UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`The Honorable Rodney Gilstrap
`
`
`Civil Action No. 2:19-cv-00413-JRG
`
`
`JURY TRIAL DEMANDED
`
`
`§§§§§§§§§§
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`GREE, INC.,
`
`
`v.
`
`
`SUPERCELL OY,
`
`
`
`
`
`
`
`DEFENDANT SUPERCELL OY’S INVALIDITY CONTENTIONS
`AND DISCLOSURES UNDER LOCAL PATENT RULES 3-3 AND 3-4
`
`Pursuant to Patent Rules 3-3 and 3-4, the Court’s Docket Control Order (Dkt. No. 41), and
`
`the Court’s Discovery Order (Dkt. No. 42), Defendant Supercell Oy (“Supercell” or “Defendant”)
`
`serves these Preliminary Invalidity Contentions (“Invalidity Contentions”) addressing how claims
`
`1, 3, 5, 7, 8, 10, and 12 – 17 of U.S. Patent No. 10,518,177 (“the ’177 Patent”) and claims 1 – 3,
`
`6, 10 – 14, 18 – 21, 26, and 27 of U.S. Patent No. 10,583,362 (“the ’362 Patent”) (collectively
`
`referred to as the “Asserted Patents”) are invalid.
`
`Supercell’s discovery and investigation in this lawsuit are ongoing, and therefore,
`
`Supercell reserves the right to revise, amend, and/or supplement these Preliminary Invalidity
`
`Contentions as discovery progresses and as it discovers additional information.
`
`I.
`
`RESERVATIONS AND OBJECTIONS
`A.
`
`General Reservations
`
`Pursuant to P.R. 3-6, Supercell reserves the right to amend or supplement these Preliminary
`
`Invalidity Contentions should GREE: (1) amend its P.R. 3-1 or 3-2 disclosures, including but not
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 1 of 22
`
`

`

`
`
`limited to amending such disclosures based on GREE’s review and analysis of source code made
`
`available by Supercell; or (2) at trial, in a hearing, or during a deposition, rely upon any
`
`information that it failed to identify in its P.R. 3-1 and 3-2 disclosures. Supercell also reserves the
`
`right to amend or supplement these Preliminary Invalidity Contentions in accordance with
`
`Paragraph 3(a) of the Court’s Discovery Order. Supercell provides the disclosures below, as well
`
`as the accompanying production of documents, in compliance with P.R. 3-3 and 3-4.
`
`The information provided should not be deemed an admission regarding the scope of any
`
`claims or the proper construction of those claims or any terms contained therein. Supercell’s
`
`claim construction disclosures will be provided under P.R. 4 as required by the Court’s Docket
`
`Control Order. Nothing contained in these Preliminary Invalidity Contentions should be
`
`understood or deemed to be an express or implied admission or contention with respect to the
`
`proper construction of any terms in an asserted claim, or with respect to the alleged infringement
`
`of that claim.
`
`Nothing in these disclosures should be treated as an admission that Supercell is obligated
`
`to produce documentation not under its custody or control, or that can be obtained from some
`
`other source that is more convenient, less burdensome and/or less expensive, or for which the
`
`burden or expense outweighs its likely benefit. Supercell expressly reserves the right to revise,
`
`amend, and/or supplement its disclosures and document production should additional
`
`documentation become available.
`
`B.
`
`GREE’s Deficient Infringement Contentions
`
`Supercell notes that GREE’s Infringement Contentions and related disclosures are
`
`deficient in that they fail to comply with P.R. 3-1 and 3-2 because they fail to give adequate
`
`notice regarding the details of GREE’s infringement theories. The lack of detail and deficiencies
`
`contained in GREE’s Infringement Contentions have prejudiced Supercell’s ability to prepare
`
`2
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 2 of 22
`
`

