PGR2018-00071
`U.S. Patent 9,770,664
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`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
`____________
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`Case PGR2018-00071
`Patent 9,770,664
`____________
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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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`Case IPR2018-00071
`Patent 9,770,664
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`I. 
`II. 
`
`2. 
`
`3. 
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`4. 
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`5. 
`
`INTRODUCTION ......................................................................................... 1 
`THE INVENTION OF THE ’664 PATENT ............................................... 5 
`A. 
`THE ’664 PATENT ................................................................................................ 5 
`B. 
`A PERSON OF ORDINARY SKILL IN THE ART AT THE TIME OF
`INVENTION ......................................................................................................... 16 
`III.  ARGUMENT .............................................................................................. 17 
`SPECIFIC INTERFACES FOR NETWORKED VIRTUAL SHOOTING
`A. 
`COMPUTER GAMES ARE PATENT-ELIGIBLE ............................................. 17 
`Petitioner’s Abstract Idea Omits The “Basic Identification Range”
`1. 
`Limitation Of The Claim And Should Be Rejected .................................. 20 
`Petitioner’s Abstract Idea Omits “Determining An Attack Priority …
`Based On The Information Of The Enemy Characters,” The Very
`Limitation That Led To The Allowance Of The Claims .......................... 26 
`Petitioner’s Abstract Idea Fails To Acknowledge The Technical Problems
`With Conventional Networked Virtual Shooting Games That Are
`Resolved By The Claims .......................................................................... 28 
`Claims 1-15 Are Not Directed To An Abstract Under Alice Step One But
`Are Useful And Concrete Solutions That Employ An Improved User
`Interface For A Networked Virtual Shooting Computer Game ................ 30 
`Claims 1-15 Add An Inventive Concept Under Alice Step Two Because
`The “Basic Identification Range” And The “Determining An Attack
`Priority … Based On The Information On The Enemy Characters”
`Limitations Were Not Routine And Conventional ................................... 48 
`INSTITUTION SHOULD BE DENIED AS TO CLAIMS 16-19 BECAUSE
`THEY HAVE BEEN DISCLAIMED BY THE PATENT OWNER ................... 63 
`IV.  CONCLUSION ............................................................................................ 63 
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`B. 
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`Case IPR2018-00071
`Patent 9,770,664
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`Exhibit
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`EXHIBIT LIST
`
`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
`(2012)
`
`Tuomas Hynninen, First-Person Shooter Controls on Touchscreen
`Devices: a Heuristic Evaluation of Three Games on the iPod Touch
`(Nov. 2012) (M.Sc. thesis, University of Tampere)(on file With
`TamPub, The Institutional Repository of University of Tampere)
`
`Yadi Ziaeehezarjeribi, Learning strategies in play during basic
`training for Medal of Honor and Call of Duty video games (2010)
`(Ph.D. thesis, Indiana University) (on file with the Learning and
`Technology Library).
`
`Rodrigo Vicencio-Moriera et al., The Effectiveness (or Lack
`Thereof) of Aim-Assist Techniques in First-Person Shooter Games,
`2014 ACHM CHI Conference on Human Factors in Computing
`Systems (2014)
`
`Statutory Disclaimer of Claims 16-19 of the ’664 Patent
`
`Declaration of Andrew J. Sutton In Support of the Patent Owner’s
`Preliminary Response
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`iii
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`PGR2018-00071
`U.S. Patent 9,770,664
`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 1) for post-
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`grant review (PGR) of claims 1-19 of U.S. Patent No. 9,770,664 (“the ’664 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 ’664 Patent claims an improved mobile user interface that addresses two
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`significant technical problems of conventional networked video games. Ex. 1001,
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`3:42-49. The first technical hurdle is the difficulty in playing conventional shooting
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`games on “relatively small display areas” of portable touch screen devices with
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`“restricted inputs.” Id., 1:62-2:2, 6:33-38. The second technical hurdle is the
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`difficulty novice players have in learning to use such conventional interfaces for
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`shooting games. These difficulties aggravate players as it prevents them from
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`readily finding, prioritizing, and shooting targets compared to more experienced
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`players. Id., 1:46-55, 6:48-53. In both cases, failing to identify and hit the correct
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`game targets results in decreased player immersion in the overall game experience.
