UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`The Honorable Rodney Gilstrap
`
`
`Civil Action No. 2:19-cv-00071-JRG-RSP
`
`
`JURY TRIAL DEMANDED
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`
`§§§§§§§§§§
`
`
`
`Plaintiff,
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`Defendant.
`
`GREE, INC.,
`
`
`v.
`
`
`SUPERCELL OY,
`
`
`
`
`
`
`
`DEFENDANT SUPERCELL OY’S FIRST SUPPLEMENTAL OBJECTIONS AND
`RESPONSES TO PLAINTIFF’S THIRD SET OF INTERROGATORIES
`
`Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, Defendant
`
`Supercell Oy (“Supercell”) hereby provides the following supplemental responses to Plaintiff
`
`GREE, Inc. (“GREE”) Third Set of Interrogatories (Nos. 13-16) as set forth below.
`
`GENERAL OBJECTIONS
`
`Supercell makes the following General Objections to each and every definition and
`
`Interrogatory made in this set of Interrogatories. Each of these objections is incorporated into
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`Supercell’s response to each Interrogatory, whether or not separately set forth therein. By
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`responding to any of the Interrogatories or failing to specifically refer to or specify any particular
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`General Objection in response, Supercell does not waive any of these General Objections, nor does
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`it admit or concede the appropriateness of any purported request or any assumptions it contains.
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`1.
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`Nothing in these responses should be construed as waiving rights or objections
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`that might otherwise be available to Supercell, nor should Supercell’s responses to any of these
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`
`
`
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 1 of 17
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`

`

`Interrogatories be deemed an admission of relevancy, materiality, or admissibility in evidence of
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`the Interrogatory or the response thereto.
`
`2.
`
`Supercell objects to the Interrogatories to the extent that they seek the disclosure
`
`of information protected by the attorney-client privilege, attorney work product doctrine,
`
`common interest exception, duty of confidentiality, or any other applicable privilege, immunity,
`
`doctrine, or protection as provided by law. Nothing in these objections and responses is intended
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`to be or is a waiver of any applicable privilege, immunity, doctrine, or protection.
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`3.
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`Supercell objects to the Interrogatories to the extent that they seek information
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`that is confidential and/or proprietary, or information that is subject to any protective order,
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`privacy interest, contractual obligation or confidentiality obligation, or otherwise prohibited from
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`disclosure by law. Supercell will disclose such information only in compliance with its
`
`obligations to third parties and subject to an appropriate protective order. Supercell will not
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`provide such documents or information until entry of an appropriate protective order.
`
`4.
`
`Supercell objects to the definitions, instructions, and Interrogatories to the extent
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`that they are overly broad, unduly burdensome, oppressive, inconsistent with, or purport to
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`impose obligations on Supercell beyond those required by the Federal Rules of Civil Procedure,
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`the Local Rules for the United States District Court for the Eastern District of Texas, or any other
`
`applicable regulations and case law. Supercell’s responses, regardless of whether they include a
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`specific objection, do not constitute an adoption or acceptance of the definitions or instructions
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`that GREE seeks to impose.
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`5.
`
`Supercell objects to the Interrogatories to the extent that they seek identification
`
`and production of information that is neither relevant to a claim or defense in this matter nor
`
`proportional to the needs of this case.
`
`
`
`2
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 2 of 17
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`

