Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 1 of 11 PageID #: 8457
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`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`GREE, INC.,
`
`Plaintiff,
`
`v.
`
`SUPERCELL OY,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:19-cv-00200-JRG-RSP
` 2:19-cv-00237-JRG-RSP
` 2:19-cv-00310-JRG-RSP
` 2:19-cv-00311-JRG-RSP
`
`JURY TRIAL DEMANDED
`
`UPDATED SECTION D, CONTENTIONS OF THE PARTIES, TO THE PARTIES
`JOINT PRETRIAL ORDER
`
`Supercell
`Exhibit 1022
`Page 1
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`GREE, INC.,
`
`Plaintiff,
`
`v.
`
`SUPERCELL OY,
`
`Defendant.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Case No. 2:19-cv-00200-JRG-RSP
` 2:19-cv-00237-JRG-RSP
` 2:19-cv-00310-JRG-RSP
` 2:19-cv-00311-JRG-RSP
`
`JURY TRIAL DEMANDED
`
`UPDATED SECTION D, CONTENTIONS OF THE PARTIES, TO THE PARTIES
`JOINT PRETRIAL ORDER
`
`Supercell
`Exhibit 1022
`Page 1
`
`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 2 of 11 PageID #: 8458
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`Pursuant to the Court’s Order, 2:19-cv-00200, Dkt. 243, the parties hereby submit an
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`updated Section D, Contentions of the Parties, to reflect the narrowed asserted patents and
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`claims.
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`D.
`
`CONTENTIONS OF THE PARTIES
`1.
`GREE’s Statement of its Contentions
`By providing these contentions, GREE does not concede that all of these issues are appropriate
`
`for trial. In addition, GREE does not waive any of its motions in limine.
`
`a. GREE contends that Supercell infringes claim 7 of U.S. 10,335,683 (“the ’683
`
`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash of Clans game
`
`b. GREE contends that Supercell infringes claim 6 of U.S. 10,307,676 (“the ’676
`
`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash of Clans game.
`
`c. GREE contends that Supercell infringes claim 4 of U.S. 10,328,347 (“the ’347
`
`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash of Clans game.
`
`d. GREE contends that Supercell infringes claim 3 of U.S. 10,328,346 (“the ’346
`
`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash Royale game.
`
`e. GREE contends that Supercell infringes claim 8 of U.S. 10,335,689 (“the ’689
`
`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash of Clans game.
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`- 2 -
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`Supercell
`Exhibit 1022
`Page 2
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 3 of 11 PageID #: 8459
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`f. GREE contends that Supercell infringes claim 1 of U.S. 10,076,708 (“the ’708
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`patent”) by making, using, selling, offering for sale in and/or importing into the
`
`United States its Clash Royale game.
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`g. GREE contends that Supercell infringes claim 2 and 3 of U.S. 10,413,832 (“the
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`’832 patent”) by making, using, selling, offering for sale in and/or importing into
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`the United States its Clash Royale game.
`
`h. GREE contends that Supercell infringes claims 1 and 6 of U.S. 9,079,107 (“the
`
`’107 patent”) by making, using, selling, offering for sale in and/or importing into
`
`the United States its Clash of Clans, Clash Royale and Hay Day games.
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`i. GREE contends that Supercell infringes claims 1 and 5 of U.S. 9,561,439 (“the
`
`’439 patent”) by making, using, selling, offering for sale in and/or importing into
`
`the United States its Clash of Clans, Clash Royale and Hay Day games.
`
`j. GREE is the owner by assignment of all right, title, and interest in and to the
`
`’683 patent, which duly and legally issued on July 2, 2019 and claims priority
`
`to Japanese Patent Application Nos. 2013-202721 and 2014-080554.
`
`k. GREE is the owner by assignment of all right, title, and interest in and to the
`
`’676 patent, which duly and legally issued on June 4, 2019 and claims priority
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`to Japanese Patent Application Nos. 2013-202721 and 2014-080554.
`
`l. GREE is the owner by assignment of all right, title, and interest in and to the
`
`’347 patent, which duly and legally issued on June 25, 2019 and claims priority
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`to Japanese Patent Application Nos. 2013-202721 and 2014-080554.
`
`m. GREE is the owner by assignment of all right, title, and interest in the ’346
`
`patent, which duly and legally issued on June 25, 2019 and claims priority to
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`U.S. Patent Application No. 15/391,123 (now U.S. 9,770,659), which claims
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`- 3 -
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`Supercell
`Exhibit 1022
`Page 3
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 4 of 11 PageID #: 8460
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`priority to U.S. Patent Application No. 15/253,964 (now U.S. 9,636,583),
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`which claims priority to Application No. 14/291,358 (now 9,457,273), which
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`claims priority to Japanese Patent Application Nos. 2013-116039, 2013-
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`268385, and 2014- 042491.
