Paper No. __
`Filed January 11, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner
`____________________
`
`Case PGR2018-00050
`Patent 9,675,886
`____________________
`
`
`
`PATENT OWNER'S RESPONSE
`UNDER 37 C.F.R. §42.220
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`
`
`
`
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`

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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 1
`
`A. The 886 Patent ................................................................................................. 1
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`B. Claim Construction .......................................................................................... 6
`
`III. THE PETITION FAILS TO ESTABLISH THAT CLAIMS 1-10 ARE
`UNPATENTABLE .......................................................................................... 6
`
`A. The Petition Fails to Establish that Claims 1-10 Are Unpatentable under 35
`U.S.C. §101 ...................................................................................................... 7
`
`1. Claims 1-10 Are Not "Directed to" an Abstract Idea................................... 7
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`a) Data Engine Tech. ................................................................................... 8
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`b) Core Wireless ........................................................................................12
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`c) Enfish .....................................................................................................19
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`d) McRO ....................................................................................................21
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`e) Affinity Labs and Two-Way Media .......................................................23
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`f)
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`Revised Patent Subject Matter Eligibility Guidance ............................25
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`2. Claims 1-10 Also Recite an Inventive Concept that Otherwise Transforms
`the Alleged Abstract Idea into a Patent-Eligible Invention .......................27
`
`a) Berkheimer ............................................................................................28
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`b) BASCOM ...............................................................................................35
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`3. Claims 1-10 Do Not Preempt All Ways of Practicing the Alleged Abstract
`Idea .............................................................................................................37
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`i
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`B. The Petition Fails to Establish that Claims 1-10 Are Unpatentable under 35
`U.S.C. §112(a) ...............................................................................................38
`
`1. The Disclosure Provides Adequate Written Description for "Identifying a
`Terminal Attribute of the User Terminal" .................................................40
`
`2. The Disclosure Provides Adequate Written Description for "Determining
`the Predetermined Number Based on the Terminal Attribute" .................42
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`C. The Petition Fails to Establish that Claims 1-10 Are Unpatentable under 35
`U.S.C. §112(b) ...............................................................................................44
`
`1. The Recited "Identifying a Terminal Attribute of the User Terminal," is
`Definite ......................................................................................................45
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`2. The Recited "Determining the Predetermined Number Based on the
`Terminal Attribute," is Definite .................................................................47
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`IV. CONCLUSION ..............................................................................................51
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`TABLE OF AUTHORITIES
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`Page
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`
`
`Cases
`
`Affinity Labs of Texas, LLC v. DirecTV, LLC,
`838 F.3d 1253 (Fed. Cir. 2018) ............................................................... 23, 24, 25
`
`Alice Corp. Pty. Ltd. v. CLS Bank Int'l,
`134 S. Ct. 2347 (2004) ................................................................................. passim
`
`Amdocs (Israel), Ltd. v. Openet Telecom, Inc.,
`841 F.3d 1288 (Fed. Cir. 2016) ............................................................... 18, 20, 28
`
`Ariad Pharm., Inc. v. Eli Lilly and Co.,
`598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) ..............................................39
`
`Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
`788 F.3d 1371 (Fed. Cir. 2015) ............................................................................37
`
`BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016) ............................................................... 35, 36, 37
`
`Berkheimer v. HP Inc.,
`881 F.3d 1360 (Fed. Cir. 2018) .................................................................... passim
`
`Chef America, Inc. v. Lamb-Weston, Inc.,
`358 F.3d 1371 (Fed. Cir. 2004) .............................................................................. 6
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................... 6
`
`Data Engine Tech. LLC v. Google LLC,
`906 F.3d 999 (Fed. Cir. 2018) ...................................................................... passim
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ........................................................... 8, 19, 20, 21
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) .............................................................................. 6
`
`In re Herschler,
`591 F.2d 693, 200 USPQ 711 (CCPA 1979) .......................................................39
`
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`iii
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`
`In re Mayhew,
`527 F.2d 1229, 188 USPQ 356 (CCPA 1976) .....................................................45
`
`In re Packard,
`751 F.3d 1307 (Fed. Cir. 2014) ............................................................................44
`
`In re Wertheim,
`541 F.2d 257 (CCPA 1976) ........................................................................... 39, 41
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ................................................................................ 6
`
`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`837 F.3d 1299 (Fed. Cir. 2016) .................................................................... passim
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .............................................................................. 6
`
`Morton Int'l, Inc. v. Cardinal Chem. Co.,
`5 F.3d 1464 (Fed. Cir. 1993) ................................................................................44
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`527 U.S. ____, 134 S. Ct. 2120, 110 USPQ2d 1688 (2014) ................................46
`
`Rapid Litig. Mgmt. v. CellzDirect, Inc.,
`827 F.3d 1042 (Fed. Cir. 2016) ............................................................................37
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`839 F.3d 1138 (Fed. Cir. 2016) ............................................................................37
