Paper 13
`Trials@uspto.gov
`571-272-7822 Entered: May 19, 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 SALLY C. MEDLEY, LYNNE E. PETTIGREW and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, 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.
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 19, 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 SALLY C. MEDLEY, LYNNE E. PETTIGREW and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, 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 May 17, 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 “Proceedings”). 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 changes to
`DUE DATES 1–3 and to seek the Board’s guidance regarding the form and
`scope of depositions of several of Petitioner’s declarants located in Australia
`and in the United States, as well as whether Patent Owner is entitled to
`depose witnesses whose declarations have not yet been filed in the
`Proceedings. We addressed all of these issues on the call.
`
`A. Revised DUE DATES
`In these Proceedings, DUE DATE 1 (Patent Owner’s response and
`Patent Owner’s motion to amend) is currently set for June 24, 2016. Paper
`12 (REVISED DUE DATE APPENDIX).2 Lead counsel for Patent Owner
`
`2 For convenience, we refer to IPR2015-01953, unless otherwise specified.
`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)
`
`stated that both he and back-up counsel have a trial scheduled to commence
`on June 13, 2016, and will therefore be unavailable just prior to DUE DATE
`1. Due to this circumstance, as well as the Board’s recent orders shortening
`Patent Owner’s time for filing its preliminary responses to IPR petitions and
`oppositions to motions for joinder in eight related proceedings,3 Patent
`Owner requests DUE DATE 1 be extended by three weeks to July 24, 2016.
`Patent Owner also requests DUE DATE 2 (Petitioner’s reply and
`Petitioner’s opposition to motion to amend) be extended from September 19,
`2016 to October 12, 2016 (three weeks and two days), and DUE DATE 3
`(Patent Owner’s reply to petitioner’s opposition to motion to amend) be
`extended from October 19, 2016 to October 26, 2016. Petitioner does not
`agree to Patent Owner’s proposed schedule change and argues that Patent
`Owner effectively has 3 months and 3 weeks for its response, while
`Petitioner has only 3 months for its reply.
`We determine that Patent Owner has shown good cause for ordering
`the requested extensions to DUE DATES 1–3 for the reasons presented. See
`37 C.F.R. § 42.5(c)(2). Although we recognize the requested extensions
`provide Patent Owner additional time for its response, without providing
`Petitioner a proportionately greater period of time for DUE DATE 2, the
`proposed schedule of new dates is not unreasonable based on the facts
`presented.
`
`
`3 See, e.g., IPR2016-00932, Paper 5 (shortening time for preliminary
`response and opposition). The other related proceedings are IPR2016-
`00931, IPR2016-00933, IPR2016-00934, IPR2016-00935, IPR2016-00936,
`IPR2016-00963, and IPR2016-00964.
`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)
`
`Accordingly, DUE DATES 1–3 are reset to July 15, 2016, October
`12, 2016, and October 26, 2016, respectively, in each of the Proceedings as
`set forth in a REVISED DUE DATE APPENDIX attached to this order. We
`remind the parties they may stipulate to different dates for DUE DATES 1
`through 5 (earlier or later, but no later than DUE DATE 6) and we
`encourage the parties to work together to accommodate reasonable requested
`adjustments. See 37 C.F.R. § 42.1(c). 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. Deposition Issues
`1. Australia-based Declarants
`During the call, Petitioner requested an order under 37 C.F.R.
`§ 42.53(b)(3) concerning the form of deposition of declarants based in
`Australia,4 and an order under 37 C.F.R. § 42.53(d)(5)(ii) clarifying the
`scope of such depositions. According to Petitioner, the declarants, Peter
`Shoubridge and Steven Pietrobon (collectively, the “Australia declarants”)
`testified in support of the prior art status of references relied upon by
`Petitioner in these cases. See, e.g., Ex. 1120, Ex. 1106. Petitioner has
`offered to make the Australian declarants available for deposition by audio
`or video teleconference, and maintains this is a sufficient form for deposition
`
`
`4 We also discussed the availability for live deposition of declarants based in
`the United States. From the discussion, we understand the parties to be
`reaching agreement as to these depositions.
`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)
`
`given that the declarations at issue are short and cross-examination is limited
`to the scope of the direct testimony.
`Patent Owner argues an audio or video conference is unacceptable.
`According to Patent Owner, the Exhibits in question (including the
`respective declarations) are each over 100 pages in length and the
`declarations go to a critical issue in the proceeding, whether or not the
`references at issue have been shown to be prior art. Patent Owner contends
`that an audio or video deposition does not provide a comparable opportunity
`to cross-examine the declarant as would a live (i.e., in-person) deposition
`due to the logistics of sending documents and placing them before the
`declarant, observing the witnesses’ demeanor, and the inability to observe
`off the record exchanges between the witnesses and counsel. Patent Owner
`contends Petitioner knew it was relying on Australian-based declarants in
`this proceeding, and therefore should have been prepared to make them
`available for live depositions in the United States at its expense.
