IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`
`
`Case PGR2018-00066
`U.S. Patent No. 9,873,044
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR POST
`GRANT REVIEW OF U.S. PATENT NO. 9,873,044
`
`
`
`
`
`
`
`
`
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`

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`
`
`TABLE OF CONTENTS
`
`Page
`
`I. 
`II. 
`
`B. 
`
`C. 
`
`INTRODUCTION ........................................................................................... 1 
`DENIAL OF INSTITUTION OF POST-GRANT REVIEW OF THE
`PARENT PATENT ......................................................................................... 3 
`III.  THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(D) ........ 4 
`IV.  OVERVIEW OF RELEVANT PORTIONS OF THE ‘044 PATENT ......... 16 
`V. 
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 20 
`VI.  CLAIM CONSTRUCTION .......................................................................... 21 
`A. 
`Petitioner’s Proposed Constructions Do Not Follow the Law
`Governing Claim Construction ........................................................... 22 
`Petitioner’s Proposed Construction of the Term “Incentive” Does
`Not Account for the Intrinsic Evidence .............................................. 23 
`The Term “Enable Invitation” Is Not Recited By the Claims of
`the ‘044 Patent ..................................................................................... 26 
`The Term “Detect Access” Is Not Recited By the Claims of the
`‘044 Patent ........................................................................................... 28 
`Petitioner’s Proposed Construction of the Term “Specific
`Matter” Does Not Account for the Intrinsic Evidence ........................ 30 
`VII.  THE PETITION FAILS TO PROPERLY ADDRESS THE CLAIMS
`UNDER STEP ONE OF ALICE .................................................................... 32 
`A. 
`Legal Framework ................................................................................ 32 
`B. 
`Petitioner’s Identification of the Inventive Concept Is Incorrect ........ 34 
`C. 
`The Petition Does Not Analyze the Claims As A Whole Under
`Alice Step One ..................................................................................... 36 
`
`D. 
`
`E. 
`
`
`
`i
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`

`

`
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`The Petition Erroneously Asserts That the Specification Does
`Not Disclose Informing A Player of the Incentives ............................ 41 
`The Petitioner’s Preemption Argument Fails Because It Is Based
`On An Unreasonable Construction of “Incentives” ............................ 43 
`Petitioner Incorrectly Asserts That A Specific Means For
`Performing the Claimed Methods Is Not Recited ............................... 44 
`Petitioner’s Argument Regarding A Longstanding Commercial
`Practice Is Based On An Incomplete Consideration of the Claim
`Terms ................................................................................................... 46 
`VIII.  THE PETITION FAILS TO PROPERLY ADDRESS THE CLAIMS
`UNDER STEP TWO OF ALICE ................................................................... 47 
`A. 
`Legal Framework ................................................................................ 47 
`B. 
`Petitioner’s Identification of the Inventive Concept Is Incorrect ........ 48 
`C. 
`Petitioner’s Berkheimer Analysis Is Incorrect .................................... 49 
`D. 
`The Petition Fails to Provide Any Evidence That the Claims Are
`Well-Understood, Routine, Conventional Activities .......................... 52 
`Petitioner Does Not Properly Address the Claims As An Ordered
`Combination ........................................................................................ 54 
`IX.  THE PETITION DOES NOT PERFORM A COMPLETE ANALYSIS
`OF THE DEPENDENT CLAIMS ................................................................. 58 
`A. 
`The Petition Does Not Address Step One of Alice for Any of the
`Dependent Claims ............................................................................... 58 
`The Petition’s Analysis of the Dependent Claims Is Based On the
`Flawed Premise That the Claims Do Not Cover the Inventive
`Concept ................................................................................................ 59 
`Petitioner Does Not Address the Dependent Claims In Their
`Entirety And Provides No Evidence To Support Its Conclusions ...... 60 
`
`E. 
`
`B. 
`
`C. 
`
`
`
`ii
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`