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`In turn, this results in decreased playing time, overall game appeal, and game-
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`playing enjoyment. Ex. 2001 ¶¶ 24, 29-33.
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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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`Case IPR2018-00071
`Patent 9,770,664
`The ’664 Patent overcomes these technical hurdles by providing a user
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`interface featuring a “basic identification range” where enemy characters who enter
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`the basic identification range of the screen are identified, assigned an attack priority
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`based on the stored enemy character information, and tracked on the interface for
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`the user to see. Id., cl. 1. To this end, the claims recite that the “attack priority” is
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`determined by the system based on at least one of the risk of the enemy character to
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`the player terminal and/or the expected damage capable of being inflicted on the
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`enemy character by a shooting action from the player terminal. Id. The specification
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`explains how these claimed improvements overcome the described technical
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`problems in shooting game interfaces. See, e.g., Id. 6:33-38 (mobile devices), 6:48-
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`53 (novice players), Figs. 5-7. Indeed, Patent Owner’s expert, Dr. Michael Shamos,
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`Distinguished Career Professor in the School of Computer Science at Carnegie
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`Mellon University, confirms that the ’664 Patent claims are directed to a technical
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`improvement, namely, “an online shooting computer game user interface that allows
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`a player to quickly immersed in the game by automatically finding, prioritizing, and
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`tracking targets that fall within the player’s customized basic identification range.”
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`Ex. 2001 ¶ 34; Ex. 1001, 1:62-2:2; 3:42-49, 1:39-61, Figs. 5-7.
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`Petitioner argues these claims as patent ineligible, stating that the claims are
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`directed to “detecting enemy characters within a range and determining an enemy
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`character for tracking,” an abstract idea. But the abstract idea advanced bears no
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`Case IPR2018-00071
`Patent 9,770,664
`relation to the actual claims. More specifically, it ignores the core features of the
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`claimed invention in favor of its over-generalizations. The ’664 patent claims an
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`online (i.e., networked) video game, and more specifically, a user interface with
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`specifically paired functionality for resolving technical hurdles in such games; it
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`does not solve a mere “mental or business problem” as Petitioner repeatedly alleges.
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`Pet. 26, 35. Petitioner’s proposed abstract idea omits both the on-screen “basic
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`identification range” and the determining an “attack priority” for enemy characters
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`within that basic identification range of the terminal and based upon information of
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`the enemy characters. Pet. 25. For example, claim 1 requires “a basic identification
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`range within a virtual online shooting game environment displayed on the player
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`terminal,” Ex.1001, cl. 1, but Petitioner’s abstract idea recites only “detecting enemy
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`characters within a range and determining an enemy character for tracking” without
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`any explanation of the meaning of the word “range.” Pet. 25. Id. Similarly,
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`Petitioner’s abstract idea omits the entire “determining an attack priority … based
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`on the information on the enemy characters” limitation, even though this very
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`limitation was highlighted in the Notice of Allowability that resulted in the
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`issuance of the ’664 Patent. Ex. 1002, 35. Petitioner simply ignores the claimed
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`“basic identification range” as well as the “determining an attack priority based on
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`the enemy character information.” Petitioner’s blinkered and over-generalized view
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`of the claims is fatal to its purported abstract idea under Alice step one.
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`Case IPR2018-00071
`Patent 9,770,664
`Further, even if reaching step two of Alice were necessary (it is not), as Patent
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`Owner’s declarant testifies, the ordered combinations of the claimed elements define
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`technological innovations that are unconventional and therefore patent-eligible.
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`During prosecution of the ’664 Patent, the Patent Owner amended the claims to
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`overcome the Patent Office’s § 103 obviousness rejections, confirming that the
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`limitations are not only not routine, the claims are not even known in the prior art.
