Gree, Inc.

Patent Trials and Appeals Board

Jul 7, 2021

PGR2021-00034 (P.T.A.B. Jul. 7, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: July 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SUPERCELL OY,
Petitioner,
v.
GREE INC.,
Patent Owner.

PGR2021-00034
Patent 10,610,771 B2

Before LYNNE H. BROWNE, HYUN J. JUNG, and
AMANDA F. WIEKER, Administrative Patent Judges.
JUNG, Administrative Patent Judge.
DECISION
Denying Institution of Post-Grant Review
35 U.S.C. § 324, 37 C.F.R. § 42.4
Dismissing Petitioner’s Motion to Seal
37 C.F.R. §§ 42.14, 42.54
I. INTRODUCTION
A. Background and Summary
Supercell Oy (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
requesting institution of a post-grant review of claims 1–18 of
U.S. Patent No. 10,610,771 B2 (Ex. 1001, “the ’771 patent”). Petitioner also
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filed a Motion to Seal Exhibit 1007 and for Entry of Protective Order.
Paper 3. GREE, Inc. (“Patent Owner”) filed a Preliminary Response
(Paper 7, “Prelim. Resp.”). With our authorization, Petitioner filed a Reply
to Patent Owner’s Preliminary Response (Paper 8, “Reply”), and Patent
Owner filed a Sur-reply to Petitioner’s Reply to Patent Owner’s Preliminary
Response (Paper 9, “Sur-reply”).
Upon consideration of the parties’ briefs and the evidence of record
and for the reasons explained below, we exercise our discretion under 35
U.S.C. § 324(a) to deny institution of a post-grant review. We also dismiss
as moot Petitioner’s Motion to Seal.
B. Real Parties in Interest
Petitioner states that “[t]he sole real party-in-interest for this Petition
is Supercell Oy.” Pet. 1. Patent Owner states that “the real party-in-interest
is GREE, Inc.” Paper 4, 2.
C. Related Matters
The parties indicate that the ’771 patent is involved in GREE, Inc. v.
Supercell Oy, No. 2:20-cv-00113-JRG-RSP (E.D. Tex.). Pet. 1; Paper 4, 2.
Trial is set for August 2, 2021, in the parallel district court proceeding.
Ex. 2001, 1 (Fifth Amended Docket Control Order entered Apr. 12, 2021);
Ex. 2011, 1 (Seventh Amended Docket Control Order entered May 14,
2021).
D. The ’771 Patent (Ex. 1001)
The ’771 patent issued on April 7, 2020, from an application filed on
July 10, 2019, that is a continuation of an application filed on July 29, 2014,
and claims priority to a foreign application filed on July 30, 2013. Ex. 1001,
codes (22), (30), (45), (63), 1:6–9.
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The ’771 patent relates to “a technology in which messages are
transmitted or received using an information processing terminal.”
Ex. 1001, 1:14–16. If “a message from a first user terminal of user terminals
belonging to a chat group” is a “normal message,” the message is
transmitted to each of the user terminals.” Id. at code (57). If, however, the
message is a “selection of the game icon,” a controller generates a game
message according to logic corresponding to the game icon and transmits the
game message to each of the user terminals.” Id.
For example, in embodiment, the game icon corresponds to a
“grouping game” for grouping users of a chat group into two groups.
Ex. 1001, 17:11–19:33. Figure 22 of the ’771 patent is reproduced below.

Figure 22 shows exemplary views 641–643, 645–647 of touch panel
displays of user terminals. Ex. 1001, 17:34–38. In view 641, the touch
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panel of User A has icon menu M1 with game icon A9. Id. at 17:39–41.
Game icon A9 corresponds to an icon for “Grouping.” Id. at 17:41. When
User A selects game icon A9, views 645–647 with standby messages 648
with time left for entry are outputted. Id. at 17:41–49. Figure 23 of the ’771
patent is reproduced below.

