Trials@uspto.gov
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` Paper 13
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` Date: September 3, 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.
`____________
`
`PGR2020-00034
`Patent 10,300,385 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
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`571-272-7822
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` Paper 13
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` Date: September 3, 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.
`____________
`
`PGR2020-00034
`Patent 10,300,385 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324
`
`
`
`
`
`
`
`PGR2020-00034
`Patent 10,300,385 B2
`
`
`I.
`
`INTRODUCTION
`A. Background
`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
`claims 1–18 (“challenged claims”) of U.S. Patent No. 10,300,385 B2
`(Ex. 1001, “the ’385 patent”). Paper 1 (“Pet.”). GREE, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With our
`authorization, Petitioner filed a Preliminary Reply (Paper 8, “Prelim.
`Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 9, “Prelim.
`Sur-reply”) to address, inter alia, 35 U.S.C. § 324(a).
`Having considered the arguments and evidence of record, and for the
`reasons explained below, we exercise our discretion under 35 U.S.C.
`§ 324(a) and deny institution of post-grant review.
`
`B. Related Proceeding
`The parties identify one matter related to the ’385 patent: GREE, Inc.
`v. Supercell OY, No. 2:19-cv-00200 (E.D. Tex.) (the “parallel proceeding”).
`Pet. 1; Paper 4, 2.
`
`C. The ’385 Patent
`The ’385 patent is titled “Computer Control Method, Control Program
`
`and Computer,” and issued on May 28, 2019, from U.S. Patent Application
`No. 16/112,057. Ex. 1001, codes (21), (45), (54).
`
`The ’385 patent discloses a method for controlling a computer in the
`context of “city building games.” Id. at code (57). In accordance with the
`disclosed method, a template defining positions of game contents may be
`defined and applied to a predetermined area within a game space, such that
`the computer will move game contents within the game space to the
`positions defined by the template. Id.
`
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`PGR2020-00034
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`
`Illustrative Claim
`D.
`Of the challenged claims, claims 1, 9, 17, and 18 are independent.
`Claim 1 is illustrative and is reproduced below.
`1. A user terminal used by a first player, the user terminal
`comprising:
`circuitry configured to:
`transmit first information to a server from the user
`terminal, the first information identifying a second player
`which is different from the first player and being
`designated by the first player, the server receiving second
`information from another user terminal executing a game,
`the second information being associated with the second
`player and the second information indicating types and
`positions of at least one of a set of game contents arranged
`within at least a part of a game space; and
`receive, at the user terminal, third information from the
`server based on the first information, the third information
`being associated with the second player, the third
`information being related to the second information, and
`the third information being used for reproducing the types
`and the positions of the at least one of the set of game
`contents arranged within the at least a part of the game
`space in the user terminal.
`Ex. 1001, 26:31–52.
`
`E. Evidence
`Petitioner relies upon the following evidence:
`Cho et al., U.S. Patent Publication No. 2007/0105626
`A1, filed Aug. 21, 2006, published May 10, 2007 (Ex. 1009,
`“Cho”);
`Kim et al., U.S. Patent No. 9,079,105 B2, filed May 17,
`2013, issued July 14, 2015 (Ex. 1011, “Kim”); and
`Manual for Gratuitous Space Battles, Version 1.1
`(Ex. 1010, “GSB”).
`
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`Pet. 9–10. Petitioner also relies upon the Declaration of Mark L. Claypool
`Ph.D. Ex. 1005.
`
`F. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–18 of the ’385
`patent based on the following grounds. Pet. 9–10.
`References/Basis
`Claims Challenged
`35 U.S.C. §
`Unpatentable subject matter
`1–18
`101
`Cho, GSB
`1–6, 8–14, 16–18
`103
`Cho, GSB, Kim
`7, 15
`103
`G. Eligibility for Post-Grant Review
`The post-grant review (“PGR”) provisions of the Leahy-Smith
`America Invents Act (“AIA”)1 apply only to patents subject to the first
`inventor to file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
`first inventor to file provisions apply to any application for patent, and to
`any patent issuing thereon, that contains or contained at any time a claim to a
`claimed invention that has an effective filing date on or after March 16,
`2013. AIA § 3(n)(1). Furthermore, “[a] petition for a post-grant review may
`only be filed not later than the date that is 9 months after the date of the
`grant of the patent or of the issuance of a reissue patent (as the case may
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the
`same).
