Trials@uspto.gov Paper 13
`571-272-7822
`
`Date Entered: June 23, 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.
`____________
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissing Motion for Joinder
`37 C.F.R. § 122(b)
`
`
`
`
`
`
`
`571-272-7822
`
`Date Entered: June 23, 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.
`____________
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissing Motion for Joinder
`37 C.F.R. § 122(b)
`
`
`
`
`
`
`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`I. INTRODUCTION
`
`A. Background
`
`
`
`On April 21, 2016, Activision Blizzard, Inc., Electronic Arts Inc.,
`
`Take-Two Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games,
`
`Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes
`
`review of claim 12 of U.S. Patent No. 6,701,344 B1 (Ex. 1201, “the
`
`’344 patent”). Paper 2 (“Pet.”). On the same day, Petitioner filed a Motion
`
`for Joinder pursuant to 35 U.S.C. § 315(c), seeking to join this proceeding
`
`with Activision Blizzard, Inc., et al. v. Acceleration Bay, LLC, Case
`
`IPR2015-01972 (“the 1972 IPR”). Paper 3 (“Mot.”). In the 1972 IPR, we
`
`instituted inter partes review of claims 1–11 and 16–19 of the ’344 patent,
`
`but we did not institute inter partes review of claims 12–15 of the ’344
`
`patent. See 1972 IPR, slip op. at 1 (PTAB Mar. 24, 2016) (Paper 8).
`
`Acceleration Bay, LLC (“Patent Owner”) filed a Preliminary
`
`Response. Paper 9 (“Prelim. Resp.”). Patent Owner also filed an
`
`Opposition to the Motion for Joinder. Paper 8 (“Opp.”).
`
`Upon consideration of the Petition and Preliminary Response, we
`
`exercise our discretion, under 35 U.S.C. § 325(d), to deny institution of inter
`
`partes review as to claim 12.
`
`B. The ’344 Patent
`
`The ’344 patent relates to a “broadcast technique in which a broadcast
`
`channel overlays a point-to-point communications network.” Ex. 1201, 4:3–
`
`5. The broadcast technique overlays the underlying network system with a
`
`graph of point-to-point connections between host computers or nodes
`
`through which the broadcast channel is implemented. Id. at 4:23–26.
`
`Figure 1 of the ’344 patent is reproduced below:
`
`2
`
`
`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`
`
`
`
`
`Figure 1 illustrates a broadcast channel represented by a “4-regular, 4-
`
`connected” graph. Id. at 4:48–49. The graph of Figure 1 is “4-regular”
`
`because each node is connected to exactly four other nodes (e.g., node A is
`
`connected to nodes E, F, G, and H). Id. at 4:38–39, 4:49–53. A node in a 4-
`
`regular graph can only be disconnected if all four of the connections to its
`
`neighbors fail. Id. at 4:39–42. Moreover, the graph of Figure 1 is “4-
`
`connected” because it would take the failure of four nodes to divide the
`
`graph into two separate sub-graphs (i.e., two broadcast channels). Id. at
`
`4:42–47.
`
`To broadcast a message over the network, an originating computer
`
`sends the message to each of its four neighbors using the point-to-point
`
`connections. Id. at 4:30–32. Each computer that receives the message sends
`
`3
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`
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`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`it to its other neighbors, such that the message is propagated to each
`
`
`
`computer in the network. Id. at 4:32–38. The minimum number of
`
`connections needed to traverse any two computers in the network is known
`
`as the “distance” between them, while the maximum of the distances in the
`
`network is called the “diameter” of the broadcast channel. Id. at 4:57–5:3.
`
`In Figure 1, the diameter is 2 because a message originating at any node
`
`(e.g., A) traverses no more than 2 connections to reach every other node.
`
`Id. at 5:3–6.
`
`In one embodiment described in the ’344 patent, a distributed game
`
`environment is implemented using broadcast channels. Id. at 16:30–31.
`
`Each player’s computer executes a game application program, and a player
`
`joins a game by connecting to the broadcast channel on which the game is
`
`played. Id. at 16:31–36. Each time a player takes an action in the game, a
`
`message representing that action is broadcast on the game’s broadcast
`
`channel. Id. at 16:36–38.
`
`
`
`C. Illustrative Claim
`
`Claim 12, the only claim challenged in the Petition, depends from
`
`claim 1. Both claims are reproduced below.
`
`1. A computer network for providing a game environment
`for a plurality of participants, each participant having
`connections to at least three neighbor participants, wherein an
`originating participant sends data to the other participants by
`sending the data through each of its connections to its neighbor
`participants and wherein each participant sends data that it
`receives from a neighbor participant to its other neighbor
`participants, further wherein the network is m-regular, where m
`is the exact number of neighbor participants of each participant
`
`4
`
`
`
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`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`and further wherein the number of participants is at least two
`greater than m thus resulting in a non-complete graph.