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`Petitioner makes no attempt to provide evidence to the contrary because it cannot.2
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`Indeed, Petitioner concedes that, under Berkheimer, its arguments under step two of
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`the Alice test rely on underlying findings of fact; yet Petitioner does not provide any
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`actual facts or evidence. Pet. 40-41, 45. Petitioner’s remaining argument that the
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`claims fail to capture the inventive concept in the specification also fails. The ’664
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`Patent claims are directed to enabling networked video game play on devices with
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`restricted input means and relatively small displays (such as mobile devices). The
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`claims address these technical problems as articulated in the specification, and now
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`supported by unrebutted testimonial evidence of record. Ex. 1001, 1:62-2:2, 3:42-
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`44, 6:33-38; Ex. 2001 ¶¶ 45-46, 48-49, 29-33.
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`As such, Patent Owner respectfully requests that the Petition be denied.
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`2 Petitioner argues that the claim limitations are routine and conventional, yet brings
`no challenge under §§ 102 or 103 to challenge their validity, despite being eight-
`thousand words under the word limit and having had the opportunity to so in this
`proceeding.
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`Case IPR2018-00071
`Patent 9,770,664
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`II. THE INVENTION OF THE ’664 PATENT
`A. THE ’664 PATENT
`The ’664 Patent is directed to networked virtual shooting computer games,
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`and more particularly, first-person (and third-person) shooters where games are
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`played from the perspective of a playable character. Ex. 1001, 1:46-61, 1:62-2:2,
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`2:6-14; Ex. 2001 ¶¶ 22-33. In traditional computer and console shooting games, a
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`user has a field of vision within the game, and is required to correctly aim and fire a
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`virtual weapon (such as a gun); requiring accuracy and skill in these conventional
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`games allows players to feel “a sense of presence or immersion as if the player
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`appears to exist in a virtual world.” Ex. 1001, 1:20-45; Ex. 2001 ¶¶ 29, 69.
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`The ’664 Patent specification describes problems with conventional shooting
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`game user interfaces. Ex. 2001 ¶¶ 29-33. For example, the specification explains
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`that conventional shooting games have been developed for touch screen devices with
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`“relatively small display areas” and “restricted inputs,” such as mobile phones and
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`tablets. Ex. 1001, 1:62-66. The specification further explains that because “touch
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`screen displays have restricted input means” there is “a need for providing a method
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`of finding a target and to aim and fire at the target with more ease.” Ex. 1001, 1:62-
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`2:2, 6:33-38; Ex. 2001 ¶¶ 29-33, 69; Ex. 2003. The specification also discusses
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`problems with conventional shooting game user interfaces relating to new players.
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`Novice players just starting the game have difficulty selecting and hitting targets
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`Case IPR2018-00071
`Patent 9,770,664
`compared to more experienced players. Ex. 1001, 1:46-55, 6:48-53. The
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`specification explains that when a player fails to hit the targets, it degrades player
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`immersion in the game. Id. This leads to decreased playing time, overall game
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`appeal, and game-playing enjoyment, often resulting in the player quitting the game
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`entirely. Id. This is especially true in recent online player versus player battle
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`games, where players battle against each other in real-time; novice users often lose
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`battles more quickly then experienced players and spend more time waiting until the
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`next battle starts, making it more difficult for the player to adapt and learn the skills
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`needed to get better at the shooting game. Id. Ex. 2001 ¶¶ 23-24, 29-33; Ex. 2003,
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`5; Ex. 2004, 9; Ex. 2005, 136-137, 126, ; Ex. 2002, 1, 9.
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`The ’664 Patent is directed to an online shooting computer game user interface
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`that allows a player to quickly immerse themselves in the game by automatically
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`finding, prioritizing, and tracking targets that fall within the player’s customized
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`basic identification range. Ex. 1001, 1:62-2:2; 3:42-49; Ex. 2001 ¶¶ 29-44, 57-62,
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`66-67.
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`An embodiment of the shooting game’s user interface is disclosed below in
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`Figure 5 of the patent, showing the claimed “basic identification range” 510 in blue,
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`the claimed automatic tracking target (e.g. enemy character) 520 in green, and the
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`claimed “aiming point” 530 in red:
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`Case IPR2018-00071
`Patent 9,770,664
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`Ex. 1001, Fig. 5 (annotated), 12:26-49; Ex. 2001 ¶¶ 34-37. The patent specification
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`goes on to explain a process by which the limitations are implemented in the
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`computer and game server system. Ex. 1001, 10:6-12:25, Fig. 4.
