Trials@uspto.gov
`571-272-7822
`
` Paper 11
`
`Entered: September 25, 2018
`
`
`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.
`
`
`
`DECISION
`Granting Institution of Post-grant Review
`35 U.S.C. § 324(a)
`
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`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
`
`
`571-272-7822
`
` Paper 11
`
`Entered: September 25, 2018
`
`
`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.
`
`
`
`DECISION
`Granting Institution of Post-grant Review
`35 U.S.C. § 324(a)
`
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`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
`
`
`
`PGR2018-00055
`Patent 9,687,744 B2
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`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 10. We
`
`have jurisdiction under 35 U.S.C. § 324, which provides that a post-grant
`
`review may be instituted only if “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 1–12 of the ’744
`
`patent under 35 U.S.C. §§ 101 and 112. After considering the Petition and
`
`the Preliminary Response, we are persuaded that it is more likely than not
`
`that Petitioner would prevail in showing that at least one of the challenged
`
`claims is unpatentable. Accordingly, we institute a post-grant review on
`
`claims 1–12.
`
`B. Related Matters
`
`Petitioner states that there are no related matters. Pet. 1.
`
`C. The ’744 Patent
`
`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
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`2
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`PGR2018-00055
`Patent 9,687,744 B2
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`other, the players need to be proficient in the battle game to a certain extent,
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`and there is hardly any scene where inexperienced players can play active
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`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
`
`flowchart shown in Figure 6 reproduced below:
`
`Figure 6 “is flowchart showing flow of ‘combo’ presentation processing
`
`
`
`3
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`PGR2018-00055
`Patent 9,687,744 B2
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`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).
`
`D. Illustrative Claim
`
`
`
`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.
`
`
`
`Additional independent claims 5 and 9 are directed to a method and
`
`system. 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
`
`4
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`parameter between two characters. See id. at 7:54–65, 8:12–24, 8:40–54.
`
`Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–12 of the ’744
`
`patent on the following grounds (Pet. 16).
`
`Statutory Basis Claims
`§ 101
`1–12
`§ 112(a)
`1–12
`§ 112(b)
`1–12
`
`With its Petition, Petitioner does not provide declarant testimony, for
`
`example, from a person of ordinary skill in the art. Patent Owner relies on
`
`the testimony of Mr. David Crane (Ex. 2002, the “Crane Declaration”). See,
`
`e.g., Prelim. Resp. iii.
`
`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 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).
`
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`5
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`Patent 9,687,744 B2
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`Petitioner asserts that the ’744 patent is “available for Post Grant
`
`Review” and “is subject to the post-AIA provisions of the Patent Statute.”
`
`Pet. 2, 16. Specifically, the ’744 patent was filed on August 30, 2016, and
`
`claims priority to a U.S. Patent No. 9,457,279 filed on July 19, 2014, which
`
`claims the benefit of JP 2013-130232, filed on June 21, 2013. Id. at 15; Ex.
`
`1001, (22), (63). As all dates fall after March 16, 2013, the ’744 patent is
`
`available for post grant review. Also, the Petition was filed on March 27,
`
`2018, which is within nine months of the June 27, 2017, issue date of the
`
`’744 patent. Ex. 1001, (45); Pet. 2. On this record, we determine that the
`
`’744 patent is eligible for post-grant review.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`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. 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.,
`
`6
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`288 F.3d 1359, 1366 (Fed. Cir. 2002). At this stage of this proceeding, we
`
`determine that it is unnecessary to construe any claim terms.
`
`B. 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. 23–52. Patent Owner disputes
`
`Petitioner’s contentions. Prelim. Resp. 18–48.
`
`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 U.S. 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. 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 Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs.
`
`v. Prometheus Labs., Inc., 566 U.S. 66, 77–78 (2012)). In accordance with
`
`that framework, we first determine whether the claim is “directed to” a
`
`patent-ineligible abstract idea. Id. 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 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.”).
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`7
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`If the claim is “directed to” a patent-ineligible abstract idea, we turn to
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`the second step of the Alice and Mayo framework and consider the elements
`
`of the claim, both individually and as an ordered combination, to determine
`
`whether the additional elements transform the nature of the claim into a
`
`patent-eligible 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.
`
`Analysis
`
`Alice Step 1
`
`Petitioner asserts that the claims of the ’744 patent are drawn to the
`
`abstract idea of “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 by any characters in the group.” Pet. 23. Petitioner
`
`explains that this concept “is nothing more than comparing game data and
`
`controlling a video game effect in some un-recited fashion.” Id. at 23–24.
