UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2020-01628
`U.S. Patent No. 9,561,439
`
`
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2020-01628
`U.S. Patent No. 9,561,439
`
`
`
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ....................................... 2, 4
`Edwards Lifesciences v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) .............................................. 3
`Illumina, Inc. v. Natera, Inc.,
`IPR2019-01201, Paper 19 (P.T.A.B. Dec. 18, 2019) ........................................... 4
`KeyMe, LLC v. The Hillman Group, Inc.,
`IPR2020-01485, Paper 11 (P.T.A.B. Mar. 31, 2021) ....................................... 2, 3
`Precision Planting, LLC v. Deere & Co.,
`IPR2020-01051, Paper 18 (P.T.A.B. Dec. 20, 2019) ........................................... 4
`Samsung Electronics America, Inc. v. Snik, LLC,
`IPR2020-01429, Paper 10 (P.T.A.B. Mar. 9, 2021) ............................................. 4
`Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01552, Paper 12 (P.T.A.B. Mar. 3, 2021) ......................................... 2, 3
`Supercell Oy v. GREE, Inc.,
`IPR2020-01619, Paper 15 (P.T.A.B. Mar. 24, 2021) ........................................... 2
`Vizio, Inc. v. Polaris PowerLED Technologies, LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) ......................................... 2, 3
`
`
`
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Sixth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 94 (E.D. Tex. Oct.
`23, 2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Order Regarding Sixth Amended Docket Control Order, GREE,
`Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00311, Document
`96 (E.D. Tex. Oct. 26, 2020)
`
`Joint Motion to Amend Docket Control Order, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00311, Document 93 (E.D.
`Tex. Oct. 22, 2020)
`
`Complaint, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00311, Document 1 (E.D. Tex. Sept. 16, 2019)
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00311 (E.D. Tex.), dated April 7, 2020
`
`Exhibit B-2 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.),
`dated April 7, 2020
`
`Exhibit B-8 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.),
`dated April 7, 2020
`
`Excerpts of the Expert Report of Jose Zagal, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00311 (E.D. Tex.), dated
`November 2, 2020
`
`Buehler, Katie, ‘Clash of Clans’ Game Maker Owes $8.5M, Texas
`Jury Says, Law360 (September 18, 2020)
`
`ii
`
`
`
`Exhibit No.
`2010
`
`Description
`Order, Solas OLED Ltd. v. Samsung Display Co., Ltd. et al., Civil
`Action No. 2:19-cv-001520, Document 302 (E.D. Tex.), dated
`November 20, 2020
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`Claim Construction Memorandum Opinion and Order, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00311, Document 86
`(E.D. Tex. Oct. 12, 2020)
`
`Seventh Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 120 (E.D. Tex.
`Dec. 10, 2020)
`
`Eighth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00311, Document 133 (E.D. Tex.
`Dec. 17, 2020)
`
`Notice of Jury Selection, GREE, Inc. v. Supercell Oy, Civil Action
`No. 2:19-cv-00311 (E.D. Tex. Mar. 25, 2021)
`
`March 30, 2021 Email Correspondence from Law Clerk to Chief
`Judge Rodney Gilstrap, U.S. District Court for the Eastern District
`of Texas, May 2021 Trial Setting and Jury Selection, GREE, Inc.
`v. Supercell Oy, Civil Action Nos. 2:19-cv-00200, -237, -310, -311
`(E.D. Tex.)
`
`Model Order Focusing Patent Claims and Prior Art to Reduce
`Costs, U.S. District Court for the Eastern District of Texas
`
`February 10, 2021 Letter Correspondence from Michael J.
`Sacksteder to Steven D. Moore, GREE, Inc. v. Supercell Oy, Civil
`Action Nos. 2:19-cv-00200, -237, -310, -311 (E.D. Tex.)
`
`
`
`iii
`
`
`
`The Board did not abuse its discretion in denying institution based on “a
`
`holistic analysis of the Fintiv Order factors.” Paper 9, at 14–15. The Board found
`
`that “factors 2–5 weigh toward denying institution,” while “factors 1 and 6 are
`
`neutral.” Id. at 14. And taken together, the Board found “[t]he facts of the present
`
`record indicate that duplication of efforts and potential for inconsistent results exist,
`
`because both the district court and the Board would consider substantially identical
`
`issues and the district court will reach trial many months before we would issue a
`
`final written decision.” Id. Indeed, trial is set to begin in just a few weeks—on April
`
`30, 2021. Ex. 2015.
