Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`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 PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. §§ 42.23 AND 42.208(C)
`
`
`
`
`
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`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 PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. §§ 42.23 AND 42.208(C)
`
`
`
`
`
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Alice Corp. Pty. V. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .......................................................................................... 5
`
`Berkheimer v. HP Inc.,
`Appeal 2017-1437, 2018 WL 774096
`(Fed. Cir. February 8, 2018) ........................................................................passim
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
`776 F.3d 1343 (Fed. Cir. 2014) ............................................................................ 5
`
`
`
`i
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`
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Pursuant to the Board’s June 8, 2018 Order, Petitioner Supercell Oy submits
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`this Reply addressing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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`I.
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`Berkheimer Supports Petitioner’s Position
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`Patent Owner’s reliance on Berkheimer is misplaced. Although Berkheimer
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`holds, in the context of Step 2 of the Alice test, whether “a claim element or
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`combination of elements is well-understood, routine and conventional to a skilled
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`artisan in the relevant field is a question of fact,” that conclusion by itself is far
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`from dispositive, either in general or in the instant circumstances. See Berkheimer,
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`881 F.3d at 1368. Rather, no genuine dispute arises concerning patentability
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`unless the challenged patent’s specification identifies one or more purported
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`technological improvements to the prior art, and those improvements “are captured
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`in the claims.” Id. at 1369 (emphasis added), cited at POPR, p. 22
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`Applying this analysis, Berkheimer affirmed the district court’s summary
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`judgment finding of ineligibility of claims 1-3 and 9 because those claims did not
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`recite the purported improvement to computer functionality described in the
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`specification. Id. at 1370. The court reversed summary judgment of claims 4-7
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`only after finding that the specification-described improvement in computer
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`functionality was captured in those claims. Id.
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`Here, like the ineligible claims in Berkheimer, the challenged claims fail to
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`capture the alleged improvements of the specification. The ’583 patent
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`1
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`specification, as the POPR admits, describes the problem proposed to be solved as:
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`“a two-dimensional card in the battle scene is sometimes boring.” See, e.g., POPR,
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`pp. 2; 21; 23; 26; 30-31 (citing Ex. 1001, 1:42-43). As a preliminary matter, this is
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`an aesthetic or business problem, not a technical one. See, e.g., PGR2018-00008,
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`Decision on Institution (Paper 15), p, 13. The POPR attempts to characterize the
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`problem as one existing in the field of graphical user interfaces comparable to
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`Trading Techs. Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1004 (Fed. Cir. 2017).
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`See POPR, pp. 26-30. In that case, however, the patents solved a technical problem
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`that existed with prior art GUIs, namely, that the best bid and best ask prices would
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`change based on updates received from the market. Id. at 1002-03. The Trading
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`Technologies patents recited a specific GUI with specific axes, regions for data, and
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`rules delimiting the data in each region to allow a user to see and manipulate stock
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`market data in real time, that resolved technical problems in the prior art. Id. at
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`1003-04. In contrast, the ’583 patent only purports to address a battle scene of the
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`game described as “boring,” which is not a technical problem to be solved.
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`Even if the patent provided technological solutions to a problem rooted in
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`computer technology, they are not captured in the claims. Berkheimer 881 F.3d at
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`1369. According to the POPR, seven different ways of showing the alleged
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`improvement of “high visual effect” are described in the specification: (1) a battle
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`“proceed[ing] in a format like a cartoon” (POPR, p. 2, citing 1:49-50; 6:42-46);
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`2
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`(2) “a battle display region divided by frames that can execute . . . in a
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`predetermined order”; (3) “emphasize and display the panels” (POPR, p. 31, citing
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`Ex. 1001, 6:36-38); the panels (4) can “display a still image”; (5) “display a movie
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`when the panels are emphasized and displayed”; (6) “zoom in,” and frames of the
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`panels that (7) have portions that can “display the texts showing the sound effect
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`and/or an effect display portion” (see POPR, p. 31, citing Ex. 1001, 7:27, 7:36,
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`7:44-56).
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`All of these features, however, are entirely absent from independent claims 1,
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`14, and 15 (see Pet., p. 15), and some are absent from all of the claims. No claims
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`recite the battle proceeding like a cartoon, nor displaying a movie, nor zooming in,
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`nor a portion with text showing a sound effect. Thus, the POPR admits that at least
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`independent claims 1, 14, and 15, and dependent claims 5-9 and 11-13 do not
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`“capture” the alleged improvements described in the specification (“high visual
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`effect”) and, therefore, present no fact issue under Berkheimer.
