PATENT OWNER'S ORAL HEARING
`DEMONSTRATIVE EXHIBITS
`
`PGR2018-00060
`(U.S. Patent No. 9,694,287)
`
`SUPERCELL OY, (Petitioner) v. GREE, INC., (Patent Owner)
`
`1
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`OVERVIEW
` Brief Explanation of Claimed Invention
` Overview
` Claims of '287 Patent
` Proposed Substitute Claims
` Patent Eligibility of Claimed Invention
` 2019 Revised Subject Matter Eligibility Guidance
` Claims of '287 Patent
` Proposed Substitute Claims
` 35 U.S.C. 112(a)/(b)
` Claims of '287 Patent
` Proposed Substitute Claims
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`2
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`Brief Explanation of Claimed Invention
`-Overview-
` The invention is a
`technological improvement
`to network-based gaming
`technology.
` A game server communicates
`with multiple communication
`terminals to incorporate an
`affiliate system into network-
`based gaming.
` The game-based affiliate
`system creates a framework
`for a user to notify and
`recommend an item acquired
`within the gameplay of a
`game.
` The user receives a reward
`for the recommendation.
`
`3
`
`Source: col. 1, lines 45-60, and col. 5, lines 14-19, and 39-51.
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`Brief Explanation of Claimed Invention
`-Gameplay-
`1) During gameplay, User A acquires a first item, and then a
`game server sends a notification to another user (User B).
`2) The notification from User A to User B notifies User B that
`the first item was acquired.
`3) Upon User B requesting the first item, User B is presented
`with an incentive offer to notify/recommend the first item
`to other users that are linked to User B (i.e., "friends").
`4) When User B requests to notify friends, the game server
`sends a notification to a friend (User E) of User B.
`In addition to notifying User E, the game server provides the
`first item and another bonus item to User B, which serves
`as the reward/incentive.
`
`5)
`
`4
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`Source: Col. 5, lines 39-51, col. 6, line 14, to col. 7, line 51, and col. 10, line 57, to col. 11, line 16.
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`Brief Explanation of Claimed Invention
`-Gameplay-
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`5
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`Source: Figure 8
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`

