Supercell Oy v. GREE, Inc.
`PGR2018-00060
`U.S. Patent 9,694,287
`
`June 26, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1011
`
`
`PGR2018-00060
`U.S. Patent 9,694,287
`
`June 26, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1011
`
`
`
`U.S. Patent No. 9,694,287
`
` Petitioner sufficiently shows
`that the independent claims are
`directed to “sending
`notifications about an item in a
`game.”
` “Petitioner sufficiently shows
`that the independent claims
`recite only functional results
`without guidance as to how the
`recited functions are
`performed.”
`
`Decision Granting Institution, 11, 16.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
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`Exhibit 1011
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`
`
`PO Rehashed Arguments in Sur-reply
`PO Sur-reply Re-hashed Argument
`Petitioner overgeneralizes the claims.
`
`Claims directed instead to “specific manner of
`establishing a framework within online
`gaming to implement an affiliate system into
`network-based gaming.”
`
`Board’s Conclusion Upon Institution
`“Petitioner’s analysis does not overgeneralize
`the claims.”
`“Petitioner sufficiently shows that the
`independent claims are directed to “sending
`notifications about an item in a game.”
`
`Claims integrate judicial exception into an
`practice application because they improve
`computer technology.
`
`“Petitioner sufficiently shows that the claims
`do not provide any technical improvements
`to computers or video game technology.”
`
`Petitioner doesn’t provide sufficient factual
`evidence that claims were well-understood,
`routine, and conventional at the time of the
`invention.
`
`“Petitioner, however, points to the
`specification of the ’287 patent for factual
`evidence to support its position that the
`claims recite well-understood, routine, and
`conventional activities.”
`
`PO’s Sur-reply, 1-5, 15. Decision Granting Institution, 10-11, 13, 15.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`Exhibit 1011
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`
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`Step One: Claims are directed to an abstract idea
`The claims are directed to:
`“sending notifications about an item in a game”
`
`Decision Granting Institution, 11.
`Ex. 1001, FIG. 4.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`4
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`Exhibit 1011
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`
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`Step One: Claims are directed to an abstract idea
`The claims are directed to: “sending notifications about an item in a game.”
`17. A game control method for providing a plurality of items usable in a game to a plurality of communication
`terminals connected to the game over a network, the game control method comprising:
`an item providing step of, when receiving a request for provision of a first item usable in the game from a first
`communication terminal of the plurality of communication terminals corresponding to first user ID
`information, providing the first item to the first communication terminal; and
`a notification step of, when providing the first item to the first communication terminal, sending a
`notification to a second communication terminal of the plurality of communication terminals that the
`first item is provided to the first communication terminal, the second communication terminal
`corresponding to second user ID information linked to the first user ID information,
`wherein when receiving a request for provision of the first item from the second communication terminal
`based on the notification, a notification is sent to a third communication terminal of the plurality of
`communication terminals that the first item is provided to the second communication terminal, the
`third communication terminal corresponding to third user ID information linked to the second user ID
`information,
`wherein the first user ID information identifies a first user, the second user ID information identifies a second user
`different from the first user, and the third user ID information identifies a third user different from the first
`user and the second user, and
`wherein at the item providing step, a second item usable in the game, in addition to the first item, is provided to
`the second communication terminal that is mentioned in the notification sent to the third communication
`terminal by the notifier.
`
`Decision Granting Institution, 11. Ex. 1001, Claim 17.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`5
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`Exhibit 1011
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`
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`Petitioner arguments found persuasive by Board
`Board regarding Step 2A
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`6
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`Decision Granting Institution, 10, 12.
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`Exhibit 1011
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`
`
`Step One: Claims are directed to an abstract idea
`
` PO argues in both the POPR and POR that the claims are instead directed to
`“a specifically articulated and detailed framework of an affiliate system
`incorporated into network-based gaming.”
`• PO provides no analysis as to why this articulation could be more accurate.
`
` PO argues Petitioner overgeneralizes the claim.
`• The Board rejected that argument upon institution:
`
`Reply, 1-2. Decision Granting Institution, 10.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`7
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`Exhibit 1011
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`
`
`Step One: Claims are directed to an abstract idea
`
` PO’s alternative “directed to” articulation relies on language not found in any of
`the claims or in the specification, including “framework” and “affiliate system,”
`as PO’s own expert agreed.
