PGR2018-00070
`U.S. Patent 9,770,656
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SUPERCELL OY,
`Petitioner
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`v.
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`GREE, INC.,
`Patent Owner
`____________
`
`Case PGR2018-00070
`Patent 9,770,656
`____________
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`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.207(a)
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`TABLE OF CONTENTS
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`PGR2018-00070
`U.S. Patent 9,770,656
`
`
`I. 
`II. 
`
`INTRODUCTION ......................................................................................... 1 
`THE INVENTION OF THE ’656 PATENT ............................................... 4 
`A. 
`The ’656 Patent ....................................................................................................... 4 
`B. 
`The Previous Consideration Of § 101 By The USPTO ........................................ 16 
`C. 
`A Person of Ordinary Skill In The Art At The Time Of Invention ...................... 17 
`III.  ARGUMENT .............................................................................................. 18 
`Petitioner Fails To Show A Reasonable Likelihood Of Success That Claims 1-6
`A. 
`Are Invalid Under 35 U.S.C. § 112 ...................................................................... 18 
`1. 
`Claims 1-6 Have Written Description Support Under § 112(a) ............... 19 
`2. 
`Claims 1-6 Are Not Indefinite Under 35 U.S.C. § 112(b) ........................ 36 
`Petitioner Is Unlikely To Prevail In Showing That Any Claims are Patent-
`Ineligible Under § 101 .......................................................................................... 39 
`Petitioner’s Abstract Idea Omits Critical Aspects of the Claim And Should
`1. 
`Be Rejected ............................................................................................... 41 
`Claims 1-6 Are Not Directed To An Abstract Idea Under Alice Step One,
`But Are Useful and Concrete Solutions That Employ An Exchange
`Element To Permit Users To Exchange Virtual Missions In An Online
`Multi-Player Computer Game................................................................... 48 
`Claims 1-6 Add An Inventive Concept Under Alice Step Two ................ 60 
`3. 
`The Board Should Exercise Its Discretion And Deny Institution Under § 325(d) 68 
`Petitioner Presents The Same Pre-Amendment Arguments Made By The
`1. 
`Patent Office During Prosecution ............................................................. 69 
`Petitioner Fails To Explain How The Patent Office Erred In Its Evaluation
`Of § 101 .................................................................................................... 77 
`Petitioner Presents No New Evidence Or Facts That Warrant
`Reconsideration Of § 101 Arguments ....................................................... 80 
`IV.  CONCLUSION ............................................................................................ 81 
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`B. 
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`C. 
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`2. 
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`2. 
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`3. 
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`ii
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`PGR2018-00070
`U.S. Patent 9,770,656
`
`EXHIBIT LIST
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`Exhibit
`2001
`
`2002
`
`Description
`Declaration of Dr. Michael Shamos in Support of the Patent
`Owner’s Preliminary Response
`
`Bauckhage, et al., How Players Lose Interest in Playing a Game:
`An Empirical Study Based on Distributions of Total Playing Times,
`2012 IEEE Conference on Computational Intelligence and Games
`(Sept. 11, 2012)
`
`2003
`
`Declaration of Andrew J. Sutton In Support of the Patent Owner’s
`Preliminary Response
`
`
`
`
`
`iii
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`

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`PGR2018-00070
`U.S. Patent 9,770,656
`Pursuant to 37 C.F.R. §42.2071, Patent Owner Gree, Inc. (“Gree”) submits
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`this Preliminary Response to the above-captioned Petition (“Pet.,” Paper 2) for post-
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`grant review (PGR) of claims 1-6 of U.S. Patent No. 9,770,656 (“the ’656 Patent”),
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`which should be denied institution for failure to show a reasonable likelihood of
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`prevailing on any asserted grounds and for all challenged claims.
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`I.
`
`INTRODUCTION
`The Board should deny the Petition because it fails to present any legitimate
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`basis for instituting a post-grant review. First, Petitioner’s arguments that the
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`challenged claims are invalid under 35 U.S.C. § 112(a) and (b) are meritless.
