Paper No. ____
`Filed: April 22, 2016
`
`Filed on behalf of: Bungie, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
`
`Andrew S. Brown (asbrown@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY LLC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-00933
`Patent No. 6,701,344
`_____________________________
`
`
`
`MOTION FOR JOINDER WITH IPR2015-01970
`
`
`
`
`Filed: April 22, 2016
`
`Filed on behalf of: Bungie, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
`
`Andrew S. Brown (asbrown@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY LLC.,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2016-00933
`Patent No. 6,701,344
`_____________________________
`
`
`
`MOTION FOR JOINDER WITH IPR2015-01970
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Statement of the Precise Relief Requested .................................................... 1
`
`II.
`
`Background................................................................................................... 2
`
`III. Argument ...................................................................................................... 3
`
`A.
`
`Legal Standard .................................................................................... 3
`
`B.
`
`C.
`
`Bungie’s Motion for Joinder Is Timely ............................................... 4
`
`The Relevant Factors Weigh in Favor of Joinder ................................ 4
`
`i.
`
`ii.
`
`iii.
`
`Joinder is Appropriate ............................................................... 4
`
`No New Grounds Are Presented ............................................... 6
`
`Joinder Will Not Negatively Impact the Activision et al.
`IPR Trial Schedule .................................................................... 6
`
`iv. Discovery and Briefing Can Be Simplified ............................... 7
`
`IV. Conclusion .................................................................................................... 8
`
`
`
`
`
`-i-
`
`
`
`
`
`I.
`
`Statement of the Precise Relief Requested
`
`Bungie, Inc. (“Bungie” or “Petitioner”) submits, concurrently with this
`
`motion, a petition for inter partes review (“Petition”) of claims 1-12 and 16-19 of
`
`U.S. Patent No. 6,701,344 (“the ’344 patent”), which is purportedly assigned to
`
`Acceleration Bay LLC (“Patent Owner”). Bungie respectfully requests joinder
`
`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the concurrently filed
`
`Petition with a pending inter partes review initiated by Activision Blizzard, Inc.,
`
`Electronic Arts Inc., TakeTwo Interactive Software, Inc., 2K Sports, Inc., and
`
`Rockstar Games, Inc. (collectively, “the 2015 Petitioners”), Activision Blizzard,
`
`Inc. et al. v. Acceleration Bay LLC, IPR2015-01970 (“Activision et al. IPR”).
`
`Bungie’s request for joinder is timely because it has been less than one
`
`month since the Board has issued an institution decision in the Activision et al.
`
`IPR. See 37 C.F.R. § 42.122(b). The Petition is also narrowly tailored to the
`
`grounds of unpatentability that were instituted in the Activision et al. IPR, and in
`
`fact is a practical copy of the Activision et al. IPR’s petition with respect to the
`
`instituted grounds, including the same claims, analysis of the prior art, and expert
`
`testimony. In addition, joinder is appropriate because it will efficiently resolve the
`
`validity of the challenged claims of the ’344 patent over the same prior art in a
`
`single proceeding, without prejudicing the parties to the Activision et al. IPR.
`
`1
`
`
`
`
`
`Absent termination of at least one of the 2015 Petitioners as a party to the
`
`proceeding, Bungie anticipates participating in the proceeding in a limited
`
`capacity. Moreover, joinder will have no impact on the trial schedule of IPR2015-
`
`01970 because that IPR is still in its early stages.
`
`Bungie has notified counsel for the 2015 Petitioners regarding the subject of
`
`this motion. Counsel indicated they do not oppose joinder.
`
`II. Background
`
`Patent Owner has asserted the ’344 patent against Activision Blizzard, Inc.,
`
`Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and
`
`Rockstar Games, Inc. in Acceleration Bay LLC v. Activision Blizzard, Inc., Case
`
`No. 1:15-cv-00228-RGA (D. Del., filed Mar. 11, 2015); Acceleration Bay LLC v.
`
`Electronic Arts Inc., Case No. 1:15-cv-00282-RGA (D. Del., filed Mar. 30, 2015);
`
`and Acceleration Bay LLC v. Take-Two Interactive Software, Inc. et al., Case No.