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`6.
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`Supercell objects to the Interrogatories to the extent the burden or expense of the
`
`discovery sought outweighs any likely benefit.
`
`7.
`
`Supercell objects to the Interrogatories to the extent that they are compound
`
`and/or are comprised of subparts constituting more than one Interrogatory. Supercell objects to
`
`the extent that the Interrogatories are overbroad and that their number exceeds that set by Federal
`
`Rules of Civil Procedure or the Local Rules of this District.
`
`8.
`
`Supercell objects to each Interrogatory to the extent the information sought is
`
`already in GREE’s possession, custody, or control, or obtainable from some other source that is
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`more convenient, less burdensome, or less expensive.
`
`9.
`
`Supercell objects to each definition, instruction and Interrogatory to the extent it is
`
`vague, ambiguous, fails to describe the information sought with the required reasonable
`
`particularity, or is so unintelligible that Supercell cannot ascertain what information is responsive.
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`Supercell will give the terms of these Interrogatories their ordinary and plain meanings. Supercell
`
`shall not be held responsible where its interpretation of the Interrogatories does not comport with
`
`GREE’s intentions.
`
`10.
`
`Supercell objects to the definitions, instructions, and Interrogatories to the extent
`
`they call for a legal conclusion.
`
`11.
`
`Supercell objects to each definition, instruction, and Interrogatory as premature to
`
`the extent it seeks information, such as expert disclosures or invalidity contentions, before the
`
`time contemplated by the Federal Rules of Civil Procedure, the Patent Rules of this District, or
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`the Court’s Orders in this case. Supercell will provide such information according to those Rules
`
`and order(s). Supercell reserves the right to amend or supplement these objections and responses.
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`
`
`3
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`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 3 of 17
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`

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`12.
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`Supercell objects to the definition of “SUPERCELL,” “YOU,” and “YOUR”
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`because it seeks to broaden the scope of allowable discovery and seek information that is not
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`within the possession, custody, or control of Supercell, but is in the possession of third-parties
`
`and non-parties to this lawsuit. Supercell will interpret these terms to include Defendant
`
`Supercell Oy and its employees.
`
`13.
`
`Supercell objects to the definitions of “ASSERTED PATENTS” and “PATENTS-
`
`IN-SUIT” as vague and ambiguous to the extent that it purports to include unidentified patents
`
`that may be added to the action. Supercell shall interpret these terms to mean the ’594 patent.
`
`14.
`
`Supercell objects to the definitions of “RELATED APPLICATION” or
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`“RELATED APPLICATIONS” as vague and ambiguous, overbroad, unduly burdensome, and
`
`not proportional to the needs of the case, as they do not identify the patent applications with
`
`sufficient specificity. The vagueness and overbreadth of the Interrogatories using these
`
`definitions submits Supercell to undue burden and expense in responding.
`
`15.
`
`Supercell objects to the definitions of “RELATED PATENT” or “RELATED
`
`PATENTS” as vague and ambiguous, overbroad, unduly burdensome, and not proportional to
`
`the needs of the case, as they do not identify the asserted patents with sufficient specificity.
`
`Supercell also objects to the definitions vague and ambiguous and lacking in sufficient
`
`particularity on the ground that it is unclear that “based upon a Related Application…” is
`
`intended to mean. The vagueness and overbreadth of the Interrogatories using these definitions
`
`submits Supercell to undue burden and expense in responding.
`
`16.
`
`Supercell objects to the definition of “JAPANESE PATENTS” on the grounds
`
`recited above with respect to the definitions of RELATED PATENTS and RELATED
`
`APPLICATIONS to the extent that the definition of JAPANESE PATENTS includes references
`
`
`
`4
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 4 of 17
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`

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`to those terms. Supercell shall interpret the term to mean to the Japanese patents identified in the
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`definition.
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`17.
`
`Supercell objects to the definition of the term “DOCUMENT” overbroad, unduly
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`burdensome, and not proportional to the needs of the case to the extent it is broader than or
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`inconsistent with Federal Rule 34 and any applicable order issued by the Court in this case.
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`18.
`
`Supercell objects to the definition of the term “COMMUNICATION” as vague
`
`and ambiguous, overbroad, unduly burdensome, and not proportional to the needs of the case.
`
`The vagueness and overbreadth of the Interrogatories using this definition submits Supercell to
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`undue burden and expense in responding.
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`19.
`
`Supercell objects to the definition and all instructions related to the terms
`
`“IDENTIFY” and “IDENTITY” as vague and ambiguous, overbroad, unduly burdensome, and
`
`not proportional to the needs of the case. The vagueness and overbreadth of the Interrogatories
`
`using these definitions and/or instructions submits Supercell to undue burden and expense in
`
`responding. Supercell further objects to the definition and instructions related to the terms
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`“IDENTIFY” and “IDENTITY” as compound and consisting of multiple discrete subparts
`
`constituting separate interrogatories, in contravention of the Court’s limit on the number of
`
`interrogatories that may be served.
`
`20.
`
`Supercell objects to the definition and all instructions related to the identification
`
`of DOCUMENTS as vague and ambiguous, overbroad, unduly burdensome, and not proportional
`
`to the needs of the case. The vagueness and overbreadth of the Interrogatories using these
`
`definitions and/or instructions submits Supercell to undue burden and expense in responding.
`
`Supercell further objects to the objects to the definition and all instructions related to the
`
`identification of DOCUMENTS as compound and consisting of multiple discrete subparts
`
`
`
`5
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 5 of 17
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`

