PGR2018-00008
`
`Notice of Appeal
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`
`GEOFFREY R. MILLER
`
`FENWICK & WEST LLP
`
`801 California Street
`
`Mountain View, CA 94041
`Telephone: 650.988.8500
`. Facsimile:
`650.938.5200
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`V.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`Post Grant Review No. PGR2018—00008
`
`Patent 9,597,594 B2
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`Notice of Appeal
`
`Filed on behalf of Supercell Oy
`
`By:
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER
`
`GEOFFREY R. MILLER
`
`FENWICK & WEST LLP
`
`801 California Street
`
`Mountain View, CA 94041
`Telephone: 650.988.8500
`. Facsimile:
`650.938.5200
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`V.
`
`GREE, INC.,
`Patent Owner.
`
`
`
`Post Grant Review No. PGR2018—00008
`
`Patent 9,597,594 B2
`
`PETITIONER’S NOTICE OF APPEAL
`
`
`
`PGR2018-00008
`
`Notice of Appeal
`
`Pursuant to 37 C.F.R. § 90.2(a) and 35 U.S.C. §§ 141(c), 142, and 319,
`
`Supercell Oy (“Petitioner”) respectfully gives notice that it appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Patent Trial and Appeal
`
`Board’s Final Written Decision entered on January 2, 2019 (Paper 42), and from
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`all other underlying orders, decisions, rulings, and opinions.
`
`For the limited purpose of providing the Director of the United States Patent
`
`and Trademark Office with the information specified in 37 CPR. § 90.2(a)(3)(ii),
`
`the issues on appeal include the Board’s determination that claims that claims 2—7
`
`and 9 have not been shown to be unpatentable under 35 U.S.C. § 101 in View of
`
`the grounds of unpatentability on which trial was instituted (Paper 15), the Board’s
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`decision to find evidence inadmissible hearsay under Federal Rule of Evidence
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`802, and any finding or determination supporting or related to these issues, as well
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`as all other issues decided adversely to Petitioner in any order, decision, ruling, or
`opinion.
`'
`
`Simultaneous with this filing and in accordance with 37 C.F.R. § 90.2(a)(l),
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`this Notice of Appeal is being filed with the Director and served on Patent (Owner
`in accordance with 37 C.F.R. § 42.6(e). This Notice ofAppeal,.along with the '
`
`required fees, is also being filed with the Clerk’s Office for the United States Court
`
`of Appeals for the Federal Circuit in accordance with Fed. Cir. R. 1'5(a)(1).
`
`
`
`PGR2018-00008
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`Notice of Appeal
`
`Dated: March 5, 2019
`
`Respectfully submitted,
`
`/Jennifer R. Bush/
`
`JENNIFER R. BUSH
`
`Reg. No. 50,784
`Attorney for Petitioner
`
`
`
`PGR2018-00008 '
`
`Notice of Appeal
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 CPR. § 42.6, the undersigned certifies that on March 5, 2019,
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`I caused a true and correct copy of the foregoing PETITIONER’S NOTICE OF APPEAL to
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`be electronically served on Patent Owner’s lead and backup counsel at the following
`
`addresses:
`
`-
`Andrew Rinehart
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP Kilpatrick Townsend & Stockton LLP
`42088 Six Forks Road, Suite 1400
`1001 West Fourth Street
`Raleigh, NC 27609
`'
`Winston-Salem, NC 2710-2400
`
`jalemanni@kilpatricktownsend.corn
`
`arinehart@kilpatricktownsend.com '
`
`Steven D. Moore
`Scott E. Kolassa
`Kilpatrick Townsend & Stockton LLP Kilpatrick Townsend & Stockton LLP
`1080 Marsh Road
`Two Embarcadero Center, Suite 1900
`Menlo Park, CA 94025
`San Francisco, CA 9411
`
`skolassa@kilpatricktownsend.com
`
`smoore@kilpatricktownsend.com
`
`Dated: March 5, 2019
`
`FENWICK & WEST LLP
`
`
`/Jennifer R. Bush/
`
`JENNIFER R. BUSH
`
`Reg. No. 50,784
`Attorney for Petitioner
`
`Fenwick & West LLP
`
`801 California Street
`
`Mountain View, CA 94041
`
`
`
`FORM 5. Petition for Review or Notice of Appeal Of an Order or Decision of an AGENCY, BOARD,
`COMMISSION, OFFICE OR BUREAU
`
`Form 5
`Rev. 03/16
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`SUPERCEL OY’
`
`
`Petitioner or Appellant,
`
`V-
`
`PETITION FOR REVIEW
`
`GREE’ INC‘
`
`
`Respondent or Appellee.
