Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
I think eventually WDDD will win out...it is why I am still around.
like their case, the legal team going to be handling the District Court case which is where this thing gets monetized.
will be back in this stock once we clear PTAB again.
War Eagle- O would read this article as to why I say some of teh stuff I say-
https://www.wsgr.com/email/PTAB-Review/2019/May/PTAB-Review-May2019.pdf
this was earlier this year.
I would like to think so, but then you see stuff like this
http://www.mondaq.com/unitedstates/x/786306/Patent/No+PTAB+Do+Over+After+SAS+Remand+PTAB+Denies+All+Grounds
I have stated many times that it is the PTAB, and they do their own thing. They are sketchy at best. Making it out of the PTAB with claims in hand was a huge deal. When that happened I sank a LOT of money into WDDD. When the CAFC kicked it back to the PTAB I pulled all that money out.
No matter what makes sense, or what should happen, what I think or anyone else thinks is irrelevant, the PTAB is truly a dice roll in my opinion.
They may come back and void everything out and we come back worse off than the first time, might say yeah the CAFC is right, we did mess it up and we are fixing it now...and I still think they are going to come back and double down and say we got it right here are additional reasons why.
None of it will surprise me, I just don't trust them or their track record one bit.
So as I have stated, once we clear the PTAB, AGAIN since this is not a vacate like everyone tried to sell you, it is was not moving forward it was going back to the PTAB where the process is long and uncertain not the quick turnaround predicted by so many, once we clear the PTAB I will be putting large amounts money back in.
I will get attacked i am sure for this post as it is not all green skies ahead. It actually contains negative outcomes that are possible but largely not considered by too many posters here.
1 year which is almost always a hard deadline, even if it is not, they really do their best to get decision in within a year would be 10/16 I fully expect a decision in by then.
The reason why it takes the additional time,
Because there is a 30-day period under Fed. Cir. R. 40(e) for filing a rehearing petition, the mandate usually issues 37 days after judgment if no party seeks rehearing or a stay of the mandate.
An old Datastream post with the date of the mandate...
DataStream Tuesday, 10/16/18 03:13:33 PM
Re: None 0
Post #
33522
of 36438
United States Court of Appeals for the Federal Circuit
Notice of Docket Activity
The following transaction was entered on 10/16/2018 at 2:48:26 PM EDT and filed on 10/16/2018
Case Name:
Worlds Inc. v. Bungie, Inc.
Case Number:
17-1481
Document(s):
Document(s)
Docket Text:
Mandate issued to the United States Patent and Trademark Office. Service as of this date by the Clerk of Court. [557670] [17-1481, 17-1546, 17-1583] [PBC]
You need to look at the date the mandate was sent through...
Nobody is selling. As well they shouldn't.
MIght see some buying coming up, but still think more than a few old
longs still sitting out till its gets out of PTAB.
I simply do not trust the PTAB ...
past track record is not good.
The 1 year timeline should be based on the mandate, not the actual decision. The mandate came down about 1 month later, again I forgot exact dbut that is the important date to keep in mind as far as PTAB timeline goes. PTAB always does everything they can to meet that 1 year mark. I fully expect to see it done before then as no real new evidence got introduced.
Didn't even read what I said, but don't ;listen to me because I disagree with what they say or think. You should never listen to anybody who doesn't agree with you never a good idea to look at something from as many angels as possible.
Even though I said not 1 negative thing. Just my opinion, and I haven't been accurate on anything at all. Not 1 time.
I do appreciate the words though. And of course.
I don't claim to be always right, had my fair share
of being wrong too and freely admit when I am.
I simply want the decision to come out either way
odds are I am buying.
i meant stuck as in..if you wanted to get out, really needed to get out and you have a lot of shares, it will either take some time to sell or if you sell right away the price will plummet.
Most of the people here aren't trying to sell anytime soon.
They know its a long term thing.
You already know i am not trying to talk anybody out of shares, or say sell. i think eventually this will make a lot of money for a lot of people.
I am hoping to be one of them as I will get back in when the time is right for me.
