PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`GEOFFREY R. MILLER
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Post Grant Review No. PGR2018-00047
`Patent 9,636,659 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
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`

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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`
`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ......................................................................................................... v
`I. 
`CLAIMS 1-15 OF THE ’659 PATENT ARE INVALID
`UNDER SECTION 101 .................................................................................. 1 
`A. 
`Alice Step 1: The ’659 Patent Is Directed to the Abstract
`Idea of “Controlling a Video Game Display Based on a
`Received Selection of Panel Information” ........................................... 1 
`1.  The Claims Recite Result-Oriented Functions
`Without Describing Non-Abstract Means of
`Achieving Them. .......................................................................... 1 
`2.  The ’659 Patent Does Not Recite a Specific,
`Structured User Interface ............................................................. 6 
`3.  The ’659 Patent Provides No Improvement in
`Computer Functionality ............................................................... 9 
`4.  The ’659 Patent Recites an Abstract “Way of
`Managing a Game and Playing a Game” ................................... 11 
`Alice Step 2: The Claims of the ’659 Patent Contain
`No Inventive Concept ......................................................................... 13 
`1.  The Claims Are Performed on a Generic Computer
`Performing Routine Functions. .................................................. 13 
`“Panels” are “well-understood, routine, and
`conventional” ............................................................................. 14 
`3.  The Independent Claims Do Not Recite a Means
`to Achieve “High Visual Effect” ............................................... 15 
`The Dependent Claims 2-13 Are Directed to the Same
`Abstract Idea and Provide No Inventive Concept .............................. 16 
`Expert Testimony Is Not Required to Invalidate a Patent
`Under 35 U.S.C. § 101 ....................................................................... 20 
`
`B. 
`
`2. 
`
`C. 
`
`D. 
`
`i
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`
`TABLE OF CONTENTS
`(Continued)
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`
`II. 
`
`Page
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`
`
`E. 
`Claim 1 Is Representative .................................................................. 22 
`CLAIMS 1-15 OF THE ’659 PATENT ARE INVALID
`UNDER 35 U.S.C. § 112(A) ........................................................................ 23 
`A.  No Written Description for “receives an instruction
`that the panel is disposed in the target division” ................................ 23 
`No Written Description for in which divisions the
`panel is ‘allowed’ to be disposed nor any designated
`‘target’ division. ................................................................................. 23 
`No Written Description for a panel that indicates that
`the character is displayed “as an animation” ...................................... 24 
`III.  CLAIMS 1-15 OF THE ’659 PATENT ARE INVALID
`UNDER 35 U.S.C. § 112(B) AS INDEFINITE ........................................... 25 
`
`B. 
`
`C. 
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Affinity Labs of Tex., LLC v. DIRECTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2016) ................................................................ 4, 17, 18
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ................................................................................... passim
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) ........................................................ 15, 16, 20, 22
`Bilski v. Kappos,
`561 U.S. 593 (2010) ...................................................................................... 18, 19
`Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
`880 F.3d 1356 (Fed. Cir. 2018) ........................................................................ 6, 7
`Data Engine Techs. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018) .......................................................................... 8, 9
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ...................................................................... 9, 10
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`849 F.3d 1034 (Fed. Cir. 2017) .......................................................................... 21
`In re Marco Guldenaar Holding B.V.,
`911 F.3d 1157 (Fed. Cir. 2018) ........................................................ 12, 18, 20, 21
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) .......................................................................... 25
`In re Smith,
`815 F.3d 816 (Fed. Cir. 2016) ................................................................ 11, 20, 21
`In re TLI Commc’ns. LLC Pat. Litig.,
`823 F.3d 607 (Fed. Cir. 2016) ............................................................................ 21
