IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In the Inter Partes Review of:
`
`U.S. Patent No. 9,561,439
`
`
`
`
`For: GAME CONTROL METHOD,
`GAME CONTROL DEVICE, AND
`RECORDING MEDIUM
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`DECLARATION OF EMMET J. WHITEHEAD, JR., Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,561,439
`
`
`
`
`
`Supercell
`Exhibit 1003
`Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`In the Inter Partes Review of:
`
`U.S. Patent No. 9,561,439
`
`
`
`
`For: GAME CONTROL METHOD,
`GAME CONTROL DEVICE, AND
`RECORDING MEDIUM
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`DECLARATION OF EMMET J. WHITEHEAD, JR., Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,561,439
`
`
`
`
`
`Supercell
`Exhibit 1003
`Page 1
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 1
`II.
`III. COMPENSATION AND RELATIONSHIP WITH PARTIES ...................... 4
`IV. MATERIAL CONSIDERED .......................................................................... 4
`V.
`BASIS OF OPINIONS FORMED .................................................................. 6
`A.
`Level of Ordinary Skill in the Art ......................................................... 6
`VI. THE ‘439 patent .............................................................................................. 7
`A.
`Purported Invention of the ‘439 Patent ................................................. 7
`B.
`Prosecution History ............................................................................. 14
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION ............................ 14
`VIII. OBVIOUSNESS STANDARD ..................................................................... 17
`IX. ANALYSIS OF THE TECHNICAL BASIS UNDERLYING THE
`GROUNDs OF REJECTION SET FORTH IN THE PETITIONs
`FOR INTER PARTES REVIEW .................................................................... 21
`A.
`State of the Art ..................................................................................... 21
`B.
`Specific References that Render Claims Obvious ............................... 26
`1.
`The combination of Englman, Ronen, and Schulhof
`renders obvious the claims of the ‘439 patent .......................... 26
`U.S. Patent Pub. No. 2011/0300926 to Englman et al. ............. 27
`U.S. Patent Pub. No. 2013/0190094 to Ronen et al. ................. 55
`U.S. Patent No. 8,376,828 to Schulhof ..................................... 60
`Rationale to Combine Englman, Ronen, and Schulhof ............ 62
`
`2.
`3.
`4.
`5.
`
`
`
`i
`
`Supercell
`Exhibit 1003
`Page 2
`
`
`
`TABLE OF CONTENTS
`(Continued)
`
`Page
`Secondary Considerations ......................................................... 67
`6.
`Claim Chart and Summary of Invalidity ................................... 68
`7.
`CONCLUSION ............................................................................................ 115
`
`X.
`
`
`
`
`
`
`ii
`
`Supercell
`Exhibit 1003
`Page 3
`
`
`
`
`
`I.
`
`I, Emmet J. Whitehead, Jr., Ph.D., declare as follows:
`
`INTRODUCTION
`I have been asked by the party requesting this review, Supercell Oy
`1.
`
`(“Petitioner”), to provide my expert opinions in support of the above-captioned
`
`petition for inter partes review of U.S. Patent No. 9,561,439 (the “‘439 patent” or
`
`the “challenged patent”), challenging the patentability of claims 1-7 of the ‘439 patent.
`
`2.
`
`3.
`
`I currently hold the opinions set forth in this declaration.
`
`In summary, it is my opinion that the references cited below render
`
`obvious the challenged claims of the ‘439 patent. My detailed opinions on the claims
`
`are set forth below.
`
`II. BACKGROUND AND QUALIFICATIONS
`I earned a Bachelor of Science degree from Rensselaer Polytechnic
`4.
`
`Institute in 1989, and both a Master of Science in 1994 and Ph.D. in 2000 in
`
`Information and Computer Science from the University of California, Irvine.
`
`5.
