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 INVALIDITY CONTENTIONS
`AND DISCLOSURES UNDER LOCAL PATENT RULES 3-3 AND 3-4
`
`Pursuant to Patent Rules 3-3 and 3-4, the Court’s Amended Docket Control Order
`
`(Dkt. No. 53), and the Court’s Discovery Order (Dkt. No. 52), Defendant Supercell Oy
`
`(“Supercell” or “Defendant”) discloses its Invalidity Contentions (“Invalidity Contentions”)
`
`addressing how claims 1 – 3, 9 – 11, 17, and 18 of U.S. Patent No. 10,300,385 (“the ’385
`
`Patent”); claims 1 – 30 of U.S. Patent No. 10,307,675 (“the ’675 Patent”); claims 1 – 24 of
`
`U.S. Patent No. 10,307,676 (“the ’676 Patent); claims 1 – 20 of U.S. Patent No. 10,307,677
`
`(the’677 Patent); claims 1 – 14 of U.S. Patent No. 10,307,678 (the ’678 Patent); claims 1 – 30 of
`
`U.S. Patent No. 10,328,347 (the ’347 Patent); claims 1 – 12 of U.S. Patent No. 10,335,683
`
`(the ’683 Patent); claims 1 – 16 U.S. Patent No. 10,335,682 (the ’682 Patent); and claims 1 – 18
`
`U.S. Patent No. 10,398,978 (the ’978 Patent) (collectively referred to as the “Asserted Patents”)
`
`are invalid.
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 1 of 23
`
`

`

`
`
`Supercell’s discovery and investigation in this lawsuit are ongoing, and therefore,
`
`Supercell reserves the right to revise, amend, and/or supplement these Preliminary Invalidity
`
`Contentions as discovery progresses and as it discovers additional information.
`
`I.
`
`RESERVATIONS AND OBJECTIONS
`A.
`
`General Reservations
`
`Pursuant to P.R. 3-6, Supercell reserves the right to amend or supplement these
`
`Preliminary Invalidity Contentions should GREE: (1) amend its P.R. 3-1 or 3-2 disclosures,
`
`including but not limited to amending such disclosures based on GREE’s review and analysis of
`
`source code made available by Supercell; or (2) at trial, in a hearing, or during a deposition, rely
`
`upon any information that it failed to identify in its P.R. 3-1 and 3-2 disclosures. Supercell also
`
`reserves the right to amend or supplement these Preliminary Invalidity Contentions in
`
`accordance with Paragraph 3(a) of the Court’s Discovery Order. Supercell provides the
`
`disclosures below, as well as the accompanying production of documents, in compliance with
`
`P.R. 3-3 and 3-4.
`
`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
`
`claim construction disclosures will be provided under P.R. 4 as required by the Court’s Docket
`
`Control Order. Nothing contained in these Preliminary Invalidity Contentions should be
`
`understood or deemed to be an express or implied admission or contention with respect to the
`
`proper construction of any terms in an asserted claim, or with respect to the alleged infringement
`
`of that claim.
`
`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
`
`2
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 2 of 23
`
`

`

`
`
`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.
`
`GREE’s Deficient Infringement Contentions
`
`Supercell notes that GREE’s Infringement Contentions and related disclosures are
`
`deficient in that they fail to comply with P.R. 3-1 and 3-2 because they fail to give adequate
`
`notice regarding the details of GREE’s infringement theories. The lack of detail and deficiencies
`
`contained in GREE’s Infringement Contentions have prejudiced Supercell’s ability to prepare
`
`these Preliminary Invalidity Contentions, including forcing Supercell to speculate as to GREE’s
`
`actual position(s) on Supercell’s alleged infringement and the meaning of various claim terms.
`
`The exhibit attached to the cover pleading purporting to disclose GREE’s infringement
`
`positions also fails to put Supercell on adequate notice of GREE’s positions regarding the alleged
`
`infringement of the Asserted Claims and/or Asserted Patents by Supercell’s products and/or
`
`services. The exhibit is comprised of vague conclusions that fail to identify “specifically where
`
`each element of each asserted claim is found within each Accused Instrumentality” as required
`
`by P.R. 3-1(c).
`
`Supercell’s Invalidity Contentions are based on its present understanding of the Asserted
`
`Claims and GREE’s apparent positions as to the scope of the Asserted Claims as applied in its
`
`P.R. 3-1 disclosures. Supercell’s Invalidity Contentions (including the attached invalidity claim
`
`charts) reflect, to the extent possible, its best understanding as to GREE’s potential alternative or
`
`evolving positions on claim construction and scope. Supercell reserves the right to revise,
`
`amend, and/or supplement these Preliminary Invalidity Contentions and/or its P.R. 3-4
`
`disclosures should GREE amend its P.R. 3-1 disclosures, including but not limited to amending
`
`such disclosures based on GREE’s review and analysis of source code made available by
`
`3
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 3 of 23
`
`

