Gree, Inc.

Patent Trials and Appeals Board

Nov 18, 2020

PGR2020-00039 (P.T.A.B. Nov. 18, 2020)

Trials@uspto.gov Paper 17
571-272-7822 Date: November 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SUPERCELL OY,
Petitioner,

v.

GREE, INC.,
Patent Owner.
____________

PGR2020-00039
Patent 10,307,676 B2
____________

Before LYNNE H. BROWNE, HYUN J. JUNG, and
AMANDA F. WIEKER, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing of
Decision Denying Institution of Post-Grant Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
A. Background
Supercell Oy (“Petitioner”) filed a Petition for post-grant review of
claims 1–24 (“challenged claims”) of U.S. Patent No. 10,307,676 B2
(Ex. 1003, “the ’676 patent”). Paper 2 (“Pet.”). GREE, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With our
authorization, Petitioner filed a Preliminary Reply (Paper 9, “Prelim.
Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 10, “Prelim.
Sur-reply”).
In its papers, Patent Owner requested that the Board exercise
discretion under 35 U.S.C. § 324(a) to deny institution of the Petition, due to
the advanced state of a district court parallel proceeding1 between the parties
in which substantially similar issues have been presented. Prelim. Resp. 3‒
25 (citing NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
Paper 8 (PTAB Sept. 12, 2018) (precedential); Apple Inc. v. Fintiv, Inc.,
IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv
Order”)); see also generally Prelim. Sur-reply. Petitioner disagreed and
argued that the public interest in review of patent quality counsels in favor of
institution. Prelim. Reply 1–5.
On September 14, 2020, the Board issued a Decision denying
institution pursuant to 35 U.S.C. § 324(a). Paper 14 (“Dec.”). The Decision
explains that the statutory text of §§ 314(a) and 324(a) provides discretion to
deny institution of a petition and consider “events in other proceedings
related to the same patent, either at the Office, in district courts, or the ITC.”

1 GREE, Inc. v. Supercell OY, No. 2:19-cv-00200 (E.D. Tex.) (the “parallel
proceeding”). Pet. 1; Paper 4, 3.
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Dec. 5–8 (citing Consolidated Trial Practice Guide November 2019
(“TPG”)2 at 58). The Decision explains that the Board considers several
factors when determining whether to institute trial in parallel with a
proceeding pending in another forum. Id. at 7. In the Decision, the Board
determined that although NHK Spring and the Fintiv Order applied
discretion under § 314(a)—not § 324(a), the relevant statute that applies to
post-grant review (“PGR”) proceedings—“the pertinent statutory language is
the same in both section 314(a) and section 324(a),” and “the [overall]
policy justifications associated with the exercise of discretion—inefficiency,
duplication of effort, and the risk of inconsistent results—apply . . . to post-
grant review proceedings under 35 U.S.C. § 324(a).” Id. at 7. As such, the
Decision weighs the factors set forth in the Fintiv Order in determining
whether to institute review. Id. at 7; see also id. at 9–27. Based upon that
analysis, the Board exercised discretion to deny institution of post-grant
review.
On October 14, 2020, Petitioner filed a Request for Rehearing of the
Decision. Paper 16 (“Req. Reh’g”). We have considered Petitioner’s
Request for Rehearing and, for the reasons below, determine that Petitioner
has not shown that we abused our discretion in denying the Petition.
Accordingly, the Request for Rehearing is denied.
B. Request for Rehearing Standards
When rehearing a decision on institution, the Board reviews the
decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
discretion may arise if the decision is based on an erroneous interpretation of

