IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`
`
`Case PGR2018-00036
`U.S. Patent No. 9,662,580
`
`
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION FOR POST GRANT
`REVIEW OF U.S. PATENT NO. 9,662,580
`
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I. 
`II. 
`
`V. 
`
`B. 
`
`INTRODUCTION ........................................................................................... 1 
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325
`(D) .................................................................................................................... 2 
`III.  OVERVIEW OF THE RELEVANT PORTIONS OF THE ‘580
`PATENT .......................................................................................................... 9 
`IV.  THE PETITION DOES NOT MEET ITS BURDEN UNDER ALICE
`OR BERKHEIMER ........................................................................................ 13 
`A. 
`The Petition’s Analysis Regarding a Representative Claim Is
`Legally Deficient ................................................................................. 13 
`The Petition Does Not Address the Features of Dependent
`Claim 2 ................................................................................................ 14 
`The Petition Does Not Address Dependent Claim 3 ........................... 15 
`C. 
`The Petition Does Not Address Dependent Claim 4 ........................... 16 
`D. 
`The Petition Does Not Address Dependent Claims 5-6 ...................... 17 
`E. 
`THE CLAIMS ARE SUBJECT MATTER ELIGIBLE ................................ 17 
`A. 
`The Petition Fails to Properly Address the Claims Under Step
`One of Alice ......................................................................................... 18 
`The ‘580 Specification and Claims Describe A Specific Manner
`of Improving Multiplayer Online Battle Games ................................. 20 
`The Claims of the ‘580 Patent Are Necessarily Rooted In
`Computer Technology ......................................................................... 23 
`The Claims of the ‘580 Patent Recite A Specific Manner of
`Achieving A Result ............................................................................. 30 
`E.  McRO and Data Engine Support the Patentability of the ‘580
`Claims .................................................................................................. 35 
`
`B. 
`
`C. 
`
`D. 
`
`
`
`i
`
`

`

`F. 
`
`The Claims Recite Technical Improvements to Computers and
`Video Game Technology .................................................................... 42 
`The Inquiry Must End At Step One of the Alice Analysis .................. 45 
`G. 
`VI.  PETITIONER’S ARGUMENTS FAIL UNDER STEP TWO OF
`ALICE ............................................................................................................ 46 
`A. 
`The Claims Recite an Inventive Concept ............................................ 47 
`B. 
`The Claims Capture A Technological Improvement to Video
`Game Technology ............................................................................... 48 
`The Apple v. Ameranth Case Is Not Analogous .................................. 53 
`The Petition’s Step Two Alice Arguments Do Not Address the
`Actual Claim Language ....................................................................... 55 
`Recent USPTO Guidance In Light of Berkheimer .............................. 58 
`Petitioner Provides No Evidence That the Claim Limitations
`Are Well-Understood, Routine, and Conventional ............................. 59 
`The Dependent Claims Recite Additional Inventive Features ............ 61 
`G. 
`VII.  THE BOARD RECOGNIZES, AND PATENT OWNER AGREES,
`THAT THE PETITION’S § 112(B) ARGUMENTS ARE WITHOUT
`MERIT ........................................................................................................... 66 
`VIII.  CONCLUSION .............................................................................................. 69 
`
`
`
`C. 
`D. 
`
`E. 
`F. 
`
`
`
`ii
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`

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`TABLE OF AUTHORITIES
`
`Page
`
`Cases 
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`
`134 S. Ct. 2347 (2014) ...................................................................... 19, 37, 47
`
`Apple Inc. v. Ameranth, Inc.,
`
`842 F.3d 1229 (Fed. Cir. 2016) .............................................................. 53, 54
`
`Berkheimer v. HP, Inc.,
`
`881 F.3d 1360 (Fed. Cir. 2018) ............................................................. passim
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
`
`776 F.3d at 1343 (Fed. Cir. 2014) ................................................................. 47
`
`Core Wireless Licensing S.A.R.L v. LG Elecs., Inc.,
`
`880 F.3d 1356 (Fed. Cir. 2018) ............................................................. passim
`
`Data Engine Techs. LLC v. Google LLC,
`
`906 F.3d 999 (Fed. Cir. 2018) ............................................................... passim
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`
`773 F.3d 1245 (Fed. Cir. 2014) ..................................................................... 19
`
`Diamond v. Diehr,
`
`450 U.S. 175 (1981).......................................................................... 32, 46, 56
`
`Enfish, LLC v. Microsoft Corp.,
`
`822 F.3d 1327 (Fed. Cir. 2016) ........................................................ 23, 27, 46
`
`Fox Factory, Inc. v. SRAM, LLC,
`
`IPR2016-01876, Paper 8 (PTAB Apr. 3, 2017) .............................................. 3
`
`In re TLI Commc’ns,
`
`823 F.3d 607 (Fed. Cir. 2016) .......................................................... 32, 46, 56
`
`Internet Patents Corp. v. Active Network, Inc.,
`
`790 F.3d 1343 (Fed. Cir. 2015) .............................................................. 19, 46
`
`
`
`iii
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`

