throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 9
`Entered: February 26, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`Case PGR2018-00091
`Patent 9,808,723 B2
`____________
`
`
`Before MICHAEL W. KIM, 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. 9,808,723 B2
`(“the ’723 patent”). Supercell Oy (“Supercell”) filed a petition requesting
`post-grant review of claims 1–19 of the ’723 patent. Paper 1 (“Pet.”).
`GREE filed a preliminary response in opposition to the petition. Paper 6
`(“Prelim. Resp.”). After considering the petition and the preliminary
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`response, as well as the evidence of record, we determine the petition fails to
`demonstrate that at least one of challenged claims 1–19 is more likely than
`not unpatentable. 35 U.S.C. § 324(a). Thus, institution of post-grant review
`of the ’723 patent is denied.
`I. BACKGROUND
`
`A. The ’723 Patent
`The ’723 patent issued November 7, 2017, and claims priority to a
`Japanese patent application filed May 26, 2014.1 Ex. 1001, 1:5–11. The
`’723 patent is directed to a video game that improves upon a conventional
`game of “reversi” by providing a greater number of strategies for winning
`the game. Id. at 1:21–43. The conventional reversi game involves players
`taking turns placing binary-colored game pieces—either black or white—on
`a game board displayed on a game device. Id. at 1:25–30. After a first
`player places a game piece on the board, any pieces of a different color
`belonging to an opposing player that are located between the first player’s
`pieces are flipped so as to now belong to the first player. Id. at 1:31–34.
`But, according to the ’723 patent, the conventional reversi game “lacks a
`variety of strategies, resulting in a game that is not always very strategic”
`because the “simple operation [of flipping ownership of pieces between the
`players] is repeated.” Id. at 1:35–39. The ’723 patent improves upon the
`monotony of the traditional reversi game by providing multiple new criteria
`for determining a winner, including calculations that account for “values”
`
`
`1 Because Supercell filed the petition within nine months of the ’723 patent’s
`issue date and the earliest possible priority date for the ’723 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the Leahy-Smith America Invents Act), the ’723 patent is eligible for post-
`grant review. See 35 U.S.C. § 321.
`
`2
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`associated with the game pieces and “areas” in which an opposing player’s
`game pieces are “sandwiched.” Id. at 10:66–11:31; see also id. at 2:4–9,
`17:62–18:30, 22:11–24:12 (explaining how a “calculation module”
`determines “hit points” using both “values” associated with the game pieces
`and “specific areas” in which game pieces are “sandwiched”).
`B. Representative Claim
`The ’723 patent includes nineteen claims, with claims 1, 10, and 16
`being independent. Claim 1 is directed to a “non-transitory computer-
`readable medium . . . executed by an information processing system,”
`claim 10 is directed to an “information processing system,” and claim 16 is
`directed to a “method performed by an information processing system.” All
`three independent claims recite essentially the same steps. Hence, claim 1 is
`representative and reproduced below.
`
`1. A non-transitory computer-readable medium including
`computer program instructions, which when executed by an
`information processing system, cause the information processing
`system to:
`store a plurality of game media in association with each of
`a plurality of players, the game media each having at least a first
`parameter associated with a state of the game media and a second
`parameter corresponding to a numerical value associated with the
`game media;
`control a display to display a user interface including a
`game play field including a plurality of areas;
`receive a selection from a first player of the plurality of
`players to place at least a first game medium of the plurality of
`game media in a first area among a plurality of areas of the game
`play field;
`allocate the first game medium to the first area of the game
`play field, based on the received selection from the first player,
`
`3
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`
`in association with the state of the first game medium indicated
`by the first parameter associated with the first game medium;
`specify one or more second areas to which a second game
`medium of the plurality of game media has been allocated, the
`second game medium having a state different than the first game
`media indicated by the first parameter associated with the second
`game medium;
`control the interface to display the game play field onto
`which the first and second game media are allocated;
`calculate a value to be applied to at least one of the first
`or a second game player’s parameter based [on] a number of the
`second game medium or a numerical value associated with the
`second game medium indicated by the second parameter
`associated with the second game medium;
`apply the value to the at least one of the first or second
`game player’s parameter;
`control the display to update the at least one of the first or
`second game player’s parameter after the value has been applied;
`and
`
`identify one or more areas of the game field sandwiched
`between the first area and a third area of the game field, on
`which has been allocated a third game medium having a same
`state as the first game medium as determined by the first
`predetermined parameter of the third game medium, that include
`one or more media having a same state as the second game
`medium including the second game medium along a
`predetermined axis on the field, wherein the value to be applied
`to the at least one of the first or second game player’s parameter
`is calculated based on a number of the one or more media or a
`numerical value associated with the one or more media.