`

`
`
`these Preliminary Invalidity Contentions, including forcing Supercell to speculate as to GREE’s
`
`actual position(s) on Supercell’s alleged infringement and the meaning of various claim terms.
`
`The exhibit attached to the cover pleading purporting to disclose GREE’s infringement
`
`positions also fails to put Supercell on adequate notice of GREE’s positions regarding the alleged
`
`infringement of the Asserted Claims and/or Asserted Patents by Supercell’s products and/or
`
`services. The exhibit is comprised of vague conclusions that fail to identify “specifically where
`
`each element of each asserted claim is found within each Accused Instrumentality” as required
`
`by P.R. 3-1(c).
`
`Supercell’s Invalidity Contentions are based on its present understanding of the Asserted
`
`Claims and GREE’s apparent positions as to the scope of the Asserted Claims as applied in its
`
`P.R. 3-1 disclosures. Supercell’s Invalidity Contentions (including the attached invalidity claim
`
`charts) reflect, to the extent possible, its best understanding as to GREE’s potential alternative or
`
`evolving positions on claim construction and scope. Supercell reserves the right to revise, amend,
`
`and/or supplement these Preliminary Invalidity Contentions and/or its P.R. 3-4 disclosures should
`
`GREE amend its P.R. 3-1 disclosures, including but not limited to amending such disclosures
`
`based on GREE’s review and analysis of source code made available by Supercell, or attempt to
`
`rely on any information that it failed to provide in its P.R. 3-1 and 3-2 disclosures.
`
`C.
`
`Asserted Claims
`
`GREE purports to assert the following claims against Supercell from the Asserted
`
`Patents: claims 1, 3, 5,7, 8, 10, and 12 – 17 – 11 of the ’177 Patent, and claims 1 – 3, 6, 10 – 14,
`
`18 – 21, 26, and 27 of the ’362 Patent. These preliminary invalidity contentions address only the
`
`Asserted Claims. Supercell reserves the right to supplement these contentions if GREE asserts
`
`infringement of any claim other than the Asserted Claims.
`
`3
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 3 of 22
`
`

`

`
`
`GREE, however, has failed to comply with its obligation to provide a chart identifying
`
`specifically where each element of each asserted claim is found within each Accused
`
`Instrumentality under P.L.R. 3-1(c). Where GREE has failed to provide such a chart and
`
`identification, Supercell has deferred providing invalidity disclosures. Should GREE seek to
`
`amend its infringement contentions to properly assert these claims, Supercell reserves the right to
`
`amend its Preliminary Invalidity Contentions in response. These Preliminary Invalidity
`
`Contentions, thus, address only the Asserted Claims, which have been asserted in compliance
`
`with the Patent Local Rules. Supercell reserves the right to supplement these contentions if
`
`GREE asserts infringement of any claim other than the Asserted Claims.
`
`D.
`
`Ongoing Discovery
`
`Discovery is ongoing, and Supercell’s prior art investigation and third-party discovery are
`
`as well. As such, Supercell reserves the right to revise, amend, and/or supplement the
`
`information provided herein, including identifying, charting, and relying on additional material
`
`or references. Supercell further reserves the right to amend, modify, or supplement these
`
`Preliminary Invalidity Contentions to include additional prior art under 35 U.S.C. §§ 102 and/or
`
`103, or assert additional bases of invalidity under 35 U.S.C. §§ 101, 102, 103 and/or 112, as
`
`discovery in this action and Supercell’s investigation proceeds. In particular, Supercell intends
`
`to rely upon additional discovery, including but not limited to third party discovery, which is in
`
`its early stages, to obtain additional information regarding prior art games, including the relevant
`
`version of the prior art games, declarations and source code.
`
`E.
`
`Claim Construction
`
`Without conceding any express or implied claim construction suggested by GREE
`
`through its Infringement Contentions, Supercell has attempted to apply the prior art to the
`
`Asserted Claims. GREE’s application of those constructions are in some instances broader than
`
`4
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 4 of 22
`
`

`

`
`
`Supercell’s contentions regarding the proper scope of the claims. Should the claims be construed
`
`or asserted differently than Supercell’s current understanding of the claims, Supercell reserves
`
`the right to modify, amend, or supplement these Preliminary Invalidity Contentions as provided
`
`by the Local Rules and the Federal Rules of Civil Procedure.
`
`Supercell’s Preliminary Invalidity Contentions should not be construed as a suggestion or
`
`admission that GREE’s apparent claim constructions are correct. Indeed, in many instances,
`
`Supercell objects and disagrees with the apparent claim constructions GREE has offered in
`
`GREE’s Infringement Contentions as such constructions (1) are unsupported or contradicted by
`
`the intrinsic and extrinsic record relating to the Asserted Patents and applications related thereto,
`
`(2) would impermissibly read out one or more limitations of the Asserted Claims, or (3) are
`
`otherwise inconsistent with the understanding of a person of ordinary skill in the art. Supercell’s
`
`Preliminary Invalidity Contentions should not be construed to suggest that any claim term or
`
`phrase complies with 35 U.S.C. § 112. Finally, Supercell’s Preliminary Invalidity Contentions
`
`should not be construed as a suggestion or admission of infringement because Supercell
`
`specifically denies that it infringes any Asserted Claim.
`
`Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions to reflect positions taken by the parties during the claim construction process.
`
`Further, Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions in the event the Court adopts claim constructions different than those anticipated by
`
`Supercell. Supercell expressly reserves and does not waive its right to contest any claim
`
`constructions, or to take positions during claim construction proceedings or in connection with
`
`alleged infringement, that are inconsistent with, or even contradictory to, the positions set forth
`
`in these Invalidity Contentions.
`
`5
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 5 of 22
`
`

