Gree, Inc.

Patent Trials and Appeals Board

Feb 19, 2021

IPR2020-01633 (P.T.A.B. Feb. 19, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: February 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SUPERCELL OY,
Petitioner,
v.
GREE, INC.,
Patent Owner.

IPR2020-01633
Patent 9,079,107 B2

Before LYNNE H. BROWNE, HYUN J. JUNG, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
I. INTRODUCTION
A. Background and Summary
Supercell Oy (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting institution of an inter partes review of claims 1–11 of U.S. Patent
No. 9,079,107 B2 (Ex. 1001, “the ’107 patent”). GREE, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). With our
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authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
Response Pursuant to 37 C.F.R. § 42.108(c) (Paper 7, “Reply”), and Patent
Owner filed a Sur-Reply to Petitioner’s Reply to Patent Owner’s Preliminary
Response (Paper 8, “Sur-reply”).
After considering the parties’ briefs and the evidence of record, we
exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.
B. Real Parties in Interest
Petitioner identifies only Supercell Oy as a real party in interest.
Pet. 2. Patent Owner identifies only GREE, Inc. as a real party in interest.
Paper 4, 2.
C. Related Matters
The parties indicate that the ’107 patent has been asserted in GREE,
Inc. v. Supercell Oy, 2:19-cv-00311 (E.D. Tex.). Pet. 2; Paper 4, 3. The
parties also indicate that a related patent is at issue in IPR2020-001628.
Pet. 2; Paper 4, 2.
D. The ’107 patent (Ex. 1001)
The ’107 patent issued on July 14, 2015 from an application filed on
March 5, 2014 that, in turn, claims priority to foreign applications, the
earliest of which was filed on March 12, 2013. Ex. 1001, codes (22), (30),
(45), 1:8–11.
According to the ’107 patent, it addresses reduced motivation for low
level players when playing a social game with guilds or groups of players
that may be of higher level. See id. at 1:22–24, 1:56–59, 2:14–15, 2:17–22.
In one embodiment, while the game is being played, certain game pieces
appear based on the level of the user. See id. at 21:32–38, 23:50–53. When
players in a guild collect all the required game pieces, a reward is given. See
id. at 23:62–64. Thus, the appearance of some of the required game pieces
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to only users of a particular level encourages players to form a guild with
high level and low level players. See id. at 23:50–57.
E. Illustrative Claim
The ’107 patent includes claims 1–11, all of which Petitioner
challenges. Of those, claims 1, 9, and 10 are independent, and claim 1 is
reproduced below.
1. A game control method carried out by a game
control device for providing a game to a plurality of
communication terminals respectively used by a plurality of
users, the game control device communicating with the plurality
of communication terminals and having a storage unit, the
method comprising the steps of:
(a) storing skill level information indicative of skill levels
of each of the plurality of users of the game, in the storage unit;
(b) grouping the plurality of users into one or more
groups;
(c) providing one or more of a plurality of game pieces to
a first plurality of users in a first group of said one or more
groups, based on the skill level information, while the first
plurality of users are at certain events in the game;
(d) storing allocation information indicating which game
piece has been provided to which user with a respective skill
level, and a number and type of game pieces required to obtain
a game item as a reward, in the storage unit;
(e) determining whether all of the game pieces required
to obtain said game item have been provided to the first group,
based on the allocation information stored in the storage unit;
and
(f) allocating in a memory, the game item to the first
group or at least one of the first plurality of users, when it is
determined that all the required game pieces have been
provided.
Ex. 1001, 24:65–25:24.
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F. Asserted Prior Art and Proffered Testimonial Evidence
Petitioner identifies the following references as prior art in the
asserted grounds of unpatentability:
Name Reference Exhibit
Thompson US 7,824,253 B2, issued Nov. 2, 2010 1007
Schulhof US 8,376,838 B2, issued Feb. 19, 2013 1006
Englman US 2011/0300926 A1, published Dec. 8, 2011 1004
Ronen US 2013/0190094 A1, published July 25, 2013 1005
Pet. 3; see also id. at 4 (arguing that the effective filing date is no earlier
than March 12, 2013). Petitioner also provides a Declaration of Emmet J.
Whitehead, Jr., Ph.D. (Ex. 1003).
G. Asserted Grounds
Petitioner asserts that claims 1–11 would have been unpatentable on
the following grounds:
Claim(s) Challenged 35 U.S.C. § References/Basis
1–7, 9–11 103(a)1 Englman, Ronen, Schulhof
8 103(a) Englman, Ronen, Schulhof, Thompson

