UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`The Honorable Rodney Gilstrap
`
`
`Civil Action No. 2:19-cv-00200-JRG-RSP
`
`
`JURY TRIAL DEMANDED
`
`
`§§§§§§§§§§
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`GREE, INC.,
`
`
`v.
`
`
`SUPERCELL OY,
`
`
`
`
`
`
`
`DEFENDANT SUPERCELL OY’S PRELIMINARY INELIGIBILITY CONTENTIONS
`
`Pursuant to Judge Gilstrap’s Standing Order Regarding Subject Matter Eligibility
`
`Contentions Applicable to All Patent Infringement Cases Assigned to Chief District Judge
`
`Rodney Gilstrap (“Standing Order”) and the Court’s Docket Control Order (Dkt. No. 53),
`
`Defendant Supercell Oy (“Supercell” or “Defendant”) serve these Preliminary Ineligibility
`
`Contentions (“Ineligibility Contentions”) addressing how the asserted claims of the following
`
`U.S. Patent Nos.: 10,328,347 (“the ’347 Patent); 10,300,385 (“the ’385 Patent); 10,307,675
`
`(“the ’675 Patent); 10,307,676 (“the ’676 Patent”); 10,307,677 (“the ’677 Patent); 10,307,678
`
`(“the ’678 Patent); 10,335,682 (“the ’682 Patent); 10,335,683 (“the ’683 Patent); and 10,398,978
`
`(“the ’978 Patent) (the “Asserted Patents”) are invalid.
`
`I.
`
`RESERVATIONS AND OBJECTIONS
`A.
`
`General Reservations
`
`Pursuant to paragraph (c) of the Standing Order, Supercell reserves the right to amend or
`
`supplement these Preliminary Ineligibility Contentions should GREE: (1) amend its infringement
`
`contentions; or (2) if the Court’s Claim construction ruling so requires.
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 1 of 380
`
`

`

`
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`The information provided should not be deemed an admission regarding the scope of any
`
`claims or the proper construction of those claims or any terms contained therein. Supercell’s
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`claim construction disclosures will be provided under P.R. 4 as required by the Court’s Docket
`
`Control Order. Nothing contained in these Preliminary Ineligibility Contentions should be
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`understood or deemed to be an express or implied admission or contention with respect to the
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`absence of factual disputes relating patent ineligibility, the absence of a need for construction of
`
`any terms in an asserted claim, any proper construction of any terms in an asserted claim, or
`
`alleged infringement of that claim. There is no claim construction issue or factual issue that
`
`precludes the Court finding that the claims of the asserted patents are patent-ineligible.
`
`Nothing in these disclosures should be treated as an admission that Supercell is obligated
`
`to produce documentation not under its custody or control, or that can be obtained from some
`
`other source that is more convenient, less burdensome and/or less expensive, or for which the
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`burden or expense outweighs its likely benefit. Supercell expressly reserves the right to revise,
`
`amend, and/or supplement its disclosures and document production should additional
`
`documentation become available.
`
`B.
`
`Asserted Claims
`
`Supercell understands that GREE asserts the following claims from the respective
`
`Asserted Patents (collectively the “Asserted Claims”):
`
`Patent No.
`
`10,328,347
`
`10,300,385
`
`10,307,675
`
`10,307,676
`
`Asserted Claims
`
`1 – 30
`
`1 – 3, 9 – 11, 17, and 18
`
`1 – 30
`
`1 – 24
`
`2
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 2 of 380
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`

