Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper No. 17
`Date: September 18, 2018
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`
`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.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant review of
`
`I.
`
`claims 1–15 of U.S. Patent No. 9,770,659 B2 (“the ’659 patent”) (Ex. 1001)
`
`pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 15. We have jurisdiction under 35
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`PGR2018-00047
`Patent 9,770,659 B2
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`U.S.C. § 324(a), which provides that a post-grant review may be instituted only if
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`“the information presented in the petition . . . demonstrate[s] that it is more likely
`
`than not that at least 1 of the claims challenged in the petition is unpatentable.”
`
`Petitioner challenges the patentability of claims 1–15 of the ’659 patent
`
`under 35 U.S.C. §§ 101, 112(a), and 112(b). After considering the Petition and the
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`Preliminary Response, as well as all supporting evidence, we are persuaded that it
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`is more likely than not that Petitioner would prevail in showing that at least one of
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`the challenged claims is unpatentable under § 101.
`
`Applying the standard set forth in 35 U.S.C. § 324(a), we institute a post-
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`grant review of claims 1–15 of the ’659 patent.
`
`A.
`
`The ’659 patent
`
`The ’659 patent relates generally to a method of displaying a battle scene for
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`a computer game in which users do battle against each other using cards or
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`“panels” collected in the game. Ex. 1001, 1:33–46, 5:28–32. The ’659 patent
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`states that a card game system in which “the user configures a deck with cards used
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`in a play which is selected from a plurality of cards that the user owns, and plays a
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`rock-paper-scissors game or the like with an opponent using the deck . . . is
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`familiar to many users today.” Ex. 1001, 1:38–42. According to the ’659 patent,
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`“since the use of a two-dimensional card in the battle scene is sometimes boring,
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`there have been calls for improvement.” Ex. 1001, 1:44–46. To address this
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`problem, the ’659 patent describes consecutively emphasizing panels when
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`displaying the battle scene, so that the battle proceeds in a cartoon or movie-like
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`format, thus giving the user an improved visual effect. Ex. 1001, 7:45–55, 8:46-
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`48, 8:65–9:2.
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`2
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`PGR2018-00047
`Patent 9,770,659 B2
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`B.
`
`Related Matters
`
`Petitioner identifies the following matter: GREE, Inc. v. Supercell K.K.,
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`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.
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`Application Ser. No. 14/291,358, which claims the benefit of Japanese Patent
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`Application No. 2013-116039, which published as JP 6,125,128. Pet. 1; see
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`Ex. 1001, (63), (30). Patent Owner identifies PGR2018-00029 as involving U.S.
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`Patent No. 9,636,583 B2, which is related to the ’659 patent. Paper 4, i.
`
`C.
`
`Illustrative Claim
`
`Claims 1–15 are pending and challenged, of which claims 1, 14 and 15 are
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`independent. Independent claim 1, which is representative, is reproduced below:
`
`A non-transitory computer readable recording medium storing
`1.
`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
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`on the basis of the selection received by the panel selection function;
`and
`
`a screen display control function of controlling the game display
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`screen on a screen display unit on the basis of information regarding
`the layout by the panel layout function and layout of the panel in the
`divisions by the second user, wherein
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`the panel layout function disposes the panel received by the panel
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`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
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`Patent 9,770,659 B2
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`disposed in the target division, and the panel indicating the character is
`displayed as an animation when being disposed in the target division.
`
`D.
`
`The Alleged Grounds of Unpatentability
`
`The Petition asserts that claims 1–15 of the ’659 patent are unpatentable as
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`being directed to non-statutory subject matter under 35 U.S.C. § 101 (Pet. 16–38),
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`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).
`
`E.
`
`Eligibility of Patent for Post-Grant Review
`
`The post-grant review provisions of the Leahy-Smith America Invents Act
`
`(“AIA”)1 apply only to patents subject to the first inventor to file provisions of the
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`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions apply to
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`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
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`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
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`patent was filed on Dec. 27, 2016, and claims benefit of several priority dates, the
`
`earliest of which is May 31, 2013. Ex. 1001, (22), (30). On this record, we agree
`
`with Petitioner that the ’659 patent is eligible for post-grant review.
