UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00008
`U.S. Patent No. 9,597,594
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`
`___________________________________
`
`Case: PGR2018-00008
`U.S. Patent No. 9,597,594
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Introduction. ................................................................................................... 1
`I.
`II. The ’594 Patent. .............................................................................................. 2
`III. The Review Should Be Terminated Under § 325(d). ..................................... 8
`IV. The Alleged Ground of Invalidity. ............................................................... 12
`V. The Petition Fails to Prove Any Claim is Ineligible Under § 101. .............. 13
`1. Petitioner’s pure speculation as to the Examiner’s state of mind is
`improper and, in any case, wrong. ............................................................. 14
`A. Legal Standard for Invalidity Under § 101. .................................................. 15
`B. The Petition Fails to Meet its Burden Under Alice and Berkheimer. ........... 16
`1. Claim 12 is not representative of all claims of the ’594 patent. ................. 17
`2. Petitioner fails to analyze—or even mention—all of the limitations of
`claim 12. ..................................................................................................... 19
`3. The petition paraphrases the dependent claims and provides no actual
`analysis. ...................................................................................................... 21
`C. The Claims are Subject-Matter Eligible. ...................................................... 22
`1. “Step One” of Alice. ................................................................................... 23
`2. The claimed invention is not human-performable nor does it automate a
`manually-achievable purpose. .................................................................... 24
`3. Step Two of Alice: the claims recite the requisite “inventive concept.” .... 40
`VI. Conclusion. ................................................................................................... 48
`
`
`
`
`i
`
`
`
`
`Exhibit
`No.
`2001
`
`2002
`
`2003
`2004
`2005
`
`2006
`2007
`2008
`2009
`2010
`2011
`
`Patent Owner’s Exhibit List
`
`Exhibit Description
`
`“Formulating a Subject Matter Eligibility Rejection and Evaluating the
`Applicant’s Response to a Subject Matter Eligibility” (May 4, 2016), available
`at https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-
`memo.pdf
`“July 2015 Update Appendix 1: Examples” (July 1, 2015), available at
`https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-app1.pdf
`Biography of Steve D. Moore
`Declaration of David Crane
`April 26, 2018 “Guidance on the impact of SAS on AIA trial proceedings,”
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial
`File Wrapper for U.S. Application No. 15/393,646
`File Wrapper for U.S. Application No. 15/636,847
`File Wrapper for U.S. Application No. 15/636,925
`File Wrapper for U.S. Application No. 15/636,964
`File Wrapper for U.S. Application No. 15/638,639
`U.S. Patent No. 6,398,646
`
`
`
`ii
`
`
`
`I.
`
`Introduction.
`The challenged claims are patentable. In all five pending continuation
`
`applications claiming priority to the ’594 patent, the same examiner who allowed
`
`the ’594 patent commented that the pending claims were specifically analyzed
`
`under § 101 and the Office’s May 2016 guidance—and found the claims both were
`
`not drawn to an abstract idea, and were not patentably distinct from the ’594
`
`patent’s challenged claims. Pursuant to § 325(d), the Board should therefore
`
`terminate this review because the same issue of patentability under § 101 involving
`
`the ’594 patent has already been considered and similarly patent-eligible claims
`
`were allowed.
`
`Moreover, in this proceeding, Petitioner’s alleged ground of invalidity under
`
`§ 101 is nothing more than attorney argument unsupported by any relevant,
`
`credible evidence. Petitioner’s ineligibility argument ignores the actual language
`
`of the challenged claims and fails to provide any relevant evidence of what was
`
`well-understood, routine, and conventional in the art. Not only does Petitioner fail
`
`to meet its burden, but Petitioner’s challenge also fails on its merits. The invention
`
`disclosed in the ’594 patent technologically improves on graphical user-interfaces
`
`in the city-building game art, necessarily rooted in computer technology and drawn
`
`towards online gaming where the claimed hardware and software components
`
`interact to deliver an immersive virtual gaming environment. The problems the
`
`1
`
`
`
`’594 patent solves arise only in this specific context. The ’594 patent addresses
`
`these problems in a concrete manner only applicable to user-interfaces in city-
`
`building games. The Board should deny Petitioner’s request and confirm the
`
`validity of the challenged claims.
