Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 1 of 9 PageID #: 21885
`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 1 of 9 PagelD #: 21885
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 2 of 9 PageID #: 21886
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-453 (RGA)
`
`C.A. No. 16-454 (RGA)
`
`C.A. No. 16-455 (RGA)
`
`)))))))))
`
`)))))))))
`
`)))))))))
`
`
`)
`)
`
`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., Delaware Corporations,
`
`Defendants.
`
`LETTER BRIEF IN SUPPORT OF
`PLAINTIFF ACCELERATION BAY LLC’S MOTION TO STRIKE
`
`CONFIDENTIAL - OUTSIDE COUNSEL ONLY - SUBMITTED UNDER SEAL
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 3 of 9 PageID #: 21887
`
`after Mr. Argent’s deposition that, to the extent there were any corrections on this issue, that
`
`Take-Two provide them promptly. Take-Two was on clear notice of the importance of the
`
`accuracy of this information based on Acceleration Bay’s deposition of Mr. Argent and the
`
`follow up request to confirm the information. Nonetheless, Take-Two waited until six hours
`
`before Acceleration Bay’s damages report was due to provide errata, two weeks after the
`
`deadline in Rule 30(e). At no time did Take-Two request an extension to provide the errata or
`
`warn Acceleration Bay that it was reviewing this issue or than an errata was forthcoming. Thus,
`
`Take-Two’s bad faith further mandates striking this untimely errata which is unduly prejudicial
`
`to Acceleration Bay.
`
`Accordingly, the Special Master should strike the Griffith and Argent erratas as untimely
`
`under Federal Rule of Civil Procedure 30(e), and to ensure that Acceleration Bay is not unfairly
`
`prejudiced given the material changes these erratas made to their testimony.
`
`II.
`
`Defendants Should Not Be Permitted To Advance New Invalidity Arguments Not
`Disclosed In Their Invalidity Contentions
`The report of Defendants’ invalidity expert, Dr. David Karger, improperly advances
`
`various new grounds for invalidity that Defendants did not timely elect or disclose in their
`
`invalidity contentions. Defendants should not be permitted to assert these brand new grounds for
`
`the first time in their expert report, which amounts to unfair surprise and significant prejudice to
`
`Acceleration Bay. Indeed, fact discovery closed two months ago, and Defendants did not seek to
`
`amend their invalidity contentions to disclose these new grounds. As a result, Acceleration Bay
`
`appropriately relied on Defendants’ invalidity contentions in handling fact discovery and with
`
`respect to claim construction positions and symmetrical infringement contentions. Defendants’
`
`injection of these brand new theories of invalidity into the case at this late stage is exactly what
`
`they incorrectly claimed Acceleration Bay would do — and would be the equivalent of
`
`10
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 4 of 9 PageID #: 21888
`
`Acceleration Bay sandbagging Defendants by having its experts offer opinions in their reports
`
`that new products infringed previously undisclosed claims (which Acceleration Bay’s experts
`
`have not done).
`
`Additionally, for several prior art references, Dr. Karger failed to provide any invalidity
`
`analysis and he simply purports to reserve the right to provide an invalidity analysis at some
`
`future time. The schedule requires Defendants to identify their experts’ invalidity opinions at
`
`this time, and does not permit the provision of new invalidity theories after initial reports.
`
`Accordingly, the Special Master should strike these portions of Dr. Karger’s report.4
`
`A.
`
`Dr. Karger Provides Invalidity Opinions For Shoubridge Never Disclosed By
`Defendants
`Dr. Karger opines that asserted claims 12-15 of the ‘344 Patent and claims 12 and 13 of
`
`the ‘966 Patent are anticipated and rendered obvious by the Shoubridge reference, but
`
`Defendants never alleged that Shoubridge anticipates any of those claims and only alleged that
`
`Shoubridge renders obvious claim 12 of the ‘344 Patent and claim 12 of the ‘966 Patent (but not
`
`claims 13-15 of the ‘344 Patent or claim 13 of the ‘966 Patent). Thus, Defendants’ anticipation
`
`claim using Shoubridge has never been disclosed and Dr. Karger’s anticipation opinion should
`
`be stricken in its entirety. And Dr. Karger’s opinion that Shoubridge renders obvious claims 13-
`
`4 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.
`
`11
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 5 of 9 PageID #: 21889
`
`references not disclosed in the parties’ infringement contentions or invalidity contentions.”)
`
`(internal quotations and citation omitted); ASUS Computer Int’l v. Round Rock Research, LLC,
`
`No. 12-cv-02099 JST (NC), 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11, 2014) (same).
`
`B.
