NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

BOT M8 LLC,

Appellant

v.

SONY INTERACTIVE ENTERTAINMENT LLC,

Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2022-1569, 2022-1570

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

00726, IPR2020-01288.

______________________ 

Decided: August 30, 2023

______________________ 

Paul J. Andre, Kramer Levin Naftalis & Frankel LLP, 

Redwood Shores, CA, argued for appellant. Also represented by James R. Hannah, Lisa Kobialka, Shreya Ramchandani; Jeffrey Eng, Aaron M. Frankel, Cristina Martin

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2 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC

ez, New York, NY. 

 Abran J. Kean, Erise IP, P.A., Greenwood Village, CO, 

argued for appellee. Also represented by Eric Allan Buresh, Overland Park, KS. 

 William LaMarca, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

intervenor. Also represented by Michael S. Forman, 

Thomas W. Krause, Farheena Yasmeen Rasheed. 

 ______________________ 

Before PROST, REYNA, and CUNNINGHAM, Circuit Judges. 

CUNNINGHAM, Circuit Judge.

Bot M8 LLC appeals from final written decisions issued in two Patent Trial and Appeal Board inter partes reviews that found claims 1–5 of U.S. Patent No. 8,112,670 

and claims 1–10 of U.S. Patent No. 7,664,988 (collectively, 

the “Challenged Claims” or “Challenged Patents,” respectively) to be unpatentable. Sony Interactive Ent. LLC v. 

Bot M8, LLC, IPR2020-00726, 2021 WL 4876235, at *1 

(P.T.A.B. Oct. 4, 2021) (“Decision I”); Sony Interactive Ent.

LLC v. Bot M8, LLC, IPR2020-01288, 2022 WL 495115, at 

*1 (P.T.A.B. Feb. 15, 2022) (“Decision II”). On appeal, Bot 

M8 challenges the Board’s determinations based on its constructions of the claim terms “fault inspection program” 

and “boot program.” We disagree that the Board adopted 

erroneous constructions of those terms and affirm. 

I. BACKGROUND

The ’670 patent is a continuation of the ’988 patent and 

is entitled “Gaming Apparatus Having Memory Fault Detection.”1 The Challenged Patents disclose “an information 

1 Because the Challenged Patents are related and 

share a specification, we generally cite to the ’670 patent.

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process device in which it can be guaranteed that a fault 

inspection program properly operates even if a fault occurs 

in a memory device which is inspected through the fault 

inspection program.” ’670 patent col. 1 ll. 35–40. Among 

other things, the Challenged Patents accomplish this objective by using a “fault inspection program” stored in one 

memory device that inspects faults in a second memory device. Id. col. 1 ll. 41–65. Because the fault inspection program is not stored in the memory it inspects, it “properly 

operates” independent of whether that memory has a fault. 

Id. col. 1 ll. 60–65.

Claim 1 of the ’670 patent recites: 

1. A gaming device configured to execute a game, 

the gaming device comprising:

a mother board on which a first memory device is provided;

a second memory device configured to store 

a game application program, the second 

memory device being connected to the 

mother board; and

a control device for executing a fault inspection program for the second memory device 

to inspect whether or not a fault occurs in 

the second memory device; 

wherein the fault inspection program is 

stored in the first memory device, and the 

control device completes the execution of 

the fault inspection program before the 

game is started.

Id. col. 4 l. 61–col. 5 l. 7 (emphasis added). Dependent 

claim 2 introduces a “boot program” and recites: 

2. The gaming device according to claim 1, 

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4 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC

wherein the first memory device stores a 

boot program executed when the gaming device is started to operate, and

wherein the control device executes the 

fault inspection program after the boot program is executed. 

Id. col. 5 ll. 8–12 (emphases added). Independent claim 4 

contains similar requirements to claim 1, but it inspects 

faults in the “game application program” stored in the 

memory device, not the memory device itself, and recites: 

4. A gaming device configured to execute a game, 

the gaming device comprising:

a ROM configured to store a fault inspection program;

a memory device which is electrically rewritable a game application program 

stored therein;

a control device configured to execute the 

fault inspection program to inspect whether 

or not a fault occurs in the game application 

program stored in the memory device; 

wherein the control device executes the 

fault inspection program when the gaming 

device is started to operate and completes 

the execution of the fault inspection program before the game is started. 

Id. col. 5 l. 15–col. 6 l. 10 (emphasis added). 

