UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`The Honorable Rodney Gilstrap
`
`
`Civil Action No. 2:19-cv-00311-JRG
`
`
`JURY TRIAL DEMANDED
`
`
`§§§§§§§§§§
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`GREE, INC.,
`
`
`v.
`
`
`SUPERCELL OY,
`
`
`
`
`
`
`
`DEFENDANT SUPERCELL OY’S INVALIDITY CONTENTIONS
`AND DISCLOSURES UNDER LOCAL PATENT RULES 3-3 AND 3-4
`
`Pursuant to Patent Rules 3-3 and 3-4, the Court’s Docket Control Order (Dkt. No. 31), and
`
`the Court’s Discovery Order (Dkt. No. 30), Defendant Supercell Oy (“Supercell” or “Defendant”)
`
`serve these Preliminary Invalidity Contentions (“Invalidity Contentions”) addressing how claims
`
`1 – 11 of U.S. Patent No. 9,079,107 (“the ’107 Patent”) and claims 1 – 7 of U.S. Patent No.
`
`9,561,439 (“the ’439 Patent”) (collectively referred to as the “Asserted Patents”) are invalid.
`
`Supercell’s discovery and investigation in this lawsuit are ongoing, and therefore,
`
`Supercell reserves the right to revise, amend, and/or supplement these Preliminary Invalidity
`
`Contentions as discovery progresses and as it discovers additional information.
`
`I.
`
`RESERVATIONS AND OBJECTIONS
`A.
`
`General Reservations
`
`Pursuant to P.R. 3-6, Supercell reserves the right to amend or supplement these Preliminary
`
`Invalidity Contentions should GREE: (1) amend its P.R. 3-1 or 3-2 disclosures, including but not
`
`limited to amending such disclosures based on GREE’s review and analysis of source code made
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 1 of 20
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`available by Supercell; or (2) at trial, in a hearing, or during a deposition, rely upon any
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`information that it failed to identify in its P.R. 3-1 and 3-2 disclosures. Supercell also reserves the
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`right to amend or supplement these Preliminary Invalidity Contentions in accordance with
`
`Paragraph 3(a) of the Court’s Discovery Order. Supercell provides the disclosures below, as well
`
`as the accompanying production of documents, in compliance with P.R. 3-3 and 3-4.
`
`The information provided should not be deemed an admission regarding the scope of any
`
`claims or the proper construction of those claims or any terms contained therein. Supercell’s
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`claim construction disclosures will be provided under P.R. 4 as required by the Court’s Docket
`
`Control Order. Nothing contained in these Preliminary Invalidity Contentions should be
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`understood or deemed to be an express or implied admission or contention with respect to the
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`proper construction of any terms in an asserted claim, or with respect to the alleged infringement
`
`of that claim.
`
`Nothing in these disclosures should be treated as an admission that Supercell is obligated
`
`to produce documentation not under its custody or control, or that can be obtained from some
`
`other source that is more convenient, less burdensome and/or less expensive, or for which the
`
`burden or expense outweighs its likely benefit. Supercell expressly reserves the right to revise,
`
`amend, and/or supplement its disclosures and document production should additional
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`documentation become available.
`
`B.
`
`GREE’s Deficient Infringement Contentions
`
`Supercell notes that GREE’s Infringement Contentions and related disclosures are
`
`deficient in that they fail to comply with P.R. 3-1 and 3-2 because they fail to give adequate
`
`notice regarding the details of GREE’s infringement theories. The lack of detail and deficiencies
`
`contained in GREE’s Infringement Contentions have prejudiced Supercell’s ability to prepare
`
`2
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 2 of 20
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`these Preliminary Invalidity Contentions, including forcing Supercell to speculate as to GREE’s
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`actual position(s) on Supercell’s alleged infringement and the meaning of various claim terms.