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`constituting separate interrogatories, in contravention of the Court’s limit on the number of
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`interrogatories that may be served.
`
`21.
`
`Supercell’s responses to these Interrogatories are made without waiving, or
`
`intending to waive, but on the contrary, preserving and intending to preserve: (a) the right to
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`object, on the grounds of competency, privilege, relevance or materiality, or any other proper
`
`grounds, to the use of any documents or other information for any purpose in whole or in part, in
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`any subsequent proceeding in this action or in any other action; (b) the right to object on any and
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`all grounds, at any time, to other discovery requests involving or relating to the subject matter of
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`the Interrogatories to which Supercell has responded herein; and (c) the right at any time to
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`revise, correct, add to, or clarify any of the responses below.
`
`22.
`
`No incidental or implied admissions are intended by any objection or response to
`
`any Interrogatory. That Supercell has objected or responded to any Interrogatory is not an
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`admission that Supercell accepts or admits the existence of any alleged facts set forth in or
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`assumed by such Interrogatory, or that the making of the response constitutes admissible evidence.
`
`23.
`
`Supercell reserves the right to conduct further discovery, investigation, or analysis
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`as to any issue raised by any Interrogatory.
`
`24.
`
`Supercell makes these responses solely for the purpose of this case.
`
`25. Without waiver of and subject to the foregoing General Objections, Supercell
`
`responds to the Interrogatories as follows.
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`OBJECTIONS AND RESPONSES TO INTERROGATORIES
`
`INTERROGATORY NO. 13:
`
`Provide the date YOU or YOUR counsel in the United States or a foreign country first
`
`became aware of or first had knowledge of each PRIOR ART REFERENCE cited in YOUR
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`INVALIDITY CONTENTIONS.
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`
`
`6
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 6 of 17
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`

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`RESPONSE TO INTERROGATORY NO. 13:
`
`Supercell incorporates each of the General Objections above.
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`Supercell incorporates its objections to GREE’s definition of “SUPERCELL,” “YOU,”
`
`and “YOUR.” Supercell with interpret these terms to include Defendant Supercell Oy and its
`
`employees. Supercell objects to this Interrogatory as overbroad and seeking irrelevant
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`information to the extent it purports to seek knowledge regarding a prior art reference unrelated
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`to the functionality relied upon in the Invalidity Contentions. Supercell likewise object to the
`
`Interrogatory because the burden or expense of providing such information outweighs any likely
`
`benefit. Supercell objects to this Interrogatory’s request for foreign counsel’s knowledge, to the
`
`extent that it seeks knowledge of counsel other than knowledge of foreign counsel obtained or
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`used in connection with services performed on behalf of Supercell. Such knowledge is not in
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`Supercell’s possession, custody, or control, and it would be excessively burdensome to collect
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`such information, if possible, and irrelevant to the claims and defenses in this action.
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`Subject to and without waving the forgoing General and Specific Objections, Supercell
`
`responds as follows:
`
`TABLE 1: Prior Art Patent, Patent Applications, and Publications
`Anticipating the Asserted Claims of the ’594 Patent
`
`Patent No.
`
`JP5042200
`
`U.S. Patent 4,422,639 (Del Principe)
`
`U.S. Patent 7,708,641 (Tawara)
`
`U.S. Patent 8,029,348 (Suzuki)
`
`U.S. Patent 9,079,105 (Kim)
`
`U.S. Patent 2007/0105626A1 (Cho)
`
`Date of First Knowledge
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`
`
`7
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 7 of 17
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`

