Case IPR2015-01970
`Patent No. 6,701,344
`
`
`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.,
`Petitioners,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-019701
`Patent No. 6,701,344 B1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`
`PETITIONERS’ CONSOLIDATED REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`1 Bungie, Inc., who filed Petition IPR2016-00933, has been joined as a petitioner in
`
`this proceeding.
`
`
`
`
`Patent No. 6,701,344
`
`
`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.,
`Petitioners,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-019701
`Patent No. 6,701,344 B1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`
`PETITIONERS’ CONSOLIDATED REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
`
`
`
`1 Bungie, Inc., who filed Petition IPR2016-00933, has been joined as a petitioner in
`
`this proceeding.
`
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`Petitioners respectfully request rehearing, pursuant to §42.71(d),2 of the
`
`
`
`portions of the Board’s November 18, 2016 Order–Conduct of the Proceeding
`
`(Pap. 80, “Order”) (1) denying Petitioners’ November 15, 2016 request for a
`
`conference call to seek the Board’s guidance concerning the deposition of a third
`
`party declarant resident in France, and the taking of this deposition via
`
`videoconference, and (2) denying “the requested deposition of a foreign, third-
`
`party witness.” Order at 4. Petitioners respectfully submit that the Order was
`
`based on factual assumptions misapprehending the circumstances surrounding
`
`Petitioners’ request, and in particular on two misapprehended facts addressed
`
`below. Accordingly, Petitioners respectfully seek rehearing.3
`
`2 Unless otherwise noted, citations are to 37 C.F.R., and all emphases added.
`
`3 Although not a decision on a “petition or motion” (see title of §42.71), it is Peti-
`
`tioners’ understanding that the Order is the proper subject of a motion for rehear-
`
`ing, e.g., Volusion v. Versata, CBM2013-00018, Pap. 42 at 4 (noting failure to seek
`
`rehearing of Board order denying request—made through conference call—to file
`
`motion to strike); Agilysys v. Ameranth, CBM2014-00016, Pap. 14 at 2 (noting
`
`failure to seek rehearing of Board order—stemming from conference call—
`
`requiring paper re-designating lead and backup counsel), and that, in any event, the
`
`Board may exercise its discretion under §42.5(a) to consider Petitioners’ Request
`
`under §42.71(d)’s requirements. See IBM v. Intellectual Ventures II, IPR2015-
`
`1
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`
`I.
`
`Timeline of Events
`
`In accordance with §42.71(d)(1), Petitioners timely file this Request within
`
`14 days of the Board’s non-final November 18 Order. Petitioners would have
`
`provided the following timeline of relevant events on the requested call with the
`
`Board. Cf. Pap. 20 at 5 (limiting emails requesting conference calls to “short
`
`statement” agreed to by both parties). On October 21, 2016, Patent Owner (“PO”)
`
`filed Objections to Evidence in Petitioner’s Reply and Petitioner’s Opposition to
`
`Patent Owner’s Motion to Amend. Pap. 56. Under §42.64(b)(2), Petitioners’
`
`deadline to serve supplemental evidence in response to PO’s Objections was
`
`November 4, and the Due Date 4 deadline for filing motions to exclude and
`
`observations on cross-examination was the following November 10. 4 Pap. 59 at 1.
`
`01323, Pap. 35 at 2 n.1 (exercising discretion to consider request for rehearing of
`
`Board order denying request—made through request for a conference call—for
`
`authorization to file a paper).
`
`4 As reflected in the correspondence attached as Exhibit 1058, in view of the
`
`limited availability of a different supplemental evidence declarant (Petitioner’s
`
`retained expert Dr. Bennett) the following week and as a courtesy to PO,
`
`Petitioners had also provided PO on Nov. 1 with advanced notice that they planned
`
`to serve an additional declaration by Dr. Bennett the next day by 10a.m. PT/1p.m.
