Video game patents being asserted in litigation are frequently challenged by defendants at the Patent Trial and Appeals Board by filing a petition requesting inter partes review (IPR), post-grant review (PGR), or (less frequently) covered business method review (CBM). Gaming companies need to be cautious in preparing these petitions as the PTAB continues to increase its scrutiny of petitions and is showing a reluctance to “fill in the dots” for deficient petitions.

In a decision earlier this week, a PGR petition filed by SuperCell against a GREE patent was denied institution. Rather than challenge the asserted patent on prior art grounds, the petition sought invalidity based upon patent eligibility (Section 101), indefiniteness (Section 112), and written description (Section 112) grounds. The challenged patent claims were directed to providing incentives to players for inviting other potential plays to register, as well as provide additional sequential incentives if the second user elects to register for the game.

Notably, the SuperCell did not include an expert declaration that supported its challenge to  the claims of the ‘044 patent, nor did it seek permission to file a reply to the GREE’s preliminary response after the GREE submitted an expert declaration that rebutted the SuperCell’s challenge.

SuperCell also proposed an extremely broad construction for the term “incentive” which the PTAB took issue with. Specifically the PTAB rejected SuperCell’s proposed construction that a claimed incentive could be “anything.”

In terms of 101 arguments, the PTAB quickly moved to the second step of Alice to note that the SuperCell failed to addressed whether the use of sequential incentives, as claimed, was a longstanding, conventional commercial activity.

Takeaways:

• This decision illustrates the increased scrutiny the PTAB has been applying to post-grant petitions in the past year, and highlights the need to include a declaration by a competent witness to support a petition, including for issues such as patent eligibility.
• Petitioners must consider uncommon and novel approaches, such as combating a patent owner’s use of a declaration in with its preliminary response by submitting a reply and a rebuttal declaration even if a declaration was not submitted with the petition.
• The decision also shows that even under the broadest reasonable interpretation standard, the PTAB is unwilling to adopt constructions that appeared to have an unlimited scope.

When challenging the subject matter eligibility of a patent under Section 101 in a PGR or CBM review, a petitioner should strongly consider submitting declaration testimony that addresses Step Two of the Alice analysis, which considers whether the patent claims something was merely conventional and well-known.