Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`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
`
`
`Inter Partes Review No. ___________________
`Patent 9,079,107 B2
`_____________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,079,107
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`COMPLIANCE WITH REQUIREMENTS FOR A PETITION
`FOR INTER PARTES REVIEW ...................................................................... 1
`A. Grounds for Standing (37 C.F.R. §42.104(a)) ....................................... 1
`B.
`Fees for Inter Partes Review (37 C.F.R. §42.15(a)) ............................. 1
`C. Mandatory Notices (37 C.F.R. §42.8(b)) .............................................. 2
`D. Designation of Lead and Backup Counsel (37 CFR
`§42.8(b)(3)) ........................................................................................... 2
`III. THRESHOLD FOR REVIEW (35 U.S.C. §314(A)) ...................................... 3
`IV.
`IDENTIFICATION OF CLAIMS BEING CHALLENGED .......................... 3
`V. OVERVIEW OF THE ‘107 PATENT ............................................................ 4
`A.
`Effective Filing Date of the Challenged Claims ................................... 4
`B.
`Background of the Purported Invention ................................................ 4
`C.
`‘107 Patent Description ......................................................................... 5
`D.
`Prosecution History ............................................................................... 9
`VI. CLAIM INTERPRETATION ....................................................................... 10
`VII. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11
`VIII. OVERVIEW OF THE PRIOR ART ............................................................. 12
`A.
`The features of the ‘107 patent were common in gaming
`long before the alleged invention ........................................................ 12
`Englman ............................................................................................... 17
`Ronen ................................................................................................... 22
`
`B.
`C.
`
`i
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`
`TABLE OF CONTENTS
`(continued)
`
`
`
`Page
`
`Schulhof ............................................................................................... 25
`D.
`Thompson ............................................................................................ 27
`E.
`IX. GROUND I: CLAIMS 1-7 AND 9-11 ARE RENDERED
`OBVIOUS BY ENGLMAN, RONEN, AND SCHULHOF ......................... 29
`A.
`Englman, Ronen, and Schulhof Render Obvious
`Independent Claim 1 ........................................................................... 29
`1.
`Englman and Ronen teach “a game control method
`carried out by a game control device ...” .................................. 29
`Englman teaches “storing skill level information …”
`as recited in claim 1 .................................................................. 32
`Englman teaches “grouping the plurality of users …”
`as recited in claim 1 .................................................................. 34
`Englman and Schulhof teach “providing one or more
`of a plurality of game pieces …” as recited in claim 1 ............. 34
`Englman teaches “storing allocation information …”
`as recited in claim 1 .................................................................. 37
`Englman teaches “determining whether all of the game
`pieces required to obtain said game item have been
`provided …” as recited in claim 1 ............................................ 39
`Englman teaches “allocating… the game item …”
`as recited in claim 1 .................................................................. 41
`The embodiments of providing of ribbons, medals, and
`trophies in Englman also teaches elements of claims 1, 9,
`and 10 .................................................................................................. 43
`Englman and Ronen teach “creating, …a new group …”
`as recited in claim 2 ............................................................................. 44
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`B.
`
`C.
`
`ii
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`Englman teaches “allowing a user…to join a group only if
`the game control device has received approval …” as recited
`in claim 3 ............................................................................................. 46
`Englman and Schulhof teach “the plurality of game pieces
`are respectively provided to users with skill levels in
`different ranges, based on the skill level information” and
`that the game pieces may be provided to users “with
`different probabilities” as recited in claims 4-5 .................................. 47
`Englman and Schulhof teach “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” as
`recited in claim 6 ................................................................................. 50
`Englman teaches “only one of the plurality of game pieces is
`provided to each of the first plurality of users” as recited in
`claim 7 ................................................................................................. 51
`Englman teaches “a processor,” “a determining unit,” and a
`“memory allocation unit” as recited in claim 9 ................................... 53
`Englman teaches “a non-transitory computer readable
`recording medium” as recited in claim 10 .......................................... 54
`Englman and Ronen teach that the “groups are formed based
`on receiving a user preference input from at least one of the
`plurality of users” as recited in claim 11 ............................................. 55
`K. A POSITA would have been motivated to combine
`Englman, Ronen, and Schulhof ........................................................... 56
`X. GROUND V: CLAIM 8 IS RENDERED OBVIOUS BY
`ENGLMAN, RONEN, SCHULHOF, AND THOMPSON .......................... 60
`A.
