Trials@uspto.gov
`571-272-7822
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`Paper No. 22
`Mailed: June 2, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and CARL M.
`DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
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`571-272-7822
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`Paper No. 22
`Mailed: June 2, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`PGR2019-00018
`Patent 9,891,799 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and CARL M.
`DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
`
`
`
`
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`PGR2019-00018
`Patent 9,891,799 B2
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`I.
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant
`review of claims 1–20 of U.S. Patent No. 9,891,799 B2 (“the ’799 patent”)
`(Ex. 1001) pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 7.
`On June 3, 2019, we issued a Decision pursuant to 35 U.S.C. § 324
`instituting a post-grant review for claims 1–20 of the ’799 patent with
`respect to all grounds set forth in the Petition. Paper 8, 26 (“Dec.”). After
`institution, Patent Owner filed a Patent Owner Response (Paper 12, “PO
`Resp.”). Thereafter, Petitioner filed a Reply to Patent Owner’s Response
`(Paper 15, “Pet. Reply”). Patent Owner then filed a Sur-Reply (Paper 16,
`“PO Sur-Reply”). Patent Owner and Petitioner presented oral arguments on
`March 3, 2020.
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine
`that Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–20 of the ’799 patent are patent ineligible.
`A. Related Matters
`Petitioner indicates that there are no related matters involving the ’799
`patent. Pet. 1. Patent Owner does not contest this assertion.
`B. The ’799 Patent
`The ’799 patent “provides a game program with enhanced strategic
`gameplay in which a plurality of characters are operated with simple
`operation, a computer control method, and an information processing
`apparatus.” Ex. 1001, 1:38–42. The ’799 patent describes “a game program
`that processes progress of a game for moving a plurality of objects arranged
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`on a game field.” Id. at 1:44–46. The game program includes functions
`such as “an accepting function that accepts operation information regarding
`a touch operation performed by a user,” “an associating function that
`associates the plurality of objects as a group,” and “a moving function that
`may move . . . the plurality of associated objects as a group.” Id. at 1:47–54.
`The moving function moves the associated objects in a direction indicated
`by a direction operation, and this movement is displayed by a display
`processing function. Id. at 52–56. The game program allows a user to
`perform “a specifying operation that specifies a first object that is any of the
`plurality of objects.” Id. at 62–63. Upon such specification, “the moving
`function may move the remaining objects, excluding the first object from the
`plurality of objects, as a group in the direction indicated by the direction
`operation.” Id. at 64–67.
`This game program is performed with information processing
`apparatus 100 shown in Figure 1, reproduced below:
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`Figure 1 is “a functional block diagram of . . . an information processing
`apparatus.” Ex. 1001, 2:62–64. Information processing apparatus 100
`includes “an input unit 110, a storage unit 120, a control unit 130, and a
`display unit 140.” Id. at 6:66–67. Input unit 110 is a touch pad. Id. at 7:5–
`6. Storage unit 120 “retain[s] map information 200” and “stores parameters
`of each of user units and each of enemy units used in the game.” Id. at 7:40,
`53–54. Control unit 130 is a processor that executes progress of the game.
`Id. at 7:59–60. Control unit 130 includes accepting unit 131, moving
`processor 132, battle processor 133, associating unit 134, and display
`processor 135. Id. at 8:3–5.
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`C. Illustrative Claim
`The ’799 patent includes twenty claims, of which claims 1, 8, and 15
`
`are independent. All three independent claims recite essentially identical
`limitations and vary only as to type, where claim 1 is directed to a
`“computer-implemented method,” claim 8 to a “computer program product,”
`and claim 15 to a “system.” Ex. 1001, 24:30, 25:36, 26:41. Common across
`the independent claims are eight functional steps as set forth in
`representative claim 1 reproduced below:
`A computer-implemented method for operating a
`1.
`computer game, the method comprising:
`storing, in a storage module, a plurality of virtual objects
`and the arrangements of those virtual objects on a game field;
`accepting, via an input face configured to detect a touch
`operation, operation information regarding a touch operation
`performed by a user,
`associating, using a processor, a plurality of virtual
`objects as a group;
`determining, using a processor, whether the operation
`information comprises a direction operation;
`upon determining that the operation information
`comprises a direction operation, moving, using a moving
`processor, one or more of the plurality of associated objects as a
`group in the direction indicated by the direction operation;
`storing, in a storage module, the new arrangements on the
`game field of the one or more of the plurality of associated
`objects moved with the moving processor;
`displaying, on a computer screen, the game field and the
`plurality of virtual objects arranged on the game field; and
`displaying, on a computer screen, the new arrangement
`on the game field of the one or more of the plurality of
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`associated objects moved with the moving processor.
