Paper No. _
`Filed: July 17, 2018
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`
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`
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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
`____________________
`
`
`
`DECLARATION OF MICHAEL ZYDA
`(EXHIBIT 2001)
`
`
`
`
`
`
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`Filed: July 17, 2018
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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
`____________________
`
`
`
`DECLARATION OF MICHAEL ZYDA
`(EXHIBIT 2001)
`
`
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`PGR2018-00060
`U.S. Patent No. 9,694,287
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`I. MY BACKGROUND
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`1. My name is Michael Zyda, and I reside in California. I am an independent
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`consultant. I am not employed by GREE, Inc., have never been an employee of
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`GREE, Inc., and have not otherwise had a professional relationship with GREE,
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`Inc. I am over eighteen years of age, and I would otherwise be competent to testify
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`as to the matters set forth herein if I am called upon to do so.
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`2.
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`I submit this Declaration at the request of GREE, Inc., for consideration by
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`the Patent Trial and Appeal Board (PTAB) in Post-Grant Review (PGR) No.
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`PGR2018-00060 of U.S. Patent No. 9,694,287 (287 Patent). I am being
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`compensated for my work in connection with this Declaration. No part of my
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`compensation in this matter is dependent upon the outcome of this proceeding or
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`any issue in this proceeding.
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`3.
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`In forming my opinions, I rely on my knowledge and experience in the field
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`and on documents and information referenced in this Declaration.
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`4.
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`I began my career in Computer Graphics in 1973 as part of an undergraduate
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`research group, the Senses Bureau, at the University of California, San Diego.
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`5.
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`I earned a Master of Science in Computer and Information Science from the
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`University of Massachusetts in 1978. I was also Teaching Assistant in the
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`Department of Computer and Information Science from September 1976 - August
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`1978.
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`6.
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`I earned a Doctor of Science in Computer Science from Washington
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`University in 1984 based on my Doctoral Thesis entitled "Algorithm Directed
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`Architectures for Real-Time Surface Display Generation." I was also Research
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`Associate/Assistant in the Department of Computer Science from September 1978
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`- March 1983, and August 1983 - January 1984.
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`7.
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`I began my career as a full-time teacher of Computer Science at the Naval
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`Postgraduate School (NPS) in Monterey, California, in February of 1984 as an
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`Assistant Professor in the Department of Computer Science. In July 1990, I was
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`granted tenure. After being granted tenure and until the Fall of 2004, I held a
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`number of Positions in the Computer Science department of NPS, including
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`Academic Associate Chair for the Department of Computer Sciences, Academic
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`Associate Chair for the Modeling, Virtual Environments and Simulation
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`Curriculum, Founding Chair, Modeling, Virtual Environments and Simulation
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`Academic Group, and Professor of Computer Science.
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`8.
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`From November 2000 - November 2004, while a Professor of Computer
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`Science, I was the Founding Director of the MOVES (modeling, virtual
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`environments, and simulation) Institute at NPS. Also at NPS, my NPSNET
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`Research Group built the first networked virtual environment with fully
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`instrumented body suits that played across the Internet. My work on the
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`networking of virtual environments contributed to the development of the IEEE
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`PGR2018-00060
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`1278.1 standard for distributed interactive simulation. I helped found the
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`subspecialty in modeling and simulation for the United States Navy, the simulation
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`operations functional area (57) for the US Army and the simulation operations area
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`(MOS-9625) for the US Marine Corps.
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`9.
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`Since October 2004, I have been the Founding Director of the University of
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`Southern California (USC) GamePipe Laboratory, and a Professor of Engineering
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`Practice in the USC Department of Computer Science. At USC, I founded the B.S.
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`in Computer Science (Games), the M.S. in Computer Science (Game
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`Development), and the USC Games joint Advanced Games course. That program
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`has been rated #1 by the Princeton Review for eight of the last nine years, and
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`program alumni have shipped games played by over 2.5 billion players (about
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`$100B in revenue).
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`10. As can be seen from the attached Curriculum Vitae (Exhibit A), I have (i)
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`authored numerous publications in the field of video games and especially
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`mobile/online gaming, (ii) numerous National Academy appointments (including a
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`lifetime appointment for "extraordinary service"), (iii) been named as an inventor
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`on numerous video-game related patent applications and patents, (iv) been named
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`to numerous video-game-related Advisory Boards, and (v) acted as an expert
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`witness in numerous video-game-related litigations and PTAB trials.
