Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`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
`
`
`Inter Partes Review No. ___________________
`Patent 9,561,439 B2
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,561,439
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION
`FOR INTER PARTES REVIEW ...................................................................... 1
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ....................................... 1
`B.
`Fees for Inter Partes Review (37 C.F.R. §42.15(a)) ............................. 1
`C. Mandatory Notices (37 C.F.R. §42.8(b)) .............................................. 1
`D. Designation of Lead and Backup Counsel
`(37 CFR §42.8(b)(3)) ............................................................................ 2
`III. THRESHOLD FOR REVIEW (35 U.S.C. §314(A)) ...................................... 3
`IV.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED .......................... 3
`V. OVERVIEW OF THE ‘439 PATENT ............................................................ 4
`A.
`Effective Filing Date of the Challenged Claims ................................... 4
`B.
`Background of the Purported Invention ................................................ 4
`C.
`‘439 Patent Description ......................................................................... 5
`D.
`Prosecution History ............................................................................... 9
`VI. CLAIM INTERPRETATION ....................................................................... 11
`A.
`“cooperatively participate in the game” – claims 1, 6, 7 ..................... 12
`B.
`“parameter value” – claims 1, 6, 7 ...................................................... 13
`C.
`“ranking point” – claim 5 .................................................................... 14
`VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 15
`VIII. OVERVIEW OF THE PRIOR ART ............................................................. 15
`
`i
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`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`
`TABLE OF CONTENTS
`(continued)
`
`
`
`A.
`
`Page
`
`The features of the ‘439 patent were common in gaming
`long before the alleged invention ........................................................ 15
`Englman ............................................................................................... 20
`B.
`Ronen ................................................................................................... 25
`C.
`Schulhof ............................................................................................... 28
`D.
`IX. GROUND I: CLAIMS 1-7 ARE RENDERED OBVIOUS BY
`ENGLMAN, RONEN, AND SCHULHOF ................................................... 30
`A.
`Englman, Ronen, and Schulhof Render Obvious
`Independent Claim 1 ........................................................................... 30
`1.
`Englman and Ronen teach “a game control method
`carried out by a game control device…” .................................. 30
`Englman teaches “grouping the plurality of users …,”
`as recited in claim 1 .................................................................. 33
`Englman teaches “storing a correspondence …,”
`as recited in claim 1 .................................................................. 33
`Englman and Ronen teach “transmitting information
`…,” as recited in claim 1 ........................................................... 34
`Englman teaches “storing a parameter value …,”
`as recited in claim 1 .................................................................. 36
`Englman teaches “monitoring progress … and updating
`the parameter value …,” as recited in claim 1 .......................... 38
`Englman and Schulhof teach “providing at least one of
`a plurality of game pieces …,” as recited in claim 1 ................ 40
`Englman teaches “storing allocation information …,”
`as recited in claim 1 .................................................................. 43
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`ii
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`

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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`X.
`
`9.
`
`B.
`
`C.
`
`D.
`
`Englman teaches “determining whether all the required
`game pieces have been provided …,” as recited in claim
`1 ................................................................................................. 44
`10. Englman teaches “allocating … the game item …,”
`as recited in claim 1 .................................................................. 46
`11. The embodiments of providing of ribbons, medals, and
`trophies in Englman also teaches elements of claim 1 ............. 48
`Englman and Ronen teach “different game pieces [being]
`respectively provided to the first plurality of users” as
`recited in claim 2 ................................................................................. 49
`Englman teaches “deleting the allocation information …”
`as recited in claim 3 ............................................................................. 51
`Englman teaches “periodically causing an event to occur …”
`as recited in claim 4 ............................................................................. 52
`Englman teaches “storing a ranking point …” as recited in
`claim 5 ................................................................................................. 53
`Englman teaches “storing a reward …” as recited in claim 5 ............. 54
`Englman teaches “a processor,” “a determining unit,” and a
`“memory allocation unit” as recited in claim 6 ................................... 55
`Englman teaches “a non-transitory computer readable
`recording medium” as recited in claim 7 ............................................ 56
`A POSITA would have been motivated to combine
`Englman, Ronen, and Schulhof ........................................................... 57
`THE PETITION SHOULD NOT BE DENIED UNDER
`§§314 OR 325 ................................................................................................ 62
`A.