`

`
`
`F.
`
`Cited References and Prosecution File History as Sources of Additional Prior
`Art
`
`Supercell also intends to rely upon prior art cited during the prosecution of the Asserted
`
`Patents, as well as the prosecution of related patents/applications, as invalidating references or to
`
`show the state of the art. Supercell incorporates by reference each and every admission, including
`
`the patent applicant’s admissions concerning the scope of the prior art, and each and every prior
`
`art reference of record, which may be found in the file history of the Asserted Patents or related
`
`applications/patents, and each and every argument and rejection, on whatever grounds, by the
`
`examiners during the prosecution of the Asserted Patents. The subject matter of these admissions
`
`and prior art references is set forth in the Asserted Patents and the related applications/patents and
`
`the associated prosecution files, and their relevance and ability to be combined with other prior art
`
`set forth herein to render the Asserted Patents obvious will be apparent.
`
`G.
`
`Contextual Evidence
`
`Supercell’s Preliminary Invalidity Contentions cite to exemplary portions of the cited
`
`prior art references. The citations to exemplary portions of the prior art references should not be
`
`construed to mean that other portions of the prior art references are not relevant to the invalidity
`
`of the Asserted Claims. To the contrary, the citations are intended to put GREE on notice of the
`
`bases for Supercell’s contentions, but are not intended as a complete recitation of all support for
`
`those contentions. Supercell reserves the right to rely on the entirety of any, or any part of, the
`
`prior art references, whether charted or not charted, as a basis for asserting invalidity of the
`
`Asserted Claims.
`
`Furthermore, persons having ordinary skill in the art would view an item of prior art in
`
`the context of their experience and training, other publications, literature, products and general
`
`understanding. As such, the cited portions are exemplary, and Supercell may rely on uncited
`
`6
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 6 of 22
`
`

`

`
`
`portions of the prior art references, and other documents, such as statements in the cited
`
`references of the specifications, the prosecution history, and related applications/patents of the
`
`Asserted Patents, and fact and expert testimony and documents not yet discovered, to provide
`
`background, context, or to otherwise aid in understanding the cited portions of the prior art
`
`references. Citations to a figure in a reference should be understood to encompass the caption
`
`and description of the figure and any text relating to the figure. Likewise, citations to text
`
`referring to a figure should be understood to include the corresponding figure as well. Prior art
`
`not included in these disclosures, whether known or not known to Supercell, may become
`
`relevant, and Supercell reserves the right to supplement its Preliminary Invalidity Contentions to
`
`identify and rely upon this prior art.
`
`Additionally, the suggested obviousness combinations in Supercell’s Preliminary
`
`Invalidity Contentions are provided in the alternative and should not be construed to suggest that
`
`any reference included in the combinations is not by itself anticipatory. Supercell is currently
`
`unaware of the extent, if any, to which GREE will contend that Supercell’s anticipatory
`
`references do not disclose limitations of the Asserted Claims. To the extent that GREE contends
`
`that any of Supercell’s anticipatory references are missing one or more limitation of the Asserted
`
`Claims, Supercell reserves the right to counter such assertions by further reference to Supercell’s
`
`anticipatory references and/or to identify other references, combinations of references, and/or
`
`knowledge of a person of ordinary skill in the art that disclose the limitation(s) allegedly missing
`
`in the anticipatory reference(s) to render the Asserted Claims invalid.
`
`H.
`
`Rebuttal Evidence
`
`Additional prior art, whether known or not known to Supercell as of the date of these
`
`contentions, may become relevant depending on GREE’s arguments regarding the scope of the
`
`disclosure of the prior art identified herein. In particular, Supercell is currently unaware of the
`
`7
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 7 of 22
`
`

