Supercell Oy v. GREE, Inc. et al

Filing 47

ORDER by Judge Yvonne Gonzalez Rogers granting motion to dismiss as to the '449 Patent and denying as to the '520 Patent re 26 Motion to Dismiss. (fs, COURT STAFF) (Filed on 4/3/2018)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SUPERCELL OY,
Plaintiff,

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Re: Dkt. No. 26
GREE, INC., ET AL.,
Defendants.

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United States District Court
Northern District of California

ORDER RE: MOTION TO DISMISS

vs.

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CASE NO. 17-cv-05556-YGR

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Plaintiff Supercell Oy (“Supercell”) brings this patent infringement action against

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defendants GREE, Inc.; GREE International Entertainment, Inc.; GREE International, Inc.; and

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Funzio Games, Inc. (collectively “GREE”) alleging that defendants infringed two of plaintiff’s

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patents, namely U.S. Patent No. 9,106,449 (the “‘449 Patent”) and U.S. Patent No. 9,104,520 (the

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“‘520 Patent”). Now before the Court is defendants’ motion to dismiss plaintiff’s claims pursuant

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to Fed. R. Civ. Pro. 12(b)(6) on the ground that the asserted patents are not patent eligible under

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35 U.S.C. § 101.

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Having carefully reviewed the pleadings, the papers and exhibits submitted on this motion,

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the parties’ arguments at the hearing held on February 13, 2018, and for the reasons set forth more

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fully below, the Court GRANTS defendants’ motion to dismiss with regard to the ‘449 Patent and

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DENIES the motion with regard to the ‘520 Patent.

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I.

PATENTS AT ISSUE

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A.

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The ‘449 Patent is titled “Method, Apparatus and System for Obtaining Logon

The ‘449 Patent

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Information.” (See Complaint, Ex. A, ‘449 Patent.) The specification describes a “method,

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apparatus, and system” for transferring logon information between a “value-added service such as

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an online game” (the “game client”) and Instant Messaging client (the “IM client”) via a “function

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plug-in.” (‘449 Patent at 1:16-18, 27-28; Figs. 2, 3.)
In order to access an online game a user must first logon through an IM client. (‘449

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Patent at 1:33-42.) The conventional logon method required a “communication process” which

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was “pre-configured” between the game client and IM client. (Id. at 2:18-24.) This meant that

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any upgrade to the game client had to coincide with a simultaneous upgrade to the corresponding

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IM client so that a new communication process could be pre-configured between the two clients.

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As a result, “if a new game client [was] issued, the new game client [could] not communicate with

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IM client because no communication process [was] created between the new game client and the

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IM client.” (Id. at 2:24-27.) The “new game client [could] not log on the game server until a
communication process [was] created between the new game client and the IM, for example, until

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the version of the IM client [was] upgraded.”1 (Id. at 2:27-31.)

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The ‘449 Patent purports to solve this problem by placing a “function plug-in” between the
game client and IM client. Thus, independent claim 1 recites:

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A method for obtaining logon information, comprising:
obtaining, by Instant Messaging (IM) client of a user, logon
information which comprises a user account of the user when
the user logs on the IM client;
sending, by value- added service client of the user, a request for logon
information when the user started the value-added service
client;
receiving, by function plug-in, the request for logon information from
the value-added service client;
sending, by the function plug-in, the request for the logon information
to the IM client;
returning, by the IM client, the logon information of the user to the
function plug-in;
sending, by the function plug-in, the logon information to the valueadded service client; and
sending, by the value-added service client, the logon information of
the user obtained from the IM client to value-added service
server to log on the value-added service center.
(Id. at 7:13-34 (emphasis supplied).) The patent further recites that the function plug-in sends
requests for logon information to and receives logon information from an IM client through a

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The conventional method employed four entities, namely an IM client, game client, game
authentication server, and IM authentication server. (Id. at Fig. 1)
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“common interface.” (Id. at Fig. 3.) This enables the game client to obtain logon information

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from the IM client via the function plug-in and ultimately log on to the game server to start a

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game. (Id. at 4:43-47; Fig. 3.)

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Five claims depend on claim 1 (2 through 6) and add further limitations such as where: (i)

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“the request for the logon information is sent to the IM client through a common interface . . . and

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the logon information is received from the IM client through the common interface[;]; (ii) “the

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common interface is configured by the IM client[;]” (iii) the request for logon information is

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received from the value-added service client; and (iv) “loading the function plug-in before

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receiving the request for logon information from the [game] client.” (Id. at 7:34-8:7.)

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United States District Court
Northern District of California

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Additionally, the ‘449 Patent contains one other independent claim, namely claim 7, which
describes:

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A system for obtaining logon information, comprising:
a value-added service client, adapted to send a request for logon information
when a user starts the value-added service client, receive the logon information
which comprises a user account of the user from a function plug-in, and send the
logon information of the user to a value-added service server to log on the valueadded service server;
the function plug-in, adapted to receive the request for the logon information from
the value-added service client and send the request for the logon information to ~
Instant Messaging (IM) client; receive the logon information from the IM client;
send the logon information to the value-added service client;
the IM client, adapted to obtain logon information of the user when the user logs
on the IM client, receive the request for the logon information from the function
plug-in, and send the logon information to the function plug-in.
(Id. at 8:8–25.) Claim 7 has seven dependent claims (8 through 14). (Id. at 8:26–46.)
The ‘449 Patent states that placement of a function plug-in between the game client and IM

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client enables the game client to “obtain the logon information easily, flexibly and conveniently.”

