Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper No. 21
`Mailed August 20, 2018
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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.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`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,
`
`I.
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`Patent 9,636,583 B2
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`Petitioner filed a Reply to Patent Owner’s Preliminary Response, Paper 18 (“Pet.
`Reply”) and Patent Owner filed a Sur-Reply. Paper 19 (“PO Sur-Reply”). We
`have jurisdiction under 35 U.S.C. § 324(a), which provides that a post-grant review
`may be instituted only if “the information presented in the petition . . .
`demonstrate[s] that it is more likely than not that at least 1 of the claims challenged
`in the petition is unpatentable.”
`Petitioner challenges the patentability of claims 1–15 of the ’583 patent
`under 35 U.S.C. §§ 101, 112(a), and 112(b). After considering the Petition, the
`Preliminary Response, the Reply, and the Sur-Reply, as well as all supporting
`evidence, we are persuaded that it is more likely than not that Petitioner would
`prevail in showing that at least one of the challenged claims is unpatentable under
`§ 101.
`Applying the standard set forth in 35 U.S.C. § 324(a), we institute a post-
`grant review of claims 1–15 of the ’583 patent.
`
`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
`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
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`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
`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
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`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 non-statutory 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”)1 apply only to patents subject to the first inventor to file provisions of the
`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).
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`
`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). On this record, we agree with
`Petitioner 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 the threshold standard, under 35 U.S.C. § 324(a), for
`instituting review.
`
`Claim Construction
`A.
`As a step in our analysis for determining whether to institute a review, we
`determine the meaning of the claims for purposes of this Decision. 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). We determine that it is unnecessary to
`expressly construe any claim terms at this time.
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`Claims 1–15 as Directed to Non-Statutory
`B.
`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. Prelim. Resp. 9–34 (citing Exs. 1001, 2002). Petitioner replies. Pet.
`Reply 1–5 (citing Ex. 1001). Patent Owner responds further. PO Sur-Reply 1–5
`(citing Exs. 1001, 2002).
`
`Relevant Law
`1.
`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. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).
`In determining whether a claim falls within the excluded category of abstract
`ideas, we are guided by the Supreme Court’s two-step framework, described in
`Alice and Mayo. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289, 1296–97 (2012)). In accordance with that framework,
`we first determine whether the claim is “directed to” a patent-ineligible abstract
`idea. See Alice, 134 S. Ct. at 2356 (“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.”).
`The patent-ineligible end of the spectrum includes fundamental economic
`practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611), mathematical
`formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)), and basic tools of
`scientific and technological work (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
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`On the patent-eligible side of the spectrum are physical and chemical processes,
`such as curing rubber (Diamond v. Diehr, 450 U.S. 175, 184 n.7 (1981)) and
`“tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting
`ores,” and a process for manufacturing flour (Benson, 409 U.S. at 69).
`If the claim is “directed to” a patent-ineligible abstract idea, we turn to the
`second step of the Alice/Mayo framework and consider the elements of the claim,
`both individually and as an ordered combination, to determine whether the
`additional elements transform the nature of the claim into a patent-eligible
`application of the abstract idea. Alice, 134 S. Ct. at 2355. This second step is a
`search for an “inventive concept”—an element or combination of elements
`sufficient to ensure that the claim amounts to “significantly more” than the abstract
`idea itself. Id.
`2. Whether the Claims Are Directed to an Abstract Idea
`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
`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 the ’583 patent does not disclose any technical improvements to 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-
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`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, 574 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.
`In response, Patent Owner argues:
`The claims recite far more than the mere “functional results – storing a
`panel database, selecting a panel, disposing of the panel, displaying the
`game screen, emphasizing a panel” alleged by Petitioner. Pet. 22. As
`an example, element [1a] recites “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.” . . . Rather than merely “storing
`a panel database” as the petition asserts, the claim provides the
`implementation detail on how panels are stored—via two separate
`databases, one corresponding to each user, with each database
`maintaining the respective panels that each user has acquired.
`Prelim. Resp. 27–28.
`We are persuaded by Petitioner that the claims are directed to “displaying a
`video game based on stored panel information,” and that they recite “only
`functional results – storing a panel database, selecting a panel, disposing of the
`panel, displaying the game screen, [and] emphasizing a panel.” We are further
`persuaded that such a concept is sufficiently similar to “wirelessly communicating
`regional broadcast content,” as in Affinity Labs, and “routing information,” as in
`Two-Way Media, to also be considered abstract ideas, in that, like in Affinity Labs
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`and Two-Way Media, the claims employ results-based functional language without
`reciting sufficiently specific means or technology for achieving those functional
`results. For example, claim 1 recites a “data storage function” of storing databases
`and storing points set for the first user, but does not indicate specific means or
`technology for carrying out that function, other than that it is performed by a
`general-purpose computer that executes instructions. Ex. 1001, 9:13–16.