Claim 1 of the ’988 patent generally combines these requirements into a single claim: 

1. A gaming device configured to execute a game, 

the gaming device comprising:

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a first memory device for storing a boot program executed when the gaming device is 

started to operate;

a mother board on which the first memory 

device is provided;

a second memory device for storing a game 

application program for the game, the second memory device being connected to the 

mother board; and

a control device for executing a fault inspection program for the gaming device to inspect whether or not a fault occurs in the 

second memory device and the game application program stored therein, 

wherein the fault inspection program is 

stored in the first memory device, and the 

control device executes the fault inspection 

program when the gaming device is started 

to operate and completes the execution of the 

fault inspection program before the game is 

started. 

’988 patent col. 4 l. 55–col. 5 l. 5 (emphases added). 

In its final written decision for the IPR on the ’670 patent, the Board concluded, among other things, that claims 

1–4 are unpatentable based on Sugiyama2 in combination 

with Gatto,3 and claim 5 is unpatentable based on 

Sugiyama in combination with Gatto and Yamaguchi.4 Decision I at *2, *17. For the IPR on the ’988 patent, the 

2 Japanese Unexamined Patent Application Publication Disclosure No. JP 2000-35888 published Feb. 2, 2000.

3 WIPO Int’l Publication No. WO 2004/004855 A1 

published Jan. 15, 2004.

4 U.S. Patent No. 5,844,776 issued Dec. 1, 1998.

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Board found, among other things, that claims 1–9 are unpatentable based on Sugiyama in combination with Gatto, 

and claim 10 is unpatentable based on Sugiyama in combination with Gatto and Cheston.5 Decision II at *24. 

Bot M8 timely appealed. We have jurisdiction under 

28 U.S.C. § 1295(a)(4)(A). 

II. DISCUSSION

“We review the Board’s legal conclusions de novo and 

its factual findings for substantial evidence.” Univ. of 

Strathclyde v. Clear-Vu Lighting LLC, 17 F.4th 155, 160 

(Fed. Cir. 2021) (citing Pers. Web Techs., LLC v. Apple, Inc., 

848 F.3d 987, 991 (Fed. Cir. 2017)). “The substantial evidence standard asks ‘whether a reasonable fact finder 

could have arrived at the agency’s decision,’ and ‘involves 

examination of the record as a whole, taking into account 

evidence that both justifies and detracts from an agency’s 

decision.’” Id. (quoting OSI Pharms., LLC v. Apotex Inc., 

939 F.3d 1375, 1381–82 (Fed. Cir. 2019)).

“Obviousness is a question of law based on underlying 

findings of fact.” Id. (quoting OSI Pharms., 939 F.3d at 

1382). Whether the prior art teaches a claim limitation and 

whether a skilled artisan would have been motivated to 

modify or combine prior art teachings are questions of fact. 

Id. (first citing Tech. Consumer Prods., Inc. v. Lighting Sci. 

Grp. Corp., 955 F.3d 16, 22 (Fed. Cir. 2020); and then citing

OSI Pharms., 939 F.3d at 1382)). “The substantial evidence standard asks ‘whether a reasonable fact finder 

could have arrived at the agency’s decision,’ and ‘involves 

examination of the record as a whole, taking into account 

evidence that both justifies and detracts from an agency’s 

decision.’” Id. (quoting OSI Pharms., 939 F.3d at 1381–82).

5 U.S. Patent Application Publication No. US 

2003/0135350 A1 published July 17, 2003.

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Bot M8 argues that the Board’s decisions based on obviousness should be vacated or reversed because they are 

premised on an erroneous construction of “fault inspection 

program.” Appellant’s Br. 3. First, Bot M8 argues that the 

claims, specification, and prosecution history support defining the “fault inspection program” to be a distinct program from the “boot program.” Id. at 23–32. Second, Bot 