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`Brief Explanation of Claimed Invention
`-Gameplay-
`
`Figure 7 illustrates the
`interaction between
`each communication
`terminal and the game
`server
`
`6
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`Source: Figure 7
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`Brief Explanation of Claimed Invention
`-Improvements-
` The game server employs
`a notification system
`associated with acquisition
`of an item in a game using
`a reward/incentive system.
` This results in promoting
`the acquisition of the item
`to other users of the
`game.
`
`7
`
`Source: Col. 1, lines 54-60, col. 4, lines 35-40, and col. 10, lines 3-11.
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`Brief Explanation of Claimed Invention
`-Improvements-
` The claimed features provide a technological framework for
`implementing an affiliate system in network-based gaming resulting in at
`least two primary improvements:
` (i) improving the functionality of network-based gaming, and
` (ii) improving the gameplay of network-based gaming technology.
`Dr. Zyda stated in his expert declaration:
`
`8
`
`Source: Exhibit 2001, ¶¶23-25 and 29-36.
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`Brief Explanation of Claimed Invention
`-Independent Claims-
`
`A game server for transmitting a plurality of items usable in a game to a plurality of communication
`1.
`terminals connected to the game server over a network, the game server comprising:
`a processor;
`a storage unit, executed by the processor, that stores first user ID information and notification
`information;
`an item provider that, 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, provides the first item to the first communication terminal; and
`a notifier that, when providing the first item to the first communication terminal, sends a
`notification to a second communication terminal of the plurality of communication terminals that the first item
`is provided to the first communication terminal, the second communication terminal corresponding to second
`user ID information linked to the first user ID information,
`wherein when receiving a request for provision of the first item from the second communication
`terminal based on the notification, the notifier sends a notification 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 the item provider 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 by the notifier.
`
`(Independent claims 9 and 17 recite similar features)
`
`9
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`Brief Explanation of Claimed Invention
`-Dependent Claims-
`
`2. The game server according to claim 1, wherein when
`receiving a request for provision of the first item from the
`third communication terminal based on the notification, the
`item provider provides the second item usable in the game to
`at least one of (i) the first communication terminal and (ii)
`the third communication terminal that sends a request for
`provision of the first item based on the notification.
`
`3. The game server according to claim 1, wherein a user
`corresponding to the second communication terminal is a
`friend user of a user corresponding to the first
`communication terminal.
`
`4. The game server according to claim 1, wherein the
`second item is identical to the first item.
`
`5. The game server according to claim 1, wherein the first
`item and the second item restore an energy, an attack cost
`and a defense cost.
`
`6. The game server according to claim 1, wherein the
`notifier sends, to additional communication terminals of the
`plurality of communication terminals corresponding to a
`plurality of the additional user ID information, the
`notification that the first item is provided, and wherein the
`item provider, when receiving additional requests for the
`first item from a predetermined number of the additional
`communication terminals, further provides the second item
`to the first communication terminal.
`
`7. The game server according to claim 1, wherein when the
`notifier sends the notification to a predetermined number of
`the plurality of communication terminals, the item provider
`provides the second item to the plurality of communication
`terminals corresponding to a plurality of user ID
`information associated with the notification.
`
`8. The game server according to claim 1, further comprising
`a selection panel generator that generates a selection panel
`that allows for selection of among a plurality of different
`user ID information linked to the first user ID information, a
`destination of the notification that the first item is provided
`to the first communication terminal.
`
`10
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`Independent Substitute Claims
`
`Proposed Substitute Claim
`25. A game server for transmitting a plurality of items usable in a game to a plurality of communication
`terminals connected to the game server over a network, the game server comprising:
`a storage unit, executed by the processor, that stores firstunit storing user ID identification (ID) information
`and notification information;
`a processor programmed to:
`
`receive 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 ID information, the first user ID information
`identifying a first user;
`an item provider that, whenin response to receiving a the request for provision of a to provide the first item
`usable in the game from a first communication terminal of the plurality of communication terminals
`corresponding to first user ID information, providesitem from the first communication terminal, determine
`second user ID information linked to the first user ID information in the stored user ID information, the
`second user ID information identifying a second user;
`transmit the first item to the first communication terminal; and
`
`a notifier that, when providingin response to transmitting the first item to the first communication terminal,
`sends transmit a first notification to a second communication terminal of the plurality of communication
