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`Paper No. _____
`Filed: November 27, 2017
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`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 No. 6,910,069 B1
`_____________________________
`
`
`BUNGIE’S REPLY TO THE PRELIMINARY RESPONSE
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`Case IPR2017-01600
`Patent 6,910,069 B1
`As authorized by the Board (Paper 9), Bungie replies to Acceleration Bay’s
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`preliminary response (Paper 6) to address a 2015 district court complaint,
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`dismissed without prejudice for lack of standing, as to the one year bar of
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`35 U.S.C. § 315(b), and Acceleration Bay’s reliance on Apple Inc. v. Rensselaer
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`Polytechnic Institute, No. IPR2014-00319, Paper 12 (PTAB June 12, 2014).
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`Even assuming privity exists,1 the Apple decision is distinguishable from the
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`present case. Moreover, Acceleration Bay ignores the more pertinent Hamilton
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`Beach case that confirms the one year bar of § 315(b) is inapplicable here.
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`The Board has held that a complaint dismissed without prejudice is
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`irrelevant to the one year bar of § 315(b). See, e.g., LG Elecs., Inc. v. Rosetta-
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`Wireless Corp., No. IPR2016-01516, Paper 23 at 8 (PTAB Feb. 3, 2017)
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`(discussing precedential decisions). Acceleration Bay argues that (1) the Board’s
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`non-precedential decision in Apple recognized a broad exception whenever a later-
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`filed complaint corrects a defect of an earlier complaint; and (2) this case fits that
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`exception because Acceleration Bay filed its new complaint after gaining standing.
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`
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`1 The preliminary response incorrectly characterizes Bungie as having taken “an
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`active role in the litigation.” While Bungie has responded to third-party subpoenas,
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`Bungie is not a party to the litigation and was never served with the 2015
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`complaint nor any related complaint.
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`1
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`Case IPR2017-01600
`Patent 6,910,069 B1
`It is wrong on both counts. See Hamilton Beach Brands, Inc. v. F’Real Foods,
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`LLC, No. IPR2016-01105, Paper 10 at 12 (PTAB Nov. 30, 2016) (“The Apple case
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`is distinguishable because the earlier, first-filed lawsuit against Apple was not
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`jurisdictionally defective for lack of standing.”); see also id. at 7-12 (full § 315(b)
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`analysis); LG, IPR2016-01516, Paper 23 at 5-9 (PTAB Feb. 3, 2017) (same result
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`on dismissal for misjoinder).
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`To begin, rather than creating a broad new exception, Apple involved the
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`existing and narrow exception for dismissals that do not actually leave the parties
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`as if the complaint had never been filed.2 In Apple, a first complaint was filed. Id.
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`A second complaint was also filed. Id. The parties then agreed to consolidate the
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`two cases. To do so, they agreed to voluntarily dismiss the first-filed case3 and
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`“proceed to litigate their claims and defenses in [the later-filed action.]” Id. In such
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`circumstances, the Board’s “precedential cases are clear that the guiding principle
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`is whether or not the dismissal in question left the parties as though the action had
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`never been brought.” LG, IPR2016-01516, Paper 23 at 8 (citations omitted). The
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`
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`2 Acceleration Bay’s argument confuses discussion of a statute of limitations case
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`from the Third Circuit (POPR at 33 (quoting IPR2014-00319, Paper 12 at 5-6))
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`with the facts actually considered in Apple (IPR2014-00319, Paper 12 at 3).
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`3 Consolidated cases are typically administratively closed, not dismissed.
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`2
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`Case IPR2017-01600
`Patent 6,910,069 B1
`Board in Apple applied that guiding principle, concluding the earlier-filed case
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`“did not cease in the same sense as a complaint dismissed without prejudice and
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`without consolidation—it was consolidated with another case, and its complaint
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`cannot be treated as if it never existed.” IPR2014-00319, Paper 12 at 7. The Board
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`also noted that the earlier-filed case “immediately continued as a consolidated
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`case, similar, in effect, to an amended case.” Id. Thus, Apple applied the existing
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`exception for a dismissal that does not leave the parties as if the action had never
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`been brought.
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`Even if there were an exception where an “order of dismissal grants leave to
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`amend within a time certain” (POPR at 33), that is not what happened here.
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`Acceleration Bay filed the 2015 complaint. EX1045 at 2. The defendants moved to
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`dismiss for lack of standing. Id. at 1. The court determined that Acceleration Bay
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`lacked standing and ordered a conditional dismissal: the complaint would be
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`dismissed unless Acceleration Bay joined Boeing, the patents’ co-owner, as a
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`necessary party under FRCP 21. Id. at 10. Acceleration Bay did not comply.
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`Instead, it executed an agreement with Boeing to obtain standing, requested that
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`the 2015 complaint be dismissed, and refiled the complaint. EX1046. The court
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`dismissed the 2015 complaint without prejudice. EX1047.