`

`
`
`Supercell, or attempt to rely on any information that it failed to provide in its P.R. 3-1 and 3-2
`
`disclosures.
`
`C.
`
`Asserted Claims
`
`GREE purports to assert the following claims against Supercell from the Asserted
`
`Patents:
`
`Patent Number
`
`Claim Numbers
`
`10,300,385
`
`10,307,675
`
`10,307,676
`
`10,307,677
`
`10,307,678
`
`10,328,347
`
`10,335,683
`
`10,335,682
`
`10,398,978
`
`1 – 3, 9 – 11, 17, and 18
`
`1 – 30
`
`1 – 24
`
`1 – 20
`
`1 – 14
`
`1 – 30
`
`1 – 12
`
`1 – 16
`
`1 – 18
`
`
`
`(collectively, the “Asserted Claims”).
`
`GREE, however, has failed to comply with its obligation to provide a chart identifying
`
`specifically where each element of each asserted claim is found within each Accused
`
`Instrumentality under P.R. 3-1(c). Where GREE has failed to provide such a chart and
`
`identification, Supercell has deferred providing invalidity disclosures. Should GREE seek to
`
`amend its infringement contentions to properly assert these claims, Supercell reserves the right to
`
`amend its invalidity contentions in response. These preliminary infringement contentions, thus,
`
`address only the Asserted Claims, which have been asserted in compliance with the Patent Local
`
`4
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 4 of 23
`
`

`

`
`
`Rules. Supercell reserves the right to supplement these contentions if GREE asserts
`
`infringement of any claim other than the Asserted Claims.
`
`D.
`
`Ongoing Discovery
`
`Discovery is ongoing, and Supercell’s prior art investigation and third-party discovery are
`
`as well. As such, Supercell reserves the right to revise, amend, and/or supplement the
`
`information provided herein, including identifying, charting, and relying on additional material
`
`or references. Supercell further reserves the right to amend, modify, or supplement these
`
`Invalidity Contentions to include additional prior art under 35 U.S.C. §§ 102 and 103, or assert
`
`additional bases of invalidity under 35 U.S.C. §§ 101, 102, 103, and/or 112 as discovery in this
`
`action and Supercell’s investigation proceeds. In particular, Supercell intends to rely upon
`
`additional discovery, including but not limited to third party discovery, which is in its early
`
`stages, to obtain additional information regarding prior art games, including the relevant version
`
`of the prior art games, declarations and source code.
`
`E.
`
`Claim Construction
`
`Without conceding any express or implied claim construction suggested by GREE
`
`through its Infringement Contentions, Supercell has attempted to apply the prior art to the
`
`Asserted Claims. GREE’s application of those constructions are in some instances broader than
`
`Supercell’s contentions regarding the proper scope of the claims. Should the claims be construed
`
`or asserted differently than Supercell’s current understanding of the claims, Supercell reserves
`
`the right to modify, amend, or supplement these Preliminary Invalidity Contentions as provided
`
`by the Local Rules and the Federal Rules of Civil Procedure.
`
`Supercell’s Preliminary Invalidity Contentions should not be construed as a suggestion or
`
`admission that GREE’s apparent claim constructions are correct. Indeed, in many instances,
`
`Supercell objects and disagrees with the apparent claim constructions GREE has offered in
`
`5
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 5 of 23
`
`

