Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 1 of 8 PageID #: 46603
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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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`)))))))))
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`ACCELERATION BAY LLC,
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`Plaintiff,
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`v.
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`ACTIVISION BLIZZARD, INC.,
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`Defendant.
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`PLAINTIFF ACCELERATION BAY LLC’S
`SUPPLEMENTAL SUBMISSION FOLLOWING SUMMARY JUDGMENT HEARING
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`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`Acceleration Bay LLC
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`OF COUNSEL:
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`Paul J. Andre
`Lisa Kobialka
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`(650) 752-1700
`
`Aaron M. Frankel
`Cristina Martinez
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`(212) 715-9100
`
`Dated: May 23, 2018
`
`Public version dated: May 30, 2018
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`PUBLIC VERSION
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`

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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 2 of 8 PageID #: 46604
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`Further to the Court’s instructions at the May 17, 2018 hearing on the parties’ motions for
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`summary judgment, and pursuant to the Court’s oral order (D.I. 557), Plaintiff Acceleration Bay
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`LLC (“Acceleration Bay”) submits this further submission.
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`I.
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`The Court Should Correct the “Obvious Error” in Claim 19 of the ‘634 Patent
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`Acceleration Bay moved the Court to correct the obvious grammatical error in claim 19
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`of the ‘634 Patent, by moving the adjective “non-routing table based” to modify “method”
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`instead of “computer readable medium.” D.I. 438; D.I. 473. During oral argument, Activision
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`incorrectly stated that the Court’s power to correct errors in claims is limited to “scrivners’
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`errors” or “typos.” Ex. 1 (5/17/18 Tr.) at 35:23-36:16. To the contrary, the Court’s powers to
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`correct are not so limited and the controlling test is if “(1) the correction is not subject to
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`reasonable debate based on consideration of the claim language and the specification and (2) the
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`prosecution history does not suggest a different interpretation of the claims.” CBT Flint
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`Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir. 2011), quoting Novo Indus.,
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`L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003) (reversing the district court’s
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`summary judgment of invalidity based on indefiniteness because the court could have corrected
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`an obvious error within the claim). Moreover, “[a]bsent evidence of culpability or intent to
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`deceive by delaying formal correction, a patent should not be invalidated based on an obvious
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`administrative error.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1331 (Fed. Cir. 2005).
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`The Court’s ability to correct errors in claims is not limited to fixing “typos.” This
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`District and others have repeatedly corrected obvious errors in a patent, including those that go
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`beyond a mere “typo.” See, e.g., In re Cyclobenzaprine Hydrochloride Extended-Release
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`Capsule Patent Litig., 794 F. Supp. 2d 517, 530 (D. Del. 2011), aff'd in part, vacated in part,
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`rev'd in part, 676 F.3d 1063 (Fed. Cir. 2012) (rearranging words in claim element to correct
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`

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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 3 of 8 PageID #: 46605
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`obvious error); Intermec Techs. Corp. v. Palm Inc., 811 F. Supp. 2d 973, 984-85 (D. Del. 2011)
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`(removing extraneous phrase that was “nonsensical as written” and correcting five other errors);
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`Koninklijke Philips N.V. v. AsusTek Computer Inc., C.A. No. 15-1125-GMS, 2017 WL 2957927,
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`at *4 n.16 (D. Del. July 11, 2017) (“the court notes that it is authorized to add the word ‘means’
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`to the term ‘gravitation-controlled sensor [means]’ in order to resolve obvious antecedent basis
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`informalities”), citing H–W Tech. L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. 2014);
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`Finjan, Inc. v. Blue Coat Sys., Inc., No. 13-cv-03999-BLF, 2014 WL 5361976, at *2, 7-8 (N.D.
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`Cal. Oct. 20, 2014) (removing “the method” from preamble to clarify nature of claim);
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`CheckFree Corp. v. Metavante Corp., No. 3:12-CV-15-J-34JBT, 2013 WL 12156049, at *3
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`(M.D. Fla. Aug. 22, 2013) (using logic and review of specification to identify correction for
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`missing term); Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14-CV-2972, 2015 WL
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`1034275, at *21 (S.D. Tex. Mar. 10, 2015) (correcting obvious error by adding antecedent basis
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`for claim element).
