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.
`
`_____________________________
`
`Patent No. 6,701,344
`_____________________________
`
`
`
`MOTION FOR JOINDER WITH IPR2015-01972
`
`
`
`
`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.
`
`_____________________________
`
`Patent No. 6,701,344
`_____________________________
`
`
`
`MOTION FOR JOINDER WITH IPR2015-01972
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Statement of the Precise Relief Requested .................................................... 1
`
`II.
`
`Background................................................................................................... 2
`
`III. Argument ...................................................................................................... 5
`
`A.
`
`Legal Standard .................................................................................... 5
`
`B.
`
`C.
`
`Bungie’s Motion for Joinder Is Timely ............................................... 6
`
`The Board Should Grant Bungie’s Motion for Joinder ........................ 6
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`Joinder is Appropriate ............................................................... 6
`
`Public Policy Considerations Support Joinder ........................... 8
`
`The Grounds Presented Are Either Identical or Closely
`Related To the Already-Instituted Grounds ............................... 9
`
`Joinder Will Not Negatively Impact the Activision et al.
`IPR Trial Schedule .................................................................. 12
`
`v.
`
`Discovery and Briefing Can Be Simplified ............................. 12
`
`IV. Conclusion .................................................................................................. 13
`
`
`
`
`
`-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 pending inter partes review IPR2015-01972.
`
` On September 25, 2015, Activision Blizzard, Inc., Electronic Arts Inc.,
`
`TakeTwo Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc.
`
`(collectively, “the 2015 Petitioners”), initiated inter partes review of the ’344
`
`patent. Activision Blizzard, Inc. et al. v. Acceleration Bay LLC,IPR2015-01972
`
`(hereafter, “Activision et al. IPR”). The Board instituted review in the Activision
`
`et al. IPR on March 24, 2016 relying on the teachings of the Shoubridge
`
`reference.1
`
`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
`
`
`1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, 3
`
`IEEE Int’l Conf. on Comms. Conf. Rec. 1381–86 (1997) (“Shoubridge”).
`
`1
`
`
`
`
`
`ground of unpatentability that was instituted in the Activision et al. IPR—with a
`
`nominal addition of a single dependent claim in view of the same Shoubridge prior
`
`art reference on which the Board instituted trial in IPR2015-01972. Bungie’s
`
`petition, in fact, is practically a copy of the Activision et al. IPR petition with
`
`respect to its instituted ground, including the same 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 causing undue burden or prejudice to the parties
`
`to the Activision et al. IPR.
`
`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 the
`
`Activision et al. IPR because that IPR is still in its early stages.
`
`Bungie has notified counsel for the 2015 Petitioners regarding the subject of
`
`this motion. Counsel have 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. (collectively “Defendants”) in Acceleration Bay LLC v.
`
`Activision Blizzard, Inc., Case No. 1:15-cv-00228-RGA (D. Del., filed Mar. 11,
`
`-2-
`
`
`
`
`
`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. 2:16-MC-27.
`
`On September 25, 2015, the 2015 Petitioners filed a petition for inter partes
`
`review— Activision et al. IPR—challenging claims 1-19 of the ’344 patent, which
`
`included two grounds: Ground 1: claims 1-19 are obvious over DirectPlay2 and
`
`Shoubridge; and Ground 2: claims 1-11 and 16-19 are obvious over Shoubridge in
`
`view of the knowledge of a person having ordinary skill in the art (“POSITA”). On
`
`March 24, 2016, the Board instituted review of Ground 2 for all claims challenged
`
`thereunder (i.e., claims 1-11 and 16-19), but denied institution for Ground 1.3
`
`
`2 Bradley Bargen & Peter Donnelly, Inside DirectX®: In-Depth Techniques for
`
`Developing High-Performance Multimedia Applications (1998) (“DirectPlay”).
`
`3 Also on September 25, 2015, the same 2015 Petitioners, filed a petition for
`
`inter partes review—which was assigned Case No. IPR2015-01970 (“the ’1970
`
`-3-
`
`
`
`
`
`Recently, on April 21, 2016, the same 2015 Petitioners, filed a petition for
`
`inter partes review—which was assigned Case No. IPR2016-00931 (“the ’931
`
`IPR”)—challenging claim 12 of the ’344 patent on two grounds: Ground 1: claim
`
`12 is obvious over Shoubridge in view of the knowledge of a POSITA; and
`
`Ground 2: claim 12 is obvious over Shoubridge in view of DirectPlay.
`
`Concurrently, with its petition for the ’931 IPR, the 2015 Petitioners filed a motion
`
`requesting joinder of the ’931 IPR with the Activision et al. IPR, arguing that
`
`joinder of the limited grounds raised therein is appropriate as it will not delay
`
`resolution of the instituted IPRs and that granting its motion will “secure the just
`
`speedy, and inexpensive resolution” of the unpatentability of the 344 patent. See
`
`Activision Blizzard, Inc. et al. v. Acceleration Bay, LLC, IPR2016-00931, Paper 3
`
`at 1 (April 21, 2016) (citation omitted).
