Trials@uspto.gov
`571-272-7822
`
`Paper 13
`Date: October 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00046
`Patent 10,328,347 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`Granting Petitioner’s Motion to Seal
`35 U.S.C. § 324, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`A. Background and Summary
`Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of a post-grant review of claims 1–30 of
`U.S. Patent No. 10,328,347 B2 (Ex. 1001, “the ’347 patent”). GREE, Inc.
`
`
`
`
`571-272-7822
`
`Paper 13
`Date: October 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00046
`Patent 10,328,347 B2
`
`
`
`
`
`
`
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`JUNG, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Post-Grant Review
`Granting Petitioner’s Motion to Seal
`35 U.S.C. § 324, 37 C.F.R. § 42.4
`
`INTRODUCTION
`I.
`A. Background and Summary
`Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting institution of a post-grant review of claims 1–30 of
`U.S. Patent No. 10,328,347 B2 (Ex. 1001, “the ’347 patent”). GREE, Inc.
`
`
`
`
`
`PGR2020-00046
`Patent 10,328,347 B2
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`Petitioner also filed a Motion to Seal Exhibit 1026 and for Entry of
`Protective Order (Paper 8, “Mot.”). With our authorization, the parties
`further filed a Petitioner’s Reply to Patent Owner’s Preliminary Response
`(Paper 9, “Reply”) and Patent Owner’s Sur-reply to Petitioner’s Reply to
`Patent Owner’s Preliminary Response (Paper 10, “Sur-reply”).
`Upon consideration of the parties’ briefs and the evidence of record
`and for the reasons explained below, we exercise our discretion under 35
`U.S.C. § 324(a) to deny institution of a post-grant review.
`B. Real Parties in Interest
`Petitioner states that “[t]he sole real party-in-interest for this Petition
`is Supercell Oy.” Pet. 1. Patent Owner states that “the real party-in-interest
`is GREE, Inc.” Paper 3, 2.
`C. Related Matters
`The parties indicate that the ’347 patent is involved in GREE, Inc. v.
`Supercell Oy, No. 2:19-cv-00200-JRG-RSP (E.D. Tex.). Pet. 1; Paper 3, 3.
`Trial is set for December 7, 2020 in the parallel district court proceeding.
`Ex. 1027 (Fourth Amended Docket Control Order).
`The ’347 patent issued from an application that is a continuation of
`U.S. Patent No. 9,597,594, which was at issue in Supercell Oy v. GREE,
`Inc., PGR2018-00008. Ex. 1001, code (63). Certain claims of that related
`patent were determined to be unpatentable. Supercell Oy v. GREE, Inc.,
`PGR2018-00008, Paper 42 at 58 (PTAB Jan. 2, 2019) (Final Written
`Decision).
`D. The ’347 Patent (Ex. 1001)
`The ’347 patent issued on June 25, 2019 from an application filed on
`June 29, 2017 and claims priority to foreign applications, the earliest of
`
`2
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`PGR2020-00046
`Patent 10,328,347 B2
`which was filed on September 27, 2013. Ex. 1001, codes (22), (30), (45),
`1:7–16.
`The ’347 patent provides “a method for controlling a computer, etc.,
`which makes it possible to improve the usability of city building games.” Id.
`at code (57). “The computer is provided with a storage unit configured to
`store game contents arranged within a game space, positions of the game
`contents, and a template defining positions of one or more of game
`contents.” Id. “The method includes when the template is applied to a
`predetermined area within the game space based on the command by the
`player, moving, by the computer, the game contents arranged within the
`game space to the positions of the game contents defined by the template.”
`Id.
`E. Illustrative Claim
`The ’347 patent has 30 claims, all of which Petitioner challenges.
`Claims 1, 10, 19, and 28 are independent, and claim 1 is reproduced below.
`A method performed by an electronic device, the method
`comprising:
`executing a game by arranging game contents within a
`game space based on a command by a first player, the game
`contents including at least a game content for defending from an
`attack initiated by another player;
`storing, in a memory, types and positions of the game
`contents arranged within the game space;
`receiving, from a server, an event start notification
`corresponding to an event in the game;
`receiving information for reproducing a template for
`defending an attack initiated by another player; and
`applying the template to a game space by allocating one or
`more of the game contents to positions defined by the template
`based on a command received at an interface of the electronic
`device.
