Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 1 of 31 PageID #: 31832
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No. 16-453-RGA
`
`Civil Action No. 16-454-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., ROCKST AR GAMES, INC., AND 2K
`SPORTS, INC.
`
`Defendants.
`
`Civil Action No. 16-455-RGA
`
`MEMORANDUM Orr ION
`
`Philip A. Rovner, Jonathan A. Choa, POTTER ANDERSON & CORROON LLP, Wilmington,
`DE; Paul J. Andre (argued), Lisa Kobialka, KRAMER LEVIN NAFTALIS & FRANKEL LLP,
`Menlo Park, CA; Aaron M. Frankel ( argued), KRAMER LEVIN NAFT ALIS & FRANKEL LLP,
`New York, NY
`
`

`

`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 2 of 31 PageID #: 31833
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`Attorneys for Plaintiff.
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`Jack B. Blumenfeld, Stephen J. Kraftschik, MORRIS NICHOLS ARSHT & TUNNELL LLP,
`Wilmington, DE; Michael A. Tomasulo (argued), Gino Cheng, David K. Lin, Joe S. Netikosol,
`WINSTON & STRAWN LLP, Los Angeles, CA; David P. Enzminger (argued), Louis L.
`Campbell, WINSTON & STRAWN LLP, Menlo Park, CA; Dan K. Webb, Kathleen B. Barry,
`WINSTON & STRAWN LLP, Chicago, IL; Krista M . Enns, WINSTON & STRAWN LLP, San
`Francisco, CA; Michael M. Murray, Anup K. Misra, WINSTON & STRAWN LLP, New York,
`NY; Andrew R. Sommer, Thomas M. Dunham, Michael Woods, Paul N. Harold, Joseph S.
`Masullo, WINSTON & STRAWN LLP, Washington, DC.
`
`Attorneys for Defendants.
`
`August~
`
`2018
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`2
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`

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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 3 of 31 PageID #: 31834
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`Presently before the Court are Plaintiffs Motion for Summary Judgment of Infringement
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`and Validity and Motion to Exclude Expert Testimony of Catharine M. Lawton (No. 16-453, D.I.
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`439; D.I. 16-454, D.I. 388; D.I. 16-455, D.I. 386) 1 and related briefing (D.I. 448, 474, 503);
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`Plaintiffs Motion to Correct Claim 19 of the '634 patent (D.1. 438) and related briefing (D.I.
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`438, 472, 473); Defendant Activision Blizzard Inc.'s ("Activision") Motion for Summary
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`Judgment (D.I. 440) and related briefing (D.I. 442, 475, 505); and Activision's Motion to
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`Exclude Expert Opinions of Dr. Nenad Medvidovic, Dr. Michael Mitzenmacher, Dr. Christine
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`Meyer, Dr. Harry Bims, and Dr. Ricardo Valerdi (D.I. 441) and related briefing (D.I. 442, 475,
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`505). I held oral argument on May 17, 2018. (D.I. 560 ("Tr.")). At that time, I ordered
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`additional briefing and letter briefing, which the parties completed on June 6, 2018. (D.I. 561 ,
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`562, 563, 564, 565, 570, 572).
`
`For the reasons that follow, the Court will DENY Plaintiffs Motion for Summary
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`Judgment oflnfringement and Validity and Motion to Exclude Expert Testimony of Catharine
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`M. Lawton (D.I. 439); DENY Plaintiffs Motion to Correct Claim 19 of the '634 patent (D.I.
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`438); GRANT Activision's Motion for Summary Judgment (D.I. 440), as to the invalidity of all
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`asserted claims of U.S. Patent No. 6,829,634 and claims 11 , 15, and 16 of U.S. Patent No.