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`Petitioner’s § 112(a) argument is facially defective, as the challenged limitations
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`were recited in the originally filed claims. Of course, original claims are part of the
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`specification therefore there is explicit support for these terms — the Board need go
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`no further in this regard. Yet, even if further review were in order, Petitioner readily
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`admits that analysis of written description under § 112(a) and indefiniteness under §
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`112(b) requires the understanding of a POSITA. But, the Petition fails to define the
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`level of skill of a POSITA, much less offer evidence regarding the understanding of
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`one. Petitioner’s arguments are little more than word-matching exercises that have
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`no relation to the actual law of § 112, and not surprisingly, rest solely on misguided
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`1 Section cites are to 35 U.S.C. or 37 C.F.R., and emphasis is added unless noted.
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`PGR2018-00070
`U.S. Patent 9,770,656
`attorney argument. In contrast, Patent Owner presents the testimony of Dr. Michael
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`Shamos, Distinguished Career Professor in the School of Computer Science at
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`Carnegie Mellon University, who testifies that a person of ordinary skill in the art
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`(POSITA) reviewing the specification and claims would have known that the
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`specification discloses the elements challenged by Petitioner as lacking. Patent
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`Owner’s expert also testifies that a POSITA reviewing the claims and specification
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`would understand the scope of the claimed invention with reasonable certainty.
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`Second, Petitioner has failed to demonstrate a reasonable likelihood that it
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`will prevail on its § 101 argument. Petitioner’s proposed abstract idea is also
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`defective on its face as it is incomplete, for it fails to even include the “exchange
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`element” which is a focus of the claims. Further the proposed abstract idea fails to
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`recognize the multi-player aspect of the computer game problem solved by the ‘656
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`patent. The abstract idea proposed by Petitioner (in an attempt to satisfy step one of
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`the Alice framework) requires “generating a mission list in a video game.” Thus,
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`even under Petitioner’s definition, the claims cannot be directed to a “method of
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`organizing human activity.” Petitioner’s inability to articulate an abstract idea that
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`could satisfy Alice step one plainly demonstrates that the claims are not directed to
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`an abstract idea. Indeed, the claims are not simply directed to any “video game” but
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`to innovative improvements to the particularized operation of “online social games,”
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`e.g., online multi-player computer games for portable devices. Ex. 1001, 1:19-24,
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`2
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`PGR2018-00070
`U.S. Patent 9,770,656
`3:64-4:18. Dr. Shamos testifies that the ’656 Patent claims a technical improvement,
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`“an online multi-player computer game with tailored interface features and improved
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`functionality which enables generating unique in-game missions for pluralities of
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`users, allowing users to exchange in-game missions for more desirable missions,
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`and clearly displaying of item rewards associated with each mission.” Ex. 2001 ¶
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`75; Ex. 1001, 3:14-51, 5:30-7:2. This technical solution solved the technical
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`problems associated with “traditional online multi-player computer games, namely
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`that players are unable to try various missions, exchange missions, or acquire desired
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`items awarded for clearing missions, thus leading to diminishing interest in game
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`play over time.” Ex. 2001 ¶ 27; Ex. 2002; Ex. 1001, 1:36-47, 3:48-51, 11:45-60,
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`14:5-11.
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`Further, under Alice step two – and as Patent Owner’s declarant testifies– the
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`ordered combinations of the claimed elements of claims 1, 5 and 6 define
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`technological
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`innovations unconventional and are
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`therefore patent-eligible.
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`Dependent claims 2-4 of the ’656 Patent claim additional aspects that are also not
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`well-understood, routine, or conventional. Petitioner does not even attempt to
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`provide evidence to the contrary. Indeed, Petitioner concedes that under Berkheimer
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`and the Patent Office’s guidelines, that its arguments under step two of Alice rest on
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`underlying findings of fact; yet Petitioner provides only a single paragraph
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`3
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`PGR2018-00070
`U.S. Patent 9,770,656
`addressing the “factual inquiry” considerations described in Berkheimer —a
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`paragraph that does not provide any actual facts or evidence.
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`Finally, Petitioner’s § 101 challenge should be denied under § 325(d). During
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`prosecution of the ’656 Patent, the Office considered the very same § 101 argument,
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`which was overcome by significant amendment to the claims. Petitioner recycles
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`the same § 101 arguments considered by the Office pre-amendment as if the claims
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`had not been amended. The Petitioner fails to meaningfully address the amended
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`language, anywhere. Nor does it point out any deficiency or mistake in law or fact
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`as to the Examiner’s determination of patent eligibility analysis under Alice. As
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`Petitioner does not provide any new evidence that warrants reconsideration of the
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`prosecution history of the ’656 Patent, these factors weigh heavily in favor of
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`denying the petition under § 325(d).
