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`Case IPR2015-01964
`Patent No. 6,829,634
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ACTIVISION BLIZZARD, INC.,
`ELECTRONIC ARTS INC.,
`TAKE-TWO INTERACTIVE SOFTWARE, INC.,
`2K SPORTS, INC., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioners,
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`v.
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`ACCELERATION BAY, LLC,
`Patent Owner.
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`Case IPR2015-019641
`Patent No. 6,829,634 B1
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`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
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`PETITIONERS’ CONSOLIDATED REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`1 Bungie, Inc., who filed Petition IPR2016-00963, has been joined as a petitioner in
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`this proceeding.
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`Petitioners respectfully request rehearing, pursuant to §42.71(d),2 of the
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`Case IPR2015-01964
`Patent No. 6,829,634
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`portions of the Board’s November 18, 2016 Order–Conduct of the Proceeding
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`(Pap. 82, “Order”) (1) denying Petitioners’ November 15, 2016 request for a
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`conference call to seek the Board’s guidance concerning the deposition of a third
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`party declarant resident in France, and the taking of this deposition via
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`videoconference, and (2) denying “the requested deposition of a foreign, third-
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`party witness.” Order at 4. Petitioners respectfully submit that the Order was
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`based on factual assumptions misapprehending the circumstances surrounding
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`Petitioners’ request, and in particular on two misapprehended facts addressed
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`below. Accordingly, Petitioners respectfully seek rehearing.3
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`2 Unless otherwise noted, citations are to 37 C.F.R., and all emphases added.
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`3 Although not a decision on a “petition or motion” (see title of §42.71), it is Peti-
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`tioners’ understanding that the Order is the proper subject of a motion for rehear-
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`ing, e.g., Volusion v. Versata, CBM2013-00018, Pap. 42 at 4 (noting failure to seek
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`rehearing of Board order denying request—made through conference call—to file
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`motion to strike); Agilysys v. Ameranth, CBM2014-00016, Pap. 14 at 2 (noting
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`failure to seek rehearing of Board order—stemming from conference call—
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`requiring paper re-designating lead and backup counsel), and that, in any event, the
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`Board may exercise its discretion under §42.5(a) to consider Petitioners’ Request
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`under §42.71(d)’s requirements. See IBM v. Intellectual Ventures II, IPR2015-
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`1
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`I.
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`Timeline of Events
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`Case IPR2015-01964
`Patent No. 6,829,634
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`In accordance with §42.71(d)(1), Petitioners timely file this Request within
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`14 days of the Board’s non-final November 18 Order. Petitioners would have
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`provided the following timeline of relevant events on the requested call with the
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`Board. Cf. Pap. 21 at 5 (limiting emails requesting conference calls to “short
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`statement” agreed to by both parties). On October 21, 2016, Patent Owner (“PO”)
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`filed Objections to Evidence in Petitioner’s Reply and Petitioner’s Opposition to
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`Patent Owner’s Motion to Amend. Pap. 59. Under §42.64(b)(2), Petitioners’
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`deadline to serve supplemental evidence in response to PO’s Objections was
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`November 4, and the Due Date 4 deadline for filing motions to exclude and
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`observations on cross-examination was the following November 10. 4 Pap. 62 at 1.
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`01323, Pap. 35 at 2 n.1 (exercising discretion to consider request for rehearing of
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`Board order denying request—made through request for a conference call—for
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`authorization to file a paper).
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`4 As reflected in the correspondence attached as Exhibit 1058, in view of the
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`limited availability of a different supplemental evidence declarant (Petitioner’s
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`retained expert Dr. Bennett) the following week and as a courtesy to PO,
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`Petitioners had also provided PO on Nov. 1 with advanced notice that they planned
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`to serve an additional declaration by Dr. Bennett the next day by 10a.m. PT/1p.m.
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`ET (i.e., two days before Petitioners’ Nov. 4 deadline for serving supplementary
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`2
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`On November 4, Petitioners timely served supplemental evidence, including
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`Case IPR2015-01964
`Patent No. 6,829,634
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`the Declaration of Christophe Diot (Ex1052)—a 4-page declaration (plus
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`attachments) limited to fact testimony regarding the authenticity and availability of
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`the prior art Gautier reference (Ex1030), as well as the authenticity of other
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`references. Ex1056 ¶4. Petitioners were not certain until the night before
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`(November 3) whether Dr. Diot, a third-party resident of France not under their
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`control, would actually provide a declaration. Id. ¶3. Petitioners proactively
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`provided PO, at the time of service, two dates/times (November 7 and 8 around 3
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`p.m. ET) on which Dr. Diot was available for deposition by video should PO
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`choose to depose him—even though Petitioners had not yet offered his declaration
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`in evidence.5 Ex1055; Ex1056 ¶4.
