Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 42
`Entered: January 2, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`_______________
`
`Case PGR2018-00008
`Patent 9,597,594 B2
`_______________
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`Tel: 571-272-7822
`
`
`Paper 42
`Entered: January 2, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SUPERCELL OY,
`Petitioner,
`v.
`GREE, INC.,
`Patent Owner.
`_______________
`
`Case PGR2018-00008
`Patent 9,597,594 B2
`_______________
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`PGR2018-00008
`Patent 9,597,594 B2
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`
`I.
`
`INTRODUCTION
`Background
`A.
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant
`review of claims 1–20 of U.S. Patent No. 9,597,594 B2 (“the ’594 patent”)
`(Ex. 1001) pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE Inc. (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 7. With
`authorization from the Board (Paper 11), Petitioner filed a Reply to Patent
`Owner’s Preliminary Response (Paper 12) and Patent Owner filed a Sur-
`Reply (Paper 13).
`On May 1, 2018, we ordered that “a post-grant review is hereby
`instituted for claims 1–20 of the ’594 patent with respect to all grounds set
`forth in the Petition.” Paper 15, 16 (“Dec.”). After institution of trial, Patent
`Owner filed a Patent Owner Response (Paper 24, “PO Resp.”), Petitioner
`filed a Reply (Paper 27, “Pet. Reply”), and, with Board authorization
`(Paper 30), Patent Owner filed a Sur-Reply (Paper 34, “PO Sur-Reply”).
`Patent Owner also filed a Motion to Exclude Evidence (Paper 35;
`“PO Mot.”), to which Petitioner filed an Opposition to Patent Owner’s
`Motion to Exclude Evidence (Paper 39; “Pet. Opp.”), and Patent Owner filed
`a Reply to Opposition to Motion to Exclude (Paper 40; “PO Reply”). An
`oral hearing was held on November 28, 2018. Paper 41 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine
`that Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1, 8, and 10–20 of the ’594 patent are unpatentable.
`We determine further that Petitioner has not met its burden of showing, by a
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`preponderance of the evidence, that claims 2–7 and 9 of the ’594 patent are
`unpatentable. We further grant Patent Owner’s Motion to Exclude.
`
`Related Proceedings
`B.
`Petitioner identifies the following matter: GREE, Inc. v. Supercell
`K.K., Case 2017 (Yo) No. 22046 in Tokyo District Court, associated with
`related patent JP 5,676,032, which relates to PCT/JP2014/07673. Pet. 2;
`Ex. 1001, (63) (the ’594 patent also claiming priority to
`PCT/JP2014/07673).
`
`The ’594 patent
`C.
`The ’594 patent relates generally to a method of improving the
`usability of computer games, where a user builds and defends a virtual city,
`by using templates to allow the user to more easily change game elements
`within a game space. Ex. 1001, 1:42–60, 2:5–11. More specifically, the
`’594 patent describes such a game where a user creates a city by arranging
`various game elements, where those various game elements may include
`facilities, characters, soldiers, weapons, cards, figures, avatars, and items.
`Ex. 1001, 4:26–29; 4:38–40. The user’s city may then be attacked by
`opposing players, and the layout and design of the user’s city becomes a
`factor in whether the user is able to defend successfully the city. Ex. 1001,
`1:44–49. According to the ’594 patent, as a player progresses in a game and
`expands their city within the game space, it becomes more complicated for a
`player to keep track of an ever-increasing number of game elements, for
`example, changes to the positions, types, and levels of those game elements.
`Ex. 1001, 1:50–55. To address this problem, the ’594 patent describes a
`game play method where a user may modify the game space using templates
`that can be applied to a predetermined area. Ex. 1001, 1:61–2:10. Hence, a
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`user is able to automatically rearrange a group of game elements to match a
`predesigned template. Ex. 1001, 4:34–37.
`
`Illustrative Claim
`D.
