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 B1
`________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107
`
`
`
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`BUNGIE, INC.,
`Petitioner
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner
`________________
`
`Case No. IPR2016-00934
`Patent 6,701,344 B1
`________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`THE ‘344 PATENT IS DIRECTED TO A COMPUTER
`NETWORK WITH AN M-REGULAR, INCOMPLETE
`GRAPH TOPOLOGY ..................................................................................... 4
`
`III. CLAIM CONSTRUCTION .......................................................................... 10
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO
`NOT INVALIDATE THE CLAIMS, AND WHY INTER
`PARTES REVIEW SHOULD NOT BE INSTITUTED ON
`PROPOSED GROUND 2 .............................................................................. 10
`
`A.
`
`The Board Should Deny the Petition Under 35 U.S.C.
`§ 325(d) ................................................................................................. 11
`
`1.
`
`2.
`
`3.
`
`The Instant Petition Recycles the Same Prior Art
`Previously Presented to the Office ............................................ 11
`
`Petitioner Provides Insufficient Justification for
`Challenging Claim 12 on a Ground Involving
`Shoubridge ................................................................................ 13
`
`The Relevant Factors Weigh in Favor of Denial
`Under § 325(d) .......................................................................... 14
`
`B.
`
`Shoubridge in View of the Knowledge of the POSITA
`Does Not Disclose “wherein the interconnections of
`participants form a broadcast channel for a game of
`interest” ................................................................................................. 16
`
`CONCLUSION .............................................................................................. 20
`
`
`
`
`i
`
`V.
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Activision Blizzard, Inc. v. Acceleration Bay, LLC,
`Case IPR2015-01972, Paper 2 (P.T.A.B. Sept. 25, 2015) .................................. 11
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 18
`
`Dow Chem. Co. v. United States,
`226 F.3d 1334 (Fed. Cir. 2000) .......................................................................... 17
`
`Intelligent Bio-Sys., Inc., v. Illumina Cambridge Ltd.,
`Case IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) ................................ 13
`
`Medtronic, Inc., v. Nuvasive, Inc.,
`Case IPR2014-00487, Paper 8 (P.T.A.B. Sept. 11, 2014) ............................ 11, 13
`
`Medtronic, Inc., v. Robert Bosch Healthcare Sys., Inc.,
`Case IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014) ................................ 12
`
`Phillips v. AWH Corp.,
`415 F. 3d 1303 (Fed. Cir. 2005) ......................................................................... 17
`
`Travelocity.com L.P. v. Conos Techs., LLC,
`CBM2014-00082, Paper 12 (P.T.A.B. Oct. 16, 2014) ......................................... 1
`
`Unified Patents, Inc., v. Personalweb Techs., LLC,
`Case IPR2014-00702, Paper 13 (P.T.A.B. July 24, 2014) ................................. 12
`
`Unilever, Inc., v. The Procter & Gamble Co.,
`Case IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) ................................... 12
`
`Statutes
`35 U.S.C. § 325(d) ............................................................................................passim
`
`Other Authorities
`
`157 Cong. Rec. S1360-S1394 (March 8, 2011) ....................................................... 14
`
`ii
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`I.
`
`INTRODUCTION
`
`Petitioner, in two petitions filed on the same day, seeks inter partes review
`
`of all of the claims (i.e., claims 1–19) in U.S. Patent No. 6,701,344 B1 (the “’344
`
`Patent”), which issued to The Boeing Company on March 2, 2004, based on an
`
`application filed in the USPTO on July 31, 2000. Petitioner seeks to join an
`
`instituted inter partes review proceeding—IPR2015-01972—filed by Activision
`
`Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2K
`
`Sports, Inc. and Rockstar Games, Inc. (the “Original Petitioners”), but Petitioner
`
`raises an additional ground not previously considered by the Board.1 This
`
`preliminary response focuses solely on this new proposed ground. See
`
`Travelocity.com L.P. v. Conos Techs., LLC, CBM2014-00082, Paper 12 at 10
`
`(P.T.A.B. Oct. 16, 2014) (“[N]othing may be gleaned from the Patent Owner’s
`
`challenge or failure to challenge the grounds of unpatentability for any particular
`
`reason.”).
