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
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`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`TABLE OF CONTENTS
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`Introduction. ..................................................................................................... 1 
`I. 
`II.  The ’583 Patent. ................................................................................................ 1 
`III.  The Alleged Grounds of Invalidity. ................................................................. 9 
`IV.  The Petition Fails to Prove Any Claim is Ineligible Under § 101. ................ 10 
`A.  Legal Standard for Invalidity Under § 101. .................................................... 11 
`B.  The Petition Fails to Meet its Burden Under Alice and Berkheimer. ............. 12 
`1.  Claim 1 is not representative of all claims of the ’583 patent. ..................... 13 
`2.  Petitioner engages in pure speculation as to the Examiner’s state of mind. 14 
`3.  Petitioner fails to analyze—or even mention—all of the limitations of claim
`1. 15 
`4.  The petition paraphrases the dependent claims and provides no actual
`analysis. ............................................................................................................. 18 
`5.  Petitioner offers no evidence to contradict the specification of the ’583
`patent. ................................................................................................................ 19 
`C.  The Claims are Subject-Matter Eligible. ........................................................ 24 
`1.  The ’583 patent is not directed to an abstract concept. ................................ 25 
`2.  Alternatively, the claims recite the requisite “inventive concept.” .............. 30 
`V.  The Claims Have Sufficient Written Description. ......................................... 34 
`A.  Legal Standard for the Written Description Requirement of § 112(a). .......... 34 
`B.  Level of Ordinary Skill in the Art. .................................................................. 35 
`C.  The Petitioner Fails to Meet its Burden Under § 112(a). ............................... 36 
`D.  The ’583 Patent Contains Sufficient Written Description for the Claims. ..... 38 
`VI.  The Claims are Definite. ................................................................................. 44 
`A.  Legal Standard for Definiteness. .................................................................... 45 
`B.  The Petition Fails to Meet its Burden. ............................................................ 45 
`
`
`
`i
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`C.  A Person of Ordinary Skill Would Understand the Scope of the Claim Terms
`at Issue. ................................................................................................................. 47 
`VII.  The Petition Should Be Denied in its Entirety. .............................................. 49 
`VIII.  Conclusion. ..................................................................................................... 50 
`
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`
`ii
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`
`Exhibit
`No.
`2001
`
`2002
`2003
`
`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
`
`
`
`iii
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`

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`I.
`
`Introduction.
`The petition should be denied. Petitioner’s alleged grounds of invalidity
`
`under § 101 and § 112 are nothing more than mere attorney argument and are
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`unsupported by any evidence. Although Petitioner contends the claims of the ’583
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`patent are patent-ineligible, Petitioner ignores the actual language of the challenged
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`claims in the petition and fails to provide any evidence of what was well-
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`understood, routine, and conventional in the art. Petitioner’s assertions that the
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`claims lack sufficient written description and are indefinite are also nothing more
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`than attorney argument and fail to analyze the claims from the perspective of a
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`person of ordinary skill. Notwithstanding Petitioner’s failure to meet its burden,
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`the challenges raised in the petition also fail on their merits. The invention
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`disclosed in the ’583 patent is a technological improvement to graphical user-
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`interfaces. The ’583 patent’s claims are definite and its disclosure satisfies the
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`written description requirement. The Board should deny Petitioner’s request and
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`not institute review.
`
`II. The ’583 Patent.
`The ’583 patent generally discloses “a game program and a game processing
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`method of a game in which a plurality of characters battle against each other.” Ex.
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`1001, 1:21-23. According to the ’583 patent, “card game[s] in which the user
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`plays against other users or against the computer using cards collected in the
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`1
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`