`
`Concurrently with this Motion, Bungie is filing its Petition challenging
`
`claims 1-12 and 16-19 of the ’344 patent under 35 U.S.C. § 103 as unpatentable
`
`over Shoubridge in view of the knowledge of a POSITA. Bungie’s concurrent
`
`Petition raises the following grounds: Ground 1: claims 1-11 and 16-19 are
`
`obvious over Shoubridge in view of the knowledge of a person having ordinary
`
`
`IPR”)—also challenging claims 1-19 of the ’344 patent on separate grounds. On
`
`March 24, 2016, the Board instituted review in the ‘1970 IPR.
`
`
`
`-4-
`
`
`
`
`
`skill in the art (“POSITA”); and Ground 2: claim 12 is obvious over Shoubridge
`
`in view of the knowledge of a POSITA. As such, the Petition raises the same
`
`ground of unpatentability that was instituted in the Activision et al. IPR with only
`
`the addition of Ground 2 directed to dependent claim 12 in view of the same
`
`Shoubridge reference.
`
`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). Section “315(c) encompasses both party joinder and issue joinder, and, as
`
`such, permits joinder of issues, including new grounds of unpatentability,
`
`presented in the petition that accompanies the request for joinder.” Zhongshan
`
`Broad Ocean Motor Co., et al. v. Nidec Motor Corp., IPR2015-00762, Paper 16 at
`
`5 (October 5, 2015). 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.
`
`-5-
`
`
`
`
`
`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)).
`
`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 Board Should Grant Bungie’s Motion for Joinder
`
`The Board should exercise its discretion and grant this Motion for Joinder of
`
`the Petition with the already instituted Activision et al. IPR proceeding because
`
`joinder provides a vehicle to efficiently consider related prior art issues and avoid
`
`any unfair prejudice to Patent Owner and Bungie.
`
`i.
`
`Joinder is Appropriate
`
`Joinder with the Activision et al. IPR is appropriate because the Petition
`
`presents virtually the same issues already 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 directed
`
`to the same Shoubridge reference and is nearly identical with respect to the ground
`
`-6-
`
`
`
`
`
`instituted in the Activision et al. IPR petition. In fact, the present Petition is
`
`virtually identical in content to the Activision et al. IPR petition other than: (1)
`
`addition of claim 12 to the challenged claims; (2) certain formalities (e.g.,
`
`mandatory notice information, counsel, etc.); and (3) the removal of certain content
`
`set forth in the Activision et al. IPR petition that was unrelated to the instituted
`
`ground.
`
`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 the underlying litigations—or
`
`any future litigation—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 relies on the same prior art Shoubridge-based grounds raised in
`
`the Activision et al. IPR petition. Therefore, joinder should not significantly affect
`
`-7-
`
`
`
`
`
`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. As
`
`discussed, the only addition to the present Petition over that of the Activision et al.
`
`IPR petition is the inclusion of dependent claim 12 to the challenged claims to the
`
`instituted ground. Patent Owner should not be prejudiced by this nominal addition
`
`because, for example, (1) it relies on the same prior art analysis and expert as the
`
`Activision et al. IPR; and (2) the Patent Owner is already defending this claim in
`
`the ’1970 petition, which is on the same schedule as the Activision et al. petition.
`
`On the other hand, Bungie would be potentially prejudiced if joinder is denied. For
`
`example, absent joinder, Patent Owner may attempt to use aspects of the
`
`Activision et al. IPR against Bungie in future district court litigation, even though
`
`Bungie was not able to participate in the Activision et al. IPR to protect its
`
`interests.
`
`ii.
`
`Public Policy Considerations Support Joinder
`
`Joinder is further supported by public policy considerations and the public
`
`interest in seeing invalid patents formally invalidated. The Board is charged with
`
`considering the “effect...on the economy” and “the integrity of the patent system,”
`
`among other considerations, when implementing and applying its rules, including
`
`those relating to joinder. See 35 U.S.C. §316(b); see also 37 C.F.R. §1.56(a) (“A
`
`patent by its very nature is affected with a public interest. The public interest is
`
`-8-
`
`
`
`
`
`best served...when, at the time an application is being examined, the Office is
`
`aware of and evaluates the teachings of all information material to patentability.”).
`
`There is an “important public interest in permitting full and free competition in the
`
`use of ideas which are in reality a part of the public domain” and a corresponding
`
`“strong federal policy favoring free competition in ideas which do not merit patent
`
`protection.” Lear, Inc. v. Adkins, 395 U.S. 653, 656, 670 (1969). The Supreme
`
`Court recently confirmed these policies, stating that although the “public
`
`interest...favors the maintenance of a well-functioning patent system,” “the ‘public’
`
`also has a ‘paramount interest in seeing that patent monopolies...are kept within
`
`their legitimate scope.’ Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S.