`As a preliminary matter, we discern no disagreement between the
`parties that the declarations in question are limited solely to fact testimony in
`support of the dates and availability of references cited as prior art in the
`Proceedings,5 and that cross-examination should be limited accordingly. See
`37 C.F.R. § 42.53(d)(5)(ii). Thus, although the references themselves are
`lengthy, as Patent Owner contends, the declarations are not directed to the
`
`
`5 We note only Dr. Shoubridge’s declaration, see Ex. 1120 ¶¶ 6–7, appears
`to be directed to prior art relied upon in the Board’s Decisions on Institution.
`See Paper 8 (instituting inter partes review based on Shoubridge and Dadej,
`Hybrid Routing in Dynamic Networks).
`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)
`
`content of the references themselves and are relatively short. Indeed, the
`supporting declarations in Exhibits 1106 and 1120 are no more than three
`pages each.
`Under these circumstances, we determine 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. Our rules, as well as the
`Federal Rules of Civil Procedure, specifically provide for alternatives to live
`deposition, such as deposition by video or telephone. See 37 C.F.R.
`§ 42.53(b)(3) (live or video-recorded testimony); Fed. R. Civ. P. 30(b)(4)
`(telephone or other remote means). Importantly, these rules are construed
`“to secure just, speedy, and inexpensive resolution of every proceeding.” 37
`C.F.R. § 42.1(b) (emphasis added); Fed. R. Civ. P. 1.
`Consistent with these rules, we are not persuaded the perceived
`advantage in having a live deposition justifies the expense to Petitioner, or
`the inconvenience to the third-party witnesses, with requiring them to travel
`from Australia to the United States. See IBM Corp. v. Intellectual Ventures
`LLC, Case IPR2014-01385, Paper 19, slip op. at 6–7 (ordering telephonic
`deposition of no more than one-hour to minimize cost to Petitioner, where
`declaration was three pages). Although Patent Owner enumerates several
`purported disadvantages in deposing a witness remotely, such as observing
`demeanor, these would be minimized in a video format. To the extent Patent
`Owner is concerned about off-camera interactions with the witness, cross-
`examining counsel is free to cross-examine the witness regarding any such
`interactions on the record, as counsel is free to do in a live deposition.
`
`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)
`
`We have considered Patent Owner’s argument that because Petitioner
`made the decision to rely on the Australia declarants in support of its
`Petition, Petitioner must make the Australia declarants available for cross-
`examination in the United States. Based on the facts of these proceedings,
`we do not find this reasoning persuasive. As noted above, one of the
`declarants, Dr. Shoubridge, is the author of two references in the
`Proceedings, including one which the Board relied upon as grounds for
`instituting inter partes review. His testimony is rather limited in scope and
`therefore the expectation would be that the corresponding cross-examination
`of Dr. Shoubridge would likewise be limited. The other declarant purports
`to have first-hand knowledge of the availability of at least one of these two
`references and his testimony also is rather limited in scope. See Ex. 1106.
`Based on these facts, we determine that Petitioner has proposed a
`reasonable, inexpensive solution to aid in resolving the issues of these
`proceedings. Patent Owner did not persuasively present a sufficient reason
`why Petitioner’s proposal is unreasonable.
`Accordingly, we order Petitioner to make the Australia declarants
`available for video deposition, as Petitioner has offered, in a manner
`mutually agreeable to the parties and the Australia declarants. See 37 C.F.R.
`§ 42.53(b)(3) (“Uncompelled deposition testimony taken outside the United
`States may only be taken upon agreement of the parties or as the Board
`specifically directs.” (emphasis added)).
`
`2. Unfiled Declarations
`During the call, the parties discussed whether declarants whose
`declarations have been served but not filed are required to be made available
`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 cross-examination under 37 C.F.R. § 42.53. In these discussions, the
`Board did not discern there to be an impasse between the parties with respect
`to the availability of these declarants for deposition. Accordingly, we
`strongly encourage the parties to work towards agreement on these, as well
`as any other issues.
`
`
`ORDER
`
`
`
`It is:
` ORDERED that DUE DATES 1–3 are reset to July 15, 2016, October
`12, 2016, and October 26, 2016, respectively;
`FURTHER ORDERED that the Scheduling Order is revised as
`indicated in the REVISED DUE DATE APPENDIX attached to this order;
`and
` FURTHER ORDERED that Petitioner will make Peter Shoubridge
`and Steven Pietrobon available for remote video deposition under conditions
`mutually agreeable to the parties.
`
`
`
`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 ............................................................................. July 15, 2016
`Patent owner’s response to the petition
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ...................................................................... October 12, 2016
`Petitioner’s reply to patent owner’s response to petition
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 ...................................................................... October 26, 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 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
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