UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00029
`U.S. Patent No. 9,636,583
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00029
`U.S. Patent No. 9,636,583
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction. ..................................................................................................... 1
`I.
`II. The Claims Are Not Directed to an Abstract Idea. .......................................... 1
`A. The Claims are Not Abstract Under the Office’s Revised Guidance. .............. 2
`B. Petitioner’s Own Arguments Demonstrate the Claims are Patent Eligible. ..... 5
`C. The Claims are Analogous to Other Claims Found Not Abstract by the
`Federal Circuit. ....................................................................................................... 7
`1. Ancora Technologies. ..................................................................................... 7
`2. DDR. ............................................................................................................. 10
`3. Trading Technologies. .................................................................................. 12
`D. Petitioner’s Arguments Ignore the Precedent Above and the Evidence of
`Record. .................................................................................................................. 14
`III. Alternatively, the Claims Recite an Inventive Concept. ................................ 17
`A. A New Type of Information Supplies the Inventive Concept. ....................... 17
`B. In re Smith. ...................................................................................................... 19
`C. Petitioner Has Presented No Evidence of What Was Well-Understood,
`Routine, or Conventional. ..................................................................................... 20
`IV. Petitioner Presents No Evidence Regarding § 112. ........................................ 21
`V. Conclusion. ..................................................................................................... 24
`
`
`
`
`i
`
`
`
`
`Exhibit
`No.
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`
`2008
`
`Patent Owner’s Exhibit List
`
`Exhibit Description
`
`April 26, 2018 “Guidance on the impact of SAS on AIA trial proceedings,”
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial
`Declaration of David Crane
`JP2007252696 and Machine Translation of Description
`Biography of Steven D. Moore
`Not used
`Not used
`U.S.P.T.O. 2019 Revised Patent Subject Matter Eligibility Guidance, effective
`January 7, 2019
`Remarks by Director Iancu at the Intellectual Property Owners Association
`46th Annual Meeting, Sept. 24, 2018, available at
`https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-
`intellectual-property-owners-46th-annual-meeting
`
`
`
`ii
`
`
`
`I.
`
`Introduction.
`Petitioner’s Reply presents no new evidence of what it contends was well-
`
`understood, routine, or conventional. Instead, Petitioner presents new arguments
`
`that appeared nowhere in the Petition about why the claims are allegedly abstract
`
`and invalid under § 112. As explained herein, the claims are patentable under
`
`Alice, and Petitioner has failed to meet its burden under § 112.
`
`II. The Claims Are Not Directed to an Abstract Idea.
`The claims are not directed to an abstract idea and the analysis ends at step
`
`one. First, under the Office’s revised §101 guidance, the claims are not directed to
`
`abstract ideas because they do not recite mathematical concepts, methods of
`
`organizing human activity, or mental processes. Second, under this guidance the
`
`claims recite a practical application of Petitioner’s alleged abstract ideas because
`
`the claims as a whole are an improvement to known video-game user interfaces
`
`and game mechanics. Third, the claims are analogous to other claims found
`
`patentable under Alice.
`
`In the Reply, Petitioner belatedly presents a new argument not found
`
`anywhere in the Petition—namely, that the ’583 patent is directed to a “way of
`
`managing a game and playing a game.” Paper 33 (“Reply”), at 9. This argument
`
`should be rejected at least because Petitioner never raised it in the Petition, and this
`
`contradicts Petitioner’s previous assertions that the ’583 patent is directed to
`
`1
`
`
`
`“displaying a video game based on stored panel information.” Paper 1 (“Pet.”), at
`
`21 (emphasis added). Petitioner’s contradictory arguments are an admission that
`
`the claims are directed to more than either of Petitioner’s two alleged abstract ideas
`
`by themselves, and are therefore patentable.
`
`The remaining arguments in the Reply regarding Alice fail to prove the
`
`claims are abstract. Software can make non-abstract improvements to computer
`
`technology just as hardware can. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
`
`1336 (Fed. Cir. 2016). The Federal Circuit has frequently found claims that recite
`
`functional results non-abstract. And as explained below, the claims of the ’583
`
`patent are analogous to those found patentable in other cases.
