UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01633
`U.S. Patent No. 9,079,107
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01633
`U.S. Patent No. 9,079,107
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`I.
`
`TABLE OF CONTENTS
`The Petition Should Be Denied Under § 314(a) .............................................. 1
`1.
`Fintiv Factor 1: No Evidence of Any Likelihood of a Stay .................. 1
`2.
`Fintiv Factor 2: Trial Date Remains Well In Advance of
`Board’s Deadline for Final Written Decision ....................................... 1
`Fintiv Factor 3: Substantial Investments at District Court .................... 3
`Fintiv Factor 4: Substantial Overlap of Issues in the Two
`Forums ................................................................................................... 3
`Fintiv Factor 5: Same Parties in the Two Forums ................................ 5
`Fintiv Factor 6: No Other Relevant Circumstances .............................. 5
`
`3.
`4.
`
`5.
`6.
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`10X Genomics, Inc. v. President & Fellows of Harvard College,
`IPR2020-01180, Paper 23 (P.T.A.B. Jan. 13, 2021) ........................................2, 5
`Amazon.com, Inc. v. Freshub, Ltd.,
`IPR2020-01145, Paper 10 (P.T.A.B. Jan. 11, 2021) ............................................ 2
`Keyme LLC v. The Hillman Group,
`IPR2020-01028, Paper 12 (P.T.A.B. Jan. 13, 2021) ........................................2, 5
`Snap, Inc. v. SRK Tech. LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ............................................ 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................. 4
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ........................................... 5
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 13 (P.T.A.B. Sept. 3, 2020) .......................................1, 5
`Supercell Oy v. GREE, Inc.,
`PGR2020-00043, Paper 13 (P.T.A.B. Oct. 14, 2020) .......................................... 2
`Statutes
`35 U.S.C. § 314(a) ............................................................................................ 1, 2, 5
`
`ii
`
`
`
`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 A-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 A-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)
`
`iii
`
`
`
`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
`
`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)
`
`iv
`
`
`
`I.
`
`The Petition Should Be Denied Under § 314(a)
`In Patent Owner’s Preliminary Response (Paper 6, “POPR”), Patent Owner
`
`explains why the Board should exercise its discretion under 35 U.S.C. § 314(a) to
`
`deny the instant Petition. In Reply (Paper 7, “Reply”), Petitioner largely ignores
`
`Patent Owner’s arguments. Instead, Petitioner repeats its conclusory arguments from
`
`the Petition as well as other arguments it has previously—but unsuccessfully—
`
`submitted to the Board in prior proceedings. Petitioner’s arguments contradict the
`
`Board’s precedents, are belied by the record facts, and thus fail.
`
`Fintiv Factor 1: No Evidence of Any Likelihood of a Stay
`1.
`As previously held by the Board on numerous occasions, Petitioner’s
`
`stipulation that “it will seek a stay in the parallel litigation should the IPR be
`
`instituted” (Reply, at 3) is not sufficient evidence that a stay will, in fact, be granted
`
`upon institution. See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034, Paper 13,
`
`at 10. (P.T.A.B. Sept. 3, 2020); see also POPR, at 7–9.
`
`2.
`
`Fintiv Factor 2: Trial Date Remains Well In Advance of Board’s
`Deadline for Final Written Decision
`Petitioner’s claim that this factor should be “afforded little weight” (Reply, at
`
`3) rings hollow and fails for all the reasons previously explained in Patent Owner’s
`
`Preliminary Response—which Petitioner fails to acknowledge, let alone rebut. See
`
`POPR, at 9–16. For example, the Board has previously rejected Petitioner’s
`
`argument that a trial date is uncertain simply in view of articles reporting the general
`
`
`
`potential for movement in trial dates in district courts. See, e.g., Supercell Oy v.
`
`GREE, Inc., PGR2020-00043, Paper 13, at 11 (P.T.A.B. Oct. 14, 2020).
`
`Petitioner’s argument regarding the district court’s recent continuance of in-
`
`person jury trials from December 2020 through February 2021 (Reply, at 4) fares no
`
`better. As previously explained, that order expressly does not modify, let alone
`
`continue, the jury trial in the parallel proceeding, which is still scheduled for March
`
`1, 2021. POPR, at 12 n.3; see also Amazon.com, Inc. v. Freshub, Ltd., IPR2020-
`
`01145, Paper 10, at 12 (P.T.A.B. Jan. 11, 2021) (noting 2021 trial date “remains
`
`undisturbed” despite court’s continuance of trials through December 31, 2020).
`
`Moreover, this Board “decline[s] … to speculate how long the trial date … may be
`
`delayed due to the effects of [a] district court’s backlog and practices in light of the
`
`COVID-19 pandemic.” 10X Genomics, Inc. v. President & Fellows of Harvard
`
`College, IPR2020-01180, Paper 23, at 11 (P.T.A.B. Jan. 13, 2021).
`
`And even if the trial is delayed by a few months as a result of the continuance,
`
`it will still likely conclude several months before a final written decision would be
`
`due. Indeed, trial in the parallel district court proceeding is currently scheduled to
`
`conclude approximately twelve months before a final written decision would be due
`
`in this proceeding. See POPR, at 14–16. Cf. Keyme LLC v. The Hillman Group,
`
`IPR2020-01028, Paper 12, at 8–9 (P.T.A.B. Jan. 13, 2021) (finding this factor
`
`“significantly favors” discretionary denial under § 314(a) on similar facts).
