Trials@uspto.gov
`571-272-7822
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`
`
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`Paper No. 36
`Entered: September 23, 2019
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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 PGR2018-00055
`Patent 9,687,744 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and CARL M.
`DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`PGR2018-00055
`Patent 9,687,744 B2
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`
`I.
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant
`review of claims 1–12 of U.S. Patent No. 9,687,744 B2 (“the ’744 patent”)
`(Ex. 1001) pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 10.
`On September 25, 2018, we issued a Decision ordering that “pursuant
`to 35 U.S.C. § 324, a post-grant review is hereby instituted for claims 1–12
`of the ’744 patent with respect to all grounds set forth in the Petition.” Paper
`11, 24, “Dec.” After institution, Patent Owner filed a Patent Owner’s
`Response (Paper 14, “PO Resp.”) and a Patent Owner’s Contingent Motion
`to Amend (Paper 15, “PO MTA”). Thereafter, Petitioner filed a Petitioner’s
`Reply to Patent Owner’s Response (Paper 23, “Pet. Reply”) and a
`Petitioner’s Opposition to Motion to Amend (Paper 24, “Pet. Opp. to
`MTA”). Patent Owner then filed a Patent Owner’s Sur-Reply (Paper 27,
`“PO Sur-Reply”) and a Patent Owner’s Reply to Opposition to Motion to
`Amend (Paper 26, “PO Reply to Opp. to MTA”). Petitioner subsequently
`filed a Petitioner’s Sur-Reply to Opposition to Patent Owner’s Motion to
`Amend (Paper 29, “Pet. Sur-Reply to Opp. to MTA”). Patent Owner and
`Petitioner presented oral arguments on June 27, 2019.
`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 1–12 of the ’744 patent are patent ineligible. We
`further determine that Petitioner has met its burden by showing, by a
`preponderance of the evidence, that the proposed amended claims are also
`patent ineligible.
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`PGR2018-00055
`Patent 9,687,744 B2
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`
`The ’744 patent relates generally to improvement of a video battle
`game by:
`providing a battle game between groups, which are composed of
`characters operated by players through client devices . . . wherein
`a server device stor[es], for each character, a parameter which
`serves as an indicator for developing the battle game between the
`groups: calculates a difference in the parameter between two
`characters belonging to the same group . . . and performs
`presentation processing [for] increasing an effect of attack by the
`group according to the difference in the parameter.
`Ex. 1001, 1:65–2:8.
`
`The ’744 patent explains that in a battle game, in order “[f]or a
`plurality of players to make successive attacks in cooperation with each
`other, the players need to be proficient in the battle game to a certain extent,
`and there is hardly any scene where inexperienced players can play active
`parts.” Id. at 1:53–57. Consequently, “inexperienced players are not
`sufficiently motivated to participate in the battle game.” Id. at 1:58–60.
`According to the ’744 patent, this problem is solved by the operations
`outlined supra. Id. at 1:64–65. These operations are illustrated by the
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`PGR2018-00055
`Patent 9,687,744 B2
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`flowchart shown in Figure 6 reproduced below:
`
`
`Figure 6 “is flowchart showing flow of ‘combo’ presentation processing
`according to the embodiment.” Id. at 2:31–32. As shown in Figure 6:
`When the presentation processing module 41 detects successive
`attacks by two characters belonging to the same group (step 101:
`YES), the presentation processing module 41 calculates the
`difference in the parameter 50 between the two characters
`successive in the attack order (step 102), and performs
`presentation processing of increasing the effect of attack by the
`group according to the difference in the parameter 50 (step 103).
`Id. at 6:49–56 (emphasis omitted).
`
`Related Matters
`A.
`The parties state that there are no related matters. Pet. 1; Paper 5, i–ii.
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`PGR2018-00055
`Patent 9,687,744 B2
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`
`Illustrative Claim
`B.
`Claims 1, 5, and 9 are independent. Illustrative claim 1 is reproduced
`
`below:
`1.
`A method for providing a battle game to each of a plurality
`of client devices via a network, comprising:
`storing, by a server device, for each of a plurality of
`characters, a parameter that serves as an indicator for developing
`the battle game; and
`controlling, by a processor of the server device, an effect
`of attack by a group, according to a difference in the parameter
`between two characters belonging to the same group and
`successive in attack order and to a number of attacks within a
`predetermined time by any characters in the group.