II. 35 U.S.C. § 314(a)
Patent Owner argues that “the Board should exercise its discretion
under 35 U.S.C. § 314(a) to deny the Petition because Petitioner raises
substantially the same prior art and arguments in a parallel district court
proceeding filed more than one year ago and scheduled for trial in
approximately two months (March 1, 2021).” Prelim. Resp. 1.

1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the ’107 patent claims priority to an application filed before
that date, our citations to 35 U.S.C. § 103 are to its pre-AIA version.
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A. Legal Standards
35 U.S.C. § 314(a) states that
[t]he Director may not authorize an inter partes review to be
instituted unless the Director determines that the information
presented in the petition filed under section 311 and any response
filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
The language of § 314(a) expressly provides the Director with
discretion to deny institution of a post-grant review. 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 Office’s discretion.”);
Consolidated Trial Practice Guide November 2019 (“TPG”) at 55 (available
at https://www.uspto.gov/TrialPracticeGuideConsolidated).
In exercising the Director’s discretion under § 314(a), the Board may
consider “events in other proceedings related to the same patent, either at the
Office, in district court, or the ITC.” TPG at 58. NHK Spring 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. v. Intri-Plex Techs.,
Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential).
Additionally, the Board’s precedential order in Apple Inc. v. Fintiv, Inc.,
IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the
Fintiv Order”) identifies several factors for analyzing issues related to the
Director’s discretion to deny institution, with the goal of balancing
efficiency, fairness, and patent quality.
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B. Applying the Fintiv Factors
1. Whether the Court Granted a Stay or Evidence Exists that one
may be Granted if a Proceeding is Instituted
Petitioner argues that it “has not yet sought a stay but will do so
should the IPR be instituted.” Pet. 65; see also Reply 3 (stating that “though
no stay has yet been sought, Petitioner stipulates it will seek a stay in the
parallel litigation should the IPR be instituted”) (replying to Prelim. Resp.
7).
Patent Owner responds that “Petitioner has not filed any motion to
stay the parallel district court proceeding” and “there is little evidence here
to suggest that the district court will grant a stay.” Prelim. Resp. 7. Patent
Owner argues that a stay is “extremely unlikely” because stays are denied
before institution and an institution decision is “not due until after the jury
trial in the parallel district court proceeding.” Id. at 7–8 (citing Ex. 2013, 1).
Patent Owner further replies that Petitioner’s stipulation “is not sufficient
evidence that a stay will, in fact, be granted upon institution.” Sur-reply 1
(citing Prelim. Resp. 7–9; Reply 3).
Because the district court has not yet granted a stay and the record
does not include any evidence that a stay, if requested, would be granted, we
determine that the facts underlying this factor are neutral.
2. Proximity of the Court’s Trial Date to the Board’s Projected
Statutory Deadline for a Final Written Decision
Petitioner argues that “[w]hile the trial date is currently scheduled to
occur before the statutory deadline for the [final written decision], this factor
should be afforded little weight, as the date is very likely to change.”
Pet. 65. Petitioner also argues that trial dates reset when review is instituted
and significantly slip after institution has been denied. Id. at 65–66 (citing
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Ex. 1014, 2; Ex. 1015, 3); see also Reply 3–4 (arguing similarly) (citing
Ex. 1014, 2; Ex. 1015, 3).
Patent Owner responds that a “jury trial in the parallel district court
proceeding is set to begin on March 1, 2021” and thus, “scheduled to
conclude more than twelve months before a final written decision would be
due in this proceeding.” Prelim. Resp. 9. Patent Owner lists several
proceedings where the Board has denied institution based on a smaller gap
between trial date and due date for a final written decision. Id. at 9–10.
Patent Owner also argues that Petitioner does not present any evidence that
trial will not proceed as currently scheduled, the trial date should be taken at
“face value,” and both fact discovery and expert discovery have closed. Id.
at 12–14 (citing Ex. 2002, 1; Ex. 2012, 3; Ex. 2013, 4). Patent Owner
further argues that, “even if trial is ultimately delayed by a few months, it
will still likely conclude well before a final written decision would be due in
this proceeding, if the Board were to institute.” Id. at 15; see also Sur-reply
2 (presenting similar argument).
Petitioner replies the district court has postponed all in-person trials
through February 2021 and the “pause is likely to have a downstream impact
on the court’s schedule and delay the trial schedule in the parallel litigation.”
Reply 4 (citing Ex. 1016, 1; Ex. 1017, 1). Patent Owner replies that the
Board has previously rejected arguments that a trial date is uncertain based
on articles and the district court did “not modify, let alone, continue the jury
trial in the parallel proceeding, which is still scheduled for March 1, 2021.”
Sur-reply 1–2 (citing Prelim. Resp. 12 n.3; Reply 4).
The present record shows that, if review were instituted in this