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(Id. at 3:30-42.) Further, the method described in the ‘449 patents purport to improve

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“expansibility of the IM client” because the function plug-in can communicate with “various

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different IM clients” so long as the IM client is capable of providing a common interface. (Id. at

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3:22-48.) Therefore, when a game client is updated there is no need to develop a corresponding
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update for the IM client. (Id. 3:47-50.)

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B.

The ‘520 Patent

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The ‘520 Patent is titled “Method and Apparatus for Upgrading Application.” (See

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Complaint, Ex. B, ‘520 Patent.) Here, the specification recites a “method and apparatus” for

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upgrading computer applications “so as to avoid providing too many patch packages for the same

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version of an application.” (Id. at 1:66-2:2.) The ‘520 patent purports to enable developers to

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create a single installation patch which can be used to upgrade an application across multiple

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release channels (e.g., an official channel, Internet Explorer, 360 Secure Browser). (Id. at 1:52-

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56.) The patent states that the method described therein reduces the “workloads of the developer”

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and makes it “much eas[ier] to maintain the application.” (‘520 Patent, 3:5-7; 3:15-17.)
Computer installation packages contain two elements, namely a “Data Portion” and

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“Customized Information Portion.” (Id. at 1:39, 3:9.) The Data Portion contains information

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regarding the specific incremental upgrade such as the new application content. For a given

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application upgrade the Data Portion of an installation package will be the same across all release

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channels. By contrast, the Customized Information Portion includes “customized information

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such as the releases channel of the installation package, a network traffic tip, an update mode,

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and/or a link to the release channel” which will necessarily be different across various release

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channels. (Id. 1:42-47, 4:7-9.)

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Under the conventional process for upgrading an application, differences between the Data

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Portion of an old installation package and the Data Portion of a new installation package were

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“found out by using a bsdiff tool.” (Id. at 1:30-34.) Next, an installation upgrade patch containing

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only the additional information in the Data Portion of the new installation package was generated

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“using a dspatch tool.” 2 (Id. at 1:34-38.) The developer was then required to write a unique

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installation upgrade patch for each release channel by analyzing manually the Customized

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Information contained in the old installation package for each release channel and writing this

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Bsdiff and bspatch tools are binary delta encoding formats. Delta encoding is a way of
storing or transmitting data in the form of differences (deltas) between sequential data rather than
complete files.
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Customized Information into the new installation upgrade patch. As applications may be released

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on one hundred different channels, application developers needed to generate many different

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upgrade patches with the same Data Portions but different Customized Information Portions. This

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resulted in heavy workloads for developers, slower generation of upgrade patches, and more

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difficulty in maintaining applications. (Id. at 1:50-56.)

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The ‘520 Patent recites a method for generating a new installation patch which has a Data

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Portion different from the old installation package and a Customized Information Portion which is

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the same as the old installation package for a given release channel. Independent claim 1

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describes:

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1. A method for upgrading an application, comprising: obtaining a patch package
corresponding to a current installation package of an application; removing a
customized information portion from the current installation package and obtaining
a data portion of the current installation package; generating a data portion of a new
installation package according to the patch package and the data portion of the
current installation package; obtaining the new installation package by adding the
customized information portion to the data portion of the new installation package;
and installing the new installation package.

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(Id. at 9:65–10:8 (emphasis supplied).) Thus, the claim eliminates the need for developers to write

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manually unique installation patches for each release channels. By following the method

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described in the ‘520 Patent application developers can purportedly write a single patch package

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which can be applied across various release channels. The claimed method is illustrated below:

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Northern District of California

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(‘520 Patent at Fig. 1.)
Claim 1 of the ‘520 Patent is representative of all asserted claims. Nineteen claims depend

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on claim 1 and add limitations such as “where the information of the installation package

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comprises a Message-Digest Algorithm 5 (md5) value” (claim 3) and (ii) where “generating a data

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portion of a new installation package . . . comprises: reading a preset length of the data portion of

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the current installation package into memory and reading a present length of the patch into

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memory” (claim 8). (Id. at 10:18-29 (claim 3); 10:48-61 (claim 8).)

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II.

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LEGAL FRAMEWORK
A.

Patent Eligibility Under § 101

The scope of subject matter eligible for patent protection is defined in Section 101 of the

United States District Court
Northern District of California

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Patent Act: “Whoever invents or discovers any new and useful process, machine, manufacture, or

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composition of matter, or any new and useful improvement thereof, may obtain a patent therefor,

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subject to the conditions and requirements of this title.” 35 U.S.C. § 101. The Supreme Court has

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“long held that this provision contains an important implicit exception: Laws of nature, natural

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phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct.

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2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.

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2107, 2116 (2013)). In applying this exception, courts “must distinguish between patents that

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claim the building blocks of human ingenuity and those that integrate the building blocks into

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something more.” Alice, 134 S. Ct. at 2354 (internal quotations and alterations omitted); see also

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Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1301 (2012).

