Case: 19-1864 Document: 59 Page: 1 Filed: 11/19/2020
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`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`GREE, INC.,
`Appellant
`
`v.
`
`SUPERCELL OY,
`Cross-Appellant
`______________________
`
`2019-1864, 2019-1960
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. PGR2018-
`00008.
`
`______________________
`
`Decided: November 19, 2020
`______________________
`
`JOHN C. ALEMANNI, Kilpatrick Townsend & Stockton
`LLP, Raleigh, NC, for appellant. Also represented by
`STEVEN MOORE, San Francisco, CA; ANDREW WILLIAM
`RINEHART, Winston-Salem, NC.
`
`MICHAEL JOHN SACKSTEDER, Fenwick & West, LLP,
`San Francisco, CA, for cross-appellant. Also represented
`by TODD RICHARD GREGORIAN; JENNIFER RENE BUSH,
`Mountain View, CA; GEOFFREY ROBERT MILLER, New York,
`NY; JESSICA KAEMPF, Seattle, WA.
`
`Supercell
`Exhibit 1018
`Page 1
`
`

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`GREE, INC. v. SUPERCELL OY
`
` ______________________
`
`Before LOURIE, HUGHES, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`This appeal relates to eligibility under 35 U.S.C. § 101.
`GREE, Inc. appeals from a final written decision by the Pa-
`tent Trial and Appeal Board holding claims 1, 8, and 10–20
`of U.S. Patent No. 9,597,594 ineligible. Supercell Oy cross-
`appeals the Board’s determination that Supercell did not
`show claims 2–7 and 9 of the ’594 patent to be patent inel-
`igible. We affirm the Board’s determination that claims 1,
`8, and 10–20 of the ’594 patent are directed to patent-inel-
`igible subject matter and its determination that claims 5–7
`are not directed to patent-ineligible subject matter. We re-
`verse the Board’s determination that claims 2–4 and 9 are
`not directed to patent-ineligible subject matter.
`BACKGROUND
`GREE is the assignee of the ’594 patent, titled “Com-
`puter Control Method, Control Program and Computer.”
`The specification of the ’594 patent describes the invention
`in the context of “city building games,” in which “a player
`builds a city within a virtual space (hereinafter referred to
`as ‘game space’) provided in the game program” in a com-
`puter. ’594 patent col. 1 ll. 27–30. Cities include arrange-
`ments of “game contents,” i.e., “items such as protective
`walls, buildings[,] . . . soldiers, weapons, etc.” Id. at col. 1
`ll. 46–48, 50–51. A computer “progresses a game by ar-
`ranging game contents within a game space based on a
`command by a player.” Id. at col. 3 ll. 19–21.
`“[I]n recent city building games, a city built by one
`player is attacked by a different player, and the city . . . is
`one of [the] factors for deciding the winning and losing”
`players. Id. at col. 1 ll. 45–49. As players build more com-
`plicated cities, “it is very complicated for a player to change
`positions, types, levels, etc., of individual items” in the
`
`Supercell
`Exhibit 1018
`Page 2
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`

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`cities. Id. at col. 1 ll. 50–53. “Therefore, many players have
`limited themselves to change only certain kinds of items,
`such as soldiers and weapons, for which changing posi-
`tions, types, levels, etc., is easy.” Id. at col. 1 ll. 55–58. This
`leads to the undesirable result, as the game progresses,
`that players may find the game increasingly “monotonous.”
`Id. at col. 1 ll. 58–60. The claimed invention sought to ad-
`dress this monotony problem by “provid[ing] a method for
`controlling a computer, a recording medium and a com-
`puter that improve the usability of city building games and
`continuously attract players to the game.” Id. at col. 1
`ll. 61–65.
`More specifically, the claimed invention employs tem-
`plates to improve the usability of city building games.
`Among other things, the claimed systems and methods in-
`volve creating a template defining positions of one or more
`game contents and subsequently applying the template to
`a predetermined area within the game space. Id. at col. 26
`ll. 33–46, col. 27 l. 44–col. 28 l. 23. “When the template is
`applied,” the computer “moves the game contents arranged
`within the game space to the positions of the game contents
`defined by the template.” Id. at col. 3 ll. 27–29.
`In some embodiments, the numbers of game contents
`of each type defined by the template match the numbers of
`game contents of each type in the game space to which the
`template is to be applied. Id. at col. 7 ll. 37–48 (disclosing
`an embodiment in which “[t]he number of types of facilities
`and the number of facilities in each type arranged within
`the game space 420 are equal to the number of types of fa-
`cilities and the number of facilities in each type . . . defined
`by the template”). In that case, “all [game contents] ar-
`ranged within the game space 420 are moved to positions
`of [game contents] as defined by the template.” Id. at col. 7
`ll. 43–45.
`In other embodiments, there is a mismatch between
`the numbers of game contents of each type defined by the
`
`Supercell
`Exhibit 1018
`Page 3
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`