`
`A. The Claims are Not Abstract Under the Office’s Revised Guidance.
`
`On January 7, 2019, the Office promulgated revised guidance regarding the
`
`analysis under § 101. See Ex. 2007. This guidance was not available to Patent
`
`Owner prior to submission of the Response. See Paper 26. Petitioner did not
`
`address this guidance in its Reply.
`
`Under this revised guidance, three “groupings” of abstract ideas are
`
`identified:
`
` “Mathematical concepts”;
`
` “Certain methods of organizing human activity”; and
`
` “Mental processes.”
`
`2
`
`
`
`Ex. 2007, at 9-11 (footnotes omitted).
`
`“Claims that do not recite matter that falls within these enumerated
`
`groupings of abstract ideas should not be treated as reciting abstract ideas.” Ex.
`
`2007, at 11. The claims are not directed to either mathematical concepts nor
`
`mental processes, and Petitioner has not argued otherwise. The claims are not
`
`directed to methods of organizing human activity, and Petitioner never raised any
`
`argument otherwise in the Petition.
`
`For the first time, however, Petitioner asserts that the claims are directed to a
`
`“way of managing a game and playing a game.” Reply at 9. This is a new
`
`argument, however, and it should be given no weight by the Board. See Ariosa
`
`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015).
`
`Furthermore, even if this argument is considered, the claims are valid.
`
`First, the claims recite elements of an improved video-game graphical user
`
`interface, which are not rules for a game or a way of managing it. For example,
`
`claim 1 recites, among other limitations:
`
` [1a]:1 “…storing a first panel database that includes…”—Petitioner does
`
`not contend that this limitation is a “rule,” nor could Petitioner since this
`
`limitation recites the storage of multiple panels possessed by the users in
`
`their respective databases.
`
`
`1 See Appendix A.
`
`3
`
`
`
` [1b]: “…selecting one or more panels to be disposed…”—again, Petitioner
`
`does not contend this is a rule of gameplay. It is not. The limitation
`
`describes the game display screen, composed of divisions, and the selection
`
`of panels to be placed therein. These elements relate to the improved
`
`video-game graphical user interface (“GUI”).
`
` [1d]: “…displaying the game display screen…”—Petitioner does not
`
`contend that this limitation is a rule or mechanic. This limitation is
`
`expressly a visual element, controlling the display on the screen.
`
`The dependent claims recite visual improvements to the video-game GUI
`
`that have nothing to do with rules or management of a game. Claims 2 and 3 recite
`
`a “division execution function” according to a “predetermined order” in which the
`
`panels may be disposed by the panel layout function that is based on arrangement,
`
`shapes, and/or sizes of the panels. Ex. 1001, at 9:41-47. Even Petitioner admits
`
`these limitations “vary how the panels are arranged or displayed.” Pet. 30. Claim
`
`4 expressly recites an “emphasized display function.” Ex. 1001, at 9:50-52
`
`(emphasis added).
`
`Claim 10 requires that each panel “displays a still image” Ex. 1001, at 10:3-
`
`4. Claims 11, 12, and 13 recite divisions with a “text portion,” a “frame portion,”
`
`or a configuration “changed according to progress of the game,” respectively. Ex.
`
`1001, at 5-19. All of these limitations are visual improvements—not rules or
`
`4
`
`
`
`mechanics. Ex. 2002 ¶ 29. The claims are clearly not directed solely to a “way of
`
`managing a game and playing a game.”
`
`Second, Petitioner previously contended the claims were directed to
`
`“displaying a video game based on stored panel information.” Pet. 21 (emphasis
`
`added). This is the alleged abstract idea upon which review was instituted. Paper
`
`21, at 7. “We must therefore ensure at step one that we articulate what the claims
`
`are directed to with enough specificity to ensure the step one inquiry is
`
`meaningful.” Thales Visionix Inc. United States, 850 F.3d 1343, 1347 (Fed. Cir.
