Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 34
`Entered: July 31, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`PGR2018-00060
`Patent 9,694,287 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`

`

`PGR2018-00060
`Patent 9,694,287 B2
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`
`I.
`
`INTRODUCTION
`
`Gree, Inc. (“Patent Owner”) Patent Owner filed a Request for
`
`Rehearing (Paper 33, “Req. Reh’g”) seeking review of the Board’s Final
`
`Written Decision (Paper 32, “Dec.”). In the Final Written Decision, we
`
`determined that Supercell Oy (“Petitioner”) had shown by a preponderance
`
`of the evidence that claims 1–24 of U.S. Patent No. 9,694,287 B2 (Ex. 1001,
`
`“the ’287 Patent”) are unpatentable, and we denied Patent Owner’s
`
`Contingent Motion to Amend (Paper 13, “Mot.” or “Motion”) because
`
`proposed substitute claims 25–48 are not patent eligible.
`
`For the reasons set forth below, Patent Owner’s Request for
`
`Rehearing is denied.
`
`
`
`II. ANALYSIS
`
`A. Legal Standard
`
`The applicable requirements for a request for rehearing are set forth in
`
`37 C.F.R. § 42.71(d), which provides:
`
`A party dissatisfied with a decision may file a single request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believed the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`37 C.F.R. § 42.71(d); see also Req. Reh’g 2 (quoting from the same rule
`
`under “Legal Standard”).
`
`We review our decision under an abuse of discretion standard. 37
`
`C.F.R. § 42.71(c). An abuse of discretion may arise if based on an
`
`erroneous interpretation of law, if a factual finding is not supported by
`
`
`
`2
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`PGR2018-00060
`Patent 9,694,287 B2
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`substantial evidence, or if the decision represents an unreasonable judgment
`
`in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d
`
`1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340
`
`(Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`B. The Final Written Decision
`
`In the Final Written Decision, we denied Patent Owner’s Contingent
`
`Motion to Amend proposing substitute claims 25–48. Dec. 43–58. We first
`
`determined that the Motion met the statutory and regulatory requirements set
`
`forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221 as explained in
`
`Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB
`
`Feb. 25, 2019) (precedential). Id. at 46–50. In analyzing the proposed
`
`substitute claims under the USPTO’s 2019 Revised Patent Subject Matter
`
`Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised
`
`Guidance” or “Guidance”), we determined by a preponderance of the
`
`evidence that proposed substitute claims 25–48 are not patent eligible. Id. at
`
`55–58. In making this determination, we considered the entirety of the
`
`record, including the language of proposed substitute claims 25–48 and the
`
`arguments in Patent Owner’s Motion, Petitioner’s Opposition to Motion to
`
`Amend (Paper 22, “Opp.”), Patent Owner’s Reply to Opposition to Motion
`
`to Amend (Paper 24), and Petitioner’s Sur-Reply to Opposition to Patent
`
`Owner’s Motion to Amend (Paper 27). Based on the entirety of the record,
`
`we determined that proposed substitute claims 25–48 are directed to a
`
`method of organizing human activity, do not integrate the patent ineligible
`
`subject matter into a practical application, and do not amount to
`
`“significantly more” than patent ineligible subject matter. Id. at 43–58.
`
`
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`3
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`PGR2018-00060
`Patent 9,694,287 B2
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`C. Patent Owner’s Arguments on Rehearing
`
`The sole issue on which Patent Owner requests rehearing of the Final
`
`Written Decision is with respect to the Board’s determination that proposed
`
`substitute claims 25–48 were shown to be unpatentable as being directed to
`
`patent ineligible subject matter. Req. Reh’g 1–2. Patent Owner presents its
`
`arguments under three enumerated headings. Id. at 2–15.
`
`1. Analysis of Proposed Substitute Claims 25–48
`
`First, Patent Owner contends that the Board overlooked the
`
`differences between the original claims and the proposed substitute claims.
