IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In the Post Grant Review of:
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`U.S. Patent No.: 10,398,978
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`For: COMPUTER CONTROL
`METHOD, CONTROL PROGRAM )
`AND COMPUTER
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF MARK L. CLAYPOOL, Ph.D.
`IN SUPPORT OF PETITION FOR POST GRANT
`REVIEW OF U.S. PATENT NOS. 10,398,978
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`Supercell
`Exhibit 1008
`Page 1
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In the Post Grant Review of:
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`U.S. Patent No.: 10,398,978
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`For: COMPUTER CONTROL
`METHOD, CONTROL PROGRAM )
`AND COMPUTER
`)
`)
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF MARK L. CLAYPOOL, Ph.D.
`IN SUPPORT OF PETITION FOR POST GRANT
`REVIEW OF U.S. PATENT NOS. 10,398,978
`
`Supercell
`Exhibit 1008
`Page 1
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`I, Mark, L. Claypool, Ph.D., declare as follows:
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`I.
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`INTRODUCTION
`1.
`I have been asked by the party requesting this review, Supercell Oy
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`(“Petitioner”), to provide my expert opinion in support of the above-captioned
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`petition for post grant review of U.S. Patent No. 10,398,978 (the “’978 patent”)
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`challenging the patentability of claims 1-18 of the ‘978 patent. For convenience, I
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`use the term “challenged patent” to refer to this patent and “challenged claims” to
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`refer collectively to the claims.
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`2.
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`3.
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`I currently hold the opinions set forth in this declaration.
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`In summary, it is my opinion that the challenged claims of the
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`challenged patent are invalid as obvious in view of the combination of references
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`cited below. My detailed opinions on the claims are set forth below.
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`II. BACKGROUND AND QUALIFICATIONS
`4.
`I earned a Bachelor of Arts degree from Colorado College and both a
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`Master of Science in 1993 and Ph.D. in 1997 from the University of Minnesota.
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`5.
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`I am currently a professor in the department of Computer Science and
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`a professor of Interactive Media and Game Development at Worcester Polytechnic
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`Institute (“WPI”) in Worcester, Massachusetts. I have been a Full Professor at WPI
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`since 2009. I began working as Assistant Professor at WPI in 1997 and became an
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`Associate Professor in 2004. I have taught courses covering computing topics
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`Supercell
`Exhibit 1008
`Page 2
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`including operating systems, networks, distributed systems, multimedia networking,
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`as well as courses covering game development topics including data analysis for
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`games, the game development process and technical game development.
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`6.
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`I am an expert in computer games, including but not limited to the
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`analysis, design and development of entertainment applications, with a research
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`focus on the networking and distributed systems aspects of online games. I am the
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`founder and Director for a decade for the Interactive Media and Game Development
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`program, the first in the U.S. to offer a unique kind of program to teach students all
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`aspects of the fundamentals of computer game development. I teach technical game
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`development courses to undergraduate students, and aspects of online games to
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`graduate students in multimedia networking courses. I advise undergraduate student
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`projects (akin to a “senior thesis”) and graduate student theses related to game
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`development and game research. My expertise is enhanced and informed through
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`peer-reviewing many papers as part of the technical program committees I am part
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`of: ACM Multimedia Systems (MMSys) 2011-2020 (chair 2011 and 2012), ACM
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`Workshop on Network and Systems Support for Games (NetGames) 2004-2018
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`(chair 2008), ACM Network Support for Digital Audio and Video (NOSSDAV)
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`2006-2020 (chair 2006), and the ACM Multimedia Conference 2004-2017 and 2020,
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`among others. I have received government funding from NSF and MIT Lincoln
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`Labs to research and develop distributed systems and network games, as well as
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`
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`Supercell
`Exhibit 1008
`Page 3
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`industry funding from Core, EMC, Dyn, and, most recently, Intel and Google to
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`measure, evaluate and improve existing distributed systems and games.
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`7.
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`I have over 100 peer-reviewed publications issued from the early 1990s
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`to the present on topics related to multimedia networking, network games,
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`congestion control, information filtering and programming education. I am an
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`author or co-author of two computer books related to computer games: Dragonfly –
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`Program a Game Engine from Scratch and Networking and Online Games:
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`Understanding and Engineering Multiplayer Internet Games. Online games are a
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`core area of my research, making up about 1/3 of my research publications and over
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`half of my most recent publications. In addition to my research and teaching
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`responsibilities at WPI, I have advised over 25 Masters and Doctorate theses on a
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`variety of relevant topics: multimedia scaling, games and latency, and cloud-based
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`games. I have more than 25 years of experience in the field of computer science.