`Intellectual Ventures I LLC v. Capital One Bank,
`792 F.3d 1363 (Fed. Cir. 2015) .......................................................................... 13
`Intellectual Ventures I LLC v. Symantec Corp.,
`838 F.3d 1307 (Fed. Cir. 2016) .................................................................... 20, 21
`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .......................................................................... 20
`
`iii
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`TABLE OF AUTHORITIES
`(Continued)
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`Page(s)
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016) .................................................................... 1, 4, 5
`Mortg. Grader v. First Choice Loan Services,
`811 F.3d 1314 (Fed. Cir. 2016) .......................................................................... 13
`Planet Bingo LLC v. VKGS LLC,
`576 Fed. App’x. 1005 (Fed. Cir. 2014) ........................................................ 11, 12
`RecogniCorp, LLC v. Nintendo Co., Ltd.,
`855 F.3d 1322 (Fed. Cir. 2017) .............................................................. 17, 18, 19
`Smartflash LLC v. Apple Inc.,
`No. 2016-1059, 2017 WL 786431 (Fed. Cir. Mar. 1, 2017) .............................. 13
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) .......................................................................... 21
`Trading Techs. Int’l, Inc. v. CQG, Inc.,
`675 F. App’x 1001 (Fed. Cir. 2017) ......................................................... 6, 7, 8, 9
`Tranxition, Inc. v. Lenovo (U.S.) Inc.,
`664 Fed. App’x 968 (Fed. Cir 2016) .................................................................. 17
`Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC,
`874 F.3d 1329 (Fed. Cir. 2017) ................................................................ 1, 4, 5, 6
`STATUTES AND RULES
`35 U.S.C. § 101 ............................................................................................ 20, 21, 22
`35 U.S.C. § 112(B) ............................................................................................. 25, 26
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`iv
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`EXHIBIT LIST (37 CFR § 42.63(e))
`
`
`
`Description
`
`U.S. Patent No. 9,770,659 to Atobe
`
`Prosecution History of U.S. Patent No. 9,770,659
`
`USPTO Memorandum on Recent Subject Matter Eligibility
`Decisions, dated May 19, 2016
`
`USPTO Memorandum on Recent Subject Matter Eligibility
`Decisions, dated November 2, 2016
`
`Prosecution History of U.S. Patent 9,457,273
`
`Prosecution History of U.S. Patent Application Serial No.
`15/686,268
`
`Prosecution History of U.S. Patent No. 9,636,583
`
`Microsoft Computer Dictionary, 4th Ed. (1999).
`Declaration of Michael J. Sacksteder
`
`Declaration of Geoffrey R. Miller
`
`Deposition of David Crane, dated February 12, 2019 - Vol. I
`
`Deposition of David Crane, dated February 28, 2019 - Vol. II
`
`Exhibit
`
`1001
`
`1002
`
`1003
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`1004
`
`1005
`
`1006
`
`1007
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`1008
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`1009
`
`1010
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`1011
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`1012
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`v
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`I.
`
`CLAIMS 1-15 OF THE ’659 PATENT ARE INVALID UNDER
`SECTION 101
`A. Alice Step 1: The ’659 Patent Is Directed to the Abstract Idea of
`“Controlling a Video Game Display Based on a Received Selection
`of Panel Information”
`1.
`The Claims Recite Result-Oriented Functions Without
`Describing Non-Abstract Means of Achieving Them
`At Alice step one, the Board determines whether the claims at issue are
`
`directed to an abstract idea. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
`
`(2014). This entails determining whether the claims focus on a specific means or
`
`method to achieve a result, or are instead directed to a result or effect that itself is
`
`the abstract idea. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
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`1314 (Fed. Cir. 2016). Under this analysis, “[c]laims directed to generalized steps
`
`to be performed on a computer using conventional computer activity are not patent
`
`eligible.” Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC, 874 F.3d 1329,
`
`1337 (Fed. Cir. 2017).
`
`The ’659 patent fails this inquiry. It recites only generalized steps
`
`performed on generic hardware. The patent purports to provide a user of a battle
`
`video game with “a high visual effect” by displaying a game based on information
`
`in panels. Ex. 1001, 1:47-50. But instead of reciting a specific means or method
`
`to achieve this result, representative claim 1 recites a series of result-oriented
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`functions – panel selection function, a panel layout function, and a screen display
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`control function – performed on generic hardware.
