Supercell Oy v. GREE, Inc.
`PGR2018-00039
`U.S. Patent 9,669,308
`
`June 20, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1015
`
`
`PGR2018-00039
`U.S. Patent 9,669,308
`
`June 20, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1015
`
`
`
`U.S. Patent No. 9,669,308
`
` “[W]e are persuaded by
`Petitioner that the claims are
`directed to “a procedure for a
`video game battle based on user
`input.”
` “additional elements in claims
`1–8 of the ’308 patent do not
`transform the abstract idea into
`patent-eligible subject matter.”
`
`Decision Granting Institution, 12, 17.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
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`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
`The claims are directed to:
`“determining a procedure for a video game battle based on user input.”
`
`Decision Granting Institution, 12.
`Ex. 1001, FIG. 13.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
`The claims are directed to: “determining a procedure for a video game battle based on user input.”
`1. A non-transitory computer readable recording medium having stored thereon instructions
`…causing the computer to perform the steps of:
`communicating with the communication terminal over the network;
`receiving an input signal from the communication terminal to configure a battle of the battle
`game, wherein the input signal comprises at least one user operation of a user of the
`communication terminal;
`determining an opponent with whom the user is to battle in the battle of the battle game;
`when the user has not battled with the determined opponent in the past, automatically
`determining a procedure for executing the battle to be a first mode for executing the
`battle based on at least one user operation received from the communication terminal;
`when the user has battled with the determined opponent in the past, determining, based on
`at least one user operation received from the communication terminal, the procedure
`to be one of the first mode and a second mode for executing the battle with fewer user
`operations received from the communication terminal than in the first mode; and
`executing the battle with the determined procedure.
`
`Decision Granting Institution, 9. Ex. 1001, Claim 1.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`4
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`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
` PO’s rehashes its argument that the claims are directed to “a specific manner of
`executing a video game battle in a way that results in an improved system for executing
`the battle game.”
`• PO provides no analysis as to why this articulation could be more accurate.
`
`1. A non-transitory computer readable recording medium having stored thereon instructions …causing the computer to
`perform the steps of:
`communicating with the communication terminal over the network;
`receiving an input signal from the communication terminal to configure a battle of the battle game, wherein the input
`signal comprises at least one user operation of a user of the communication terminal;
`determining an opponent with whom the user is to battle in the battle of the battle game;
`when the user has not battled with the determined opponent in the past, automatically determining a procedure for
`executing the battle to be a first mode for executing the battle based on at least one user operation received from
`the communication terminal;
`when the user has battled with the determined opponent in the past, determining, based on at least one user operation
`received from the communication terminal, the procedure to be one of the first mode and a second mode for
`executing the battle with fewer user operations received from the communication terminal than in the first mode;
`and
`executing the battle with the determined procedure.
`
`Decision Granting Institution, 9. Ex. 1001, Claim 1. POR, 13.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`5
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`Exhibit 1015
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`
`
`Petitioner arguments found persuasive by Board
`Board regarding Step 2A
`
` .
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
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`Decision Granting Institution, 12, 13.
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`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
` PO’s articulation appears to indicate only the final claim limitation,
`“executing the battle with the determined procedure.”
`
` Removal of “directed to” limitation:
`• PO’s articulation: the claim still makes sense
`• Retains sole element argued as inventive in PO’s expert declaration and Sur-reply
`• Unlikely candidate for what the claim is “directed to.”
`• Petitioner’s articulation: would render meaningless the remainder of the claim
`• Leaves just determining an opponent and executing a battle according to an absent procedure.
`
` PO’s own expert:
`
`Ex. 2002, ¶¶20-34; POR, 24-33; Ex. 1010, 183:12-17.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
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`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
`“determining a procedure for a video game battle based on user input”
`
`From PO’s discussion of Prong 1:
`
`PO’s expert declaration argued only the second determining a procedure step.