`
`Petitioner argues that the Board should grant rehearing and institute review in
`
`view of a single aspect of Fintiv Factor 4—the overlap between issues raised in the
`
`Petition and in the parallel district court proceeding. But Petitioner does not dispute
`
`that the “same statutory grounds, the same arguments, and substantially the same
`
`prior art evidence are at issue” in both tribunals. Paper 9, at 12. Rather, Petitioner
`
`contends rehearing is warranted solely due to Patent Owner’s recent narrowing of
`
`asserted claims it will present at the imminent trial (as required by the district court’s
`
`procedures). Paper 10, at 1, 3–6. But the fact that the Petition challenges additional
`
`claims does not preclude a finding of overlap, as discussed below—let alone justify
`
`rehearing and institution of review. Indeed, the Board has recently denied institution
`
`on petitions brought by this same Petitioner against this same Patent Owner under §
`
`
`
`
`
`314(a) despite similar, recent narrowing of asserted claims in respective parallel
`
`district court proceedings. See, e.g., Supercell Oy v. GREE, Inc., IPR2020-01619,
`
`Paper 15, at 13–16 (P.T.A.B. Mar. 24, 2021).
`
`Moreover, the fact that the parallel proceeding here has progressed so far as
`
`to require narrowing of asserted claims for trial strongly favors discretionary denial,
`
`as the Board previously found. See Paper 9, at 8–9. Patent Owner has not engaged
`
`in any “gamesmanship” or “shady litigation tactics” by so narrowing its asserted
`
`claims. Rather, Patent Owner followed common practice of selecting the claims it
`
`will present to the jury, as trial draws near, given the district court’s directives in
`
`view of its time limits on trials. See Ex. 2016.
`
`A. There Remains Substantial Overlap of Issues Between Tribunals
`Under Fintiv, there need only be some “overlap” between issues in the petition
`
`and the parallel proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at
`
`6 (P.T.A.B. Mar. 20, 2020). And the Board has consistently found that this factor
`
`weighs in favor of discretionary denial even when there is not complete identity of
`
`challenged claims. See, e.g., KeyMe, LLC v. The Hillman Group, Inc., IPR2020-
`
`01485, Paper 11, at 11–12 (P.T.A.B. Mar. 31, 2021); Samsung Elecs. Co. Ltd. v.
`
`Clear Imaging Research, LLC, IPR2020-01552, Paper 12, at 21–23 (P.T.A.B. Mar.
`
`3, 2021); Vizio, Inc. v. Polaris PowerLED Technologies, LLC, IPR2020-00043,
`
`Paper 30, at 11 (P.T.A.B. May 4, 2020). The Board has specifically held: “[T]he
`
`2
`
`
`
`mere existence of non-overlapping claims does not support Petitioner’s position that
`
`this factor favors institution.” Samsung, IPR2020-01552, Paper 12, at 21.
`
`Indeed, resolution of Petitioner’s challenge to independent claim 1 and
`
`dependent claim 5 at the district court will resolve key issues in the Petition. For
`
`example, Petitioner’s challenges in the Petition with respect to independent claims
`
`6 and 7 present the “same reasons” as independent claim 1. See Pet. at 55–57. And
`
`Petitioner’s challenges with respect to dependent claims 2–4 are necessarily
`
`dependent on—and thereby largely duplicative of—Petitioner’s challenge to claim
`
`1. Cf. KeyMe, IPR2020-01485, Paper 11, at 12 (noting “overlapping limitations”
`
`across challenged claims). Thus, Petitioner “does not show that the non-overlapping
`
`claims differ significantly” from the overlapping claims. Samsung, IPR2020-01552,
`
`Paper 12, at 22–23; see also Vizio, IPR2020-00043, Paper 30, at 11.