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`6,732,147, and as to non-infringement of U.S. Patent Nos. 6,701,344, 6,714,966, and 6,920,497,
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`limited to the accused CoD and Destiny games, and otherwise DENY that Motion; and GRANT
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`in part and DENY in part Activision's Motion to Exclude Expert Opinions of Dr. Nenad
`
`1 Hereinafter, all citations to the docket are to the docket in No. 16-453, unless otherwise noted. Plaintiff's
`Motion for Summary Judgment is only against Activision, as to infringement and the exclusion of expert testimony,
`and is against all three Defendants, as to validity. (D.I. 439). Consequently, all Defendants joined the opposition to
`Plaintiff's motion, as to validity. (No. 16-454, D.I. 407; No. 16-455, D.I. 405). All Defendants joined Activision' s
`Motion for Summary Judgment, as to invalidity. (No. 16-454, D.I. 389, 418; No. 16-455, D.I. 387, 412).
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`3
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 4 of 31 PageID #: 31835
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`Medvidovic, Dr. Michael Mitzenmacher, Dr. Christine Meyer, Dr. Harry Bims, and Dr. Ricardo
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`Valerdi (D.I. 441).
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`I.
`
`BACKGROUND
`
`Plaintiff brought this suit against Activision on June 17, 2016, alleging that Activision
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`infringes United States Patent Nos. 6,701 ,344 ("the ' 344 patent"), 6,714,966 ("the ' 966 patent"),
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`6,829,634 ("the '634 patent"), 6,910,069 ("the '069 patent"), 6,732,147 ("the ' 147 patent"), and
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`6,920,497 ("the ' 497 patent") (collectively, the "Asserted Patents") by making, using, selling,
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`offering for sale, and/or importing into the United States and this District four video games:
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`World of Warcraft ("WoW"), Call of Duty: Advanced Warfare and Call of Duty: Black Ops III
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`(collectively, "CoD"), and Destiny. (D.I. 1). The asserted claims are claims 12, 13, 14, and 15
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`of the '3 44 patent; claims 12 and 13 of the ' 966 patent; claims 19 and 22 of the ' 634 patent;
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`claims 1 and 11 of the ' 069 patent; claims 1, 11 , 15, and 16 of the ' 14 7 patent; and claims 9 and
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`16 of the '497 patent. (D.I. 442-1 , Exh. D-1).
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`II.
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`LEGAL STANDARD
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`a. Summary Judgment
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`"The court shall grant summary judgment if the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.
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`R. Civ. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
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`disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
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`330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
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`dispute about a material fact is 'genuine ' if the evidence is sufficient to permit a reasonable jury
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`to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
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`2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242,248 (1986)). When determining
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`4
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 5 of 31 PageID #: 31836
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`whether a genuine issue of material fact exists, the court must view the evidence in the light most
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`favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott
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`v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter, 476 F.3d 180, 184 (3d Cir. 2007).
`
`b. Daubert
`
`Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and
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`states:
`
`A witness who is qualified as an expert by knowledge, skill,
`experience, training, or education may testify in the form of an
`opinion or otherwise if: (a) the expert's scientific, technical, or other
`specialized knowledge will help the trier of fact to understand the
`evidence or to determine a fact in issue; (b) the testimony is based
`on sufficient facts or data; ( c) the testimony is the product of reliable
`principles and methods; and ( d) the expert has reliably applied the
`principles and methods to the facts of the case.
`
`Fed. R. Evid. 702. The Third Circuit has explained:
`
`Rule 702 embodies a trilogy of restrictions on expert testimony:
`qualification, reliability and fit. Qualification refers to the
`requirement that the witness possess specialized expertise. We have
`interpreted this requirement liberally, holding that "a broad range of
`knowledge, skills, and training qualify an expert." Secondly, the
`testimony must be reliable; it "must be based on the 'methods and
`' subjective belief or
`procedures of science' rather than on
`unsupported speculation'; the expert must have 'good grounds' for
`his o[r] her belief. In sum, Daubert holds that an inquiry into the
`reliability of scientific evidence under Rule 702 requires a
`determination as to its scientific validity." Finally, Rule 702
`requires that the expert testimony must fit the issues in the case. In
`other words, the expert's testimony must be relevant for the
`purposes of the case and must assist the trier of fact. The Supreme
`Court explained in Daubert that "Rule 702's 'helpfulness' standard
`requires a valid scientific connection to the pertinent inquiry as a
`precondition to admissibility."
