” claims. The Board’s analysis provides a re- viewable pathway to its conclusion by reasonably consider- ing the arguments raised by both parties and citing support from the prior art. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1365 (Fed. Cir. 2015) (“We may affirm an agency ruling if we may reasonably discern that it followed a proper path, even if that path is less than per- fectly clear.”). Because we conclude that the Board’s obviousness de- termination is supported by substantial evidence and be- cause we detect no legal error in the Board’s analysis, we affirm. AFFIRMED