UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________________
`
`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 SUR-REPLY TO PETITIONER’S REPLY TO
`PRELIMINARY RESPONSE
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`__________________________________
`
`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 TO PETITIONER’S REPLY TO
`PRELIMINARY RESPONSE
`
`
`
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`
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`I. The Improvements of the ’583 Patent are Captured in the Claims.
`Petitioner asserts that “the challenged claims fail to capture the alleged
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`improvements of the specification.” Paper 16 (“Reply”) at 1. Petitioner is wrong.
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`First, the problems solved by the ’583 patent arise specifically from the
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`technical field of two-dimensional computer card games. Ex. 2002, ¶ 27; Ex.
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`1001, 1:43-44. Although Petitioner attempts to characterize this field as presenting
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`“an aesthetic or business problem,” Petitioner presents no evidence that this is the
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`case, citing only a non-precedential institution decision by a different panel of the
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`Board. Reply at 1. Notably, Petitioner presents no evidence to directly contradict
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`the specification and testimony of Patent Owner’s expert, Mr. Crane on this point.
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`Ex. 2002 ¶¶ 22-29. Petitioner also cites to no authority for the proposition that
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`addressing user boredom in a video game—i.e., visually improving the user’s
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`experience—is not a valid problem to be solved in this specific art. To the
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`contrary, it is. Ex. 2002 ¶ 29; see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
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`1339 (Fed. Cir. 2016) (“the claims are directed to a specific implementation of a
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`solution to a problem in the software arts. Accordingly, we find the claims at issue
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`are not directed to an abstract idea.”)
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`Second, the improvements provided by the ’583 patent are indeed captured
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`in all the claims of the patent. According to the ’583 patent, panels are able to, for
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`example, “display a still image,” “display a movie when the panels are emphasized
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`1
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`
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`and displayed,” and “zoom in.” Ex. 1001, 7:27, 7:36, 7:55-56. Each and every
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`independent claim of the ’583 patent recites “panels.” See claims 1, 14, 15.
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`Petitioner’s attempt to argue that panels as recited and captured in the independent
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`claims possess none of the features that make the claims subject matter eligible—
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`i.e., that these features are outside the scope of the independent claims—is nothing
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`more than a belated claim construction argument that should have been raised in
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`the petition but was not. Moreover, it is incorrect because it would unduly limit
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`the claims to exclude the preferred embodiment of the claimed panels. See
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (a claim
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`construction that excludes a preferred embodiment is “rarely, if ever, correct”).
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`A person of ordinary skill in the art of the ’583 patent would also understand
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`that the independent claims capture the improved visual interface described by the
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`’583 patent. Ex. 2002 ¶¶ 57-59. As the ’583 patent explains, “the game display
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`screen 300 includes a battle display region 310 formed by one or more frames.”
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`Ex. 1001, 6:18-20. A person of ordinary skill in the art would understand that the
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`independent claims describe and claim the invention as a game display divided into
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`frames with panels disposed within. Ex. 2002 ¶¶ 50-52; 57-59. The independent
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`claims thus cover the preferred embodiment of the ’583 patent, and the preferred
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`embodiment captures the improvements described throughout the specification of
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`the ’583 patent.
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`2
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`Third, Petitioner admits in its Reply that at least dependent claims 2-4 and
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`10 contain express limitations that capture aspects of the improvements disclosed
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`in the specification of the ’583 patent. Reply at 3. Petitioner wrongly alleges that
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`the other dependent claims do not capture the improvements disclosed in the ’583
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`patent. For example, dependent claim 5 recites “executing the divisions in which
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`the panels are disposed by the panel layout function, based on panel information
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`indicating characteristics of the panels disposed in the divisions.” Ex. 1001, 54-57.
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`The impact on the outcome of a battle based on the capabilities of panels is an
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`aspect of the inventive gameplay mechanics disclosed—and claimed—in the ’583
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`patent. Ex. 2002 ¶ 23. As another example, claim 11 recites “text display portions
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`for displaying texts” and claim 12 recites frame portions that are “constructed in
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`different colors.” Ex. 1001, 10:6-7, 10:12-16. These are additional visual
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`improvements described and claimed by the ’583 patent. Ex. 2002 ¶ 29.
