UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.
`Patent Owner.
`__________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`__________
`
`Record of Oral Hearing
`Held: March 3, 2020
`__________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.
`Patent Owner.
`__________
`
`Case PGR2019-00018
`Patent 9,891,799 B2
`__________
`
`Record of Oral Hearing
`Held: March 3, 2020
`__________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`
`
`Case PGR2019-00018
`Patent 9,891,799 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JENNIFER R. BUSH, ESQ.
`GEOFFREY MILLER, ESQ.
`Fenwick & West LLP
`Silicon Valley Center
`801 California Street
`Mountain View, CA 04041
`650-335-7213
`jbush@fenwick.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`SCOTT A. MCKEOWN, ESQ.
`BRENDAN MCLAUGHLIN, ESQ.
`Ropes & Gray LLP
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006-6807
`202-508-4740
`scott.mckeown@ropesgray.com
`
`
`The above-entitled matter came on for hearing on Tuesday, March 3,
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`2020, commencing at 1:00 p.m. at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
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`P-R-O-C-E-E-D-I-N-G-S
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`(1:00 p.m.)
`JUDGE JUNG: Thank you. Please be seated. Good afternoon.
`This is the oral hearing for PGR2019-00018. Petitioner Supercell Oy
`challenges all claims of U.S. Patent Number 9,891,799.
`Starting with counsel for Petitioner and followed by counsel for Patent
`Owner, please state your names for the record.
`MS. BUSH: Good morning, Your Honors. I am Jennifer Bush,
`lead counsel for Petitioner Supercell Oy. And joining with me today is
`Geoffrey Miller.
`JUDGE JUNG: Welcome.
`MR. MCKEOWN: Good afternoon. Scott McKeown of Ropes &
`Gray for Patent Owner Gree, joined today by Brendan McLaughlin.
`JUDGE JUNG: Welcome to you as well.
`MR. MCKEOWN: Thank you.
`JUDGE JUNG: As described in our trial hearing order each party
`has 45 minutes of total time to present its arguments. Each side may also
`reserve time for rebuttal.
`And the last two reminders, please refer to your demonstratives by
`slide number for the sake of Judges Browne and DeFranco. And please do
`not interrupt to make an objection. I know sometimes it's a very tough thing.
`With all that said, Ms. Bush, you may proceed when you're ready.
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`MS. BUSH: Thank you, Your Honors. We're here today, as you
`noted, to talk about Gree's Patent 9,891,799. And --
`JUDGE JUNG: Ms. Bush, would you like to reserve time for rebuttal?
`MS. BUSH: Yes, absolutely. Can I reserve 15 minutes, please for
`rebuttal? Thank you for the reminder, Judge.
`I'm just going to start with a quick overview of the arguments which
`you've obviously already seen from all of our papers, but that we'll touch on
`briefly today.
`The first is with respect to Section 101 that the Board should maintain
`its findings from the institution decision that the claims of the ’799 Patent are
`directed to rules that govern play of a game involving the abstract idea of
`associating game objects and moving one or more of the objects.
`Also, that they do not integrate the abstract idea into a practical
`application, nor do the claims provide additional inventive elements beyond
`the abstract idea.
`We'll also touch just briefly on Section 112(b) today, the arguments
`there being that the term direction is indefinite and that the limitation moving
`one or more of the plurality of the associated objects as a group also is
`indefinite.
`And then briefly the Patent Owner has actually waived its 112(b)
`arguments that they did not maintain from the preliminary response into the
`Patent Owner's response.
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`Talking about the ’799 Patent just briefly, although I'm sure Your
`Honors are aware that the claims were found to be directed to rules that govern
`play of a game and involving the abstract idea of associating game objects and
`moving one or more of the objects.
`And I've got here Figure 5A which is shown there, some objects.
`And then there's a finger sort of moving across the screen there in one or more,
`the objects it's not clear there which are associated with the moving.
`Looking at the claim itself, I'm not going to read all of it, but we've
`got the steps here. Rules that govern play of a game. And again, involving
`the abstract idea of associating game objects, those being the ones pictured
`here, some portion of them and then moving one or more of those objects.
