UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________
`
`ACTIVISION BLIZZARD, INC.
`Petitioner
`
`V.
`
`GAME AND TECHNOLOGY CO., LTD
`Patent Owner
`
`Patent No. 7,682,243
`
`Filing Date: June 23, 2005
`
`Issue Date: March 23, 2010
`
`Title: METHOD FOR PROVIDING ONLINE GAME WHICH CHANGES
`PILOT DATA AND UNIT DATA IN GEAR AND SYSTEM THEREOF
`_____________________________________________
`Inter Partes Review No.: IPR2018-00157
`__________________________________________________________________
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`TO RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 7,682,243
`(CASE NO. IPR2017-01082) UNDER 35 U.S.C. §§ 315(c) AND 37 C.F.R. §
`42.122(b)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the PTAB E2E System
`
`
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________
`
`ACTIVISION BLIZZARD, INC.
`Petitioner
`
`V.
`
`GAME AND TECHNOLOGY CO., LTD
`Patent Owner
`
`Patent No. 7,682,243
`
`Filing Date: June 23, 2005
`
`Issue Date: March 23, 2010
`
`Title: METHOD FOR PROVIDING ONLINE GAME WHICH CHANGES
`PILOT DATA AND UNIT DATA IN GEAR AND SYSTEM THEREOF
`_____________________________________________
`Inter Partes Review No.: IPR2018-00157
`__________________________________________________________________
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`TO RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 7,682,243
`(CASE NO. IPR2017-01082) UNDER 35 U.S.C. §§ 315(c) AND 37 C.F.R. §
`42.122(b)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the PTAB E2E System
`
`
`
`TABLE OF CONTENTS
`JOINDER SHOULD NOT IMPACT THE WARGAMING IPR
`
`I.
`
`SCHEDULE ....................................................................................................1
`
`A.
`
`B.
`
`Petitioner’s Concessions Ensure It Will Act as an Understudy............1
`
`Cross-Examination of Mr. Crane Is Likely Unnecessary .....................3
`
`PETITIONER’S MOTION FOR JOINDER IS TIMELY ..............................4
`
`PATENT OWNER DOES NOT DISPUTE THE FOLLOW-ON FACTORS
`
`WEIGH IN FAVOR OF PETITIONER..........................................................5
`
`II.
`
`III.
`
`IV. CONCLUSION................................................................................................5
`
`i
`
`
`
`Patent Owner’s argument that joinder of the Blizzard IPR (IPR2018-00157)
`
`will impact the trial schedule for the Wargaming IPR (IPR2017-01082) ignores
`
`Petitioner’s concessions and the facts of this case. The Motion for Joinder should
`
`be granted.
`
`I.
`
`Joinder Should Not Impact the Wargaming IPR Schedule
`Patent Owner makes much of the separate expert declaration submitted by
`
`Petitioner, but just as with Teva Pharms. USA, Inc. v. Allergan, Inc., IPR2017-
`
`00578, paper 9 (P.T.A.B. March 31, 2017), this separate declaration should not
`
`preclude joinder. Petitioner Blizzard submitted the Crane Declaration (Ex. 1017) as
`
`a precaution, in the event that Petitioner Wargaming would settle prior to Due Date
`
`1 in the Wargaming IPR, currently January 29, 2018.1
`
`Patent Owner’s
`
`Preliminary Response in the present case is due February 6, 2018. While the Crane
`
`Declaration is separate from the Kitchen Declaration filed in the Wargaming IPR,
`
`it is substantively identical. Mr. Kitchen’s deposition should occur prior to Due
`
`Date 1, and neither the Petition nor the Crane Declaration raises any new issues
`
`that would otherwise necessitate cross-examination of Mr. Crane in this case.
`
`Petitioner’s Concessions Ensure It Will Act as an Understudy
`A.
`In its Motion for Joinder, Petitioner acknowledges that it would act as
`
`1 Petitioner has provided Mr. Crane’s declaration because Petitioner could
`
`not retain Mr. Kitchen as an expert due to conflicts. See Paper 3 at 9.
`
`1
`
`
`
`understudy, as long as Wargaming remains a petitioner in the Wargaming IPR, and
`
`made the following assurances—
`
`1.
`2.
`3.
`4.
`
`5.
