PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`GEOFFREY R. MILLER
`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.
`
`
`Post Grant Review No. PGR2018-00029
`Patent 9,636,583 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`
`
`TABLE OF CONTENTS
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`Page
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`B. 
`
`2. 
`
`TABLE OF EXHIBITS ........................................................................................... vi
`I. 
`CLAIMS 1-15 OF THE ’583 PATENT ARE INVALID UNDER
`SECTION 101 ................................................................................................ 1 
`A. 
`Alice Step 1: The ’583 Patent is Directed to the Abstract
`Idea of “Displaying a Video Game Based on Stored Panel
`Information” ......................................................................................... 1 
`1.  The Claims Recite Result-Oriented Functions Without
`Non-Abstract Means of Achieving Them. ................................... 1 
`2.  The ’583 Patent Does Not Recite a Specific, Structured
`User Interface ............................................................................... 4 
`3.  The ’583 Patent Provides No Improvement in Computer
`Functionality ................................................................................ 7 
`4.  The ’583 Patent Recites an Abstract “Way of Managing a
`Game and Playing a Game” ......................................................... 9 
`Alice Step 2: The Claims Contain No Inventive Concept .................. 10 
`1.  The Claims are Performed on a Generic Computer
`Using Routine Computer Functions. .......................................... 10 
`“Panels” are “well understood, routine, and
`conventional” ............................................................................. 13 
`3.  The Independent Claims Do Not Recite a Means
`to Achieve “High Visual Effect” ............................................... 14 
`The Dependent Claims 2-13 Are Directed to the Same
`Abstract Idea and Provide No Inventive Concept .............................. 15 
`Expert Testimony Is Not Required to Invalidate a Patent
`Under 35 U.S.C. § 101 ....................................................................... 19 
`Claim 1 Is Representative .................................................................. 22 
`
`C. 
`
`D. 
`
`E. 
`
`i
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`

`

`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Response
`
`II. 
`
`CLAIMS 1-15 OF THE ’583 PATENT ARE INVALID UNDER
`35 U.S.C. § 112(A) ....................................................................................... 23 
`A. 
`The Specification Fails to Provide Adequate Written
`Description for the “Allowed” Limitation. ........................................ 23 
`III.  CLAIMS 1-15 OF THE ’583 PATENT ARE INVALID UNDER
`35 U.S.C. § 112(B) AS INDEFINITE .......................................................... 25 
`IV.  CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATION ............................................................................................... 27 
`
`
`
`
`
`
`ii
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) .......................................................... 4, 13, 16, 17
`Alice Corp. v. CLS Bank Int’l,
`134 S.Ct. 2347 (2014) ..................................................................................passim
`Ancora Techs., Inc. v. HTC Am., Inc.,
`908 F.3d 1343 (Fed. Cir. 2018) ............................................................................ 7
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) ...................................................................passim
`Bilski v. Kappos,
`561 U.S. 593 (2010) ...................................................................................... 17, 18
`Data Engine Techs. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018) ...................................................................... 4, 5, 6
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ........................................................................ 7, 8
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`849 F.3d 1034 (Fed. Cir. 2017) .......................................................................... 20
`In re Marco Guldenaar Holding B.V.,
`911 F.3d 1157 (Fed. Cir. 2018) ........................................................ 10, 17, 18, 20
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) .......................................................................... 25
`In re Smith,
`815 F.3d 816 (Fed. Cir. 2016) ............................................................ 9, 10, 18, 20
`In re TLI Commc’ns. LLC Pat. Litig.,
`823 F.3d 607 (Fed. Cir. 2016) ............................................................................ 20
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016) .................................................................... 19, 21
`
`iii
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`