`
`The ‘344 Patent is one of several patents obtained by Boeing directed to
`
`novel computer network technology, developed by inventors Fred Holt and Virgil
`
`Bourassa more than sixteen years ago, that solved critical scalability and
`
`reliability problems associated with the real-time sharing of information among
`
`1 The additional ground raised by Petitioner is also raised in IPR2016-00931 filed
`
`by the Original Petitioners the day before the instant petition was filed.
`
`1
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`
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`multiple widely distributed computers.2 This innovative technology enabled
`
`large-scale, unlimited online collaborations with numerous participants
`
`continually joining and leaving—with applications ranging from aircraft design
`
`development to multi-player online games. A core feature of the patented
`
`technology as claimed in the ‘344 Patent is the m-regular, incomplete graph
`
`network topology.
`
`The instant petition attacks the validity of the ‘344 Patent on obviousness
`
`grounds based on the non-patent Shoubridge reference and the alleged knowledge
`
`of a POSITA. While Petitioner relies in on the instituted grounds from IPR2015-
`
`01972 to form its proposed Ground 1, proposed Ground 2 presents an obviousness
`
`challenge to claim 12 of the ‘344 Patent, a challenge that was not explicitly raised
`
`
`2 In addition to the instant petition and another petition (IPR2016-00933), which
`
`also targets the ‘344 patent, Petitioner also filed two other sets of dual petitions
`
`seeking inter partes review of two other patents obtained by Boeing that concern
`
`the computer network technology invented by Fred Holt and Virgil Bourassa: U.S.
`
`Patent No. 6,714,966 (IPR2016-00935 and IPR2016-00936), and U.S. Patent No.
`
`6,829,634 (IPR2016-00963 and IPR2016-00964). All six petitions filed by
`
`Petitioner in its three sets of dual petitions rely on the same three references and
`
`seek joinder to instituted proceedings.
`
`2
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`
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`by the Original Petitioners in the instituted proceeding.3 This Preliminary
`
`Response is limited to addressing the allegation that there is a reasonable
`
`likelihood that claim 12 is unpatentable over the combination of Shoubridge and
`
`the knowledge of a POSITA. In particular, Patent Owner requests that the Board
`
`decline to institute trial on proposed Ground 2 using its discretion under 35 U.S.C.
`
`§ 325(d) and because the proposed combination does not yield the invention
`
`claimed in the ‘344 Patent.
`
`First, the Board should exercise its discretion under 35 U.S.C. § 325(d) to
`
`deny institution of trial on proposed Ground 2 because the Shoubridge reference,
`
`and arguments substantially similar to those presented here, have already been
`
`presented to the USPTO. As an initial matter, Shoubridge was listed in the
`
`USPTO Examiner’s search during prosecution of the ‘344 Patent. More
`
`importantly, however, the Board has already considered Shoubridge with respect to
`
`claim 12 in the case Petitioner now seeks to join, IPR2015-01972. Although that
`
`case presented Shoubridge in combination with another reference, Bargen et al.,
`
`INSIDE DIRECTX (“Direct Play,” Ex. 1103), there is no dispute that the exact same
`
`3 Petitioner represents that the “Petition is a practical copy of the content related to
`
`the instituted grounds in IPR2015-01972, with an additional ground challenging
`
`the patentability of claim 12 under the same prior art that the Board relied on in
`
`instituting IPR2015-01972.” Petition at 1.
`
`3
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`reference was already considered with respect to this claim. Additionally,
`
`precisely the same ground, Shoubridge in view of the alleged knowledge of the
`
`POSITA, was applied in the Petition to nearly every other claim of the ‘344 Patent.
`
`Petitioner provides no explanation as to why the Board should consider its
`
`approach, which not only uses the Board’s original institution decision as a
`
`roadmap but also appears calculated to harass Patent Owner by way of piecemeal
`
`presentation of unpatentability theories provided in serial Petitions.
`
`Second, the Petitioner’s proposed Ground 2 fails to demonstrate a
`
`reasonably likelihood of success on the merits because Shoubridge in view of the
`
`knowledge of a POSITA at the time of the invention does not disclose “wherein
`
`the interconnections of participants form a broadcast channel for a game of
`
`interest.”