`
`II. The ’594 Patent.
`The ’594 patent generally discloses systems and methods for controlling
`
`“‘city-building games’ [] wherein a player builds a city within a virtual space,”
`
`also referred to as a game space. Ex. 1001, 1:27-30. “In city building games,
`
`players can build various facilities (such as houses, streets, ports, train stations,
`
`airports, castles, training facilities, etc.) on desired positions and create a city after
`
`their liking.” Ex. 1001, 1:30-34. The games have a competitive element where “a
`
`city built by one player is attacked by a different player, and the city (arrangement
`
`of items such as protective walls, buildings that are subject to an attack, protecting
`
`soldiers, weapons, etc.) is one of factors [sic] for deciding the winning and losing,
`
`or superiority and inferiority.” Ex. 1001, 1:44-50.
`
`2
`
`
`
`Ex. 1001, Fig. 3A.
`
`
`
`The ’594 patent identifies and addresses several problems known in the city-
`
`building game art that are unique to these particular types of games played on
`
`gaming devices. According to the ’594 patent, “since the items (game contents) of
`
`a city of a player increase as the city develops, it is very complicated for a player to
`
`change positions, types, levels, etc., of individual items.” Ex. 1001, 1:50-53. This
`
`complexity makes it “hard to understand what kind of effect changing a city would
`
`have against an attack from a different player.” Ex. 1001, 1:53-55. Consequently,
`
`“many players have limited themselves to change only certain kinds of items, such
`
`as soldiers and weapons, for which changing positions, types, levels, etc., is easy.”
`
`Ex. 1001, 1:55-58. Because of these self-imposed limits, “as the game progresses,
`
`3
`
`
`
`it becomes monotonous, and players might become bored with it.” Ex. 1001, 1:58-
`
`60.
`
` The ’594 patent solves these and other problems in order to “improve the
`
`usability of city building games and continuously attract players to the game.” Ex.
`
`1001, 1:63-65. According to the ‘594 patent, the invention makes it “possible to
`
`improve the usability of city building games and continuously attract players to the
`
`game by making game contents and the arrangement of the game contents
`
`changeable by using templates.” Ex. 1001, 3:30-34.
`
`Claim 1, for example, recites:
`
`“1. A method for controlling a computer that is provided with a
`storage unit configured to store game contents arranged within a game
`space, first positions of the game contents within the game space, and
`a template defining second positions of one or more of the game
`contents, and that progresses a game by arranging the game contents
`within the game space based on a command by a player, the method
`comprising:
`when the template is applied to a predetermined area within the game
`space based on the command by the player, moving, by the computer,
`the game contents arranged at the first positions within the game
`space to the second positions of the game contents defined by the
`template within the predetermined area.”
`Ex. 1001, 26:33-46. An example of the creation and application of a template
`
`in the game space is depicted in Figures 3A-3E.
`
`4
`
`
`
`
`
`Ex. 1001, Figs 3A-3E.
`
`
`
`According to the ’594 patent, the device storage unit may store “a facility
`
`table (FIG. 2B) for managing facilities arranged within the game space, a facility-
`
`type table (FIG. 2C) for managing types of the facilities, [and] a template table
`
`(FIG. 2D) for managing templates.” Ex. 1001, 5:30-34. Facilities—i.e. buildings,
`
`structures, walls, and towers owned by or available to the player—are one example
`
`of the claimed “game contents.” Ex. 1001, 1:31-32 (“In city building games,
`
`5
`
`
`
`players can build various facilities”); 1:50-51 (“the items (game contents) of a city
`
`of a player increase as the city develops”). The ’594 patent explains that “for a
`
`predetermined area within the game space, the player can also create a template
`
`stipulating types and positions of facilities based on the types and positions of
`
`facilities arranged within the area.” Ex. 1001, 4:29-32. “When a template is
`
`applied, facilities arranged within the game space are automatically changed to the
`
`facilities defined in the template, and they are automatically moved to the defined
`
`positions.” Ex. 1001, 4:34-38; compare Ex. 1001, claim 1 (“moving, by the
`
`computer, the game contents arranged at the first positions within the game space
`
`to the second positions of the game contents defined by the template”).
