Supercell Oy v. GREE Inc

1. Case Identification

• Case #: PGR2018-00064
• Patent #: 9,737,816
• Filed: May 2, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-8

2. Patent Overview

• Title: Ranking List Display Method in Game System, and System for Executing the Method
• Brief Description: The ’816 patent describes methods and systems for displaying ranking lists in a game system. The purported invention aims to allow a user to more easily confirm their own ranking or the rankings of others by requesting, receiving, and displaying ranking data and a corresponding pointer on an electronic device.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 are invalid under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

• Core Argument for this Ground: Petitioner argued that claims 1-8 are directed to the abstract idea of transmitting, analyzing, and displaying data, which lacks a required inventive concept to transform it into a patent-eligible invention. The argument follows the two-step framework from Alice Corp. v. CLS Bank Int’l.
  • Alice Step 1 (Abstract Idea): Petitioner asserted the claims recite a sequence of generalized, functional steps: transmitting a request for ranking data, controlling the receipt of a position, displaying a pointer, determining user-input-based changes, and displaying a new range. This process was argued to be analogous to the well-established abstract idea of collecting, analyzing, and displaying information. The petition contended that the claims are directed to the desired result of "easily executing ranking confirmation" rather than a specific, concrete method of achieving it, thereby preempting all possible implementations.
  • Alice Step 2 (Inventive Concept): Petitioner argued the claims fail to provide an inventive concept because they merely recite generic, conventional computer components to perform the abstract idea. The claims invoke "circuitry," a "communication interface," and an "electronic device" without any structural or specific detail, amounting to nothing more than adding "apply it with a computer." The petition asserted that the specification describes the underlying technology as pre-existing and does not disclose any improvement to computer functionality itself, such as increased speed or efficiency. The ordered combination of steps was argued to be conventional and adds nothing beyond the abstract idea itself.

Ground 2: Claims 1-8 are invalid under 35 U.S.C. § 112(a) for lack of adequate written description.

• Core Argument for this Ground: Petitioner contended that the specification of the ’816 patent fails to demonstrate that the inventor was in possession of the full scope of the claimed invention as of the filing date. Key limitations in the claims were alleged to be entirely absent from the specification.
  • Prior Art Mapping: The petition identified several key claim elements that allegedly lack support. For example, independent claims 1 and 2 require "controlling, by circuitry of the electronic device, the communication interface to receive" a position or ranking data. Petitioner argued that the terms "circuitry," "communication interface," and the specific act of "controlling" an interface to receive data are not described anywhere in the specification. Instead, the specification describes a "server" that "acquires" rank data, which is a different concept performed by a different component. Similarly, claim 4 requires circuitry configured to display information when a user input is "accepted," but the term "accepted" and the specific configuration of circuitry to perform this function are allegedly not described.

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

• Core Argument for this Ground: Petitioner argued that the same claim terms lacking written description support also render the claims indefinite. The failure of the specification to define or describe these terms makes it impossible for a person of ordinary skill in the art to ascertain the metes and bounds of the invention with reasonable certainty.
  • Prior Art Mapping: The petition focused on the ambiguity of the phrase "controlling, by circuitry... the communication interface to receive..." a position. Petitioner argued that because "circuitry" and "communication interface" are not described, and the concept of "controlling" a passive act like "receiving" data is technically unclear, the scope of this limitation is vague. A person of skill in the art would not understand what structures or actions would fall within this claim language, as the specification provides no guidance to elucidate its meaning. This lack of clarity was argued to extend to all claims, rendering them indefinite.

4. Key Claim Construction Positions

• "Control": Petitioner argued that the term "control" (and its variants like "controlling"), as used in the independent claims, is a critical point of contention. The plain and ordinary meaning of "control"—the management of a computer's processing abilities—is allegedly nonsensical in the context of "controlling" a communication interface to receive data, as receipt is dependent on a sender, not the receiver. Petitioner asserted that the specification fails to provide any special definition for "control," leaving the term's meaning in the claims ambiguous and contributing to the indefiniteness of the claims.

5. Key Technical Contentions (Beyond Claim Construction)

• Entitlement to Priority Date: A central contention was that the challenged claims are not entitled to the filing date of the priority Japanese application (’903 application). Petitioner argued this is a threshold issue for the Post Grant Review (PGR), which is only available for patents with an effective filing date on or after March 16, 2013. The petition asserted that the ’903 application, like the ’816 patent’s own specification, fails to disclose key limitations of the challenged claims, including "controlling, by circuitry... the communication interface to receive" a position or ranking data. Because this subject matter was allegedly first introduced in the application that matured into the ’816 patent, the effective filing date of the claims is the filing date of that application (December 21, 2016), making the patent properly subject to PGR.

6. Relief Requested

• Petitioner requests institution of a Post Grant Review and cancellation of claims 1-8 of the ’816 patent as unpatentable under 35 U.S.C. § 101 and § 112.