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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`PGR2018-00050 (Patent 9,675,886 B2)
`PGR2018-00060 (Patent 9,694,287 B2)
`____________
`
`Record of Oral Hearing
`Held: Wednesday, June 26, 2019
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`
`
`
`
`PGR2018-00050 (Patent 9,675,886 B2)
`PGR2018-00060 (Patent 9,694,287 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`JENNIFER R. BUSH, ESQUIRE
`GEOFF MILLER, ESQUIRE
`MICHAEL SACKSTEDER, ESQUIRE
`Fenwick & West, LLP
`801 California Street
`Mountain View, CA 94041
`
`ON BEHALF OF THE PATENT OWNER:
`
`MATTHEW A. STANFORD, ESQUIRE
`B. GRAHAM NELSON, ESQUIRE
`JESSE O. COLLIER, ESQUIRE
`Oliff
`Attorneys At Law
`277 South Washington Street
`Suite 500
`Alexandria, VA 22314
`
`The above-entitled matter came on for hearing on Wednesday, June 26,
`2019, commencing at 1:00 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`PGR2018-00050 (Patent 9,675,886 B2)
`PGR2018-00060 (Patent 9,694,287 B2)
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`P R O C E E D I N G S
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`JUDGE JUNG: All right, this is the oral hearing for Cases
`
`PGR2018-00050 and PGR2018-00060, between Petitioner
`Supercell and Patent Owner GREE.
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`In these cases, Petitioner challenges all claims of U.S.
`Patent Nos. 9,675,886 and 9,694,287.
`
`Starting with Counsel for Petitioner, followed by counsel
`for Patent Owner, please state your names for the record.
`MS. BUSH: Good morning, Your Honors. I am Jennifer
`Bush, lead counsel for Petitioner Supercell Oy, and I am joined
`by my back- up counsel, Geoffrey Miller and Michael Sacksteder.
`If the Judges would give us some guidance today, we had
`intended to talk about 60 first and then go to 50, but we would
`love some guidance from how you would like us to address this.
`JUDGE JUNG: Well, you are free to use your time in any
`way you wish. If you want to present 60 first, that's fine with
`us; we are ready to talk about both cases.
`Is there any objection from the Patent Owner's side with
`starting with 60? Okay, that sounds great then.
`MR. STANFORD: Good afternoon. My name is Matthew
`Stanford, I am back- up counsel for GREE, the Patent Owne r, and
`here with me for the 50 will be Graham Nelson, and then lead
`counsel, Jesse Collier.
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`JUDGE JUNG: Welcome. As stated in the trial hearing
`order, each party has 75 minutes of total time to present its
`arguments for both of these cases. Petitioner will proceed first,
`followed by Patent Owner. Each side may reserve time for
`rebuttal.
`To ensure that the transcript is clear, please refer to
`demonstratives by slide number. And, one last reminder, if one
`party believes something being argued or shown is improper,
`please raise the issue at the end of the presentation rather than
`interrupting the presentation to object.
`And I believe I did not see any objections to any of the
`demonstratives in either of these cases; is that correct, Ms.
`Bush?
`MS. BUSH: That's correct.
`JUDGE JUNG: Is that correct, Mr. Stanford?
`MR. STANFORD: That's correct.
`JUDGE JUNG: Okay. Ms. Bush, you may start when you
`are ready.
`MS. BUSH: Thank you, Your Honors. Again, Jennifer
`Bush for Petitioner Supercell. I am going to begin talking about
`the case that ends in 60 for U.S. Patent 9,694,287 first, and then
`my co-counsel Geoff --
`JUDGE JUNG: Ms. Bush, I'm sorry to interrupt, but how
`much time would you like to reserve for rebuttal?
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`MS. BUSH: So I would like to spend 35 minutes on 60,
`have Mr. Miller spend 25 minutes on 50, and then 15 minutes
`combined for rebuttal, if that works.
`JUDGE JUNG: Thank you.
`MS. BUSH: Okay. So can we just skip directly to slide 4,
`please? Okay.
`So in this case the claims are directed to the abstract idea
`of sending notifications about an item in a game, and this is just
`a pictorial representation of Figure 4 from the patent.
