UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`________________
`
`Case No. IPR2016-00934
`Patent 6,701,344
`________________
`
`PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`________________
`
`Case No. IPR2016-00934
`Patent 6,701,344
`________________
`
`PATENT OWNER’S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF MATERIAL FACTS. ....................................................... 1
`
`PETITIONER’S MOTION SHOULD BE DENIED AS TO
`GROUND 2 IN ITS PETITION. ..................................................................... 3
`
`A.
`
`Joinder is Not Appropriate as to Ground 2 of the Petition.................... 4
`
`IV. CONCLUSION ................................................................................................ 7
`
`
`
`i
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Ariosa Diagnostics v. ISIS Innovation Ltd.,
`IPR2013-00250, Paper No. 24 (Sept. 3, 2013) ..................................................... 6
`
`Atoptech, Inc. v. Synopsys, Inc.,
`Case No. IPR2015-00760, Paper 14 (Jul. 21, 2015) ............................................. 7
`
`Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
`Case No. IPR2014-00581, Paper 8 (Oct. 14, 2014) ............................................. 4
`
`Dell Inc. v. Network-1 Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (Jul. 29, 2013) ..................................................... 5
`
`Hyundai Motor Co. v. American Vehicular Sciences LLC,
`Case No. IPR2014-01543, Paper No. 11 (Oct. 24, 2014) .................................... 5
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`Case No. IPR2015-01620, Paper 10 (Feb. 2, 2016) ......................................... 3, 4
`
`Samsung Electronics Co. Ltd. v. Affinity Labs of Texas, LLC,
`Case No. IPR2015-00820, Paper 12 (May 15, 2015) ........................................... 5
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`Case No. IPR2013-00495, Paper No. 13 (Sep. 16, 2013) .................................... 5
`
`Other Authorities
`
`37 C.F.R. § 42.6(e) ..................................................................................................... 8
`
`
`
`ii
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`I.
`
`INTRODUCTION
`
`Patent Owner, Acceleration Bay, LLC (“Acceleration Bay” or “Patent
`
`Owner”), respectfully requests that the Board deny, in part, Petitioner Bungie,
`
`Inc.’s Motion for Joinder. Petitioner’s petition for inter partes review of U.S.
`
`Patent No. 6,701,344 (the “‘344 Patent”) – Case No. IPR2016-00934 – filed
`
`concurrently with this Motion, relies on (1) one ground of unpatentability which
`
`was instituted by the Board in Case No. IPR2015-01972 (the “Instituted Petition”)
`
`to which Petitioner seeks joinder and (2) one ground of unpatentability which has
`
`not been instituted. Because Petitioner seeks to join an instituted proceeding while
`
`raising a new ground for which institution has not been granted and which relies on
`
`the deficiencies in the Instituted Petition, its Motion must be denied in part.
`
`II.
`
`STATEMENT OF MATERIAL FACTS.
`1.
`
`Over a year ago, Patent Owner filed patent infringement litigations
`
`against the Original Petitioner1 in the Instituted Petition asserting the ’344 Patent
`
`and other related patents. See 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,
`
`1 “Original Petitioner” refers collectively to Activision Blizzard, Inc., Electronic
`
`Arts Inc., Take-Two Interactive Software, Inc., 2K Sports, Inc., and Rockstar
`
`Games, Inc.
`
`1
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`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).
`
`2.
`
`On September 25, 2015, Original Petitioner filed two petitions for
`
`inter partes review of the ’344 Patent – specifically, IPR2015-01970 and IPR2015-
`
`01972. The Board instituted trial in both proceedings on limited grounds. See
`
`generally, IPR2015-01970, Paper 9; IPR2015-01972, Paper 8.
`
`3.
`
`Petitioner here seeks joinder to IPR2015-01972 (the “Instituted
`
`Petition”) where the Board instituted proceedings against claims 1-11 and 16-19
`
`based on an obviousness ground under the non-patent reference, Shoubridge.2
`
`IPR2015-01972, Paper 8.
`
`4.
`
`In the institution decision for the Instituted Petition, the Board
`
`rejected the ground challenging claims 1-12 and 16-19 as obvious over the
`
`combination of DirectPlay3 and Shoubridge. IPR2015-01972, Paper 8.
`
`5.
