NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

SUPERCELL OY,

Appellant

v.

GREE, INC.,

Appellee

______________________ 

2020-2005

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

00083.

______________________ 

Decided: September 29, 2021

______________________ 

MICHAEL JOHN SACKSTEDER, Fenwick & West LLP, San 

Francisco, CA, for appellant. Also represented by TODD 

RICHARD GREGORIAN; JENNIFER RENE BUSH, Mountain 

View, CA; GEOFFREY ROBERT MILLER, New York, NY. 

 JOHN C. ALEMANNI, Kilpatrick Townsend & Stockton 

LLP, Raleigh, NC, for appellee. Also represented by 

STEVEN MOORE, San Francisco, CA; ANDREW WILLIAM 

RINEHART, Winston-Salem, NC. 

 ______________________ 

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2 SUPERCELL OY v. GREE, INC. 

Before MOORE, Chief Judge, REYNA and HUGHES, Circuit 

Judges.

REYNA, Circuit Judge.

Appellant Supercell Oy appeals a final written decision 

of the Patent Trial and Appeal Board that certain claims of 

Supercell’s patent are unpatentable as obvious under 

35 U.S.C. § 103. On appeal, Supercell challenges the 

Board’s obviousness determination largely on the basis 

that the Board erred in rejecting Supercell’s claim construction argument. We affirm.

BACKGROUND 

The ’520 Patent

Supercell is the assignee of U.S. Patent No. 9,104,520 

(the “’520 Patent”), which discloses a method and apparatus for more efficiently upgrading a mobile application

(“app”) from one version to the next. See ’520 Patent col. 1 

ll. 15–17. The patent explains that an app “installation 

package,” which is stored on a user’s mobile device, contains both a “data portion” and a “customized information 

portion.” Id. at col. 1 ll. 42–47. The patent further explains

that any given app upgrade might require “many patch 

packages,” i.e., multiple installation packages associated 

with the same upgrade version, because a single app version may require a range of installation packages with 

identical data portions and different customized information portions. Id. at col. 1 ll. 47–52. 

The ’520 Patent purports to reduce the amount of work 

required to upgrade an app by eliminating the need for 

multiple patches with varying customized information. Id.

at col. 3 ll. 52–55. Instead of creating multiple installation 

packages for each new version, the patent discloses a 

shortcut that involves removing the customized information portion from an existing installation package, upgrading the remaining data portion with a single universal 

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SUPERCELL OY v. GREE, INC. 3

patch package, and combining the updated data portion 

with the old customized information portion to create the 

new installation package. Id. at col. 2 ll. 4–16.

Claim 1 is representative: 

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.

Id. at col. 9 l. 65–col. 10 l. 8.

Inter Partes Review 

On October 12, 2018, Appellee GREE, Inc. petitioned 

for inter partes review, challenging claims 1–8, 10–16, and 

18–20 of the ’520 Patent as obvious under 35 U.S.C. § 103. 

GREE, Inc. v. Supercell Oy, No. IPR2019-00083, 2020 WL 

2479654, at *1 (P.T.A.B. May 11, 2020). The Board instituted review on all asserted grounds of unpatentability. 

Id.; J.A. 519.

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4 SUPERCELL OY v. GREE, INC. 

The specification of the ’520 Patent teaches multiple

detailed embodiments of the claimed invention and includes the disclaimer: “The foregoing [are] only preferred 

examples of the present invention and [are] not used to 

limit the protection scope of the present invention.” 

’520 Patent col. 9 ll. 58–60. In describing an exemplary 

embodiment, the specification teaches that “[t]he customized information portion comprises at least one of a release 

channel of the application, a network traffic tip, an update 

mode or a link to the release channel.” Id. at col. 4 

ll. 10–12; see also id. at col. 9 ll. 10–13. Based on this specific embodiment, Supercell argued before the Board that 

the term “customized information portion” should be construed to necessarily include at least one of those four types 

of information. GREE, 2020 WL 2479654, at *3. 

The Board rejected Supercell’s proposed claim construction because it found that the specific embodiment on 

which Supercell relied was “merely exemplary.” Id. The 

Board also observed that the ’520 Patent identifies other 

types of customized information that could be included in 

the customized information portion, as demonstrated by 

the embodiment depicted in Figure 4 of the patent. Id.

at *4 (quoting ’520 Patent col. 6 ll. 20–25). The Board declined to construe the term further, noting that, in any 

event, “the asserted prior art teaches ‘a customized information portion’ under [Supercell]’s proposed construction.” 

Id.; see also id. at *13 (“[Supercell’s] proposed construction 

does not require any change to the data but, rather, is 

simply a matter of labeling data.”). 