`
`
`‘SUPERCEL OY (name all parties* bringing the petition or appeal)
`PGR2018-00008,Fina1 Written Decision,Paper 42 (describe hereby petition/appeal the court for review of the
`the order or decision and include decision number) of the Patent Trial and Appeal Board
`
`
`
`(name the agency, board, office or bureau) entered on January 2, 2019
`
`(date).
`
`The order or decision was received on January 2, 2019
`
`(date).
`
`
`
`Date‘ March 5 2019 /5/ Michael J. Sacksteder
`
`(Signature of petitioner, appellant
`or attorney)
`
`Fenwick & West LLP
`
`555 California Street, 12th Floor
`
`San Francisco, CA 94104
`
`(415) 875-2300 msacksteder@fenwick.com
`
`(Address, phone number and e-mail of petitioner, appellant or attorney)
`
`*See Fed. R. App. P. 15 (a) (2) for permissible ways of identifying petitioners.
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 42
`Entered: January 2, 2019
`
`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.
`
`FINAL WRITTEN DECISION
`35 US. C. § 328(a) and 37 C.F.R. § 42. 73
`
`
`
`PGR2018—00008
`
`Patent 9,597,594 B2
`
`1.
`
`INTRODUCTION
`
`_
`
`A.
`
`Background
`
`Supercell Oy (“Petitioner”) filed a Petition (“Pet”) for post-grant
`
`review of claims 1—20 of US. Patent No. 9,597,594 B2 (“the ’594 patent”)
`
`(Ex. 1001) pursuant to 35 U.S.C. §§ 321—329. Paper 1. GREE Inc. (“Patent
`Owner”) filed a Preliminary Response (“Prelim Resp”). Paper 7. With
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`authorization from the Board (Paper 11), Petitioner filed a Reply to Patent
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`Owner’s Preliminary Response (Paper 12) and Patent Owner filed a Sur-
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`Reply (Paper 13).
`
`On May 1, 2018, we ordered that “a post-grant review is hereby
`
`instituted for claims 1—20 of the ’594 patent with respect to all grounds set
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`'forth in the Petition.” Paper 15, 16 (“Dec”). After institution of trial, Patent
`
`Owner filed a Patent Owner Response (Paper 24, “PO Resp”), Petitioner
`
`filed a Reply (Paper 27, “Pet. Reply”), and, with Board authorization
`
`(Paper 30), Patent Owner filed a Sur-Reply (Paper 34, “PO Sur-Reply”).
`
`Patent Owner also filed a Motion to Exclude Evidence (Paper 35;
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`“PO Mot”), to which Petitioner filed an Opposition to Patent Owner’s
`
`Motion to Exclude Evidence (Paper 39; “Pet. Opp”), and Patent Owner filed
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`a Reply to Opposition to Motion to Exclude (Paper 40; “PO Reply”). An
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`oral hearing was held on November 28, 2018. Paper 41 (“TL”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`
`Decision, after reviewing all relevant evidence and assertions, we determine
`
`that Petitioner has met its burden of showing, by a preponderance of the
`
`evidence, that claims 1, 8, and 10—20 of the ’594 patent are unpatentable.
`
`We determine further that Petitioner has not met its burden of showing, by a
`
`-
`
`9
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`
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`PGR2018-00008
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`Patent 9,597,594 B2
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`preponderance .of the evidence, that claims 2-7 and 9 of the ’594 patent are
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`unpatentable. We further grant Patent Owner’s Motion to Exclude.
`
`B.
`
`Related Proceedings
`
`Petitioner identifies the following matter: GREE, Inc. v. Supercell
`
`KK, Case 2017 (Yo) No. 22046 in Tokyo District Court, associated with
`
`related patent JP 5,676,032, which relates to PCT/JP20l4/07673. Pet. 2';
`
`Ex. 1001 , (63) (the ’594 patent also claiming priority to
`
`PCT/JP2014/07673).
