IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In the Inter Partes Review of:
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`U.S. Patent No.: 10,076,708
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`For: GAME CONTROL METHOD, )
`GAME SERVER, AND PROGRAM )
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
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`DECLARATION OF RAVIN BALAKRISHNAN, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEWS OF U.S. PATENT NO. 10,076,708
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`Supercell
`Exhibit 1007
`Page 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In the Inter Partes Review of:
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`U.S. Patent No.: 10,076,708
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`For: GAME CONTROL METHOD, )
`GAME SERVER, AND PROGRAM )
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF RAVIN BALAKRISHNAN, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEWS OF U.S. PATENT NO. 10,076,708
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`Supercell
`Exhibit 1007
`Page 1
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`I, Ravin Balakrishnan, Ph.D., declare as follows:
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`I.
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`INTRODUCTION
`I have been asked by the party requesting this review, Supercell Oy
`1.
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`(“Petitioner”), to provide my expert opinions in support of the above-captioned
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`petition for inter partes review of U.S. Patent No. 10,076,708 (the “’708 patent”),
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`challenging the patentability of claims 1-3 of the ’708 patent.
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`2.
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`3.
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`I currently hold the opinions set forth in this declaration.
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`In summary, it is my opinion that the references cited below render
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`obvious claims 1-3 of the ’708 patent. My detailed opinions on the claims are set
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`forth below.
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`II. BACKGROUND AND QUALIFICATIONS
`I am currently a tenured Full Professor of Computer Science in the
`4.
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`Department of Computer Science at the University of Toronto. I joined the faculty
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`at the University in 2001, was granted tenure in 2006, and served as Chair of my
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`Department from 2015 to 2019. From 2006-2016, I held the Canada Research Chair
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`in Human-Centered Interfaces in the Department of Computer Science.
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`5.
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`I earned a B.Sc. in Computer Science from the University of New
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`Brunswick in 1993, an M.Sc. in Computer Science in 1997 and a Ph.D. in Computer
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`Science in 2001 both from the University of Toronto. Since receiving my Ph.D., I
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`have been a member of the faculty of the Department of Computer Science at the
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`1
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`Supercell
`Exhibit 1007
`Page 2
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`University of Toronto where my research has focused on human computer
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`interaction (“HCI”), including the development of user interface technologies to
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`improve HCI on a variety of computational platforms and application areas
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`including mobile devices, video games, large displays, 3D displays, virtual and
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`augmented reality technologies.
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`6.
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`In conjunction with my professorship, I serve as Co-Director of the
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`Dynamic Graphics Project Laboratory at the University of Toronto that has twelve
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`faculty members and roughly 50 graduate students and postdoctoral researchers
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`working on various aspects of user interface technologies, display technologies,
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`computer graphics, interactive technologies and virtual environments. Tech transfer
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`of research to industry from this lab in recent years has resulted in several spin-off
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`companies, including ones focused on 3D user interfaces, medical data visualization,
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`virtual reality, and 3D architectural visualization and interaction.
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`7.
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`As part of my professorial duties, I teach and supervise graduate
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`students and postdoctoral fellows in their research work. To date, 27 research M.Sc.
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`students, 15 Ph.D. students, and 8 postdoctoral fellows have completed their
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`research training under my guidance. Their research has led to theses and peer
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`reviewed publications in over a broad range of topics covering interactive computing
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`and user interfaces for multiple applications and technology platforms. I have taught
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`courses covering computing topics including interactive computing, human-
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`2
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`Supercell
`Exhibit 1007
`Page 3
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`computer interaction, and information systems and design, as well as courses
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`covering game development topics including user interfaces for games including on
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`virtual reality and augmented reality systems.
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`8.
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`I have published over 140 refereed publications in peer-reviewed
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`journals. I have further presented numerous conference abstracts, posters, talks, and
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`demonstrations in my field. My work has been cited more than 17,000 times across
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`a spectrum of high-impact publications, and my current h-index score is 76, which
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`is an indication of the significant impact of my research on scholarly literature in the
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`field of Computer Science.
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`9.