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`GREE, INC. v. SUPERCELL OY
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`template and the numbers of game contents of each type in
`the game space to which the template is to be applied. E.g.,
`id. at col. 7 l. 54–col. 8 l. 29; see also id. at col. 11 ll. 25–28,
`38–63. For example, the number of game contents of each
`type within the game space may be larger than the number
`of game contents of each type defined by the template. In
`that case, “those [game contents] with the smallest moving
`distance (e.g., Manhattan distance) to positions of [game
`contents] defined by the template” may be “moved to the
`positions of [game contents]” as defined by the template.
`Id. at col. 7 ll. 61–64. Alternatively, the number of game
`contents of each type arranged within the game space may
`be smaller than the number of game contents of each type
`defined by the template. In that case, “all [game contents]
`arranged within the game space” may be “moved to posi-
`tions of [game contents] defined by the template 410, to
`which the moving distance is the smallest,” with “positions
`on which no [game contents] are arranged among the posi-
`tions of [game contents] defined by the template . . . illus-
`trated in a condition where the [game content] type is
`discernible.” Id. at col. 8 ll. 18–29. We refer to these em-
`bodiments in which the number of game contents defined
`by the template is not equal to the number of game con-
`tents in the game space to which the template is to be ap-
`plied as “mismatched template scenarios.”
`Claims 1, 10, 11, and 12 are independent claims.
`Claim 1 recites:
`1. A method for controlling a computer that is pro-
`vided with a storage unit configured to store game
`contents arranged within a game space, first posi-
`tions of the game contents within the game space,
`and a template defining second positions of one or
`more of the game contents, and that progresses a
`game by arranging the game contents within the
`game space based on a command by a player, the
`method comprising:
`
`Supercell
`Exhibit 1018
`Page 4
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`

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`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 at the first positions within the
`game space to the second positions of the game con-
`tents defined by the template within the predeter-
`mined area.
`Id. at col. 26 ll. 33–46.
`Claims 5–7 ultimately depend from claim 1 and are di-
`rected to mismatched template scenarios. They recite:
`5. The method according to claim 1, wherein
`when the number of game contents arranged
`within the game space is smaller than the number
`of game contents for which the second positions are
`defined by the template, the computer moves the
`game contents arranged at the first positions
`within the game space to the second positions of the
`game contents defined by the template to which the
`moving distance is the smallest.
`6. The method according to claim 5, wherein
`out of the second positions of the game contents de-
`fined by the template, the computer displays posi-
`tions on which no game contents are arranged and
`the game contents, in a discernible condition.
`7. The method according to claim 1, wherein
`when the number of game contents arranged
`within the game space is larger than the number of
`game contents for which the second position[s] are
`defined by the template, the computer moves the
`game contents arranged at the first positions
`within the game space for which the moving dis-
`tance to the second positions of the game contents
`defined by the template is the smallest, to the posi-
`tions.
`Id. at col. 27 ll. 8–30.
`
`Supercell
`Exhibit 1018
`Page 5
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`

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`GREE, INC. v. SUPERCELL OY
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`Supercell petitioned for post-grant review of the
`’594 patent in November 2017, asserting that claims 1–20
`are patent ineligible under 35 U.S.C. § 101. The Board in-
`stituted review of all challenged claims and, following trial
`proceedings, issued its final written decision finding claims
`1, 8, and 10–20 of the ’594 patent ineligible under § 101.
`At step one of the Alice two-step framework for deter-
`mining patent eligibility, the Board agreed with Supercell
`that the claims of the ’594 patent are directed to the ab-
`stract idea of “creating and applying a template of positions
`of one or more game contents.” Supercell Oy v. GREE, Inc.,
`No. PGR2018-00008, 2019 WL 80477, at *10, *16 (Jan. 2,
`2019); see Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
`208 (2014). The Board also found persuasive Supercell’s
`characterization of the independent claims of the ’594 pa-
`tent as simply automating the known game of correspond-
`ence chess, in which a “first player fills out a post card with
`information that represents the current state of the board
`and makes an indication on the post card of [the first]
`player’s intended move” and mails the post card to a second
`player who, “having already set up a chess board, moves a
`piece on the board in accordance with the instruction on
`the post card.” GREE, 2019 WL 80477, at *15 (citation
`omitted). The Board reasoned that the first player in cor-
`respondence chess “creates a template defining game con-
`tents” “by indicating on the post card the first player's
`intended move.” Id. (citation omitted).
`At Alice step two, the Board concluded that claims 1, 8,
`and 10–20 lacked an inventive concept. The Board deter-
`mined that the computer implementations recited in inde-
`pendent claims 1 and 10–12 “are ancillary, as opposed to a
`computer-specific improvement.” Id. at *18. With respect
`to claims 8 and 13–20, the Board discerned no meaningful
`distinctions of patentable significance over the independ-
`ent claims. See id. at *20–22. By contrast, the Board con-
`cluded that claims 2–7 and 9 each recite an inventive
`concept.
` The Board
`agreed with Supercell’s
`
`Supercell
`Exhibit 1018
`Page 6
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`

