Trials@uspto.gov
`571-272-7822
`
` Paper: 62
` Date: January 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`____________
`
`Before KARL D. EASTHOM, KEN B. BARRETT, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`TERMINATION
`Vacating Institutions and Dismissing Proceedings on Remand
`35 U.S.C. § 314
`
`1
`
`MS 1025
`
`

`

`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`INTRODUCTION
`I.
`A. Procedural Posture and Summary
`Bungie, Inc. (“Petitioner”) filed Petitions requesting inter partes
`review of U.S. Patent Nos. 7,945,856 B2 (“the ’856 patent”), 8,082,501 B2
`(“the ’501 patent”), and 8,145,998 B2 (“the ’998 patent”). 1 IPR2015-01264,
`Paper 3; IPR2015-01319, Paper 3; and IPR2015-01321, Paper 3. The Board
`instituted reviews, conducted trials, and issued Final Written Decisions.
`E.g., IPR2015-01264, Paper 42. Certain claims were determined to have
`been proven unpatentable. E.g., id. at 115.
`On September 7, 2018, the United States Court of Appeals for the
`Federal Circuit issued a decision vacating the Board’s final written decisions
`in the above-captioned inter partes reviews2 and remanded for consideration
`as to whether Patent Owner Worlds Inc. is estopped from arguing the real-
`party-in-interest (“RPI”) issue and, if not, to reevaluate the merits of that
`RPI issue. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1248 (Fed.
`Cir. 2018). The Federal Circuit stated that it could not discern whether the
`Board improperly “placed the burden on Worlds, the patent owner, to
`persuade the Board that Bungie failed to list a real party in interest that
`would render the petitions time-barred under § 315(b)” and remanded “with
`instructions for the Board to weigh the evidence in a manner that places the
`ultimate burden of persuasion on Bungie, the IPR petitioner, and to do so in
`a manner consistent with our recent precedent.” Id. at 1246–47.
`
`1 The challenged patent is Exhibit 1001 in each respective case.
`2 Unless indicated otherwise, citations herein are to papers and exhibits filed
`in IPR2015-01264.
`
`2
`
`

`

`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`On November 7, 2018, Judges Easthom, Barrett, and J. Chung held a
`
`conference call with counsel for the parties to discuss the procedures for the
`consideration of the collateral estoppel issue and the reevaluation of the
`real-party-in-interest issue. Ex. 1051 (“Tr.”). Each party, during the
`conference call, indicated its belief that it would prevail based on the
`evidentiary record as it then stood. See Paper 48, 4–8 (Conduct of the
`Proceedings Order discussing the conference call). Petitioner initially
`offered to submit a declaration in support of it RPI arguments and to allow
`cross-examination of the declarant. Tr. 46:16–47. Petitioner’s offer,
`however, was conditioned on that being the entire extent of any allowable
`discovery on the RPI issue. See id. at 47:4–9. After opposition from Patent
`Owner to Petitioner’s proposed limits on discovery and after Patent Owner’s
`identification of discovery, including the production of documents, it would
`seek if Petitioner opened the door via submission of a declaration (id.
`at 50:12–52:13), Petitioner stated that the evidence of record plus certain
`“noncontroversial, non-testimonial evidence”3 would be adequate, id.
`at 55:6–12. Specifically, Petitioner’s counsel stated, “I think under the
`evidence that exists of the record and then any further noncontroversial,
`non-testimonial evidence, that there is more than adequate evidence to reach
`the same conclusions the Board had previously reached [regarding the RPI
`issue], and with that conclusion being supported by evidence of record.” Id.
`
`
`3 The proposed “noncontroversial, non-testimonial evidence” includes items
`in the public record such as documents filed in other IPRs and documents
`filed in the related District Court litigation. Tr. 47:10–19.
`3
`
`

`

`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`As both parties indicated that discovery need not be reopened in order
`
`to resolve the dispositive issues remaining in these cases, we did not
`authorize any further discovery. With the exception of the filing of
`authorized “noncontroversial evidence” and joint stipulations of fact, we
`ordered the evidentiary record remain closed. Paper 48, 10.