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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Response
`
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .......................................................................... 19
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S.Ct. 1289 (2012) ......................................................................................... 19
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016) ............................................................................ 1
`Mortg. Grader v. First Choice Loan Services,
`811 F.3d 1314 (Fed. Cir. 2016) .......................................................................... 11
`Planet Bingo LLC v. VKGS LLC,
`576 Fed. App’x. 1005 (Fed. Cir. 2014) .......................................................... 9, 10
`RecogniCorp, LLC v. Nintendo Co., Ltd.,
`855 F.3d 1322 (Fed. Cir. 2017) .............................................................. 16, 17, 18
`Reiffin v. Microsoft Corp.,
`214 F.3d 1342 (Fed. Cir. 2000) .......................................................................... 24
`Smartflash LLC v. Apple Inc.,
`2017 WL 786431 (Fed. Cir. Mar. 1, 2017) ......................................................... 11
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 20
`Supercell Oy v. GREE, Inc.,
`PGR2018-00047, Paper No. 21 .......................................................................... 23
`Trading Techs. Int’l, Inc. v. CQG, INC.,
`675 F. App’x 1001 (Fed. Cir. 2017) ................................................................. 4, 7
`Tranxition, Inc. v. Lenovo (U.S.) Inc.,
`664 Fed. App’x 968 (Fed. Cir 2016) .................................................................. 16
`Two-Way Media Ltd. v. Comcast Cable Commc’n., LLC,
`874 F.3d 1329 (Fed. Cir. 2017) ........................................................................ 1, 4
`Vasudevan Software, Inc. v. MicroStrategy, Inc.,
`782 F.3d 671 (Fed. Cir. 2015) ............................................................................ 24
`STATUTES AND RULES
`35 U.S.C. § 101 ............................................................................................ 19, 20, 21
`35 U.S.C. § 112(A) ............................................................................................ 22, 23
`
`iv
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`

`

`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Response
`
`35 U.S.C. § 112(B) ................................................................................................... 25
`OTHER AUTHORITIES
`84 Fed Reg. 57, 58 (Jan. 2019) ................................................................................ 24
`
`
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`v
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`EXHIBIT LIST (37 CFR § 42.63(E))
`
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`U.S. Patent No. 9,636,583 to Atobe
`
`Prosecution History of U.S. Patent No. 9,636,583
`
`USPTO Memorandum on Recent Subject Matter Eligibility
`Decisions, dated May 19, 2016
`
`USPTO Memorandum on Recent Subject Matter Eligibility
`Decisions, dated November 2, 2016
`
`Prosecution History of U.S. Patent 9,457,273
`
`Prosecution History of U.S. Patent Application Serial No.
`15/686,268
`
`Declaration of Michael J. Sacksteder
`
`Declaration of Geoffrey R. Miller
`
`Deposition Transcript of David Crane, Volume I
`
`Deposition Transcript of David Crane, Volume II
`
`
`
`
`
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`vi
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`I.
`CLAIMS 1-15 OF THE ’583 PATENT ARE INVALID UNDER
`SECTION 101
`The Board’s Institution Decision correctly concluded that claims 1-15 of
`
`U.S. Patent No. 9,636,583 (the “’583 patent) are directed to the abstract idea of
`
`“displaying a video game based on stored panel information.” Decision (Paper
`
`No. 21), pp. 7-12. The Board found no additional inventive elements in the claims
`
`beyond the abstract idea. Decision, 12-18. In response, Patent Owner (“PO”)
`
`provides no evidence to justify a different conclusion. Accordingly, Petitioner
`
`requests that the Board find claims 1-15 of the ’583 patent unpatentable.
`
`A. Alice Step 1: The ’583 Patent is Directed to the Abstract Idea of
`“Displaying a Video Game Based on Stored Panel Information”
`1.
`The Claims Recite Result-Oriented Functions Without Non-
`Abstract Means of Achieving Them
`At Alice step one, the Board determines whether the claims are directed to
`
`an abstract idea. Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014). This
`
`entails determining whether the claims focus on a specific means or method to
`
`achieve a result, or are instead directed to a result or effect that itself is the abstract
`
`idea. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
`
`Cir. 2016). Under this analysis, “[c]laims directed to generalized steps to be
`
`performed on a computer using conventional computer activity are not patent
`
`eligible.” Two-Way Media Ltd. v. Comcast Cable Commc’n., LLC, 874 F.3d 1329,
`
`1337 (Fed. Cir. 2017).
