Trials@uspto.gov
`571-272-7822
`
`Paper No. 15
`Date: May 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`
`Petitioner,
`
`V.
`
`GREE, INC.,
`Patent Owner.
`
`Case PGR2018-00008
`
`Patent 9,597,594 B2
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`DECISION
`
`Granting Institution of Post-Grant Review
`35 U.S.C.. §324(a)
`
`I.
`
`INTRODUCTION
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`Supercell Oy (“Petitioner”) filed a Petition (“Pet”) for post-grant review of
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`claims 1—20 of US. Patent No. 9,597,594 B2 (“the ’594 patent”) (Ex. 1001)
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`pursuant to 35 U.S.C. §§ 321—329. Paper 1. GREE Inc. (“Patent Owner”) filed a
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`Preliminary Response (“Prelim Resp”). Paper 7. With authorization from the
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`PGR2018-00008
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`Patent 9,597,594 B2
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`Board, Petitioner filed a Reply to Patent Owner’s Preliminary Response, Paper 12
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`(“Pet Reply”) and Patent Owner filed a Sur-Reply. Paper 13 (“PO Sur-Reply”).
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`We have jurisdiction under 35 U.S.C. § 324, which provides that a post-grant
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`review may be instituted only if “the information presented in the petition .
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`.
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`.
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`,
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`demonstrate[s] that it is more likely than not that at least 1 of the claims challenged
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`in the petition is unpatentable.”
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`Petitioner challenges the patentability of claims 1—20 of the ’594 patent
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`under 35 U.S.C. § 101. After considering the Petition, the Preliminary Response,
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`the Reply, and the Sur-Reply, as well as all supporting evidence, we are persuaded
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`that it is more likely than not that Petitioner would prevail in showing that claims
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`1—20 are unpatentable. Accordingly, we institute a post-grant review on claims 1—
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`20.
`
`A.
`
`The ’594 patent
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`The ’594 patent relates generally to a method of improving the usability of
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`computer games, where a user builds and defends a virtual city, by using templates
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`to allow the user to more easily change game elements within a game space.
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`Ex. 1001, 1:42—60, 2:5—1 1. More specifically, the ’594 patent describes such a
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`game where a user creates a city by arranging various game elements, where those
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`various game elements may include facilities, characters, soldiers, weapons, cards,
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`figures, avatars, and items. Ex. 1001, 4:26—29; 4:3 8—40. The user’s city may then
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`be attacked by opposing players, and the layout and design of the user’s city
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`becomes a. factor in whether the user is able to successfully defend the city.
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`Ex. 1001, 1:44—49. According to the ’594 patent, as a player progresses in a game
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`and expands their city within the game space, it becomes more complicated for a
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`player to keep track of many things, for example, change the positions, types, and
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`levels of game elements. Ex. 1001, 1:50—55. To address this problem, the ’594
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`PGR2018-00008
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`Patent 9,597,594 B2
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`patent describes a game play method where a user may modify the game space
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`using templates that can be applied to a predetermined area. Ex. 1001, 1:61—2: 10.
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`Hence, a user is able to automatically rearrange a group of game elements to match
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`a predesigned template. Ex. 1001, 4:34—37.
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`B.
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`Related Matters
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`Petitioner identifies the following matter: GREE, Inc. v. Supercell K.K.,
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`Case 2017 (Yo) No. 22046 in Tokyo District Court, associated with related patent
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`JP 5,676,032, which relates to PCT/JP2014/07673. Pet. 2; EX. 1001, (63) (the ’594
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`patent also claiming priority to PCT/JP2014/07673).
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`C.
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`Illustrative Claim
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`Claims 1—20 are pending and challenged, of which claims 1, 10, 11, and 12
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`are independent. Independent claim 12, which is representative, is reproduced
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`below:
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`12. A device in communication with a server, comprising:
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`a memory device storing game software instructions; and
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`one or more hardware processors configured to execute the game
`software instructions perform operations including:
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`storing first positions of game contents;
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`creating a template defining game contents and second positions
`of one or more of the game contents arranged in a game space based on
`a template creation command by a game player,
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`storing the created template in the memory device, and
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`applying the template to a predetermined area within the game
`space based on a template application command by the game player.
