IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`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. IPR2020-01633
`Patent 9,079,107 B2
`_____________
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.108(c)
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`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. IPR2020-01633
`Patent 9,079,107 B2
`_____________
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.108(c)
`
`
`
`
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`
`I.
`
`The Fintiv Factors Favor Institution ............................................................... 1
`
`
`
`
`
`
`
`
`
`i
`
`
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`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Apple v. Fintiv,
`IPR 2020-00019 ........................................................................................ 1, 2, 4, 5
`
`Comcast Cable Commc’ns, LLC v. Veveo, Inc.,
`IPR 2019-00239 .................................................................................................... 1
`
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) .................................... 1, 2, 5
`
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................. 2
`
`Uniloc United States v. Avaya Inc.,
`Civ. Nos. 6:15-CV-01168, 6:16-CV-223, 6:16-CV-225-JRG,
`2017 U.S. Dist. LEXIS 168855 (E.D. Tex. April 19, 2017) ................................ 3
`
`STATUTES AND RULES
`
`35 U.S.C. § 314 .......................................................................................................... 1
`
`
`
`ii
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`EXHIBIT LIST (37 CFR § 42.63(E))
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 9,079,107 to Oono
`
`1002
`
`Prosecution History of U.S. Patent No 9,079,107
`
`1003
`
`Declaration of Dr. Emmet J. Whitehead, Jr.
`
`1004
`
`1005
`
`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.
`
`1006
`
`U.S. Patent No. 8,376,838 B2 to Schulhof et al.
`
`1007
`
`U.S. Patent No. 7,824,253 B2 to Thompson et al.
`
`1008 World of Warcraft, Guild Advancement and You, (Jan. 21, 2011),
`https://worldofwarcraft.com/en-us/news/2113741/guild-advancement-
`and-you
`
`1009
`
`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
`1010 MMORPG, Divina – Unique Guild System, (May 12, 2012),
`https://www.mmorpg.com/divina/developer-journals/unique-guild-
`domain-system-2000093507
`
`1011
`
`U.S. Patent Application Publication No. 2014/0024462 A1 to Qiang et al.
`
`1012
`
`U.S. Patent Application Publication No. 2012/0157212 A1 to Kane et al.
`
`1013
`
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
`
`1014
`
`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/
`
`iii
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`Exhibit
`
`1015
`
`Description
`
`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/
`
`1016
`
`1017
`
`1018
`
`1019
`
`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)
`
`
`
`
`
`iv
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`I.
`
`THE FINTIV FACTORS FAVOR INSTITUTION
`
`Proper application of the Fintiv factors demonstrates that the Board should not
`
`exercise its discretion to deny institution under 35 U.S.C. § 314. First, the
`
`“overlap” factor seeks to avoid inefficiency and the possibility of conflicting
`
`decisions, concerns that are absent here due to the lack of overlap between the
`
`instant IPR and the parallel litigation. Apple v. Fintiv, IPR 2020-00019, Paper 11 at
`
`13 (P.T.A.B. Mar. 20, 2020) (Precedential). The Board recently declined to exercise
`
`its discretion under § 314(a) when a reference cited in the Petition was not at issue in
`
`the litigation. See Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 at
`
`15 (P.T.A.B. Oct. 21, 2020) (Precedential). The addition of the reference in the IPR
`
`rendered “the prior art and arguments included in the Petition [] materially different
`
`than those presented in the District Court.” Id.; see also Comcast Cable Commc’ns,
`
`LLC v. Veveo, Inc., IPR 2019-00239, Paper 15 at 14-16 (P.T.A.B. July 5, 2019)
`
`(concluding no substantial overlap of obviousness issues based on difference in
`
`challenged claims and asserted references). Such is the case here. Schulhof is not
`
`included in the invalidity contentions in the litigation, but is used in the Petition for
`
`every proposed challenge to patentability.
`
`GREE falsely minimizes crucial distinctions between the instant IPR and the
`
`parallel litigation, misleadingly dismissing Schulhof as a “superficial inclusion … in
`
`the Petition.” POPR at 29. In doing so, GREE ignores that Petitioner cites Schulhof
`
`1
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`
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`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`for the limitation reciting the very solution the ‘107 patent purports to achieve:
`
`providing game pieces to each user based on the skill level information for the
`
`corresponding user. Application of Schulhof for arguably the most important claim
`
`limitation is anything but “superficial.” Rather, the Petition cites portions of
`
`Schulhof that clearly disclose awarding virtual assets to a player based on
`
`demonstrated skill level, both with respect to the independent and dependent claims.
`
`Pet. at 25-27, 36-37, 47-51. Moreover, Petitioner supports its invalidity arguments
`
`with a strong motivation to combine Schulhof with Englman and Ronen, particularly
`
`in light of the common ownership between Schulhof and Englman. Pet. at 56-60.
`
`Finally, as in another recent precedential decision, the instant IPR seeks
`
`review of all claims of the ‘107 patent, not merely those at issue in the parallel
`
`proceeding. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12,
`
`at 18 (P.T.A.B. Dec. 1, 2020). Petitioner challenges all 11 claims in this IPR, while
`
`claim 8 is not asserted in the litigation, nor is Thompson cited as a reference. Denial
`
`of institution would leave claim 8 unaddressed by the litigation.