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`n. GREE is the owner by assignment of all right, title, and interest in the ’689
`
`patent, which duly and legally issued on July 2, 2019 and claims priority to
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`Japanese Patent Application No. 2013-273252.
`
`o. GREE is the owner by assignment of all right, title, and interest in the ’708
`
`patent, which duly and legally issued on September 18, 2018 and claims priority
`
`to Japanese Patent Application No. 2012-140213.
`
`p. GREE is the owner by assignment of all right, title, and interest in the ’832
`
`patent, which duly and legally issued on September 17, 2019 and claims priority
`
`to Japanese Patent Applications No. 2012-140213.
`
`q. GREE is the owner by assignment of all right, title, and interest in the ’107
`
`patent, which duly and legally issued on July 14, 2015 and claims priority to
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`Japanese Patent Applications Nos. 2013-049388, 2013-202682, and 2013-
`
`262855.
`
`r. GREE is the owner by assignment of all right, title, and interest in the ’439
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`patent, which duly and legally issued on February 7, 2017 and claims priority
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`to Japanese Patent Applications Nos. 2013-049388, 2013-202682, and 2013-
`
`262855.
`
`s. GREE contends that it has been damaged by Supercell’s infringement and seeks
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`damages to compensate it for the infringement by Supercell, including in no
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`- 4 -
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`Supercell
`Exhibit 1022
`Page 4
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 5 of 11 PageID #: 8461
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`event less than a reasonable royalty, together with pre-judgment and post-
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`judgment interest and costs fixed by the Court.
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`t. GREE contends that it is further entitled to provisional damages for Supercell’s
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`infringement of the ’676 patent from the date Supercell had actual notice of the
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`published application that resulted in the ’676 patent.
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`u. GREE contends that it is entitled to injunctive relief.
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`v. GREE contends that Supercell’s infringement is and has been willful and thus
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`GREE should be awarded enhanced damages pursuant to 35 U.S.C. § 284, as
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`well as supplemental damages for any continuing post-verdict infringement and
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`accounting for damages, if necessary, and both pre-judgment and post-
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`judgment interest.
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`w. GREE contends that this case is exceptional and that GREE is entitled to
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`reasonable attorneys’ fees and costs pursuant to 35 U.S.C. § 285.
`
`Supercell’s Statement of its Contentions
`2.
`Supercell does not infringe any asserted claim of the Patents-in-Suit and each asserted
`
`claim is invalid. GREE is not entitled to any relief it seeks. By providing these contentions,
`
`Supercell does not concede that all of these issues are appropriate for trial; nor do the contentions
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`below include every detail underlying each contention. In particular, Supercell does not waive any
`
`of its pending or future filed motions, which, if granted, would render some or all of these issues
`
`moot.
`
`
`
`a. Supercell denies that it directly or indirectly infringes any claim of the ’683
`
`patent.
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`b. Supercell denies that it directly or indirectly infringes any claim of the ’676
`
`patent.
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`- 5 -
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`Supercell
`Exhibit 1022
`Page 5
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 6 of 11 PageID #: 8462
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`c. Supercell denies that it directly or indirectly infringes any claim of the ’347
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`patent.
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`d. Supercell denies that it directly or indirectly infringes any claim of the ’346
`
`patent.
`
`e. Supercell denies that it directly or indirectly infringes any claim of the ’689
`
`patent.
`
`f. Supercell denies that it directly or indirectly infringes any claim of the ’708
`
`patent.
`
`g. Supercell denies that it directly or indirectly infringes any claim of the ’832
`
`patent.
`
`h. Supercell denies that it directly or indirectly infringes any claim of the ’107
`
`patent.
`
`i. Supercell denies that it directly or indirectly infringes any claim of the ’439
`
`patent.
`
`j. Supercell contends that the patents-in-suit are invalid. Specifically, Supercell
`
`contends that the asserted claims of the Patents-in-Suit are invalid for being
`
`anticipated or obvious in view of prior art under 35 U.S.C. §§ 102 and/or 103,
`
`and claims of the ’676, ’347, and ’346 patents are invalid for failing to meet the
`
`written description requirement under 35 U.S.C. § 112, and that the claims of
`
`the ’676, ’347, ’683, ’346, ’689, ’708, ’832, ’107, and ’439 patents are invalid
`
`for failing to claim patentable subject matter under 35 U.S.C. § 101.
`
`k. Supercell is not liable to GREE under any cause of action or legal theory
`
`asserted by GREE.
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`- 6 -
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`Supercell
`Exhibit 1022
`Page 6
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 7 of 11 PageID #: 8463
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`l. GREE is not entitled to any of the recovery it seeks.
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`m. GREE is not entitled to any other costs, interests, or further relief.
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`n. GREE is not entitled to any damages, including, but not limited to, a reasonable
`
`royalty or provisional damages.
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`o. GREE is not entitled to any injunction.
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`p. GREE is not entitled to a finding of willful infringement.
`
`q. This case is exceptional.