`I'd like to start with talking a little bit about the fact that the Board
`found the limitations of representative Claim 1 were all those that recite rules
`governing play of a computer game because those limitations all recite
`operations that take place during play of a computer game and that these were
`seen to be similar to managing personal behavior or relationships which
`includes following rules or instructions akin to those in the In re: Smith case.
`And Patent Owner's expert actually agreed with the Board's statement
`that the limitations recite operations that take place during play of a computer
`game.
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`Patent Owner talks about it in its sur-reply, makes arguments that
`Petitioner was trying to rewrite the Board's abstract idea. But really it just
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`disagrees with the Board's conclusions from the institution decision on two
`fronts.
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`The first is that the Board's conclusion that the claims are directed to
`rules that govern play of a computer game, that was incorrect. And then
`secondly, they challenged the Board's rationale for that conclusion, which is
`also stated here, which was that because the limitations all recite operations
`that take place during play of a computer game. And they tried to distinguish
`those from In re Smith as if the Board had done so, but that did not in fact
`happen. And so, I'd like to talk about a few of the arguments that were raised
`by Patent Owner that have failed.
`And the first one is that the claims are not directed to a game. For
`some reason, Patent Owner seems to make quite a bit of to-do about the letter
`A being in this statement. And they seem to put some importance on that,
`that just wasn't present in the In re Smith case.
`But as you can see from the claim itself, the preamble of Claim 1,
`which is representative, says a computer implemented method for operating a
`computer game. So, that's right there in the claim.
`And then in the preliminary response, Patent Owner itself argued that
`the claims were directed to a game with an improved touch screen interface.
`Now they've changed that a little bit in the Patent Owner's response to be
`focusing a bit more on the interface.
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`But this was their own articulation of what the claims were directed to
`in the preliminary response. And then, of course, the Board also concluded
`that the claims were directed to rules that govern play of a game.
`The second of Patent Owner's failed arguments is that the claims are
`instead directed to a gesture-driven control interface. And again, this is new.
`This is not what they were arguing in the preliminary response. But
`representative Claim 1 does not actually recite a gesture-driven control
`interface nor does it recite a touch screen at all which the Board noted in the
`institution decision. Nor does it recite the term interface at all.
`The only place at all in the claims that the term interface takes place
`is once, which is in Claim 15's preamble, where it states a graphical user
`interface. And as the Board had noted in the institution decision, Patent
`Owner didn't actually separately address independent Claim 15. So, there
`really isn't anything here in the claims as a basis for the saying that the claims
`are directed instead to an interface.
`We've got a little bit here of the claim, highlighting some of the steps
`which include storing, accepting operation information, associating the
`objects, determining if there's a direction, responding to that and displaying.
`And these are the steps that the Board specifically called out in the
`institution decision as being the operations that are focused on game play.
`So, I guess the point here in highlighting these, and this is actually text
`copied directly from the institution decision, is that any argument that the
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`Board somehow didn't fully consider Patent Owner's arguments to the
`contrary about these particular limitations just is disingenuous because it's
`right there in the institution decision.
`Apologies, Your Honors, I'm on Slide 10 now. I just realized you
`couldn't tell exactly when I was turning the slides. Sorry about that. On
`Slide 10 I'm now talking about Patent Owner’s third failed argument which
`the claims are actually unlike Planet Bingo's organizing human activity, which
`has been found, those claims have been found patent eligible. And the
`language there is enforcing the rules of a Bingo game.
`Here Patent Owner talks about the fact that the term “rule” didn't
`appear anywhere in the Specification or the claims of the ’799. However,
`that's the same as in Planet Bingo. If you look through all the patents in
`Planet Bingo the term “rule” is not a requirement there. It actually isn't
`present in those either.
`And Patent Owner also argued that the claims have nothing to do with
`organizing human activity.
` However, the Board reached a different
`conclusion, and I think specifically in talking about rules that govern play of
`the game noting that those were akin to managing personal behavior or
`relationships or interactions between people including following rules or
`instructions.
`And these are the terms that are exactly from the Planet Bingo case
`and also in the guidance. So, that's just incorrect. I'm on Slide 11 now.
