IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In the Inter Partes Review of:
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`U.S. Patent No.: 10,413,832
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`For: GAME CONTROL METHOD, )
`GAME SERVER, AND PROGRAM )
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`Mail Stop Patent Board
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`Patent Trial and Appeal Board
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`DECLARATION OF RAVIN BALAKRISHNAN, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,413,832
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`Supercell
`Exhibit 1007
`Page 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`)
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`In the Inter Partes Review of:
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`U.S. Patent No.: 10,413,832
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`For: GAME CONTROL METHOD, )
`GAME SERVER, AND PROGRAM )
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`)
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`Mail Stop Patent Board
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`Patent Trial and Appeal Board
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`DECLARATION OF RAVIN BALAKRISHNAN, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,413,832
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`Supercell
`Exhibit 1007
`Page 1
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`I, Ravin Balakrishnan, Ph.D., declare as follows:
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`I.
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`INTRODUCTION
`1.
`I have been asked by the party requesting this review, Supercell Oy
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`(“Petitioner”), to provide my expert opinions in support of the above-captioned
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`petition for inter partes review of U.S. Patent No. 10,413,832 (the “’832 patent”),
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`challenging the patentability of claims 1-15 of the ’832 patent.
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`2.
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`3.
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`I currently hold the opinions set forth in this declaration.
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`In summary, it is my opinion that the references cited below render
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`obvious claims 1-15 of the ’832 patent. My detailed opinions on the claims are set
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`forth below.
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`II.
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`BACKGROUND AND QUALIFICATIONS
`I am currently a tenured Full Professor of Computer Science in the
`4.
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`Department of Computer Science at the University of Toronto. I joined the faculty
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`at the University in 2001, was granted tenure in 2006, and served as Chair of my
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`Department from 2015 to 2019. From 2006-2016, I held the Canada Research Chair
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`in Human-Centered Interfaces in the Department of Computer Science.
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`5.
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`I earned a B.Sc. in Computer Science from the University of New
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`Brunswick in 1993, an M.Sc. in Computer Science in 1997 and a Ph.D. in Computer
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`Science in 2001 both from the University of Toronto. Since receiving my Ph.D., I
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`have been a member of the faculty of the Department of Computer Science at the
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`Supercell
`Exhibit 1007
`Page 2
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`University of Toronto where my research has focused on human computer
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`interaction (“HCI”), including the development of user interface technologies to
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`improve HCI on a variety of computational platforms and application areas
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`including mobile devices, video games, large displays, 3D displays, virtual and
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`augmented reality technologies.
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`6.
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`In conjunction with my professorship, I serve as Co-Director of the
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`Dynamic Graphics Project Laboratory at the University of Toronto that has twelve
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`faculty members and roughly 50 graduate students and postdoctoral researchers
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`working on various aspects of user interface technologies, display technologies,
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`computer graphics, interactive technologies and virtual environments. Tech transfer
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`of research to industry from this lab in recent years has resulted in several spin-off
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`companies, including ones focused on 3D user interfaces, medical data visualization,
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`virtual reality, and 3D architectural visualization and interaction.
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`7.
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`As part of my professorial duties, I teach and supervise graduate
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`students and postdoctoral fellows in their research work. To date, 27 research M.Sc.
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`students, 15 Ph.D. students, and 8 postdoctoral fellows have completed their
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`research training under my guidance. Their research has led to theses and peer
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`reviewed publications in over a broad range of topics covering interactive computing
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`and user interfaces for multiple applications and technology platforms. I have taught
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`courses covering computing topics including interactive computing, human-
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`2
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`Supercell
`Exhibit 1007
`Page 3
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`computer interaction, and information systems and design, as well as courses
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`covering game development topics including user interfaces for games including on
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`virtual reality and augmented reality systems.
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`8.
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`I have published over 140 refereed publications in peer-reviewed
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`journals. I have further presented numerous conference abstracts, posters, talks, and
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`demonstrations in my field. My work has been cited more than 17,000 times across
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`a spectrum of high-impact publications, and my current h-index score is 76, which
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`is an indication of the significant impact of my research on scholarly literature in the
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`field of Computer Science.
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`9.
