Filed on behalf of: Bungie, Inc. By: Michael T. Rosato (mrosato@wsgr.com) Andrew S. Brown (asbrown@wsgr.com) WILSON SONSINI GOODRICH & ROSATI 701 Fifth Avenue, Suite 5100 Seattle, WA 98104-7036 Paper No. Filed: April 22, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BUNGIE, INC., Petitioner, v. ACCELERATION BAY LLC., Patent Owner. Patent No. 6,714,966 MOTION FOR JOINDER WITH IPR2015-1953
TABLE OF CONTENTS I. Statement of the Precise Relief Requested... 1 II. Background... 2 III. Argument... 5 A. Legal Standard... 5 B. Bungie s Motion for Joinder Is Timely... 6 C. The Board Should Grant Bungie s Motion for Joinder... 6 i. Joinder is Appropriate... 6 ii. Public Policy Considerations Support Joinder... 8 iii. iv. The Grounds Presented Are Either Identical or Closely Related to the Already-Instituted Grounds... 9 Joinder Will Not Negatively Impact the Activision et al. IPR Trial Schedule... 12 v. Discovery and Briefing Can Be Simplified... 12 IV. Conclusion... 13 -i-
I. Statement of the Precise Relief Requested Bungie, Inc. ( Bungie or Petitioner ) submits, concurrently with this Motion, a petition for inter partes review ( Petition ) of claims 1-12 and 16-17 of U.S. Patent No. 6,714,966 ( the 966 patent ), which is purportedly assigned to Acceleration Bay LLC ( Patent Owner ). Bungie respectfully requests joinder pursuant to 35 U.S.C. 315(c) and 37 C.F.R. 42.122(b) of the concurrently filed petition with pending inter partes review IPR2015-01953. On September 24, 2015Activision Blizzard, Inc., Electronic Arts Inc., TakeTwo Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. (collectively, the 2015 Petitioners ), initiated inter partes review of the 966 patent. Activision Blizzard, Inc. et al. v. Acceleration Bay LLC, IPR2015-01953 (herein after Activision et al. IPR ). The Board instituted review in the Activision et al. IPR on March 24, 2016, relying on the teachings of the Shoubridge reference. 1 Bungie s request for joinder is timely because it has been less than one month since the Board has issued an institution decision in the Activision et al. IPR. See 37 C.F.R. 42.122(b). The Petition is also narrowly tailored to the 1 Peter J. Shoubridge & Arek Dadej, Hybrid Routing in Dynamic Networks, 3 IEEE Int l Conf. on Comms. Conf. Rec. 1381 86 (1997) ( Shoubridge ). 1
ground of unpatentability that was instituted in the Activision et al. IPR with a nominal addition of a single dependent claim in view of the same Shoubridge prior art reference on which the Board instituted trial in IPR2015-01953. Bungie s petition, in fact, is practically a copy of the Activision et al. IPR petition with respect to its instituted ground, including the same analysis of the prior art and expert testimony. In addition, joinder is appropriate because it will efficiently resolve the validity of the challenged claims of the 966 patent over the same prior art in a single proceeding, without causing undue burden or prejudice to the parties to the Activision et al. IPR. Absent termination of at least one of the 2015 Petitioners as a party to the proceeding, Bungie anticipates participating in the proceeding in a limited capacity. Moreover, Joinder will have no impact on the trial schedule of IPR2015-01953 because that IPR is still in its early stages. Bungie has notified counsel for the 2015 Petitioners regarding the subject of this motion. Counsel have indicated they do not oppose joinder. II. Background Patent Owner has asserted the 966 patent against Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively Defendants ) in Acceleration Bay LLC v. Activision Blizzard, Inc., Case No. 1:15-cv-00228-RGA (D. Del., filed Mar. 11, -2-
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. et al., Case No. 1:15-cv-00311-RGA (D. Del., filed Apr. 13, 2015) (collectively, the underlying litigations ). Bungie is not a party to the underlying litigations. Bungie received a subpoena in connection with the underlying litigations, in response to which it has filed a motion to quash and for entry of a protective order, which is currently pending in the Western District of Washington as Case No. 2:16-MC-27. On September 24, 2015, the 2015 Petitioners, filed a petition for inter partes review Activision et al. IPR challenging claims 1-17 of the 966 patent, which included three grounds: Ground 1: claims 1-17 are obvious over DirectPlay 2 and Shoubridge; Ground 2: claims 1-7, 10, 11, 16 and 17 are anticipated by Shoubridge; and Ground 3: claims 6-10 and 17 are obvious over Shoubridge in view of the knowledge of a person having ordinary skill in the art ( POSITA ). On March 24, 2016, the Board instituted review of Ground 2 for claims 1-7, 11 and 16 2 Bradley Bargen & Peter Donnelly, Inside DirectX : In-Depth Techniques for Developing High-Performance Multimedia Applications (1998) ( DirectPlay ). -3-
