UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2021-00014
`U.S. Patent No. 10,583,362
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` SUPERCELL OY,
` Petitioner,
`
`v.
`
` GREE, INC.,
` Patent Owner.
`
`Case PGR2021-00014
`U.S. Patent No. 10,583,362
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page
`The Petition Should Be Denied Under § 324(a) .............................................. 1
`A.
`Fintiv Factor 2: Trial Date Remains Well in Advance of
`Board’s Statutory Deadline for Final Written Decision........................ 1
`Fintiv Factor 4: Substantial Overlap of Issues in the Two
`Forums ................................................................................................... 3
`Fintiv Factor 6: Other Relevant Considerations ................................... 5
`C.
`The Petition Failed to Demonstrate that MH Was Publicly
`Accessible ........................................................................................................ 6
`
`B.
`
`I.
`
`II.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`10X Genomics, Inc. v. President & Fellows of Harvard College,
`IPR2020-01180, Paper 23 (P.T.A.B. Jan. 13, 2021) ............................................ 2
`Adobe Systems Inc. v. Grecia,
`IPR2018-00418, Paper 9 (P.T.A.B. Sept. 7, 2018)............................................... 7
`Amazon.com, Inc. v. Freshub, Ltd.,
`IPR2020-01145, Paper 10 (P.T.A.B. Jan. 11, 2021) ............................................ 2
`Celltrion, LLC v. Biogen, Inc.,
`IPR2017-01230, Paper 10 (P.T.A.B. Oct 12, 2017) ............................................. 6
`Cisco Systems, Inc. v. Monarch Networking Solutions, LLC,
`IPR2020-01678, Paper 9 (P.T.A.B. Mar. 31, 2021) ............................................. 2
`Google LLC v. IPA Techs. Inc.,
`IPR2018-00384, Paper 8 (P.T.A.B. July 3, 2018) ................................................ 6
`Guardian Alliance Techs., Inc. v. Miller,
`IPR2020-00031, Paper 23 (P.T.A.B. Mar. 26, 2020) ........................................... 7
`KeyMe LLC v. The Hillman Group, Inc.,
`IPR2020-01485, Paper 11 (P.T.A.B. Mar. 31, 2021) ........................................... 4
`NanoCellect Biomedical, Inc. v. Cytonome/ST, LLC,
`IPR2020-00551, Paper 19 (P.T.A.B. Aug. 27, 2020) ........................................... 5
`Oticon Medical AB v. Cochlear Limited,
`IPR2019-00975, Paper 15 (P.T.A.B. Oct. 16, 2019) ............................................ 3
`Samsung Elecs. Co., Ltd. et al v. Clear Imaging Research, LLC,
`IPR2020-01552, Paper 11 (P.T.A.B. Mar. 3, 2021) ..................................... 3, 4, 5
`Sand Revolution II, LLC v. Cont’l Intermodal Group,
`IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) ....................................... 2, 3
`Snap, Inc. v. SRK Tech. LLC,
`IPR2020-00820, Paper 15 (P.T.A.B. Oct. 21, 2020) ........................................ 3, 4
`ii
`
`
`
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (P.T.A.B. Dec. 1, 2020) ............................................. 4
`Supercell Oy v. GREE, Inc.,
`IPR2020-00215, Paper 10 (P.T.A.B. June 10, 2020) ........................................... 5
`Supercell Oy v. GREE, Inc.,
`PGR2020-00039, Paper 14 (P.T.A.B. Sept. 14, 2020) ......................................... 3
`Supercell Oy v. GREE, Inc.,
`PGR2020-00088, Paper 11 (P.T.A.B. Apr. 14, 2021) ...................................... 1, 3
`VMWare, Inc. v. Intellectual Ventures I LLC,
`IPR2020-00470, Paper 13 (P.T.A.B. Aug. 18, 2020) ........................................... 5
`
`iii
`
`
`
`LIST OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00413, Document 139 (E.D. Tex. March 10,
`2021)
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Amended Complaint, GREE, Inc. v. Supercell Oy, Civil Action
`No. 2:19-cv-00413, Document 25 (E.D. Tex. March 10, 2020)
`
`Defendant Supercell Oy’s Preliminary Ineligibility Contentions,
`GREE, Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D.
`Tex.), dated June 1, 2020
`
`Defendant Supercell Oy’s Invalidity Contentions and Disclosures
`Under Local Patent Rules 3-3 and 3-4, GREE, Inc. v. Supercell Oy,
`Civil Action No. 2:19-cv-00413 (E.D. Tex.), dated June 1, 2020
`
`Exhibit B-3 to Defendant Supercell Oy’s Invalidity Contentions
`and Disclosures Under Local Patent Rules 3-3 and 3-4, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D. Tex.),
`dated June 1, 2020
`
`Excerpts of the Expert Report of Stacy Friedman, GREE, Inc. v.