`

`
`
`Patent No.
`
`10,307,677
`
`10,307,678
`
`10,335,682
`
`10,335,683
`
`10,398,978
`
`Asserted Claims
`
`1 – 20
`
`1 – 14
`
`1 – 16
`
`1 – 12
`
`1 – 18
`
`
`These preliminary infringement contentions address only the Asserted Claims. Supercell
`
`reserves the right to supplement these contentions if GREE asserts infringement of any claim
`
`other than the Asserted Claims.
`
`C.
`
`Ongoing discovery
`
`Supercell’s discovery and investigation in this lawsuit are ongoing, and therefore,
`
`Supercell reserves the right to revise, amend, and/or supplement these Preliminary Ineligibility
`
`Contentions as discovery progresses and as it discovers additional information. Discovery is
`
`ongoing, and Supercell’s prior art investigation and third-party discovery are in the initial stages.
`
`Supercell’s Preliminary Invalidity Contentions have not yet come due. As such, Supercell
`
`reserves the right to revise, amend, and/or supplement the information provided herein, including
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`identifying, and relying on additional references, should Supercell’s further search and analysis
`
`yield additional information or references, consistent with the Local Rules, Judge Gilstrap’s
`
`Standing Order, and the Federal Rules of Civil Procedure. In particular, Supercell reserves the
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`right to rely on, and Supercell incorporates by reference into its Preliminary Ineligibility
`
`Contentions, all prior art identified by Supercell in conjunction with its Preliminary Invalidity
`
`Contentions. Supercell also reserves the right to amend, modify, or supplement these
`
`3
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`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 3 of 380
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`

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`
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`Ineligibility Contentions to include prior art under 35 U.S.C. §§ 102 and 103 identified in its
`
`Preliminary Invalidity Contentions.
`
`Supercell reserves the right to rely on all documents produced Supercell, as well as
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`Plaintiff, any predecessors in interest, the named inventors, and any other third parties, as
`
`discovery is ongoing.
`
`II.
`
`DOCUMENT PRODUCTION REQUIRED BY P.R. 3-4
`
`Pursuant to P.R. 3-4(b), Supercell is serving on GREE, concurrently with these
`
`Preliminary Ineligibility Contentions, documents that support that the claims of the asserted
`
`patents are patent-ineligible.
`
`
`
`Dated: November 13, 2019
`
`Respectfully submitted,
`
`
`
`/s/ Jessica M. Kaempf
`
`Jessica M. Kaempf (Admitted E.D. Texas)
`Jeffrey A. Ware (Admitted E.D. Texas)
`FENWICK & WEST LLP
`1191 Second Ave., 10th Floor
`Seattle, Washington 98101
`Telephone:
`206.389.4510
`Facsimile:
`206.389.4511
`Email:
`jkaempf@fenwick.com
`
`
`jware@fenwick.com
`Michael J. Sacksteder (Admitted E.D. Texas)
`Bryan A. Kohm (Admitted E.D. Texas)
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, California 94104
`Telephone:
`415.875.2300
`Facsimile:
`415.281.1350
`Email:
`msacksteder@fenwick.com
`
`
`bkohm@fenwick.com
`
`4
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 4 of 380
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`

`

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`
`
`
`Geoffrey Robert Miller
`(Texas State Bar No. 24094847)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`Telephone:
`650.988.8500
`Facsimile:
`650.938.5200
`Email:
`gmiller@fenwick.com
`
`Deron R. Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323, Suite 430
`Tyler, Texas 75701
`Telephone:
`903.705.1117
`Facsimile:
`903.581.2543
`Email:
`ddacus@dacusfirm.com
`Attorneys for Defendant Supercell OY
`
`
`
`5
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 5 of 380
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 13, 2019, all counsel of record who have consented to
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`electronic service are being served with a copy of this document via email.
`
`/s/ Jessica M. Kaempf
`Jessica M. Kaempf
`
`
`
`
`6
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`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 6 of 380
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`

