UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`ACTIVISION BLIZZARD, INC.
`Petitioner
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`v.
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`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
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`Case IPR2018-00157
`Patent 7,682,243
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`_____________
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`ACTIVISION BLIZZARD, INC.
`Petitioner
`
`v.
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`GAME AND TECHNOLOGY CO., LTD.,
`Patent Owner
`_____________
`
`Case IPR2018-00157
`Patent 7,682,243
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`_____________
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(b)-(c) and 37 C.F.R. § 42.23, Game and
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`Technology Co., Ltd. (“GAT”) respectfully requests that the Board deny
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`Activision Blizzard, Inc.’s (“Activision Blizzard”) Motion for Joinder, together
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`with Activision Blizzard’s Petition for Inter Partes Review of U.S. Patent No.
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`7,682,243 (“the ‘243 patent”), seeking cancellation of claims 1-7 of the ‘234
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`patent, IPR2018-00193 (“Second Activision Blizzard IPR”), and joinder of this
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`proceeding with Wargaming Group Limited v. Game and Technology Co., LTD.,
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`IPR2017-01082 (“Wargaming IPR”).
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`II. STATEMENT OF MATERIAL FACTS
`GAT, Activision Blizzard, and other entities are involved in litigation over
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`the ‘243 patent and related patents in Game and Technology Co. Ltd v.
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`Wargaming.net LLP, 2:16-cv-06554 (C.D. Cal.) and Game and Technology Co.
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`Ltd v. Blizzard Entertainment, Inc., 2:16-cv-06499 (C.D. Cal.).
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`The complaint in Game and Technology Co. Ltd v. Blizzard Entertainment,
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`Inc., 2:16-cv-06499 (C.D. Cal.) was filed by GAT against Activision Blizzard, on
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`July 9, 2015.
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`On September 30, 2016, Activision Blizzard filed its first Petition for Inter
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`Partes Review (IPR2016-01918, “First Activision Blizzard IPR”) seeking
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`cancellation of claims 1-8 of the ‘243 patent. IPR2016-01918, Paper 1. GAT filed
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`1
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`its Preliminary Response in the First Activision Blizzard IPR on January 9, 2017,
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`and the Board denied institution on March 21, 2017. IPR2016-01918, Papers 11,
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`14.
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`On March 13, 2017, Wargaming Group Limited (“Wargaming”) filed its
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`Petition for Inter Partes Review (Wargaming IPR) seeking cancellation of claims
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`1-7 of the ‘234 patent. IPR2017-01082, Paper 1.
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`On July 12, 2017, GAT filed a Preliminary Response in the Wargaming IPR.
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`IPR2017-01082, Paper 8.
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`On October 6, 2017, the Board instituted review of claims 1-7 of the ‘243
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`patent in the Wargaming IPR. IPR2017-01082, Paper 14.
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`On November 6, 2017, Activision Blizzard submitted the Second Petition
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`for Inter Partes Review of claims 1-7 of the ‘243 patent and the Motion for
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`Joinder.
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`III. ARGUMENT
`Because Activision Blizzard’s Petition for Inter Partes Review in the
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`Second Activision Blizzard IPR is barred under 35 U.S.C § 315(b),1 Activision
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`1 Activision Blizzard’s Petition Should be Denied Under 35 U.S.C. § 315(b)
`because Activision Blizzard concedes that the Petition for Inter Partes Review
`in the Second Activision Blizzard IPR was filed more than one year after service
`of the complaint in Game and Technology Co. Ltd v. Activision Blizzard
`Entertainment, Inc., 2:16-cv-06499 (C.D. Cal.), in violation of 35 U.S.C. §
`315(b). See Motion for Joinder at 14.
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`2
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`Blizzard may only participate in an IPR under 35 U.S.C. § 315(c). However,
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`Activision Blizzard should not be allowed to join the Wargaming IPR.
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`Alternatively, if Activision Blizzard is allowed to join the Wargaming IPR,
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`additional restrictions should be applied to Activision Blizzard.
