Case IPR2015-01972
`Patent No. 6,701,344
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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 IPR2015-019721
`Patent No. 6,701,344 B1
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`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and WIL-
`LIAM M. FINK, Administrative Patent Judges.
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`PETITIONERS’ CONSOLIDATED REPLY IN SUPPORT OF THEIR
`MOTION TO EXCLUDE
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`1 Bungie, Inc., who filed Petition IPR2016-00934, has been joined as a petitioner in
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`this proceeding.
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`PROTECTIVE ORDER MATERIAL
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`Patent No. 6,701,344
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`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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`
`
`
`
`
`
`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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`
`
`
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`Case IPR2015-019721
`Patent No. 6,701,344 B1
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`
`
`
`Before the Honorable SALLY C. MEDLEY, LYNNE E. PETTIGREW, and WIL-
`LIAM M. FINK, Administrative Patent Judges.
`
`
`PETITIONERS’ CONSOLIDATED REPLY IN SUPPORT OF THEIR
`MOTION TO EXCLUDE
`
`
`
`
`
`1 Bungie, Inc., who filed Petition IPR2016-00934, has been joined as a petitioner in
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`this proceeding.
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`
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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
`Unable to overcome Petitioners’ showing that paras. 5-8 and 10 of Ex2026
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`(Abarbanel Declaration) are inadmissible, Patent Owner (“PO”) instead improperly
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`uses its Opposition (Pap.85, “Opp.”) to Petitioners’ Motion to Exclude (Pap.77,
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`“Mot.”) as a back door attempt to supplement the record at the eleventh hour with
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`six additional exhibits (Exs. 2112-17) that are wholly irrelevant to the admissibil-
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`ity of the challenged paragraphs. These improper exhibits—which, in any event,
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`do not cure the evidentiary issues in Ex2026—should be disregarded, and Petition-
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`ers’ Motion granted.
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`I.
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`PO’s Submission of Exhibits 2112-17 Is Improper
`Supplemental evidence can be filed in response to a motion to exclude “sole-
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`ly to support admissibility of the originally filed evidence and to defeat a motion to
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`exclude that evidence,” but not “to support any argument on the merits.” Handi
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`Quilter v. Bernina, IPR2013-00364, Pap.30, 2; §42.64(b)(2).2 “Supplemental
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`information, on the other hand, is evidence a party intends to [use to] support an
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`argument on the merits.” Handi, 2-3 (emph. orig.). The proper procedure for filing
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`supplemental information more than one month after institution is by requesting
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`Board authorization to file a motion to submit that information. §42.123(b).
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`PO improperly purports to submit Exs. 2112-17 as supplemental evidence
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`even though they are clearly not directed to supporting the admissibility of the
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`2 Unless otherwise noted, citations are to 37 C.F.R., and all emphases added.
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`1
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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
`challenged paragraphs. Handi, 2. PO’s claim that these exhibits “confirm” the
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`reliability of Ex2026 and “reveal[] [its] relevance … [to] the conception and reduc-
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`tion to practice of the ’344 Patent” (Opp. 5), is demonstrably false. Indeed, none
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`of these exhibits even mentions Mr. Abarbanel or his declaration. Rather, the
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`exhibits appear to relate to a simulation run by one of PO’s experts (Ex2112),
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`obviousness analyses from a declarant never previously presented as an expert
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`(Ex2113) and another of PO’s expert (Ex2114), and purported authentication of
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`other exhibits in this proceeding (Exs. 2114-17).
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`PO’s submission of Exs. 2112-17 at this late stage is a blatant attempt to cir-
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`cumvent the Board’s rules governing the filing of supplemental information. PO
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`could have, but failed to: (1) file Exs. 2112-17 with its Patent Owner Response, or
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`(2) properly request the Board’s authorization to file supplemental information.
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`Thus, any “prejudice” to PO (Opp. 5) is of PO’s own making, and PO should not
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`be allowed to belatedly offer these exhibits into evidence in the context of a motion
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`to exclude as an end-run around §42.123(b). Nor should PO be authorized to file
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`supplemental information at this late stage with oral hearing just two weeks away.3
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`3 While PO agrees the Board is well-positioned to consider the complete record
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`and assign the appropriate weight to evidence (Mot. 2; Opp. 2), that does not
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`extend to evidence that is not part of the record—including PO’s served supple-
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`mental exhibits, i.e., Exs. 2112-17—as PO suggests (Opp. 4-5). Supplemental
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`2
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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
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`Pap.84, 2. Exs. 2112-17 should therefore be disregarded.
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`II. Exhibit 2026 ¶¶ 5-8, 10 Are Inadmissible
`PO does not dispute that the testimony in paragraphs 5-8, 10 of Ex2026 “de-
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`scrib[es]” Abarbanel’s out-of-court “discussions” with the named inventors (Opp.
