Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 39
`Filed: September 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00047
`Patent 9,770,659 B2
`____________
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE,
`and CARL M. DEFRANCO, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`INTRODUCTION
`I.
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant review of
`claims 1–15 of U.S. Patent No. 9,770,659 B2 (“the ’659 patent”) (Ex. 1001)
`pursuant to 35 U.S.C. §§ 321–29. Paper 1. GREE, Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”). Paper 15.
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`On September 18, 2018, we issued a Decision ordering that “pursuant to 35
`U.S.C. § 324, a post-grant review is hereby instituted for claims 1–15 of the ’659
`patent with respect to all grounds set forth in the Petition.” Paper 17, 26; “Dec.”
`After institution, Patent Owner filed a Patent Owner’s Response (Paper 20; “PO
`Resp.”), Petitioner filed a Petitioner’s Reply to Patent Owner’s Response (Paper
`27; “Pet. Reply”), and Patent Owner filed a Patent Owner’s Sur-Reply (Paper 29;
`“PO Sur-Reply.”). An oral hearing was held on June 19, 2019. Paper 37; “Tr.”
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine that
`Petitioner has met its burden of showing, by a preponderance of the evidence, that
`claims 1–15 of the ’659 patent are unpatentable.
`
`The ’659 Patent
`A.
`The ’659 patent relates generally to a method of displaying a battle scene for
`a computer game in which users do battle against each other using cards or
`“panels” collected in the game. Ex. 1001, 1:33–46, 5:28–32. The ’659 patent
`states that a card game system in which “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 . . . is
`familiar to many users today.” Ex. 1001, 1:38–42. According to the ’659 patent,
`“since the use of a two-dimensional card in the battle scene is sometimes boring,
`there have been calls for improvement.” Ex. 1001, 1:44–46. To address this
`problem, the ’659 patent describes consecutively emphasizing panels when
`displaying the battle scene, so that the battle proceeds in a cartoon or movie-like
`format, thus, giving the user an improved visual effect. Ex. 1001, 7:45–55,
`8:46–48, 8:65–9:2.
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`Related Matters
`B.
`Petitioner identifies the following matter: GREE, Inc. v. Supercell K.K.,
`Case 2017 (Yo) No. 22165 in Tokyo District Court, associated with related patent
`JP 6,125,128. Pet. 1–2. Petitioner indicates that the ’659 patent is a continuation
`of U.S. Application Ser. No. 15/253,964, which is a continuation of U.S.
`Application Ser. No. 14/291,358, which claims the benefit of Japanese Patent
`Application No. 2013-116039, which published as JP 6,125,128. Pet. 1; see
`Ex. 1001, (63), (30). Patent Owner identifies PGR2018-00029 as involving U.S.
`Patent No. 9,636,583 B2, which is related to the ’659 patent. Paper 4, i.1
`
`Illustrative Claim
`C.
`Claims 1–15 are pending and challenged, of which claims 1, 14, and 15 are
`independent. Independent claim 1, which is representative, is reproduced below:
`1.
`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:
`
`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;
`
`a panel layout function of disposing the panels in the divisions
`on the basis of the selection received by the panel selection function;
`and
`a screen display control function of controlling the game display
`
`screen on a screen display unit on the basis of information regarding
`
`1 On August 14, 2019, a Final Written Decision was issued in PGR2018-00029
`holding claims 1–15 of U.S. Patent No. 9,636,583 B2 unpatentable. See Supercell
`Oy v. GREE, Inc., Case PGR2018-00029, slip op. at 69 (PTAB Aug. 14, 2019)
`(Paper 45).
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`the layout by the panel layout function and layout of the panel in the
`divisions by the second user, wherein
`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 the panel indicating the character is
`displayed as an animation when being disposed in the target division.
`
`The Alleged Grounds of Unpatentability
`D.