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“The Supreme Court, setting up a two-stage framework, has held that a claim falls outside

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§ 101 where (1) it is ‘directed to’ a patent-ineligible concept, i.e., a law of nature, natural

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phenomenon, or abstract idea, and (2), if so, the particular elements of the claim, considered both

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individually and ‘as an ordered combination, do not add enough to transform the nature of the

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claim into a patent-eligible application.”” Electric Power Group, LLC v. Alstom S.A., 830 F.3d

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1350, 1353 (Fed. Cir. 2016) (quoting Alice 134 S.Ct. at 2355). “The Supreme Court's formulation

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makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry.”

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Id. (citing Alice, 134 S.Ct. at 2355.) “At the same time, the two stages are plainly related” in that
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they “involve overlapping scrutiny of the content of the claims . . . [and] there can be close

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questions about when the inquiry should proceed from the first stage to the second.” Id. (citing

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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)). The burden of establishing

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invalidity rests on the movant. See Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2245

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(2011) (citing 35 U.S.C.A. § 282).

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Thus, in considering whether claims are patent-ineligible, the court must first determine

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whether the claims are directed to a patent-ineligible concept, such as an abstract idea (the “Stage-

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One Inquiry”). See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). “A principle, in the

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abstract, is a fundamental truth . . . [which] cannot be patented.” Gottschalk v. Benson, 409 U.S.
63, 67 (1972) (internal citations and quotations omitted). “Phenomena of nature, though just

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Northern District of California

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discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the

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basic tools of scientific and technological work.” Id. To determine whether patent claims are

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directed to an abstract idea, the Court must “distill[] the gist of the claim[s].”3 Open Text S.A,

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2015 WL 269036 (N.D. Cal. 2015), at *2 (citing Bilski v. Kappos, 561 U.S. 593, 611-12 (2010)).

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A “claim directed to an abstract idea does not move into section 101 eligibility territory by ‘merely

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requir[ing] generic computer implementation.’”buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,

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1354 (Fed. Cir. 2014) (alteration in original) (citing Alice, 134 S.Ct. at 2355).

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If claims are directed to an abstract idea, the court must then consider whether the claims

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contain a sufficient “inventive concept” such that “the patent in practice amounts to significantly

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more than a patent upon the [ineligible concept] itself” (the “Stage-Two Inquiry”). Alice, 134 S.

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Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294); see also DDR Holdings, LLC v. Hotels.com, L.P.,

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773 F.3d 1245, 1255 (Fed. Cir. 2014) (“Distinguishing between claims that recite a patent-eligible

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invention and claims that add too little to a patent-ineligible abstract concept can be difficult, as

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the line separating the two is not always clear.”). “For the role of a computer in a computer-

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implemented invention to be deemed meaningful in the context of this analysis, it must involve

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On the other hand, courts must be careful not to oversimplify claims because “[a]t some
level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Alice, 134 S. Ct. at 2354; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1299 (Fed. Cir. 2016).
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more than performance of ‘well-understood, routine, [and] conventional activities previously

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known to the industry.’” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.

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Ass’n, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (alteration in original) (internal quotations and

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citations omitted). Further, claims must be “directed to a ‘specific means or method’ for

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improving technology” and not “simply directed to an abstract end-result.” RecogniCorp, LLC v.

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Nintendo Co., Ltd., 855 F.3d 1322, 1326 (Fed. Cir. 2017). For example, “when a claim directed to

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an abstract idea ‘contains no restriction on how the result is accomplished . . . [and] [t]he

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mechanism . . . is not described, although this is stated to be the essential invention” then the claim

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is not patent-eligible. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir.

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Northern District of California

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2015)).

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B.

Motion to Dismiss

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Pursuant to Rule 12(b)(6), a complaint may be dismissed for failure to state a claim upon

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which relief may be granted. Dismissal for failure to state a claim under Federal Rule of Civil

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Procedure 12(b)(6) is proper if there is a “lack of a cognizable legal theory or the absence of

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sufficient facts alleged under a cognizable legal theory.” Conservation Force v. Salazar, 646 F.3d

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1240, 1242 (9th Cir. 2011) (citing Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir.

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1988)). The complaint must plead “enough facts to state a claim [for] relief that is plausible on its

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face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is plausible on its face

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“when the plaintiff pleads factual content that allows the court to draw the reasonable inference

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that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678

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(2009). If the facts alleged do not support a reasonable inference of liability, stronger than a mere

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possibility, the claim must be dismissed. Id. at 678–79. Mere “conclusory allegations of law and

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unwarranted inferences are insufficient to defeat a motion to dismiss.” Adams v. Johnson, 355

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F.3d 1179, 1183 (9th Cir. 2004).

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//

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//

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//
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II.

DISCUSSION
A.

The ‘449 Patent
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Stage-One Inquiry: Claims Directed to an Abstract Idea?