`
`I am currently a Professor in the Computational Media Department at
`
`the University of California, Santa Cruz (“UCSC”) in Santa Cruz, California. I am
`
`also the Associate Dean for Undergraduate Affairs for the Baskin School of
`
`Engineering at UCSC. I was the Chair of the Computational Media Department at
`
`UCSC from 2017-2019, and I was the Chair of the Computer Science Department at
`
`UCSC from 2010 to 2014. I have been a Full Professor at UCSC since 2011. I
`
`1
`
`Supercell
`Exhibit 1003
`Page 4
`
`
`
`
`
`began working as an Assistant Professor at UCSC in 2000 and became an Associate
`
`Professor in 2006.
`
`6. My Ph.D. research included being the Founder and Chair of the Internet
`
`Engineering Task Force (IETF) Working Group on Web Distributed Authoring and
`
`Versioning (WEBDAV). WEBDAV is an extension to the core network protocol of
`
`the World Wide Web, the HyperText Transfer Protocol (HTTP) to support remote
`
`authoring and version control. WEBDAV is a client-server network protocol. The
`
`IETF is a leading standards development organization for Internet protocols.
`
`7.
`
`In 2005-2006, I led efforts at UCSC to create the BS Computer Science:
`
`Computer Game Design degree, the first game design and development degree
`
`program in the University of California system. My classes have covered the areas
`
`of Computer Games, Web Engineering, and Software Engineering. Specific classes
`
`have covered topics of computer game design, programming and projects,
`
`procedural content generation for games, construction of database-backed web
`
`applications, and Internet protocol design, at both the undergraduate and graduate
`
`level. For thirteen years I have taught senior undergraduate game design students
`
`working on year-long game projects, and in this role, I have overseen the creation of
`
`over 120 computer games. I have also supervised both masters and doctoral students
`
`in the pursuit of their thesis work. Focuses of my research have included design of
`
`serious games and social network games, procedural content generation for games,
`
`2
`
`Supercell
`Exhibit 1003
`Page 5
`
`
`
`
`
`Internet protocol design, software repository mining, web engineering, and software
`
`engineering.
`
`8.
`
`As a Professor at UCSC I was Principal Investigator for the Defense
`
`Advanced Research Projects Agency (“DARPA”) project Crowd Sourced Formal
`
`Verification. For this project, I led the creation of a mobile game titled Xylem: The
`
`Code of Plants (“Xylem”) which operated on Apple and Android tablets and
`
`communicated via the Internet with a back-end server to retrieve puzzle level
`
`information and store player puzzles responses and progress. This game was
`
`publicly available in online Apple and Android application stores.
`
`9.
`
`I have authored or co-authored 15 peer-reviewed journal papers, 91
`
`peer-reviewed conference and workshop papers, and 3 book chapters on topics of
`
`game design, internet protocol design, procedural content generation, and software
`
`engineering.
`
`10.
`
`I am versatile in the primary technologies used to construct computer
`
`games over the past 15 years, including the Unity and Unreal game engines, C++
`
`game programming, and HTML5/Canvas/JavaScript. I am also versatile in the key
`
`protocols, including HTTP, used for requesting and receiving content (such as web
`
`pages) on the World Wide Web. I am also versatile in the operation of web server
`
`programs used to receive and process requests for Web content and send the
`
`3
`
`Supercell
`Exhibit 1003
`Page 6
`
`
`
`
`
`requested content, and browser programs used to request Web content and then to
`
`receive and render the Web content.
`
`11. Based at least on my education and experience, I consider myself to be
`
`an expert in the construction of computer games for both desktop and mobile
`
`platforms, the design of client-server systems, the design of client-server internet
`
`protocols, and in the protocols used on the World Wide Web.
`
`12. My professional background and technical qualifications also are
`
`reflected in my Curriculum Vitae, which is attached as Exhibit 1013.
`
`III. COMPENSATION AND RELATIONSHIP WITH PARTIES
`I am being compensated for my time. This compensation is not
`13.
