Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 45
`Mailed: August 14, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00029
`Patent 9,636,583 B2
`____________
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE,
`and CARL M. DEFRANCO, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

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`PGR2018-00029
`Patent 9,636,583 B2
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`
`I.
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant review of
`claims 1–15 of U.S. Patent No. 9,636,583 B2 (“the ’583 patent”) (Ex. 1001)
`pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”). Paper 13. With our authorization,
`Petitioner filed a Reply to Patent Owner’s Preliminary Response and Patent Owner
`filed a Sur-Reply. Papers 18, 19.
`On August 21, 2018, we issued a Decision ordering that “pursuant to 35
`U.S.C. § 324, a post-grant review is hereby instituted for claims 1–15 of the ’583
`patent with respect to all grounds set forth in the Petition.” Paper 21, 21 (“Dec.”)1
`After institution, Patent Owner filed a Patent Owner’s Response (Paper 26; “PO
`Resp.”), Petitioner filed a Petitioner’s Reply to Patent Owner’s Response (Paper
`33; “Pet. Reply”), and Patent Owner filed a Patent Owner’s Sur-Reply (Paper 35;
`“PO Sur-Reply.”). On oral hearing was held on June 19, 2019. Paper 43; “Tr.”
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine that
`Petitioner has met its burden of showing, by a preponderance of the evidence, that
`claims 1–15 of the ’583 patent are unpatentable.
`
`The ’583 Patent
`A.
`The ’583 patent relates generally to a method of displaying a battle scene for
`a computer game in which users do battle against each other using cards or
`“panels” collected in the game. Ex. 1001, 1:31–44, 4:18–22. The ’583 patent
`states that a card game system in which “the user configures a deck with cards used
`
`
`1 Patent Owner filed a Request for Rehearing (Paper 23), which was denied. Paper
`25 (“Req.”).
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`PGR2018-00029
`Patent 9,636,583 B2
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`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. . . . is
`familiar to many users today.” Ex. 1001, 1:36–41. According to the ’583 patent,
`“since the use of a two-dimensional card in the battle scene is sometimes boring,
`there have been calls for improvement.” Ex. 1001, 1:42–43. To address this
`problem, the ’583 patent describes consecutively emphasizing panels when
`displaying the battle scene, so that the battle proceeds in a cartoon or movie-like
`format, thus, giving the user an improved visual effect. Ex. 1001, 6:36–46, 7:36–
`38, 7:54–58.
`
`Related Matters
`B.
`Petitioner identifies the following matter: GREE, Inc. v. Supercell K.K.,
`Case 2017 (Yo) No. 22165 in Tokyo District Court, associated with related patent
`JP 6,125,128. Pet. 1–2. Petitioner indicates that the ’583 patent is a continuation
`of U.S. Application Ser. No. 14/291,358, which claims the benefit of Japanese
`Patent Application No. 2013-116039, which published as JP 6,125,128. Pet. 1; see
`Ex. 1001, (63), (30). Patent Owner identifies PGR2018-00047 as involving U.S.
`Patent No. 9,770,659 B2, which is related to the ’583 patent. Paper 6, i.
`
`Illustrative Claim
`C.
`Claims 1–15 are pending and challenged, of which claims 1, 14, and 15 are
`independent. Independent claim 1, which is representative, is reproduced below:
`1.
`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:
`a data storage function of storing a first panel database that
`includes a plurality of panels that the first user possesses, and a second
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`panel database that includes a plurality of panels that the second user
`possesses;
`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;
`a panel layout function of disposing the panels selected by the
`panel selection function in the divisions; and
`a screen display control function of displaying the game display
`screen on a screen display unit, wherein
`the data storage function further stores points set for the first user,
`which are decreased by disposing a panel,
`the panel selection function selects a panel from the first panel
`database according to the points set for the first user,
`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
`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.
`
`The Alleged Grounds of Unpatentability
`D.