`

`
`
`extent, if any, to which GREE will contend that limitations of the Asserted Claims are not
`
`disclosed in the prior art. To the extent such an issue arises, Supercell reserves the right to
`
`identify other references that would anticipate or render obvious the allegedly missing
`
`limitation(s).
`
`II.
`
`P.R. 3-3 INVALIDITY CONTENTIONS
`A.
`
`P.R. 3-3(a) Disclosures
`
`The concepts disclosed and claimed in the Asserted Claims are not new, and had been
`
`disclosed and actively practiced by others prior to the claimed invention date. The prior art
`
`includes various documents, products, patents and inventions that separately and together render
`
`the Asserted Claims invalid. In addition, as described in more detail below, claims of the
`
`Asserted Claims are invalid under 35 U.S.C. §§ 101 and 112.
`
`Supercell asserts that the prior art listed in Exhibits A and B and in the Tables below,
`
`individually or in combination, invalidates the Asserted Claims. These prior art references
`
`disclose each and every limitation of one or more of the Asserted Claims either explicitly,
`
`inherently, or via an obvious combination and may also be relied upon to show the state of the
`
`art in the relevant timeframes. The following patents and publications are prior art under at least
`
`35 U.S.C. §§ 102(a), (b), (e), or (g).
`
`TABLE 1: Prior Art Patent, Patent Applications, and Publications
`Anticipating the Asserted Claims
`
`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`2013/0281173
`
`7,905,769
`
`2002/0013168
`
`United States
`
`October 24, 2013 Gilson
`
`United States
`
`March 15, 2011
`
`Harrison
`
`United States
`
`January 31, 2002 Kameta
`
`8
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 8 of 22
`
`

`

`
`
`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`2014/0080600
`
`2014/0349723
`
`United States
`
`March 20, 2014
`
`Knutsson
`
`United States
`
`November 27,
`2014
`
`November 14,
`2013
`
`September 29,
`2005
`
`Nakatani
`
`Suzuki
`
`Kazunobu
`
`WO2013168379A1
`
`2005261723
`
`PCT
`
`Japan
`
`2005/0054402
`
`United States
`
`March 10, 2005
`
`Noguchi
`
`
`
`TABLE 2: Non-Patent Prior Art Including Publications and Items
`Used, Known of, and/or Offered for Sale that Anticipate
`the Asserted Claims1
`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for Sale,
`Sold, Publicly Used or Made Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`Bloons TD Battles by Ninja Kiwi
`
`December 12, 2012
`
`Bloons
`
`Bloons TD Battles Wikipedia page
`
`January 20, 2014
`
`Bloons Wiki
`
`Wartune by R2Games
`
`October 25, 2012
`
`Wartune
`
`Plants vs. Zombies by PopCap Games
`
`February 15, 2010
`
`Review of Plants vs. Zombies by
`Common Sense Media
`
`December 25, 2013
`
`Plants vs. Zombies wiki (Peashooter page) February 2, 2014
`
`PvZ
`
`N/A
`
`N/A
`
`December 27, 2013
`
`Plants vs. Zombies wiki (Squash page)
`
`1 Supercell intends to rely upon prior art related to video games for the Asserted Patents. In the
`corresponding charts in Exhibits A and B, Supercell has provided visual representations of the
`relevant features and functionalities using publicly available prior art videos, manuals, webpages,
`or other material. Supercell may rely upon third party discovery, which is in its early stages, to
`obtain the relevant version of the prior art games for use at trial. Supercell reserves the right to
`assert prior art related to games as a prior art system, as printed publications, or both.
`
`N/A
`
`9
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 9 of 22
`
`

