throbber
PGR2020-00039
`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)
`
`
`
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF CONTENTS
`
`Page
`
`The Fintiv Factors Favor Institution ............................................................... 1
`I.
`II. Mastermind Was Publicly Accessible ............................................................ 5
`III. Clash Is Corroborated by the Evidence of Record ......................................... 7
`
`
`
`
`
`
`
`
`
`i
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`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
`
`ii
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`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
`
`
`iii
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`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)
`
`Declaration of Mark L. Claypool, Ph.D.
`
`Curriculum Vitae for Mark Claypool
`
`Declaration of Antti Takala Regarding Clash of Clans Version
`4.120 (“Clash”)
`
`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”)
`
`iv
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Exhibit
`
`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`
`
`Gratuitous Space Battles Manual, Version 1.1, and related links
`(“GSB”)
`
`U.S. Patent Pub. No. 2007/0105626 to Cho et al. (“Cho”)
`
`Review of Clash of Clans by PocketGamer
`
`Declaration of Christopher Butler and associated Internet
`Archive materials
`
`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)
`
`Supercell’s Clash of Clans Internal Release notes for release
`version 4.120
`
`v
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`THE FINTIV FACTORS FAVOR INSTITUTION
`The Board should not exercise its discretion under 35 U.S.C. § 324(a) to
`
`I.
`
`deny institution. The Supreme Court recognized that the public has a “‘paramount
`
`interest in seeing that patent monopolies . . . are kept within their legitimate
`
`scope.’” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (internal cite
`
`omitted). Congress intended the PGR process to directly further this interest: “[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 . . .” H. R. Rep. No.
`
`112–98, pt. 1, at 47-48 (2011) (“Rep. No. 112-98”). The Board likewise recognizes
`
`that the goals of the AIA are “to improve patent quality and make the patent
`
`system more efficient by the use of post-grant review procedures.” General Plastic
`
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16
`
`(P.T.A.B. Sept. 6, 2017).
`
`The public’s paramount interest is at the forefront of the present institution
`
`decision. The Board issued a Final Written Decision in the parent ’594 patent
`
`finding that the independent claims failed to recite statutory subject matter.
`
`PGR2018-00008, Paper 42, at 49 (P.T.A.B. Jan. 2, 2019). The USPTO issued the
`
`instant patent months later, despite the Examiner determining that the issued
`
`claims were not patentably distinct from those of the ‘594 patent. Id. at 51. GREE
`
`asserted the patent against Petitioner in district court immediately upon issue,
`
`1
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`knowing it is patentably indistinct from the ’594. See Pet. at 21-24. This chain of
`
`events risks a breakdown of the patent system with respect to patent quality, should
`
`the Board deny the Petition, by eliminating the early-stage challenge Congress
`
`intended as the remedy for exactly this situation. Instituting the PGR “will make
`
`the patent system more efficient and improve the quality of patents and the patent
`
`system.” Rep. No. 112–98, at 47-48 (emphasis added).
`
`GREE’s twisted application of the six Fintiv factors to the instant PGR
`
`undermines this paramount interest. When evaluating IPR institution due to an
`
`early trial date, the Board conducts “a ‘balanced assessment of all relevant
`
`circumstances of the case, including the merits,’” and considers “whether
`
`efficiency, fairness, and the merits support the exercise of authority to deny
`
`institution in view of an earlier trial date in the parallel proceeding.” Apple v.
`
`Fintiv, IPR2020-00019, Paper 11 at 5-6 (P.T.A.B. Mar. 20, 2020) (Precedential).
`
`First, to the extent that the Fintiv factors even apply to PGRs, the balancing
`
`should be tilted against discretionary denial. PGRs are time-limited by statute to
`
`nine months after institution. 35 U.S.C. § 321(c). Moreover, “[t]he AIA explicitly
`
`contemplates . . . that a party may choose to seek post grant review of a patent that
`
`is involved in concurrent litigation.” Teva Pharmaceuticals USA, Inc., v. Corcept
`
`Therapeutics, Inc., PGR2019-00048, Paper 19, at 8-12 (P.T.A.B. Nov. 20, 2019).
`
`Denying institution based on a district court setting a trial date before the FWD
`
`2
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`deadline effectively prevents the patent from ever being subject to a PGR, allowing
`
`patent owners to sidestep PGRs altogether by filing in fast-moving jurisdictions.
