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.,
`Petitioners
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner
`________________
`
`Case No. IPR2016-00931
`Patent 6,701,344 B1
`________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107
`
`
`
`
`
`

`
`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`THE ‘344 PATENT IS DIRECTED TO A COMPUTER
`NETWORK WITH AN M-REGULAR, INCOMPLETE
`GRAPH TOPOLOGY ..................................................................................... 4
`III. CLAIM CONSTRUCTION ............................................................................ 9
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO
`NOT INVALIDATE THE CLAIMS, AND WHY INTER
`PARTES REVIEW SHOULD NOT BE INSTITUTED .................................. 9
`A.
`The Board Should Deny the Petition Under 35 U.S.C.
`§ 325(d) ................................................................................................. 10
`1.
`Denial of the Petition is Proper Under § 325(d) Because
`the Instant Petition Recycles the Same Prior Art
`Previously Presented to the Office ............................................ 11
`
`2.
`
`3.
`
`Petitioner Provides Insufficient Justification for
`Challenging Claim 12 on Grounds Involving
`Shoubridge or Direct Play ......................................................... 12
`
`The Relevant Factors Weigh in Favor of Denial Under
`§ 325(d) ..................................................................................... 14
`
`C.
`
`B.
`
`Shoubridge in View of the Knowledge of the POSITA
`Does Not Disclose “wherein the interconnections of
`participants form a broadcast channel for a game of
`interest” ................................................................................................. 17
`Shoubridge in View of Direct Play Does Not Disclose
`“wherein the interconnections of participants form a
`broadcast channel for a game of interest” ............................................ 21
`D. A POSITA Would Not Be Motivated to Combine
`Shoubridge and Direct Play to Yield the Invention
`Claimed in the ‘344 Patent ................................................................... 22
`CONCLUSION .............................................................................................. 25
`
`V.
`
`i
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 23
`
`Activision Blizzard, Inc. v. Acceleration Bay, LLC,
`Case IPR2015-01972, Paper 2 (P.T.A.B. Sept. 25, 2015) .................................. 10
`
`Activision Blizzard, Inc. v. Acceleration Bay, LLC,
`IPR2015-01972, Paper 8 (P.T.A.B. Mar. 24, 2016) ............................... 13, 22, 23
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 19
`
`Dow Chem. Co. v. United States,
`226 F.3d 1334 (Fed. Cir. 2000) .......................................................................... 18
`
`Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.,
`Case IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) ................................ 12
`
`Medtronic, Inc., v. Nuvasive, Inc.,
`Case IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014) ............................ 11, 13
`
`Medtronic, Inc., v. Robert Bosch Healthcare Sys., Inc.,
`Case IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014) ................................ 11
`
`Phillips v. AWH Corp.,
`415 F. 3d 1303 (Fed. Cir. 2005) ......................................................................... 18
`
`Unified Patents, Inc., v. Personalweb Techs., LLC,
`Case IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014) ................................. 11
`
`Unilever, Inc., v. The Procter & Gamble Co.,
`Case IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) ................................... 11
`
`Statutes
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`ii
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`

`
`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`37 C.F.R. § 42.71(d) .......................................................................................... 15, 16
`
`157 Cong. Rec. S1360-S1394 (March 8, 2011) ....................................................... 14
`
`iii
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`I.
`
`INTRODUCTION
`
`On April 21, 2016, Petitioner filed a Petition for inter partes review of
`
`claim 12 of U.S. Patent No. 6,701,344 B1 (the “’344 Patent”), which issued to The
`
`Boeing Company on March 2, 2004, based on an application filed in the USPTO
`
`on July 31, 2000. Petitioner seeks to join its own instituted inter partes review
`
`proceeding—IPR2015-01972—despite being otherwise time-barred under
`
`35 U.S.C. § 315(b) while raising two additional grounds not explicitly considered
`
`by the Board in the underlying case, though that case dealt with substantially
`
`similar grounds based on the same prior art. As demonstrated in Patent Owner’s
`
`Opposition to Motion for Joinder filed in this case on the same day as this
`
`Preliminary Response, Petitioner’s Motion for Joinder is improper, and the Board
`
`should deny the instant Petition under § 315(b). This Preliminary Response
`
`addresses further reasons for the Board to decline institution of trial on claim 12 of
`
`the ‘344 Patent on the two grounds proposed in the Petition—namely that the
`
`Petition should be denied under 35 U.S.C. § 325(d) because the same prior art has
`
`already been presented to the USPTO and because, in any case, the proposed
`
`grounds do not establish a reasonable likelihood that claim 12 is unpatentable.