`Sur-reply, 5; Reply, 4, citing Ex. 2002, ¶¶20-34.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`8
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`Exhibit 1015
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`
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`Claim Construction: Alternative Determining Steps
` The two determining steps of representative claim 1 begin with
`logically complementary conditions, which establish a pair of
`alternative steps.
`• Either the user has not battled with the determined opponent in the
`past, or she has. Both cannot be true, as PO’s expert agreed.
`
`when the user has not battled with the determined opponent in the past,
`automatically determining a procedure for executing the battle to be a first
`mode for executing the battle based on at least one user operation
`received from the communication terminal;
`when the user has battled with the determined opponent in the past,
`determining, based on at least one user operation received from the
`communication terminal, the procedure to be one of the first mode and a
`second mode for executing the battle with fewer user operations received
`from the communication terminal than in the first mode.
`Reply, 2-3; Ex. 1010, 164:18-23.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`9
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`Exhibit 1015
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`
`
`Claim Construction: Alternative Determining Steps
` Performance of the claim requires only one of these two
`limitations.
`• If the user has not battled with the determined opponent in the
`past, the fifth limitation isn’t available for selection, as PO’s expert
`agreed.
`
` The “when the user has battled with the
`determined opponent in the past”
`determination includes a further alternative
`choice:
`• “determining … the procedure to be one of the
`first mode and a second mode for executing the
`battle”
`
`• Thus performance of this element requires only
`one of the first or second mode.
`Ex. 1010, 164:18-23. Reply, 2; Petition, 16. Ex. 1001, FIG. 6B.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`10
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`Exhibit 1015
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`
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`Claim Construction: Alternative Determining Steps
` Conditional limitations may not be given patentable weight
`because “method steps may be contingent. If the condition for
`performing a contingent step is not satisfied, the performance
`recited by the step need not be carried out in order for the
`claimed method to be performed.”
`Ex Parte Schulhauser, Appeal No. 2013-007847, Application 12/184,020, slip op at 10 (P.T.A.B. April 28, 2016) (precedential).
`
` Claim 1 does not require performance of the second mode.
`
` The second mode is only executed if both:
`• (1) the user has battled with the determined opponent in the past, AND
`• (2) the determined procedure is the second mode based on at least one user
`operation received.
`
` PO focusses nearly the entirety of it’s 101 analysis on the second mode.
`Reply, 2-5.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
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`Exhibit 1015
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`
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`Claim Construction: Alternative Determining Steps
` PO argues that Petitioner improperly ignores claim limitations.
`• PO points to the 2019 PEG Examples (Ex. 1006), pp. 5-12 and 18-19 an
`concludes that “the USPTO, in its own eligibility examples, fully
`considers limitations containing conditions precedent when
`determining eligibility despite the fact that the condition precedent
`may not always be triggered.”
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Sur-reply, 3, 7, 11.
`
`12
`
`Exhibit 1015
`
`
`
`Step One: Claims are directed to an abstract idea
`The ’308 patent is abstract because the claims:
`
`Prong One
`
`(1) Recite only result-oriented functions without a non-
`abstract means of achieving those results;
`
`(2) Recite no specific, structured user interface; and
`
`Prong Two
`
`(3) Provide no improvement in computer functionality.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 5-12.
`
`13
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`Exhibit 1015
`
`
`
`(1) The claims recite only result-oriented functions without a non-
`abstract means of achieving those results
`
` The Board agreed:
`
` Further, “[f]or example, claim 1 recites “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.” Ex. 1001, 19:64–67. Claim 1,
`however, does not indicate how such steps are performed.”
`Decision Granting Institution, 13 (emphasis added).
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`14
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`Exhibit 1015
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`
`
`(2) The claims recite no specific, structured user interface
` PO attempts to characterize the ’308 patent as solving a problem
`in the field of graphical user interfaces like Data Engine and Core
`Wireless.
`
`• This comparison fails because the Data Engine claims recited a specific,
`structured GUI to overcome a technical problem in the prior art.
`Data Engine, 906 F.3d at 1010-11.
`Likewise, the Core Wireless claims were directed to “an improved user
`interface for computing devices.”