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`I have received major awards and honors in my field. For example, in
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`2007, I received an Alfred P. Sloan Research Fellowship. In 2011, I was elected
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`into the Association for Computing Machinery’s Computer Human Interaction
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`Academy, which is an honorary group consisting of researchers who have made
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`extensive contributions to the study of HCI and who have led the shaping of the HCI
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`field. The stated criteria for being elected into the Association for Computing
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`Machinery’s Computer Human Interaction Academy are: (1) cumulative
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`contributions in the field; (2) impact on the field through development of new
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`research directions and/or innovations; and (3) influence on the work of others.
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`10.
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`I have been a co-founder on a number of start-ups focusing on human-
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`computer interfaces, including Bump Technologies (acquired by Google in 2010)
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`3
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`Supercell
`Exhibit 1007
`Page 4
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`which developed a physically realistic desktop user interface system, Arcestra
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`(formerly Sketch2 Corp) which developed software for designing 3D building
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`layouts, and Conceptualiz which develops surgical planning technology.
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`11. My research at the University of Toronto has involved nearly every
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`broad aspect of human-computer interaction and data visualization. For instance, I
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`have done significant work in the areas of input devices, displays, sensing
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`technologies, interfaces to small and/or mobile computers, interfaces to displays of
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`the future, and interaction techniques, including touch and multi-touch, gestural,
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`sketching, and multi degree-of-freedom interactions. As another example, I have
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`done work in the evaluation of user interfaces, including associated metrics and
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`predictive models of human performance.
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`12.
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`In addition to my research at the University of Toronto, I have
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`collaborated with researchers at leading institutions worldwide. For example, I have
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`been a visiting professor at Laboratoire de Recherche en Informatique (LRI) at the
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`Université Paris-Sud, France. Additionally, I have been a visiting researcher at
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`several industrial laboratories, including: (1) HPLabs, (2) Mitsubishi Electric
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`Research Laboratories (MERL), and (3) Microsoft Research Labs. At those
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`companies, my work generally focused on developing new user interface techniques
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`for a variety of technology platforms. Prior to becoming a professor, during my MSc
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`and PhD studies, I was also concurrently a part-time researcher at Alias|wavefront
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`4
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`Supercell
`Exhibit 1007
`Page 5
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`(now part of Autodesk), that was a leading developer of 3D graphics software
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`applications.
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`13.
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`I have also served on the organizing and paper reviewing committees
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`of many leading conferences in my field, and have taken on editorial roles for leading
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`technical journals in fields pertinent to my research. For example, I have been an
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`associate editor of the Association for Computing Machinery (“ACM”) Transactions
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`on Computer-Human Interaction and an associate editor of the IEEE Transactions
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`on Visualization and Computer Graphics, which are both peer-reviewed journals.
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`Similarly, I have been the paper’s chair for the ACM UIST Symposium on User
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`Interface Software and Technology, and have served multiple times as an associate
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`chair for the ACM CHI Conference on Human-Computer Interaction. Over my
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`career, I have also reviewed hundreds of published and unpublished papers,
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`including many on user interfaces for video games and video game technology more
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`generally.
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`14.
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`I am the co-inventor on 20 patents, and have several patent applications
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`pending, all in the area of user interfaces, including new techniques and technologies
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`for handling user input to computational platforms in novel and more facile ways.
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`15. Additionally, I have served as an expert witness in numerous patent
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`actions, including in multiple IPR proceedings and ITC and district court cases,
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`including for Apple in several actions against Samsung, HTC and other entities
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`5
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`Supercell
`Exhibit 1007
`Page 6
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`involving multiple patents covering tablet and mobile phone interfaces, for Nintendo
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`involving their Wii gaming technology, and for Oculus involving their virtual reality
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`technology.
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`16. My professional background and technical qualifications also are
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`reflected in my Curriculum Vitae, which is attached as Ex. 1008.
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`III. COMPENSATION AND RELATIONSHIP WITH PARTIES
`I am being compensated for my time. This compensation is not
`17.
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`contingent upon my performance, the outcome of this matter, or any issues involved
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`in or related to this matter.
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`18.
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`I have no financial interest in Petitioner or any related parties. I have
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`been informed that GREE, Inc. (“GREE”) owns the challenged patents. I have no
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`financial interest in and have no contact with GREE beyond the kinds of cursory
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`interactions I often have with game industry professionals at conferences. I similarly
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`have no financial interest in the challenged patents and have not had any contact
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`with the named inventors.