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`game” are typically played on “electronic apparatuses such as smart phones and
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`tablets.” Ex. 1001, 1:28-33. However, the ’583 patent identifies a known problem
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`in the card-game art “since the use of a two-dimensional card in the battle scene is
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`sometimes boring, [and] there have been calls for improvement.” Ex. 1001, 1:42-
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`43.
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`The solution to this problem provided by the ’583 patent is a “game program
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`and a game processing method of a game that gives a user a high visual effect.”
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`Ex. 1001, 1:49-50. To achieve this high visual effect, the ’583 patent explains that
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`in one embodiment “the battle between the first and second characters proceeds in
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`a format like a cartoon. Therefore, since the user can play the game with a sense of
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`reading a cartoon, the visual effect that the user receives is greatly improved
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`compared to known games.” Ex. 1001, 6:42-46. An example of such an
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`embodiment is provided in Figure 12.
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`2
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`

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`
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`Ex. 1001, Fig. 12.
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`
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`In order to generate this particular user interface, the ’583 patent teaches the
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`use of “panels to be disposed in frames of the game display screen including a
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`battle display region.” Ex. 1001, 4:31-33. “Preferably, these panels display a
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`movie when the panels are emphasized and displayed.” Ex. 1001, 7:36-38. In one
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`example, the panels “can have an arbitrary size,” such as for example in a “battle
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`display region 310 divided into cells” a panel may be one, two, or four cells in size.
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`3
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`

