Trials@uspto.gov
`571-272-7822
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` Paper 17
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` Date: November 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.
`____________
`
`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 Petitioner’s Request for Rehearing of
`Decision Denying Institution of Post-Grant Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
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`571-272-7822
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` Paper 17
`
` Date: November 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.
`____________
`
`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 Petitioner’s Request for Rehearing of
`Decision Denying Institution of Post-Grant Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`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”).
`In its papers, Patent Owner requested that the Board exercise
`discretion under 35 U.S.C. § 324(a) to deny institution of the Petition, due to
`the advanced state of a district court parallel proceeding1 between the parties
`in which substantially similar issues have been presented. Prelim. Resp. 2‒
`27 (citing NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv
`Order”)); see also generally Prelim. Sur-reply. Petitioner disagreed and
`argued that the public interest in review of patent quality counsels in favor of
`institution. Prelim. Reply 1–2; see generally id. at 1–6.
`On September 3, 2020, the Board issued a Decision denying
`institution pursuant to 35 U.S.C. § 324(a). Paper 13 (“Dec.”). The Decision
`explains that the statutory text of §§ 314(a) and 324(a) provides discretion to
`deny institution of a petition and consider “events in other proceedings
`related to the same patent, either at the Office, in district courts, or the ITC.”
`
`
`1 GREE, Inc. v. Supercell OY, No. 2:19-cv-00200 (E.D. Tex.) (the “parallel
`proceeding”). Pet. 1; Paper 4, 2.
`
`
`
`2
`
`
`
`PGR2020-00034
`Patent 10,300,385 B2
`
`Dec. 5–6 (citing Consolidated Trial Practice Guide November 2019
`(“TPG”)2 at 58). The Decision explains that the Board considers several
`factors when determining whether to institute trial in parallel with a
`proceeding pending in another forum. Id. at 6. In the Decision, the Board
`determined that although NHK Spring and the Fintiv Order applied
`discretion under § 314(a)—not § 324(a), the relevant statute that applies to
`post-grant review (“PGR”) proceedings—“the pertinent statutory language is
`the same in both section 314(a) and section 324(a)” and “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).” Id. at 7. As such, the
`Decision weighs the factors set forth in the Fintiv Order in determining
`whether to institute review. Id. at 7; see also id. at 9–25. Based upon that
`analysis, the Board exercised discretion to deny institution of post-grant
`review.
`On October 5, 2020, Petitioner filed a Request for Rehearing of the
`Decision. Paper 14 (“Req.”). We have considered Petitioner’s Request and,
`for the reasons below, determine that Petitioner has not shown that we
`abused our discretion in denying the Petition. Accordingly, the Request for
`Rehearing is denied.
`
`B. Request for Rehearing Standards
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may arise if the decision is based on an erroneous interpretation of
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
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`PGR2020-00034
`Patent 10,300,385 B2
`
`law, if a factual finding is not supported by substantial evidence, or if an
`unreasonable judgment is made in weighing relevant factors. Star Fruits
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
`1305, 1315–16 (Fed. Cir. 2000).
`Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden
`of showing a decision should be modified lies with the party challenging the
`decision,” i.e., Petitioner, and “[t]he request must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.”
`
`C. Petitioner’s Arguments
`In its Request, Petitioner makes three main arguments, which we
`address below:
`(1) “the Board misapprehended facts regarding Factors 2
`and 6 [of the Fintiv Order] that, when properly considered, tip
`the balance in favor of institution”;
`(2) “the Board’s reliance on NHK-Fintiv is misplaced”
`because this is a PGR proceeding, not an IPR proceeding; and
`(3) “exercising discretion based on the NHK-Fintiv factors is
`improper” because “the NHK-Fintiv framework . . . prescribes a
`new standard for institution but was not promulgated via the
`requisite regulation.”
`Req. Reh’g 2, 8, 10 (heading capitalization omitted), 11 (same).
`
`
`
`4
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`PGR2020-00034
`Patent 10,300,385 B2
`
`
`II. DISCUSSION
`A. Fintiv Order Factors 2 and 6
`1. Factor 2 – The Trial Date
`This factor considers the “proximity of the court’s trial date to the
`Board’s projected statutory deadline for a final written decision.” Fintiv
`Order, Paper 11 at 5–6. Petitioner contends that “the Board’s willingness to
`take the court’s schedule at ‘face value’ caused the Board to misapprehend
`the trial date,” which has since changed. Req. Reh’g 2–4 (citation omitted).