`

`
`
`X. 
`
`3. 
`
`B. 
`
`PETITIONER HAS FAILED TO SHOW THAT ONE OR MORE OF
`THE ‘044 PATENT CLAIMS ARE UNPATENTABLE UNDER 35
`U.S.C. § 112 ................................................................................................... 60 
`A. 
`The Petition Fails to Show That Claims 1-10 Lack Adequate
`Written Description Support Under 35 U.S.C. § 112(a) ..................... 61 
`1. 
`Petitioner Fails to Consider the Perspective of a POSITA ....... 62 
`2. 
`Petitioner’s Argument Improperly Relies On the Absence
`of Claim Terminology In the Specification .............................. 64 
`Petitioner’s Argument is Based on Its Flawed Claim
`Construction .............................................................................. 68 
`The Petition Fails to Show That Claims 1-10 Are Indefinite
`Under 35 U.S.C. § 112(b) ................................................................... 69 
`XI.  CONCLUSION .............................................................................................. 72 
`
`
`
`
`
`
`
`iii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`Cases 
`Alcon Research Ltd. v. Barr Labs., Inc.,
` 745 F.3d 1180 (Fed. Cir. 2014) ............................................................................ 61
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
` 134 S. Ct. 2347 (2014) ................................................................................. passim
`
`Allergan, Inc. v. Sandoz Inc.,
` 796 F.3d 1293 (Fed. Circ. 2015) .......................................................................... 61
`
`Aqua Prods., Inc. v. Matal,
` 872 F.3d 1290 (Fed. Cir. 2017) ............................................................................ 21
`
`Ariad Pharms., Inc. v. Eli Lilly & Co.,
` 598 F.3d 1336 (Fed. Cir. 2010) ............................................................................ 62
`
`Autogiro Co. of Am. v. United States,
` 384 F.2d 391 (Ct. Cl. 1967) .................................................................................. 23
`
`BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
` 827 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 55
`
`Berkheimer v. HP Inc.,
` 881 F.3d 1360 (Fed. Cir. 2018) ............................................................... 33, 50, 52
`
`Blue Calypso, LLC v. Groupon, Inc.,
` 815 F.3d 1331 (Fed. Cir. 2016) ............................................................... 63, 64, 65
`
`Capon v. Eshhar,
` 418 F.3d 1349 (Fed. Cir. 2005) ..................................................................... 62, 68
`
`
`
`
`iv
`
`

`

`
`
`Cultec, Inc. v. Stormtech LLC,
` IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) .................................................. 7
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
` 773 F.3d 1245 (Fed. Cir. 2014) ..................................................................... 55, 57
`
`Diamond v. Diehr,
` 450 U.S. 175 (1981) ............................................................................................. 33
`
`Enfish, LLC v. Microsoft Corp.,
` 822 F.3d 1327 (Fed. Cir. 2016) ............................................................................ 41
`
`Enzo Biochem, Inc. v. Gen-Probe, Inc.,
` 323 F.3d 956 (Fed. Cir. 2002) .............................................................................. 63
`
`Ex parte Jadran Bandic,
` Appeal No. 2016-004417, 2018 WL 2113303 (PTAB Apr. 30, 2018) ........ passim
`
`Fox Factory, Inc. v. SRAM, LLC,
` IPR2016-01876, Paper 8 (PTAB Apr. 3, 2017) ..................................................... 7
`
`Google Inc. v. Simpleair, Inc.,
` CBM2014-00170, Paper 13 (PTAB Jan. 22, 2015) ............................................. 45
`
`Hospira, Inc. v. Genentech, Inc.,
` IPR2017-00739, Paper 16 (PTAB July 27, 2017) .................................................. 7
`
`In re Packard,
` 751 F.3d 1307, 1313 (Fed. Cir. 2014) .................................................................. 69
`
`In re Translogic Tech., Inc.,
` 504 F.3d 1249 (Fed. Cir. 2007) ............................................................................ 21
`
`
`
`
`v
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`