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`Ex. 1001, 6:52-61. “Panels can have various shapes such as a circle, a triangle,
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`and a polygon, as well as the rectangle (including a square) such as a card in the
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`related art.” Ex. 1001, 7:15-18.
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`
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`Panels are acquired by playing the game. Ex. 1001, 8:34-36. An exemplary
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`game according to the ’583 patent has “a main cycle and a sub-cycle.” Ex. 1001,
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`8:25-26. In a main cycle of the game, “as shown in FIG. 7, the user selects one
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`character from a plurality of characters presented.” Ex. 1001, 8:26-28.
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`
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`Ex. 1001, Fig. 7. Playing the selected character, the user “collects panels while
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`advancing the quest.” Ex. 1001, 8:28. “A panel can be acquired as a reward for
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`the battle with the enemy characters and the boss character. In addition, it is also
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`possible to acquire the panel in a specific event or the like. Thus, the user acquires
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`4
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`the panel by advancing the game.” Ex. 1001, 8:34-38. An example “quest” is
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`depicted in Figure 8. Ex. 1001, 8:31-33.
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`
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`Ex. 1001, Fig. 8.
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`
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`In the “sub-cycle” of the game, “the user can use the acquired panel to
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`strengthen the deck for the battle or can use the acquired panel to develop a
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`character. Developing the character refers to combining the character selected by
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`the user with the acquired panel.” Ex. 1001, 8:39-43. When panels are used for
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`character development, the panels may include “strength,” “attack,” “defense,” or
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`“special technique effects” information to provide improvements to a user’s
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`character for use in a battle. Ex. 1001, 8:44-51. When panels are used to
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`5
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`strengthen the deck, panels may include “capability information [that] refers to
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`information including attack, defense (avoidance), attributes, recovery, and skills
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`to disable or replace the frame, for example.” Ex. 1001, 7:21-23.
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`
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`Thus, the ’583 patent explains that panels may be used for battle or character
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`development, and are acquired by progressing through the main cycle of the game.
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`Ex. 1001, 8:39-41, 8:26-28. “[W]hen a battle starts, the battle using the game
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`display screen” is performed as shown in Figures 3 and 12, for example. Ex. 1001,
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`6:16-20, 8:63-65. The battle may “proceed from the upper left to the lower right”
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`or vice versa in the display, and the display may “be divided by the turn indicating
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`the unit of the progress of the battle.” Ex. 1001, 7:8-14.
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`6
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`
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`Ex. 1001, Fig. 3.
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`
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`In this example, a “first panel group” includes “a plurality of panels that the
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`first character possesses” and a “second panel group” includes “a plurality of
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`panels that the second character possesses.” Ex. 1001, 6:28-31. The panels
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`selected from each panel group “are disposed in the frames A to G” during the
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`battle. Ex. 1001, 6:32. According to the ’583 patent, the game program may
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`“execute the frames in a predetermined order, and emphasize and display the
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`panels disposed in the executed frames.” Ex. 1001, 6:36-38.
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`7
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`
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`Within this particular example interface, the “high visual effect” disclosed in
`
`the ’583 patent is accomplished by several different improvements. For example,
`
`panels may be sized such that the “effect of the capability is assumed to correspond
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`to the size of the panel.” Ex. 1001, 7:23-25. A panel can “display a still image”
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`and “display a movie when the panels are emphasized and displayed.” Ex. 1001,
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`7:27-37. A “panel that is emphasized and displayed is displayed to zoom in.” Ex.
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`1001, 7:54-56. The frames in which panels are displayed may “display texts” and
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`have “a sound effect display portion 20 to display the texts showing the sound
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`effect and/or and effect display portion to display the effect.” Ex. 1001, 7:44-47.
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`Frames may have “frame portions” that are “constructed in different colors” such
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`that “the panel of the first character and the panel of the second character can be
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`visually easily distinguished.” Ex. 1001, 7:58-65.
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`
`
`The user interface examples disclosed in the ’583 patent further impose a
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`rule-based set of specialized game mechanics to control the flow of the battle
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`game. For instance, in one interface, “each row indicates a turn of a battle, [and]
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`the occupancy of action in each turn in horizontally long frames such as the frames
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`H, N, and O, is high compared to that in horizontally short frames such as the
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`frames I, J, K, L, and M.” Ex. 1001, 6:62-66. In this manner, “a panel the size of
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`which is larger and presents at a position where a turn number is earlier leads a
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`battle advantageously.” Ex. 1001, 7:5-7.
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`8
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`The game outcome is ultimately determined by the arrangement of panels: a
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`“battle result is preferably determined based on the panel information at a state
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`where the panels are disposed,” and “it is also possible to change the battle result
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`by changing the panel…by the operation (action for recovery or the like) of the
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`user during the battle.” Ex. 1001, 8:6-11. The disposition of panels within the
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`display region may also trigger other game mechanics. For example, “when three
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`or more specific panels are disposed within one game display screen, it is also
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`possible to generate a combo exhibiting the effect beyond the effects of these