`
`Thales Visionix Inc. v. United States,
`850 F.3d 1343 (Fed. Cir. 2017) .............................................................................. 8
`
`Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
`874 F.3d 1329 (Fed. Cir. 2017) ..................................................................... 23, 25
`
`Vas-Cath, Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ............................................................................39
`
`Statutes
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`35 U.S.C. §101 ................................................................................................. passim
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`iv
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`35 U.S.C. §112 ................................................................................................. passim
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`Rules
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`37 C.F.R. §42.100(b) ................................................................................................. 6
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`84 Fed. Reg. 50 ........................................................................................... 25, 26, 27
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`Other Authorities
`
`MPEP §2106 ............................................................................................................37
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`MPEP §2111 .............................................................................................................. 6
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`MPEP §2161 ......................................................................................... 39, 40, 41, 43
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`MPEP §2163 ............................................................................................... 39, 41, 44
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`MPEP §2164 ............................................................................................................40
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`MPEP §2172 ............................................................................................................45
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`MPEP §2173 ............................................................................................... 44, 46, 48
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`v
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`I.
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`
`
`INTRODUCTION
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`On March 12, 2018, Petitioner, Supercell Oy, filed a Petition requesting
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`Post-Grant Review (PGR) of U.S. Patent No. 9,675,886 (886 Patent) owned by
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`GREE, Inc. On September 27, 2018, the PTAB issued a Decision instituting the
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`PGR (Paper 8, “Decision”). Despite the institution, as explained below,
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`the Petition fails to establish that (i) any claim of the 886 Patent is patent-ineligible
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`under 35 U.S.C. §101, (ii) any claim of the 886 Patent lacks written description
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`under 35 U.S.C. §112(a), or (iii) any claim of the 886 Patent is indefinite under 35
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`U.S.C. §112(b).
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`II. BACKGROUND
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`A. The 886 Patent
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`
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`The 886 Patent discloses and claims a game method (with a corresponding
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`computer and program) that transmits game data over a network from a
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`management server to a user terminal operated by a player (i.e., user) of the game.
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`For example, FIG. 1 below shows a schematic diagram of the management server
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`20 and user terminals 10 connected over a network.
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`One example of a type of battle game that can be conducted using the
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`claimed invention is a round-based combat-style game in which the user battles
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`opponents. Exhibit 1001, 4:21-24, and 8:41-52. In this type of game, a user
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`battles an opponent one round at a time. Id. at 8:63-9:6. After each round of battle,
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`it is determined whether the user has been defeated. Id. at 9:12-17. If the user has
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`won the round of battle, the user proceeds to the next round. Id. at 9:36-42.
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`
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`One problem recognized by the inventors in certain conventional round-
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`based games is that game view data including all battle rounds is transmitted at a
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`single time, resulting in a long transmission time and long waiting period for the
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`user before commencing gameplay. Id. at 1:46-49, and 10:21-24. Other
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`2
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`U.S. Patent No. 9,675,886
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`conventional round-based games transmit only one round at a time, preventing the
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`smooth progress of gameplay due to interruption required for downloading the next
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`round after each round is completed. Id. at 1:52-54, and 10:26-29. Each of these
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`conventional schemes can become both tedious for the user and an unnecessary
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`draw on system and network resources, resulting in an increased wait time between
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`rounds. Id. at 1:52-54, and 10:26-29; and Exhibit 2001, ¶¶ 19-22.
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`
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`The disclosed and claimed invention addresses these problems by
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`collectively transmitting a predetermined number (subset) of the rounds at times
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`determined based on gameplay progress. Exhibit 1001, 2:35-42, 7:29-43, and
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`10:19-21. This predetermined number is less than the total number of rounds, but
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`is greater than a single round. Id. at 10:15-36. The method further takes into
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`consideration usability and determines the predetermined number of rounds based
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`on a terminal attribute of the user terminal. Id. at 3:6-11, and 11:6-44. This
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`improved process is described in more detail below.