`

`
`
`Internet Patents Corp. v. Active Network, Inc.,
` 790 F.3d 1343 (Fed. Cir. 2015) ..................................................................... 33, 36
`
`Kayak Software Corp. v. IBM Corp.,
` CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) .............................................. 7
`
`Live Nation Entm’t, Inc. v. Complete Entm’t Res. B.V.,
` PGR2017-00038, Paper 11 (PTAB Jan. 16. 2018) ................................................ 8
`
`LizardTech, Inc. v. Earth Res. Mapping, Inc.,
` 424 F.3d 1336 (Fed. Cir. 2005) ............................................................................ 62
`
`Lockwood v. Am. Airlines, Inc.,
` 107 F.3d 1565 (Fed. Cir. 1997) ......................................................... 27, 28, 31, 64
`
`Markman v. Westview Instruments, Inc.,
` 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996) ................... 23
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
` 566 U.S. 66 (2012) ............................................................................................... 48
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
` 837 F.3d 1299 (Fed. Cir. 2016) ......................................................... 33, 34, 36, 41
`
`Microsoft Corp. v. Proxyconn, Inc.,
` 789 F.3d 1292 (Fed. Cir. 2015) ............................................................... 21, 22, 32
`
`Paice LLC v. Ford Motor Co.,
` 881 F.3d 894 (Fed. Cir. 2018) .............................................................................. 62
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) ............................................................... 23, 24, 30
`
`
`
`
`vi
`
`

`

`
`
`PNC Bank v. Secure Axcess, LLC,
` CBM2014-00100, Paper 10 (PTAB Sept. 9, 2014) .............................................. 45
`
`PPC Broadband, Inc. v. Corning Optical Commc'n RF, LLC,
` 815 F.3d 734 (Fed. Cir. 2016) .............................................................................. 21
`
`Praxair, Inc. v. ATMI, Inc.,
` 543 F.3d 1306 (Fed. Cir. 2008) ............................................................................ 70
`
`Suffolk Techs., LLC v. AOL Inc.,
` 752 F.3d 1358 (Fed. Cir. 2014) ............................................................................ 52
`
`Supercell Oy v. GREE, Inc.,
` PGR2018-00037, Paper 7 (PTAB Sept. 4, 2018) ................................................... 3
`
`Telebrands Corp. v. Tinnus Enters., LLC,
` PGR2017-00015, Paper 16 (PTAB Oct. 11, 2017) ................................................ 8
`
`Trading Techs. Int’l, Inc. v. eSpeed, Inc.,
` 595 F.3d 1340 (Fed. Cir. 2010) ............................................................................ 70
`
`Ultramercial, Inc. v. Hulu, LLC,
` 772 F.3d 709 (Fed. Cir. 2014) ....................................................................... 32, 58
`
`Unified Patents Inc. v. Berman,
` IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ................................................. 7
`
`Vitronics Corp. v. Conceptronic, Inc.,
` 90 F.3d 1576 (Fed. Cir. 1996) ................................................................. 23, 27, 28
`
`Ziegmann, N.P.Z., Inc., v. Stephens,
` IPR2015-01860, Paper 13 (PTAB Sept. 6, 2017) .................................................. 6
`
`
`
`
`
`vii
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`

`

`
`
`Statutes 
`35 U.S.C § 324(a) ................................................................................... 1, 36, 46, 49
`
`35 U.S.C. § 325(d) .................................................................................................4, 6
`
`
`Other Authorities 
`Memorandum from Robert W. Bahr, Deputy Comm’r for Patent Examination
`Policy, to Patent Examining Corps, Changes in Examination Procedure
`Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
`Decision (Berkheimer v. HP, Inc.) (April 19, 2018) ....................................... 5, 53
`
`
`MPEP § 2106.07 ...................................................................................................... 40
`
`MPEP § 2163 ........................................................................................................... 62
`
`MPEP § 2173.02(II) ................................................................................................. 69
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ................ 1
`
`
`Regulations 
`37 C.F.R. § 42.200(b) .............................................................................................. 21
`
`37 C.F.R. § 42.204(b)(4) .................................................................................. passim
`
`37 C.F.R. § 42.208(c) .............................................................................. 1, 36, 46, 72
`
`
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`viii
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`

