UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00047
`U.S. Patent No. 9,770,659
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00047
`U.S. Patent No. 9,770,659
`
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction. ..................................................................................................... 1
`I.
`II. The Claims Are Not Directed to an Abstract Idea. .......................................... 1
`A. The Claims are Not Abstract Under the Office’s Revised Guidance. .............. 2
`B. Petitioner’s Own Arguments Demonstrate the Claims are Patent Eligible. ..... 5
`C. The Claims are Analogous to Other Claims Found Not Abstract by the
`Federal Circuit. ....................................................................................................... 7
`1. Core Wireless. ................................................................................................ 7
`2. DDR. ............................................................................................................. 10
`3. Trading Technologies. .................................................................................. 12
`D. Petitioner’s Arguments Ignore the Precedent Above and the Evidence of
`Record. .................................................................................................................. 15
`III. Alternatively, the Claims Recite an Inventive Concept. ................................ 17
`A. A New Type of Information Supplies the Inventive Concept. ....................... 17
`B. In re Smith. ...................................................................................................... 19
`C. Petitioner Has Presented No Evidence of What Was Well-Understood,
`Routine, or Conventional. ..................................................................................... 20
`IV. Petitioner Presents No Evidence Regarding § 112. ........................................ 22
`V. Conclusion. ..................................................................................................... 25
`
`
`
`
`i
`
`
`
`
`Exhibit
`No.
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`2007
`
`2008
`
`Patent Owner’s Exhibit List
`
`Exhibit Description
`
`Biography of Steven D. Moore
`Declaration of David Crane
`JP2007252696 and Machine Translation of Description
`File History of Patent Application No. 15/686268
`April 26, 2018 “Guidance on the impact of SAS on AIA trial proceedings,”
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial
`Kevin Mullet & Darrell Sano, Designing Visual Interfaces – Communication
`Oriented Techniques (1995)
`U.S.P.T.O. 2019 Revised Patent Subject Matter Eligibility Guidance, effective
`January 7, 2019
`Remarks by Director Iancu at the Intellectual Property Owners Association
`46th Annual Meeting, Sept. 24, 2018, available at
`https://www.uspto.gov/about-us/news-updates/remarks-director-iancu-
`intellectual-property-owners-46th-annual-meeting
`
`
`
`ii
`
`
`
`I.
`
`Introduction.
`Petitioner’s Reply presents no new evidence of what it contends was well-
`
`understood, routine, or conventional. Instead, Petitioner presents new arguments
`
`that appeared nowhere in the Petition about why the claims are allegedly abstract
`
`and misrepresents Patent Owner’s expert testimony with respect to § 112. For the
`
`reasons below, the claims are patentable.
`
`II. The Claims Are Not Directed to an Abstract Idea.
`The claims are not abstract. First, under the Office’s revised guidance
`
`regarding § 101, the claims are not abstract because the claims do not recite
`
`mathematical concepts, methods of organizing human activity, or mental
`
`processes. Second, under this guidance the claims recite a practical application of
`
`Petitioner’s alleged abstract ideas because the limitations of the claims as a whole
`
`recite improvements to video-game graphical user interfaces (“GUI”). Third, the
`
`claims are analogous to other claims that the Federal Circuit has found patentable.
`
`In the Reply, Petitioner presents a new argument not found in the Petition—
`
`namely, that the ’659 patent is directed to a “way of managing a game and playing
`
`a game.” Paper 27 (“Reply”), at 11. This argument should be rejected at least
`
`because Petitioner never raised it in the Petition, and furthermore this contradicts
`
`Petitioner’s previous assertion that the claims are directed to “controlling a video
`
`game display based on a received selection of panel information.” Paper 1
`
`1
`
`
`
`(“Pet.”), at 24 (emphasis added). Petitioner’s contradictory arguments are an
`
`admission that the claims are directed to more than either of Petitioner’s two
`
`alleged abstract ideas by themselves, and therefore patentable.
`
`The remaining Reply arguments fail to prove the claims are abstract.
