`571-272-7822
`
`
`Paper 12
`Entered: May 4, 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.
`____________
`
`Cases IPR2015-01951, IPR2015-01953 (Patent 6,714,966 B1)1
`Cases IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`Cases IPR2015-01970, IPR2015-01972 (Patent 6,701,344 B1)
`____________
`
`
`Before 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.
`
`
`
`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 April 27, 2015, a conference call was held for the following six
`proceedings: IPR2015-01951, IPR2015-01953, IPR2015-01964, IPR2015-
`01970, IPR2015-01972, and IPR2015-01996. The following individuals
`were present on the call: Mr. Baughman and Mr. Thomases, lead and
`backup counsel, respectively, for Activision Blizzard, Inc., Electronic Arts
`Inc., Take-Two Interactive Software, Ind., 2K Sports, Inc., and Rockstar
`Games, Inc. (collectively, “Petitioner”); Mr. Hannah, lead counsel for
`Acceleration Bay, LLC (“Patent Owner”); and Judges Medley, Pettigrew,
`and Fink.
`The parties jointly requested a call to discuss proposed motions to be
`filed by the parties and a proposed change to DUE DATE 7, the date set for
`oral argument if requested by either party. Petitioner also requested a call to
`seek authorization to file a motion for supplemental information under
`37 C.F.R. § 42.123(a)(1). We addressed all of these issues on the call.
`
`A. Revised DUE DATES
`The Scheduling Order in each of these proceedings set DUE DATE 7
`(oral argument if requested) as December 14, 2016. Paper 12, 7 (DUE
`DATE APPENDIX).2 Lead counsel for Petitioner stated he has a conflict
`
`
`2 For convenience, citations are to the record in IPR2015-01951 unless
`otherwise indicated.
`
`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)
`
`with that date due to oral arguments scheduled in other proceedings before
`the Board. Patent Owner consented to Petitioner’s request that the oral
`argument in these proceedings be rescheduled to another date when the
`panel and counsel for both parties will be available.
`DUE DATE 7 is reset to December 7, 2016 for each of the
`proceedings addressed by this order. The specific format and time allotted
`will depend on the number of issues, as briefed in the Patent Owner
`Response and Reply, and the extent to which there is overlap of issues
`among the cases.
`A REVISED DUE DATE APPENDIX that applies to each of the six
`proceedings is attached to this order. DUE DATES 4 through 7 have been
`revised, and DUE DATE 1 has been revised for IPR2015-01951, IPR2015-
`01953, IPR2015-01970, and IPR2015-01972, to place all proceedings on the
`same schedule. We remind the parties they may stipulate to different dates
`in any of the proceedings for DUE DATES 1 through 5 (earlier or later, but
`no later than DUE DATE 6). A notice of stipulation specifically identifying
`the changed due dates must be filed promptly. The parties may not stipulate
`to an extension of DUE DATES 6 and 7.
`
`B. Motions to Seal
`During the call and in a list of proposed motions (Paper 15), Patent
`Owner indicated it expects to file one or more motions to seal pursuant to 37
`C.F.R. § 42.54. Specifically, Patent Owner expects to file a motion to seal
`confidential information in an Invention Disclosure form and possibly a
`
`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)
`
`motion to seal confidential information contained in evidence related to
`secondary considerations of non-obviousness.
`We referred the parties to Section A.3 of the Scheduling Order
`(Paper 12) for the procedures for filing confidential information in these
`proceedings. Among other things, a protective order is not in place in a case
`until one is filed and approved by the Board. If a motion to seal is filed, a
`proposed protective order should be presented as an exhibit to the motion.
`The parties are urged to use the Board’s default protective order. Procedures
`for deviating from the default protective order are provided in the
`Scheduling Order. Generally, information subject to a protective order will
`become public if identified in a final written decision.
`Petitioner indicated on the call it would work with Patent Owner to
`agree to a proposed protective order.
`
`C. Motion to Compel Deposition Dates and Locations
`Patent Owner’s list of proposed motions included a “[m]otion to
`compel deposition dates and location of declarants in United States.” Paper
`15, 1. During the call, counsel for Patent Owner stated Patent Owner is not
`seeking authorization at this time to file such a motion, but included it as a
`proposed motion in the event Patent Owner finds it necessary to seek
`authorization in the future. The parties indicated they have been conferring
`in an attempt to arrange for Patent Owner’s deposition of one of Petitioner’s
`declarants who resides outside of the United States.
`Cross-examination of the opposing party’s declarants by deposition
`typically is provided under routine discovery. 37 C.F.R. §§ 42.51(b)(1)(ii),
`
`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)
`
`42.53(a). Our rules contemplate deposition testimony taken outside the
`United States only upon the agreement of the parties or as the Board
`specifically directs. 37 C.F.R. § 42.53(b)(3). We urge the parties to
`continue to work together to determine a mutually satisfactory procedure
`and location for the deposition of Petitioner’s declarant. Only if the parties
`are unable to reach an agreement should the parties contact the Board for
`additional guidance.
`
`D. Antedating a Prior Art Reference
`Patent Owner’s list of proposed motions also included a “[m]otion to
`swear behind prior art.” Paper 15, 1. During the call, we explained to the
`parties that if Patent Owner plans to attempt to antedate a prior art reference,
`the proper procedure is to incorporate any antedating efforts into its Patent
`Owner Response rather than to file a separate motion.