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`Patent 9,770,664
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` Ex. 1001, Fig. 4; Ex. 2001 ¶¶ 34-37, 67.
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`The specification describes another feature of the invention, the automatic
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`tracking function, which is implemented by the automatic tracking processing unit
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`350. Ex. 1001, 7:13-42. The operation of the automatic tracking function is further
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`illustrated in Figures 6A-D and its accompanying discussion, with the automatic
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`tracking object 620 in green, basic identification range 610 in blue, and the aiming
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`Case IPR2018-00071
`Patent 9,770,664
`point 630 in yellow when off target, in red when on target. Ex. 1001, 7:42-8:14; Ex.
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`2001 ¶¶ 38, 66:
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`Ex 1001, Figs. 6A-D (annotated); Ex. 2001 ¶¶ 38, 66. Figure 6A shows the situation
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`where a target or enemy character 620 has entered the player’s basic identification
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`range 610 and has been detected, but before automatic tracking has been performed.
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`Ex. 1001, 7:45-49. Figure 6B shows the aiming pointer 630 automatically tracking
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`and moving towards the target (but is not yet on target); the specification explains
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`that this can be depicted by displaying the color of the aiming pointer in yellow on
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`Patent 9,770,664
`the user interface. Ex. 1001, 7:49-56; Ex. 2001 ¶¶ 38, 66. Figure 6C shows the
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`target 620 moving within the basic identification range 610 and the aiming pointer
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`630 tracking and moving to follow the target. Ex. 1001, 7:56-67; Ex. 2001 ¶¶ 38,
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`66. Finally, in Figure 6D, the aiming pointer 630 is now aimed correctly at the
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`tracking object, and an indicator is presented to the user to show this, such as by
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`changing the color of the aiming point in a second color, e.g., red, whereby a user
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`can enter a shooting input on the player terminal and expect to damage the in-game
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`target. Ex. 1001, 7:67-8:14; Ex. 2001 ¶¶ 38, 66.
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`The basic identification range selecting unit 330 provides the “basic
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`identification range” that is an integral part of the user interface of the invention.
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`Ex. 1001, 6:11-20; Ex. 2001 ¶¶ 39-40, 59-62. The basic identification range shows
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`a player “whether an enemy character becomes an automatic tracking object in the
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`progress of the shooting game is displayed on the display of each of the player
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`terminals.” Ex. 1001, 6:13-17; Ex. 2001 ¶¶ 39-40, 63. The basic identification range
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`is a “specified form of graphical user interface or other suitable types of graphic
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`forms that are displayed on the display.” Ex. 1001, 6:1-20. The specification
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`explains the importance of the basic identification range and how this contributes to
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`the technical solution of the ’664 Patent with respect to mobile devices with
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`restricted input means:
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`Thus, by providing the basic identification range on the display of each
`of the player terminals 100a to 100n according to various embodiments,
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`Patent 9,770,664
`it is possible to track a shooting object with more ease on a player
`terminal equipped with a simple input means, such as a smartphone and
`provide a player with quick immersion and pleasure in a game.
`Id. at 6:33-38; Ex. 2001 ¶¶ 39, 57, 63, 65. The specification also describes how the
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`solution can be implemented to help junior players, specifically, by offering a larger
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`(wider) on-screen basic identification range for junior players with a low rank. Ex.
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`1001, 6:39-45; Ex. 2001 ¶¶ 24-25, 39-40, 69-70. Senior players, on the other hand,
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`with more experience and higher ranks can have a narrower basic identification
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`range. Ex. 1001, 6:56-64; Ex. 2001 ¶¶ 24-25, 39-40, 69-70. The specification
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`explains how this solves the technical problems associated with difficulty in play:
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`Thus, by providing the different basic identification ranges according
`to the player's ranks, the junior player can be helped to adapt to and be
`immersed in game environments with more ease while the senior player
`can be provided with a higher level of shooting experience and a sense
`of immersion.