`
`The ‘344 Patent is one of several patents obtained by Boeing directed to
`
`novel computer network technology, developed by inventors Fred Holt and Virgil
`
`Bourassa more than sixteen years ago, that solved critical scalability and
`
`1
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`reliability problems associated with the real-time sharing of information among
`
`multiple widely distributed computers. This innovative technology enabled large-
`
`scale, online collaborations with numerous participants continually joining and
`
`leaving—with applications ranging from aircraft design development to multi-
`
`player online games. A core feature of the patented technology as claimed in the
`
`‘344 Patent is the m-regular, incomplete graph network topology.
`
`The instant petition attacks the validity of the ‘344 Patent on obviousness
`
`grounds based on (1) the non-patent Shoubridge reference and the alleged
`
`knowledge of a POSITA and (2) Shoubridge in view of DirectPlay. While
`
`Petitioner does not challenge claim 12 on precisely the same grounds that were
`
`presented in IPR2015-01972, the prior art is identical and the arguments are
`
`substantially similar.1 Patent Owner requests that the Board decline to institute
`
`trial on Petitioner’s proposed grounds using its discretion under 35 U.S.C.
`
`§ 325(d) and because the proposed combinations do not yield the invention
`
`claimed in the ‘344 Patent.
`
`
`1 In IPR2015-01972, Petitioner alleged that claim 12 of the ‘344 Patent was
`
`obvious over the combination of DirectPlay and Shoubridge. Now it asserts that
`
`the same claim is obvious over Shoubridge and DirectPlay or Shoubridge in view
`
`of the knowledge of a POSITA.
`
`2
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`

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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`First, the Board should exercise its discretion under 35 U.S.C. § 325(d) to
`
`deny institution of trial on Petitioner’s proposed grounds because the Shoubridge
`
`and DirectPlay references, and arguments substantially similar to those presented
`
`here, have already been presented to the USPTO. As an initial matter, Shoubridge
`
`was listed in the USPTO Examiner’s search during prosecution of the ‘344 Patent.
`
`More importantly, however, the Board has already considered Shoubridge and
`
`DirectPlay with respect to claim 12 in the case Petitioner now seeks to join,
`
`IPR2015-01972. Additionally, Shoubridge in view of the alleged knowledge of the
`
`POSITA was applied in the ‘1972 Petition to nearly every other claim of the ‘344
`
`Patent. Petitioner provides no explanation as to why the Board should consider its
`
`approach, which not only uses the Board’s original institution decision as a
`
`roadmap but also appears calculated to harass Patent Owner by way of piecemeal
`
`presentation of unpatentability theories provided in serial Petitions.
`
`Second, the Petitioner’s proposed grounds to demonstrate a reasonable
`
`likelihood of success on the merits because the cited references, alone or in
`
`combination with each other or the knowledge of a POSITA, do not disclose
`
`“wherein the interconnections of participants form a broadcast channel for a game
`
`of interest.”
`
`Given Petitioner’s failure to establish a reasonable likelihood that it would
`
`prevail with respect to at least one of the challenged ‘344 Patent claims, and given
`
`3
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`the tactical liberties taken by Petitioner, Patent Owner respectfully requests that the
`
`Board deny inter partes review.
