`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Filed on behalf of Supercell Oy
`
`By:
`
`RAJIV P. PATEL, Reg. No 39,327
`BRIAN HOFFMAN, Reg. No. 39,713
`JENNIFER R. BUSH, Reg. No. 50,784
`KEVIN X. McGANN, Reg. No. 48,793
`MICHAEL J. SACKSTEDER (pro hac vice)
`GEOFFREY R. MILLER (pro hac vice)
`EMILY J. BULLIS (pro hac vice)
`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.
`
`
`Case No. IPR2020-01633
`Patent 9,079,107 B2
`_____________
`PETITIONER’S SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST (37 CFR § 42.63(e)) ..................................................................... iii
`I.
`Patent Owner’s Improper Gamesmanship Is Clear ........................................ 1
`II.
`The Overlap factor favors institution ............................................................. 3
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`Apple, Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) ........................................ 3
`Brain Life, LLC v. Elekta Inc.,
`746 F.3d 1045 (Fed. Cir. 2014) ............................................................................ 3
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 4
`OTHER AUTHORITIES
`37 C.F.R. § 42.11(a) ................................................................................................... 1
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`ii
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`EXHIBIT LIST (37 CFR § 42.63(E))
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`Exhibit
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`Description
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`1001
`1002
`1003
`1004
`
`1005
`
`U.S. Patent No. 9,079,107 to Oono
`Prosecution History of U.S. Patent No 9,079,107
`Declaration of Dr. Emmet J. Whitehead, Jr.
`U.S. Patent Application Publication No. 2011/0300926 A1 to Englman
`et al.
`U.S. Patent Application Publication No. 2013/0190094 A1 to Ronen
`et al.
`U.S. Patent No. 8,376,838 B2 to Schulhof et al.
`1006
`U.S. Patent No. 7,824,253 B2 to Thompson et al.
`1007
`1008 World of Warcraft, Guild Advancement and You, (Jan. 21, 2011),
`https://worldofwarcraft.com/en-us/news/2113741/guild-advancement-
`and-you
`Arc Games, Forsaken World – Overview – Guild Contribution,
`(Mar. 29, 2011), https://www.arcgames.com/en/games/forsaken-
`world/news/detail/1077620-forsaken-world-___-free-mmorpg-___-
`overview-_-guild-contribution
`1010 MMORPG, Divina – Unique Guild System, (May 12, 2012),
`https://www.mmorpg.com/divina/developer-journals/unique-guild-
`domain-system-2000093507
`U.S. Patent Application Publication No. 2014/0024462 A1 to Qiang et al.
`U.S. Patent Application Publication No. 2012/0157212 A1 to Kane et al.
`Curriculum Vitae for Dr. Emmet J. Whitehead, Jr.
`Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, Patents Post-Grant (July 24, 2020),
`https://www.patentspostgrant.com/district-court-trial-dates-tend-to-slip-
`after-ptab-discretionary-denials/
`
`1009
`
`1011
`1012
`1013
`1014
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`iii
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`Exhibit
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`Description
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`1015
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`1016
`
`1017
`
`1018
`
`1019
`
`Scott McKeown, Congress Urged to Investigate PTAB Discretionary
`Denials, Patents Post-Grant (June 30, 2020),
`https://www.patentspostgrant.com/congress-urged-to-investigate-ptab-
`discretionary-denials/
`Order (Granting Continuance of In-Person Jury Trials) (Dkt. 261),
`entered on November 20, 2020, Infernal Technology, LLC, et al. v. Sony
`Interactive Entertainment LLC, Case. No. 19-cv-00248 (E.D. Texas)
`Katie Buehler, COVID-19 Outbreak Leads to Mistrial in EDTX, Law360
`(Nov. 17, 2020), https://www.law360.com/articles/1329617/covid-19-
`outbreak-leads-to-mistrial-in-edtx
`Sixth Amended Docket Control Order [Dkt 94], entered on October 23,
`2020, Case No. 19-cv-00311 (E.D. Texas)
`GREE, Inc.’s Amended Disclosure of Asserted Claims and Infringement
`Contentions, served on August 3, 2020, Case No. 19-cv-00311
`(E.D. Texas)
`1020 Minute Order re Markman Hearing [Dkt 73], entered on September 1,
`2020, Case No. 19-cv-00311 (E.D. Texas) (resulting in Claim
`Construction Memorandum Opinion and Order [Dkt 86], entered on
`October 13, 2020)
`E-mail from Lee Matalon, Law Clerk to Chief Judge Rodney Gilstrap, to
`Petitioner and Patent Owner counsel, Case No. 19-cv-00311 (E.D.
`Texas) (March 17, 2021)
`Updated Section D, Contentions of the Parties, to the Parties Joint
`Pretrial Order [Dkt 222], filed on March 12, 2021, Case No. 19:cv-00311
`(E.D. Texas)
`GREE, Inc.’s Disclosure of Asserted Claims and Infringement
`Contentions, served on January 28, 2020, Case No. 19-cv-00311 (E.D.
`Texas)
`Patent Owner’s Response to Petitioner’s Additional Briefing Regarding
`Overlap Factor, filed on March 15, 2021, PGR2020-00043 (P.T.A.B.)
`
`1021
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`1022
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`1023
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`1024
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`iv
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`IPR2020-01633
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`Exhibit
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`1025
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`
`
`Description
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`Email from Michael Morlock to Fenwick & West, February 22, 2021
`regarding reduction to claims at issue, GREE, Inc. v. Supercell Oy, ED
`Texas Case Nos. 2:19-cv-00200, -00237, -00310, -00311
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`v
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`I.