`
`By means of a so-called "Daubert hearing," the district court acts as
`a gatekeeper, preventing opinion testimony that does not meet the
`requirements of qualification, reliability and fit from reaching the
`jury. See Daubert ("Faced with a proffer of expert scientific
`testimony, then, the trial judge must determine at the outset,
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`5
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 6 of 31 PageID #: 31837
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`pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether
`the expert is proposing to testify to (1) scientific knowledge that (2)
`will assist the trier of fact to understand or determine a fact in
`issue.").
`
`Schneider ex rel. Estate of Schneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote and
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`internal citations omitted).2
`
`III. DISCUSSION
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`A. Kegel and ActiveNet References
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`Plaintiff argues that the Kegel and ActiveNet references do not invalidate the asserted
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`claims of the '497 patent, because, "Defendants failed to come forward with any evidence that
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`either reference was available as prior art before the priority date of the Asserted Claims of the
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`'497 Patent." (D.I. 448 at 14). A prior art reference may be shown to be a "printed publication"
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`if it was: (1) publicly accessible, or (2) distributed to those of skill in the art. In re NTP, 654
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`F.3d 1279, 1296 (Fed. Cir. 2011). The critical date of the ' 497 patent is July 31, 1999. (D.I. 448
`
`at 1~; D.I. 474 at 33).
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`The Kegel reference is an article that "discusses Network Address Translation
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`technology." (D.I. 448 at 14). Plaintiff argues that the reference was not publicly accessible to
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`an interested POSIT A "until at least 200 l." (Id. at 15). Defendants, however, argue that the
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`Kegel reference was posted to a website, and was shared "on a public web forum in a discussion
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`on cable modem networking" on July 20, 1999.3 (D.I. 474 at 31). Defendants also represent that
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`Mr. Kegel, the author of the reference, will testify that he last updated his website on July 17,
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`2 The Court of Appeals wrote under an earlier version of Rule 702, but the subsequent amendments to it
`were not intended to make any substantive change.
`3 Defendants aver that they are not "relying on this [web forum post] for ... a hearsay purpose," because
`they "don 't care whether what [the author of the post] says it is actually true. We 're just showing that he was aware
`of the [reference] and was telling other people about it." (Tr. 19:4- 13). Defendants may offer the web forum post
`for a purpose other than proving its truth, including showing the author's awareness of the reference. Fed. R. Civ. P.
`801(c).
`
`6
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 7 of 31 PageID #: 31838
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`1999. (Tr. 16:6-8 ; D.I. 453-1 , Exh. 19). I find that Defendants have shown at least a genuine
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`dispute of material fact as to the public availability of the Kegel reference. Therefore, I will
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`deny Plaintiffs Motion for Summary Judgment, as to that reference.
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`"ActiveNet is a multiplayer game system developed by Activision." (D.I. 448 at 16).
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`Defendants argue, "ActiveNet was used in two games that are relevant to this case: Heavy Gear
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`II and Heavy Gear II Demo." (D.I. 474 at 32). Defendants assert that these games were
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`available before the critical date. (Id.). However, Plaintiff argues that Defendants cannot show
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`that these games used ActiveNet. (D.1. 448 at 16-17). Defendants respond that Dr. Kegel will
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`testify as to the release dates of Heavy Gear II and Heavy Gear II Demo, and technical expert Dr.
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`Karger will testify that the ActiveNet source code was comparable to the code in Heavy Gear II
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`Demo before the critical date. (Tr. 21: 17-24:6). I find that Defendants have shown at least a
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`genuine dispute of material fact as to the public availability of the ActiveN et reference. 4
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`Therefore, I will deny Plaintiff's Motion for Summary Judgment, as to that reference.
