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 RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`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 RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`B.
`
`C.
`
`Page
`The Petition Was Appropriately Denied Under § 324(a) ................................ 1
`A.
`The Board’s Conclusion Regarding Factor 2 Does Not
`Misapprehend or Overlook Fact Findings ............................................. 1
`The Board’s Conclusion Regarding Factor 2 Does Not
`Misapprehend or Overlook Fact Findings ............................................. 3
`The Board’s Conclusion Regarding Factor 4 Does Not
`Rest on Clearly Erroneous Fact Findings.............................................. 3
`The Board’s Conclusion Regarding Factor 6 Is Not
`Clearly Unreasonable, Arbitrary, or Fanciful ....................................... 4
`The Board Did Not Abuse Its Discretion In Denying
`Institution Under § 324(a) In Accordance with Fintiv .......................... 5
`
`D.
`
`E.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 22 (P.T.A.B. Oct. 28, 2020) ............................................ 2
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 17 (P.T.A.B. Nov. 2, 2020) ........................................... 5
`
`ii
`
`
`
`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)
`
`iii
`
`
`
`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
`
`2014
`
`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)
`
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00413, Document 139 (E.D. Tex. Mar. 9,
`2021)
`
`iv
`
`
`
`I.
`
`The Petition Was Appropriately Denied Under § 324(a)
`The Board did not abuse its discretion in denying institution based on “a
`
`holistic analysis” of the Fintiv Order Factors. Paper 11 (“Decision”), at 13. The
`
`Board found that, “[i]n this case, all of the factors weigh in Patent Owner’s favor
`
`except for the first and sixth factors which are neutral.” Id. And overall, the Board
`
`found that “[a] balancing of the facts and circumstances”—including the “trial date,
`
`investment, overlap, and same parties factors”—“leads [the Board] to conclude, on
`
`this record, that the inefficient duplication of efforts here is likely.” Id.
`
`Petitioner’s Request for Rehearing of that Decision boldly asks the Board to
`
`wholly ignore the impending trial between the parties regarding the subject patent
`
`(i.e., Factors 2, 3, and 5) and simply find “Factors 4 and 6 to be definitive.” Paper
`
`12 (“Request”), at 6. This is improper and incorrect. The Board’s precedential order
`
`in Fintiv prescribes a holistic review and evaluation of all six Fintiv Factors to
`
`determine “whether efficiency and integrity of the system are best served by denying
`
`or instituting review.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6
`
`(P.T.A.B. Mar. 20, 2020). The Board performed such a full and proper analysis in
`
`its Decision, and thus did not abuse its discretion in denying institution.
`
`A.
`
`The Board’s Conclusion Regarding Factor 2 Does Not
`Misapprehend or Overlook Fact Findings
`The Board’s Decision correctly noted that, while trial in the parallel district
`
`court proceeding was scheduled for May 3, 2021, there was a likelihood trial would
`
`
`
`be “rescheduled for August 2, 2021.” Decision, at 9. The Board concluded that,
`
`“[u]nder either scenario, … the facts underlying this factor weight toward denying
`
`institution” Id. And, in fact, just days prior to the Decision, trial was rescheduled for
`
`August 2, 2021. Ex. 2014. Thus, the Board’s conclusion regarding Factor 2—
`
`proximity of the court’s trial date to the Board’s projected statutory deadline for a
`
`final written decision—does not rest on a clearly erroneous fact finding.
`
`Petitioner’s contention otherwise is essentially that Factor 2 should favor
`
`institution—regardless of the specific trial date—when there is not complete overlap
`
`between the prior art references asserted at the two tribunals. See Request, at 5, 7.
`
`This is not correct. Factor 2 “weigh[s] … in favor of exercising authority to deny
`
`institution” “[i]f the court’s trial date is earlier than the projected statutory
`
`deadline”—regardless of the complete overlap of prior art references between the
`
`two tribunals. Fintiv, IPR2020-00019, Paper 11, at 9; see, e.g., Amazon.com, Inc. v.
`
`Vocalife LLC, IPR2020-00864, Paper 22, at 10 (P.T.A.B. Oct. 28, 2020) (finding
`
`Factor 2 “strongly favors exercising [] discretion to deny institution” where jury trial
`
`has been completed, despite the fact the Petitioner did not present certain prior art
`
`references to the jury, and thus “the jury did not consider Grounds 1a–1e of the
`
`Petition”). In short, “the overlap between issues raised in the petition and in the
`
`parallel proceeding” is more appropriately the subject of Factor 4—not Factor 2.
`
`Fintiv, IPR2020-00019, Paper 11, at 9.
`
`2
`
`
`
`B.
`
`The Board’s Conclusion Regarding Factor 3 Does Not
`Misapprehend or Overlook Fact Findings
`In the Decision, the Board correctly found that Factor 3 “weighs toward
`
`denying institution” given the “substantial” investments made in the parallel
`
`proceeding by both the district court and the parties. Decision, at 10. Once again,
`
`Petitioner’s criticism of the Board’s findings regarding this Factor rests solely on its
`
`contention that those undisputed investments are essentially irrelevant given the
`
`purported “lack of overlap” of issues between the two tribunals. Request, at 5, 7. But
`
`“the overlap between issues raised in the petition and in the parallel proceeding” is
`
`better addressed at Factor 4—not Factor 3. Fintiv, IPR2020-00019, Paper 11, at 6.