`
`The exhibit attached to the cover pleading purporting to disclose GREE’s infringement
`
`positions also fails to put Supercell on adequate notice of GREE’s positions regarding the alleged
`
`infringement of the Asserted Claims and/or Asserted Patents by Supercell’s products and/or
`
`services. The exhibit is comprised of vague conclusions that fail to identify “specifically where
`
`each element of each asserted claim is found within each Accused Instrumentality” as required
`
`by P.R. 3-1(c).
`
`Supercell’s Invalidity Contentions are based on its present understanding of the Asserted
`
`Claims and GREE’s apparent positions as to the scope of the Asserted Claims as applied in its
`
`P.R. 3-1 disclosures. Supercell’s Invalidity Contentions (including the attached invalidity claim
`
`charts) reflect, to the extent possible, its best understanding as to GREE’s potential alternative or
`
`evolving positions on claim construction and scope. Supercell reserves the right to revise, amend,
`
`and/or supplement these Preliminary Invalidity Contentions and/or its P.R. 3-4 disclosures should
`
`GREE amend its P.R. 3-1 disclosures, including but not limited to amending such disclosures
`
`based on GREE’s review and analysis of source code made available by Supercell, or attempt to
`
`rely on any information that it failed to provide in its P.R. 3-1 and 3-2 disclosures.
`
`C.
`
`Asserted Claims
`
`GREE purports to assert the following claims against Supercell from the Asserted Patents:
`
`claims 1 – 11 of the ’107 Patent and claims 1 – 7 of the ’439 Patent. These Preliminary Invalidity
`
`Contentions address only the Asserted Claims. Supercell reserves the right to supplement these
`
`contentions if GREE asserts infringement of any claim other than the Asserted Claims.
`
`GREE, however, has failed to comply with its obligation to provide a chart identifying
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`specifically where each element of each asserted claim is found within each Accused
`
`3
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 3 of 20
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`Instrumentality under P.L.R. 3-1(c). Where GREE has failed to provide such a chart and
`
`identification, Supercell has deferred providing invalidity disclosures. Should GREE seek to
`
`amend its infringement contentions to properly assert these claims, Supercell reserves the right to
`
`amend its invalidity contentions in response. These preliminary infringement contentions, thus,
`
`address only the Asserted Claims, which have been asserted in compliance with the Patent Local
`
`Rules. Supercell reserves the right to supplement these contentions if GREE asserts
`
`infringement of any claim other than the Asserted Claims.
`
`D.
`
`Ongoing Discovery
`
`Discovery is ongoing, and Supercell’s prior art investigation and third-party discovery are
`
`as well. As such, Supercell reserves the right to revise, amend, and/or supplement the
`
`information provided herein, including identifying, charting, and relying on additional material
`
`or references. Supercell further reserves the right to amend, modify, or supplement these
`
`Invalidity Contentions to include additional prior art under 35 U.S.C. §§ 102 and/or 103, or
`
`assert additional bases of invalidity under 35 U.S.C. §§ 101, 102, 103 and/or 112, as discovery in
`
`this action and Supercell’s investigation proceeds. In particular, Supercell intends to rely upon
`
`additional discovery, including but not limited to third party discovery, which is in its early
`
`stages, to obtain additional information regarding prior art games, including the relevant version
`
`of the prior art games, declarations and source code.
`
`E.
`
`Claim Construction
`
`Without conceding any express or implied claim construction suggested by GREE
`
`through its Infringement Contentions, Supercell has attempted to apply the prior art to the
`
`Asserted Claims. GREE’s application of those constructions are in some instances broader than
`
`Supercell’s contentions regarding the proper scope of the claims. Should the claims be construed
`
`or asserted differently than Supercell’s current understanding of the claims, Supercell reserves
`
`4
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 4 of 20
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`the right to modify, amend, or supplement these Preliminary Invalidity Contentions as provided
`
`by the Local Rules and the Federal Rules of Civil Procedure.
