Case 1:15-cv-00311-RGA Document 143 Filed 05/31/16 Page 1 of 4 PagelD #: 4094
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`
`| Potter
`S
`: Anderson
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`_ Corroon ue
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`1313 North MarketStreet
`P.O. Box 951
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`Wilmington, DE 19899-0951
`302 984 6000
`wwwpotlercancerson.com
`
`Philip A. Rovner
`Partner
`provner@potteranderson.com
`(302} 984-6140 Direct Phone
`(302) 658-1192 Fax
`
`May 16, 2016
`
`BY CM/ECF & HAND DELIVERY
`The Honorable Richard G. Andrews
`U.S. District Court for the District of Delaware
`U.S. Courthouse
`844 North King Street
`Wilmington, DE 19801
`
`PUBLIC VERSION
`May31, 2016
`
`Re:
`
`Acceleration Bay LLCv. Activision Blizzard, Inc. etal.
`D. Del., C.A. No. 15-228-RGA, 15-282-RGA, 15-311-RGA
`
`Dear Judge Andrews:
`
`Wewrite on behalf of Acceleration Bay in response to the Court’s Question: “If the
`Court concludes that Acceleration Bay is the ownerofthe patents-in-suit, is Boeing required to
`be joined as a party under Fed. R.Civ. P. 19?”.
`
`The answeris no. If Acceleration Bay is the ownerof the patents-in-suit, then Boeing
`need not be joined as a required party under Fed. R. Civ. P. 19. See, e.g., Vaupel
`Textilmaschinen KG y. Meccanica EuroItalia S.P.A., 944 F.2d 870, 875-76 (Fed. Cir. 1991)
`(finding inventor/assignor was not necessary under Rule 19 whenplaintiff had standing to sue
`alone due to its ownership of substantially all rights to the patent).
`
`The Federal Circuit has consistently held that the owner of a patent has standing byitself
`alone to assert that patent:
`
`e Alfred E. Mann Found. for Scientific Research v. Cochlear Corp., 604 F.3d 1354, 1360 (Fed.
`Cir. 2010) (“Whena sufficiently large portion of this bundle of rights is held by one
`individual, we refer to that individual as the ownerof the patent, and that individualis
`permitted to sue for infringement in his own name.”) (emphasis added);
`
`e Morrow v. Microsoft Corp., 499 F.3d 1332, 1340 (Fed. Cir. 2007) (When an original owner
`transfers “all substantial rights” in the patent to an assignee, “this amounts to an assignment
`or a transferoftitle, which confers constitutional standing on the assignee to sue for
`infringement in its own namealone.”);
`
`e Prima Tek I, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000) (“[W]here the
`patentee makes an assignmentofall substantial rights under the patent, the assignee may be
`
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`Case 1:15-cv-00311-RGA Document 143 Filed 05/31/16 Page 2 of 4 PagelD #: 4095
`
`The Honorable Richard G. Andrews
`May16, 2016 PUBLIC VERSION May31, 2016
`Page 2
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`deemedthe effective ‘patentee’ under 35 U.S.C. § 281 and thus may havestanding to
`maintain an infringementsuit in its own name.”);
`
`e MobileMedia Ideas, LLC vy. Apple Inc., 885 F. Supp. 2d 700, 706 (D. Del. 2012) (citing
`Aspex Eyewear, Inc. v. Altair Eyewear, Inc., 288 Fed. Appx. 697 (Fed. Cir. 2008) (“plaintiffs
`in patent suits fall into three categories for standing purposes: those that can sue in their own
`namealone; those that can sue as long as the patent owneris joined in the suit; and those that
`cannot even participate as a party to an infringementsuit. In the first category (i.e., those who
`can sue in their own namealone) are those plaintiffs that holdall legal rights to the patent,
`including assignees and those to whom ‘all substantial rights to the patent’ have been
`transferred.”’).
`
`Acceleration Bay’s ownership of the patents-in-suit, therefore, resolves all standing and
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`joinder issues. Non-owner Boeingis not a required party“|
`a there is no risk ofduplicative litigation over the claims at issue in
`
`these actions. Indeed, Defendants’ counsel recently successfully argued this point to this Court
`in another matter. D.I. 111,! Ex. 9 (EMC’s Reply Brief Regarding EMC Corporation’s Standing)
`at | (a “patentee with legal title and the right to sue has standing in federal court,” which “ends
`the inquiry.”).
`
`In the cases cited by Defendants in their motion to dismiss, the plaintiff was found to be
`an exclusive licensee, not the ownerofthe patents. For example, in the Clouding IP case upon
`which Defendants rely heavily, Judge Stark found that the plaintiff, Clouding IP, was not the
`ownerof the patents-in-suit, but instead was somewhere between an exclusive licensee and a
`bare licensee. Specifically, Judge Stark found that the original patentee did not conveysufficient
`rights to Clouding IP to transfer ownership of the patents-in-suit, and that Clouding IP’s “rights
`in the patents-in-suit do not amount to an ownership interest.” Clouding IP, LLC v. Google Inc.,
`61 F. Supp. 3d 421 at 434-35 (D. Del. 2014) (emphasis added); see also e.g., A123 Sys., Inc. v.