`Ex. 1001, 24:30–55.
`
`The Alleged Grounds of Unpatentability
`C.
`Petitioner asserts that claims 1–20 of the ’799 patent are unpatentable
`as being directed to patent-ineligible subject matter under 35 U.S.C. § 101
`(Pet. 29–51) and as being indefinite under 35 U.S.C. § 112(b) (Pet. 51–60).
`Petitioner asserts further that claims 2–6, 9–13, and 16–19 are unpatentable
`for failing to further limit the subject matter of the claims on which they
`depend under 35 U.S.C. § 112(d). Id. at 60–63.
`II. ANALYSIS
`A. Claim Construction
`Petitioner asserts that the claim terms “parameter” and “controlling
`. . . an effect of [an] attack” should be construed. Pet. 21–23. Patent Owner
`does not propose a claim construction for any claim terms. See generally
`PO Resp. As our Decision does not turn on the express construction of any
`claim term, we do not construe expressly the terms addressed by Petitioner.
`B. Claims 1–20 as Directed to Patent-Ineligible Subject Matter Under
`35 U.S.C. § 101
`Petitioner contends that claims 1–20 do not recite patent-eligible
`subject matter under 35 U.S.C. § 101. Pet. 29–51; Pet. Reply 4–22. Patent
`Owner disagrees. PO Resp. 1–57; PO Sur-Reply 1–4.
`1. Relevant Law
`An invention is patent eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
`implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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`ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
`216 (2014).
`In determining whether a claim falls within an excluded category, we
`are guided by the Supreme Court’s two-step framework, described in Mayo
`and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
`we first determine what concept the claim is “directed to.” See Alice, 573
`U.S. at 219 (“On their face, the claims before us are drawn to the concept of
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
`in petitioners’ application explain the basic concept of hedging, or protecting
`against risk.”).
`Concepts determined to be abstract ideas, and thus patent ineligible,
`include certain methods of organizing human activity, such as fundamental
`economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
`mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
`determined to be patent eligible include physical and chemical processes,
`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
`(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
`rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
`(15 How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S.
`at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
`In Diehr, the claim at issue recited a mathematical formula, but the
`Supreme Court held that “a claim drawn to subject matter otherwise
`statutory does not become nonstatutory simply because it uses a
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`mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
`view respondents’ claims as nothing more than a process for molding rubber
`products and not as an attempt to patent a mathematical formula.”). Having
`said that, the Supreme Court also indicated that a claim “seeking patent
`protection for that formula in the abstract . . . is not accorded the protection
`of our patent laws, . . . and this principle cannot be circumvented by
`attempting to limit the use of the formula to a particular technological
`environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
`commonplace that an application of a law of nature or mathematical formula
`to a known structure or process may well be deserving of patent
`protection.”).
`If the claim is “directed to” an abstract idea, we turn to the second
`step of the Alice and Mayo framework, where “we must examine the
`elements of the claim to determine whether it contains an ‘inventive
`concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
`eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
`claim that recites an abstract idea must include ‘additional features’ to
`ensure ‘that the [claim] is more than a drafting effort designed to
`monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
`“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
`that abstract idea into a patent-eligible invention.” Id.
`After the filing of the Petition, but before the filing of Patent Owner’s
`Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply, the U.S. Patent
`and Trademark Office published revised guidance on the application of
`§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
`Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
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`whether the claim recites: (1) any judicial exceptions, including certain
`groupings of abstract ideas (i.e., mathematical concepts, certain methods of
`organizing human activity such as a fundamental economic practice, or
`mental processes); and (2) additional elements that integrate the judicial
`exception into a practical application (see Manual of Patent Examining
`Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed.
`Reg. at 52–55. Only if a claim (1) recites a judicial exception, and (2) does
`not integrate that exception into a practical application, do we then look to
`whether the claim: (3) adds a specific limitation beyond the judicial
`exception that is not “well-understood, routine, conventional” in the field
`(see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine,
`conventional activities previously known to the industry, specified at a high
`level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at
`56.
