Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 42
`Mailed: September 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00039
`Patent 9,669,308 B2
`____________
`
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE,
`and CARL M. DEFRANCO, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant review of
`
`I.
`
`claims 1–8 of U.S. Patent No. 9,669,308 B2 (“the ’308 patent”) (Ex. 1001)
`
`pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc. (“Patent Owner”) filed a
`
`Preliminary Response (“Prelim. Resp.”). Paper 6.
`
`On September 13, 2018, we issued a Decision ordering that “pursuant to
`
`35 U.S.C. § 324, a post-grant review is hereby instituted for claims 1–8 of the ’308
`
`patent with respect to all grounds set forth in the Petition.” Paper 10, 24, “Dec.”1
`
`After institution, Patent Owner filed a Patent Owner’s Response (Paper 16, “PO
`
`Resp.”) and a Patent Owner’s Contingent Motion to Amend (Paper 15, “PO
`
`MTA”). In reply, Petitioner filed a Petitioner’s Reply to Patent Owner’s Response
`
`(Paper 24, “Pet. Reply”) and a Petitioner’s Opposition to Motion to Amend (Paper
`
`25, “Pet. Opp. to MTA”). In response, Patent Owner filed a Patent Owner’s Sur-
`
`Reply (Paper 29, “PO Sur-Reply”) and a Patent Owner’s Reply to Opposition to
`
`Motion to Amend (Paper 28, “PO Reply to Opp. to MTA”). In reply, Petitioner
`
`filed a Petitioner’s Sur-Reply to Opposition to Patent Owner’s Motion to Amend
`
`(Paper 33, “Pet. Sur-Reply to Opp. to MTA”). Patent Owner and Petitioner
`
`presented oral arguments on June 19, 2019.
`
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`
`Decision, after reviewing all relevant evidence and assertions, we determine that
`
`Petitioner has met its burden of showing, by a preponderance of the evidence, that
`
`claims 1–8 of the ’308 patent are unpatentable. We further determine that
`
`
`1 Patent Owner filed a Request for Rehearing (Paper 13), which was denied. Paper
`23 (“Req.”).
`
`2
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`Petitioner has met its burden by showing, by a preponderance of the evidence, that
`
`the proposed amended claims are unpatentable.
`
`A.
`
`The ’308 Patent
`
`
`
`The ’308 patent is entitled “Non-transitory Computer Readable Recording
`
`Medium, Game Server, and Control Method.” Ex. 1001, (54). The ’308 patent
`
`aims to “provide a networked multiplayer battle game over a network . . .
`
`[wherein] the battle in the battle game [operates in] . . . one of a first mode . . .
`
`based on user operations and a second mode . . . with fewer user operations than in
`
`the first mode.” Id. at (57).
`
`
`
`The ’308 patent explains that in a conventional battle game, during one
`
`battle, the user needs to select a command to determine the action of the player
`
`character many times, which may make operation troublesome. Ex. 1001, 1:41–
`
`44. As a consequence of this difficulty, the object of the ’308 patent is to make the
`
`user operation in a battle game less troublesome. Id. at 1:46–49. According to the
`
`’308 patent, this objective is achieved by utilizing instructions which direct the
`
`game computer to store a battle history including an identifier of an opponent with
`
`whom a user has battled in the battle game, determine (based on the battle history
`
`and on an identifier of an opponent with whom a battle begins) a procedure for
`
`conducting the battle in the battle game, and conduct the battle. Id. at 1:58–67. In
`
`accordance with the ’308 patent, the procedure for conducting the battle includes
`
`the selection of either a first battle mode (manual mode) or a second battle mode
`
`(auto mode). Id. The patent explains that the second battle mode requires fewer
`
`user operations than the first battle mode. Id.
`
`
`
`Figure 13 of the ’308 patent, reproduced below, illustrates these instructions:
`
`3
`
`

`

`PGR2018-00039
`PGR2018—00039
`Patent 9,669,308 B2
`Patent 9,669,308 B2
`
`
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`4
`
`
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`Figure 13 depicts a flowchart illustrating the operations of a game server discussed
`
`supra. Id. at 5:37–39. As depicted in Figure 13, when a player encounters an
`
`enemy, the server control unit 15 selects an opponent set for that enemy. Id. at
`
`13:49–52. Next, the server determines if the player has ever battled that enemy
`
`before, and if so, whether the player won. Id. at 13:53–55. If the player has won
`
`against the enemy in the past, the server displays a mode selection screen 3, which
`
`allows the player to select auto mode. Id. at 14:5–12. If the player selects the auto
`
`mode, then the battle is conducted in the second mode, which, as discussed supra,
`
`requires less player input. Id. at 34–35. If the player selects manual mode or if the
`
`player has not previously won against the selected enemy, then the battle is
`
`conducted in the first mode. Id. at 14:35–37.