`
`Moreover, Petitioner’s argument that “substantial issues will remain even
`
`after the parallel litigation concludes” (Paper 10, at 4) ignores the fact that Patent
`
`Owner will not have the option to later assert the non-elected claims of the ’439
`
`Patent. Thus, “denying Petitioner the ability to challenge [those few claims] in this
`
`proceeding is not unduly prejudicial to Petitioner.” Edwards Lifesciences v. Evalve,
`
`Inc., IPR2019-01479, Paper 7, at 12 (P.T.A.B. Feb. 26, 2020).
`
`As such, it remains “inefficient” to proceed with the Petition given the
`
`imminent trial at the district court, which will “resolve validity of enough
`
`3
`
`
`
`overlapping claims to resolve key issues in the petition.” Fintiv, IPR2020-00019,
`
`Paper 11, at 13. The Board’s stated concerns regarding duplication of efforts and
`
`potential for inconsistent results are thus not “rendered moot” due to the alleged
`
`“lack of overlap between the instant IPR and the parallel litigation,” as Petitioner
`
`incorrectly contends. Quite the opposite, Petitioner does not dispute that the “same
`
`statutory grounds, the same arguments, and substantially the same prior art evidence
`
`are at issue” in the two tribunals, as found by the Board (Paper 9, at 12), and there
`
`also exists “substantial overlap” with respect to the challenged claims, as discussed.
`
`The cases cited by Petitioner are inapposite. In Samsung Electronics America,
`
`Inc. v. Snik, LLC, “significant effort remain[ed] to be expended in the parallel
`
`proceeding,” and the court required the Patent Owner to reduce the number of
`
`asserted claims to no more than five of the fifty-five claims challenged in the Petition.
`
`IPR2020-01429, Paper 10, at 11 (P.T.A.B. Mar. 9, 2021). In Precision Planting,
`
`LLC v. Deere & Co., the Board found the “facts of th[e] case do not warrant
`
`discretionary denial” where the parallel proceeding was not at an advanced stage
`
`and only two of the twenty challenged claims were asserted in the first instance.
`
`IPR2020-01051, Paper 18, at 9–10 (P.T.A.B. Dec. 20, 2019). In Illumina, Inc. v.
`
`Natera, Inc., eight of the challenged claims in the Petition had never been asserted
`
`in the parallel proceeding, and the Board thus found that “denial of the Petition could
`
`cause Petitioner harm because Patent Owner could later assert the[se] additional
`
`4
`
`
`
`claims against Petitioner.” IPR2019-01201, Paper 19, at 6–7 (P.T.A.B. Dec. 18,
`
`2019). No such harm exists here with respect to the non-elected claims, as discussed.
`
`B.
`Patent Owner Has Not Engaged In Any “Gamesmanship”
`In its Preliminary Response, Patent Owner highlighted the significant overlap
`
`between the claims challenged in the Petition and at the district court. Paper 6, at 25.
`
`Subsequent thereto, and indeed after the Board’s decision on institution, Patent
`
`Owner selected the narrowed claims it will present to the jury in accordance with
`
`district court’s directives in view of its time limits on trials. Ex. 1022; see Ex. 2016.
`
`Petitioner knew that this narrowing was forthcoming, however, and indeed, in mid-
`
`February demanded Patent Owner narrow its asserted claims. See Ex. 2017.
`
`This common practice of plaintiffs focusing on specific claims for trial—and
`
`defendants likewise selecting specific prior art for trial—is far afield from “shady
`
`litigation tactics” or ‘gamesmanship.” Rather, it “streamlines the issues in th[e] case
`
`to promote a ‘just, speedy, and inexpensive’ determination of th[e] action.” Ex.
`
`2016, at 1. Thus, the Board’s decision denying institution here does not “incentivize”
`
`any allegedly “misleading tactics in the future.” Rather, the decision achieves the
`
`goal of eliminating duplication of efforts and potential for inconsistent results across
`
`multiple
`
`tribunals where
`
`the parallel district court proceeding—involving
`
`substantially the same issues—is at such an extremely advanced state that the Patent
`
`Owner has, in fact, narrowed its claims for an imminent trial, like here.
`
`5
`
`
`
`Dated: April 5, 2021
`
`
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`
`
`
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Request for Rehearing Under 37 C.F.R. §42.71 has been
`
`served electronically via email upon counsel for Petitioner at RPatel-
`
`ptab@fenwick.com.
`
`
`Dated: April 5, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`
`
`7
`
`
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