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1 UNITED STATES PATENT AND TRADEMARK OFFICE
2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
3
BUNGIE, INC., ) Case Nos.
4 ) IPR2015-01264
Petitioner, ) IPR2015-01319
5 ) IPR2015-01321
vs. )
6 ) Patent Nos.
WORLDS INC., ) 7,945,856
7 ) 8,082,501
Patent Owner. ) 8,145,998
8 -------------------------- )
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12 PTAB CONFERENCE CALL
13 Wednesday, November 7, 2018
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23 Reported by:
24 Stacey L. Daywalt
25 JOB NO. 150919
TSG Reporting - Worldwide - 877-702-9580
BUNGIE - EXHIBIT 1051
Bungie, Inc. v. Worlds Inc.
IPR2015-01264
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3 Wednesday, November 7, 2018
4 3:00 p.m.
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7 PTAB Conference Call, held before
8 Administrative Patent Judges Ken B. Barrett,
9 Karl D. Easthom and Jason J. Chung, before
10 Stacey L. Daywalt, a Court Reporter and Notary
11 Public of the District of Columbia.
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A P P E A R A N C E S:
Page
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2 (All appearances are telephonic)
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4 WILSON SONSINI GOODRICH & ROSATI
5 Attorneys for Petitioner
6 701 Fifth Avenue
7 Seattle, Washington 98104
8 BY: MICHAEL ROSATO, ESQ.
9 MATTHEW ARGENTI, ESQ.
10 JAD MILLS, ESQ.
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12 DAVIDSON BERQUIST JACKSON & GOWDEY
13 Attorneys for Patent Owner
14 8300 Greensboro Drive
15 McLean, Virginia 22102
16 BY: WAYNE HELGE, ESQ.
17 ALDO NOTO, ESQ.
18 ALAN WRIGHT, ESQ.
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2 ADMINISTRATIVE PATENT JUDGE: Good
3 afternoon, everybody. This is Judge Ken
4 Barrett with the Patent Trial and Appeal Board.
5 We're on this call for the case
6 Bungie v. Worlds, IPR2015-01264, 1319 and 1321.
7 As I've said, this is Judge Ken
8 Barrett. On the phone with me are Judges Karl
9 Easthom and Jason Chung.
10 Who do we have on the phone for
11 Petitioner?
12 MR. ROSATO: Hi. Good afternoon,
13 Your Honor. This is Mike Rosato on behalf of
14 Petitioner Bungie.
15 I may have a couple of my colleagues
16 dialed in, Matt Argenti and Jad Mills.
17 Additionally, we have a court
18 reporter on the line, I believe. One should be
19 on the line anyway.
20 THE REPORTER: Actually, you have
21 two on the line. Apparently both sides hired
22 one.
23 ADMINISTRATIVE PATENT JUDGE: Well,
24 that's interesting. Okay.
25 Who do we have on the phone for
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2 Patent Owner?
3 MR. HELGE: Hi. Good afternoon,
4 Your Honor. This is Wayne Helge, H-e-l-g-e,
5 appearing here on behalf of Worlds.
6 With me, I have my colleagues Aldo
7 Noto, N-o-t-o, and Alan Wright, W-r-i-g-h-t.
8 And Your Honor, just as a quick
9 housekeeping matter, we did file Powers of
10 Attorney for Mr. Noto and Mr. Wright today, and
11 also updated mandatory notices.
12 One of the attorneys who was
13 previously on the case has left our firm. And
14 although we don't need to deal with it perhaps
15 immediately, Your Honor, I would just like some
16 guidance on instructions on how you would like
17 us to request the removal of the other
18 attorneys, the prior backup counsel, from the
19 record in this case.
20 ADMINISTRATIVE PATENT JUDGE: I
21 believe you've done what you need to do. If
22 there's anything different, I'll put it in the
23 order. But I did see those papers that came in
24 today, so they are in the file.
25 MR. HELGE: Thank you, Your Honor.
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2 ADMINISTRATIVE PATENT JUDGE: Okay.
3 Since we have two court reporters on
4 the line, I'll just ask the parties to work it
5 out and one of you, or I suppose both of you,
6 could file those as exhibits. I'd prefer one
7 in the record so there's no confusion.
8 MR. HELGE: Certainly, Your Honor.
9 We can work that out.
10 ADMINISTRATIVE PATENT JUDGE: Okay.
11 That would be great.
12 Okay. So we're having this call.
13 It's a remand from the Federal Circuit. I
14 understand the parties have met and conferred,
15 and I thank you for that, but that you couldn't
16 come to an agreement on all the procedures.
17 That's understandable.
18 Mr. Rosato, why don't you begin?
19 MR. ROSATO: Sure, Your Honor.
20 Thank you.
21 Probably the threshold issue --
22 well, I'll say there are two issues that seem
23 to be presented here. One is the collateral
24 estoppel issue. I'll use that term. And then
25 separately is the RPI issue on the further
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2 merits of that.
3 And I'd like to begin with the
4 collateral estoppel issue, because I think this
5 is a threshold issue, as identified by the
6 Court, and the main area where the parties were
7 not able to agree on the approach on remand.
