PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN HOFFMAN, Reg. No. 39,713
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER (pro hac vice)
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER (pro hac vice)
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case PGR2021-00014
`Patent 10,583,362 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.208(c)
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Filed on behalf of Supercell Oy
`
`By:
`BRIAN HOFFMAN, Reg. No. 39,713
`JENNIFER R. BUSH, Reg. No 50,784
`MICHAEL J. SACKSTEDER (pro hac vice)
`KEVIN X. MCGANN, Reg. No. 48,793
`GREGORY HOPEWELL, Reg. No. 66,012
`GEOFFREY MILLER (pro hac vice)
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone: 415.875.2300
`Facsimile: 415.281.1350
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SUPERCELL OY,
`Petitioner
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`
`Case PGR2021-00014
`Patent 10,583,362 B2
`_____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE PURSUANT TO 37 C.F.R. § 42.208(c)
`
`
`
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`TABLE OF CONTENTS
`
`Page
`The Fintiv Factors Favor Institution ................................................................ 1
`A.
`B. Master Hearthstone is a Printed Publication ................................................... 6
`
`
`
`
`
`i
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Apple v. Fintiv,
`IPR 2020-00019 ........................................................................................ 1, 3, 4, 5
`Blue Calypso, LLC v. Groupon, Inc.,
`815 F.3d 1331 (Fed. Cir. 2016) ............................................................................ 7
`NanoCellect Biomedial, Inc., v. Cytonome/ST, LLC,
`IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020) ........................................... 4
`Oticon Medical AB v. Cochlear Ltd.,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) ............................................ 2
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ....................................... 4, 5
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 3
`Shenzhen Zhiyi Thch. Co. v. iRobot Corp.,
`IPR2017-02133, Paper 8 (P.T.A.B. Mar. 28, 2018) ............................................. 7
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ............................................ 1
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (Dec. 1, 2020) ............................................................ 1
`VMWare, Inc. v. Intellectual Ventures I LLC,
`IPR2020-00407, Paper 13 (P.T.A.B. Aug. 18, 2020) ........................................... 4
`STATUTES AND RULES
`35 U.S.C. § 314 .......................................................................................................... 1
`35 U.S.C. § 321(c) ..................................................................................................... 5
`
`ii
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`EXHIBIT LIST (37 CFR § 42.63(e))
`
`Exhibit
`
`Description
`
`1001 U.S. Patent No. 10,518,177 to Suzuki
`
`1002 File History of U.S. Patent No. 10,518,177
`
`1003 U.S. Patent No. 10,583,362
`
`1004 File History of U.S. Patent No. 10,583,362
`
`1005 Declaration of Steve Meretzky
`
`1006 Curriculum Vitae of Steve Meretzky
`
`1007 GREE’s Amended Disclosure of Asserted Claims and Infringement
`Contentions, dated August 19, 2020 in Case No. 2:19-cv-00413-JRG-RSP
`(E.D. Tex.)
`
`1008 Microsoft Computer Dictionary, 4th Ed. (1999)
`
`1009 YouTube - Master Hearthstone in 10 Minutes! The Ultimate Beginner’s
`Guide (“MH”) (web page print out from
`https://www.youtube.com/watch?v=CVZ4qyx-c2o)
`
`1010
`
`1011
`
`1012
`
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide,”
`webpage as captured by The Internet Archive on January 2, 2014
`
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide” –
`Video File
`
`“Master Hearthstone in 10 Minutes! The Ultimate Beginner’s Guide” –
`Transcript
`
`1013 U.S. Patent Publication No. 2013/0281173 to Gilson et al.
`
`1014 US Patent Publication No. 2014/0349723 to Nakatani et al.
`
`1015 U.S. Patent No. 5,662,332 to Garfield
`
`iii
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Exhibit
`
`1016
`
`1017
`
`1018
`
`1019
`
`Description
`
`“Dynamic game difficulty balancing,” Wikipedia page as captured by The
`Internet Archive on December 12, 2011
`
`“And That’s A Wrap! BlizzCon 2013 Has Officially Come to an End!”
`webpage as captured by the Internet Archive on Nov. 16, 2013
`
`“FAQ – Hearthstone” webpage as captured by the Internet Archive on Nov.