`

`
`
`GREE’s Infringement Contentions as such constructions (1) are unsupported or contradicted by
`
`the intrinsic and extrinsic record relating to the Asserted Patents and applications related thereto,
`
`(2) would impermissibly read out one or more limitations of the Asserted Claims, or (3) are
`
`otherwise inconsistent with the understanding of a person of ordinary skill in the art. Supercell’s
`
`Preliminary Invalidity Contentions should not be construed to suggest that any claim term or
`
`phrase complies with 35 U.S.C. § 112. Finally, Supercell’s Preliminary Invalidity Contentions
`
`should not be construed as a suggestion or admission of infringement because Supercell
`
`specifically denies that it infringes any Asserted Claim.
`
`Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions to reflect positions taken by the parties during the claim construction process.
`
`Further, Supercell reserves the right to amend or supplement these Preliminary Invalidity
`
`Contentions in the event the Court adopts claim constructions different than those anticipated by
`
`Supercell. Supercell expressly reserves and does not waive its right to contest any claim
`
`constructions, or to take positions during claim construction proceedings or in connection with
`
`alleged infringement, that are inconsistent with, or even contradictory to, the positions set forth
`
`in these Invalidity Contentions.
`
`F.
`
`Cited References and Prosecution File History as Sources of Additional Prior
`Art
`
`Supercell also intends to rely upon prior art cited during the prosecution of the Asserted
`
`Patents, as well as the prosecution of related patents/applications, as invalidating references or to
`
`show the state of the art. Supercell incorporates by reference each and every admission,
`
`including the patent applicant’s admissions concerning the scope of the prior art, and each and
`
`every prior art reference of record, which may be found in the file history of the Asserted Patents
`
`or related applications/patents, and each and every argument and rejection, on whatever grounds,
`
`6
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 6 of 23
`
`

`

`
`
`by the examiners during the prosecution of the Asserted Patents. The subject matter of these
`
`admissions and prior art references is set forth in the Asserted Patents and the related
`
`applications/patents and the associated prosecution files, and their relevance and ability to be
`
`combined with other prior art set forth herein to render the Asserted Patents obvious will be
`
`apparent.
`
`G.
`
`Contextual Evidence
`
`Supercell’s Preliminary Invalidity Contentions cite to exemplary portions of the cited
`
`prior art references. The citations to exemplary portions of the prior art references should not be
`
`construed to mean that other portions of the prior art references are not relevant to the invalidity
`
`of the Asserted Claims. To the contrary, the citations are intended to put GREE on notice of the
`
`bases for Supercell’s contentions, but are not intended as a complete recitation of all support for
`
`those contentions. Supercell reserves the right to rely on the entirety of any, or any part of, the
`
`prior art references, whether charted or not charted, as a basis for asserting invalidity of the
`
`Asserted Claims.
`
`Furthermore, persons having ordinary skill in the art would view an item of prior art in
`
`the context of their experience and training, other publications, literature, products and general
`
`understanding. As such, the cited portions are exemplary, and Supercell may rely on uncited
`
`portions of the prior art references, and other documents, such as statements in the cited
`
`references of the specifications, the prosecution history, and related applications/patents of the
`
`Asserted Patents, and fact and expert testimony and documents not yet discovered, to provide
`
`background, context, or to otherwise aid in understanding the cited portions of the prior art
`
`references. Citations to a figure in a reference should be understood to encompass the caption
`
`and description of the figure and any text relating to the figure. Likewise, citations to text
`
`referring to a figure should be understood to include the corresponding figure as well. Prior art
`
`7
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 7 of 23
`
`

`

`
`
`not included in these disclosures, whether known or not known to Supercell, may become
`
`relevant, and Supercell reserves the right to supplement its Preliminary Invalidity Contentions to
`
`identify and rely upon this prior art.
`
`Additionally, the suggested obviousness combinations in Supercell’s Preliminary
`
`Invalidity Contentions are provided in the alternative and should not be construed to suggest that
`
`any reference included in the combinations is not by itself anticipatory. Supercell is currently
`
`unaware of the extent, if any, to which GREE will contend that Supercell’s anticipatory
`
`references do not disclose limitations of the Asserted Claims. To the extent that GREE contends
`
`that any of Supercell’s anticipatory references are missing one or more limitation of the Asserted
`
`Claims, Supercell reserves the right to counter such assertions by further reference to Supercell’s
`
`anticipatory references and/or to identify other references, combinations of references, and/or
`
`knowledge of a person of ordinary skill in the art that disclose the limitation(s) allegedly missing
`
`in the anticipatory reference(s) to render the Asserted Claims invalid.
`
`H.
`
`Rebuttal Evidence
`
`Additional prior art, whether known or not known to Supercell as of the date of these
`
`contentions, may become relevant depending on GREE’s arguments regarding the scope of the
`
`disclosure of the prior art identified herein. In particular, Supercell is currently unaware of the
`
`extent, if any, to which GREE will contend that limitations of the Asserted Claims are not
`
`disclosed in the prior art identified by GREE. To the extent such an issue arises, Supercell
`
`reserves the right to identify other references that would anticipate or render obvious the
`
`allegedly missing limitation(s).
`
`8
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 8 of 23
`
`

