The Software IP Report

Practical Application Saves Software Claims in PGR

The Patent Trial and Appeal Board recently upheld eligibility of claims in a post-grant review, relying on the USPTO’s 2019 Patent Subject Matter Eligibility Guidance (but writing just before the October 2019 update to the USPTO’s patent-eligibility guidance). Supercell Oy v. GREE, Inc., PGR2018-00061 (Oct. 15, 2019). Petitioner Supercell Oy, developers of the popular mobile game Clash of Clans, filed a post-grant review petition for U.S. Patent No. 9,700,793, owned by GREE, Inc., under 35 U.S.C. §§ 101 and 112. We discussed this case previously when it was instituted as an example of the Patent Trial and Appeal Board using PGR as a way to review eligibility under § 101. Claim 1 is representative and recites, in part,

wherein the screen information relates to a first game screen that displays game contents and information relating to a second game screen that displays state information of the game contents, and the second game screen includes latest state information at a time when receiving a first instruction which is an instruction to update the state information.

Petitioner argued that claim 1 is directed to the abstract idea of “generating and outputting information relating to game screen(s) in response to an instruction received from a user” and relies solely on “generic hardware.” Patent Owner argued that recitations such as the one above recite specific technological improvements, and Petitioner’s attempts to read those recitations out of the claim improperly simplify the claim.

Relying on Prong Two of the 2019 Revised Patent Subject Matter Eligibility Guidance published in January 2019, the Board held that claim 1 is valid under § 101 because it incorporates any abstract idea into a practical application to address technical problems in computer technology. In particular, the “wherein” clauses provided additional elements to consider, including “a first game screen that displays game contents,” and Petitioner’s failure to address these wherein clauses “[did] not persuade [the Board] that the wherein clauses fail to integrate the asserted judicial exception into a practical application….”

The Board upheld the claims under § 112(a), rejecting Petitioner’s arguments that the Specification lacked written description of how the recited functions of the claims would be performed. In particular, regarding claim 1’s recitation of “generating information relating to a game screen based on a received instruction,” the Board agreed with Patent Owner’s expert testimony that a person having ordinary skill in the art would have understood this recitation from the Specification. The Board also upheld the claims under § 112(b), noting that the recitation of “generating information relating to a game screen” provides sufficient antecedent basis for later recitations of “the generated game screen.”

Lessons for Practice

The USPTO Subject Matter Eligibility Guidance, which was recently updated, may not be followed in courts, but the Board seems open to arguments regarding a “practical application” to survive a § 101 challenge. Still, relying on the Guidance instead of the several cases that discuss how to survive patent eligibility challenges could cause problems in U.S. district courts.