Gree, Inc.

Patent Trials and Appeals Board

Jun 2, 2020

PGR2019-00018 (P.T.A.B. Jun. 2, 2020)

Trials@uspto.gov Paper No. 22
571-272-7822 Mailed: June 2, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SUPERCELL OY,
Petitioner,

v.

GREE, INC.,
Patent Owner.
_________

PGR2019-00018
Patent 9,891,799 B2
____________

Before LYNNE H. BROWNE, HYUN J. JUNG, and CARL M.
DEFRANCO, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Claims Unpatentable
35 U.S.C. § 328(a)

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I. INTRODUCTION

Supercell Oy (“Petitioner”) filed a Petition (“Pet.”) for post-grant
review of claims 1–20 of U.S. Patent No. 9,891,799 B2 (“the ’799 patent”)
(Ex. 1001) pursuant to 35 U.S.C. §§ 321–329. Paper 1. GREE, Inc.
(“Patent Owner”) filed a Preliminary Response. Paper 7.
On June 3, 2019, we issued a Decision pursuant to 35 U.S.C. § 324
instituting a post-grant review for claims 1–20 of the ’799 patent with
respect to all grounds set forth in the Petition. Paper 8, 26 (“Dec.”). After
institution, Patent Owner filed a Patent Owner Response (Paper 12, “PO
Resp.”). Thereafter, Petitioner filed a Reply to Patent Owner’s Response
(Paper 15, “Pet. Reply”). Patent Owner then filed a Sur-Reply (Paper 16,
“PO Sur-Reply”). Patent Owner and Petitioner presented oral arguments on
March 3, 2020.
The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
Decision, after reviewing all relevant evidence and assertions, we determine
that Petitioner has met its burden of showing, by a preponderance of the
evidence, that claims 1–20 of the ’799 patent are patent ineligible.
A. Related Matters
Petitioner indicates that there are no related matters involving the ’799
patent. Pet. 1. Patent Owner does not contest this assertion.
B. The ’799 Patent
The ’799 patent “provides a game program with enhanced strategic
gameplay in which a plurality of characters are operated with simple
operation, a computer control method, and an information processing
apparatus.” Ex. 1001, 1:38–42. The ’799 patent describes “a game program
that processes progress of a game for moving a plurality of objects arranged
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on a game field.” Id. at 1:44–46. The game program includes functions
such as “an accepting function that accepts operation information regarding
a touch operation performed by a user,” “an associating function that
associates the plurality of objects as a group,” and “a moving function that
may move . . . the plurality of associated objects as a group.” Id. at 1:47–54.
The moving function moves the associated objects in a direction indicated
by a direction operation, and this movement is displayed by a display
processing function. Id. at 52–56. The game program allows a user to
perform “a specifying operation that specifies a first object that is any of the
plurality of objects.” Id. at 62–63. Upon such specification, “the moving
function may move the remaining objects, excluding the first object from the
plurality of objects, as a group in the direction indicated by the direction
operation.” Id. at 64–67.
This game program is performed with information processing
apparatus 100 shown in Figure 1, reproduced below:
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Figure 1 is “a functional block diagram of . . . an information processing
apparatus.” Ex. 1001, 2:62–64. Information processing apparatus 100
includes “an input unit 110, a storage unit 120, a control unit 130, and a
display unit 140.” Id. at 6:66–67. Input unit 110 is a touch pad. Id. at 7:5–
6. Storage unit 120 “retain[s] map information 200” and “stores parameters
of each of user units and each of enemy units used in the game.” Id. at 7:40,
53–54. Control unit 130 is a processor that executes progress of the game.
Id. at 7:59–60. Control unit 130 includes accepting unit 131, moving
processor 132, battle processor 133, associating unit 134, and display
processor 135. Id. at 8:3–5.
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C. Illustrative Claim
The ’799 patent includes twenty claims, of which claims 1, 8, and 15
are independent. All three independent claims recite essentially identical
limitations and vary only as to type, where claim 1 is directed to a
“computer-implemented method,” claim 8 to a “computer program product,”
and claim 15 to a “system.” Ex. 1001, 24:30, 25:36, 26:41. Common across
the independent claims are eight functional steps as set forth in
representative claim 1 reproduced below:
1. A computer-implemented method for operating a
computer game, the method comprising:
storing, in a storage module, a plurality of virtual objects
and the arrangements of those virtual objects on a game field;
accepting, via an input face configured to detect a touch
operation, operation information regarding a touch operation
performed by a user,
associating, using a processor, a plurality of virtual
objects as a group;
determining, using a processor, whether the operation
information comprises a direction operation;
upon determining that the operation information
comprises a direction operation, moving, using a moving
processor, one or more of the plurality of associated objects as a
group in the direction indicated by the direction operation;
storing, in a storage module, the new arrangements on the
game field of the one or more of the plurality of associated
objects moved with the moving processor;
displaying, on a computer screen, the game field and the
plurality of virtual objects arranged on the game field; and
displaying, on a computer screen, the new arrangement
on the game field of the one or more of the plurality of
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associated objects moved with the moving processor.
Ex. 1001, 24:30–55.
C. The Alleged Grounds of Unpatentability
Petitioner asserts that claims 1–20 of the ’799 patent are unpatentable
as being directed to patent-ineligible subject matter under 35 U.S.C. § 101
(Pet. 29–51) and as being indefinite under 35 U.S.C. § 112(b) (Pet. 51–60).
Petitioner asserts further that claims 2–6, 9–13, and 16–19 are unpatentable
for failing to further limit the subject matter of the claims on which they
depend under 35 U.S.C. § 112(d). Id. at 60–63.
II. ANALYSIS
A. Claim Construction
Petitioner asserts that the claim terms “parameter” and “controlling
. . . an effect of [an] attack” should be construed. Pet. 21–23. Patent Owner
does not propose a claim construction for any claim terms. See generally
PO Resp. As our Decision does not turn on the express construction of any
claim term, we do not construe expressly the terms addressed by Petitioner.
B. Claims 1–20 as Directed to Patent-Ineligible Subject Matter Under
35 U.S.C. § 101
Petitioner contends that claims 1–20 do not recite patent-eligible
subject matter under 35 U.S.C. § 101. Pet. 29–51; Pet. Reply 4–22. Patent
Owner disagrees. PO Resp. 1–57; PO Sur-Reply 1–4.
1. Relevant Law
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
After the filing of the Petition, but before the filing of Patent Owner’s
Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply, the U.S. Patent
and Trademark Office published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
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whether the claim recites: (1) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed.
Reg. at 52–55. Only if a claim (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then look to
whether the claim: (3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at
56.
2. Application of the Guidance
As discussed above in Part II.B.1, the Guidance issued after the
filing of the Petition, but before the filing of Patent Owner’s
Response, Petitioner’s Reply, and Patent Owner’s Sur-Reply. In its
Response and Sur-Reply, Patent Owner addresses the Guidance. See,
e.g., PO Resp. 13–30; see also PO Sur-Reply 2. In its Reply,
Petitioner does not explicitly address the Guidance. See, generally,
Pet. Reply. However, in responding to Patent Owner arguments
which are couched in terms of the Guidance, Petitioner necessarily
addresses the Guidance. Both Patent Owner and Petitioner addressed
the Guidance during oral arguments. See generally Paper 21 (“Tr.”).
Accordingly, both Parties had ample opportunity to address the
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Guidance, and we see no prejudice to either Party in our application of
the Guidance.
3. Representative Claims 1 and 15
In our Institution Decision, we treated claim 1 as representative of the
three independent claims at issue in this proceeding. Dec. 15. For the
convenience of the reader, we reproduce claim 1 again below:
1. A computer-implemented method for operating a computer
game, the method comprising:
storing, in a storage module, a plurality of virtual objects
and the arrangements of those virtual objects on a game field;
accepting, via an input face configured to detect a touch
operation, operation information regarding a touch operation
performed by a user,
associating, using a processor, a plurality of virtual
objects as a group;
determining, using a processor, whether the operation
information comprises a direction operation;
upon determining that the operation information
comprises a direction operation, moving, using a moving
processor, one or more of the plurality of associated objects as a
group in the direction indicated by the direction operation;
storing, in a storage module, the new arrangements on the
game field of the one or more of the plurality of associated
objects moved with the moving processor;
displaying, on a computer screen, the game field and the
plurality of virtual objects arranged on the game field; and
displaying, on a computer screen, the new arrangement
on the game field of the one or more of the plurality of
associated objects moved with the moving processor.
Ex. 1001, 24:30–55.
As Patent Owner specifically addresses claim 15 in many of its
arguments, we reproduce it as well:

