Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2020-01619
• Patent #: 10,413,832
• Filed: September 14, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Game Control Method, Game Server, and Program
• Brief Description: The ’832 patent relates to methods for acquiring virtual items in video games to heighten user interest. The technology involves a game server sending information to a user for displaying a "sheet" of "cells," where each cell is associated with an acquirable item, and providing item count information (e.g., total items, obtained items) before the user selects a cell to receive the associated item.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are obvious over FVD in view of Smoak.

• Prior Art Relied Upon: FVD (a 2011 book titled "FarmVille for Dummies") and Smoak (Patent 8,843,853).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that FVD, which describes the game FarmVille, discloses nearly all limitations of the independent claims. FVD's server-based game sends information to a user terminal to display interfaces with a "sheet" of "cells" corresponding to items, such as in the "Shop for Bushels" or "Collections" menus. These interfaces display "obtainable item information," including the number of obtained items ("Your inventory") and the total number needed for a collection. Petitioner asserted FVD shows receiving a selection request when a user clicks a "Take One" or "Buy" button and then provides the corresponding item to the user.
  • Motivation to Combine: Petitioner contended that FVD may not explicitly disclose differentiating the display of a selected cell in response to the selection. Smoak was introduced for its teaching of a user interface where selecting an icon causes it to be "graphically distinct" (e.g., highlighted). A POSITA would combine Smoak's well-known UI design principle with FVD's game interfaces to improve usability by providing immediate visual feedback that confirms a user's selection.
  • Expectation of Success: The combination involved applying a standard UI feedback mechanism to an existing game interface, which Petitioner argued was a predictable modification that would yield the expected result of improved user experience.

Ground 2: Claims 1-15 are obvious over Yamaoka in view of Morrisroe.

• Prior Art Relied Upon: Yamaoka (Patent 7,357,718) and Morrisroe (Application # 2012/0129590).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Yamaoka discloses a network game server providing a "card-based mini-game" that displays a grid of selectable cards ("cells"). Upon receiving a user's selection, the server sends information to differentiate the display of the selected card from others (e.g., by shading it or revealing its value). However, in Yamaoka, selecting a card awards the user with points, which are later exchanged for items, rather than providing an item directly.
  • Motivation to Combine: Morrisroe was introduced to address the awarding of points instead of items. Morrisroe teaches a "scratch game" where uncovering "covered boxes" can directly "provide the winner with virtual items." Petitioner argued a POSITA would be motivated to modify Yamaoka's mini-game to award virtual items (like card images) directly upon selection. This combination would provide a more direct method for acquiring items, increasing the "variety of methods of acquiring valuable data" sought by Yamaoka.
  • Expectation of Success: Modifying a game to award a virtual item directly instead of points was described as a common and straightforward design choice, particularly since Yamaoka itself contemplates providing "valuable data" as a core game objective.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d) because the asserted prior art combinations were new and not the basis of any rejection during prosecution.
• Regarding discretionary denial under Fintiv, Petitioner asserted that institution was favored. The parallel district court trial date was likely to be delayed due to the COVID-19 pandemic and the involvement of international witnesses in Japan. Furthermore, Petitioner argued the grounds and references in the IPR differ from those in the litigation, and the district court proceeding was in its early stages with minimal investment in the merits.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-15 of the ’832 patent as unpatentable.