UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2020-00088
`U.S. Patent No. 10,518,177
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2020-00088
`U.S. Patent No. 10,518,177
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page
`The Petition Should Be Denied Under § 324(a) .............................................. 1
`The Petition Failed to Demonstrate that MH Was Publicly
`Accessible ........................................................................................................ 6
`
`I.
`II.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`10X Genomics, Inc. v. President & Fellows of Harvard College,
`IPR2020-01180, Paper 23 (P.T.A.B. Jan. 13, 2021) ........................................1, 5
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020) ............................................ 5
`Celltrion, LLC v. Biogen, Inc.,
`IPR2017-01230, Paper 10 (P.T.A.B. Oct 12, 2017) ............................................. 7
`Google LLC v. IPA Techs. Inc.,
`IPR2018-00384, Paper 8 (P.T.A.B. July 3, 2018) ................................................ 7
`Guardian Alliance Techs., Inc. v. Miller,
`IPR2020-00031, Paper 27 (P.T.A.B. July 27, 2020) ............................................ 6
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`KeyMe, LLC v. The Hillman Group, Inc.,
`IPR2020-01028, Paper 12 (P.T.A.B. Jan. 13, 2021) ............................................ 2
`Oticon Medical AB v. Cochlear Limited,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) ............................................ 4
`Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01552, Paper 11 (P.T.A.B. Mar. 3, 2021) .................................... 2, 4, 5
`Sand Revolution II, LLC v. Cont’l Intermodal Group,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ........................................... 3
`Snap, Inc. v. SRK Tech. LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ............................................ 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................. 4
`
`ii
`
`
`
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ........................................... 5
`Supercell Oy v. GREE, Inc.,
`PGR2020-00039, Paper 14 (P.T.A.B. Sept. 14, 2020) ......................................... 3
`
`iii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Third Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00413, Document 98 (E.D. Tex.
`Dec. 30, 2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Complaint, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00413, Document 1 (E.D. Tex. Dec. 31, 2019)
`
`Defendant Supercell Oy’s Preliminary Ineligibility Contentions,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D.
`Tex.), dated June 1, 2020
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00413 (E.D. Tex.), dated June 1, 2020
`
`Exhibit A-4 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D. Tex.),
`dated June 1, 2020
`
`Excerpts of the Expert Report of Stacy Friedman, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D. Tex.), dated
`December 23, 2020
`
`Buehler, Katie, ‘Clash of Clans’ Game Maker Owes $8.5M, Texas
`Jury Says, Law360 (September 18, 2020)
`
`Order, Solas OLED Ltd. v. Samsung Display Co., Ltd. et al., Civil
`Action No. 2:19-cv-001520, Document 302 (E.D. Tex. Nov. 20,
`2020)
`
`Claim Construction Memorandum Opinion and Order, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00413, Document 85
`(E.D. Tex. Nov. 6, 2020)
`
`Notice of Hearing, GREE, Inc. v. Supercell Oy, Civil Action No.
`2:19-cv-00413 (E.D. Tex. Jan. 7, 2021)
`iv
`
`
`
`Exhibit No.
`2011
`
`Description
`Fourth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00413, Document 100 (E.D. Tex.
`Jan. 29, 2021)
`
`2012
`
`2013
`
`Joint Motion to Amend Docket Control Order, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00413, Document 137
`(E.D. Tex. Mar. 5, 2021)
`
`Second Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:20-cv-00113, Document 49 (E.D. Tex.
`Dec. 30, 2020)
`
`v
`
`
`
`I.
`
`The Petition Should Be Denied Under § 324(a)
`In Patent Owner’s Preliminary Response (Paper 7, “POPR”), Patent Owner
`
`explains why the Board should exercise its discretion under 35 U.S.C. § 324(a) to
`
`deny the instant Petition in accordance with a holistic review of all the Fintiv factors.
`
`In Reply, Petitioner boldly asks this Board to disregard a majority of the Fintiv
`
`factors and simply find “Factors 4 and 6 to be definitive.” Paper 8 (“Reply”), at 3.