`
`Pursuant to our authorization (id.), Petitioner filed its “Brief on
`Remand from CAFC” (“Pet. Br. on Remand,” Paper 51 (sealed version),
`Paper 58 (public version)), Patent Owner filed its “Response on Remand
`from CAFC” (“PO Resp. on Remand,” Paper 55), and Petitioner filed its
`“Reply on Remand from CAFC Responding to Worlds[’] Response Brief”
`(“Pet. Reply on Remand,” Paper 59). Petitioner also filed papers filed in
`related IPRs (Exs. 1052–1063) and “Stipulation of Uncontested Facts”
`(Ex. 1064, “Jt. Stip.”).
`
`For the reasons set forth below, we determine that Patent Owner is not
`estopped from arguing the real-party-in-interest issue on remand. We
`further determine, for the reasons set forth below and based on the record
`before us, that Petitioner Bungie has not met its burden to show that the
`Petitions were not time-barred under 35 U.S.C. § 315(b). Accordingly, we
`dismiss the Petitions, vacate our Decisions to Institute, and terminate these
`inter partes reviews.
`
`B. The Identified Real Parties in Interest
`Petitioner Bungie, Inc. identifies itself as “the real party-in-interest.”
`
`Pet. 9. Patent Owner Worlds Inc. identifies itself as “the sole Patent Owner
`and Real Party-In-Interest.” Paper 6.
`
`4
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`

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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`
`C. Related Proceedings
`One or both parties identify, as matters involving or related to the
`
`subject patents, Worlds Inc. v. Activision Blizzard, Inc. et al., Case No. 1:12-
`cv-10576-DJC (D. Mass.), and Patent Trial and Appeal Board cases
`IPR2015-01264, IPR2015-01268, IPR2015-01269, IPR2015-01319,
`IPR2015-01321, and IPR2015-01325. Pet. 10; Paper 6.
`
`D. Illustrative Subject Matter
`The subject matter disclosed in the ’856 patent is illustrative of the
`
`subject matter involved in all the captioned cases. The ’856 patent discloses
`a highly-scalable “client-server architecture” for a “three-dimensional
`graphical, multi-user, interactive virtual world system.” Ex. 1001, at
`code (57), 2:31–33, 3:1–3. In the preferred embodiment, each user chooses
`an avatar to “represent the user in the virtual world,” id. at 3:20–22, and
`“interacts with a client system,” which “is networked to a virtual world
`server,” id. at 3:9–10. “[E]ach client . . . sends its current location, or
`changes in its current location, to the server . . . .” Id. at 3:36–39; see id. at
`2:40–43.
`
`In the preferred embodiment, the system implements a “crowd
`control” function, which determines “[w]hether another avatar is in range”
`and “is needed in some cases to ensure that neither client 60 nor user A get
`overwhelmed by the crowds of avatars likely to occur in a popular virtual
`world.” Id. at 5:32–36; see id. at 2:62–64. “Server 61 maintains a variable,
`N, which sets the maximum number of other avatars [user] A will see,”
`whereas client 60 “maintains a variable, Nʹ, which might be less than N,”
`indicating “the maximum number of avatars client 60 wants to see and/or
`
`5
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`hear.” Id. at 5:37–41; see id. at 13:18–21. These limits of N and Nʹ avatars
`“[g]enerally” “control how many avatars [user] A sees.” Id. at 5:55–58.
`Server 61 tracks the location and orientation of each user’s avatar and
`maintains a list of the “N nearest neighboring remote avatars” for each
`user’s avatar. Id. at 5:45–49, 13:21–23, 14:27–32. “[A]s part of crowd
`control,” the server notifies client 60 for a user “regarding changes in the N
`closest remote avatars and their locations.” Id. at 14:32–38. On the
`client-side, “[w]here Nʹ is less than N, the client also uses position data to
`select Nʹ avatars from the N provided by the server.” Id. at 6:6–8.
`
`The specification explains that in the preferred embodiment, client 60,
`used by user A, features remote avatar position table 112 and current avatar
`position register 114. Id. at 2:62–64, 4:52–65, Fig. 4. “Current avatar
`position register 114 contains the current position and orientation of [user]
`A’s avatar in the virtual world.” Id. at 5:22–23. Remote avatar position
`table 112, in turn, “contains the current positions of the ‘in range’ avatars
`near [user] A’s avatar.” Id. at 5:31–32; see id. at 5:53–54, 6:1–6.
