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 RESPONSE
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Introduction. ..................................................................................................... 1 
`I. 
`II.  The ’583 Patent. ................................................................................................ 2 
`A.  The Specification Describes a Solution to a Technical Problem in a Particular
`Type of Card-Game ................................................................................................ 2 
`B.  The Claims Recite the Solution Described in the Specification ..................... 10 
`III.  The Alleged Grounds of Invalidity. ............................................................... 14 
`IV.  The Challenged Claims are Eligible Under § 101. ......................................... 16 
`A.  Legal Standard for Invalidity Under § 101. .................................................... 16 
`B.  The Claims are Subject-Matter Eligible. ........................................................ 18 
`1.  The ’583 patent is not directed to an abstract idea. ...................................... 18 
`2.  Alternatively, the claims recite the requisite “inventive concept.” .............. 32 
`C.  Petitioner’s Arguments to the Contrary are Almost Entirely Unsupported. .. 40 
`1.  Petitioner fails to analyze—or mention—all of claim 1’s limitations. ........ 42 
`2.  Claim 1 is not representative of all claims of the ’583 patent. ..................... 47 
`3.  The Petition paraphrases the dependent claims and provides no actual
`analysis. ............................................................................................................. 51 
`4.  Petitioner offers no evidence to contradict the specification of the ’583
`patent. ................................................................................................................ 53 
`V.  The Claims Have Sufficient Written Description. ......................................... 59 
`A.  Legal Standard for the Written Description Requirement of § 112(a). .......... 60 
`B.  Level of Ordinary Skill in the Art. .................................................................. 61 
`C.  The Petitioner Fails to Meet its Burden Under § 112(a). ............................... 61 
`D.  The ’583 Patent Contains Sufficient Written Description for the Claims. ..... 64 
`VI.  The Claims are Definite. ................................................................................. 70 
`A.  Legal Standard for Definiteness. .................................................................... 71 
`
`
`
`i
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`

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`B.  A Person of Ordinary Skill Would Understand the Scope of the Claim Terms
`at Issue. ................................................................................................................. 71 
`C.  The Petition Fails to Meet its Burden. ............................................................ 73 
`VII.  Conclusion. ..................................................................................................... 75 
`
`
`
`
`ii
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`
`Exhibit
`No.
`2001
`
`2002
`2003
`2004
`
`Patent Owner’s Exhibit List
`
`Exhibit Description
`
`April 26, 2018 “Guidance on the impact of SAS on AIA trial proceedings,”
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial
`Declaration of David Crane
`JP2007252696 and Machine Translation of Description
`Biography of Steven D. Moore
`
`
`
`iii
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`

`

`I.
`
`Introduction.
`The challenged claims of the ’583 patent are patentable. The claims are not
`
`directed to an abstract idea, and also recite an inventive concept sufficient to
`
`satisfy Alice step two. The claims are also supported and definite. Further, it is
`
`Petitioner’s burden to prove otherwise, and Petitioner has failed to do so.
`
`First, the challenged claims are not directed to an abstract idea. The ’583
`
`patent identifies a specific problem in the video game art—the failure of a
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`particular type of video game interface to keep the interest and attention of the
`
`user. The ’583 patent discloses and claims a solution to this problem in the form of
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`a technological improvement to graphical user-interfaces through the use of the
`
`specifically claimed panels—a graphical user-interface element with visual
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`features and a corresponding data structure that was previously unknown in the art.
`
`The challenged claims recite specific and concrete limitations as to how these
`
`panels are stored, selected, disposed, and displayed, and the corresponding
`
`graphical user-interface elements for doing so. The Federal Circuit has
`
`consistently found such claims patentable. Petitioner generalizes the claims to such
`
`a degree that explicitly recited limitations are essentially absent from the analysis.
`
`And Petitioner provides almost no evidentiary support for its arguments.
`
`Second, with respect to Alice step two, the mere fact that the claims recite
`
`functions that may run on a general-purpose computer does not make those
`
`1
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`