`
`contingent upon my performance, the outcome of this matter, or any issues involved
`
`in or related to this matter.
`
`14.
`
`I have no financial interest in Petitioner or any related parties. I have
`
`been informed that GREE, Inc. (“GREE”) owns the challenged patent. I have no
`
`financial interest in and have no contact with GREE beyond the kinds of cursory
`
`interactions I often have with game industry professionals at conferences. I similarly
`
`have no financial interest in the challenged patent and have not had any contact with
`
`the named inventors.
`
`IV. MATERIAL CONSIDERED
`I have reviewed and considered, in the preparation of this declaration,
`15.
`
`the following documents related to the challenged patent:
`
`4
`
`Supercell
`Exhibit 1003
`Page 7
`
`
`
`
`
`a.
`
`The ‘439 patent (Ex. 1001) and the prosecution file history for
`
`the ‘439 patent (Ex. 1002).
`
`16.
`
`I have also reviewed and understand various references as discussed
`
`herein, including the following:
`
`a.
`
`U.S. Patent Pub. No. 2011/0300926 to Englman et al. (Ex. 1004
`
`“Englman”).
`
`b.
`
`U.S. Patent Pub. No. 2013/0190094 to Ronen et al. (Ex. 1005
`
`“Ronen”).
`
`c.
`
`U.S. Patent No. 8,376,838 to Schulhof et al. (Ex. 1006
`
`“Schulhof”).
`
`17.
`
`I understand that the above references form the basis for the grounds
`
`for invalidity set forth in the Petition for Inter Partes Review of the challenged
`
`patent.
`
`18.
`
`I understand that, for purposes of determining whether a reference will
`
`qualify as prior art, the challenged claims of the challenged patent are entitled to an
`
`effective filing date of no earlier than March 12, 2013.
`
`19. Additionally, I am aware of information generally available to, and
`
`relied upon by, a person of ordinary skill in the art (“POSITA”) as of the effective
`
`filing date of the challenged patent, including computer games, technical dictionaries
`
`and technical reference materials (including, for example, textbooks, manuals,
`
`5
`
`Supercell
`Exhibit 1003
`Page 8
`
`
`
`
`
`technical papers, articles, and relevant technical standards); some of my statements
`
`below are expressly based on such awareness.
`
`20.
`
`I reserve the right to supplement my opinions to address any
`
`information obtained, or positions taken, based on any new information that comes
`
`to light throughout this proceeding.
`
`V. BASIS OF OPINIONS FORMED
`A. Level of Ordinary Skill in the Art
`It is my understanding that the challenged patent is to be interpreted
`21.
`
`based on how it would be read by a POSITA at the time of the effective filing date
`
`of the application. It is my understanding that factors such as the education level of
`
`those working in the field, the sophistication of the technology, the types of problems
`
`encountered in the art, the prior art solutions to those problems, and the speed at
`
`which innovations are made may help establish the level of skill in the art.
`
`22.
`
`I am familiar with the technology at issue and the state of the art at the
`
`effective filing date of the challenged patent, March 12, 2013.
`
`23.
`
`In my opinion, the level of ordinary skill in the art of the challenged
`
`patent at the time of the effective filing date is a person with a bachelor’s degree in
`
`game design/development,
`
`interactive media, computer science, computer
`
`engineering, or a related field, with at least two years of professional experience
`
`working in computer game design/development. With more education, such as
`
`additional graduate degrees or study, less professional experience is needed to attain
`
`6
`
`Supercell
`Exhibit 1003
`Page 9
`
`
`
`
`
`the ordinary level of skill. Similarly, with more experiential knowledge of computer
`
`games, such as experience developed while playing computer games, less
`
`professional experience is needed to attain the ordinary level of skill.
`
`24.
`
`I consider myself to have at least such ordinary skill in the art with
`
`respect to the subject matter of the challenged patent at the time of the effective filing
`
`date.
