Trials@uspto.gov
`571-272-7822
`
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`
`
`
`Paper No. 15
`Date: May 1, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00008
`Patent 9,597,594 B2
`____________
`
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Post-Grant Review
`35 U.S.C.. § 324(a)
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant review of
`claims 1–20 of U.S. Patent No. 9,597,594 B2 (“the ’594 patent”) (Ex. 1001)
`pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE Inc. (“Patent Owner”) filed a
`Preliminary Response (“Prelim. Resp.”). Paper 7. With authorization from the
`
`I.
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`PGR2018-00008
`Patent 9,597,594 B2
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`Board, Petitioner filed a Reply to Patent Owner’s Preliminary Response, Paper 12
`(“Pet. Reply”) and Patent Owner filed a Sur-Reply. Paper 13 (“PO Sur-Reply”).
`We have jurisdiction under 35 U.S.C. § 324, which provides that a post-grant
`review may be instituted only if “the information presented in the petition . . .
`demonstrate[s] that it is more likely than not that at least 1 of the claims challenged
`in the petition is unpatentable.”
`Petitioner challenges the patentability of claims 1–20 of the ’594 patent
`under 35 U.S.C. § 101. After considering the Petition, the Preliminary Response,
`the Reply, and the Sur-Reply, as well as all supporting evidence, we are persuaded
`that it is more likely than not that Petitioner would prevail in showing that claims
`1–20 are unpatentable. Accordingly, we institute a post-grant review on claims 1–
`20.
`
`The ’594 patent
`A.
`The ’594 patent relates generally to a method of improving the usability of
`computer games, where a user builds and defends a virtual city, by using templates
`to allow the user to more easily change game elements within a game space.
`Ex. 1001, 1:42–60, 2:5–11. More specifically, the ’594 patent describes such a
`game where a user creates a city by arranging various game elements, where those
`various game elements may include facilities, characters, soldiers, weapons, cards,
`figures, avatars, and items. Ex. 1001, 4:26–29; 4:38–40. The user’s city may then
`be attacked by opposing players, and the layout and design of the user’s city
`becomes a factor in whether the user is able to successfully defend the city.
`Ex. 1001, 1:44–49. According to the ’594 patent, as a player progresses in a game
`and expands their city within the game space, it becomes more complicated for a
`player to keep track of many things, for example, change the positions, types, and
`levels of game elements. Ex. 1001, 1:50–55. To address this problem, the ’594
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`patent describes a game play method where a user may modify the game space
`using templates that can be applied to a predetermined area. Ex. 1001, 1:61–2:10.
`Hence, a user is able to automatically rearrange a group of game elements to match
`a predesigned template. Ex. 1001, 4:34–37.
`
`Related Matters
`B.
`Petitioner identifies the following matter: GREE, Inc. v. Supercell K.K.,
`Case 2017 (Yo) No. 22046 in Tokyo District Court, associated with related patent
`JP 5,676,032, which relates to PCT/JP2014/07673. Pet. 2; Ex. 1001, (63) (the ’594
`patent also claiming priority to PCT/JP2014/07673).
`
`Illustrative Claim
`C.
`Claims 1–20 are pending and challenged, of which claims 1, 10, 11, and 12
`are independent. Independent claim 12, which is representative, is reproduced
`below:
`12. A device in communication with a server, comprising:
`a memory device storing game software instructions; and
`one or more hardware processors configured to execute the game
`software instructions perform operations including:
`storing first positions of game contents;
`creating a template defining game contents and second positions
`of one or more of the game contents arranged in a game space based on
`a template creation command by a game player,
`storing the created template in the memory device, and
`applying the template to a predetermined area within the game
`space based on a template application command by the game player.
`
`The Alleged Ground of Unpatentability
`D.
`The Petition asserts that claims 1–20 of the ’594 patent are unpatentable as
`being directed to non-statutory subject matter. Pet. 16–38.
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`
`Eligibility of Patent for Post-Grant Review
`E.