`

`
`Markman v. Westview Instruments, Inc.,
`
`52 F.3d 967 (Fed. Cir. 1995) ............................................................ 33, 34, 38
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`
`566 U.S. 66 (2012) ......................................................................................... 47
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`
`837 F.3d 1299 (Fed. Cir. 2016) ............................................................. passim
`
`OIP Techs., Inc. v. Amazon.com, Inc.,
`
`788 F.3d 1359 (Fed. Cir. 2015) ..................................................................... 58
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) ........................................................ 33, 34, 38
`
`SAS Inst., Inc., v. Iancu,
`
`138 S. Ct. 1348 (2018) ................................................................................... 66
`
`Thales Visionix Inc. v. United States,
`
`850 F.3d 1343 (Fed. Cir. 2017) ..................................................................... 23
`
`Ultramercial, Inc. v. Hulu, LLC,
`
`772 F.3d 709 (Fed. Cir. 2014) ....................................................................... 19
`
`Ziegmann, N.P.Z., Inc., v. Stephens,
`
`IPR2015-01860, Paper 13 (PTAB Sept. 6, 2017) ........................................... 3
`
`Statutes 
`35 U.S.C. § 325(d) ..................................................................................................... 2
`
`Other Authorities 
`H.R. REP. NO. 112-98, pt. 1, at 48 (2011) .................................................................. 3
`
`
`
`
`iv
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`

`

`Memorandum from Robert W. Bahr, Deputy Comm’r for Patent
`Examination Policy, to Patent Examining Corps, Changes in
`Examination Procedure Pertaining to Subject Matter Eligibility,
`Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
`Inc.) (April 19, 2018) ............................................................................. passim
`
`
`MPEP § 2173.02(II) ................................................................................................. 66
`
`
`
`
`
`
`
`v
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`

`

`Exhibit No.
`
`2001
`2002
`
`EXHIBIT LIST
`
`
`Exhibit Description
`Declaration of David Crane
`David Crane’s Curriculum Vitae
`
`
`
`vi
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`

`

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`
`
`Pursuant to 37 C.F.R. § 42.220, Patent Owner GREE, Inc. (“Patent Owner”
`
`or “GREE”) submits the following Patent Owner Response to the Petition for Post
`
`Grant Review (“Pet.”) of U.S. Patent No. 9,662,580 (“the ‘580 patent”) filed by
`
`Supercell Oy (“Petitioner” or “Supercell”). For at least the following reasons, the
`
`challenged claims are patentable.
`
`I.
`
`INTRODUCTION
`The ‘580 patent describes and claims technology that is unique to social
`
`networking services games. Such games exist only in a virtual world and are thus
`
`necessarily rooted in computer technology. The claims in the ‘580 patent are directed
`
`to a control apparatus, control method, computer-readable recording medium, and
`
`game system for manipulating game data to improve the unexpectedness, dramatic
`
`impact, and taste of a game in which multiple players can participate. By its very
`
`nature, the technology disclosed by the ‘580 patent is distinguished from patent-
`
`ineligible processes for which computers are invoked merely as a tool.
`
`
`
`Petitioner’s alleged ground of invalidity under 35 U.S.C. § 101 does not meet
`
`the burden required to demonstrate unpatentability by a preponderance of the
`
`evidence. For instance, the Petition fails to set out any relevant claim constructions.
`
`If that is not enough, the Petition attempts to eliminate all meaning from the claims
`
`by cherry-picking elements from the claims rather than considering them in their
`
`
`
`
`1
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`