`Ex. 1001, 7:54–64.
`
`Additionally, independent claims 5 and 9 are directed to a method and
`system, respectively. Id. at 8:12, 8:40. Each independent claim recites, with
`some variation, limitations directed to a network storing a parameter for
`each character and controlling an effect of an attack based on a difference in
`parameter between two characters. See id. at 7:54–65, 8:12–24, 8:40–54.
`C.
`The Alleged Grounds of Unpatentability
`The Petition asserts that claims 1–12 of the ’744 patent are
`unpatentable as being directed to non-statutory subject matter under 35
`U.S.C. § 101 (Pet. 23–51), lacking adequate written description under 35
`U.S.C. § 112(a) (Pet. 51–63), and being indefinite under 35 U.S.C. § 112(b)
`(Pet. 63–68).
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`PGR2018-00055
`Patent 9,687,744 B2
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`
`Eligibility of Patent for Post-Grant Review
`D.
`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 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 June 27, 2017, issue date of the ’744 patent. Pet. 2. Further,
`the ’744 patent was filed on August 30, 2016, and claims priority to U.S.
`Patent No. 9,457,279 filed on June 19, 2014. Id. at 10; Ex. 1001, at codes
`(22), (63). 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 ’744
`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 1–12 of the ’744 patent are
`unpatentable.
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`
`Claim Construction
`A.
`As a step in our analysis, 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) (“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. 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) (2017); 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., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
`Petitioner asserts that the claim terms “parameter” and “controlling
`. . . an effect of [an] attack” should be construed. Pet. 21–23. Patent Owner
`disagrees. PO Resp. 15–18. Construction of these terms, however, is not
`required for our determination that claims 1–12 of the ’744 patent are
`directed to ineligible subject matter, are properly supported by the
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`Specification, and are not indefinite for the reasons discussed below.
`Accordingly, we see no need for an express claim construction of
`“parameter” or “controlling . . . an effect of [an] attack.” See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“[W]e need only construe terms ‘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))).
`
`
`Claims 1–12 as Directed to Patent-
`B.
`Ineligible Subject Matter Under 35 U.S.C. § 101
`Petitioner contends that claims 1–12 do not recite patent-eligible
`subject matter under 35 U.S.C. § 101. Pet. 23–51 (citing Exs. 1001, 1002,
`1004–1007); Pet. Reply 3–19 (citing Exs. 1001, 1011, 1012, 2002, 2019).
`Patent Owner disagrees. PO Resp. 18–55 (citing Exs. 1001, 2002); PO Sur-
`Reply 2–23 (citing Exs. 1001, 1011, 2002, 2006–2008).
`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. v. CLS Bank Int’l, 573 U.S. 208,
`216 (2014).
`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,
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`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 (1853))); 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 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
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`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 the Patent Owner’s Response, but
`before the filing of the 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)–
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`(h)). 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 Claims Are Directed to an Abstract Idea
`a. Application of the Guidance
`As discussed above in Part II.B.1, the Guidance issued after the
`filing of the Petition and Patent Owner’s Response, but before the
`filing of the Petitioner’s Reply and Patent Owner’s Sur-Reply. In its
`Reply, Petitioner applies the Guidance. See, e.g., Pet. Reply 4–5.
`Patent Owner addresses the Guidance in its Sur-Reply. PO Sur-Reply
`3–8. Both Patent Owner and Petitioner addressed the Guidance
`during oral arguments. See generally Paper 34 (“Tr.”). Accordingly,
`both Parties had ample opportunity to address the Guidance, and we
`see no prejudice to either Party in our application of the Guidance.
`Having established that the Guidance applies to the subject-
`matter eligibility issues in the proceeding, we consider Petitioner’s
`assertions under the Guidance and Patent Owner’s response thereto.2
`
`
`2 We agree with Patent Owner that in most circumstances, we should not
`consider arguments that were not raised in the Petition. PO Sur-Reply 2. In
`this instance, however, Petitioner’s new arguments are made in response to
`the issuance of the Guidance and Patent Owner’s Response, which explicitly
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`In the interest of brevity, and as these issues are dispositive, we limit
`our discussion to those issues.
`b. Whether “Controlling an Effect of Attack According to a
`Difference in Parameter Value Between Two Characters and to
`a Number of Attacks within a Predetermined Time” is an
`Abstract Idea
`For the convenience of the reader, we reproduce claim 1 again below:
`1.
