Trials@uspto.gov
`571-272-7822
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` Paper 17
` Date: November 18, 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.
`____________
`
`PGR2020-00039
`Patent 10,307,676 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BROWNE, 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)
`
`
`
`
`
`
`571-272-7822
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` Paper 17
` Date: November 18, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`PGR2020-00039
`Patent 10,307,676 B2
`____________
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BROWNE, 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)
`
`
`
`
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`
`I.
`
`INTRODUCTION
`A. Background
`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
`claims 1–24 (“challenged claims”) of U.S. Patent No. 10,307,676 B2
`(Ex. 1003, “the ’676 patent”). Paper 2 (“Pet.”). GREE, Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With our
`authorization, Petitioner filed a Preliminary Reply (Paper 9, “Prelim.
`Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 10, “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. 3‒
`25 (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 1–5.
`On September 14, 2020, the Board issued a Decision denying
`institution pursuant to 35 U.S.C. § 324(a). Paper 14 (“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, 3.
`
`
`
`2
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`Dec. 5–8 (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 7. 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 9–27. Based upon that
`analysis, the Board exercised discretion to deny institution of post-grant
`review.
`On October 14, 2020, Petitioner filed a Request for Rehearing of the
`Decision. Paper 16 (“Req. Reh’g”). We have considered Petitioner’s
`Request for Rehearing 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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`PGR2020-00039
`Patent 10,307,676 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 Fintiv] 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 entire NHK-Fintiv framework relied on
`by the Board to deny institution is improper.”
`Req. Reh’g 3, 9 (heading capitalization omitted), 11 (same).
`
`
`
`4
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`PGR2020-00039
`Patent 10,307,676 B2
`
`
`II. DISCUSSION
`A. Fintiv Order Factors 2 and 6
`1. Factor 2 — The Trial Date
`Factor 2 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’ thus caused the Board to . . .
`misapprehend the trial date,” which has since changed. Req. Reh’g 3.
`Petitioner asserts that “[t]he district court delayed the trial less than three
`weeks after the Board issued its Decision” and that district court trial dates
`“are often reset once the PTAB hurdle is cleared.” Id. at 3–4 (citing
`Ex.1025, 2) (emphasis omitted). According to Petitioner, “trial schedules
`‘tend[] to slip in significant regard’ “[o]nce the PTAB denies institution
`based upon a looming district court trial date’” and “delays are only getting
`worse in light of COVID-19.” Id. at 4 (citing Ex. 1026, 3–4).
`We are not persuaded that we abused our discretion in considering
`this factor or that we misapprehended the trial date. 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 7, 11–13.
`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
`
`
`
`5
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`PGR2020-00039
`Patent 10,307,676 B2
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`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.
`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. 1024, 1. Even considering these post-Decision developments, this three
`month delay results in a trial date in the parallel proceeding set six months
`before our final written decision would be due. 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. 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. 1024, 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. Reh’g 4; Dec. 11–12 (noting that, in Sand Revolution, the
`6
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`
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`PGR2020-00039
`Patent 10,307,676 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 5–6.
`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 20 (“[T]he same discretionary considerations
`
`
`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. 1024, 1, 4.
`
`
`
`7
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`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
`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. 20–21, 26–27.
`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 or overlooked evidence
`showing that Mastermind4 was publicly accessible. Req. Reh’g 6.
`Specifically, Petitioner argues that the Board overlooked “time-based
`distinctions in Dr. Claypool’s testimony” from related litigation. Id. at 7.
`Petitioner also identifies other portions of Dr. Claypool’s testimony, and
`provides a Supplemental Declaration from Dr. Claypool, captioned for
`PGR2020-000046, on the issue of Mastermind’s accessibility. Id. at 7–8
`(citing Ex. 1012 ¶¶ 117–118; Ex. 2009, 2–3; Ex. 1028 ¶ 9).
`We are not persuaded that we misapprehended the Petition’s
`contentions. In our Decision, we relied in part upon Dr. Claypool’s
`testimony from related litigation between the parties in determining that
`Petitioner failed to meet its burden of demonstrating that Mastermind was
`publicly accessible. Dec. 24–25. Specifically, we relied upon
`Dr. Claypool’s prior testimony that,
`
`4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)”
`(“Mastermind”), available at
`https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s
`howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADS-
`of-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”).