`Ex. 1001, 26:35–50.
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`PGR2020-00046
`Patent 10,328,347 B2
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following as prior art in the asserted grounds
`of unpatentability:
`(1) Clash of Clans version 4.120 video game described in a
`Declaration of Antti Takala (Ex. 1010, “Clash of Clans”);
`(2) Forum posts attached as Exhibit A to a Declaration of Sean
`Olesiuk who wrote the posts under the user name “Mastermind” (Ex. 1011,
`“Mastermind”); and
`(3) U.S. Patent No. 9,079,105 B2, filed May 22, 2012, issued July 14,
`2015 (Ex. 1012, “Kim”).
`Pet. 41–42 (arguing that Clash of Clans and Mastermind are prior art under
`at least 35 U.S.C. § 102(a)(1) and Kim is prior art under at least § 102(a)(1)
`and (2)). Petitioner also provides a Declaration of Mark L. Claypool, Ph.D.
`Ex. 1008.
`G. Asserted Grounds
`Petitioner asserts that claims 1–30 would have been unpatentable on
`the following grounds:
`Claims Challenged
`1–30
`1–30
`
`H. Eligibility for Post-Grant Review
`The post-grant review (“PGR”) provisions of the Leahy-Smith
`America Invents Act (“AIA”)1 apply only to patents subject to the first
`inventor to file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
`first inventor to file provisions apply to any application for patent, and to
`any patent issuing thereon, that contains or contained at any time a claim to a
`
`References/Basis
`Eligibility
`Clash of Clans, Mastermind, Kim
`
`35 U.S.C. §
`101
`103
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
`
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`PGR2020-00046
`Patent 10,328,347 B2
`claimed invention that has an effective filing date on or after March 16,
`2013. AIA § 3(n)(1). Because the application from which the ’347 patent
`issued was filed on June 29, 2017 and the earliest foreign application it
`claims priority to was filed on September 27, 2013, the ’347 patent is subject
`to the first inventor to file provisions of the AIA. Ex. 1001, codes (22), (30),
`1:7–16.
`Furthermore, “[a] petition for a post-grant review may only be filed
`not later than the date that is 9 months after the date of the grant of the patent
`or of the issuance of a reissue patent (as the case may be).” 35 U.S.C.
`§ 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the same). The
`Petition was filed on March 24, 2020, which is within nine months of
`June 25, 2019, the issue date of the ’347 patent. Ex. 1001, code (45); see
`also Pet. 2 (arguing that the Petition is timely filed). On this record, the ’347
`patent is eligible for post-grant review.
`
`
`II. 35 U.S.C. § 324(a)
`Patent Owner argues that we should exercise our discretion under 35
`U.S.C. § 324(a) to deny institution “because Petitioner raises the same prior
`art and arguments in a parallel district court proceeding filed more than one
`year ago and scheduled for trial in less than five months.” Prelim. Resp. 1.
`A. Legal Standards
`35 U.S.C. § 324(a) states that
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
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`PGR2020-00046
`Patent 10,328,347 B2
`Like 35 U.S.C. § 314(a) that applies to inter partes reviews, the
`language of § 324(a) expressly provides the Director with discretion to deny
`institution of a post-grant review. See Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
`matter committed to the Patent Office’s discretion.”); Consolidated Trial
`Practice Guide November 2019 (“TPG”) at 55.
`In exercising the Director’s discretion under §§ 314(a) and 324(a), the
`Board may consider “events in other proceedings related to the same patent,
`either at the Office, in district courts, or the ITC.” TPG at 58. NHK Spring
`explains that the Board may consider the advanced state of a related district
`court proceeding, among other considerations, as a “factor that weighs in
`favor of denying the Petition under § 314(a).” NHK Spring Co. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018)
`(precedential). Additionally, the Board’s precedential order in Apple Inc. v.
`Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020)
`(precedential) (“the Fintiv Order”) identifies several factors for analyzing
`issues related to the Director’s discretion to deny institution, with the goal of
`balancing efficiency, fairness, and patent quality.
`NHK Spring and the Fintiv Order apply the Director’s discretion
`pursuant to § 314(a), and do not specifically extend their application to
`§ 324(a). The statutory language of both §§ 314(a) and 324(a), however,
`provides the Director with discretion to deny institution of review.