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018).
`
`•
`
` PO argues that the ’308 patent claims similarly recite a specific structure
`of “the second mode” that performs a specific function of “executing the
`battle with fewer operation than in the first mode.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 6-8. POR, 23-24.
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`15
`
`Exhibit 1015
`
`
`
`(2) The claims recite no specific, structured user interface
` PO alleges that the ’308 patent claims recite “a specific structure” of “the
`second mode” that performs a specific function of “executing the battle with
`fewer operation than in the first mode.”
`
` The “second mode” is not a structure at all, much less the type of
`structure found to be a specific technological solution in Data
`Engine.
`• The “second mode” is instead a “procedure” that later can be
`“executed.”
`• A procedure is commonly known to be executable by a program, and
`usually performs a single task; it sometimes is used synonymously
`with “function.”
`
` Reliance on the second mode as the alleged “structure” reinforces
`the Board’s finding that the claims “employ results-based
`functional language.”
`Reply, 6-8. POR, 23-24. Ex. 1012, p. 4-5. Decision, p. 13 (emphasis added).
`
`
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`16
`
`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
`Prong 1 abstract subject matter groupings:
`• (a) Mathematical concepts
`• (b) Certain methods of organizing human activity
`• (c) Mental processes
`
`Example 37, Claim 3 – Mental Process
` “determining, by a processor, the amount of use of each icon over a predetermined
`period of time”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`PO’s Sur-reply, p. 4.
`Ex. 2006, p. 4.
`
`17
`
`Exhibit 1015
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`
`
`Step One: Claims are directed to an abstract idea
`These are mental processes.
`
` Could cover practical performance in the mind “but for” the
`recitation of “the computer” performing them, comparable to
`Example 37, claim 3.
` A human could determine the procedure based on whether the
`opponent was battled before and/or user selection.
`Sur-reply to Opposition to Motion to Amend, 5-6. Ex. 2006, 4.
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`18
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`Exhibit 1015
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`
`
`(3) Claims provide no improvement in computer functionality
` Prong Two evaluates whether the claim as a whole integrates the recited
`judicial exception into a practical application of the exception.
`
`Prong 2 Exemplary Considerations:
` an additional element reflects an improvement in the functioning of a computer, or an
`improvement to other technology or technical field;
` an additional element applies or uses the judicial exception in some other meaningful way
`beyond generally linking the use of the judicial exception to a particular technological
`environment, such that the claim as a whole is more than a drafting effort designed to
`monopolize the exception.
`
`The Board’s discussion of Step 2B (prior Guidance):
`
`Ex. 1013, 6
`(emphasis added);
`Decision, 17
`(emphasis added).
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`19
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`Exhibit 1015
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`
`
`(3) Claims provide no improvement in computer functionality
`Prong 2
` “The courts have also identified examples in which a judicial exception has not
`been integrated into a practical application: An additional element merely recites
`the words ‘apply it’ (or an equivalent) with the judicial exception, or merely
`includes instructions to implement an abstract idea on a computer, or merely
`uses a computer as a tool to perform an abstract idea.”
`• “For example, a limitation indicating that a particular function such as creating and
`maintaining electronic records is performed by a computer, without specifying how.”
`
`The Board:
`
`Ex. 1013, p. 6 (emphasis added); Decision, p. 17 (emphasis added).
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`20
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`Exhibit 1015
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`
`
`(3) Claims provide no improvement in computer functionality
`
` The patents in Enfish and McRO provide a useful contrast to the
`’308 claims.
`• The claims at issue in Enfish recited “a specific type of data structure designed
`to improve the way a computer stores and retrieves data in memory.”
`• The McRO patents disclosed and claimed a specific “technological
`improvement”—complete with detailed rules—to “achieve an improved
`technological result” to solve a problem arising in the context of a specific
`technological field.
`
` The ’308 patent claims only results—determining an opponent,
`determining a procedure, and executing a battle—without
`specifying any “process or machinery” by which those results would
`be achieved.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 9-12.
