Trials@uspto.gov
`571-272-7822
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` Paper 32
` Entered: September 26, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00060
`Patent 9,694,287 B2
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
` Paper 32
` Entered: September 26, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE INC.,
`Patent Owner.
`____________
`
`Case 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.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`Denying Patent Owner’s Motion to Amend
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
`
`PGR2018-00060
`Patent 9,694,287 B2
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`
`INTRODUCTION
`I.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–24 of U.S. Patent No.
`9,694,287 B2 are unpatentable. We also deny Patent Owner’s Contingent
`Motion to Amend.
`A. Procedural History
`Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of a post-grant review of claims 1–24 of
`U.S. Patent No. 9,694,287 B2 (Ex. 1001, “the ’287 patent”). GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6. Pursuant to
`35 U.S.C. § 324, we instituted a post-grant review. Paper 9 (“Dec. to Inst.”).
`Specifically, we instituted review of all challenged claims on all presented
`challenges. Dec. to Inst. 16, 20.
`After institution, Patent Owner filed a Response (Paper 12, “PO
`Resp.”), to which Petitioner filed a Reply (Paper 21, “Pet. Reply”), and
`thereafter, Patent Owner filed a Sur-Reply (Paper 23, “PO Sur-Reply”).
`Patent Owner also filed a Contingent Motion to Amend (Paper 13), to which
`Petitioner filed an Opposition (Paper 22). Patent Owner filed a Reply to
`Opposition to Motion to Amend (Paper 24), and Petitioner filed a Sur-Reply
`to Opposition to Patent Owner’s Motion to Amend (Paper 27).
`An oral hearing in this proceeding was held on June 26, 2019; a
`transcript of the hearing is included in the record (Paper 31, “Tr.”).
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`B. Related Proceedings
`The parties indicate that there are no related matters. Pet. 1; Paper 5,
`
`2–3.
`
`C. Grounds of Unpatentability at Issue and Evidence Relied Upon
`We instituted review of claims 1–24 of the ’287 patent on the
`following grounds:
`Claims Challenged Statutory Basis
`1–24
`§ 101
`1–24
`§ 112(a)
`1–24
`§ 112(b)
`
`Reference(s)
`
`
`
`
`
`Dec. to Inst. 16, 20.
`Petitioner does not provide any expert testimony in support of its
`grounds and does not propose a level of ordinary skill. Patent Owner
`proffers a declaration of Michael Zyda, D.Sc. Ex. 2001.1 A deposition
`transcript for Prof. Zyda was filed. Ex. 1009.
`D. The ’287 Patent (Ex. 1001)
`The ’287 patent issued July 4, 2017, from an application filed
`September 27, 2016, which is a continuation of an application filed April 16,
`2014. Ex. 1001, at codes (22), (45), (63), 1:9–15.
`The ’287 patent “relates to a game server that may promote
`acquisition of an item.” Id. at 1:19–20. According to the ’287 patent, in the
`section titled “Background Art,” “[c]onventionally, there has been an
`
`
`1 The record contains two exhibits with the number “2001.” One is the
`“Declaration of Michael Zyda,” and the other is Dr. Zyda’s curriculum vitae.
`References in this Decision to Exhibit 2001 refer to the “Declaration of
`Michael Zyda.”
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`affiliate system as advertisement that uses a network.” Id. at 1:26–27. “In
`the affiliate system, a person introduces a product and the like of a seller by
`setting a link or the like on a webpage and, when a customer clicks through
`the link or the like and acquires the product by purchasing it or the like, a
`predetermined reward is given to the person (for example, PLT1).” Id. at
`1:27–32. “[S]ince many customers refer to an introduction or evaluation
`made by their acquaintances in determining the purchase, the affiliate system
`is very useful.” Id. at 1:32–35.
