UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case PGR2020-00052
`U.S. Patent No. 10,335,682
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case PGR2020-00052
`U.S. Patent No. 10,335,682
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`The Petition Should Be Denied Under § 324(a). ............................................. 1
`1.
`No Evidence of Any Likelihood of a Stay ............................................ 2
`2.
`Trial Date Remains Well In Advance of Board’s FWD
`Deadline ................................................................................................. 2
`Substantial Investment in Parallel District Court
`Proceeding ............................................................................................. 4
`Substantial Overlap of Issues Between the Two Forums ..................... 4
`4.
`No Other Relevant Circumstances ........................................................ 5
`5.
`The Petition Failed to Demonstrate That GSB Was Publicly
`Accessible. ....................................................................................................... 6
`
`3.
`
`I.
`
`II.
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) .................................. 1, 4, 5
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020) ........................................... 2
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00203, Paper 12 (P.T.A.B. July 6, 2020) ..................................... 1, 3, 5
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00407, Paper 12 (P.T.A.B. Aug. 11, 2020) ........................................... 3
`Guardian Alliance Techs., Inc. v. Miller,
`IPR2020-00031, Paper 27 (P.T.A.B. July 27, 2020) ............................................ 7
`Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29, (P.T.A.B. Dec. 20, 2019) .......................................... 6
`Intel Corporation v. VLSI Technology LLC,
`IPR2020-00106, Paper 17 (P.T.A.B. May 5, 2020) ............................................. 3
`Kranos Corporation v. Apalone, Inc.,
`IPR2020-00501, Paper 13 (P.T.A.B. July 16, 2020) ............................................ 3
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)............................................. 1
`Realtime Data LLC v. Actian Corporation,
`No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796 (E.D. Tex. Nov.
`29, 2016) ............................................................................................................... 2
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) .................................. 1, 3, 5
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00200, Document 113 (E.D. Tex. May 14,
`2020)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`Supercell Oy’s Motion for Relief in View of Governmental/Public
`Health Restrictions in Response to COVID-19 Virus Impact,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00200,
`Document 100 (E.D. Tex. April 23, 2020)
`
`Third Amended Complaint, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00200, Document 18 (E.D. Tex. July 2, 2019)
`
`Defendant Supercell Oy’s Preliminary Ineligibility Contentions,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D.
`Tex.), dated November 13, 2019.
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00200 (E.D. Tex.), dated December 6,
`2019
`
`Exhibit G-3 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`Exhibit G-7 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`Exhibit G-10 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00200 (E.D. Tex.),
`dated December 6, 2019
`
`iii
`
`
`
`Exhibit No.
`2009
`
`Description
`Merriam-Webster’s Collegiate Dictionary, Eleventh Edition
`(2007)
`
`iv
`
`
`
`I.
`
`The Petition Should Be Denied Under § 324(a).
`The facts of the present case are analogous to those in NHK Spring and its
`
`progeny and thus warrant exercise of the Board’s discretion to deny institution under
`
`§ 324(a) for the same reasons. Indeed, each Fintiv factor supports denial here. See
`
`Patent Owner’s Preliminary Response (“POPR”), at 2–28. And the possibility of
`
`duplication of efforts here is high, as is the potential for inconsistent results, due to
`
`both tribunals considering overlapping issues. See, e.g., Supercell Oy v. GREE, Inc.,
`
`IPR2020-00215, Paper 10, at 18 (P.T.A.B. June 10, 2020).
`
`In the face of the Board’s controlling precedents, Petitioner argues the Board
`
`should not exercise its discretion under § 324(a) largely based on Congress’s alleged
`
`intent in establishing post grant review and the public’s alleged interest in the present
`
`proceeding. Reply, at 1–2. But the Board “need not address” Petitioner’s “policy
`
`arguments against the Board’s application of Fintiv and NHK” because those
`
`decisions have been “designated … precedential decisions of the Board.” Apple Inc.
`
`v. Maxell, Ltd., IPR2020-00203, Paper 12, at 17 (P.T.A.B. July 6, 2020) (emphasis
`
`added). Petitioner’s fundamental challenge regarding the propriety of NHK Spring
`
`and Fintiv necessarily fails, as this Board has previously held. See, e.g., Supercell,
`
`IPR2020-00215, Paper 10, at 17–18. And a balanced analysis of the Fintiv factors
`
`demonstrates that efficiency and integrity of the AIA are, in fact, best served by
`
`denying review pursuant to § 324(a). See POPR, at 8–28.
`
`
`
`No Evidence of Any Likelihood of a Stay
`1.
`As previously noted, there is no evidence here to suggest that the district court
`
`will grant a stay should this proceeding be instituted. POPR, at 9–10. And
`
`Petitioner’s unilateral intent to seek a stay in the parallel litigation “should the PGR
`
`be instituted” (Reply, at 3) does not demonstrate otherwise. A stay pending an
`
`administrative proceeding is not automatic; rather, it must be based upon the
`
`circumstances of the individual case before the court.” Realtime Data LLC v. Actian
`
`Corporation, No. 6:15-CV-463-RWS-JDL, 2016 WL 9340796, at *2 (E.D. Tex.