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`As such, Patent Owner respectfully requests that the Petition be denied.
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`II. THE INVENTION OF THE ’656 PATENT
`A. The ’656 Patent
`The ’656 Patent provides a particular solution to problems arising in the
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`context of conventional online multi-player computer games; the conventional user
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`interfaces offered only a limited number of missions that “are the same for all users,”
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`they did not identify or accept selection of the reward items that could be acquired
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`by completing those missions, they did not provide a means for exchanging those
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`4
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`PGR2018-00070
`U.S. Patent 9,770,656
`missions for new missions, and they did not offer different missions based on game
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`sharing relationships between users. Ex. 1001, 1:36-47, 3:48-51, 11:45-60, 14:5-11;
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`Ex. 2001 ¶¶ 30-31. As explained in the background, this was a problem as it caused
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`gamers to lose interest in the game and become less likely to play additional
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`missions. As discussed below and as Patent Owner’s expert testifies, the ’656
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`Patent’s technical solution is an online multi-player computer game pairing
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`additional functions with the user interface to improve the chances of a user selecting
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`a mission and increasing the user’s interest in continuing the game by generating and
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`exchanging in-game missions and displaying item rewards associated with each
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`mission for a plurality of users in game-sharing relationships. Ex. 1001, 1:45-47,
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`3:14-51, 5:30-7:2; Ex. 2001 ¶¶ 26, 30-37, 73.
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`As explained in the specification, in a conventional or “general” online multi-
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`player computer game, “a plurality of identical missions is provided to all of the
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`users,” Ex. 1001, 8:50-53, resulting in the conventional game being “not so
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`interesting for the user” and ultimately the user will “lose interest in continuing the
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`game,” Ex. 1001, 1:35-44; Ex. 2001 ¶ 38. The specification explains how the
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`claimed invention of the ’656 Patent is different from conventional online multi-
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`player computer games; for example, if the claimed game system would “provide[]
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`a game including ten missions in all to each of the users, the ten missions differ
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`depending on the user,” whereas the conventional game would offer only “a plurality
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`5
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`PGR2018-00070
`U.S. Patent 9,770,656
`of identical missions,” that is the same ten missions to every player. Ex. 1001, 8:48-
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`56.
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`The specification describes in detail the technical solution, and how different
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`in-game missions may be generated for a plurality of users based on their data and
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`on the mission sharing relationships between the users. Ex. 1001, 8:37-9:3; Ex. 2001
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`¶¶ 30-37, 78, 89. Specifically, the mission generating unit 332 “generates a plurality
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`of different missions for each user” based on a number of different parameters; for
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`example a plurality of missions generated for one of a plurality of users can “differ
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`in a combination of a geography of a dungeon, an appearing enemy character, and
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`an acquirable item.” Ex. 1001, 8:37-47; Ex. 2001 ¶¶ 70, 78.
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`The mission generating unit 332 generates the missions based in part on the
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`user data tables (described in the patent Figures 4A-C and 5:55-6:43) and further
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`“adds information about the generated mission to the mission table." Ex. 1001, 8:57-
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`9:3. Exemplary user data tables and mission tables are shown below and described
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`further at 5:55-6:43:
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`6
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`PGR2018-00070
`U.S. Patent 9,770,656
`
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`Ex. 1001, Figs. 4A-C. For example, the user data table Fig. 4A “includes, for each
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`user, a user identifier (ID), a name, a level, a presented mission ID, an uncleared
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`mission ID, a cleared mission ID, an acquired item ID, a previous finishing date and
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`time, a friend ID, and the like. The presented mission ID is an ID of each of the
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`missions to be presented on a mission list for a target user.” Ex. 1001, 5:64-6:2.
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`Similarly, the mission table Fig. 4B “includes for each mission an ID of the mission,
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`a name, a file name of image data, … an ID of an acquirable item, and the like.” Ex.