`
`Petitioner agrees to not file separate written submissions;
`Petitioner agrees to not cross-examine any GAT witness(es);
`Petitioner agrees to not argue at oral hearing;
`Petitioner agrees to rely on Wargaming’s expert in the event joinder is
`granted as long as Wargaming continues to participate in the IPR
`proceeding; and
`Petitioner agrees to withdraw its expert declaration of Mr. David
`Crane and proceed using the arguments and evidence put forth by
`Wargaming in its IPR based on the progress of the Wargaming IPR.2
`
`See Paper 3 at 7, 10. Indeed, the PTAB has previously found these concessions,
`
`especially those with respect to the use of another expert, weigh in favor of joinder.
`
`See Paper 3 at 8-10; Teva Pharms. USA, Inc. v. Allergan, Inc., IPR2017-00578,
`
`paper 9 at 3 (P.T.A.B. March 31, 2017); SAP America Inc. v. Clouding IP, LLC,
`
`IPR2014-00306, Paper 13 at 4 (P.T.A.B. May 19, 2014); Intel Corp. v. DSS Tech.
`
`2 In particular, Petitioner agrees it would withdraw its expert declaration at
`
`the latest by Due Date 1 (currently January 29, 2018) in the Wargaming IPR.
`
`Petitioner notes that its assurances are consistent with the first two additional
`
`requirements Patent Owner demands. See Paper 9 at 9. Without explanation, Patent
`
`Owner further requires an additional assurance (#4), which is unnecessary and
`
`inappropriate in this case. See id.
`
`Further, Petitioner fully agrees to assume a
`
`back-seat, understudy role in the Wargaming IPR, without any right to separate or
`
`additional briefing or discovery, unless authorized by the Board.
`
`2
`
`
`
`Management, Inc., IPR2016-00287 and IPR2016-01311, Paper 8 at 3 (P.T.A.B.
`
`Aug. 29, 2016). Patent Owner’s assertions that Petitioner, (1) has not agreed to
`
`forego additional discovery, (2) has plans to submit and to continue to rely on a
`
`new expert declaration separate from Wargaming while Wargaming is a
`
`participant, and (3) has not agreed to withdraw its expert declaration, are
`
`inaccurate. See Paper 9 at 4, 9.
`
`Moreover, Patent Owner’s assertion that Petitioner cannot act as an
`
`understudy is not supported by the case Patent Owner cites. Paper 9 at 4-7. In
`
`Kyocera, the PTAB merely authorizes a party to file a motion for joinder and
`
`mentions the factors to be considered in such a motion, such as impact on trial
`
`schedule—thus, the holding in Kyocera has little relevance as to whether a motion
`
`for joinder should be granted. Kyocera Corp. v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (P.T.A.B. April 24, 2013).
`
`Cross-Examination of Mr. Crane Is Likely Unnecessary
`B.
`Patent Owner claims that granting joinder will create schedule changes as a
`
`result of its “opportunity to cross-examine Petitioner’s proffered expert.” See Paper
`
`9 at 5 (citing ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 10 at 5 (July 24,
`
`2015)). Unless Wargaming withdraws from its IPR prior to Due Date 1, the Patent
`
`Owner Response deadline, separately cross-examining Mr. Crane in the Blizzard
`
`IPR is unnecessary. As of Due Date 1, Petitioner agrees to withdraw its expert
`
`3
`
`
`
`declaration and solely rely on Mr. Kitchen’s testimony.
`
`Should Wargaming withdraw from the IPR prior to Due Date 1 in the
`
`Wargaming IPR, then, at most, Patent Owner would have the opportunity to
`
`depose Mr. Crane. Under this scenario, the overlap between the expert analyses of
`
`Mr. Crane and Mr. Kitchen is so great that little effort would be necessary for the
`
`deposition of Mr. Crane.
`
`In his declaration, Mr. Crane states that he agrees with and adopts the
`
`analyses and conclusions set forth in Mr. Kitchen’s declaration submitted in the
`
`Wargaming IPR—thus Mr. Crane’s testimony does not add any additional
`
`substantive information. See Ex. 1017 at ¶¶ 72-73 (“I agree with Mr. Kitchen’s
`
`analysis as it relates to the above-identified topics.
`
`.
`
`. I also agree with Mr.
`
`Kitchen’s ultimate conclusion that claims 1-7 of the ’243 patent are obvious under
`
`Levine in view of D&D.). Moreover, Patent Owner has already deposed Mr. Crane
`
`in a parallel IPR proceeding involving another patent involved in the same district
`
`court litigation as the ‘243 patent. See Activision Blizzard, Inc. v. Game and
`
`Technology Co., Ltd., No. IPR2016-01885, Ex. 2003 (May 24, 2017 deposition
`
`transcript of David Crane).