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`B. Validity of the Asserted Claims of the '634 Patent
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`Defendants argue that the asserted claims of the ' 634 patent are indefinite and therefore
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`invalid. (D.I. 442 at 32). The Court found claim 19 of the '634 patent indefinite. (D.I. 423 at
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`14). The only other asserted claim of the '634 patent, claim 22, depends from claim 19. (D.I.
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`444-1 , Exh. D-1).
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`Plaintiffs only argument that the two claims are not invalid for indefiniteness is that
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`claim 19 of the '634 patent should be corrected. (D.1. 475 at 26-27).
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`4 Even if the ActiveNet reference was available before the critical date, both parties agree that it was
`available only as source code in Heavy Gear II. (Tr. IO :3-4, 21 :8-11 ). At oral argument, Plaintiff asserted that
`source code cannot constitute public availability. (Tr. 10: 17-23). However, in post-argument briefing, Plaintiff
`agrees that "commercial source code [ can] be relevant evidence of prior art [if it is] ' embodied' in a commercially
`available product." (D.l. 563 at 5-6).
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`7
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 8 of 31 PageID #: 31839
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`Plaintiff argues that claim 19 "contains an obvious error" that the Court should correct.
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`(D.I. 438 at 1). Claim 19 covers, "A non-routing tabled based computer readable medium
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`containing instructions for controlling communications of a participant of a broadcast channel
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`within a network, by a method comprising" several steps. (D.I. 117-2, Exh. A-4, claim 19)
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`( emphasis added). During claim construction, I held that "non-routing table based" modifies
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`"computer readable medium," and found that "non-routing table based computer readable
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`medium" is "nonsensical." (D.I. 423 at I 6-17).
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`Plaintiff urges that claim 19 should read: "A computer readable medium containing
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`instructions for controlling communications of a participant of a broadcast channel within a
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`network, by a non-routing tabled based method comprising" several steps. (D.I. 438 at 1).
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`A "district court may correct an obvious error in a patent claim . .. 'only if (1) the
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`correction is not subject to a reasonable debate based on consideration of the claim language and
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`the specification and (2) the prosecution history does not suggest a different interpretation of the
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`claims. "' CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir.2011)
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`(citing Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003)). As a
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`general matter, "[c]ourts do not rewrite claims; instead, [they] give effect to the terms chosen by
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`the patentee." K-2 Corp. v. Salomon S.A ., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
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`Although I found claim 19 "nonsensical," it is not clear that the claim contains an
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`"obvious error." Plaintiff mentioned no "obvious" error in its Markman briefing or at any
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`Markman hearing. (See generally D.I. 366; D.I. 391).
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`Even if it were obvious that claim 19 contains an error,5 the correction is "subject to a
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`reasonable debate." At a Markman hearing, Plaintiff argued that "non-routing table based"
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`5 The parties dispute whether an "obvious error" must be typographical in nature, or if it can be more
`substantive. (Tr. 36: 10-16, 42:25-43:2). However, in light of my conclusion, I need not evaluate that dispute.
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`8
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 9 of 31 PageID #: 31840
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`modifies the entire preamble. (D.I. 363 at 91: 1-92:25). In its Markman briefing, Plaintiff argued
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`that "non-routing table based" modifies the "network." (D.I. 366 at 33). Now, Plaintiff argues
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`that "non-routing table based" modifies the "method." (D.I. 438 at 2). Each of these corrections
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`results in a different claim scope. See Magnetar Techs. Corp. v. Six Flags Theme Parks, Inc. , 61
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`F. Supp. 3d 437, 442-43 (D. Del. 2014) (refusing to exercise discretion to rewrite a claim
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`because different corrections left the "scope of the claim subject to reasonable debate"). If the
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`claim is re-written so that the "network" is non-routing table based, then the claim would be
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`limited to a network that does not employ routing tables. However, if the claim is rewritten so
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`that the "method" is "non-routing table based," then the claim would encompass a network that
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`includes routing tables, so long as the method itself does not employ routing tables.
