Trials@uspto.gov
`571-272-7822
`
`Paper 14
`Date: October 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00049
`Patent 10,335,689 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
`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 1–12 of
`U.S. Patent No. 10,335,689 B2 (Ex. 1001, “the ’689 patent”). GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`
`
`
`571-272-7822
`
`Paper 14
`Date: October 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`v.
`GREE INC.,
`Patent Owner.
`
`PGR2020-00049
`Patent 10,335,689 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
`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 1–12 of
`U.S. Patent No. 10,335,689 B2 (Ex. 1001, “the ’689 patent”). GREE, Inc.
`(“Patent Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`
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`PGR2020-00049
`Patent 10,335,689 B2
`With our authorization, the parties also filed a Petitioner’s Reply to Patent
`Owner’s Preliminary Response (Paper 8, “Reply”) and Patent Owner’s Sur-
`reply to Petitioner’s Reply to Patent Owner’s Preliminary Response (Paper
`9, “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 4, 2.
`C. Related Matters
`The parties indicate that the ’689 patent is involved in GREE, Inc. v.
`Supercell Oy, No. 2:19-cv-00237-JRG-RSP (E.D. Tex.). Pet. 1; Paper 4, 2–
`3. Trial is set for March 1, 2021, in the parallel district court proceeding.
`Ex. 1028 (Amended Docket Control Order entered Oct. 7, 2020).
`D. The ’689 Patent (Ex. 1001)
`The ’689 patent issued on July 2, 2019, from an application filed on
`March 31, 2017, that is a continuation of an application filed on September
`10, 2014, and claims priority to a foreign application filed on December 27,
`2013. Ex. 1001, codes (22), (30), (45), (63), 1:9–13.
`The ’689 patent relates to “a battle game in which users each operate a
`unit” on a computer. Id. at code (57). The computer “var[ies] the unit
`parameter of a first unit on the field based on the group information
`associated with the first unit and the group information associated with a
`second unit on the field, the second unit having a predetermined positional
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`PGR2020-00049
`Patent 10,335,689 B2
`relationship with the first unit” and then “conduct[s] a battle between the
`first unit and other units using the varied unit parameter.” Id.
`E. Illustrative Claim
`The ’689 patent has 12 claims, all of which Petitioner challenges.
`Claims 1, 5, and 9 are independent, and claim 1 is reproduced below.
`1.
`A non-transitory computer readable recording
`medium having stored thereon instructions to be executed on a
`computer, the instructions causing the computer to perform steps
`of:
`
`deploying a plurality of units on a field displayed on a
`display, the plurality of units being movable in the field;
`varying an attack strength of a first unit among the
`plurality of units so that the attack strength of the first unit, in
`response to the first unit and a second unit among the plurality of
`units satisfying a first positional relationship by a movement of
`at least one of the first unit and the second unit, is decreased to
`be lower than the attack strength of the first unit when the first
`unit and the second unit do not satisfy the first positional
`relationship, wherein the attack strength is an attack strength for
`attacking a stronghold on the field and attacking a third unit, the
`first unit and the third unit not belonging to an identical group;
`and
`
`attacking the stronghold by the first unit and the second
`
`unit,
`
`wherein the first positional relationship is satisfied by the
`movement causing the second unit to be located within a first
`range of the first unit.
`Ex. 1001, 14:19–41.
`F. Asserted Prior Art and Proffered Testimonial Evidence
`Petitioner identifies the following references as prior art in the
`asserted grounds of unpatentability:
`(1) Loe, Casey, Valkyria Chronicles: BradyGames Official Strategy
`Guide, BradyGames, 2008 (Ex. 1003, “VCSG”); and
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`(2) forum posts titled “stats/orders/potentials guide * spoilers* posted
`on Valkyria Chronicles Message Board for PlayStation 3, Gamefaqs, Parts 1
`and 2, (available at
`https://web.archive.org/web/20120423232250/http://www.gamefaqs.com/bo
`ards/942165-valkyria-chronicles/50848418 and
`https://web.archive.org/web/20120501133143/http://www.gamefaqs.com/bo
`ards/942165-valkyria-chronicles/50848418?page=1) (Ex. 1004, “Busard”).
`Petitioner also provides a Declaration of Stephen H. Lane, Ph.D.
`Ex. 1012.
`G. Asserted Grounds
`Petitioner asserts that claims 1–12 would have been unpatentable on
`the following grounds:
`Claims Challenged
`1–12
`1, 3–5, 7–9, 11, 12
`2, 6, 10
`
`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
`claimed invention that has an effective filing date on or after March 16,
`2013. AIA § 3(n)(1). Because the application from which the ’689 patent
`issued was filed on March 31, 2017, and claims priority to a foreign
`application filed on December 27, 2013, the ’689 patent is subject to the first
`inventor to file provisions of the AIA. Ex. 1001, codes (22), (30), 1:9–13.