`
`VI. THE ‘439 PATENT
`25. The ‘439 patent is entitled “Game Control Method, Game Control
`
`Device, and Recording Medium.” The ‘439 patent includes 7 claims, all of which
`
`are challenged in the Petition for Inter Partes Review.
`
`Purported Invention of the ‘439 Patent
`A.
`26. 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 that “[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, 1:67-2:4.
`
`7
`
`Supercell
`Exhibit 1003
`Page 10
`
`
`
`
`
`27. According to the specification, because 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” such that a user at a lower level may only be able to join guilds
`
`with other similarly situated users and thus may not be able to obtain certain rewards.
`
`Ex. 1001, 2:13-20. The specification notes that this can “cause the motivation for
`
`the game of a user at a low level to be reduced.” Ex. 1001, 2:21-22.
`
`28.
`
`In the specification, the purported solution to the alleged problem with
`
`such social games 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 to “collect a plurality of game pieces constituting one item that
`
`appears in the card battle game.” Ex. 1001, 17:66-18:1. As discussed below, this
`
`concept is quite well-known.
`
`29. Figures (FIGS.) 1 and 2 of the ‘439 patent illustrate the network system
`
`and game control device used to provide the social game. 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 the guild members
`
`8
`
`Supercell
`Exhibit 1003
`Page 11
`
`
`
`
`
`(“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, 19:47-49.
`
`30. Each game piece may be provided to a user based on a parameter value
`
`for that user. Ex. 1001, 25:60-62. A POSITA would understand that the parameter
`
`value of a user is a value representing a characteristic of that user, such as the user’s
`
`skill or level in the game. 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 indicated by the level information stored in the storage unit 42.”). For
`
`example, 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, 19:65-20:15. “[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. Because the different jewel pieces appear with different probabilities
`
`9
`
`Supercell
`Exhibit 1003
`Page 12
`
`
`
`
`
`based on skill level, a guild is required to have players of different skill levels to
`
`collect all of the pieces to obtain the reward.
`
`31. According to the specification, 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, 21:32-34, 22:1-4. During the guild event, a plurality of game pieces may
`
`be obtained by the guild members in this manner. Ex. 1001, 22:20-24.
`
`32. To determine whether to give rewards in the guild event to the guild
`
`members, the game control unit 54 acquires the obtained game piece information
`
`from the storage unit 42 and determines whether the game pieces constituting the
`
`item have been provided to the guild members having differing parameter values.
`
`Ex. 1001, 23:8-12 This means guild members having differing skill levels according
`
`to the specification of the ‘439 patent. Ex. 1001,19:7-21. If six game pieces are
`
`required to obtain a game item, the game control unit 54 determines whether all six
`
`pieces are included in the obtained game piece information. If the game control unit
`
`54 determines that the game pieces have been provided to the guild members, “the
`
`game control unit 54 gives a reward in accordance with all of the given game pieces”
`
`to the guild members. Ex. 1001, 23:13-40. Hence, all that is described is a multi-
`
`player game in which progress of group members that are each characterized by
`
`10
`
`Supercell
`Exhibit 1003
`Page 13
`
`
`
`
`
`different parameter (skill) values is monitored for collection of different game pieces
`
`that are required to obtain a game item as a reward, a concept that was well-known
`
`in the art.
`
`33.
`
`I refer now to the claims. Independent claim 1 recites a “game control
`
`method carried out by a game control device for providing a game to a plurality of
`
`communication terminals respectively used by a plurality of users.” Claim 1 also
`
`provides that the game control device “communicat[es] with the plurality of
`
`communication terminals over a communication network” and “[has] a storage unit
`
`for storing information for each of the plurality of users.” Independent claim 6
`
`recites a device claim. Independent claim 7 recites a computer readable recording
`
`medium. Ex. 1001, 25:37-67, 26:31-27:19.
`
`34. All three independent claims essentially recite variations of the same
`
`nine basic elements I will note below.