`
`B.
`
`Related Matters
`
`The parties state that there are no related matters. Pet. 1; Prelim. Resp. 1.
`
`C.
`
`Illustrative Claim
`
`Claims 1–8 are pending and challenged, of which claims 1, 7, and 8 are
`
`independent. Claim 1, which is representative, is reproduced below:
`
`1. A non-transitory computer readable recording medium having
`stored thereon instructions to be executed on a computer transmitting a
`battle game to a communication terminal that is connected to the
`computer over a network, the instructions causing the computer to
`perform the steps of:
`
`communicating with the communication terminal over the
`network;
`
`receiving an input signal from the communication terminal to
`configure a battle of the battle game, wherein the input signal comprises
`at least one user operation of a user of the communication terminal;
`
`determining an opponent with whom the user is to battle in the
`battle of the battle game;
`
`5
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`
`when the user has not battled with the determined opponent in
`the past, automatically determining a procedure for executing the battle
`to be a first mode for executing the battle based on at least one user
`operation received from the communication terminal;
`
`when the user has battled with the determined opponent in the
`past, determining, based on at least one user operation received from
`the communication terminal, the procedure to be one of the first mode
`and a second mode for executing the battle with fewer user operations
`received from the communication terminal than in the first mode; and
`
`executing the battle with the determined procedure.
`
`Ex. 1001, 19:52–20:11.
`
`Additional independent claims 7 and 8 recite, respectively, “[a] game server
`
`for transmitting a battle game to a communication terminal” and “[a] control
`
`method.” Id. at 21:1–2, 22:1. Each independent claim recites, with some
`
`variation, limitations directed to a server for (1) communicating with a
`
`communication terminal over a network, (2) receiving battle game configuration
`
`input from the communication terminal, (3) determining an opponent for use in the
`
`battle game, (4) selecting the battle mode, and (5) executing the battle in
`
`accordance with the selected mode.
`
`D.
`
`The Alleged Grounds of Unpatentability
`
`The Petition asserts that claims 1–8 of the ’308 patent are unpatentable as
`
`being directed to non-statutory subject matter under 35 U.S.C. § 101 (Pet. 8–41),
`
`lacking adequate written description under 35 U.S.C. § 112(a) (id. at 41–50), and
`
`being indefinite under 35 U.S.C. § 112(b) (id. at 50–54).
`
`E.
`
`Eligibility of Patent for Post-Grant Review
`
`The post-grant review provisions of the Leahy-Smith America Invents Act
`
`(“AIA”)2 apply only to patents subject to the first inventor to file provisions of the
`
`
`2 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`
`6
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`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 an 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 June 6, 2017, issue date of the ’308 patent. Pet. 2. Further, the ’308 patent was
`
`filed on September 14, 2016, and claims priority to U.S. Patent No. 9,468,849 filed
`
`on July 29, 2014. Id. at 10; Ex. 1001, (22), (63). Patent Owner does not contest
`
`Petitioner’s assertions. See generally PO Resp.; PO Sur-Reply. We are persuaded
`
`that Petitioner has met its burden of showing, by a preponderance of the evidence,
`
`that the ’308 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 its burden of showing, by a preponderance of the
`
`evidence, that claims 1–8 of the ’308 patent are unpatentable.
`
`A.
`
`Claim Construction
`
`As a step in our analysis for determining whether to institute a review, we
`
`determine the meaning of the claims. The instant Petition was filed prior to the
`
`effective date of the rule change that replaces the broadest reasonable interpretation
`
`(“BRI”) standard. See Changes to the Claim Construction Standard for
`
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board,
`
`83 Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (“This rule is effective on
`
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on or
`
`7
`
`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`after the effective date.”). We, therefore, apply the BRI standard in this
`
`proceeding. Under that standard, 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, 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).