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`As the moving party, Activision Blizzard has the burden of proof to establish
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`entitlement to joinder. 37 C.F.R. §§ 42.20(c), 42.122(b); see also Samsung Elecs.
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`Co., LTD. v. Arendi S.A.R.L., IPR2014-01144, Paper 11 at 4 (Oct. 2, 2014). The
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`factors determinative of whether to grant a motion for joinder are: (1) the reasons
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`why joinder is appropriate; (2) whether the party to be joined has presented any
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`new grounds of unpatentability; (3) what impact joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4
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`(emphasis added). Based on such factors, Activision Blizzard has not sufficiently
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`shown entitlement to joinder because the impact of joinder would negatively affect
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`the trial schedule in the Wargaming IPR and joinder would, in fact, complicate
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`discovery in the Wargaming IPR.
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`A. Activision Blizzard’s Separate Expert Precludes Understudy
`Role
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`Activision Blizzard asserts it will act as an “understudy,” citing SL Corp. v.
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`Adaptive Headlamp Techs., Inc., IPR2016-01368, Paper 9 (Nov. 16, 2016) and
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`Teva Pharms. USA, Inc. v. Allergan, Inc., IPR2017-00578, Paper 9 (Mar. 31,
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`3
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`2017). Motion for Joinder at 7. Activision Blizzard argues joinder is appropriate
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`because the Second Activision Blizzard IPR “will not present issues that might
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`complicate or delay the Wargaming IPR.” Motion for Joinder at 5.
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`In the cited cases, the “understudy” agreed to rely on the initial petitioner’s
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`expert and, in Teva Pharms., even agreed to withdraw its own expert’s declaration.
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`See SL Corp. Paper 9 at 5; Teva Pharms Paper 9 at 3. But contrary to such cases,
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`Activision Blizzard has submitted a separate declaration from its own expert. See
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`Ex. 1017. Accordingly, Activision Blizzard cannot be acting as an “understudy”
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`by introducing new evidence in the form of independent expert declaration, even if
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`the new evidence simply reaffirms previous evidence. Moreover, Activision
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`Blizzard’s use of a second declarant will complicate the Wargaming IPR because
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`GAT will be required to depose the second declarant. Even presuming the experts
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`will agree, GAT will, at a minimum, be required to depose both experts to confirm
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`such agreement. Therefore, Activision Blizzard cannot, in fact, truly act as an
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`“understudy,” which will complicate discovery in the Wargaming IPR. See
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (describing
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`simplification of discovery and impact of joinder on trial schedule).
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`B. Granting Activision Blizzard’s Motion Will Impact the Schedule
`Activision Blizzard acknowledges the Board has denied joinder in the past
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`when the moving party offers its own expert declaration, but asserts that the
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`4
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`motion for joinder was denied in ZTE Corp. because the petitioner did not explain
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`why a declaration from another expert was necessary. Motion for Joinder at 9 n. 2
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`(citing ZTE Corp. v. Adaptix, Inc., IPR2015-01184, Paper 10 at 5). However, the
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`Board in ZTE Corp. also considered the fact that “[r]outine discovery in an inter
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`partes review includes cross examination of affidavit testimony.” ZTE Corp.,
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`Paper 10 at 4-5 (citing 37 C.F.R. § 42.51(b)(1)(ii)). If joinder is granted, the Patent
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`Owner “should have the opportunity to cross-examine Petitioner’s proffered
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`expert.” Id.
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`Joinder will negatively impact the schedule of the Wargaming IPR because
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`allowing Activision Blizzard to join, while relying on a separate expert, will
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`require GAT to depose both experts. GAT’s Preliminary Response is due February
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`6, 2018, because the Second Activision Blizzard IPR was filed on November 6,
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`2017. However, GAT’s discovery is set to conclude in the Wargaming IPR on
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`January 29, 2018. See IPR2017-01082, Paper 16 at 9. As such, GAT will be
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`required to depose Activision Blizzard’s expert after the conclusion of the
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`discovery period. Thus, GAT will either be unable to dispose the additional
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`expert, or at least be required to extend the schedule, which will complicate
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`discovery in the Wargaming IPR. See Kyocera Corp. v. Softview LLC, IPR2013-
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`00004, Paper 15 at 4 (describing impact of joinder on trial schedule).