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`8. My professional background and technical qualifications also are
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`reflected in my Curriculum Vitae, which is attached as Ex. 1009.
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`III. COMPENSATION AND RELATIONSHIP WITH PARTIES
`9.
`I am being compensated for my time. This compensation is not
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`contingent upon my performance, the outcome of this matter, or any issues involved
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`in or related to this matter.
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`
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`Supercell
`Exhibit 1008
`Page 4
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`10.
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`I have no financial interest in Petitioner or any related parties. I have
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`been informed that GREE, Inc. (“GREE”) owns the challenged patent. I have no
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`financial interest in and have no contact with GREE beyond the kinds of cursory
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`interactions I often have with game industry professionals at conferences. I similarly
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`have no financial interest in the challenged patent and have not had any contact with
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`the named inventors.
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`IV. MATERIAL CONSIDERED
`11.
`I have reviewed and considered, in the preparation of this declaration,
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`the following related to the challenged patent:
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`a.
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`The ‘978 patent (Ex. 1001) and the prosecution file history for
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`the ‘978 patent (Ex. 1002).
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`12.
`
`I also reviewed U.S. Patent No. 9,597,594 (Ex. 1003 “the ’594 patent”)
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`and the prosecution file history for the ‘594 patent (Ex. 1004), a parent application
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`to the challenged patent and the Final Written Decision in a PGR related to the ‘594
`
`patent, PGR 2018-00008 (Paper 42).
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`13.
`
`I understand that, for purposes of determining whether a reference will
`
`qualify as prior art, the challenged claims of the challenged patent are entitled to an
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`effective filing date of no earlier than September 27, 2013.
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`14.
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`I have also reviewed and understand various references as discussed
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`herein, including the following:
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`
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`Supercell
`Exhibit 1008
`Page 5
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`a.
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`“Declaration of Antti Takala Regarding Clash of Clans Version
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`4.120” relating to the game Clash of Clans version 4.120 (Ex.
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`1010 “Clash”).
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`b.
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`“Declaration of Sean Olesiuk” regarding “Mastermind’s
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`In-Game Builder Post” (Ex. 1011 “Mastermind”);
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`c.
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`U.S. Patent No. 9,079,105 to Kim et al. (Ex. 1012 “Kim”)
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`15.
`
`I understand that the above references form the bases for the grounds
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`for invalidity set forth in the Petitions for Post Grant Review of the challenged
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`patent. To understand the Clash of Clans game as available prior to the effective
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`filing date of the challenged patent, I have reviewed the Clash reference (Ex. 1010)
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`that discusses gameplay of Clash of Clans as available in version 4.120. Based on
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`that Declaration, I understand that version 4.120 of Clash of Clans 4.120 was
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`available before the effective filing date of the challenged patent. I have also
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`reviewed the executable file “magic.exe” referenced in the Declaration as Clash of
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`Clans version 4.120. I executed this file and personally reviewed how version 4.120
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`of Clash of Clans operates when executing on a personal computer. I have also
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`personally recreated and verified the screenshots shown in Clash by operating the
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`executable file of version 4.120 referred to therein.
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`16. Additionally, I am aware of information generally available to, and
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`relied upon by, persons of ordinary skill in the art (POSITAs) as of the effective
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`Supercell
`Exhibit 1008
`Page 6
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`
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`filing date of the challenged patent, including computer games, technical dictionaries
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`and technical reference materials (including, for example, textbooks, manuals,
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`technical papers, articles, and relevant technical standards); some of my statements
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`below are expressly based on such awareness.
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`17.
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`I reserve the right to supplement my opinions to address any
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`information obtained, or positions taken, based on any new information that comes
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`to light throughout this proceeding.
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`V.
`
`BASIS OF OPINIONS FORMED
`A.
`Level of Ordinary Skill in the Art
`It is my understanding that the challenged patent is to be interpreted
`18.