`Petitioner asserts that the ’385 patent is available for post-grant
`review. Pet. 2. The ’385 patent was filed on August 24, 2018, and claims
`ultimate priority to a Japanese application filed September 27, 2013, both
`dates falling after March 16, 2013. Ex. 1001, codes (22), (30); see also id. at
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`code (63) (identifying domestic priority claims); Pet. 9. The Petition was
`filed on February 27, 2020, which is within nine months of the May 28,
`2019, issue date of the ’385 patent. Ex. 1001, code (45); Pet. 2. On this
`record, we determine that the ’385 patent is eligible for post-grant review.
`
`II. DISCUSSION
`A. Discretion under 35 U.S.C. § 324(a)
`Patent Owner urges the Board to exercise discretion to deny
`institution of post-grant review under 35 U.S.C. § 324(a) “because
`institution of this proceeding would not be consistent with the objective of
`the AIA to ‘provide an effective and efficient alternative to district court
`litigation,’” in view of the ongoing parallel proceeding between the parties
`in the U.S. District Court for the Eastern District of Texas. Prelim. Resp. 2–
`3 (emphasis omitted); see also id. at 3–27; Prelim. Sur-reply 1–8; see supra
`§ I.B. Petitioner disagrees. Prelim. Reply 1–6.
`1. Legal Standards
`35 U.S.C. § 324(a) states that
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`The portion of the statute reading “[t]he Director may not authorize . . .
`unless” mirrors the language of 35 U.S.C. § 314(a), which concerns inter
`partes review. This language of sections 314(a) and 324(a) provides the
`Director with discretion to deny institution of a petition. See Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision
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`to deny a petition is a matter committed to the Patent Office’s discretion.”);
`Consolidated Trial Practice Guide November 2019 (“TPG”)2 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.” TPG at 58.
`The Board’s precedential NHK Spring decision explains that the Board may
`consider the advanced state of a related district court proceeding, among
`other considerations, as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).
`Additionally, the Board’s precedential Fintiv Order identifies several
`factors to be considered when analyzing issues related to the Director’s
`discretion to deny institution, with the goal of balancing efficiency, fairness,
`and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv Order”). These
`factors include: 1) whether a stay exists or is likely to be granted if a
`proceeding is instituted; 2) proximity of the court’s trial date to the Board’s
`projected statutory deadline; 3) investment in the parallel proceeding by the
`court and parties; 4) overlap between issues raised in the petition and in the
`parallel proceeding; 5) whether the petitioner and the defendant in the
`parallel proceeding are the same party; and 6) other circumstances and
`considerations that impact the Board’s exercise of discretion, including the
`merits. Id.
`
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`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`We recognize that NHK Spring and the Fintiv Order apply the
`Director’s discretion pursuant to 35 U.S.C. § 314(a), and do not specifically
`extend their application to 35 U.S.C. § 324(a), which is the relevant statute
`that applies to this PGR proceeding. As noted above, however, the pertinent
`statutory language is the same in both section 314(a) and section 324(a).
`Moreover, the overall policy justifications associated with the exercise of
`discretion—inefficiency, duplication of effort, and the risk of inconsistent
`results—apply to post-grant review proceedings under 35 U.S.C. § 324(a).
`Accordingly, we weigh the factors set forth in the Fintiv Order to the facts
`here. See, e.g., Teva Pharms. USA, Inc. v. Corcept Therapeutics, Inc.,
`PGR2019-00048, Paper 19 at 11 (Nov. 20, 2019) (analyzing NHK Spring
`and instituting trial); Stripe, Inc. v. Boom! Payments, Inc., CBM2020-00002,
`Paper 22 (May 19, 2020) (analyzing the Fintiv Order and instituting trial);
`see also infra Factor 6 (considering Petitioner’s policy arguments).