`
`Req. Reh’g 2–5 (heading “A”). Patent Owner points out that “substitute
`
`claims 25–48 are not identical to the original claims” and argues that the
`
`proposed substitute claims “require a separate and complete analysis to
`
`determine compliance with § 101.” Id. at 3. Focusing specifically on the
`
`limitations of proposed substitute claim 41 for (i) “a receiving step,” (ii) “a
`
`first item providing step,” and (iii) “a second item providing step,” Patent
`
`Owner contends that the modified features of the substitute claims set forth a
`
`practical application of the judicial exception under the 2019 Revised
`
`Guidance. Id. at 4. Patent Owner alleges that the Board erred by “merely
`
`referring back to the analysis of the original claims.” Id. at 5.
`
`Patent Owner does not identify what argument we overlooked or
`
`misapprehended. See id. at 2–5. The mere fact that we referred to previous
`
`analysis in the Final Written Decision does not show we overlooked or
`
`misapprehended any matter such that we should modify the Final Written
`
`Decision. See 37 C.F.R. § 42.71(d).
`
`Nonetheless, to the extent an argument was overlooked or
`
`misapprehended, we note that nothing in the Final Written Decision
`
`
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`4
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`PGR2018-00060
`Patent 9,694,287 B2
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`indicates that the proposed substitute claims are identical to the original
`
`claims, as asserted by Patent Owner, or that a complete analysis of the
`
`proposed substitute claims was not performed. On the contrary, we
`
`addressed the additional details added to proposed substitute independent
`
`claims 25, 33, and 41, as characterized by Patent Owner in its Reply.
`
`Dec. 55. The Final Written Decision applied each step of the 2019 Revised
`
`Guidance to the proposed substitute claims and weighed the arguments
`
`presented by Petitioner and by Patent Owner under each step. See id. at 55–
`
`56 (Guidance Step 2A, Prong I), 56–57 (Guidance Step 2A, Prong II), 57
`
`(Guidance Step 2B).
`
`We are not persuaded that it was an abuse of discretion for the Final
`
`Written Decision to refer to the analysis of the original claims when
`
`addressing the proposed substitute claims. Given the similarities between
`
`the proposed substitute claims and the original claims, and the similarity of
`
`Patent Owner’s corresponding arguments and evidence, it was appropriate
`
`for the Board to conserve its limited resources by referring to the similar
`
`analysis already set forth previously in the Final Written Decision.
`
`Exemplary proposed substitute claim 41, which would have replaced
`
`original claim 17, is shown in the side-by-side comparison below:
`
`Original Claim 17
`
`Substitute Claim 41
`
`A game control method for
`
`A game control method providing a
`
`providing a plurality of items usable
`
`plurality of items usable in a game
`
`in a game to a plurality of
`
`to a plurality of communication
`
`communication terminals connected
`
`terminals connected to the game
`
`to the game over a network, the
`
`over a network, the game control
`
`game control method comprising:
`
`method comprising:
`
`
`
`5
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`PGR2018-00060
`Patent 9,694,287 B2
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`
`
`
`a receiving step of receiving a
`
`request to provide a first item usable
`
`in the game to a first
`
`communication terminal of the
`
`plurality of communication
`
`terminals corresponding to a first
`
`user identification (ID) information,
`
`the first user ID information
`
`identifying a first user;
`
`an item providing step of, when
`
`a first item providing step of, in
`
`receiving a request for provision of
`
`response to receiving the request to
`
`a first item usable in the game from
`
`provide the first item from the first
`
`a first communication terminal of
`
`communication terminal,
`
`the plurality of communication
`
`determining second user ID
`
`terminals corresponding to first user
`
`information linked to the first user
`
`ID information, providing the first
`
`ID information, and transmitting the
`
`item to the first communication
`
`first item to the first communication
`
`terminal; and
`
`terminal, the second user ID
`
`information identifying a second
`
`user;
`
`a notification step of, when
`
`a notification step of, in response to
`
`providing the first item to the first
`
`transmitting the first item to the first
`
`communication terminal, sending a
`
`communication terminal,
`
`notification to a second
`
`transmitting a first notification to a
`
`communication terminal of the
