`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN M. HOFFMAN, Reg. No. 39,713
`MICHAEL J. SACKSTEDER (pro hac vice)
`KEVIN X. McGANN, Reg. No. 48,793
`JENNIFER R. BUSH, Reg. No. 50,784
`GREGORY A. HOPEWELL, Reg. No. 66,012
`GEOFFREY R. MILLER (pro hac vice)
`ERIC Y. ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case No. PGR2020-00039
`Patent 10,307,676 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.208(c)
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`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`Page
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`The Fintiv Factors Favor Institution ............................................................... 1
`I.
`II. Mastermind Was Publicly Accessible ............................................................ 5
`III. Clash Is Corroborated by the Evidence of Record ......................................... 7
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Am. Simmental Ass’n v. Leachman Cattle of Colo., LLC,
`PGR2015-00003, Paper 56 (P.T.A.B. June 13, 2016) .......................................... 8
`Apple v. Fintiv,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ..................................passim
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 1
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ............................................. 1
`Google LLC v. IPA Techs., Inc.,
`IPR2018-00384, Paper 8 (P.T.A.B. July 3, 2018) ................................................ 7
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`Netsirv v. Boxbee, Inc.,
`PGR2015-00009, Paper 10 (P.T.A.B. Aug. 4, 2015) ........................................... 8
`Sand Revolution II, LLC v. Continental Intermodal Group,
`IPR2019-01393, Paper 24 (P.T.A.B. Jun. 16, 2020) ........................................ 3, 6
`Sandov v. Abbie Biotechs.,
`IPR2018-00156, Paper 11 (P.T.A.B. Jun. 5, 2018) .............................................. 7
`Teva Pharmaceuticals USA, Inc., v. Corcept Therapeutics, Inc.,
`PGR2019-00048, Paper 19 (P.T.A.B. Nov. 20, 2019) ......................................... 2
`Uniloc United States v. Avaya Inc.,
`2017 U.S. Dist. LEXIS 168855 (E.D. Tex. April 19, 2017) ................................ 3
`Voter Verified, Inc. v. Premier Election Solns., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ............................................................................ 7
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`STATUTES AND RULES
`35 U.S.C. § 321(c) ..................................................................................................... 2
`35 U.S.C. § 324(a) ................................................................................................. 1, 9
`OTHER AUTHORITIES
`H. R. Rep. No. 112-98 ........................................................................................... 1, 2
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`iii
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`EXHIBIT LIST (37 CFR § 42.63(e))
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`Exhibit
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`Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 10,307,677 to Eda
`
`File History of U.S. Patent No. 10,307,677
`
`U.S. Patent No. 10,307,676 to Eda
`
`File History of U.S. Patent No. 10,307,676
`
`U.S. Patent No. 10,307,675 to Eda
`
`File History of U.S. Patent No. 10,307,675
`
`U.S. Patent No. 9,597,594 to Eda
`
`File History of U.S. Patent No. 9,597,594
`
`The History of Chess, From the Time of the Early Inventions
` of the Game in India, till the Period of its Establishment in
`Western and Central Europe, Duncan Forbes, LL.D.
`(Wm. H. Allen & Co. 1860) (selected pages)
`
`Correspondence Chess in America, Bryce C. Avery (2000)
`(selected pages)
`
`Microsoft Computer Dictionary, 4th Ed. (1999)
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`Declaration of Mark L. Claypool, Ph.D.
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`Curriculum Vitae for Mark Claypool
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`Declaration of Antti Takala Regarding Clash of Clans Version
`4.120 (“Clash”)
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`Declaration of Sean Olesiuk [Mastermind’s In-Game Builder
`Idea (with LOADS of pictures!) (“Mastermind”)]
`
`1016
`
`U.S. Patent No. 9,079,105 to Jeong Hun Kim et al. (“Kim”)
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`iv
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`PGR2020-00039
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`Exhibit
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`Description
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`
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`Gratuitous Space Battles Manual, Version 1.1, and related links
`(“GSB”)
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`U.S. Patent Pub. No. 2007/0105626 to Cho et al. (“Cho”)
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`Review of Clash of Clans by PocketGamer
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`Declaration of Christopher Butler and associated Internet
`Archive materials
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`Claim Construction Memorandum Opinion and Order, entered
`on May 14, 2020, Case Nos. 19-cv-00071, 19-cv-00161,
`19-cv-00200, and 19-cv-00237 (E.D. Texas)
`
`May 8, 2020 Telephonic Hearing Transcript,
`Case Nos. 19-cv-00070, and 19-cv-00071 (E.D. Texas)
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`Supercell’s Clash of Clans Internal Release notes for release
`version 4.120
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`v
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`THE FINTIV FACTORS FAVOR INSTITUTION
`The Board should not exercise its discretion under 35 U.S.C. § 324(a) to
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`I.