`Moreover, the overall policy justifications associated with exercising
`discretion under § 314(a)—inefficiency, duplication of effort, and the risk of
`inconsistent results—apply to exercising discretion under § 324(a). Thus, as
`shown below, we weigh the factors set forth in the Fintiv Order to this
`proceeding. See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034, Paper
`
`6
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`PGR2020-00046
`Patent 10,328,347 B2
`13 at 5‒7 (PTAB Sept. 3, 2020) and PGR2020-00038, Paper 14 at 6–8
`(PTAB Sept. 3, 2020) (applying the Fintiv Order to deny post-grant
`reviews).
`Also, as discussed below, there are differences between inter partes
`reviews and post-grant reviews that, when relevant to specific Fintiv Order
`factors, must be considered. Those differences include the fact that the
`window for filing a petition for post-grant review is open only for nine
`months from the date of issuance. See 35 U.S.C. § 321(c). Furthermore,
`“[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
`against new patent challenges unbounded in time and scope.” H.R. Rep.
`No. 112-98, pt. 1, 47–48 (2011).
`B. Applying the Fintiv Order Factors
`1. Whether the Court Granted a Stay or Evidence Exists that one
`may be Granted if a Proceeding is Instituted
`Patent Owner argues that “Petitioner has not filed any motion to stay
`the parallel district court proceeding” and “there is little evidence here to
`suggest that the district court will grant a stay.” Prelim. Resp. 9–10. Patent
`Owner also argues that a stay is “extremely unlikely” because stays are
`denied before institution and an institution decision is due only a “couple
`months before the jury trial in the parallel district court proceeding.” Id. at
`10.
`
`Petitioner replies that institution is highly significant in determining
`whether to stay district court cases and states that it “has not yet sought a
`stay but will do so should the PGR be instituted.” Reply 2–3 (citing
`Prelim. Resp. 10). Patent Owner replies that “there is no evidence here to
`suggest that the district court will grant a stay should this proceeding be
`
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`PGR2020-00046
`Patent 10,328,347 B2
`instituted,” an intent to seek a stay is not evidence that the district court will
`grant a stay, and a “stay pending an administrative proceeding is not
`automatic.” Sur-reply 2 (citing Prelim. Resp. 9–10; Reply 3).
`Because the district court has not yet granted a stay and the record
`does not include any evidence that a stay, if requested, would be granted, we
`determine that the facts underlying this factor are neutral.
`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline for a Final Written Decision
`Related to the trial date, Petitioner argues that the “most efficient
`course of action” is a post-grant review because “courts are wrestling with
`how to manage their calendars and ensure public safety during the
`pandemic.” Pet. 76–77. Petitioner notes that the parallel litigation is
`occurring in a district operating under “emergency procedures and restricted
`operations.” Id. (citing Ex. 1017; Ex. 1018).
`Patent Owner argues that a “jury trial in the parallel district court
`proceeding is set to begin on December 7, 2020” and thus, “scheduled to
`conclude approximately ten months before a final written decision would be
`due in this proceeding.” Prelim. Resp. 11. Patent Owner lists several
`proceedings where the Board has denied institution when there was a smaller
`gap between trial date and due date for a final written decision. Id. Patent
`Owner also argues that the trial date should be taken at “face value” and the
`scheduled trial date should outweigh speculation about delay. Id. at 12.
`Patent Owner further argues that any delay of the trial date “is not
`likely to impact the Board exercising its discretion to deny institution under
`§ 324(a)” because a delayed trial “will still likely conclude well before a
`final written decision would be due in this proceeding.” Id. at 13; see also
`Sur-reply 3 (presenting similar argument). Petitioner replies that the trial
`
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`PGR2020-00046
`Patent 10,328,347 B2
`date is “very likely to change,” “‘often reset’” when Board review is
`instituted, and “‘tend[s] to slip in significant regard.’” Reply 3 (citing
`Ex. 1020, 3; Ex. 1021, 2). Patent Owner additionally responds that “the
`district court has already adjusted the trial date in view of [the COVID-19]
`impact in response to Petitioner’s recent request.” Id. at 11–12 (citing
`Ex. 2001, 1; Ex. 2002).