`terminals corresponding to the determined second user ID information, the first notification indicating 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,terminal;
`wherein whenin response to receiving a request for provision ofto provide the first item from the second
`communication terminal based on the notification, the notifier sends determine third user ID information
`linked to the second user ID information in the stored user ID information;
`transmit a second notification 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 the third user ID information linked to the second user ID information, the second
`notification indicating that the first item is provided to the second communication terminal, the third user ID
`information identifying a third user; and
`wherein the item provider provides contemporaneously with the transmission of the second notification to
`the third communication terminal, transmit 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 by the notifier.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.
`
`729 App.
`[0007], [0029], and original
`claim 1
`[0029], [0031], [0032],
`[0062]. and original claim 1
`[0029], [0034], and original
`claim 1
`[0007], [0034], [0063],
`[0064], and original claim 1
`
`557 App.
`[0006] and [0028]
`
`[0028], [0030], and
`[0031]
`[0028] and [0033]
`
`[0006], [0033],
`[0062], and [0063]
`
`[0007], [0033], [0035],
`[0036], [0063], [0064], and
`original claim 1
`
`[0006], [0032],
`[0034], [0035],
`[0062], and [0063]
`
`[0036], [0063], [0064],
`Figure 8, and original claim 1
`[0007], [0035], [0063],
`[0064], Figure 8, and original
`claim 1
`
`[0036], [0063],
`[0064], and Figure 8
`[0006], [0034],
`[0062], [0063], and
`Figure 8
`
`[0007], [0032], [0033],
`[0035], [0063], [0064], and
`original claim 1
`[0007], [0035], [0063],
`[0064], Figure 8, and original
`claim 1
`
`[0006], [0031],
`[0032], [0034],
`[0062], and [0063]
`[0006], [0034],
`[0062], [0063], and
`Figure 8
`
`[0007], [0035], [0036],
`[0056], [0057], [0063],
`[0064], Figure 8, and original
`claim 1
`
`[0006], [0034],
`[0035], [0055],
`[0056], [0062],
`[0063], and Figure 8
`
`11
`
`(Claims 33 and 41 recite similar features)
`Source: Paper 13, pp. 3-13.
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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`
`(USPTO Step 2A)
`
`12
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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`Identifies THREE categories of
`STEP 2A – PRONG 1
`"abstract idea":
`(a) Mathematical concepts—
`mathematical relationships, mathematical
`formulas or equations, mathematical
`calculations
`(b) Certain methods of
`organizing human activity—
`fundamental economic principles or practices
`(including hedging, insurance, mitigating risk);
`
`•
`
`PROCESS:
`(a) Identify the specific limitation(s)
`in the claim (individually or in
`combination) that are believed to
`recite an abstract idea
`(b) Determine whether the identified
`limitation(s) fall within one of the
`three identified categories
`No longer use prior court
`decisions or USPTO examples
`to identify "abstract idea"
`
`•
`
`commercial or legal interactions (including
`agreements in the form of contracts; legal
`obligations; advertising, marketing or sales
`activities or behaviors; business relations)
`
`• managing personal behavior or relationships or
`interactions between people (including social
`activities, teaching, and following rules or
`instructions)
`
`13
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`Source: Exhibit 1010
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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`
`STEP 2A – PRONG 1(cont.)
`Identifies THREE categories of
`"abstract idea" (cont.):
`c) Mental processes—concepts
`performed in the human mind (including an
`observation, evaluation, judgment, opinion)
`
`"If a claim, under its broadest reasonable
`interpretation, covers performance in the mind but
`for the recitation of generic computer components,
`then it is still in the mental processes category unless
`the claim cannot practically be performed in the
`mind."
`
`14
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`Source: Exhibit 1010
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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`
`STEP 2A – PRONG 2
`
`If the claim recites an enumerated abstract idea, the claim
`as a whole is evaluated to determine whether the claim is "directed"
`to that abstract idea
`A claim is not "directed" to the abstract idea when the claim as a
`whole integrates the abstract idea into a "practical application" of
`the abstract idea
`
`A claim that integrates an abstract idea into a practical application will
`"apply, rely on, or use" the abstract idea in a manner that "imposes a
`meaningful limit" on the abstract idea such that the claim "is more
`than a drafting effort designated to monopolize" the abstract idea
`"It is critical that examiners consider the claim as a whole" when
`evaluating whether the abstract idea is integrated into a practical
`application—including "conventional elements"
`
`15
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`Source: Exhibit 1010
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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`
`STEP 2A – PRONG 2 (cont.)
`
`Non-exhaustive examples of situations in which the claim as a whole
`integrates the recited abstract idea into a practical application of the
`abstract idea include:
`• An additional element reflects an improvement in the functioning of
`a computer, or an improvement to other technology or technical
`field
`
`e.g., DDR Holdings, Enfish, McRO, Trading Tech., Visual Memory, Core
`Wireless, Finjan, Data Engine Tech., USPTO Examples 3 and 23, and
`MPEP §2106.05(a)
`• An additional element implements an abstract idea with, or uses an
`abstract idea in conjunction with, a particular machine or
`manufacture that is integral to the claim
`
`e.g., Eibel Process Co., Abele, USPTO Example 26, and MPEP
`§2106.05(b)
`
`16
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`Source: Exhibit 1010
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`

