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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 PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
`_____________
`
`Record of Oral Hearing
`Held June 20, 2019
`_____________
`
`
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JENNIFER BUSH, ESQUIRE
`GEOFF MILLER, ESQUIRE
`MICHAEL SACKSTEDER, ESQUIRE
`Fenwick & West, LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 84041
`650-988-8500
`JBush-PTAB@fenwick.com, gmiller@fenwick.com,
`msacksteder@fenwick.com
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JESSE O. COLLIER, ESQUIRE
`B. GRAHAM NELSON, ESQUIRE
`OLIFF PLC
`277 South Washington Street
`Suite 500
`Alexandria, VA 22314
`703-836-6400
`pgrdocket@oliffcom, jcollier@oliff.com, bnelson@oliff.com
`
`
`
`SID V. PANDIT, ESQUIRE
`TIMOTHY J. MAIER, ESQUIRE
`ANDREW RAMOS, ESQUIRE
`DANIEL J. EHRLICH, ESQUIRE
`Maier & Maier PLLC
`345 South Patrick Street
`Alexandria, VA 22314
`703-740-8322
`patent@maierandmaier.com, svp@maierandmaier.com,
`tjm@maierandmaier.com
`
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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`The above-entitled matter came on for hearing on Thursday, June 20,
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`2019, commencing at 9:02 a.m., at the United States Patent and Trademark
`Office, USPTO Madison Building, 600 Dulany Street, Alexandria, VA
`22314.
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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`P R O C E E D I N G S
`- - - - -
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` JUDGE KIM: All right. Welcome. Today, we're going to have --
`we'll be arguing two cases, PGR2018-00039 and - 00036. 39 will go first
`and then we will have a break and then do 36 afterwards.
` So regarding 39 -- I'm Michael Kim. On the line with us, we have
`Judge Lynne Browne and Carl DeFranco.
` And a few housekeeping things. One, again, they can't see the slides
`or not very well, so if you could just refer to any slides or exhibits by
`number and page, we'd greatly appreciate it. Also, for in and out, if we
`could please restrict that times when counsel changes, we'd appreciate it.
` So with that, we'll begin with appearances, starting with Petitioner.
` MS. BUSH: Good morning, Your Honor. Jennifer Bush, lead counsel
`for Petitioner, Supercell OY, and I have with me backup counsel, Michael
`Sacksteder and Geoff Miller.
` JUDGE KIM: All right. About how much time would you like to
`reserve for reply?
` MS. BUSH: I'd like to reserve 15 minutes for rebuttal.
` JUDGE KIM: And Patent Owner?
` MR. COLLIER: Your Honor, Jesse Collier, lead counsel for GREE,
`Patent Owner, and I'm with co-counsel Graham
`Nelson, and we'd also like to reserve 15 minutes for rebuttal.
` JUDGE KIM: Okay. Great. And then because there's a motion to
`amend the 00039 case, the way it's structured, even though technically
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`Patent Owner presented motion to amend, Petitioner, if you want to address
`it in your opening remarks, you can at that time.
` Great. I think we're all set. So unless anyone upholds anything else,
`Ms. Bush, you can begin.
` MS. BUSH: Good morning, Your Honors.
`So we're talking today about PGR2018-00039. This refers to
`Patent 9,669,308, which I'll be referring to as the '308
`Patent as we go along, and this case is about two different modes that can be
`used for video game battle and the claims described determining which of
`those modes to use, based on certain conditions being met including user
`input.
` Slide 2, please? So we're starting out here with some language that
`was just in the decision granting institution, which is a statement by the
`Board that they were persuaded that Petitioner showed that the claims are
`directed to -- there is a typo here actually. It's determining a procedure for a
`video game battle based on user input, as what the claim is directed to and
`that that was an abstract idea.
`And then, secondly, that the additional elements in Claims 1 through 8 do
`not transform the abstract idea into patent-eligible subject matter.
