UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01553
`U.S. Patent No. 10,076,708
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01553
`U.S. Patent No. 10,076,708
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`B.
`
`The Petition Should Be Denied Under § 314(a) .............................................. 1
`A.
`Fintiv Factor 2: Trial Date Remains Well in Advance of
`Board’s Statutory Deadline for Final Written Decision........................ 1
`Fintiv Factor 4: Substantial Overlap of Issues in the Two
`Forums ................................................................................................... 3
`Fintiv Factor 6: Other Relevant Considerations ................................... 5
`C.
`Petitioner Has Not Demonstrated a Reasonable Likelihood of Success ......... 6
`A.
`Petitioner Has Failed to Establish SCM Is a Printed Publication ......... 6
`B.
`Petitioner Has Failed to Establish that the Prior Art Discloses or
`Suggests All of the Limitations of the Challenged Claims ................... 7
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`10X Genomics, Inc. v. President & Fellows of Harvard College,
`IPR2020-01180, Paper 23 (P.T.A.B. Jan. 13, 2021) ........................................2, 5
`1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC,
`IPR2017-01092, Paper 51 (P.T.A.B. June 27, 2018) ........................................... 4
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ........................................... 1
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00203, Paper 12 (P.T.A.B. July 6, 2020) .............................................. 4
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (P.T.A.B. July 28, 2020) ............................................ 5
`Celltrion, LLC v. Biogen, Inc.,
`IPR2017-01230, Paper 10 (P.T.A.B. Oct 12, 2017) ............................................. 7
`Google LLC v. IPA Techs. Inc.,
`IPR2018-00384, Paper 11 (P.T.A.B. July 3, 2018) .............................................. 6
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ........................................... 6
`KeyMe, LLC v. The Hillman Group, Inc.,
`IPR2020-01028, Paper 12 (P.T.A.B. Jan. 13, 2021) ........................................2, 3
`Kingston Tech. Co., Inc. v. Memory Techs., LLC,
`IPR2019-00654, Paper 9 (P.T.A.B. Aug. 13, 2019) ............................................ 6
`Oticon Medical AB v. Cochlear Limited,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) ............................................ 4
`Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01399, Paper 13 (P.T.A.B. Feb. 3, 2021) .............................................. 3
`Sand Revolution II, LLC v. Cont’l Intermodal Group,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ........................................... 2
`
`ii
`
`
`
`Snap, Inc. v. SRK Tech. LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ............................................ 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) .........................................4, 5
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ........................................... 5
`Supercell Oy v. GREE, Inc.,
`PGR2020-00039, Paper 14 (P.T.A.B. Sept. 14, 2020) ......................................... 2
`Supercell Oy v. GREE, Inc.,
`IPR2020-01633, Paper 9 (P.T.A.B. Feb. 19, 2021) .............................................. 2
`
`iii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Sixth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00310, Document 92 (E.D. Tex. Oct.
`23, 2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Order Regarding Sixth Amended Docket Control Order, GREE,
`Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00310, Document
`94 (E.D. Tex. Oct. 26, 2020)
`
`Joint Motion to Amend Docket Control Order, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00310, Document 91 (E.D.
`Tex. Oct. 22, 2020)
`
`Complaint, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00310, Document 1 (E.D. Tex. Sept. 16, 2019)
`
`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-00310 (E.D. Tex.), dated April 7, 2020
`
`Excerpts of the Expert Report of Stacy Friedman, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00310 (E.D. Tex.), dated
`November 2, 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.), dated
`November 20, 2020
`
`Claim Construction Memorandum Opinion and Order, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00310, Document 84
`(E.D. Tex. Oct. 12, 2020)
`
`Seventh Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00310, Document 113 (E.D. Tex.
`Dec. 10, 2020)
`
`iv
`
`
`
`Exhibit No.
`2011
`
`Description
`Eighth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00310, Document 128 (E.D. Tex.
`Dec. 17, 2020)
`
`2012
`
`2013
`
`Ninth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00310, Document 171 (E.D. Tex.
`Jan. 20, 2021)
`
`February 19, 2021 Email Correspondence from Law Clerk to
`Judge Rodney Gilstrap, U.S. District Court for the Eastern District
`of Texas, Order of Trials for March 2021, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00310 (E.D. Tex.)
`
`v
`
`
`
`I.
`
`The Petition Should Be Denied Under § 314(a)
`In Patent Owner’s Preliminary Response (Paper 7, “POPR”), Patent Owner
`
`explains why the Board should exercise its discretion under 35 U.S.C. § 314(a) to
`
`deny the instant Petition in accordance with a holistic review of all the Fintiv factors.