`Ex. 1001, 6:48-53; Ex. 2001 ¶¶ 24-25, 39-40, 69-70. The way that this is
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`implemented is described in Figure 7:
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`Patent 9,770,664
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`Ex. 1001, Fig. 7 (annotated), 6:55-58, 12:50-13:18; Ex. 2001 ¶¶ 40, 49, 61. The
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`widest basic identification range, 710a (green above), may be allocated to a junior
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`player with a lowest level (for example, a player that has selected an “easy” mode
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`of difficulty). Ex. 1001, 12:62-67; Ex. 2001 ¶¶ 40, 49, 61. With the wider basic
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`identification range, the user can play the game “with only a coarse manipulation of
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`the widest basic
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`identification
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`range, without
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`requiring an elaborative
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`manipulation.” Ex. 1001, 12:64-67; Ex. 2001 ¶¶ 40, 49, 61.3 The specification
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`3 The ability to play the game with “only a coarse manipulation” is also applicable
`to solving the problems associated with playing games on mobile devices generally;
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`Patent 9,770,664
`explains how using the narrow basic identification range, 710d (red), for a player
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`with a highest level requires the user to “perform a more elaborate manipulation
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`within a relatively wide space.” Ex. 1001, 13:5-7. For example, a user could select
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`from four levels of difficulty (easy, medium, hard, and very hard) which would
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`correspond to 4 different sizes of the “basic identification range” 710a (green), 710b
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`(yellow), 710c (orange), and 710d (red) respectively. Ex. 1001, 12:50-61; Ex. 2001
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`¶¶ 39-40.
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`Another key feature of the invention relates to prioritization of targets within
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`an identification range. Ex. 2001 ¶¶ 41-43, 50-52, 64-65. In addition to
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`automatically detecting and tracking targets in the basic identification range,
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`the ’664 Patent’s user interface will also prioritize targets within the basic
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`identification range and automatically select the best target for the user based on
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`various criteria and a priority determination. Ex. 1001, 6:63-7:12; Ex. 2001 ¶¶ 41-
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`43, 50-52, 64-65. The specification describes how the criteria would include, for
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`example, picking a target that would be most vulnerable (e.g., suffer the most
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`damage) from the players shot, or based on the target that presents the highest risk
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`to the player character (e.g., the target that has the strongest firepower). Ex. 1001,
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`it is more difficult to play games on mobile devices with limited touch screen inputs,
`so implementing a wider “basic identification range” on the mobile device enables
`gamers of all skill levels to play games more easily on mobile devices with limited
`touch screen inputs. Ex. 2001 ¶¶ 40-41; Ex. 2003, 5; Ex. 1001, 6:33-38.
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`6:63-7:12; Ex. 2001 ¶¶ 41-43. This prioritization is especially helpful for players
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`playing the shooting game on touch screens devices with restricted inputs (where it
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`is difficult for players to target and identify threats on a smaller screen) as well as
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`for users who are new to a game. Ex. 2001 ¶¶ 41-43. This “determining an attack
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`priority” functionality of the user interface is another important part of the claimed
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`invention.
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`During prosecution of the patent, the claims were amended to overcome prior
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`art rejections by include determining an attack priority “based on at least one of a
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`level of expected damage capable of being inflicted on a corresponding enemy
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`character by a shooting from the player terminal and a level of risk of the
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`corresponding enemy character to the player terminal.” Ex. 1002, 53. This novel
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`feature of assisting the player with prioritizing the best targets between multiple
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`targets in the basic identification range, is what made the invention clearly patentable
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`over the prior art presented during prosecution. Ex. 1002, 53, 125-126. Ex. 2001 ¶¶
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`41-43, 50-51.
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`Thus, the ’664 Patent claims are directed to a novel online shooting computer
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`game user interface that assists players who are new to the game or are playing on
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`devices with restricted inputs (such as relatively small touch screens on mobile
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`phones) with identifying, prioritizing, and tracking enemy targets. Ex. 1001,
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`Abstract, cl. 1-14; Ex. 2001 ¶¶ 43-44. Claim 1 in particular states:
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`Case IPR2018-00071
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`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:
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`selecting a basic identification range within a virtual online
`shooting game environment displayed on the player terminal;
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`detecting one or more enemy characters that are within the basic
`identification range;
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`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
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`determining one of the detected one or more enemy characters
`as an automatic tracking object based on the determined attack
`priority.