`The only stated “object” of the ’287 patent “is to provide a game
`server that employs a notification system associated with acquisition of the
`item in the game and thus is capable of promoting the acquisition of the
`item.” Id. at 1:54–58. Figure 1 of the ’287 patent is reproduced below.
`
`Figure 1 is a block diagram of a game system. Game server 1
`provides a predetermined game to communication terminals 2. Id. at 5:15–
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`17. Storage unit 11 includes user information 111 and notification history
`information 112. Id. at 5:24–26. When a first user at communication
`terminal 2 acquires an item, a notification is sent to a second user at another
`communication terminal 2. Id. at 5:40–45. In that regard, user
`information 111 includes information that associates the first and second
`users. Id. at 5:27–31. Notification history information 112 is updated when
`the notification is sent. Id. at 5:55–67. An additional item may be provided
`to the first user when the second user acquires the item. Id. at 7:6–11. A
`third user can also receive a notification and can acquire the item. Id. at
`7:18, 38, Fig. 4.
`E. Illustrative Claim
`The ’287 patent has 24 claims, all of which Petitioner challenges.
`Claims 1, 9, and 17 are independent, and claim 17 is reproduced below.
`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
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`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.
`
`Ex. 1001, 14:36–15:3.
`
`
`ELIGIBILITY FOR POST-GRANT REVIEW
`II.
`The post-grant review provisions of the Leahy-Smith America Invents
`Act (“AIA”)2 apply only to patents subject to the first inventor to file
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`file provisions apply to any application for patent, and to any patent issuing
`thereon, that contains or contained at any time a claim to a claimed invention
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(1).
`Furthermore, “[a] petition for a post-grant review may only be filed not later
`than the date that is 9 months after the date of the grant of the patent or of
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`see also 37 C.F.R. § 42.202(a) (setting forth the same).
`
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`2 Pub. L. No. 112-29, 125 Stat. 284 (2011).
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`Petitioner contends that the “effective filing date of the challenged
`claims is no earlier than April 19, 2013” (Pet. 15), which is after March 16,
`2013. The ’287 patent issued on July 4, 2017 (Ex. 1001, at code (45)), and
`the instant Petition was filed on April 4, 2018 (see also Paper 3, 1 (according
`the Petition a filing date of April 4, 2018)), which is within nine months of
`the date of the grant of the ’287 patent. Patent Owner does not present any
`argument or evidence disputing the eligibility of the ’287 patent for post-
`grant review. See generally PO Resp.
`We, thus, determine on the full record before us that the ’287 patent is
`eligible for post-grant review.
`
`
`III. ANALYSIS
`To prevail in its challenges, Petitioner must prove unpatentability by a
`preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d).
`A. Claim Interpretation
`In the present post-grant review, claim terms in the ’287 patent, which
`is an unexpired patent, are interpreted according to their broadest reasonable
`construction in light of the specification of the ’287 patent. 37 C.F.R.
`§ 42.200(b); see also Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard).3
`
`
`3 On October 11, 2018, the Office revised its rules to harmonize the Board’s
`claim construction standard with that used in civil actions under 35 U.S.C.
`§ 282(b) in federal district court. Changes to the Claim Construction
`Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial
`and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37
`C.F.R. § 42.100(b) effective November 13, 2018). This rule change does
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`Petitioner does not propose any express interpretations. See Pet. 15–
`16. Petitioner, instead, contends that the “independent claims are written in
`such non-specific and functional terms that they cover any system,” “can be
`anything . . . so long as they perform the recited function,” and “provide[] no
`guidance as to how those functions are performed.” Id. at 18–19.
`Patent Owner proposes interpretations for “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” (PO Resp. 6–8) and “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” (id. at 9–11).
`We determine that no express interpretation is required for any claim
`term. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (construing explicitly only those claim terms in controversy and
`only to the extent necessary to resolve the controversy).