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`IV. MATERIAL CONSIDERED
`I have reviewed and considered, in the preparation of this declaration,
`19.
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`the ’708 patent (Ex. 1001) and the prosecution file history for the ’708 patent
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`(Ex. 1002). I additionally reviewed and considered U.S. Patent No. 10,413,832 (the
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`“’832 patent”) (Ex. 1003) and its prosecution history (Ex. 1004), as well as U.S.
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`6
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`Supercell
`Exhibit 1007
`Page 7
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`Patent No. 10,583,365 (the “’365 patent”) (Ex. 1005) and its prosecution history
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`(Ex. 1006). The ’832 patent is a child of the ’708 patent, and the ’365 patent is a
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`grandchild of the ’708 patent.
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`20.
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`I understand that, for purposes of determining whether a reference will
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`qualify as prior art, the challenged claims of the challenged patents are entitled to an
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`effective filing date of no earlier than June 21, 2012.
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`21.
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`I have also reviewed and understand various publications as discussed
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`herein, including the following references:
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`a.
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`b.
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`U.S. Patent No. 9,511,285 to Hawkins (“Hawkins”) (Ex. 1022)
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`U.S. Patent Pub. No. 2009/0051114 to Robbers et al. (“Robbers”)
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`(Ex. 1023)
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`c.
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`Scrabble Complete PC Manual, Infogrames Interactive, Inc.,
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`2002 (“SCM”) (Ex. 1016)
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`d.
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`U.S. Patent 8,352,542 to Stroffolino (“Stroffolino”) (Ex. 1024)
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`22.
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`I understand that the above references form the basis for the ground for
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`rejection set forth in the Petitions for Inter Partes Review of the challenged patents.
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`Additionally, I am aware of information generally available to, and relied upon by,
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`persons of ordinary skill in the art (POSITAs) at the effective filing date, including
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`computer games, technical dictionaries and technical reference materials (including,
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`7
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`Supercell
`Exhibit 1007
`Page 8
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`for example, textbooks, manuals, technical papers, articles, and relevant technical
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`standards); some of my statements below are expressly based on such awareness.
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`23. Due to procedural limitations for Inter Partes Reviews, the grounds for
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`invalidity discussed herein are based solely on prior patents and other printed
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`publications. I understand that Petitioner and the other interested parties reserve all
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`rights to assert other grounds for invalidity not addressed herein at a later time, for
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`instance failure of the application to claim patentable subject matter under 35 U.S.C.
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`§ 101, failure to meet requirements under 35 U.S.C. § 112 (e.g., lack of written
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`description in support of the claims) and anticipation/obviousness under 35 U.S.C.
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`§§ 102 and 103 not based solely on patents and printed publications (e.g., evidence
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`of prior use of combinations of elements claimed in the ’708 patent). Thus, absence
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`of discussion of such matters here should not be interpreted as indicating that there
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`are no such additional grounds for invalidity of the challenged patents.
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`24.
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`I reserve the right to supplement my opinions to address any
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`information obtained, or positions taken, based on any new information that comes
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`to light throughout this proceeding.
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`V. BASIS OF OPINIONS FORMED
`A. Level of Ordinary Skill in the Art
`It is my understanding that the challenged patents are to be interpreted
`25.
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`based on how they would be read by a person of “ordinary skill in the art”
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`8
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`Supercell
`Exhibit 1007
`Page 9
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`(“POSITA”) at the time of the effective filing date of the application. It is my
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`understanding that factors such as the education level of those working in the field,
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`the sophistication of the technology, the types of problems encountered in the art,
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`the prior art solutions to those problems, and the speed at which innovations are
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`made may help establish the level of skill in the art.
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`26.
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`I am familiar with the technology at issue and the state of the art at the
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`effective filing date of the challenged patents, June 21, 2012.
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`27.
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`In my opinion, the level of ordinary skill in the art of the challenged
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`patents at the time of the effective filing date is a person with a bachelor’s degree in
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`game design, interactive design/media, computer science, computer engineering, or
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`a related field, with at least two years of professional experience working in
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`computer game design. With more education, such as additional graduate degrees
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`or study, less professional experience is needed to attain the ordinary level of skill.