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`characterization of claims 2–4 and 9, but rejected Super-
`cell’s assertion that these claims confer no inventive con-
`cept, reasoning that Supercell failed to address “‘a template
`based on a combination of more than one template’ in some
`form or manner.” Id. at *19. Finally, with respect to claims
`5–7, the Board rejected Supercell’s assertion that these
`claims merely amount to “insignificant extra-solution ac-
`tivity.” Id. at *20. Using claim 5 as an example, the Board
`concluded that the added limitations “further define the
`concept of, or solution to, ‘creating and applying a template’
`itself,” because “there are potentially infinite ways” to ap-
`ply a template, and the “claim limitation explicitly specifies
`one such way” that Supercell had not demonstrated to be
`“conventional” or “obvious.” Id. As such, the Board held
`that at Alice step two, Supercell did not meet its “burden of
`showing that dependent claims 5–7 do not contain an in-
`ventive concept beyond the abstract idea of ‘creating and
`applying a template of positions of one or more game con-
`tents.’” Id. (emphasis added).
`GREE and Supercell appeal. We have jurisdiction pur-
`suant to 28 U.S.C. § 1295(a)(4).
`DISCUSSION
`I
`We review the Board’s factual findings for substantial
`evidence, 5 U.S.C. § 706(2)(E), and review de novo its legal
`conclusions. Credit Acceptance Corp. v. Westlake Servs.,
`859 F.3d 1044, 1048 (Fed. Cir. 2017) (citing Synopsys, Inc.
`v. Mentor Graphics Corp., 814 F.3d 1309, 1314 (Fed. Cir.
`2016)). Patent eligibility under § 101 is ultimately a ques-
`tion of law that may contain underlying issues of fact.
`Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)
`(first citing Intellectual Ventures I LLC v. Capital One Fin.
`Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017); and then citing
`Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314, 1325 (Fed. Cir. 2016)). We review de novo
`the Board’s conclusions with respect to patent eligibility
`
`Supercell
`Exhibit 1018
`Page 7
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`

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`GREE, INC. v. SUPERCELL OY
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`under § 101. Credit Acceptance, 859 F.3d at 1053 (citing
`Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1236
`(Fed. Cir. 2016)).
`Section 101 defines patent-eligible subject matter as
`“any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement
`thereof.” 35 U.S.C. § 101. The Supreme Court has held
`that this provision “contains an important implicit excep-
`tion: Laws of nature, natural phenomena, and abstract
`ideas are not patentable.” Alice, 573 U.S. at 216 (quoting
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`569 U.S. 576, 589 (2013)). The “Supreme Court articulated
`a two-step test for examining patent eligibility when a pa-
`tent claim is alleged to involve one of these three types of
`subject matter.” CardioNet, LLC v. InfoBionic, Inc.,
`955 F.3d 1358, 1367 (Fed. Cir. 2020); see Alice, 573 U.S.
`at 217–18. “At step one, we consider the claims ‘in their
`entirety to ascertain whether their character as a whole is
`directed to excluded subject matter.’” CardioNet, 955 F.3d
`at 1367 (quoting McRO, Inc. v. Bandai Namco Games Am.
`Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)). If the answer
`is yes, we then consider the claim elements, “both individ-
`ually and ‘as an ordered combination,’” to determine
`whether they contain an “inventive concept” sufficient to
`“‘transform the nature of the claim’ into a patent-eligible
`application.” Alice, 573 U.S. at 217 (quoting Mayo Collab-
`orative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 72,
`78 (2012)). “This inventive concept must do more than
`simply recite ‘well-understood, routine, conventional activ-
`ity.’” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
`1089, 1093 (Fed. Cir. 2016) (quoting Mayo, 566 U.S.
`at 79–80).
`
`II
`A
`Beginning our analysis with Alice step one, we agree
`with the Board that the claims of the ’594 patent are
`
`Supercell
`Exhibit 1018
`Page 8
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`

