throbber
IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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 No. IPR2020-01553
`Patent 10,076,708 B2
`_____________
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION .................................................................................................... 1
`A.
`There Is No Overlap Between the Proceedings ................................... 1
`B.
`The Absence of Overlap Informs the Board’s Analysis
`Under Factors 2 and 3 .......................................................................... 3
`The Merits of the Asserted Grounds Favor Institution ........................ 4
`
`C.
`
`
`
`
`
`
`
`i
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) .................................... 1, 3
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................................. 3
`Sand Revolution II, LLC v. Cont’l Intermodel Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ............................... 1, 2, 3, 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-00019, Paper 12 (P.T.A.B. Dec. 1, 2020) ..................................... 2, 4, 5
`STATUTES AND RULES
`35 U.S.C. § 314(a) ................................................................................................. 1, 2
`
`
`ii
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`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 Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`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
`
`1033
`
`Fourth Amended Docket Control Order (19-00310), Dkt. 62
`
`iv
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`Exhibit
`
`Description
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`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/
`
`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
`
`v
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`Exhibit
`
`1044
`
`1045
`
`1046
`
`1047
`
`Description
`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, E.D. 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
`(E.D. Texas)
`
`Email from Taylor Mauze, Law Clerk to Chief Judge Rodney
`Gilstrap, March 2, 2021, regarding March 15, 2021 Jury Selection
`and Trial Procedures (E.D. Texas)
`
`
`
`vi
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`INTRODUCTION
`A proper weighing of the Fintiv factors supports institution of inter partes
`
`review in the instant proceeding. Petitioner dropped all of its art-based validity
`
`challenges to the ’708 patent in the parallel litigation such that the court did not
`
`evaluate whether the challenged patent is obvious, let alone obvious on the grounds
`
`asserted in the Petition. Accordingly, there is no overlap between this IPR and the
`
`litigation. This fact affects not only Factor 4 (overlap) of the Fintiv analysis, but also
`
`Factors 2 (proximity of trial) and 3 (investment). While trial is complete in the
`
`litigation, the two proceedings concern different arguments and challenges to the
`
`’708 patent, thus ensuring zero risk of inconsistent results and favoring grant of
`
`rehearing and institution.
`
`A. There Is No Overlap Between the Proceedings
`The lack of overlap between the instant proceeding and the litigation warrants
`
`institution of IPR. Here, Sand Revolution is instructive: in that case, the Board
`
`determined that Factor 4 weighed in favor of not exercising its discretion under
`
`§ 314(a) where the petitioner stipulated it would not pursue the same grounds in the
`
`district court litigation if the Board instituted IPR. See Sand Revolution II, LLC v.
`
`Cont’l Intermodel Grp., IPR2019-01393, Paper 24 at 11-12 (P.T.A.B. June 16, 2020)
`
`(Informative). The petitioner’s stipulation mitigated the Board’s concerns about
`
`1
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`duplicative efforts and potentially conflicting results between the two proceedings
`
`and caused the Board to modify its initial decision denying institution. Id. at 12.
`
`Petitioner’s actions in the instant proceeding go beyond the relevant
`
`stipulation in Sand Revolution. Not only did Petitioner assert different grounds in
`
`the two proceedings at the outset, Petitioner dropped art-based challenges entirely in
`
`the litigation prior to trial. Thus, Petitioner did not pursue at trial any ground that
`
`was raised or could have been reasonably raised in the IPR (i.e., any ground that
`
`could be raised under §§ 102 or 103 based on prior art patents or printed
`
`publications). While the Board in Sand Revolution granted the petitioner’s Request
`
`for Rehearing largely based on the stipulation to pursue different grounds, the Board
`
`noted that a stipulation of a breadth closer to Petitioner’s actions here (i.e., a decision
`
`not to pursue any prior art patent or printed publication challenges in the parallel
`
`proceeding) “might better address concerns regarding duplicative efforts and
`
`potentially conflicting decisions in a much more substantial way” and “tip[] this
`
`factor more conclusively in [Petitioner’s] favor.” Sand Revolution, IPR2019-01393,
`
`Paper 24 at 12, n. 5. In fact, the Board subsequently found in Sotera Wireless that