`
`
`
`12. The computer network of claim 1 wherein the
`interconnections of participants form a broadcast channel for a
`game of interest.
`
`Id. at 19:26–37; 30:3–6.
`
`D. Related Matters
`
`Petitioner identifies the following pending judicial matters as relating
`
`to the ’344 patent: Activision Blizzard, Inc. v. Acceleration Bay LLC, Case
`
`No. 3:16-cv-03375 (N.D. Cal., filed June 16, 2016); Electronic Arts Inc. v.
`
`Acceleration Bay LLC, Case No. 3:16-cv-03378 (N.D. Cal., filed June 16.
`
`2016); Take-Two Interactive Software, Inc. et al. v. Acceleration Bay LLC,
`
`Case No. 4:16-cv-03377 (N.D. Cal., filed June 16, 2016); Acceleration Bay
`
`LLC v. Activision Blizzard, Inc., Case No. 1:16-cv-00453 (D. Del., filed June
`
`17, 2016); Acceleration Bay LLC v. Electronic Arts Inc., Case No. 1:16-cv-
`
`00454 (D. Del., filed June 17, 2016); Acceleration Bay LLC v. Take-Two
`
`Interactive Software, Inc. et al., Case No. 1:16-cv-00455 (D. Del., filed June
`
`17, 2016). Paper 12, 2–3.
`
`In addition to the 1972 IPR, the ’344 patent is the subject of inter
`
`partes review in Activision Blizzard, Inc., et al. v. Acceleration Bay, LLC,
`
`Case IPR2015-01970 (“the 1970 IPR”). The ’344 patent is also the subject
`
`of Bungie, Inc. v. Acceleration Bay, LLC, Case IPR2016-00933 and Bungie,
`
`Inc. v. Acceleration Bay, LLC, Case IPR2016-00934, for which institution
`
`decisions have not yet been made.
`
`1. The 1972 IPR
`
`As noted above, in the 1972 IPR, we instituted inter partes review as
`
`to claims 1–11 and 16–19 of the ’344 patent, but we did not institute inter
`
`5
`
`
`
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`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`partes review of claims 12–15 of the ’344 patent. 1972 IPR, Paper 8
`
`
`
`(“1972-Decision”). In the 1972 IPR, Petitioner also contended that claim 12
`
`would have been obvious over Shoubridge1 and DirectPlay.2 See 1972 IPR,
`
`Paper 2 (“1972-Pet.”). As summarized in the 1972-Decision, Shoubridge
`
`models a communication network as a graph in which each node serves as a
`
`source of user traffic entering the network, where traffic can be sent to the
`
`other nodes in the network. 1972-Decision 12 (citing Ex. 1205,3 2).
`
`Shoubridge describes a 64 node network with connectivity of degree 4
`
`modeled as a large, regular graph and routing protocols known as
`
`constrained flooding and minimum hop routing. Id. Ultimately, Shoubridge
`
`proposes a hybrid routing strategy, which may rely on a combination of
`
`constrained flooding and minimum hop routing depending on whether valid
`
`routing information exists. Id.
`
`The 1972-Decision also summarizes DirectPlay—an application
`
`program interface for providing medium-independent communications for
`
`multiplayer games over networks. 1972-Decision 19 (citing Ex. 1203, 15,
`
`194). As reflected in Figure 18-3, DirectPlay describes two possible network
`
`topologies for a multiplayer gaming session, including a peer-to-peer
`
`network, in which messages are routed between DirectPlay objects rather
`
`
`1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks,
`3 IEEE INT’L CONF. ON COMMS. CONF. REC. 1381-86 (Montreal, 1997)
`(Ex. 1205) (“Shoubridge”).
`2 Bradley Bargen & Peter Donnelly, INSIDE DIRECTX (Microsoft Press,
`1998) (Ex. 1203) (“DirectPlay”).
`3 In the 1972-Decision, Shoubridge was filed as Exhibit 1105 and DirectPlay
`was filed as Exhibit 1103. For convenience, we refer to the respective
`exhibit numbers in the instant proceeding unless otherwise noted.
`4 We refer to the Exhibit pagination.
`
`6
`
`
`
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`Case IPR2016-00931
`Patent 6,701,344 B1
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`
`
`than through a host. Id. at 19–20. DirectPlay also provides a “matchmaking
`
`service” for players to meet in a virtual lobby to identify game sessions they
`
`want to connect with. Id. at 20. Once players decide to play a game, the
`
`virtual lobby launches the networked gaming session. Id.