`

`Patent No.
`
`Date of First Knowledge
`
`U.S. Patent 2013/0060362A1 (Murphy)
`
`In or around August 2019
`
`U.S. Patent 2013/0138590A1 (Huke)
`
`In or around August 2019
`
`
`
`TABLE 2: Non-Patent Prior Art Including Publications and Items
`Used, Known of, and/or Offered for Sale that Anticipate
`the Asserted Claims of the ’594 Patent
`
`Author, Title, Publisher
`
`Date of First Knowledge of
`Publicly Available Materials
`Identified in the Invalidity
`Contentions
`
`Age of Empires II Manual, Microsoft*
`
`In or around August 2017
`
`FIFA 12 Quick Start Guide, XBOX 360*
`
`In or around August 2019
`
`FIFA 14 Manual, XBOX 360*
`
`Gratuitous Tank Battle*, Manual entitled “King
`George’s Army Warfare Manual, version 2.415c”
`
`Madden 25 Manual, PS3*
`
`Madden 25 Manual, XBOX 360*
`
`Starcraft II*
`
`Mastermind’s In-Game Builder Post
`
`Clash of Clans Version 5.2
`
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`In or around August 2019
`
`Investigation ongoing
`
`Investigation ongoing
`
`On or around 9/19/2013
`
`Battle.net - http://classic.battle.net/intro.shtml
`
`On or around 11/15/2017
`
`Sid Meier’s Civilization IV Manual, Game Spy
`Industries*
`
`In or around August 2017
`
`
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`For each item marked with an asterisk (*), the date listed does not reflect Supercell’s
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`knowledge of the contents of non-public portions of the Prior Art Reference that it is seeking
`
`from third parties and on which it may rely at trial.
`
`
`
`8
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 8 of 17
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`

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`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 13:
`
`Supercell incorporates each of the General Objections above.
`
`Subject to and without waving the forgoing General and Specific Objections, Supercell
`
`responds as follows: With respect to the games Age of Empires II, FIFA 12, FIFA 14, Starcraft
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`II, Sid Meier’s Civilization IV, Age of Empires II, and Madden 25, Supercell has not located any
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`information specifically identifying when Supercell learned of the sheer existence of those
`
`games. However, Supercell believes that at least one employee would have learned of the sheer
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`existence of those games—specifically, that a game bearing the title existed but not knowledge
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`that the game contained the functionality relevant to the Asserted Patent(s)—within one year of
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`the release of each game. Moreover, Supercell would not have had knowledge of the contents of
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`non-public portions of these games.
`
`Regarding Mastermind’s In-Game Builder Post, Supercell had knowledge of that post in
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`or around late July or August 2017.
`
`INTERROGATORY NO. 14:
`
`Describe all facts surrounding any search YOU undertook to locate PRIOR ART related
`
`to the ASSERTED PATENT, RELATED PATENTS, or JAPANESE PATENTS prior to filing
`
`the Petition for Post-Grant Review assigned Case No. PGR2018-00008, including but not limited
`
`to the date YOU began searching for PRIOR ART, the identification of individuals or companies
`
`involved in the search for PRIOR ART, what sources each identified individuals or companies
`
`reviewed or searched to identify PRIOR ART, what search results were provided by the
`
`identified individuals or companies, the total amount of time each individual or company spent
`
`searching for PRIOR ART, and the total expense of such searches.
`
`
`
`9
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 9 of 17
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`

`

`RESPONSE TO INTERROGATORY NO. 14:
`
`Supercell incorporates each of the General Objections above.
`
`Supercell objects to this Interrogatory to the extent it seeks information protected by the
`
`attorney-client privilege, attorney work-product doctrine, joint defense privilege, common
`
`interest exception, duty of confidentiality, or any other applicable privilege, immunity doctrine,
`
`or protection. Supercell objects to this Interrogatory as overbroad, unduly burdensome, not
`
`relevant to any claim or defense, and not proportional to the needs of the case. The overbreadth
`
`of this Interrogatory submits Supercell to undue burden and expense in responding to this
`
`Interrogatory. Supercell objects to the extent the burden and expense of the discovery sought
`
`outweighs its likely benefit.
`
`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 14:
`
`Supercell incorporates each of the General Objections above.
`
`Subject to and without waving the forgoing General and Specific Objections, Supercell
`
`responds as follows: Supercell’s petition for post grant review (PGR2018-00008) did not raise
`
`prior art grounds. Accordingly, Supercell did not perform a prior art search for the Asserted
`
`Patent prior to the filing of the petition.
`
`INTERROGATORY NO. 15:
`
`Identify all PRIOR ART REFERENCE(S) that YOU allege a diligent skilled searcher
`
`engaged in a reasonable search would not have found at the time the Petition for Post-Grant 11
`
`Review assigned Case No. PGR2018-00008 was filed by YOU, and for each such PRIOR ART
`
`REFERENCE describe all FACTS surrounding the steps that YOU undertook to locate the
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`PRIOR ART REFERENCE, including but not limited to identification of individuals or
`
`companies who located the PRIOR ART REFERENCE, when each identified individual or
`
`
`
`10
`
`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 10 of 17
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`