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`Similarly, with more experiential knowledge of computer games, such as experience
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`developed while researching and developing computer games, less professional
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`experience is needed to attain the ordinary level of skill.
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`28.
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`I consider myself to have at least such ordinary skill in the art with
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`respect to the subject matter of the challenged patents at the time of the effective
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`filing date.
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`9
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`Supercell
`Exhibit 1007
`Page 10
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`VI. THE CHALLENGED PATENT
`29. The challenged patent ’708 patent is entitled “Game Control Method,
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`Game Server, and Program.” The challenged patent includes 3 claims, all of which
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`are challenged in the Petition for Inter Partes review of the challenged patent.
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`Purported Invention of the Challenged Patents
`A.
`30. The challenged patent generally relates to ways of acquiring virtual
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`items in video games. According to the Background and Summary sections of the
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`challenged patent, a battle game may be played by a user having a deck “formed by
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`a plurality of battle cards” used to compete with other users, and that users can
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`acquire battle cards by various methods. Ex. 1001 at 1:20-28. However, the patent
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`notes that if methods for acquiring battle cards in a battle game and the like are
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`limited, users may lose interest in the game. Id. at 1:40-42. For example, if “it is
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`difficult to acquire a battle card or the like with a high rarity value, the user ends up
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`with the impression that such an item cannot be acquired at all and suffers a drastic
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`loss of interest in the game.” Id. at 1:43-46.
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`31. According to the challenged patent, a solution to this problem involving
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`item acquisition in video games is to “increase the variations on methods for
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`acquiring battle cards and the like, increase the predictability of acquisition of a card
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`or the like with a high rarity value or the like, and heighten interest in the game.”
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`Ex. 1001 at 1:47-53. The challenged patent argues that this would provide the user
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`10
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`Supercell
`Exhibit 1007
`Page 11
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`“with incentive to increase the occasions of an item acquisition request and is enticed
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`to continue playing the game longer.” Id. at 10:39-41.
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`32. FIG. 1 of the ’708 patent, reproduced below, shows a communication
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`terminal 2, operated by a user, that communicates with a server (e.g., “battle game
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`server” 1) over a network during gameplay.
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`33. The Specification of the patent describes that a battle game server
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`contains a memory that “stores information on items to provide, a total count of
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`items, item type, and an acquisition count,” where “[a]n ‘item’ refers to any of a
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`variety of objects used within a game, such as a battle card constituting a user’s deck,
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`a character, a weapon, armor, an ornament, a plant, food, and the like.” Ex. 1001 at
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`4:9-14. The item information may be stored among a plurality of item information
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`tables. Id. at 17-18. FIGs. 2A to 2C illustrate example item information tables.
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`11
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`Supercell
`Exhibit 1007
`Page 12
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`34. The ’708 patent further describes that the communication terminal may
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`request to present information relating to acquirable items from the game server. For
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`example, “when a request
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`to present
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`information
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`is received from
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`the
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`communication terminal 2 via the communication unit 10,” the information
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`presentation unit 12 determines information to present to the communication
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`terminal based on the item information tables 111 a to 111 c. Ex. 1001 at 4:65-5:11.
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`12
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`Supercell
`Exhibit 1007
`Page 13
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`35. The information presented by the information presentation unit 12 may
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`comprise “acquirable item information.” The ’708 describes that in some
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`embodiments, the information presentation unit 12 “tallies the total count of items
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`for each item type [and] also refers to the user information table 112 to calculate the
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`acquisition count of items for each item type based on the identification information
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`of provided items and the table identification information that correspond to the user
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`identification information pertaining to the communication terminal 2 [and] presents
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`the communication terminal 2, via the communication unit 10, with the result of
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`calculation as the acquirable item information.” Ex. 1001 at 4:65-5:11. In some
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`embodiments of “the game control method according to the present invention, the
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`acquirable item information for the first item may include identification information
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`or an image for an item.” Id. at 2:11-14. In some cases, “the control unit 13 may
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`adopt a different method for presenting the acquirable item information to the
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`communication terminal 2” for items of different types, in which “the information
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`presentation unit 12 may display an image for the first item yet display only the item
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`name or the like, without displaying an image, for the second item. In other words,
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`the acquirable item information that the information presentation unit 12 presents
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`for the first item may include identification information (item name or the like) or
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`an image for the item.” Id. at 8:15-27.
