IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`In the Inter Partes Review of:
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`U.S. Patent No. 9,079,107
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`For: GAME CONTROL METHOD,
`GAME CONTROL DEVICE, AND
`RECORDING MEDIUM
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF EMMET J. WHITEHEAD, JR., Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 9,079,107
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`Supercell
`Exhibit 1003
`Page 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`In the Inter Partes Review of:
`
`U.S. Patent No. 9,079,107
`
`
`
`
`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. 9,079,107
`
`
`
`
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`
`
`
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`Supercell
`Exhibit 1003
`Page 1
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`TABLE OF CONTENTS
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`Page
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`I.
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 1
`II.
`III. COMPENSATION AND RELATIONSHIP WITH PARTIES ...................... 4
`IV. MATERIAL CONSIDERED .......................................................................... 5
`V.
`BASIS OF OPINIONS FORMED .................................................................. 6
`A.
`Level of Ordinary Skill in the Art ......................................................... 6
`VI. THE ‘107 patent .............................................................................................. 7
`A.
`Purported Invention of the ‘107 Patent ................................................. 8
`B.
`Prosecution History ............................................................................. 14
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION ............................ 15
`VIII. OBVIOUSNESS STANDARD ..................................................................... 15
`IX. ANALYSIS OF THE TECHNICAL BASIS UNDERLYING THE
`GROUNDs OF REJECTION SET FORTH IN THE PETITION
`FOR INTER PARTES REVIEW .................................................................... 19
`A.
`State of the Art ..................................................................................... 19
`B.
`Specific References that Render Claims Obvious ............................... 24
`1.
`The combination of Englman, Ronen, Schulhof, and
`Thompson renders obvious the claims of the ‘107
`patent ......................................................................................... 24
`U.S. Patent Pub. No. 2011/0300926 to Englman ..................... 25
`U.S. Patent Pub. No. 2013/0190094 to Ronen ......................... 54
`U.S. Patent No. 8,376,828 to Schulhof ..................................... 60
`Rationale to Combine Englman, Ronen, and Schulhof ............ 63
`
`2.
`3.
`4.
`5.
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`i
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`Supercell
`Exhibit 1003
`Page 2
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`
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`TABLE OF CONTENTS
`(Continued)
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`Page
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`6.
`7.
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`U.S. Patent No. 7,824,253 to Thompson .................................. 66
`Rationale to Combine Englman, Ronen, Schulhof, and
`Thompson .................................................................................. 68
`Secondary Considerations ......................................................... 71
`Incorporation by Reference and Summary of
`Invalidity ................................................................................... 72
`CONCLUSION ............................................................................................ 116
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`8.
`9.
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`X.
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`ii
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`Supercell
`Exhibit 1003
`Page 3
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`I, Emmet J. Whitehead, Jr., Ph.D., declare as follows:
`
`I.
`
`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. 9,079,107 (the “‘107 patent” or
`
`the “challenged patent”), challenging the patentability of claims 1-11 of the ‘107
`
`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 ‘107 patent. My detailed opinions on the claims
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`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
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`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
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`Engineering at UCSC. I was the Chair of the Computational Media Department at
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`UCSC from 2017-2019, and I was the Chair of the Computer Science Department at
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`1
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`Supercell
`Exhibit 1003
`Page 4
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`UCSC from 2010 to 2014. I have been a Full Professor at UCSC since 2011. I
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`began working as an Assistant Professor at UCSC in 2000 and became an Associate
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`Professor in 2006.
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`6. My Ph.D. research included being the Founder and Chair of the Internet
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`Engineering Task Force (IETF) Working Group on Web Distributed Authoring and
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`Versioning (WEBDAV). WEBDAV is an extension to the core network protocol of
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`the World Wide Web, the HyperText Transfer Protocol (HTTP) to support remote
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`authoring and version control. WEBDAV is a client-server network protocol. The
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`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:
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`Computer Game Design degree, the first game design and development degree
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`program in the University of California system. My classes have covered the areas
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`of Computer Games, Web Engineering, and Software Engineering. Specific classes
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`have covered topics of computer game design, programming and projects,
`
`procedural content generation for games, construction of database-backed web
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`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
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`in the pursuit of their thesis work. Focuses of my research have included design of
`
`2
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`Supercell
`Exhibit 1003
`Page 5
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`serious games and social network games, procedural content generation for games,
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`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
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`communicated via the Internet with a back-end server to retrieve puzzle level
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`information and store player puzzles responses and progress. This game was
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`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
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`3
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`Supercell
`Exhibit 1003
`Page 6
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`requested content, and browser programs used to request Web content and then to
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`receive and render the Web content.
