Case 1:16-cv-00455-RGA Document 310 Filed 11/07/17 Page 1 of 3 PageID #: 21882
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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.
`
`LETTER TO THE HONORABLE RICHARD G. ANDREWS
`FROM PHILIP A. ROVNER, ESQ.
`REGARDING ORAL ORDER QUESTION ON THE ELECTION OF PRIOR ART
`
`PUBLIC VERSION
`
`

`

`Case 1:16-cv-00455-RGA Document 310 Filed 11/07/17 Page 2 of 3 PageID #: 21883
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`Dear Judge Andrews:
`
`In response to the Court’s question (D.I. 338, C.A. 16-453-RGA), Acceleration Bay did
`not raise with the Special Master the issue it presented to the Court, namely, “confirming that
`Defendants may not rely on the Alagar prior art reference because Defendants did not include it
`in their initial election of prior art and have not sought leave to amend their election to include
`this new reference.” D.I. 333, C.A. 16-453-RGA, at 1. To the contrary, Acceleration Bay only
`informed the Special Master of the prior art election issue and that it was being presented to the
`Court as opposed to the Special Master to avoid any confusion as to the relief it was seeking
`from each:
`
`Acceleration Bay also objects to Defendants’ reliance on the Alagar
`reference for seven of its nineteen prior art-based invalidity arguments
`advanced in Dr. Karger’s report because Defendants did not include
`Alagar in their preliminary election of prior art, which was the disclosure
`that required Defendants to identify their asserted prior art in these cases.
`Defendants are not permitted to rely on new prior art references without
`first moving the Court for leave to amend their prior art election after
`demonstrating good cause. Ex. 8 (D.I. 116, 4/13/17 Order) (“Absent good
`cause . . . Defendants cannot substitute different art for the ones currently
`asserted”); Ex. 9 (Defs. 5/6/16 Election of Prior Art) at 24-26 (not
`including Alagar as elected prior art). The parties are submitting this
`dispute to the Court and, should the Court deny Defendants’ motion for
`leave to amend their election of prior art to include Alagar, the portions of
`Dr. Karger’s report and corresponding opinions relying on the Alagar
`reference will be stricken.
`
`Ex. 1 (10/20/17 Br. to Special Master) at 11, n.4 (emphasis added).
`
`Given that Acceleration Bay explicitly stated to the Special Master that this issue was
`before the Court and not the Special Master, Defendants’ representation to the Court is baseless.
`Acceleration Bay only informed the Special Master of this issue because the Special Master is
`addressing a discovery issue regarding Defendants’ invalidity expert, who improperly relied on
`eight obviousness combinations that Defendants did not disclose in their invalidity contentions.
`Ex. 1 at 16. This is the type of discovery dispute that the Special Master has been addressing in
`this case. This is a distinct issue from Defendants’ attempt to assert new prior art not included in
`its prior art election well after discovery has closed. The issues surrounding whether Defendants
`have good cause to amend their prior art election is one that falls under the purview of the Court.
`
`Furthermore, Acceleration Bay’s submission of this dispute to the Court is consistent
`with the parties’ past practices in this case, where the parties submitted disputes regarding
`amendment of the parties’ elections to the Court, while submitting disputes regarding invalidity
`and infringement contentions to the Special Master. See D.I. 116, C.A. 16-453-RGA (Order
`regarding Acceleration Bay’s election of asserted claims), D.I. 146 (Order permitting
`Acceleration Bay to amend election of asserted claims for good cause).
`
`

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`Case 1:16-cv-00455-RGA Document 310 Filed 11/07/17 Page 3 of 3 PageID #: 21884
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`The Honorable Richard G. Andrews
`October 31, 2017
`Page 2
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`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`Attachments
`cc:
`All Counsel of Record (Via ECF Filing, Electronic Mail)
`
`5508875
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`Public version dated: November 7, 2017
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`