`The dependent claims additional add features to the user interface; for
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`example, claim 2 requires that the claimed basic identification range be movable by
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`a user via input from the player terminal; claim 3 requires selecting from a plurality
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`of different sizes of basic identification ranges according to a setting on the player
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`terminal; claim 4 requires allowing the aiming point to track the automatic tracking
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`object (target) according to the movement of the target within the basic identification
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`range; claim 5 requires allowing the aiming point to automatically move and
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`following the target according to the movement of the target; claim 6 allows the
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`aiming point to follow targets that are obscured by in-game objects; claim 7 provides
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`an indicator of the movement trajectory of a target within the basic identification
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`Case IPR2018-00071
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`range; claim 8 requires allowing the display to change and indicate when the aiming
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`point is close to, or far from, the target; claim 9 requires the aiming point to stop
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`following and tracking the target where the target moves outside the basic
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`identification range; claim 10 requires receiving a “shooting” input from the player
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`terminal and calculation of damage to the target; and claim 11 includes calculating
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`a loss of firepower based on the basic identification range and other in-game factors.
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`Ex. 1001, cl. 1-19; Ex. 2001 ¶¶ 43-44.
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`The ’664 Patent, as a whole and in light of the specification and prosecution
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`history, teaches an online shooting computer game system with an improved user
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`interface that helps users identify, prioritize, and track enemy targets, and presents a
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`technical solution to the technical problems caused by difficulties in playing
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`shooting games on devices with restricted input as well as difficulties for new users
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`in learning how to play shooting games. See, e.g., Ex. 1001, 6:34-38, 6:43-53, 1:62-
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`2:2, 1:46-61; 2:6-14. Ex. 2001 ¶¶ 29-44.
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`B. 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 ¶¶ 27-28.
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`Case IPR2018-00071
`Patent 9,770,664
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`III. ARGUMENT
`A.
`SPECIFIC INTERFACES FOR NETWORKED VIRTUAL
`SHOOTING COMPUTER GAMES ARE PATENT-ELIGIBLE
`Petitioner has not made a prima facie case of § 101 ineligibility under either
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`step of Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014).
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`As a preliminary matter, Petitioner’s proposed abstract idea is incomplete for failing
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`to
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`include
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`the
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`claimed
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`“basic
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`identification
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`range,”
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`and
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`“determining an attack priority … based on information on the enemy characters”
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`limitations Pet. 25; Ex. 2001 ¶¶ 53-77. Indeed, the Patent Office identified the
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`“determining an attack priority…based on information on the enemy characters” in
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`the claimed combination as novel in the Notice of Allowability during prosecution
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`of the ’664 Patent. Ex. 1002, 35. Not only does the abstract idea completely ignore
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`these claimed concepts, the Petitioner fails to even explain their meaning in the
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`context of the specification. Petitioner’s further admission that the abstract idea is
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`“locating, tracking, and aiming at enemy characters in a shooting game,”
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`demonstrates that the claims could never even be directed to a “mental or business
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`problem.” Pet. 32-34; Ex. 2001 ¶¶ 53-77.
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`Setting aside the fatally generic abstract idea for a moment, the Board must
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`apply a two step test to determine whether a patent directed to improved computer
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`functionality is eligible under 35 U.S.C. § 101. Alice Corp., 134 S. Ct. at 2354. At
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`
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`Case IPR2018-00071
`Patent 9,770,664
`step one, the Board must analyze whether the claims are directed to a “patent-
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`ineligible concept,” e.g., an abstract idea. Data Engine Techs. LLC v. Google LLC,
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`No. 2017-1135, 2018 WL 4868029, at *6 (Fed. Cir. Oct. 9, 2018) (finding claims
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`directed to “a highly intuitive, user-friendly interface with familiar notebook tabs for
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`navigating the three-dimensional worksheet environment” not abstract because the
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`claims required “a specific interface and implementation”); McRO, Inc. v. Bandai
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`Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims
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`directed to automated lip-synching of animated characters patent eligible); Core
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`Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1362 (Fed. Cir.
