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IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`
`RAJIV P. PATEL, Reg. No 39,327
`BRIAN HOFFMAN, Reg. No. 39,713
`JENNIFER R. BUSH, Reg. No. 50,784
`KEVIN X. McGANN, Reg. No. 48,793
`MICHAEL J. SACKSTEDER (pro hac vice)
`GEOFFREY R. MILLER (pro hac vice)
`EMILY J. BULLIS (pro hac vice)
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case No. IPR2020-01628
`Patent 9,561,439
`_____________
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.108(c)
`
`
`
`
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`
`Page
`
`The Fintiv Factors Favor Institution ............................................................... 1
`
`Gree Mischaracterizes “Storing a Correspondence” ...................................... 6
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`i
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Apple v. Fintiv,
`IPR 2020-00019 ........................................................................................ 1, 2, 4, 5
`
`Comcast Cable Commc’ns, LLC v. Veveo, Inc.,
`IPR 2019-00239 .................................................................................................... 1
`
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) .................................... 1, 2, 4
`
`Uniloc United States v. Avaya Inc.,
`Civ. Nos. 6:15-CV-01168, 6:16-CV-223, 6:16-CV-225-, JRG,
`2017 U.S. Dist. LEXIS 168855 (E.D. Tex. April 19, 2017) ................................ 3
`
`STATUTES AND RULES
`
`35 U.S.C. § 314 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`Correspondence, Cambridge English Dictionary (10th ed 2021),
`available at
`https://dictionary.cambridge.org/us/dictionary/english/correspondence ............. 6
`
`ii
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`EXHIBIT LIST (37 CFR § 42.63(E))
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 9,561,439 to Oono
`
`1002
`
`Prosecution History of U.S. Patent No 9,561,439
`
`1003
`
`Declaration of Dr. Emmet J. Whitehead, Jr.
`
`1004
`
`1005
`
`U.S. Patent Application Publication No. 2011/0300926 A1 to Englman
`et al.
`
`U.S. Patent Application Publication No. 2013/0190094 A1 to Ronen et
`al.
`
`1006
`
`U.S. Patent No. 8,376,838 B2 to Schulhof et al.
`
`1007 World of Warcraft, Guild Advancement and You, (Jan. 21, 2011),
`https://worldofwarcraft.com/en-us/news/2113741/guild-advancement-
`and-you
`
`1008
`
`Arc Games, Forsaken World – Overview – Guild Contribution, (Mar.
`29, 2011) https://www.arcgames.com/en/games/forsaken-
`world/news/detail/1077620-forsaken-world-___-free-mmorpg-___-
`overview-_-guild-contribution
`
`1009 MMORPG, Divina – Unique Guild System, (May 12, 2012),
`https://www.mmorpg.com/divina/developer-journals/unique-guild-
`domain-system-2000093507
`
`1010
`
`U.S. Patent Application Publication No. 2014/0024462 A1 to Qiang et
`al.
`
`1011
`
`U.S. Patent Application Publication No. 2012/0157212 A1 to Kane et al.
`
`1012
`
`U.S. Patent Application Publication No. 2012/0071245 A1 to Kotkin et
`al.
`
`1013
`
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
`
`iii
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Exhibit
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`Description
`
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post-Grant (July 24, 2020),
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-slip-
`after-ptab-discretionary-denials/
`
`Scott McKeown, Congress Urged to Investigate PTAB Discretionary
`Denials, Patents Post-Grant (June 30, 2020),
`https://www.patentspostgrant.com/congress-urged-to-investigate-ptab-
`discretionary-denials/
`
`Order (Granting Continuance of In-Person Jury Trials) (Dkt. 261),
`entered on November 20, 2020, Infernal Technology, LLC, et al. v. Sony
`Interactive Entertainment LLC, Case. No. 19-cv-00248 (E.D. Texas)
`
`Katie Buehler, COVID-19 Outbreak Leads to Mistrial in EDTX,
`Law360 (Nov. 17, 2020),
`https://www.law360.com/articles/1329617/covid-19-outbreak-leads-to-
`mistrial-in-edtx
`
`Sixth Amended Docket Control Order [Dkt 94], entered on October 23,
`2020, Case No. 19-cv-00311 (E.D. Texas)
`
`GREE, Inc.’s Amended Disclosure of Asserted Claims and Infringement
`Contentions, served on August 3, 2020, Case No. 19-cv-00311
`(E.D. Texas)
`
`1020 Minute Order re Markman Hearing [Dkt 73], entered on September 1,
`2020, Case No. 19-cv-00311 (E.D. Texas) (resulting in Claim
`Construction Memorandum Opinion and Order [Dkt 86], entered on
`October 13, 2020)
`
`
`
`
`
`iv
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`I.
