`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00047
`U.S. Patent No. 9,636,659
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`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
`
`
`TABLE OF CONTENTS
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`Introduction. ..................................................................................................... 1
`I.
`II. The ’659 Patent. ................................................................................................ 1
`III. The Alleged Grounds of Invalidity. ................................................................. 9
`IV. The Petition Fails to Prove Any Claim is Ineligible Under § 101. ................ 10
`A. Legal Standard for Invalidity Under § 101. .................................................... 11
`B. The Petition Fails to Meet its Burden Under Alice and Berkheimer. ............. 12
`1. Claim 1 is not representative of all claims of the ’659 patent. ..................... 13
`2. Petitioner engages in pure speculation as to the Examiner’s state of mind. 14
`3. Petitioner fails to analyze—or even mention—all of the limitations of claim
`1. 15
`4. The petition paraphrases the dependent claims and provides no actual
`analysis. ............................................................................................................. 18
`5. Petitioner offers no evidence to contradict the specification of the ’659
`patent. ................................................................................................................ 20
`C. The Claims are Subject-Matter Eligible. ........................................................ 26
`1. The ’659 patent is not directed to an abstract concept. ................................ 26
`2. Alternatively, the claims recite the requisite “inventive concept.” .............. 33
`V. The Claims Have Sufficient Written Description. ......................................... 37
`A. Legal Standard for the Written Description Requirement of § 112(a). .......... 37
`B. Level of Ordinary Skill in the Art. .................................................................. 38
`C. The Petitioner Fails to Meet its Burden Under § 112(a). ............................... 39
`D. The ’659 Patent Contains Sufficient Written Description for the Claims. ..... 42
`VI. The Claims are Definite. ................................................................................. 48
`A. Legal Standard for Definiteness. .................................................................... 48
`B. The Petition Fails to Meet its Burden. ............................................................ 49
`
`
`
`i
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`
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`C. A Person of Ordinary Skill Would Understand the Scope of the Claim Terms
`at Issue. ................................................................................................................. 50
`VII. The Petition Should Be Denied in its Entirety. .............................................. 54
`VIII. Conclusion. ..................................................................................................... 55
`
`
`
`
`ii
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`
`
`Exhibit
`No.
`2001
`2002
`2003
`2004
`2005
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`Patent Owner’s Exhibit List
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`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
`
`
`
`iii
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`
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`I.
`
`Introduction.
`The petition should be denied. Petitioner’s alleged grounds of invalidity
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`under § 101 and § 112 are nothing more than mere attorney argument and are
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`unsupported by any evidence. Although Petitioner contends the claims of the ’659
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`patent are patent-ineligible, Petitioner ignores the actual language of the challenged
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`claims in the petition and fails to provide any evidence of what was well-
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`understood, routine, and conventional in the art. Petitioner’s assertions that the
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`claims lack sufficient written description and are indefinite are also nothing more
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`than attorney argument and fail to analyze the claims from the perspective of a
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`person of ordinary skill. Notwithstanding Petitioner’s failure to meet its burden,
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`the challenges raised in the petition also fail on their merits. The invention
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`disclosed in the ’659 patent is a technological improvement to graphical user-
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`interfaces. The ’659 patent’s claims are definite, and its disclosure satisfies the
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`written description requirement. The Board should deny Petitioner’s request and
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`not institute review.
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`II. The ’659 Patent.
`The ’659 patent generally discloses “a game program and a game processing
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`method of a game in which a plurality of characters battle against each other.” Ex.
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`1001, 1:23-24. According to the ’659 patent, “card game[s] in which the user
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`plays against other users or against the computer using cards collected in the
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`1
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`
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`game” are typically played on “electronic apparatuses such as smart phones and
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`tablets.” Ex. 1001, 1:30-35. However, the ’659 patent identifies a known problem
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`in the software card-game art “since the use of a two-dimensional card in the battle
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`scene is sometimes boring, [and] there have been calls for improvement.” Ex.
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`1001, 1:44-46.
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`The solution to this problem provided by the ’659 patent is a “game program
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`and a game processing method of a game that gives a user a high visual effect.”