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15. A system comprising at least one processor, at least
one memory module including computer program code, and at
least one terminal apparatus of a player user having a graphical
user interface, the at least one memory module and the
computer program code configured to, with the processor, cause
the system to at least:
store, in a storage module, a plurality of virtual objects
and the arrangements of those virtual objects on a game field;
associate, using a processor, a plurality of virtual objects
as a group;
determine, using a processor, whether the operation
information comprises a direction operation;
upon determining that the operation information
comprises a direction operation, move, using a moving
processor, one or more of the plurality of associated objects as a
group in the direction indicated by the direction operation;
store, in a storage module, the new arrangements on the
fame field of the one or more of the plurality of associated
objects moved with the moving processor;
display, on a computer screen, the game field and the
plurality of virtual objects arrange on the game field; and
display, on the computer screen, the new arrangement on
the game field of the one or more of the plurality of associated
objects moved with the moving processor.
Ex. 1001, 26:41–27:3.
4. Petitioner’s Challenge
Petitioner asserts that the claims of the ’799 patent are directed to “the
abstract idea of associating game objects and moving one or more of the
objects.” Pet. 29. In other words, Petitioner asserts that the claims are
directed to rules that govern play of a game, which, when viewed through
the lens of the Guidance, is akin to managing personal behavior or
relationships or interactions between people (including following rules or
instructions), which are one of certain methods of organizing human activity
that our reviewing courts have found patent-ineligible as abstract ideas. See
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In re Smith, 815 F.3d. 816, 818 (Fed. Cir. 2016) (concluding that
“[a]pplicants’ claims, directed to rules for conducting a wagering game” are
patent-ineligible). In support of this assertion, Petitioner argues that “[t]he
patent does not recite an improvement in computer functionality or a new
technology. Instead, it merely recites a series of generalized steps performed
on conventional and generic computer technology to arrive the desired
result.” Pet. 29. According to Petitioner, “[t]he Supreme Court and Federal
Circuit have made clear that such generalized steps directed toward an
abstract concept, without disclosing any improvement to computer
technology are impermissibly abstract.” Pet. 29–30 (citing In re TLI
Comm’cns Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017), cert. denied, 139 S. Ct. 378; Affinity Labs of Tex., LLC v.
Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016), cert. denied, 137 S.
Ct. 1596 (2017)).
In addition, Petitioner contends that “the challenged claims do not
recite any inventive concept necessary to transform the abstract idea into
patent-eligible subject matter. Instead, they recite generic computer
components that long predated the patent and functional steps inherent to the
abstract idea itself.” Pet. 30. According to Petitioner, “[s]uch claims are
quintessentially abstract.” Id. (citing Two-Way Media, 874 F.3d at 1339;
Affinity Labs, 838 F.3d at 1263; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014).
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5. Patent Owner’s Arguments, Petitioner’s Response, and Our
Consideration of Issues Raised by Patent Owner
a. Whether the Claims Recite an Abstract Idea
As discussed in Section II.B.4 above, Petitioner asserts that the claims
recite “the abstract idea of associating game objects and moving one or more
of the objects.” Pet. 29. Responding to this assertion, Patent Owner
contends that the claims at issue are distinguishable from those at issue in In
re Smith. During oral argument, we questioned Patent Owner regarding this
issue. Tr. 26. In response, Patent Owner explained, “what we’ve argued in
our briefing is not that the claims are directed to a class of games instead of
one game. What we’re saying is because this claim is applicable to a class
of games and is presented as an interface it is claiming an interface.” Id.
More specifically, according to Patent Owner, “what we’re arguing is, taking
a couple steps back, if it’s a judicial exception it has to relate to a human
activity. A human activity is playing a game. Humans don’t play classes of
games at one time. They’re not using, they’re not a processor. They’re not
associating inputs.” Id. at 27. Explaining further, Patent Owner stated that
“what we’re saying is because this claim is not directed to a particular game
it’s directed to a gaming environment, a gaming interface. And more
importantly, the meat of the claim is about that association of syntax and
semantics and enabling gestures that weren’t possible before.” Id. at 28. In
support of this argument, Patent Owner asserted that the challenged claims
are similar to the claims at issue in McRO: “[t]he McRO decision was about
lip synching. That’s managing a game. There’s avatars on your screen.
Their lips are being synched up. It’s managing a game in the same respect
that’s being argued here in that it’s a gaming environment.” Id.
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We also questioned Petitioner about this matter during oral argument.
Petitioner asserted it did not believe that it made any difference (regarding
patent-eligibility) if the rules in question can be used in multiple games. Tr.
9. According to Petitioner none of Planet Bingo,1 In re Smith, or [In re]
Guldenaar2 have made their holdings “specific to the game that was at issue
there, or have made any distinction that if those rules were applicable to
more than one game, that those holdings would not be true.” Id. Petitioner
made the further point “And then we have the fact that of course Claim 1
does say for operating a computer game. So it does actually articulate the
singular in the claim itself.” Id. Responding to Patent Owner’s argument
regarding McRO, Petitioner reiterated its position that the claims at issue are
similar to those in Planet Bingo. Tr. 9–10.
We agree with Petitioner that “the holding in In re Smith does not
require that the claims be directed to rules for playing a ‘particular’ game.”
Pet. Reply 5. Rather, the Federal Circuit held that “claims, describing a set
of rules for a game, are drawn to an abstract idea.” In re Smith, 815 F.3d at
819. Notably, the Federal Circuit did not require that such rules only be
applicable to a particular game. Id. Further, we agree that the claims at
issue are similar to those in Planet Bingo as explained by Petitioner in its
Reply. See Pet. Reply 6–8; see also Ex. 1009, 11.
We disagree with Patent Owner that the claims at issue are similar to
those found to be patent-eligible in McRO. Although Patent Owner is
correct that “[i]n McR[O], the Federal Circuit held that the method of
automating lip synchronization and facial expressions depiction in a

