UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`BUNGIE, INC.,
`Petitioner
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`v.
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`WORLDS INC.,
`Patent Owner
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`_______________
`
`Case IPR2015-01319
`Patent 8,082,501
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`_______________
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`PATENT OWNER‘S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE PETITIONER’S EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`_______________
`
`
`
`BUNGIE, INC.,
`Petitioner
`
`
`
`v.
`
`WORLDS INC.,
`Patent Owner
`
`_______________
`
`Case IPR2015-01319
`Patent 8,082,501
`
`_______________
`
`
`
`PATENT OWNER‘S REPLY IN SUPPORT OF ITS MOTION TO
`EXCLUDE PETITIONER’S EVIDENCE UNDER 37 C.F.R. § 42.64(c)
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`Petitioner Bungie characterizes Patent Owner’s Motion to Exclude five of
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`Petitioner’s exhibits from the record as a “sideshow.” Paper 36 at 1. But if
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`correct, then it is a sideshow of Bungie’s own making for having introduced
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`irrelevant evidence for an improper purpose in the first place.
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`Indeed, in opposing the exclusion of its character attacks, Petitioner Bungie
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`confirms that the evidence identified in Patent Owner’s Motion to Exclude (Paper
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`33) is not relevant to any issue in this proceeding. And Bungie’s attempt to argue
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`relevance of certain exhibits results in numerous post-hoc factual assertions that
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`lack any support in the record. Petitioner’s Exhibits 1033, 1034, 1037, 1041, and
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`1042 should be excluded.
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`Exhibit 1033 – Business Wire Article
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`As explained in Patent Owner’s Motion (Paper 33), Exhibit 1033 has no
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`probative weight on any “fact that is of consequence to the determination” in this
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`proceeding. See Fed. R. Evid. 401. This exhibit is not relevant to content of the
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`claims being challenged, to the content of the prior art, or to any other issue to be
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`decided by the Board. Petitioner’s only use of this evidence is in support of its
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`attack of Patent Owner’s character, which is not relevant to any underlying issue in
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`this proceeding.
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`1
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`In opposition, Petitioner newly argues that Exhibit 1033 “is evidence that
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`contravenes Patent Owner’s contention that Bungie’s motivation for challenging
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`the patents is in acting on behalf of Activision.” Paper 36 at 1-2. Petitioner further
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`argues that “[a]s is apparent in the context it was cited, Exhibit 1033 was submitted
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`as background evidence and to corroborate Bungie’s state of mind in initiating this
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`proceeding.” Id. at 2 (emphasis added). In effect, Bungie is newly arguing that
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`someone at Bungie became aware of Exhibit 1033 prior to March 19, 20151, and as
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`a result of Exhibit 1033, decided to initiate this proceeding. But there is no
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`evidence in the record to establish that a) someone at Bungie became aware of
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`Exhibit 1033 before deciding to initiate this proceeding, b) this same person had
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`decision-making authority to initiate this proceeding, and c) Exhibit 1033 played a
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`part in this person’s decision to initiate this proceeding. Indeed, the sole citation to
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`Exhibit 1033 appears on page 2 of Bungie’s opposition (Paper 10) to Patent
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`Owner’s Motion for Routine or Additional Discovery. There, Petitioner does not
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`argue that Exhibit 1033 played any role in Bungie’s decision to initiate this
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`proceeding. Bungie merely cites to this evidence in support of its castigation of
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`Patent Owner. Despite Bungie’s post-hoc explanation of the relevance of this
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`1 According to Dr. Zyda, he performed most of his work for Bungie on these IPRs
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`after March 19, 2015. See Ex. 2016 at 254:5-8.
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`2
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`exhibit, Bungie submitted and used it in this case purely as character evidence.
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`This was improper.
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`What’s more, Bungie’s new argument on the relevance of Exhibit 1033 flies
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`in the face of Bungie opposition to Patent Owner’s motion for discovery in this
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`case. Patent Owner’s motion sought production of communications from
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`Activision related to Bungie’s initiation of this proceeding. Paper 9 at 5-6. In
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`opposition, Bungie argued that Patent Owner’s requests for discovery were not
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`“narrowly tailored to issues relating to these proceedings … .” Paper 10 at 9.
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`Bungie now asks the Board to consider its state of mind in initiating this
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`proceeding, but on incomplete evidence. Bungie should not be able to have it both
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`ways. Specifically, Bungie should not be able to oppose additional discovery into
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`evidence that led it to file this proceeding, while at the same time arguing to keep
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`in evidence that it now contends is relevant to that very same issue.2
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`2 By asking the Board to consider its state of mind in initiating this proceeding on
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`incomplete evidence, Bungie has opened the door to additional discovery on this
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`issue. Bungie should therefore be required to produce all evidence of its state of
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`mind in instituting this proceeding. Patent Owner is in the process of seeking
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`Board authority to move for additional discovery of this evidence. See Ex. 2045
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`(email correspondence dated July 29, 2016 from Patent Owner to Petitioner on the
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`intended motion).
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`3
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`
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`Second, as is clear from Bungie’s opposition, Bungie does not and cannot
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`cite to anywhere in the record where Exhibit 1033 is connected to Bungie’s state of
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`mind. Rather, Bungie asks the Board to draw a conclusion of relevance based on
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`“the context in [which] it was cited.” Paper 36 at 2. This post-hoc explanation for
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`the relevance of Exhibit 1033 should be rejected by the Board and the evidence
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`should be excluded.