`

`
`
`II.
`
`P.R. 3-3 INVALIDITY CONTENTIONS
`A.
`
`P.R. 3-3(a) Disclosures
`
`The concepts disclosed and claimed in the Asserted Claims are not new, and had been
`
`disclosed and actively practiced by others prior to the claimed invention date. The prior art
`
`includes various documents, products, patents and inventions that separately and together render
`
`the Asserted Claims invalid. In addition, as described in more detail below, claims of the
`
`Asserted Claims are invalid under 35 U.S.C. §§ 101 and 112.
`
`Supercell asserts that the prior art listed in Exhibits A-I and in the Tables below,
`
`individually or in combination, invalidates the Asserted Claims. These prior art references
`
`disclose each and every limitation of one or more of the Asserted Claims either explicitly,
`
`inherently, or via an obvious combination and may also be relied upon to show the state of the
`
`art in the relevant timeframes. The following patents and publications are prior art under at least
`
`35 U.S.C. §§ 102(a), (b), (e), or (g).
`
`TABLE 1: Prior Art Patent, Patent Applications, and Publications
`Anticipating the Asserted Claims
`
`Patent or Publication No.
`
`Country of
`Origin
`
`Date of Issue or
`Publication
`
`Herein Referenced
`As
`
`JP5042200
`
`Japan
`
`U.S. Patent No. 4,422,639
`
`United States
`
`U.S. Patent No. 7,708,641
`
`United States
`
`U.S. Patent No. 8,029,348
`
`United States
`
`On or before July
`20, 2012
`
`JP 200
`
`On or before
`December 27,
`1983
`
`Del Principe
`
`On or before May
`4, 2010
`
`Tawara
`
`On or before
`October 4, 2011
`
`Suzuki
`
`9
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 9 of 23
`
`

`

`
`
`U.S. Patent No. 9,079,105
`
`United States
`
`U.S. Patent Publication No.
`2007/0105626A1
`
`United States
`
`U.S. Patent No. 8,206,224
`
`United States
`
`U.S. Patent Publication No.
`2013/0060362A1
`
`U.S. Patent Publication No.
`2013/0138590A1
`
`United States
`
`On or before July
`14, 2015
`
`On or before May
`10, 2007
`
`Kim
`
`Cho
`
`On or before June
`26, 2012
`
`Farone
`
`On or before
`March 7, 2013
`
`Murphy
`
`United States
`
`On or before May
`30, 2013
`
`Huke
`
`TABLE 2: Non-Patent Prior Art Including Publications and Items
`Used, Known of, and/or Offered for Sale that Anticipate
`the Asserted Claims1
`
`Title, and Author, Publisher and/or
`Person or Entity that Offered for
`Sale, Sold, Publicly Used or Made
`Known
`
`Date of Publication,
`Offer for Sale, and/or
`Public Use/Knowledge
`
`Herein Referenced
`As
`
`Age of Empires II Game, Microsoft*
`
`On or before 1999
`
`Age of Empires
`
`Backyard Monsters Game, Kixeye*
`
`On or before June 29,
`2012
`
`Backyard Monsters
`(BYM)
`
`Battle.net -
`http://classic.battle.net/intro.shtml
`
`On or before November
`21, 2012
`
`Battle
`
`Clash of Clans Game, Supercell*
`
`On or before Aug. 28,
`2013 (v4.120); Sep. 19,
`2013 (v5.2)
`
`Clash of Clans
`
`On or before October
`25, 2005
`
`Sid Meier’s Civilization IV Game,
`Game Spy Industries*
`
`1 Supercell intends to rely upon prior art related to video games for the Asserted Patents. Such
`video game prior art references have been identified in Tables 1-2 with an asterisk (*). In the
`corresponding charts in Exhibit A-I, Supercell has provided visual representations of the relevant
`features and functionalities using publicly available prior art videos, manuals, webpages, or other
`material. Supercell will rely upon third party discovery, which is in its early stages, to obtain the
`relevant version of the prior art games for use at trial. Supercell reserves the right to assert prior
`art related to games as a prior art system, as printed publications, or both.
`
`Civilization IV
`
`10
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 10 of 23
`
`