`
`2. Application of the Guidance
`As discussed above in Part II.B.1, the Guidance issued after the
`filing of the Petition, but before the filing of Patent Owner’s
`Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply. In its
`Response and Sur-Reply, Patent Owner addresses the Guidance. See,
`e.g., PO Resp. 13–30; see also PO Sur-Reply 2. In its Reply,
`Petitioner does not explicitly address the Guidance. See, generally,
`Pet. Reply. However, in responding to Patent Owner arguments
`which are couched in terms of the Guidance, Petitioner necessarily
`addresses the Guidance. Both Patent Owner and Petitioner addressed
`the Guidance during oral arguments. See generally Paper 21 (“Tr.”).
`Accordingly, both Parties had ample opportunity to address the
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`Guidance, and we see no prejudice to either Party in our application of
`the Guidance.
`3. Representative Claims 1 and 15
`In our Institution Decision, we treated claim 1 as representative of the
`three independent claims at issue in this proceeding. Dec. 15. For the
`convenience of the reader, we reproduce claim 1 again below:
`1. A computer-implemented method for operating a computer
`game, the method comprising:
`storing, in a storage module, a plurality of virtual objects
`and the arrangements of those virtual objects on a game field;
`accepting, via an input face configured to detect a touch
`operation, operation information regarding a touch operation
`performed by a user,
`associating, using a processor, a plurality of virtual
`objects as a group;
`determining, using a processor, whether the operation
`information comprises a direction operation;
`upon determining that the operation information
`comprises a direction operation, moving, using a moving
`processor, one or more of the plurality of associated objects as a
`group in the direction indicated by the direction operation;
`storing, in a storage module, the new arrangements on the
`game field of the one or more of the plurality of associated
`objects moved with the moving processor;
`displaying, on a computer screen, the game field and the
`plurality of virtual objects arranged on the game field; and
`displaying, on a computer screen, the new arrangement
`on the game field of the one or more of the plurality of
`associated objects moved with the moving processor.
`Ex. 1001, 24:30–55.
`
`As Patent Owner specifically addresses claim 15 in many of its
`arguments, we reproduce it as well:
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`15. A system comprising at least one processor, at least
`
`one memory module including computer program code, and at
`least one terminal apparatus of a player user having a graphical
`user interface, the at least one memory module and the
`computer program code configured to, with the processor, cause
`the system to at least:
`store, in a storage module, a plurality of virtual objects
`and the arrangements of those virtual objects on a game field;
`associate, using a processor, a plurality of virtual objects
`as a group;
`determine, using a processor, whether the operation
`information comprises a direction operation;
`upon determining that the operation information
`comprises a direction operation, move, using a moving
`processor, one or more of the plurality of associated objects as a
`group in the direction indicated by the direction operation;
`store, in a storage module, the new arrangements on the
`fame field of the one or more of the plurality of associated
`objects moved with the moving processor;
`display, on a computer screen, the game field and the
`plurality of virtual objects arrange on the game field; and
`display, on the computer screen, the new arrangement on
`the game field of the one or more of the plurality of associated
`objects moved with the moving processor.
`Ex. 1001, 26:41–27:3.
`4. Petitioner’s Challenge
`Petitioner asserts that the claims of the ’799 patent are directed to “the
`abstract idea of associating game objects and moving one or more of the
`objects.” Pet. 29. In other words, Petitioner asserts that the claims are
`directed to rules that govern play of a game, which, when viewed through
`the lens of the Guidance, is akin to managing personal behavior or
`relationships or interactions between people (including following rules or
`instructions), which are one of certain methods of organizing human activity
`that our reviewing courts have found patent-ineligible as abstract ideas. See
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`In re Smith, 815 F.3d. 816, 818 (Fed. Cir. 2016) (concluding that
`“[a]pplicants’ claims, directed to rules for conducting a wagering game” are
`patent-ineligible). In support of this assertion, Petitioner argues that “[t]he
`patent does not recite an improvement in computer functionality or a new
`technology. Instead, it merely recites a series of generalized steps performed
`on conventional and generic computer technology to arrive the desired
`result.” Pet. 29. According to Petitioner, “[t]he Supreme Court and Federal
`Circuit have made clear that such generalized steps directed toward an
`abstract concept, without disclosing any improvement to computer
`technology are impermissibly abstract.” Pet. 29–30 (citing In re TLI
`Comm’cns Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); Two-Way Media
`Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
`2017), cert. denied, 139 S. Ct. 378; Affinity Labs of Tex., LLC v.
`Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016), cert. denied, 137 S.