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`Activision incorrectly contended during oral argument that the Court should not correct
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`the error in claim 19 because “non-routing table based” could also be moved to modify
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`“network,” and repeatedly argued that Acceleration Bay previously characterized both the
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`network and the method as non-routing table based. Ex. 1 at, e.g., 31:24-32:9. As Acceleration
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`Bay explained, they mean the same thing – the network and the method controlling the network
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`do not rely on routing-tables to move messages through the network. Id. at 52:19-53:16.
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`But even if Activision is correct (which it is not), the fact that an error can be corrected in
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`multiple ways does not preclude the Court from correcting the claim. In CBT Flint
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`Partners, LLC v. Return Path, Inc., the Federal Circuit found that a district court rightly
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`identified that there were three alternative but reasonable corrections for an error in a claim
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`2
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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 4 of 8 PageID #: 46606
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`term. 654 F.3d at 1358. Nevertheless, the Federal Circuit held that the district court erred in
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`finding that it was unauthorized to correct the error. Id. at 1358–59. The Federal Circuit
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`reiterated the district court’s responsibility to consider the alternatives “from the point of view of
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`one skilled in the art,” (id. at 1358), and found that “[b]ecause each of the three proposed
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`reasonable interpretations would result in the same claim scope . . . a person of skill in the art
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`would readily know that the meaning of the claim requires insertion of the word ‘and’ between
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`the words ‘detect’ and ‘analyze.’” Id. at 1359; see also, e.g., Fairfield Indus., 2015 WL
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`1034275, at *21 (“Although Wireless Seismic is correct that the error can be corrected in two
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`ways, the mere fact that multiple reasonable corrections exist does not prevent the Court from
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`correcting the term.”); CheckFree Corp., 2013 WL 12156049, at *3 (correcting term
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`notwithstanding several alternative corrections proposed by defendant).
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`II.
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`The Computer-Readable Medium Claims Are Patent Eligible
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`The computer readable medium (CRM) claims are patent eligible because they are
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`directed to inventive methods. D.I. 475 at 32-33. Activision ignores this fact and incorrectly
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`argues that drafting the method in the form of a CRM claim somehow renders a patent eligible
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`method claim into a patent ineligible CRM claim. However, the Federal Circuit dictates that the
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`Court’s analysis of the patent eligibility of the CRM claims should be based on the “underlying
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`invention,” not the formality that the claims were drafted as CRM claims. Cybersource Corp. v.
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`Retail Decisions, Inc., 654 F.3d 1366, 1373-74 (Fed. Cir. 2011) (“Regardless of what statutory
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`category (‘process, machine, manufacture, or composition of matter,’ 35 U.S.C. §101) a claim’s
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`language is crafted to literally invoke, we look to the underlying invention for patent-eligibility
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`purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for
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`detecting credit card fraud, not a manufacture for storing computer-readable
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`3
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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 5 of 8 PageID #: 46607
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`information.”)(emphasis added). Activision repeatedly suggested, without citation to any
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`authority, that Cybersource was directed to an “Alice” inquiry that is somehow different from the
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`patent eligibility standard of 35 U.S.C. § 101. But there are not two separate inquiries. In the
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`quote above from Cybersource, the Federal Circuit clearly states that it is addressing the
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`statutory eligibility test of § 101.
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` Numerous decisions have followed this mandate and looked to the substance of the
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`claims for purposes of patent eligibility. See, e.g., Bancorp Servs., L.L.C. v. Sun Life Assur. Co.
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`of Canada (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012) (“the form of the claims should not
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`trump basic issues of patentability”), citing Parker v. Flook, 437 U.S. 584, 593, 98 S.Ct. 2522,
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`57 L.Ed.2d 451 (1978) (advising against a rigid reading of § 101 that “would make the
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`determination of patentable subject matter depend simply on the draftsman's art”); CLS Bank
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`Int’l v. Alice Corp., 717 F.3d 1269, 1288 (Fed. Cir. 2013), aff’d 134 S.Ct. 2347 (2014) (“under §
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`101 we must look past drafting formalities and let the true substance of the claim guide our
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`analysis. Here, although the claim's preamble appears to invoke a physical object, the claim term
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`‘computer readable storage medium’ is stated in broad and functional terms—incidental to
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`the claim—and every substantive limitation presented in the body of the claim (as well as in
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`dependent claims 40 and 41) pertains to the method steps of the program code ‘embodied in
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`the medium.’”); Crypto Research, LLC v. Assa Abloy, Inc., 236 F.Supp.3d 671, 680 (E.D.N.Y.
