UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`'SUPERCELL OY,
`
`Petitioner
`
`V.
`
`GREE, INC,
`Patent Owner
`
`Case: PGR2018-00008
`
`US. Patent No. 9,597,594
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`'SUPERCELL OY,
`
`Petitioner
`
`V.
`
`GREE, INC,
`Patent Owner
`
`Case: PGR2018-00008
`
`US. Patent No. 9,597,594
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`PGR2018-00008
`
`Patent No. 9,597,594
`
`Notice is hereby given, pursuant to 35 U.S.C. § 141 and 37 C.F.R. § 90.2,
`
`that Patent Owner GREE, Inc. (“GREE”) hereby appeals to the United States Court
`
`of Appeals for the Federal Circuit from the Patent Trial and Appeal Board’s (the
`
`“Board”) Final Written Decision entered on January 2, 2019 (Paper 42), and from
`
`all orders, decisions, rulings, and opinions underlying those decisions regarding
`
`US. Patent No. 9,597,594 (the “’594 patent”) set for in inter partes review
`
`PGR2018-00008.1
`
`In accordance with 37 C.F.R. 90.2(a)(3)(ii), Patent Owner anticipates that
`
`the issues on appeal may include, but are not limited to, the following, as well as
`
`any underlying findings, determinations,
`
`rulings, decisions, opinions, claim
`
`interpretations, or other related issues:
`
`0 The Board’s construction of the claim term “template,”‘
`
`0 Whether claims 1, 8, and 10-20 of the ’594 patent are invalid under §
`
`101; and
`
`0 Any issues raised on appeal by Petitioner.
`
`' Petitioner Supercell OY (“Petitioner”) submitted a Request for Rehearing and
`
`Reconsideration on February 1, 2019 (Paper 43). On May 10, 2019, the Board
`
`entered a Decision Denying Petitioner’s Request for Rehearing (Paper 46).
`
`
`
`PGR2018-00008
`
`Patent No. 9,597,594
`
`In accordance with 35 U.S.C. § 142 and 37 CPR. §§ 90.2 and 90.3, copies
`
`of this Notice of Appeal are being timely filed simultaneously with the Director of
`
`the United States Patent and Trademark Office and the Patent Trial and Appeal
`
`Board.
`
`In addition, a copy of this Notice of Appeal, along with the required
`
`docketing fees, are being filed with the Clerk’s Office for the United States Court
`
`of Appeals for the Federal Circuit Via CM/ECF. A copy of this Notice of Appeal is
`
`also being served on Petitioner.
`
`Dated: May 10, 2019
`
`Respectfully submitted,
`
`.
`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
`
`Winston-Salem, NC 27101-2400
`
`Telephone: 336-607-7312
`Fax: 336-607—7500
`
`
`Backu Counsel
`1 "Lead—Counsel
`
`,1-
`
`
`
`
`Andrew Rinehart
`John C. Alemanni
`
`
`
`
`Reg. No. 75,537
`Reg. No. 47,384
`
`1001 West Fourth Street
`42088 Six Forks Road, Suite 1400
`
`
`
`
`
`
`
`
`
`Email:
`
`
`arinehart@kilpatricktownsend.com
`
`Raleigh, NC 27609
`Office: 919-420—1724
`
`Fax: 919-420-1800
`
`
`
`
`- Email:
`
`jalemanni@kilpatricktownsend.com
`
`
`
`PGR2018-00008
`
`Patent No. 9,597,594
`
`' Babkup Counsel
`
`Scott E. Kolassa
`
`Reg. No. 55,337
`1080 Marsh Road
`
`skolassa@kilpatricktownscndcom
`
`Menlo Park, CA 94025
`Office: 650—324-6349
`
`Fax: 650-326-2422
`
`Email:
`
`
`
`PGR2018-00008
`
`Patent No. 9,597,594
`
`CERTIFICATE OF FILING
`
`I hereby certify that on May 10, 2019, a true and correct copy of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically
`
`through the Patent Trial and Appeal Board’s End to End (E2E) system, and that the
`
`original of the foregoing was hand-delivered to the Director of the United States
`
`Patent and Trademark Office, at the following address in accordance with 37
`
`C.F.R. §§ 42.6(b), 90.2(a), and 104.2:
`
`Office of the General Counsel
`
`United States Patent and Trademark Office
`
`10B20, Madison Building East
`600 Dulany Street
`Alexandria, Virginia 22313-1450
`
`CERTIFICATE OF FILING
`
`I hereby certify that on May 10, 2019, a true and correct copy of the
`
`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed electronically via
`
`the CM/ECF system with the Clerk of Court for the United States Court of Appeals
`
`for the Federal Circuit, and that the requisite fee was paid in accordance with 37
`
`CPR. § 90.2(a)(2) and Federal Circuit Rule 15.
