`Petitioner’s Request for Rehearing
`
`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.
`
`
`Case No. IPR2020-01633
`Patent 9,079,107 B2
`_____________
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`
`IPR2020-01633
`Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
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`Page
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`I.
`INTRODUCTION AND REQUEST FOR RELIEF ...................................... 1
`II.
`LEGAL STANDARD .................................................................................... 2
`III. BASIS FOR THE REQUESTED RELIEF .................................................... 3
`A.
`Patent Owner’s Removal of Eight of the Ten Challenged
`Claims from the Parallel Litigation Immediately After the
`Decision Mitigates Concerns of Duplicative Efforts and
`Potentially Conflicting Decisions ........................................................ 3
`Patent Owner’s Gamesmanship Thwarts the Notion that
`Petitioner is the “Master of its Complaint” .......................................... 6
`IV. CONCLUSION ............................................................................................... 9
`
`
`B.
`
`
`
`
`
`i
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`
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. DSS Tech. Mgmt., Inc.,
`IPR2015-00369, Paper 14 (P.T.A.B. Aug. 12, 2015) ........................................... 2
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim
`Apple Inc. v. Maxwell, LTD,
`IPR2020-00200, Paper 21 (P.T.A.B. Feb. 3, 2021) .............................................. 4
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 8
`Illumina, Inc. v. Natera, Inc.,
`IPR2019-01201, Paper 19 (P.T.A.B. Dec. 18, 2019) ........................................... 6
`Precision Planting, LLC v. Deere & Co.,
`IPR2019-01051, Paper 18 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`Samsung Elecs. Am., Inc. v. Snik, LLC,
`IPR2020-01429, Paper 10 (P.T.A.B. March 9, 2021) .......................................... 6
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ........................................... 4
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .................................................................................. 1, 2, 8
`STATUTES AND RULES
`35 U.S.C. § 103 ...................................................................................................... 3, 7
`35 U.S.C. § 314 .............................................................................................. 2, 3, 7, 9
`OTHER AUTHORITIES
`37 C.F.R. § 11.303(a)(1) ............................................................................................ 8
`37 C.F.R. § 42.71 ................................................................................................... 1, 2
`
`ii
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`
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`IPR2020-01633
`Petitioner’s Request for Rehearing
`
`
`EXHIBIT LIST (37 CFR § 42.63(E))
`
`Exhibit
`
`Description
`
`1001
`1002
`1003
`1004
`
`1005
`
`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.
`1006
`U.S. Patent No. 7,824,253 B2 to Thompson et al.
`1007
`1008 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
`1010 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/
`
`1009
`
`1011
`1012
`1013
`1014
`
`iii
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`
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`IPR2020-01633
`Petitioner’s Request for Rehearing
`
`
`Exhibit
`
`Description
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`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/
`Order (Granting Continuance of In-Person Jury Trials) (Dkt. 261),
`entered on November 20, 2020, Infernal Technology, LLC, et al. v. Sony
`Interactive Entertainment LLC, Case. No. 19-cv-00248 (E.D. Texas)
`Katie Buehler, COVID-19 Outbreak Leads to Mistrial in EDTX, Law360
`(Nov. 17, 2020), https://www.law360.com/articles/1329617/covid-19-
`outbreak-leads-to-mistrial-in-edtx
`Sixth Amended Docket Control Order [Dkt 94], entered on October 23,
`2020, Case No. 19-cv-00311 (E.D. Texas)
`GREE, Inc.’s Amended Disclosure of Asserted Claims and Infringement
`Contentions, served on August 3, 2020, Case No. 19-cv-00311
`(E.D. Texas)
`1020 Minute Order re Markman Hearing [Dkt 73], entered on September 1,
`2020, Case No. 19-cv-00311 (E.D. Texas) (resulting in Claim
`Construction Memorandum Opinion and Order [Dkt 86], entered on
`October 13, 2020)
`E-mail from Lee Matalon, Law Clerk to Chief Judge Rodney Gilstrap, to
`Petitioner and Patent Owner counsel, Case No. 19-cv-00311 (E.D.
`Texas) (March 17, 2021)
`Updated Section D, Contentions of the Parties, to the Parties Joint
`Pretrial Order [Dkt 222], filed on March 12, 2021, Case No. 19:cv-00311
`(E.D. Texas)
`GREE, Inc.’s Disclosure of Asserted Claims and Infringement
`Contentions, served on January 28, 2020, Case No. 19-cv-00311 (E.D.
