IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN M. HOFFMAN, Reg. No. 39,713
`CHRISTOPHER L. LARSON, Reg. No. 68,243
`CHRISTINE KO, Reg. No. 72,994
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Inter Partes Review Case No. 2020-00513
`Patent 9,774,655
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.108(c)
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN M. HOFFMAN, Reg. No. 39,713
`CHRISTOPHER L. LARSON, Reg. No. 68,243
`CHRISTINE KO, Reg. No. 72,994
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Inter Partes Review Case No. 2020-00513
`Patent 9,774,655
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. §42.108(c)
`
`
`
`
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`A BALANCED ASSESSMENT FAVORS INSTITUTION ......................... 1
`FARMVILLE FOR DUMMIES IS A PRINTED
`PUBLICATION .............................................................................................. 6
`III. GREE’S CLAIM CONSTRUCTION ARGUMENTS
`ARE IMMATERIAL ...................................................................................... 7
`
`
`i
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple v. Fintiv,
`IPR2020-00019, Paper 11 ............................................................................passim
`Caterpillar Inc. v. Wirtgen Am., Inc.,
`IPR2017-02186, Paper 10 (P.T.A.B. May 1, 2019) ......................................... 7-8
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 1, 2, 5
`Gree v. Supercell,
`No. 2:19-cv-00070 (E.D. Tex. Dec. 18, 2019) ..................................................... 4
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`In re Hall,
`781 F.2d 897 (Fed. Cir. 1986) .............................................................................. 7
`Medtronic, Inc. v. Barry,
`891 F.3d 1368 (Fed. Cir. 2018) ............................................................................ 6
`Orthopediatrics Corp. v. K2M, Inc.,
`IPR2018-01546, Paper 10 (P.T.A.B. Feb. 14, 2019) ............................................ 8
`Precision Instrument Mfg. Co. v. Automotive Maintenance Mach. Co.,
`324 U. S. 806 (1945) ............................................................................................. 2
`Precision Planting, LLC v. Deere & Co.,
`IPR2019-01044, Paper 17 (P.T.A.B. Dec. 2, 2019) ............................................. 5
`Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`No. 2:15-CV-349-JRG, 2016 WL 7338600
`(E.D. Tex. July 15, 2016) ...................................................................................... 3
`Western Digital Corp. v. SPEX Techs., Inc.,
`IPR2018-00084, Paper No. 14 (P.T.A.B. April 25, 2018) ................................... 7
`
`ii
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`(Continued)
`
`Page(s)
`
`STATUTES AND RULES
`35 U.S.C. § 102 .......................................................................................................... 6
`35 U.S.C. § 112 ¶ 6 .................................................................................................... 8
`35 U.S.C. § 314(a) ................................................................................................. 1, 3
`35 U.S.C. § 316(e) ..................................................................................................... 2
`
`
`iii
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001 U.S. Patent No. 9,774,655
`
`1002
`
`File History of U.S. Patent No. 9,774,655
`
`1003 Declaration of Jose P. Zagal, Ph.D.
`
`1004
`
`Curriculum Vitae of Jose P. Zagal, Ph.D.
`
`1005 U.S. Patent No. 8,727,887 to Mahajan et al. (“Mahajan”)
`
`1006
`
`FarmVille for Dummies, Wiley Publishing, Inc. (“FarmVille”),
`Angela Morales and Kyle Orland (2011)
`
`1007 U.S. Patent Application No. 2017/0300987 to Williams et al.
`(“Williams”)
`
`1008 U.S. Patent Application No. 2008/0034061 to Beares (“Beares”)
`
`1009 Mia Consalvo, Using Your Friends: Social Mechanics in Social Games,
`Association for Computing Machinery (ACM) (“Consalvo”)
`
`1010
`
`1011
`
`Claim Construction Memorandum Opinion and Order for GREE, Inc. v.
`Supercell Oy, Case Nos. 19-cv-00070 and 19-cv-00172 (E.D. Tex.)
`
`PACER Dockets for GREE, Inc. v. Supercell Oy (E.D. Tex.) and
`Selected Complaints
`
`1012
`
`P.T.A.B. Record of Supercell’s Post Grant Proceedings Against GREE
`
`1013 GREE’s Amended Infringement Contentions, Gree v. Supercell,
`No. 2:19-cv-00070 (E.D. Tex. Dec. 18, 2019)
`
`1014
`
`1015
`
`File History of U.S. Patent Application No. 16/418,728 to Takeuchi
`
`File History of U.S. Patent Application No. 15/638,730 to Takeuchi
`
`1016 Declaration of Steven V. Potter on Authentication of Publication
`
`iv
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`Exhibit
`
`Description
`
`1017 Wayback Machine, “FarmVille for Dummies: Book Information – For
`Dummies,” https://web.archive.org/web/20110217204607/http:/
`www.dummies.com/store/product/FarmVille-For-Dummies.productCd-
`1118016963.html.