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`
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`Exhibit 1034 – Business Insider
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`Like Exhibit 1033, Petitioner newly argues in its opposition to the motion to
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`exclude that Exhibit 1034 “is evidence that contravenes Patent Owner’s contention
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`that Bungie is acting on behalf of Activision.” Paper 36 at 5. Just like with
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`Exhibit 1033, this new argument finds no support in the record and cannot
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`overcome Petitioner’s pure use of Exhibit 1034 as character evidence. See Paper
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`10 at 2.
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`In addition to irrelevance under Fed. R. Evid. 402, Patent Owner moved to
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`exclude Exhibit 1034 as inadmissible hearsay under Fed. R. Evid. 801. In
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`opposition, Petitioner comes forward with the unsubstantiated argument that
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`Exhibit 1034 is “corroborating evidence of a reasonable state of mind in initiating
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`this proceeding … .” Paper 36 at 6. In effect, Petitioner is arguing that Exhibit
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`1034 is being offered not for the truth of its contents, but for the effect of Exhibit
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`4
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`1034 on a listener/reader. This argument should fail as another unsupported post-
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`hoc explanation. There is no evidence in the record to establish that a) someone at
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`Bungie read or otherwise became aware of Exhibit 1034 before deciding to initiate
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`this proceeding before the Board, b) this same person had decision-making
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`authority to initiate this proceeding, and c) the effect of Exhibit 1034 on this person
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`played a part in the decision to initiate this proceeding. Bungie submitted and used
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`Exhibit 1034 in this case purely as character evidence, and it should be excluded.
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`Exhibit 1041 – Interview of Mark Pesce
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`Exhibit 1041 is of record in this case because Bungie seeks to attack Mr.
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`Pesce through irrelevant and improper evidence directed to general character and
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`specific instances of conduct, rather than to his qualifications to testify on the
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`knowledge and understanding of a person of ordinary skill in the art at the relevant
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`time. In its opposition, Petitioner argues that this exhibit bears on Mr. Pesce’s
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`reliability, “including his ability to accurately remember details from the relevant
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`time period.” Paper 36 at 6. Petitioner also argues that it “had a reasonable basis
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`to question Mr. Pesce’s ability to recall events from the early 90s and his use of
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`psychedelic drugs during that time period is a relevant subject of inquiry.” Paper
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`36 at 8. But Bungie has no basis to argue that the contents of Exhibit 1041 weigh
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`on Mr. Pesce’s memory of events in the mid-1990s. Even Petitioner’s counsel,
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`5
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`while questioning Mr. Pesce, commented that April of 1993 was “a long time ago.
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`I’m sure it’s hard to remember.” Ex. 1046 at 28:8-13. Petitioner’s arguments
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`improperly invite the Board to give more credit to Mr. Pesce’s character or specific
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`acts than to his declaration (Ex. 2017) and deposition testimony (Ex. 1046), and
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`Exhibit 1041 should be excluded.
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`Exhibit 1042 – Cyber Samhain Invitation
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`
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`Exhibit 1042 has no probative weight on any “fact that is of consequence to
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`the determination” in this proceeding. See Fed. R. Evid. 401. Petitioner notes in
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`its opposition that Exhibit 1042 is discussed during the deposition of Mr. Pesce
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`(Ex. 1046), though Petitioner makes no argument for relevance of Exhibit 1042.
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`As such, this evidence is irrelevant and should be excluded.
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`Exhibit 1037 – Alternate Version of Funkhouser ‘95
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`In its opposition, Petitioner confirms that neither Dr. Zyda nor Petitioner
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`“are relying on Exhibit 1037 as prior art … .” Paper 36 at 12. And as already
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`explained in Patent Owner’s Motion to Exclude, Dr. Zyda agreed in his second
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`declaration that Ex. 1037 is not relevant to his opinions. See Ex. 1038 at ¶¶ 16-17.
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`Therefore, Ex. 1037 should be excluded as irrelevant under Fed. R. Evid. 401 and
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`not considered by the Board.
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`6
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`Respectfully submitted,
`
`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
` Counsel for Patent Owner
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`
`Dated: July 29, 2016
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`7
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on July 29, 2016, a true and correct copy of the
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`foregoing PATENT OWNER’S REPLY IN SUPPORT OF ITS MOTION TO
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`EXCLUDE PETITIONERS’ EVIDENCE is being served via email by consent to
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`the Petitioners at the correspondence addresses of record as follows:
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`Matthew A. Argenti
`Reg. No. 61,836
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 354-4154
`Facsimile: (650) 493-6811
`E-mail: margenti@wsgr.com
`
`
`
`Michael T. Rosato
`Reg. No. 52,182
`Andrew S. Brown
`Reg. No. 74,177
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Ave.
`Suite 5100
`Seattle, WA 98104-7036
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`E-mail: mrosato@wsgr.com
`E-mail: asbrown@wsgr.com
`
`By: /s/ Wayne M. Helge
` USPTO Reg. No. 56,905
` Counsel for Patent Owner
`
`
`
`8
`
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