`Texas)
`Patent Owner’s Response to Petitioner’s Additional Briefing Regarding
`Overlap Factor, filed on March 15, 2021, PGR2020-00043 (P.T.A.B.)
`
`1021
`
`1022
`
`1023
`
`1024
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`
`
`iv
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`I.
`
`INTRODUCTION AND REQUEST FOR RELIEF
`Pursuant to 37 C.F.R. § 42.71, Petitioner Supercell Oy (“Supercell” or
`
`“Petitioner”) respectfully requests rehearing of the Board’s Decision Denying
`
`Institution of Inter Partes Review of U.S. Patent No. 9,079,107 (the “’107 Patent”)
`
`to Oono (Paper 9) (“Decision”) because the Board “misapprehended or overlooked”
`
`matters addressed by the Petition and thus abused its discretion in denying
`
`institution. See 37 C.F.R. § 42.71(c) and (d).
`
`In its Decision, the Board determined that Petitioner adequately made an
`
`initial showing that the cited references teach or suggest the limitations of the
`
`challenged claims, but exercised its discretion to deny institution due solely to the
`
`pending district court litigation involving the ’107 Patent. Decision at 13.
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`Immediately after the Board issued its Decision, however, Patent Owner narrowed
`
`the litigation by dropping eight of the ten challenged claims. Ex. 1022. As a result,
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`only two of the claims challenged in the instant Petition (claims 1 and 6) will be
`
`evaluated by the district court. Id. Accordingly, any overlap between this proceeding
`
`and the litigation would be minimal. When considered in view of the holistic
`
`assessment required by Fintiv, these facts demonstrate that institution is the proper
`
`course of action.
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`Further, granting the Request for Rehearing will discourage the type of
`
`abusive gamesmanship in which Patent Owner is engaged. SAS designates the
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`1
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`petitioner the “master of its complaint” and allows the petitioner to “define the
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`contours of the proceeding” (SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355
`
`(2018)), yet denial of institution reverses the roles of the parties and effectively
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`sanctions and
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`incentivizes Patent Owner’s shady
`
`litigation
`
`tactics. This
`
`gamesmanship directly contravenes the Board’s goal of promoting efficiency and
`
`fairness in exercising its discretion under § 314. Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 11 at 6 (P.T.A.B. Mar. 20, 2020) (precedential).
`
`Petitioner respectfully requests that the Board grant rehearing for the reasons
`
`presented herein.
`
`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked, and the place where each matter
`
`was previously addressed in a motion, an opposition, or a reply, or a sur-reply.”
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`37 C.F.R. § 42.71(d).
`
`Institution decisions are reviewed on rehearing for an abuse of discretion. See
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`37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on
`
`an erroneous conclusion of law or clearly erroneous factual findings, or. . . a clear
`
`error of judgment.” Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-00369, Paper 14
`
`at 3 (P.T.A.B. Aug. 12, 2015) (citation omitted).
`
`2
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`III. BASIS FOR THE REQUESTED RELIEF
`Patent Owner’s Removal of Eight of the Ten Challenged Claims
`A.
`from the Parallel Litigation Immediately After the Decision
`Mitigates Concerns of Duplicative Efforts and Potentially
`Conflicting Decisions
`In its Petition for Inter Partes Review, Petitioner sought review of claims 1-11
`
`of the ’107 Patent, asserting that these claims are invalid under 35 U.S.C. § 103 over
`
`Englman, Ronen, Schulhof, and Thompson. Decision at 4. Ten of the eleven
`
`challenged claims were at issue in the parallel litigation when Petitioner filed the
`
`instant Petition. Ex. 1019. In evaluating the Fintiv Order’s “overlap” factor, the
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`Board noted that the Petition and litigation concerned “the same statutory grounds,
`
`substantially the same arguments, and substantially the same prior art evidence” with
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`respect to claims 1-7 and 9-11 and expressed concern about duplicative efforts and
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`potentially conflicting decisions between the two proceedings. Decision at 12.
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`Immediately after the Board exercised its discretion to deny institution on § 314
`
`grounds, however, Patent Owner dropped eight of the ten challenged claims from
`
`the litigation. That litigation, which has been postponed until at least May 2021 (Ex.
`
`1021), is now proceeding on a single independent claim (claim 1) and a single
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`dependent claim (claim 6) of the ’107 Patent. Ex. 1022.