`
`Plaintiff GREE’s Opening Claim Construction Brief for GREE, Inc. v.
`Supercell Oy, Case No. 19-cv-00070 (E.D. Tex.)
`
`1018
`
`
`
`
`
`v
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Petitioner hereby replies to Patent Owner’s (“GREE’s”) Preliminary Reply
`
`(“POPR,” Paper 6 at 1-19).1
`
`I.
`
`A BALANCED ASSESSMENT FAVORS INSTITUTION
`The Board should not exercise its discretion under 35 U.S.C. § 314(a) to
`
`deny institution. When evaluating institution due to an early trial date under
`
`§ 314(a), the Board conducts “a ‘balanced assessment of all relevant circumstances
`
`of the case, including the merits.’” Apple v. Fintiv, IPR2020-00019, Paper 11, at 5
`
`(Precedential) (“Apple”) (quoting Consolidated Trial Practice Guide November
`
`2019 at 58). The “Board takes a holistic view of whether efficiency and integrity of
`
`the system are best served by denying or instituting review” and considers
`
`“whether efficiency, fairness, and the merits support the exercise of authority to
`
`deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6.
`
`A holistic view of the present IPR demonstrates that institution should be granted.
`
`GREE’s core premise that institution should be denied under § 314(a) relies
`
`on a false equivalence between the parallel litigation and the IPR proceeding. The
`
`Supreme Court recognized that “inter partes review is less like a judicial
`
`proceeding and more like a specialized agency proceeding.” Cuozzo Speed Techs.
`
`v. Lee, 136 S. Ct. 2131, 2143 (2016). “[T]he purpose of the [IPR] proceeding is not
`
`1 Authorization for Petitioner’s Reply was given by the Board via email on May 21,
`
`2020, which granted eight pages for Petitioner’s Reply.
`
`1
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`quite the same as the purpose of district court litigation.” Id. at 2144. Inter partes
`
`review “offers a second look at an earlier administrative grant of a patent.” Id.
`
`Importantly, “the burden of proof in inter partes review is different than in the
`
`district courts.” Id.; 35 U.S.C. § 316(e). Inter partes review uses the lower
`
`preponderance of the evidence standard and thereby “helps protect the public’s
`
`‘paramount interest in seeing that patent monopolies . . . are kept within their
`
`legitimate scope.” Cuozzo, 136 S. Ct. at 2144 (quoting Precision Instrument Mfg.
`
`Co. v. Automotive Maintenance Mach. Co., 324 U. S. 806, 816 (1945)).
`
`Mechanically applying the six Apple factors to the instant IPR as GREE
`
`advocates undermines this paramount interest with respect to Petitioner and the
`
`general public. Most of the factors are always weighted against Petitioners who are
`
`defendants in fast-moving district court jurisdictions. Thus, weighting the factors
`
`as GREE proposes is not a “balanced assessment” because the scale is
`
`automatically tipped in favor of the patent owner and produces an unfair result.
`
`Consider the central issue of whether the “court’s trial date is earlier than the
`
`projected statutory deadline.” Apple at 9. GREE served its initial complaint for the
`
`’655 patent on March 26, 2019 and trial is set for August 3, 2020. Ex. 1011 at 3
`
`(showing summons served on March 26, 2019). Thus, the statutory FWD deadline
`
`would not occur before the scheduled trial date even if Petitioner filed the petition
`
`on the same day it was served with the complaint.
`
`2
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`GREE’s reliance on the lack of a stay in the parallel litigation is also
`
`misplaced. GREE itself asserts that “the district court ‘has a consistent practice of
`
`denying motions to stay when the PTAB has yet to institute post-grant
`
`proceedings.’” POPR at 18 (quoting Saint Lawrence Commc’ns LLC v. ZTE Corp.,
`
`No. 2:15-CV-349-JRG, 2016 WL 7338600, at *1 (E.D. Tex. July 15, 2016)).
`
`Declining institution based on this factor presents an unfair chicken or egg scenario
`
`in which both the Board and the court decline to act based on the other’s inaction.