The Board concluded that claims 1, 7, 8, 10, 15, 16, and 

18 of the ’520 Patent are unpatentable as obvious over the

combination of three prior art references: Waldmann, 

Schuelein, and applicant-admitted prior art (“AAPA”)

found in the ’520 Patent. GREE, 2020 WL 2479654, 

at *16–18. 

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Waldmann discloses a method and system for “installing a new version of a hearing-device fitting-software 

package on a computer system.”1 Int’l Patent Appl. 

No. WO 2007/020300, Method for Installing a New Version 

of a Hearing-Device Fitting-Software Package on a Computer System (“Waldmann”) p. 1 ll. 8–10. “In order to minimize the amount of data to be transferred . . . for updating 

a hearing-device fitting-software package,” Waldmann 

teaches a method of “distribut[ing] in the installation-software package basically only those files . . . which have 

changed between the previous and the new version of the 

hearing-device fitting-software package.” Id. p. 2 ll. 22–28. 

Waldmann explains that the “new files could then be 

merged with an existing installation . . . so as to derive the 

desired updated version of said hearing-device fitting-software package.” Id. p. 2 l. 29–p. 3 l. 3.

Schuelein discloses a method and system to “upgrade 

software applications at a remote service center.” U.S. Patent Appl. Publ’n No. 2006/0271925, Software Upgrades 

with Centralized Preparation (“Schuelein”) ¶ 5. In particular, Schuelein teaches a way to preserve “customer specific data and customer protocols” from one application 

version to the next. Id. As described in Schuelein, customer-specific data might “relate to the type of hardware, 

the hardware configuration, the software configuration, 

measurement protocols generated by the customer, and 

network information.” Id. ¶ 32. Schuelein teaches that 

customer-specific data “may be identified and saved” separately while a “new or revised version of the software application may be installed”; then, a person or computer can 

1 “Hearing-device fitting-software,” as used in Waldmann, refers to software “used by hearing device professionals for adjusting hearing devices.” Waldmann p. 1 

ll. 10–12.

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6 SUPERCELL OY v. GREE, INC. 

“integrate the customer[-]specific data with the revised 

version of the software application.” Id. ¶¶ 32–36.

Based on the foregoing, the Board found that Waldmann discloses a method for upgrading software on a computer by using a patch package to upgrade an old 

installation package while preserving user-inputted data 

and preferences from one version to the next. GREE, 

2020 WL 2479654, at *9 (citing Waldmann at 21). The 

Board found that Schuelein teaches identifying, saving, 

and transferring customer-specific information in the same 

way the ’520 Patent discloses “removing” a customized information portion. Id. at *13 (citing Schuelein ¶¶ 32–33, 

35–36). The Board also noted that the AAPA discloses an 

installation package having a customized information portion. Id. at *12 (citing ’520 Patent col. 1 ll. 42–47).

The Board identified a motivation to combine the prior 

art references because “both Waldmann and Schuelein disclose that it is desirable to preserve customized data during 

the upgrade process.” Id. at *16 (internal quotation marks 

and citations omitted). According to the Board, a person of 

ordinary skill in the art would have been motivated to combine the AAPA with Waldmann and Schuelein “because the 

known separation of installation packages into a data portion and a customized information portion would have permitted the preservation of customized information as 

taught by both Waldmann and Schuelein.” Id. Supercell 

appeals from the Board’s final written decision. We have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

STANDARD OF REVIEW

We review decisions by the Patent Trial and Appeal 

Board in accordance with the Administrative Procedure 

Act, 5 U.S.C. § 706. Dickinson v. Zurko, 527 U.S. 150, 152 

(1999). Thus, we review the Board’s legal conclusions de 

novo and its factual findings for substantial evidence. 

ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 

(Fed. Cir. 2016). Substantial evidence means “such 

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SUPERCELL OY v. GREE, INC. 7

relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside, 203 F.3d 

1305, 1312 (Fed. Cir. 2000).

Claim construction is ultimately a question of law that 

may be based on underlying factual findings. Teva 

Pharms. U.S.A., Inc. v. Sandoz, Inc., 574 U.S. 318, 332–33 

(2015). We review the Board’s claim constructions based 

on intrinsic evidence de novo and those based on extrinsic 

evidence for substantial evidence. Wasica Fin. GmbH v. 

Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017).

Obviousness is also a question of law with underlying 

factual issues relating to the “scope and content of the prior 

art, differences between the prior art and the claims at issue, the level of ordinary skill in the pertinent art, and any 

objective indicia of non-obviousness.” Randall Mfg. v. Rea, 

733 F.3d 1355, 1362 (Fed. Cir. 2013) (citing KSR Int’l Co. 

v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John 

Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).