`Although claim 1’s recitation of the “data storage function” includes, as Patent
`Owner argues, an “implementation detail” of two separate databases, one
`corresponding to each user, with each database including respective user-possessed
`panels, we are persuaded that the recitation is no more than a generalized step that
`does not amount to a sufficiently non-abstract description of how the data is stored.
`See Two-Way Media, 574 F.3d at 1337 (“Claims directed to generalized steps to be
`performed on a computer using conventional computer activity are not patent
`eligible.”). The claims further recite a “panel selection function,” “panel layout
`function,” “screen display control function,” “division execution function” (claims
`2 and 5), and “emphasized display function” (claim 4) without reciting specific
`means or technology, other than the general-purpose computer, for carrying out
`those functions.
`We are further persuaded that the ’583 patent does not disclose technical
`improvements to computers or video game technology. As noted above, all the
`technical components recited in the claims appear to do no more than embody
`result-based functional language that does not indicate specific means or
`technology for carrying out that function. We are persuaded such generalized
`technical components and functions are not claimed in a manner that indicates a
`technical improvement to computers or video game technology. Furthermore, the
`Specification supports such a determination. For example, the Specification of the
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`’583 patent discloses that “[t]he game program can be executed in a server
`apparatus or a user terminal” and that the computer-readable recording medium on
`which the game program is recorded “is not particularly limited as long as the
`recording media can be read by the computer such as a CD-ROM and a DVD.”
`Ex. 1001, 4:63–5:2. The Specification further indicates that “the information
`processing apparatus 200 can be a server apparatus or a user terminal such as a
`mobile phone or a smart phone.” Ex. 1001, 6:9–13. Figure 2 illustrates the
`information processing apparatus as functionally-labeled or technologically generic
`blocks such as “data storage unit,” “first panel database,” “control unit,” “panel
`selection section,” and “panel layout section.” We are persuaded that the ’583
`patent discloses non-specific or generic, conventional components that lack any
`special features that are key to effecting the claimed functions, and, thus, does not
`appear to provide any technical improvements to computers or video game
`technology. See Trading Techs. Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1005
`(Fed. Cir. 2017) (“ineligible claims generally lack steps or limitations specific to
`solution of a problem, or improvement in the functioning of technology.”); Affinity
`Labs, 838 F.3d at 1262 (“The patent in this case is not directed to the solution of a
`‘technological problem’ . . .nor is it directed to an improvement in computer or
`network functionality. Instead, it claims the general concept of out-of-region
`delivery of broadcast content through the use of conventional devices, without
`offering any technological means of effecting that concept.”).
`Patent Owner disagrees with Petitioner’s characterization of the claims as
`being directed to any means of “displaying a video game based on stored panel
`information,” and asserts that the claims are directed rather to “the progression of a
`battle game through the storage and selection of panels to be disposed in a sub-
`divided display region of the screen according to particular criteria as recited . . . .”
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`Prelim. Resp. 30. Although Petitioner’s and Patent Owner’s characterizations of
`the claims are both plausible, we are persuaded that Petitioner’s is correct, because
`the claim limitations overall appear to be more so geared toward displaying the
`game than toward progressing a battle within the game. For example, the term
`“display” appears several times in the claims, including in the independent claims,
`whereas the term “progress” only appears once in each of dependent claims 8 and
`13. In another example, removal of the “battle game” related claim terms results in
`an understandable claim concerning a display, whereas the removal of the
`“display” related terms does not appear to be practical. Additionally, the
`Specification’s emphasis on the invention providing a “high visual effect”
`indicates that the claims are directed to some kind of display. See Ex. 1001, 1:41–
`50, 3:49–52.
`Patent Owner asserts that, even under Petitioner’s characterization of the
`claims as being directed to “displaying a video game based on stored panel
`information,” the claims are not directed to an abstract idea because they are
`directed to a known problem associated with card games played on electronic
`devices—“the use of a two-dimensional card in the battle scene is sometimes
`boring, [and] there have been calls for improvement”—and provide a solution of a
`“high visual effect”2 to improve the display of the card game system. Prelim.
`
`
`2 We note that none of independent claims 1, 14, and 15 recite limitations
`corresponding to the “high visual effect” that Patent Owner, as well as the ’583
`patent (see Ex. 1001, 1:42–50), describes as being the solution to the known
`problem of “the use of a two-dimensional card in the battle scene [being]
`sometimes boring.” The Specification discusses providing the user with an
`improved visual effect by, for example, emphasizing and displaying panels in
`executed frames and displaying the battle in a format like a cartoon or movie. Ex.
`1001, 6:36–46, 7:44–57. None of the limitations of independent claims 1, 14, and
`15 correspond to disclosure of improved visual effect.