`
`GREE devotes nearly six pages to the “overlap between issues.” POPR at
`
`7-13. Again, declining institution based on this factor is manifestly unfair because
`
`it casts a chilling effect on defendants from offering prior art in a district court just
`
`to increase the chances of IPR institution. But clearly the public interest is
`
`disserved by requiring petitioner-defendants to argue distinct and different
`
`invalidity theories and withhold prior art necessary to show the public already had
`
`access to the alleged invention. Likewise, the “same parties” factor should be given
`
`little weight because almost all IPRs in which § 314(a) issues arise naturally
`
`involve the same parties.
`
`The remaining Apple factors support institution considering the full context
`
`of the dispute between the parties. With respect to the “investment in the parallel
`
`proceeding,” the Board advises the parties to “explain facts relevant to the timing.”
`
`Apple at 11. Here, GREE is quick to assign blame to Petitioner without telling the
`
`3
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`full story. GREE launched a patent war against Petitioner. Since February 27,
`
`2019, GREE has asserted 30 different patents against Petitioner. See generally, Ex.
`
`1011. Petitioner, in turn, has filed 35 petitions seeking post-grant review of
`
`GREE’s patents. Ex. 1012 (PTAB e2e docket page listing the matters between the
`
`parties). Since Petitioner filed the instant petition, GREE has asserted three
`
`additional patents against it. See Ex. 1011 at 651.
`
`GREE relies on the September 19, 2019 date on which Petitioner served its
`
`invalidity contentions, but this date and GREE’s argument misses the point. POPR
`
`at 17. GREE withheld its actual infringement theory from Petitioner for three
`
`additional months, until December 18, 2019, when it served amended infringement
`
`contentions identifying for the first time the code allegedly showing infringement.
`
`See Ex. 1013 (GREE’s Amended Infringement Contentions, Gree v. Supercell, No.
`
`2:19-cv-00070 (E.D. Tex. Dec. 18, 2019). GREE’s allegation that Petitioner
`
`“wait[ed] until the district court trial has progressed significantly before filing a
`
`petition at the Office” is likewise erroneous. POPR at 18 (quoting Apple at 11).
`
`The Petition was filed only six weeks after GREE amended its contentions.
`
`The crux of the parallel proceeding factor is to determine whether the timing
`
`“impose[s] unfair costs to a patent owner.” Apple at 11. But GREE nowhere
`
`alleges that it was harmed by the so-called delay. See POPR at 17-18. Rather,
`
`GREE simply relies on the timing itself to argue for discretionary denial of
`
`4
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`institution. The fact of the matter is that GREE elected to sue Petitioner in a fast-
`
`moving jurisdiction, and any “unfair costs” GREE may identify are a direct
`
`consequence of its choice and counterbalanced by equivalent costs to Petitioner. In
`
`sum, a balanced assessment of this factor favors institution.
`
`The final factor is “other circumstances that impact the Board’s exercise of
`
`discretion, including the merits.” Apple at 14. One such circumstance is that GREE
`
`has two continuations of the ’655 patent pending, one of which is allowed. See
`
`generally, Ex. 1014; Ex. 1015 at 1 (Notice of Allowance). GREE also has an
`
`established track record of suing Petitioner in a fast-moving jurisdiction
`
`immediately upon patent issuance. Ex. 1011 at 214, 246, 257, 272, 309, 351, 576,
`
`619, 633, 656 (identifying continuation patents asserted on day of issuance). Since
`
`it is impossible for Petitioner to obtain an FWD deadline before a scheduled trial
`
`date in this situation, a holistic view considering efficiency and integrity favors
`
`institution now to “protect the public’s ‘paramount interest in seeing that patent
`
`monopolies . . . are kept within their legitimate scope.” Cuozzo, 136 S. Ct. at 2144.
`
`Another consideration is that the parallel litigation trial may not happen on
`
`the scheduled date. The Board is well-aware that a district court’s trial schedule
`
`may change and courts often “extend or accelerate deadlines and modify case
`
`schedules for myriad reasons.” Precision Planting, LLC v. Deere & Co., IPR2019-
`
`01044, Paper 17, at 14-15 (P.T.A.B. Dec. 2, 2019). With the COVID-19 virus
`
`5
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`pandemic still severely impacting the regular operation of courts and businesses in
`
`general, there has never been more uncertainty and unpredictability around trial
`
`dates. Petitioner and witnesses for the parallel litigation reside in Finland, and are
`
`prohibited from entering the U.S. under current government mandated travel
`
`restrictions. See https://www.cdc.gov/coronavirus/2019-ncov/travelers/from-other-
`
`countries.html; Ex. 1011 at 110 (listing Petitioner’s principal place of business in
`
`Finland). There is no telling when this travel restriction will be lifted or when
`
`convening a jury will even be feasible. Prudence counsels proceeding with the
`
`efficient IPR process rather than an unpredictable jury trial in the parallel litigation.
