Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 11
`Date: April 14, 2021
`
`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
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 11
`Date: April 14, 2021
`
`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
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`PGR2020-00088
`Patent 10,518,177 B2
`
`
`INTRODUCTION
`I.
`GREE, Inc. (“Patent Owner” or “GREE”) is the owner of U.S. Patent
`No. 10,518,177 B2 (“the ’177 patent”). Supercell Oy (“Petitioner” or
`“Supercell”) filed a petition requesting post-grant review of claims 1–17 of
`the ’177 patent. Paper 2 (“Pet.”). Patent Owner, in turn, filed a preliminary
`response. Paper 7 (“Prelim. Resp.”). With our prior authorization,
`Petitioner filed a preliminary reply. Paper 8 (“Prelim. Reply”). Also, with
`our prior authorization, Patent Owner filed a preliminary sur-reply. Paper 9
`(“Prelim. Sur-Reply”).
`Having considered the arguments and evidence of record, and for the
`reasons explained below, we exercise our discretion under 35 U.S.C.
`§ 324(a) and deny institution of post-grant review.
`A. Related Proceedings
`Petitioner indicates that the ’177 patent is the subject of GREE, Inc. v.
`Supercell Oy, No. 2:19-cv-00413-JRG-RSP (ED Tex.). Pet. 1 (the “parallel
`district court proceeding”); see also Paper 4, 3 (Patent Owner identifying the
`same district court proceeding).
`B. The ’177 Patent
`The ’177 patent is directed to “a game control method, a system, and a
`non-transitory computer-readable recording medium for providing client
`devices with a battle game over a network.” Ex. 1001, 1:15–17.
`Specifically, the ’177 patent relates to “games with a function to allow
`groups of players to battle each other” during predetermined time slots. Id.
`at 1:35–38. According to the ’177 patent, in this type of time slot group
`battle, “the participation rate of the group members in the battle tends to
`increase in the last half of the time slot,” but game providers want “players
`
`2
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`PGR2020-00088
`Patent 10,518,177 B2
`
`to participate actively in the battle throughout the entire time set.” Id. at
`1:66–2:1, 2:16–17. Another problem with this type of time slot group battle
`identified by the ’177 patent is that these battles “are often not divided up by
`level” such that “beginners may end up passively participating in a group
`battle” and “may therefore be unsuccessful.” Id. at 2:22, 2:29–31.
`In order to increase player participation throughout the entire time set
`and even the playing field for beginner players, the ’177 patent divides the
`battle game time slot into “a first portion, middle portion, and last portion”
`subdivisions and changes a battle condition in at least one of the subdivided
`time slots. Ex. 1001, 2:63–65. According to the ’177 patent, these
`modifications increase participation at the beginning of the battle time slot
`and allow beginners to enjoy the battle by, for example, setting a battle
`condition that increases the attack strength of low-level characters during a
`subdivision. Id. at 3:1–13.
`C. Representative Claim
`The ’177 patent includes seventeen claims, of which claims 1, 8, and
`14–17 are independent. All of the independent claims recite similar
`limitations and vary only as to type, where claims 1 and 8 are directed to a
`“non-transitory computer-readable recording medium . . . causing the one or
`a plurality of computers to execute steps of,” claims 14 and 15 are directed
`to a “battle game control method,” and claims 16 and 17 are directed to a
`“battle game control system.” Ex. 1001, 12:65–13:2, 13:55–59, 14:33–35,
`15:1–3, 15:25–26, 16:17–18. Representative claim 1 is reproduced below:
`1. A non-transitory computer-readable recording medium
`storing instructions to be executed by one or a plurality of
`computers capable of being used by a player conducting a
`
`3
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`PGR2020-00088
`Patent 10,518,177 B2
`
`
`battle game, the instructions causing the one or a plurality
`computers to execute steps of:
`displaying, on a first field, a plurality of cards selected
`from a deck which is a stack of virtual cards;
`during a first term of the battle game, conducting a battle
`to a first opponent character based on a parameter set on
`a card selected by a player’s operation under a first battle
`condition, wherein the first battle condition is not
`changed during the first term;
`at a conclusion of the first term of the battle game,
`automatically initiating a second term of the battle game,
`and during the second term of the battle game continued
`from the first term, conducting the battle to a second
`opponent character based on the parameter set on the
`card selected by the player’s operation under a second
`battle condition, wherein the second battle condition is
`different from the first battle condition and
`is
`predetermined independent from a battle result of the
`first term, and the first opponent character and the
`second opponent character are same or different,
`wherein the second battle condition is not changed
`during the second term;
`during a third term of the battle game continued from the
`second term, conducting the battle to a third opponent
`character based on the parameter set on the card selected
`by the player’s operation under a third battle condition,
`wherein the third battle condition is different from the
`second battle condition and is dependent on a battle
`result of the second term, and the second opponent
`character and the third opponent character are same or
`different, and wherein the third battle condition is not
`changed during the third term.