`
`The client executes a process to render a “view” of the virtual world
`“from the perspective of the avatar for that . . . user.” Id. at [57], 2:35–37,
`3:25–28, 4:45–51, 7:50–52. In the preferred embodiment, client system 60
`executes a graphical rendering engine program to “generate[] the user’s view
`of the virtual world.” Id. at 2:62–64, 4:45–51. “In rendering a view,
`client 60 requests the locations, orientations and avatar image pointers of
`neighboring remote avatars from server 61 and the server’s responses are
`stored in remote avatar position table 112.” Id. at 7:40–43. “Rendering
`engine 120 then reads register 114 [and] remote avatar position table 112,”
`
`6
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`as well as databases holding avatar images and the layout of the virtual
`world, and “renders a view of the virtual world from the view point (position
`and orientation) of [user] A’s avatar.” Id. at 7:48–56; see id. at 6:39–41,
`7:34–39.
`
`E. Illustrative Claim
`Independent claim 1 of the ’856 patent, reproduced below, is
`
`illustrative of the challenged claims:
`1. A method for enabling a first user to interact with second
`users in a virtual space, wherein the first user is associated with
`at first avatar and a first client process, the first client process
`being configured for communication with a server process, and
`each second user is associated with a different second avatar
`and a second client process configured for communication with
`the server process, at least one second client process per second
`user, the method comprising:
`
`(a) receiving by the first client process from the server
`process received positions of selected second avatars; and
`
`(b) determining, from the received positions, a set of the
`second avatars that are to be displayed to the first user;
`
`wherein the first client process receives positions of
`fewer than all of the second avatars.
`Ex. 1001, 21:7–21.
`
`II. FACTUAL AND PROCEDURAL BACKGROUND
`A. The Activision-Bungie Agreement
`Petitioner Bungie and non-party Activision Publishing, Inc.
`
`(“Activision”) entered into a Software Publishing and Development
`Agreement (“the Agreement”), effective April 16, 2010. Ex. 2002, 1.
`Under the Agreement, Petitioner Bungie “agreed to develop” a series of
`software products with the title Destiny (“the Destiny Products” or “the
`
`7
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`Products”), “to be exclusively published and distributed by Activision.” Id.
`In the Agreement, Bungie is identified as the Licensor.
`
`Bungie’s obligations under the Agreement include the obligation to
`conduct “legal reviews of the Products to ensure that all Intellectual Property
`and other rights are fully cleared for use.” Ex. 2002, 10 (Recital 7A.15(j)).
`The responsibilities of Bungie listed in Recital 7A.15 of the Agreement,
`including the “legal reviews,” are “subject to prior review and approval of
`Activision, (budget to [be] mutually approved).” Id. (Recital 7A.15).
`
`Bungie also warrantied that “the use, development, distribution and
`publishing [of the Product Intellectual Property] as contemplated by and set
`forth in this Agreement, shall not infringe upon or violate the rights of, nor
`require consent of, any other party.” Id. at 19 (Recital 14.1.2).
`
`The Agreement contemplates financial support from Activision to
`Bungie for development of the Destiny Products. Id. at 14 (Recital 10.1
`(“Activision shall pay development advances (‘Development Advances’) to
`Licensor for the development of each of the Products.”)). The Agreement
`provides the following:
`
`All Development Advances paid by Activision to
`Licensor hereunder shall be utilized by Licensor solely to fund
`the costs of creation and development of the Products and
`otherwise cover day-to-day overhead and operational expenses
`that are reasonably necessary and related to the creation and
`development of the Products (e.g., office lease, computers;
`employee salaries, etc.), but excluding any built-in profit
`margin.
`Id. at 20 (Recital 14.1.4).
`
`The Agreement includes indemnification provisions. Id. at 21
`(Recital 15). Those provisions allow each party, under certain conditions,
`
`8
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`IPR2015-01321 (Patent 8,145,998 B2)
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`“the right to assume full control over the defense and/or settlement of any
`such claims.” Id. (Recitals 15.1 and 15.2).