`
`THE FINTIV FACTORS FAVOR INSTITUTION
`
`Proper application of the Fintiv factors demonstrates that the Board should
`
`not exercise its discretion to deny institution under 35 U.S.C. § 314. First, the
`
`“overlap” factor seeks to avoid inefficiency and the possibility of conflicting
`
`decisions, concerns that are absent here due to the lack of overlap between the
`
`instant IPR and the parallel litigation. Apple v. Fintiv, IPR 2020-00019, Paper 11 at
`
`13 (P.T.A.B. Mar. 20, 2020) (Precedential). The Board recently declined to
`
`exercise its discretion under § 314(a) when a reference cited in the Petition was
`
`not at issue in the litigation. See Snap, Inc. v. SRK Technology LLC, IPR2020-
`
`00820, Paper 15 at 15 (P.T.A.B. Oct. 21, 2020) (Precedential). The addition of the
`
`reference in the IPR rendered “the prior art and arguments included in the
`
`Petition [] materially different than those presented in the District Court.” Id; see
`
`also Comcast Cable Commc’ns, LLC v. Veveo, Inc., IPR 2019-00239, Paper 15 at
`
`14-16 (P.T.A.B. July 5, 2019) (concluding no substantial overlap of obviousness
`
`issues based on difference in challenged claims and asserted references). Such is the
`
`case here. The Schulhof reference is not included in the invalidity contentions in
`
`the litigation, but is used in the Petition for every proposed challenge to
`
`patentability.
`
`GREE falsely minimizes crucial distinctions between the instant IPR and the
`
`parallel
`
`litigation, misleadingly dismissing Schulhof as a “superficial
`
`1
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`inclusion…in the Petition.” POPR at 27. In doing so, GREE ignores that
`
`Petitioner cites Schulhof for the limitation reciting the very solution the ‘439
`
`patent purports to achieve: providing game pieces to each user based on the
`
`parameter value for the corresponding user. Petitioner’s use of Schulhof for
`
`arguably the most important claim limitation is anything but “superficial.”
`
`Rather, the Petition cites portions of Schulhof that clearly disclose awarding
`
`virtual assets to a player based on demonstrated skill level (i.e., the player’s
`
`parameter value). Pet. at 29-30, 41-43. Moreover, Petitioner supports its
`
`invalidity arguments with a strong motivation to combine Schulhof with the
`
`Englman and Ronen references, particularly in light of the common ownership
`
`between Schulhof and the primary reference, Englman. Pet. at 57-62.
`
`Accordingly, this factor favors institution because the grounds presented in
`
`the Petition are materially different from the prior art and arguments in the parallel
`
`proceeding. Such differences “ha[ve] tended to weigh against [the Board]
`
`exercising discretion to deny institution.” Snap, Paper 15 at 15 (citing Fintiv,
`
`Paper 11 at 12-13). The absence of Schulhof from the litigation obviates concerns
`
`of duplicative efforts between the district court and the Board as well as the
`
`possibility of potentially conflicting decisions. To further eliminate any doubt as
`
`to overlap between the proceedings, Petitioner stipulates that, should IPR be
`
`2
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`instituted, Petitioner will not pursue the same grounds in the litigation. See Sand
`
`Revolution, Paper 24 at 11-12.
`
`Regarding the “stay” factor, institution by the PTAB “has been treated as a
`
`highly significant factor in the courts’ determination of whether to stay cases
`
`pending PTAB review.” Uniloc United States v. Avaya Inc., Civ. Nos. 6:15-CV-
`
`01168, 6:16-CV-223, 6:16-CV-225-JRG, 2017 U.S. Dist. LEXIS 168855, *10-11
`
`(E.D. Tex. April 19, 2017). Indeed, GREE acknowledges that E.D. Texas district
`
`court commonly denies motions to stay when the PTAB has yet to institute. POPR
`
`at 7. Accordingly, though no stay has yet been sought, Petitioner stipulates it will
`
`seek a stay in the parallel litigation should the IPR be instituted.
`
`The trial schedule factor relative to the statutory deadline for the FWD should
`
`be afforded little weight. GREE wants the Board to take the schedule “at ‘face
`
`value’” (POPR at 11), yet GREE’s counsel in the instant IPR acknowledges that
`
`“Patent Owners are quick to point to a looming district court trial date as being set in
`
`stone, [while] in reality, these dates are often reset once the PTAB hurdle is
`
`cleared.” Ex. 1014 at 2. As GREE’s counsel notes, trial schedules “tend[] to slip in
`
`significant regard” “[o]nce the PTAB denies institution based upon a looming
`
`district court date” (Ex. 1015 at 3) and delays are only getting worse in light of
`
`COVID-19. Id. In fact, the Marshall Division of the Eastern District of Texas, where
`
`the litigation is currently pending, recently postponed all-in person jury trials
`
`3
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`originally scheduled from December 2020 through February 2021. See Ex. 1016 at
`
`1; see also Ex. 1017 at 1 (mistrial granted in E.D. Texas case after 15 participants
`
`tested positive for COVID-19). This pause is likely to have a downstream impact on
`
`the court’s schedule and delay the trial schedule in the parallel litigation.
`
`The investment factor is at worst neutral. In view of the difficulties the
`
`parties were having completing fact discovery, the district court entered a revised
`
`schedule extending many of the deadlines by several weeks. Ex. 1018. Although
`
`the Court has construed the claims, it has yet to substantively address their validity.