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`Ex. 1001, 1:48-49. To achieve this high visual effect, the ’659 patent explains that
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`in one embodiment “the battle between the first and second characters proceeds in
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`a format like a cartoon. Therefore, since the user can play the game with a sense of
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`reading a cartoon, the visual effect that the user receives is greatly improved
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`compared to known games.” Ex. 1001, 7:51-55. An example of such an
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`embodiment is provided in Figure 12.
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`2
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`
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`Ex. 1001, Fig. 12.
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`
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`In order to generate this particular user interface, the ’659 patent teaches the
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`use of “panels to be disposed in frames of the game display screen including a
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`battle display region.” Ex. 1001, 5:41-43. “Preferably, these panels display a
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`movie when the panels are emphasized and displayed.” Ex. 1001, 8:46-47. In one
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`example, the panels “can have an arbitrary size,” such as for example in a “battle
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`display region 310 divided into cells” a panel may be one, two, or four cells in size.
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`3
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`
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`Ex. 1001, 7:61 – 8:3. “Panels can have various shapes such as a circle, a triangle,
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`and a polygon, as well as the rectangle (including a square) such as a card in the
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`related art.” Ex. 1001, 8:26-28.
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`
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`Panels are acquired by playing the game. Ex. 1001, 9:39-41. An exemplary
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`game according to the ’659 patent has “a main cycle and a sub-cycle.” Ex. 1001,
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`9:38-39. In a main cycle of the game, “as shown in FIG. 7, the user selects one
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`character from a plurality of characters presented.” Ex. 1001, 9:39-41.
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`
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`Ex. 1001, Fig. 7. Playing the selected character, the user “collects panels while
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`advancing the quest.” Ex. 1001, 9:41. “A panel can be acquired as a reward for
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`the battle with the enemy characters and the boss character. In addition, it is also
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`possible to acquire the panel in a specific event or the like. Thus, the user acquires
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`4
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`
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`the panel by advancing the game.” Ex. 1001, 9:47-51. An example “quest” is
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`depicted in Figure 8. Ex. 1001, 9:44-45.
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`
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`Ex. 1001, Fig. 8.
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`
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`In the “sub-cycle” of the game, “the user can use the acquired panel to
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`strengthen the deck for the battle or can use the acquired panel to develop a
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`character. Developing the character refers to combining the character selected by
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`the user with the acquired panel.” Ex. 1001, 9:52-56. When panels are used for
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`character development, the panels may include “strength,” “attack,” “defense,” or
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`“special technique effects” information to provide improvements to a user’s
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`character for use in a battle. Ex. 1001, 9:56-65. When panels are used to
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`5
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`
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`strengthen the deck, panels may include “capability information [that] refers to
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`information including attack, defense (avoidance), attributes, recovery, and skills
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`to disable or replace the frame, for example.” Ex. 1001, 8:31-33.
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`
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`Thus, the ’659 patent explains that panels may be used for battle or character
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`development, and are acquired by progressing through the main cycle of the game.
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`Ex. 1001, 9:52-54, 9:39-41. “[W]hen a battle starts, the battle using the game
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`display screen” is performed as shown in Figures 3 and 12, for example. Ex. 1001,
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`7:25-27, 10:12-14. The battle may “proceed from the upper left to the lower right”
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`or vice versa in the display, and the display may “be divided by the turn indicating
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`the unit of the progress of the battle.” Ex. 1001, 8:18-24.
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`6
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`
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`Ex. 1001, Fig. 3.
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`
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`In this example, a “first panel group” includes “a plurality of panels that the
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`first character possesses” and a “second panel group” includes “a plurality of
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`panels that the second character possesses.” Ex. 1001, 7:4-9. The panels selected
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`from each panel group “are disposed in the frames A to G” during the battle. Ex.
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`1001, 7:40-41. According to the ’659 patent, the game program may “execute the
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`frames in a predetermined order, and emphasize and display the panels disposed in
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`the executed frames.” Ex. 1001, 7:45-47.