`Section 325(d) Is Inapplicable Because Petition Does Not
`Assert Art Previously Evaluated by the Office. .................................. 62
`
`E.
`
`F.
`G.
`
`H.
`
`I.
`
`iii
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`

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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`B.
`
`The Board Should Not Deny Institution Under Section
`314(a). .................................................................................................. 63
`XI. CONCLUSION .............................................................................................. 65
`
`
`
`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ......................................... 63
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (P.T.A.B. Jun. 16, 2020) .......................................... 64
`Uniloc United States v. Avaya Inc.,
`Civ. Nos. 6:16-CV-223-JRG .............................................................................. 63
`STATUTES AND RULES
`35 U.S.C. §101 ........................................................................................................... 9
`35 U.S.C. §102 ......................................................................................... 9, 20, 26, 28
`35 U.S.C. §103 ..................................................................................................... 3, 10
`35 U.S.C. §112 ......................................................................................................... 11
`35 U.S.C. §282(b) .................................................................................................... 11
`35 U.S.C. §311 ..................................................................................................... 1, 11
`35 U.S.C. §314(A) ................................................................................... 3, 62, 63, 65
`OTHER AUTHORITIES
`37 C.F.R. §42.100(b) ............................................................................................... 11
`Patent Trial and Appeal Board Consolidated Trial Practice Guide,
`84 Fed. Reg. 64280 at 61 (P.T.A.B Nov. 21, 2019) ........................................... 62
`
`v
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`

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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`EXHIBIT LIST (37 C.F.R. §42.63(E))
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. 9,561,439 to Oono
`Prosecution History of U.S. Patent No 9,561,439
`Declaration of Dr. Emmet J. Whitehead, Jr.
`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.
`U.S. Patent No. 8,376,838 B2 to Schulhof et al.
`World of Warcraft, Guild Advancement and You, (Jan. 21, 2011),
`https://worldofwarcraft.com/en-us/news/2113741/guild-
`advancement-and-you
`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
`MMORPG, Divina – Unique Guild System, (May 12, 2012),
`https://www.mmorpg.com/divina/developer-journals/unique-
`guild-domain-system-2000093507
`U.S. Patent Application Publication No. 2014/0024462 A1 to
`Qiang et al.
`U.S. Patent Application Publication No. 2012/0157212 A1 to
`Kane et al.
`U.S. Patent Application Publication No. 2012/0071245 A1 to
`Kotkin et al.
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
`
`vi
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`
`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/
`
`Exhibit
`
`1014
`
`1015
`
`
`
`
`vii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`
`
`I.
`
`INTRODUCTION
`Petitioner Supercell Oy (“Supercell” or “Petitioner”) hereby requests inter
`
`partes review under 35 U.S.C. §311 of United States Patent No. 9,561,439 to
`
`Oono, titled “Game Control Method, Game Control Device, and Recording
`
`Medium” (the “‘439 patent”) (Ex.1001). Supercell challenges claims 1-7 of the
`
`‘439 patent (the “challenged claims”). This Petition demonstrates a reasonable
`
`likelihood that Supercell will prevail on at least one of the challenged claims. The
`
`Patent Trial and Appeal Board (“Board”) should institute review of the ‘439 patent.
`
`II. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Supercell certifies that the ‘439 patent is available for inter partes review
`
`and that the Supercell is not barred or estopped from requesting inter partes review
`
`of the ‘439 patent.
`
`Fees for Inter Partes Review (37 C.F.R. §42.15(a))
`B.