1 Planet Bingo, LLC v. VKGS LLC, 576 Fed. App’x 1005 (Fed. Cir. 2014).
2 In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).
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computer character is not directed to an abstract idea, because it focuses on a
specific improvement in a computer process (i.e., computer animation),” for
the reasons given below, we do not find that the challenged claims are
directed to a similar improvement in a computer process. PO Sur-Reply 2.
As discussed in Section I.B above, the ’799 patent describes “a game
program that processes progress of a game for moving a plurality of objects
arranged on a game field.” Ex. 1001, 1:44–46. The challenged claims recite
this game program by setting forth limitations that allow a user to direct
movement of the plurality of objects on the game field as discussed in
greater detail above. The challenged claims do not proscribe features that
improve the performance of the “input face.” Thus, as we explain in more
detail below, to the extent that the limitations in the challenged claims recite
an improvement, it is an improvement in the play of the game, not an
improvement in a computer process. See, e.g. Ex. 1001, 1:38–39.
For these reasons, we agree with Petitioner that the claims recite
following rules or instructions, a certain method of organizing human
activity, which Petitioner phrases as “the abstract idea of associating game
objects and moving one or more of the objects.” Pet. 29.
b. Whether the Challenged Claims Are Directed to an
Improved Touch Screen Interface
Patent Owner contends that “[t]he ’799 patent claims an improved
touch-screen interface—not a game” and that a touch-screen interface is
patent eligible subject matter. PO Resp. 1. Patent Owner asserts that the
claimed “touch-screen interface facilitates complex and intricate movements
of pluralities of on-screen objects via predetermined touch and swipe
gestures. Such interfaces and associated methodologies are plainly
patentable.” Id. (citing Immersion Corp. v. Fitbit, Inc., 313 F. Supp. 3d
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1005, 1011 (N.D. Cal. 2018); Fitbit Inc. v. AliphCom, No. 16-CV-00118-
BLF, 2017 WL 819235, at *20 (N.D. Cal. Mar. 2, 2017)). Patent Owner
submits further “[t]hat the claimed interface . . . is particularly applicable in
a mobile gaming context is of no consequence to a proper analysis under 35
U.S.C. § 101. Indeed, the specification . . . states that the claimed invention
cannot be limited to a particular video game, but has applicability to ‘any
game.’” Id. (citing Ex. 1001, 17:19–23).
In an attempt to distinguish over the claims in Smith, which were held
to be directed to rules of a particular game, Patent Owner contends that
“[t]he ’799 patent claims are not directed to any particular game (or game
rules).” PO Resp. 2 (citing Dec. 15–16). In support, Patent Owner directs
our attention to the testimony of its expert, Dr. Shamos, who “testifies [that]
‘associating game objects and moving one or more of the objects’ is an
interface control function, and not a game anyone plays.” Id. (citing Ex.
2012 ¶¶ 7–20).
In addition, Patent Owner contends that “Petitioner’s argument that
the ’799 patent claims are directed to the alleged abstract idea of ‘associating
game objects and moving one or more of the objects,’” “is overly broad and
omits core limitations of the claimed invention, including the very gesture-
driven user interface at the heart of the invention; and the Board did not
address Dr. Shamos’ testimony to the contrary.” PO Resp. 3 (citing Dec. 15;
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016); Diehr, 450 U.S. at 188; Fitbit, 2017 WL 819235, at *20).
In Reply, Petitioner contends that “the holding in In re Smith does not
require that the claims be directed to rules for playing a ‘particular’ game, as
PO alleges.” Pet. Reply 5. Further, Petitioner notes that in its Response,
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Patent Owner “asserted that the claims were directed to ‘a game with an
improved touch screen interface.’” Id. (quoting PO Resp. 4). Petitioner
contends further that “[i]n any event, it is actually [Patent Owner’s] ‘directed
to’ articulation that ignores the claim language, since representative claim 1
does not recite any ‘gesture-driven control interface,’ ‘fails to recite [] a
touch screen’ (Decision at 18), and in fact does not even recite the term
‘interface’ at all.” Id. at 5–6. Petitioner also notes that “[t]he term
‘interface’ only appears once in the claims, in claim 15’s preamble, as part
of the graphical user interface.” Id. at 6 (citing Ex. 1005, 71:7-16; 138:4-
13). In contrast to Patent Owner’s characterization of the claims, Petitioner
asserts that each limitation of claim 1 “pertains to ‘associating game objects
and moving one or more of the objects,’ which pertains to a way of
managing and playing a game.” Id.
Patent Owner replies by reiterating its arguments that the claims are
directed to a gesture driven control interface and that the claimed method is
applicable to any game. PO Sur-Reply 1. Patent Owner also asserts that in
its Reply Petitioner “attempts to rewrite the Board’s abstract idea to extend
to technology used during computer gaming.” Id. According to Patent
Owner, Petitioner takes the position that “the Board’s abstract idea
encompasses any technology used during computer gameplay, such as new
control interfaces of mobile devices.” Id. (citing Pet. Reply 4). Patent
Owner asserts that “this argument conflates two distinct concepts: ‘rules
governing the play of a computer game’ describe how a particular game,
e.g., Blackjack, is played, in real life or in a computerized version of
gameplay; and separately, ‘operations that take place during play of a
computer game.’” Id. at 1–2 (citing Ex. 1001, 1:38–42, 2:52–58). Patent
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Owner asserts further that “the latter is directed to specific technological
improvements that do not fall under any recognized judicial exceptions in
case law or the PTAB’s revised 101 guidance.” Id. at 2 (citing PO Resp.
14–16).
Central to Patent Owner arguments is its contention that the
challenged claims are directed to an improved touch screen interface (also
referred to as a gesture driven control interface). However, the challenged
claims do not support Patent Owner’s contention. Claim 1 is directed to “[a]
computer-implemented method for operating a computer game.”3 Ex. 1001
24:30–31. Claim 1 recites a series of steps for manipulating a plurality of
virtual objects on a game field. Id. at 24:32–34, 42–55. In order to
manipulate these objects in accordance with the input provided by a user
(i.e. player) of the computer game, the method includes steps for detecting a
touch operation performed by a user and determining whether that touch
operation comprises a direction operation. Id. at 24:38–42. These steps,
however, are incidental to the claimed method, not the focus of the claim.
Thus, claim 1 is not directed to an improved touch screen interface.
Claims 8 and 15 are not directed to an improved touch screen
interface for similar reasons. Claim 8 recites “[a] computer program product
embodied on a non-transitory computer readable medium, comprises code
executable by a computer arranged to operation a computer game, to cause