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`The Board has recognized that amended operative complaints do not leave
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`the parties as if the earlier complaint were never filed. See LG, IPR2016-01516,
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`3
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`Case IPR2017-01600
`Patent 6,910,069 B1
`Paper 23 at 7. But here, there was no leave to amend, no time certain within which
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`to do so, and no amended complaint within any such time certain. Acceleration
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`Bay cites a venue order from another district court where defendants had filed for
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`declaratory judgment in anticipation of Acceleration Bay’s re-filed complaints. But
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`that court’s statement that “the re-filed complaints functionally were equivalent to
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`amendments of the co-pending 2015 complaints” was made solely “for purposes of
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`the first-to-file rule” which “is not a rigid or inflexible rule … [and] is to be
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`applied with a view to the dictates of sound judicial administration.” 2016 WL
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`4548985 at *3, *5; see also id. at *4 n.3 (“To be clear, the relation back doctrine,
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`strictly construed, may not technically apply, but the present circumstances warrant
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`the same result its application would dictate.”). That court’s analysis thus has no
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`bearing on the instant analysis under § 315(b).4
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`Moreover, “relation back” for purposes of § 315(b) was never possible
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`because agreements of the type Acceleration Bay entered into with Boeing cannot
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`confer standing retroactively. See Alps South, LLC v. Ohio Willow Wood Co., 787
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`F.3d 1379, 1384-86 (Fed. Cir. 2015) (nunc pro tunc agreement does not cure
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`standing). The 2015 complaint had to be dismissed, and legally became as if it had
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`
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`4 That court also determined the defendants’ “actions smack of gamesmanship.”
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`2016 WL 4548985 at *6. Bungie was not a party to those actions.
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`4
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`Case IPR2017-01600
`Patent 6,910,069 B1
`never been filed, because Acceleration Bay did not have standing to bring it. See
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`id. at 1384-85 (“a party may not vindicate rights in court before the party actually
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`possesses the rights”). Acceleration Bay is incorrect to argue that the “2015
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`complaint ‘has not gone away’” in any sense because that argument ignores the
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`nature of standing. As the Board recognized in Hamilton Beach, in a dismissal for
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`lack of standing, the earlier action “is not shown to be a mere continuation of the”
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`later, because there “is a fundamental difference between the allegation of patent
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`infringement in the [earlier action] and the allegation of patent infringement in the
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`[later action.]” IPR2016-01105, Paper 10 at 10-11. That is because only the later
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`“was supported by facts necessary for Article III standing, i.e., title to the [patent at
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`issue] held by plaintiff.” Id. The Board expressly confirmed that a complaint
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`without standing “was not a proper federal pleading and did not trigger the one-
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`year time period under 35 U.S.C. § 315(b).” Id. at 10.
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`Acceleration Bay’s proposed exception is unsupported and incorrect, and the
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`2015 complaint that was dismissed without prejudice for Acceleration Bay’s lack
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`of standing could not trigger the one year bar as a matter of law. Acceleration
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`Bay’s arguments regarding § 315(b) should be rejected and trial instituted.
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`
`
`Respectfully submitted,
`
`Date: November 27, 2017
`
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`5
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`LIST OF EXHIBITS
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`Exhibit No.
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`Description
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`Case IPR2017-01600
`Patent 6,910,069 B1
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`U.S. Patent No. 6,910,069
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`File History of U.S. Patent No. 6,910,069 - 0001 to 1442
`
`Declaration of Dr. Nicholas Bambos, Ph.D.
`
`Curriculum vitae of Dr. Nicholas Bambos, Ph.D.
`
`Francis, Paul, Yallcast: Extending the Internet Multicast
`Architecture (Sep. 30, 1999) (“Francis”)
`Ciriculum Vitae of Dr. Paul Francis, Ph.D
`
`Sept. 2, 2000, snapshot of www.yallcast.com, from
`web.archive.org, The Wayback Machine, last visited Feb. 9, 2017
`Feb. 17, 2001, snapshot of www.yallcast.com/docs/index.html,
`from web.archive.org, The Wayback Machine, last visited Feb. 9,
`2017
`Post-script encoding for Ex. 1005, Francis
`
`Feb. 17, 2001, snapshot of www.yallcast.com/mail/index.html,
`from web.archive.org, The Wayback Machine, last visited Feb. 9,
`2017
`Jun. 23, 2001, snapshot of groups.yahoo.com/group/yc-
`announce/, from web.archive.org, The Wayback Machine, last
`visited Feb. 9, 2017
`Jun. 23, 2001, snapshot of groups.yahoo.com/group/yc-discuss/,
`from web.archive.org, The Wayback Machine, last visited Feb. 9,
`2017
`Oct. 19, 1999, USENET annoucement, group:umich.engin.cseg.
`“Software Seminar: Dr. Paurl Francis from NTT Software
`Lab…”,
`Nov. 7, 1999, USENET annoucement, group:la.seminars.