`The post-grant review provisions of the Leahy-Smith America Invents Act
`(“AIA”)1 apply only to patents subject to the first inventor to file provisions of the
`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions apply to
`any application for patent, and to any patent issuing thereon, that contains or
`contained at any time a claim to a claimed invention that has an effective filing
`date on or after March 16, 2013. AIA § 3(n)(1). Furthermore, “[a] petition for a
`post-grant review may only be filed not later than the date that is 9 months after the
`date of the grant of the patent or of the issuance of a reissue patent (as the case may
`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the same).
`Petitioner asserts that the instant Petition is being filed within nine months of
`the March 21, 2017 issue date of the ’594 patent. Pet. 2. Further, the ’594 patent
`was filed on December 30, 2015. On this record, we agree with Petitioner that the
`’594 patent is eligible for post-grant review.
`
`II. ANALYSIS
`We turn now to Petitioner’s asserted grounds of unpatentability to determine
`whether Petitioner has met the threshold standard, under 35 U.S.C. § 324(a), for
`instituting review.
`
`Claim Construction
`A.
`As a step in our analysis for determining whether to institute a review, we
`determine the meaning of the claims for purposes of this Decision. In a post-grant
`review, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`2144–46 (2016). Under the broadest reasonable construction standard, claim terms
`are generally given their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim
`term will not receive its ordinary meaning if the patentee acted as his own
`lexicographer and clearly set forth a definition of the disputed claim term in either
`the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002). We determine that it is unnecessary to
`expressly construe any claim terms at this time.
`
`Claims 1–20 as Directed to Non-Statutory
`B.
`Subject Matter Under 35 U.S.C. § 101
`Petitioner contends that claims 1–20 do not recite patent eligible subject
`matter under 35 U.S.C. § 101. Pet. 16–38 (citing Exs. 1001, 1003). Patent Owner
`disagrees. Prelim. Resp. 2–24 (citing Exs. 1001, 2001, 2002). Petitioner replies.
`Pet. Reply 1–5 (citing Ex. 1001). Patent Owner responds further. PO Sur-Reply
`1–5 (citing Ex. 1001).
`
`Relevant Law
`1.
`An invention is patent-eligible if it claims a “new and useful process,
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
`Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions:
`“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014).
`In determining whether a claim falls within the excluded category of abstract
`ideas, we are guided by the Supreme Court’s two-step framework, described in
`Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289, 1296–97 (2012)). In accordance with that framework,
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`we first determine whether the claim is “directed to” a patent-ineligible abstract
`idea. See Alice, 134 S. Ct. at 2356 (“On their face, the claims before us are drawn
`to the concept of intermediated settlement, i.e., the use of a third party to mitigate
`settlement risk.”). See also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1
`and 4 in petitioners’ application explain the basic concept of hedging, or protecting
`against risk.”).
`The patent-ineligible end of the spectrum includes fundamental economic
`practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611); mathematical
`formulas (Flook, 437 U.S. at 594–95); and basic tools of scientific and
`technological work (Benson, 409 U.S. at 69). Relevant to gaming technologies, the
`Federal Circuit has held that claims “directed to rules for conducting a wagering
`game” are comparable to the fundamental economic practices found to be abstract
`in Alice. See In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). On the patent-
`eligible side of the spectrum are physical and chemical processes, such as curing
`rubber (Diamond v. Diehr, 450 U.S. at 184 n.7 (1981)) and “tanning, dyeing,
`making waterproof cloth, vulcanizing India rubber, smelting ores,” and a process
`for manufacturing flour (Gottschalk v. Benson, 409 U.S. at 69 (1972)).
`If the claim is “directed to” a patent-ineligible abstract idea, we turn to the
`second step of the Alice and Mayo framework and consider the elements of the
`claim, both individually and as an ordered combination, to determine whether the
`additional elements transform the nature of the claim into a patent-eligible
`application of the abstract idea. Alice, 134 S.Ct. at 2355. This second step is a
`search for an “inventive concept”—an element or combination of elements
`sufficient to ensure that the claim amounts to “significantly more” than the abstract
`idea itself. Id.