8 But for very brief background, as we
9 all know, Petitioner Bungie had filed six IPRs
10 challenging five of the Worlds patents. Worlds
11 had appealed three of those IPRs, and those are
12 the three cases remanded here today.
13 Worlds chose not to appeal three,
14 the remain- -- the other three IPRs, and those
15 cases have reached final judgment.
16 So the circumstances here present a
17 black letter instance of collateral estoppel or
18 issue preclusion. And additionally, Patent
19 Owner estoppel under 37 CFR 42.73(b)(3) is
20 implicated now that we're back before the
21 Board.
22 So -- and then, you know, I won't
23 get too deep into the merits of the case. But
24 you know, these are five related patents
25 sharing the same specification and patently
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2 indistinct claims, and Worlds had advanced the
3 exact same RPI argument in all six of the
4 cases, all the remanded IPRs and the unappealed
5 IPRs. The briefing was really a virtual
6 cut-and-paste job.
7 At the Federal Circuit, that -- the
8 briefing in the unappealed IPRs, because it's
9 not formally in the record in these remanded
10 IPRs, it wasn't in front of the Court at that
11 time. So the Court did not have the briefing
12 before it on appeal, and that's reflected in
13 the decision.
14 And perhaps more importantly, the
15 Court's instructions on remand were clear on
16 the estoppel issue. The Court identified the
17 estoppel issue as a threshold issue that should
18 be addressed first.
19 And I'll refer for reference to the
20 Slip opinion page number. But at Page 20 of
21 the Slip opinion, the Court stated that the
22 Board: "Should first address whether Worlds is
23 estopped from arguing the RPI issue," and
24 explained that only if the Board determines
25 that collateral estoppel does not apply should
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2 the RPI issue even be further addressed.
3 So as far as the proposed schedule,
4 our understanding is that the issues are
5 bifurcated, and according to the Court's
6 instructions on remand, the R- -- sorry -- the
7 collateral estoppel issue is the issue that
8 should be briefed and addressed by the Board
9 first.
10 And under these circumstances, the
11 appropriate approach would seem to be to first
12 place Worlds under an order to show cause why
13 judgment should not be entered against them due
14 to the collateral estoppel issue.
15 Should Worlds choose to respond to
16 such an order, then Bungie would seek to file
17 an opposition brief.
18 And I will stop there, unless the
19 Board wants me to go on to the RPI issue. But
20 that's the briefing schedule that -- and the
21 remand schedule that we were reading from the
22 Court's instructions.
23 ADMINISTRATIVE PATENT JUDGE: Okay.
24 I'll hear from Mr. Helge on this
25 issue.
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2 MR. HELGE: Good afternoon, Your
3 Honor. Yes, Mr. Helge here.
4 Your Honor, a couple things that
5 Mr. Rosato said is -- I think are completely
6 inconsistent with what the Federal Circuit
7 ruled on in the opinion, in the Worlds v.
8 Bungie opinion.
9 I think the idea, first of all, that
10 Worlds should have to respond to an order to
11 show cause is completely inconsistent with
12 Page 8 of the Slip opinion, which says that:
13 "The party seeking a proponent of a rule or
14 order has the burden of proof." And this is
15 under the APA.
16 What I think the Federal Circuit's
17 saying here is not just on this idea of real
18 party-in-interest but also on the idea of
19 Bungie's desire to seek relief for collateral
20 estoppel on this issue is in fact exactly what
21 the Federal Circuit's speaking to. Although I
22 think in here they're talking about the RPI
23 issue, they are talking about the ultimate
24 burden of persuasion anywhere there is a
25 proponent of a rule or order.
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2 So in this case I think that the
3 order that Bungie proposes is not consistent
4 with Page 8 of that Slip opinion and not
5 consistent with the APA.
6 And I think as well the idea that
7 collateral estoppel should be a bifurcated
8 issue that's briefed first is in- --
9 ADMINISTRATIVE PATENT JUDGE: Did we
10 lose him?
11 MR. ROSATO: I think we may have
12 lost him.
13 ADMINISTRATIVE PATENT JUDGE: All
14 right. Let's give him a second to call back
15 in.
16 MR. ROSATO: I will also send him an
17 e-mail in case he doesn't realize he dropped
18 off.
19 ADMINISTRATIVE PATENT JUDGE: Thank
20 you.
21 MR. HELGE: Your Honor, this is
22 Wayne Helge.
23 I apologize. We've got a lot of
24 construction in our building, and it seems we
25 just lost power. We're back on the call. I
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2 hope everyone's still here.
3 ADMINISTRATIVE PATENT JUDGE: I
4 believe we are.
5 MR. HELGE: My sincere apologies,
6 Your Honor.
7 ADMINISTRATIVE PATENT JUDGE: No, no
8 problem. Thank you for calling back in right
9 away.
10 MR. HELGE: Sure.
11 So Your Honor, I believe what I was
12 saying was that Bungie may be perhaps
13 overselling the importance of collateral
14 estoppel in this issue.