`
`r. Supercell is entitled to an order requiring GREE to pay its costs and attorneys’
`
`fees in defending against this action.
`
`
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`- 7 -
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`Supercell
`Exhibit 1022
`Page 7
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 8 of 11 PageID #: 8464
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`
`DATED: March 12, 2020
`
`GILLAM & SMITH, LLP
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`
`
`Of Counsel:
`
`
`
`By /s/ Steven D. Moore
` MELISSA R. SMITH
`(Texas State Bar No. 24001351)
`HARRY L. GILLAM, JR.
`(Texas State Bar No. 07921800)
`303 South Washington Avenue
`Marshall, Texas 75670
`Telephone: (903) 934-8450
`Facsimile: (903) 934-9257
`Email: melissa@gillamsmithlaw.com
`Email: gil@gillamsmithlaw.com
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`STEVEN D. MOORE (CA Bar No. 290875)
`RISHI GUPTA (CA Bar No. 313079)
`Two Embarcadero Center, Suite 1900
`San Francisco, CA 94111
`Telephone: (415) 576-0200
`Facsimile: (415) 576-0300
`Email: smoore@kilpatricktownsend.com
`Email: rgupta@kilpatricktownsend.com
`
`NORRIS P. BOOTHE (CA Bar No. 307702)
`1080 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 326-2400
`Facsimile: (650) 326-2422
`Email: nboothe@kilpatricktownsend.com
`
`JOHN C. ALEMANNI (NC Bar No. 22977)
`TAYLOR HIGGINS LUDLAM (NC Bar No. 42377)
`KASEY E. KOBALLA (NC Bar No. 53766)
`4208 Six Forks Road
`Raleigh, NC 27609
`Telephone: (919) 420-1700
`Facsimile: (919) 420-1800
`Email: jalemanni@kilpatricktownsend.com
`Email: taludlam@kilpatricktownsend.com
`Email: kkoballa@kilpatricktownsend.com
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`- 1 -
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`Supercell
`Exhibit 1022
`Page 8
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 9 of 11 PageID #: 8465
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`
`MICHAEL T. MORLOCK (GA Bar No. 647460)
`1100 Peachtree Street, NE
`Suite 2800
`Atlanta, Georgia 30309
`Telephone: (404) 815-6500
`Facsimile: (404) 815-6555
`Email: mmorlock@kilpatricktownsend.com
`
`ALTON L. ABSHER III (NC Bar No. 36579)
`ANDREW W. RINEHART (NC Bar No. 46356)
`1001 West Fourth Street
`Winston-Salem, NC 27101
`Telephone: (336) 607-7300
`Facsimile: (336) 607-7500
`Email: aabsher@kilpatricktownsend.com
`Email: arinehart@kilpatricktownsend.com
`
`TAYLOR J. PFINGST (CA Bar No. 316516)
`1801 Century Park East
`Suite 2300
`Los Angeles, CA 90067
`Telephone: (310) 248-3830
`Facsimile: (310) 860-0363
`Email: tpfingst@kilpatricktownsend.com
`
`Attorneys for PLAINTIFF GREE, Inc.
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`- 2 -
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`Supercell
`Exhibit 1022
`Page 9
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`
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 10 of 11 PageID #: 8466
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`
`Dated: March 12, 2021
`
`Respectfully submitted,
`
`
`
`/s/ Michael J. Sacksteder
`Michael J. Sacksteder (Admitted E.D. Texas)
`Bryan A. Kohm (Admitted E.D. Texas)
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, California 94104
`Telephone:
`415.875.2300
`Facsimile:
`415.281.1350
`Email:
`
`msacksteder@fenwick.com
`
`
`bkohm@fenwick.com
`Jeffrey Ware (Admitted E.D. Texas)
`Jessica M. Kaempf (Admitted E.D. Texas)
`FENWICK & WEST LLP
`1191 Second Ave., 10th Floor
`Seattle, Washington 98101
`Telephone:
`206.389.4510
`Facsimile:
`206.389.4511
`Email:
`
`jware@fenwick.com
`
`
`jkaempf@fenwick.com
`Geoffrey R. Miller
`(Texas State Bar No. 24094847)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
`Email:
`
`gmiller@fenwick.com
`Deron R. Dacus
`State Bar No. 00790553
`The Dacus Firm, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
`ddacus@dacusfirm.com
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`Attorneys for Defendant Supercell Oy
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`- 3 -
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`Supercell
`Exhibit 1022
`Page 10
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`Case 2:19-cv-00311-JRG-RSP Document 222 Filed 03/12/21 Page 11 of 11 PageID #: 8467
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 12, 2021, all counsel of record who have consented to
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`electronic service are being served with a copy of this document via the Court’s CM/ECF
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`system pursuant to Local Rule CV-5(a)(3):
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`/s/ Steven D. Moore
`Steven D. Moore
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`- 4 -
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`Supercell
`Exhibit 1022
`Page 11
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