`
`1:15-cv-00311-RGA (D. Del., filed Apr. 13, 2015) (collectively, the “underlying
`
`litigations”). Bungie is not a party to the underlying litigations. Bungie received a
`
`subpoena in connection with the underlying litigations, in response to which it has
`
`filed a motion to quash and for entry of a protective order, which is currently
`
`pending in the Western District of Washington as Case No. 2:15-MC-27.
`
`On September 25, 2015, the 2015 Petitioners filed a petition for inter partes
`
`review challenging claims 1-19 of the ’344 patent, which was assigned Case No.
`
`-2-
`
`
`
`
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`IPR2015-01970. On March 24, 2016 the Board instituted review on claims 1-12
`
`and 16-19. The Petition raises only the grounds of unpatentability that were
`
`instituted in the Activision et al. IPR, and in fact is a practical copy of the
`
`Activision et al. IPR petition with respect to the instituted grounds, including the
`
`same prior art analysis and expert testimony. See Pet.
`
`III. Argument
`
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§315(c). A motion for joinder must be filed within one month of institution of any
`
`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
`
`deciding whether to grant a motion for joinder, the Board considers several factors
`
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`-3-
`
`
`
`
`
`B.
`
`Bungie’s Motion for Joinder Is Timely
`
`Joinder may be requested no later than one month after the institution date of
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`
`because the Board issued its institution decision in the Activision et al. IPR on
`
`March 24, 2016, this Motion for Joinder is timely.
`
`C. The Relevant Factors Weigh in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the Activision et
`
`al. IPR and will not negatively impact the Activision et al. IPR schedule, but a
`
`decision denying joinder could severely prejudice Bungie. Thus, joinder is
`
`appropriate and warranted.
`
`i.
`
`Joinder is Appropriate
`
`Joinder with the Activision et al. IPR is appropriate because the Petition is
`
`limited to the same grounds both presented in the Activision et al. IPR petition and
`
`instituted by the Board. It also relies on the same prior art analysis and expert
`
`testimony submitted by the 2015 Petitioners. Indeed, the Petition is nearly identical
`
`with respect to the grounds raised in the Activision et al. IPR petition, and does not
`
`include any grounds not raised in that petition. Other than certain formalities (e.g.,
`
`mandatory notice information, counsel, etc.) and the removal of certain content set
`
`forth in the Activision et al. IPR petition that was unrelated to the instituted
`
`-4-
`
`
`
`
`
`grounds, the present petition is virtually identical in content to the Activision et al.
`
`IPR petition. Certainly, no substantive differences exist between the present
`
`petition and the Activision et al. IPR petition regarding the instituted grounds.
`
`Joinder is also appropriate because it will promote the just, speedy, and
`
`inexpensive resolution of patentability issues, including the determination of
`
`validity of the challenged claims of the ’344 patent. For example, a final written
`
`decision on the validity of the ’344 patent has the potential to minimize issues in
`
`the underlying litigations, and potentially resolve any litigation—current or
`
`future— altogether with respect to the ’344 patent. Absent joinder, if Patent Owner
`
`and the 2015 Petitioners settle following institution, the PTAB and/or a district
`
`court may be forced to re-adjudicate the same issues on which the 2015 Petitioners
`
`have already shown it is reasonably likely to prevail, which would be a waste of
`
`judicial resources.
`
`Moreover, granting joinder will not prejudice Patent Owner or the 2015
`
`Petitioners, while Bungie could be prejudiced if joinder is denied. As mentioned
`
`above, the Petition does not raise any new ground that is not raised in the
`
`Activision et al. IPR petition. Therefore, joinder should not significantly affect the
`
`timing of the Activision et al. IPR. Also, there should be little to no additional cost
`
`to Patent Owner or the 2015 Petitioners given the overlap in the petitions. On the
`
`other hand, Bungie would be potentially prejudiced if joinder is denied. For
`
`-5-
`
`
`
`
`
`example, absent joinder, Patent Owner may attempt to use aspects of the
`
`Activision et al. IPR against Bungie in district court, even though Bungie was not
`
`able to participate in the Activision et al. IPR to protect its interests.