`
`POPR, at 3–32. In Reply, Petitioner boldly asks this Board to disregard a majority
`
`of the Fintiv factors and simply find “Factors 4 and 6 to be definitive.” Paper 8
`
`(“Reply”), at 5. This is improper and incorrect. See Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020). Additionally, Petitioner’s
`
`cursory dismissal of Fintiv Factors 1, 3, and 5 as “neutral” or of “little weight” is not
`
`only inappropriate, but also belied by the record. See POPR, at 7–9, 17–21, 24–25.
`
`Moreover, Petitioner’s arguments regarding Factors 4 and 6, as well as Factor 2, are
`
`likewise belied by both the record and this Board’s prior decisions.
`
`A.
`
`Fintiv Factor 2: Trial Date Remains Well in Advance of Board’s
`Statutory Deadline for Final Written Decision
`Petitioner’s speculative claim that trial in the parallel district court proceeding
`
`may not proceed on March 1, 2021 ignores a key fact in the record: trial remains
`
`scheduled to proceed on March 1, 2021—which is now just one week away. Ex.
`
`2011, at 1. The district court’s continuance of other in-person jury trials “during
`
`December of 2020 and January through February of 2021” (Ex. 2008) does not
`
`expressly modify, let alone continue, the jury trial in parallel proceeding here.
`
`Indeed, the district court confirmed the March 1, 2021 trial date in its most recent
`
`
`
`docket control order issued on January 20, 2021, as well as in recent correspondence
`
`to the parties on February 19, 2021. Ex. 2012, at 1; Ex. 2013, at 1.
`
`Petitioner urges the Board to ignore these facts and, instead, speculate as to
`
`the potential impact of the unrelated continuance in cases between other parties on
`
`the previously scheduled March 1, 2021 trial date between these parties. Petitioner
`
`speculates that continuance will “cause a cascade of delays on the Court’s calendar.”
`
`Reply, at 3 But this Board “decline[s] … to speculate how long [a] trial date … may
`
`be delayed due to the effects of [a] district court’s backlog and practices in light of
`
`the COVID-19 pandemic.” 10X Genomics, Inc. v. President & Fellows of Harvard
`
`College, IPR2020-01180, Paper 23, at 11 (P.T.A.B. Jan. 13, 2021). And this Board
`
`has, in fact, rejected this same argument from another petitioner regarding this same
`
`continuance by the district court—in favor of facts in the record. KeyMe, LLC v. The
`
`Hillman Group, Inc., IPR2020-01028, Paper 12, at 8–9 (P.T.A.B. Jan. 13, 2021).
`
`The same conclusion holds here. See, e.g., Ex. 2012, at 1. Relatedly, the facts
`
`here are distinguishable from those in Sand Revolution II, LLC v. Cont’l Intermodal
`
`Group, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020). There, the court had
`
`entered a “loose date at which trial might occur,” which the Board found “indicates
`
`a continuing degree of recognized uncertainty of the court’s schedule by the court.”
`
`Id. at 9; Supercell Oy v. GREE, Inc., PGR2020-00039, Paper 14, at 11 (P.T.A.B.
`
`Sept. 14, 2020) (distinguishing Sand Revolution). By contrast, here, trial is expressly
`
`2
`
`
`
`scheduled for March 1, 2021, as discussed. Ex. 2012, at 1; Ex. 2013, at 1.
`
`Petitioner’s further speculation that trial will not proceed on March 1, 2021
`
`due to alleged uncertainly as to “whether and when the Court will conduct any future
`
`trials” (Reply, at 4), similarly fails. Ex. 2013, at 1. The Board has also recognized
`
`that any “generalized speculation as to trial dates universally (e.g., due to impacts of
`
`COVID-19)” is “outweighed” by the fact that the jury trial in a parallel proceeding
`
`is scheduled to occur a significant number of months before the Board’s statutory
`
`deadline for a final written decision—as is the case here. See POPR, at 14.
`
`Moreover, even should there be a brief delay of the trial date (such as until
`
`March 15, 2021, see Ex. 2013, at 2, or even April or May 2021), such delay will not
`
`“materially alter” the weighing of this factor given that the trial is currently
`
`scheduled to occur more than twelve months before the Board’s deadline to issue a
`
`final written decision in this proceeding. See POPR, at 15–16; see, e.g., KeyMe,
`
`IPR2020-01028, Paper 12, at 8–9; Samsung Elecs. Co. Ltd. v. Clear Imaging
`
`Research, LLC, IPR2020-01399, Paper 13, at 16 (P.T.A.B. Feb. 3, 2021); Supercell
`
`Oy v. GREE, Inc., IPR2020-01633, Paper 9, at 8 (P.T.A.B. Feb. 19, 2021).
`
`Fintiv Factor 4: Substantial Overlap of Issues in the Two Forums
`B.
