`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)
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`
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
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`Page
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`The Fintiv Factors Favor Institution ............................................................... 1
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`Gree Mischaracterizes “Storing a Correspondence” ...................................... 6
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`
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`I.
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`II.
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`i
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
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`CASES
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`Page(s)
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`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
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`STATUTES AND RULES
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`35 U.S.C. § 314 .......................................................................................................... 1
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`OTHER AUTHORITIES
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`Correspondence, Cambridge English Dictionary (10th ed 2021),
`available at
`https://dictionary.cambridge.org/us/dictionary/english/correspondence ............. 6
`
`ii
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`EXHIBIT LIST (37 CFR § 42.63(E))
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`Exhibit
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`Description
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`1001
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`U.S. Patent No. 9,561,439 to Oono
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`1002
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`Prosecution History of U.S. Patent No 9,561,439
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`1003
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`Declaration of Dr. Emmet J. Whitehead, Jr.
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`1004
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`1005
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`U.S. Patent Application Publication No. 2011/0300926 A1 to Englman
`et al.
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`U.S. Patent Application Publication No. 2013/0190094 A1 to Ronen et
`al.
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`1006
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`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
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`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.
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`1013
`
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
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`iii
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Exhibit
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`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)
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`
`
`
`
`iv
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`I.
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`THE FINTIV FACTORS FAVOR INSTITUTION
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`Proper application of the Fintiv factors demonstrates that the Board should
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`not exercise its discretion to deny institution under 35 U.S.C. § 314. First, the
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`“overlap” factor seeks to avoid inefficiency and the possibility of conflicting
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`decisions, concerns that are absent here due to the lack of overlap between the
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`instant IPR and the parallel litigation. Apple v. Fintiv, IPR 2020-00019, Paper 11 at
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`13 (P.T.A.B. Mar. 20, 2020) (Precedential). The Board recently declined to
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`exercise its discretion under § 314(a) when a reference cited in the Petition was
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`not at issue in the litigation. See Snap, Inc. v. SRK Technology LLC, IPR2020-
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`00820, Paper 15 at 15 (P.T.A.B. Oct. 21, 2020) (Precedential). The addition of the
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`reference in the IPR rendered “the prior art and arguments included in the
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`Petition [] materially different than those presented in the District Court.” Id; see
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`also Comcast Cable Commc’ns, LLC v. Veveo, Inc., IPR 2019-00239, Paper 15 at
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`14-16 (P.T.A.B. July 5, 2019) (concluding no substantial overlap of obviousness
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`issues based on difference in challenged claims and asserted references). Such is the
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`case here. The Schulhof reference is not included in the invalidity contentions in
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`the litigation, but is used in the Petition for every proposed challenge to
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`patentability.
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`GREE falsely minimizes crucial distinctions between the instant IPR and the
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`parallel
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`litigation, misleadingly dismissing Schulhof as a “superficial
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`1
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`inclusion…in the Petition.” POPR at 27. In doing so, GREE ignores that
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`Petitioner cites Schulhof for the limitation reciting the very solution the ‘439
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`patent purports to achieve: providing game pieces to each user based on the
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`parameter value for the corresponding user. Petitioner’s use of Schulhof for
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`arguably the most important claim limitation is anything but “superficial.”
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`Rather, the Petition cites portions of Schulhof that clearly disclose awarding
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`virtual assets to a player based on demonstrated skill level (i.e., the player’s
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`parameter value). Pet. at 29-30, 41-43. Moreover, Petitioner supports its
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`invalidity arguments with a strong motivation to combine Schulhof with the
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`Englman and Ronen references, particularly in light of the common ownership
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`between Schulhof and the primary reference, Englman. Pet. at 57-62.
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`Accordingly, this factor favors institution because the grounds presented in
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`the Petition are materially different from the prior art and arguments in the parallel
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`proceeding. Such differences “ha[ve] tended to weigh against [the Board]
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`exercising discretion to deny institution.” Snap, Paper 15 at 15 (citing Fintiv,
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`Paper 11 at 12-13). The absence of Schulhof from the litigation obviates concerns
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`of duplicative efforts between the district court and the Board as well as the
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`possibility of potentially conflicting decisions. To further eliminate any doubt as
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`to overlap between the proceedings, Petitioner stipulates that, should IPR be
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`2
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`instituted, Petitioner will not pursue the same grounds in the litigation. See Sand
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`Revolution, Paper 24 at 11-12.
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`Regarding the “stay” factor, institution by the PTAB “has been treated as a
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`highly significant factor in the courts’ determination of whether to stay cases
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`pending PTAB review.” Uniloc United States v. Avaya Inc., Civ. Nos. 6:15-CV-
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`01168, 6:16-CV-223, 6:16-CV-225-JRG, 2017 U.S. Dist. LEXIS 168855, *10-11
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`(E.D. Tex. April 19, 2017). Indeed, GREE acknowledges that E.D. Texas district
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`court commonly denies motions to stay when the PTAB has yet to institute. POPR
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`at 7. Accordingly, though no stay has yet been sought, Petitioner stipulates it will
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`seek a stay in the parallel litigation should the IPR be instituted.
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`The trial schedule factor relative to the statutory deadline for the FWD should
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`be afforded little weight. GREE wants the Board to take the schedule “at ‘face
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`value’” (POPR at 11), yet GREE’s counsel in the instant IPR acknowledges that
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`“Patent Owners are quick to point to a looming district court trial date as being set in
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`stone, [while] in reality, these dates are often reset once the PTAB hurdle is
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`cleared.” Ex. 1014 at 2. As GREE’s counsel notes, trial schedules “tend[] to slip in
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`significant regard” “[o]nce the PTAB denies institution based upon a looming
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`district court date” (Ex. 1015 at 3) and delays are only getting worse in light of
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`COVID-19. Id. In fact, the Marshall Division of the Eastern District of Texas, where
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`the litigation is currently pending, recently postponed all-in person jury trials
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`3
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`originally scheduled from December 2020 through February 2021. See Ex. 1016 at
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`1; see also Ex. 1017 at 1 (mistrial granted in E.D. Texas case after 15 participants
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`tested positive for COVID-19). This pause is likely to have a downstream impact on
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`the court’s schedule and delay the trial schedule in the parallel litigation.