15 And I'd just like to point the Board
16 out to Page 19 of the Slip opinion, where the
17 Federal Circuit says: "But in our view, the
18 determination of whether a party is a real
19 party-in-interest may differ from one IPR to
20 the next, even among a set of seemingly related
21 IPRs."
22 And I think what we're hearing from
23 the Federal Circuit here is that they want
24 these issues decided together. And I think
25 that the briefings should go together.
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2 And in fact, it seems what Bungie's
3 suggesting about the similarity of the issues
4 in their statement actually implicates the
5 proper identification of all RPIs in the
6 matter. And indeed, I don't think that this
7 Board would need to refer to collateral
8 estoppel, if in fact Activision weren't an RPI
9 in these cases.
10 But you know, again, I think based
11 on the record as we've presented before, we do
12 think that there is evidence here that
13 satisfies the RPI standard that the Federal
14 Circuit laid out in the Applications in
15 Internet Time v. RPX case which was issued on
16 July 9th, 2018.
17 What we would propose is that both
18 RPI and collateral estoppel be briefed together
19 as a single paper. Our view, again based on
20 the APA and based on what the Federal Circuit
21 has said about the burden of proof, is that
22 Bungie, as the party seeking to rely on
23 collateral estoppel and, as we know now
24 according to the Worlds v. Bungie decision, has
25 the burden of proof on the RPI identification
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2 as well, means in our view that Bungie must go
3 first on these points.
4 I think perhaps what is maybe more
5 important and maybe a more overarching concern
6 in this case is really the idea of whether the
7 record should be reopened.
8 Now, we note at the very final page
9 of the Federal Circuit opinion, the Federal
10 Circuit does say that the Board, in its
11 discretion, should consider whether to allow
12 for additional discovery on this issue. And
13 that's the RPI issue.
14 Now, we've gone to the SOP 9. And
15 we're familiar and I know Your Honors are also
16 familiar with what the SOP 9 says about this
17 point, and that's: "The parties seeking to
18 reopen the evidentiary record should be
19 prepared to demonstrate why the evidence
20 already before the Board is inadequate and show
21 good cause why additional evidence is
22 necessary."
23 And it says: "Then the panel will
24 take into account whether the parties have
25 already had an adequate opportunity to address
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2 the issues raised by the remand with the
3 evidence already of record."
4 Now, there are a number of spots in
5 the record where Bungie did have an opportunity
6 to address this issue. Certainly, they opposed
7 our motion for discovery. They were asked --
8 I've got it specifically here. This is
9 Exhibit 2001. And I believe it's the same
10 exhibit number in all three cases, Your Honor.
11 Page 31, Line 21, Judge Begley
12 states: "Well, I guess to follow up on your
13 statement about there being no funding and no
14 control, are you taking the position that there
15 are no relevant documents, so that, I mean,
16 this is all an exercise in futility, and if we
17 have them file a motion, because I believe
18 that's what you just said?"
19 Mr. Rosato's response was: "Yes, we
20 think it's an exercise in futility."
21 So we don't know exactly what
22 Mr. Rosato was saying was going to be futile,
23 whether there was already, in fact, a search
24 for relevant information that would satisfy the
25 routine discovery standard in
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2 Rule 41.51(b)(1)(iii).
3 But I also note, in Pages 4 to 5 of
4 the opposition that's filed, Bungie has already
5 represented to the Board that it complied with
6 that routine discovery requirement.
7 So I think as the -- perhaps the
8 overarching question from our view is whether
9 Bungie proposes to show good cause of why it
10 didn't have an opportunity to open the record
11 before.
12 And if the record is not going to be
13 reopened according to Your Honors' discretion,
14 then I think that the briefing is perhaps a
15 little bit simplified, at least the procedures
16 here are simplified, in remand.
17 ADMINISTRATIVE PATENT JUDGE: So is
18 it then Patent Owner's position that we should
19 not reopen the record? You're content with
20 going forward on whatever evidence is already
21 in the record?
22 MR. HELGE: Well, Your Honor, I
23 would say perhaps this -- I would put it this
24 way: The way I read the Federal Circuit
25 opinion -- and there were some citations, I
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2 believe, to the US v. New York, New Haven and
3 Hartford Railroad case about fairness about
4 putting the onus on the party who doesn't have
5 the access to the information to be -- have
6 their feet held to the fire.
7 I think what's happened here is
8 we've been able to come up with evidence,
9 including the development agreement that's in
10 the record; also the letter, Your Honor, from
11 Worlds' litigation counsel to Activision's
12 counsel identifying the Destiny product as a
13 possible product to be added to the case; and
14 also, as the Federal Circuit noted, as they
15 noted as relevant information, the fact that
16 the five patents in IPR here are also five
17 patents that are at issue in the litigations.
18 And we think with the evidence that
19 we have here, we have shown and we have met
20 what the Federal Circuit looks to for -- in the
21 Applications in Internet Time v. RPX
22 Corporation, that in fact Activision will
23 benefit from these IPRs and Activision is
24 within that flexible RPI view that the Federal
25 Circuit wants to apply.
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2 I think one of the issues here
3 that's also challenging is Bungie has noted a
4 few times in the record -- and I believe
5 specifically on appeal I can point you to the
6 proper page. I believe it's Page 59 in their
7 red brief where they talk -- they say that
8 Worlds is asking Bungie to prove a negative of
9 a fact.