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`8
`
`Reply, 1. Ex. 1009, 15:25-16:2, 26:9-13.
`
`Exhibit 1011
`
`
`
`Step One: Claims are directed to an abstract idea
` PO’s alternative “directed to” articulation relies on language not found in any of
`the claims or in the specification, including “framework” and “affiliate system,”
`as PO’s own expert agreed.
`
` PO’s expert also found the combination of providing items and a system of
`notifications to be a fair characterization of the claims.
`
`Reply, 1. Ex. 1009, 64:9-16 (objection omitted), 129:25-130:25.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`9
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`Exhibit 1011
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`
`
`Step One: Claims are directed to an abstract idea
`The ’287 patent is abstract because the claims:
`
`Prong One
`
`(1) Recite a method of organizing human activity;
`
`(2) Recite only result-oriented functions without a non-
`abstract means of achieving those results;
`
`Prong Two
`
`(3) Provide no improvement in computer functionality.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 5-12.
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`10
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`Exhibit 1011
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`
`
`(1) Claims recite a method of organizing human activity
`Prong One
`• PO touts a benefit of the ’287 patent as “improving the gameplay”
`of network-based gaming.
`
`• PO’s expert declaration called the gameplay experience “a vital
`aspect” of gaming technology and “the critical factor in keeping
`people playing the game and making the game profitable.”
`
`• Such gameplay falls squarely under the “method[s] of organizing
`human activity” of Smith, Guldenaar, and Planet Bingo.
`
`Reply, 5-6. Ex. 2001, ¶¶25, 29, 32, 34, 36 (emphasis added); Ex. 1009, 65:6-66:9.
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`11
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`Exhibit 1011
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`
`
`(1) Claims recite a method of organizing human activity
`In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016)
`• Method of conducting a wagering games using a deck of cards
`“Applicants' claims, directed to rules for conducting a wagering
`game” are abstract. In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016)
`Planet Bingo LLC v. VKGS LLC, 576 Fed. App’x. 1005, 1007-08 (Fed.
`Cir. 2014)
`• Method and system for conducting a game of bingo
`
`In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018)
`• Method of playing a dice game
`• PO did not address these cases in its Sur-reply
`
`Ex. 2010, 2019 Revised Patent Subject Matter Eligibility Guidance, p. 10 n.13; Reply, 5-6.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`12
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`Exhibit 1011
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`
`
`(1) Claims recite a method of organizing human activity
`• PO did not address these cases in its Sur-reply
`
`• PO’s Sur-reply:
`“These claimed features provide at least two primary improvements
`to network-based gaming technology of …
`(ii) improving the gameplay of network-based gaming technology.”
`
`PO’s Sur-reply, 11-13 (emphasis added).
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`13
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`Exhibit 1011
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`
`
`(2) Claims recite only result-oriented functions without a non-
`abstract means of achieving those results
`• The ’287 claims recite only generalized steps performed on generic hardware.
`• Board agreed that the claims are similar to those found patent ineligible in
`Affinity Labs & Two-Way Media.
`
`•
`
`•
`
`Two-Way Media Ltd. v. Comcast Cable Commc’n, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017): “Claims
`directed to generalized steps to be performed on a computer using conventional computer activity
`are not patent eligible.”
`
`Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016): claim abstract that recited
`“the function of wirelessly communicating regional broadcast content to an out-of-region recipient,
`not a particular way of performing that function.”
`Reply, 4. Petition, 28-32. Decision Granting Institution, 11.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`14
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`Exhibit 1011
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`
`
`(2) Claims recite only result-oriented functions without a non-
`abstract means of achieving those results
`• PO argues that the claims are distinguished from these cases for the
`reasons discussed in Data Engine Techs. LLC v. Google LLC, 906 F.3d 999,
`1010-11 (Fed. Cir. 2018).
`• The Data Engine claims recited “a ‘specific’ and ‘particular’ manner of
`navigating a three-dimensional spreadsheet that improves the efficient
`functioning of computers.”