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`Patent 9,770,659 B2
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`II. ANALYSIS
`
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
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`whether Petitioner has met the threshold standard, under 35 U.S.C. § 324(a), for
`
`instituting review.
`
`A.
`
`Claim Construction
`
`As a step in our analysis for determining whether to institute a review, we
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`determine the meaning of the claims for purposes of this Decision. In a post-grant
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`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. 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.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002). We determine that it is unnecessary to
`
`expressly construe any claim terms at this time.
`
`B.
`
`Claims 1–15 as Directed to Non-Statutory 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. Prelim. Resp. 10–37 (citing Exs. 1001, 1005, 1006, 2002, 2004).
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`1.
`
`Relevant Law
`
`An invention is patent-eligible if it claims a “new and useful process,
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`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
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`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, 134 S. Ct. 2347, 2354 (2014).
`
`In determining whether a claim falls within the excluded category of abstract
`
`ideas, we are guided by the Supreme Court’s two-step framework, described in
`
`Alice and Mayo. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
`
`Labs., Inc., 132 S. Ct. 1289, 1296–97 (2012)). In accordance with that framework,
`
`we first determine whether the claim is “directed to” a patent-ineligible abstract
`
`idea. See Alice, 134 S. Ct. at 2356 (“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
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`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.”).
`
`Examples of concepts that constitute patent-ineligible abstract ideas include
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`fundamental economic practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at
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`611), mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)), and
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`basic tools of scientific and technological work (Gottschalk v. Benson, 409 U.S.
`
`63, 69 (1972)). Examples of concepts that constitute patent eligible subject matter
`
`include physical and chemical processes, such as curing rubber (Diamond v. Diehr,
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`450 U.S. 175, 184 n.7 (1981)) and “tanning, dyeing, making waterproof cloth,
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`vulcanizing India rubber, smelting ores,” and a process for manufacturing flour
`
`(Benson, 409 U.S. at 69).
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`If the claim is “directed to” a patent-ineligible abstract idea, we turn to the
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`second step of the Alice/Mayo framework and consider the elements of the claim,
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`both individually and as an ordered combination, to determine whether the
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`additional elements transform the nature of the claim into a patent-eligible
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`application of the abstract idea. Alice, 134 S. Ct. at 2355. This second step is a
`
`search for an “inventive concept”—an element or combination of elements
`
`sufficient to ensure that the claim amounts to “significantly more” than the abstract
`
`idea itself. Id.
`
`2. Whether the Claims Are Directed to an Abstract Idea
`
`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 the
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`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
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`the ’659 patent does not disclose any technical improvements to computers or
`
`video game technology. Pet. 25–26. 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 method for routing information, using “result-based functional language”
`
`without “sufficiently describ[ing] how to achieve th[o]se results in a non-abstract
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`way,” were determined to be directed to an abstract idea. See Pet. 24–28 (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, 574 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.
`
`In response, Patent Owner argues:
`
`The claims recite far more than the mere “functional results –
`receiving selection of a panel, disposing of the panel, and controlling
`display of the game screen” alleged by Petitioner. Pet. 25. As an
`example, element [1e] recites “the panel indicating the character is
`displayed as an animation when being disposed in the target
`division.” . . . Rather than merely “emphasizing panels in a video
`game—without specifying any ‘process or machinery’ by which those
`results would be achieved” as the petition asserts (Pet. 27), the claim
`provides the concrete detail on how panels are emphasized—displaying
`an animation for the panel indicating a character when that panel is
`disposed in the target division.
`
`Prelim. Resp. 28–29. Patent Owner argues further that all independent claims
`
`recite “panels,” and that Petitioner improperly removes features of those claims in
`
`in its analysis, especially given that it would exclude the preferred embodiment.
`
`Prelim. Resp. 29–30.
