Supercell Oy v. GREE Inc

1. Case Identification

• Case #: IPR2020-01633
• Patent #: 9,079,107
• Filed: September 15, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Game Control Method, Game Control Device, and Recording Medium
• Brief Description: The ’107 patent discloses a multiplayer social game where users in a group or guild cooperate to collect a plurality of game pieces to obtain a single game item or reward. The system is designed to maintain motivation for lower-level players by providing game pieces to users based on their skill level information, encouraging cooperation between players of different levels.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 and 9-11 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 argued that Englman taught the core elements of a group-based game where players collaborate to obtain collectible items (game pieces) to achieve a final reward (a game item like a trophy). Englman disclosed storing player data like skill level, grouping users for a "scavenger hunt," providing items based on in-game achievements (e.g., specific poker hands), storing allocation information, determining when all pieces are collected, and allocating a final reward. To the extent Englman did not explicitly teach providing pieces based on skill level, Petitioner asserted Schulhof supplied this element by describing a skill-based secondary game where awards are greater for players who exhibit higher skill. Petitioner further argued that Ronen taught creating and modifying teams based on user input and storing game data on a central game server, which would be an obvious architectural simplification to Englman’s system.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because they all relate to team-based social gaming. It was common practice in the gaming industry to borrow and combine features from different games to improve gameplay and expand user engagement. A POSITA looking to enhance Englman’s scavenger hunt game would have looked to Schulhof to implement a more sophisticated, skill-based reward system and to Ronen to add more robust team management features and simplify the server architecture, all of which were known design patterns.
  • Expectation of Success: Combining these known gaming elements—a group collection quest from Englman, skill-based rewards from Schulhof, and user-managed teams from Ronen—would have been a predictable integration of established concepts in the field of game design.

Ground 2: Claim 8 is obvious over Englman, Ronen, and Schulhof in view of Thompson

• Prior Art Relied Upon: Englman (Application # 2011/0300926), Ronen (Application # 2013/0190094), Schulhof (Patent 8,376,838), and Thompson (Patent 7,824,253).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Englman, Ronen, and Schulhof from Ground 1 and added Thompson to teach the specific limitations of claim 8. Claim 8 recites controlling a battle between two users and, depending on the outcome, transferring a game piece from one user to the other. Petitioner argued that Thompson directly taught this by disclosing team-based and head-to-head competitions where, upon one player defeating another, a virtual item (a game piece) is immediately transferred from the losing avatar to the winning avatar.
  • Motivation to Combine: A POSITA motivated to enhance the cooperative game of Englman/Ronen/Schulhof would have been motivated to add a competitive player-versus-player element, as taught by Thompson. Adding a battle mechanic where game pieces can be won or lost is a well-known method for increasing game engagement and providing additional reward options. Since Englman itself contemplated players exchanging items, a POSITA would look to a reference like Thompson for a known method of effectuating such a transfer based on the outcome of a direct competition, which is a conventional feature in social and wagering games.
  • Expectation of Success: Integrating a battle-and-reward system from Thompson into the broader collaborative game framework established by the other references would have been straightforward, as it involved combining predictable and commonly used game mechanics.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inapplicable because none of the asserted prior art references (Englman, Ronen, Schulhof, or Thompson) were considered during the original prosecution of the ’107 patent.
• Petitioner also contended that discretionary denial under §314(a) based on the Fintiv factors was inappropriate. It argued that the parallel district court litigation was in its initial stages, the scheduled trial date was likely to be moved, and the grounds and prior art asserted in the IPR petition were not identical to those in the litigation, thus minimizing concerns of duplicative efforts or conflicting decisions.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-11 of the ’107 patent as unpatentable.