10 And it's possible, Your Honor --
11 I'll be honest. It's very possible that Bungie
12 can't prove a negative, because in fact with
13 the details and the evidence that's already in
14 the case, it's clear that Activision was in
15 fact a party who was gaining the benefit of
16 these IPRs and that there was a preexisting
17 relationship. And I think we satisfied the RPI
18 standard, perhaps the privy standard as well,
19 as set forth in the Applications in Internet
20 Time case.
21 If we think that Bungie, who has the
22 ultimate burden of proof on this issue, would
23 like to come forward with evidence to disprove
24 this RPI relationship, it's simply our view
25 that it's on them. It's their requirement.
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2 Now, Your Honor, I would just note
3 that if Bungie does establish good cause -- and
4 of course, Your Honors, if you, in your
5 discretion, believe that discovery should be
6 taken on this point according to Federal
7 Circuit's opinion, obviously we fully respect
8 that, although we would note that routine
9 discovery attaches to any evidence that Bungie
10 were to produce, and we believe that that has
11 to be, in view of the Applications in Internet
12 Time, a very exhaustive production. It's any
13 relevant information, and not necessarily just
14 documents, but information.
15 Now, Mr. Rosato has noted in
16 representations to the Board before, again, as
17 you know, about the exercise in futility and
18 the fact that there was no other control or
19 payments made by Activision relating to these
20 IPRs.
21 But of course the RPI standard is
22 much more -- is much broader than cost and
23 control. And so Bungie should be producing a
24 very exhaustive list of documents and
25 information, we would think names of people
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2 that Mr. Rosato spoke to before he made
3 representations that Bungie was a sole RPI.
4 And so, again, if I can perhaps
5 summarize my points here, I would simply say we
6 think it's Bungie's burden to come forward and
7 show good cause why they couldn't have produced
8 the evidence they need to produce in order to
9 establish RPI in this case.
10 But if they do, again, through Your
11 Honors' discretion, satisfy that good cause,
12 then that opens up to what we believe would be
13 a very broad scope of discovery in this case.
14 ADMINISTRATIVE PATENT JUDGE: That's
15 an interesting position. Some might say
16 Applications in Internet Time v. RPX made it
17 easier to prove RPI, or the flip side, made it
18 harder to disprove it.
19 So would Patent Owner really need to
20 get deep into the weeds, or would that mean you
21 would get less discovery?
22 MR. HELGE: Well, Your Honor, I
23 think, again, I would look to the routine
24 discovery regulation, which does actually place
25 a burden on Bungie to produce relevant
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2 information that may be inconsistent with the
3 position they're taking.
4 And so if they're taking the
5 position -- for example, if they're taking the
6 position that Bungie acted alone and Activision
7 never conveyed this letter identifying Destiny
8 as a potential product, then any -- you know,
9 for example, I think that that opens the door,
10 and it should open the door, to Worlds to find
11 out in fact whether anybody at Bungie did know
12 about this letter.
13 You know, we know in the development
14 agreement that there's a requirement to notify
15 when there's a demand for indemnification.
16 Were there phone calls? Were there
17 phone calls between counsel?
18 And so, Your Honor, I recognize what
19 you're saying about perhaps additional
20 discovery maybe being limited. But I think
21 routine discovery is extremely broad, and I
22 think Applications in Internet Time opens that
23 very, very, very far.
24 ADMINISTRATIVE PATENT JUDGE: Okay.
25 So let me make sure I understand
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2 what you're saying here, at least back on the
3 briefing.
4 Patent Owner, if I'm not mistaken,
5 believes we should not bifurcate the discovery
6 and Petitioner should go first. Correct?
7 MR. HELGE: That's correct, Your
8 Honor.
9 And I think there's one other point
10 that should probably be made about this, and
11 that's the briefing.
12 I know that the SOP 9 does say that
13 there is a question of whether additional
14 briefings should be required.
15 Now, we have made some of these
16 points in our prior briefing on the RPI. And I
17 think at this point, given where we stand and
18 given Applications in Internet Time, I think
19 the Board would be equally justified in taking
20 a look at the evidence, and if Bungie can't
21 come forward with the good cause to open the
22 record, the Board would be justified in
23 terminating the proceeding sua sponte without
24 even issuing a final written decision.
25 And for authority to that, I would
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2 look to CBM 2015-00145, in which the Board
3 decided that it no longer had jurisdiction
4 under the CBM statute and terminated the case
5 entirely without issuing a final written
6 decision.
7 ADMINISTRATIVE PATENT JUDGE: Okay.
8 That's an interesting proposal.
9 Mr. Rosato, back to you.
10 And I would operate under the
11 assumption we're not going to bifurcate the
12 briefing on this.
13 MR. ROSATO: Okay. So if I may,
14 Your Honor -- and I appreciate that comment.
15 Just for sake of completing the discussion, I
16 would point to the Court's decision at Page 20.