`
`II. THE ‘344 PATENT IS DIRECTED TO A COMPUTER
`NETWORK WITH AN M-REGULAR, INCOMPLETE
`GRAPH TOPOLOGY
`
`As discussed in the Background of the Invention section of the ‘344 Patent
`
`(the “Background”), point-to-point network protocols, such as UNIX pipes,
`
`TCP/IP, and UDP, allow processes on different computers to communicate via
`
`point-to-point connections. Ex. 1101 at 00042, 1:44-46. However, the
`
`interconnection of all participants using point-to-point connections, while
`
`theoretically possible, does not scale well as the number of participants grows. Id.
`
`at 1:46-49. Because each participating process needs to manage its direct
`
`connections to all other participating processes, the number of possible participants
`
`is limited to the number of direct connections a given machine, or process, can
`
`support. Id. at 1:49-55.
`
`On the other end of the connectivity spectrum are client/server middleware
`
`systems that have a single server that does not communicate with any other server
`
`and coordinates all communications between various clients who are sharing the
`
`information. Id. at 1:58-60. These systems rely on the sole server to function as a
`
`central authority for controlling all access to shared resources. Id. at 1:60-62.
`
`Such systems are also not well suited to sharing of information among many
`
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`participants, but for different reasons than point-to-point networks. When a client
`
`stores information to be shared at the server, every other client must poll the server
`
`to determine that the new information is being shared, which places a very high
`
`overhead on the communications network. Id. at 1:65-2:4. Alternatively, each
`
`client can register a callback with the server, which the server then invokes when
`
`new information is available to be shared. Id. at 2:4-6. However, such callback
`
`techniques create a performance bottleneck. A single server needs to effect a
`
`callback to each and every client whenever new information is to be shared. In
`
`addition, the reliability of the entire information sharing depends upon that of a
`
`single server; failure at the single server prevents all communications between any
`
`clients. Id. at 2:7-13.
`
`The ‘344 Patent is one of several patents obtained by Boeing directed to its
`
`novel computer network technology that solved the central bottleneck problem of
`
`client/server networks, as well as the problems of management complexity and
`
`limited supported connections of point-to-point networks. More particularly, the
`
`‘344 Patent describes using a broadcast channel that overlays a point-to-point
`
`network where each node (participant) is connected to some -- but not all --
`
`neighboring network nodes. For example, Fig. 2 of the ‘344 Patent, reproduced
`
`below, shows a network of twenty participants, where each participant is connected
`
`to four other participants:
`
`5
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`
`Ex. 1101 at 00004. Such a network arrangement, where each node in the network,
`
`
`
`is connected to the same number of other nodes, is known as an m-regular
`
`network. Id. at 00043, 4:38-39. That is, a network is m-regular when each node is
`
`connected to m other nodes and a computer would become disconnected from the
`
`broadcast channel only if all m of the connections to its neighbouring nodes fail.
`
`Id. at 4:39-42. In Fig. 2 above, m=4 because each node is connected to four other
`
`nodes of the network. A network is said to be m-connected when it would take a
`
`failure of m computers to divide the graph into disjoint sub-graphs, i.e., separate
`
`broadcast channels. Id. at 4:42-45.
`
`6
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`A key attribute of the computer network claimed in the ‘344 Patent is that
`
`the number of network participants N (in Fig. 2, this is twenty) is always greater
`
`than the number of connections m to each participant (in Fig. 2, this is four). Id. at
`
`00004, Fig. 2. This network topology where no node is connected to every other
`
`node is an incomplete graph.
`
`Figs. 3A and 3B of the ‘344 Patent, reproduced below, illustrate the process
`
`of breaking connections between nodes (i.e., “edges”) in a primitive complete
`
`graph network to add new node Z to build the inventive incomplete graph.
