Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: October 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`Case PGR2018-00064
`Patent 9,737,816 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`GREE, Inc. (“GREE”) is the owner of U.S. Patent No. 9,737,816 B2
`
`(“the ’816 patent”). Supercell Oy (“Supercell”) filed a Petition requesting
`
`post-grant review of claims 1–8 of the ’816 patent. Paper 1 (“Pet.”). GREE,
`
`in turn, filed a preliminary response. Paper 6 (“Prelim. Resp.”). After
`
`considering the Petition and the Preliminary Response, as well as all
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: October 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`Case PGR2018-00064
`Patent 9,737,816 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`GREE, Inc. (“GREE”) is the owner of U.S. Patent No. 9,737,816 B2
`
`(“the ’816 patent”). Supercell Oy (“Supercell”) filed a Petition requesting
`
`post-grant review of claims 1–8 of the ’816 patent. Paper 1 (“Pet.”). GREE,
`
`in turn, filed a preliminary response. Paper 6 (“Prelim. Resp.”). After
`
`considering the Petition and the Preliminary Response, as well as all
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`supporting evidence, we determine the Petition does not demonstrate that it
`
`is more likely than not at least one of the challenged claims of the ’816
`
`patent is unpatentable. 35 U.S.C. § 324(a). Thus, we do not institute post-
`
`grant review of claims 1–8 of the ’816 patent.
`
`I. BACKGROUND
`
`A. The ’816 Patent
`
`The ’816 patent issued August 22, 2017, and claims priority to U.S.
`
`Patent No. 9,561,434 B2, filed February 6, 2014 (“the ’434 patent”). Ex.
`
`1001, cover [45], [63]. The ’434 patent claims priority to JP 2013-031903
`
`(“the ’903 application”), filed February 21, 2013.1 Id. at 1:8–14. After
`
`considering the Petition and Preliminary Response, we conclude that
`
`Petitioner fails to demonstrate that the ’816 patent is eligible for post-grant
`
`review.
`
` The ’816 patent purports to disclose a game method, and
`
`corresponding computer and program, “to provide a ranking list display
`
`method in a game system, which can easily execute ranking confirmation of
`
`a user, who is a ranking confirmation target, such as the user himself/herself,
`
`a friend or a rival, and a system for executing this method.” Id. at 1:66–2:3.
`
`The game has “the server group 2 for executing a main process for realizing
`
`the ranking list display method . . . and a plurality of computers 3-1 and 3-2
`
`and mobile phones 4-1 and 4-2.” Id. at 3:32–36 (emphasis omitted). The
`
`computers and mobile phones are used by users “connected to a network 1
`
`such as the Internet via an access a point 5 or a base station 6.” Id. at 3:36–
`
`39.
`
`
`1 Hereinafter, all reference to the disclosure of the ’903 application is to the
`certified translation of this document (i.e. Ex. 1010).
`
`2
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`
`According to the ’816 patent, given the recent popularity of social
`
`networking service, the number of users of games using those services
`
`reaches several million users in some cases. See Ex. 1001, 1:28–30. As a
`
`consequence, “the Quantity of ranking information is enormous, the work of
`
`a user for confirming the ranking of the user himself/herself, a rival or a
`
`friend is time-consuming.” Id. at 1:31–34. To address this problem, the
`
`’816 patent purports to make it “possible to easily execute ranking
`
`confirmation of a user, who is a ranking confirmation target, such as the user
`
`himself/herself, a friend or a rival.” Id. at 2:16–19. In order to achieve this
`
`result, the server includes a CPU 32 that “cooperates with a client-side
`
`ranking list display process program 37-3 . . . which is stored in the storage
`
`device 37, and the CPU 32 executes the ranking list display method in the
`
`game system according to the embodiment and also executes overall control
`
`of the mobile phone.” Ex 1001, 4:62–67 (emphasis omitted).
`
`B.