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`based on how they would be read by a person of “ordinary skill in the art”
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`(“POSITA”) at the time of the effective filing date of the application. It is my
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`understanding that factors such as the education level of those working in the field,
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`the sophistication of the technology, the types of problems encountered in the art,
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`the prior art solutions to those problems, and the speed at which innovations are
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`made may help establish the level of skill in the art.
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`19.
`
`I am familiar with the technology at issue and the state of the art at the
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`effective filing date of the challenged patent, September 27, 2013.
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`20.
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`In my opinion, the level of ordinary skill in the art of the challenged
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`patent at the time of the effective filing date is a person with a bachelor’s degree in
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`Supercell
`Exhibit 1008
`Page 7
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`game design/development,
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`interactive media, computer science, computer
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`engineering, or a related field, with at least two years of professional experience
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`working in computer game design/development. With more education, such as
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`additional graduate degrees or study, less professional experience is needed to attain
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`the ordinary level of skill. Similarly, with more experiential knowledge of computer
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`games, such as experience developed while playing computer games, less
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`professional experience is needed to attain the ordinary level of skill.
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`21.
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`I consider myself to have at least such ordinary skill in the art with
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`respect to the subject matter of the challenged patent at the time of the effective filing
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`date.
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`VI. THE CHALLENGED PATENT
`22. The challenged patent is a continuation of U.S. Application No.
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`14/983,984, which issued as U.S. Patent No. 9,597,594.
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`23.
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`I understand that a continuation patent generally has the same title and
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`specification, but different claims, than its parent. Since the challenged patent is
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`related to the ‘594 patent and generally shares the same disclosure, the citations to
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`the patent specification in my discussion below refer to the ’594 patent unless
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`otherwise noted.
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`24. The challenged patent is entitled “Computer Control Method, Control
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`Program and Computer.”
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`
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`Supercell
`Exhibit 1008
`Page 8
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`
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`A.
`Purported Invention of the Challenged patent
`25. The challenged patent describes a control method and system for
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`arranging game contents within a game space. Ex. 1001 at Title and Abstract.
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`26. The challenged patent generally relates to a way of managing and
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`playing a game involving transmitting and receiving information for reproducing
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`positions of game contents arranged in a video game space. According to the
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`background section, video games played on portable devices have become
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`increasingly common, particularly “social games” where players can play against
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`and communicate with one another. Such games include “city building games”
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`where a player builds a city within a “virtual space” – which the ‘594 patent refers
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`to as a “game space.” Ex. 1003 at 1:27-30.
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`27. According to the specification of the ’594 patent, social city building
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`games are now designed so that one player’s city can be attacked by the game pieces
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`of a different player. Thus, the object of these city building games is to build and
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`design a city that can defend against such attacks by strategically arranging the game
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`contents (e.g., by placing walls, buildings, soldiers, etc. in strategic locations). Id.
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`at 1:30-34.
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`28. According to the challenged patent, one problem in these city-building
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`games is that it is cumbersome for a user to manually rearrange all the different game
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`pieces that players accumulate in their city, and players find it difficult to predict
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`
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`Supercell
`Exhibit 1008
`Page 9
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`what impact the new design will have. See Ex. 1003 at 1:42-60. This difficulty
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`discourages players from re-designing their cities after a period of time, and as a
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`result, players opt not to frequently change the layout of their cities, and the game
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`becomes monotonous. Id. at Background. The specification purports to solve this
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`problem through “making game contents and the arrangement of the game contents
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`changeable by using templates” wherein game pieces “are automatically moved to
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`the defined positions” on the game space defined by the template. Id. at 3:30-34,
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`4:34-37.
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`29. An excerpt of Figure 4, below, illustrates the concept of creating and
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`applying a template of game pieces in a video game. It describes a process in which
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`the player selects an arrangement of game pieces to save as a template, the computer
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`creates a record of the type and location of game pieces (i.e., creates a template), and
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`then the computer moves the game pieces in a game space in accordance with the
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`template (i.e., applies the template). Id. at Fig. 4 & 7:18-53. In Figure 4, grid
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`400 illustrates a game space. Nine game facilities are arranged within the game
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`space: four illustrated as “black circles,” three as “black triangles,” and two as “black
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`squares.”
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`
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`Supercell
`Exhibit 1008
`Page 10
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`30.
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`The player commands that the computer create a “template” of the
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`game pieces as shown in box 401. The computer records the types and locations of
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`these game pieces in a “template” shown in box 410. Id. at 7:18-36.