`Thompson teaches “controlling a battle …” as recited in
`claim 8 ................................................................................................. 60
`
`iii
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`

`

`
`
`B.
`
`B.
`
`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Thompson teaches “transferring a game piece …” as recited
`in claim 8 ............................................................................................. 61
`C. A POSITA would have been motivated to combine
`Englman, Ronen, Schulhof, and Thompson ........................................ 62
`XI. THE PETITION SHOULD NOT BE DENIED UNDER
`§§314 OR 325 ................................................................................................ 64
`A.
`Section 325(d) Is Inapplicable Because Petition Does Not
`Assert Art Previously Evaluated by the Office. .................................. 64
`The Board Should Not Deny Institution Under Section
`314(a). .................................................................................................. 65
`XII. CONCLUSION .............................................................................................. 67
`
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ......................................... 65
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (P.T.A.B. Jun. 16, 2020) .......................................... 66
`Uniloc United States v. Avaya Inc.,
`Civ. Nos. 6:16-CV-223-JRG .............................................................................. 65
`STATUTES AND RULES
`35 U.S.C. §101 ........................................................................................................... 9
`35 U.S.C. §102 ................................................................................... 9, 17, 23, 25, 27
`35 U.S.C. §103 ........................................................................................................... 3
`35 U.S.C. §112 ......................................................................................................... 11
`35 U.S.C. §282(b) .................................................................................................... 10
`35 U.S.C. §311 ..................................................................................................... 1, 11
`35 U.S.C. §314(A) ................................................................................... 3, 64, 65, 66
`OTHER AUTHORITIES
`37 C.F.R. §42.100(b) ............................................................................................... 11
`37 CFR §§ 42.200 et seq. ......................................................................................... 67
`Patent Trial and Appeal Board Consolidated Trial Practice Guide,
`84 Fed. Reg. 64280 (P.T.A.B. Nov. 21 2019) .................................................... 64
`
`v
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`EXHIBIT LIST (37 C.F.R. §42.63(E))
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`1014
`
`U.S. Patent No. 9,079,107 to Oono
`Prosecution History of U.S. Patent No 9,079,107
`Declaration of Dr. Emmet J. Whitehead, Jr.
`U.S. Patent Application Publication No. 2011/0300926 A1 to
`Englman et al.
`U.S. Patent Application Publication No. 2013/0190094 A1 to
`Ronen et al.
`U.S. Patent No. 8,376,838 B2 to Schulhof et al.
`U.S. Patent No. 7,824,253 B2 to Thompson et al.
`World of Warcraft, Guild Advancement and You, (Jan. 21, 2011),
`https://worldofwarcraft.com/en-us/news/2113741/guild-
`advancement-and-you
`Arc Games, Forsaken World – Overview – Guild Contribution,
`(Mar. 29, 2011), https://www.arcgames.com/en/games/forsaken-
`world/news/detail/1077620-forsaken-world-___-free-mmorpg-
`___-overview-_-guild-contribution
`MMORPG, Divina – Unique Guild System, (May 12, 2012),
`https://www.mmorpg.com/divina/developer-journals/unique-
`guild-domain-system-2000093507
`U.S. Patent Application Publication No. 2014/0024462 A1 to
`Qiang et al.
`U.S. Patent Application Publication No. 2012/0157212 A1 to
`Kane et al.
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
`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/
`
`vi
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`
`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/
`
`Exhibit
`
`1015
`
`
`
`
`vii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`
`
`I.
`
`INTRODUCTION
`Petitioner Supercell Oy (“Supercell” or “Petitioner”) hereby requests inter
`
`partes review under 35 U.S.C. §311 of United States Patent No. 9,079,107 to
`
`Oono, titled “Game Control Method, Game Control Device, and Recording
`
`Medium” (the “‘107 patent”) (Ex. 1001). Supercell challenges claims 1-11 of the
`
`‘107 patent (the “challenged claims”). This Petition demonstrates a reasonable
`
`likelihood that Supercell will prevail on at least one of the challenged claims. The
`
`Patent Trial and Appeal Board (“Board”) should therefore institute review of the
`
`‘107 patent.