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`Patent Eligibility of Claimed Invention
`-USPTO 2019 Revised Guidance-
`
`STEP 2A – PRONG 2
`
`Non-exhaustive examples of situations in which the claim as a whole
`integrates the recited abstract idea into a practical application of the
`abstract idea include (cont.):
`• An additional element effects a transformation or reduction of a
`particular article to a different state or thing
`e.g., Diehr and MPEP §2106.05(c)
`• An additional element applies or uses the abstract idea in some
`other meaningful way beyond generally linking the use of the
`abstract idea to a particular technological environment, such that
`the claim as a whole is more than a drafting effort designed to
`monopolize the abstract idea (preemption)
`
`e.g., Diehr, Finjan, Core Wireless, Data Engine Tech., and MPEP
`§2106.05(e)
`
`17
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`Source: Exhibit 1010
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 1
`
` Petitioner improperly overgeneralizes the claims and the
`beneficial effects to conclude that the claims are directed to
`merely "sending notifications about an item in a game."
` On the contrary:
` The claims recite a detailed and specific manner of
`establishing a framework within online gaming to
`implement an affiliate system into network-based gaming.
` This framework results in an improvement to network-
`based gaming technology in comparison to the
`conventional art.
`
`18
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`Source: Paper 23, pages 2-4.
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`