At the Stage-One Inquiry, the Court must determine whether the asserted claims are

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directed to an abstract idea. Courts deem claims directed to “analyzing information by steps

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people go through in their minds, or by mathematical algorithms, without more, as essentially

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mental processes within the abstract-idea category.” Electric Power, 830 F.3d at 1353 (citing In

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re TLI Commc'ns LLC Patent Litig, 823 F.3d 607, 613 (Fed. Cir. 2016); Digitech Image Techs.,

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LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); Bancorp Servs, L.L.C. v.
Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). The use of

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Northern District of California

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“existing computers as tools in aid of processes focused on ‘abstract ideas’” is not sufficient to

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remove a claim from the abstract-idea category. Id. (citing Enfish, 822 F.3d at 1335–36; Alice,

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134 S.Ct. at 2358–59). For example, the Supreme Court in Alice found that claims directed to

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“facilitate the exchange of financial [information] between two parties by using a computer system

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as a third-party intermediary” were abstract. Alice, 134 S. Ct. at 2352. The Alice Court further

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held that “the prohibition against patenting abstract ideas cannot be circumvented by attempting to

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limit the use of [an abstract idea] to a particular technological environment.” Id. at 2358 (quoting

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Bilski, 561 U.S. at 610–11; see Parker v. Flook, 437 U.S. 584 (1978). Similarly, in Electric

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Power, the Federal Circuit “treated collecting information, including when limited to particular

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content (which does not change its character as information), as within the realm of abstract

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ideas.” Electric Power, 830 F.3d at 1353. The Electric Power Court further “recognized that

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merely presenting the results of abstract processes of collecting and analyzing information,

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without more . . . is abstract as an ancillary part of such collection and analysis.” Id. at 1354.

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By contrast, claims which “focus[] not on asserted advances in uses to which existing

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computer capabilities could be put, but on a specific improvement . . . in how computers could

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carry out one of their basic functions” may fall outside the abstract-idea category. Electric Power,

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830 F.3d at 1354 (citing Enfish, 822 F.3d at 1335–36 (the question is “whether the focus of the

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claims is on the specific asserted improvement in computer capabilities” or on computers which
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“are invoked merely as a tool”)); see also Alice, 134 S.Ct. at 2358–59. However, the “mere

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automation of manual processes using generic computers does not constitute a patentable

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improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d

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1044, 1055 (Fed. Cir. 2017) (citing TLI, 823 F.3d at 612; OIP Techs., Inc. v. Amazon.com, Inc.,

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788 F.3d 1359, 1363 (Fed. Cir. 2015)). Similarly, making a “process more efficient” in itself does

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not “render an abstract idea less abstract.” Secured Mail Solutions LLC v. Universal Wilde, Inc.,

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873 F.3d 905, 910 (Fed. Cir. 2017).

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Ultimately, to be patentable, claims must “sufficiently describe how to achieve [an
improvement in computer technology] in a non-abstract way.” Two-Way Media Ltd. v. Comcast
Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (finding limitations requiring

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Northern District of California

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“sending” and “directing” of information “d[id] not sufficiently describe how to achieve these

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results in a non-abstract way”); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d

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1253, 1258–59 (Fed. Cir. 2016) (holding that claims were directed to an abstract idea where they

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claimed “the function of wirelessly communicating regional broadcast content to an out-of-region

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recipient, not a particular way of performing that function”). For example, claims which recite

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“generalized steps to be performed on a computer using conventional computer activity” are

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deemed abstract. See In re TLI, 823 F.3d at 612 (citing Enfish, 822 F.3d at 1338).

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With regard to the ‘449 Patent, the Court finds that the challenged claims are directed to an

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abstract idea and thus do not cover patentable subject matter under the Stage-One Inquiry. The

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claims are not directed to an improvement in “computer functionality” but merely recite

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“generalized steps to be performed on a computer using conventional computer activity.” TLI,

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823 F.3d at 612; see Enfish, 822 F.3d at 1338; McRO, Inc. v. Bandai Namco Games Am. Inc., 837

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F.3d 1299, 1314 (Fed. Cir. 2016). In addition, the Court finds that the challenge claims are

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“simply directed to [the] abstract end-result” of sending, receiving, and authenticating logon

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information, and not to a “specific means or method for improving technology.” RecogniCorp,

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855 F.3d at 1326 (internal quotations omitted).

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Specifically, the challenged claims do not recite a new way to authenticate online gamers
through IM clients or purport to improve computer functionality through enhancements to the
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“inter-process communication” between game clients and IM clients. Further, the challenged

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claims do not purport to make the user authentication process faster or more efficient or more

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accurate. For example, the ‘449 Patent indicates that the end result of the claimed method is no

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different than conventional processes in which an online gamer enters login information into an

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IM client and, if authenticated, is granted access to a game. (’449 patent at 2:17-20.)

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Accordingly, the challenged claims merely employ “existing computers as tools in aid of

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processes focused on ‘abstract ideas.’” TLI, 823 F.3d at 613 (citing Enfish, 822 F.3d at 1335–36).

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This is not sufficient to remove the claims from the abstract-idea category. Electric Power, 830

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F.3d at 1353.

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Plaintiff argues that the claims at issue are directed to a “specific implementation of a

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Northern District of California

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solution to a problem in the software arts[,]” Enfish, 822 F.3d at 1336, 1339, namely a solution to

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the problem arising from the interface mechanism between game clients and IM clients. Under

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conventional logon methods, direct, pre-configured communication was required between the two

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clients which meant that a game client could not be updated without also updating the

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corresponding IM client. (See ‘449 patent at 2:18-24.) According to plaintiff, the challenged

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claims are directed to improving computer technology by placing a function plug-in between two

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“peer entities” (i.e., a game client and IM client of the same user) to improve “expansibility of the

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IM client.” (Id. at 3:30-42.)

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Plaintiff does not persuade. Applying a plug-in specifically to “peer entities” or in the

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context of online gaming is not sufficient to remove the ‘449 Patent from the abstract idea

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category because “the prohibition against patenting abstract ideas cannot be circumvented by

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attempting to limit the use of [the idea] to a particular technological environment.” Alice, 134 S.