`
`II. COMPLIANCE WITH REQUIREMENTS FOR A PETITION FOR
`INTER PARTES REVIEW
`A. Grounds for Standing (37 C.F.R. §42.104(a))
`Supercell certifies that the ‘107 patent is available for inter partes review
`
`and that the Supercell is not barred or estopped from requesting inter partes review
`
`of the ‘107 patent.
`
`Fees for Inter Partes Review (37 C.F.R. §42.15(a))
`B.
`The Director is authorized to charge the fees specified by 37 C.F.R. §42.15(a)
`
`to Deposit Account No. 19-2555.
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`C. Mandatory Notices (37 C.F.R. §42.8(b))
`Real Party-In-Interest: Supercell Oy is the real party-in-interest.
`
`No other party had access to the Petition, and no other party had any control over,
`
`or contributed to any funding of, the preparation or filing of this Petition.
`
`Notice of Related Matters: Pursuant to 37 C.F.R. §42.8(b)(1),
`
`Petitioner is aware of the following related matters:
`
`•
`
`Patent Owner asserts U.S. Patent No. 9,079,107 and the related
`
`U.S. Patent No. 9,561,439 against Petitioner in GREE, Inc. v.
`
`Supercell Oy, Case No. 2:19-cv-00311 (E.D. Tex. filed
`
`September 16, 2019) (the “District Court Litigation”); and
`
`•
`
`Petitioner filed a petition for inter partes review of U.S. Patent
`
`No. 9,561,439, a divisional of the ‘107 patent, concurrent with
`
`the filing of the instant petition.
`
`D. Designation of Lead and Backup Counsel (37 CFR §42.8(b)(3))
`Petitioner designates Rajiv P. Patel (Reg. No. 39,327) as lead counsel, and as
`
`back-up counsel: 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
`
`to be filed), Geoffrey R. Miller (pro hac vice to be filed), and Emily J. Bullis (pro
`
`hac vice to be filed). Service of any documents via hand delivery may be made to
`
`the mailing address of FENWICK & WEST LLP, 801 California Street, Mountain
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`View, CA 94041 (Tel: (650) 988-8500 and Fax: (650) 938-5200), with courtesy
`
`copies to the email address RPatel-ptab@fenwick.com. Petitioner consents to
`
`electronic service to RPatel-ptab@fenwick.com.
`
`III. THRESHOLD FOR REVIEW (35 U.S.C. §314(A))
`It is reasonably likely that Supercell will prevail on at least one of the claims
`
`challenged in this Petition because the request shows that the subject matter recited
`
`in claims 1-11 of the ‘107 patent is taught by the prior art. Any motivation to
`
`combine the prior art is provided herein as necessary.
`
`IV.
`
`IDENTIFICATION OF CLAIMS BEING CHALLENGED
`In accordance with 37 C.F.R. §42.104(b), Petitioner requests the review and
`
`cancellation of claims 1-11 of the ‘107 patent. The challenged claims are
`
`unpatentable in view of the following prior art:
`
`• U.S. Patent Application Publication No. 2011/0300926 (“Englman”)
`
`(Ex. 1004)
`
`• U.S. Patent Application Publication No. 2013/0190094 (“Ronen”)
`
`(Ex. 1005)
`
`• U.S. Patent No. 8,376,838 (“Schulhof”) (Ex. 1006)
`
`• U.S. Patent No. 7,824,253 (“Thompson”) (Ex. 1007)
`
`The challenged claims are invalid under 35 U.S.C. §103 on the following grounds:
`
`Ground I: Claims 1-7 and 9-11 are rendered obvious by Englman, Ronen,
`
`3
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`

`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`and Schulhof
`
`Ground II: Claim 8 is rendered obvious by Englman, Ronen, Schulhof, and
`
`Thompson
`
`V. OVERVIEW OF THE ‘107 PATENT
`A. Effective Filing Date of the Challenged Claims
`The ‘107 patent was filed on March 5, 2014 and claims foreign 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. Thus, the
`
`effective filing date of the challenged claims is no earlier than March 12, 2013.
`
`Ex. 1003, ¶[0018]. The ‘107 patent is subject to the pre-AIA provisions of the
`
`Patent Statute; all statutory references in this Petition are to the applicable pre-AIA
`
`provision.