`
`Petitioner acknowledges that, just one day before this Motion,
`
`Original Petitioner filed a new petition for inter partes review, seeking joinder to
`
`the Instituted Petition. Motion at 4. In the new petition – Case No. IPR2016-
`
`
`2 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, in 3
`
`IEEE INT’L CONF. ON COMMC’NS CONF. REC. 1381-86 (Montreal, 1997).
`
`3 Bradley Bargen & Peter Donnelly, INSIDE DIRECTX, (Microsoft Press, 1998).
`
`2
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`00931 – Original Petitioner challenges claim 12 of the ‘344 on two grounds.
`
`Specifically, obviousness over Shoubridge – as Petitioner challenges here – and
`
`obviousness over the combination of DirectPlay and Shoubridge. See generally,
`
`IPR2016-00931, Petition (Paper 2); Motion at 4.
`
`6.
`
`The new challenges presented in IPR2016-00931, which mirror the
`
`previously raised ground raised by Petitioner here, is based on Patent Owner’s
`
`response to the Instituted Petition and the Board’s guidance in its institution
`
`decision for the same. See Motion for Joinder in IPR2016-00931 at 10.
`
`III. PETITIONER’S MOTION SHOULD BE DENIED AS TO GROUND 2
`IN ITS PETITION.
`
`Whether to grant joinder must be determined on a “case-by-case basis,
`
`taking into account the particular facts of each case” and may be “authorized when
`
`warranted, but the decision to grant joinder is discretionary.” LG Electronics, Inc.
`
`v. ATI Technologies ULC, Case No. IPR2015-01620, Paper 10 at 5 (Feb. 2,
`
`2016)(citation omitted). However, where the petitioner seeking joinder is
`
`ultimately seeking a “second chance” for the instituted petition that was “partially
`
`inadequate,” the Board has frequently denied such motions and petitions noting
`
`their potential effect on the “Board’s limited resources” and the concerns
`
`surrounding the petitioner using the Board’s “prior decision as a roadmap to
`
`remedy [the] prior, deficient challenge.” LG Electronics, Inc., IPR2015-01620,
`
`3
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`Paper 10 at 7-8 (citations omitted); Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
`
`Case No. IPR2014-00581, Paper 8 at 12-13 (Oct. 14, 2014). As demonstrated
`
`herein, Petitioner’s Motion for Joinder should be denied with respect to “Ground 2:
`
`claim 12 is obvious in view of the knowledge of a POSITA.”
`
`A.
`
`Joinder is Not Appropriate as to Ground 2 of the Petition.
`
`Petitioner acknowledges that its underlying petition “raises the same ground
`
`of unpatentability that was instituted in the Activision et al. IPR [to which it seeks
`
`joinder] with only the addition of Ground 2 directed to dependent claim 12 in
`
`view of the same Shoubridge reference.” Motion at 5 (emphasis added). While
`
`Original Petitioner recently filed a new petition for inter partes review raising two
`
`new grounds – one of which mirrors Ground 2 here – as Petitioner admits, that
`
`petition remains pending and also seeks joinder to the Instituted Petition. Motion
`
`at 4. Joinder under such circumstances should not be permitted.
`
`Specifically, while Petitioner asserts that its additional ground challenging
`
`claim 12 is “nominal” and “relies on the same prior art analysis and expert as the
`
`Activision et al IPR,” this is a severe understatement. Motion at 8. The arguments
`
`Petitioner presents with respect to Ground 2 take into account both Patent Owner’s
`
`response and the Board’s decision in the Instituted Petition. In particular,
`
`Petitioner’s arguments in support of Ground 2 mirror those presented by the
`
`Original Petitioner in its new pending petition raising the same challenge.
`
`4
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`Compare IPR2016-00934, Paper 2 at 32-36 with IPR2016-00931, Paper 2 at 27-30.
`
`In its motion for joinder in that proceeding (specifically, IPR2016-00931), the
`
`Original Petitioner admits that the new grounds take into account the Board’s
`
`decision. See IPR2016-00931, Paper 3 at 10. Therefore, Petitioner here is simply
`
`seeking to utilize the Board’s institution decision in the Instituted Petition as a
`
`“guide to remedy deficiencies in the earlier filed petition.” Samsung Electronics
`
`Co. Ltd. v. Affinity Labs of Texas, LLC, Case No. IPR2015-00820, Paper 12 at 4
`
`(May 15, 2015).
