UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`The Honorable Rodney Gilstrap
`
`
`Civil Action No. 2:19-cv-00310-JRG
`
`
`JURY TRIAL DEMANDED
`
`
`§§§§§§§§§§
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`GREE, INC.,
`
`
`v.
`
`
`SUPERCELL OY,
`
`
`
`
`
`
`
`DEFENDANT SUPERCELL OY’S INVALIDITY CONTENTIONS
`AND DISCLOSURES UNDER LOCAL PATENT RULES 3-3 AND 3-4
`
`Pursuant to Patent Rules 3-3 and 3-4, the Court’s Docket Control Order (Dkt. No. 31), and
`
`the Court’s Discovery Order (Dkt. No. 32), Defendant Supercell Oy (“Supercell” or “Defendant”)
`
`serve these Preliminary Invalidity Contentions (“Invalidity Contentions”) addressing how claims
`
`1 – 3 of U.S. Patent No. 10,076,708 (“the ’708 Patent”) and claims 1 – 15 of U.S. Patent No.
`
`10,413,832 (“the ’832 Patent”) (collectively referred to as the “Asserted Patents”) are invalid.
`
`Supercell’s discovery and investigation in this lawsuit are ongoing, and therefore,
`
`Supercell reserves the right to revise, amend, and/or supplement these Preliminary Invalidity
`
`Contentions as discovery progresses and as it discovers additional information.
`
`I.
`
`RESERVATIONS AND OBJECTIONS
`A.
`
`General Reservations
`
`Pursuant to P.R. 3-6, Supercell reserves the right to amend or supplement these Preliminary
`
`Invalidity Contentions should GREE: (1) amend its P.R. 3-1 or 3-2 disclosures, including but not
`
`limited to amending such disclosures based on GREE’s review and analysis of source code made
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 1 of 20
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`available by Supercell; or (2) at trial, in a hearing, or during a deposition, rely upon any information
`
`that it failed to identify in its P.R. 3-1 and 3-2 disclosures. Supercell also reserves the right to
`
`amend or supplement these Preliminary Invalidity Contentions in accordance with Paragraph 3(a)
`
`of the Court’s Discovery Order. Supercell provides the disclosures below, as well as the
`
`accompanying production of documents, in compliance with P.R. 3-3 and 3-4.
`
`The information provided should not be deemed an admission regarding the scope of any
`
`claims or the proper construction of those claims or any terms contained therein. Supercell’s
`
`claim construction disclosures will be provided under P.R. 4 as required by the Court’s Docket
`
`Control Order. Nothing contained in these Preliminary Invalidity Contentions should be
`
`understood or deemed to be an express or implied admission or contention with respect to the
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`proper construction of any terms in an asserted claim, or with respect to the alleged infringement
`
`of that claim.
`
`Nothing in these disclosures should be treated as an admission that Supercell is obligated
`
`to produce documentation not under its custody or control, or that can be obtained from some
`
`other source that is more convenient, less burdensome and/or less expensive, or for which the
`
`burden or expense outweighs its likely benefit. Supercell expressly reserves the right to revise,
`
`amend, and/or supplement its disclosures and document production should additional
`
`documentation become available.
`
`B.
`
`GREE’s Deficient Infringement Contentions
`
`Supercell notes that GREE’s Infringement Contentions and related disclosures are
`
`deficient in that they fail to comply with P.R. 3-1 and 3-2 because they fail to give adequate
`
`notice regarding the details of GREE’s infringement theories. The lack of detail and deficiencies
`
`contained in GREE’s Infringement Contentions have prejudiced Supercell’s ability to prepare
`
`2
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 2 of 20
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`these Preliminary Invalidity Contentions, including forcing Supercell to speculate as to GREE’s
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`actual position(s) on Supercell’s alleged infringement and the meaning of various claim terms.
`
`The exhibit attached to the cover pleading purporting to disclose GREE’s infringement
`
`positions also fails to put Supercell on adequate notice of GREE’s positions regarding the alleged
`
`infringement of the Asserted Claims and/or Asserted Patents by Supercell’s products and/or
`
`services. The exhibit is comprised of vague conclusions that fail to identify “specifically where
`
`each element of each asserted claim is found within each Accused Instrumentality” as required by
`
`P.R. 3-1(c).
