Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 10
`Entered: May 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`PGR2021-00014
`Patent 10,583,362 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 10
`Entered: May 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`
`
`PGR2021-00014
`Patent 10,583,362 B2
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`PGR2021-00014
`Patent 10,583,362 B2
`
`
`INTRODUCTION
`I.
`GREE, Inc. (“Patent Owner” or “GREE”) is the owner of U.S. Patent
`No. 10,583,362 B2 (“the ’362 patent”). Supercell Oy (“Petitioner” or
`“Supercell”) filed a petition requesting post-grant review of claims 1–27 of
`the ’362 patent. Paper 2 (“Pet.”). Patent Owner, in turn, filed a preliminary
`response. Paper 7 (“Prelim. Resp.”). With our prior authorization,
`Petitioner filed a preliminary reply. Paper 8 (“Prelim. Reply”). Also, with
`our prior authorization, Patent Owner filed a preliminary sur-reply. Paper 9
`(“Prelim. Sur-Reply”).
`Having considered the arguments and evidence of record, and for the
`reasons explained below, we exercise our discretion under 35 U.S.C.
`§ 324(a) and deny institution of post-grant review.
`A. Related Proceedings
`Petitioner indicates that the ’362 patent is the subject of GREE, Inc. v.
`Supercell Oy, No. 2:19-cv-00413-JRG (E.D. Tex.). Pet. 1 (the “parallel
`district court proceeding”); see also Paper 5, 2–3 (Patent Owner identifying
`the same district court proceeding).
`B. The ’362 Patent
`The ’362 patent is directed to “a game control method, a system, and a
`non-transitory computer-readable recording medium for providing client
`devices with a battle game over a network.” Ex. 1003, 1:19–22.
`Specifically, the ’362 patent relates to “games with a function to allow
`groups of players to battle each other” during predetermined time slots. Id.
`at 1:40–46. According to the ’362 patent, in this type of time slot group
`battle, “the participation rate of group members in the battle tends to
`increase in the last half of the time slot,” but game providers want “players
`
`2
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`PGR2021-00014
`Patent 10,583,362 B2
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`to participate actively in the battle throughout the entire time set.” Id. at
`2:3–5, 2:20–22. Another problem with this type of time slot group battle
`identified by the ’362 patent is that these battles “are often not divided up by
`level” such that “beginners may end up passively participating in a group
`battle” and “may therefore be unsuccessful.” Id. at 2:25–28, 2:33–35.
`In order to increase player participation throughout the entire time set
`and even the playing field for beginner players, the ’362 patent divides the
`battle game time slot into “a first portion, middle portion, and last portion”
`subdivisions and changes a battle condition in at least one of the subdivided
`time slots. Ex. 1003, 2:65–3:2. According to the ’362 patent, these
`modifications increase participation at the beginning of the battle time slot
`and allow beginners to enjoy the battle by, for example, setting a battle
`condition that increases the attack strength of low-level characters during a
`subdivision. Id. at 3:2–17.
`C. Representative Claim
`The ’362 patent includes twenty-seven claims, of which claims 1, 12,
`20, and 27 are independent. Claim 1 is directed to a method. Ex. 1003,
`13:11–34. Claim 12 is directed to an apparatus. Id. at 14:23–55. Claims 20
`and 27 are directed to a “non-transitory computer-readable medium . . .
`[causing the one or a plurality of computers] to perform the steps of.” Id. at
`15:44–16:5, 16:59–17:28. Representative claim 1 is reproduced below:
`1. A method for controlling a battle game, comprising:
`displaying a game screen comprising a first field at a lower
`position in the game screen and a second field above the
`first field, wherein in the first field, a plurality of cards
`selected from a deck which is a stack of virtual cards are
`arranged in a horizontal direction;
`
`3
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`PGR2021-00014
`Patent 10,583,362 B2
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`
`during a first term of the battle game, in the second field, under
`a first battle condition, conducting a battle against a first-
`term opponent character appearing in the first term using
`a first-term parameter based on a first-term card selected
`by a player, and concluding the first term of the battle
`game at a predefined end timing based on a start timing of
`the battle game; and
`starting a second term of the battle game at a predefined start
`timing based on the start timing of the battle game, and
`during the second term after the first term, in the second
`field, under a second battle condition which is different
`from the first battle condition, conducting a battle against
`a second-term opponent character appearing in the second
`term using a second-term parameter based on a second-
`term card selected by the player, and concluding the
`second term of the battle game at a second predefined end
`timing based on the start timing of the battle game.