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`7
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`
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`Within this particular example interface, the “high visual effect” disclosed in
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`the ’659 patent is accomplished by several different improvements. For example,
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`panels may be sized such that the “effect of the capability is assumed to correspond
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`to the size of the panel.” Ex. 1001, 8:33-35. A panel can “display a still image”
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`and “display a movie when the panels are emphasized and displayed.” Ex. 1001,
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`8:37-47. A “panel that is emphasized and displayed is displayed to zoom in.” Ex.
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`1001, 8:67 – 9:1. The frames in which panels are displayed may “display texts”
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`and have “a sound effect display portion 20 to display the texts showing the sound
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`effect and/or an effect display portion 30 to display the effect.” Ex. 1001, 8:56-58.
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`Frames may have “frame portions” that are “constructed in different colors” such
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`that “the panel of the first character and the panel of the second character can be
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`visually easily distinguished.” Ex. 1001, 9:6-10.
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`
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`The user interface examples disclosed in the ’659 patent further impose a
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`rule-based set of specialized game mechanics to control the flow of the battle
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`game. For instance, in one interface, “each row indicates a turn of a battle, [and]
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`the occupancy of action in each turn in horizontally long frames such as the frames
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`H, N, and O, is high compared to that in horizontally short frames such as the
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`frames I, J, K, L, and M.” Ex. 1001, 8:4-9. In this manner, “a panel the size of
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`which is larger and presents at a position where a turn number is earlier leads a
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`battle advantageously.” Ex. 1001, 8:14-16.
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`8
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`
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`The game outcome is ultimately determined by the arrangement of panels: a
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`“battle result is preferably determined based on the panel information at a stage
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`where the panels are disposed,” and “it is also possible to change the battle result
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`by changing the panel…by the operation (action for recovery or the like) of the
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`user during the battle.” Ex. 1001, 9:18-23. The disposition of panels within the
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`display region may also trigger other game mechanics. For example, “when three
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`or more specific panels are disposed within one game display screen, it is also
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`possible to generate a combo exhibiting the effect beyond the effects of these
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`cards.” Ex. 1001, 10:17-20.
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`III. The Alleged Grounds of Invalidity.
`The petition (“Pet.”) raises three alleged grounds of invalidity. First,
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`Petitioner asserts that claims 1-15 of the ’659 patent are invalid under § 101. Pet.
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`16-38. Second, according to Petitioner, claims 1-15 lack sufficient written
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`description and are therefore invalid under § 112(a). Pet. 39-47. Third, Petitioner
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`alleges that claims 1-15 are invalid under § 112(b) as indefinite. Pet. 47-52.
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`For the reasons explained below, the petition should be denied in its entirety.
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`Petitioner has provided absolutely no evidence in support of any of the three
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`challenges raised in the petition—and mere attorney argument is insufficient for
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`Petitioner to carry its burden. See, e.g., Suffolk Techs., LLC v. AOL Inc., 752 F.3d
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`1358, 1367 (Fed. Cir. 2014) (“Without expert testimony, however, Suffolk’s
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`9
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`
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`position is mere attorney argument. And here, those attorney arguments are
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`insufficient to undermine the credible testimony from Google’s expert” as to a
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`question of fact). As a result Petitioner has failed to show that it is more likely
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`than not that any of the challenged claims are unpatentable. 35 U.S.C. § 324(a).
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`Petitioner’s alleged grounds of invalidity also fail on their merits because they fail
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`to address all of the limitations of the claims, ignore the disclosure of the
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`specification of the ’659 patent, and fail to analyze the claims from the perspective
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`of one of ordinary skill in the art. The Board should deny the petition.
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`IV. The Petition Fails to Prove Any Claim is Ineligible Under § 101.
`Petitioner’s assertion that the challenged claims of the ’659 patent are
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`invalid under § 101 is wrong. Procedurally, Petitioner does not properly analyze—
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`or in some instances even mention—all of the limitations recited by claim 1 or
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`those of the dependent claims. The petition cites no evidence, relying instead on
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`attorney argument to support the claim that select claim elements are both abstract
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`and routine, conventional, or well-understood functionality. Since the petition fails
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`to meet its basic burden under the Alice § 101 analysis, this ground should be
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`rejected.