`The Petition asserts that claims 1–15 of the ’583 patent are unpatentable as
`being directed to patent ineligible subject matter under 35 U.S.C. § 101 (Pet. 16–
`31), lacking adequate written description under 35 U.S.C. § 112(a) (Pet. 31–38),
`and being indefinite under 35 U.S.C. § 112(b) (Pet. 39–42).
`
`Eligibility of Patent for Post-Grant Review
`E.
`The post-grant review provisions of the Leahy-Smith America Invents Act
`(“AIA”)2 apply only to patents subject to the first inventor to file provisions of the
`
`
`2 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`Patent 9,636,583 B2
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`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions apply to
`any application for patent, and to any patent issuing thereon, that contains or
`contained at any time a claim to a claimed invention that has an effective filing
`date on or after March 16, 2013. AIA § 3(n)(1). Furthermore, “[a] petition for a
`post-grant review may only be filed not later than the date that is 9 months after the
`date of the grant of the patent or of the issuance of a reissue patent (as the case may
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the same).
`Petitioner asserts that the instant Petition is being filed within nine months of
`the May 2, 2017 issue date of the ’583 patent. Pet. 2. Further, the ’583 patent was
`filed on September 1, 2016 and claims benefit of several priority dates, the earliest
`of which is May 31, 2013. Ex. 1001, (22), (30). Patent Owner does not contest
`Petitioner’s assertions. See generally PO Resp.; PO Sur-Reply. We are persuaded
`that Petitioner has met its burden of showing, by a preponderance of the evidence,
`that the ’583 patent is eligible for post-grant review.
`
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`whether Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–15 of the ’583 patent are unpatentable.
`A.
`Claim Construction
`As a step in our analysis for determining whether to institute a review, we
`determine the meaning of the claims. The instant Petition was filed prior to the
`effective date of the rule change that replaces the broadest reasonable interpretation
`(“BRI”) standard. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (codified at 37 C.F.R. § 42.200(b)
`(2019)) (“This rule is effective on November 13, 2018 and applies to all IPR, PGR
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`and CBM petitions filed on or after the effective date.”). We, therefore, apply the
`BRI standard in this proceeding. See 37 C.F.R. § 42.200 (2017). Under that
`standard, in a post-grant review, a claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable construction standard,
`claim terms are generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a
`“claim term will not receive its ordinary meaning if the patentee acted as his own
`lexicographer and clearly set forth a definition of the disputed claim term in either
`the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Neither party requests construction of any particular claim limitation. See
`generally Pet.; PO Resp.; Pet. Reply; PO Sur-Reply. We also see no need for any
`express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[O]nly [those] terms [need be
`construed] that are in controversy, and only to the extent necessary to resolve the
`controversy.” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999))).
`
`B.
`
`Claims 1–15 as Directed to Patent Ineligible
`Subject Matter Under 35 U.S.C. § 101
`Petitioner contends that claims 1–15 do not recite patent eligible subject
`matter under 35 U.S.C. § 101. Pet. 16–31 (citing Exs. 1001–1006). Patent Owner
`disagrees. PO Resp. 2–59 (citing Exs. 1001, 2002). Petitioner replies. Pet. Reply
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`1–22 (citing Exs. 1001, 1009, 1010, 2001–2003). Patent Owner responds further.
`PO Sur-Reply 1–21 (citing Exs. 1001, 1009, 1010, 2002, 2007, 2008).
`1.
`Relevant Law
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
`Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions:
`“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
`Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
`In determining whether a claim falls within an excluded category, we are
`guided by the Supreme Court’s two-step framework, described in Mayo and Alice.
`Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
`U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine
`what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face,
`the claims before us are drawn to the concept of intermediated settlement, i.e., the
`use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
`U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic
`concept of hedging, or protecting against risk.”).
`Concepts determined to be abstract ideas, and thus, patent ineligible, include
`certain methods of organizing human activity, such as fundamental economic
`practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical
`formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
`(Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent
`eligible include physical and chemical processes, such as “molding rubber
`products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing,
`making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
`(quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1853))); and
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`manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S.
`780, 785 (1876))).