`
`Supercell’s Invalidity Contentions are based on its present understanding of the Asserted
`
`Claims and GREE’s apparent positions as to the scope of the Asserted Claims as applied in its
`
`P.R. 3-1 disclosures. Supercell’s Invalidity Contentions (including the attached invalidity claim
`
`charts) reflect, to the extent possible, its best understanding as to GREE’s potential alternative or
`
`evolving positions on claim construction and scope. Supercell reserves the right to revise, amend,
`
`and/or supplement these Preliminary Invalidity Contentions and/or its P.R. 3-4 disclosures should
`
`GREE amend its P.R. 3-1 disclosures, including but not limited to amending such disclosures
`
`based on GREE’s review and analysis of source code made available by Supercell, or attempt to
`
`rely on any information that it failed to provide in its P.R. 3-1 and 3-2 disclosures.
`
`C.
`
`Asserted Claims
`
`GREE purports to assert the following claims against Supercell from the Asserted Patents:
`
`claims 1 – 3 of the ’708 Patent and claims 1 – 15 of the ’832 Patent. These preliminary invalidity
`
`contentions address only the Asserted Claims. Supercell reserves the right to supplement these
`
`contentions if GREE asserts infringement of any claim other than the Asserted Claims.
`
`GREE, however, has failed to comply with its obligation to provide a chart identifying
`
`specifically where each element of each asserted claim is found within each Accused
`
`3
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 3 of 20
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`Instrumentality under P.L.R. 3-1(c). Where GREE has failed to provide such a chart and
`
`identification, Supercell has deferred providing invalidity disclosures. Should GREE seek to
`
`amend its infringement contentions to properly assert these claims, Supercell reserves the right to
`
`amend its invalidity contentions in response. These preliminary infringement contentions, thus,
`
`address only the Asserted Claims, which have been asserted in compliance with the Patent Local
`
`Rules. Supercell reserves the right to supplement these contentions if GREE asserts infringement
`
`of any claim other than the Asserted Claims.
`
`D.
`
`Ongoing Discovery
`
`Discovery is ongoing, and Supercell’s prior art investigation and third-party discovery are
`
`as well. As such, Supercell reserves the right to revise, amend, and/or supplement the information
`
`provided herein, including identifying, charting, and relying on additional material or references.
`
`Supercell further reserves the right to amend, modify, or supplement these Invalidity Contentions
`
`to include additional prior art under 35 U.S.C. §§ 102 and/or 103, or assert additional bases of
`
`invalidity under 35 U.S.C. §§ 101, 102, 103 and/or 112, as discovery in this action and
`
`Supercell’s investigation proceeds. In particular, Supercell intends to rely upon additional
`
`discovery, including but not limited to third party discovery, which is in its early stages, to obtain
`
`additional information regarding prior art games, including the relevant version of the prior art
`
`games, declarations and source code.
`
`E.
`
`Claim Construction
`
`Without conceding any express or implied claim construction suggested by GREE through
`
`its Infringement Contentions, Supercell has attempted to apply the prior art to the Asserted
`
`Claims. GREE’s application of those constructions are in some instances broader than
`
`Supercell’s contentions regarding the proper scope of the claims. Should the claims be construed
`
`or asserted differently than Supercell’s current understanding of the claims, Supercell reserves the
`
`4
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 4 of 20
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`right to modify, amend, or supplement these Preliminary Invalidity Contentions as provided by
`
`the Local Rules and the Federal Rules of Civil Procedure.