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`13
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`Supercell
`Exhibit 1007
`Page 14
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`36. FIG. 5 of the ’708 patent shows an example of “acquirable item
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`information that the information presentation unit 12 presents… when a request to
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`present information is received from the communication terminal 2.” For example,
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`FIG. 5 illustrates “information 501 on the total count and information 502 on the
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`acquisition count of items for each item type are presented to the communication
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`terminal 2.” Ex. 1001 at 5:18-21. The Specification also notes that “a non-
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`acquisition count may be presented by subtracting the acquisition count from the
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`total count of items.” Id. at 5:22-25.
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`14
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`Supercell
`Exhibit 1007
`Page 15
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`37. The server may further receive an item acquisition request from the
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`player at the communication terminal, whereupon the “control unit 13 determines
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`one item to provide to the communication terminal 2 based on information
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`corresponding to the user identification information pertaining to the communication
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`terminal 2” and “provides the item to the communication terminal 2 via the
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`communication unit 10.” Ex. 1001 at 5:29-32.
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`38. FIG. 9 of the ’708 patent illustrates an example screen that the
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`information presentation unit may transmit to the communication terminal for
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`display. As illustrated in FIG. 9, the displayed interface may comprise a “sheet”
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`composed of a plurality of “cells,” where each cell corresponds to an item. See
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`Ex. 1001 at 11:52-60. The user can select a cell using an operation unit “such as a
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`key or a touch panel of the communication terminal 2, and the communication
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`terminal 2 transmits a selection request to the battle game server 1 based on the user
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`operation.” Id. at 12:37-42. In response, “[t]he control unit 13 of the battle game
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`server 1 then determines that the item corresponding to the cell pertaining to the
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`selection request is the item to provide to the communication terminal 2.” Id. at
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`12:42-44.
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`15
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`Supercell
`Exhibit 1007
`Page 16
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`39. The cells may be displayed having certain patterns. For example, the
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`pattern of a displayed cell may be based on an item type or rarity value of the item
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`associated with the cell (e.g., “when the numerical value of the item type is at least
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`a predetermined value, the pattern shown in cell 301 and the like is displayed….
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`Conversely, when the item type is less than the predetermined value, the pattern
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`16
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`Supercell
`Exhibit 1007
`Page 17
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`shown in cell 302 and the like is displayed”). Ex. 1001 at 11:61-66. In some cases,
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`the cells may be displayed “with the same pattern,” while selected cells may be
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`displayed having a pattern based upon item type. See id. at 12:25-28, 45-49.
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`Alternatively, the cells may be displayed with “a predetermined icon, character, or
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`the like” indicating item type or rarity value in lieu of a pattern. Id. at 9:63-67.
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`40. The concept of presenting cells associated with items and displaying
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`items in response to a received selection request is employed with generic computer
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`equipment. The specification states that “[a] computer is preferably used to function
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`as the battle game server 1,” where a “program containing a description of the
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`processing for achieving the functions of the battle game server 1 is stored in the
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`memory unit of the computer, and the functions are achieved by the central
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`processing unit (CPU) of the computer reading and executing the program.”
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`Ex. 1001 at 13:14-19. The components of the computer, e.g., the “information
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`presentation unit,” “control unit,” “communication unit,” and “memory unit,” are
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`described in purely functional and generic terms. See generally Ex. 1001 at 3:65-
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`4:5 & Fig. 1.
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`41. The specification also describes generic computer functionality for
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`storing the information maintained by the computer / server. See generally Ex. 1001
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`at 4:6-23. The information is stored within a generic “memory unit” of the battle
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`game server “by dividing the information among tables,” functionally described as
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`17
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`Supercell
`Exhibit 1007
`Page 18
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`an “item information table,” a “user information table,” and “item data.” See id. at
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`4:6-44.
