UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01619
`U.S. Patent No. 10,413,832
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO LIMIT PETITION TO GROUND 2
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01619
`U.S. Patent No. 10,413,832
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO LIMIT PETITION TO GROUND 2
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`BACKGROUND ............................................................................................. 2
`ARGUMENT ................................................................................................... 3
`A.
`Petitioner Failed to Employ Other, Well-Established
`Mechanisms to Mitigate Any Concerns of Duplicative Efforts
`by the Board .......................................................................................... 3
`Limiting the Petition is Not Consistent With the Board’s
`Practices ................................................................................................. 4
`Patent Owner is Prejudiced By Petitioner’s Motion to Limit ............... 5
`
`B.
`
`C.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC,
`IPR2017-01092, Paper 51 (P.T.A.B. June 27, 2018) ....................................... 3, 4
`ABB Inc. v. ROY-G-BIV Corp,
`IPR2013-00282, Paper 6 (P.T.A.B. May 30, 2013) ............................................. 4
`Aker BioMarine AS v. Neptune Technologies and Bioresources, Inc.,
`IPR2014-00003, Paper 21 (P.T.A.B. Feb. 3, 2014) .............................................. 5
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ........................................... 2
`Netflix, Inc. v. Copy Protection LLC,
`IPR2015-00921, Paper 14 (P.T.A.B. June 5, 2015) ............................................. 5
`SAS Inst., Inc. v. Iancu,
`138 S.Ct. 1348 (2018) ........................................................................................... 4
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................. 3
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ........................................... 2
`Supercell Oy v. GREE, Inc.,
`IPR2020-00310, Paper 13 (P.T.A.B. June 18, 2020) ........................................... 2
`Supercell Oy v. GREE, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ........................................... 2
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 13 (P.T.A.B. Sept. 3, 2020) ........................................... 2
`Supercell Oy v. GREE, Inc.,
`PGR2020-00038, Paper 14 (P.T.A.B. Sept. 3, 2020) ........................................... 2
`Target Corp. v. Destination Maternity Corp.,
`IPR2014-00508, Paper 32 (P.T.A.B. Feb. 12, 2015) ............................................ 5
`
`ii
`
`
`
`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
`
`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
`
`Exhibit B-2 to 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
`
`iii
`
`
`
`Exhibit No.
`2010
`
`Description
`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)
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`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)
`
`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)
`
`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.)
`
`February 25, 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.)
`
`February 25, 2021 Email Correspondence from Jessica Kaempf,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00310 (E.D.
`Tex.)
`
`iv
`
`
`
`The Board should deny Petitioner’s unprecedented eleventh-hour attempt to
`
`reinvent the Petition after reviewing Patent Owner’s Preliminary Response and Sur-
`
`Reply. Indeed, less than one month remains until the Board’s deadline to issue an
`
`institution decision. Petitioner’s Motion is a transparent attempt to avoid
`
`discretionary denial of the Petition under § 314(a) in view of the advanced state of a
`
`parallel district court proceeding between the parties, where trial is now scheduled
`
`to begin on March 15. Ex. 2015. In that trial, Petitioner asserts the same prior art
`
`reference (Farmville for Dummies) as currently asserted in Ground 1 of the Petition.
`
`No authority supports Petitioner’s attempt to now skew the facts underlying
`
`Fintiv Factor 4 with respect to the § 314(a) analysis by freely limiting the Petition at
`
`this late stage. Quite the opposite, the Board’s precedents establish other
`
`mechanisms by which Petitioner may attempt to achieve the end it seeks—namely,
`
`Petitioner may request adverse judgment as to Ground 1. Alternatively, Petitioner
`
`could have stipulated not to pursue at the district court any ground raised or that
`
`could have been raised in this proceeding. But Petitioner did not do so. In fact,
`
`Petitioner does the opposite, as it continues to assert this same prior art at the district
`
`court even after narrowing its asserted art. In essence, Petitioner thus urges the Board
`
`to allow it to achieve the same result afforded by the Board’s established
`
`mechanisms—but without any consequences. Such a result is unprecedented,
`
`contrary to the Supreme Court’s guidance in SAS, and prejudicial to Patent Owner.
`
`
`
`I.
`
`BACKGROUND
`Petitioner filed the instant Petition on September 14, 2020. At that time, the
`
`parallel district court proceeding between the parties involving the patent had been
`
`pending for one year. See Ex. 2004. Additionally, the Board’s precedential Fintiv
`
`decision had also issued six months earlier, on March 20, 2020. Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020). And by the filing of the
`
`instant Petition, the Board had already denied institution of five petitions filed by
`
`this same Petitioner against this same Patent Owner in view of the Fintiv factor
`
`(based on similar facts presented by the instant Petition). IPR2020-00215, Paper 10
`
`(P.T.A.B. June 10, 2020); IPR2020-00310, Paper 13 (P.T.A.B. June 18, 2020);
`
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020); PGR2020-00034, Paper 13
`
`(P.T.A.B. Sept. 3, 2020); PGR2020-00038, Paper 14 (P.T.A.B. Sept. 3, 2020).
`
`Despite these facts, as well as the impending trial date in the parallel district
`
`court proceeding, Petitioner presented in Ground 1 of the Petition the same prior art
`
`reference (Farmville for Dummies) that Petitioner asserts in the parallel district court
`
`proceeding. See Paper 7, at 22–24. For this and a multitude of other reasons, Patent
`
`Owner argued that the Board should exercise its discretion under 35 U.S.C. § 314(a)
`
`to deny the Petition. See Paper 7, at 3–36; see also Paper 9, at 1–5. Petitioner now
`
`seeks, with benefit of hindsight, to remove Farmville for Dummies in an attempt to
`
`minimize one aspect of the substantial overlap between the two proceedings.