`
`In the 1972 IPR, Petitioner argued that Shoubridge discloses the
`
`limitations of claim 1. 1972-Pet. 28–34. For claim 12, Petitioner relied on
`
`DirectPlay to teach the recited “computer network of claim 1 wherein the
`
`interconnections of participants form a broadcast channel for a game of
`
`interest.” Id. at 42–43. Petitioner contended it would have been obvious to
`
`a person of ordinary skill in the art to apply Shoubridge’s teaching of
`
`flooding over a network to the gaming environment taught by DirectPlay to
`
`achieve DirectPlay’s objective of high reliability. Id. at 23–27. However,
`
`we determined Petitioner’s obviousness analysis to be insufficient. 1972-
`
`Decision 21–23. Specifically, we concluded:
`
`[W]e agree with Patent Owner that DirectPlay contemplates a
`static network in which all participants are known a priori. Thus,
`the circumstances described in Shoubridge for using constrained
`flooding at every node do not appear to be present in DirectPlay.
`Moreover, neither Petitioner nor its declarant have sufficiently
`addressed why a person of ordinary skill in the art, upon reading
`Shoubridge, would be motivated to try its constrained flooding
`approach in DirectPlay to achieve scaling and reliability. If
`anything, Shoubridge suggests these objectives would not be
`satisfied for the disclosed 64 node network except by combining
`constrained flooding with a routing table approach, in which case
`not every node would be visited as required by claims 1, 16,
`and 18.
`
`Id. at 23 (internal citations omitted). Accordingly, we found
`
`Petitioner did not establish a reasonable likelihood of prevailing in its
`
`challenge against claim 12. Id.
`
`7
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`
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`Case IPR2016-00931
`Patent 6,701,344 B1
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`
`
`E. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts that claim 12 is unpatentable based on two grounds:
`
`Shoubridge alone,5 and Shoubridge in view of DirectPlay. Pet. 2–3. In its
`
`first theory, Petitioner contends Shoubridge describes the broadcast of user
`
`traffic through a network, which Petitioner contends teaches a “broadcast
`
`channel for a game of interest,” as recited in claim 12. Pet. 27–28 (citing,
`
`e.g., Ex. 1205, 1, 3; Ex. 1219 ¶¶ 94–98). In its second theory, Petitioner
`
`contends a person of ordinary skill in the art would have been motivated to
`
`apply DirectPlay’s teachings of broadcasting a game to Shoubridge’s
`
`network, to allow participants in Shoubridge’s network to participate in the
`
`game. Pet. 32–35 (citing, e.g., Ex. 1203, 21–24; Ex. 1219 ¶¶ 112–116).
`
`Petitioner contends that although the Board previously considered
`
`DirectPlay in combination with Shoubridge, neither of the grounds advanced
`
`here was previously considered by the Board. Id. at 2–3.
`
`II. ANALYSIS
`
`As a threshold matter, Patent Owner argues that 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.” Prelim.
`
`Resp. 10. Petitioner does not address the applicability of 35 U.S.C. § 325(d)
`
`to its proposed grounds.
`
`
`5 Petitioner articulates this ground as obviousness based on “Shoubridge and
`the knowledge of a POSITA.” Pet. 10. Because obviousness is determined
`from the perspective of a person of ordinary skill in the art, we refer to this
`ground simply as obviousness over Shoubridge.
`
`8
`
`
`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`Institution of inter partes review is subject to the Board’s discretion.
`
`
`
`See 37 C.F.R. § 42.108(b). In particular, “[i]n determining whether to
`
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
`
`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.” 35 U.S.C. § 325(d). In making this
`
`determination, we may consider whether Petitioner uses our prior Decision
`
`to bolster challenges it advanced unsuccessfully. See, e.g., Unilever, Inc. v.
`
`The Procter & Gamble Co., Case IPR2014-00506, slip op. at 8 (PTAB July
`
`7, 2014) (Paper 17) (informative).
`
`Having considered the parties’ contentions, we determine the grounds
`
`at issue here challenging claim 12 as unpatentable over Shoubridge alone
`
`and Shoubridge in view of DirectPlay rely on the same prior art and
`
`substantially the same arguments that we found insufficient in the 1972 IPR.
`
`Although Shoubridge alone was not raised as a basis for challenging
`
`claim 12 in the 1972 IPR, it was raised as a basis for challenging claim 1,
`
`from which claim 12, among other claims, depends. 1972-Decision 11–12.
`
`Moreover, the claim mapping provided for claim 12 in the instant petition
`
`relies on nearly identical disclosures in Shoubridge as relied upon for
`
`claim 1 in the previous petition. Compare Pet. 27–28 (citing Ex. 1205,
`
`2 ¶ 11–3 ¶ 1) (mapping Shoubridge’s disclosures of broadcasting a user
`
`packet on outgoing links to claim 12’s “broadcast channel for a game of
`
`interest”), with 1972-Pet. 30–31 (citing Ex. 1205, 2 ¶ 11–3 ¶ 1) (mapping
`
`Shoubridge’s disclosures of broadcasting a user packet on outgoing links to
`
`claim 1’s “send[ing] data to the other participants”). Petitioner presents no
`
`9
`
`
`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`persuasive reason why it could not have challenged claim 12 based on
`
`
`
`Shoubridge alone in the 1972 IPR.