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`Preliminary Ineligibility Contentions - U.S. Patent No. 10,398,978 to Eda
`
`The following chart contains Supercell’s Preliminary Ineligibility Contentions demonstrating that claims 1 – 18 of U.S. Patent No.
`10,398,978 (the “’978 patent”) are patent -ineligible under 35 U.S.C. § 101 pursuant to Judge Gilstrap’s Standing Order Regarding
`Subject Matter Eligibility Contentions. Because the Court has yet to issue a claim construction in this case and, to the extent GREE
`contends that there are factual disputes that relate to eligibility of the asserted claims of the ’978 patent, fact and expert discovery is
`ongoing, these contentions are preliminary only and Supercell reserves the right to supplement or modify these contentions in accordance
`with the agreed patent-disclosure procedures and the Docket Control Order in this case. Additionally, and in further consideration of
`the preliminary stages of the case, Supercell notes that the pinpoint citations referenced in this chart are not exhaustive, and Supercell
`reserves the right to rely on additional citations within the asserted patent and any cited reference. Furthermore, citations to any figure,
`table, or chart are meant to encompass the language describing the respective figure, table, or chart, and vice versa. To the extent
`applicable, Supercell incorporates by reference its citations in its ineligibility contentions for the other patents-in-suit, which are related
`to the ’978 patent.
`
`Further, these charts incorporate GREE’s apparent interpretation of the breakdown of elements within the asserted claims, as reflected
`in GREE’s infringement contentions to date. Supercell does not concede that such interpretation is correct, and reserves its right to
`supplement these contentions accordingly.
`
`Supercell reserves its right to supplement these contentions based on further discovery, including any supplemental infringement
`contentions or any interrogatory response provided by GREE purporting to rebut these ineligibility contentions.
`
`
`
`
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 7 of 380
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`

`

`’978 Claim Element
`
`Claims 1-18 of the ’978
`Patent
`
`
`
`Exception to Eligibility
`
`Claims 1-18 of the ’978 patent are directed to an abstract idea. Specifically, these challenged claims
`are directed to creating and applying a template. Claim 1 is representative of challenged claims 1 –
`18.
`
`Claims 1-18 of the ’978 patent establish that they are directed to creating and applying a template.
`See, e.g., ’978 patent, claim 1 (“executing a game by arranging, based on a command received from
`a first player, a plurality of game contents within a game space, the game contents including at least
`game contents for defending from an attack initiated by a second player”; receiving a command to
`create a template from the first player”; “creating, responsive to the received command to create the
`template, a plurality of templates defining the plurality of game contents and respective positions of
`the plurality of game contents within the game space”; “creating a plurality of images that each
`correspond to one of the plurality of templates”; “displaying a screen including the plurality of
`images”; “receiving a selection corresponding to one of the displayed images”; and “applying a
`template corresponding to the received selection to a predetermined area within the game space”).
`
`Creating and applying a template of positions of one or more game contents constitutes a method of
`organizing human activity and an abstract idea. See, e.g., In re Smith, 815 F.3d 816, 818 (Fed. Cir.
`2016) (concluding that ‘[a]pplicants’ claims, directed to rules for conducting a wagering game’ are
`abstract); In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018) (“method of playing
`a dice game” is patent ineligible); Planet Bingo LLC v. VKGS LLC, 576 F. App’x 1005 (Fed. Cir.
`2014) (“managing a bingo game” is patent ineligible); see also 2019 Revised Patent Subject Matter
`Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) (“managing personal behavior or
`relationships or interactions between people (including social activities, teaching, and following rules
`or instructions)” constitutes abstract idea); see also Supercell Oy v. GREE, Inc., PGR2018-00008,
`Paper 42 (Final Written Decision) at 37.
`
`For example, the pencil and paper games Battleship and Talking Battleship, released in 1967 and
`1989, respectively by the company Milton Bradley supports that applying a template of positions of
`one or more game contents is an abstract idea.
`
`The Patent Trial and Appeal Board previously found that U.S. Patent No. 9,597,594, which issued
`from a parent application of the ’978 patent application, is similarly directed to creating and applying
`a template of positions of one or more game contents, and is thus an abstract idea. Supercell Oy v.
`
`2
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 8 of 380
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`

`

`’978 Claim Element
`
`Exception to Eligibility
`
`
`
`GREE, Inc., PGR2018-00008, Paper 42 (Final Written Decision) at 37. The limitations of the ’978
`patent claims mirror those specifically discussed by the Board in the related patent PGRs in finding
`the claims of U.S. Patent No. 9,597,594 abstract. They lack any material differences from the claims
`of the ’594 patent that would render them non-abstract. Supercell thus incorporates by reference its
`submissions relating to the PGR proceeding for the ’594 patent (including appeal from the PGR
`proceeding), and the Final Written Decision.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 9 of 380
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`

