PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ..................................................................................................... 1
`A.
`There Is Minimal Overlap Between the Proceedings ...................................... 1
`B.
`The Minimal Overlap Is Wholly Relevant to the Board’s Analysis
`Under Factors 2 and 3 ...................................................................................... 3
`Patent Owner Misrepresents the Relevant Factor 6 Analysis ......................... 4
`
`
`
`C.
`
`
`
`i
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`
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`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) ............................ 1, 3, 4, 5
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)............................................. 3
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC,
`IPR2019-01393, Paper 24 (P.T.A.B. July 25, 2019) ............................................ 4
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 5
`
`
`
`ii
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`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
`1016
`“Dynamic game difficulty balancing,” Wikipedia page as captured by
`The Internet Archive on December 12, 2011
`
`1011
`
`1012
`
`iii
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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
`
`
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`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`INTRODUCTION
`A proper weighing of the Fintiv factors supports institution of PGR in the
`
`instant proceeding. Petitioner asserts different primary references in each forum,
`
`relying on Master Hearthstone (“MH”) in the PGR as an invalidating prior art
`
`reference against all claims of the challenged patent. The court in the parallel
`
`litigation will not evaluate whether the patent is obvious over MH in combination
`
`with Gilson, nor will the court assess validity of the unasserted claims. This
`
`minimal overlap affects not only Factor 4 (overlap) of the Fintiv analysis, but also
`
`Factors 2 (proximity to trial) and 3 (investment). The Board abused its discretion
`
`in finding Factor 6 (merits) to be neutral. A proper weighing of the Fintiv factors
`
`thus favors grant of rehearing and institution.
`
`A. There Is Minimal Overlap Between the Proceedings
`The minimal overlap between the instant proceeding and the litigation
`
`warrants institution of PGR. The complete absence of MH from the litigation
`
`coupled with the Board’s acknowledgement that “Petitioner’s challenge based on
`
`§ 103 [] has merit,” (Decision at 13) demonstrates that the Board recognizes
`
`MH includes disclosures that more likely than not render obvious claims of the
`
`challenged patent. Hence, the inclusion of MH constitutes a material difference
`
`between the art-based grounds in the instant proceeding and the invalidity grounds
`
`at issue in the parallel litigation – the PGR involves a publication disclosing a prior
`
`1
`
`
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`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`art battle card game that more likely than not renders obvious the key aspects of the
`
`’177 patent’s claims.
`
`Further, neither Patent Owner nor the Decision addresses the fact that the
`
`PGR involves claims materially distinct from those remaining in the litigation,
`
`including claims reciting what the battle conditions are (2, 9), the comparative levels
`
`of attack strength of the opponent characters under various battle conditions (4, 11),
`
`and characteristics of the game screen (claim 7). Moreover, the Petition
`
`demonstrates that these claims are invalid based on MH, the non-overlapping prior
`
`art reference. Pet. at 60-65. Tellingly, the Patent Owner does not even respond to
`
`Petitioner’s arguments that Patent Owner will likely drop additional claims from the
`
`litigation before trial.
`
`Patent Owner alleges that “[r]esolution of Petitioner’s challenge to any claim
`
`of the ’177 Patent at the district court will resolve key issues in the Petition”
`
`because the Petitioner’s challenges “present the same reasons across all
`
`independent claims.” Response at 4 (emphasis in original). This statement is
`
`simply false as the Petition presents a reason why the ’177 patent is obvious that is
`
`not at issue in the litigation. Additionally, overlap regarding the § 101 challenge in
`
`this forum does not support discretionary denial as there is 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.
`
`2
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`B.
`
`The Minimal Overlap Is Wholly Relevant to the Board’s Analysis
`Under Factors 2 and 3
`Contrary to Patent Owner’s assertions, concerns implicated by Factors 2 and
`
`3 are obviated by the minimal overlap with the parallel litigation. The Board in
`
`Fintiv explicitly recognized that “[s]ome facts may be relevant to more than one
`
`factor.” Apple Inc v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (P.T.A.B. March
`
`20, 2020) (Precedential). With respect to Factor 2, the Board opinion in NHK
`
`Spring (the only opinion referenced in the Fintiv Order discussion of Factor 2)
`
`anchored its analysis on the question of overlap. See NHK Spring Co. v. Intri-Plex
`
`Techs., Inc., IPR2018-00752, Paper 8 at 20 (P.T.A.B. Sept. 12, 2018) (Precedential)
`
`(“A trial before us on the same asserted prior art will not conclude until September
`
`2019”) (emphasis added).