I hope you are correct. Honestly I really do.
means next step is district court more than likely.
Bungie I can't imagine would take it to the CAFC
being as how they ruled the first time.
I will be in quite heavy before district court
as that is where the real money starts to be made on this
that is where WDDD can actually monetize their patents.
THAT IS WHERE Susman and Godfrey/ Tribble come into play
and that is why a lot of us even got involved in WDDD
so many years ago. :)
I can't imagine it taking another 6 months to get a PTAB decision, that seems crazy long. I do think they will have a decision before the end of this year, but seeing as they passed the 6 month guideline, it is anybody's guess as to exactly when it comes down the pipe.
There is really no way of knowing it could be any day.
No guesses would be accurate other than 12 months total is almost always met. A few rare cases I have seen go longer...but it is very uncommon.
Thanks.
Still watching, still waiting.
Still believe ultimately eventually will be a win.
It should be close. Sept. would be 11 months I think.
I have to go back and look at the actual date of the mandate, which is not the date of the decision, it was about a month later.
Yup.
Worst part is, you are kind of stuck.
No easy way to get out of the stock right now.
It is sit and wait for most here.
That is anybody's guess.
Nobody is really trading this, and yes it will if somebody wants to drive it down, or if they want to get out, well more specifically NEEDS to get in hurry.
I am still out sitting on the sidelines.
Still think the PTAB is not going to come back favorable, and this will be back at the CAFC again. Either way I am buying after PTAB decision comes out, not before, UNLESS it comes down into my no brainer buy range, and that is below .20
It is not. 6 months is from the mandate.
WHich was October-December range.
Had posted many times that their guidance says 6 months and has language that is open ended allowing them to take as much time as they want.
I put worst case scenario at 11 months which was about as long as I have seen during my research ( this might have changed as I have not looked in quite some time), but can't imagine going past 12 months.
Technically though, they have no actual time limit on a remand.
Not at all.
I can always count on you as the new expert analysis guy.
your posts are so informative and when I go back and read through your past posts, you contribute so much accurate and helpful information.
Keep up the good work!
It is any day, It should not go beyond 11 months...if so that is crazy long, but have seen 11 months in the past.
I am still sitting out waiting for PTAB ruling pr the right price.
I have not seen the right price yet.
If it was a slam dunk like most think, I would imagine the ruling would have come out by now. I think it is taking longer as a bad sign.
Think it will be going back to the CAFC and the PTAB is making sure their ruling is as rock slid as they can.
Just my opinion based on my readings and research.
Hope I am wrong, but that is what I think.
Good luck to all. I still visit the board often to check in, just rarely post anymore.
Still currently own NO SHARES. Share price is still below what I sold over 80% of my shares at.
Said before it would be 6 months and probably longer and I got shouted down. My plan has not changed, no new information has been presented, no new cases have come down the pipe that have made any impact on what i think is going to happen.
I am still around. Not stuck in anything actually, just not doing anything here till the price is right or PTAB decision comes out.
Not much to say or talk about with this until that decision comes out as everything has been talked about in detail many times over.
I will say that I am not excited to see this take this long as I take that as a bad sign. Beyond 6 months it has gone.
No way it will take 6 months to get a PTAB decision, no way it is 6 months or more. I remember hearing a lot of that.
we are at 6 or 7 months now.
The exact date would be 6 months from the mandate, have to go back and look on the exact date.
The 6 months should be from when the mandate went into effect not when the ruling was made by CAFC.
There isn't one. 6 months is guidance, but language says it can go longer have seen as long as 11 months on decisions from remand
I am still around...waiting on PTAB decision like everyone else. Any day now...I hope...
It could go either way really is how I see it.
Like 55/45 again it could be me just being irrational
but don't trust the PTAB at all.
I have said all along I don't mind paying more
if the PTAB goes our way as the next step should be district court and that is where this can go parabolic.
You may be right, but is the PTAB and I don't put it past them.
I am simply leaning that direction not leaning hard.
Bungie makes some really compelling arguments in their briefs.
I still haven't bought back in yet, but I am watching and getting close.