`Claims 1–20 are pending and challenged, of which claims 1, 10, 11,
`and 12 are independent. Independent claim 12, which is representative, is
`reproduced below:
`12. A device in communication with a server, comprising:
`a memory device storing game software instructions; and
`one or more hardware processors configured to execute
`the game software instructions perform operations including:
`storing first positions of game contents;
`creating a template defining game contents and second
`positions of one or more of the game contents arranged in a game
`space based on a template creation command by a game player,
`storing the created template in the memory device, and
`applying the template to a predetermined area within the
`game space based on a template application command by the
`game player.
`
`The Alleged Ground of Unpatentability
`E.
`The Petition asserts that claims 1–20 of the ’594 patent are
`unpatentable as being directed to patent ineligible subject matter. Pet. 16–
`38.
`
`Eligibility of Patent for Post-Grant Review
`F.
`The post-grant review provisions of the Leahy-Smith America Invents
`Act (“AIA”)1 only apply to patents subject to the first inventor to file
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`file provisions apply to any application for patent, and to any patent issuing
`thereon, that contains or contained at any time a claim to a claimed invention
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`Petitioner asserts that the instant Petition was filed within nine months
`of the March 21, 2017, issue date of the ’594 patent. Pet. 2. Further, the
`application that issued as the ’594 patent was filed on December 30, 2015.
`Ex. 1001, (22). Patent Owner does not dispute that the ’594 patent is
`eligible for post-grant review. See generally PO Resp. We find that the
`’594 patent is eligible for post-grant review.
`
`II. ANALYSIS OF GROUND OF UNPATENTABILITY
`We now turn to Petitioner’s asserted ground of unpatentability to
`determine whether Petitioner has met its burden of showing, by a
`preponderance of the evidence, that each of claims 1–20 are unpatentable.
`35 U.S.C. § 326(e).
`
`Claim Construction
`A.
`In this post-grant review, a claim in an unexpired patent shall be given
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).2 Under the broadest
`reasonable construction standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not
`receive its ordinary meaning if the patentee acted as his own lexicographer
`and clearly set forth a definition of the disputed claim term in either the
`specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002). We determine that only the following
`claim term, “template,” needs express construction. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”).
`Independent claim 12 recites “a template defining game contents and
`second positions of one or more of the game contents arranged in a game
`space.” Independent claims 1, 10, and 11 each recite similar limitations.
`Petitioner asserts that “[a] template is a record of the positions of one or
`more game pieces in a game that can be applied in other game spaces.”
`Pet. 13 (citing Ex. 1001, 2:2–3). In support, Petitioner cites numerous
`portions of the ’594 patent. Pet. 13–16 (citing Ex. 1001, 6:28–45, 6:50–57,
`7:4–15, 7:37–48, 8:18–24, 11:29–33, 16:25–35, 17:42–56, 18:52–19:9, Figs.
`3A–3E).
`
`2 For petitions filed on or after November 13, 2018, the Phillips standard
`will be applied. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt.
`42).
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`While not squarely rooted in a claim construction, Patent Owner
`repeatedly makes a variation of the following argument: “[t]he claim recites
`that the ‘template’ defines both ‘game contents’ and their ‘second positions,’
`providing limits to the structure and composition of the template.” PO Resp.
`20; see, e.g., PO Resp. 27 (referencing “[t]he use of templates storing game
`contents and positions thereof . . . .”); PO Sur-Reply 9–10 (“[T]he claims
`recite, for example, a template ‘defining game contents and second positions
`of one or more of the game contents.’”).
`We determine that these proposed constructions of “template” are
`misplaced, in that they are largely no more than regurgitations of claim
`language. Put simply, we are unpersuaded that the term “template” itself has
`anything to do with “game contents” and “second positions.” To be sure, the
`claim limitations related to “game contents” and “second positions” further
`limit “template” within the context of the claim, and must be considered.
`They are considered, however, as claim terms themselves, and not as a part
`of a definition of “template.”