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`
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`EXHIBIT LIST
`
`Exhibit No.
`
`2001
`2002
`2003
`
`Exhibit Description
`Prosecution History of U.S. Patent No. 9,662,573
`Declaration of David Crane
`David Crane’s Curriculum Vitae
`
`ix
`
`

`

`
`
`Pursuant to 37 C.F.R. § 42.207, Patent Owner GREE, Inc. (“Patent Owner”
`
`or “GREE”) submits the following Preliminary Response to the Petition for Post
`
`Grant Review (“the Petition”) of U.S. Patent No. 9,873,044 (“the ‘044 patent”) filed
`
`by Supercell Oy (“Petitioner” or “Supercell”). For at least the following reasons,
`
`the Petition should be denied in its entirety, and no post-grant review should be
`
`instituted under 35 U.S.C. § 324.
`
`I.
`
`INTRODUCTION
`Petitioner bears the burden required by the United States Patent and
`
`Trademark Office (“the Office”) regulations to demonstrate that it is more likely
`
`than not that at least one of the claims challenged in the Petition is unpatentable. See
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,765 (Aug. 14, 2012)
`
`(“Trial Practice Guide”); see also 35 U.S.C § 324(a); 37 C.F.R. § 42.208(c). “The
`
`‘more likely than not’ standard requires greater than 50% chance of prevailing.”
`
`Trial Practice Guide, 77 Fed. Reg. at 48,765. Petitioner has failed to meet that
`
`burden for several reasons.
`
`
`
`First, the Petition should be denied under 35 U.S.C. § 325(d). Petitioner
`
`contends that prosecution of the parent application of the ‘044 patent should be
`
`evaluated as pertaining to the ‘044 patent. During prosecution of the parent
`
`application, issues under 35 U.S.C. § 101 were fully addressed and overcome. Based
`
`
`
`1
`
`

`

`
`
`on Petitioner’s assertion that the prosecution history of the parent should be
`
`evaluated with respect to the ‘044 patent, the Board should reject this Petition
`
`because it repeats arguments under 35 U.S.C. § 101 that were addressed and
`
`overcome during prosecution.
`
`Second, although the Petition sets out the standard used to construe the
`
`claims, it fails to follow the law regarding how claim terms are to be construed. For
`
`instance, Petitioner’s claim constructions begin by using dictionary definitions,
`
`ignore intrinsic evidence, and propose claim constructions for terms that are not
`
`recited in the claims. Petitioner’s arguments under 35 U.S.C. §§ 101 and 112 rely
`
`on these faulty constructions, so the premise of each of these arguments fails as a
`
`result.
`
`Finally, Petitioner’s 35 U.S.C. §§ 101 and 112 arguments start with the
`
`contention that the claims do not cover the inventive concept disclosed by the
`
`specification of the ‘044 patent. But, Petitioner’s position is only made possible by
`
`cherry-picking selected language from the specification. When considered in its
`
`entirety, the specification shows that Petitioner’s premise cannot be supported.
`
`Because each of Petitioner’s arguments under 35 U.S.C. §§ 101 and 112 starts with
`
`this flawed premise, each of its arguments necessarily fails as a result.
`
`Denial of the Petition is proper for any one of the foregoing reasons.
`
`
`
`2
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`

