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`Paper No. 46
`Mailed May 10, 2019
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`Trials@uspto.gov
`571-272-7822
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`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.
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
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`PGR2018-00008
`Patent 9,597,594 B2
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`INTRODUCTION
`I.
`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
`claims 1–20 of U.S. Patent No. 9,597,594 B2 (Ex. 1001, “the ’594 patent”).
`Paper 1 (“Pet.”). On May 1, 2018, the Board instituted trial for claims 1–20
`of the ’594 patent with respect to all grounds set forth in the Petition.
`Paper 15 (“Institution Dec.”). During trial, Patent Owner filed a Patent
`Owner Response (Paper 24), Petitioner filed a Reply (Paper 27, “Pet.
`Reply”), and, with Board authorization (Paper 30), Patent Owner filed a Sur-
`Reply (Paper 34).
`On January 2, 2019, the Board issued a Final Written Decision
`holding that claims 1, 8, and 10–12 are unpatentable as being directed to
`patent ineligible subject matter, and further holding that claims 2–7 and 9
`had not been shown to be unpatentable. Paper 42, 49, 58 (“Final Dec.”).
`On February 1, 2019, Petitioner filed a Request for Reconsideration of
`the Decision. Paper 43 (“Req.” or “Request”). On March 5, 2019,
`Petitioner filed a Notice of Appeal. Paper 44. On March 6, 2019, Petitioner
`informed the Board that it wished to withdraw the Notice of Appeal and
`continue with the Request. On March 13, 2019, the Federal Circuit issued,
`as a mandate, an Order indicating that Petitioner’s appeal of the Board’s
`Final Written Decision was dismissed. Ex. 3005. On April 17, 2019, the
`Board entered an Order deeming Petitioner’s Notice of Appeal as being
`withdrawn, and further indicating that the Request will be considered by the
`Board in due course. Paper 45.
`We have considered Petitioner’s Request. For the reasons that follow,
`the Request is denied.
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`Patent 9,597,594 B2
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`II. ANALYSIS
`A request for rehearing must identify specifically all matters the
`requesting party believes the Board misapprehended or overlooked.
`37 C.F.R. § 42.71(d).
`The sole issue on which Petitioner requests rehearing in the Final
`Written Decision is with respect to the Board’s determination that dependent
`claims 2 and 3 were not shown to be unpatentable. See Req. 1–11.
`Petitioner contends dependent claims 2 and 3 are directed to patent ineligible
`subject matter. Id. Generally, Petitioner contends the Board overlooked that
`(1) dependent claims 2 and 3 differ in scope from dependent claim 9, and
`that (2) dependent claims 2 and 3 only add a multi-player environment,
`which was accounted for in the claimed concept. Req. 2, 5, 8.
`In support of its argument, Petitioner points to disparate statements,
`located under different headings in the Petition, discussing the multi-player
`environment. Req. 2, 8 (citing Pet. 6, 33–34). In addition, Petitioner refers
`to other statements, in the Petition under yet another heading, in asserting
`that the Board misapprehended or overlooked that a multi-player
`environment was accounted for in its assertions concerning “creating and
`applying a template of positions of one or more game contents.” Req. 5
`(citing Pet. 22–23).
`As an initial matter, we note that it is not the Board’s role to cobble
`together bits from the Petition, combining disparate statements found
`throughout the record, in this case under three completely different headings,
`in order to piece together Petitioner’s argument. See DeSilva v. DiLeonardi,
`181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments
`accessible to the judges, rather than ask them to play archeologist with the
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`Patent 9,597,594 B2
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`record.”). Notwithstanding, we address the substance of Petitioner’s
`Request.
`First, Petitioner contends that the Board overlooked that dependent
`claims 2 and 3 differ in scope from dependent claim 9 (Req. 2) and therefore
`erred in applying the same analysis to all of those claims (Req. 9). We
`disagree.
`The Final Written Decision explains that Petitioner’s analysis and
`evidence as to dependent claim 9 was insufficient. Final Dec. 43. The
`Board determined that Petitioner’s analysis and evidence for dependent
`claims 2 and 3, which was essentially limited to a sentence on page 33 of the
`Petition, was similarly insufficient. 1 Id. Accordingly, as Petitioner’s
`analysis and evidence for all of those claims were insufficient, applying the
`similar analyses was correct.