`Ex. 1001, 12:65–13:32.
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–17 are unpatentable based on the
`following grounds.
`
`4
`
`
`
`PGR2020-00088
`Patent 10,518,177 B2
`
`
`Claim(s) Challenged
`1–17
`1–17
`
`35 U.S.C. §
`101
`103(a)
`
`Reference(s)/Basis
`Ineligible Subject Matter
`Master Hearthstone, 1 Gilson2
`
`Petitioner relies on the Declaration of Steve Meretzky (Ex. 1005).
`III. ANALYSIS
`A. Discretion Under 35 U.S.C. § 324(a)
`Patent Owner urges the Board to exercise discretion to deny
`institution of post-grant review under 35 U.S.C. § 324(a) “because Petitioner
`raises substantially the same arguments and prior art in a parallel district
`court proceeding filed more than one year ago and scheduled for trial in less
`than four months (May 10, 2021).” Prelim. Resp. 1 (citing NHK Spring Co.,
`Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB
`Sept. 12, 2018) (precedential)); Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 6 (PTAB, Mar. 20, 2020) (precedential) (“Fintiv”). Patent
`Owner asserts that “it would be an inefficient use of Board, party, and
`judicial resources to institute the present proceeding under these
`circumstances. Indeed the possibility of duplication of efforts here is high,
`as is the potential for inconsistent results, due to both tribunals considering
`substantially the same issues.” Id. at 2. Petitioner disagrees. Prelim. Reply
`1–5.
`
`1. Legal Standards
`35 U.S.C. § 324(a) states that
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`
`1 “Master Hearthstone in 10 Minutes!” (Ex. 1012, “MH”).
`2 US 2013/0281173 A1, published October 24, 2013 (Ex. 1013, “Gilson”).
`
`5
`
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`PGR2020-00088
`Patent 10,518,177 B2
`
`
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`The portion of the statute reading “[t]he Director may not
`authorize . . . unless” mirrors the language of 35 U.S.C. § 314(a), which
`concerns inter partes review. This language of sections 314(a) and 324(a)
`provides the Director with discretion to deny institution of a petition. See
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`Office’s discretion.”); Consolidated Trial Practice Guide November 2019
`(“TPG”)3 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.” TPG at 58.
`The Board’s precedential NHK Spring decision explains that the Board may
`consider the advanced state of a related district court proceeding, among
`other considerations, as a “factor that weighs in favor of denying the Petition
`under § 314(a).” NHK Spring Co., IPR2018-00752, Paper 8 at 20.
`The Board’s precedential Fintiv decision identifies several factors to
`be considered when analyzing issues related to the Director’s discretion to
`deny institution, with the goal of balancing efficiency, fairness, and patent
`quality. See Fintiv at 5‒6. These factors include: 1) whether a stay exists or
`is likely to be granted if a proceeding is instituted; 2) proximity of the
`court’s trial date to the Board’s projected statutory deadline; 3) investment in
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`6
`
`
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`PGR2020-00088
`Patent 10,518,177 B2
`
`the parallel proceeding by the court and parties; 4) overlap between issues
`raised in the petition and in the parallel proceeding; 5) whether the petitioner
`and the defendant in the parallel proceeding are the same party; and 6) other
`circumstances and considerations that impact the Board’s exercise of
`discretion, including the merits. Id.