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`
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`To determine when to collectively transmit a subsequent (second) subset of
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`rounds having the predetermined number to the user terminal 10, the management
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`server 20 identifies the game progress and transmits the subsequent subset of
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`rounds when the first subset of rounds is completed. Id. at 7:29-43 and 8:11-15. If,
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`for example, the predetermined number of rounds is three, the management server
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`3
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`U.S. Patent No. 9,675,886
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`20 identifies when the user has successfully completed the first subset of three
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`rounds and then transmits the subsequent subset of three rounds. Id. at 8:41-49.
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`
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`To determine the predetermined number of rounds, the management server
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`20 identifies a terminal attribute of the user terminal 10 and sets the predetermined
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`number of rounds based on the identified terminal attribute. Id. at 3:6-11, and
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`11:8-44. For example, the management server 20 might identify the
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`communication circumstance (e.g., communication speed) as the terminal attribute,
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`and set the predetermined number of rounds to be large if the communication
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`speed is high. Id. at 11:20-35.
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`
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`By transmitting a subset of rounds including the predetermined number of
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`rounds instead of transmitting the entire set of rounds at one time, transmission
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`time and waiting time are both reduced. Id. at 1:46-54, 2:40-42, and 10:15-36.
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`This results in a reduction in the processing load and the processing time, thereby
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`decreasing the user's wait time and at the same time reducing the unnecessary draw
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`on system and network resources that would result from transmission of all rounds
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`at a single time. Exhibit 2001, ¶¶ 19 and 21.
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`
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`In addition, by transmitting a subset of plural rounds including the
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`predetermined number of rounds instead of transmitting only one round at a time,
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`the user may progress through each round included in the already transmitted
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`subset without waiting for each subsequent round to be transmitted, thereby
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`4
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`U.S. Patent No. 9,675,886
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`decreasing the user's wait time and increasing the efficiency of gameplay. Exhibit
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`1001, 1:46-54, 2:40-42, and 10:15-36. This results in an increase in processing
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`speed of the game data and an increase in efficiency of gameplay, while at the
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`same time reducing the unnecessary draw on system and network resources that
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`would result from interrupting gameplay to transmit each round one at a time.
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`Exhibit 2001, ¶ 20. Accordingly, the disclosed and claimed invention strikes a
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`balance between (i) the conventional system of transmitting all rounds at a single
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`time and (ii) the conventional system of transmitting only one round at a time.
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`This balance improves gameplay efficiency and optimizes processing load as well
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`as network load in a manner the aforementioned conventional systems failed to
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`accomplish. Exhibit 2001, ¶ 23.
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`
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`In addition, by setting the predetermined number of rounds based on an
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`attribute of the user terminal 10 while taking usability for the game user into
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`consideration, the efficiency of game data transmission is improved for each user
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`terminal 10 having different terminal attributes. Exhibit 1001, 3:6-11. Because the
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`number of rounds to be transmitted at a time is determined by taking into
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`consideration an attribute of the user terminal 10, the claimed invention can best
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`improve processing speed while reducing the draw on computer and network
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`resources in a manner the conventional systems failed to accomplish for each
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`terminal. Exhibit 2001, ¶¶ 29-32.
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`5
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`U.S. Patent No. 9,675,886
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`B. Claim Construction
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`Although the USPTO has recently changed the claim construction standard
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`for PTAB trials, that change does not apply to this PGR. As such, the claims are to
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`be given their broadest reasonable interpretation, as understood by one of ordinary
`
`skill in the art and consistent with the disclosure. See 37 C.F.R. §42.100(b); see
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`also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275-76 (Fed. Cir. 2015),
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`affirmed, Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016). Under this
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`standard, the words of the claim must be given their plain meaning unless the plain
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`meaning is inconsistent with the specification. See MPEP §2111.01(I), citing In re
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`Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) and Chef America, Inc. v. Lamb-Weston,
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`Inc., 358 F.3d 1371, 1372 (Fed. Cir. 2004). For the disclosure of a patent to
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`narrow the plain meaning of a term, it must clearly and unambiguously do so. See
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`MPEP §2111.01(IV)(A) (discussing BRI), citing Merck & Co. v. Teva Pharms.
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`USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005).
`
`III. THE PETITION FAILS TO ESTABLISH
`THAT CLAIMS 1-10 ARE UNPATENTABLE
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`
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`As explained in detail below, the Petition fails to establish that any of the
`
`claims of the 886 Patent are unpatentable.