`
`Claim 1 recites: (1) “a panel selection function of receiving a selection by
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`the first user,” (2) “a panel layout function of disposing the panels in the divisions
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`on the basis of the selection received by the panel selection function” such that
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`“the panel layout function disposes the panel selected by the panel selection
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`function in a target division when the panel is allowed to be disposed in the target
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`division” and (3) “a screen display control function of controlling the game display
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`screen on a screen display unit on the basis of information regarding the layout by
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`the panel layout function and layout of the panel in the divisions by the second
`
`user.” Ex. 1001, 10:25-50.
`
`Discussing Figure 2, the specification explains that the “information
`
`processing apparatus” that controls the method can be any generic computer
`
`device. Ex. 1001, 6:9-13. The patent is agnostic as to how the functions are
`
`implemented. The components are black boxes – devoid of detail for how to
`
`implement the functions:
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`2
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`
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`Ex. 1001, Fig. 2.
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`The patent describes data storage unit 210 and control unit 220, which
`
`perform the functions recited in claim 1, solely by function. The data storage unit
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`“stores a first panel database . . . and a second panel database.” Id. at 5:42-45. The
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`control unit contains a “panel selection section” 222 that “selects panels to be
`
`disposed in the frames of the battle display region”; a “panel layout section” that
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`“disposes the panels selected by the panel selection section in the frames”; and a
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`“screen display control section” 221 that “displays a game display screen.”
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`Ex. 1001, 5:36-57.
`
`
`
`PO’s expert David Crane agrees that the ’659 patent recites a series of result-
`
`oriented functions without describing or reciting a means to achieve them. In
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`deposition, Mr. Crane repeatedly admitted that he was “not aware of any place in
`
`the specification where a specific technological implementation of [the Figure 2]
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`Petitioner’s Reply to Patent Owner’s Response
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`functions is described.” Ex. 1012, 218:21-24; see also generally, id. 216:4-219:10.
`
`Thus, the ’659 patent recites a series of generalized steps without any specific
`
`means or technology for achieving those functional results. The Federal Circuit
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`routinely finds such claims, “untethered to any specific or concrete way of
`
`implementing” the claimed concept, impermissibly abstract. Affinity Labs of Tex.,
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`LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258-60 (Fed. Cir. 2016).
`
`
`
`In its Institution Decision, the Board invited briefing “as to the level of
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`technical specificity that is sufficient to take a function out of the realm of one that
`
`is so generalized it amounts to no more than saying ‘apply it’ on a general-purpose
`
`computer, and where [‘displayed as an animation when being disposed on the
`
`target division’ limitation] falls on that spectrum.” Decision, p.10. The Federal
`
`Circuit has referred to this inquiry as looking to “whether the claims in the patent
`
`focus on a specific means or method, or are instead directed to a result or effect
`
`that itself is the abstract idea and merely invokes generic processes and
`
`machinery.” Two-Way Media, 874 F.3d at 1337.
`
`At one end of the “technical specificity” spectrum is McRO, in which, the
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`Federal Circuit upheld claims directed to automated three-dimensional computer
`
`animation. The court determined the patent did not preempt all methods of
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`automated three-dimensional animation because the claims “focused on a specific
`
`asserted improvement in computer animation, i.e., the automatic use of rules of a
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`particular type.” Id. at 1314 (emphasis added). The court emphasized that the
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`claims themselves set out meaningful requirements for the claimed rules, and
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`explained: “It is the incorporation of the claimed rules, not the use of the computer,
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`that improved the existing technological process by allowing the automation of
`
`further tasks.” Id. at 1314.