`
`Patent Owner contends in its Response that “the Petition assumes a narrow
`
`construction of the term ‘execute.’” PO Resp. 5. Petitioner does not agree,
`
`replying that “PO’s definition of ‘execute’ is based on a general-purpose
`
`dictionary” rather than a computer dictionary. Pet. Reply 1 (citing Ex. 2004). An
`
`express construction of the term “execute,” however, is not required for our
`
`determination that claims 1–8 of the ’308 patent are directed to ineligible subject
`
`matter for the reasons discussed below.3 Accordingly, we see no need for an
`
`express claim construction of this term. See Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[O]nly those
`
`terms need be construed that are in controversy, and only to the extent necessary to
`
`
`3 Nor is an express construction of the term “execute” necessary for our
`determination that Petitioner has not shown claims 1–8 lack proper support in the
`Specification or are indefinite, as discussed below.
`
`8
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`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`resolve the controversy.” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`Patent Owner further contends that “the Petition assumes a strange
`
`construction of [the] claim element ‘automatically determining a procedure for
`
`executing a battle . . . based on at least one user operation received from the
`
`communication terminal.’” PO Resp. 8. Specifically, Patent Owner asserts that
`
`“the Petition assumes that the earlier recited act of ‘automatically determining’ in
`
`this claim element is modified by the phrase ‘based on at least one user
`
`operation.’” Id. Petitioner does not directly reply to Patent Owner’s contentions,
`
`focusing instead on the fact that each of the independent claims 1, 7, and 8 recites
`
`alternative limitations. Pet. Reply. 2–3. Again, however, the express construction
`
`of these limitations is not necessary for our determination that these claims are
`
`directed to ineligible subject matter, and we see no need for express claim
`
`construction of either the limitation argued by Patent Owner or the pair of
`
`limitations argued by Petitioner.4
`
`Claims 1–8 as Directed to Non-Statutory
`B.
`Subject Matter Under 35 U.S.C. § 101
`
`Petitioner contends that claims 1–8 do not recite patent eligible subject
`
`matter under 35 U.S.C. § 101. Pet. 18–41 (citing Exs. 1001–1007). Patent Owner
`
`disagrees. PO Resp. 11–33 (citing Exs. 1001, 1004, 2001, 2003). Petitioner
`
`replies. Pet. Reply 3–22 (citing Exs. 1001, 1010–1013, 2001–2003). Patent
`
`Owner responds further. PO Sur-Reply 3–14 (citing Exs. 1001, 1013, 2001, 2003,
`
`2006).
`
`
`4 An express construction of these limitations is not necessary for our
`determination that Petitioner has not shown claims 1–8 lack proper support in the
`Specification or are indefinite, as discussed below.
`
`9
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`

`

`PGR2018-00039
`Patent 9,669,308 B2
`
`
`1.
`
`Relevant Law
`
`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. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
`
`In determining whether a claim falls within an excluded category, we are
`
`guided by the Supreme Court’s two-step framework, described in Mayo and Alice.
`
`Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
`
`U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine
`
`what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“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.”).
`
`Concepts determined to be abstract ideas, and thus patent ineligible, include
`
`certain methods of organizing human activity, such as fundamental economic
`
`practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical
`
`formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes
`
`(Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent
`
`eligible include physical and chemical processes, such as “molding rubber
`
`products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing,
`
`making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
`
`(quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1853))); and
`
`manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S.
`
`780, 785 (1876))).
`
`10
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`

`PGR2018-00039
`Patent 9,669,308 B2
`
`
`In Diehr, the claim at issue recited a mathematical formula, but the Supreme
`
`Court held that “[a] claim drawn to subject matter otherwise statutory does not
`
`become nonstatutory simply because it uses a mathematical formula.” Diehr, 450
`
`U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more
`
`than a process for molding rubber products and not as an attempt to patent a
`
`mathematical formula.”). Having said that, the Supreme Court also indicated that a
`
`claim “seeking patent protection for that formula in the abstract . . . is not accorded
`
`the protection of our patent laws, . . . and this principle cannot be circumvented by
`
`attempting to limit the use of the formula to a particular technological
`
`environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
`
`commonplace that an application of a law of nature or mathematical formula to a
`
`known structure or process may well be deserving of patent protection.”).