`
`This development is a proper basis for granting rehearing because it
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`constitutes a matter the Board misapprehended or overlooked in the Decision. The
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`Board may properly consider post-decision developments in determining whether a
`
`3
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`misapprehension or overlooking of facts justifies the grant of a Request for
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`Rehearing. See Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393,
`
`Paper 24 (P.T.A.B. June 16, 2020) (informative). In Sand Revolution, the Board
`
`stated that new evidence of record submitted after denial of institution mitigated
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`concerns of the Board related to discretionary denial, and supported institution. Id.
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`at 2-3. More recently, the Board explicitly stated that consideration of discretionary
`
`denial need not “be constrained to the facts as they existed when the Petition was
`
`filed.” Apple Inc. v. Maxwell, LTD, IPR2020-00200, Paper 21 at 4 (P.T.A.B. Feb. 3,
`
`2021) (referencing Sand Revolution).
`
`In the instant Decision, the Board acknowledged Petitioner adequately made
`
`an initial showing of obviousness (Decision at 13), yet now, because of Patent
`
`Owner’s gamesmanship, the dropped claims will be insulated from review.
`
`Accordingly, substantial issues will remain even after the parallel litigation
`
`concludes. For example, neither of the remaining claims (claims 1 and 6) address
`
`group formation or how a user joins an existing group, including the interactions
`
`between the game control device and the various communication terminals of
`
`existing and new group members (claims 2, 3, and 11). Nor do claims 1 and 6
`
`contemplate that each user may be limited to receiving a single game piece (claim
`
`7).
`
`4
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`Further, claim 8 is the only claim of the ’107 Patent that recites a battle
`
`between two users in the game and the transfer of a game piece based on the battle
`
`outcome. Both claims 1 and 6 involve users working together to achieve a common
`
`goal (i.e., collection of game pieces and a game item); neither claim contemplates
`
`users working against each other. Nor does either claim address game piece transfer
`
`generally, let alone transfer as a result of a battle outcome.
`
`Most egregious, however, is the district court’s lack of review of claims 4-5
`
`given that these claims relate to the very solution the ’107 purports to provide:
`
`allowing users of different skill levels to participate in a cooperative game by
`
`allocating different game pieces to users having different skill levels. Pet. at 5. These
`
`claims differ in scope from claim 6. For example, claim 6 explicitly limits the
`
`distribution of each of the game pieces to users with skill levels in a predetermined
`
`range. The predetermined range is definitionally bounded. In contrast, claim 4 recites
`
`providing game pieces to users with skill levels in different ranges with different
`
`probabilities, which differs from bounded ranges. Likewise, claim 5 recites
`
`providing game pieces to users with skill levels in different ranges, which is
`
`unbounded. Resolution of claims 1 and 6 at the district court will therefore not
`
`resolve a number of key issues in the Petition regarding validity of these claims.
`
`The Fintiv factors favor institution in view of these changed facts. The
`
`Board’s stated concerns about duplicative efforts and the potential for conflicting
`
`5
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`decisions are rendered moot due to the lack of overlap between the instant IPR and
`
`the parallel litigation. The Board recently found the overlap factor weighed against
`
`discretionary denial where, as here, the patent owner reduced the number of claims
`
`asserted in the litigation such that the majority of claims challenged in the IPR were
`
`not at issue in the parallel proceeding. See Samsung Elecs. Am., Inc. v. Snik, LLC,
`
`IPR2020-01429, Paper 10 at 11 (P.T.A.B. March 9, 2021). Similarly, in this case,
`
`inefficiency concerns are minimal because the Petition overlaps with only a small
`
`slice of the parallel proceeding. See also Illumina, Inc. v. Natera, Inc., IPR2019-
`
`01201, Paper 19 at 6 (P.T.A.B. Dec. 18, 2019) (discretionary denial disfavored
`
`where the petition challenged additional claims beyond those reviewed by the
`
`district court); Precision Planting, LLC v. Deere & Co., IPR2019-01051, Paper 18
`
`at 8-9 (P.T.A.B. Dec. 20, 2019) (same). The potential for inconsistent results is
`
`limited to a single independent claim and a single dependent claim. Petitioner has
`
`further mitigated the potential for overlap by stipulating not to pursue the grounds
`
`from the instant Petition in the district court if the Board institutes Inter Partes
`
`Review. See Samsung Elecs. Am., IPR2020-01429, Paper 10 at 11.
`
`Accordingly, the overlap factor favors instituting review of the ’107 Patent.
`
`B.