`
`Here, the minimal overlap between the litigation and the instant PGR is
`
`wholly relevant to the analysis of Factor 2. Patent Owner does not dispute that the
`
`court will not address the validity of the ’177 patent on a ground raised in the
`
`Petition. Specifically, the court will not consider whether the primary reference in
`
`the instant PGR – Master Hearthstone – discloses limitations of the challenged
`
`claims and renders obvious the challenged claims in combination with Gilson. Nor
`
`will the court address at all the validity of claims 2, 4, 7, 9, or 11. Accordingly,
`
`there is minimal risk of inconsistent results between the proceedings.
`
`3
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`The minimal overlap is likewise relevant to Factor 3. The Board in Sand
`
`Revolution specifically looked at the type of investment that had occurred in the
`
`parallel proceeding in weighing Factor 3, concluding that the district court and the
`
`parties had not invested substantially in the merits of the invalidity positions. See
`
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-
`
`01393, Paper 24 at 10 (P.T.A.B. July 25, 2019) (“…much of the district court’s
`
`investment relates to ancillary matters untethered to the validity issue itself.”). The
`
`investment by the court in the parallel litigation has not been in whether the claims
`
`of the ’177 patent are obvious over the invalidity grounds raised in the Petition.
`
`Nor will the court make any investment on these grounds in the future.
`
`Patent Owner Misrepresents the Relevant Factor 6 Analysis
`C.
`Patent Owner’s characterization of the Factor 6 analysis under Fintiv is
`
`misleading and wrong. As an initial matter, Factor 6 does not favor institution
`
`“only” if the merits are particularly strong on the preliminary record, as Patent
`
`Owner asserts. Reply at 5. Rather, the Board in Fintiv concluded that a strong case
`
`on the merits would favor institution. Fintiv, IPR2020-00019, Paper 11 at 14-15
`
`(noting that the merits are considered “as part of a balanced assessment of all the
`
`relevant circumstances in the case”).
`
`Plus, the Board did conclude that Petitioner’s challenges under both § 101
`
`and § 103 are particularly strong. The Decision necessarily concluded that it is
`
`4
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`more likely than not that the ’177 patent is invalid under both grounds. Such merit
`
`is inherently “strong,” as it meets a higher burden than the IPR institution standard
`
`under consideration in Fintiv.
`
`In fact, the invalidity grounds presented in the Petition could not be any
`
`stronger; the Decision does not identify any weaknesses. The only discussion of
`
`the merits is found under Factor 6, and it opens with a statement that the Board
`
`“need not undertake a full merits analysis” and concludes with statements that both
`
`the § 101 and § 103 grounds have merit. Decision at 12-13 (citing Fintiv at 15-16).
`
`There is no analysis between the opening and concluding statements to that would
`
`support a finding that the invalidity grounds are less than maximum strength.
`
`Further, finding Factor 6 to be “neutral” in view of this record is abuse of
`
`discretion. There is nothing in the record to explain why the Board found Factor 6
`
`neutral. Not only that, the Board implies that it did not even perform a full merits
`
`analysis. Decision at 12. Finding Factor 6 neutral without any pertinent analysis,
`
`and while stating that the Board does not even need to perform a full analysis,
`
`signals an abuse of discretion at least because it involves a record that contains no
`
`evidence on which the Board could base its decision. Ultratec, Inc. v.
`
`CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir. 2017) (finding the Board abused
`
`its discretion by making “significant evidentiary decisions without providing an
`
`explanation or a reasoned basis for its decisions.”).
`
`5
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Dated: June 17, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`6
`
`
`
`PGR2020-00088
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
`
`Patent Owner’s Response to Petitioner’s Request for Rehearing was served on
`
`Patent Owner’s lead and back-up counsel in its entirety by electronic service at the
`
`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
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`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
`
`Dated: June 17, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: (650) 988-8500
`
`
`7
`
`
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