`
`C.
`
`The ’594 patent
`
`The ’594 patent relates generally to a method of improving the
`
`usability of computer games, where a user builds and defends a virtual city,
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`by using templates to allow the user to more easily change game elements
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`within a game space. Ex. 1001, 1:42—60, 2:5—1 1. More specifically, the
`
`’594‘patent describes such a game where a user creates a city by arranging
`various game elements, where those various game elements may include
`facilities, characters, soldiers, weapons, cards, figures, avatars, and items.
`
`Ex. 1001, 4:26—29; 4:3 8—40. The user’s city may then be attacked by
`
`opposing players, and the layout and design of the user’s city becomes a
`
`factor in whether the user is able to defend successfully the city. Ex. 1001,
`
`1:44—49. According to the ’594 patent, as a player progresses in a game and
`
`expands their city within the game space, it becomes more complicated for a
`
`player to keep track of an ever—increasing number of game elements, for
`
`example, changes to the positions, types, and levels of those game elements.
`
`Ex. 1001, 1:50—55. To address this problem, the ’594 patent describes a
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`game play method where a user may modify the game space using templates
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`that can be applied to a predetermined area. Ex. 1001, 1:61—2:10. Hence, a
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`
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`PGR2018-00008
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`Patent 9,597,594 B2
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`user is able to automatically rearrange a group of game elements to match a
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`predesigned template. Ex. 1001, 4:34—37.
`
`D.
`
`Illustrative Claim
`
`Claims 1—20 are pending and challenged, of which claims 1, 10, 11,
`
`and 12 are independent. Independent claim 12, which is representative, is
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`reproduced below:
`
`12. A device in communication with a server, comprising:
`
`a memory device storing game software instructions; and
`
`one or more hardware processors configured to execute
`the game software instructions perform operations including:
`
`storing first positions of game contents;
`
`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,
`
`storing the created template in the memory device, and
`
`applying the template to a1 predetermined area within the
`game space based on a template application command by the
`game player.
`
`E.
`
`The Alleged Ground of Unpatentability
`
`The Petition asserts that claims 1—20 of the ’594 patent are
`
`unpatentable as being directed to patent ineligible subject matter. Pet. 16—
`
`38.
`
`F.
`
`Eligibility ofPatentfor Post-Grant Review
`
`The post-grant review provisions of the Leahy-Smith America Invents
`
`Act (“AIA”)1 only apply to patents subject to the first inventor to file
`
`provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the first inventor to
`
`1 Pub L. No. 112-29, 125 Stat. 284 (2011).
`
`
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`PGR2018—00008
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`Patent 9,597,594 B2
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`file provisions apply to any application for patent, and to any patent issuing
`thereon, that contains or contained at any time a claim to a claimed invention
`
`that has an effective filing date on or after March 16, 2013. AIA § 3(n)(l).
`
`Furthermore, “[a] petition for a post—grant review may only be filed not later
`
`than the date that is 9 months after the date of the grant of the patent or of
`
`the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
`
`see also 37 CPR. § 42.202(a) (setting forth the same).
`
`Petitioner asserts that the instant Petition was filed within nine months
`
`of the March 21, 2017, issue date of the ’594 patent. Pet. 2. Further, the
`
`application that issued as the ’594 patent was filed on December 30, 2015.
`
`Ex. 1001, (22). Patent Owner does not dispute that the ’594 patent is
`
`‘
`
`eligible for post—grant review. See generally PO Resp. We find that the
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`’594 patent is eligible for post-grant review.
`
`11.
`
`ANALYSIS OF GROUND 'OF UNPATENTABILITY
`
`We now turn to Petitioner’s asserted ground of unpatentability to
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`determine whether Petitioner has met its burden of showing, by a
`
`preponderance of the evidence, that each of claims 1—20 are unpatentable.
`35 U.S.C. § 326(e).
`‘
`
`A.