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`1001, 6:21-25. And the item table Fig. 4C “includes for each item an ID of the item,
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`a name, a file name of image data and the like.” Ex. 1001, 6:26-28. The specification
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`explains that the tables are used by the server. Ex. 1001, 5:52-58. (“The server
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`storage unit 32 stores, as the data, a user table (Fig. 4A)… a mission table
`7
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`PGR2018-00070
`U.S. Patent 9,770,656
`(Fig.4B) … and an item table (Fig. 4C).” As Dr. Shamos testifies, “a conventional
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`online multi-player computer game system that simply generates the same limited
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`numbers of missions for every user would have no need for a mission generating
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`unit with multiple data tables as disclosed here.” Ex. 2001 ¶¶ 79-81.
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`In conventional online multi-player computer games, the user was not given
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`the option of exchanging missions for missions with more desirable item rewards,
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`and instead, would have to “tr[y]” all the missions to acquire the item he/she wants.”
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`Ex. 1001, 1:36-44; Ex. 2001 ¶ 38. The specification describes how with the ’656
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`Patent’s mission exchanging unit 335, “the possibility that the user can select a
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`mission he/she likes becomes higher, increasing the user’s will to continue the
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`game.” Ex. 1001, 9:56-67. The technical solution here is described further in the
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`discussion of the operation sequence of the mission generating game system:
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`8
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`PGR2018-00070
`U.S. Patent 9,770,656
`
`
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`Ex. 1001, Fig. 6, 11:61-12:67; Ex. 2001 ¶¶ 39-43. For example, a gamer playing an
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`online multi-player computer game on her portable device will log in to the game at
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`step S600, Ex. 1001, 12:1-10, and view an initial list of available missions on her
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`display interface (missions generated by mission generating unit 332 as discussed
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`above) at step S608, Id., 12:23-29. Ex. 2001 ¶ 41. After she begins (executes) a
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`mission at step S610, the server will wait until she clears the mission, and then at
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`9
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`PGR2018-00070
`U.S. Patent 9,770,656
`step S618 update her display interface to show that the mission was cleared. Id.,
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`12:40-48. Now, because a mission has been cleared, the gamer has an option to
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`exchange her missions for new missions at Step S620, and in response to the request,
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`the server generates and displays unique new mission for her to select and clear at
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`S628. Id., 12:49-67; Ex. 2001 ¶ 41.
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`
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`In conventional online multi-player computer games, the user interfaces did
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`not clearly present “items which can be acquired by clearing the missions.” Ex.
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`1001, 1:39-44; Ex. 2001 ¶ 38. The technical solution of the ’656 Patent sought to
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`“enable the user to reliably acquire the item he/she desires.” Ex. 1001, 11:1-8. The
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`specification describes an exemplary online multi-player computer game user
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`interface that the gamers would see on their portable devices are described in figures
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`5A-H:
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`10
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`PGR2018-00070
`U.S. Patent 9,770,656
`Figs. 5A and 5B. As shown in the figures, “USER a” would have three selectable
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`missions (A, B, and C) and their corresponding acquirable items, while “USER c”
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`would have three different selectable missions (D, H, and I) with their corresponding
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`acquirable items. Ex. 1001, 6:43-7:2; Ex. 2001 ¶¶ 39-40.
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`Figures 5C and 5D show the interfaces where “USER a” and “USER c” have
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`each completed a mission, but further are also in a “shared mission relationship”
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`with each other:
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`Ex. 1001, Figs. 5C-D. As shown here, the display is updated to show that each user
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`has completed a mission (as shown by the “CLEARED” indicator); but because of
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`the mission sharing relationship/friend status between USER a and USER c, each
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`11
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`PGR2018-00070
`U.S. Patent 9,770,656
`user now also has access to an additional mission which is accessible via the above
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`interface. Ex. 1001, 7:3-31; Ex. 2001 ¶¶ 39-40.
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`
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`Figures 5E and 5F show the “exchange” functionality accessible via the user
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`interface:
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`Ex. 1001, Figs. 5E-F. Fig. 5E shows that the exchange button 550 is now activated
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`because at least one of the current missions is “cleared.” Fig. 5F shows what happens
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`after the exchange button is activated: cleared missions (A, B, and C) are replaced
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`with new generated missions (E, F, and G). Ex. 1001, 7:32-42. Importantly, while
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`USER a has shared mission D from its user sharing relationship with USER C, the
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`new generated missions (E, F and G) are not the same as missions generated for
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`USER c (H, I, J) in Fig. 5B. Ex. 1001, 7:43-52, 8:48-56 (describing “a general
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`game”); Ex. 2001 ¶¶ 38-43.