`In Diehr, the claim at issue recited a mathematical formula, but the Supreme
`Court held that “a claim drawn to subject matter otherwise statutory does not
`become nonstatutory simply because it uses a mathematical formula.” Diehr, 450
`U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more
`than a process for molding rubber products and not as an attempt to patent a
`mathematical formula.”). Having said that, the Supreme Court also indicated that a
`claim “seeking patent protection for that formula in the abstract . . . is not accorded
`the protection of our patent laws, . . . and this principle cannot be circumvented by
`attempting to limit the use of the formula to a particular technological
`environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
`commonplace that an application of a law of nature or mathematical formula to a
`known structure or process may well be deserving of patent protection.”).
`If the claim is “directed to” an abstract idea, we turn to the second step of the
`Alice and Mayo framework, where “we must examine the elements of the claim to
`determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
`claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221
`(quotation marks omitted). “A claim that recites an abstract idea must include
`‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
`designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
`“[M]erely requir[ing] generic computer implementation[] fail[s] to transform that
`abstract idea into a patent-eligible invention.” Id.
`After the filing of the Petition and Patent Owner’s Response, but before the
`filing of Petitioner’s Reply to Patent Owner’s Response and Patent Owner’s Sur-
`Reply, the U.S. Patent and Trademark Office published revised guidance on the
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`application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
`Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
`whether the claim recites:
`(1) any judicial exceptions, including certain groupings of abstract
`ideas (i.e., mathematical concepts, certain methods of organizing
`human activity such as a fundamental economic practice, or mental
`processes); and
`(2) additional elements that integrate the judicial exception into a
`practical application (see Manual of Patent Examining Procedure
`(“MPEP”) § 2106.05(a)–(c), (e)–(h)).
`See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
`exception and (2) does not integrate that exception into a practical application, do
`we then look to whether the claim:
`(3) adds a specific limitation beyond the judicial exception that is not
`“well-understood, routine, conventional” in the field (see MPEP
`§ 2106.05(d)); or
`(4) simply appends well-understood, routine, conventional activities
`previously known to the industry, specified at a high level of generality,
`to the judicial exception.
`See Guidance, 84 Fed. Reg. at 56.
`2. Whether the Claims Are Directed to an Abstract Idea
`a.
`Petitioner’s Assertions in the Petition
`Petitioner asserts that the claims are directed to “displaying a video game
`based on stored panel information,” which Petitioner asserts is an abstract idea.
`Pet. 12, 21. In particular, Petitioner argues that the claims are directed to an
`abstract idea because the claim limitations “comprise only functional results –
`storing a panel database, selecting a panel, disposing of the panel, displaying the
`game screen, [and] emphasizing a panel.” Pet. 22. Petitioner further argues that
`the claims are not limited to any specific means or technology for achieving these
`functional results, thus, covering any system that provides these results, and that
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`the ’583 patent does not disclose any technical improvements to the functions of
`computers or video game technology. Pet. 22. Petitioner cites various Federal
`Circuit cases in support of its assertion that the claims of the ’583 patent are
`directed to an abstract idea. For example, Petitioner cites Affinity Labs, in which
`claims directed to “the function of wirelessly communicating regional broadcast
`content to an out-of-region recipient, not a particular way of performing that
`function” were determined to be directed to an abstract idea, and Two-Way Media,
`in which claims reciting a method for routing information, using “result-based
`functional language” without “sufficiently describ[ing] how to achieve th[o]se
`results in a non-abstract way,” were determined to be directed to an abstract idea.
`See Pet. 21–25 (citing Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
`1253, 1258–59 (Fed. Cir. 2016); Two-Way Media Ltd. v. Comcast Cable
`Commc’ns, LLC, 874 F.3d 1329, 1337–38 (Fed. Cir. 2017)). According to
`Petitioner, all three independent claims recite “nothing more than commands to be
`executed by a computer to control a video game.” Pet. 12–13.
`b.
