throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Entered: January 16, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Case PGR2018-00070
`Patent 9,770,656 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`DEFRANCO, 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. 9,770,656 B2
`(“the ’656 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`post-grant review of claims 1–6 of the ’656 patent. Paper 2 (“Pet.”). GREE
`filed a preliminary response in opposition. Paper 6 (“Prelim. Resp.”). After
`considering the petition and the preliminary response, along with the
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`evidence of record, we determine the petition fails to demonstrate that at
`least one of the challenged claims is more likely than not unpatentable.
`35 U.S.C. § 324(a). Thus, institution of post-grant review of claims 1–6 of
`the ’656 patent is denied.
`
`I. BACKGROUND
`
`A. The ’656 Patent
`The ’656 patent issued September 26, 2017, and claims priority to a
`foreign application filed June 20, 2013.1 Ex. 1001, cover. The ’656 patent
`is directed to an online social video game played on a mobile device through
`a communications network. Id. at 1:19–24. As described, the game entails
`multiple users engaging in various missions to acquire a game item as a
`reward for clearing a mission. Id. at 1:25–32. A conventional game of this
`type, however, “is not so interesting for the user” because the “missions are
`the same for all users” and the number of missions a user can select “is
`limited.” Id. at 1:36–44. The ’656 patent overcomes this problem by
`“increas[ing] chances for a user to select a mission, and [thereby] maintain
`and increase the user’s interest in continuing a game.” Id. at 1:45–47.
`According to the ’656 patent, a list of “missions” is displayed on the
`mobile device to a user from which the user chooses to play the game. Id. at
`1:48–52, 2:25–30, 2:39–48, 3:20–23. After a predetermined period of time
`has elapsed, the list of displayed missions will automatically update to
`present the user with a new mission or group of missions. Id. at 3:23–32. In
`
`
`1 Because Supercell filed the petition within nine months of the ’656 patent’s
`issue date and the earliest possible priority date for the ’656 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the Leahy-Smith America Invents Act), the ’656 patent is eligible for post-
`grant review. See 35 U.S.C. § 321.
`
`2
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`addition, the game server may update a mission in the mission list with a
`new mission in response to a request received from the user’s mobile device.
`Id. at 3:44–46. Hence, if the user clears a mission quickly, the user can
`select a new mission without waiting for the predetermined period to elapse.
`Id. at 3:46–48. A mission in the displayed list of missions may be changed
`to another mission by activating an “operational element” on the mobile
`device. Id. at 1:56–63; see also id. at 7:32–42 (describing the operational
`element in terms of an “exchange button”). By providing this operational
`element or exchange button, “the chances of the user selecting the missions
`increase, making it possible to maintain and increase the user’s interest in
`continuing the game.” Id. at 3:48–51; see also id. at 1:45–47, 14:5–11
`(describing the same benefit).
`B. Representative Claim
`The ’656 patent includes six claims, of which claims 1, 5, and 6 are
`independent. Claim 1 is directed to a “method for providing a game,”
`claim 5 is directed to a “non-transitory storage medium having stored therein
`a control program for a server device providing a game,” and claim 6 is
`directed to a “server device for providing a game.” Claims 1 and 5 recite the
`same method steps, while claim 6 differs from claims 1 and 5 only in that it
`recites “units” configured to perform the method steps of claims 1 and 5.
`Claim 1 is representative of the independent claims and recites the
`following:
`
`1. A method for providing a game, over a communication
`network, to a plurality of user devices from a server device
`having a storage unit for storing user information relating to a
`plurality of users, the method comprising the steps of:
`
`3
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`
`(a) responsive to the user information for the plurality of
`users, generating a plurality of missions for each of the plurality
`of users;
`(b) storing in the storage unit a plurality of relations
`between a plurality of items and the plurality of missions;
`(c) transmitting over the communication network, to a first
`user device, displaying information for presenting a list of the
`missions generated for a first user on the first user device, the list
`indicating each of the missions, an item associated with a mission
`which the first user can acquire by clearing the mission, and an
`exchange element for changing a displayed mission to another
`mission to be presented in the list, wherein the exchange element
`is enabled based on at least one of the missions in the list being
`cleared;
`(d) receiving an identifier of an item from the first user
`device;
`(e) identifying a second mission in which the item
`specified by the received identifier can be acquired, responsive
`to the stored relations between the plurality of items and the
`plurality of missions; and
`(f) updating the displaying information so that said at least
`one of the missions included in the list is replaced with said
`identified second mission generated for the first user, when the
`exchange element is activated.