`
`2017) (citing Alice, 134 S.Ct. at 2354). Petitioner has failed to do so. And
`
`Petitioner’s decision to belatedly pivot its characterization of the alleged abstract
`
`idea is nothing more than Petitioner’s recognition that the Petition failed to meet its
`
`burden to show the claims are not patentable.
`
`B. Petitioner’s Own Arguments Demonstrate the Claims are Patent
`Eligible.
`
`Even if Petitioner’s allegations are correct that the claims are directed to
`
`both “displaying a video game based on stored panel information” and a “way of
`
`managing a game and playing a game,” then the claims are eligible under the
`
`Office’s revised guidance and precedent because the claims recite more than either
`
`alleged abstract idea by itself. Under the revised guidance, “Prong Two” of the
`
`analysis asks whether “the recited exception is integrated into a practical
`
`application.” Ex. 2007, at 16. “A claim that integrates a judicial exception into a
`
`5
`
`
`
`practical application will apply, rely on, or use the judicial exception in a manner
`
`that imposes a meaningful limit on the judicial exception, such that the claim is
`
`more than a drafting effort designed to monopolize the judicial exception.” Ex.
`
`2007, at 18. Precedent, meanwhile, is clear that where the claims recite an element
`
`or elements sufficient to ensure the claim amounts to “significantly more” than the
`
`abstract idea itself, the claim is patentable under step two. Alice Corp. Pty. Ltd. v.
`
`CLS Bank Int’l, 573 U.S. 208, 218 (2014).
`
`Mr. Crane confirms that the ’583 patent describes and claims a combination
`
`of inventive gameplay mechanics and visual improvements Ex. 2002 ¶¶ 22-29.
`
`Under the Office’s revised guidance, this is sufficient under “Prong Two” or “Step
`
`2A,” which looks to whether “an element reflects an improvement in the
`
`functioning of a computer, or an improvement to other technology or technical
`
`field,” among other considerations. Ex. 2007, at 19. While Petitioner asserts the
`
`claims are directed to “displaying a video game based on stored panel
`
`information,” the inventive mechanics impose meaningful limits to this alleged
`
`abstract idea by applying it to the novel claimed gameplay. Ex. 2002 ¶¶ 22-28.
`
`And while Petitioner asserts the claims are directed to a “way of managing a game
`
`and playing a game,” the visual limitations meaningfully apply the gameplay
`
`mechanics in a novel GUI. Ex. 2002 ¶ 29. Under Alice, the limitations related to
`
`either alleged abstract idea are “significantly more” than the limitations related to
`
`6
`
`
`
`the other—i.e., the combination of elements is sufficient to amount to more than a
`
`patent upon either alleged idea by itself. Alice, 573 U.S. at 218. The claims
`
`therefore pass muster under step two. Petitioner has failed to cite any case holding
`
`that claims may be allegedly directed to more than one abstract idea and still be
`
`unpatentable under § 101.
`
`C. The Claims are Analogous to Other Claims Found Not Abstract.
`
`Although Petitioner attempts to distinguish the claims of the ’583 patent
`
`from cases such as Ancora Technologies, DDR, and Trading Technologies,
`
`Petitioner presented no comparisons between the claims in those cases and the
`
`challenged claims. Reply at 4-8. When compared, the claims are analogous to
`
`those found patentable.
`
`1. Ancora Technologies.
`
`Below is a table comparing claim 1 of the ’583 patent to the representative
`
`claim in Ancora Technologies v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir.
`
`2018).
`
`U.S. Patent No. 6,411,941, claim 1
`1. A method of restricting software operation within a license for use with a
`computer including an erasable, non-volatile memory area of a BIOS of the
`computer, and a volatile memory area; the method comprising the steps of:
`
`Compare Ex. 1001, claim 1[preamble]. 2
`selecting a program residing in the volatile memory,
`
`
`2 See Appendix A for the full claim language.
`
`7
`
`
`
`Compare Ex. 1001, claim [1b].
`using an agent to set up a verification structure in the erasable, non-volatile
`memory of the BIOS, the verification structure accommodating data that includes
`at least one license record,
`
`Compare Ex. 1001, claim [1e].