`
`35. The first element is “grouping the plurality of users into one or more
`
`groups.” Ex. 1001, 25:44-45, 26:42-43, 27:4-5.
`
`36. The second element is “storing a correspondence between the plurality
`
`of users and the one or more groups in the storage unit.” Ex. 1001, 25:46-47,
`
`26:35-36, 27:6-7.
`
`37. The third element is “transmitting information over the communication
`
`network to initiate a group event in which a first plurality of users forming a first
`
`11
`
`Supercell
`Exhibit 1003
`Page 14
`
`
`
`
`
`group cooperatively participate in the game.” Ex. 1001, 25:48-51, 26:43-46,
`
`27:8-11.
`
`38. The fourth element is “storing a parameter value for each of the
`
`plurality of users.” The parameter value for a respective user “is increased as the
`
`respective user makes progress in the group event.” Ex. 1001, 25:52-55, 26:36-39,
`
`27:12-15.
`
`39. The fifth element is “monitoring progress of the group event and
`
`updating the parameter value for each of the first plurality of users in accordance
`
`with the progress of the first group in the group event.” Ex. 1001, 25:56-59,
`
`26:46-49, 27:16-19.
`
`40. The sixth element is “providing at least one of a plurality of game pieces
`
`to each of the first plurality of users in the group event.” The game pieces are
`
`provided “based on the parameter value for the corresponding user” and are
`
`“required to obtain a game item.” Ex. 1001, 25:60-64, 26:50-53, 28:1-5.
`
`41. The seventh element is storing, in the storage unit, “allocation
`
`information indicating which game piece has been provided to which user.”
`
`Ex. 1001, 25:65-67. 26:40-41, 28:6-8.
`
`42. The eighth element is “determining whether all the required game
`
`pieces have been provided to the first plurality of users, based on the allocation
`
`information.” Ex. 1001, 26:1-3, 26:54-56, 28:9-11.
`
`12
`
`Supercell
`Exhibit 1003
`Page 15
`
`
`
`
`
`43. The ninth element is allocating the game item “to the first group or at
`
`least one of the first plurality of users, when it is determined that all the required
`
`game pieces have been provided within a predetermined period of time during which
`
`the group event is taking place.” The game item is allocated in a memory. Ex. 1001,
`
`26:4-8, 26:58-63, 28:12-17.
`
`44.
`
`In addition, the ‘439 patent includes claims 2-5, which depend from
`
`claim 1. Claims 6 and 7 do not have any dependent claims. Ex. 1001, 26:9-30.
`
`45. Claim 2 recites an additional condition for providing at least one of the
`
`plurality of game pieces to each of the first plurality of users in the sixth element
`
`(“providing”) above. Specifically, claim 2 recites that “different game pieces are
`
`respectively provided to the first plurality of users.” Ex. 1001, 26:9-11.
`
`46. Claim 3 recites that the method further comprises “deleting the
`
`allocation information from the storage unit when the predetermined period of time
`
`has elapsed.” Ex. 1001, 26:12-16.
`
`47. Claim 4 recites that the method further comprises “periodically causing
`
`an event to occur for providing one of the plurality of game pieces to a user” and
`
`that, in the sixth element (“providing”) above, “one of the plurality of game pieces
`
`is provided to one of the first plurality of users in the event.” Ex. 1001, 26:17-22.
`
`48. Claim 5 recites that the method further comprises “storing a ranking
`
`point for the first group when it is determined that all the required game pieces have
`
`13
`
`Supercell
`Exhibit 1003
`Page 16
`
`
`
`
`
`been provided” and “storing a reward for the first plurality of users in accordance
`
`with a total value of ranking points for the first group during a predetermined period
`
`of time.” Ex. 1001, 26:23-30.
`
`Prosecution History
`B.
`49. The ‘439 patent was filed on June 10, 2015 as U.S. Application No.