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`companies who located the PRIOR ART REFERENCE, from what source each identified
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`individual or companies located the PRIOR ART REFERENCE, the amount of time it took each
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`individual or company to locate the PRIOR ART REFERENCE, and the total amount of time
`
`each individual or company spent searching for PRIOR ART.
`
`RESPONSE TO INTERROGATORY NO. 15:
`
`Supercell incorporates each of the General Objections above.
`
`Supercell objects to this Interrogatory to the extent it seeks information protected by the
`
`attorney-client privilege, attorney work-product doctrine, joint defense privilege, common
`
`interest exception, duty of confidentiality, or any other applicable privilege, immunity doctrine,
`
`or protection. Supercell objects to this Interrogatory to the extent that is seeks information that
`
`is neither relevant to any claim or defense nor proportional to the needs of the case. Supercell
`
`objects to this Interrogatory to the extent that it prematurely seeks expert opinions. Supercell
`
`objects to this Interrogatory to the extent that it seeks a complete statement of Supercell’s
`
`contentions prior to the close of fact and expert discovery. Investigation and discovery are
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`ongoing, and Supercell reserves the right to supplement, amend, or modify its response to this
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`Interrogatory as additional facts are learned and as otherwise appropriate.
`
`Subject to and without waving the forgoing General and Specific Objections, Supercell
`
`responds as follows: A diligent skilled searcher engaged in a reasonable search would not have
`
`found, at the time the Petition for Post-Grant 11 Review assigned Case No. PGR2018-00008, the
`
`Prior Art References listed below:
`
`Age of Empires II, Microsoft
`
`FIFA 12, XBOX 360
`
`FIFA 14, XBOX 360
`
`
`
`11
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 11 of 17
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`

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`Gratuitous Tank Battle
`
`Madden 25, PS3
`
`Madden 25, XBOX 360
`
`Starcraft II
`
`Mastermind’s In-Game Builder Post
`
`Clash of Clans Version 5.2
`
`Battle.net
`
`Sid Meier’s Civilization IV, Game Spy Industries
`
`
`
`Moreover, at the time the Petition for Post-Grant 11 Review assigned Case No.
`
`PGR2018-00008, a diligent skilled searcher engaged in a reasonable search would not have
`
`found any prior art identified in Supercell’s Invalidity Contentions because such a searcher
`
`would not have the knowledge of the scope of infringement positions that GREE is taking in the
`
`present case, and therefore could not have considered the prior art found in the Invalidity
`
`Contentions to be applicable to the ’594 patent. Further, Post-Grant Review petitions must
`
`comport with Trial Practice Guide rules regarding the scope of a filing, necessarily limiting the
`
`scope of what can be included in a Post-Grant Review petition.
`
`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 15:
`
`Supercell incorporates each of the General Objections above.
`
`Subject to and without waving the forgoing General and Specific Objections, Supercell
`
`responds as follows:
`
`In addition, a diligent skilled searcher engaged in a reasonable search would not have
`
`been able to locate or obtain non-public evidence concerning the games listed above. By way of
`
`example, Supercell has the power of subpoenas during the litigation to obtain non-public
`
`
`
`12
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 12 of 17
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`