Figure 23 shows exemplary views 651–653, 655–657 of touch panel
displays of user terminals. Ex. 1001, 17:34–38. After users indicate entry,
“the chat management section 21 performs the determination process on
whether it is possible to generate a group” and “acquires the number of user
IDs associated with ‘Participation’ . . . , and compares the number of users
(the number of entries) expressing ‘Participation’ with the number of
groups.” Id. at 18:6–17. When “the number of entries is equal to or larger
than two times the number of groups, the chat management section 21
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determines that it is possible to generate a group.” Id. at 18:17-20. The
groups are generated, and the grouping result is displayed to the users in the
chat as shown in Figure 23. Id. at 18:29–47.
E. Illustrative Claim
The ’771 patent has 18 claims, all of which Petitioner challenges.
Claims 1, 7, and 13 are independent, and claim 1 is reproduced below.
1. A game control method comprising:
transmitting, to terminals of a plurality of users, data for
displaying a chat screen comprising a game icon for entry to a
game and one or more messages sent from at least a part of the
plurality of users;
causing display of the game icon in the chat screen on a
terminal of a first user of the plurality of users;
in response to selection of the game icon by the first user,
transmitting, to the terminal of the first user, data for
displaying a waiting message indicating waiting for an entry of
another user to the game in the chat screen, and
transmitting, to terminals other than the terminal of
the first user, data for displaying an icon for the entry to the game
in the chat screen;
in response to the icon for the entry to the game being
selected by a second user other than the first user, receiving the
entry of the second user;
when a number of a group associated with the game icon
and a number of users who have entered the game satisfy a first
relationship, transmitting, to at least a part of the terminals of the
plurality of users, data for displaying a player group including at
least the first user and the second user who has entered the game
in the chat screen;
conducting a battle by the player group; and
transmitting, to at least part of the terminals of the plurality
of users, data for displaying a result of the battle in the chat
screen.
Ex. 1001, 19:36–64.
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F. Asserted Prior Art and Proffered Testimonial Evidence
Petitioner relies upon the following evidence:
Christie et al., U.S. Patent No. 8.458,278 B2, filed
Mar. 20, 2007, issued June 4, 2013 (Ex. 1011, “Christie”);
Balahura et al., U.S. Patent Application Publication
No. 2005/0026697 A1, filed July 30, 2004, published Feb. 3,
2005 (Ex. 1010, “Balahura”);
Ping Pals Instruction Booklet, THQ Inc. (2005)
(Ex. 1009, “Ping Pals Manual”);
Nintendo DS, Wikipedia (May 21, 2005),
https://web.archive.org/web/20050521010206/https://en.wikipe
dia.org/wiki/Nintendo_DS (Ex. 1013, “Nintendo DS
Wikipedia”);
Nintendo Official Magazine UK, issue 151 (2005)
(Ex. 1016, “Nintendo Official Magazine”);
Ping Pals, Amazon (Dec. 11, 2008),
https://web.archive.org/web/20081211031417/http://www.amaz
on.com/Ping-Pals-Nintendo-DS/dp/B00069NVWE (Ex. 1014,
“Ping Pals Amazon Product Page”);
Ping Pals, Metacritic (Sept. 3, 2011),
https://web.archive.org/web/20110903171850/http://www.meta
critic.com/game/ds/ping-pals/critic-reviews (Ex. 1015, “Ping
Pals Metacritic”);
Ping Pals, Wikipedia (Dec. 1, 2011),
https://web.archive.org/web/20111201214914/https://en.wikipe
dia.org/wiki/Ping_Pals (Ex. 1012, “Ping Pals Wikipedia”); and
Ping Pals Gameplay Video File (Ex. 1008, “Ping Pals
Gameplay Video”).
See Pet. xi–xii, 14; see also id. at 13 (arguing that the earliest effective filing
date is July 30, 2013). Petitioner also provides a Declaration of José P.
Zagal, Ph.D. in Support of Petition for Post Grant Review of U.S. Patent No.
10,610,771 (Ex. 1005).
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According to Petitioner, “Ping Pals is a video game published by THQ
for the Nintendo DS and was released on December 8, 2004 in North
America.” Pet. 47. Petitioner relies upon certain pieces of evidence
identified above—namely, the Zagal Declaration (Ex. 1005), the Ping Pals
Manual (Ex. 1009), the Nintendo DS Wikipedia (Ex. 1013), the Nintendo
Official Magazine (Ex. 1016), the Ping Pals Amazon Product Page
(Ex. 1014), the Ping Pals Metacritic (Ex. 1015), the Ping Pals Wikipedia
(Ex. 1012), and the Ping Pals Gameplay Video (Ex. 1008)—to describe the
Ping Pals game that Petitioner contends was sold to the public and
“constitutes prior art under 35 U.S.C. § 102(a).” Pet. 48; see id. at 47–50.
G. Asserted Grounds
Petitioner asserts that claims 1–18 would have been unpatentable on
the following grounds:
Claims Challenged 35 U.S.C. § References/Basis
1–18 101 Eligibility
1–18 112(a) Written Description
1–18 112(b) Indefiniteness
1–4, 6–10, 12–16, 18 103 Ping Pals, Balahura
5, 11, 17 103 Ping Pals, Balahura, Christie
Pet. 13–14.
H. Eligibility for Post-Grant Review
The post-grant review (“PGR”) provisions of the Leahy-Smith
America Invents Act (“AIA”)1 apply only to patents subject to the first
inventor to file provisions of the AIA. AIA § 6(f)(2)(A). Specifically, the
first inventor to file provisions apply to any application for patent, and to
any patent issuing thereon, that contains or contained at any time a claim to a
claimed invention that has an effective filing date on or after March 16,