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`2018) (finding claims not abstract because they are “directed to an improved user
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`interface for computing devices”); Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
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`1299, 1305 (Fed. Cir. 2018) (finding claims not abstract); Enfish, LLC v. Microsoft
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`Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (finding claims not abstract because
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`they are “directed to a specific improvement to the way computers operate”). The
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`claims must be considered as a whole, in light of the specification, when determining
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`whether a claim is directed to an abstract idea. Data Engine Techs., 2018 WL
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`4868029, at *5.
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`Even if the claims are directed to a patent-ineligible concept under step one,
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`which they are not, the Board must still find the claims patent-eligible under step
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`two if the claim limitations involve more than the performance of well-understood,
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`Case IPR2018-00071
`Patent 9,770,664
`routine, and conventional activities previously known in the industry to a person of
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`skill in the art. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
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`(“Whether something is well-understood, routine, and conventional to a skilled
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`artisan at the time of the patent is a factual determination.”).
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`Petitioner further has not even articulated (nor can it articulate) an appropriate
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`abstract idea. Petitioner’s remaining arguments under step one also fail, because
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`the ’664 Patent discloses specific technical solutions (not just results) and because
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`the claims cannot be overgeneralized as simply claiming “detecting enemy
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`characters within a range and determining an enemy character for tracking” or
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`“automat[ing] the conventional activity of locating, tracking and aiming at enemy
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`characters in a shooting game.” Pet. 25, 34.
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`Here, because the Claims of the ’664 Patent are not directed to an abstract
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`idea, the Board’s analysis need not go any further. However even if step two of
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`Alice were applied, the claims recite far more than routine and conventional
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`activities. The ’664 Patent claims offer a specific technical solution (a novel
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`networked shooting computer game with a specific, structured user interface
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`implementing a basic identification range that assists players with detecting enemy
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`characters, determining an attack priority based on enemy character information, and
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`tracking enemy characters) to solve technical problems with conventional online
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`shooting computer games (traditional shooting game user interfaces are difficult to
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`Case IPR2018-00071
`Patent 9,770,664
`use for players on touch screen devices with restricted inputs like smartphones, and
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`are also difficult to use for many novice players). Petitioner’s arguments to the
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`contrary under both steps of the patent-eligibility analysis fail.
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`Petitioner’s arguments regarding step two are largely hand waiving.
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`Petitioner argues under Berkheimer that the claims do not capture the improvements
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`mentioned in the specification; in addition to be wrong on this, Petitioner also
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`completely ignores passages in the ’664 Patent specification that explain the
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`problems that the claims do address. Further, Petitioner provides no expert
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`declaration or evidence, beyond bare attorney argument, that the claimed user
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`interface displaying a basic identification range for helping players detect, track
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`and determine attack priorities for enemy characters based on enemy character
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`information is routine and conventional. As submitted herewith, Patent Owner
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`presents evidence (now unrebutted) from the specification, prosecution history, and
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`the testimony of Dr. Shamos showing that the claims involve more than performance
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`of well-understood, routine, and conventional activities previously known in the
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`industry to a person of skill in the art.
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`1.
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`Petitioner’s Abstract Idea Omits The “Basic Identification
`Range” Limitation Of The Claim And Should Be Rejected
`The Petitioner’s proposed articulation of an abstract idea overgeneralizes the
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`claims and omits core concepts of the claim limitations. Plaid Techs., Inc. v. Yodlee,
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`Inc., CBM2016-00045, Pap. 7 at 14-17, Institution Decision (PTAB Aug. 23, 2016)
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`Case IPR2018-00071
`Patent 9,770,664
`(Denying institution where the Petitioner’s proposed abstract idea impermissibly
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`over-generalized the claims) (Aug. 23, 2016); Apple, Inc. v. Mirror World Tech.,
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`LLC, CBM2016-00019, Pap. 12, 12-17 (PTAB May