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Ct. at 2358 (quoting Bilski, 561 U.S. at 610–11); see also Flook, 437 U.S. at 584. Further, as the

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Federal Circuit “caution[ed]” in DRR, “not all claims purporting to address Internet-centric

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challenges are eligible for patent.” DDR, 773 F.3d at 1258.

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Even if the challenged claims were directed to an improvement in computer functionality,

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the ‘449 Patent fails to describe the structure of the function plug-in or how to apply the plug-in

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between a game client and IM client to achieve the purported technological improvement. See
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Two-Way Media, 874 F.3d at 1337 (finding that claims reciting the “sending” and “directing” of

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information were not sufficiently descriptive). Stated differently, to be patentable, the claims must

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be “directed to a ‘specific means or method’ for improving technology” and not “simply directed

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to an abstract end-result.” RecogniCorp, 855 F.3d at 1326. Here, the challenged claims merely

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recite an abstract and generic “method for obtaining logon information” through a function plug-in

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by “receiving” a request for logon information from a game client, “sending” that request to an IM

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client, “returning” the logon information from the IM client to the function plug-in, “receiving”

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the logon information by the plug-in, and “sending” the logon information from the plug-in to the

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game client. Further, the ‘449 Patent does not indicate a specific structure for the function plugin4 but instead describes the plug-in using three lines of “pseudo-code” which indicate the end

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result of using the plug-in rather than a particular means of achieving that result. (‘449 Patent,

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5:1–10.) Such “result-based functional language” is deemed “abstract.” See Two-Way Media, 874

13

F.3d at 1337. Accordingly, the Court finds that the challenged claims fail to describe a specific

14

“means or method for improving technology” by placement of a function plug-in between two

15

peer entitles. See RecogniCorp, 855 F.3d at 1326.
2.

16
17

Stage-Two Inquiry: Sufficient Inventive Concept?

Having determined that the claims at issue in the ‘449 Patent are directed to an abstract

18

idea, the Stage-Two inquiry requires the Court to “determine whether the claim elements, when

19

viewed individually and as an ordered combination, contain an inventive concept sufficient to

20

transform the claimed abstract idea into a patent-eligible application.” Smart Sys. Innovations,

21

873 F.3d at 1373–74; see also BASCOM Glob; Internet Servs., Inc. v. AT&T Mobility LLC, 827

22

F.3d 1341, 1350 (Fed. Cir. 2016) (stating that the “inventive concept may arise in one or more of

23

the individual claim limitations or in the ordered combination of the limitations”). “A claim

24

contains an inventive concept if it ‘include[s] additional features’ that are more than ‘well-

25

understood, routine, conventional activities.’” Id. (quoting Alice, 134 S. Ct. at 2357, 2359). The

26
27
28

4

For example, according to the patent, the function plug-in need not adhere to a specific
structure so long as it “may be configured according to function[al] requirements of a
corresponding game client and invoke[s] the common interface according to [the IM client’s]
requirements.” (’449 Patent, 4:49–52.)
12

1

Federal Circuit has held that “in addressing the second step of Alice, [] claiming the improved

2

speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a

3

sufficient inventive concept.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d

4

1363, 1367 (Fed. Cir. 2015). “To save a patent at step two, an inventive concept must be evident

5

in the claims.” Two-Way Media, 784 F.3d at 1338 (citing RecogniCorp, 855 F.3d at 1327).

6

The Court finds that the ‘449 Patent does not “contain an inventive concept sufficient to

7

transform the claimed abstract idea into a patent-eligible application.” Smart Sys. Innovations,

8

873 F.3d at 1373–74. Plaintiff argues that the application of a function plug-in between peer

9

entities is enough to “save the [‘449 Patent] at step two.” Id. (citing RecogniCorp, 855 F.3d at
1327). Supercell relies primarily on DDR in arguing that the challenged claims recite a sufficient

11
United States District Court
Northern District of California

10

inventive concept, namely use of a function plug-in to solve an “Internet-centric problem” which

12

is specific to application logon technology. DDR, 773 F.3d at 1258. Plaintiff highlights that the

13

conventional method prevented developers from upgrading online games unilaterally because the

14

communication between the game client and the IM client needed to be pre-configured. (‘449

15

patent at 2:18-24.) Accordingly, a game client could not be upgraded without upgrading the

16

corresponding IM client. The ’449 Patent purports to solve this problem by applying a function

17

plug-in between the game client and IM client.

18

Supercell does not persuade. First, the challenged claims merely describe the function

19

plug-in as any generic software programmed to achieve a desired result, namely enabling the game

20

client “to obtain logon information from the IM client through the function plug-in and then log on

21

a game server.” (See ’449 Patent at 4:44–46.) The claims do not articulate a specific means or

22

method to achieve this result, as the function-plug is defined to cover any computer software

23

“configured according to function[al] requirements of a corresponding game client and invoke[s]

24

the common interface according to [the IM client’s] requirements.” (See id. at 4:49–52.) The

25

‘449 Patent recites the use of generic computer software and hardware, namely a “function plug-

26

in,” “value-added service client,” “IM client,” and “value-added service server.” (‘449 Patent at

27

7:13–34.) “When claims like the Asserted Claims are ‘directed to an abstract idea’ and ‘merely

28

require[e] generic computer implementation,’ they do[] not move into section 101 eligibility
13

1

territory.” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir.