`According to Petitioner, “the trial date continues to shift and the true date of
`the trial is, at present, uncertain,” which tilts this factor in Petitioner’s favor.
`Id. at 4 (citing Sand Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-
`01393, Paper 24 (PTAB June 16, 2020) (informative)).
`We are not persuaded that we abused our discretion in considering
`this factor. At the time of our Decision, trial was scheduled in the parallel
`proceeding for December 7, 2020, approximately nine months before our
`final written decision would have been due, if we were to institute trial.
`Dec. 10–11. As such, this gap in timing created a cognizable risk of
`inconsistent results and duplication of efforts, which weighed toward
`denying institution. Id. at 6, 11–12. Additionally, the Decision notes that
`some uncertainty exists regarding trial dates, as Petitioner again argues in its
`Request. Id. at 11; Req. Reh’g 3–4. However, the Decision goes on to
`determine that even if trial in the parallel proceeding was delayed by two
`months, consistent with Petitioner’s prior requested delay, the proximity of
`the trial date to our final written decision would still favor denying
`institution. Dec. 12 (citing Ex. 2002, 2). As such, Petitioner has not shown
`that the Board misapprehended the trial date.
`
`
`
`5
`
`
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`PGR2020-00034
`Patent 10,300,385 B2
`
`
`In its Request, Petitioner shows that, in the time since our Decision,
`the parties jointly requested a trial delay in the prior proceeding, from
`December 7, 2020, to March 1, 2021, which the district court granted.
`Ex. 1019, 1 (requesting delay); see also Ex. 1021, 1. Even considering these
`post-Decision developments, this three month delay results in trial in the
`parallel proceeding occurring six months before our final written decision.
`Similar to the potential delay discussed in our Decision, a jury trial set to
`begin six months before a final written decision also weighs in favor of
`denying institution. Dec. 12; see Prelim. Resp. 10–11 (identifying three
`prior PTAB proceedings in which institution was denied where trial was
`scheduled to occur six months before a final written decision, including the
`precedential NHK Spring decision).
`We decline to speculate, absent case-specific evidence, as to any
`future additional delay of the parallel proceeding’s trial date that may—
`or may not—be requested by the parties, and that may—or may not—
`be granted by the district court. See Ex. 1021, 1, 4 (indicating that the trial
`date “cannot be changed without showing good cause,” which “is not shown
`merely by indicating that the parties agree that the deadline should be
`changed”) (emphasis omitted). On the current record, a cognizable risk of
`inconsistent results exists, due to the scheduled date of trial and the statutory
`due date of a final written decision.3
`
`
`3 For the same reasons discussed in our Decision, we do not agree that these
`circumstances are similar to those in Sand Revolution in any compelling
`manner. Req. 4; Dec. 11–12 (noting that, in Sand Revolution, the parties
`jointly sought two trial date extensions (not the case here), and the court
`“identified a loose date at which trial might occur” (also not the case here));
`see, e.g., Ex. 1021, 1, 4.
`
`
`
`6
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`PGR2020-00034
`Patent 10,300,385 B2
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`
`In its Reply to the Petition, Petitioner argued that “this [trial date]
`factor should be afforded little weight, as the date is barely 18 months after
`the patent issued.” Prelim. Reply 3. In its Request, Petitioner spends an
`additional two pages elaborating on this argument. Req. Reh’g 4–6.
`Specifically, Petitioner argues that a PGR petition may only be filed upon
`issuance of a patent and, therefore, “[b]asing the PGR institution decision on
`the trial date allows patent owners like GREE to self-select out of the PGR
`process merely by filing a lawsuit in a fast-moving jurisdiction in which
`invalidity must be proven by a higher standard.” Id. at 5; see also id. at 5–6
`(distinguishing IPR proceedings “in which the [petition] filing deadline is
`measured relative to service of the complaint in the litigation, not relative to
`the issue date”). Petitioner argues that “by following the Director’s [NHK
`Spring and Fintiv Order] guidance related to IPRs, the Board thwarts its own
`recognized strong public interest in using PGRs to evaluate the § 101 ground
`on the merits.” Id. at 6.