`
`Supercell’s Preliminary Invalidity Contentions should not be construed as a suggestion or
`
`admission that GREE’s apparent claim constructions are correct. Indeed, in many instances,
`
`Supercell objects and disagrees with the apparent claim constructions GREE has offered in
`
`GREE’s Infringement Contentions as such constructions (1) are unsupported or contradicted by
`
`the intrinsic and extrinsic record relating to the Asserted Patents and applications related thereto,
`
`(2) would impermissibly read out one or more limitations of the Asserted Claims, or (3) are
`
`otherwise inconsistent with the understanding of a person of ordinary skill in the art. Supercell’s
`
`Preliminary Invalidity Contentions should not be construed to suggest that any claim term or
`
`phrase complies with 35 U.S.C. § 112. Finally, Supercell’s Preliminary Invalidity Contentions
`
`should not be construed as a suggestion or admission of infringement because Supercell
`
`specifically denies that it infringes any Asserted Claim.
`
`Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions to reflect positions taken by the parties during the claim construction process.
`
`Further, Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions in the event the Court adopts claim constructions different than those anticipated by
`
`Supercell. Supercell expressly reserves and does not waive its right to contest any claim
`
`constructions, or to take positions during claim construction proceedings or in connection with
`
`alleged infringement, that are inconsistent with, or even contradictory to, the positions set forth in
`
`these Invalidity Contentions.
`
`5
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 5 of 20
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`F.
`
`Cited References and Prosecution File History as Sources of Additional Prior
`Art
`
`Supercell also intends to rely upon prior art cited during the prosecution of the Asserted
`
`Patents, as well as the prosecution of related patents/applications, as invalidating references or to
`
`show the state of the art. Supercell incorporates by reference each and every admission, including
`
`the patent applicant’s admissions concerning the scope of the prior art, and each and every prior art
`
`reference of record, which may be found in the file history of the Asserted Patents or related
`
`applications/patents, and each and every argument and rejection, on whatever grounds, by the
`
`examiners during the prosecution of the Asserted Patents. The subject matter of these admissions
`
`and prior art references is set forth in the Asserted Patents and the related applications/patents and
`
`the associated prosecution files, and their relevance and ability to be combined with other prior art
`
`set forth herein to render the Asserted Patents obvious will be apparent.
`
`G.
`
`Contextual Evidence
`
`Supercell’s Preliminary Invalidity Contentions cite to exemplary portions of the cited prior
`
`art references. The citations to exemplary portions of the prior art references should not be
`
`construed to mean that other portions of the prior art references are not relevant to the invalidity
`
`of the Asserted Claims. To the contrary, the citations are intended to put GREE on notice of the
`
`bases for Supercell’s contentions, but are not intended as a complete recitation of all support for
`
`those contentions. Supercell reserves the right to rely on the entirety of any, or any part of, the
`
`prior art references, whether charted or not charted, as a basis for asserting invalidity of the
`
`Asserted Claims.
`
`Furthermore, persons having ordinary skill in the art would view an item of prior art in the
`
`context of their experience and training, other publications, literature, products and general
`
`understanding. As such, the cited portions are exemplary, and Supercell may rely on uncited
`
`6
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 6 of 20
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`portions of the prior art references, and other documents, such as statements in the cited
`
`references of the specifications, the prosecution history, and related applications/patents of the
`
`Asserted Patents, and fact and expert testimony and documents not yet discovered, to provide
`
`background, context, or to otherwise aid in understanding the cited portions of the prior art
`
`references. Citations to a figure in a reference should be understood to encompass the caption and
`
`description of the figure and any text relating to the figure. Likewise, citations to text referring to
`
`a figure should be understood to include the corresponding figure as well. Prior art not included
`
`in these disclosures, whether known or not known to Supercell, may become relevant, and
`
`Supercell reserves the right to supplement its Preliminary Invalidity Contentions to identify and
`
`rely upon this prior art.
`
`Additionally, the suggested obviousness combinations in Supercell’s Preliminary
`
`Invalidity Contentions are provided in the alternative and should not be construed to suggest that
`
`any reference included in the combinations is not by itself anticipatory. Supercell is currently
`
`unaware of the extent, if any, to which GREE will contend that Supercell’s anticipatory references
`
`do not disclose limitations of the Asserted Claims. To the extent that GREE contends that any of
`
`Supercell’s anticipatory references are missing one or more limitation of the Asserted Claims,
`
`Supercell reserves the right to counter such assertions by further reference to Supercell’s
`
`anticipatory references and/or to identify other references, combinations of references, and/or
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`knowledge of a person of ordinary skill in the art that disclose the limitation(s) allegedly missing
`
`in the anticipatory reference(s) to render the Asserted Claims invalid.