`We, however, recognize that there are differences between inter
`partes review and post-grant review that, when relevant to specific Fintiv
`factors, must be considered. Those differences include the fact that the
`window for filing a petition for post-grant review is open only for nine
`months from the date of issuance. See 35 U.S.C. § 321(c). Furthermore,
`“[t]he intent of the post-grant review process is to enable early challenges to
`patents, while still protecting the rights of inventors and patent owners
`against new patent challenges unbounded in time and scope.” H.R. Rep.
`No. 112-98, pt. 1, 47–48 (2011).
`
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`2. Factual Background
`The record before us presents the following facts related to the
`parallel proceeding, which are pertinent to discretion under 35 U.S.C.
`§ 324(a).
`“Patent Owner initiated the parallel district court proceeding on
`May 28, 2019, the day the ’385 Patent issued.” Prelim. Resp. 15.
`On November 13, 2019, Petitioner served ineligibility contentions in
`the parallel proceeding. Ex. 2003; Prelim. Resp. 16.
`On December 6, 2019, Petitioner served invalidity contentions in the
`parallel proceeding. Ex. 2004–2007; Prelim. Resp. 16.
`On February 27, 2020, Petitioner filed its Petition in this proceeding.
`Paper 1.
`Throughout February and March 2020, the parties submitted claim
`construction briefing in the parallel proceeding. See Ex. 1014, 1 (briefing
`between February 25, 2020 and March 17, 2020). On April 14, 2020, a
`Markman hearing was conducted. Ex. 1014, 1. On May 14, 2020, the
`Magistrate Judge issued a Claim Construction Memorandum Opinion and
`Order. Ex. 1014.
`On April 23, 2020, Petitioner filed a motion in the parallel proceeding
`to continue all case deadlines for 45 to 60 days, “in view of the extraordinary
`impact caused by the COVID-19 virus on the Parties.” Ex. 2002, 1–2;
`Prelim. Resp. 11. In response, the district court issued an amended docket
`control order, extending the trial date from October 5, 2020, to December 7,
`2020. Ex. 2001; Prelim. Resp. 11.
`Subsequently, on July 29, 2020, the district court issued a third docket
`control order that maintained the trial date of December 7, 2020, but
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`extended by approximately two to three weeks several due dates for expert
`disclosures and discovery, dispositive motions, and briefing on motions to
`strike and Daubert motions. Ex. 2008.
`And, on August 21, 2020, the district court in the parallel proceeding
`issued a fourth docket control order that, again, maintained the trial date of
`December 7, 2020, but extended by approximately two weeks several due
`dates for fact discovery, expert disclosures and discovery, dispositive
`motions, and briefing on motions to strike and Daubert motions. Ex. 2009.
`3. Analysis
`In determining whether to exercise discretion to deny institution under
`35 U.S.C. § 324(a), we consider each of the factors set forth in the
`precedential Fintiv Order.
`Factor 1: whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted
`Patent Owner asserts that Petitioner has not moved to stay the parallel
`
`proceeding. Prelim. Resp. 9. Petitioner does not dispute this assertion, but
`argues that the district court typically denies such motions when they are
`made before the Board has determined whether to institute review. Prelim.
`Reply 3. Petitioner states that “it will seek a stay,” if this proceeding is
`instituted. Id. Patent Owner indicates it would oppose such a motion, and
`argues that the “late stage” of the parallel proceeding weighs against the
`likelihood that Petitioner’s motion, even if filed, would be granted. Prelim.
`Sur-reply 3.
`We recognize that many legitimate reasons may lead a party not to file
`a motion to stay a parallel proceeding prior to the Board’s institution
`decision, including because such a motion may be viewed as premature. Be
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`that as it may, our precedential guidance instructs us to consider whether the
`court has granted a stay of the parallel proceeding, or whether evidence
`exists that a stay may be granted upon institution. Fintiv Order, Paper 11 at
`5–6. As it stands, the record lacks any evidence to suggest that a stay has
`been granted, or may be granted in the future.