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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law, if a factual finding is not supported by substantial evidence, or if an
unreasonable judgment is made in weighing relevant factors. Star Fruits
S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d
1305, 1315–16 (Fed. Cir. 2000).
Additionally, 37 C.F.R. § 42.71(d) further provides that “[t]he burden
of showing a decision should be modified lies with the party challenging the
decision,” i.e., Petitioner, and “[t]he request must specifically identify all
matters the party believes the Board misapprehended or overlooked, and the
place where each matter was previously addressed in a motion, an
opposition, or a reply.”
C. Petitioner’s Arguments
In its Request, Petitioner makes three main arguments, which we
address below:
(1) “the Board misapprehended facts regarding Factors 2
and 6 [of Fintiv] that, when properly considered, tip the balance
in favor of institution;”
(2) “the Board’s reliance on NHK-Fintiv is misplaced”
because this is a PGR proceeding, not an IPR proceeding; and
(3) “exercising discretion based on the NHK-Fintiv factors is
improper” because “the entire NHK-Fintiv framework relied on
by the Board to deny institution is improper.”
Req. Reh’g 3, 9 (heading capitalization omitted), 11 (same).
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II. DISCUSSION
A. Fintiv Order Factors 2 and 6
1. Factor 2 — The Trial Date
Factor 2 considers the “proximity of the court’s trial date to the
Board’s projected statutory deadline for a final written decision.” Fintiv
Order, Paper 11 at 5–6. Petitioner contends that “the Board’s willingness to
take the court’s schedule at ‘face value’ thus caused the Board to . . .
misapprehend the trial date,” which has since changed. Req. Reh’g 3.
Petitioner asserts that “[t]he district court delayed the trial less than three
weeks after the Board issued its Decision” and that district court trial dates
“are often reset once the PTAB hurdle is cleared.” Id. at 3–4 (citing
Ex.1025, 2) (emphasis omitted). According to Petitioner, “trial schedules
‘tend[] to slip in significant regard’ “[o]nce the PTAB denies institution
based upon a looming district court trial date’” and “delays are only getting
worse in light of COVID-19.” Id. at 4 (citing Ex. 1026, 3–4).
We are not persuaded that we abused our discretion in considering
this factor or that we misapprehended the trial date. At the time of our
Decision, trial was scheduled in the parallel proceeding for December 7,
2020, approximately nine months before our final written decision would
have been due, if we were to institute trial. Dec. 10–11. As such, this gap in
timing created a cognizable risk of inconsistent results and duplication of
efforts, which weighed toward denying institution. Id. at 7, 11–13.
Additionally, the Decision notes that some uncertainty exists regarding trial
dates, as Petitioner again argues in its Request. Id. at 11; Req. Reh’g 3–4.
However, the Decision goes on to determine that even if trial in the parallel
proceeding was delayed by two months, consistent with Petitioner’s prior
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requested delay, the proximity of the trial date to our final written decision
would still favor denying institution. Dec. 12 (citing Ex. 2002, 2). As such,
Petitioner has not shown that the Board misapprehended the trial date.
In its Request, Petitioner shows that, in the time since our Decision,
the parties jointly requested a trial delay in the prior proceeding, from
December 7, 2020, to March 1, 2021, which the district court granted.
Ex. 1024, 1. Even considering these post-Decision developments, this three
month delay results in a trial date in the parallel proceeding set six months
before our final written decision would be due. Similar to the potential
delay discussed in our Decision, a jury trial set to begin six months before a
final written decision also weighs in favor of denying institution. Dec. 12;
see Prelim. Resp. 11 (identifying three prior PTAB proceedings in which
institution was denied where trial was scheduled to occur six months before
a final written decision, including the precedential NHK Spring decision).
We decline to speculate, absent case-specific evidence, as to any
future additional delay of the parallel proceeding’s trial date that may—
or may not—be requested by the parties, and that may—or may not—
be granted by the district court. See Ex. 1024, 1, 4 (indicating that the trial
date “cannot be changed without showing good cause,” which “is not shown
merely by indicating that the parties agree that the deadline should be
changed”) (emphasis omitted). On the current record, a cognizable risk of
inconsistent results exists, due to the scheduled date of trial and the statutory
due date of a final written decision.3

3 For the same reasons discussed in our Decision, we do not agree that these
circumstances are similar to those in Sand Revolution in any compelling
manner. Req. Reh’g 4; Dec. 11–12 (noting that, in Sand Revolution, the
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In its Reply to the Petition, Petitioner argued that “this [trial date]
factor should be afforded little weight, as the date is barely 18 months after
the patent issued.” Prelim. Reply 3. In its Request, Petitioner spends an
additional two pages elaborating on this argument. Req. Reh’g 5–6.
Specifically, Petitioner argues that a PGR petition may only be filed upon
issuance of a patent and, therefore, “[b]asing the PGR institution decision on
the trial date allows patent owners like GREE to self-select out of the PGR
process merely by filing a lawsuit in a fast-moving jurisdiction in which
invalidity must be proven by a higher standard.” Id. at 5; see also id. at 5–6
(distinguishing IPR proceedings “in which the [petition] filing deadline is
measured relative to service of the complaint in the litigation, not relative to
the issue date”). Petitioner argues that “by following the Director’s [NHK
Spring and Fintiv Order] guidance related to IPRs, the Board thwarts its own
recognized strong public interest in using PGRs to evaluate the § 101
ground[] on the merits.” Id. at 6.
We are not persuaded that we overlooked or misapprehended the
different posture of PGR proceedings, as compared to IPR proceedings,
when considering this factor. As explained in the Decision, “insofar as the
overall policy goals for considering a parallel proceeding’s trial date apply
equally to post-grant reviews, [this factor] is accorded the same weight” as it
would be in an IPR. Dec. 12. Indeed, the risk of duplication of effort and
inconsistent results is as relevant to PGR proceedings as it is to IPR
proceedings. See, e.g., id. at 20 (“[T]he same discretionary considerations