`The Petition asserts that claims 1–15 of the ’659 patent are unpatentable as
`being directed to patent ineligible subject matter under 35 U.S.C. § 101 (Pet. 16–
`38), lacking adequate written description under 35 U.S.C. § 112(a) (Pet. 38–47),
`and being indefinite under 35 U.S.C. § 112(b) (Pet. 47–52).
`
`Eligibility of Patent for Post-Grant Review
`E.
`The post-grant review provisions of the Leahy-Smith America Invents Act
`(“AIA”)2 apply only to patents subject to the first inventor to file provisions of the
`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions apply to
`any application for patent, and to any patent issuing thereon, that contains or
`contained at any time a claim to a claimed invention that has an effective filing
`date on or after March 16, 2013. AIA § 3(n)(1). Furthermore, “[a] petition for a
`post-grant review may only be filed not later than the date that is 9 months after the
`date of the grant of the patent or of the issuance of a reissue patent (as the case may
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the same).
`Petitioner asserts that the instant Petition is being filed within nine months of
`the September 26, 2017, issue date of the ’659 patent. Pet. 2. Further, the ’659
`patent was filed on December 27, 2016, and claims benefit of several priority
`
`
`2 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`dates, the earliest of which is May 31, 2013. Ex. 1001, (22), (30). Patent Owner
`does not contest Petitioner’s assertions. See generally PO Resp.; PO Sur-Reply.
`We are persuaded that Petitioner has met its burden of showing, by a
`preponderance of the evidence, that the ’659 patent is eligible for post-grant
`review.
`
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`whether Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–15 of the ’659 patent are unpatentable.
`A.
`Claim Construction
`As a step in our analysis for determining whether to institute a review, we
`determine the meaning of the claims. The instant Petition was filed prior to the
`effective date of the rule change that replaces the broadest reasonable interpretation
`(“BRI”) standard. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (codified at 37 C.F.R. § 42.200(b)
`(2019)) (“This rule is effective on November 13, 2018 and applies to all IPR, PGR
`and CBM petitions filed on or after the effective date.”). We, therefore, apply the
`BRI standard in this proceeding. See 37 C.F.R. § 42.200 (2017). Under that
`standard, in a post-grant review, a claim in an unexpired patent shall be given its
`broadest reasonable construction in light of the specification of the patent in which
`it appears. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable construction standard,
`claim terms are generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a
`“claim term will not receive its ordinary meaning if the patentee acted as his own
`lexicographer and clearly set forth a definition of the disputed claim term in either
`the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002).
`Neither party requests construction of any particular claim limitation. See
`generally Pet.; PO Resp.; Pet. Reply; PO Sur-Reply. We also see no need for any
`express claim constructions. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[O]nly [those] terms [need be
`construed] that are in controversy, and only to the extent necessary to resolve the
`controversy.” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999))).
`
`B.
`
`Claims 1–15 as Directed to Patent Ineligible
`Subject Matter Under 35 U.S.C. § 101
`Petitioner contends that claims 1–15 do not recite patent eligible subject
`matter under 35 U.S.C. § 101. Pet. 16–38 (citing Exs. 1001–1008). Patent Owner
`disagrees. PO Resp. 2–60 (citing Exs. 1001, 2002). Petitioner replies. Pet. Reply
`1–22 (citing Exs. 1001, 1009–1012, 2001–2003). Patent Owner responds further.
`PO Sur-Reply 1–21 (citing Exs. 1001, 1011, 1012, 2002, 2007, 2008).
`1.
`Relevant Law
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
`Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions:
`“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
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`In determining whether a claim falls within an excluded category, we are
`guided by the Supreme Court’s two-step framework, described in Mayo and Alice.
`Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
`U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine
`what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face,
`the claims before us are drawn to the concept of intermediated settlement, i.e., the
`use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
`U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic
`concept of hedging, or protecting against risk.”).
`Concepts determined to be abstract ideas, and thus, patent ineligible, include
`certain methods of organizing human activity, such as fundamental economic
`practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical
`formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
`(Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent
`eligible include physical and chemical processes, such as “molding rubber
`products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing,
`making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
`(quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and
`manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S.