`
`Background of the Purported Invention
`B.
`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
`
`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
`
`4
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`example, characters, items, etc.).” Ex. 1001, 1:66-2:3, Ex. 1003, ¶[0026]. As 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.” Ex. 1001, 2:13-15. Thus, a user at a
`
`lower level may only be able to join guild with other similarly situated users and
`
`thus may not be able to obtain certain rewards. Ex. 1001, 2:17-20. This “cause[s]
`
`the motivation for the game of a user at a low level to be reduced.” Ex. 1001, 2:21-
`
`22, Ex. 1003, ¶[0027].
`
`‘107 Patent Description
`C.
`The ‘107 patent’s purported solution to the alleged problem 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
`
`cooperate to “collect a plurality of game pieces constituting one item that appears
`
`in the card battle game,” a concept that is quite well-known. See, Ex. 1001, 17:47-
`
`49, Ex. 1003 ¶[0028].
`
`The system provides game pieces to users in the guild event based on skill
`
`level information. The specification references users in three categories. “[L]ow-
`
`level users” are “users having levels about 1 to 20” in the game, “intermediate-
`
`level users” are “users having levels about 21 to 50,” and “high-level users” are
`
`“users having levels about 51 or more.” Ex. 1001, 18:63-67, 19:15-21, 19:35-39.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`The game pieces are jewels, and different jewel types may target different level of
`
`users by appearing with varying levels of probability based on a user’s skill level.
`
`“The jewel C targets…high-level users, and all of the pieces C1 to C6 are provided
`
`with a probability in common with which the pieces C1 to C6 are more likely to
`
`appear for high-level users.” Ex. 1001, 31-35. Other jewel types may similarly
`
`target low and intermediate-level users. Ex. 1001, 18:60-63, 19:10-14, Ex. 1003,
`
`¶[0029].
`
`Figures (FIGS.) 1 and 2, reproduced below, illustrate the network system
`
`and game control device used to provide the social game. Ex. 1003, ¶[0029].
`
`
`
`6
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`
`
`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 (“obtained game piece information”), and information about the
`
`guild member themselves (e.g., a user’s level information). Ex. 1001, 17:57-18:3,
`
`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, 19:25-27, Ex. 1003, ¶[0029].
`
`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
`
`7
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`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. Game
`
`pieces are obtained by the guild members in this manner. Ex. 1001, 21:52-60,
`
`Ex. 1003 ¶[0030].
`
`Different types of game pieces appear with different levels of probability
`
`based on the skill levels of the users. 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,
`
`19:43-61. “[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, 19:62-64. A guild is required to have players of
`
`different skill levels collect all of the pieces to obtain the reward (i.e., Jewel D)
`
`because the different jewel pieces appear with different probabilities based on skill
`
`level. Ex. 1003, ¶¶[0029]-[0031]. Essentially, all that is described is concept of a
`
`multi-player game in which grouped players of different skill levels collect game
`
`pieces according to their skill level in order to obtain a reward, a concept that was
`
`well known in the art. Ex. 1003, ¶[0031].
`
`8
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`Prosecution History
`D.
`The ‘107 patent was filed on March 5, 2014 as Application Serial No.
`
`14/198,411 (“the ’411 application”) and 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. Ex. 1001; Ex. 1003, ¶[0050].
`
`The ’411 application was assigned to art unit 3714. Ex. 1002, p. 177. It was
`
`originally filed with claims 1-21. Ex. 1002, pp. 68-77. A preliminary amendment
`
`was filed on April 3, 2014 amending claims 1-2, 4, and 6-9 and canceling claim 3.
`
`Ex. 1002, pp. 97-106.
`
`On September 22, 2014, the Office issued a Restriction Requirement in the
`
`’411 application, noting that the application contained claims directed to two
`
`patentably distinct species: (a) where the group is predetermined (claims 1, 2, 4-9)
`
`and (b) where the group is user-selected (claims 10-21). Ex. 1002, pp. 177-181.
`
`On October 30, 2014, the applicant filed a response electing species (b) and
`
`canceling (a). Ex. 1002, pp. 315-321.
