PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER (pro hac vice)
`BRIAN HOFFMAN, Reg. No. 39,713
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER (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. PGR2020-00052
`Patent 10,335,682 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. §42.208(c)
`
`
`
`

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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`
`TABLE OF CONTENTS
`
`Page
`
`I.
`The Fintiv Factors Favor Institution ............................................................... 1
`GSB Was Publicly Accessible ........................................................................ 6
`II.
`CONCLUSION ......................................................................................................... 8
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`i
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple v.Fintiv,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ............................... 1, 2, 4, 5
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 7
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .......................................................................................... 1
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) ............................................. 1
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) ....................................... 6, 7
`Sand Revolution II, LLC v. Continental Intermodal Group,
`IPR2019-01393, Paper 24 (P.T.A.B. Jun. 16, 2020) ........................................ 4, 5
`Sandov v. Abbie Biotechs.,
`IPR2018-00156, Paper 11 (P.T.A.B. Jun. 5, 2018) .............................................. 6
`Teva Pharmaceuticals USA, Inc., v. Corcept Therapeutics, Inc.,
`PGR2019-00048, Paper 19 (P.T.A.B. Nov. 20, 2019) ......................................... 2
`Uniloc United States v. Avaya Inc.,
`2017 U.S. Dist. LEXIS 168855 (E.D. Tex. April 19, 2017) ................................ 3
`Voter Verified, Inc. v. Premier Election Solns., Inc.,
`698 F.3d 1374 (Fed. Cir. 2012) ........................................................................ 6, 7
`STATUTES AND RULES
`35 U.S.C. § 321(c) ..................................................................................................... 2
`35 U.S.C. § 324(a) ................................................................................................. 1, 8
`OTHER AUTHORITIES
`Consolidated Trial Practice Guide at 73–74, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated; .................................... 7
`H. R. Rep. No. 112–98, pt. 1 (2011) .......................................................................... 1
`
`ii
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`

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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
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`1009
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`1010
`
`1011
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`1012
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`1013
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`1014
`
`U.S. Patent No. 10,335,682 to Eda
`
`File History of U.S. Patent No. 10,335,682
`
`U.S. Patent No. 9,597,594 to Eda
`
`File History of U.S. Patent No. 9,597,594
`
`Declaration of Mark L. Claypool, Ph.D.
`
`Correspondence Chess
`(2000)(selected pages)
`
`in America, Bryce C. Avery
`
`The History of Chess, From the Time of the Early Inventions of
`the Game in India, till the Period of its Establishment in
`Western and Central Europe, Duncan Forbes, LL.D.
`(Wm. H. Allen & Co. 1860)(selected pages)
`
`Microsoft Computer Dictionary, 4th Ed. (1999)
`
`U.S. Patent Pub. No. 2007/0105626 to Cho et al. (“Cho”)
`
`Gratuitous Space Battles Manual, Version 1.1, and related links
`(“GSB”)
`
`U.S. Patent No. 9,079,105 to Kim et al. (“Kim”)
`
`Curriculum Vitae of Mark L. Claypool, Ph.D.
`
`Declaration of Christopher Butler and associated Internet
`Archive materials
`
`Standing Order Regarding the Novel Coronavirus (COVID-19),
`E.D. Texas
`
`1015
`
`General Order 20-3, E.D. Texas
`
`iii
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`

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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`
`Exhibit
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`1016
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`1017
`
`1018
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`1019
`
`1020
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`1021
`
`1022
`
`
`
`Description
`
`Claim Construction Memorandum Opinion and Order, entered
`on May 14, 2020, Case Nos. 19-cv-00071, 19-cv-000161,
`19-cv-00200, and 19-cv-000237 (E.D. Texas)
`
`Scott McKeown, Congress Urged
`to Investigate PTAB
`Discretionary Denials, Patents Post-Grant (June 30, 2020)
`
`Scott McKeown, District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials, Patents Post-Grant (July 24,
`2020)
`
`Third Docket Control Order, entered July 28, 2020, Case Nos.