`
`Software can make non-abstract improvements to computer technology just as
`
`hardware can. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
`
`2016). The Federal Circuit has frequently found claims that recite functional
`
`results non-abstract. And as explained, the claims are analogous to those found
`
`patentable in other cases.
`
`A. The Claims are Not Abstract Under the Office’s Revised Guidance.
`
`On January 7, 2019, the Office promulgated revised guidance regarding the
`
`§101 analysis. See Ex. 2007. This guidance was not available to Patent Owner
`
`prior to submission of the Response. See Paper 20. Petitioner did not address this
`
`guidance in its Reply.
`
`Under this guidance, three “groupings” of abstract ideas are identified:
`
` “Mathematical concepts”;
`
` “Certain methods of organizing human activity”; and
`
` “Mental processes.”
`
`Ex. 2007, at 9-11 (footnotes omitted).
`
`2
`
`
`
`“Claims that do not recite matter that falls within these enumerated
`
`groupings of abstract ideas should not be treated as reciting abstract ideas.” Ex.
`
`2007, at 11. The claims are not directed to mathematical concepts or mental
`
`processes, and Petitioner has not argued otherwise. The claims are not directed to
`
`methods of organizing human activity, and Petitioner never raised any argument
`
`otherwise in the Petition.
`
`For the first time, Petitioner asserts that the claims are directed to a “way of
`
`managing a game and playing a game.” Reply at 11. This is a new argument and
`
`it should be given no weight by the Board. 37 C.F.R. § 42.204(b); see Ariosa
`
`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015).
`
`Furthermore, even if this argument is considered, the challenged claims are valid.
`
`First, the claims recite elements of an improved video-game graphical user
`
`interface, which are not rules for or a way of managing a game. For example,
`
`claim 1 recites:
`
` [1a]:1 “…receiving a selection by the first user…”—Petitioner does not
`
`contend this is a rule. It is not. The limitation recites a divided game
`
`display screen and the selection of panels to be placed therein. These
`
`elements relate to the claimed GUI.
`
`
`1 See Appendix A.
`
`3
`
`
`
` [1b]: “…disposing the panels in the divisions…”—again, Petitioner does
`
`not contend this is managing a game. This limitation recites how a panel
`
`selected by a user is placed into one or more divisions of the display,
`
`another element of the improved GUI.
`
` [1e]: “…displayed as an animation when being disposed…”—Petitioner
`
`does not contend this limitation is a rule or mechanic. This limitation is
`
`expressly a visual element, displaying a panel indicating a character as an
`
`animation during disposition.
`
`The dependent claims also recite visual improvements to the GUI that have
`
`nothing to do with rules or mechanics. Claims 2 and 3 recite a “division execution
`
`function” according to a “predetermined order” in which the panels may be
`
`disposed by the panel layout function based on arrangement, shapes, and/or sizes
`
`of the panels. Ex. 1001, at 10:51-57. Even Petitioner admits these limitations
`
`“vary how the panels are arranged or displayed.” Pet. 36. Claim 4 expressly
`
`recites an “emphasized display function.” Ex. 1001, at 10:58-62 (emphasis added).
`
`Claim 10 recites each division “possesses a text display portion” that “is
`
`displayed to overlap the panel disposed in the division.” Ex. 1001, at 11:14-18.
`
`Claims 11, 12, and 13 recite divisions having a “frame portion,” a configuration
`
`“changed according to progress of the game,” or that panels “indicate characters
`
`that the first user and the second user use for attack or defense in the game,”
`
`4
`
`
`
`respectively. Ex. 1001, at 11:19-31. These limitations are visual—not merely
`
`rules or game mechanics. Ex. 2002 ¶ 29. The claims are not directed solely to a
`
`“way of managing a game and playing a game.”
`
`Second, Petitioner previously contended the claims were directed to
`
`“controlling a video game display based on a received selection of panel
`
`information.” Pet. 24 (emphasis added). This is the alleged abstract idea upon
`
`which review was instituted. Paper 17, at 7. “We must therefore ensure at step
`
`one that we articulate what the claims are directed to with enough specificity to
`
`ensure the step one inquiry is meaningful.” Thales Visionix Inc. United States, 850
`
`F.3d 1343, 1347 (Fed. Cir. 2017) (citing Alice, 134 S.Ct. at 2354). Petitioner has
`
`failed to do so. And Petitioner’s new characterization of the alleged abstract idea
`
`is nothing more than Petitioner’s recognition that the Petition failed to meet its
`
`initial burden.