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`31.
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`The player commands that the template 410 be applied to area 421 in
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`game space 420. The computer then moves the pieces in game space 420 in
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`accordance with the template, the result of which is shown in 420’. In other words,
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`401 shows the arrangement of game pieces the player commands to comprise the
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`template, 410 demonstrates that the computer records the template, box 421 in game
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`space 420 shows where the player commands the template to be applied, and 420’
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`Supercell
`Exhibit 1008
`Page 11
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`
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`shows the application of the template to the game space. The specification describes
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`this process as the “concept of creating and applying a template.” Id. at 7:16-17.
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`32.
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`The specification describes three embodiments of the purported
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`invention. The first embodiment envisions a single player environment where a
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`single player controls the design of the city located within a game space. The player
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`can select the game pieces from his or her game space to create a template that
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`defines the positions of one or more game contents and then apply that template to
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`another single player game space. Id. at 4:26-16:21. The second embodiment
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`applies the same concept of applying a template, but the concept is applied “in a
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`multi-player environment” instead of a single-player environment. Id. at 16:25-
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`20:20; see id. at 17:24-25 & Fig. 9 (illustrating the “concept of applying a template
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`in a multi-player environment”). The third embodiment is nearly identical to the
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`first embodiment, with the exception that the template is not created by a player, but
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`rather is a pre-existing template stored in a game server. Id. at 20:24-26:13.
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`33.
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`The concept of managing and playing a game involving transmitting
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`and receiving information for reproducing positions of game contents arranged in a
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`game space is employed with generic computer equipment. The specification states
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`that the claimed computer “may be, for example, a portable device, a desktop device,
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`a server, etc., as long as it can execute the above procedure.” Id. at 2:12-14. The
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`components of the computer or device, the “device communication unit,” “device
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`Supercell
`Exhibit 1008
`Page 12
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`
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`storage unit,” “operation unit,” and “display unit,” are described in purely functional
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`and generic terms. Id. at 4:55-66 & Fig. 2.
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`34.
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`The specification also describes generic computer functionality for
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`storing the received information. See generally id. at 5:19-37. The information is
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`stored within a generic “device storage unit” of the portable device playing the game
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`or in a server connected to the device. Id. at 5:19-20. The device storage unit stores
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`several tables, functionally described as a “facility table,” a “facility-type table,” and
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`a “template table.” Id. at 5:29-37.
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`35.
`
`The independent claims of the challenged patent recite various
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`purported inventive aspects of the templates disclosed by the ‘594 patent. The ‘978
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`patent includes three claims sets: 1-6, 7-12, and 13-18. Ex. 1001 at 26:25-28:57.
`
`Claim 1 recites a method performed by a portable electronic device comprising steps
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`for creating and applying a template in a game. While claim 1 recites a method,
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`claim 7 and claim 13 recite, respectively, non-transitory computer readable media
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`and “circuitry configured to” perform the essentially same steps as recited in claim 1.
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`See Ex. 1001 at 27:6-27:28; 28:8-28.
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`36.
`
`In particular, claim 1 recites executing a game by arranging a plurality
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`of game contents in a “game space” based on a command received from a first
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`player. See Ex. 1001 at 26:25-32. The game contents include contents “for
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`defending from an attack initiated by a second player.” Id. In the challenged patent,
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`Supercell
`Exhibit 1008
`Page 13
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`
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`these game contents for “defending from an attack initiated by a second player” are
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`referred to as including various types of objects, such as “arrangement of items such
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`as protective walls, buildings that are subject to an attack, protecting soldiers,
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`weapons, etc.” Ex. 1003 at 1:47-50. “Further, types [of game objects] are not
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`limited to buildings, walls, fences and so forth, any other game items such as soldiers
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`and weapons to fight back against an attack by a different player may be applicable.”
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`Id. at 26:1-4.
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`37.
`
`In further detail, claim 1 requires receiving a command to create a
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`template from the first player and creating, responsive to that command, “a plurality
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`of templates” defining respective positions of the plurality of game contents within
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`the game space. Ex. 1001 at 26:32-37. Claim 1 further requires creating a plurality
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`of images that each correspond to one of the plurality of templates, displaying a
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`screen including the plurality of images, and receiving a selection corresponding to
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`one of the displayed images. Ex. 1001 at 26:38-42. Finally the template
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`corresponding to the received selection is applied to a predetermined area within the
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`game space. Ex. 1001 at 26:43-44.