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`
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`At the other end of the spectrum is Two-Way Media, in which the claims
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`merely required the functional results of “converting,” “routing,” “controlling,”
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`“monitoring,” and “accumulating records,” but did “not sufficiently describe how
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`to achieve these results in a non-abstract way.” 874 F.3d at 1337-38. There, the
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`court determined the functional results comprised generic computer components
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`configured to carry out the abstract idea. Importantly, although the claims were
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`limited to a specific type of information transmitted over a communication
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`network, this only narrowed the environment – it did not provide for any
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`improvement in the network architecture that may lead to “an improvement in the
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`functioning of the system,” nor did it “provide any parameters” which would
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`dictate “how the information is being routed.” Id.
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`
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`The limitation “the panel indicating the character is displayed as an
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`animation when being disposed on the target division” is much closer to Two-Way
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`Media than McRO. In contrast to McRO, which provided rules explaining how to
`
`effect the desired result, the limitation broadly recites “the panel indicating the
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`character is displayed as an animation when being disposed” which claims the
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`result, without any detail regarding how to effect that result. See Ex. Ex. 1012,
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`219:8-10 (“I’m not aware of any specific technological implementation described
`
`in the specification.”). As in Two-Way Media, the abstract idea itself – displaying
`
`the animation when being disposed – is recited without any recited rules, details, or
`
`improvements in computer functionality to implement that result.
`
`2.
`
`The ’659 Patent Does Not Recite a Specific, Structured User
`Interface
`PO wrongly characterizes the ’659 patent as solving a problem in the field of
`
`graphical user interfaces (GUIs) by comparing it to Trading Techs. Int’l, Inc. v.
`
`CQG, Inc., 675 F. App’x 1001, 1004 (Fed. Cir. 2017) and Core Wireless Licensing
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`S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018). See POR, p. 21-
`
`22, 27, 33-36. This comparison fails because the claims of the patents-at-issue in
`
`Trading Technologies recited a specific, structured GUI to overcome a technical
`
`problem in the prior art (Decision, p. 13), and Core Wireless recited an improved
`
`interface resulting in a more “efficient functioning of the computer,” while the
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`’659 patent recites only generalized functions without reference to any specific
`
`GUI structure and no resulting improvement in computer functionality.
`
`The Trading Technologies patent recited a system for electronically trading
`
`financial instruments on a specific GUI displaying “bid” and “ask” prices. The
`
`patents solved the problem of traders executing trades at different prices than
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`Petitioner’s Reply to Patent Owner’s Response
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`intended because of market movement just before execution of the trade. 675 F.
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`App’x at 1002-1003. The Federal Circuit found the claims not directed to an
`
`abstract idea because they “require a specific, structured user interface paired
`
`with a prescribed functionality directly related to the graphical user interface's
`
`structure that is addressed to and resolves a specifically identified problem in the
`
`prior state of the art.” Id. at 1004 (emphasis added).
`
`In Core Wireless the claims recited an improved UI for computing devices
`
`with small screens. 880 F.3d at 1362. The court determined that the patent
`
`improved the “efficient functioning of a computer,” by increasing how quickly a
`
`user could navigate through several views on a display screen by reciting
`
`“a particular manner of summarizing and presenting information in electronic
`
`devices.” Id. The patent was not directed to an abstract idea because the claims
`
`recited specific implementation details of the GUI including specific graphical
`
`characteristics, a limited set of displayed data, and specific requirements for the
`
`state of the device applications. Id. at 1359.
`
`Here, the challenged claims recite no such specific, structured interface
`
`paired with prescribed functionality or specific implementation details. Although
`
`the ’659 patent purports to address user boredom by providing a virtual card game
`
`with “high visual effect,” the claims fail to recite any specific, structured UI to
`
`address the problem. Ex. 1001, 1:43-50. Instead, the ’659 patent discloses well-
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`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
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`known UI elements paired with result-oriented functions. The ’659 broadly claims
`
`“panels indicating characters to be disposed in one or more divisions of a game
`
`display screen including a display region formed by the divisions” wherein “the
`
`panel indicating the character is displayed as an animation when being disposed in
`
`the target division.” Ex. 1001, 10:21-40. But they provide no limitation with
`
`respect to the specific manner the “panels,” “division,” or “display region” are to
`
`be displayed or arranged, and while the animation may be a “prescribed
`
`functionality” associated with the panel, the animation is in no sense “directly
`
`related to the graphical user interface’s structure.” Cf. Trading Techs, 675 F.