`Patent Owner’s Assertions in Patent Owner’s Response
`Patent Owner responds that the claims are not directed to an abstract idea, as
`asserted by Petitioner, but to “both the mechanics and progression of the battle
`game itself and the graphical user-interface improvements to the display of such a
`game.” PO Resp. 19; see also PO Resp. 2–14, 18–32 (further assertions about the
`same). Patent Owner responds additionally that part of the error in Petitioner’s
`analysis is a failure to analyze each and every claim limitation both individually
`and as an ordered combination. PO Resp. 40–59. Patent Owner responds further
`that neither “the mechanics and progression of the battle game itself” nor “the
`graphical user-interface improvements to the display of such a game,” is “a purely
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`mathematical concept, a method of organizing human activity, a purely mental
`process, or a fundamental economic practice.” PO Resp. 19.
`c.
`Petitioner’s Assertions in Petitioner’s Reply to
`Patent Owner’s Response
`Petitioner replies that the claims recite result-oriented functions without non-
`abstract means, such as a specific, structured user interface, for achieving them.
`Pet. Reply 1–7. Petitioner replies further that the claims provide no improvement
`to computer functionality. Pet. Reply 7–8. Petitioner replies additionally that the
`claims recite an abstract “way of managing a game and playing a game,” as
`follows:
`Like Smith and Planet Bingo, the ’583 patent broadly recites rules
`governing a game, such as storing a “points set” which is “decreased
`by disposing a panel” and “divisions where a panel selected from the
`first panel database is allowed to be disposed[.]” These provide no
`technical advance, but are merely “a way of managing the game and
`playing the game.”
`In In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed.
`Cir. 2018) the Federal Circuit affirmed its holdings in Smith and Planet
`Bingo. It found that a patent claiming a method of playing a dice game
`was abstract. By analogy to Smith and Planet Bingo, the Court
`determined that the claimed method amounted to no more than “rules
`for playing a game,” which is abstract in that it amounted to a method
`of organizing human activity. Id. at 1160.
`Pet. Reply 9–10.
`d.
`Patent Owner’s Assertions in Patent Owner’s Sur-Reply
`Patent Owner answers that the claims are not directed to any of the abstract
`ideas under the Guidance. PO Sur-Reply 1–5. In doing so, Patent Owner asserts
`the following: “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
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`should be rejected at least because Petitioner never raised it in the Petition . . . .”
`PO Sur-Reply 1. Patent Owner asserts that “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.”
`PO Sur-Reply 3.
`Patent Owner answers further that even if Petitioner is correct, the claims are
`still not directed to an abstract idea, because “the recited exception is integrated
`into a practical application” under the Guidance. PO Sur-Reply 5 (quoting
`Ex. 2007, 16). Specifically, Patent Owner answers as follows:
`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.
`PO Sur-Reply 6; see also PO Sur-Reply 14–15 (responding to related
`characterizations of their expert’s testimony by Petitioner).
`Patent Owner answers additionally that the claims are analogous to other
`claims found to be subject matter eligible by the Federal Circuit. PO Sur-Reply 7–
`13, 19–20.
`e. Whether “Displaying a Video Game Based on Stored Panel
`Information” Is an Abstract Idea
`We address first Petitioner’s original assertion that the claims are directed to
`the abstract idea of “displaying a video game based on stored panel information,”
`before turning to its later assertion that the claims recite an abstract “way of
`managing a game and playing a game.” Under the Guidance, abstract ideas are
`“mathematical concepts, certain methods of organizing human activity such as a
`fundamental economic practice, or mental processes.” 84 Fed. Reg. at 52–55.
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`Under the Guidance, we agree with Patent Owner that Petitioner has not met its
`burden of showing how it’s explicit characterization, in the Petition, of what the
`claims are directed to, “displaying a video game based on stored panel
`information,” falls within any of “mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic practice, or mental
`processes.” PO Resp. 19. An analysis of independent claim 1 explains how
`Petitioner failed to meets its burden.
