Case 1:16-cv-00455-RGA Document 189 Filed 07/14/17 Page 1 of 2 PageID #: 17413
`
`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
`
`July 14, 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:
`
`Plaintiff Acceleration Bay LLC (“Acceleration Bay”) writes in response to the Court’s
`question during the July 10, 2017 Markman hearing to confirm its position that statements made
`during the prosecution of the six asserted patents are not binding upon the scope of the other
`asserted patents. Each of the asserted patents issued from a separate application, and none of the
`patents are a parent, continuation, continuation-in-part or divisional of another.
`
`To determine whether statements made during prosecution of a patent apply to construing
`the claims of a different patent, the Federal Circuit considers a number of factors, including (1)
`whether the patents have a parent/child or sibling relationship (i.e., were filed as continuations,
`continuations-in-part, or divisional applications of one another or a common parent), (2) whether
`the patents claim the same invention, (3) the patents’ respective disclosures, (4) when the patents
`were filed, (5) common ownership, and (6) overlap in inventorship. See Abbott Labs. v. Dey,
`L.P., 287 F.3d 1097, 1105 (Fed. Cir. 2002) (declining to limit claim scope based on prosecution
`history of a separate application that did not have a parent/child or sibling relationship with the
`patent-in-suit); cf. Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir.
`2004) (holding that statements made in prosecution of one patent are relevant to the scope of all
`sibling patents).
`
`Acceleration Bay is not aware of any Federal Circuit case finding statements made during
`prosecution of a different patent to be binding on the construction of another patent without a
`parent/child or sibling relationship between the patents, which is not present here. For example,
`in Abbott Laboratories, the patent-in-suit claimed improvements on inventions disclosed in a
`commonly owned earlier filed application sharing one of the same inventors. 287 F.3d at 1105.
`
`

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`Case 1:16-cv-00455-RGA Document 189 Filed 07/14/17 Page 2 of 2 PageID #: 17414
`
`The Honorable Richard G. Andrews
`July 14, 2017
`Page 2
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`The Federal Circuit nevertheless declined to limit the claim scope of the patent-in-suit based on
`statements made during prosecution of the earlier filed application, explaining that the patent-in-
`suit “was not filed as a continuation, continuation-in-part, or divisional application of the [earlier
`filed’ application]” and that “[t]hese applications have no formal relationship and were presented
`to the patent office as patentably distinct inventions.” Id. at 1105.
`
`Similarly, in Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp, the Federal
`Circuit held that “there is no reason why” claims from two separate but commonly owned patent
`families sharing one of the same inventors should be construed consistently, explaining that the
`“patents comprise two separate families, and these two families of patents claim two different
`inventions, list only one inventor in common, were filed years apart, and do not result from the
`same patent application.” 811 F.3d 1359, 1369 (Fed. Cir. 2016). The Federal Circuit further
`cautioned that, even if patents are in the same family, that does not mean that their claims must
`be construed consistently—rather, the context of the claim language itself may dictate that the
`claims cover different scope. Id. at 1370; see also ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d
`1374, 1383 (Fed. Cir. 2003) (“Although a parent patent’s prosecution history may inform the
`claim construction of its descendant, the [parent] patent’s prosecution history is irrelevant to the
`meaning of this limitation because the two patents do not share the same claim
`language.”)(citation omitted).
`
`Here, the asserted patents were filed as six separate applications and do not have a
`parent/child or sibling relationship.1 Further, they have separate file histories, they claim
`different inventions,2 and, although there are similarities in their specifications, they are not
`identical. Under these circumstances, there is no basis to limit the scope of any of these patents
`based on statements made in prosecution of one of the other patents.
`
`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`cc:
`
`All Counsel of Record (Via ECF Filing, Electronic Mail)
`
`1 Although the face each of the asserted patents states that it “is related to” each of the other
`patents, this statement does not create a formal familial relationship, i.e., a parent/child or sibling
`relationship. This is confirmed by the fact that the USPTO’s Patent Application Information
`Retrieval system (“PAIR’) does not identify the asserted patents as related. See attached
`Exhibits A-F (PAIR “Continuity Data” for each of the asserted patents).
`
`2 The USPTO recognized that the asserted patents claim separate and patentably distinct
`inventions, only requiring terminal disclaimers between the ‘344 and ‘966 patents.
`
`