Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2020-00513
• Patent #: 9,774,655
• Filed: February 3, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-8

2. Patent Overview

• Title: Server and Method for Transferring an Object Between Users in a Service Provided by the Server
• Brief Description: The ’655 patent discloses a system for transferring virtual objects between users in a social networking service. The purported invention involves a server that grants a bonus object to a transferee user if that user's history of received items satisfies a predetermined condition, thereby incentivizing reciprocal gifting.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mahajan, FarmVille, and Williams - Claims 1-2 and 4-8 are obvious over Mahajan in view of FarmVille and Williams.

• Prior Art Relied Upon: Mahajan (Patent 8,727,887), FarmVille (“FarmVille for Dummies,” 2011), and Williams (Application # 2017/0300987).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mahajan disclosed the foundational social gaming network, including a server, multiple user devices, possessed virtual objects ("in-game assets"), and an "incentive reward" system for completing quests via item transfers. To supply missing claim elements, Petitioner asserted FarmVille taught sending display data for a user interface that allows a first user to select an object from their inventory and select a second user (a "neighbor") to receive it as a gift. FarmVille also taught granting bonus items ("ribbons") to a transferee based on conditions related to the gifts they have received. Finally, Petitioner argued Williams taught the explicit storage of detailed "transfer information" in database records, including creator, owner, and acquisition date for each virtual item, which satisfies the limitation of tracking user transfer history to determine if a condition for a bonus is met.
  • Motivation to Combine: A POSITA building a social game based on Mahajan's framework would be motivated to incorporate the user-friendly gifting interface from a popular game like FarmVille to improve user interaction. To implement the conditional bonus rewards taught by Mahajan and FarmVille, a POSITA would find it a simple and obvious design choice to use the conventional database record-keeping for transaction histories as taught by Williams, as this is a standard method for managing virtual economies.
  • Expectation of Success: The combination involved applying known user interface techniques (FarmVille) and standard data management practices (Williams) to a known type of gaming system (Mahajan), leading to the predictable result of an enhanced social gifting feature.

Ground 2: Obviousness over Mahajan, FarmVille, Williams, and Beares - Claim 3 is obvious over Mahajan in view of FarmVille, Williams, and Beares.

• Prior Art Relied Upon: Mahajan (Patent 8,727,887), FarmVille (“FarmVille for Dummies,” 2011), Williams (Application # 2017/0300987), and Beares (Application # 2008/0034061).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground incorporated the teachings of Mahajan, FarmVille, and Williams as established in Ground 1 to meet the general limitations of the claims. To specifically address the limitation of claim 3, which required the condition for granting the bonus object to be related to "the number of users who...have reciprocal transfer relationships," Petitioner introduced Beares. Beares disclosed a social network for tracking the exchange of "favors" and explicitly taught storing data on "Reciprocal Connections," defined as connections established after a favor exchange, thereby teaching the tracking of reciprocal relationships as claimed.
  • Motivation to Combine: A POSITA seeking to enhance the social dynamics of the system from Ground 1 would be motivated to add more sophisticated reward conditions. To implement a condition based on reciprocity, which is a common goal in social gaming design to foster community, the POSITA would look to prior art systems like Beares that were specifically designed to track and manage such reciprocal user interactions. Incorporating Beares' method for tracking "Reciprocal Connections" was presented as an obvious way to implement the specific condition recited in claim 3.

4. Key Claim Construction Positions

• "transfer information...": Petitioner proposed this term be construed as "information or database records representing either an object transfer between two users or a user who has transferred an object to another user." This construction was argued to be critical because it aligned with the explicit database records taught in Williams, which Petitioner used to show the obviousness of storing and updating a user's transfer history.
• "second object": Petitioner proposed this term be construed as "a predetermined incentive, item or benefit used in the service that may be granted to the transferee upon satisfying a predetermined condition." This construction framed the "second object" not as a random item but as a specific, pre-defined bonus, aligning it with the "incentive reward" in Mahajan and the "ribbon" bonuses in FarmVille.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Under §325(d), Petitioner contended that none of the asserted prior art or arguments were previously presented to or considered by the USPTO during prosecution. Under §314(a) and the Fintiv factors, Petitioner argued that the parallel district court litigation was in its earliest stages, with no significant proceedings or claim construction having occurred, and that the petition challenged all claims, whereas the litigation involved only a subset.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-8 of the ’655 patent as unpatentable.