United States: Battling Boredom While Building Virtual Cities: PTAB Denies Claims As Patent-Ineligible

Last Updated: January 23 2019
Article by Douglas L. Clark and Carl A. Kukkonen III
Most Read Contributor in United States, September 2019

Video game companies occasionally will take to the PTAB, seeking to invalidate each other's patents. Mobile game developer Supercell Oy (petitioner) filed a Post Grant Review ("PGR) after learning that the USPTO issued U.S. Pat. No. 9,597,594 ("'594 patent") to another gaming company—Gree, Inc. (patent owner). The '594 patent claims a method for gameplay in which players involved in building virtual cities create and apply templates to replicate game content (such as soldiers, barricades, weapons, etc.) in different locations on a game map. One issue the '594 patent sought to solve was the boredom and monotony experienced by players having to manually copy game content. By being able to rapidly apply changes to the game map rather than manually update each game piece, presumably the monotony of building virtual cities would be alleviated.

The PGR concluded on January 2, 2019, when the PTAB issued its Final Written Decision ruling that that the majority of the '594 patent claims were patent ineligible under 35 U.S.C. § 101. Supercell Oy v. Gree, Inc., Case PGR2018-00006 (PTAB Jan. 2, 2019). In finding several of the claims unpatentable, the PTAB applied the Alice two-step test by making a determination as to whether the claims: (1) were directed to a "patent-ineligible concept," such as an abstract idea, and (2) included an "inventive concept." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014). The PTAB found that petitioner met the burden in showing that claims 1, 8, and 10-20 were unpatentable, but failed to meet the burden for claims 2-7, and 9. PGR2018-00006 at 2-3.

In the Final Written Decision, the PTAB instructs that in order to find claims unpatentable, every claim limitation must be addressed somewhere during the analysis, whether it be under step one or step two of Alice. Id. at 15, 18. In other words, in determining a patent-ineligible concept (step one), all claim limitations do not need to be accounted for, but those that are not accounted for during step one, petitioner must address in step two. Id.

Here, the PTAB found independent claim 12 to be representative of the '594 patent claims, finding that it was directed to "creating and applying a template of positions of one or more game contents." Id. at 24. The PTAB determined this to be an abstract idea under Alice step one, because by default any template must be created and applied. Id. And further, "[w]ith respect to 'positions of one or more game contents,' templates must involve placement of content relative to other content." Id. at 25. Moreover, the "independent claims recite nothing more than automating tasks that can be performed manually by a human." Id. at 31. For these and other reasons, "creating and applying a template of positions of one or more game contents" was found to be an abstract idea. Id. at 37.

To the extent that claims contained additional limitations—beyond the abstract idea found in claim 12 of "creating and applying a template of positions of one or more contents"—petitioner had the burden of showing that those limitations were "well-understood, routine, or conventional," satisfying step two of Alice. See id. at 38.

Specifically, petitioner demonstrated that additional limitations in claims 1, 8, and 10-20 were either not inventive or contained the same abstract idea as claim 12 without more. For claims 1, 10-12, the petitioner provided evidentiary support that the added limitations—"computer"; "server" or "hardware processor"; "storage unit"; and "memory device"— were "well-understood, routine, conventional." Id. at 41. For claims 8 and 18, the PTAB found that they were substantially the same as representative claim 12, and did not contain an inventive concept beyond the abstract idea. Id. at 45-46, 48. For claims 13-17, the only additional limitations involved simple variations on claim 12, such as "applying the template by 'replacing' an existing area," or "storing one template and multiple templates respectively." Id. at 46. These simple variations were found to be not inventive. Id. As for claim 19, it "only recites generic components," and claim 20 describes storing templates "in the form of a 'table'," which "is not meaningfully distinguishable from a 'template.'" Id. at 48.

As for the remaining claims 2-7, and 9, the PTAB found that petitioner failed to show that these claims did not contain an inventive concept. Claims 2-4 and 9 add additional components, such as: a "second player" that creates templates; obtaining a "template from a different computer"; and storing templates "based on a combination of more than one template." Id. at 42. Petitioner failed to provide any evidentiary support that these were "well-understood, routine, conventional." Id. at 43. Claims 5-7 added "rules to deal with problems . . . after applying the template." Id. at 44. Since there was "potentially infinite ways" of applying these templates and the claim limitation only specified one such way, and since petitioner failed to provide evidentiary support that these limitations "were either 'conventional' or 'obvious," petitioner failed to meet the burden of showing these claims did not contain an inventive concept. . Id. at 44-45.

While not all claims were found unpatentable in this PGR, in the gaming industry invalidating even a set of claims might be advantageous. For that reason, competitors in the computing or gaming industry would be wise to discover any new patents being issued within nine months from issuance, as that is the deadline for filing a PGR. And a PGR may be more effective than an inter partes review, since petitioner can raise grounds under 35 U.S.C. § 101.

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