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`I have received major awards and honors in my field. For example, in
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`2007, I received an Alfred P. Sloan Research Fellowship. In 2011, I was elected
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`into the Association for Computing Machinery’s Computer Human Interaction
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`Academy, which is an honorary group consisting of researchers who have made
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`extensive contributions to the study of HCI and who have led the shaping of the HCI
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`field. The stated criteria for being elected into the Association for Computing
`
`Machinery’s Computer Human Interaction Academy are: (1) cumulative
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`contributions in the field; (2) impact on the field through development of new
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`research directions and/or innovations; and (3) influence on the work of others.
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`10.
`
`I have been a co-founder on a number of start-ups focusing on human-
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`computer interfaces, including Bump Technologies (acquired by Google in 2010)
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`
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`3
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`Supercell
`Exhibit 1007
`Page 4
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`which developed a physically realistic desktop user interface system, Arcestra
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`(formerly Sketch2 Corp) which developed software for designing 3D building
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`layouts, and Conceptualiz which develops surgical planning technology.
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`11. My research at the University of Toronto has involved nearly every
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`broad aspect of human-computer interaction and data visualization. For instance, I
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`have done significant work in the areas of input devices, displays, sensing
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`technologies, interfaces to small and/or mobile computers, interfaces to displays of
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`the future, and interaction techniques, including touch and multi-touch, gestural,
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`sketching, and multi degree-of-freedom interactions. As another example, I have
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`done work in the evaluation of user interfaces, including associated metrics and
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`predictive models of human performance.
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`12.
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`In addition to my research at the University of Toronto, I have
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`collaborated with researchers at leading institutions worldwide. For example, I have
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`been a visiting professor at Laboratoire de Recherche en Informatique (LRI) at the
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`Université Paris-Sud, France. Additionally, I have been a visiting researcher at
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`several industrial laboratories, including: (1) HPLabs, (2) Mitsubishi Electric
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`Research Laboratories (MERL), and (3) Microsoft Research Labs. At those
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`companies, my work generally focused on developing new user interface techniques
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`for a variety of technology platforms. Prior to becoming a professor, during my MSc
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`and PhD studies, I was also concurrently a part-time researcher at Alias|wavefront
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`
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`4
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`Supercell
`Exhibit 1007
`Page 5
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`(now part of Autodesk), that was a leading developer of 3D graphics software
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`applications.
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`13.
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`I have also served on the organizing and paper reviewing committees
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`of many leading conferences in my field, and have taken on editorial roles for leading
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`technical journals in fields pertinent to my research. For example, I have been an
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`associate editor of the Association for Computing Machinery (“ACM”) Transactions
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`on Computer-Human Interaction and an associate editor of the IEEE Transactions
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`on Visualization and Computer Graphics, which are both peer-reviewed journals.
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`Similarly, I have been the paper’s chair for the ACM UIST Symposium on User
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`Interface Software and Technology, and have served multiple times as an associate
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`chair for the ACM CHI Conference on Human-Computer Interaction. Over my
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`career, I have also reviewed hundreds of published and unpublished papers,
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`including many on user interfaces for video games and video game technology more
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`generally.
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`14.
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`I am the co-inventor on 20 patents, and have several patent applications
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`pending, all in the area of user interfaces, including new techniques and technologies
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`for handling user input to computational platforms in novel and more facile ways.
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`15. Additionally, I have served as an expert witness in numerous patent
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`actions, including in multiple IPR proceedings and ITC and district court cases,
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`including for Apple in several actions against Samsung, HTC and other entities
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`5
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`Supercell
`Exhibit 1007
`Page 6
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`involving multiple patents covering tablet and mobile phone interfaces, for Nintendo
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`involving their Wii gaming technology, and for Oculus involving their virtual reality
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`technology.
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`16. My professional background and technical qualifications also are
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`reflected in my Curriculum Vitae, which is attached as Ex. 1008.
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`III. COMPENSATION AND RELATIONSHIP WITH PARTIES
`17.
`I am being compensated for my time. This compensation is not
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`contingent upon my performance, the outcome of this matter, or any issues involved
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`in or related to this matter.
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`18.