`
`Dr. Karger Argues Invalidity Based on New Combinations of Prior Art
`References Not Identified By Defendants
`Dr. Karger improperly provides opinions that various Asserted Claims are invalid as
`
`obvious in view of combinations of prior art that Defendants did not identify in their invalidity
`
`contentions:
`
`•
`
`•
`
`•
`
`asserted claims of the ‘344 Patent are obvious over DirectPlay combined with Alagar
`asserted claims of the ‘344 Patent are obvious over DirectPlay combined with Alagar
`and Shoubridge
`asserted claims of the ‘344 Patent are obvious over Age of Empires combined with
`Shoubridge and/or Alagar
`asserted claims of the ‘966 Patent are obvious over DirectPlay combined with Alagar
`asserted claims of the ‘966 Patent are obvious over DirectPlay combined with Alagar
`and Shoubridge
`asserted claims of the ‘966 Patent are obvious over Age of Empires combined with
`Shoubridge and/or Alagar
`asserted claims of the ‘634 Patent are obvious over Age of Empires combined with
`Shoubridge
`asserted claims of the ‘497 Patent are obvious over ActiveNet combined with Naugle
`•
`Defendants failed to provide the requisite disclosure for any of these invalidity grounds.
`
`•
`
`•
`
`•
`
`•
`
`Among other considerations, a prima facie claim of obviousness requires an identification of
`
`multiple references that are being combined, a motivation to combine those references and the
`
`content from each reference that is subject to the combination. Ex. 15, AstraZeneca AB v. Mylan
`
`Labs. Ltd., No. 12-cv-1378-MLC-TJB, Dkt. No. 66, Letter Order at 11 (D.N.J. Jan. 30, 2013);
`
`see also Cohesive Techs., 543 F.3d at 1364. Defendants’ invalidity contentions do not
`
`specifically identify any of these combinations. They also do not discuss the motivation to
`
`16
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 6 of 9 PageID #: 21890
`
`combine those particular references and do not identify any particular content from the
`
`references to be combined that would be part of the postulated obviousness combination.
`
`For example, Defendants’ invalidity contentions for Age of Empires (which Dr. Karger
`
`now claims renders obvious the ‘344 Patent claims when combined with Shoubridge and/or
`
`Alagar), recite anticipation and a boilerplate claim that, “[t]o the extent a particular
`
`reference/item does not disclose or suggest any claim limitation, it would have been obvious to
`
`one of ordinary skill in the art to modify that reference/item so as to include the claim limitation
`
`in light of the knowledge possessed by one of ordinary skill in the art and/or to combine this
`
`reference/item with information well-known in the field and/or other references/items disclosing
`
`or suggesting this claim limitation.” See Ex. 10 (7/31/17 Invalidity Contentions) at Ex. A1. This
`
`does not constitute a disclosure of any particular obviousness grounds, because it does not allege
`
`that it would have been obvious to combine Age of Empires with Shoubridge and/or Alagar, why
`
`a person of ordinary skill in the art would have been motivated to combine those references and
`
`how the combination of the references would have included the claimed elements. Defendants
`
`cannot be permitted to improperly purport to reserve the right to assert any of the near infinite
`
`possible combinations of prior art references and items referenced at any point in Defendants’
`
`invalidity contentions.
`
`The Special Master should, therefore, strike paragraphs 465, 466, 472, 474, 476, 479,
`
`484, 488, 491, 493, 494, 501, 514, 516-518, 524, 532, 534, 540, 541, 543, 545, 547, 550-555,
`
`561, 571, 576, 579-581, 603, 609, 617, 620, 623, 624, 631, 632, 634, 642, 648-653, 661, 668-
`
`671, 676-683, 932-1000, and 1208-1255 of Dr. Karger’s report and his corresponding opinions
`
`because they are directed to undisclosed obviousness theories. Pactiv Corp. v. Multisorb Techs.,
`
`Inc., No. 10 C 461, 2013 WL 2384249, at *1-2 (N.D. Ill. May 29, 2013) (striking portions of
`
`17
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 7 of 9 PageID #: 21891
`
`expert report containing new invalidity arguments based on combinations of prior art not
`
`disclosed in invalidity contentions); LML Patent Corp. v. JPMorgan Chase & Co., No. 2:08-cv-
`
`448, 2011 WL 5158285, at *1, 6-7 (E.D. Tex. Aug. 11, 2011) (excluding twenty-eight new
`
`obviousness combinations even though defendant had previously disclosed the prior art
`
`references that were the subject of the combinations: “Defendants present no authority holding
`
`that new combinations are permissible simply because the constituent references were previously
`
`disclosed.”); Ex. 15, AstraZeneca AB, No. 12-1378-MLC-TJB, Letter Order at 11 (finding
`
`inadequate invalidity contentions that argued obviousness “without delineating the content
`
`within each reference that [Defendant] is relying upon as well as each specific combination of
`
`references that support [Defendant’s] obviousness contentions.”).