`

`
`
`II. DENIAL OF INSTITUTION OF POST-GRANT REVIEW OF
`THE PARENT PATENT
`U.S. Patent No. 9,873,044, which is the subject of this post-grant review
`
`request, is a continuation of U.S. Patent No. 9,662,573 (“the ‘573 patent”). The ‘573
`
`patent was recently the subject of a separate post-grant review request, PGR2018-
`
`00037. That request was also filed by the same Petitioner on similar grounds under
`
`35 U.S.C. §§ 101 and 112.
`
`The Patent Trial and Appeal Board (“PTAB”) recently denied Petitioner’s
`
`request for post-grant review in PGR2018-00037. Supercell Oy v. GREE, Inc.,
`
`PGR2018-00037, Paper 7 (PTAB Sept. 4, 2018). The PTAB stated that “we are
`
`unpersuaded by Petitioner’s argument that providing these sequential incentives, as
`
`claimed, was conventional and known in the prior art.” Id. at 21. The claims of the
`
`‘044 patent, which is the subject of the current request, similarly include sequential
`
`incentives. And, like PGR2018-00037, Petitioner provides no evidence, relevant
`
`case law, or persuasive argument in support of its contentions, as discussed in more
`
`detail herein.
`
`For similar reasons set forth in the Decision Denying Institution of Post-Grant
`
`Review of the ‘573 patent, the current Petition should also be denied.
`
`
`
`3
`
`

`

`
`
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §
`325(D)
`The ‘044 patent (U.S. Patent Application No. 15/491,349) is a continuation of
`
`U.S. Patent Application No. 14/338,030 (the “’030 application”), which issued as
`
`U.S. Patent No. 9,662,573 (“the ‘573 patent”). Petitioner contends that “the
`
`prosecution of the ‘030 application should be evaluated as pertaining to the ‘349
`
`application.” Pet. at 29. Inspection of the prosecution history of the ‘030 application
`
`reveals that 35 U.S.C. § 101 was fully addressed and overcome during the
`
`prosecution of the ‘573 patent. See Ex. 2001.
`
`The Board has the discretion to deny a Petition, such as the one filed by
`
`Supercell against the ‘044 patent, when “the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The
`
`current Petition should be denied by the Board because it provides no new evidence
`
`and addresses substantially the same § 101 issues already addressed during
`
`prosecution of the ‘030 (parent) application.
`
`To begin, Petitioner makes the unsupported and speculative argument that the
`
`Examiner “was not wholly familiar with the BASCOM case” and “likely had not seen
`
`the most recent Subject Matter Eligibility Examples.” Pet. at 32. On this basis,
`
`Petitioner concludes that “the examiner erred in his application of BASCOM during
`
`prosecution of the ‘030 application.” Pet. at 31. Petitioner’s speculation regarding
`
`
`
`4
`
`

`

`
`
`the Examiner’s familiarity with relevant case law is entirely unsupported by any
`
`evidence. Questioning the competency of the Examiner should not serve as a basis
`
`for institution, especially where the prosecution history plainly indicates that the
`
`Examiner actually did consider the BASCOM case, as discussed below.
`
`Petitioner also argues that institution based on § 101 is warranted under
`
`Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Pet. at 27-29. But
`
`Berkheimer did not represent a change in § 101 law. As explicitly noted by the
`
`USPTO’s Deputy Commissioner for Patent Examination Policy, Robert Bahr, the
`
`Berkheimer decision “does not change the basic subject matter eligibility framework
`
`as set forth in MPEP § 2106.” Memorandum from Robert W. Bahr, Deputy Comm’r
`
`for Patent Examination Policy, to Patent Examining Corps, Changes in Examination
`
`Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
`
`Decision (Berkheimer v. HP, Inc.) (April 19, 2018) (hereinafter “April 2018
`
`Memorandum”).
`
`Since Berkheimer did not substantively change § 101 law, the Board does not
`
`need to revisit years of prosecution that properly addressed the patentability of the
`
`challenged claims over the same arguments advanced in the current Petition. As set
`
`forth below, the Board need not, and should not, rehash issues already considered
`
`
`
`5
`
`