`
`ET (i.e., two days before Petitioners’ Nov. 4 deadline for serving supplementary
`
`2
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`On November 4, Petitioners timely served supplemental evidence, including
`
`the Declaration of Christophe Diot (Ex1052)—a 4-page declaration (plus
`
`attachments) limited to fact testimony regarding the authenticity and availability of
`
`the prior art Gautier reference (Ex1030), as well as the authenticity of other
`
`references. Ex1056 ¶4. Petitioners were not certain until the night before
`
`(November 3) whether Dr. Diot, a third-party resident of France not under their
`
`control, would actually provide a declaration. Id. ¶3. Petitioners proactively
`
`provided PO, at the time of service, two dates/times (November 7 and 8 around 3
`
`p.m. ET) on which Dr. Diot was available for deposition by video should PO
`
`choose to depose him—even though Petitioners had not yet offered his declaration
`
`in evidence.5 Ex1055; Ex1056 ¶4.
`
`In a similar circumstance earlier in this proceeding, the Board permitted
`
`Petitioners to make third-party foreign declarants whose testimony is limited to
`
`evidence) and proactively offered him for deposition on Nov. 4 should PO choose
`
`to depose him. Petitioners served Dr. Bennett’s declaration by the designated time
`
`(Ex1059), and PO deposed him on Nov. 4 (Pap. 63).
`
`5 As a point of comparison, PO also served a declaration of its hired expert the
`
`same day (Friday, November 4), provided a date for a deposition two business days
`
`later, and demanded Petitioners respond by Saturday, November 5. Ex1054 at 1-3.
`
`Petitioners responded by Sunday morning, November 6. Id. at 1.
`
`3
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`supporting the dates and availability of prior art references available for deposition
`
`by video. Pap. 15 at 6-7. The Board reasoned that “it would be unnecessarily
`
`costly and burdensome to Petitioner to make the Australia declarants available for
`
`live deposition in the United States to be cross-examined regarding their three-page
`
`declarations.” Id. at 6. As the Board noted, the Board’s rules and the Federal
`
`Rules of Civil Procedure “specifically provide for alternatives to live deposition,
`
`such as deposition by video or telephone.” Id. (citing §42.53(b)(3) and Fed. R.
`
`Civ. P. 30(b)(4), and noting “these rules are construed ‘to secure just, speedy, and
`
`inexpensive resolution of every proceeding’” (emphasis original)). The Board
`
`further determined that “the perceived advantage in having a live deposition [does
`
`not] justif[y] the expense to Petitioner, or the inconvenience to the third-party
`
`witnesses, with requiring them to travel” to the U.S. Pap. 15 at 6.
`
`Dr. Diot is similarly a third-party foreign declarant with testimony “limited
`
`in scope” to exhibits’ authenticity and availability. See Pap. 15 at 7. Because his
`
`situation is nearly identical to the declarants subject to the Board’s prior order, and
`
`given the compressed schedule, Petitioners “proposed a reasonable, inexpensive
`
`solution” (id.) by offering Dr. Diot (like the prior declarants) for video deposition
`
`prior to submitting his declaration so the parties could reach agreement. See
`
`§42.53(b)(3) (testimony outside U.S. permitted “upon agreement of the parties”);
`
`Valeo v. Magna, IPR2014-01208, Pap. 24 at 5 (“encourag[ing] … parties to …
`
`4
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`
`reach agreement … (e.g., videoconference)” for deposition).
`
`On the morning of November 7, the Board scheduled a call for 3:30 p.m. ET
`
`that day in response to the parties’ November 4 request for a call regarding
`
`different issues. PO waited until nearly three hours after that Board call to email
`
`Petitioners indicating for the first time that PO (1) wanted to take Dr. Diot’s
`
`deposition, (2) would not agree to deposition by video, and instead (3) wanted
`
`dates when Dr. Diot “is available in the United States for his deposition this week.”
`
`Ex1060 at 1. Unlike Petitioners, who were aware of no existing dispute, PO could
`
`have raised this issue with the Board on the November 7 call, but did not.
`
`The parties exchanged additional correspondence that evening and met and
`
`conferred the following day, November 8. Ex1061 at 1-2. That same day
`
`Petitioners followed up with PO regarding the content of a Board request (as
`
`required by Pap. 20 at 5) on different issues and asked PO to include “as Issue 3”
`
`the issue of Dr. Diot’s deposition “[t]o the extent Patent Owner wishes to raise the
`
`issue” with the Board. Ex1062 at 10-11. On November 10, having no response
`
`from PO, Petitioners followed up again. Id. at 10. PO then responded that it
`
`wished to discuss the Board request. Id. at 9. Petitioners offered times to meet on
`
`November 10 and 11, but due to scheduling conflicts the parties were unable to
`
`meet until Monday, November 14. Id. at 8-9.