`
`such a broad stipulation “weighs strongly in favor of not exercising discretion to
`
`deny institution under 35 U.S.C. § 314(a).” Sotera Wireless, Inc. v. Masimo Corp.,
`
`IPR2020-00019, Paper 12 at 19 (P.T.A.B. Dec. 1, 2020) (Precedential as to § II.A)
`
`(emphasis added).
`
`2
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`B.
`
`The Absence of Overlap Informs the Board’s Analysis Under Factors 2
`and 3
`Concerns implicated by Factors 2 and 3 are obviated by the lack of overlap
`
`with the parallel litigation. The Board in Fintiv explicitly recognized that “[s]ome
`
`facts may be relevant to more than one factor.” Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 11 at 6 (P.T.A.B. March 20, 2020) (Precedential). With respect to
`
`Factor 2, the Board opinion in NHK Spring (the only opinion referenced in the Fintiv
`
`Order discussion of Factor 2) anchored its analysis on the question of overlap. See
`
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (P.T.A.B.
`
`Sept. 12, 2018) (Precedential) (“A trial before us on the same asserted prior art will
`
`not conclude until September 2019”) (emphasis added).
`
`Here, the lack of overlap between the completed trial and the instant IPR is
`
`directly relevant to the analysis of Factor 2. It is undisputed that the court did not
`
`address the validity of the ’708 patent on the grounds raised in the Petition. Thus,
`
`while there was minimal risk of inconsistent results when the Board issued its
`
`Decision, due to the different art at issue in each proceeding, there is now zero risk
`
`of inconsistent results because the district court did not evaluate whether the
`
`challenged patent is obvious.
`
`The lack of overlap is likewise relevant to Factor 3. The Board in Sand
`
`Revolution specifically looked at the type of investment that had occurred in the
`
`parallel proceeding in weighing Factor 3, concluding that the district court and the
`
`3
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`parties had not invested substantially in the merits of the invalidity positions. See
`
`Sand Revolution, IPR2019-01393, Paper 24 at 10 (“…much of the district court’s
`
`investment relates to ancillary matters untethered to the validity issue itself.”). The
`
`investment by the court in the parallel litigation ultimately was not in whether the
`
`claims of the ’708 patent are obvious under § 103. Nor will any further investment
`
`be made by the court involving the invalidity grounds raised in the Petition.
`
`Patent Owner’s contention that institution as a result of Petitioner’s “waiver
`
`of its right to challenge validity at the district court” rewards gamesmanship is
`
`simply wrong. The Board explicitly encourages petitioners to waive art-based
`
`invalidity defenses in the parallel proceeding because it “mitigates any concerns of
`
`duplicative efforts between the district court and the Board, as well as concerns of
`
`potentially conflicting decisions.” Sotera Wireless, IPR2020-00019, Paper 12 at 19.
`
`Further, the court encourages parties to narrow the issues ahead of trial. Any costs
`
`imposed on Patent Owner as a result of the waiver and associated grant of institution
`
`are fair; such costs are not the result of duplicating the effort of another tribunal.
`
`C. The Merits of the Asserted Grounds Favor Institution
`The Board necessarily concluded that there is a reasonable likelihood that the
`
`patent-at-issue is invalid. The Board also found that the issue of validity is “best
`
`decided on a full record.” Decision at 14. Given the likelihood of invalidity and the
`
`Board’s own reasoning that it would best to explore the issue of validity on a full
`
`4
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`record, institution serves “the interest of overall system efficiency and integrity
`
`because it allows the proceeding to continue in the event that the parallel
`
`proceeding…fails to resolve the patentability question presented in the PTAB
`
`proceeding,” as occurred here. Fintiv, IPR2020-00019, Paper 11 at 15. Finding
`
`Factor 6 to be neutral in view of the circumstances and binding precedent constitutes
`
`an abuse of discretion.
`
`Accordingly, as discussed above, when correctly considered, Factors 2, 3, 4,
`
`and 6 each weigh in favor of instituting IPR in the instant proceeding. These factors
`
`collectively outweigh Factors 1 (neutral) and 5 (weighs toward denial). Thus, when
`
`fully considered, the holistic analysis favors institution.
`
`
`
`Dated: May 27, 2021
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R, Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`5
`
`

`

`IPR2020-01553
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
`
`Patent Owner’s Response to Petitioner’s Request for Rehearing was served on
`
`Patent Owner’s lead and back-up counsel in its entirety by electronic service at the
`
`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
`
`
`
`
`email addresses provided below:
`
`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: May 27, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`6
`
`

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