`A method for providing a battle game to each of a plurality
`of client devices via a network, comprising:
`storing, by a server device, for each of a plurality of
`characters, a parameter that serves as an indicator for developing
`the battle game; and
`controlling, by a processor of the server device, an effect
`of attack by a group, according to a difference in the parameter
`between two characters belonging to the same group and
`successive in attack order and to a number of attacks within a
`predetermined time by any characters in the group.
`Ex. 1001, 7:54–64. In its response to this challenge, Patent Owner
`essentially confines its arguments to claim 1 and does not separately
`address claims 2–12.3 See generally PO Sur-Reply. Regarding the
`independent claims, Petitioner, likewise, essentially confines its
`
`argues that the claims do not fall within any of the categories (i.e.,
`mathematical concept, method of organizing human activity, or mental
`processes) set forth in the Guidance. PO Resp. 24. Accordingly, it is
`appropriate for us to consider Petitioner’s arguments that the claims recite
`either a mathematical process or certain methods of organizing human
`activity which are patent ineligible. We further note that during the oral
`arguments, Patent Owner conceded that it had the opportunity to address
`these arguments in its Sur-Reply. Tr. 21:1–22:2.
`3 Patent Owner refers to claim 4 as an example on pages 5 and 19 of its Sur-
`Reply and briefly mentions the dependent claims as a group on pages 19 and
`21, but does not present arguments that substantially differ from the
`arguments presented for claim 1. PO Sur-Reply 5, 19, 21.
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`Patent 9,687,744 B2
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`arguments to claim 1. Pet. Reply 3–13. Although Petitioner
`separately addresses the dependent claims, it essentially repeats the
`same arguments presented for claim 1. Id. at 14–15. Thus, we
`understand that both Patent Owner and Petitioner consider claim 1 to
`be representative of claims 2–12 for this challenge. Accordingly, we
`do so as well.
`
`Mathematical Concepts
`i.
`Petitioner asserts that “the challenged claims are directed to . . . a
`‘purely mathematical concept.’” Pet. Reply 4. In support, Petitioner
`contends that claim 1 recites “a mathematical function in which the control
`of an effect of attack ‘is a function of’ two data inputs: ‘(1) the difference in
`parameters for each player-character in a combo, and (2) the number of
`attacks executed by the player-characters within a predetermined time
`frame.’” Id. (citing Ex. 1011, 75:20–22; PO Resp. 27). Patent Owner
`disagrees, asserting that the limitations “between two characters belonging
`to the same group and successive in attack order” and “within a
`predetermined time by any characters in the group” are not mathematical.
`PO Sur-Reply 5.
`During oral argument, Petitioner suggested that the claimed
`parameters are numerical values. Tr. 6:13–8:11. With this suggestion in
`mind, Petitioner argued that the claimed difference in parameters is a
`mathematical function. Id. at 8:14–23. Specifically, when queried as to how
`the claimed limitations could be expressed as a mathematical calculation,
`Petitioner explained that “there are two things that go into this, the
`difference, one is the difference in the parameters, whatever those are,
`between two characters who are going to attack successively, and the second
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`is a number of attacks within a predetermined time by any characters in the
`group.” Id. at 8:14–18. Petitioner explained further that
`there are some references in the specification to P delta 1, you
`know, and so you have the delta between parameter one and
`parameter one, you know, the first player and the second player.
`You know, there is a difference between those, so it’s a
`parameter of player one, minus parameter of player two perhaps,
`would be one way to, I think, implement what the claims appear
`to be talking about.
`Id. at 9:2–7.
`
`Patent Owner disagrees. Tr. 36:14–37:9. According to Patent Owner,
`the limitation “according to a difference in the parameters between two
`characters” is “a math sort of step but it’s not directed to a mathematical
`concept, it doesn’t have the formula in it. It’s not the sort of example that
`the Federal Circuit or the Patent Office looks at as a mathematical concept.”
`Id. at 37:7–9.
`
`On the record before us, we determine that Petitioner has not shown
`adequately that the limitations at issue are mathematical concepts. Rather,
`we agree with Patent Owner that these limitations—although math related—
`are not the kind of mathematical relationships, mathematical formulas or
`equations, or mathematical calculations found by the Federal Circuit to be
`patent ineligible. Guidance, 84 Fed. Reg. at 52 n.12. Accordingly, we
`determine that claims 1–12 are not drawn to mathematical concepts.