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`2. Whether the Claims Are Directed to an “Abstract Idea”
`Petitioner asserts that the claims are directed to “creating and applying a
`template,” which Petitioner asserts is an abstract idea. Pet. 20, 21. Petitioner
`asserts that the claimed concept of “creating and applying a template” is an abstract
`idea because it (1) “consists entirely of mental steps that can be carried out by a
`human, either mentally, using pen and paper, or with real-world game pieces”;
`(2) is merely “automating [a] manually-achievable purpose[ ]”; and (3) “cannot be
`considered to be directed to an improvement in computer technology because
`neither the claims nor the specification recites any new technology, new process,
`or improvement to existing technologies.” Pet. 16–28.
`Patent Owner does not directly dispute Petitioner’s assertions concerning the
`first step of the Mayo and Alice framework. See, e.g., Prelim. Resp. 3–6
`(identifying the two-step framework but criticizing only Petitioner’s contentions
`regarding the second step), 11–13 (addressing the second step). Considering the
`evidence of record, we are persuaded that Petitioner has established sufficiently
`that claims 1–20 are directed to “creating and applying a template.” For example,
`Petitioner analyzes the limitations of representative independent claim 12, and then
`concludes that “[a]side from storing game data, the claims focus[es] on creating
`and applying a template.” Pet. 20; see also infra at pages 10–11, 14–15
`(discussing Petitioner’s use of representative claims). Petitioner further cites
`several portions of the ’594 patent in support of its assertion. Pet. 20–21 (citing
`Ex. 1001, 4:27–37, 7:16–17, 16:25–35; 17:24–25, 20:24–37). On this record, we
`are persuaded that Petitioner’s assertion, that claims 1–20 are directed to “creating
`and applying a template,” is credible and adequately supported.
`We are further are persuaded that Petitioner has established sufficiently that
`“creating and applying a template” is an abstract idea. For example, Petitioner
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`asserts that “[t]he ’594 patent’s claimed concept of creating and applying a
`template . . . consists entirely of mental steps that can be carried out by a human,
`either mentally, using pen and paper, or with real-world game pieces.” Pet. 21–23.
`Petitioner additionally directs us to Planet Bingo, LLC v. VKGS LLC, 576 Fed.
`App’x 1005, 1005–07 (Fed. Cir. 2014) (“The . . . patents claim managing a bingo
`game while allowing a player to repeatedly play the same sets of numbers in
`multiple sessions.”). Petitioner asserts that the claims in Planet Bingo are
`sufficiently analogous to the claims of the ’594 patent, in that both are reasonably
`characterized as directed to the same general concept of repeatedly applying a
`template to a game space.
`As further evidence, Petitioner analogizes the current claims to a game of
`correspondence chess, as described in A Guide to Correspondence Chess in Wales.
`See Ex. 1003. In correspondence chess, a player records the current state of the
`chess game, indicates the player’s next move on a post card, and sends the post
`card to a second player who will modify their game board to reflect the updated
`state of the chess game. Pet. 21, 22 (citing Ex. 1003). Petitioner asserts that, in
`creating the postcard, the first player creates a template defining game contents,
`stores the created template, and allows a second player to apply the template to a
`predetermined area. Pet. 22. In this way, Petitioner asserts that correspondence
`chess is evidence that the “claimed process is a well-known mental process and
`method of organizing human activity – and is, therefore, abstract.” Id. at 23.
`Considering Petitioner’s assertions, we are persuaded that, on this record,
`Petitioner has established sufficiently that “creating and applying a template” is an
`abstract idea. The claims in Planet Bingo recite storing a player’s preferred sets of
`bingo numbers, and playing that set, while simultaneously tracking the player’s
`sets, tracking player payments, and verifying winning numbers. Planet Bingo, 576
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`Fed. App’x at 1006. The preferred set of bingo numbers can be considered a
`template of game elements, which is then applied for future game play.
`Furthermore, in Planet Bingo, the claims were found to be directed to an abstract
`idea, because they consisted of steps that could be performed mentally or carried
`out with pen and paper. Id. In much the same way, A Guide to Correspondence
`Chess in Wales describes a mentally-performed or “pen and paper” system of using
`templates in gameplay. Pet. 22, 23. Hence, we are persuaded by Petitioner that the
`steps of the ’594 patent can be performed mentally or via pen and paper and are,
`thus, an abstract idea. See also Smith, 815 F.3d at 819 (determining that claims
`describing a set of rules for a game were drawn to an abstract idea).
