Plaintiff,
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`ACTIVISION BLIZZARD INC.,
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`v.
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`Defendant.
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`ORDER MEMORIALIZING CLAIM CONSTRUCTION RULING DURING TRIAL
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 1 of 8 PageID #: 56845
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`ACCELERATION BAY LLC,
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`Civil Action No. 16-453-WCB
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`At trial, both parties requested that the court further construe claim 1 of U.S. Patent No.
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`6,731,147 (the “’147 patent”) to decide whether the claim covers disconnection from a complete
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`m-regular network. Because the parties disagreed about the proper construction of the claim, it
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`was necessary to resolve the dispute.1 See generally O2 Micro Int’l Ltd. v. Beyond Innovation
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`Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008). I did so during the charge conference after receiving
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`briefs on the issue earlier in the day. This order explains and memorializes the ruling I made at
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`the charge conference.
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`A network is m-regular if “each participant is connected to exactly m neighbor
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`participants.” Dkt. No. 275 at 14 (construing terms). A complete m-regular network is one in
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`which every participant is connected to every other participant. An incomplete m-regular network
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`1 Acceleration Bay characterized its position as opposing any further construction;
`however, Acceleration Bay argued that the court’s prior construction of “m-regular” was
`necessarily broad enough to include a complete network. The present disagreement over complete
`and incomplete networks was not at issue when Judge Andrews originally construed the claims,
`so I do not consider his prior construction to have resolved that issue. Accordingly, I treated
`Acceleration Bay’s position as affirmatively seeking claim construction in its favor.
`1
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 2 of 8 PageID #: 56846
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`is one in which every participant is connected to the same number of participants, but fewer than
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`all the other participants. Activision argued that claim 1 of the ’147 patent recites a method of
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`disconnecting a first computer from a second computer in an incomplete m-regular network.
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`Acceleration Bay argued that the claim recites a method of disconnecting a first computer from a
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`second computer in an m-regular network, regardless of whether the network is incomplete. I
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`agreed with Acceleration Bay and construed the claim as covering disconnection from any m-
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`regular network, whether complete or incomplete. I precluded Activision from arguing to the
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`contrary in its closing argument to the jury.
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`1. Plain Language
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`Claim 1 of the ’147 patent is not expressly limited to incomplete m-regular networks. It
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`requires only that the network be m-regular. “It is a bedrock principle of patent law that the claims
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`of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v.
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`AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). On its face, the claim therefore
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`includes disconnection from both complete and incomplete m-regular networks, which is
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`consistent with Acceleration Bay’s position and contrary to Activision’s.
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`Activision is correct that claim 1 of the ’147 patent covers incomplete m-regular networks.
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`Indeed, the embodiments described in the patents prefer an incomplete m-regular network to
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`reduce the number of point-to-point connections. See ’147 patent at 1:48-51 (explaining that
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`connecting all participants using point-to-point connections “does not scale well as the number of
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`participants grows”). By using an incomplete m-regular network, it is possible to reduce the total
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`number of connections without significantly compromising the “distance,” in terms of nodes, that
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`a message would need to be transmitted to reach the farthest computer on the network. See e.g.,
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`’147 patent at Fig. 1 (showing a graph of 9 participants, each connected to four of their peers). But
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`2
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 3 of 8 PageID #: 56847
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`to say that claim 1 covers incomplete networks does not mean that it does not cover complete
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`networks.
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`The specific language at issue in claim 1 is a “broadcast channel forming an m-regular
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`graph,” which Activision argues must exclude a broadcast channel forming a complete m-regular
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`graph. However, the specification includes at least one example that is inconsistent with
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`Activision’s position. As the specification explains, “Fig. 3A illustrates [a] broadcast channel.”
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`’147 patent at 5:65–67. The broadcast channel depicted in Figure 3A is both complete and m-
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`regular. Every participant in the figure is connected to every other participant. In other words,
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`Figure 3A shows exactly the broadcast channel Activision would read out of the claim’s scope.
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`Although Figure 3 relates to connecting to a broadcast channel, whereas claim 1 relates to
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`disconnecting, the figure is strong evidence that an m-regular broadcast channel of the sort that is
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`the subject of the ’147 patent need not be incomplete.