`Second, we consider Petitioner’s contention that the Board overlooked
`that dependent claims 2 and 3 only add a multi-player environment, and that
`the addition of a multi-player environment was properly accounted for in the
`claimed concept.
`In the Final Written Decision, we determined that independent claim 1
`is directed to the concept of “creating and applying a template of positions of
`one or more game contents.” Final Dec. 37. We further determined that
`dependent claims 2 and 3 recite “additional details” beyond that concept. Id.
`at 43. Indeed, we agreed with Petitioner’s summary of those additional
`details. Id. Specifically, the Petition summarizes claims 2 and 3 as follows:
`
`
`1 In its Reply, Petitioner does not address any dependent claim with any
`specificity. See generally Pet. Reply.
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`Dependent claim 2 and its dependent claim 3 describe the method
`of claim 1, but add that the method is conducted in a multi-player
`environment wherein a second player can also create and apply
`templates within the game space.
`Pet. 33 (emphasis added). In other words, according to the Petition itself,
`dependent claims 2 and 3 contain the additional details of “in a multi-player
`environment.” We are unclear how the Board was supposed to ascertain that
`the Petition intended to account for “in a multi-player environment” within
`the claimed concept, when the Petition itself, by the use of the word “add,”
`labels “in a multi-player environment” as additional details.
`Even assuming that the Board did overlook or misapprehend that the
`Petition articulated that “in a multi-player environment” was subsumed
`within “creating and applying a template of positions of one or more game
`contents,” we note that the aforementioned portion of the Petition also
`identifies, as additional details, “wherein a second player can also create and
`apply templates within the game space.” Neither the Petition nor the
`Request explains why these additional details should be considered a part of
`the claimed concept.
`Furthermore, delving into the merits of those latter additional details,
`we were, and continue to be, unpersuaded that a second player, that can both
`“create” and “apply” a template, is accounted for adequately in the Petition.
`Specifically, even if we were to agree the Petition accounts for a second
`player “applying” a template “in a multi-player environment” (see Req. 5,
`citing Pet. 6), the Petition makes no mention of the second player being able
`to also create the template. As discussed in the Final Written Decision,
`Petitioner did not provide sufficient evidence or analysis that a second player
`able to also create and apply templates is included in the claimed concept of
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`“creating and applying a template of positions of one or more game
`contents.” Final Dec. 43. We could not have overlooked or misapprehended
`something not presented adequately in the Petition.
`More specifically, per the analysis set forth in the Final Written
`Decision, 2 the concept of dependent claim 2 becomes “creating and applying
`a template of positions of one or more game contents in a multi-player
`environment, wherein a second player can also create and apply a template
`of positions of one or more game contents.” Petitioner argues that
`correspondence chess is “a multiplayer game in which the concept of
`creating and applying templates has been done for centuries.” Req. 5 (citing
`Pet. 22–23). However, that argument does not sufficiently account for the
`above-identified portions of dependent claims 2 and 3, i.e., that the second
`player can both create and apply a template. Contrary to the Petition’s
`strained characterization of correspondence chess, i.e., in which a player
`creates a template and the same player also applies it by sending it to
`another player, we found that correspondence chess entails a first player
`creating a template and a different, second player applying the template.
`Institution Dec. 8; Final Dec. 14 (citing Pet. 22). As such, we fail to see how
`correspondence chess, where a first player creates a template and a second
`player plays or applies it, accounts for a concept in which a second player
`can both create and apply a template.
`In conclusion, we have reviewed and considered the Request and
`determine that Petitioner has not carried its burden of demonstrating that the
`Board misapprehended or overlooked any matters in rendering the Final
`
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`2 The Final Written Decision specifically addresses claim 9 but states that
`“[t]he same analysis is applicable” to claims 2 and 3. Final Dec. 43.
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`Written Decision. Rather, Petitioner uses the Request as an opportunity
`bolster its arguments, which were not properly presented in the Petition, and
`to argue positions with which we disagreed in our Final Written Decision.
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`III. CONCLUSION
`Petitioner’s Request for Rehearing is denied.
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`PGR2018-00008
`Patent 9,597,594 B2
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`For PETITIONER:
`Jennifer Bush
`Michael Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`For PATENT OWNER:
`John Alemanni
`Andrew Rinehart
`Scott Kolassa
`Steven Moore
` KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`skolassa@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
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