`
`
`Ex. 1101 at 00005. As described in the ‘344 Patent, when a computer seeks to join
`
`a broadcast channel, previously connected computers break connections to each
`
`other in favor of new connections to the seeking computer:
`
`Thus, some connections between computers need to be broken so that
`the seeking computer can connect to four computers. In one
`embodiment,
`the broadcast
`technique
`identifies
`two pairs of
`
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`computers that are currently connected to each other. Each of these
`pairs of computers breaks the connection between them, and then
`each of the four computers (two from each pair) connects to the
`seeking computer. FIGS. 3A and 3B illustrate the process of a new
`computer Z connecting to the broadcast channel. FIG. 3A illustrates
`the broadcast channel before computer Z is connected. The pairs of
`computers B and E and computers C and D are the two pairs that are
`identified as the neighbors for the new computer Z. The connections
`between each of these pairs is broken, and a connection between
`computer Z and each of computers B, C, D, and E is established as
`indicated by FIG. 3B.
`
`Ex. 1101 at 00044, 5:58-6:6 (emphasis added).
`
`The incomplete graph topology relies on participants to disseminate
`
`information to other participants, thus avoiding the bottleneck of a single central
`
`server node. See id. at 000042, 1:58-2:13. The use of an incomplete graph also
`
`avoids the inherent limitations on scaling, and the management of N connections
`
`(i.e., a connection to every other participant) at every network node. See id. at
`
`1:44-56.
`
`As described in the ‘344 Patent, to broadcast a message, the originating
`
`computer sends the message to each of its neighbors using its point-to-point
`
`connections. Id. at 00045, 7:30-36. Each computer that receives the message then
`
`sends the message to its three other neighbors using the point-to-point connections.
`
`Id. at 7:37-49. In this way, the message is propagated to each computer using the
`
`8
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`underlying network, thus broadcasting the message to each computer over a logical
`
`broadcast channel.
`
`It should be appreciated that the invention as described and claimed in the
`
`‘344 Patent leverages the weaving together of (i) a fabric of point-to-point
`
`connections into an m-regular network with (ii) an incomplete graph topology to
`
`achieve scalable and reliable, wide-area, peer-to-peer communications among
`
`computer processes with high connectivity and minimal latency.
`
`III. CLAIM CONSTRUCTION
`
`Patent Owner respectfully submits, without prejudice, that, for purposes of
`
`this Patent Owner Preliminary Response, it is not necessary to dispute Petitioner’s
`
`proposals for construing the ‘344 Patent claims.
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED
`
`The Board should exercise its discretion to decline to institute inter partes of
`
`the ‘344 Patent under 35 U.S.C. § 325(d) because “the same prior art or arguments
`
`previously were presented to the Office.” Additionally, the combinations of
`
`Shoubridge in view of knowledge of the POSITA and Shoubridge in view of
`
`Direct Play do not teach the subject matter of claim 12—namely, “wherein the
`
`interconnections of participants form a broadcast channel for a game of interest.”
`
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`Nor would a POSITA have combined Shoubridge and Direct Play in the manner
`
`suggested at the time the ‘344 Patent was invented.
`
`A. The Board Should Deny the Petition Under 35 U.S.C. § 325(d)
`
`As a threshold matter, the Board should deny Petitioner’s proposed grounds
`
`under 35 U.S.C. § 325(d) because the Petition recycles substantially the same prior
`
`art as well as substantially the same arguments that were already presented to the
`
`Patent Office. See 35 U.S.C. § 325(d) (“In determining whether to institute or
`
`order a proceeding…the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.”). In citing Shoubridge and
`
`Shoubridge in view of Direct Play, the Petition relies on precisely the same prior
`
`art previously presented to the Office with respect to claim 12 of the ‘344 Patent.
`
`Id. In particular, the combination of Direct Play and Shoubridge was cited against
`
`claim 12 of the ‘344 Patent in the case the instant Petition seeks to join, IPR2015-
`
`01972. See Petition, Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case
`
`IPR2015-01972, Paper 2 at 42–43 (P.T.A.B. Sept. 25, 2015) (“the ‘1972 Petition”)
`
`(alleging that claim 12 of the ‘344 Patent is obvious over Direct Play in view of
`
`Shoubridge).
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`10
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
`
`1.
