PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN HOFFMAN, Reg. No. 39,713
`MICHAEL J. SACKSTEDER
`KEVIN X. MCGANN, Reg. No. 48,793
`JENNIFER R. BUSH, Reg. No 50,784
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case PGR2020-00088
`Patent 10,518,177 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.208(c)
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN HOFFMAN, Reg. No. 39,713
`MICHAEL J. SACKSTEDER
`KEVIN X. MCGANN, Reg. No. 48,793
`JENNIFER R. BUSH, Reg. No 50,784
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case PGR2020-00088
`Patent 10,518,177 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.208(c)
`
`
`
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`TABLE OF CONTENTS
`
`Page
`The Fintiv Factors Favor Institution ................................................................ 1
`A.
`B. Master Hearthstone is a Printed Publication ................................................... 6
`
`
`
`
`i
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020) ............................................ 4
`Apple v. Fintiv,
`IPR 2020-00019, Paper 11 at 12 (P.T.A.B. Mar. 20, 2020)
`(Precedential) ................................................................................................ 1, 3, 5
`NanoCellect Biomedial, Inc., v. Cytonome/ST, LLC,
`IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020) ........................................... 4
`Oticon Medical AB v. Cochlear Ltd.,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) ............................................ 2
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ................................... 3, 4, 5
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ............................................ 1
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (Dec. 1, 2020)............................................................. 1
`VMWare, Inc. v. Intellectual Ventures I LLC,
`IPR2020-00407, Paper 13 (P.T.A.B. Aug. 18, 2020) ........................................... 4
`STATUTES AND RULES
`35 U.S.C. § 314 .......................................................................................................... 1
`35 U.S.C. § 321(c) ..................................................................................................... 5
`
`
`
`
`
`
`ii
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1010
`
`1001 U.S. Patent No. 10,518,177 to Suzuki
`1002 File History of U.S. Patent No. 10,518,177
`1003 U.S. Patent No. 10,583,362
`1004 File History of U.S. Patent No. 10,583,362
`1005 Declaration of Steve Meretzky
`1006 Curriculum Vitae of Steve Meretzky
`1007 GREE’s Amended Disclosure of Asserted Claims and Infringement
`Contentions dated August 19, 2020 in Case No. 2:19-cv-00413-JRG-RSP
`(E.D. Tex.)
`1008 Microsoft Computer Dictionary, 4th Ed. (1999)
`1009 YouTube - Master Hearthstone in 10 Minutes! The Ultimate Beginner’s
`Guide (“MH”) (web page print out from
`https://www.youtube.com/watch?v=CVZ4qyx-c2o)
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide,”
`webpage as captured by The Internet Archive on January 2, 2014
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide” –
`Video File
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide” –
`Transcript
`1013 U.S. Patent Publication No. 2013/0281173 to Gilson et al.
`1014 US Patent Publication No. 2014/0349723 to Nakatani et al.
`1015 U.S. Patent No. 5,662,332 to Garfield
`“Dynamic game difficulty balancing,” Wikipedia page as captured by The
`1016
`Internet Archive on December 12, 2011
`
`1011
`
`1012
`
`iii
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Exhibit
`
`Description
`
`1017
`
`1018
`
`1019
`
`1021
`
`“And That’s A Wrap! BlizzCon 2013 Has Officially Come to an End!”
`webpage as captured by the Internet Archive on Nov. 16, 2013
`“FAQ – Hearthstone” webpage as captured by the Internet Archive on
`Nov. 16, 2013
`“Hearthstone: Heroes of Warcraft Official Game Site” webpage as captured
`by the Internet Archive on Nov. 16, 2013
`1020 GREE, Inc.’s Opposition to Defendant Supercell Oy’s Motion to Dismiss,
`Dkt. No. 34, Filed April 8, 2020, Case No. 2:19-cv-00413-JRG-RSP (E.D.
`Texas)
`[Model] Order Focusing Patent Claims and Prior Art to Reduce Costs,
`retrieved from
`http://www.txed.uscourts.gov/sites/default/files/forms/ModelPatentOrder.pdf
`1022 Declaration of Madeline Byers, Custodian of Records for Google LLC
`1023 Affidavit of Elizabeth Rosenberg, Records Processor at the Internet Archive
`1024 Declaration of Jennifer R. Bush in Support of Supercell Oy’s Reply to Patent
`Owner’s Preliminary Response
`
`
`
`iv
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`A. The Fintiv Factors Favor Institution
`The Fintiv factors show that the Board should institute trial. GREE’s
`
`arguments to the contrary rely on misdirection and omission. Importantly, the
`
`Overlap Factor of the Fintiv Order supports institution because concerns of
`
`inefficiency and the possibility of conflicting decisions are minimal. See Apple v.
`
`Fintiv, IPR 2020-00019, Paper 11 at 12 (P.T.A.B. Mar. 20, 2020) (Precedential);
`
`see also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19
`
`(Dec. 1, 2020) (Precedential as to § II.A); Snap, Inc. v. SRK Technology LLC,
`
`IPR2020-00820, Paper 15 at 19 (P.T.A.B. Oct. 21, 2020) (Precedential as to
`
`§ II.A.). The Board recently declined to exercise its discretion under § 314(a) when
`
`a reference cited in the Petition was not at issue in the litigation. See Snap at 15. The
`
`new reference in the IPR rendered “the prior art and arguments included in the
`
`Petition [] materially different than those presented in the District Court.” Snap at
`
`15. The same type of material difference is present here.