`16, 2013
`
`“Hearthstone: Heroes of Warcraft Official Game Site” webpage as captured
`by the Internet Archive on Nov. 16, 2013
`
`1020 GREE, Inc.’s Opposition to Defendant Supercell Oy’s Motion to Dismiss,
`Dkt. No. 34, Filed April 8, 2020, Case No. 2:19-cv-00413-JRG-RSP (E.D.
`Texas)
`
`1021 Claim Construction Memorandum Opinion and Order, Dkt. No. 85, Filed
`Nov. 6, 2020, Case No. 2:19-cv-00413-JRG-RSP (E.D. Texas)
`
`1022 Declaration of Madeline Byers, Custodian of Records for Google LLC
`
`1024
`
`1023 Affidavit of Elizabeth Rosenberg, Records Processor at the Internet Archive
`[Model] Order Focusing Patent Claims and Prior Art to Reduce Costs,
`retrieved from
`http://www.txed.uscourts.gov/sites/default/files/forms/ModelPatentOrder.pdf
`1025 Declaration of Jennifer R. Bush in Support of Supercell Oy’s Reply to Patent
`Owner’s Preliminary Response
`
`1026 Amended Docket Control Order, Dkt. 139, Entered
`Mar. 9, 2021 (ED Texas 2:19-cv-00413)
`
`
`
`
`iv
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`A. The Fintiv Factors Favor Institution
`The Fintiv factors show that the Board should institute trial. GREE’s
`
`arguments to the contrary rely on misdirection and omission. Importantly, the
`
`Overlap Factor of the Fintiv Order supports institution because concerns of
`
`inefficiency and the possibility of conflicting decisions are minimal, and the Board
`
`recently declined to exercise its discretion under § 314(a) when a reference cited in
`
`the Petition was not at issue in the litigation, as is the case here. See Snap, Inc. v.
`
`SRK Technology LLC, IPR2020-00820, Paper 15 at 15, 19 (P.T.A.B. Oct. 21,
`
`2020) (Precedential as to § II.A.); Apple v. Fintiv, IPR 2020-00019, Paper 11 at 12
`
`(P.T.A.B. Mar. 20, 2020) (Precedential); see also Sotera Wireless, Inc. v. Masimo
`
`Corp., IPR2020-01019, Paper 12 at 19 (Dec. 1, 2020) (Precedential as to § II.A).
`
`Although GREE is loath to mention it, Master Hearthstone (“MH”) is not
`
`asserted in the related litigation. Ex. 2004 at 8-10. The Petition applies this
`
`reference against all claims of the ’362 patent, and demonstrates that MH discloses
`
`all material claimed features. Pet. at 42, 49-76. The Petition combines MH with
`
`Gilson because the latter reference demonstrates it was known to play a battle card
`
`game using “the generic computer-related limitations recited by the claims.” Pet. at
`
`49; see Ex. 1005 at ¶ 116 § 1.0, ¶ 122 (identifying generic limitations shown by
`
`Gilson). Thus, the Board should proceed with the PGR because “the Board
`
`proceeding would not be directly duplicative of the District Court[’s] consideration
`
`1
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`of validity.” Oticon Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at
`
`23-24 (P.T.A.B. Oct. 16, 2019) (Precedential). Although GREE focuses on the
`
`secondary Gilson reference being used in the litigation, after seven pages of
`
`mostly-irrelevant argument, GREE begrudgingly acknowledges that inclusion of
`
`MH in the Petition makes the Overlap factor favor institution. Prelim. Resp. at
`
`32-33.
`
`Other arguments from GREE regarding the Overlap factor are entirely
`
`speculative and misrepresent the current state of the litigation. The petition applies
`
`MH against all claims, whereas 12 of the claims are not asserted in the litigation.
`
`Ex. 2004, at 1, 3. And GREE is under no obligation to continue to assert these
`
`same claims in litigation. GREE has as history of reducing the number of asserted
`
`claims as the trial date draws near,1 and has demonstrated willingness to mislead
`
`the Board as to this fact.2 For example, in PGR2020-00034 GREE told the Board
`
`
`1 Per E.D. Tex. Model Order Focusing Patent Claims. Ex. 1024 at 2.
`
`2 E.g., in PGR2020-00034 GREE argued to the Board that “… the district court will
`
`necessarily resolve key issues in the instant Petition,” but ended up asserting only a
`
`single dependent claim of the patent. PGR2020-00034, Paper 7 (Prelim. Resp.) at
`
`22; Ex. 1021 at 1. Indeed, in the same pending litigation, the initial set of 182
`
`claims ultimately were reduced to 12 ahead of trial, or 1-2 claims per patent. Id.