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`D.
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`The Alleged Ground 0f Unpatentabz'lity
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`The Petition asserts that claims 1—20 of the ’594 patent are unpatentable as
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`being directed to non-statutory subject matter. Pet. 16—3 8.
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`PGR2018-00008
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`Patent 9,597,594 B2
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`E.
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`Eligibility ofPatentfor Post-Grant Review
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`The post—grant review provisions of the Leahy-Smith America Invents Act
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`(“AIA”)l apply only to patents subject to the first inventor to file provisions of the
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`AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to file provisions apply to
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`any application for patent, and to any patent issuing thereon, that contains or
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`contained at any time a claim to a claimed invention that has an effective filing
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`date on or after March 16, 2013. AIA § 3(n)(l). Furthermore, “[a] petition for a
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`post-grant review may only be filed not later than the date that is 9 months after the
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`date of the grant of the patent or of the issuance of a reissue patent (as the case may
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`be).” 35 U.S.C. § 321(c); see also 37 C.F.R. § 42.202(a) (setting forth the same).
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`Petitioner asserts that the instant Petition is being filed within nine months of
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`the March 21, 2017 issue date of the ’594 patent. Pet. 2. Further, the ’594 patent
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`was filed on December 30, 2015. On this record, we agree with Petitioner that the
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`’594 patent is eligible for post—grant review.
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`11.
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`ANALYSIS
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`We turn now to Petitioner’s asserted grounds of unpatentability to determine
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`whether Petitioner has met the threshold standard, under 35 U.S.C. § 324(a), for
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`instituting review.
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`A.
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`Claim Construction
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`As a step in our analysis for determining whether to institute a review, we
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`determine the meaning of the claims for purposes of this Decision. In a post-grant
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`review, a claim in an unexpired patent shall be given its broadest reasonable
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`construction in light of the specification of the patent in which it appears.
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`37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs, LLC v. Lee, 136 S. Ct. 2131,
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`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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`4
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`PGR2018-00008
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`Patent 9,597,594 B2
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`2144—46 (2016). Under the broadest reasonable construction standard, claim terms
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`are generally given their ordinary and customary meaning, as would be understood
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`by one of ordinary skill in the art in the context of the entire disclosure. In re
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`Translogic Tech, Inc, 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim
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`term will not receive its ordinary meaning if the patentee acted as his own
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`lexicographer and clearly set forth a definition of the disputed claim term in either
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`the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002). We determine that it is unnecessary to
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`expressly construe any claim terms at this time.
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`B.
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`Claims [-20 as Directed to Non-Statutory
`Subject Matter Under 35 US. C. § 101
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`Petitioner contends that claims 1—20 do not recite patent eligible subject
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`matter under 35 U.S.C. § 101. Pet. 16—38 (citing Exs. 1001, 1003). Patent Owner
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`disagrees. Prelim. Resp. 2—24 (citing Exs. 1001, 2001, 2002). Petitioner replies.
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`Pet. Reply 1—5 (citing Ex. 1001). Patent Owner responds further. PO Sur-Reply
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`1—5 (citing Ex. 1001).
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`I .
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`Relevant Law
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`An invention is patent-eligible if it claims a “new and useful process,
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`machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
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`Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions:
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`“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E. g.,
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`Alice Corp. Pty. Ltd. v. CLS Bank Int ’l, 134 S.Ct. 2347, 2354 (2014).
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`in determining whether a claim falls within the excluded category of abstract
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`ideas, we are guided by the Supreme Court’s two-step framework, described in
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`Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
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`Labs, Inc, 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework,
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`Patent 9,597,594 B2
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`we first determine whether the claim is “directed to” a patent-ineligible abstract
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`idea. See Alice, 134 S. Ct. at 2356 (“On their face, the claims before us are drawn
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`to the concept of intermediated settlement, i.e., the use of a third party to mitigate
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`settlement risk”). See also Bilski v. Kappos, 561 US. 593, 611 (2010) (“Claims 1
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`and 4 in petitioners’ application explain the basic concept of hedging, or protecting
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`against risk”).