`
`
`
`The ’594 patent explains that the application of a template to an area
`
`intelligently accounts for situations where the number and type of a player’s
`
`facilities do not directly correspond to the configuration of the template. Ex. 1001,
`
`2:40-58. When more facilities are available to the player than called for by a
`
`template, “of the facilities arranged within the game space 420, those facilities with
`
`the smallest moving distance (e.g., Manhattan distance) to positions of facilities
`
`defined by the template 410, are moved to the positions of facilities.” Ex. 1001,
`
`7:60-63. However, according to the ’594 patent a “player may also designate
`
`facilities which are to be moved, or an area containing facilities which are to be
`
`moved. Further, the player may also in advance designate facilities which are not
`
`6
`
`
`
`to be moved, or an area containing facilities which are not to be moved.” Ex.
`
`1001, 8:2-6.
`
`
`
`In situations where the player has less facilities available than required by a
`
`template, “positions on which no facilities are arranged among the positions of
`
`facilities defined by the template 410, are illustrated in a condition where the
`
`facility type is discernible (e.g., “white circle” 444 and “white triangle” 445).” Ex.
`
`1001, 8:25-29. In those instances, according to the ’549 patent “it is also possible
`
`to present the player with facilities of the same type or with facilities of a similar
`
`type as proposals.” Ex. 1001, 8:30-32. In addition, the ’594 patent provides an
`
`option for a player to “purchase facilities for positions where no facility has been
`
`arranged, or to acquire the facilities, for example, by trading with a different player
`
`in a multi-player environment.” Ex. 1001, 8:33-37.
`
`
`
`The ’594 patent discloses that template creation may be manual or
`
`automatic. Ex. 1001, 8:42-44, 8:53-55. For example, a server may “create
`
`templates based on facilities the player possesses, facilities selected by the player,
`
`an area and/or an objective of a template.” Ex. 1001, 8:55-57. With respect to
`
`templates based on objectives, the ’594 patent explains:
`
`“The objective of a template is, for instance, to realize a city that
`offers strong protection against soldiers with bows and arrows, to
`realize a city that work [sic] effectively for protection against attacks
`by giants, to strengthen the protection against air attacks, etc. In doing
`
`7
`
`
`
`so, it becomes easy for the player to create templates consistent with
`objectives.”
`Ex. 1001, 8:57-63. The ’594 patent states that “by making the arrangement of
`
`facilities changeable by using templates, the usability of city building games is
`
`improved, and it becomes possible to continuously attract players to the game.”
`
`Ex. 1001, 15:49-52. The ’594 patent is not limited to a single-player experience.
`
`The ’594 patent “can also be applied to a multi-player environment wherein
`
`multiple players progress the game together.” Ex. 1001, 16:27-29.
`
`III. The Review Should Be Terminated Under § 325(d).
`There are five pending continuation applications that claim priority to the
`
`same application that issued as the ’594 patent. See generally Exs. 2006-2010.
`
`One of those applications was allowed on May 9, 2018—eight days after the Board
`
`chose to institute review in this proceeding. Ex. 2006 at 514. In each application,
`
`the same Examiner that allowed the ’594 patent issued a non-statutory double
`
`patenting rejection in view of the challenged claims of the ’594 patent, stating that
`
`the pending claims were not patentably distinct. Ex. 2006 at 207-219; Ex. 2007 at
`
`345-359; Ex. 2008 at 269-280; Ex. 2009 at 388-402; Ex. 2010 at 342-354. And in
`
`each application, the Examiner entered a Comment noting the claims were valid
`
`under § 101 because they were not drawn to an abstract idea. Ex. 2006 at 410; Ex.
`
`2007 at 270; Ex. 2008 at 269; Ex. 2009 at 388; Ex. 2010 at 342. According to the
`
`Examiner:
`
`8
`
`
`
`“1. Examiner analyzed the claims using the May 2016 Update to
`Subject Matter Eligibility.
`2. Examiner determined that the claimed invention is necessarily
`rooted in computer technology and thus not drawn to an abstract idea.