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`21
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`Exhibit 1015
`
`
`
`(3) Claims provide no improvement in computer functionality
`Prong 2
` The Guidance-identified examples in which a judicial exception
`has not been integrated into a practical application, such as:
`“a limitation indicating that a particular function such as
`creating and maintaining electronic records is performed by a
`computer, without specifying how.”
`
`The Board:
`“Claim 1, however, does not indicate how such steps are
`performed. … As such, we are persuaded that these recitations
`are no more than generalized steps that do not amount to a
`sufficiently non-abstract description of how the battle is
`conducted.”
`
`Ex. 1013, 6, n.30 (emphasis added). Decision Granting Institution, 13 (emphasis added).
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`22
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`Exhibit 1015
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`
`
`Step Two: Petitioner arguments found persuasive by Board
`Regarding Step 2B, the Board concluded:
` “additional elements in claims 1–8 of the ’308 patent do not
`transform the abstract idea into patent-eligible subject matter
`because the claimed improvements identified by Patent Owner
`do not improve the technological field. Rather, they improve
`game play for the user.”
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`23
`
`Decision Granting Institution, 17.
`
`Exhibit 1015
`
`
`
`Step Two: No Inventive concept
`Step 2B
` The second step of Alice determines whether any additional
`elements beyond the abstract idea transform the claim into a
`patent-eligible application.
`• In Alice, the Supreme Court did not go through how each claim
`limitation was “well-understood, routine, conventional,” but
`considered those additional elements not accounted for by the
`abstract idea.
`
` PO’s Sur-reply conflates the steps by arguing the same two elements:
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`24
`
`Reply, 12-13. PO’s Sur-reply, 11.
`
`Exhibit 1015
`
`
`
`Step Two: No Inventive concept
`
`The additional elements provide no inventive concept because:
`
`(1) The Claims Are Performed on a Generic Computer Using
`Routine Functions;
`
`(2) The Claims Do Not Recite a Means to Make User Operation
`in Battle Games Less Troublesome; and
`
`(3) The Determination Step When the Opponent Has Been
`Battled in the Past is “Well Understood, Routine, and
`Conventional.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 11-18.
`
`25
`
`Exhibit 1015
`
`
`
`(1) The Claims Are Performed on a Generic Computer Using
`Routine Functions
` Only the additional elements beyond the abstract idea are
`considered, which are only conventional client-server
`interactions:
`• communicating with the communication terminal over the network,
`• receiving an input signal from the communication terminal, and
`• generic computer equipment or functionally-named components
`• “a computer,” “network,” and “a communication terminal”
`
` The Board noted:
`PO admitted that “the hardware recited in the claims of the
`308 Patent is arguably conventional.”
`
`Reply, 11-14. Decision Granting Institution, 17.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`26
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`Exhibit 1015
`
`
`
`(2) The Claims Do Not Recite a Means to Make User
`Operation in Battle Games Less Troublesome
`
`Under Berkheimer, “improvements in the specification, to the
`extent they are captured in the claims,” may create a factual
`dispute regarding whether the invention describes “well-
`understood, routine, and conventional activities.”
`Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (emphasis added).
`
` The specification purports to disclose a game system
`improvement that “can make the user operation in a battle
`game less troublesome.”
`• Example from the specification: fighting a battle in “auto mode.”
`• PO’s expert: “I think the technological improvement is the auto
`mode.”
`
`Reply, 14-16. Ex. 1001, 1:45-49; 8:36-40. Ex. 1010, 105:22-23.
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`27
`
`Exhibit 1015
`
`
`
`(2) The Claims Do Not Recite a Means to Make User
`Operation in Battle Games Less Troublesome
` No “auto mode” is claimed.
`• The “second mode, for executing the battle with fewer user
`operations, is not the same as the auto mode.
`• PO’s expert admitted this, as well as that the second mode could in
`fact be a manual mode.
`
` The fifth claim limitation, which is the only limitation that potentially
`corresponds to the purported advance of the specification, is recited in
`the alternative, and thus is not required.