I won't be buying in big though till after PTAB decision as I am leaning towards them not going our way.
You are correct I stand corrected.
My bad.
That is essentially about the fastest time they could realistically get out a decision from the last Bungie reply, and basically puts them at 6 months which is their preferred guidance on remands from the CAFC.
The 15th is a Friday and most of their decisions like this come down the pipe on Fridays, being end of the week and all.
I didn't say it will be in this month, just that it could.
It really is a 3 month window from March 15th to May 15th.
Simply cautioning people who want to buy more or get in
if they want to BEFORE PTAB decision. March 15th is EARLIEST
we see a decision.
There would be selling or buying at the right price.
Sellers and buyers just can't seem to agree on what that price is..
lol
That price drops down to .21 or under there will be buyers, if the price goes back above .30 there would be sellers.
Not back in yet. Will be making that decision soon enough.
if I buy in before PTAB decision my target to get in by is March 15th
That is the earliest we see anything.
Or will wait till after the PTAB decision if I think it is going to not be in our favor.
Odds are I buy in a little just n case before March 15th even if I think
PTAB will rule against us.
SO watching price action see what happens, and by end of next week
will have my own thoughts all hammered out, do my odds making internally, and know what my plan is..
I have said all along I intend to buy back in, just a matter of when.
Current price action and initial read through hasn't gotten me doing anything yet. Most lean towards PTAB going our way this time, I lean towards PTAB ruling same as before but with more clarification. Need a little more time to really go through World's whole brief a few times more.
I for a long tome thought it would definitely be longer than 6 months, but that was predicated on new evidence being admitted. Once that didn't happen it will be as fast as they can realistically get it out.
Haven't looked through all of the cases cited, but a large majority are cases I have seen before or have looked through at some point.
So the Judges should already be pretty familiar with them.
There are only 1 or 2 cases I have never seen referenced before.
They still need time to go through and sort it all out, read through the various points made by both parties. They SHOULD have a pretty thorough explanation this go round as to why they made the decisions they will make.
That is why I posted March 29th give or take 2 weeks as my window.
I really think it will fall in that area, but May would not surprise me either.
I believe Quilt had the best post I have seen about timeline of decision broken down item by item and how long each phase might last. His numbers has it in May, and that is pretty solid from what I read.
Just might seriously expedite it being as their guidance would prefer 6 months,so they may do their best to make it close as possible.
I would not put it past being in before the end of March.
Its a 3 month window,(March-May) might get a quick decision since this is a remand and they may really be trying hard to hit their 6 month guidance.
I don't think it will be in that fast, but I would not rule it out.
No new evidence was allowed/submitted, 6 month PTAB Guidance as per
https://www.uspto.gov/sites/default/files/documents/sop_9_%20procedure_for_decisions_remanded_from_the_federal_circuit.pdf
There is language in there that does allow them to go beyond 6 months, so it is not a must do situation, but don't be surprised if its March.
Still going through it. Just wanted it all in a row after I re read through the transcripts from the teleconfeence, will go back through this all once more, with cited cases up.
Bungie Reply
Paper No. ____
Filed: February 19, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________________________
BUNGIE, INC.,
Petitioner,
v.
WORLDS INC.,
Patent Owner.
_____________________________
Case IPR2015-01264 (Patent No. 7,945,856)
Case IPR2015-01319 (Patent No. 8,082,501)
Case IPR2015-01321 (Patent No. 8,145,998)1
_____________________________
BUNGIE’S REPLY ON REMAND FROM CAFC
RESPONDING TO WORLDS RESPONSE BRIEF
(PAPER 55 in 2015-01264 and 2015-01319 AND PAPER 56 in 2015-01321)
1 This caption is used and identical papers are being filed in each captioned case
pursuant to the Board’s November 29, 2018 order (Paper 48).