`
`If the claim is “directed to” an abstract idea, we turn to the second step of the
`
`Alice and Mayo framework, where “we must examine the elements of the claim to
`
`determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the
`
`claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221
`
`(quotation marks omitted). “A claim that recites an abstract idea must include
`
`‘additional features’ to ensure ‘that the [claim] is more than a drafting effort
`
`designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
`
`“[M]erely requir[ing] generic computer implementation[] fail[s] to transform that
`
`abstract idea into a patent-eligible invention.” Id.
`
`After the filing of the Petition and Patent Owner’s Response, but before the
`
`filing of Petitioner’s Reply to Patent Owner’s Response and Patent Owner’s Sur-
`
`Reply, the U.S. Patent and Trademark Office published revised guidance on the
`
`application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
`
`11
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`PGR2018-00039
`Patent 9,669,308 B2
`
`Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
`
`whether the claim recites:
`
`(1) any judicial exceptions, including certain groupings of abstract
`ideas (i.e., mathematical concepts, certain methods of organizing
`human activity such as a fundamental economic practice, or mental
`processes); and
`
`(2) additional elements that integrate the judicial exception into a
`practical application (see Manual of Patent Examining Procedure
`(“MPEP”) § 2106.05(a)–(c), (e)–(h)).
`
`See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
`
`exception and (2) does not integrate that exception into a practical application, do
`
`we then look to whether the claim:
`
`(3) adds a specific limitation beyond the judicial exception that is not
`“well-understood, routine, conventional” in the field (see MPEP
`§ 2106.05(d)); or
`
`(4) simply appends well-understood, routine, conventional activities
`previously known to the industry, specified at a high level of generality,
`to the judicial exception.
`
`See Guidance, 84 Fed. Reg. at 56.
`
`2. Whether Claims Are Directed to an Abstract Idea
`
`a.
`
`Petitioner’s Assertions in the Petition
`
`Petitioner asserts that “[t]he claims of the ’308 patent are directed to the
`
`abstract idea of determining a[] procedure for a video game battle.” Pet. 26.
`
`Specifically, Petitioner argues that “[t]he claims recite a sequence of abstract
`
`steps—such as determining an opponent for a battle, determining a procedure for
`
`the battle, and executing the battle—and fail to recite any non-abstract way of
`
`performing those steps.” Id. Petitioner also asserts that “the claims of ’308 patent
`
`do not recite any technical improvements to computers or video game technology.
`
`Instead, the claim limitations only recite generalized steps that achieve functional
`
`12
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`

`PGR2018-00039
`Patent 9,669,308 B2
`
`results, and the claims can cover any system that provides for these results.” Id. at
`
`29.
`
`In addition, Petitioner cites various Federal Circuit cases in support of its
`
`assertion that the claims of the ’308 patent are directed to an abstract idea. For
`
`example, Petitioner cites Affinity Labs, in which claims directed to “the function of
`
`wirelessly communicating regional broadcast content to an out-of-region recipient,
`
`not a particular way of performing that function” were determined to be directed to
`
`an abstract idea, and Two-Way Media, in which claims reciting a method for
`
`routing information, using “result-based functional language” without “sufficiently
`
`describ[ing] how to achieve th[o]se results in a non-abstract way,” were
`
`determined to be directed to an abstract idea. See Pet. 25–31 (citing Affinity Labs
`
`of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016); Two-
`
`Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 574 F.3d 1329, 1337–38 (Fed.
`
`Cir. 2017); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
`
`2016); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612–13 (Fed. Cir.
`
`2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
`
`Cir. 2015); McRO, Inc. Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
`
`1315–16 (Fed. Cir. 2016); Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1330
`
`(Fed. Cir. 2016)). According to Petitioner, claims 1–8 “do not recite any specific
`
`improvement in video game technology or programming.” Pet. 30. Rather, “the
`
`only thing the claimed game server needs to do to perform the claimed idea of
`
`determining a procedure for a video game battle is to execute commands in
`
`response to user inputs, a ubiquitous task that computers have done since their
`
`inception.” Id. at 30–31.
`
`13
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`

`PGR2018-00039
`Patent 9,669,308 B2
`
`
`b.
