Trials@uspto.gov
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`Paper No. 7
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` Entered: December 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 PGR2018-00066
`Patent 9,873,044 B2
`____________
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
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`
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`571-272-7822
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`Paper No. 7
`
`
` Entered: December 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00066
`Patent 9,873,044 B2
`____________
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`PGR2018-00066
`Patent 9,873,044 B2
`
`
`I.
`
`INTRODUCTION
`A. Background
`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
`claims 1–10 (“challenged claims”) of U.S. Patent No. 9,873,044 B2
`(Ex. 1001, “the ’044 patent”) pursuant to 35 U.S.C. §§ 321–329. Paper 1
`(“Pet.”). GREE Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324,
`which provides that a post-grant review may be instituted only if “the
`information presented in the petition . . . demonstrate[s] that it is more likely
`than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`Petitioner challenges the patentability of claims 1–10 of the ’044
`patent under 35 U.S.C. §§ 101, 112(a), and 112(b). After considering the
`Petition and the Preliminary Response, as well as all supporting evidence,
`we conclude that the information presented in the Petition does not
`demonstrate that it is more likely than not that at least one of the challenged
`claims is unpatentable. Accordingly, we do not institute a post-grant review
`of the challenged claims.
`
`B. Related Matters
`The parties state that there are no related litigation matters. Pet. 1;
`Paper 3, 1 (identifying PGR2018-00037, challenging U.S. Patent
`No. 9,662,573 (“the ’573 patent”), to which the ’044 patent claims priority
`as a continuation).
`
`C. The ’044 Patent
`The ’044 patent is entitled “Method For Controlling Server Device,
`
`Server Device, Server Device, Computer-Readable Recording Medium and
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`Game System.” Ex. 1001, (54). The ’044 patent aims to “enhance
`motivation of a player to invite another player to a social game.” Id. at (57).
`
`The ’044 patent identifies the popularity of social games that are
`“provided from a server device via a communication network to mobile
`terminals.” Id. at 1:20–21. Players may participate in such games by
`accessing the gaming platform directly, or by invitation from another player
`who already participates in the game. Id. at 1:64–67. By way of
`background, the ’044 patent describes scenarios in which an existing player
`who invites another to the game may “get a predetermined incentive,” for
`example, “a coin or precious item[] such as a rare item that can be used in
`the social game,” when the invited user participates in the game. Id. at 2:1–
`8. However, according to the ’044 patent, because the first player receives
`an incentive only when the invited user actually “participates in (registers)”
`with the game, the value of the incentive is “small relative to the effort of
`transmitting the invitation mail, [so] they will stop transmitting invitation
`mail.” Id. at 2:20–31. Thus, “it is difficult to increase the number of players
`who participate in the social game.” Id. at 2:35–40.
`
`Accordingly, the ’044 patent seeks to enhance the motivation of
`players to invite others to a social game. Id. at 2:41–46. Embodiments of
`the invention include a server device, connected to a network, which
`communicates with terminal devices, e.g., client computers or mobile
`terminals. Id. at 4:37–, 15:9–34, Figs. 1–2. The ’044 patent explains that
`“management range T1 refers to the range of information and processing
`that the provider can manage in the platform, e.g., including information on
`registered members, information on provided games (applications), and the
`processing relating to messages and e-mail among the members, for
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`example.” Id. at 10:1–6 (emphasis added). “External service S1 is a service
`that is provided outside of the management range T1,” and which “manages
`messages and e-mail exchanged between information processing terminals
`including the terminal devices . . . [and may] work with the message
`processing in the management range T1, whereby messages and e-mail can
`be exchanged in and out of the management range T1.” Id. at 10:12–20
`(emphasis added).
`
`Figure 7 of the ’044 patent is reproduced below.
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`Patent 9,873,044 B2
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`Figure 7 depicts a flowchart illustrating an exemplary process for giving
`incentives to a first player. Id. at 4:9–11.
`
`As depicted in Figure 7, a first player, operating a first terminal
`device, transmits an invitation message to a second user of a second terminal
`device, via external service S1 (step ST501). Id. at 11:26–30. The invitation
`message includes a URL that specifies a landing screen and contains a
`tracking code that identifies the first player from whom the invitation
`originated. Id. at 9:37–46. Next, the second user views the invitation
`(ST502), and determines whether to access the landing screen by clicking
`the URL (ST503). Id. at 11:31–34, 46–48, 56–57. If the second user
`accesses the landing screen from the URL, “the server device 100 can obtain
`the tracking code” to identify the first player (ST504). Id. at 9:51–57,
`11:57–63, 11:63–12:1 (or, terminating process if URL is not clicked),
`11:66–12:4. In response, the server “gives a first incentive to the [first]
`player who is identified with the tracking code (ST505)” and displays the
`landing screen to the second, invited user (ST506). Id. at 12:14–23
`(emphasis added).
