`571-272-7822
`
`Paper 11
`Entered: July 7, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00936
`Patent 6,714,966 B1
`____________
`
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, 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)
`
`
`
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`
`I. INTRODUCTION
`
`A. Background
`On April 22, 2016, Bungie, Inc. (“Petitioner” or “Bungie”) filed a
`Petition requesting an inter partes review of claims 1–12, 16, and 17 of U.S.
`Patent 6,714,966 B1 (Ex. 1101, “the ’966 patent”). Paper 2 (“Pet.”). On the
`same day, Petitioner filed a Motion for Joinder pursuant to 35 U.S.C. §
`315(c), seeking to join this proceeding with Activision Blizzard, Inc., et al. v.
`Acceleration Bay, LLC, Case IPR2015-01953 (“the 1953 IPR”). Paper 3
`(“Mot.”). In the 1953 IPR, which was requested by Activision Blizzard,
`Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2K Sports,
`Inc., and Rockstar Games, Inc. (“the Activision Petitioners”), we instituted
`inter partes review of claims 1–11, 16 and 17 of the ’966 patent, but we did
`not institute inter partes review of claims 12–15 of the ’966 patent. See
`1953 IPR, slip op. at 17, 19, 20, 24 (PTAB Mar. 24, 2016) (Paper 8).
`Acceleration Bay, LLC (“Patent Owner”) filed a Preliminary
`Response to Bungie’s Petition. Paper 10 (“Prelim. Resp.”). Patent Owner
`also filed an Opposition to the Motion for Joinder. Paper 9 (“Opp.”).
`Upon consideration of the Petition and Preliminary Response, we
`institute an inter partes review of claims 1–11, 16 and 17 of the ’966 patent,
`and we grant Bungie’s Motion for Joinder. We exercise our discretion,
`under 35 U.S.C. § 325(d), to deny institution of inter partes review as to
`claim 12.
`
`B. The ’966 Patent
`The ’966 patent relates to a “broadcast technique in which a broadcast
`channel overlays a point-to-point communications network.” Ex. 1101, 4:3–
`5. The communication network consists of a graph of point-to-point
`
`2
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`connections between host computers or nodes. Id. at 4:23–26. Figure 1 of
`the ’966 patent is reproduced below:
`
`
`Figure 1 illustrates a broadcast channel represented by a “4-regular, 4-
`connected” graph. Id. at 4:48–49. The graph of Figure 1 is “4-regular”
`because each node is connected to exactly four other nodes (e.g., node A is
`connected to nodes E, F, G, and H). Id. at 4:38–39, 4:49–53. A node in a 4-
`regular graph can only be disconnected if all four of the connections to its
`neighbors fail. Id. at 4:39–42. Moreover, the graph of Figure 1 is “4-
`connected” because it would take the failure of four nodes to divide the
`graph into two separate sub-graphs (i.e., two broadcast channels). Id. at
`4:42–47.
`
`3
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`
`To broadcast a message over the network, an originating computer
`sends the message to each of its four neighbors using the point-to-point
`connections. Id. at 4:30–32. Each computer that receives the message sends
`it to its other neighbors, such that the message is propagated to each
`computer in the network. Id. at 4:32–38. The minimum number of
`connections needed to traverse any two computers in the network is known
`as the “distance” between them, while the maximum of the distances in the
`network is called the “diameter” of the broadcast channel. Id. at 4:57–5:3.
`In Figure 1, the diameter is 2 because a message originating at any node
`(e.g., A) traverses no more than 2 connections to reach every other node. Id.
`at 5:3–6.
`
`C. Illustrative Claims
`Among the claims challenged by Petitioner, claims 1, 13, and 16 are
`independent. Claim 1, which is illustrative of the claimed subject matter,
`and claim 12, which depends from claim 1, are reproduced below:
`1. A computer network for providing an information
`delivery service for a plurality of participants, each participant
`having connections to at least three neighbor participants,
`wherein an originating participant sends data to the other
`participants by sending the data through each of its connections
`to its neighbor participants and wherein each participant sends
`data that it receives from a neighbor participant to its other
`neighbor participants, further wherein the network is m-regular,
`where m is the exact number of neighbor participants of each
`participant and further wherein the number of participants is at
`least two greater than m thus resulting in a non-complete graph.
`
`
`4
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`
`12. The computer network of claim 1 wherein the
`interconnections of participants form a broadcast channel for a
`topic of interest.