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`2) or that it is being offered for the truth of the matter asserted—PO’s argument
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`that various features were implemented in SWAN. Mot. 5. Thus, these paragraphs
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`fall squarely within the hearsay rule (FRE 801, 802)4 and PO’s conclusory asser-
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`tion that Petitioners’ objections go to weight rather than admissibility (Opp. 2)
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`does not render them admissible—FRE 403 is not an exception to FRE 801, 802.
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`Moreover, contrary to PO (Opp. 3), these statements do not fall under the re-
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`sidual hearsay exception (FRE 807), which is “reserved for exceptional cases,” at
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`least because they are not “more probative” on the issue of what features were
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`implemented in SWAN “than any other evidence that the proponent can obtain
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`through reasonable efforts.” CaptionCall v. Ultratec, IPR2015-00637, Pap.98, 16;
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`evidence is not part of the record until submitted to defeat a motion to exclude, and
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`its use then is limited solely to the admissibility of the originally filed evidence.
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`Handi, 2.
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`4 Cf. REG Synthetic Fuels v. Neste Oil Oyj, No. 15-1773, 2016 WL 6595978, at *7
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`(Fed. Cir. Nov. 8, 2016) (inventor email offered for non-hearsay purpose of show-
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`ing fact of communication of conception, not truth of communication’s substance).
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`3
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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
`FRE 807(a)(3). Indeed, as PO admits, PO submitted declarations of the named
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`inventors and other “documentary evidence” on that issue. Opp. 2-3, 5. And while
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`PO is correct that to establish an actual reduction to practice the named inventors’
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`testimonies must be corroborated by independent evidence (Opp. 3), Abarbanel’s
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`testimony merely repeats the inventors’ statements and thus cannot corroborate
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`because “the truth [of the information contained in these statements] depends upon
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`information received from the inventor[s],” and do not “guarantee[] … trustwor-
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`thiness.” Thurston v. Wulff, 164 F.2d 612, 617 (CCPA 1947); Medichem v. Ro-
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`labo, 437 F.3d 1157, 1170 (Fed. Cir. 2006) (“The requirement of independent
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`knowledge remains key to the corroboration inquiry.”); FRE 807(a)(1).
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`PO’s assertion that the challenged paragraphs are not hearsay because decla-
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`rations are not out-of-court statements (Opp. 2) is inapposite. Petitioners are not
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`asserting the Abarbanel declaration is an out-of-court statement in toto, but rather
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`that there is inadmissible hearsay within the declaration—namely, Abarbanel’s
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`attempted testimony about the named inventors’ out-of-court statements regarding
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`various features that were allegedly implemented in SWAN. See Mot. 5. Similar-
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`ly, though Abarbanel may have personal knowledge of his “discussions” with and
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`“expla[nations]” by the named inventors, he lacks personal knowledge as to
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`whether those features that the named inventors told him were implemented in
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`SWAN were actually implemented. FRE 602. Moreover, while Mr. Abarbanel
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`4
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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
`testifies that his knowledge regarding what features were allegedly implemented in
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`SWAN is based on “observations” and “discussions” with the named inventors
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`(Opp. 2), he does not specify which portions of those paragraphs are based on his
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`“observations,” and which portions are based on “discussions” with the named
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`inventors. Ex2026 ¶¶ 5-8, 10. Because it is not possible to determine which
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`portions are based on his “observations” (and therefore non-hearsay), the entirety
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`of those statements must be excluded. CaptionCall, 12-13, 17 (excluding testimo-
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`ny based on hearsay).
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`PO’s remaining arguments are similarly without merit. Contrary to PO (Opp.
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`4-5), and as PO’s own cited case shows, the challenged paragraphs’ relevance to a
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`substantive issue has no bearing on whether that evidence is inadmissible on other
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`evidentiary grounds, including hearsay. Toyota Motor v. Am. Vehicular Sci.,
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`IPR2013-00417, Pap.78, 9, 13 (excluding exhibits as hearsay despite relevance to
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`substantive issue). And, contrary to PO (Opp. 5-6), it is not Petitioners’ responsi-
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`bility to cure PO’s evidentiary deficiencies through cross-examination.
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`III. Conclusion
`Improperly submitted Exs. 2112-17 should be disregarded (or, in the
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`Board’s discretion, expunged) and Petitioners’ Motion should be granted.
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`Respectfully submitted, by: /J. Steven Baughman/
`J. Steven Baughman (lead counsel)
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`November 23, 2016
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`5
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`PROTECTIVE ORDER MATERIAL
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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 REPLY IN SUPPORT OF THEIR MOTION TO EXCLUDE
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`was served on November 23, 2016 in its entirety by causing the aforementioned
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`document to be electronically mailed, pursuant to the parties’ agreement, to the
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`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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`PROTECTIVE ORDER MATERIAL
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`Case IPR2015-01972
`Patent No. 6,701,344
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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 23, 2016
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` /Ginny Blundell/
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`Ginny Blundell
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` ROPES & GRAY LLP
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`PROTECTIVE ORDER MATERIAL
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