`Supercell Oy, Civil Action No. 2:19-cv-00413 (E.D. Tex.), dated
`December 23, 2020
`
`Buehler, Katie, ‘Clash of Clans’ Game Maker Owes $8.5M, Texas
`Jury Says, Law360 (September 18, 2020)
`
`Order, Solas OLED Ltd. v. Samsung Display Co., Ltd. et al., Civil
`Action No. 2:19-cv-001520, Document 302 (E.D. Tex. Nov. 20,
`2020)
`
`Claim Construction Memorandum Opinion and Order, GREE, Inc.
`v. Supercell Oy, Civil Action No. 2:19-cv-00413, Document 85
`(E.D. Tex. Nov. 6, 2020)
`
`iv
`
`
`
`Exhibit No.
`2010
`
`Description
`Third Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00413, Document 98 (E.D. Tex.
`Dec. 30, 2020)
`
`2011
`
`2012
`
`Fourth Amended Docket Control Order, GREE, Inc. v. Supercell
`Oy, Civil Action No. 2:19-cv-00413, Document 100 (E.D. Tex.
`Jan. 29, 2021)
`
`Model Order Focusing Patent Claims and Prior Art to Reduce
`Costs, U.S. District Court for the Eastern District of Texas
`
`v
`
`
`
`I.
`
`The Petition Should Be Denied Under § 324(a)
`In Patent Owner’s Preliminary Response (Paper 7, “POPR”), Patent Owner
`
`explains why the Board should exercise its discretion under 35 U.S.C. § 324(a) to
`
`deny the instant Petition in accordance with a holistic review of all the Fintiv factors.
`
`In Reply, Petitioner boldly asks this Board to disregard a majority of the Fintiv
`
`factors and simply find “Factors 4 and 6 to be definitive.” Paper 8 (“Reply”), at 4.
`
`This is improper and incorrect. Petitioner’s cursory dismissal of Factors 1, 3, and 5
`
`as “neutral” or of “little weight” is belied by the record. See POPR, at 8–10, 16–21,
`
`33. And Petitioner’s arguments regarding Factors 2, 4 and 6 fail for similar and
`
`additional reasons. Indeed, the Board recently denied institution of this Petitioner’s
`
`petition in a related proceeding over the same arguments advanced by Petitioner.
`
`Supercell Oy v. GREE, Inc., PGR2020-00088, Paper 11 (P.T.A.B. Apr. 14, 2021).
`
`A.
`
`Fintiv Factor 2: Trial Date Remains Well in Advance of Board’s
`Statutory Deadline for Final Written Decision
`Petitioner’s argument that determining the trial date in the parallel district
`
`court proceeding “requires speculation” because “the Court has had and likely will
`
`continue to have jury trial delays likely to impact the trial date” (Reply, at 4) is belied
`
`by both record facts and the Board’s precedents. As discussed in Patent Owner’s
`
`Preliminary Response, trial is set to begin on August 2, 2021. Ex. 2001, at 1; see
`
`POPR, at 10–16. Moreover, the court has already adjusted this trial date (from May
`
`3, 2021) to accommodate for any potential complications stemming from the court’s
`
`
`
`continuance of other, different trials. See POPR, at 12–13. Additionally, this Board
`
`“decline[s] … to speculate how long [a] trial date … may be delayed due to the
`
`effects of [a] district court’s backlog and practices in light of the COVID-19
`
`pandemic.” 10X Genomics, Inc. v. President & Fellows of Harvard College,
`
`IPR2020-01180, Paper 23, at 11 (P.T.A.B. Jan. 13, 2021); see also Amazon.com,
`
`Inc. v. Freshub, Ltd., IPR2020-01145, Paper 10, at 12 (P.T.A.B. Jan. 11, 2021)
`
`(finding district court’s continuance did not disturb a June 14, 2021 trial date).
`
`Petitioner’s speculation regarding the trial date due to alleged uncertainly as
`
`to “whether and when the Court will conduct any future trials” (Reply, at 5) similarly
`
`fails. First, the district court has already resumed jury trials as of March 1, 2021.
`
`Second, the Board has recognized that any “generalized speculation as to trial dates
`
`universally (e.g., due to impacts of COVID-19)” is “outweighed” by the fact that the
`
`jury trial in a parallel proceeding is scheduled to occur a significant number of
`
`months before the Board’s statutory deadline for a final written decision—as is the
`
`case here (ten months). POPR, at 13–16; Cisco Systems, Inc. v. Monarch
`
`Networking Solutions, LLC, IPR2020-01678, Paper 9, at 7 (P.T.A.B. Mar. 31, 2021).
`
`The facts here are distinguishable from those in Sand Revolution II, LLC v.
`
`Cont’l Intermodal Group, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020).
