Supercell Oy v. GREE Inc

1. Case Identification

• Case #: PGR2020-00052
• Patent #: 10,335,682
• Filed: April 2, 2020
• Petitioner(s): Supercell Oy
• Patent Owner(s): GREE, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Computer Control Method, Control Program and Computer
• Brief Description: The ’682 patent relates to methods for managing and playing video games, particularly "city building games," involving the transmission and receipt of information between user terminals and a server to reproduce the positions of game contents in a game space. The disclosed invention aims to solve the problem of cumbersome manual rearrangement of game assets by using "templates" to automatically move game pieces to defined positions.

3. Grounds for Unpatentability

Ground 1: Patent-Ineligible Subject Matter - Claims 1-16 are invalid under 35 U.S.C. §101

• Prior Art Relied Upon: Not applicable (§101 challenge).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claims 1-16 are directed to the abstract idea of "managing and playing a game involving transmitting and receiving information for reproducing positions of game contents." This concept was framed as a longstanding method of organizing human activity, analogous to playing correspondence chess where players exchange information (e.g., via postcards) to reproduce game piece positions on their respective boards. The petition asserted that the claimed steps—transmitting player identification, receiving game layout information, and receiving information to reproduce that layout—are mental processes that can be performed by a human.
  • Motivation to Combine (for §103 grounds): Not applicable.
  • Expectation of Success (for §103 grounds): Not applicable.
  • Key Aspects: Petitioner contended that implementing this abstract idea on generic computer components (user terminals, servers) does not provide an "inventive concept" sufficient to transform it into patent-eligible subject matter. The claims were argued to merely automate a manual process without improving computer functionality, reciting only the conventional functions of receiving, processing, and transmitting data.

Ground 2: Obviousness over Cho and GSB - Claims 1-6 and 8-16 are obvious over Cho in view of GSB

• Prior Art Relied Upon: Cho (Application # 2007/0105626) and GSB (Gratuitous Space Battles Manual, 2009).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Cho and GSB teach all elements of the independent claims. Cho disclosed a video game system where players use a touch screen to define and transmit tactical information (e.g., player formations, movement paths) between user terminals, potentially via a server. GSB disclosed a multi-player game where players arrange ship formations ("deployments") and issue challenges to other players through a central "galactic server." The server in GSB transmitted player identification and formation data between players. Petitioner argued that Cho taught the general concept of defining and sharing game content layouts, while GSB provided the specific client-server architecture for transmitting information identifying a second player and their associated game content layout (a fleet formation) for reproduction on the first player’s terminal.
  • Motivation to Combine: A POSITA would combine Cho and GSB to improve the exchange of tactical information between players in a multi-player environment. Using GSB's server-based system to manage the exchange of Cho's tactical data would be an obvious and predictable way to implement more reliable communications and provide players with additional options for sharing game formations.
  • Expectation of Success: The combination was presented as a straightforward integration of known gaming concepts—managing tactical data (Cho) with a client-server challenge system (GSB)—with a high expectation of success.

Ground 3: Obviousness over Cho, GSB, and Kim - Claim 7 is obvious over Cho, GSB, and Kim

• Prior Art Relied Upon: Cho (Application # 2007/0105626), GSB (Gratuitous Space Battles Manual, 2009), and Kim (Patent 9,079,105).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed claim 7, which adds the limitation of storing pre-existing game contents in a separate storage space when they are displaced by a new arrangement. Petitioner argued that the combination of Cho and GSB taught arranging a new set of game contents (a fleet formation) within a game space that may already contain other contents. The incremental teaching was supplied by Kim, which disclosed a game with a "substitute character display unit." This unit served as a storage space for characters on a team that were not currently part of a formation, allowing them to be swapped in later. Similarly, GSB’s deployment interface was alleged to function as a storage space for ship designs removed from a formation.
  • Motivation to Combine: A POSITA would have been motivated to incorporate the storage concept from Kim or GSB into the Cho/GSB system to provide players with more flexibility. Adding a "substitute" or storage area for game pieces is a predictable design choice that allows players to easily manage and reuse game assets when defining or modifying tactical formations.
  • Expectation of Success: The combination was argued to be a predictable result of combining known features to enhance game usability.

4. Key Claim Construction Positions

• "template": Petitioner argued that in claims 10-16, the term "template" should be construed as "record," consistent with a Board construction of the same term in a related patent. This construction supports the argument that the claims merely recite the transmission of generic data structures.
• "being used for reproducing...": Petitioner contended that clauses reciting the intended use of information, such as "being used for reproducing the types and the positions," are non-limiting statements of intended use. Under this interpretation, these clauses add no patentable weight to the claims, as they only describe the result of the recited steps rather than the steps themselves.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) is inapplicable because the obviousness grounds rely on prior art (Cho, GSB, Kim) that was not before the examiner during prosecution.
• Petitioner also argued that denial under §324(a) due to concurrent district court litigation would be improper. It asserted that Post-Grant Review (PGR) was specifically designed by Congress as an efficient and reliable alternative to litigation, and denying a timely-filed PGR petition would undermine this statutory purpose.

6. Relief Requested

• Petitioner requests institution of a Post-Grant Review and cancellation of claims 1-16 of the ’682 patent as unpatentable.