`Petitioner replies that “delays are only getting worse in light of
`COVID-19.” Reply 3 (citing Ex. 1020, 3). Petitioner further argues that the
`trial date has already been delayed to December because “Petitioner is
`unable to take discovery of GREE’s Japan-based witnesses” and “it is
`unlikely that Japan’s travel ban will be lifted in time for the parties to
`complete discovery and conduct a December trial.” Id. at 3–4 (citing
`Ex. 1022, 2–5; Ex. 1023, 4; Ex. 1024, 12; Ex. 2002, 3–8).
`Patent Owner replies that Petitioner’s arguments regarding discovery
`of the Japan-based witness and Japan’s travel ban are “based on pure
`speculation.” Sur-reply 2 (citing Reply 3–4). Patent Owner also argues that
`any speculation about further delays in trial date does not outweigh that
`“trial will still end many months before October 2021, when a final written
`decision would be due.” Id. at 3 (citing Prelim. Resp. 12–13; Reply 3).
`The record clearly shows that, if post-grant review were instituted in
`this proceeding, a final written decision would be due ten months after the
`currently scheduled trial date in the parallel district court proceeding.
`Ex. 1023; Ex. 2001. Given the considerable overlap in claims, prior art, and
`arguments as described below, institution would create a potential for the
`district court proceeding and the post-grant review to arrive at inconsistent
`results spaced months apart.
`
`9
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`PGR2020-00046
`Patent 10,328,347 B2
`As for possible trial date adjustments due to the COVID-19 pandemic
`and the impact of the pandemic on discovery, the record does not contain
`any evidence beyond speculation to indicate that a further delay in the trial
`date is likely. Even if the district court granted another continuance like the
`one previously granted, the trial date would still be about seven months
`before the due date for a final written decision in this proceeding. Ex. 2002,
`2 (“[Petitioner] thus respectfully moves for a 45- to 60-day continuance of
`the remaining case deadlines, including the pretrial and trial dates.”).
`Therefore, even in view of Petitioner’s speculations, we agree with Patent
`Owner that this factor would weigh in favor of denying institution. See
`Prelim. Resp. 13; Sur-reply 3.
`For the reasons above, because a jury trial is set to begin ten months
`before the statutory due date should review be instituted in this proceeding,
`we determine that this factor weighs in favor of denying institution.
`3. Investment in the Parallel Proceeding by the Court and the
`Parties
`Patent Owner argues that the parties have completed claim
`construction briefing and, by the time institution is considered, will have
`completed, at least, fact discovery, expert discovery, and pretrial disclosures.
`Prelim. Resp. 14–15 (citing Ex. 1019; Ex. 2001, 2, 3). Patent Owner, thus,
`argues that the parallel district court proceeding is at an advanced stage and
`that the district court and parties have and will have invested substantial
`resources by the time institution is decided. Id. at 16–17.
`Patent Owner also argues that Petitioner did not file its petition until
`nine months after the ’347 patent issued and the complaint was amended to
`include the ’347 patent. Prelim. Resp. 17 (citing Ex. 1001; Ex. 2003).
`According to Patent Owner, there is an unexplained delay and Petitioner
`
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`PGR2020-00046
`Patent 10,328,347 B2
`must be using this proceeding “as a second-bite at the apple” to relitigate
`validity in a different venue, not as an alternative to district court litigation.
`Id. at 17–18. Patent Owner also contends that Petitioner served the same
`grounds and asserted the same references in the same way four months
`before filing its Petition in this proceeding. Id. at 18 (citing Ex. 1010 ¶ 3;
`Ex. 1011, 10; Ex. 2004; Ex. 2005; Ex. 2006; Ex. 2007; Ex. 2010, 9).
`Petitioner replies that “it is unclear which claims [Patent Owner] will
`pursue in district court” and Patent Owner “does not identify any unfair
`costs specifically resulting from the timing.” Reply 5. Patent Owner replies
`that Petitioner’s delay in filing imposes an unfair cost because “Patent
`Owner necessarily faces the prospect of having to re-litigate Petitioner’s
`same invalidity challenges . . . in front of this Board almost a year later.”
`Sur-reply 4 (citing Prelim. Resp. 17–19; Reply 5). Patent Owner further
`argues that it “disclosed its asserted claims months before the Petition was
`filed” and “Petitioner challenges all claims of the ’347 Patent.” Id. (citing
`Ex. 2004, 2).
