UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Patent 8,082,501
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`In its POPR, Worlds does not dispute Microsoft’s evidence related to the real
`
`party-in-interest (RPI), nor does Worlds even allege that Microsoft’s petition was
`
`filed at the behest of either Activision or Bungie, as the law requires for either of
`
`these parties to be found an RPI. Instead, Worlds argues that Activision is an RPI
`
`to Microsoft’s petition solely because: (1) Microsoft copied Bungie’s publicly
`
`available petition, to which Activision may have been an RPI; and (2) Activision
`
`may benefit from Microsoft’s petition in Activision’s independent litigation. These
`
`allegations, even if assumed true, do not implicate an RPI relationship.
`
`“Because nonparty preclusion risks binding those who have not had a full and
`
`fair opportunity to litigate, the Supreme Court has cautioned that there is a general
`
`rule against nonparty preclusion, subject to certain exceptions.” WesternGeco LLC
`
`v. ION Geophysical Corp., 889 F. 3d 1308, 1316-1319 (Fed. Cir. 2018). Two
`
`questions are “at the heart” of demonstrating that a non-party should be deemed a
`
`“real party-in-interest” (RPI): “whether [the] non-party ‘desires review of the patent’
`
`and whether a petition has been filed at [the] nonparty’s ‘behest.’” Applications In
`
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AIT”)
`
`(emphasis added). Both must be answered in the affirmative to present an exception
`
`to the general rule against non-party preclusion. Id. Microsoft previously
`
`demonstrated that the petition was not filed at any party’s behest other than
`
`Microsoft. See Petition at 6-14 (presenting extensive evidence that “this IPR is not
`
`
`
`1
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`at the ‘behest’ of either Activision [or] Bungie, and Microsoft is not representing
`
`either of these parties’ interests”).
`
`The assertions made by Worlds in its POPR do not relate to whether the
`
`petition was filed at Activision’s behest and are thus not sufficient to raise an
`
`exception to the general rule against binding Microsoft with nonparty preclusion.
`
`I. Microsoft Copying a Public Petition Does Not Equate to Microsoft
`Filing Its Petition at Activision’s Behest
`Simple logic dictates that Microsoft’s copying of Bungie’s publicly available
`
`petition is not evidence of—much less evidence sufficient to prove—that Microsoft
`
`filed its petition at the behest of either Bungie or Activision. And Worlds presents
`
`no authority for such a proposition. To the contrary, in order to assess whether a
`
`petition was filed at the behest of a non-party, the Federal Circuit looks to evidence
`
`of a “sufficiently close relationship” between the petitioner and a non-party to justify
`
`burdening the petitioner with the non-party’s estoppel. AIT 897 F.3d at 1350.
`
`In determining how close a relationship must be to deem a non-party an RPI,
`
`the Federal Circuit turns to “Wright & Miller and other authorities [that] provide
`
`examples of legal relationships in which a nonparty is or is not a ‘real party in
`
`interest.’” Id at 1349. Examples of such relationships include “(1) executors; (2)
`
`administrators; (3) guardians; (4) bailees; (5) trustees of express trusts; (6) parties
`
`‘with whom or in whose name a contract has been made for another’s benefit’; and
`
`(7) parties authorized by statute.” Id. at 1347-1348. Further examples include
`
`
`
`2
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`certain “trade associations”, attorneys-in-fact or agents solely for the purpose of
`
`bringing suit, or parties that actually consent or otherwise acquiesce to being bound
`
`by a prior judgement. Id. at 1351, 1357. Each of these examples are relationships
`
`where one party is operating at the “behest” of another. No such relationship exists
`
`in this case, nor has Worlds even alleged one.
`
`Furthermore, applying Worlds’ theory to the language of §315(b) would lead
`
`to overly broad applicability of §315(b) and create facially unsound policy. Section
`
`315(b) bars petitions where an RPI of the petitioner was served with a complaint
`
`alleging infringement of the patent more than one year prior to filing. If RPI status
`
`flows from prior authorship alone, as Worlds’ theory requires, parties filing copy-
`
`cat petitions would always have original petitioners as their RPI, and this status
`
`would serve to bar copy-cat petitions unless filed within one year of the original
`
`petitioner’s infringement service date. This perverse outcome would encourage
`
`settlement by patent owners and original petitioners upon passage of the 315(b) bar
`
`date but prior to final written decision, as such settlement would prevent later
`
`defendants from thereafter relying upon the original petitioner’s grounds.
