Supercell Oy v. GREE, Inc.
`PGR2018-00036
`U.S. Patent No. 9,662,580
`
`June 20, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1016
`
`
`PGR2018-00036
`U.S. Patent No. 9,662,580
`
`June 20, 2019
`
`Jennifer Bush
`Michael Sacksteder
`Geoffrey Miller
`Attorneys for Petitioner
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Exhibit 1016
`
`
`
`PGR2018-00036
`U.S. Patent No. 9,662,580 (“’580 patent”)
`
` “[W]e are persuaded by Supercell
`that the independent claims are
`directed to the basic concept of
`allocating rewards to video game
`players after satisfying a reward-
`providing condition.”
`Decision Granting Institution, 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`Exhibit 1016
`
`
`
`Petitioner arguments found persuasive by Board
`
`Claims are directed to an abstract idea
`
`Decision Granting Institution, p. 7-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`Exhibit 1016
`
`
`
`Petitioner arguments found persuasive by Board
`
`Claims contain no “inventive concept”
`
`Decision Granting Institution, p. 11-12.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`Exhibit 1016
`
`
`
`Step One: Claims are directed to an abstract idea
`
`The claims are directed on the
`abstract idea of:
`
`“Providing a reward to a video game
`player from a reward box if a reward
`condition is met”
`Reply, p 1.
`
`Ex. 1001, FIG. 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`Exhibit 1016
`
`
`
`Step One: Claims are directed to an abstract idea (cont.)
`
`1. A control method for a computer network,
`comprising:
`storing, by a memory for storing information
`related to a game in which a plurality of players
`can participate, information defining a plurality
`of groups to which said players belong, a reward
`providing condition, rewards, and reward box
`information for a plurality of reward boxes each
`associated exclusively with a respective one of
`said groups, as part of the information related to
`the game; and
`by an arithmetic processor, performing
`computation on the game, and displaying
`images of the game on terminal devices
`operated by the players
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`Ex. 1001, Claim 1, FIG. 6.
`
`Exhibit 1016
`
`
`
`Step One: Claims are directed
`to an abstract idea (cont.)
`
`. . .
`allocating at least one reward out of the
`rewards to at least one of the reward boxes,
`determining whether the reward providing
`condition is met based on match-up
`situations or match-up results between the
`players and first game characters in the
`game, and
`displaying, on the terminal devices, a screen
`for providing the reward allocated to at
`least part of one of the reward boxes to at
`least one player in the group associated with
`the one of the reward boxes based on the
`determination results.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`Ex. 1001, Claim 1, FIG. 3.
`
`Exhibit 1016
`
`
`
`Step One: Claims are directed to an abstract idea
`The ‘580 patent is abstract because the claims:
`
`(1) Recite only result-oriented functions without a non-abstract means of
`achieving those results;
`
`(2) Recites game rules, which are no more than a method of organizing
`human activity; and
`
`(3) Provides no improvement in computer functionality.
`
`Petition, p. 35-42; Reply, p. 1-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`Exhibit 1016
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`
`1. A control method for a computer network,
`comprising:
`storing, by a memory for storing information
`related to a game in which a plurality of players
`can participate, information defining a plurality
`of groups to which said players belong, a reward
`providing condition, rewards, and reward box
`information for a plurality of reward boxes each
`associated exclusively with a respective one of
`said groups, as part of the information related to
`the game; and
`by an arithmetic processor, performing
`computation on the game, and displaying
`images of the game on terminal devices
`operated by the players
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`9
`
`Ex. 1001, Claim 1 & FIG. 6.
`
`Exhibit 1016
`
`
`
`(1) The Claims Recite Only
`Result-Oriented Functions
`
`. . .
`allocating at least one reward out of the
`rewards to at least one of the reward boxes,
`determining whether the reward providing
`condition is met based on match-up
`situations or match-up results between the
`players and first game characters in the
`game, and
`displaying, on the terminal devices, a screen
`for providing the reward allocated to at
`least part of one of the reward boxes to at
`least one player in the group associated with
`the one of the reward boxes based on the
`determination results.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`Ex. 1001, Claim 1, FIG. 3.
`
`Exhibit 1016
`
`
`
`(1) The Claims Recite Only Result-Oriented Functions
`How?
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`Ex. 1001, FIGs. 1 & 2.