`For these reasons, we determine that the facts underlying this factor
`are neutral.
`Factor 2: proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`Patent Owner states that a jury trial is scheduled to begin in the
`parallel proceeding on December 7, 2020, which is approximately nine
`months before a final written decision would issue in this proceeding.
`Prelim. Resp. 10. According to Patent Owner, the Board has consistently
`denied institution with even smaller periods of time between trial and a final
`written decision. Id. at 10–11 (identifying denials with gaps of six to ten
`months). Patent Owner also explains that the district court already moved
`the trial date from October to December, per Petitioner’s request. Id. Patent
`Owner contends there is no reason to believe any further adjustment would
`be necessary. Id. at 11–12.
`Petitioner argues that the trial date in the parallel proceeding should
`receive little weight because trial is scheduled to occur only 18-months after
`the ’385 patent issued. Pet Reply 3. Petitioner also argues that the trial date
`in the parallel proceeding is uncertain due to travel restrictions associated
`with the COVID-19 pandemic, which leaves Petitioner “unable to take
`discovery of [Patent Owner]’s Japan-based witnesses.” Id. Petitioner
`explains that trial was delayed once already to accommodate these discovery
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`difficulties and argues that “it appears unlikely that Japan’s travel ban will
`be lifted in time for a December trial.” Id. at 3–4.
`Patent Owner responds that Petitioner’s argument about continued
`travel restrictions is speculative and “fails to contemplate the numerous
`alternatives to in-person depositions Patent Owner has offered.” Prelim.
`Sur-reply 4–5. Additionally, Patent Owner responds that “even if trial is
`ultimately delayed by a few months, it will still likely conclude well before a
`final written decision would be due in this proceeding.” Id. at 4.
`If we were to institute post-grant review in this proceeding, our Final
`Written Decision would be due in September of 2021—nine months after
`trial in the parallel proceeding. These facts create a cognizable risk of
`inconsistent results across the proceedings. See also infra Factor 4 (overlap
`in statutory grounds, prior art, and arguments). We recognize that some
`uncertainty exists, in theory, due to the COVID-19 pandemic. However, the
`record lacks specific, non-speculative evidence to suggest that further delay
`of the trial date is likely in the parallel proceeding at issue here. Apple Inc.
`v. Fintiv, Inc., IPR2020-00019, Paper 15 (PTAB May 13, 2020)
`(informative) (“We generally take courts’ trial schedules at face value absent
`some strong evidence to the contrary.”).
`These facts are unlike Sand Revolution. Prelim. Reply 3–4 (citing
`Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393,
`Paper 24 (PTAB June 16, 2020) (informative)). In Sand Revolution, the
`parties jointly sought two extensions of the trial date in a related proceeding,
`which the district court granted. Sand Revolution, Paper 24 at 8. The
`district court identified a loose date at which trial might occur: “Nov. 9,
`2020 (or as available),” which the Board found “indicates a continuing
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`degree of recognized uncertainty of the court’s schedule by the court.” Id. at
`9. By contrast, here, the district court’s docket control order indicates a firm
`date for trial, which “cannot be changed without showing good cause. Good
`cause is not shown merely by indicating that the parties agree that the
`deadline should be changed.” Ex. 2008, 1, 4; Ex. 2009, 1, 4.
`Moreover, even if the district court in the parallel proceeding were to
`grant an additional continuance of the trial date, akin to that previously
`requested by Petitioner, trial in the parallel proceeding would still occur
`approximately seven months before our Final Written Decision is due.
`Prelim. Sur-reply 4; Ex. 2002, 2 (“[Petitioner] thus respectfully moves for a
`45- to 60-day continuance of the remaining case deadlines, including the
`pretrial and trial dates.”). In keeping with precedent, a jury trial set to begin
`seven months before our statutory deadline would weigh in favor of denying
`institution. See, e.g., Prelim. Resp. 10–11.