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`II. MATERIALS I CONSIDERED
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`11.
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`I have reviewed and considered the following documents in forming the
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`opinions set forth in this Declaration:
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`The 287 Patent (filed as Exhibit 1001 by Supercell OY).
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`Supercell OY’s Petition for Post-Grant Review of the 287 Patent.
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`Exhibit 1002 – the prosecution history of the 287 Patent.
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`Exhibit 1003 – the USPTO Memorandum dated May 19, 2016.
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`Exhibit 1004 – the USPTO Memorandum dated November 2, 2016.
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`Exhibit 1005 – the prosecution history of U.S. Patent No. 9,480,296.
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`Exhibit 1006 – Subject Matter Eligibility Examples: Business
`Methods of December 2016.
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`H.
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`Exhibit 2002 – USPTO Memorandum dated April 19, 2018.
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`III. MY UNDERSTANDING OF LEGAL STANDARDS
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`A. Claim Construction
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`12.
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`I have been informed and understand that a claim in an unexpired patent
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`shall be given its broadest reasonable interpretation in light of the patent’s
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`specification. I have been informed and understand that claim terms are generally
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`given their plain meaning as would be understood by a person of ordinary skill in
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`the art in the context of the entire disclosure.
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`B.
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`Patent-Eligibility for Computer-Related Inventions
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`13.
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`I have been informed and understand that an invention is patent-eligible
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`under 35 U.S.C. §101 if it claims a new and useful process, machine, manufacture,
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`or composition of matter. But, under judicially-created exceptions to patent
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`eligibility, laws of nature, natural phenomena, and abstract ideas are not patentable.
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`With respect to the abstract idea exception, I have been informed and understand
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`that the inquiry to determine whether or not an invention is patent-eligible has two
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`steps: (1) determine whether the claim is directed to a patent-ineligible abstract
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`idea, and (2) if so, whether the elements of the claim both individually and as an
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`ordered combination transform the nature of the claim into a patent-eligible
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`application of the abstract idea. I have been informed and understand that claim
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`elements reciting well-understood, routine, conventional activity in the field are
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`insufficient to render the claims patent-eligible, and the question of whether a
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`claim element or combination of elements is well-understood, routine and
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`conventional to a skilled artisan in the relevant field is a question of fact.
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`C. Written Description
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`14.
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`I have been informed and understand that claims have sufficient written
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`description under 35 U.S.C. §112(a) when the disclosure of the application relied
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`upon reasonably conveys to those skilled in the art that the inventor had possession
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`of the claimed subject matter as of the filing date. I have been informed and
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`understand that this test requires an objective inquiry into the four corners of the
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`specification from the perspective of a person of ordinary skill in the art, and based
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`on that inquiry, the specification must describe an invention understandable to that
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`skilled artisan and show that the inventor actually invented the invention claimed.
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`D. Definiteness
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`15.
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`I have been informed and understand that a claim must particularly point out
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`and distinctly claim the subject matter. I have been informed and understand that a
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`claim is indefinite under 35 U.S.C. §112(b) when it contains words or phrases
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`whose meaning is unclear. I have been informed and understand that the
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`definiteness requirement is not a demand for unreasonable precision, and the
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`amount of clarity that is required necessarily invokes some standard of reasonable
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`precision in the use of language in the context of the circumstances. I have been
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`informed and understand that whether claims are sufficiently definite is based on
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`the perspective of one of ordinary skill in the art in view of the entire written
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`description and developing prosecution history.
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`IV. CLAIM CONSTRUCTION
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`16. At the time of the invention, and in view of the specification, the skilled
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`artisan would have understood "when receiving a request for provision of the first
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`item from the second communication terminal based on the notification, a
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`notification is sent to a third communication terminal" to plainly mean that the
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`game server receives a request for provision of the first item, which is sent from
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`the second communication terminal, and upon receiving the request, the game
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`
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`server will, at some subsequent time, send a notification to a third communication
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`terminal.