`B. Challenge Under 35 U.S.C. § 101
`The U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
`exclude from patenting “[l]aws of nature, natural phenomena, and abstract
`ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
`In determining whether a claim falls within the excluded category of abstract
`ideas, we are guided by the U.S. Supreme Court’s two-step framework in
`Alice and Mayo. Id. at 217 (citing Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 566 U.S. 66, 77–78 (2012)). In accordance with that framework,
`
`
`not here. See Paper 3, 1 (according a filing date of April 4, 2018 to the
`Petition).
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`we first determine whether the claim is “directed to” a patent-ineligible
`abstract idea. Id. (“On their face, the claims before us are drawn to the
`concept of intermediated settlement, i.e., the use of a third party to mitigate
`settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
`(“Claims 1 and 4 in petitioners’ application explain the basic concept of
`hedging, or protecting against risk.”).
`If the claim is “directed to” a patent-ineligible abstract idea, we turn to
`the second step of the Alice and Mayo framework and consider the elements
`of the claim, both individually and as an ordered combination, to determine
`whether the additional elements transform the nature of the claim into a
`patent-eligible application of the abstract idea. Alice, 573 U.S. at 217. This
`second step involves a search for an “inventive concept”—an element or
`combination of elements sufficient to ensure that the claim amounts to
`“significantly more” than the abstract idea itself. Id.
`The Office published guidance on subject matter eligibility. 2019
`Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
`2019) (“Guidance”). Under the Guidance, we first look to whether the claim
`recites:
`(1) any judicial exceptions, including certain groupings of abstract
`ideas (i.e., mathematical concepts, certain methods of organizing
`human activities such as a fundamental economic practice, or
`mental processes); and
`(2) additional elements that integrate the judicial exception into a
`practical application.
`Guidance, 84 Fed. Reg. at 53–55.
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`Only if a claim (1) recites a judicial exception and (2) does not
`integrate that exception into a practical application, do we then look to
`whether the claim:
`(3) adds a specific limitation beyond the judicial exception that is not
`“well-understood, routine, convention” in the field; or
`(4) simply appends well-understood, routine, conventional activities
`previously known to the industry, specified at a high level of
`generality, to the judicial exception.
`Id. at 56–57.
`1. Whether the Claims Are Directed to Patent Ineligible
`Subject Matter
`
`
`a. Assertions in the Petition
`Petitioner argues that each of independent claims 1, 9, and 17 is
`directed to the same patent ineligible subject matter. Pet. 16–17. Petitioner
`also asserts that each of the independent claims recites the same generalized
`steps. Id. at 18 (citing Ex. 1001, 12:14–51, 13:23–59, 14:36–15:3).
`In particular, Petitioner contends that “the claims of the ’287 patent
`are directed to . . . sending notifications about an item in a game.” Pet. 28;
`see also id. at 35, 56 (repeating the same contended patent ineligible subject
`matter). According to Petitioner, the claims are not patent eligible because
`(1) they are directed to generalized steps performed on a computer using
`conventional computer activity, (2) recite merely wireless communications
`to an out-of-region recipient without a particular way of performing the
`function, or (3) recite result-based functional language in a method of
`routing information. Id. at 28–29 (citing Two-Way Media Ltd. v. Comcast
`Cable Commnc’n, LLC, 874 F.3d 1329, 1337–38 (Fed. Cir. 2017); Affinity
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`Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–1259 (Fed. Cir.
`2016)).
`Petitioner contends that the claims are open-ended and undefined as to
`the content that may be included in the required notification, recite result-
`based functional language, and recite a sequence of abstract steps without
`any particular form for the notifications or method of delivering the
`notifications. Id. at 30 (citing Ex. 1001, 14:47–50, 14:57–58). Petitioner
`also argues that the claims recite only the result of providing items and
`sending notifications without specifying how those results are achieved.
`Id. at 31–32 (discussing McRO Inc. v. Bandai Namco Games Am. Inc., 837
`F.3d 1299, 1314–1316 (Fed. Cir. 2016)). Petitioner further argues that the
`Specification of the ’287 patent describes an abstract idea without any
`specific information about how notifications promote acquisition of an item.
