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 RESPONSE TO PETITIONER’S ADDITIONAL
`BRIEFING REGARDING OVERLAP FACTOR
`
`
`
`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 RESPONSE TO 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, 2
`Edwards Lifesciences v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) .............................................. 3
`Facebook, Inc. v. Blackberry Ltd.,
`IPR2019-00899, Paper 15 (P.T.A.B. Oct. 8, 2019) .......................................... 2, 3
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) .............................. 3
`Samsung Elecs. Co. Ltd. v. Clear Imaging Research, LLC,
`IPR2020-01552, Paper 12 (P.T.A.B. Mar. 3, 2021) ......................................... 1, 2
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 13 (P.T.A.B. Sept. 3, 2020) ........................................... 3
`Vizio, Inc. v. Polaris PowerLED Technologies, LLC,
`IPR2020-00043, Paper 30 (P.T.A.B. May 4, 2020) ............................................. 2
`
`i
`
`
`
`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)
`
`ii
`
`
`
`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
`
`2014
`
`2015
`
`2016
`
`2017
`
`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.)
`
`Model Order Focusing Patent Claims and Prior Art to Reduce
`Costs, U.S. District Court for the Eastern District of Texas
`
`Order, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-
`00200, Document 243 (E.D. Tex. March 11, 2021)
`
`March 11, 2021 Email Correspondence from Law Clerk to Chief
`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 Nos. 2:19-cv-00200, -237, -310, -311 (E.D. Tex.)
`
`March 11, 2021 Email Correspondence from Melissa Smith to
`Law Clerk to Chief 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 Nos. 2:19-cv-00200, -
`237, -310, -311 (E.D. Tex.)
`
`iii
`
`
`
`Patent Owner’s recent narrowing of the claims it will present at the parties’
`
`imminent trial, as required by the District Court’s procedures, does not materially
`
`alter the weighing of Fintiv Factor 4. Patent Owner has not engaged in any
`
`“gamesmanship.” Rather, Patent Owner has followed common practice of selecting
`
`the claims it will present to the jury given the District Court’s directives in view of
`
`its time limits on trials. See Exs. 2014, 2015. Thus, the fact that the Petition
`
`challenges additional claims does not preclude a finding of overlap. See Samsung
`
`Elecs. Co. Ltd. v. Clear Imaging Research, LLC, IPR2020-01552, Paper 12, at 21–
`
`23 (P.T.A.B. Mar. 3, 2021) (“[T]he mere existence of non-overlapping claims does
`
`not support Petitioner’s position that this factor favors institution. …”). Moreover,
`
`the fact that the parallel proceeding has progressed this far—through two pre-trial
`
`conferences and to the cusp of trial—strongly favors discretionary denial.
`
`Under Fintiv, there need only be some “overlap” between issues in the petition
`
`and the parallel proceeding. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at
`
`6 (P.T.A.B. Mar. 20, 2020).1 The Board has consistently found that this factor
`
`weighs in favor of discretionary denial even when there is not complete identity of
`
`1 Relatedly, Petitioner’s contention that “there is no overlap whatsoever in the art
`
`asserted in the Petition and in the parallel proceeding” (Paper 10, at 1) is belied by
`
`record facts, as previously discussed. See, e.g., Paper 9, at 3–5.
`
`
`
`challenged claims. See, e.g., Samsung, IPR2020-01552, Paper 12, at 21–23; Vizio,
`
`Inc. v. Polaris PowerLED Technologies, LLC, IPR2020-00043, Paper 30, at 11
`
`(P.T.A.B. May 4, 2020).
`
`Further, resolution of Petitioner’s challenge to claim 1 at the district court will
`
`resolve key issues in the Petition. Indeed, the three claims in the patent are essentially
`
`identical. Ex. 1001, at 13:51–14:55; see Pet. at 10–11. And Petitioner’s challenges
`
`in the Petition are likewise identical across each independent claim. Indeed, the
`
`Petitioner analyzes independent claims 1, 2, and 3 collectively together. See Pet. at
`
`42–53, 55–65. Thus, Petitioner necessarily “does not show that the non-overlapping
`
`claims differ significantly in some way.” Samsung, IPR2020-01552, Paper 12, at 22.
`
`Thus, given the similarity of the claims (and Petitioner’s challenges thereto),
`
`resolution of Petitioner’s challenge to claim 1 at the district court will necessarily
`
`resolve key issues in the Petition. See Id. at 23 (“[A]though the non-overlapping
`
`claims are challenged here, those claims are sufficiently similar to those at issue in
`
`the parallel proceeding.”). As such, it is still “inefficient” to proceed with the Petition
`
`given the imminent trial at the district court. See Fintiv, IPR2020-00019, Paper 11,
`
`at 13 (“[I]f a petition … challenges claims in addition to those that are challenged in
`
`the district court, it may still be inefficient to proceed because the district court may
`
`resolve validity of enough overlapping claims to resolve key issues in the petition.”).
`
`The decision in Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15
`
`2
`
`
`
`(P.T.A.B. Oct. 8, 2019) does not demonstrate otherwise. That decision pre-dates
`
`Fintiv and thus does not address Factor 4. See id. at 11–12. Indeed, the decision fails
`
`to analyze the similarity between the claim in the litigation and the claims challenged
`
`in the petition. Id. at 12. Moreover, unique facts existed there that are not present
`
`here. For example, the trial date was “far from set in stone.” Id. Here, trial in the
`
`parallel district court proceeding is imminent, and even Petitioner has requested a
`
`trial in May 2021—more than ten months prior to the deadline for the Board to issue
`
`a final written decision in this proceeding. See Exs. 2016, 2017.
`
`Petitioner’s policy arguments also fail. See Supercell Oy v. GREE, Inc.,
`
`PGR2020-00034, Paper 13, at 20–21 (P.T.A.B. Sept. 3, 2020) . Petitioner’s claim of
`
`direct prejudice is belied by the Board’s precedents, and in any event, Patent Owner
`
`will not have the option to later assert the non-elected claims. Thus, “denying
`
`Petitioner the ability to challenge [those claims] in this proceeding is not unduly
`
`prejudicial to Petitioner.” Edwards Lifesciences v. Evalve, Inc., IPR2019-01479,
`
`Paper 7, at 12 (P.T.A.B. Feb. 26, 2020). Indeed, in Next Caller Inc. v. TrustID, Inc.,
`
`the Board exercised its discretion to deny institution in view of a parallel proceeding
`
`even though the Petitions addressed “claims 1–52” of the subject patent, “whereas
`
`the Parallel District Court Proceeding only involves claims 32, 34, 36–38, 48, and
`
`50.” IPR2019-00961, -00962, Paper 10, at 15–16 (P.T.A.B. Oct. 16, 2019). The
`
`same conclusion is appropriate here.
`
`3
`
`
`
`Dated: March 15, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Additional Briefing Regarding Overlap Factor has been
`
`served electronically via email upon counsel
`
`for Petitioner at JBush-
`
`PTAB@fenwick.com.
`
`Dated: March 15, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`5
`
`
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