`
`After the landing screen is displayed, the invited second user
`determines whether to register as a member with the game provider (ST507).
`Id. at 12:23–35. If the second user elects to register, the server displays the
`appropriate platform screen to allow member registration (ST508–509). Id.
`at 12:36–46; see also id. at 12:57–67 (or, declining to register). In such a
`circumstance, the server gives a second incentive to the first player, who
`sent the invitation message (ST510). Id. at 12:46–51.
`
`A home screen is then displayed to the second user (ST512), through
`which the second user may also elect to register as a player in the game
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`(ST513). Id. at 13:5–13. If player registration is completed, the server then
`gives a third incentive to the first player (ST514). Id. at 13:14–19.
`
`The ’044 patent also explains that the incentives may “change[]
`gradually in accordance with the degree of importance of the operation,” for
`example, “the first incentive may be the smallest,” “[t]he second incentive
`may be the largest because it is given to the operation that becomes a great
`advantage for the provider,” and “[t]he third incentive may be at the medium
`level.” Id. at 13:64–14:4. Also, the number of times the incentives may be
`earned may be limited for a predetermined duration. Id. at 14:5–8. “Players
`may be informed of the number of times of incentives given or their contents
`by a predetermined method, whereby the players can be encouraged to
`transmit invitation messages.” Id. at 14:19–22.
`
`Illustrative Claim
`D.
`Of challenged claims 1–10, each of claims 1, 9, and 10 are
`independent. Claim 10 is illustrative and is reproduced below.1
`10. A non-transitory computer-readable recording medium
`having a program that can be readable by a computer that
`provides a game, in which a plurality of players can participate,
`and that is connected to terminal devices operated by the players
`via a communication line and which program, when executed by
`said computer, provides an incentive giving function that:
`[a] enables a first terminal device to send invitation
`information to a second terminal device, wherein the
`invitation information includes specific information to at least
`specify a landing screen associated with the game;
`[b] detects when the second terminal device is operated
`to access the landing screen on a basis of the specific
`information; and
`
`
`1 Petitioner identifies claim 10 as “representative.” Pet. 13.
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`[c1] responsive to said detecting, gives a first incentive
`to a first player who operates the first terminal device; and
`[c2] gives a second incentive to the first player when a
`second player who operates the second terminal device
`participates in the game and achieves a specific matter that is
`predetermined in the game.
`Ex. 1001, 17:16–18:17 (brackets added).
`Additionally, independent claim 1 is directed to a “method for
`controlling a server device,” and independent claim 9 is directed to a “server
`device.” Id. at 16:2–20, 16:66–17:15. Each independent claim recites, with
`some variation, limitations directed to [a] enabling the sending of invitation
`information, [b] detecting access to a landing screen, and giving [c1] first
`incentives and [c2] second incentives. Hereinafter, we will refer to the
`limitations concerning first and second incentives as a “sequence of
`incentives.”
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–10 of the ’044
`patent on the following grounds (Pet. 11).
`Statutory Basis Claims
`§ 101
`1–10
`§ 112(a)
`1–10
`§ 112(b)
`1–10
`With its Petition, Petitioner does not provide declarant testimony, for
`example, from a person of ordinary skill in the art. Patent Owner relies on
`the testimony of Mr. David Crane (Ex. 2002, the “Crane Declaration”).
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`F. Eligibility of Patent for Post-Grant Review
`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).
`Petitioner asserts that the ’044 patent is “available for Post Grant
`Review” and “is subject to the post-AIA provisions of the Patent Statute.”
`Pet. 2, 11. Specifically, the ’044 patent was filed on April 19, 2017, and
`claims priority to: (1) the ’573 patent, filed on July 22, 2014, and
`(2) a Japanese application filed on July 22, 2013, wherein all dates fall after
`March 16, 2013. Id. at 10; Ex. 1001, (22), (63), (30). Also, the Petition was
`filed on June 7, 2018, which is within nine months of the January 23, 2018,
`issue date of the ’044 patent. Ex. 1001, (45); Pet. 2. On this record, we
`determine that the ’044 patent is eligible for post-grant review.