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`I have no financial interest in Petitioner or any related parties. I have
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`been informed that GREE, Inc. (“GREE”) owns the challenged patents. I have no
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`financial interest in and have no contact with GREE beyond the kinds of cursory
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`interactions I often have with game industry professionals at conferences. I similarly
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`have no financial interest in the challenged patents and have not had any contact
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`with the named inventors.
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`IV. MATERIAL CONSIDERED
`19.
`I have reviewed and considered, in the preparation of this declaration,
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`the ’832 patent (Ex. 1003) and the prosecution file history for the ’832 patent
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`(Ex. 1004). I additionally reviewed and considered U.S. Patent No. 10,076,708 (the
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`
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`6
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`Supercell
`Exhibit 1007
`Page 7
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`“’708 patent”) (Ex. 1001) and its prosecution history (Ex. 1002). The ’708 patent is
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`the parent of the ’832 patent.
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`20.
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`I understand that, for purposes of determining whether a reference will
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`qualify as prior art, the challenged claims of the challenged patents are entitled to a
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`priority date of no earlier than June 21, 2012.
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`21.
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`I have also reviewed and understand various publications as discussed
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`herein, including the following references:
`
`a.
`
`“FarmVille for Dummies” by Angela Morales and Kyle Orland,
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`ISBN: 978-1-118-01696-1 (“FVD”) (Ex. 1019)
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`b.
`
`c.
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`U.S. Patent No. 8,843,853 to Smoak et al. (“Smoak”) (Ex. 1020)
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`U.S. Patent No. 7,357,718 to Yamaoka et al. (“Yamaoka”) (Ex.
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`1021)
`
`d.
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`U.S. Patent Pub. No. 2012/0129590 to Morrisroe et al.
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`(“Morrisroe”) (Ex. 1022)
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`22.
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`I understand that the above references form the basis for the ground for
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`rejection set forth in the Petitions for Inter Partes Review of the challenged patents.
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`Additionally, I am aware of information generally available to, and relied upon by,
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`persons of ordinary skill in the art (POSITAs) at the effective filing date, including
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`computer games, technical dictionaries and technical reference materials (including,
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`7
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`Supercell
`Exhibit 1007
`Page 8
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`for example, textbooks, manuals, technical papers, articles, and relevant technical
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`standards); some of my statements below are expressly based on such awareness.
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`23. Due to procedural limitations for Inter Partes Reviews, the grounds for
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`invalidity discussed herein are based solely on prior patents and other printed
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`publications. I understand that Petitioner and the other interested parties reserve all
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`rights to assert other grounds for invalidity not addressed herein at a later time, for
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`instance failure of the application to claim patentable subject matter under 35 U.S.C.
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`§ 101, failure to meet requirements under 35 U.S.C. § 112 (e.g., lack of written
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`description in support of the claims) and anticipation/obviousness under 35 U.S.C.
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`§§ 102 and 103 not based solely on patents and printed publications (e.g., evidence
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`of prior use of combinations of elements claimed in the ’832 patent). Thus, absence
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`of discussion of such matters here should not be interpreted as indicating that there
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`are no such additional grounds for invalidity of the challenged patents.
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`24.
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`I reserve the right to supplement my opinions to address any
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`information obtained, or positions taken, based on any new information that comes
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`to light throughout this proceeding.
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`V. BASIS OF OPINIONS FORMED
`A. Level of Ordinary Skill in the Art
`25.
`It is my understanding that the challenged patents are to be interpreted
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`based on how they would be read by a person of “ordinary skill in the art”
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`
`
`8
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`Supercell
`Exhibit 1007
`Page 9
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`(“POSITA”) at the time of the effective filing date of the application. It is my
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`understanding that factors such as the education level of those working in the field,
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`the sophistication of the technology, the types of problems encountered in the art,
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`the prior art solutions to those problems, and the speed at which innovations are
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`made may help establish the level of skill in the art.
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`26.
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`I am familiar with the technology at issue and the state of the art at the
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`effective filing date of the challenged patents, June 21, 2012.
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`27.