`verifying the program using at least the verification structure from the erasable
`non-volatile memory of the BIOS, and
`
`Compare Ex. 1001, claim [1f].
`acting on the program according to the verification.
`
`Compare Ex. 1001, claim [1h].
`
`The Federal Circuit found the claim above was not abstract. Ancora, 908
`
`F.3d at 1348. Here, Petitioner contends that the claims allegedly recite results-
`
`oriented functions and run on a conventional computer. First, however, like the
`
`challenged claims, the claim in Ancora was performable on general purpose
`
`hardware. Id. at 1346. Second, also like the challenged claims, the claim above is
`
`written with active language (“selecting,” “using,” “verifying,” “acting”) and the
`
`Federal Circuit found this was patentable as “a concrete assignment of specified
`
`functions among a computer’s components.” Id. at 1344; see also Ex. 2008, at 6
`
`(“The analysis also does not deny claims as ineligible merely because they are
`
`broad or functionally-stated or result-oriented.”)
`
`
`
`Notably, claim 1 is more limited than the claim at issue in Ancora. The
`
`selection functions both describe selecting something from memory—a panel from
`
`a database, a program from volatile memory. The claims also both recite data
`
`8
`
`
`
`structures in memory—points set for a first user, which are decreased upon panel
`
`disposition; or a “verification structure” that includes a license record. The claims
`
`also both recite actions based on the stored data—either selecting a panel
`
`according to the points set for the first user, or verifying the program according to
`
`the verification structure. And both recite a conditional action—either disposing a
`
`panel in a target division when allowed, or acting on the program according to the
`
`verification. Although the terminology differs, the level of detail the two claims
`
`recite is the same.
`
`In Ancora, the Federal Circuit found the claim “a non-abstract computer-
`
`functionality improvement” in computer security. Id. at 1348. Here, the claims are
`
`a technical advance over the interfaces of prior art card games because of the
`
`combination of GUI improvements and game mechanics that make gameplay more
`
`interesting for the user. Ex. 1001, at 1:31-50; Ex. 2002 ¶¶ 27-29. Making a
`
`computer more secure and making gameplay more technically and visually
`
`interesting are both technical improvements in their respective fields. Ex. 2002 ¶¶
`
`22-29; see McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314
`
`(Fed. Cir. 2016) (finding claims that improved what was an otherwise subjective
`
`process were not abstract).
`
`9
`
`
`
`2. DDR.
`
`Below is a table comparing claim 1 of the ’583 patent to the claim in DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`
`U.S. Patent No. 7,818,399, claim 19
`19. A system useful in an outsource provider serving web pages offering
`commercial opportunities, the system comprising:
`
`Compare Ex. 1001, claim 1[preamble].
`(a) a computer store containing data, for each of a plurality of first web pages,
`defining a plurality of visually perceptible elements, which visually perceptible
`elements correspond to the plurality of first web pages;
`(i) wherein each of the first web pages belongs to one of a plurality of web page
`owners;
`(ii) wherein each of the first web pages displays at least one active link associated
`with a commerce object associated with a buying opportunity of a selected one of a
`plurality of merchants; and
`(iii) wherein the selected merchant, the out-source provider, and the owner of the
`first web page displaying the associated link are each third parties with respect to
`one other;
`
`Compare Ex. 1001, claim 1[a].
`(b) a computer server at the outsource provider, which computer server is coupled
`to the computer store and programmed to:
`(i) receive from the web browser of a computer user a signal indicating activation
`of one of the links displayed by one of the first web pages;
`
`Compare Ex. 1001, claim 1[b].
`(ii) automatically identify as the source page the one of the first web pages on
`which the link has been activated;
`(iii) in response to identification of the source page, automatically retrieve the
`stored data corresponding to the source page; and
`
`Compare Ex. 1001, claim 1[f].
`(iv) using the data retrieved, automatically generate and transmit to the web
`browser a second web page that displays:
`
`Compare Ex. 1001, claim 1[g].
`
`10
`
`
`
`(A) information associated with the commerce object associated with the link that
`has been activated, and (B) the plurality of visually perceptible elements visually
`corresponding to the source page.