proceeding, a final written decision would be due twelve months after the
currently scheduled trial date in the parallel district court proceeding.
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Ex. 2013, 1 (Eighth Amended Docket Control Order in the parallel district
court case setting jury selection for March 1, 2021). Given the considerable
overlap in claims, prior art, and arguments as described below, institution
would create a potential for the district court proceeding and the review to
arrive at inconsistent results spaced approximately one year apart.
As for possible trial date adjustments due to the COVID-19 pandemic,
the record shows all in-person trials have been postponed through February
2021. Ex. 1016, 1 (Order continuing all in-person jury trials). The record
also shows that the trial date for the parallel district court proceeding is still
scheduled for March 2021. Ex. 2013, 1. Even if we accepted that the pause
in all in-person trials from December 2020 through February 2021 would
delay the related district court proceeding, we agree with Patent Owner that
the trial would still finish many months before the due date for a final
written decision in this proceeding. See Prelim. Resp. 15; Sur-reply 2.
Thus, we determine that this factor weighs in favor of denying
institution.
3. Investment in the Parallel Proceeding by the Court and the
Parties
Petitioner argues that “[t]he district court proceeding . . . is only in its
initial stages, and the court has not made any substantial investments in the
merits of the invalidity positions.” Pet. 66. Patent Owner responds that the
district court has issued its order on claim construction and, by the time
institution is considered, will have completed, at least, fact discovery, expert
discovery, briefing on dispositive and Daubert motions and pretrial
conference. Prelim. Resp. 17–18 (citing Ex. 2001, 1; Ex. 2002; Ex. 2012;
Ex. 2013, 1–4). Patent Owner, thus, argues that the parallel district court
proceeding is at an advanced stage and that the district court and parties will
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have invested substantial resources by the time institution is decided. Id. at
19.
Patent Owner also argues that Petitioner did not file its Petition until
twelve months after the parallel district court proceeding was initiated and
contends, with citations to other Board decisions, that the unexplained delay
weighs in favor of denying institution. Prelim. Resp. 19–20 (citing
Ex. 2004). Patent Owner further argues that the delay shows Petitioner must
be using this proceeding “as a second-bite at the apple” to relitigate validity
in a different venue, not as an alternative to district court litigation. Id. at 20.
Patent Owner notes that Petitioner served the same grounds and asserted the
same references in the same way more than five months before filing its
Petition in this proceeding. Id. (citing Exs. 2005–2007).
Petitioner replies that, because of difficulties during fact discovery,
“the district court entered a revised schedule extending many of the
deadlines by several weeks” and “has yet to substantively address [the
challenged claims’] validity.” Reply 4 (citing Ex. 1018). Petitioner also
argues that “[b]y the time the Board decides whether to institute, it will have
already invested significant resources into considering the validity of the
’107 patent.” Id. Petitioner further replies that “the timing of the filing
enabled the Petition to take into account GREE’s amended infringement
contentions and the court’s tentative claim constructions in the parallel
litigation, which resulted in a more focused and thorough petition” and
Patent Owner does not identify any unfair costs due to the timing of the
filing of the Petition. Id. at 4–5 (citing Ex. 1019, Ex. 1020).
Patent Owner replies that Petitioner cannot dispute the substantial
resources expended in the parallel district court proceeding. Sur-reply 3
(citing Prelim. Resp. 16–19). Patent Owner also argues that the due dates
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that were extended have passed and “[f]orcing Patent Owner to re-litigate
Petitioner’s same invalidity challenges . . . in this forum necessarily imposes
unfair costs to Patent Owner.” Id. (citing Reply 4).
In the parallel district court proceeding, a Claim Construction
Memorandum Opinion and Order has been issued and by this time, the
parties have, inter alia, completed expert discovery, filed dispositive
motions and motions to strike expert testimony, served pretrial disclosures,
and attended a pretrial conference. Ex. 2011; Ex. 2013, 1–4. The district
court and the parties have made substantial investments in the parallel
proceeding. The parties still have to expend significant resources to conduct
the trial itself, as well as potential post-trial proceedings.
Based on the record, weighing the investments thus far made and yet
to be made, we determine that substantial investments have been made in the
parallel proceeding, and thus, this factor weighs in favor of denying
institution.
4. Overlap Between Issues Raised in the Petition and in the Parallel
Proceeding
Petitioner argues that the Petition asserts a combination of references
that includes a reference not raised in the parallel district court litigation,
raises a ground not before the district court, and brings forth significant
issues related to the claims that would be unaddressed if institution is denied.
Pet. 66.2 Petitioner, thus, argues there are no significant concerns regarding
duplicative efforts or potentially conflicting outcomes. Id.