`
`We are persuaded by Petitioner that the claims are directed to “controlling
`
`the display of a video game based on a received selection of panel information,”
`
`and that they recite “only functional results – receiving selection of a panel,
`
`disposing of the panel, and controlling display of the game screen.” We are further
`
`persuaded that such a concept is sufficiently similar to “wirelessly communicating
`
`regional broadcast content,” as in Affinity Labs, and “routing information,” as in
`
`Two-Way Media, to also be considered abstract ideas, in that, like in Affinity Labs
`
`and Two-Way Media, the claims employ results-based functional language without
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`Patent 9,770,659 B2
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`reciting sufficiently specific means or technology for achieving those functional
`
`results. For example, claim 1 recites a “panel selection function” and a “panel
`
`layout function,” which collectively indicates disposing the panels on specific
`
`portions of the display on the basis of the selection received by the panel selection
`
`function, but does not indicate specific means or technology for carrying out either
`
`function, other than that it is performed by a general-purpose computer that
`
`executes instructions. Ex. 1001, 10:31–38.
`
`Patent Owner does identify a limitation of claim 1 related to both functions,
`
`namely, “the panel indicating the character is displayed as an animation when
`
`being disposed in the target division,” that it asserts has not been accounted for in
`
`the above formulation of what the claims are “directed to.” We agree that this
`
`limitation, as well as every other limitation, including those related to “panels,”
`
`must be considered in more detail at some point in the subject matter eligibility
`
`analysis. Here, however, we are only considering what claim 1 is “directed to.”
`
`To that end, as noted by Patent Owner, this limitation appears to be a particular
`
`implementation of “controlling the display of a video game based on a received
`
`selection of panel information.” Accordingly, we are persuaded that specific
`
`implementation of what claim 1 is “directed to” should not alter the formulation of
`
`what claim 1 as a whole is “directed to,” namely, “controlling the display of a
`
`video game based on a received selection of panel information,” and that the
`
`formulation of what the claim as a whole is “directed to” concerns “only functional
`
`results – receiving selection of a panel, disposing of the panel, and controlling
`
`display of the game screen.”
`
`Indeed, even when we consider the above limitation concerning “animation”
`
`in more detail, we are persuaded that even this recitation is still no more than a
`
`generalized step that does not amount to a sufficiently non-abstract description of
`
`9
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`Patent 9,770,659 B2
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`how the function is performed. See Two-Way Media, 574 F.3d at 1337 (“Claims
`
`directed to generalized steps to be performed on a computer using conventional
`
`computer activity are not patent eligible.”). In particular, the claim does not
`
`provide any guidance as to technical details as to how the character is displayed,
`
`what sort of animation is performed, or the technical significance of displaying it
`
`in a particular portion of a display. And as noted by Petitioner in later arguments
`
`concerning the second step of Alice and written description, at a minimum, the
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`entirety of the ’659 patent itself is also devoid of those details. Pet. 35–36, 46.
`
`Relatedly, Patent Owner asserts that “a person of ordinary skill in the art of the
`
`’659 patent would also understand that the independent claims capture the
`
`improved visual interface described by the ’659 patent.” Prelim. Resp. 30 (citing
`
`Ex. 1001, 7:27–29; Ex. 2002 ¶¶ 25–27, 29). At this time, we read Patent Owner as
`
`asserting an aesthetic benefit, as opposed to a technical one.2
`
`For similar reasons, we are persuaded that Petitioner has shown sufficiently,
`
`at this stage of the proceeding, that the claims of ’659 patent do not disclose
`
`technical improvements to computers or video game technology. As noted above,
`
`all the technical components recited in the claims appear to do no more than
`
`embody result-based functional language that does not indicate specific means or
`
`technology for carrying out that function. Relatedly, with respect to the specific
`
`“animation” limitation identified by Patent Owner, Petitioner asserts the following:
`
`
`2 At trial, the panel would be interested in briefing as to the level of technical
`specificity that is sufficient to take a function out of the realm of one that is so
`generalized it amounts to no more than saying “apply it” on a general-purpose
`computer, and where the above limitation falls on that spectrum. The panel would
`also be interested in briefing as to the relevance of an aesthetic benefit, as opposed
`to technical, how to differentiate between the two, and where a display with a
`particular arrangement falls on that spectrum.
