Supercell Oy v. GREE Inc

1. Case Identification

• Patent #: 9,561,439
• Filed: September 15, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-7

2. Patent Overview

• Title: Game Control Method, Game Control Device, and Recording Medium
• Brief Description: The ’439 patent describes a game control method for cooperative, multiplayer social games. The invention aims to increase motivation for players at all skill levels by implementing a "guild event" where users in a group (a "guild") cooperate to collect a set of game pieces, which are provided based on user-specific "parameter values" (e.g., skill level), to obtain a collective reward.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are obvious over Englman, Ronen, and Schulhof.

• Prior Art Relied Upon: Englman (Application # 2011/0300926), Ronen (Application # 2013/0190094), and Schulhof (Patent 8,376,838).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the combination of these references teaches every element of the challenged claims.
    • Englman, the primary reference, was argued to disclose a team-based "scavenger hunt" wagering game where a group of players cooperates to collect virtual items to earn a group prize (e.g., a trophy). Petitioner contended that Englman teaches the core concepts of the ’439 patent, including grouping users, storing a correspondence between users and groups, monitoring group progress, storing parameter values (player achievements or levels), and awarding a final game item upon completion.
    • Ronen was introduced to supplement Englman's teachings. Petitioner argued Ronen teaches transmitting information to initiate a group event via invitations, a feature not explicitly detailed in Englman. Further, Ronen's example of a virtual team building a car—where one user obtains the body and another obtains the tires—was used to show the claimed concept of providing different game pieces to different users within the group to complete a set.
    • Schulhof was used to explicitly teach providing game pieces based on a user's skill-based parameter value. Petitioner pointed to Schulhof's disclosure of a "skill-based secondary game" where the magnitude of a player's award directly corresponds to the level of skill they exhibit in achieving game objectives. This was mapped to the ’439 patent's limitation of providing game pieces based on a user's parameter value.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would have been motivated to combine the references to enhance player engagement in a predictable manner. The gaming industry commonly borrows and combines known "game design patterns." A POSITA would have looked to Ronen to add a more robust event initiation and item distribution system to Englman's basic scavenger hunt. Similarly, a POSITA would incorporate Schulhof's skill-based reward mechanics into the Englman framework to create a more engaging game for players of varying skill levels. Petitioner also noted that Englman and Schulhof are assigned to the same entity (WMS Gaming, Inc.), which would have further motivated a POSITA to combine their teachings.
  • Expectation of Success: Petitioner asserted that combining these known features from the same technical field would have yielded predictable results. A POSITA would have had a high expectation of success in integrating these elements to improve a team-based gaming system without undue experimentation.

4. Key Claim Construction Positions

• "cooperatively participate in the game" (claims 1, 6, 7): Petitioner proposed this term be construed to mean "working towards a common goal in the game." This construction was argued to be consistent with the ’439 patent's description of a guild event where the common goal is collecting game pieces to obtain a reward.
• "parameter value" (claims 1, 6, 7): Petitioner proposed this term be construed as "a value representing a characteristic of the user, such as the user's skill or level in the game." This construction was central to Petitioner's argument for mapping the skill-based award systems of the prior art (especially Schulhof) to the claims.
• "ranking point" (claim 5): Petitioner proposed this term be construed as "a measurement of success." This construction was used to argue that the final scores and awards described in the prior art, which measure a group's success in completing a game objective, meet this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §314(a) (based on Fintiv factors) or §325(d).
• §325(d): Petitioner asserted that denial under §325(d) is inappropriate because none of the relied-upon prior art (Englman, Ronen, Schulhof) was previously presented to or considered by the USPTO examiner during the prosecution of the ’439 patent.
• §314(a) (Fintiv): Petitioner contended that the Fintiv factors favor institution. It argued that the parallel district court proceeding was in its early stages, a stay would likely be sought and granted if the IPR were instituted, and the trial date was likely to be rescheduled. Furthermore, Petitioner argued that the invalidity grounds raised in the IPR were not raised in the parallel litigation, meaning significant issues would be left unaddressed if the petition were denied.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of Patent 9,561,439 as unpatentable under 35 U.S.C. §103.