`Ex. 1001, 26:2–52 (emphases added).
`C. Asserted Grounds of Unpatentability
`In petitioning for post-grant review, Supercell asserts that claims 1–19
`of the ’723 patent are unpatentable under 35 U.S.C. § 101 for failing to be
`directed to patent-eligible subject matter. Pet. 29–55. Supercell does not
`
`
`
`4
`
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`submit any declarant testimony in support of the petition. GREE, on the
`other hand, submits the declaration of David Crane (Ex. 2001) in arguing
`that the claims are directed to patent-eligible subject matter.
`II. ANALYSIS
`
`A. Claim Construction
`At this stage, neither party proposes a construction for any particular
`claim term. See Pet. 13–14; Prelim. Resp. 15–29. 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 1–19 of the ’723 patent for failing to
`recite patent-eligible subject matter under 35 U.S.C. § 101. Pet. 29–55
`(citing Exs. 1001–1010). GREE disagrees. Prelim. Resp. 38–62. 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. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (“Alice”).
`Central to this case is whether the challenged claims are directed to 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, 573 U.S. at 217. If the claim is directed to an
`abstract idea, we then consider whether any claim elements, either
`individually or as an ordered combination, transform the nature of the claim
`into an “inventive concept”—an element or combination of elements
`
`5
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`sufficient to ensure that the claim amounts to “significantly more” than the
`abstract idea itself. Id.
`Supercell contends that the challenged claims are directed to the
`abstract idea of “making gameplay less boring.” Pet. 34. This is so,
`Supercell contends, because the challenged claims recite “generalized steps”
`that “can be accomplished either mentally or using pen and paper.” Id. at
`34–35. In support, Supercell compares the challenged claims to those found
`to be abstract in Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005 (Fed.
`Cir. 2014), 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), and Electric Power Group, LLC v.
`Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Pet. 34–39.
`Even assuming that the challenged claims are directed to an abstract
`idea as Supercell argues, we determine that Supercell falls short in satisfying
`Alice’s further requirement that, before a challenged claim can be found
`patent ineligible, it must be shown that it does not otherwise recite an
`“inventive concept”—an element or combination of elements sufficient to
`ensure that the claim amounts to “significantly more” than the abstract idea
`itself. Alice, 573 U.S. at 217–18. In other words, a challenged claim
`directed to an abstract idea is nonetheless patent eligible if it recites an
`element or combination of elements that goes beyond “well-understood,
`routine, conventional activity already engaged in by the scientific
`community.” Mayo, 566 U.S. at 79–80; see also Alice, 573 U.S. at 225
`(same); 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
`
`6
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`activities previously known to the industry” (internal quotes and citations
`omitted)). This second step of Alice requires that we “scrutinize the claim
`elements more microscopically.” Electric Power, 830 F.3d at 1354.
`Here, in what amounts to little more than attorney argument, Supercell
`contends that “[a]ll the recited claim elements of the ’723 claims, tangible
`and otherwise, are conventional, generic and well understood, and thus
`present no patentable inventive concept.” Pet. 47. Although Supercell
`provides a plethora of case law to explain why the recited hardware
`components, such as the “display” and “user interface,” are generic or “non-
`inventive for purposes of step two of Alice” (Pet. 47–48), Supercell provides
`little-to-no support for why the recited functional steps “also cannot supply
`an inventive concept” (id. at 48). Notably, Supercell cites only a single case,
`Electric Power, with no further evidence or analysis, in an attempt to show
`the recited functional steps are “generic computer functions that courts have
`found insufficient to confer patent eligibility.” Id. at 49.
`Electric Power, however, stands for the proposition that claim
`elements “requiring the selection and manipulation” of “available” and
`“known” types of information do not transform an otherwise abstract idea
`into something significantly more than the abstract. Electric Power, 830
`F.3d at 1355. What Supercell ignores is Electric Power’s express
`acknowledgment that claims “requir[ing] a new source or type of
`information, or new techniques for analyzing it,” such as “measurement
`devices or techniques, that would generate new data,” may very well reveal
`an inventive concept. Id. (citing Bascom Global Internet Servs., Inc. v.
`AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)). And, while
`Supercell argues that the functional steps relating to the calculation of a
`
`7
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`player’s score are not inventive because they are “conventional, generic and
`well understood,” Supercell fails to provide sufficient support for that
`position.
`More specifically, the challenged claims require the system to
`“identify one or more areas of the game field sandwiched between the first
`area and a third area of the game field” and “calculate a value” and “apply
`the value” to a player’s score “based on a number of the one or more media
`or a numerical value associated with the one or more media” within the
`sandwiched area. Ex. 1001, 26:29–52. In our view, calculating a player’s
`score based on a game piece’s “value” and the specific “area” in which the
`game piece is placed may amount to an inventive concept because,
`plausibly, it is a “new source or type of information” for scoring points not
`found in the traditional reversi game. See Electric Power, 830 F.3d at 1355.
`Indeed, the recitations of how a player’s score is calculated are the very
`steps that led to allowance of the claims. See Ex. 1002, 26–27 (examiner’s
`notice of allowance), 40–41 (applicant’s amendments that overcame
`examiner’s prior art rejections). But, aside from inapposite case law,
`Supercell fails to proffer any further evidence or analysis for why a skilled
`artisan would have deemed such steps “well understood, routine
`conventional activit[y] previously known in the industry.” Alice, 573 U.S. at
`225.
`
`GREE, on the other hand, provides unrebutted expert testimony
`confirming that a skilled artisan would have recognized that, in contrast to
`traditional games of “reversi,” where points are calculated based on “simply
`the player with the most squares in his or her color remaining on the board,”
`the ’723 patent “increase[s] the available strategies for the game” by offering
`
`8
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`“multiple attributes for each game piece” based not only on the color of a
`game piece but also “a numerical value.” Ex. 2001 ¶¶ 24–28. GREE’s
`expert further testifies that values are also based on specific “sandwiched”
`areas of game pieces. See id. ¶ 34. Because values are “calculated based on
`a plurality of parameters,” the game as claimed “allow[s] for more
`compelling game play, and mak[es] possible new strategies not available to
`an unimproved version of ‘reversi.’” Id. ¶ 30. We agree.
`Consistent with GREE’s expert testimony, the specification of the
`’723 patent makes clear that a player receives points based on the value of
`the various game pieces and the specific areas in which they are placed. In
`particular, Figure 6A of the ’723 patent, reproduced below, illustrates the
`way points are calculated and applied to a player’s score.
`
`
`Figure 6A, reproduced above, shows game pieces of one player,
`“A(1)” and “C(1),” positioned on the game field relative to an opposing
`player’s game pieces, “B(2).” As described in the specification of the ’723
`patent,
`When player one places character A on the field, character A is
`in a state such that the first parameter is valid. At this time, the
`
`9
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`
`area associated with character B is sandwiched between areas
`respectively associated with characters A and C. Accordingly,
`the area associated with character B is specified by the
`specification module 140 as a specific area. In this case, the
`calculation module 150 first calculates the total of the first
`parameter “20” of character A and the first parameter “30” of
`character C, i.e. “50.” Next, the calculation module 150
`calculates the difference between this total “50” and the second
`parameter “40” of character B, i.e. “10.” By subtracting the
`difference “10” as damage from the hit points “300” associated
`with the defending player, the calculation module 150 calculates
`the hit points associated with the defending player to be the result
`of subtraction, i.e. “290.” When the difference is zero or less,
`the calculation module 150 does not change the hit points
`associated with the defending player. In other words, the damage
`to the defending player is “0.”
`Ex. 1001, 11:12–31 (emphasis added).
`We are persuaded by GREE’s assertion, supported by the above
`evidence, that the process of calculating player parameters based on the
`addition and subtraction of values associated with various game pieces in a
`sandwiched area would have been understood by skilled artisans as an
`“unknown combination of mechanics” that adds significantly more to the
`abstract idea, even under Supercell’s formulation of that idea. Prelim. Resp.