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`11. Based at least on my education and experience, I consider myself to be
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`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
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`have no financial interest in the challenged patent and have not had any contact with
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`the named inventors.
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`4
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`Supercell
`Exhibit 1003
`Page 7
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`IV. MATERIAL CONSIDERED
`I have reviewed and considered, in the preparation of this declaration,
`15.
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`the following documents related to the challenged patent:
`
`a.
`
`The ‘107 patent (Ex. 1001) and the prosecution file history for
`
`the ‘107 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”).
`
`d.
`
`U.S. Patent No. 7,824,253 to Thompson et al. (Ex. 1007
`
`“Thompson”).
`
`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.
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`5
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`Supercell
`Exhibit 1003
`Page 8
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`18.
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`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,
`
`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
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`which innovations are made may help establish the level of skill in the art.
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`6
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`Supercell
`Exhibit 1003
`Page 9
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`22.
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`I am familiar with the technology at issue and the state of the art at the
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`effective filing date of the challenged patent, March 12, 2013.
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`23.
`
`In my opinion, the level of ordinary skill in the art of the challenged
`
`patents 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
`
`the ordinary level of skill. Similarly, with more experiential knowledge of computer
`
`games, such as experience developed while playing computer games, less
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`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
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`respect to the subject matter of the challenged patent at the time of the effective filing
`
`date.
`
`VI. THE ‘107 PATENT
`25. The ‘107 patent is entitled “Game Control Method, Game Control
`
`Device, and Recording Medium.” The ‘107 patent includes 11 claims, all of which
`
`are challenged in the Petition for Inter Partes Review.
`
`7
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`Supercell
`Exhibit 1003
`Page 10
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`
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`Purported Invention of the ‘107 Patent
`A.
`26. The ‘107 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
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`characters with cooperation among members of a guild. Ex. 1001, 1:62-66.
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`Additionally, the specification notes that “[i]n the case where a user fights a battle
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`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, 1:66-2:3.
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`27. According to the specification, because the purpose of such social
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`games is to win the battle, “the guild tends to consist of users at a high level (experts)
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`in the social game” such that a user at a lower level may only be able to join guilds
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`with other similarly situated users and thus may not be able to obtain certain rewards.
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`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.
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`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
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`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
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`8
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`Supercell
`Exhibit 1003
`Page 11
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`
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`appears in the card battle game….” Ex. 1001, 17:47-49. As discussed below, this
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`concept is quite well-known.
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`29. Figures (FIGS.) 1 and 2 of the ‘107 patent illustrate the network system
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`and game control device used to provide the social game. FIG. 1 shows a
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`communication terminal 20, operated by a user, that communicates with a game
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`control device 50 via a network 30. FIG. 2 shows components of the game control
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`device 50, including the storage unit 42, which stores information about the guild
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`(“group
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`information”),
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`information about
`
`the guild event (“game piece
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`information”), information about the items obtained by the guild members
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`(“obtained game piece information”), and information about the guild member
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`themselves (e.g., a user’s level information). Ex. 1001, 17:57-18:3, FIGS. 12, 14,
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`15. The game piece information includes a game piece type (e.g., “jewel C”), a piece
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`ID (e.g., “C1-C6”), and an appearance probability of the game piece (e.g.,
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`“probability 3”). Ex. 1001, 19:25-27. Different jewel types may target different
`
`levels of users by appearing with varying levels of probability based on a user’s skill
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`level. 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
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`with a higher probability to intermediate-level users, and pieces D5-D6 may appear
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`with a higher probability to high-level users. Ex. 1001, 19:43-61. “[T]he
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`appearance probabilities of jewel D are set so that each of the pieces constituting the
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`9
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`Supercell
`Exhibit 1003
`Page 12
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`jewel D (pieces D1 to D6) is given to users at levels in different ranges.” Ex. 1001,
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`19:62-64. Because the different jewel pieces appear with different probabilities
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`based on skill level, a guild is required to have players of different skill levels to
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`collect all of the pieces to obtain the reward.
`
`30. 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, 21:39-42. During the guild event, a plurality of game pieces
`
`may be obtained by the guild members in this manner. Ex. 1001, 21:52-60.
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`31. 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
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`from the storage unit 42 and determines whether the game pieces constituting the
`
`item have been provided to the guild members. Ex. 1001, 22:30-43. For example,
`
`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
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`accordance with all of the given game pieces” to the guild members. Ex. 1001,
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`22:44-23:3. Hence, all that is described is a multi-player game in which players of
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`10
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`Supercell
`Exhibit 1003
`Page 13
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`different skill levels are grouped together to collect different game pieces that are
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`required to obtain a reward, a concept that was well-known in the art.