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`In my opinion, the level of ordinary skill in the art of the challenged
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`patents at the time of the effective filing date is a person with a bachelor’s degree in
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`game design, interactive design/media, computer science, computer engineering, or
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`a related field, with at least two years of professional experience working in
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`computer game design. With more education, such as additional graduate degrees
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`or study, less professional experience is needed to attain the ordinary level of skill.
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`Similarly, with more experiential knowledge of computer games, such as experience
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`developed while researching and/or designing computer games, less professional
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`experience is needed to attain the ordinary level of skill.
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`28.
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`I consider myself to have at least such ordinary skill in the art with
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`respect to the subject matter of the challenged patents at the time of the effective
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`filing date.
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`
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`9
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`Supercell
`Exhibit 1007
`Page 10
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`VI. THE CHALLENGED PATENT
`29. The challenged ’832 patent is a continuation of the U.S. Application
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`No. 14/409,219, now U.S. Patent No. 10,076,708. I understand that a continuation
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`patent generally has the same title and specification, but different claims, as its
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`parent. Since the challenged patent is related to the ’708 patent and generally shares
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`the same disclosure, the citations to the patent specification in my discussion below
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`refer to the ’708 patent unless otherwise noted.
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`30. The challenged patent is entitled “Game Control Method, Game Server,
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`and Program.” The challenged patent includes 15 claims, all of which are challenged
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`in the Petition for Inter Partes review of the challenged patent.
`
`A.
`Purported Invention of the Challenged Patents
`31. The challenged patent generally relates to ways of acquiring virtual
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`items in video games. According to the Background and Summary sections of the
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`challenged patent, a battle game may be played by a user having a deck “formed by
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`a plurality of battle cards” used to compete with other users, and that users can
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`acquire battle cards by various methods. Ex. 1001 at 1:20-28. However, the patent
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`notes that if methods for acquiring battle cards in a battle game and the like are
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`limited, users may lose interest in the game. Id. at 1:40-42. For example, if “it is
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`difficult to acquire a battle card or the like with a high rarity value, the user ends up
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`10
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`Supercell
`Exhibit 1007
`Page 11
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`with the impression that such an item cannot be acquired at all and suffers a drastic
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`loss of interest in the game.” Id. at 1:43-46.
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`32. According to the challenged patent, a solution to this problem involving
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`item acquisition in video games is to “increase the variations on methods for
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`acquiring battle cards and the like, increase the predictability of acquisition of a card
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`or the like with a high rarity value or the like, and heighten interest in the game.”
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`Ex. 1001 at 1:47-53. The challenged patent argues that this would provide the user
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`“with incentive to increase the occasions of an item acquisition request and is enticed
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`to continue playing the game longer.” Id. at 10:39-41.
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`33. FIG. 1 of the ’832 patent, reproduced below, shows a communication
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`terminal 2, operated by a user, that communicates with a server (e.g., “battle game
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`server” 1) over a network during gameplay.
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`11
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`Supercell
`Exhibit 1007
`Page 12
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`34. The Specification of the patent describes that a battle game server
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`contains a memory that “stores information on items to provide, a total count of
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`items, item type, and an acquisition count,” where “[a]n ‘item’ refers to any of a
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`variety of objects used within a game, such as a battle card constituting a user’s deck,
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`a character, a weapon, armor, an ornament, a plant, food, and the like.” Ex. 1001 at
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`4:9-14. The item information may be stored among a plurality of item information
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`tables. Id. at 4:17-18. FIGs. 2A to 2C illustrate example item information tables.
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`12
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`Supercell
`Exhibit 1007
`Page 13
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`35. The ’832 patent further describes that the communication terminal may
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`request to present information relating to acquirable items from the game server. For
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`example, “when a request
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`to present
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`information
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`is received from
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`the
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`communication terminal 2 via the communication unit 10, then based on the item
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`information tables 111 a to 111 c, the information presentation unit 12 tallies the
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`total count of items for each item type [and] also refers to the user information
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`table 112 to calculate the acquisition count of items for each item type based on the
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`identification information of provided items and the table identification information
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`that correspond
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`to
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`the user
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`identification
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`information pertaining
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`to
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`the
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`communication terminal 2. The information presentation unit 12 then presents the
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`communication terminal 2, via the communication unit 10, with the result of
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`calculation as the acquirable item information.” Ex. 1001 at 4:65-5:11.