`Id. at 29–30 (citing Ex. 1001 Abstract, 14:36–15:3).
`Petitioner also asserts that claims similar to those of the ’287 patent
`have been rejected as abstract. Id. at 31 (citing Elec. Power Grp., LLC v.
`Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016); In re TLI Commc’ns LLC
`Patent Litig., 823 F.3d 607, 612–613 (Fed. Cir. 2016); Internet Patents
`Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)).
`Petitioner contrasts the claims of the ’287 patent to the claims discussed in
`McRO, 837 F.3d at 1314–1316. Id. at 31–32.
`According to Petitioner, the claims of the ’287 patent do not recite any
`improvement to computers or video game technology, and, instead, recite
`“generalized steps that achieve functional results” that “can cover any
`system that provides for these results.” Id. at 32–33 (citing McRO, 837 F.3d
`at 1313–1314; Ex. 1001, 5:14–7:17, 7:39–54, 8:60–9:5), 34 (contrasting
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`claims with those discussed in Enfish, LLC v. Microsoft Corp., 822 F.3d
`1327 (Fed. Cir. 2016)); see also id. at 34 (citing Internet Patents, 790 F.3d at
`1348), 35 (citing Ex. 1001, 5:20–22, 6:26–43, 7:42–43).
`b. Assertions in the Patent Owner’s Response
`Patent Owner responds that Petitioner improperly overgeneralizes the
`claims to assert that they are directed to patent ineligible subject matter, but,
`according to Patent Owner, the “claims are directed to a specifically
`articulated and detailed framework of an affiliate system incorporated into
`network-based gaming, which results in an improvement to network-based
`gaming technology.” PO Resp. 12–13; see also PO Sur-Reply 1 (arguing
`that Petitioner oversimplifies and overgeneralizes the claimed features of
`claims 1–24” and the “improper characterization of claims 1–24 is not
`supported by the 287 Patent and is entirely contrary to the extensive
`evidence provided by Patent Owner”).
`Patent Owner argues that claims are directed to “an improvement in
`the user experience,” like the claims at issue in Data Engine Technologies
`LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018). PO Resp. 13–14.
`Patent Owner contends that the claims of the ’287 patent “improve[]
`network-based gaming technology by (i) improving the functionality of
`network-based gaming, and (ii) improving the gameplay of network-based
`gaming technology” by “set[ting] forth a detailed and specific manner of
`establishing a framework within online gaming that implements an affiliate
`system.” Id. at 14 (citing Ex. 1001, 1:26–35, 5:9–19, 6:10–7:32; Ex. 2001
`¶¶ 23–25, 29–36); see also id. at 15–16 (citing Ex. 1001, 5:9–19, 5:39–46,
`6:10–32, claims 1, 2, 9, 17) (arguing how the claims “provide specific steps
`detailing the methods of constructing a framework over the network”), 17
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`(contending the claims provide at least two improvements to network-based
`gaming technology); PO Sur-Reply 3 (citing Ex. 2001 ¶¶ 23–25, 29–36)
`(arguing that, as understood by one of ordinary skill in the art, the claims
`recite “a detailed and specific manner of establishing a framework within
`online gaming to implement an affiliate system into network-based gaming,
`which results in an improvement to network-based gaming technology”).
`Patent Owner also asserts that, like the claims in Data Engine, the claims of
`the ’287 patent improves processes carried out by generic computer
`hardware that result in an improvement in computer functioning. PO Resp.
`17 (citing Ex. 1001, 5:9–19, 5:39–46, 6:10–7:32).