`Slide 5, please.
`Looking at the claim itself, this is Claim 17, which is the
`method claim, it recites a game control method, and what I've
`highlighted here in red are the aspects of the claim that are
`related to that notification. So there is an actual notification
`step, which is actually only one of two affirmatively recited
`actions we have we have --
`JUDGE JUNG: Ms. Bush, Judge Browne is having a little
`difficulty hearing you --
`MS. BUSH: Oh --
`JUDGE JUNG: -- if you can just --
`MS. BUSH: -- I can step a bit closer. Is that helpful?
`JUDGE JUNG: Thank you.
`MS. BUSH: There's only two affirmatively recited steps
`here, we have an item-providing step and a notification step.
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`And the notification step, as well as the notification mentioned
`in one of the wherein clauses, really are the heart of this claim,
`that the claims are directed to sending notifications about an
`item in a game.
`If we could flip to slide 6, please?
`The Board did agree --
`JUDGE DEFRANCO: Ms. Bush, this is Judge DeFranco.
`Could I just stop you for a moment and ask the technical people
`if they could turn up your microphone somehow?
`MS. BUSH: Absolutely.
`JUDGE DEFRANCO: Because I'm having trouble hearing
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`you.
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`MS. BUSH: No problem.
`(Pause.)
`MS. BUSH: Speaking into the mike, is this better?
`JUDGE BROWNE: I don't know, is it better?
`MS. BUSH: Is it better?
`JUDGE DEFRANCO: No, it's not.
`(Pause.)
`(Off the record.)
`MS. BUSH: Is that better? No.
`JUDGE BROWNE: I can't hear anything at all right now.
`(Off the record.)
`MS. BUSH: Okay, can you hear me --
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`JUDGE BROWNE: That's much better.
`MS. BUSH: -- can you hear me now?
`JUDGE BROWNE: Yes.
`MS. BUSH: Okay, great.
`If we can go back, Mike to slide 4? I'm sorry, slide 5.
`Just the claim here, what I had started talking about is
`there's two actively recited steps here, which is an item-
`providing step and a notification step, and then what I have
`highlighted in red are the two aspects that relate to the
`notification step and then there's another notification mentioned
`later in a wherein clause. And the claim steps are directed to
`sending notifications about an item in a game -- slide 6, please --
`which the Board agreed with on institution.
`Slide 7, please.
`If you look at slide 7, Patent Owner argues that that's not
`correct, that we've overgeneralized the claim and that the claims
`are instead directed to a specifically articulated and detailed
`framework of an affiliate system incorporated into network-
`based gaming. They don't provide any analysis of why this
`articulation could be more accurate and the Board had disagreed
`with them that we had overgeneralized the claim.
`And looking at slide 8, please?
`That language of being directed to rely on language not
`found in any of the claims or in the specification, which are a
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`framework and an affiliate system. Those words just don't exist
`and aren't claimed. And in fact Patent Owner's expert agreed
`with that, that those terms were not there and present in the
`claims.
`Slide 10, please.
`JUDGE JUNG: Ms. Bush, but you would agree that Patent
`Owner's expert indicated that affiliate system is described in the
`background and then referred back to in the summary of the
`invention, and it seems to be what the body of the S pecification
`seems to be describing?
`MS. BUSH: So it does seem to be intended to that.
`Mike, would you go back to slide 5 real quick?
`However, the claims themselves don't capture that language
`and in fact in -- we have a motion to amend in this case and even
`in the motion to amend they had the opportunity to go back and
`rectify that, and they opted not to. All we have here is an item-
`providing step and a notification step. They have sort of read in
`those aspects of the S pecification that talk about an affiliate
`system being applied, but that just isn't claimed, unfortunately.
`Slide 10, please.
`Beginning with the Alice analysis, at Step 1 we have two-
`prong analysis that we will be talking about a bit more,
`beginning with the abstract idea category of method of
`organizing human activities.
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`Slide 11, please.