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`cards.” Ex. 1001, 9:2-5.
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`III. The Alleged Grounds of Invalidity.
`The petition (“Pet.”) raises three alleged grounds of invalidity. First,
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`Petitioner asserts that claims 1-15 of the ’583 patent are invalid under § 101. Pet.
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`16-31. Second, according to Petitioner, claims 1-15 lack sufficient written
`
`description and are therefore invalid under § 112(a). Pet. 32-38. Third, Petitioner
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`alleges that claims 1-15 are invalid under § 112(b) as indefinite. Pet. 39-42.
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`For the reasons explained below, the petition should be denied in its entirety.
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`Petitioner has provided absolutely no evidence in support of any of the three
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`challenges raised in the petition—and mere attorney argument is insufficient for
`
`Petitioner to carry its burden. See, e.g., Suffolk Techs., LLC v. AOL Inc., 752 F.3d
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`1358, 1367 (Fed. Cir. 2014) (“Without expert testimony, however, Suffolk’s
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`9
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`position is mere attorney argument. And here, those attorney arguments are
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`insufficient to undermine the credible testimony from Google’s expert” as to a
`
`question of fact). As a result Petitioner has failed to show that it is more likely
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`than not that any of the challenged claims are unpatentable. 35 U.S.C. § 324(a).
`
`Petitioner’s alleged grounds of invalidity also fail on their merits because they fail
`
`to address all of the limitations of the claims, ignore the disclosure of the
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`specification of the ’583 patent, and fail to analyze the claims from the perspective
`
`of one of ordinary skill in the art. The Board should deny the petition.
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`IV. The Petition Fails to Prove Any Claim is Ineligible Under § 101.
`Petitioner’s assertion that the challenged claims of the ’583 patent are
`
`invalid under § 101 is wrong. Procedurally, Petitioner does not properly analyze—
`
`or in some instances even mention—all of the limitations recited by claim 1 or
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`those of the dependent claims. The petition cites no evidence, relying instead on
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`attorney argument to support the claim that select claim elements are both abstract
`
`and routine, conventional, or well-understood functionality. Since the petition fails
`
`to meet its basic burden under the Alice § 101 analysis, this ground should be
`
`rejected.
`
`The § 101 challenge also fails on the merits—the claims of the ’583 patent
`
`are not directed to an abstract idea; rather, as the testimony of Patent Owner’s
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`10
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`expert cited below demonstrates, they recite a specific application of an improved
`
`game user-interface that was not routine, conventional, or well-understood.
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`The petition should be denied.
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`A. Legal Standard for Invalidity Under § 101.
`
`A patent may be obtained for “any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof.” 35 U.S.C. § 101. However, the Supreme Court has “held that this
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`provision contains an important implicit exception: Laws of nature, natural
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`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank
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`Int’l, 134 S. Ct. 2347, 2354 (2014). The “concern that drives this exclusionary
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`principle as one of pre-emption,” but “we tread carefully in construing this
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`exclusionary principle lest it swallow all of patent law.” Id.
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`Under the framework set forth in Alice, one must first “determine whether
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`the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at
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`2355. “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If the claims are directed to a patent-
`
`ineligible concept, one must next “consider the elements of each claim individually
`
`and ‘as an ordered combination’ to determine whether the additional elements
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`‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355
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`11
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`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
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`1297 (2012)).
`
`Step two is an inquiry as to whether the claims add an inventive concept that
`
`is sufficient to ensure the patent amounts to more than a patent upon the concept
`
`itself. Alice, 134 S. Ct. at 2355. Claims reciting “well-understood, routine,
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`conventional activity” in the field of art are insufficient to confer patentability to
`
`otherwise ineligible concepts. Mayo, 566 U.S. at 79. “The question of whether a
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`claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact. Any fact,
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`such as this one, that is pertinent to the invalidity conclusion must be proven by
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`clear and convincing evidence.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368
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`(Fed. Cir. 2018).
`
`B. The Petition Fails to Meet its Burden Under Alice and Berkheimer.
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`Petitioner extracts five verbs from claim 1 of the ’583 patent, claims those
`
`verbs were well-known at the time, and declares the ’583 patent invalid under §
`
`101. Pet. 22. This is not the analysis set forth in Alice. To meet its burden, the
`
`petition must (1) demonstrate the claims are directed to an abstract concept, (2)
`
`analyze the claim limitations both individually and as an ordered combination, and
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`(3) address the underlying questions of fact as to whether a claim element or
`
`combination of elements is well-understood, routine, and conventional to a skilled
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`12
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`artisan. See Berkheimer, 881 F.3d at 1367-68. The petition fails to satisfy any of
`
`these requirements.
`
`1. Claim 1 is not representative of all claims of the ’583 patent.
`
`As an initial matter, Petitioner alleges that claim 1 is “representative” for
`
`purposes of institution. Pet. 13. Patent Owner disagrees. Dependent claims 2-13
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`recite unique limitations not found in claim 1 that separately bear on the question
`
`of patent eligibility.1 For example, dependent claims 2 and 3 recite a “division
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`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, 9:41-47. Dependent claim 4 recites an
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`“emphasized display function” that is not present in claim 1. Ex. 1001, 9:50-52.
`
`Dependent claim 5 recites a “division execution function” based on “panel
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`information” that is not recited in claim 1. Ex. 1001, 9:53-57.
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`Similarly, dependent claims 6 and 7 limit “panel information” to include the
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`size of a panel or a capability of each panel. Ex. 1001, 9:57-64. Claim 8 recites
`
`the panels “are given according to progress of the game.” Ex. 1001, 9:65-67.
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`According to claim 9, the “display region is divided by a plurality of turns.” Ex.
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`1 Claim 1 is patent-eligible, at least for the reasons set forth in Section IV.C. The
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`identification of particular claim limitations in the dependent claims herein
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`demonstrates that claim 1 is not representative of all claims.
`
`13
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`