`
`Denial of the Petition is Proper Under § 325(d) Because the
`Instant Petition Recycles the Same Prior Art Previously
`Presented to the Office
`
`The Board routinely denies institution of trial under 35 U.S.C. § 325(d) in
`
`cases where a second Petition recycles the same art or arguments—particularly
`
`when the second petition attempts to remedy deficiencies noted in a previous
`
`institution decision. See Medtronic, Inc., v. Nuvasive, Inc., Case IPR2014-00487,
`
`Paper 8 at 6 (P.T.A.B. Sept. 11, 2014) (informative opinion) (denying institution
`
`under § 325(d) when “responding to ‘a noted deficiency,’ and is providing new
`
`evidence and argument as to how the previously supplied prior art renders the
`
`challenged claims obvious”); see also Unified Patents, Inc., v. Personalweb Techs.,
`
`LLC, Case IPR2014-00702, Paper 13 at 8 (P.T.A.B. July 24, 2014) (informative
`
`opinion) (exercising discretion under 35 U.S.C. § 325(d) to deny the Petition in
`
`which the same prior art was previously presented and in which the challenged
`
`claims were pending in another inter partes review proceeding); Unilever, Inc., v.
`
`The Procter & Gamble Co., Case IPR2014-00506, Paper 17 at 8 (P.T.A.B. July 7,
`
`2014) (informative opinion) (denying institution under 35 U.S.C. § 325(d) when a
`
`second petition used the Board’s “Decision on Institution to bolster challenges that
`
`were advanced, unsuccessfully, in” an earlier petition); Medtronic, Inc., v. Robert
`
`Bosch Healthcare Sys., Inc., Case IPR2014-00436, Paper 17 at 12 (P.T.A.B. June
`
`19, 2014) (informative opinion) (declining to institute trial under 35 U.S.C.
`
`11
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`§ 325(d) when the same prior art and substantially the same arguments were
`
`previously presented and the challenged patent was involved in another inter partes
`
`review proceeding).
`
`The same result should obtain here where Petitioner cites the same prior art
`
`in a follow-on Petition against the same claim previously subject to a decision
`
`denying institution—particularly because claim 12 of the ‘344 Patent is currently
`
`the subject of inter partes review proceedings in Case No. IPR2015-01970, another
`
`case involving the same Petitioner.
`
`2.
`
`Petitioner Provides Insufficient Justification for
`Challenging Claim 12 on Grounds Involving Shoubridge or
`Direct Play
`
`Petitioner’s only justification for the Board to institute trial in this case is
`
`that “[t]he minimal additional work required on the part of Patent Owner to address
`
`the two additional grounds raised… is strongly outweighed by the public interest in
`
`having consistency of outcomes concerning similar sets of claimed subject matter
`
`and prior art.” Petition at 5. This justification, however, does not account for why
`
`Petitioner failed to raise this particular ground in the ‘1972 Petition or how
`
`Shoubridge on its own or Shoubridge in view of Direct Play distinguishes over
`
`Direct Play in view of Shoubridge, the ground denied in IPR2015-01972.
`
`Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd., Case IPR2013-00324,
`
`Paper 19 at 6–7 (P.T.A.B. Nov. 21, 2013) (informative opinion) (denying
`
`12
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`institution under § 325(d) when Petitioner failed to provide justification for filing a
`
`second Petition and failing to explain how its new grounds distinguished over
`
`those previously provided); Medtronic, Inc., v. Nuvasive, Inc., Case IPR2014-
`
`00487, Paper 8 at 7 (P.T.A.B. Sept. 11, 2014) (informative opinion) (denying a
`
`Petition under § 325(d) when “Petitioner has not provided any persuasive
`
`reasoning as to why we should institute inter partes review over ‘the same or
`
`substantially the same prior art or arguments’” previously presented, particularly in
`
`view of the fact that the same claims were pending in another inter partes review
`
`proceeding). Indeed, Petitioner provides no explanation about how its sudden
`
`desire for “consistency of outcomes” squares with its decision not to challenge
`
`claim 12 under Shoubridge alone in the ‘1972 Petition despite previously
`
`challenging nearly every other claim of the ‘344 Patent on that ground. Nor does
`
`Petitioner explain how the Board could achieve “consistency of outcomes” based
`
`on its proposed combination of Shoubridge modified with Direct Play in Ground 2,
`
`a ground that does not apply to any other claims of the ‘344 Patent in the two inter
`
`partes review proceedings currently pending for that patent. See Institution
`
`Decision, Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01972,
`
`Paper 8 (P.T.A.B. Mar. 24, 2016) (“the ‘1972 Institution Decision”) (denying
`
`institution of inter partes review of claims 1–19 of the’344 Patent over Direct Play
`
`in view of Shoubridge).