`
`H.
`
`Rebuttal Evidence
`
`Additional prior art, whether known or not known to Supercell as of the date of these
`
`contentions, may become relevant depending on GREE’s arguments regarding the scope of the
`
`disclosure of the prior art identified herein. In particular, Supercell is currently unaware of the
`
`7
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 7 of 20
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`extent, if any, to which GREE will contend that limitations of the Asserted Claims are not
`
`disclosed in the prior art identified by GREE. To the extent such an issue arises, Supercell
`
`reserves the right to identify other references that would anticipate or render obvious the allegedly
`
`missing limitation(s).
`
`II.
`
`P.R. 3-3 INVALIDITY CONTENTIONS
`A.
`
`P.R. 3-3(a) Disclosures
`
`The concepts disclosed and claimed in the Asserted Claims are not new, and had been
`
`disclosed and actively practiced by others prior to the claimed invention date. The prior art
`
`includes various documents, products, patents and inventions that separately and together render
`
`the Asserted Claims invalid. In addition, as described in more detail below, claims of the
`
`Asserted Claims are invalid under 35 U.S.C. §§ 101 and 112.
`
`Supercell asserts that the prior art listed in Exhibits A and B and in the Tables below,
`
`individually or in combination, invalidates the Asserted Claims. These prior art references
`
`disclose each and every limitation of one or more of the Asserted Claims either explicitly,
`
`inherently, or via an obvious combination and may also be relied upon to show the state of the art
`
`in the relevant timeframes. The following patents and publications are prior art under at least 35
`
`U.S.C. §§ 102(a), (b), (e), or (g).
`
`TABLE 1: Prior Art Patent, Patent Applications, and Publications
`Anticipating the Asserted Claims
`
`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`U.S. Patent No. 8663014 to
`Xu, et al.
`
`United States
`
`March 4, 2014
`
`Xu
`
`JP Patent Publication No.
`2008/093165 to Kamiyama
`
`Japan
`
`April 24, 2008
`
`Kamiyama
`
`8
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 8 of 20
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`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`U.S. Patent Pub. No.
`2011/0250954 to Braund
`
`Japanese Patent No.
`4197464B2 to Matsuzo
`
`United States
`
`October 13, 2011 Braund
`
`Japan
`
`January 1, 2005 Matsuzo
`
`U.S. Patent No. 7,618,325 to
`Yamada, et al.
`
`United States
`
`November 17,
`2009
`
`Yamada
`
`
`
`TABLE 2: Non-Patent Prior Art Including Publications and Items
`Used, Known of, and/or Offered for Sale that Anticipate
`the Asserted Claims1
`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for Sale,
`Sold, Publicly Used or Made Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`Mafia Wars, Zynga*
`
`FarmVille, Zynga*
`
`Initially released on
`Facebook, and later as
`an iOS app on April 8,
`2009.
`
`First released for the
`Facebook platform on
`June 19, 2009
`
`“FarmVille for Dummies” by Angela
`Morales and Kyle Orland, ISBN: 978-1-
`118-01696-1
`
`2011
`
`Mafia Wars
`
`FarmVille
`
`FarmVille for
`Dummies
`
`Final Fantasy XIV, Square Enix*
`
`Between September 10,
`2010 and November 11,
`2012
`
`Final Fantasy XIV
`
`
`1 Supercell intends to rely upon prior art related to video games for the Asserted Patents. Such
`video game prior art references have been identified in Tables 1-2 with an asterisk (*). In the
`corresponding charts in Exhibits A and B, Supercell has provided visual representations of the
`relevant features and functionalities using publicly available prior art videos, manuals, webpages, or
`other material. Supercell will rely upon third party discovery, which is in its early stages, to obtain
`the relevant version of the prior art games for use at trial. Supercell reserves the right to assert prior
`art related to games as a prior art system, as printed publications, or both.