`
`References/Basis
`Eligibility
`VCSG, Busard
`VCSG, Busard, general knowledge
`
`35 U.S.C. §
`101
`103
`103
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`Also, “[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 April 1, 2020, which is within nine months of July 2, 2019, the issue
`date of the ’689 patent. Ex. 1001, code (45); see also Pet. 2 (arguing that the
`Petition is timely filed); Paper 3 (according a filing date of April 1, 2020).
`On this record, the ’689 patent is eligible for post-grant review.
`
`
`II. 35 U.S.C. § 324(a)
`Patent Owner argues that “the Board should exercise its discretion
`under 35 U.S.C. § 324(a) to deny the Petition 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.
`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
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`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
`13 at 5‒7 (PTAB Sept. 3, 2020) and PGR2020-00038, Paper 14 at 6–8 (Sept.
`3, 2020) (applying the Fintiv Order factors to post-grant reviews and
`denying trial).
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`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 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 (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 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).
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`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. 91–92. Petitioner notes that the parallel litigation is
`occurring in a district operating under “emergency procedures and restricted
`operations.” Id. at 91 (citing Ex. 1011; Ex. 1015).
`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
`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
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`district court has already adjusted the trial date in view of [the COVID-19]
`impact in response to Petitioner’s recent request.” Prelim. Resp. 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. 1021, 3). Petitioner further argues that the
`trial date has already been delayed because “Petitioner is unable to take
`discovery of GREE’s Japan-based witnesses” and “it is unlikely that the
`parties will be able to complete discovery and . . . conduct a December
`trial.” Id. at 3 (citing Ex. 1015; Ex. 1022, 2–5; Ex. 1024, 10, 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 seven months after the
`trial date in the parallel district court proceeding. Ex. 1028. 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.
`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 though the district court moved the trial date recently to
`March 1, 2021, the trial would still occur several months before the due date
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`for a final written decision in this proceeding. Ex. 1028. Therefore, 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 seven
`months before the statutory due date should review be instituted in this
`proceeding, we determine that this factor weighs slightly 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, inter alia, fact discovery, expert discovery, and pretrial
`disclosures. Prelim. Resp. 14–15 (citing Ex. 1017; 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 ’689 patent issued and the complaint was amended to
`include the ’689 patent. Prelim. Resp. 17 (citing Ex. 1001; Ex. 2003).
`According to Patent Owner, there is an unexplained delay and Petitioner
`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. 2004;
`Ex. 2005; Ex. 2006).
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`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 4. 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. 17–18; Reply 4). Patent Owner further
`argues that it “disclosed its asserted claims months before the Petition was
`filed” and “Petitioner challenges all claims of the ’689 Patent.” Id. at 4–5
`(citing Ex. 2004, 2).
`In the parallel proceeding, at least claim construction is complete.
`Ex. 1028, 3. The district court and the parties have made some investments
`in the parallel proceeding, which weigh 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 fact discovery, 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 associated with conducting 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.
`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. Petitioner complied with 35 U.S.C. § 321(c), even
`though the Petition was filed just before the end of the nine month window.
`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
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`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. Id. at 21 (citing
`Pet. 3, 16–20; Ex. 1003; Ex. 1004; Ex. 2005, 10, 13; Ex. 2006, 1 n.1).
`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 (citing Pet. 1, 29–52, 54–79; Ex. 1001, 14:42–44, 15:8–9,
`16:14–16; Ex. 2004, 2, 42–62; Ex. 2005, 1, 20; Ex. 2006, 2–64).
`Petitioner replies that “[s]hould [Patent Owner] 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.
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`Patent Owner replies that “Petitioner argues that the challenged claims
`effectively rise or fall together.” Sur-reply 5 (citing Pet. 29–87; 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.
`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.
`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. 25 (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
`
`
`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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`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.
`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 ’689 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. 91 (quoting TPG 56). Petitioner also argues that
`“[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. 26–27. 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
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`circumstances would not be consistent with the AIA’s objective of providing
`an alternative to district court litigation. Id. at 27. 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.”
`Id. at 24–25 (citing Supercell Oy v. GREE, Inc., IPR2020-00215, Paper 7 at
`2–3 (PTAB Mar. 31, 2020); Pet. 90–92).
`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. According to Petitioner, Patent Owner’s “twisted application
`of the six Fintiv factors . . . undermines the paramount interest.” Id.
`Petitioner also argues that the application of the Fintiv Order factors should
`take into 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 PGR, allowing
`patent owners to sidestep PGRs altogether by filing in fast-moving
`jurisdictions.” Id. at 1–2.
`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
`precedential decisions have already addressed Petitioner’s policy arguments
`and “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.
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`PGR2020-00049
`Patent 10,335,689 B2
`The Director under 35 U.S.C. § 324(a) has discretion to determine
`whether to institute trial. We agree with Patent Owner that our 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. 3,
`29–52. Petitioner also argues that, during examination of the application
`that led to the ’689 patent, the Examiner did not address the 2019 Revised
`Patent Subject Matter Eligibility Guidance. Id. at 7–13.
