Supercell Oy v. Gree, Inc.

1. Case Identification

• Patent #: 9,770,656
• Filed: June 22, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, INC.
• Challenged Claims: 1-6

2. Patent Overview

• Title: Method for Providing a Game Recording Medium and Server
• Brief Description: The ’656 patent discloses a method and system for managing missions in a network-based video game. The invention aims to increase and maintain user interest by generating a list of missions for a user, and upon the user completing a mission and taking certain actions, updating the list to present a new mission.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are invalid under 35 U.S.C. §101 as directed to patent-ineligible subject matter.

• Prior Art Relied Upon: This ground is based on legal precedent under §101, not prior art references.
• Core Argument: Petitioner argued that claims 1-6 fail the two-step test for patent eligibility established in Alice Corp. v. CLS Bank Int'l.
  • Alice Step 1 (Abstract Idea): Petitioner asserted the claims are directed to the abstract idea of generating a mission list in a video game, retrieving a new mission based on a relationship between missions and game items, and updating the list. This, Petitioner argued, is a longstanding method of organizing human activity (i.e., tracking and organizing information) simply applied in the context of a video game. The claims were characterized as using purely functional, result-oriented language without reciting a specific, non-abstract mechanism for achieving the claimed functions. Petitioner contended that the claims do not offer an improvement to computer or video game technology itself, but rather seek to solve a business or mental problem of keeping users interested in a game.
  • Alice Step 2 (Inventive Concept): Petitioner argued the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. All recited hardware elements—such as a "server device," "user devices," and a "communication network"—were described as generic, conventional components performing their well-understood functions. The claimed method steps were argued to be nothing more than routine computer functions, such as storing and retrieving data, receiving user input, and transmitting information over a network. Petitioner asserted that the ordered combination of these conventional steps adds nothing inventive, merely implementing the abstract idea using generic technology. The dependent claims (2-4) were argued to add only further conventional gaming concepts, such as scaling mission difficulty with user skill level (claim 2) or enabling social sharing of missions (claim 4), without reciting any inventive technological improvement.

Ground 2: Claims 1-6 are invalid under 35 U.S.C. §112(a) for lack of adequate written description.

• Prior Art Relied Upon: This ground is based on the patent's own specification, not prior art references.
• Core Argument: Petitioner argued that the specification fails to provide adequate written description for at least two key limitations recited in the claims, and therefore does not demonstrate that the inventor was in possession of the full scope of the claimed invention at the time of filing.
  • "Receiving an identifier of an item from the first user device": Petitioner contended that the specification is entirely silent on how this action occurs. The patent's figures and description of the operational sequence (e.g., FIG. 6) allegedly show no mechanism for a user to select or send an item identifier to the server, nor do they describe the server receiving such an identifier. The specification mentions an "exchange" button but does not link its function to the transmission of a specific item identifier.
  • "Identifying a second mission... specified by the received identifier": Following from the first point, Petitioner argued that because the specification fails to describe the receipt of an identifier, it necessarily fails to describe how a second mission could be identified based on it. Furthermore, Petitioner asserted that the specification provides no disclosure of any algorithm, process, or logic for the server to perform the "identifying" step, even if an identifier were received. The verb "identify" is reportedly absent from the specification outside of the claims themselves, leaving a critical gap in the disclosure.

Ground 3: Claims 1-6 are invalid under 35 U.S.C. §112(b) as indefinite.

• Prior Art Relied Upon: This ground is based on the patent's own specification, not prior art references.
• Core Argument: Petitioner's indefiniteness argument stemmed directly from its written description challenges. It argued that the failure of the specification to disclose matter essential to the invention—namely, the mechanism for "receiving an identifier" and "identifying a second mission"—renders the claims fatally indefinite. Because the specification provides no guidance on how these crucial steps are performed, a person of ordinary skill in the art (POSITA) would not be able to determine the scope of the claimed invention with reasonable certainty. This alleged lack of clarity in the patent's disclosure makes it impossible for the public to understand the metes and bounds of the claims, thus failing the definiteness requirement of §112(b).

4. Relief Requested

• Petitioner requests the institution of a Post Grant Review (PGR) and the cancellation of claims 1-6 of Patent 9,770,656 as unpatentable under 35 U.S.C. §101 and §112.