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`The patent-ineligible end of the spectrum includes fundamental economic
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`practices (Alice, 134 S. Ct. at 2357; Bilskz', 561 US. at 611); mathematical
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`formulas (Flook, 437 US. at 594—95); and basic tools of scientific and
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`technological work (Benson, 409 US. at 69). Relevant to gaming technologies, the
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`Federal Circuit has held that claims “directed to rules for conducting a wagering
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`game” are comparable to the fundamental economic practices found to be abstract
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`in Alice. See In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016). On the patent-
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`eligible side of the spectrum are physical and chemical processes, such as curing
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`rubber (Diamond v. Diehr, 450 US. at 184 n.7 (1981)) and “tanning, dyeing,
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`making waterproof cloth, vulcanizing India rubber, smelting ores,” and a process
`for manufacturing flour (Gottschalk v. Benson, 409 US. at 69 (1972)).
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`If the claim is “directed to” a patent-ineligible abstract idea, we turn to the
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`second step of the Alice and Mayo framework and consider the elements of the
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`claim, both individually and as an ordered combination, to determine whether the
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`additional elements transform the nature of the claim into a patent-eligible
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`application of the abstract idea. Alice, 134 S.Ct. at 2355. This second step is a
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`search for an “inventive concept”—an element or combination of elements
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`sufficient to ensure that the claim amounts to “significantly more” than the abstract
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`idea itself. Id.
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`PGR2018-00008
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`Patent 9,597,594 B2
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`2.
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`Whether the Claims Are Directed to an “Abstract Idea ”
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`Petitioner asserts that the claims are directed to “creating and applying a
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`template,” which Petitioner asserts is an abstract idea. Pet. 20, 21. Petitioner
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`asserts that the claimed concept of “creating and applying a template” is an abstract
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`idea because it (1) “consists entirely of mental steps that can be carried out by a
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`human, either mentally, using pen and paper, or with real-world game pieces”;
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`(2) is merely “automating [a] manually—achievable purpose[ ]”; and (3) “cannot be
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`considered to be directed to an improvement in computer technology because
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`neither the claims nor the specification recites any new technology, new process,
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`or improvement to existing technologies.” Pet. 16—28.
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`Patent Owner does not directly dispute Petitioner’s assertions concerning the
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`first step of the Mayo and Alice framework. See, e. g., Prelim. Resp. 3—6
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`(identifying the two-step framework but criticizing only Petitioner’s contentions
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`regarding the second step), 11—13 (addressing the second step). Considering the
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`evidence of record, we are persuaded that Petitioner has established sufficiently
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`that claims 1—20 are directed to “creating and applying a template.” For example,
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`Petitioner analyzes the limitations of representative independent claim 12, and then
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`concludes that “[a]side from storing game data, the claims focus[es] on creating
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`and applying a template.” Pet. 20; see also infra at pages 10—1 1, 14—15
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`(discussing Petitioner’s use of representative claims). Petitioner further cites
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`several portions of the ’594 patent in support of its assertion. Pet. 20—21 (citing
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`Ex. 1001, 4:27—37, 7:16—17, 16:25—35; 17:24—25, 20:24—37). On this record, we
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`are persuaded that Petitioner’s assertion, that claims 1—20 are directed to “creating
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`and applying a template,” is credible and adequately supported.
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`We are further are persuaded that Petitioner has established sufficiently that
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`“creating and applying a template” is an abstract idea. For example, Petitioner
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`PGR2018—00008
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`Patent 9,597,594 B2
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`asserts that “[t]he ’594 patent’s claimed concept of creating and applying a
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`template .
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`.
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`. consists entirely of mental steps that can be carried out by a human,
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`either mentally, using pen and paper, or with real-world game pieces.” Pet. 21—23.