`

`
`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for Sale,
`Sold, Publicly Used or Made Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`Plants vs. Zombies wiki
`
`November 6, 2013
`
`Plants vs. Zombies wiki (Wall-nut page)
`
`December 5, 2013
`
`N/A
`
`N/A
`
`Plants vs. Zombies - Gameplay
`Walkthrough Part 1 - World 1 (HD) by
`ZackScottGames
`
`Plants vs. Zombies - Gameplay
`Walkthrough Part 2 - World 2 (HD) by
`ZackScottGames
`
`May 30, 2013
`
`Video 1
`
`May 31, 2113
`
`Video 2
`
`Plants vs. Zombies Wikipedia page
`
`
`
`PvZ wiki
`
`Yu-Gi-Oh!: The Eternal Duelist Soul by
`Konami
`
`December 11, 2010
`
`Yu-Gi-Oh
`
`Pokemon Emerald by Nintendo
`
`August 30, 2010
`
`Pokemon
`
`Super Smash Bros. Brawl by Nintendo
`
`January 31, 2008
`
`Smash Bros. wiki (character selection
`screen page)
`
`Smash Bros. wiki (damage page)
`
`Smash Bros. wiki (Pokemon Stadium 2
`page)
`
`September 2, 2013
`
`July 18, 2013
`
`May 28, 2013
`
`Smash Bros. wiki (Sudden Death page)
`
`July 18, 2013
`
`Smash Bros. wiki (Time page)
`
`July 18, 2013
`
`Smash Bros. NY Times article
`
`December 10, 2008
`
`SSBB
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`N/A
`
`B.
`
`P.R. 3-3(b)
`1.
`Anticipatory Prior Art
`
`The attached claim charts in Exhibits A and B demonstrate where each limitation of the
`
`anticipated claims is found in certain of the references listed below, either expressly or inherently
`
`10
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 10 of 22
`
`

`

`
`
`in the larger context of the passage, or inherently as the reference as a whole is understood by a
`
`person having ordinary skill in the art.
`
`2.
`
`Obvious Combinations
`
`The Asserted Claims are invalid as obvious under 35 U.S.C. § 103. Each Primary
`
`Reference, either alone or in combination with the other identified prior art, and/or in combination
`
`with the knowledge of one skilled in the art, renders the Asserted Claims invalid as obvious. In
`
`particular, each Primary prior art reference may be combined with (1) information known to
`
`persons skilled in the art at the time of the alleged invention, (2) any of the other primary prior art
`
`references, and/or (3) any of the additional prior art identified below in these Invalidity
`
`Contentions. The accompanying claim charts and tables below provide exemplary obviousness
`
`combinations under 35 U.S.C. § 103. The disclosed combinations are not meant to be exhaustive.
`
`Supercell is not aware of how Plaintiff may attempt to distinguish the prior art cited herein, and
`
`reserves the right to identify other references that would have supplied the allegedly missing
`
`element to render the Asserted Claims obvious. Accordingly, to the extent that Plaintiff contends
`
`that any of the Primary References fails to disclose one or more limitations of the asserted claims,
`
`Supercell reserves the right to identify other prior art references that, when combined with the
`
`Primary Reference, would render the claims obvious despite the allegedly missing limitation.
`
`In addition, Supercell incorporates by reference each and every prior art reference of
`
`record in the prosecution of the Asserted Patents and related applications (including applications
`
`referenced in or incorporated by reference in the Asserted Patents), including the statements
`
`made therein by the applicant and the examiner, the prior art discussed in the specification, and
`
`any other statements found in the intrinsic record.
`
`Supercell identifies the specific combinations that render the Asserted Claims obvious in
`
`the claim charts attached in Exhibits A and B. Where each element is disclosed in each prior art
`
`11
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 11 of 22
`
`

`

`
`
`reference is shown in attached claim charts in Exhibits A and B. Further, Supercell identifies the
`
`following exemplary combinations that render the Asserted Claims obvious:
`
`TABLE 3: Exemplary Obviousness Combinations for the ’177 Patent
`
`Primary Reference
`
`Obviousness combination with other reference(s)
`
`Bloons
`
`Bloons
`
`Gilson
`
`Kameta
`
`Knutsson
`
`Nakatani
`
`PvZ
`
`Suzuki
`
`Wartune
`
`Harrison
`
`Bloons wiki
`
`SSBB
`
`Harrison
`
`Knutsson
`
`Harrison
`
`Wartune
`
`Video 1, Video 2, PvZ wiki
`
`Nakatani, Kazunobu
`
`Nakatani, Yu-Gi-Oh, Pokemon
`
`Gilson
`
`TABLE 4: Exemplary Obviousness Combinations for the ’362 Patent
`
`Primary Reference
`
`Obviousness combination with secondary reference(s)
`
`Bloons
`
`Bloons
`
`Gilson
`
`Kameta
`
`Knutsson
`
`Nakatani
`
`PvZ
`
`Bloons wiki
`
`SSBB
`
`Harrison, Noguchi
`
`Nakatani, Noguchi
`
`Nakatani, Noguchi
`
`Noguchi
`
`Nakatani, Noguchi
`
`12
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 12 of 22
`
`