`
`1
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`The ’583 patent fails this inquiry. It recites only generalized steps performed
`
`on generic hardware. The patent purports to provide a user of a battle video game
`
`with “a high visual effect” by displaying a game based on information in panels.
`
`Ex. 1001, 1:48-51. But instead of reciting a specific means or method to achieve
`
`this result, representative claim 1 recites a series of result-oriented functions –
`
`storing, selecting, and disposing of panels, and displaying a game screen –
`
`performed on generic hardware.
`
`Representative claim 1 recites: (1) a “data storage function,” for “storing”
`
`two panel databases and “points set for the first user;” (2) a “panel selection
`
`function” for “selecting one or more panels” according to the points set to be
`
`disposed on the game screen; (3) a “panel layout function” for “disposing the
`
`panels selected . . . in the divisions;” and (4) a “screen display control function” for
`
`“displaying the game display on a screen display unit.” Ex. 1001, 9:11-40
`
`(claim 1).
`
`Discussing Figure 2, the specification explains that the “information
`
`processing apparatus” that controls the method can be any generic computer
`
`device, such as a “server apparatus or a user terminal such as a mobile phone or a
`
`smart phone.” Ex. 1001, 6:9-13. The patent is agnostic as to how the functions are
`
`implemented. The components are black boxes – devoid of any details for how to
`
`implement the functional steps:
`
`2
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Ex. 1001, Fig. 2.
`
`The patent describes data storage unit 210 and control unit 220, which
`
`perform the functions recited in claim 1, solely by function. The data storage unit
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`“stores a first panel database . . . and a second panel database.” Id. at 5:42-45. The
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`control unit contains black-box components, defined solely by function: the “panel
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`selection section” 222 that “selects panels to be disposed in the frames of the battle
`
`display region”; the “panel layout section” that “disposes the panels selected by the
`
`panel selection section in the frames”; and the “screen display control section” 221
`
`that “displays a game display screen” Ex. 1001, 5:36-57.
`
`
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`PO’s expert David Crane agrees that the ’583 patent recites a series of result-
`
`oriented functions without describing or reciting a means to achieve them. In
`
`deposition, Mr. Crane repeatedly admitted that he is “not aware of any place in the
`
`specification where a specific technological implementation of [the Figure 2]
`
`functions is described.” Ex. 1010, 218:21-24; see also generally, id. 216:4-219:10.
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`3
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`Thus, the ’583 patent recites a series of generalized steps without any specific
`
`means or technology for achieving those functional results. The Federal Circuit
`
`routinely finds such claims “untethered to any specific or concrete way of
`
`implementing” the claimed concept, impermissibly abstract. Affinity Labs of Tex.,
`
`LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258-60 (Fed. Cir. 2016).
`
`
`
`PO incorrectly attempts to distinguish the ’583 patent from Affinity Labs and
`
`Two-Way Media with the assertion that the claims are directed to “both the
`
`mechanics and progression of the battle game itself and the graphical user-
`
`interface improvements to the display of such a game.” POR p. 19. But this
`
`argument relies on unsound analogies.
`
`2.
`
`The ’583 Patent Does Not Recite a Specific, Structured User
`Interface
`PO wrongly attempts to characterize the ’583 patent as solving a problem in
`
`the field of graphical user interfaces (GUIs) by comparing it to Trading Techs.
`
`Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1004 (Fed. Cir. 2017) and Data
`
`Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 (Fed. Cir. 2018). See
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`POR, p. 21. This comparison fails because the claims of the patents in Trading
`
`Technologies and Data Engine each recited a specific, structured GUI to overcome
`
`a technical problem in the prior art, whereas the ’583 patent recites only
`
`generalized functions without reference to any specific GUI structure. See Trading
`
`Techs., 675 F. App’x at 1004; Data Engine, 906 F.3d at 1010-11.