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`Petitioner additionally directs us to Planet Bingo, LLC v. VKGS LLC, 576 Fed.
`
`App’x 1005, 1005—07 (Fed. Cir. 2014) (“The .
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`.
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`. patents claim managing a bingo
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`game while allowing a player to repeatedly play the same sets of numbers in
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`multiple sessions.”). Petitioner asserts that the claims in Planet Bingo are
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`sufficiently analogous to the claims of the ’594 patent, in that both are reasonably
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`characterized as directed to the same general concept of repeatedly applying a
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`template to a game space.
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`As further evidence, Petitioner analogizes the current claims to a game of
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`correspondence chess, as described in A Guide to Correspondence Chess in Wales.
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`See Ex. 1003. In correspondence chess, a player records the current state of the
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`chess game, indicates the player’s next move on a post card, and sends the post
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`card to a second player who will modify their game board to reflect the updated
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`state of the chess game. Pet. 21, 22 (citing Ex. 1003). Petitioner asserts that, in
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`creating the postcard, the first player creates a template defining game contents,
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`stores the created template, and allows a second player to apply the template to a
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`predetermined area. Pet. 22. In this way, Petitioner asserts that correspondence
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`chess is evidence that the “claimed process is a well-known mental process and
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`method of organizing human activity — and is, therefore, abstract.” Id. at 23.
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`Considering Petitioner’s assertions, we are persuaded that, on this record,
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`Petitioner has established sufficiently that “creating and applying a template” is an
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`abstract idea. The claims in Planet Bingo recite storing a player’s preferred sets of
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`bingo numbers, and playing that set, while simultaneously tracking the player’s
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`sets, tracking player payments, and verifying winning numbers. Planet Bingo, 576
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`Fed. App’x at 1006. The preferred set of bingo numbers can be considered a
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`template of game elements, which is then applied for future game play.
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`Furthermore, in Planet Bingo, the claims were found to be directed to an abstract
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`idea, because they consisted of steps that could be performed mentally or carried
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`out with pen and paper. Id.
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`In much the same way, A Guide to Correspondence
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`Chess in Wales describes a mentally-performed or “pen and paper” system of using
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`templates in gameplay. Pet. 22, 23. Hence, we are persuaded by Petitioner that the
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`steps of the ’594 patent can be performed mentally or via pen and paper and are,
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`thus, an abstract idea. See also Smith, 815 F.3d at 819 (determining that claims
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`describing a set of rules for a game were drawn to an abstract idea).
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`In light of the aforementioned assertions and evidence of record, we are
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`persuaded that the claims of the ’594 patent are directed to an abstract idea.
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`3.
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`Whether the Claims Contain an ”Inventive Concept”
`
`We next turn to second step of the Alice and Mayo framework. Here, we
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`consider the elements of the claims “individually and ‘as an ordered combination’”
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`to determine whether the additional elements “‘transform the nature of the claim’
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`into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S.
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`Ct. at 1291, 1297). In general, Petitioner asserts that the claims of ’594 patent
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`provide no inventive concept, because “its central advance is its suggestion to
`apply the concept of creating and applying a template on generic computer
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`technology.” Pet. 29. In other words, Petitioner asserts that beyond the abstract
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`idea, the claims recite only generic computer components including a “computer,”
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`“server,” or “hardware processor,” “storage unit,” “memory device.” Pet. 30
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`(citing Ex. 1001, Claim 12, 2:12—13, 5:19—20). Further, Petitioner argues that
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`“neither the claim language nor the specification provides any insight into how the
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`claimed creation and application of a template is performed on a computer.” Id. at
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`32. In other words, Petitioner asserts that the steps of the ’594 patent are recited in
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`a functional manner, performing rudimentary computer functions, such that steps
`are no more than being “executed on a computer.” Id. at 33. Patent Owner makes
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`several arguments in response, including asserting the deficiency of the Petition,
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`and arguing that the claimed use of templates is unconventional. On this record,
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`we are persuaded by Petitioner.