`
`Based on these assertions, Petitioner contends, “[t]he patent claims do
`
`not recite an improvement in computer functionality or a new technology.
`
`Instead, the claims merely apply the abstract concept within a video game
`
`environment.” Id. at 24. Petitioner provides several arguments in support of
`
`this contention. Id. at 25–38. For purposes of this decision we limit our
`
`discussion to Petitioner’s persuasive allegations regarding the functional
`
`nature of the limitations in the claim at issue.
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`8
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`Petitioner compares claims 1–12 of the ’744 patent to the claims
`
`found to be abstract by the U.S. Court of Appeals for the Federal Circuit in
`
`Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016) and
`
`Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
`
`1329, 1337 (Fed. Cir. 2017). Pet. 32–33. According to Petitioner, the
`
`Federal Circuit found the claims in these cases to be an abstract idea because
`
`they recited functions without claiming a particular way to perform the
`
`claimed functions. See id. Petitioner argues that the claims at issue are
`
`similar because they
`
`recite the functional result of “controlling . . . an effect of attack
`by a group” without reciting an algorithm, calculation, or specific
`method for achieving that result. In fact, aside from reciting
`conventional data storage (“storing . . . a parameter”) and generic
`categories of video game data (“difference in parameter between
`two characters” and “number of attacks”) the claimed result is
`not limited in any meaningful way.
`
`Id. at 33. Petitioner asserts “[i]nstead, the independent claims recite that the
`
`‘effect of attack’ is generally ‘controlled’ ‘according to a difference’ in
`
`parameter values but are silent as to how the difference is calculated or how
`
`that difference impacts the control of the effect of attack.” Id.
`
`Petitioner contrasts the ’744 patent claims with those deemed
`
`non-abstract in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
`
`1299 (Fed. Cir. 2016) and Enfish, LLC v. Microsoft Corporation, 822 F.3d
`
`1327 (Fed. Cir. 2016). Pet. 34–36. Specifically, Petitioner notes that “the
`
`’744 patent claims only generic data transmission or storage combined with
`
`generalized steps for ‘controlling’ or ‘displaying’ a video game effect based
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`9
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`on game data.” Id. at 35 (citation omitted). Petitioner argues that “the
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`independent claims provide no detailed rules or calculations to explain how
`
`the game data (the ‘difference in the parameter between two characters’ and
`
`‘number of attacks’) is calculated or how the difference in parameter or
`
`number of attacks.” Id. at 35–36. Petitioner further argues that “there is no
`
`indication as to how the ‘difference in the parameter’ and the ‘number of
`
`attacks’ may interact.” Id. at 36.
`
`Patent Owner disagrees, arguing that “[t]he ’744 patent’s claims fall
`
`squarely within this and other examples of patent-eligible subject matter.
`
`The challenged claims recite far more than the mere ‘concept of controlling
`
`a video game effect according to video game data’ alleged by Petitioner.”
`
`Prelim. Resp. 37 (citing Pet. 32). Patent Owner contends that “[t]he
`
`independent claims of the ’744 patent are directed to a client-server
`
`implementation of an online battle game.” Id. (citations omitted).
`
`In support of these contentions, Patent Owner compares the claims at
`
`issue to those in Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc.,
`
`880 F.3d 1356, 1362 (Fed. Cir. 2018). Id. at 41–42. Patent Owner argues
`
`that the claims of the ’744 Patent are directed to “the specific game
`
`mechanic of using the difference between parameters that represent the
`
`respective in-game advantages of a group of player-characters as a means to
`
`impact a combo executed by those players and permit novice players to
`
`engage within the game environment” Id. Patent Owner notes that
`
`“[c]laim 1 thus specifies the particular data structures which must be stored
`
`in memory, and the specific contents of those data structures—a variable
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`10
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`indicating, for example, the proficiency of a player, and the requirement of
`
`storing such a variable for each player,” “[c]laim 1 also requires ‘controlling,
`
`by a processor of the server device, an effect of attack by a group,’” and
`
`“claim 1 requires that this [controlling] step is done ‘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.’” Id. at 42 (citations
`
`omitted). Patent Owner identifies these features of the claimed invention as
`
`the limitations that “disclose a particular improvement to multiplayer online
`
`battle games that removes technological impediments that novice players
`
`would otherwise have in playing the game alongside veteran users.” Id. at
`
`43.
