Case 1:16-cv-00455-RGA Document 27 Filed 10/12/16 Page 1 of 3 PageID #: 1543
`
`1313 North Market Street
`P.O. Box 951
`Wilmington, DE 19899-0951
`302 984 6000
`www.potteranderson.com
`
`Philip A. Rovner
`Partner
`provner@potteranderson.com
`(302) 984-6140 Direct Phone
`(302) 658-1192 Fax
`
`October 12, 2016
`
`BY CM/ECF & HAND DELIVERY
`
`The Honorable Richard G. Andrews
`U.S. District Court for the District of Delaware
`U.S. Courthouse
`844 North King Street
`Wilmington, DE 19801
`
`Re:
`
`Acceleration Bay LLC v. Activision Blizzard, Inc. et al.
`D. Del., C.A. No. 16-453-RGA, 16-454-RGA, 16-455-RGA
`
`Dear Judge Andrews:
`
`We represent Acceleration Bay in the above-referenced actions. After filing initial
`motions to dismiss in July 2016, Defendants recently filed another round of motions and have
`used this second round of motions as an excuse not to answer the complaints and thereby delay
`the progress of these cases. While Acceleration Bay believes that Defendants should be ordered
`to answer the complaints (and their motions to dismiss be converted to motions for judgment on
`the pleadings under Rule 12(c)), Acceleration Bay requests that, regardless of how the motions
`are treated procedurally, the Court schedule a Rule 16 conference so that discovery can resume
`and a scheduling order entered. The parties have met and conferred and Defendants oppose
`Acceleration Bay’s request.
`
`Acceleration Bay filed actions against Defendants in early 2015 and the parties began
`discovery in December 2015. On June 20, 2016, the Court dismissed the 2015 actions without
`prejudice for lack of prudential standing in favor of the present actions. On June 17, 2016, after
`fixing the prudential standing issue, Acceleration Bay filed the instant actions. Rather than
`continue where discovery left off and negotiate a new scheduling order, Defendants have
`engaged in an endless campaign of delay
`
`First, on June 16, 2016, Defendants filed mirror declaratory judgment actions in the
`Northern District of California. Then, on July 8, 2016, in lieu of answering the 2016
`Complaints, Defendants filed a motion to dismiss under the first-to-file rule (in favor of the
`Northern District of California declaratory judgment actions), to transfer venue under 28 § 1404
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`

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`Case 1:16-cv-00455-RGA Document 27 Filed 10/12/16 Page 2 of 3 PageID #: 1544
`
`The Honorable Richard G. Andrews
`October 12, 2016
`Page 2
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`and to stay (D.I. 6, the “Motion to Dismiss”).1 Those motions were fully briefed as of August 4,
`2016 and submitted to the Court for adjudication. Shortly after briefing was completed,
`Defendants abandoned their Motion to Dismiss when the Northern District of California granted
`Acceleration Bay’s motion to transfer Defendants’ declaratory judgment actions to this Court,
`finding that Defendants’ declaratory judgment actions had been filed in anticipation of these
`litigations and that this Court was the proper venue for the parties’ dispute. D.I. 13, 14.
`
`Believing that Defendants intended to answer and were procedurally barred from filing
`serial motions to dismiss, Acceleration Bay agreed to extend the time for Defendants to respond
`to the 2016 Complaints until October 4, 2016. Defendants, however, rather than answering
`Acceleration Bay’s complaints, filed two new motions to dismiss under Rule 12; one seeking to
`dismiss Acceleration Bay’s claims against certain versions of the accused products and the other
`to find some of Acceleration Bay’s asserted claims patent ineligible. There is no reason, other
`than creating additional work for the Court and Acceleration Bay and further delaying the
`adjudication of these cases, that Defendants could not have filed these motions with their first
`motion to dismiss. If they had, the motions would be fully briefed and likely decided in the near
`future. Instead, Defendant’s procedural tactics have already delayed these cases by at least four
`months.
