Trials@uspto.gov Paper 11 571-272-7822 Entered: July 7, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BUNGIE, INC., Petitioner, v. ACCELERATION BAY, LLC, Patent Owner. Case Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and WILLIAM M. FINK, Administrative Patent Judges. FINK, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R. 42.108 Petitioner s Motion for Joinder 37 C.F.R. 42.122(b)
I. INTRODUCTION A. Background On April 22, 2016, Bungie, Inc. ( Petitioner or Bungie ) filed a Petition requesting an inter partes review of claims 1 12, 16, and 17 of U.S. (Ex. 1101, the 966 patent ). Paper 2 ( Pet. ). On the same day, Petitioner filed a Motion for Joinder pursuant to 35 U.S.C. 315(c), seeking to join this proceeding with Activision Blizzard, Inc., et al. v. Acceleration Bay, LLC, Case IPR2015-01953 ( the 1953 IPR ). Paper 3 ( Mot. ). In the 1953 IPR, which was requested by Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. ( the Activision Petitioners ), we instituted inter partes review of claims 1 11, 16 and 17 of the 966 patent, but we did not institute inter partes review of claims 12 15 of the 966 patent. See 1953 IPR, slip op. at 17, 19, 20, 24 (PTAB Mar. 24, 2016) (Paper 8). Acceleration Bay, LLC ( Patent Owner ) filed a Preliminary Response to Bungie s Petition. Paper 10 ( Prelim. Resp. ). Patent Owner also filed an Opposition to the Motion for Joinder. Paper 9 ( Opp. ). Upon consideration of the Petition and Preliminary Response, we institute an inter partes review of claims 1 11, 16 and 17 of the 966 patent, and we grant Bungie s Motion for Joinder. We exercise our discretion, under 35 U.S.C. 325(d), to deny institution of inter partes review as to claim 12. B. The 966 Patent The 966 patent relates to a broadcast technique in which a broadcast channel overlays a point-to-point communications network. Ex. 1101, 4:3 5. The communication network consists of a graph of point-to-point 2
connections between host computers or nodes. Id. at 4:23 26. Figure 1 of the 966 patent is reproduced below: Figure 1 illustrates a broadcast channel represented by a 4-regular, 4- connected graph. Id. at 4:48 49. The graph of Figure 1 is 4-regular because each node is connected to exactly four other nodes (e.g., node A is connected to nodes E, F, G, and H). Id. at 4:38 39, 4:49 53. A node in a 4- regular graph can only be disconnected if all four of the connections to its neighbors fail. Id. at 4:39 42. Moreover, the graph of Figure 1 is 4- connected because it would take the failure of four nodes to divide the graph into two separate sub-graphs (i.e., two broadcast channels). Id. at 4:42 47. 3
To broadcast a message over the network, an originating computer sends the message to each of its four neighbors using the point-to-point connections. Id. at 4:30 32. Each computer that receives the message sends it to its other neighbors, such that the message is propagated to each computer in the network. Id. at 4:32 38. The minimum number of connections needed to traverse any two computers in the network is known as the distance between them, while the maximum of the distances in the network is called the diameter of the broadcast channel. Id. at 4:57 5:3. In Figure 1, the diameter is 2 because a message originating at any node (e.g., A) traverses no more than 2 connections to reach every other node. Id. at 5:3 6. C. Illustrative Claims Among the claims challenged by Petitioner, claims 1, 13, and 16 are independent. Claim 1, which is illustrative of the claimed subject matter, and claim 12, which depends from claim 1, are reproduced below: 1. A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant sends data to the other participants by sending the data through each of its connections to its neighbor participants and wherein each participant sends data that it receives from a neighbor participant to its other neighbor participants, further wherein the network is m-regular, where m is the exact number of neighbor participants of each participant and further wherein the number of participants is at least two greater than m thus resulting in a non-complete graph. 4
12. The computer network of claim 1 wherein the interconnections of participants form a broadcast channel for a topic of interest. Ex. 1101, 30:2 12, 30:36 38. D. Related Matters Petitioner and Patent Owner identify the following pending judicial matters as relating to the 966 patent: Acceleration Bay LLC v. Activision Blizzard, Inc., Case No. 1:15-cv-00228-RGA (D. Del., filed Mar. 11, 2015); Acceleration Bay LLC v. Electronic Arts Inc., Case No. 1:15-cv-00282-RGA (D. Del., filed Mar. 30, 2015); and Acceleration Bay LLC v. Take-Two Interactive Software, Inc., Case No. 1:15-cv-00311-RGA (D. Del., filed Apr. 13, 2015). Pet. 4; Mot. 2; Paper 8, 1. Petitioner indicates it is not a party to the underlying district court proceedings. Pet. 4; Mot. 2. In the 1953 IPR, we instituted an inter partes review of claims 1 7, 11, and 16 of the 966 