Supercell Oy v. GREE Inc

1. Case Identification

• Case #: PGR2018-00037
• Patent #: 9,662,573
• Filed: February 27, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-11

2. Patent Overview

• Title: Method for Controlling Server Device, Server Device, Computer-Readable Recording Medium and Game System
• Brief Description: The ’573 patent describes a system and method for use in social gaming intended to enhance a player's motivation to invite other players. The system involves a first player sending an invitation to a second player, a server detecting the second player's subsequent actions (e.g., accessing a landing screen or registering), and the server then giving one or more incentives to the first player.

3. Grounds for Unpatentability

Ground 1: Invalidity under 35 U.S.C. §101 for Patent-Ineligible Subject Matter

• Core Argument for this Ground: Petitioner argued that claims 1-11 are directed to patent-ineligible subject matter under the two-step framework from Alice Corp. v. CLS Bank.
  • Alice Step 1 (Abstract Idea): Petitioner contended the claims are directed to the abstract idea of enabling a player to invite another to a social game, detecting the invitee’s access to the game, and giving the inviter incentive-based rewards. This was characterized as a fundamental economic practice of incentivized referrals, simply implemented in the context of a social game. Petitioner further argued that the patent’s purported inventive concept—enhancing player motivation—is itself an abstract idea, and the claims fail to recite how this motivation is actually enhanced, as they do not require informing the player of potential incentives before the invitation is sent.
  • Alice Step 2 (Inventive Concept): Petitioner asserted that the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The claims merely recite generalized steps performed by generic computer components (server device, terminal devices) that perform routine and conventional functions. The specification was cited as admitting that the underlying technology was well-known. Petitioner argued that the ordered combination of steps (enabling invitation, detecting access, giving incentives) adds nothing inventive, as these are conventional activities in the field. The dependent claims were argued to add only minor, conventional limitations, such as using identification information or providing a third incentive, which do not supply an inventive concept.

Ground 2: Invalidity under 35 U.S.C. §112(a) for Lack of Written Description

• Core Argument for this Ground: Petitioner argued that claims 1-11 are invalid because the specification fails to provide an adequate written description for several key limitations, demonstrating that the inventor was not in possession of the full scope of the claimed invention at the time of filing.
  • "Enabling" an Invitation: The claims recite a server device "enabling a first terminal device to send invitation information." However, Petitioner argued the specification is entirely silent on how the server performs this "enabling" step. Instead, the specification only describes the player performing the action of sending an invitation, without any corresponding description of a server-side enabling mechanism.
  • "Detecting" Access: The claims require the server device to "detect" when the second terminal device accesses the landing screen. Petitioner contended the specification contradicts this, suggesting instead that the second terminal device "determines whether the URL is clicked," and the server merely "acquires a tracking code" from an undisclosed source in response to access. The mechanism by which the server itself performs the detection is not described.
  • "Giving" Incentives: The claims require the server to "give" incentives. Petitioner asserted that the specification fails to describe how these incentives are given, beyond the conclusory statement that they are provided "by a social game." This lack of detail allows the claim to cover any manner of giving any type of incentive, the structure of which is not described in the patent.

Ground 3: Invalidity under 35 U.S.C. §112(b) for Indefiniteness

• Core Argument for this Ground: Petitioner argued that the same claim limitations lacking adequate written description also render claims 1-11 invalid as indefinite.
  • Key Aspects: Because the specification fails to provide any meaningful detail for the functional terms "enabling," "detecting," and "giving incentives," a person of ordinary skill in the art would not be able to ascertain the metes and bounds of the claimed invention. For example, it is unclear what technical steps constitute "enabling" an invitation (e.g., providing an interface vs. providing a tracking code for external use) or how the server "detects" access. This ambiguity and lack of clarity, stemming from the disconnect between the claim language and the specification, allegedly renders the claims indefinite.

4. Key Claim Construction Positions

• "Incentive": Petitioner argued that the Broadest Reasonable Interpretation (BRI) of "incentive" is "a reward provided to a player in exchange for meeting a condition." However, Petitioner contended a crucial aspect of the term is that the ’573 patent uses it in a manner inconsistent with its plain meaning ("a thing that motivates or encourages"). Because the claims do not require informing the player of the reward beforehand, the "incentive" functions merely as a post-hoc reward and fails to motivate the player to send the invitation, undermining the patent's stated purpose.
• "Enable Invitation": Petitioner argued that while this term should be given its plain meaning, the specification provides no description of the server performing this function. The specification only discloses the player sending an invitation, making it unclear what server actions are covered by this limitation.
• "Detect Access": Petitioner argued this term should be given its plain meaning ("to discover the presence of"), but noted that the specification fails to describe the server performing this action. Instead, the specification describes the terminal device "determining" a URL click, creating ambiguity as to the scope of the claimed server-side "detecting" step.

5. Relief Requested

• Petitioner requests institution of Post Grant Review and cancellation of claims 1-11 of the ’573 patent as unpatentable.