and of Ground 3 for claims 6-10 and 17, but denied institution for Ground 1. 3 Recently, on April 21, 2016, the same 2015 Petitioners, filed a petition for inter partes review which was assigned Case No. IPR2016-00932 ( the 931 IPR ) challenging claim 12 of the 344 patent on two grounds: Ground 1: claim 12 is obvious over Shoubridge in view of the knowledge of a POSITA; and Ground 2: claim 12 is obvious over Shoubridge in view of DirectPlay. Concurrently, with its petition for the 932 IPR, the 2015 Petitioners filed a motion requesting joinder of the 932 IPR with the Activision et al. IPR, arguing that joinder of the limited grounds raised therein is appropriate as it will not delay resolution of the instituted IPRs and that granting its motion will secure the just speedy, and inexpensive resolution of the unpatentability of the 966 patent. See Activision Blizzard, Inc. et al. v. Acceleration Bay, LLC, IPR2016-00932, Paper 3 at 1 (April 21, 2016) (citation omitted). Concurrently with this Motion, Bungie is filing its Petition challenging claims 1-12 and 16-17 of the 966 patent under 35 U.S.C. 102 and 103 as unpatentable over Shoubridge. Bungie s concurrent Petition raises the following 3 Also on September 24, 2015, the same 2015 Petitioners, filed a petition for inter partes review which was assigned Case No. IPR2015-01951 ( the 1951 IPR ) also challenging claims 1-17 of the 344 patent on separate grounds. On March 24, 2016, the Board instituted review in the 1951 IPR. -4-
grounds: Ground 1: claims 1-7, 11 and 16 are anticipated by Shoubridge; Ground 2: claims 6-10 and 17 are obvious over Shoubridge; and Ground 3: claim 12 is obvious over Shoubridge. As such, the Petition raises the same grounds of unpatentability that were instituted in the Activision et al. IPR with only the addition of Ground 3 directed to dependent claim 12 in view of the Shoubridge reference. III. Argument A. Legal Standard The Board has authority to join as a party any person who properly files a petition for inter partes review to an instituted inter partes review. 35 U.S.C. 315(c). Section 315(c) encompasses both party joinder and issue joinder, and, as such, permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder. Zhongshan Broad Ocean Motor Co., et al. v. Nidec Motor Corp., IPR2015-00762, Paper 16 at 5 (October 5, 2015). A motion for joinder must be filed within one month of institution of any inter partes review for which joinder is requested. 37 C.F.R. 42.122(b). In deciding whether to grant a motion for joinder, the Board considers several factors including: (1) the reasons why joinder is appropriate; (2) whether the party to be joined has presented any new grounds of unpatentability; (3) what impact, if any, joinder would have on the trial schedule for the existing review; and -5-
(4) how briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014); Macronix Int l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4 (April 24, 2013)). B. Bungie s Motion for Joinder Is Timely Joinder may be requested no later than one month after the institution date of an inter partes review for which joinder is requested. 37 C.F.R. 42.122. Here, because the Board issued its institution decision in the Activision et al. IPR on March 24, 2016, this Motion for Joinder is timely. C. The Board Should Grant Bungie s Motion for Joinder The Board should exercise its discretion and grant this Motion for Joinder of the Petition with the already instituted Activision et al. IPR proceeding because joinder provides a vehicle to efficiently consider related prior art issues and avoid any unfair prejudice to Patent Owner and Bungie. i. Joinder is Appropriate Joinder with the Activision et al. IPR is appropriate because the Petition presents virtually to the same issues already presented in the Activision et al. IPR petition and instituted by the Board. It also relies on the same prior art analysis and expert testimony submitted by the 2015 Petitioners. Indeed, the Petition is directed -6-
to the same Shoubridge reference and is nearly identical with respect to the grounds instituted in the Activision et al. IPR petition. In fact, the present Petition is virtually identical in content to the Activision et al. IPR petition other than: (1) addition of claim 12 to the challenged claims; (2) certain formalities (e.g., mandatory notice information, counsel, etc.); and (3) the removal of certain content set forth in the Activision et al. IPR petition that was unrelated to the instituted grounds. Joinder is also appropriate because it will promote the just, speedy, and inexpensive resolution of patentability issues, including the determination of validity of the challenged claims of the 966 patent. For example, a final written decision on the validity of the 966 patent has the potential to minimize issues in the underlying litigations, and potentially resolve the underlying litigations or any future litigation altogether with respect to the 966 patent. Absent joinder, if Patent Owner and the 2015 Petitioners settle following institution, the PTAB and/or a district court may be forced to re-adjudicate the same issues on which the 2015 Petitioners have already shown it is reasonably likely to prevail, which would be a waste of judicial resources. Moreover, granting joinder will not prejudice Patent Owner or the 2015 Petitioners, while Bungie could be prejudiced if joinder is denied. As mentioned above, the Petition relies on the same prior art Shoubridge-based grounds raised in -7-