`
`This is improper and incorrect. Moreover, Petitioner’s cursory dismissal of Fintiv
`
`Factors 1, 3, and 5 as “neutral” or of “little weight” is not only inappropriate, but
`
`also belied by the record. See POPR, at 8–10, 16–20, 31. And Petitioner’s arguments
`
`regarding Factors 4 and 6, as well as Factor 2, fail for similar and additional reasons.
`
`A.
`
`Fintiv Factor 2: Trial Date Remains Well in Advance of Board’s
`Statutory Deadline for Final Written Decision
`Petitioner’s speculative claim that trial in the parallel district court proceeding
`
`may not proceed in short order ignores that the district court’s continuance of other
`
`in-person jury trials “during December of 2020 and January through February of
`
`2021” does not expressly modify the jury trial in the parallel proceeding here. Ex.
`
`2008. Petitioner urges the Board to ignore this fact and, instead, speculate that the
`
`continuance will “cause a cascade of delays to the Court’s calendar.” Reply, at 4.
`
`But this Board “decline[s] … to speculate how long [a] trial date … may be delayed
`
`due to the effects of [a] district court’s backlog and practices in light of the COVID-
`
`19 pandemic.” 10X Genomics, Inc. v. President & Fellows of Harvard College,
`
`
`
`IPR2020-01180, Paper 23, at 11 (P.T.A.B. Jan. 13, 2021). And this Board has, in
`
`fact, rejected this same argument from another petitioner regarding this same
`
`continuance by the district court—in favor of facts in the record. KeyMe, LLC v. The
`
`Hillman Group, Inc., IPR2020-01028, Paper 12, at 8–9 (P.T.A.B. Jan. 13, 2021).
`
`Additionally, the parties filed a motion to reschedule the trial in the parallel
`
`proceeding from May 3, 2021 to August 2, 2021—when the parties are already
`
`calendared for a trial involving the same accused product (Ex. 2013, at 1)—to
`
`alleviate any stress on the district court’s calendar. Ex. 2012. But this slight delay
`
`does not “materially alter” the weighing of this factor given trial will still occur more
`
`than eight months before the deadline to issue a final written decision under this
`
`schedule. See, e.g., Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`
`IPR2020-01552, Paper 11, at 16 (P.T.A.B. Mar. 3, 2021) (“[E]ven if we were to
`
`assume that there may be a four-month delay, this factor would still weigh in favor
`
`of exercising our discretion to deny institution because the parallel trial in the District
`
`Court would begin about seven months before a Final Written Decision would be
`
`due in this proceeding.”); KeyMe, IPR2020-01028, Paper 12, at 8–9 (similar).
`
`Petitioner’s further speculation regarding the trial date due to alleged
`
`uncertainly as to “whether and when the Court will conduct any future trials” (Reply,
`
`at 4–5) similarly fails. See Ex. 2011, at 1. First, the district court has already resumed
`
`jury trials as of March 1, 2021. Second, the Board has recognized that any
`2
`
`
`
`“generalized speculation as to trial dates universally (e.g., due to impacts of COVID-
`
`19)” is “outweighed” by the fact that the jury trial in a parallel proceeding is
`
`scheduled to occur a significant number of months before the Board’s statutory
`
`deadline for a final written decision—as is the case here. See POPR, at 13–14.
`
`The facts here are distinguishable from those in Sand Revolution II, LLC v.
`
`Cont’l Intermodal Group, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020).
`
`There, the court had entered a “loose date at which trial might occur,” which the
`
`Board found “indicates a continuing degree of recognized uncertainty of the court’s
`
`schedule by the court.” Id. at 9; Supercell Oy v. GREE, Inc., PGR2020-00039, Paper
`
`14, at 11 (P.T.A.B. Sept. 14, 2020). No such uncertainty exists here, as discussed.
`
`See Ex. 2012, at 2; see also Ex. 2011, at 1. Indeed, the parties are already calendared
`
`for a trial involving the same accused product on August 2, 2021. Ex. 2013, at 1.