`
`Incredibly, the cases Petitioner relies upon in contending that the “Board []
`
`routinely grant[s] 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 Motion
`
`at 10) relate to instances where the petitioner was solely challenging the same
`
`grounds instituted in the prior proceeding. Hyundai Motor Co. v. American
`
`Vehicular Sciences LLC, Case No. IPR2014-01543, Paper No. 11 at 2-4 (Oct. 24,
`
`2014) (raising only certain of the instituted grounds in “identical” form); Sony
`
`Corp. of Am. v. Network-1 Sec. Solutions, Inc., Case No. IPR2013-00495, Paper
`
`No. 13 at 5 (Sep. 16, 2013) (“Petitioners’ arguments regarding the asserted prior
`
`art references are identical to the arguments made [in the other] petitions.”
`
`(emphasis added)); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper
`
`No. 17, at 7 (Jul. 29, 2013) (“Dell in its Petition asserts the same grounds of
`
`5
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`unpatentability as those on which a trial was instituted . . . .”). The only case
`
`Petitioner cites to that involved “new grounds” being presented is inapposite as it
`
`relates to the same petitioner seeking joinder to the instituted proceeding to which
`
`it was already a party and more importantly, involved the addition of new prior art
`
`and claims. Ariosa Diagnostics v. ISIS Innovation Ltd., IPR2013-00250, Paper No.
`
`24, at 2-3 (Sept. 3, 2013). Here, Petitioner does not raise new prior art and even
`
`more significantly, seeks to challenge a claim that was already subject to the
`
`instituted proceeding. To permit Petitioner to proceed would be unfairly
`
`prejudicial to Patent Owner as similarly situated petitioners would be able, in
`
`future petitions, to expand the scope of instituted proceedings under the guise of a
`
`third party joinder which takes into account the Board’s decision and inadequacies
`
`of the instituted petition.
`
`Petitioner is unquestionably seeking to utilize the Board’s decision in the
`
`Instituted Petition to remedy the deficiencies therein. Incredibly, Petitioner does
`
`not cite to one instance where the Board has permitted joinder under similar
`
`circumstances and specifically where the original petitioners and the new petitioner
`
`are simultaneously, through joinder motions, seeking to remedy the “prior,
`
`deficient challenge” based on the same prior art and a claim that was already
`
`subject to the Board’s review. As the Board has cautioned, it is “mindful that
`
`permitting second changes without constraint undermines judicial efficiency by
`
`6
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`expending the Board’s limited resources on issues that were not presented
`
`adequately the first time around.” Atoptech, Inc. v. Synopsys, Inc., Case No.
`
`IPR2015-00760, Paper 14 at *7-9 (Jul. 21, 2015). For these reasons, Petitioner’s
`
`joinder request based Ground 2 of its underlying petition must be denied.
`
`IV. CONCLUSION
`
`For the reasons outlined above, Patent Owner respectfully requests that that
`
`Board deny, in part, Petitioner’s Motion for Joinder as it relates to Ground 2 of the
`
`underlying petition for inter partes review.
`
`
`Dated: May 25, 2016
`
`(Case No. IPR2016-00934)
`
`Respectfully submitted,
`
`
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`jhannah@kramerlevin.com
`Michael Lee (Reg. No. 63,941)
`mhlee@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`Shannon Hedvat (Reg. No. 68,417)
`shedvat@kramerlevin.com
`Jeffrey Price (Reg. No. 69,141)
`jprice@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9185 Fax: 212.715.8382
`
`Attorneys for Patent Owner
`
`7
`
`
`
`Patent Owner’s Opposition to Motion for Joinder
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Patent Owner’s Opposition to Motion for Joinder
`
`was served on May 25, 2016, by filing this document through the Patent Review
`
`Processing System as well as delivering it via electronic mail upon the following
`
`counsel of record for Petitioner:
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`
`Additionally, a copy of the foregoing document was served via overnight delivery
`
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`asbrown@wsgr.com
`
`upon the following counsel of record for Petitioner:
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`mrosato@wsgr.com
`
`Andrew S. Brown
`WILSON SONSINI GOODRICH
` & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`asbrown@wsgr.com
`
`
`
`8
`
`
`
`
`
`
`
`/James Hannah/
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road,
`Menlo Park, CA 94025
`(650) 752-1700
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