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`directed to the abstract idea of creating and applying a
`template1 of positions of one or more game contents. Con-
`sidered in their entirety, the claims of the ’594 patent are
`directed to creating and applying templates to a game
`space to simplify game play. Though the dependent claims
`of the ’594 patent recite additional limitations with respect
`to creation, storage, selection, and application of a tem-
`plate, none of these implementation details change the
`overall nature of the claims. Overall, the claims focus on
`applying a template to a game space to move game contents
`from a first position to a second position. The additional
`limitations recited in the ’594 patent claims merely limit
`the use of a template to the technological environment of a
`game space on a computer, and GREE admitted that “the
`generic idea of a template existed prior to the invention,”
`J.A. 168.
`We also agree with the Board that certain claims of the
`’594 patent are broad enough to cover simply implementing
`the long-standing and conventional game of correspond-
`ence chess using chess templates on a computer. In partic-
`ular, claims 1–4 and 8–20 are broad enough to cover
`automation of conventional correspondence chess. We thus
`agree with the Board that claims 1–4 and 8–20 encompass
`the application of conventional correspondence chess
`
`
`1 GREE argues that the Board erred in broadly con-
`struing “template” as merely a record. We agree and con-
`clude that the Board erred in its construction because it
`overlooked the function of a template. We note, however,
`that the Board did not rely on this construction in its Alice
`step one analysis. Adopting GREE’s position on the mean-
`ing of “template” for purposes of our de novo § 101 analysis,
`we agree with the Board’s articulation of what the ’594 pa-
`tent claims are directed to at Alice step one. Accordingly,
`we find any error arising from the Board’s overly broad con-
`struction harmless.
`
`Supercell
`Exhibit 1018
`Page 9
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`

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`templates to a generic computer environment. See GREE,
`2019 WL 80477, at *15–16. As such, they are not directed
`to a patentable improvement. See Credit Acceptance,
`859 F.3d at 1055 (“[M]ere automation of manual processes
`using generic computers does not constitute a patentable
`improvement in computer technology.”).
`GREE’s arguments that the claims of the ’594 patent
`are directed to an improved graphical user interface are
`unavailing. The claims do not limit how the claimed device
`displays template creation or application to the player.
`Claim 6, the sole claim requiring display of any information
`to the player, provides no detail regarding how the infor-
`mation is displayed, mandating only that the information
`be displayed “in a discernible condition.” ’594 patent col. 27
`ll. 17–21. We therefore agree with the Board that there is
`nothing about the claim language that indicates an im-
`provement to a graphical user interface.
`Given the breadth of the ’594 patent claims, we agree
`with the Board that the claims are directed to an abstract
`idea at Alice step one.
`
`B
`At Alice step two, we must examine the elements of the
`claims to determine whether they contain an “inventive
`concept” sufficient to transform the claimed abstract idea
`into a patent-eligible application. Alice, 573 U.S. at 217–18
`(quoting Mayo, 566 U.S. at 72). We agree with the Board’s
`holding that claims 1, 8, and 10–20 are not patent eligible,
`and that claims 5–7 are patent eligible, but we conclude
`that the Board erred in holding claims 2–4 and 9 patent
`eligible.
`The Board correctly determined that claims 1, 8, and
`10–20 lack an inventive concept. As the Board concluded,
`the “ancillary” computer limitations of these claims “are
`described generically in functional terms and, as such, are
`insufficient to impart an inventive concept.” GREE,
`
`Supercell
`Exhibit 1018
`Page 10
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`