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`That the claim recites a “panel indicating the character is
`displayed as an animation when being disposed in the target division”
`does not add to patentability. The panel information providing this
`indication is merely intended use, i.e., that the panel indicates that the
`character is to be animated when it is time for disposal. Further, unlike
`the claims in McRO, this limitation, and the claims as a whole, are not
`“focused on a specific asserted improvement in computer animation.”
`See McRO, 837 F.3d at 1315–16. Indeed, since the term “animation”
`only appears once in the specification, nothing inventive can be asserted
`about the use of the term in the claims.
`
`Pet. 35–36. At this juncture in the proceeding, and on this record, we are
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`persuaded that such generalized technical components and functions, both for the
`
`individual limitations and when considered as a whole, are not claimed in a manner
`
`that indicates a technical improvement to computers or video game technology.
`
`Furthermore, the Specification supports such a determination. For example,
`
`the Specification of the ’659 patent discloses that “[t]he game program can be
`
`executed in a server apparatus or a user terminal” and that the computer-readable
`
`recording medium on which the game program is recorded “is not particularly
`
`limited as long as the recording media can be read by the computer such as a CD-
`
`ROM and a DVD.” Ex. 1001, 6:6–23. The Specification further indicates that
`
`“the information processing apparatus 200 can be a server apparatus or a user
`
`terminal such as a mobile phone or a smart phone.” Ex. 1001, 7:18–22. Figure 2
`
`illustrates the information processing apparatus as functionally-labeled or
`
`technologically generic blocks such as “data storage unit,” “first panel database,”
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`“control unit,” “panel selection section,” and “panel layout section.” We are
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`persuaded that the ’659 patent discloses non-specific or generic, conventional
`
`components that lack any special features that are key to effecting the claimed
`
`functions, and, thus, does not appear to provide any technical improvements to
`
`computers or video game technology. See Trading Techs. Int’l, Inc. v. CQG, INC.,
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`675 F. App’x 1001, 1005 (Fed. Cir. 2017) (“ineligible claims generally lack steps
`
`or limitations specific to solution of a problem, or improvement in the functioning
`
`of technology.”); Affinity Labs, 838 F.3d at 1262 (“The patent in this case is not
`
`directed to the solution of a ‘technological problem’ . . .nor is it directed to an
`
`improvement in computer or network functionality. Instead, it claims the general
`
`concept of out-of-region delivery of broadcast content through the use of
`
`conventional devices, without offering any technological means of effecting that
`
`concept.”).
`
`Patent Owner disagrees with Petitioner’s characterization of the claims as
`
`being directed to any means of “controlling the display of a video game based on a
`
`received selection of panel information,” and asserts that the claims are directed
`
`rather to “a game program and a game processing method of a game that gives a
`
`user a high visual effect, and an information processing apparatus that controls the
`
`game. . . .” Prelim. Resp. 30. While different words are used, we are unable to
`
`ascertain a substantive difference between the two characterizations.
`
`Patent Owner asserts that, even under Petitioner’s characterization of the
`
`claims as being directed to “displaying a video game based on stored panel
`
`information,” the claims are not directed to an abstract idea because they are
`
`directed to a known problem associated with card games played on electronic
`
`devices—“the use of a two-dimensional card in the battle scene is sometimes
`
`boring, [and] there have been calls for improvement”—and provide a solution of a
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`“high visual effect” to improve the display of the card game system. Prelim. Resp.
`
`28 (citing Ex. 1001, 1:28–45). For example, Patent Owner cites Trading Techs., in
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`which “claims requir[ing] 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 resolves a specifically identified problem in the prior state
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`of the art” met the eligibility standards of Step 1 of the Alice/Mayo framework.