`
`Compare Ex. 1001, claim 1[h].
`
`
`
`As the Federal Circuit explained, the claim in DDR “requires that a ‘data
`
`store’ hold ‘visually perceptible elements’ (or ‘ ‘look and feel’ elements’) that
`
`‘visually ... correspond’ to a host web page.” DDR, 773 F.3d at 1250. “Although
`
`the claims address a business challenge (retaining website visitors), it is a
`
`challenge particular to the Internet.” Id. at 1257. This is analogous to the business
`
`problem and solution identified by the ’583 patent: retaining users of video games
`
`by claiming improved video game mechanics and a corresponding GUI compared
`
`to what was previously known. Ex. 1001, at 1:31-50.
`
`
`
`As in Ancora, the claim above recites results-oriented functions performed
`
`on conventional hardware. Both of the claims recite the storage of data—either for
`
`a plurality of panels possessed by two respective users, or for commercial web
`
`sites having visually perceptible elements and links. Both of the claims recite
`
`receiving a particular selection, either for one or more panels or for activation of a
`
`link. And both of the claims generally recite similar activities with respect to how
`
`the selection is handled—here, according to the points set for the user, disposing
`
`the panel in the target division in which it is allowed, and decreasing the points set
`
`for the user upon disposition. In the claim in DDR, a new web page is displayed
`
`11
`
`
`
`based on the selected link and the visually perceptible elements from the data store.
`
`Just as the claim in DDR solved the “challenge of retaining control over the
`
`attention of the customer in the context of the Internet,” challenged claim 1 solves
`
`the challenge of retaining the attention of the user in the context of the claimed
`
`video game. Id. at 1258.
`
`3. Trading Technologies.
`
`Below is a table comparing claim 1 of the ’583 patent to the claim in
`
`Trading Technologies International, Inc. v. CQG, INC., 675 F. App’x 1001 (Fed.
`
`Cir. 2017).
`
`U.S. Patent No. 6,766,304, claim 1
`1. A method for displaying market information relating to and facilitating trading
`of a commodity being traded in an electronic exchange having an inside market
`with a highest bid price and a lowest ask price on a graphical user interface, the
`method comprising;
`
`Compare Ex. 1001, claim 1[preamble].
`
`dynamically displaying a first indicator in one of a plurality of locations in a bid
`display region, each location in the bid display region corresponding to a price
`level along a common static price axis, the first indicator representing quantity
`associated with at least one order to buy the commodity at the highest bid price
`currently available in the market;
`
`dynamically displaying a second indicator in one of a plurality of locations in an
`ask display region, each location in the ask display region corresponding to a price
`level along the common static price axis, the second indicator representing quantity
`associated with at least one order to sell the commodity at the lowest ask price
`currently available in the market;
`
`Compare Ex. 1001, claim 1[b].
`
`
`12
`
`
`
`displaying the bid and ask display regions in relation to fixed price levels
`positioned along the common static price axis such that when the inside market
`changes, the price levels along the common static price axis do not move and at
`least one of the first and second indicators moves in the bid or ask display regions
`relative to the common static price axis;
`
`Compare Ex. 1001, claim 1[e], 1[f].
`
`displaying an order entry region comprising a plurality of locations for receiving
`commands to send trade orders, each location corresponding to a price level along
`the common static price axis; and
`
`in response to a selection of a particular location of the order entry region by a
`single action of a user input device, setting a plurality of parameters for a trade
`order relating to the commodity and sending the trade order to the electronic
`exchange.
`
`Compare Ex. 1001, claim 1[g], 1[h].
`
`The Federal Circuit in Trading Techs. noted that the claim above requires “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.” Trading
`
`Techs., 675 F. App’x at 1004. Similarly, the challenged claims do not “simply
`
`claim displaying information on a graphical user interface,” id.—the claim above
`
`recites a structured GUI comprising “one or more divisions of a game display
`
`screen including a display region formed by the divisions,” where the divisions
`
`include specific divisions where panels from the first and second user are allowed
`
`to be disposed, and the panels are only disposed in a target division when that
`
`13
`
`
`
`condition is satisfied. The claims further recite prescribed functionality directly
`
`tied to the GUI—the storage of panels to be disposed within the structured
`
`interface, storing points set for the first user, selecting panels based on the points
`
`set, and decreasing points upon disposition of a panel into an allowed target
`
`division.