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`17. Based on my experience, it is clear from the disclosure of the 287 Patent and
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`the claim language of claims 1, 9, and 17 that, although the disclosure of the 287
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`Patent discloses additional processes that may occur when receiving a request for
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`provision of the first item sent from the second communication terminal, the
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`disclosure does not require these additional processes to be performed to such an
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`extent that those skilled in the art at the time of invention would have thought that
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`the Applicant was not in possession of the claimed invention. Exhibit 1001, 10:42
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`- 11:8.
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`18. For these reasons, nothing in the disclosure of the 287 Patent would have
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`caused the skilled artisan to have understood the term "when receiving a request
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`for provision of the first item from the second communication terminal based on
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`the notification, a notification is sent to a third communication terminal" to have
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`been used differently or more narrowly than in accordance with its plain meaning
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`in the 287 Patent.
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`19. At the time of the invention, and in view of the specification, the skilled
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`artisan would have understood the plain meaning of the term "a second item usable
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`in the game, in addition to the first item, is provided to the second communication
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`terminal." The claim language clearly states that a second item and a first item are
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`
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`provided to the second communication terminal, where the first item and second
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`item are provided simultaneously, or the first item is provided prior to the second
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`item.
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`20. For these reasons, nothing in the disclosure of the 287 Patent would have
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`caused the skilled artisan to have understood this term to have been used
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`differently or more narrowly than in accordance with its plain meaning in the 287
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`Patent.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`21. A person of ordinary skill in the art ("skilled artisan") of the 287 Patent
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`would possess at least an associate degree in the field of computer science (or a
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`related discipline, such as computer engineering, to the extent the course of study
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`involved the design and programming of video games) and at least two years of
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`practical (e.g., work) experience in the field of video-game design and
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`programming. If the skilled artisan did not obtain a formal degree, then they
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`would have at least four years of practical (e.g., work) experience in the field of
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`video-game design and programming.
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`VI. THE INVENTION CLAIMED IN THE 287 PATENT IMPROVES
`NETWORK-BASED GAMING SYSTEMS AND/OR IMPROVES
`THE TECHNICAL FIELD OF NETWORK-BASED GAMING
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`22. The invention described in the 287 Patent and recited in independent claims
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`1, 9, and 17 represents an innovative technological improvement over prior art
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`network-based gaming systems.
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`23. One specific technological improvement is provided by the combination of
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`features recited in claims 1, 9, and 17 of the 287 Patent that are directed to a
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`detailed and specific manner of establishing a framework within online gaming,
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`which was previously lacking in the conventional gaming art, that improves
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`network-based gaming technology by implementing an affiliate system, which has
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`been known in the e-commerce art as a system where a first person/entity
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`introduces a product/object to a second person/entity, and when the second
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`person/entity views and purchases the product/object, a predetermined reward is
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`given to the first person/entity.
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`24. This combination of features improves network-based gaming systems and
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`improves the technical field of network-based gaming because the combination of
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`features provides a game server (and similarly a program and a method) that, when
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`receiving a request for provision of a first item usable in the game from a first
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`communication terminal, provides the first item to the first communication
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`terminal and sends a notification to a second communication terminal that the first
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`item is provided to the first communication terminal. The game server then when
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`receiving a request for provision of the first item from the second communication
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`terminal based on the notification, sends a notification to a third communication
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`terminal that the first item is provided to the second communication terminal, and
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`provides a second item usable in the game, in addition to the first item, to the
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`second communication terminal that is mentioned in the notification sent to the
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`third communication terminal. See Exhibit 1001.
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`25. Based on my experience, at the time of the invention, a skilled artisan would
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`have understood that the combination of these claimed features provides a
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`technological framework for implementing an affiliate system in network-based
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`gaming that results in at least two primary improvements to network-based gaming
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`technology of (i) improving the functionality of network-based gaming, and (ii)
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`improving the gameplay of network-based gaming technology.
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`26.
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`In particular, at the time of the invention, the skilled artisan would have
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`recognized that one problem recognized by the inventors of the 287 Patent in
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`conventional network-based games and gaming systems is that, although affiliate
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`systems have been known for use in electronic commerce, affiliate systems have
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`not been known in network-based (e.g., online) gaming. Exhibit 1001 at 1:26-35.
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`Instead, affiliate systems have been used in advertising for the purpose of e-
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`commerce, where a person introduces a product using an embedded link on a
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`webpage, and when a customer clicks on the link and purchases the product, a
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`predetermined reward is given to the person. Id.
