`Petitioner’s Request for Rehearing
`
`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 REQUEST FOR REHEARING
`UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`
`IPR2020-01628
`Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`I.
`INTRODUCTION AND REQUEST FOR RELIEF ...................................... 1
`II.
`LEGAL STANDARD .................................................................................... 2
`III. BASIS FOR THE REQUESTED RELIEF .................................................... 3
`A.
`Patent Owner’s Removal of Five of the Seven Challenged
`Claims from the Parallel Litigation Immediately After the
`Decision Mitigates Concerns of Duplicative Efforts and
`Potentially Conflicting Decisions ........................................................ 3
`Patent Owner’s Gamesmanship Thwarts the Notion that
`Petitioner is the “Master of its Complaint” .......................................... 6
`IV. CONCLUSION ............................................................................................... 9
`
`
`
`B.
`
`
`
`
`
`i
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. DSS Tech. Mgmt., Inc.,
`IPR2015-00369, Paper 14 (P.T.A.B. Aug. 12, 2015) ........................................... 2
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim
`Apple Inc. v. Maxwell, LTD,
`IPR2020-00200, Paper 21 (P.T.A.B. Feb. 3, 2021) .............................................. 4
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 8
`Illumina, Inc. v. Natera, Inc.,
`IPR2019-01201, Paper 19 (P.T.A.B. Dec. 18, 2019) ........................................... 6
`Precision Planting, LLC v. Deere & Co.,
`IPR2019-01051, Paper 18 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`Samsung Elecs. Am., Inc. v. Snik, LLC,
`IPR2020-01429, Paper 10 (P.T.A.B. March 9, 2021) .......................................... 6
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ........................................... 4
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................................................................. 1, 2, 8
`STATUTES AND RULES
`35 U.S.C. § 103 ...................................................................................................... 3, 6
`35 U.S.C. § 314 .............................................................................................. 2, 3, 7, 8
`OTHER AUTHORITIES
`37 C.F.R. § 11.303(a)(1) ............................................................................................ 7
`37 C.F.R. § 42.71 ................................................................................................... 1, 2
`
`
`ii
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`
`
`IPR2020-01628
`Petitioner’s Request for Rehearing
`EXHIBIT LIST (37 CFR § 42.63(E))
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`
`1005
`
`1008
`
`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.
`1006
`1007 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
`1009 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.
`
`1010
`
`1011
`1012
`
`1013
`
`iii
`
`
`
`IPR2020-01628
`Petitioner’s Request for Rehearing
`
`Exhibit
`
`Description
`
`1014
`
`1015
`
`1016
`
`1017
`
`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)
`E-mail from Lee Matalon, Law Clerk to Chief Judge Rodney Gilstrap,
`to Petitioner and Patent Owner counsel, Case No. 19-cv-00311 (E.D.
`Texas) (March 17, 2021)
`Updated Section D, Contentions of the Parties, to the Parties Joint
`Pretrial Order [Dkt 222], filed on March 12, 2021, Case No. 19:cv-
`00311 (E.D. Texas)
`
`1018
`
`1019
`
`1021
`
`1022
`
`iv
`
`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`
`Description
`
`GREE, Inc.’s Disclosure of Asserted Claims and Infringement
`Contentions, served on January 28, 2020, Case No. 19-cv-00311 (E.D.
`Texas)
`Patent Owner’s Response to Petitioner’s Additional Briefing Regarding
`Overlap Factor, filed on March 15, 2021, PGR2020-00043 (P.T.A.B.)
`
`Exhibit
`
`1023
`
`1024
`
`
`
`
`
`v
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`INTRODUCTION AND REQUEST FOR RELIEF
`I.
`Pursuant to 37 C.F.R. § 42.71, Petitioner Supercell Oy (“Supercell” or
`
`“Petitioner”) respectfully requests rehearing of the Board’s Decision Denying
`
`Institution of Inter Partes Review of U.S. Patent No. 9,561,439 (the “’439 Patent”)
`
`to Oono (Paper 9) (“Decision”) because the Board “misapprehended or
`
`overlooked” matters addressed by the Petition and thus abused its discretion in
`
`denying institution. See 37 C.F.R. § 42.71(c) and (d).