1 Pub L. No. 112-29, 125 Stat. 284 (2011).
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2013. AIA § 3(n)(1). Because the application from which the ’771 patent
issued was filed on July 10, 2019, and claims priority to a foreign
application filed on July 30, 2013, the ’771 patent is subject to the first
inventor to file provisions of the AIA. Ex. 1001, codes (22), (30), 1:6–9.
Also, “[a] petition for a post-grant review may only be filed not later
than the date that is 9 months after the date of the grant of the patent or of
the issuance of a reissue patent (as the case may be).” 35 U.S.C. § 321(c);
see also 37 C.F.R. § 42.202(a) (setting forth the same). The Petition was
filed on January 7, 2021, which is within nine months of April 7, 2020, the
issue date of the ’771 patent. Ex. 1001, code (45); see also Pet. 2 (arguing
that the Petition is timely filed); Paper 6 (according a filing date of January
7, 2021). On this record, the ’771 patent is eligible for post-grant review.

II. 35 U.S.C. § 324(a)
Patent Owner argues that “the Board should exercise its discretion
under 35 U.S.C. § 324(a) to deny the Petition because Petitioner raises the
same grounds, arguments, and prior art in a parallel district court proceeding
filed more than one year ago and scheduled for trial in three months (August
2, 2021).” Prelim. Resp. 1.
A. Legal Standards
35 U.S.C. § 324(a) states that
[t]he Director may not authorize a post-grant review to be
instituted unless the Director determines that the information
presented in the petition filed under section 321, if such
information is not rebutted, would demonstrate that it is more
likely than not that at least 1 of the claims challenged in the
petition is unpatentable.
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Like 35 U.S.C. § 314(a) that applies to inter partes reviews, the language of
§ 324(a) expressly provides the Director with discretion to deny institution
of a post-grant review. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.”); Consolidated Trial Practice
Guide November 2019 (“TPG”)2 at 55.
In exercising the Director’s discretion under §§ 314(a) and 324(a), the
Board may consider “events in other proceedings related to the same patent,
either at the Office, in district courts, or the ITC.” TPG at 58. NHK Spring
explains that the Board may consider the advanced state of a related district
court proceeding, among other considerations, as a “factor that weighs in
favor of denying the Petition under § 314(a).” NHK Spring Co. v. Intri-Plex
Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018)
(precedential). Additionally, the Board’s precedential order in Apple Inc. v.
Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020)
(precedential) (“the Fintiv Order”) identifies several factors for analyzing
issues related to the Director’s discretion to deny institution, with the goal of
balancing efficiency, fairness, and patent quality.
NHK Spring and the Fintiv Order apply the Director’s discretion
pursuant to § 314(a), and do not specifically extend their application to
§ 324(a). The statutory language of both §§ 314(a) and 324(a), however,
provides the Director with discretion to deny institution of review.
Moreover, the overall policy justifications associated with exercising
discretion under § 314(a)—inefficiency, duplication of effort, and the risk of
inconsistent results—apply to exercising discretion under § 324(a). Thus, as