`

`
`
`entirety. Most glaringly, the Petition does not provide any evidence to substantiate
`
`its claims of unpatentability. As a result, the Board should deny Petitioner’s request
`
`and confirm the validity of the challenged claims.
`
`II. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325
`(D)
`Patent Owner respectfully requests the Board exercise its discretion under 35
`
`U.S.C. § 325(d) to terminate this review as an improper attempt to re-adjudicate
`
`arguments fully considered during prosecution of the ‘580 patent. Although the
`
`Board declined to invoke this discretion to deny institution of the Petition, see Paper
`
`7, at 13-14 (“Inst. Dec.”), Patent Owner urges the Board to reconsider based on the
`
`interests of judicial economy and fairness, and, at least, give this evidence due
`
`weight in the Final Written Decision. For the reasons discussed herein, the Board
`
`need not, and should not, rehash issues already addressed, and overcome, during
`
`prosecution of the ‘580 patent.
`
`Under 35 U.S.C. § 325(d), Congress granted the Board broad discretionary
`
`power to deny a petition for post-grant review “because, the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” 35 U.S.C.
`
`§ 325(d). A set of prior art or arguments may be considered “substantially the same
`
`if they are cumulative to or substantially overlap with issues previously considered
`
`by the Office with respect to the patent.” Ziegmann, N.P.Z., Inc., v. Stephens,
`
`
`
`
`2
`
`

`

`
`
`IPR2015-01860, Paper 13 at 8 (PTAB Sept. 6, 2017) (internal quotation marks and
`
`citation omitted). The Board has indicated its discretion under § 325(d) involves a
`
`balancing act of the particular circumstances of the proceeding, the competing
`
`interests of the parties, and the needs of the Board. Ziegmann, IPR2015-01860, Paper
`
`11 at 12-13 (“While petitioners may have sound reasons for raising art or arguments
`
`similar to those previously considered by the Office, the Board weighs petitioners’
`
`desires to be heard against the interests of patent owners, who seek to avoid
`
`harassment and enjoy quiet title to their rights.”). There are also “interests in
`
`conserving the resources of the Office and granting patent owners repose on issues
`
`and prior art that have been considered previously.” Fox Factory, Inc. v. SRAM,
`
`LLC, IPR2016-01876, Paper 8 at 7 (PTAB Apr. 3, 2017).
`
`The Board’s broad application of § 325(d), particularly regarding what
`
`constitutes “previously presented to the Office,” indicates its disfavor of duplicative
`
`proceedings that force the patent owner to repeatedly defend a patent’s validity based
`
`on the same or substantially the same arguments. Likewise, the legislative history of
`
`§ 325(d) further confirms that post-grant proceedings “are not to be used as tools for
`
`harassment or a means to prevent market entry through repeated litigation and
`
`administrative attacks on the validity of a patent. Doing so would frustrate the
`
`purpose of the section as providing quick and cost effective alternatives to
`
`litigation.” H.R. REP. NO. 112-98, pt. 1, at 48 (2011).
`3
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`
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`

`

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`
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`Moreover, Petitioner’s arguments are nothing more than an attempt to
`
`substitute its biased judgment for that of the Examiner. In particular, Petitioner
`
`contends that claims 1-10 of the ‘580 patent are invalid under 35 U.S.C. § 101 for
`
`failing
`
`to be directed
`
`toward patent-eligible subject matter. Pet. at 26.
`
`Unsubstantiated and unsupported by any evidence, Petitioner alleges that the
`
`appropriate 35 U.S.C. § 101 guidance was not addressed during prosecution and
`
`baldly accuses the Office of misapplying and misunderstanding Federal Circuit
`
`cases, such as the McRO and Enfish decisions. Id. at 31-34. But, as detailed below,
`
`Petitioner’s contentions are directly refuted by looking at the ‘580 patent’s extensive
`
`prosecution history on this very ground. In fact, the Examiner rejected the claims
`
`under 35 U.S.C. § 101 not once, but twice during prosecution of the challenged
`
`patent.
`
`In the first, substantive Office Action, dated April 15, 2016, the Examiner
`
`rejected claims 1-10 under 35 U.S.C. § 101 as being directed to non-statutory subject
`
`matter. Ex. 1002 at 121-22. Applying the current two-step Alice test for subject
`
`matter eligibility, the Examiner determined, under the first step, that “[c]laims 1-10,
`
`directed to depicting rewarding a player in a game, embody the abstract idea in and
`
`of itself.” Id. at 121. Under the second step of the analysis, the Examiner further
`
`concluded:
`
`
`
`
`4
`
`