`
`Second, proper application of the Fintiv factors demonstrates that the Board
`
`should not exercise its discretion. With respect to the “stay” factor, institution by
`
`the PTAB “has been treated as a highly significant factor in the courts’
`
`determination of whether to stay cases pending PTAB review.” Uniloc United
`
`States v. Avaya Inc., 2017 U.S. Dist. LEXIS 168855, *10-11 (E.D. Tex. April 19,
`
`2017). Indeed, GREE acknowledges that E.D. Texas district court commonly
`
`denies motions to stay when the PTAB has yet to institute. POPR at 18. Thus,
`
`Petitioner has not yet sought a stay, but hereby stipulates that it will seek a stay
`
`in the parallel litigation should the PGR be instituted.
`
`While the trial date is currently scheduled to occur before the statutory
`
`deadline for the FWD, this factor should be afforded little weight, as the date is
`
`barely 18 months after the patent issued. There also is considerable uncertainty
`
`regarding the trial date, in view of continued travel restrictions due to COVID-19.
`
`The trial date already was delayed from October to December, in part because
`
`Petitioner is unable to take discovery of GREE’s Japan-based witnesses. See Ex.
`
`2002 pp. 3-8; Ex. 1022 at 45. Trial delays are a factor the Board considers as
`
`favoring institution. See Sand Revolution II, LLC v. Continental Intermodal Group,
`
`IPR2019-01393, Paper 24 at 8-10 (P.T.A.B. Jun. 16, 2020) (considering trial date
`
`3
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`uncertainty as favoring institution). Given the current state of the pandemic, it is
`
`unlikely that Japan’s travel ban will be lifted in time for a December trial.
`
`The “investment” factor favors institution. The Board has invested
`
`substantial resources related to this matter, as PGR2018-00008 has proceeded to a
`
`FWD. It is already familiar with the claimed subject matter, construed terms, and
`
`reached a decision regarding the unpatentability of claims that the Examiner found
`
`– and GREE argued – were not patentably distinct from those at issue here. Pet. at
`
`21-24. There is no basis in Fintiv for valuing investment in the parallel proceeding
`
`more than investment by the Board itself.
`
`The Fintiv board advised the parties to “explain facts relevant to the timing”
`
`to determine whether the timing “impose[s] unfair costs to a patent owner,” and
`
`“recognize[d] . . . that it is often reasonable for a petitioner to wait to file its
`
`petition until it learns which claims are being asserted against it in the parallel
`
`proceeding.” Fintiv, Paper 11 at 11. Even now, Petitioner does not know which
`
`claims GREE will pursue in district court. GREE also does not identify any unfair
`
`costs flowing from the timing.
`
`GREE devotes substantial verbiage to declining institution based on the
`
`“overlap between issues” factor. Presumably, GREE will reduce the number of
`
`claims it asserts in the parallel litigation, whereas all 24 claims are challenged in
`
`this PGR. If institution is denied, significant issues related to the unasserted claims
`
`4
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`would be left unaddressed by the litigation, forever insulating those claims from
`
`PGR. In addition, the patent ineligibility standard under the current USPTO
`
`Guidance is different from the clear and convincing standard for jury trials. These
`
`different standards result in different issues between the two forums.
`
`The “same party” factor should be given little weight in the PGR context, as
`
`the petitioner-defendant will always be the party most motivated to challenge a
`
`patent. No other party can file a PGR at this point.
`
`The final factor is “other circumstances that impact the Board’s exercise of
`
`discretion, including the merits.” Fintiv, Paper 11 at 14. It bears repeating that the
`
`Board has already decided on the merits that non-distinct claims in the parent
`
`patent are non-statutory. The strong merits of Petitioner’s case support institution:
`
`“[I]f the merits of a ground raised in the petition seem particularly strong on the
`
`preliminary record, this fact has favored institution.” Sand Revolution, Paper 24 at
`
`13 (quoting Fintiv, Paper 11 at 14-15). A holistic view considering all of the Fintiv
`
`factors, and the efficiency and integrity of the patent system, favors institution now
`
`to confirm unpatentability of the claims over deferring to a district court.
`
`II. MASTERMIND WAS PUBLICLY ACCESSIBLE
`GREE argued that the Mastermind posts of Ex. 1015 were not “publicly
`
`accessible”—and thus not a “printed publication”—prior to September 27, 2013,
`
`and that Petitioner “failed to proffer any evidence regarding indexing or
`
`5
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`cataloguing.” POPR at 46. “Whether a reference qualifies as a ‘printed publication’
`
`is a legal conclusion based on underlying factual findings.” Hulu, LLC v. Sound
`
`View Innovations, LLC, IPR2018-01039, Paper 29, at 8–9 (P.T.A.B. Dec. 20,
`
`2019) (precedential). Here, the underlying facts demonstrate that Mastermind was
`
`not only “publicly accessible before the critical date” (Hulu, Paper 29 at 13), but
`
`that interested persons actually accessed it.