`Hydro-Quebec, 626 F.3d 1213, 1218 (Fed. Cir. 2010) (“In determining ownership for purposes
`of standing, labels given by the parties do not control. Rather, the court must determine whether
`the party alleging effective ownership hasin fact receivedall substantial rights from the patent
`owner”); Diamond Coating Techs., LLC v. Hyundai Motor Am., No. 8:13-CV-01480-MRP,2015
`WL 2088892, at *5 (C.D. Cal. Apr. 1, 2015) (‘Anassignor’s retention of substantial portions of
`proceeds from assignedpatents is ‘consistent with a retained ownership interest’ of those
`patents”); Prima Tek IT, L.L.C. v. A-Roo Co., 222 F.3d at 1377 (“Although an exclusive licensee
`may have standing to participate in a patent infringementsuit, in some cases it muststill be
`joined in suit by the patent owner’).
`
`Fed. R. Civ. P. 19(a) requires a non-party to be joined in only two circumstances, neither
`of which are found here:
`
`(A) in [a] person’s absence, the court cannot accord complete relief among existing
`parties; or
`
`1 Docketcitations herein are to Acceleration Bay LLCv. Activision Blizzard Inc., C.A. No. 15-282-RGA.
`
`

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`Case 1:15-cv-00311-RGA Document 143 Filed 05/31/16 Page 3 of 4 PagelD #: 4096
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`The Honorable Richard G. Andrews
`May 16, 2016 PUBLIC VERSION May31, 2016
`Page 3
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`(B) that person claimsan interest relating to the subject of the action and is so situated
`that disposing of the action in the person’s absence may(i) as a practical matter impair or
`impededthe person’s ability to protect the interest; or (ii) leave an existing party subject
`to a substantialrisk of incurring double, multiple or otherwise inconsistent obligations
`becauseoftheinterest.
`
`The Court can accord “complete relief among”the parties without Boeing because
`
`alone a “substantial risk’) of duplicative or inconsistent litigation. Jd. As Boeing itself
`
`acknowledges,
`
`D.I. 109 at 5-6; D.I. 110 (Radovsk
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`5cin:EI3 tne: is no risk (et
`
`
`
`there is
`
`no risk of duplicative or inconsistentlitigation, because Boein
`
`Int'l Gamco, Inc. v. Multimedia Games, Inc., 504 F.3d 1273, 1278-79 (Fed.
`Cir. 2007) (“[the] court’s prudential standing requirement compels an exclusive licensee with
`less than all substantial rights, such as a field of use licensee, to join the patentee before initiating
`suit.”). Indeed, because Acceleration Bay “will be a party to any suit that [Boeing] initiates,it
`will be collaterally estopped from re-litigating an issue that received a final judgment on the
`merits,” removing anyrisk of inconsistentlitigation. Bluestone Innovations LLC v. Nichia
`Corp., No. C 12-00059 SI, 2013 WL 1729814,at *5 (N.D. Cal. Apr. 22, 2013) (citing Int'l
`Gamco, 504 F.3d at 1278.).
`
`A finding that Acceleration Bay is the ownerof the patents-in-suit resolves any concerns
`over prudential standing andis also dispositive as to the Rule 19 issue because the Federal
`Circuit and other courts have treated the analysis of those two issues as one and the same. See,
`e.g., Vaupel Textilmaschinen, 944 F.2d at 875-76 (finding inventor/assignor was not necessary
`under Rule 19 whenplaintiff had standing to sue alone due to its ownership of substantially all
`rights to the patent); Luminara Worldwide, LLC v. Liown Elecs. Co., No. 2015-CV-1671, 2016
`WL 797925, at *5-6, n.5 (Fed. Cir. Feb, 29, 2016) (noting “that the same facts upon which we
`rely to conclude that Luminara[has prudential standing to] proceed in the absence of Disneyalso
`support a finding that Disney is not an indispensable party within the meaning of Rule 19”);
`Princeton Digital Image Corp. v. Hewlett-Packard, Nos. 12 Civ. 779 (RJS), 12 Civ. 6973 (RJS),
`12 Civ. 6974 (RJS), 2013 WL 1454945, at *6 (S.D.N.Y. Mar. 21, 2013) (“prudential [standing]
`constraints are governed by Federal Rule of Civil Procedure 19”); D.I. 111, Ex. 22, Adaptix, Inc.
`v. T-Mobile USA, Inc., No. 6:12-cv-00369, Memorandum Orderat 2-3 (E.D. Tex. Nov. 5, 2014)
`(characterizing motion to dismiss under Rule 19 as a motion to dismiss “for lack of constitutional
`and prudential standing”).
`
`Accordingly, if Acceleration Bay is the owner of the patents-in-suit, then Boeing need
`not be joined as a required party under Fed. R. Civ. P. 19.
`
`

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`Case 1:15-cv-00311-RGA Document 143 Filed 05/31/16 Page 4 of 4 PagelD #: 4097
`
`The Honorable Richard G. Andrews
`May 16, 2016 PUBLIC VERSION May31, 2016
`Page 4
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`Respectfully,
`
`/s/ Philip A, Rovner
`
`Philip A. Rovner (#3215)
`
`1223986
`cc: All Counsel of Record ~ by CM/ECFand E-mail
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`