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`In a similar circumstance earlier in this proceeding, the Board permitted
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`Petitioners to make third-party foreign declarants whose testimony is limited to
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`evidence) and proactively offered him for deposition on Nov. 4 should PO choose
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`to depose him. Petitioners served Dr. Bennett’s declaration by the designated time
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`(Ex1059), and PO deposed him on Nov. 4 (Pap. 66).
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`5 As a point of comparison, PO also served a declaration of its hired expert the
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`same day (Friday, November 4), provided a date for a deposition two business days
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`later, and demanded Petitioners respond by Saturday, November 5. Ex1054 at 1-3.
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`Petitioners responded by Sunday morning, November 6. Id. at 1.
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`3
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`supporting the dates and availability of prior art references available for deposition
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`by video. Pap. 16 at 6-7. The Board reasoned that “it would be unnecessarily
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`costly and burdensome to Petitioner to make the Australia declarants available for
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`live deposition in the United States to be cross-examined regarding their three-page
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`declarations.” Id. at 6. As the Board noted, the Board’s rules and the Federal
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`Rules of Civil Procedure “specifically provide for alternatives to live deposition,
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`such as deposition by video or telephone.” Id. (citing §42.53(b)(3) and Fed. R.
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`Civ. P. 30(b)(4), and noting “these rules are construed ‘to secure just, speedy, and
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`inexpensive resolution of every proceeding’” (emphasis original)). The Board
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`further determined that “the perceived advantage in having a live deposition [does
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`not] justif[y] the expense to Petitioner, or the inconvenience to the third-party
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`witnesses, with requiring them to travel” to the U.S. Pap. 16 at 6.
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`Dr. Diot is similarly a third-party foreign declarant with testimony “limited
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`in scope” to exhibits’ authenticity and availability. See Pap. 16 at 7. Because his
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`situation is nearly identical to the declarants subject to the Board’s prior order, and
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`given the compressed schedule, Petitioners “proposed a reasonable, inexpensive
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`solution” (id.) by offering Dr. Diot (like the prior declarants) for video deposition
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`prior to submitting his declaration so the parties could reach agreement. See
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`§42.53(b)(3) (testimony outside U.S. permitted “upon agreement of the parties”);
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`Valeo v. Magna, IPR2014-01208, Pap. 24 at 5 (“encourag[ing] … parties to…
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`4
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`reach agreement … (e.g., videoconference)” for deposition).
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`Case IPR2015-01964
`Patent No. 6,829,634
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`On the morning of November 7, the Board scheduled a call for 3:30 p.m. ET
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`that day in response to the parties’ November 4 request for a call regarding
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`different issues. PO waited until nearly three hours after that Board call to email
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`Petitioners indicating for the first time that PO (1) wanted to take Dr. Diot’s
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`deposition, (2) would not agree to deposition by video, and instead (3) wanted
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`dates when Dr. Diot “is available in the United States for his deposition this week.”
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`Ex1060 at 1. Unlike Petitioners, who were aware of no existing dispute, PO could
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`have raised this issue with the Board on the November 7 call, but did not.
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`The parties exchanged additional correspondence that evening and met and
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`conferred the following day, November 8. Ex1061 at 1-2. That same day
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`Petitioners followed up with PO regarding the content of a Board request (as
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`required by Pap. 21 at 5) on different issues and asked PO to include “as Issue 3”
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`the issue of Dr. Diot’s deposition “[t]o the extent Patent Owner wishes to raise the
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`issue” with the Board. Ex1062 at 10-11. On November 10, having no response
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`from PO, Petitioners followed up again. Id. at 10. PO then responded that it
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`wished to discuss the Board request. Id. at 9. Petitioners offered times to meet on
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`November 10 and 11, but due to scheduling conflicts the parties were unable to
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`meet until Monday, November 14. Id. at 8-9.