`Patent Owner responds that the Examiner did consider eligibility
`under § 101 and that the 2019 Revised Patent Subject Matter Eligibility
`Guidance merely revised examination procedure. Prelim. Resp. 29–30
`(citing Ex. 1002, 259–264, 419–423, 476–481, 626–633, 729, 1822–1826),
`31–33 (citing Pet. 34; Ex. 1002, 631, 729). In particular, Patent Owner
`argues that the Examiner made a rejection under § 101 and then withdrew
`the rejection after new claims were presented that were compared to an
`example from Appendix 1 of the July 2015 Update to Subject Matter
`Eligibility. Id. at 29–30 (citing Ex. 1002, 259–264, 626–633, 729), 32
`(citing Ex. 1002, 631). Patent Owner also argues that the Board should not
`“second-guess this issue of patentability” and quotes 35 U.S.C. § 325(d). Id.
`at 30.
`
`16
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`PGR2020-00049
`Patent 10,335,689 B2
`Petitioner replies that the merits are strong. Reply 5. Patent Owner
`replies 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. 26–30).
`Based on the present record, Petitioner shows it is more likely than
`not that claims 1–12 of the ’689 patent are not directed toward patent-
`eligible subject matter. Even if the Examiner had made and withdrawn a
`rejection under § 101, the challenged claims do not appear to be similar to
`claim 4 of Example 23 of the July 2015 Appendix 1 Examples. The
`challenged claims recite varying an attack strength of a displayed unit, but
`the example claim is directed to a graphical user interface for relocating
`obscured text. Compare Ex. 1001, 14:19–16:25 with July 2015 Update
`Appendix 1: Examples (available at https://www.uspto.gov/patent/laws-
`and-regulations/examination-policy/subject-matter-eligibility-examination-
`guidance-date). The challenged claims do not require a graphical user
`interface, nor do they require that varying the attack strength of the
`displayed unit affects the computer display in any manner. See Ex. 1001,
`14:19–16:25.
`For at least the above reasons, an initial review of the merits of
`Petitioner’s challenge under § 101 suggests that the merits are strong, which
`weighs in favor of instituting.
`(2) Challenge Under 35 U.S.C. § 103
`Petitioner argues that VCSG teaches or suggests most limitations of
`independent claims 1, 5, and 9 with citations to the reference and declarant
`testimony. Pet. 54–63, 66–78, 81–83, 84–86. With support from the record,
`Petitioner relies on Busard for teaching explicitly the positional relationship
`between units that results in a lower attack strength. Id. at 63–66, 76, 78–79.
`
`17
`
`
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`PGR2020-00049
`Patent 10,335,689 B2
`Petitioner also argues that VCSG and Busard disclose the limitations of
`dependent claims 2–8 and 10–12. Id. at 79–81, 83–84, 86–89. Petitioner
`further argues with support from declarant testimony that one of ordinary
`skill in the art would have been motivated to combine VCSG and Busard.
`Id. at 52–54.
`Patent Owner responds that “Petitioner has failed to establish that
`VCSG is in fact a ‘printed publication.’” Prelim. Resp. 33. Patent Owner
`argues that Petitioner’s declarations for supporting the public accessibility of
`VCSG show only that it can be located now, not that VCSG was
`meaningfully indexed before the priority date of the claims. Id. at 33–34,
`36, 37, 38. According to Patent Owner, Petitioner’s evidence does not
`include any showing regarding indexing and fails to demonstrate that one of
`ordinary skill in the art using reasonable diligence could have located VCSG
`before the critical date. Id. at 34, 37, 38.
`Patent Owner also argues that Petitioner has failed to show, assuming
`authenticity, that Busard was publicly accessible before the critical date. Id.
`at 39–40 (citing Pet. 3, 19–27; Ex. 1004; Ex. 1005 ¶ 4). In Patent Owner’s
`view, technical availability does not show public accessibility, and Petitioner
`provides no evidence that Busard was indexed or cataloged so that “a person
`of ordinary skill in the art would have independently been aware of, or
`directed to, the web posts [of Busard] prior to that date absent such
`indexing.” Id. at 40, 45 (citing Pet. 20); see also Sur-reply 7 (arguing
`similarly) (citing Prelim. Resp. 44–45). With support from other Board
`decisions, Patent Owner argues that Petitioner fails to identify with
`particularity evidence sufficient to show public accessibility. Id. at 40–44,
`46–47. Patent Owner contends that Petitioner’s evidence merely shows that
`Busard was available online, does not address indexing or cataloging, and
`
`18
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`
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`PGR2020-00049
`Patent 10,335,689 B2
`insufficiently explains how one of ordinary skill in the art would have found
`Busard. Id. at 44–46 (citing Ex. 1005; Ex. 1009; Ex. 1012 ¶ 31).
`Pet
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