3 We note that Patent Owner’s expert does not support Patent Owner’s
contention that the challenged claims are directed to an improved touch
screen interface. Ex. 2001 ¶ 37. According to Dr. Shamos, “[t]he claims are
directed to computer gaming methods, programs and systems that interpret
touch and swipe operations on a user interface to move a plurality of game
objects simultaneously.” Id. (citing Ex. 1001, 24:30–28:21).
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the computer to carry out . . . steps.” Ex. 1001, 25:36–40. The steps set
forth in claim 8 are essentially the same as the steps set forth in claim 1.
They also recite an “input face,” but only as a means for executing the
claimed steps. The focus of claim 8 is not the “input face.” Claim 15
recites:
A system comprising at least one processor, at least one
memory module including computer program code, and at least
one terminal apparatus of a player using having a graphical
user interface, the at least one memory module and the
computer program code configured to, with the processor, cause
the system to [perform steps]:
Id. at 26:41–46. Although claim 15, unlike claims 1 and 8, recites a
graphical user interface in its preamble, claim 15 is not directed to an
improved touch screen interface either. Like claims 1 and 8, claim 15 is
directed to steps for implementing a computer game. See id. at 26:41–27–3.
Further, Patent Owner does not identify, nor do we discern, where any of the
dependent claims recite limitations directed to an improved touch-screen
interface, such that any dependent claim is directed to such a device.
For these reasons, we determine that the challenged claims are not
directed to an improved touch screen interface or a gesture driven interface.
c. Whether a Gesture-Driven Control Interface Is a Game
Patent Owner contends that “[t]he ’799 patent claims a particular
technical solution to problems arising in the context of touch-screen
interfaces for mobile gaming.” PO Resp. 3. As such, Patent Owner asserts
that “there existed a technical need for a control mechanism and operation
methodology that was intuitive and easy to learn but was also suitable for a
variety of mobile games that would maintain user interest.” Id. at 4–5
(citing Ex. 2001 ¶ 32; Ex. 2003 at 7; Ex. 2004 at 56–57). Thus, according
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to Patent Owner, “the ’799 patent is directed to a user interface methodology
applicable for use in a universe of games involving strategy, where complex
and strategic movements of pluralities of characters on a virtual game field
using intuitive swipe and touch operations would improve mobile gameplay
experience.” Id. at 5 (citing Ex. 1001, 4:3–24; 15:50–67; Ex. 2001 ¶¶ 33–
35; Ex. 2012 ¶¶ 7-8).
In support of this contention, Patent Owner asserts that “[t]he ’799
patent claims are directed to a novel touch-screen user interface where a user
can use intuitive touch-gestures (swipe and/or swipe-and-touch operations)
to perform complex movements of pluralities of virtual objects on a virtual
game field, particularly in strategy games.” PO Resp. 5 (citing Ex. 1001,
15:62–67, 24:30–28:21; Ex. 2012 ¶¶ 8–13; Ex. 2001 ¶¶ 57–58). Patent
Owner also asserts that “[t]he specification provides many different
examples of the enhanced functionality of the claimed touch-screen gesture-
driven control interface” and that “[d]uring prosecution of the patent
application underlying the ’799 patent, the patent examiner correctly
recognized that the ’799 patent claims are directed to an interface
technology, not a particular game.” Id. at 7 (citing Ex. 2001 ¶¶ 40–55), 11
(citing Ex. 1002, 12–17; Ex. 2001 ¶ 56; Ex. 2012 ¶¶ 7–8).
To the extent that Patent Owner’s argument differs from its argument
discussed in Section II.B.5.a above, we are not persuaded that the challenged
claims are directed to a gesture driven control interface. Rather, as
discussed at length in Section II.B.5.a, the challenged claims are directed to
a computer implemented method, computer program product, and system for
executing a series of steps related to a computer game. The fact that the
Specification describes alleged enhanced functionality of a gesture driven
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control interface does not alter this fact. Neither does the Examiner’s
alleged recognition that the claims are directed to an interface technology as
opposed to a particular game.
d. Whether a Gesture-Driven Control Interface is Patent-
Eligible
Patent Owner contends that the claims of the ’799 patent “claim a
gesture-driven control interface for computing hardware to facilitate
complex and intricate gaming movements of pluralities of objects on a
virtual field with predetermined touch and swipe commands.” PO Resp. 13
(Ex. 2001 ¶¶ 114–134; Ex. 2012 ¶¶ 7–24). As such, Patent Owner contends
that “In Re Smith is inapplicable here, because — as shown in the intrinsic
evidence — the ’799 patent is directed to an interface for an entire universe
of games.” Id. (citing Ex. 1001, 17:17–31). In support, Patent Owner
asserts that “Dr. Shamos[] confirms that the ’799 patent claims are not
directed to rules for playing any particular game, but to a technical solution
that solved technical problems associated with playing various types of
games on touch-screen devices.” Id. at 13–14 (citing Ex. 2001 ¶¶ 114–134;
Ex. 2012 ¶¶ 7–16).
To the extent that Patent Owner’s argument differs from its argument
discussed in Section II.B.5.a above, we are not persuaded that the challenged
claims are directed to a gesture driven control interface. Rather, as
discussed at length in Section II.B.5.a, the challenged claims are directed to
a computer implemented method, computer program product, and system for
executing a series of steps related to a computer game.
Although we agree with Patent Owner that gesture driven control
interfaces could be patentable-eligible, we have determined in Section
II.B.5.a above that none of the challenged claims are directed to such a
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device and Patent Owner’s argument to the contrary does not convince us
that the challenged claims are otherwise patent-eligible. Moreover, as also
discussed at length in Section II.B.5.a, we do not agree with Patent Owner’s
characterization of In re Smith.
Patent Owner’s additional arguments on pages 18–41 of its Response
are premised on its contention that the claims are directed to a gesture driven
control interface and that in order for the claims to embody patent-ineligible
subject matter, the claims must be directed to implementation of a particular
game. As we have determined that the challenged claims are not directed to
a gesture driven control interface and that In re Smith, Planet Bingo, and
other cited case law are not limited to claims embodying a particular game,
we reject Patent Owner’s further arguments in this regard.
e. Conclusion Regarding Patent-Ineligible Subject Matter
Petitioner explains why the challenged claims recite patent-ineligible
subject matter. Pet. 29–51. After considering Patent Owner’s arguments
discussed above and the record evidence in the proceeding, we agree with
Petitioner that the claims of the ’799 patent are directed to following rules or
instructions, which Petitioner phrases as “the abstract idea of associating
game objects and moving one or more of the objects.” Pet. 29. As such, the
claims are directed to patent-ineligible subject matter.
6. Whether the Challenged Claims Include Additional Elements
that Integrate the Judicial Exception Into a Practical
Application
Patent Owner contends that “[e]ven if the Board finds that the claims
are directed to a judicial exception, the claims are patent eligible because
they claim a specific user interface which integrates any alleged judicial
exception into a practical application.” PO Resp. 42 (citing Ex. 2006, 5–6;
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Guidance). In support of this contention, Patent Owner asserts that “the
claimed gesture-driven user interface is not a ‘generalized step[]’ performed
on a conventional computer.” Id. (citing Dec. 18–19; Pet. 29). Comparing
the ’799 Patent to the patent-in-dispute in Enfish, Patent Owner asserts that
the ’799 patent specification identifies the technical problem
(the lack of any game interface that was “simple-to-operate” but
also allowed for complex movement of pluralities of virtual
objects on virtual game fields) and proposes a specific
implementation of a solution to that problem (a gesture-driven
interface that processes specific touch-gestures to perform
complex movements of displayed objects).
Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).
In addition, Patent Owner contends that the claims of the ’799 patent
are “directed to an improved user interface for computing devices,” like the
claims in Core Wireless. PO Resp. 43 (quoting Core Wireless Licensing
S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018).
Specifically, Patent Owner asserts that the challenged claims “are not
directed to an abstract idea because they reflect an ‘an improvement in the
technical field of touch screen computer games.’” Id. (citing Ex. 2001 ¶¶
119–134; Ex. 2012 ¶¶ 17–20). Patent Owner also asserts that “the claimed
invention does not monopolize the idea of ‘associating game objects and
moving one or more of the objects,’ because the claims require a particular
manner of associating and moving objects using a specific gesture driven
control interface.” Id. (citing Ex. 2001 ¶¶ 119–125; Ex. 2012 ¶¶ 19–20;
Core Wireless). In support of these assertions, Patent Owner states that “Dr.
Shamos[] testifies, this was an improvement in the field of technical user
interfaces for computing devices.” Id. 43–44 (citing Ex. 2012 ¶ 18). Patent
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Owner also contends that the challenged claims recite a touch screen. See
PO Resp. 44.
Replying to these arguments, Petitioner contends that “Core Wireless,
as well as other user interface case precedent, is easily distinguishable from
the ’799 claims” because “most of the claims do not recite an ‘interface’ at
all, much less a ‘specific user interface.’” Pet. Reply 9. In support of this
contention, Petitioner asserts that “[d]uring his deposition, PO’s expert
clarified that his usage of ‘by an interface,’ did not mean that the
touchscreen itself does any processing.” Id. at 9–10 (quoting Ex. 1005,
78:22–79:1) (“what I just said was that very often, when we refer to a user
interface, we include all of the software that’s necessary to interpret the
inputs that are given by the human, in which case it would include
processing”); id. at 52:16–20 (“In general, the touchscreen is dumb. It
reports that a touch has occurred here, at a particular grid coordinate. The
understanding of what that means is performed by software that sits behind
the touchscreen that is reading its inputs.”); 79:13–18 (“input face just has to
have the capability that’s recited in the patent, which is that it has to be
capable of detecting a touch input and transferring the input details to the
control unit”); Ex. 1005, 67:8–10).
Petitioner asserts further that “PO’s expert admitted that ‘[t]here’s no
specific screen layout described,’ when questioned as to whether the claims
describe anything specific about the structure of the visible user interface.”
Pet. Reply 10 (citing Ex. 1005, 108:11–109:8). According to Petitioner,
“[t]his fact distinguishes the ’799 claims from those in Core Wireless, DDR
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Holdings,4 [and] Trading Technologies (2017),5 . . . because those cases
were found eligible based on reciting a specifically structured graphical
user interface paired with functionality directly related to the specific
structure of the graphical user interface.” Id. With this distinction in mind,
Petitioner submits that “PO’s expert admitted that the hardware recited in the
’799 claims (display, input face) were known” and that “[i]t is well-
established case law that mere programming does not transform a generic
computer into a special purpose computer. Id. at 12 (citing Ex. 1005, 82:7–9;
Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed.
Cir. 2015); see also M.P.E.P. § 2106).
Regarding claim 15, Petitioner contends that “the recitation of a
graphical user interface is found only in the preamble of claim 15, which is
not limiting in this instance since the body of claim 15 never even refers
back to the graphical user interface.” Pet. Reply 11. Patent Owner does not
respond to these arguments as set forth in Petitioner’s Reply. See generally
PO Sur-Reply.
We agree with Petitioner that the challenged claims do not integrate
the judicial exception into a practical application. Pet. Reply 9. The
claimed “input face” is simply not claimed in sufficient detail to require the
type of specific user interface found to transform the claims into a practical
application in Core Wireless, DDR Holdings, and other similar cases.
Rather, as admitted by Patent Owner’s expert, the claims recite a generic
“input face.” See Ex. 1005, 52:16–20, 78:22–79:1, 79:13–18, 108:11–109:8.