`So the benefit that's touted by the patent and by Patent
`Owner throughout their briefing is that the patent improves the
`game-play of network-based gaming. The expert had -- their
`expert, Patent Owner's expert, had called the game-play
`experience a vital aspect of gaming technology and a critical
`factor to keeping people playing the game. This type of game-
`play falls squarely under the methods of organizing human
`activity in the Smith , Guldenaar, and Planet Bingo cases. And in
`fact, in the guidance that was issued in January, the Smith case is
`listed under methods of organizing human activity as an example
`of a case that fits in that framework.
`Can you skip to slide 14?
`And, Your Honors, apologies for all the skipping. We
`prepared our demonstratives before we knew these would be
`combined in a shorter time frame, so they do skip around a bit.
`Moving to the fact that the claims recite only result-
`oriented functions without a non-abstract means of achieving
`those results. These are generalized steps recited as performed
`on generic hardware and the Board agreed to this on institution,
`and also that the claims were similar to the claims in Two- Way
`Media and Affinity Labs. I won't go into detail in those cases, I
`think they're very well covered in the briefing by both parties,
`but, again, on institution those were found to be similar to the
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`pending claims.
`Slide 15, please.
`Patent Owner tries to argue that the claims are more similar
`-- are distinguished from Two -Way Media and Affinity Labs, and
`more similar to those in Data Engine ; this seems like a bit of a
`stretch. The claims of the '287 patent don't recite a structure at
`all, much less the type of specific structure of a user interface
`that was the technical solution in Data Engine .
`And I think, you know, the notifications, I guess -- to be
`the most generous that I could be, the notifications have to be
`displayed somewhere, I suppose, but the claim never says even
`what the notification would look like, much less a structure for
`it, and it really could be any notification inside or outside of the
`game, including, for example, in email. That would be covered
`by the claims the way it's articulated.
`Slide 17, please, if we could skip ahead?
`Turning to prong 2, prong 2 looks at whether the claim as a
`whole integrates the exception into a practical application of the
`exception. One of the examples listed in the new guidance is
`whether an additional element reflects an improvement in the
`functioning of a computer, or an improvement to other
`technology or technical field. Upon institution, the Board had
`indicated that it believed that it did not, and there hasn't been
`anything in the briefing that should persuade the Board
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`otherwise.
`Can we skip to slide 19, please?
`One other example that prong 2 provides is an additional
`element that uses the judicial exception in a meaningful way
`that's beyond generally linking the use of a judicial exception to
`a particular technological environment.
`And those words are actually particularly meaningful here,
`because the Patent Owner has admitted and we have in the
`background that this affiliate system that they talk about as being
`applied here actually exists in the technical environment of e -
`commerce and all they've done is link to the particular technical
`environment of gaming. So it's done exactly -- it lacks exactly
`what this element would require to take it out of being an
`abstract idea.
`Can I have slide 20, please?
`Again, I'm not going to spend a lot of time on the cases,
`because the briefing is pretty substantial, but the claims are
`distinguished from each of Core Wireless, Enfish, and McRO ,
`because they don't recite any specific improvement in technology
`or programming and don't have a specific implementation of a
`solution to a problem in the software arts.
`Can I have slide 22, please?
`So Patent Owner put forth an argument under prong 2 that
`the claimed features are detailed enough so as to not preempt all
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`ways of establishing a framework that implements an affiliate
`system. However, when I questioned their expert during
`deposition, he was not able to find an example. I had
`specifically asked, I would love one example of establishing a
`framework that implements an affiliate system that is not
`covered by these claims, and he said he couldn't think of one. So
`even their own expert is not able to come up with an example
`that wouldn't be included there.
`Can I have slide 24, please?
`Okay, I am moving now to S tep 2B. Here, the Alice
`analysis determines whether any elements beyond the abstract
`idea transform the claim into a patent-eligible invention. Patent
`Owner seems to conflate the steps of this analysis and goes back
`to what they call a feature, which, when we dug down a little bit,
`is the very same affiliate system argued in Step 1, and that was
`affirmed by their expert.
`Slide 25, please.
`So the analysis under Step 2, we're going to show the
`claims are performed on a generic computer using routine
`functions, though the claims don't in fact recite a means to
`promote acquisition of an item in the game. That's the
`Berkheimer analysis that they haven't captured the invention, and
`also that the claim limitations are in fact well understood,
`routine, and conventional.