17 I mean, there are a couple
18 provisions that were pointed to in the decision
19 that's probably the most relevant on this
20 point, where the Court states: "On remand, the
21 Board should first address whether Worlds is
22 estopped from arguing the real
23 party-in-interest issue. The Board should
24 thoroughly consider the posture of the related
25 proceedings, as well as any relevant exceptions
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2 to collateral estoppel. If the Board
3 determines that collateral estoppel does not
4 apply, the Board should then reevaluate the
5 merits of the real party-in-interest issue."
6 We all have the decision. We can
7 all read it. I do think it speaks for itself.
8 But just wanted to point that out.
9 The other point in the decision
10 that's worth noting is at Page 6, where the
11 Court notes that: "Worlds has not sought
12 review of the Board's order denying Worlds'
13 motion for discovery on this issue."
14 So that's going to be relevant to
15 Mr. Helge's comments, or at least some of them,
16 regarding the issue of additional discovery.
17 On the standard that -- so turning
18 to the RPI issue, as far as the standard goes
19 on RPI, Your Honor makes an interesting
20 observation on the standard in the Applications
21 in Internet Time case.
22 I would say that the IPR standard
23 has always been the same. It's reflected in
24 the Trial Practice Guide and numerous Federal
25 Circuit decisions, including Applications in
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2 Internet Time, and that is that the RPI
3 analysis, it requires a flexible approach that
4 takes into account both the equitable and
5 practical considerations. And -- but the
6 ultimate question is whether some other party
7 other than the Petitioner is the party at whose
8 behest the petition has been filed.
9 Again, those words, that verbiage,
10 is found the Trial Practice Guide. It's
11 recited in the Court's decision in this case.
12 It's recited in the Applications in Internet
13 Time v. RPX case. It's recited in the Wi-Fi
14 One case. That is the standard. And I would
15 say we should all be clear on that.
16 As to the issue on remand for RPI,
17 the issue, from our estimation, seems to be one
18 of clarification as to the burden framework
19 that the Board had used in assessing the
20 evidence in the RPI issue. And that's
21 reflected in the Court's decision in a number
22 of instances where the Court noted that they
23 were unable to discern whether the Board had
24 improperly placed the burden on Worlds. So
25 this seems to be an issue of clarification as
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2 to where the burden was placed.
3 So where does that -- where does
4 that leave us on briefing? Again, if the RPI
5 issue is reached, then -- well, I guess I would
6 say before I move to that, get back to the
7 Court's instruction on remand on the RPI issue
8 and their basis for vacating the Board's
9 decision, the basis being they were unable to
10 discern where the burden had been placed.
11 Now, our view of the Board's
12 decisions, having read them, having been
13 present in the proceedings themselves, our
14 understanding was the Board did in fact look at
15 the equitable and practical considerations. It
16 weighed the evidence, and it ruled in Bungie's
17 favor. In other words, the Board did not
18 improperly shift the burden, as was the Court's
19 potential concern that they were ultimately
20 unable to determine.
21 Obviously we can't speak for the
22 Board, but that is the correct analysis, and
23 the Board's decision was the correct outcome.
24 And as far as the briefing schedule
25 itself, I guess there's some agreement between
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2 the parties that additional briefing would be
3 in order. Under these circumstances, it would
4 make sense on this issue, again, if it's
5 reached. Certainly, even if it's reached on a
6 simultaneous briefing schedule, the briefings
7 should -- there should be separate briefs on
8 the issues.
9 But on the IPR issue, we -- our
10 position is that there should be simultaneous
11 opening briefs followed by simultaneous filing
12 of opposition briefs.
13 ADMINISTRATIVE PATENT JUDGE: When
14 you say "simultaneous," you mean both parties
15 file at the same time?
16 MR. ROSATO: Yes, Your Honor. I
17 think that makes sense, rather than, you know,
18 in taking -- trying to take into account
19 logistics and efficiency concerns.
20 So if both parties are
21 simultaneously filing on the same day an
22 opening brief, I'll call it, and then sometime
23 later an opposition brief, that would seem to
24 streamline the briefing schedule and allow both
25 parties to weigh in, both in the first instance
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2 and in response to the other party's brief,
3 without dragging out the proceeding with
4 multiple back and forth briefing.
5 I do want to address the evidence
6 issue, Your Honor.
7 ADMINISTRATIVE PATENT JUDGE: Well,
8 before you move on, let's stay on the briefing
9 for a moment.
10 MR. ROSATO: Mm-hmm.
11 ADMINISTRATIVE PATENT JUDGE: Not to
12 speak for Mr. Helge, but I would guess he's
13 going to say, Petitioner has the burden on all
14 these issues and should go first, and it should
15 not be simultaneous briefing.
16 What's your response to that?
17 MR. ROSATO: Well, on the burden
18 issue, I think the Court was clear on that
19 issue in terms of how that's addressed in
20 briefing on remand.
21 I don't believe, given the remand
22 circumstances or situation, that allowing
23 simultaneous briefing in the manner I suggested
24 in any way reflects on the burden. Right? The
25 burden that's in play is going to be reflected
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2 in how the Board evaluates the evidence, not
3 necessarily the timing of the briefing.
4 ADMINISTRATIVE PATENT JUDGE: Okay.
5 Mr. Helge, you want to dive in
6 briefly on the briefing?
7 MR. HELGE: Yes, Your Honor. Thank
8 you.