`
`Fintiv Factor 4: Substantial Overlap of Issues in the Two Forums
`B.
`Petitioner does not dispute some overlap of issues between the two tribunals,
`
`including in view of Petitioner’s common assertion of the Gilson reference. See
`
`POPR, at 21–31. Petitioner argues simply that discretionary denial is inappropriate
`
`because a single reference cited in the Petition (Master Hearthstone, “MH”) is not
`
`also at issue in the litigation. Reply, at 1. But, as Patent Owner previously explained,
`
`this factor does not require complete duplication of prior art evidence between the
`
`3
`
`
`
`two forums. See POPR, at 29–30; Samsung, IPR2020-01552, Paper 11, at 24. And
`
`tellingly, Petitioner fails to acknowledge, let alone rebut, that argument.
`
`Instead, Petitioner relies on inapposite decisions. In Oticon Medical AB v.
`
`Cochlear Limited, the Board declined to exercise discretion under § 314(a) after “a
`
`balanced assessment of all relevant circumstances,” including the absence of a trial
`
`date. IPR2019-00975, Paper 15, at 22–24 (P.T.A.B. Oct. 16, 2019). In Snap, Inc. v.
`
`SRK Tech. LLC, the Board found this factor weighed in favor of not exercising
`
`discretion under § 314(a) given numerous differences in the art asserted “as well as
`
`the stay of the parallel District Court proceeding.” IPR2020-00820, Paper 15, at 16
`
`(P.T.A.B. Oct. 21, 2020) (emphasis added). In Sotera Wireless, Inc. v. Masimo
`
`Corp., the Board found this factor weighed in favor of not exercising discretion
`
`under § 314(a) in view of petitioner’s stipulation that “if IPR is instituted, [petitioner]
`
`will not pursue in the District Court Litigation any ground raised or that could have
`
`been reasonably raised in an IPR.” IPR2020-01019, Paper 12, at 18–19 (P.T.A.B.
`
`Dec. 1, 2020) (emphasis added). None of those unique facts exists here.
`
`Petitioner also misrepresents that this factor requires a complete identity of
`
`challenged claims between the two forums. Reply, at 2. That is not so. See POPR, at
`
`26–27; Samsung, IPR2020-01552, Paper 11, at 21–23. Moreover, Petitioner’s claim
`
`that Patent Owner may drop asserted claims at the district court before trial (Reply,
`
`at 2) is not only speculative but immaterial given the facts here. Petitioner’s
`4
`
`
`
`challenges in each ground of the instant Petition present the “same reasons” across
`
`all independent claims. Pet. at 15–39, 65–67. Thus, resolution of Petitioner’s
`
`challenge to any claim at the district court will resolve key issues in the Petition. See
`
`Fintiv, IPR2020-00019, Paper 11, at 13; Samsung, IPR2020-01552, Paper 11, at 23.
`
`Fintiv Factor 6: Other Relevant Considerations
`C.
`Petitioner’s (incorrect) characterization of the merits as “strong” (Reply, at 3)
`
`does not justify institution in view the required balancing of all the Fintiv factors,
`
`including the advanced stage of the parallel proceeding. Even an allegedly “strong
`
`case on the merits” can be outweighed by the facts underlying Fintiv factors 2–5
`
`collectively. Supercell Oy v. GREE, Inc., IPR2020-00215, Paper 10, at 18 (P.T.A.B.
`
`June 10, 2020); e.g., 10X Genomics, IPR2020-01180, Paper 23 at 16–17.
`
`And once again the cases cited by Petitioner are distinguishable. For example,
`
`in Apple Inc. v. Seven Networks, LLC, the Board instituted review largely because
`
`of the finding that “it would be inefficient to discretionarily deny institution” given
`
`the “unique circumstance … where the Office has already instituted proceedings
`
`challenging other patents in dispute in the parallel proceeding.” IPR2020-00235,
`
`Paper 10, at 17, 20 (P.T.A.B. July 28, 2020). There is no such “unique circumstance”
`
`here. Quite the opposite, the Board has denied institution on multiple other petitions
`
`filed by this same Petitioner against this same Patent Owner in view of similar
`
`circumstances in accordance with the Board’s discretion. See POPR, at 32.