`In light of the aforementioned assertions and evidence of record, we are
`persuaded that the claims of the ’594 patent are directed to an abstract idea.
`3. Whether the Claims Contain an “Inventive Concept”
`We next turn to second step of the Alice and Mayo framework. Here, we
`consider the elements of the claims “individually and ‘as an ordered combination’”
`to determine whether the additional elements “‘transform the nature of the claim’
`into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
`Ct. at 1291, 1297). In general, Petitioner asserts that the claims of ’594 patent
`provide no inventive concept, because “its central advance is its suggestion to
`apply the concept of creating and applying a template on generic computer
`technology.” Pet. 29. In other words, Petitioner asserts that beyond the abstract
`idea, the claims recite only generic computer components including a “computer,”
`“server,” or “hardware processor,” “storage unit,” “memory device.” Pet. 30
`(citing Ex. 1001, Claim 12, 2:12–13, 5:19–20). Further, Petitioner argues that
`“neither the claim language nor the specification provides any insight into how the
`claimed creation and application of a template is performed on a computer.” Id. at
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`32. In other words, Petitioner asserts that the steps of the ’594 patent are recited in
`a functional manner, performing rudimentary computer functions, such that steps
`are no more than being “executed on a computer.” Id. at 33. Patent Owner makes
`several arguments in response, including asserting the deficiency of the Petition,
`and arguing that the claimed use of templates is unconventional. On this record,
`we are persuaded by Petitioner.
`First, Patent Owner asserts that the Petition is deficient, because it fails to
`adequately address all of the elements of the claims both individually, and as an
`ordered combination. Prelim. Resp. 5–9. For example, Patent Owner argues that
`Petitioner focused on representative claim 12 alone, and did not consider
`independent claim 11’s additional limitation of “when the template is applied, the
`processing unit moves the game contents arranged at the first positions within the
`game space to second positions of the game contents defined by the template.” Id.
`at 14, 15. We have evaluated the arguments and evidence set forth in the Petition,
`and disagree with Patent Owner on this point. We are persuaded that Petitioner
`addressed sufficiently the elements of the claim as an ordered combination, and
`further addressed adequately the specific limitations of claim 11, in that Petitioner
`specifically addresses applying the template. See Pet. 32, 33. In particular,
`Petitioner asserts that independent claims 11 and 12 fail to provide an inventive
`concept, because they recite only “creating a template” and “applying the
`template” based on a “command by a game player.” Pet. 32, 33. Petitioner asserts
`that these claim elements “provide no insight into how the claimed computer will
`execute the command,” and are merely “rudimentary computer functions.” Id. We
`view Petitioner’s discussion of “applying the template” as also addressing claim
`11’s recitation of the steps taken when the template is applied, in that applying a
`template would appear to reasonably encompass movement of game contents.
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`Hence, we are persuaded that Petitioner has considered sufficiently the template
`applying step of claim 11, and has also addressed adequately the elements of the
`claim as an ordered combination.
`Petitioner further addresses the dependent claims, and argues that the
`dependent claims similarly do not provide an inventive concept, because they are
`variations of the independent claims, add nothing more than extra-solution activity,
`or describe a concept applied with generic and well-known technology. Id. at 33–
`37. For example, Petitioner discusses that claims 2 and 3 add a multi-player
`environment where a player may apply another player’s stored template, claim 4
`adds obtaining a template from a different computer, claims 5–7 provide rules for
`when a template is applied to a predetermined area that does not match the size or
`game elements of the template, claim 9 adds storing a template based on a
`combination of more than one template, and claims 13–20 add elements directed to
`how a template replaces a predetermined area, storing one or more templates, and
`storing templates in a server. Id.
