Case 1:16-cv-00455-RGA Document 85 Filed 04/13/17 Page 1 of 2 PageID #: 2611
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`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`Philip A. Rovner
`Partner
`provner@potteranderson.com
`(302) 984-6140 Direct Phone
`(302) 658-1192 Fax
`
`April 13, 2017
`
`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
`
`Re:
`
`Acceleration Bay LLC v. Activision Blizzard, Inc. et al.
`D. Del., C.A. No. 16-453-RGA, 16-454-RGA, 16-454-RGA
`
`Dear Judge Andrews:
`
`Acceleration Bay writes in response to Defendants’ April 11, 2017 letter regarding
`Acceleration Bay’s Amended Preliminary Election of Asserted Claims (“Amended Election”).
`As set forth below, Acceleration Bay’s amendments are based on recent developments in the
`case, are intended to conserve the resources of the parties and the Court, do not prejudice
`Defendants and do not require modification of the claim construction, or case, schedule.
`
`Acceleration Bay updated its Preliminary Election based on recent developments in the
`inter partes review proceedings (IPRs) for several of the Asserted Patents. In late March 2017,
`the Patent Trial and Appeal Board (PTAB) issued written decisions in several IPRs, finding
`certain claims in Acceleration Bay’s patents valid and finding other claims unpatentable. The
`PTAB further amended certain claims, finding them patentable. In response, Acceleration Bay
`promptly served its Amended Election on April 5, 2017, adding two claims confirmed valid
`during the IPR proceedings, withdrawing the asserted claims found unpatentable by the PTAB,
`and notifying defendants that Acceleration Bay intends to assert the amended versions of three
`previously asserted claims – each narrowed through amendment during the IPR proceedings.1
`
`1 These amended claims include amended elected claim 7 (listed in the IPR as claim 21) of U.S.
`Patent No. 6,701,344, amended elected claim 7 (listed in the IPR as claim 19) of U.S. Patent No.
`6,714,966 and amended elected claim 5 (listed in the IPR as claim 25) of U.S. Patent No.
`6,829,634.
`
`

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`Case 1:16-cv-00455-RGA Document 85 Filed 04/13/17 Page 2 of 2 PageID #: 2612
`
`The Honorable Richard G. Andrews
`April 13, 2017
`Page 2
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`Acceleration Bay’s Amended Election remains under the limit of no more than ten claims per
`asserted patent and not more than a total of 32 claims.
`
`Both sides reserved the right to update their preliminary elections as the case progressed.
`Specifically, pursuant to the Scheduling Order, Acceleration Bay provided Preliminary Elections
`of Asserted Claims on March 25, 2016. Acceleration Bay reserved “the right to amend or
`modify [its] Preliminary Election of Asserted Claims as it obtains additional information over the
`course of discovery.” Similarly, Defendants’ Initial Invalidity Contentions (containing their
`corresponding preliminary election of prior art) stated that, “Defendants reserve their right to
`supplement or amend the disclosures made herein as new, additional, or different information is
`learned or discovered.”
`
`Defendants fail to identify any prejudice from Acceleration Bay’s election of claim 12 of
`the ‘344 Patent and claim 10 of the ‘634 Patent. Nor could they. Fact discovery does not close
`until July 31, 2017, Defendants have yet to take a single deposition of Acceleration Bay, and the
`first trial in these actions is not scheduled until April 2018. Defendants concede that claim 12 of
`the ‘344 Patent — which depends from formerly asserted Claim 1 — does not raise any new
`claim construction issues. Defendants contend that claim 10 of the ‘634 patent includes several
`new terms that require construction, but fail to identify any such terms. Acceleration Bay does
`not agree, but Defendants have ample time to identify such terms and propose constructions.
`Indeed, Acceleration Bay provided its Amended Election on April 5, 2017, more than three
`weeks before Acceleration Bay’s opening claim construction brief is due and well in advance of
`Defendants’ May 19, 2017 answering brief. Acceleration Bay also informed Defendants that it
`will promptly provide infringement contentions for the additional claims, and will allow
`Defendants a reasonable opportunity to provide updated invalidity contentions, if necessary, to
`address them.
`
`Acceleration Bay’s inclusion of the amended claims at this time is intended to conserve
`the resources of the parties and the Court. The amended claims are narrowed versions of claims
`already asserted against Defendants. Given the substantial overlap in subject matter between the
`amended claims and the other asserted claims, including the amended claims in discovery in
`these actions is more efficient than continuing to assert the unamended claims, waiting until all
`appeals from the IPRs are exhausted, and then filing new suits against Defendants.
`
`Accordingly, the case should proceed under the current schedule based on Acceleration
`Bay’s Amended Preliminary Election of Asserted Claims.
`
`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`cc:
`
`All Counsel of Record (Via ECF Filing, Electronic Mail)
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