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`Resp. 25–26 (citing Ex. 1001, 1:42–44, 1:48–51). For example, Patent Owner
`cites Trading Techs., in which “claims requir[ing] a specific, structured graphical
`user interface paired with a prescribed functionality directly related to the graphical
`user interface's structure that is addressed to and resolves a specifically identified
`problem in the prior state of the art” met the eligibility standards of Step 1 of the
`Alice/Mayo framework. Prelim. Resp. 26 (citing 675 F. App’x at 1004).
`We disagree with the parallel Patent Owner draws between the claims of the
`’583 patent and those found to have patent-eligible subject matter in Trading
`Techs. Although the ’583 patent discusses providing a “high visual effect”
`solution to address a known problem of “the use of a two-dimensional card in the
`battle scene [being] sometimes boring,” the result of Alice/Mayo Step 1 here differs
`from that in Trading Techs. Where the claims in Trading Techs. recited specific,
`structural details of the graphical user interface paired with each corresponding
`functionality directly related to the structure, the claims of the ’583 patent lack
`sufficient structural details of the screen display unit, or any other component of
`the game system, directly corresponding to any of the claimed functions.
`In light of the aforementioned assertions and evidence of record, we are
`persuaded that the claims of the ’583 patent are directed to an abstract idea.
`3. Whether the Claims Contain an “Inventive Concept”
`We next turn to second step of the Alice and Mayo framework. Here, we
`consider the elements of the claims “individually and ‘as an ordered combination’”
`to determine whether the additional elements “‘transform the nature of the claim’
`into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
`Ct. at 1291, 1297).
`In general, Petitioner asserts that the claims of the ’583 patent provide no
`inventive concept because “[a]ll the recited claim elements of the ’583 claims,
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`tangible and otherwise, are conventional, generic and well understood.” Pet. 26.
`In other words, Petitioner asserts that, beyond the abstract idea, the claims recite
`only generic or functionally-named computer components that are fundamental
`tools of a computer and perform routine functions, such as a “server apparatus,”
`“user terminal,” “data storage unit,” “control unit,” “display screen,” and “screen
`display unit.” Pet. 26 (citing Ex. 1001, 10:49–67). Petitioner further argues that
`“the claimed steps of the ’538 patent, which are performed by generic computer
`hardware, are ‘well-understood, routine, conventional activities previously known
`to the industry,’ amounting to no more than ‘generic computer[s] perform[ing]
`generic computer functions.’” Pet. 28 (citing Alice, 134 S. Ct. at 2358–59).
`Petitioner cites Federal Circuit cases that have determined that storing,
`transmitting, retrieving, writing, and displaying data are basic functions of generic
`computers that do not transform abstract ideas into patent-eligible subject matter.
`Pet. 28–29 (citing Smartflash LLC v. Apple Inc., 2017 WL 786431, at *5 (Fed. Cir.
`Mar. 1, 2017); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363,
`1370 (Fed. Cir. 2015); Affinity Labs, 838 F.3d at 1261). According to Petitioner,
`“there is no commensurate technical disclosure for how those solutions are to be
`achieved or any technical or programming advance to achieve the solutions.”
`Pet. 29.
`Patent Owner makes several arguments in response, including asserting that
`the Petition is deficient, and arguing that the claimed use of “panels” was
`previously unknown. On this record, we are persuaded by Petitioner.
`Patent Owner asserts that the Petition is deficient because it fails to
`adequately address all of the limitations of claim 1, both individually and as an
`ordered combination. Prelim. Resp. 15–19. For example, Patent Owner argues
`that Petitioner simply discusses “selecting” or “selecting a panel” while failing to
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`analyze in their entirety the limitations “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”3 and “the panel selection function selects a panel
`from the first panel database according to the points set for the first user” of
`claim 1. Prelim. Resp. 17. We have evaluated the arguments and evidence set
`forth in the Petition, and disagree with Patent Owner on this point. We are
`persuaded that Petitioner addresses sufficiently the elements of claim 1, including
`the aforementioned “panel selection” limitations, in that Petitioner specifically
`addresses the “panel selection function.” See Pet. 28. In particular, Petitioner
`asserts that independent claim 1 fails to provide an inventive concept because it
`recites a “panel selection function,” along with a “data storage function” and
`“panel layout function,” all of which “are no more inventive than storing, selecting,
`and retrieving data, a function the Federal Circuit routinely finds cannot supply an
`inventive concept.” Pet. 28 (citing Smartflash, 2017 WL 786431, at *5).
`Petitioner asserts that these claim elements are “conventional computer methods to
`provide functionally-claimed solutions” with “no commensurate technical
`disclosure for how those solutions are to be achieved or any technical or
`programming advance suggested to achieve the solutions.” Pet. 29. We view
`Petitioner’s discussion of the “panel selection function” as also addressing the
`limitations immediately following each occurrence of the term “panel selection
`function” in claim 1, in that Petitioner argues there is no commensurate technical
`
`
`3 Patent Owner asserts that Petitioner failed to explain how these limitations are
`“either abstract or well-understood, routine, or conventional.” Prelim. Resp. 17.