`

`
`
`
`recited elements “storing” and
`The additionally
`“displaying” do not amount to significantly more than
`mere instructions to implement the idea on a computer
`and/or recitation of generic computer structure that serves
`to perform generic computer functions that are well-
`understood,
`routine,
`and
`conventional
`activities
`previously known to the pertinent industry. Viewed as a
`whole, these additional claim elements do not provide
`meaningful limitations to transform the abstract idea into
`a patent eligible application of the abstract idea such that
`the claim(s) amounts to significantly more than the
`abstract idea itself.
`Compare Ex. 1002 at 121-122 with Pet. at 27-28 (providing the same legal standard).
`
`Applicant responded to the Office Action on June 28, 2016, amending the claim
`
`language and presenting arguments to refute the Examiner’s abstractness contention.
`
`See Ex. 1002 at 105-112. On September 15, 2016, the Examiner issued a Final Office
`
`Action, maintaining the same rejection of the claims under 35 U.S.C. § 101 for
`
`allegedly being directed to an abstract idea without significantly more. Id. at 85-89.
`
`In particular, the Examiner addressed each of Applicant’s arguments, and indicated
`
`that while they had been fully considered, the arguments were not persuasive. Id. at
`
`93-95. The Examiner maintained this same position in an Advisory Action, dated
`
`December 1, 2016, submitting that while the request for reconsideration had been
`
`considered, it had not placed the application in condition for allowance. Id. at 55-57.
`
`It was not until review of the December 15, 2016 Amendment that the Examiner
`
`
`
`
`5
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`

`

`
`
`agreed with the Applicant’s analysis, consequently allowing claims 1-10 of the ‘580
`
`patent in a Notice of Allowance dated January 25, 2017. See id. at 9-15.
`
`Starting with the initial non-final Office Action, claims 1-10 of the ‘580 patent
`
`were analyzed under the two-step framework for subject matter eligibility, set forth
`
`by the Supreme Court in Alice Corp. v. CLS Bank. Further, as evident from the
`
`prosecution history, several guidelines issued by the Office before and during the
`
`2016-2017 timeframe were also reviewed and explicitly considered by the Office.
`
`Above all, Applicant provides a detailed analysis as to exactly why claims 1-10 are
`
`directed to patent eligible subject matter, particularly considering the McRO and
`
`Enfish decisions.
`
`Petitioner strains credulity by arguing that the Supreme Court’s Alice decision
`
`was relatively new at the time the ‘580 patent issued – in May of 2017 – a mere nine
`
`months before the filing of the Petition and four years after Alice was decided. See
`
`Pet. at 31. On its face, this argument holds no weight.
`
`Petitioner’s additional arguments that § 101 was not “fully addressed” are
`
`either unsupported or directly refuted by the ‘580 file history. For example,
`
`Petitioner asserts that “the ‘exclusively associated’ amendment in no way advances
`
`computer or video game technology – it is merely an irrelevant feature added to the
`
`claim language to draft around prior art.” Pet. at 33. But, the Petition provides no
`
`evidence whatsoever to support this assertion. See id. However, this is one of the
`6
`
`
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`

`

`
`
`features that “enhances the player experience and the interaction both between
`
`different players and between a player and the non-player program by facilitating
`
`sudden shifts in the relative standing of the players.” See Ex. 1002 at 47-48.
`
`Petitioner also attempts to argue that “the examiner omitted critical
`
`intervening guidance from the Federal Circuit and the USPTO.” Pet. at 31. As
`
`support, the Petition contends that McRO and Enfish were not accounted for during
`
`prosecution of the ‘580 patent. Id. at 32. Yet, Petitioner’s proffered rationale is
`
`merely a regurgitation of the rejections made by the Examiner during original
`
`prosecution of the ‘580 patent. Compare Pet. at 32-34 with Ex. 1002 at 93-95.
`
`Petitioner’s contention is further undercut by looking to the file history, in which the
`
`patentee itself brought this very holding to the Examiner’s attention, stating:
`
`As the Court of Appeals for the Federal Circuit has
`recently explained, McRO, Inc. v. Bandai Namco Games
`America, (Fed. Cir., September 13, 2016) a principal issue
`in applying the Alice test is “whether the claims in these
`patents focus on a specific means or method that
`improves the relevant technology or are instead directed
`to a result or effect that itself is the abstract idea and
`merely invoke generic processes and machinery,” McRO,
`slip op. at 23, citing to Enfish, LLC v. Microsoft Corp., 822
`F.3d 1327, 1336 (Fed. Cir. 2016).
`Ex. 1002 at 45 (emphasis added). Not only did the patentee address McRO, but it
`
`went further and expressly encouraged the Office to reconsider the ‘580 patent in
`
`view of the McRO opinion, stating “[t]here is no indication that the final Office
`
`
`
`
`7
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`