2

2017) (buySAFE,, 765 F.3d at 1354. Second, and in any event, DDR is distinguishable. There, the

3

challenged claims recited an unconventional technical solution to retaining website visitors who

4

clicked on an advertisement for a product. See DDR, 773 F.3d at 1257. As noted the DDR Court

5

specifically “caution[ed]” that “not all claims purporting to address Internet-centric challenges are

6

eligible for patent.” Id. 1258. The Court went on to hold that to be patent eligible a claim must

7

“not attempt to preempt every application of [an] idea.” Id. at 1259. Here, the challenged claims

8

recite generic language which states that communications between a game and IM client can be

9

intermediated via a function plug-in to achieve the desired result of eliminating the need for
developers to upgrade a game client and corresponding IM client simultaneously. The language of

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10

Claim 1 itself illustrates the generic nature of steps; namely that of “receiving” requests for,

12

“obtaining”, “returning”, and “sending” user and logon information between the two clients.

13

These steps are described using language which is so generic that it attempts “to preempt every

14

application of [this] idea.” Id. Further, limiting the method to communications between two

15

specific peer entities, namely a game client and IM client, is not sufficient to save the ‘449 Patent

16

at Stage-Two because “the prohibition against patenting abstract ideas cannot be circumvented by

17

attempting to limit the use of [the idea] to a particular technological environment.” Alice, 134 S.

18

Ct. at 2358.

19

Next, plaintiff attempts to analogize to Enfish in arguing that the challenged claims are

20

“not simply directed to any form” of applying a functional plug-in between two client but are

21

instead directed to a particular way of doing so. Enfish, 822 F.3d at 1337 (emphasis in original).

22

Enfish is distinguishable. There, the challenged claims were directed to a self-referential table

23

which had a specified nonconventional structure. Id. at 1338. The table “store[d] information

24

related to each column in rows of that same table, such that new columns can be added by creating

25

new rows in the table,” as opposed to conventional tables, which “require[d] a programmer to

26

predefine a structure and subsequent [data] entry [to] conform to that structure.” Id. at 1337–38.

27

By contrast, Supercell’s “function plug-in” lacks a specific structure and is defined in software

28

“pseudo-code” which describes results rather than a particular way of achieving those results.
14

1

(See ‘449 Patent at 5:1–10.) For example, the function plug-in as defined covers any software so

2

long as it “may be configured according to function[al] requirements of a corresponding game

3

client and invoke[s] the common interface according to [the IM client’s] requirements.” (‘449

4

Patent at 4:49–52.)
Finally, Supercell avers that even if the “the limitations of the claims, taken individually,

5
6

recite generic computer, network, and Internet components, none of which is inventive by itself,”

7

the “ordered combination of the limitations” constitutes an inventive concept sufficient to confer

8

patent eligibility. BASCOM, 827 F.3d at 1349-50. In BASCOM, the Federal Circuit found that the

9

challenged claims “recite a specific, discrete implementation of the abstract idea of filtering
content” which constituted an inventive concept because “the patent describes how its particular

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10

arrangement of elements is a technical improvement over prior art ways of filtering such content.”

12

Id. at 1350. According to plaintiff, the ordered combination “of interactions between the game

13

client, IM client, and plug-in is inventive.” (Dkt. No. 31, Opposition at 21.)

14

Plaintiff’s argument fails because the ‘449 Patent does not “describe[] how its particular

15

arrangement of elements is a technical improvement over prior art ways of” applying a function

16

plug-in between two clients BASCOM, 827 F.3d at 1349-50. The Court finds that the “ordered

17

combination of the limitations” in the ‘449 Patent do not constitute an inventive concept because

18

the ordered combination recited in the claims is logically required for the function plug-in to

19

receive and send logon information between game and IM clients. For example, a request for user

20

information must be “sent” by a client to an intermediary plug-in before the “request” is received

21

by that plug-in. The request must be “received” by the plug-in before the request is then “sent” to

22

the second client. The requested information must be “sent” by the second client back to the plug-

23

in before it is “received” back by the intermediary plug-in. Finally, the plug-in must “receive” this

24

logon information before sending it back to the first client. Any other ordering of claimed steps

25

would defeat the purpose of user authentication.
Accordingly, the Court finds that the ‘449 Patent is not patent eligible. Therefore,

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27

defendants’ motion is GRANTED as to the ‘449 Patent.

28

//
15

1

B. The ‘520 Patent
1.

2
3

Stage-One Inquiry: Claims Directed to an Abstract Idea?

The Court finds that the asserted claims in the ‘520 Patent, “viewed in light of their

4

respective specifications, are not directed to an abstract idea, and thus cover patentable subject

5

matter.” See Synchronoss Technologies, Inc. v. Dropbox, Inc., 226 F.3d 1000, 10007 (N.D. Cal.

6

2016). The claims, “like those in Enfish and McRO, are directed on their face to an improvement

7

to computer functionality: a more-efficient mechanism” for upgrading applications with a single

8

installation patch which can be applied across all release channels of an application.5 Id.
In McRO, the Federal Circuit held that a method for automating the animation of lip

10

movement and facial expressions by replacing an animator’s subjective evaluation with automated

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9

rules was not an abstract idea. McRO, 837 F.3d at 1313-16. The McRO Court highlighted that the

12

claims at issue recited “many exemplary rule sets that go beyond” merely identifying “differences

13

in mouth positions for similar phonemes based on context” which characterized the subjective

14

manual process. Id. at 1307. Further, the Court noted the lack of “evidence that the process

15

previously used by animators is the same as the process required by the claims [at issue].” Id. at

16

1314. For example, the conventional process was driven by subjective human determinations

17

“rather than specific, limited mathematical rules.” Id. Thus, the Court found that the “computer is

18

employed to perform a distinct process to automate a task previously performed by humans.” Id.