`
`Supercell’s Preliminary Invalidity Contentions should not be construed as a suggestion or
`
`admission that GREE’s apparent claim constructions are correct. Indeed, in many instances,
`
`Supercell objects to and disagrees with the apparent claim constructions GREE has offered in
`
`GREE’s Infringement Contentions as such constructions (1) are unsupported or contradicted by
`
`the intrinsic and extrinsic record relating to the Asserted Patents and applications related thereto,
`
`(2) would impermissibly read out one or more limitations of the Asserted Claims, or (3) are
`
`otherwise inconsistent with the understanding of a person of ordinary skill in the art. Supercell’s
`
`Preliminary Invalidity Contentions should not be construed to suggest that any claim term or
`
`phrase complies with 35 U.S.C. § 112. Finally, Supercell’s Preliminary Invalidity Contentions
`
`should not be construed as a suggestion or admission of infringement because Supercell
`
`specifically denies that it infringes any Asserted Claim.
`
`Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions to reflect positions taken by the parties during the claim construction process.
`
`Further, Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions in the event the Court adopts claim constructions different than those anticipated by
`
`Supercell. Supercell expressly reserves and does not waive its right to contest any claim
`
`constructions, or to take positions during claim construction proceedings or in connection with
`
`alleged infringement, that are inconsistent with, or even contradictory to, the positions set forth
`
`in these Invalidity Contentions.
`
`5
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 5 of 20
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`F.
`
`Cited References and Prosecution File History as Sources of Additional Prior
`Art
`
`Supercell also intends to rely upon prior art cited during the prosecution of the Asserted
`
`Patents, as well as the prosecution of related patents/applications, as invalidating references or to
`
`show the state of the art. Supercell incorporates by reference each and every admission, including
`
`the patent applicant’s admissions concerning the scope of the prior art, and each and every prior
`
`art reference of record, which may be found in the file history of the Asserted Patents or related
`
`applications/patents, and each and every argument and rejection, on whatever grounds, by the
`
`examiners during the prosecution of the Asserted Patents. The subject matter of these admissions
`
`and prior art references is set forth in the Asserted Patents and the related applications/patents and
`
`the associated prosecution files, and their relevance and ability to be combined with other prior art
`
`set forth herein to render the Asserted Patents obvious will be apparent.
`
`G.
`
`Contextual Evidence
`
`Supercell’s Preliminary Invalidity Contentions cite to exemplary portions of the cited
`
`prior art references. The citations to exemplary portions of the prior art references should not be
`
`construed to mean that other portions of the prior art references are not relevant to the invalidity
`
`of the Asserted Claims. To the contrary, the citations are intended to put GREE on notice of the
`
`bases for Supercell’s contentions, but are not intended as a complete recitation of all support for
`
`those contentions. Supercell reserves the right to rely on the entirety of any, or any part of, the
`
`prior art references, whether charted or not charted, as a basis for asserting invalidity of the
`
`Asserted Claims.
`
`Furthermore, persons having ordinary skill in the art would view an item of prior art in
`
`the context of their experience and training, other publications, literature, products and general
`
`understanding. As such, the cited portions are exemplary, and Supercell may rely on uncited
`
`6
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 6 of 20
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`portions of the prior art references, and other documents, such as statements in the cited
`
`references of the specifications, the prosecution history, and related applications/patents of the
`
`Asserted Patents, and fact and expert testimony and documents not yet discovered, to provide
`
`background, context, or to otherwise aid in understanding the cited portions of the prior art
`
`references. Citations to a figure in a reference should be understood to encompass the caption
`
`and description of the figure and any text relating to the figure. Likewise, citations to text
`
`referring to a figure should be understood to include the corresponding figure as well. Prior art
`
`not included in these disclosures, whether known or not known to Supercell, may become
`
`relevant, and Supercell reserves the right to supplement its Preliminary Invalidity Contentions to
`
`identify and rely upon this prior art.