`Petitioner did not assert adequately that “displaying a video game based on
`stored panel information” is a mathematical concept. Specifically, Petitioner did
`not argue that “displaying a video game based on stored panel information”
`involved “mathematical relationships, mathematical formulas or equations,
`mathematical calculations.” 84 Fed. Reg. at 52. And our own comparison of
`“displaying a video game based on stored panel information,” and the claims at
`issue in the Supreme Court and Federal Circuit cases cited at footnote 12 of the
`Guidance, results in the same determination. For example, the claims at issue in
`Diehr explicitly recited a mathematical formula, the Arrhenius equation, the claims
`at issue in Flook explicitly recited the mathematical formula “Bo + K,” and the
`claims at issue in Benson explicitly recited several mathematical formulas,
`including “adding a binary ‘1’ to the first position of said register.” “Displaying a
`video game based on stored panel information” is not similar to any of those
`limitations. Similar to the claims at issue in Diehr, Flook, and Benson, the claims
`at issue in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018)
`explicitly recited the mathematical calculation of “generating a distribution
`function using a re-sampled statistical method and a bias parameter,” the claims at
`issue in Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
`F.3d 1344 (Fed. Cir. 2014) explicitly recited several mathematical relationships,
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`including “first data for describing a device dependent transformation of color
`information content of the image to a device independent color space,” and the
`claims at issue in Bancorp Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.),
`687 F.3d 1266, 1280 (Fed. Cir. 2012) explicitly recited several mathematical
`calculations, including “calculating a policy value and a policy unit value for the
`current day.” Again, “displaying a video game based on stored panel information”
`is not similar to any of those limitations.
`Petitioner also did not assert adequately that “displaying a video game based
`on stored panel information” is one of the certain methods of organizing human
`activity set forth in the Guidance. Specifically, Petitioner did not argue that
`“displaying a video game based on stored panel information” involves any of the
`following:
`fundamental economic principles or practices (including hedging,
`insurance, mitigating risk); commercial or legal interactions (including
`agreements in the form of contracts; legal obligations; advertising,
`marketing or sales activities or behaviors; business relations);
`managing personal behavior or relationships or interactions between
`people (including social activities, teaching, and following rules or
`instructions)
`84 Fed. Reg. at 52. Similar to our analysis concerning mathematical concepts, our
`own analysis comparing “displaying a video game based on stored panel
`information,” and the claims at issue in the Supreme Court and Federal Circuit
`cases cited at footnote 13 of the Guidance comes to the same determination. For
`example, “displaying a video game based on stored panel information” is not
`similar to any claim limitations concerning “hedging” or “mitigating risk,” which
`were held to be fundamental economic practices in Alice and Bilski, respectively.
`Similarly, the claims at issue in buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350
`(Fed. Cir. 2014) included limitations concerning “creating a contractual
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`relationship—a ‘transaction performance guaranty,” and the claims at issue in In re
`Comiskey, 554 F.3d 967 (Fed. Cir. 2009) included limitations concerning
`“resolving a legal dispute between two parties by the decision of a human
`arbitrator.” Again, “displaying a video game based on stored panel information” is
`not similar to any claim limitations in those cases.
`Additionally, the claims at issue in Interval Licensing LLC, v. AOL, Inc., 896
`F.3d 1335, 1344 (Fed. Cir. 2018) included limitations concerning “the
`nontechnical human activity of passing a note to a person who is in the middle of a
`meeting or conversation,” the claims at issue in Verified, Inc. v. Election Systems &
`Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) included limitations
`concerning “voting, verifying the vote, and submitting the vote for tabulation,” and
`In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) included limitations concerning
`“rules for conducting a wagering game.” Of those cases, the limitations in In re
`Smith come the closest to “displaying a video game based on stored panel
`information.” A closer examination of representative claim 1 at issue in In re
`Smith, however, includes, at best, some limitations that may be similar to “based
`on stored panel information,” such as “the dealer examining respective hands . . . ,”
`but nothing analogous to “displaying a video game.”