`Ex. 1003, 13:11–34.
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–27 are unpatentable based on the
`following grounds.
`Claims Challenged
`1–27
`1–27
`
`35 U.S.C. §
`101
`103(a)
`
`References/Basis
`Ineligible Subject Matter
`Master Hearthstone,1 Gilson2
`
`Petitioner relies on the Declaration of Steve Meretzky (Ex. 1005).
`II. ANALYSIS
`A. Discretion Under 35 U.S.C. § 324(a)
`Patent Owner urges the Board to exercise discretion to deny
`institution of post-grant review under 35 U.S.C. § 324(a) “because Petitioner
`
`1 “Master Hearthstone in 10 Minutes!” (Ex. 1012, “MH”).
`2 US 2013/0281173 A1, published October 24, 2013 (Ex. 1013, “Gilson”).
`
`4
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`PGR2021-00014
`Patent 10,583,362 B2
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`raises substantially the same arguments and prior art in a parallel district
`court proceeding filed more than one year ago and scheduled for trial in less
`than five months (August 2, 2021).” Prelim. Resp. 1 (citing NHK Spring
`Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB
`Sept. 12, 2018) (precedential)); Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Patent Owner
`asserts that “it would be an inefficient use of Board, party, and judicial
`resources to institute the present proceeding under these circumstances.
`Indeed, the possibility of duplication of efforts here is high, as is the
`potential for inconsistent results, due to both tribunals considering
`substantially the same issues.” Id. at 2 (citations omitted). Petitioner
`disagrees. Prelim. Reply 1–5.
`
`1. Legal Standards
`35 U.S.C. § 324(a) states that
`[t]he Director may not authorize a post-grant review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such
`information is not rebutted, would demonstrate that it is more
`likely than not that at least 1 of the claims challenged in the
`petition is unpatentable.
`The portion of the statute reading “[t]he Director may not
`authorize . . . unless” mirrors the language of 35 U.S.C. § 314(a), which
`concerns inter partes review. This language of sections 314(a) and 324(a)
`provides the Director with discretion to deny institution of a petition. See
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`agency’s decision to deny a petition is a matter committed to the Patent
`
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`PGR2021-00014
`Patent 10,583,362 B2
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`Office’s discretion.”); Consolidated Trial Practice Guide November 2019
`(“TPG”)3 at 55.
`In exercising the Director’s discretion under 35 U.S.C. §§ 314(a) and
`324(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.” TPG at 58
`(footnote omitted). The Board’s precedential NHK Spring decision explains
`that the Board may consider the advanced state of a related district court
`proceeding, among other considerations, as a “factor that weighs in favor of
`denying the Petition under § 314(a).” NHK Spring Co., IPR2018-00752,
`Paper 8 at 20.
`The Board’s precedential Fintiv order identifies several factors to be
`considered when analyzing issues related to the Director’s discretion to deny
`institution, with the goal of balancing efficiency, fairness, and patent quality.
`See Fintiv at 5‒6. These factors include: 1) whether a stay exists or is likely
`to be granted if a proceeding is instituted; 2) proximity of the court’s trial
`date to the Board’s projected statutory deadline; 3) investment in the parallel
`proceeding by the court and parties; 4) overlap between issues raised in the
`petition and in the parallel proceeding; 5) whether the petitioner and the
`defendant in the parallel proceeding are the same party; and 6) other
`circumstances and considerations that impact the Board’s exercise of
`discretion, including the merits. Id.