`

`
`
`FIFA 12 Game, EA Sports*
`
`On or before 2012
`
`FIFA 12
`
`FIFA 13 Game (PS3 and XBOX), EA
`Sports*
`
`On or before September
`25, 2012
`
`FIFA 13
`
`FIFA 14 Game EA Sports*
`
`On or before September
`23, 2013
`
`FIFA 14
`
`Gratuitous Tank Battles Game, Positech
`Games*
`
`On or before May 17,
`2012
`
`Gratuitous Tank
`Battles
`
`Gratuitous Space Battles Game,
`Positech Games*
`
`On or before November
`17, 2009
`
`Gratuitous Space
`Battles
`
`Legend of Grimrock Dungeon Editor
`Game, Almost Human Games*
`
`On or before Oct. 4,
`2012 (release); On or
`before June 27, 2012 or
`Sep. 12, 2012 (offer)
`
`Legend of
`Grimrock
`
`Madden 25 Game (PS3 and XBOX), EA
`Sports*
`
`On or before August 27,
`2013
`
`Madden 25
`
`Mastermind’s In-Game Builder Post
`
`On or before September
`11, 2013
`
`Mastermind
`
`Starcraft II – GalaxyEdit Game,
`Blizzard Entertainment*
`
`On or before July 27,
`2010
`
`Starcraft II
`
`Stardrive Game, Zero Sum Games*
`
`On or before April 2013 Stardrive
`
`Supreme Commander Game, Gas
`Powered Games*
`
`June 5, 2010
`
`Supreme
`Commander
`
`Sword of the Stars Game, Kerberos
`Productions*
`
`On or before May 6,
`2010
`
`Sword of the Stars
`
`
`
`B.
`
`P.R. 3-3(b)
`
`1.
`
`Anticipatory Prior Art
`
`The attached claim charts in Exhibits A-I demonstrate where each limitation of the
`
`anticipated claims is found in certain of the references listed below, either expressly or inherently
`
`11
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 11 of 23
`
`

`

`
`
`in the larger context of the passage, or inherently as the reference as a whole is understood by a
`
`person having ordinary skill in the art.
`
`2.
`
`Obvious Combinations
`
`The Asserted Claims are invalid as obvious under 35 U.S.C. § 103. Each Anticipatory
`
`Reference, either alone or in combination with the other identified prior art, and/or in
`
`combination with the knowledge of one skilled in the art, renders the Asserted Claims invalid as
`
`obvious. In particular, each anticipatory prior art reference may be combined with (1)
`
`information known to persons skilled in the art at the time of the alleged invention, (2) any of the
`
`other anticipatory prior art references, and/or (3) any of the additional prior art identified below
`
`in these Invalidity Contentions. The accompanying claim charts and tables below provide
`
`exemplary obviousness combinations under 35 U.S.C. § 103. The disclosed combinations are
`
`not meant to be exhaustive. Supercell is not aware of how Plaintiff may attempt to distinguish
`
`the prior art cited herein, and reserves the right to identify other references that would have
`
`supplied the allegedly missing element to render the Asserted Claims obvious. Accordingly, to
`
`the extent that Plaintiff contends that any of the Anticipatory References fails to disclose one or
`
`more limitations of the asserted claims, Supercell reserves the right to identify other prior art
`
`references that, when combined with the anticipatory prior art, would render the claims obvious
`
`despite the allegedly missing limitation.
`
`In addition, Supercell incorporates by reference each and every prior art reference of
`
`record in the prosecution of the Asserted Patents and related applications (including applications
`
`referenced in or incorporated by reference in the Asserted Patents), including the statements
`
`made therein by the applicant and the examiner, the prior art discussed in the specification, and
`
`any other statements found in the intrinsic record.
`
`12
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 12 of 23
`
`