`
`Prelim. Resp. 27–28 (citing 675 F. App’x at 1004).
`
`We disagree with the parallel Patent Owner draws between the claims of the
`
`’659 patent and those found to have patent-eligible subject matter in Trading
`
`Techs. Although the ’659 patent discusses providing a “high visual effect”
`
`solution to address a known problem of “the use of a two-dimensional card in the
`
`battle scene [being] sometimes boring,” the result of Alice/Mayo Step 1 here differs
`
`from that in Trading Techs. Where the claims in Trading Techs. recited specific,
`
`structural details of the graphical user interface paired with each corresponding
`
`functionality directly related to the structure, the claims of the ’659 patent lack
`
`sufficient structural details of the screen display unit, or any other component of
`
`the game system, directly corresponding to any of the claimed functions.
`
`In light of the aforementioned assertions and evidence of record, we are
`
`persuaded that the claims of the ’659 patent are directed to an abstract idea.
`
`3. Whether the Claims Contain an “Inventive Concept”
`
`We next turn to second step of the Alice and Mayo framework. Here, we
`
`consider the elements of the claims “individually and ‘as an ordered combination’”
`
`to determine whether the additional elements “‘transform the nature of the claim’
`
`into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
`
`Ct. at 1291, 1297).
`
`In general, Petitioner asserts that the claims of the ’659 patent provide no
`
`inventive concept because “[a]ll the recited claim elements of the ’659 [patent]
`
`claims, tangible and otherwise, are conventional, generic and well understood.”
`
`Pet. 31–32. In other words, Petitioner asserts that, beyond the abstract idea, the
`
`claims recite only generic or functionally-named computer components that are
`
`fundamental tools of a computer and perform routine functions, such as a “server
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`apparatus,” “user terminal,” “data storage unit,” “control unit,” “display screen,”
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`and “screen display unit.” Pet. 32 (citing Ex. 1001, 10:49–67). Petitioner further
`
`argues that “the claimed steps of the ’659 patent, which are performed by generic
`
`computer hardware, are ‘well-understood, routine, conventional activities
`
`previously known to the industry,’ amounting to no more than ‘generic
`
`computer[s] perform[ing] generic computer functions.’” Pet. 33 (citing Alice, 134
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`S. Ct. at 2358–59). Petitioner cites Federal Circuit cases that have determined that
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`storing, transmitting, retrieving, writing, and displaying data are basic functions of
`
`generic computers that do not transform abstract ideas into patent-eligible subject
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`matter. Pet. 33–35 (citing Smartflash LLC v. Apple Inc., 680 F. App’x 977, 983
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`(Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
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`1363, 1370 (Fed. Cir. 2015); Affinity Labs, 838 F.3d at 1261). According to
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`Petitioner, “there is no commensurate technical disclosure for how those solutions
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`are to be achieved or any technical or programming advance suggested to achieve
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`the solutions.” Pet. 36.
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`Patent Owner makes several arguments in response, including asserting that
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`the Petition is facially deficient, and substantively arguing that the claimed use of
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`“panels” was previously unknown. On this record, we are persuaded by Petitioner.
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`Patent Owner asserts that the Petition is deficient because it fails to
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`adequately address all of the limitations of claim 1, both individually and as an
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`ordered combination. Prelim. Resp. 15–18. For example, Patent Owner argues
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`that Petitioner simply discusses “panel selection function” while failing to analyze
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`in their entirety the limitations “a panel selection function of receiving a selection
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`by the first user, the selection being for one or more panels indicating characters to
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`be disposed in one or more divisions of a game display screen including a display
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`region formed by the divisions,”3 and “indicating the character is displayed as an
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`animation when being disposed in the target division.” Prelim. Resp. 17–18. We
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`have evaluated the arguments and evidence set forth in the Petition, and disagree
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`with Patent Owner on this point. We are persuaded that Petitioner addresses
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`sufficiently the elements of claim 1, including the aforementioned “panel
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`selection” limitations, in that Petitioner specifically addresses the “panel selection
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`function” as a whole. See Pet. 33–35.