`780, 785 (1876))).
`In Diehr, the claim at issue recited a mathematical formula, but the Supreme
`Court held that “a claim drawn to subject matter otherwise statutory does not
`become nonstatutory simply because it uses a mathematical formula.” Diehr, 450
`U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more
`than a process for molding rubber products and not as an attempt to patent a
`mathematical formula.”). Having said that, the Supreme Court also indicated that a
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`claim “seeking patent protection for that formula in the abstract . . . is not accorded
`the protection of our patent laws, . . . and this principle cannot be circumvented by
`attempting to limit the use of the formula to a particular technological
`environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
`commonplace that an application of a law of nature or mathematical formula to a
`known structure or process may well be deserving of patent protection.”).
`If the claim is “directed to” an abstract idea, we turn to the second step of the
`Alice and Mayo framework, where “we must examine the elements of the claim to
`determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
`claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221
`(quotation marks omitted). “A claim that recites an abstract idea must include
`‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
`designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
`“[M]erely requir[ing] generic computer implementation[] fail[s] to transform that
`abstract idea into a patent-eligible invention.” Id.
`After the filing of the Petition and Patent Owner’s Response, but before the
`filing of Petitioner’s Reply to Patent Owner’s Response and Patent Owner’s Sur-
`Reply, the U.S. Patent and Trademark Office published revised guidance on the
`application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
`Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
`whether the claim recites:
`(1) any judicial exceptions, including certain groupings of abstract
`ideas (i.e., mathematical concepts, certain methods of organizing
`human activity such as a fundamental economic practice, or mental
`processes); and
`(2) additional elements that integrate the judicial exception into a
`practical application (see Manual of Patent Examining Procedure
`(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
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`See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
`exception and (2) does not integrate that exception into a practical application, do
`we then look to whether the claim:
`(3) adds a specific limitation beyond the judicial exception that is not
`“well-understood, routine, conventional” in the field (see MPEP
`§ 2106.05(d)); or
`(4) simply appends well-understood, routine, conventional activities
`previously known to the industry, specified at a high level of generality,
`to the judicial exception.
`See Guidance, 84 Fed. Reg. at 56.
`2. Whether the Claims Are Directed to an Abstract Idea
`a.
`Petitioner’s Assertions in the Petition
`Petitioner asserts that the claims are directed to “controlling the display of a
`video game based on a received selection of panel information,” which Petitioner
`asserts is an abstract idea. Pet. 13, 24. In particular, Petitioner argues that the
`claims are directed to an abstract idea because the claim limitations “comprise only
`functional results – receiving selection of a panel, disposing of the panel, and
`controlling display of the game screen.” Pet. 25. Petitioner further argues that that
`the claims are not limited to any specific means or technology for achieving these
`functional results, thus, covering any system that provides these results, and that
`the ’659 patent does not disclose any technical improvements to computers or
`video game technology. Pet. 25. Petitioner cites various Federal Circuit cases in
`support of its assertion that the claims of the ’659 patent are directed to an abstract
`idea. For example, Petitioner cites Affinity Labs, in which claims directed to “the
`function of wirelessly communicating regional broadcast content to an out-of-
`region recipient, not a particular way of performing that function” were determined
`to be directed to an abstract idea, and Two-Way Media, in which claims reciting a
`
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`method for routing information, using “result-based functional language” without
`“sufficiently describ[ing] how to achieve th[o]se results in a non-abstract way,”
`were determined to be directed to an abstract idea. See Pet. 24–26 (citing Affinity
`Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016);
`Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337–38
`(Fed. Cir. 2017)). According to Petitioner, all three independent claims recite
`“nothing more than commands to be executed by a computer to control a video
`game.” Pet. 13–14.
`b.