`We recognize that NHK Spring and the Fintiv Order apply the
`Director’s discretion pursuant to 35 U.S.C. § 314(a), and do not specifically
`extend their application to 35 U.S.C. § 324(a), which is the relevant statute
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`6
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`PGR2021-00014
`Patent 10,583,362 B2
`
`that applies to this PGR proceeding. As noted above, however, the pertinent
`statutory language is the same in both section 314(a) and section 324(a).
`Moreover, the policy justifications associated with the exercise of
`discretion—inefficiency, duplication of effort, and the risk of inconsistent
`results—apply equally to post-grant review proceedings under 35 U.S.C.
`§ 324(a). Accordingly, we weigh the factors set forth in the Fintiv Order to
`the facts here. See, e.g., Teva Pharms. USA, Inc. v. Corcept Therapeutics,
`Inc., PGR2019-00048, Paper 19 at 11 (Nov. 20, 2019) (analyzing NHK
`Spring and instituting trial); Stripe, Inc. v. Boom! Payments, Inc.,
`CBM2020-00002, Paper 22 (May 19, 2020) (analyzing the Fintiv Order and
`instituting trial); see also infra Factor 6 (considering Petitioner’s policy
`arguments).
`2. Fintiv Factors
`In determining whether to institute trial in this proceeding, we
`consider each of the factors set forth in Fintiv below.
`a. Factor 1: whether a stay exists or is likely to be
`granted if a proceeding is instituted
`Patent Owner asserts that “Petitioner has undisputedly not requested a
`stay, the district court has undisputedly not granted any stay, and the record
`does not include any evidence to even suggest that a stay, if requested,
`would be granted.” Prelim. Resp. 9. Petitioner replies that the likelihood of
`a stay requires speculation and is not dispositive. Prelim. Reply. 5. We
`agree with Petitioner that analysis of this factor requires speculation. As
`such, we determine that the facts underlying this factor are neutral.
`
`7
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`PGR2021-00014
`Patent 10,583,362 B2
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`
`b. Factor 2: proximity of the court’s trial date to the
`Board’s projected statutory deadline for a final
`written decision
`Patent Owner asserts that trial in the parallel district court proceeding
`“is scheduled to conclude more than ten months before a final written
`decision would be due in this proceeding (i.e., June 2022), if the Board were
`to institute.” Prelim. Resp. 10 (citing 35 U.S.C. § 326(a)(11)). Petitioner
`replies that “Factor 2 (Trial Proximity) should be afforded little weight
`because the trial will address different art.” Prelim. Reply 4. In addition,
`Petitioner contends that “determining the true trial date requires speculation”
`and “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.”
`Id.
`
`Patent Owner responds that “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.” Prelim. Sur-Reply 1. Also, “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.” Id. at 1–2. Patent Owner responds further that “the district court has
`already resumed jury trials as of March 1, 2021.” Id. at 2.
`The record before us indicates that trial is scheduled for August 2,
`2021. Ex. 2001, 1. Thus, trial in the parallel district court proceeding will
`conclude at least ten months before a final written decision in this
`proceeding would be due. Accordingly, the facts underlying this factor
`weigh toward denying institution.
`
`8
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`PGR2021-00014
`Patent 10,583,362 B2
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`
`c. Factor 3: investment in the parallel proceeding by the
`court and the parties
`Patent Owner asserts that “the parties and the district court have each
`already invested, and will have invested even more, substantial resources in
`the parallel proceeding by the time this Board decides whether to institute a
`trial in June 2021.” Prelim. Resp. 16–17. Patent Owner explains that claim
`construction briefing and argument is complete, and the district court issued
`its claim construction order in November 2020. Id. at 17. According to
`Patent Owner, “the parties have already completed both fact and expert
`discovery, have already completed all briefing on dispositive and Daubert
`motions, and further will have completed the pre-trial disclosures by the
`time this Board decides whether to institute a trial in June 2021.” Id. at 17
`(citing Ex. 2001). Specifically, Patent Owner asserts that “fact discovery
`closed on December 15, 2020,” expert discovery was completed on January
`27, 2021, “the parties’ respective dispositive and Daubert motions were filed
`in early February, 2021,” “all briefing is now completed,” and the “Final
`Joint Pretrial Order is due by June 21, 2021, with the Pretrial Conference set
`for June 29, 2021—shortly after the deadline for the Board’s institution
`decision in this proceeding.” Id. (citing Ex. 2001, 1–2).
