`571-272-7822
`
`Paper 15
`Date: January 26, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00043 (US 10,328,346 B2)
`PGR2020-00046 (US 10,328,347 B2)
`PGR2020-00049 (US 10,335,689 B2)
`PGR2020-00053 (US 10,335,683 B2)
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`PGR2020-00043 (US 10,328,346 B2)
`PGR2020-00046 (US 10,328,347 B2)
`PGR2020-00049 (US 10,335,689 B2)
`PGR2020-00053 (US 10,335,683 B2)
`
`
`In an email sent to the Board on November 24, 2020, Supercell Oy
`(“Petitioner”) requested authorization to file in PGR2020-00046 and
`PGR2020-00053 as exhibits: (1) a Federal Circuit decision for PGR2018-
`00008 regarding a patent related to, at least, the ones at issue in PGR2020-
`00046 and PGR2020-00053 and (2) an order for case 2:19-cv-00152-JRG
`that puts on hold all jury trials in the U.S. District Court for the Eastern
`District of Texas until March 2021.
`Petitioner argues that “[t]he Federal Circuit Decision shows a low
`likelihood of inconsistent results between forums, confirms the merits of the
`§ 101 ground for claims not patentably distinct from the [related parent
`patent] claims, and is evidence that could not have been presented earlier.”
`Petitioner also argues that the “Order impacts the analysis of the Proximity
`Factor (Factor 2), as the three month court closure is likely to further delay
`the district court trial of these patents, and also could not have been
`presented earlier.” Petitioner represents that “[t]he parties have conferred,
`and Patent Owner does not oppose, but believes the new exhibits do not
`impact the issues presented in the rehearing request.”
`Because the order from case 2:19-cv-00152-JRG “impacts the docket
`schedule and is not already of record,” Petitioner is authorized to file the
`order as an exhibit in each of the above-captioned proceedings within three
`business days of the date of this Order. See, e.g., Paper 11 in PGR2020-
`00046 (authorizing the filing of papers that impact the docket schedule of
`related district court proceeding).
`Also, because Petitioner contends that the order affects our analysis of
`one of the factors from Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`
`2
`
`
`
`PGR2020-00043 (US 10,328,346 B2)
`PGR2020-00046 (US 10,328,347 B2)
`PGR2020-00049 (US 10,335,689 B2)
`PGR2020-00053 (US 10,335,683 B2)
`
`at 5–6 (PTAB Mar. 20, 2020) (precedential), Petitioner is authorized to file a
`brief with no more than five pages of argument discussing how the order
`affects the analysis of the Decision denying institution in these proceedings.
`The brief should be filed within one week of the date of this Order.
`Patent Owner is authorized to file a brief of no more than five pages
`of argument responding only to the contentions in Petitioner’s brief within
`one week of service of Petitioner’s brief. At this time, no new evidence is
`authorized to be filed with the above-described briefs.
`Finally, the panel appreciates Petitioner bringing the Federal Circuit
`decision to our attention, but we see no need to file a separate copy as an
`exhibit in the above-captioned proceedings. If the parties need to cite to the
`decision, they should cite to the slip opinion or another widely available case
`reporter.
`
`
`ORDER
`
`It is hereby:
`ORDERED that Petitioner is authorized to file as an exhibit in each of
`the above-listed proceedings, within three business days of the date of this
`paper, the order for case 2:19-cv-00152-JRG that puts on hold all jury trials
`in the U.S. District Court for the Eastern District of Texas until March 2021;
`FURTHER ORDERED that Petitioner is authorized to file a brief
`within one week of the date of this paper with no more than five pages of
`argument discussing how the district court order affects the analysis of the
`Decision denying institution in these proceedings; and
`
`3
`
`
`
`PGR2020-00043 (US 10,328,346 B2)
`PGR2020-00046 (US 10,328,347 B2)
`PGR2020-00049 (US 10,335,689 B2)
`PGR2020-00053 (US 10,335,683 B2)
`
`
`FURTHER ORDERED that Patent Owner is authorized to file a brief
`of no more than five pages of argument responding only to the contentions
`in Petitioner’s brief within one week of service of Petitioner’s brief.
`
`FOR PETITIONER:
`Brian M. Hoffman
`Kevin X. McGann
`Jennifer R. Bush
`Gregory A. Hopewell
`Eric Y. Zhou
`FENWICK & WEST LLP
`BHoffman-PTAB@fenwick.com
`KMcGann-PTAB@fenwick.com
`JBush-PTAB@fenwick.com
`GHopewell@fenwick.com
`EZhou@fenwick.com
`
`
`FOR PATENT OWNER:
`
`John C. Alemanni
`Andrew Rinehart
`Joshua H. Lee
`KILPATRICK TOWNSEND LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`jlee@kilpatricktownsend.com
`
`Scott A. McKeown
`ROPES & GRAY
`Scott.McKeown@ropesgray.com
`
`
`4
`
`
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