`Patent Owner’s Assertions in Patent Owner’s Response
`Patent Owner responds that the claims are not directed to an abstract idea, as
`asserted by Petitioner, but to “both the mechanics and progression of the battle
`game itself and the graphical user-interface improvements to the display of such a
`game.” PO Resp. 19; see also PO Resp. 2–14, 18–32, 36–38 (further assertions
`about the same). Patent Owner responds additionally that claims are not abstract
`because they recite a sufficient level of technical specificity for a graphical user
`interface. PO Resp. 32–36. Patent Owner responds further that neither “the
`mechanics and progression of the battle game itself” nor “the graphical user-
`interface improvements to the display of such a game,” is “a purely mathematical
`concept, a method of organizing human activity, a purely mental process, or a
`fundamental economic practice.” PO Resp. 19–20.
`c.
`Petitioner’s Assertions in Petitioner’s Reply to
`Patent Owner’s Response
`Petitioner replies that the claims recite result-oriented functions without
`non-abstract means, such as a specific, structured user interface, for achieving
`them. Pet. Reply 1–9. Petitioner replies further that the claims provide no
`improvement to computer functionality. Pet. Reply 9–11. Petitioner replies
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`additionally that the claims recite an abstract “way of managing a game and
`playing a game,” as follows:
`Like Smith and Planet Bingo, the ’659 patent broadly recites rules
`governing a game, which provide no technical advance, but are merely
`“a way of managing the game and playing the game.”
`
`In 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.
`Pet. Reply 11–12.
`d.
`Patent Owner’s Assertions in Patent Owner’s Sur-Reply
`Patent Owner answers that the claims are not directed to any of the abstract
`ideas under the Guidance. PO Sur-Reply 1–5. In doing so, Patent Owner asserts
`the following: “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 . . . .” PO Sur-Reply 1.
`Patent Owner asserts that “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.”
`PO Sur-Reply 3 (emphasis omitted).
`Patent Owner answers further that even if Petitioner is correct, the claims are
`still not directed to an abstract idea, because “‘the recited exception is integrated
`into a practical application’” under the Guidance. PO Sur-Reply 5–6 (quoting
`Ex. 2007, 16). Specifically, Patent Owner answers as follows:
`Mr. Crane confirms that the ’659 patent describes and claims [a
`combination of]
`inventive gameplay mechanics and visual
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`improvements[.] Ex. 2002 ¶¶ 22-29. Under the [Office’s] revised
`guidance, this [is sufficient under] . . . “Prong Two” or “Step 2A,”
`which [looks to] . . . 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.
`PO Sur-Reply 6 (emphasis omitted); see also PO Sur-Reply 15–16 (responding to
`related characterizations of their expert’s testimony by Petitioner).
`Patent Owner answers additionally that the claims are analogous to other
`claims found to be subject matter eligible by the Federal Circuit. PO Sur-Reply
`7–15, 19–20.
`e. Whether “Controlling a Video Game Based on a Received
`Selection of Panel Information” is an Abstract Idea
`We address first Petitioner’s original assertion that the claims are directed to
`the abstract idea of “controlling the display of a video game based on a received
`selection of panel information,” before turning to its later assertion that the claims
`recite an abstract “way of managing a game and playing a game.” Under the
`Guidance, abstract ideas are “mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic practice, or mental
`processes.” 84 Fed. Reg. at 52–55. Under the Guidance, we agree with Patent
`Owner that Petitioner has not met its burden of showing how it’s explicit
`characterization, in the Petition, of what the claims are directed to, “controlling the
`display of a video game based on a received selection of panel information,” falls
`within any of “mathematical concepts, certain methods of organizing human
`activity such as a fundamental economic practice, or mental processes.” PO Resp.
`18–19. An analysis of independent claim 1 explains how Petitioner failed to meets
`its burden.
