Paper 11
`Trials@uspto.gov
`571-272-7822 Entered: June 17, 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, IPR2016-009321
`Patent 6,714,966 B1
`Cases IPR2015-01970, IPR2015-01972, IPR2016-00931
`Patent 6,701,344 B1
`Cases IPR2015-01964, IPR2015-01996
`Patent 6,829,634 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: June 17, 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, IPR2016-009321
`Patent 6,714,966 B1
`Cases IPR2015-01970, IPR2015-01972, IPR2016-00931
`Patent 6,701,344 B1
`Cases IPR2015-01964, IPR2015-01996
`Patent 6,829,634 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, IPR2016-00932 (Patent 6,714,966 B1)
`IPR2015-01970, IPR2015-01972, IPR2016-00931 (Patent 6,701,344 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`On June 8, 2016, the Board received separate emails from counsel to
`the parties in the following eight proceedings: IPR2015-01951, IPR2015-
`01953, IPR2015-01964, IPR2015-01970, IPR2015-01972, IPR2015-01996,
`IPR2016-00931, and IPR2016-00932 (the “Proceedings”).2 These emails
`are too lengthy to reproduce here in full (see Ex. 3001), but the relevant facts
`are as follows: In its initial email, sent after close of business, Petitioner
`requested a conference call the next day to request expunging Acceleration
`Bay’s filings and barring Acceleration Bay from further participation in the
`Proceedings, because the United States District Court for the District of
`Delaware determined Acceleration Bay to be an “exclusive licensee” with
`fewer than “all substantial rights.” Petitioner proposed times when it was
`available the next day for conference but did know when Patent Owner
`would be available. In a responsive email, Patent Owner stated Petitioner
`had not met and conferred prior to sending an email request to the Board
`and, if it had, it would have known Patent Owner was not available for a call
`on June 9th, as Petitioner proposed. However, Patent Owner’s email
`proceeded to brief the issue of its standing as Patent Owner in the
`
`2 Counsel for Petitioner in these Proceedings also represents that its email
`was sent with permission from counsel for Petitioner Bungie, Inc. in the
`related proceedings: IPR2016-00724, IPR2016-00726, IPR2016-00727, and
`IPR2016-00747. See Ex. 3001 (email chain). However, at this time, the
`Board does not enter this Order in these proceedings.
`2
`
`
`
`IPR2015-01951, IPR2015-01953, IPR2016-00932 (Patent 6,714,966 B1)
`IPR2015-01970, IPR2015-01972, IPR2016-00931 (Patent 6,701,344 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`
`Proceedings. Before the Board had an opportunity to respond to these
`emails, at 2:42 AM on June 13th, 2016, the Board received yet another
`email, from counsel for Petitioner, disputing Patent Owner’s positions and
`reiterating its request for a conference.
`Because the Board’s orders have not been complied with, Petitioner’s
`request for a conference call is denied without prejudice.
`As an initial matter, part A.2 of the Board’s Scheduling Order in these
`Proceedings requires that a party requesting a call must, inter alia, “certify
`that it has conferred with the other party in an effort to resolve the dispute”
`and “propose specific dates and times at which both parties are available for
`the conference call.” Paper 12, 2 (emphasis added).3 Based on the content
`of the emails received from Petitioner and Patent Owner on June 8, we
`determine that neither of these requirements was satisfied by Petitioner prior
`to sending its email to the Board.
`Moreover, it is inappropriate to include substantive arguments in
`emails to the Board. See Patent Review Processing System (PRPS),
`Technical Issue 3 (hereinafter, “Technical Issue 3”) (describing content of
`emails to Trials@uspto.gov) available at http://www.uspto.gov/patents-
`application-process/appealing-patent-decisions/trials/patent-review-
`processing-system-prps-0; Kingston Tech. Co. v. CATR Co., Ltd., Case
`IPR2015-00149, slip op. at 2 (PTAB June 5, 2015) (Paper 22). Once again,
`however, we are in receipt of emails from the parties containing substantive,
`
`
`3 We refer to the papers in IPR2015-01951 unless otherwise specified.
`3
`
`
`
`IPR2015-01951, IPR2015-01953, IPR2016-00932 (Patent 6,714,966 B1)
`IPR2015-01970, IPR2015-01972, IPR2016-00931 (Patent 6,701,344 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`
`off-the-record arguments to the Board, despite our previous instructions in
`these Proceedings that emails to the Board “requesting a conference call
`should be limited to a short statement regarding the purpose of the call only
`and should not contain substantive communications to the Board.” Ex.
`3002.
`The Board’s rules are “construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Failure
`to meet and confer, and off-the-record, unauthorized briefing of disputed
`issues through email correspondence, wastes time and undermines the
`Board’s goal to expeditiously resolve disputes. See Kingston, slip op. at 2.
`Accordingly, in the future, the parties to these Proceedings must agree to the
`content of emails requesting conference calls before they are sent to the
`Board, including a short statement of the issue and the position of each party
`with respect to that issue, and times when both parties are available, and the
`party sending the email must certify that the other party has agreed to the
`content of the email request. See 37 C.F.R. §§ 42.5(a); 42.12(b). The Board
`expects that the parties will exercise good faith in observing these orders.
`See 37 C.F.R. § 42.1(c).
`
`
`ORDER
`
`
`
`Accordingly, it is:
` ORDERED that Petitioner’s request for a conference call is denied
`without prejudice; and
`
`4
`
`
`
`IPR2015-01951, IPR2015-01953, IPR2016-00932 (Patent 6,714,966 B1)
`IPR2015-01970, IPR2015-01972, IPR2016-00931 (Patent 6,701,344 B1)
`IPR2015-01964, IPR2015-01996 (Patent 6,829,634 B1)
`
`
` FURTHER ORDERED that the parties to these Proceedings must
`agree to the content of emails requesting conference calls before they are
`sent to the Board, including a short statement of the issue and the position of
`each party with respect to that issue, and times when both parties are
`available, and the party sending the email must certify that the other party
`has agreed to the content of the email request.
`
`FOR PETITIONER:
`J. Steven Baughman
`Andrew Thomases
`James L. Davis, Jr.
`Matthew R. Shapiro
`Joseph E. Van Tassel
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`andrew.thomases@ropesgray.com
`james.l.davis@ropesgray.com
`matthew.shapiro@ropesgray.com
`joseph.vantassel@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
`
`
`5
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