Trials@uspto.gov Paper 11
`571-272-7822 Entered: June 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00933
`Patent 6,701,344 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`571-272-7822 Entered: June 23, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00933
`Patent 6,701,344 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`I. INTRODUCTION
`Bungie, Inc. (“Petitioner” or “Bungie”) filed a Petition for inter partes
`review of claims 1–12 and 16–19 of U.S. Patent No. 6,701,344 B1
`(Ex. 1001, “the ’344 patent”). Paper 2 (“Pet.”). Concurrently with its
`Petition, Bungie filed a Motion for Joinder with Activision Blizzard, Inc. v.
`Acceleration Bay, LLC, Case IPR2015-01970 (“the Activision IPR”).
`Paper 3 (“Mot.”). Bungie represents that petitioners in the Activision IPR—
`Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive
`Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. (“the Activision
`Petitioners”)—do not oppose the Motion for Joinder. Mot. 2. Acceleration
`Bay, LLC (“Patent Owner”) did not file an opposition to Bungie’s Motion
`for Joinder after being given an opportunity to do so. See Paper 7. Patent
`Owner elected to waive its Preliminary Response. Paper 10.
`For the reasons explained below, we institute an inter partes review of
`claims 1–12 and 16–19 of the ’344 patent and grant Bungie’s Motion for
`Joinder.
`
`II. RELATED PROCEEDINGS
`Petitioner and Patent Owner identify the following pending judicial
`matters as relating to the ’344 patent: 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., Case No. 1:15-cv-00311-RGA (D. Del., filed
`Apr. 13, 2015). Pet. 4; Mot. 2; Paper 9, 1. Petitioner indicates it is not a
`party to the underlying district court proceedings. Pet. 4; Mot. 2.
`
`2
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`In the Activision IPR, we instituted an inter partes review of
`claims 1–12 and 16–19 of the ’344 patent on the following grounds:
`
`Reference(s)
`DirectPlay1 and Lin2
`Lin
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Challenged Claims
`1–12 and 16–19
`1–11 and 16–19
`
`Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case IPR2015-01970,
`slip op. at 26 (PTAB Mar. 24, 2016) (Paper 9) (“Activision Dec.”). We also
`instituted another inter partes review of the ’344 patent and four other inter
`partes reviews of related patents based on petitions filed by the Activision
`Petitioners:
`
`IPR2015-01951
`IPR2015-01953
`IPR2015-01964
`IPR2015-01996
`IPR2015-01972
`
`U.S. Patent No. 6,714,966 B1
`
`U.S. Patent No. 6,829,634 B1
`U.S. Patent No. 6,701,344 B1
`
`See Pet. 4. Bungie has filed corresponding petitions for inter partes review
`accompanied by motions for joinder with these instituted inter partes
`reviews. See id. at 5; Paper 9, 1.
`
`
`1 Bradley Bargen & Peter Donnelly, Inside DirectX®: In-Depth Techniques
`for Developing High-Performance Multimedia Applications (1998)
`(Ex. 1003) (“DirectPlay”).
`2 Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low
`Message Overhead and High Reliability for Broadcasting on Small
`Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego,
`1999) (Ex. 1004 (Exhibit B)) (“Lin”).
`
`3
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`The Activision Petitioners also have filed six other petitions for inter
`partes review of the ’344 patent and related patents:
`
`IPR2016-00727
`IPR2016-00747
`IPR2016-00726
`IPR2016-00724
`IPR2016-00931
`IPR2016-00932
`
`U.S. Patent No. 6,829,634 B1
`U.S. Patent No. 6,732,147 B1
`U.S. Patent No. 6,910,069 B1
`U.S. Patent No. 6,920,497 B1
`U.S. Patent No. 6,701,344 B1
`U.S. Patent No. 6,714,966 B1
`
`See Pet. 4.
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as those on which we instituted review in the Activision IPR.