`
`9
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 9 of 20
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`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for Sale,
`Sold, Publicly Used or Made Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`World of Warcraft, Blizzard
`Entertainment*
`
`2004
`
`WoW
`
`B.
`
`P.R. 3-3(b)
`1.
`Anticipatory Prior Art
`
`The attached claim charts in Exhibits A and B demonstrate where each limitation of the
`
`anticipated claims is found in certain of the references listed below, either expressly or inherently
`
`in the larger context of the passage, or inherently as the reference as a whole is understood by a
`
`person having ordinary skill in the art.
`
`2.
`
`Obvious Combinations
`
`The Asserted Claims are invalid as obvious under 35 U.S.C. § 103. Each Anticipatory
`
`Reference, either alone or in combination with the other identified prior art, and/or in combination
`
`with the knowledge of one skilled in the art, renders the Asserted Claims invalid as obvious. In
`
`particular, each anticipatory prior art reference may be combined with (1) information known to
`
`persons skilled in the art at the time of the alleged invention, (2) any of the other anticipatory
`
`prior art references, and/or (3) any of the additional prior art identified below in these Invalidity
`
`Contentions. The accompanying claim charts and tables below provide exemplary obviousness
`
`combinations under 35 U.S.C. § 103. The disclosed combinations are not meant to be exhaustive.
`
`Supercell is not aware of how Plaintiff may attempt to distinguish the prior art cited herein, and
`
`reserves the right to identify other references that would have supplied the allegedly missing
`
`element to render the Asserted Claims obvious. Accordingly, to the extent that Plaintiff contends
`
`that any of the Anticipatory References fails to disclose one or more limitations of the asserted
`
`claims, Supercell reserves the right to identify other prior art references that, when combined with
`
`10
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 10 of 20
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`the anticipatory prior art, would render the claims obvious despite the allegedly missing
`
`limitation.
`
`In addition, Supercell incorporates by reference each and every prior art reference of
`
`record in the prosecution of the Asserted Patents and related applications (including applications
`
`referenced in or incorporated by reference in the Asserted Patents), including the statements made
`
`therein by the applicant and the examiner, the prior art discussed in the specification, and any
`
`other statements found in the intrinsic record.
`
`Supercell identifies the specific combinations that render the Asserted Claims obvious in
`
`the claim charts attached in Exhibits A and B. Where each element is disclosed in each prior art
`
`reference is shown in attached claim charts in Exhibits A and B. Further, Supercell identifies the
`
`following exemplary combinations that render the Asserted Claims obvious:
`
`TABLE 3: Exemplary Obviousness Combinations for the ’708 Patent
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-3
`
`1-3
`
`1-3
`
`1-3
`
`Mafia Wars
`
`FarmVille, Xu, Kamiyama, Daily Rewards –
`Zynga Planet.
`
`FarmVille, by Zynga
`
`“Daily Rewards – Zynga Planet”
`
`Xu
`
`FarmVille, Kamiyama, Daily Rewards – Zynga
`Planet.
`
`Kamiyama
`
`FarmVille, Xu, Daily Rewards – Zynga Planet.
`
`11
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 11 of 20
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`TABLE 4: Exemplary Obviousness Combinations for the ’832 Patent
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`1-15
`
`Braund
`
`FarmVille
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`Xu, Kamiyama, FFXIV
`
`FarmVille for Dummies
`
`Xu, Kamiyama, FFXIV
`
`Final Fantasy XIV
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`Kamiyama
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`Matsuzo
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`World of Warcraft
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`Xu
`
`Yamada
`
`FarmVille, Kamiyama, FFXIV
`
`Xu, FarmVille, Kamiyama, FFXIV
`
`3.
`
`Motivations to Combine
`
`A person of skill in the art would have been motivated to combine each of the above
`
`referenced combinations of prior art as provided in the claim charts attached in Exhibits A and B,
`
`and as further provided in Table 3 and Table 4. As the United States Supreme Court held in
`
`KSR International Co. v. Teleflex Inc., “[t]he combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable results.”