`On a general level, Patent Owner further argues that the Petition is deficient
`because Petitioner only summarily alleges that individual limitations are generic,
`and fails to provide any evidence that the claims employ only conventional
`components. Prelim. Resp. 11–13 (citing Berkheimer v. HP Inc., 881 F.3d 1360
`(Fed. Cir. 2018)). We disagree that no such evidence is provided, and are
`persuaded by Petitioner’s contentions that the additional computer elements
`presented in the claims, including a computer, server, hardware processor, storage
`unit, and memory device, are generic. Pet. 29–32. As noted by Petitioner, the ’594
`patent itself recites the claimed computer elements in a generic manner. Pet. 29,
`30 (citing Ex. 1001, 2:12–13, 4:64–5:4, 5:19–20). For example, the ’594 patent
`recites:
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`The game system 1 includes at least one portable device 2 and a
`server 3. The portable device 2 and the server 3 are connected to each
`other via a communication network, and are connected to each other,
`for example, via a base station 4, a mobile communication network 5,
`a gateway 6, and the Internet 7. A program to be executed by the
`portable device 2 (e.g., a game program) and a program to be executed
`by the server 3 (e.g., a game control program) communicate with each
`other by using a communication protocol such as a Hypertext Transfer
`Protocol (HTTP).
`Ex. 1001, 4:43–52. Portable device 2 is disclosed as possibly being any of “a
`mobile phone (a so-called ‘feature phone’), a personal digital assistant (PDA),
`portable game machine, tablet device, table personal computer (PC), a notebook
`PC, etc., as long as the present invention is applicable thereto.” Ex. 1001, 4:66–
`5:4. The laundry list of possibilities encompassing almost every conceivable
`computing device, as well as the addition of “etc.” in the last sentence, indicates
`that the claimed computing elements are generic. The communication unit, storage
`unit, operation unit, display unit, and processing unit are described in a similarly
`generic manner. See Ex. 1001, 5:5–6:26. Furthermore, Petitioner cites numerous
`cases to further support its assertions that certain computer components are
`generic. Pet. 30–32. On the record before us, we agree with Petitioner that the
`Petition provides adequate evidentiary and case law support for its assertions that
`the recited additional computer element are generic.
`Patent Owner further asserts that the ’594 patent identifies a specific
`complication arising in computer games, namely, a game becoming monotonous
`due to increased complexity, and proposes an unconventional concept of templates
`to solve the problem. Prelim. Resp. 12, 13. Hence, Patent Owner asserts that the
`templates themselves are unconventional, and that Petitioner has provided no
`evidence to rebut the specification’s statements regarding the unconventional use
`of templates. Prelim. Resp. 13; PO Sur-Reply 3, 4. On the current record, we
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`disagree. As an initial matter, we note that “monotony” of game play appears to be
`a mental or business problem, and not a technical one. Indeed, as set forth in the
`Petition with respect to Alice/Mayo step one, Planet Bingo and A Guide to
`Correspondence Chess in Wales are evidentiary and analytical support for that
`proposition. Pet. 21, 22. Furthermore, by showing the prior use of templates in a
`game space, Planet Bingo and A Guide to Correspondence Chess in Wales are
`evidentiary and analytical support for the proposition that applying templates in a
`game space is conventional. Of course, during trial, Patent Owner will have the
`opportunity to submit evidence to the contrary on this point.
`Additionally, Patent Owner’s assertions regarding the unconventionality of
`applying templates is somewhat misplaced, in that part two of the Alice and Mayo
`analysis considers whether elements additional to what a claim is “directed to,”
`whether “individually and ‘as an ordered combination’. . . ‘transform the nature of
`the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
`Mayo, 132 S. Ct. at 1291, 1297) (emphasis added). Here, as the claims are directed
`to “creating and applying a template,” we are permitted to only consider the
`additional elements beyond “creating and applying a template,” which include a
`processing unit, a storage unit, a computer, a device, a server, a communication
`unit, and tables. To that end, these additional elements are similar to those found
`in Planet Bingo as being insufficient to transform the nature of the claim into a
`patent-eligible application. Planet Bingo, 576 Fed. App’x at 1008 (the claims
`recite “‘a computer with a central processing unit,’ ‘a memory,’ ‘an input and
`output terminal,’ ‘a printer,’ in some cases ‘a video screen,’ and ‘a program . . .
`enabling’ the steps of managing a game of bingo”).
`Finally, Patent Owner argues that Petitioner has failed to explicitly address
`every limitation of the independent and dependent claims. Prelim. Resp. 2–24.