2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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shown below, we weigh the factors set forth in the Fintiv Order to this
proceeding. See, e.g., Supercell Oy v. GREE, Inc., PGR2020-00034, Paper
13 at 5‒7 (PTAB Sept. 3, 2020) and PGR2020-00038, Paper 14 at 6–8 (Sept.
3, 2020) (applying the Fintiv Order factors to post-grant reviews and
denying trial).
Also, as discussed below, there are differences between inter partes
reviews and post-grant reviews that, when relevant to specific Fintiv Order
factors, must be considered. Those differences include the fact that the
window for filing a petition for post-grant review is open only for nine
months from the date of issuance. See 35 U.S.C. § 321(c). Furthermore,
“[t]he intent of the post-grant review process is to enable early challenges to
patents, while still protecting the rights of inventors and patent owners
against new patent challenges unbounded in time and scope.” H.R. Rep.
No. 112-98, pt. 1, 47–48 (2011).
B. Applying the Fintiv Factors
1. Whether the Court Granted a Stay or Evidence Exists that one
may be Granted if a Proceeding is Instituted
Patent Owner argues that “Petitioner has not filed any motion to stay
the parallel district court proceeding” and “there is little evidence here to
suggest that the district court will grant a stay.” Prelim. Resp. 8. Patent
Owner also argues that a stay is “extremely unlikely” because stays are
denied before institution and an institution decision is “not due until a few
days before the jury trial in the parallel district court proceeding.” Id. at 9.
Petitioner replies that “Factor 1 (Likelihood of Stay) requires speculation.”
Reply 5. Patent Owner does not further address this factor. See generally
Sur-reply.
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Because the district court has not yet granted a stay and the record
does not include any evidence that a stay, if requested, would be granted, we
determine that the facts underlying this factor are neutral.
2. Proximity of the Court’s Trial Date to the Board’s Projected
Statutory Deadline for a Final Written Decision
Patent Owner argues that a “jury trial in the parallel district court
proceeding is set to begin on August 2, 2021” and thus, “scheduled to
conclude more than eleven months before a final written decision would be
due in this proceeding.” Prelim. Resp. 10 (citing Ex. 2001, 1). Patent
Owner lists several proceedings where the Board has denied institution when
there was a smaller gap between the trial date and the due date for a final
written decision. Id. at 10–11. Patent Owner also argues that the trial date
should be taken at “face value” and that “Petitioner fails to present any
specific evidence that the jury trial in in the parallel proceeding will not
proceed on August 2, 2021, as scheduled.” Id. at 11–12. Patent Owner
further argues that there is no order modifying or continuing the jury trial in
the parallel proceeding, like one for earlier trials due to the COVID-19
pandemic. Id. at 13 (citing Ex. 2001, 1; Ex. 2008). Patent Owner
additionally argues that generalized speculation should be outweighed by the
jury trial scheduled to occur in the related parallel proceeding many months
before a final written decision would be due. Id. at 13–14 (citing Ex. 2001,
1).
Regarding any possible delay of the trial date, Patent Owner contends
that “any such delay is not likely to impact the Board exercising its
discretion to deny institution under § 324(a)” because a delayed trial “will
still conclude well before a final written decision would be due in this
proceeding.” Prelim. Resp. 14. Patent Owner also contends that “any such
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(speculative and hypothetical) delay does not ‘materially alter’ the weighing
of this factor given the significant amount of time before a final written
decision would be due in this proceeding,” and “[t]his factor thus weighs in
favor of the Board exercising its discretion to deny institution.” Id. at 15–
16.
Petitioner replies that “Factor 2 is impacted by the minimal overlap
between the issues” and “should be afforded little weight because the trial
will address different art.” Reply 4. Petitioner also argues that “determining
the true trial date requires speculation.” Id.
Patent Owner replies that “the district court confirmed that trial in the
parallel district court proceeding will proceed on August 2, 2021” and
“Petitioner’s cursory claim that trial may not so proceed is based entirely on
Petitioner’s own speculation.” Sur-reply 1 (citing Ex. 2011, 1). Patent
Owner also argues that this factor weighs in favor of denying institution
“regardless of the scope of overlap of prior art.” Id. at 2 (citing Reply 4).
Patent Owner further argues that “substantial overlap exists here beyond
solely the asserted prior art.” Id.
The record clearly shows that, if post-grant review were instituted in
this proceeding, a final written decision would be due more than eleven
months after the trial date in the parallel district court proceeding. Ex. 2011,
1. Given the overlap in claims, prior art, and arguments as described below,
institution would create a potential for the district court proceeding and the
post-grant review to arrive at inconsistent results spaced months apart.
As for possible trial date adjustments, the record does not contain any
evidence for such adjustments and, even if the district court moves the trial
date, the trial would still occur several months before the due date for a final
written decision in this proceeding. Ex. 2011, 1. Therefore, we agree with
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Patent Owner that this factor weighs in favor of denying institution. See
Prelim. Resp. 10–16; Sur-reply 1–2.
For the reasons above, because a jury trial is set to begin more than
eleven months before the statutory due date for a final written decision in
this proceeding should review be instituted in this proceeding, we determine
that this factor weighs in favor of denying institution.
3. Investment in the Parallel Proceeding by the Court and the
Parties
Patent Owner argues that the district court and the parties have
invested substantial resources, such as shown by an order on claim
construction, and by the time institution is considered, “will be on the eve of
a jury trial” and thus, likely will have completed fact and expert discovery,
briefing on dispositive and Daubert motions, pre-trial disclosures, and
pretrial conference. Prelim. Resp. 17–18 (citing Ex. 2001, 2–3; Ex. 2009).
Patent Owner also argues that, “based on past and future deadlines . . . , the
parallel district court proceeding regarding the subject ’771 Patent is at an
‘advanced’ stage” and that the district court and parties will have invested
more resources by the time institution is decided. Id. at 19 (citing Ex. 2001).
Patent Owner also argues that it initiated the parallel district court
proceeding shortly after the ’771 patent issued, but Petitioner did not file its
Petition until nine months after issuance. Prelim. Resp. 20 (citing Ex. 1001;
Ex. 2002). According to Patent Owner, there is an unexplained delay and
Petitioner must be using this proceeding “as a second-bite at the apple” to
litigate validity again in a different venue, not as an alternative to district
court litigation. Id. at 19–21. Patent Owner also contends that Petitioner