`

`
`
`Supercell identifies specific combinations that render the Asserted Claims obvious in the
`
`claim charts attached in Exhibits A-I. Where each element is disclosed in each prior art
`
`reference is shown in attached claim charts in Exhibits A-I. Further, Supercell identifies the
`
`following exemplary combinations that render the Asserted Claims obvious:
`
`TABLE 3: Exemplary Obviousness Combinations
`
`Claims
`
`Anticipatory Reference
`
`Obviousness combination references
`
`All
`
`All
`
`All
`
`All
`
`All
`
`All
`
`Mastermind
`
`Backyard Monsters
`
`Cho
`
`Kim
`
`Farone
`
`Clash of Clans, Backyard Monsters, Cho,
`Farone, Kim, and/or JP 200
`Mastermind, Clash of Clans Cho, Farone, Kim,
`and/or JP 200
`FIFA 13, Madden 25
`
`FIFA 13, Madden 25
`
`Legend of Grimrock
`
`Gratuitous Tank Battles
`
`
`
`Gratuitous Space Battles, Cho, Farone, Kim,
`and/or JP 200
`
`3.
`
`Motivations to Combine
`
`A person of skill in the art would have been motivated to combine each of the above
`
`referenced combinations of prior art as provided in the claim charts attached in Exhibits A-I and
`
`as further provided in Table 3. As the United States Supreme Court held in KSR International
`
`Co. v. Teleflex Inc., “[t]he combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results.” 550 U.S. 398, 416
`
`(2007).2 The Supreme Court further held that, “[w]hen a work is available in one field of
`
`endeavor, design incentives and other market forces can prompt variations of it, either in the
`
`
`2 Pursuant to P. R. 3-3, Supercell has included this section discussing motivation to combine. In
`KSR v. Teleflex, however, the Supreme Court rejected the idea that a “teaching, suggestion, or
`motivation to combine” is a prerequisite for obviousness.
`
`13
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 13 of 23
`
`

`

`
`
`same field or a different one. If a person of ordinary skill can implement a predictable variation,
`
`§103 likely bars its patentability. For the same reason, if a technique has been used to improve
`
`one device, and a person of ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique is obvious unless its actual application is
`
`beyond his or her skill. . . .” Id. at 417. Accordingly, a person of skill in the art would have been
`
`motivated to combine or adapt known or familiar methods in the art, especially where market
`
`forces prompt such variations.
`
`To a person of ordinary skill in the art, the Asserted Claims represent solutions that
`
`would have been obvious to try, with predictable results. As an initial matter, the scope and
`
`content of the prior art is extensive. Video game design and development, particularly with a
`
`focus on the Internet, burgeoned in the 1990s and early 2000s and the industry followed a
`
`trajectory mirroring the rapid explosion and rising popularity of consumer-level Internet usage in
`
`both the United States and around the world. Accordingly, the combination or modification of
`
`the prior art references disclosed herein would have no unexpected results and at most would
`
`simply represent a known alternative to one of skill in the art.
`
`The combinations expressly identified below and in the attached charts would have been
`
`combined or modified using: known methods to yield predictable results; common sense; known
`
`techniques in the same way; a simple substitution of one known, equivalent element for another
`
`to obtain predictable results; and/or a teaching, suggestion, or motivation in the prior art
`
`generally. In addition, it would have been obvious to try combining or modifying the prior art
`
`references identified herein because there were only a finite number of predictable solutions
`
`and/or because known work in one field of endeavor prompted variations based on predictable
`
`design incentives and/or market forces either in the same field or a different one. In addition, the
`
`14
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 14 of 23
`
`