`
`2
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`that it would challenge all independent claims of the ’385 patent in the district
`
`court, but later dropped all independent claims of the ’385 patent from trial.
`
`PGR2020-00034, Paper 7 (Prelim. Resp.) at 22; Ex. 1025 at 3.
`
`The POPR notably makes no commitments, stipulations, or other binding
`
`statements regarding which claims it will actually assert at trial. As a result,
`
`determining overlap requires speculation and weighs against discretionary denial.
`
`Moreover, under SAS, “in an inter partes review the petitioner is master of its
`
`complaint and normally entitled to judgment on all of the claims it raises, not just
`
`those the decisionmaker might wish to address.” SAS Institute Inc. v. Iancu, 138 S.
`
`Ct. 1348, 1355 (2018) (emphasis added). Judgment certainly also should not be at
`
`the discretion of the Patent Owner defendant in this PGR.
`
`Additionally, overlap regarding the § 101 challenge in this forum does not
`
`support discretionary denial. The Board recognizes “a strong public interest in
`
`providing a mechanism for early evaluation of Petitioner’s § 101 ground on the
`
`merits” in PGRs. PGR2020-00039, Paper 14 (Decision) at 21. This strong public
`
`interest overcomes other concerns.
`
`Factor 6 is “other circumstances that impact the Board’s exercise of
`
`discretion, including the merits.” Fintiv at 14. The Fintiv Order focuses this factor
`
`on the strength on the merits of the invalidity grounds raised in the petition. Id. at
`
`14-16. It provides an example in which institution is favored “if the merits of a
`
`3
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`ground raised in the petition seem particularly strong.” Id. at 14-15, 15 n.29 (listing
`
`decisions where the merits outweighed other considerations).
`
`Each ground in the petition presents a strong case on the merits. GREE is
`
`reduced to arguing in response that a POSITA in 2014 would not know how to
`
`access YouTube. Prelim. Resp. at 49-50. The fact that GREE devotes resources to
`
`this type of argument illustrates the strength of the presented grounds.
`
`The Board has found Factors 4 and 6 to be definitive in reaching decisions to
`
`institute, regardless of other factors. See, e.g., Sand Revolution II, LLC v. Cont’l
`
`Intermodal Grp., IPR2019-01393, Paper 24 at 9 (P.T.A.B. June 16, 2020)
`
`(Informative); NanoCellect Biomedial, Inc., v. Cytonome/ST, LLC, IPR2020-00551,
`
`Paper 19 (P.T.A.B. Aug. 27, 2020); VMWare, Inc. v. Intellectual Ventures I LLC,
`
`IPR2020-00407, Paper 13 (P.T.A.B. Aug. 18, 2020). Factors 4 and 6 are strong here,
`
`and the Board should institute this PGR consistent with its prior decisions.
`
`Regarding the other factors, Factor 2 (Trial Proximity) should be afforded
`
`little weight because the trial will address different art. Furthermore, determining
`
`the true trial date requires speculation. GREE argues the trial date should be taken
`
`at “face value.” Prelim. Resp. at 11. But the Court has had and likely will continue
`
`to have jury trial delays likely to impact the trial date, and the court will not
`
`conduct remote trials. Ex. 2008 at 1, 3; see also Ex. 1026.
`
`4
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`In view of these circumstances, and as in Sand Revolution, “it is unclear that
`
`the court in the related district court litigation will adhere to any currently
`
`scheduled jury trial date or, if it is changed, when such a trial will be held.” Sand
`
`Revolution at 9. Determining whether and when the Court will conduct any future
`
`trials requires substantial speculation. The Board, in contrast, “continues to be fully
`
`operational.” Id. Moreover, this factor implicates Factors 4 and 6. Fintiv, at 9. On
`
`the whole, the Proximity factor weighs in favor of institution.
`
`The Investment factor (Factor 3) is at least neutral because, to the extent the
`
`court has invested, it was primarily in non-overlapping issues such as potential
`
`invalidity based on different references and issues related to alleged infringement.
`
`There has been only minimal investment in the issues pertaining to this PGR.
`
`Moreover, future investment will also only minimally overlap with the PGR issues
`
`for the same reasons. As to timing, Petitioner complied with the nine-month
`
`window for filing provided by 35 U.S.C. § 321(c). GREE’s statement that
`
`“Petitioner was undisputedly aware of the grounds asserted in the Petition months
`
`before the filing of the instant Petition” is false. Prelim. Resp. at 20.
