Supercell Oy v. GREE Inc

1. Case Identification

• Case #: PGR2018-00039
• Patent #: 9,669,308
• Filed: March 5, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-8

2. Patent Overview

• Title: Non-Transitory Computer Readable Recording Medium, Game Server, and Control Method
• Brief Description: The ’308 patent relates to a video game system that determines a procedure for a battle based on user input. The system aims to make gameplay "less troublesome" by providing an option for an "auto mode" if certain conditions, such as the user having previously won against an opponent, are met.

3. Grounds for Unpatentability

Ground 1: Patent-Ineligible Subject Matter - Claims 1-8 are invalid under 35 U.S.C. §101

• Core Argument for this Ground: Petitioner argued that claims 1-8 are directed to patent-ineligible subject matter under the two-step framework from Alice Corp. Pty. Ltd. v. CLS Bank Int'l.
  • Alice Step 1 (Abstract Idea): Petitioner contended the claims are directed to the abstract idea of determining a procedure for a video game battle based on user input. The claims recite a sequence of abstract, result-based functional steps—such as determining an opponent, determining a battle procedure, and executing the battle—without specifying any non-abstract way of performing them. Petitioner asserted this is analogous to claims found abstract in cases like Two-Way Media, where claims recited functional results ("routing," "controlling") without detailing the "how." The claims cover any system that achieves these functional results, impeding innovation rather than promoting it.
  • Alice Step 2 (Inventive Concept): Petitioner argued the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The claims merely recite generic and conventional computer components (e.g., "game server," "communication terminal," "network," "processor") performing their routine functions. The ordered combination of steps does nothing more than apply the abstract idea using this generic technology. Petitioner contended the claims do not capture the specification’s purported improvement—making gameplay "less troublesome" via an "auto mode"—because the "second mode for executing the battle with fewer user operations" is recited as an alternative, conditional limitation that is not required by the claims. Thus, the claims fail to add anything "significantly more" than the abstract idea itself.

Ground 2: Lack of Written Description - Claims 1-8 are invalid under 35 U.S.C. §112(a)

• Core Argument for this Ground: Petitioner argued that the specification fails to provide adequate written description for several key limitations, demonstrating that the inventor was not in possession of the full scope of the claimed invention.
  • Execution on Game Server: All independent claims require the steps, including "executing the battle," to be performed on the game server. However, Petitioner asserted the specification repeatedly and exclusively describes the "communication terminal" as the component that executes the battle process, never the game server. The specification allegedly fails to disclose how the game server would perform this function.
  • Condition for Battle Mode: The claims determine the battle procedure based on whether "the user has battled with the determined opponent in the past." Petitioner contended the specification contradicts this, teaching that the determination is based on whether the user has won against the opponent in the past. The specification’s description of the "battle history" database and its use of "win-loss information" exclusively supports a win-based condition, not a battle-based one.
  • User Operation for First Mode: The claims require "automatically determining a procedure... to be a first mode... based on at least one user operation." Petitioner argued the specification discloses that this determination (selecting manual mode when a user has not previously won) occurs automatically with no user input. The specification allegedly describes the server proceeding directly to instruct the terminal to conduct the battle in manual mode without receiving any user operation for that determination.

Ground 3: Indefiniteness - Claims 1-8 are invalid under 35 U.S.C. §112(b)

• Core Argument for this Ground: Petitioner argued that the inconsistencies between the claim language and the specification, as outlined in the §112(a) ground, render the metes and bounds of the claims unclear and indefinite.
  • Prior Art Mapping: A person of ordinary skill in the art would be unable to determine the scope of the claims due to these contradictions. For instance, it is unclear how a game server could perform the "executing the battle" step when the only disclosed structure for this function is the terminal.
  • Key Aspects: Petitioner highlighted that the limitation "automatically determining a procedure... based on at least one user operation" is facially unclear and paradoxical. Since the specification never discloses a basis for this determination being based on a user operation, a skilled artisan would be confused by the claim language and unable to resolve the inconsistency by consulting the specification, rendering the claims indefinite.

4. Relief Requested

• Petitioner requests institution of Post Grant Review and cancellation of claims 1-8 of the ’308 patent as unpatentable under §101, §112(a), and §112(b).