`
`In its Decision, the Board determined that Petitioner adequately made an
`
`initial showing that the cited references teach or suggest the limitations of the
`
`challenged claims, but exercised its discretion to deny institution due solely to the
`
`pending district court litigation involving the ’439 Patent. Decision at 14.
`
`Immediately after the Board issued its Decision, however, Patent Owner narrowed
`
`the litigation by dropping five of the seven challenged claims. Ex. 1022. As a
`
`result, only two of the claims challenged in the instant Petition (claims 1 and 5)
`
`will be evaluated by the district court. Id. Accordingly, any overlap between this
`
`proceeding and the litigation would be minimal. When considered in view of the
`
`holistic assessment required by Fintiv, these facts demonstrate that institution is the
`
`proper course of action.
`
`Further, granting the Request for Rehearing will discourage the type of
`
`abusive gamesmanship in which Patent Owner is engaged. SAS designates the
`
`1
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`petitioner the “master of its complaint” and allows the petitioner to “define the
`
`contours of the proceeding” (SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355
`
`(2018)), yet denial of institution reverses the roles of the parties and effectively
`
`sanctions and
`
`incentivizes Patent Owner’s shady
`
`litigation
`
`tactics. This
`
`gamesmanship directly contravenes the Board’s goal of promoting efficiency and
`
`fairness in exercising its discretion under § 314. Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 at 6 (P.T.A.B. Mar. 20, 2020) (precedential).
`
`Petitioner respectfully requests that the Board grant rehearing for the reasons
`
`presented herein.
`
`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply, or a sur-
`
`reply.” 37 C.F.R. § 42.71(d).
`
`Institution decisions are reviewed on rehearing for an abuse of discretion.
`
`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
`
`based on an erroneous conclusion of law or clearly erroneous factual findings, or. .
`
`. a clear error of judgment.” Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369,
`
`Paper 14 at 3 (P.T.A.B. Aug. 12, 2015) (citation omitted).
`
`2
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`III. BASIS FOR THE REQUESTED RELIEF
`Patent Owner’s Removal of Five of the Seven Challenged Claims
`A.
`from the Parallel Litigation Immediately After the Decision
`Mitigates Concerns of Duplicative Efforts and Potentially
`Conflicting Decisions
`In its Petition for Inter Partes Review, Petitioner sought review of claims 1-7
`
`of the ’439 Patent, asserting that these claims are invalid under 35 U.S.C. § 103
`
`over Englman, Ronen, and Schulhof. Decision at 4-5. All seven claims of the ’439
`
`Patent were at issue in the parallel litigation when Petitioner filed the instant
`
`Petition. Ex. 1019. In evaluating the Fintiv Order’s “overlap” factor, the Board
`
`noted that the Petition and litigation concerned “the exact same challenged claims”
`
`and expressed concerns about duplicative efforts and potentially conflicting
`
`decisions between the two proceedings. Decision at 12-13. Immediately after the
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`Board exercised its discretion to deny institution on § 314 grounds, however,
`
`Patent Owner dropped five of the seven challenged claims from the litigation. That
`
`litigation, which has been postponed until at least May 2021 (Ex. 1021), is now
`
`proceeding on a single independent claim (claim 1) and a single dependent claim
`
`(claim 5) of the ’439 Patent. Ex. 1022.
`
`This development is a proper basis for granting rehearing because it
`
`constitutes a matter the Board misapprehended or overlooked in the Decision. The
`
`Board may properly consider post-decision developments in determining whether a
`
`misapprehension or overlooking of facts justifies the grant of a Request for
`
`3
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`Rehearing. See Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-
`
`01393, Paper 24 (P.T.A.B. June 16, 2020) (informative). In Sand Revolution, the
`
`Board stated that new evidence of record submitted after denial of institution
`
`mitigated concerns of the Board related to discretionary denial, and supported
`
`institution. Id. at 2-3. More recently, the Board explicitly stated that consideration
`
`of discretionary denial need not “be constrained to the facts as they existed when
`
`the Petition was filed.” Apple Inc. v. Maxwell, LTD, IPR2020-00200, Paper 21 at 4
`
`(P.T.A.B. Feb. 3, 2021) (referencing Sand Revolution).