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`5
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
`C. Activision Blizzard’s Illusory Understudy Role
`Activision Blizzard acknowledges that the Board has denied joinder in the
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`past when the moving party offers its own expert declaration, but asserts that
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`joinder was denied because the Petitioner did not explain why a declaration from
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`another expert was necessary. Motion for Joinder at 9 n. 2 (citing ZTE Corp. v.
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`Adaptix, Inc., IPR2015-01184, Paper 10 at 5 (July 24, 2015). Activision Blizzard
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`seeks to remedy this deficiency by stating the unavailability of Wargaming’s
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`expert is due to a conflict, Motion for Joinder at 9, and “agrees to rely on
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`Wargaming’s expert in the event that joinder is granted as long as Wargaming
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`continues to participate in the IPR proceeding.” Id. at 10. However, as discussed
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`above, GAT is scheduled to complete its discovery by January 29, 2018, before the
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`Preliminary Response is due on February 6, 2018. IPR2017-01082, Paper 16 at 9.
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`As such, if Wargaming does withdraw from the Wargaming IPR before expert
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`deposition is completed, the withdrawal will also be before the question of joinder
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`is decided. In this event, Activision Blizzard cannot have acted as a true
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`understudy because “Petitioner continues with its own expert.” Motion for Joinder
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`at 10. Thus, regardless of Wargaming’s status, both in the event Wargaming does
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`not withdraw (§ III.A, supra) and in the event Wargaming does withdraw,
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`Activision Blizzard’s parallel expert testimony precludes a true understudy
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`position, which is, in effect, new evidence to which GAT must respond. See
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`6
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (describing new
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`grounds of rejection and simplification of discovery).
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`D. The Follow-On Factors are Irrelevant to Joinder
`Activision Blizzard asserts that the follow-on factors weigh in favor of
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`joinder.2 See Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
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`01357, Paper 19 at 6-7. The follow-on factors are only relevant to the Board’s
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`discretion to deny a follow-on petition and are, in fact, irrelevant to joinder. See
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`Id. at 8-9 (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9);
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`see NVIDIA at 6-12 (discussing discretionary institution of Inter Partes Review).
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`E. Activision Blizzard’s Motion for Joinder Should be Denied as
`Time-Barred Under 35 U.S.C. § 315(b)
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`35 U.S.C. § 315(b) bars Activision Blizzard from joinder. The Board has
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`held that: (1) section 315(b)’s one-year time bar exception applies to both petitions
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`and requests for joinder; and (2) institution decisions are not reviewable on appeal.
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`See Microsoft Corp. v. Proxyconn Inc., IPR2013-00109, Paper 15 (PTAB Feb. 25,
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`2013); see also Achates Reference Publ’g, Inc. v. Apple, Inc., 803 F.3d 652 (Fed.
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`Cir. 2015); 37 C.F.R. § 42.122(b).
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`Nonetheless, § 315(b) states:
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`2 Patent Owner does not address the merits of the Petition for Inter Partes Review
`of Second Activision Blizzard IPR at this time. 37 C.F.R. § 42.120.
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`7
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
`year after the date on which the petition, real party in
`interest, or privy of the petitioner is served with a
`complaint alleging infringement of the patent.
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`35 U.S.C. § 315(b) (emphasis added). Section 315(b) provides an exception from
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`this time bar, but only for “a request for joinder”: “[t]he time limitation set forth in
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`the preceding sentence shall not apply for a request for joinder under subsection
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`(c).” Id. The joinder provision—35 U.S.C. § 315(c)—grants the Board discretion
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`to join a party to an existing inter partes review provided certain criteria are met.