`
`2
`
`
`
`II.
`
`ARGUMENT
`A.
`Petitioner Failed to Employ Other, Well-Established Mechanisms
`to Mitigate Any Concerns of Duplicative Efforts by the Board
`No “good cause” exists for granting Petitioner’s Motion to Limit the Petition.
`
`Petitioner claims that its Motion seeks to “mitigate[] any concerns of duplicative
`
`efforts or potentially conflicting decisions” and “promote[] efficient use of the
`
`resources of the Board” by “removing the overlapping ground.” Paper 10, at 4. But
`
`Petitioner wholly ignores—and fails to employ—the established mechanism to
`
`achieve this end. Rule 42.73(b) permits a party to “request judgment against itself at
`
`any time during a proceeding.” 37 C.F.R. § 42.73(b) (emphasis added). And the
`
`Board has held that a petitioner can so request “partial adverse judgment” on a
`
`ground “to limit the scope of a proceeding.” 1964 Ears, LLC v. Jerry Harvey Audio
`
`Holding, LLC, IPR2017-01092, Paper 51, at 3–4 (P.T.A.B. June 27, 2018).
`
`Additionally, Petitioner further ignores that the Board has recently approved
`
`an alternative mechanism to achieve a similar result with respect to Fintiv Factor
`
`4—a “broad[]” stipulation by Petitioner that it “will not pursue in the District Court
`
`Litigation any ground raised or that could have been reasonably raised in an IPR.”
`
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 18–19
`
`(P.T.A.B. Dec. 1, 2020). But tellingly, Petitioner never offered such a stipulation
`
`here. In fact, Petitioner continues, even after narrowing its prior art before the district
`
`court, to assert the same prior art reference (Farmville for Dummies) in the parallel
`
`3
`
`
`
`litigation, and, in fact, Petitioner names Farmville for Dummies as the primary
`
`reference it will assert at the parties’ March 15, 2021 trial. See Ex. 2016, at 1.
`
`Limiting the Petition is Not Consistent With the Board’s Practices
`B.
`Contrary to Petitioner’s contention, allowing Petitioner to freely limit the
`
`instant Petition at the eleventh hour in an effort to avoid § 314(a) is not consistent
`
`with the Board’s practices. Petitioner’s reliance on SAS is particularly misplaced.
`
`Therein, the Supreme Court explained that “[n]othing suggests the Director enjoys
`
`a license to depart from the petition and institute a different inter partes review of
`
`his own design.” SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1355–56 (2018) (emphasis
`
`added). As such, “[t]he Board’s guidance on the impact of SAS … allows Petitioner
`
`to request partial adverse judgment on … grounds in order to limit the scope of a
`
`proceeding”—as opposed to doing so via a unilateral motion to limit. 1964 Ears,
`
`IPR2017-01092, Paper 51, at 3–4. The fact that the Board has allowed parties to
`
`jointly remove grounds from a petition via a Joint Motion to Limit the Petition after
`
`institution (Paper 10, at 3) is immaterial, given that no such procedural facts exist
`
`here, and, in fact, Patent Owner opposes removal of Ground 1 on these terms.
`
`The other, pre-SAS decisions relied on by Petitioner are also distinguishable.
`
`In ABB Inc. v. ROY-G-BIV Corp., the Board permitted the petitioner—less than a
`
`month after filing the petition—to limit the grounds and claims asserted to support
`
`the petitioner’s request for joinder with an already-instituted proceeding. IPR2013-
`
`4
`
`
`
`00282, Paper 6, at 2 (P.T.A.B. May 30, 2013). The Board granted a similar,
`
`unopposed motion to limit to support a joinder request in Target Corp. v. Destination
`
`Maternity Corp., IPR2014-00508, Paper 32, at 1 (P.T.A.B. Feb. 12, 2015). And in
`
`each of Aker BioMarine AS v. Neptune Technologies and Bioresources, Inc.,
`
`IPR2014-00003, Paper 21, at 2 (P.T.A.B. Feb. 3, 2014), and Netflix, Inc. v. Copy
`
`Protection LLC, IPR2015-00921, Paper 14, at 2 (P.T.A.B. June 5, 2015), the Board
`
`granted a joint motion to limit in view of a private agreement between the parties.
`
`Patent Owner is Prejudiced By Petitioner’s Motion to Limit
`C.
`Despite being indisputably aware of the Fintiv factors and the Board’s
`
`decisions denying institution of its petitions under § 314(a), Petitioner nonetheless
`
`elected to include Farmville for Dummies as an asserted reference in the Petition—
`
`despite Petitioner’s reliance on the same reference at the district court. Patent Owner
`
`subsequently devoted time and resources to explaining in briefing to the Board why
`
`this overlap weighed in favor of discretionary denial under § 314(a). See, e.g., Paper
`
`7, at 22–24. Allowing Petitioner to now freely reinvent its Petition, after and in view
`
`of Patent Owner’s briefing, to remove Farmville for Dummies from the Petition—
`
`without any consequences to Petitioner—is unprecedented (as discussed), violates
`
`the Supreme Court’s decision in SAS, and necessarily prejudicial to Patent Owner.
`
`Such gamesmanship by Petitioner should not be endorsed by the Board. For all these
`
`reasons, Petitioner’s Motion should be denied.
`
`5
`
`
`
`Dated: March 2, 2021
`
`
`
`By: /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
`
`Opposition to Petitioner’s Motion to Limit Petition to Ground 2 has been served
`
`electronically via email upon counsel for Petitioner at JBush-PTAB@fenwick.com.
`
`Dated: March 2, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`7
`
`
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