`
`Claim Construction
`
`In this post-grant review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`
`in which it appears. 37 C.F.R. § 42.200(b); see also Cuozzo Speed Techs.,
`
`
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`PGR2018-00008
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`Patent 9,597,594 B2
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`LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016).2 Under the broadest
`
`reasonable construction standard, claim terms generally are given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in "the context of the entire disclosure. In re Translogic Tech,
`Inc, 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, a “claim term will not i
`receive its ordinary meaning if the patentee acted as his own lexicographer
`and clearly set forth a definition ofthe disputed claim term in either the
`specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp,
`288 F.3d 1359, 1366 (Fed. Cir. 2002). We determine that only the following
`
`claim term, “template,” needs express construction. See Vivid Techs, Inc. v.
`
`Am. Sci. & Eng ’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
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`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
`
`Independent claim 12 recites “a template defining game contentsand
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`second positions of one or more of the game contents arranged in a game
`
`space.” Independent claims 1, 10, and 11 each recite similar limitations.
`
`‘ Petitioner asserts that “[a] template is a record of the positions of one or
`
`more game pieces in a game that can be applied in other game spaces.”
`Pet. 13 (citing Ex. 1001 , 2:2—3). In support, Petitioner cites numerous
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`portions of the ’594 patent. Pet. 13—16 (citing Ex. 1001, 6:28—45, 6:50—57,
`
`7:4—15, 7:37—48, 8:18—24, 11:29—33, 16:25—35, 17:42—56, 18252—19z9, Figs.
`
`3A—3E).
`
`2 For petitions filed on or after November 13, 2018, the Phillips standard
`will be applied. Changes to the Claim Construction Standardfor
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to be codified at 37 C.F.R. pt.
`42).
`
`
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`PGR2018—00008
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`Patent 9,597,594 B2
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`While not squarely rooted in a claim construction, Patent Owner
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`repeatedly makes a variation of the following argument: “[t]he claim recites
`
`that the ‘template’ defines both ‘game contents’ and their ‘second positions,’
`
`providing limits to the structure and composition of the template.” PO Resp.
`
`20; see, e. g., PO Resp. 27 (referencing “[t]he use of templates storing game
`
`. .”); PO Sur—Reply 9—10 (“[T]he claims
`.
`contents and positions thereof .
`recite, for example, a template ‘defining game contents and second positions.
`
`of one or more of the game contents.’”).
`
`We determine that these proposed constructions of “template” are
`
`misplaced, in that they are largely no more than regurgitations'of claim
`
`language. Put simply, we are unpersuaded that the term “template” itself has
`
`anything to do with “game contents” and “second positions.” To be sure, the
`
`claim limitations related to “game contents” and “second positions” further
`
`limit “template” within the context of the claim, and must be considered.
`
`They are considered, however, as claim terms themselves, and not as a part
`
`of a definition of “template.”
`
`As a part of its construction of “template,” however, Petitioner does
`
`assert that “[a] template is a record .
`
`.
`
`. .” Pet. 13 (citing Ex. 1001, 222—3);
`
`see also Pet Reply 9 (“The challenged independent claims recite nothing
`
`more than automating tasks that can be performed manually by a human,
`
`including record keeping of the location of one or more game pieces
`
`(‘creating a template’ and ‘storing’ the template information).”). Although
`not set forth expressly as“ a claim construction, Patent Owner repeatedly uses
`the term “data structure” in connection with the claimed “template.” See,
`e.g., PO Resp. 33 (referencing “use of data structures implemented as
`templates”), 35 (“[T]he claim use of templates .
`.
`. is a data structure”). At
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`
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`PGR2018—00008
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`Patent 9,597,594 B2
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`oral argument, Patent Owner confirmed its position that a “template” was a
`
`“data structure.” Tr. 43 : 1 5-442. No party has identified any substantive
`
`difference between “record” and “data structure,” and we do not find any, as
`
`a record appears to be no more than a structure for storing data.
`
`In its most relevant definition, Merriam Webster’s Collegiate
`
`Dictionary defines “template” as “something that establishes or serves as a
`
`pattern.” Merriam Webster’s Collegiate Dictionary 1286 (11th ed. 2007)
`
`(Ex. 3004). The Authoritative Dictionary of IEEE Standard Terms defines
`
`“template matching” as follows: “(A) An image processing technique in
`
`which patterns or shapes are detected by comparison with pre—specified
`
`patterns or shapes called templates. See also: image matching. (B) A pattern
`recognition technique using the principle described in definition (A).” The
`Authoritative Dictionary of IEEE Standard Terms 1161 (7th ed., IEEE Press
`2000) (Ex. 3003). The common theme in these dictionary definitions is that
`a “template” includes a “pattern,” which also denotes data set forth in a
`
`structure, and thus is consistent with the features of both a “record” and
`
`“data structure.”