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`6
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`U.S. Patent No. 9,675,886
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`A. The Petition Fails to Establish that Claims
`1-10 Are Unpatentable under 35 U.S.C. §101
`
`In Alice, the Supreme Court set forth a two-step test for determining whether
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`a patent claim is ineligible under 35 U.S.C. §101 for reciting the judicially-
`
`recognized exception of an abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank
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`Int'l, 134 S. Ct. 2347 (2004). Under the first step (USPTO Step 2A), one must
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`determine whether the claim is directed to an abstract idea or other patent-
`
`ineligible concept. Id. at 2355. Under the second step (USPTO Step 2B), if the
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`claim is directed to an abstract idea, one must examine the elements of the claim to
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`determine whether it contains an inventive concept sufficient to transform the
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`claimed abstract idea into a patent-eligible application. Id. at 2357 (internal
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`citations omitted). As explained below, the Petition fails to establish that any
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`challenged claim (i) is directed to an abstract idea, or (ii) lacks an inventive
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`concept sufficient to transform the alleged abstract idea into a patent-eligible
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`application.
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`1.
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`Claims 1-10 Are Not "Directed to" an Abstract Idea
`
`
`
`As noted by the Supreme Court and repeatedly discussed by the Federal
`
`Circuit, a common mistake when concluding that a claim is directed to an abstract
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`idea under the first step of the Alice analysis is improperly overgeneralizing the
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`claimed invention. Thus, it is critical to "articulate what the claims are directed to
`
`with enough specificity to ensure the step one inquiry is meaningful." Thales
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`7
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017). Further,
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`"describing the claims at such a high level of abstraction and untethered from the
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`language of the claims all but ensures that the exceptions to §101 swallow the
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`rule." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016)
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`(internal citations omitted). This sentiment is also echoed in the USPTO's
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`November 2, 2016 Memorandum which states that "[e]xaminers should consider
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`the claim as a whole under Step 2A of the USPTO's SME guidance, and should not
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`overgeneralize the claim or simplify it into its 'gist' or core principles, when
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`identifying a concept as a judicial exception." Exhibit 1003, p. 2.
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`
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`As explained below with reference to precedential Federal Circuit decisions,
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`the Petition and Decision instituting this PGR improperly overgeneralize the
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`claims to conclude that the claims are directed to an abstract idea. When the
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`claimed invention is articulated with appropriate specificity, the claims are not
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`directed to an abstract idea under step one, but rather are directed to a specific
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`manner of transmitting video game data in a way that results in an improved
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`system for executing the video game. Thus, the Petition fails to establish that at
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`least one claim is ineligible under 35 U.S.C. §101.
`
`a)
`
`Data Engine Tech.
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`
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`In the Federal Circuit's decision in Data Engine Tech., the court determined
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`that claims directed to tabbed spreadsheet pages were patent-eligible under the first
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`8
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`U.S. Patent No. 9,675,886
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`step of the Alice analysis. See Data Engine Tech., 906 F.3d 999. In particular, the
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`court found that the claims recited "a 'specific' and 'particular' manner of
`
`navigating a three-dimensional spreadsheet that improves the efficient functioning
`
`of computers." Id. at 1009. In so doing, the court described the improvement in
`
`efficiency as "allow[ing] a user to avoid the burdensome task of navigating through
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`spreadsheets in separate windows using arbitrary commands." Id. at 1011. That is,
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`the technological improvement related to an improvement in the user experience—
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`avoiding the burdensome operations of prior spreadsheets.
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`
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`The patent claims 1-10 are directed to the same kind of improvement.