patent on the ground of anticipation under 35 U.S.C. 102(a) by Shoubridge, 1 and claims 6 10 and 17 of the 966 patent on the ground of obviousness under 35 U.S.C. 103(a) over Shoubridge. Recently, in IPR2016-00932 ( the 932 IPR ), we denied another petition filed by the Activision Petitioners directed to claim 12 of the 966 patent. Activision Blizzard, Inc., et al. v. Acceleration Bay, LLC, Case IPR2016-00932 (PTAB June 23, 2016) (Paper 13) ( 932-Decision ). In addition, claims 1 12, 16, and 17 of the 966 patent are the subject of inter partes review in Activision Blizzard, Inc., et al. v. Acceleration Bay, 1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, 3 IEEE INT L CONF. ON COMMS. CONF. REC. 1381-86 (Montreal, 1997) (Ex. 1105) ( Shoubridge ). 5
LLC, Case IPR2015-01951 ( the 1951 IPR ). Bungie has been joined as a petitioner in the 1951 IPR. See Bungie, Inc. v. Acceleration Bay, LLC, Case IPR2016-00935 (PTAB June 23, 2016) (Paper 10). The 1953 IPR As noted above, in the 1953 IPR we instituted inter partes review of claims 1 11, 16, and 17 of the 966 patent, but we did not institute inter partes review of claims 12 15 of the 966 patent. 1953 IPR, Paper 8 ( 1973-Decision ). In the 1953 IPR, the Activision Petitioners contended that claim 12 would have been obvious over Shoubridge and DirectPlay. 2 See 1953 IPR, Paper 2 ( 1953-Pet. ). As summarized in the 1953-Decision, Shoubridge models a communication network as a graph in which each node serves as a source of user traffic entering the network, where traffic can be sent to the other nodes in the network. 1953-Decision 12 (citing Ex. 1105, 3 2). Shoubridge describes a 64 node network with connectivity of degree 4 modeled as a large, regular graph and routing protocols known as constrained flooding and minimum hop routing. Id. Ultimately, Shoubridge proposes a hybrid routing strategy, which may rely on a combination of constrained flooding and minimum hop routing depending on whether valid routing information exists. Id. In the 1953 IPR, the Activision Petitioners argued that Shoubridge discloses all of the limitations of claim 1. 1953-Pet. 28 34. For claim 12, the Activision Petitioners relied on DirectPlay, to teach the recited 2 Bradley Bargen & Peter Donnelly, INSIDE DIRECTX (Microsoft Press, 1998) (Ex. 1103) ( DirectPlay ). 3 Shoubridge and DirectPlay have the same exhibit numbers in the 1953 IPR and in this proceeding. 6
computer network of claim 1 wherein the interconnections of participants form a broadcast channel for a topic of interest. Id. at 43 44. The Activision Petitioners contended it would have been obvious to a person of ordinary skill in the art to apply Shoubridge s teaching of flooding over a network to the gaming environment taught by DirectPlay to achieve DirectPlay s objective of scalability and reliability. Id. at 23 27. However, we determined the obviousness analysis in the petition to be insufficient. 1953-Decision 22 24. Accordingly, we found the Activision Petitioners did not establish a reasonable likelihood of prevailing in their challenge against claim 12. Id. E. Asserted Grounds of Unpatentability Bungie asserts that claims 1 7, 11, and 16 of the 966 patent are unpatentable as anticipated by Shoubridge. Pet. 17 26. Bungie also asserts that claims 6 10 and 17 of the 966 patent are unpatentable as obvious over Shoubridge. 4 Id. at 26 29. As noted, these are the same grounds, and these are the same claims, for which we instituted inter partes review in the 1953 IPR. Bungie also asserts that claim 12 of the 966 patent would have been obvious over Shoubridge. Pet. 29 32. Bungie describes this asserted ground as substantially similar to the Activision Petitioners challenge to claim 12 as obvious over Shoubridge in the 932 IPR. Id. at 6 n.1. In the 932 4 Bungie articulates this ground as obviousness based on Shoubridge and the knowledge of a POSITA. Pet. 29. Because obviousness is determined from the perspective of a person of ordinary skill in the art, we refer to this ground simply as obviousness over Shoubridge. 7
IPR, we denied inter partes review of claim 12 on this ground. 932- Decision 8 11. III. ANALYSIS A. Claims 1 11, 16 and 17 The Petition in this proceeding asserts that claims 1 7, 11, and 16 of the 966 patent are anticipated by Shoubridge, i.e., the same ground of unpatentability on which we instituted review of these claims in the 1953 IPR. Compare Pet. 17 26, with 1953-Decision 17. Similarly, the Petition in this proceeding asserts that claims 6 10 and 17 of the 966 patent are obvious over Shoubridge the same ground of unpatentability on which we instituted review of these claims in the 1953 IPR. Compare Pet. 26 29, with 1953-Decision 19. Indeed, the Petition filed in this proceeding is practically a copy of the petition in the 1953 IPR with respect to its instituted ground[s], including the same analysis of the prior art and expert testimony. Mot. 2. Patent Owner s Preliminary Response does not address Petitioner s assertion that claims 1 11, 16, and 17 would have been unpatentable over Shoubridge. See Prelim. Resp. 1. For the same reasons set forth in our institution decision in the 1953 IPR, we determine that the information presented in Bungie s Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1 11, 16, and 17 would have been unpatentable over Shoubridge. See 1953-Decision 11 19. Therefore, we institute an inter partes review of claims 1 7, 11, and 16 on the asserted ground of anticipation by Shoubridge, and we institute inter partes review of claims 6 10 and 17 on the asserted ground of obviousness over Shoubridge. 8
