Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2020-00893
• Patent #: 10,279,262
• Filed: May 5, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Communication System, Method for Controlling Communication System, and Program
• Brief Description: The ’262 patent discloses a system for providing advice to players in an online city-building game. The system analyzes a player's virtual city using various parameters, generates scores, and then provides advisory information suggesting a next action for the player to take, such as installing a new facility to improve a low score.

3. Grounds for Unpatentability

Ground 1: Obviousness over DeSanti and ElectroCity - Claims 1-24 are obvious over DeSanti in view of ElectroCity.

• Prior Art Relied Upon: DeSanti (Patent 8,764,534) and ElectroCity (a series of exhibits describing an online city-building game publicly available since 2009).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that DeSanti discloses the core architecture of the challenged claims, including an online realm-building game with a server that communicates with user terminals. DeSanti’s server includes a "realm valuation module" that scores a user’s realm based on its assets and a "realm improvement module" that determines and offers an "advanced asset" (a facility) that the user has not yet installed to improve the realm. Petitioner contended that ElectroCity, another online city-building game, supplies the remaining limitations. Specifically, ElectroCity discloses generating and displaying ranking screens that compare scores of a plurality of users, including options to view different subsets of users (e.g., all players, school-specific players). ElectroCity also discloses providing advice related to building new facilities, such as showing the pros and cons and "real-world information" before a user constructs a national park.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to combine these references because both relate to online city-building games with the objective of achieving a high score. A POSITA developing the system in DeSanti would have looked to features in a similar, well-known game like ElectroCity to add conventional features like public high-score boards and more detailed advisory information to improve user engagement and gameplay. This combination was argued to be a simple substitution of known elements to obtain predictable results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in integrating ElectroCity's ranking and advisory features into DeSanti’s server-based game framework, as these were common features in online games at the time.

Ground 2: Obviousness over DeSanti and Clash - Claims 1, 7, 13, and 19 are obvious over DeSanti in view of Clash.

• Prior Art Relied Upon: DeSanti (Patent 8,764,534) and Clash (a gameplay video of the "Clash of Clans" game, publicly available on YouTube since June 2012).

• Core Argument for this Ground:

  • Prior Art Mapping: Similar to Ground 1, Petitioner relied on DeSanti for the primary system architecture. Petitioner argued that Clash discloses the key limitation added during prosecution: making a determination of a facility that has not been arranged prior to selection of the facility by the user. Clash's "Shop" interface displays available buildings and indicates how many have been built (e.g., "0/2" cannons), which constitutes a determination of an uninstalled facility that is presented to the user before they select it. Petitioner also argued that Clash discloses that this determination is based on parameters of the user's virtual space, as the availability of new buildings is unlocked when a user upgrades their "Town Hall" to a new level. Furthermore, Clash provides "advisory information" by using a green arrow during its tutorial to direct the user to select and place specific buildings.
  • Motivation to Combine: A POSITA would combine DeSanti and Clash to improve gameplay. Clash was a highly successful game, and a developer would naturally look to its mechanics, such as its building unlock system (tied to Town Hall level) and its intuitive tutorial system (the green arrow), as sources for game development ideas. Incorporating Clash's method of determining and suggesting available buildings into DeSanti’s system would be an obvious way to enhance user progression and guidance.
  • Expectation of Success: Implementing Clash's user interface elements and progression logic into the server-client architecture of DeSanti would have been straightforward for a POSITA, involving well-understood programming techniques.

• Additional Grounds: Petitioner asserted that claims 2-6, 8-12, 14-18, and 20-24 are obvious over DeSanti in view of both Clash and ElectroCity, arguing that the dependent claim elements are disclosed by DeSanti and/or ElectroCity as detailed in the analysis for Ground 1.

4. Key Claim Construction Positions

• "facility" or "facilities": Petitioner proposed this term be construed as a "type of structure[s] that can be built, installed or established" in the game space. This construction is based on the patent’s consistent description of facilities as structures like shops, bowling alleys, roads, and art objects.
• "virtual space": Petitioner proposed this term be construed as a "space that a user forms or develops by installing facilities, such as a city." This is based on claim language requiring the user to "arrange the facility" to contribute to the "development of the first virtual space."
• "advisory information": Petitioner proposed this term be construed as "information containing advice." This is based on the patent’s stated purpose of advising the user on what action to take next and its description of the information as "suggesting the next action."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inapplicable because none of the asserted prior art (DeSanti, ElectroCity, Clash) was previously evaluated by the examiner during prosecution.
• Petitioner also argued that the Board should not deny institution under §314(a) based on parallel district court litigation. Petitioner contended that such a denial would contravene Congressional intent in creating the IPR system, which provides a lower preponderance of the evidence standard than the clear and convincing standard used in district court.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of Patent 10,279,262 as unpatentable.