`In response to Petitioner’s comparison of the claims of the ’287 patent
`to the claims at issue in Enfish and McRO, Patent Owner argues that
`Petitioner impermissibly overgeneralizes the claims of the ’287 patent, that
`the claims of the ’287 patent “are directed to a detailed and specific manner
`of establishing a framework within online gaming that improves network-
`based gaming technology by implementing an affiliate system,” and that the
`claims improve network-based gaming technology. Id. at 18–25 (quoting
`Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356,
`1363 (Fed. Cir. 2018)) (citing Pet. 28; Ex. 1001, 1:26–35, 5:9–19, 5:39–46,
`6:10–7:32, 10:3–15, 11:1–9; Ex. 2001 ¶¶ 23–25, 29–36), 25–27 (citing
`Enfish, 822 F.3d at 1332, 1336, 1337–39; Ex. 1001, 10:3–15, 11:1–13;
`Ex. 2001 ¶¶ 23, 25, 29, 35, 36), 28–30 (citing McRO, 837 F.3d at 1307,
`1313–14; Pet. 28; Ex. 1001, 10:3–15). In distinguishing over Affinity Labs
`and Two-Way Media, Patent Owner argues that the challenged claims recite
`specific details and functions to establish a framework within online gaming
`and improve network-based gaming technology by implementing an affiliate
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`system. Id. at 30–32 (citing Data Engine, 906 F.3d at 1010–11; Two-Way
`Media, 874 F.3d at 1337–38).
`c. Assertions in Petitioner’s Reply
`Petitioner replies that Patent Owner provides no analysis as to how the
`claims are directed to the asserted framework. Pet. Reply 1 (citing PO Resp.
`13, 15). According to Petitioner, Patent Owner’s declarant agreed that the
`Specification does not use “framework” or “affiliate system” other than in
`the description of the background and references to it. Id. at 2 (citing
`Ex. 1009, 15:25–16:2, 24:13–26:13). Petitioner also argues that Patent
`Owner’s declarant was not able to point to specific claim language that
`articulates the asserted framework and “found the combination of providing
`items and a system of notifications to be a fair characterization of the
`claims.” Id. (citing Ex. 1009, 64:9–16, 129:15–130:25).
`Petitioner also argues that the claims recite “only generalized steps
`performed on generic hardware,” “lack the ability to motivate a user to
`acquire the item that is supposedly being promoted,” and “simply notify the
`recipient that the item has been provided to another communication
`terminal.” Id. at 3 (citing Ex. 1001, 14:47–50, 14:57–58). Petitioner
`contends that the claims do not recite “encouraging and promoting item
`acquisition that the ’287 patent purports to provide for.” Id. (citing
`Ex. 1009, 138:8–139:16, 141:17–142:6, 143:7–11, 144:23–145:8).
`Petitioner further contends that “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.” Id. at 4 (responding to PO
`Resp. 13–14). According to Petitioner, Patent Owner’s declarant “testified
`that the improvement of the framework that implements the affiliate system
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`improves ‘the experience of gameplay,’ but does not improve the computer
`itself.” Id. at 4–5 (citing PO Resp. 17; Ex. 1009, 99:24–100:10).
`Petitioner also asserts that, unlike Enfish, the claims of the ’287 patent
`“do not recite any specific improvement in video game technology or
`programming” and, instead, “recite functions without any preference as to
`how those functions are achieved.” Id. at 8 (citing Enfish, 822 F.3d at 1336–
`37). According to Petitioner, Patent Owner’s declarant “repeatedly
`emphasized the functional nature of the invention during his deposition” and
`“admitted that e-commerce affiliate systems existed prior to the ’287 patent,
`just not in the gaming context.” Id. at 9 (citing Ex. 1009, 13:22–15:19,
`17:25–20:13, 54:13–56:4).
`Petitioner also argues that, unlike the claims at issue in McRO, the
`claims of the ’287 patent “achieve[] no technological improvement,”
`“contain[] no such combined order of specific rules that renders information
`into a specific format or yields a specified, desired result,” and “achieve no
`improvement in computer functionality or technical improvement over the
`prior art.” Id. at 10.