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`Specifically, as explained in the 886 Patent, prior to the invention, users were
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`required to experience either a long transmission time and long waiting period
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`before commencing gameplay (in the games transmitting all battle rounds at a
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`single time), or interrupted gameplay (in the games requiring downloading the next
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`round after each round is completed). Exhibit 1001, 1:46-54, and 10:21-29. Both
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`types of games were burdensome for the user and diminished his gameplay
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`experience. Id. at 1:52-54, and 10:26-29; and Exhibit 2001, ¶¶ 19-22. The claimed
`
`invention provides a way to avoid this burdensome experience by collectively
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`transmitting a predetermined number (subset) of the rounds at times determined
`
`based on gameplay progress. Exhibit 1001, 2:35-42, 7:29-43, and 10:19-21. The
`
`method further takes into consideration usability and determines the predetermined
`
`
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`9
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`number of rounds based on a terminal attribute of the user terminal. Id. at 3:6-11,
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`and 11:6-44. By transmitting only a subset of rounds at a time, and by determining
`
`the number of rounds in the subset based on a terminal attribute, the claimed
`
`method reduces the burden on the user by reducing his wait time as well as the
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`interruptions in gameplay, while at the same time optimizing the processing and
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`network loads to improve the efficient functioning of the computer. Exhibit 2001,
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`¶ 23. The claimed method is therefore just like the claims at issue in Data Engine
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`Tech., which provided a way to eliminate the "burdensome task of navigating
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`through spreadsheets in separate windows using arbitrary commands" while at the
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`same time improving the efficient function of computers. Data Engine Tech., 906
`
`F.3d at 1011.
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`
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` In Data Engine Tech., the court acknowledged that the patent-eligible
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`claims "recite[d] specific steps detailing the method of navigating through
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`spreadsheet pages within a three-dimensional spreadsheet environment using
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`notebook tabs." Id. at 1008. Similarly, the patent claims provide specific steps
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`detailing the method of transmitting video game data resulting in the described
`
`improvements. For example, claims 1, 9, and 10 describe specific steps, including:
`
` … identifying a terminal attribute of the user terminal;
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`determining the predetermined number based on the
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`terminal attribute; and
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`responsive to detecting that the first subset of the
`rounds is completed, collectively transmitting, to the user
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`10
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`terminal, game view data corresponding to a second
`subset of rounds including the predetermined number of
`rounds subsequent to the completed rounds.
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`
`Further, in Data Engine Tech., the court acknowledged that the patent-
`
`eligible claims improved the efficiency of the computer by providing quicker
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`access and processing. Specifically, the court said that "[t]he improvement allowed
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`computers, for the first time, to provide rapid access to and processing of
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`information in different spreadsheets, as well as easy navigation in three-
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`dimensional spreadsheets." Id. at 1008. The patent claims also improve the
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`efficiency of the computer. Specifically, by transmitting only a subset of rounds at
`
`a time, and by determining the number of rounds in the subset based on a terminal
`
`attribute, gameplay efficiency and processing speed are improved, and processing
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`load and network load are optimized as compared to the aforementioned
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`conventional systems. Exhibit 2001, ¶ 23.
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`
`
`For all of the foregoing reasons, the patent claims are similar to the patent-
`
`eligible claims in Data Engine Tech. Thus, the patent claims are patent-eligible
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`under the first step of the Alice analysis for at least the same reasons as the patent-
`
`eligible claims in Data Engine Tech.
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`11
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`b)
`
`Core Wireless
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`The Federal Circuit's decision in Core Wireless provides a good example of
`
`the importance of avoiding impermissibly overgeneralizing a claim when
`
`concluding that the invention is directed to an abstract idea. In Core Wireless, the
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`appellant argued that the claims were directed to the abstract idea of "an index."
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`Core Wireless, 880 F.3d at 1362. However, the court recognized that the claims
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`were directed to an improved display interface that allowed users to more quickly
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`access stored data and programs in small-screen electronics, thereby improving the
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`efficient functioning of the computer. Id. at 1359. The prior art had taught that
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`small-screen electronic interfaces required users to scroll through and switch views
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`to find desired data and functions. Id. at 1363. Core Wireless's invention, however,
`
`improved the efficiency of these display interfaces. In particular, by displaying
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`only a limited list of common functions and data from which to choose, the
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`invention spared users from time-consuming operations of navigating to, opening
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`up, and then navigating within, each separate application. Id. The invention thus
`
`increased the efficiency with which users could navigate through various views
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`and windows. Id. The Federal Circuit concluded that the claims were patent
`
`eligible because the claims "recite[d] a specific improvement over prior systems,
`
`resulting in an improved user interface for electronic devices," and thus were
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`directed to "an improvement in the functioning of computers." Id. at 1363.
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`The Petition provides multiple different formulations of the abstract idea to
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`which the Petition asserts the claims are directed. The Petition essentially includes
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`almost all features recited in the independent claims in its first formulation of the
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`abstract idea:
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`Each independent claim recites the same limitations, and is
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`directed to the same abstract concept of transmitting game data
`corresponding to a first subset of rounds including a
`predetermined number of rounds, identifying terminal attributes,
`determining a predetermined number of rounds for a game based
`on the attributes, and transmitting game data for a second subset
`of rounds after detecting that the first set of rounds is complete.