`
`12
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 12 of 20
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`

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`550 U.S. 398, 416 (2007).2 The Supreme Court further held that, “[w]hen a work is available in
`
`one field of endeavor, design incentives and other market forces can prompt variations of it, either
`
`in the same field or a different one. If a person of ordinary skill can implement a predictable
`
`variation, §103 likely bars its patentability. For the same reason, if a technique has been used to
`
`improve one device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill. . . .” Id. at 417. Accordingly, a person of skill in the art
`
`would have been motivated to combine or adapt known or familiar methods in the art, especially
`
`where market forces prompt such variations.
`
`To a person of ordinary skill in the art, the Asserted Claims represent solutions that would
`
`have been obvious to try, with predictable results. As an initial matter, the scope and content of
`
`the prior art is extensive. Video game design and development, particularly with a focus on the
`
`Internet, burgeoned in the 1990s and early 2000s and the industry followed a trajectory mirroring
`
`the rapid explosion and rising popularity of consumer-level Internet usage in both the United
`
`States and around the world. Accordingly, the combination or modification of the prior art
`
`references disclosed herein would have no unexpected results and at most would simply represent
`
`a known alternative to one of skill in the art.
`
`The combinations expressly identified below and in the attached charts would have been
`
`combined or modified using: known methods to yield predictable results; common sense; known
`
`techniques in the same way; a simple substitution of one known, equivalent element for another to
`
`obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art generally.
`
`
`2 Pursuant to P. R. 3-3, Supercell has included this section discussing motivation to combine. In
`KSR v. Teleflex, however, the Supreme Court rejected the idea that a “teaching, suggestion, or
`motivation to combine” is a prerequisite for obviousness.
`
`13
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 13 of 20
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`In addition, it would have been obvious to try combining or modifying the prior art references
`
`identified herein because there were only a finite number of predictable solutions and/or because
`
`known work in one field of endeavor prompted variations based on predictable design incentives
`
`and/or market forces either in the same field or a different one. In addition, the combinations of
`
`the prior art references would have been obvious because the combinations represent known
`
`potential options with a reasonable expectation of success.
`
`Here, each combination identified in Table 3 and Table 4 would have been obvious
`
`considering at least the state of the art, common sense, the knowledge of one of ordinary skill in
`
`the art, and motivation and teachings present on the face of the Asserted Patents and disclosed
`
`references. For instance, a person of skill in the art would be familiar with executing games both
`
`as a game program pre-installed in a terminal device and as an online game that is wirelessly
`
`connected to a game server apparatus over a network. A person of skill in the art would further be
`
`familiar with platforms used for playing video games, including network-capable platforms, such
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`as personal computers, video game consoles, smartphones, and other mobile devices, and would
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`further be familiar with the conventional wisdom of the industry to maximize game features
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`enabled by such hardware, such as displays, touch screen input, network based multiplayer in-
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`game design. A person of ordinary skill in the art would also be familiar with, and motivated to
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`combine, games that are related to each other, such as games within the same genre or games
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`created by the same developer or publisher. For instance, a person of skill in the art who is
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`familiar with multiplayer social network games such as disclosed in Mafia Wars or Farmville by
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`Zynga would be familiar with the mechanics, rules, and techniques for displaying and managing
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`virtual games and inventories within those worlds as disclosed in Kamiyama and Xu and the
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`variations on providing game items such as the randomness disclosed in “Daily Rewards – Zynga
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`Planet.”
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`Further, a person of skill in the art who is familiar with multiplayer social network games
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`like FarmVille, would also be familiar with the mechanics shown in popular massively
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`multiplayer online role-playing games (MMORPG) such as Final Fantasy XIV and World of
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`Warcraft, and the known mechanics, rules, and techniques for displaying and managing virtual
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`inventories in those games or as disclosed in Xu, Yamada, Matsuzo, Kamiyama, and Braund.