`• PO argues that the ’287 patent claims similarly recite a “specific manner of
`establishing a framework…including specific functions of providing
`additional in game items.”
`
`• But the ’287 claims do not recite a structure at all, much less the type of
`structure found to be a specific technological solution in Data Engine.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 4-5. POR, 13-14.
`
`15
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`Exhibit 1011
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`
`
`(2) Claims recite only result-oriented functions without a non-
`abstract means of achieving those results
`• PO’s own expert admitted that the framework does not improve
`the computer:
`
`Reply, 4-5. Ex. 1009, 99:24-100:10.
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`16
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`Exhibit 1011
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`
`
`(3) Claims provide no improvement in computer
`functionality
` Prong Two evaluates whether the claim as a whole integrates the recited
`judicial exception into a practical application of the exception, for
`example:
`• an additional element reflects an improvement in the functioning of a
`computer, or an improvement to other technology or technical field
`
` The Board concluded it did not:
`
`Reply, 5-6. Decision Granting Institution, 13.
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`17
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`Exhibit 1011
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`
`
`(3) Claims provide no improvement in computer
`functionality
` Prong Two provides another example of integrating the recited
`abstract idea into a practical application:
` an additional element applies or uses the judicial exception in some other
`meaningful way beyond generally linking the use of the judicial exception
`to a particular technological environment, such that the claim as a whole
`is more than a drafting effort designed to monopolize the exception.
`
`PO’s Sur-reply:
` “the claims set forth a detailed and specific manner of establishing a framework
`within online gaming that implements an affiliate system”
`
`PO’s Sur-Reply, 5. Ex. 1010, 55. Reply, 5-6.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
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`Exhibit 1011
`
`
`
`(3) Claims provide no improvement in computer
`functionality
` Prong Two provides another example of integrating the recited
`abstract idea into a practical application:
`• an additional element applies or uses the judicial exception in some
`other meaningful way beyond generally linking the use of the judicial
`exception to a particular technological environment, such that the
`claim as a whole is more than a drafting effort designed to monopolize
`the exception.
`
` The ’287 specification states that affiliate systems were known in
`advertising for the purpose of e-commerce.
`
` PO’s Sur-reply: “the claims set forth a detailed and specific manner of
`establishing a framework within online gaming that implements an
`affiliate system”
` PO admitted that the claimed notification system merely takes an affiliate system
`known in the particular technical environment of e-commerce and links it to the
`particular technical environment of gaming.
`PO’s Sur-Reply, 5, 9. Ex. 1010, 55. Reply, 5-6, 16-18. Ex. 1001, 1:26-35. Sur-reply to Opposition, 8-9.
`PO’s Reply to Opposition, 8.
`19
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Exhibit 1011
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`
`
`(3) Claims provide no improvement in computer
`functionality
` The claims are distinguished from each of:
`
`• Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362
`(Fed. Cir. 2018).
`• Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir. 2016).
`• McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315-16
`(Fed. Cir. 2016).
`• because:
`• they do not recite any specific improvement in video game
`technology or programming; and
`• they do not claim a specific implementation of a solution to a
`problem in the software arts.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 6-10.
`
`20
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`Exhibit 1011
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`
`
`(3) Claims provide no improvement in computer
`functionality
` PO’s expert repeatedly emphasized the functional nature of the invention
`during his deposition:
`
`Reply, 9. Ex. 1009, 14:18-15:1, 15:15-
`19.
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`21
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`Exhibit 1011
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`
`
`Prong Two
` PO’s argued that the claimed features are sufficiently detailed “so as not
`to preempt all ways of establishing a framework that implements an
`affiliate system.”
` However, when asked to provide an example of a framework that would
`not be covered by the claims, PO’s expert could not do so:
`
`Reply, 10. Ex. 2001, ¶35. Ex. 1009, 74:2-6 (objection omitted).
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`22
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`Exhibit 1011
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`
`
`Step Two: Petitioner arguments found persuasive by Board
`
`Regarding Step 2B, the Board concluded:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`23
`
`Decision Granting Institution, 15.
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`Exhibit 1011
`
`
`
`Step Two: No Inventive concept
`Step 2B
` Next Alice determines whether any additional elements beyond the
`abstract idea transform the claim into a patent-eligible application.