`
`Given Petitioner’s failure to establish a reasonable likelihood that it would
`
`prevail with respect to at least one of the challenged ‘344 Patent claims, and given
`
`the tactical liberties taken by Petitioner, Patent Owner respectfully requests that the
`
`Board deny inter partes review as to Ground 2.
`
`II. THE ‘344 PATENT IS DIRECTED TO A COMPUTER
`NETWORK WITH AN M-REGULAR, INCOMPLETE
`GRAPH TOPOLOGY
`
`As discussed in the Background of the Invention section of the ‘344 Patent
`
`(the “Background”), point-to-point network protocols, such as UNIX pipes,
`
`4
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`TCP/IP, and UDP, allow processes on different computers to communicate via
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`point-to-point connections. Ex. 1101 at 00042, 1:44-46. However, the
`
`interconnection of all participants using point-to-point connections, while
`
`theoretically possible, does not scale well as the number of participants grows. Id.
`
`at 1:46-49. Because each participating process needs to manage its direct
`
`connections to all other participating processes, the number of possible participants
`
`is limited to the number of direct connections a given machine, or process, can
`
`support. Id. at 1:49-55.
`
`On the other end of the connectivity spectrum are client/server middleware
`
`systems that have a single server that does not communicate with any other server
`
`and coordinates all communications between various clients who are sharing the
`
`information. Id. at 1:58-60. These systems rely on the sole server to function as a
`
`central authority for controlling all access to shared resources. Id. at 1:60-62.
`
`Such systems are also not well suited to sharing of information among many
`
`participants, but for different reasons than point-to-point networks. When a client
`
`stores information to be shared at the server, every other client must poll the server
`
`to determine that the new information is being shared, which places a very high
`
`overhead on the communications network. Id. at 1:65-2:4. Alternatively, each
`
`client can register a callback with the server, which the server then invokes when
`
`new information is available to be shared. Id. at 2:4-6. However, such callback
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`5
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`techniques create a performance bottleneck. A single server needs to effect a
`
`callback to each and every client whenever new information is to be shared. In
`
`addition, the reliability of the entire information sharing depends upon that of a
`
`single server; failure at the single server prevents all communications between any
`
`clients. Id. at 2:7-13.
`
`The ‘344 Patent is one of several patents obtained by Boeing directed to its
`
`novel computer network technology that solved the central bottleneck problem of
`
`client/server networks, as well as the problems of management complexity and
`
`limited supported connections of point-to-point networks. More particularly, the
`
`‘344 Patent describes using a broadcast channel that overlays a point-to-point
`
`network where each node (participant) is connected to some -- but not all --
`
`neighboring network nodes. For example, Fig. 2 of the ‘344 Patent, reproduced
`
`below, shows a network of twenty participants, where each participant is connected
`
`to four other participants:
`
`6
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`
`Ex. 1101 at 00004. Such a network arrangement, where each node in the network,
`
`is connected to the same number of other nodes, is known as an m-regular
`
`network. Id. at 00043, 4:38-39. That is, a network is m-regular when each node is
`
`connected to m other nodes and a computer would become disconnected from the
`
`broadcast channel only if all m of the connections to its neighbouring nodes fail.
`
`Id. at 4:39-42. In Fig. 2 above, m=4 because each node is connected to four other
`
`nodes of the network. A network is said to be m-connected when it would take a
`
`failure of m computers to divide the graph into disjoint sub-graphs, i.e., separate
`
`broadcast channels. Id. at 4:42-45.
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`7
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`A key attribute of the computer network claimed in the ‘344 Patent is that
`
`the number of network participants N (in Fig. 2, this is twenty) is always greater
`
`than the number of connections m to each participant (in Fig. 2, this is four). Id. at
`
`00004, Fig. 2. This network topology where no node is connected to every other
`
`node is an incomplete graph.
`
`Figs. 3A and 3B of the ‘344 Patent, reproduced below, illustrate the process
`
`of breaking connections between nodes (i.e., “edges”) in a primitive complete
`
`graph network to add new node Z to build the inventive incomplete graph.