` Slide 3. The claims are directed to the abstract idea of determining a
`procedure for a video game battle based on user input. And we have just
`here, Figure 13, which just is a flow-chart as you can see. And we're really
`talking about a -- sort of a decision tree aspect right around Step
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`S101 there, where you look at, have you battled someone in the past, and in
`fact, have you beat them? And then there's some choices that the user can
`make.
` Slide 4. Looking at the claims themselves, the
`Patent Owner does express a different opinion on what the claims are
`directed to, so I just want to talk about that really quick even though the
`Board had preliminary decided that this was, in fact, the abstract idea that
`the claims are directed to. So what I've got in red here are those two main
`determining steps. One, the first one occurs when the user has not battled
`with the determined opponent in the past, and that's determined in the
`procedure to be the first mode.
` And then the second is when the user has battled with the determined
`opponent in the past. And that's determining, based on the user operation
`received, the procedure to be either the first mode or the second mode. And
`the way that we'll see that, that works is there's actually an aspect where the
`user decides. They say, you've battled this person before; would you like to
`proceed manually or would you like to use a different mode?
` So what's important here is while the Patent Owner argues that there's
`an alternative articulation of what the claims are directed to, that has to do
`with executing a battle procedure. You'll see that they actually focus all of
`their attention throughout all of both Step 2A and 2B on these two steps, so
`it seems like they're really focused on them as well.
` Slide 5, please? So the argument that Patent Owner had made in the
`preliminary response that the Board had rejected was that the claims are
`directed to a specific manner of executing a video game battle in a way that
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`results in an improved system for executing the battle game. So there's no
`analysis that they ever provided as to why that articulation would be more
`accurate. But as you can see with the highlighted in blue, that only refers to
`the very last element of executing the battle. There's a whole lot of claim
`that's lost there.
` Slide 6, please? Again, what the Board said is that the claims are
`directed to a procedure for determining how a battle in a video game will
`proceed based on user input, which is an abstract idea, and also that there
`were no technical improvements.
` Slide 7, please? So as I noted, Patent Owner's articulation is really
`just focused on that last claim limitation. In our papers, we refer to a test
`site -- I believe, actually, Judge Kim, you had put forward in the Institution
`decision in 029 case, which is if you look at removing from the claim the
`elements that pertain to the alleged aspect that it's directed to, does the claim
`still make sense?
` And so we did that analysis, and under Patent
`Owner's articulation, the claim completely still makes sense.
`You still have both the determining elements, which are the ones that they
`argue throughout the case, so it seems like an unlikely candidate for what the
`claim is directed to, whereas our articulation of the two determining steps
`would really render the claim meaningless because you -- all the determining
`would be gone. You just have -- receiving input and then executing without
`knowing really what you're executing. So that seems like our articulation
`makes more sense.
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` And Patent Owner's experts seem to really agree. We had articulated
`that if we had just looked at the claim and said this claim is actually just
`about executing a battle, do you think that would be correct? And their own
`expert said, no. They didn't think that that articulation that Patent
`Owner had made was accurate.
` Slide 8, please? Okay. So moving on to Step 1 of the Alice analysis.
`This is just a little clip from Patent Owner's own discussion of Prong 1. The
`-- what I'm showing here with the highlighting is that they, themselves, also
`are focusing again on these determining steps when looking at the abstract
`idea. And then, likewise, their expert in his declaration only argued the
`second one, which is the determining step when you have battled with an
`opponent in the past. So this is just to show that they focused on those two
`steps.
` Slide 9, please? So we need to take a brief detour into claim
`construction here. And the reason for that is the way that this claim is set up
`is that there are two determining steps in Claim 1, and they begin with
`logically complimentary conditions, which establish a pair of alternative
`steps. So either the user has battled with opponent in the past or they've not
`battled this opponent in the past. They can't both be true. And on
`deposition, GREE's expert agreed to that. I have the two steps here just
`showing those two conditions, and then I have some green highlight as well,
`which we'll talk about in Slide 10, please?
