Case 1:16-cv-00455-RGA Document 304 Filed 10/31/17 Page 1 of 5 PagelD #: 21819
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ACCELERATION BAYLLC,
`
`Plaintiff,
`
`Vv.
`
`ACTIVISION BLIZZARD, INC.
`
`Defendant.
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`Vv.
`
`ELECTRONIC ARTSINC.,
`
`Defendant.
`
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES,INC. and
`2K SPORTS,INC.,
`
`Defendants.
`
`NeeeeeeeeeeeeeeeeeeeeNeeeeeeeeeeeeeeeeeeeeeeeeeeeteeeeee
`
`C.A. No. 16-453 (RGA)
`
`PUBLIC VERSION
`
`C.A. No. 16-454 (RGA)
`
`C.A. No. 16-455 (RGA)
`
`LETTER TO THE HONORABLE RICHARD G. ANDREWS FROM
`PHILIP A. ROVNER, ESQ. REGARDING UNTIMELY ELECTION OF PRIOR ART
`
`

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`Case 1:16-cv-00455-RGA Document 304 Filed 10/31/17 Page 2 of 5 PagelD #: 21820
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`Dear Judge Andrews:
`
`Acceleration Bay seeks an order confirming that Defendants may not rely on the Alagar
`prior art reference because Defendants did not includeit in their initial election of prior art and
`have not sought leave to amendtheir election to include this new reference. Defendants have
`thereby failed to follow the procedure the Court previously ordered the parties to follow before
`amending elections. D.I. 116 (4/13/17 Order).! Moreover, as explained below, Defendants have
`stalled presentation of this dispute to the Court, backing away from an agreement to move for
`leave to amend, and heightening the prejudice to Acceleration Bay by forcing it to contend with
`prior art not properly in the case in connection with rapidly upcoming expert reports.
`
`Defendants injected Alagarinto the case, even though they did not includeit in their
`initial election of prior art. The Scheduling Order in the predecessor cases to these actions
`required Defendants to provide a preliminary election ofprior art, which would limit the priorart
`they could present in the case. C.A. No. 15-228-RGA,D.I. 34 at § 10(b). Defendants’ May6,
`2016 election, incorporated into these cases, included the maximum twelve references, but did
`not include Alagar. Ex. 1 at 24-26.? Defendants provided updatedinvalidity contentions on June
`8, 2017 and July 31, 2017 that also did not include Alagar. On September 15, 2017, Defendants
`servedafinal election of prior art adding Alagar as a reference and on September 25, 2017,
`served an opening invalidity report relying on Alagar. Ex. 2 (9/15/17 Election of Prior Art).
`Defendants did not confer with Acceleration Bay regarding adding this new priorart to the case
`and did not seek leave from the Court to amend their initial election of prior art to include
`Alagar. Acceleration Bay’s responsive validity report is due November 10, 2017.
`
`Defendants failed to follow the Court’s procedure to amend case elections. When
`Acceleration Bay served an updated election of asserted claims adding new claims in view of
`developments in inter partes review proceedings, the Court held that both parties must first move
`for leave to amend elections upon a showing of good cause. D.I. 116 (““Preliminary’ refers to
`time.
`It does not mean ‘subject to change at whim.’ As Defendants point out, the goal is to
`narrow the case into something that could be triable. When one side or the other seeks to
`replace[] newly-identified weaklings with more robust claims, that side is going in the wrong
`direction. Absent good cause, Plaintiff cannot substitute different claims for the ones currently
`asserted, and Defendants cannot substitute different art for the ones currently asserted.”)
`(emphasis added), Defendants arguedat that time that it was improper for Acceleration Bay to
`add unelected claims — an argument that applies fully to their attempt to add new, unelected
`
`' Unless otherwise noted, all docket citations are to C.A. No. 16-453-RGA, and are
`representative of filings in the related cases.
`
`2 Defendants’ invalidity election also improperly purported to reserve the right to add additional
`references from the prosecution of the Asserted Patents in the event Acceleration Bay took a
`position inconsistent with the positions during prosecution. The Scheduling Order does not
`permit Defendants to exceed the limit of elected references through additional “conditional”
`elections.
`In any event, even Defendants’ list of such purportedly conditional references did not
`include Alagar. Ex. 1 (5/6/16 Invalidity Contentions) at 13-14.
`
`