`Our analysis is the same regardless of whether Patent Owner’s assertion is made
`with respect to Alice/Mayo Step 1 or Step 2, or both.
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`disclosure for how the solutions are to be achieved, with respect to the “panel
`selection” limitations in their entirety. Hence, we are persuaded that Petitioner has
`considered sufficiently the entire “panel selection” limitations in claim 1, and has
`also addressed adequately all the elements of claim 1 individually and as an
`ordered combination.
`Patent Owner further asserts that claim 1 is not representative of the
`dependent claims, because the dependent claims “recite unique limitations not
`found in claim 1 that separately bear on the question of patent eligibility” (Prelim.
`Resp. 13–14), and that Petitioner fails to analyze sufficiently all the limitations of
`the dependent claims (Prelim. Resp. 18–19).4 We disagree and determine, at this
`point in the proceeding, treating claim 1 as representative is appropriate and
`sufficient. The dependent claims further narrow claim 1 and, like claim 1, are
`directed to “displaying a video game based on stored panel information.”
`Furthermore, Petitioner addresses the dependent claims, arguing that they do not
`provide an inventive concept because they are variations within the abstract
`concept of the independent claims, and add nothing more than extra-solution
`activity. Pet. 29–31. For example, Petitioner discusses that claims 2, 3, and 8–13
`“append ordinary game concepts to the claimed method” or “vary how the panels
`are arranged or displayed,” and are “nothing more than obvious choices to be made
`within the abstract concept provided by the independent claims.” Pet. 30 (citing
`Affinity Labs, 838 F.3d at 1264). Petitioner discusses that dependent claims 4
`(reciting an “emphasized display function”) and claims 5–7 (concerning a
`“division execution function”) contain insignificant post-solution steps. Pet. 30–
`31.
`
`
`4 Our analysis is the same regardless of whether Patent Owner’s assertion is made
`with respect to Alice/Mayo Step 1 or Step 2, or both.
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`On a general level, Patent Owner further argues that the Petition is deficient
`because Petitioner only summarily alleges that claim elements are well-understood,
`routine, and conventional, and fails to provide any evidence that the claims employ
`only conventional components and steps, particularly that storing, selecting, or
`disposing of panels were previously well-known and that the limitations of the
`dependent claims are ordinary or conventional. Prelim. Resp. 19–24 (citing
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)). We disagree that no such
`evidence has been provided by Petitioner, in that we are persuaded by Petitioner’s
`contentions that the claim elements corresponding to data storage, panel selection,
`panel layout, and screen display are generic computer functions or components, for
`which Petitioner has provided evidence in the form of citations to the Specification
`and various case law. Pet. 26–29. As noted by Petitioner, the Background section
`of the ’583 patent itself describes a prior art card game played on an electronic
`apparatus, such as a smart phone or a tablet, where each player owns cards
`(corresponding to “panels”) which are used against another player in a game of
`rock-paper-scissors or the like. Pet. 14–15 (citing Ex. 1001, 1:31–40). Petitioner
`further notes that the ’583 patent describes the claimed computer elements,
`including “server apparatus,” “user terminal,” “data storage unit,” “control unit,”
`“display screen,” and “screen display unit” (see claim 15) in a generic manner.
`Pet. 26–28 (citing Ex. 1001, 5:42–45, 5:46–61, 6:9–13, 10:49–67). For example,
`the Specification of the ’583 patent discloses that “the information processing
`apparatus 200 can be a server apparatus or a user terminal such as a mobile phone
`or a smart phone.” Ex. 1001, 6:9–13. The Specification further indicates that the
`computer-readable recording medium on which the game program is recorded “is
`not particularly limited as long as the recording media can be read by the computer
`such as a CD-ROM and a DVD.” Ex. 1001, 4:63–5:2. The use of “such as” and
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`“not particularly limited,” combined with examples of general or well-known
`components (mobile phones, smart phones, CD-ROM, DVD), indicates that the
`claimed computing elements and corresponding functions are generic.
`Furthermore, Petitioner cites numerous cases to further support its assertions that
`certain computer components and their associated functions are generic, and that
`the dependent claims recite insignificant post-solution steps or obvious choices to
`be made within the abstract concept of the independent claims. Pet. 26–31. On the
`record before us, we agree with Petitioner that the Petition provides adequate
`evidentiary and case law support for its assertions that the recited components and
`functions are generic.
`Patent Owner further asserts that the ’583 patent identifies a specific
`complication arising in computer games, namely, two-dimensional cards in a battle
`scene being boring, and proposes an unconventional concept of