`Ex. 1001, 14:46–15:8 (emphases added).
`C. Asserted Grounds of Unpatentability
`The petition asserts that claims 1–6 of the ’656 patent are
`unpatentable as (1) being directed to non-statutory subject matter under
`35 U.S.C. § 101 (Pet. 22–49), (2) failing to comply with the written
`description requirement of 35 U.S.C. § 112(a) (id. at 50–55), and (3) failing
`to comply with the definiteness requirement of 35 U.S.C. § 112(b) (id. at
`55–58). Supercell does not submit declarant testimony in support of its
`
`4
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`petition. GREE, on the other hand, submits the testimony of Dr. Michael
`Shamos (Ex. 2001, “the Shamos declaration”).
`II. ANALYSIS
`
`A. Claim Construction
`At this stage, neither party proposes a construction for any particular
`claim term. See Pet. 18–19; Prelim. Resp. 4–17. In considering the parties’
`submissions, we determine that no express construction of the claim terms is
`necessary for purposes of determining whether institution is appropriate.
`B. The Challenge Under 35 U.S.C. § 101
`Supercell challenges claims 1–6 of the ’656 patent for failing to recite
`patent eligible subject matter under 35 U.S.C. § 101. Pet. 22–49 (citing Exs.
`1001–1004). GREE disagrees. Prelim. Resp. 39–68. The U.S. Supreme
`Court has long interpreted 35 U.S.C. § 101 to exclude from patenting
`“[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty.
`v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (“Alice”). Central to this
`case is whether the challenged claims cover the excluded category of
`abstract ideas. That determination involves a two-step analysis, as explained
`by the Supreme Court in Alice. Id. (citing Mayo Collaborative Servs. v.
`Prometheus Labs., Inc., 566 U.S. 66, 78–79, 132 S. Ct. 1289, 1297–98
`(2012) (“Mayo”)). First, we determine whether a claim is “directed to” a
`patent-ineligible abstract idea. Alice, 134 S. Ct. at 2355. If the claim is
`directed to an abstract idea, we then consider whether any claim elements,
`either individually or as an ordered combination, transform the nature of the
`claim into an “inventive concept”—an element or combination of elements
`sufficient to ensure that the claim amounts to “significantly more” than the
`abstract idea itself. Id.
`
`5
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`
`Supercell contends that the claims of the ’656 patent are directed to
`the abstract idea of “generating a mission list in a video game, retrieving a
`second mission from a storage unit based on mission-item relationship and
`item identifier upon a user clearing a mission, and updating the mission list
`with the second mission.” Pet. 25–26; see also id. at 35, 40, 58 (same).
`According to Supercell, the claims recite nothing more than “routine
`computer functions or generalized steps claiming a result,” but “fail to recite
`a specific mechanism for achieving that result.” Id. at 26–27. In support,
`Supercell compares the claims of the ’656 patent to those found to be
`abstract in Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
`874 F.3d 1329 (Fed. Cir. 2017), Internet Patents Corp. v. Active Network,
`Inc., 790 F.3d 1343 (Fed. Cir. 2015), Electric Power Group, LLC v. Alstom
`S.A., 830 F.3d 1350 (Fed. Cir. 2016), and Intellectual Ventures I LLC v. Erie
`Indemnity Co., 850 F.3d 1315 (Fed. Cir. 2017). Pet. 25–35. Supercell
`explains that, like those cases, the claims of the ’656 patent are directed to
`an abstract idea because they “consist entirely of functional results” without
`“any specific technological advance to video game technology.” Id. at 35.
`Even if we assume that Supercell is correct that the claims are directed
`to an abstract idea, we still must consider the second step of the Alice test.
`Under that step, we ask whether a claim directed to an abstract idea
`nonetheless recites an “inventive concept”—an element or combination of
`elements sufficient to ensure that the claim amounts to “significantly more”
`than the abstract idea itself. Alice, 134 S. Ct. at 2355. In that regard, the
`element or combination of elements must go beyond “well-understood,
`routine, conventional activity already engaged in by the scientific
`community.” Mayo, 566 U.S. at 79–80, 132 S. Ct. at 1298; see also Alice,
`
`6
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`134 S. Ct. at 2357, 2359 (same). If so, the claim is patent eligible.
`Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (“The second
`step of the Alice test is satisfied when the claim limitations involve more
`than performance of well-understood, routine, and conventional activities
`previously known to the industry.”) (internal quotes and citations omitted).