`
`4
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`The Trading Technologies patents related to electronically trading financial
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`products on a specific GUI. Id. at 1002. The patents identified a specific problem
`
`with interfaces in prior systems that would cause traders to execute incorrect trade
`
`commands when prices moved. Id. The patents purported to solve this problem by
`
`providing a specific GUI in which “bid” and “ask” prices for a commodity were
`
`dynamically displayed in regions of the GUI corresponding to a “static price axis.”
`
`Id. The user could set fixed parameters for a trade, in terms of price and quantity
`
`along the static price access. Id. This specifically recited arrangement, combined
`
`with specific functionality, ensured that trade would only be executed at the
`
`desired price. Id. The Federal Circuit found such claims not abstract because
`
`“[t]he claims require a specific, structured graphical user interface paired with
`
`a prescribed functionality directly related to the graphical user interface's
`
`structure that is addressed to and resolves a specifically identified problem in the
`
`prior state of the art.” Id. at 1004 (emphasis added).
`
`Here, the challenged claims recite no such specific, structured interface
`
`paired with a set functionality. Although the ’583 patent purports to address user
`
`boredom in virtual card games by providing a game with “high visual effect,” the
`
`claims fail to recite any specific, structured interface to address that problem.
`
`Ex. 1001, 1:34-44. Instead, the patent recites well-known UI elements paired with
`
`result-oriented functions. The only UI elements in claim 1 are: (1) “one or more
`
`5
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`

`

`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`panels to be disposed in one or more divisions of a game display screen including a
`
`display region formed by the divisions” and (2) “the divisions include a division
`
`where a panel selected from the first panel database is allowed to be disposed and a
`
`division where a panel selected from the second panel database is allowed to be
`
`disposed.” Ex. 1001, 9:21-40. The claims do not require display elements to be
`
`arranged in any specific manner, nor do the claims tie them to any particular
`
`function for “high visual effect.” See id. Further, the result-oriented functions –
`
`storing, selecting, and disposing of panels and displaying a game screen – are
`
`unrelated to the purported improvement over prior art. Indeed, as PO’s expert
`
`admits – and the Board has acknowledged – the purported “visual improvements,”
`
`such as displaying a movie, text, or associating sound with a panel, are not recited
`
`in the independent claims. Ex. 1009, 131:2-17, 133:25-134:19; Ex. 1010, 183:4-
`
`184:11 (referring to Ex. 2001, ¶22-30).
`
`Data Engine also provides a useful contrast to the challenged claims. In
`
`Data Engine, the claims recited “a specific structure (i.e., notebook tabs) within a
`
`particular spreadsheet display that performs a specific function (i.e., navigating
`
`within a three-dimensional spreadsheet).” Data Engine, 906 F.3d at 1010-11. The
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`Federal Circuit determined that the notebook tab interface, paired with the specific
`
`three-dimensional navigation functionality, provided a specific technological
`
`solution to “a known technological problem in computers.” Id. at 1009.
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`6
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`Conversely, the ’583 patent lacks any specific user interface structure. The
`
`“panels” and “divisions” are not tied to any specific arrangement or user interface.
`
`Nor are they tied to any specific functionality. Rather, the panels and divisions are
`
`broadly paired with result-oriented functions, with no description of how to
`
`achieve the desired results.
`
`3.
`
`The ’583 Patent Provides No Improvement in Computer
`Functionality
`The ’583 patent also fails to disclose an improvement in computer
`
`functionality. See Trading Techs., 675 F. App’x 1001, 1005. PO – with no claim
`
`analysis – asserts without support that the ’583 patent improves computer function
`
`by analogizing the challenged claims to those found not abstract in Ancora Techs.,
`
`Inc. v. HTC Am., Inc., 908 F.3d 1343, 1344 (Fed. Cir. 2018) and DDR Holdings,
`
`LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). But the patents in
`
`those cases provide a useful contrast to the ’583 patent.
`
`In Ancora the claims were directed to “a concrete assignment of specified
`
`functions among a computer’s components to improve computer security.”
`
`Ancora, 908 F.3d at 1344. The patent was not abstract because it relied on a
`
`specific “verification technique” that departed from earlier approaches to solve a
`
`computer security problem. Id. at 1349.