served the same grounds and asserted the same references in the same way
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seven months before filing its Petition in this proceeding. Id. at 21 (citing
Exs. 2003, 2005–2007).
Petitioner replies that the “court’s and parties’ investments at the
district court concerns issues not present here,” and, thus, “the court in this
parallel litigation has made no investment with respect to the validity of the
’771 patent in view of the references asserted in this PGR, nor will any
further investment be made.” Reply 4.
Patent Owner replies that the investments at the district court relate to
issues in this proceeding. Sur-reply 2–3 (citing Prelim. Resp. 17–19;
Reply 4). According to Patent Owner, the district court through its claim
construction order rejected the indefiniteness and written description
arguments made in the Petition and the district court’s construction of “chat
screen” precludes the prior art challenges based on Ping Pals. Id. at 3 (citing
Prelim. Resp. 23, 24, 50–56, 61–64). Patent Owner also argues that
Petitioner’s stipulation acknowledges that these challenges did not survive
claim construction at the district court. Id. Patent Owner further argues that
Petitioner presented the § 101 challenge in a motion for summary judgment
of invalidity under § 101, and related briefing and pretrial conference will be
completed by the time institution is decided. Id. (citing Prelim. Resp. 22–
23; Ex. 2011,1; Ex. 2012; Ex. 2013). Patent Owner, thus, argues the district
court and the parties have invested substantially in issues presented in this
proceeding. Id. (citing Reply 4).
In the parallel proceeding, the district court and the parties have
completed claim construction, fact discovery, expert discovery, filing and
responding to dispositive motions and motions to strike expert testimony,
filing motions in limine, filing of a joint pretrial order, and attending a
pretrial conference. Ex. 2009 (Claim Construction Memorandum Opinion
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and Order); Ex. 2001, 2–3; Ex. 2011, 1–3. The record shows that the district
court and the parties have made substantial investments in the parallel
proceeding, even though the parties still have to expend significant resources
associated with conducting the trial itself, as well as potential post-trial
proceedings. See id. at 1–3. We also agree with Patent Owner that the
investments made relate to invalidity positions presented in the Petition. See
Sur-reply 3; Ex. 2012. Therefore, the present investment related to the
parallel proceeding weigh in favor of denying institution.
As for the filing date of the Petition, 35 U.S.C. § 321(c) affords
petitioner up to nine months after issuance of the patent to file a petition for
post-grant review. Petitioner complied with 35 U.S.C. § 321(c), even
though the Petition was filed just before the end of the nine-month window.
Patent Owner does not make clear what effect filing late in the allowed
window has on the investments made in the parallel proceeding by the
parties and the court. See Prelim. Resp. 20–21; Sur-reply 1–5. Thus, we are
not persuaded that the timing of the Petition’s filing supports denying
institution under this Fintiv Order factor.
Based on the record, we determine that substantial investments have
been made so far in the parallel proceeding, and thus, this factor weighs in
favor of denying institution.
4. Overlap Between Issues Raised in the Petition and in the Parallel
Proceeding
Petitioner contends that “Ping Pals was presented in the related
litigation in Petitioner’s amended invalidity contentions,” but “[i]f the Board
institutes, Petitioner stipulates that it will withdraw this reference in the
related litigation.” Pet. 79. Petitioner, thus, argues that the references in the
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obviousness challenges would not be at issue in the related litigation and
there would be no overlap. Id.
Patent Owner argues that “[t]here is substantial overlap between the
claims, grounds, arguments, and evidence presented in the Petition and what
has been, and continues to be, litigated in the parallel district court
proceeding.” Prelim. Resp. 22. According to Patent Owner, Petitioner
asserts the same grounds in the district court proceeding. Id. (citing
Exs. 2003–2007). Patent Owner also argues that Petitioner relies on the
same arguments for challenges under §§ 101, 112(a), and 112(b). Id. at 22–
24 (citing Pet. 27, 34, 35, 41–46; Ex. 2004, 2–6; Ex. 2005, 23, 24; Ex. 2009,
32–37). Patent Owner notes that the district court already rejected the
§ 112(b) arguments. Id. at 24 (citing Ex. 2009, 32–37).
For the § 103 challenge, Patent Owner argues that Petitioner relies on
Ping Pals in both the related litigation and the present proceeding and any
additionally cited prior art is immaterial to this factor. Prelim. Resp. 25 n.3,
25–26 (citing Pet. 14, 47–50; Ex. 2006, 1; Ex. 2007); see also id. at 31
(asserting that Petitioner incorrectly argues that, because the secondary
references relied upon in the Petition are not asserted in the parallel
proceeding, this factor favors institution and complete duplication of
asserted prior art is not required). Patent Owner also argues that
substantially the same arguments regarding Ping Pals have been presented in
district court and this proceeding. Id. at 26 (citing Pet. 47–50, 53–67;
Ex. 2007). Patent Owner further argues that the claims challenged here are
the same ones asserted in district court. Prelim. Resp. 27 (citing Pet. 13–14;
Ex. 2005, 1, 3).
Patent Owner also responds that Petitioner’s stipulation is too narrow
because Petitioner fails to stipulate that it will not pursue in the related
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litigation any ground raised or any ground that could have been raised in this
proceeding. Prelim. Resp. 28–29 (citing Pet. 79). Patent Owner argues that
“Petitioner’s narrow stipulation does not sufficiently mitigate the concerns
of duplicative efforts between the district court and the Board, as well as
concerns of potentially conflicting decisions.” Id. at 29. Patent Owner also
argues that Petitioner’s stipulation is especially ineffective because
institution will be decided days before trial begins in district court and that
the stipulation does not address the identical §§ 101 and 112 challenges
asserted there and here. Id. at 29–30. Patent Owner further argues that the
outcome of this factor should turn on the overlapping grounds and
arguments, instead of one reference. Id. at 30.
Patent Owner further responds that (1) Petitioner speculates that the
claims asserted in district court will be narrowed prior to trial, (2) complete
identity of claims at issue is not required, and (3) the Board has found this
factor to weigh towards denying institution when claims at issue in the
district court and the Board are not completely identical. Prelim. Resp. 32–
33. Patent Owner also contends that the district court will resolve key issues
even if the asserted claims are narrowed because, for example, same claim
limitations are at issue. Id. at 34 (citing Pet. 27–46, 70–72).
Petitioner replies that, because the secondary references are absent
from the related litigation, there are minimal concerns of inefficiency and
possibility of conflicting decisions. Reply 1. Petitioner argues that it will
stipulate not to pursue in district court the obviousness challenges presented
