`571-272-7822
`
`
`
`
`
`Paper 9
`Entered: November 17, 2017
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`ACCELERATION BAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01600 (Patent 6,910,069 B1)
`Case IPR2017-01601 (Patent 6,829,634 B1)1
`____________
`
`
`
`Before SALLY C. MEDLEY, MARC S. HOFF, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing Reply to Preliminary Response
`37 C.F.R. §§ 42.5, 42.108(c)
`
`
`
`
`1 This Order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`IPR2017-01600 (Patent 6,910,069 B1)
`IPR2017-01601 (Patent 6,829,634 B1)
`
`INTRODUCTION
`The Board held a conference call on November 17, 2017, in response
`to Petitioner’s e-mail request for authorization to file a reply to Patent
`Owner’s Preliminary Response in each of these proceedings. Counsel for
`Bungie, Inc. (Petitioner), counsel for Acceleration Bay, LCC (Patent
`Owner), and Judges Medley, Hoff, and Pettigrew participated in the call.
`DISCUSSION
`Pursuant to 37 C.F.R. § 42.108(c), a “petitioner may seek leave to file
`a reply to the preliminary response,” and “[a]ny such request must make a
`showing of good cause.”
`Petitioner requests authorization to file a reply to Patent Owner’s
`Preliminary Response to address two issues: (1) Patent Owner’s argument
`relating to 35 U.S.C. § 315(b), and more specifically to the effect of a
`district court complaint filed in 2015 and Patent Owner’s reliance on the
`Decision Denying Institution of Inter Partes Review in Apple Inc. v.
`Rensselaer Polytechnic Institute, Case IPR2014-00319 (PTAB June 12,
`2014) (Paper 12); and (2) Patent Owner’s attempt to antedate a reference.
`Patent Owner opposes Petitioner’s request, primarily on the ground that
`Patent Owner’s arguments in the Preliminary Response were foreseeable.
`After considering the positions of the parties, we find that Petitioner
`has established good cause for further briefing with respect to the first issue
`identified above. Because the issue of a one-year bar under § 315(b) is
`potentially dispositive, we believe that additional briefing will assist the
`panel at this stage of the proceedings. Accordingly, Petitioner is authorized
`to file a reply to the Preliminary Response to address only the issue relating
`
`2
`
`
`
`IPR2017-01600 (Patent 6,910,069 B1)
`IPR2017-01601 (Patent 6,829,634 B1)
`
`to the 2015 district court complaint and Patent Owner’s reliance on the
`Apple case.
`With respect to Patent Owner’s attempt to antedate a reference,
`Petitioner’s request to file a reply is denied. We are mindful of Petitioner’s
`position that it has not yet had an opportunity to address the evidence
`supplied by Patent Owner, and we will take that into account when rendering
`a decision whether to institute trial.
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner is authorized to file a reply to Patent
`
`Owner’s Preliminary Response in each of these proceedings, addressing
`only Patent Owner’s arguments regarding the 2015 district court complaint
`and Patent Owner’s reliance on the Apple case; and
`
`FURTHER ORDERED that the reply is limited to five pages and is
`due no later than November 27, 2017.
`
`
`3
`
`
`
`IPR2017-01600 (Patent 6,910,069 B1)
`IPR2017-01601 (Patent 6,829,634 B1)
`
`PETITIONER:
`Michael T. Rosato
`Andrew S. Brown
`Eric C. Arnell
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`asbrown@wsgr.com
`earnell@wsgr.com
`
`PATENT OWNER:
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`4
`
`
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