`
`In the instant Decision, the Board acknowledged Petitioner adequately made
`
`an initial showing of obviousness (Decision at 14), yet now, because of Patent
`
`Owner’s gamesmanship, the dropped claims will be insulated from review.
`
`Accordingly, substantial issues will remain even after the parallel litigation
`
`concludes. For example, neither of the remaining claims (claims 1 and 5) address
`
`providing different game pieces to the plurality of users (claim 2). This omission is
`
`particularly egregious given that it relates to the very solution the ’439 Patent
`
`purports to provide: allowing users of different skill levels to participate in a
`
`cooperative game by allocating different game pieces to users having different
`
`parameter values. Pet. at 5. Rather, under the limitations of claim 1, multiple users
`
`in a group could collect the same game pieces.
`
`4
`
`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`Nor do claims 1 or 5 address what the game control device does with the
`
`stored allocation information when the predetermined period of time has elapsed
`
`(claim 3). Claim 1 merely recites that the allocation information is “stored…in the
`
`storage unit” and used to determine whether all of the required game pieces have
`
`been provided to the first plurality of users. Moreover, neither claim 1 nor claim 5
`
`recites periodically causing an event to occur for providing one or more of the
`
`plurality of game pieces to a user. Rather, claim 1 involves a single “group event”
`
`in which the game control device provides game pieces to users and allocates a
`
`game item if the required game pieces have been provided within the
`
`predetermined time period. It does not contemplate that the game pieces could be
`
`collected over the course of multiple events after the predetermined period of time
`
`has elapsed, as recited in claim 4. Resolution of claims 1 and 5 at the district court
`
`will therefore not resolve a number of key issues in the Petition regarding the
`
`validity of these claims.
`
`The Fintiv factors favor institution in view of these changed facts. The
`
`Board’s stated concerns about duplicative efforts and the potential for conflicting
`
`decisions are rendered moot due to the lack of overlap between the instant IPR and
`
`the parallel litigation. The Board recently found the overlap factor weighed against
`
`discretionary denial where, as here, the patent owner reduced the number of claims
`
`asserted in the litigation such that the majority of claims challenged in the IPR
`
`5
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`were not at issue in the parallel proceeding. See Samsung Elecs. Am., Inc. v. Snik,
`
`LLC, IPR2020-01429, Paper 10 at 11 (P.T.A.B. March 9, 2021). Similarly, in this
`
`case, inefficiency concerns are minimal because the Petition overlaps with only a
`
`small slice of the parallel proceeding. See also Illumina, Inc. v. Natera, Inc.,
`
`IPR2019-01201, Paper 19 at 6 (P.T.A.B. Dec. 18, 2019) (discretionary denial
`
`disfavored where the petition challenged additional claims beyond those reviewed
`
`by the district court); Precision Planting, LLC v. Deere & Co., IPR2019-01051,
`
`Paper 18 at 8-9 (P.T.A.B. Dec. 20, 2019) (same). Here, the potential for
`
`inconsistent results is limited to a single independent claim and a single dependent
`
`claim. Petitioner has further mitigated the potential for overlap by stipulating not to
`
`pursue the grounds from the instant Petition in the district court if the Board
`
`institutes Inter Partes Review. See Samsung Elecs. Am., IPR2020-01429, Paper 10
`
`at 11.
`
`Accordingly, the overlap factor favors instituting review of the ’439 Patent.
`
`B.
`
`Patent Owner’s Gamesmanship Thwarts the Notion that
`Petitioner is the “Master of its Complaint”
`Patent Owner initially asserted all seven claims of the ’439 Patent and all
`
`eleven claims of the related ’107 Patent (at issue in IPR2020-01633) in the parallel
`
`district court litigation. Ex. 1023. Petitioner thereafter filed the instant Petition,
`
`arguing that all claims of the ’439 Patent are invalid under 35 U.S.C. § 103. In its
`
`Preliminary Response, Patent Owner claimed that the overlap factor favored the
`
`6
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`Board’s exercise of discretionary denial, arguing that there was “substantial
`
`overlap between the claims, grounds, arguments, and evidence presented in the
`
`Petition and what has been, and continues to be, litigated in the parallel district
`
`court proceeding.” POPR at 21 (emphasis added). The Board relied on this
`
`statement in its analysis of the Fintiv factors, ultimately concluding that the overlap
`
`factor favored exercise of its discretion and denied institution under § 314.