`In Alice, the Supreme Court did not go through how each claim limitation was
`•
`“well-understood, routine, conventional,” but considered those additional
`elements not accounted for by the abstract idea.
`
` PO conflates the steps of the analysis.
` The entirety of PO’s expert’s declaration regarding part two is focused on a
`“feature,” which feature PO’s expert indicated was the affiliate system, the
`same claim limitation argued for step one:
`
`Reply, 11-12. POR, 37. Ex. 2001, ¶¶38-42 (section covering step two); Ex. 1009, 77:25-78:3.
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`24
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`Exhibit 1011
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`
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`Step Two: No Inventive concept
`
`The additional elements provide no inventive concept because:
`
`(1) The Claims Are Performed on a Generic Computer Using
`Routine Functions;
`
`(2) The Claims Do Not Recite a Means to Promote the
`Acquisition of an Item in a Game; and
`
`(3) The Claim Limitations Are “Well Understood, Routine, and
`Conventional.”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 13-19.
`
`25
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`Exhibit 1011
`
`
`
`Step Two: No Inventive concept
`Step 2B
` Since the claims are directed to “sending notifications about an item in
`a game,” only the additional elements beyond that idea are
`considered, which includes only:
`• conventional client-server interactions such as communications between
`the communication terminal and the server over the network.
`• providing items, and
`• identifying users.
`
` PO’s expert admitted each of these were conventional:
`• Agreed that client server architectures were known in the gaming arts
`“for a long time”
`• Agreed that requesting and receiving items existed in prior games
`• Agreed that user identification information was used in prior games
`
`Reply, 11-13. Ex. 1009, 106:1-11, 109:2-5, 121:13-21.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`26
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`Exhibit 1011
`
`
`
`(1) The Claims Are Performed on a Generic Computer Using
`Routine Functions
`
` Beyond the abstract idea, the claims recite only generic, well-
`known computer or network equipment or functionally named
`components operating within the hardware:
`• “game server,”
`• “communication terminals,”
`• “network,”
`• “processor,”
`• “storage unit,”
`• “non-transitory computer-readable storage medium,” or
`• “computer.”
`
` The Board acknowledged these as conventional.
`
`Reply, 13. Ex. 1001, 12:14-51 (claim 1). Decision Granting Institution, 12.
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`27
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`Exhibit 1011
`
`
`
`(2) The Claims Do Not Recite a Means to Promote the
`Acquisition of an Item in a Game
`
`Under Berkheimer, “improvements in the specification, to the
`extent they are captured in the claims,” may create a factual
`dispute regarding whether the invention describes “well-
`understood, routine, and conventional activities.”
`Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (emphasis added).
`
` The specification purports to disclose a game system for
`“promoting the acquisition of [an] item in [a] game.”
` The claims have a different scope:
`• providing an item to a first communication terminal in response to
`receiving a request for the item;
`• sending a notification about the item to a second communication
`terminal; and
`• sending a notification about the item to a third communication
`terminal.
`
`Reply, 13-14. Ex. 1001, 4:39-40, 14:36-15:3.
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`28
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`Exhibit 1011
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`
`
`(2) The Claims Do Not Recite a Means to Promote the
`Acquisition of an Item in a Game
` The claims lack the ability to motivate a user to acquire the item that is
`supposedly being promoted.
`• The claimed notifications simply notify the recipient that the item has been provided
`to another communication terminal.
` PO’s own expert admitted:
`
`Reply, 14-16. Ex. 1009, 138:14-16, 142:1-6 (objections omitted).
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`29
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`Exhibit 1011
`
`
`
`(2) The Claims Do Not Recite a Means to Promote the
`Acquisition of an Item in a Game
` PO’s own expert admitted:
`
` Thus the purported improvements are not captured in the claims
`under Berkheimer.
`Reply, 14-16. Ex. 1009, 143:7-11 (objections omitted), 145:38- (objections omitted).