-i-
TABLE OF CONTENTS
I. INTRODUCTION ................................................................................................. 1
II. WORLDS’S ATTEMPTS TO ESCAPE ISSUE PRECLUSION FAIL. ............................ 1
A. Worlds errs by arguing IPR decisions cannot be preclusive. ................ 1
B. There is no material difference between the RPI issues. ...................... 3
C. Worlds’s new issue preclusion exception should be rejected. .............. 5
III. WORLDS MISCONSTRUES AIT AND THE EVIDENCE OF RECORD. ....................... 6
A. Worlds’s speculative control arguments are unfounded. ...................... 6
B. Worlds’s settlement discussions contradict Worlds’s
speculation to the Board. ....................................................................... 8
C. Worlds misconstrues AIT. ..................................................................... 9
D. The equities favor finding Activision is not an RPI. ........................... 10
IV. WORLDS’S PRIVITY ARGUMENTS ARE IMPROPER AND INCORRECT. ................. 11
V. CONCLUSION ................................................................................................... 12
-ii-
TABLE OF AUTHORITIES
Page
CASES
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-
00453, Paper 88 ............................................................................................... 4
B&B Hardware, 135 S. Ct. 1293, 1303 (2015) ..................................................... 2, 5
Google LLC v. Seven Networks, LLC, IPR2018-01052, Paper 28 ........................ 7, 9
In re Cygnus Telecom. Tech. LLC, Patent Litig., 536 F.3d 1343 (Fed.
Cir. 2008). ........................................................................................................ 5
Intel Corp. v. ITC, 946 F.2d 821 (Fed. Cir. 1991) ............................................. 11, 12
Maxlinear, Inc. v. CF Crespe LLC, 880 F.3d 1373, 1376-77
(Fed. Cir. 2018) ............................................................................................ 1, 4
Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA,
IPR2018-01229, Paper 13 ................................................................................ 9
Nestle USA Inc. v. Steuben Food, Inc., 884 F.3d 1350 (Fed. Cir. 2018) ................... 4
Return Mail, Inc. v. USPS, 17-1594, 2019 WL 169139 (Jan. 9, 2019) ..................... 2
Urbain v. Knapp Bros. Mfg. Co., 217 F.2d 810 (2d Cir. 1954) ............................... 12
VirnetX Inc. v. Apple, Inc., 909 F.3d 1375 ................................................................ 2
Webpower, Inc. et al. v. WAG Acquisition, LLC, IPR2016-01239,
Paper 21 ........................................................................................................... 2
Weyerhaeuser Timber Co. v. Bostitch, Inc., 178 F. Supp. 757 (D.R.I.
1959) .............................................................................................................. 12
Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) ................................... 4
XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018) .................... 1
-iii-
STATUTES
15 U.S.C. §1069 ......................................................................................................... 2
35 U.S.C. §315(e) .................................................................................................. 2, 3
RULES
37 C.F.R. §42.23(a) ................................................................................................... 8
37 C.F.R. §42.6(a)(3) ................................................................................................. 3
77 Fed. Reg. 48756, 48759 (August 14, 2012) ........................................................ 11
OTHER AUTHORITIES
FPP §4433 .................................................................................................................. 5
Rest. 2d Judgments § 28 ............................................................................................ 5
-1-
I. Introduction
This case should be resolved by finding Worlds precluded from relitigating
the RPI issue. Worlds incorrectly argues issue preclusion can never apply to IPRs,
or to the RPI issue specifically. Worlds identifies no exception that would shield it
from the well-established principle that a party may not relitigate an issue resolved
previously with finality. Worlds must live with its strategic decision not to appeal
three final written decisions (“FWDs”) finding Activision is not an RPI.
If the Board finds it necessary to revisit its RPI determination, the record
strongly supports its earlier conclusion that Activision is not an RPI (a fact Worlds
knows to be true based at least on its dealings with Bungie). Worlds thus ignores
and mischaracterizes the evidence, speculates wildly, misconstrues AIT, and turns
the inequities of its own litigation choices and improper gaming of the RPI issue
upside down. The Board should reject Worlds’s request to dismiss these IPRs.