B. Claim 12 Petitioner also asserts that claim 12 would have been obvious over Shoubridge. Pet. 29 32. As a threshold matter, Patent Owner argues that the Board should decline to institute review with respect to claim 12 under 35 U.S.C. 325(d) because the Petition recycles substantially the same prior art as well as substantially the same arguments that were already presented to the Patent Office. Prelim. Resp. 11. Petitioner does not address the applicability of 35 U.S.C. 325(d) to this proposed ground. Institution of inter partes review is subject to the Board s discretion. See 37 C.F.R. 42.108(b). In particular, [i]n determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. 35 U.S.C. 325(d). Having considered the parties contentions, we determine the asserted ground challenging claim 12 as unpatentable over Shoubridge relies on the same prior art and substantially the same arguments as the petition in the 1953 IPR. Although Shoubridge alone was not raised as a basis for challenging claim 12 in the 1953 IPR, it was raised as a basis for challenging claim 1, from which claim 12, among other claims, depends. 1953-Decision 11 12. Moreover, the claim mapping provided for claim 12 in the instant petition relies on nearly identical disclosures in Shoubridge as relied upon for claim 1 in the 1953 petition. Compare Pet. 30 (citing Ex. 1105, 2 11 3 1) (mapping Shoubridge s disclosures of broadcasting a user packet on outgoing links to claim 12 s broadcast channel for a topic of interest ), with 1953-Pet. 31 32 (citing Ex. 1105, 2 11 3 1) (mapping Shoubridge s 9
disclosures of broadcasting a user packet on outgoing links to claim 1 s send[ing] data to the other participants ). Our determination that Petitioner s challenge to claim 12 relies on the same prior art and substantially the same arguments that were presented in the 1953 IPR is consistent with our decision in the 932 IPR, in which we reached the same conclusion with respect to the Activision Petitioners substantially similar challenge to claim 12. See 932-Decision 9. We also noted in the 932 IPR that the Activision Petitioners had presented no persuasive reason why claim 12 could not have been challenged based on Shoubridge alone in the 1953 IPR. Id. at 9. As in the 932 IPR, we exercise our discretion under 325(d) to deny institution of inter partes review of claim 12 on the asserted ground of obviousness over Shoubridge, which relies on the same prior art and substantially the same arguments previously presented to the Office. In the 932 IPR we provided a further reason for exercising our discretion not to institute review of claim 12 based on Shoubridge the parallel challenge to claim 12 based on DirectPlay and Lin 5 in the 1951 IPR. See id. at 11 (citing Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case IPR2014-00436, slip op. at 11 12 (PTAB June 19, 2014) (Paper 17) (informative); Samsung Elecs. Co. v. Affinity Labs of Tex. LLC, Case IPR2015-00820, slip op. at 4 5 (PTAB May 15, 2015) (Paper 12)). As noted above, we granted Bungie s 5 Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low Message Overhead and High Reliability for Broadcasting on Small Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego, 1999) (Ex. 1104 (Exhibit B)) ( Lin ). 10
motion for joinder with the 1951 IPR, and therefore Bungie already is a petitioner in an instituted review of claim 12. One additional factor weighing in favor of denying institution with respect to claim 12 under 325(d) is that Bungie indicates it is not a party to any district court proceeding involving the 966 patent. Pet. 4. This suggests Bungie is not facing a bar under 35 U.S.C. 315(b). Based on the current record, we are aware of no reason Bungie would be unable to file another petition challenging claim 12 should it be dissatisfied with the ultimate determination regarding the patentability of claim 12 in the existing proceedings. C. Grant of Motion for Joinder The Petition and Motion for Joinder in this proceeding were accorded a filing date of April 22, 2016. See Paper 5. Thus, Petitioner s Motion for Joinder is timely because joinder was requested no later than one month after the institution date of the 1953 IPR, i.e., March 24, 2016. See 37 C.F.R. 42.122(b). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for 11
