Trials@uspto.gov
`571-272-7822
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`Paper No. 25
`Entered: September 18, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SUPERCELL OY,
`Petitioner,
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`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.
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`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
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`PGR2018-00029
`Patent 9,636,583 B2
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`INTRODUCTION
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`I.
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`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
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`claims 1–15 of U.S. Patent No. 9,636,583 B2 (Ex. 1001, “the ’583 patent”).
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`Paper 1 (“Pet.”). GREE, Inc. (“Patent Owner”) filed a Preliminary
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`Response. Paper 13 (“Prelim. Resp.”). With our authorization, Petitioner
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`filed a Reply to Patent Owner’s Preliminary Response (Paper 18) and Patent
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`Owner filed a Sur-Reply (Paper 19). The Board issued a Decision granting
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`institution of post-grant review. Paper 21 (“Dec.”). On September 4, 2018,
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`Patent Owner filed a Request for Reconsideration of the Decision. Paper 23
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`(“Request;” “Req.”). For the reasons that follow, the Request is denied.
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`II. ANALYSIS
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`A request for rehearing must identify specifically all matters the
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`requesting party believes the Board misapprehended or overlooked.
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`37 C.F.R. § 42.71(d). When rehearing a decision on institution, the Board
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`will review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`Independent claim 1 of the ’583 patent recites, in pertinent part, “a
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`plurality of panels that the first user possesses,” “a plurality of panels that
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`the second user possesses,” “a panel selection function,” and “a panel layout
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`function.” Ex. 1001, 9:18–26.
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`In our Decision granting institution, we stated:
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`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).
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`Dec. 16 (emphasis added).
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`2
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`PGR2018-00029
`Patent 9,636,583 B2
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`Patent Owner argues that the Board “misapprehended or overlooked
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`significant evidence and misapprehended the arguments raised by Petitioner
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`in concluding that ‘cards’ correspond to ‘panels’ as claimed.” Req. 3.
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`Specifically, Patent Owner asserts that “nowhere in the petition did
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`Petitioner argue that prior art ‘cards’ correspond to the ‘panels’ described
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`and claimed in the ’583 patent, much less present evidence supporting such
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`an argument,” and that the Board “cited to no evidence nor any assertion by
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`Petitioner that the cards described in the Background correspond to the
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`‘panels’ in the challenged claims.” Req. 3. Hence, Patent Owner argues that
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`“the Board’s conclusion that ‘panels’ were well-known, routine, and
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`conventional in the art is based on an unsupported finding.” Req. 4 (citing
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`Dec. 16).1
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`As an initial matter, we disagree that the Petition did not argue, or
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`provide supporting evidence, that the prior art “cards” correspond to
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`“panels.” For example, Petitioner asserted that “[t]he Background section of
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`the patent describes a prior art card game played on an electronic apparatus
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`such as a smart phone or tablet, which is similar to the claimed invention of
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`the independent claims [which recite “panels”].” Pet. 14 (emphases added).
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`Petitioner further argued that “[s]toring, selecting, and disposing of a ‘panel’
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`1 In a September 10, 2018 conference call held between counsel for the
`parties and the Board, Petitioner asserted that Patent Owner’s Request
`includes improper new argument that “panels” are not the same as “cards.”
`See Paper 24. While Patent Owner’s request echoes the assertion in the
`Preliminary Response that panels as described and claimed in the ’583
`patent were unknown at the time of the invention (see, e.g., Req. 2, 4;
`Prelim. Resp. 30), and argues with respect to what the Board allegedly
`misapprehended or overlooked, we find no argument in Patent Owner’s
`Request that panels in and of themselves are not the same as cards.
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`3
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`PGR2018-00029
`Patent 9,636,583 B2
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`containing game information, as noted in the background of the ’583
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`specification [which refers to “cards”], were previously well known in the
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`art.” Pet. 22 (citing Ex. 1001, 1:31–40) (emphases added). Although the
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`Petition did not explicitly use the word “correspond” in identifying a link
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`between “panels” and the prior art “cards,” we understood from the Petition,
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`and the cited portions of the Background section, that the “cards” in the
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`Background section are the prior art analogue to the “panels” recited in the
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`claims, and that they, thus, correspond to each other. See Dec. 16 (citing
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`Pet. 14–15 (citing Ex. 1001, 1:31–40)); see also Ex. 1001, 1:41–44 (“since
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`the use of a two-dimensional card in the battle scene is sometimes boring,
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`there have been calls for improvement”) (cited at Dec. 2).