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`32.
`
`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.” Independent
`
`claim 9 recites a device claim. Independent claim 10 recites a non-transitory
`
`computer readable recording medium. Ex. 1001, 25:1-26:50.
`
`33. All three independent claims essentially recite variations of the same
`
`six basic elements I will note below.
`
`34. The first element is storing skill level information in a storage unit of
`
`the game control device. The skill information is “indicative of skill levels of each
`
`of the plurality of users of the game.” Ex. 1001, 25:4-6, 26:4-5, 26:30-32.
`
`35. The second element is “grouping the plurality of users into one or more
`
`groups.” Ex. 1001, 25:7, 26:10-11, 26:33.
`
`36. The third element is “providing one or more of a plurality of game
`
`pieces to a first plurality of users in a first group of said one or more groups.” The
`
`one or more game pieces are provided “based on the skill level information” and
`
`“while the first plurality of users are at certain events in the game.” Ex. 1001, 25:8-
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`11, 26:11-15, 26:34-37.
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`11
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`Supercell
`Exhibit 1003
`Page 14
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`37. The fourth element is storing, in the storage unit, “allocation
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`information indicating which game piece has been provided to which user with a
`
`respective skill level” and “a number and type of game pieces required to obtain a
`
`game item as a reward.” Ex. 1001, 25:12-16, 26:6-9, 26:38-42.
`
`38. The fifth element is “determining whether all of the game pieces
`
`required to obtain said game item have been provided to the first group, based on the
`
`allocation information stored in the storage unit.” Ex. 1001, 25:17-20, 26:17-20,
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`26:43-46.
`
`39. The sixth element is allocating the game item “when it is determined
`
`that all the required game pieces have been provided.” The game item is allocated
`
`in a memory “to the first group or at least one of the first plurality of users.”
`
`Ex. 1001, 25:21-24, 26:20-23, 26:47-50.
`
`40.
`
`In addition, the ‘107 patent includes claims 2-8 and 11, which depend
`
`from claim 1. Claims 9 and 10 do not have any dependent claims. Ex. 1001, 25:24-
`
`55, 26:51-54.
`
`41. Claim 2 recites that the method further comprises “creating…a new
`
`group to which one of the plurality of users belongs.” The group is created “in
`
`response to a request from a communication terminal of one of the plurality of
`
`users.” Ex. 1001, 25:25-29.
`
`12
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`Supercell
`Exhibit 1003
`Page 15
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`42. Claim 3 recites that the method further comprises “allowing a user who
`
`plays the game to join a group only if the game control device has received approval
`
`from a communication terminal of at least one of the users in the group.” Ex. 1001,
`
`25:30-35.
`
`43. Claims 4-7 recite additional conditions for providing one or more game
`
`pieces to a first plurality of users in the third element (“providing”) noted above.
`
`44. Claim 4 recites that “the plurality of game pieces are respectively
`
`provided to users with skill levels in different ranges with different probabilities,
`
`based on the skill level information.” Ex. 1001, 25:36-39.
`
`45. Claim 5 has a condition similar to claim 4 except that claim 5 removes
`
`the probability language. In other words, claim 5 recites that “the plurality of game
`
`pieces are respectively provided to users with skill levels in different ranges, based
`
`on the skill level information.” Ex. 1001, 25:40-43.
`
`46. Claim 6 recites that “each, of the plurality of game pieces is only
`
`provided to users with skill levels in a predetermined range, based on the skill-level
`
`information.” Ex. 1001, 25:44-47.
`
`47. Claim 7 recites that “only one of the plurality of game pieces is
`
`provided to each of the first plurality of users.” Ex. 1001, 25:48-50.
`
`48. Claim 8 recites that the method further comprises “controlling a battle
`
`between two users in the game” and “transferring a game piece provided to one of
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`13
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`Supercell
`Exhibit 1003
`Page 16
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`the users…to the other user, depending on the outcome of the battle.” The
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`transferred game piece is a piece that was provided to one of the users in the third
`
`element above. Ex. 1001, 25:51-56.
`
`49. Claim 11 recites an additional condition for grouping the plurality of
`
`users in the second element (“grouping”) noted above. Specifically, claim 11 recites
`
`that “the one or more groups are formed based on receiving a user preference input
`
`from at least one of the plurality of users.” Ex. 1001, 26:52-55.
`
`Prosecution History
`B.
`50. The ‘107 patent was filed on March 5, 2014 as U.S. Application No.
`
`14/198,411 (“the ‘411 application”). The ‘411 application claims priority to
`
`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.
`
`51.
`
`I have reviewed the prosecution history of the ‘107 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.