`Ct. 1596 (2017)).
`In addition, Petitioner contends that “the challenged claims do not
`recite any inventive concept necessary to transform the abstract idea into
`patent-eligible subject matter. Instead, they recite generic computer
`components that long predated the patent and functional steps inherent to the
`abstract idea itself.” Pet. 30. According to Petitioner, “[s]uch claims are
`quintessentially abstract.” Id. (citing Two-Way Media, 874 F.3d at 1339;
`Affinity Labs, 838 F.3d at 1263; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
`709, 716 (Fed. Cir. 2014).
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`5. Patent Owner’s Arguments, Petitioner’s Response, and Our
`Consideration of Issues Raised by Patent Owner
`a. Whether the Claims Recite an Abstract Idea
`As discussed in Section II.B.4 above, Petitioner asserts that the claims
`recite “the abstract idea of associating game objects and moving one or more
`of the objects.” Pet. 29. Responding to this assertion, Patent Owner
`contends that the claims at issue are distinguishable from those at issue in In
`re Smith. During oral argument, we questioned Patent Owner regarding this
`issue. Tr. 26. In response, Patent Owner explained, “what we’ve argued in
`our briefing is not that the claims are directed to a class of games instead of
`one game. What we’re saying is because this claim is applicable to a class
`of games and is presented as an interface it is claiming an interface.” Id.
`More specifically, according to Patent Owner, “what we’re arguing is, taking
`a couple steps back, if it’s a judicial exception it has to relate to a human
`activity. A human activity is playing a game. Humans don’t play classes of
`games at one time. They’re not using, they’re not a processor. They’re not
`associating inputs.” Id. at 27. Explaining further, Patent Owner stated that
`“what we’re saying is because this claim is not directed to a particular game
`it’s directed to a gaming environment, a gaming interface. And more
`importantly, the meat of the claim is about that association of syntax and
`semantics and enabling gestures that weren’t possible before.” Id. at 28. In
`support of this argument, Patent Owner asserted that the challenged claims
`are similar to the claims at issue in McRO: “[t]he McRO decision was about
`lip synching. That’s managing a game. There’s avatars on your screen.
`Their lips are being synched up. It’s managing a game in the same respect
`that’s being argued here in that it’s a gaming environment.” Id.
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`We also questioned Petitioner about this matter during oral argument.
`Petitioner asserted it did not believe that it made any difference (regarding
`patent-eligibility) if the rules in question can be used in multiple games. Tr.
`9. According to Petitioner none of Planet Bingo,1 In re Smith, or [In re]
`Guldenaar2 have made their holdings “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.” Id. Petitioner
`made the further point “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.” Id. Responding to Patent Owner’s argument
`regarding McRO, Petitioner reiterated its position that the claims at issue are
`similar to those in Planet Bingo. Tr. 9–10.
`We agree with Petitioner that “the holding in In re Smith does not
`require that the claims be directed to rules for playing a ‘particular’ game.”
`Pet. Reply 5. Rather, the Federal Circuit held that “claims, describing a set
`of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d at
`819. Notably, the Federal Circuit did not require that such rules only be
`applicable to a particular game. Id. Further, we agree that the claims at
`issue are similar to those in Planet Bingo as explained by Petitioner in its
`Reply. See Pet. Reply 6–8; see also Ex. 1009, 11.
`We disagree with Patent Owner that the claims at issue are similar to
`those found to be patent-eligible in McRO. Although Patent Owner is
`correct that “[i]n McR[O], the Federal Circuit held that the method of
`automating lip synchronization and facial expressions depiction in a
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`1 Planet Bingo, LLC v. VKGS LLC, 576 Fed. App’x 1005 (Fed. Cir. 2014).
`2 In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).
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`computer character is not directed to an abstract idea, because it focuses on a
`specific improvement in a computer process (i.e., computer animation),” for
`the reasons given below, we do not find that the challenged claims are
`directed to a similar improvement in a computer process. PO Sur-Reply 2.
`As discussed in Section I.B above, the ’799 patent describes “a game
`program that processes progress of a game for moving a plurality of objects
`arranged on a game field.” Ex. 1001, 1:44–46. The challenged claims recite
`this game program by setting forth limitations that allow a user to direct
`movement of the plurality of objects on the game field as discussed in
`greater detail above. The challenged claims do not proscribe features that
`improve the performance of the “input face.” Thus, as we explain in more
`detail below, to the extent that the limitations in the challenged claims recite
`an improvement, it is an improvement in the play of the game, not an
`improvement in a computer process. See, e.g. Ex. 1001, 1:38–39.