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`27. Based on my experience, in network-based games for communication
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`terminals, at the time of the invention, the skilled artisan would have understood
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`that this known affiliate framework could not have been directly incorporated into
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`network-based gaming. Accordingly, a new technological framework had to be
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`devised to implement affiliate systems in network-based gaming. That is, merely
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`applying the known general concept of affiliate systems to gaming, without more,
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`would not have been feasible and would not have resulted in the claimed invention.
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`28. Upon reading the disclosure of the 287 Patent, it is clear that the inventors
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`recognized this problem with network-based gaming systems, in which a
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`framework did not exist in order to implement an affiliate system. Exhibit 1001,
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`1:26-35. A skilled artisan at the time of the invention would have recognized that
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`the inventors developed a new technological framework to solve this problem.
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`29. At the time of the invention, the skilled artisan would have further
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`understood how the claimed features result in the benefits to network-based
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`gaming technology of (i) improving the functionality of network-based gaming,
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`and (ii) improving the gameplay of network-based gaming technology, at least
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`because the 287 Patent describes that the combination of features captured by the
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`claims improves conventional network-based gaming by allowing the use of an
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`
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`affiliate system to encourage acquiring/purchasing of in-game items and reward
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`users for recommending acquired items to friends within the game. Exhibit 1001,
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`10:3-15.
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`30. A skilled artisan would have readily understood from the disclosure of the
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`287 Patent that the claimed features create a framework that notifies a secondary
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`(third) communication terminal within the game over the network when a primary
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`(second) communication terminal purchases/acquires a first item. Id. at 11:1-9. It
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`is clear that this notification serves as a recommendation to the third
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`communication terminal because it is a known concept, which is specifically
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`discussed in the disclosure of the 287 Patent, that "many customers refer an
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`introduction or evaluation made by their acquaintances in determining the
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`purchase." Id. at 1:32-35. As a reward — and incentive — for notifying the third
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`communication terminal of the purchase of the first item, the game server —
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`implementing the affiliate system — provides the second communication terminal
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`with a second item (i.e., a free item). Id. at 11:1-9.
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`31. With this understanding of the readily apparent technological features
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`captured by the scope of the claims in the 287 Patent, a skilled artisan would then
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`have readily recognized that this technological framework that implements this
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`specifically defined affiliate system provides an improvement to the functionality
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`of network-based gaming by allowing the use of an affiliate system to encourage
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`acquiring/purchasing of in-game items and reward users for recommending
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`acquired items to friends within the game.
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`32. Based on my experience, in network-based games for communication
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`terminals, at the time of the invention, the skilled artisan would also have
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`understood that the claimed features improve the gameplay of network-based
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`gaming technology by both rewarding a user notifying another user by providing a
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`second item to the user, and increasing engagement and interaction between users
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`within the gameplay through the exchange of notifications/recommendations. It is
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`well-understood in the art that the gameplay experience of network-based games is
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`a vital aspect in gaming technology.
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`33. A skilled artisan would have readily understood from the disclosure of the
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`287 Patent that the claimed features reward users by providing the second user of
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`the second communication terminal with a second item (i.e., a "free" item) for
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`notifying the third communication terminal of the acquisition of the first item. In
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`this manner, it would have been clear to one of ordinary skill in the art at the time
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`of invention that users are incentivized to notify other users and even to acquire in-
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`game items initially with the knowledge that the notifying user will receive a "free"
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`reward item. Exhibit 1001, 5:39-46, 6:10 - 7:32, 10:3-15, and 11:1-9.
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`34. Based on my experience, in network-based games for communication
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`terminals, at the time of the invention, the skilled artisan would also have
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`understood that the claimed features improve gameplay, which is an improvement
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`to network-based gaming technology, by increasing interaction between users,
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`which in turn increases engagement of users during gameplay. This improvement
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`is achieved by incentivizing users to send notifications to other users within the
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`game because users will receive a reward in exchange. Exhibit 1001, 10:3-15. It
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`would have been readily apparent that this notification-reward system encourages
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`interaction between users of the game, and thus improves the gameplay experience
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`to the users.