`Here, Supercell contends that the functional steps, as claimed, recite
`only “generic computer equipment” comprising “well-known and
`conventional components of a communication network.” Pet. 36–37. In
`identifying the generic components in the claims, Supercell lists only
`“storage unit,” “generating unit,” “transmitting unit,” “receiving unit,” and
`“processing unit.” Id. at 36–40. Notably missing from Supercell’s list,
`however, is any mention of the very feature that led to allowance of the
`claims—“an exchange element” that can be “activated” to change a
`displayed mission in a list of missions to another mission “based on at least
`one of the missions in the list being cleared.” See Ex. 1002, 39–42 (showing
`amendments that led to allowance). By failing to address the claimed
`“exchange element,” Supercell also fails to proffer any factual support that a
`skilled artisan would have understood it to be “routine and conventional,” as
`required under Mayo and Alice.
`At best, Supercell argues that “updating” or “changing” a list of
`missions is equivalent to “creating output data that includes a customer
`number” found to be routine and conventional in Return Mail, Inc. v. United
`States Postal Service, 868 F.3d 1350, 1367 (Fed. Cir. 2017) (“Return Mail”).
`Pet. 39–40. But, aside from attorney argument, Supercell does not provide
`any expert testimony demonstrating this equivalency. See id. In contrast,
`GREE provides extensive expert testimony that the mission exchange
`
`7
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`elements of the claimed invention do “far more than merely ‘output data,’”
`as was the case in Return Mail. Ex. 2001 ¶ 86. Moreover, the specification
`of the ’656 patent makes clear that the “exchange element” goes to the very
`heart of the claimed invention. See, e.g., Ex. 1001, 14:8–11 (“mission
`exchanging unit 335 exchanges missions on the mission list so that a chance
`for the user to select the missions increases, making it possible to maintain
`and increase the user’s will to continue the game”). Indeed, the ’656 patent
`focuses at length on the interface between “exchange button 550” on the
`portable device and “mission exchanging unit 335” on the game server. Id.
`at 7:32–14:17, Figs. 5–7. More specifically, Figures 5E and 5F of the ’656
`patent illustrate that, upon clearing a number of missions, a user is given the
`capability of activating mission exchange button 550 to replace missions A,
`B, and C with missions E, F, and G. Id. at 7:32–52.
`That mission exchange capability, in our view, would have been
`understood by skilled artisans as an “improvement” over conventional online
`multi-player computer games. Ex. 2001 ¶¶ 87–91. But despite the ’656
`patent highlighting the mission exchange feature as the improvement that
`will “maintain and increase a user’s interest in continuing a game” (Ex.
`1001, 1:45–47), Supercell fails to address it. GREE, on the other hand,
`provides unrebutted expert testimony confirming that a skilled artisan would
`have recognized this improvement as “non-conventional and non-generic.”
`Ex. 2001 ¶ 87; see also id. ¶¶ 88–94 (testifying that a skilled artisan would
`have understood the “ordered combination” of mission exchanging steps as
`“a technological advancement in computer games”). Thus, we are not
`persuaded by Supercell’s argument to the contrary, which, aside from an
`unpersuasive case comparison, amounts to nothing more than attorney
`
`8
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`argument. Rather, we find that the mission exchange steps amount to an
`inventive concept that removes the challenged claims from the realm of a
`patent-ineligible abstract idea.
`
`In sum, after considering the evidence and arguments presented in the
`petition and preliminary response, we determine that Supercell has not
`demonstrated that any of the challenged claims is more likely unpatentable
`than not under 35 U.S.C. § 101.
`C. The Challenges Under 35 U.S.C. §§ 112(a) and (b)
`Supercell contends that claims 1–6 are unpatentable because, first, the
`claimed “receiving” and “identifying” steps lack sufficient written
`description support to comply with the requirements of 35 U.S.C. § 112(a)
`(Pet. 50–55), and, second, the scope of the “receiving” and “identifying”
`steps is not clear and precise enough to satisfy the requirements of 35 U.S.C.
`§ 112(b) (id. at 55–58). We disagree.