`The Director is authorized to charge the fees specified by 37 C.F.R. §42.15(a)
`
`to Deposit Account No. 19-2555.
`
`C. Mandatory Notices (37 C.F.R. §42.8(b))
`Real Party-In-Interest: Supercell Oy is the real party-in-interest.
`
`No other party had access to the Petition, and no other party had any control over,
`
`or contributed to any funding of, the preparation or filing of this Petition.
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`Notice of Related Matters: Pursuant to 37 C.F.R. §42.8(b)(1),
`
`Petitioner is aware of the following related matters:
`
`•
`
`Patent Owner asserts U.S. Patent No. 9,561,439 and the related
`
`U.S. Patent No. 9,079,107 against Petitioner in GREE, Inc. v.
`
`Supercell Oy, Case No. 2:19-cv-00311 (E.D. TEx. filed
`
`September 16, 2019) (the “District Court Litigation”); and
`
`•
`
`Petitioner filed a petition for inter partes review of U.S.
`
`9,079,107, the parent of the ‘439 patent, concurrent with the
`
`filing of the instant petition.
`
`D. Designation of Lead and Backup Counsel (37 CFR §42.8(b)(3))
`Petitioner designates Rajiv P. Patel (Reg. No. 39,327) as lead counsel, and as
`
`back-up counsel: 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
`
`to be filed), Geoffrey R. Miller (pro hac vice to be filed), and Emily J. Bullis (pro
`
`hac vice to be filed). Service of any documents via hand delivery may be made to
`
`the mailing address of FENWICK & WEST LLP, 801 California Street, Mountain
`
`View, CA 94041 (Tel: (650) 988-8500 and Fax: (650) 938-5200), with courtesy
`
`copies to the email address RPatel-ptab@fenwick.com. Petitioner consents to
`
`electronic service to RPatel-ptab@fenwick.com.
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`III. THRESHOLD FOR REVIEW (35 U.S.C. §314(A))
`It is reasonably likely that Supercell will prevail on at least one of the claims
`
`challenged in this Petition because the request shows that the subject matter recited
`
`in claims 1-7 of the ‘439 patent is taught by the prior art. Any motivation to
`
`combine the prior art is provided herein as necessary.
`
`IV.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`In accordance with 37 C.F.R. §42.104(b), Petitioner requests the review and
`
`cancellation of claims 1-7 of the ‘439 patent. The challenged claims are
`
`unpatentable in view of the following prior art:
`
`• U.S. Patent Application Publication No. 2011/0300926 A1
`
`(“Englman”) (Exhibit 1004)
`
`• U.S. Patent Application Publication No. 2013/0190094 A1 (“Ronen”)
`
`(Exhibit 1005)
`
`• U.S. Patent No. 8,376,838 (“Schulhof”) (Ex. 1006)
`
`The challenged claims are invalid under 35 U.S.C. §103 on the following ground:
`
`Ground I: Claims 1-7 are rendered obvious by Englman, Ronen, and
`
`Schulhof
`
`3
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`

`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`V. OVERVIEW OF THE ‘439 PATENT
`A. Effective Filing Date of the Challenged Claims
`The ‘439 patent was filed on June 10, 2015 and claims priority to U.S.
`
`Patent Application No. 14/198,411 filed March 5, 2014. The ‘439 patent also
`
`claims foreign priority to Japanese Patent Application Nos. 2013-049388 filed
`
`March 12, 2013, 2013-202682 filed September 27, 2013, and 2013-262855 filed
`
`December 19, 2013. Thus, the effective filing date of the challenged claims is no
`
`earlier than March 12, 2013. Ex. 1003, ¶[0018]. The ‘439 patent is subject to the
`
`pre-AIA provisions of the Patent Statute; all statutory references in this Petition are
`
`to the applicable pre-AIA provision.
`
`Background of the Purported Invention
`B.