`
`Additionally, the suggested obviousness combinations in Supercell’s Preliminary
`
`Invalidity Contentions are provided in the alternative and should not be construed to suggest that
`
`any reference included in the combinations is not by itself anticipatory. Supercell is currently
`
`unaware of the extent, if any, to which GREE will contend that Supercell’s anticipatory
`
`references do not disclose limitations of the Asserted Claims. To the extent that GREE contends
`
`that any of Supercell’s anticipatory references are missing one or more limitation of the Asserted
`
`Claims, Supercell reserves the right to counter such assertions by further reference to Supercell’s
`
`anticipatory references and/or to identify other references, combinations of references, and/or
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`knowledge of a person of ordinary skill in the art that disclose the limitation(s) allegedly missing
`
`in the anticipatory reference(s) to render the Asserted Claims invalid.
`
`H.
`
`Rebuttal Evidence
`
`Additional prior art, whether known or not known to Supercell as of the date of these
`
`contentions, may become relevant depending on GREE’s arguments regarding the scope of the
`
`disclosure of the prior art identified herein. In particular, Supercell is currently unaware of the
`
`7
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 7 of 20
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`extent, if any, to which GREE will contend that limitations of the Asserted Claims are not
`
`disclosed in the prior art identified by GREE. To the extent such an issue arises, Supercell
`
`reserves the right to identify other references that would anticipate or render obvious the
`
`allegedly missing limitation(s).
`
`II.
`
`P.R. 3-3 INVALIDITY CONTENTIONS
`A.
`
`P.R. 3-3(a) Disclosures
`
`The concepts disclosed and claimed in the Asserted Claims are not new, and had been
`
`disclosed and actively practiced by others prior to the claimed invention date. The prior art
`
`includes various documents, products, patents and inventions that separately and together render
`
`the Asserted Claims invalid. In addition, as described in more detail below, claims of the
`
`Asserted Claims are invalid under 35 U.S.C. §§ 101 and 112.
`
`Supercell asserts that the prior art listed in Exhibits A and B and in the Tables below,
`
`individually or in combination, invalidates the Asserted Claims. These prior art references
`
`disclose each and every limitation of one or more of the Asserted Claims either explicitly,
`
`inherently, or via an obvious combination and may also be relied upon to show the state of the
`
`art in the relevant timeframes. The following patents and publications are prior art under at least
`
`35 U.S.C. §§ 102(a), (b), (e), or (g).
`
`TABLE 1: Prior Art Patent, Patent Applications, and Publications
`Anticipating the Asserted Claims
`
`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`US Pub. No. 2013/0005473
`A1
`
`US Pub. No. 2011/0300926
`A1
`
`United States
`
`Jan. 3, 2013
`
`Bethke
`
`United States
`
`Dec. 8, 2011
`
`Englman
`
`8
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 8 of 20
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`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`US Pub No. 2012/0157212
`A1
`
`US Pub. No. 2006/0003824
`A1
`
`US Pub. No. 2014/0024462
`A1
`
`US Pub. No. 2013/0190094
`A1
`
`
`
`United States
`
`June 21, 2012
`
`Kane
`
`United States
`
`Jan. 5, 2006
`
`Kobayashi
`
`United States
`
`Jan. 23, 2014
`
`United States
`
`July 25, 2013
`
`Qiang
`
`Ronen
`
`TABLE 2: Non-Patent Prior Art Including Publications and Items
`Used, Known of, and/or Offered for Sale that Anticipate
`the Asserted Claims1
`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for Sale,
`Sold, Publicly Used or Made Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`Forsaken World*
`
`Guild Wars 2*
`
`Warhammer Online Age of Reckoning*
`
`World of Warcraft Game Manual 2004*
`
`World of Warcraft Cataclysm Game
`Manual 2010*
`
`March 23, 2011
`
`Forsaken World
`
`2012
`
`2008
`
`2004
`
`2010
`
`Guild Wars 2
`
`Warhammer Online
`
`WoW Manual
`
`WoW Cataclysm
`Manual2
`
`
`1 Supercell intends to rely upon prior art related to video games for the Asserted Patents. Such
`video game prior art references have been identified in Tables 1-2 with an asterisk (*). In the
`corresponding charts in Exhibits A and B, Supercell has provided visual representations of the
`relevant features and functionalities using publicly available prior art videos, manuals, webpages,
`or other material. Supercell will rely upon third party discovery, which is in its early stages, to
`obtain the relevant version of the prior art games for use at trial. Supercell reserves the right to
`assert prior art related to games as a prior art system, as printed publications, or both.