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`information concerning the games. A diligent skilled searcher would not have the benefit of
`
`subpoena power to obtain such information. Indeed, a diligent skilled searcher engaged in a
`
`reasonable search would be limited to obtaining public information about any prior art reference.
`
`Further, during a meet and confer on January 3, 2020 between GREE’s counsel and
`
`Supercell’s counsel regarding the present interrogatory, GREE’s counsel commented on the
`
`obscurity of the Mastermind’s In-Game Builder Post, thus acknowledging that a reasonably
`
`diligent searcher could not have found the Mastermind’s In-Game Builder Post. Supercell agrees
`
`with GREE’s counsel that the Mastermind’s In-Game Builder Post is obscure and believes that a
`
`diligent skilled searcher engaged in a reasonable search would not have located it.
`
`INTERROGATORY NO. 16:
`
`Identify all PRIOR ART REFERENCES that YOU allege could not have been cited or
`
`relied upon in the Petition for Post-Grant Review assigned Case No. PGR2018-00008, and
`
`describe the complete factual and legal basis for YOUR allegation that each PRIOR ART
`
`REFERENCE could not have been cited in or relied up on in the Petition for Post-Grant Review
`
`assigned Case No. PGR2018-00008.
`
`RESPONSE TO INTERROGATORY NO. 16:
`
`Supercell incorporates each of the General Objections above.
`
`Supercell objects to this Interrogatory to the extent it seeks information protected by the
`
`attorney-client privilege, attorney work-product doctrine, joint defense privilege, common
`
`interest exception, duty of confidentiality, or any other applicable privilege, immunity doctrine,
`
`or protection. Supercell objects to this Interrogatory to the extent that is seeks information that
`
`is neither relevant to any claim or defense nor proportional to the needs of the case. Supercell
`
`objects to the extent this Interrogatory seeks expert disclosure regarding what a reasonable
`
`
`
`13
`
`
`
`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 13 of 17
`
`

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`searcher would find, before the time contemplated by the Federal Rules and the Scheduling
`
`Order governing this case. Supercell objects to this Interrogatory to the extent that it seeks a
`
`complete statement of Supercell’s contentions prior to the close of fact and expert discovery.
`
`Investigation and discovery are ongoing, and Supercell reserves the right to supplement, amend,
`
`or modify its response to this Interrogatory as additional facts are learned and as otherwise
`
`appropriate.
`
`Subject to and without waiving the foregoing objections, Supercell responds as follows:
`
`Post-Grant Review estoppel does not apply to non-petitioned grounds. See Shaw Indus. Grp.,
`
`Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016) (holding estoppel under
`
`35 U.S.C. § 315(e)(2) is limited only to arguments made “during that inter partes review” and
`
`that an “IPR does not begin until it is instituted”). Estoppel under Section 315(e), and by analogy
`
`Section 325(e), applies only to grounds or art which were raised or reasonably could have been
`
`raised during the IPR or PGR. See, e.g., Intellectual Ventures I LLC v. Toshiba Corp., 221 F.
`
`Supp. 3d 534, 554 (D. Del. 2016) (finding 315(e) estoppel inapplicable for non-petitioned art
`
`because “the court cannot divine a reasoned way around the Federal Circuit's interpretation in
`
`Shaw”); Finjan, Inc. v. Blue Coat Sys., LLC, 283 F. Supp. 3d 839, 856 (N.D. Cal. 2017). See also
`
`Tinnus Enterprises, LLC v. Telebrands Corp., 6:17-CV-00170-RWS, 2018 WL 3993468, at *4
`
`(E.D. Tex. Aug. 21, 2018) (“[T]he Federal Circuit’s decision in Shaw has not yet been
`
`abrogated.”). A reasonable reading of section 315(e)(1) does not mandate estoppel of all prior
`
`art in the possession of a petitioner, or prior art which petitioner. See Johns Manville Corp. v.
`
`Knauf Insulation, Inc., IPR2016-00130, Paper 35, pp. 9-10 (P.T.A.B. May 8, 2017). To the
`
`contrary, the prior art estopped is that which “a skilled searcher conducting a diligent search
`
`reasonably could have been expected to discover.” Id. Nowhere in its plain meaning and
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`14
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 14 of 17
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`