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`2017) (finding claim patent eligible: “while the Patents-in-Suit recite apparatus, computer-
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`readable medium, and method claims, in practical effect, the claims cover the same concept
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`related to the efficient computation of hash values in a one-way chain. Consequently, the claims
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`warrant similar substantive treatment.”); Rovi Guides, Inc. v. Comcast Corp., No. 16-CV-9278
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`(JPO), 2017 WL 3447989, at *23 (S.D.N.Y. Aug. 10, 2017) (“The Federal Circuit has instructed
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`4
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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 6 of 8 PageID #: 46608
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`that Beauregard claims, such as claim 17, are treated as method claims.”), citing Digital-Vending
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`Servs. Int'l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1276 n.1 (Fed. Cir. 2012)
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`(Beauregard claims “should be treated as method claims to avoid ‘exalt[ing] form over
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`substance’” (quoting Cybersource, 654 F.3d at 1374)).
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`III. Confidential Source Code is Not Prior Art Unless it is Used in a Product
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`Activision failed to come forward with evidence that the version of Activenet it relies on
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`is available as prior art. Activision concedes that Activenet source code is confidential and was
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`not available to the public. Nevertheless, it argues that the source code can still be used as prior
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`art because it was supposedly used in Heavy Gear Demo and Heavy Gear II games (“Heavy
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`Gear”) that were publicly available. There are two fatal flaws with this theory.
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`First, Activision does not know which version of Activenet was actually used in Heavy
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`Gear and, in particular, does not know if the version of Activenet that Dr. Karger relies on for his
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`invalidity opinion is the same version that was used in Heavy Gear. D.I. 448 (2/2/18 Motion for
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`Summary Judgment) at 16-17. Multiple versions of software cannot be used as a single prior art
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`reference, and Activision is limited to the specific version that Dr. Karger analyzed. Kyocera
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`Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351-52 (Fed. Cir. 2008) (collection of
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`technical specifications collectively known as the GSM standard do not function as a single prior
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`art reference).
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`Second, for commercial source code to be relevant evidence of prior art, it must actually
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`be “embodied” in a commercially available product. Touchcom, Inc. v. Bereskin & Parr, 790
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`F.Supp.2d 435, 453-54 (E. D. VA 2011), citing J.A. LaPorte, Inc. v. Norfolk Dredging Co., 787
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`F.2d 1577, 1583 (Fed. Cir. 1986); Hilgraeve, Inc. v. Symantec Corp., 271 F.Supp.2d 964, 973-
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`977 (E.D. Mich. 2003) (granting summary judgment that software was not publicly known
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`5
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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 7 of 8 PageID #: 46609
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`because there was no evidence that it was sold or used in the U.S.). Because Activision and its
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`expert do not know what was actually used in Heavy Gear, there is no evidence, much less clear
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`and convincing evidence, that the source code that Activision selected was ever even allegedly
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`public. Here, Activision has not come forward with any evidence that the portions of the
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`Activenet source code that Dr. Karger relies upon were actually compiled into Heavy Gear.
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`Activision’s failure to provide proof of which portions of the Activenet source code were
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`actually used in Heavy Gear is critical. As Activision and its experts have repeatedly argued, not
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`all source code is actually used in the commercial software that is compiled and sold — thus, that
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`a function is included in Activenet source code is not proof it was included in an actual Heavy
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`Gear game that was allegedly in public use.
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`functionality is found in Activenet source code is not evidence that it was actually used in a
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`Thus, the fact that alleged
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`commercial product.
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`Accordingly, the Court should grant summary judgment that Activision failed to come
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`forward with evidence that the portions of Activenet it relies upon were ever in public use.
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`6
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`Case 1:16-cv-00453-RGA Document 567 Filed 05/30/18 Page 8 of 8 PageID #: 46610
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`POTTER ANDERSON & CORROON LLP
`
`By: /s/ Philip A. Rovner
`Philip A. Rovner (#3215)
`Jonathan A. Choa (#5319)
`Hercules Plaza
`P.O. Box 951
`Wilmington, DE 19899
`(302) 984-6000
`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
`Cristina Martinez
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`(212) 715-9100
`
`Dated: May 23, 2018
`
`5819456
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`7
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`Public version dated: May 30, 2018
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