Supercell Oy v. GREE Inc

1. Case Identification

• Patent #: 9,636,583
• Filed: February 1, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-15

2. Patent Overview

• Title: Storage Medium Storing Game Program, Game Processing Method, And Information Processing Apparatus
• Brief Description: The ’583 patent relates to a system and method for controlling a video game in which two characters battle. The invention involves storing databases of "panels" for each character, selecting panels from the databases, and disposing them in "divisions" on a game display screen to create a visual battle sequence.

3. Grounds for Unpatentability

Ground 1: Claims 1-15 are Invalid Under §101 as Directed to Patent-Ineligible Subject Matter

• Core Argument: Petitioner argued that all challenged claims are unpatentable under 35 U.S.C. §101 by applying the two-step framework from Alice Corp. v. CLS Bank Int'l. The petition asserted that the claims fail both steps of the analysis.
  • Alice Step 1 (Abstract Idea): Petitioner contended that claims 1-15 are directed to the abstract idea of displaying a video game based on stored panel information. The argument emphasized that the claims are written in purely functional terms, reciting the desired results of storing data, selecting panels, and displaying a game screen without specifying any concrete technical improvement to computer or video game technology. Petitioner asserted the claims merely use generic computer components to automate a well-known concept and are analogous to claims found ineligible in cases like Two-Way Media and Affinity Labs. The specification was cited as describing the system components as functional black boxes without technical explanation.
  • Alice Step 2 (Inventive Concept): Petitioner argued that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The claim elements were described as generic, conventional computer components (e.g., "data storage unit," "control unit," "server apparatus") performing their ordinary, well-understood functions. Petitioner further contended that the dependent claims add nothing inventive, reciting only conventional game concepts (e.g., displaying images or text, using different colors) or insignificant, purely functional post-solution activities (e.g., an "emphasized display function"), which cannot supply the necessary inventive concept.

Ground 2: Claims 1-15 are Invalid Under §112(a) for Lack of Written Description

• Core Argument: Petitioner argued that the specification of the ’583 patent fails to provide an adequate written description to demonstrate that the inventor was in possession of the full scope of the claimed invention, as required by 35 U.S.C. §112(a). The argument centered on the specification’s complete silence regarding key limitations present in the independent claims.
  • "Points set for the first user": Petitioner asserted that this claimed limitation lacks any antecedent basis in the specification. The petition explained that while the specification mentions "hit points" and "character points," these are explicitly associated with a game character, not a user. Furthermore, the specification allegedly fails to describe how such points are stored, how they are used to select a panel "according to the points set," or how they are "decreased by disposing a panel," as required by the claims.
  • "Target division": Petitioner contended that the specification provides no description for a "target division" where a panel is disposed, or for the condition that a panel is "allowed to be disposed" there. The petition noted that the term "division" itself is absent from the specification's detailed description (appearing only in the claims and abstract), which instead uses the term "frames." However, the specification allegedly fails to correlate "frames" with the claimed "divisions" or provide any description of a "target" frame or the rules governing when a panel is "allowed" to be placed.

Ground 3: Claims 1-15 are Invalid Under §112(b) as Indefinite

• Core Argument: Petitioner argued that all challenged claims are invalid as indefinite under 35 U.S.C. §112(b) because they fail to inform a person of ordinary skill in the art (POSA) about the scope of the invention with reasonable certainty. This argument was presented as a direct consequence of the written description failures.
  • Lack of Clarity: Petitioner asserted that because the specification provides no disclosure for essential claim terms like "points set for the user" and "target division," a POSA would not understand the metes and bounds of the invention. The lack of any description for how points are set, used, or decreased, and the absence of any definition for a "target division" or the conditions under which disposal is "allowed," renders the claim scope ambiguous, vague, and unclear. As a result, a POSA could not determine how to avoid infringement, making the claims fatally indefinite.

4. Relief Requested

• Petitioner requests institution of Post Grant Review and cancellation of claims 1-15 of Patent 9,636,583 as unpatentable under 35 U.S.C. §§ 101, 112(a), and 112(b).