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`Accordingly, Plaintiff's arguments demonstrate that the correction is itself subject to a
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`reasonable debate. CBT Flint Partners, 654 F.3d at 1358. This precludes me from correcting
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`claim 19.
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`I will therefore deny Plaintiffs Motion to Correct Claim 19 of the '634 patent. (D.I.
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`438).
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`As a result, asserted claims 19 and 22 of the '634 patent are invalid as indefinite. I will
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`grant Defendants' Motion for Summary Judgment, as to the validity of those claims. (D.I. 440).
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`C. Making and Using the Accused Products
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`A patent is infringed when a person "without authority makes, uses, offers to sell, or sells
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`any patented invention, within the United States ... during the term of the patent .... " 35
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`U.S.C. § 271(a).
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`9
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 10 of 31 PageID #: 31841
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`1.
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`'344 and '966 patents
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`Activision argues that its sale of software for the CoD and Destiny games does not
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`infringe the '344 and ' 966 patents because it "does not make, use, sell or offer to sell" the
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`accused CoD and Destiny networks. (D.I. 442 at 3). Plaintiff has not alleged indirect
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`infringement. (D.I. 1).
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`In response, Plaintiff argues that Activision "makes," "uses," and "sells" the accused
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`networks. (D.I. 475 at 1-5; D.I. 570 at 1-2).
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`The asserted claims of the '344 and '966 patents require "computer networks,"
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`"broadcast channels," or both. The claimed "computer networks" and "broadcast channels" are
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`made up of "participants" and "connections" between those "participants." (See, e.g., '344
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`patent, claims 1, 13). A "computer network" is a "group of connected computers or group of
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`connected computer processes." (D.I. 423 at 8). A "broadcast channel" is a "communications
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`network consisting of interconnected participants where each participant receives all data
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`broadcasted on that communications network." (D.I. 432 at 2).
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`a. "Makes"
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`Plaintiff argues that Activision "makes" the infringing system "through compiling the
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`source code that configures the accused networks to infringe." (D.I. 475 at 3 (citing CNET
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`Networks, Inc. v. Etilize, Inc., 528 F. Supp. 2d 985 , 994 (N.D. Cal. 2007) (infringing software is
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`made "when expressed and stored as machine-readable object code, e.g. burned on a CD-ROM
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`or written to a server hard drive such that it is capable of being downloaded from the internet ...
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`[and the] software become[s] an actual, physical component amenable to construction"))).
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`However, Activision notes that "compiling source code does not ' combine all of the [system's]
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`claim elements."' (D.I. 505 at 2 ( citing Centillion Data Sys., LLC v. Qwest Commc 'ns Int 'l Inc.,
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`10
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 11 of 31 PageID #: 31842
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`631 F.3d 1279, 1288 (Fed. Cir. 2011))). In Centillion, even though the defendant "made" three
`
`of four claim elements and provided software to make the fourth element, the defendant "did not
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`"combine all of the claim elements." 631 F.3d at 1288. The system was not complete until
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`"[t]he customer ... provid[ed] the 'personal computer data processing means' and install[ed] the
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`client software." Id. at 1287-88. The Federal Circuit found that the defendant therefore did not
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`"make" the claimed system. Id.
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`Activision argues that the situation here is akin to the situation in Centillion, because
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`compiling source code "does not create participants .. . , connect them to each other, or
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`configure them to broadcast messages as the claims require." (D.I. 505 at 2).
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`Plaintiff, however, argues that Centillion is distinguishable.
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`First, Plaintiff argues that the users here have less control over whether they "install and
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`operate" the software than the customers in Centillion. (Tr. 116-17). In its summary judgment
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`briefing, Plaintiff argues that the Centillion defendant's "customers maintained and controlled
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`the 'front-end' portion of the claimed system," but stated that "is not the case here as Activision
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`owns and controls the software participating in the network." (D.I. 475 at 2-3). Plaintiff argues
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`that Activision's customers have "zero input" over the claimed system. (Tr. 115:23-116:3).