`According to Petitioner, Patent Owner’s declarant could not provide
`“an example of a framework that would not be covered by the claims.” Id.
`(citing Ex. 1009, 72:4–74:21, 92:21–93:8). Petitioner also asserts that the
`recited functional results “are accomplished with conventional
`technologies,” as testified to by Patent Owner’s declarant. Id. (citing
`Ex. 1001, 12:14–51; Ex. 1009, 32:9–14).
`d. Assertions in Patent Owner’s Sur-Reply
`Patent Owner replies that Petitioner “mischaracterizes and
`oversimplifies the claim language throughout its arguments.” PO Sur-Reply
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`7 (citing Pet. Reply 3, 15–16). Patent Owner also asserts that the “claims
`provide multiple ways of encouraging and promoting item acquisition
`through the framework defined by the claims.” Id. at 7 (citing Ex. 1001,
`1:32–35). Patent Owner additionally argues that “the mere fact that the
`notifications of the framework may not always result in sufficient motivation
`for a user . . . is irrelevant as to whether the claimed framework provides an
`improvement overall.” Id. at 8.
`Patent Owner contends that the claims provide an incentive and a
`reward, the recited “bonus item,” to the second communication terminal for
`notifying a third communication terminal and that the reward is not
`contingent on the third communication terminal performing any action. Id.
`(citing Ex. 1001, 11:1–9). Patent Owner, thus, contends that the “affiliate
`system is clearly defined in the claim language and further defined by the
`Specification.” Id. at 9; see also id. at 9–11 (citing Ex. 1001, 5:9–19, 5:39–
`46, 6:10–7:32) (arguing that the claims solve the problem of providing
`network-based video games with an affiliate system and that the claims set
`forth “a detailed and specific manner of establishing a framework” for
`implementing such an affiliate system). According to Patent Owner,
`Petitioner relies on testimony related to the first manner of promoting item
`acquisition. Id. at 9.
`e. Revised Patent Subject Matter Eligibility Guidance
` The Guidance was published January 7, 2019, a few days before
`Patent Owner filed its Response. See Paper 10, 8 (setting January 11, 2019
`as the due date for Patent Owner’s Response); PO Sur-Reply 1 (stating that
`“[o]n January 7, 2019, the USPTO published its Revised Patent Subject
`Matter Eligibility Guidance . . . ”). The parties each had an opportunity to
`
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`16
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`PGR2018-00060
`Patent 9,694,287 B2
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`address, and did address as summarized below, the procedure for analyzing
`subject matter eligibility under the Guidance. See PO Resp. 32–34; Pet.
`Reply 5–8; PO Sur-Reply 2–7, 13, 14.
`Applying the analysis of the Revised Patent Subject Matter Eligibility
`Guidance (“Guidance”), we determine that Petitioner persuades us by a
`preponderance of the evidence that the claims are directed to patent
`ineligible subject matter.
`
`i. Prong One of the Guidance
`We first analyze whether Petitioner improperly overgeneralizes,
`mischaracterizes, or oversimplifies the challenged claims in order to assert
`that the claims are directed to patent ineligible subject matter, as argued by
`Patent Owner. See PO Resp. 12–13; PO Sur-Reply 1. Based on our review
`of the claims, we determine that Petitioner’s characterization of the claims
`finds support in the claims themselves and thus, does not overgeneralize the
`claims. Compare Pet. 18, with Ex. 1001, 12:14–51, 13:23–59, 14:36–15:3.
