Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 7
`Entered: January 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`Case PGR2018-00071
`Patent 9,770,664 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. 9,770,664 B2
`(“the ’664 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`post-grant review of claims 1–19 of the ’664 patent. Paper 1 (“Pet.”).
`GREE filed a preliminary response in opposition to the petition, Paper 6
`(“Prelim. Resp.”). Along with the preliminary response, GREE filed a
`
`
`571-272-7822
`
`
`
`Paper 7
`Entered: January 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`Case PGR2018-00071
`Patent 9,770,664 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. 9,770,664 B2
`(“the ’664 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`post-grant review of claims 1–19 of the ’664 patent. Paper 1 (“Pet.”).
`GREE filed a preliminary response in opposition to the petition, Paper 6
`(“Prelim. Resp.”). Along with the preliminary response, GREE filed a
`
`
`
`PGR2018-00071
`Patent 9,770,664 B2
`
`statutory disclaimer of claims 16–19 of the ’664 patent (Ex. 2006); thus,
`those claims are no longer subject to review. See 37 C.F.R. § 42.207(e).
`After considering the petition and the preliminary response, as well as the
`evidence of record, we determine the petition fails to demonstrate that at
`least one of challenged claims 1–15 is more likely than not unpatentable.
`35 U.S.C. § 324(a). Thus, institution of post-grant review of the ’664 patent
`is denied.
`
`I. BACKGROUND
`
`A. The ’664 Patent
`The ’664 patent issued September 26, 2017, and claims priority to a
`PCT application filed April 5, 2013.1 Ex. 1001, cover. The ’664 patent is
`directed to an online shooting game where users fire virtual weapons to hit
`various targets displayed in the game. Id. at 1:15–31. In conventional
`online shooting games, a player has a “field of vision” with respect to a
`target and “controls the shooting action by correctly aiming and firing at a
`remote distance” using the virtual weapon. Id. at 1:32–42. This manner of
`shooting at targets “allows the player to enjoy the game with a sense of
`presence or immersion as if the player appears to exist in a virtual world.”
`Id. at 1:42–45. Conventional shooting games, however, are equipped with
`touch screen displays of “relatively small display area” or “restricted input
`means,” such as smartphones or smart tablets, that make it more difficult for
`a player to “find[] a target and to aim and fire at the target.” Id. at 1:62–2:2.
`
`
`1 Because Supercell filed the petition within nine months of the ’664 patent’s
`issue date and the earliest possible priority date for the ’664 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the Leahy-Smith America Invents Act), the ’664 patent is eligible for post-
`grant review. See 35 U.S.C. § 321.
`
`2
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`PGR2018-00071
`Patent 9,770,664 B2
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`As a result, new players to the game have difficulty selecting and hitting
`targets compared to more experienced players, which “hinders a new
`player’s participation in or persistent use of the game.” Id. at 1:46–55. The
`’664 patent overcomes these difficulties by providing a user interface that
`permits a player of the game to automatically find, prioritize, and track
`targets falling within the player’s field of view. Id. at 2:6–3:49.
`B. Representative Claim
`The ’664 patent includes nineteen claims, of which claims 16–19 have
`been disclaimed, which leaves claims 1 and 12 as the remaining independent
`claims. Claim 1 is directed to a “method of providing an online shooting
`game,” and claim 12 is directed to a “game server” that performs the same
`steps of claim 1. Hence, claim 1 is representative and recites the following:
`1. A method of providing an online shooting game
`performed by a game server communicatively connected to a
`player terminal and a database storing information on enemy
`characters in the game, the method comprising:
`selecting a basic identification range within a virtual
`online shooting game environment displayed on the player
`terminal;
`detecting one or more enemy characters that are within the
`basic identification range;
`determining an attack priority on each of the detected one
`or more enemy characters based on at least one of a level of
`expected damage capable of being inflicted on a corresponding
`enemy character by a shooting from the player terminal and a
`level of risk of the corresponding enemy character to the player
`terminal based on the information on the enemy characters; and
`determining one of the detected one or more enemy
`characters as an automatic tracking object based on the
`determined attack priority.
`Ex. 1001, 13:43–61 (emphasis added).
`
`
`
`
`
`
`
`
`
`3
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`PGR2018-00071
`Patent 9,770,664 B2
`
`
`C. Asserted Grounds of Unpatentability
`In petitioning for post-grant review, Supercell asserts that claims 1–15
`of the ’664 patent are unpatentable as being directed to non-statutory subject
`matter under 35 U.S.C. § 101. Pet. 18–45. No declarant testimony is
`submitted in support of the petition. GREE, on the other hand, submits the
`testimony of Dr. Michael Shamos (Ex. 2001).
`II. ANALYSIS
`
`A. Claim Construction
`At this stage, neither party proposes a construction for any particular
`claim term. See Pet. 10–11; Prelim. Resp. 5–16. In considering the parties’
`submissions, we determine that no express construction of the claim terms is
`necessary in order to determine whether institution is appropriate.