`
`second communication terminal of
`
`plurality of communication
`
`the plurality of communication
`
`
`
`6
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`PGR2018-00060
`Patent 9,694,287 B2
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`terminals that the first item is
`
`terminals corresponding to the
`
`provided to the first communication
`
`determined second user ID
`
`terminal, the second communication
`
`information, the first notification
`
`terminal corresponding to second
`
`indicating that the first item is
`
`user ID information linked to the
`
`provided to the first communication
`
`first user ID information,
`
`terminal;
`
`wherein when receiving a request
`
`a determining step of, in response to
`
`for provision of the first item from
`
`receiving a request to provide the
`
`the second communication terminal
`
`first item from the second
`
`based on the notification,
`
`communication terminal,
`
`determining third user ID
`
`information linked to the second
`
`user ID information;
`
`a notification is sent to a third
`
`a transmitting step of transmitting a
`
`communication terminal of the
`
`second notification to a third
`
`plurality of communication
`
`communication terminal of the
`
`terminals that the first item is
`
`plurality of communication
`
`provided to the second
`
`terminals corresponding to the third
`
`communication terminal, the third
`
`user ID information linked to the
`
`communication terminal
`
`second user ID information, the
`
`corresponding to third user ID
`
`second notification indicating that
`
`information linked to the second
`
`the first item is provided to the
`
`user ID information, wherein the
`
`second communication terminal, the
`
`first user ID information identifies a
`
`third user ID information
`
`first user, the second user ID
`
`identifying a third user; and
`
`information identifies a second user
`
`
`
`7
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`PGR2018-00060
`Patent 9,694,287 B2
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`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
`
`a second item providing step of,
`
`second item usable in the game, in
`
`contemporaneously with
`
`addition to the first item, is provided
`
`transmitting the second notification
`
`to the second communication
`
`to the third communication
`
`terminal that is mentioned in the
`
`terminal, transmitting a second item
`
`notification sent to the third
`
`usable in the game, in addition to
`
`communication terminal by the
`
`the first item, to the second
`
`notifier.
`
`communication terminal, such that
`
`the second communication terminal
`
`is automatically rewarded with the
`
`second item for notifying the third
`
`communication terminal that the
`
`first item was requested by the
`
`second communication terminal.
`
`
`
`The Final Written Decision analyzed the limitations of the proposed
`
`substitute claims (Dec. 43–45), including the differences between the
`
`original claim language and the proposed substitute claims (id. at 56). We
`
`considered the limitations of the proposed substitute claims under each step
`
`of the 2019 Revised Guidance. Id. at 56–58. Under Prong I of Step 2A of
`
`the Guidance, Petitioner persuaded us that “the proposed substitute claims
`
`are directed to the same patent ineligible subject matter of ‘sending
`
`
`
`8
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`PGR2018-00060
`Patent 9,694,287 B2
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`notifications about an item in the game,’” like the original claims. Id. at 56.
`
`Under Prong II of Step 2A, Petitioner persuaded us that “any additional
`
`elements beyond the patent ineligible subject matter of the proposed
`
`substitute claims do not integrate the patent ineligible subject matter into a
`
`practical application.” Id. at 56–57. Under Step 2B, we agreed with
`
`Petitioner “that the additional elements of the claims, both individually and
`
`as an ordered combination, do not amount to ‘significantly more’ than the
`
`asserted patent ineligible subject matter.” Id. at 57.
`
`Patent Owner does not persuasively explain how the language of the
`
`proposed substitute claims changes the outcome of the analysis under the
`
`2019 Revised Guidance or any court decision. See generally Req. Reh’g.
`
`Patent Owner’s arguments regarding the proposed substitute claims and
`
`Patent Owner’s arguments regarding the original claims have consistently
`
`relied on the same court decisions and the same evidence, including the
`
`same declaration of Michael Zyda (Ex. 2001, “Zyda Declaration”), and
`
`similar portions of the ’287 patent’s Specification. Paper 12 (“PO Resp.”)