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`legislative history does section 315(e)(1) expressly, or impliedly, consider the entire universe of
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`institutional “knowledge” of a petitioner and its employees as being strictly estopped. Id. at 11,
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`citing Figueroa v. Sec’y of Health & Human Servs., 715 F.3d 1314, 1322 (Fed. Cir. 2013)
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`(“[T]he term left out must have been meant to be excluded.”).
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`In addition, Supercell incorporates by reference its Response to Interrogatory No. 15.
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`FIRST SUPPLEMENTAL RESPONSE TO INTERROGATORY NO. 16:
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`Supercell incorporates each of the General Objections above.
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`Subject to and without waving the forgoing General and Specific Objections, Supercell
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`responds as follows:
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`The Petition for Post-Grant Review assigned Case No. PGR2018-00008 (“Petition”) did
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`not include any grounds based on prior art. As such, citation or reliance of any of the prior art
`
`references identified would have been improper under PTAB procedures, as such citation or
`
`reliance would be irrelevant to the ground raised in the Petition. Further, any prior art reference
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`identified in Response to Interrogatory No. 13 for which Supercell lacked knowledge of the
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`functionality of the prior art reference relevant to the Asserted Patent, Supercell lacked the
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`knowledge necessary to provide relevant arguments regarding those games as they relate to the
`
`Asserted Patent, and thus Supercell could not cite or rely on those games. Further, Supercell
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`lacked non-public information concerning the games identified in Interrogatory No. 13 that it
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`may rely on a trial, and therefore could not have cited or relied on such evidence in the Petition.
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`15
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 15 of 17
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`

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`Dated: February 7, 2020
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`Respectfully submitted,
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`
`
`
`/s/ Bryan A. Kohm
`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
`Geoffrey R. Miller
`(Texas State Bar No. 24094847)
`FENWICK & WEST LLP
`902 Broadway, Suite 14
`New York, NY 10010
`Telephone:
`212.430.2600
`Email:
`gmiller@fenwick.com
`Jeffrey Ware (Admitted E.D. Texas)
`Jessica M. Kaempf (Admitted E.D. Texas)
`FENWICK & WEST LLP
`1191 Second Ave., 10th Floor
`Seattle, Washington 98101
`Telephone:
`206.389.4510
`Facsimile:
`206.389.4511
`Email:
`jware@fenwick.com
`
`
`jkaempf@fenwick.com
`Deron R. Dacus
`State Bar No. 00790553
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Telephone: (903) 705-1117
`Facsimile: (903) 581-2543
`ddacus@dacusfirm.com
`
`Attorneys for Defendant Supercell Oy
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`
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`
`16
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 16 of 17
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`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 7, 2020, a true and correct copy of the foregoing
`
`document was served via email on each party through their counsel of record.
`
`John C Alemanni
`Kilpatrick Townsend & Stockton LLP
`Email: jalemanni@kilpatricktownsend.com
`
`Melissa Richards Smith
`Gillam & Smith, LLP
`Email: melissa@gillamsmithlaw.com
`
`Norris Power Boothe
`Kilpatrick Townsend & Stockton LLP
`Email: nboothe@kilpatricktownsend.com
`
`Harry L. Gillam, Jr.
`Gillam & Smith LLP
`Email: gil@gillamsmithlaw.com
`
`Alton L. Absher, III
`Kilpatrick Townsend & Stockton LLP
`Email: aabsher@kilpatricktownsend.com
`
`Taylor Higgins Ludlam
`Kilpatrick Townsend & Stockton LLP
`Email: taludlam@kilpatricktownsend.com
`
`Taylor Jacqueline Pfingst
`Kilpatrick Townsend & Stockton, LLP
`Email: tpfingst@kilpatricktownsend.com
`
`Steven David Moore
`Kilpatrick Townsend & Stockton, LLP
`Email: smoore@kilpatricktownsend.com
`
`Michael T. Morlock
`Kilpatrick Townsend & Stockton LLP
`Email: mmorlock@kilpatricktownsend.com
`
`
`
`
`
`/s/ Jessica Kaempf
`Jessica Kaempf
`
`17
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`
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`Patent Owner Gree, Inc.
`Exhibit 2010 - Page 17 of 17
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`