`
`
`Ex. 1101 at 00005. As described in the ‘344 Patent, when a computer seeks to join
`
`a broadcast channel, previously connected computers break connections to each
`
`other in favor of new connections to the seeking computer:
`
`Thus, some connections between computers need to be broken so that
`the seeking computer can connect to four computers. In one
`embodiment,
`the broadcast
`technique
`identifies
`two pairs of
`
`8
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`computers that are currently connected to each other. Each of these
`pairs of computers breaks the connection between them, and then
`each of the four computers (two from each pair) connects to the
`seeking computer. FIGS. 3A and 3B illustrate the process of a new
`computer Z connecting to the broadcast channel. FIG. 3A illustrates
`the broadcast channel before computer Z is connected. The pairs of
`computers B and E and computers C and D are the two pairs that are
`identified as the neighbors for the new computer Z. The connections
`between each of these pairs is broken, and a connection between
`computer Z and each of computers B, C, D, and E is established as
`indicated by FIG. 3B.
`
`Ex. 1101 at 00044, 5:58-6:6 (emphasis added).
`
`The incomplete graph topology relies on participants to disseminate
`
`information to other participants, thus avoiding the bottleneck of a single central
`
`server node. See id. at 000042, 1:58-2:13. The use of an incomplete graph also
`
`avoids the inherent limitations on scaling, and the management of N connections
`
`(i.e., a connection to every other participant) at every network node. See id. at
`
`1:44-56.
`
`As described in the ‘344 Patent, to broadcast a message, the originating
`
`computer sends the message to each of its neighbors using its point-to-point
`
`connections. Id. at 00045, 7:30-36. Each computer that receives the message then
`
`sends the message to its three other neighbors using the point-to-point connections.
`
`Id. at 7:37-49. In this way, the message is propagated to each computer using the
`
`9
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`underlying network, thus broadcasting the message to each computer over a logical
`
`broadcast channel.
`
`It should be appreciated that the invention as described and claimed in the
`
`‘344 Patent leverages the weaving together of (i) a fabric of point-to-point
`
`connections into an m-regular network with (ii) an incomplete graph topology to
`
`achieve scalable and reliable, wide-area, peer-to-peer communications among
`
`computer processes with high connectivity and minimal latency.
`
`III. CLAIM CONSTRUCTION
`
`Patent Owner respectfully submits, without prejudice, that, for purposes of
`
`this Patent Owner Preliminary Response, it is not necessary to dispute Petitioner’s
`
`proposals for construing the ‘344 Patent claims.
`
`IV. SPECIFIC REASONS WHY THE CITED REFERENCES DO NOT
`INVALIDATE THE CLAIMS, AND WHY INTER PARTES REVIEW
`SHOULD NOT BE INSTITUTED ON PROPOSED GROUND 2
`
`The Board should exercise its discretion to decline to institute inter partes
`
`review on proposed Ground 2 under 35 U.S.C. § 325(d) because “the same prior
`
`art or arguments previously were presented to the Office.” Additionally, the
`
`combination of Shoubridge in view of knowledge of the POSITA does not teach
`
`the subject matter of claim 12—namely, “wherein the interconnections of
`
`participants form a broadcast channel for a game of interest.”
`
`10
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`A. The Board Should Deny the Petition Under 35 U.S.C. § 325(d)
`
`As a threshold matter, the Board should deny Ground 2 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.
`
`See 35 U.S.C. § 325(d) (“In determining whether to institute or order a
`
`proceeding…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.”). In citing Shoubridge, the Petition relies
`
`on precisely the same prior art previously presented to the Office with respect to
`
`claim 12 of the ‘344 Patent. Id. In particular, Shoubridge was cited against claim
`
`12 of the ‘344 Patent in the case the instant Petition seeks to join, IPR2015-01972.
`
`See Petition, Activision Blizzard, Inc. v. Acceleration Bay, LLC, Case IPR2015-
`
`01972, Paper 2 at 42–43 (P.T.A.B. Sept. 25, 2015) (“the ‘1972 Petition”) (alleging
`
`that claim 12 of the ‘344 Patent is obvious over Direct Play in view of
`
`Shoubridge).
`
`1.