`Petitioner replies that “[t]he 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.” Prelim. Reply 5.
`On the record before us, we agree with Patent Owner that “[t]he
`district court and parties have each already invested, and will have invested
`even more, substantial resources in claim construction, fact discovery, expert
`discovery, dispositive motions, [and] pretrial disclosures.” Prelim. Resp. 18;
`
`9
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`PGR2021-00014
`Patent 10,583,362 B2
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`Ex. 2001, 1–2. For the reasons discussed below, we disagree with
`Petitioner’s assertions that the investment made by the court and the parties
`was directed to non-overlapping issues. Thus, the facts underlying this
`factor weigh towards denying institution.
`d. Factor 4: overlap between issues raised in the petition
`and in the parallel proceeding
`Patent Owner asserts that “[t]here is substantial overlap between the
`claims, grounds, arguments, and evidence presented in the Petition and what
`has been, and continues to be, litigated in the parallel district court
`proceeding.” Prelim. Resp. 21 (citations omitted). According to Patent
`Owner, “[w]ith respect to Petitioner’s § 101 challenge, Petitioner relies on
`the same arguments before the two tribunals” and “[w]ith respect to
`Petitioner’s § 103 challenge, Petitioner relies on some of the same art—
`Gilson (U.S. Patent Pub. No. 2013/0281173)—in its district court Invalidity
`Contentions, and related expert report, as that asserted in the Petition.” Id.
`at 22–23 (citing for example Ex. 2004, 8 (Table 1), 12 (Table 3); Ex. 2005;
`Ex. 2006 ¶ 283; Pet. 10, 48–49; Ex. 1013; NHK Spring, IPR2018-00752,
`Paper 8, at 19).
`Petitioner replies that “the Board should proceed with the PGR
`because ‘the Board proceeding would not be directly duplicative of the
`District Court[’s] consideration of validity.’” Prelim. Reply 1–2 (citing
`Oticon Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at 23–24
`(PTAB Oct. 16, 2019) (precedential)). According to Petitioner, Patent
`Owner “begrudgingly acknowledges that inclusion of MH in the Petition
`makes the Overlap factor favor institution.” Id. at 2 (citing Prelim. Resp.
`32–33). Petitioner replies further that “[o]ther arguments from GREE
`regarding the Overlap factor are entirely speculative and misrepresent the
`
`10
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`PGR2021-00014
`Patent 10,583,362 B2
`
`current state of the litigation. The petition applies MH against all claims,
`whereas 12 of the claims are not asserted in the litigation.” Id. (citing
`Ex. 2004, 1, 3). Regarding the challenge based on § 101, Petitioner
`contends that “overlap regarding the § 101 challenge in this forum does not
`support discretionary denial.” Id. at 3 (citing “strong public interest”).
`The record before us indicates that for Ground 1 there is substantial
`overlap between the arguments raised in the parallel district court
`proceeding and this proceeding. Compare Pet. 16–42, with Ex. 2003;
`Ex. 2004, Ex. 2006. For Ground 2, there is also overlap because Gilson is
`relied upon as prior art in both proceedings. Thus, the facts underlying this
`factor weigh toward denying institution.