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`30
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`Exhibit 1011
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`
`
`(2) The Claims Do Not Recite a Means to Promote the
`Acquisition of an Item in a Game
` PO’s Sur-reply:
` “However, the Petitioner fails to recognize another clear manner of promoting
`item acquisition, which is the reward/incentive provided to the second
`communication terminal for notifying other users (e.g., the third communication
`terminal). The claims provide that as a reward — and incentive — for notifying
`the third communication terminal of the purchase/acquirement of the first item,
`the game server — implementing the affiliate system — provides the second
`communication terminal with a second item (i.e., a bonus item). This
`reward/incentive is not contingent on the third communication terminal
`performing any action.”
`
` Thus the purported improvements are not captured in the claims
`under Berkheimer.
`
`PO’s Sur-reply, 8-9 (internal citation omitted). Reply, 14-16.
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`31
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`Exhibit 1011
`
`
`
`(3) The Claim Limitations, Individually and as an Ordered Combination,
`Are “Well Understood, Routine, and Conventional”
`Even if the same determining elements could be considered
`additional elements beyond the abstract idea, they are well
`understood, routine, and conventional.
`
`•
`
` The ’287 specification states that affiliate systems were known
`in advertising for the purpose of e-commerce.
` PO’s own expert admitted that the two notification steps recite
`nothing about the notifications being in the context of games.
`a notification step of, when providing the first item to the first communication terminal, sending a
`notification to a second communication terminal of the plurality of communication terminals that the
`first item is provided to the first communication terminal, the second communication terminal
`corresponding to second user ID information linked to the first user ID information,
`wherein when receiving a request for provision of the first item from the second communication
`terminal based on the notification, a notification is sent to a third communication terminal of the
`plurality of communication terminals that the first item is provided to the second communication
`terminal, the third communication terminal corresponding to third user ID information linked to the
`second user ID information,
`
`•
`
`Reply, 16-18. Ex. 1001, 1:26-35, claim 1. Ex. 1009, 103:25-104:9.
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`32
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`Exhibit 1011
`
`
`
`(3) The Claim Limitations, Individually and as an Ordered Combination,
`Are “Well Understood, Routine, and Conventional”
` PO’s expert also admitted that following were known in the art:
`• requesting and providing items, as recited in the first and last claim
`elements
`• utilizing user-identifying information and links between users, as
`recited in the fourth claim element
`• client-server architectures
`• client-client interactions
`• the ‘287 hardware (same as in prior art affiliate systems)
`
` The limitations as an ordered combination fail to transform the claims
`into a patentable invention. Bascom Global Internet Serv’s, Inc. v. AT&T Mobility LLC,
`827 F.3d 1341, 1349 (Fed. Cir. 2016).
` As a whole, the claims are directed to the abstract idea of sending
`notifications about an item in a game. When these limitations are
`stripped away, the only limitations that remain are features already
`existed in prior art games.
`
`Reply, 16-18. Ex. 1009, 31:3-11, 107:9-111:7, 121:19-25.
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`33
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`Exhibit 1011
`
`
`
`(3) The Claim Limitations, Individually and as an Ordered Combination,
`Are “Well Understood, Routine, and Conventional”
` Upon institution, the Board concluded:
`
` PO did not distinguish or otherwise address these cases in the POR.
` PO has provided no rationale for the Board to reconsider this
`conclusion.
`
`Reply, 16-18. Decision Granting Institution, 16.
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`34
`
`Exhibit 1011
`
`
`
`Dependent Claims 2-8, 10-16, and 18-24 Are Directed to the Same
`Abstract Concept
` POR did not separately argue the patent eligibility of any of the
`dependent claims, except claim 2 (in discussion of Data Engine).
`• Under step one, the POR only mentions dependent claim 2 at all; claims 3-
`8, 10-16, and 18-24 are not discussed.
`
` None of the dependent claims add any features that capture the
`purported improvement described in the specification, so their
`routine nature can be resolved as a matter of law under
`Berkheimer for the same reasons as the independent claims:
`• there is no indication that the second item is provided as a reward;
`• there is no step to inform the user in advance that sending the notification
`will result in a reward; and
`• the claim does not require the second item to be provided in response to
`sending a notification.
`
` None of the dependent claims add limitations that resolve all
`three of these deficiencies in the independent claims.
`Reply, 19-20.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`35
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`Exhibit 1011
`
`
`
`Dependent Claims 2-8, 10-16, and 18-24 Are Directed to the Same
`Abstract Concept
`
` For Part One, PO argues that claim 2 describes “even more
`specific steps” about providing the “reward.”