`
`The Agreement provides that Activision be allowed to have a person
`participate as an observer at Bungie’s Board of Directors meetings. Id. at 24
`(Recital 18.2). Specifically, the Agreement states as follows:
`
`Activision shall be granted the right to designate one
`person to attend and participate as a non-voting observer in all
`meetings of the Board of Directors of Licensor during the
`Development Term. . . . The Activision observer shall have the
`right to receive all materials provided to the members of
`Licensor’s Board of Directors and to participate fully (except
`voting) in all meetings of Licensor’s Board of Directors as if
`such observer were a voting director [unless such could result
`in, for example, loss of the attorney-client privilege].
`
`Id.
`
`B. The Worlds-Activision Litigation and the Letter
`In 2012, Patent Owner Worlds filed and served a complaint against
`
`Activision and later, but still in 2012, an amended complaint, with those
`complaints collectively alleging infringement of the ’856 patent, the ’501
`patent, the ’998 patent, and U.S. Patent Nos. 7,493,558 and 7,181,690 in the
`United States District Court for the District of Massachusetts (“Activision
`Litigation” or the “District Court litigation”). Ex. 2007 (original complaint);
`Ex. 2003 (certificate of service); Ex. 1031 (amended complaint); see also
`Ex. 1064 (Jt. Stip. 4 (stating that no complaints, other than the original and
`amended complaints, have been filed in the Activision Litigation)). As
`amended, the complaint alleged infringement by various products—but not
`any Destiny Products. See Ex. 1031. Petitioner Bungie is not a party to the
`Activision Litigation. Ex. 1064 (Jt. Stip. 1).
`
`9
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`Patent Owner sent to Activision a letter dated November 13, 2014.
`
`Ex. 2004 (“the Letter”). The Letter states that Activision had explained that
`it was unwilling to go further with certain discovery until Patent Owner
`indicated whether it would add additional accused products to the lawsuit.
`Id. at 1. In the Letter, Patent Owner informed Activision that Patent Owner
`“intend[s] to add . . . Destiny” to the Activision Litigation. Id. Patent
`Owner, however, has not added any of the Destiny Products as an accused
`product in the District Court litigation. Tr. 39:7–9 (Patent Owner’s counsel:
`“The Destiny product was never added to the litigation.”)).
`
`C. The Earlier Proceedings at the Board
`In May and June 2015—approximately six months after Worlds
`
`indicated its intent to add Destiny to the Activision Litigation—Bungie filed
`six IPR petitions including those in the three captioned cases. 4 E.g.,
`IPR2015-01264, Paper 3 (Petition filed May 26, 2015). These petitions
`were filed more than one year after Activision had been served with a
`complaint alleging infringement of the patents challenged in the petitions.
`Cf., e.g., Ex. 2003, 2 (indicating service of the summons was made on
`Activision on April 4, 2012). The six IPRs challenge the same five patents
`involved in the Activision Litigation. Trials were instituted in the six IPRs.
`See, e.g., IPR2015-01264, Paper 13 (“Decision on Institution” or “Inst.
`Dec.”).
`
`
`4 The other three related cases are IPR2015-01268, IPR2015-01269, and
`IPR2015-01325. Patent Owner’s Preliminary Responses, Institution
`Decisions, Patent Owner’s Responses, and Final Written Decisions in those
`related cases are filed at least in IPR2015-01264 as Exhibits 1052–1063.
`10
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`

`

`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
`
`Final Written Decisions were issued in the six IPRs in November and
`
`December 2016. In all of those decisions, the Board determined that there
`was insufficient evidence that Activision is an unnamed real-party-in-
`interest for the reasons given in each respective Institution Decision. E.g.,
`IPR2015-01264, Paper 42, 107. The Board also determined that Petitioner
`had shown that certain challenged claims are unpatentable but that Petitioner
`failed to meet its burden of proving unpatentability of certain other claims.
`E.g., Ex. 1061, 135–136 (Final Written Decision in IPR2015-01268:
`“Petitioner has shown by a preponderance of the evidence that claims 1–3,
`5–7, 10–12, 14, 15, 17, and 19 of the ’690 patent are unpatentable,” but not
`as to claims 4, 8, 13, and 16.).
`
`Patent Owner appealed the Final Written Decisions in the three
`above-captioned IPRs but did not appeal the three Final Written Decisions in
`the three other related IPRs. A chart of the six cases is provided below.