`

`
`
`Action addresses McRO, and it would scarcely be possible for an Office Action
`
`notified on September 15, 2016 to have fully considered an opinion that was not
`
`issued until September 13, 2016” – challenging the Office to go back and review
`
`such decision before further evaluation of the application. Id. at 45. Petitioner’s
`
`argument that the Examiner omitted this critical guidance is therefore directly
`
`refuted by the file history. The Petition fails to provide any supporting evidence that
`
`would allow it to refute this overwhelming evidence to the contrary.
`
`Finally, the Petition questions, without support, the Examiner’s “familiarity
`
`with Section 101.” Pet. at 34. Considered in the context of Petitioner’s easily refuted
`
`accusations that the Examiner did not consider USPTO guidance or Federal Circuit
`
`case law, the deficiencies of Petitioner’s arguments are glaring. Rather than provide
`
`any new credible evidence to overturn the Office’s prior examination decision,
`
`Petitioner asks the Board to infer subject matter ineligibility from its unsubstantiated,
`
`biased conclusions.
`
`Accordingly, the Board should deny Petitioner’s effort to rehash arguments
`
`that have already been addressed, and overcome, during original prosecution of the
`
`‘580 patent. Especially considering the lack of any new evidence, the Board’s
`
`exercise of discretion to deny the Petition under 35 U.S.C. § 325(d) is appropriate.
`
`
`
`
`8
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`

`

`
`
`III. OVERVIEW OF THE RELEVANT PORTIONS OF THE ‘580
`PATENT
`The ‘580 patent generally relates to a multiplayer online battle game that adds
`
`or improves the unexpectedness, dramatic impact, and taste when a reward is
`
`provided to a player. Ex. 1001 at Abstract. The claimed invention of the ‘580 patent
`
`represents an improvement over conventional multiplayer online battle games that
`
`award a fixed number of points when each player defeats an enemy character. Id. at
`
`1:35-53. Providing rewards or points in the conventional way does not allow a player
`
`to be rewarded for unexpectedly winning a battle, such as with a come-from-behind
`
`victory. Id. at 1:38-41.
`
`
`
`To overcome the deficiencies of the prior art, the ‘580 patent discloses a
`
`method, system, and apparatus for providing variable rewards to a player or players.
`
`Id. at 1:45-53. One way the ‘580 patent discloses to achieve this is by using a control
`
`unit to allocate at least one reward out of the rewards to a reward box. Id. at 1:65-
`
`66. The control unit can then determine whether the reward providing condition is
`
`met based on match-up situations or match-up results between the players and first
`
`game characters in the game. Id. at 1:66 – 2:2.
`
`
`
`Multiple treasure boxes may be included. See, e.g., id. at 7:26-28. FIG. 6 of
`
`the ‘580 patent, for example, displays treasure boxes, groups, and enemy characters,
`
`as shown below.
`
`
`
`
`9
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`

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`
`
`
`
`
`A player character Ca, for instance, may be associated with treasure box A
`
`and enemy character A, as shown in FIG. 6. Id. at 7:39-49. Similarly, player
`
`character Cb may be associated with treasure box B and enemy character B. Id.
`
`When a player character Ca that belongs to group A defeats the enemy character A
`
`associated with the group A, the player can acquire a reward stored in the treasure
`
`box A. Id. Thus, the game is configured so that the enemy character and a player or
`
`player character fight a battle with each other, and when the player or the player
`
`character wins the battle, the player can acquire a reward. Id. at 7:60-63.
`
`
`
`
`10
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`