`We agree with Petitioner that each of independent claims 1, 9, and 17 recites
`similar steps. Pet. 18. In particular, we agree that steps of the independent
`claims include: (1) “[w]hen a request for an item is received from a first
`user’s communication terminal, provid[ing] the item to the first user’s
`communication terminal”; (2) “[w]hen providing the item to the first user’s
`communication terminal, send[ing] a notification about the item to the
`communication terminal of a second user”; (3) “[w]hen a request for the
`item is received from the second user’s communication terminal based on
`the notification, send[ing] a notification about the item to the
`communication terminal of a third user”; and (4) “[p]rovid[ing] a second
`item, in addition to the first item, to the second user’s communication
`
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`17
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`PGR2018-00060
`Patent 9,694,287 B2
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`terminal.” See Pet. 18 (emphases added); Ex. 1001, 12:14–51, 13:23–59,
`14:36–15:3. The independent claims, thus, recite steps that include sending
`notifications about an item the game, as asserted by Petitioner.
`Thus, Petitioner’s asserted patent ineligible subject matter of “sending
`notifications about an item in a game” more closely aligns with the language
`of the claims than does Patent Owner’s characterization. Pet. 28; Ex. 1001,
`12:14–51, 13:23–59, 14:36–15:3. In arguing that Petitioner overgeneralizes
`the claims, Patent Owner does not argue that Petitioner ignores any
`limitations. See PO Resp. 12–32; PO Sur-Reply 7–11.
`Turning to the Specification, the ’287 patent, itself, states that
`“[c]onventionally, there has been an affiliate system as advertisement that
`uses a network” and that “the affiliate system described above has been used
`for electronic commerce on the Internet alone.” Ex. 1001, 1:26–27, 1:47–
`48. The only stated “object” of the ’287 patent “is to provide a game server
`that employs a notification system associated with acquisition of the item in
`the game and thus is capable of promoting the acquisition of the item.” Id.
`at 1:54–58. The Specification, thus, indicates that the claims are directed to
`a notification system or sending notifications about an item the game, as
`asserted by Petitioner.
`Turning to the only declarant testimony in the record, in describing
`how the recited features of the claims provide a technological improvement,
`Patent Owner’s declarant states that “an affiliate system . . . has been known
`in the e-commerce art as a system where a first person/entity introduces a
`product/object to a second person/entity, and when the second person/entity
`views and purchases the product/object, a predetermined reward is given to
`the first person/entity.” Ex. 2001 ¶ 23. Patent Owner’s declarant, in
`
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`18
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`PGR2018-00060
`Patent 9,694,287 B2
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`describing how the “combination of features improves network-based
`gaming systems and improves the technical field of network-based gaming,”
`describes sending notifications and relies on the same steps relied upon by
`Petitioner that we discussed above. Id. ¶ 24. According to Patent Owner’s
`declarant,
`the combination of features provides a game server (and
`similarly a program and a method) that, when receiving a request
`for provision of a first item usable in the game from a first
`communication terminal, provides the first item to the first
`communication terminal and sends a notification to a second
`communication terminal that the first item is provided to the first
`communication terminal. The game server then when receiving
`a request for provision of the first item from the second
`communication terminal based on the notification, sends a
`notification to a third communication terminal that the first item
`is provided to the second communication terminal, and provides
`a second item usable in the game, in addition to the first item, to
`the second communication terminal that is mentioned in the
`notification sent to the third communication terminal.
`Id. Patent Owner’s declarant states that “a skilled artisan would have
`understood that the combination of these claimed features provides a
`technological framework for implementing an affiliate system in network-
`based gaming.” Id. ¶ 25. Patent Owner’s declarant provides testimony
`tending to support Petitioner’s characterization of the claim and Petitioner’s
`asserted patent ineligible subject matter of “sending notifications about an
`item in a game.” Pet. 28.
`The full record persuades us that Petitioner does not improperly
`overgeneralize, mischaracterize, or oversimplify the challenged claims to
`arrive at Petitioner’s asserted patent ineligible subject matter. The claims
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`Patent 9,694,287 B2
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`themselves, the Specification, and declarant testimony support our
`determination.
`Moreover, the full record persuades us that Patent Owner’s
`characterization of the claims generalizes the challenged claims more t
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