`
`11–43; Mot. 13–25. At the oral hearing in this proceeding on June 26, 2019,
`
`Patent Owner’s counsel argued:
`
`the substitute claims now explicitly recite this reward and this
`incentive system that the original claims provided by their
`general framework, but now we’ve specifically changed the
`claim to actually say it in there, to help even further bolster the
`patent eligibility of this and to show a little bit even further that
`this has a practical application and improvement to the
`technical field under prong 2 [of step 2A of the 2019 Revised
`Guidance].
`
`Paper 31, 53. In other words, Patent Owner’s position is that the original
`
`claims and the substitute claims both include the same practical application
`
`under Prong 2 of step 2A of the Guidance, namely a “reward” and “incentive
`
`
`
`9
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`PGR2018-00060
`Patent 9,694,287 B2
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`system.” More specifically, Patent Owner argued that the original claims
`
`recite a reward system “by their general framework” whereas the substitute
`
`claims “explicitly recite this reward.” Id. But, as discussed in detail below,
`
`Patent Owner does not persuasively explain how an explicit recitation of a
`
`reward or incentive system, which Patent Owner concedes was already
`
`recited generally by the claims, now amounts to a practical application,
`
`improvement to computer technology, or otherwise changes the outcome
`
`under the 2019 Revised Guidance. See generally Req. Reh’g.
`
`Patent Owner’s arguments in its briefs also focused on the same
`
`purported improvement to network-based video game technology, and
`
`generally relied on the same court decisions. See PO Resp. 11–43; Mot. 13–
`
`25. For example, Patent Owner’s arguments for both sets of claims relied on
`
`Data Engine Tech. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018), Core
`
`Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356, 1362
`
`(Fed. Cir. 2018), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
`
`1299 (Fed. Cir. 2016), among others. See PO Resp. 12–43; Mot. 13–25.
`
`Petitioner also addressed these cases. Opp. 6–12.
`
`Patent Owner argued that both the original claims and the proposed
`
`substitute claims recite an improvement similar to the improvement in Data
`
`Engine. PO Resp. 13–18; Mot. 14–17. The purported improvements put
`
`forward by Patent Owner were nearly identical for both sets of claims and
`
`rely on the same paragraphs of the Zyda Declaration, as shown in the side-
`
`by-side comparison below:
`
`Patent Owner’s Arguments re:
`
`Patent Owner’s Arguments re:
`
`Original Claims
`
`Proposed Substitute Claims
`
`a detailed and specific manner of
`
`a detailed and specific manner of
`
`
`
`10
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`PGR2018-00060
`Patent 9,694,287 B2
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`
`establishing a framework within
`online gaming that implements an
`affiliate system including specific
`functions of providing additional in
`game items to different
`communication terminals (i.e.,
`users) when a purchase is made, as
`a reward, and notifying the different
`communication terminals of the
`purchase, which was previously
`lacking in the conventional gaming
`art.
`(PO Resp. 14).
`at least two primary improvements
`to network-based gaming
`technology of
`(i) improving the functionality of
`network-based gaming, and
`(ii) improving the gameplay of
`network-based gaming technology.
`See Exhibit 2001 ¶¶ 23–25 and 29–
`36.
`(PO Resp. 17).
`
`establishing a framework within
`online gaming that implements an
`affiliate system including specific
`functions of providing additional in
`game items to different
`communication terminals (i.e.,
`users) when a purchase is made, as
`a reward, and notifying the different
`communication terminals of the
`purchase, which was previously
`lacking in the conventional gaming
`art.
`(Mot. 16 (emphasis omitted)).
`at least two primary improvements
`to network-based gaming
`technology of
`(i) improving the functionality of
`network-based gaming, and
`(ii) improving the gameplay (user
`experience).
`See Exhibit 2001 ¶¶ 23–25 and 29–
`36.
`(Mot. 17).