M8 argues that the claims, specification, and prosecution 

history confirm that the “fault inspection program” must 

inspect for faults in both hardware and software. Id. at 45–

53. Separate from claim construction, Bot M8 argues that 

substantial evidence does not support the Board’s obviousness findings based on Sugiyama because it lacks a “fault 

inspection program” capable of inspecting faults in both 

hardware and software. Id. at 53–56. We address each 

argument in turn.6

A. Other Than a Boot Program

“When construing claim terms, we first look to, and primarily rely on, the intrinsic evidence, including the claims 

themselves, the specification, and the prosecution history 

of the patent, which is usually dispositive.” Sunovion 

Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271, 

1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp., 

415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); and then 

citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 

1582 (Fed. Cir. 1996)). “The specification is always highly 

6 Bot M8 originally challenged the Board’s institution decisions as allegedly violating the Constitution’s Appointments Clause, but it withdrew that challenge before 

oral argument. ECF No. 51. Further, because we agree 

with the Board’s unpatentability determinations for all 

challenged claims based on Sugiyama, we do not reach Bot 

M8’s arguments challenging the Board’s unpatentability 

determinations based on U.S. Patent Application Publication No. US 2004/0054952 A1. 

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8 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC

relevant to the claim construction analysis and is, in fact, 

the single best guide to the meaning of a disputed term.” 

Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 

1363 (Fed. Cir. 2016) (cleaned up); see also Phillips, 415 

F.3d at 1315.

“The words of a claim are generally given their ordinary and customary meaning as understood by a person of 

ordinary skill in the art when read in the context of the 

specification and prosecution history.” Thorner v. Sony 

Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 

2012) (citing Phillips, 415 F.3d at 1313). One exception is 

“when a patentee sets out a definition and acts as his own 

lexicographer.” Id. “‘To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed 

claim term other than its plain and ordinary meaning’ and 

must ‘clearly express an intent to redefine the term.’” HillRom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. 

Cir. 2014) (quoting Thorner, 669 F.3d at 1365). 

The patentee defined “fault inspection program,” such 

that lexicography applies here. The specification states 

that “a program for inspecting whether or not a fault such 

as damage, change or falsification occurs in the programs 

or data” is “hereinafter, abbreviated as” a “fault inspection 

program.” ’670 patent col. 1 ll. 20–27. See, e.g., Abbott 

Lab’ys v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed. 

Cir. 2007) (explaining “as used herein, means” to be definitional); Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1306 (Fed. 

Cir. 2017) (finding “refers to” and “as defined herein” to be 

definitional); Kyocera Senco Indus. Tools Inc. v. Int’l Trade 

Comm’n, 22 F.4th 1369, 1378 (Fed. Cir. 2022) (finding “referred to herein” to be definitional). The Board correctly 

adopted this definition as the construction for the “fault inspection program” claim term. Decision I at *4; Decision II

at *6. 

Citing Becton, Dickinson & Co. v. Tyco Healthcare 

Group, LP, Bot M8 argues that because the claims 

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separately list “fault inspection program” and “boot program,” the claim language supports finding that those elements are “distinct components.” Appellant’s Br. 23–24 

(citing 616 F.3d 1249, 1254 (Fed. Cir. 2010)); see also ’670 

patent col. 4 l. 61–col. 5 l. 7 (claim 1) (requiring “fault inspection program”); id. col. 5 ll. 8–12 (claim 2) (adding “boot 

program” and executing “fault inspection program after the 

boot program is executed”); ’988 patent col. 4 l. 55–col. 5 l. 

5 (claim 1) (requiring both “fault inspection program” and 

“boot program”). In Bot M8’s view, the claim language requires that the “fault inspection program” must be “a program ‘other than’ the boot program,” i.e., that these two

limitations must be performed by distinct programs rather 

than by an integrated program. Appellant’s Br. 25–26; see 

also Oral Arg. at 6:25–7:01, available at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=22-1569_0405202

3.mp3. 

We are not persuaded that the claim language supports 

modifying the patentee’s definition of “fault inspection program” to add “other than a boot program.” In Becton, we 

stated “[w]here a claim lists elements separately, the clear 

implication of the claim language is that those elements 

are distinct components of the patented invention.” 616 

F.3d at 1254 (cleaned up) (citations omitted). But part of 

our rationale in Becton was that it would render the asserted claims “nonsensical” for the claimed “spring means” 

to be connected to the “hinged arm” if they were the same 

structure. Id. at 1255. No similar “nonsensical” result 

arises here, where the claims merely list “fault inspection 

program” and “boot program” separately or require the execution of the fault inspection program after the boot program. See, e.g., ’670 patent claims 1–2; ’988 patent claim 

1; see also Oral Arg. at 7:02–7:09 (Bot M8’s counsel agreeing it is possible to run features sequentially even within 

the same program). Thus, we disagree that Becton requires 

that the “fault inspection program” and “boot program” 

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must be performed by distinct programs to be “‘distinct 

component[s]’ of the patented invention.” 616 F.3d at 1254. 