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`The § 101 challenge also fails on the merits—the claims of the ’659 patent
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`are not directed to an abstract idea; rather, as the testimony of Patent Owner’s
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`10
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`
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`expert cited below demonstrates, they recite a specific application of an improved
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`game user-interface that was not routine, conventional, or well-understood.
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`The petition should be denied.
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`A. Legal Standard for Invalidity Under § 101.
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`A patent may be obtained for “any new and useful process, machine,
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`manufacture, or composition of matter, or any new and useful improvement
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`thereof.” 35 U.S.C. § 101. However, the Supreme Court has “held that this
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`provision contains an important implicit exception: Laws of nature, natural
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`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank
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`Int’l, 134 S. Ct. 2347, 2354 (2014). The “concern that drives this exclusionary
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`principle as one of pre-emption,” but “we tread carefully in construing this
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`exclusionary principle lest it swallow all of patent law.” Id.
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`Under the framework set forth in Alice, one must first “determine whether
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`the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at
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`2355. “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If the claims are directed to a patent-
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`ineligible concept, one must next “consider the elements of each claim individually
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`and ‘as an ordered combination’ to determine whether the additional elements
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`‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355
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`11
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`
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`(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289,
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`1297 (2012)).
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`Step two is an inquiry as to whether the claims add an inventive concept that
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`is sufficient to ensure the patent amounts to more than a patent upon the concept
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`itself. Alice, 134 S. Ct. at 2355. Claims reciting “well-understood, routine,
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`conventional activity” in the field of art are insufficient to confer patentability to
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`otherwise ineligible concepts. Mayo, 566 U.S. at 79. “The question of whether a
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`claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact. Any fact,
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`such as this one, that is pertinent to the invalidity conclusion must be proven by
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`clear and convincing evidence.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368
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`(Fed. Cir. 2018).
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`B. The Petition Fails to Meet its Burden Under Alice and Berkheimer.
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`Petitioner extracts three verbs from claim 1 of the ’659 patent, claims those
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`verbs were well-known at the time, and declares that this renders the ’659 patent
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`invalid under § 101. Pet. 25. This is not the analysis set forth in Alice. To meet its
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`burden, the petition must (1) demonstrate the claims are directed to an abstract
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`concept, (2) analyze the claim limitations both individually and as an ordered
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`combination, and (3) address the underlying questions of fact as to whether a claim
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`element or combination of elements is well-understood, routine, and conventional
`
`12
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`
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`to a skilled artisan. See Berkheimer, 881 F.3d at 1367-68. The petition fails to
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`satisfy any of these requirements.
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`1. Claim 1 is not representative of all claims of the ’659 patent.
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`As an initial matter, Petitioner alleges that claim 1 is “representative” for
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`purposes of institution. Pet. 14. Patent Owner disagrees. Dependent claims 2-13
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`recite unique limitations not found in claim 1 that separately bear on the question
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`of patent eligibility.1 For example, dependent claims 2 and 3 recite a “division
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`execution function” according to a “predetermined order” not present in claim 1.
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`Ex. 1001, 10:51-57. Dependent claim 4 recites an “emphasized display function”
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`that is not present in claim 1. Ex. 1001, 10:58-62. Dependent claim 5 recites a
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`“division execution function” based on “panel information” that is not recited in
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`claim 1. Ex. 1001, 10:63-67.
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`Similarly, dependent claims 6 and 7 limit “panel information” to include the
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`size of a panel or a capability of each panel. Ex. 1001, 11:1-8. Claim 8 recites the
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`panels “are given according to progress of the game.” Ex. 1001, 11:9-11.
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`According to claim 9, the “display region is divided by a plurality of turns.” Ex.
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`1001, 11:12-13. Claim 10 requires that each division “possesses a text display
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`1 Claim 1 is patent-eligible, at least for the reasons set forth in Section IV.C. The
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`identification of particular claim limitations in the dependent claims herein
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`demonstrates that claim 1 is not representative of all claims.
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`13
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`
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`portion” that “is displayed to overlap the panel disposed in the division.” Ex.