4 DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).
5 Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1084 (Fed.
Cir. 2019).
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Even claim 15, which recites a graphical user interface in its preamble, does
not provide any further details of this interface. Ex. 1001, 26:41–27:3.
For example, in the step of “accepting, via an input face configured to
detect a touch operation, operation information regarding a touch operation
performed by a user,” as recited in claims 1 and 8, the claim does not recite
any elements that require a specific “input face” or indicate that the claimed
“input face” is anything other than a generic device. Ex. 1001, 24:35–37,
25:43–45. The same is true for claim 15’s recitation “accept, via an input
face configured to detect a touch operation, operation information regarding
a touch operation performed by a user.” Id. at 26:50–52. Although it may
be true, as Patent Owner contends, that the Specification of the ’799 patent
identifies a technical problem and proposes a specific solution to that
problem, neither the technical problem nor its solution is captured by the
challenged claims. PO Resp. 42 (citing Enfish, 822 F.2d at 1339). Thus, we
do not find the challenged claims to be similar to those found to be patent-
eligible in Enfish.
For these reasons, we agree with Petitioner that the challenged claims
do not integrate the judicial exception into a practical application.
7. Whether the Claims Provide an Inventive Concept
Patent Owner contends that “the limitation “accepting, via an input
face configured to detect a touch operation, operation information regarding
a touch operation performed by the user’ (‘touch operation limitation’) was
not a routine and conventional activity to a person of skill in the art.” PO
Resp. 45–46 (citing Ex. 1001, 24:30–55, 25:36–64, 26:41–27:3; Ex. 2012 ¶¶
21–24). In support of this contention, Patent Owner asserts that “[a]s Dr.
Shamos testifies, the functions claimed in the ’799 patent are not disclosed
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by Exhibit 1003, nor does the ’799 patent’s specification show that the
claimed functions were routine and conventional to a skilled artisan.” Id. at
46 (citing Ex. 2001 ¶¶ 91–107; Ex. 2012 ¶ 22; Ex. 2005, 5). Patent Owner
contends further that “[t]he Petitioner has only identified that the claims
utilize known hardware (Pet 41-42); but Petitioner has not shown that the
patent claims only such hardware and generic computer processing functions
(Pet 43–44, 19).” Id. at 46–47 (citing Ex. 2001 ¶¶ 91–107; Ex. 2012 ¶ 23;
SuperCell OY v. Gree, Inc., PGR2018-00071 (PTAB Jan. 23, 2019)).
According to Patent Owner, “Exhibit 1003 is argued as disclosing the touch
operations. But it does not disclose or suggest the claimed touch operations
as driving the functions recited in Patent Owner’s claims.” Id. at 47 (citing
Ex. 2012 ¶¶ 22–24).
In support of these contentions, Patent Owner makes four arguments.
We address each of these arguments below.
a. Whether the Accepting Limitation is Routine and
Conventional
Patent Owner contends that this limitation is not routine and
conventional because “[t]he claimed interface here must distinguish between
the types of touch gestures (e.g. touch operation versus specifying
operation).” PO Resp. 47 (citing Ex. 1003, Ex. 2012 ¶¶ 21–24). In support
of this contention, Patent Owner asserts that “[o]peration information is
defined in the specification as information ‘regarding a touch operation
performed by a user,’ which can include a ‘direction operation indicating a
certain direction,’ ‘a specifying operation that specifies a first object,’ or a
touch operation ‘indicat[ing] the coordinates of one point.’” Id. at 47–48
(citing Ex. 2012 ¶ 22). According to Patent Owner, “Petitioner presents no
evidence or even argument that any ‘operation information,’ as defined in
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the specification, was conventionally detected by a touch-screen interface.”
Id. at 48 (citing Ex. 2012 ¶ 22).
Replying to this argument, Petitioner contends that “[u]nder
Berkheimer, ‘improvements in the specification, to the extent they are
captured in the claims, create a factual dispute regarding whether the
invention describes well-understood, routine, and conventional activities, so
we must analyze the asserted claims and determine whether they capture
these improvements.’” Pet. Reply 12 (citing Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018)). Petitioner notes that in its Petition it
“argued that the claims do not capture the purported improvement of
performing complex movements of a group of game objects with simple
gestures.” Id. at 12–13 (citing Pet. 45 (citing Ex. 1001, 1:29–35, 23:27–35)).
Further noting that Patent Owner has articulated a different improvement
stating, “the inventive concept is the user interface capable of processing
swipe operations for controlling pluralities of units,” Petitioner asserts that
the claims do not capture this purported improvement for at least three
reasons. Id. at 13 (citing PO Resp. 54).
First, Petitioner contends that “processing swipe operations for
controlling pluralities of units” is not an improvement over the prior art. Pet.
Reply 13. According to Petitioner, “as admitted by PO’s expert, and as
shown by the prior art in the background section of the specification, a swipe
movement for moving a group of objects was known.” Id. (citing Ex. 1005,
37:10–17, 38:17–22, 94:17–25, 164: 3–6, 184:16–185:2; 193:15–194:23;
Ex. 2002 at 4–5). Petitioner asserts further that “[i]n particular, the ’799
patent describes a prior art system that disclosed a swipe type of operation to
move a group of video game objects.” Id. (citing Ex. 1001, 1:8–28). Based
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on these assertions, Petitioner argues that “processing swipe operations to
move a group of objects cannot be an ‘improvement.’” Id.
Second, Petitioner contends that “PO’s expert identified movement of
a group of items simultaneously as a novel aspect of the claims, important to
the claimed solution, and as an aspect providing strategic improvement.”
Pet. Reply. 13 (citing Ex. 1005, 89:10–17, 90:4–9, 185:9–16). But,
according to Petitioner, “the claims do not require swipe operations ‘for
controlling pluralities of units.” Id. Rather, Petitioner asserts, the claims
“only require that ‘one or more’ of the associated objects are moved.” Id. at
14 (citing Ex. 1005, 85:15–21, 86:3–5). Petitioner submits that “PO’s expert
admitted that the independent claims do not require movement of more than
one object of the plurality.” Id. Thus, Petitioner argues that the claims do
not capture this purported improvement. Id.
Third, Petitioner contends that “PO cannot successfully argue that the
claims recite a technical solution to the problems associated with touch
screen devices,” because “[t]he recited claim limitations and their associated
operations merely allow the game player to perform various tasks more
quickly or easily.” Pet. Reply 14 (citing PO Resp. 53; Ex. 1005, 46:8–
49:12). Petitioner asserts that “[t]hese aspects make the user ‘faster and
more efficient, not the computer. This is not a technical solution to a
technical problem.’” Id. (citing Trading Technologies, 921 F.3d at 1090).
Patent Owner disagrees, asserting that Petitioner’s arguments ignore
the technology recited in the claims. PO Sur-Reply 4. In support, Patent
Owner quotes Dr. Shamos’s testimony that ‘“[t]his invention improved both
syntax and semantics. It allowed gestures . . . and also . . . movements that
previously were not possible because the touch-gestures were not possible.’”
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Id. (citing Ex. 1005, 37:5–9, 37:14–20, 94:22–95:6, 131:19–132:8, 182:2–9,
183:5–6).
We agree with Petitioner that the challenged claims do not capture
Patent Owner’s purported improvement for all of the reasons discussed by
Petitioner above. Moreover, during the oral argument, we questioned the
parties as to how the claims capture the alleged improvements in syntax and
semantics, but did not receive a clear answer on this point. See Tr. 32–33.
Petitioner responded that syntax and semantics aren’t in the claims. Id. at