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`Slide 26, please.
`So considering the abstract idea to which the claims are
`directed, the only elements beyond that idea are a conventional
`client server interaction providing items to users and identifying
`users by their ID numbers. And we questioned Patent Owner's
`expert about each of these and each time he did in fact admit that
`these were conventional. I have some quotes there from him and
`some citations to the transcript record where he went through and
`admitted that each of these were in fact conventional.
`Slide 27, please.
`Also in the institution decision the Board had listed some
`of the functionally named components that I've listed here and
`acknowledged that these were in fact conventional in that
`analysis.
`Slide 28, please.
`Moving to Berkheimer, which I will address briefly here,
`even though it's pretty well covered in the briefing. One of the
`important aspects of the Berkheimer case, as I'm sure you know,
`is that the improvements in the S pecification can create a factual
`dispute about whether something is well understood, routine, or
`conventional, but only to the extent that those improvements are
`captured in the claims and, as we're showing here, they are not in
`fact.
`The Specification purports to disclose a game system that's
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`for promoting the acquisition of an item in the game; that's not,
`however, the scope of the claims. The claims talk about
`providing an item in response to a request for that item, sending
`a notification about the item to a second communication
`terminal, and sending a notification about the item to a third
`communication terminal. There's nothing in the claims that say
`promoting. As expert admitted -- can I have slide 29? As the
`expert admitted, there's nothing that recites encouraging and
`there's nothing that recites promoting in the claims themselves;
`that simply just isn't recited.
`Can you go back actually to slide 28 briefly?
`And so the fact that the Specification focuses on a game
`system for promoting the acquisition of an item in a game just
`isn't captured by the claims. They talk about items and they talk
`about notifications, but there's nothing there about how that
`would promote the acquisition of further items.
`Can we jump to slide 30, please?
`JUDGE JUNG: Before you go on.
`MS. BUSH: Yes.
`JUDGE JUNG: How about the mere act of sending the
`notification, would that promote the acquisition of an item?
`MS. BUSH: That actually is addressed on the very next
`slide. Thank you. On slide 30, I have two -- I had questioned
`Patent Owner's expert about that directly and I said, is it possible
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`for the players to receive a notification, but not be motivated to
`acquire another item, and their expert said, yeah, that was
`possible. And then, secondly, was it possible to receive several
`notifications about various friends receiving various items, and
`being providing various items, and then do nothing about it at
`all, and their expert admitted, yes, that was possible.
`So the fact that those notifications are provided is in fact
`claimed; whether that would cause the user to do something
`about that or do something in response to that is not clear. And,
`for those reasons, the purported improvements aren't captured in
`the claims under Berkheimer, so there really isn't even a factual
`issue present as to whether the claims are well understood,
`routine, or conventional.
`Slide 31.
`There's a little bit of language I've highlighted here,
`because as with "promoted" and "encouraged" not being in the
`claims, Patent Owner's briefing -- and this is from the S ur-Reply
`-- uses the words "rewards" and "incentives" quite a bit as well.
`Those words also are not in the claims, so I think that that's
`important to realize that they're doing some characterization
`there that just isn't what they've recited.
`Slide 32.
`And then even if we gave a little bit of leeway and said that
`the very same elements considered under Step 1 could in fact be
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`considered under Step 2, those elements still are well
`understood, routine, and conventional. The S pecification itself
`talks about the fact that affiliate systems were known in
`advertising for the purpose of e-commerce. And when it was
`pointed out to Patent Owner's expert that the steps that recite the
`notification, so the actual step of a notification step, and then the
`first wherein clause where it talks about another notification
`being sent, those don't even talk about being in the context of
`games. If you took out the fact that the items are, quote, "usable
`in a game," that's in the preamble and in the first step, there's
`actually nothing in this claim that requires these notifications to
`even be in the game context and, thus, would cover other
`contexts as well.
`And slide 33, please.
`The expert also admitted that the following were known in
`the art: requesting and providing items, utilizing user ID
`information, client-server architectures, client-client
`interactions, and basically all of the hardware provided by this
`patent.
`And so, as a whole, the claims really are directed to that
`abstract idea of sending notifications about items in a game and
`then, when you strip those away, all that remains is features that
`already existed in prior art games.