`
`II. ANALYSIS
`A. Claim Construction
`In this post-grant review proceeding, filed prior to November 13,
`2018, the claims are afforded their broadest reasonable interpretation in light
`
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`2 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`Patent 9,873,044 B2
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`of the ’044 patent specification. 37 C.F.R. § 42.200(b) (2016); see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`the broadest reasonable interpretation standard, claim terms are generally
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a
`“claim term will not receive its ordinary meaning if the patentee acted as his
`own lexicographer and clearly set forth a definition of the disputed claim
`term in either the specification or prosecution history.” CCS Fitness, Inc. v.
`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Petitioner proposes constructions for the claim terms “incentive” and
`“specific matter,” and for the claimed concepts of “enable invitation” and
`“detect access.” Pet. 11–23 (citing Exs. 1001, 1003). Patent Owner disputes
`Petitioner’s positions. Prelim. Resp. 21–32 (citing Ex. 1001).
`1. “incentive”
`Each independent claim recites that first and second incentives are
`given to a first player upon satisfaction of certain claimed conditions. See
`Ex. 1001, claims 1, 9, 10. For example, independent claim 10 recites that a
`program provides an incentive-giving function that, “responsive to said
`detecting [when the second terminal device accesses the landing screen],
`gives a first incentive to the first player” and “gives a second incentive to the
`first player when a second player . . . participates in the game and achieves a
`specific matter that is predetermined in the game.” Id. at 18:12–17.
`Petitioner contends that although the “plain meaning of ‘incentive’ is
`‘thing that motivates or encourages one to do something,’” that meaning
`should be discounted, in this case, because the ’044 patent uses the term
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`differently. Pet. 18 (citing Ex. 1003, 3). According to Petitioner, the ’044
`patent “does not disclose informing the player of incentives prior to the
`invitation step, nor is an informing step recited in the claims.” Id. Thus,
`Petitioner contends that the first player “is not more motivated or
`‘incentivized’ to invite others” because he does not know of any incentive
`for doing so. Id. Rather, “what the ’044 patent refers to as ‘incentives’ are
`instead rewards absent such knowledge: ‘a thing given in recognition of
`one’s service, effort, or achievement.’” Id. (citing Ex. 1003, 4). Petitioner
`also alleges that the claimed incentives could be anything. Id. at 19. Thus,
`Petitioner contends that “the broadest reasonable interpretation of ‘incentive’
`is a reward provided to a player in exchange for meeting a condition.” Id.
`Patent Owner disagrees. Prelim. Resp. 23. First, Patent Owner argues
`that Petitioner disregards the law applicable to claim construction, as
`articulated in, e.g., Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005),
`by improperly focusing on dictionary definitions, rather than looking to the
`intrinsic record. Id. at 23–24. Second, Patent Owner argues that Petitioner’s
`position that the ’044 patent does not disclose informing the first player of
`the incentives prior to the invitation step is inconsistent with the
`specification, which explains that “[p]layers may be informed” about the
`incentives. Id. at 24–25 (citing Ex. 1001, 14:19–22). Patent Owner also
`contends that the specification provides examples of the claimed incentives,
`which Petitioner disregards, and argues that Petitioner fails to provide any
`support for its position that the incentive could be anything. Id. at 25.
`Finally, Patent Owner alleges that Petitioner’s proposed construction is
`unsupported and inconsistent with the dictionary definition of “reward”
`offered by Petitioner. Id. at 25–26.
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`We are not persuaded by Petitioner’s position. We start with the
`claim language. Each claim specifies the conditions upon which the claimed
`incentives are given. For example, claim 10 specifies that the first incentive
`is given “responsive to said detecting [access to the landing screen],” and the
`second incentive is given “when [the] second player . . . participates in the
`game and achieves a specific matter.” Ex. 1001, 18:12–17. Thus, on this
`record, we are persuaded that the “in exchange for meeting a condition”
`portion of Petitioner’s construction is redundant.
`We also are not persuaded that the specification uses “incentive”
`differently from its proffered plain meaning as “a thing that motivates or
`encourages one to do something,” or that the claimed incentives could be
`anything, as Petitioner argues. Ex. 1003, 3. For example, in describing the
`prior art, the specification states that, “the player transmitting . . . invitation
`mail will get a predetermined incentive[, which] . . . may be a coin or
`precious item[] such as a rare item that can be used in the social game. That
`is, the player can play the social game favorably” with the item given as an
`incentive. Ex. 1001, 2:9–12. Thus, the specification explains that the coin
`or item is given to motivate or encourage the player to transmit invitation
`mail. See also id. at 2:16–19 (explaining that the number of players
`participating in the game will increase due to the transmission of invitation
`mail).