`
`Similarly, regarding the challenge to claim 12 based on Shoubridge in
`
`view of DirectPlay, Petitioner previously presented this prior art as
`
`DirectPlay in view of Shoubridge. See 1972-Pet. 27 (“DirectPlay is
`
`presented as the primary reference.”). As an initial matter, characterizing
`
`the instant grounds as Shoubridge in view of DirectPlay instead of the other
`
`way around is itself of “no significance.” See In re Bush, 296 F.2d 491, 496
`
`(CCPA 1961). Significantly, Petitioner relies in large part upon the same
`
`disclosures in DirectPlay, e.g., pages 21–24, in contending that a person of
`
`ordinary skill in the art would have combined Shoubridge and DirectPlay.
`
`Pet. 33–34. We recognize that Petitioner now adds citation to additional
`
`disclosures at pages 47, 50, and 51 of DirectPlay. Id. at 31. Petitioner
`
`contends this additional evidence rebuts Patent Owner’s alleged
`
`mischaracterization of DirectPlay as limited to static networks. Id. at 8–9.
`
`However, Petitioner provides no persuasive reason that it could not have
`
`anticipated Patent Owner’s argument given Shoubridge’s teaching that
`
`“flooding results in very low network utilization, and therefore better routing
`
`strategies need to be sought.” See 1972-Decision 22 (quoting Ex. 1205, 4).
`
`Consequently, we find this to be a “second bite at the apple” (Prelim.
`
`Resp. 11–12) used to bolster previously unsuccessful arguments. See
`
`Unilever, slip op. at 7–8; Travelocity.com L.P. v. Cronos Techs., LLC, Case
`
`CBM2015-00047, slip op. at 12–13 (PTAB June 15, 2015) (Paper 7) (new
`
`indefiniteness argument); Samsung Elecs. Co., Ltd., v. Affinity Labs of Tex.,
`
`LLC, Case No. IPR2015-00820, slip op. at 4 (PTAB May 15, 2015) (Paper
`
`12) (new reference).
`
`10
`
`
`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`Although Petitioner does not address the applicability of 35 U.S.C.
`
`
`
`§ 325(d), it does contend “the public interest in having consistency of
`
`outcomes” outweighs the minimal additional work on the part of the Patent
`
`Owner in addressing these grounds. Pet. 5. We disagree. First, we are not
`
`persuaded the addition of claim 12 to existing proceedings would create
`
`minimal additional work on the part of the Patent Owner, given the stage of
`
`the proceeding and the fact that the proposed ground based on Shoubridge
`
`and DirectPlay is not presently in either of the two ongoing proceedings
`
`challenging claims of the ’344 patent. Second, because the proposed ground
`
`of obviousness over Shoubridge and DirectPlay is not applicable to either
`
`ongoing proceeding, Petitioner does not explain how instituting inter partes
`
`review of claim 12 based on this ground would add to consistency of
`
`outcomes. See Prelim. Resp. 13. We have considered that claim 12 is
`
`already subject to challenge based on DirectPlay and Lin in the related 1970
`
`IPR. However, a determination that claim 12 is unpatentable on this ground
`
`would not be inconsistent with a decision not to institute on the new grounds
`
`proposed here. Moreover, the parallel challenge to claim 12 based on
`
`DirectPlay and Lin in the 1972 IPR is a further reason to exercise our
`
`discretion not to institute the challenge to claim 12 here under § 325(d). See
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00436,
`
`slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (informative); Samsung,
`
`slip op. at 4–5.
`
`Accordingly, for the foregoing reasons, we are persuaded that we
`
`should exercise our discretion to deny institution under § 325(d).
`
`11
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`Case IPR2016-00931
`Patent 6,701,344 B1
`
`
`
`III. CONCLUSION
`
`
`
`We exercise our discretion to deny the Petition under 35 U.S.C.
`
`§ 325(d). Because we deny the Petition, we dismiss Petitioner’s Motion for
`
`Joinder as moot.
`
`IV. ORDER
`
`Accordingly, it is:
`
`ORDERED that, pursuant to 35 U.S.C. § 325(d), an inter partes
`
`review is not instituted for claim 12 of U.S. Patent No. 6,701,344 B1; and
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`
`dismissed as moot.
`
`
`
`12
`
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`
`
`Case IPR2016-00931
`Patent 6,701,344 B1
`
`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
`
`
`
`13
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