Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 1 of 6 PageID #: 24341
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`Plaintiff,
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`Defendants.
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`Plaintiff,
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`Plaintiff,
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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,
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`ACTIVISION BLIZZARD, INC.
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`Defendant.
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`ACCELERATION BAY LLC,
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`ELECTRONIC ARTS INC.,
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`Defendant.
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`ACCELERATION BAY LLC,
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`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
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`DEFENDANTS’ REPLY TO PLAINTIFF’S REBUTTAL REGARDING TERMS 24 & 25
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`In its pleading filed on Friday, January 12, 2018 (D.I. 417 in C.A. No. 16-453), Plaintiff
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`stated that “Plaintiff did not agree, and has never agreed, that the preambles identified in Terms
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`24 and 25 are limitations.” Plaintiff’s Rebuttal Regarding Terms 24 & 25 at 1-2 (emphasis
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`Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 2 of 6 PageID #: 24342
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`added).1 This is incorrect. In fact, more than just agreeing that these preambles are limitations,
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`Plaintiff has repeatedly argued that the preambles identified in Terms 24 and 25 are limitations.
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`On June 28, 2016, Plaintiff explicitly argued to the PTAB that Term 24 is limiting:
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`The preamble for Claim 19 is limiting because it breathes life and meaning into
`Claim 19 and because it requires a non-routing table based network that
`controls communications of a participant of broadcast network and the
`antecedent basis of participant is found in the preamble.
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`Patent Owner’s Preliminary Response, p. 20, IPR2016-00727 (U.S. Patent No. 6,829,634)
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`(emphasis added) (attached hereto as Ex. 1).
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`More recently, on October 12, 2017, Plaintiff characterized Term 25 as a “claim element”
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`and argued extensively that the PTAB should deny institution based on the Petitioner’s failure to
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`meet this claim element:
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`Thus, neither Francis nor Gilbert discloses [Term 25] “a non-routing table based,
`nonswitch based method for adding a participant to a network of participants,
`each participant being connected to three or more other participants.” For at least
`the foregoing reasons, the Board should decline to institute inter partes review of
`independent claim 1 ….
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`Patent Owner’s Preliminary Response, pp. 42, 47, 50-51. IPR2017-01600 (U.S. Patent No.
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`6,910,069) (attached hereto as Ex. 2). Thus, Plaintiff is bound by the statements it made before
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`the PTAB that the preambles of Terms 24 and 25 were limiting. See Aylus Networks, Inc. v.
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`Apple Inc., 856 F.3d 1353, 1360 (Fed. Cir. 2017). (“Extending the prosecution disclaimer
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`doctrine to IPR proceedings will ensure that claims are not argued one way in order to maintain
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`their patentability and in a different way against accused infringers.”).
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`1 Terms 24 and 25 are the preambles for ’634 Claim 19 and ’069 claim 1.
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`Term 24 is “A non-routing table based computer readable medium containing instructions for
`controlling communications of a participant of a broadcast channel within a network.”
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`Term 25 is “A computer-based, non-routing table based, non-switch based method for adding a
`participant to a network of participants.”
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`Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 3 of 6 PageID #: 24343
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`Similarly, before this Court, Plaintiff repeatedly challenged Defendants’ arguments that
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`the preambles covered unpatentable subject matter and were indefinite by arguing that the
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`preambles were limiting and definite. For instance, in Phase 1, Plaintiff argued that the
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`“computer readable medium” was limited to non-fleeting media because “the claims require that
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`the computer readable medium contain or store instructions. Defendants have no basis for
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`reading out this requirement.” See D.I. 281, Joint Claim Const. Br. (Phase 1) at 4 (emphasis
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`retained).
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`In Phase 3, to challenge Defendants’ arguments that the claims cover printable matter and
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`are indefinite, Plaintiff argued that the preamble for Term 24 “limit[] the design of the network,”
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`and should be given “patentable weight:”
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`Here, Terms 26 and 24 do not cover the non-functional content of information.
`Rather, the preamble defines the environment in which the functional steps of
`locating/identifying a portal computer are performed. Thus, the preamble falls
`squarely within the exceptions to the printed matter doctrine and should be given
`patentable weight.
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`* * *
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`Terms 26 and 24 are definite and respectively recite “a computer-readable
`medium containing instructions for controlling disconnecting of a computer from
`another computer” and “non-routing table based computer-readable medium.” Plf.
`Br. at Terms 24-26. Thus, the system is configured to include computer
`instructions that control and functionally limit the design of the network.”