`
` The claims fail to “capture” the purported improvement from the
`specification, and thus do not create a genuine issue of material fact
`under Berkheimer.
`
`Reply, 16. Ex. 1010, 102:12-20; 111:10-24. Petition, 23.
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`28
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`Exhibit 1015
`
`
`
`(2) The Claims Do Not Recite a Means to Make User
`Operation in Battle Games Less Troublesome
` Petitioner provided evidence that other battle games with true
`“auto battle” modes existed prior to the ’308 patent.
`
` Exhibit 1011 is a fan discussion page about the game Record of
`Agarest War, in which the user could select an auto mode
`instead of battling opponents manually. Ex. 1011, p. 1-3.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`29
`
`Reply, 18. Ex. 1011, 1-3.
`
`Exhibit 1015
`
`
`
`(3) The Determination Step When the Opponent Has Been Battled in the
`Past is “Well Understood, Routine, and Conventional.”
`
`Even if the same determining elements could be considered
`additional elements beyond the abstract idea, they are well
`understood, routine, and conventional.
`
` PO’s own expert admitted that the “second mode” merely requires
`one less user operation relative to the “first mode.”
`
` He also admitted that one less user operation would not be a technical
`improvement:
`• Q: And my question is, if the fewer user operations received in the second
`mode is only one less than in the first mode, would that be considered a
`technological improvement?
`• A: One less is technological improvement? I would not assume that’s a
`technological improvement, no.
`
`Reply, 16-18. Ex. 1010, 104:25-105:11; 106:20-25.
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`30
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`Exhibit 1015
`
`
`
`(3) The Determination Step When the Opponent Has Been Battled in the
`Past is “Well Understood, Routine, and Conventional.”
`
` PO itself provided an example of an auto mode that merely
`requires one less user operation relative to the normal mode, via
`the Pokémon art provided with Exhibit 2001.
`
`Reply, 17-18. Ex. 2001, 502 (Manual for Pokémon Colosseum, © 2004).
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`31
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`Exhibit 1015
`
`
`
`(3) The Determination Step When the Opponent Has Been Battled in the
`Past is “Well Understood, Routine, and Conventional.”
`
` When offered the Pokémon example as a hypothetical in
`deposition, PO’s expert agreed that it would meet the limitation
`of “fewer user operations being received.”
`
` Under Berkheimer, this type of admission dooms the claims such
`that no fact question remains in the step two analysis.
`Berkheimer, 881 F.3d at 1369.
`
`• Per Berkheimer: “not every § 101 determination contains genuine
`disputes over the underlying facts material to the § 101 inquiry.” Id.
`(citing an example of the patent owner conceding the argued inventive
`concept as routine).
`
`Reply, 16-18. Ex. 1010, 132:20-133:9. Petition, 22.
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`32
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`Exhibit 1015
`
`
`
`(3) The Determination Step When the Opponent Has Been Battled in the
`Past is “Well Understood, Routine, and Conventional.”
`
`The Board already considered this aspect of the claims in the
`Institution Decision:
`
`“[t]he claimed ‘second mode’ appears to be no more than the
`modeling of a previously manual procedure. Such modeling
`amounts to well understood, routine, and conventional
`automation of a manual procedure in which the computer is
`merely used as a tool to perform the automation.”
`
`Reply, 16-18. Decision Granting Institution, 17-18 (emphasis added).
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`33
`
`Exhibit 1015
`
`
`
`Dependent Claims 2-6 Are Directed to the Same Abstract Concept
` POR did not separately argue the patent eligibility of any of the
`dependent claims
`• Dependent claims 4 and 6 are discussed only under step one in PO
`Response, and claims 2-3 and 5 are not discussed at all.
`• The dependent claims are not discussed in PO’s Sur-reply
`
` Dependent claim 2 adds the requirement that the user be shown a reward for
`winning the battle.
` Claims 3 and 4 (depend on claim 2) add that the communication terminal
`displays an image, and when the user selects the image, the user’s character
`performs a command.