`
`E. Other Proposed Motions
`Patent Owner also indicated it may file a motion for additional
`discovery pursuant to 37 C.F.R. § 42.51 and a motion to file supplemental
`information pursuant to 37 C.F.R. § 42.123, see Paper 15, 1, but indicated on
`the call that it is not seeking authorization for any such motions at this time.
`We remind the parties that, except as otherwise provided in our rules, Board
`authorization is required before filing a motion. A party seeking
`authorization to file a motion should send an email to the board to request a
`conference call to obtain authorization to file a motion.
`Patent Owner also indicated it may file a motion to amend. Although
`the filing of a motion to amend is authorized under our rules, Patent Owner
`
`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)
`
`must schedule a conference to confer with the Board regarding a potential
`motion to amend at least ten days before DUE DATE 1. We also direct the
`parties attention to the Board’s decisions in Idle Free Systems, Inc. v.
`Bergstrom, Inc., Case IPR2012-00027 (PTAB June 11, 2013) (Paper 26),
`which describes the basic guidelines for a motion to amend, and
`MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15,
`2015) (Paper 42), which clarifies the scope of “prior art known to Patent
`Owner.”
`
`F. Motion to Submit Supplemental Information
`Petitioner requests authorization to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(a). Specifically,
`Petitioner seeks to submit as supplemental information documents that it
`served on Patent Owner as supplemental evidence under 37 C.F.R.
`§ 42.64(b)(2) in response to objections served and filed by Patent Owner
`under 37 C.F.R. § 42.64(b)(1). See Paper 13 (Patent Owner’s Objections to
`Evidence). Petitioner’s counsel sent an e-mail to the Board requesting
`authorization to file such a motion within one month after the date trial was
`instituted in each of these proceedings, and we therefore consider
`Petitioner’s request timely under 37 C.F.R. § 42.123(a)(1).
`In these proceedings, Patent Owner served and filed objections within
`ten days after institution of trial in accordance with 37 C.F.R. § 42.64(b)(1).
`See Paper 13. Patent Owner objected to the admissibility of certain of
`Petitioner’s evidence, e.g., on authentication and hearsay grounds. Id. at 1
`(“Acceleration Bay objects to the admissibility of DirectPlay for at least the
`
`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)
`
`following reasons,” including failure to authenticate and hearsay under the
`Federal Rules of Evidence). According to the parties, Petitioner then served
`supplemental evidence in response to Patent Owner’s objections in
`accordance with 37 C.F.R. § 42.64(b)(2).
`We are not persuaded there is a need to authorize or consider a motion
`by Petitioner to submit as supplemental information under 37 C.F.R.
`§ 42.123(a) any of Petitioner’s supplemental evidence that was responsive to
`Patent Owner’s evidentiary objections. If Patent Owner preserves its
`objections by filing a motion to exclude under 37 C.F.R. § 42.64(c) during
`the period of time provided in the Scheduling Order for filing motions to
`exclude, Petitioner may submit that supplemental evidence along with an
`opposition to the motion to exclude to explain how the supplemental
`evidence cures the objections to admissibility. See, e.g., Handi-Quilter, Inc.
`v. Bernina Int’l AG, Case IPR2013-00364, slip op. at 2 (PTAB June 12,
`2014) (Paper 30).
`To the extent Patent Owner challenges the sufficiency, rather than
`admissibility, of the evidence supporting Petitioner’s unpatentability
`contentions, those arguments should be made in a substantive paper, i.e., the
`Patent Owner Response. Substantive arguments directed to the sufficiency
`of evidence are not proper subjects for objections to evidence or a motion to
`exclude. Similarly, to the extent Petitioner wishes to respond to Patent
`Owner’s substantive arguments, Petitioner will have the opportunity to do so
`in a Reply, which may be supported by additional evidence, so long as
`Petitioner’s arguments and evidence are properly responsive to substantive
`arguments in the Patent Owner Response.
`
`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)
`
`ORDER
`
`
`
`It is:
` ORDERED that DUE DATE 7, the date for oral hearing, is reset to
`December 7, 2016;
`FURTHER ORDERED that the Scheduling Order is revised as
`indicated in the REVISED DUE DATE APPENDIX attached to this order;
` FURTHER ORDERED that Patent Owner at this time is not
`authorized to file any motions that require Board authorization; and
` FURTHER ORDERED that Petitioner is not authorized to file a
`motion for supplemental information under 37 C.F.R. § 42.123(a).
`
`
`
`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)
`
`REVISED DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL ..................................... UPON REQUEST
`
`DUE DATE 1 ............................................................................ June 24, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 .................................................................. September 19, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 19, 2016
`Patent owner’s reply to petitioner’s opposition to motion to amend
`
`DUE DATE 4 .................................................................... November 7, 2016
`Motion for observation regarding cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`
`DUE DATE 5 .................................................................. November 17, 2016
`Response to observation
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................. November 23, 2016
`Reply to opposition to motion to exclude
`
`DUE DATE 7 ..................................................................... December 7, 2016
`Oral argument (if requested)
`
`
`9
`
`
`
`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 N. 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
`
`
`10