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`functions well-understood, routine, or conventional. And in this case, the
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`unrebutted testimony of Patent Owner’s expert, David Crane, establishes that the
`
`challenged claims were not in fact well-understood, routine, or conventional. In
`
`contrast, Petitioner provides no evidence of what was well-understood, routine, and
`
`conventional in the art to a person of ordinary skill. As the recent Federal Circuit
`
`decision in Berkheimer makes clear, Petitioner must do so to meet its burden.
`
`The claims are also supported and definite. Petitioner’s assertions that the
`
`claims lack sufficient written description and are indefinite are, like its arguments
`
`in relation to patent eligibility, nothing more than attorney argument and fail to
`
`analyze the claims from the perspective of a person of ordinary skill. As the Board
`
`found in its Decision to Institute (Paper 21), Petitioner has failed to carry its burden
`
`with respect to the challenges under § 112.
`
`The Board should find all of the challenged claims patentable.
`
`II. The ’583 Patent.
`A. The Specification Describes a Solution to a Technical Problem in a
`Particular Type of Card-Game
`
`The ’583 patent generally discloses “a game program and a game processing
`
`method of a game in which a plurality of characters battle against each other.” Ex.
`
`1001, 1:21-23. The ’583 patent notes, “In recent years, with the spread of
`
`electronic apparatuses such as smart phones and tablets, games played on these
`
`electronic apparatuses have been actively developed.” Ex. 1001, at 1:28-30. The
`
`2
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`

`

`’583 patent describes one category of such games as “card game[s] in which the
`
`user plays against other users or against the computer using cards collected in the
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`game.” Ex. 1001, at 1:31-33. However, the ’583 patent identifies a problem in
`
`these particular types of card-games, “since the use of a two-dimensional card in
`
`the battle scene is sometimes boring, there have been calls for improvement.” Ex.
`
`1001, at 1:42-43.
`
`The solution to this problem identified by the ’583 patent is a “game
`
`program and a game processing method of a game that gives a user a high visual
`
`effect.” Ex. 1001, at 1:49-50. To achieve this high visual effect, the ’583 patent
`
`explains that in one embodiment “the battle between the first and second characters
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`proceeds in a format like a cartoon. Therefore, since the user can play the game
`
`with a sense of reading a cartoon, the visual effect that the user receives is greatly
`
`improved compared to known games.” Ex. 1001, at 6:42-46. An example of such
`
`an embodiment is provided in Figure 12.
`
`3
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`

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`
`
`Ex. 1001, Fig. 12.
`
`
`
`In order to generate this particular user interface, the ’583 patent teaches the
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`use of “panels to be disposed in frames of the game display screen including a
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`battle display region.” Ex. 1001, at 4:31-33. “Preferably, these panels display a
`
`movie when the panels are emphasized and displayed.” Ex. 1001, at 7:36-38. In
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`one example, the panels “can have an arbitrary size,” such as for example in a
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`“battle display region 310 divided into cells” a panel may be one, two, or four cells
`
`in size. Ex. 1001, at 6:52-61. “Panels can have various shapes such as a circle, a
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`4
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`triangle, and a polygon, as well as the rectangle (including a square) such as a card
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`in the related art.” Ex. 1001, at 7:15-18.
`
`
`
`Panels are acquired by playing the game. Ex. 1001, at 8:34-36. An
`
`exemplary game according to the ’583 patent has “a main cycle and a sub-cycle.”
`
`Ex. 1001, at 8:25-26. In a main cycle of the game, “as shown in FIG. 7, the user
`
`selects one character from a plurality of characters presented.” Ex. 1001, at 8:26-
`
`28.
`
`
`
`Ex. 1001, Fig. 7. Playing the selected character, the user “collects panels while
`
`advancing the quest.” Ex. 1001, at 8:28. “A panel can be acquired as a reward for
`
`the battle with the enemy characters and the boss character. In addition, it is also
`
`possible to acquire the panel in a specific event or the like. Thus, the user acquires
`
`the panel by advancing the game.” Ex. 1001, at 8:34-38. An example “quest” is
`
`depicted in Figure 8. Ex. 1001, at 8:31-33.
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`5
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`
`
`Ex. 1001, Fig. 8.
`
`
`
`In the “sub-cycle” of the game, “the user can use the acquired panel to
`
`strengthen the deck for the battle or can use the acquired panel to develop a
`
`character. Developing the character refers to combining the character selected by
`
`the user with the acquired panel.” Ex. 1001, at 8:39-43. When panels are used for
`
`character development, the panels may include “strength,” “attack,” “defense,” or
`
`“special technique effects” information to provide improvements to a user’s
`
`character for use in a battle. Ex. 1001, at 8:44-51. When panels are used to
`
`strengthen the deck, panels may include “capability information [that] refers to
`
`6
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`