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`36. FIG. 5 of the ’832 patent shows an example of “acquirable item
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`information that the information presentation unit 12 presents… when a request to
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`present information is received from the communication terminal 2.” For example,
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`FIG. 5 illustrates “information 501 on the total count and information 502 on the
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`acquisition count of items for each item type are presented to the communication
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`terminal 2.” Ex. 1001 at 5:18-21. The Specification also notes that “a non-
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`acquisition count may be presented by subtracting the acquisition count from the
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`total count of items.” Id. at 5:22-25.
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`13
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`Supercell
`Exhibit 1007
`Page 14
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`37. The server may further receive an item acquisition request from the
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`player at the communication terminal, whereupon the “control unit 13 determines
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`one item to provide to the communication terminal 2 based on information
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`corresponding to the user identification information pertaining to the communication
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`terminal 2” and “provides the item to the communication terminal 2 via the
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`communication unit 10.” Ex. 1001 at 5:29-32.
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`38. FIG. 9 of the ’832 patent illustrates an example screen that the
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`information presentation unit may transmit to the communication terminal for
`14
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`Supercell
`Exhibit 1007
`Page 15
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`display. As illustrated in FIG. 9, the displayed interface may comprise a “sheet”
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`composed of a plurality of “cells,” where each cell corresponds to an item. See Ex.
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`1001 at 11:52-60. The user can select a cell using an operation unit “such as a key
`
`or a touch panel of the communication terminal 2, and the communication terminal
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`2 transmits a selection request to the battle game server 1 based on the user
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`operation.” Id. at 12:37-42. In response, “[t]he control unit 13 of the battle game
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`server 1 then determines that the item corresponding to the cell pertaining to the
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`selection request is the item to provide to the communication terminal 2.” Id. at
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`12:42-44.
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`15
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`Supercell
`Exhibit 1007
`Page 16
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`39. The cells may be displaying having certain patterns. For example, the
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`pattern of a displayed cell may be based on an item type or rarity value of the item
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`associated with the cell (e.g., “when the numerical value of the item type is at least
`
`a predetermined value, the pattern shown in cell 301 and the like is displayed….
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`Conversely, when the item type is less than the predetermined value, the pattern
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`
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`16
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`Supercell
`Exhibit 1007
`Page 17
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`
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`shown in cell 302 and the like is displayed”). Ex. 1001 at 11:61-66. In some cases,
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`the cells may be displayed “with the same pattern,” while selected cells may be
`
`displayed having a pattern based upon item type. See id. at 12:25:28, 45-49.
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`40.
`
`The concept of presenting acquirable item information and providing
`
`items in response to a received item selection request is employed with generic
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`computer equipment. The specification states that “[a] computer is preferably used
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`to function as the battle game server 1,” where a “program containing a description
`
`of the processing for achieving the functions of the battle game server 1 is stored in
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`the memory unit of the computer, and the functions are achieved by the central
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`processing unit (CPU) of the computer reading and executing the program.” Ex.
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`1001 at 13:14-19. The components of the computer, e.g., the “information
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`presentation unit,” “control unit,” “communication unit,” and “memory unit,” are
`
`described in purely functional and generic terms. See generally Ex. 1001 at 3:65-
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`4:5 & Fig. 1.
`
`41.
`
`The specification also describes generic computer functionality for
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`storing the information maintained by the computer / server. See generally Ex. 1001
`
`at 4:6-23. The information is stored within a generic “memory unit” of the battle
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`game server “by dividing the information among tables,” functionally described as
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`an “item information table,” a “user information table,” and “item data.” See id. at
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`4:6-44.