`
`On the record before us, we are persuaded by Petitioner that the
`
`claims are directed to 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 by any characters in the group. We are
`
`further persuaded that this procedure 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 reciting sufficiently specific means or
`
`technology for achieving those functional results. For example, claim 1
`
`recites “controlling, by a processor of the server device, an effect of attack
`
`by a group, according to a difference in the parameter between two
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`11
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`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, 7:59–64. Claim 1, however, does not indicate how this
`
`step is performed. See id. Rather, claim 1 merely indicates that this step is
`
`performed by a server without further details. As such, we are persuaded
`
`that these recitations are no more than generalized steps that do not amount
`
`to a sufficiently non-abstract description of how the battle is conducted. 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.”).
`
`We are further persuaded that the ’744 patent does 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. The
`
`Specification supports our determination in that it does not even identify
`
`what computer readable media are encompassed by the invention and
`
`describes the server and user terminal in terms of their components, which
`
`also appear to be generic components. For example, Figure 2 reproduced
`
`below, illustrates the server as functionally-labeled or technologically
`
`generic blocks such as “processor,” “communication interface,” and “storage
`
`resource.” Similarly, Figure 3 reproduced below, illustrates the client device
`
`as functionally-labeled or technologically generic blocks such as
`
`“processor,” “audio output device,” “communication interface,” “storage
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`resource,” “input device,” and “display device.”
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`
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`Figure 2 “is a block diagram showing a structure of a server device”
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`and Figure 3 is “a block diagram showing a structure of a client device.” Ex.
`
`1001, 2:23–26. Accordingly, we are persuaded that the ’744 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., 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
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`through the use of conventional devices, without offering any technological
`
`means of effecting that concept.”).
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`For these reasons, we are persuaded that claims 1–12 of the ’744
`
`patent are directed to an abstract idea.
`
`Alice Step 2
`
`We next turn to the 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).
`
`Petitioner contends that the additional elements of claims 1–12 of the
`
`’744 patent do not transform the abstract idea into a patent-eligible
`
`invention. See Pet. 42. Petitioner advances several arguments in support of
`
`this contention. Again, for purposes of this Decision, we limit our
`
`discussion to the arguments we find to be persuasive.
`
`Petitioner contends that “[a]ll the recited claim elements of the ’744
`
`claims, either individually or as an ordered combination, tangible and
`
`otherwise, are conventional, generic and well understood, and thus present
`
`no patentable inventive concept.” Pet. 42. In support of this contention,
`
`Petitioner notes that “[t]he specification admits that the server device may
`
`comprise a ‘general-purpose communication terminal device’ which may
`
`‘include a desktop PC, a notebook PC, a tablet PC, a laptop PC, and a
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`mobile phone.’” Id. (citing Ex. 1001, 2:59–3:6). Petitioner further notes
`
`that “[t]he specification further admits that the steps are routine functions for
`
`conventional hardware by noting the increasing popularity of prior art
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`MMORPG games provided from server devices to client devices via
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`communication networks.” Id. at 42–43 (citing Ex. 1001, 1:21–24).
`
`In response, Patent Owner argues that “Petitioner has provided no
`
`evidence that the use of a parameter to impact the effect of a combo attack as
`
`described and claimed in the ’744 patent was ‘well-understood, routine, and
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`conventional.’” Prelim. Resp. 47. According to Patent Owner, “the
`
`particular application disclosed in the ’744 patent was not conventional,
`
`routine, or well-understood in the multiplayer online battle game art at the
`
`time of the invention,” because “controlling the effect of a combo attack
`
`based on the differing proficiency levels of the players within the group as
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`disclosed in the ’744 patent was a unique and unconventional solution to the
`
`technical barrier for inexperienced players to participate in multiplayer
`
`online battle games.” Id. at 47–48 (citing Ex. 2002 ¶¶ 29–30).
`
`On the record before us, we are persuaded by Petitioner that additional
`
`elements in claims 1–12 of the ’744 patent do not transform the abstract idea
`
`into patent-eligible subject matter because the claimed improvements
`
`identified by Patent Owner do not improve the technological field. Rather,
`
`they improve game play for the user.
