Paper 68
`Trials@uspto.gov
`571-272-7822 Entered: November 8, 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., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)12
`Cases IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`Cases IPR2015-01970, IPR2015-01972 (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 applies to each of the listed cases. We exercise our discretion
`to issue one Order to be entered in each case. The parties, however, are not
`authorized to use this caption for any subsequent papers.
`2 Bungie, Inc., who filed Petitions in IPR2016-00933, IPR2016-00934,
`IPR2016-00935, IPR2016-00936, IPR2016-00963, and IPR2016-00964, has
`been joined as a Petitioner in these proceedings.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: November 8, 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., ROCKSTAR GAMES, INC., and
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)12
`Cases IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`Cases IPR2015-01970, IPR2015-01972 (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 applies to each of the listed cases. We exercise our discretion
`to issue one Order to be entered in each case. The parties, however, are not
`authorized to use this caption for any subsequent papers.
`2 Bungie, Inc., who filed Petitions in IPR2016-00933, IPR2016-00934,
`IPR2016-00935, IPR2016-00936, IPR2016-00963, and IPR2016-00964, has
`been joined as a Petitioner in these proceedings.
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On November 8, 2016, a conference call was held for these six
`proceedings. The following individuals were present on the call:
`Mr. Baughman and Mr. Davis, counsel for Petitioners Activision Blizzard,
`Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2K Sports,
`Inc., and Rockstar Games, Inc.; Mr. Brown, counsel for Petitioner Bungie,
`Inc. (collectively, “Petitioner”); Mr. Hannah and Ms. Nguyen, counsel for
`Patent Owner Acceleration Bay, LLC; and Judges Medley, Pettigrew, and
`Fink.
`
`The parties requested the call to address three separate issues. First,
`Patent Owner requested permission to submit a surreply in IPR2015-01951,
`IPR2015-01964, and IPR2015-01970, responsive to arguments in
`Petitioner’s Reply in those cases regarding Patent Owner’s attempt to
`antedate the Lin reference. Second, Petitioner requested permission to
`replace certain papers and exhibits in all six proceedings. Third, Patent
`Owner requested permission to replace one page of its Motion to Amend
`filed in IPR2015-01964 and IPR2015-01996. For the reasons stated below,
`the first two requests are granted and the third is denied.
`
`A. Patent Owner’s Request for Authorization to File a Surreply
`During the conference call, Patent Owner stated that it bears the
`burden of production for establishing that the date of its claimed invention is
`prior to the effective date of the Lin reference, which is asserted as prior art
`2
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`in IPR2015-01951, IPR2015-01964, and IPR2015-01970. Patent Owner
`argued that the Board has routinely granted patent owners authorization to
`file a surreply in this situation, i.e., when the patent owner is attempting to
`antedate a reference. Among other cases, Patent Owner cited LG
`Electronics, Inc. v. ATI Technologies ULC, Case IPR2015-00325 (PTAB
`Dec. 15, 2015) (Paper 37); Sure-Fire Electrical Corp. v. Yongjiang Yin,
`Case IPR2014-01448 (PTAB Dec. 10, 2015) (Paper 46); HTC Corp. v. NFC
`Technology, LLC, Case IPR2014-01198 (PTAB Nov. 19, 2015) (Paper 45);
`and ABB, Inc. v. Roy-G-Biv Corp., Case IPR2013-00063 (Jan. 27, 2014)
`(Paper 51). Patent Owner also cited a case in which the United States Court
`of Appeals for the Federal Circuit held that the Board may entertain a patent
`owner’s request to file a surreply responding to arguments raised in the
`petitioner’s reply. See Belden Inc. v. Berk-Tek, LLC, 805 F.3d 1064, 1079
`(Fed. Cir. 2015).
`Petitioner responded that it retains the burden of persuasion on the
`ultimate issue of unpatentability. Although the Board in other proceedings
`has authorized surreplies addressing the antedating issue, Petitioner argued
`that a surreply is not warranted in every case. Petitioner asserted that Patent
`Owner has been raising the antedating issue in these proceedings since
`before institution and had ample opportunity to brief the issue in its Patent
`Owner Responses. Finally, Petitioner noted that these proceedings are in
`their final stages, and additional briefing at this point is unwarranted.
`We have considered both parties’ arguments, and, based on the
`circumstances presented here, we are persuaded it is appropriate to allow
`Patent Owner to file a short surreply to Petitioner’s Reply. See C.F.R.
`
`3
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`§ 42.5(a). The surreply shall be limited to three (3) pages and shall be filed
`no later than November 14, 2016. The surreply shall respond only to the
`arguments in Petitioner’s Reply addressing Patent Owner’s arguments and
`citations to supporting evidence in the Patent Owner Response seeking to
`antedate Lin. Patent Owner may not introduce new evidence or testimony
`with its surreply. Petitioner is not authorized to file a responsive paper.
`
`B. Petitioner’s Request to Replace Certain Papers and Exhibits
`Petitioner’s request is twofold. First, Petitioner requests authorization
`to replace Exhibit 1034 in IPR2015-01951, IPR2015-01964, and IPR2015-
`01970, and Exhibit 1134 in IPR2015-01953, IPR2015-01972, and IPR2015-
`01996, each of which is a declaration by Matthew Shapiro attesting that
`various exhibits submitted by Petitioner are true and correct copies.
`Petitioner asserts that paragraph 8 in each declaration mistakenly refers to
`Exhibit 1030 as the copy of a document referred to in another exhibit
`(Exhibit 1031/1131), when in fact Exhibit 1049/1149 is the correct copy of
`the document referred to in Exhibit 1031/1131. Second, Petitioner requests
`authorization to replace page 5 of its Reply in IPR2015-1951 (Paper 54) and
`page 4 of its Reply in IPR2015-01970 (Paper 53) to replace a cite to
`paragraphs 26–28 of Exhibit 1026 with a cite to paragraphs 31–33.