`For these reasons, we agree with Petitioner that the claims recite
`following rules or instructions, a certain method of organizing human
`activity, which Petitioner phrases as “the abstract idea of associating game
`objects and moving one or more of the objects.” Pet. 29.
`b. Whether the Challenged Claims Are Directed to an
`Improved Touch Screen Interface
`Patent Owner contends that “[t]he ’799 patent claims an improved
`touch-screen interface—not a game” and that a touch-screen interface is
`patent eligible subject matter. PO Resp. 1. Patent Owner asserts that the
`claimed “touch-screen interface facilitates complex and intricate movements
`of pluralities of on-screen objects via predetermined touch and swipe
`gestures. Such interfaces and associated methodologies are plainly
`patentable.” Id. (citing Immersion Corp. v. Fitbit, Inc., 313 F. Supp. 3d
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`1005, 1011 (N.D. Cal. 2018); Fitbit Inc. v. AliphCom, No. 16-CV-00118-
`BLF, 2017 WL 819235, at *20 (N.D. Cal. Mar. 2, 2017)). Patent Owner
`submits further “[t]hat the claimed interface . . . is particularly applicable in
`a mobile gaming context is of no consequence to a proper analysis under 35
`U.S.C. § 101. Indeed, the specification . . . states that the claimed invention
`cannot be limited to a particular video game, but has applicability to ‘any
`game.’” Id. (citing Ex. 1001, 17:19–23).
`In an attempt to distinguish over the claims in Smith, which were held
`to be directed to rules of a particular game, Patent Owner contends that
`“[t]he ’799 patent claims are not directed to any particular game (or game
`rules).” PO Resp. 2 (citing Dec. 15–16). In support, Patent Owner directs
`our attention to the testimony of its expert, Dr. Shamos, who “testifies [that]
`‘associating game objects and moving one or more of the objects’ is an
`interface control function, and not a game anyone plays.” Id. (citing Ex.
`2012 ¶¶ 7–20).
`In addition, Patent Owner contends that “Petitioner’s argument that
`the ’799 patent claims are directed to the alleged abstract idea of ‘associating
`game objects and moving one or more of the objects,’” “is overly broad and
`omits core limitations of the claimed invention, including the very gesture-
`driven user interface at the heart of the invention; and the Board did not
`address Dr. Shamos’ testimony to the contrary.” PO Resp. 3 (citing Dec. 15;
`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
`Cir. 2016); Diehr, 450 U.S. at 188; Fitbit, 2017 WL 819235, at *20).
`In Reply, Petitioner contends that “the holding in In re Smith does not
`require that the claims be directed to rules for playing a ‘particular’ game, as
`PO alleges.” Pet. Reply 5. Further, Petitioner notes that in its Response,
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`
`Patent Owner “asserted that the claims were directed to ‘a game with an
`improved touch screen interface.’” Id. (quoting PO Resp. 4). Petitioner
`contends further that “[i]n any event, it is actually [Patent Owner’s] ‘directed
`to’ articulation that ignores the claim language, since representative claim 1
`does not recite any ‘gesture-driven control interface,’ ‘fails to recite [] a
`touch screen’ (Decision at 18), and in fact does not even recite the term
`‘interface’ at all.” Id. at 5–6. Petitioner also notes that “[t]he term
`‘interface’ only appears once in the claims, in claim 15’s preamble, as part
`of the graphical user interface.” Id. at 6 (citing Ex. 1005, 71:7-16; 138:4-
`13). In contrast to Patent Owner’s characterization of the claims, Petitioner
`asserts that each limitation of claim 1 “pertains to ‘associating game objects
`and moving one or more of the objects,’ which pertains to a way of
`managing and playing a game.” Id.
`Patent Owner replies by reiterating its arguments that the claims are
`directed to a gesture driven control interface and that the claimed method is
`applicable to any game. PO Sur-Reply 1. Patent Owner also asserts that in
`its Reply Petitioner “attempts to rewrite the Board’s abstract idea to extend
`to technology used during computer gaming.” Id. According to Patent
`Owner, Petitioner takes the position that “the Board’s abstract idea
`encompasses any technology used during computer gameplay, such as new
`control interfaces of mobile devices.” Id. (citing Pet. Reply 4). Patent
`Owner asserts that “this argument conflates two distinct concepts: ‘rules
`governing the play of a computer game’ describe how a particular game,
`e.g., Blackjack, is played, in real life or in a computerized version of
`gameplay; and separately, ‘operations that take place during play of a
`computer game.’” Id. at 1–2 (citing Ex. 1001, 1:38–42, 2:52–58). Patent
`
`17
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`Owner asserts further that “the latter is directed to specific technological
`improvements that do not fall under any recognized judicial exceptions in
`case law or the PTAB’s revised 101 guidance.” Id. at 2 (citing PO Resp.