`The ‘439 patent describes a game control method in which a plurality of users
`
`play in cooperation with one another. Ex. 1001, 2:26-29. The specification
`
`describes the game as a social game in which users fight a battle against enemy
`
`characters with cooperation among members of a guild. Ex. 1001, 1:62-66.
`
`Additionally, the specification notes “[i]n the case where a user fights a battle with
`
`an enemy character with cooperation among the guild members and wins the battle,
`
`it is possible for the guild members to obtain various kinds of rewards (for example,
`
`characters, items, etc.).” Ex. 1001, 1:66-2:4, Ex. 1003 ¶[0026].
`
`As the purpose of such social games is to win the battle, “the guild tends to
`
`consist of users at a high level (experts) in the social game.” Ex. 1001, 2:13-15.
`
`4
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`Thus, a user at a lower level may only be able to join guild with other similarly
`
`situated users and thus may not be able to obtain certain rewards. Ex. 1001, 2:17-20.
`
`This “cause[s] the motivation for the game of a user at a low level to be reduced.”
`
`Ex. 1001, 2:21-22, Ex. 1003, ¶[0027].
`
`‘439 Patent Description
`C.
`The ‘439 patent’s purported solution to the alleged problem is to provide a
`
`“mechanism that enables a user to play in cooperation with a plurality of users
`
`(guild) regardless of the level, etc.” Ex. 1001, 2:23-25. This solution is
`
`purportedly achieved through a “guild event,” in which members of the guild
`
`cooperate to “collect a plurality of game pieces constituting one item that appears
`
`in the card battle game….” Ex. 1001, 17:66-18:1, Ex. 1003,¶[0028].
`
`The system provides game pieces to users in the guild event based on
`
`parameter values for the users that are increased as the users make progress in the
`
`game. A parameter value may be a value representing a characteristic of the user,
`
`such as the user’s skill or level in the game. Ex. 1003, ¶¶[0030], [0055]. This is
`
`consistent with the specification’s description of how game pieces are provided
`
`based on the levels of the guild members. Ex. 1001, 21:37-40 (“[T]he game
`
`control unit 54 performs determination processing based on the appearance
`
`probability included in the game piece information and the level of the target user
`
`5
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`indicated by the level information stored in the storage unit 42.”); see also
`
`Ex. 1003, ¶¶[0030], [0055].
`
`Users of different parameter (skill) values may be members of the same
`
`guild and work together to collect different jewel types that each target different
`
`levels of users. The specification references users in three categories. “[L]ow-
`
`level users” are “users having levels about 1 to 20” in the game, “intermediate-
`
`level users” are “users having levels about 21 to 50,” and “high-level users” are
`
`“users having levels about 51 or more.” Ex. 1001, 19:18-20, 19:38-41, 19:58-60.
`
`Further, the game pieces are jewels, and different jewel types may target different
`
`level of users by appearing with varying levels of probability based on a user’s
`
`skill level. For example, “The jewel C targets…high-level users, and all of the
`
`pieces C1 to C6 are provided with a probability in common with which the pieces
`
`C1 to C6 are more likely to appear for high-level users.” Ex. 1001, 19:53-56.
`
`Other jewel types may similarly target low and intermediate-level users. Ex. 1001,
`
`19:6-24, 19:25-45, Ex. 1003, ¶¶[0029]-[0030].
`
`Figures (FIGS.) 1 and 2, reproduced below, illustrate the network system
`
`and game control device used to provide the social game. Ex. 1003, ¶[0029].
`
`6
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`
`
`
`
`FIG. 1 shows a communication terminal 20, operated by a user, that
`
`communicates with a game control device 50 via a network 30. FIG. 2 shows
`
`components of the game control device 50, including the storage unit 42, which
`
`stores information about the guild (“group information”), information about the
`
`guild event (“game piece information”), information about the items obtained by
`
`7
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`the guild members (“obtained game piece information”), and information about the
`
`guild member themselves (e.g., a user’s level information). Ex. 1001, 18:9-22,
`
`FIGS. 12, 14, 15. The game piece information includes a game piece type
`
`(e.g., ”jewel C”), a piece ID (e.g., “C1-C6”), and an appearance probability of the
`
`game piece (e.g., “probability 3”). Ex. 1001, 19:46-48, FIG. 13, Ex. 1003, ¶[0029].