41. According to Petitioner, Patent Owner wants “to talk about the claim at
a high level and talk about the syntax and the semantics to distract from the
fact that that is not what the claim says.” Id. We agree.
b. Whether the Associating, Determining, and Moving
Limitations Are Routine and Conventional
Patent Owner contends that “Petitioner isolates the ‘associating,’
‘determining,’ and ‘moving’ limitations and argues that each was routine
and conventional because they ‘were known functions in video games.’” PO
Resp. 50 (citing Pet. 44) (internal citations omitted). Patent Owner asserts
that “taking each limitations in isolation and establishing that each is
individually known is not the law.” Id. at 50–51 (citing Guidance 4; McRO,
837 F.3d at 1313). With this understanding in mind, Patent Owner argues
that “[t]he ’799 patent distinguishes between the claimed types of touch-
gestures; the claimed invention performs different movements depending on
the type of operations that the user inputs” and that “[e]stablishing that
touch-screens were known in the art has no bearing on the eligibility
analysis.” Id. at 51 (citing Ex. 2001 ¶¶ 97–99; Ex. 2012 ¶¶ 22–24). Patent
Owner asserts further that “Petitioner has not even established that these
limitations were individually disclosed in the prior art, much less that they
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were in combination routine and conventional to a person of skill.” Id.
(citing Ex. 2001 ¶¶ 97–99, 105; Ex. 2012 ¶¶ 21–24).
In reply, Petitioner contends that “under Alice and its progeny, the
Step 2B inquiry considers only the elements ‘additional to’ the abstract idea
as potentially ‘well-understood, routine, conventional.’” Pet. Reply 17–18
(citing Alice, 573 U.S. 332–224; BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018)). Thus, according to Petitioner, “the Board
need not consider in Step 2B the limitations within the abstract idea to which
the claims are directed.” Id. at 18.
In addition, Petitioner contends that it “specifically addressed each of
the elements additional to the abstract idea individually and in combination,
including each of the claimed functions, along with citations to case law
showing those functions as conventional.” Pet. Reply 18 (citing Pet. 41–46).
According to Petitioner, “[t]he Petition provided evidence both from the
’936 reference and relevant case precedent.” Id. at 18–19 (citing Pet. 41–44;
Dec. 19).
Petitioner also directs our attention to Japanese publication no.
JP2009-119288 (Exhibit 1002, “Kamikado”) and its certified translation
(Exhibit 1006) as supporting its position that the additional elements were
known. Pet Reply 19. Specifically, Petitioner contends that “FIG. 10 [of
Kamikado] shows moving a group of characters using a swipe type motion
of a stylus on a touch screen.” Id. (citing Ex. 1006, 19, 53). Petitioner
asserts that “[w]hen shown Figures 1–10 during the deposition, PO’s expert
stated that it would not be a surprise that Figures 9 and 10 show a stylus on a
touch screen dragging a set of objects as a group.” Id. (citing Ex. 1005,
199:7–22; Ex. 1006, FIGS. 9–10). Petitioner asserts further that “[t]he game
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console shown in Figure 1of Ex. 1006 is a Nintendo DS” and that “[t]he
Nintendo DS was the one of the best-selling game consoles of all time, with
over 150 million devices sold 2000–2013.” Id. at 19–20 (citing Ex. 1006,
FIG. 1; Ex. 1005, 187:20–188:4; Ex. 1007,
https://web.archive.org/web/20170428053322/https://www.nintendo.co.jp/ir/
finance/historical_data/xls/consolidated_sales_e1703.xlsx). Petitioner
submits that “PO’s expert testified during his deposition: ‘If the product -- if
the limitation were apparent to a user of the product and the product had
been sold to millions of people, then it would probably be routine and
conventional.’” Id. at 20. Thus, according to Petitioner, “there is ample
evidence – although not needed for Step 2B – that the functions of the
claims, were well-known, routine, and conventional prior to the ’799
patent.” Id. Patent Owner does not respond to these arguments in its Sur-
Reply. See generally PO Sur-Reply.
We agree with Petitioner that, under Alice step two (Step 2B of the
Guidance), we consider the elements in addition to those subject to the
judicial exception to determine if the claim provides an inventive concept.
See Pet. Reply. 17–18. As the “associating,” “determining,” and “moving”
limitations of claim 1 (as well as the similar limitations in claims 8 and 15)
are subject to the judicial exception, these limitations cannot provide an
inventive concept sufficient to demonstrate that the challenged claims recite
significantly more than the judicial exception. Moreover, even if these
limitations could be considered to recite substantially more than the judicial
exception, we determine that Petitioner has demonstrated that they were
well-understood, routine, and conventional. Pet. 41–44; Pet. Reply 18–20.
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c. Whether the Limitations as an Ordered Combination
Transform the Claims
Patent Owner contends that “the Petitioner’s over-generalized abstract
idea, if ‘stripped away’ from the claims, would actually leave at least three
of the core features of the invention behind including the ‘input face,’ ‘touch
operation’ and ‘direction operation’ limitations.” PO Resp. 51–52 (citing
id., Section II.B.2). Patent Owner also contends, as in its arguments
discussed in Section II.B.7.b above, that “Petitioner’s attorney argument
regarding the ordered combination is defective, because even if the
individual claims are directed to conventional computer components, as
discussed above, Petitioner fails to show that the processing functions, e.g.
the ordered combination of the components, here were routine or
conventional.” Id. at 52 (citing Bascom, 827, F.3d at 1350).
In its Reply, Petitioner considers the limitations individually and as an
ordered combination. See, e.g., Pet. Reply 18. Thus, Petitioner’s response
to this argument is the same as to the argument addressed in Section II.B.7.b
above. For the same reasons discussed in that Section, we agree with
Petitioner.
d. Whether the Challenged Claims Capture the
Improvements Described in the Specification
Patent Owner’s argument on pages 53–54 of its Response that the
challenged claims capture the improvements described in the Specification
of the ’799 patent is premised on Patent Owner’s contention that the
challenged claims “are directed to a touch gesture-driven user interface
applicable for use with a universe of games.” PO Resp. 53 (citing Ex. 1001,
24:30–55; Ex. 2001¶¶ 92–96). As we discussed in Section II.B.5.a above,
we do not agree that the claims are directed to such a device. As such, the
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challenged claims do not capture the alleged improvements described in the
Specification as identified by Patent Owner.
e. Whether Petitioner Has Demonstrated That the
Dependent Claims Are Routine and Conventional
Patent Owner contends that “Petitioner fails to provide any evidence
or argument showing that the dependent claim limitations are routine and
conventional under Guidance Step 2B.” PO Resp. 54.
In reply, Petitioner asserts that it “provided six pages addressing the
dependent claims, including cites to numerous cases, showing why the ‘high
level of generality’ recited in the dependent claims cannot provide an
inventive concept.” Pet. Reply 20–21 (citing Pet. at 46–51). Petitioner
asserts further that “[t]he Federal Circuit has repeatedly held that expert
testimony is unnecessary to invalidate a patent under § 101, and that this
issue can often be decided at the pleading stage in district court litigation.”
Id. at 21 (citing Berkheimer, 881 F.3d at 1368; Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1317–18 (Fed. Cir. 2016)). Petitioner also
asserts that “[t]he Federal Circuit also has relied solely upon the intrinsic
record to find a patent lacking an inventive concept under step two of Alice.
Id. As an example, Petitioner cites Internet Patents Corp. v. Active Network,
Inc., for the proposition that the claims “recited only ‘well-understood,