`Petitioner argues that the trial date in the parallel proceeding should
`receive little weight, given its proximity to the patent’s issuance. However,
`we do not agree that we can afford it little weight. 35 U.S.C. § 324(a)
`affords the Director discretion in determining whether to institute trial. The
`Director has shaped some contours of that discretion through the
`precedential guidance offered in NHK Spring and the Fintiv Order and,
`insofar as the overall policy goals for considering a parallel proceeding’s
`trial date apply equally to post-grant reviews, it is accorded the same weight.
`Petitioner does not explain why the timing of the patent’s issuance is
`pertinent. Regardless of when the ’385 patent issued, a jury trial is
`scheduled to begin on December 7, 2020, to determine whether it is
`infringed and is valid. Ex. 2009, 1.
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`For these reasons, where trial in the parallel proceeding is scheduled
`to occur nine months prior to our Final Written Decision, we determine that
`the facts underlying this factor weigh strongly toward denying institution.
`Factor 3: investment in the parallel proceeding by the court and the
`parties
`Patent Owner contends that “the parties and the district court have
`each already invested, and will have invested even more, substantial
`resources in the parallel proceeding—including preparing for and holding a
`jury trial—by the time this Board decides whether to institute.” Prelim.
`Resp. 13. Patent Owner explains that claim construction briefing and
`argument is complete, and the district court has issued its claim construction
`order. Id. Patent Owner also argues that fact and expert discovery, as well
`as the filing of dispositive and Daubert motions, will be complete before our
`institution decision. Id. at 13–14; Ex. 2001.3 Further, Patent Owner alleges
`that Petitioner delayed in filing the Petition and “was undisputedly aware of
`the grounds asserted in the Petition months before the filing of the instant
`Petition.” Prelim. Resp. 15–16.
`Petitioner does not dispute the investments in the parallel proceeding
`identified by Patent Owner but argues that “the parties cannot invest
`additional resources into the parallel litigation in the near term” due to travel
`restrictions associated with witnesses located in Japan. Prelim. Reply 4; see
`supra Factor 2. Petitioner also contends that it does not know which claims
`
`
`3 Subsequent to the parties’ briefing, the district court extended these
`deadlines. Paper 11 (submitting Ex. 2008); Paper 12 (submitting Ex. 2009).
`Accordingly, fact discovery is scheduled to close September 3, 2020, expert
`discovery is scheduled to close October 2, 2020, and dispositive and
`Daubert motions are due on October 5, 2020. Ex. 2009, 3–4.
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`Patent Owner will pursue in the parallel proceeding and that Petitioner has
`not identified any unfair costs associated with the timing of the Petition. Id.
`Additionally, Petitioner argues that the Board itself has invested
`substantial resources related to this matter, by virtue of the completed trial in
`PGR2018-00008, which concerns a patent from which the ’385 patent
`claims priority as a continuation. Prelim. Reply 4; see also Pet. 7–8 (priority
`claim), 21–23 (discussing PGR2018-00008). Petitioner contends that the
`Board “is already familiar with the claimed subject matter, construed terms,
`and reached a decision regarding the unpatentability of claims of similar
`scope to those at issue here.” Prelim. Reply 4 (emphasis omitted).
`Patent Owner disputes Petitioner’s position that further investments
`cannot be made in the parallel proceeding, which Patent Owner contends is
`belied by the docket control order in that proceeding. Prelim. Sur-reply 6.
`Additionally, Patent Owner argues that due to Petitioner’s delay, “Patent
`Owner faces the prospect of—after resolving Petitioner’s invalidity
`challenge at the district court in December—having to re-litigate Petitioner’s
`same invalidity challenge in front of this Board almost a year later.” Id.
`Finally, Patent Owner disagrees with Petitioner’s focus on the Board’s prior
`investments because the Fintiv Order identifies only the investments made in
`the parallel proceeding. Id. at 5.