`ii.
`Certain Methods of Organizing Human Activity
`Petitioner asserts that the challenged claims are directed to “a ‘method
`of organizing human activity.’” Pet. Reply 4. Specifically, Petitioner
`contends that the claims at issue are similar to those in Planet Bingo, LLC v.
`VKGS LLC, 576 F. App’x 1005, 1007–08 (Fed. Cir. 2014), In re Smith, 815
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`F.3d 816, 819 (Fed. Cir. 2016), and In re Marco Guldenaar Holding B.V.,
`911 F.3d 1157 (Fed. Cir. 2018). Id. at 5. According to Petitioner, “the ’744
`[patent] broadly recites a rule for a battle video game (described by PO as a
`‘game mechanic’), in which the effect of attack is controlled ‘according to’
`the difference in parameters for each player-character in a combo and the
`number of attacks within a predetermined time frame.” Id. (citing Ex. 1001,
`7:59–64; PO Resp. 3, 27 (describing the recited “cooperative game
`mechanic,” in which the recited “rules” control the effect of attack)). For
`this part of its challenge, Petitioner addresses independent claims 1, 5, and 9
`together. Pet. Reply 3–11.
`Patent Owner responds by comparing claim 1 to the claims found to
`be patent eligible in Core Wireless4, DDR Holdings5, and McRO6. PO Sur-
`Reply 8–14, 16. Patent Owner does not separately address independent
`claims 5 and 9 for these arguments or the arguments that follow. Id. at 8–17.
`Accordingly, we understand Patent Owner’s Response to apply to
`independent claims 5 and 9 as well.
`For Core Wireless, Patent Owner contends that the limitation “storing,
`by a server device, for each of a plurality of characters, a parameter that
`serves as an indicator for developing the battle game” is similar to the
`limitation “a display screen, the computing device being configured to
`display on the screen a main menu listing at least a first application, . . . and
`
`
`4 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed.
`Cir. 2018).
`5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
`6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
`Cir. 2016).
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`additionally being configured to display on the screen an application
`summary window that can be reached directly from the main menu” at issue
`in that case. PO Sur-Reply 8, 28;7 see also Ex. 1001, 7:56–58. Patent
`Owner further contends that the limitation “controlling, by a processor of the
`server device, an effect of attack by a group” is similar to the limitation
`“wherein the application summary window displays a limited list of at least
`one function offered within the first application” at issue in Core Wireless,
`and the limitation “according to a difference in the parameter between two
`characters belonging to the same group and successive in attack order” is
`similar to the limitation “each function in the list being selectable to launch
`the first application and initiate the selected function.” Id. at 8–9, 28; see
`also Ex. 1001, 7:57–62.
`Patent Owner explains:
`Challenged claim limitation [1a] is analogous to the
`display function in Core Wireless—while the display is
`configured to present information in a certain format, claim 1
`stores parameters in a certain format that serves as an indicator
`for developing the game. Limitation [1b] is analogous to the
`application summary window because both limitations impose
`conditions on what is being displayed or controlled—controlling
`an effect of attack when it is performed by a group of characters,
`or displaying a limited list of at least one function so long as it is
`offered within the application. Limitations [1c] and [1d] are
`analogous to the last limitations in Core Wireless because they
`impose an additional restriction on how something is displayed
`or controlled—an effect controlled according to a difference in
`
`
`7 Page 28 is Appendix A of Patent Owner’s Sur-Reply, which is a table
`labeling each limitation of claim 1 as referenced throughout this document.
`PO Sur-Reply 28 (App’x A). For ease of comparison, we reproduce each
`limitation of claim 1 as referenced by Patent Owner.
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`parameters and the number of attacks in a predetermined time,
`and a summary window being displayed while the application is
`un-launched. Although the terminology differs, the level of
`detail the two claims recite is the same.
`PO Sur-Reply 9–10.8
`In its Reply, Petitioner asserts:
`In Core Wireless the claims recited an improved user
`interface for computing devices with small screens. The court
`determined that the patent improved the “efficient functioning of
`a computer,” by increasing how quickly a user could navigate
`through several views on a display through its “particular manner
`of summarizing and presenting information in electronic
`devices.” Id. The claims were not abstract because they recited
`specific implementation details of the graphical user interface
`including specific graphical characteristics, a limited set of
`displayed data, and specific requirements for the state of the
`device applications.