`
`14/735,958 (“the ’958 application”). The ’958 application claims priority to
`
`U.S. 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. I understand for the purposes
`
`of this Inter Partes Review proceeding that the challenged patent has an effective
`
`filing date no earlier than March 12, 2013.
`
`50.
`
`I have reviewed the prosecution history of the ‘439 patent. I understand
`
`that statements made during prosecution of a patent may influence the meaning of
`
`terms in the claims of that patent, as well as terms in other claims in the same patent
`
`family.
`
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION
`It is my understanding that “[i]n an inter partes review proceeding, a
`51.
`
`claim of a patent…shall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. §282(b),
`
`including construing the claim in accordance with the ordinary and customary
`
`14
`
`Supercell
`Exhibit 1003
`Page 17
`
`
`
`
`
`meaning of such claim as understood by one of ordinary skill in the art and the
`
`prosecution history pertaining to the patent.” 37 C.F.R. §42.100(b).
`
`52.
`
`I am not a patent attorney and my opinions are limited to what I believe
`
`a POSITA would have understood the meaning of certain claim terms to be, based
`
`on the patent specifications and prosecution histories.
`
`53.
`
`In my opinion, a POSITA would have no difficulty applying the plain
`
`and ordinary meanings of the majority of terms used in the claims. However, in
`
`view of the disclosures in the specification of the ‘439 patent and the prosecution
`
`history of the patent family, the claim terms 1) cooperatively participate in the game,
`
`2) parameter value and 3) ranking point require further explanation in order to
`
`understand the claims.
`
`54. Regarding “cooperatively participate in the game,” a POSITA would
`
`have understood that this would refer to working towards a common goal in the
`
`game. This is because the specification of the ‘439 patent recites that “[t]he purpose
`
`of the guild event is to collect a plurality of game pieces constituting one item that
`
`appears in the card battle game by a plurality of users (guild members) constituting
`
`the guild in cooperation with one another.” Ex. 1001, 17:66-18:3. This construction
`
`also is consistent with the figures of the ‘439 patent. For example, FIG. 12 shows
`
`that User 1 and User 2 are both members of Guild 1, and FIG. 13 shows the game
`
`pieces that guild members are required to collect in order to obtain various jewels
`
`15
`
`Supercell
`Exhibit 1003
`Page 18
`
`
`
`
`
`(Jewel A – Jewel D) as a reward (i.e., the task that the guild members are
`
`completing). See also Ex. 1001, Abstract, Background, 2:8-55, 4:4-16, 5:19-26,
`
`17:59-18:21, 21:11-22:40, 22:41-24:3, 24:4-25:20; FIGS. 14, 16, 17. Guild
`
`members are therefore working toward the common goal of obtaining jewels based
`
`on the collection of game pieces.
`
`55. Regarding a “parameter value,” a POSITA would have understood that
`
`this would refer to a “value representing a characteristic of the user, such as the
`
`user’s skill or level in the game.” This is because independent claims of the ‘439
`
`patent recite that a user’s parameter value is “increased as the respective user makes
`
`progress in the group event,” and that the system provides game pieces to a user
`
`“based on the parameter value for the corresponding user.” Ex. 1001, 25:52-55,
`
`25:56-59. Similarly, the specification describes that the “level of a user…increases
`
`in accordance with the progress of the card battle game” (Ex. 1001, 21:5-6)
`
`(emphasis added) and that the system determines whether to provide a game piece
`
`to a user based on “the appearance probability included in the game piece
`
`information” (which is based on a user’s skill level as described above) and “the
`
`level of the target user indicated by the level information stored in the storage unit
`
`42.” Ex. 1001, 21:38-41. A POSITA would understand that because the
`
`specification describes that the system provides game pieces based on a user’s skill
`
`or level in the game, a claim that recites providing game pieces based on a parameter
`
`16
`
`Supercell
`Exhibit 1003
`Page 19
`
`
`
`
`
`value of the user clearly refers to the user’s skill level. This construction is also
`
`consistent with FIG. 3 of the ‘439 patent and the corresponding description, which
`
`list a “skill” as an example of a parameter. Ex. 1001, FIG. 3, 6:12-15.