`Finally, Petitioner did not assert adequately that “displaying a video game
`based on stored panel information” is a mental process, in that Petitioner does not
`argue that “displaying a video game based on stored panel information” involves
`“concepts performed in the human mind (including an observation, evaluation,
`judgment, opinion).” 84 Fed. Reg. at 52. Our own analysis comes to the same
`determination. To be sure, we are mindful that the Guidance says the following:
`“If a claim, under its broadest reasonable interpretation, covers performance in the
`mind but for the recitation of generic computer components, then it is still in the
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`PGR2018-00029
`Patent 9,636,583 B2
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`mental processes category unless the claim cannot practically be performed in the
`mind.” 84 Fed. Reg. at 52 n.14. To that end, if the concept at issue was
`“displaying . . . stored panel information,” that could possibly be considered an
`observation, i.e., the stored panel information itself can be observed, and it can be
`displayed using a generic computer component, such as a monitor. We find,
`however, that displaying a “video game” itself is not something that can
`“practically be performed in the mind,” with generic computer components or
`otherwise. A review of the claims at issue in the Supreme Court and Federal
`Circuit precedent cited at footnotes 14 and 15 of the Guidance further support our
`determination.
`Our analysis is the same for independent claims 14 and 15, as well as
`dependent claims 2–13. Petitioner has not met its burden of showing how it’s
`explicit characterization, in the Petition, of what the claims are directed to,
`“displaying a video game based on stored panel information,” falls within any of
`“mathematical concepts, certain methods of organizing human activity such as a
`fundamental economic practice, or mental processes.”
`f.
`Whether a “Way of Managing a Game and
`Playing a Game” Is Directed to an Abstract Idea
`i. Whether this Argument Should Be Considered
`In its Reply, Petitioner asserts that the claims are directed to a “way of
`managing a game and playing a game,” which is nothing more than one of certain
`methods of organizing human activity under several Federal Circuit cases,
`including In re Smith. Pet. Reply 9–10. Under the Guidance, certain methods of
`organizing human activity are an abstract idea. 84 Fed. Reg. at 52. Indeed, as
`indicated above, the Guidance explicitly cites In re Smith as an example of claims
`reciting one of certain methods of organizing human activity, and characterizes In
`re Smith as follows: “In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding
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`Patent 9,636,583 B2
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`that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are
`abstract).” 84 Fed. Reg. at 52 n.13.
`In its Sur-Reply, Patent Owner asserts that this is a new argument, in that
`Petitioner did not advance this line of reasoning in its Petition. PO Sur-Reply 1.
`We agree that this line of reasoning was not explicitly advanced by Petitioner in its
`Petition.3
`
`
`3 Although not dispositive, the assertion does have some basis in the Petition.
`Specifically, the first substantive paragraph of the DESCRIPTION OF THE ’583
`PATENT portion of the Petition reads as follows:
`The ’583 patent is directed to the idea of displaying a video game
`based on stored panel information. The specification describes a game
`program, a game processing method, and an information processing
`apparatus that controls a game in which two characters battle against
`one another. Each describes the same series of generalized steps: a data
`storage step, a panel selection step, a panel layout step, a screen display
`control step, and an emphasized display step. Id. at 4:18–22. These
`steps, shown in Figure 1 below, purport to provide a user of the battle
`video game with “a high visual effect” by displaying a video game
`based on information in panels possessed by the characters. Ex. 1001,
`1:48–51.
`Pet. 3 (emphasis added; footnote omitted). The first and last sentences are about
`“displaying a video game based on stored panel information,” which was analyzed
`above. The third sentence foreshadows the bulk of the Petition’s later arguments
`about generic functional claiming. The second sentence, however, is undisputedly
`about a game itself. This is reflected later in the first substantive paragraph of
`argument, as follows:
`The ’583 patent contains 15 claims. Claims 1, 14, and 15 are
`independent. Each is directed to the same abstract concept of
`displaying a video game based on stored panel information. Claim 1 is
`a directed to a game program, claim 14 is a method claim for a game,
`and claim 15 is directed to an apparatus controlling a game. All th