UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2020-00043
`U.S. Patent No. 10,328,346
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S ADDITIONAL
`BRIEFING REGARDING OVERLAP FACTOR
`
`Supercell
`Exhibit 1024
`Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2020-00043
`U.S. Patent No. 10,328,346
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S ADDITIONAL
`BRIEFING REGARDING OVERLAP FACTOR
`
`Supercell
`Exhibit 1024
`Page 1
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) .......................................1, 2
`Edwards Lifesciences v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) .............................................. 3
`Facebook, Inc. v. Blackberry Ltd.,
`IPR2019-00899, Paper 15 (P.T.A.B. Oct. 8, 2019) ..........................................2, 3
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) .............................. 3
`Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01552, Paper 12 (P.T.A.B. Mar. 3, 2021) .........................................1, 2
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 13 (P.T.A.B. Sept. 3, 2020) ........................................... 3
`Vizio, Inc. v. Polaris PowerLED Technologies, LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) ............................................. 1
`
`Supercell
`Exhibit 1024
`Page 2
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00237, Document 93 (E.D. Tex. May 14,
`2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Supercell Oy’s Motion for Relief in View of Governmental/Public
`Health Restrictions in Response to COVID-19 Virus Impact,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00237,
`Document 78 (E.D. Tex. April 23, 2020)
`
`Complaint, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00237, Document 1 (E.D. Tex. June 25, 2019)
`
`Defendant Supercell Oy’s Preliminary Ineligibility Contentions,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00237 (E.D.
`Tex.), dated November 13, 2019
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00237 (E.D. Tex.), dated December 6,
`2019
`
`Exhibit A-2 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00237(E.D. Tex.), dated
`December 6, 2019
`
`Exhibit A-7 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00237(E.D. Tex.), dated
`December 6, 2019
`
`Defendant Supercell Oy’s Amended Invalidity Contentions and
`Disclosures Under Local Patent Rule 3-6, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00237 (E.D. Tex.), dated July 1,
`2020
`
`ii
`
`Supercell
`Exhibit 1024
`Page 3
`
`
`
`Exhibit No.
`2009
`
`Description
`Order, GREE, Inc. v. Supercell Oy, Nos. 2020-1069, -1162 (Fed.
`Cir. May 19, 2020)
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`Third Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00237, Document 104 (E.D. Tex. July 28,
`2020)
`
`Model Order Focusing Patent Claims and Prior Art to Reduce
`Costs, U.S. District Court for the Eastern District of Texas
`
`Order, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00200, Document 243 (E.D. Tex. March 11, 2021)
`
`March 11, 2021 Email Correspondence from Law Clerk to Chief
`Judge Rodney Gilstrap, U.S. District Court for the Eastern District
`of Texas, Order of Trials for March 2021, GREE, Inc. v. Supercell
`Oy, Civil Action Nos. 2:19-cv-00200, -237, -310, -311 (E.D. Tex.)
`
`March 11, 2021 Email Correspondence from Melissa Smith to
`Law Clerk to Chief Judge Rodney Gilstrap, U.S. District Court for
`the Eastern District of Texas, Order of Trials for March 2021,
`GREE, Inc. v. Supercell Oy, Civil Action Nos. 2:19-cv-00200, -
`237, -310, -311 (E.D. Tex.)
`
`iii
`
`Supercell
`Exhibit 1024
`Page 4
`
`
`
`Patent Owner’s recent narrowing of the claims it will present at the parties’
`
`imminent trial, as required by the District Court’s procedures, does not materially
`
`alter the weighing of Fintiv Factor 4. Patent Owner has not engaged in any
`
`“gamesmanship.” Rather, Patent Owner has followed common practice of selecting
`
`the claims it will present to the jury given the District Court’s directives in view of
`
`its time limits on trials. See Exs. 2011, 2012. Thus, the fact that the Petition
`
`challenges additional claims does not preclude a finding of overlap. See Samsung
`
`Elecs. Co. Ltd. v. Clear Imaging Research, LLC, IPR2020-01552, Paper 12, at 21–
`
`23 (P.T.A.B. Mar. 3, 2021) (“[T]he mere existence of non-overlapping claims does
`
`not support Petitioner’s position that this factor favors institution. …”). Moreover,
`
`the fact that the parallel proceeding has progressed this far—through two pre-trial
`
`conferences and to the cusp of trial—strongly favors discretionary denial.
`
`Under Fintiv, there need only be some “overlap” between issues in the petition
`
`and the parallel proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at
`
`6 (P.T.A.B. Mar. 20, 2020). The Board has consistently found that this factor weighs
`
`in favor of discretionary denial even when there is not complete identity of
`
`challenged claims. See, e.g., Samsung, IPR2020-01552, Paper 12, at 21–23; Vizio,
`
`Inc. v. Polaris PowerLED Technologies, LLC, IPR2020-00043, Paper 30, at 11
`
`(P.T.A.B. May 4, 2020). The Board correctly found the same here. Paper 13, at 16.