`
`B. Petitioner’s Arguments Demonstrate the Claims are Patent Eligible.
`
`Even if Petitioner is correct that the claims are directed to both “controlling a
`
`video game display based on a received selection of panel information” and a “way
`
`of managing a game and playing a game,” then the claims are eligible under the
`
`revised guidance and precedent because the claims recite more than either alleged
`
`abstract idea by itself. Under the guidance, “Prong Two” of the analysis asks
`
`whether “the recited exception is integrated into a practical application.” Ex. 2007,
`
`5
`
`
`
`at 16. “A claim that integrates a judicial exception into a practical application will
`
`apply, rely on, or use the judicial exception in a manner that imposes a meaningful
`
`limit on the judicial exception, such that the claim is more than a drafting effort
`
`designed to monopolize the judicial exception.” Ex. 2007, at 18. Precedent,
`
`meanwhile, is clear that where the claims recite an element or elements sufficient
`
`to ensure the claim amounts to “significantly more” than the abstract idea itself, the
`
`claim is patentable under step two. Alice, 573 U.S. at 218.
`
`Mr. Crane confirms that the ’659 patent describes and claims inventive
`
`gameplay mechanics and visual improvements Ex. 2002 ¶¶ 22-29. Under the
`
`revised guidance, this satisfies “Prong Two” or “Step 2A,” which asks whether “an
`
`element reflects an improvement in the functioning of a computer, or an
`
`improvement to other technology or technical field.” Ex. 2007, at 19. While
`
`Petitioner asserts the claims are directed to “controlling a video game display
`
`based on a received selection of panel information,” the inventive mechanics
`
`impose meaningful limits to this alleged abstract idea by applying it to the claimed
`
`rules. Ex. 2002 ¶¶ 22-28. And while Petitioner asserts the claims are directed to a
`
`“way of managing a game and playing a game,” the visual limitations
`
`meaningfully apply the gameplay mechanics in a novel video-game GUI. Ex.
`
`2002 ¶ 29. Under Alice, the limitations related to either alleged abstract idea are
`
`thus “significantly more” than the limitations related to the other—i.e., the
`
`6
`
`
`
`combination of elements is sufficient to amount to more than a patent upon either
`
`alleged idea by itself. Alice, 573 U.S. at 218. The claims therefore pass Alice step
`
`two. Petitioner has failed to cite any case holding that claims may be allegedly
`
`directed to more than one abstract idea and still be unpatentable under § 101.
`
`C. The Claims are Analogous to Other Claims Found Not Abstract by the
`Federal Circuit.
`
`Although Petitioner attempts to distinguish the claims from cases such as
`
`Core Wireless, DDR, and Trading Technologies, Petitioner presented no
`
`comparisons between those cases and the claims here. Reply at 4-8. When
`
`compared, the claims are analogous to those found patentable in these cases.
`
`1. Core Wireless.
`
`Below is a table comparing claim 1 to the representative claim in Core
`
`Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
`
`2018).
`
`U.S. Patent No. 8,434,020, claim 1
`1. A computing device comprising
`
`Compare Ex. 1001, claim 1[preamble].2
`[a] a display screen, the computing device being configured to display on the
`screen a main menu listing at least a first application,
`
`Compare Ex. 1001, claim [1a].
`[b] and additionally being configured to display on the screen an application
`summary window that can be reached directly from the main menu,
`
`
`2 See Appendix A for the full claim language.
`
`7
`
`
`
`Compare Ex. 1001, claim [1c].
`[c] wherein the application summary window displays a limited list of at least one
`function offered within the first application,
`
`Compare Ex. 1001, claim [1d].
`[d] each function in the list being selectable to launch the first application and
`initiate the selected function,
`
`Compare Ex. 1001, claim [1a].