`
`Patent Owner’s Gamesmanship Thwarts the Notion that
`Petitioner is the “Master of its Complaint”
`Patent Owner initially asserted all eleven claims of the ‘107 Patent and all
`
`seven claims of the related ’439 Patent (at issue in IPR2020-01628) in the parallel
`
`6
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`
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`district court litigation. Ex. 1023. Claim 8 was dropped from the litigation in August
`
`2020. Ex. 1019. Petitioner then filed the instant Petition, arguing that all claims of
`
`the ’107 Patent are invalid under 35 U.S.C. § 103. In its Preliminary Response,
`
`Patent Owner claimed that the overlap factor favored the Board’s exercise of
`
`discretionary denial, arguing that there was “substantial overlap between the claims,
`
`grounds, arguments, and evidence presented in the Petition and what has been, and
`
`continues to be, litigated in the parallel district court proceeding.” POPR at 21
`
`(emphasis added). The Board relied on this statement in its analysis of the Fintiv
`
`factors, ultimately concluding that the overlap factor favored exercise of its
`
`discretion and denied institution under § 314. Decision at 14.
`
`Immediately after the Board’s Decision, however, Patent Owner dropped the
`
`majority of challenged claims from the litigation. Ex. 1022. Patent Owner thereafter
`
`informed the Board, in another matter between the parties, that narrowing of the
`
`claims at trial was “required by the District Court’s procedures” and that it was
`
`exercising its “common practice of selecting the claims it will present to the jury,”
`
`indicating Patent Owner knew in advance it would subsequently drop claims from
`
`the litigation. Ex. 1024 (emphasis added). Hence, while Patent Owner argued
`
`overlap of the claims asserted, it neglected to inform the Board that it was allegedly
`
`required to subsequently reduce the number of asserted claims. Id. These
`
`circumstances create a perception that Patent Owner intentionally made a false
`
`7
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`statement of material fact to the Board or failed to correct a false statement of
`
`material fact it previously made to the Board. See 37 C.F.R. § 11.303(a)(1).
`
`Upholding the Board’s discretionary denial on these facts would effectively sanction
`
`this gamesmanship and incentivize such misleading tactics in the future.
`
`Moreover, the public’s interests, and Petitioner, are harmed by discretionary
`
`denial in this context. The Board already concluded that the Petition adequately
`
`made an initial showing that “the[] references teach or suggest the limitations of the
`
`challenged claims and that one of ordinary skill in the art would have combined the
`
`asserted references.” Decision at 13. The public has a “‘paramount interest in seeing
`
`that patent monopolies . . . are kept within their legitimate scope.’” Cuozzo Speed
`
`Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (internal cite omitted). Exercising
`
`discretion here thwarts this interest and signals to patent owners that they can defeat
`
`IPR by asserting a single independent claim and a single dependent claim in a fast-
`
`moving parallel proceeding.
`
`The harms to the public directly impact Petitioner. “[P]etitioner is master of
`
`its complaint and normally entitled to judgment on all of the claims it raises.” SAS
`
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Exercising discretion here
`
`reverses the roles of the parties, allowing Patent Owner to limit Petitioner’s
`
`complaint to only two of the eleven claims of the ’107 Patent.
`
`8
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`The Board’s goal in exercising its discretion under § 314 is to “balance[e]
`
`efficiency, fairness, and patent quality.” Decision at 5 (citing Fintiv, IPR2020-
`
`00019, Paper 11 at 5-6). By denying institution of petitions based solely on parallel
`
`district court litigation, the Board is incentivizing Patent Owner gamesmanship and
`
`undermining the Board’s commitment to considering efficiency, fairness, and the
`
`merits in evaluating whether to exercise discretionary denial. Fintiv, IPR2020-
`
`00019, Paper 11 at 6. It is manifestly unfair and inefficient to deny institution of a
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`meritorious Petition because a narrow subset of the challenged claims are asserted
`
`in the parallel proceeding. Denying institution in this context allows bad patents to
`
`persist and incentivizes patent owners to engage in gamesmanship.
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`IV. CONCLUSION
`Petitioner respectfully requests that the Board grant Rehearing and institute
`
`Inter Partes Review of the ’107 Patent. Doing so will further public interests by
`
`improving patent quality and will be an efficient use of the Board’s time and resources
`
`in light of the lack of overlap between the instant Petition and the related litigation.
`
`
`Dated: March 19, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
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`9
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`IPR2020-01633
`Petitioner’s Request for Rehearing
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Request for
`
`Rehearing and Exhibits 1021-1024 were served on Patent Owner’s lead and back-up
`
`counsel in its entirety by electronic service at the email addresses provided below:
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`FENWICK & WEST LLP
`
`
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
`
`Date: March 19, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
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`10
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