in the Petition, if institution is granted, so the two proceedings will not be
directly duplicative. Id. at 1–2. Petitioner also argues that, if the Petition’s
obviousness challenges are not presented in district court, then the district
court will not resolve key issues of the Petition. Id. at 2.
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Petitioner also replies that Patent Owner speculates that the number of
asserted claims will not be reduced, even though Patent Owner “has a
history of reducing the number of asserted claims as the trial date draws near
as is standard in the Eastern District of Texas” and “demonstrated
willingness to mislead the Board as to this fact.” Reply 2–3. Petitioner
notes that Patent Owner “makes no commitments, stipulations, or other
binding statements regarding which claims it will actually assert at trial,”
and therefore, “determining overlap of the claims asserted requires
speculation and weighs against discretionary denial.” Id. at 3. Petitioner
further replies that public interest in early evaluation overcomes the concern
regarding overlap in the § 101 challenge. Id.
Patent Owner replies that Petitioner cannot dispute that the same
grounds and arguments have been presented for the §§ 101 and 112
challenges. Sur-reply 4 (citing Prelim. Resp. 22–24). Patent Owner also
argues that Petitioner’s public interest argument has been rejected
previously. Id. (citing Reply 3). Patent Owner further argues that
Petitioner’s stipulation does not mitigate concerns of duplicative efforts and
potentially conflicting decisions and Petitioner should have, but has not,
expressly waived in district court any overlapping invalidity challenges. Id.
at 4–5 (citing Prelim. Resp. 30; Reply 1). Patent Owner additionally argues
that Petitioner speculates that the asserted claims will have to be reduced and
that the district court will still resolve key issues on a smaller set of claims
because the same arguments are presented for all the independent claims of
the ’771 patent. Id. at 5 (citing Prelim. Resp. 32–35).
The record shows that presently claims 1–18 are at issue in both
proceedings. Ex. 2004, 2; Ex. 2005, 1; Ex. 2007, 2–44. Based on the record
in front of us, Petitioner’s argument that Patent Owner may reduce the
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number of asserted claims at issue in the parallel proceeding is speculative.
The record also shows that the same statutory grounds are at issue in this
proceeding and the related litigation. Ex. 2004 (Preliminary Ineligibility
Contentions for the ’771 patent), 1–32; Ex. 2005 (Preliminary Invalidity
Contentions under § 112 for the ’771 patent), 8, 22–24; Ex. 2007
(Preliminary Invalidity Contentions based on Ping Pals). The record further
shows that similar arguments have been presented in both proceedings, and
that Ping Pals is at issue in both proceedings. Compare Pet. 20–77, with
Exs. 2004, 2005, 2007.
“[I]f the petition includes the same or substantially the same claims,
grounds, arguments, and evidence as presented in the parallel proceeding,
this fact has favored denial” because “concerns of inefficiency and the
possibility of conflicting decisions [are] particularly strong.” Fintiv Order,
Paper 11 at 12.
We agree with Patent Owner that Petitioner’s narrow stipulation to
withdraw the § 103 challenges, if review is instituted, “is especially
ineffective here given that it is dependent on the Board’s institution decision
and that decision will likely not be issued until mere days before the August
2, 2021 trial in the parallel district court proceeding,” and, therefore, “fails to
meaningfully mitigate the concerns of duplicative efforts between the district
court and the Board.” Prelim. Resp. 29. As discussed supra regarding
Fintiv Order factor 3, the parties already have completed all pretrial work
regarding these grounds, including the Ping Pals reference.
Based on the present record, we determine that this factor weighs in
favor of denying institution.
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5. Whether Petitioner and the Defendant in the Parallel Proceeding
are the Same Party
Patent Owner argues that “Petitioner and Patent Owner are the
defendant and plaintiff, respectively, in the parallel district court
proceeding,” and “this factor weighs in favor of the Board exercising its
discretion to deny institution.” Prelim. Resp. 35 (citing Ex. 2002).
Petitioner replies that “Factor 5 (Same Parties) should be given little weight”
and is not dispositive. Reply 5. Patent Owner does not provide a reply for
this factor. See generally Sur-reply.
The record shows that Petitioner and Defendant in the parallel
proceeding are the same. Ex. 2002. Thus, this factor weighs in favor of
denying institution.
6. Other Circumstances that Impact the Board’s Exercise of
Discretion, Including the Merits
Patent Owner argues that “no other circumstances” “impact the
Board’s exercise of discretion under § 324(a)” and “the merits of the
grounds asserted in the instant Petition are far from strong.” Prelim.
Resp. 36. Patent Owner cites sixteen Board decisions between the same
parties discretionarily denying institution based on similar circumstances.
Id. at 36–37. Patent Owner also argues that the Board has previously
rejected Petitioner’s arguments based on policy and that “there is no need for
the Board to unnecessarily duplicate the district court’s efforts at the expense
of the Board’s time and resources.” Id. at 37–38. Patent Owner
preemptively addresses other arguments previously made by the same
Petitioner in other proceedings before the Board. Id. at 38–39.
In its responsive arguments regarding the § 101 challenge, Patent
Owner contends that arguments similar to Petitioner’s assertions were
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overcome after applying the latest patent eligibility guidance. Prelim.
Resp. 44–50.3 For the § 112 challenges, Patent Owner argues that the claim
language at issue was in the originally filed claims, the disclosure supports
the claims, the district court rejected similar indefiniteness arguments, and
Petitioner relies on conclusory declaratory testimony. Id. at 50–56.
Regarding the § 103 challenges, Patent Owner asserts that Petitioner has not
established that Ping Pals is prior art because, inter alia, it is unclear what
version is being played in the Ping Pals Gameplay Video and if it
corresponds to the Ping Pals Manual. Id. at 57–61.
Petitioner replies that “[e]ach ground in the petition presents a strong
case on the merits,” as illustrated by Patent Owner’s responsive arguments.
Reply 4–5 (citing Prelim. Resp. 57–60). Petitioner also argues that this
factor can be definitive regardless of the other factors. Id. at 5. Petitioner
further argues that Ping Pals comes in the form of a cartridge and thus,
necessarily corresponds to the one described in the Ping Pals Manual. Id. at
6–7. Petitioner additionally argues that Patent Owner fails to provide any
evidence that Ping Pals had a later version cartridge and fails to address that
a cartridge existed before the earliest possible priority date. Id. at 7–8.
Patent Owner replies that Ping Pals fails to disclose certain claim
limitations. Sur-reply 5 (citing Prelim. Resp. 61–67). Patent Owner also
argues that Petitioner does not address the district court’s claim
constructions and rejection of same § 112 challenges. Id. (citing Prelim.
Resp. 50–56; Reply 5). Patent Owner further argues that even a strong case