`2 WoW Manual and WoW Cataclysm Manual will collectively be referred to as “WoW.”
`
`9
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 9 of 20
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`B.
`
`P.R. 3-3(b)
`1.
`Anticipatory Prior Art
`
`The attached claim charts in Exhibits A and B demonstrate where each limitation of the
`
`anticipated claims is found in certain of the references listed below, either expressly or inherently
`
`in the larger context of the passage, or inherently as the reference as a whole is understood by a
`
`person having ordinary skill in the art.
`
`2.
`
`Obvious Combinations
`
`The Asserted Claims are invalid as obvious under 35 U.S.C. § 103. Each Anticipatory
`
`Reference, either alone or in combination with the other identified prior art, and/or in combination
`
`with the knowledge of one skilled in the art, renders the Asserted Claims invalid as obvious. In
`
`particular, each anticipatory prior art reference may be combined with (1) information known to
`
`persons skilled in the art at the time of the alleged invention, (2) any of the other anticipatory
`
`prior art references, and/or (3) any of the additional prior art identified below in these Invalidity
`
`Contentions. The accompanying claim charts and tables below provide exemplary obviousness
`
`combinations under 35 U.S.C. § 103. The disclosed combinations are not meant to be exhaustive.
`
`Supercell is not aware of how Plaintiff may attempt to distinguish the prior art cited herein, and
`
`reserves the right to identify other references that would have supplied the allegedly missing
`
`element to render the Asserted Claims obvious. Accordingly, to the extent that Plaintiff contends
`
`that any of the Anticipatory References fails to disclose one or more limitations of the asserted
`
`claims, Supercell reserves the right to identify other prior art references that, when combined with
`
`the anticipatory prior art, would render the claims obvious despite the allegedly missing
`
`limitation.
`
`In addition, Supercell incorporates by reference each and every prior art reference of
`
`record in the prosecution of the Asserted Patents and related applications (including applications
`
`10
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 10 of 20
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`referenced in or incorporated by reference in the Asserted Patents), including the statements
`
`made therein by the applicant and the examiner, the prior art discussed in the specification, and
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`any other statements found in the intrinsic record.
`
`Supercell identifies the specific combinations that render the Asserted Claims obvious in
`
`the claim charts attached in Exhibits A and B. Where each element is disclosed in each prior art
`
`reference is shown in attached claim charts in Exhibits A and B. Further, Supercell identifies the
`
`following exemplary combinations that render the Asserted Claims obvious:
`
`TABLE 3: Exemplary Obviousness Combinations for the ’107 Patent
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-11
`
`WoW
`
`1-11
`
`1-11
`
`Warhammer Online
`
`Guild Wars 2
`
`1-11
`
`Englman
`
`1-11
`
`Ronen
`
`1-11
`
`Qiang
`
`1-11
`
`Bethke
`
`Warhammer Online, Guild Wars 2, Englman,
`Ronen, Qiang, Bethke, Kane, Kobayashi,
`Forsaken World
`
`WoW, Guild Wars 2, Englman, Ronen, Qiang,
`Bethke, Kane, Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online,
`Englman, Ronen, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Ronen, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Kane,
`Kobayashi, Forsaken World
`
`11
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`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 11 of 20
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`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-11
`
`Forsaken World
`
`1-11
`
`Kane
`
`1-11
`
`Kobayashi
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke, Kane,
`Kobayashi
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke, Kane,
`Forsaken World
`
`TABLE 4: Exemplary Obviousness Combinations for the ’439 Patent
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-7
`
`1-7
`
`1-7
`
`1-7
`
`1-7
`
`1-7
`
`1-7
`
`WoW
`
`Warhammer Online
`
`Guild Wars 2
`
`Englman
`
`Ronen
`
`Qiang
`
`Bethke
`
`Warhammer Online, Guild Wars 2, Englman,
`Ronen, Qiang, Bethke, Kane, Kobayashi,
`Forsaken World
`
`World of Warcraft, Guild Wars 2, Englman,
`Ronen, Qiang, Bethke, Kane, Kobayashi,
`Forsaken World
`
`World of Warcraft, Warhammer Online,
`Englman, Ronen, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Ronen, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Qiang, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Bethke, Kane,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Kane,
`Kobayashi, Forsaken World
`
`12
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 12 of 20
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`
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`1-7
`
`1-7
`
`1-7
`
`Kane
`
`Kobayashi
`
`Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke,
`Kobayashi, Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke, Kane,
`Forsaken World
`
`World of Warcraft, Warhammer Online, Guild
`Wars 2, Englman, Ronen, Qiang, Bethke, Kane,
`Kobayashi
`
`3.