`
`The game control unit 54 gives game pieces to users by causing a game
`
`piece to appear on the display of a user’s communication terminal and generating
`
`obtained game piece information including a user ID and a piece ID that associate
`
`the user with the obtained game piece. Ex. 1001, 21:53-58, 22:1-4. During the
`
`guild event, a plurality of game pieces are obtained by the guild members in this
`
`manner. Ex. 1001, 22:20-24, Ex. 1003, ¶[0031].
`
`Different types of game pieces appear with different levels of probability
`
`based on the parameter (skill) values of the users. For a jewel type “Jewel D”
`
`having pieces D1-D6, pieces D1-D2 may appear with a higher probability to low-
`
`level users, pieces D3-D4 may appear with a higher probability to intermediate-
`
`level users, and pieces D5-D6 may appear with a higher probability to high-level
`
`users. Ex. 1001, 20:9-17. “[T]he appearance probabilities of the jewel D are set so
`
`that each of the pieces constituting the jewel D (pieces D1 to D6) is given to users
`
`at levels in different ranges.” Ex. 1001, 20:18-21. A guild is required to have
`
`players with different parameter values to collect all of the pieces to obtain the
`
`8
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`reward (i.e., Jewel D) because the different jewel pieces appear with different
`
`probabilities based on parameter (skill) value. Ex. 1003, ¶[0030]. Hence, all that
`
`is described is a multi-player game in which players of different parameter (skill)
`
`values are grouped together to collect different game pieces that are required to
`
`obtain a reward, a concept that was well-known in the art. Ex. 1003, ¶[0032].
`
`Prosecution History
`D.
`The ‘439 patent was filed on June 10, 2015 as Application Serial No.
`
`14/735,958 (“the ‘958 application”) and claims priority to U.S. Patent Application
`
`No. 14/198,411 filed March 5, 2014, and Japanese Patent Application Nos. 2013-
`
`049388 filed March 12, 2013, 2013-202682 filed September 27, 2013, and 2013-
`
`262855 filed December 19, 2013. The ‘958 application was assigned to art unit
`
`3714. Ex. 1002, p. 92. It was originally filed with claims 1-7. Ex. 1002, pp. 72-74,
`
`Ex. 1003, ¶[0049].
`
`On March 8, 2016, a non-final Office Action was issued in the ‘958
`
`application, rejecting claims 1-7 under 35 U.S.C. §101 as directed to an abstract
`
`idea and under 35 U.S.C. §102 as being anticipated by U.S. Patent No. 4,856,787
`
`to Itkis. Ex. 1002, pp. 229-238.
`
`An examiner interview on May 4, 2016 reached no agreement on either
`
`subject matter eligibility or novelty between the applicant and the examiner on a
`
`set of proposed claim amendments. The applicant submitted an amendment and
`
`9
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`

`Petition for Inter Partes Review of U.S. Patent No 9,561,439
`
`response to the non-final Office Action on June 7, 2016. The claims were
`
`primarily amended to add the “grouping…,” “storing a correspondence…,”
`
`“transmitting…,” “storing a parameter value…,” “monitoring…,” and
`
`“providing…,” steps to claim 1. Similar amendments were made to independent
`
`claims 6 and 7. Ex. 1002, pp. 248-252. The applicant argued that Itkis did not
`
`group the users into one or more groups or store a correspondence between the
`
`users and the groups in the storage unit. Additionally, the applicant argued that
`
`Itkis did not transmit information over a network to initiate a group event in which
`
`users cooperatively participate in the game. Ex. 1002, pp. 253-54.