`

`
`
`and addressed by the Office during prosecution of the ‘573 patent, which is the
`
`parent of the ‘044 patent being challenged in this Petition.
`
`Under 35 U.S.C. § 325(d), Congress granted the Board broad discretionary
`
`power to deny institution of a post-grant proceeding “because, the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.” 35 U.S.C. § 325(d) (emphasis added). A set of prior art or arguments may
`
`be considered “‘substantially the same’ if they are ‘cumulative to or substantially
`
`overlap with issues previously considered by the Office with respect to the patent.’”
`
`Ziegmann, N.P.Z., Inc., v. Stephens, IPR2015-01860, Paper 13 at 8 (PTAB Sept. 6,
`
`2017) (citation omitted).
`
`The Board has indicated its discretion under § 325(d) involves a balancing act
`
`of the particular circumstances of the proceeding, the competing interests of the
`
`parties, and the needs of the Board. Ziegmann, IPR2015-01860, Paper 11 at 12-13
`
`(“While petitioners may have sound reasons for raising art or arguments similar to
`
`those previously considered by the Office, the Board weighs petitioners’ desires to
`
`be heard against the interests of patent owners, who seek to avoid harassment and
`
`enjoy quiet title to their rights.”). There are also “interests in conserving the
`
`resources of the Office and granting patent owners repose on issues and prior art that
`
`
`
`6
`
`

`

`
`
`have been considered previously.” Fox Factory, Inc. v. SRAM, LLC, IPR2016-
`
`01876, Paper 8 at 7 (PTAB Apr. 3, 2017).
`
`In several, recent informative decisions, the Board provides guidance on its
`
`consideration of petitions that reuse “the same or substantially the same arguments”
`
`already considered by the Office. See, e.g., Unified Patents Inc. v. Berman,
`
`IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) (denying institution because the
`
`asserted obviousness combination included a reference previously considered by the
`
`examiner and a new reference that was cumulative of prior art cited during
`
`prosecution); Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16
`
`(PTAB Dec. 15, 2016) (denying institution on the petitioner’s proffered grounds of
`
`obviousness because the primary reference and two of the three secondary references
`
`were previously “presented to and extensively considered by the Office during
`
`prosecution of the [challenged] patent.”); Hospira, Inc. v. Genentech, Inc., IPR2017-
`
`00739, Paper 16 (PTAB July 27, 2017) (denying institution because the examiner
`
`had already considered the dispositive issue of whether the claims were entitled to
`
`the priority date of the earlier-filed application); Cultec, Inc. v. Stormtech LLC,
`
`IPR2017-00777, Paper 7 (PTAB Aug. 22, 2017) (denying institution where the same
`
`prior art and arguments were already considered by the examiner in a third party
`
`submission).
`
`
`
`7
`
`

`

`
`
`The Board’s broad application of § 325(d), particularly about what constitutes
`
`“previously presented to the Office,” indicates its disfavor of duplicative
`
`proceedings that force the patent owner to repeatedly defend a patent’s validity based
`
`on the same or substantially the same arguments. Accordingly, the Board has
`
`repeatedly denied institution when the “same or substantially the same prior art or
`
`arguments” were presented during original prosecution of the challenged patent.
`
`See, e.g., Telebrands Corp. v. Tinnus Enters., LLC, PGR2017-00015, Paper 16
`
`(PTAB Oct. 11, 2017).
`
`Most recently, the Board denied institution under 35 U.S.C. § 325(d) because
`
`the petition’s challenges, including § 101 eligibility, were deemed redundant of the
`
`Patent Office’s earlier examination of similar claims in a related application. Live
`
`Nation Entm’t, Inc. v. Complete Entm’t Res. B.V., PGR2017-00038, Paper 11 (PTAB
`
`Jan. 16. 2018). In particular, the Board found the Petitioner’s subject matter
`
`ineligibility arguments to be “substantially the same as those previously presented
`
`to the Office during prosecution of the ’811 patent.” Id. at 12. In denying the
`
`petition, the Board noted that the Examiner had already rejected “those arguments
`
`in a detailed analysis.” Id.
`
`As set forth below, the current Petition should similarly be denied because it
`
`provides no new evidence and merely reiterates the same § 101 arguments already
`
`
`
`8
`
`