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`First, Patent Owner asserts that the Petition is deficient, because it fails to
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`adequately address all of the elements of the claims both individually, and as an
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`ordered combination. Prelim. Resp. 5—9. For example, Patent Owner argues that
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`Petitioner focused on representative claim 12 alone, and did not consider
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`independent claim 11’s additional limitation of “when the template is applied, the
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`processing unit moves the game contents arranged at the first positions within the
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`game space to second positions of the game contents defined by the template.” Id.
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`at 14, 15. We have evaluated the arguments and evidence set forth in the Petition,
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`and disagree with Patent Owner on this point. We are persuaded that Petitioner
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`addressed sufficiently the elements of the claim as an ordered combination, and
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`further addressed adequately the specific limitations of claim 11, in that Petitioner
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`specifically addresses applying the template. See Pet. 32, 33. In particular,
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`Petitioner asserts that independent claims 11 and 12 fail to provide an inventive
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`concept, because they recite only “creating a template” and “applying the
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`template” based on a “command by a game player.” Pet. 32, 33. Petitioner asserts
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`that these claim elements “provide no insight into how the claimed computer will
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`execute the command,” and are merely “rudimentary computer functions.” Id. We
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`View Petitioner’s discussion of “applying the template” as also addressing claim
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`11’s recitation of the steps taken when the template is applied, in that applying a
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`template would appear to reasonably encompass movement of game contents.
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`10
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`Hence, we are persuaded that Petitioner has considered sufficiently the template
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`applying step of claim 11, and has also addressed adequately the elements of the
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`claim as an ordered combination.
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`Petitioner further addresses the dependent claims, and argues that the
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`dependent claims similarly do not provide an inventive concept, because they are
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`variations of the independent claims, add nothing more than extra-solution activity,
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`or describe a concept applied with generic and well-known technology. Id. at 33—
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`37. For example, Petitioner discusses that claims 2 and 3 add a multi-player
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`environment where a player may apply another player’s stored template, claim 4
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`adds obtaining a template from a different computer, claims 5—7 provide rules for
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`when a template is applied to a predetermined area that does not match the size or
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`game elements of the template, claim 9 adds storing a template based on a
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`combination of more than one template, and claims 13—20 add elements directed to
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`how a template replaces a predetermined area, storing one or more templates, and
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`storing templates in a server. 1d.
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`On a general level, Patent Owner further argues that the Petition is deficient
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`because Petitioner only summarily alleges that individual limitations are generic,
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`and fails to provide any evidence that the claims employ only conventional
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`components. Prelim. Resp. 11—13 (citing Berkhez’mer v. HP Inc, 881 F.3d 1360
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`(Fed. Cir. 2018)). We disagree that no such evidence is provided, and are
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`persuaded by Petitioner’s contentions that the additional computer elements
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`presented in the claims, including a computer, server, hardware processor, storage
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`unit, and memory device, are generic. Pet. 29—32. As noted by Petitioner, the ’594
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`patent itself recites the claimed computer elements in a generic manner. Pet. 29,
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`30 (citing Ex. 1001, 2:12—13, 4:64—5:4, 5:19—20). For example, the ’594 patent
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`recites:
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`11
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`The game system 1 includes at least one portable device 2 and a
`server 3. The portable device 2 and the server 3 are connected to each
`other via a communication network, and are connected to each other,
`for example, via a base station 4, a mobile communication network 5,
`a gateway 6, and the Internet 7. A program to be executed by the
`portable device 2 (e.g., a game program) and a program to be executed
`by the server 3 (e.g., a game control program) communicate with each
`other by using a communication protocol such as a Hypertext Transfer
`Protocol (HTTP).