routine, conventional activities previously known’ [] insufficient to supply
an ‘inventive concept.’” Id. (citing Internet Patents, 790 F.3d 1343, 1348
(Fed. Cir. 2015)).
Petitioner contends that “the Federal Circuit has relied upon case law
in conjunction with the specification — as Petitioner does here — to
determine whether a patent lacks an inventive concept.” Pet. Reply 21.
According to Petitioner, “in three different cases the court determined that
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the specification described generic computer components, which by analogy
to Alice, was ‘insufficient to add an inventive concept to an otherwise
abstract idea.’” Id. at 21–22 (citing In re TLI Commc’ns. LLC Pat. Litig.,
823 F.3d at 614; In re Guldenaar, 911 F.3d at 1161; In re Smith, 815 F.3d at
819).
In addition, Petitioner asserts that “the dependent claims do not
capture the alleged improvements.” Pet. Reply 22. Noting that “PO’s expert
identified two alleged improvements of the claims: the ability to move
objects simultaneously and the ability to use more than one hand for
gestures,” Petitioner submits that “the dependent claims also do not require
moving a plurality of objects or using more than one hand.” Id. (citing Ex.
1005, 185:9–23). Specifically addressing claim 3, Petitioner contends that
“[a]t best, claim 3 requires a separate specifying operation (a touch) along
with the direction operation (swipe) of claim 1,” which does not require
using more than one hand. Id.
Patent Owner does not further address this argument in its Sur-Reply.
See generally PO Sur-Reply.
None of the dependent claims recite additional limitations capable of
capturing the alleged improvements. See Ex. 1001, 24:56–25:34, 25:64–40.
For example, claim 2 simply recites more detail regarding limitations set
forth in claim 1 without adding additional elements that capture the alleged
improvements. Id. at 24:56–64. As discussed in Sections II.B.7.b and c
above, Petitioner has demonstrated that these limitations are well-known,
routine, and conventional. Pet. 41–44. The same is true for dependent
claims 4–7 and 9–14. Even claim 3, which as noted by Petitioner, adds an
object that is prevented from being moved by a presence in the region and
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that is not moved by the movement processor, does not capture the alleged
improvements because these limitations are encompassed by the judicial
exception.
8. Conclusion Regarding Patent-Ineligible Subject Matter
As discussed above in Section II.B.5 above, we find that the claims at
issue in this case are similar to those found to be patent-ineligible in In re
Smith. As discussed above, in Section II.B.5, we agree with Petitioner that
the challenged claims recite following rules or instructions (a certain method
of organizing human activity), which Petitioner phrases as “the abstract idea
of associating game objects and moving one or more of the objects,” for the
reasons discussed in Section II.B.5.a. Pet. 29. Further, as discussed in
Sections II.B.7–8 in response to Patent Owner’s arguments, we agree with
Petitioner that the challenged claims do not integrate the abstract idea into a
practical application and that the additional elements of the claims
considered alone or in combination, do not capture the alleged
improvements in Specification relied on by Patent Owner. In addition, we
agree that to the extent that it must be shown that these elements are well-
known, routine, and conventional, Petitioner has shown that they are, as
discussed in Sections II.B.7.d and e. Having considered the entire record
before us in the proceeding, we find that the challenged claims are directed
to patent-ineligible subject matter.
C. Claims 1–20 as Indefinite Under 35 U.S.C. § 112(b)
Petitioner asserts that claims 1–20 fail to comply with the
requirements of 35 U.S.C. § 112(b). Pet. 51–60.
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1. Legal Standard
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014); see In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014)
(holding a claim is indefinite when it contains words or phrases whose
meaning is “unclear in describing and defining the claimed invention”).
“The claims, when read in light of the specification and the prosecution
history, must provide objective boundaries for those of skill in the art.”
Interval Licensing, LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
We determine that claims 1–12 are not indefinite under the Nautilus standard
and the Packard standard.
2. Level of Ordinary Skill in the Art
In the Petition, Petitioner does not proffer a definition of the level of
ordinary skill in the art. See generally Pet. In its Response, Patent Owner
does not provide a definition either. See generally PO Resp. In its Reply,
Petitioner relies on the testimony of Patent Owner’s expert, Dr. Shamos, that
a person of ordinary skill in the art has “two years of experience
implementing interactive software having touchscreen user interfaces.” Pet.
Reply 2 (citing Ex. 2001 ¶ 38). In its Sur-Reply. Patent Owner essentially
agrees with Petitioner’s definition, but asserts that this definition does not
require such a person to have personally written code for touchscreen user
interfaces. See PO Sur-Reply 5. Having reviewed the entire record in this
proceeding, we agree with both Petitioner and Patent Owner that a person of
ordinary skill in the art would have had “two years of experience
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implementing interactive software having touchscreen user interfaces” as
this is consistent with the level of ordinary skill reflected in the ’799 patent
and evidence of record. Pet. Reply 2; PO Sur-Reply 5. We further agree
with Patent Owner that such a person need not have personally written code
for such implementation for the same reasons.
3. Analysis
Petitioner asserts that the claim terms “direction,” “direction
operation,” and “moving . . . one or more of the plurality of associated
objects as a group” are unclear. Pet. 53–60. Petitioner does not provide
testimonial support for this challenge. See id.
Petitioner asserts that “[t]he term ‘direction’ renders the claims
indefinite because it is ‘amendable to two or more plausible claim
constructions.’” Pet. 53 (citing Ex Parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential)). In support of this assertion, Petitioner argues
that
the term “direction” is used in the specification to mean two
disparate things: (1) to indicate a direction of movement or
trajectory, e.g., “a direction from the start point to the end point”
of a swipe operation, and (2) to indicate a direction parameter
that the character “has” related to its position, e.g., the
“direction” the character is facing.
Id. (comparing Ex. 1001, 4:23-24 with Ex. 1001, 17:56-64; citing Figs. 5A–
5B).
Petitioner also asserts that “[t]he term ‘direction operation’ renders the
claims indefinite because it is also amen[]able to two or more plausible
claim constructions.” Pet. 57. In support of this assertion, Petitioner argues
that “the term ‘direction operation’ is used in the specification to mean two
disparate types of movement: either (1) moving a group of objects in a
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direction or (2) changing a (facing) direction of a group of objects to a
direction (a different facing), depending on the circumstances.” Id. (citing
Ex. 1001, 4:44–50, 5:32–40).
In addition, Petitioner asserts that “absent the conditions recited in the
dependent claims as to why a specified object would not move, the
independent claims on their face are unclear as to how many and which of
the plurality of associated objects correspond to the ‘one or more’ that would
move.” Pet. 58. According to Petitioner, “given even the smallest plurality
of two objects, it is unclear whether one or both would move, and, if only
one how the system would know which if only one.” Id. at 58–59.
Patent Owner responds that our Institution Decision “correctly
credited Dr. Shamos’s testimony and found that the claims are not
indefinite.” PO Resp. 59 (citing Dec. 21–24). Patent Owner contends that
“[u]nder § 112(b), a claim is not indefinite unless it fails to ‘inform, with