`In the parallel district court proceeding, at least claim construction and
`fact discovery are complete. Ex. 1027, 3–4. The district court and the
`parties have made some investments in the parallel proceeding, which
`weighs in favor of denying institution. The investments thus far, however,
`are not substantial when compared to the activity that remains and appears to
`be ongoing. For example, activity related to expert discovery, filing and
`responding to dispositive motions and motions to strike expert testimony,
`and various pretrial actions remain. See id. at 1–3. The parties also still
`have to expend significant resources to conduct the trial itself, as well as
`potential post-trial proceedings. Therefore, the present investment related to
`the parallel proceeding weigh minimally in favor of denying institution.
`
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`PGR2020-00046
`Patent 10,328,347 B2
`As for the filing date of the Petition, 35 U.S.C. § 321(c) affords
`petitioner up to nine months after issuance of the patent to file a petition for
`post-grant review. The Petition was filed just before the end of the nine
`month window, and thus Petitioner complied with 35 U.S.C. § 321(c).
`Patent Owner does not make clear what effect filing late in the allowed
`window has on the investments made in the parallel proceeding by the
`parties and the court. See Prelim. Resp. 17–18. Thus, we are not persuaded
`that the timing of Petitioner’s filing of its petition is a reason to deny
`institution under this Fintiv Order factor.
`Based on the record, we determine that only minimal investments
`have been made so far in the parallel proceeding, and thus, this factor weighs
`moderately in favor of institution.
`4. Overlap Between Issues Raised in the Petition and in the Parallel
`Proceeding
`Patent Owner argues that “[t]here is substantial overlap between the
`claims, grounds, arguments, and evidence presented in the Petition and what
`has been, and continues to be, litigated in the parallel district court
`proceeding.” Prelim. Resp. 19. According to Patent Owner, Petitioner
`asserts the same prior art in the district court proceeding, and the same
`combination asserted in this proceeding has been identified as an exemplary
`combination in the district court proceeding. Id. at 19–21 (citing Pet. 10,
`41–42; Ex. 1011 ¶¶ 1–3; Ex. 2005, 9–11, 13; Ex. 2006; Ex. 2007). Patent
`Owner also argues that any additionally cited prior art is immaterial to this
`factor. Id. at 20 n.3. Patent Owner further argues that Petitioner presented
`substantially the same subject-matter eligibility and obviousness arguments
`against the same claims in the related district court proceeding. Id. at 21–23
`
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`Patent 10,328,347 B2
`(citing Pet. 14–40, 42–51, 60, 61, 62; Ex. 2004, 2, 49–98; Ex. 2005, 4, 20;
`Ex. 2006, 2–76; Ex. 2007, 2–5, 333–337, 661–666, 987–991).
`Petitioner replies that “[s]hould GREE reduce the number of claims it
`asserts in the parallel litigation and institution is denied, significant issues
`related to the unasserted claims would be left unaddressed and forever
`insulated from PGR,” and “the patent ineligibility standard under the current
`USPTO Guidance is different from the clear and convincing standard for
`jury trials” and thus, “different standards result in different issues between
`the two forums.” Reply 5.
`Patent Owner replies that “Petitioner argues that the challenged claims
`effectively rise or fall together.” Sur-reply 4–5 (citing Pet. 14–75; Reply 5).
`Patent Owner also argues that it may still be inefficient to institute review
`because the district court may decide the validity of enough claims to decide
`key issues in this proceeding. Id. at 5.
`The record shows that the same statutory grounds,2 the same
`arguments, and the same prior art evidence are at issue with respect to the
`exact same challenged claims. “[I]f the petition includes the same or
`substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding, this fact has favored denial” because
`“concerns of inefficiency and the possibility of conflicting decisions [are]
`particularly strong.” Fintiv Order, Paper 11 at 12. Also, Petitioner’s
`argument that Patent Owner may reduce the number of asserted claims at
`issue in the parallel proceeding is speculative.
`
`
`2 Despite Petitioner’s argument that the “patent ineligibility standard” at the
`Office “is different” from the standard for jury trials (Reply 5), the fact
`remains that ineligibility under 35 U.S.C. § 101, as asserted in this Petition,
`overlaps with that issue in the parallel proceeding.
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`PGR2020-00046
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`On this record, we determine that this factor weighs in favor of
`denying institution.