`
`We have considered the parties’ citations to portions of the claims and
`
`specification of the ’594 patent that use the term “template,” and find that
`
`they are consistent with “record.” Accordingly, for all of the foregoing
`
`reasons, we construe a “template” as a “record.”
`
`Petitioner’s Lack of Testimonial or Extrinsic Evidence
`B.
`Patent Owner asserts that Petitioner’s failure to provide relevant
`
`testimonial or extrinsic evidence compels a conclusion that Petitioner has ,
`
`failed to meet its burden that the challenged claims are unpatentable.
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`PO Resp. 12—13. Patent Owner asserts that this is so especially for
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`PGR2018-00008
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`Patent 9,597,594 B2
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`Petitioner’s assertions that certain claim elements are “well—understood,
`routine, conventional.” PO Sur—Reply 2—4 (citing Ex. 2004 11 34, Exs. 1011,
`
`1012). Petitioner responds that expert testimony is sometimes unnecessary
`to establiShineligibility under 35 U.S.C. § 101, for example, when there is
`
`no genuine issue of material fact or when the specification itself provides the
`
`requisite evidence. Pet. Reply 4—5. As an initial matter, we note that
`
`Petitioner has provided some extrinsic evidence, for example, Exhibits
`
`1003—1005, 1011, 1012, and 1015, as well as testimonial evidence in the
`
`form of the deposition testimony of Mr. Crane. That aside, however, we
`
`agree with Petitioner’s contention that such extrinsic evidence is not always
`necessary for the reasons stated.
`
`Even with respect to a disputed factual inquiry as to whether a claim
`
`element is “well—understood, routine, conventional,” the Federal Circuit has
`
`repeatedly held that intrinsic evidence can be dispositive. See, e. g.,
`
`Intellectual Ventures I LLC v. Symantec Corp, 838 F.3d 1307, 1317 (Fed.
`
`Cir. 2016) (“The written description is particularly useful in determining
`
`what is well-known or conventional”); Internet Patents Corp. v. Active
`
`Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (relying on
`
`specification’s description of additional elements as “well-known,”
`“common,” and “conventional”); TLI Commc ’ns LLC v. AVAuto. LLC, 823
`
`F .3d 607, 614 (Fed. Cir. 2016) (specification describing additional elements
`
`as “either performing basic computer functions such as sending and
`
`receiving data, or performing fimctions ‘known’ in the art”). The Federal
`
`Circuit further has used case law, when appropriate, to satisfy the inquiry as
`
`well. TLI Commc ’ns, 823 F.3d at 614 (citing Alice Corp. v. CLS Bank Int ’1,
`
`573 US. 208, 216 (2014) and other Federal Circuit cases to satisfy factual
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`
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`PGR2018—00008
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`Patent 9,597,594 B2
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`inquiry that adding generic computer components to an abstract idea is not
`
`an inventive concept).
`
`To be sure, if there is a disputed factual inquiry where the intrinsic
`
`evidence and case law are silent, Petitioner’s lack of relevant testimonial and
`
`extrinsic evidence can be fatal, especially where Patent Owner has provided
`pertinent countervailing evidence. We determine here, however, that
`
`Petitioner has satisfied its evidentiary burden with the evidence and
`
`testimony of record.
`
`C.
`
`Weight to be Aflorded Mr. Crane ’s Testimony
`
`Petitioner asserts that the testimony of Patent Owner’s declarant,
`
`Mr. Crane, deserves no weight because (1) Mr. Crane does not provide the
`
`underlying facts or data for some of his findings as required by 37 CPR.
`
`§ 42.65(a); (2) Mr. Crane fails to address the specific language of the claims
`at issue; and (3) Mr. Crane admits that he did not opine on any aspect
`-
`
`relevant to step two of the Alice inquiry. Pet. Reply 6-8 (citing Ex. 2004
`
`W 18, 31; Ex. 1010, 37:17—42:10, 44:7—52z24, 53:2—55:7,117:11—118:9).