`[e] and wherein the application summary window is displayed while the
`application is in an un-launched state.
`
`Compare Ex. 1001, claim [1e].
`
`The Federal Circuit found the claim above was not abstract. Core Wireless,
`
`880 F.3d at 1362. Petitioner’s two basic arguments regarding the challenged
`
`claims are that they allegedly recite results-oriented functions and run on a
`
`conventional computer. First, however, like the challenged claims, the claim in
`
`Core Wireless was performable on general purpose hardware—mobile phones. Id.
`
`at 1359; see also id. at 1362. Second, also like the challenged claims, the claim
`
`above is written with active language (“configured to display,” “displays,” “being
`
`selectable,”) and the Federal Circuit found this was patentable as “a particular
`
`manner of summarizing and presenting information in electronic devices.” Id. at
`
`1362; see also Ex. 2008, at 6 (“The analysis also does not deny claims as ineligible
`
`merely because they are broad or functionally-stated or result-oriented.”)
`
`
`
`Limitation [1a] of claim 1 of the ’659 patent is analogous to the display and
`
`selection functions in Core Wireless—the display is configured to present
`
`8
`
`
`
`information in a certain format, and selectable elements are displayed in the
`
`interface. Limitation [1c] is analogous to the Core Wireless display being
`
`additionally configured to display an application summary window reachable from
`
`the main menu, as both functions require the display of multiple GUI elements—
`
`either the result of panels selected by first and second users, or else a main menu
`
`and an application summary window. Limitation [1d] is analogous to the
`
`application summary window because both limitations impose conditions on the
`
`display of certain GUI elements—displaying a panel that was selected for a target
`
`division or receiving an instruction that the panel is disposed, or displaying a
`
`limited list of at least one function so long as its offered within the application.
`
`Limitation [1e] is analogous to the last limitation in Core Wireless because both
`
`limitations impose an additional restriction on the manner in which a GUI element
`
`is displayed—a panel indicating a character is displayed as an animation when
`
`disposed, and a summary window being displayed while the application is in an
`
`un-launched state. Although the terminology differs, the level of detail the two
`
`claims recite is the same.
`
`In Core Wireless, the Federal Circuit found the claim “an improved user
`
`interface for computing devices.” Id. at 1362. Here, the claims are a technical
`
`advance over the interfaces of prior art card games because of the combination of
`
`GUI improvements and game mechanics that makes gameplay more interesting.
`
`9
`
`
`
`Ex. 1001, at 1:30-49; Ex. 2002 ¶¶ 27-29. Making an interface more usable and
`
`making gameplay more technically and visually interesting are both technical
`
`improvements in their respective fields. Ex. 2002 ¶¶ 22-29; see McRO, Inc. v.
`
`Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (finding
`
`claims that improved what was an otherwise subjective process were not abstract).
`
`2. DDR.
`
`Below is a table comparing claim 1 to the representative claim in DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`
`U.S. Patent No. 7,818,399, claim 19
`19. A system useful in an outsource provider serving web pages offering
`commercial opportunities, the system comprising:
`
`Compare Ex. 1001, claim 1[preamble].
`(a) a computer store containing data, for each of a plurality of first web pages,
`defining a plurality of visually perceptible elements, which visually perceptible
`elements correspond to the plurality of first web pages;
`(i) wherein each of the first web pages belongs to one of a plurality of web page
`owners;
`(ii) wherein each of the first web pages displays at least one active link associated
`with a commerce object associated with a buying opportunity of a selected one of a
`plurality of merchants; and
`(iii) wherein the selected merchant, the out-source provider, and the owner of the
`first web page displaying the associated link are each third parties with respect to
`one other;
`
`Compare Ex. 1001, claim [1a].
`(b) a computer server at the outsource provider, which computer server is coupled
`to the computer store and programmed to:
`(i) receive from the web browser of a computer user a signal indicating activation
`of one of the links displayed by one of the first web pages;
`
`Compare Ex. 1001, claim [1b].