`

`
`
`combinations of the prior art references would have been obvious because the combinations
`
`represent known potential options with a reasonable expectation of success.
`
`Here, each combination identified in Table 3 would have been obvious considering at
`
`least the state of the art, common sense, and the knowledge of one of ordinary skill in the art.
`
`For instance, a person of skill in the art would be familiar with executing games both as a game
`
`program pre-installed in a terminal device and as an online game that is wirelessly connected to a
`
`game server apparatus over a network. A person of skill in the art would further be familiar with
`
`platforms used for playing video games, including network-capable platforms, such as personal
`
`computers, video game consoles, smartphones, and other mobile devices, and would further be
`
`familiar with the conventional wisdom of the industry to maximize game features enabled by
`
`such hardware, such as touch screen input and network based multiplayer, in game design.
`
`Further, the motivation for such combinations is present on the face of the disclosed
`
`references. For example, as is clear from the face of the disclosed references, a person of
`
`ordinary skill in the art of video games would be familiar with providing user the ability to
`
`create, edit, and share formations or layouts of various types of game units such as characters,
`
`buildings, weapons, pathways, and decorations. Such a skilled artisan would also be familiar
`
`with applying these concepts in various video game genres including city-building, tower
`
`defense, battle, or sporting games. Accordingly, if a reference lacks a particular functionality
`
`related to editing or sharing formations or layouts, a person of ordinary skill in the art would be
`
`familiar with the missing function (as disclosed in the combination reference) and would be
`
`motivated to combine the references to enhance the game experience for the player. Given that
`
`these functions had been employed in a variety of genres and relate to player engagement and
`
`enjoyment, a person of ordinary skill in the art would understand that the various functions
`
`15
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 15 of 23
`
`

`

`
`
`disclosed could be combined to create the type of player experience desired with respect to
`
`creating, editing, and sharing formations and layouts.
`
`A person of ordinary skill in the art would also be familiar with, and motivated to
`
`combine, games that are related to each other, for example games within the same genre or
`
`games created by the same developer or publisher. For instance, a person of skill in the art who
`
`is familiar with the sports-related video games as disclosed in Cho and Kim would be familiar
`
`with such sports-related video games like FIFA and Madden 25. Further for example, a person
`
`of skill in the art who is familiar with the battle-related video games as disclosed in JP 200 and
`
`Mastermind would be familiar with such battle-related video games like Clash of Clans and
`
`Backyard Monsters. A person of skill in the art who is familiar with dungeon-based video games
`
`as disclosed in Farone would be familiar with such dungeon-based video games like Legends of
`
`Grimrock. Further, a person of ordinary skill in the art who is familiar with games published or
`
`developed by a certain company would be familiar with other games published or developed by
`
`that same company. For example, a person of ordinary skill in the art familiar with Gratuitous
`
`Tank Battles would be familiar with other games published or developed by Positech Games,
`
`such as Gratuitous Space Battles. A person of ordinary skill in the art who is familiar with
`
`Mastermind would be familiar with the game underlying Mastermind (i.e., Supercell’s Clash of
`
`Clans).
`
`Moreover, the Supreme Court held that “familiar items may have obvious uses beyond
`
`their primary purposes, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.” Id. at 421. Indeed, the Supreme
`
`Court held that it is sufficient that a combination of elements was “obvious to try” holding that,
`
`“[w]hen there is a design need or market pressure to solve a problem and there are a finite
`
`16
`
`Patent Owner Gree, Inc.
`Exhibit 2005 - Page 16 of 23
`
`

`

`
`
`number of identified, predictable solutions, a person of ordinary skill has good reason to pursue
`
`the known options within his or her technical grasp.” Id. The combinations shown in each claim
`
`chart would have yielded results predictable to one of ordinary skill in the art at the time of the
`
`alleged invention, and one of ordinary skill would have been motivated to make such a
`
`combination based on the similar nature of the problems they address and solve. For instance,
`
`the obviousness combinations in Table 3 each address implementing a sharing function into a
`
`video game which already contains a map, formation, or layout editing function. Furthermore,
`
`the underlying techniques used in the combined references are very similar. For instance,
`
`various references including FIFA 13, Madden 25, StarCraft II, and Gratuitous Tank Battles, and
`
`Cho, each permit a user to save a preferred layout, formation, command or series of layouts, and
`
`then permits the user to share and those preferred layouts with other users, who may then
`
`implement those stored layouts. Thus, such a video game feature was routine and the level of
`
`predictability in video games permitting stored layouts to be shared with and applied by others is
`
`high, and such combinations are predictable variations of the methods in the individual
`
`references which, when combined, would be operable to achieve the goals related to the Asserted
`
`Patents and sharing stored layouts.
`
`While not necessary, a motivation to combine may also be found in the references
`
`themselves. One of skill in the art would be motivated to combine a reference that refers to, or
`
`otherwise explicitly invites combination with, another reference, either by specific mention of
`
`the other reference or a general discussion of the category to which the other reference relates.
`
`M