`

`
`
`Pursuant to Judge Gilstrap’s Standing Order Regarding Subject Matter Eligibility Contentions, Supercell provides the following chart
`identifying a description of the industry, at the relevant time, in which the Challenged Claims are alleged to be well understood,
`routine, and conventional, and the factual and legal basis therefor; and a description of how each element of each Challenged Claim,
`both individually and in combination with the other elements of that claim, was well understood, routine, and conventional, in the
`relevant industry at the relevant time, and the legal and factual basis therefor.1
`
`Claim 1
`
`’978 Claim Element
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`Description of the Industry and
`
`[Preamble]
`
`A method performed by a portable electronic device, was well understood, routine and conventional.
`
`A method performed by a
`portable electronic device, the
`method comprising:
`
`Claims 1-18 of the ’978 patent were well understood, routine and conventional in the games industry
`no later than September 27, 2013.2 On or around September 27, 2013, games on electronic
`apparatuses, such as smart phones and tablets, were well understood, routine and conventional, and
`included “games in which multiple users can participate (so-called ‘social games’)” wherein “players
`can not only fight against or help each other, but are also enabled to communicate with each other.”
`See, e.g., ’978 patent at 1:27-30; see also id. at 1:20-34 (background section). Supercell incorporates
`by reference the prior art games and other prior art identified in the ’978 patent, the prosecution
`history of the ’978 patent, and/or related PGR proceedings. Supercell further incorporates by
`
`
`1 Supercell notes that under Supreme Court and Federal Circuit precedent, the Court need not, and should not, consider whether each
`and every element of each Challenged Claim was well understood, routine, and conventional. Rather, the only elements which should
`be considered under Alice step 2 are the elements that fall outside the scope of the abstract idea. See Alice Corp. v. CLS Bank Int’l,
`573 U.S. 208, 221-224 (2014); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since
`Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders
`the invention ‘significantly more’ than that ineligible concept.”); see also Supercell Oy v. GREE, Inc., PGR2018-00008, Paper 44 at
`39 (explaining that “Patent Owner’s fundamental misapprehension is that Petitioner must show that each claim limitation is ‘well-
`understood, routine, conventional”).
`2 Supercell reserves the right to dispute that the asserted claims of the ’978 patent are not entitled to a priority date of September 27,
`2013. However, for purposes of its ineligibility contentions, Supercell contends that the asserted claims were well understood, routine
`and conventional as of (and following) this date.
`
`4
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 10 of 380
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`

`

`’978 Claim Element
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`reference any games and other prior art identified or to be identified in its invalidity contentions
`and/or expert reports that will be provided according to the schedule provided by the Court’s Docket
`Control Order.
`
`To the extent the preamble is limiting: A method performed by an information processing system
`was well understood, routine and conventional in the relevant industry at the relevant time period.
`
`For example, the intrinsic record, including the specification of the ’978 patent, establishes that the
`preamble was well understood, routine and conventional. See, e.g., ’978 patent at 1:20-34
`(background section explaining “games which are played by installing a game program on a portable
`device from a server via a communication network have become common”); ’978 patent at 2:7-9
`(explaining that device performing the claimed method can be any “computer . . . for example, a
`portable device, a desktop device, a server, etc., as long as it can execute the [] procedure”); see also
`’978 patent at 4:60-67 (the “device” may “may be, for example, a mobile phone (a so-called “feature
`phone”), a personal digital assistant (PDA), a portable game machine, a portable music player, a
`tablet device, a tablet personal computer (PC), a notebook PC, etc., as long as the present invention is
`applicable thereto.”)).
`
`Furthermore, a server is a general computer function. See e.g., Alice Corp. Pty. Ltd. v. CLS Bank
`Int’l, 134 S. Ct. 2347, 2360 (2012) (“the mere recitation of a generic computer cannot transform a
`patent-ineligible abstract idea into a patent-eligible invention.”); In re TLI Communications LLC
`Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (“server fails to add an inventive concept because it
`is simply a generic computer”).
`
`[Element 1-A]
`
`executing a game by
`arranging, based on a
`command received from a
`first player, a plurality of
`game contents within a game
`space, the game contents
`
`Executing a game by arranging, based on a command received from a first player, a plurality of game
`contents within a game space, the game contents including at least game contents for defending from
`an attack initiated by a second player, was well understood, routine and conventional.
`
`Games in which game contents, including game contents for defending from an attack initiated by
`another player, were well understood, routine and conventional. For example, the intrinsic record,
`including the specification of the ’978 patent, establishes that this element was well understood,
`routine and conventional. For example, the specification describes that games in which players
`
`5
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`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 11 of 380
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`