`e. Factor 5: whether the Petitioner and the defendant in
`the parallel proceeding are the same party
`Patent Owner asserts that “Petitioner and Patent Owner are the
`defendant and plaintiff, respectively, in the parallel district court
`proceeding.” Prelim. Resp. 33 (citing Ex. 2002). Thus, according to Patent
`Owner, “this factor weighs in favor of the Board exercising its discretion to
`deny institution pursuant to § 324(a).” Id. Petitioner replies that this factor
`should be given little weight. Prelim. Reply. 5.
`On the record before us, the fact that Petitioner here is the defendant
`in the parallel proceeding, when viewed in the context of the other facts in
`this case, weighs in favor of denying institution.
`f. Factor 6: other circumstances that impact the
`Board’s exercise of discretion, including the merits
`Patent Owner asserts that “the merits of the grounds asserted in the
`instant Petition are far from strong” and that “even an allegedly ‘strong case
`on the merits’ can be outweighed by the facts underlying factors 2–5.”
`
`11
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`PGR2021-00014
`Patent 10,583,362 B2
`
`Prelim. Resp. 34 (citation omitted). Petitioner replies that “[e]ach ground in
`the petition presents a strong case on the merits.” Prelim. Reply 4. In
`support of this position, Petitioner contends that Patent Owner “is reduced to
`arguing in response that a POSITA in 2014 would not know how to access
`YouTube.” Id. (citing Prelim. Resp. 49–50).
`When considering whether to exercise discretion to deny a petition,
`we undertake a balanced assessment of all relevant circumstances in the
`case, including the merits. Fintiv, 14. Although we need not undertake a
`full merits analysis when evaluating Fintiv Factor 6, we consider the
`strengths and weaknesses of the merits, where stronger merits may favor
`institution and weaker merits may favor exercising discretion to deny
`institution. Id. at 15–16. We also consider the other circumstances
`identified by the parties as pertinent to exercise of discretion.
`Upon our initial review of the merits based on a preliminary record,
`we determine that Petitioner’s challenge based on § 101 has merit. We
`further determine that Petitioner’s challenge based on § 103 also has merit.
`Accordingly, the facts underlying this factor are neutral.
`g. Holistic Analysis of Fintiv Factors
`We undertake a holistic analysis of these factors, considering
`“whether efficiency and integrity of the system are best served by denying or
`instituting review.” Fintiv, Paper 11 at 6. In this case, all of the factors
`weigh in Patent Owner’s favor except for the first and sixth factors, which
`are neutral. Specifically, the trial date, investment, overlap, and same parties
`factors outweigh facts that do not support exercising discretion to deny
`institution.
`
`12
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`PGR2021-00014
`Patent 10,583,362 B2
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`
`A balancing of the facts and circumstances as discussed above leads
`us to conclude, on this record, that the inefficient duplication of efforts here
`is likely. Accordingly, we determine that the circumstances presented weigh
`in favor of denying institution under 35 U.S.C. § 324(a).
` III. CONCLUSION
`Taking account of the information presented in the Petition, the
`Preliminary Response, the Preliminary Reply, the Preliminary Sur-Reply,
`and the evidence of record, we exercise our discretion under § 324(a) and
`deny institution. Accordingly, the Petition is denied, and no trial is
`instituted.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`13
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`PGR2021-00014
`Patent 10,583,362 B2
`
`PETITIONER:
`
`Brian Hoffman
`Jennifer Bush
`Kevin McGann
`Gregory Hopewell
`FENWICK & WEST LLP
`bhoffman-ptab@fenwick.com
`jbush-ptab@fenwick.com
`kmcgann-ptab@fenwick.com
`ghopewell@fenwick.com
`
`
`FOR PATENT OWNER:
`
`John Alemanni
`Andrew Rinehart
`Joshua Lee
`KILPATRICK TOWNSEND & STOCKTON LLP
`jalemanni@kilpatricktownsend.com
`arinehart@kilpatricktownsend.com
`jlee@kilpatricktownsend.com
`
`Scott McKeown
`ROPES & GRAY
`scott.mckeown@ropesgray.com
`
`
`14
`
`
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