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`14
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`Supercell
`Exhibit 1003
`Page 17
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`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION
`It is my understanding that “[i]n an inter partes review proceeding, a
`52.
`
`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
`
`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).
`
`53.
`
`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.
`
`54.
`
`In my opinion, a POSITA would have no difficulty applying the plain
`
`and ordinary meanings of the terms used in the claims.
`
`VIII. OBVIOUSNESS STANDARD
`It is my understanding that obviousness is a question of law based on
`55.
`
`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.
`
`15
`
`Supercell
`Exhibit 1003
`Page 18
`
`
`
`
`
`56.
`
`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.
`
`57.
`
`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.
`
`58.
`
`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.
`
`59.
`
`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
`
`16
`
`Supercell
`Exhibit 1003
`Page 19
`
`
`
`
`
`account the inferences and creative steps that a POSITA would employ under the
`
`circumstances.
`
`60.
`
`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.
`
`61.
`
`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.
`
`62.
`
`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.
`
`17
`
`Supercell
`Exhibit 1003
`Page 20
`
`
`
`
`
`63.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common sense
`
`of one of skill in the art. In addition, 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.
`
`64.
`
`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.
`
`65.
`
`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 invention by
`
`others skilled in the art; (5) taking of licenses under the patent by others;
`
`(6) deliberate copying of the invention; (7) failure of others to find a solution to the
`
`long felt need; and (8) skepticism by experts.
`
`18
`
`Supercell
`Exhibit 1003
`Page 21
`
`
`
`
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`66.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and
`
`the
`
`invention.
`
` I further understand
`
`that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`67.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a POSITA having the understanding and knowledge reflected in
`
`the prior art and motivated by the general problem facing the inventor, would have
`
`been led to make the combination of elements recited in the claims. Under this
`
`analysis, the prior art references themselves, or any need or problem known in the
`
`field of endeavor at the time of the invention, can provide a reason for combining
`
`the elements of multiple prior art references in the claimed manner.
`
`IX. ANALYSIS OF THE TECHNICAL BASIS UNDERLYING THE
`GROUNDS OF REJECTION SET FORTH IN THE PETITION FOR
`INTER PARTES REVIEW
`State of the Art
`A.
`68. Multi-player, networked gaming with users cooperatively participating
`
`to achieve a common goal has been widely available since at least the 1990’s, long
`
`before the effective filing date of the ‘107 patent. Early online multi-player
`
`networked games include “Multi-User Dungeons,” or “MUDs” available since at
`
`least the 1980’s. These MUDS were text-based games, many of which included
`
`features of traditional role-playing games, such as Dungeons and Dragons. Online
`
`19
`
`Supercell
`Exhibit 1003
`Page 22
`
`
`
`
`
`games with a wide variety of gameplay types and mechanics features have been
`
`widely available since then on a variety of platforms, including traditional desktop
`
`computers, laptops, game consoles, handheld gaming devices, and wirelessly
`
`connected mobile devices.
`
`69. Before the effective filing date of the ‘107 patent, it was well-known to
`
`enable players to work together in a team-based collaborative task in a networked
`
`game and to reward team members for completion of the task. For example,
`
`Englman teaches a group scavenger hunt game in which members of a team
`
`collaborate to collect game pieces en route to an overall prize, like a trophy.
`
`Ex. 1004, Abstract, ¶[0045]. Similarly, Ronen teaches a multiplayer gaming
`
`platform in which users cooperatively “complete team tasks, exercise joint
`
`ownership over virtual goods in a shared inventory, and jointly earn team accolades.”
`
`Ex. 1005, ¶[0010]. Additionally, Schulhof teaches a wagering game system that
`
`presents a secondary cooperative game in which group members achieve objectives
`
`and receive monetary or non-monetary awards. Ex. 1006, 12:52-56, 13:26-29,
`
`13:39-40, 15:48-50. Still further, Thompson hosts a virtual competition between
`
`avatars in which team members collaborate to battle other teams or users and to
`
`obtain a prize that can be allocated to the entire team. Ex. 1007, 2:11-13, 5:35-41.
`
`70. Moreover, the concepts in the claims of the ‘107 patent are not new.
`
`For example, Qiang et al. describes creating a team to perform a collaborative game
`
`20
`
`Supercell
`Exhibit 1003
`Page 23
`
`
`
`
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`task that is composed of a plurality of individual game tasks. Each member of a
`
`virtual cooking team in Qiang is assigned a dish (i.e., an individual game task) to
`
`complete as part of a virtual meal (i.e., a collaborative game task). Ex. 1011,
`
`¶[0032]. Members of the team are rewarded if the team has com
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