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`Patent Owner acknowledges that “the Board cited a portion of the
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`background of the ’583 specification—Exhibit 1001 at 1:31–40—to support
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`this conclusion,” but argues that this is insufficient evidence, because “the
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`background of the ’583 specification makes no mention of ‘panels’
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`whatsoever.” Req. 4; see also Dec. 17 (“[B]y showing the prior use of
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`cards, which correspond to the ‘panels,’ in an electronic game, the
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`Background section of the Specification of the ’583 patent provides
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`evidentiary support for the general proposition that using panels in an
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`electronic game is conventional.”). On the current record, we are
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`unpersuaded that lack of the explicit use of the term “panel” in the
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`Background section is insufficient to support our finding that “cards”
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`correspond to “panels.” Indeed, in its Preliminary Response, Patent Owner
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`itself identified evidence that “cards” do correspond to “panels,” particularly
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`portions of the Specification that liken “panels” to “cards” or use the terms
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`interchangeably. See Prelim. Resp. 4 (citing Ex. 1001, 7:15–18 (“Panels can
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`4
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`Patent 9,636,583 B2
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`have various shapes such as a circle, a triangle, and a polygon, as well as the
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`rectangle (including a square) such as a card in the related art.”) (emphases
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`added)); Prelim. Resp. 9 (citing Ex. 1001, 9:2–5 (“when three or more
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`specific panels are disposed within one game display screen, it is also
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`possible to generate a combo exhibiting the effect beyond the effects of
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`these cards”) (emphases added)). Patent Owner even stated that “[i]n the
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`case of the ’583 patent, the claims are directed to a known problem
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`associated with card games played on electronic devices.” Prelim. Resp.
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`25–26 (citing Ex. 1001, 1:42-44) (emphases added) (Patent Owner’s
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`statement cited at Dec. 11–12). We read the relevant statutes as requiring
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`our consideration of a preliminary response, and everything cited therein, in
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`rendering a decision on institution. See 35 U.S.C. § 323 (“If a post-grant
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`review petition is filed under section 321, the patent owner shall have the
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`right to file a preliminary response to the petition . . .”); 35 U.S.C. § 324
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`(“The Director may not authorize a post-grant review to be instituted unless
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`the Director determines that the information presented in the petition filed
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`under section 321, if such information is not rebutted . . .”).
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`Patent Owner argues further that, in rendering its Decision, the Board
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`misapprehended or overlooked “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.” Req. 4 (citing Prelim. Resp. 31–34). For example,
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`Patent Owner argues that its declarant, David Crane, “explained that ‘panels’
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`as described and claimed in the ’583 patent were an inventive concept” and
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`5
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`Patent 9,636,583 B2
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`“[t]he Board should not have ignored this unrebutted testimony.” Req. 4
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`(citing Ex. 2002 ¶¶ 22–30)2.
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`As an initial matter, we acknowledge that the specifics of Mr. Crane’s
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`testimony, while cited, were not analyzed in detail in our Decision. Dec. 17.
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`The reason for that, however, is that we did not read this testimony as an
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`argument that “panels” in and of themselves were an inventive concept
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`compared to the “cards” of the prior art, but, rather, as an argument that
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`panels as described and claimed in the ’583 patent—i.e., in conjunction with
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`the additional claim elements—were an inventive concept.
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`In any case, even according Mr. Crane’s testimony appropriate weight
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`in Patent Owner’s proffered context, we are still persuaded that, on this
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`record and at this stage of the proceeding, Petitioner has shown sufficiently
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`that the claim elements corresponding to data storage, panel selection, panel
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`layout, and screen display are generic computer functions or components.
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`Dec. 16. As noted in our Decision, Patent Owner asserts that the problem is
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`one of the battle scenes being “boring,” and is addressed by the ’583 patent’s
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`“presentation of card-game style mechanics in an interactive and dynamic
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`format using panels.” Dec. 17–18 (citing Prelim. Resp. 32). Such a problem
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`appears to be a mental or business problem, and not a technical one, and
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`would, thus, appear to involve a mental or business solution implemented on
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`generic computer components. Patent Owner will have the opportunity to
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`submit evidence to the contrary during trial.
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`For the foregoing reasons, we are unpersuaded that our Decision
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`granting institution was an abuse of discretion.
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`2 Patent Owner cites Exhibit 2004, however, Mr. Crane’s Declaration is at
`Exhibit 2002.
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`6
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`PGR2018-00029
`Patent 9,636,583 B2
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`III. CONCLUSION
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`Patent Owner’s Request for Rehearing is denied.
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`For PETITIONER:
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`Jennifer R. Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
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`For PATENT OWNER:
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`John Alemanni
`Andrew Rinehart
`Scott Kolassa
`Steven Moore
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`skolassa@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
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`7
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