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`Further, for instance, a person of skill in the art who is familiar with the design elements and
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`operation of social networking and location-based games, such as disclosed in Xu, would also be
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`familiar with the display and mechanics for obtaining, collecting, and using of virtual items
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`within those games or virtual worlds according to a predetermined set of rules, as disclosed in
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`Braund, and would also be familiar with popular world-building games such as FarmVille or
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`MMORPGs such as Final Fantasy XIV or World of Warcraft. Further, such a skilled artisan
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`would be familiar with the design elements and mechanics disclosed in Kamiyama, Matsuzo,
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`Yamada, and Braund, related to inventory management.
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`Moreover, the Supreme Court held that “familiar items may have obvious uses beyond
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`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” Id. at 421. Indeed, the Supreme
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`Court held that it is sufficient that a combination of elements was “obvious to try” holding that,
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`“[w]hen there is a design need or market pressure to solve a problem and there are a finite number
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`of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known
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`options within his or her technical grasp.” Id. The combinations shown in each claim chart
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`would have yielded results predictable to one of ordinary skill in the art at the time of the alleged
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`invention, and one of ordinary skill would have been motivated to make such a combination
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`based on the similar nature of the problems they address and solve. For instance, as disclosed in
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`the Asserted Patents and the prior art, such as Mafia Wars, Farmville, and Daily Rewards – Zynga
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`Planet there was a need to increase user enjoyment in multiplayer online games by providing a
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`variety of ways for players to acquire in-game items including providing predictable ways for
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`users to acquire items of varying rarity. See, e.g., ’708 patent at 1:47-53. Thus, there was a
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`motivation in multiplayer online games to provide for such management of in-game inventory as
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`described in the ’708 patent. As shown by the various prior art references providing for such in-
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`game inventory management through providing for the selection of in-game items of varying
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`rarity values, was routine, and the level of predictability in video games, of providing for such
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`game management, is high. Inclusion of this feature is obvious to achieve the goal disclosed in
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`the Asserted Patents and the prior art.
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`While not necessary, a motivation to combine may also be found in the references
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`themselves. One of skill in the art would be motivated to combine a reference that refers to, or
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`otherwise explicitly invites combination with, another reference, either by specific mention of the
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`other reference or a general discussion of the category to which the other reference relates. Many
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`of the references cited herein have such an explicit invitation to combine, which would cause one
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`of skill in the art to combine any such references. Supercell may contend that the above-
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`described motivations to combine apply to other combinations.
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`C.
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`P.R. 3-3(c)
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`Pursuant to P.R. 3-3(c), attached as Exhibit A and B are charts identifying, for the Asserted
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`Patents, each corresponding claim element for certain prior art references identified in Table 1 and
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`Table 2.
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`D.
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`P.R. 3-3(d)
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`In accordance with P.R. 3-3(d), Supercell contends certain Asserted Claims are invalid
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`under 35 U.S.C. § 112(2) on the basis of indefiniteness. The following identification of
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`claims/claim limitations are exemplary, and Supercell reserves the right to supplement the
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`identification of claims and claim limitations that do not comply with the requirements of 35
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`U.S.C. § 112. Specifically, to the extent a limitation identified below, or its variation, appears in
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`claims other than the ones specified below, it also renders those additional claims invalid under
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`35 U.S.C. § 112. Claims that depend on these additional claims and on the claims identified
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`below are also invalid under 35 U.S.C. § 112. Supercell reserves the right to identify additional
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`claims and claim limitations that do not comply with the requirements of 35 U.S.C. § 112 after
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`the Court construes the claims.
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`At least the following claim limitations render at least the identified claims invalid for
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`failing to meet the requirements of 35 U.S.C. § 112(2):
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` The term “the server” recited in claims 1, 2, and 3 of the ’708 patent,
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` The term “each of extracted items extracted from the memory,” recited in claims
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`1, 4, 9 and their dependent claims of the ’832 patent.
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`E.
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`Invalidity under 35 U.S.C. § 101
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`The claims of the Asserted Patents do not contain patentable subject matter and are
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`therefore invalid under 35 U.S.C. § 101. All of the claims of the Asserted Patents consist of
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`nothing more than the application of