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`Accordingly, because each of Petitioner’s proposed Grounds relies on prior
`
`art and/or arguments that are substantially the same as those presented to the
`
`USPTO in the ‘1972 Petition, the Board should use its discretion to reject the
`
`Petition under 35 U.S.C. § 325(d).
`
`3.
`
`The Relevant Factors Weigh in Favor of Denial Under
`§ 325(d)
`
`The legislative history behind § 325(d) indicates that Congress was
`
`concerned with the potential for abuse of process in IPR proceedings:
`
`This will prevent parties from mounting attacks on patents that raise
`issues that are substantially the same as issues that were already
`before the Office with respect to the patent. The Patent Office has
`indicated that it currently is forced to accept many requests for ex
`parte and inter partes reexamination that raise challenges that are
`cumulative
`to or substantially overlap with
`issues previously
`considered by the Office with respect to the patent.
`
`157 Cong. Rec. S1360-S1394 at S1376 (March 8, 2011) (remarks of Senator Jon
`
`Kyl). The case at hand illustrates perfectly the need for the Board to exercise its
`
`discretion liberally when considering serial challenges to a patent.
`
`Activision et al. filed its first petition for inter partes review of the ‘344
`
`Patent in Case IPR2015-01972. In that case, despite challenging nearly every
`
`other claim under Shoubridge in view of the knowledge of the POSITA, it declined
`
`to challenge claim 12. After the Board’s Institution Decision in that case,
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`Patent Owner’s Preliminary Response
`IPR2016-00931 (U.S. Patent No. 6,701,344)
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`Petitioner filed a second petition utilizing the same prior art (in this case raising
`
`grounds in view of Shoubridge alone and Shoubridge in view of Direct Play) while
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`framing the evidence in a slightly different manner. After that, Petitioner filed yet
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`another Petition, yet again recycling the same prior art, and yet again framing the
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`evidence in a slightly different manner. A decision to institute trial over Patent
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`Owner’s arguments regarding § 325(d) would invite substantial abuses of the inter
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`partes review framework by encouraging petitioners to (1) apply a multiplicity of
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`prior art grounds in a patchwork fashion to avoid a finding that some grounds are
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`redundant and (2) using the Board’s Institution Decision as a roadmap to challenge
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`previously unchallenged claims under grounds found persuasive by the Board.
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`Such tactics impose heavily on the Board’s resources and give Patent Owners no
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`opportunity for repose.
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`Indeed, Petitioner appears to have filed this Petition in lieu of a Request for
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`Rehearing of the Board’s decision in IPR2015-01972. The Rules provide that “[a]
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`party dissatisfied with a decision may file a single request for rehearing without
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`prior authorization from the Board.” 37 C.F.R. § 42.71(d). However, by foregoing
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`a Request for Rehearing in lieu of a new Petition that uses the Board’s decision as
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`a roadmap, Petitioner’s new Petition was not subject to any of the attendant
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`requirements of 37 C.F.R. § 42.71(d), which provides:
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`(d) Rehearing. A party dissatisfied with a decision may file a single
`request for rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the party
`challenging the decision. The request must specifically identify all
`matters the party believes the Board misapprehended or overlooked,
`and the place where each matter was previously addressed in a
`motion, an opposition, or a reply. A request for rehearing does not toll
`times for taking action. Any request must be filed:
`(1) Within 14 days of the entry of a non-final decision or a
`decision to institute a trial as to at least one ground of
`unpatentability asserted in the petition; or
`(2) Within 30 days of the entry of a final decision or a decision
`not to institute a trial.