`
`
`
`
`
`Patent Owner’s arguments that the claims recite an improvement
`
`similar to the one in Core Wireless were also similar with respect to the
`
`original claims (PO Resp. 18–25) and the proposed substitute claims
`
`(Mot. 17–19). Furthermore, Patent Owner’s “inventive concept” arguments
`
`under Step Two of Alice were similar for the original claims and proposed
`
`substitute claims, as shown in the side-by-side comparison below:
`
`Patent Owner’s Arguments re:
`
`Patent Owner’s Arguments re:
`
`Original Claims
`
`Proposed Substitute Claims
`
`conventional network-based video
`gaming technology lacked any type
`
`conventional network-based video
`gaming technology lacked any type
`
`
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`11
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`PGR2018-00060
`Patent 9,694,287 B2
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`
`of framework necessary to
`implement an affiliate system,
`despite the fact that the general
`concept of affiliate systems was
`known.
`(PO Resp. 36).
`The recognition of this problem by
`the inventors further emphasizes
`that significant technological
`improvement provided by the
`claimed features to create the
`necessary framework within online
`gaming that implements an affiliate
`system including specific functions
`of providing additional in game
`items to different communication
`terminals (i.e., users) when a
`purchase is made, as a reward, and
`notifying the different
`communication terminals of the
`purchase.
`(PO Resp. 36).
`
`
`
`
`of framework necessary to
`implement an affiliate system,
`despite the fact that the general
`concept of affiliate systems was
`known.
`(Mot. 15).
`The recognition of this problem by
`the inventors further emphasizes
`that significant technological
`improvement provided by the
`claimed features to create the
`necessary framework within online
`gaming that implements an affiliate
`system including specific functions
`of providing additional in game
`items to different communication
`terminals (i.e., users) when a
`purchase is made, as a reward, and
`notifying the different
`communication terminals of the
`purchase.
`(Mot. 15).
`
`The Final Written Decision weighed Petitioner’s arguments and
`
`Patent Owner’s evidence and arguments, and determined that the cited cases
`
`do not support Patent Owner’s position. Dec. 55–57. In view of the
`
`pervasive similarities between the claim language and the arguments
`
`presented by Patent Owner, it would be an inefficient use of Board resources
`
`to provide a protracted discussion of the similar aspects of the proposed
`
`substitute claims when the Final Written Decision already contains a
`
`detailed discussion of nearly identical issues. Accordingly, it was entirely
`
`appropriate for the Board, having expounded in detail on the eligibility of
`
`the original claims in view of the similar arguments, evidence, and cited
`
`
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`12
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`court decisions, to refer back to that analysis when discussing the eligibility
`
`of the proposed substitute claims.
`
`2. Analysis Under Prong I of Step 2A
`
`Under heading “B” of the Request, Patent Owner next argues:
`
`The October 2019 Guidance clearly states that methods of
`organizing human activity are limited to only activity that falls
`with one of the sub-groupings (i.e., fundamental economic
`principles or practices, commercial or legal interactions,
`managing personal behavior, and relationships or interactions
`between people). Proposed substitute independent claims 25,
`33, and 41 clearly do not fall within any of these enumerated
`sub-groupings, which constitutes overlooking and/or
`misapprehension of the analysis under Prong I of Step 2A.
`
`Req. Reh’g 7.
`
`Patent Owner generally disagrees with our analysis under Prong I of
`
`Step 2A of the 2019 Revised Guidance. See id. at 5–8. Mere disagreement
`
`with our Final Written Decision does not show that we overlooked or
`
`misapprehended an argument. See 37 C.F.R. § 42.71(d).
`
`We note that the Final Written Decision clearly indicated that the
`
`proposed substitute claims, like the original claims, “are directed to a certain
`
`method of organizing human activity that includes ‘commercial . . .