`
`Hence, this factor favors institution because the grounds presented in the
`
`Petition are materially different from the prior art and arguments in the parallel
`
`proceeding. Such differences “ha[ve] tended to weigh against [the Board]
`
`exercising discretion to deny institution.” Snap, Paper 15 at 15 (citing Fintiv,
`
`Paper 11 at 12-13). The absence of Schulhof and Thompson from the litigation
`
`2
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`
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`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`obviates concerns of duplicative efforts between the district court and the Board as
`
`well as the possibility of potentially conflicting decisions. To further eliminate any
`
`doubt as to overlap between the proceedings, Petitioner stipulates that, should IPR
`
`be instituted, it will not pursue the same grounds in the litigation. See Sand
`
`Revolution, Paper 24 at 11-12.
`
`Regarding the “stay” factor, institution by the PTAB “has been treated as a
`
`highly significant factor in the courts’ determination of whether to stay cases
`
`pending PTAB review.” Uniloc United States v. Avaya Inc., Civ. Nos. 6:15-CV-
`
`01168, 6:16-CV-223, 6:16-CV-225-JRG, 2017 U.S. Dist. LEXIS 168855, *10-11
`
`(E.D. Tex. April 19, 2017). Indeed, GREE acknowledges that E.D. Texas district
`
`court commonly denies motions to stay when the PTAB has yet to institute. POPR at
`
`7. Accordingly, though no stay has yet been sought, Petitioner stipulates it will seek
`
`a stay in the parallel litigation should the IPR be instituted.
`
`The trial schedule factor relative to the statutory deadline for the FWD should
`
`be afforded little weight. GREE wants the Board to take the schedule “at ‘face
`
`value’” (POPR at 11), yet GREE’s counsel in the instant IPR acknowledges that
`
`“Patent Owners are quick to point to a looming district court trial date as being set in
`
`stone, [while] in reality, these dates are often reset once the PTAB hurdle is
`
`cleared.” Ex. 1014 at 2. As GREE’s counsel notes, trial schedules “tend[] to slip in
`
`significant regard” “[o]nce the PTAB denies institution based upon a looming
`
`3
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`district court date” (Ex. 1015 at 3) and delays are only getting worse in light of
`
`COVID-19. Id. In fact, the Marshall Division of the Eastern District of Texas, where
`
`the litigation is currently pending, recently postponed all-in person jury trials
`
`originally scheduled from December 2020 through February 2021. See Ex. 1016 at
`
`1; see also Ex. 1017 at 1 (mistrial granted in E.D. Texas case after 15 participants
`
`tested positive for COVID-19). This pause is likely to have a downstream impact on
`
`the court’s schedule and delay the trial schedule in the parallel litigation.
`
`Next, the investment factor is at worst neutral. Given the difficulties the parties
`
`were having completing fact discovery, the district court entered a revised schedule
`
`extending many of the deadlines by several weeks. Ex. 1018. Further, while the
`
`district court has construed the claims, it has not substantively addressed their validity.
`
`By the time a decision to institute is made, the Board will have already invested
`
`significant resources into considering the validity of the ‘107 patent.
`
`The Fintiv board advised the parties to “explain facts relevant to [the] timing”
`
`to determine whether the timing “impose[s] unfair costs to a patent owner,” and
`
`“recognize[d] . . . 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.”
`
`Fintiv, Paper 11 at 11. Here, the timing of the filing enabled the Petition to take into
`
`account GREE’s amended infringement contentions and the court’s tentative claim
`
`constructions in the parallel litigation, which resulted in a more focused and
`
`4
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`
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`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`thorough petition than would have been possible even weeks earlier. Ex. 1019, Ex.
`
`1020; see also Snap, Paper 15 at 12. Nor does GREE identify any unfair costs
`
`flowing from the timing.
`
`The “same party” factor should be given little weight, as the petitioner-
`
`defendant is the party here most motivated to challenge the patent. The final factor is
`
`“other circumstances that impact the Board’s exercise of discretion, including the
`
`merits.” Fintiv, Paper 11 at 14. The strong merits in this case support institution:
`
`“[I]f the merits of a ground raised in the petition seem particularly strong on the
`
`preliminary record, this fact has favored institution.” Sand Revolution, Paper 24 at
`
`13 (quoting Fintiv, Paper 11 at 14-15). GREE did not attack the merits of the relied
`
`upon references, but rather attacked Petitioner’s motivation to combine, ignoring
`
`several pages of argument about why a POSITA would select and combine the cited
`
`references and demonstrating the strength of the Petition’s mapping of the claim
`
`elements to the references. A holistic view considering all of the Fintiv factors, and
`
`the efficiency and integrity of the patent system, favors institution now to confirm
`
`unpatentability of the claims over deferring to a district court considering materially
`
`different grounds.
`
`Accordingly, the Petition should not be denied under § 314(a).
`
`
`
`5
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Dated: January 12, 2021
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`6
`
`
`
`IPR2020-01633
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1016 through
`
`1020 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service at the 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
`
`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
`
`
`
`Date: January 12, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`7
`
`
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