2 Petitioner also argues that the “patent ineligibility standard” at the Office
“is different” from the standard for jury trials. Pet. 66. However, because
patent ineligibility has not and cannot be asserted in the present Petition, we
do not need to address this argument.
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Patent Owner responds 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; see also Sur-reply 3 (arguing similarly).
According to Patent Owner, Petitioner asserts the same prior art against the
same claims with substantially the same arguments in the district court
proceeding; Petitioner challenges one additional dependent claim in this
proceeding that would not preclude finding substantial overlap; and any
additionally cited prior art is immaterial to this factor. Prelim. Resp. 22–26
(citing Pet. 1, 3, 20–28, 30–57; Ex. 2005, 1, 3, 8–9, 12; Ex. 2006; Ex. 2007;
Ex. 2008 ¶¶ 221–228, 283–292, 404–471). Patent Owner argues the
inclusion of another reference (Schulhof) that is not asserted in the district
court proceeding does not differentiate meaningfully the arguments in this
proceeding from the arguments in district court. Id. at 28–30 (citing Pet. 34–
37, 47–51, 66; Ex. 2005, 8–9; Ex. 2006; Ex. 2007; Ex. 2008).
Petitioner replies that the Board has declined to exercise discretion
when a reference asserted in the Petition is not at issue in the related
litigation. Reply 1 (citing, inter alia, Snap, Inc. v. SRK Technology LLC,
IPR2020-00820, Paper 15 at 15 (PTAB Oct. 21, 2020) (precedential)).
Petitioner contends that Patent Owner minimizes a crucial distinction
between this proceeding and the parallel district court litigation because
Schulhof is cited for teaching the purported solution of the ’107 patent. Id.
at 1–2 (citing Pet. 25–27, 36–37, 47–51, 56–60; Prelim. Resp. 29).
Petitioner also argues that including Schulhof and Thompson in this
proceeding obviates concerns of duplicative efforts and potentially
conflicting decisions and denying institution would leave claim 8
unaddressed. Id. at 2–3. Petitioner further “stipulates that, should IPR be
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instituted, Petitioner will not pursue the same grounds in the litigation.” Id.
at 3.
Patent Owner replies that “[t]his factor expressly does not require
complete duplication of grounds and evidence.” Sur-reply 3 (citing Prelim.
Resp. 29–30). Patent Owner asserts that Petitioner’s challenges are
substantially similar to those in district court. Id. at 3–4 (citing Prelim.
Resp. 28–30; Reply 1–2). Patent Owner also argues that, in Snap, the
district court proceeding was stayed, and that “Petitioner’s stipulation is
meaningless, as the parties will likely have completed a jury trial by the
time this Board decides whether to institute a trial” and does not extend to
any ground raised or that could have reasonably been raised in this
proceeding. Id. at 4–5 (citing Prelim. Resp. 17; Reply 2–3).
The record shows that the same statutory grounds, substantially the
same arguments, and substantially the same prior art evidence are at issue
with respect to claims 1–7 and 9–11. “[I]f the petition includes the same or
substantially the same claims, grounds, arguments, and evidence as
presented in the parallel proceeding, this fact has favored denial” because
“concerns of inefficiency and the possibility of conflicting decisions [are]
particularly strong.” Fintiv Order, Paper 11 at 12. We agree with Patent
Owner that Petitioner’s stipulation does not address effectively concerns
about duplicative efforts and potentially conflicting decisions because the
stipulation may have no effect until the parties complete nearly all work on
these issues in the parallel proceeding, including a potential jury trial. Sur-