`
`App’x. at 1004.
`
`The Board also invited briefing regarding the relevance of an “aesthetic
`
`benefit,” as opposed to a technical one, in the eligibility analysis with respect to a
`
`particular arrangement. Decision, p. 10 n.2. The Federal Circuit explored this
`
`issue in Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1002 (Fed. Cir.
`
`2018), and determined that an aesthetic benefit is not relevant to patent eligibility
`
`unless tied to an improvement in computer functionality.
`
`In Data Engine, the patents claimed “systems and methods for making
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`complex electronic spreadsheets more accessible by providing familiar, user-
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`friendly interface notebook tab objects.” Id. at 1002. The Federal Circuit found
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`the claim was not directed to an abstract idea because it solved a known
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`technological problem (navigating through multi-page or three-dimensional
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`spreadsheets) in a particular way (by employing notebook tabs in a particular user
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`interface). Id. at 1008. The court stressed the importance of the direct connection
`
`between the aesthetic “user-friendly” interface structure, and the improved
`
`functionality. Id. at 1010-11. Thus, the “tab” aesthetic was only important insofar
`
`as it facilitated the improved computer functionality.
`
`Conversely, the ’659 patent lacks any specific UI structure. The “panels”
`
`and “divisions” are not tied to any specific arrangement or user interface. Further,
`
`to the extent these elements are considered a “specific arrangement,” the claims are
`
`still abstract, as the arrangement is not tied to any specific functionality. Rather,
`
`the panels and divisions are broadly paired with result-oriented functions, with no
`
`description of how to achieve the desired results.
`
`3.
`
`The ’659 Patent Provides No Improvement in Computer
`Functionality
`The ’659 patent also fails to disclose an improvement in computer
`
`functionality. See Trading Techs., 675 F. App’x at 1005 (“ineligible claims
`
`generally lack steps or limitations specific to solution of a problem, or
`
`improvement in the functioning of technology.”). PO – with no claim analysis –
`
`asserts without support that the ’659 patent improves the functioning of a computer
`
`by analogizing the challenged claims to those in DDR Holdings, LLC v.
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`Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). This case provides a
`
`useful contrast to the ’659 patent.
`
`In DDR, the patent survived because it recited a specific way to automate the
`
`creation of a composite web page, and therefore “provided a solution necessarily
`
`rooted in computer technology in order to overcome a problem specifically arising
`
`in computer networks.” DDR, 773 F.3d at 1257, 1259. The Federal Circuit noted
`
`the importance of claim limitations that “specify how interactions with the Internet
`
`are manipulated to yield a desired result—a result that overrides the routine and
`
`conventional sequence of events ordinarily triggered by the click of a hyperlink.”
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`Id. at 1258. In other words, the claims specified a new technique to improve the
`
`hyperlink tool.
`
`In contrast, the challenged claims of the ’659 patent recite no new specific
`
`techniques to improve the prior art. The recited functions were well-known,
`
`routine, and conventional, and performed on standard hardware. See Ex. 1001,
`
`1:36-50. Further, the claims recite no new techniques for providing visual effects.
`
`Indeed, PO’s expert conceded that each recited effect – displaying animation,
`
`displaying frames in different colors, displaying text in panels – appeared in the
`
`prior art. Ex. 1011, 125:14-126:25; 132:18-133:7; Ex. 1012, 252:2-253:7, 265:17-
`
`266:5. Nor does the ’659 patent address a technological problem. Rather, as PO
`
`admits, it purports to address “boredom” – a mental or business problem, rather
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`than “a problem specifically arising in computer networks.” See POR p. 31, 32,
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`38, 45.
`
`4.