`
`ii.
`
`No New Grounds Are Presented
`
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents only grounds instituted in Activision et al.
`
`IPR, and is based on the same prior art analysis and expert testimony submitted by
`
`the 2015 Petitioners. The petitions do not differ in any substantive way other than
`
`removing content related only to grounds or claims where the board declined
`
`institution. In similar circumstances, the Board has routinely granted joinder,
`
`because doing so does not introduce any additional arguments, briefing, or need for
`
`discovery. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of
`
`Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep.
`
`16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at
`
`6-10 (Jul. 29, 2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256,
`
`Paper 10 at 4-10 (June 20, 2013).
`
`iii.
`
`Joinder Will Not Negatively Impact the Activision et al. IPR
`Trial Schedule
`
`Because the Petition, essentially copies grounds raised in the Activision et
`
`al. IPR petition, including the prior art analysis and expert testimony provided by
`
`the 2015 Petitioners, joinder will have no substantial effect on the parties, or
`
`-6-
`
`
`
`
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`prevent the Board from issuing a final written decision in a timely manner. The
`
`timing and content of Bungie’s petition and motion for joinder minimize any
`
`impact to the Activision et al. IPR trial schedule. Moreover, as discussed above,
`
`Bungie anticipates participating in the proceeding in a limited capacity absent
`
`termination of a party. For example, if the proceedings are joined and absent
`
`termination of a party, it is anticipated no expert witnesses beyond those presented
`
`by the 2015 Petitioners and Patent Owner will present testimony. Accordingly,
`
`Bungie does not believe that any extension of the schedule will be required by
`
`virtue of joinder of Bungie as a petitioner to this proceeding. Even if the Board
`
`were to determine that joinder would require a modest extension of the schedule,
`
`such an extension is permitted by law and is not a reason for denying joinder. 35
`
`U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
`
`iv. Discovery and Briefing Can Be Simplified
`
`Given the Petition is identical to the Activision et al. IPR petition with
`
`respect to grounds of unpatentability raised instituted by the Board, the Board may
`
`adopt procedures similar to those used in related cases to simplify briefing and
`
`discovery during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell,
`
`IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-
`
`10. Specifically, the Board may order petitioners to consolidate filingsor limit
`
`separate filings, if any, directed only to points of disagreement with the 2015
`
`-7-
`
`
`
`
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`Petitioners (Bungie does not anticipate any), with the understanding that it will not
`
`be permitted any separate arguments in furtherance of those advanced in the 2015
`
`Petitioners’ consolidated filings. See e.g., Hyundai, IPR2014-01543, Paper No. 11
`
`at 5. Further, no additional depositions will be needed and depositions will be
`
`completed within ordinary time limits. Id. Moreover, to the extent that Bungie does
`
`participate in the proceedings, Bungie will coordinate with the 2015 Petitioners to
`
`consolidate filings, manage questioning at depositions, manage presentations at the
`
`hearing, ensure that briefing and discovery occur within the time normally allotted,
`
`and avoid redundancies. Bungie is willing to take a “backseat” role to the 2015
`
`Petitioners, in which it would not file any separate papers without consultation
`
`with the 2015 Petitioners and prior authorization from the Board. These
`
`procedures should simplify briefing and discovery.
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`IV. Conclusion
`
`For the foregoing reasons, Bungie respectfully requests that this motion be
`
`granted and that this proceeding be joined with the Activision et al. IPR.
`
`Dated: April 22, 2016
`
`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-8-
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder by
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`overnight courier (Federal Express or UPS), on this 22nd day of April, 2016, on the
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`Patent Owner at the correspondence address of the Patent Owner as follows:
`
`
`Acceleration Bay LLC
`370 Bridge Parkway
`Redwood City, CA 94065
`
`
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`990 Marsh Road
`Menlo Park, CA 94025
`
`
`
`
`Dated: April 22, 2016
`
`Respectfully submitted,
`
` / Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`-9-
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