`First, as instructed by the Fintiv Order, we consider the investments
`made in the parallel proceeding. In the parallel proceeding, claim
`construction is complete. Ex. 1014. Additionally, we understand that fact
`discovery is scheduled to close on September 3, 2020, and expert discovery
`is scheduled to close on October 2, 2020. Ex. 2009, 3–4. These activities
`demonstrate that the district court and the parties have made some
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`investments in the parallel proceeding, which weighs in favor of denying
`institution. However, we do not find those investments to be substantial,
`especially when considered against the activity that remains and appears to
`be ongoing, despite any restrictions against travel to Japan. Contra Prelim.
`Reply 4. For example, activity appears ongoing related to expert discovery
`(scheduled to close on October 2, 2020); filing and responding to dispositive
`motions and motions to strike expert testimony (due October 5, 2020, and
`October 15, 2020, respectively); and various pretrial actions (scheduled to
`occur between October 15, 2020 and November 12, 2020). Ex. 2009, 1–3.
`Moreover, we are cognizant that there are significant resources associated
`with conducting the trial itself, as well as potential post-trial proceedings.
`As such, the investments related to the parallel proceeding to date weigh
`minimally in favor of denying institution.
`Next, we consider Patent Owner’s argument that Petitioner delayed in
`filing its Petition. 35 U.S.C. § 321(c) affords petitioner up to nine months
`after issuance of the patent to file a petition for post-grant review. Petitioner
`filed its Petition on the eve of the nine month window, and complied with 35
`U.S.C. § 321(c). Although Petitioner filed its Petition late within the
`statutory filing window, the evidence before us demonstrates that only
`minimal investments have been made in the parallel proceeding. Thus, we
`are not persuaded that Petitioner’s “delay” is a compelling countervailing
`reason to exercise discretion to deny institution.
`Finally, we address Petitioner’s argument that we should consider the
`Board’s investments related to the ’385 patent. Post-grant review is an
`efficient mechanism by which a petitioner may bring a timely challenge to a
`newly-issued patent that may be related, e.g., as a continuation,
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`continuation-in-part, or divisional, to a patent previously considered by the
`Board.4 See, e.g., H.R. Rep. No. 112-98, pt. 1, 47–48 (2011) (“The intent of
`the post-grant review process is to enable early challenges to patents, while
`still protecting the rights of inventors and patent owners against new patent
`challenges unbounded in time and scope.”). In the context of post-grant
`review, in which a patent must be challenged within nine months of
`issuance, and where a post-grant review petition may be filed substantially
`after the fling of an inter partes review petition challenging a related patent,
`we agree that it may be pertinent to consider any prior investments by the
`Board that are related to the challenged patent.
`This is such a case. In PGR2018-00008, the Board considered
`patentability challenges directed to the parent of the ’385 patent that is now
`challenged here. See, e.g., Pet. 7–8, 21–23. Thus, we agree with Petitioner
`that the Board is familiar with the claimed subject matter, and we determine
`that this fact weighs in favor of institution. We note, however, the claims at
`issue in PGR2018-00008 differ from the challenged claims here. For
`example, the claim term “template” was construed in PGR2018-00008, but
`is not present in the challenged claims. See, e.g., Prelim. Resp. 29;
`Ex. 1001, 26:32–29:8. Likewise, the challenged claims in this proceeding
`are directed to communications between a server and terminals to exchange
`first, second, and third types of information, used to reproduce positions of
`game contents within a game space, whereas the claims considered in the
`prior proceeding focused on a method of controlling a computer to apply a
`template to a game space. See, e.g., Pet. 22. Thus, while similarities
`
`4 By contrast, a petitioner typically files inter partes review petitions against
`related patents at or around the same time.
`16
`
`
`
`
`
`PGR2020-00034
`Patent 10,300,385 B2
`
`certainly exist across the two proceedings, there are notable differences in
`claim scope. Nonetheless, we agree with Petitioner that, at least in the
`context of a post-grant review, the Board’s prior investments in related
`proceedings may be pertinent to our analysis of the Fintiv factors. In this
`case, those investments weigh moderately in favor of institution.