`For example, the claimed invention is drawn towards online gaming
`where the claimed hardware and software components interact to
`deliver an immersive virtual gaming environment. The claimed
`invention sets forth requirements for how to operate these
`interconnected components online, and over the Internet, to remote
`users. Thus, the claimed invention aligns with the facts of the Federal
`Circuit decisions in at least DDR Holdings, Enfish and Core Wireless.
`Hence, Examiner finds that the claims are patent-eligible under 35
`USC § 101.”
`See, e.g., Ex. 2009 at 388 (emphasis in original, footnote omitted). While Patent
`
`Owner does not admit that the claims are patentably indistinct for purposes of
`
`novelty and non-obviousness, the claims of all the patents are patent-eligible, as
`
`the Examiner correctly found.
`
`
`
`35 U.S.C. § 325(d) states:
`
`“[D]uring the pendency of any post-grant review under this chapter, if
`another proceeding or matter involving the patent is before the Office,
`the Director may determine the manner in which the post-grant review
`or other proceeding or matter may proceed, including providing for
`the stay, transfer, consolidation, or termination of any such matter or
`proceeding.”
`
`9
`
`
`
`A previous panel of the Board has summarized the considerations in determining
`
`how to exercise discretion under § 325(d). See Hospira, Inc. v. Genentech, Inc.,
`
`IPR2017-00739 (PTAB July 27, 2017) (Paper 16), slip op. 18 (informative).
`
`Those considerations include the need to avoid harassment of patent owners, the
`
`interests of conserving the resources of the Office, and granting patent owners
`
`repose on issues that have been considered previously. Id.
`
`
`
`Patent Owner respectfully requests the Board exercise its discretion under §
`
`325(d) and terminate this review. Petitioner’s pattern of activity before the Office
`
`raises at least the appearance of harassment—of the 43 petitions for post-grant
`
`review filed in FY2018, Petitioner has filed 14, all against Patent Owner.1 In each
`
`of those proceedings, Petitioner raises a boilerplate challenge to validity under §
`
`101, with additional copy-paste challenges under § 112 in every proceeding except
`
`for two trials. Petitioner presents no expert testimony—and in most of the
`
`proceedings, no evidence at all—to support any of its challenges.2
`
`1 See generally PGR2018-00008, -00029, -00036, -00037, -00039, -00047, -00050,
`
`-00055, -00060, -00061, -00064, -00066, -00070, and -00071.
`
`2 To be clear, Patent Owner does not allege that Petitioner is acting in bad faith.
`
`However, the similarity across the fourteen petitions, the lack of supporting
`
`evidence, and the failure to raise any prior-art based grounds of alleged invalidity
`
`strongly support an inference that Petitioner’s actions are motivated by the
`
`10
`
`
`
`
`
`Furthermore, the limited resources of the Office should not be wasted here
`
`because the issue of § 101 validity has already been considered by the Office, and
`
`Patent Owner should be granted repose on this issue. As explained above, the
`
`Examiner has considered the issue of § 101 validity and determined the claims
`
`were not drawn to an abstract idea at least five times during prosecution of patents
`
`in the ’594 patent family. Ex. 2006 at 410; Ex. 2007 at 270; Ex. 2008 at 269; Ex.
`
`2009 at 388; Ex. 2010 at 342. In all of those applications, the Examiner
`
`determined the pending claims were not patentably distinct from those of the ’594
`
`patent. Ex. 2006 at 207-219; Ex. 2007 at 345-359; Ex. 2008 at 269-280; Ex. 2009
`
`at 388-402; Ex. 2010 at 342-354. And in all of those applications, the Examiner
`
`properly applied the latest guidance from the Office on the § 101 analysis. See Ex.
`
`1006.
`
`If pending claims not patentably distinct from those of the ’594 patent are
`
`valid under § 101, then the challenged claims of the ’594 patent are valid under
`
`§ 101. See, e.g., Cleveland Clinic Found. v. True Health Diagnostics LLC, 859
`
`F.3d 1352, 1360 (Fed. Cir. 2017) (“Where, as here, the claims ‘are substantially
`
`similar and linked to the same’ law of nature, analyzing representative claims is
`
`proper.”), citing Content Extraction & Transmission LLC v. Wells Fargo Bank,
`
`strategic business purpose of harassing Patent Owner rather than seeking
`
`adjudication on the individual merits of any single proceeding.