`5. Whether Petitioner and the Defendant in the Parallel Proceeding
`are the Same Party
`Patent Owner argues that “Petitioner and Patent Owner are the
`defendant and plaintiff, respectively, in the parallel district court
`proceeding.” Prelim. Resp. 24 (citing Pet. 1; Exs. 2001–2003).
`Petitioner replies that “[t]he ‘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” and “[n]o other party can file a
`PGR at this point.” Reply 5. Patent Owner does not provide a reply for this
`factor. See generally Sur-reply 4–5.
`The record shows that Petitioner and defendant in the parallel
`proceeding are the same. Although Petitioner correctly notes that no other
`party can file a petition for post-grant review of the ’347 patent because the
`filing window has closed and a defendant would be the most motivated to
`file such a petition, this factor only considers whether the petitioner and
`defendant are the same. Thus, this factor weighs in favor of denying
`institution.
`6. Other Circumstances that Impact the Board’s Exercise of
`Discretion, Including the Merits
`a) Congressional Intent and Public Policy
`Petitioner argues that “exercising discretion under § 324(a) to decline
`a single Petition filed within the statutory 9-month period undermines the
`AIA’s ‘design [] to establish a more efficient and streamlined patent system
`that will improve patent quality and limit unnecessary and counterproductive
`litigation costs.’” Pet. 76 (quoting TPG 56). Petitioner also argues that
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`“[f]orcing Petitioner to litigate validity in district court under a higher
`burden is therefore contrary to congressional intent.” Id. (citing Cuozzo, 136
`S. Ct. at 2143).
`With citations to other Board decisions, Patent Owner responds that
`there is no need for the Board to duplicate the “just and speedy adjudication
`of the same issue” in district court, and thus, there is no need for an efficient
`alternative. Prelim. Resp. 25–26. Patent Owner also responds that the
`Board need not address Petitioner’s policy arguments because the Director
`has designated precedential decisions that point out institution under these
`circumstances would not be consistent with the AIA’s objective of providing
`an alternative to district court litigation. Id. at 27; see also Sur-reply 1
`(arguing similarly). Patent Owner further argues that the Board has rejected
`the contention that denying institution based on the progress of a related
`district court proceeding would encourage patent owners to game the system
`by filing in fast-moving jurisdictions. Prelim. Resp. 24–25 (citing Pet. 76–
`77).
`
`Petitioner replies that the present proceeding would uphold the
`public’s interest in patents being within their legitimate scope, improve
`patent quality, and make the patent system more efficient, as intended by the
`AIA. Reply 1. Petitioner argues that the Office determined that the
`challenged claims are not patentably distinct from those found to recite
`ineligible subject matter in a previous post-grant review and those claims are
`asserted against Petitioner. Id. According to Petitioner, denying institution
`in this proceeding eliminates the early challenge that Congress intended for
`this type of situation and Patent Owner’s “twisted application of the six
`Fintiv factors . . . undermines this paramount interest.” Id. at 1–2. Petitioner
`also argues that the application of the Fintiv Order factors should take into
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`PGR2020-00046
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`consideration that petitions for post-grant reviews can only be filed within
`nine months of issuance and “[d]enying institution based on a district court
`setting a trial date before the [final written decision] deadline effectively
`prevents the patent from ever being subject to a [post-grant review],
`allowing patent owners to sidestep [post-grant reviews] altogether by filing
`in fast-moving jurisdictions.” Id. at 2.
`Patent Owner replies that “the possibility of duplication of efforts here
`is high, as is the potential for inconsistent results, due to both tribunals
`considering overlapping issues.” Sur-reply 1. Patent Owner also argues that
`“a balanced analysis of the Fintiv factors demonstrates that efficiency and
`integrity of the AIA are, in fact, best served by denying review pursuant to
`§ 324(a).” Id.
`The Director under 35 U.S.C. § 324(a) has discretion to determine
`whether to institute trial. We agree with Patent Owner that the precedential
`NHK Spring decision and Fintiv Order have already addressed Petitioner’s
`policy arguments. See Prelim. Resp. 27; Sur-reply 1. Therefore, Petitioner’s
`policy arguments do not provide a reason against denying institution.
`b) The Merits
`(1) Challenge Under 35 U.S.C. § 101
`Petitioner argues that the challenged claims are directed to an abstract
`idea by applying the analysis of Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
`U.S. 208, 227 (2014), related case law, and the USPTO 2019 Revised Patent
`Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Pet. 14,
`21–40. Petitioner also argues that, during examination of the application
`that led to the ’347 patent, the Examiner did not address the 2019 Revised
`Patent Subject Matter Eligibility Guidance. Id. at 17–19.