`Likewise, in describing the invention, the specification states that “the
`first incentive is given” when a specified event occurs, e.g., “when an access
`is made to the landing screen V1 based on the invitation message. This can
`increase a coin, an item or the like in the game of the player.” Id. at 12:13–
`20. Similar descriptions are provided for the second and third incentives
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`given to the first player. Id. at 12:47–56, 13:14–22. Again, the specification
`describes these incentives as things given to motivate or encourage preferred
`behavior, e.g., the first player sending an invitation message through which a
`second user can access a landing screen, register as a member with the
`provider, and register as a player in the game. And again, these incentives
`are described as useful in playing the game. Ex. 2002 ¶¶ 33 (Mr. Crane
`testifying that “[i]n social gaming, players typically accumulate ‘virtual
`goods’ — assets [that] have no real-world existence, but are useful in some
`way within the game context”), 14–18 (describing gaming referral reward
`structures).
`We are unpersuaded by Petitioner’s position that, in the context of the
`’044 patent, a player “is not more motivated or ‘incentivized’ to invite
`others” because he does not know of any incentive for doing so. Pet. 18.
`First and foremost, this position is inconsistent with the intrinsic record. The
`’044 patent specification explains that “[p]layers may be informed of the
`number of times of incentives given or their contents by a predetermined
`method, whereby the players can be encouraged to transmit invitation
`messages.” Ex. 1001, 14:19–22. Thus, the specification does describe that
`players are informed of the incentives available for referring other users to
`the game. Contra Pet. 18 (“The ’044 patent does not disclose informing the
`player of incentives prior to the invitation step.”).
`The only extrinsic evidence of record on this point is from Patent
`Owner—the Crane Declaration—and that evidence is consistent with the
`intrinsic record. Specifically, Mr. Crane testifies that “the quality and
`frequency” of incentives and the “increased reward-to-effort ratio,” as
`disclosed in the ’044 patent, incentivize behavior. Ex. 2002 ¶¶ 24, 25; see
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`also id. ¶ 23 (“[B]ehavior can be incentivized either through promise or
`reward.”), 28 (“By applying dynamically-changing separate incentive limits
`to the three incentive-earning events over a predetermined duration, a player
`is given to understand that additional invitations may be rewarded.”).
`Therefore, in light of the specification’s teachings and unrebutted testimony
`that a series of incentives associated with the same action (i.e., sending an
`invitation) can motivate behavior, we are not persuaded by Petitioner’s
`argument that a player is not informed of, or motivated by, applicable
`incentives.
`On the record before us, we are persuaded that the ’044 specification
`uses the term “incentive” in a manner consistent with its plain meaning of “a
`thing that motivates or encourages one to do something.” Ex. 1003, 3.
`Furthermore, when read together with the remainder of the claim language,
`and in light of the specification, the claimed “incentive” has value only in
`the context of the social game. See Ex. 1001, 2:9–12 (“that can be used in
`the social game”), 12:18–20 (“in the game”); see also Ex. 2002 ¶ 33 (“useful
`in some way within the game context”). Thus, for purposes of this Decision,
`we construe “incentive” as a thing that can be used to play the social game
`more favorably, which thereby motivates or encourages action.
`2. “specific matter”
`Each independent claim recites that the second incentive is given
`when a second player “achieves a specific matter that is predetermined in the
`game.” Ex. 1001, claims 1, 9, 10. Petitioner contends that “‘specific matter’
`is defined in the specification only by way of example, such as ‘the player
`invited reaches a predetermined level.’ . . . A ‘specific matter’ could
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`therefore be anything.” Pet. 23 (citing Ex. 1001, 14:49–56). Thus,
`Petitioner contends that this term’s “plain meaning should apply.” Id.
`Again, Patent Owner argues that Petitioner disregards the law
`applicable to claim construction by ignoring the specification. Prelim.
`Resp. 30. Patent Owner argues that the specification provides examples of
`what is meant by the claimed “specific matter,” and contends that “Petitioner
`cites to no authority for the proposition that a disclosure in the specification
`can be disregarded simply because it is presented by way of example.” Id. at
`30–31. Patent Owner also contends that Petitioner fails to provide any
`support for its position that “a ‘specific matter’ could therefore be anything.”