`As a part of its construction of “template,” however, Petitioner does
`assert that “[a] template is a record . . . .” Pet. 13 (citing Ex. 1001, 2:2–3);
`see also Pet Reply 9 (“The challenged independent claims recite nothing
`more than automating tasks that can be performed manually by a human,
`including record keeping of the location of one or more game pieces
`(‘creating a template’ and ‘storing’ the template information).”). Although
`not set forth expressly as a claim construction, Patent Owner repeatedly uses
`the term “data structure” in connection with the claimed “template.” See,
`e.g., PO Resp. 33 (referencing “use of data structures implemented as
`templates”), 35 (“[T]he claim use of templates . . . is a data structure.”). At
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`oral argument, Patent Owner confirmed its position that a “template” was a
`“data structure.” Tr. 43:15–44:2. No party has identified any substantive
`difference between “record” and “data structure,” and we do not find any, as
`a record appears to be no more than a structure for storing data.
`In its most relevant definition, Merriam Webster’s Collegiate
`Dictionary defines “template” as “something that establishes or serves as a
`pattern.” Merriam Webster’s Collegiate Dictionary 1286 (11th ed. 2007)
`(Ex. 3004). The Authoritative Dictionary of IEEE Standard Terms defines
`“template matching” as follows: “(A) An image processing technique in
`which patterns or shapes are detected by comparison with pre-specified
`patterns or shapes called templates. See also: image matching. (B) A pattern
`recognition technique using the principle described in definition (A).” The
`Authoritative Dictionary of IEEE Standard Terms 1161 (7th ed., IEEE Press
`2000) (Ex. 3003). The common theme in these dictionary definitions is that
`a “template” includes a “pattern,” which also denotes data set forth in a
`structure, and thus is consistent with the features of both a “record” and
`“data structure.”
`We have considered the parties’ citations to portions of the claims and
`specification of the ’594 patent that use the term “template,” and find that
`they are consistent with “record.” Accordingly, for all of the foregoing
`reasons, we construe a “template” as a “record.”
`B.
`Petitioner’s Lack of Testimonial or Extrinsic Evidence
`Patent Owner asserts that Petitioner’s failure to provide relevant
`testimonial or extrinsic evidence compels a conclusion that Petitioner has
`failed to meet its burden that the challenged claims are unpatentable.
`PO Resp. 12–13. Patent Owner asserts that this is so especially for
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`Petitioner’s assertions that certain claim elements are “well-understood,
`routine, conventional.” PO Sur–Reply 2–4 (citing Ex. 2004 ¶ 34; Exs. 1011,
`1012). Petitioner responds that expert testimony is sometimes unnecessary
`to establish ineligibility under 35 U.S.C. § 101, for example, when there is
`no genuine issue of material fact or when the specification itself provides the
`requisite evidence. Pet. Reply 4–5. As an initial matter, we note that
`Petitioner has provided some extrinsic evidence, for example, Exhibits
`1003–1005, 1011, 1012, and 1015, as well as testimonial evidence in the
`form of the deposition testimony of Mr. Crane. That aside, however, we
`agree with Petitioner’s contention that such extrinsic evidence is not always
`necessary for the reasons stated.
`Even with respect to a disputed factual inquiry as to whether a claim
`element is “well-understood, routine, conventional,” the Federal Circuit has
`repeatedly held that intrinsic evidence can be dispositive. See, e.g.,
`Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed.
`Cir. 2016) (“The written description is particularly useful in determining
`what is well-known or conventional.”); Internet Patents Corp. v. Active
`Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (relying on
`specification’s description of additional elements as “well-known,”
`“common,” and “conventional”); TLI Commc’ns LLC v. AV Auto. LLC, 823
`F.3d 607, 614 (Fed. Cir. 2016) (specification describing additional elements
`as “either performing basic computer functions such as sending and
`receiving data, or performing functions ‘known’ in the art”). The Federal
`Circuit further has used case law, when appropriate, to satisfy the inquiry as
`well. TLI Commc’ns, 823 F.3d at 614 (citing Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208, 216 (2014) and other Federal Circuit cases to satisfy factual
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`inquiry that adding generic computer components to an abstract idea is not
`an inventive concept).