`50. And, to the extent, Supercell analogizes the challenged claims to
`previously known games, such as War, Pokemon, and Stratego, we note that
`Supercell does not point to any evidence, or provide a sufficient
`countervailing analysis, that those known games perform any sort of
`calculation of a player’s score. To the contrary, the evidence of record
`shows that those known games involve nothing more than a simple
`comparison of opposing game pieces to determine a winner. See Ex. 2001
`¶¶ 31–35 (GREE’s expert explaining how the claimed invention differs from
`
`10
`
`

`

`PGR2018-00091
`Patent 9,808,723 B2
`
`the conventional games of War, Pokemon, and Stratego). That simple
`comparison, in our view, does not sufficiently account for a “calculation,”
`let alone a calculation derived from a “value” of the various game pieces and
`an “area” in which they are “sandwiched,” as required by the challenged
`claims.
`Given the totality of evidence, we are unpersuaded that the ’723
`patent’s calculation of a player’s score can be said to have been routine or
`conventional. Instead, as discussed above, the evidence of record supports
`that the challenged claims harness an inventive concept that establishes their
`patent eligibility. Thus, Supercell has not demonstrated that any of the
`challenged claims is more likely unpatentable than not under 35 U.S.C.
`§ 101.
`C. The Challenges Under 35 U.S.C. §§ 112(a) and (b)
`Supercell also contends that the challenged claims are unpatentable
`because, first, the steps of “calculate a value” and “apply the value” lack
`sufficient written description support to satisfy the requirements of 35
`U.S.C. § 112(a), and, second, these same steps are not clear and precise
`enough to satisfy the requirements of 35 U.S.C. § 112(b). Pet. 60–68, 68–
`74, respectively. Although section 112 compliance is measured from the
`standpoint of what a skilled artisan would have understood from the
`specification as originally filed, Supercell fails to proffer any evidence of
`that understanding. See id. at 59, 65, 68, 70. Instead, in what amounts
`largely to conclusory argument, Supercell faults the specification for
`providing “[n]o guidance . . . as to when the number/numerical value should
`be applied to the first player’s parameter, when to apply it to the second
`
`11
`
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`player’s parameter, and when to apply it to both.” Id. at 63; see also id. at
`64, 65, 67 (arguing essentially the same). We disagree.
`As discussed above with respect to the ’723 patent’s inventive
`concept, the specification makes clear that the system performs the
`calculation based on the placement and value of one player’s game pieces—
`“A(1)” and “C(1)” shown in Figures 6A and 6B—relative to the number and
`value of an opposing player’s games pieces—“B(2)” and “C(2)” shown in
`the same figures. See Ex. 1001, 10:66–12:61, Figs. 6A–6B. GREE’s expert
`testifies that a skilled artisan would have understood those disclosures as
`providing support for the “calculating a value” and “applying the value”
`steps as claimed. Ex. 2001 ¶¶ 37–42. We credit that testimony, for it is
`consistent with the specification. Thus, Supercell does not persuade us that
`the claimed steps of “calculate a value” and “apply the value” lack written
`description support under 35 U.S.C. § 112(a).
`Finally, Supercell argues, because the “calculate” and “apply” steps
`“lack sufficient written description support in the specification . . . , they
`omit matter essential to the claims and are also indefinite” under section
`112(b). Pet. 72–74. But these are the same steps on which Supercell relies
`to support its argument under section 112(a). See id. at 60, 66. As discussed
`above, we rejected Supercell’s assertion that these steps, as claimed, lack
`sufficient support in the specification. As such, Supercell’s companion
`argument that the scope of these steps is unclear given their purported
`absence from the specification is no more persuasive under section 112(b)
`than it was under section 112(a). See id. at 68–74. Thus, Supercell fails to
`demonstrate that the challenged claims, more likely than not, are
`unpatentable under either 35 U.S.C. § 112(a) or § 112(b).
`
`12
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`
`III. ORDER
`After consideration of the entire record, it is ORDERED that, pursuant
`to 35 U.S.C. § 324(a), institution of post grant review of claims 1–19 of the
`’723 patent is denied.
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`13
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`

`PGR2018-00091
`Patent 9,808,723 B2
`
`FOR PETITIONER:
`Jennifer R. Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`FOR PATENT OWNER:
`John C. Alemanni
`Andrew Rinehart
`Scott E. Kolassa
`Steven D. Moore
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`skolassa@kilpatricktownsend.com
`smoore@kilpatricktownsend.com
`
`14
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`

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