`
`The Instant Petition Recycles the Same Prior Art Previously
`Presented to the Office
`
`The Board has routinely denies institution of trial under 35 U.S.C. § 325(d)
`
`in cases where a second Petition recycles the same art or arguments—particularly
`
`when the second petition attempts to remedy deficiencies noted in a previous
`
`institution decision. See Medtronic, Inc., v. Nuvasive, Inc., Case IPR2014-00487,
`
`11
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`Paper 8 at 6 (P.T.A.B. Sept. 11, 2014) (informative opinion) (denying institution
`
`under § 325(d) when “responding to ‘a noted deficiency,’ and is providing new
`
`evidence and argument as to how the previously supplied prior art renders the
`
`challenged claims obvious”); see also Unified Patents, Inc., v. Personalweb Techs.,
`
`LLC, Case IPR2014-00702, Paper 13 at 8 (P.T.A.B. July 24, 2014) (informative
`
`opinion) (exercising discretion under 35 U.S.C. § 325(d) to deny the Petition in
`
`which the same prior art was previously presented and in which the challenged
`
`claims were pending in another inter partes review proceeding); Unilever, Inc., v.
`
`The Procter & Gamble Co., Case IPR2014-00506, Paper 17 at 8 (P.T.A.B. July 7,
`
`2014) (informative opinion) (denying institution under 35 U.S.C. § 325(d) when a
`
`second petition used the Board’s “Decision on Institution to bolster challenges that
`
`were advanced, unsuccessfully, in” an earlier petition); Medtronic, Inc., v. Robert
`
`Bosch Healthcare Sys., Inc., Case IPR2014-00436, Paper 17 at 12 (P.T.A.B. June
`
`19, 2014) (informative opinion) (declining to institute trial under 35 U.S.C.
`
`§ 325(d) when the same prior art and substantially the same arguments were
`
`previously presented and the challenged patent was involved in another inter partes
`
`review proceeding).
`
`The same result should obtain here where Petitioner cites the same prior art
`
`in a follow-on Petition against the same claim previously subject to a decision
`
`denying institution—particularly because claim 12 of the ‘344 Patent is currently
`
`12
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`the subject of inter partes review proceedings in Case No. IPR2015-01970, another
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`case that Petitioner seeks to join.
`
`2.
`
`Petitioner Provides Insufficient Justification for
`Challenging Claim 12 on a Ground Involving Shoubridge
`
`In fact, Petitioner completely fails to provide any justification for filing a
`
`petition challenging claim 12 as obvious over Shoubridge given that the Board
`
`previously declined to institute trial on a ground involving Shoubridge. This
`
`failure alone is sufficient for the Board to deny institution on proposed Ground 2.
`
`See Intelligent Bio-Sys., Inc., v. Illumina Cambridge Ltd., Case IPR2013-00324,
`
`Paper 19 at 6–7 (P.T.A.B. Nov. 21, 2013) (informative opinion) (denying
`
`institution under § 325(d) when Petitioner failed to provide justification for filing a
`
`second Petition and failing to explain how its new grounds distinguished over
`
`those previously provided); see also Medtronic, Inc., v. Nuvasive, Inc., Case
`
`IPR2014-00487, Paper 8 at 7 (P.T.A.B. Sept. 11, 2014) (informative opinion)
`
`(denying a Petition under § 325(d) when “Petitioner has not provided any
`
`persuasive reasoning as to why we should institute inter partes review over ‘the
`
`same or substantially the same prior art or arguments’” previously presented,
`
`particularly in view of the fact that the same claims were pending in another inter
`
`partes review proceeding).
`
`Accordingly, because Petitioner’s proposed Ground 2 relies on prior art
`
`and/or arguments that are substantially the same as those presented to the USPTO
`
`13
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`in the ‘1972 Petition, the Board should use its discretion to reject the Petition under
`
`35 U.S.C. § 325(d).
`
`3.
`
`The Relevant Factors Weigh in Favor of Denial Under
`§ 325(d)
`
`The legislative history behind § 325(d) indicates that Congress was
`
`concerned with the potential for abuse of process in IPR proceedings:
`
`This will prevent parties from mounting attacks on patents that raise
`issues that are substantially the same as issues that were already
`before the Office with respect to the patent. The Patent Office has
`indicated that it currently is forced to accept many requests for ex
`parte and inter partes reexamination that raise challenges that are
`cumulative
`to or substantially overlap with
`issues previously
`considered by the Office with respect to the patent.