`Id. at 31–32. Finally, Patent Owner argues that Petitioner fails to explain
`what the “plain meaning” of this term would be. Id. at 32.
`We are not persuaded by Petitioner’s position. We start with the
`intrinsic record. The ’044 patent explains that an incentive may be given to
`a first player “when the player invited achieves a specific matter that is
`predetermined in the game (e.g., the player invited reaches a predetermined
`level, participates in a predetermined event or acquires a predetermined
`item).” Ex. 1001, 14:51–56. Thus, contrary to Petitioner’s position, the
`claimed “specific matter” is not anything, but is described by reference to
`specific occurrences or achievements, realized in the context of game play.
`Petitioner has not shown persuasively that these examples should be
`discounted when construing this claim term.
`Moreover, as Patent Owner notes, Petitioner contends that this term’s
`“plain meaning should apply,” but fails to identify what that plain meaning
`should be. Prelim. Resp. 32; Pet. 23. Accordingly, on the record before us,
`we determine that express construction of this claim term is not necessary,
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`for purposes of this Decision, to resolve the disputes between the parties.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999); see infra Section II.D.2.
`3. “enabling invitation”
`Each independent claim recites a limitation related, in some form, to
`“enabling invitation information” to be sent from a first terminal device to a
`second terminal device. Ex. 1001, claims 1, 9, 10. For example,
`independent claim 10 recites that a program provides an incentive-giving
`function that “enables a first terminal device to send invitation information
`to a second terminal device.” Id. at 18:5–8.
`Petitioner contends that the plain meaning of “‘enabling’ is to give a
`means of doing something,” and that this plain meaning should apply
`because “enabling” is not defined in the ’044 patent specification. Pet. 19–
`20 (citing Ex. 1003, 2). According to Petitioner, “no steps precede the
`transmission of the invitation by the player . . . . ‘Enabling’ such an action
`by the server device is not described.” Id. at 20 (citing Ex. 1001, 9:28–29,
`11:26–30, Fig. 7). Petitioner contends that “the invitation step is disclosed
`by the specification as user input commanded by [the] player; the computer
`merely executes the command.” Id. at 20 (citing Ex. 1001, 9:20–23). Thus,
`Petitioner contends that “the plain meaning should apply.” Id.
`Again, Patent Owner argues that Petitioner disregards the law
`applicable to claim construction by focusing on a dictionary definition,
`rather than the intrinsic record. Prelim. Resp. 26–27. Patent Owner also
`recognizes that “enabling invitation” is not a term in the claims. Id. at 27.
`According to Patent Owner, Petitioner fails to discuss the intrinsic record
`and fails to support its conclusion that “enabling” is not described therein.
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`Id. Finally, Patent Owner states that, despite advocating that the “plain
`meaning should apply,” Petitioner fails to explain what that “plain meaning”
`should be. Id. at 28.
`We have reviewed the parties’ arguments and the cited evidence, and
`we determine that the specification is consistent with the plain meaning of
`“enable” provided by Petitioner. The ’044 patent describes management
`range T1 and external service S1, which, respectively, provide for
`communications within the game platform and outside of the game platform.
`See Ex. 1001 10:1–20. Landing screen V1, platform screen V2, and home
`screen V3 are displayed by the server device and “are associated with each
`other in a management range T1 of the provider.” Id. at 9:57–10:1, Fig. 5.
`The patent explains that “[first] player A1 operates the terminal device 2 to
`use the external service S1 through the home screen V3 of the
`aforementioned game, thus transmitting an invitation message to the
`terminal devices 2 operated by his/her friends.” Id. at 10:49–53, 11:26–30
`(sending an invitation message “via the external service S1 outside of the
`management range T1”), Fig. 5.
`Thus, on this record, we determine that home screen V3 enables the
`first player to send invitation information to other users via external service
`S1, i.e., home screen V3 “give[s] [a] means [of]” sending invitation
`information (Ex. 1003, 2). This is consistent with Mr. Crane’s testimony.
`Ex. 2002 ¶ 30 (“One of ordinary skill in the art would understand that the
`home screen element V3 serves to enable the sending of said invitation
`through the operation of the first terminal device.”). This, however, is also
`consistent with Petitioner’s position.
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`Accordingly, for purposes of this Decision, we accept the plain and
`ordinary meaning of “enable” proposed by Petitioner as “to give a means of
`doing something.”
`
`4. “detecting access”
`Each independent claim recites a limitation related, in some form, to
`“detecting access.” Ex. 1001, claims 1, 9, 10. For example, independent
`claim 10 recites that a program provides an incentive giving function that
`“detects when the second terminal device is operated to access the landing
`screen.” Id. at 18:9–11.