`• Claim 2 merely recites the wherein when receiving the request from the
`third terminal and the second item being provided to the first or third
`terminal.
`
` PO never explains why the “even more specific steps” would
`make claim 2 less abstract or more similar to Data Engine.
`
` PO fails to discuss any of the dependent claims under Part Two.
`PO has therefore waived any such arguments.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Reply, 20-21. POR, 16.
`
`36
`
`Exhibit 1011
`
`
`
`Dependent Claims 2-8, 10-16, and 18-24 Are Directed to the Same
`Abstract Concept
` For Part Two, PO failed to discuss any of the dependent claims
`and therefore waived any such arguments.
`
` Like the independent claims, the additional steps in claims 2, 6,
`7, 10, 14 ,15, 18, 22, and 23 are simply data transmission steps
`that are insufficient to confer patent eligibility. See, e.g., Smartflash LLC
`v. Apple Inc., 2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017).
`
` Claims 8, 16, and 24 add the step of generating a selection panel
`that can be used to select the recipient of a notification.
`• This step adds nothing more than generating a generic user interface,
`which cannot supply an inventive concept. See Intellectual Ventures I LLC v.
`Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
`
`Reply, 20-21. Ex. 1001, 13:17-22, 14:29-34, 16:14-19.
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`37
`
`Exhibit 1011
`
`
`
`Dependent Claims 2-8, 10-16, and 18-24 Are Directed to the Same
`Abstract Concept
` 2. The game server according to claim 1, wherein when receiving a request for
`provision of the first item from the third communication terminal based on the
`notification, the item provider provides the second item usable in the game to at
`least one of (i) the first communication terminal and (ii) the third communication
`terminal that sends a request for provision of the first item based on the
`notification.
`
` 3. The game server according to claim 1, wherein a user corresponding to the
`second communication terminal is a friend user of a user corresponding to the
`first communication terminal.
`
` 4. The game server according to claim 1, wherein the second item is identical to
`the first item.
`
` 5. The game server according to claim 1, wherein the first item and the second
`item restore an energy, an attack cost and a defense cost.
`
`Ex. 1001, claims 2-5.
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`38
`
`Exhibit 1011
`
`
`
`Dependent Claims 2-8, 10-16, and 18-24 Are Directed to the Same
`Abstract Concept
` 6. The game server according to claim 1, wherein the notifier sends, to
`additional communication terminals of the plurality of communication
`terminals corresponding to a plurality of the additional user ID information,
`the notification that the first item is provided, and wherein the item
`provider, when receiving additional requests for the first item from a
`predetermined number of the additional communication terminals, further
`pro vides the second item to the first communication terminal.
` 7. The game server according to claim 1, wherein when the notifier sends the
`notification to a predetermined number of the plurality of communication
`terminals, the item provider provides the second item to the plurality of
`communication terminals corresponding to a plurality of user ID information
`associated with the notification.
` 8. The game server according to claim 1, further comprising a selection panel
`generator that generates a selection panel that allows for selection of among
`a plurality of different user ID information linked to the first user ID
`information, a destination of the notification that the first item is provided to
`the first communication terminal.
`
`Ex. 1001, claims 6-8.
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`39
`
`Exhibit 1011
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`The Limitation “When Receiving A Request For Provision Of The First Item From
`The Second Communication Terminal . . . , A Notification Is Sent To A Third
`Communication Terminal” Is Indefinite
`
` According to the specification, at the time the request is received, the game
`server has yet to obtain the identity of the user who should receive the
`notification.
` It is unclear as to how the server could send a notification to a destination it has
`not yet determined, which is the case when the request is received.
`
` The POR argues – without support – that the “when” of this limitation means
`that the notification to the third communication terminal is sent “at some
`subsequent time.” (citing declaration that does not support this statement)
` PO’s Sur-reply argues that “when” means “at the same or some subsequent
`time.”