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`Petition, p. 21. The Petition later provides a second formulation of the abstract
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`idea: "As a whole, the claims are directed to the abstract idea concept of
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`transmitting data of a predetermined number of rounds based on an identified
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`terminal attribute." Petition, p. 48. Finally, in the Conclusion, the Petition
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`provides a third formulation of the abstract idea: "they are directed to the abstract
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`idea of providing variable or unexpected rewards to video game players after
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`satisfying a condition." Petition, page 67. It is thus not clear to which "abstract
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`idea" the Petition asserts the claims are directed. In fact, the third formulation
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`appears to be entirely unrelated to the facts of this patent and was likely intended to
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`be included in the Conclusion of one of the other many PGRs Supercell has filed
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`against GREE patents. The Decision appears to accept the above second
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`formulation of the abstract idea by indicating that the claims are "directed to the
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`basic concept of controlling the transmission of game data, which inherently would
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`include a number of rounds, based on an attribute of a receiving terminal."
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`Decision, p. 8.
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`The Petition and the Decision impermissibly overgeneralize the claimed
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`invention and fail to account for the specific requirements of the claims directed
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`toward the improvements discussed herein. The Decision states that the
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`underlying idea of transmitting game data while taking into consideration the
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`terminal attribute is a basic concept common to "any online game." Decision, p. 8.
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`However, that is not all that the claims recite. The claims recite determining, based
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`on the terminal attribute, a number of rounds in a subset of rounds that are to be
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`subsequently transmitted. This is how the method is carried out, and these features
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`contribute to the improvements over the conventional technology. The claims of
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`the 886 Patent are not directed to any of the above formulations of the "abstract
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`idea." Rather, as explained below, the claims are directed to a specific manner of
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`transmitting video game data in a way that results in an improved system for
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`executing the video game. The specifically claimed method is indeed not a basic
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`concept common to "any online game." Neither the Examiner during prosecution
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`nor the Petitioner in the Petition has alleged that the claimed method is disclosed
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`by any prior art. Contrary to the statement in the Decision that the claims only
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`recite "well-known norms for data transmission," there is no actual evidence on the
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`record that the claimed method is well-known. Decision, p. 10. Rather, as
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`discussed above in detail, the specifically claimed method is an improvement over
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`PGR2018-00050
`U.S. Patent No. 9,675,886
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`conventional systems. The fact that the claimed method represents an
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`improvement over prior systems is also established by un-rebutted expert
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`testimony. Exhibit 2001, ¶¶ 29-32.
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`
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`In greater detail, the independent claims require, "identifying a terminal
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`attribute of the user terminal [and] determining the predetermined number based on
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`the terminal attribute." That is, a terminal attribute (e.g., communication speed,
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`browser type, terminal type) is used to set the predetermined number of rounds
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`which are transmitted in each subset of rounds. By setting the predetermined
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`number of rounds based on an attribute of the user terminal, the claimed invention
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`best improves the efficiency of game data transmission for each user terminal
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`having different terminal attributes, compared to conventional systems which fail
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`to consider a terminal's attribute. Exhibit 1001, 3:6-11, 11:8-44; and Exhibit 2001,
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`¶¶ 29-32.
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`Further, the independent claims require, "responsive to detecting that the
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`first subset of the rounds is completed, collectively transmitting, to the user
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`terminal, game view data corresponding to a second subset of rounds including the
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`predetermined number of rounds subsequent to the completed rounds." By
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`transmitting the second subset of rounds only after the first subset of rounds is
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`U.S. Patent No. 9,675,886
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`completed, the user may progress through each round included in the already
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`transmitted subset, and thus the claimed invention decreases the user's wait time
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`and increases processing speed and efficiency of gameplay, compared with
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`conventional systems that transmit only one round at a time. Exhibit 1001, 1:46-54,
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`2:40-42, and 10:15-36; and Exhibit 2001, ¶ 20. Also, by transmitting subsets
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`including a predetermined number of rounds, the claimed invention decreases the
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`processing load and the processing time and thus the user's wait time compared
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`with conventional systems that transmit the entire set of rounds at one time.
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`Exhibit 1001, 1:46-54, 2:40-42, and 10:15-36; and Exhibit 2001, ¶ 21. The
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`claimed invention therefore reduces the unnecessary draw on system and network
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`resources which occur in such conventional systems. E