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`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join 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.
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`35 U.S.C. § 315(c) (emphasis added). Thus, subsections (b) and (c) provide that, if
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`a party properly files a petition within the one-year deadline described in
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`subsection (b), and then files a request for joinder under subsection (c) after such
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`deadline expires, subsection (b) would permit the Board to grant the joinder
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`request. The statutory scheme codified at subsections (b) and (c) requires that the
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`petition be “properly filed” for the consideration of both the petition and the
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`joinder request, and as such a joinder request submitted with a petition that is filed
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`after the one-year deadline, as in the present instance, should be denied.
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`8
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
`F. Withdrawal of New Expert Declaration and Restriction
`Assuming, in arguendo, that the Board grants the Motion for Joinder, the
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`Board should condition the joinder upon withdrawal of Activision Blizzard’s
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`expert, as in Teva Pharms. See Teva Pharms Paper 9 at 3.
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`Further, if the Board grants the Motion for Joinder, the Board should impose
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`additional restrictions.
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`1. Adhere to the Scheduling Order issued in the
`[Wargaming] IPR, including all applicable deadlines…
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`3. Refrain from requesting or reserving any additional
`discovery, including any depositions or deposition time.
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`4. [Do] not seek to submit any new expert declarations
`from those entered by [Wargaming] unless
`[Wargaming]settles with Patent Owner and that
`settlement contractually prevents [Wargaming’s] expert
`from continuing to support Petitioners.
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`Friendfinder Networks, Inc. v. WAG Acquisition, LLC, IPR2017-00784, Paper 12
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`at 5 (emphasis added).
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`IV. CONCLUSION
`Activision Blizzard’s Motion for Joinder should be denied because joinder
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`would complicate discovery and negatively affect the trial schedule. Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4.
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`Joinder will complicate discovery because Activision Blizzard has
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`submitted a separate declaration from its own expert. GAT will be obligated to
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`depose both Activision Blizzard’s expert and Wargaming’s expert, which
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`9
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`complicates discovery. See § III.A, supra. Joinder will also impact the trial
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`schedule because GAT’s discovery in the Wargaming IPR is set to conclude before
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`GAT’s Preliminary Response is due in the Second Activision Blizzard IPR. See §
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`III.B supra. Thus, joinder will both complicate discovery and impact the trial
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`schedule and so should be denied.
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`Moreover, Activision Blizzard will not be acting as a true understudy
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`because Activision Blizzard has only offered to rely on Wargaming’s expert so
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`long as Wargaming participates in the proceeding. If Wargaming does withdraw
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`before GAT’s discovery is complete, Activision Blizzard will be using its own
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`expert. See § III.C, supra. Thus, because Activision Blizzard will not be a true
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`understudy, joinder will unnecessarily complicate discovery and so should be
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`denied.
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`For the foregoing reasons, Patent Owner requests the Board to deny joinder
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`of the Second Activision Blizzard IPR and the Wargaming IPR.
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`Respectfully submitted,
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` /
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` Christopher J. Bezak /
`_______________________
`Christopher J. Bezak
`Registration No. 63,241
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`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: December 6, 2017
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`10
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`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`IPR2018-00157
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the attached PATENT OWNER’S
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`OPPOSITION TO MOTION FOR JOINDER was sent via e-mail on December 6,
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`Respectfully submitted,
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` /
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` Christopher J. Bezak /
`_______________________
`Christopher J. Bezak
`Registration No. 63,241
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`11
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`2017, to the following:
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`Harper Batts (Reg. No. 56,160)
`harper.batts@bakerbotts.com
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`Jeffrey Liang (Reg. No. 69,043)
`jeffrey.liang@bakerbotts.com
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`Sharon Israel (Reg No. 41,867)
`sirael@shb.com
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`John Garretson (Reg. No. 39,681)
`jgarretson@shb.com
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`Tanya Chaney (Reg. No. 55,080)
`tchaney@shb.com
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`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
`Date: December 6, 2017
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