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`1001, 10:1-2. Claim 10 requires that each panel “displays a still image” Ex. 1001,
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`10:3-4. Dependent claims 11, 12, and 13 require the divisions to have a “text
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`portion,” a “frame portion,” or a configuration “changed according to progress of
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`the game,” respectively. Ex. 1001, 5-19.
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`None of these unique limitations is found in claim 1, and they each
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`separately bear on the issue of subject-matter eligibility as explained in more detail
`
`below. The petition ignores these limitations and fails to adequately address them,
`
`and thus Petitioner fails to meet its burden by treating claim 1 as representative.
`
`For at least this reason, the petition should be denied for failing to address all of the
`
`limitations of the Challenged Claims of the ’583 patent.
`
`2. Petitioner engages in pure speculation as to the Examiner’s state of
`mind.
`
`Petitioner claims that § 101 was not addressed during prosecution. Pet. 19.
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`However, the application that issued as the ’583 patent was filed on September 1,
`
`2016—more than two years after the Alice decision. And Petitioner acknowledges
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`“guidance had been provided to examiners on the application” of § 101. Pet. 19.
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`In spite of this, Petitioner speculates that the examiner failed to properly apply
`
`guidance issued by the U.S.P.T.O. or any of the intervening decisions of the
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`Federal Circuit applying the Alice standard. Pet. 19.
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`Petitioner’s musings do not amount to evidence that the examiner failed to
`
`properly determine whether the ’583 patent is patent-eligible. The examiner was
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`14
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`provided with the tools to issue rejections under § 101 during prosecution of both
`
`the parent and child applications of the ’583 patent, applying the relevant guidance
`
`at those times. Pet. 20 (citing Ex. 1005 at 47-49; Ex. 1006 at 6-14, 128-133). That
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`the examiner issued no eligibility rejections is just as likely based on the
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`Examiner’s conclusion that the claims were patent eligible as it is the Examiner’s
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`alleged failure to understand and apply the Patent Office’s § 101 guidance during
`
`prosecution.
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`3. Petitioner fails to analyze—or even mention—all of the limitations of
`claim 1.
`
`Petitioner’s treatment of claim 1 is wholly defective. To meet the burden set
`
`forth by Alice, the petition must address all of the claim limitations of claim 1, both
`
`individually and as an ordered combination. See, e.g., OIP Techs., Inc. v.
`
`Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (“we must then consider
`
`the elements of each claim both individually and as an ordered combination”)
`
`(internal quotations and citation omitted). But Petitioner fails to do so. Claim 1 is
`
`reproduced below, with annotations to particular elements for reference, with
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`limitations not addressed in full by Petitioner in italics (see Pet. 21-26):
`
`1. [preamble] A non-transitory computer readable recording
`medium storing game program code instructions for a game in which
`a first user and a second user do battle, and when the game program
`code instructions are executed by a computer, the game program code
`instructions cause the computer to perform:
`
`15
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`