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`35. Based on my experience, in network-based games for communication
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`terminals, at the time of the invention, the skilled artisan would also have
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`understood that the claimed features are specifically articulated and are recited in
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`such a detailed manner so as not to preempt all ways of establishing a framework
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`that implements an affiliate system in network-based gaming.
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`36. Based on the above, it is my opinion that, at the time of the invention, the
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`skilled artisan would have considered the combination of claimed features, in light
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`of the specification, to set forth a framework implementing an affiliate system that
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`(i) improves the functionality of network-based gaming, and (ii) improves the
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`gameplay of network-based gaming technology.
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`VII. AT LEAST INDEPENDENT CLAIMS 1, 9, AND 17
`RECITE FEATURES THAT ARE NOT WELL-
`UNDERSTOOD, ROUTINE, AND CONVENTIONAL
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`37.
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`I have no reason to believe that the skilled artisan would have considered the
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`combination of features, as recited in claims 1, 9, and 17 of the 287 Patent, to have
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`been a well-understood, routine, and conventional feature at the time of the 287
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`Patent's invention for at least the following reasons:
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`38. Neither the 287 Patent specification nor prosecution history identify it as
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`having been a well-understood, routine, and conventional feature.
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`39.
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`I am not aware of any Federal Circuit or Supreme Court decision that
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`describes it as having been a well-understood, routine, and conventional feature.
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`40. The Petitioner did not identify any prior art network-based game or gaming
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`system that incorporates such a feature.
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`41. No prior art network-based game or gaming system that incorporates such a
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`feature was identified by the examiner during prosecution of the 287 Patent or its
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`family member patents/applications.
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`42.
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`I am not aware of any prior art network-based game or gaming system that
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`incorporates such a feature.
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`VIII. THE CLAIMS OF THE 287 PATENT DO
`NOT LACK WRITTEN DESCRIPTION
`
`A.
`
`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"
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`43. The disclosure of the 287 Patent conveys with reasonable clarity to a skilled
`
`artisan that, at the time of the invention, Patent Owner was in possession of the
`
`invention reciting "when receiving a request for provision of the first item from the
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`second communication terminal based on the notification, a notification is sent to a
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`third communication terminal...."
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`44. As explained above in the Claim Construction section, in light of my
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`experience, a skilled artisan would have clearly understood from a plain reading of
`
`the disclosure of the 287 Patent that the specification supports the game server
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`receiving a request for provision of the first item, which is sent from the second
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`communication terminal, and the game server, at some subsequent time, sending a
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`notification to a third communication terminal. Exhibit 1001, 10:42-50.
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`IX. THE CLAIMS OF THE 287 PATENT ARE NOT INDEFINITE
`
`A.
`
`The Recited "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" is Definite
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`45. As explained above in the Claim Construction section, the skilled artisan
`
`would have understood "when receiving a request for provision of the first item
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`from the second communication terminal based on the notification, a notification is
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`sent to a third communication terminal..." to mean that the game server receives a
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`request for provision of the first item, which is sent from the second
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`communication terminal, and the game server, at some subsequent time, sends a
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`notification to a third communication terminal.
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`B.
`
`The Recited "a second item usable in the game,
`in addition to the first item, is provided to
`the second communication terminal" is Definite
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`46.
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`It would have been clear to the skilled artisan at the time of the invention the
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`"metes and bounds" of the recited "a second item usable in the game, in addition to
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`the first item, is provided to the second communication terminal...." because this
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`claim language is not ambiguous, vague, incoherent, opaque, or otherwise unclear.
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`The claim language clearly states that a second item and a first item are provided to
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`the second communication terminal, where the first item and second item are
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`provided simultaneously, or the first item is provided prior to the second item.
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`47. A skilled artisan at the time of invention would have understood that the
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`disclosure of the 287 Patent also supports only two meanings for this claim
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`language: (i) the first item and second item are provided simultaneously, and/or (ii)
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`the first item is provided prior to the second item, which clearly defines the scope
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`of the claims so as to understand how to avoid infringement.
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`X. CONCLUSION
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`48.
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`I declare under penalty of perjury that the foregoing Declaration is true and
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`correct. Of course, my analysis is continuing and I may modify or supplement my
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`conclusions as I receive additional information.
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`Dated: July 17, 2018
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`Attachment:
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`Exhibit A: Curriculum Vitae of Michael Zyda
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`___________________________
`Michael Zyda
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