the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15). As discussed above, the Petition in this case asserts the same invalidity grounds with respect to claims 1 11, 16, and 17 on which we instituted review in the 1953 IPR. See Mot. 1 2, 4 5. Bungie also relies on the same prior art analysis and expert testimony submitted by the Activision Petitioners. See id. at 6. Indeed, the Petition is nearly identical to the petition filed by the Activision Petitioners with respect to the grounds on which review was instituted in the 1953 IPR. See id. at 6 7. Thus, this inter partes review of claims 1 11, 16, and 17 of the 966 patent does not present any ground or matter not already at issue in the 1953 IPR. Patent Owner does not oppose Bungie s Motion for Joinder with respect to the asserted ground of anticipation of claims 1 7, 11, and 16 by Shoubridge and the asserted ground of obviousness of claims 6 10 and 17 over Shoubridge. See Opp. 3 (opposing joinder only with respect to claim 12). If joinder is granted, Bungie anticipates participating in the proceeding in a limited capacity absent termination of at least one of the Activision Petitioners as a party. Id. at 12. Bungie agrees to coordinate with the [Activision] Petitioners to consolidate filings, manage questioning at depositions, manage presentations at the hearing, ensure that briefing and discovery occur within the time normally allotted, and avoid redundancies. Id. at 13. Bungie also states it is willing to take a backseat role to the [Activision] Petitioners, in which it would not file any separate papers without consultation with the [Activision] Petitioners and prior authorization from the Board. Id. Because Bungie expects to participate only in a 12
limited capacity, Bungie submits that joinder will not impact the trial schedule for the 1953 IPR. Id. at 12. We agree with Petitioner that joinder with the 1953 IPR is appropriate under the circumstances. Accordingly, we grant Petitioner s Motion for Joinder. Accordingly, it is: V. ORDER ORDERED that an inter partes review is instituted in as to claims 1 11, 16, and 17 of the 966 patent on the following grounds: Shoubridge; Shoubridge; Claims 1 7, 11 and 16 as anticipated under 35 U.S.C. 102(a) by Claims 6 10 and 17 as obvious under 35 U.S.C. 103(a) over FURTHER ORDERED that the trial is limited to these grounds, and no other ground is authorized; FURTHER ORDERED that the Motion for Joinder with IPR2015-01953 is granted, and Bungie, Inc. is joined as a petitioner in IPR2015-01953; FURTHER ORDERED that is terminated under 37 C.F.R. 42.72, and all further filings shall be made only in IPR2015-01953; FURTHER ORDERED that, subsequent to joinder, the grounds for trial in IPR2015-01953 remain unchanged; FURTHER ORDERED that, subsequent to joinder, the modified Scheduling Order in place for IPR2015-01953 (Paper 13) remains unchanged; 13
FURTHER ORDERED that in IPR2015-01953, the Activision Petitioners and Bungie will file each paper, except for a motion that does not involve the other party, as a single, consolidated filing, subject to the page limits set forth in 37 C.F.R. 42.24, and shall identify each such filing as a consolidated filing; FURTHER ORDERED that for any consolidated filing, if Bungie wishes to file an additional paper to address points of disagreement with the Activision Petitioners, Bungie must request authorization from the Board to file a motion for additional pages, and no additional paper may be filed unless the Board grants such a motion; FURTHER ORDERED that the Activision Petitioners and Bungie shall collectively designate attorneys to conduct the cross-examination of any witness produced by Patent Owner and the redirect of any witness produced by the Activision Petitioners and Bungie, within the timeframes set forth in 37 C.F.R. 42.53(c) or agreed to by the parties; FURTHER ORDERED that the Activision Petitioners and Bungie shall collectively designate attorneys to present a consolidated argument at the oral hearing, if requested and scheduled; FURTHER ORDERED that the case caption in IPR2015-01953 shall be changed to reflect joinder of Bungie as a petitioner in accordance with the attached example; and FURTHER ORDERED that a copy of this Decision shall be entered into the record of IPR2015-01953. 14
FOR PETITIONER: Michael T. Rosato Andrew S. Brown WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com asbrown@wsgr.com FOR PATENT OWNER: James Hannah Michael Lee Shannon Hedvat Jeffrey Price KRAMER LEVIN NAFTALIS & FRANKEL LLP jhannah@kramerlevin.com mhlee@kramerlevin.com shedvat@kramerlevin.com jprice@kramerlevin.com 15
UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ACTIVISION BLIZZARD, INC., ELECTRONIC ARTS INC., TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K SPORTS, INC., ROCKSTAR GAMES, INC., and BUNGIE, INC., Petitioner, v. ACCELERATION BAY, LLC, Patent Owner. Case IPR2015-01953 1 1 Bungie, Inc., who filed a Petition in, has been joined as a petitioner in this proceeding.