9 I think Your Honor is correct that I
10 don't understand why Worlds would be required
11 to file the opening brief. I think the Board
12 would gain much more benefit from seeing
13 Bungie's theories.
14 You know, I think the Federal
15 Circuit made a very smart point in their
16 decision where they say that Bungie dedicated
17 only two pages in its responsive brief to deal
18 with the collateral estoppel issue.
19 Now, in truth, of course, Worlds
20 only dedicated about two pages as well. I
21 think the record speaks for itself on that
22 point.
23 But what I would say is perhaps more
24 pointed here is that these issues have not been
25 fleshed out. And in fact, you know, we're
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2 familiar with the solicitor's office's view.
3 There has been a brief filed with the Federal
4 Circuit where the solicitor's office has taken
5 a very strong view on the issue of collateral
6 estoppel, saying that it simply doesn't apply
7 between IPRs.
8 And so obviously we also have the
9 Federal Circuit saying that they -- in their
10 view, different IPRs could easily, and probably
11 would, have different IPR analysis, and so it's
12 a different issue.
13 In view of statements like those and
14 positions like those, we think it would be much
15 more helpful for the Board to get Bungie's full
16 position on both collateral estoppel and RPI,
17 and then Worlds can address those theories
18 without, I think, the parties sort of crossing
19 in the night with the simultaneous briefs.
20 MR. ROSATO: Yeah. Your Honor, I
21 might be able to short-circuit this
22 conversation, or at least on this issue.
23 We're not wedded to what I proposed.
24 If the counterproposal is Bungie file on each
25 separate issue an opening brief, followed by an
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2 opposition, followed by a reply, as would be
3 more typical of a -- with a party as the sort
4 of moving party, or party with the burden,
5 that's okay as well.
6 We were simply trying to propose
7 something that addresses the concerns of
8 efficiency on remand.
9 If that's not the concern or not
10 conducive to what we're trying to accomplish
11 here, we're fine with briefing going Bungie's
12 opening, followed by Worlds' opposition,
13 followed by a reply.
14 ADMINISTRATIVE PATENT JUDGE: Okay.
15 Sorry. I interrupted you,
16 Mr. Rosato, a minute ago. You were going to
17 talk about, I believe, evidence or the record.
18 MR. ROSATO: Yes, Your Honor. Thank
19 you.
20 So the evidence issue, this is an
21 area, I think, where the parties do need a bit
22 of guidance from the Board on this.
23 So looking at -- again, reflecting
24 on the standard that's at play, the standard
25 being that it's a flexible approach that's
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2 taking into account the equitable and practical
3 considerations of the particular case at play,
4 the facts here -- we'll have to address what
5 evidence is of record and what might further be
6 deemed necessary or beneficial.
7 So under the facts of this case as
8 established in the current record as it is, the
9 relationship between the parties is Bungie is a
10 developer of video games, Activision is a
11 publisher.
12 Worlds is pointing to a litigation
13 case between Worlds and Activision that
14 predated Bungie's video games, and it's a
15 litigation case that doesn't involve Bungie and
16 never has involved Bungie.
17 In fact, Bungie's Destiny product
18 wasn't even released until 2014, which is more
19 than a year and a half after the date Worlds is
20 asserting Bungie was barred by the IPRs.
21 So under the test of practical and
22 equitable considerations, it's difficult to
23 imagine any equitable or practical scenario
24 where it makes sense to apply a bar date that
25 predates the existence of the very product
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2 being barred.
3 As far as additional evidence, we
4 would envision some non-testimonial evidence
5 certainly being beneficial to the record.
6 And again, we've -- as I mentioned,
7 there is a litigation case that doesn't involve
8 Bungie, and it's been some time since these
9 IPRs supported the decision in these IPRs, so
10 there would be some updates that would make
11 sense there, simply pointing to court documents
12 that show that that fact remains true, that
13 Bungie has nothing to do with that litigation.
14 So some non-testimonial evidence, I think,
15 would be helpful for submission.
16 As far as testimonial evidence --
17 and this is probably the issue where we would
18 be interested in the Board's perspective on
19 this. But turning back to the Federal Circuit
20 decision, at Page 16, the Court notes as an
21 aside, and they expressly characterized it as
22 an aside, that there was some question as to
23 whether -- a question in the Court's mind as to
24 whether the Board had relied on attorney
25 argument as evidence that Activision was not
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2 controlling or funding the IPRs.
3 And again, we -- Bungie can't speak
4 to the Board's intent on that, so we don't
5 know. As far as it relates to the issue of
6 evidence in this case, or on remand, our
7 reading -- our reading of the proceeding
8 previously was that the Board was noting
9 representations, not necessarily relying on
10 them as evidence. But we don't know whether
11 the Board, in those decisions, ultimately was
12 treating that as evidence or viewed it as a
13 fact that was critical to the Board's reaching
14 of its decision. We don't think that it was.
15 We don't -- our reading and our understanding
16 is that the Board is not treating it as
17 evidence, but it was noting representations.
18 That being said, if evidence of
19 non-funding or control, further evidence on
20 that issue, is something, from the Board's
21 perspective, is helpful or necessary for the
22 Board to reach a decision in this case, we are
23 happy and perfectly willing to submit
24 testimonial evidence supporting that point.