`[1a] a data storage function of storing a first panel database
`that includes a plurality of panels that the first user possesses, and a
`second panel database that includes a plurality of panels that the
`second user possesses;
`[1b] a panel selection function of selecting one or more panels
`to be disposed in one or more divisions of a game display screen
`including a display region formed by the divisions, from the first panel
`database and the second panel database;
`[1c] a panel layout function of disposing the panels selected by
`the panel selection function in the divisions; and
`[1d] a screen display control function of displaying the game
`display screen on a screen display unit, wherein
`[1e] the data storage function further stores points set for the
`first user, which are decreased by disposing a panel,
`[1f] the panel selection function selects a panel from the first
`panel database according to the points set for the first user,
`[1g] 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, and
`[1h] the panel layout function disposes the panel selected by the
`panel selection function in a target division when the panel is allowed
`to be disposed in the target division.
`Ex. 1001, 9:11-41 (emphasis added).
`
`Nowhere does Petitioner analyze any of these limitations—either
`
`individually or as an ordered combination—in their entirety. For example, element
`
`16
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`

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`[1b] recites “a panel selection function of selecting one or more panels to be
`
`disposed in one or more divisions of a game display screen including a display
`
`region formed by the divisions, from the first panel database and the second panel
`
`database.” Ex. 1001, 9:20-24. The claim recites that the “panel selection function”
`
`includes an algorithm: selecting one or more panels (which must originate from
`
`first and second panel databases), and disposing the selected panels in at least one
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`division of a game display screen, where the divisions form a display region. Id.
`
`But the petition fails to analyze this limitation in its entirety—or even a substantial
`
`portion thereof. The petition simply discusses “selecting” or “selecting a panel”
`
`five times in the context of its purported analysis under § 101. Pet. 14, 22, 24, 28.
`
`The petition fails to explain or even mention why selecting “panels to be
`
`disposed in one or more divisions of a game display screen” is either abstract or
`
`well-understood, routine or conventional. The petition also fails to explain or
`
`mention why the selection of panels “from the first panel database and the second
`
`panel database” is either abstract or well-understood, routine, or conventional. The
`
`petition also fails to analyze or even acknowledge how element [1b] is further
`
`limited by element [1f], where the panel selection function “selects a panel from
`
`the first panel database according to the points set for the first user” with respect to
`
`§ 101.
`
`17
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`

`

`This superficial “hand wave” analysis of the challenged claims is
`
`insufficient to meet Petitioner’s burden under Alice. Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (“describing the claims at such a high
`
`level of abstraction and untethered from the language of the claims all but ensures
`
`that the exceptions to § 101 swallow the rule”) (citing Alice, 134 S. Ct. 2354).
`
`Although Petitioner alleges the ’583 patent “does nothing more than recite an
`
`abstract idea in purely functional terms,” (Pet. 16), Petitioner’s allegations arise
`
`from the dissection of claim 1 into a handful of verbs (“storing a panel database,
`
`selecting a panel, disposing of the panel, displaying the game screen, emphasizing
`
`a panel,” (Pet. 22)) that bear no meaningful resemblance to the challenged claims.
`
`The petition is likewise defective as to the other limitations of claim 1 with respect
`
`to § 101. See, e.g., Pet. 14, 22, 24, 28 (reducing elements [1a] and [1e] to
`
`“storing”); Pet. 14, 22, 24 (reducing elements [1c], [1g], and [1h] to “disposing”).
`
`4. The petition paraphrases the dependent claims and provides no
`actual analysis.
`
`In less than two full pages, the petition purports to assess the subject-matter
`
`eligibility of twelve dependent claims and asserts that all twelve claims lack
`
`eligibility. Pet. 29-31. For example, claim 2 recites a “division execution function
`
`of executing the divisions in which the panels are disposed by the panel layout
`
`function in predetermined order.” Ex. 1001, 9:42-44. Petitioner ignores the
`
`limitation of a “division execution function of executing the divisions in which the
`
`18
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`

`

`panels are disposed” entirely as recited by claim 2. Claim 3 requires the
`
`“predetermined order” to be “based on arrangement, shapes, and/or sizes of the
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`panels.” Ex. 1001, 9:45-47. Petitioner fails to even acknowledge the “based on
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`arrangement” limitation anywhere in the petition. See Pet. 29.
`
`The language of every dependent claim in the ’583 patent is parsed,
`
`removed, and/or ignored by Petitioner. See Pet. 29-31. According to Alice,
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`Petitioner has failed to meet its burden. Petitioner asserts sporadically in these two
`
`pages that “[n]one [of the dependent claims] discloses a concrete solution,”
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`“[s]everal of the dependent claims append ordinary game concepts to the claimed
`
`method,” or that these “conventional concepts constitute nothing more than
`
`obvious choices to be made within the abstract concept.” Id. But Petitioner never
`
`specifically identifies the dependent claims to which these assertions apply or
`
`provides any meaningful analysis or supporting evidence. Id.. This falls far short
`
`of the standard set by Alice, which demands that “we consider the elements of each
`
`claim both individually and as an ordered combination.” Alice, 134 S. Ct. at 2355
`
`(citation and quotation omitted) (emphasis added).
`
`5. Petitioner offers no evidence to contradict the specification of the
`’583 patent.
`
`A petitioner must identify the “evidence relied upon to support the challenge
`
`and the relevance of the evidence to the challenge raised.” 37 C.F.R. §
`
`42.104(b)(5). Petitioner has failed to do so here. Petitioner proffers no expert
`
`19
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`