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`Activision notes, however, that Plaintiffs experts agree that Activision' s customers can play the
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`accused games in ways that do not infringe. (D.I. 565 at 6 (citing D.I. 443, Exh. A-1 at ,i 2, 81;
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`D.I. 443, Exh. A-2 at ,i 2)). Plaintiff responds that even though "Activision suggests that it has
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`infringing and non-infringing game modes from which a user may select," "Destiny has no off(cid:173)
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`line mode," "Destiny must connect to the infringing network before it can be used," and "the
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`multiplayer version of [CoD] always infringes." (D.I. 570 at 17, n.4 (citing D.I. 454, Exh. 28 at
`
`,i 73; D.I. 454-55, Exh. 40 at ,i,i 69, 81-82, 84, 123)). Plaintiffs response, even if true, does not
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`11
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 12 of 31 PageID #: 31843
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`distinguish Centillion. As Activision notes, Plaintiff "nowhere disputes that a customer, even
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`once in online mode, has several non-accused game modes available, and must choose a
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`multiplayer game with six or more players to form an accused network." (D.I. 572 at 3).
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`Accordingly, Activision's customers have a degree of control comparable to that of the
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`Centillion customers, who requested reports "a single time, .. . caus[ing] the back-end
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`processing to perform its function on a monthly basis." 631 F.3d at 1285.
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`Second, Plaintiff argues, "The configured 'participants' are Activision's software." (D.I.
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`475 at 3; D.I. 565 at 6-7). In Centillion, the final claim element allegedly provided by the
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`defendant was "personal computer data processing means adapted to perform" a task by having
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`the defendant' s software installed on them. Centillion , 631 F.3d at 1281. The system was not
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`complete until " [t]he customer ... install[ed] the client software." Id. at 1288.
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`Here, argues Plaintiff, no computer or computer data processing means is required by the
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`claims. (D.I. 570 at 3, 8-9). The parties stipulated that "participant" means "a computer and/or
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`computer process that participates in a network." (D.I. 320 at 2). Accordingly, the claimed
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`network "participants" need not each be a computer. But even if a "participant" can be a
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`"computer process," Plaintiffs experts agree that "participants" are ultimately "application
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`programs that are executing on the client computers." (D.I. 572 at 4 (citing D.I. 443 , Exh. A-1 at
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`,r,r 2, 74; D.I. 443 , Exh. A-2 at ,r,r 2, 76)). This agreement is consistent with the parties'
`
`construction for "participants." Even if each "participant" need not be a "computer," each
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`"participant" still requires a user computer and some action taken by the user. 6,7
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`6 I previously found that "the claims do not ' claim activities performed by the user' or make any reference
`to a 'user. ' ... Rather, they claim a network in which participants are configured to send data to their neighbors."
`(D.I. 386 at 22-23). This is consistent with my present holding. Even if the claim scope does not include a " user,"
`some user action is still required to "make" the invention.
`7 Activision argues, "If [Plaintiff] is accusing pure software" by arguing that "participants" are "software,"
`"then the patents are invalid." (D.I. 565 at 11 ). Because Activision has not fully briefed this issue, I will not
`consider Activision' s argument.
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`12
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 13 of 31 PageID #: 31844
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`As Activision argues, "the customer must install Activision's software" on a computer,
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`"execute it, and choose an online, multiplayer game mode with more than 5 other participants to
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`make and use the accused networks." (D.I. 572 at 3; D.I. 565 at 4). Plaintiff does not
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`meaningfully respond to this argument or dispute that Activision's customers take the action that
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`leads to the "back-end processing." (D.I. 570). Similarly, in Centi/lion, the Federal Circuit
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`explained, "It makes no difference that the back-end processing is physically possessed by [the
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`defendant]," because "if the user did not make the request, then the back-end processing would
`
`not be put into service." Centi/lion, 631 F.3d at 1285. Just as "user" action was required by the
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`final claim element in Centi/lion, action by multiple customers is required here for the claimed
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`"participants" to be in place and to send data in the network. Therefore, Plaintiff's effort to
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`distinguish Centi/lion on the basis that the claims there more explicitly required customers' use
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`of a computer falls short. 8
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`Plaintiff proffers two other theories as to why Plaintiff "makes" the infringing network.