` So performance of the claim requires only one of the two conditions;
`either we've battled the opponent in the past or the user has not. And then if
`they have not, there's a further nested condition, which is when they have
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`battled the opponent in the past, they determine the procedure to be one of a
`first mode or a second mode. So even if they've battled the opponent in the
`past, there's still a further conditional which is -- and in this case, it's by user
`action. I have the little portion of the representative UI from Figure 6B,
`which basically says, fight by myself or fight automatically is sort of a visual
`representation here. Here, the user is selecting it.
` Slide 11, please? So in the Ex Parte Schulhauser case, the court held
`that -- I'm sorry, the PTAB held that conditional limitations may not be given
`patentable weight because the steps may -- when they're contingent, a
`condition may not be satisfied, and the performance recited by the step need
`not be carried out for the method to be performed. This has come up in
`other cases as well, I think, more recently
`Judge Moore raises in the MPHJ vs. Ricoh case, so this is pretty settled law
`at this point.
` And Claim 1 does not require performance of that second mode. So,
`really, the second mode, which is what Patent Owner focuses on throughout
`the entire Alice analysis is only executed if both, one, the user has battled the
`determined opponent in the past, and two, the procedure is the second mode
`based on that user selection. So both of those conditions have to be met
`before that even applies at all.
`And Patent Owner, as I noted, spends pretty much the entirety of its 101
`analysis on that second mode.
` Slide 12, please?
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` JUDGE DEFRANCO: This is Judge DeFranco. So you're saying that
`we can ignore the second mode entirely in determining whether this -- in
`determining 101 eligibility?
` MS. BUSH: I don't think we ignore it entirely. I think the claim does
`not require performance of it. And while
`Petitioner has taken that position, we obviously address this element through
`the entirety of the analysis in case the Board does not agree with that
`construction. But it's our position based on Ex Parte Schulhauser and a
`subsequent federal case law that when you have alternative conditions such
`as this, they're not -- one of them is not required to perform the claim.
` Patent Owner did bring us that exact concern that we're ignoring claim
`limitations and made reference to the new guidance examples from 2019.
`There's a typo there. It's actually Exhibit 2006, not 1006. And they referred
`to a list of ten pages in the example, and they claimed the patent office in its
`own examples fully considers limitations containing conditions precedent
`when determining eligibility, despite the fact that one may not always be
`triggered.
` I'd like to know what those are. They didn't call out any of the
`examples. They didn't do a comparison of those to their claims. And in
`looking at them, it's really not clear to me what they would be referring to
`there, so I'd be curious to know what those are. And in fact, in their own
`analysis, they talk about -- this is from the sur-reply, as explained above. It
`is the combination of offering the second mode only under a specific
`circumstance that the user has battled with the opponent in the past, and the
`fact that the second mode will always require a fewer user operations that
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`result in the improvement to the system to the technological field. And so
`they, themselves, acknowledge that it's only under this particular
`circumstance that that applies.
` JUDGE KIM: Counsel, does it matter that this is a computer readable
`medium claim as opposed to a method claim? Doesn't Ex Parte Schulhauser
`show how to treat the two differently?
` MS. BUSH: Right. So I assume you're making reference to the fact
`that there's some case law distinguishing between system claims and method
`claims. And, yes, I think that's relevant to the analysis. I think with respect
`to methods claims, it's very clear that conditions precedent can make those
`steps optional. I think with respect to system claims, it's a little bit fuzzier
`based on the case law. There have been some cases in which courts have
`looked at computer readable medium claims and said if there is sufficient
`structure supporting that and that structure has to perform all those
`limitations, that that's sufficient. And there's also been other case law, I
`mentioned on MPHJ case that Judge Moore had commented on, where it
`went the other way. So I think that's a little bit fuzzier.
` Here, we do have some concerns about what -- we didn't discuss
`anything for 112(6) in this case, but there are some interesting aspects that
`come up, especially as it relates to the difference between these claims and
`the amended claims -- or proposed amended claims with respect to what
`those structures are that are actually doing these function, so that might be
`addressed a bit more later as well.