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`17
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`Supercell
`Exhibit 1007
`Page 18
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`42. The independent claims of the ’832 patent recite variations on the same
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`five basic elements: (1) associating, in a memory of the game server, each of a
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`plurality of cells with each of extracted items extracted from the memory; (2)
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`sending information to a user terminal for displaying, in a virtual game, a sheet
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`comprising the plurality of cells and obtainable item information, the obtainable item
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`information comprising at least one of (i) a total number of items for each item type,
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`(ii) a number of obtained items and (iii) a number of un-obtained items; (3) receiving,
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`in the virtual game, a selection request from the user terminal to select one cell
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`among the plurality of cells; (4) sending information for differentiating, in the virtual
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`game, a display of the one cell from another cell of the plurality of cells in the sheet,
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`wherein the differentiating of the display of the one cell is done in response to the
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`selection request to select the one cell; and (5) providing, in the virtual game, an item
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`of the extracted items that is associated with the one cell to a user of the user terminal.
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`The differences among the independent claims relate to how the elements are
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`implemented.
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`43. Claim 1, for example, recites a game control method executed by a
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`game server that performs elements (1) through (5). Ex. 1003 at 13:43-64. Claim 4
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`recites a game server comprising a memory in which each of a plurality of cells is
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`associated with each of extracted items extracted from the memory (element (1)),
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`and a controller configured to perform elements (2) through (5). Id. at 14:9-33.
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`18
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`Supercell
`Exhibit 1007
`Page 19
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`Claim 9 recites a non-transitory computer readable recording medium having stored
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`thereon instructions to be executed on a computer to cause the computer to perform
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`elements (1) through (5). Id. at 14:61-15:17.
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`44. Claims 2, 5, and 13 recite that “the information for differentiating the
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`display of the one cell includes information for differentiating a pattern of the one
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`cell according to the item type of the item associated with the one cell.” Ex. 1003 at
`
`13:65-14:2; 14:34-38; 16:8-13. Claims 3, 6, and 14 recite that “the information sent
`
`to the user terminal for displaying the sheet includes information of a character to be
`
`displayed in each of the plurality of cells, the character indicating a rarity value of
`
`each item associated with each cell.” Id. at 14:3-8; 14:39-44; 16:14-20. Claims 7,
`
`8, and 12 recite that the obtainable item information is displayed as numerical values
`
`(e.g., “at least one of (i) a numerical value indicating the total number of items for
`
`each item type, (ii) a numerical value indicating the number of obtained items and
`
`(iii) a numerical value indicating the number of un-obtained items”). Id. at 14:45-
`
`60; 15:24-16:7. Claims 10, 11, and 15 recite that “the obtainable item information
`
`is assigned for each user based on identification information unique to each user.”
`
`Id. at 15:18-23; 16:21-24.
`
`B.
`Prosecution History
`45. The ’832 patent was filed on August 2, 2018 as Application Serial No.
`
`16/053,149 (“the ’149 application”), and claims priority to U.S. Application Serial
`
`
`
`19
`
`Supercell
`Exhibit 1007
`Page 20
`
`
`
`
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`No. 14/409,219 (“the ’219 application”), filed December 18, 2014, issued as U.S.
`
`Patent No. 10,076,708, which claims priority to PCT Application Serial No.
`
`PCT/JP2013/003899, filed on June 21, 2013. Foreign priority is claimed back to
`
`Japanese Application No. 2012-140213, filed June 21, 2012.
`
`46. The ’149 application was originally filed with claims 1-9, and assigned
`
`to art unit 3714. See Prosecution History of U.S. Patent No. 10,413,832 (“Ex. 1004”)
`
`at 183, 190. On January 11, 2019, a Non-Final Office Action was issued in the ’149
`
`application, rejecting claims 1-9 under 35 U.S.C. 103 as unpatentable over U.S.
`
`Patent Pub. No. 2005/0282634 (Yamada) in view of U.S. Patent Pub. No.
`
`2011/0124415 (Shimono). Id. at 86-90. In an amendment filed on April 2, 2019,
`
`Applicant amended
`
`the claims
`
`to
`
`incorporate
`
`the element “wherein
`
`the
`
`differentiating of the display of the one cell is done in response to the selection
`
`request to select the one cell” and added new dependent claims 10-15. Id. at 25-33.
`
`In addition, Applicant argued that the amended claims were distinguishable over
`
`Yamada because:
`
`
`
`20
`
`Supercell
`Exhibit 1007
`Page 21
`
`
`
`
`
`
`
`47. The examiner issued a Notice of Allowance on May 7, 2019. Id. at 8.