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`information including attack, defense (avoidance), attributes, recovery, and skills
`
`to disable or replace the frame, for example.” Ex. 1001, at 7:21-23.
`
`
`
`Thus, the ’583 patent explains that panels may be used for battle or character
`
`development, and are acquired by progressing through the main cycle of the game.
`
`Ex. 1001, at 8:39-41, 8:26-28. “[W]hen a battle starts, the battle using the game
`
`display screen” is performed as shown in Figures 3 and 12, for example. Ex. 1001,
`
`at 6:16-20, 8:63-65. The battle may “proceed from the upper left to the lower
`
`right” or vice versa in the display, and the display may “be divided by the turn
`
`indicating the unit of the progress of the battle.” Ex. 1001, at 7:8-14.
`
`
`
`7
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`

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`Ex. 1001, Fig. 3.
`
`
`
`In this example, a “first panel group” includes “a plurality of panels that the
`
`first character possesses” and a “second panel group” includes “a plurality of
`
`panels that the second character possesses.” Ex. 1001, at 6:28-31. The panels
`
`selected from each panel group “are disposed in the frames A to G” during the
`
`battle. Ex. 1001, at 6:32. According to the ’583 patent, the game program may
`
`“execute the frames in a predetermined order, and emphasize and display the
`
`panels disposed in the executed frames.” Ex. 1001, at 6:36-38.
`
`
`
`Within this particular example interface, the “high visual effect” disclosed in
`
`the ’583 patent is accomplished by several different improvements. For example,
`
`panels may be sized such that the “effect of the capability is assumed to correspond
`
`to the size of the panel.” Ex. 1001, at 7:23-25, claims 6, 7. A panel can “display a
`
`still image” and “display a movie when the panels are emphasized and displayed.”
`
`Ex. 1001, at 7:27-37, claim 10. A “panel that is emphasized and displayed is
`
`displayed to zoom in.” Ex. 1001, at 7:54-56, claim 4. The frames in which panels
`
`are displayed may “display texts” and have “a sound effect display portion 20 to
`
`display the texts showing the sound effect and/or and effect display portion to
`
`display the effect.” Ex. 1001, at 7:44-47, claim 11. Frames may have “frame
`
`portions” that are “constructed in different colors” such that “the panel of the first
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`8
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`