`
`Just as first and second panels from the first and second panel databases are
`
`disposed in the divisions of the game display screen, the claim in Trading Techs.
`
`discloses displaying first and second indicators in bid and ask regions of the
`
`display. Just as claim 1 stores points set for the first user, selects panels according
`
`to the points set, and decreases the points upon disposing of a panel in a division of
`
`the display, the claim in Trading Techs. changes the location of at least one
`
`indicator in the display according to a change in the inside market. And just as the
`
`claim describes a display with a plurality of divisions where panels from the
`
`respective databases are allowed to be disposed and the disposition of panels in a
`
`target division when that condition is satisfied, the claim in Trading Techs.
`
`discloses a plurality of locations for receiving orders based on price levels and the
`
`disposition of an order based on a user selection.
`
`D. Petitioner’s Arguments Ignore the Precedent Above and the Evidence of
`Record.
`
`In the Reply, Petitioner asserts that the “patent is agnostic as to how the
`
`functions are implemented” and the “components are black boxes.” Reply at 2.
`
`14
`
`
`
`However, as explained above, the claims are analogous to those in DDR, Ancora,
`
`and Trading Technologies, which all show that functional claim language is not
`
`inherently abstract. Furthermore, if the claimed functions are truly “black boxes”
`
`as Petitioner contends, then Petitioner should have proposed means-plus-function
`
`constructions for those functions. The fact that Petitioner has not proposed means-
`
`plus-function treatment means that Petitioner concedes the claims themselves
`
`recite sufficient structure to perform the functions claimed. TriMed, Inc. v. Stryker
`
`Corp., 514 F.3d 1256, 1259-60 (Fed. Cir. 2008).
`
`And Mr. Crane never agreed that the ’583 patent recites a “series of result-
`
`oriented functions without describing or reciting a means to achieve them.” Reply
`
`at 3. To the contrary—he testified “a person of ordinary skill in the art would
`
`understand how to implement the operations described in the specification.” Ex.
`
`1010, at 217:21-23. The implementation of the functions recited in the claims is
`
`described in the claim limitations, and none of the valid, non-abstract claims in the
`
`analogous cases cited above provide any of the detail which Petitioner claims is
`
`missing from the ’583 patent. Moreover, Petitioner has not raised an enablement
`
`challenge and therefore concedes that a person of ordinary skill in the art can
`
`practice the invention. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
`
`F.3d 1313, 1334 (Fed. Cir. 2003).
`
`15
`
`
`
`Although Petitioner asserts the ’583 patent claims “no new specific technical
`
`techniques to improve the prior art,” the analogous case and claims in DDR
`
`expressly prove that claims directed to the subjective “look and feel” of a GUI (i.e.
`
`a web page in a browser) are a valid technical solution to the problem of retaining
`
`user attention—the same problem described in and solved by the ’583 patent in the
`
`context of prior art card-based video games. Petitioner cites to alleged concessions
`
`from Mr. Crane about particular visual effects in an attempt to show they were
`
`conventional, but none of Mr. Crane’s actual responses were what Petitioner
`
`represents them to be. Compare Reply at 8 with, e.g., Ex. 1009, 125:10-12 (“I’m
`
`not aware of any game of this type that used a panel around – or a frame region
`
`around a panel in this way”); 132:14-17 (“I was not aware of nor presented with
`
`any prior art that disposed frames in the manner described in the specification that
`
`included text information in the frames”).
`
`Furthermore, none of Mr. Crane’s cross-examination about what may have
`
`allegedly been disclosed in prior art is relevant to the analysis. “Whether a
`
`particular technology is well-understood, routine, and conventional goes beyond
`
`what was simply known in the prior art.” Berkheimer v. HP Inc., 881 F.3d 1360,
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`1369 (Fed. Cir. 2018) (emphasis added). Petitioner cannot meet its burden to
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`prove the claims as an ordered combination are conventional by pointing only to
`
`16
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`
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`individual elements that may have allegedly been separately known in the art in
`
`different contexts. Id.