`
`On November 12, 2014, the Office issued a non-final Office Action in the
`
`’411 application, rejecting claims 10-21 under 35 U.S.C. §101 as directed to an
`
`abstract idea and under 35 U.S.C. §102 as being anticipated by U.S. Patent
`
`Application Publication No. 2011/0124415 to Shimono. Ex. 1002, pp. 327-335.
`
`9
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
`
`The applicant submitted an amendment and response to the non-final Office
`
`Action on March 4, 2015. The claims were primarily amended to add the “storing
`
`skill level information…,” “grouping…,” “providing…,” “storing allocation
`
`information…,” “determining…,” and “allocating…” steps to claim 1. Similar
`
`amendments were made to independent claims 19 and 20 (renumbered as claims 9
`
`and 10 in the ‘107 patent). Ex. 1001, pp. 341-346. The applicant argued that
`
`Shimono did not group users into one or more groups or provide game pieces
`
`based on skill levels. The applicant further distinguished Shimono on the basis
`
`that a function of degree of friendship was not the same as the claimed skill level
`
`information.
`
`A Notice of Allowance was issued in the ‘411 application on March 19,
`
`2015. The Notice of Allowance did not include reasons for allowance, but merely
`
`noted that the communication was responsive to Applicant’s arguments filed
`
`March 4, 2015. Ex. 1002, pp. 364-368.
`
`VI. CLAIM INTERPRETATION
`Claim terms subject to inter partes review are to 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
`
`10
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`ordinary skill in the art and the prosecution history pertaining to the patent.”
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`(37 C.F.R. §42.100(b))1; Ex. 1003, ¶[0052].
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`Based on the descriptions in the patent, a person of ordinary skill in the art at
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`the time of the invention (“POSITA”) would have applied plain and ordinary
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`meanings to the terms used in the claims. Ex. 1003, ¶[0054].
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`VII. LEVEL OF ORDINARY SKILL IN THE ART
`A POSITA at the time of the alleged invention would have had a bachelor’s
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`degree in game design/development, interactive media, computer science,
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`computer engineering, or a related field, with at least two years of professional
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`experience working in computer game design/development. With more education,
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`such as additional graduate degrees or study, less professional experience is needed
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`to attain the ordinary level of skill. Similarly, with more experiential knowledge of
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`computer games, such as experience developed while playing computer games,
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`1 Petitioner expressly reserves the right to challenge one or more claims (and claim
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`terms) of the ’107 patent for failure to satisfy the requirements of 35 U.S.C. §112,
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`which cannot be raised in these proceedings. See 35 U.S.C. §311(b). Nothing in
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`this Petition, or the constructions provided herein, shall be construed as waiver of
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`such challenge, or agreement that the requirements of 35 U.S.C. §112 are met with
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`for any claim of the ’107 patent.
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`less professional experience is needed to attain the ordinary level of skill.
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`Ex. 1003, ¶[0023].
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`VIII. OVERVIEW OF THE PRIOR ART
`A. The features of the ‘107 patent were common in gaming long
`before the alleged invention
`The concept of multi-player game in which grouped players of different skill
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`levels collect game pieces according to skill level in order to obtain a reward was
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`well-known before the effective date of the ‘107 patent. Ex. 1003, ¶[0068]. Multi-
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`player, networked gaming with users cooperatively participating to achieve a
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`common goal has been widely available since at least the 1990’s, long before the
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`effective filing date. Ex. 1003, ¶[0068]. Early online multi-player networked
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`games include “Multi-User Dungeons,” or “MUDs” available since at least the
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`1980’s. These MUDS were text-based games, many of which included features of
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`traditional role-playing games, such as Dungeons and Dragons. Online games with
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`a wide variety of gameplay types and mechanics features have been widely
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`available since then on a variety of platforms, including traditional desktop
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`computers, laptops, game consoles, handheld gaming devices, and wirelessly
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`connected mobile devices. Ex. 1003, ¶[0068].