`

`testimony to support its arguments and cites no extrinsic evidence with respect to §
`
`101 (or any of the other alleged grounds of invalidity in the petition).
`
`“The question of whether a claim element or combination of elements is
`
`well-understood, routine and conventional to a skilled artisan in the relevant field
`
`is a question of fact.” Berkheimer, 881 F.3d at 1368. According to Petitioner,
`
`“[s]toring, selecting, and disposing of a ‘panel’ containing game information, as
`
`noted in the background of the ’583 specification, were previously well known in
`
`the art.” Pet. 22 (citing Ex. 1001, 1:31-40). Petitioner is wrong. First, the
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`disclosure in specification quoted by Petitioner contradicts Petitioner’s assertion:
`
`“As an example of such a game, there is a card game in which
`the user plays against other users or against the computer using cards
`collected in the game.
`Japanese Unexamined Patent Application Publication No.
`2007-252696 discloses a technique regarding the card game described
`above. According to that technique, the user configures a deck with
`cards used in a play which is selected from a plurality of cards that the
`user owns, and plays a rock-paper-scissors game or the like with an
`opponent using the deck.”
`Ex. 1001, 1:31-40. The passage quoted by Petitioner contains no mention of
`
`storing, selecting, or disposing of panels.
`
`
`
`Petitioner later asserts “[a]ll the recited claim elements of the ’583 claims,
`
`tangible and otherwise, are conventional, generic and well understood, and thus
`
`20
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`

`

`present no patentable inventive concept.” Pet. 26.2 This is attorney argument, not
`
`evidence. Suffolk Techs., 752 F.3d at 1367 (“attorney arguments are insufficient”).
`
`Petitioner presents no evidence, either in the form of expert testimony or
`
`otherwise, to support this assertion. The specification of the ’583 patent directly
`
`contradicts Petitioner’s assertion, disclosing that in one illustrative embodiment
`
`“since the user can play the game with a sense of reading a cartoon, the visual
`
`effect that the user receives is greatly improved compared to known games.” Ex.
`
`1001, 6:44-46.
`
`
`
`Petitioner also asserts the “steps of the ’538 [sic] patent, which are
`
`performed by generic computer hardware, are ‘well-understood, routine,
`
`conventional activities previously known to the industry.’” Pet. 28. This assertion,
`
`unsupported by any evidence, also directly contradicts the specification of the ’583
`
`patent. After acknowledging the known problem that “the use of a two-
`
`dimensional card in the battle scene is sometimes boring,” the ’583 patent explains:
`
`“It could therefore be helpful to provide a storage medium
`storing a game program and a game processing method of a game that
`
`
`2 Whether a claim limitation is “generic” has no bearing under the standard set forth
`
`in Alice, which instead focuses on whether the claims recite well-understood,
`
`routine, or conventional activities. See Mayo, 566 U.S. at 79.
`
`21
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`

`

`gives a user a high visual effect, and an information processing
`apparatus that controls the game.
`My storage medium stores a game program for a game in which
`first and second characters do battle. The game program causes a
`computer to realize: a data storage function of storing a first panel
`database that includes a plurality of panels that the first character
`possesses, and a second panel database that includes a plurality of
`panels that the second character possesses; a panel selection function
`of selecting panels to be disposed in frames of a game display screen
`including a display region formed by one or more frames, from the
`first and second panel databases; a panel layout function of placing
`the panels selected by the panel selection function in the frames; a
`screen display control function of displaying the game display screen
`on a screen display unit; and a frame execution function of executing
`the frames in which the panels are disposed by the panel layout
`function in predetermined order.”
`Ex. 1001, 1:48-67.
`The specification of the ’583 patent thus expressly teaches that the desired
`
`“high visual effect” solu