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`III. Alternatively, the Claims Recite an Inventive Concept.
`Since the claims are not directed to an abstract idea, the analysis ends.
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`Enfish, 822 F.3d at 1339. But the claims are nonetheless patentable under step
`
`two. First, the claims as an ordered combination recite a new type of panel-based
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`information, including points set for users, selection of panels according to points,
`
`and decreasing points when panels are disposed, that provides an inventive
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`concept. Second, the Office has observed that rules for a game using a new set of
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`“cards” can be patentable under step two. Third, Petitioner’s Reply offers no proof
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`of what was well-understood or conventional for any of the claims; Petitioner must
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`do more than merely show something allegedly was known in the art.
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`A. A New Type of Information Supplies the Inventive Concept.
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`The Federal Circuit has expressly recognized that claims “requir[ing] a new
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`source or type of information, or new techniques for analyzing it,” such as
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`“measurement devices or techniques, that would generate new data,” may reveal an
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`inventive concept. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
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`(Fed Cir. 2016) (citing Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
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`827 F.3d 1341, 1349-52 (Fed. Cir. 2016)). As detailed above and in the Response
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`(Paper 26, at 33-39), the use of panels as described and claimed in the ’583 patent
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`17
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`
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`stores, selects panels according to, and decreases points set for the user, which in
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`combination with panels as described and claimed is “a new source or type” of
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`information not found in prior art card games. Petitioner presents no argument or
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`evidence showing that the combination of these visual and game mechanic
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`improvements was routine or conventional.
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`The claims store points set for a user, selects panels according to the points
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`set, and decreases the points when a panel is disposed. Ex. 1001, claim 1. This
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`series of calculations and determinations is a new type of information that was
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`previously unknown in prior art card games. Ex. 2002 ¶ 23. Although Petitioner
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`contends that the claims are performed on a generic computer and that “panels”
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`were allegedly conventional, Petitioner presented no evidence or argument on the
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`record that the use of points set for a user in conjunction with panels as described
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`and claimed was known at all in the art, much less conventional. See Pet. 11-31
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`(failing to address points limitations); Reply at 10-19 (same). The claimed
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`requirements of storing points, selecting panels according to points, and decreasing
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`points by disposing a panel require a new type of information that supplies a
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`sufficient inventive concept. Elec. Power, 830 F.3d at 1355. The dependent
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`claims further capture this new information: claim 7 requires that panel
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`information include the capability of each panel, for example.
`
`
`
`18
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`
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`B. In re Smith.
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`As Petitioner admits, the claims of the ’583 patent recite both visual effects
`
`and gameplay mechanics. As explained above, the combination sufficiently
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`ensures the claims are directed to more than either of Petitioner’s alleged abstract
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`ideas individually. Furthermore, the use of panels as described and claimed in
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`combination with information such as points set for the user was previously
`
`unknown in the art. “We could envisage, for example, claims directed to
`
`conducting a game using a new or original deck of cards potentially surviving step
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`two of Alice.” In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016).
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`The claims here are analogous to the “game using a new or original deck of
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`cards” contemplated by the Federal Circuit in Smith. Neither Smith, Planet Bingo
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`LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014), nor In re Marco
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`Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) held that no game is
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`patentable under § 101. And all of those cases are distinguishable for two reasons.
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`First, in each case the Federal Circuit noted that the claims involved wagering
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`games—a fundamental economic practice. There is no fundamental economic
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`practice at issue here. Second, in each case the claims at issue recited either a
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`known game (bingo) or a known gaming device (a standard deck of playing cards
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`and regular 6-sided dice). Here, the combination of panels as described and
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`claimed in conjunction with the claimed gameplay mechanics were previously
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`19
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`
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`unknown in the art—Petitioner essentially conceded this point when it failed to
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`raise any challenges under §§ 102 or 103.
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`C. Petitioner Has Presented No Evidence of What Was Well-Understood,
`Routine, or Conventional.
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`Petitione
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