PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`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 SUR-REPLY TO PATENT OWNER’S RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING UNDER 37 C.F.R. §42.71
`
`
`
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF CONTENTS
`
`Page
`There Is Minimal Overlap Between the Proceedings ...................................... 1
`The Minimal Overlap Is Wholly Relevant to the Board’s
`Analysis Under Factors 2 and 3 ....................................................................... 2
`Patent Owner Misrepresents the Relevant Factor 6 Analysis ......................... 4
`
`
`A.
`B.
`
`C.
`
`
`
`
`i
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Apple Inc v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. March 20, 2020) ............................ 1, 3, 4, 5
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)............................................. 3
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC,
`IPR2019-01393, Paper 24 (P.T.A.B. July 25, 2019) ............................................ 3
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 5
`
`
`
`ii
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`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 Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Exhibit
`
`Description
`
`1016
`
`1017
`
`1018
`
`1019
`
`“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 (E.D.
`Texas 2:19-cv-00413)
`
`
`
`iv
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`A proper weighing of the Fintiv factors supports institution of PGR in the
`
`instant proceeding. Petitioner asserts different primary art references in each
`
`forum, relying on Master Hearthstone (“MH”) in the PGR as an invalidating prior
`
`art reference against all claims of the challenged patent. The court in the parallel
`
`litigation will not evaluate whether the patent is obvious over MH in combination
`
`with Gilson, nor will the court assess the validity of the unasserted claims. This
`
`minimal overlap affects not only Factor 4 (overlap) of the Fintiv analysis, but also
`
`Factors 2 (proximity to trial) and 3 (investment). Moreover, the Board abused its
`
`discretion in finding Factor 6 (merits) neutral. A proper weighing of the Fintiv
`
`factors thus favors grant of rehearing and institution.
`
`A. There Is Minimal Overlap Between the Proceedings
`The minimal overlap between the instant proceeding and the litigation
`
`warrants institution of PGR. The absence of MH from the litigation coupled with
`
`the Board’s acknowledgement that “Petitioner’s challenge based on § 103 [] has
`
`merit,” (Decision at 12) demonstrates that the Board recognizes MH includes
`
`disclosures that more likely than not render obvious claims of the ’362 patent.
`
`Hence, the inclusion of MH constitutes a material difference between the art-based
`
`grounds in the instant proceeding and those at issue in the parallel litigation – the
`
`PGR involves a publication disclosing a prior art battle card game that more likely
`
`than not renders obvious the key aspects of the ’362 patent’s claims.
`
`1
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`Further, neither Patent Owner nor the Decision addresses the fact that the
`
`PGR involves claims materially distinct from those remaining in the litigation,
`
`including claims reciting what the battle conditions are and how they are determined
`
`(4, 7-9, 15-16, 23-24), the comparative levels of attack strength of the opponent
`
`characters under various battle conditions (5, 17, 25), or conducting a battle during a
`
`third term (22). Moreover, the Petition demonstrates that these claims are invalid
`
`based on MH, the non-overlapping reference. Pet. at 64-77. Tellingly, Patent
`
`Owner does not even respond to Petitioner’s arguments that Patent Owner will likely
`
`drop additional claims from the litigation before trial.
`
`Patent Owner alleges that “[r]esolution of Petitioner’s challenge to any claim
`
`of the ’362 Patent at the district court will resolve key issues in the Petition”
`
`because Petitioner’s challenges “present the same reasons across all independent
`
`claims.” Response at 4 (emphasis in original). This statement is simply false; the
`
`Petition presents reasons why the ’362 patent is obvious that are not at issue in the
`
`litigation. Additionally, overlap regarding the § 101 challenge in this forum does
`
`not support discretionary denial as there is 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.
`
`B.
`
`The Minimal Overlap Is Wholly Relevant to the Board’s Analysis
`Under Factors 2 and 3
`Contrary to Patent Owner’s assertions, concerns implicated by Factors 2 and
`
`2
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`3 are obviated by the minimal overlap. The Board explicitly recognized that
`
`“[s]ome facts may be relevant to more than one factor.” Apple Inc v. Fintiv, Inc.,
`
`IPR2020-00019, Paper 11 at 6 (P.T.A.B. March 20, 2020) (Precedential). With
`
`respect to Factor 2, the Board opinion in NHK Spring (the only opinion referenced
`
`in the Fintiv Order discussion of Factor 2) anchored its analysis on the question of
`
`overlap. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at
`
`20 (P.T.A.B. Sept. 12, 2018) (Precedential) (“A trial before us on the same asserted
`
`prior art will not conclude until September 2019”) (emphasis added).