`

`
`
`presented to the Office during prosecution of the ‘573 patent, which is the parent of
`
`the ‘044 patent. For example, Petitioner contends that the claims of the ‘044 patent
`
`are invalid under 35 U.S.C. § 101 for claiming an abstract idea under step one of
`
`Alice. Pet. at 35-41. Unsubstantiated and unsupported by any evidence, Petitioner
`
`alleges that the appropriate 35 U.S.C. § 101 guidance was not addressed during
`
`prosecution and accuses the Office of misapplying and misunderstanding Federal
`
`Circuit cases, such as the BASCOM decision. Id. at 29-33. But, as detailed below,
`
`the ‘573 patent’s extensive prosecution history on this very ground clearly
`
`demonstrates that the issues raised in the Petition have already been fully addressed
`
`and overcome. In fact, the Examiner rejected the claims under 35 U.S.C. § 101 not
`
`once, but twice during prosecution of the ‘573 patent.
`
`In the first substantive Office Action of the ‘573 patent, dated August 8, 2016,
`
`the Examiner rejected claims 1-11 under 35 U.S.C. § 101 as being directed to non-
`
`statutory subject matter. Ex. 2001 at 113-121. Applying the current two-step Alice
`
`test for subject matter eligibility, the Examiner determined, under the first step, that
`
`claims 1-8 and 10-11 were directed to the abstract idea of “giving incentives to a
`
`player for inviting other players into a game.” Compare Ex. 2001 at 115-120 with
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`Pet. at 25-26 (providing the same legal standard). Under the second step of the
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`analysis, the Examiner further concluded that “[w]hen looked at individually and as
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`a whole, the claim limitations…do not amount to significantly more than the abstract
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`idea.” Ex. 2001 at 121.
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`Following the first Office Action, the Examiner and Patent Owner’s
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`representatives conducted an interview on September 22, 2016, to discuss the
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`outstanding Office Action. As reflected in the Examiner’s Interview Summary, the
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`patentee specifically relied on the McRO decision to argue that the claims do not
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`improperly preempt the abstract genus. Id. at 87. While the Examiner
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`acknowledged not being familiar with the recent Federal Circuit decision (which had
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`issued only days before the interview), he explicitly noted that “[a]ny decisions
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`about the patent subject matter eligibility rejection would be dependent on the
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`examiner’s review of McRO.” Id.
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`On December 2, 2016, the Examiner issued a Final Office Action, maintaining
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`the same rejection of the claims under 35 U.S.C. § 101 for allegedly being directed
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`to an abstract idea without significantly more. Id. at 51-57. In particular, the
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`Examiner addressed each of Applicant’s arguments presented in the September 7,
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`2016 Response, and indicated that while they had been fully considered, the
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`arguments were not persuasive. Id. at 74-77.
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`In a January 24, 2017 Applicant-Initiated Examiner Interview Summary, the
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`Examiner discussed how the “the previous interview was extremely helpful to
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`understand the inventive concept.” Id. at 30. In summarizing the substance of the
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`Interview of record, the Examiner stated:
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`With respect to the rejection under 35 U.S.C. 101, the
`examiner was not persuaded that the present claims are not
`directed to an abstract idea and maintains that, under step
`2A, the present claims are still directed to an abstract idea
`in light of buySAFE and Planet Bingo. Furthermore, the
`examiner is not persuaded that the present claims are
`directed
`to an “improvement
`in computer-related
`technology” similar to McRO. However, Examine[r]
`Garner stated that Bascom found that ‘an inventive
`concept can be found in the non-conventional and non-
`generic arrangement of known, conventional pieces”
`(Bascom [p.15]). The present claims are, therefore,
`directed to “significantly more” in light of the court’s
`decision in Bascom.
`
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`Id. (emphasis added). Following the second Applicant-Initiated Interview, the
