Case 1:16-cv-00455-RGA Document 112 Filed 05/01/17 Page 1 of 5 PageID #: 12547
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 16-453 (RGA)
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`C.A. No. 16-454 (RGA)
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`C.A. No. 16-455 (RGA)
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`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD, INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ELECTRONIC ARTS INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC., and 2K
`SPORTS, INC.,
`
`Defendants.
`
`PLAINTIFF ACCELERATION BAY’S
`LETTER BRIEF IN SUPPORT OF ITS MOTION FOR LEAVE
`TO AMEND ITS PRELIMINARY ELECTION OF ASSERTED CLAIMS
`
`

`

`Case 1:16-cv-00455-RGA Document 112 Filed 05/01/17 Page 2 of 5 PageID #: 12548
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`Dear Judge Andrews,
`
`Further to the Court’s April 13, 2017 Order (D.I. 116),1 Plaintiff moves for leave to
`amend its preliminary election of asserted claims to (1) withdraw its election of claims found
`unpatentable in inter partes review (IPR) proceedings; (2) replace previously asserted Claim 1 of
`U.S. Patent No. 6,701,344 (the “‘344 Patent”) with its dependent Claim 12, confirmed valid in
`the IPR proceedings; and (3) replace previously asserted independent Claim 1 with Claim 10 of
`U.S. Patent No. 6,829,634 (the “‘634 Patent”), confirmed valid in the IPR proceedings.
`
`“The key factor courts look at to determine whether good cause exists to grant an
`amendment to a contention is the diligence of the moving party.” Bayer Cropscience AG v. Dow
`Agrosciences LLC, Civil No. 10-1045 (RMB/JS), 2012 WL 12904381, at *2 (D. Del. Feb. 27,
`2012) (finding a good cause to amend infringement contentions)(citation omitted). Another key
`factor is whether the proposed amendment will prejudice the non-moving party. Id., at *3.
`“[M]otions to amend contentions are fact sensitive, and the ultimate decision whether to grant or
`deny a motion to amend contentions is a matter left to the broad discretion afforded a trial court.”
`Id., at *1, n.1. Here, there is good cause for Acceleration Bay to amend its preliminary election
`of asserted claims in view of recently issued decisions in IPR proceedings regarding certain
`claims of the asserted patents. The claims are also not new to the parties’ dispute. Defendants
`put them at issue in the IPRs, and they have already been the subject of extensive briefing and
`expert analysis, including on claim construction issues, in those proceedings.
`
`A.
`
`Acceleration Bay Acted Diligently in Seeking Leave to Amend its
`Preliminary Election
`
`Acceleration Bay diligently sought leave to amend its Preliminary Election. “Diligence
`has two aspects to it. One is whether the moving party acted diligently to discover that a
`supplement or amendment was appropriate. The second aspect is whether the moving party
`promptly moved to amend its contentions after it learned an amendment was necessary.” Id., at
`*2 (citing O2 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir.
`2006)). Acceleration Bay acted diligently on both counts. Defendants have not asserted
`otherwise either in its prior letter to the Court on this issue (D.I. 113) or during the parties’ meet
`and confers. On March 23, 2017 and March 29, 2017, the Patent Trial and Appeal Board
`(“PTAB”) issued Final Written Decisions regarding the validity of certain claims of the Asserted
`Patents. See D.I. 106. The PTAB confirmed the validity of various claims asserted by
`Acceleration Bay, found other claims valid once narrowed through amendment, and found
`certain claims unpatentable. See D.I. 108. On April 5, 2017, within one week of the final
`decision, Acceleration Bay served its Amended Preliminary Election of Asserted Claims based
`on these developments in the IPRs. Shortly after the Court’s initial Order asking Acceleration
`Bay to make a showing of good cause (D.I. 116), Acceleration Bay reached out to Defendants,
`and the parties jointly sought guidance from the Court as to how best to present this issue. Thus,
`Acceleration Bay diligently pursued this relief.
`
`1 All docket citations are to Acceleration Bay LLC v. Activision Blizzard, Inc. C.A. 16-453
`(RGA). Substantially similar documents have been issued by the Court or filed or served by the
`parties in the related actions.
`
`