` Claims 5 and 6 are identical to claims 3 and 4, respectively, except they
`depend on claim 1.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`34
`
`Petition, 40-41. Reply, 19-20.
`
`Exhibit 1015
`
`
`
`Dependent Claims 2-6 Are Directed to the Same Abstract Concept
` The dependent claims append conventional game concepts and
`are written as generalized steps that achieve functional results
`covering any system that provides for these results.
`
` They claim generic user interface functions that the Federal
`Circuit has repeatedly found to be among the most basic
`functions of generic computers. See Intellectual Ventures I, 792 F.3d at 1370.
`
` None of claims 2-6 adds any features that transform the abstract
`idea into a patent-eligible invention.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`35
`
`Petition, 40-41. Reply, 19-20.
`
`Exhibit 1015
`
`
`
`Expert Testimony Is Not Required
` Expert testimony is unnecessary to invalidate a patent under §
`101
`
`• This issue can often be decided at the pleading stage in district court
`litigation. Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`
` The Federal Circuit also has relied solely upon the intrinsic record to find a
`patent lacking an inventive concept under step two of Alice. See, e.g., Internet
`Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing
`Mayo, 132 S.Ct. at 1298).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 20-21.
`
`36
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`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` The analysis of whether the specification complies with the
`written description requirement calls for comparison of the scope
`of the claim with the scope of the description to determine
`whether applicant has demonstrated possession of the claimed
`invention.
`
` The terms in the challenged claims are to be given their broadest
`reasonable interpretation (“BRI”), as understood by one of
`ordinary skill in the art and consistent with the disclosure.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Petition, 12-13, 42.
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`37
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`
` The independent claims require the steps in the body of the claim
`to be performed on the game server. Thus, the specification
`provides written support for the “executing” step only if it
`discloses this step as being performed on the game server.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`Petition, 43. Ex. 1001, Claim 1.
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`
` The word “execute” only appears in four places in the Description
`of Embodiments Section of the specification:
`
`• One explicitly states that the communication terminal
`executes the battle process
`• The other three describe transmitting an instruction from the
`game server to the communication terminal that causes the
`communication terminal to execute the game process.
`
`Petition, pp. 43-44 (citing Ex. 1001, 16:14, 14:53, 15:37-38, 15:54-55).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`
` PO offers a contrived construction that adds a second definition of
`“execute” of “put into effect,” using a general purpose dictionary
`spoon-fed to PO’s expert Reply, pp. [some under 112b section]; POR, pp. 5-7.
`
` PO’s construction relies on a combination of:
`• (1) a generic dictionary definition of “execute“ as meaning “to
`put into effect,” and
`• (2) specification description of the server “transmitting an
`instruction” to execute the process to the communication
`terminal as that putting the battle into effect
`
` That a POSITA would take these two steps in construing the
`commonly-used term “execute,” when PO’s own expert did not, is
`a step too far to be a reasonable construction of the term.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`Reply, , 21-22. POR, 5-7.
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` PO’s construction of “putting into effect” as executing
`
` The specification never says that transmission of an instruction to
`execute is executing.
`
` Any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Sur-reply, 12. Reply, 21-22. Petition, 13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`
` When asked if he consulted a technical dictionary, PO’s expert
`replied:
`• “On the computer science side, I would never look in the
`dictionary because, you know, I’ve used the word "execute"
`since 1993 when I started learning how to write assembly
`language code and program counters.
`
` When asked about use of the American Heritage Dictionary:
`• Q: Did you pick that dictionary to define the definition?
`• A: Counsel chose that.
`
`Reply, 1. Ex. 1010, 140:16-20; 139:11-13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`PO’s Expert:
`• Q: In this last element of the claim which says "executing the
`battle with the determined procedure,“ what does "executing"
`mean in that context?
`• A: Carrying out the battle with the determined procedure.
`
` PO’s Sur-reply argues term was used “more broadly.”
` PO’s expert distinguished carrying out a procedure as
`broader than executing an instruction.