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`Activision makes three additional arguments in support of its restrictive construction of the
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`claim, all of which are unpersuasive. First, Activision argues that the claim’s “connection port
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`search message,” which is sent to locate a computer with fewer than m neighbors, implies that the
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`network must be incomplete, because no computer can have fewer than m neighbors if every
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`computer is connected to every other computer. That argument, however, does not justify reading
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`an “incomplete” limitation into the claim, because the connection port search message can still be
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`sent to a complete network. In such a case, the system would report that there are no computers
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`with fewer than m neighbors.
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`Second, Activision argues that the claim requires a message to be sent when one computer
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`leaves the network “in order to maintain an m-regular graph,” a step that would be unnecessary if
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`3
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 4 of 8 PageID #: 56848
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`the network were complete to begin with. But the fact that a claimed step may be unnecessary
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`under certain circumstances does not require that the claim be read to exclude that step.
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`Third, Activision argues that the claim requires that when one computer disconnects from
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`the network by disconnecting from a second computer, the second computer must take steps to
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`find a third computer to which it can connect in order to maintain m regularity. Activision argues
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`that step would not occur if every computer were already connected to every other computer in the
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`network. As with the previous arguments, however, it may not be necessary for the second
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`computer to search for a third computer to connect to if the network is already complete, but the
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`step is not prohibited.
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`It is well settled that courts must first “look to the words of the claims themselves . . . to
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`define the scope of the patented invention.” Aventis Pharms. Inc. v. Amino Chemicals Ltd., 715
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`F.3d 1363, 1373 (Fed. Cir. 2013). Here, the plain language of the claim is unambiguous and clearly
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`covers any m-regular network—not just incomplete ones. For that reason, I agree with
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`Acceleration Bay’s construction.
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`2. Estoppel
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`Activision further argued that Acceleration Bay is estopped from contending that claim 1
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`of the ’147 patent does not require that the network be incomplete. Activision bases its argument
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`on representations Acceleration Bay made in the inter partes review proceedings concerning the
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`’147 patent. Specifically, Activision cited various statements from Acceleration Bay’s Preliminary
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`Response opposing institution.2
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`2 Most of the statements cited by Activision relate to what the ’147 patent “describes,”
`namely “a network where each . . . participant is connected to some—but not all—neighboring
`participants,” i.e., an incomplete network. Patent Owner’s Preliminary Response, IPR 2016-00747
`at 4–6. Those statements, however, merely describe the general background of the invention and
`do not suggest that the scope of claim 1 is limited to such a network.
`4
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 5 of 8 PageID #: 56849
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`The most critical statement was made in an argument in which Acceleration Bay attempted
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`to distinguish a prior art reference called Rufino. Acceleration Bay argued that Rufino “does not
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`address receiving disconnect messages in the context of maintaining an m-regular non-complete
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`topology, as required by claim 1.” Patent Owner’s Preliminary Response, IPR 2016-00747 at 25.
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`Activision argues that the statement constitutes a clear and unequivocal disclaimer of complete
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`networks. Although Acceleration Bay’s statement appears straightforward, context makes clear
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`that it was not the sort of “disavowal of claim scope” that is necessary to trigger an estoppel. Aylus
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`Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1363 (Fed. Cir. 2017).
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`Rufino is a journal article describing “a token-ring based local area network.” Decision
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`Granting Institution, IPR 2016-00747 at 12; see also Final Written Decision, IPR 2016-00747 at
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`13 (referring to Rufino as describing a “token bus based . . . network”). A token-ring or token bus
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`network is one in which every participant is connected to two other participants, and data is relayed
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`between participants like a game of telephone. A depiction of a token ring is shown below:
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`Final Written Decision, IPR 2016-00747 at 17. Because each participant in a token ring is
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`connected to only two other participants, Rufino clearly discloses an incomplete network,
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`something Acceleration Bay did not dispute. In fact, neither the Decision Granting Institution nor
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`the Final Written Decision makes any mention of complete or incomplete networks. That
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`distinction was simply not at issue in the proceedings in which the alleged disclaimer was made.
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`5
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 6 of 8 PageID #: 56850
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`What was at issue, and what the contested statement was intended to distinguish, was
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`whether Rufino taught a “disconnect message” within the meaning of the claims. I therefore
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`interpret Acceleration Bay’s statement as meaning that Rufino “does not address receiving
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`disconnect messages . . . as required by claim 1.” The appositive from the original statement (“in
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`the context of maintaining an m-regular non-complete topology”) simply parrots the language of
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`the petition, which emphasizes the significance of “maintaining an m-regular non-complete
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`topology.” Petition, IPR 2016-00747 at 10.