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`character and the panel of the second character can be visually easily
`
`distinguished.” Ex. 1001, at 7:58-65, claim 12.
`
`
`
`The user interface examples disclosed in the ’583 patent further impose a
`
`rule-based set of specialized game mechanics to control the flow of the battle
`
`game. For instance, in one interface, “each row indicates a turn of a battle, [and]
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`the occupancy of action in each turn in horizontally long frames such as the frames
`
`H, N, and O, is high compared to that in horizontally short frames such as the
`
`frames I, J, K, L, and M.” Ex. 1001, at 6:62-66, claims 2-3, 9. In this manner, “a
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`panel the size of which is larger and presents at a position where a turn number is
`
`earlier leads a battle advantageously.” Ex. 1001, at 7:5-7, claims 2-3, 9.
`
`The game outcome is ultimately determined by the arrangement of panels: a
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`“battle result is preferably determined based on the panel information at a state
`
`where the panels are disposed,” and “it is also possible to change the battle result
`
`by changing the panel…by the operation (action for recovery or the like) of the
`
`user during the battle.” Ex. 1001, at 8:6-11, claim 13. The disposition of panels
`
`within the display region may also trigger other game mechanics. For example,
`
`“when three or more specific panels are disposed within one game display screen,
`
`it is also possible to generate a combo exhibiting the effect beyond the effects of
`
`these cards.” Ex. 1001, at 9:2-5.
`
`
`
`9
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`

`

`B. The Claims Recite the Solution Described in the Specification
`
`The claims of the ’583 patent are ordered in a logical progression based on
`
`the game mechanics and features of the graphical user interface that is disclosed in
`
`the specification and summarized above. For example, independent claim 1 recites
`
`the graphical user-interface element of panels and describes how those panels are
`
`stored. Ex. 1001, at 9:16-20. The claim proceeds to recite how panels may be
`
`selected from storage, and where selected panels are to be disposed within a
`
`subdivided field of game play. Ex. 1001, at 9:21-25. Next, claim 1 describes how
`
`selected panels are disposed within divisions in the game display region. Ex. 1001,
`
`at 9:26-27; see also 8:6-11 (“battle result is preferably determined based on the
`
`panel information at a state where the panels are disposed”).
`
`Claim 1 further describes how these mechanics are executed in an iteration
`
`of game play where an individual panel is selected and disposed in a division of the
`
`game display region. The screen display control function recited in claim 1
`
`displays the “game display screen on a screen display unit,” and is further limited
`
`by a “wherein” clause that describes the core progression of the claimed game
`
`interface. Ex. 1001, at 9:27-28. First, points are set for the first user and decreased
`
`when a panel is disposed. Ex. 1001, at 9:29-30. Next, a panel is selected for the
`
`first user from the user’s respective database based on the points set for that user.
`
`Ex. 1001, at 9:31-33; see also 8:20 (“the CP [character points] is decreased by
`
`10
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`

`

`placing a large panel”). Once the users’ respective panels are selected, claim 1
`
`recites the step of allowing the panels to be disposed into particular divisions; as
`
`the ’583 patent explains, “each panel described above can have an arbitrary size”
`
`and those panels may only fit into the appropriately sized divisions of the game
`
`display region. Ex. 1001, at 9:34-37; see also 6:52-61. Finally, claim 1 recites that
`
`the “panel layout function” performs the step of disposing the selected panel in the
`
`corresponding division of the game display region. Ex. 1001, at 9:38-41.
`
`Claim 1 and the other independent claims thus establish a framework for the
`
`basic display and progression of the game, culminating in the disposition of panels
`
`in the divisions of the game display region, and the “battle information is
`
`preferably determined based on the panel information at a stage where the panels
`
`are disposed.” Ex. 1001, at 8:6-8. According to the ’583 patent, as a result of this
`
`panel-based interface and gameplay “the visual effect that the user receives is
`
`greatly improved compared to known games.” Ex. 1001, at 6:45-46.
`
`The following table demonstrates how the specific elements recited in claim
`
`1 embody the illustrative disclosure in the specification of the ‘583 patent.
`
`Claim Elements
`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
`
`Illustrative Disclosure
`“[A] game program and a game
`processing method of a game in which a
`plurality of characters battle against
`each other.” Ex. 1001, 1:21-23.
`
`11
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`