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`Accordingly, Petitioner was not subject to the burden to show the Board’s decision
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`should be modified, was not required to identify matters the Board
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`misapprehended or overlooked, and was not subject to the timing requirements of
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`37 C.F.R. § 42.71(d)(1). This end-run around the rules should not be
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`countenanced.
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`§ 325(d) is a tool for the Board to prevent inefficiencies in the inter partes
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`review system, harassment of patent owners, and abuse of process. The Board
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`should exercise its discretion here to deny trial on Petitioner’s proposed grounds.
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`B.
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`Shoubridge in View of the Knowledge of the POSITA Does Not
`Disclose “wherein the interconnections of participants form a
`broadcast channel for a game of interest”
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`Shoubridge in view of the knowledge of the POSITA fails to show or
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`suggest “wherein the interconnections of participants form a broadcast channel for
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`a game of interest.” As defined in the ‘344 Patent, a broadcast channel is
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`“implemented using an underlying network system (e.g., the Internet) that allows
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`each computer connected to the underlying network system to send messages to
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`each other connected computer using each computer’s address.” ‘344 Patent at
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`00001, Abstract. In other words, “a broadcast channel overlays a point-to-point
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`communications network.” Id.
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`Petitioner fails to identify any teaching in Shoubridge that corresponds to a
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`“broadcast channel” as the term is used in the context of the ‘344 Patent. Instead,
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`Petitioner insists that Shoubridge teaches “forming ‘a broadcast channel for a game
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`of interest’” because a POSITA would have found it obvious “to use the network
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`and communication protocol taught by Shoubridge to broadcast user traffic on a
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`network computer game of interest to the interconnected participants.” Petition at
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`29 (citing Ex. 1219 (“Karger”) at ¶ 99). Petitioner also states that Shoubridge’s
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`network is a broadcast channel because it can be used to share information:
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`A POSITA would have understood that the communication network
`taught by Shoubridge was a ‘broadcast channel’ formed by
`interconnected participants (via ‘links’) and that the principal purpose
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`Patent Owner’s Preliminary Response
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`for such a network was to share information (via broadcasting of ‘user
`traffic’) on a topic of interest, such as a game, amongst these
`interconnected participants.
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`Petition at 28 (citing Karger at ¶ 97).
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`None of these arguments, however, adequately distinguish between the
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`terms “computer network” and “broadcast channel,” as recited in claim 12 of the
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`‘344 Patent. In particular, the arguments presented by Petitioner fail to give any
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`weight to the term “broadcast channel,” which must further narrow the claimed
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`subject matter of claim1 under the established principle of claim differentiation.
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`See, e.g. Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Cir. 2005) (“[T]he
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`presence of a dependent claim that adds a particular limitation gives rise to a
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`presumption that the limitation in question is not present in the independent
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`claim.”)(citation omitted); see also id. at 1324 (finding that the inclusion of a
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`specific term in a dependent claim implies that the independent claim did not
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`contain the limitation) (citing Dow Chem. Co. v. United States, 226 F.3d 1334,
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`1341-42 (Fed. Cir. 2000) (concluding that an independent claim should be given
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`broader scope than a dependent claim to avoid rendering the dependent claim
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`redundant). Thus, Shoubridge’s alleged teaching of a computer network including
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`links between nodes is insufficient to read on the claimed broadcast channel. See
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`Petition at 28. For example, although Petitioner argues that a POSITA would
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`understand Shoubridge to disclose “interconnected participants” it does not explain
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`how Shoubridge teaches that these interconnections form a broadcast channel. See
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`Petition at 29. The Petition, therefore, improperly gives no weight to the term
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`broadcast