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 RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`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 RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`B.
`
`C.
`
`Page
`The Petition Was Appropriately Denied Under § 324(a) ................................ 1
`A.
`The Board’s Conclusion Regarding Factor 2 Supports
`Exercising Discretion to Deny Institution. ............................................ 1
`The Board’s Conclusion Regarding Factor 3 Supports
`Exercising Discretion to Deny Institution ............................................. 3
`The Board’s Conclusion Regarding Factor 4 Does Not
`Rest on Clearly Erroneous Fact Findings.............................................. 3
`The Board’s Conclusion Regarding Factor 6 Is Not
`Clearly Unreasonable, Arbitrary, or Fanciful ....................................... 4
`The Board Did Not Abuse Its Discretion In Denying
`Institution Under § 324(a) In Accordance with Fintiv .......................... 5
`
`D.
`
`E.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Amazon.com, Inc. v. Vocalife LLC,
`IPR2020-00864, Paper 22 (P.T.A.B. Oct. 28, 2020) ............................................ 2
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ................................. passim
`Supercell Oy v. GREE, Inc.,
`PGR2020-00034, Paper 17 (P.T.A.B. Nov. 2, 2020) ........................................... 5
`
`ii
`
`
`
`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)
`
`iii
`
`
`
`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
`
`2013
`
`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
`
`Amended Docket Control Order, GREE, Inc. v. Supercell Oy, Civil
`Action No. 2:19-cv-00413, Document 153 (E.D. Tex. Jun. 8,
`2021)
`
`iv
`
`
`
`I.
`
`The Petition Was Appropriately Denied Under § 324(a)
`The Board did not abuse its discretion in denying institution based on “a
`
`holistic analysis” of the Fintiv Order Factors. Paper 10 (“Decision”), at 12-13. The
`
`Board found that, “[i]n this case, all of the factors weigh in Patent Owner’s favor
`
`except for the first and sixth factors, which are neutral.” Id. at 12. And overall “[a]
`
`balancing of the facts and circumstances”—including the “trial date, investment,
`
`overlap, and same parties factors”—“leads [the Board] to conclude, on this record,
`
`that the inefficient duplication of efforts here is likely.” Id. at 12-13.
`
`Petitioner’s Request for Rehearing of that Decision boldly asks the Board to
`
`wholly ignore the impending trial between the parties regarding the subject patent
`
`(i.e., Factors 2, 3, and 5) and simply find “Factors 4 and 6 to be definitive.” Paper
`
`11 (“Request”), at 7. This is improper and incorrect. The Board’s precedential order
`
`in Fintiv prescribes a holistic review and evaluation of all six Fintiv Factors to
`
`determine “whether efficiency and integrity of the system are best served by denying
`
`or instituting review.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6
`
`(P.T.A.B. Mar. 20, 2020). The Board performed such a full and proper analysis in
`
`its Decision, and thus did not abuse its discretion in denying institution.
`
`A.
`
`The Board’s Conclusion Regarding Factor 2 Supports Exercising
`Discretion to Deny Institution.
`The Board’s Decision correctly noted that “trial is scheduled for August 2,
`
`2021.” Decision, at 8. Further, “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.” Id. (emphasis added). Less than two weeks ago the District Court issued
`
`an amended Docket Control Order confirming that trial remains scheduled for
`
`August 2, 2021. Ex. 2013. Thus, the Board’s conclusion regarding Factor 2—
`
`proximity of the court’s trial date to the Board’s projected statutory deadline for a
`
`final written decision—supports exercising discretion.
`
`Petitioner’s contention otherwise is essentially that, when there is not
`
`complete overlap between the prior art references asserted, all factors should favor
`
`institution. See Request, at 5, 7. This is not correct. Factor 2 “weigh[s] … in favor
`
`of exercising authority to deny institution” “[i]f the court’s trial date is earlier than
`
`the projected statutory deadline”—regardless of the complete overlap of prior art
`
`references between the two tribunals. Fintiv, IPR2020-00019, Paper 11, at 9; see,
`
`e.g., Amazon.com, Inc. v. Vocalife LLC, IPR2020-00864, Paper 22, at 10 (P.T.A.B.
`
`Oct. 28, 2020) (finding Factor 2 “strongly favors exercising [] discretion to deny
`
`institution” where jury trial has been completed, despite the fact the Petitioner did
`
`not present certain prior art references to the jury, and thus “the jury did not consider
`
`Grounds 1a–1e of the Petition”). In short, Factor 2 plainly weighs toward denying
`
`institution, as the Board properly found. Decision, at 8.
`
`2
`
`
`
`B.