`
`Moreover, we are not persuaded by Patent Owner’s argument that
`
`Petitioner fails to provide any factual evidence in support of the contention
`
`that the limitations of claims 1–12 were well-understood, routine, and
`
`conventional at the time of the invention. The Specification of the ’744
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`patent describes a battle game wherein a parameter is assigned to each
`
`character and game play is modified based on a difference in the parameter
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`between two characters. See Ex. 1001, 2:1–8. The Specification indicates
`
`that such modification, where the parameter is time between attacks, was
`
`known. See id. at 1:42–49.
`
`Conclusion
`
`For the reasons addressed supra, we are persuaded that it is more likely
`
`than not that Petitioner will prevail in showing that claims 1–12 are
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`unpatentable under § 101.
`
`C. 35 U.S.C. § 112(a)
`
`Petitioner contends that claims 1–12 do not satisfy the written
`
`description requirement of 35 U.S.C. § 112(a). Pet. 51–63. Patent Owner
`
`disputes Petitioner’s contentions. Prelim. Resp. 48–63.
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`1.
`
`Relevant Law
`
`Whether the written description requirement of 35 U.S.C. § 112(a) has
`
`been satisfied “requires an objective inquiry into the four corners of the
`
`specification from the perspective of a person of ordinary skill in the art.”
`
`Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`
`(en banc). The specification must describe sufficiently an invention
`
`understandable to a person of ordinary skill in the art and “show that the
`
`inventor actually invented the invention claimed.” Id. In other words, a
`
`patent applicant must “convey with reasonable clarity to those skilled in the
`
`art that, as of the filing date sought, he or she was in possession of the
`
`invention. The invention is, for purposes of the ‘written description’
`
`inquiry, whatever is now claimed.” Vas–Cath Inc. v. Mahurkar, 935 F.2d
`
`1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). “Such description need
`
`16
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`PGR2018-00055
`Patent 9,687,744 B2
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`not recite the claimed invention in haec verba but must do more than merely
`
`disclose that which would render the claimed invention obvious.” ICU
`
`Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009).
`
`2.
`
`Analysis
`
`i.“controlling”
`
`Petitioner contends
`
`the specification of the ’744 patent fails to provide adequate
`written description of “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.”
`
`Pet. 53 (emphasis added). In support of this contention, Petitioner argues
`
`that “each time the specification describes any impact on the effect of the
`
`attack, it is described as an ‘increase’” in the effect of the attack, rather than
`
`controlling the effect of the attack. Id. at 54 (citations omitted). According
`
`to Petitioner, “[t]he sole use in the specification of any variant of the term
`
`‘control’ outside of the claims is to add that the effect may be impacted by
`
`the number of successive attacks in addition to the difference in parameter.”
`
`Id. at 55 (citing Ex. 1001, 6:35–38) (‘“[t]he effect of successive attacks by
`
`the plurality of characters may be controlled according to not only the
`
`difference in the parameter 50 between the plurality of characters but also
`
`the number of successive attacks.’”).
`
`Petitioner further argues that “[e]ven as to “increasing” the effect . . . ,
`
`the specification does not explain the correlation between the difference in
`
`the parameter values between the characters, or the number of successive
`
`17
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`PGR2018-00055
`Patent 9,687,744 B2
`
`attacks, and the ‘increase.’” Id. In support of this further contention,
`
`Petitioner argues that
`
`no specific numeric examples are provided for the parameter
`value differences that would result in an increased attack effect,
`or what number of successive attacks would cause such an
`increase. The only indication of size at all is that the effect is
`“increased” when the difference in the parameter is ‘larger’ (Ex.
`1001, 5:62-66, 5:67-6:4) or the number of successive attacks is
`‘larger’ (Ex. 1001, 6:36-48). Nowhere does the specification
`indicate what values would be considered “larger,” or by how
`much such a “larger” value would increase the effect of the
`attack.
`
`Id.
`
`Noting that “the claim language in claims 1 and 9 with which
`
`Petitioner takes issue was present in the originally filed application that
`
`issued as the ’744 patent,” Patent Owner contends “the specification of the
`
`’744 patent provides support for controlling the effect of a combo as
`
`challenged by Petitioner and directly contradicts Petitioner’s allegations.”
`
`Prelim. Resp. 52, 54. Patent Owner explains that “the specification provides
`
`an express algorithm as further exemplary explanation for increasing the
`
`effect of a combo.” Id. at 55. To illustrate this point, Patent Owner quotes
`
`column 5, line 56 to column 6, line 4 of the ’744 patent. Id. at 55–56.
`
`On this record, we agree with Patent Owner that the disclosure as
`
`originally filed appears to provide adequate written description support for
`
`the aforementioned claim limitations. During trial, Petitioner will have the
`
`opportunity to convince us to the contrary should it wish to continue with
`
`this contention.