`“Seminar – Francis – Nov. 9 10am – Y’allcast architecture”
`Presentation – Yallcast Architecture Overview
`
`
`
`6
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`Case IPR2017-01600
`Patent 6,910,069 B1
`Presentation – Overview of Yallcast Dynamic Topology
`Configuration
`Apr. 3, 2002 snaptshot of www.icir.org/yoid/ from
`web.archive.org, the Wayback Marchine, last visited Feb. 9, 2017
`Aug. 31, 2002 snaptshot of www.icir.org/yoid/docs/index.html
`from web.archive.org, the Wayback Marchine, last visited Feb. 9,
`2017
`Francis, Paul, Yoid: Extending the Internet Multicast Architecture
`(April 2, 2000) (“Yoid paper”)
`Declaration of Paul T. Francis
`
`U.S. Patent No. 6,490,247 to Gilbert et al. (“Gilbert”)
`
`U.S. Patent No. 5,170,482 to Shu et al.
`
`Frank et al., Multicast Communication on Network Computers,
`IEEE Software (1985)
`Friesen et al., Resource Management with Virtual Paths in ATM
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`Dalal, Yogen Kantilal, Broadcast Protocols in Packet Switched
`Computer Networks, Ph.D. dissertation, Stanford University
`(1977)
`Chen et al., Addressing, Routing, and Broadcasting in Hexagonal
`Mesh Multiprocessors, IEEE Transactions on Computers (1990)
`Fragopoulou et al., Efficient Algorithms for Global Data
`Communication on the Multidimensional Torus Network, Parallel
`Processing Symposium Proceedings, IEEE (1995)
`Maxemchuk, Nicholas F., Routing in the Manhattan Street
`Network, IEEE Transactions on Communications (1987)
`Chalasani et al., Adaptive Wormhold Routing in Tori with Faults,
`IEEE Proceedings – Computers and Digital Techniques (1995)
`U.S. Patent No. 5,056,085 to Vu
`
`Ballardie et al., Core Based Trees (CBT): An Architecture for
`Scalable Inter-Domain Multicast Routing, ACM SIGCOMM
`Computer Communication Review (1993)
`U.S. Patent No. 5,331,637 to Francis et al.
`
`1016
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`1017
`
`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`7
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`Case IPR2017-01600
`Patent 6,910,069 B1
`Garcia-Luna-Aceves et al., A Multicast Routing Protocol for Ad-
`Hoc Networks, INFOCOM'99, Eighteenth Annual Joint
`Conference of the IEEE Computer and Communications
`Societies, IEEE (1999)
`Deering, Request for Comments: 1112, IETF (1989)
`
`Fenner, Request for Comments: 2236, IETF (1997)
`
`Estrin et al., Request for Comments: 2362, IETF (1998)
`
`Liu et al., A Scalable Multicast Routing, MILCOM 97
`Proceedings, IEEE (1997)
`U.S. Patent No. 6,603,742 to Steele et al. (“Steele”)
`
`Chawathe et al., RMX Reliable Multicast for Heterogeneous
`Networks, INFOCOM 2000, Nineteenth Annual Joint Conference
`of the IEEE Computer and Communications Societies, IEEE
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`Chu et al., A Case for End System Multicast, ACM SIGMETRICS
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`
`Aug. 18, 2000, snapshot of nms.lcs.mit.edu/projects/ron/, from
`web.archive.org, The Wayback Machine, last visited June 15,
`2017
`http://nms.lcs.mit.edu// (retrieved June 5, 2017).
`
`Memorandum regarding Standing in Acceleration Bay LLC v.
`Activision Blizzard, Inc., Civil Action No. 15-228, D.I. 148, June
`3, 2016
`Letter to the Honorable Richard G. Andrews from Philip A.
`Rovner, Esq. in Acceleration Bay LLC v. Activision Blizzard,
`Inc., Civil Action No. 15-228, D.I. 155, June 24, 2016
`Order regarding Standing in Acceleration Bay LLC v. Activision
`Blizzard, Inc., Civil Action No. 15-228, D.I. 153, June 20, 2016
`
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`8
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`1033
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`1034
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`1035
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`1036
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`1043
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`1044
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`1045
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`1046
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`1047
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`CERTIFICATE OF SERVICE
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`Case IPR2017-01600
`Patent 6,910,069 B1
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`I certify that the foregoing Bungie’s Reply to the Preliminary Response and
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`Exhibits 1045 through 1047 were served on this 27th day of November, 2017 on
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`the Patent Owner at the electronic service addresses of the Patent Owner as
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`follows:
`
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`Email: jhannah@kramerlevin.com
`Email: jprice@kramerlevin.com
`Email: svdocketing@kramerlevin.com
`
`
`
`
`Date: November 27, 2017
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`
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`
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`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
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`9
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