`
`On August 9, 2016, a final Office Action was issued in the ‘958 application,
`
`rejecting claims 1-3 and 5-7 under 35 U.S.C. §103 as being unpatentable over Itkis
`
`in view of U.S. Patent No. 5,816,918 to Kelly. Ex. 1002, pp. 274-282. Claim 4 was
`
`objected to as being dependent upon a rejected base claim, but the examiner
`
`indicated that the claim would be allowable if rewritten independent form including
`
`the limitations of the base claim and any intervening claims. Ex. 1002, p. 280.
`
`On September 26, 2016, the applicant filed an Amendment and Request for
`
`Consideration under the After Final Consideration Pilot Program 2.0 incorporating
`
`into the independent claims language from claim 4 that recited the game item is
`
`allocated when it is determined that all the required game pieces have been
`
`10
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`provided “within a predetermined period of time during which the group event is
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`taking place.” Ex. 1002, pp. 288-296.
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`A Notice of Allowance was issued in the ‘958 application on October 12,
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`2016, only noting that it was responsive to the Amendment filed September 26,
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`2019.
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`VI. CLAIM INTERPRETATION
`Claim terms subject to inter partes review are to be “construed using the
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`same claim construction standard that would be used to construe the claim in a
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`civil action under 35 U.S.C. §282(b), including construing the claim in accordance
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`with the ordinary and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to the patent.”
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`(37 C.F.R. §42.100(b))1; Ex. 1003, ¶¶[0051], [0053].
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`1 Petitioner expressly reserves the right to challenge one or more claims (and claim
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`terms) of the ‘439 patent for failure to satisfy the requirements of 35 U.S.C. §112,
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`which cannot be raised in these proceedings. See 35 U.S.C. §311(b). Nothing in
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`this Petition, or the constructions provided herein, shall be construed as waiver of
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`such challenge, or agreement that the requirements of 35 U.S.C. §112 are met with
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`for any claim of the ‘439 patent.
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`“cooperatively participate in the game” – claims 1, 6, 7
`A.
`Claim 1 of the ‘439 patent recites in the group event, “a first plurality of users
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`forming a first group cooperatively participate in the game.” Ex. 1001, 26:49-51.
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`Independent claims 6 and 7 recite similar language. Ex. 1001, 26:44-46, 27:8-10.
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`A person having ordinary skill in the art (“POSITA”) would construe
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`“Cooperatively participate in the game” to mean “working towards a common goal
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`in the game.” Ex. 1003, ¶[0054]. This construction is consistent with the
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`description of the ‘439 patent, which states “[t]he purpose of the guild event is to
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`collect a plurality of game pieces constituting one item that appears in the card
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`battle game by a plurality of users (guild members) constituting the guild in
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`cooperation with one another.” Ex. 1001, 17:66-18:3. This construction also is
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`consistent with the figures of the ‘439 patent. For example, FIG. 12 shows User 1
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`and User 2 are both members of Guild 1, and FIG. 13 shows the game pieces guild
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`members are required to collect in order to obtain various jewels (Jewel A – Jewel
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`D) as a reward. See also Ex. 1001, Abstract, Background, 2:8-55, 4:4-16, 5:19-26,
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`17:59-18:21, 21:11-22:40, 22:41-24:3, 24:4-25:20; FIGS. 14, 16, 17. Guild
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`members are therefore working towards the common goal of obtaining jewels by
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`collecting game pieces.
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`“parameter value” – claims 1, 6, 7
`B.
`Claim 1 of the ‘439 patent recites “storing a parameter value for each of the
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`plurality of users, wherein the parameter value …is increased as the respective user
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`makes progress in the group event,” “updating the parameter value…in accordance
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`with the progress of the first group in the group event,” and “providing…game
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`pieces…based on the parameter value for the corresponding user…” Ex. 1001,
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`25:52-63. Independent claims 6 and 7 recite similar language. Ex. 1001, 26:35-53,
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`27:12-28:4. A POSITA would construe “Parameter value” to mean “a “value
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`representing a characteristic of the user, such as the user’s skill or level in the
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`game.” Ex. 1003, ¶[0055]. This construction is consistent with the description of
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`the ‘439 patent. For example, the independent claims of the ‘439 patent recite that a
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`user’s parameter value is “increased as the respective user makes progress in the
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`group event,” and that the system provides game pieces to a user “based on the
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`parameter value for the corresponding user.” Ex. 1001, 25:52-55, 25:56-59.