`Petitioner asserts that a similar portion of its Reply in IPR2015-01964
`correctly cites paragraphs 31–33 of Exhibit 1026.
`Petitioner contends that the errors it wishes to correct are
`typographical errors and that there will be no prejudice to Patent Owner if
`the corrections are permitted. Patent Owner does not dispute that the errors
`are typographical in nature, but opposes Petitioner’s request because
`4
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`Petitioner has not agreed to Patent Owner’s request to change its Motion to
`Amend in IPR2015-01964 and IPR2015-01996. We address Patent Owner’s
`request in the next section.
`Regarding Petitioner’s request, we have reviewed the record and
`considered the parties’ arguments, and we are persuaded the asserted errors
`are typographical. Accordingly, we authorize Petitioner to file a
`replacement for Exhibit 1034 in each of IPR2015-01951, IPR2015-01964,
`and IPR2015-01970, and a replacement for Exhibit 1134 in each of
`IPR2015-01953, IPR2015-01972, and IPR2015-01996. The replacement
`exhibits shall retain their original exhibit numbers and shall correct only the
`typographical errors addressed above. With respect to Petitioner’s request to
`replace one page in its Reply in each of IPR2015-01951 and IPR2015-
`01970, we authorize Petitioner to file, as a paper in each proceeding, an
`errata sheet identifying the correction to be made, including the paper
`number and page number.
`
`C. Patent Owner’s Request to Replace a Page in its Motion to Amend
`Patent Owner requests authorization to replace page 29 of its Motion
`to Amend (Paper 31) in each of IPR2015-01964 and IPR2015-01996 to
`make two changes to proposed substitute claim 27—changing “supports
`provides” to “provides,” and removing “which is a part of the overlay
`network.” Patent Owner argues that the asserted errors are typographical
`and there would be no prejudice to Petitioner if the corrections are allowed.
`Patent Owner represents that it discovered the errors approximately one
`week ago.
`
`5
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`In response, Petitioner argues that Patent Owner proposes to make
`substantive changes to the language of a proposed substitute claim.
`Petitioner further contends that it would suffer prejudice if the changes are
`permitted at this stage of the proceedings. In Petitioner’s view, Patent
`Owner essentially is requesting authorization to file a second motion to
`amend, which only may be authorized for “good cause.” 37 C.F.R.
`§ 42.121(c); see Avaya Inc. v. Network-1 Sec. Solutions, Inc., Case IPR2013-
`00071 (PTAB Oct. 17, 2013) (Paper 54).
`Under the circumstances, we are not persuaded that Patent Owner
`should be permitted to make the requested change. We agree with Petitioner
`that the proposed change is substantive, as it directly involves claim
`language that Patent Owner’s proposed substitute claim would add to an
`existing claim. Thus, we agree that Patent Owner’s request is essentially
`one for authorization to file a second motion to amend. Among the factors
`the Board considers in determining whether to authorize a second motion to
`amend are the time remaining for trial and whether a petitioner has
`submitted supplemental information after the time period set for filing a
`motion to amend. See Avaya, slip op. at 3 (citing Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012)). In these
`proceedings, Patent Owner apparently noticed the alleged error only after
`reviewing Petitioner’s Opposition to Patent Owner’s Motion to Amend in
`each case, approximately two weeks after the Oppositions were filed. At
`this late date, after all substantive papers in these proceedings have been
`filed, and the oral hearing is only a month away, Patent Owner has not
`shown that good cause exists for us to grant its request.
`
`6
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`
`
`ORDER
`
`
`
`It is:
` ORDERED that Patent Owner is authorized to file a surreply in each
`of IPR2015-01951, IPR2015-01964, and IPR2015-01970, limited to three
`(3) pages and responsive only to arguments in Petitioner’s Reply addressing
`Patent Owner’s attempt to antedate the Lin reference, to be filed no later
`than November 14, 2016;
` FURTHER ORDERED that Petitioner is authorized to file a
`replacement for Exhibit 1034 in each of IPR2015-01951, IPR2015-01964,
`and IPR2015-01970, and a replacement for Exhibit 1134 in each of
`IPR2015-01953, IPR2015-01972, and IPR2015-01996, correcting only the
`typographical error discussed herein;
` FURTHER ORDERED that Petitioner is authorized to file as a paper
`in each of IPR2015-01951 and IPR2015-01970 an errata sheet identifying
`the correction to be made to its Reply (Paper 54 and Paper 53, respectively)
`as discussed herein;
` FURTHER ORDERED that Patent Owner’s request to replace pages
`in its Motions to Amend in IPR2015-01964 and IPR2015-01996 is denied.
`
`7
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`
`FOR PETITIONER:
`J. Steven Baughman
`Andrew Thomases
`James L. Davis, Jr.
`Daniel W. Richards
`Matthew R. Shapiro
`Joseph E. Van Tassel
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`andrew.thomases@ropesgray.com
`james.l.davis@ropesgray.com
`daniel.w.richards@ropesgray.com
`matthew.shapiro@ropesgray.com
`joseph.vantassel@ropesgray.com
`
`Michael T. Rosato
`Andrew S. Brown
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`
`Michael Tomasulo
`Michael Murray
`Andrew Sommer
`WINSTON & STRAWN LLP
`mtomasulo@winston.com
`mmurray@winston.com
`asommer@winston.com
`
`
`8
`
`
`
`IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`
`FOR PATENT OWNER:
`James Hannah
`Michael Lee
`Shannon Hedvat
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`
`
`9
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