`
`Patent Owner responds that (1) Petitioner has not identified any particular
`
`facts or data that are allegedly lacking; (2) the underlying factual basis for all
`
`of Mr. Crane’s testimony is his “training, knowledge, and experience in the
`
`relevant art,” which Petitioner has not challenged; (3) Mr. Crane did address
`
`certain claim limitations; and (4) Mr. Crane is offered as a fact witness, not a
`
`legal one, and some uncertainty about the legal formulation of steps in the
`Alice inquiry is irrelevant. PO Sur-Reply 4—7 (citing Ex. 2004 1111 3, 15, 32—
`
`47; Ex. 1010, 36:21-37:15). We have reviewed all the cited testimony, and
`
`agree with Patth Owner.
`
`10
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`PGR2018-00008
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`Patent 9,597,594 B2
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`More specifically, we disagree with Petitioner that every aspect of a
`declarant’s testimony requires articulated underlying facts or data specific to
`
`that testimony. We agree with Patent Owner that, in many instances, a
`
`declarant’s background can be sufficient. To the extent we determine that
`
`any testimony lacks adequate support, we discount the weight accorded that
`
`testimony appropriately.
`
`We also agree with Patent Owner that Mr. Crane is offered as a
`
`technical expert with respect to specific inquiries for certain claim terms,
`
`and is not expected to display the same command of legal doctrines as a
`
`lawyer. We note, however, that Petitioner’s characterization that Mr. Crane .
`
`“failed to address [Alice] step two” is incorrect. Ex. 1010, 47:15—20 (“THE
`WlTNESS: As I said, there’s no section of my declaration that specifically
`
`applies that second standard of the legal standard. But I just pointed out, and
`
`I’ll reiterate, that there are sections in my declaration that may be used to
`
`help someone try to answer that question”).
`
`D.
`
`Claims [—20 as Directed to Patent Ineligible
`Subject Matter Under 35 US. C. § 101
`
`Petitioner contends that claims 1—20 do not recite patent eligible
`subject matter under 35 U.S.C. § 101. Pet. 16-38 (citing Exs. 1001, 1003).
`Patent Owner disagrees. PO Resp. 12—48 (citing Exs. 1001, 1003, 2004,
`
`2006—2011). Petitioner replies. Pet. Reply 8-24 (citing Exs. 1001’, 1009—
`
`1012, 2004). Patent Owner responds. PO Sur-Reply 8—22 (citing
`Exs. 1001,2004).
`
`I .
`
`Relevant Law
`
`An invention is patent eligible if it claims a “new and useful process,
`
`machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
`
`However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
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`11
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`PGR2018-00008
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`Patent 9,597,594 B2
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`implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
`
`ideas” are not patentable. E. g., Alice, 573 U.S. at 216.
`
`In determining whether a claim falls within an excluded category, we
`are guided by the Supreme Court’s two-step framework, described in Mayo
`
`and Alice. Id. at 217—218 (citing Mayo Collaborative Servs. v. Prometheus
`
`Labs, Inc, 566 U.S. 66, 75—77 (2012)). In accordance with that framework,
`
`we first determine what concept the claim is “directed to.” See Alice, 573
`
`U.S. at 219 (“On their face, the claims before us are drawn to the concept of
`
`intermediated settlement, i.e., the use of a third party to mitigate settlement
`
`risk”); see also Bilskz' v. Kappos, 561 U.S. 593, 61 1' (2010) (“Claims 1 and 4 '
`
`in petitioners’ application explain the basic concept of hedging, or protecting
`
`against risk”).
`
`Concepts determined to be abstract ideas in the § 101 analysis include
`
`certain methods of organizing human activity, such as, fundamental
`
`economic practices (Alice, 573 U.S. at 219-220; Bilski, 561 U.S. at 611);
`
`mathematical formulas (Parker v. Flook, 437 U.S. 584, 594—95 (1978); and
`
`mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
`
`determined to be patent eligible include physical and chemical processes,
`
`such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
`
`(1981)), “‘tanning, dyeing, making waterproof cloth, vulcanizing India'
`
`rubber, smelting ores’” (id. at 184 n.7 (citing Corning v. Burden, 56 U.S.
`
`252, 267—268 (1854)), and manufacturing flour (Benson, 409 U.S. at 69
`
`(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876)).