`

`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
`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,
`
`“Using the data storage function, a first
`panel database including a plurality of
`panels that the first character possesses
`and a second panel database including a
`plurality of panels that the second
`character possesses are stored.” Ex.
`1001, at 4:25-29.
`“Using the panel selection function,
`panels to be disposed in frames of the
`game display screen including a battle
`display region are selected….” Ex.
`1001, at 4:31-33.
`
`“Using the panel layout function, the
`panels selected by the 40 panel selection
`function are disposed in the frames.”
`Ex. 1001, at 4:39-41
`“Preferably, these panels display a
`movie when the panels are emphasized
`and displayed.” Ex. 1001, at 7:36-38
`“This gauge shows hit points
`(hereinafter, described as HP) indicating
`the strength of the character or character
`points (hereinafter, described as
`CP) indicating the action force of the
`character. The HP is decreased by
`receiving the action of the attack of the
`opponent, and is increased by taking
`action for recovery.” Ex. 1001, at 8:14-
`18.
`“[T]he CP is decreased by placing a
`large panel.” Ex. 1001, at 8:19.
`“[T]he CP is decreased by placing a
`large panel.” Ex. 1001, at 8:19.
`
`12
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`

`

`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.
`
`
`
`“Panels selected from the first panel
`group configured to include a plurality
`of panels that the first character
`possesses and the second panel group
`configured to include a plurality of
`panels that the second character
`possesses are disposed in the frames A
`to G.” Ex. 1001, at 6:28-32.
`“In the example shown in FIG. 3, panels
`selected from the first panel group are
`disposed in the frames A, B, D, and F,
`and panels selected from the second
`panel group are disposed in the frames
`C, E, and G.” Ex. 1001, at 6:32-35.
`“[A] panel layout section 223 that
`disposes the panels selected by the
`panel selection section 222 in the
`frames” Ex. 1001, at 5:52-54.
`
`Once the game field is set through the progression of claim 1’s mechanics,
`
`the dependent claims further recite the mechanics of executing the game and
`
`particular visual effects provided through the interface. For example, once the
`
`panels are disposed, the battle progresses further when the game is executed in
`
`dependent claim 2, which recites “executing the divisions in which the panels are
`
`disposed by the panel layout function in predetermined order.” Ex. 1001, claim 2;
`
`see also 6:38-40 (“The battle proceeds by executing the frames A to G in order”).
`
`Claim 3 recites how that order may be determined, through the “arrangement,
`
`shapes, and/or sizes of the panels.” Ex. 1001, claim 3; see also 7:1-4 (“In the
`
`13
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`

`

`vertically long frames such as the frames J and N, their actions are first performed
`
`in the previous turn”). These and the remaining dependent claims thus recite game
`
`mechanics that describe the progression of the battle and/or provide for visual
`
`effects through the graphical user interface in conjunction with the battle
`
`progression. See, e.g., Ex. 1001, claim 12 (reciting frame portions of divisions in
`
`which panels are disposed constructed of different colors).
`
`III. The Alleged Grounds of Invalidity.
`The petition (“Pet.”) raises three alleged grounds of invalidity. First,
`
`Petitioner asserts that claims 1-15 of the ’583 patent are invalid under § 101. Pet.
`
`16-31. Second, according to Petitioner, claims 1-15 lack sufficient written
`
`description and are therefore invalid under § 112(a). Pet. 32-38. Third, Petitioner
`
`alleges that claims 1-15 are invalid under § 112(b) as indefinite. Pet. 39-42.
`
`For the reasons explained below, the petition fails to meet its burden.
`
`Petitioner has provided absolutely no evidence in support of any of the three
`
`challenges raised in the petition—and mere attorney argument is insufficient for
`
`Petitioner to carry its burden. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc.,
`
`849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence” and
`
`cannot rebut other admitted evidence.); Suffolk Techs., LLC v. AOL Inc., 752 F.3d
`
`1358, 1367 (Fed. Cir. 2014) (“Without expert testimony, however, Suffolk’s
`
`position is mere attorney argument. And here, those attorney arguments are
`
`14
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`