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`deny institution. The Supreme Court recognized that the public has a “‘paramount
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`interest in seeing that patent monopolies . . . are kept within their legitimate
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`scope.’” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (internal cite
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`omitted). Congress intended the PGR process to directly further this interest: “[t]he
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`intent of the post-grant review process is to enable early challenges to patents,
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`while still protecting the rights of inventors and patent owners . . .” H. R. Rep. No.
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`112–98, pt. 1, at 47-48 (2011) (“Rep. No. 112-98”). The Board likewise recognizes
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`that the goals of the AIA are “to improve patent quality and make the patent
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`system more efficient by the use of post-grant review procedures.” General Plastic
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`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16
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`(P.T.A.B. Sept. 6, 2017).
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`The public’s paramount interest is at the forefront of the present institution
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`decision. The Board issued a Final Written Decision in the parent ’594 patent
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`finding that the independent claims failed to recite statutory subject matter.
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`PGR2018-00008, Paper 42, at 49 (P.T.A.B. Jan. 2, 2019). The USPTO issued the
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`instant patent months later, despite the Examiner determining that the issued
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`claims were not patentably distinct from those of the ‘594 patent. Id. at 51. GREE
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`asserted the patent against Petitioner in district court immediately upon issue,
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`knowing it is patentably indistinct from the ’594. See Pet. at 21-24. This chain of
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`events risks a breakdown of the patent system with respect to patent quality, should
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`the Board deny the Petition, by eliminating the early-stage challenge Congress
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`intended as the remedy for exactly this situation. Instituting the PGR “will make
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`the patent system more efficient and improve the quality of patents and the patent
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`system.” Rep. No. 112–98, at 47-48 (emphasis added).
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`GREE’s twisted application of the six Fintiv factors to the instant PGR
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`undermines this paramount interest. When evaluating IPR institution due to an
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`early trial date, the Board conducts “a ‘balanced assessment of all relevant
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`circumstances of the case, including the merits,’” and considers “whether
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`efficiency, fairness, and the merits support the exercise of authority to deny
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`institution in view of an earlier trial date in the parallel proceeding.” Apple v.
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`Fintiv, IPR2020-00019, Paper 11 at 5-6 (P.T.A.B. Mar. 20, 2020) (Precedential).
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`First, to the extent that the Fintiv factors even apply to PGRs, the balancing
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`should be tilted against discretionary denial. PGRs are time-limited by statute to
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`nine months after institution. 35 U.S.C. § 321(c). Moreover, “[t]he AIA explicitly
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`contemplates . . . that a party may choose to seek post grant review of a patent that
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`is involved in concurrent litigation.” Teva Pharmaceuticals USA, Inc., v. Corcept
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`Therapeutics, Inc., PGR2019-00048, Paper 19, at 8-12 (P.T.A.B. Nov. 20, 2019).
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`Denying institution based on a district court setting a trial date before the FWD
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`deadline effectively prevents the patent from ever being subject to a PGR, allowing
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`patent owners to sidestep PGRs altogether by filing in fast-moving jurisdictions.
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`Second, proper application of the Fintiv factors demonstrates that the Board
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`should not exercise its discretion. With respect to the “stay” factor, institution by
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`the PTAB “has been treated as a highly significant factor in the courts’
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`determination of whether to stay cases pending PTAB review.” Uniloc United
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`States v. Avaya Inc., 2017 U.S. Dist. LEXIS 168855, *10-11 (E.D. Tex. April 19,
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`2017). Indeed, GREE acknowledges that E.D. Texas district court commonly
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`denies motions to stay when the PTAB has yet to institute. POPR at 18. Thus,
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`Petitioner has not yet sought a stay, but hereby stipulates that it will seek a stay
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`in the parallel litigation should the PGR be instituted.