`
`48. No rejection was raised under 35 U.S.C. § 101 during prosecution of
`
`the ’832 patent. See generally Ex. 1004.
`
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION
`49.
`It is my understanding that “[i]n an inter partes review proceeding, a
`
`claim of a patent…shall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),
`
`including construing the claim in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and the
`
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`50.
`
`I am not a patent attorney and my opinions are limited to what I believe
`
`a POSITA would have understood the meaning of certain claim terms to be, based
`
`on the patent specifications and prosecution histories.
`
`
`
`21
`
`Supercell
`Exhibit 1007
`Page 22
`
`
`
`
`
`51.
`
`In my opinion, a POSITA would have had no difficulty applying the
`
`plain and ordinary meanings of the majority of terms used in the claims.
`
`52.
`
`I understand that Patent Owner GREE has submitted a claim
`
`construction brief in the related litigation requesting the construing of the term
`
`“character” as “attribute,” and that “plain and ordinary meaning” should be applied
`
`to all other claim terms. Ex. 1023. For the purposes of this petition, I will adopt
`
`GREE’s proposed constructions.
`
`VIII. ANTICIPATION AND OBVIOUSNESS STANDARDS
`53.
`I understand that “anticipation” is a question of fact and that for a
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`reference to anticipate a claimed invention it must disclose each and every element
`
`set forth in the claim for that invention. I further understand that the requirement of
`
`strict identity between the claim and the reference is not met if a single element or
`
`limitation required by the claim is missing from the applied reference.
`
`54.
`
`It is further my understanding that a statement by an applicant in the
`
`specification or made during prosecution identifying the work of another as “prior
`
`art” is an admission which can be relied upon as evidence for both anticipation and
`
`obvious determinations involving one or more prior art patents or printed
`
`publications, regardless of whether the applicant admitted prior art (“AAPA”) would
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`otherwise qualify as prior art.
`
`
`
`22
`
`Supercell
`Exhibit 1007
`Page 23
`
`
`
`
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`55.
`
`It is my further understanding that a prior art reference is anticipatory
`
`only if it discloses each and every limitation of the claim (as properly construed) at
`
`issue. In other words, every limitation of a claim must identically appear in a single
`
`prior art reference for it to anticipate a claim.
`
`56.
`
`It is further my understanding that a claimed invention is unpatentable
`
`if the differences between the invention and the prior art are such that the subject
`
`matter of the claim as a whole would have been obvious at the time the invention
`
`was made to a person having ordinary skill in the art to which the subject matter
`
`pertains (i.e., a POSITA).
`
`57.
`
`It is my understanding that obviousness is a question of law based on
`
`underlying factual issues including (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the asserted claims, (3) the level of ordinary
`
`skill in the pertinent art, and (4) the existence of secondary considerations such as
`
`commercial success, long-felt but unresolved needs, failure of others, etc.
`
`58.
`
`I understand that for a single reference or a combination of references
`
`to render obvious the claimed invention, a POSITA must have been able to arrive at
`
`the claims by altering or combining the applied references.
`
`59.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`
`
`23
`
`Supercell
`Exhibit 1007
`Page 24
`
`
`
`
`
`but other times the nexus linking two or more prior art references is simple common
`
`sense. I further understand that obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`60.
`
`I understand that if a technique has been used to improve one device or
`
`product, and a POSITA would recognize that it would improve similar devices or
`
`products in the same way, using the technique is obvious unless its actual application
`
`is beyond his or her skill.
`
`61.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a POSITA
`
`looking to overcome a problem will often be able to fit together the teaching of
`
`multiple publications. I understand that obviousness analysis therefore takes into
`
`account the inferences and creative steps that a POSITA would employ under the
`
`circumstances.
`
`62.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a POSITA has good reason to pursue the
`
`
`
`24
`
`Supercell
`Exhibit 1007
`Page 25
`
`
`
`
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`known options within his or her technical grasp because the result is likely the
`
`product not of innovation but of ordinary skill and common sense.
`
`63.
`
`I also understand that the combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield predictable
`
`results. When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variation of it, either in the same field or a different
`
`one. If a PO
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