`
`By the time the Board decides whether to institute, it will have already invested
`
`significant resources into considering the validity of the ‘439 patent.
`
`Further, the Fintiv board advised the parties to “explain facts relevant to
`
`[the] timing” to determine whether the timing “impose[s] unfair costs to a patent
`
`owner,” and “recognize[d] . . . that it is often reasonable for a petitioner to wait to
`
`file its petition until it learns which claims are being asserted against it in the
`
`parallel proceeding.” Fintiv, Paper 11 at 11. Here, the timing of the filing enabled
`
`the Petition to take into account GREE’s amended infringement contentions and
`
`the court’s tentative claim constructions in the parallel litigation, which resulted in
`
`a more focused and thorough petition than would have been possible even weeks
`
`earlier. Ex. 1019, Ex. 1020; see also Snap, Paper 15 at 12. Nor does GREE identify
`
`any unfair costs flowing from the timing.
`
`4
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`The “same party” factor should be given little weight, as the petitioner-
`
`defendant is the party here most motivated to challenge the patent. The final factor
`
`is “other circumstances that impact the Board’s exercise of discretion, including
`
`the merits.” Fintiv, Paper 11 at 14. The strong merits in this case support
`
`institution: “[I]f the merits of a ground raised in the petition seem particularly
`
`strong on the preliminary record, this fact has favored institution.” Sand
`
`Revolution, Paper 24 at 13 (quoting Fintiv, Paper 11 at 14-15). GREE made only
`
`two minor challenges to the merits of the references and made a naked,
`
`unsupported assertion regarding motivation to combine, ignoring several pages of
`
`argument about why a POSITA would select and combine the cited references and
`
`demonstrating the strength of the Petition’s mapping of the claim elements to
`
`Englman, Ronen, and Schulhof. A holistic view considering all of the Fintiv
`
`factors, along with the efficiency and integrity of the patent system, favors
`
`institution now to confirm unpatentability of the claims over deferring to a district
`
`court considering materially different grounds.
`
`5
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`II. GREE MISCHARACTERIZES “STORING A CORRESPONDENCE”
`
`GREE’s characterization of the phrase “storing a correspondence” is simply
`
`wrong. Petitioner did not propose a construction for this phrase because both the
`
`application itself and extrinsic and intrinsic evidence clearly support Petitioner’s
`
`understanding. The plain meaning of “correspondence” may be two-fold, but the
`
`relevant one here is “a connection between two things1,” which in the context of
`
`the claims is a connection between users and the groups to which those users
`
`belong.
`
`GREE’s position is inconsistent with the specification and drawings of the
`
`‘439 patent. GREE points to a single sentence in the background section to support
`
`its contention that “storing a correspondence” means storing a communication
`
`between guild members. POPR at 36. The term “correspondence” does not appear
`
`in the specification, but FIG. 12 and the associated description show that what is
`
`stored is guild information that includes “user IDs and guild IDs associated with
`
`each other.” That is information “identifying the guild (group) to which the user
`
`identified by the associated user ID belongs.” See Ex. 1001, 18:23-44 and FIG. 12.
`
`Thus, even without explicit use of the term “correspondence,” the plain meaning of
`
`the specification supports Petitioner’s reading of the claim as a connection between
`
`these two pieces of information.
`
`
`1 Correspondence, Cambridge English Dictionary (10th ed 2021), available at
`https://dictionary.cambridge.org/us/dictionary/english/correspondence.
`
`6
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Moreover, the prosecution history of the ‘439 patent supports Petitioner’s
`
`position. In a Final Office Action dated August 9, 2016, the examiner noted that
`
`the smart card disclosed in Itkis “stor[es] information pertaining to joint player
`
`operation, i.e. the claimed correspondence of step (b).” Ex. 1002 at 278. The
`
`examiner’s understanding of step (b) mirrors the construction asserted in the
`
`Petition. GREE never rebutted the examiner’s construction (See Ex. 1002 at
`
`289-296), signifying acquiescence of the examiner’s position and underscoring the
`
`unreasonableness of its arguments in the POPR.
`
`GREE also fails to assert why the Board should construe the phrase “storing
`
`a correspondence” as proposed in the POPR, nor could any such assertion provide
`
`a logical reason why that step would be a necessary component of the claimed
`
`method. Assuming, arguendo, that “storing a correspondence” means storing a
`
`communication between users and groups, the claim does not address the contents
`
`of these communications or how they subsequently relate to the remaining steps of
`
`the method. Conversely, under Petitioner’s construction, storing a connection
`
`between users and groups serves a purpose in the claim by allowing the game
`
`control device to determine whether the required game pieces have been provided
`
`to the group members.
`
`Accordingly, the Petition should not be denied under § 314(a).
`
`
`
`7
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Dated: January 12, 2021
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`8
`
`

`

`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1016 through
`
`1020 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service 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
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`
`
`FENWICK & WEST LLP
`
`
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`Date: January 12, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`9
`
`

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