II. Worlds’s Attempts to Escape Issue Preclusion Fail.
A. Worlds errs by arguing IPR decisions cannot be preclusive.
Worlds argues (at 12-14) that IPR decisions cannot be preclusive. Worlds is
wrong, as the Federal Circuit and the Board have repeatedly held final IPR
decisions are preclusive. See, e.g., XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d
1282, 1294 (Fed. Cir. 2018) (affirmance of FWD “renders final a judgment” of
unpatentability and “has an immediate issue-preclusive effect on any pending or
co-pending actions involving the patent”); Maxlinear, Inc. v. CF Crespe LLC, 880
-2-
F.3d 1373, 1376-77 (Fed. Cir. 2018) (“The preclusive effect of the prior [IPR
FWD] adjudications, and subsequent affirmations, has finally resolved the issue of
the unpatentability...in this Proceeding.”); VirnetX Inc. v. Apple, Inc., 909 F.3d
1375, 1378 (Fed. Cir. 2018) (FWD on printed publication status made final by
Rule 36 affirmance was preclusive in IPR); Webpower, Inc. et al. v. WAG
Acquisition, LLC, IPR2016-01239, Paper 21, at 20, 26-28 (unappealed FWD
preclusive in IPR).
In contrast, the intervenor brief Worlds cites (at 12-14) argues that the Board
was not bound in an IPR by a reexamination decision because the reexamination
lacked any opportunity to cross-examine the experts. Besides having zero
authoritative value, the intervenor brief is inapposite. The Solicitor General of the
United States recently affirmed in briefing to the Supreme Court the official
position of the U.S. government: B&B Hardware “strongly suggests that decisions
of the PTAB would have preclusive effect where ‘the ordinary elements of issue
preclusion are met.’” Respondents’ Brief, Return Mail, Inc. v. USPS, 17-1594,
2019 WL 169139, at *41-*43 (Jan. 9, 2019). As explained in the Solicitor’s brief,
35 U.S.C. §315(e) does not preempt common law issue preclusion. Id.
Worlds’s argument (at 14) based on 15 U.S.C. §1069 conflates the defense
of equitable estoppel with the distinct principle of issue preclusion and ignores
-3-
differences in the substantive nature of trademark rights that are inapplicable to
patentability adjudications in IPRs.
Worlds’s argument (at 13 n.2) that Bungie is estopped “from maintaining”
IPR2015-01321 is untimely. Worlds never raised this argument during its appeal,
improperly raised it now in an opposition footnote, and it is therefore waived. 37
C.F.R. §42.6(a)(3). It is also a red herring, because Bungie could not “reasonably
have raised” grounds from IPR2015-01321 when filing IPR2015-01325 as it had
already raised them in IPR2015-01321. See 35 U.S.C. §315(e)(1). Moreover,
because the petitions were filed and FWDs were issued simultaneously, Worlds’s
argument would result in the absurdity of prohibiting Bungie from maintaining
grounds from either IPR simply because they were not included in the petition for
the other IPR on the same claims. Worlds permitted the final IPRs to become
preclusive with respect to matters actually litigated therein. This includes RPI, but
not the grounds in IPR2015-01321.
B. There is no material difference between the RPI issues.
Worlds spends pages (at 2-3, 8-9) arguing that the RPIs theoretically could
be different for Bungie’s petitions, but Worlds identifies no actual differences.
Bungie did not argue RPI issues could never be different across multiple petitions
(the “absurdity” Worlds ascribes to Bungie), but only that there is no material
difference here. Cases need not be identical for issues to be materially identical for
-4-
issue preclusion. See Nestle USA Inc. v. Steuben Food, Inc., 884 F.3d 1350, 1351
(Fed. Cir. 2018) (claim construction preclusive in different patent); Maxlinear, 880
F.3d at 1375-76 (FWD finding unpatentability based on prior art not asserted in
subsequent IPR was preclusive in subsequent IPR). Because the RPI issues are
identical here, issue preclusion bars Worlds from relitigating them.