the Activision et al. IPR petition. Therefore, joinder should not significantly affect the timing of the Activision et al. IPR. Also, there should be little to no additional cost to Patent Owner or the 2015 Petitioners given the overlap in the petitions. As discussed, the only addition to the present Petition over that of the Activision et al. IPR petition is the inclusion of dependent claim 12 to the challenged claims to an instituted ground. Patent Owner should not be prejudiced by this nominal addition because, for example, (1) it relies on the same prior art analysis and expert as the Activision et al. IPR; and (2) the Patent Owner is already defending this claim in the 1951 petition, which is on the same schedule as the Activision et al. petition. On the other hand, Bungie would be potentially prejudiced if joinder is denied. For example, absent joinder, Patent Owner may attempt to use aspects of the Activision et al. IPR against Bungie in future district court litigation, even though Bungie was not able to participate in the Activision et al. IPR to protect its interests. ii. Public Policy Considerations Support Joinder Joinder is further supported by public policy considerations and the public interest in seeing invalid patents formally invalidated. The Board is charged with considering the effect...on the economy and the integrity of the patent system, among other considerations, when implementing and applying its rules, including those relating to joinder. See 35 U.S.C. 316(b); see also 37 C.F.R. 1.56(a) ( A -8-
patent by its very nature is affected with a public interest. The public interest is best served...when, at the time an application is being examined, the Office is aware of and evaluates the teachings of all information material to patentability. ). There is an important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain and a corresponding strong federal policy favoring free competition in ideas which do not merit patent protection. Lear, Inc. v. Adkins, 395 U.S. 653, 656, 670 (1969). The Supreme Court recently confirmed these policies, stating that although the public interest...favors the maintenance of a well-functioning patent system, the public also has a paramount interest in seeing that patent monopolies...are kept within their legitimate scope. Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843, 851-52 (2014) (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 816 (1945)). These important public policy considerations further support joinder because, as shown in the Petition, all of claims 1-12 and 16-17 are invalid under 102,103 based on Shoubridge. iii. The Grounds Presented Are Either Identical or Closely Related to the Already-Instituted Grounds The Petition does not present any new prior art ground of unpatentability all grounds are based on the same Shoubridge reference on which the Activision et al. IPR was instituted. As mentioned above, the Petition presents the grounds -9-
raised in the Activision et al. IPR petition, and is based on the same prior art analysis and expert testimony submitted by the 2015 Petitioners. The petitions do not differ in any substantive way other than (1) adding dependent claim 12 to the challenged claims and (2) removing content related to the ground where the board declined institution. Practically speaking, there is little, if anything, new being added by this Petition over what was instituted in the Activision et al. IPR. While an additional claim is being challenged, the challenges are based on the same prior art reference and relies upon the testimony of the same witness. Moreover, the Petition presents separate grounds such that the Board may assess the appropriateness of joinder on a ground-by-ground basis. See 37 C.F.R. 42.108(a). Grounds 1 and 2 in the current Petition are identical to the alreadyinstituted grounds, so they present no new issues and will have no impact on the trial schedule. Additional dependent claim 12 is merely a dependent claim that recites facially obvious content to its parent claim, which is being challenged under the instituted ground in the Activision et al. IPR., and should similarly have minimal, if any, impact on the trial schedule. In circumstances similar to those presented here, the Board has routinely granted joinder because doing so does not introduce any new analysis of the prior art, new witness, or increase the complexity of the prior IPR. See, e.g., Hyundai, -10-