`
`Ct. 843, 851-52 (2014) (quoting Precision Instrument Mfg. Co. v. Auto. Maint.
`
`Mach. Co., 324 U.S. 806, 816 (1945)).
`
`These important public policy considerations further support joinder
`
`because, as shown in the Petition, all of claims 1-12 and 16-19 are invalid under
`
`§103 based on Shoubridge.
`
`iii. The Grounds Presented Are Either Identical or Closely
`Related To the Already-Instituted Grounds
`
`The Petition does not present any new prior art ground of unpatentability –
`
`all grounds are based on the same Shoubridge reference on which the Activision et
`
`al. IPR was instituted. As mentioned above, the Petition presents the ground raised
`
`in the Activision et al. IPR petition, and is based on the same prior art analysis and
`
`-9-
`
`
`
`
`
`expert testimony submitted by the 2015 Petitioners. The petitions do not differ in
`
`any substantive way other than (1) adding dependent claim 12 to the challenged
`
`claims and (2) removing content related to the ground where the board declined
`
`institution.
`
`Practically speaking, there is little, if anything, “new” being added by this
`
`Petition over what was instituted in the Activision et al. IPR. While an additional
`
`claim is being challenged, the challenges are based on the same prior art reference
`
`and relies upon the testimony of the same witness.
`
`Moreover, the Petition presents separate grounds such that the Board may
`
`assess the appropriateness of joinder on a ground-by-ground basis. See 37 C.F.R.
`
`§ 42.108(a). Ground 1 in the current Petition is identical to the already-instituted
`
`ground, so presents no new issues and will have no impact on the trial schedule.
`
`Additional dependent claim 12 is merely a dependent claim that recites facially
`
`obvious content to its parent claim, which is being challenged under the instituted
`
`ground in the Activision et al. IPR., and should similarly have minimal, if any,
`
`impact on the trial schedule.
`
`In circumstances similar to those presented here, the Board has routinely
`
`granted joinder because doing so does not introduce any new analysis of the prior
`
`art, new witness, or increase the complexity of the prior IPR. See, e.g., Hyundai,
`
`IPR2014-01543, Paper No. 11 at 2-4 (Oct. 24, 2014) (granting joinder where the
`
`-10-
`
`
`
`
`
`new petition purportedly copied the instituted grounds, relied on the same
`
`declaration testimony, and did not increase the complexity of the instituted IPR);
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13
`
`at 5-9 (Sep. 16, 2013) (granting joinder where new petition asserted the same
`
`grounds of unpatentability, presented an identical analysis of the prior art, and used
`
`the same declaration testimony); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-
`
`00385, Paper No. 17, at 6-10 (Jul. 29, 2013) (granting joinder where new petition
`
`asserted the same prior art references, relied upon the same declaration testimony
`
`as the instituted grounds, and asserted the same grounds of unpatentability).
`
`Further, the Board has granted joinder where (similar to the Petition) the new
`
`petition is only adding claims that depend from the previously challenged claims,
`
`relies on the same declarant, and uses much of the same prior art. Ariosa
`
`Diagnostics v. ISIS Innovation LTD, IPR2013-00250, Paper No. 24, at 2-5 (Sept. 3,
`
`2013) (granting institution where new petition involved same patent, challenged
`
`claims that were dependent on the claims previously challenged, relies on much of
`
`the same prior art, and relied upon same declarants). Bungie respectfully requests
`
`that the Board follow prior practice of granting joinder where the new petition
`
`recites practically the same ground as presented in the prior IPR.
`
`-11-
`
`
`
`
`
`iv.
`
`Joinder Will Not Negatively Impact the Activision et al. IPR
`Trial Schedule
`
`Because the Petition, essentially copies the instituted ground from the
`
`Activision et al. IPR petition, joinder will have no substantial effect on the parties,
`
`or 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).
`
`v.
`
`Discovery and Briefing Can Be Simplified
`
`Given the Petition is nearly identical to the Activision et al. IPR petition
`
`with respect to grounds of unpatentability raised in that petition and 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,
`
`-12-
`
`
`
`
`
`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 filings, or limit separate filings, if any, directed only to points of
`
`disagreement with the 2015 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.
`
`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. However,
`
`if the Board identifies concerns due to the addition of dependent claim 12 to the
`
`-13-
`
`
`
`
`
`challenged claims over what was instituted in the Activision et al. IPR, Bungie
`
`requests the Board, at a minimum, grant joinder and institution on claims 1-11 and
`
`16-19 as being unpatentable based on Shoubridge (i.e., proposed Ground 1).
`
`Dated: April 22, 2016
`
`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-14-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing Motion for Joinder by
`
`overnight courier (Federal Express or UPS), on this 22nd day of April, 2016, on the
`
`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
`
`
`
`-15-
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