`
`Reply, 22-23. Ex. 1001, 11:1-16. POR, 46. Ex. 2001, ¶45. PO’s Sur-reply, 17.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`40
`
`Exhibit 1011
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`The Limitation “When Receiving A Request For Provision Of The First Item From
`The Second Communication Terminal . . . , A Notification Is Sent To A Third
`Communication Terminal” Is Indefinite
`
` PO’s own expert testified to Petitioner’s construction:
`
` At that time, the destination has not yet been determined.
` It is unclear how the server could send a notification to an
`undetermined destination.
`
`Reply, 22-23. Ex. 1009, 78:14-20 (objection omitted).
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`41
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`Exhibit 1011
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`The Limitation “A Second Item Usable In The Game, In Addition To The First
`Item, Is Provided To The Second Communication Terminal That Is Mentioned In
`The Notification Sent To The Third Communication Terminal By The Notifier” Is
`Indefinite
` PO’s position is that providing the second item “in addition to the first item”
`could mean two different things:
`• the first and second item are provided simultaneously, OR
`• the first item is provided prior to the second item.
`
` A claim is indefinite if its language “might mean several different things and no
`informed and confident choice is available among the contending definitions.”
`Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.2d 1336, 1371 (Fed. Cir. 2015).
` PO’s Sur-reply: “merely because the breadth of the claim term covers two
`“species”…does not render the claim indefinite because the scope of claim [sic]
`is clearly delineated as covering these two possibilities.”
`
`Reply, 23-25. POR, p. 48. PO’s Sur-reply, 19.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`42
`
`Exhibit 1011
`
`
`
`35 U.S.C. §112(B) – Indefiniteness
`The Limitation “A Second Item Usable In The Game, In Addition To The First
`Item, Is Provided To The Second Communication Terminal That Is Mentioned In
`The Notification Sent To The Third Communication Terminal By The Notifier” Is
`Indefinite
` When questioned as to how one of skill in the art know whether the items are
`going simultaneously or not, PO’s expert testified that it would depend on how
`the software was written, and called it “an indefinite set of text.”
` During his deposition PO’s expert found “the notification” unclear:
`
`Reply, 23-25. Ex. 1009, 88:23-89:14, 118:13-17, 116:12-20 (objection omitted).
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`43
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`Exhibit 1011
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`
`
`Deficiencies of PO’s Contingent Motion to Amend
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`PO’s Motion to Amend, 3-5.
`44
`
`Exhibit 1011
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend:
`Lack of Written Description Support for Proposed Claims
` PO’s Motion to Amend should be denied, as it does not provide an
`explanation of how its citations to the underlying patent applications
`support the proposed substitute claims.
`• The seminal case of Aqua Products noted that merely citing to the
`specification alongside the proposed claims, without explanation, is
`insufficient support.
`
`• The PTAB has similarly held that claim chart with specification cites did not
`excuse Patent Owner “from setting forth how the original disclosure
`provides written description support for the proposed substitute claim.”
`Cisco Systems, Inc. v. Focal IP, LLP, IPR2016-01254, Paper 56, p. 93 (P.T.A.B Dec. 27, 2017).
`
`PO’s amendment as reflected in proposed claim 25 adds more than 200
`words, more than doubling the length of the claim as compared to claim 1.
`
`Sur-reply to Opposition to Motion to Amend, 1-2. Opposition to Motion to Amend, 1-2.
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`45
`
`Exhibit 1011
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend:
`Broadening of Claims
`PO replaces steps performed by “item provider,” “notifier,” and
`“selection panel generator” all to be performed by a “processor.”
`
`Sur-reply to Opposition to Motion to Amend, 3-4. Motion to Amend, 26-27, 30.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`46
`
`Exhibit 1011
`
`
`
`Deficiencies of PO’s Contingent Motion to Amend:
`Broadening of Claims
` Claim 25 is a system claim that now recites a singular component of that
`system (processor) for all of the functions formerly recited as being
`performed by the notification means 121 and item providing means 122,
`which are system sub-components of the processor (i.e., control unit
`12).
` The hierarchy of these system components is shown in FIG. 1:
`
` The proposed claims are materially broader because they lack the requirement that
`the functions be performed by discrete sub-processes in accordance with a defined
`hierarchy.
`Sur-reply to Opposition to Motion to Amend, 3-4. Ex. 1001, FIG. 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDEN
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