`
`interactions (including . . . advertising, marketing or sales activities or
`
`behaviors . . . and following rules or interactions . . . ).’” Dec. 56 (quoting
`
`Guidance, 84 Fed. Reg. at 52). Patent Owner contends that “proposed
`
`substitute independent claims 25, 33, and 41 define a framework for
`
`communications between wireless communication terminals over a network
`
`within a video game” and “[t]his is not one of the enumerated categories.”
`
`Req. Reh’g 8. Yet, as discussed above, Patent Owner previously made this
`
`same argument in the briefs. See, e.g., Mot. 14–22. A request for rehearing
`
`
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`13
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`may not rehash arguments originally made in the briefs. See 37 C.F.R.
`
`§ 42.71(d).
`
`Patent Owner argues that “proposed substitute independent claims 25,
`
`33, and 41 recite and define circumstances, timing, and architecture for
`
`communications between wireless communication terminals over a
`
`computer network.” Req. Reh’g 7. According to Patent Owner, “[c]learly,
`
`this is not a fundamental economic principle or practice, commercial or legal
`
`interaction, management of personal behavior, or a relationship or
`
`interaction between people.” Id.
`
`Prong I of Step 2A of the Guidance asks us to “evaluate whether the
`
`claim recites a judicial exception” such as an abstract idea. 2019 Revised
`
`Guidance, 84 Fed. Reg. at 54 (emphasis added). Here, each of the proposed
`
`substitute independent claims recites providing a reward to a user to
`
`encourage specific behavior, and Petitioner persuaded us that the proposed
`
`substitute claims recite “advertising, marketing or sales activities or
`
`behaviors” or “interactions between people.” See Dec. 21–23, 55–56.
`
`Indeed, Patent Owner argues that the purpose of the claimed reward is
`
`“to encourage acquiring of in-game items and reward users for
`
`recommending acquired items to friends within the game.” Req. Reh’g 14
`
`(arguing that the claims improve conventional network-based gaming). Cf.
`
`Kroy IP Holdings, LLC v. Safeway, Inc., 107 F. Supp. 3d 677, 681, 691
`
`(E.D. Tex. 2015) (Bryson, J.), aff’d, 639 F. App’x 637 (Fed. Cir. 2016)
`
`(holding that claims directed to “conducting in[c]entive programs and
`
`fulfilling the awards in those programs,” were “indistinguishable in principle
`
`from the kinds of financial or business operations that were at issue in Bilski
`
`and Alice”).
`
`
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`14
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`Patent Owner also does not identify language in the claims that
`
`corresponds to the argued “circumstances, timing, and architecture for
`
`communications.” See generally Req. Reh’g. Nor has Patent Owner
`
`persuasively explained how the purported “circumstances, timing, and
`
`architecture for communications” amounts to an improvement to computers
`
`or network technology. For example, the only timing limitation that we
`
`discern in the proposed substitute independent claims is that the step of
`
`“transmitting a second item usable in the game” is performed
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`“contemporaneously with transmitting the second notification.” We do not
`
`see how, and Patent Owner does not explain how, the contemporaneous
`
`nature of these transmissions amounts to an improvement to computers or
`
`computer networks. Cf. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
`
`(Fed. Cir. 2014) (“That a computer receives and sends the information over
`
`a network – with no further specification – is not even arguably inventive.”).
`
`3. Analysis Under Prong II of Step 2A
`
`
`
`Under heading “C” of the Request, Patent Owner further argues that
`
`“the Final Decision overlooked and/or misapprehended the limited analysis
`
`applied to at least proposed substitute independent claims 25, 33, and 41
`
`under Prong II of the January 2019 Guidance.” Req. Reh’g. 9. According to
`
`Patent Owner, “the Final Decision overlooked and/or misapprehended
`
`evaluating whether the additional elements, in combination with the claim as
`
`a whole, results in an improvement to a technology” (id.) and “erroneously
`
`focuses only on an improvement to user interfaces or computer
`
`functionality” (id. at 10). Patent Owner argues that “[t]he Motion to Amend
`
`and the Opposition Reply both clearly explain that proposed substitute
`
`
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`PGR2018-00060
`Patent 9,694,287 B2
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`independent claims 25, 33, and 41 recite features that provide an
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`improvement to network-based video game technology.” Id.