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`While the trial date is currently scheduled to occur before the statutory
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`deadline for the FWD, this factor should be afforded little weight, as the date is
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`barely 18 months after the patent issued. There also is considerable uncertainty
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`regarding the trial date, in view of continued travel restrictions due to COVID-19.
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`The trial date already was delayed from October to December, in part because
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`Petitioner is unable to take discovery of GREE’s Japan-based witnesses. See Ex.
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`2002 pp. 3-8; Ex. 1022 at 45. Trial delays are a factor the Board considers as
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`favoring institution. See Sand Revolution II, LLC v. Continental Intermodal Group,
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`IPR2019-01393, Paper 24 at 8-10 (P.T.A.B. Jun. 16, 2020) (considering trial date
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`uncertainty as favoring institution). Given the current state of the pandemic, it is
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`unlikely that Japan’s travel ban will be lifted in time for a December trial.
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`The “investment” factor favors institution. The Board has invested
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`substantial resources related to this matter, as PGR2018-00008 has proceeded to a
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`FWD. It is already familiar with the claimed subject matter, construed terms, and
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`reached a decision regarding the unpatentability of claims that the Examiner found
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`– and GREE argued – were not patentably distinct from those at issue here. Pet. at
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`21-24. There is no basis in Fintiv for valuing investment in the parallel proceeding
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`more than investment by the Board itself.
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`The Fintiv board advised the parties to “explain facts relevant to the timing”
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`to determine whether the timing “impose[s] unfair costs to a patent owner,” and
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`“recognize[d] . . . that it is often reasonable for a petitioner to wait to file its
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`petition until it learns which claims are being asserted against it in the parallel
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`proceeding.” Fintiv, Paper 11 at 11. Even now, Petitioner does not know which
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`claims GREE will pursue in district court. GREE also does not identify any unfair
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`costs flowing from the timing.
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`GREE devotes substantial verbiage to declining institution based on the
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`“overlap between issues” factor. Presumably, GREE will reduce the number of
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`claims it asserts in the parallel litigation, whereas all 24 claims are challenged in
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`this PGR. If institution is denied, significant issues related to the unasserted claims
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`would be left unaddressed by the litigation, forever insulating those claims from
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`PGR. In addition, the patent ineligibility standard under the current USPTO
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`Guidance is different from the clear and convincing standard for jury trials. These
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`different standards result in different issues between the two forums.
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`The “same party” factor should be given little weight in the PGR context, as
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`the petitioner-defendant will always be the party most motivated to challenge a
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`patent. No other party can file a PGR at this point.
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`The final factor is “other circumstances that impact the Board’s exercise of
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`discretion, including the merits.” Fintiv, Paper 11 at 14. It bears repeating that the
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`Board has already decided on the merits that non-distinct claims in the parent
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`patent are non-statutory. The strong merits of Petitioner’s case support institution:
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`“[I]f the merits of a ground raised in the petition seem particularly strong on the
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`preliminary record, this fact has favored institution.” Sand Revolution, Paper 24 at
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`13 (quoting Fintiv, Paper 11 at 14-15). A holistic view considering all of the Fintiv
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`factors, and the efficiency and integrity of the patent system, favors institution now
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`to confirm unpatentability of the claims over deferring to a district court.
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`II. MASTERMIND WAS PUBLICLY ACCESSIBLE
`GREE argued that the Mastermind posts of Ex. 1015 were not “publicly
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`accessible”—and thus not a “printed publication”—prior to September 27, 2013,
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`and that Petitioner “failed to proffer any evidence regarding indexing or
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`cataloguing.” POPR at 46. “Whether a reference qualifies as a ‘printed publication’
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`is a legal conclusion based on underlying factual findings.” Hulu, LLC v. Sound
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`View Innovations, LLC, IPR2018-01039, Paper 29, at 8–9 (P.T.A.B. Dec. 20,
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`2019) (precedential). Here, the underlying facts demonstrate that Mastermind was
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`not only “publicly accessible before the critical date” (Hulu, Paper 29 at 13), but
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`that interested persons actually accessed it.