`

`insufficient to undermine the credible testimony from Google’s expert” as to a
`
`question of fact). The Federal Circuit has emphasized that attorney argument
`
`simply cannot take the place of nor rebut properly admitted evidence in
`
`proceedings like this. See, e.g., Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881
`
`F.3d 1354, 1359 (Fed. Cir. 2018) (“[Petitioner] fails to present any evidence
`
`supporting this contention beyond attorney argument, … and ‘[a]ttorney argument
`
`is not evidence’ and cannot rebut other admitted evidence.”); see Wasica Fin.
`
`GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1284–85 (Fed. Cir. 2017) (finding
`
`it “reasonable” for Board to accept admitted expert testimony “over [] bare
`
`attorney argument”). And the Board has similarly found that attorney argument is
`
`no substitute for properly admitted evidence. See, e.g., Teoxane S.A. v. Allergan,
`
`PLC, IPR2017-01906, Paper 15 at 29 (PTAB Mar. 9, 2018) (“We deny this ground
`
`because it is based on bare attorney argument, which cannot take the place of
`
`evidence lacking in the record.”); see L'oreal USA, Inc. v. Liqwd, Inc., PGR2017-
`
`00012, Paper 17 at 17 (PTAB July 19, 2017) (“[N]either exhibit is more than mere
`
`attorney argument, which is not evidence.”).
`
`Petitioner offers no expert testimony, but primarily cites the Background of
`
`the patent for alleged evidentiary support. But Petitioner never provides any
`
`rationale or explanation for how the mere mention of games developed in “recent
`
`years” therein somehow qualifies as admitted prior art, much less as support for the
`
`15
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`

`

`proposition that the mentioned card games are routine, conventional, or well-
`
`understood. As a result, Petitioner has failed to show that it is more likely than not
`
`that any of the challenged claims are unpatentable. 35 U.S.C. § 324(a).
`
`Petitioner’s alleged grounds of invalidity also fail on their merits because they fail
`
`to address all of the limitations of the claims, ignore the disclosure of the
`
`specification of the ’583 patent, and fail to analyze the claims from the perspective
`
`of one of ordinary skill in the art.
`
`The only evidence in the record of how a skilled artisan would have
`
`understood the disclosure and claims of the ’583 patent is the testimony of Mr.
`
`Crane. Mr. Crane testified that the use of panels as described and claimed in the
`
`’583 patent is not well-understood, routine, or conventional. Furthermore, Mr.
`
`Crane explained how the claims meet the written description requirement and are
`
`sufficiently definite to a skilled artisan. This testimony is credible and unrebutted,
`
`and thus the petition cannot meet its burden.
`
`IV. The Challenged Claims are Eligible Under § 101.
`A. Legal Standard for Invalidity Under § 101.
`
`A patent may be obtained for “any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof.” 35 U.S.C. § 101. However, the Supreme Court has “held that this
`
`provision contains an important implicit exception: Laws of nature, natural
`
`16
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`