`Petitioner did not assert adequately that “controlling the display of a video
`game based on a received selection of panel information” is a mathematical
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`concept. Specifically, Petitioner did not argue that “controlling the display of a
`video game based on a received selection of panel information” involved
`“mathematical relationships, mathematical formulas or equations, mathematical
`calculations.” Guidance, 84 Fed. Reg. at 52. And our own comparison of
`“controlling the display of a video game based on a received selection of panel
`information,” and the claims at issue in the Supreme Court and Federal Circuit
`cases cited at footnote 12 of the Guidance, results in the same determination. For
`example, the claims at issue in Diehr explicitly recited a mathematical formula, the
`Arrhenius equation, the claims at issue in Flook explicitly recited the mathematical
`formula “Bo + K,” and the claims at issue in Benson explicitly recited several
`mathematical formulas, including “adding a binary ‘1’ to the first position of said
`register.” “[C]ontrolling the display of a video game based on a received selection
`of panel information” is not similar to any of those limitations. Similar to the
`claims at issue in Diehr, Flook, and Benson, the claims at issue in SAP America,
`Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018) explicitly recited the
`mathematical calculation of “generating a distribution function using a re-sampled
`statistical method and a bias parameter,” the claims at issue in Digitech Image
`Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)
`explicitly recited several mathematical relationships, including “first data for
`describing a device dependent transformation of color information content of the
`image to a device independent color space,” and the claims at issue in Bancorp
`Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1280
`(Fed. Cir. 2012) explicitly recited several mathematical calculations, including
`“calculating a policy value and a policy unit value for the current day.” Again,
`“controlling the display of a video game based on a received selection of panel
`information” is not similar to any of those limitations.
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`Petitioner also did not assert adequately that “controlling the display of a
`video game based on a received selection of panel information” is one of the
`certain methods of organizing human activity set forth in the Guidance.
`Specifically, Petitioner did not argue that “controlling the display of a video game
`based on a received selection of panel information” involves any of the following:
`fundamental economic principles or practices (including hedging,
`insurance, mitigating risk); commercial or legal interactions (including
`agreements in the form of contracts; legal obligations; advertising,
`marketing or sales activities or behaviors; business relations);
`managing personal behavior or relationships or interactions between
`people (including social activities, teaching, and following rules or
`instructions).
`Guidance, 84 Fed. Reg. at 52. Similar to our analysis concerning mathematical
`concepts, our own analysis comparing “controlling the display of a video game
`based on a received selection of panel information,” to the claims at issue in the
`Supreme Court and Federal Circuit cases cited at footnote 13 of the Guidance
`arrives at the same determination. For example, “controlling the display of a video
`game based on a received selection of panel information” is not similar to any
`claim limitations concerning “hedging” or “mitigating risk,” which were held to be
`fundamental economic practices in Alice and Bilski, respectively. Similarly, the
`claims at issue in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)
`included limitations concerning “creating a contractual relationship—a ‘transaction
`performance guaranty,” and the claims at issue in In re Comiskey, 554 F.3d 967
`(Fed. Cir. 2009) included limitations concerning “resolving a legal dispute between
`two parties by the decision of a human arbitrator.” Again, “controlling the display
`of a video game based on a received selection of panel information” is not similar
`to any claim limitations in those cases.
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`Additionally, the claims at issue in Interval Licensing LLC, v. AOL, Inc., 896
`F.3d 1335, 1344 (Fed. Cir. 2018) included limitations concerning “the
`nontechnical human activity of passing a note to a person who is in the middle of a
`meeting or conversation,” the claims at issue in Voter Verified, Inc. v. Election
`Systems & Software LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) included
`limitations concerning “voting, verifying the vote, and submitting the vote for
`tabulation,” and In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) included
`limitations concerning “rules for conducting a wagering game.” Of those cases,
`the limitations in In re Smith come the closest to “controlling the display of a video
`game based on a received selection of panel information.” A closer examination of
`representative claim 1 at issue in In re Smith, however, includes, at best, some
`limitations that may be similar to “based on stored panel information,” such as “the
`dealer examining respective hands . . . ,” but nothing analogous to “controlling the
`display of a video game.”