`
`There, the court had entered a “loose date at which trial might occur,” which the
`
`Board found “indicates a continuing degree of recognized uncertainty of the court’s
`
`2
`
`
`
`schedule by the court.” Id. at 9; Supercell Oy v. GREE, Inc., PGR2020-00039, Paper
`
`14, at 11 (P.T.A.B. Sept. 14, 2020). No such uncertainty exists here. Ex. 2001, at 1.
`
`Fintiv Factor 4: Substantial Overlap of Issues in the Two Forums
`B.
`Petitioner does not dispute an overlap of issues between the two tribunals,
`
`including in view of Petitioner’s common assertion of the Gilson reference. See
`
`POPR, at 21–31. Petitioner argues simply that discretionary denial is inappropriate
`
`because a single reference cited in the Petition (Master Hearthstone, “MH”) is not
`
`also at issue in the litigation. Reply, at 1. Patent Owner is not “loath to mention” this
`
`fact, as Petitioner suggests. Id. As explained, this factor does not require complete
`
`duplication of prior art between the two forums. POPR, at 29–31; e.g., Samsung
`
`Elecs. Co. Ltd. v. Clear Imaging Research, LLC, IPR2020-01552, Paper 11, at 24
`
`(P.T.A.B. Mar. 3, 2021) (finding “substantial overlap” in view of a common
`
`“secondary reference”). Indeed, the Board recently exercised its discretion to deny
`
`institution of a petition on a related patent filed by Petitioner despite the absence of
`
`complete duplication of prior art. Supercell, PGR2020-00088, Paper 11, at 10–11.
`
`Petitioner also relies on inapposite decisions. In Oticon Medical AB v.
`
`Cochlear Limited, the Board declined to exercise discretion under § 314(a) after “a
`
`balanced assessment of all relevant circumstances,” including the absence of a trial
`
`date. IPR2019-00975, Paper 15, at 22–24 (P.T.A.B. Oct. 16, 2019). In Snap, Inc. v.
`
`SRK Tech. LLC, the Board found this factor weighed in favor of not exercising
`
`3
`
`
`
`discretion under § 314(a) given numerous differences in the art asserted “as well as
`
`the stay of the parallel District Court proceeding.” IPR2020-00820, Paper 15, at 16
`
`(P.T.A.B. Oct. 21, 2020) (emphasis added). In Sotera Wireless, Inc. v. Masimo
`
`Corp., the Board found this factor weighed in favor of not exercising discretion
`
`under § 314(a) in view of petitioner’s stipulation that “if IPR is instituted, [petitioner]
`
`will not pursue in the District Court Litigation any ground raised or that could have
`
`been reasonably raised in an IPR.” IPR2020-01019, Paper 12, at 18–19 (P.T.A.B.
`
`Dec. 1, 2020) (emphasis added). None of those unique facts exists here.
`
`Petitioner also misrepresents that this factor requires a complete identity of
`
`challenged claims between tribunals. Reply, at 2. That is not so. See POPR, at 26–
`
`28; e.g., KeyMe LLC v. The Hillman Group, Inc., IPR2020-01485, Paper 11, at 11–
`
`12 (P.T.A.B. Mar. 31, 2021); Samsung, IPR2020-01552, Paper 11, at 21–23. Indeed,
`
`“the mere existence of nonoverlapping claims does not support Petitioner’s position
`
`that this factor favors institution.” Samsung, IPR2020-01552, Paper 11, at 21.
`
`Moreover, Petitioner’s contention that Patent Owner may drop asserted claims
`
`before trial (Reply, at 2–3), in view of the court’s directives (Ex. 2012), ignores the
`
`fact that Petitioner’s challenges in each ground of the instant Petition present the
`
`“same reasons” across all independent claims. Pet. at 16–41, 75–77. Thus, resolution
`
`of Petitioner’s challenge to any claim at the district court will resolve key issues in
`
`the Petition. See KeyMe, IPR2020-01485, Paper 11, at 12 (finding “substantial
`
`4
`
`
`
`overlap between claims” given significant number of “overlapping limitations”
`
`between asserted and non-asserted claims); Samsung, IPR2020-01552, Paper 11, at
`
`23 (“[A]though the non-overlapping claims are challenged here, those claims are
`
`sufficiently similar to those at issue in the parallel proceeding.”).
`
`Fintiv Factor 6: Other Relevant Considerations
`C.
`Patent Owner has demonstrated that the merits of the Petition are far from
`
`strong, including due to the failure of the asserted prior art to disclose various
`
`limitations of the challenged claims. POPR, at 57–60. Petitioner’s decision to ignore
`
`that demonstration and incorrectly characterize the merits as “strong” (Reply, at 4)
`
`does not justify institution in view a balancing of all the Fintiv factors, including the
`
`advanced stage of the parallel proceeding. Indeed, even an allegedly “strong case on
`
`the merits” can be outweighed by the facts underlying Fintiv factors 2–5. Supercell
`
`Oy v. GREE, Inc., IPR2020-00215, Paper 10, at 18 (P.T.A.B. June 10, 2020).