`To be sure, if there is a disputed factual inquiry where the intrinsic
`evidence and case law are silent, Petitioner’s lack of relevant testimonial and
`extrinsic evidence can be fatal, especially where Patent Owner has provided
`pertinent countervailing evidence. We determine here, however, that
`Petitioner has satisfied its evidentiary burden with the evidence and
`testimony of record.
`C. Weight to be Afforded Mr. Crane’s Testimony
`Petitioner asserts that the testimony of Patent Owner’s declarant,
`Mr. Crane, deserves no weight because (1) Mr. Crane does not provide the
`underlying facts or data for some of his findings as required by 37 C.F.R.
`§ 42.65(a); (2) Mr. Crane fails to address the specific language of the claims
`at issue; and (3) Mr. Crane admits that he did not opine on any aspect
`relevant to step two of the Alice inquiry. Pet. Reply 6–8 (citing Ex. 2004
`¶¶ 18, 31; Ex. 1010, 37:17–42:10, 44:7–52:24, 53:2–55:7, 117:11–118:9).
`Patent Owner responds that (1) Petitioner has not identified any particular
`facts or data that are allegedly lacking; (2) the underlying factual basis for all
`of Mr. Crane’s testimony is his “training, knowledge, and experience in the
`relevant art,” which Petitioner has not challenged; (3) Mr. Crane did address
`certain claim limitations; and (4) Mr. Crane is offered as a fact witness, not a
`legal one, and some uncertainty about the legal formulation of steps in the
`Alice inquiry is irrelevant. PO Sur-Reply 4–7 (citing Ex. 2004 ¶¶ 3, 15, 32–
`47; Ex. 1010, 36:21–37:15). We have reviewed all the cited testimony, and
`agree with Patent Owner.
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`More specifically, we disagree with Petitioner that every aspect of a
`declarant’s testimony requires articulated underlying facts or data specific to
`that testimony. We agree with Patent Owner that, in many instances, a
`declarant’s background can be sufficient. To the extent we determine that
`any testimony lacks adequate support, we discount the weight accorded that
`testimony appropriately.
`We also agree with Patent Owner that Mr. Crane is offered as a
`technical expert with respect to specific inquiries for certain claim terms,
`and is not expected to display the same command of legal doctrines as a
`lawyer. We note, however, that Petitioner’s characterization that Mr. Crane
`“failed to address [Alice] step two” is incorrect. Ex. 1010, 47:15–20 (“THE
`WITNESS: As I said, there’s no section of my declaration that specifically
`applies that second standard of the legal standard. But I just pointed out, and
`I’ll reiterate, that there are sections in my declaration that may be used to
`help someone try to answer that question.”).
`D.
`Claims 1–20 as Directed to Patent Ineligible
`Subject Matter Under 35 U.S.C. § 101
`Petitioner contends that claims 1–20 do not recite patent eligible
`subject matter under 35 U.S.C. § 101. Pet. 16–38 (citing Exs. 1001, 1003).
`Patent Owner disagrees. PO Resp. 12–48 (citing Exs. 1001, 1003, 2004,
`2006–2011). Petitioner replies. Pet. Reply 8–24 (citing Exs. 1001, 1009–
`1012, 2004). Patent Owner responds. PO Sur-Reply 8–22 (citing
`Exs. 1001, 2004).
`
`Relevant Law
`1.
`An invention is patent eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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`implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
`ideas” are not patentable. E.g., Alice, 573 U.S. at 216.
`In determining whether a claim falls within an excluded category, we
`are guided by the Supreme Court’s two-step framework, described in Mayo
`and Alice. Id. at 217–218 (citing Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
`we first determine what concept the claim is “directed to.” See Alice, 573
`U.S. at 219 (“On their face, the claims before us are drawn to the concept of
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
`in petitioners’ application explain the basic concept of hedging, or protecting
`against risk.”).