25 ADMINISTRATIVE PATENT JUDGE: Well,
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2 not to put words in your mouth, but it feels
3 like you're asking me to tell you what evidence
4 you need to prove your case. And I'm not going
5 to do that.
6 MR. ROSATO: I'm certainly not
7 asking that, Your Honor.
8 I think the evidence needed -- I
9 think the case can be proved with -- under,
10 again, the practical and equitable
11 considerations, looking at the evidence that is
12 of record, some non-testimonial evidence that
13 we would want to submit with that.
14 What I can't speak to -- well, and
15 again, we're certainly willing to submit a
16 declaration on the control issue. But there
17 are a couple things that raise, I guess, open
18 questions on that.
19 One is that the argument that Worlds
20 has been advancing all along has been based on
21 a provision of this publication development
22 agreement between Activision and Bungie about
23 review of Destiny and Bungie products.
24 The Board addressed that provision
25 of the contract, made an interpretation, made
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2 the correct interpretation that those didn't
3 apply to IPRs. The Court didn't disagree with
4 that. So that is in evidence.
5 There is evidence about the facts
6 and circumstances surrounding the relationship.
7 There's evidence about the fact that
8 the litigation has nothing to do with Bungie,
9 the litigation Worlds is pointing to. And
10 there's further testimonial evidence that would
11 support that.
12 What we can't say -- well, we can
13 say that it does not appear that Worlds has
14 ever advanced the argument that there is some
15 secret control or funding by a different party.
16 And we can't speak to the Board's mindset as to
17 what they've said about counsel's
18 representations about cost and control.
19 Again, we are perfectly happy to
20 submit the declaration. We are on remand. We
21 have the Board's guidance on remand that limits
22 the amount of evidence that can be put in. I
23 guess that I would say we're willing and able
24 to put in such evidence. We're just -- it's
25 not clear that it's necessary in view of the
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37
2 positions Worlds has taken or in view of the
3 Board's previous decision on this issue.
4 ADMINISTRATIVE PATENT JUDGE: What
5 about Patent Owner's argument that if we open
6 the record, we're opening the record, and then
7 you -- Petitioner now has duties to disclose
8 more information, any inconsistent evidence?
9 MR. ROSATO: I think there is some
10 automatic discovery or routine discovery about
11 parties taking inconsistent positions. I think
12 that's what you're referring to.
13 I don't know what other -- what to
14 say other than we think the RPI listing in the
15 petitions is accurate, remains accurate, and
16 Activision's not a real party-in-interest.
17 If we submit a declaration and
18 further evidence to support that, it would be
19 consistent with that position.
20 ADMINISTRATIVE PATENT JUDGE: Well,
21 let's -- I'm not going to advocate for Patent
22 Owner.
23 So I'll let Mr. Helge respond.
24 MR. HELGE: Yeah. Your Honor,
25 Mr. Helge again here for Worlds.
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2 I think the points that Mr. Rosato
3 is making about this evidence or this idea that
4 he could submit a declaration relating to the
5 control issue doesn't approach -- I think --
6 and it's sort of a -- it's a late shot in a war
7 that's already been lost, in essence.
8 I think what he's talking about are
9 the -- you know, the cost and control factors,
10 which the Federal Circuit has said are too
11 restrictive.
12 And again, we're in a world here --
13 under Applications in Internet Time, Worlds v.
14 Bungie, you know, we're in a world here where
15 we recognize that the Petitioner is going to
16 have the evidence. They're going to have the
17 documents.
18 And you know, certainly Your Honor
19 knows from litigation there's a duty to look
20 for these things. And certainly, you know, if
21 there was a communication from Activision to
22 Bungie of the existence of this letter, which
23 we believe there has to be. Simply, you know,
24 the fact that Bungie -- or excuse me -- that
25 Activision was involved in this litigation for
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2 a year and a half or almost two years and then
3 this letter is sent to Activision's counsel,
4 and shortly thereafter, about six months later,
5 Bungie shows up on the scene, having never
6 having been sued.
7 Now, Mr. Rosato's correct. The
8 Destiny product was never added to the
9 litigation. But the statute on time bars is
10 clear. As Mr. Rosato conferred -- or
11 confirmed, excuse me -- Activision is time
12 barred from filing its own IPRs.
13 And so when Bungie appeared on the
14 scene and filed IPRs on a product that was
15 going to be asserted against Activision on the
16 patents that were asserted against Activision,
17 you know, we think the line of communication
18 had to exist. Now, that's -- maybe that's me
19 interjecting my own personal view, but the
20 circumstantial evidence is there.
21 And so any communications -- again,
22 this goes back to the routine discovery
23 provision of Rule -- I think it's -- excuse
24 me -- 42.51(b)(1)(iii). It's -- excuse me.
25 It's information, not simply documents or a
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2 single declarant who may have been put up to a
3 sign a declaration. I think in a situation --
4 where the true situation occurred would be more
5 akin to maybe a 30(b)(6) deponent in District
6 Court litigation. And I recognize that that
7 may be a difficult thing here to do, but I
8 think that that's the right answer to get to
9 the idea of what communications in fact
10 occurred between Activision and Bungie that led
11 to the filing in these IPRs.