` Okay. Slide --
` JUDGE DEFRANCO: Just following up on Judge Kim's
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`question. So isn't this structure here of first and second modes? Is that what
`you were referring to as far as this 112(6) construction goes (indiscernible).
` MS. BUSH: So my understanding of that is not -- a mode is not a
`structure, right? It's a selection between whether the battle is going to be
`performed a certain way, that procedure or a different way.
` What I was referring to with respect to structure and what the case
`law talks about is whether the structure outlined in the claim. So, for
`example, if it's a computer readable medium claim or a system claim and it
`says the processor does these things, is there actually support saying that the
`processor performs those functions? The case law that's gone that direction,
`saying that those limitations are a requirement of the claims, are only when
`those structures do, in fact, perform the functions, which is a processor.
` JUDGE DEFRANCO: Yes. But here we have a recording medium
`that has a first mode and a second mode. Can we read those two modes as
`really a first means and a second means that are then requiring us to go back
`to the specification to define the structure?
` MS. BUSH: Yeah. Like I said, we didn't do a full 112(6) analysis. I
`think that would be the analysis, is that those means would then have to have
`corresponding underlying structure in the specification. But the case law
`that was more thorough about it, in my opinion, was the one that talked a
`little bit about the actual physical structure; whether the processor, for
`example, actually performed these functions. I think that it's a little bit --
` JUDGE DEFRANCO: Did no one ever debate that argument?
` MS. BUSH: No.
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` JUDGE KIM: Do you have a pinpoint -- or not a pinpoint, just a case
`law cite for the case?
` MS. BUSH: For the MPHJ case?
` JUDGE KIM: MPHJ. You don't have to get it now if you don't have
`it.
` MS. BUSH: It's Federal Circuit case, MPHJ vs.
`Ricoh, 847 F.3d 1363 at 1379. And that's Federal Circuit of
`2017.
` JUDGE KIM: Great. Thank you.
` MS. BUSH: Okay. Did I answer your question, Judge DeFranco?
` JUDGE DEFRANCO: Yes.
` MS. BUSH: Okay. Slide 13, please?
` Okay. So another brief side note here has to do with the timing of this
`case and with respect to the new guidance that came out in January.
` So as you know, the guidance issued after the parties' initial
`briefing, so the petition Patent Owner's preliminary response and the
`institution decision, of course. So we have sort of a combination of things to
`talk about for
`Step 2A that are a little bit different than what they would have been prior to
`that.
` So what I'm planning to do for 2A is I'm going to talk briefly about the
`relevant cases. I think the papers are pretty clear for both parties with
`respect to that briefing, and then I'm going to jump to the guidance itself.
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` So because of the timing, Petitioner hasn't had an opportunity to
`respond to some of Patent Owner's issues that were raised for the first time
`in sur-reply.
` For example, they went to some of those new examples that came with
`the guidance, example 37, they talk about in the sur-reply for the first time.
`We've not had an opportunity to respond to that. However, the other set of
`documents that have to do with the motion to amend did allow Petitioner a
`sur-reply. And they had raised those similar arguments in the reply to the
`opposition, so we did reply to them with respect to the motion to amend.
` So certain of those arguments still apply as well to the original
`claim, so I'll speak to those as well, just since they're in the same vein, if that
`makes sense.
` JUDGE KIM: Yes. Given the timing, we will apply -- we will
`consider everything as a whole on the record.
` MS. BUSH: Okay. Slide 14, please?
` So beginning with the case law, the Board agreed that the claims in
`this case were similar to those in Affinity Labs and Two-Way Media, which
`imply results based functional language without reciting deficiently specific
`means or technology for achieving those functional results. And that was in
`the decision granting institution.
` And then we talk about in Claim 1 here, determining an opponent with
`whom the user is to battle in the battle of -
`- the battle game and when the user has not battled with the determined
`opponent in the past -- this was again, from the institution decision, but
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`Claim 1 does not indicate how such steps are performed. So the Board also
`agreed that these were functional upon institution.