`
`The ’659 Patent Recites an Abstract “Way of Managing a
`Game and Playing a Game”
`The Federal Circuit has been clear: “methods of managing a game” are
`
`patent-ineligible abstract concepts. See, e.g., Planet Bingo LLC v. VKGS LLC,
`
`576 Fed. App’x. 1005, 1007-08 (Fed. Cir. 2014). The ’659 patent fails for this
`
`reason. Beyond result-oriented functions, it recites only “game mechanics” or
`
`rules of “gameplay” such as associating “character properties” such as strength
`
`with character cards and acquiring cards “which are given according to progress of
`
`the game.” Ex. 1001, 11:9-11 (claim 8); see also POR, pp. 19 (claims recite
`
`“mechanics and progression of the battle game itself”); Ex. 2002 ¶23 (describing
`
`conventional game mechanics, such as “effect of individual panels on the outcome
`
`of a battle includes capability properties that can change during game play”). But
`
`these game rules make no improvements in computer functionality or GUIs.
`
`Instead, they are merely “rules” of a game and “a way of managing the game and
`
`playing the game.” Ex. 1011, 89:8-90:15
`
`In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016) is instructive. There the
`
`Federal Circuit concluded that the claimed “method of conducting a wagering
`
`game” using a deck of playing cards embodied an abstract idea like the “method of
`
`managing a game” of bingo in Planet Bingo and risk hedging in Alice. Like Smith
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`and Planet Bingo, the ’659 patent broadly recites rules governing a game, which
`
`provide no technical advance, but merely “a way of managing the game and
`
`playing the game.”
`
`In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018), also
`
`is instructive. There, the Federal Circuit found a patent claiming a method of
`
`playing a dice game abstract. The court reasoned that the claimed method – like
`
`that recited here – amounted to no more than “rules for playing a game,” which is
`
`abstract as a method of organizing human activity. Id. at 1160.
`
`In a concurring opinion to Guldenaar, Judge Mayer sought to apply the
`
`teachings of these cases more broadly. Judge Mayer explained that Alice is a
`
`“technological arts” test for patent eligibility, which should categorically exclude
`
`games from patenting. Guldenaar, 911 F.3d at 1166 (Mayer, J. concurring). He
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`reasoned, “While games may enhance our leisure hours, they contribute nothing to
`
`the existing body of technological and scientific knowledge. They should
`
`therefore be deemed categorically ineligible for patent.” Id. This policy squarely
`
`applies to the ’659 patent, which generalized functions and rule-based “game
`
`mechanics” fail to provide a technological advance.
`
`12
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`

`

`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
`
`
`B. Alice Step 2: The Claims of the ’659 Patent Contain No Inventive
`Concept
`1.
`The Claims Are Performed on a Generic Computer
`Performing Routine Functions.
`The ’659 patent provides no inventive concept. All recited claim elements
`
`are well-understood, routine, and conventional.
`
`The claims recite only generic computer equipment or functionally-named
`
`components operating within the hardware: “computer,” “control unit,” “display
`
`screen,” and “screen display unit.” Ex. 1001, 10:49-67. These fundamental
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`computer tools are non-inventive under Alice step two. See, e.g., Mortg. Grader v.
`
`First Choice Loan Services, 811 F.3d 1314, 1324 (Fed. Cir. 2016).
`
`The claims’ result-oriented functions also are well-understood, routine, and
`
`conventional, as explained by the specification, admitted prior art, and Federal
`
`Circuit precedent. The “panel selection function” and “panel layout function” are
`
`well-understood, routine, conventional, and patent-ineligible data storage,
`
`selection, and retrieval functions. See, e.g., Smartflash LLC v. Apple Inc., No.
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`2016-1059, 2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017). Also, the screen
`
`display control function of controlling the game display screen on a screen display
`
`unit is conventional display on a computer screen. See Intellectual Ventures I LLC
`
`v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015).