`
`11
`
`
`
`N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014). The validity of the ’594 patent family
`
`under § 101 is thus well-settled, and Petitioner’s attempt to revisit this issue should
`
`be rejected because the Examiner concluded for at least the fifth time that the ’594
`
`patent family’s claims were not drawn to an abstract idea.
`
`For the reasons described above, Patent Owner respectfully requests that the
`
`Board exercise its discretion under § 325(d) and deny the petition.
`
`IV. The Alleged Ground of Invalidity.
`The petition (“Pet.”) raises one alleged ground of invalidity, asserting that
`
`claims 1-20 of the ’594 patent are invalid under § 101. Pet. 16-37. For the reasons
`
`explained below, the petition should be denied in its entirety. Petitioner has
`
`provided absolutely no relevant testimonial or extrinsic evidence in support of the
`
`challenge raised in the petition—and mere attorney argument is insufficient for
`
`Petitioner to carry its burden. See, e.g., Suffolk Techs., LLC v. AOL Inc., 752 F.3d
`
`1358, 1367 (Fed. Cir. 2014) (“Without expert testimony, however, Suffolk’s
`
`position is mere attorney argument. And here, those attorney arguments are
`
`insufficient to undermine the credible testimony from Google’s expert” as to a
`
`question of fact). As a result Petitioner has failed to show that it is more likely
`
`than not that any of the challenged claims are unpatentable. 35 U.S.C. § 324(a).
`
`Petitioner’s alleged ground of invalidity also fails on its merits because it fails to
`
`address all of the limitations of the claims, ignores the disclosure of the
`
`12
`
`
`
`specification of the ’594 patent, and fails to provide any evidence of what was
`
`well-understood, routine, and conventional. The ’594 patent is not drawn to an
`
`abstract idea—the claimed invention is necessarily rooted in computer city-
`
`building games. The Board should deny the petition.
`
`V. The Petition Fails to Prove Any Claim is Ineligible Under § 101.
`Petitioner’s assertion that the challenged claims of the ’594 patent are
`
`invalid under § 101 is wrong. Procedurally, Petitioner does not properly analyze—
`
`or in some instances even mention—all of the limitations recited by claims 1, 10,
`
`11, and 12, or those of the dependent claims. The petition cites no relevant
`
`evidence3, relying instead on attorney argument to support the claim that select
`
`claim elements are both abstract and routine, conventional, or well-understood
`
`functionality. Since the petition fails to meet its basic burden under the Alice § 101
`
`analysis, this ground should be rejected.
`
`The § 101 challenge also fails on the merits—the claims of the ’594 patent
`
`are not directed to an abstract idea; rather, as the testimony of Patent Owner’s
`
`expert discussed below demonstrates, the claims recite a specific application of an
`
`3 Petitioner relies on Exhibit 1003 for support, but for the reasons explained in
`
`more detail below this reference is irrelevant to the city-building game interface
`
`field of the ’594 patent, is not relied upon as prior art by Petitioner, and does not
`
`directly or indirectly analogize the invention claimed in the ’594 patent.
`
`13
`
`
`
`improved city-building game user-interface that was not routine, conventional, or
`
`well-understood. The problems to be solved and the claimed invention are
`
`necessarily rooted in computer technology and computer city-building games
`
`where game contents are arranged within a game space.
`
`The validity of the challenged claims should be confirmed.
`
`1. Petitioner’s pure speculation as to the Examiner’s state of mind is
`improper and, in any case, wrong.
`
`Petitioner claims that § 101 was not addressed during prosecution. Pet. 19.
`
`However, the application that issued as the ’594 patent was filed on December 30,
`
`2015—more than one year after the Alice decision. And Petitioner acknowledges
`
`“guidance [had been] provided to examiners prior to the allowance of the ’984
`
`application” on the application of § 101. Pet. 19. In spite of this, Petitioner
`
`speculates that the examiner failed to properly apply guidance issued by the
`
`U.S.P.T.O. or any of the intervening decisions of the Federal Circuit applying the
`
`Alice standard. Pet. 19-20.