19

Similarly, the ‘520 Patent recites a method for generating a single installation patch which

20

can be used to upgrade an application across different release channels. The ‘520 Patent purports

21

to solve a problem rooted in computer technology, namely that when upgrading an application

22

developers must generate a unique installation patch for each release channel which contains a

23

Customized Information Portion specific to that release channel. Unlike the conventional method

24

which required developers to “provide a lot of patch packages corresponding to different

25
26
27
28

5

As noted, the claims in Enfish were directed to a self-referential table with a
nonconventional structure which “store[d] information related to each column in rows of that same
table, such that new columns can be added by creating new rows in the table,” as opposed to
conventional tables, which “require[d] a programmer to predefine a structure and subsequent
[data] entry [to] conform to that structure.” Id. at 1337–38.
16

1

customized information portions[,]” the present invention offers a “method and apparatus for

2

upgrading an application, so as to avoid providing too many patch packages for the same version

3

of an application.” (‘520 Patent at 1:59-2:2.) Stated simply, the conventional method employed

4

human labor to generate many patch packages manually. (Id.) By contrast, the present invention

5

recites an automated method for generating a single patch package which can be applied across

6

different release channels to reduce “the workloads of the developer” and make it easier to

7

“maintain the application.” (Id. at 3:5-7.)

8

As in McRO, defendants fail to proffer sufficient evidence that “the process previously
used by [application developers] is the same as the process required by the claims.” McRO, 837

10

F.3d at 1314. For example, representative claim 1 recites a specific method for creating a new

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9

installation package in which a client terminal, after receiving a patch package, creates a Data

12

Portion for the new installation package based on the patch package and the Data Portion of the

13

old installation package. (‘520 Patent at 9:65-10:8, Figs. 1, 2.) The Customized Information

14

Portion of the old installation package is then added to the Data Portion of the new installation

15

package. (Id. at 9:65-10:8, Figs. 1, 2.) This process enables developers to create a single

16

installation patch capable of upgrading an application regardless of the release channel. (‘520

17

patent, 2:66-3:7, 3:52-59, 8:3-11, 8:48-56.) Accordingly, the Court finds on the present record

18

that the ‘520 Patent recites a method which employs computers to “perform a distinct process to

19

automate a task previously performed by humans.”6 Id.

20

Defendants attempt to characterize the ‘520 Patent as being directed to the abstract idea of

21

“collecting, manipulating, and analyzing data.” See Capital One Bank, 792 F.3d at 1369. In

22

Capital One Bank, the Federal Circuit found that claims directed to “customizing web page

23

content as a function of navigation history and information known about the user” were abstract

24
25
26
27
28

6

The specifications bolster this conclusion. See Enfish, 822 F.3d at 1337 (“our conclusion
that the claims are directed to an improvement of an existing technology is bolstered by the
specification’s teachings that the claimed invention achieves other benefits over conventional
databases, such as increased flexibly . . . and smaller memory requirements”). As the
specifications explain, the challenged claims are directed to improving the process through which
computers are used to upgrade applications by making that process more efficient, less labor- and
memory-intensive, and more flexible. (See ‘520 Patent at 1:54-56.)
17

1

because the claims involved the mere “customizing [of] information based on (1) information

2

known about the user and (2) navigation data.” Id. Similarly, in Capital One Fin. Corp., the

3

Court held that claims which recited a method of editing an XML document were abstract on the

4

ground that the claims were directed to “collecting, displaying, and manipulating data” in a

5

particular technological context. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d

6

1332, 1339–40 (Fed. Cir. 2017).
GREE oversimplifies the challenged claims by characterizing them broadly as the

7
8

collection, manipulation, and analysis of data. Defendants ignore the fact that the ‘520 Patent

9

recites a specific method and apparatus for upgrading an application by (i) extracting the
Customized Information Portion of an old installation package and (ii) combining the Customized

11
United States District Court
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10

Information Portion of the old installation package with the Data Portion of a new installation

12

package (iii) to generate a single installation patch which can be used to upgrade an application

13

across all release channels.7 (‘520 Patent at 9:65–10:8, Figs. 1, 2.) By following the method

14

described in the ‘520 Patent, developers can generate a single installation patch with a Customized

15

Information Portion which is the same as the old installation package for a given release channel

16

and a Data Portion which is different than the old installation package. Accordingly, the Court

17

finds that the claims “focus [] not on asserted advances in uses to which existing computer

18

capabilities could be put, but on a specific improvement . . . in how computers could carry out one

19

of their basic functions.” Electric Power, 830 F.3d at 1354 (citing Enfish, 822 F.3d at 1335–36).

20

The challenges claims thus go beyond the “mere automation of manual processes using generic

21

computers.” Credit Acceptance, 859 F.3d at 1055 (citing In re TLI Commc'ns, 823 F.3d at 612).
Accordingly, defendants’ motion to dismiss plaintiffs’ claims under the ‘520 Patent is

22
23

DENIED on the ground that the claims are not directed to an abstract concept.