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`Rewarding a group of players for individual contributions of group members
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`was well-known in the art. For example, World of Warcraft allowed players to
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`participate in guild play by undertaking personal and group actions including
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`completing quests, killing dungeon and raid bosses, and winning battleground
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`matches. World of Warcraft, “Guild Advancement and You,” Jan. 21, 2011,
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`available at https://worldofwarcraft.com/en-us/news/2113741/guild-advancement-
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`and-you (“Ex. 1008”). The actions of guild members in World of Warcraft
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`allowed the guild to gain experience points, that can raise the guild’s level. As the
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`guild gained levels, its members obtain perks, i.e., a reward, that “affect every
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`member of the guild, and grant a variety of useful benefits – netting extra gold
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`from mobs, earning more experience from your kills, increasing mount speed, a
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`mass resurrection spell helping you bounce back from those inevitable raid wipes,
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`and more.” Ex. 1008; see also Ex. 1003, ¶[0072].
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`Forsaken World similarly included a guild system in which players took part
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`in a variety of quests to “earn merit, contribution, and guild funds.” Arc Games,
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`“Forsaken World – Overview – Guild Contribution,” Mar. 29, 2011, available at
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`https://www.arcgames.com/en/games/forsaken-world/news/detail/1077620-
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`forsaken-world-___-free-mmorpg-___-overview-_-guild-contribution
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`(“Ex. 1009”); see also Ex. 1003, ¶[0073].
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`Beginning players may join a Freshman guild if they have been unable to find
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`or join a guild run by more experienced players. The Freshman guild system gives
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`beginning players access to daily quests and guild-related rewards, and hence
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`addresses the same problem as the ‘107 patent, providing incentive to lower skilled
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`players. Ex. 1003, ¶[0073]. Once players join either the Freshman guild or an
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`existing guild, they can complete guild quests. “Completing one of these quests
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`grants you experience, and some guild contribution and merit…Guild contribution
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`goes directly to your guild to help level it up and earn things like increased character
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`capacity and even a guild base. Ex. 1009. The guild was rewarded based on the
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`individual contributions (i.e., the completion of quests) of the guild members, and
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`all members of the guild, i.e., those of different skill level, benefit. See Ex. 1003,
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`¶[0073].
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`In the massively multiplayer online role-playing game (MMORPG) game
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`Divina, guild members gathered resources in order to grow the guild. MMORPG,
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`“Divina – Unique Guild System,” May 12, 2012, available at
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`https://www.mmorpg.com/divina/developer-journals/unique-guild-domain-system-
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`2000093507 (“Ex. 1010”). “The Guild Domain [was] like a small town, with each
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`member of the guild providing resources to help the town grow and
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`develop….[G]uild members [got] buffs from special markers on the map, and they
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`[could] accept daily instanced quests that are specifically for guilds to receive high
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`EXP rewards.” Ex. 1010. While items in the Domain system were created by
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`individual guild members, “[a]ll created items…[were] dropped into a separate
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`Guild Storage, for guild members to access.” Ex. 1010; see also Ex. 1003, ¶[0074].
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`With all items in Guild Storage available to all guild members, including those new
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`to the game, this approach addresses the same problem as the ‘107 patent, providing
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`incentive to new players in a group. Ex. 1009; Ex. 1003, ¶[0074].
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`Moreover, a number of patents teach enabling players to group together
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`based on skill level to accomplish a team-based collaborative goal and obtain
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`rewards for completion of the goal. See Ex. 1003, ¶¶[0069]-[0071] (discussing
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`Englman, Ronen, Schulhof, Thompson, Qiang, and Kane).
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`Finally, group games have been widely available in the casino context in
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`addition to the computer game context. For example, both Englman and Schulhof
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`describe embodiments in which the team-based collaborative games are played on
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`wagering game machines, such as those located in casinos. Ex. 1004, ¶¶[0043],
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`[0045], FIG. 1, Ex. 1006, 2:35-65, 4:31-36; see also Ex. 1003, ¶[0075].
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`The above are only a few of many examples of the state of the art before the
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`effective filing date of the ‘107 patent that describe the well-known concept of
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`cooperative gaming in which a group of players of different skill levels work
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`Petition for Inter Partes Review of U.S. Patent No 9,079,107
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`together toward a common goal. Ex. 1003, ¶[0076]. Achieving these goals leads
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`to a reward for the group members. Hence, many games addressed the problem of
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`providing incentive to beginning players when other team/guild members were
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`more advanced players. Ex. 1003, ¶[0076].
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`Englman
`B.
`U.S. Patent Application Publi