`
`Exhibit 1016
`
`
`
`(2) The Claims Broadly Recite a Rule for Playing a Game
`Prong 1: Rules for Conducting a Game are Abstract
`
`Certain methods of organizing human activity:
`
`“Applicants' claims, directed to rules for conducting a wagering
`game” are abstract. In re Smith, 815 F.3d 816, 818 (Fed Cir. 2016)
`
`Ex. 1008, 2019 Revised Patent Subject Matter Eligibility Guidance, p. 10 n.13.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`Exhibit 1016
`
`
`
`(2) The Claims Broadly Recite a Rule for Playing a Game
`Prong 1: Rules for Conducting a Game are Abstract
`
`1. Allocate Reward
`2. Determine If Condition Met
`
`3. Then Provide Reward
`
`. . .
`allocating at least one reward out of the
`rewards to at least one of the reward boxes,
`determining whether the reward providing
`condition is met based on match-up
`situations or match-up results between the
`players and first game characters in the
`game, and
`displaying, on the terminal devices, a screen
`for providing the reward allocated to at
`least part of one of the reward boxes to at
`least one player in the group associated with
`the one of the reward boxes based on the
`determination results.
`
`Ex. 1001, Claim 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`Exhibit 1016
`
`
`
`(2) The Claims Broadly Recite a Rule
`for Playing a Game
`
`1. Allocate Reward
`
`2. Determine If Condition Met
`
`3. Then Provide Reward
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`Ex. 1001, Claim 1, FIG. 3.
`
`Exhibit 1016
`
`
`
`(2) The Claims Broadly Recite a Rule for Playing a Game
`Cf.
`A method for automatically animating lip synchronization and facial expression of three-
`dimensional characters comprising:
`
`obtaining a first set of rules that define output morph weight set stream as a function of
`phoneme sequence and time of said phoneme sequence;
`
`obtaining a timed data file of phonemes having a plurality of sub-sequences;
`
`generating an intermediate stream of output morph weight sets and a plurality of transition
`parameters between two adjacent morph weight sets by evaluating said plurality of sub-
`sequences against said first set of rules;
`
`generating a final stream of output morph weight sets at a desired frame rate from said
`intermediate stream of output morph weight sets and said plurality of transition parameters;
`and
`
`applying said final stream of output morph weight sets to a sequence of animated characters
`to produce lip synchronization and facial expression control of said animated characters.
`Petition, p. 33, 37-39.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`Exhibit 1016
`
`
`
`(2) The Claims Broadly Recite a Rule for Playing a Game
`Prong 1: Rules for Conducting a Game are Abstract
`
`PO and the ‘580 specification admit the recited rule preempts its use in all games:
`
`“it is possible to make wide and effective use of the invention
`disclosed herein for games in general (particularly including
`social game elements).” Ex. 1001 at 10:47-49.
`
`Sur-Reply, p. 7 (emphasis added).
`
`PO concedes claims recite nothing more than a broadly recited game rule
`on generic computer equipment:
`
`“the ‘580 claims recite a specific storage archetype with paired
`computer processing functionality that enables more flexible and
`nuanced reward-giving.”
`
`Sur-Reply, p. 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`Exhibit 1016
`
`
`
`(3) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`Desired result: “Unexpectedness” when providing rewards in video games.
`Ex. 1001, 1:40-53
`
`This problem is not technical in nature, but is instead directed at a mental
`or business problem. See Affinity Labs, 838 F.3d at 1262.
`
`Result
`Based
`
`Ex. 1001, FIG. 7; Reply, p. 5-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`Exhibit 1016
`
`
`
`(3) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`The technical components of the
`independent claims lack specific
`means or technology to carry out
`the recited functions:
`
`Ex. 1001, 4:63–64, Fig. 1; see also id.
`at 5:14–18; 6:1–3.
`
`Ex. 1001, FIG. 7; Reply, p. 5-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`Exhibit 1016
`
`
`
`(3) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`PO wrongly argues: “[T]he problems disclosed exist only in video game
`technology.”
`
`POR, p. 25.
`
`1. Wheel of Fortune (Ex. 1010)
`2. Let’s Make a Deal (Ex. 1011)
`3. Dungeons & Dragons (Ex. 2001, ¶32-42)
`
`PO bases its argument on long-rejected precedent: running a program
`described by the ‘580 patent . . . becomes specialized hardware specific to
`the purpose of the ‘580 patent.”
`
`POR, p. 26.
`M.P.E.P. § 2106, (citing Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785
`F.3d 616, 623 (Fed. Cir. 2015)).
`
`Reply, p. 9-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`Exhibit 1016
`
`
`
`(3) No Improvement in Computer Functionality
`Prong 2: No Practical Application
`
`PO’s expert makes no mention of an improvement in the functioning of a
`computer.
`
`See generally Ex. 2001; Reply, p. 9-10.
`
`PO’s caselaw is inapposite:
`• DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
`• Problems “specifically arising in the realm of computer technology.”
`• Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336-37 (Fed. Cir. 2016)
`• Recited a specific “four-step algorithm”—to carry out a “specific
`improvement to the way computers operate,” i.e., to store data in a
`database that “functions differently than [a] conventional database.”
`• Data Engine Techs. LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018), and
`• Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir.
`2018)
`• No improvement in UI
`
`Reply, p. 5-11 .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`Exhibit 1016
`
`
`
`Step Two: No Inventive concept
` The recited computer components are
`entirely generic and conventional,
`performing routine functions.
` PO admitted in prosecution that claims
`require nothing more than “known
`general-purpose computers.”
`Ex. 1002, p. 46.
`
`The “arithmetic processor,” is a
`conventional processor, “such as a CPU or
`MPU,” that performs the unremarkable
`functions of “accessing information related
`to the game, performing computation on
`the game, and displaying images of the
`game on terminal devices operated by the
`players.”
`Decision Granting Institution, p. 8-9.
`
`Ex. 1001, FIG. 1; Reply, p. 5-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`Exhibit 1016
`
`
`
`Step Two: No Inventive concept
`No “new source of type of information”
`
`The Patent Specification and PO’s expert admits concept of providing a reward
`to a player upon completion of a task, such as a battle, was known in social
`games:
`
`Reply, p. 12;
`Ex. 1001, 1:22-31;
`Ex. 1009, 26:21-23.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`Exhibit 1016
`
`
`
`Step Two: No Inventive concept
`
`The purported “advance” is not
`captured in the independent
`claims.
`
` There is no “unexpectedness”
`in the reward.
` “[E]xclusively associating” a
`reward box with a group of
`players does remains
`conventional data storage,
`provides no specific means of
`achieving its purported goal,
`and is taught away from in the
`specification.
`Ex. 1001, claim 1;
`Petition, 8-9 n.3, 32-33.
`
`1. A control method for a computer network,
`comprising:
`storing, by a memory for storing information
`related to a game in which a plurality of players
`can participate, information defining a plurality
`of groups to which said players belong, a reward
`providing condition, rewards, and reward box
`information for a plurality of reward boxes each
`associated exclusively with a respective one of
`said groups, as part of the information related to
`the game; and
`by an arithmetic processor, performing
`computation on the game, and displaying
`images of the game on terminal devices
`operated by the players
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`Exhibit 1016
`
`
`
`Step Two: No Inventive concept
`
`The purported “advance” is not
`captured in the independent
`claims.
`
`There is no “unexpectedness” in
`the reward. “Allocating” is not
`limited in any meaningful way.
`
`. . .
`allocating at least one reward out of the
`rewards to at least one of the reward boxes,
`determining whether the reward providing
`condition is met based on match-up
`situations or match-up results between the
`players and first game characters in the
`game, and
`displaying, on the terminal devices, a screen
`for providing the reward allocated to at
`least part of one of the reward boxes to at
`least one player in the group associated with
`the one of the reward boxes based on the
`determination results.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1001, claim 1;
`Reply, 13-14.
`
`24
`
`Exhibit 1016
`
`
`
`Prong 2: No Practical Application (Summary)
`
`The ‘580 patent is directed to “Providing a reward to a video game
`player from a reward box if a reward condition is met.”
`
`1. No improvement in computer functionality;
`2. No additional element implements the judicial exception
`with, or uses of a judicial exception in conjunction with a
`particular machine or manufacture;
`3. No additional elements that apply the judicial exception
`beyond a generic video game environment.
`
`Reply, p. 5-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`Exhibit 1016
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
` Abstract Game Rule; No Recited Mechanism; Does Not Capture
`“unexpectedness”
`
`• Claim 2: The control method according to claim 1, wherein
`each of the players belongs to at least one of groups, and each
`of the groups is associated with at least one of the first game
`characters in the game and a respective one of the reward
`boxes, and
`the arithmetic processor determines whether the reward
`providing condition is met based on a match-up situation or
`match-up result between one of the players and the first game
`character, and provides the whole of the reward allocated to
`the reward box associated with the group to which that
`player belongs to the player based on the determination
`result.
`
`Ex. 1001, Claim 2; Reply, p. 14-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`Exhibit 1016
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
` Abstract Game Rule; No Recited Mechanism; Does Not Capture
`“unexpectedness”
`
`• Claim 3: The control method according to claim 1, wherein
`the arithmetic processor controls the allocation of the reward
`based on at least any one of the following: an elapsed time of
`the game, the number of first game characters defeated by the
`player, progress of the game, the kind of event in the game,
`the kind of reward box, a state of a second game character
`corresponding to the player, and an item possessed by the
`second game character.
