UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00029
`U.S. Patent No. 9,636,583
`
`
`
`PATENT OWNER’S REQUEST FOR RECONSIDERATION OF
`DECISION INSTITUTING POST-GRANT REVIEW
`
`
`
`
`
`
`
`
`
`__________________________________
`
`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 REQUEST FOR RECONSIDERATION OF
`DECISION INSTITUTING POST-GRANT REVIEW
`
`
`
`
`
`
`
`
`
`I. Precise Relief Requested.
`GREE, Inc. (“Patent Owner”) requests that the Board reconsider its decision
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`to institute post-grant review of claims 1-15 of U.S. Patent No. 9,636,583 (“the
`
`’583 patent”). Paper 21.
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`II. Legal Standard for Reconsideration.
`Pursuant to 37 C.F.R. § 42.71(d), a party may request rehearing of a decision
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`by the Board to institute a trial. “The request must specifically identify all matters
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`the party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, opposition, or reply.” Id. The
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`Board will review the previous decision for an abuse of discretion. 37 C.F.R. §
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`42.71(c). “An abuse of discretion may be indicated if a decision is based on an
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`erroneous interpretation of law, if a factual finding is not supported by substantial
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`evidence, or if the decision represents an unreasonable judgment in weighing
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`relevant factors.” IPR2013-00369, Paper 39 at 2-3 (citing Star Fruits S.N.C. v.
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`United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005)).
`
`III. Factual Background.
`Petitioner Supercell Oy (“Petitioner”) filed a petition requesting post-grant
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`review of claims 1-15 of the ’583 patent on February 1, 2018. Petitioner alleged
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`that the “Background section of the patent describes a prior art card game played
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`on an electronic apparatus such as a smart phone or tablet, which is similar to the
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`claimed invention of the independent claims.” Paper 1 at 14. Petitioner also
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`1
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`alleged that “[s]toring, selecting, and disposing of a ‘panel’ containing game
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`information, as noted in the background of the ’583 specification, were previously
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`well known in the art.” Paper 1 at 22 (citing Ex. 1001, 1:31-40). However, the
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`Background of the ’583 specification does not mention the term “panel,” (see Ex.
`
`1001, 1:28-45) nor did Petitioner identify any other evidence to support its
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`argument that taking these actions regarding a “panel” was well-known.
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`In the Preliminary Response, Patent Owner stated that “use of ‘panels’ in the
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`manner described and claimed by the ’583 patent was previously unknown in the
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`art at the time of the invention.” Paper 13 at 30. Patent Owner further provided
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`evidence as to why “panels” as claimed in the ’583 patent were not well-known,
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`routine, or conventional in the art at the time of the ’583 patent. Paper 13 at 30-34
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`(citing Ex. 2002, ¶¶ 22-30).
`
`In the Institution Decision, the Board stated that the ’583 patent “relates
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`generally to a method of displaying a battle scene for a computer game in which
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`users do battle against each other using cards or ‘panels’ collected in the game.”
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`Paper 21 at 2 (citing Ex. 1001, 1:31-44, 4:18-22). In preliminarily determining that
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`the challenged claims of the ’583 patent did not contain an “inventive concept”
`
`under Alice step two, the Board stated that “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
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`2
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`
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`‘panels’) which are used against another player in a game of rock-paper-scissors or
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`the like.” Paper 21 at 16 (citing Paper 1 at 14–15 and Ex. 1001, 1:31–40)
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`(emphasis added). The Board, however, cited to no evidence nor any assertion by
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`Petitioner that the cards described in the Background correspond to the “panels” in
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`the challenged claims.
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`IV. The Board’s Findings Overlook and Misapprehend the Record
`The Board’s decision to institute post-grant review is an abuse of discretion.
`
`The Board misapprehended or overlooked significant evidence and
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`misapprehended the arguments raised by Petitioner in concluding that “cards”
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`corresponded to “panels” as claimed.