`
`Motivations to Combine
`
`A person of skill in the art would have been motivated to combine each of the above
`
`referenced combinations of prior art as provided in the claim charts attached in Exhibits A and B,
`
`and as further provided in Table 3 and Table 4. As the United States Supreme Court held in
`
`KSR International Co. v. Teleflex Inc., “[t]he combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable results.”
`
`550 U.S. 398, 416 (2007).3 The Supreme Court further held that, “[w]hen a work is available in
`
`one field of endeavor, design incentives and other market forces can prompt variations of it,
`
`either in the same field or a different one. If a person of ordinary skill can implement a
`
`predictable variation, §103 likely bars its patentability. For the same reason, if a technique has
`
`been used to improve one device, and a person of ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill. . . .” Id. at 417. Accordingly, a person of skill in the art
`
`
`3 Pursuant to P. R. 3-3, Supercell has included this section discussing motivation to combine. In
`KSR v. Teleflex, however, the Supreme Court rejected the idea that a “teaching, suggestion, or
`motivation to combine” is a prerequisite for obviousness.
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`Patent Owner Gree, Inc.
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`would have been motivated to combine or adapt known or familiar methods in the art, especially
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`where market forces prompt such variations.
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`To a person of ordinary skill in the art, the Asserted Claims represent solutions that
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`would have been obvious to try, with predictable results. As an initial matter, the scope and
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`content of the prior art is extensive. Video game design and development, particularly with a
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`focus on the Internet, burgeoned in the 1990s and early 2000s and the industry followed a
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`trajectory mirroring the rapid explosion and rising popularity of consumer-level Internet usage in
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`both the United States and around the world. Accordingly, the combination or modification of
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`the prior art references disclosed herein would have no unexpected results and at most would
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`simply represent a known alternative to one of skill in the art.
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`The combinations expressly identified below and in the attached charts would have been
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`combined or modified using: known methods to yield predictable results; common sense; known
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`techniques in the same way; a simple substitution of one known, equivalent element for another
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`to obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art
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`generally. In addition, it would have been obvious to try combining or modifying the prior art
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`references identified herein because there were only a finite number of predictable solutions
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`and/or because known work in one field of endeavor prompted variations based on predictable
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`design incentives and/or market forces either in the same field or a different one. In addition, the
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`combinations of the prior art references would have been obvious because the combinations
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`represent known potential options with a reasonable expectation of success.