`Petitioner does not dispute that it challenges the same claims of the ’708
`
`Patent under § 103 in each of the instant Petition and at the district court. POPR, at
`
`21. Further, Petitioner does not dispute that expert testimony submitted by the
`
`3
`
`
`
`Petitioner at the district court regarding SCM is identical to arguments made by
`
`Petitioner in the Petition. Id. at 21–22. Rather, Petitioner simply attempts to dismiss
`
`this undisputed overlap of grounds and evidence as immaterial because Petitioner
`
`has not formally identified SCM as “asserted prior art” at the district court. Reply,
`
`at 1. But regardless, the undisputed inclusion of SCM in both proceedings “may
`
`result in duplication of work and create the potential for inconsistent decisions,”
`
`which weighs in favor of discretionary denial. Apple Inc. v. Maxell, Ltd., IPR2020-
`
`00203, Paper 12, at 14 (P.T.A.B. July 6, 2020); see POPR, at 21–24.
`
`The cases cited by Petitioner are distinguishable. In Oticon Medical AB v.
`
`Cochlear Limited, the Board declined to exercise discretion under § 314(a) after “a
`
`balanced assessment of all relevant circumstances,” including the lack of duplication
`
`of work between the two tribunals with respect to invalidity as well as the absence
`
`of a trial date. IPR2019-00975, Paper 15, at 22–24 (P.T.A.B. Oct. 16, 2019). In
`
`Snap, Inc. v. SRK Tech. LLC, the Board found this factor weighed in favor of not
`
`exercising discretion under § 314(a) given numerous differences in the art asserted
`
`“as well as the stay of the parallel District Court proceeding.” IPR2020-00820,
`
`Paper 15, at 16 (P.T.A.B. Oct. 21, 2020) (emphasis added). In Sotera Wireless, Inc.
`
`v. Masimo Corp., the Board found this factor weighed in favor of not exercising
`
`discretion under § 314(a) in view of petitioner’s stipulation that “if IPR is instituted,
`
`[petitioner] will not pursue in the District Court Litigation any ground raised or that
`
`4
`
`
`
`could have been reasonably raised in an IPR.” IPR2020-01019, Paper 12, at 18–19
`
`(P.T.A.B. Dec. 1, 2020) (emphasis added). None of those unique facts exists here.
`
`Fintiv Factor 6: Other Relevant Considerations
`C.
`Petitioner’s (incorrect) characterization of the merits as “strong” (Reply, at 2)
`
`does not justify institution in view the required balancing of all the Fintiv factors,
`
`including the advanced stage of the parallel proceeding. Even an allegedly “strong
`
`case on the merits” can be outweighed by the facts underlying Fintiv factors 2–5
`
`collectively. Supercell Oy v. GREE, Inc., IPR2020-00215, Paper 10, at 18 (P.T.A.B.
`
`June 10, 2020); e.g., 10X Genomics, IPR2020-01180, Paper 23 at 16–17.
`
`And once again the cases cited by Petitioner are distinguishable. For example,
`
`in Apple Inc. v. Seven Networks, LLC, the Board instituted review largely because
`
`of the finding that “it would be inefficient to discretionarily deny institution” given
`
`the “unique circumstance … where the Office has already instituted proceedings
`
`challenging other patents in dispute in the parallel proceeding.” IPR2020-00235,
`
`Paper 10, at 17, 20 (P.T.A.B. July 28, 2020). There is no such “unique circumstance”
`
`here. Quite the opposite, the Board has denied institution on multiple petitions
`
`challenging other patents asserted in cases related to the parallel proceeding here,
`
`which are also set for trial on March 1, 2021. See POPR, at 25–26. Consistent with
`
`the Seven Networks decision, those decisions support reaching the same outcome
`
`here—denial of the instant Petition under § 314(a). See POPR, at 25–26.
`
`5
`
`
`
`II.
`
`Petitioner Has Not Demonstrated a Reasonable Likelihood of Success
`A.
`Petitioner Has Failed to Establish SCM Is a Printed Publication
`Petitioner carries the burden to “to identify with particularity evidence
`
`sufficient to establish a reasonable likelihood that [SCM] was publicly accessible
`
`before the critical date of the challenged patent, and therefore that there is a
`
`reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound
`
`View Innovations, LLC, IPR2018-01039, Paper 29, at 9 (P.T.A.B. Dec. 20, 2019). In
`
`its Preliminary Response, Patent Owner demonstrated that—based on this Board’s
`
`decisions—Petitioner had failed to carry this burden. POPR, at 41–45. And
`
`Petitioner does nothing to cure this failure in its Reply. Indeed, while Petitioner
`
`introduced a number of new exhibits with its Reply, none of them relate to SCM, let
`
`alone demonstrate that SCM was publicly accessible before the critical date here.