`Petitioner contends that the plain meaning of “‘detecting’ is to
`discover the presence of,” and that this plain meaning should apply because
`“detecting” is not defined in the ’044 patent specification. Pet. 20–22 (citing
`Ex. 1003, 1). According to Petitioner, the second terminal device, not the
`server, determines whether the URL is clicked in order to access the landing
`screen, and the server only obtains a tracking code. Id. at 22. Thus,
`Petitioner argues that “the specification does not disclose how the server
`device would ‘detect’ the second terminal device access.” Id. (citing
`Ex. 1001, 12:7–12, 12:28–31). Accordingly, Petitioner contends that the
`term’s “plain meaning should apply.” Id. at 22.
`Again, Patent Owner argues that Petitioner disregards the law
`applicable to claim construction by focusing on a dictionary definition.
`Prelim. Resp. 28. Patent Owner also notes that “detecting access” is not a
`term appearing in the claims. Id. Moreover, according to Patent Owner,
`“Petitioner does not state how the alleged absence of disclosure of
`‘detecting’ [in the specification] results in the proposed construction (to use
`the ‘plain meaning’),” or what the plain meaning should be. Id. at 29.
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`We have reviewed the parties’ arguments and the cited evidence, and
`we determine that the specification is consistent with the plain meaning of
`“detect” provided by Petitioner. The ’044 patent explains that the invitation
`message sent to a second user “contains URL (specific information) to
`specify a landing screen (page) V1 . . . . [Also, the] URL to specify V1
`contains tracking code (identification information)” that identifies the first
`player from whom the invitation message was sent. Ex. 1001, 9:37–46.
`Thus, the ’044 patent explains that the URL (1) allows the second user to
`access landing screen V1, and (2) includes tracking code information about
`the sender. Id.
`Upon receipt of the invitation, the second user “is allowed to visually
`identify (view) the contents of the invitation to the game and the URL.” Id.
`at 11:46–48. Then, the second user determines whether to click on the URL.
`Id. at Fig. 7 (ST503). If the second user does click on the URL, “the second
`terminal device accesses the landing screen V1. . . . In response to the access
`to the landing screen V1, the server device 100 acquires a tracking code . . .
`included in the invitation message.” Id. at 12:4–12 (emphasis added), 9:51–
`57 (“the server device 100 can obtain the tracking code”). Thus, the
`specification explains that server device 100 obtains the tracking code
`included in the URL, in response to the second user accessing landing screen
`V1, i.e., the server device “discover[s] . . . the presence . . . of” the tracking
`code and, necessarily, that the second user has accessed the landing screen
`(Ex. 1003, 1). This is consistent with Mr. Crane’s testimony. Ex. 2002
`¶¶ 31–32.
`To the extent Petitioner argues that the server device is not
`“detecting” that the second terminal device accessed the landing screen,
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`because the second terminal device is involved in making such a
`determination (Pet. 21–22), this argument is unsupported and is inconsistent
`with the claim language, which does not require that the server device detect
`access independently. Nor do the claims prescribe how the server detects
`access.
`Accordingly, for purposes of this Decision, we accept the plain and
`ordinary meaning of “detect” proposed by Petitioner as “to discover the
`presence of.”
`
`B. 35 U.S.C. § 101
`Petitioner contends that claims 1–10 do not recite patent eligible
`subject matter under 35 U.S.C. § 101. Pet. 24–54 (citing Exs. 1001–1009).
`Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 32–60 (citing
`Exs. 1001–1002, 2002).
`
`1. Relevant Law
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
`include implicit exceptions: “[l]aws of nature, natural phenomena, and
`abstract ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`134 S. Ct. 2347, 2354 (2014).
`In determining whether a claim falls within the excluded category of
`abstract ideas, we are guided by the Supreme Court’s two-step framework,
`described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs.
`v. Prometheus Labs., Inc., 566 U.S. 66, 77–78 (2012)). In accordance with
`that framework, we first determine whether the claim is “directed to” a
`patent-ineligible abstract idea. Id. at 2356 (“On their face, the claims before
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`us are drawn to the concept of intermediated settlement, i.e., the use of a
`third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S.
`593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
`basic concept of hedging, or protecting against risk.”).
`The patent-ineligible end of the spectrum includes fundamental
`economic practices (Alice, 134 S. Ct. at 2357; Bilsk
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