`As Supercell acknowledges, section 112 compliance is measured from
`the standpoint of what a skilled artisan would have understood from the
`disclosure of the patent application as originally filed. Pet. 50, 57. Yet
`Supercell fails to proffer any evidence as to the understanding of a skilled
`artisan in the relevant time frame. Instead, Supercell argues simply that “no
`identifier is ever described in the specification as being received from the
`first user device.” Id. at 52; see also id. at 53–54 (arguing same). But
`Supercell is mistaken, for the specification of the ’656 patent expressly
`provides, first, that “the server communication unit 31 supplies the data
`received from the portable device 2 or the like to the server processing unit,”
`and, second, that such data includes “an item table (FIG. 4C) for managing
`items and the like.” Ex. 1001, 5:41–58 (emphasis added). The specification
`
`9
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`goes on to explain that an identifier (ID) is associated with item data
`received from the portable device—“[t]he item table includes for each item
`an ID of the item, a name, a file name of image data and the like.” Id. at
`6:26–28 (referencing Fig. 4C); see also id. at 5:64–6:1 (describing that the
`“user table includes for each user, a user identifier (ID), a name, a level, a
`presented mission ID, an uncleared mission ID, a cleared mission ID, an
`acquired item ID . . . and the like”). GREE’s expert testifies that, from those
`disclosures, a skilled artisan would have understood that data is transmitted
`between the server and the portable user device and that such data includes
`the identifier of an item stored on the server. Ex. 2001 ¶¶ 60–62. We find
`that testimony persuasive, as it is consistent with the specification. Thus,
`Supercell does not persuade us that the claimed step of “receiving an
`identifier of an item from the first user device” lacks written description
`support.
`Supercell also argues that the specification does not provide written
`description support for the step of “identifying a second mission in which
`the item specified by the received identifier can be acquired, responsive to
`the stored relations between the plurality of items and the plurality of
`missions.” Pet. 53–55. In particular, Supercell argues that “the specification
`does not disclose identifying any mission based on an item whatsoever.” Id.
`at 54. Supercell goes even a step further, stating that “the verb ‘identify’ (in
`any form) does not appear in the specification outside of the claims.” Id.
`We disagree on both counts.
`At the outset, we note the specification expressly describes an
`“identifier (ID)” in association with “each user,” “each item,” and “each
`mission.” Ex. 1001, 5:61–6:28; see also id., Figs. 4A–4C (depicting same).
`
`10
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`Moreover, the specification explains that, for each mission, there is “an ID
`of an acquirable item,” and illustrates as much in Figure 4B. Id. at 6:21–25.
`That disclosure alone dispels the notion that a mission is not identified in
`terms of an item, as Supercell incorrectly asserts. See Pet. 54. The
`specification further discloses that “[e]ach of the users confirms the items
`clearly presented on the mission list 500, and operates the portable device 2
`to select the mission in which the item desired by himself/herself can be
`acquired.” Id. at 6:60–63; see also id. Figs. 5A–5F (illustrating same). A
`skilled artisan would have understood these disclosures as sufficiently
`supporting the recitation “identifying a second mission in which the item
`specified by the received identifier can be acquired.” Ex. 2001 ¶¶ 64–70
`(citing Ex. 1001, 6:9–42, 5:30–65, 7:15–31, 8:27–47, 9:56–67, 11:12–26).
`As such, we are not persuaded by Supercell’s argument to the contrary.
`Instead, we find that the “identifying” step, as claimed, finds adequate
`support in the specification. Thus, Supercell has not shown that any of the
`challenged claims are more likely than not unpatentable under 35 U.S.C.
`§ 112(a).
`Finally, Supercell argues, because the challenged claims “lack
`sufficient written support in the specification . . . , they omit matter essential
`to the claims and are also indefinite.” Pet. 57. In other words, to argue the
`claims are indefinite under section 112(b), Supercell relies on the same
`arguments it made under section 112(a). See id. As discussed above, we
`rejected Supercell’s arguments that the claimed “receiving” and
`“identifying” steps lack support in the specification. As such, Supercell’s
`companion argument that the scope of these steps is unclear given their
`purported absence from the specification is no more persuasive under
`
`11
`
`

`

`PGR2018-00070
`Patent 9,770,656 B2
`
`section 112(b) than it was under section 112(a). See Pet. 57–58. Thus,
`Supercell does not demonstrate that the challenged claims, more likely than
`not, are indefinite.
`
`III. ORDER
`After consideration of the entire record before us, it is
`ORDERED that, pursuant to 35 U.S.C. § 324(a), institution of post
`grant review of claims 1–6 of the ’656 patent is denied.
`
`
`FOR PETITIONER:
`Jennifer R. Bush
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`
`
`FOR PATENT OWNER:
`Scott A. McKeown
`Matthew Rizzolo
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`matthew.rizzolo@ropesgray.com
`
`12
`
`

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