`
`Moreover, Defendants’ motions do not apply to the majority of the accused products or to
`the eligibility of three of the six patents at issue. D.I. 18, 21. Consequently, there is no dispute
`that, even if the Court grants Defendants’ improper second and third motions to dismiss,
`discovery will occur and a new scheduling order will need to be entered. Therefore, there is no
`reason to delay scheduling a Rule 16 conference.
`
`Acceleration Bay already warned Defendants that, having already once moved to dismiss
`and transfer venue in lieu of answering, Defendants’ filing of two additional motions to dismiss
`instead of answering was improper under Rule 12(g), which limits a party to a single such
`motion. Fed. R. Civ. P. 12(g)(2) (“a party that makes a motion under this rule must not make
`another motion under this rule raising a defense or objection that was available to the party but
`omitted from its earlier motion.”).
`
`Defendants’ first Motion to Dismiss is a motion under Rule 12(b), even though it was not
`labelled as such by Defendants. Courts routinely consider motions to dismiss under the first-to-
`file-rule as motions to dismiss under Rule 12(b). See, e.g., Boston Sci. Corp. v. Wall
`Cardiovascular Techs., LLC, 647 F. Supp. 2d 358, 360–61 (D. Del. 2009) (considering motion to
`dismiss under first-to-file rule as part of Rule 12(b) Motion to Dismiss); Port Auth. of New York
`& New Jersey v. Kraft Power Corp., No. 11 CV 5624 HB, 2012 WL 832562, at *1 (S.D.N.Y.
`Mar. 13, 2012) (characterizing motion to dismiss under the first-to-file rule as “a motion to
`dismiss . . . pursuant to Rule 12(b)(3)); O2COOL, LLC v. Discovery Commc'ns, LLC, No. 12 C
`3204, 2013 WL 157703, at *1 (N.D. Ill. Jan. 15, 2013) (treating motion to dismiss under first-to-
`
`1 All docket citations are to Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-
`RGA. Substantially similar pleadings were filed in the related actions.
`
`

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`Case 1:16-cv-00455-RGA Document 27 Filed 10/12/16 Page 3 of 3 PageID #: 1545
`
`The Honorable Richard G. Andrews
`October 12, 2016
`Page 3
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`file rule as motion to dismiss under Rule 12(b)(3)); E-Z-EM, Inc. v. Mallinckrodt, Inc., No. 2-09-
`CV-124, 2010 WL 1378820, at *1 (E.D. Tex. Feb. 26, 2010) (report & recommendation)
`(motion to dismiss under first-to-file rule is a motion to dismiss under Rule 12(b)(3) for improper
`venue).2
`
`Regardless of how they are treated procedurally, Defendants should not be permitted to
`use their latest motions to dismiss as a means to delay the progress of these actions.
`Accordingly, Acceleration Bay respectfully requests that the Court schedule a Rule 16
`conference so that discovery can resume and a scheduling order entered. Defendants should also
`be ordered to answer Acceleration Bay’s complaints.
`
`Respectfully,
`
`/s/ Philip A. Rovner
`
`Philip A. Rovner (#3215)
`
`All Counsel of Record (Via ECF Filing, Electronic Mail)
`
`cc:
`1235733
`
`2 Motions to transfer under 28 U.S.C. § 1404 have also been deemed a motion to dismiss under
`Rule 12(b)(3) for purposes of Rule 12(g). Elderberry of Weber City, LLC v. Living Centers-Se.,
`Inc., No. 6:12-CV-00052, 2013 WL 1164835, at *2–3 (W.D. Va. Mar. 20, 2013) (finding “that a
`motion to transfer venue is so similar to a motion to dismiss for improper venue that Rule
`12(g)’s consolidation requirement applies . . . to hold otherwise would subvert the purpose of
`the consolidation rule”) (emphasis added); Sangdahl v. Litton, 69 F.R.D. 641, 642–43 (S.D.N.Y.
`1976) (defendant waived personal jurisdiction defense by failing to include it in § 1404 motion
`to transfer).
`
`