`
`Although GREE is loath to mention it, Master Hearthstone (“MH”) is not
`
`asserted in the related litigation. Ex. 2004 at 8-10. The Petition applies this
`
`reference against all claims of the ’177 patent, and demonstrates that MH discloses
`
`material claim features including virtual cards, first and second fields, battle
`
`conditions, terms, and an opponent character. Pet. at 43, 47-67. The Petition
`
`combines MH with Gilson because the latter reference demonstrates it was known
`
`1
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`to play a battle card game using “the generic computer-related limitations recited
`
`by the claims.” Pet. at 47; see Ex. 1005 at ¶ 116 § 1.0, ¶ 122 (identifying generic
`
`limitations shown by Gilson). Thus, the Board should proceed with the PGR
`
`because “the Board proceeding would not be directly duplicative of the District
`
`Court[’s] consideration of validity.” Oticon Medical AB v. Cochlear Ltd.,
`
`IPR2019-00975, Paper 15 at 23-24 (P.T.A.B. Oct. 16, 2019) (Precedential).
`
`GREE obfuscates the lack of overlap by attempting to misdirect the Board.
`
`GREE presents voluminous arguments regarding Gilson’s use in the litigation, but
`
`has very little to say about Gilson’s, or MH’s, use in the Petition. See, e.g., Prelim.
`
`Resp. at 23-25. In fact, after seven pages of mostly-irrelevant argument GREE
`
`begrudgingly acknowledges that inclusion of MH in the Petition makes the
`
`Overlap factor favor institution. Prelim. Resp. at 30.
`
`Other arguments from GREE regarding the Overlap factor are speculative
`
`and misrepresent the current state of the litigation. The petition applies MH against
`
`all claims, while only 11 claims are presently asserted in the litigation. Ex. 2004, at
`
`1, 3. And GREE will likely drop claims before trial, as they have done in the past,
`
`and as instructed under the E.D. Tex. Model Order Focusing Patent Claims.
`
`Ex. 1021 at 2. For example, in PGR2020-00034 GREE informed the Board that
`
`“Petitioner’s challenges to all independent claims of the ’385 patent … at the
`
`district court will necessarily resolve key issues in the instant Petition.” PGR2020-
`
`2
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`00034, Paper 7 (Prelim. Resp.) at 22. But now GREE has informed Supercell that
`
`it intends to drop all independent claims of the ’385 patent from trial, rendering its
`
`prior statement to the Board false. Ex. 1024 at 3.
`
`Additionally, overlap regarding the § 101 challenge in this forum does not
`
`support discretionary denial. The Board recognizes “a strong public interest in
`
`providing a mechanism for early evaluation of Petitioner’s § 101 ground on the
`
`merits” in PGRs. PGR2020-00039, Paper 14 (Decision) at 21. This strong public
`
`interest overcomes other concerns.
`
`Factor 6 is “other circumstances that impact the Board’s exercise of
`
`discretion, including the merits.” Fintiv at 14. The Fintiv Order focuses this factor
`
`on the strength on the merits of the invalidity grounds raised in the petition. Id. at
`
`14-16. The Fintiv Order provides an example in which institution is favored “if the
`
`merits of a ground raised in the petition seem particularly strong.” Id. at 14-15,
`
`15 n.29 (listing decisions where the merits outweighed other considerations).
`
`Each ground in the petition presents a strong case on the merits. GREE is
`
`reduced to arguing in response that a POSITA in 2014 would not know how to use
`
`YouTube. Prelim. Resp., p. 49. The fact that GREE devotes resources to this type
`
`of argument illustrates the strength of the presented grounds.
`
`The Board has found Factors 4 and 6 to be definitive in reaching its decisions
`
`to institute, regardless of its findings regarding other factors. See, e.g., Sand
`
`3
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Revolution II, LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24 at 9
`
`(P.T.A.B. June 16, 2020) (Informative); Apple Inc. v. Seven Networks, LLC,
`
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020); NanoCellect Biomedial, Inc., v.
`
`Cytonome/ST, LLC, IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020); VMWare,
`
`Inc. v. Intellectual Ventures I LLC, IPR2020-00407, Paper 13 (P.T.A.B. Aug. 18,
`
`2020). Here, Factors 4 and 6 are likewise strong, and the Board should institute this
`
`PGR consistent with its prior decisions.
`
`Regarding the other factors, Factor 2 (Trial Proximity) should be afforded
`
`little weight because the trial will address different art. Furthermore, determining
`
`the true trial date requires speculation. GREE argues the trial date should be taken
`
`at “face value.” Prelim. Resp. at 11-13. But the court closed down for three
`
`months, which will undoubtedly cause a cascade of delays to the Court’s calendar
`
`and is likely to impact the trial date. Ex. 2008 at 1. Nor is it likely that jury trials
`
`will resume on March 1, since the continuing pandemic makes further delays
`
`probable. Jury trials are especially susceptible to delay and the court will not
`
`conduct remote trials. Ex. 2008 at 3.