`
`See Ex. 1011 at 143 (GREE’s demand for jury trial).
`
`II.
`
`FARMVILLE FOR DUMMIES IS A PRINTED PUBLICATION
`There should be no doubt that FarmVille for Dummies (“FarmVille”)
`
`qualifies a printed publication under 35 U.S.C. § 102 (b). “The determination of
`
`whether a document is a ‘printed publication’ under 35 U.S.C. § 102 ‘involves a
`
`case-by-case inquiry into the facts and circumstances surrounding the reference’s
`
`disclosure to members of the public.’” Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-01039, Paper 29 at 9 (P.T.A.B. Dec. 20, 2019) (Precedential) (quoting
`
`Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).
`
`As GREE notes, FarmVille itself bears a 2011 publication date. Other
`
`evidence demonstrates that this date is accurate. The Declaration of Steven V.
`
`6
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Potter, a Library Director at Consolidated Library District No. 3, proves that
`
`FarmVille was catalogued and publicly available to its patrons within a week from
`
`October 19, 2011. Ex. 1016. Courts have routinely found evidence of library
`
`practice and catalog information sufficient to determine that the publication at
`
`issue was publicly available. See, e.g., In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`
`1986) (affidavit of librarian detailing general practices for receiving, cataloging,
`
`and shelving publications was sufficient to determine publication was publicly
`
`available). Furthermore, FarmVille was publicly on sale as early as February 17,
`
`2011 as demonstrated by a WayBack Machine index and archive of the “For
`
`Dummies” website. Ex. 1017. Petitioner has thus satisfied its burden of
`
`establishing that FarmVille is a printed publication available to the public prior to
`
`the effective filing date of September 20, 2012.
`
`III. GREE’S CLAIM CONSTRUCTION ARGUMENTS ARE
`IMMATERIAL
`GREE’s argument that Petitioner is seeking a hypothetical advantage
`
`through claim construction is immaterial to the institution decision. Petitioner
`
`“complies with [the Board’s] rules by identifying claim constructions it proposes
`
`as the basis for requesting review of the challenged claims.” Western Digital Corp.
`
`v. SPEX Techs., Inc., IPR2018-00084, Paper No. 14 at 11 (P.T.A.B. April 25, 2018);
`
`see also Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02186, Paper 10, at 13
`
`7
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`(P.T.A.B. May 1, 2019) (“[o]ur rules do not require positions consistent with
`
`related cases in different fora”).
`
`The lone PTAB decision cited by GREE is easily distinguished—the
`
`Orthopediatrics Corp case involved “unique circumstances,” not present here, in
`
`which “Petitioner should have either provided reasons why [the] limitations are not
`
`governed by 35 U.S.C. § 112 ¶ 6, or Petitioner should have provided an explicit
`
`claim construction as required by [the] rules.” Orthopediatrics Corp. v. K2M, Inc.,
`
`IPR2018-01546, Paper 10 at 11 (P.T.A.B. Feb. 14, 2019).
`
`Moreover, GREE itself is guilty of this alleged sin. GREE argues that “[t]he
`
`teachings of Williams make clear that a ‘request’ for an exchange transaction in
`
`Williams does not automatically result in an actual transfer of an item.” POPR at
`
`43 (emphasis added). Yet during claim construction briefing in the parallel
`
`litigation, GREE disparaged Petitioner’s proposed construction of “grant the second
`
`object . . .” by characterizing it as “riddled with terms that do not even appear in the
`
`specification, such as ‘automatically . . . .’” Ex. 1018 at 30 (emphasis added).
`
`Dated: June 5, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`8
`
`
`
`IPR2020-00513
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`(37 C.F.R. §42.110(a))
`
`
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on June 5, 2020,
`
`a copy of the foregoing document, PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.108(C) was served on Patent
`
`Owner’s lead and backup counsel in their entirety by electronic service by email at
`
`the email addresses provided below:
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`
`Kasey E. Koballa
`Kilpatrick Townsend & Stockton LLP
`607 14th Street, N.W., Suite 900
`Washington, D.C. 20005
`kkoballa@kilpatricktownsend.com
`
`
`Dated: June 5, 2020
`
`
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`
`
`
`9
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`
`Alton L. Absher III
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`aabsher@kilpatricktownsend.com
`
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`
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