IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`I.
`Patent Owner’s Improper Gamesmanship Is Clear ........................................ 1
`II.
`The Overlap factor favors institution ............................................................. 2
`
`
`
`
`
`
`
`
`i
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple, Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) .................................... 2, 3
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014) ............................................................................ 3
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`OTHER AUTHORITIES
`37 C.F.R. § 42.11(a) ................................................................................................... 1
`
`
`
`ii
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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 Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Exhibit
`
`Description
`
`1014
`
`1015
`
`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)
`
`1016
`
`1017
`
`1018
`
`1019
`
`1021
`
`1022
`
`iv
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Exhibit
`
`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.)
`
`1023
`
`1024
`
`
`
`
`
`v
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`PATENT OWNER’S IMPROPER GAMESMANSHIP IS CLEAR
`Patent Owner’s Response (referred to by the Board as a “Reply”) does
`
`I.
`
`nothing to assuage the perception that it misled the Board regarding overlap with
`
`the parallel litigation by creating the impression that all of the claims at issue in the
`
`litigation as of the POPR would actually be litigated. The Board’s reliance on
`
`Patent Owner’s misleading statements caused it to misapprehend or overlook the
`
`true lack of overlap. Decision at 12-13. Granting rehearing is therefore the
`
`appropriate course of action. Otherwise, the Board’s commitment to evaluating
`
`efficiency, fairness, and the merits would be thwarted; Patent Owner would benefit
`
`from its gamesmanship; and other Patent Owners would likely use the same tactics
`
`in subsequent PTAB proceedings.
`
`Patent Owner’s primary excuse is it “followed [the] common practice of
`
`selecting the claims it will present to the jury … given the district court’s directives
`
`in view of its time limits on trials.” Patent Owner Response to Request for
`
`Rehearing (“PO Response”) at 2. But if Patent Owner knew in advance it would
`
`need to limit the asserted claims due to “time limits on trials,” it should have
`
`informed the Board of this fact. “Parties and individuals involved in the
`
`proceeding have a duty of candor and good faith to the Office during the course of
`
`a proceeding.” 37 C.F.R. § 42.11(a). Here, Patent Owner did not act accordingly.
`
`Rather, it created a perception that all of the issues in the IPR would also be
`
`1
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`addressed at trial, telling the Board 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.
`
`Even now, Patent Owner is seemingly attempting to mislead the Board on
`
`this issue. The Model Order quoted and relied upon by Patent Owner in its
`
`Response was not entered in the parallel litigation. See PO Response at 5; Ex.
`
`2016. Thus Patent Owner was not, and is not, bound by the limitations on asserted
`
`claims described therein.
`
`Patent Owner’s behavior undermines the rationale for discretionary denial.
`
`“The Board recognizes…that it is often reasonable for a petitioner to wait to file its
`
`petition until it learns which claims are being asserted against it in the parallel
`
`proceeding.” Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11 (P.T.A.B.
`
`March 20, 2020). But Patent Owner would have it such that the Petitioner never
`
`knows which claims are actually being asserted in the parallel proceeding, because
`
`Patent Owners could drop claims with impunity after misleading the Board as to
`
`the extent of overlap.
`
`II. THE OVERLAP FACTOR FAVORS INSTITUTION
`Patent Owner’s statement that trial involving only claims 1 and 5 “will
`
`resolve key issues in the Petition” is simply wrong. PO Response at 3. “[T]he
`
`2
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`similarity of the claims challenged in the petition to those at issue in the district
`
`court” is the core issue under the overlap factor. Fintiv, IPR2020-00019, Paper 11
`
`at 13. Petitioner explained how the elected claims asserted in the litigation
`
`significantly differ from the other claims challenged in the IPR. Request for
`
`Rehearing at 9-10. Yet Patent Owner does not even touch on the substance of the
`
`claims in its Response. See PO Response at 2-4.
`
`Patent Owner’s insinuation that Petitioner is not prejudiced by the continued
`
`validity of the non-elected claims is likewise incorrect. Patent Owner tellingly fails
`
`to provide a stipulation or other commitment to never assert the non-elected claims
`
`against Petitioner. As a result, Petitioner remains under threat of continued attack
`
`using the non-elected claims even after the parallel litigation. See Brain Life, LLC v.
`
`Elekta Inc., 746 F.3d 1045, 1059 (Fed. Cir. 2014) (raising the possibility that
`
`dropped claims could be re-asserted against a different version of a previously
`
`litigated product). In addition, Patent Owner could subsequently assert similar
`
`claims from one or more of the numerous child patents and pending applications in
`
`this family. These harms are not speculative in view of Patent Owner’s
`
`demonstrated litigiousness.
`
`Likewise, the public interest is harmed by Patent Owner’s duplicitous
`
`behavior. Patent Owner could assert any or all of the non-elected claims against a
`
`third party not involved in the parallel litigation. This is in part why the public has a
`
`3
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`“paramount interest in seeing that patent monopolies . . . are kept within their
`
`legitimate scope.” Request for Rehearing at 8 (citing Cuozzo Speed Techs. v. Lee,
`
`136 S. Ct. 2131, 2144 (2016) (internal citation omitted)).
`
`Accordingly, for the factors noted herein, granting Petitioner’s Request for
`
`Rehearing and instituting Inter Partes review would be proper in this matter.
`
`
`Dated: April 14, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`4
`
`
`
`IPR2020-01628
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
`
`Patent Owner’s Response to Petitioner’s Request for Rehearing was served on
`
`Patent Owner’s lead and back-up counsel in its entirety by electronic service at the
`
`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
`
`
`
`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
`
`
`Date: April 14, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`5
`
`
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