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`The investment factor is at worst neutral. In view of the difficulties the
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`parties were having completing fact discovery, the district court entered a revised
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`schedule extending many of the deadlines by several weeks. Ex. 1018. Although
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`the Court has construed the claims, it has yet to substantively address their validity.
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`By the time the Board decides whether to institute, it will have already invested
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`significant resources into considering the validity of the ‘439 patent.
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`Further, the Fintiv board advised the parties to “explain facts relevant to
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`[the] timing” to determine whether the timing “impose[s] unfair costs to a patent
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`owner,” and “recognize[d] . . . that it is often reasonable for a petitioner to wait to
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`file its petition until it learns which claims are being asserted against it in the
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`parallel proceeding.” Fintiv, Paper 11 at 11. Here, the timing of the filing enabled
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`the Petition to take into account GREE’s amended infringement contentions and
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`the court’s tentative claim constructions in the parallel litigation, which resulted in
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`a more focused and thorough petition than would have been possible even weeks
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`earlier. Ex. 1019, Ex. 1020; see also Snap, Paper 15 at 12. Nor does GREE identify
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`any unfair costs flowing from the timing.
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`The “same party” factor should be given little weight, as the petitioner-
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`defendant is the party here most motivated to challenge the patent. The final factor
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`is “other circumstances that impact the Board’s exercise of discretion, including
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`the merits.” Fintiv, Paper 11 at 14. The strong merits in this case support
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`institution: “[I]f the merits of a ground raised in the petition seem particularly
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`strong on the preliminary record, this fact has favored institution.” Sand
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`Revolution, Paper 24 at 13 (quoting Fintiv, Paper 11 at 14-15). GREE made only
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`two minor challenges to the merits of the references and made a naked,
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`unsupported assertion regarding motivation to combine, ignoring several pages of
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`argument about why a POSITA would select and combine the cited references and
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`demonstrating the strength of the Petition’s mapping of the claim elements to
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`Englman, Ronen, and Schulhof. A holistic view considering all of the Fintiv
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`factors, along with the efficiency and integrity of the patent system, favors
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`institution now to confirm unpatentability of the claims over deferring to a district
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`court considering materially different grounds.
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`5
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`II. GREE MISCHARACTERIZES “STORING A CORRESPONDENCE”
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`GREE’s characterization of the phrase “storing a correspondence” is simply
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`wrong. Petitioner did not propose a construction for this phrase because both the
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`application itself and extrinsic and intrinsic evidence clearly support Petitioner’s
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`understanding. The plain meaning of “correspondence” may be two-fold, but the
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`relevant one here is “a connection between two things1,” which in the context of
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`the claims is a connection between users and the groups to which those users
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`belong.
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`GREE’s position is inconsistent with the specification and drawings of the
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`‘439 patent. GREE points to a single sentence in the background section to support
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`its contention that “storing a correspondence” means storing a communication
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`between guild members. POPR at 36. The term “correspondence” does not appear
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`in the specification, but FIG. 12 and the associated description show that what is
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`stored is guild information that includes “user IDs and guild IDs associated with
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`each other.” That is information “identifying the guild (group) to which the user
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`identified by the associated user ID belongs.” See Ex. 1001, 18:23-44 and FIG. 12.
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`Thus, even without explicit use of the term “correspondence,” the plain meaning of
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`the specification supports Petitioner’s reading of the claim as a connection between
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`these two pieces of information.
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`1 Correspondence, Cambridge English Dictionary (10th ed 2021), available at
`https://dictionary.cambridge.org/us/dictionary/english/correspondence.
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`6
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Moreover, the prosecution history of the ‘439 patent supports Petitioner’s
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`position. In a Final Office Action dated August 9, 2016, the examiner noted that
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`the smart card disclosed in Itkis “stor[es] information pertaining to joint player
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`operation, i.e. the claimed correspondence of step (b).” Ex. 1002 at 278. The
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`examiner’s understanding of step (b) mirrors the construction asserted in the
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`Petition. GREE never rebutted the examiner’s construction (See Ex. 1002 at
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`289-296), signifying acquiescence of the examiner’s position and underscoring the
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`unreasonableness of its arguments in the POPR.
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`GREE also fails to assert why the Board should construe the phrase “storing
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`a correspondence” as proposed in the POPR, nor could any such assertion provide
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`a logical reason why that step would be a necessary component of the claimed
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`method. Assuming, arguendo, that “storing a correspondence” means storing a
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`communication between users and groups, the claim does not address the contents
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`of these communications or how they subsequently relate to the remaining steps of
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`the method. Conversely, under Petitioner’s construction, storing a connection
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`between users and groups serves a purpose in the claim by allowing the game
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`control device to determine whether the required game pieces have been provided
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`to the group members.
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`Accordingly, the Petition should not be denied under § 314(a).
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`7
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Dated: January 12, 2021
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`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
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`8
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`IPR2020-01628
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`CERTIFICATION OF SERVICE ON PATENT OWNER
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`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
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`Patent Owner’s Preliminary Response and accompanying Exhibits 1016 through
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`1020 were served on Patent Owner’s lead and back-up counsel in its entirety by
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`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
`
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`9
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