`
`2
`
`
`
`Fintiv Factor 3: Substantial Investments at District Court
`3.
`Petitioner does not, and in fact cannot, dispute that the parties and district
`
`court have each already invested substantial time and resources in the parallel district
`
`court proceeding. See POPR, at 16–19. Instead, Petitioner purports to question those
`
`investments because certain case deadlines were extended. Reply, at 4 (citing Ex.
`
`1018). But, Petitioner ignores that each of those extended deadlines has already
`
`passed. Indeed, the parties already have completed both fact and expert discovery as
`
`well as all briefing on dispositive and Daubert motions. See POPR, at 17. Moreover,
`
`the parties will likely have completed a jury trial in the parallel proceeding by the
`
`time this Board decides whether to institute a trial in March 2021. See id. Forcing
`
`Patent Owner to re-litigate Petitioner’s same invalidity challenges for a year
`
`thereafter in this forum necessarily imposes unfair costs to Patent Owner.
`
`Fintiv Factor 4: Substantial Overlap of Issues in the Two Forums
`4.
`Petitioner’s contention that there is “lack of overlap between the instant IPR
`
`and the parallel litigation” (Reply at 1) completely ignores the substantial overlap in
`
`the claims, arguments and evidence presented in the two forums. See POPR at 21–
`
`28. Rather, Petitioner misconstrues this factor to require complete overlap between
`
`the forums. This factor expressly does not require complete duplication of grounds
`
`and evidence, but rather only “substantially the same” grounds, evidence, etc. See
`
`id. at 29–30. And Supercell’s argument that the inclusion of the tertiary reference
`
`3
`
`
`
`Schulhof in the Petition renders the prior art and arguments therein “materially
`
`different” than those presented at the district court (Reply at 1–2) is belied by the
`
`Petition itself, as previously explained. See POPR at 28–30.
`
`Petitioner’s reliance on Snap is misplaced in this regard. Reply at 1. There,
`
`the Board found this factor weighed in favor of not exercising discretion to deny
`
`given numerous differences in the art asserted “as well as the stay of the parallel
`
`District Court proceeding.” Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper
`
`15, at 16 (P.T.A.B. Oct. 21, 2020) (emphasis added). There is no such stay here.
`
`Petitioner’s reliance on Sotera is also misplaced. Reply at 2. There, the Board
`
`found this factor weighed in favor of not exercising discretion, not because of a lack
`
`of overlap of challenged claims, but in view of petitioner’s stipulation that “if IPR is
`
`instituted, [petitioner] will not pursue in the District Court Litigation any ground
`
`raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Inc.
`
`v. Masimo Corp., IPR2020-01019, Paper 12, at 18–19 (P.T.A.B. Dec. 1, 2020)
`
`(emphasis added). Here, in contrast, Petitioner only narrowly stipulates “that should
`
`IPR be instituted, it will not pursue the same grounds in the litigation.” Reply at 3
`
`(emphasis added). “[B]ecause Petitioner fails to stipulate that it will not pursue in
`
`the district court any ground raised or that could have reasonably been raised in the
`
`proceeding, its proposal does not … address effectively concerns regarding
`
`duplicative efforts and potentially conflicting decisions, or help ensure that an IPR
`
`4
`
`
`
`functions as a true alternative to litigation in related to grounds that could be at issue
`
`in an IPR.” Keyme, IPR2020-01028, Paper 12, at 15 (emphasis added). Further,
`
`Petitioner’s stipulation is meaningless, as the parties will likely have completed a
`
`jury trial by the time this Board decides whether to institute a trial. POPR, at 17.
`
`Fintiv Factor 5: Same Parties in the Two Forums
`5.
`Petitioner argues this factor “should be given little weight, as the petitioner-
`
`defendant is the party here most motivated to challenge the patent.” Reply, at 5. But
`
`the Board has rejected this exact same argument from this same Petitioner as
`
`inconsistent with Fintiv. See, e.g., Supercell, PGR2020-00034, Paper 13, at 19–20.
`
`Fintiv Factor 6: No Other Relevant Circumstances
`6.
`Petitioner’s (incorrect) characterization of the merits as “strong” (Reply, at 5)
`
`does not justify institution in view of both the advanced stage of the parallel
`
`proceeding and the required balancing of the Fintiv factors. Indeed, even an
`
`allegedly “strong case on the merits” can be outweighed by the facts underlying
`
`Fintiv factors 2–5 collectively. Supercell Oy v. GREE, Inc., IPR2020-00215, Paper
`
`10, at 18 (P.T.A.B. June 10, 2020); see, e.g., 10X Genomics, IPR2020-01180, Paper
`
`23 at 16–17 (denying institution despite the fact that “Petitioner appears to have
`
`demonstrated a reasonable likely it may prevail with respect to at least 1 claim”).
`
`For all the reasons set forth herein, as well as Patent Owner’s Preliminary
`
`Response, the Board should deny institution of the instant Petition under § 314(a).
`
`5
`
`
`
`Dated: January 19, 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
`
`Preliminary Response Pursuant to 37 C.F.R. §42.207 has been served electronically
`
`via email upon counsel for Petitioner at RPatel-ptab@fenwick.com.
`
`Dated: January 19, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`7
`
`
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