`

`
`
`Primary Reference
`
`Obviousness combination with secondary reference(s)
`
`Suzuki
`
`Wartune
`
`Harrison
`
`Noguchi, Kazunobu
`
`Nakatani, Yu-Gi-Oh, Pokemon
`
`Gilson, Noguchi
`
`3.
`
`Motivations to Combine
`
`A person of skill in the art would have been motivated to combine each of the above
`
`referenced combinations of prior art as provided in the claim charts attached in Exhibits A and B,
`
`and as further provided in Table 3 and Table 4. As the United States Supreme Court held in
`
`KSR International Co. v. Teleflex Inc., “[t]he combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable results.”
`
`550 U.S. 398, 416 (2007).2 The Supreme Court further held that, “[w]hen a work is available in
`
`one field of endeavor, design incentives and other market forces can prompt variations of it,
`
`either in the same field or a different one. If a person of ordinary skill can implement a
`
`predictable variation, §103 likely bars its patentability. For the same reason, if a technique has
`
`been used to improve one device, and a person of ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill. . . .” Id. at 417. Accordingly, a person of skill in the art
`
`would have been motivated to combine or adapt known or familiar methods in the art, especially
`
`where market forces prompt such variations.
`
`To a person of ordinary skill in the art, the Asserted Claims represent solutions that
`
`would have been obvious to try, with predictable results. As an initial matter, the scope and
`
`
`2 Pursuant to P. R. 3-3, Supercell has included this section discussing motivation to combine. In
`KSR v. Teleflex, however, the Supreme Court rejected the idea that a “teaching, suggestion, or
`motivation to combine” is a prerequisite for obviousness.
`
`13
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 13 of 22
`
`

`

`
`
`content of the prior art is extensive. Video game design and development, particularly with a
`
`focus on the Internet, burgeoned in the 1990s and early 2000s and the industry followed a
`
`trajectory mirroring the rapid explosion and rising popularity of consumer-level Internet usage in
`
`both the United States and around the world. Accordingly, the combination or modification of
`
`the prior art references disclosed herein would have no unexpected results and at most would
`
`simply represent a known alternative to one of skill in the art.
`
`The combinations expressly identified below and in the attached charts would have been
`
`combined or modified using: known methods to yield predictable results; common sense; known
`
`techniques in the same way; a simple substitution of one known, equivalent element for another
`
`to obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art
`
`generally. In addition, it would have been obvious to try combining or modifying the prior art
`
`references identified herein because there were only a finite number of predictable solutions
`
`and/or because known work in one field of endeavor prompted variations based on predictable
`
`design incentives and/or market forces either in the same field or a different one. In addition, the
`
`combinations of the prior art references would have been obvious because the combinations
`
`represent known potential options with a reasonable expectation of success.
`
`Here, each combination identified in Table 3 and Table 4 would have been obvious
`
`considering at least the state of the art, common sense, the knowledge of one of ordinary skill in
`
`the art, and motivation and teachings present on the face of the Asserted Patents and disclosed
`
`references. For instance, a skilled artisan would be familiar with executing games both as a game
`
`program pre-installed in a terminal device and as an online game that is wirelessly connected to a
`
`game server apparatus over a network. A skilled artisan would further be familiar with platforms
`
`used for playing video games, including network-capable platforms, such as personal computers,
`
`14
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 14 of 22
`
`