`We are not persuaded that we overlooked or misapprehended the
`different posture of PGR proceedings, as compared to IPR proceedings,
`when considering this factor. As explained in the Decision, “insofar as the
`overall policy goals for considering a parallel proceeding’s trial date apply
`equally to post-grant reviews, [this factor] is accorded the same weight” as it
`would be in an IPR. Dec. 12. Indeed, the risk of duplication of effort and
`inconsistent results is as relevant to PGR proceedings as it is to IPR
`proceedings. See, e.g., id. at 21 (“[T]he same discretionary considerations
`that promote fairness and efficiency in inter partes review are relevant to
`post-grant review.”). Petitioner is correct that a public interest exists in
`evaluating the § 101 ground on the merits, Req. Reh’g 6, and we considered
`
`
`
`7
`
`
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`PGR2020-00034
`Patent 10,300,385 B2
`
`that fact in regard to Fintiv factor 6, and in our holistic analysis of whether
`to exercise discretion to deny institution. See, e.g., Dec. 21–23.
`2. Factor 6 – The Merits
`This factor considers “other circumstances that impact the Board’s
`exercise of discretion, including the merits.” Fintiv Order, Paper 11 at 6.
`Petitioner argues that the Board misapprehended Petitioner’s contentions
`regarding obviousness. According to Petitioner, the Petition did not contend
`that Cho4 establishes a communication without transmitting first information
`but, rather, the Petition contended that, “while Cho is silent on how the
`communication is established, a POSITA would have found it obvious that
`[Cho’s communication] may comprise one player specifying, to the server,
`information identifying another player to be involved in the game,” i.e.,
`“first information” as claimed. Req. Reh’g 6–7. According to Petitioner,
`GSB5 is relied upon as additional evidence that transmission of the claimed
`first information would have been obvious, and is more explicit in
`describing the type of information that is transmitted. Id. at 7.
`We are not persuaded that we misapprehended the Petition’s
`contentions. The Petition contended that “Cho discloses communication
`between a user terminal and a server,” and that an ordinarily skilled artisan
`“would have understood that users may access the online world of the game
`via a server, and that transmission of information between the users of the
`game may be managed through the server.” Pet. 46 (emphasis added).
`
`
`4 Cho et al., U.S. Patent Publication No. 2007/0105626 A1, filed Aug. 21,
`2006, published May 10, 2007 (Ex. 1009, “Cho”).
`5 Manual for Gratuitous Space Battles, Version 1.1 (Ex. 1010, “GSB”).
`8
`
`
`
`
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`PGR2020-00034
`Patent 10,300,385 B2
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`Thus, unlike the Request, the Petition did not contend that a skilled artisan
`would have found it obvious that “[Cho’s communication] may comprise
`one player specifying, to the server, information identifying another player
`to be involved in the game.” Compare id. at 46–47, with Req. Reh’g 6–7
`(emphasis added). To the contrary, the Petition simply stated that a skilled
`artisan would understand that Cho taught transmissions through a server, but
`did not state that it would have been obvious, in light of Cho’s teachings, for
`this transmission to include first information.
`
`As discussed in our Decision, the Petition’s reliance on GSB to supply
`the transmission of “first information” fails because Petitioner has not
`explained persuasively why it would have been obvious to transmit GSB’s
`first information when Cho already establishes a communication between
`players and because Petitioner fails to explain “how the additional
`transmission of identifying information would simplify communications or
`allow easier connection, over the communication that
`Cho already establishes.” Dec. 24.
`
`Moreover, although we found Petitioner’s obviousness contentions to
`be weak we, nonetheless, determined that “the facts underlying Factor 6
`weigh moderately in favor of institution.” Id. at 25.
`3. Holistic Analysis
`Petitioner contends that “[t]he Board misapprehended or overlooked
`the weighing of the factors when conducting the holistic analysis of Fintiv”
`because “[t]he Board did not articulate any actual weighing of the various
`factors in its Decision. Rather, the Board stated which factors favored and
`disfavored institution, and then provided a conclusion without undergoing a
`substantive analysis or discussion of which factors were weighed more or
`
`
`
`9
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`PGR2020-00034
`Patent 10,300,385 B2
`
`less heavily and why.” Req. Reh’g 7–8. Petitioner also contends that the
`final conclusion to deny institution contradicts the Board’s own conclusion
`that the merits of the § 101 ground are strong. Id. at 8.