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`Examiner allowed claims 1-4 and 6-12 of the ‘030 application, and stated the
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`following reasons for allowance in the Notice of Allowability:
`
`With respect to the rejection under 35 USC 101, the
`examiner is persuaded that the claims are directed to patent
`eligible subject matter. The examiner maintains that, under
`step 2A of the two-part analysis, the claims are directed to
`a fundamental economic activity and certain methods of
`organizing human activity, as recited in the final rejection
`dated December 2, 2016. Upon further review, in
`consideration of applicant's arguments from the Response
`to Final Office Action of December 2, 2016, the examiner
`is persuaded that the claims recite significantly more than
`the abstract idea under step 2B. In light of the recent
`decision in BASCOM Global Internet Services v. AT&T
`Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the
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`examiner recognize[s] that when combined, an inventive
`concept may be found in the non-conventional and
`non-generic arrangement of the additional elements of the
`present claims. When
`the
`limitations are viewed
`individually, the present claims recite generic computer
`devices carrying out seemingly conventional steps,
`however, when viewed as a whole, the claims recite a non-
`conventional and non-generic arrangement of
`the
`additional elements which are significantly more than the
`abstract idea. The claims are, therefore, directed to patent
`eligible subject matter.
`
`
`Id. at 15 (emphasis added).
`
`Starting from the first, non-final Office Action issued by the Office on August
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`8, 2016 and continuing all the way through to the Notice of Allowance issued on
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`February 3, 2017, the claims of the ‘573 patent were analyzed under the two-step
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`analysis for subject matter eligibility, set forth by the Supreme Court in Alice Corp.
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`v. CLS Bank. Further, as evident from the multiple Office Actions and Interview
`
`Summaries, several guidelines issued by the Office before and during the 2016-2017
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`timeframe were also reviewed and explicitly considered by the Office. Above all,
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`in the “Reasons for Allowance” included in the Notice of Allowance issued on
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`February 3, 2017, the Examiner provides a detailed analysis as to exactly why the
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`claims were directed to patent eligible subject matter, particularly considering the
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`BASCOM decision.
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`Notwithstanding Petitioner’s citation to the recent Berkheimer decision, relied
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`upon by Petitioner not for the merits of 35 U.S.C. § 101 analysis, but rather, as a
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`procedural basis for instituting trial, the remaining arguments in the Petition
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`regarding 35 U.S.C. § 101 are premised on Federal Circuit decisions already
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`considered by the Office during prosecution of the ‘573 patent.
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`For example, Petitioner incorrectly asserts that “[e]xaminers had not been
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`instructed to determine whether the patents merely recite ‘generalized steps to be
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`performed on a computer using conventional computer activity,’ as the Federal
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`Circuit’s Enfish and In re TLI Commc’ns decisions instructed.” Pet. at 30. In support
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`of this assertion, Petitioner presents a chronology of issued USPTO § 101 guidance
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`to emphasize the inherent shortcomings of the first Office Action (mailed prior to
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`the cited guidance). Id. at 30-31. It is telling, however, that the Petitioner fails to
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`identify and/or explain the alleged deficiencies of later prosecution, given that the
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`guidance cited by the Petitioner came out well before the ‘573 patent issued. See id.
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`In fact, the ‘573 patent file history directly refutes Petitioner’s contention. The
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`cited language in the Petition is an almost verbatim copy of the Examiner’s asserted
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`grounds for rejection, as set forth in both Office Actions. See,