`
`16
`
`
`
`PGR2020-00046
`Patent 10,328,347 B2
`According to Petitioner, the claims of the ’347 patent “attempt to
`capture scope like those invalidated in PGR2018-00008” because the claims
`of the ’347 patent are substantially the same as the ones in PGR2018-00008,
`“uses equivalent language” for omitted steps, and adds steps that do not
`provide patent eligibility. Id. at 19–21, 22–23. Petitioner further argues that
`Patent Owner filed a terminal disclaimer for the ’347 patent because the
`Examiner found the claims are not patentably distinct from the ones at issue
`in PGR2018-00008 and Patent Owner argued the same during PGR2018-
`00008. Id. at 21 (citing Ex. 1004, 301; Supercell Oy v. GREE, PGR2018-
`00008, Paper 24 at 8–12 (PTAB July 3, 2018) (Patent Owner’s Response)),
`28; see also id. at 8 (summarizing relevant prosecution history) (citing
`Ex. 1002, 267, 308, 521–534, 568–570, 583–600).
`Patent Owner argues that “the merits of the grounds asserted in [the]
`instant Petition are far from strong.” Prelim. Resp. 24. Patent Owner
`specifically responds (1) that the Examiner did consider eligibility under
`§ 101 and the Board’s final written decision in PGR2018-00008 and (2) that
`the 2019 Revised Patent Subject Matter Eligibility Guidance merely revised
`examination procedure. Id. at 30 (citing Ex. 1002, 523, 585), 31–35 (citing
`Ex. 1002, 71–117, 123, 139–159, 221–249, 285, 268, 523, 585). Patent
`Owner argues that the Board should not “second-guess this issue of
`patentability” and quotes 35 U.S.C. § 325(d). Id. at 31. Patent Owner also
`argues that Petitioner speculates as to what happened during prosecution. Id.
`(citing Pet. 17–18). Patent Owner further argues that the Board’s prior
`decision in PGR2018-00008 does not control the analysis for the ’347 patent
`because a different claim construction standard applies to this proceeding.
`Id. at 35–36; see also Sur-reply 5 (presenting the same argument).
`
`17
`
`
`
`PGR2020-00046
`Patent 10,328,347 B2
`Petitioner replies that “the Board has already decided on the merits
`that non-distinct claims in the parent patent are nonstatutory” and thus,
`supports institution. Reply 5. Patent Owner counters that, even if strong,
`the merits do not justify institution given “the advanced stage of the parallel
`proceeding” and balancing of the Fintiv Order factors. Sur-reply 5 (citing
`Prelim. Resp. 24–27).
`Based on the present record, Petitioner shows it is more likely than
`not that claims 1–30 of the ’347 patent are directed toward patent-ineligible
`subject matter. Furthermore, the record at this stage indicates that the
`Examiner did not consider fully the implications of a double-patenting
`rejection, a subsequent filing of a terminal disclaimer, and a final written
`decision regarding the related claims that were the basis for the double-
`patenting rejection.
`For at least the above reasons, an initial review of the merits of
`Petitioner’s challenge under § 101 suggests that the merits are very strong,
`which weighs in favor of instituting.
`(2) Challenge Under 35 U.S.C. § 103
`Petitioner argues that claims 1–30 are unpatentable over Clash of
`Clans, Mastermind, and Kim. Pet. 41–75. With citations to the asserted
`prior art and declarant testimony, Petitioner argues where Clash of Clans,
`Mastermind, and Kim disclose or would have rendered obvious each of the
`limitations of claims 1–30. Id. at 42–73.
`Petitioner also argues with declarant support that one of ordinary skill
`in the art would have been motivated to combine Clash of Clans with
`Mastermind and Kim. Id. at 73–75. In particular, Petitioner contends that
`“Mastermind specifically suggests modifying Clash of Clans” and known
`methods would have been used to implement Mastermind’s base builder and
`
`18
`
`
`
`PGR2020-00046
`Patent 10,328,347 B2
`layout features into Clash of Clans. Id. at 73–74. Petitioner further contends
`that one of ordinary skill in the art would have implemented the proposed
`combination of Clash of Clans an
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