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`In particular, Petitioner asserts that independent claim 1 fails to provide an
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`inventive concept because it recites a “panel selection function,” along with a
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`“panel layout function” and “screen display control function, all of which “are no
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`more inventive than receiving a selection of panels and executing the selection to
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`dispose of the panels, functions the Federal Circuit routinely finds cannot supply
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`an inventive concept.” Pet. 33–34 (citing Smartflash, 680 F. App’x 983).
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`Petitioner asserts that these claim elements are “conventional computer methods to
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`provide functionally-claimed solutions” with “no commensurate technical
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`disclosure for how those solutions are to be achieved or any technical or
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`programming advance suggested to achieve the solutions.” Pet. 36. We view
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`Petitioner’s discussion of the “panel selection function” as also addressing the
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`limitations that follow that are related to “panel selection function” in claim 1, such
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`as “indicating the character is displayed as an animation when being disposed in
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`the target division.”
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`3 Patent Owner asserts that Petitioner failed to explain how these limitations are
`“either abstract or well-understood, routine, or conventional.” Prelim. Resp. 17.
`Our analysis of these limitations is the same regardless of whether Patent Owner’s
`assertion is made with respect to Alice/Mayo Step 1 or Step 2, or both.
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`We acknowledge, however, that this limitation in particular is more difficult
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`to evaluate, in that it does appear to recite a specific method of indicating that the
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`“panel selection function” has been fulfilled. At this point in the proceeding, and
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`on this record, however, we are persuaded by Petitioner’s argument that the fact
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`that there is no commensurate technical disclosure for how the functions of those
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`limitations are to be achieved weighs against the limitations being “significantly
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`more.” Pet. 35–36. More specifically, “indicating the character is displayed as an
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`animation when being disposed in the target division,” while more specific, is still
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`merely a function devoid of technical specifics as to how this is to be achieved,
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`other than, essentially, a presumption that a programmer of ordinary skill would
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`have known how to do it. The parties are invited to provide further briefing on this
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`issue. Overall, however, we are persuaded that Petitioner has considered
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`sufficiently the “panel selection function” and related limitations in claim 1, and
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`has also addressed adequately all the elements of claim 1 individually and as an
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`ordered combination.
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`Patent Owner further asserts that claim 1 is not representative of the
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`dependent claims, because the dependent claims “recite unique limitations not
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`found in claim 1 that separately bear on the question of patent eligibility” (Prelim.
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`Resp. 13–14), and that Petitioner fails to analyze sufficiently all the limitations of
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`the dependent claims (Prelim. Resp. 18–19).4 We disagree and determine, at this
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`point in the proceeding, treating claim 1 as representative is appropriate, as the
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`dependent claims further narrow claim 1 and, like claim 1, are directed to
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`“controlling the display of a video game based on a received selection of panel
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`information.”
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`4 Our analysis is the same regardless of whether Patent Owner’s assertion is made
`with respect to Alice/Mayo Step 1 or Step 2, or both.
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`Furthermore, Petitioner does address the dependent claims, arguing that they
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`do not provide an inventive concept because they are variations within the abstract
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`concept of the independent claims, and add nothing more than extra-solution
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`activity. Pet. 36–38. For example, Petitioner discusses that claims 8–13 “append
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`ordinary game concepts to the claimed method” or “vary how the panels are
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`arranged or displayed,” and are “nothing more than obvious choices to be made
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`within the abstract concept provided by the independent claims.” Pet. 30 (citing
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`Affinity Labs, 838 F.3d at 1264). Petitioner discusses that dependent claims 2–3
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`and 5–7 (reciting a “division execution function”) contain insignificant post-
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`solution steps. Pet. 37–38.
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`As admitted by Petitioner, however, “a few dependent claims recite
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`examples of enhanced visual effects noted in the specification.” Pet. 30. Petitioner
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`asserts that, under Berkheimer, these limita