`
`Patent Owner’s Assertions in Patent Owner’s Response
`
`Patent Owner responds that “the claims are not directed to an abstract idea
`
`under step one, but rather, they are directed to a specific manner of executing a
`
`video game battle in a way that results in an improved system for executing the
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`video game battle.” PO Resp. 13. Patent Owner compares the claims of the ’308
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`patent to the claims in Data Engine Technologies LLC v. Google LLC, 906 F.3d
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`999 (Fed. Cir. 2018). Id. According to Patent Owner, “[b]y providing a way to
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`eliminate the burdensome manual mode when a user has battled an opponent in the
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`past, this claimed ‘second mode’ is just like the ‘tabs’ provided by the claims at
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`issue in Data Engine Tech.” Id. at 14.
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`Contending that the Petition impermissibly overgeneralizes the claimed
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`invention, Patent Owner also compares the claims at issue to the claims in Core
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`Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
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`2018). See Prelim. Resp. 16–17. Again referencing the claimed “second mode,”
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`Patent Owner asserts that the claims recite “a specific improvement over prior
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`systems resulting in an improved battle game system and [are] directed to an
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`improvement in the functioning of computers.” Id. at 17. In addition, Patent
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`Owner asserts that “in the Alice analysis, it is not necessary for the technological
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`benefit to be expressly recited in the claims—it is both appropriate and common
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`for the court to look to the specification to determine how a particular claim
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`limitation achieves the technological benefit disclosed in the specification.” Id.
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`(citing generally McRO; Amdocs (Isr.), Ltd. v. Openet Telecom, Inc., 841 F.3d
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`1288, 1307 (Fed. Cir. 2016)).
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`Then Patent Owner compares the claims at issue in Enfish, McRO, Affinity
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`Labs, and Two-Way Media to claims 1–8 again. Prelim Resp. 19–24. We have
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`fully considered Patent Owner’s arguments; however, in the interest of brevity and
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`as these cases are well known to those familiar with current case law regarding
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`35 U.S.C. § 101, we do not reiterate Patent Owner’s arguments regarding these
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`cases.
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`c.
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`Petitioner’s Assertions in Petitioner’s Reply to
`Patent Owner’s Response
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`Petitioner disagrees with Patent Owner’s characterization of the claims. Pet.
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`Reply 4. We note that, although Petitioner refers to the Guidance in its Reply,
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`Petitioner does not explicitly apply step 2A prong 1 of the Guidance (i.e.,
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`Petitioner does not expressly identify a particular “grouping” of abstract ideas, to
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`which the claims either recite or are directed to, as being one of mathematical
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`concepts, certain methods of organizing human activity, or mental processes). Id.
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`at 4–8; Guidance at 51–52. Nonetheless, Petitioner does explain what the claims
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`are directed to, and why they are an abstract idea. As it did in the Petition,
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`Petitioner explains that the claims are directed to “determining a procedure for a
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`video game battle based on user input,” and asserts that such a characterization is
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`an abstract idea. Pet. Reply 4. Petitioner then asserts that ‘“executing’ the battle
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`game — PO’s articulation of what the claim is directed to — only corresponds to
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`the final limitation. If the singular executing limitation is removed from the claim,
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`the claim still makes sense, and thus makes an unlikely candidate for what the
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`claim is ‘directed to.’” Id. Petitioner contrasts Patent Owner’s assertion with its
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`own characterization that “the claim is directed to . . . ‘determining a procedure for
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`a video game battle based on user input’ [which] corresponds to at least . . . the
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`two ‘determining a/the procedure’ steps.” Id. Petitioner further notes that “[w]hen
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`PO’s expert was asked whether it was fair to characterize the claims as being about
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`determining which procedure to use, he answered in the affirmative,” and “when
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`asked whether it would be fair to characterize the claim as being about executing a
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`battle, he said that it would not.” Id. at 5 (citing Ex. 1010, 183:2–23).
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`In addition, Petitioner replies to Patent Owner’s Response by quoting the
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`portion of our Initial Decision where we stated that ‘“the claims employ results-
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`based functional language without reciting sufficiently specific means or
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`technology for achieving those functional results,’ e.g., because the claims do ‘not
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`indicate how such steps are performed.’” Pet. Reply 6 (quoting Dec. 13). In
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`response to Patent Owner’s allegation that the claimed second mode is a specific
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`structure analogous to “the type of structure found to be a specific technological
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`solution in Data Engine,” Petitioner contends the second mode is not a structure,
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`but a procedure. Id. at 7.
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`Then, Petitioner explicitly discusses whether the claims integrate the alleged
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`abstract idea into a practical application (Guidance step 2A prong 2). Pet. Reply.