`
`Nov. 29, 2016). And the district court routinely finds that the “late stage” of a case—
`
`like here—“weighs against a stay.” Id. at *4–5; see Exs. 2001, 1019.
`
`Trial Date Remains Well In Advance of Board’s FWD Deadline
`2.
`Petitioner’s argument that Factor 2 “should be afforded little weight” in view
`
`of alleged “uncertainty” of the trial date (Reply, at 3–4) readily fails in view of the
`
`facts here, as well as Board precedents. Trial is currently set for December 7, 2020.
`
`Ex. 1019, at 1. The Board “generally take[s] courts’ trial schedules at face value
`
`absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-
`
`00019, Paper 15, at 13 (P.T.A.B. May 13, 2020). And there is no such “strong
`
`evidence to the contrary” here. Id. Rather, Petitioner’s argument that it requires
`
`discovery of Japan-based witnesses, and “it is unlikely that Japan’s travel ban will
`
`be lifted in time for … a December trial” (Reply, at 4), is based on pure speculation.
`
`2
`
`
`
`Additionally, any “generalized speculation as to trial dates universally (e.g.,
`
`due to impacts of COVID-19)”—like that proffered by Petitioner here (Reply, at
`
`3)—is “outweighed by the fact that the jury trial in this case is scheduled to occur
`
`approximately ten months before the Board’s statutory deadline.” Supercell,
`
`IPR2020-00215, Paper 10, at 11 (emphasis added); see POPR, at 13.
`
`Thus, even if trial is ultimately delayed by a few months, until early 2021 for
`
`example, trial will still end many months before October 2021, when a final written
`
`decision would be due. See, e.g., Apple Inc. v. Maxell, Ltd., IPR2020-00407, Paper
`
`12, at 8 (P.T.A.B. Aug. 11, 2020) (“Although we consider further delays due to the
`
`COVID-19 pandemic to be a real possibility despite the … the recent order resetting
`
`the trial date for December 7, 2020, a delayed trial still may precede a final written
`
`decision in this proceeding, which would be due in August 2021.”); Apple, IPR2020-
`
`00203, Paper 12, at 10 (“Although delays due to the COVID-19 pandemic may be a
`
`real possibility … even a delayed trial may precede a final written decision”); Intel
`
`Corporation v. VLSI Technology LLC, IPR2020-00106, Paper 17, at 8 (P.T.A.B.
`
`May 5, 2020) (holding similar); see also Kranos Corporation v. Apalone, Inc.,
`
`IPR2020-00501, Paper 13, at 10 (P.T.A.B. July 16, 2020) (“[T]here is no indication
`
`that the district court’s response to the COVID-19 outbreak would result in the
`
`district court extending the trial date for more than ten months.”). Discretionary
`
`denial under § 324(a) is thus appropriate. Id.
`
`3
`
`
`
`Substantial Investment in Parallel District Court Proceeding
`3.
`Petitioner’s argument that Factor 3 somehow “favors institution” because the
`
`Board has already invested substantial resources in a different proceeding is wholly
`
`irrelevant. Reply, at 4. The focus of this factor is expressly on the investment of the
`
`district court and parties in the parallel proceeding. Apple Inc. v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11, at 6, 10 (P.T.A.B. Mar. 20, 2020); see POPR, at 14–18.
`
`Petitioner’s claim that Patent Owner fails to “identify any unfair costs”
`
`flowing from this proceeding (Reply, at 5) also misses the mark. The Board has
`
`recognized that a petitioner’s delay in filing a petition, relative to “a looming trial
`
`date,” may “impose unfair costs to a patent owner.” Fintiv, IPR2020-00019, Paper
`
`11, at 11. That is exactly the case here. Due to Petitioner’s delay (see POPR, at 17–
`
`18), Patent Owner necessarily faces the prospect of having to re-litigate Petitioner’s
`
`same invalidity challenges from that forum in front of this Board almost a year later.
`
`Petitioner’s argument that its “timing” in filing the Petition was somehow
`
`appropriate because “[e]ven now, it is unclear which claims [Patent Owner] will
`
`pursue in district court” (Reply, at 5) is also unavailing. Patent Owner disclosed its
`
`asserted claims months before the Petition was filed. See Ex. 2004, at 2. And in any
`
`event, Petitioner challenges all claims of the ’682 Patent in the instant Petition.
`
`Substantial Overlap of Issues Between the Two Forums
`4.
`Petitioner’s speculative argument that “[s]hould [Patent Owner] reduce the
`
`4
`
`
`
`number of claims its asserts in the parallel litigation and, institution is denied,
`
`significant issues related to the unasserted claims would be left unaddressed” (Reply,
`
`at 5) is rebutted by its own Petition. Petitioner argues that the challenged claims
`
`effectively rise or fall together. See, e.g., Pet. at 16–45 (presenting same arguments
`
`across all claims under § 101), 46–73 (presenting same prior art arguments for all
`
`independent claims). And the Board has recognized “if a petition involves the same
`
`prior art challenges but challenges claims in addition to those that are challenged in
`
`the district court, it may still be inefficient to proceed because the district court may
`
`resolve validity of enough overlapping claims to resolve key issues in the petition.”