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`JUDGE BROWNE: Ms. Bush.
`MS. BUSH: Yes.
`JUDGE BROWNE: It seemed to me that in the response Patent
`Owner, as you said, was making, trying to make an issue out of “a game.” I
`was wondering if the claims actually do cover rules that can be played in
`multiple games, does that really make any difference to whether or not they
`are abstract?
`MS. BUSH: I don't believe it does. I have not, none of the case law
`that has dealt with, for example Planet Bingo, In re: Smith, In re: Guldenaar,
`none of those cases have made it specific to the game that was at issue there,
`or have made any distinction that if those rules were applicable to more than
`one game, that those holdings would not be true.
`I have not seen any case law and Patent Owner has not raised any case
`law where that would be the case. So I don't see why that would be. And
`then we have the fact that of course Claim 1 does say for operating a computer
`game. So it does actually articulate the singular in the claim itself. But I
`think, even if it didn't, I don't think that it would matter.
`The next slide I have here mostly to show that any argument that the
`claims of the ’799 are somehow very different from Planet Bingo just doesn't
`hold up. There were some arguments by Patent Owner that the Planet Bingo
`games are directed to enforcing the rules of the game.
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`But when you see them side by side what you see is that both sets of
`claims, we have Planet Bingo Claim 1 and then ’799 Claim 1 are reciting
`similar steps performed by a system, again not a user, by the system of
`accepting input, storing it, taking some sort of action on the received input
`and then outputting or displaying some sort of result of that action that was
`taken.
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`So if there is something here in Planet Bingo that Patent Owner
`believes are the rules of the game that are distinguished, I would be curious
`what they are, and you can see there would be a counterpart in the ’799 Claim
`1 because they are very similar steps that are articulated. Okay, moving to
`Slide 12.
`The fourth failed argument of Patent Owner is that the claims are more
`like Core Wireless and McRO than they are the game cases. And Patent
`Owner has argued that the claims recited specific user interface like Core
`Wireless. We've already talked a little bit about why that's just not true.
`There's no interface in the claims whatsoever.
`And also Patent Owner has argued that the claims recite specific
`improvements in a computer process like in McRO. However, McRO really
`focused on a specific technological improvement and it had detailed rules, and
`that achieved an improved technological result. The claims of the ’799
`Patent, on the contrary, recite generalized steps that aren't focused on any
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`process or machinery to achieve those results but just use sort of generic
`computer and touch screen technology.
`JUDGE DEFRANCO: Ms. Bush.
`MS. BUSH: Yes.
`JUDGE DEFRANCO: Is that really true? It seems to me that the
`claims recite “a moving processor.” Now, I've never heard that term before.
`So, isn't that something that could possibly be construed as a technological
`improvement?
`MS. BUSH: I'm just going to get the claim in front of us here. Let's
`see, you're talking about “storing in the storage module the new arrangements
`on the game field of one or more of the plurality of associated object move in
`the process.”
`Sorry about that. “Moving, using a moving processor, one or more
`of the plurality of associated object as a group in the direction indicated by
`the direction operation.”
`So there's where that moving processor occurs in the claim. There's
`nothing special about this moving processor. It's a processor for moving the
`objects. There's nothing special articulated about it within the Specification.
`There's nothing specific about the moving process that the Patent
`Owner has pointed to that would make that process or something unique or
`new. And as I'm sure the Judges know, it's well established case law that
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`mere programming doesn't transform a generic computer, a generic processor
`into a special purpose one just by the programming itself.
`So, there isn't really anything here about it being quote, a moving
`processor except for that it's a processor that performs the certain standard
`movements of executing what a user has asked the computer to do.
`JUDGE DEFRANCO: So, Ms. Bush, it's your position that this
`moving processor is just like any old processor. And you're saying that any
`conventional processor could move a plurality of associated objects as a
`group?
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`MS. BUSH: Yes. And in fact in the institution you had come to the
`conclusion that the recited steps are performed on generic although touch
`screen computer technology. And the processor is one of those.