`5
`
`
`
`II.
`
`The Petition Failed to Demonstrate that MH Was Publicly Accessible
`Petitioner’s contention that “particular evidence included with the petition”
`
`demonstrates that MH was publicly accessible, and thus a printed publication
`
`(Reply, at 6), is belied by Petitioner’s submission of multiple, new exhibits with its
`
`Reply. See Exs. 1022–1023. And, critically, while Petitioner received leave to file a
`
`reply to address the availability of MH as a prior art reference, Petitioner did not
`
`request leave, nor demonstrate the requisite “good cause,” to submit additional
`
`evidence regarding the same. See Hulu, LLC v. Sound View Innovations, LLC,
`
`IPR2018-01039, Paper 29, at 7 (P.T.A.B. Dec. 20, 2019); see also Guardian Alliance
`
`Techs., Inc. v. Miller, IPR2020-00031, Paper 27, at 8–9 (P.T.A.B. July 27, 2020)
`
`(noting the evidence presented “in the Petition” must “make a prima facie case of
`
`public accessibility” (emphasis added)). The Board should thus disregard new, and
`
`unauthorized, Exhibits 1022 and 1023. These exhibits should have been presented
`
`“in the Petition” to “make a prima facie case of public accessibility,” Guardian
`
`Alliance, IPR2020-00031, Paper 27, at 9, but undisputedly were not.
`
`The fact that Petitioner previously submitted these exhibits with a petition in
`
`a different proceeding (see Reply, at 7) only underscores Petitioner’s failure to
`
`submit these exhibits with the instant Petition. And Petitioner’s attempt to cast Patent
`
`Owner as somehow misrepresenting information to the Board regarding the public
`
`accessibly of MH in view of that different proceeding (Reply, at 7) is disingenuous
`6
`
`
`
`at best. “[T]he burden is on the petitioner to identify with particularity evidence
`
`sufficient to establish a reasonable likelihood that the reference was publicly
`
`accessible before the critical date of the challenged patent.” Hulu, IPR2018-01039,
`
`Paper 29, at 16. In its Preliminary Response, Patent Owner simply demonstrated that
`
`Petitioner had failed to carry its burden in the instant Petition. See POPR, at 45–55.
`
`In any event, Exhibits 1022 and 1023 fail to establish a reasonable likelihood
`
`that MH was “publicly accessible.” At most, the exhibits may demonstrate the MH
`
`was available on YouTube by 2014. But, as previously discussed (POPR, at 49–55),
`
`“[t]he availability of a reference on a website does not end the public accessibility
`
`inquiry.” Celltrion, LLC v. Biogen, Inc., IPR2017-01230, Paper 10, at 13 (P.T.A.B.
`
`Oct 12, 2017). Rather, Petitioner must show—with particularity—that MH was
`
`sufficiently indexed or catalogued on YouTube, or otherwise so independently well
`
`known to one with ordinary skill in the art, such that a skilled artisan, exercising
`
`reasonable diligence, could have located it. POPR, at 49, 55. But Petitioner has failed
`
`to do so. POPR, at 53–55. Petitioner’s expert’s vague and conclusory testimony that
`
`a POSITA would simply have known to use unspecified “indexing and search
`
`functions” of YouTube to find MH is insufficient. Cf. Google LLC v. IPA Techs.
`
`Inc., IPR2018-00384, Paper 8, at 13–15 (P.T.A.B. July 3, 2018) (requiring “evidence
`
`that a query of a search engine before the critical date … would have led to the
`
`reference appearing in the search results”).
`7
`
`
`
`Dated: March 5, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Sur-Reply to Petitioner’s Reply to Patent Owner’s Preliminary Response has been
`
`served electronically via email upon counsel for Petitioner at bhoffman-
`
`PTAB@fenwick.com.
`
`Dated: March 5, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