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`1001, 11:14-18. Dependent claims 11, 12, and 13 require the divisions to have a
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`“frame portion,” a configuration “changed according to progress of the game,” or
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`that panels “indicate characters that the first user and the second user use for attack
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`or defense in the game,” respectively. Ex. 1001, 11:19-31.
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`None of these unique limitations is found in claim 1, and they each
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`separately bear on the issue of subject-matter eligibility as explained in more detail
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`below. The petition ignores these limitations or fails to adequately address them,
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`and thus Petitioner fails to meet its burden by treating claim 1 as representative.
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`For at least this reason, the petition should be denied for failing to address all of the
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`limitations of the Challenged Claims of the ’659 patent.
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`2. Petitioner engages in pure speculation as to the Examiner’s state of
`mind.
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`Petitioner claims that § 101 was not addressed during prosecution. Pet. 22.
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`However, the application that issued as the ’659 patent was filed on December 27,
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`2016—more than two years after the Alice decision. Petitioner acknowledges that
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`the USPTO provided “guidance . . . to examiners on the application” of § 101. Pet.
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`22. In spite of this, Petitioner speculates that the examiner failed to properly apply
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`that guidance or any of the intervening decisions of the Federal Circuit applying
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`the Alice standard. Pet. 23-24.
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`14
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`
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`Petitioner’s musings do not amount to evidence that the examiner failed to
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`properly determine whether the ’659 patent is patent-eligible. The examiner was
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`provided with the tools to issue rejections under § 101 during prosecution of both
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`the parent and child applications of the ’659 patent, applying the relevant guidance
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`at those times. Pet. 23 (citing Ex. 1005 at 47-49; Ex. 1006 at 6-14, 128-133).
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`Indeed, the examiner initially rejected the pending claims of the child application
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`of the ’659 patent on November 16, 2017 under § 101. A little over a month ago
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`the examiner applied the relevant guidance and allowed those child application
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`claims. Ex. 2004 at 160-62 (rejecting claims under § 101), 180-82 (applicant’s
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`response), 195-202 (notice of and reasons for allowance). That the examiner
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`issued no eligibility rejections for the ’659 patent is just as likely based on the
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`Examiner’s conclusion that the claims were patent eligible as it is the Examiner’s
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`alleged failure to understand and apply the Patent Office’s § 101 guidance during
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`prosecution.
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`3. Petitioner fails to analyze—or even mention—all of the limitations of
`claim 1.
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`Petitioner’s treatment of claim 1 is wholly defective. To meet the burden set
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`forth by Alice, the petition must address all of the claim limitations of claim 1, both
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`individually and as an ordered combination. See, e.g., OIP Techs., Inc. v.
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`Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (“we must then consider
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`the elements of each claim both individually and as an ordered combination”)
`
`15
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`
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`(internal quotations and citation omitted). But Petitioner fails to do so. Claim 1 is
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`reproduced below, with annotations to particular elements for reference, with
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`limitations not addressed in full by Petitioner in italics (see Pet. 24-29):
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`1. [preamble] A non-transitory computer readable recording
`medium storing game program code instructions for a game in which
`a first user and a second user do battle, and when the game program
`code instructions are executed by a computer, the game program code
`instructions cause the computer to perform:
`[1a] a panel selection function of receiving a selection by the
`first user, the selection being for one or more panels indicating
`characters to be disposed in one or more divisions of a game display
`screen including a display region formed by the divisions;
`[1b] a panel layout function of disposing the panels in the
`divisions on the basis of the selection received by the panel selection
`function; and
`[1c] a screen display control function of controlling the game
`display screen on a screen display unit on the basis of information
`regarding the layout by the panel layout function and layout of the
`panel in the divisions by the second user, wherein
`[1d] the panel layout function disposes the panel received by
`the panel selection function in a target division or receives an
`instruction that the panel is disposed in the target division, when the
`panel is allowed to be disposed in the target division, and
`[1e] the panel indicating the character is displayed as an
`animation when being disposed in the target division.
`
`
`16
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`
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`Ex. 1001, 10:25-50 (emphasis added).