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`PATENT OWNER’S IMPROPER GAMESMANSHIP IS CLEAR
`Patent Owner’s Response (referred to by the Board as a “Reply”) does nothing
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`to assuage the perception that it misled the Board regarding overlap with the parallel
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`litigation by dropping claims from the parallel institution after the Board’s
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`discretionary denial of institution. The Board’s reliance on Patent Owner’s
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`misleading statements caused it to misapprehend or overlook the true lack of
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`overlap. Decision at 12. Granting rehearing is therefore the appropriate course of
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`action. Otherwise, the Board’s commitment to evaluating efficiency, fairness, and
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`the merits would be thwarted; Patent Owner would benefit from its gamesmanship;
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`and other Patent Owners would likely use the same tactics in subsequent PTAB
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`proceedings.
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`Patent Owner’s primary excuse is it “followed [the] common practice of
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`selecting the claims it will present to the jury…given the district court’s directives
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`in view of its time limits on trials.” Patent Owner Response to Request for Rehearing
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`(“PO Response”) at 2. But if Patent Owner knew in advance it would need to limit
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`the asserted claims due to “time limits on trials,” it should have informed the Board
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`of this fact. “Parties and individuals involved in the proceeding have a duty of
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`candor and good faith to the Office during the course of a proceeding.” 37 C.F.R. §
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`42.11(a). Here, Patent Owner did not act accordingly. Rather, it created a perception
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`that all of the issues in the IPR would also be addressed at trial, telling the Board
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`1
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`IPR2020-01633
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`there was “substantial overlap between the claims, grounds, arguments, and
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`evidence presented in the Petition and what has been, and continues to be, litigated
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`in the parallel district court proceeding.” POPR at 21.
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`Even now, Patent Owner is seemingly attempting to mislead the Board on this
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`issue. The Model Order quoted and relied upon by Patent Owner in its Response
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`was not entered in the parallel litigation. See PO Response at 5; Ex. 2016. Thus
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`Patent Owner was not, and is not, bound by the limitations on asserted claims
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`described therein.
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`Moreover, the alleged exculpatory evidence provided by Patent Owner in
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`Exhibit 2017 demonstrates that Patent Owner was being cagey regarding the asserted
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`claims prior to the institution decision. Ex. 2017 at 2 (Supercell counsel: “I
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`understand that during the meet and confer yesterday, you represented that GREE
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`was only willing to agree to a non-final election of claims by February 12, 2021,
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`and that it intends to further narrow its claims after that date.”) (emphasis in
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`original). The fact of the matter is that Patent Owner was asserting claims 1 and 4-
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`6 on February 12. Then, on the first business day after the Board’s institution
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`decision, Patent Owner announced it was only asserting claims 1 and 6. Ex. 1025.
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`Patent Owner’s behavior undermines the rationale for discretionary denial.
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`“The Board recognizes…that it is often reasonable for a petitioner to wait to file its
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`petition until it learns which claims are being asserted against it in the parallel
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`2
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`proceeding.” Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11 (P.T.A.B.
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`March 20, 2020). But Patent Owner would have it such that the Petitioner never
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`knows which claims are actually being asserted in the parallel proceeding, because
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`Patent Owners could drop claims with impunity after discretionary denial.
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`II. THE OVERLAP FACTOR FAVORS INSTITUTION
`Patent Owner’s statement that trial involving only claims 1 and 6 “will resolve
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`key issues in the Petition” is simply wrong. PO Response at 3. “[T]he similarity of
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`the claims challenged in the petition to those at issue in the district court” is the core
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`issue under the overlap factor. Fintiv, IPR2020-00019, Paper 11 at 13. Petitioner
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`explained how the elected claims asserted in the litigation significantly differ from
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`the other claims challenged in the IPR. Request for Rehearing at 11-12. Yet Patent
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`Owner does not even touch on the substance of the claims in its Response. See PO
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`Response at 2-4.
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`Patent Owner’s insinuation that Petitioner is not prejudiced by the continued
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`validity of the non-elected claims is likewise incorrect. Patent Owner tellingly fails
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`to provide a stipulation or other commitment to never assert the non-elected claims
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`against Petitioner. As a result, Petitioner remains under threat of continued attack
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`using the non-elected claims even after the parallel litigation. See Brain Life, LLC v.
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`Elekta Inc., 746 F.3d 1045, 1059 (Fed. Cir. 2014) (raising the possibility that dropped
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`claims could be re-asserted against a different version of a previously litigated
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`product). In addition, Patent Owner could subsequently assert similar claims from
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`one or more of the numerous child patents and pending applications in this family.
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`These harms are not speculative in view of Patent Owner’s demonstrated
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`litigiousness.
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`Likewise, the public interest is harmed by Patent Owner’s duplicitous behavior.
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`Patent Owner could assert any or all of the non-elected claims against a third party not
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`involved in the parallel litigation. This is in part why the public has a “paramount
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`interest in seeing that patent monopolies . . . are kept within their legitimate scope.”
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`Request for Rehearing at 8 (citing Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144
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`(2016) (internal citation omitted)).
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`Accordingly, for the factors noted herein, granting Petitioner’s Request for
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`Rehearing and instituting Inter Partes review would be proper in this matter.
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`Dated: April 14, 2021
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`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
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`IPR2020-01633
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
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`CERTIFICATION OF SERVICE ON PATENT OWNER
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`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
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`Patent Owner’s Response to Petitioner’s Request for Rehearing and Exhibit 1025
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`were served on Patent Owner’s lead and back-up counsel in its entirety by electronic
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`service at the email addresses provided below:
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`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`FENWICK & WEST LLP
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`
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`/Rajiv P. Patel/
`Rajiv P. Patel
`Reg. No. 39,327
`Attorneys for Petitioner Supercell Oy
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`
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`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
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`Date: April 14, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
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