`

`’978 Claim Element
`
`including at least game
`contents for defending from
`an attack initiated by a second
`player;
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`arrange various game contents, such as protective walls, were well known, routine and conventional.
`See, e.g., ’978 patent at 1:27-34 (background section explaining that “city building games,” in which
`players “build various facilities (such as houses, streets, ports, train stations, airports, castles, training
`facilities, etc.) on desired positions and create a city after their liking” were known in the art); see
`also ’978 patent at 1:24-26 (background section discussing games in which players “fight against or
`help each other”); see also ’978 patent at 1:40-44 (describing known city building games in which “a
`city built by one player is attacked by a different player” and wherein the city is an “arrangement of
`items such as protective walls, building that are subject to an attack, protecting soldiers, weapons,
`etc.”).
`
`For further example, the board game Risk, released in 1959 by the company Parker Brothers,
`supports that executing a game by arranging, based on a command received from a first player, a
`plurality of game contents within a game space, the game contents including at least game contents
`for defending from an attack initiated by a second player was well understood, routine, and
`conventional.
`
`Further, for example, in the context of considering a patent that issued from a parent application of
`the ’978 patent application, the Patent Trial and Appeal Board analogized the claimed element of
`arranging game contents within a game space to a game of correspondence chess. Supercell Oy v.
`GREE, Inc., PGR2018-00008, Paper 42 (Final Written Decision) at 37 (citing A Guide to
`Correspondence Chess in Wales).
`
`Processing commands, for example, by executing a game by arranging a plurality of game contents,
`was well understood, routine and conventional in the relevant industry at the relevant time period.
`For example, the intrinsic record, including the specification, supports that electronic devices with
`interfaces were generic, and that processing commands received from those interfaces was likewise
`generic. See, e.g., ’978 patent at 5:58-65 (describing that the operation unit “may be any device
`capable of operating the portable device 2, for example, a touch panel, a key button or the like.”); see
`also ’978 patent at 6:5-19 (describing processing unit as generic computer component).
`
`Further, there is no technical disclosure or explanation in the specification about how the claimed
`invention purportedly executes a game by arranging game contents based on a user command
`
`6
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`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 12 of 380
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`

`

`’978 Claim Element
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`received at an electronic device interface, which further confirms that it was well understood, routine
`and conventional. See, e.g., ’978 patent at 8:48-59 (describing without technical disclosure that
`“templates may be automatically created” for example based on an objective of a template” and
`further explaining that functions are carried out with “functional modules”); see also ’978 patent at
`12:50-555 (describing server control unit as a “functional module”); see also id. at 17:53-19:7
`(describing the “game progression unit” and the “template application unit[s]” as “functional
`modules”). The specification describes that “functional modules” carry out the claimed element.
`See, e.g., ’978 patent at 8:59-65; 12:50-55, 17:53-60, 21:1-7, 22:63-23:2.
`
`Processing commands received at an interface of an electronic device, for example, by executing a
`game by allocating one or more game contents to positions within the game space, was a generic
`computer function. See, e.g., Vehicle Intelligence & Safety, LLC v Mercedes-Benz USA, LLC, 635
`Fed. App’x. 914, 915 (Fed. Cir. 2015) (holding that a claimed “processor” was simply a “purely
`conventional computer implementation” of claimed function); In re TLI Commc’ns LLC v. AV Auto.
`LLC, 823 F.3d 607, 614 (Fed. Cir. 2016) (“telephone unit” “server,” “image analysis unit,” and
`“control unit” are generic); Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 226, 134 S. Ct. 2347,
`2360, 189 L. Ed. 2d 296 (2014) (“Nearly every computer will include a ‘communications controller’
`and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission
`functions required by the method claims.”); Smartflash LLC v. Apple Inc., 2017 WL 786431, at *5
`(Fed. Cir. Mar. 1, 2017) (“As such, merely storing, transmitting, retrieving, and writing data to
`implement an abstract idea on a computer does not ‘transform the nature of the claim’ into a patent-
`eligible application.” (emphasis added)); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
`1350, 1353 (Fed. Cir. 2016) (network and display components are not inventive); see also Apple, Inc.
`v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016); Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927,
`945 (N.D. Cal. 2015) (television equipment is not sufficiently limiting to create an inventive
`concept).
`
`Further, there is no technical disclosure or explanation in the specification about how the claimed
`invention purportedly receives or transmits information for reproducing a template for defending an
`attack initiated by another player, the template defining positions of game contents in a game space
`and being created by a first terminal executing a game by arranging, based on a player's command,
`
`7
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 13 of 380
`
`

