On October 15, 2019, the Patent Trial and Appeal Board issued a Final Written Decision upholding all 19 remaining claims at issue as valid over 101 and 112 arguments in PGR2018-00061. The challenged patent, 9,700,793, “relates to a recording medium storing a game program, a game processing method, and an information processing apparatus.” The petition proposed three grounds of rejection (one under §101 and two under §112), and the Board upheld the patents validity against all three.
Maier & Maier successfully argued that the Petitioner’s claim construction improperly omitted aspects of the claims. This was crucial to the Board’s Alice analysis, where they were convinced the claims were directed towards patentable subject matter. Supercell’s proposed §112 rejections also failed because the Board found that Petitioner had not sufficiently established that one of ordinary skill in the art would not understand the claims in light of the specification under § 112(a), and because the claims were not lacking antecedent basis under § 112(b).
This proceeding was part of an ongoing arms race in the social gaming technology field. In total, Supercell Oy filed eighteen PTAB petitions against GREE’s portfolio. Supercell Oy tapped Fenwick & West to represent them, while GREE countered with Maier & Maier PLLC (4 proceedings), Ropes & Gray (4 proceedings), Kilpatrick Townsend & Stockton LLP (4 proceedings), Oliff PLC (3 proceedings), and Oblon McClelland Maier & Neustadt, LLP (1 proceeding).
Overall ten of the eighteen petitions were instituted, with Maier & Maier earning two of the non-institution decisions. With this victory, Maier & Maier successfully helped GREE defeat 75% of the petitions by Supercell, dwarfing usual outcomes in both institution rates (50% denied for GREE compared to the average of 26.8%) and full trial outcomes where up to 80% of claims are ultimately invalidated.
All the above statistics and information about the individual PTAB proceedings was obtained using the PostGrant Portal.
Category: Firm News