24

//

25

//

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27
28

7

Thus, unlike Symantec, the specifications here contain sufficient restrictions on “how the
result is accomplished.” Symantec Corp., 838 F.3d at 1316.
18

2. Stage-Two Inquiry: Sufficient Inventive Concept?

1
2

Even if the ‘520 Patent were not directed to an abstract idea the Court would still find it

3

patent eligible under the Stage-Two inquiry because the ’520 Patent contains a sufficient inventive

4

concept. As described above, the ‘520 Patent recites a method and apparatus for generating and

5

installing an installation patch across different release channels to solve a problem specific to

6

application upgrade technology. See DDR, 773 F.3d at 1258. The specification explains that the

7

conventional process of generating installation patches required a developer to write a unique

8

patch for each release channel. (‘520 Patent at 1:50-56.) The ’520 Patent purports to solve this

9

problem by enabling developers to create a single patch package which can be applied across
different release channels regardless of the Customized Information Portion contained therein.8

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United States District Court
Northern District of California

10

(Id. at 2:66-3:7.)

12

GREE counters that the concept of upgrading a software application using information

13

from an old installation package was known, conventional, and widely used. Defendants argue

14

that U.S. Patent Publication No. 2008/0127170 (the “‘170 Publication”) indicates that some items

15

in the Customized Information Portion of an installation package can be recognized and removed.

16

(See ‘170 Publication ¶ 0057.) Further, U.S. Patent Publication No. 2006/0136895 (the “‘895

17

Publication”) describes a process in which the Customized Information Portion can be

18

“recognize[d]” separately from the “application installer.” (See ‘895 Publication ¶ 0036.)

19

GREE does not persuade. First, the fact that the ‘170 Patent indicates that some

20

components of the Customized Information Portion of an installation package can be recognized

21
22
23
24
25
26
27
28

8

Plaintiff argues that dependent claims 3 and 8 provide further support. Claim 3 recites
how the technical solution is applied when the information in the patch and installation packages
comprises md5 values. (‘520 Patent at 10:18-29.) Defendants counter that a “hash identifier” such
as an md5 hash “is a generic and routine concept that does not transform the claims to a patent
eligible application of the abstract idea.” Smart Sys. Innovations, 873 F.3d at 1374 n.9 (Fed. Cir.
2017). Next, plaintiff argues that claim 8 describes a method for generating the Data Portion of
the new installation package by reading preset portions of the packages into memory. (Id. at
10:48-61.) Again defendants counter that claim 8 is not inventive because it fails to recite a
particular memory storage medium. (See ‘520 Patent at 9:17–21 (“Machine-readable instructions
used in the examples disclosed herein may be stored in [a] storage medium readable by multiple
processors such as [a] hard drive . . . RAM, ROM . . . or other proper storage device.”). In light of
the Court’s ruling the Court need not reach this issue.
19

1

and removed does not establish that the method and apparatus recited in the ‘520 Patent for

2

generating and installing an installation patch across different release channels was known,

3

conventional, and widely used. See DDR, 773 F.3d at 1258. Second, and similarly, the reference

4

in the ‘895 Patent to “recogniz[ing]” a Customized Information Portion fails to show that the ‘520

5

Patent recites only known and conventional concepts because the ‘520 Patent goes beyond the

6

mere recognition of data. See id.
Next, defendants argue that the ‘520 Patent lacks an inventive concept because the

7
8

installation patch generated through the method described in the ‘520 Patent is the same as the

9

installation patches generated by the conventional method. According to defendants, the only
difference between the convention method and the method described in the ‘520 Patent is that the

11
United States District Court
Northern District of California

10

challenged claims employ computers to increase the speed and efficiency of the application

12

upgrade process. See Capitol One Bank, 792 F.3d at 1370. GREE asserts that “merely adding

13

computer functionality to increase the speed or efficiency of [a] process does not confer patent

14

eligibility on an otherwise abstract idea.” Id.; see also Credit Acceptance, 859 F.3d at 1055.

15

(“automation of manual processes using generic computers does not constitute a patentable

16

improvement in computer technology”); Secured Mail, 873 F.3d at 910 (making “a process more

17

efficient . . . does not necessarily render an abstract idea less abstract”). However, defendants

18

ignore the fact that the installation patch generated through the method described in the ‘520

19

Patent is substantively different than the installation patches generated by the conventional

20

method. Specifically, the challenged claims describe a method for generating a single installation

21

patch which can be applied across all application release channels whereas the conventional

22

method required developers to write a unique patch for each release channel. The conventional

23

method required developers to write a unique patch for each application release channel.
Accordingly, defendants’ motion to dismiss plaintiffs’ claims under the ‘520 Patent is

24
25

DENIED on the additional ground that the claims contain a sufficient inventive concept.

26

//

27

//

28

///
20

1
2
3

III.

CONCLUSION
For the foregoing reasons, defendants’ motion to dismiss is GRANTED as to the ‘449 Patent

and DENIED as to the ‘520 Patent.

4

This terminates Dkt. No. 26.

5

IT IS SO ORDERED.

6
7

Dated: April 3, 2018
YVONNE GONZALEZ ROGERS
UNITED STATES DISTRICT COURT JUDGE

8
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United States District Court
Northern District of California

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