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`To help accelerate the process, Petitioners on November 11 sent a proposed
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`5
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`Board request to PO, including language for “Issue 3” regarding Dr. Diot’s
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`Case IPR2015-01964
`Patent No. 6,829,634
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`deposition: “Petitioners respectfully seek the Board’s guidance concerning the
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`potential deposition of a third party declarant resident in France, and the taking of
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`this deposition via videoconference. The declaration at issue was served as
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`supplemental evidence and concerns issues of public accessibility and authenticity
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`of prior art.” Ex1063 at 1 (PO deleted the second sentence in responding to
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`Petitioners’ email on November 14 (see Ex1064 at 2-4)). PO objected to this
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`statement of Petitioners’ position and ultimately would only agree to the language
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`as submitted in the email to the Board, which Petitioners then transmitted the
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`evening of November 15. Ex1064 at 1-4; Ex1065 at 1-3; Ex1066 at 1-3; Ex1062 at
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`1-2.
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`II. Order Misapprehended Circumstances Surrounding Petitioners’
`Request
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`The Order denied Petitioners’ request for a call concerning Dr. Diot’s
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`deposition based on two misapprehended facts assumed in the Order without
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`permitting a showing of the actual underlying facts. See Pap. 21 at 5 (limiting
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`emails requesting conference calls to “short statement” agreed to by both parties).
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`First, the Order misapprehended that “Petitioner should have been on notice
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`as to any ... issue [regarding Dr. Diot’s deposition] from Patent Owner’s previously
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`filed objections on either April 7, 2016 or October 21, 2016.” Order at 3. But, as
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`indicated above, PO did not request Dr. Diot’s deposition, reject the proposed
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`video deposition, and demand a deposition live in the U.S. (cf. Pap. 16 at 6-7) until
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`Patent No. 6,829,634
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`November 7, 2016, after his declaration was timely served on November 4 as
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`supplemental evidence in response to PO’s October 21 Objections. Ex1056 ¶6.
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`Second, based on the misapprehension that Petitioners had been on notice of
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`the issue regarding Dr. Diot’s deposition since at least October 21, the Order
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`further assumed Petitioners could have raised the issue in the parties’ November 7
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`call with the Board. Order at 3. However, as indicated above, PO waited until after
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`the Board’s November 7 call to request Dr. Diot’s deposition and refuse deposition
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`by video despite the Board’s prior Order (Pap. 16). Ex1060 at 1; Ex1056 ¶6.
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`Although PO could have raised this during the November 7 call, Petitioners could
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`not, as they were not yet aware of a dispute regarding Dr. Diot’s deposition. Once
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`Petitioners learned PO wanted to take the deposition and refused to do so by video,
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`Petitioners diligently met and conferred, negotiated the text of the Board request
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`with PO as required (Pap. 21 at 5), and brought the matter to the Board as soon as
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`practicable. See Ex1061 at 2; Ex1064 at 1-4; Ex1065 at 1-3; Ex1066 at 1-3;
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`Ex1062 at 1-2, 8-11.
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`III. Conclusion
`Because the Order misapprehended the facts forming the basis of its denial
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`of a conference call and denial of “the requested deposition,” Petitioners
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`respectfully request that the Board reconsider this portion of the Order and grant
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`7
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`Petitioners’ request for a conference call regarding this issue and/or—to the extent
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`Case IPR2015-01964
`Patent No. 6,829,634
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`PO maintains it wishes to depose him—authorize Petitioners to make Dr. Diot
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`available for deposition by video.
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`Respectfully submitted, by: /J. Steven Baughman/
`J. Steven Baughman (lead counsel)
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`November 21, 2016
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing PETITIONERS’
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`CONSOLIDATED REQUEST FOR REHEARING was served on November 21,
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`2016 in its entirety by causing the aforementioned document to be electronically
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`mailed, pursuant to the parties’ agreement, to the following attorneys of record:
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`James Hannah
`Reg. No. 56,369
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: 650-752-1712
`Fax: 650-752-1812
`jhannah@kramerlevin.com
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`Michael Lee
`Reg. No. 63,941
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Phone: 650-752-1716
`Fax: 650-752-1812
`mhlee@kramerlevin.com
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`Shannon Hedvat
`Reg. No. 68,417
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: 212-715-9185
`Fax: 212-715-8000
`shedvat@kramerlevin.com
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`Jeffrey Price
`Reg. No. 69,141
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: 212-715-7502
`Fax: 212-715-8000
`jprice@kramerlevin.com
`svdocketing@kramerlevin.com
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`Counsel for Patent Owner Acceleration Bay
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`Dated:
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`November 21, 2016
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`/Bridget McAuliffe/
`Bridget McAuliffe
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`ROPES & GRAY LLP