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`38. Claim 1 has dependent claims 2-6. Claim 2 requires that the positions
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`of the game contents within the game space are defined by coordinates in the game
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`space. Ex. 1001 at 26:45-48. Claim 3 requires displaying an interface including the
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`game space and images corresponding to a plurality of game contents, receiving a
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`
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`Supercell
`Exhibit 1008
`Page 14
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`
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`command to allocate a game content in an area of the game space, and allocating the
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`game content to the area based on the command. Ex. 1001 at 26:49-58. Claim 4
`
`depends on claim 3 and requires that the plurality of game contents have different
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`types and different image data. Ex. 1001 at 26:59:63. Claim 5 depends on claim 1
`
`and requires allocating the applied template as the first player’s “active allocation”
`
`of the plurality of game contents upon receiving a command from the first player.
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`Ex. 1001 at 26:64-67. Claim 6 requires registering the applied template to a server.
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`Ex. 1001 at 27:1-5.
`
`39. As noted above, independent claims 7 and 13 and corresponding
`
`dependent claims 8-12 and 14-18 respectively recite executable computer-readable
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`instructions on a computer-readable media and “circuitry configured to” perform the
`
`steps recited in claims 1-6. See Ex. 1001 27:6-28:57. There are a few minor
`
`differences: while claim 1 recites that the template is applied to a “predetermined
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`area” of the game space, claims 7 and 13 specify only that the template is applied to
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`the game space without requiring a “predetermined area.” Ex. 1001 at 27:28-29;
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`28:27-28. Similarly, while claim 1 recites that the game contents are for defending
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`against a “second player,” claims 7 and 13 recite “another player.” See Ex. 1001 at
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`27:14-15; 28:13-14.
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`
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`Supercell
`Exhibit 1008
`Page 15
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`
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`
`
`B.
`Prosecution History
`40. The ‘978 patent was originally filed on December 29, 2016 as U.S.
`
`Application No. 15/393,646.
`
`41. The ‘978 patent is a continuation of 14/983,894, now Pat. No.
`
`9,597,594, filed Dec. 30, 2015 which is a continuation of PCT/JP2014/075673, filed
`
`Sept. 26, 2014. All of these applications claim priority to two Japanese Patent
`
`Applications, No. 2014-080554 filed April 9, 2014 and No. 2013-202721 filed
`
`Sept. 27, 2013. I understand for the purposes of this Post Grant Review
`
`proceeding that the challenged patent has an effective filing date of no earlier than
`
`September 27, 2013.
`
`42.
`
`I have reviewed the prosecution histories of the challenged patent and
`
`the ‘594 patent. I understand that comments made during prosecution of a particular
`
`patent may influence the meaning of terms in the claims of that patent, as well as
`
`terms in other claims in the same patent family.
`
`VII. LEGAL STANDARD FOR CLAIM CONSTRUCTION
`43.
`It is my understanding that “[i]n a post-grant review proceeding, a
`
`claim of a patent…shall be construed using the same claim construction standard
`
`that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),
`
`including construing the claim in accordance with the ordinary and customary
`
`
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`Supercell
`Exhibit 1008
`Page 16
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`
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`meaning of such claim as understood by one of ordinary skill in the art and the
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`prosecution history pertaining to the patent.” 37 C.F.R. § 42.200(b).
`
`44.
`
`I am not a patent attorney and my opinions are limited to what I believe
`
`a POSITA would have understood the meaning of certain claim terms to be, based
`
`on the patent specifications and prosecution histories. In my opinion, a POSITA
`
`would have no difficulty applying the plain and ordinary meanings of the majority
`
`of terms used in the challenged claims.
`
`45.
`
`I have reviewed the final decision by the Patent Trial and Appeal Board
`
`for the ‘594 patent in PGR2018-00008 and understand that a “template” was
`
`construed in that decision as “a record.” PGR 2018-00008 Final Written Decision
`
`(Paper 42).
`
`46.
`
`I understand that the ’978 patent is being asserted against Petitioner in
`
`GREE, Inc. v. Supercell Oy, Case No. 2:19-cv-00200 (E.D. Tex. filed May 27, 2019)
`
`(the “District Court Litigation”). I also understand and have reviewed the District
`
`Court Litigation’s construction of certain claim terms in the ’978 patent. See Ex.