`
`10
`
`
`
`(ii) automatically identify as the source page the one of the first web pages on
`which the link has been activated;
`
`Compare Ex. 1001, claim [1c].
`(iii) in response to identification of the source page, automatically retrieve the
`stored data corresponding to the source page; and
`
`Compare Ex. 1001, claim [1d].
`(iv) using the data retrieved, automatically generate and transmit to the web
`browser a second web page that displays:
`(A) information associated with the commerce object associated with the link that
`has been activated, and (B) the plurality of visually perceptible elements visually
`corresponding to the source page.
`
`Compare Ex. 1001, claim [1e].
`
`
`
`As the Federal Circuit explained, the claim in DDR “requires that a ‘data
`
`store’ hold ‘visually perceptible elements’ (or ‘‘look and feel’ elements’) that
`
`‘visually ... correspond’ to a host web page.” DDR, 773 F.3d at 1250. “Although
`
`the claims address a business challenge (retaining website visitors), it is a
`
`challenge particular to the Internet.” Id. at 1257. This is analogous to the business
`
`problem and solution identified by the ’659 patent: retaining users of video games
`
`by claiming improved game mechanics and a corresponding GUI compared to
`
`what was previously known. Ex. 1001, at 1:30-49.
`
`
`
`As in Core Wireless, the claim above recites results-oriented functions on
`
`conventional hardware. Both of the claims above recite storage and retrieval of
`
`data—either for panels indicating characters to be disposed in the display, or for
`
`commercial web sites having visually perceptible elements and links to be
`
`11
`
`
`
`displayed in a browser. Both of the claims recite receiving a particular selection,
`
`either for one or more panels or for activation of a link. And both of the claims
`
`recite similar activities with respect to handling the selection—in the challenged
`
`claims, disposing of the selected panel in the target division and displaying the
`
`panel indicating the character as an animation upon disposition. In DDR, a new
`
`web page is displayed based on the selected link and the visually perceptible
`
`elements from the data store. Just as the claim in DDR solved the “challenge of
`
`retaining control over the attention of the customer in the context of the Internet,”
`
`challenged claim 1 solves the challenge of retaining the attention of the user in the
`
`context of the claimed video-game GUI. Id. at 1258.
`
`3. Trading Technologies.
`
`Below is a table comparing claim 1 to the representative claim in Trading
`
`Technologies International, Inc. v. CQG, INC., 675 F. App’x 1001 (Fed. Cir.
`
`2017).
`
`U.S. Patent No. 6,766,304, claim 1
`1. A method for displaying market information relating to and facilitating trading
`of a commodity being traded in an electronic exchange having an inside market
`with a highest bid price and a lowest ask price on a graphical user interface, the
`method comprising;
`
`Compare Ex. 1001, claim 1[preamble].
`
`12
`
`
`
`dynamically displaying a first indicator in one of a plurality of locations in a bid
`display region, each location in the bid display region corresponding to a price
`level along a common static price axis, the first indicator representing quantity
`associated with at least one order to buy the commodity at the highest bid price
`currently available in the market;
`
`dynamically displaying a second indicator in one of a plurality of locations in an
`ask display region, each location in the ask display region corresponding to a price
`level along the common static price axis, the second indicator representing quantity
`associated with at least one order to sell the commodity at the lowest ask price
`currently available in the market;
`
`Compare Ex. 1001, claim [1a], [1b].
`displaying the bid and ask display regions in relation to fixed price levels
`positioned along the common static price axis such that when the inside market
`changes, the price levels along the common static price axis do not move and at
`least one of the first and second indicators moves in the bid or ask display regions
`relative to the common static price axis;
`
`displaying an order entry region comprising a plurality of locations for receiving
`commands to send trade orders, each location corresponding to a price level along
`the common static price axis; and
`
`Compare Ex. 1001, claim [1c], [1d].
`
`in response to a selection of a particular location of the order entry region by a
`single action of a user input device, setting a plurality of parameters for a trade
`order relating to the commodity and sending the trade order to the electronic
`exchange.
`
`Compare Ex. 1001, claim [1e].
