IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`BRIAN HOFFMAN, Reg. No. 39,713
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER
`ERIC ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case IPR2020-01553
`Patent 10,076,708 B2
`_____________
`
`PETITIONER’S ADDITIONAL BRIEFING
`REGARDING OVERLAP FACTOR
`
`
`
`
`
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`BRIAN HOFFMAN, Reg. No. 39,713
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER
`ERIC ZHOU, Reg. No. 68,842
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case IPR2020-01553
`Patent 10,076,708 B2
`_____________
`
`PETITIONER’S ADDITIONAL BRIEFING
`REGARDING OVERLAP FACTOR
`
`
`
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ....................................... 1, 3
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 2
`Facebook, Inc. v. Blackberry Ltd.,
`IPR2019-00899, Paper 15 (PTAB Oct. 8, 2019) .................................................. 1
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 2
`STATUTES AND RULES
`35 U.S.C. § 314 .......................................................................................................... 1
`
`
`ii
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 10,076,708 to Yoshikawa
`
`File History of U.S. Patent No. 10,076,708
`
`U.S. Patent No. 10,413,832 to Yoshikawa
`
`File History of U.S. Patent No. 10,413,832
`
`U.S. Patent No. 10,583,365 to Yoshikawa
`
`File History of U.S. Patent No. 10,583,365
`
`Expert Declaration of Ravin Balakrishnan
`
`Curriculum Vitae of Ravin Balakrishnan
`
`Robert Corrina, “What is a Role Playing Game?,” Gamasutra,
`March 11, 2009
`
`“Secret of Monkey Island, The Download (Adventure Game),”
`old-games.com
`
`Gus Mustrapa, “Scarce Borderlands Weapons Scratch That Old
`Diablo Itch,” WIRED, October 20, 2009
`
`“Vending Machine”, Borderlands Wiki, 13:39, February 25, 2012
`Revision
`
`M.J. Stephey, “A Brief History of Scrabble,” TIME, Dec. 7, 2008
`
`Game Rules,” World English-Language Scrabble Players’
`Association (WESPA), Version 2.0, issued by the WESPA Rules
`Committee 17 November 2010
`
`Scrabble Dating, Donald Sauter
`
`Scrabble Complete PC Manual, Infogrames Interactive, Inc., 2002
`
`iii
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`Exhibit
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`Description
`
`Francis Chang et al., “Modeling Player Session Times of On-line
`Games,” NetGames '03: Proceedings of the 2nd workshop on
`Network and system support for games, May 2003
`
`John Carter, “The Original Magic Rulebook,” December 25, 2004
`
`“Rarity,” MTG Wiki, 29 Jan. 2010 Revision
`
`“Magic: The Gathering Online 3.0 and the Theory of Virtual
`Objects,” Gamespy, March 27, 2005
`
`“Now Everyone Can Play the Pokémon Trading Card Game
`Online,” Kotaku, August 25, 2011
`
`U.S. Patent 9,511,285 to Hawkins
`
`U.S. Patent Pub. No. 2009/0051114 to Robbers et al.
`
`U.S. Patent 8,352,542 to Stroffolino
`
`“Scrabble/Rules,” Wikibooks
`
`Scrabble Complete (PC CD-ROM), Infogrames
`
`“Amazon.com: Scrabble Complete: Video Games,” Amazon.com
`
`“Hasbro Family Game Night: Scrabble Xbox Live Gameplay”,
`IGN, YouTube
`
`POPR, PGR2020-00053
`
`Scott McKeown, Congress Urged to Investigate PTAB
`Discretionary Denials, Patents Post-Grant (June 30, 2020)
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, Patents Post-Grant (July 24, 2020)
`
`Plaintiff's Opposition to Defendant's Motion for Relief re
`Governmental Restrictions re COVID-19 (19-00161), Dkt. 102
`
`iv
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`Exhibit
`
`Description
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`Fourth Amended Docket Control Order (19-00310), Dkt. 62
`
`Plaintiff Gree, Inc.’s Paragraph 1 and 3 Initial and Additional
`Disclosures, Feb. 18, 2020 (19-00310)
`
`Defendant Supercell Oy’s Notice of Deposition of Tomoki
`Yasuhara, Aug. 7, 2020 (19-00310)
`
`Defendant Supercell Oy’s Notice of Rule 30(b)(6) Deposition of
`Plaintiff GREE, Inc.
`
`Amended Docket Control Order, entered October 7, 2020
`[Dkt. 81], Civil Case No. 19-cv-00310-JRG-RSP (E.D. Texas
`
`Sixth Amended Docket Control Order [Dkt 94], entered on
`October 23, 2020, Case No. 19-cv-00311 (E.D. Texas)
`
`Order (Granting Continuance of In-Person Jury Trials) (Dkt. 261),
`entered on November 20, 2020, Infernal Technology, LLC, et al.