`
`Representative Claim
`
`The ’816 patent includes 8 claims, of which claims 1, 2, and 8 are
`
`independent. All three independent claims recite essentially identical
`
`limitations and vary only as to type, where claim 1 is directed to a “method,”
`
`claim 2 to an “electronic device,” and claim 8 to a “non-transitory computer-
`
`readable medium.” Ex. 1001, 10:64, 11:27, 12:32. Common across the
`
`independent claims are seven functional steps including controlling or
`
`control of a user interface by the electronic device’s circuitry to display a
`
`ranking list in response to a user display request “wherein the position is
`
`3
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`identified by the computer based on ranking data stored in the computer.”
`
`Id. at 10:64–11:54, 12:32–61. Claim 1 is representative and recites:
`
`1.
`A method performed by an electronic device, the method
`comprising:
`transmitting, via a communication interface of the
`electronic device, a display request for a ranking list to a
`computer,
`the display
`request
`including
`identification
`information corresponding to a user who is a ranking
`confirmation target;
`controlling, by circuitry of the electronic device, the
`communication interface to receive, in response to the display
`request, a position in the ranking list of the user in relation to a
`display range of the ranking list from the computer, wherein the
`position is identified by the computer based on ranking data
`stored in the computer;
`displaying, by the circuitry, a pointer that corresponds to
`the position
`received by
`the communication
`interface
`determining, by the circuitry, based on a user input at the
`electronic device, whether the display range is changed;
`determining, by the circuitry, when it is determined that
`the display range is changed, a direction of the pointer based on
`the changed display range and the position received by the
`communication interface;
`determining, by the circuitry, that a user input is received
`at the pointer displayed by the electronic device;
`controlling, by the circuitry, the communication interface
`to receive the ranking data including another user based on the
`user input received at the pointer; and
`display, by the circuitry, the display range of the ranking
`list including a rank of the another user based on the received
`ranking data.
`B. The Asserted Grounds of Unpatentability
`
`The Petition asserts that claims 1–8 of the ’816 patent are
`
`unpatentable as: (1) being directed to non-statutory subject matter under
`
`35 U.S.C. § 101 (Pet. 32–59); (2) failing to comply with the written
`
`description requirement of 35 U.S.C. § 112(a) (id. at 60–67); and (3) failing
`
`4
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`to comply with the definiteness requirement of 35 U.S.C. § 112(b) (id. at
`
`67–72).
`
`II. ANALYSIS
`
`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).
`
`As noted supra, the ’816 patent issued on August 22, 2017, and
`
`claims the benefit of the ’903 application filed on February 21, 2013. The
`
`instant Petition was filed on May 2, 2018 (see also Paper 5, 1 (according the
`
`Petition a filing date of May 2, 2018)), which is within nine months of the
`
`date of the grant of the ’816 patent.
`
`Petitioner asserts that claims 1–3 and 5–8 of the ’816 patent are not
`
`entitled to the filing date of the ’903 application and that the “effective filing
`
`date of the challenged claims is no earlier than December 21, 2016.” See
`
`Pet. 24–30. According to Petitioner, “[t]he ’903 application never describes
`
`or mentions ‘controlling, by circuitry of the electronic device, the
`
`communication interface to receive, in response to the display request, a
`
`
`2 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`
`5
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`
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`PGR2018-00064
`Patent 9,737,816 B2
`
`position in the ranking list from the computer, wherein the position is
`
`identified by the computer based on ranking data stored in the computer.’”
`
`Pet. 27–28. Petitioner notes that “[n]o form of the term ‘circuitry’ can be
`
`found in the application in the context of receiving a position in response to
`
`the display request.” Id. at 28 (footnote omitted). Petitioner further notes
`
`that “[i]n addition, ‘communication interface’ is not found within the ’903
`
`application, nor is ‘controlling… the communication interface’ to receive a
`
`position, whether by circuitry or otherwise.” Id.
`
`While admitting that the claim term “circuitry” does not appear in the
`
`’903 application, Patent Owner submits that “[t]he test for sufficiency of
`
`support in an application is not ‘the presence or absence of literal support in
`
`the specification for the claim language.’” Prelim. Resp. 3 (citing In re
`
`Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)). Patent Owner further
`
`submits that “[i]nstead, it is whether the disclosure of the application relied
`
`upon, including foreign applications, reasonably conveys to the artisan that
`
`the inventor had possession at that time of the later claimed subject matter.”
