Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2020-00993
• Patent #: 10,286,318
• Filed: May 27, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-13

2. Patent Overview

• Title: Communication System, Method for Controlling Communication System, and Program
• Brief Description: The ’318 patent describes a system for online games, particularly city-building games, that provides advice to a player. The system identifies an object or facility the user has not yet installed and, based on numerical parameters representing the status of the user's virtual space (e.g., scores for "fun" or "wealth"), transmits information encouraging the user to install a specific object to improve their score.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 5-9, and 13 by DeSanti

• Prior Art Relied Upon: DeSanti (Patent 8,764,534).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that DeSanti, which discloses an online "realm-building game," teaches every element of the challenged claims. DeSanti's system includes a server with a "realm valuation module" that assigns numerical point values to a player's realm and the individual assets (e.g., buildings) within it. Petitioner asserted this maps directly to the claimed "plurality of numerical parameters." DeSanti further discloses a "realm improvement module" that offers the player an option to add an "advanced asset" (an uninstalled object) to improve the realm, with the cost of the improvement based on the realm's current value. Petitioner contended this module functions as the claimed controller that identifies an uninstalled object based on at least two numerical parameters (e.g., the values of two existing assets) and transmits this information to the user.
  • Key Aspects: The argument focused on how DeSanti's system for offering realm improvements based on a calculated realm value inherently performs the steps of identifying an uninstalled object based on existing numerical parameters.

Ground 2: Obviousness of Claims 2-4 and 10-12 over DeSanti in view of ElectroCity

• Prior Art Relied Upon: DeSanti (Patent 8,764,534), ElectroCity (a collection of exhibits describing a 2009 online city-building game).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that DeSanti provides the base system as described in Ground 1. For the dependent claims, ElectroCity supplies the missing features. Specifically, ElectroCity discloses a ranking screen where players are listed by score, with a "Take a Look" button next to each player. Petitioner asserted these buttons are the "one or more input interfaces corresponding to one or more second users" recited in the claims. Clicking this button (the user input) causes the system to display the second user's city (the second virtual space), thereby teaching the limitations of displaying other users' spaces in response to user input.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine DeSanti and ElectroCity because both are city-building games focused on achieving a high score. A POSITA would find it obvious to add ElectroCity’s well-known social and competitive features, such as leaderboards and the ability to view other players' cities, to DeSanti's core game system. This combination would predictably increase player engagement and retention, a primary goal in game design.
  • Expectation of Success: Incorporating a known user interface feature like a player ranking screen from one game into another was a routine task for game developers with a high expectation of success.

Ground 3: Obviousness of Claims 1, 5-9, and 13 over DeSanti in view of HayDay

• Prior Art Relied Upon: DeSanti (Patent 8,764,534), HayDay (a 2012 review of the mobile game "Hay Day").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that to the extent DeSanti does not explicitly teach identifying an uninstalled object based on at least two numerical parameters, HayDay remedies this deficiency. HayDay disclosed a game that tracks a player's "experience level" and "experience points," which Petitioner identified as a plurality of numerical parameters. HayDay's "Shop Interface" shows objects that are unavailable for installation until a player reaches a certain level (e.g., a dairy that "Unlocks at level 6"). Petitioner argued this shows the identification of an uninstalled object (the dairy) based on numerical parameters (the player's current level and experience points).
  • Motivation to Combine: A POSITA would have been motivated to combine the teachings of HayDay with DeSanti's system to implement a standard player progression mechanic. Using experience levels to gate content and guide player actions, as shown in HayDay, was a common and well-understood technique in realm-building games. A POSITA would substitute HayDay's specific use of experience points for DeSanti's more general "realm value" to create a predictable and engaging player experience.
  • Expectation of Success: A POSITA would have reasonably expected success in combining these elements, as both references relate to the same field of online building games and the combination involves applying a conventional game design pattern.
• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground IV) for claims 2-4 and 10-12 based on the three-way combination of DeSanti, HayDay, and ElectroCity, relying on similar design modification theories.

4. Key Claim Construction Positions

• "object" / "objects": Petitioner proposed this term be construed to mean a "type of structure[s] that can be built, installed or established" in the game space. This construction was argued to be consistent with the specification's description of building facilities and structures.
• "virtual space": Petitioner proposed this term be construed to mean a "space that a user forms or develops by installing facilities, such as a city." This was based on the patent’s focus on city-building simulation games where a user actively develops the game area.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d), noting that while the examiner cited DeSanti during prosecution, it was never used as the basis for a rejection. Furthermore, the secondary references, HayDay and ElectroCity, were not before the examiner, meaning the petition presented new art and arguments not previously considered.
• Petitioner also argued against discretionary denial under §314(a), asserting that denying institution in view of a parallel district court case would contravene Congressional intent. Petitioner stressed that IPRs were designed to have a lower standard of proof (preponderance of the evidence) than district court litigation, and denying access to the IPR forum would improperly deprive Petitioner of this intended statutory benefit.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-13 of Patent 10,286,318 as unpatentable.