`

`
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`
`
`An arithmetic processing unit may determine whether the player or player
`
`characters have defeated the enemy character. Id. at 8:7-11. Although other
`
`determination methods may be used, the ‘580 patent gives one example of using a
`
`numerical comparison operation that compares the numerical values of parameters.
`
`Id. at 8:11-14. Using this method, the arithmetic processing unit determines whether
`
`the enemy character has been defeated when the numeric value of a parameter
`
`corresponding to the physical strength (such as a hit point or life) of the enemy
`
`character becomes less than a predetermined threshold value, or zero, as a
`
`consequence of an attack from the player or player character. Id. at 8:14-20.
`
`
`
`In one embodiment, medals as a reward are allocated to each of the treasure
`
`boxes A, B, and C, respectively. Id. at 8:30-31. Other prize items, such as player
`
`character’s cards, may also be allocated to each treasure box. Id. at 31-33. Medals
`
`allocated to each treasure box may vary. For instance, the medals allocated to
`
`treasure boxes B and C may be set so that they are different from one another. Id. at
`
`8:34-40. Alternately, the rarity of medals allocated to treasure box A can be higher
`
`than the rarity of medals allocated to treasure boxes B and C. Id.
`
`
`
`The ‘580 patent further describes an example of how the medals are allocated
`
`to each of the treasure boxes in one embodiment. According to this example, the
`
`arithmetic processing unit 101 allocates medals to respective treasure boxes based
`
`on several predetermined conditions. Id. at 8:41-53.
`11
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`
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`

`

`
`
`
`The predetermined conditions may include the game elapsed time, the number
`
`of enemy characters defeated by the player, the progress of the game (such as the
`
`number of events, dungeons, or quests completed), the kind of a predetermined event
`
`(such as the level of a selected event or the number of times of the event), the kind
`
`of treasure box, the state of the player character (such as physical strength,
`
`experience point, and the number of possessed items), and items possessed by the
`
`player character (such as the ability of each item and the number of items). Id.
`
`The ’580 patent also discloses that the arithmetic processing unit 101
`
`determines the probability of providing medals allocated to a treasure box to a
`
`player. Id. at 8:64 - 9:12. Medals can be given to a player unconditionally or based
`
`on a predetermined condition. Id. The ‘580 patent discloses a number of examples
`
`of predetermined conditions. Id.
`
`The predetermined conditions may include the number of enemy characters
`
`defeated by the player (player character Ca), the state of the enemy character
`
`defeated by the player (player character Ca), and the state of the player (player
`
`character Ca) when a given number of medals are allocated to the treasure box A.
`
`Id. at 9:7-12. In some instances, all the medals allocated to a specific treasure box
`
`may be awarded to a player. Id. at 9:22-27. Alternately, a large number of medals
`
`that were allocated to a particular treasure box can be provided to a player when the
`
`player wins a come-from-behind victory. Id.
`12
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`