`
`Nowhere does Petitioner analyze any of these limitations—either
`
`individually or as an ordered combination—in their entirety. For example, element
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`[1a] recites “a panel selection function of receiving a selection by the first user, the
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`selection being for one or more panels indicating characters to be disposed in one
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`or more divisions of a game display screen including a display region formed by
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`the divisions.” Ex. 1001, 10:31-35. The claim recites that the “panel selection
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`function” includes an algorithm: selecting one or more panels (which must be
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`performed by the first user), where those selected panels will be disposed in at least
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`one division of a game display screen, where the divisions form a display region.
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`Id. But the petition fails to analyze this limitation in its entirety—or even a
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`substantial portion thereof. The petition simply discusses “receiving selection of a
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`panel,” “receiving a panel selection,” or “receiving a selection” four times in the
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`context of its purported analysis under § 101. Pet. 15, 25, 27.
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`The petition fails to explain or even mention why selecting “panels
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`indicating characters to be disposed in one or more divisions of a game display
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`screen including a display region formed by the divisions” is either abstract or
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`well-understood, routine or conventional. The petition also fails to explain or
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`mention why the selection of panels “by the first user” is either abstract or well-
`
`understood, routine, or conventional. The petition also fails to analyze or even
`
`17
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`
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`acknowledge how element [1a] is further limited by element [1e], where the panel
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`“indicating the character is displayed as an animation when being disposed in the
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`target division” with respect to § 101.
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`This superficial “hand wave” analysis of the challenged claims is
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`insufficient to meet Petitioner’s burden under Alice. Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (“describing the claims at such a high
`
`level of abstraction and untethered from the language of the claims all but ensures
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`that the exceptions to § 101 swallow the rule”) (citing Alice, 134 S. Ct. 2354).
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`Although Petitioner alleges the ’659 patent “does nothing more than recite an
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`abstract idea in purely functional terms,” (Pet. 17), Petitioner’s allegations arise
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`from the dissection of claim 1 into a handful of verbs (“receiving selection of a
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`panel, disposing of the panel, and controlling display of the game screen” (Pet.
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`22)) that bear no meaningful resemblance to the challenged claims. The petition is
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`likewise defective as to the other limitations of claim 1 with respect to § 101. See,
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`e.g., Pet. 15, 25, 27 (reducing elements [1c] and [1e] to “controlling”); Pet. 14, 22,
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`24 (reducing elements [1b] and [1d] to “disposing”).
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`4. The petition paraphrases the dependent claims and provides no
`actual analysis.
`
`In less than three full pages, the petition purports to assess the subject-matter
`
`eligibility of twelve dependent claims and argues that all twelve claims lack
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`eligibility. Pet. 36-38. For example, claim 2 recites a “division execution function
`
`18
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`
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`of executing the divisions in which the panels are disposed by the panel layout
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`function in predetermined order.” Ex. 1001, 10:51-54. Petitioner ignores the
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`limitation that “panels are disposed by the panel layout function in predetermined
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`order” entirely as recited by claim 2. Claim 3 requires the “predetermined order”
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`to be “based on arrangement, shapes, and/or sizes of the panels.” Ex. 1001, 10:55-
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`57. Petitioner fails to even acknowledge the “based on arrangement” limitation
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`anywhere in the petition. See Pet. 37.
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`The language of every dependent claim in the ’659 patent is parsed,
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`removed, and/or ignored by Petitioner. See Pet. 36-38. According to Alice,
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`Petitioner has failed to meet its burden. Petitioner asserts sporadically in these two
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`pages that “[n]one [of the dependent claims] discloses a concrete solution,”
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`“[s]everal of the dependent claims append ordinary game concepts to the claimed
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`method,” or that these “conventional concepts constitute nothing more than
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`obvious choices to be made within the abstract concept.” Id. But Petitioner never
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`specifically identifies the dependent claims to which these assertions apply or
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`provides any meaningful analysis or supporting evidence. Id. This falls far short
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`of the standard set by Alice, which demands that “we consider the elements of each
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`claim both individually and as an ordered combination.” Alice, 134 S. Ct. at 2355
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`(citation and quotation omitted) (emphasis added).