Unable to identify any differences in the RPI issues presented to the Board
in the six IPRs, Worlds further errs (at 8-9, 11) by assuming the Board imposed an
erroneous burden of proof on Worlds (an assumption the Federal Circuit did not
make). The Board has long recognized that the burden of proof rests on the
petitioner. See, e.g., Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
IPR2013-00453, Paper 88, at 6-7 & n.2 (Jan. 6, 2015). The Federal Circuit
remanded to the Board because it could not “discern whether the Board placed the
burden on Worlds.” Worlds, Inc. v. Bungie, Inc., 903 F.3d 1237, 1246 (Fed. Cir.
2018). The Board is best positioned to clarify that it did not impose a burden of
proof on Worlds and that its RPI determinations did not turn on one.
Worlds also criticizes (at 10) the Board’s denial of its discovery motions,
alleging this places the “quality, extensiveness, and fairness” of the Board’s RPI
determination in doubt. But Worlds did not appeal denial of its discovery motion,
nor did it seek to reopen the record on remand. Worlds cannot use denial of its
motion, and accompanying speculation about what it hoped to discover, as a basis
-5-
to revisit an issue resolved with finality in FWDs it chose not to appeal.
Worlds’s argument (at 9-10) that differences between Board procedures and
district court procedures render IPR decisions invalid for issue preclusion also
fails. No procedural differences exist between the final IPRs and the appealed IPRs
because the forum at issue is exactly the same. See B&B Hardware, 135 S. Ct.
1293, 1303 (2015) (Rest. 2d Judgments § 28 exception warranted by “differences
in the quality or extensiveness of the procedures followed” in the two courts).
C. Worlds’s new issue preclusion exception should be rejected.
This case does not fit within the rule applied in In re Cygnus. Worlds argues
(at 11) that the IPRs had common schedules, depositions, and hearings, but does
not argue that the cases themselves were consolidated. The Board never
consolidated them and Worlds never asked it to, instead permitting the final IPRs
to become preclusive. Whether the cases are consolidated into a single action is
necessary to the exception to issue preclusion applied in Cygnus. Otherwise,
Worlds’s proposed exception would swallow the rule that the failure to appeal a
judgment cannot destroy the judgment’s preclusive effect. FPP §4433 ([P]reclusion
cannot be defeated by electing to forgo an available opportunity to appeal.”).
Worlds’s argument (at 12) that appealing the RPI issue in the final IPRs
would have wasted resources is belied by its failure to identify any factual
distinction between the RPI facts in the final and appealed IPRs. On appeal, the
-6-
parties submitted consolidated briefing to address RPI. Worlds easily could have
appealed the identical issue in all six cases without requiring any further judicial or
litigant resources. Worlds finds itself precluded due to its own litigation decision to
selectively appeal some IPR decisions while letting others proceed to finality.
III. Worlds Misconstrues AIT and the Evidence of Record.
A. Worlds’s speculative control arguments are unfounded.
Worlds’s RPI arguments until now were premised on its erroneous
construction of the DevPub agreement. The Federal Circuit found no fault with the
Board’s previous findings that Worlds misconstrued the DevPub agreement. Yet,
Worlds continues to misconstrue that agreement on remand, arguing (at 17-18, 25)
that it gives Activision control of Bungie’s IPRs unless “indemnification was
actually demanded by Activision or accepted by Bungie.” As explained in
Bungie’s opening brief, however, the DevPub agreement does not provide
Activision with control over Bungie’s IPRs regardless of whether an
indemnification request was “made or accepted.” Nor could Bungie have
controlled the Activision litigation because it is undisputed Bungie’s products were
never accused in that litigation. SMF Nos. 1-4.
Because the DevPub agreement gives Activision no control over Bungie’s
IPRs and gives Bungie no control over the Activision litigation, Worlds now
backtracks and argues (at 16-17) that the DevPub agreement cannot prove whether
-7-
Activision was an RPI. Abandoning the actual evidence of record, Worlds now
recklessly speculates that Activision and Bungie might have later decided to treat
Bungie’s IPRs as product reviews under Section 7A.15(j) of the DevPub
Agreement. Worlds further speculates (at 18) that Activision and Bungie may have
agreed subsequent to the DevPub agreement to reverse the indemnification
provision and give Activision control over Bungie’s IPRs. There is no truth to
Worlds’s speculation. Bungie offered to submit a declaration subject to crossexamination
establishing that Activision did not fund or control any of the IPRs.