We also disagree that Bot M8’s citations to the specification support requiring a distinct “fault inspection program” and “boot program.” See Appellant’s Br. 27–29 

(citing ’670 patent col. 2 ll. 46–52, col. 3 l. 59–col. 4 l. 14,

col. 4 ll. 1–32, Fig. 1). Bot M8’s citations merely show the 

existence of a “boot program storing area 13a” and a “fault 

inspection program storing area 13b” in memory, not that 

each limitation must be contained in a distinct program.

Bot M8 further supports its arguments by citing to the

prosecution history of the ’988 patent where the applicant 

distinguished the prior art by arguing that “the boot program and the fault inspection program are distinct.” Appellant’s Br. 29–32; see also J.A. 1568–69 (’988 patent 

Prosecution History, Applicant Remarks dated Jul. 30, 

2009). We are not persuaded by Bot M8’s reliance on the 

prosecution history. Even assuming the patentee’s statements for the ’988 patent apply equally to both Challenged 

Patents, we do not agree that the applicant’s statement—

that “the boot program and the fault inspection program 

are distinct”—means the boot program and the fault inspection program are distinct programs. See J.A. 1568–69 

(’988 patent Prosecution History, Applicant Remarks dated 

Jul. 30, 2009). After the examiner’s earlier rejection, the 

applicant amended the claims to require that the “fault inspection program” is executed “for the gaming device” and 

inspects faults in the “game application program.” J.A. 

1563–66 (’988 patent Prosecution History, Amended 

Claims dated Jul. 30, 2009) (emphasis added to indicate 

added text). We agree with Sony that the applicant’s statements, in context, merely specify that the amended claim 

language is directed to the function of the “fault inspection 

program” (i.e., to be executed for the gaming device to inspect a game application program) rather than suggesting 

or changing the definition of the “fault inspection program” 

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to require that it be a distinct program from the “boot program.” Appellee’s Br. 29–30; J.A. 1563–64, 1569.

Accordingly, we agree with the Board that the proper 

construction of “fault inspection program” does not require 

that it be a distinct program from the boot program. 

B. Inspecting Hardware and Software

As discussed above, the patents define the “fault inspection program” as “a program for inspecting whether or 

not a fault such as damage, change or falsification occurs 

in the programs or data.” ’670 patent col. 1 ll. 20–27; see 

also ’988 patent at col. 1 ll. 18–26. The specification also 

teaches that the “present invention” relates to an “information process device in which a fault in hardware or software is inspected.” ’670 patent col. 1 ll. 17–18; ’988 patent 

col. 1 ll. 15–16. Thus, the specification supports construing 

“fault inspection program” to require inspecting faults in 

hardware or software. 

Bot M8 argues that because some claims require inspecting faults in hardware (e.g., ’670 patent claim 1); some 

claims require inspecting faults in software (e.g., ’670 patent claim 4); and some claims require inspecting faults in 

both hardware and software (e.g., ’988 patent claim 1), then 

it is “tautological” that “fault inspection program must be 

capable of inspecting for both types of faults.” Appellant’s 

Br. 46–48. Sony argues that the claims already specify 

what the “fault inspection program” must inspect—hardware or software—such that Bot M8’s additional requirement would be “redundant.”7 Appellee’s Br. 27–28. We 

agree with Sony.

7 Bot M8 also argues that Sony argued in parallel litigation in the Northern District of California that the “fault 

inspection program” should be construed to inspect faults 

in both hardware and software. Appellant’s Br. 52–53; see, 

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Bot M8’s “capable of” argument fundamentally misunderstands the structure of the claims, which are not drawn 

to the capability of the fault inspection program. Bot M8

readily agrees that the surrounding claim language specifies whether the “fault inspection program” inspects faults 

in hardware, software, or both. Appellant’s Br. 46–47; see 

also Decision II at *6 (“[T]he claims of the ’988 patent expressly require a ‘fault inspection program’ to inspect for 

faults in both the second memory device (hardware) and 

the game application program (software).”). Thus, Bot 

M8’s arguments would render certain claim language superfluous by repeating the requirement of the claims that 

the “fault inspection program” inspects both hardware and 

software in each claim. See ’988 patent claim 1; Intel Corp. 

v. Qualcomm Inc., 21 F.4th 801, 810 (Fed. Cir. 2021) (“It is 

highly disfavored to construe terms in a way that renders 

them void, meaningless, or superfluous.” (quoting Wasica 

Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1288 

n.10 (Fed. Cir. 2017))). 