`
`Reply, 1, 21. PO’s Sur-reply, 2. Ex. 1010, 140:21-141:19.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
` PO’s expert explicitly excluded transmitting the message to
`execute from the definition of execute.
`
`• Q: Is that sending of the message by the server within the
`definition of "execute" as you've defined it here?
`• A: It's the thing that causes it to be executed.
`• Q: It's not the execution itself, it's just the process for how it will
`be executed?
`• A: Right.
`
`Reply, 1, 21. Sur-reply to Opposition to Motion to Amend, 3. Ex. 1010, 152:19-25. POR, 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(A) – Lack of Written Description
`
` When PO’s expert was asked explicitly about the plain meaning of
`the term:
`
`• Q: What is its plain meaning in the '308 patent?
`• A: The plain meaning in the '308 patent for the word
`"execute" is carry out.
`
` The specification fails to demonstrate that the applicant was in
`possession of the invention.
`Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
`
`Reply, 1. Ex. 1010, 153:17-154:3 (emphasis added). Petition, 42-43.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`PO’s alternative definitions of “execute”: “carry out” or “put into effect”
`
` A claim is indefinite if its language “might mean several different things
`and no informed and confident choice is available among the contending
`definitions.”
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.2d 1336, 1371 (Fed. Cir. 2015)(emphasis added).
` There is no way for the reader to know which of the suggested
`alternative definitions applies, and neither the claims nor the
`specification sheds any light on this mystery.
`
` PO Response: “the disclosure does not clearly and unambiguously limit
`the term “execute” to only carrying out an act.”
`• The standard for indefiniteness is that a claim limitation renders a claim
`indefinite where it is “ambiguous, vague, incoherent, opaque, or otherwise
`unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (emphasis added).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, 23-24. POR, 7.
`
`46
`
`Exhibit 1015
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`“Executing” – PO’s varying constructions
`
` POPR & POR: Alternative definitions: “carry out”; “put into effect”
`• “the disclosure also uses the term to mean "to put into effect."”
`
` PO’s Expert: The term is broad enough to encompass "to put into effect" and
`“carrying out a plan.“
`
` PO’s Reply to Opposition to MTA: “the term "execute" is broad enough to
`encompass both putting into effect and carrying out”
`
` PO’s Sur-reply: “The term is subject to a single broad meaning and not
`indefinite.”
`
`POPR, 6-8; POR, 5-7. PO’s Reply to Opposition, 4, citing Ex. 1010, 138:17-19; 142:23-25. PO’s Reply to
`Motion to Amend, 3 (emphasis added). PO’s Sur-reply, 16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`Exhibit 1015
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`PO’s Motion to Amend, 1-2.
`48
`
`Exhibit 1015
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend
` PO’s Motion to Amend should be denied, as it does not provide an
`explanation of how its citations to the underlying patent applications
`support the proposed substitute claims.
`• The seminal case of Aqua Products noted that merely citing to the
`specification alongside the proposed claims, without explanation, is
`insufficient support.
`
`• The PTAB has similarly held that claim chart with specification cites did not
`excuse Patent Owner “from setting forth how the original disclosure
`provides written description support for the proposed substitute claim.”
`Cisco Systems, Inc. v. Focal IP, LLP, IPR2016-01254, Paper 56, p. 93 (P.T.A.B Dec. 27, 2017).
`
`PO’s amendment as reflected in proposed claim 9 adds a full 170 words,
`more than doubling the length of the claim as compared to claim 1.
`
`Sur-reply to Opposition to Motion to Amend, 1-2. Opposition to Motion to Amend, 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`Exhibit 1015
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend
` PO’s Motion to Amend relied on amended-in language only
`once, and called out several amended-in claim limitations
`unaddressed by the Motion.
`• PO now belatedly argues that these limitations are in fact
`responsive, which is improper new argument.
`Kapsch Trafficcom IVHS Inc. v. Neology, Inc., IPR2016-01763, Paper 60, p. 50 (P.T.A.B Mar. 20,
`2018);
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