Supercell Oy v. GREE Inc

1. Case Identification

• Case #: PGR2018-00091
• Patent #: 9,808,723
• Filed: August 7, 2018
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-19

2. Patent Overview

• Title: Non-Transitory Computer-Readable Medium, Information Processing System, and Method
• Brief Description: The ’723 patent relates to a computer-implemented game method, purportedly based on the game of Reversi, designed to make gameplay more interesting. The invention involves storing game media with associated parameters, calculating a value based on those parameters, and applying that value to affect a player's status within the game.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility Under 35 U.S.C. §101 - Claims 1-19

• Core Argument for this Ground: Petitioner argued that claims 1-19 are directed to patent-ineligible subject matter under 35 U.S.C. §101 because they claim the abstract idea of making a game more interesting, implemented using only generic and conventional computer functions. The challenge followed the two-step framework from Alice Corp. v. CLS Bank Int'l.
  • Alice Step 1 (Abstract Idea): Petitioner asserted the claims are directed to the abstract idea of applying well-known game rules on a general-purpose computer. The patent itself identifies the underlying game as Reversi, a century-old board game. The core "invention"—assigning numerical values to game pieces to determine combat outcomes—was argued to be a longstanding mechanism in organizing human activity, exemplified by classic board games like Stratego. Petitioner contended that the claims recite only a series of routine, functional steps (storing data, displaying an interface, calculating values) without offering any technological improvement over prior art computer systems. The claims merely take a familiar game mechanic and state to "apply it on a computer."
  • 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 recite only generic computer components, such as an "information processing system," "display," and "circuitry," performing their conventional functions. The ordered combination of these steps was asserted to add nothing more than the performance of well-understood, routine activities. The purported improvement—"making a game more interesting"—is a subjective goal not captured by any specific, inventive technical solution within the claim language.

Ground 2: Lack of Written Description Under 35 U.S.C. §112(a) - Claims 1-19

• Core Argument for this Ground: Petitioner contended that claims 1-19 are invalid for lacking adequate written description because the specification fails to demonstrate that the inventor was in possession of the full scope of the claimed invention at the time of filing.
  • Basis of Challenge: The petition focused on the claim limitation requiring the system to "calculate a value" to be applied to a player's parameter. This calculation is claimed to be based on either "a number of the... game medium" or "a numerical value associated with the... game medium." Petitioner argued the specification provides no guidance on how to choose between these alternatives, how the selected basis would be used in a calculation, or how different variables would be combined. Similarly, the claims require "apply[ing] the value to at least one of the first or second game player's parameter," but the specification allegedly fails to describe which specific parameter is affected or when it should be applied to one player versus the other. This lack of detail was argued to show that the inventor had not actually invented the full, broad scope of the functionally-claimed method.

Ground 3: Indefiniteness Under 35 U.S.C. §112(b) - Claims 1-19

• Core Argument for this Ground: Petitioner argued that claims 1-19 are invalid as indefinite because their language is ambiguous and fails to inform a person of ordinary skill in the art (POSA) about the scope of the invention with reasonable certainty.
  • Basis of Challenge: The claims were asserted to be replete with antecedent basis problems and unclear alternative language. For example, the phrase "the first or second game player's parameter" was argued to lack a clear antecedent, as the claims previously state that each "game medium" (not each player) has first and second parameters. Furthermore, the extensive use of "or" in key functional steps—such as the basis for a calculation—was contended to render the claim boundaries indeterminate, as a POSA could not discern how to avoid infringement. Because the specification lacks the corresponding detail to resolve these ambiguities, Petitioner argued the claims are facially unclear and fail to meet the requirements of §112(b).

4. Relief Requested

• Petitioner requested institution of a Post Grant Review and cancellation of claims 1-19 of the ’723 patent as unpatentable under 35 U.S.C. §101, §112(a), and §112(b).