3 Patent Owner also argues we should avoid “second-guess[ing] this issue of
patentability,” in accordance with 35 U.S.C. § 325(d). Prelim. Resp. 45.
Because we deny institution based on 35 U.S.C. § 324(a), we do not reach
this issue.
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on the merits can be outweighed by the other Fintiv Order factors. Id.
Patent Owner additionally argues that Petitioner provides insufficient
evidence to show that Ping Pals is prior art. Id. at 6–7.
Upon our initial review of the merits based on a preliminary record,
we determine that Petitioner’s challenges based on §§ 101 and 103 have
merit, and that Petitioner’s challenges based on §§ 112(a) and 112(b) are
weak. Accordingly, the facts underlying this factor are neutral.
7. Holistic Analysis of Fintiv Order Factors
We undertake a holistic analysis of the Fintiv factors, considering
“whether efficiency and integrity of the system are best served by denying or
instituting review.” Fintiv, Paper 11 at 6.
The evidence in the record indicates that there would be duplication of
efforts and potential for inconsistent results. We determine that the facts
favoring exercising discretion collectively outweigh those against discretion.
Accordingly, we exercise our discretion to deny institution under 35 U.S.C.
§ 324(a).

III. PETITIONER’S MOTION TO SEAL
Petitioner moves to seal Exhibit 1007. Paper 3. Because we did not
rely on Exhibit 1007 for our decision, we dismiss as moot Petitioner’s
Motion to Seal Exhibit 1007 and for Entry of Protective Order.