`
`
`
`19
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`
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`5. Petitioner offers no evidence to contradict the specification of the
`’659 patent.
`
`A petitioner must identify the “evidence relied upon to support the challenge
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`and the relevance of the evidence to the challenge raised.” 37 C.F.R. §
`
`42.104(b)(5). Petitioner has failed to do so here. Petitioner proffers no expert
`
`testimony to support its arguments and cites no extrinsic evidence with respect to §
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`101 (or any of the other alleged grounds of invalidity in the petition).
`
`“The question of whether a claim element or combination of elements is
`
`well-understood, routine and conventional to a skilled artisan in the relevant field
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`is a question of fact.” Berkheimer, 881 F.3d at 1368. According to Petitioner,
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`“[r]eceiving selection of, and disposing of a ‘panel’ containing game information,
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`as noted in the background of the ’659 specification, were previously well known
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`in the art.” Pet. 25 (citing Ex. 1001, 1:38-46). Petitioner is wrong. First, the
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`disclosure in specification quoted by Petitioner contradicts Petitioner’s assertion:
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`“As an example of such a game, there is a card game in which
`the user plays against other users or against the computer using cards
`collected in the game.
`Japanese Unexamined Patent Application Publication No.
`2007-252696 discloses a technique regarding the card game described
`above. According to that technique, the user configures a deck with
`cards used in a play which is selected from a plurality of cards that the
`user owns, and plays a rock-paper-scissors game or the like with an
`opponent using the deck.”
`
`20
`
`
`
`Ex. 1001, 1:38-46. The passage quoted by Petitioner contains no mention of
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`selecting or disposing of panels.
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`Petitioner also incorrectly claims that “[a]lthough the specification purports
`
`to provide the user of the battle video game with an improvement to the prior art
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`game that comprises a ‘high visual effect,’ the purported enhancement advance is
`
`not recited in any of the independent claims.” Pet. 16. This is wrong. Claim 1
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`recites “the panel indicating the character is displayed as an animation when being
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`disposed in the target division.” Ex. 1001, 10:49-50. According to the ’659 patent,
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`“portions can be displayed with a movie when the frame is emphasized and
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`displayed. Due to these portions, the visual effect given to the user is further
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`improved.” Ex. 1001, 8:58-62 (emphasis added).
`
`
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`Petitioner later asserts “[a]ll the recited claim elements of the ’659 claims,
`
`tangible and otherwise, are conventional, generic and well understood, and thus
`
`present no patentable inventive concept.” Pet. 31-32.2 This is attorney argument,
`
`not evidence. Suffolk Techs., 752 F.3d at 1367 (“attorney arguments are
`
`insufficient”). Petitioner presents no evidence, either in the form of expert
`
`testimony or otherwise, to support this assertion. The specification of the ’659
`
`2 Whether a claim limitation is “generic” has no bearing under the standard set forth
`
`in Alice, which instead focuses on whether the claims recite well-understood,
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`routine, or conventional activities. See Mayo, 566 U.S. at 79.
`
`21
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`
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`patent directly contradicts Petitioner’s assertion, disclosing that in one illustrative
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`embodiment “since the user can play the game with a sense of reading a cartoon,
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`the visual effect that the user receives is greatly improved compared to known
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`games.” Ex. 1001, 7:53-55.
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`Citing Berkheimer, Petitioner alleges “these claims still would create ‘a
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`factual dispute regarding whether the invention describes well-understood, routine,
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`and conventional activities.’” Pet. 31. Petitioner suggests that “Berkheimer favors
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`institution of trial upon the presentation of evidence…” Id. But Petitioner has
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`failed to present any evidence that the invention is well-understood, routine, or
`
`conventional, since the petition is nothing more than attorney argument and cannot,
`
`of itself, create any factual dispute. See, e.g., British Airways Bd. v. Boeing Co.,
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`585 F.2d 946, 952 (9th Cir. 1978) (“legal memoranda and oral argument are not
`
`evidence, and they cannot by themselv