`
`The Federal Circuit in Trading Techs. noted that the claim requires “a
`
`specific, structured graphical user interface paired with a prescribed functionality
`
`directly related to the graphical user interface’s structure that is addressed to and
`
`13
`
`
`
`resolves a specifically identified problem in the prior state of the art.” Trading
`
`Techs., 675 F. App’x at 1004. Similarly, the challenged claims do not “simply
`
`claim displaying information on a graphical user interface,” id.—the claim recites a
`
`structured GUI comprising “one or more divisions of a game display screen
`
`including a display region formed by the divisions,” where the divisions include
`
`specific divisions where panels from the first and second user are allowed to be
`
`disposed, and the panels are only disposed in a target division when that condition
`
`is satisfied. The claims further recite prescribed functionality directly tied to the
`
`GUI—a panel indicating a character is displayed as an animation upon disposition.
`
`Just as panels selected by the first and second user are disposed in the
`
`divisions of the game display screen, the claim in Trading Techs. discloses
`
`displaying first and second indicators in bid and ask regions of the display. Just as
`
`claim 1 lays out the panels selected by the first and second user and displays these
`
`locations according to selections received by the layout function, the claim in
`
`Trading Techs. changes the location of at least one indicator in the display
`
`according to a change in the inside market. And just as claim 1 describes a display
`
`with divisions where panels from the respective databases are allowed to be
`
`disposed and the disposition and animation of panels in a target division when that
`
`condition is satisfied, the claim in Trading Techs. discloses a plurality of locations
`
`14
`
`
`
`for receiving orders based on price levels and the disposition of an order based on a
`
`user selection.
`
`D. Petitioner’s Arguments Ignore the Precedent Above and the Evidence of
`Record.
`
`In the Reply, Petitioner asserts that the “patent is agnostic as to how the
`
`functions are implemented” and the “components are black boxes.” Reply at 2.
`
`However, the claims are analogous to those in DDR, Core Wireless, and Trading
`
`Technologies, which all establish that functional claim language is not inherently
`
`abstract. Furthermore, if the claimed functions are truly “black boxes” as
`
`Petitioner contends, then Petitioner should have proposed means-plus-function
`
`claim constructions for those functions. The fact that Petitioner has not proposed
`
`means-plus-function treatment means that Petitioner concedes the claims recite
`
`sufficient structure to perform the functions. TriMed, Inc. v. Stryker Corp., 514
`
`F.3d 1256, 1259-60 (Fed. Cir. 2008).
`
`And Mr. Crane never agreed that the claims recite a “series of result-oriented
`
`functions without describing or reciting a means to achieve them.” Reply at 3. To
`
`the contrary—he testified “a person of ordinary skill in the art would understand
`
`how to implement the operations described in the specification.” Ex. 1012, at
`
`217:21-23. The implementation of the functions recited in the claims is described
`
`in the claim limitations, and none of the valid, non-abstract claims in the cases
`
`cited above provide any of the detail which Petitioner claims is missing from the
`
`15
`
`
`
`’659 patent. Moreover, Petitioner has not raised an enablement challenge and
`
`therefore concedes that a person of ordinary skill in the art can practice the
`
`invention. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
`
`1334 (Fed. Cir. 2003).
`
`Although Petitioner asserts the ’659 patent claims “no new specific technical
`
`techniques to improve the prior art,” DDR shows that claims directed to the
`
`subjective “look and feel” of a GUI (i.e. a web page in a browser) are a valid
`
`technical solution to the problem of retaining user attention—the same problem
`
`described in and solved by the ’659 patent in the context of prior art card-based
`
`video games. Petitioner cites to alleged concessions from Mr. Crane about
`
`particular visual effects in an attempt to show they were conventional, but none of
`
`Mr. Crane’s actual responses were what Petitioner represents them to be. Compare
`
`Reply at 10 with, e.g., Ex. 1011, 125:10-12 (“I’m not aware of any game of this
`
`type that used a panel around – or a frame region around a panel in this way”);
`
`132:14-17 (“I was not aware of nor presented with any prior art that disposed
`
`frames in the manner described in the specification that included text information
`
`in the frames”).
