Case 1:16-cv-00455-RGA Document 83 Filed 04/11/17 Page 1 of 3 PageID #: 2602
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`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
`
`(302) 658-9200
`(302) 658-3989 FAX
`
`JACK B. BLUMENFELD
`(302) 351-9291
`(302) 425-3012 FAX
`jblumenfeld@mnat.com
`
`
`April 11, 2017
`
`VIA ELECTRONIC FILING
`
`
`
`The Honorable Richard G. Andrews
`United States District Court
` for the District of Delaware
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Dear Judge Andrews:
`
`
`Acceleration Bay LLC; C.A. Nos. 16-453 (RGA); 16-454 (RGA); and 16-455 (RGA)
`
`Defendants in these three actions write to seek relief from the Court concerning five
`patent claims that plaintiff Acceleration Bay purported to assert for the first time last week.
`Because the parties are in the middle of claim construction proceedings, in preparation for a July
`10, 2017 Markman hearing and a July 31 close of fact discovery, Defendants seek relief on an
`expedited basis. We have met and conferred with counsel on this issue, but Acceleration Bay
`has declined to withdraw any of those claims.
`
`The six patents asserted by Acceleration Bay include more than 100 claims. In the 2015
`cases, the Court ordered a two-stage process for reducing the number of asserted claims – an
`initial election of “of no more than ten claims from each patent and not more than a total of 32
`claims” and then a final election of asserted claims “from among the ten previously identified
`claims.” (C.A. No. 15-228, D.I. 34 ¶ 10(a)). Plaintiff served its initial election in March 2016
`and then incorporated that election – verbatim – into the Scheduling Order for these cases, along
`with the requirement that it make a final election from among the previously identified claims.
`(D.I. 62 ¶ 9(a)).1 There is no provision in the Scheduling Order permitting Acceleration Bay to
`add or substitute asserted claims. Adding claims at this stage is contrary to the Court’s stated
`goal of reducing the size of the case. Nevertheless, during the meet and confer, Acceleration
`
`
`1
`Citations to Docket Items refer to C.A. No. 16-453-RGA.
`
`

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`Case 1:16-cv-00455-RGA Document 83 Filed 04/11/17 Page 2 of 3 PageID #: 2603
`
`The Honorable Richard G. Andrews
`April 11, 2017
`Page 2
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`Bay took the position that there is no limitation on its ability to assert additional claims at any
`time.
`
`In late 2015, Defendants filed a number of IPRs directed at the patents-in-suit. In late
`
`March 2017, the PTAB found 11 asserted claims from three of the asserted patents to be
`unpatentable. See D.I. 106. Before last week, Acceleration Bay never indicated any intent to
`seek to assert different claims based on the outcome of the IPRs. It never served infringement
`contentions as to those claims or demanded that Defendants provide invalidity contentions as to
`them. In fact, Acceleration Bay’s initial election of asserted claims was served after the IPRs
`had been instituted, but the initial election of claims did not indicate that the election of claims
`was dependent on the outcome of those IPRs. Last week, however, without conferring with
`Defendants or seeking leave of Court, Acceleration Bay served an “Amended Preliminary
`Election of Asserted Claims” (Ex. A). It withdrew the claims found to be unpatentable and at the
`same time purported to add five claims that had not been previously asserted – three “claims”
`that have not yet issued but were found allowable as substitute claims in the IPR process and two
`claims that were in the patents at the time the suit was filed. (See D.I. 108). There is no basis to
`allow the addition of either group of claims.
`
`All Parties have been proceeding on only the 32 claims that Acceleration Bay elected.
`The final hearing for the IPRs was in December 2016, but Acceleration Bay did not indicate any
`intent to try to add new claims based on the IPRs at the February 2017 scheduling conference.2
`Instead, Plaintiff sought (and received) a short schedule on the basis that these cases were
`continuations of the prior cases and that the issues were largely developed. At no time prior to
`last week did Acceleration Bay suggest that it considered its election of asserted claims to be
`non-binding. Moreover, it has not provided any infringement contentions for the five new
`claims. And Defendants have not prepared invalidity contentions for these five claims. The
`parties also have not exchanged disputed claim terms or proposed constructions for the newly
`asserted claims, and a Joint Claim Chart is due this Friday, April 14. Acceleration Bay’s
`opening claim construction brief is due later this month, on April 28.
`
`The three substitute claims3 do not exist as issued claims and thus cannot be asserted as a
`matter of law. 35 U.S.C. § 318(b); 37 C.F.R. § 42.80. The term of a patent does not begin until
`it actually issues. 35 U.S.C. § 154(a)(2). Issuance of a substitute claim from an IPR proceeding
`only occurs after “the time for appeal has expired or any appeal has terminated.” 35 U.S.C. §
`318(b). That has not happened, and Defendants have until late May to appeal these decisions.
`This Court has no jurisdiction over patent claims that have not issued (and may never issue).
`Thus, those claims cannot be asserted. During the meet and confer, Acceleration Bay argued it
`has the right to assert those claims even though they have not issued, but offered no authority to
`
`
`2
`Two other IPRs are still pending, and final written decisions are expected in September
`2017.
`The three substitute claims are claim 21 of the ‘344 Patent, claim 19 of the ‘966 Patent,
`and claim 25 of the ‘634 Patent. (D.I. 108 at 2-3).
`
`3
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`

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`Case 1:16-cv-00455-RGA Document 83 Filed 04/11/17 Page 3 of 3 PageID #: 2604
`
`The Honorable Richard G. Andrews
`April 11, 2017
`Page 3
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`support its position that it can assert unissued claims and Defendants are not aware of any such
`authority.4
`
`Nor should Acceleration Bay be allowed to assert the other two previously unasserted
`claims: claim 12 of the ‘344 Patent and claim 10 of the ‘634 Patent. Acceleration Bay could
`have asserted those claims in its original election, but chose not to. Further, if claim 10 of the
`’634 patent were in the case, it includes several terms that should be construed, but which are not
`among the terms designated for claim construction.
`
`The Scheduling Order provided a procedure for Acceleration Bay to elect asserted
`claims, and procedures for those claims to be litigated. It also provided for reduction of asserted
`claims, but did not permit the later assertion of additional claims. Acceleration Bay should not
`be permitted to assert any new claims in these cases. Given the events that are ongoing,
`including the Joint Claim Chart due later this week, Defendants request a telephone conference
`with the Court to discuss how to proceed.
`
`
`
`Respectfully,
`
`/s/ Jack B. Blumenfeld
`
`Jack B. Blumenfeld (#1014)
`
`JBB/dlw
`Enclosure
`cc:
`Clerk of Court (Via Hand Delivery; w/ encl.)
`
`All Counsel of Record (Via Electronic Mail; w/ encl.)
`
`
`
`4
`Even if those claims could be asserted, they could not be asserted against the presently
`accused products and other issues of “intervening rights” would be injected into the case.
`35 U.S.C. § 318(c).
`
`