`
`In view of these circumstances, and as in Sand Revolution, “it is unclear that
`
`the court in the related district court litigation will adhere to any currently
`
`scheduled jury trial date or, if it is changed, when such a trial will be held.” Sand
`
`Revolution at 9. Determining whether and when the Court will conduct any future
`
`4
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`trials requires substantial speculation. The Board, in contrast, “continues to be fully
`
`operational.” Id. Moreover, this factor implicates Factors 4 and 6. Fintiv, at 9. On
`
`the whole, the Proximity factor weighs in favor of institution.
`
`The Investment factor (Factor 3) is at least neutral because, to the extent the
`
`court has invested, it was primarily in non-overlapping issues such as potential
`
`invalidity based on different references and issues related to alleged infringement.
`
`There has been only minimal investment in the issues pertaining to this PGR.
`
`Moreover, future investment will also only minimally overlap with PGR issues, as
`
`MH is not involved in the litigation. As for the filing date of the Petition, Petitioner
`
`complied with the nine month window provided by 35 U.S.C. § 321(c). GREE’s
`
`unsupported statement that “Petitioner was undisputedly aware of the grounds
`
`asserted in the Petition months before the filing of the instant Petition” is false.
`
`Prelim. Resp. at 20.
`
`Factor 1 (Likelihood of Stay) requires speculation. Factor 5 (Same Parties)
`
`should be given little weight. Neither factor is dispositive. Thus, the holistic Fintiv
`
`analysis favors institution.
`
`5
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`B. Master Hearthstone is a Printed Publication
`GREE’s arguments that MH is not a printed publication are disingenuous.
`
`The gist of GREE’s position is Petitioner has neither demonstrated that the video
`
`of Exhibit 1011 is the same video found on YouTube nor that the video was
`
`publicly accessible. Prelim. Resp. at 47-48.
`
`GREE’s preposterous arguments fail in view of the particular evidence
`
`included with the petition. The landing page referenced in the petition identifies the
`
`video by its title, author, publication date, and external ID (“CVZ4qyx-c2o”).
`
`Ex. 1009 at 1. The Internet Archive capture from January 2014 bears this same
`
`information. Ex. 1010 at 1. The video itself starts with a caption showing the same
`
`title and the speaker introducing himself as “Jeremy,” the same author listed in the
`
`other documents. Ex. 1011 (Part 1) at 0:00-01; Ex. 1012 at 1.
`
`Moreover, a Certificate of Authenticity filed herewith identifies MH by its
`
`title, external ID, and publication date, and authenticates the video as a business
`
`record of Google. Ex. 1022. Also filed herewith is an Affidavit authenticating the
`
`landing page captured by the Internet Archive in January 2014 as a true and
`
`accurate copy of the Internet Archive’s records. Ex. 1023 at 1-2, 4-6.
`
`The public accessibility of MH is likewise beyond doubt. GREE is basically
`
`arguing without evidence that a person with a bachelor’s degree in computer
`
`science and professional game development experience would be unable to find a
`
`6
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`given video on YouTube in early 2014. See Ex. 1005 at ¶ 41. However, the
`
`evidence of record verifies that the video was made publicly visible on October 11,
`
`2013 and was viewed more than 18,000 times by January 2014. Ex. 1022 at 2;
`
`Ex. 1023 at 4. These facts match Petitioner’s expert testimony that “a POSITA
`
`would have known how to access YouTube’s website and use YouTube’s indexing
`
`and search functions to find MH and other videos of gameplay footage” and would
`
`have looked to YouTube to learn about this “highly-anticipated game.” Ex. 1005 at
`
`¶¶ 78-80. The landing page captured by the Internet Archive in 2014 also supports
`
`this testimony by clearly illustrating a search bar along the top of the page that a
`
`POSITA could use. Ex. 1023 at 4. GREE’s laughable characterization of this
`
`evidence as “vague and conclusory” and plentiful citations to inapposite cases
`
`merely demonstrates it is desperate.
`
`Not only that, but GREE’s counsel had possession of the Google
`
`Certification and Internet Archive Affidavit prior to filing its Preliminary
`
`Response, as these documents were included with the petition of PGR2021-00014
`
`filed December 9, 2020. See PGR2021-00014, Exs. 1022, 1023. Thus, when GREE
`
`filed its Preliminary Response seeking to cast doubt on whether the MH video is
`
`the same one referenced on the landing page and whether the video was published,
`
`GREE had possession of relevant information inconsistent with the position it
`
`advanced in the brief. See Prelim. Resp. at 47-48.
`
`7
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`Dated: February 19, 2021
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Brian Hoffman /
`Brian Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`8
`
`
`
`PGR2020-00088
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1021 through
`
`1024 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service at the email addresses provided below:
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`
`FENWICK & WEST LLP
`
`/Brian Hoffman /
`Brian Hoffman
`Reg. No. 39,713
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`Dated: February 19, 2021
`Fenwick & West LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`
`
`9
`
`
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