`
`Furthermore, none of Mr. Crane’s cross-examination about what may have
`
`allegedly been disclosed in prior art is relevant. “Whether a particular technology
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`is well-understood, routine, and conventional goes beyond what was simply known
`
`16
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`
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`in the prior art.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
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`(emphasis added). Petitioner cannot meet its burden to prove the claims as an
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`ordered combination are conventional by pointing only to individual elements that
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`may have allegedly been separately known in the art in different contexts. Id.
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`III. Alternatively, the Claims Recite an Inventive Concept.
`Since the claims are not abstract, the analysis ends. Enfish, 822 F.3d at
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`1339. But the challenged claims are nonetheless patentable under step two. First,
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`the claims recite a new type of panel-based information that, among other
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`properties, indicates characters and displays as an animation upon being disposed
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`in a target division, can be emphasized, includes text overlays, and includes panel
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`information including size and capability, which provides an inventive concept.
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`Second, the Office has observed that rules for a game using a new set of “cards”
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`can be patentable under Alice step two. Third, Petitioner’s Reply offers no proof
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`of what was well-understood, routine, or conventional for any of the challenged
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`claims; Petitioner must do more than merely show something allegedly was known
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`in the art.
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`A. A New Type of Information Supplies the Inventive Concept.
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`The Federal Circuit has recognized that claims “requir[ing] a new source or
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`type of information, or new techniques for analyzing it,” such as “measurement
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`devices or techniques, that would generate new data,” may reveal an inventive
`
`17
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`
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`concept. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed Cir.
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`2016). As detailed above and in the Response (Paper 20, at 38-47), the use of
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`panels as described and claimed allows for animation, execution based on a
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`predetermined order, and emphasized display of panels, which in combination with
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`panels as described and claimed is “a new source or type” of information not found
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`in prior art card games. Petitioner presents no argument or evidence showing that
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`the combination of these visual and game-mechanic improvements was well-
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`understood or conventional.
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`The claims recite user selection of panels to be disposed in divisions of the
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`game display and animation thereof, and further recite execution of panels in an
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`order based on panel properties, emphasized display thereof, and the use of panels
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`for attack or defense. Ex. 1001, claims 1, 2, 3, 4, 13. This combination of display
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`features, panel properties, and game mechanics is a new type of information that
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`was previously unknown in prior art card games. Ex. 2002 ¶ 23. Although
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`Petitioner contends that the claims are performed on a generic computer and that
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`“panels” were allegedly conventional, Petitioner presented no evidence or
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`argument on the record that the combination of animation and gameplay properties
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`with panels as described and claimed was known at all in the art, much less
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`conventional—Petitioner could have challenged the claims under §§ 102 or 103,
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`but did not. Selecting and disposing of panels, displaying them as an animation,
`
`18
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`
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`and executing further gameplay based on the capabilities of those panels require a
`
`new type of information that supplies an inventive concept. Elec. Power, 830 F.3d
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`at 1355. The dependent claims also recite this new information: claim 5 requires
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`particular panel information, claim 12 requires changing the configuration of
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`divisions according to game progress, and claim 13 requires the panels indicate
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`characters used for attack or defense. Petitioner has presented no evidence that any
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`of these features were well-known, routine, or conventional.
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`B. In re Smith.
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`As Petitioner admits, the claims recite visual effects and gameplay
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`mechanics. This combination ensures the claims are directed to more than either
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`of Petitioner’s alleged abstract ideas individually. Furthermore, the use of panels
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`as described and claimed with properties such as animation upon disposition was
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`previously unknown in the art. “We could envisage, for example, claims directed
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`to conducting a game using a new or original deck of cards potentially surviving
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`step two of Alice.” In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016).
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`The claims here are analogous to the “game using a new or original deck of
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`cards” contemplated by the Federal Circuit in Smith. Neither Smith, Planet Bingo
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`LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir. 2014), nor In re Marco
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`Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018), held that no game is
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`patentable under § 101. All of those cases are distinguishable for two reasons.
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`19
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`
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`First, in each case the Federal Circuit noted
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