`
`56. Regarding a “ranking point,” a POSITA would have understood that
`
`this would refer to a “measurement of success.” This is because the specification of
`
`the ‘439 patent recites that the ranking point is awarded “[i]n the case where the
`
`target guild collects all of the game pieces.” Ex. 1001, 23:56-58. Additionally,
`
`“various kinds of rewards [can be given] to the plurality of users constituting the
`
`target guild in accordance with the total value of the ranking point.” Ex. 1001,
`
`23:60-62. A POSITA would understand, therefore, that the ranking point is a
`
`measurement of the guild’s success in collecting the game pieces. Further, because
`
`the ranking point can impact the distribution of rewards to the players, a POSITA
`
`would understand that the ranking point is a measurement of the guild’s success in
`
`the game.
`
`VIII. OBVIOUSNESS STANDARD
`It is my understanding that obviousness is a question of law based on
`57.
`
`underlying factual issues including (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the asserted claims, (3) the level of ordinary
`
`skill in the pertinent art, and (4) the existence of secondary considerations such as
`
`commercial success, long-felt but unresolved needs, failure of others, etc.
`
`17
`
`Supercell
`Exhibit 1003
`Page 20
`
`
`
`
`
`58.
`
`I understand that for a single reference or a combination of references
`
`to render obvious the claimed invention, a POSITA must have been able to arrive at
`
`the claims by altering or combining the applied references.
`
`59.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but other times the nexus linking two or more prior art references is simple common
`
`sense. I further understand that obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`60.
`
`I understand that if a technique has been used to improve one device or
`
`product, and a POSITA would recognize that it would improve similar devices or
`
`products in the same way, using the technique is obvious unless its actual application
`
`is beyond his or her skill.
`
`61.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a POSITA
`
`looking to overcome a problem will often be able to fit together the teaching of
`
`multiple publications. I understand that obviousness analysis therefore takes into
`
`18
`
`Supercell
`Exhibit 1003
`Page 21
`
`
`
`
`
`account the inferences and creative steps that a POSITA would employ under the
`
`circumstances.
`
`62.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a POSITA has good reason to pursue the
`
`known options within his or her technical grasp because the result is likely the
`
`product not of innovation but of ordinary skill and common sense.
`
`63.
`
`I also understand that the combination of familiar elements according
`
`to known methods is likely to be obvious when it does no more than yield predictable
`
`results. When a work is available in one field of endeavor, design incentives and
`
`other market forces can prompt variation of it, either in the same field or a different
`
`one. If a POSITA can implement a predictable variation, the patent claims are likely
`
`obvious.
`
`64.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a POSITA, not just the patentee.
`
`Accordingly, I understand that any need or problem known in the field of endeavor
`
`at the time of invention and addressed by the patent can provide a reason for
`
`combining the elements in the manner claimed.
`
`19
`
`Supercell
`Exhibit 1003
`Page 22
`
`
`
`
`
`65.
`
`I understand that a reference may be relied upon for all that it would
`
`have reasonably suggested to one having ordinary skill in the art, including
`
`nonpreferred embodiments. Disclosed examples and preferred embodiments do not
`
`teach away from a broader disclosure or nonpreferred embodiments.
`
`66.
`
`It is further my understanding that a statement by an applicant in the
`
`specification or made during prosecution identifying the work of another as “prior
`
`art” is an admission which can be relied upon as evidence for both anticipation and
`
`obvious determinations involving one or more prior art patents or printed
`
`publications, regardless of whether the applicant admitted prior art (“AAPA”) would
`
`otherwise qualify as prior art.
`
`67.
`
`I understand that secondary indicia of non-obviousness may include
`
`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent;
`
`(3) unexpected results achieved by the invention; (4) praise of the in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