Worlds opposed because it knows the facts do not support its wild speculation.
Worlds argues (at 22) that the DevPub agreement makes Activision an RPI
in Bungie’s IPRs because of the ability to have a non-voting observer attend board
meetings. The Board correctly rejected this argument already. Merely observing
board meetings does not translate into controlling Bungie’s IPRs. See, e.g., Google
LLC v. Seven Networks, LLC, IPR2018-01052, Paper 28, at 12-19 (finding voting
board member, ability to authorize and approve petitioner’s budgets, and other
relationship ties insufficient to establish RPI status when a subsidiary-petitioner
“operate[s] independently and separately” from its parent). Here, Bungie does not
even have a parent-subsidiary relationship with Activision, much less one where
Bungie’s IPR decisions are subject to Activision’s control.
-8-
Adding to its speculation, Worlds repeatedly accuses Bungie (at 15, 22, 28-
29) of “refusing” to produce evidence and impeding the Board’s ability to prove
Bungie’s relationship with Activision. This irresponsible rhetoric is simply false.
Bungie never refused to provide evidence. Worlds previously attempted to engage
in a burdensome and unfounded fishing expedition based on wild speculation. The
Board properly denied Worlds’s motions. Because there is no merit to Worlds’s
shrill accusations, it is axiomatic that there is no evidence to support them.
B. Worlds’s settlement discussions contradict Worlds’s speculation
to the Board.
Worlds argues (at 19) that the Board should ignore the various settlement
discussions between the parties because, it argues, they are mere attorney
argument. But those discussions underscore the gamesmanship at play, and raise
serious concerns regarding the impropriety of Worlds’s conduct. No party should
candidly acknowledge one position in discussions between the parties, yet
perpetuate a known fiction before the Board and the Court. Indeed, Worlds does
not and cannot dispute the accuracy of Bungie’s SMF Nos. 7-11. 37 C.F.R.
§42.23(a) (undisputed facts are deemed admitted).
Worlds argues (at 19-20) that settlement discussions only “occurred in late
2018,” and “after the Federal Circuit’s decision.” This is false and contradicted by
the parties’ settlement correspondence. SMF No. 7 (referring to previous
-9-
settlement discussion). Worlds knows full well that discussions to settle
independent of Activision predate the Federal Circuit’s decision.
C. Worlds misconstrues AIT.
Worlds argues (at 24) that a bare determination that “Activision and Bungie
have a preexisting relationship and if Activision would benefit from Bungie’s
IPRs” necessarily and “conclusively establishes Activision to be an RPI.” But
Worlds’s reading of AIT is not correct. “Patent Owner’s contention that [the nonparty]
is a RPI solely because [the non-party] has a preexisting, established
relationship with Petitioner and is a clear beneficiary of the Petition, is an
incomplete reading of AIT and is unavailing.” Merck Sharp & Dohme Corp. v.
GlaxoSmithKline Biologicals SA, IPR2018-01229, Paper 13, at 6-8, 11-13; Google
LLC v. Seven Networks, LLC, IPR2018-01052, Paper 28, at 13-14 (“The Court held
in Taylor that a broader doctrine of nonparty preclusion, termed ‘virtual
representation,’ was inconsistent with common law and risked violating due
process.”).
Worlds relies heavily (at 18-23, 25, 29) on “circumstantial evidence” that
Activision conveyed Worlds’s letter threatening Destiny to Bungie, Worlds never
added Destiny to the litigation, and Bungie thus challenged claims Worlds had
formally asserted against Activision, not Bungie. Those assertions underscore the
inequity of applying estoppel based on a case in which Bungie was never involved.
-10-
And even conveyance of that letter would not establish that Activision funded or
controlled the IPRs or that Bungie brought the IPRs for Activision’s benefit or to
represent Activision’s interests. Bungie was not required to wait until Worlds
formally sued Bungie to file its IPRs. That Bungie was never involved in the
Activision litigation and brought the IPRs to serve its own interests favors finding
Activision is not an RPI in Bungie’s IPRs.