` Slide 15, please? Patent Owner attempts to characterize the patent as
`more similar to graphic interface cases, especially like Data Engine. I think
`that fails in this case. There really isn't any user interface aspects that are
`recited in the claims, certainly not any specific structured graphical user
`interface to overcome a technical problem. They try to argue that the
`specific structure is the second mode and that the function it performs is
`executing the battle with fewer operations than the first mode.
` The second mode is not a structure. In the Data
`Engine case, they were talking about actual structures within the user
`interface itself, and this is something very different here. The second mode
`is a procedure. In fact, the claims say it's a procedure, and a procedure is not
`a structure.
` Okay. Slide 16, please? A little bit more, just here, about user
`interface. As I said, second mode is not a structure at all. Procedures such
`as these are commonly known to be executable by a program. They usually
`perform a single task and sometimes are called functions. So we have a
`function performing a function, not a structure.
` JUDGE DEFRANCO: Well, is this language with your user
`operation? Aren't the operations the icon, so you would have fewer icons up
`on the screen or fewer displays with what that operation is?
` MS. BUSH: So --
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` JUDGE DEFRANCO: So the user doesn't have to go through as many
`steps in order to do this second mode battle; asI guess it's called in the
`claims?
` MS. BUSH: Right.
` JUDGE DEFRANCO: And, therefore, isn't that really structure? It's
`whatever the icon is up on the screen, that doesn't have to be claimed.
` MS. BUSH: Your Honor, I think that -- so there hasn't been a specific
`construction of what fewer limitations means, but it seems to -- I'm sorry,
`fewer actions. It seems to indicate that the user has to do less things, and
`we'll have some discussion a little bit later about how that can be even one
`fewer. Right? One less operation by the user is sufficient for that.
` What we don't have in the claims and what I think would make it
`closer to a Data Engine type of case is if they recited in the claims that,
`here's a user interface that gives this user the option, for example. And that
`they click on, and they have -- under the first mode, they would have a
`certain number of user operations, and he would be talking about how that
`looks in the user interface, and then also, the same thing for the user
`interface when there are fewer.
` This -- these claims just don't --
` JUDGE DEFRANCO: You -- so you're saying the fewer user
`operations doesn't necessarily encompass an icon or a display or an
`interface?
` MS. BUSH: Right. There's nothing recited in the claim about what
`that function would look like in the form of a user interface. Does that
`answer your question?
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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` JUDGE DEFRANCO: Yeah, it does. I'm just wondering about this
`whole -- what the meaning is of operation and whether we're going to have
`to go down that road.
` When is that called into play, some sort of an interface, or does it
`not?
` MS. BUSH: So I think some of the --
` JUDGE DEFRANCO: Your argument is that it does not?
` MS. BUSH: Correct. Our argument is that not. And there's a lot of
`discussion and -- in our papers and agreement in testimony by Patent
`Owner's expert, that these claims are functional and as long as the functions
`can be performed, there's no specific hardware or software required. And so
`I think that's relevant to that question.
` JUDGE DEFRANCO: Okay. And you'll point us to that evidence?
` MS. BUSH: Absolutely.
` JUDGE DEFRANCO: (indiscernible).
` MS. BUSH: Yes.
` JUDGE DEFRANCO: Okay.
` MS. BUSH: So if we can go to Slide 17, please?
` So this is, as I mentioned, example 37 came up for the first time in the
`primary case papers in the -- in Patent Owner's sur-reply. So Petitioner has
`not had an opportunity to respond to that. That was raised newly in the sur-
`reply. However, it did also come up in the papers related to the motion to
`amend, and so my citations here are to those papers when I talk about where
`we've talked about it.
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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` So what -- this is relevant to the Prong 1 and 2 analysis under the new
`guidance. So under Prong 1, there are now abstract subject matter
`groupings, and you need to fall under one of these for Prong 1. And, here,
`we are talking about mental processes.
` Now, example 37 has Claim 1, Claim 2 and Claim
`3. Patent Owner's focused on Claim, 2 and they'll probably talk about that
`today during their presentation.