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`42. The independent claims of the ’708 patent recite variations on the same
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`four basic elements: (a) initializing a virtual game; (b) displaying, during the virtual
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`game, a plurality of cells and acquirable item information that is received from a
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`server over a communication line, the plurality of cells being displayed in the same
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`size, wherein each of a plurality of items extracted from an item information table
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`pertaining to a user is associated with each of the plurality of cells, the plurality of
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`items being selected randomly only from items in the item information table, and at
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`least one of the cells including a character which indicates a rarity value of an item
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`associated with the at least one of the cells; (c) receiving, during the virtual game, a
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`selection request selecting one of the plurality of cells and sending the selection
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`request to the server; and (d) displaying, during the virtual game, an item associated
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`with the selected cell, which is determined by the server based on the selection
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`request. Ex. 1001 at 13:51-14:55.
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`43. Claim 1, for example, recites a game control method that comprises
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`elements (a) through (d). Ex. 1001 at 13:51-14:13. Claim 2 recites a computer
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`comprising a controller configured to perform (a) and (c), and a display for
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`performing (b) and (d). Id. at 14:14-33. Claim 3 recites a non-transitory computer
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`18
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`Supercell
`Exhibit 1007
`Page 19
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`readable recording medium having stored thereon instructions to be executed on a
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`computer to cause the computer to perform elements (a) through (d). Id. at 14:34-55.
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`Prosecution History
`B.
`44. The ’708 patent was filed on December 18, 2014 as Application Serial
`
`No. 14/409,219 (“the ’219 application”), and claims priority to PCT Application
`
`Serial No. PCT/JP2013/003899, filed on June 21, 2013. Foreign priority is claimed
`
`back to Japanese Application No. 2012-140213, filed June 21, 2012.
`
`45. The ’219 application was originally filed with claims 1-15, and
`
`assigned to art unit 3717. See Prosecution History of U.S. Patent No. 10,076,708
`
`(“Ex. 1002”) at 351, 854. On December 1, 2016, a Non-Final Office Action was
`
`issued in the ’219 application, rejecting claims 1-15 under 35 U.S.C. 101 for being
`
`directed to non-statutory subject matter, and under pre-AIA 35 U.S.C. 102(e) as
`
`being anticipated by U.S. Patent Pub. No. 2014/0038716 to Endo (“Endo”). Id. at
`
`290-297. In an amendment filed on March 30, 2017, Applicant amended the claims
`
`1-4, 6-9, and 11-14 significantly, and cancelled claims 5, 10, and 15. In addition,
`
`Applicant argued that claims were allowable under 35 U.S.C. 101 and that Endo did
`
`not quality as prior art under 35 U.S.C. 102(e). Id. at 261-270.
`
`46. On August 25, 2017, a Final Office Action was issued in the ’219
`
`application, rejecting the remaining pending claims under 35 U.S.C. 101. Id. at 194-
`
`200. In an amendment filed on December 18, 2017, Applicant amended the
`
`19
`
`Supercell
`Exhibit 1007
`Page 20
`
`
`
`independent claims to include an additional element of “at least one of the cells
`
`containing an item type for which the user does not have the highest acquisition
`
`count,” and argued that the claims were allowable under 35 U.S.C. 101 because
`
`“tilting the deck in favor of rarer items or more desirable items is not routine or
`
`conventional.” Id. at 183-190. Following an Advisory Action issued on December
`
`18, 2017, in which the Examiner indicated that further search and consideration
`
`would be needed, Applicant filed a Request for Continued Examination (RCE) on
`
`December 22, 2017. Id. at 179-182; 171-172.
`
`47. On February 9, 2018, a Non-Final Office Action was issued in the ’219
`
`application, rejecting the remaining pending claims under 35 U.S.C. 101, as well as
`
`35 U.S.C. 112 for failing to comply with the written description requirement as the
`
`“Examiner was unable to find support for ‘and at least one of the cells containing an
`
`item type for which the user does not have the highest acquisition count.’” Id. at
`
`159-167. On April 26, 2018, Applicant amended the claims to remove the element
`
`of at least one of the cells “containing an item type for which the user does not have
`
`the highest acquisition count,” instead replacing the element with at least one of the
`
`cells “including a character which indicates a rarity value of an item associated with
`
`the at least one of the cells.” Id. at 151-155. In addition, Applicant amended the
`
`independent claims to recite the element of “initializing a virtual game,” and
`
`specified that the remaining steps of the claim took place “during the virtual game.”