`19-cv-000161, 19-cv-00172, 19-cv-00200, and 19-cv-000237
`(E.D. Texas)
`
`Plaintiff's Opposition to Defendant's Motion for Relief re
`Governmental Restrictions re COVID-19 (19-00161), Dkt. 102
`
`Declaration of Cliff Harris
`
`Declaration of Tomoki Umeya
`
`iv
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`

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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`I.
`
`THE FINTIV FACTORS FAVOR INSTITUTION
`In exercising its discretion under 35 U.S.C. § 324(a), the Board should
`
`institute PGR proceedings for this strong petition to protect the public interest. The
`
`Supreme Court recognized that the public has a “‘paramount interest in seeing that
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`patent monopolies . . . are kept within their legitimate scope.’” Cuozzo Speed
`
`Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (internal cite omitted). Congress
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`intended the PGR process to directly further this interest. H.R. Rep. No. 112–98,
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`pt. 1, at 47-48 (2011). The Board likewise recognizes that the goals of the AIA are
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`“to improve patent quality and make the patent system more efficient by the use of
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`post-grant review procedures.” General Plastic Industrial Co., Ltd. v. Canon
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 16 (P.T.A.B. Sept. 6, 2017).
`
`The public’s paramount interest is at the forefront of the present institution
`
`decision. The Board issued a Final Written Decision in the parent ’594 patent
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`finding that the independent claims failed to recite statutory subject matter.
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`PGR2018-00008, Paper 42 at 49 (P.T.A.B. Jan. 2, 2019). Yet the USPTO issued
`
`the instant patent months later, despite the issued claims not being patentably
`
`distinct from those of the ‘594 patent. Pet. at 23-25. Nevertheless, GREE asserted
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`the patent – as well as eight other related patents – against Petitioner in district
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`court immediately upon issue. This chain of events risks a breakdown of the patent
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`system with respect to patent quality, should the Board deny the Petition, by
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`1
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`eliminating the early-stage challenge Congress intended as the remedy for exactly
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`this situation.
`
`GREE’s twisted application of the six Fintiv factors to the instant PGR
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`undermines this paramount interest. When evaluating IPR institution due to an
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`early trial date, the Board conducts “a ‘balanced assessment of all relevant
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`circumstances of the case, including the merits,’” and considers “whether
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`efficiency, fairness, and the merits support the exercise of authority to deny
`
`institution in view of an earlier trial date in the parallel proceeding.” Apple v.
`
`Fintiv, IPR2020-00019, Paper 11 at 5-6 (P.T.A.B. Mar. 20, 2020) (Precedential).
`
`First, to the extent that the Fintiv factors even apply to PGRs, the balancing
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`should be tilted against discretionary denial. PGRs are time-limited by statute to
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`nine months after institution. 35 U.S.C. § 321(c). Moreover, “[t]he AIA explicitly
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`contemplates . . . that a party may choose to seek post grant review of a patent that
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`is involved in concurrent litigation.” Teva Pharmaceuticals USA, Inc., v. Corcept
`
`Therapeutics, Inc., PGR2019-00048, Paper 19 at 8-12 (P.T.A.B. Nov. 20, 2019).
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`Denying institution based on a district court setting a trial date before the FWD
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`deadline effectively prevents the patent from ever being subject to a PGR, allowing
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`patent owners to sidestep PGRs altogether by filing in fast-moving jurisdictions.
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`Second, proper application of the Fintiv factors demonstrates that the Board
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`should not exercise its discretion. With respect to the “stay” factor, institution by the
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`2
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`PTAB “has been treated as a highly significant factor in the courts’ determination of
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`whether to stay cases pending PTAB review.” Uniloc United States v. Avaya Inc.,
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`2017 U.S. Dist. LEXIS 168855, *10-11 (E.D. Tex. April 19, 2017). Indeed, GREE
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`acknowledges that E.D. Texas district court commonly denies motions to stay when
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`the PTAB has yet to institute. POPR at 10. Thus, Petitioner has not yet sought a stay
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`but will do so should the PGR be instituted.