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`II. Under Berkheimer, the Petition Fails in its Burdens of Proof and
`Persuasion.
`The specification of the ’583 patent identifies known problems in the art,
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`describes solutions to those problems, and claims them with specificity.
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`Petitioner’s assertions to the contrary are wrong, largely because Petitioner chose
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`to analyze only isolated portions of the claim language—e.g., “storing, selecting,
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`disposing of, displaying, and emphasizing panels in a video game”—rather than
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`the challenged claim limitations in their entirety, and as an ordered combination.
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`3
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`
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`In other words, Petitioner failed to meet its burden. OIP Techs., Inc. v.
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`Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (requiring the
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`“consider[ation of] the elements of each claim both individually and as an ordered
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`combination”) (internal quotations and citation omitted).
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`
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`Petitioner claims it identified “seven separate citations to evidence from the
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`’583 specification and relies on nine different precedential cases.” Reply at 4.
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`First, precedential cases are not evidence, and none of those cases shows what was
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`“well-understood, routine, and conventional” in the relevant art and at the time of
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`the ’583 patent. Rather, only Patent Owner offered evidence on that point, which
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`establishes the claims recite patent-eligible subject matter. Second, the handful of
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`citations by Petitioner are insufficient to meet Petitioner’s burden—none of
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`Petitioner’s cites to the specification contradict improvements to a graphical user
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`interface that the ’583 patent describes and claims. For instance, Petitioner alleged
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`“panels” were known in the art, citing 1:31-40 of the ’583 patent. Pet. 22. But the
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`cited portion contains no mention of panels at all, and Petitioner has not provided
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`evidence as to why a person of ordinary skill would consider panels to be known in
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`the art. Petitioner failed to meet its burden, and the petition should be denied.
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`
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`Patent Owner does not suggest that there is any requirement for expert
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`testimony in these proceedings. However, it was Petitioner’s burden to proffer
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`evidence—including expert testimony if it wished—in the Petition. Petitioner
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`4
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`chose not to do so. In view of Berkheimer, Petitioner’s arguments in the reply
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`ignore the relevant holding of that case: “The question of whether a claim element
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`or combination of elements is well-understood, routine and conventional to a
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`skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc.,
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`881 F.3d 1360, 1368 (Fed. Cir. 2018).
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`
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`Petitioner has failed to provide any evidence on how a skilled artisan would
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`regard the claim elements, alone or in combination. Patent Owner proffered the
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`testimony of David Crane, which stands unrebutted. Petitioner cannot resolve
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`factual questions of what was well-understood, routine, and conventional to a
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`skilled artisan through attorney argument alone. In view of Petitioner’s failure to
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`meet its burden, the petition should be denied.
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`III. Conclusion.
`Petitioner has provided nothing more than unsupported attorney argument
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`that is insufficient to meet its burden. Petitioner failed to conduct a proper analysis
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`of the claim language under § 101, failed to analyze the claims from the
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`perspective of a person of ordinary skill, and failed to rebut the testimony of David
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`Crane. The Board should deny the petition.
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`Dated: June 22, 2018
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`Respectfully submitted,
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`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
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`5
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`Email:
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`Backup Counsel
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`Andrew Rinehart
`Reg. No. 75,537
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
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`Telephone: 336-607-7312
`arinehart@kilpatricktownsend.com
`
`Fax: 336-607-7500
`Email:
`
`Lead Counsel
`John C. Alemanni
`Reg. No. 47,384
`42088 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`Office: 919-420-1724
`Fax: 919-420-1800
`jalemanni@kilpatricktownsend.com
`Backup Counsel
`Scott E. Kolassa
`Reg. No. 55,337
`Menlo Park, CA 94025
`Office: 650-324-6349
`Fax: 650-326-2422
`skolassa@kilpatricktownsend.com
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`1080 Marsh Road
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`Email:
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`
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of Patent Owner’s Sur-Reply
`has been served electronically via email upon the following:
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`Dated: June 22, 2018
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`Jennifer R. Bush
`Michael J. Sacksteder
`Fenwick & West LLP
`JBush-PTAB@fenwick.com
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`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
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`7
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