DISCUSSION

I 

Supercell’s appeal rises and falls, for the most part, 

with its claim construction argument, so we first address 

claim construction. 

We begin our review of the Board’s decision by noting 

that it appears Supercell raises an entirely new argument 

on appeal. Before the Board, “Supercell argued . . . that 

[the] term ‘customized information portion’ is expressly defined in the specification as comprising ‘at least one of a 

release channel of the application, a network traffic tip, an 

update mode or a link to the release channel.’” Appellant’s 

Br. 17 n.6 (citing J.A. 543). On appeal, Supercell claims

that “the customized information portion is the part of the 

current installation package that contains metadata pertaining to the installation and not the application data.” 

Id. at 19–20 (emphasis added). In other words, Supercell 

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8 SUPERCELL OY v. GREE, INC. 

now argues that a “customized information portion” may 

contain “metadata pertaining to the installation and not 

the application data.” See id. 

The argument raised before this court is significantly 

different from the argument Supercell advanced before the 

Board. Whereas Supercell proposed a minimum-inclusionary construction before the Board, it proposes an exclusionary construction now. We routinely decline to consider 

arguments raised for the first time on appeal because the 

failure to raise an argument before the Board constitutes a 

forfeiture of that issue. See In re Google Tech. Holdings 

LLC, 980 F.3d 858, 863 (Fed. Cir. 2020). Notwithstanding 

the apparent forfeiture, however, we note that Supercell’s 

position lacks merit in any event. 

We refuse to accept Supercell’s invitation to read limitations into the ’520 Patent. The terms “metadata” and 

“application data” do not appear anywhere in the ’520 Patent, and the patent does not provide that a customized information portion cannot contain any “customer specific 

data and protocols,” as Supercell argues. Appellant’s 

Br. 20. Indeed, the language in the ’520 Patent belies 

Supercell’s argument. The specification describes an embodiment in which the customized information includes “a 

device type.” ’520 Patent col. 6 ll. 21–22. Supercell argues 

that “device type” is listed as an example of customized information in the ’520 Patent to “merely indicate[] a specific 

device type for which the installation package is designed.” 

Appellant’s Br. 20. But “device type” is necessarily customer-specific, as it identifies the type of device on which a 

customer upgrades an application. 

Nor are we persuaded to limit the construction of a 

term on the basis of a single exemplary embodiment, as 

Supercell urged the Board to do. See Phillips v. AWH 

Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) 

(“[A]lthough the specification often describes very specific 

embodiments of the invention, we have repeatedly warned 

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SUPERCELL OY v. GREE, INC. 9

against confining the claims to those embodiments.”); accord, e.g., SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 

872 (Fed. Cir. 2020) (affirming Board’s decision “declining 

to import exemplary embodiments of ‘instruction code’ 

from the specification into the broader claim term ‘instruction data’”). As the Board noted, the ’520 Patent discloses 

multiple exemplary embodiments, and not every example 

contains the limitation Supercell wishes to impose on the 

claimed term. See GREE, 2020 WL 2479654, at *4 (quoting ’520 Patent col. 6 ll. 20–25). We hold that the Board 

did not err in declining to import limitations from one embodiment into the claimed term “customized information 

portion.”

We affirm the Board’s rejection of Supercell’s proposed 

construction of the term “customized information portion.” 

To the extent Supercell’s additional arguments rely on our 

acceptance of its proposed construction, those arguments 

necessarily fail as well.

II

Supercell also argues that the prior art does not disclose the claimed limitations of “removing a customized information portion” or “obtaining the new installation 

package by adding the customized information portion to 

the data portion of the new installation package.” See Appellant’s Br. 28–38; see also ’520 Patent col. 9 l. 67–col. 10 

l. 8. We disagree.

Schuelein teaches identifying and setting aside customer-specific information while a new version of the software application is installed, then integrating the 

customer-specific data with the revised application version. Schuelein ¶¶ 32–36. Schuelein explains that “[t]he 

modified revised version of the software application implementing the customer specific data and/or customer protocols may then be transferred to the customer facility for 

installation.” Id. ¶ 5. Under the broadest reasonable interpretation of the claimed terms, the Board’s 

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10 SUPERCELL OY v. GREE, INC. 

determination that Schuelein teaches removing a customized information portion and obtaining a new installation 

package by combining the removed portion with an upgraded data portion is supported by substantial evidence. 

We have considered the other arguments raised by 

Supercell and find them unpersuasive. 

AFFIRMED

COSTS

No costs.

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