`B. The Challenge Under 35 U.S.C. § 101
`Supercell challenges claims 1–15 of the ’664 patent for failing to
`recite patent eligible subject matter under 35 U.S.C. § 101. Pet. 18–45
`(citing Exs. 1001–1005). GREE disagrees. Prelim. Resp. 17–63. 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 (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
`
`4
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`PGR2018-00071
`Patent 9,770,664 B2
`
`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.
`Supercell contends that the claims of the ’664 patent are directed to
`the abstract idea of “detecting enemy characters within a range and
`determining an enemy character for tracking.” Pet. 25, 28, 40; see also id. at
`29, 31 (“detecting enemy players within a range and determining one as an
`automatic tracking object”). According to Supercell, the claims recite “only
`results . . . without specifying any ‘process or machinery’ by which those
`results would be achieved.” Id. at 28. In support, Supercell compares the
`claims of the ’664 patent to those found to be abstract in Affinity Labs of
`Texas, LLC v. DirecTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016); 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); and Electric Power Group, LLC v. Alstom S.A., 830 F.3d
`1350 (Fed. Cir. 2016). Pet. 25–30. Supercell explains that, like those cases,
`the claims of the ’664 patent are directed to an abstract idea because they
`“comprise only functional results” that “do[] not recite any technical
`improvements to computers or video game technology,” and, instead, “were
`previously well known in the art.” Id. at 29.
`Even assuming Supercell is correct that the claims are directed to an
`abstract idea that satisfies the first step of Alice (Pet. 25–34), we determine
`that Supercell falls short on the second step of Alice (id. at 34–41). That
`second step requires that we consider whether a claim directed to an abstract
`idea nonetheless recites an “inventive concept”—an element or combination
`
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`PGR2018-00071
`Patent 9,770,664 B2
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`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; see also Alice, 134 S. Ct. at 2357,
`2359 (same). If so, the claim is patent eligible. See 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, in what amounts to little more than attorney argument, Supercell
`contends that “[a]ll functions recited by the ’664 patent [claims] are generic
`computer functions that courts have found insufficient to confer patent
`eligibility.” Pet. 40. Although Supercell provides case law support for why
`the recited hardware, such as the “game server,” “network,” and “player
`terminal,” is generic or “non-inventive for purposes of step two of Alice,”
`(Pet. 38–40), no such support is given for why the recited functions “also
`cannot supply an inventive concept” as argued by Supercell (id. at 40).
`Indeed, Supercell fails to account for the very step that led to allowance of
`the claims—“determining an attack priority . . . based on the information on
`the enemy characters.” See Ex. 1002, 35–36 (examiner’s notice of
`allowance), 119–126 (applicant’s amendments that overcame examiner’s
`prior art rejections). By failing to address the prioritization step that the
`examiner found novel over the prior art, Supercell also fails to proffer any
`factual evidence for why a skilled artisan would have deemed such a step
`
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`PGR2018-00071
`Patent 9,770,664 B2
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`“well understood, routine conventional activit[y] previously known in the
`industry.” Alice, 134 S. Ct. at 2358–59.
`GREE, on the other hand, provides unrebutted expert testimony
`confirming that a skilled artisan would have recognized the determination of
`“an attack priority” as “provid[ing] a user interface with significantly
`improved functionality over prior art shooting games” because it “makes the
`game easier to play, resulting in a better immersive experience for players on
`mobile devices with limited touch screen inputs as well as for new players
`learning how to play online multiplayer shooting games.” Ex. 2001 ¶¶ 64–
`65 (citing Ex. 1001, 1:20–2:2, 3:42–49, 6:33–37, 6:48–7:12). Consistent
`with that testimony, the specification of the ’664 patent makes clear that the
`determination of an “attack priority” for the enemy characters allows “junior
`players to be able to adapt themselves to the shooting games with more ease
`and interest.” See, e.g., Ex. 1001, 2:34–42, 3:44–48. The ’664 patent also
`identifies a specific unit that performs the prioritization, namely, “tracking
`object determining unit 340,” which “may determine an attack priority on
`each of the plurality of enemy characters. . . . [and] [b]ased on the
`determined priority, the tracking object determining unit 340 may determine
`at least one tracking object to be automatically tracked.” Id. at 6:63–7:12,
`Fig. 2. Thus, in addition to automatically tracking enemy targets, the ’664
`patent’s user interface prioritizes the targets and automatically determines
`the best target for the user based on criteria that includes enemy character
`information. See id. That process of prioritizing attacks on multiple targets,
`in our view, would have been understood by skilled artisans as a “novel,
`non-routine, and non-conventional” feature that adds “significantly more” to
`
`7
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`PGR2018-00071
`Patent 9,770,664 B2
`
`the abstract idea, even under Supercell’s formulation of that idea. Ex. 2001
`¶ 76.
`Given the myriad evidence, from the specification to the prosecution
`history to expert testimony, highlighting the ’664 patent’s prioritization step
`as an improvement over the prior art that is neither routine nor conventional,
`and Supercell’s failure to rebut that evidence, we find that the challenged
`claims provide an inventive concept removing them from the realm of a
`patent-ineligible abstract idea. Thus, 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.
`III. ORDER
`After consideration of the entirety of the record, it is ORDERED that,
`pursuant to 35 U.S.C. § 324(a), institution of post grant review of claims 1–
`15 of the ’664 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
`
`8
`
`
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