`
`
`
`Again, Patent Owner seeks to rehash arguments previously presented
`
`and considered by the Board. See, e.g., Mot. 15 (arguing that the proposed
`
`substitute claims improve “network-based gaming technology”). We
`
`considered all of Patent Owner’s arguments, but Petitioner showed by a
`
`preponderance of the evidence that “any additional elements beyond the
`
`patent ineligible subject matter of the proposed substitute claims do not
`
`integrate the patent ineligible subject matter into a practical application.”
`
`Dec. 57.
`
`
`
`Focusing on the “second item providing step” of the substitute claims,
`
`Patent Owner argues that “this feature of the substitute claims provides that
`
`as a reward/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.” Req. Reh’g. 11–12.
`
`
`
`In the Final Written Decision, we determined that reciting in the
`
`proposed substitute claims a reward or incentive (“second communication
`
`terminal is automatically rewarded”) does not integrate the patent ineligible
`
`subject matter into a practical application. See Dec. 23–27, 56–57. As we
`
`noted in the Final Written Decision, Patent Owner’s declarant testified that
`
`affiliate systems wherein “a predetermined reward is given to the first
`
`person/entity” is well-known in the e-commerce art. Dec. 25 (citing
`
`Ex. 2001 ¶ 23). The Final Written Decision also explained that Patent
`
`Owner’s declarant “agreed that the Specification does not use ‘framework’
`
`or ‘affiliate system’ other than in the description of the background and
`
`
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`Patent 9,694,287 B2
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`references to it.” Id. at 26 (citing Ex. 1009 at 15:25–16:2, 24:13–26:13).
`
`Using generic computers as tools to implement a reward or incentive scheme
`
`does not integrate the abstract idea into a practical application. See 2019
`
`Revised Guidance, 84 Fed. Reg. at 55 (“merely includ[ing] instructions to
`
`implement an abstract idea on a computer” is an example of when an
`
`abstract idea has not been integrated into a practical application).
`
`
`
`Patent Owner further argues that the claimed “notification serves as a
`
`recommendation to the third communication terminal, and as a reward for
`
`notifying the third communication terminal of the acquirement of the first
`
`item, the game server provides the second communication terminal with a
`
`second item (i.e., a bonus item).” Req. Reh’g. 14. According to Patent
`
`Owner, “the claimed features improve conventional network-based gaming
`
`by allowing the use of an affiliate system to encourage acquiring of in-game
`
`items and reward users for recommending acquired items to friends within
`
`the game.” Id.
`
`
`
`Yet, as discussed above, providing a reward or incentive (e.g., “a
`
`bonus item”) to consumers “to encourage acquiring of in-game items and
`
`reward users for recommending acquired items to friends within the game”
`
`amounts to “advertising, marketing or sales activities or behaviors” and
`
`“interactions between people,” and not a “practical application” as that
`
`phrase is used in the Guidance. Merely combining several abstract ideas
`
`does not render the combination any less abstract. RecogniCorp, LLC v.
`
`Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract
`
`idea (math) to another abstract idea . . . does not render the claim non-
`
`abstract.”).
`
`
`
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`III. CONCLUSION
`
`For the above reasons, Patent Owner has not persuaded us that we
`
`misapprehended or overlooked any fact or argument that demonstrates we
`
`should modify our Final Written Decision. Therefore, we deny Patent
`
`Owner’s Request for Rehearing of the Final Written Decision in this
`
`proceeding.
`
`
`
`It is
`
`IV. ORDER
`
`ORDERED that Patent Owner’s Request for Rehearing of the Final
`
`Written Decision is denied.
`
`
`
`
`PETITIONER:
`
`Jennifer R. Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`PATENT OWNER:
`
`Jesse O. Collier
`B. Graham Nelson
`OLIFF PLC
`lmostrom@oliff.com
`bnelson@oliff.com
`
`
`
`
`
`18
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