`
`13
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`

`

`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
`
`
`The Board requested briefing on whether a skilled artisan would be able to
`
`implement the “animation” limitation. PO’s expert explained that providing for
`
`animation through a configured game element was known in the art prior to the
`
`’659 patent, but that there was no technological disclosure in the specification
`
`explaining how to implement this feature, only that a skilled artisan would know
`
`how to do so. See Ex. 1012, 265:17-266:5 (“Configuring a visual element to
`
`display a movie or animation is something that was done in video games prior to
`
`this patent.”); id., 217:17-23. In other words, the ‘659 patent is devoid of technical
`
`specifics for effecting this limitation, “other than, essentially, a presumption that a
`
`programmer of ordinary skill would have known how to do it.” Decision, p. 16.
`
`2.
`
`“Panels” are “Well-Understood, Routine, and
`Conventional”
`Panels are well-understood, routine, and conventional elements of video
`
`games. The ’659 patent analogizes panels to prior art cards. The Background
`
`describes a card game played on a control apparatus, where each player owns
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`cards. Ex. 1001, 1:34-45. The specification purports to improve upon this prior art
`
`card game by configuring “panels” to have “high visual effect.” Id. 1:36-2:22.
`
`The specification later treats panels and cards interchangeably: “In addition, when
`
`three or more specific panels are disposed within one game display screen, it is
`
`also possible to generate a combo exhibiting the effect beyond the effects of these
`
`cards.” Ex. 1001, 10:17-20.
`
`14
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`

`

`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
`
`
`PO’s expert conceded that these terms can be used synonymously:
`
`MR. CRANE: I believe that the term “these cards” is
`referring to the three or more specific panels described
`above in that sentence.
`
`Q: All right. So cards can be panels, at least in some
`circumstances; is that right?
`
`Mr. CRANE: Yes.
`
`Ex. 1012, 249:9-20 (objections omitted).
`
`Accordingly, the claimed panels correspond to prior art “cards,” were well-
`
`understood, routine, and conventional. See Ex. 1001, 1:30-50.
`
`3.
`
`The Independent Claims Do Not Recite a Means to Achieve
`“High Visual Effect”
`“[I]mprovements in the specification” fail to create a factual dispute unless
`
`they are “captured in the claims.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369
`
`(Fed. Cir. 2018). Here, although the patent purports to provide “high visual effect”
`
`to improve over “boring” prior art card games, none of the independent claims
`
`provides for achieving such an effect.
`
`PO’s expert relied on plain meaning to assert “high visual effect” is “a visual
`
`effect, and high would be better than average.” Ex. 1012, 175:19-176:3. He says
`
`such effects in the ’659 patent include differently colored frames, animation, and
`
`emphasized displays. Id., 264:6-266:5.
`
`15
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`

`

`PGR2018-00047
`Petitioner’s Reply to Patent Owner’s Response
`
`
`But the claims recite no means to achieve the “high visual effect.” Rather,
`
`they broadly recite result-oriented functions, preempting all means of achieving
`
`them. See Ex. 1012, 219:8-10 (“I’m not aware of any specific technological
`
`implementation described in the specification.”). Claim 1 recites “the panel
`
`indicating the character is displayed as an animation when being disposed in the
`
`target.” No technological disclosure appears in the specification explaining how to
`
`implement this effect. See Ex. 1012, 265:17-266:5.
`
`PO also argues that certain game mechanics provide for high visual effect,
`
`including imposing “a rule-based set of specialized game mechanics to control the
`
`flow of the battle game” such that “each row indicates a turn of a battle.” POR,
`
`p. 9. Again, these mechanics are not recited in the independent claims.
`
`Thus, the independent claims fail to “capture” the purported improvement
`
`described in the specification, and no factual question can exist as to whether they
`
`contain an inventive concept. See Berkheimer, 881 F.3d at 1369.
`
`C. The Dependent Claims 2-13 Are Directed to the Same Abstract
`Idea and Provide No Inventive Concept
`The challenged dependent claims, each of which ultimately depends from
`
`
`
`claim 1, are directed to the same abstract concept as claim 1, and none recites a
`
`concrete solution that transforms the basic abstract idea into a patent-eligib