`14–16).
`Central to Patent Owner arguments is its contention that the
`challenged claims are directed to an improved touch screen interface (also
`referred to as a gesture driven control interface). However, the challenged
`claims do not support Patent Owner’s contention. Claim 1 is directed to “[a]
`computer-implemented method for operating a computer game.”3 Ex. 1001
`24:30–31. Claim 1 recites a series of steps for manipulating a plurality of
`virtual objects on a game field. Id. at 24:32–34, 42–55. In order to
`manipulate these objects in accordance with the input provided by a user
`(i.e. player) of the computer game, the method includes steps for detecting a
`touch operation performed by a user and determining whether that touch
`operation comprises a direction operation. Id. at 24:38–42. These steps,
`however, are incidental to the claimed method, not the focus of the claim.
`Thus, claim 1 is not directed to an improved touch screen interface.
`Claims 8 and 15 are not directed to an improved touch screen
`interface for similar reasons. Claim 8 recites “[a] computer program product
`embodied on a non-transitory computer readable medium, comprises code
`executable by a computer arranged to operation a computer game, to cause
`
`
`3 We note that Patent Owner’s expert does not support Patent Owner’s
`contention that the challenged claims are directed to an improved touch
`screen interface. Ex. 2001 ¶ 37. According to Dr. Shamos, “[t]he claims are
`directed to computer gaming methods, programs and systems that interpret
`touch and swipe operations on a user interface to move a plurality of game
`objects simultaneously.” Id. (citing Ex. 1001, 24:30–28:21).
`
`18
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`the computer to carry out . . . steps.” Ex. 1001, 25:36–40. The steps set
`forth in claim 8 are essentially the same as the steps set forth in claim 1.
`They also recite an “input face,” but only as a means for executing the
`claimed steps. The focus of claim 8 is not the “input face.” Claim 15
`recites:
`
`A system comprising at least one processor, at least one
`memory module including computer program code, and at least
`one terminal apparatus of a player using having a graphical
`user interface, the at least one memory module and the
`computer program code configured to, with the processor, cause
`the system to [perform steps]:
`Id. at 26:41–46. Although claim 15, unlike claims 1 and 8, recites a
`graphical user interface in its preamble, claim 15 is not directed to an
`improved touch screen interface either. Like claims 1 and 8, claim 15 is
`directed to steps for implementing a computer game. See id. at 26:41–27–3.
`Further, Patent Owner does not identify, nor do we discern, where any of the
`dependent claims recite limitations directed to an improved touch-screen
`interface, such that any dependent claim is directed to such a device.
` For these reasons, we determine that the challenged claims are not
`directed to an improved touch screen interface or a gesture driven interface.
`c. Whether a Gesture-Driven Control Interface Is a Game
`Patent Owner contends that “[t]he ’799 patent claims a particular
`technical solution to problems arising in the context of touch-screen
`interfaces for mobile gaming.” PO Resp. 3. As such, Patent Owner asserts
`that “there existed a technical need for a control mechanism and operation
`methodology that was intuitive and easy to learn but was also suitable for a
`variety of mobile games that would maintain user interest.” Id. at 4–5
`(citing Ex. 2001 ¶ 32; Ex. 2003 at 7; Ex. 2004 at 56–57). Thus, according
`
`19
`
`
`
`PGR2019-00018
`Patent 9,891,799 B2
`
`to Patent Owner, “the ’799 patent is directed to a user interface methodology
`applicable for use in a universe of games involving strategy, where complex
`and strategic movements of pluralities of characters on a virtual game field
`using intuitive swipe and touch operations would improve mobile gameplay
`experience.” Id. at 5 (citing Ex. 1001, 4:3–24; 15:50–67; Ex. 2001 ¶¶ 33–
`35; Ex. 2012 ¶¶ 7-8).
`In support of this contention, Patent Owner asserts that “[t]he ’799
`paten
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