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`Case 1:16-cv-00455-RGA Document 112 Filed 05/01/17 Page 3 of 5 PageID #: 12549
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`B.
`
`There is No Prejudice to Defendants From the Proposed Amendments
`
`There is no prejudice to Defendants from Acceleration Bay’s proposed amendments. In
`deciding the prejudice to the non-moving parties, such prejudice must be “material,”
`“significant” or “vexatious.” Bayer Cropscience AG, 2012 WL 12904381, at *3. Simply
`requiring Defendants to undertake “some additional work” does not constitute material prejudice.
`Id. Moreover, given the number of asserted claims Acceleration Bay is withdrawing, even with
`the addition of two new claims, the total number of asserted claims (22) is markedly less than in
`Acceleration Bay’s initial selection of 32 claims.
`
`There is also ample time to address these claims (to the extent they raise any new issues),
`as fact discovery closes July 31, 2017, opening expert reports are due September 22, 2017, and
`trials are respectively scheduled for April, July and August 2018. D.I. 62. The Court has
`scheduled a Markman hearing for July 10, 2017. Defendants thus have plenty of time to address
`any claim construction issues raised by the two claims Acceleration Bay seeks to add (to the
`extent there are any). If permitted to add these two claims, Acceleration Bay will, within 10
`days, provide infringement contentions for the new claims. Defendants will then have an
`opportunity to provide amended invalidity contentions, to the extent necessary, to address the
`two claims.
`
`The Court has found no material prejudice and granted leave to amend under similar
`circumstances where the proposed amendments will not affect the trial date and the case is still at
`an early stage. Bayer Cropscience AG, 2012 WL 12904381, at *3. As is the case here, the Court
`granted leave where “the bulk of the fact discovery remains to be taken” and “[n]o experts
`reports have been produced and the Markman briefs have not been served.” Id., at *1, 3.2
`
`1. Claim 12 of the ‘344 Patent
`
`Acceleration Bay seeks to add Claim 12 of the ‘344 Patent to replace previously asserted
`Claim 1, from which it depends, based on unforeseen claim construction developments in the
`IPR proceedings. Defendants have already put Claim 12 at issue in the parties’ dispute by
`including it in IPRs, thus making it the subject of extensive briefing and expert opinion by the
`parties. As shown below, Claim 12 does not raise any new issues because it adds to previously
`asserted Claim 1 only the requirement that the “the interconnections of participants form a
`broadcast channel for a game of interest“:
`
`Claim 1. A computer network for providing a game
`environment for a plurality of participants, each participant
`having connections to at least three neighbor participants, wherein
`an originating participant sends data to the other participants by
`
`2 On April 28, 2017, Acceleration Bay served its opening claim construction brief, more than
`three weeks after serving its Amended Preliminary Election of Asserted Claims identifying the
`claims it seeks to add to the case. Claim construction briefing does not conclude until the filing
`of the parties’ joint brief on June 21, 2017.
`
`2
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`

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`Case 1:16-cv-00455-RGA Document 112 Filed 05/01/17 Page 4 of 5 PageID #: 12550
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`sending the data through each of its connections to its neighbor
`participants and wherein each participant sends data that it receives
`from a neighbor participant to its other neighbor participants,
`further wherein the network is m-regular, where m is the exact
`number of neighbor participants of each participant and further
`wherein the number of participants is at least two greater than m
`thus resulting in a non-complete graph.
`
`Claim 12. The computer network of claim 1 wherein the
`interconnections of participants form a broadcast channel for a
`game of interest.
`
`During the IPRs, the PTAB found that the bolded portion of Claim 1 was not a limitation.
`D.I. 119, Ex. C-1 (Final Written Decision) at 13. In response to this decision and without
`conceding that the PTAB’s construction is correct, Acceleration Bay seeks to add Claim 12,
`which recaptures the game broadcast channel requirement of Claim 1. Thus, Claim 12 does not
`present any new subject matter, as the parties were already addressing the game element
`limitation in the context of Claim 1. Additionally, Defendants previously conceded that this
`claim does not raise any new claim construction issues. See D.I. 113 at 3. Therefore, the
`proposed amendment to add Claim 12 will not prejudice the defendants. Bayer Cropscience AG,
`2012 WL 12904381, at *3.
`
`2. Claim 10 of the ‘634 Patent
`
`Acceleration Bay also seeks to add independent Claim 10 of the ‘634 Patent to replace
`previously asserted independent Claim 1. Defendants have already put Claim 10 at issue in the
`parties’ dispute by including it in IPRs and putting Acceleration Bay to the burden to defend its
`validity. Claim 10 has also been the subject of the parties’ briefing and expert analysis in the
`IPRs. Defendants contend that Claim 10 of the ‘634 Patent includes several new terms that
`require construction, but failed to identify any such terms, despite having almost a month to do
`so. See D.I. 113 at 3. Moreover, the parties already briefed claim construction in the context of
`the IPRs, including with respect to this claim. Even if the addition of Claim 10 presented one or
`two new terms for construction, Defendants have ample time to identify such terms and propose
`constructions. Given Defendants’ insistence on including over 50 terms in the claim
`construction briefing, there is little additional burden to address one or two additional claim
`elements, to the extent Defendants contend it is even necessary to do so (Acceleration Bay does
`not believe that any of the elements in the two claims it seeks to add require construction). Thus,
`there is no material prejudice to Defendants from permitting Acceleration Bay to amend its
`Preliminary Election.
`
`* * *
`
`Accordingly, there is good cause to grant Acceleration Bay leave to amend its
`Preliminary Election to: (1) withdraw claims found unpatentable in IPR proceedings; (2) add
`Claim 12 of the ‘344 Patent; and (3) add Claim 10 of the ‘634 Patent.
`
`3
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`

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`Case 1:16-cv-00455-RGA Document 112 Filed 05/01/17 Page 5 of 5 PageID #: 12551
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`POTTER ANDERSON & CORROON LLP
`
`By:
`
` /s/ Philip A. Rovner
`Philip A. Rovner (# 3215)
`Jonathan A. Choa (#5319)
`1313 North Market Street 6th Floor
`Wilmington, Delaware 19801
`Telephone: (302) 984-6000
`Facsimile: (302) 658-1192
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`Acceleration Bay LLC
`
`OF COUNSEL:
`
`Paul J. Andre
`Lisa Kobialka
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`Aaron M. Frankel
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY
`(212) 715-9100
`
`Dated: May 1, 2017
`5115495
`
`4
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