`
`The content of Mastermind was posted on Petitioner’s own publicly-
`
`accessible forum dedicated to the hit Clash of Clans game, and other people
`
`reviewed and commented on it. Ex. 1015 at 28-30. When the Internet Archive web
`
`crawlers accessed the post on September 15, 2013, the thread initiated by
`
`Mastermind had 247 comments spanning 25 pages. Id. at 13. Other posters to the
`
`forum offered comments, and Mastermind himself acknowledged revising his idea
`
`based on their input. See id. at 1015 at 26 (“Mufasa wrote this…”); 27 (“From D3r
`
`(page 19):”); 29 (“only possible issue I could point out . . .”).
`
`In addition, Mr. Olesiuk’s declaration provides independent verification that
`
`the posts were publicly accessible, via his firsthand knowledge of authoring them
`
`and of others’ comments on his posts. Id. at 2-8. Independent declaration testimony
`
`has been relied upon by the Board as evidence that helps to establish public
`
`accessibility. See Sandov v. Abbie Biotechs., IPR2018-00156, Paper 11 at 13
`
`(P.T.A.B. Jun. 5, 2018).
`
`6
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`GREE argues that the reference was not indexed. This argument is
`
`misplaced, both because lack of indexing is not dispositive, and because the posts
`
`were in fact indexed. Voter Verified, Inc. v. Premier Election Solns., Inc., 698 F.3d
`
`1374, 1380 (Fed. Cir. 2012) (finding indexing not a necessary condition and not an
`
`absolute prerequisite); accord Sandov, Paper 11 at 13. Mastermind on its face
`
`demonstrates that the post was indexed by the forum. The first page of the post
`
`shows that it was made to the “Ideas & Feature Requests” section of the forum. Ex.
`
`1015 at 13. Numerous other pages of Ex. 1015 demonstrate that the forum software
`
`indexed and tracked edits to the post. See generally id. at 2-5. The totality of the
`
`evidence is more than enough “to establish a reasonable likelihood that the
`
`reference was publicly accessible before the critical date.” Hulu, Paper 29 at 13.
`
`III. CLASH IS CORROBORATED BY THE EVIDENCE OF RECORD
`GREE argues lack of corroboration of the Takala declaration (“Clash”), Ex.
`
`1014. “[W]hether testimony is corroborated sufficiently is analyzed under a ‘rule
`
`of reason’ analysis.” Netsirv v. Boxbee, Inc., PGR2015-00009, Paper 10 at 13
`
`(P.T.A.B. Aug. 4, 2015). The corroboration can be based on other evidence of
`
`record in the PGR. Am. Simmental Ass’n v. Leachman Cattle of Colo., LLC,
`
`PGR2015-00003, Paper 56, at 20 (P.T.A.B. June 13, 2016). GREE’s argument is
`
`disingenuous in view of evidence both of record and known to GREE.
`
`First, the ’594 patent itself admits that Clash of Clans is a prior art “city
`
`7
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`building” game having many features described in Mr. Takala’s declaration. Ex.
`
`1007, 1:7-38 (“players can build various facilities (such as houses, streets, ports,
`
`train stations, airports, castles, training facilities, etc.) on desired positions and
`
`create a city after their liking” and “are played by installing a game program on a
`
`portable device from a server via a communication network”).
`
`Second, the Pocket Gamer review of Clash of Clans, Ex. 1019, is additional
`
`corroboration from an uninterested party. The review describes several features
`
`Mr. Takala declares are included in the game: how a player can create a village,
`
`build a town hall, cannons, and other game contents, and use those game contents
`
`to attack, and defend from attacks by, other players. Ex. 1019 at 1-2.
`
`The Mastermind declaration (Ex. 1015) provides further independent
`
`corroboration, and includes numerous screenshots showing the game contents and
`
`game space of Clash. See, e.g., Ex. 1015 at 13-23. Thus, the features of the game
`
`described by Mr. Takala in the Clash declaration and mapped to the claims for
`
`invalidity purposes are well-corroborated by multiple uninterested parties.
`
`Further, on October 4, 2019 GREE was served in the corresponding
`
`litigation with Supercell’s Internal Release Notes verifying the Version 4.120
`
`release date. Ex. 1023. The rule of reason thus supports Mr. Takala’s testimony.
`
`8
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Dated: July 6, 2020
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`9
`
`

`

`PGR2020-00039
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1022 and
`
`1023 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`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
`
`
`
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`
`
`
`Date: July 6, 2020
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, CA 9410
`
`
`
`FENWICK & WEST LLP
`
`/Brian M. Hoffman/
`Brian M. Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`
`
`10
`
`

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