`

`’978 Claim Element
`
`[Element 1-B]
`
`receiving a command to
`create a template from the
`first player;
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`the game contents within the game space, which further confirms that it was well understood, routine
`and conventional. See, e.g., ’978 patent at 8:48-59 (describing without technical disclosure that
`“templates may be automatically created” for example based on an objective of a template” and
`further explaining that functions are carried out with “functional modules”); see also 978 patent at
`12:50-55 (describing template provision unit as a “functional module”); 978 patent at 23:1-7
`(describing the “event management unit” as a “functional module”); see also id. at 23:57-62.
`
`Receiving a command to create a template from the first player, was well understood, routine and
`conventional.
`
`Receiving and transmitting information, such as a command, were generic computer function. See,
`e.g., Smartflash LLC v. Apple Inc., 2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017) (“As such,
`merely storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer
`does not ‘transform the nature of the claim’ into a patent-eligible application.”); Alice Corp. Pty. v.
`CLS Bank Int'l, 573 U.S. 208, 226, 134 S. Ct. 2347, 2360, 189 L. Ed. 2d 296 (2014) (“Nearly every
`computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing
`the basic calculation, storage, and transmission functions required by the method claims.”); In re TLI
`Commc’ns LLC v. AV Auto. LLC, 823 F.3d 607, 614 (Fed. Cir. 2016) (“telephone unit” “server,”
`“image analysis unit,” and “control unit” are generic); Elec. Power Grp., LLC v. Alstom S.A., 830
`F.3d 1350, 1353 (Fed. Cir. 2016) (network and display components are not inventive); see also
`Vehicle Intelligence & Safety, LLC v Mercedes-Benz USA, LLC, 635 Fed. App’x. 914, 915 (Fed. Cir.
`2015) (holding that a claimed “processor” was simply a “purely conventional computer
`implementation” of claimed function); see also Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed.
`Cir. 2016); Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 945 (N.D. Cal. 2015) (television
`equipment is not sufficiently limiting to create an inventive concept).
`
`Further, there is no technical disclosure or explanation in the specification about how the claimed
`invention purportedly receives or transmits information for receiving a command to create a template,
`which further confirms that it was well understood, routine and conventional. See, e.g., ’978 patent at
`8:48-59 (describing without technical disclosure that “templates may be automatically created” for
`example based on an objective of a template” and further explaining that functions are carried out
`
`8
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 14 of 380
`
`