`
`Fintiv, IPR2020-00019, Paper 11, at 13; see, e.g., Apple, IPR2020-00203, Paper 12,
`
`at 12–16 (factor favors denial even in view of Patent Owner’s narrowing of claims).
`
`No Other Relevant Circumstances
`5.
`Petitioner’s unilateral characterization of the merits of its Petition as “strong”
`
`does not justify institution here in view of the advanced stage of the parallel
`
`proceeding, in accordance with a balancing of the Fintiv factors. See POPR, at 24–
`
`28. Even an allegedly “strong case on the merits” can be outweighed by the facts
`
`underlying factors 2–5 collectively. See Supercell, IPR2020-00215, Paper 10, at 18.
`
`Moreover, Petitioner’s sole support for its characterization is a prior Board decision
`
`regarding the another patent, which Patent Owner has demonstrated does not control
`
`the analysis here for a number of reasons. See POPR, at 30–32.
`
`5
`
`
`
`II.
`
`The Petition Failed to Demonstrate That GSB Was Publicly Accessible.
`The purported “indicia of public accessibility” on the face of Ex. 1010 that
`
`Petitioner cites in Reply is nothing more than inadmissible hearsay. Petitioner claims
`
`the indicia “establish that over 100,000 people” received the manual “before the
`
`critical date.” Reply, at 6. That claim is based on nothing more than the hearsay
`
`statement “[o]ver 100,000 people have bought Gratuitous Space Battles so far …,”
`
`in an Internet Archive capture of a website purporting to sell the GSB game. Ex.
`
`1010, at 17. Notwithstanding its hearsay nature, that statement fails to demonstrate
`
`that the GSB manual itself (Ex. 1010, at 1–12) was publicly accessible prior to the
`
`critical date. Indeed, despite Petitioner grouping the documents together in a single
`
`Exhibit 1010, the purported “indicia of public accessibility” Petitioner relies on in
`
`Reply do not appear on the GSB manual itself, but rather on other websites. Compare
`
`Ex. 1010, at 1–12 with Ex. 1010, at 13–19. For this and other reasons, public “links
`
`for purchasing the GSB game” via “Google or Amazon” (Reply, at 6; Ex. 1010, at
`
`13) likewise do not demonstrate that the GSB manual itself (Ex. 1010, at 1–12) was
`
`publicly accessible prior to the critical date. See POPR, at 34–43.
`
`And while Petitioner received leave to file a reply to address the availability
`
`of GSB as a prior art reference, Petitioner did not request leave, nor demonstrate the
`
`requisite “good cause,” to submit additional evidence regarding the same. See Hulu,
`
`LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, at 7 (P.T.A.B. Dec.
`
`6
`
`
`
`20, 2019); see also Guardian Alliance Techs., Inc. v. Miller, IPR2020-00031, Paper
`
`27, at 8–9 (P.T.A.B. July 27, 2020) (noting the evidence presented “in the Petition”
`
`must “make a prima facie case of public accessibility” (emphasis added)). The Board
`
`should thus disregard new, and unauthorized, Exhibit 1021. This declaration
`
`testimony from “GSB creator” Cliff Harris should have been presented “in the
`
`Petition” to “make a prima facie case of public accessibility.” Guardian Alliance,
`
`IPR2020-00031, Paper 27, at 9. But it undisputedly was not, and thus Petitioner
`
`necessarily failed make such a prima facie case of public accessibility, for all the
`
`reasons set forth in Patent Owner’s Preliminary Response. Id.
`
`Petitioner’s argument that it is freely able to present such new evidence in
`
`Reply (Reply, at 7) is based on a misapplication or misunderstanding of Hulu. The
`
`Board has made clear that the “rebuttal evidence” contemplated by the Hulu decision
`
`cannot serve as “evidence necessary to make Petitioner’s prima facie case.”
`
`Guardian Alliance, IPR2020-00031, Paper 27, at 9. Here it was Petitioner’s burden
`
`to establish a prima facie of public accessibility in its Petition. Id. at 8–9 (noting the
`
`evidence presented “in the Petition” must “make a prima facie case of public
`
`accessibility” (emphasis added)). Petitioner failed to do so, and cannot remedy this
`
`failure with unauthorized Reply evidence.
`
`7
`
`
`
`Dated: August 13, 2020
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Sur-Reply to Petitioner’ Reply to Patent Owner’s Preliminary Response has been
`
`served electronically via email upon the following:
`
`Jennifer R. Bush
`Michael J. Stacksteder
`Brian M. Hoffman
`Kevin X. McGann
`Gregory A. Hopewell
`Geoffrey Miller
`Fenwick & West LLP
`jbush@fenwick.com
`msacksteder@fenwick.com
`bhoffman@fenwick.com
`kmcgann@fenwick.com
`ghopewell@fenwick.com
`gmiller@fenwick.com
`
`Dated: August 13, 2020
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