`
`While the trial date is currently scheduled to occur before the statutory
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`deadline for the FWD, this factor should be afforded little weight. The date is less
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`than 18 months after the patent issued and very likely to change. GREE urges the
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`Board to take the schedule “at ‘face value’” (POPR at 12) yet GREE’s counsel
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`publicly acknowledges that “Patent Owners are quick to point to a looming district
`
`court trial date as being set in stone, [while] in reality, these dates are often reset
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`once the PTAB hurdle is cleared.” Ex. 1018 at 2. In particular, GREE’s counsel
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`previously has taken the inconsistent position that the trial schedules of Texas
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`district courts “tend[] to slip in significant regard” “[o]nce the PTAB denies
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`institution based upon a looming district court date” (Ex. 1017 at 3) and delays are
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`only getting worse in light of COVID-19. Id.
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`The uncertainty and delays are particularly acute in this case. Trial has
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`already been delayed from October to December, in part because Petitioner is
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`unable to take discovery of GREE’s Japan-based witnesses, which has necessitated
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`3
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`a further extension of discovery and dispositive motion deadlines. See Ex. 2002 pp.
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`6-11; Ex. 1015; Ex. 1022 at 2-4. GREE’s own briefing at the district court notes
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`that Petitioner’s depositions have been unable to proceed since February 2020 (Ex.
`
`1020 at 8) and that Supercell’s proposed alternative to secure the testimony
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`“ignores expense, multi-week quarantines, and limited availability of travel, much
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`less the personal risk to witnesses.” Id. at 12. Given the current state of the
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`pandemic, it is unlikely that Japan’s travel ban will be lifted in time for the parties
`
`to complete discovery and conduct a December trial. Trial delays have been a
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`factor the Board has considered as favoring institution. See Sand Revolution II,
`
`LLC v. Continental Intermodal Group, IPR2019-01393, Paper 24 at 8-10 (P.T.A.B.
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`Jun. 16, 2020) (Informative).
`
`The “investment” factor favors institution. The Board has invested
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`substantial resources related to this matter, as PGR2018-00008 has proceeded to a
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`FWD. It is already familiar with the claimed subject matter, construed terms, and
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`reached a decision regarding the unpatentability of claims of similar scope to those
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`at issue here. Pet. at 23-25. There is no basis in Fintiv for valuing investment in the
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`parallel proceeding more than investment by the Board itself.
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`The Fintiv board advised the parties to “explain facts relevant to the timing”
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`and “recognize[d] . . . 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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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`proceeding.” Fintiv, Paper 11 at 11. The parallel litigation includes nine patents,
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`one of which was added four months after the original complaint was filed. In view
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`of this volume, Petitioner filed the nine separate PGR petitions expeditiously. Even
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`now, it is unclear which claims GREE will pursue in district court. GREE also
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`does not identify any unfair costs specifically resulting from the timing.
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`GREE devotes substantial verbiage to declining institution based on the
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`“overlap between issues.” Should GREE reduce the number of claims it asserts in
`
`the parallel litigation, and institution is denied, significant issues related to the
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`unasserted claims would be left unaddressed and forever insulated from PGR. In
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`addition, the patent ineligibility standard under the current USPTO Guidance is
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`different from the clear and convincing standard for jury trials. These different
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`standards result in different issues between the two forums.
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`The “same party” factor should be given little weight in the PGR context, as
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`the petitioner-defendant will always be the party most motivated to challenge a
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`patent. No other party can file a PGR at this point.