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`Patent Owner asserts that Petitioner has focused on representative independent
`claim 12 alone, and failed to address sufficiently other independent claims and
`their differing claim elements. PO Sur-Reply 4, 5. As an example, Patent Owner
`notes that claim 12 requires “storing the created template,” while claim 8 recites
`“the computer stores positions of game contents arranged within the predetermined
`area, as the template.” Id. at 7. Patent Owner also asserts that the dependent
`claims are given an inadequate cursory analysis and, in the case of claim 18, no
`analysis at all. Id. at 19–24.
`On this record, we are persuaded that Petitioner’s showing is adequate.
`Although we acknowledge that Patent Owner has identified literal words in the
`challenged claims that were not addressed expressly by Petitioner, we are
`persuaded that the words identified are not of such a character so as to provide
`meaningful distinctions from the limitations addressed more thoroughly by
`Petitioner. For example, while Patent Owner identifies “storing” as a limitation
`not expressly addressed, we are persuaded that Petitioner’s analysis of a generic
`“storage unit” and “memory device” (Pet. 30 (citing Ex. 1001, 2:12–13, 5:19–20))
`adequately accounts for other “storing” limitations, even if Petitioner did not
`expressly use the word “storing.” The same is true for other alleged distinctions
`identified by Patent Owner, for example, that “applying the template” does not
`account for “when the template is applied,” especially where all the “when the
`template is applied” limitations require is that game elements are placed as
`intended when “applying the template.” PO Sur-Reply 3, 5.
`We acknowledge that the Petition does not appear to address directly
`dependent claim 18. Having said that, the Petition repeatedly uses the plural term
`“claims” in its step two Alice/Mayo analysis. See e.g., Pet. 29 (“The claims of the
`’594 patent recite only conventional and functional components incidental to
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`implementing the abstract idea of creating and applying a template.”) (emphasis
`added). Furthermore, on a substantive basis, we discern no meaningful distinction
`between the subject matter of claim 18 and that of representative claim 12.
`Specifically, both claims 12 and 18 require selecting a template based on a
`command by the game player and applying the template to a predetermined area.
`See Ex. 1001, 28:11–25, 28:49–53. Hence, although the Petition does not
`explicitly set forth a separate analysis of claim 18, we are persuaded that the
`Petition adequately addresses the subject matter of claim 18, through its analysis of
`claim 12. See Pet. 32, 33. Of course, Patent Owner may argue to the contrary, and
`submit supporting evidence, during trial.
`On April 24, 2018, the Supreme Court held that a final written decision
`under 35 U.S.C. § 318(a) must decide the patentability of all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24,
`2018). Although SAS addressed the statutory section for final written decisions in
`inter partes reviews, the corresponding section for post-grant reviews, 35 U.S.C. §
`328(a), uses essentially identical language, so we interpret it the same way. See
`Powerex Corp. v. Reliant Energy Servs., Inc., 551 U.S. 224, 232 (2007) (stating
`that “identical words and phrases within the same statute should normally be given
`the same meaning”). After considering the evidence and arguments presented in
`the Petition, the Preliminary Response, the Reply, and the Sur-Reply, we determine
`that Petitioner has demonstrated that it is more likely than not that claims 1–20 of
`the ’594 patent are unpatentable.
`
`Conclusion
`C.
`On this record, we determine that the Petition demonstrates that it is more
`likely than not that Petitioner would prevail in showing that claims 1–20 are
`
`15
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`PGR2018-00008
`Patent 9,597,594 B2
`
`unpatentable. Nothing in this decision should be construed as a final finding or
`determination with respect to any issue or claim.
`
`III. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is:
`ORDERED that, pursuant to 35 U.S.C. § 324, a post-grant review is hereby
`instituted for claims 1–20 of the ’594 patent with respect to all grounds set forth in
`the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 324(a), a post-grant
`review of the ʼ594 patent shall commence on the entry date of this Order, and
`pursuant to 35 U.S.C. § 324(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`institution of a trial.
`
`
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`PGR2018-00008
`Patent 9,597,594 B2
`
`For PETITIONER:
`
`Jennifer R. Bush
`Michael J. Sacksteder
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`Phillip Citroen
`Paul Hastings LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
`PH-GREE-PGR@paulhastings.com
`
`
`17
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`