`
`Gamesmanship through staggered litigation to preclude patent office review of
`
`meritorious grounds would surely follow. This cannot possibly be Congress’s intent.
`
`II. Any Benefit to Activision From Microsoft’s Petition Is Incidental And
`Does Not Make It an RPI
`
`
`
`3
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`Lacking any proof that Microsoft filed its petition at Activision’s behest—
`
`and, in fact, ignoring entirely the evidence to the contrary submitted with Microsoft’s
`
`petition—Worlds argues that Activision is an RPI because Microsoft’s petition may
`
`benefit Activision. This argument, on its own, is deficient. And Worlds assertion
`
`that Activision benefitting from Microsoft’s petition is evidence that Microsoft is
`
`“improperly advancing the interests of Bungie and Activision” (see POPR, 12-14)
`
`is equally unavailing for at least two reasons.
`
`First and foremost, the potential for incidental benefit to Activision from
`
`Microsoft’s IPR petition is not legally sufficient to make Activision an RPI. Wright
`
`& Miller § 1545, n.2 (3d ed. 2018) (“Merely because one may benefit by the result
`
`in litigation does not make him a ‘real party in interest’”). Indeed, the Board has
`
`acknowledged that it “must be cautious not to ‘overextend[]’ the reasoning set forth
`
`in AIT to any situation where ‘a party benefits generally from the filing of the Petition
`
`and also has a relationship with the Petitioner.’” Ventex Co., Ltd. v. Columbia
`
`Sportswear North America, Inc., IPR2017-00651, Paper 148, 10 (PTAB Jan. 24,
`
`2019) (precedential) (citations omitted).
`
`Second, Worlds’ argument that Microsoft is “not acting solely on its own
`
`behalf” because it copied a petition challenging claims that are only asserted against
`
`Activision, is wrong on the facts. To support its argument, Worlds cites to its
`
`infringement contentions. POPR, 12-14. However, Worlds fails to mention that
`
`
`
`4
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`Worlds had served these contentions on December 21, 2020—two and a half weeks
`
`after Microsoft filed its petition. Ex. 2006, 2. Rather than proving some nefarious
`
`motive by Microsoft on behalf of Activision, the timing here shows that Worlds is
`
`the one manufacturing the appearance of impropriety.
`
`Acting as expeditiously as possible, Microsoft filed its petition before Worlds
`
`served its infringement contentions. At that time, Worlds’ complaint against
`
`Microsoft identified “at least method claims 1, 2, 5, and 10 of the ’501 Patent.” Ex.
`
`1021, 2 (emphasis). It was reasonable for Microsoft to expect that it could be
`
`accused of infringing all claims that were included in Bungie’s petition. Then, with
`
`full knowledge of the grounds advanced by Microsoft, Worlds fashioned its
`
`contentions to include fewer claims than challenged by Microsoft’s petition. In fact,
`
`if Worlds can manufacture good cause, Worlds could later attempt to amend its
`
`contentions to add these claims back, after the institution decision. Rather than
`
`proving that Microsoft is acting at the behest of Activision, this merely shows that
`
`Microsoft acted efficiently and reasonably, hoping to leverage the work that the
`
`PTAB has already put into reviewing and invalidating these claims. Worlds’
`
`attempted maneuver with its infringement contentions only underscores its lack of
`
`evidence that Activision is an RPI.
`
`For the above reasons, none of Worlds’ allegations support exception to the
`
`general rule against nonparty preclusion. Thus, Microsoft’s petition is not barred.
`
`
`
`5
`
`
`
`April 26, 2021
`
`Respectfully submitted,
`
`
`
`Date:
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`
`
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00277
`Attorney Docket No. 42342-0086IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on April 26,
`
`2021, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response was provided via email, to the Patent Owner by serving the
`
`correspondence addresses of record as follows:
`
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`Davidson Berquist Jackson & Gowdey L.L.P.
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`
`Email: whelge@dbjg.com
`Email: jwilson@dbjg.com
`Email: anoto@dbjg.com
`
`
`
`
`
`
`
`/Kristyn Waldhauser /
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 638-5731
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