`Finally, Petitioner did not assert adequately that “controlling the display of a
`video game based on a received selection of panel information” is a mental
`process, in that Petitioner does not argue that “controlling the display of a video
`game based on a received selection of panel information” involves “concepts
`performed in the human mind (including an observation, evaluation, judgment,
`opinion).” Guidance, 84 Fed. Reg. at 52. Our own analysis comes to the same
`determination. To be sure, we are mindful that the Guidance says the following:
`“If a claim, under its broadest reasonable interpretation, covers performance in the
`mind but for the recitation of generic computer components, then it is still in the
`mental processes category unless the claim cannot practically be performed in the
`mind.” 84 Fed. Reg. at 52 n.14. To that end, if the concept at issue was
`“controlling the display of a . . . game based on a received selection of panel
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`15
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`Patent 9,770,659 B2
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`information,” that could possibly be considered an observation, i.e., the game itself
`can be observed, and it can be displayed using a generic computer component,
`such as a monitor. We find, however, that controlling a “video game” itself is not
`something that can “practically be performed in the mind,” with generic computer
`components or otherwise. A review of the claims at issue in the Supreme Court
`and Federal Circuit precedent cited at footnotes 14 and 15 of the Guidance further
`support our determination.
`Our analysis is the same for independent claims 14 and 15, as well as
`dependent claims 2–13. Petitioner has not met its burden of showing how it’s
`explicit characterization, in the Petition, of what the claims are directed to,
`“controlling the display of a video game based on a received selection of panel
`information,” falls within any of “mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic practice, or mental
`processes.”
`
`Whether a “Way of Managing a Game and
`f.
`Playing a Game” Is Directed to an Abstract Idea
`i. Whether this Argument Should Be Considered
`In its Reply, Petitioner asserts that the claims are directed to a “way of
`managing a game and playing a game,” which is nothing more than one of certain
`methods of organizing human activity under several Federal Circuit cases,
`including In re Smith. Pet. Reply 11–12. Under the Guidance, certain methods of
`organizing human activity are an abstract idea. 84 Fed. Reg. at 52. Indeed, as
`indicated above, the Guidance explicitly cites In re Smith as an example of claims
`reciting one of certain methods of organizing human activity, and characterizes In
`re Smith as follows: “In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding
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`Patent 9,770,659 B2
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`that ‘‘[a]pplicants’ claims, directed to rules for conducting a wagering game’’ are
`abstract).” 84 Fed. Reg. at 52 n.13.
`In its Sur-Reply, Patent Owner asserts that this is a new argument, in that
`Petitioner did not advance this line of reasoning in its Petition. PO Sur-Reply 1.
`We agree that this line of reasoning was not explicitly advanced by Petitioner in its
`Petition.3
`
`
`3 Although not dispositive, the assertion does have some basis in the Petition.
`Specifically, the first substantive paragraph of the DESCRIPTION OF THE ’659
`PATENT portion of the Petition reads as follows:
`The ’659 patent is directed to the idea of controlling a video game
`display based on a received selection of panel information. The
`specification describes a game program, a game processing method,
`and an information processing apparatus that controls a game in which
`two characters battle against one another. Each describes the same
`series of generalized steps: a data storage step, a panel selection step, a
`panel layout step, a screen display control step, and an emphasized
`display step. Id. at 6:20-43. These steps, shown in Figure 1 below,
`purport to provide a user of the battle video game with “a high visual
`effect” by displaying a video game based on information in panels
`possessed by the characters. See Ex. 1001, 1:47-50.
`Pet. 3–4 (emphasis added; footnote omitted). The first and last sentences are about
`“controlling a video game display based on a received selection of panel
`information,” which was analyzed above. The third sentence foreshadows the bulk
`of the Petition’s later arguments about generic functional claiming. The second
`sentence, however, is undisputedly about a game itself. This is reflected later in
`the first substantive paragraph of argument, as follows:
`The ’659 patent contains 15 claims. Claims 1, 14, and 15 are
`indep