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`12
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`PGR2018-00070
`U.S. Patent 9,770,656
`Thus, the ’656 Patent claims are directed to a novel video gaming system and
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`methodology of generating missions for pluralities of users, displaying acquirable
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`items associated with those missions, and allowing exchanges of in-game missions
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`for gamers in an online multi-player computer games, based on the plurality of
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`gamer’s stored information. Ex. 1001, Abstract, cl. 1-6; Ex. 2001 ¶¶ 32-37. Claim
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`1 in particular states:
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`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:
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`(a) responsive to the user information for the plurality of users,
`generating a plurality of missions for each of the plurality of
`users;
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`(b) storing in the storage unit a plurality of relations between a
`plurality of items and the plurality of missions;
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`(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;
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`(d) receiving an identifier of an item from the first user device;
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`(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
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`13
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`PGR2018-00070
`U.S. Patent 9,770,656
`(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.
`The prosecution history of the ’656 Patent further informs a POSITA of the
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`
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`scope of the ’656 Patent claims. Ex. 2001 ¶ 83; Ex. 1002, 38-54. The applicant,
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`during prosecution amended claim 1 as follows to overcome a non-final rejection,
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`and, more particularly, to distinctly claim the technical solution:
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`14
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`PGR2018-00070
`U.S. Patent 9,770,656
`Ex. 1002, 39-40. As can be seen, the claims were amended to clarify that the claims
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`are directed to improved mission play in an online multi-user environment, with
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`additional detail regarding how missions are generated and shared between
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`pluralities of users, to address the problem in conventional online multi-player
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`computer games that offered the same limited numbers of missions to users. Ex.
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`1002, 39-40; Ex. 2001 ¶¶ 83. For example, the claims added: “the exchange
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`element” to the user interface; a “communication network”; storing various ID data
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`for generating unique missions for pluralities of users; and displaying the items that
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`can be acquired by completing a particular mission. Id. Each of these additions
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`features address the problems in conventional systems described in the specification.
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`Ex. 1001, 1:36-47, 8:48-56; Ex. 2001 ¶¶ 79-83.
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`Thus, the ’656 Patent, as a whole and in light of the specification and
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`prosecution history, teaches a novel video gaming system having a user interface
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`paired with improved functionalities for generating and exchanging a plurality of
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`different missions for each of a plurality of users in mission sharing relationships,
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`which represented a technical solution to the problem of boring conventional online
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`multi-player computer gaming systems that offered only limited numbers of the
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`same missions to all users. See, e.g., Ex. 1001, 1:36-47, 8:48-56; Ex. 2001 ¶ 75.
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`15
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`PGR2018-00070
`U.S. Patent 9,770,656
`B.
`The Previous Consideration Of § 101 By The USPTO
`The ’656 Patent issued from U.S. Patent Application No. 14/987,412
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`(“the ’412 application”) which is a continuation of U.S. Patent Application No.
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`14/109,704 (“the ’704 application”) filed on December 17, 2013. The ’656 Patent
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`also claims the benefit of Japanese application 2013-129,899 (“the ’899
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`application”), which was filed on June 20, 2013.
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`On December 29, 2016, the Examiner issued a non-final office action
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`rejecting claim the claims under 35 U.S.C. §§ 101 and 112. Ex. 1002, 69-88. The
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`Examiner presented six pages of reasoning for its 35 U.S.C. §§ 101 rejection. Ex.
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`1002, 71-76. On April 5, 2017, the applicant initiated an interview with the
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`Examiner, after which the Examiner noted:
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`Applicant has discussed the 101 issue and pointed out the significantly
`more or the improvement within the game which makes the claim
`eligible for 101. Examiner has acknowledged the argument and
`suggested small changes to the claim limitations for the clarification
`purpose. 101 issue will need to be looked at thoroughly and the
`decision will be made upon receipt of the amendment.