`
`Ex. 1101, 30:2–12, 30:36–38.
`
`D. Related Matters
`Petitioner and Patent Owner identify the following pending judicial
`matters as relating to the ’966 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 8, 1. Petitioner indicates it is not a
`party to the underlying district court proceedings. Pet. 4; Mot. 2.
`In the 1953 IPR, we instituted an inter partes review of claims 1–7,
`11, and 16 of the ’966 patent on the ground of anticipation under 35 U.S.C. §
`102(a) by Shoubridge,1 and claims 6–10 and 17 of the ’966 patent on the
`ground of obviousness under 35 U.S.C. § 103(a) over Shoubridge. Recently,
`in IPR2016-00932 (“the 932 IPR”), we denied another petition filed by the
`Activision Petitioners directed to claim 12 of the ’966 patent. Activision
`Blizzard, Inc., et al. v. Acceleration Bay, LLC, Case IPR2016-00932 (PTAB
`June 23, 2016) (Paper 13) (“932-Decision”).
`In addition, claims 1–12, 16, and 17 of the ’966 patent are the subject
`of inter partes review in Activision Blizzard, Inc., et al. v. Acceleration Bay,
`
`
`1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks,
`3 IEEE INT’L CONF. ON COMMS. CONF. REC. 1381-86 (Montreal, 1997)
`(Ex. 1105) (“Shoubridge”).
`
`5
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`LLC, Case IPR2015-01951 (“the 1951 IPR”). Bungie has been joined as a
`petitioner in the 1951 IPR. See Bungie, Inc. v. Acceleration Bay, LLC, Case
`IPR2016-00935 (PTAB June 23, 2016) (Paper 10).
`The 1953 IPR
`As noted above, in the 1953 IPR we instituted inter partes review of
`claims 1–11, 16, and 17 of the ’966 patent, but we did not institute inter
`partes review of claims 12–15 of the ’966 patent. 1953 IPR, Paper 8
`(“1973-Decision”). In the 1953 IPR, the Activision Petitioners contended
`that claim 12 would have been obvious over Shoubridge and DirectPlay.2
`See 1953 IPR, Paper 2 (“1953-Pet.”). As summarized in the 1953-Decision,
`Shoubridge models a communication network as a graph in which each node
`serves as a source of user traffic entering the network, where traffic can be
`sent to the other nodes in the network. 1953-Decision 12 (citing Ex. 1105,3
`2). Shoubridge describes a 64 node network with connectivity of degree 4
`modeled as a large, regular graph and routing protocols known as
`constrained flooding and minimum hop routing. Id. Ultimately, Shoubridge
`proposes a hybrid routing strategy, which may rely on a combination of
`constrained flooding and minimum hop routing depending on whether valid
`routing information exists. Id.
`In the 1953 IPR, the Activision Petitioners argued that Shoubridge
`discloses all of the limitations of claim 1. 1953-Pet. 28–34. For claim 12,
`the Activision Petitioners relied on DirectPlay, to teach the recited
`
`
`2 Bradley Bargen & Peter Donnelly, INSIDE DIRECTX (Microsoft Press,
`1998) (Ex. 1103) (“DirectPlay”).
`3 Shoubridge and DirectPlay have the same exhibit numbers in the 1953 IPR
`and in this proceeding.
`
`6
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`“computer network of claim 1 wherein the interconnections of participants
`form a broadcast channel for a topic of interest.” Id. at 43–44. The
`Activision Petitioners contended it would have been obvious to a person of
`ordinary skill in the art to apply Shoubridge’s teaching of flooding over a
`network to the gaming environment taught by DirectPlay to achieve
`DirectPlay’s objective of scalability and reliability. Id. at 23–27. However,
`we determined the obviousness analysis in the petition to be insufficient.
`1953-Decision 22–24. Accordingly, we found the Activision Petitioners did
`not establish a reasonable likelihood of prevailing in their challenge against
`claim 12. Id.
`
`E. Asserted Grounds of Unpatentability
`Bungie asserts that claims 1–7, 11, and 16 of the ’966 patent are
`unpatentable as anticipated by Shoubridge. Pet. 17–26. Bungie also asserts
`that claims 6–10 and 17 of the ’966 patent are unpatentable as obvious over
`Shoubridge.4 Id. at 26–29. As noted, these are the same grounds, and these
`are the same claims, for which we instituted inter partes review in the 1953
`IPR.