reply 4–5.
On this record, we determine that this factor slightly weighs in favor
of denying institution.
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5. Whether Petitioner and the Defendant in the Parallel Proceeding
are the Same Party
Patent Owner argues that “Petitioner and Patent Owner are the
defendant and plaintiff, respectively, in the parallel district court
proceeding.” Prelim. Resp. 31 (citing Pet. 2; Exs. 2001–2005, 2012, 2013).
Petitioner replies that “[t]he ‘same party’ factor should be given little
weight, as the petitioner-defendant is the party most motivated to challenge
the patent.” Reply 5. Patent Owner replies that this argument has been
rejected as inconsistent with Fintiv. Sur-reply 5.
The record shows that Petitioner and defendant in the parallel
proceeding are the same. Thus, this factor weighs in favor of denying
institution.
6. Other Circumstances that Impact the Board’s Exercise of
Discretion, Including the Merits
Regarding the merits, Petitioner challenges claims 1–7 and 9–11 as
unpatentable over Englman, Ronen, and Schulhof with citations to the
asserted references and declarant testimony. Pet. 29–60. Petitioner relies on
Thompson to teach the limitations of claim 8. Id. at 60–61. Petitioner also
asserts a rationale for combining these references. Id. at 62–64.
Based on the present record, Petitioner adequately makes an initial
showing that these references teach or suggest the limitations of the
challenged claims and that one of ordinary skill in the art would have
combined the asserted references. The record indicates sufficient argument
and evidence for instituting trial, but the merits do not appear
overwhelmingly strong on this preliminary record.
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Patent Owner argues that Petitioner’s reason for combining the
references is insufficient. Prelim. Resp. 36–44. The dispute would be best
decided on a full record, not the preliminary record before us.
For at least the foregoing reasons, based on the incomplete record
before us, an initial review of the merits of Petitioner’s two grounds suggests
that the merits are neither weak nor strong. Thus, we determine that this
factor is neutral.
7. Holistic Analysis of Fintiv Order Factors
We undertake a holistic analysis of the Fintiv Order factors,
considering “whether efficiency and integrity of the system are best served
by denying or instituting review.” Fintiv Order, Paper 11 at 6. As discussed
above, factors 1 and 6 are neutral, but factors 2–5 weigh toward denying
institution.
The evidence in the record indicates that duplication of efforts and
potential for inconsistent results exist, because both the district court and the
Board would consider substantially identical issues and the district court will
reach trial many months before we would reach a final decision. We
determine that the facts underlying factors 2–5 collectively outweigh the
facts underlying factors 1 and 6. Accordingly, we determine that the
circumstances presented weigh in favor of denying institution under
35 U.S.C. § 314(a).

III. CONCLUSION
Based on our application of the precedential Fintiv Order factors to
the record before us, we exercise our discretion under 35 U.S.C. § 314(a)
and deny institution of inter partes review.

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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted.

FOR PETITIONER:
Rajiv P. Patel
Brian Hoffman
Jennifer R. Bush
Kevin X. McGann
FENWICK & WEST LLP
RPatel-ptab@fenwick.com

FOR PATENT OWNER:
John C. Alemanni
Andrew Rinehart
Joshua H. Lee
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
arinehart@ kilpatricktownsend.com
jlee@ kilpatricktownsend.com
Scott A. McKeown
ROPES & GRAY
Scott.McKeown@ropesgray.com