`We are not persuaded that we misapprehended or overlooked the
`weighing of factors. The Decision provides fifteen pages of analysis as to
`the facts underlying each individual factor. Dec. 9–24. With this
`background, the Decision identifies the factors that weigh in each party’s
`favor—three in favor of Patent Owner; two in favor of Petitioner—and
`explains that, on balance, a holistic evaluation of the factors led us to
`determine that the Fintiv factors in Patent Owner’s favor outweigh those in
`Petitioner’s favor. Id. at 25–26. Specifically, we determined “that
`duplication of efforts here is likely and the potential for inconsistent results
`exists, where both tribunals would consider substantially identical issues and
`where the parallel proceeding will reach trial nine months before we would
`reach a final decision.” Id. at 26. Petitioner’s disagreement with our
`ultimate conclusion does not demonstrate that we abused our discretion, or
`overlooked or misapprehended the holistic analysis of factors. Fintiv Order,
`Paper 11 at 6 (considering “whether efficiency and integrity of the system
`are best served by denying or instituting review”).
`
`B. NHK Spring and the Fintiv Order in PGR
`Petitioner argues that “the Board’s decision to deny institution is
`based on application of the NHK-Fintiv Factors even though the instant
`petition is a PGR, not an IPR,” and that reliance on NHK Spring and Fintiv
`is misplaced because it is not binding precedent as applied to PGR
`proceedings. Req. Reh’g 8–9.
`
`
`
`10
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`PGR2020-00034
`Patent 10,300,385 B2
`
`
`We are not persuaded that we overlooked or misapprehended the
`different posture of PGR proceedings as compared to IPR proceedings, when
`exercising discretion to deny institution. As summarized above, the
`Decision discusses that common statutory language exists in § 314(a)—
`directed toward IPR proceedings—and in § 324(a)—directed to post-grant
`review proceedings. See supra § I.A; Dec. 5–7. The Decision also discusses
`the common policy justifications implicated when determining whether to
`institute either an IPR proceeding or a PGR proceeding. Id. at 7. The
`Decision then goes on to recognize and discuss certain differences between
`PGR proceedings and IPR proceedings. Id. Despite these differences, we
`determined that the Board’s binding precedential case law set forth in NHK
`Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we
`additionally evaluated certain differences between PGR proceedings and
`IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at
`12, 15–17, 20–21. Petitioner has not demonstrated that we abused our
`discretion in doing so.
`
`C. Rulemaking
`Finally, Petitioner contends that it is improper for the Board to have
`relied upon NHK Spring and the Fintiv Order because this case law
`“prescribes a new standard for institution but was not promulgated via the
`requisite regulation.” Req. Reh’g 10–12.
`The America Invents Act of 2011 (“AIA”), Pub L. No. 112-29, 125
`Stat. 28 (Sept. 16, 2011), commits the decision to deny inter partes review to
`the Director’s unreviewable discretion, even if the merits of the petition
`warrant institution. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
`(2016) (explaining that the statute contains “no mandate to institute
`
`
`
`11
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`PGR2020-00034
`Patent 10,300,385 B2
`
`review”); see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) and
`Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct.
`1365, 1371 (2018) (interpreting § 314(a) as committing the decision whether
`to institute inter partes review to the Director’s discretion). As we noted in
`our Decision, § 324(a) contains the same discretionary statutory language as
`§ 314(a). NHK Spring and the Fintiv Order are precedential decisions that
`are binding in Board proceedings. As previously discussed, we determine
`that those precedential decisions also apply in the context of PGR
`proceedings.
`
`III. CONCLUSION
`For the forgoing reasons, Petitioner has not shown that we abused our
`discretion in denying the Petition. Accordingly, the Request for Rehearing
`is denied.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that the request for rehearing is denied.
`
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`12
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`PGR2020-00034
`Patent 10,300,385 B2
`
`PETITIONER:
`
`
`Jennifer Bush
`jbush-ptab@fenwick.com
`
`Brian Hoffman
`bhoffman-ptab@fenwick.com
`
`Kevin McGann
`kmcgann-ptab@fenwick.com
`
`Eric Zhou
`ezhou@fenwick.com
`
`
`PATENT OWNER:
`
`John Alemanni
`jalemanni@kilpatricktownsend.com
`
`Andrew Rinehart
`arinehart@kilpatricktownsend.com
`
`
`
`
`13
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`
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