IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`I.
`Patent Owner’s Improper Gamesmanship Is Clear ........................................ 1
`II.
`The Overlap factor favors institution ............................................................. 3
`
`
`
`
`
`
`
`
`i
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple, Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) ........................................ 3
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014) ............................................................................ 3
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`OTHER AUTHORITIES
`37 C.F.R. § 42.11(a) ................................................................................................... 1
`
`
`
`ii
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to 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
`
`iv
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`Exhibit
`
`1025
`
`
`
`Description
`
`Email from Michael Morlock to Fenwick & West, February 22, 2021
`regarding reduction to claims at issue, GREE, Inc. v. Supercell Oy, ED
`Texas Case Nos. 2:19-cv-00200, -00237, -00310, -00311
`
`v
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`I.
`
`PATENT OWNER’S IMPROPER GAMESMANSHIP IS CLEAR
`Patent Owner’s Response (referred to by the Board as a “Reply”) does nothing
`
`to assuage the perception that it misled the Board regarding overlap with the parallel
`
`litigation by dropping claims from the parallel institution after the Board’s
`
`discretionary denial of institution. The Board’s reliance on Patent Owner’s
`
`misleading statements caused it to misapprehend or overlook the true lack of
`
`overlap. Decision at 12. Granting rehearing is therefore the appropriate course of
`
`action. Otherwise, the Board’s commitment to evaluating efficiency, fairness, and
`
`the merits would be thwarted; Patent Owner would benefit from its gamesmanship;
`
`and other Patent Owners would likely use the same tactics in subsequent PTAB
`
`proceedings.
`
`Patent Owner’s primary excuse is it “followed [the] 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.” Patent Owner Response to Request for Rehearing
`
`(“PO Response”) at 2. But if Patent Owner knew in advance it would need to limit
`
`the asserted claims due to “time limits on trials,” it should have informed the Board
`
`of this fact. “Parties and individuals involved in the proceeding have a duty of
`
`candor and good faith to the Office during the course of a proceeding.” 37 C.F.R. §
`
`42.11(a). Here, Patent Owner did not act accordingly. Rather, it created a perception
`
`that all of the issues in the IPR would also be addressed at trial, telling the Board
`
`1
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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.
`
`Even now, Patent Owner is seemingly attempting to mislead the Board on this
`
`issue. The Model Order quoted and relied upon by Patent Owner in its Response
`
`was not entered in the parallel litigation. See PO Response at 5; Ex. 2016. Thus
`
`Patent Owner was not, and is not, bound by the limitations on asserted claims
`
`described therein.
`
`Moreover, the alleged exculpatory evidence provided by Patent Owner in
`
`Exhibit 2017 demonstrates that Patent Owner was being cagey regarding the asserted
`
`claims prior to the institution decision. Ex. 2017 at 2 (Supercell counsel: “I
`
`understand that during the meet and confer yesterday, you represented that GREE
`
`was only willing to agree to a non-final election of claims by February 12, 2021,
`
`and that it intends to further narrow its claims after that date.”) (emphasis in
`
`original). The fact of the matter is that Patent Owner was asserting claims 1 and 4-
`
`6 on February 12. Then, on the first business day after the Board’s institution
`
`decision, Patent Owner announced it was only asserting claims 1 and 6. Ex. 1025.
`
`Patent Owner’s behavior undermines the rationale for discretionary denial.
`
`“The Board recognizes…that it is often reasonable for a petitioner to wait to file its
`
`petition until it learns which claims are being asserted against it in the parallel
`
`2
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`proceeding.” Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11 (P.T.A.B.
`
`March 20, 2020). But Patent Owner would have it such that the Petitioner never
`
`knows which claims are actually being asserted in the parallel proceeding, because
`
`Patent Owners could drop claims with impunity after discretionary denial.
`
`II. THE OVERLAP FACTOR FAVORS INSTITUTION
`Patent Owner’s statement that trial involving only claims 1 and 6 “will resolve
`
`key issues in the Petition” is simply wrong. PO Response at 3. “[T]he similarity of
`
`the claims challenged in the petition to those at issue in the district court” is the core
`
`issue under the overlap factor. Fintiv, IPR2020-00019, Paper 11 at 13. Petitioner
`
`explained how the elected claims asserted in the litigation significantly differ from
`
`the other claims challenged in the IPR. Request for Rehearing at 11-12. Yet Patent
`
`Owner does not even touch on the substance of the claims in its Response. See PO
`
`Response at 2-4.
`
`Patent Owner’s insinuation that Petitioner is not prejudiced by the continued
`
`validity of the non-elected claims is likewise incorrect. Patent Owner tellingly fails
`
`to provide a stipulation or other commitment to never assert the non-elected claims
`
`against Petitioner. As a result, Petitioner remains under threat of continued attack
`
`using the non-elected claims even after the parallel litigation. See Brain Life, LLC v.
`
`Elekta Inc., 746 F.3d 1045, 1059 (Fed. Cir. 2014) (raising the possibility that dropped
`
`claims could be re-asserted against a different version of a previously litigated
`
`3
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`product). In addition, Patent Owner could subsequently assert similar claims from
`
`one or more of the numerous child patents and pending applications in this family.
`
`These harms are not speculative in view of Patent Owner’s demonstrated
`
`litigiousness.
`
`Likewise, the public interest is harmed by Patent Owner’s duplicitous behavior.
`
`Patent Owner could assert any or all of the non-elected claims against a third party not
`
`involved in the parallel litigation. This is in part why the public has a “paramount
`
`interest in seeing that patent monopolies . . . are kept within their legitimate scope.”
`
`Request for Rehearing at 8 (citing Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144
`
`(2016) (internal citation omitted)).
`
`Accordingly, for the factors noted herein, granting Petitioner’s Request for
`
`Rehearing and instituting Inter Partes review would be proper in this matter.
`
`
`Dated: April 14, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
`
`
`
`4
`
`
`
`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
`
`Patent Owner’s Response to Petitioner’s Request for Rehearing and Exhibit 1025
`
`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: April 14, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