`v. Sony Interactive Entertainment LLC, Case. No. 19-cv-00248
`(E.D. Texas)
`
`Texas COVID-19 Active Case Data By County, available at
`https://dshs.state.tx.us/coronavirus/TexasCOVID-
`19ActiveCaseDatabyCounty.xlsx (retrieved February 8, 2021)
`
`Texas Department of State Health Services Website, Texas
`COVID-19 Data, available at
`https://dshs.texas.gov/coronavirus/additionaldata.aspx (retrieved
`February 8, 2021)
`
`New coronavirus variant could take over by spring, experts day,
`The Dallas Morning News, Jan. 16, 2021, available at
`https://www.dallasnews.com/news/2021/01/16/new-coronavirus-
`variant-could-take-over-by-spring-experts-say/
`
`v
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`Description
`
`Katie Buehler, COVID-19 Outbreak Leads to Mistrial in EDTX,
`Law360 (Nov. 17, 2020),
`https://www.law360.com/articles/1329617/covid-19-outbreak-
`leads-to-mistrial-in-edtx
`Order entered on November 20, 2020, Solas OLED Ltd. v.
`Samsung Display Co., Ltd., [Dkt 302], Case No. 2:19-cv-00152-
`JRG
`Email from Michael Morlock to Fenwick & West, February 22,
`2021 regarding reduction to claims at issue, GREE, Inc. v.
`Supercell Oy, ED Texas Case Nos. 2:19-cv-00200, -00237, -
`00310, -00311
`
`Email from Adrienne Dellinger, Law Clerk to Chief Judge Rodney
`Gilstrap, Feb. 25, 2021, regarding Order of Trials for March 2021
`(ED Texas)
`
`Email from Taylor Mauze, Law Clerk to Chief Judge Rodney
`Gilstrap, March 2, 2021, regarding March 15, 2021 Jury Selection
`and Trial Procedures (ED Texas)
`
`Exhibit
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`
`
`
`
`vi
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`Petitioner respectfully requests the Board institute because there is minimal
`
`overlap (Fintiv factor 4) between the Petition and the parallel proceeding. Apple
`
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020). The
`
`Petition challenges all three claims of the ’708 patent. In its Preliminary Response,
`
`Patent Owner argued “[t]here is…substantial overlap” because the same claims are
`
`challenged in both the Petition and parallel proceeding. Prelim. Resp. at 21. Patent
`
`Owner is now asserting only independent claim 1 of the ’708 patent. Ex. 1045 at
`
`1. Furthermore, there is no overlap whatsoever in the art asserted in the Petition
`
`and in the parallel proceeding, as noted in Petitioner’s Reply. Prelim. Rep. at 1.
`
`The Petition thus presents significant non-overlapping claim challenges that
`
`weigh against discretionary denial. See Facebook, Inc. v. Blackberry Ltd.,
`
`IPR2019-00899, Paper 15 at 12 (PTAB Oct. 8, 2019) (declining to exercise
`
`discretion where single dependent claim was asserted). The Petition and parallel
`
`proceeding do not present substantially identical issues. Nor are there any material
`
`concerns related to potential inefficiencies or inconsistent results.
`
`Claim 1 is directed only to a game control method. The other two claims are
`
`also independent, and recite “a computer” (claim 2) and “computer readable
`
`recording medium” (claim 3). Since independent claims 2 and 3 are not at issue,
`
`the parallel proceeding need not evaluate whether these claims are obvious in view
`
`of the evidence presented in the Petition.
`
`1
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`Given the parallel proceeding involves only one of three challenged claims,
`
`key issues in the Petition will not be resolved in the parallel proceeding.
`
`Inefficiency concerns are minimal because the Petition and parallel proceeding
`
`focus on different issues. There is no potential for inconsistent results because the
`
`parallel proceeding will not be evaluating the art presented in the grounds of the
`
`Petition.
`
`Moreover, the public’s interests, and Petitioner, are harmed by discretionary
`
`denial in this context. The Petition presents strong grounds of invalidity. The
`
`public has a “‘paramount interest in seeing that patent monopolies . . . are kept
`
`within their legitimate scope.’” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144
`
`(2016) (internal cite omitted). Exercising discretion here would thwart this interest
`
`and signal to patent owners that they can defeat IPR merely by asserting a single
`
`claim in a fast-moving parallel proceeding.
`
`The harms to the public directly impact Petitioner. “[P]etitioner is master of
`
`its complaint and normally entitled to judgment on all of the claims it raises.” SAS
`
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Exercising discretion here
`
`reverses the roles of the parties, allowing Patent Owner to limit Petitioner’s
`
`complaint to a single independent claim on different grounds, and forever barring
`
`Petitioner from challenging the claims in an AIA inter partes review proceeding.
`
`2
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`The goal of determining whether to exercise discretion to deny institution is
`
`balancing efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. It is
`
`manifestly unfair and inefficient to deny institution of a meritorious Petition
`
`because only one claim is asserted in the parallel proceeding. Denying institution
`
`in this context allows bad patents to persist. It also incentivizes patent owners to
`
`engage in gamesmanship by arguing for discretionary denial based on overlap, and
`
`then dropping claims from the parallel proceeding at the last minute. For at least
`
`these reasons, Petitioner respectfully requests the Board grant rehearing and
`
`institution.
`
`
`
`Dated: March 10, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`3
`
`
`
`IPR2020-01553
`Petitioner’s Additional Briefing Regarding Overlap Factor
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Additional
`
`Briefing Regarding Overlap Factor and accompanying Exhibits 1045 through
`
`1047 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service at the email addresses provided below:
`
`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
`
`
`
`
`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: March 10, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`4
`
`
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