`Case Number Patent
`Petition
`Final
`Appeal Status
`Number
`Filing
`Written
`Date
`Decision
`Date
`5/26/15 11/10/16 Appealed; Vacated
`& Remanded
`5/26/15 11/30/16 Not Appealed
`
`IPR2015-01264 U.S. Pat. No.
`7,945,856 B2
`IPR2015-01268 U.S. Pat. No.
`7,181,690 B1
`IPR2015-01269 U.S. Pat. No.
`7,493,558 B2
`IPR2015-01319 U.S. Pat. No.
`8,082,501 B2
`IPR2015-01321 U.S. Pat. No.
`8,145,998 B2
`IPR2015-01325 U.S. Pat. No.
`8,145,998 B2
`
`5/26/15 11/28/16 Not Appealed
`
`6/1/15
`
`6/1/15
`
`6/1/15
`
`12/6/16 Appealed; Vacated
`& Remanded
`11/28/16 Appealed; Vacated
`& Remanded
`11/28/16 Not Appealed
`
`11
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`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
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`D. The Appeal to the United States Court of Appeals for the Federal Circuit
`
`The three captioned IPRs were addressed in a consolidated appeal to
`the United States Court of Appeals for the Federal Circuit. Worlds Inc., 903
`F.3d at 1237. Patent Owner Worlds argued that the Petitions were
`time-barred because the alleged RPI, Activision, had been served with a
`complaint more than one year prior to the filing dates of the Petitions. Id.
`at 1240. Patent Owner also appealed the merits of the Board’s obviousness
`analysis. Id. Petitioner Bungie raised contentions regarding issue preclusion
`(collateral estoppel) on appeal, “briefly” arguing that Patent Owner should
`be precluded from contesting the Board’s RPI determination because Patent
`Owner did not appeal the Board’s Final Written Decision in all six IPRs
`where RPI determinations were made. Id. at 1247.
`
`The Court concluded that “the Board erred in its real-party-in-interest
`analysis” and vacated the Final Written Decisions. Id. at 1239. The Court
`noted that, “[i]n its decisions to institute, the Board rejected Worlds’s
`argument [that Bungie should have named Activision as an RPI], concluding
`that ‘Patent Owner has not demonstrated that Activision is an unnamed real
`party in interest in this proceeding.’” Id.; see Inst. Dec. 33. The Court held
`that an IPR petitioner—not the patent owner—bears the ultimate burden of
`persuasion to demonstrate that a petition is not time barred under § 315(b).
`Worlds, Inc., 903 F.3d at 1242. This is, in part, because “an IPR petitioner
`will usually be in a better position, at least relative to the patent owner, to
`access evidence relevant to the real-party-in-interest inquiry.” Id. at 1242–
`43 (citations omitted).
`
`The Court also expressed “some concern that the Board may have
`relied on attorney argument as evidence that Activision was not controlling
`
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`or funding these IPRs,” and stated that “[t]his is particularly concerning
`given that the Board’s apparent reliance on such statements seemed to
`outweigh the actual evidence presented by Worlds.” Id. at 1246 (quoting
`Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed.
`Cir. 2017) (“Attorney argument is not evidence.”)). The Court remanded the
`cases “for the Board to weigh the evidence in a manner that places the
`ultimate burden of persuasion on Bungie, the IPR petitioner.” Id. at 1247.
`
`In its decision, the Court laid out the appropriate framework for
`addressing an RPI issue and, with specific reference to these cases, stated the
`following:
`Under the framework we have outlined above, the Board
`
`was entitled to rely, at least initially, on Bungie’s list of all real
`parties in interest, which raised no time-bar issues under the
`facts presented. Here, however, Worlds presented evidence
`sufficient to put Bungie’s identification of itself as the sole real
`party in interest into dispute. Thus, in this circumstance, the
`Board could no longer merely rely upon Bungie’s initial
`identification of the real parties in interest. Instead, the Board
`was required to make any factual determinations necessary to
`evaluate whether Bungie had satisfied its burden to demonstrate
`that its petition was not time-barred based on the complaints
`served upon Activision, the alleged real party in interest.
`Id. at 1245–46.
`
`As to the collateral estoppel matter, the Federal Circuit stated the
`following:
`Without a more comprehensive understanding of the issues
`raised in each case [of the six related cases], we decline to
`apply collateral estoppel. Instead, given that we are already
`remanding this case with regard to the merits of the real-party-
`in-interest analysis, we find it appropriate to have the Board
`
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`
`analyze in the first instance whether issue preclusion should
`apply under these particular circumstances.