`
`To help accelerate the process, Petitioners on November 11 sent a proposed
`
`5
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`Board request to PO, including language for “Issue 3” regarding Dr. Diot’s
`
`deposition: “Petitioners respectfully seek the Board’s guidance concerning the
`
`potential deposition of a third party declarant resident in France, and the taking of
`
`this deposition via videoconference. The declaration at issue was served as
`
`supplemental evidence and concerns issues of public accessibility and authenticity
`
`of prior art.” Ex1063 at 1 (PO deleted the second sentence in responding to
`
`Petitioners’ email on November 14 (see Ex1064 at 2-4)). PO objected to this
`
`statement of Petitioners’ position and ultimately would only agree to the language
`
`as submitted in the email to the Board, which Petitioners then transmitted the
`
`evening of November 15. Ex1064 at 1-4; Ex1065 at 1-3; Ex1066 at 1-3; Ex1062 at
`
`1-2.
`
`II. Order Misapprehended Circumstances Surrounding Petitioners’
`Request
`
`The Order denied Petitioners’ request for a call concerning Dr. Diot’s
`
`deposition based on two misapprehended facts assumed in the Order without
`
`permitting a showing of the actual underlying facts. See Pap. 20 at 5 (limiting
`
`emails requesting conference calls to “short statement” agreed to by both parties).
`
`First, the Order misapprehended that “Petitioner should have been on notice
`
`as to any ... issue [regarding Dr. Diot’s deposition] from Patent Owner’s previously
`
`filed objections on either April 7, 2016 or October 21, 2016.” Order at 3. But, as
`
`indicated above, PO did not request Dr. Diot’s deposition, reject the proposed
`
`6
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`video deposition, and demand a deposition live in the U.S. (cf. Pap. 15 at 6-7) until
`
`November 7, 2016, after his declaration was timely served on November 4 as
`
`supplemental evidence in response to PO’s October 21 Objections. Ex1056 ¶6.
`
`Second, based on the misapprehension that Petitioners had been on notice of
`
`the issue regarding Dr. Diot’s deposition since at least October 21, the Order
`
`further assumed Petitioners could have raised the issue in the parties’ November 7
`
`call with the Board. Order at 3. However, as indicated above, PO waited until after
`
`the Board’s November 7 call to request Dr. Diot’s deposition and refuse deposition
`
`by video despite the Board’s prior Order (Pap. 15). Ex1060 at 1; Ex1056 ¶6.
`
`Although PO could have raised this during the November 7 call, Petitioners could
`
`not, as they were not yet aware of a dispute regarding Dr. Diot’s deposition. Once
`
`Petitioners learned PO wanted to take the deposition and refused to do so by video,
`
`Petitioners diligently met and conferred, negotiated the text of the Board request
`
`with PO as required (Pap. 20 at 5), and brought the matter to the Board as soon as
`
`practicable. See Ex1061 at 2; Ex1064 at 1-4; Ex1065 at 1-3; Ex1066 at 1-3;
`
`Ex1062 at 1-2, 8-11.
`
`III. Conclusion
`Because the Order misapprehended the facts forming the basis of its denial
`
`of a conference call and denial of “the requested deposition,” Petitioners
`
`respectfully request that the Board reconsider this portion of the Order and grant
`
`7
`
`
`
`
`Case IPR2015-01970
`Patent No. 6,701,344
`Petitioners’ request for a conference call regarding this issue and/or—to the extent
`
`PO maintains it wishes to depose him—authorize Petitioners to make Dr. Diot
`
`available for deposition by video.
`
`Respectfully submitted, by: /J. Steven Baughman/
`J. Steven Baughman (lead counsel)
`
`
`
`
`November 21, 2016
`
`
`8
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONERS’
`
`CONSOLIDATED REQUEST FOR REHEARING was served on November 21,
`
`2016 in its entirety by causing the aforementioned document to be electronically
`
`mailed, pursuant to the parties’ agreement, to the following attorneys of record:
`
`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
`
`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
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`Counsel for Patent Owner Acceleration Bay
`
`
`
`
`
`
`
`
`
`
`Dated:
`
`November 21, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Bridget McAuliffe/
`Bridget McAuliffe
`
`ROPES & GRAY LLP
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