`
`Id. (citing Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir.
`
`1991), further citations omitted). Patent Owner is correct. We apply this
`
`standard in determining whether or not the ’903 application provides
`
`sufficient disclosure of the subject matter claimed in claims 1–3 and 5–83 of
`
`the ’816 patent, to entitle these claims to the benefit of the filing date of the
`
`’903 application.
`
`
`
`Addressing Petitioner’s allegation that the ’903 application does not
`
`provide support for the claimed circuitry, Patent Owner notes that “Fig. 4
`
`
`3 We also apply this standard in determining the eligibility of claim 4, which
`Petitioner argues separately, addressed infra.
`
`6
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`and its accompanying descriptions in the ’903 application show components
`
`that make up an exemplary embodiment of a mobile phone, including but
`
`not limited to a CPU 32, memory 34, storage 37, and a display controller 39
`
`all connected via a bus 31.” Prelim. Resp. 5–6; see also id. at 11–12 (citing
`
`Ex. 1010 ¶¶ 47, 52–55 in a claim chart), 19–20 (citing Ex. 1010 ¶¶ 47, 52–
`
`55 for corresponding recitation in independent claim 2 in a claim chart), 26–
`
`27 (citing Ex. 1010 ¶¶ 47, 52–55 for corresponding recitation in independent
`
`claim 8 in a claim chart). Given this disclosure in the ’903 application,
`
`Patent Owner asserts that “[a] POSITA would have readily recognized that
`
`such exemplary electronic components are circuitry.” Id. at 6 (citing Ex.
`
`2001 ¶¶ 37–41). Patent Owner further asserts that as “the ’903 application
`
`discloses that the CPU 32 utilizes a client-side ranking list display
`
`processing program 37-3 to ‘control the entire mobile phone 4 in addition to
`
`performing the ranking displaying method of a game system according to the
`
`embodiment of the present invention,’” “a POSITA would clearly and
`
`readily recognize that circuitry, such as CPU 32 working with other
`
`components of the mobile phone . . . is configured . . . to ‘control’ the entire
`
`mobile phone and performance of the disclosed methods of the invention.”
`
`Id. (citing Ex. 1010 ¶¶ 34, 44; Ex. 2001 ¶¶ 47–51, 55).
`
`
`
`Turning to Petitioner’s allegation that the ’903 application does not
`
`provide support for the claimed communication interface, Patent Owner
`
`asserts that “a POSITA would clearly and readily recognize that the
`
`exemplary electric devices in the ’903 patent . . . which communicate
`
`with servers 2 over networks such as the internet, include communication
`
`interfaces, of which wireless communicating unit 33 is one example.”
`
`Prelim. Resp. 7 (citing Ex. 2001 ¶¶ 42–46).
`
`7
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`
`Paragraph 101 of the ’903 application discloses components such as
`
`CPU 32 that one skilled in the art would have understood to constitute
`
`circuitry as claimed. See Ex. 1010 ¶ 101. Paragraph 101 also discloses a
`
`wireless communicating unit 33 that one skilled in the art would have
`
`understood to constitute a communication interface as claimed. See also id.
`
`Fig. 4 (showing “CPU” 32 coupled to “Wireless communicating part” 33 via
`
`“Bus” 31 and “Internet” in communication with “Wireless communicating
`
`part” 33). Given these disclosures, the limitations at issue are fully
`
`supported by the ’903 application.
`
`In addition, Petitioner asserts that “[t]he ’903 application fails to
`
`disclose controlling, by the circuitry, the communication interface to receive
`
`ranking data.” Pet. 29. In support of this assertion, Petitioner again argues
`
`that “[n]either ‘circuitry’ nor ‘communication interface’ is found within the
`
`specification in any context, and controlling the communication interface to
`
`receive ranking data, whether by circuitry or otherwise, is never disclosed at
`
`any point, in any form in the written description of the ’903 application.”