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`For the foregoing reasons, the statements made by Acceleration Bay in the inter partes
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`review proceedings do not amount to the sort of “clear and unmistakable” disclaimer necessary for
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`prosecution history estoppel to attach. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326
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`(Fed. Cir. 2003); Aylus, 856 F.3d 1353 (considering statements made by a patent owner during an
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`inter partes review proceeding for purposes of prosecution disclaimer). There is therefore no
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`disclaimer that would justify reading into the claim a requirement that the network at issue in claim
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`1 must be incomplete.
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`3. Take-Two Proceedings
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`Activision also argued at trial that the ruling in Acceleration Bay LLC v. Take-Two
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`Interactive Software, Inc. (“Take-Two”), 612 F. Supp. 3d 408, 413 (D. Del. 2020), is binding on
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`Acceleration Bay. In the summary judgment order in that case, Judge Andrews wrote that the
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`claims of the ’147 patent apply only to an incomplete m-regular network. Id. at 413 (“While the
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`’069 and ’147 patent claims describe methods, they are also limited to ‘incomplete’ and ‘m-regular’
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`networks.”). That statement, however, was made in the general background section of the order,
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`in which Judge Andrews was describing the nature of the claims of four different patents, the other
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`three of which called for an “incomplete” or “non-complete” m-regular network. Although the
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 7 of 8 PageID #: 56851
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`quoted statement was made in the course of a discussion of all claims of the ’147 patent and all
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`claims of U.S. Patent No. 6,910,069 (the “’069 patent”), Judge Andrews’ subsequent discussion
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`suggests that he did not intend to read a requirement that the network be “incomplete” into claim
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`1 of the ’147 patent.
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`In the same paragraph, Judge Andrews explained that “although the asserted claims of the
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`’069 patent do not explicitly require an ‘m-regular’ or ‘incomplete’ network,” he construed the
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`claim “to include both limitations.” Take-Two, 612 F. Supp. 3d at 413 n.1. In adopting that
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`construction, Judge Andrews credited Acceleration Bay’s “clear and unmistakable disclaimer” of
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`complete m-regular networks in an inter partes review of the ’069 patent. Civil Action No. 16-
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`453-RGA (D. Del.), Dkt. No. 345 at 12 (claim construction order).3
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`Unlike his treatment of the ’069 patent, Judge Andrews made no reference to the fact that
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`claim 1 of the ’147 patent does not expressly require that the network be “incomplete.” That
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`omission suggests that Judge Andrews did not intend to import an additional limitation into that
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`claim. Additionally, the question whether the ’147 patent requires an “incomplete” network was
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`inconsequential to the rest of Judge Andrews’ order. As such, Judge Andrews’ characterization of
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`the ’147 patent as requiring an “incomplete” network amounts to nothing more than a general
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`description of a group of patents. It does not constitute a formal claim construction.
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`* * * * *
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`3 Acceleration Bay had argued in an inter partes review proceedings that the ’069 patent
`“is directed to ‘incomplete’ networks in which each participant is connected to fewer than all of
`the other participants in the network.” Patent Owner’s Preliminary Response, IPR 2017-01600 at
`13–14. It specifically did so in the context of claim construction, and that construction proved to
`be an important feature in distinguishing the ’069 patent from the prior art. Judge Andrews
`considered those arguments to constitute a binding disclaimer, but he considered other statements
`made “in the background section of the Patent Owner Preliminary Response” not to disclaim
`anything. Civil Action No. 16-453-RGA (D. Del.), Dkt. No. 345 at 13.
`7
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`Case 1:16-cv-00453-WCB Document 863 Filed 05/08/24 Page 8 of 8 PageID #: 56852
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`In sum, none of Activision’s arguments overcome the plain language of the claim. For the
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`foregoing reasons, I construed claim 1 as applying to any m-regular graph, regardless of its
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`completeness, and I therefore precluded Activision from arguing a contrary construction to the
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`jury.
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`IT IS SO ORDERED.
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`SIGNED this 8th day of May, 2024.
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`_______________________________
`WILLIAM C. BRYSON
`UNITED STATES CIRCUIT JUDGE
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