`Id. at 1247.
`
`E. Proceedings at the Board on Remand
`As mentioned above, the Board panel and counsel for the parties held
`
`a conference call to discuss the procedures to be used on remand. See Tr.
`(Ex. 1051). Each party, during the conference call, indicated its belief that it
`would prevail based on the evidentiary record as it then stood. Id. at 13:10–
`16, 14:4–18:15 (Patent Owner); 41:10–13 (Petitioner). Both parties argued
`that further discovery should not be allowed. Id. at 14:4–16:16 (Patent
`Owner); 43:23–44:6, 47:4–9 (Petitioner).
`
`During the conference call, Petitioner initially proposed submitting a
`declaration from a witness that purportedly would support Petitioner’s RPI
`arguments, with the option of cross-examination by Patent Owner.
`Tr. 46:16–47:2. That offer was conditioned on Patent Owner not being
`allowed additional discovery. See id. at 47:4–9. After Patent Owner
`indicated that it would seek further discovery related to that proposed
`testimony and would seek discovery to determine whether Petitioner
`conducted a thorough investigation and complied with the routine discovery
`requirements5 (id. at 50:12–52:22), Petitioner confirmed that the
`then-existing record (plus certain agreed-upon “noncontroversial,
`
`
`5 The rule regarding routine discovery provides, in part, that “a party must
`serve relevant information that is inconsistent with a position advanced by
`the party during the proceeding concurrent with the filing of the documents
`or things that contains the inconsistency.” 37 C.F.R. § 42.51(b)(1)(iii).
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`non-testimonial evidence”) would be adequate, id. at 55:6–12. Petitioner did
`not place into the record a declaration regarding the RPI issue.
`
`In light of the discussions during the conference call and the agreed-
`upon procedures, we did not authorize further discovery and we ordered the
`record remain closed with the exception of the filing of authorized
`“noncontroversial evidence” and joint stipulations of fact. Paper 48, 10.
`Pursuant to our authorization, the parties briefed the RPI and collateral
`estoppel issues and filed the “noncontroversial” evidence (i.e., filings in
`related PTAB and the District Court proceedings) and joint stipulations.
`Papers 51, 55, 58, 59; Exs. 1052–1064.
`
`III. COLLATERAL ESTOPPEL/ISSUE PRECLUSION
`It is well-established that the common-law principles of collateral
`
`estoppel may apply to a situation where the same issue is before two courts.
`B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303 (2015).
`Additionally, “where a single issue is before a court and an administrative
`agency, preclusion also often applies.” Id.; see id. at 1299 (holding that a
`court should give preclusive effect to decisions of the USPTO’s Trademark
`Trial and Appeal Board “if the ordinary elements of issue preclusion are
`met”); cf. Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351–52
`(Fed. Cir. 2018) (citation omitted) (in reviewing a PTAB decision, the
`Federal Circuit determining that claim construction arguments made to that
`court are precluded by similar arguments previously raised to the court, and
`stating that “[i]t is well established that collateral estoppel, also known as
`issue preclusion, applies in the administrative context”). In the cases before
`us, however, Petitioner asks us to apply common-law principles of collateral
`
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
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`estoppel where the purportedly-identical issue is before the same
`administrative agency and the same decision maker, the Patent Trial and
`Appeal Board.
`
`Specifically, Petitioner asserts that Patent Owner, by appealing the
`RPI issue in only three of the Board’s six Final Written Decisions, allowed
`the Board’s RPI determinations in those three unappealed decisions to
`become the subject of final judgments, thereby precluding Patent Owner
`from addressing the RPI issue again before us. See Pet. Br. on Remand 6–8;
`id. at 7 (“[T]he final written decisions in the final IPRs are now each a valid,
`final judgment entitled to issue preclusive effect under common law
`principles of issue preclusion applicable in the appealed IPRs.”).