`Concepts determined to be abstract ideas in the § 101 analysis include
`certain methods of organizing human activity, such as fundamental
`economic practices (Alice, 573 U.S. at 219–220; Bilski, 561 U.S. at 611);
`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978); and
`mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
`determined to be patent eligible include physical and chemical processes,
`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
`(1981)), “‘tanning, dyeing, making waterproof cloth, vulcanizing India
`rubber, smelting ores’” (id. at 184 n.7 (citing Corning v. Burden, 56 U.S.
`252, 267–268 (1854)), and manufacturing flour (Benson, 409 U.S. at 69
`(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876)).
`In Diehr, the claim at issue recited a mathematical formula, but the
`Supreme Court held that “[a] claim drawn to subject matter otherwise
`statutory does not become nonstatutory simply because it uses a
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`mathematical formula . . . .” Diehr, 450 U.S. at 176; see also id. at 192
`(“We view respondents’ claims as nothing more than a process for molding
`rubber products and not as an attempt to patent a mathematical formula.”).
`Having said that, the Supreme Court also indicated that a claim “seeking
`patent protection for that formula in the abstract . . . is not accorded the
`protection of our patent laws, . . . and this principle cannot be circumvented
`by attempting to limit the use of the formula to a particular technological
`environment.” Id. (citing Benson, Flook).
`If the claim is “directed to” an abstract idea, we turn to the second
`step of the Alice and Mayo framework, where “we must examine the
`elements of the claim to determine whether it contains an ‘‘inventive
`concept’’ sufficient to ‘transform’ the claimed abstract idea into a patent-
`eligible application.” Alice, 573 U.S. at 221. “[M]erely requir[ing] generic
`computer implementation[] fail[s] to transform that abstract idea into a
`patent-eligible invention.” Id.
`2. Whether the Claims Are “Directed to” an Abstract Idea
`a.
`Petitioner’s Initial Analysis
`Petitioner asserts that the claims are directed to “creating and applying
`a template.” Pet. 20, 21. Petitioner asserts that “creating and applying a
`template” is an abstract idea because it (1) “consists entirely of mental steps
`that can be carried out by a human, either mentally, using pen and paper, or
`with real-world game pieces”; (2) is merely “automating [a] manually-
`achievable purpose[ ]”; and (3) “cannot be considered to be directed to an
`improvement in computer technology because neither the claims nor the
`specification recites any new technology, new process, or improvement to
`existing technologies.” Pet. 16–28.
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`For support, Petitioner provides a reasoned analysis as to why “[t]he
`’594 patent’s claimed concept of creating and applying a template . . .
`consists entirely of mental steps that can be carried out by a human, either
`mentally, using pen and paper, or with real-world game pieces.” Pet. 21–23.
`Petitioner additionally directs us to Planet Bingo, LLC v. VKGS LLC, 576 F.
`App’x 1005, 1005–1007 (Fed. Cir. 2014) (“The . . . patents claim managing
`a bingo game while allowing a player to repeatedly play the same sets of
`numbers in multiple sessions.”). Petitioner asserts that the claims in Planet
`Bingo are sufficiently analogous to the claims of the ’594 patent, in that both
`sets of claims reasonably are characterized as directed to the same general
`concept of repeatedly applying a template to a game space.
`As further evidence, Petitioner analogizes the current claims to a
`game of correspondence chess, as described in A Guide to Correspondence
`Chess in Wales. Pet. 21, 22 (citing Ex. 1003). In correspondence chess, a
`player records the current state of the chess game, indicates the player’s next
`move on a post card, and sends the post card to a second player who will
`modify their game board to reflect the updated state of the chess game. Pet.