`
`Petitioner’s musings do not amount to evidence that the examiner failed to
`
`properly determine whether the ’594 patent is patent-eligible. Moreover, the facts
`
`prove Petitioner wrong. In all five child applications claiming priority to the ’594
`
`patent, the Examiner found that the pending claims—not patentably distinct from
`
`the claims of the ’594 patent—were eligible and valid under § 101. Ex. 2006 at
`
`410; Ex. 2007 at 270; Ex. 2008 at 269; Ex. 2009 at 388; Ex. 2010 at 342. The
`
`14
`
`
`
`Examiner in each of these cases applied the May 2016 guidance from the Office on
`
`the application of § 101 and also specifically mentioned recent Federal Circuit
`
`cases—DDR Holdings, Enfish, and Core Wireless—as those cases issued.
`
`Compare Ex. 2006 at 410 (citing DDR Holdings and Enfish) with Ex. 2009 at 388
`
`(additionally citing Core Wireless). Petitioner’s speculative assertion that “had the
`
`examiner had guidance regarding these cases during the substantive prosecution of
`
`the ’984 application, the claims would have been rejected as lacking statutory
`
`subject matter” is wrong.
`
`A. Legal Standard for Invalidity Under § 101.
`
`A patent may be obtained for “any new and useful process, machine,
`
`manufacture, or composition of matter, or any new and useful improvement
`
`thereof.” 35 U.S.C. § 101. However, the Supreme Court has “held that this
`
`provision contains an important implicit exception: Laws of nature, natural
`
`phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347, 2354 (2014). The “concern that drives this exclusionary
`
`principle as one of pre-emption,” but “we tread carefully in construing this
`
`exclusionary principle lest it swallow all of patent law.” Id.
`
`Under the framework set forth in Alice, one must first “determine whether
`
`the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at
`
`2355. “If not, the claims pass muster under § 101.” Ultramercial, Inc. v. Hulu,
`
`15
`
`
`
`LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). If the claims are directed to a patent-
`
`ineligible concept, one must next “consider the elements of each 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.”
`
`Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
`
`Inc., 132 S. Ct. 1289, 1297 (2012)).
`
`Step two is an inquiry as to whether the claims add an inventive concept that
`
`is sufficient to ensure the patent amounts to more than a patent upon the concept
`
`itself. Alice, 134 S. Ct. at 2355. Claims reciting “well-understood, routine,
`
`conventional activity” in the field of art are insufficient to confer patentability to
`
`otherwise ineligible concepts. Mayo, 566 U.S. at 79. “The question of whether a
`
`claim element or combination of elements is well-understood, routine and
`
`conventional to a skilled artisan in the relevant field is a question of fact.”
`
`Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`
`B. The Petition Fails to Meet its Burden Under Alice and Berkheimer.
`
`To attempt to make its case, Petitioner distills claim 12 of the ’594 patent
`
`down to three verbs, claims those verbs were well-known at the time, and contends
`
`that the ’594 patent is invalid under § 101 on that basis alone. Pet. 20. This is not
`
`the analysis set forth in Alice. To meet its burden, the petition must (1)
`
`demonstrate the claims are directed to an abstract concept, (2) analyze the claim
`
`16
`
`
`
`limitations both individually and as an ordered combination, and (3) address the
`
`underlying questions of fact as to whether a claim element or combination of
`
`elements is well-understood, routine, and conventional to a skilled artisan. See
`
`Berkheimer, 881 F.3d at 1367-68. The petition fails on all three requirements.
`
`1. Claim 12 is not representative of all claims of the ’594 patent.
`
`As an initial matter, Petitioner alleges—and the Board initially agreed in its
`
`Decision to Institute—that claim 12 is “representative.” Pet. 10-11; Paper No. 15,
`
`at 3 (“Dec. to Inst.”). Patent Owner disagrees. Independent claims 1, 10, and 11,
`
`and the remaining dependent claims of the ’594 patent, recite unique limitations
`
`not found in claim 12 that separately bear on the question of patent eligibility.4 For
`
`example, independent claims 1 and 10 recite “moving, by the computer, the game
`
`contents arranged at the first positions within the game space to the second
`
`positions of the game contents defined by the template within the predetermined
`
`area.” Ex. 1001, 26:43-46; 27:56-59. Dependent claim 2 recites a “template
`
`related to the different player [that] is applied to a predetermined area within the
`
`game space based on the command by the player.” Ex. 1001, 26:49-51.