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`Similarly, the specification describes the “level of a user…increases in accordance
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`with the progress of the card battle game” (Ex. 1001, 21:5-6) (emphasis added), and
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`the system determines whether to provide a game piece to a user based on “the
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`appearance probability included in the game piece information” (which is based on
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`a user’s skill level as described above) and “the level of the target user indicated by
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`the level information stored in the storage unit 42.” Ex. 1001, 21:38-41 (emphasis
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`added). Because the specification describes that the system provides game pieces
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`based on a user’s skill or level in the game, a claim that recites providing game
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`pieces based on a parameter value of the user clearly refers to the user’s skill level.
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`This construction also is consistent with FIG. 3 of the ‘439 patent and the
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`corresponding description, which list a “skill” as an example of a parameter.
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`Ex. 1001, FIG. 3, 6:12-15, Ex. 1003, ¶[0055].
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`“ranking point” – claim 5
`C.
`Claim 5 of the ‘439 patent recites “storing a ranking point for the first group
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`when it is determined that all the required game pieces have been provided” and
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`“storing a reward for the first plurality of users in accordance with a total value of
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`ranking points…” Ex. 1001, 26:25-29. A POSITA would construe “Ranking
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`point” to mean “a measurement of success.” Ex. 1003, ¶[0056]. This construction
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`is consistent with the description of the ‘439 patent, which recites the ranking
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`point is awarded “[i]n the case where the target guild collects all of the game
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`pieces.” Ex. 1001, 23:56-58. Additionally, “various kinds of rewards [can be
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`given] to the plurality of users constituting the target guild in accordance with the
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`total value of the ranking point.” Ex. 1001, 23:60-62. Hence, A POSITA would
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`understand that the ranking point is a measurement of the guild’s success in
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`collecting the game pieces. Ex. 1003, ¶[0056]. Further, because the ranking point
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`Petition for Inter Partes Review of U.S. Patent No 9,561,439
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`can impact the distribution of rewards to the players, a POSITA would understand
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`that the ranking point is a measurement of the guild’s success in the game. Id.
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A POSITA at the time of the alleged invention would have had a bachelor’s
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`degree in game design/development, interactive media, computer science,
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`computer engineering, or a related field, with at least two years of professional
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`experience working in computer game design/development. With more education,
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`such as additional graduate degrees or study, less professional experience is needed
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`to attain the ordinary level of skill. Similarly, with more experiential knowledge of
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`computer games, such as experience developed while playing computer games,
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`less professional experience is needed to attain the ordinary level of skill.
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`Ex. 1003, ¶¶[0021]-[0024].
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`VIII. OVERVIEW OF THE PRIOR ART
`A. The features of the ‘439 patent were common in gaming long
`before the alleged invention
`The concept of a multi-player game in which players having different
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`parameter (skill) values are grouped together to collect game pieces in order to
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`obtain a reward was well-known before the effective date of the ‘439 patent.
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`Ex. 1003, ¶[0070]. Multi-player, networked gaming with users cooperatively
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`participating to achieve a common goal has been widely available since at least the
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`1990’s, long before the effective filing date of the ‘439 patent. Id. Early online
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`multi-player networked games include “Multi-User Dungeons,” or “MUDs”
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`available since at least the 1980’s. These MUDS were text-based games, many of
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`which included features of traditional role-playing games, such as Dungeons and
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`Dragons. Online games with a wide variety of gameplay types and mechanics
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`features have been widely available since then on a variety of platf