`
`Similarly, in DDR found the patent survived because it recited a specific
`
`way to automate the creation of a composite web page, and therefore “provided a
`
`7
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`solution necessarily rooted in computer technology in order to overcome a problem
`
`specifically arising in computer networks.” DDR, 773 F.3d at 1257, 1259. The
`
`Federal Circuit stressed that the claims were inventive in how they “specify how
`
`interactions with the Internet are manipulated to yield a desired result—a result
`
`that overrides the routine and conventional sequence of events ordinarily triggered
`
`by the click of a hyperlink.” Id. at 1258. In other words, the claims specified a
`
`new technique to improve the hyperlink tool.
`
`In contrast, the challenged claims of the ’583 patent recite no new specific
`
`technical techniques to improve the prior art. The generalized functions – storing,
`
`selecting, and disposing panels, and displaying a game screen – were each well-
`
`known, routine, and conventional functions for standard computer hardware. See
`
`Ex. 1001, 1:34-44 (referencing admitted prior art Ex. 2003). Further, the claims
`
`recite no new techniques for providing visual effects. PO’s expert concedes that
`
`each claimed effect, displaying frames in different colors, displaying text in panels,
`
`and displaying images, appeared in the prior art. Ex. 1009, 125:14-126:25, 132:18-
`
`133:7; Ex. 1010, 252:2-24, 255:4-7. Nor does the ’583 patent address a
`
`technological problem. Rather, as PO admits, it purports to address “boredom” – a
`
`mental or business problem, rather than “a problem specifically arising in
`
`computer networks.” See POR p. 3, 20, 31, 32, 38, 39, 56, 57.
`
`8
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`4.
`The ’583 Patent Recites an Abstract “Way of Managing a
`Game and Playing a Game”
`The Federal Circuit has been clear: “methods of managing a game” are
`
`patent-ineligible abstract concepts. See, e.g. Planet Bingo LLC v. VKGS LLC,
`
`576 Fed. App’x. 1005, 1007-08 (Fed. Cir. 2014). The ’583 patent fails for this
`
`reason. Beyond result-oriented functions, it recites only “game mechanics” or
`
`rules of “gameplay” such as “decreasing points set for the first user by disposing a
`
`panel” and limiting “the steps by which a panel is selected according to points set
`
`for the user [and] is allowed to be disposed in the game display region.” See POR,
`
`pp. 18-19, 24, 26, 27 (arguing the patent is not abstract because the claims recite
`
`“mechanics and progression of the battle game itself”); Ex. 2002, ¶¶22-28
`
`(describing conventional game mechanics, such as “capability properties” for
`
`character cards and disposing cards into a “battle display region”). But these game
`
`rules make no improvement in computer functionality or graphical user interfaces.
`
`Instead, as PO’s expert concedes, they are merely “rules” of a game and “a way of
`
`managing the game and playing the game.” Ex. 1009, 89:8-90:15
`
`In re Smith, 815 F.3d 816 (Fed. Cir. 2016) is instructive. There, the Federal
`
`Circuit concluded that the claimed “method of conducting a wagering game” using
`
`a deck of playing cards embodied an abstract idea, similar to the “method of
`
`managing a game” of bingo in Planet Bingo. Like Smith and Planet Bingo, the
`
`’583 patent broadly recites rules governing a game, such as storing a “points set”
`
`9
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`which is “decreased by disposing a panel” and “divisions where a panel selected
`
`from the first panel database is allowed to be disposed” These provide no technical
`
`advance, but are merely “a way of managing the game and playing the game.”
`
`In In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) the
`
`Federal Circuit affirmed its holdings in Smith and Planet Bingo. It found that a
`
`patent claiming a method of playing a dice game was abstract. By analogy to
`
`Smith and Planet Bingo, the Court determined that the claimed method amounted
`
`to no more than “rules for playing a game,” which is abstract in that it amounted to
`
`a method of organizing human activity. Id. at 1160.
