N OTE : This disposition is nonprecedential.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

______________________

M ICHAEL J OHN S ACKSTEDER , Fenwick & West LLP, San Francisco, CA, for appellant. Also represented by T ODD R ICHARD G REGORIAN ; J ENNIFER R ENE B USH , Mountain View, CA; G EOFFREY R OBERT M ILLER , New York, NY.

J OHN C. A LEMANNI , Kilpatrick Townsend & Stockton LLP, Raleigh, NC, for appellee. Also represented by S TEVEN M OORE , San Francisco, CA; A NDREW W ILLIAM R INEHART , Winston

- Salem, NC.

______________________ Case: 20-2005 Document: 47 Page: 1 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

. 2

Before M OORE , Chief Judge

, R EYNA and H UGHES , Circuit Judges

. R EYNA , 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 challenge s the Board’s obviousness determination largely on the basisthat the Board erred in rejecting Supercell’s claim construction argument

. W e affirm.

B ACKGROUND

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 portion s and different customized information portions

. Id. at col. 1 ll. 47

– 52

. The ’5 20 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 Case: 20-2005 Document: 47 Page: 2 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

. 3

patch package , and combining the updated data portion with the ol d 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 toa current installation package of an application;
removing a customized information portion from the current installation package andobtaining a data portion of the current installation package;
generating a data portion of a new installation package according to the patch package and th e 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 P atent 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. Case: 20-2005 Document: 47 Page: 3 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

. 4

The specification of the ’520 Patent teaches multiple detailed embodiments of the claimed inventio n 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 spec ification 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 specifi c embodiment , Supercell argued before the Board thatthe term “customized information portion” should be construed to necessarily include at least one of those four types of information

. GREE

, 2020 WL 2479654 , a t *3.
The Board rejected Supercell’s proposed claim construction because it found that the specifi c embodiment on which Supercell relied was “merely exemplary.” Id. The Board also observed that the ’520 Patent identifies other types of customized informa tion 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)

. T he Board declined to con s true the term further

, noting that, in anyevent, “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 simp ly a matter of labeling data.”).

T he 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

. Case: 20-2005 Document: 47 Page: 4 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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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 teach es 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 app lications 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 informati on.” 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. Case: 20-2005 Document: 47 Page: 5 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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“integrate the customer[

- ]specific data wi th 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 preserv ing user

- inputted data and preferences from one version to the next. GREE

, 2020 WL 2479654

, at *9 (citing Waldmann at 21)

. T he 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). T he Board also noted that the AAPA discloses aninstallation package having a customized information portion

. Id. at *1 2 (citing ’520 P atent col. 1 ll. 42

– 47).

The Board identified a motivation to combine the prior art references because “b oth Waldmann and Schuelein disclose that it is de sirable 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 theknown 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).

S TANDARD OF R EVIEW

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 , w e review the Board’s legal conclusions de novo and its factual findings for substantial evidence. ACCO Brands Corp. v. Fellowes, I nc. , 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence means “such Case: 20-2005 Document: 47 Page: 6 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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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)).

D ISCUSSION

I
Supercell’s appeal rise s and fall s , for the most part, with its claim construction argument, so we first address claim construction

. We begin our review of the Board’s decis ion by noting that it appears Supercell raises a n 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). O n appeal, Supercell claims that “the customized information portion is the part of thecurrent installation package that contains metadata pertaining to the installation and not the application data .” Id. at 19

– 20 (emphasis added) . In other words , Supercell Case: 20-2005 Document: 47 Page: 7 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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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 advanc ed 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 t o 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 e vent

. We refuse to accept Supercell’s invitation to read limitation s into the ’520 Patent. T he 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. In deed , the language in the ’520 Patent belies Supercell’s argument . T he specification describes an embodiment in which the customized information includes “a device type.” ’520 Patent col. 6 ll. 21

– 22. Supercell argu es 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 designe d.” 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 Case: 20-2005 Document: 47 Page: 8 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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agains t 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 b roader 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 t he Boarddid 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 t erm “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 l imitation s 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 integrat ing the
customer- specific data with the revised ap plication version . Schuelein ¶¶ 32

– 36. Schuelein explains that “[t]hemodified 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 claim ed terms
, the Board’s Case: 20-2005 Document: 47 Page: 9 Filed: 09/29/2021SUPERCELL OY v. GREE , INC

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determination that Schuelein teach es removing a customized information portion and obtaining a new installationpackage 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

C OSTS

No costs. Case: 20-2005 Document: 47 Page: 10 Filed: 09/29/2021