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`The Board’s rules require that Petitioner include all of its arguments and
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`citations to supporting evidence in the petition. 37 C.F.R. § 42.204(b). However,
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`nowhere in the petition did Petitioner argue that prior-art “cards” corresponded to
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`the “panels” described and claimed in the ’583 patent, much less present evidence
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`supporting such an argument. Rather, Petitioner merely stated that the ’583 patent
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`describes “a prior art card game played on an electronic apparatus such as a smart
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`phone or tablet, which is similar to the claimed invention of the independent
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`claims.” Paper 1 at 14. And Petitioner provided no further evidence or explanation
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`as how the prior art card game was similar to the panel-based game claimed by the
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`’583 patent. It was Petitioner’s burden to prove that “panels” as claimed by the
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`3
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`’583 patent were well-known in the art under Alice step two, and Petitioner failed
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`to do so.
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`Notwithstanding Petitioner’s failure to meet its burden, the Board
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`determined that “panels” as recited in the claims corresponded to prior-art “cards.”
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`Paper 21 at 16. However, the Board offered no explanation for this conclusion.
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`While the Board cited a portion of the background of the ’583 specification—
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`Exhibit 1001 at 1:31-40—to support this conclusion, the background of the ’583
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`specification makes no mention of “panels” whatsoever. Thus, the Board failed to
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`identify any evidence to support a finding that “panels” as claimed corresponded to
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`prior-art “cards.” Therefore, the Board’s conclusion that “panels” were well-
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`known, routine, and conventional in the art is based on an unsupported finding.
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`Paper 21 at 16.
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`In contrast, Patent Owner provided substantial evidence and argument that
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`“panels” as claimed by the ’583 patent were not well-known, routine, or
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`conventional in the art such that the challenged claims of the ’583 patent recite a
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`sufficiently inventive concept as to pass muster under Alice step two. Paper 13 at
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`30-34. For instance, Patent Owner provided the expert testimony of David Crane,
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`who explained that “panels” as described and claimed in the ’583 patent were an
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`inventive concept. Ex. 2004 ¶¶ 22-30. The Board should not have ignored this
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`unrebutted testimony as to what would have been known by a person of ordinary
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`4
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`
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`skill in the art. Star Fruits, 393 F.3d at 1281 (Fed. Cir. 2005) (“An abuse of
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`discretion occurs where the decision is based … on factual findings that are not
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`supported by substantial evidence, or represents an unreasonable judgment in
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`weighing relevant factors.”).
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`Patent Owner respectfully requests that the Board reconsider its decision to
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`institute for these reasons, and decline to institute this proceeding.
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`Dated: September 4, 2018
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`
`
`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
`Email:
`jalemanni@kilpatricktownsend.com
`Backup Counsel
`Scott E. Kolassa
`Reg. No. 55,337
`1080 Marsh Road
`Menlo Park, CA 94025
`Office: 650-324-6349
`Fax: 650-326-2422
`Email:
`skolassa@kilpatricktownsend.com
`
`Respectfully submitted,
`
`
`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
`
`
`Backup Counsel
`Andrew Rinehart
`Reg. No. 75,537
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336-607-7312
`Fax: 336-607-7500
`Email:
`arinehart@kilpatricktownsend.com
`Counsel Pro Hac Vice
`Steven D. Moore
`Pro Hac Vice
`Two Embarcadero Center Suite 1900,
`San Francisco, CA USA 94111
`Telephone: 415-273-4741
`Fax: 415-651-8510
`Email:
`smoore@kilpatricktownsend.com
`
`5
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of Patent Owner’s Request
`for Reconsideration has been served electronically via email upon the following:
`
`Jennifer R. Bush
`Michael J. Sacksteder
`Geoff Miller
`Fenwick & West LLP
`JBush-PTAB@fenwick.com
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`Dated: September 4, 2018
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`
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`
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`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
`
`6
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