parties jointly sought two trial date extensions (not the case here), and the
court “identified a loose date at which trial might occur” (also not the case
here)); see, e.g., Ex. 1024, 1, 4.
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that promote fairness and efficiency in inter partes review are relevant to
post-grant review.”). Petitioner is correct that a public interest exists in
evaluating the § 101 ground on the merits, Req. Reh’g 6, and we considered
that fact in regard to Fintiv factor 6, and in our holistic analysis of whether
to exercise discretion to deny institution. See, e.g., Dec. 20–21, 26–27.
2. Factor 6 — The Merits
This factor considers “other circumstances that impact the Board’s
exercise of discretion, including the merits.” Fintiv Order, Paper 11 at 6.
Petitioner argues that the Board misapprehended or overlooked evidence
showing that Mastermind4 was publicly accessible. Req. Reh’g 6.
Specifically, Petitioner argues that the Board overlooked “time-based
distinctions in Dr. Claypool’s testimony” from related litigation. Id. at 7.
Petitioner also identifies other portions of Dr. Claypool’s testimony, and
provides a Supplemental Declaration from Dr. Claypool, captioned for
PGR2020-000046, on the issue of Mastermind’s accessibility. Id. at 7–8
(citing Ex. 1012 ¶¶ 117–118; Ex. 2009, 2–3; Ex. 1028 ¶ 9).
We are not persuaded that we misapprehended the Petition’s
contentions. In our Decision, we relied in part upon Dr. Claypool’s
testimony from related litigation between the parties in determining that
Petitioner failed to meet its burden of demonstrating that Mastermind was
publicly accessible. Dec. 24–25. Specifically, we relied upon
Dr. Claypool’s prior testimony that,