IPR2014-01543, Paper No. 11 at 2-4 (Oct. 24, 2014) (granting joinder where the new petition purportedly copied the instituted grounds, relied on the same declaration testimony, and did not increase the complexity of the instituted IPR); Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013) (granting joinder where new petition asserted the same grounds of unpatentability, presented an identical analysis of the prior art, and used the same declaration testimony); Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul. 29, 2013) (granting joinder where new petition asserted the same prior art references, relied upon the same declaration testimony as the instituted grounds, and asserted the same grounds of unpatentability). Further, the Board has granted joinder where (similar to the Petition) the new petition is only adding claims that depend from the previously challenged claims, relies on the same declarant, and uses much of the same prior art. Ariosa Diagnostics v. ISIS Innovation LTD, IPR2013-00250, Paper No. 24, at 2-5 (Sept. 3, 2013) (granting institution where new petition involved same patent, challenged claims that were dependent on the claims previously challenged, relies on much of the same prior art, and relied upon same declarants). Bungie respectfully requests that the Board follow prior practice of granting joinder where the new petition recites practically the same ground as presented in the prior IPR. -11-
iv. Joinder Will Not Negatively Impact the Activision et al. IPR Trial Schedule Because the Petition, essentially copies the instituted ground from the Activision et al. IPR petition, joinder will have no substantial effect on the parties, or prevent the Board from issuing a final written decision in a timely manner. The timing and content of Bungie s petition and motion for joinder minimize any impact to the Activision et al. IPR trial schedule. Moreover, as discussed above, Bungie anticipates participating in the proceeding in a limited capacity absent termination of a party. For example, if the proceedings are joined and absent termination of a party, it is anticipated no expert witnesses beyond those presented by the 2015 Petitioners and Patent Owner will present testimony. Accordingly, Bungie does not believe that any extension of the schedule will be required by virtue of joinder of Bungie as a petitioner to this proceeding. Even if the Board were to determine that joinder would require a modest extension of the schedule, such an extension is permitted by law and is not a reason for denying joinder. 35 U.S.C. 316(a)(11); 37 C.F.R. 42.100(c). v. Discovery and Briefing Can Be Simplified Given the Petition is nearly identical to the Activision et al. IPR petition with respect to grounds of unpatentability raised in that petition and instituted by the Board, the Board may adopt procedures similar to those used in related cases to simplify briefing and discovery during trial. See e.g., Hyundai, IPR2014-01543, -12-
Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, the Board may order petitioners to consolidate filings, or limit separate filings, if any, directed only to points of disagreement with the 2015 Petitioners (Bungie does not anticipate any), with the understanding that it will not be permitted any separate arguments in furtherance of those advanced in the 2015 Petitioners consolidated filings. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5. Further, no additional depositions will be needed and depositions will be completed within ordinary time limits. Id. Moreover, to the extent that Bungie does participate in the proceedings, Bungie will coordinate with the 2015 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. Bungie is willing to take a backseat role to the 2015 Petitioners, in which it would not file any separate papers without consultation with the 2015 Petitioners and prior authorization from the Board. These procedures should simplify briefing and discovery. IV. Conclusion For the foregoing reasons, Bungie respectfully requests that this motion be granted and that this proceeding be joined with the Activision et al. IPR. However, if the Board identifies concerns due to the addition of dependent claim 12 to the -13-
challenged claims over what was instituted in the Activision et al. IPR, Bungie requests the Board, at a minimum, grant joinder and institution on claims 1-11 and 16-17 as being unpatentable based on Shoubridge (i.e., proposed Grounds 1 and 2). Respectfully submitted, Dated: April 22, 2016 / Michael T. Rosato / Michael T. Rosato, Lead Counsel Reg. No. 52,182-14-
CERTIFICATE OF SERVICE Pursuant to 37 C.F.R. 42.6(e) and 42.105(a), this is to certify that I caused to be served a true and correct copy of the foregoing Motion for Joinder by overnight courier (Federal Express or UPS), on this 22 nd day of April, 2016, on the Patent Owner at the correspondence address of the Patent Owner as follows: Acceleration Bay LLC 370 Bridge Parkway Redwood City, CA 94065 James Hannah KRAMER LEVIN NAFTALIS & FRANKEL LLP 990 Marsh Road Menlo Park, CA 94025 Respectfully submitted, Dated: April 22, 2016 / Michael T. Rosato / Michael T. Rosato, Lead Counsel Reg. No. 52,182-15-