`Pet. Reply 6–7 (citations and parenthetical information omitted).
`We agree with Patent Owner that the level of technical specificity of
`the claims in Core Wireless is commensurate in scope with that recited in
`independent claim 1. That assertion is not dispositive, however, because the
`claims in Core Wireless recite certain aspects not present here, specifically,
`an improved user interface. Patent Owner agrees that “[i]n Core Wireless,
`the Federal Circuit found the claim ‘[] improved user interface for
`computing devices.’” PO Sur-Reply 10 (citing Core Wireless, 880 F.3d at
`1362). Accordingly, we compare the claims at issue in this proceeding with
`those in Core Wireless with this distinction in mind.
`The above limitations cited by Patent Owner are instructive on this
`point. For example, one limitation identified by Patent Owner from the
`
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`8 See supra note 5.
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`claim in Core Wireless is “an application summary window that can be
`reached directly from the main menu.” PO Sur-Reply 8. We are persuaded
`that this is a limitation specific to an “improved user interface,” in that it
`defines how the menu of the improved user interface is structured, and how
`a user would interact with that interface to reach the application summary.
`By contrast, the analogous limitation, identified by Patent Owner from
`independent claim 1, is “storing, by a server device, for each of a plurality of
`characters, a parameter that serves as an indicator for developing the battle
`game.” Id. at 8, 28. In this limitation, there is no interaction recited between
`the user and an interface; the parameters are merely stored.
`Indeed, none of the limitations in claim 1, or in any of the claims at
`issue, pertain to a user interface. Rather, they all recite limitations pertaining
`to the operation of a processor on either a server device or a client device.
`See Ex. 1001, 7:54–9:2. Accordingly, we are persuaded that the claims at
`issue in this proceeding are not similar to those found to be patent eligible in
`Core Wireless.
`Also relying on Core Wireless, Patent Owner asserts that “[f]irst, like
`the challenged claims, the Core Wireless claim was performable on general
`purpose hardware—mobile phones. Second, like the challenged claims, the
`Core Wireless claim uses active language.” PO Sur-Reply 9 (citations
`omitted). That is certainly correct. It is also not dispositive for all the
`reasons set forth above.
`Turning to DDR Holdings, we agree with Petitioner that “[i]n DDR,
`the patent survived because it recited a specific way to automate the creation
`of a composite web page, and therefore ‘provided a solution necessarily
`rooted in computer technology in order to overcome a problem specifically
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`arising in computer networks.’” Pet. Reply 7 (citing DDR Holdings, 773
`F.3d at 1259). Accordingly, we compare the claims at issue in this
`proceeding with those in DDR Holdings with this in mind.
`Patent Owner contends that “the problems solved by the claims of the
`’744 patent are technical problems that only arise in the context of
`multiplayer online battle games.” PO Resp. 21 (citing Ex. 2002 ¶ 22).
`According to Patent Owner, “[j]ust as the claim in DDR solved the
`‘challenge of retaining control over the attention of the customer in the
`context of the Internet,’ claim 1 solves the challenge of increasing novice
`players’ motivation to participate in the game by reducing technical barriers
`to accessibility.” PO Sur-Reply 13.
`Petitioner asserts that the ’744 patent “recites no improvement to user
`interfaces or computer functionality. Rather, the specification states that the
`goal of the patent is social or behavioral in nature. It states that prior art
`battle games incentivized experienced players to form groups together,
`which discouraged novices from joining or continuing with the game.” Pet.
`Reply 7 (citing Ex. 1001, 1:53–60). According to Petitioner, Patent Owner’s
`expert, Mr. Crane, “described this ‘barrier’ as a social or behavioral
`problem: ‘[T]here are barriers in these social games to newbies. They don’t
`get to be invited by the cool kids. They don’t get invited to guilds with more
`experienced players.’” Id. (citing Ex. 1011, 30:7–10).
`We agree with Petitioner that the solution identified by Patent
`Owner—solving “the challenge of increasing novice players’ motivation to
`participate in the game by reducing technical barriers to accessibility”—is
`not a solution necessarily rooted in computer technology to overcome a
`problem specifically arising in computer networks. PO Sur-Reply 13. As
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`asserted by Petitioner, ‘“[m]otivation’ is not a technical problem; [it’s] a
`social, business, or mental problem.” Pet. Reply 8 (citing Dec. 12). Rather,
`as “PO’s expert admit