`We recognize that NHK Spring and the Fintiv Order apply the
`Director’s discretion pursuant to 35 U.S.C. § 314(a), and do not specifically
`extend their application to 35 U.S.C. § 324(a), which is the relevant statute
`that applies to this PGR proceeding. As noted above, however, the pertinent
`statutory language is the same in both section 314(a) and section 324(a).
`Moreover, the policy justifications associated with the exercise of
`discretion—inefficiency, duplication of effort, and the risk of inconsistent
`results—apply equally to post-grant review proceedings under 35 U.S.C.
`§ 324(a). Accordingly, we weigh the factors set forth in the Fintiv Order to
`the facts here. See, e.g., Teva Pharms. USA, Inc. v. Corcept Therapeutics,
`Inc., PGR2019-00048, Paper 19 at 11 (Nov. 20, 2019) (analyzing NHK
`Spring and instituting trial); Stripe, Inc. v. Boom! Payments, Inc.,
`CBM2020-00002, Paper 22 (May 19, 2020) (analyzing the Fintiv Order and
`instituting trial); see also infra Factor 6 (considering Petitioner’s policy
`arguments).
`2. Fintiv Factors
`In determining whether to institute trial in this proceeding, we
`consider each of the factors set forth in Fintiv below.
`a. Factor 1: whether a stay exists or is likely to be
`granted if a proceeding is instituted
`Patent Owner asserts that “Petitioner has undisputedly not requested a
`stay, the district court has undisputedly not granted any stay, and the record
`
`7
`
`
`
`PGR2020-00088
`Patent 10,518,177 B2
`
`does not include any evidence to even suggest that a stay, if requested,
`would be granted.” Prelim. Resp. 9. Petitioner replies that the likelihood of
`a stay requires speculation and is not dispositive. Prelim. Reply 5. We
`agree with Petitioner that analysis of this factor requires speculation. As
`such, we determine that the facts underlying this factor are neutral.
`b. Factor 2: proximity of the court’s trial date to the
`Board’s projected statutory deadline for a final
`written decision
`Patent Owner asserts that trial in the parallel district court proceeding
`“is scheduled to conclude more than eleven months before a final written
`decision would be due in this proceeding (i.e., April 2022), if the Board were
`to institute.” Prelim. Resp. 10 (citing 35 U.S.C. § 326(a)(11)). Petitioner
`replies that “Factor 2 (Trial Proximity) should be afforded little weight
`because the trial will address different art.” Prelim. Reply 4. In addition,
`Petitioner contends that “determining the true trial date requires speculation”
`because “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.” Id.
`Patent Owner responds that “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.” Prelim. Sur-
`Reply 1. Patent Owner responds further that “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.” Id. at 2 (citing Ex. 2013, 1). According to Patent Owner,
`
`8
`
`
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`PGR2020-00088
`Patent 10,518,177 B2
`
`“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.” Id. (citing Samsung Elecs. Co.
`Ltd. v. Clear Imaging Research, LLC, IPR2020-01552, Paper 11 at 16
`(PTAB Mar. 3, 2021)); KeyMe, LLC v. The Hillman Group, Inc., IPR2020-
`01028, Paper 12 at 8‒9 (PTAB Jan. 13, 2021).
`The record before us indicates that trial is scheduled for May 3, 2021,
`but may be rescheduled for August 2, 2021. Under either scenario, trial in
`the parallel district court proceeding will conclude at least eight months
`before a final written decision in this proceeding would be due. Thus, the
`facts underlying this factor weigh toward denying institution.