reasonable certainty, [a POSITA] about the scope of the invention”’ in light
of ‘the specification[,] and the prosecution history.’” Id. (citing
Nautilus,Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)).
Contending that we “evaluated, and rejected, each of Petitioner’s arguments
based on the meaning of ‘direction/direction operation,’ antecedent basis,
and the purported breadth of the claims,” Patent Owner asserts that “as Dr.
Shamos testifies, Petitioner’s arguments are unsupported and without merit.
Id. (citing PO Prelim. Resp. 26–34; Ex. 2001 ¶¶ 78–90).
In Reply, Petitioner contends that Patent Owner’s arguments are
waived because “PO failed to repeat its indefiniteness arguments in the
POR.” Pet. Reply 22. Petitioner contends further that Dr. Shamos’s
testimony should not be accorded weight, because Dr. Shamos is not a
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person of ordinary skill in the art. Id. at 23–24. In addition, Petitioner
asserts that “[t]he term ‘direction’ renders the claims indefinite because it is
‘amen[]able to two or more plausible claim constructions.’” Id. at 24.
Petitioner also submits that “[t]he independent claims on their face are
unclear as to how many and which of the plurality of associated objects
correspond to the ‘one or more’ that would move according to claims 1, 8,
and 15.” Id. at 26. In support of this submission, Petitioner contends that
“[d]uring his deposition, [Patent Owner]’s expert admitted that the claims
are unclear on this point when asked how the reader knows how many
objects are moved: ‘You don’t know from the claim itself.’” Id. (citing Ex.
1005, 171:13–172:3).
In its Sur-Reply, Patent Owner contends that its “arguments explained
that the §112(b) ground failed for the same reasons already explained by the
Board at institution.” PO Sur-Reply 5 (citing PO Resp. 59) (internal
citations omitted). Patent Owner asserts that “[c]iting to the existing record
is not ‘incorporation by reference.’” Id. Although Petitioner is correct that
Patent Owner may not incorporate by reference arguments from its
Preliminary Response, we note that Patent Owner’s discussion of the
reasoning in the Institution Decision provide sufficient clarity on the
§ 112(b) ground so as to overcome concerns of waiver.
Moreover, responding to Petitioner’s contention that Dr. Shamos is
not a person of ordinary skill in the art, Patent Owner further explains that
“Dr. Shamos is well-versed with touchscreen user interfaces/software,” that
“code writing is not a POSITA requirement,” and that “Dr. Shamos has
programmed touchscreen user interfaces.” PO Sur-Reply 5 (citing Ex. 2001
¶¶ 4–12, 29; Ex. 1005, 25:8–28:12). That response provided Petitioner with
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further notice of Patent Owner’s arguments on the § 112(b) ground. Having
reviewed Dr. Shamos’s credentials, as well as his testimony, and in
accordance with the level of ordinary skill in the art discussed in Section
II.C.2 above, we agree with Patent Owner on all three counts. See Ex. 2001
¶ 12; Ex. 1005, 25:8–28:12.
Patent Owner also disagrees with Petitioner’s characterization of Dr.
Shamos’s testimony regarding the “one or more” limitation. PO Sur-Reply
5. According to Patent Owner, “Dr. Shamos said nothing about the claim
being unclear . . . Rather, Dr. Shamos testified that the “moving” limitation
is not limited to specific objects . . . but requires moving “one or more”
objects.” Id. (citing Pet. Reply 26; Ex. 1005, 171:4–173:20). Patent Owner
also contends that “Petitioner has not cited any authorities (there is none)
that a claim must recite a specific number of objects to be definite.” Id.
Having reviewed Dr. Shamos’s testimony on this point, we agree with Patent
Owner that Dr. Shamos says nothing about this limitation being unclear.
We find unpersuasive Petitioner’s contentions regarding the claim
terms “direction” and “direction operation,” as well as the limitation
“moving . . . one or more of the plurality of associated objects as a group.”
Dec. 24. Specifically, we credit Dr. Shamos’s testimony that the terms
“direction” and “direction operation” is not indefinite and that, although the
limitation “moving . . . one or more of the plurality of associated objects as a
group” may be broad, it is not indefinite. Id. Having considered the entire
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record in this proceeding, Petitioner has not demonstrated that claims 1–20
are indefinite.
4. Conclusion Regarding 35 U.S.C. § 112(b)
For the reasons discussed above, we are not persuaded that Petitioner
has demonstrated that claims 1–20 fail to comply with 35 U.S.C. § 112(b).
D. Claims 2–6, 9–13, and 16–19 as Failing to Further Limit the
Subject Matter of the Claim(s) on Which They Depend under 35
U.S.C. § 112(d)
Petitioner asserts that claims 2–6, 9–13, and 16–19 fail to comply with
the requirements of 35 U.S.C. § 112(d). Pet. 60–63. Regarding claims 2, 9,
and 16, Petitioner notes that claims 2, 9, and 16 recite similar limitations and
treats claim 2 as representative of all three claims. See Pet. 61. Petitioner
asserts that claim 2’s limitation “wherein the first object is excluded from
the group of one or more of the plurality of associated objects that is moved
by the moving processor” does not further limit claim 1. Id. According to
Petitioner, this limitation broadens claim 1. Id.
Regarding claims 3, 10, and 17, Petitioner notes that claims 3, 10, and
17 recite similar limitations and treats claim 3 as representative of all three
claims. See Pet. 62. Petitioner also argues that claims 4–6, 11–13, 18, and
19 are deficient for the same reasons. Thus, Petitioner treats claim 3 as
representative of these claims as well.
Petitioner asserts that claim 3’s limitation “a first object that is
prevented from being moved by the presence of said region is not moved by
the movement processor” broadens the claim from which it depends. See
Pet. 62-63. Petitioner also asserts that claims 6, 13, and 19 recitations with
respect to the second group also broadens these claims. Id.
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In its Response, Patent Owner contends that “Petitioner relies on
incomplete hypotheticals and focuses entirely on the numbers of objects
moved, while not addressing the underlying claimed functions and
processing features as a whole.” PO Resp. 57–58 (citing Dec. 25–26)
(internal citations omitted). According to Patent Owner, “a correct analysis
of the dependent claims, in viewing all of the claimed features, shows that
the dependent claims properly add limitations that are narrower in scope
than the independent claims.” Id. at 58 (citing PO Prelim. Resp. 22–33).
Notably, Petitioner does not reply to Patent Owner’s showing that the
dependent claims are further limiting. See generally Pet. Reply. Having
reviewed the entire record in this proceeding, we agree with Patent Owner
that claims 2–6, 9–13, and 16–19 further limit the subject matter of the
claims from which they depend. Specifically, we agree with Patent Owner
that Petitioner’s analysis does not consider the claims as a whole, but rather
isolates one limitation from each group of dependent claims and reads it out
of context.
For these reasons, Petitioner has not demonstrated that claims 2–6, 9–
13, and 16–19 fail to comply with 35 U.S.C. § 112(d).
E. Conclusion
For the reasons discussed above, we are persuaded that Petitioner has
met its burden of showing, by a preponderance of the evidence, that claims
1–20 of the ’799 patent are unpatentable on at least one ground set forth in
the Petition.

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IV. ORDER
After due consideration of the record before us, and for the foregoing
reasons, it is:
ORDERED that claims 1–20 of the ’799 patent are held unpatentable;
and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–20 101 Eligibility 1–20
1–20 112(b) Indefiniteness 1–20
2–6. 9–
13, 16–
18
112(d) Further Limiting 2–6, 9–13,
16–18
Overall
Outcome
1–20
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For PETITIONER:

Jennifer R. Bush
Michael J. Sacksteder
FENWICK & WEST LLP
jbush-ptab@fenwick.com
msacksteder@fenwick.com

For PATENT OWNER:

Scott McKeown
Matthew J. Rizzolo
scott.mckeown@ropesgray.com
matthew.rizzolo@ropesgray.com