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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 1
`
` The claims are directed to a detailed and specific manner of establishing a
`framework within online gaming to implement an affiliate system into
`network-based gaming.
` Dr. Zyda testifies:
`
` This network-based framework is not an abstract idea according to the
`groupings provided in the Guidance, i.e., it is not a mathematical concept, a
`method of organizing human activity, or a mental process.
`Source: Paper 23, lines 2-4, and Exhibit 2001.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` A claim is not "directed" to the abstract idea, when "the claim as a whole
`integrates the recited [abstract idea] into a practical application of the
`[abstract idea]." See Exhibit 1010 at 52.
`
` One example given by the Guidance of a "practical application" is an
`improvement in the functioning of the computer or an improvement
`to other technology. See Exhibit 1010 at 55.
`
` The claims are directed to a practical application under the Guidance
`because they provide an improvement to network-based video game
`technology.
`
`20
`
`Source: Paper 23, lines 4-7, Exhibit 1010, and Exhibit 2001, ¶¶23-25 and 29-36.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` Claims 1, 9, and 17 describe specific steps, including
`
`"…when receiving a request for provision of the first item from the second
`communication terminal based on the notification, the notifier sends a
`notification to a third communication terminal of the plurality of
`communication terminals that the first item is provided to the second
`communication terminal ... [and]
`
`the item provider 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 by the notifier."
`
` These recited processes construct a framework over the network between the
`game server and at least three communication terminals each associated with
`different users in order to implement an affiliate system.
`
`21
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`Source: Paper 23, lines 4-11.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` By providing the claimed framework and implementing an affiliate system
`into network-based video game technology, the claims improve network-
`based gaming technology by:
`improving the functionality of network-based gaming, and
`I.
`improving the gameplay of network-based gaming technology.
`
`II.
`
` The Specification explains that the conventional technology of network-
`based video games lacked any type of affiliate system in which a first
`user/player notifies a second user of a purchase of an item within the game
`and the first user receives a reward of a second item for notifying the
`second user of the first user's purchase of the first item.
`
`22
`
`Source: Paper 23, lines 4-7, Exhibit 1001 at 1:26-35, and Exhibit 1010.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` First, the claimed features improve the functionality of network-based
`gaming by creating a framework that implements an affiliate system into
`network-based gaming, which did not previously exist.
`
` During his deposition, Dr. Zyda confirms that affiliate systems have been
`known for use in electronic commerce, but affiliate systems have not been
`known in network-based (e.g., online) gaming.
` Dr. Zyda reasoned that affiliate systems have not been known in
`network-based (e.g., online) gaming because the conventional
`technology did not have a framework necessary to implement an
`affiliate system.
` See Exhibit 1009, 52:8-54:22.
`
`23
`
`Source: Paper 23, lines 9-13, and Exhibit 1009, 52:8-54:22.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` Second, the independent claims include elements that limit how the claimed
`features improve conventional network-based gaming.
` The claims establish the use of an affiliate system to encourage acquiring
`of in-game items and rewarding users for recommending acquired items to
`friends within the game.
`
` Third, the claimed features improve gameplay technology by increasing
`interaction between users, which in turn increases engagement of users
`during gameplay.
` This is achieved by incentivizing users to send notifications to other
`users within the game because users will receive a reward in exchange.
` This notification-reward system encourages interaction between users
`of the game, and thus improves the gameplay experience to the users.
`
`24
`
`Source: Paper 23, lines 9-14, Exhibit 2001 at ¶¶32-34, and Exhibit 1001, col. 10, lines 3-15.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` Petitioner, in the Petitioner's Reply to Patent Owner's Response,
`mischaracterizes and oversimplifies the claim language by:
`
` Stating "the notifications in the claims appear to lack the ability to
`motivate a user to acquire the item that is supposedly being promoted
`… [t]he encouraging and promoting item acquisition that '287
`purports to provide for are not recited in the claims."
`
` Quoting Dr. Zyda stating it's "possible for the players to receive []
`notification information but not be motivated to acquire another
`item."
`
`25
`
`Source: Paper 23, lines 4-7, and Paper 21, pp. 3 and 15-16.
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`Patent Eligibility of Claimed Invention
`-Patent Claims-
`STEP 2A – PRONG 2
` These statements mischaracterize the claims, and instead the claims provide
`multiple ways of encouraging and promoting item acquisition through the
`framework defined by the claims.
`1) The claimed features motivate item acquisition is by notifying a user
`(User E) that another user (i.e., User B) has purchased an item.
`2) The claims provide that as a reward — and incentive — for notifying
`User E of the purchase/acquirement of the first item, the game server
`provides User B with a second item (i.e., a bonus item).
` This reward/incentive is not contingent on the third
`communication terminal performing any action.
` The claimed framework encourages the second communication
`terminal to notify other users by providing the second
`communication terminal with the second item (i.e., a bonus item).
`
`26
`
`Source: Paper 23, lines 4-9, Exhibit 1001 at col. 1, lines 26-35, and col. 11, lines 1-9, and Exhibit 1010.
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`Patent Eligibility of Claimed Invention
`-Substitute Claims-
`
`25. A game server transmitting a plurality of items usable in a game to a plurality of communication
`terminals connected to the game server over a network, the game server comprising:
`a storage unit storing user identification (ID) information and notification information;
`a processor programmed to:
`receive 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 ID information, the first
`user ID information identifying a first user;
`in response to receiving the request to provide the first item from the first
`communication terminal, determine second user ID information linked to the first user ID information in the
`stored user ID information, the second user ID information identifying a second user;
`transmit the first item to the first communication terminal;
`in response to transmitting the first item to the first communication terminal,
`transmit a first notification to a second communication terminal of the plurality of communication terminals
`corresponding to the determined second user ID information, the first notification indicating that the first item
`is provided to the first communication terminal;
`in response to receiving a request to provide the first item from the second
`communication terminal determine third user ID information linked to the second user ID information in the
`stored user ID information;
`transmit a second notification to a third communication terminal of the plurality of
`communication terminals corresponding to the third user ID information linked to the second user ID
`information, the second notification indicating that the first item is provided to the second communication
`terminal, the third user ID information identifying a third user; and
`contemporaneously with the transmission of the second notification to the third
`communication terminal, transmit a second item usable in the game, in addition to the first item, to the second
`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.
`27
`
`Source: Paper 13
`
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`