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`First, Plaintiff argues that Activision's "license agreements, which players accept when
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`downloading the software, explicitly state that Activision maintains complete ownership of the
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`8 Plaintiff also argues, "[E]ven if the input of Activision' s customers is required to cause the network to be
`formed ... , Activision does not avoid infringement by selling an otherwise-infringing, but disassembled network."
`(D.1. 570 at 9 (citing dicta from High Tech Med. Instrumentation, Inc. v. New Image Indus. , Inc., 49 F.3d 1551 , 1556
`(Fed. Cir. 1995) (" [I]f a device is designed to be altered or assembled before operation, the manufacturer may be
`held liable for infringement if the device, as altered or assembled, infringes a valid patent.")). Plaintiff continues,
`"Centillion does not replace the High Tech . .. standard where, as is the case here, no actions by other parties are
`required to make the component claim limitations." (D.I. 570 at 9). Plaintiff's argument is off-base. As Activision
`notes, Plaintiff's argument "relies on the ... claims that .. . Activision ' s customers have ' zero input' over
`installation of software, whether to execute it, or what game mode to play in." (D.I . 572 at 4). As 1 explain earlier
`in the opinion, this assumption is faulty . Furthermore, the High Tech court cites Paper Converting Machine Co. v.
`Magna-Graphics Corp., 745 F.2d 11 , 19 (Fed. Cir. 1984) to support its proposition. 49 F.3d at 1556. In Paper
`Converting, the Federal Circuit held that a finding of infringement was not clearly erroneous only because "of the
`amount of testing performed . . . , coupled with the sale and delivery during the patent-term of a ' completed'
`machine (completed by being ready for assembly and with no useful noninfringing purpose) .. . . " 745 F.3d at 19.
`The "no useful noninfringing purpose" language seems irrelevant to direct infringement, but is suggestive of
`contributory infringement. Plaintiff has not alleged such extensive testing or readiness for assembly here, and has
`not alleged indirect infringement. Therefore, Centillion applies, and High Tech does not.
`
`13
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`

`

`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 14 of 31 PageID #: 31845
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`software, confirming that Activision is the party building the network." (D.I. 570 at 7 (citing
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`D.I. 482, Exh. 74 at AB-AB-009835)). However, as Activision notes, "Whether Activision owns
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`the software is irrelevant because owning is not an infringing act, i.e., making, using, selling, or
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`offering to sell, and [Plaintiff] cites no case in support of its theory of infringement-by-owning."
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`(D.I. 572 at 6). Furthermore, Plaintiff does not explain how owning software necessarily entails
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`making a network. (D.I. 570 at 7). Therefore, Plaintiffs argument falls short.
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`Second, Plaintiff argues that Activision "infringes by making the infringing networks,"
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`because "Activision is vicariously liable for the actions of its customers." (D.I. 570 at 9). As
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`support, Plaintiff cites Travel Sentry, Inc. v. Tropp , 877 F.3d 1370, 1378 (Fed. Cir. 2017). (D.I.
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`570 at 9-10). However, Travel Sentry involved method claims, and the claims at issue are
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`system claims. 877 F.3d at 1378. "[S]ystem claims are different from method claims and are
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`still treated under the Centillion standard for infringement." Centrak, Inc. v. Sonitor Techs. , Inc. ,
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`2017 WL 3730617, at *6 (D. Del. Aug. 30, 2017), appeal pending, No. 17-2510 (Fed. Cir.).