`
`Bungie also asserts that claim 12 of the ’966 patent would have been
`obvious over Shoubridge. Pet. 29–32. Bungie describes this asserted
`ground as “substantially similar” to the Activision Petitioners’ challenge to
`claim 12 as obvious over Shoubridge in the 932 IPR. Id. at 6 n.1. In the 932
`
`
`4 Bungie articulates this ground as obviousness based on “Shoubridge and
`the knowledge of a POSITA.” Pet. 29. Because obviousness is determined
`from the perspective of a person of ordinary skill in the art, we refer to this
`ground simply as obviousness over Shoubridge.
`
`7
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`IPR, we denied inter partes review of claim 12 on this ground. 932-
`Decision 8–11.
`
`III. ANALYSIS
`
`A. Claims 1–11, 16 and 17
`The Petition in this proceeding asserts that claims 1–7, 11, and 16 of
`the ’966 patent are anticipated by Shoubridge, i.e., the same ground of
`unpatentability on which we instituted review of these claims in the 1953
`IPR. Compare Pet. 17–26, with 1953-Decision 17. Similarly, the Petition in
`this proceeding asserts that claims 6–10 and 17 of the ’966 patent are
`obvious over Shoubridge––the same ground of unpatentability on which we
`instituted review of these claims in the 1953 IPR. Compare Pet. 26–29, with
`1953-Decision 19. Indeed, the Petition filed in this proceeding is
`“practically a copy” of the petition in the 1953 IPR “with respect to its
`instituted ground[s], including the same analysis of the prior art and expert
`testimony.” Mot. 2. Patent Owner’s Preliminary Response does not address
`Petitioner’s assertion that claims 1–11, 16, and 17 would have been
`unpatentable over Shoubridge. See Prelim. Resp. 1.
`For the same reasons set forth in our institution decision in the
`1953 IPR, we determine that the information presented in Bungie’s Petition
`shows a reasonable likelihood that Petitioner would prevail in showing that
`claims 1–11, 16, and 17 would have been unpatentable over Shoubridge.
`See 1953-Decision 11–19. Therefore, we institute an inter partes review of
`claims 1–7, 11, and 16 on the asserted ground of anticipation by Shoubridge,
`and we institute inter partes review of claims 6–10 and 17 on the asserted
`ground of obviousness over Shoubridge.
`
`8
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`
`B. Claim 12
`Petitioner also asserts that claim 12 would have been obvious over
`Shoubridge. Pet. 29–32. As a threshold matter, Patent Owner argues that
`the Board should decline to institute review with respect to claim 12 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.” Prelim. Resp. 11. Petitioner does not
`address the applicability of 35 U.S.C. § 325(d) to this proposed ground.
`Institution of inter partes review is subject to the Board’s discretion.
`See 37 C.F.R. § 42.108(b). In particular, “[i]n determining whether to
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
`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.” 35 U.S.C. § 325(d).
`Having considered the parties’ contentions, we determine the asserted
`ground challenging claim 12 as unpatentable over Shoubridge relies on the
`same prior art and substantially the same arguments as the petition in the
`1953 IPR. Although Shoubridge alone was not raised as a basis for
`challenging claim 12 in the 1953 IPR, it was raised as a basis for challenging
`claim 1, from which claim 12, among other claims, depends. 1953-Decision
`11–12. Moreover, the claim mapping provided for claim 12 in the instant
`petition relies on nearly identical disclosures in Shoubridge as relied upon
`for claim 1 in the 1953 petition. Compare Pet. 30 (citing Ex. 1105, 2 ¶ 11–3
`¶ 1) (mapping Shoubridge’s disclosures of broadcasting a user packet on
`outgoing links to claim 12’s “broadcast channel for a topic of interest”), with
`1953-Pet. 31–32 (citing Ex. 1105, 2 ¶ 11–3 ¶ 1) (mapping Shoubridge’s
`
`9
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`disclosures of broadcasting a user packet on outgoing links to claim 1’s
`“send[ing] data to the other participants”).
`Our determination that Petitioner’s challenge to claim 12 relies on the
`same prior art and substantially the same arguments that were presented in
`the 1953 IPR is consistent with our decision in the 932 IPR, in which we
`reached the same conclusion with respect to the Activision Petitioners’
`substantially similar challenge to claim 12. See 932-Decision 9. We also
`noted in the 932 IPR that the Activision Petitioners had presented no
`persuasive reason why claim 12 could not have been challenged based on
`Shoubridge alone in the 1953 IPR. Id. at 9.