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`8–12. Specifically, Petitioner responds to Patent Owner’s assertion that the claims
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`at issue are similar to the claims in Enfish and McRO. Id. at 8–11. Petitioner
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`attempts to distinguish claims 1–8 from the claims in Enfish and McRO, arguing
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`that they “recite no technical improvements to computers or video game
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`technology. Instead, they recite generalized steps that achieve functional results
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`and encompass any system that provides for these results.” Id. at 11. Petitioner
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`also argues that as “the second mode of the fifth limitation is not required for
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`performance of the claim . . . in instances in which the determined processing
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`mode is the first mode, there is no processing via the second mode, and the alleged
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`savings in processing load is not available.” Id. at 12 (citing Ex. 1010, 163:21–
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`164:23).
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`Finally, Petitioner explicitly addresses Guidance step 2B, arguing that claims
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`1–8 contain no inventive concept. Pet. Reply. 12. Noting that “[p]art two of the
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`Alice analysis considers whether elements additional to what a claim is ‘directed to
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`. . . ‘transform the nature of the claim’ into a patent-eligible application,” Petitioner
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`asserts that “the additional elements beyond [the alleged abstract] idea are . . .
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`‘communicating with the communication terminal over the network’ and
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`‘receiving an input signal from the communication terminal,’ and generic computer
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`equipment or functionally-named components.’” Id. at 13. According to
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`Petitioner, these elements do not transform the nature of the claims because “[t]he
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`claims recite only generic, well-known computer or network equipment or
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`functionally named components operating within the hardware: ‘a computer,’
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`‘network,’ and ‘a communication terminal’” and “do not require limitations that
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`appear directed to the purported inventive concept described in the specification.”
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`Id. at 14–15 (citing Ex. 1001, 19:52–20:12).
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`Petitioner further argues that “the fifth claim limitation, which is the only
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`limitation that potentially corresponds to the purported advance of the
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`specification, is recited in the alternative, and thus is not required.” Pet. Reply 16.
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`Moreover, according to Petitioner, “[e]ven if the ‘when the . . . user has battled
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`with the determined opponent in the past…’ (fifth) limitation could be considered
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`an element additional to what the claim is ‘directed to,’ it is well understood,
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`routine, and conventional.” Id.
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`Petitioner concludes its arguments regarding subject matter eligibility by
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`asserting that “[n]one of the dependent claims adds any features that transform the
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`basic abstract idea into a patent-eligible invention.” Pet. Reply 19.
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`d.
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`Patent Owner’s Assertions in Patent Owner’s Sur-Reply
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`Patent Owner answers that the claims are not directed to any of the abstract
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`ideas enumerated under the Guidance. PO Sur-Reply 3–11. Specifically, Patent
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`Owner asserts that “[c]laims 1–8 clearly do not recite any mathematical concepts
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`or enumerated methods of organizing human activity,” and that these claims “do
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`not recite mental processes for at least the same reasons as claim 2 in USPTO
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`Example 37.” Id. at 4–5 (citing Ex. 2006 1–4). In support of these assertions
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`Patent Owner contends that independent claims 1, 7, and 8 — like claim 2 in
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`Example 37 — “recite computer functions that are not practically performed in the
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`human mind.” Id. at 5. Patent Owner identifies these claimed functions as the
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`input receiving steps (claims 1 and 8, and the similar limitation in claim 7) and the
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`determining steps (also claims 1 and 8, with a similar limitation in claim 7). Id.
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`Patent Owner further asserts that claims 4–6 also “recite computer functions that
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`are not practically performed in the human mind.” Id. According to Patent Owner,
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`these functions include “in the second mode, suspending the display of the image
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`at the communication terminal that is configured to receive at least one user
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`operation for causing a player character to perform a command.” Id.
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`Turning to prong 2, Patent Owner further answers that even if claims 1–8 are
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`not eligible under prong 1, they recite “a practical application under prong 2” for
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`three reasons. PO Sur-Reply 6. First, Patent Owner compares the ’308 patent
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`claims to claim 1 of Example 37:
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`Independent claims 1, 7, and 8 at least recited the functions/steps
`of (a) receiving . . . input signals including at least one user operation[,]
`(b) when the user has not battled with the determined opponent in the
`past, automatically determining a procedure for executing the batt