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`Case 1:16-cv-00455-RGA Document 304 Filed 10/31/17 Page 3 of 5 PagelD #: 21821
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`The Honorable Richard G. Andrews
`October 24, 2017
`Public version dated: October 31, 2017
`Page 2
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`prior art to the case on the eve of expert reports and well after the close of fact discovery. D.I.
`113 at 3 (Defendants: “The Scheduling Order provided a procedure for Acceleration Bay to elect
`asserted claims, and procedures for those claimsto belitigated. 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.”). Because Defendants did not
`seek leave from the Court to add Alagar to their election of prior art,
`it is not in the case,
`Defendants should not be permitted to rely uponit, and Acceleration Bay should not be burdened
`by providing responsive expert reports addressing the unelected reference.
`
`Defendants cannot show good cause. Defendants waived their opportunity to show
`good cause by reneging on their agreementto file a request with the Court for leave to amend by
`no later than October 20, 2017. Ex. 3 at 10/13/17 Email. Nor could Defendants show good
`cause. During the parties’ long delayed meet and confer, Defendants could not identify any basis
`to justify adding this prior art, other than to suggest that Acceleration Bay’s claim construction
`positions as to the “m-regular” limitation are somehow inconsistent with positions taken by the
`applicants during prosecution. However, Acceleration Bay provided its claim construction for
`“m-regular” by no later than the parties’ submission of the Joint Claim Construction Chart on
`April 17, 2017, provided its opening claim construction brief on that term on April 28, 2017 and
`its final brief on June 2, 2017. Defendants specifically referenced Alagar in their claim
`construction briefing, served on June 16, 2017. D.I. 186 (Joint Brief) at 21, 64 n.13, 71 n.14.
`Thus, Defendants were well aware of Alagar long before the close of fact discovery on July 31,
`2017. To the extent Defendants believed Acceleration Bay’s claim construction positions
`somehow necessitated the introduction of new prior art in the case, they should have promptly
`sought leave from the Court to do so. Instead, Defendants waited months until well after the end
`of fact discovery before unilaterally introducing Alagar.
`
`In addition to Defendants’ inexplicable lack of diligence, there is no good cause because
`it would be highly prejudicial to permit the addition of new prior art at this late stage. The
`parties served their claim construction positions in April and held the initial Markman hearing on
`July 10, 2017. Fact discovery ended July 31, 2017. D.1. 62 (Scheduling Order).
`In opposing
`Acceleration Bay’s addition of two claims in May, Defendants argued that it was too prejudicial
`“with claim construction proceeding and fact discovery well advance” D.I. 145 at 3 (5/5/17
`Letter) (“It is too late to start on infringement and invalidity contentions on additional claims
`after claim construction briefing and at
`the end of fact discovery. More fundamentally,
`Defendants have planned their approach to this litigation around the claims Acceleration Bay
`elected and chose tolitigate since 2015.”). Similarly, the Court overruled Acceleration Bay’s
`objections to Special Master Order No. 4, finding that Acceleration Bay could not include new
`products in May and June because “i]t is too late to be adding more products to the case.” D.I.
`284. Those arguments apply even more so now five months later in the case to Defendants’
`attempt to add newpriorart issues to thecase.
`
`Defendants delayed presentation of this issue to the Court, magnifying the prejudice
`to Acceleration Bay. Defendants delayed the presentation of this issue to the Court for over a
`month byfirst dragging out the meet and confer process, then causing Acceleration Bay to forgo
`submitting the issue to the Court by agreeingto file a motion for leave to amend, reneging on the
`
`

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`Case 1:16-cv-00455-RGA Document 304 Filed 10/31/17 Page 4 of 5 PagelD #: 21822
`
`The Honorable Richard G. Andrews
`October 24, 2017
`Public version dated: October 31, 2017
`Page 3
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`Specifically,
`agreed upon deadline and then withdrawing from the entire agreement.
`Acceleration Bay contacted Defendants regarding their
`improper assertion of Alagar on
`September 20, 2017, five days after Defendants served their final election of prior art. Ex. 3 at
`9/20/17 email. Acceleration Bay requested that Defendants either withdraw the reference or seek
`leave from the Court to amend their prior art election. Acceleration Bay conferred with
`Defendants and repeatedly asked Defendants to promptly seek leave from the Court so that the
`dispute could be resolved well in advance of the deadline for Acceleration Bay to provide its
`validity report. Jd. After three weeks of delay and multiple follow ups, Acceleration Bay stated
`that it would present the issue to the Court unless Defendants promptly filed a motion for leave
`to amend.
`Jd. at 10/12/17 email. On October 13, 2017, the parties reached an agreement that
`Defendants would file their motion by no later than October 20, 2017 (a full month after
`Acceleration Bay raised the issue). Based on that agreement, Acceleration Bay refrained from
`presenting the issue to the Court. On October 20, 2017, Defendants unilaterally announced that
`they wouldnot file until October 24, 2017, citing for the first time a need to apprise the Court of
`the issue (despite Acceleration Bay having on multiple occasions requested a joint call to
`chambers) and the need to submit other filings.
`Jd. at 10/20/17 email. On October 23, 2017,
`Defendants stated they would no longer present to the Court the issue of the election of the
`Alagar reference based on a newly identified and unrelated alleged deficiency in Acceleration
`Bay’s document production. Jd. at 10/23/17 email.
`
`Defendants’ conduct has been highly prejudicial to Acceleration Bay. With validity
`rebuttal reports due on November 10, 2017 and Defendants’ expert providing an extended
`discussion of the Alagar reference, Defendants’ delay in presenting this issue to the Court has
`forced Acceleration Bay andits experts to devote resources to responding to prior art that is not
`properly in the case and was never addressed during fact discovery. Had Defendants simply
`stated they would not seek leave from the Court, Acceleration Bay could have presented this
`issue to the Court weeks ago.
`
`Finally, Defendants’ approach to this dispute is entirely inconsistent with their demands
`of Acceleration Bay. The parties recently submitted to the Special Master various disputes
`regarding the other side’s respective expert reports. Given the importance of the issues,
`Acceleration Bay requested that the hearing be postponed by three weeks so that lead trial
`counsel, who hasa three weekjurytrial starting at the end of this month, could attend the hearing
`in person (Defendants previously requested and received adjournments of hearings by several
`weeks to accommodate conflicts due to the travel of their counsel). Defendants insisted on an
`expedited hearing, citing the need to have their motions resolved before they served their
`responsive expert reports so that, to the extent part of their motion is granted, Defendants can
`refrain from responding to any excluded portions. The exact same consideration applies to the
`instant dispute, which necessarily will have a significant impact on the scope of Defendants’
`invalidity expert opinion to which Acceleration Bay will soon need to respond.
`
`For these reasons the Court should confirm that Defendants may notrelay on Alagar.
`
`

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`Case 1:16-cv-00455-RGA Document 304 Filed 10/31/17 Page 5 of 5 PagelD #: 21823
`
`The Honorable Richard G. Andrews
`October 24, 2017
`Public version dated: October 31, 2017
`Page 4
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`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`Attachments
`ce:
`All Counsel of Record (Via ECF Filing, Electronic Mail)
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`5503159
`
`