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`
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`The ‘580 patent therefore discloses both a novel method of “allocating”
`
`rewards to reward boxes, and a novel method of making a determination of which
`
`of the rewards in the rewards boxes are to be provided to a player. The allocation
`
`step alone represents a non-abstract method that was an innovation over the
`
`conventional methods of providing rewards at the time the ‘580 patent was filed.
`
`The determination step alone also represents a non-abstract method that was an
`
`innovation over conventional methods of providing rewards at the time the ‘580
`
`patent was filed. Combined, these steps provided for unprecedented variability in
`
`how rewards are provided to a player and the outcomes that were possible in a video
`
`game, e.g., come-from-behind victories. These and other unconventional concepts
`
`are captured by the claims of the ‘580 patent.
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`IV. THE PETITION DOES NOT MEET ITS BURDEN UNDER
`ALICE OR BERKHEIMER
`A. The Petition’s Analysis Regarding a Representative Claim Is
`Legally Deficient
`As noted in Patent Owner’s Preliminary Response, “[a] claim is not
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`representative simply because it is an independent claim.” Berkheimer v. HP,
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`Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018) (emphasis added).1 Nevertheless, the
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`Petition discusses only the independent claims prior to erroneously concluding that
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`1 The Petition itself cites to Berkheimer but disregards its holding.
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`claim 1 is representative. Pet. at 18-20. No discussion or analysis of the dependent
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`claims is provided prior to concluding that claim 1 is representative. In the Institution
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`Decision (Paper 7), the Board does not even address this serious flaw in Petitioner’s
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`analysis. Without such an analysis, the Petition’s conclusion regarding a
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`representative claim is incomplete, legally deficient, and cannot stand. See
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`Berkheimer, 881 F.3d at 1365-66.
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`For instance, claim 1, which the Petition claims is representative, does not
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`include features recited in the other claims. Comparing claim 1 with independent
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`claims 7, 8, 9, and 10 reveals that claims 7-10, for example, recite the step of
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`“accessing the information related to the game.” Compare Ex. 1001 at 11:12-35 with
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`Ex. 1001 at 12:4-67 – 13:1-30. This is not a mere semantic difference. Instead, this
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`is a step that is completely absent from claim 1, on which Petitioner’s entire analysis
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`under § 101 is based.
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`
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`
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`B. The Petition Does Not Address the Features of Dependent
`Claim 2
`The Petitioner’s representative claim analysis is also incomplete because it
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`concludes that independent claim 1 is representative without analyzing a single
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`dependent claim. See Berkheimer, 881 F.3d at 1365 (“A claim is not representative
`
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`14
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`simply because it is an independent claim.”). For instance, there is no analysis of the
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`dependent claims, each of which recites unique features that are not recited by claim
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`1, and that separately bear on the issue of subject-matter eligibility. Dependent claim
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`2, for instance, recites:
`
`The control method according to claim 1, wherein each of
`the players belongs to at least one of groups, and each of
`the groups is associated with at least one of the first game
`characters in the game and a respective one of the reward
`boxes, and the arithmetic processor determines whether
`the reward providing condition is met based on a match-
`up situation or match-up result between one of the players
`and the first game character, and provides the whole of the
`reward allocated to the reward box associated with the
`group to which that player belongs to the player based on
`the determination result.
`Ex. 1001 at 11:36-47. The Petition does not address these features or explain their
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`relevance. Failing to address a dependent claim in the representative claim analysis
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`violates Berkheimer and renders Petitioner’s analysis deficient. Petitioner has not
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`met its burden of showing that claim 1 is representative.
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`
`
`
`
`
`C. The Petition Does Not Address Dependent Claim 3
`Dependent claim 3 recites:
`The control method according to claim 1, wherein the
`arithmetic processor controls the allocation of the reward
`based on at least any one of the following: an elapsed time
`of the game, the number of first game characters defeated
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`15
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`by the player, progress of the game, the kind of event in
`the game, the kind of reward box, a state of a second game
`character corresponding to the player, and an item
`possessed by the second game character.
`Ex. 1001 at 11:48-55. The features recited by this claim are completely unaddressed
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`by Petitioner. The features recited by claim 3, such as additional factors to be
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`considered when the arithmetic processor allocates rewards, are relevant to any
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`representative claim analysis. See Berkheimer, 881 F.3d at 1365. By not addressing
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`or considering these features, Petitioner’s conclusion that claim 1 is representative
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`is incomplete and incorrect. The Petitioner has therefore not met its burden under
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`step one of Alice or under the holding of Berkheimer.
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`D. The Petition Does Not Address Dependent Claim 4
`The Petition also fails to meet its burden under Alice by failing to address
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`dependent claim 4, which recites:
`
`The control method according to claim 1, wherein the
`arithmetic processor determines a probability of
`providing, to the player, the reward allocated to the
`associated reward box unconditionally or based on a
`predetermined condition prior to or when providing the
`reward to the player.
`Ex. 1001 at 11:56-60. Again, none of these features are recited in the independent
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`claims, or independent claim 1 which the Petitioner asserts as “representative,” an
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`assertion with which the Board preliminarily agreed. By ignoring these features in
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`their entirety, Petitioner has not met its burden under step one of Alice or under the
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`holding of Berkheimer.
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`E. The Petition Does Not Address Dependent Claims 5-6
`Dependent claim 5 recites:
`The control method according to claim 1, wherein the
`predetermined condition is at least any one of the
`following: the number of first game characters defeated by
`the player, a state of the first game character defeated by
`the player, and a state of a second game character
`corresponding to the player when a fixed amount of the
`reward is allocated to the reward box.
`Ex. 1001 at 11:61-67. Again, this dependent claim recites features regarding the
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`“predetermined condition” that are not recited in any of the independent claims.
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`Similarly, dependent claim 6 recites that “the arithmetic processor displays, on the
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`terminal devices, a history of providing the reward to th