`
`Dependent claim 3 recites “game contents which are arranged within the game
`
`4 Claim 12 is patent-eligible, at least for the reasons set forth in Section V.C. The
`
`identification of particular claim limitations in the dependent claims herein
`
`demonstrates that claim 12 is not representative of all claims.
`
`17
`
`
`
`space and are related to the different player, and positions of the game contents
`
`related to the different player.” Ex. 1001, 26:57-60.
`
`Dependent claim 4 is directed to the “start of an event” and the use an event-
`
`specific template. Ex. 1001, 27:1-7. Dependent claims 5, 6, and 7 specifically
`
`recite limitations to address situations where a player’s game contents are fewer
`
`than and/or more than that which is required by a template. Ex. 1001, 27:8-21.
`
`Dependent claims 8 and 9 recite the storage of the game contents for a
`
`predetermined area at the time of template creation, either by a single or multiple
`
`players. Ex. 1001, 27:31-43.
`
`Similarly, dependent claims 13-20 each recite unique limitations not found
`
`in the independent claims. For instance, dependent claims 13-16 recite and address
`
`the relationship between the “predetermined area” where the template is applied to
`
`an “existing area” of the game space. Ex. 1001, 28:26-42. In dependent claims 17
`
`and 18, a “plurality of templates” are created, selected, and applied. Ex. 1001,
`
`28:43-53. And in dependent claims 19 and 20, templates may be registered with a
`
`server and game contents within a template are stored in tabular form. Ex. 1001,
`
`28:55-63.
`
`None of these unique limitations is found in claim 12, and they each
`
`separately bear on the issue of subject-matter eligibility as explained in more detail
`
`below. The petition ignores these limitations or fails to adequately address them,
`
`18
`
`
`
`and thus Petitioner fails to meet its burden—and the Board erred—by treating
`
`claim 12 as representative. Berkheimer, 881 F.3d at 1365-66. For at least this
`
`reason, the claims should be found patentable because the petition failed to address
`
`all of the limitations of the challenged claims of the ’594 patent.
`
`2. Petitioner fails to analyze—or even mention—all of the limitations of
`claim 12.
`
`Petitioner’s treatment of claim 12 is wholly defective. To meet the burden
`
`set forth by Alice, the petition must address all of the claim limitations of claim 12,
`
`both individually and as an ordered combination. See, e.g., OIP Techs., Inc. v.
`
`Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (“we must then consider
`
`the elements of each claim both individually and as an ordered combination”)
`
`(internal quotations and citation omitted). But Petitioner fails to do so. Claim 12
`
`is reproduced below, with annotations to particular elements for reference, and
`
`with limitations not addressed in full by Petitioner in italics (see Pet. 20-28):
`
`12. [preamble] A device in communication with a server,
`comprising:
`[12a] a memory device storing game software instructions; and
`[12b] one or more hardware processors configured to execute
`the game software instructions perform operations including:
`[12c] storing first positions of game contents;
`[12d] 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,
`
`19
`
`
`
`[12e] storing the created template in the memory device, and
`[12f] applying the template to a predetermined area within the
`game space based on a template application command by the game
`player.
`Ex. 1001, 28:11-25 (emphasis added).
`
`Nowhere does Petitioner analyze any of these limitations—either
`
`individually or as an ordered combination—in their entirety. For example, element
`
`[12d] recites “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.” Ex. 1001, 28:17-21. The claim recites that
`
`the “template” defines both “game contents” and their “second positions,”
`
`providing limits to the structure and composition of the template. Id. The claim
`
`further limits the template to the arrangement of those contents in a game space
`
`based on a specific command provided by the user. Id. But the petition fails to
`
`analyze this limitation in its entirety—or even a substantial portion thereof. The
`
`petition simply discusses “creating a template” five times in the context of its
`
`purported analysis under § 101. Pet. 20, 21, 22, 24, 26.
`
`The petition fails to explain or even mention why selecting “applying the
`
`template to a predetermined area within the game space based on a template
`
`application command b
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
