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 REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`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 REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 22 (P.T.A.B. Oct. 28, 2020) ............................................ 2
`Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 26 (P.T.A.B. Jan. 22, 2021) ........................................2, 3
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
`IPR2020-00800, Paper 10 (P.T.A.B. Oct. 22, 2010) ............................................ 4
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 17 (P.T.A.B. Nov. 2, 2020) ........................................... 5
`
`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
`
`2018
`
`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.)
`
`March 17, 2021 Email Correspondence from Law Clerk to Chief
`Judge Rodney Gilstrap, U.S. District Court for the Eastern District
`of Texas, April 2021 Order of Trials, GREE, Inc. v. Supercell Oy,
`Civil Action Nos. 2:19-cv-00200, -237, -310, -311 (E.D. Tex.)
`
`2019
`
`Notice of Jury Selection, GREE, Inc. v. Supercell Oy, Civil Action
`No. 2:19-cv-00310 (E.D. Tex. Mar. 25, 2021)
`
`iii
`
`
`
`Exhibit No.
`2020
`
`Description
`March 30, 2021 Email Correspondence from Law Clerk to Chief
`Judge Rodney Gilstrap, U.S. District Court for the Eastern District
`of Texas, May 2021 Trial Setting and Jury Selection, GREE, Inc.
`v. Supercell Oy, Civil Action Nos. 2:19-cv-00200, -237, -310, -311
`(E.D. Tex.)
`
`2021
`
`Jury Verdict, GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-
`cv-00310, Document 275 (E.D. Tex. May 7, 2021)
`
`iv
`
`
`
`The Board did not abuse its discretion in denying institution based on “a
`
`holistic analysis of the Fintiv Order factors.” Paper 13 (“Decision”), at 14. The Board
`
`found that “factors 2, 3, and 5 weigh toward denying institution,” while “factor 4
`
`weighs in favor of institution” and “factors 1 and 6 are neutral.” Id. And overall, the
`
`Board found “that the facts underlying factors 2, 3, and 5 collectively outweigh the
`
`facts underlying factors 1, 4, and 6”—including because “the district court will reach
`
`trial many months before we would reach a final decision.” Id. And, in fact, the
`
`parties have now completed trial in the parallel district court proceeding (within two
`
`months of the Decision), with the jury returning a verdict in favor of Patent Owner
`
`on all issues on May 7, 2021. See, e.g., Ex. 2021.
`
`Petitioner’s Request for Rehearing of that Decision boldly asks the Board to
`
`wholly ignore the completed trial between the parties regarding the subject patent
`
`(i.e., Factors 2, 3, and 5) and simply find “Factors 4 and 6 to be definitive.” Paper
`
`16 (“Request”), at 7. This is improper and incorrect. The Board’s precedential order
`
`in Fintiv prescribes a holistic review and evaluation of all six Fintiv factors to
`
`determine “whether efficiency and integrity of the system are best served by denying
`
`or instituting review.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6
`
`(P.T.A.B. Mar. 20, 2020). The Board performed such a full and proper analysis in
`
`its Decision, and thus did not abuse its discretion in denying institution.
`
`
`
`A. The Board’s Conclusion Regarding Factor 2 Does Not Rest on a
`Clearly Erroneous Fact Finding
`
`The Board’s Decision correctly noted that, as of the date of that Decision, the
`
`trial date in the parallel district court proceeding “will likely be set for no later than
`
`May, 2021.” Decision, at 8 (citing Ex. 2017). And trial did, in fact, ultimately begin
`
`on April 30, 2021—and was completed by May 7, 2021. Exs. 2019–2021. Thus, the
`
`Board’s conclusion regarding Factor 2—proximity of the court’s trial date to the
`
`Board’s projected statutory deadline for a final written decision—does not rest on a
`
`clearly erroneous fact finding.
`
`Petitioner’s contention otherwise is essentially that the proximity of the
`
`court’s trial date to the Board’s projected statutory deadline for a final written
`
`decision is wholly irrelevant when “different prior art [is] used in the two forums.”
`
`See Request, at 3, 7. This is not correct. Factor 2 “weigh[s] … in favor of exercising
`
`authority to deny institution” “[i]f the court’s trial date is earlier than the projected
`
`statutory deadline”—regardless of the scope of overlap of prior art between the two
`
`tribunals. Fintiv, IPR2020-00019, Paper 11, at 9; see, e.g., Amazon.com, Inc. v.
`
`Vocalife LLC, IPR2020-00864, Paper 22, at 10 (P.T.A.B. Oct. 28, 2020) (finding
`
`Factor 2 “strongly favors exercising [] discretion to deny institution” where jury trial
`
`has been completed, despite the fact the Petitioner did not present certain prior art
`
`references to the jury, and thus “the jury did not consider Grounds 1a–1e of the
`
`Petition”); see also Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 26
`
`2
`
`
`
`(P.T.A.B. Jan. 22, 2021) (denying petitioner’s request for rehearing). “[T]he overlap
`
`between issues raised in the petition and in the parallel proceeding” is the subject of
`
`Factor 4 (as the Board analyzed in the Decision)—not Factor 2. Fintiv, IPR2020-
`
`00019, Paper 11, at 9.