`
`1019. The District Court Litigation construed “template” as “data structure storing
`
`a pattern,” “apply[ing] a template” as “apply[ing]…during game play,” “game
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`space” as “virtual space within which the game is played,” and “active allocation”
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`as “game contents currently allocated within the game space.” Id. at 16, 29, 32, 38.
`
`My conclusions regarding validity of the ’978 patent are the same under both the
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`
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`Supercell
`Exhibit 1008
`Page 17
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`
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`Patent Trial and Appeal Board and the District Court Litigation constructions of the
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`claim terms of the ’978 patent.
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`47.
`
`In my opinion, in view of the disclosures in the specification of the
`
`challenged patents and the prosecution history of the patent family, the claim
`
`limitations “creating, responsive to the received command to create the template, a
`
`plurality of templates defining the plurality of game contents and respective
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`positions of game contents within the game space” of claims 1, 7, and 13 require
`
`further explanation.
`
`48. Each of these limitations requires creating, “responsive to the received
`
`command to create the template” a plurality of templates. I understand at least one
`
`plausible interpretation of “responsive to” is to mean that the “plurality of templates”
`
`are required to be created in response to a single command received from the user.
`
`Based on this plausible meaning, this limitation is not adequately described in the
`
`challenged patents as discussed below. As such, under this plausible meaning of this
`
`limitation, these claims have insufficient written description and are not valid under
`
`§ 112.
`
`49. An equally plausible interpretation is that this limitation does not
`
`require a single command to create the plurality of templates, but instead creates the
`
`“plurality of templates” “responsive to” one of a set of commands received from the
`
`user. Under this alternate meaning, the claims are obvious and not valid under § 103
`
`
`
`Supercell
`Exhibit 1008
`Page 18
`
`
`
`
`
`as more fully discussed below. Because of these different equally plausible
`
`meanings, these claims do not inform a POSITA about the scope of the invention
`
`with reasonable certainty, and are thus indefinite as discussed below.
`
`VIII. WRITTEN DESCRIPTION STANDARD
`50.
`I understand that 35 U.S.C. 112 (a) requires that the “specification shall
`
`contain a written description of the invention.” I understand that a key inquiry for
`
`sufficiency of the written description of a claimed invention is whether a patent
`
`specification describes the claimed invention in sufficient detail that one skilled in
`
`the art can reasonably conclude that the inventor had possession of the claimed
`
`invention. I understand that an applicant demonstrates possession of the claimed
`
`invention by describing the claimed invention with all of its limitations using words,
`
`structures, figures, diagrams, and formulas that fully set forth the claimed invention.
`
`I understand that a claimed invention as a whole “may not be adequately described
`
`if the claims require an essential or critical feature which is not adequately described
`
`in the specification and which is not conventional or known in the art.” M.P.E.P.
`
`2163. I understand the “fundamental factual inquiry” is whether the specification
`
`conveys with reasonable clarity to those skilled in the art that, as of the filing date
`
`sought, applicant was in possession of the invention as claimed. Id.
`
`
`
`Supercell
`Exhibit 1008
`Page 19
`
`
`
`
`
`IX.
`
`INDEFINITENESS STANDARD
`51.
`I understand that 35 U.S.C. 112 (b) requires that the “specification shall
`
`conclude with one or more claims particularly pointing out and distinctly claiming
`
`the subject matter which the inventor or a joint inventor regards as the invention.” I
`
`understand that the key inquiry under section 112(b) is whether a patent’s claims,
`
`viewed in light of the specification and prosecution history, informs those skilled in
`
`the art about the scope of the invention with reasonable certainty. I also understand
`
`that a claim is indefinite under section 112(b) if language of the claim has more than
`
`one plausible meaning, and no informed and confident choice is available among the
`
`multiple plausible meanings. I understand that “[t]he primary purpose of this
`
`requirement of definiteness of claim language is to ensure that the scope of the
`
`claims is clear so the public is informed of the boundaries of what constitutes
`
`infringement of the patent.” M.P.E.P. 2173. I further understand that “[c]laims that
`
`do not meet this standard must be rejected under 35 U.S.C. 112(b).” Id.