`As in the 932 IPR, we exercise our discretion under § 325(d) to deny
`institution of inter partes review of claim 12 on the asserted ground of
`obviousness over Shoubridge, which relies on the same prior art and
`substantially the same arguments previously presented to the Office. In the
`932 IPR we provided a further reason for exercising our discretion not to
`institute review of claim 12 based on Shoubridge—the parallel challenge to
`claim 12 based on DirectPlay and Lin5 in the 1951 IPR. See id. at 11 (citing
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00436,
`slip op. at 11–12 (PTAB June 19, 2014) (Paper 17) (informative); Samsung
`Elecs. Co. v. Affinity Labs of Tex. LLC, Case IPR2015-00820, slip op. at 4–5
`(PTAB May 15, 2015) (Paper 12)). As noted above, we granted Bungie’s
`
`
`5 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. 1104 (Exhibit B)) (“Lin”).
`
`10
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`motion for joinder with the 1951 IPR, and therefore Bungie already is a
`petitioner in an instituted review of claim 12.
`One additional factor weighing in favor of denying institution with
`respect to claim 12 under § 325(d) is that Bungie indicates it is not a party to
`any district court proceeding involving the ’966 patent. Pet. 4. This
`suggests Bungie is not facing a bar under 35 U.S.C. § 315(b). Based on the
`current record, we are aware of no reason Bungie would be unable to file
`another petition challenging claim 12 should it be dissatisfied with the
`ultimate determination regarding the patentability of claim 12 in the existing
`proceedings.
`
`C. 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 5. Thus, Petitioner’s Motion for
`Joinder is timely because joinder was requested no later than one month
`after the institution date of the 1953 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
`
`11
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`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 discussed above, the Petition in this case asserts the same
`invalidity grounds with respect to claims 1–11, 16, and 17 on which we
`instituted review in the 1953 IPR. See Mot. 1–2, 4–5. Bungie also relies on
`the same prior art analysis and expert testimony submitted by the Activision
`Petitioners. See id. at 6. 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 1953 IPR. See id. at 6–7. Thus, this inter
`partes review of claims 1–11, 16, and 17 of the ’966 patent does not present
`any ground or matter not already at issue in the 1953 IPR. Patent Owner
`does not oppose Bungie’s Motion for Joinder with respect to the asserted
`ground of anticipation of claims 1–7, 11, and 16 by Shoubridge and the
`asserted ground of obviousness of claims 6–10 and 17 over Shoubridge. See
`Opp. 3 (opposing joinder only with respect to claim 12).
`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 12. 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 13. 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
`
`12
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`limited capacity, Bungie submits that joinder will not impact the trial
`schedule for the 1953 IPR. Id. at 12.
`We agree with Petitioner that joinder with the 1953 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 IPR2016-00936
`as to claims 1–11, 16, and 17 of the ’966 patent on the following grounds:
`Claims 1–7, 11 and 16 as anticipated under 35 U.S.C. § 102(a) by
`Shoubridge;
`Claims 6–10 and 17 as obvious under 35 U.S.C. § 103(a) over
`Shoubridge;
` FURTHER ORDERED that the trial is limited to these grounds, and
`no other ground is authorized;
`FURTHER ORDERED that the Motion for Joinder with IPR2015-
`01953 is granted, and Bungie, Inc. is joined as a petitioner in IPR2015-
`01953;
`FURTHER ORDERED that IPR2016-00936 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2015-
`01953;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2015-01953 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the modified
`Scheduling Order in place for IPR2015-01953 (Paper 13) remains
`unchanged;
`
`13
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`
`FURTHER ORDERED that in IPR2015-01953, 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;
`FURTHER ORDERED that the case caption in IPR2015-01953 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 IPR2015-01953.
`
`14
`
`
`
`
`
`IPR2016-00936
`Patent 6,714,966 B1
`
`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
`
`15
`
`
`
`
`
`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 IPR2015-019531
`Patent 6,714,966 B1
`____________
`
`
`
`
`
`
`1 Bungie, Inc., who filed a Petition in IPR2016-00936, has been joined as a
`petitioner in this proceeding.