`Considering the foregoing, we find that, despite filing the Petition late
`within the statutory filing window, only minimal investments have been
`made in the parallel proceeding. Moreover, we find that that some
`investments related to this proceeding have been made by the Board.
`Accordingly, we determine that the facts underlying this factor weigh
`moderately in favor of institution.
`Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding
`Patent Owner argues that “[t]here is substantial overlap between the
`claims, grounds, arguments and evidence presented in the Petition” and in
`the parallel proceeding. Prelim. Resp. 17. For example, Patent Owner
`argues that the same prior art asserted in the Petition is also asserted in the
`parallel proceeding (id.) and that substantially the same arguments are made
`regarding both the prior art (id. at 19) and ineligibility under 35 U.S.C. § 101
`(id. at 21). Patent Owner acknowledges that some dependent claims are
`challenged only in the Petition and not in the parallel proceeding, but alleges
`that each depends from an independent claim that is challenged, such that
`key issues will be resolved in the parallel proceeding, including with respect
`to these dependent claims. Id. at 21–23 (claims 4–8, 12–16 not at issue in
`the parallel proceeding).
`
`
`
`17
`
`
`
`PGR2020-00034
`Patent 10,300,385 B2
`
`
`Petitioner does not dispute the identified overlap but argues that
`Patent Owner will likely reduce the number of claims it asserts in the
`parallel litigation, whereas all claims are challenged in the Petition. Prelim.
`Reply 5. Thus, Petitioner contends that “significant issues related to the un-
`asserted claims would be left unaddressed by the litigation, forever
`insulating those claims from PGR.” Id. Petitioner also argues that the
`different patent eligibility standards between district court and this
`proceeding “result[s] in different issues between the two forums.” Id.
`Finally, Petitioner argues that this factor “casts a chilling effect on
`defendants from offering prior art in district court as the public interest
`would be disserved by requiring petitioner-defendants to argue distinct
`invalidity theories and withhold prior art.” Id.
`Under the Fintiv Order, “if the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding, this fact has favored denial” because
`“concerns of inefficiency and the possibility of conflicting decisions [are]
`particularly strong.” Fintiv Order, Paper 11 at 12. In this case, the same
`statutory grounds,5 the same arguments, and the same prior art evidence are
`at issue. We recognize that certain dependent claims that are challenged in
`the Petition are not also challenged in the parallel proceeding, however, the
`district court will resolve validity of enough overlapping claims to resolve
`the key issues that are also present in the Petition. Fintiv Order, Paper 11 at
`
`
`5 Despite Petitioner’s argument that the “patent ineligibility standard[s]” are
`“different,” the fact remains that ineligibility under 35 U.S.C. § 101, as
`asserted in this Petition, overlaps with that issue in the parallel proceeding.
`Contra Prelim. Reply 5.
`
`
`
`18
`
`
`
`PGR2020-00034
`Patent 10,300,385 B2
`
`13 (“[I]f a petition involves the same prior art challenges but challenges
`claims in addition to those that are challenged in the district court, it may
`still be inefficient to proceed because the district court may resolve validity
`of enough overlapping claims to resolve key issues in the petition.”). As to
`Petitioner’s argument that Patent Owner may reduce the number of asserted
`claims at issue in the parallel proceeding, we find this argument to be
`speculative. Finally, we recognize Petitioner’s policy arguments against this
`factor but we are constrained by binding Board precedent, which dictates
`that we consider this factor.
`On this record, we determine that the facts underlying this factor
`weigh moderately in favor of denying institution. Id.
`Factor 5: whether Petitioner and the defendant in the parallel
`proceeding are the same party
`The parties do not dispute that Petitioner is the defendant in the
`parallel proceeding. Prelim. Resp. 24; Prelim. Reply 5. However, Petitioner
`argues that this factor “should be given litt
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