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`The final factor is “other circumstances that impact the Board’s exercise of
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`discretion, including the merits.” It bears repeating that the Board has already
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`decided on the merits that non-distinct claims in the parent patent are non-
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`statutory. The strong merits of Petitioner’s case support institution. Sand
`
`Revolution, Paper 24 at 13.
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`5
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`II. GSB WAS PUBLICLY ACCESSIBLE
`GREE argued that the manual and pages of GSB (Ex. 1010) were not
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`“publicly accessible”—and thus not a “printed publication”—prior to September
`
`27, 2013, and that Petitioner “failed to proffer any evidence regarding indexing or
`
`cataloguing.” POPR at 43.
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`As a preliminary matter, lack of indexing is not dispositive of public
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`accessibility. Sandov v. Abbie Biotechs., IPR2018-00156, Paper 11 at 13, (P.T.A.B.
`
`Jun. 5, 2018) (Board unfazed by lack of indexing of website), accord Voter
`
`Verified, Inc. v. Premier Election Solns., Inc., 698 F.3d 1374, 1380 (Fed. Cir.
`
`2012) (finding indexing not a necessary condition and not an absolute
`
`prerequisite).
`
`Moreover, GREE ignores that Petitioner has demonstrated “evidence
`
`sufficient to establish a reasonable likelihood that the reference was publicly
`
`accessible before the critical date” with respect to GSB. Hulu, LLC v. Sound View
`
`Innovations, LLC, IPR2018-01039, Paper 29 at 13 (P.T.A.B. Dec. 20, 2019).
`
`There are several indicia of public accessibility on the face of the GSB
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`documents establishing that over 100,000 people received the manual upon
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`purchase of the game, before the critical date.
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`For example, the various pages of the exhibit show: (1) links for purchasing
`
`the GSB game (including checking out with Google or Amazon) (Ex. 1010 at 13),
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`6
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`(2) that over 100,000 people have purchased GSB (id. at 17), and (3) the manual
`
`provides purchasers with a link to the home page. Id. at 17. Further evidence of
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`public accessibility of the pages is shown via a listing of three different reviews of
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`the game in the Press section, and links between for a Forum for discussions of the
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`game, an FAQ page, and the home page. Id. at 10, 17-18.
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`As further evidence of both public accessibility of the pages and that people
`
`received the manual upon purchase of the game before the critical date, Ex. 1021 is
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`a Declaration from GSB creator and Positech Games Ltd. founder Cliff Harris. It
`
`verifies the above facts regarding the public accessibility of the pages, the number
`
`of people who had purchased the game, and that the manual of Ex. 1010 was
`
`provided with those purchases. Ex. 1021. This exhibit is responsive to the
`
`arguments raised in the POPR, and “[a] party also may submit rebuttal evidence in
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`support of its reply.” Hulu, IPR2018-01039, Paper 29 at 7 (citing Consolidated
`
`Trial
`
`Practice
`
`Guide
`
`at
`
`73–74,
`
`available
`
`at
`
`https://www.uspto.gov/TrialPracticeGuideConsolidated; Belden Inc. v. Berk-Tek
`
`LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)).”
`
`Thus, like the online publication in Voter Verified, the above evidence shows
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`that a person of ordinary skill interested in video games would have had access to
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`GSB, and that many users in fact did access the manual and webpages. See 698
`
`F.3d at 1381. Indeed, the evidence of record now includes “a declaration from a
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`7
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
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`fact witness as well as expert testimony,” like the cases Patent Owner cited in the
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`POPR. POPR at 37-41 (citing cases finding such evidence sufficient, or finding
`
`insufficient evidence that lacked a fact declaration).
`
`CONCLUSION
`Accordingly, the Petition should not be denied under § 324 (a).
`
`
`
`Dated: August 3, 2020
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
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`8
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`PGR2020-00052
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1017 through
`
`1022 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service at the email addresses provided below:
`
`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
`
`
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`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
`
`
`Date: August 3, 2020
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
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`9
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