`

`
`
`video game consoles, smartphones, and other mobile devices, and would further be familiar with
`
`the conventional wisdom of the industry to maximize game features enabled by such hardware,
`
`such as displays, touch screen input, network based multiplayer in-game design. A person of
`
`ordinary skill in the art would also be familiar with, and motivated to combine, games that are
`
`related to each other, such as games within the same genre or employ similar mechanics or
`
`features. For instance, a skilled artisan who is familiar with a tower defense and battle video
`
`game Bloons TD Battles would be familiar with the mechanics, rules, and techniques for playing
`
`Super Smash Bros. Brawl which is also a video game that involves battles and would be
`
`motivated to combine the features of Super Smash Bros. Brawl to improve Bloons TD Battles.
`
`For example, to the extent such varying rounds or modes are not already disclosed, a POSITA
`
`may have looked to add the time modes of SSBB to Bloons TD Battles, including a sudden death
`
`round and battle conditions for different timed rounds.
`
`In addition, a person of skill in the art who is familiar with card games such as disclosed in
`
`Gilson would be familiar with the mechanics, rules, and techniques disclosed in card playing
`
`games as disclosed in references like Harrison and Noguchi. As a result, if a person of ordinary
`
`skill in the art were looking to improve a card playing game or a battle game with another game,
`
`he or she would know of and be motivated to use the features or mechanics of the other prior art
`
`games to modify game play to achieve a desired result. For example, a skilled artisan may add an
`
`electronic version of a card playing surface from Harrison to automate card game play. In another
`
`example, the skilled artisan may add Noguchi’s gauge to give the player, during play, data on how
`
`much life force or attack strength remains for a specific card.
`
`Further, a person of skill in the art who is familiar with card battle games, like disclosed in
`
`Kameta, would also be familiar with the mechanics shown in card playing games, like disclosed in
`
`15
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 15 of 22
`
`

`

`
`
`Nakatami and/or Noguchi where cards represent athletes, and where cards represent commands for
`
`a character, respectively. For example, a skilled artisan would have been motivated to combine the
`
`game of Kameta with the positioning of cards and timing aspects from Nakatani and life force or
`
`attack strength gauge of Noguchi.
`
`Further, for instance, a skilled artisan who is familiar with the design elements and
`
`operation of card games, such as disclosed in Knutsson, would also be familiar with the mechanics
`
`shown in card playing games, like disclosed in Nakatani and/or Noguchi and would have been
`
`motivated to combine Knutsson with life force or attack strength gauge of Noguchi if such visuals
`
`were desired.
`
`Further, such a skilled artisan familiar with the design elements and mechanics disclosed in
`
`Nakatani, where cards represent athletes, would be familiar with the known mechanics, rules, and
`
`techniques for displaying and managing card games, like Noguchi, where cards represent
`
`commands for a character. For example, the skilled artisan may improve Nakatani with a gauge of
`
`Noguchi for keeping track of athlete parameters. In addition, such a skilled artisan familiar with
`
`the design elements and mechanics disclosed in a game such as Plant vs. Zombies, where a player
`
`selects cards that enable planting plants that destroy zombies, would be familiar with the design
`
`elements and mechanics disclosed in Nakatani and/or Noguchi (as discussed above).
`
`Further, such a skilled artisan familiar with the design elements and mechanics disclosed in
`
`a game described in Suzuki, where digital cards are related to a game of baseball, would be
`
`familiar with the design elements and mechanics disclosed in Nakatani (as discussed above) and/or
`
`Kazunobu, where virtual cards are used as well. For example, a skilled artisan may use formation
`
`aspects of Nakatani and/or stage achievement levels of Kazunobu to improve game play of Suzuki.
`
`16
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 16 of 22
`
`

`

`
`
`In addition, a skilled artisan familiar with the design elements and mechanics disclosed in
`
`Harrison, where a player can play a game using cards, would be familiar with the design elements
`
`and mechanics disclosed in Gilson and/or Noguchi, where virtual cards are used as well.
`
`Therefore, a skilled artisan would be motivated to combine the varying features or mechanics of
`
`the different card games to improve game play in video games such as battle games.
`
`Further, a skilled artisan who is familiar with the design elements and mechanics disclosed
`
`in Wartune, where a player can battle an opponent, would be familiar with the design elements and
`
`mechanics disclosed in a game such Arena of Heroes, where a battle occurs as well, and/or in
`
`Nakatani, which enables players to battle in a sports format (e.g., football game) and/or Yu-Gi-Oh,
`
`which enables players to battle. For example, a skilled artisan may use character selection
`
`elements from Arena of Heroes, rules of Nakatani, and/or various strength characters of Yu-Gi-Oh
`
`to improve game play.
`
`Moreover, the Supreme Court held that “familiar items may have obvious uses beyond
`
`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.” Id. at 421. Indeed, the Supreme
`
`Court held that it is sufficient that a combination of elements was “obvious to try” holding that,
`
`“[w]hen th