`c. Factor 3: investment in the parallel proceeding by the
`court and the parties
`Patent Owner asserts that “the parties and the district court have each
`already invested, and will have invested even more, substantial resources in
`the parallel proceeding by the time this Board decides whether to institute a
`trial in April 2021.” Prelim. Resp. 16. Patent Owner explains that claim
`construction briefing and argument is complete, and the district court has
`issued its claim construction order. Id. According to Patent Owner, “the
`parties will have already completed both fact and expert discovery, and
`further will have completed all briefing on dispositive and Daubert motions,
`as well as pre-trial orders, by the time this Board decides whether to institute
`a trial.” Id. at 17 (citing Ex. 2001). Specifically, Patent Owner asserts that
`“fact discovery [was] already closed on December 15, 2020,” expert
`discovery was completed on January 27, 2021, “the parties’ respective
`dispositive and Daubert motions [were] due on February 1, 2021,” and
`“[t]he Final Joint Pretrial Order [was] due by March 18, 2021, with the
`
`9
`
`
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`PGR2020-00088
`Patent 10,518,177 B2
`
`Pretrial Conference set for March 31, 2021—both before the deadline for
`this Board to decide whether to institute trial.” Id. (citing Ex. 2001, 1–2).
`Petitioner replies that “[t]he 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.” Prelim. Reply 5.
`On the record before us, we agree with Patent Owner that “[t]he
`district court and parties have each already invested, and will have invested
`even more, substantial resources in claim construction, fact discovery, expert
`discovery, dispositive motions, [and] pretrial disclosures.” Prelim. Resp. 18.
`For the reasons discussed below, we disagree with Petitioner’s assertions
`that the investment made by the court and the parties was directed to non-
`overlapping issues. Thus, the facts underlying this factor weigh towards
`denying institution.
`d. Factor 4: overlap between issues raised in the petition
`and in the parallel proceeding
`Patent Owner asserts that “[t]here is substantial overlap between the
`claims, grounds, arguments, and evidence presented in the Petition and what
`has been, and continues to be, litigated in the parallel district court
`proceeding.” Prelim. Resp. 21 (citations omitted). According to Patent
`Owner, “[w]ith respect to Petitioner’s § 101 challenge, Petitioner relies on
`the same arguments before the two tribunals” and “[w]ith respect to
`Petitioner’s § 103 challenge, Petitioner relies on some of the same art—
`Gilson (U.S. Patent Pub. No. 2013/0281173)—in its district court Invalidity
`Contentions, and related expert report, as that asserted in the Petition.” Id.
`at 22–24 (citing for example Ex. 2004, 8 (Table 1), 12 (Table 3); Ex. 2005;
`
`10
`
`
`
`PGR2020-00088
`Patent 10,518,177 B2
`
`Ex. 2006 ¶ 283; Pet. 10, 45–46; Ex. 1019; NHK Spring, IPR2018-00752,
`Paper 8 at 19).
`Petitioner replies that “the Board should proceed with the PGR
`because ‘the Board proceeding would not be directly duplicative of the
`District Court[’s] consideration of validity.’” Prelim. Reply 2 (citing Oticon
`Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at 23–24 (PTAB
`Oct. 16, 2019) (precedential)). According to Petitioner, Patent Owner
`“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.” Id.
`(citing Prelim. Resp. 23–25). Petitioner replies further that “[o]ther
`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.” Id. (citing Ex. 2004, 1, 3). Regarding the challenge based on
`§ 101, Petitioner contends that “overlap regarding the § 101 challenge in this
`forum does not support discretionary denial.” Id. at 3 (citing “strong public
`interest”).
`The record before us indicates that for Ground 1 there is substantial
`overlap between the arguments raised in the parallel district court
`proceeding and this proceeding. Compare Pet. 15–40 with Ex. 2003;
`Ex. 2004, Ex. 2006. For Ground 2 there is also overlap because Gilson is
`relied upon as prior art in both proceedings. Thus, the facts underlying this
`factor weigh toward denying institution.