`
`Here, the minimal overlap between the litigation and the instant PGR is
`
`wholly relevant to the analysis of Factor 2. Patent Owner does not dispute that the
`
`court will not address the validity of the ’362 patent on a ground raised in the
`
`Petition. Specifically, the court will not consider whether the primary reference in
`
`the instant PGR – MH – discloses limitations of the challenged claims and renders
`
`obvious the challenged claims in combination with Gilson. Nor will the court
`
`address at all the validity of claims 4-5, 7-9, 15-17, or 22-25. Accordingly, there is
`
`minimal risk of inconsistent results between the proceedings.
`
`The minimal overlap is also relevant to Factor 3. The Board in Sand
`
`Revolution specifically looked at the type of investment that occurred in the parallel
`
`proceeding in weighing Factor 3, concluding that the court and the parties had not
`
`invested substantially in the merits of the invalidity positions. See Sand Revolution
`
`3
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24
`
`at 10 (P.T.A.B. July 25, 2019) (Informative) (“…much of the district court’s
`
`investment relates to ancillary matters untethered to the validity issue itself.”). The
`
`investment by the court in the parallel litigation has not been in whether the claims
`
`of the ’362 patent are obvious over the grounds raised in the Petition. Nor will the
`
`court make any future investment on these grounds.
`
`Patent Owner Misrepresents the Relevant Factor 6 Analysis
`C.
`Patent Owner’s characterization of the Factor 6 analysis is wrong. Patent
`
`Owner’s statement that “[t]he Board…determined that Factor 6 is ‘neutral’ because
`
`the merits of the [Petition] challenges are neither weak nor strong” is false. Reply
`
`at 4. The Board made no such characterization of the merits in the Decision, but
`
`simply stated that Petitioner’s challenges have “merit.” Decision at 12.
`
`Second, Patent Owner’s description of Fintiv’s Factor 6 is incorrect. Factor 6
`
`does not favor institution “only” if the merits are particularly strong on the
`
`preliminary record. Reply at 5. Rather, Fintiv merely recognized that a strong case
`
`on the merits would favor institution. Fintiv, IPR2020-00019, Paper 11 at 14-15.
`
`Indeed, the Fintiv Order footnoted its statement by citing to three prior decisions
`
`where the “strength of the merits outweigh[ed] relatively weaker countervailing
`
`considerations of efficiency” and a fourth decision where the grounds were
`
`“sufficiently strong to weigh in favor of not denying institution.” Id. at 15 n.29.
`
`4
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Plus, the Board did conclude that Petitioner’s challenges under both § 101 and
`
`§ 103 are particularly strong. The Decision necessarily concluded that it is more
`
`likely than not that the ’362 patent is invalid under both grounds. Such merit is
`
`inherently “strong,” as it meets a higher burden than the IPR institution standard
`
`under consideration in Fintiv and the cases cited therein.
`
`In fact, the invalidity grounds presented in the Petition could not be any
`
`stronger; the Decision does not identify any weaknesses. The sole discussion of
`
`the merits is found under Factor 6, which concludes with statements that both the
`
`§ 101 and § 103 grounds have “merit.” Decision at 12 (citing Fintiv at 15-16).
`
`There is no analysis that would support finding the invalidity grounds weak.
`
`Further, finding Factor 6 to be “neutral” in view of this record is abuse of
`
`discretion. There is nothing in the record to explain why the Board found Factor 6
`
`neutral. Further, the Board implied that it did not even perform a full merits
`
`analysis. Decision at 12. Finding Factor 6 neutral while stating that the Board does
`
`not even need to perform a full analysis, signals an abuse of discretion at least
`
`because it involves a record that contains no evidence on which the Board could
`
`base its decision. Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1273 (Fed. Cir.
`
`2017) (finding the Board abused its discretion by making “significant evidentiary
`
`decisions without providing an explanation or a reasoned basis for its decisions.”).
`
`5
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`Dated: June 24, 2021
`
`Respectfully submitted,
`FENWICK & WEST LLP
`
`/Jennifer R. Bush/
`Jennifer R. Bush
`Reg. No. 50,784
`Attorneys for Petitioner Supercell Oy
`
`
`
`6
`
`
`
`PGR2021-00014
`Petitioner’s Sur-Reply to Patent Owner’s Response to Petitioner’s Request for Rehearing
`
`
`CERTIFICATION OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that the foregoing Petitioner’s Sur-Reply to
`
`Patent Owner’s Response to Petitioner’s Request for Rehearing was served on
`
`Patent Owner’s lead and back-up counsel in its entirety by electronic service at the
`
`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
`
`
`
`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
`
`Dated: June 24, 2021
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: (650) 988-8500
`
`
`7
`
`
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