`
`And, in any event, the Board previously “disagree[d] with Petitioner’s assertions that
`
`the investment made … was directed to non-overlapping issues.” Decision, at 10.
`
`C.
`
`The Board’s Conclusion Regarding Factor 4 Does Not Rest on
`Clearly Erroneous Fact Findings
`In the Decision, the Board correctly determined that Factor 4 “weigh[s]
`
`toward denying institution” in view of (i) the “substantial overlap” between
`
`Petitioner’s § 101 challenge in the parallel district court proceeding and Ground 1 of
`
`the Petition, and (ii) the “overlap” between Petitioner’s prior art challenge in the
`
`parallel district court proceeding and Ground 2 of the Petition “because Gilson is
`
`relied upon as prior art in both proceedings.” Decision, at 10–11. Critically, in its
`
`Request, Petitioner does not dispute the “substantial overlap” with respect to the §
`
`3
`
`
`
`101 challenge nor argue that the Board abused its discretion in arriving at that
`
`finding. Rather, Petitioner simply argues the Board erred in finding “overlap”
`
`between Petitioner’s prior art challenges given that “the primary reference in Ground
`
`2” (Master Hearthstone) is “not applied in the district court.” Request, at 3–4.
`
`But this is simply a repackaging of Petitioner’s same, earlier argument (see
`
`Paper 8, at 1–2), which the Board already rejected. Decision, at 11. As previously
`
`explained, this Factor does not require complete duplication of prior art evidence
`
`between the two forums. See Paper 7, at 29–30; Paper 9, at 3–4. And the decisions
`
`relied on by Petitioner are distinguishable from the facts here. See Paper 9, at 3–5.
`
`Likewise, Petitioner’s restated argument (see Paper 8, at 2–3) that this Factor
`
`allegedly favors institution because “only 11 claims remain in the district court
`
`proceeding” (Request, at 4) fails. Resolution of Petitioner’s challenge to any claim
`
`of the ’177 Patent at the district court will resolve key issues in the Petition given
`
`Petitioner’s challenges in each ground here present the same reasons across all
`
`independent claims of the ’177 Patent. See Paper 7, at 26–27; Paper 9, at 4–5.
`
`D.
`
`The Board’s Conclusion Regarding Factor 6 Is Not Clearly
`Unreasonable, Arbitrary, or Fanciful
`The Board correctly determined that Factor 6 is “neutral” because the merits
`
`of the challenges set forth in the instant Petition are neither weak nor strong.
`
`Decision, at 12–13. Petitioner contends that this conclusion is “clearly unreasonable,
`
`arbitrary, or fanciful” in light of the Board’s comment that each of Petitioner’s
`4
`
`
`
`challenges “has merit” and is thus, inherently, adequate for institution. Request, at
`
`5–6. Petitioner is incorrect. As set forth in Fintiv, this Factor favors institution only
`
`“[i]f the merits of a ground raised in the petition seem particularly strong on the
`
`preliminary record.” IPR2020-00019, Paper 11, at 14–15 (emphasis added). And
`
`simply having “merit” adequate for institution necessarily does not satisfy this
`
`standard. If the challenge did not have “merit” in the first instance there would be
`
`no reason for the Board to analyze whether it should exercise its discretion to
`
`nonetheless deny institution under § 324(a).
`
`E.
`
`The Board Did Not Abuse Its Discretion In Denying Institution
`Under § 324(a) In Accordance with Fintiv
`The Board did not abuse its discretion in reaching its conclusion under a
`
`holistic analysis of all of the Fintiv Factors. Petitioner’s argument otherwise suggests
`
`that the Board should have found “Factors 4 and 6 to be definitive … regardless of
`
`its findings regarding other factors.” Request, at 6. Such a proposition is directly
`
`contrary to the Board’s precedential decision in Fintiv, as noted above. And none of
`
`the decisions cited by Petitioner support such a divergence from the required holistic
`
`analysis of all of the Fintiv Factors. See Request, at 6. Those decisions are also
`
`distinguishable from the facts here. See Paper 9, at 3, 5. Petitioner’s challenge to the
`
`entire “NHK-Fintiv framework” as “procedurally invalid” (Request, at 7–9) also
`
`fails, as previously found by this Board. See, e.g., Supercell Oy v. GREE, Inc.,
`
`PGR2020-00034, Paper 17, at 11–12 (P.T.A.B. Nov. 2, 2020).
`5
`
`
`
`Dated: June 10, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Request for Rehearing Under 37 C.F.R. §42.71 has been
`
`served electronically via email upon counsel for Petitioner at bhoffman-
`
`PTAB@fenwick.com.
`
`Dated: June 10, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`7
`
`
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
