`Trials@uspto.gov
`571-272-7822 Entered: January 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC., and
`ROCKSTAR GAMES, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01951 (Patent 6,714,966 B1)1
`Case IPR2015-01964 (Patent 6,829,634 B1)
`Case IPR2015-01970 (Patent 6,701,344 B1)
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`1 This order addresses issues in all three cases. We exercise our discretion to
`issue one order to be filed in each case.
`
`
`
`IPR2015-01951 (Patent 6,714,966 B1)
`IPR2015-01964 (Patent 6,829,634 B1)
`IPR2015-01970 (Patent 6,701,344 B1)
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`A conference call was held on January 28, 2015, among counsel for
`the parties and Judges Medley, Pettigrew, and Fink. Activision Blizzard,
`Inc., Electronic Arts Inc., Take-Two Interactive Software, Ind., 2K Sports,
`Inc., and Rockstar Games, Inc. (collectively, “Petitioner”) requested the call
`to discuss certain issues related to Exhibit 2001 filed by Acceleration Bay,
`LLC (“Patent Owner”) in each of IPR2015-01951, IPR2015-01964, and
`IPR2015-01970.
`As explained by the parties on the call, Patent Owner filed as Exhibit
`2001 in each case two pages of a nineteen-page Invention Disclosure form
`with, according to Patent Owner’s Preliminary Response, “certain
`confidential information not necessary to establish . . . actual reduction to
`practice . . . redacted.” E.g., IPR2015-01970, Paper 6, 17. Among the
`redactions was a date in the upper right-hand corner of page 2 of Exhibit
`2001. On the call, the parties agreed that Patent Owner will file in each case
`a new version of Exhibit 2001, identical to earlier-filed versions except the
`date in the upper right-hand corner will not be redacted. After Patent Owner
`files a new version of Exhibit 2001 in each case, all earlier-filed versions
`will be expunged.
`On the call, the parties also agreed that Patent Owner will produce to
`Petitioner in these cases a copy of the full nineteen-page Invention
`Disclosure form with only personally identifiable information and the like
`(e.g., internal control numbers) redacted.
`
`2
`
`
`
`IPR2015-01951 (Patent 6,714,966 B1)
`IPR2015-01964 (Patent 6,829,634 B1)
`IPR2015-01970 (Patent 6,701,344 B1)
`
`Patent Owner also stated on the call that it has complied with
`37 C.F.R. § 42.51(b)(iii), which requires service of relevant information that
`is inconsistent with a position advanced by a party during a proceeding.
`Finally, Patent Owner clarified that in IPR2015-01964, it filed a
`Preliminary Response (Paper 6) in error on January 15, 2016, and, pursuant
`to instructions from a Board paralegal, filed a Corrected Preliminary
`Response (Paper 7) on January 19, 2016, the deadline for filing a
`Preliminary Response in that case. The parties indicated that Patent Owner
`shared with Petitioner the differences between the original Preliminary
`Response and the Corrected Preliminary Response, and Petitioner does not
`oppose Patent Owner’s filing of a Corrected Preliminary Response.
`Accordingly, we will consider the Corrected Preliminary Response (Paper 7)
`filed on January 19, 2016, rather than the Preliminary Response (Paper 6)
`filed on January 15, 2016, in determining whether to institute an inter partes
`review in IPR2015-01964.
`
`ORDER
`
`
`
`It is:
` ORDERED that Patent Owner shall file in each of these cases a
`revised Exhibit 2001, identical to earlier-filed versions except the date in the
`upper right-hand corner of page 2 of the exhibit will not be redacted;
` FURTHER ORDERED that after Patent Owner files a revised Exhibit
`2001 in each case, the Board shall expunge from the record all previously-
`filed versions of Exhibit 2001;
`
`3
`
`
`
`IPR2015-01951 (Patent 6,714,966 B1)
`IPR2015-01964 (Patent 6,829,634 B1)
`IPR2015-01970 (Patent 6,701,344 B1)
`
` FURTHER ORDERED that, as agreed to by the parties on the call,
`Patent Owner shall provide Petitioner a copy of the full nineteen-page
`Invention Disclosure form with only personally identifiable information and
`the like (e.g., internal control numbers) redacted; and
` FURTHER ORDERED that in IPR2015-01964, the Corrected
`Preliminary Response (Paper 6), rather than the Preliminary Response
`(Paper 7), will be considered by the Board in determining whether to
`institute an inter partes review.
`
`
`
`FOR PETITIONER:
`J. Steven Baughman
`Andrew Thomases
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`andrew.thomases@ropesgray.com
`
`
`
`FOR PATENT OWNER:
`James Hannah
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`4