`
`Further, resolution of Petitioner’s challenge to claim 3 at the district court will
`
`Supercell
`Exhibit 1024
`Page 5
`
`
`
`resolve key issues in the Petition. Claim 3 from depends from claim 1. Ex. 1001, at
`
`10:64–67. Petitioner’s challenge to the validity of claim 3 at the district court will
`
`thus resolve claim 1. Further, Petitioner’s challenges in the Petition present the
`
`“same reasons” across each independent claim. See, e.g., Pet. at 77 (“[F]or the same
`
`reasons as discussed above for with [sic] claim 1, claim 6 would have been obvious
`
`….”), 79 (claim 7), 79 (claim 8), 85 (claim 14), 86 (claim 15); see also id. at 28–46.
`
`Thus, Petitioner necessarily “does not show that the non-overlapping claims differ
`
`significantly in some way.” Samsung, IPR2020-01552, Paper 12, at 22.
`
`Thus, given the similarity of the claims and Petitioner’s challenges thereto,
`
`resolution of Petitioner’s challenge to claim 3 at the district court will necessarily
`
`resolve key issues in the Petition. See Id. at 23 (“[A]though the non-overlapping
`
`claims are challenged here, those claims are sufficiently similar to those at issue in
`
`the parallel proceeding.”). As such, it is still “inefficient” to proceed with the Petition
`
`given the imminent trial at the district court. See Fintiv, IPR2020-00019, Paper 11,
`
`at 13 (“[I]f a petition … challenges claims in addition to those that are challenged in
`
`the district court, it may still be inefficient to proceed because the district court may
`
`resolve validity of enough overlapping claims to resolve key issues in the petition.”).
`
`The decision in Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15
`
`(P.T.A.B. Oct. 8, 2019), does not demonstrate otherwise. That decision pre-dates
`
`Fintiv and thus does not address Factor 4. See id. at 11–12. Indeed, the decision fails
`
`2
`
`Supercell
`Exhibit 1024
`Page 6
`
`
`
`to analyze the similarity between the claim in the litigation and the claims challenged
`
`in the petition. Id. at 12. Moreover, unique facts existed there that are not present
`
`here. The trial date was “far from set in stone,” and “the prior art references cited in
`
`the IPR grounds are different from those relied on in the district court litigation.” Id.
`
`Here, trial in the parallel district court proceeding is imminent, and even Petitioner
`
`has requested a trial in May 2021. See Exs. 2013, 2014. Thus, even if the Board were
`
`to institute now, its Final Written Decision would be due ten months after trial.
`
`Petitioner’s policy arguments also fail. See Supercell Oy v. GREE, Inc.,
`
`PGR2020-00034, Paper 13, at 20–21 (P.T.A.B. Sept. 3, 2020) (“We also find
`
`Petitioner’s policy arguments to be misplaced, in view of binding precedent.”).
`
`Petitioner’s claim of direct prejudice is belied by the Board’s precedents, and in any
`
`event, Patent Owner will not have the option to later assert the non-elected claims.
`
`Thus, “denying Petitioner the ability to challenge [those claims] in this proceeding
`
`is not unduly prejudicial to Petitioner.” Edwards Lifesciences v. Evalve, Inc.,
`
`IPR2019-01479, Paper 7, at 12 (P.T.A.B. Feb. 26, 2020). Indeed, in Next Caller Inc.
`
`v. TrustID, Inc., the Board exercised its discretion to deny institution in view of a
`
`parallel proceeding even though the Petitions addressed “claims 1–52” of the subject
`
`patent, “whereas the Parallel District Court Proceeding only involves claims 32, 34,
`
`36–38, 48, and 50.” IPR2019-00961, -00962, Paper 10, at 15–16 (P.T.A.B. Oct. 16,
`
`2019). The same conclusion is appropriate here.
`
`3
`
`Supercell
`Exhibit 1024
`Page 7
`
`
`
`Dated: March 15, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`4
`
`Supercell
`Exhibit 1024
`Page 8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Additional Briefing Regarding Overlap Factor has been
`
`served electronically via email upon the following:
`
`Kevin X. McGann
`Brian M. Hoffman
`Jennifer R. Bush
`Scott D. Baker
`Michael J. Stacksteder
`Geoffrey R. Miller
`Fenwick & West LLP
`KMcGann-PTAB@fenwick.com
`
`Dated: March 15, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`5
`
`Supercell
`Exhibit 1024
`Page 9
`
`
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