Supercell Oy v. GREE Inc

1. Case Identification

• Patent #: 9,597,594
• Filed: November 6, 2017
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, INC.
• Challenged Claims: 1-20

2. Patent Overview

• Title: Computer Control Method, Control Program and Computer
• Brief Description: The ’594 patent relates to a system and method for creating and applying a "template" of video game piece arrangements within a game space. The invention purports to solve the problem of cumbersome manual rearrangement in games, such as city-building games, by allowing a player to save a layout and automatically apply it.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are invalid under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

• Prior Art Relied Upon: The challenge is based on the claims being directed to an abstract idea under §101, rather than anticipation or obviousness over specific prior art references. The petition referenced the general, well-known nature of games like "Sim City" and "Clash of Clans" and the historical practice of correspondence chess as real-world analogs to the claimed abstract process.

• Core Argument: Petitioner argued that all challenged claims fail the two-step framework for patent eligibility established in Alice Corp. v. CLS Bank Int'l. The claims are directed to the abstract idea of creating and applying a template, and they lack any inventive concept that could transform this abstract idea into a patent-eligible application.

  • Alice Step 1: Directed to an Abstract Idea: Petitioner contended the claims are directed to the abstract idea of creating and applying a template, which it characterized as a fundamental mental process and a longstanding method of organizing human activity. The argument was structured around three key points:

    • Mental Process: The core concept of devising a layout, recording it, and then recreating it elsewhere is a mental process that can be performed by a human using pen and paper. Petitioner used the example of correspondence chess, where a player records a move on a postcard (creating a template) and mails it to an opponent who then applies it to their board.
    • Manually Achievable Purpose: The patent's stated purpose is to automate the cumbersome manual process of rearranging game pieces. Petitioner argued that merely automating a known, manually-achievable task does not confer patent eligibility, as it does not represent an improvement in computer functionality itself but simply uses a computer as a tool for an abstract purpose.
    • No Improvement in Computer Functionality: The claims are not directed to a specific improvement in how computers operate. Instead, they use generic computers to carry out the abstract idea. The specification was cited as emphasizing that any conventional computer, portable device, or server can execute the procedure.

  • Alice Step 2: Lacks an Inventive Concept: Petitioner argued the claims add no inventive concept beyond the abstract idea itself. The claims recite only generic, conventional, and functional computer components to implement the abstract idea of using a template.

    • Generic Components: The claims recite elements like a "memory device," "hardware processors," a "server," and a "computer" without any structural or operational limitations beyond their normal, conventional functions. The specification was shown to describe these components in the most generic terms.
    • Functional Language: The claims were argued to be described at a high level of generality, reciting the result of "creating a template" or "applying the template" without providing any specific technical details on how the computer performs these steps. This mere instruction to "apply it on a computer" was argued to be insufficient to supply an inventive concept.
    • Dependent Claims: Petitioner asserted that the dependent claims fail to add an inventive concept. They were characterized as merely expanding the preemptive footprint of the abstract idea by, for example, applying it to a multi-player environment (claim 2), using a pre-existing template (claim 4), or adding post-solution rules for when a template does not fit an area (claims 5-7). These additions were described as insignificant extra-solution activity or further abstract rules.

4. Key Claim Construction Positions

• "Template": Petitioner argued this term is central to the §101 analysis. Based on the specification, it should be construed as simply "a record of the positions of one or more game pieces in a game that can be applied in other game spaces." This construction supports the argument that the claimed invention is nothing more than the abstract, mental-step-based process of recording a layout and applying it, a concept that is not tied to any specific technology.

5. Relief Requested

• Petitioner requests institution of Post-Grant Review (PGR) and cancellation of claims 1-20 of the ’594 patent as unpatentable under §101.