`
`18
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`PGR2018-00055
`Patent 9,687,744 B2
`
`
`ii.“parameter”
`
`Petitioner contends “the specification does not describe which of the
`
`exemplary parameters is the parameter ‘stored’ or used for each character,
`
`nor does it explain how the effect of the attack is controlled ‘according to’
`
`the difference in that parameter between the characters.” Pet. 57. According
`
`to Petitioner, “[t]he specification states various increases ‘if the parameter is
`
`set’ to indicate these[] different parameter examples (Ex. 1001, 6:5–11,
`
`19-24, 26-33), but never explains how the parameter is ‘set.’” Id. Petitioner
`
`further argues that “the specification [does not] indicate an exemplary value
`
`for any of the parameter examples. No specific numeric examples are
`
`provided for the parameter value differences that would result in any impact
`
`to the attack effect.” Id. at 58. According to Petitioner, “[t]he only
`
`indication of size at is that the effect is ‘increased’ when the difference in the
`
`parameter is “larger.’ . . . Nowhere does the specification indicate what
`
`values would be considered ‘larger,’ or by how much such a ‘larger’ value
`
`would increase the effect of the attack.” Id.
`
`In response, Patent Owner contends that “it is unclear how any of
`
`these alleged deficiencies are relevant to the written description analysis,
`
`however, at least because Petitioner fails to explain how these alleged
`
`deficiencies would support a finding that the applicant was not in possession
`
`of the invention as claimed.” Prelim. Resp. 60. In support of this
`
`contention, Patent Owner notes that “an inventor does not need to provide
`
`the level of detail Petitioner demands to satisfy the written description
`
`19
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`PGR2018-00055
`Patent 9,687,744 B2
`
`requirement.” Id. (citing e.g. In re Hayes Microcomputer Prods., Inc., 982
`
`F.2d 1527, 1534 (Fed. Cir. 1992)).
`
`On this record, we again agree with Patent Owner that the disclosure
`
`as originally filed appears to provide adequate written description support
`
`for the aforementioned claim limitation. During trial, Petitioner will have
`
`the opportunity to convince us to the contrary should it wish to continue with
`
`this contention.
`
`iii.“information necessary for a battle game”
`
`Regarding claims 5–8, Petitioner contends that “the specification of
`
`the ’744 patent fails to provide adequate written description of information
`
`necessary for a battle game, and thus does not put the public in possession of
`
`what the applicant claimed as the invention.” Pet. 60. Noting that “[t]he
`
`specification discloses two types of information related to battle games:
`
`‘history information’ and ‘authentication information,’” Petitioner argues
`
`that “the specification never discusses what information is necessary for a
`
`battle game.” Id. at 60–61 (citing Ex. 1001, 5:1–8).
`
`Patent Owner argues in response that “the ’744 patent discloses
`
`examples of information that must be sent by the server device to the client
`
`device to access the game service: ‘The online game service is provided
`
`when the server device 10 returns a response to a request from the client
`
`device 30.’” Prelim. Resp. 61 (citing Ex. 1001, 2:56–58). Patent Owner
`
`explains that “the client device may receive “computer program 60 [that] is
`
`an application program for connecting to the server device 10 and receiving
`
`the battle game service. The application program can be distributed from the
`
`20
`
`
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`PGR2018-00055
`Patent 9,687,744 B2
`
`server device 10 via the network 20.” Id. (citing Ex. 1001, 4:26–30). In
`
`view of these descriptions in the Specification, Patent Owner contends that
`
`“[a] person of ordinary skill in the art would understand at least this
`
`disclosure to provide sufficient written description for the information
`
`necessary to be sent from the server device to the client device for the battle
`
`game.” Id. at 61–62 (citing Ex. 2002 ¶¶ 37-38).
`
`On this record, we agree with Patent Owner that the disclosure as
`
`originally filed appears to provide adequate written description support for
`
`the aforementioned claim limitation. During trial, Petitioner will have the
`
`opportunity to convince us to the contrary should it wish to continue with
`
`this contention.
`
`iv.“displaying . . . an effect of attack by a group”
`
`In addition, regarding claims 5–8, Petitioner contends that “the
`
`specification provides very little disclosure about the displaying done by the
`
`display device 36 of the client device 30.” Pet. 62. According to Petitioner,
`
`“the speci
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