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`Ex. 1002, 66. On April 27, 2017, the applicants substantively amended the claims
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`and provided eleven pages of detailed argument in response to the Examiner’s § 101
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`rejection. Ex. 1002, 39-54. For example, claim 1 was amended as follows:
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`16
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`PGR2018-00070
`U.S. Patent 9,770,656
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`
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`Ex. 1002, 39-40. In response, the Examiner issued a Notice of Allowance on May
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`24, 2017 allowing claims 1-6. Ex. 1002, 14-16. These issued as the ’656 Patent.
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`C. A Person of Ordinary Skill In The Art At The Time Of Invention
`As Dr. Shamos testifies, a person of ordinary skill in the art at the time of
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`invention (POSITA) would have had a Bachelor’s degree in Electrical or Computer
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`Engineering or Computer Science, or equivalent experience and, in addition, two
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`years of experience implementing interactive software and user interfaces. Ex.
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`2001 ¶¶ 28-29.
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`17
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`PGR2018-00070
`U.S. Patent 9,770,656
`
`
`III. ARGUMENT
`A.
`Petitioner Fails To Show A Reasonable Likelihood Of Success
`That Claims 1-6 Are Invalid Under 35 U.S.C. § 112
`Petitioner’s § 112(a) argument fails out to gate, because the challenged
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`limitations were recited in the originally filed claims and are self supporting. Ex.
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`1002, 200-204; Ex. 2001 ¶ 52; ScriptPro LLC v. Innovation Assocs., Inc., 833 F.3d
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`1336, 1341 (Fed. Cir. 2016). Accordingly, the Board need not go further on this
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`issue. But even if the original claims could be ignored, which they cannot, the claims
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`at issue would still find support in the rest of the specification. Ex. 2001 ¶ 51-70.
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`Dr. Shamos testifies that the specification of the ’656 Patent reasonably
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`conveys to a POSITA that the inventor had possession of the claimed subject matter;
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`he also testifies that none of the words or phrases in the claims have meanings that
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`would be unclear to a POSITA. Ex. 2001 ¶¶ 51-72. What is conventional or well
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`known to one of ordinary skill in the art need not be disclosed in detail. See
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`Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir.
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`1986); see also Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
`
`Accordingly, the claims are not invalid under § 112(a) or (b).
`
`As the Petitioner readily admits, analysis of written description under § 112(a)
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`and indefiniteness under § 112(b) requires the understanding of a POSITA. Pet. 50
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`(“The analysis of whether the specification complies with the written description
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`U.S. Patent 9,770,656
`requirement…is conducted from the standpoint of one of skill in the art at the time
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`the application was filed.”); Pet. 50 (“Thus, the metes and bounds of the claimed
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`invention of the ’656 would be vague and unclear to one of skill in the art, and thus
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`are indefinite.”); Pet. 57. Yet the Petition fails to even define the level of skill of a
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`POSITA, much less offer evidence regarding the understanding of one. Ex. 2001 ¶¶
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`44-50. Petitioner’s § 112 arguments, based entirely on attorney argument, must be
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`rejected.
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`1.
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`Claims 1-6 Have Written Description Support Under §
`112(a)
`Compliance with the written description requirement is a question of fact.
`
`Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 962–63 (Fed. Cir. 2002) (citing
`
`Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116
`
`(Fed.Cir.1991)). The test for determining compliance with the written description
`
`requirement is not “the presence or absence of literal support in the specification for
`
`the claim language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (“whether
`
`the disclosure of the application as originally filed reasonably conveys to the artisan
`
`that the inventor had possession at that time of the later claimed subject matter, rather
`
`than the presence or absence of literal support in the specification for the claim
`
`language.”); 35 U.S.C. § 112(a) (“The specification shall contain a written
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`description of the invention, and of the manner and process of making and using it,
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`in such full, clear, concise and exact terms as to enable any person skilled in the art
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`PGR2018-00070
`U.S. Patent 9,770,656
`to which it pertains, or with which it is most nearly connected, to make and use the
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`same.”). Original claims filed in the patent application “are part of the specification
`
`and in many cases will satisfy the written description requirement.” ScriptPro LLC
`
`v. Innovation Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir. 2016) (citing Crown
`
`Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d 1373, 1380
`
`(Fed. Cir. 2011). Petitioner has not presented any factual evidence in support of its
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`written description arguments.
