Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2019-00754
• Patent #: 9,604,137
• Filed: March 1, 2019
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Server, Control Method Therefor, Computer-Readable Recording Medium, and Game System
• Brief Description: The ’137 patent describes a server-based, card-battle game system. Players on terminal devices are presented with "game contents" (e.g., character cards) in a first field (a hand), which they can select to attack an enemy in a second field (a battlefield), with the selection and use of cards being governed by a system of consumable and rechargeable "points."

3. Grounds for Unpatentability

Ground 1: Obviousness over Hawkins and Reizei - Claims 1, 4, 14, and 16 are obvious over Hawkins in view of Reizei.

• Prior Art Relied Upon: Hawkins (Patent 9,511,285) and Reizei (Application # 2003/0109299).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of Hawkins and Reizei taught all limitations of the independent claims. Hawkins disclosed a server-based online gaming system with a client-server architecture for a real-time strategy game, where a server acts as a game host connected to client devices, satisfying the claimed server and terminal device architecture. Reizei disclosed a portable card-based battle game with core mechanics nearly identical to those claimed, including using action points (an "upper limit of a point") to play cards with specific costs ("a point") from a player's hand (a "first field") to attack an enemy. Petitioner asserted that implementing Reizei's game mechanics on Hawkins's server-based platform rendered the independent claims obvious.
  • Motivation to Combine: A POSITA would combine these references to implement the well-understood card game mechanics of a portable game like Reizei's on a more modern, robust, and networked server-client platform like that taught by Hawkins. This would be a predictable and desirable improvement to make the game available to a wider online audience.
  • Expectation of Success: A POSITA would have had a high expectation of success, as implementing known game logic on a standard client-server network was a routine practice in game development at the time of the invention.

Ground 2: Obviousness over Hawkins, Reizei, and Mahar - Claims 2, 5, 8, 10, 13, 15, and 17 are obvious over Hawkins in view of Reizei in further view of Mahar.

• Prior Art Relied Upon: Hawkins (Patent 9,511,285), Reizei (Application # 2003/0109299), and Mahar (Patent 6,554,702).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1, adding Mahar to teach limitations in dependent claims, particularly claim 2's requirement of "updat[ing] the first field with a new game content alternative to the removed game content." Mahar disclosed a real-time card game where, as soon as a player uses a card, a new one is taken from their repertoire to refill their hand. Petitioner argued this directly taught the claimed card-drawing and hand-refilling mechanic. Mahar also disclosed redisplaying game content differently on the battlefield, which was mapped to claim 8.
  • Motivation to Combine: A POSITA, seeking to improve the gameplay flow of the combined Hawkins/Reizei game, would be motivated to incorporate Mahar's "constant drawing" feature. This common game mechanic prevents play from stalling and was a well-known method for maintaining game pace, making it an obvious modification.
  • Expectation of Success: Incorporating a card-drawing mechanic into a card-based game was a simple and predictable design choice with a clear expectation of success.

Ground 3: Obviousness over Hawkins, Reizei, Mahar, and Moody - Claims 7 and 9 are obvious over Hawkins in view of Reizei in further view of Mahar and Moody.

• Prior Art Relied Upon: Hawkins (Patent 9,511,285), Reizei (Application # 2003/0109299), Mahar (Patent 6,554,702), and Moody (Patent 6,729,621).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground added Moody to teach the limitations of claim 7, which required rearranging the remaining game contents in the first field "to move over or fill a region where the removed game content was arranged." Moody, which disclosed an electronic video poker game, explicitly taught and illustrated removing selected cards from a five-card hand and rearranging the remaining cards to fill the resulting empty space before drawing new ones.
  • Motivation to Combine: A POSITA would be motivated to incorporate Moody's hand-rearrangement feature into the base game combination for user interface improvement. Consolidating the cards in a player's hand is a common and logical step in digital card games to maintain a clean and organized display, making it an obvious design choice for better usability.
  • Expectation of Success: Implementing this graphical rearrangement of on-screen elements was a routine programming task with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 3 over Hawkins, Reizei, Mahar, and Kubo (Patent 6,544,119), arguing Kubo's "destiny draw" taught determining a new card based on a parameter value. Further grounds for claims 6, 11, and 12 added Braunlich (Patent 6,322,077) to the combination, arguing it taught determining specific moves based on the number of identical characters played via its "stackable feature."

4. Key Claim Construction Positions

• "game content" / "game contents": Petitioner proposed this term be construed to mean "an item capable of being held in the player's hand that can be selected." This construction was central to mapping prior art card games, where selectable cards are held in a player's hand, to the claimed limitations.
• "a point": Petitioner proposed this term be construed as "a cost of selecting game content for a battle event." This construction equated the claimed "point" system with well-known action point or mana cost systems in prior art games like Reizei, where playing a card has an associated cost.
• "an upper limit of a point": Petitioner proposed this term be construed as "a total cost available for selecting game content for a battle event." This linked the claimed "upper limit" to the total available action points or mana a player has each turn in prior art games, from which individual card costs are subtracted.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-17 of the ’137 patent as unpatentable under 35 U.S.C. §103.