`
`B. The Board’s Conclusion Regarding Factor 3 Does Not
`Misapprehend or Overlook Fact Findings
`
`In the Decision, the Board correctly found “[t]he district court and the parties
`
`have made substantial investments in the parallel proceeding,” including in
`
`preparation of the then-impending trial. Decision, at 9–10. And since the Decision,
`
`the district court and parties have made even further substantial investments with the
`
`completion of trial. See Exs. 2019–2021. Once again, Petitioner’s criticism of the
`
`Board’s findings regarding this Factor rests solely on its contention that those
`
`undisputed investments are irrelevant because they have been “almost entirely in
`
`issues that do not overlap with those in this proceeding.” Request, at 5.
`
`But “the overlap between issues raised in the petition and in the parallel
`
`proceeding” is addressed at Factor 4—not Factor 3. Fintiv, IPR2020-00019, Paper
`
`11, at 6. “In preparing for and conducting this trial, the parties and the district court
`
`invested substantial time and effort addressing validity” of the subject patent—
`
`regardless of the precise overlap of asserted prior art between the two tribunals.
`
`Amazon.com, IPR2020-00864, Paper 26, at 5 (denying request for rehearing).
`
`3
`
`
`
`Moreover, Petitioner waived its challenge to the validity of the subject patent
`
`at trial in the parallel district court proceeding less than 48 hours before the start of
`
`trial. Ex. 1050. Up until that point, Petitioner had contended that claims of the subject
`
`patent were invalid under 35 U.S.C. §§ 102 and 103, and both parties had invested
`
`substantial time and effort addressing that challenge, including throughout expert
`
`discovery and in preparation for trial. See Paper 7, at 17–18; see also Exs. 2005–
`
`2006. Petitioner cannot erase the substantial time and effort the parties invested on
`
`this topic simply by acquiescing to the validity of the subject patent on the eve of
`
`trial (and after the Board’s Decision in this proceeding as well). Nor can Petitioner
`
`contend that its waiver of its right to challenge validity at the district court supports
`
`institution here—to reward such a tactic would condone gamesmanship. Further,
`
`institution would necessarily be inconsistent with Petitioner’s waiver. And
`
`institution of trial in this proceeding in view of these facts would raise significant
`
`concerns about “imposing unfair costs onto the Patent Owner.” Comcast Cable
`
`Commc’ns, LLC v. Rovi Guides, Inc., IPR2020-00800, Paper 10, at 12 (P.T.A.B.
`
`Oct. 22, 2010).
`
`C. The Board’s Conclusion Regarding Factor 6 Does Not Rest on a
`Clearly Erroneous Fact Finding
`
`The Board correctly determined that Factor 6 is “neutral” because the merits
`
`of the challenges set forth in the instant Petition are “neither weak nor strong”
`
`Decision, at 14. Petitioner contends that this conclusion “rests on clearly erroneous
`
`4
`
`
`
`fact finding” in light of the Board’s comment that the merits of the challenges are
`
`“adequate for institution.” Request, at 5. Petitioner is incorrect. As set forth in Fintiv,
`
`this Factor favors institution only “[i]f the merits of a ground raised in the petition
`
`seem particularly strong on the preliminary record.” IPR2020-00019, Paper 11, at
`
`14–15 (emphasis added). And “adequate for institution” necessarily does not satisfy
`
`this standard, because if the challenge was not “adequate for institution” there would
`
`be no reason for the Board to even analyze whether it should exercise its discretion
`
`to nonetheless deny institution under § 314(a).
`
`D. The Board Did Not Abuse Its Discretion In Denying Institution
`Under § 314(a) In Accordance with Fintiv
`
`The Board did not abuse its discretion in reaching its conclusion under a
`
`holistic analysis of all of the Fintiv Factors. Petitioner’s argument otherwise suggests
`
`that the Board should have found “Factors 4 and 6 to be definitive … regardless of
`
`its findings regarding other factors.” Request, at 7. Such a proposition is directly
`
`contrary to the Board’s precedential decision in Fintiv, as noted above. And none of
`
`the decisions cited by Petitioner support such a divergence from the required analysis
`
`of all of the Fintiv Factors. Those decisions are also distinguishable from the facts
`
`here. See Paper 9. Petitioner’s challenge to the entire “NHK-Fintiv framework” as
`
`“procedurally invalid” (Request, at 9–11) also fails, as previously found by this
`
`Board. See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034, Paper 17, at 11–12
`
`(P.T.A.B. Nov. 2, 2020) (denying request for rehearing on same grounds).
`
`5
`
`
`
`Dated: May 20, 2021
`
`Respectfully submitted,
`
`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Request for Rehearing Under 37 C.F.R. §42.71 has been
`
`served electronically via email upon counsel
`
`for Petitioner at JBush-
`
`PTAB@fenwick.com.
`
`Dated: May 20, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`7
`
`
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