`
`11
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`PGR2020-00088
`Patent 10,518,177 B2
`
`
`e. Factor 5: whether the Petitioner and the defendant in
`the parallel proceeding are the same party
`Patent Owner asserts that “Petitioner and Patent Owner are the
`defendant and plaintiff, respectively, in the parallel district court
`proceeding.” Prelim. Resp. 31 (citing Ex. 2002). Thus, according to Patent
`Owner, “this factor weighs in favor of the Board exercising its discretion to
`deny institution pursuant to § 324(a).” Id. Petitioner replies that this factor
`should be given little weight. Prelim. Reply 5.
`On the record before us, the fact that Petitioner here is the defendant
`in the parallel proceeding, when viewed in the context of the other facts in
`this case, weighs in favor of denying institution.
`f. Factor 6: other circumstances that impact the
`Board’s exercise of discretion, including the merits
`Patent Owner asserts that “the merits of the grounds asserted in the
`instant Petition are far from strong” and that “even an allegedly ‘strong case
`on the merits’ can be outweighed by the facts underlying factors 2–5.”
`Prelim. Resp. 31–32 (citation omitted). Petitioner replies that “[e]ach
`ground in the petition presents a strong case on the merits.” Prelim. Reply 3.
`In support of this position, Petitioner contends that Patent Owner “is reduced
`to arguing in response that a POSITA in 2014 would not know how to use
`YouTube.” Id. (citing Prelim. Resp. 49).
`When considering whether to exercise discretion to deny a petition,
`we undertake a balanced assessment of all relevant circumstances in the
`case, including the merits. Fintiv, 14. Although we need not undertake a
`full merits analysis when evaluating Fintiv Factor 6, we consider the
`strengths and weaknesses of the merits, where stronger merits may favor
`institution and weaker merits may favor exercising discretion to deny
`
`12
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`PGR2020-00088
`Patent 10,518,177 B2
`
`institution. Id. at 15–16. We also consider the other circumstances
`identified by the parties as pertinent to exercise of discretion.
`Upon our initial review of the merits based on a preliminary record,
`we determine that Petitioner’s challenge based on § 101 has merit. We
`further determine that Petitioner’s challenge based on § 103 also has merit.
`Accordingly, the facts underlying this factor are neutral.
`g. Holistic Analysis of Fintiv Factors
`We undertake a holistic analysis of these factors, considering
`“whether efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, Paper 11 at 6. In this case, all of the factors
`weigh in Patent Owner’s favor except for the first and sixth factors which
`are neutral. Specifically, the trial date, investment, overlap, and same parties
`factors outweigh facts that may support exercising discretion to deny
`institution.
`A balancing of the facts and circumstances as discussed above leads
`us to conclude, on this record, that the inefficient duplication of efforts here
`is likely. Accordingly, we determine that the circumstances presented weigh
`in favor of denying institution under 35 U.S.C. § 324(a).
` III. CONCLUSION
`Taking account of the information presented in the Petition, the
`Preliminary Response, the Preliminary Reply, the Preliminary Sur-Reply,
`and the evidence of record, we exercise our discretion under § 324(a) and
`deny institution. Accordingly, the Petition is denied, and no trial is
`instituted.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`
`13
`
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`PGR2020-00088
`Patent 10,518,177 B2
`
`
`
`ORDERED that the Petition is denied, and no trial is instituted.
`
`14
`
`
`
`PGR2020-00088
`Patent 10,518,177 B2
`
`PETITIONER:
`
`Brian M. Hoffman
`Kevin X. McGann
`Jennifer R. Bush
`Gregory A. Hopewell
`FENWICK & WEST LLP
`bhoffman-ptab@fenwick.com
`kmcgann-ptab@fenwick.com
`jbush-ptab@fenwick.com
`ghopewell@fenwick.com
`
`
`PATENT OWNER:
`
`John C. Alemanni
`Andrew Rinehart
`Joshua H. Lee
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`jlee@kilpatricktownsend.com
`
`Scott A. McKeown
`ROPES & GRAY
`scott.mckeown@ropesgray.com
`
`15
`
`
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