`8
`
`
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`
`it is my opinion that a diligent, skilled researcher engaged
`in a reasonable search for prior art would not have found
`Mastermind as a prior art reference even with the benefit of
`[Patent Owner’s] infringement contentions before the filing of
`the Petition for Post-Grant Review. A diligent, skilled researcher
`would not spend time sifting through the suggestions provided on
`Internet message boards, as they would normally not include
`useful or sufficiently detailed suggestions.
`Ex. 2009 ¶ 164 (emphasis added); Dec. 25.
`
`Petitioner was provided an opportunity to respond to this evidence to
`address any “time-based distinctions in Dr. Claypool’s testimony,” however,
`Petitioner declined to address this testimony in its Preliminary Reply, despite
`having the opportunity to do so. Prelim. Reply 5–7. We decline to consider
`now, on rehearing, arguments that Petitioner failed to make in its
`pre-institution papers. It is Petitioner’s burden to demonstrate that
`Mastermind was publicly accessible. As we stated in our Decision, this
`prior testimony casts serious doubt on Petitioner’s ability to satisfy that
`burden. Dec. 25. We also decline to consider new testimonial evidence
`submitted on rehearing on this issue, as Petitioner does not show good cause
`for admitting this new evidence. See Huawei Device Co. v. Optics Cellular
`Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential)
`(showing of “good cause” required prior to filing a rehearing request or in
`the request itself for new exhibits to be admitted). We could not have
`misapprehended or overlooked evidence and arguments that were not made
`before our Decision.
`
`Moreover, although we found Petitioner’s obviousness contentions to
`be weak we, nonetheless, determined that “the facts underlying Factor 6
`weigh slightly in favor of institution.” Dec. 25.
`
`
`
`9
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`
`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
`less heavily and why.” Req. Reh’g 8 (citing Dec. 26–27). Petitioner also
`contends that the final conclusion to deny institution contradicts the Board’s
`own conclusion that the merits of the § 101 ground is strong. Id. at 8.
`We are not persuaded that we misapprehended or overlooked the
`weighing of factors. The Decision provides seventeen pages of analysis as
`to the facts underlying each individual factor. Dec. 9–26. 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 26–27. 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. Petitioner’s disagreement with our ultimate
`conclusion does not demonstrate that we abused our discretion, or
`overlooked or misapprehended the holistic analysis of factors. See Fintiv
`Order, Paper 11 at 6 (considering “whether efficiency and integrity of the
`system are best served by denying or instituting review”).
`
`
`
`10
`
`
`
`PGR2020-00039
`Patent 10,307,676 B2
`
`
`B. NHK Spring and the Fintiv Order in Post-Grant Review
`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 9–11.
`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. 5–8. The Decision also discusses
`the common policy justifications implicated when determining whether to
`institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The
`Decision then goes on to recognize and discuss certain differences between
`PGR proceedings and IPR proceedings. Id. at 7–8. Despite these
`differences, we determined that the Board’s binding precedent 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, 15–16, 18–20. 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 precedent
`
`
`
`11
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`PGR2020-00039
`Patent 10,307,676 B2
`
`“prescribes a new standard for institution but was not promulgated via the
`requisite regulation.” Req. Reh’g 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
`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
`Petitioner’s Request for Rehearing (Paper 16) is denied.
`
`
`
`
`
`
`12
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`PGR2020-00039
`Patent 10,307,676 B2
`
`PETITIONER:
`
`Brian Hoffman
`Jennifer Bush
`Kevin McGann
`Gregory A. Hopewell
`Eric Zhou
`FENWICK & WEST LLP
`bhoffman-ptab@fenwick.com
`jbush-ptab@fenwick.com
`kmcgann-ptab@fenwick.com
`ghopewell@fenwick.com
`ezhou@fenwick.com
`
`
`PATENT OWNER:
`
`John Alemanni
`Andrew Rinehart
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`
`
`
`
`13
`
`
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