Petitioner argues in the Request that the Decision “overlooks Petitioner’s arguments regarding the prior art as a whole and the rationale for combining the teachings of Francis (EX1005) and Gilbert (EX1021).” Req.

Petitioner has not explained how Francis and Gilbert would be combined to teach a portal computer “send[ing] an edge connection request to a number of randomly selected neighboring participants.” Dec. 12.

Petitioner argues that motivation to modify Francis in view of Gilbert with regard to “a seeking participant contacts a fully connected portal computer” was discussed at pages 49–50 of the Petition.

Petitioner then contends that a person having ordinary skill would have modified Francis to use Gilbert’s teachings of a portal node in order to improve network security and provide messaging efficiencies.

We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.

Institution of an inter partes review is authorized by statute when “the information presented in the petition ... and any response ... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.

Upon consideration of the Petition and Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1–5, 7, 8, and 11–13 of the ’069 patent.

Relying on the testimony of Dr. Nicholas Bambos, Petitioner explains how the combined prior art allegedly teaches or suggests all of the claim limitations.

Petitioner contends that Gilbert’s disclosed “alternative embodiment,” in which “the step of contacting two adjacent nodes ... can be ‘executed by a joinder module within the network manager,’” meets the claim language concerning an edge connection request to a number of [randomly selected] neighboring participants.

Petitioner, however, has not sufficiently explained how or why a person having ordinary skill in the art would have combined Francis and Gilbert to achieve this claim element.

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.

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.

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.

The preliminary response is limited to setting forth the reasons why the requested review should not be Case IPR2017-01600 Patent No. 6,910,069 B1 instituted.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2017-01600 Patent No. 6,910,069 B1 mediation, etc.) was used and the general result.

Petitioner’s request for a refund of certain post-institution fees paid on 03/12/2016 in the above proceeding is hereby granted.

The amount of $14,800 has been refunded Choose a refund method.

Case IPR2016-00726 Patent 6,910,069 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E) system, accessible from the Board Web site at http://www.uspto.gov/PTAB.

For the PATENT OWNER:

Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. (collectively, “Petitioner”) filed a Petition for inter partes review of claims 1–17 of U.S. Patent No. 6,910,069 B1 (Ex. 1101, “the ’069 patent”).

Institution of an inter partes review is authorized by statute when “the information presented in the petition ... and any response ... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108.

Upon consideration of the Petition and Preliminary Response, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of claims 1–17 of the ’069 patent.

Relying on the testimony of Dr. David R. Karger, Petitioner explains how the combined prior art allegedly teaches or suggests all of the claim limitations.

We are persuaded by Patent Owner’s arguments that Obraczka’s group master uses a strategy of generating a new topology and informing the other networked computers of the change after a new replica is added, as opposed to what is claimed.