`
`Ex. 1001, Claim 3; Reply, p. 15-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`Exhibit 1016
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
` Abstract Game Rule; No Recited Mechanism; Does Not Capture
`“unexpectedness”
`
`• Claim 4: The control method according to claim 1, wherein
`the arithmetic processor determines a probability of
`providing, to the player, the reward allocated to the
`associated reward box unconditionally or based on a
`predetermined condition prior to or when providing the reward
`to the player.
`
`Ex. 1001, Claim 4; Reply, p. 15-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`Exhibit 1016
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
` Abstract Game Rule; No Recited Mechanism; Does Not Capture
`“unexpectedness”
`
`• Claim 5: The control method according to claim 1, wherein
`predetermined condition is at least any one of the following:
`the number of first game characters defeated by the player, a
`state of the first game character defeated by the player, and a
`state of a second game character corresponding to the player
`when a fixed amount of the reward is allocated to the reward
`box.
`
`Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1369 (Fed. Cir.
`2015) (“customizing information based on . . . information known about the user” is
`an abstract idea).
`
`Ex. 1001, Claim 5; Reply, p. 15-16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`Exhibit 1016
`
`
`
`Dependent Claims: Same Abstract Idea; No Inventive Concept
` Abstract Game Rule; No Recited Mechanism; Entirely unrelated to
`“unexpectedness”
`
`• Claim 6: The control method according to claim 1, wherein
`arithmetic processor displays, on the terminal devices, a history
`of providing the reward to the player.
`
`Ex. 1001, Claim 6; Reply, p. 17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`Exhibit 1016
`
`
`
`Expert Testimony Is Not Required
` Expert testimony is unnecessary to invalidate a patent under §
`101
`
`• This issue can often be decided at the pleading stage in district court
`litigation. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
`• It is proper to rely upon:
`• Intrinsic record
`• See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
`Cir 2015).
`• Case law in conjunction with the specification
`• In re TLI Commc’ns. LLC Pat. Litig., 823 F.3d 607, 614 (Fed. Cir. 2016); Smith,
`815 F.3d at 819.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`Reply, p. 18-19.
`
`Exhibit 1016
`
`
`
`PO’s Section 325(d) Argument is Baseless
` The Board rightfully declined to exercise its discretion under
`§325(d), finding that the claims of the ’580 are more likely than
`not to be unpatentable. POPR, p. 2-9; Decision, p. 13-14.
` PO has failed to produce any precedent in which the Board has
`overturned an institution decision and terminated the trial after
`institution under § 325(d).
` Petitioner has cited and provided analysis of intervening Federal
`Circuit precedent and guidance from the USPTO Commissioner
`that went unexamined during prosecution. Petition, pp. 31-34.
`
`Reply, p. 19-21.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`Exhibit 1016
`
`
`
`Section 112(b)
` “Determining whether the reward providing condition is met based on match-up
`situations or match-up results between the players and first game characters in the
`game” renders claims 1-10 indefinite.
`• No disclosure is made of:
`• (1) which of these conditions is used to determine the probability,
`• (2) how “the probability” is calculated based on the selected condition(s), and
`• (3) if more than one of the conditions is used, how they are weighted in the probability
`calculation.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Reply, p. 24-25.
`
`33
`
`Exhibit 1016
`
`
`
`Section 112(b)
`
` “Allocating rewards”
`• PO’s expert gives conflicting descriptions about the scope of this limitation.
`• Sometimes, he contends that allocation of rewards is not affected by the match-up
`situation conditions. Ex. 2001, ¶¶65-71.
`• Elsewhere, he asserts that it is, and in fact is part of the ’580 inventiveness. Ex. 1009,
`125:20-126:4, 126:14-17, 137:20-138:17, 157:20-24, 159:6-11, 159:19-21, 160:1-3,
`161:16-19.
`• PO’s expert directly contradicts PO’s position of the claim scope:
`• Mr. Crane noted that allocating is based on match-up situations – at least seven
`more times. See, e.g., Ex. 1009, 126:14-17 (“The allocation of medals to the
`reward box is based on the matchup situation, which includes predetermined
`conditions such as those listed in the paragraph in column 9.”); see also, 137:20-
`138:17; 157:20-24; 159:6-11; 159:19-21; 160:1-3; 161:16-19.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`Reply, p. 25-26.
`
`Exhibit 1016
`
`
`
`Exhibits 1010 & 1011 Are Not Hearsay
`
`Ex. 1010; Opp. to MTE, p. 2-8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`Exhibit 1016
`
`
`
`Exhibits 1010 & 1011 Are Not Hearsay
`
`Ex. 1010; Opp. to MTE, p. 9-11.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`Exhibit 1016
`
`
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