In other instances, Bot M8’s arguments would lead to 

improperly importing requirements from some claims into 

others by requiring the “fault inspection program” to have 

the capability to inspect faults in both hardware and software, despite those claims only requiring the fault inspection program to inspect one kind of fault. See, e.g., ’670

patent claims 1 and 4; see also Phillips, 415 F.3d at 1314 

(“Other claims of the patent in question, both asserted and 

unasserted, can also be valuable sources of enlightenment 

e.g., Sony Mot. to Dismiss at 12–13, Bot M8 LLC v. Sony 

Corp. of Am., No. 3:19-CV-07027-WHA (N.D. Cal. Dec. 19, 

2019). We disagree. Any alleged inconsistencies identified 

by Bot M8 merely reflect that the claims of the ’988 patent 

require the inspection of both kinds of faults, which is consistent with Sony’s arguments here. See Appellee’s Br. 30–

32. 

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as to the meaning of a claim term.”); Unwired Planet, LLC 

v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (“If the 

patentee intended to restrict the claims-at-issue to require 

a voice input to travel over a particular type of channel, it 

could have included that same limitation.”). We decline to 

add limitations to the claims that the patentee did not. 

We agree with the Board that the construction of “fault 

inspection program” does not require it to inspect both 

hardware and software.

C. Prior Art

Having rejected both of Bot M8’s proposed constructions of “fault inspection program,” we turn to whether the 

Board’s analysis of the prior art is supported by substantial 

evidence. We conclude that it is. 

First, Bot M8 argues that the Board failed to identify 

“two distinct programs” in the Sugiyama-based combination of prior art. Appellant’s Br. 33–37; Appellant’s Reply 

Br. 12. Bot M8’s arguments are premised on its claim construction argument requiring the “fault inspection program” to be “other than the boot program,” which we reject

as explained above. 

Second, Bot M8 also challenges whether substantial 

evidence supports the Board’s findings for those claims 

from the ’988 patent that require inspecting faults in both

hardware and software.8 Appellant’s Br. 54. Bot M8 

8 Outside of its claim construction argument that the 

“fault inspection program” must inspect both hardware 

and software, Bot M8 does not appear to challenge that 

substantial evidence supports the Board’s finding as to the 

’670 patent. Appellant’s Br. 54 (“[T]he claim construction 

alone is dispositive for the ’670 Patent because the Board’s 

obviousness determination was based on rejecting Bot M8’s 

construction.”); see also Oral Arg. at 10:48–11:34 (“That 

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14 BOT M8 LLC v. SONY INTERACTIVE ENTERTAINMENT LLC

argues that “Sugiyama can only determine that an abnormality occurred, not whether it occurred in” hardware or 

software. Id. at 55. Bot M8 agrees that Sugiyama can detect “hardware abnormalities, like memory failures,” but 

argues that it “cannot detect software faults.” Id. at 55–56.

We conclude that the Board’s analysis is supported by 

substantial evidence. As to the ’988 patent, the Board

found that Sugiyama alone teaches inspecting both hardware and software faults. Decision II at *13. The Board 

relied on Sugiyama’s disclosure that it can identify

whether there is “damage to the hard disk drive 24 itself” 

(i.e., hardware) or “[i]f there is no damage to the hard disk 

drive itself, for example, when the stored data is destroyed”

(i.e., software). Id. at *9 (internal quotations omitted), *13; 

see also Sugiyama ¶¶ 23–24. We agree that substantial 

evidence supports the Board’s factual findings underlying 

the unpatentability determinations for Sony’s Sugiyamabased grounds. 

III. CONCLUSION

We have considered Bot M8’s remaining arguments 

and find them unpersuasive. For the above reasons, we 

affirm. 

AFFIRMED

argument, that it had to be both hardware and software, 

does not apply to the ’670 [patent].”). To the extent Bot M8 

challenges the Board’s findings that Sugiyama in combination with Gatto renders the claims of the ’670 patent unpatentable as obvious, we conclude that substantial 

evidence supports the Board’s factual findings underlying 

its unpatentability determinations. Decision I at *7–11. 

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