Paper 28
`Trials@uspto.gov
`571-272-7822 Entered: July 13, 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)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: July 13, 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)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 July 11, 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.
`Davis, lead and backup counsel, respectively, for Petitioners Activision
`Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Ind., 2K
`Sports, Inc., and Rockstar Games, Inc. and Mr. Brown, lead counsel for
`Petitioner Bungie, Inc. (collectively, “Petitioner”); Mr. Hannah, lead counsel
`for Acceleration Bay, LLC (“Acceleration Bay”); and Judges Medley,
`Pettigrew, and Fink.
`The parties requested the call to address two separate issues.
`Petitioner requested the call to seek relief as a result of the United States
`District Court for the District of Delaware’s June 17, 2016, Order, in which,
`Petitioner represents, the court determined that Acceleration Bay—Patent
`Owner of record in these Proceedings––was an exclusive licensee with less
`than all substantial rights to the patents at issue. Patent Owner requested the
`call to confer with the Board prior to filing a Motion to Amend, pursuant to
`section A(2)(c) of the Scheduling Order in these proceedings (e.g., IPR2015-
`01951, Paper 12). We addressed these issues on the call.
`
`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)
`
`A. Impact of Boeing’s Interest in the Patents-at-Issue
`In regards to the first issue, we treat the parties’ oral submissions as a
`respective motion and opposition and summarize the relevant facts here.2
`Petitioner contends the district court determined that Boeing had retained
`some substantial rights in the patents-at-issue and, therefore, should have
`been a party to the Proceedings, at least until recently, when Acceleration
`Bay and Boeing entered into an “Amended and Restated Patent Purchase
`Agreement” (the “Agreement”). Prior to this agreement, however, Petitioner
`contends that because Acceleration Bay was not the true or only patent
`owner in these Proceedings, Boeing should (1) be required to adopt
`Acceleration Bay’s filings to-date; and (2) be required to comply with the
`production requirements as a party to the proceedings under 37 C.F.R.
`§ 42.51(b)(1)(iii).
`Acceleration Bay contends Petitioner is not entitled to any relief.
`According to Acceleration Bay, it was the properly named Patent Owner at
`the time the Petitions were filed as evidenced by the USPTO assignment
`records, and, therefore, Acceleration Bay properly responded by filing the
`proper notices and power of attorney. Citing the Board’s opinion in
`Legend3D, Inc. v. Prime Focus Creative Services Canada, Inc., Case
`IPR2015-01350 (PTAB Nov. 19, 2015) (Paper 12), Acceleration Bay argues
`that to the extent it lacked standing to sue for infringement in district court,
`that requirement does not apply to its standing as Patent Owner in these
`
`
`2 The full transcript of the teleconference was filed. E.g., IPR2015-01951
`(Paper 29) (“Tr.”).
`
`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)
`
`proceedings. Moreover, Acceleration Bay represents that in any event any
`interest Boeing retained in the patents-at-issue no longer exists under the
`Agreement. Consequently, Acceleration Bay contends there is no reason for
`Boeing to adopt Acceleration Bay’s filings and Boeing cannot be required to
`provide discovery as a party.
`We are not persuaded by Petitioner’s contentions. As an initial
`matter, Acceleration Bay was indisputably the assignee of record and the
`named Patent Owner at the time of the filing of the Petitions. To the extent
`Acceleration Bay lacked some ownership rights in the patents-at-issue, as
`the district court determined, that issue was relevant to Acceleration Bay’s
`standing to sue for infringement. Tr. 12:16–22. We determine that there is
`not the same standing requirement for a party to prosecute an inter partes
`review. See, e.g., Legend3D, slip op. at 5. This result is consistent with the
`Board’s rules. For example, under 37 C.F.R. § 42.9(b), an owner of a part
`interest in a patent may move to act to the exclusion of a co-owner of the
`patent if the co-owner is unwilling or unable to participate in the proceeding,
`or for some other reason why it would be in the interest of justice to permit a
`co-owner to act in the trial. In that situation, there is no requirement for the
`absentee co-owner, such as Boeing allegedly was here, to adopt the filings of
`the participating co-owner or produce discovery.
`Significantly, as a result of the Agreement, Petitioner no longer
`intends to challenge Acceleration Bay’s status as the Patent Owner in these
`Proceedings. Tr. at 11:20–23. Consequently, any requirement for
`Acceleration Bay to move to act to the exclusion of Boeing under 37 C.F.R.
`§ 42.9(b) now appears to be moot. Moreover, because we do not discern any
`
`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)
`
`reason why Boeing would have been required to adopt Acceleration Bay’s
`filings or produce routine discovery even if it remained an alleged co-owner,
`but not a party to the Proceedings, we determine Petitioner is not entitled to
`such relief now, when Boeing is not alleged to retain any ownership
`interest.3 Accordingly, we deny Petitioner’s motion for the requested relief.
`
`B. Motion to Amend
`During the call, Acceleration Bay sought to confer with the Board
`regarding its intention to file a Motion to Amend, as required by the
`Scheduling Order. We deemed Acceleration Bay in satisfaction with its
`requirement to confer with the Board and directed Acceleration Bay to
`review the Board’s opinions in MasterImage 3D, Inc. v. RealD, Inc., Case
`IPR2015-00040 (PTAB July 15, 2015) (Paper 42) (precedential) and Toyota
`Motor Corp. v. American Vehicular Sciences LLC, Case IPR2013-00422
`(PTAB Mar. 7, 2014) (Paper 25) for guidance.
`Acceleration Bay directed several questions regarding the propriety of
`submitting amended dependent claims. We agreed to consider Acceleration
`Bay’s questions, and having done so, we direct Acceleration Bay to
`numbered paragraphs 1–4 in Toyota, slip op. 2–3, which sets forth in detail
`the procedure for proposing substitute claims including dependent claims.
`We also point out that any request to amend claims and propose a substitute
`claim will be regarded as contingent (i.e., it will only be considered if the
`
`
`3 We point out that Petitioner has other means for obtaining discovery from
`Boeing. See 37 C.F.R. § 42.52.
`
`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)
`
`original patent claim it seeks to replace is determined to be unpatentable or
`is cancelled).4 Id. at 2.
`
`ORDER
`
`
`
`It is:
` ORDERED that Petitioner’s motion to have Boeing adopt
`Acceleration Bay’s filings to date and produce discovery is denied; and
`FURTHER ORDERED that Acceleration Bay is deemed to be in
`compliance with the Board’s requirement to confer with the Board prior to
`filing a Motion to Amend.
`.
`
`.
`
`
`4 Based on an email to the Board, we understand Petitioner has agreed to
`stipulate to an extension of Due Date 1 from July 15, 2016, to July 18, 2016,
`as requested by Patent Owner.
`
`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)
`
`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
`
`FOR PATENT OWNER:
`James Hannah
`Michael Lee
`Shannon Hedvat
`Jeffrey Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`mhlee@kramerlevin.com
`shedvat@kramerlevin.com
`jprice@kramerlevin.com
`
`7
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