`
`In Diehr, the claim at issue recited a mathematical formula, but the
`
`Supreme Court held that “[a] claim drawn to subject matter otherwise
`
`statutory does not become nonstatutory simply because it uses a
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`12
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`Patent 9,597,594 B2
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`mathematical formula .
`
`.
`
`. .” Diehr, 450 US. at 176; see also id. at 192
`
`(“We View respondents’ claims as nothing more than a process for molding
`rubber products and not as an attempt to patent a mathematical formula”).
`
`Having said that, the Supreme Court also indicated that a claim “seeking
`
`patent protection for that formula in the abstract .
`.
`. is not accorded the
`protection of our patent laws, .
`.
`. and this principle cannot be circumvented
`
`by attempting to limit the use of the formula to a particular technological
`environment.” Id. (citing Benson, Flook).
`i
`If the claim is “directed to” an abstract idea, we turn to the second
`
`step of the Alice and Maya framework, where “we must examine the
`
`elements of the claim to determine whether it contains an “inventive
`
`concept” sufficient to ‘transform’ the claimed abstract idea into a patent-
`eligible application.” Alice, 573 US. at 221. “[M]erely requir[ing] generic
`
`computer implementationfl fail[s] to transform that abstract'idea into a
`
`patent-eligible invention.” Id.
`
`2.
`
`Whether the Claims Are “Directed t0 ” an Abstract Idea
`
`a.
`
`Petitioner is Initial Analysis
`
`Petitioner asserts that the claims are directed to “creating and applying
`
`a template.” Pet. 20, 21. Petitioner asserts that “creating and applying a
`
`template” is an abstract idea because it (1) “consists entirely of mental steps
`that can be carried out by a human, either mentally, using pen and paper, or
`
`with real-world game pieces”; (2) is merely “automating [a] manually-
`
`achievable purpose[ ]”; and (3) “cannot be considered to be directed to an
`
`improvement in computer technology because neither the claims nor the
`
`specification recites any new technology, new process, or improvement to
`
`existing technologies.” Pet. 16-28..
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`Patent 9,597,594 B2
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`For support, Petitioner provides a reasoned analysis as to why “[t]he
`
`.-
`.
`’594 patent’s claimed concept of creating and applying a template .
`consists entirely of mental steps that can be carried out by a human, either
`
`mentally, using pen and paper, or with real-world game pieces.” Pet. 21—23.
`
`Petitioner additionally directs us to Planet Bingo, LLC v. VKGS LLC, 576 F.
`App’x 1005, 1005—1007 (Fed. Cir. 2014) (“The .
`.
`. patents claim managing
`a bingo game while allowing a player to repeatedly play the same sets of
`
`‘ numbers in multiple sessions”). Petitioner asserts that the claims in Planet
`
`Bingo are sufficiently analogous to the claims of the ’594 patent, in that both
`
`sets of claims reasonably are characterized as directed to the same general
`concept of repeatedly applying a template to a game space.
`A
`
`As further evidence, Petitioner analogizes the current claims to a
`
`game of correspondence chess, as described in A Guide to Correspondence
`
`Chess in Wales. Pet. 21, 22 (citing Ex. 1003). In correspondence chess, a
`
`player records the current state of the chess game, indicates the player’s next
`
`move on a post card, and sends the post card to a second player who will
`
`modify their game board to reflect the updated state of the chess game. Pet.
`
`21, 22 (citing Ex. 1003). Petitioner asserts that, in creating the post card, the
`first player creates a template defining game contents, stores the created
`
`template, and allows a second player to apply the template to a
`predetermined area. Pet. 22. In this way, Petitioner asserts that
`correspondence chess is evidence that the “claimed process is a well—known
`mental process and method of organizing human activity — and is, therefore,
`
`abstract.” Id. at 23.
`
`14
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`Patent 9,597,594 B2
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`13.
`
`Patent Owner ’sAssertions Concerning
`What the Claims are “Directed to ”
`
`Patent Owner asserts that independent claim 12 is not representative,
`in that the various claims recite unique limitations not recited in independent
`
`claim 12. PO Resp. 17—19. Patent Owner asserts that even for independent
`
`claim 12, Petitioner has failed to address all of the claim limitations.