`Compare Pet. 15–48, with Activision Dec. 26. Indeed, the Petition filed in
`this proceeding is a “practical copy” of the petition in the Activision IPR
`“with respect to the instituted grounds, including the same claims, analysis
`of the prior art, and expert testimony.” Mot. 1.
`For the same reasons set forth in our institution decision in the
`Activision IPR, we determine that the information presented in Bungie’s
`Petition shows a reasonable likelihood that Petitioner would prevail in
`showing that (a) claims 1–12 and 16–19 would have been obvious over
`DirectPlay and Lin, and (b) claims 1–11 and 16–19 would have been
`obvious over Lin. See Activision Dec. 11–26. Accordingly, we institute an
`inter partes review on the same grounds as those on which we instituted
`review in the Activision IPR. We do not institute inter partes review on any
`other grounds.
`
`4
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of April 22, 2016. See Paper 4. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the Activision IPR, i.e., March 24, 2016. See 37
`C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`As noted, the Petition in this case asserts the same invalidity grounds
`on which we instituted review in the Activision IPR. See Mot. 1, 4. Bungie
`also relies on the same prior art analysis and expert testimony submitted by
`the Activision Petitioners. See id. at 4. Indeed, the Petition is nearly
`identical to the petition filed by the Activision Petitioners with respect to the
`grounds on which review was instituted in the Activision IPR. See id. Thus,
`
`5
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`this inter partes review does not present any ground or matter not already at
`issue in the Activision IPR.
`If joinder is granted, Bungie anticipates participating in the
`proceeding in a limited capacity absent termination of at least one of the
`Activision Petitioners as a party. Id. at 7. Bungie agrees to “coordinate with
`the [Activision] 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.”
`Id. at 8. Bungie also states it “is willing to take a ‘backseat’ role to the
`[Activision] Petitioners, in which it would not file any separate papers
`without consultation with the [Activision] Petitioners and prior authorization
`from the Board.” Id. Because Bungie expects to participate only in a
`limited capacity, Bungie submits that joinder will not impact the trial
`schedule for the Activision IPR. Id. at 6–7.
`We agree with Petitioner that joinder with the Activision IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that an inter partes review is instituted in IPR2016-
`00933;
`FURTHER ORDERED that the Motion for Joinder with IPR2015-
`01970 is granted, and Bungie, Inc. is joined as a petitioner in IPR2015-
`01970;
`
`6
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`FURTHER ORDERED that IPR2016-00933 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2015-
`01970;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2015-01970 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the modified
`Scheduling Order in place for IPR2015-01970 (Paper 15) remains
`unchanged;
`FURTHER ORDERED that in IPR2015-01970, the Activision
`Petitioners and Bungie will file each paper, except for a motion that does not
`involve the other party, as a single, consolidated filing, subject to the page
`limits set forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Bungie
`wishes to file an additional paper to address points of disagreement with the
`Activision Petitioners, Bungie must request authorization from the Board to
`file a motion for additional pages, and no additional paper may be filed
`unless the Board grants such a motion;
`FURTHER ORDERED that the Activision Petitioners and Bungie
`shall collectively designate attorneys to conduct the cross-examination of
`any witness produced by Patent Owner and the redirect of any witness
`produced by the Activision Petitioners and Bungie, within the timeframes set
`forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that the Activision Petitioners and Bungie
`shall collectively designate attorneys to present a consolidated argument at
`the oral hearing, if requested and scheduled;
`
`7
`
`
`
`IPR2016-00933
`Patent 6,701,344 B1
`
`FURTHER ORDERED that the case caption in IPR2015-01970 shall
`be changed to reflect joinder of Bungie as a petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2015-01970.
`
`
`
`FOR PETITIONER:
`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
`
`8
`
`
`
`
`
`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.
`____________
`
`Case IPR2015-019701
`Patent 6,701,344 B1
`____________
`
`
`
`
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00933, has been joined as a
`petitioner in this proceeding.
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