`
`20
`
`Supercell
`Exhibit 1007
`Page 21
`
`
`
`Id. Applicant further cancelled all dependent claims. Id. In their response,
`
`Applicant argued that the combination of the claimed steps being “performed during
`
`the virtual game” and the feature of “at least one of the cells including a character
`
`which indicates a rarity value of an item associated with the at least one of the cells”
`
`represented “significantly more than the abstract idea of inventory management.”
`
`Applicant also clarified that the feature of “at least one of the cells including a
`
`character which indicates a rarity value of an item associated with the at least one of
`
`the cells” may be “understood with reference to the publication of this application,
`
`with paragraph [0089] disclosing that each cell may be a ‘character’ in lieu of the
`
`‘pattern’ in accordance with the ‘item type’ as in paragraph [0087], and paragraph
`
`[0040] describing the ‘item type’ as representing the rarity value.” Id. at 154.
`
`48. The examiner issued a Notice of Allowance on May 25, 2018. Id. at
`
`138. Applicant filed an Information Disclosure Statement on July 11, 2018
`
`containing additional references cited in a foreign counterpart application, which
`
`was acknowledged by the Examiner on July 23, 2018, and Applicant proceeded to
`
`pay the issue fee on August 14, 2018. Id. at 2, 9-10, 13.
`
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION
`It is my understanding that “[i]n an inter partes review proceeding, a
`49.
`
`claim of a patent…shall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),
`
`21
`
`Supercell
`Exhibit 1007
`Page 22
`
`
`
`including construing the claim in accordance with the ordinary and customary
`
`meaning of such claim as understood by one of ordinary skill in the art and the
`
`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b).
`
`50.
`
`I am not a patent attorney and my opinions are limited to what I believe
`
`a POSITA would have understood the meaning of certain claim terms to be, based
`
`on the patent specifications and prosecution histories.
`
`51.
`
`In my opinion, a POSITA would have had no difficulty applying the
`
`plain and ordinary meanings of the majority of terms used in the claims.
`
`52.
`
`In my opinion, in view of the disclosures in the specification of the ’708
`
`patent and the prosecution history of the patent family, the claim term “acquirable
`
`item information” may require further explanation. The term “acquirable item
`
`information” is used in many places throughout the specification of the ’708 patent.
`
`For example, the specification of the ’708 patent states that for some embodiments,
`
`“acquirable item information” may “for each item type, includes a total count and
`
`an acquisition count or a non-acquisition count of items.” Ex. 1001 at 2:27-29. The
`
`specification also states that “[i]n the game server according to the present invention,
`
`the acquirable item information for the first item may include identification
`
`information or an image for an item.” Id. at 2:46-48. The specification further states
`
`that in some embodiments “the control unit 13 may adopt a different method for
`
`presenting the acquirable item information to the communication terminal 2” for
`
`22
`
`Supercell
`Exhibit 1007
`Page 23
`
`
`
`items of different types, in which “the information presentation unit 12 may display
`
`an image for the first item yet display only the item name or the like, without
`
`displaying an image, for the second item. In other words, the acquirable item
`
`information that the information presentation unit 12 presents for the first item may
`
`include identification information (item name or the like) or an image for the item.”
`
`Id. at 8:15-27. The Specification also states that “acquirable item information” may
`
`include a “retrieved count of necessary attempts for acquisition for each item” for
`
`items of certain types. Id. at 9:13-15. As such, I believe that a person of ordinary
`
`skill in the art would have understood “acquirable item information” as being any
`
`type of information pertaining to items associated with displayed cells that the player
`
`can acquire during the virtual game, which may include but is not limited to a total
`
`count, an acquisition count, a non-acquisition count, identification information such
`
`as item name, an image of the item, number of attempts needed to acquire the item,
`
`etc.
`
`53.
`
`In addition, the original independent claims of the ’219 application
`
`when filed contained the element “presenting a communication terminal… with
`
`acquirable item information that, for each item type, includes a total count and an
`
`acquisition count or a non-acquisition count of items.” Ex. 1002 at 854. However,
`
`in an amendment made on March 30, 2017, the Applicant removed this element and
`
`replaced it with “displaying a plurality of cells and acquirable item information that
`
`23
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