`Can we jump to slide 35, please?
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`I'm not going to spend a lot of time on the dependent
`claims; we do have a fair amount in the briefing there. None of
`the dependent claims add any features that further capture the
`purported improvement or they all are directed to the same
`abstract idea, and they don't add any limitations that resolve the
`deficiencies of the independent claims.
`And then, just to sum up this section, I'm going to flip a bit
`in the slides. So if you would look at slide 3, way back at the
`beginning, just because there's a nice summary here. This is just
`to point out, it's sort of an easy-to-access look for the Judges that
`in Patent Owner's S ur-Reply they rehash four different arguments
`that actually they lost on institution. That has to do with, one,
`overgeneralizing the claims, the Board found that that wasn't the
`case; what the claims are directed to, and the Board had found in
`Petitioner's favor on institution at least; that the claims do not
`integrate the judicial exception into a practical application; and
`that there is support for Petitioner's position that the claims
`recite well understood, routine, and conventional activities.
`So that's on slide 3, it just has a nice little summary there.
`So, apologies for jumping around.
`JUDGE JUNG: And, Ms. Bush, on the slide, there's a
`couple places where you seem to treat the Institution Decision as
`a final determination, but would it be more correct to say that
`you're trying to indicate that we made a preliminary decision, or
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`a preliminary determination, and then the record hasn't changed
`significantly, so, therefore, that determination shouldn't change;
`is that what you're meaning to -- ?
`MS. BUSH: That's correct, Your Honor. So, obviously, it's
`a preliminary determination in the I nstitution Decision; however,
`in the briefing, there really hasn't been anything provided by
`Patent Owner that should change the Board's mind about these
`aspects that originally were sort of part of that preliminary
`decision.
`I'm going to jump to 112, so are there any questions
`regarding 101 before I do that?
`JUDGE JUNG: I have no questions.
`MS. BUSH: Okay, great.
`Can we jump all the way to slide 40? Okay.
`So slide 40 is where we start talking about 112, and this is
`112(b), indefiniteness.
`So there are two limitations I'll be talking about, so the
`first one is the limitation "when receiving a request for provision
`of the first item from the second communication terminal, a
`notification is sent to the third communication terminal is
`indefinite." And this really all revolves around that first word,
`"when." So what does it mean that the notification is sent when
`receiving a request? It's unclear from the claims and actually
`from the Specification as well.
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`The standard meaning of "when," which should be sort of at
`the time of something happening, it's unclear how that would
`work, because at the time that the request is received, the game
`server has yet to identify, obtain the identity of the user who
`should receive the notification. So it's not clear how they could
`be sent that notification when that identification has not yet been
`made in a further "wherein" step.
`The Patent Owner tries to argue that that "when" means
`something different. In the Patent Owner's R esponse, they
`argued that it meant at some subsequent time. They cite the
`declaration for that, but it doesn't actually support that
`statement. And then in the S ur-Reply they've modified that a bit
`and say that that "when" means at the same or subsequent time.
`As I noted, at the same time would have the problem that I spoke
`about earlier, and at some subsequent time just doesn't have any
`support for why that construction would apply. So it seems like
`there's, at best, lack of clarity even by Patent Owner when
`they're saying it could be the same or some subsequent time.
`Can we turn to slide 41, please?
`Patent Owner's expert did actually testify about this term as
`well. I specifically asked about the limitation and this particular
`part beginning with the term "when," and asked what it meant,
`and Patent Owner's expert said at the time of receiving a request,
`which is the construction that Petitioner was offering and which,
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`as I noted, is very unclear how that could happen when they don't
`have that destination yet.
`Slide 42.
`So this is the second limitation that has an indefiniteness
`problem. And here we have a second item usable in the game, in
`addition to the first item, which is provided to the second
`communication terminal that is mentioned in the notification sent
`to the third communication terminal by the notifier, and that's
`indefinite.
`Again, what we're focusing on here is it just says a second
`item usable in the game in addition to the first item. It doesn't
`say anything in the claim about when this occurs, it just says it's
`provided, and Patent Owner has taken a position that providing
`the second item, quote, "in addition to the first item," could
`actually have two different meanings.