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`Under Centillion, "it [was] entirely the decision of the customer whether to install and operate
`
`this software on its personal computer data processing means." 631 F.3d at 1287. As previously
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`explained, this case is analogous to Centillion because the customer here can choose whether to
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`install and operate Activision' s software. "[Activision] is not vicariously liable for the actions of
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`its customers .... [Activision' s] customers do not act as [Activision's] agents as a matter oflaw
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`nor are they contractually obligated by [Activision] to act." Centillion, 631 F.3d at 1288.
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`Accordingly, Plaintiffs argument for vicarious liability falls short.
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`Accordingly, I find that that Activision' s sale of software for the CoD and Destiny games
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`does not mean that Activision "makes" the accused CoD and Destiny networks.
`
`14
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`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 15 of 31 PageID #: 31846
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`b. "Uses"
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`Plaintiff argues that Activision "uses" the infringing system because it "puts the invention
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`into service by controlling the system as a whole and obtaining the benefit from its use." (D.I.
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`475 at 2 (citing NTP, Inc. v. Research in Motion, Ltd. , 418 F.3d 1282, 1316-17 (Fed. Cir.
`
`2005))).
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`Plaintiff explains that Activision "exclusively owns and controls the software"
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`participating in the network, and therefore "control[s] the system as a whole." (D.I. 475 at 2-3;
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`D.I. 570 at 14). However, "[s]upplying the software for the customer to use is not the same as
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`using the system." Centillion, 631 F.3d at 1286. In Centillion, the defendant possessed and
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`operated three of four claim elements. The fourth element was a customer' s personal computer
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`"adapted to perform" a task by having the defendant' s software installed on it. 631 F.3d at 1281.
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`The Federal Circuit found that the defendant did not use the entire system, because supplying
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`software to customers was not "put[ting] into service" the entire claimed system. Id. at 1286.
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`Activision therefore argues that, like the Centillion defendant, its exclusive ownership and
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`control of the game software does not "put the invention into service." (D.I. 565 at 4-5). Just as
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`the defendant in Centillion "never 'use[ d]' the entire claimed system because it never put[] into
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`service the personal computer data processing means," Activision argues that it never uses the
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`entire claimed system because "[n]o claimed system can be put into service until multiple
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`customers install the software and 'execut[e] [it] on the client computers." ' (D.I. 505 at 2 (citing
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`D.I. 443 , Exh. A-1 at ,r 2)).
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`Activision also argues that it does not "obtain the benefit" from the system' s use. (D.I.
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`505 at 2). Use requires that an "infringer obtain[] 'benefit' from each and every element of the
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`claimed system." Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1329
`
`15
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`

`

`Case 1:16-cv-00455-RGA Document 440 Filed 08/29/18 Page 16 of 31 PageID #: 31847
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`(Fed. Cir. 2017) ( citing Centillion, 63 l F .3d at 1284 ). The only "benefits" to which Plaintiff
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`points are general financial benefits and vague technological benefits. (D.I. 475 at 2; D.I. 570 at
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`15 (citing D.I. 480-1 , Exh. 67 at ,r,r 50-62, 65-70; D.I. 480-1 , Exh. 69 at ,r,r 24-33; D.I. 455-1 ,
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`Exh. 50 at ,r,r 535, 542-47, 573, 549-61 , 548)). Plaintiff nonetheless argues that Activision's
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`benefits are in fact tethered to "each and every element" of the claimed network. (D.I. 570 at
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`15). However, Plaintiff cites only to expert reports, where technological "benefits" of the system
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`are generally discussed. No analysis of Activision's element-by-element benefits is provided in
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`those citations. (D.I. 480-1). Plaintiff provides no such analysis in its briefing, either. (D.I. 570
`
`at 15). Activision thus argues that any benefit identified by Plaintiff is not "tethered to the
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`claims," as is required for Activision to "use" the infringing system. (D.I. 505 at 2 (cit