`21, 22 (citing Ex. 1003). Petitioner asserts that, in creating the post card, the
`first player creates a template defining game contents, stores the created
`template, and allows a second player to apply the template to a
`predetermined area. Pet. 22. In this way, Petitioner asserts that
`correspondence chess is evidence that the “claimed process is a well-known
`mental process and method of organizing human activity – and is, therefore,
`abstract.” Id. at 23.
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`b.
`
`Patent Owner’s Assertions Concerning
`What the Claims are “Directed to”
`Patent Owner asserts that independent claim 12 is not representative,
`in that the various claims recite unique limitations not recited in independent
`claim 12. PO Resp. 17–19. Patent Owner asserts that even for independent
`claim 12, Petitioner has failed to address all of the claim limitations.
`PO Resp. 19–21. Petitioner responds that independent claim 12 indeed is
`representative, and that Patent Owner has not shown how any of the unique
`limitations identified for the other independent claims indicate that
`independent claim 12 is not representative. Pet. Reply 5–6. We agree with
`Petitioner, in that Patent Owner’s assertions are misplaced.
`Fundamentally, we view Patent Owner’s assertion as comprising two
`sub-assertions. First, Patent Owner appears to be asserting that every claim
`limitation must be accounted for in a subject matter eligibility analysis. We
`agree. That, however, has nothing to do with whether a particular claim is
`representative.
`Second, Patent Owner appears to be asserting that independent claim
`12 is the broadest claim, and by selecting the broadest claim, Petitioner’s
`formulation of the concept independent claim 12 is “directed to” is also
`broad, in that it does not account for every claim limitation in, for example,
`the dependent claims. Identifying the concept to which the claim is
`“directed” merely addresses some claim limitations in connection with the
`first aspect of the Alice inquiry. While every claim limitation certainly must
`be accounted for somewhere in the § 101 analysis, there is no mandate that
`every claim limitation be addressed in connection with identifying the
`concept to which the claim is “directed,” i.e., as part of Alice step 1. Some
`limitations may be addressed in Alice step 2.
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`Framework for Formulating What a Claim is “Directed to”
`i.
`To better illustrate this framework, it is instructive to consider the
`Supreme Court’s approach in Bilski and Alice in formulating the concept that
`a claim is “directed to.” In Bilski, representative independent claim 1 recites
`at least 92 words. The Supreme Court reduced the concept down to between
`one and three words, depending on how you count them, in determining
`what independent claim 1 is “directed to.” Bilski, 561 U.S. at 611 (“Claims
`1 and 4 in petitioners’ application explain the basic concept of hedging, or
`protecting against risk.”). In Alice, the Supreme Court clarified that the
`series of steps, and hence claim limitation equivalents, in Bilski considered
`to be accounted for in the concept of “hedging risk” were as follows
`“(1) initiating a series of financial transactions between providers and
`consumers of a commodity; (2) identifying market participants that have a
`counterrisk for the same commodity; and (3) initiating a series of
`transactions between those market participants and the commodity provider
`to balance the risk position of the first series of consumer transactions.”
`Alice, 573 U.S. at 218–219.
`In Alice, representative independent claim 33 recites 198 words. Id. at
`213 n.2. The Supreme Court reduced the concept down to between two and
`ten words, depending on how you count them. Id. at 219 (“On their face, the
`claims before us are drawn to the concept of intermediated settlement, i.e.,
`the use of a third party to mitigate settlement risk.”). The series of steps, and
`hence claim limitation equivalents, accounted for in Alice by “intermediated
`settlement” appear to be as follows:
`[A] method of exchanging financial obligations between two
`parties using a third-party intermediary to mitigate settlement
`risk. The intermediary creates and updates “shadow” records to
`
`16
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`PGR2018-00008
`Patent 9,597,594 B2
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`
`reflect the value of each party’s actual accounts held at
`“exchange
`institutions,”
`thereby permitting only
`those
`transactions for which the parties have sufficient resources. At
`the end of each day, the intermediary issues irrevocable
`instructions to the exchange institutions to carry out the
`permitted transactions.