`
`Factor 1 (Likelihood of Stay) requires speculation. Factor 5 (Same Parties)
`
`should be given little weight. Neither factor is dispositive. Thus, the holistic Fintiv
`
`analysis favors institution.
`
`5
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`B. Master Hearthstone is a Printed Publication
`GREE’s arguments that MH is not a printed publication are disingenuous.
`
`The gist of GREE’s position is Petitioner has neither demonstrated that the video
`
`of Exhibit 1011 is the same video found on YouTube nor that the video was
`
`publicly accessible. Prelim. Resp. at 47-48.
`
`GREE’s preposterous arguments fail in view of the particular evidence
`
`included with the petition. The landing page referenced in the petition identifies the
`
`video by its title, author, publication date, and external ID (“CVZ4qyx-c2o”) (Ex.
`
`1009 at 1), which was verified by Google. Ex. 1022. The Internet Archive capture
`
`from January 2014 bears this same information, and also has been authenticated by
`
`its custodian. Ex. 1010 at 1; Ex. 1023. The video itself starts with a caption
`
`showing the same title and the speaker introducing himself as “Jeremy,” the same
`
`author listed in the other documents. Ex. 1011 (Part 1) at 0:00-01; Ex. 1012 at 1.
`
`A Certificate of Authenticity also filed with the Petition, by Madeline Byers,
`
`Custodian of Records for Google LLC, that identifies MH by its title, external ID,
`
`publication date, and public accessibility, as part of “records made and retained by
`
`Google,” i.e., indexed records. This document authenticates the video as a business
`
`record of Google, by the very custodian of that record. Ex. 1022. Also, the Internet
`
`Archive Affidavit authenticates the landing page captured in January 2014. Ex.
`
`1023 at 1-2, 4-6.
`
`6
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`The public accessibility of MH is beyond doubt, and is authenticated by
`
`these records. The cases GREE cites are inapposite. The Google “record” and
`
`“video data” index portion shown is exactly the type of evidence GREE says is
`
`missing – evidence that indicates “whether the reference was sufficiently indexed
`
`or catalogued” per Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed.
`
`Cir. 2016), cited at Prelim. Resp. at 48. Further, the record is “retained” by Google,
`
`which is a search engine with broad public accessibility, per Shenzhen Zhiyi Thch.
`
`Co. v. iRobot Corp., IPR2017-02133, Paper 8, at 11 (P.T.A.B. Mar. 28, 2018)
`
`(noting use of traditional search engines such as Google or Yahoo as providing
`
`evidence of accessibility), cited at Prelim. Resp. at 54. The evidence of record
`
`verifies that the video was made publicly visible on October 11, 2013 and was
`
`viewed more than 18,000 times by January 2014. Ex. 1022 at 2; Ex. 1023 at 4.
`
`These facts match Petitioner’s expert testimony that “a POSITA would have
`
`known how to access YouTube’s website and use YouTube’s indexing and search
`
`functions to find MH and other videos of gameplay footage” and would have
`
`looked to YouTube to learn about this “highly-anticipated game.” Ex. 1005 at ¶¶
`
`78-80. GREE’s laughable characterization of this evidence, without any attempt to
`
`put up any contrary evidence, demonstrates it is desperate.
`
`As a result, the Petition should not be denied under § 314(a).
`
`
`
`7
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`Dated: April 2, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush /
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`8
`
`
`
`PGR2021-00014
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Reply to
`
`Patent Owner’s Preliminary Response and accompanying Exhibits 1024 through
`
`1026 were served on Patent Owner’s lead and back-up counsel in its entirety by
`
`electronic service at the email addresses provided below:
`
`John C. Alemanni
`Kilpatrick Townsend & Stockton LLP
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`jalemanni@kilpatricktownsend.com
`
`Joshua H. Lee
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-6582
`jlee@kilpatricktownsend.com
`
`Andrew W. Rinehart
`Kilpatrick Townsend & Stockton LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101
`arinehart@kilpatricktownsend.com
`
`Scott A. McKeown
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 2006
`scott.mckeown@ropesgray.com
`
`
`FENWICK & WEST LLP
`
`/Jennifer R. Bush /
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`
`Dated: April 2, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`9
`
`
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