`
`As previously discussed, Petitioner’s reliance on the “2002” copyright date
`
`reported on the face of SCM is necessarily insufficient because that date is hearsay.
`
`See POPR, at 41–43. Petitioner’s reliance on unauthenticated Wayback Machine
`
`archives fares no better. The Board has consistently held that such archives—even
`
`when authenticated (unlike here)—are insufficient to carry Petitioner’s burden to
`
`demonstrate public accessibility of a reference. See, e.g., Kingston Tech. Co., Inc. v.
`
`Memory Techs., LLC, IPR2019-00654, Paper 9, at 18–22 (P.T.A.B. Aug. 13, 2019);
`
`Google LLC v. IPA Techs. Inc., IPR2018-00384, Paper 11, at 13–15 (P.T.A.B. July
`
`6
`
`
`
`3, 2018); Celltrion, LLC v. Biogen, Inc., IPR2017-01230, Paper 10, at 11–16
`
`(P.T.A.B. Oct 12, 2017). Further, the archives presented by Petitioner here, at most,
`
`concern only the Scrabble Complete PC game—and not the SCM reference. Exs.
`
`1026, 1027. And Dr. Balakrishan’s testimony that a copy of SCM was included with
`
`a copy of the Scrabble Complete PC game he obtained is of little value given that he
`
`has failed to provide any details regarding when and how he obtained that game and
`
`copy of SCM. See POPR, at 44–45.
`
`B.
`
`Petitioner Has Failed to Establish that the Prior Art Discloses or
`Suggests All of the Limitations of the Challenged Claims
`SCM does not disclose nor suggest each and every limitation of the challenged
`
`claims in any event. POPR, at 45–46. Petitioner’s arguments otherwise are based on
`
`an improper view of SCM’s disclosures relative to the challenged claims. The “letter
`
`tiles” displayed in a “player’s rack” in SCM—based on the player’s prior selection
`
`of those tiles—do not disclose “acquirable items within the game,” as asserted by
`
`Petitioner. POPR, at 45–46. Those “letter tiles” have already been acquired by the
`
`player in a manner that fails to satisfy the limitations of the challenged claims. See
`
`id. The specification’s disclosure regarding a further optional display of an
`
`“acquisition count” relative to a “total count” of such items—which is not claimed—
`
`does not demonstrate otherwise. Ex. 1001, Abstract. Moreover, the specification
`
`describes such “count” information is displayed in connection with the display of
`
`the “plurality of cells” corresponding to the “acquirable items” in the first instance
`
`7
`
`
`
`(see, e.g., Ex. 1001, Fig. 10A)—i.e., the blind drawing of letter tiles in a traditional
`
`game of Scrabble, prior to display of those tiles on the “player’s rack.”
`
`Petitioner’s arguments in Reply regarding Hawkins fail for similar reasons.
`
`As previously explained, each of the “Hero” and “Noble” cards in Hawkins, as relied
`
`on by Petitioner in the Petition, are not “acquirable” items, but rather cards the user
`
`already has in their possession. POPR, at 34–35. Petitioner’s further arguments
`
`regarding Hawkins also fail and, in fact, underscore the holes in Petitioner’s
`
`challenge. Petitioner’s Reply confirms that its challenge relies on the combination
`
`of Hawkins’ teachings regarding two different and dissimilar type of cards—“Hero”
`
`and “Noble.” Reply, at 7; see POPR, at 35–38. Indeed, the “Hero” cards do not
`
`include a character that indicates a “rarity value”—a required limitation of every
`
`challenged claim. Id. at 35. Petitioner thus turns to Hawkins’ separate disclosures
`
`regarding “Noble” cards in an attempt to cobble together its challenge. But, as
`
`previously discussed, Petitioner has failed to articulate any reason as to why a skilled
`
`artisan would be motivated to apply Hawkins’ disclosures regarding “Noble” cards
`
`to the different and dissimilar “Hero” cards. Id. at 37. As such, and for completeness,
`
`Patent Owner addressed the shortcomings in Hawkins’ disclosures with respect to
`
`“Noble” cards relative to the challenged claims. Petitioner, however, now concedes
`
`that certain of those disclosures are “irrelevant” here (Reply, at 7)—thereby
`
`disavowing any challenge based on Hawkins’ “Noble” cards alone.
`
`8
`
`
`
`Dated: February 22, 2020
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Sur-Reply to Petitioner’s Reply to Patent Owner’s Preliminary Response has been
`
`served electronically via email upon counsel
`
`for Petitioner at JBush-
`
`PTAB@fenwick.com.
`
`Dated: February 22, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`10
`
`
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