`
`157 Cong. Rec. S1360-S1394 at S1376 (March 8, 2011) (remarks of Senator Jon
`
`Kyl). The case at hand illustrates perfectly the need for the Board to exercise its
`
`discretion liberally when considering serial challenges to a patent.
`
`Original Petitioners filed their first petition for inter partes review of the
`
`‘344 Patent in Case IPR2015-01972. In that case, despite challenging nearly every
`
`other claim under Shoubridge in view of the knowledge of the POSITA, it declined
`
`to challenge claim 12. After the Board’s Institution Decision in that case, Original
`
`Petitioners filed a second petition utilizing the same prior art (in that case raising
`
`grounds in view of Shoubridge in view of the knowledge of a POSITA and
`
`14
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
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`Shoubridge in view of Direct Play) while framing the evidence in a slightly
`
`different manner.4 After that, Petitioner filed yet another Petition, yet again
`
`recycling the same prior art (Shoubridge in view of the knowledge of a POSITA).
`
`A decision to institute trial over Patent Owner’s arguments regarding § 325(d)
`
`would invite substantial abuses of the inter partes review framework by
`
`encouraging petitioners to (1) apply a multiplicity of prior art grounds in a
`
`patchwork fashion to avoid a finding that some grounds are redundant and (2)
`
`using the Board’s Institution Decision as a roadmap to challenge previously
`
`unchallenged claims under grounds found persuasive by the Board. Such tactics
`
`impose heavily on the Board’s resources, do not encourage a Petitioner to put its
`
`best foot forward, and give Patent Owners no opportunity for repose.
`
`§ 325(d) is a tool for the Board to prevent inefficiencies in the inter partes
`
`review system, harassment of patent owners, and abuse of process. The Board
`
`should exercise its discretion here to deny trial on Petitioner’s proposed Ground 2.
`
`4 Patent Owner is cognizant of the fact that Petitioner was not a party to the ‘1972
`
`Petition and may have had no opportunity to give input on the propriety of not
`
`originally challenging claim 12 on the ground currently presented. However, any
`
`due process concerns are alleviated by the fact that Petitioner has simply copied
`
`Original Petitioners’ successful ground from the ‘1972 Petition and one of its new
`
`grounds from their second petition.
`
`15
`
`
`
`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`B.
`
`Shoubridge in View of the Knowledge of the POSITA Does Not
`Disclose “wherein the interconnections of participants form a
`broadcast channel for a game of interest”
`
`Shoubridge in view of the knowledge of the POSITA fails to show or
`
`suggest “wherein the interconnections of participants form a broadcast channel for
`
`a game of interest.” As defined in the ‘344 Patent, a broadcast channel is
`
`“implemented using an underlying network system (e.g., the Internet) that allows
`
`each computer connected to the underlying network system to send messages to
`
`each other connected computer using each computer’s address.” Ex. 1101, ‘344
`
`Patent at Abstract. In other words, “a broadcast channel overlays a point-to-point
`
`communications network.” Id.
`
`Petitioner fails to identify any teaching in Shoubridge that corresponds to a
`
`“broadcast channel” as the term is used in the context of the ‘344 Patent. Instead,
`
`Petitioner merely states that “Shoubridge address [sic] the problem of broadcasting
`
`information to multiple participants in a computer network” and that “a POSITA
`
`would have understood that Shoubridge’s communication network was a
`
`‘broadcast channel’ formed by interconnected participants.” Petition at 33–34.
`
`Petitioner also cites “the second declaration of Dr. Karger” filed with IPR2016-
`
`00931, which opines that “a POSITA would have understood that the
`
`‘communication network’ taught by Shoubridge was the claimed computer
`
`network and that the ‘links’ between ‘nodes’ were the interconnections of
`
`16
`
`
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`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`participants that form this computer network.” Petition at 35 (citing IPR2016-
`
`00931, Ex. 1219 (“Karger 931”) at ¶ 96).