`Id. at 219. The Supreme Court further indicated that what was not
`accounted for by “intermediated settlement,” and thus needed to be
`accounted for in step two of Alice, included “a computer,” “a computer
`system,” and “a computer-readable medium containing program code.” Id.
`at 221–224.
`The Federal Circuit recently elaborated that formulating the concept a
`claim is “directed to” requires a careful reading of the claim as a whole in
`light of the specification. Data Engine Techs. LLC v. Google LLC, 906 F.3d
`999, 1011 (Fed Cir. 2018). In doing so, the Federal Circuit indicated that “it
`is not enough to merely identify a patent-ineligible concept underlying the
`claim; we must determine whether that patent-ineligible concept is what the
`claim is ‘directed to.’” Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
`1042, 1050 (Fed. Cir. 2016). The Federal Circuit further has held that, after
`formulating the concept the claims are “directed to,” the inquiry under Alice
`step two is to determine whether claim limitations other than the steps for
`executing the formulated concept are “well-understood, routine, and
`conventional.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
`(Fed. Cir. 2018).
`ii.
`
`Application of “Directed to” Framework to
`Patent Owner’s Assertions
`Beginning with independent claim 12, Patent Owner identifies several
`claim limitations that purportedly are not accounted for by Petitioner.
`
`17
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`PGR2018-00008
`Patent 9,597,594 B2
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`PO Resp. 19–21 (citing Ex. 1001, 28:11–25). We agree with Patent Owner
`that each claim limitation must be accounted for. Under the above
`framework, however, Petitioner only needed to account for each claim
`limitation under either a formulation of the concept a claim is “directed to”
`or under Alice step two. We evaluate Patent Owner’s identified limitations
`in light of that framework.
`Patent Owner first identifies “[a] device in communication with a
`server, comprising: a memory device storing game software instructions;
`and one or more hardware processors configured to execute the game
`software instructions perform operations.” PO Resp. 19. We agree with
`Patent Owner that these are not steps for executing the concept of “creating
`and applying a template.” Petitioner, however, has accounted for these
`limitations under Alice step two as generic computer technology. Pet. 29–
`32.
`
`Patent Owner next identifies the italicized portions of “creating a
`template defining game contents and second positions of one or more of the
`game contents arranged in a game space based on a template creation
`command by a game player” and “applying the template to a predetermined
`area within the game space based on a template application command by the
`game player.” PO Resp. 19–20. Petitioner also has accounted for these
`limitations under Alice step two, asserting that “[t]hese steps cannot provide
`an inventive concept because they describe only the result of a command
`from a user to a computer, but provide no insight into how the claimed
`computer will execute the command.” Pet. 32–33.
`Patent Owner further identifies the entirety of the claim limitation of
`“creating a template defining game contents and second positions of one or
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`PGR2018-00008
`Patent 9,597,594 B2
`
`more of the game contents arranged in a game space based on a template
`creation command by a game player,” and asserts that Petitioner has not
`accounted for “game contents” and “second positions.” PO Resp. 20. The
`portion from “arranged” onward, i.e., “arranged in a game space based on a
`template creation command by a game player,” has already been addressed
`above. For the rest of the claim limitation, however, Patent Owner’s
`assertion has some merit, in that the words “creating and applying a
`template” do not appear to account literally for “game contents” and “second
`positions,” and the Petition does not address these claim limitations in Alice
`step two. See generally Pet. 29–33.
`As a part of its claim construction analysis, however, Petitioner asserts
`that “[a] template is a record of the positions of one or more game pieces in
`a game that can be applied in other game spaces.” Pet. 13–16 (citing
`Ex. 1001, 2:2–3, 6:28–45, 6:50–57, 7:4–15, 7:37–48, 8:18–24, 11:29–33,
`16:25–35, 17:42–56, 18:52–19:9, Figs. 3A–3E). At oral argument, when
`asked what terms should be added to the formulation of the concept the
`claims are “directed to,” Patent Owner identified “move game contents.”
`Tr. 49:18
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