`The first meaning they offer is that the first and second
`item are provided simultaneously, and the second offer is that the
`first item is provided prior to the second item. However, this
`raises an indefiniteness issue, because, as Patent Owner admits,
`this language might have several meanings and it's not at all
`clear which of those is the correct one.
`Patent Owner tries to argue newly in the S ur-Reply that this
`is just breadth, that it could cover either of these, but the
`problem is that these are two distinct possibilities. Either they're
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`sent at the same time or they're sent separately, they're not sort
`of a scope- of-breadth issue that we're dealing with here.
`JUDGE JUNG: Okay. Ms. Bush, I just wanted to ask you a
`hypothetical.
`MS. BUSH: Yes.
`JUDGE JUNG: So assume that there's two dependent
`claims, one of the dependent claims has the first and second
`items are provided simultaneously, and another dependent claim
`says the first item is provided before the second item, would it
`still be indefinite?
`MS. BUSH: I think, you know, the concept of claim
`differentiation I think is what you're pointing to there; we would
`have to have something broader in the independent claim. I
`think, though, that it might be even broader than that if there's
`some other possibility that could exist. But to your point, I think
`that would be clearer, but only from the standpoint of claim
`differentiation that you would be able to make that distinction
`from those two dependent claims, hypothetically.
`JUDGE JUNG: And those dependent claims were not --
`MS. BUSH: No, the --
`JUDGE JUNG: -- were not -- are not in this patent?
`MS. BUSH: Correct, correct.
`Okay, slide 43, please?
`And then when questioned about, you know, between these
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`two, how exactly would one of skill in the art know whether
`these first and second items would be sent simultaneously or
`serially, Patent Owner's expert called this language an indefinite
`set of text. We agree with that, of course. And then during the
`deposition we specifically asked, "So there's two notifications,
`right? The second step has a notification sent to a second
`communication terminal and then the third element has a
`notification sent to the third communication terminal. Is it clear
`to you which one is referred to in this last element?"
`And he said, "It could be clearer."
`So we agree that there's a clarity problem here and it would
`be nearly impossible for one of skill in the art trying to figure
`out if they infringe this claim, if they do or not, based on not
`knowing whether they need to be sent simultaneously or serially.
`JUDGE JUNG: And, Ms. Bush, I don't recall, but did you
`ask him if he understood the legal definition of definiteness
`versus indefiniteness before this?
`MS. BUSH: I don't believe we questioned that. I can
`double check in the briefing, but I believe he was advised of that
`definition and stated that in his declaration. So I can go back
`and check that during --
`JUDGE JUNG: This part of the deposition, is he using
`indefiniteness in the legal sense?
`MS. BUSH: I don't believe we dug down into that in
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`particular.
`JUDGE JUNG: Okay.
`MS. BUSH: Okay. I'm going to shift gears slightly and
`talk briefly about the motion to amend, slide 44.
`So this is probably very small and difficult to see, but
`here's a claim markup that Patent Owner provided, and then it
`has the purported support from the application and the parent
`application on the right there.
`We found three different deficiencies in the motion to
`amend.
`Slide 45, please.
`The first one is, under Aqua Products, merely citing to the
`Specification alongside of the proposed substitute claims without
`any explanations is insufficient support. And the PTAB, of
`course, said similarly in the Cisco Systems case that just having
`this claim chart with S pec cites did not excuse the Patent Owner
`from setting forth how the original disclosure provides written
`description support for the proposed substitute claims. That's
`exactly what Patent Owner has done here. We just have this
`chart, as you saw in the prior slide, they haven't provided any
`further description of how those aspects supported or that, in
`view of the 200 words added as compared to Claim 1, how the
`substitute claim as a whole would be supported by the
`Specification.
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`Slide 46, please.
`The second deficiency is there are actually aspects of the
`claims that are broadened by the proposed amendments. In
`particular, there are steps that are performed by an item provider
`and notifier and a selection panel generator in the original
`claims. In the motion to amend claims, those steps are all now
`performed by a processor, which is broader.
`And if we look at slide 47, there's actually a picture of sort
`of showing the hierarchy of these
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