`
`B. Alice Step 2: The Claims Contain No Inventive Concept
`The second step of Alice determines whether any additional elements
`
`beyond the abstract idea transform the claim into a patent-eligible application of
`
`the abstract idea. Alice, 134 S. Ct. at 2355. This second step requires an
`
`“inventive concept”—an element or combination that makes the claim
`
`“significantly more” than the abstract idea itself. Id.
`
`1.
`
`The Claims are Performed on a Generic Computer Using
`Routine Computer Functions
`The claims confirm that the purported invention operates on wholly generic
`
`computer equipment. They recite only generic computer equipment or
`
`functionally-named components operating within the hardware: “server apparatus,”
`
`“user terminal,” “data storage unit,” “control unit,” “display screen,” and “screen
`
`10
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`

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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`display unit.” Ex. 1001, 10:49-67. These fundamental computer tools are non-
`
`inventive for purposes of step two of Alice. See, e.g., Mortg. Grader v. First
`
`Choice Loan Services, 811 F.3d 1314, 1324 (Fed. Cir. 2016).
`
`The claims’ result-oriented functions are also entirely well-understood,
`
`routine, and conventional, as explained by the specification, admitted prior art, and
`
`Federal Circuit precedent. The “data storage function” “panel selection function”
`
`and “panel layout function” are well-understood, routine, and conventional data
`
`storage, selection, and retrieval functions, which the Federal Circuit has repeatedly
`
`found insufficient to supply an inventive concept. See, e.g., Smartflash LLC v.
`
`Apple Inc., 2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017). As noted above the
`
`specification contains no disclosure of how to achieve these result-oriented
`
`functions. Ex. 1010, 219:8-9.
`
`Further, the admitted prior art discloses a function in which a computer
`
`terminal stores card-based character information, and those cards, which contain
`
`text describing the character and its “powers,” are disposed into divisions of a grid
`
`for a battle game. See Ex. 1010, 201:14-20, 203:12-16 (referring to Ex. 2003, FIG.
`
`3 & ¶[0061]-[0062]). Figures 2 and 3 from the admitted prior art are reproduced
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`below. PO’s expert admitted Figure 2 is an example character card showing the
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`character name and its associated properties, such as “attack power” 22, and Figure
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`3 shows the character cards arranged in a grid for the battle event:
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
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`Ex. 2003, Figs. 2 & 3; Ex. 1010, 251:18-255:19.
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`
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`PO wrongly argues that the “data storage function” and “panel databases”
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`recited in the challenged claims are not well-understood, routine, and conventional.
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`POR, p. 37 (citing Ex. 2001, ¶30). But PO’s only support for this argument is the
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`unsubstantiated statement in it expert declaration that the recited “panel database”
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`is different from “a generic database in that it includes ‘panels’ which are
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`thoroughly described in the specification.” Ex. 2001, ¶30. In other words, PO
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`argues that the claimed databases are somehow unique only because of the type of
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`information stored.
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`
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`But PO’s expert admits that panel databases store information related to
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`panels, and that storing such information is entirely conventional. Ex. 1009,
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`135:9-137:22. He concedes that it was conventional for databases were able to
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`store “panel” information such as “elements of video game characters,” “sizes of
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`elements,” “integers,” “a floating point,” “coordinate values,” and “dimensions of
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`geometric shapes.” before the ’583 patent. Ex. 1009, 138:13-142:19. Accordingly,
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`the ’583 patent recites nothing more than generic computer hardware performing
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`routine tasks, which is insufficient to confer an “inventive concept.” Affinity Labs
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`838 F.3d at 1262.
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`2.
`“Panels” are “well understood, routine, and conventional”
`Panels are well understood, routine, and conventional elements of video
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`games. First, the ’583 patent discloses that panels are equivalent to prior art cards.
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`The Background describes a prior art card game played on a control apparatus,
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`where each player owns cards. Ex. 1001, 1:34-45. The specification purports to
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`improve upon this card game by configuring “panels” to have “high visual effect.”