`
`PO Resp. 19—2 1. Petitioner responds that independent claim 12 indeed is
`
`representative, and that Patent Owner has not shown how any of the unique
`
`limitations identified for the other independent claims indicate that
`
`independent claim 12 is not representative. Pet. Reply 5—6. We agree with
`
`Petitioner, in that Patent Owner’s assertions are misplaced.
`
`Fundamentally, we view Patent Owner’s assertion as comprising two
`
`sub—assertions. First, Patent Owner appears to be asserting that every claim
`
`limitation must be accounted for in a subject matter eligibility analysis. We
`
`agree. That, however, has nothing to do with whether a particular claim is
`
`representative.
`
`Second, Patent Owner appears to be asserting that independent claim
`
`12 is the broadest claim, and by selecting the broadest claim, Petitioner’s
`
`formulation of the concept independent claim 12 is “directed to” is also.
`
`broad, in that it does not account for every claim limitation in, for example,
`
`the dependent claims. Identifying the concept to which the claim is
`
`“directed” merely addresses some claim limitations in connection with the
`
`first aspect of the Alice inquiry. While every claim limitation certainly must
`
`be accounted for somewhere in the § 101 analysis, there is no mandate that
`
`every claim limitation be addressed in connection with identifying the
`
`concept to which the claim is “directed,” i.e., as part of Alice step 1. Some
`
`limitations may be addressed in Alice step 2.
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`15
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`PGR2018—00008
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`Patent 9,597,594 B2
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`1'.
`
`Frameworkfor Formulating What a Claim is “Directed to ”
`
`To better illustrate this framework, it is instructive to consider the
`
`Supreme Court’s approach in Bilskz' and Alice in formulating the concept that
`
`a claim is “directed to.” In Bilskz', representative independent claim 1 recites
`
`at least 92 words. The Supreme Court reduced the concept down to between
`
`one and three words, depending on how you count them, in determining
`
`what independent claim 1 is “directed to.” Bilski, 561 US. at 611 (“Claims
`
`1 and 4 in petitioners’ application explain the basic concept of hedging, or
`
`protecting against risk”). In Alice, the Supreme Court clarified that the
`
`series of steps, and hence claim limitation equivalents, in Bilski considered
`
`to be accounted for in the concept of “hedging risk” were as follows
`
`“(1) initiating a series of financial transactions between providers and
`
`consumers of a commodity; (2) identifying market participants that have a
`
`counterrisk for the same commodity; and (3) initiating a series of
`
`transactions between those market participants and the commodity provider
`
`to balance the risk position of the first series of consumer transactions.”
`
`Alice, 573 US. at 218—219.
`
`In Alice, representative independent claim 33 recites 198 words. Id. at
`
`213 n.2. The Supreme Court reduced the concept down'to between two and
`
`ten words, depending on how you count them. Id. at 219 (“On their face, the
`
`claims before us are drawn to the concept of intermediated settlement, i.e.,
`
`the use of a third party to mitigate settlement risk”). The series of steps, and
`
`hence claim limitation equivalents, accounted for in Alice by “intermediated
`
`settlement” appear to be as follows:
`
`[A] method of exchanging financial obligations between two
`parties using a third—party intermediary to mitigate settlement
`risk. The intermediary creates and updates “shadow” records to
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`16
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`Patent 9,597,594 B2
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`the value of each party’s actual accounts held at
`reflect
`“exchange
`institutions,”
`thereby
`permitting
`only
`those
`transactions for which the parties have sufficient resources. At
`the end of each day,
`the intermediary issues irrevocable
`instructions to the exchange institutions to carry out
`the
`permitted transactions.
`
`Id. at 219. The Supreme Court further indicated that what was not
`
`accounted for by “intermediated settlement,” and thus needed to be
`” “
`
`accounted for in step two of Alice, included “a computer,
`
`a computer
`
`system,” and “a computer-readable medium containing program code.” Id.
`
`at 221—224.
`
`The Federal Circuit recently elaborated that formulating the concept a
`
`claim is “directed to” requires a careful reading of the claim as a whole in
`
`light of the specification. Data Engine Techs. LLC v. Google LLC, 906 F.3d
`
`999, 1011 (Fed Cir. 2018). In doing so, the Federal Circuit indicated that “it
`is not enough to merely identify a patent-ineligible concept underlying the
`
`1
`
`cla
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