`
`None of these arguments, however, adequately distinguish between the
`
`terms “computer network” and “broadcast channel,” as recited in claim 12 of the
`
`‘344 Patent. In particular, the arguments presented by Petitioner fail to give any
`
`weight to the term “broadcast channel,” which must further narrow the claimed
`
`subject matter of claim1 under the established principle of claim differentiation.
`
`See, e.g. Phillips v. AWH Corp., 415 F. 3d 1303, 1315 (Fed. Cir. 2005) (“[T]he
`
`presence of a dependent claim that adds a particular limitation gives rise to a
`
`presumption that the limitation in question is not present in the independent
`
`claim.”)(citation omitted); see also id. at 1324 (finding that the inclusion of a
`
`specific term in a dependent claim implies that the independent claim did not
`
`contain the limitation) (citing Dow Chem. Co. v. United States, 226 F.3d 1334,
`
`1341-42 (Fed. Cir. 2000) (concluding that an independent claim should be given
`
`broader scope than a dependent claim to avoid rendering the dependent claim
`
`redundant). Thus, Shoubridge’s alleged teaching of a computer network including
`
`links between nodes is insufficient to read on the claimed broadcast channel. See
`
`Petition at 35. For example, although Petitioner argues that a POSITA would
`
`understand Shoubridge to disclose “interconnected participants” it does not explain
`
`how Shoubridge teaches that these interconnections form a broadcast channel. See
`
`17
`
`
`
`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`Petition at 34. The Petition, therefore, improperly gives no weight to the term
`
`broadcast channel. See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir.
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`2006) (dictating that claims must be “interpreted with an eye toward giving effect
`
`to all terms in the claim.”).
`
`The term “broadcast channel” has a particular meaning in the context of the
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`‘344 Patent in that it overlays a point-to-point communications network. Ex. 1101,
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`‘344 Patent at Abstract; id. at 4:1–3 (“A broadcast technique in which a broadcast
`
`channel overlays a point-to-point communications network is provided.”); 4:23–26
`
`(“The broadcast technique overlays the underlying network system with a graph of
`
`point-to-point connections (i.e., edges) between host computers (i.e., nodes)
`
`through which the broadcast channel is implemented.”). Accordingly, the hallmark
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`of a broadcast channel is that it overlays a point-to-point communications network,
`
`not that it is simply a network that supports broadcast data. Cf. Petition at 33 (“As
`
`such, Shoubridge address [sic] the problem of broadcasting information to multiple
`
`participants in a computer network (i.e., ‘wherein the interconnection of
`
`participants form a broadcast channel’)”). The Petition fails to identify any
`
`teaching in Shoubridge that corresponds to such an overlayed broadcast channel.
`
`Indeed Shoubridge fails to teach a broadcast channel because Shoubridge
`
`only discloses a modeled network in which all of the nodes and connections are
`
`defined a priori. See Ex. 1105, Shoubridge at 00002, fourth full paragraph (“An
`
`18
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`
`
`Patent Owner’s Preliminary Response
`IPR2016-00934 (U.S. Patent No. 6,701,344)
`
`initial network model has been developed…. Consider the network model as a
`
`directed graph G with N nodes and L bidirectional links.”); id. at 00003, first full
`
`paragraph (“A 64 node network with connectivity of degree 4 is modelled as G.”).
`
`This paradigm is of the “peer-to-peer middleware communications systems” type
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`discussed in the BACKGROUND section of the ‘344 Patent. See Ex. 1101, ‘344
`
`Patent at 2:23–37 (defining the same as using “a multicasting network protocol or a
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`graph of point-to-point network protocols”)(emphasis added). Like the graph, G,
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`of Shoubridge, peer-to-peer middleware systems “rely upon a user to assemble a
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`point-to-point graph of the connections used for sharing the information.” Id. at
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`2:28–30. Such networks do not require or benefit from an overlayed broadcast
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`channel because the point-to-point connections are manually defined by a user.
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`For at least the foregoing reasons, Petitioner has not established a reasonable
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`likelihood that Shoubridge in view of the knowledge of a POSITA renders obvious
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`claim 12 of the ‘344 Patent. Patent Owner respectfully requests, therefore, that the
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`Board decline to institute trial on Petition
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