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`Here, each combination identified in Table 3 and Table 4 would have been obvious
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`considering at least the state of the art, common sense, the knowledge of one of ordinary skill in
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`the art, and motivation and teachings present on the face of the Asserted Patents and disclosed
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`references. For instance, a person of skill in the art would be familiar with executing games both
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`as a game program pre-installed in a terminal device and as an online game that is wirelessly
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`connected to a game server apparatus over a network. A person of skill in the art would further
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`be familiar with platforms used for playing video games, including network-capable platforms,
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`such as personal computers, video game consoles, smartphones, and other mobile devices, and
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`would further be familiar with the conventional wisdom of the industry to maximize game
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`features enabled by such hardware, such as displays, touch screen input, network based
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`multiplayer environments. A person of ordinary skill in the art would also be familiar with, and
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`motivated to combine, games that are related to each other, such as games within the same genre
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`or games created by the same developer or publisher. For instance, a person of skill in the art
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`who is familiar with popular massively multiplayer online role-playing games (MMORPGs)
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`such as World of Warcraft, Guild Wars 2, or Forsaken World or massively multiplayer online
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`games (MMOs) such as Warhammer Online would be familiar with the mechanics, rules, and
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`techniques for creating and maintaining guilds in these games and incentivizing group
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`cooperation through group activities, rewards, and timed or periodic events, as disclosed in such
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`games or in the patent prior art references Englman, Ronen, Bethke, Kane, and Kobayashi.
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`Further, a person of skill in the art who is familiar with the prior art MMORPGs or
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`MMOs would also be familiar with the game mechanics of storing character or user parameters,
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`increasing that parameter as a user plays the game, and varying rewards, unlocking new items, or
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`permitting additional in-game activities based on that character’s parameter level, as disclosed in
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`such games or in the patent prior art references Englman, Ronen, Bethke, Kane, and Kobayashi.
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`Finally, a person of skill in the art who is familiar with the prior art MMORPGs or MMOs,
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`would also be familiar with common game features such as the chat functions in the prior art
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`games, the collection of in game items to obtain a reward, or storing ranking points for a group
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`based on group progress, as disclosed in World of Warcraft, Guild Wars 2, Englman, and Ronen.
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`Moreover, the Supreme Court held that “familiar items may have obvious uses beyond
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`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle.” Id. at 421. Indeed, the Supreme
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`Court held that it is sufficient that a combination of elements was “obvious to try” holding that,
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`“[w]hen there is a design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions, a person of ordinary skill has good reason to pursue
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`the known options within his or her technical grasp.” Id. The combinations shown in each claim
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`chart would have yielded results predictable to one of ordinary skill in the art at the time of the
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`alleged invention, and one of ordinary skill would have been motivated to make such a
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`combination based on the similar nature of the problems they address and solve. For instance, as
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`disclosed in the Asserted Patents there was a need to increase cooperation among users of online
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`games. See, e.g., ’439 patent at 1:53-55. The MMORPG and MMO prior art, such as WoW,
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`Warhammer Online, or Guild Wars 2, and patent prior art such as Englman and Ronen were also
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`provided for cooperation in online games among groups or “guilds.” Thus, there was a
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`motivation within multiplayer online games to provide for such cooperation among groups of
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`players as described in the’439 and ’107 patent. As shown by the various prior art references
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`providing for such cooperation in multiplayer online games, was routine, and the level of
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`predictability in providing for such cooperation with the disclosed mechanics and features, of
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`providing for such game management, is high. Inclusion of this feature is obvious to achieve the
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`goal disclosed in the Asserted Patents and the prior art.
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`While not necessary, a motivation to combine may also be found in the references
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`themselves. One of skill in the art would be motivated to combine a reference that refers to, or
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`otherwise explicitly invites combination with, another reference, either by specific mention of
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`the other reference or a general discussion of the category to which the other reference relates.
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`Many of the references cited herein have such an explicit invitation to combine, which would
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`cause one of skill in the art to combine any such references. Supercell may contend that the
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`above-described motivations to combine apply to other combinations.
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`C.
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`P.R. 3-3(c)
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`Pursuant to P.R. 3-3(c), attached as Exhibit A and B are charts identifying, for the Asserted
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`Patents, each corresponding claim element for certain prior art references identified in Table 1 and
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`Table 2.
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`D.
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`P.R. 3-3(d)
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`Supercell reserves the right to identify claims and claim limitations that do not comply
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`with the requirements of 35 U.S.C. § 112 after the Court construes the