`And if you look in the Specification there isn't anything about that
`moving processor that is, you know, something inventive or something new
`that has been done. It just performs these movements.
`JUDGE DEFRANCO: Now, does your expert speak to this moving
`processor at all?
`MS. BUSH: So, we don't have an expert in this case.
`JUDGE DEFRANCO: Okay.
`MS. BUSH: To my knowledge --
`JUDGE DEFRANCO: So you're relying on the Specification?
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`MS. BUSH: We're relying on the Specification and the case law
`that's analogous. But during deposition, and I can find the portions when I'm
`not speaking if you would like, we actually did ask their expert about it.
`And he confirmed that there was nothing about that -- so the quote that
`I have here just talked about displays and input faces. But what has happened
`during the deposition is I had walked their expert through each of the hardware
`looking portions of the claims and specifically asked about those. And each
`of those he confirmed were conventional.
`JUDGE DEFRANCO: Okay, yes. If you could point me to those
`or give me a pinpoint cite as to that testimony, that would be great.
`MS. BUSH: So we were talking a little bit about that here, and there
`doesn't appear to be any specific machinery that differs here. And as a result
`the Board had concluded that the claims don't integrate the abstract idea into
`a practical application.
`In the institution decision the Board had included that simply
`implementing the abstract idea on a generic computer, as was the case here,
`even with the use of a touch screen, is not a practical application. And
`actually I'm going to make that note that the expert admitted that the hardware
`recited in the ’799 claims was in fact, well known.
`The Patent Owner also argued that the Board hadn't fully considered
`the expert testimony regarding the articulation of the abstract idea in
`particular, which is sort of beside the point.
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`So, in the Step 1 analysis of Alice is not, so if you go back to
`Berkheimer when there sort of became this distinction where it was clear that
`not the entire consideration was a question of law, that there were some factual
`underpinnings.
`But that wasn't a carveout of Step 1 of Alice. That was a carveout of
`Step 2, specifically that the factual inquiry had to do whether something was
`well known, conventional, or routine.
`So, the fact that the Board, even if it were true that the Board didn't
`consider the expert testimony with respect to whether the articulation of the
`abstract idea that Petitioner put forth was correct versus Patent Owner is a
`matter of law. And it didn't actually require the Judges to consider that
`testimony.
`And I'll touch on this briefly later. But Patent Owner's expert also
`doesn't meet Patent Owner's own definition of a person of skill in the art. So,
`that may -- it may be that testimony might be considered with less weight as
`well.
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`Okay. So, turning to Step B of the Alice analysis the next step is
`whether any of the additional elements beyond those of the abstract idea
`transform the claim into patent eligible application.
`And in Alice the Supreme Court didn't go through every single
`limitation, but rather just considered those additional to those not accounted
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`for by the abstract idea as to whether they were well understood, routine and
`conventional.
`And part of the reason this is important is the abstract idea itself, the
`case law states that cannot supply the inventive concept. It can't be both.
`Patent Owner though argues the same claimed aspects, the associating
`steps, the determining steps, the moving steps when it alleges that the claim
`is, which is what it alleges that the claim is directed to. And also being the
`claimed aspects that supply the inventive concept.
`And so, we'll dig down a little bit deeper. But the reason the
`additional elements provide no inventive concept is because, as we touched
`on briefly earlier, they recite only generic, well known computer network
`equipment.
`They don't actually capture the purported inventive concept as
`articulated in the Specification. And also the claim limitations are well
`understood, routine and conventional. And we do address all of the
`limitations even though some should be carved out as part of that abstract idea
`portion.
`So, again, here are the, here is the computer equipment that's in the
`’799 claims: an input face configured to detect the touch operation, a
`processor, a moving processor and a computer screen.
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`All of these are generic computer equipment. And the Specification
`itself admits that each are well known and conventional components of mobile
`devices and computers used for video games.
`So, as a follow up, Judge DeFranco, I'll see if the Spec has a specific
`call out about that moving processor as well because I think it might.
`Again, the Board acknowledged these all as conventional and Patent
`Owner's expert did as well. And specifically the displays, input faces, the
`Patent Owner's expert admitted that none of those were new.