`
`Pet. 30. For the reasons discussed supra, Petitioner’s arguments are
`
`unpersuasive.
`
`The method described in the ’903 application is shown in Figure 6.
`
`Similarly, the method described and claimed in the ’816 patent is shown in
`
`its Figure 6. Comparison of Figure 6 of the ’903 application to Figure 6 of
`
`the ’816 patent shows that these Figures are substantially the same, with
`
`only minor differences in wording such as the use of the term “order” in the
`
`’903 application as opposed to the term “rank” in the ’816 patent. Compare
`
`Ex. 1010, Fig. 6, S1 with Ex. 1001, Fig. 6, S1. One skilled in the art
`
`considering both Figure 6 of the ’903 application and Figure 6 of the ’816
`
`8
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`patent would understand that the flowcharts depicted show how order or
`
`rank information is received via circuitry by the communication interface.
`
`Thus, the limitations at issue are also supported by Figure 6 of the ’903
`
`application. Accordingly, Petitioner fails to demonstrate that claims 1–3 and
`
`5–8 are not entitled to the benefit of the filing date of the ’903 application.
`
`Specifically for claim 4, Petitioner asserts that “the ’903
`
`[application] does not provide adequate written description of
`
`configuring circuitry to display information when a user input is
`
`accepted.” Pet. 31. Petitioner argues that “neither the word nor the
`
`subject matter of ‘accepting’ a predetermined user input to the pointer
`
`is contained within the ’903 application whatsoever, and displaying
`
`information when predetermined user input to the pointer is accepted,
`
`whether by circuitry or otherwise, is never mentioned within the
`
`application.” Id.
`
`As a preliminary matter, we note that claim 4 requires circuitry
`
`that “is configured to display information . . . when a predetermined
`
`user input to the pointer is accepted.” Ex. 1001, 12:17–19. Claim 4
`
`does not require configuring of this circuitry. See id. Turning to
`
`Petitioner’s assertions, Petitioner arguments are once again premised
`
`on the notion that in order to support the limitation at issue, the
`
`Specification of the priority document must describe the claimed
`
`invention in the exact same terms as used in the claims at issue. As
`
`discussed supra, word-to-word identity is not required.
`
`Patent Owner identifies the support in the ’903 application for
`
`the limitation of claim 4 in a claim chart. Prelim. Resp. 24. Patent
`
`Owner explains that whether a pointer selecting operation has been
`
`9
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`performed is determined at S31. Id. (citing Ex. 1010 ¶¶ 82–83).
`
`Patent Owner notes that the pointer selection operation is double
`
`tapping or a long press of a button for example. Id. Patent Owner
`
`further explains that if the pointer selecting operation is determined to
`
`have been performed, the ranking data 41 including the order data 42
`
`of the pointer setting target user ID 45 is acquired at S32 and a
`
`detailed information screen is displayed based on the acquired ranking
`
`data in S33. Id. Patent Owner’s explanations are supported by
`
`paragraphs 82 and 83 of the ’903 application. Thus, Petitioner fails to
`
`demonstrate that claim 4 is not entitled to the benefit of the filing date
`
`of the ’903 application.
`
`III. CONCLUSION
`
`Claims 1–8 of the ’816 patent are entitled to the benefit of the filing
`
`date of the ’903 application. As the filing date of the ’903 application is
`
`February 21, 2013, which is prior to March 16, 2013, the ’816 patent is not
`
`subject to the first-inventor-to-file provisions of the AIA. Thus, claims 1–8
`
`of the ’816 patent are not eligible for post-grant review.
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`
`
`ORDERED that institution of a post-grant review of the ’816 patent is
`
`denied.
`
`
`
`
`
`
`
`
`
`10
`
`
`
`PGR2018-00064
`Patent 9,737,816 B2
`
`
`
`For PETITIONER:
`
`Jennifer R. Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`
`For PATENT OWNER:
`
`Scott A. McKeon
`Matthew Rizzolo
`ROPES & GRAY LLP
`Scott.McKeown@ropesgray.com
`Matthew.Rizzolo@ropesgray.com
`
`
`
`11
`
`
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