Worlds relies (at 21-22) on the statement in AIT that the petitioner’s “own
interest in initiating an IPR” was not dispositive of whether another party could be
an RPI. But in that case, the petitioner had no independent interest in challenging
the patents and bragged that its interests were 100% aligned with its clients. In
contrast, Bungie’s interests are not 100% aligned with Activision’s, as seen in the
undisputed fact that Bungie has repeatedly offered to settle with Worlds
independently of Activision. SMF Nos. 7-11. Unlike in AIT, Bungie cannot be said
to represent Activision’s interests. Bungie’s commercial relationship with
Activision does not warrant depriving Bungie of its right to pursue its IPRs.
D. The equities favor finding Activision is not an RPI.
Worlds argues (at 30) that Activision chose to pursue its invalidity
challenges in district court in 2012 rather than at the Board. But Bungie was not
afforded that opportunity. It would fundamentally violate due process and equity to
retroactively deprive Bungie of its opportunity to challenge World’s patents.
-11-
Worlds argues (at 30) that it would be inequitable to require it to defend its
patents in the Activision litigation and before the Board. However, Worlds chose
whom to sue and threaten and when to do it. It chose to threaten to accuse Bungie’s
product and also chose not to add Bungie to the Activision litigation so that Bungie
would have no ability to participate. Worlds cannot credibly claim it is inequitable
to allow Bungie its first and only opportunity to challenge Worlds’s patents.
IV. Worlds’s privity arguments are improper and incorrect.
Because its RPI arguments are not supported by the record, Worlds now tries
to introduce a new argument on remand that Bungie and Activision are in privity.
“The notion of ‘privity’ is more expansive” than the notion of real party-in-interest.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759 (August 14, 2012).
Bungie thus discussed due process limitations on privity because such constraints
necessarily apply to the narrower RPI analysis at issue. It is inappropriate for
Worlds to stray beyond the scope of remand. The Board should reject Worlds’s
privity arguments as untimely and inconsistent with the Federal Circuit’s order.
Worlds’s privity arguments also fail on the merits. Worlds cites (at 28) Intel
Corp. v. ITC, 946 F.2d 821, 838 (Fed. Cir. 1991), for the proposition that, in two
cases it cites, certain indemnification agreements were sufficient to find privity. In
each of the cases cited in Intel, the court stayed a case against a customerindemnitee
in favor of any earlier-filed case against the manufacturer-indemnitor,
-12-
finding the case against the manufacturer-indemnitor would be dispositive
regarding indemnitor’s products. Urbain v. Knapp Bros. Mfg. Co., 217 F.2d 810
(2d Cir. 1954) (affirming injunctive stay where indemnitor had “acknowledge[d]
that it is defending the [indemnitee’s] case and is responsible for any damages
which may be awarded therein”); Weyerhaeuser Timber Co. v. Bostitch, Inc., 178
F. Supp. 757, 759-762 (D.R.I. 1959) (granting stay of case against indemnitee
because case against indemnitor could “be dispositive of the instant action”). Here,
Worlds attempts to reverse the polarity to bind Bungie as indemnitor to an action
in which Bungie did not participate and in which its products were never accused.
Intel is also inapplicable here. In Intel, the Court concluded that assignor
estoppel applied to a joint venture the inventor was involved in because the joint
venture “unquestionably availed itself of the inventor’s and Atmel’s knowledge
and assistance” for the infringing product and because the “indemnity agreement
between [the inventor] and [the joint venturer] created a significant relationship
between them.” 946 F.2d at 838. This case lacks the special circumstances present
in Intel, where the inquiry focused on whether an entity with a relationship with the
inventor availed itself of the inventor’s knowledge to avoid infringement liability.
None of Worlds’s privity arguments are persuasive.
V. Conclusion
The Board should reject Worlds’s invitation to dismiss these IPRs.
-13-
Respectfully submitted,
Dated: February 19, 2019 / Michael T. Rosato /
Michael T. Rosato, Lead Counsel
Reg. No. 52,182
-14-