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`Patent Eligibility of Claimed Invention
`-Substitute Claims-
`STEP 2A – PRONG 1
`
` The substitute 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 as compared to
`the conventional art.
` For example, the substitute claims define:
` Contemporaneously with the transmission of a second
`notification to a third communication terminal, transmitting a
`second item, in addition to a first item, to the second
`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.
`
`28
`
`Source: Paper 13, and Paper 24, pages 4-5.
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`Patent Eligibility of Claimed Invention
`-Substitute Claims-
`STEP 2A – PRONG 2
` The substitute claims are directed to the kind of improvement enumerated
`by the Guidance, i.e., an improvement in the gameplay, which is an
`improvement to network-based video game technology.
`
` By providing the claimed framework and implementing an affiliate system
`into network-based video game technology, network-based gaming
`technology is improved by:
`improving the functionality of network-based gaming, and
`I.
`improving the gameplay of network-based gaming technology.
`
`II.
`
`29
`
`Source: Paper 13 and Paper 24, pages 4-10.
`.
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`

`

`Patent Eligibility of Claimed Invention
`-Substitute Claims-
`STEP 2A – PRONG 2
` The substitute claims improve the functionality of network-based gaming by
`establishing the claimed framework that:
` Notifies a secondary (third) communication terminal within the game over the
`network when a primary (second) communication terminal purchases/acquires
`a first item.
` Then, contemporaneously with the transmission of the second notification to
`the third communication terminal, a second item usable in the game, in
`addition to the first item, is transmitted to the second communication
`terminal.
` This results in the second communication terminal being automatically
`rewarded with the second item for notifying the third communication terminal
`that the first item was requested by the second communication terminal.
` This 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).
`30
`
`Source: Paper 13 and Paper 24, pages 4-10.
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`

`

`35 U.S.C. 112(a)
`-Patent Claims-
` The disclosure provides adequate written description for "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…"
` Specifically, the 287 Patent states at col. 10, lines 42-50:
`
`"[a]lthough at step S3 the notification means 121 of the game server 1 inquires of the
`communication terminal 2-1 for the notification destination, the present invention is not
`limited thereto. At step S3, the notification means 121 of the game server 1 may
`automatically sends the item providing information to the communication terminal 2-2
`associated with the second user ID information, without inquiring of the communication
`terminal 2-1 for the notification destination."
`
` Further, the 287 Patent describes an exemplary variation stating at col. 11, lines 1-8:
`"[t]he user A is a user who first sends the request for provision of the item. When the user
`A sends the request for provision of the item ((1) of FIG. 8), the game server 1 sends the
`item providing information to the users B, C, and D, who are the user A's friend users ((2) of
`FIG. 8). At this time, the user A acquires the additional item ((3) of FIG. 8). Then, when the
`user B acquires the items ((4) of FIG. 8), the game server 1 sends the item providing
`information to users E, F and G who are the user B's friend users ((5) of FIG. 8)."
`Source: Paper 12, pages 43-45.
`
`31
`
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`
`

`

`35 U.S.C. 112(b)
`-Patent Claims-
` "[W]hen 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 ..."
`
` The broadest reasonable interpretation and the plain meaning as that the game
`server receives a request for provision of the first item, which is sent from the
`second communication terminal, and the game server, at some subsequent time,
`sends a notification to a third communication terminal.
`
` Dr. Zyda agreed that a skilled artisan would clearly understand this definition
`from the "metes and bounds" of the specification. See Exhibit 2001 at ¶45.
`
`32
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`Source: Paper 12, pages 46-50.
`
`

`

`
`
`I.
`
`II.
`
`35 U.S.C. 112(b)
`-Patent Claims-
`"[A] second item usable in the game, in addition to the first item, is provided to the second
`communication terminal...."
` The plain language of the claim recites "a second item usable in the game, in addition to the
`first item, is provided to the second communication terminal..."
` The fact that this claim language is recited broadly enough to cover two situations does
`not by itself render the claim indefinite. See MPEP 2173.04.
` The specification clearly delineates the breadth of the claim by describing each possibility:
`"The control unit 12 of the game server 1, when receiving the request for provision of
`the item from the communication terminal 2-2, provides the item to the
`communication terminal 2-2 and, further, the additional item providing means 122
`provides the additional item to the communication terminal 2-2 (step S9)." Exhibit
`1001 at 9:59-64.
`"According to the present invention, further, since the additional item providing means
`122 provides the additional item also when the user of the notification destination
`acquires the item, the user may be further encouraged to acquire the item in the
`game." Id. at 10:11-15.
`"[W]hen the user B acquires the items ((4) of FIG. 8), the game server 1 sends the item
`providing information to users E, F and G who are the user B's friend users ((5) of FIG.
`8). At this time, the user B acquires the additional item ((6) of FIG. 8)." Id. at 11:5-9.
`Source: Paper 12, pages 46-50.
`
`III.
`
`33
`
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`
`

`

`35 U.S.C. 112(a)/(b)
`-Substitute Claims-
` The disclosure provides adequate written description for the terms
`"contemporaneously with" and "automatically rewarded," and these terms are clear.
` 35 U.S.C §112(a) does no