4 “Mastermind’s In-Game Builder Idea (with LOADS of pictures!)”
(“Mastermind”), available at
https://web.archive.org/web/20130915081112/http:/forum.supercell.net:80/s
howthread.php/149687-Mastermind-s-In-Game-Builder-Idea-(with-LOADS-
of-pictures!) (in two parts) (Ex. 1015, “Olesiuk Decl.”).
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it is my opinion that a diligent, skilled researcher engaged
in a reasonable search for prior art would not have found
Mastermind as a prior art reference even with the benefit of
[Patent Owner’s] infringement contentions before the filing of
the Petition for Post-Grant Review. A diligent, skilled researcher
would not spend time sifting through the suggestions provided on
Internet message boards, as they would normally not include
useful or sufficiently detailed suggestions.
Ex. 2009 ¶ 164 (emphasis added); Dec. 25.
Petitioner was provided an opportunity to respond to this evidence to
address any “time-based distinctions in Dr. Claypool’s testimony,” however,
Petitioner declined to address this testimony in its Preliminary Reply, despite
having the opportunity to do so. Prelim. Reply 5–7. We decline to consider
now, on rehearing, arguments that Petitioner failed to make in its
pre-institution papers. It is Petitioner’s burden to demonstrate that
Mastermind was publicly accessible. As we stated in our Decision, this
prior testimony casts serious doubt on Petitioner’s ability to satisfy that
burden. Dec. 25. We also decline to consider new testimonial evidence
submitted on rehearing on this issue, as Petitioner does not show good cause
for admitting this new evidence. See Huawei Device Co. v. Optics Cellular
Tech., LLC, IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019) (precedential)
(showing of “good cause” required prior to filing a rehearing request or in
the request itself for new exhibits to be admitted). We could not have
misapprehended or overlooked evidence and arguments that were not made
before our Decision.
Moreover, although we found Petitioner’s obviousness contentions to
be weak we, nonetheless, determined that “the facts underlying Factor 6
weigh slightly in favor of institution.” Dec. 25.
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3. Holistic Analysis
Petitioner contends that “[t]he Board misapprehended or overlooked
the weighing of the factors when conducting the holistic analysis of Fintiv”
because “[t]he Board did not articulate any actual weighing of the various
factors in its Decision. Rather, the Board stated which factors favored and
disfavored institution, and then provided a conclusion without undergoing a
substantive analysis or discussion of which factors were weighed more or
less heavily and why.” Req. Reh’g 8 (citing Dec. 26–27). Petitioner also
contends that the final conclusion to deny institution contradicts the Board’s
own conclusion that the merits of the § 101 ground is strong. Id. at 8.
We are not persuaded that we misapprehended or overlooked the
weighing of factors. The Decision provides seventeen pages of analysis as
to the facts underlying each individual factor. Dec. 9–26. With this
background, the Decision identifies the factors that weigh in each party’s
favor—three in favor of Patent Owner; two in favor of Petitioner—and
explains that, on balance, a holistic evaluation of the factors led us to
determine that the Fintiv factors in Patent Owner’s favor outweigh those in
Petitioner’s favor. Id. at 26–27. Specifically, we determined “that
duplication of efforts here is likely and the potential for inconsistent results
exists, where both tribunals would consider substantially identical issues and
where the parallel proceeding will reach trial nine months before we would
reach a final decision.” Id. Petitioner’s disagreement with our ultimate
conclusion does not demonstrate that we abused our discretion, or
overlooked or misapprehended the holistic analysis of factors. See Fintiv
Order, Paper 11 at 6 (considering “whether efficiency and integrity of the
system are best served by denying or instituting review”).
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B. NHK Spring and the Fintiv Order in Post-Grant Review
Petitioner argues that “the Board’s decision to deny institution is
based on application of the NHK-Fintiv Factors even though the instant
petition is a PGR, not an IPR,” and that reliance on NHK Spring and Fintiv
is misplaced because it is not binding precedent as applied to PGR
proceedings. Req. Reh’g 9–11.
We are not persuaded that we overlooked or misapprehended the
different posture of PGR proceedings as compared to IPR proceedings, when
exercising discretion to deny institution. As summarized above, the
Decision discusses that common statutory language exists in § 314(a)—
directed toward IPR proceedings—and in § 324(a)—directed to post-grant
review proceedings. See supra § I.A; Dec. 5–8. The Decision also discusses
the common policy justifications implicated when determining whether to
institute either an IPR proceeding or a PGR proceeding. Dec. 6–7. The
Decision then goes on to recognize and discuss certain differences between
PGR proceedings and IPR proceedings. Id. at 7–8. Despite these
differences, we determined that the Board’s binding precedent set forth in
NHK Spring and Fintiv applies to this PGR proceeding. Id. In doing so, we
additionally evaluated certain differences between PGR proceedings and
IPR proceedings, when considering the Fintiv Order factors. See, e.g., id. at
12, 15–16, 18–20. Petitioner has not demonstrated that we abused our
discretion in doing so.
C. Rulemaking
Finally, Petitioner contends that it is improper for the Board to have
relied upon NHK Spring and the Fintiv Order because this precedent
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“prescribes a new standard for institution but was not promulgated via the
requisite regulation.” Req. Reh’g 12.
The America Invents Act of 2011 (“AIA”), Pub L. No. 112-29, 125
Stat. 28 (Sept. 16, 2011), commits the decision to deny inter partes review to
the Director’s unreviewable discretion, even if the merits of the petition
warrant institution. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (explaining that the statute contains “no mandate to institute
review”); see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) and
Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct.
1365, 1371 (2018) (interpreting § 314(a) as committing the decision whether
to institute inter partes review to the Director’s discretion). As we noted in
our Decision, § 324(a) contains the same discretionary statutory language as
§ 314(a). NHK Spring and the Fintiv Order are precedential decisions that
are binding in Board proceedings. As previously discussed, we determine
that those precedential decisions also apply in the context of PGR
proceedings.
III. CONCLUSION
For the forgoing reasons, Petitioner has not shown that we abused our
discretion in denying the Petition. Accordingly, the Request for Rehearing
is denied.
IV. ORDER
For the reasons given, it is:
ORDERED that
Petitioner’s Request for Rehearing (Paper 16) is denied.

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PETITIONER:

Brian Hoffman
Jennifer Bush
Kevin McGann
Gregory A. Hopewell
Eric Zhou
FENWICK & WEST LLP
bhoffman-ptab@fenwick.com
jbush-ptab@fenwick.com
kmcgann-ptab@fenwick.com
ghopewell@fenwick.com
ezhou@fenwick.com

PATENT OWNER:

John Alemanni
Andrew Rinehart
KILPATRICK TOWNSEND & STOCKTON LLP
jalemanni@kilpatricktownsend.com
arinehart@kilpatricktownsend.com