`
`Decision at 14-15.
`
`Immediately after the Board’s Decision, however, Patent Owner dropped the
`
`majority of challenged claims from the litigation. Ex. 1022. Patent Owner
`
`thereafter informed the Board, in another matter between the parties, that
`
`narrowing of the claims at trial was “required by the District Court’s procedures”
`
`and that it was exercising its “common practice of selecting the claims it will
`
`present to the jury,” indicating Patent Owner knew in advance it would
`
`subsequently drop claims from the litigation. Ex. 1024 (emphasis added). Hence,
`
`while Patent Owner argued overlap of the claims asserted, it neglected to inform
`
`the Board that it was allegedly required to subsequently reduce the number of
`
`asserted claims. Id. These circumstances create a perception that Patent Owner
`
`intentionally made a false statement of material fact to the Board or failed to
`
`correct a false statement of material fact it previously made to the Board. See 37
`
`C.F.R. § 11.303(a)(1). Upholding the Board’s discretionary denial on these facts
`
`7
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`would effectively sanction this gamesmanship and incentivize such misleading
`
`tactics in the future.
`
`Moreover, the public’s interests, and Petitioner, are harmed by discretionary
`
`denial in this context. The Board already concluded that the Petition adequately
`
`made an initial showing that “the[] references teach or suggest the limitations of
`
`the challenged claims and that one of ordinary skill in the art would have combined
`
`the asserted references.” Decision at 14. The public has a “‘paramount interest in
`
`seeing that patent monopolies . . . are kept within their legitimate scope.’” Cuozzo
`
`Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (internal cite omitted).
`
`Exercising discretion here thwarts this interest and signals to patent owners that
`
`they can defeat IPR by asserting a single independent claim and a single dependent
`
`claim in a fast-moving parallel proceeding.
`
`The harms to the public directly impact Petitioner. “[P]etitioner is master of
`
`its complaint and normally entitled to judgment on all of the claims it raises.” SAS
`
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Exercising discretion here
`
`reverses the roles of the parties, allowing Patent Owner to limit Petitioner’s
`
`complaint to only two of the seven claims of the ’439 Patent.
`
`The Board’s goal in exercising its discretion under § 314 is to “balance[e]
`
`efficiency, fairness, and patent quality.” Decision at 6 (citing Fintiv, IPR2020-
`
`00019, Paper 11, at 5-6). By denying institution of petitions based solely on
`
`8
`
`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`parallel district court litigation, the Board is incentivizing Patent Owner
`
`gamesmanship and undermining
`
`the Board’s commitment
`
`to considering
`
`efficiency, fairness, and the merits in evaluating whether to exercise discretionary
`
`denial. Fintiv, IPR2020-00019, Paper 11 at 6. It is manifestly unfair and inefficient
`
`to deny institution of a meritorious Petition because a narrow subset of the
`
`challenged claims are asserted in the parallel proceeding. Denying institution in
`
`this context allows bad patents to persist and incentivizes patent owners to engage
`
`in gamesmanship.
`
`IV. CONCLUSION
`Petitioner respectfully requests that the Board grant Rehearing and institute
`
`Inter Partes Review of the ’439 Patent. Doing so will further public interests by
`
`improving patent quality and will be an efficient use of the Board’s time and
`
`resources in light of the lack of overlap between the instant Petition and the related
`
`litigation.
`
`
`
`Dated: March 19, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`9
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`
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`IPR2020-01628
`Petitioner’s Request for Rehearing
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Request for
`
`Rehearing and Exhibits 1021-1024 were served on Patent Owner’s lead and back-up
`
`counsel in its entirety by electronic service at the email addresses provided below:
`
`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
`
`
`
`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
`
`
`Date: March 19, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`10
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