`

`’978 Claim Element
`
`[Element 1-C]
`
`creating, responsive to the
`received command to create
`the template, a plurality of
`templates defining the
`plurality of game contents
`and respective positions of
`the plurality of game contents
`within the game space;
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`with “functional modules”); see also ’978 patent at 12:50-55 (describing template provision unit as a
`“functional module”); 978 patent at 23:1-7 (describing the “event management unit” as a “functional
`module”); see also id. at 23:57-62.
`
`Additionally, templates were well understood, routine and conventional in the relevant industry at the
`relevant time period. For example, the intrinsic record, including the specification of the ’978 patent,
`establishes that this element was well understood, routine and conventional. The specification
`describes templates in the context of “conventional city building games.” See ’978 patent at 1:38-40.
`
`Further, for example, in the context of considering a patent that issued from a parent application of
`the ’978 patent application, the Patent Trial and Appeal Board further rejected GREE’s argument that
`the claimed templates are not well understood, routine and conventional, and analogized the claimed
`reproducing a template to a game of correspondence chess. Supercell Oy v. GREE, Inc., PGR2018-
`00008, Paper 42 (Final Written Decision) at 37 (citing A Guide to Correspondence Chess in Wales);
`see also id. at Papers 1, 12, 27 (explaining that templates are conventional). Further, for example, the
`Patent Trial and Appeal Board construed a “template” as simply any record. Supercell Oy v. GREE,
`Inc., PGR2018-00008, Paper 42 (Final Written Decision) at 8.
`
`Creating, responsive to the received command to create the template, a plurality of templates defining
`the plurality of game contents and respective positions of the plurality of game contents within the
`game space, was well understood, routine and conventional.
`
`Creating a plurality of game templates responsive to commands, was well understood, routine and
`conventional in the relevant industry at the relevant time period. For example, the intrinsic record,
`including the specification, supports that electronic devices with interfaces were generic, and that
`processing commands received from those interfaces was likewise generic. See, e.g., ’978 patent at
`5:58-65 (describing that the operation unit “may be any device capable of operating the portable
`device 2, for example, a touch panel, a key button or the like.”); see also ’978 patent at 6:5-19
`(describing processing unit as generic computer component).
`
`Processing commands from a player, for example, for creating the template defining the game
`contents and respective positions of the game contents within the game space based on the received
`
`9
`
`Patent Owner Gree, Inc.
`Exhibit 2004 - Page 15 of 380
`
`

`

`’978 Claim Element
`
`
`
`Description of the Industry and
`
`Description of How Each Element was Well Understood, Routine, and Conventional
`
`command, was a generic computer function. See, e.g., Vehicle Intelligence & Safety, LLC v
`Mercedes-Benz USA, LLC, 635 Fed. App’x. 914, 915 (Fed. Cir. 2015) (holding that a claimed
`“processor” was simply a “purely conventional computer implementation” of claimed function); In re
`TLI Commc’ns LLC v. AV Auto. LLC, 823 F.3d 607, 614 (Fed. Cir. 2016) (“telephone unit” “server,”
`“image analysis unit,” and “control unit” are generic); Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S.
`208, 226, 134 S. Ct. 2347, 2360, 189 L. Ed. 2d 296 (2014) (“Nearly every computer will include a
`‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation,
`storage, and transmission functions required by the method claims.”); Smartflash LLC v. Apple Inc.,
`2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017) (“As such, merely storing, transmitting, retrieving,
`and writing data to implement an abstract idea on a computer does not ‘transform the nature of the
`claim’ into a patent-eligible application.” (emphasis added)); see also Elec. Power Grp., LLC v.
`Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (network and display components are not
`inventive); see also Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016); Netflix, Inc. v.
`Rovi Corp., 114 F. Supp. 3d 927, 945 (N.D. Cal. 2015) (television equipment is not sufficiently
`limiting to create an inventive concept).
`
`Additionally, receiving commands from a player to create a template, was a generic computer
`function. See, e.g., In re TLI Commc’ns LLC v. AV Auto. LLC, 823 F.3d 607, 614 (Fed. Cir. 2016)
`(“telephone unit” “server,” “image analysis unit,” and “control unit” are generic); Smartflash LLC v.
`Apple Inc., 2017 WL 786431, at *5 (Fed. Cir. Mar. 1, 2017) (“As such, merely storing, transmitting,
`retrieving, and writing data to implement an abstract idea on a computer does not ‘transform the
`nature of the claim’ into a patent-eligible application.” (emphasis added)); Elec. Power Grp., LLC v.
`Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (network and display components are not
`inventive); see also Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 226, 134 S.