`

`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347, 2354 (2014). The “concern that drives this exclusionary
`
`principle as one of pre-emption,” but “we tread carefully in construing this
`
`exclusionary principle lest it swallow all of patent law.” Id.
`
`Under the framework set forth in Alice, one must first “determine whether
`
`the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at
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`2355. “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If the claims are directed to a patent-
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`ineligible concept, one must next “consider the elements of each claim individually
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`and ‘as an ordered combination’ to determine whether the additional elements
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`‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355
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`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
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`1297 (2012)).
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`Step two is an inquiry as to whether the claims add an inventive concept that
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`is sufficient to ensure the patent amounts to more than a patent upon the concept
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`itself. Alice, 134 S. Ct. at 2355. “In applying the § 101 exception, th[e] Court
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`must distinguish patents that claim the building blocks of human ingenuity, which
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`are ineligible for patent protection, from those that integrate the building blocks
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`into something more.” Id. at 2350. Claims reciting “well-understood, routine,
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`conventional activity” in the field of art are insufficient to confer patentability to
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`otherwise ineligible concepts. Mayo, 566 U.S. at 79. “The question of whether a
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`claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact.”
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`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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`B. The Claims are Subject-Matter Eligible.
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`The claims of the ’583 patent are subject-matter eligible. First, the game-
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`processing method using the “panels” and mechanics disclosed in the ’583 patent
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`is not an “abstract idea.” Petitioner’s conclusory statements to the contrary should
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`be rejected. Second, even if the analysis proceeded to step two of the Alice
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`framework, the ’583 patent claims are directed to a specific application of a battle
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`game through the use of “panels” that was not well-understood, routine, or
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`conventional.
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`1. The ’583 patent is not directed to an abstract idea.
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`The first step of the Alice framework is to “determine whether the claims at
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`issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
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`According to Petitioner, the alleged abstract concept of the ’583 patent is
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`“displaying a video game based on stored panel information.” Pet. 21, 25. Patent
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`Owner disagrees with Petitioner’s oversimplified characterization of the invention
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`disclosed in the ’583 patent.
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`First, the claims are directed to more than the mere display of information—
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`the challenged claims are directed to both the mechanics and progression of the
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`battle game itself and the graphical user-interface improvements to the display of
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`such a game. As explained above in Section II, the independent claims introduce
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`panels consisting of stored data and graphical user-interface elements, recite a
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`structured display interface in which the panels may be displayed, and further limit
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`the steps by which a panel is selected according to points set for the user, is
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`allowed to be disposed in the game display region, and is then disposed. The
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`dependent claims further delineate how the panels are executed (in a predetermined
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`order), how the order of panel execution may be determined (by arrangement, size,
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`and/or shape), how the display region is divided (by turns), and so forth. These
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`limitations are more than the mere display of information—they are game
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`mechanics with corresponding visual elements that impact how the battle game
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`progresses and how it is displayed.
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`Second, the concept Petitioner allegedly identifies as the abstract idea to
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`which the claims are directed does not fall within any of the categories set forth by
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`precedent. This alleged abstract idea is not a purely mathematical concept, a
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`method of organizing human activity, a purely mental process, or a fundamental
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`economic practice, and Petitioner fails to provide any evidence or argument to the
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`contrary. Similarly, the Board declined to find in its Decision to Institute that the
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`challenged claims were directed to any of the above abstract ideas. See Paper 21,
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`at 6 (noting that fundamental economic practices, mathematical formulas, and
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`basic tools of scientific and technological work exist on the patent-ineligible side
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`of the spectrum, but declining to characterize challenged claims as such).
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`“In addressing the first step of the section 101 inquiry, as applied to a
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`computer-implemented invention, it is often helpful to ask whether the claims are
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`directed to ‘an improvement in the functioning of a computer,’ or merely ‘adding
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`conventional computer components to well-known business practices.’” Affinity
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`Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016)
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`(quoting Enfish, 822 F.3d at 1337). Petitioner has failed to argue or present
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`evidence that the challenged claims are directed to a well-known business practice.
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`In the case of the ’583 patent, the claims are directed to a problem associated
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`with improving a particular type of card game developed in recent years for
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`electronic devices: “the use of a two-dimensional card in the battle scene is
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`sometimes boring, [and] there have been calls for improvement.” Ex. 1001, 1:42-
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`44. The solution provided by the ’583 patent is “a game program and a game
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`processing method of a game that gives a user a high visual effect, and an
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`information processing apparatus that controls the game.” Ex. 1001, 1:48-51.
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`Specifically, for example, determining in which divisions or frames particular
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`panels may be disposed, disposing panels within those particular divisions or
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`frames, and decrementing user points based on the disposition. See, e.g., Ex. 1001
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`Claim 1, 4:39-41, 8:14-18, and 8:19. Technical solutions to known problems such
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`as this, with computer interfaces that were “not user friendly,” are not abstract.
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`Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 (Fed. Cir. 2018)
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`(“The method provides a spe