`Moving to the second portion which is the claims don't actually
`capture the purported improvement. Under Berkheimer the statement is in
`fact that improvements in the Spec, to the extent that they're captured in those
`claims, may create a factual dispute regarding whether the invention describes
`well understood routine and conventional activity.
`So, there's sort of a gateway question there which is do the claims in
`fact capture those purported improvements from the specification. And here
`the Specification disclosed the purported improvement as performing
`complex movements of a group of game objects with simple gestures.
`So, complex movements, simple gestures. And actually their expert
`during the deposition sort of emphasized this aspect. The problem is that the
`claims have a different scope.
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`The claims have accepting input, storing and taking action on that
`input and then an output and display. They don't actually recite that
`purported improvement.
`The claims also don't require movement of a group of objects at all.
`They recite one or more, which would be met by a single object moving, so
`they don't actually capture the scope.
`Patent Owner proposes a different purported improvement from the
`Spec. And so, we wanted to address that as well even though we disagree,
`which is they say the inventive concept is the user interface capable of
`processing swipe operations for controlling pluralities of units.
`So even assuming their articulation works, there are at least three
`reasons that the claims don't capture them. And I'll touch on each of these in
`a bit more detail in the following slides.
`But essentially, it's that processing swipe operations is not an
`improvement over the prior art they've got in their own background. The
`claims don't require swipe operations for moving pluralities of units at all.
`Just one or more is required.
`And the claims merely make the user faster and more efficient, not the
`computer which is not a technical solution under the 2019 Trading
`Technologies case. And as a result, the increments are not in fact captured in
`the claims.
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`So, just briefly, a bit more on each of those. The ’799 Patent itself
`describes a prior art system that has a swipe operation to move a group of
`video game objects.
`So, this can't be new. They've got it in their own background. And
`Patent Owner's expert in fact admitted that the swipe for moving objects
`wasn't new. That can't be the improvement.
`Second, as I mentioned before, the claims don't require that any
`plurality or any simultaneous movement of objects occur. The claim says
`one or more of the associated objects has moved. So that also can't be the
`improvement. And Patent Owner's expert in fact admitted this during
`deposition. We said, look at Claim 1 again for a moment. Is there anything
`in Claim 1 that requires the movement of more than one? And he said, no.
`And then the third one, which is that the claims merely make the user
`faster, they don't actually improve the computer in any way. Patent Owner
`can't argue that the claims recite a technical solution when all the limitations
`do is allow the game player to perform tasks more quickly or easily.
`This is exactly the problem that was addressed in the Trading
`Technologies case of 2019. And from that case this quote is that the aspects
`made the user faster and more efficient, not the computer. This is not a
`technical solution to a technical problem.
`The next slide is just a conclusion of those. And then the third aspect
`here is that the claim limitations don't in fact, I'm sorry, the claim limitations
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`themselves, so either individually or as a combination are in fact well
`understood, routine and conventional.
`Berkheimer also said that there is not a genuine issue of fact in all Step
`2 determinations. Patent Owner seemed to misrepresent this aspect of
`Berkheimer as holding that this step always presents a question of fact and
`that extrinsic evidence would be necessary to show that the elements are well
`understood, routine and conventional.
`But here especially, so the example I gave where they've actually
`shown the prior art device in the background itself, there's no question of fact
`there because it's in the Specification.
`And that's very similar to Claims 1 through 3 in Berkheimer which
`were found patent ineligible on summary judgment because there was not in
`fact a question of fact. And it's because the claims don't capture that
`purported improvement.
`Patent Owner argues that the Board didn't adequately address a few of
`the steps here. Specifically, the associating, the determining and the moving
`claim limitations and that even if the claims recited conventional components
`that there are unconventional functions.
`However, as I'm sure Your Honors will see from the papers, Petitioner
`specifically addressed every single one of the elements, additional to the
`abstract idea individually and in combination including all the claim functions
`along with citations to case law showing those functions as conventional.
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`So, that argument is just wrong. And I actually copied this directly
`from the petition which shows “storing” being described and case law
`supporting that that's conventional, “accepting” and that being conventional,
`and also “displaying.”