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`II. The Petition Contains Ample Evidence Under Berkheimer
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`Even if the Board were to conclude that one or more claims do capture the
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`purported improvements, the facts still favor institution so that any dispute as to
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`these facts may be put before the PTAB as the fact finder. Id. at 1369.
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`The POPR wrongly asserts that the Petition provided only attorney argument
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`(see POPR, pp. 9, 21, 23). In fact the Petition provided ample support for its
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`3
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`analysis under Alice. The Petition specifically identified admitted prior art which
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`evidenced the well-known and conventional nature of the underlying technology,
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`as well as Federal Circuit case law holding ineligible claims that similarly recited
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`functions without any preference as to how the functions were achieved. See Pet.,
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`pp. 25-29. And while the § 101 section of the Petition makes seven separate
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`citations to evidence from the ’583 specification and relies on nine different
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`precedential cases, neither the ’583 specification nor the POPR provide any
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`counter evidence that the claims do not recite well-known features.
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`The POPR misplaces its reliance on a nonexistent purported requirement for
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`expert testimony. See POPR, pp. 20-21, 23; see also POPR, pp. 9-10 (citing
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`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1367 (Fed. Cir. 2014)). However,
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`expert testimony is not required for institution, and Suffolk Technologies is not to
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`the contrary, despite the POPR’s tortured reading. In Suffolk Technologies, the
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`Federal Circuit upheld summary judgment under 35 U.S.C. § 102 against a
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`patentee where, after excluding expert testimony, the patentee had only attorney
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`argument remaining that the patent was not anticipated, which alone was
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`insufficient to create a triable issue of fact. Id. at 1366-67. The ’583 specification
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`admits that the claim limitations at issue are well-understood, routine, and
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`conventional, which is sufficient for a finding of patent ineligibility under § 101.
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`Berkheimer, 881 F.3d at 1369. Further, extrinsic evidence is not necessary to any
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`4
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`of the challenged grounds.1 See, e.g., TLI Commc’ns LLC Patent Litig., 823 F.3d
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`607, 613-14 (Fed. Cir. 2016) (declining to look outside the record for § 101
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`analysis because the patent itself admitted much of the claimed invention
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`employed well-known technology), cited at Pet., pp. 9, 23, 26; Berkheimer,
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`881 F.3d at 1368 (“Nothing in this decision should be viewed as casting doubt on
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`the propriety of those cases [finding patents ineligible upon a motion to
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`dismiss].”).
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`The POPR argues under the Berkheimer section that claim 1 is not
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`“representative” of all of the claims, focusing on various of the dependent claims.
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`POPR, pp. 13-14, citing Pet. p. 13. However, the Petition did not argue that claim
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`1 was representative of all claims. See Pet., p. 13, n.3;2 see also Pet., p. 12 (noting
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`the independent claims each recite similar steps). The Petition analyzed the
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`dependent claims under § 101 in a separate section and showed how each failed to
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`remedy the independent claims’ lack of an inventive concept. See Pet. pp. 29-31
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`(under the heading: “The Dependent Claims Add Nothing Inventive”).
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`1 PO criticizes the lack of extrinsic evidence in the Petition. See POPR, pp. 19-20.
`2 The Petition’s treatment of claim 1 as representative is fully consistent with
`Berkheimer, and supported by Alice and Content Extraction. See Pet., p. 13, n.3
`(addressing each claim individually was “unnecessary” when the claims share a
`common specification and are drawn to the same abstract idea).
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`5
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Dated: June 15, 2018
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`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`/s/ Jennifer R. Bush
`Jennifer R. Bush, Reg. No. 50,784
`Michael J. Sacksteder, pro hac vice
`Attorneys for Petitioner Supercell Oy
`
`
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`6
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`Patent No. 9,636,583 — Petitioner’s Reply to Patent Owner’s Preliminary Response
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`CERTIFICATION OF SERVICE
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`(37 CFR §42.110(a))
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`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
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`Patent Owner’s Preliminary Response was electronically served on June 15, 2018
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`per agreement by the parties on the following:
`
`Lead Counsel
`John C. Alemanni (Reg. No. 47,384)
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`Email:
`jalemanni@kilpatricktownsend.com
`
`
`
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`Date: June 15, 2018
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`Back-Up Counsel
`Andrew W. Rinehart (Reg. No. 75,537)
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`Email:
`arinehart@kilpatricktownsend.com
`
`Back-Up Counsel
`Scott E. Kolassa (Reg. No. 55,337)
`Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Menlo Park, CA 94025
`Email:
`skolassa@kilpatricktownsend.com
`
`FENWICK & WEST LLP
`
`
`
`/s/ Jennifer R. Bush
`Jennifer R. Bush, Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`
`7
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