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`Ex. 1001, 4:43—52. Portable device 2 is disclosed as possibly being any of “a
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`mobile phone (a so-called ‘feature phone’), a personal digital assistant (PDA),
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`portable game machine, tablet device, table personal computer (PC), a notebook
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`PC, etc., as long as the present invention is applicable thereto.” Ex. 1001, 4:66—
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`5:4. The laundry list of possibilities encompassing almost every conceivable
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`computing device, as well as the addition of “etc.” in the last sentence, indicates
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`that the claimed computing elements are generic. The communication unit, storage
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`unit, operation unit, display unit, and processing unit are described in a similarly
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`generic manner. See Ex. 1001, 525—626. Furthermore, Petitioner cites numerous
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`cases to further support its assertions that certain computer components are
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`generic. Pet. 30—32. On the record before us, we agree with Petitioner that the
`Petition provides adequate evidentiary and case law support for its assertions that
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`the recited additional computer element are generic.
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`Patent Owner further asserts that the ’594 patent identifies a specific
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`complication arising in computer games, namely, a game becoming monotonous
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`due to increased complexity, and proposes an unconventional concept of templates
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`to solve the problem. Prelim. Resp. 12, 13. Hence, Patent Owner asserts that the
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`templates themselves are unconventional, and that Petitioner has provided no
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`evidence to rebut the specification’s statements regarding the unconventional use
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`of templates. Prelim. Resp. 13; PO Sur-Reply 3, 4. On the current record, we
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`12
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`disagree. As an initial matter, we note that “monotony” of game play appears to be
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`a mental or business problem, and not a technical one. Indeed, as set forth in the
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`Petition with respect to Alice/Mayo step one, Planet Bingo and A Guide to
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`Correspondence Chess in Wales are evidentiary and analytical support for that
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`proposition. Pet. 21, 22. Furthermore, by showing the prior use of templates in a
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`game space, Planet Bingo and A Guide to Correspondence Chess in Wales are
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`evidentiary and analytical support for the proposition that applying templates in a
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`game space is conventional. Of course, during trial, Patent Owner will have the
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`opportunity to submit evidence to the contrary on this point.
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`Additionally, Patent Owner’s assertions regarding the unconventionality of
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`applying templates is somewhat misplaced, in that part two of the Alice and Mayo
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`analysis considers whether elements additional to what a claim is “directed to,”
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`whether “individually and ‘as an ordered combination’. .
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`. ‘transform the nature of
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`the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
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`Mayo, 132 S. Ct. at 1291, 1297) (emphasis added). Here, as the claims are directed
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`to “creating and applying a template,” we are permitted to only consider the
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`additional elements beyond “creating and applying a template,” which include a
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`processing unit, a storage unit, a computer, a device, a server, a communication
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`unit, and tables. To that end, these additional elements are similar to those found
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`in Planet Bingo as being insufficient to transform the nature of the claim into a
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`patent-eligible application. Planet Bingo, 576 Fed. App’x at 1008 (the claims
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`recite “‘a computer with a central processing unit,’ ‘a memory,’ ‘an input and
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`output terminal,’ ‘a printer,’ in some cases ‘a video screen,’ and ‘a program .
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`.
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`.
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`enabling’ the steps of managing a game of bingo”).
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`Finally, Patent Owner argues that Petitioner has failed to explicitly address
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`every limitation of the independent and dependent claims. Prelim. Resp. 2—24.
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`13
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`Patent 9,597,594 B2
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`Patent Owner asserts that Petitioner has focused on representative independent
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`claim 12 alone, and failed to address sufficiently other independent claims and
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`their differing claim elements. PO Sur-Reply 4, 5. As an example, Patent Owner
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`notes that claim 12 requires “storing the created template,” while claim 8 recites
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`“the computer stores positions of game contents arranged within the predetermined
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`area, as the template.” Id. at 7. Patent Owner also asserts that the dependent
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`claims are given an inadequate cursory analysis and, in the case of claim 18, no
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`analysis at all. Id. at 19—24.
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`On this record, we are persuaded that Petitioner’s showing is adequate.