`So all of these were actually specifically called out by Petitioner in the
`petition itself. So, and the argument that those haven't been addressed or that
`their functions haven't been addressed just doesn't hold up because they were
`specifically addressed in the petition itself.
`And although it isn't needed for Step 2B, there is further evidence here
`as well. So, even the Board had noted on institution that the Petitioner didn't
`just rely on the ’936 reference, which is the prior art in the Specification, to
`demonstrate that the limitation recited well understood, routine and
`conventional activities.
`Even the Board had acknowledged that wasn't all that was there. And
`then the other, there is another bit of evidence by way of Exhibit 1006 which
`I've called here the Kamikado reference which shows moving a group of
`characters using a swipe type motion of a stylus on a touch screen.
`And this reference, which actually was provided by Patent Owner
`itself, it's in the prosecution history of the case, this particular reference further
`shows that these claim limitations were well known in the art. And if you
`dig down to what this reference is it's actually a Nintendo DS, like the old
`school Nintendo flip type of device.
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`And Petitioner provided evidence that it's one of the bestselling game
`consoles of all time. And Patent Owner's agree that, you know, on the level
`of sales that it achieved it would probably be routine and conventional that
`that was there.
`Touching briefly on the dependent claims, they're directed to the same
`abstract concept. So there really isn't anything here that changes that
`determination or has been added to take these claims out of the abstract idea.
`I just included some quotes here from the institution decision where
`the Board believed that these also were demonstrated to recite well
`understood, routine and conventional activities. I'm going to move a little
`quicker since I'm running out of my allotted time.
`And so, what we talked about with respect to the dependent claims is
`that none of them add features that capture the purported improvement. So,
`they haven't improved on that aspect.
`And the routine nature can be resolved as a matter of law under
`Berkheimer for the same exact reasons as the independent claims. And then,
`just to address two of the alleged improvements of the dependent claims that
`Patent Owner's expert called out, which is the ability to move objects
`simultaneously and the ability to use more than one hand for gestures.
`Except again, the claims don't require either of these. There is no
`requirement to move more than one object. And there's no requirement to
`use more than one hand.
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`The closest they get is in Claim 3, dependent Claim 3. There's a
`specifying operation which is a touch operation, apparently, along with a
`direction operation which seems to be a swipe operation.
`And the Specification certainly shows an example of using two hands
`to do so. There's no actual requirement that two hands be used. You can
`touch with one finger and swipe with a different or something like that.
`So, even the examples that the Patent Owner expert was able to come
`up with in some of the dependent claims as alleged improvements actually
`aren't captured by the claims.
`And I just want to touch briefly on our 112 arguments. As you know,
`in our reply we noted that Patent Owner seems to sort of want to have it both
`ways here.
`So, this is the full sum from Patent Owner's response of the 112(B)
`treatment. And what we noted is they seem to be trying to incorporate by
`reference what they had argued in the Patent Owner's preliminary response.
`The highlighted portion there of what they cited to is nine pages of
`Patent Owner's preliminary response and 13 pages of expert declaration. So
`we said, listen you haven't, you've incorporated these by reference.
`And they came back and said no, we haven't actually. It doesn't say
`those words. But I think the point is they can't have it both ways. Either
`they have not repeated it here and thus they have waived those arguments from
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`the preliminary response or they have incorporated by reference which is
`improper and trying to overcome the word count limit.
`So, I think it's got to be one or the other. They can't have it both ways.
`With respect to the 112(B) itself -- This is the waiver. What we
`focused on really here is this term “direction” and what it can mean, because
`there is ambiguity between the direction of movement which is across the
`screen or the direction parameter which is sort of the facing, is the chess piece
`this way or whatever character facing this direction.
`And I think that the problem is there is inconsistent and overlapping
`use of this term throughout the claims. And that's what makes it ambiguous,
`vague, or uncertain in the claims, such that the claims are indefinite.
`There is a little picture there showing on the top, I'm on Slide 33, the
`top moving forward so sort of a slide action versus the direction turning from
`facing left in 9A to facing forward, I guess
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