`
`The Board’s Conclusion Regarding Factor 3 Supports Exercising
`Discretion to Deny Institution
`In the Decision, the Board correctly found that Factor 3 “weighs toward
`
`denying institution” given the “substantial” investments made in the parallel
`
`proceeding by both the district court and the parties. Decision, at 9-10. Petitioner
`
`ignores this Factor, instead urging that the “lack of overlap” of issues between the
`
`two tribunals should be “definitive … regardless of [the Board’s] findings regarding
`
`other factors.” Request, at 7. This is incorrect, and “the overlap between issues raised
`
`in the petition and in the parallel proceeding” is addressed at Factor 4 versus other
`
`Factors. Fintiv, IPR2020-00019, Paper 11, at 6. Further, the Board previously
`
`“disagree[d] with Petitioner’s assertions that the investment made … was directed
`
`to non-overlapping issues.” Decision, at 10.
`
`C.
`
`The Board’s Conclusion Regarding Factor 4 Does Not Rest on
`Clearly Erroneous Fact Findings
`In the Decision, the Board correctly determined that Factor 4 “weigh[s]
`
`toward denying institution” in view of (i) the “substantial overlap” between
`
`Petitioner’s § 101 challenge in the parallel district court proceeding and Ground 1 of
`
`the Petition, and (ii) the “overlap” between Petitioner’s prior art challenge in the
`
`parallel district court proceeding and Ground 2 of the Petition “because Gilson is
`
`relied upon as prior art in both proceedings.” Decision, at 10–11. Petitioner does not
`
`dispute the “substantial overlap” with respect to the § 101 challenge nor argue that
`
`3
`
`
`
`the Board abused its discretion in arriving at that finding. Rather, Petitioner simply
`
`argues the Board erred in finding “overlap” between Petitioner’s prior art challenges
`
`given that “the primary reference relied on in Ground 2, Master Hearthstone, is not
`
`at issue in the related litigation.” Request, at 3.
`
`But this is simply a repackaging of Petitioner’s same, earlier argument (see
`
`Paper 8, at 1–2), which the Board already rejected. Decision, at 11. As previously
`
`explained, this Factor does not require complete duplication of prior art evidence
`
`between the two forums. See Paper 7, at 29–30; Paper 9, at 3–4. And the decisions
`
`relied on by Petitioner are distinguishable from the facts here. See Paper 9, at 3–5.
`
`Likewise, Petitioner’s restated argument (see Paper 8, at 2–3) that this Factor
`
`allegedly favors institution because “12 of the claims are not asserted in the
`
`litigation” (Request, at 5) fails. Resolution of Petitioner’s challenge to any claim of
`
`the ’362 Patent at the district court will resolve key issues in the Petition given
`
`Petitioner’s challenges in each ground here present the same reasons across all
`
`independent claims of the ’362 Patent. See Paper 7, at 26–27; Paper 9, at 4–5.
`
`D.
`
`The Board’s Conclusion Regarding Factor 6 Is Not Clearly
`Unreasonable, Arbitrary, or Fanciful
`The Board correctly determined that Factor 6 is “neutral” because the merits
`
`of the challenges set forth in the instant Petition are neither weak nor strong.
`
`Decision, at 11-12. Petitioner contends that this conclusion is “clearly unreasonable,
`
`arbitrary, or fanciful” in light of the Board’s comment that each of Petitioner’s
`4
`
`
`
`challenges “has merit” and is thus, inherently, adequate for institution. Request, at
`
`6-7. Petitioner is incorrect. As set forth in Fintiv, this Factor favors institution only
`
`“[i]f the merits of a ground raised in the petition seem particularly strong on the
`
`preliminary record.” IPR2020-00019, Paper 11, at 14–15 (emphasis added). And
`
`simply having “merit” adequate for institution necessarily does not satisfy this
`
`standard. If the challenge did not have “merit” in the first instance there would be
`
`no reason for the Board to analyze whether it should exercise its discretion to
`
`nonetheless deny institution under § 324(a).
`
`E.
`
`The Board Did Not Abuse Its Discretion In Denying Institution
`Under § 324(a) In Accordance with Fintiv
`The Board did not abuse its discretion in reaching its conclusion under a
`
`holistic analysis of all of the Fintiv Factors. Petitioner’s argument otherwise suggests
`
`that the Board should have found “Factors 4 and 6 to be definitive … regardless of
`
`its findings regarding other factors.” Request, at 7. Such a proposition is directly
`
`contrary to the Board’s precedential decision in Fintiv, as noted above. And none of
`
`the decisions cited by Petitioner support such a divergence from the required holistic
`
`analysis of all of the Fintiv Factors. See Request, at 7. Those decisions are also
`
`distinguishable from the facts here. See Paper 9, at 3-5. Petitioner’s challenge to the
`
`entire “NHK-Fintiv framework” as “procedurally invalid” (Request, at 8-10) also
`
`fails, as previously found by this Board. See, e.g., Supercell Oy v. GREE, Inc.,
`
`PGR2020-00034, Paper 17, at 11–12 (P.T.A.B. Nov. 2, 2020).
`5
`
`
`
`Dated: June 17, 2021
`
`
`
`By: /John C. Alemanni/
`
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Request for Rehearing Under 37 C.F.R. §42.71 has been
`
`served electronically via email upon counsel for Petitioner at bhoffman-
`
`PTAB@fenwick.com.
`
`Dated: June 17, 2021
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Patent Owner
`
`7
`
`
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