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`Although we acknowledge that Patent Owner has identified literal words in the
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`challenged claims that were not addressed expressly by Petitioner, we are
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`persuaded that the words identified are not of such a character so as to provide
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`meaningful distinctions from the limitations addressed more thoroughly by
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`Petitioner. For example, while Patent Owner identifies “storing” as a limitation
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`not expressly addressed, we are persuaded that Petitioner’s analysis of a generic
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`“storage unit” and “memory device” (Pet. 30 (citing Ex. 1001, 2:12—13, 5119—20))
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`adequately accounts for other “storing” limitations, even if Petitioner did not
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`expressly use the word “storing.” The same is true for other alleged distinctions
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`identified by Patent Owner, for example, that “applying the template” does not
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`account for “when the template is applied,” especially where all the “when the
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`template is applied” limitations require is that game elements are placed as
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`intended when “applying the template.” PO Sur-Reply 3, 5.
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`We acknowledge that the Petition does not appear to address directly
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`dependent claim 18. Having said that, the Petition repeatedly uses the plural term
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`“claims” in its step two Alice/Mayo analysis. See e. g., Pet. 29 (“Them of the
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`’594 patent recite only conventional and functional components incidental to
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`PGR2018-00008
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`Patent 9,597,594 B2
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`implementing the abstract idea of creating and applying a template”) (emphasis
`added). Furthermore, on a substantive basis, we discern no meaningful distinction
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`between the subject matter of claim 18 and that of representative claim 12.
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`Specifically, both claims 12 and 18 require selecting a template based on a
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`command by the game player and applying the template to a predetermined area.
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`See Ex. 1001, 28:11—25, 28:49—53. Hence, although the Petition does not
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`explicitly set forth a separate analysis of claim 18, we are persuaded that the
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`Petition adequately addresses the subject matter of claim 18, through its analysis of
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`claim 12. See Pet. 32, 33. Of course, Patent Owner may argue to the contrary, and
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`submit supporting evidence, during trial.
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`On April 24, 2018, the Supreme Court held that a final written decision
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`under 35 U.S.C. § 318(a) must decide the patentability of all claims challenged in
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`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (US. Apr. 24,
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`2018). Although SAS addressed the statutory section for final written decisions in
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`inter partes reviews, the corresponding section for post-grant reviews, 35 U.S.C. §
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`328(a), uses essentially identical language, so we interpret it the same way. See
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`Powerex Corp. v. Reliant Energy Servs., Inc., 551 US. 224, 232 (2007) (stating
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`that “identical words and phrases within the same statute should normally be given
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`the same meaning”). After considering the evidence and arguments presented in
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`the Petition, the Preliminary Response, the Reply, and the Sur-Reply, we determine
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`that Petitioner has demonstrated that it is more likely than not that claims 1—20 of
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`the ’594 patent are unpatentable.
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`C.
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`Conclusion
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`On this record, we determine that the Petition demonstrates that it is more
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`likely than not that Petitioner would prevail in showing that claims 1—20 are
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`Patent 9,597,594 B2
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`unpatentable. Nothing in this decision should be construed as a final finding or
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`determination with respect to any issue or claim.
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`After due consideration of the record before us, and for the foregoing
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`III. ORDER
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`reasons, it is:
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`ORDERED that, pursuant to 35 U.S.C. § 324, a post-grant review is hereby
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`instituted for claims 1—20 of the ’594 patent with respect to all grounds set forth in
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`the Petition; and
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`FURTHER ORDERED that, pursuant to 35 U.S.C. § 324(a), a post—grant
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`review of the ’594 patent shall commence on the entry date of this Order, and
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`pursuant to 35 U.S.C. § 324(c) and 37 CPR. § 42.4, notice is hereby given of the
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`institution of a trial.
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`PGR2018-00008
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`Patent 9,597,594 B2
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`For PETITIONER:
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`Jennifer R. Bush
`
`Michael J. Sacksteder
`
`FENWICK & WEST LLP
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`jbush-ptab@fenwick.com
`msacksteder@fenwick.com
`
`For PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`
`Phillip Citroen
`Paul Hastings LLP
`josephpalys@9aulhastings.com
`naveenmodi@paulhastings.com
`phillipcitroen@paulhastings.com
`PH—GREE-PGRngaulhastings.com
`
`17
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