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`The content of Mastermind was posted on Petitioner’s own publicly-
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`accessible forum dedicated to the hit Clash of Clans game, and other people
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`reviewed and commented on it. Ex. 1015 at 28-30. When the Internet Archive web
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`crawlers accessed the post on September 15, 2013, the thread initiated by
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`Mastermind had 247 comments spanning 25 pages. Id. at 13. Other posters to the
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`forum offered comments, and Mastermind himself acknowledged revising his idea
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`based on their input. See id. at 1015 at 26 (“Mufasa wrote this…”); 27 (“From D3r
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`(page 19):”); 29 (“only possible issue I could point out . . .”).
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`In addition, Mr. Olesiuk’s declaration provides independent verification that
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`the posts were publicly accessible, via his firsthand knowledge of authoring them
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`and of others’ comments on his posts. Id. at 2-8. Independent declaration testimony
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`has been relied upon by the Board as evidence that helps to establish public
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`accessibility. See Sandov v. Abbie Biotechs., IPR2018-00156, Paper 11 at 13
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`(P.T.A.B. Jun. 5, 2018).
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`GREE argues that the reference was not indexed. This argument is
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`misplaced, both because lack of indexing is not dispositive, and because the posts
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`were in fact indexed. Voter Verified, Inc. v. Premier Election Solns., Inc., 698 F.3d
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`1374, 1380 (Fed. Cir. 2012) (finding indexing not a necessary condition and not an
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`absolute prerequisite); accord Sandov, Paper 11 at 13. Mastermind on its face
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`demonstrates that the post was indexed by the forum. The first page of the post
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`shows that it was made to the “Ideas & Feature Requests” section of the forum. Ex.
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`1015 at 13. Numerous other pages of Ex. 1015 demonstrate that the forum software
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`indexed and tracked edits to the post. See generally id. at 2-5. The totality of the
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`evidence is more than enough “to establish a reasonable likelihood that the
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`reference was publicly accessible before the critical date.” Hulu, Paper 29 at 13.
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`III. CLASH IS CORROBORATED BY THE EVIDENCE OF RECORD
`GREE argues lack of corroboration of the Takala declaration (“Clash”), Ex.
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`1014. “[W]hether testimony is corroborated sufficiently is analyzed under a ‘rule
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`of reason’ analysis.” Netsirv v. Boxbee, Inc., PGR2015-00009, Paper 10 at 13
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`(P.T.A.B. Aug. 4, 2015). The corroboration can be based on other evidence of
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`record in the PGR. Am. Simmental Ass’n v. Leachman Cattle of Colo., LLC,
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`PGR2015-00003, Paper 56, at 20 (P.T.A.B. June 13, 2016). GREE’s argument is
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`disingenuous in view of evidence both of record and known to GREE.
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`First, the ’594 patent itself admits that Clash of Clans is a prior art “city
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`building” game having many features described in Mr. Takala’s declaration. Ex.
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`1007, 1:7-38 (“players can build various facilities (such as houses, streets, ports,
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`train stations, airports, castles, training facilities, etc.) on desired positions and
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`create a city after their liking” and “are played by installing a game program on a
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`portable device from a server via a communication network”).
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`Second, the Pocket Gamer review of Clash of Clans, Ex. 1019, is additional
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`corroboration from an uninterested party. The review describes several features
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`Mr. Takala declares are included in the game: how a player can create a village,
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`build a town hall, cannons, and other game contents, and use those game contents
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`to attack, and defend from attacks by, other players. Ex. 1019 at 1-2.
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`The Mastermind declaration (Ex. 1015) provides further independent
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`corroboration, and includes numerous screenshots showing the game contents and
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`game space of Clash. See, e.g., Ex. 1015 at 13-23. Thus, the features of the game
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`described by Mr. Takala in the Clash declaration and mapped to the claims for
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`invalidity purposes are well-corroborated by multiple uninterested parties.
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`Further, on October 4, 2019 GREE was served in the corresponding
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`litigation with Supercell’s Internal Release Notes verifying the Version 4.120
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`release date. Ex. 1023. The rule of reason thus supports Mr. Takala’s testimony.
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`Dated: July 6, 2020
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`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
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`CERTIFICATION OF SERVICE ON PATENT OWNER
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`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
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`Patent Owner’s Preliminary Response and accompanying Exhibits 1022 and
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`1023 were served on Patent Owner’s lead and back-up counsel in its entirety by
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`electronic service at the email addresses provided below:
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`
`
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`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
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`
`
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`Date: July 6, 2020
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, CA 9410
`
`
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`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
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`10
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