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`See D.I. 366, Joint Claim Const. Br. (Phase 3) at 54, 57 (emphasis added).
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`Plaintiff argued that the preamble of Term 25 limits the scope of the method by adding
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`certain requirements:
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`The preamble limits the method by requiring that it is performed to add
`participants to a network that is not based on routing tables or switch-based
`methods to move messages between participants.
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`See id at 58-59 (emphasis added).
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`Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 4 of 6 PageID #: 24344
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`Throughout Phase 3 briefing, Defendants expressed their understanding that both sides
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`agreed that the preambles were limiting. See id at 43, 50, 60 (“Plaintiff does not dispute that the
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`preamble of claim 19 [Term 24] is limiting”; “Plaintiff agrees the preamble [Term 25] is
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`limiting”; “Plaintiff does not dispute that these preambles are limitations and indeed offers
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`constructions.”).
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`The constructions Defendants filed with the Court on December 15, 2017 clearly stated
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`that the preambles were limiting. D.I. 381. Before the December 18, 2017 hearing, Plaintiff’s
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`counsel told Defendants’ counsel that it accepted the claim constructions Defendants had filed
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`with the Court on December 15. Defendants agreed that Plaintiff could inform the Court that the
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`parties had reached an agreement, but that Defendants maintained their indefiniteness and
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`invalidity positions. When Plaintiff advised the Court of the agreement, it did not advise the
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`Court that it considered the preambles to be non-limiting. See D.I. 412, Ex. A (December 18,
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`2017 Markman Tr.); see also D.I. 413. In response to the Court’s question, Plaintiff
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`characterized the issues as “resolved” and “tak[en] off the table.” See Dec. 18, 2017 Tr. at 6:1-3,
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`9:3-5. Plaintiff’s position that it somehow made or preserved an argument that the preambles are
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`non-limiting is not supported by the record.
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`If it was Plaintiff’s position, at the hearing or at any other time, that the preambles were
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`not limiting, it should have advised Defendants and the Court of its position. It never did either.
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`By failing to do so, and indeed by repeatedly taking the opposite position in briefing and before
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`the PTAB, Plaintiff should be foreclosed from reversing course at this late date and arguing that
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`the preambles are non-limiting. See Aylus, 856 F.3d at 1360.
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`Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 5 of 6 PageID #: 24345
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`OF COUNSEL:
`Michael A. Tomasulo
`Gino Cheng
`David K. Lin
`Joe S. Netikosol
`WINSTON & STRAWN LLP
`333 South Grand Avenue, 38th Floor
`Los Angeles, CA 90071
`(213) 615-1700
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`David P. Enzminger
`WINSTON & STRAWN LLP
`275 Middlefield Road, Suite 205
`Menlo Park, CA 94025
`(650) 858-6500
`Dan K. Webb
`Kathleen B. Barry
`WINSTON & STRAWN LLP
`35 West Wacker Drive
`Chicago, IL 60601
`(312) 558-5600
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`Krista M. Enns
`WINSTON & STRAWN LLP
`101 California Street, 35th Floor
`San Francisco, CA 94111
`(415) 591-1000
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`Michael M. Murray
`WINSTON & STRAWN LLP
`200 Park Avenue,
`New York, NY 10166
`(212) 294-6700
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`Andrew R. Sommer
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006
`(202) 282-5000
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`January 16, 2018
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
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`/s/ Stephen J. Kraftschik
`__________________________________
`Jack B. Blumenfeld (#1014)
`Stephen J. Kraftschik (#5623)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@mnat.com
`skraftschik@mnat.com
`Attorneys for Defendants
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`Case 1:16-cv-00455-RGA Document 368 Filed 01/16/18 Page 6 of 6 PageID #: 24346
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 16, 2018, copies of the foregoing were caused to
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`be served upon the following in the manner indicated:
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`VIA ELECTRONIC MAIL
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`/s/ Stephen J. Kraftschik
`Stephen J. Kraftschik (#5623)
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`Philip A. Rovner, Esquire
`Jonathan A. Choa, Esquire
`POTTER ANDERSON & CORROON LLP
`1313 North Market Street, 6th Floor
`Wilmington, DE 19801
`Attorneys for Plaintiff
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`Paul J. Andre, Esquire
`Lisa Kobialka, Esquire
`James R. Hannah, Esquire
`Hannah Lee, Esquire
`Yuridia Caire, Esquire
`Greg Proctor, Esquire
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Attorneys for Plaintiff
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`Aaron M. Frankel, Esquire
`Marcus A. Colucci, Esquire
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Attorneys for Plaintiff
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