`
`(a) There is written description support for “[receiving/a
`receiving unit for] an identifier of an item from the first
`user device.”
`Petitioner argues that the specification does not provide written description
`
`for Claim limitation 1(d), 5, and 6 “[receiving/a receiving unit for] an identifier of
`
`an item from the first user device.” Pet. 51-53. The Petitioner specifically argues
`
`that “no identifier is ever described in the specification as being received from the
`
`first user device.” Pet. 52. But this is incorrect.
`
`As a preliminary matter, the limitation “[receiving/a receiving unit for] an
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`identifier of an item from the first user device” were in the original claims filed in
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`the application for the ’656 Patent. Ex. 1002, 200-202. Specifically, claim 1
`
`contained the limitation “(c) receiving an identifier of an item from the first user
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`device,” Id., 200, and claim 7 contained the limitation “a receiving unit for receiving
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`an identifier of an item from the first user device,” Ex. 1002, 203. Original claims
`
`
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`PGR2018-00070
`U.S. Patent 9,770,656
`provide written description support for the claims. ScriptPro LLC, 833 F.3d at 1341.
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`Thus a POSITA would have understood that the applicant had possession of the
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`claimed subject matter as of the filing date of the ’656 Patent. Ex. 2001 ¶¶ 51-57.
`
`In addition to the original claims, Dr. Shamos also testifies that there is written
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`description support in other parts of the specification. Ex. 2001 ¶¶ 53-61. As shown
`
`in Figure 3:
`
`
`Ex. 1001, Fig. 3. As further explained in the accompanying discussion:
`
`The server communication unit 31 supplies the data received from the
`portable device 2 or the like to the server processing unit 33. The
`server communication unit 31 transmits the data supplied from the
`server processing unit 33 to the portable device 2 or the like. … The
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`PGR2018-00070
`U.S. Patent 9,770,656
`server storage unit 32 stores an operating system program, a driver
`program, an application program, data, and the like used for
`processing in the server processing unit 33. … The server storage unit
`32 stores, as the data, a user table (FIG. 4A) for managing users, a
`mission table (FIG. 4B) for managing missions, and an item table
`(FIG. 4C) for managing items and the like.
`Ex. 1001, 5:47-60. The specification further states “Figure 4C illustrates an example
`
`of the data structure of the item table. The item table includes for each item and ID
`
`of the item, a name, a file name of image data and the like.” Ex. 1001, 6:26-29; see
`
`also Ex. 1001, 5:64-65 (defining “identifier” as “ID”); Ex. 2001 ¶¶ 61-62.
`
`A POSITA would understand that the server, which includes server
`
`processing unit 33, communication unit 31, and storage unit 32, transmits data
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`between the server and the “portable user device.” Id. ¶¶ 60-62. A POSITA would
`
`further understand that this data includes the identifier of an item data that is stored
`
`in Figure 4C on the server storage unit 32. Id. A POSITA would understand that the
`
`inventor had possession of the limitation “[receiving/a receiving unit for] an
`
`identifier of an item from the first user device” based on the disclosure in the
`
`specification. Id. ¶¶ 53-62. Accordingly, Petitioner has not shown that it is likely
`
`to prevail in showing any claim invalid for lack of written description.
`
`(b) There is written description support for the limitation
`“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.”
`
`
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`U.S. Patent 9,770,656
`Petitioner argues that the specification does not provide written description
`
`for Claim limitation 1(d), 5, and 6 “identifying a second mission in which the item
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`specified by the received identifier can be acquired, responsive to the stored
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`relations between the plurality of items and the plurality of missions.” Pet. 53-55.
`
`The Petitioner specifically argues that “no “received identifier” is disclosed from
`
`which such a second mission could be identified.” Pet. 52. But this is incorrect.
`
`Again, Petitioner fails to realize that this limitation was in an original filed
`
`claim in the application for the ’656 Patent. Ex. 1002, 202. Specifically, claim 6
`
`contained the limitation “updating the displaying information so that a first mission
`
`included in the presented list is replaced with a second mission generated for the first
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`user, wherein the second mission is a mission in which the item specified by the
`
`received identifier can be acquired.” Thus a POSITA would have understood that
`
`the applicant had possession of the claimed subject m