`
`
`
`PGR2018-00008
`
`Patent No. 9,597,594
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of Patent Owner’s Notice of
`
`Appeal has been served electronically via email upon the following:
`
`Jennifer R. Bush
`
`Michael J. Sacksteder
`
`, Geoffrey R. Miller
`F enwick & West LLP
`
`jbush@fenwick.com
`ms'acksteder@fenwick.com
`gmiller@fenwick.corn
`
`Dated: May 10, 2019
`
`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Patent Owner
`
`
`
`Trials@uspto. gov
`571-272—7822
`
`-
`
`Paper No. 46
`Mailed May 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUP ERCELL 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 PatentJudge.
`
`DECISION ON REQUEST FOR REHEARING
`37 CFR. §42. 71
`
`
`
`PGR2018—00008
`Patent 9,597,594 B2
`
`1.
`
`INTRODUCTION
`
`Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
`
`claims 1—20 ofU.S. Patent No. 9,597,594 B2 (Ex. 1001, “the ’594 patent”).
`
`Paper 1 (“Pet”). On May 1, 2018, the Board instituted trial for claims 1—20
`
`of the ’594 patent with respect to all grounds set forth in the Petition.
`
`Paper 15 (“Institution Dec”). During trial, Patent Owner filed a Patent
`
`Owner Response (Paper 24), Petitioner filed a Reply (Paper 27, “Pet.
`
`Reply”), and, with Board authorization (Paper 30), Patent Owner filed a Sur-
`
`Reply (Paper 34).
`
`On January 2, 2019, the Board issued a Final Written Decision
`
`holding that claims 1, 8, and 10—12 are unpatentable as being directed to
`
`patent ineligible subject matter, and further holding that claims 2—7 and 9
`
`had not been shown to be unpatentable. Paper 42, 49, 58(“Final Dec”).
`
`On February 1, 2019, Petitioner filed a Request for Reconsideration of
`
`the Decision. Paper 43 (“Req.” or “Request”). On March 5, 2019,
`
`Petitioner filed a Notice of Appeal. Paper 44. On March 6, 2019, Petitioner
`
`informed the Board that it wished to withdraw the Notice of Appeal and
`
`continue with the Request. On March 13, 2019, the Federal Circuit issued,
`
`as a mandate, an Order indicating that Petitioner’s appeal of the Board’s
`
`Final Written Decision was dismissed. ,Ex. 3005. On April 17, 2019, the
`
`Board entered an Order deeming Petitioner’s Notice of Appeal as being
`withdrawn, and further indicating that the Request will be considered by the
`
`Board in due course. Paper45.
`We have considered Petitioner’s Request. For the reasons that follow,
`
`the Request is denied.
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`II.
`
`ANALYSIS
`
`A request for rehearing must identify specifically all matters the
`
`requesting party believes the Board misapprehended or overlooked.
`
`37 C.F.R. §42.71(d).
`
`The sole issue on which Petitioner requests rehearing in the Final
`
`Written Decision is with respect to the Board’s determination that dependent
`
`claims 2 and 3 were not shown to be unpatentable. See Req. 1-11.
`
`Petitioner contends dependent claims 2 and 3 are directed to patent ineligible
`
`subject matter. Id. Generally, Petitioner contends the Board overlooked that
`
`(1) dependent claims 2 and 3 differ in scope from dependent claim 9, and
`
`that (2) dependent claims 2 and 3 only add a multi—player environment,
`
`which was accounted for in the claimed concept. Req. 2, 5, 8.
`
`In support of its argument, Petitioner points to disparate statements,
`
`located under different headings in the Petition, discussing the multi-player
`
`environment. Req. 2, 8 (citing Pet. 6, 33—34). In addition, Petitioner refers
`
`to other statements, in the Petition under yet another heading, in asserting
`
`that the Board misapprehended or overlooked that a multi-player
`
`environment was accounted for in its assertions concerning “creating and
`
`applying a template of positions of one or more game contents.” Req. 5
`
`(citing Pet. 22—23).
`
`As an initial matter, we note that it is not the Board’s role to cobble
`
`together bits from the Petition, combining disparate statements found
`
`throughout the record, in this case under three completely different headings,
`
`in order to piece together Petitioner’s argument. See DeSz'lva v. Dz'Leonardz',
`
`181 F.3d 865, 866—67 (7th Cir. .1999) (“A brief must make all arguments
`
`accessible to the judges, rather than ask them to play archeologist with the
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`record.”). Notwithstanding, we address the substance ofPetitioner’s
`
`Request.
`
`First, Petitioner contends that the Board overlooked that dependent
`
`claims 2 and 3 differ in scope from dependent claim 9 (Req. 2) and therefore
`
`erred in applying the same analysis to all of those claims (Req. 9). We
`
`disagree.
`
`The Final Written Decision explains that Petitioner’s analysis and
`
`evidence as to dependent claim 9 was insufficient. Final Dec. 43. The
`'Board determined that Petitioner’ 5 analysis and evidence for dependent
`
`claims 2 and 3, which was essentially limited to a sentence on page 33 of the
`Petition, was similarly insufficient.1 Id. Accordingly, as Petitioner’s
`
`analysis and evidence for all of those claims were insufficient, applying the
`
`similar analyses was correct.