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`2019 WL 80477, at *18, *21. Rather than “‘transform[ing]
`the nature of the claim’ into a patent-eligible application,”
`Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78), these
`claims merely invoke generic computer components per-
`forming their standard functions to limit the use of the ab-
`stract idea itself to the technological environment of a
`game space on a computer. E.g., ’594 patent col. 27
`ll. 31–36 (requiring that “the computer stores positions of
`game contents . . . as the template, in the storage unit”); id.
`at col. 28 ll. 10–23 (reciting a memory device that stores
`software instructions and a hardware processor that is con-
`figured to execute software instructions and perform oper-
`ations). Additionally, claims 1, 8, and 10–20 are so broad
`that they encompass automation of the “well-understood,
`routine, conventional activity” of correspondence chess.
`Mayo, 566 U.S. at 79–80. Accordingly, the Board did not
`err in holding claims 1, 8, and 10–20 ineligible under § 101.
`We also agree with the Board’s differing conclusion
`with respect to claims 5–7, although we recognize that this
`is a close question. In reciting specific steps for applying
`templates in mismatched template scenarios, these claims
`require something more than automating correspondence
`chess. Indeed, Supercell has not shown that conventional
`correspondence chess template application included any
`technique—let alone the specifically claimed technique—
`for applying a template in the claimed mismatched tem-
`plate scenarios. We also agree with the Board that the
`added limitations in claims 5–7 “further define the concept
`of, or solution to, ‘creating and applying a template’ itself,”
`because “there are potentially infinite ways” to apply a
`template, and claims 5–7 expressly specify particular ways.
`GREE, 2019 WL 80477, at *20. We thus agree with the
`Board that Supercell has not shown these claims to lack an
`inventive concept under Alice step two, and, accordingly,
`we affirm the Board’s determination of eligibility of these
`claims.
`
`Supercell
`Exhibit 1018
`Page 11
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`

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`We disagree, however, with the Board’s conclusion that
`claims 2–4 and 9 are patent eligible under Alice step two.
`Claims 2–4 recite the additional limitations of storing tem-
`plates of different players, applying the templates of differ-
`ent players, and obtaining and applying templates from
`different computers. ’594 patent col. 26 l. 47–col. 27 l. 7.
`Claim 9 recites creating a template by combining a plural-
`ity of templates based on a command from the player or
`from another player, without further limitation. Id.
`at col. 27 ll. 37–43. Though these limitations narrow the
`scope of claims 2–4 and 9, we see no inventive concept suf-
`ficient to transform the claimed abstract idea into a patent-
`eligible application. See Alice, 573 U.S. at 217–18. Unlike
`claims 5–7, claims 2–4 and 9 do not claim a solution for
`applying a template in a mismatched template scenario.
`Nor do they claim a solution to any other technological
`problem encountered in the creation and application of
`templates in a computer game. Instead, like claims 1, 8,
`and 10–20, claims 2–4 and 9 recite generic computer com-
`ponents performing their standard functions, and they are
`broad enough to encompass the implementation of long-
`standing and conventional correspondence chess on a com-
`puter. We therefore conclude that the Board erred in con-
`cluding that claims 2–4 and 9 provide an inventive concept.
`C
`Finally, we note that certain statements in the Board’s
`opinion appear inconsistent with the appropriate frame-
`work for addressing eligibility under § 101. For example,
`in conducting the Alice step one analysis, the Board stated:
`“Identifying the concept to which the claim is ‘directed’
`merely addresses some claim limitations in connection
`with the first aspect of the Alice inquiry.” GREE, 2019 WL
`80477, at *7. The Board also determined that under the
`Alice framework, “Petitioner only needed to account for
`each claim limitation under either a formulation of the con-
`cept a claim is ‘directed to’ or under Alice step two.” Id.
`at *8. To the extent that the Board meant that a proper
`
`Supercell
`Exhibit 1018
`Page 12
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`§ 101 analysis may consider some claim limitations only at
`Alice step one and others only at Alice step two, we do not
`agree with its reading of Supreme Court precedent. In-
`stead, both steps of the Alice inquiry require that the
`claims be considered in their entirety. See CardioNet,
`955 F.3d at 1367 (“At step one, we consider the claims ‘in
`their entirety to ascertain whether their character as a
`whole is directed to excluded subject matter.’” (emphasis
`added) (quoting McRO, 837 F.3d at 1312)); Alice, 573 U.S.
`at 217 (noting, at step two, that courts “consider the ele-
`ments of each claim both individually and ‘as an ordered
`combination’ to determine whether the additional elements
`‘transform the nature of the claim’ into a patent-eligible ap-
`plication.” (emphasis added) (quoting Mayo, 566 U.S. at 79,
`78)).
`
`CONCLUSION
`We have considered the parties’ remaining arguments
`and do not find them persuasive. For the foregoing rea-
`sons, we affirm the Board’s decision that claims 1, 8, and
`10–20 are ineligible and that claims 5–7 are not ineligible,
`and we reverse the Board’s decision that claims 2–4 and 9
`are not ineligible.
`AFFIRMED-IN-PART AND REVERSED-IN-PART
`COSTS
`
`No costs.
`
`Supercell
`Exhibit 1018
`Page 13
`
`