`
`II.
`
`Petitioner’s Motion for Joinder Is Timely
`Contrary to Patent Owner’s allegations, the present Petition was timely filed
`
`under Section 315(c), which is an exception to Section 315(b)’s time bar.
`
`4
`
`
`
`Microsoft Corp. v. Proxyconn Inc., IPR2013-00109, Paper No. 15 at 3 (P.T.A.B.
`
`Feb. 25, 2013) (“However, the one-year time bar does not apply to a request for
`
`joinder. 35 U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b).”). It is well
`
`settled that a request for joinder is an exception to the one-year time bar rule. See
`
`Paper No. 3 at 4-5.
`
`To the extent Patent Owner claims that the Wargaming IPR Petition was not
`
`“properly filed” with respect to Wargaming’s standing, Petitioner recognizes that
`
`its standing to participate is contingent on the Board’s resolution of the standing
`
`issue in the Wargaming IPR. See Paper 3 at 5.
`
`III. Patent Owner Does Not Dispute the Follow-On Factors Weigh in Favor
`of Petitioner
`To the extent
`
`the Board considers the follow-on factors, Petitioner’s
`
`statements regarding these factors are undisputed by Patent Owner. See Paper 3 at
`
`12-15.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`institute inter partes review of claims 1-7 of the ’243 patent and grant joinder of
`
`Petitioner’s IPR and with the Wargaming IPR.
`
`5
`
`
`
`Dated: January 5, 2018
`
`Respectfully submitted,
`
`By:
`
`/Sharon A. Israel/
`Sharon A. Israel (Reg. No. 41,867)
`(sisrael@shb.com)
`Shook, Hardy & Bacon L.L.P.
`600 Travis St., Suite 3400
`Houston, TX 77002-2926
`Phone: (713) 546-5689
`Fax: (713) 227-9508
`
`John D. Garretson (Reg. No. 39,681)
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108-2613
`jgarretson@shb.com
`Phone: (816) 474-6550
`Fax: (816) 421-5547
`
`Tanya Chaney (Reg. No. 55,080)
`Shook, Hardy & Bacon L.L.P.
`600 Travis St., Suite 3400
`Houston, TX 77002-2926
`tchaney@shb.com
`Phone: (713) 227-8008
`Fax: (713) 227-9508
`
`Counsel for Petitioner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a complete and entire copy of this REPLY IN
`
`SUPPORT OF ITS MOTION FOR JOINDER TO RELATED INTER
`
`PARTES REVIEW OF U.S. PATENT NO. 7,682,243 (CASE NO. IPR2017-
`
`01082) UNDER 35 U.S.C. §§ 315(c) AND 37 C.F.R. § 42.122(b), was sent via e-
`
`mail on January 5, 2018, to the following:
`
`William H. Mandir (Reg. No. 32,156)
`wmandir@sughrue.com
`
`Peter S. Park (Reg. No. 60,719)
`pspark@sughrue.com
`
`John M. Bird (Reg. No. 46,027)
`jbird@sughrue.com
`
`Christopher J. Bezak (Reg. No. 63,241)
`cbezak@sughrue.com
`
`Fadi N. Kiblawi (Reg. No. 61,973)
`fkiblawi@sughrue.com
`
`Harper Batts (Reg. No. 56,160)
`harper.batts@bakerbotts.com
`
`Jeffrey Liang (Reg. No. 69,043)
`jeffrey.liang@bakerbotts.com
`
`7
`
`
`
`Dated: January 5, 2018
`
`By:
`
`Respectfully submitted,
`/Sharon A. Israel/
`Sharon A. Israel (Reg. No. 41,867)
`(sisrael@shb.com)
`Shook, Hardy & Bacon L.L.P.
`600 Travis St., Suite 3400
`Houston, TX 77002-2926
`Phone: (713) 546-5689
`Fax: (713) 227-9508
`
`John D. Garretson (Reg. No. 39,681)
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, MO 64108-2613
`jgarretson@shb.com
`Phone: (816) 474-6550
`Fax: (816) 421-5547
`
`Tanya Chaney (Reg. No. 55,080)
`Shook, Hardy & Bacon L.L.P.
`600 Travis St., Suite 3400
`Houston, TX 77002-2926
`tchaney@shb.com
`Phone: (713) 227-8008
`Fax: (713) 227-9508
`
`Counsel for Petitioner
`
`8
`
`
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