`
`Second, we consider Petitioner’s contention that the Board overlooked
`
`that dependent claims 2 and 3 only add a multi-player environment, and that
`
`the addition of a multi-player environment was properly accounted for in the
`
`claimed concept.
`
`In the Final Written Decision, we determined that independent claim 1
`
`is directed to the concept of “creating and applying a template of positions of
`
`one or more game contents.” Final Dec. 37. We further determined that
`
`dependent claims 2 and 3 recite “additional details” beyond that concept. Id
`
`at 43. Indeed, we agreed with Petitioner’s summary of those additional
`
`details. Id. Specifically, the Petition summarizes claims 2 and 3 as follows:
`
`‘ In its Reply, Petitioner does not address any dependent claim with any
`specificity. See generally Pet. Reply.
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`Dependent claim 2 and its dependent claim 3 describe the method
`of claim 1, but add that the method is conducted in a multi-player
`environmentwherein a secondplayer can also create and apply
`templates within the game space.
`
`Pet. 33 (emphasis added). In other words, according to the Petition itself,
`
`dependent claims 2 and 3 contain the additional details of “in a multi-player
`
`environment.” We are unclear how the Board was supposed to ascertain that
`
`the Petition intended to account for “in a multi-player environment” within
`the claimed concept, when the Petition itself, by the use ofthe word “add,”
`
`labels “in a multi-player environment” as additional details.
`
`Even assuming that the Board did overlook or misapprehend that the
`
`Petition articulated that “in a multi-player environment” was subsumed
`
`within “creating and applying a template of positions of one or more game
`
`contents,” we note that the aforementioned portion of the Petition also
`
`identifies, as additional details, “wherein a second player can also create and
`
`apply templates within the game space.” Neither the Petition nor the
`
`Request explains why these additional details should be considered a part of
`
`the claimed concept.
`
`Furthermore, delving into the merits of those latter additional details,
`
`we were, and continue to be, unpersuaded that a second player, that can both
`“create”and “apply” a template, is accounted for adequately in the Petition.
`
`Specifically, even if we were to agree the Petition accounts for a second
`
`player “applying” a template “in a multi-player environment” (see Req. 5,
`
`citing Pet. 6), the Petition makes no mention ofthe second player being able
`
`to also create the template. As discussed in the Final Written Decision,
`
`Petitioner did not provide sufficient evidence or analysis that a second player
`
`able to also create and apply templates is included in the claimed concept of
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`“creating and applying a template ofpositions of one or more game
`
`contents.” Final Dec. 43. We could not have overlooked or misapprehended
`
`something not presented adequately in the Petition.
`
`More specifically, per the analysis set forth in the Final Written
`
`Decision, 2 the concept ofdependent claim 2 becomes “creating and applying
`
`a template of positions of one or more game contents in a multi-player
`
`environment, wherein a second player can also create and apply a template
`
`of positions of one or more game contents.” Petitioner argues that
`
`correspondence chess is “a multiplayer game in which the concept of
`
`creating and applying templates has been done for centuries.” Req. 5 (citing
`
`Pet. 22—23). However, that argument does not sufficiently account for the
`
`above-identified portions of dependent claims 2 and 3, i.e., that the second
`
`player can both create and apply a template. Contrary to the Petition’s
`
`strained characterization of correspondence chess, i.e., in which a player
`
`creates a template and the sameplayer also applies it by sending it to
`
`another player, we found that correspondence chess entails a first player
`
`creating a template and a diflerent, second player applying the template.
`
`Institution Dec. 8; Final Dec. 14 (citing Pet. 22). As such, we fail to see how
`
`correspondence chess, where afirsz‘ player creates a template and a second
`
`p player plays or applies it, accounts for a concept in which a second player
`
`can both create and apply a template.
`
`In conclusion, we have reviewed and considered the Request and
`
`determine that Petitioner has not carried its burden of demonstrating that the
`
`Board misapprehended or overlooked any matters in rendering the Final
`
`2 The Final Written Decision specifically addresses claim 9 but states that
`“[t]he same analysis is applicable” to claims 2 and 3. Final Dec. 43.
`
`6
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`Written Decision. Rather, Petitioner‘uses the Request as an opportunity
`
`bolster its arguments, which were not properly presented in the Petition, and
`
`to argue positions with which we disagreed in our Final Written Decision.
`
`III.
`
`CONCLUSION
`
`Petitioner’s Request for Rehearing is denied.
`
`
`
`PGR2018-00008
`
`Patent 9,597,594 B2
`
`For PETITIONER:
`
`Jennifer Bush
`
`Michael Sacksteder
`
`FENWICK & WEST LLP
`
`jbush-ptab@§enwick. com
`msacksteder@fenwick.com
`
`For PATENT OWNER:
`
`John Alemanni
`
`Andrew Rinehart
`
`Scott Kolassa
`
`‘
`}
`Steven Moore
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`jalemanni@lgilpatricktownsend.com
`arinehart@lgilpatricktownsend.com
`skolassa@l_<ilpatricktownsend.com
`smoore@lgilpatricktownsend.com
`
`
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