IV. CONCLUSION
Based on our application of the precedential Fintiv Order factors to
the record before us, we exercise our discretion under 35 U.S.C. § 324(a)
and deny institution of post-grant review.

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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied as to all challenged claims, and
no trial is instituted;
FURTHER ORDERED that Petitioner’s Motion to Seal Exhibit 1007
and for Entry of Protective Order is dismissed as moot; and
FURTHER ORDERED that Petitioner is authorized to file a motion to
expunge Exhibit 1007 within 90 days after the date of entry of this Decision
or, if a request for rehearing is filed, within 90 days after the date of entry of
a decision on the request.

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Patent 10,610,771 B2
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FOR PETITIONER:
Brian M. Hoffman
Jennifer R. Bush
Kevin X. McGann
Gregory A. Hopewell
Dmitry Kagan
FENWICK & WEST LLP
bhoffman-PTAB@fenwick.com
jbush-PTAB@fenwick.com
kmcgann-PTAB@fenwick.com
ghopewell@fenwick.com
dkagan@fenwick.com

FOR PATENT OWNER:
John C. Alemanni
Andrew Rinehart
Joshua H. Lee
KILPATRICK TOWNSEND LLP
jalemanni@kilpatricktownsend.com
arinehart@kilpatricktownsend.com
jlee@kilpatricktownsend.com
Scott A. McKeown
ROPES & GRAY
Scott.McKeown@ropesgray.com