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`Id. 1:48-67. The specification later treats panels and cards interchangeably: “In
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`addition, when three or more specific panels are disposed within one game display
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`screen, it is also possible to generate a combo exhibiting the effect beyond the
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`effects of these cards.” Ex. 1001, 9:2-5; see also, id. 7:15-18.
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`Based on this language, PO’s expert conceded that “panels” and “cards” can
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`be used synonymously:
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`Q: Would you agree that the sentence I just read -- that
`uses the terms “panels” and “cards” synonymously?
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`MR. CRANE: I believe that the term “these cards” is
`referring to the three or more specific panels described
`above in that sentence.
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`Q: All right. So cards can be panels, at least in some
`circumstances; is that right?
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`Mr. CRANE: Yes.
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`Ex. 1010, 249:9-21 (objections omitted).
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`Accordingly, the claimed panels correspond to prior art “cards,” which,
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`according to the specification of the ’583 patent were well understood, routine, and
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`conventional. See Ex. 1001, 1:34-44.
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`3.
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`The Independent Claims Do Not Recite a Means to Achieve
`“High Visual Effect”
`Under Federal Circuit precedent “improvements in the specification, to the
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`extent they are captured in the claims,” may create a factual dispute regarding
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`whether the invention describes “well-understood, routine, and conventional
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`activities.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). Here,
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`the patent purports to provide “high visual effect” within a card-based battle game
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`to improve over “boring” prior art card games. But none of the independent claims
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`provides means for achieving the described “high visual effect,” as the Board
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`correctly concluded. Decision, p. 10 n.2.
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`PO’s expert relied on plain meaning to assert that “high visual effect” is “a
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`visual effect, and high would be better than average.” Ex. 1010, 175:19-176:3.
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`He says such effects in the ’583 patent include differently colored frames,
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`animation, zoom, displaying text, and sound effects. Ex. 1009, 125:14-126-25;
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`130:5-11, 132:14-17, 134:6-9; Ex. 1010, 175:19-176:3. But effects are not recited
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`in any independent claim. See Ex. 1001, Claims 1, 14, 15; Ex. 1009, 131:2-17,
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`133:25-134:19; Ex. 1010, 183:4-184:11.
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`PO also argues that certain game mechanics provide for high visual effect,
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`including configuring panel sizes to correspond to capability and executing panels
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`in a predetermined order. POR, p. 8. Again, none of these mechanics is recited in
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`the independent claims, as admitted by PO’s expert. See Ex. 1001, Claims 1, 14,
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`15; Ex. 1009, 35:5-10; Ex. 1010, 188:23-189:14.
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`Thus, the independent claims fail to “capture” the purported improvement
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`described in the specification, and no factual question can exist as to whether they
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`recite an inventive concept. See Berkheimer, 881 F.3d at 1369.
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`C. The Dependent Claims 2-13 Are Directed to the Same Abstract
`Idea and Provide No Inventive Concept
`The challenged dependent claims, each of which ultimately depends from
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`
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`claim 1, are directed to the same abstract concept as claim 1, and none recites a
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`concrete solution that transforms the basic abstract idea into a patent-eligible
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`invention. Instead, they append conventional game concepts or vary how panels
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`PGR-2018-00029
`Petitioner’s Reply to Patent Owner’s Response
`are arranged or displayed, without providing a concrete mechanism for achieving
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`the desired result.
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`Claim 2 limits claim 1 by requiring the disposed panels to be executed in a
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`“predetermined order.” Claim 3, which depends from claim 2, further requires the
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`predetermined order to be determined by the “arrangement, shapes, and/or sizes of
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`the panels.” Ex. 1001, 9:41-47. These claims simply recite an obvious choice for
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`automatically disposing cards or panels and are abstract and non-inventive. As
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`PO’s expert admits, the claims recite no mechanism for achieving the automated
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`disposal of the claims or “determining” the arrangement shape, or size of the panel.
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`See Ex. 1010, 209:8-210:6; Tranxition, Inc. v. Lenovo (U.S.) Inc., 664 Fed. App’x
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`968, 971 (Fed. Cir 2016) (automating manual processes are abstract); Affinity Lab