`
`Petitioner cites no support for finding “Factors 4 and 6 to be definitive …
`
`regardless of other factors.” Reply, at 4. The decisions it cites took a “holistic view”
`
`of all factors, including stipulations by those petitioners to not pursue invalidity on
`
`the same prior art in the parallel proceeding—which is not found here. NanoCellect
`
`Biomedical, Inc. v. Cytonome/ST, LLC, IPR2020-00551, Paper 19, at 22, 25
`
`(P.T.A.B. Aug. 27, 2020); VMWare, Inc. v. Intellectual Ventures I LLC, IPR2020-
`
`00470, Paper 13, at 20, 22 (P.T.A.B. Aug. 18, 2020); see POPR, at 31.
`
`5
`
`
`
`II.
`
`The Petition Failed to Demonstrate that MH Was Publicly Accessible
`Neither the Google/YouTube “Certificate of Authenticity” (Ex. 1022) nor
`
`“Internet Archive Affidavit” (Ex. 1023) establishes a reasonable likelihood that MH
`
`was “publicly accessible” prior to the critical date here. At most, the exhibits merely
`
`demonstrate the MH may have been technically available on YouTube by 2014. This
`
`is not a “preposterous argument[].” Reply at 6. “The availability of a reference on a
`
`website does not end the public accessibility inquiry.” Celltrion, LLC v. Biogen, Inc.,
`
`IPR2017-01230, Paper 10, at 13 (P.T.A.B. Oct 12, 2017); see POPR, at 50–56.
`
`Petitioner must show—with particularity—that MH was sufficiently indexed
`
`on YouTube, or otherwise so well known to one with ordinary skill in the art, such
`
`that a skilled artisan, exercising reasonable diligence, could have located it. POPR,
`
`at 50–54. GREE’s argument that Petitioner failed to do so is far from “laughable.”
`
`Reply at 7. For example, Petitioner has “failed to present … any evidence that a
`
`query of a search engine before the critical date, using any combination of search
`
`words, would have led to the reference appearing in the search results.” Google LLC
`
`v. IPA Techs. Inc., IPR2018-00384, Paper 8, at 14–15 (P.T.A.B. July 3, 2018).
`
`Contrary to Petitioner’s assertions (Reply, at 7), the Google/YouTube
`
`“Certificate of Authenticity” submitted by Petitioner does not contain any evidence
`
`regarding any indexed “search words” that would have led MH to appearing in any
`
`search results of YouTube, Google, or other search engine. Ex. 1022; see POPR, at
`
`6
`
`
`
`55. Rather, the Certificate, at most, simply demonstrates the video was purportedly
`
`publicly visible by October 11, 2013. Ex. 1022, at 2. But, as previously discussed,
`
`this showing alone is insufficient to demonstrate “public accessibility.” See POPR,
`
`at 50–56. Indeed, the declarant does not offer any testimony regarding the indexing
`
`and search functions of YouTube, let alone relative to MH. See Ex. 1022. And
`
`Petitioner’s expert’s vague and conclusory testimony that a POSITA would simply
`
`have known to use unspecified “indexing and search functions” of YouTube to find
`
`MH is likewise insufficient, as previously explained. POPR, at 56.
`
`Petitioner’s reliance on the “Internet Archive Affidavit” (Ex. 1023) fares no
`
`better. “[T]hat the Internet Archive electronically archived a copy of [MH] does not,
`
`by itself, mean that [MH] was sufficiently indexed on the [underlying] website or
`
`the Internet Archive. Nor does it reveal anything about the search capabilities of the
`
`[underlying] website or the Internet Archive, or why one with ordinary skill in the
`
`art would have even visited either website to find anything.” Adobe Systems Inc. v.
`
`Grecia, IPR2018-00418, Paper 9, at 9 (P.T.A.B. Sept. 7, 2018); see Guardian
`
`Alliance Techs., Inc. v. Miller, IPR2020-00031, Paper 23, at 17–20 (P.T.A.B. Mar.
`
`26, 2020) (holding the fact that an interested artisan “could have gained access to
`
`the [proffered] printed publication through [a] publicly accessible website,” as
`
`reflected by the Internet Archive, is “not sufficient to show public accessibility”).
`
`7
`
`
`
`Dated: April 16, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Sur-Reply to Petitioner’s Reply to Patent Owner’s Preliminary Response has been
`
`served electronically via email upon counsel for Petitioner at bhoffman-
`
`PTAB@fenwick.com.
`
`Dated: April 16, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`9
`
`
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