`
`The Supreme Court recently reiterated the policy concerns underlying
`the common-law principles of collateral estoppel:
`
`Sometimes two different tribunals are asked to decide the
`same issue. When that happens, the decision of the first
`tribunal usually must be followed by the second, at least if the
`issue is really the same. Allowing the same issue to be decided
`more than once wastes litigants’ resources and adjudicators’
`time, and it encourages parties who lose before one tribunal to
`shop around for another. The doctrine of collateral estoppel or
`issue preclusion is designed to prevent this from occurring.
`B & B Hardware, 135 S. Ct. at 1298–99. Under the particular facts of the
`cases currently before us, there are no such concerns regarding forum
`shopping. The three unappealed cases (along with the three appealed cases)
`were before the same tribunal as that presently continuing to hear the three
`appealed and remanded cases. Further, due to the concurrent nature of the
`Board proceedings in the six related IPRs and because the parties have
`
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
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`argued and continue to argue RPI as a singular matter, 6 we do not discern an
`overwhelming waste of resources or time by considering Patent Owner’s
`RPI arguments on remand. And, with the PTAB being the same tribunal
`before and after the appeal, it cannot be said that there are chronologically
`and plural “first” and “second” tribunals as was the subject of the policy
`concerns in B & B Hardware. For the reasons that follow, we determine that
`Patent Owner is not collaterally estopped from arguing the RPI issue on
`remand.
`
`Patent Owner contends that common-law collateral estoppel
`principles are not applicable in these proceedings, noting that the Agency
`has argued before our reviewing court against the application of common-
`law collateral estoppel principles at the Board. PO Resp. on Remand 12–14
`(citing the Brief for Intervenor, Biodelivery Scis. Int’l, Inc. v. Monosol RX,
`LLC, Appeal Nos. 2017-1265, -1266, -1268, 2017 WL 2666499 (Fed. Cir.
`2017)). 7 We need not reach Patent Owner’s contention because, even if
`
`
`6 Although Patent Owner argues that RPIs could be different in certain
`hypothetical situations, Patent Owner does not identify any substantive
`differences between the identification of alleged RPIs in the proceedings
`involved here. See PO Resp. on Remand 3–6. As Petitioner notes (see Pet.
`Br. on Remand 1, 3–5), Patent Owner argued in all six cases that Activision
`is the unnamed RPI and framed the issue based on the same underlying
`assertions and evidence—including the Agreement, the documents
`pertaining to the Activision Litigation involving all five subject patents, and
`the Letter indicating an intent to add the Destiny Products to that litigation.
`Patent Owner’s argument that Activision is an RPI in each and every one of
`these cases is in contrast to any implied assertion that Activision might not
`be an RPI in some of the IPRs.
`7 Petitioner asserts that the Office’s “intervenor brief is inapposite,” and
`impliedly argues that the Government more recently has taken a contrary
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`IPR2015-01264 (Patent 7,945,856 B2)
`IPR2015-01319 (Patent 8,082,501 B2)
`IPR2015-01321 (Patent 8,145,998 B2)
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`common-law principles of collateral estoppel would be applicable to two
`concurrent IPRs both being heard by the PTAB, for the following reasons,
`we do not find that those principles should be applied to the facts of these
`IPRs in a manner that would preclude Patent Owner’s RPI arguments.
`
`“The general rule for issue preclusion (also called collateral estoppel)
`is, ‘[w]hen an issue of fact or law is actually litigated and determined by a
`valid and final judgment, and the determination is essential to the judgment,
`the determination is conclusive in a subsequent action between the parties,
`whether on the same or a different claim.’” Worlds Inc., 903 F.3d at 1247
`(quoting B & B Hardware, 135 S.Ct. at 1303 (quoting Restatement (Second)
`of Judgments § 27 (1982))). One of the required elements of collateral
`estoppel is that the prior action presents an issue identical to that involved in
`a subsequent action. Laguna Hermosa Corp. v. United States, 671 F.3d
`1284, 1288 (Fed. Cir. 2012). The general rule for issue preclusion is subject
`to certain exceptions. Worlds Inc., 903 F.3d at 1247.
`
`Patent Owner argues that the identical-issue requirement is not
`satisfied in the cases before us. PO Resp. on Remand 7–8. Patent Owner
`
`
`position. Pet. Reply on Remand 2 (quoting Brief for the Respondents,
`Return Mail, Inc. v. United States Postal Service, No. 17-1594, 2019 WL
`169139, at *41 (U.S. Jan. 9, 2019)). Pe