`
`X. ANALYSIS OF THE BASIS UNDERLYING THE GROUNDS OF
`REJECTION FOR LACK OF WRITTEN DESCRIPTION SET FORTH
`IN THE PETITIONS FOR POST GRANT REVIEW
`52. On review of the claims 1, 7, and 13 of the ‘978 patent, the specification
`
`would not have conveyed with reasonable clarity to a POSITA that, as of the priority
`
`date of the challenged patents, the inventors had possession of the claimed invention.
`
`
`
`Supercell
`Exhibit 1008
`Page 20
`
`
`
`
`
`53. Claim 1 of the ‘978 patent recites a method including a step of
`
`“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.”
`
`54. Claim 7 recites a computer-readable media having instructions
`
`executable to perform the same functional limitation, and claim 13 recites “circuitry
`
`configured to” do the same.
`
`55. On review of the disclosures of the challenged patents, I cannot identify
`
`adequate written description for creating, in response to a received command to
`
`create the template, a plurality of templates. In reviewing the parent ‘594 patent
`
`specification, each time that a template is created, the ‘594 patent discloses creating
`
`“a” template, rather than creating a plurality of templates. For example, the first
`
`embodiment discussed in the ‘594 patent discloses: “When an area is selected by the
`
`player via the operation unit 23 (step S122) and a command to create a template is
`
`given, the template creation unit 252 creates a template (step S124).” Ex. 1003 at
`
`14:37-40. In the second embodiment, relating to a multi-player environment, rather
`
`than disclosing creating a plurality of templates based on a received command, the
`
`‘594 patent disclosure shows “combining templates in a multi-player environment.”
`
`Id. at 19:61-62. The specification discloses combining templates into a single
`
`template and that a device obtains templates from each player’s device and “creates
`
`
`
`Supercell
`Exhibit 1008
`Page 21
`
`
`
`
`
`a new template by arranging the obtained templates on the designated areas.” Id. at
`
`20:12-13. The third embodiment, discussed at cols. 20-26, discusses an embodiment
`
`including preexisting templates that may be associated with particular events. “In
`
`the above-described embodiment [embodiments before the third embodiment], is
`
`assumed that templates are created by the player. However, preexisting templates
`
`may also be distributed by a server or the like.” Id. at 20:24-26. None of these
`
`portions of the supporting disclosure would have been understood to convey
`
`possession of the creation of a plurality of templates based on “a” template creation
`
`command, nor do I find support for this concept in the remainder of the supporting
`
`disclosure.
`
`56. Accordingly, a POSITA reviewing the disclosure supporting the
`
`challenged patents (including the ‘594 patent), would not have found a sufficient
`
`written description demonstrating possession of the claimed invention, and
`
`particularly the limitation to “create a plurality of templates” responsive to receiving
`
`a player’s template creation command” of claims 1, 7, and 13 of the ‘978 patent.
`
`XI. ANALYSIS OF THE BASIS UNDERLYING THE GROUNDS OF
`REJECTION FOR INDEFINITENESS SET FORTH IN THE
`PETITIONS FOR POST GRANT REVIEW
`57. Claims 1, 7, and 13 of the ‘978 patent do not, when viewed in light of
`
`the specification and prosecution history, inform a POSITA about the scope of the
`
`invention with reasonable certainty.
`
`
`
`Supercell
`Exhibit 1008
`Page 22
`
`
`
`58. As discussed above, the language of these claims permits at least two
`
`equally plausible interpretations in my opinion, namely: (1) that a single command
`
`received from the player creates multiple templates, or (2) that the template creation
`
`command is one of a set of commands received from the user that creates the
`
`plurality of templates. The specification provides no guidance regarding which of
`
`these two plausible interpretations apply to the creating step recited in claims 1, 7,
`
`and 13.
`
`59. Accordingly, claims 1, 7, and 13 of the ‘978 patent do not, when viewed
`
`in light of the specification and prosecution history of the challenged patents
`
`(including the ‘594 patent and the ‘594 patent’s prosecution history), inform a
`
`POSITA about the scope of the invention with reasonable certainty.
`
`XII. ANTICIPATION AND OBVIOUSNESS STANDARDS
`60.
`I understand that “anticipation” is a question of fact and that for a
`
`reference to anticipate a claimed invention it must disclose each and every element
`
`set forth in the claim for that invention. I further understand that the requirement of
`
`strict identity between the claim and the reference is not met if a singl
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