` And what I think is important, when we're looking at these examples
`in the guidance, is really not just looking at the claim and saying, oh, this
`one, you know, was yes under Prong 1 or no under Prong 2, but actually
`trying to understand the differences between these claims, especially in
`situations where you have similar claims that would be under the same
`patent for the examples.
` So in this case, there is a big difference between Claim 2, which was
`found not to have a judicial exception, and Claims 1 and 3, which were
`found to have the judicial exception. And, fortunately, they've given us a
`determining step, so that's handy for us to use. And in Claims 1 and, 3 the
`determining step is determining the amount of use of each icon over a
`predetermined period of time. And so both Claims 1 and 3 recite that
`determining step, and that was found to recite a judicial exception.
` Now, what Claim 2 does is add a bunch of substance to the middle of
`that determining step, and it instead says, determining -- so I have the one
`for Claim 3 up there, determining the amount of use of an icon -- and here's
`the added section -- using a processor that tracks how much memory has
`been allocated to each application associated with each icon over the
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`Case PGR2018-00036 (Patent 9,662,580 B2)
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`predetermined period of time. So Claim 2 adds a bunch of meat in there,
`which takes that -- which changes the analysis, such the -- a judicial
`exception is not recited according to these examples, because that -- we
`actually have a processor tracking the memory usage allocated to each
`application.
` So that's the difference there. And the reason that difference is
`important is that Claim 3, as shown here, and Claim 1 as well, is way more
`similar to the claims we've got here in this case, which just recite
`determining based on whether you've battled an opponent or not, which
`procedure to follow. There's nothing about using memory or a processor to
`track anything or sort of usage of the computer, and I think that really is
`what matters here. So our claims are very similar.
` JUDGE KIM: But isn't that -- isn't the one here simpler because, I
`mean, here, ultimately, you're just counting, right? Icon, one checkmark, et
`cetera. You know, determining which mode was selected, that seems a little
`bit more involved.
` MS. BUSH: So in the first determining step, it's sort of an easy yes or
`no. Have you battled -- if you haven't -- if you have not battled this
`opponent, you automatically use first mode. The second one has more
`language, as you've noted. And when you have battled the opponent in the
`past, there's still this further condition of whether you're doing to do first
`mode or second mode. Importantly, that decision is actually made by the
`user. So it's not like this Claim 2 where they have a processor that's tracking
`memory. On the flip side, it's actually a user who's selecting something and
`the device is just responding to that selection.
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`Case PGR2018-00039 (Patent 9,669,308 B2)
`Case PGR2018-00036 (Patent 9,662,580 B2)
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` Slide 18, please?
` JUDGE BROWNE: Just before we get off of the subject matter, of
`groupings, are there any other groupings that you think that these claims
`might fit into?
` MS. BUSH: So we haven't presented anything in our papers to that
`effect. You know, taking a look at the claims themselves, that's the one that's
`the most natural fit in my opinion. As I'm sure you know, there are some
`other cases that -- so for example, in the guidance, they take about the
`Mortgage Grader case being a mental process case, and I think this one's
`sort of similar to that. And there's some discussion of mental processes and
`Electric Power Group, I think. These are most similar to that. So we
`haven't provided an analysis for any of the other groupings. I think, you
`know, based on what I know about them, I would say that --
` Would you go back just one slide, Mike?
` Based on these different groupings and what I know about them
`through case law and looking at this case, I think it possibly also could fall
`under certain methods of organizing human activity, as I'm sure you recall
`from other cases. This is a gaming case. Some of this is just about the rules
`corresponding to how to play this game. So I think the set of cases under
`(indiscernible) might be applicable to this as well. But we -- like I said, we
`didn't have that in our briefing.
` JUDGE KIM: You've got 25 minutes.
` MS. BUSH: Okay. Slide 18.
` So, again, we're talking about mental processes, and I'm just going to
`do the exact same analysis that they did here for Claim 37, which is whether
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`Case PGR2018-00036 (Patent 9,662,580 B2)
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`these steps could cover a practical performance in the mind, but for the
`recitation of the computer performing them; compara
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