`
`C.
`
`Dr. Karger Argues Invalidity Under 35 U.S.C. § 112 Based On Arguments
`Never Disclosed By Defendants
`Dr. Karger’s report includes eighty five pages of opinions that the asserted claims are
`
`invalid under 35 U.S.C. § 112 variously for lack of written description, non-enablement and/or
`
`indefiniteness. Ex. 14 (Karger Report) at ¶¶ 62-251. As with all invalidity defenses, Defendants
`
`are obligated to disclose their invalidity theories in their invalidity contentions and have the
`
`burden to demonstrate invalidity by clear and convincing evidence. Biscotti Inc. v. Microsoft
`
`Corp., No. 2:13-cv-01015-JRG-RSP, 2017 WL 2267283, at *1 (E.D. Tex. May 24, 2017)
`
`(invalidity contentions must include any grounds of invalidity based on indefiniteness,
`
`enablement or written description under 35 U.S.C. § 112); Auxilium Pharm., Inc. v. Watson
`
`Labs., Inc., No. 12-3084 (JLL), 2014 WL 2624780, at *3 (D.N.J. June 12, 2014) (same);
`
`McDavid Knee Guard, Inc. v. Nike USA, Inc., 809 F. Supp. 2d 863, 878-81 (N.D. Ill. 2011)
`
`(holding that defendant waived invalidity arguments under § 112 by failing to include same in its
`
`invalidity contentions); Mycogen Plant Sci., Inc. v. Monsanto Co., 61 F. Supp. 2d 199, 258 (D.
`
`18
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 8 of 9 PageID #: 21892
`
`this limitation alone or in combination with the Topology/Flooding References, the Multiplayer
`
`Systems, the Multiplayer Games, and/or Napster.” See id. at Exs. A1-A5.
`
`Because Defendants did not disclose an invalidity theory based on Age of Empire source
`
`code or the various functionality now relied upon by Dr. Karger, paragraphs 271-279, 285-323,
`
`584-587, 592-595, 598-602, 610-671, 680-683, 932-1000, 1077-1095, and 1165-1177 of his
`
`report should be struck.
`
`Dated: October 20, 2017
`
`Respectfully submitted,
`
` /s/ Paul J. Andre
`Paul J. Andre
`Lisa Kobialka
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 752-1700
`pandre@kramerlevin.com
`lkobialka@kramerlevin.com
`
`Aaron M. Frankel
`KRAMER LEVIN NAFTALIS
` & FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Telephone: (212) 715-9100
`afrankel@kramerlevin.com
`
`Philip A. Rovner (# 3215)
`Jonathan A. Choa (#5319)
`Potter Anderson Corroon LLP
`1313 North Market Street 6th Floor
`Wilmington, Delaware 19801
`Telephone: (302) 984-6000
`provner@potteranderson.com
`jchoa@potteranderson.com
`
`Attorneys for Plaintiff
`ACCELERATION BAY LLC
`
`By:
`
`26
`
`

`

`Case 1:16-cv-00455-RGA Document 310-1 Filed 11/07/17 Page 9 of 9 PageID #: 21893
`
`CERTIFICATE OF SERVICE
`
`I, Philip A. Rovner, hereby certify that, prior to 6 p.m. on October 20, 2017, the within
`
`document was submitted to Special Master Terrell and served on the following counsel as
`
`indicated:
`
`Jack B. Blumenfeld, Esq.
`Stephen J. Kraftschik, Esq.
`Morris, Nichols, Arsht & Tunnell LLP
`1201 N. Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`jblumenfeld@mnat.com
`skraftschik@mnat.com
`
`Attorneys for Defendant
`
`Daniel K. Webb, Esq.
`Kathleen B. Barry, Esq.
`Winston & Strawn LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`dwebb@winston.com
`kbarry@winston.com
`
`Co-counsel for Defendant
`
`BY E-MAIL
`
`Michael A. Tomasulo, Esq.
`David P. Enzminger, Esq.
`David K. Lin, Esq.
`Gino Cheng, Esq.
`Joe Netikosol, Esq.
`Winston & Strawn LLP
`333 S. Grand Avenue
`Los Angeles, CA 90071
`mtomasulo@winston.com
`denzminger@winston.com
`dlin@winston.com
`gcheng@winston.com
`jnetikosol@winston.com
`
`Co-counsel for Defendant
`
`By: /s/ Philip A. Rovner
`Philip A. Rovner
`
`