12 The case that jumps out at me is --
13 I believe it's Cisco v. HPE, in which the Board
14 denied a case -- or excuse me -- refused to
15 institute based on an RPI issue very similar to
16 this where Cisco, I believe, had filed an IPR,
17 having never been accused of infringement.
18 And so the clear inference that the
19 Board concluded was that Cisco was doing it on
20 behalf of another party who it had invested
21 into. I think it was a Springfield entity.
22 But I think that's the situation
23 we're in here, Your Honor, is the amount of
24 evidence that Bungie would have to produce
25 is -- actually, it's quite broad, I believe,
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2 under the routine discovery provision.
3 MR. ROSATO: Yeah, I'm going to
4 comment on that. That just doesn't make sense
5 to me.
6 I don't know how anybody can sit
7 there and say that the amount of evidence -- of
8 the breadth of evidence that needs to be
9 produced or doesn't need to be produced.
10 And there's -- the evidence
11 currently of record is -- weighs in one favor,
12 and that is not a finding of inadequate RPI
13 listing. That is evidence of record. The
14 relevant standard whether -- you know, on
15 reviewability is substantial evidence.
16 As far as what further is needed, we
17 are happy to submit further evidence to support
18 this, and can and will do that.
19 ADMINISTRATIVE PATENT JUDGE: I
20 think the question goes beyond what you want to
21 produce. And we're going to be getting into
22 the area of what you don't want to produce, is
23 my guess, because, not to put words in Patent
24 Owner's mouth, but he would probably say you
25 want to put in self-serving evidence that helps
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2 the Petitioner, the declaration you've
3 proposed, without having to open up your books
4 so that Patent Owner can test your assertion.
5 So what I keep coming back to is I'd
6 love to see you guys agree, either go on the
7 closed record that we have now, or if we open
8 it, it's going to be open. And if Petitioner
9 has to put in evidence to make its case, Patent
10 Owner's going to get a chance to test that
11 evidence.
12 MR. ROSATO: Well, I mean, I would
13 say that there is -- that we all have goals and
14 concerns for efficient administration. So any
15 time we're talking about discovery, we're
16 thinking of factors that are reflected in, you
17 know, the Board's own standards on granting
18 discovery and in the Federal Rules of Evidence
19 themselves about things being unduly
20 burdensome, and we're all trying to avoid that.
21 So I would characterize any goal --
22 and I hope everyone on this call shares these
23 interests -- that we address the issue in ways
24 that are most efficient and least burdensome.
25 I think that's the only issue at play here. I
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2 don't think it needs to go any further than
3 that.
4 As far as, you know, communications,
5 you know, I will push back on that a little bit
6 here, in that if we're talking about relevant
7 communications, I'm going to be perfectly
8 candid here. This is a situation where Worlds
9 is trying to game the estoppel system.
10 They're trying to game the estoppel
11 by pointing to a letter that was sent in the
12 context of years' old litigation that never had
13 anything to do with Bungie and applying an
14 estoppel bar that predated the very product by
15 years. That just makes no sense.
16 And if we have communications, I'd
17 like to -- I would ask what communications have
18 occurred on that. And there are communications
19 between the parties that are relevant. In
20 fact, there are communications that raise
21 questions of why this argument is even still
22 being advanced by Worlds, to be honest.
23 So as far as -- you know, and again,
24 going back to the additional discovery
25 decision, that has -- that ship has sailed.
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2 You know, any -- Worlds chose not to contest
3 that decision on appeal, so that has sailed. I
4 mean, if we're trying to wrap up the case in a
5 cost efficient manner, the evidence itself
6 right now points in one direction.
7 There is one comment in the Federal
8 Circuit's decision that refers to the weight
9 that was placed on attorney argument. We don't
10 know the answer to that, but we are happy to
11 address it, if need be.
12 ADMINISTRATIVE PATENT JUDGE: So
13 just to make sure I understand, Petitioner
14 seems to be saying that you are content with
15 the record as is.
16 MR. ROSATO: Well, we would like to
17 submit some of the non-testimonial evidence
18 that should be noncontroversial and, you know,
19 updates information on the same facts and
20 circumstances that were present. I think that
21 type of information would be beneficial and not
22 burdensome to anyone.
23 ADMINISTRATIVE PATENT JUDGE: So can
24 you give me a little more detail on what you're
25 talking about?
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2 I'm having trouble envisioning
3 something -- you're saying you want to put more
4 information in the record but stop right there.
5 So it would have to be very noncontroversial
6 for that to happen.
7 So tell me what you're talking about
8 would be in this declaration.
9 MR. ROSATO: Okay. So to make sure
10 we're talking about the same things, I would
11 say there's non-testimonial evidence that we
12 would like to introduce into the record, and
13 then there's the open question on testimonial
14 evidence.
15 For non-testimonial evidence, it
16 would be helpful to have any -- well, on the
17 collateral estoppel issue, we would need to
18 enter into the record here the briefing that
19 was present in the other cases, right, to
20 establish basic facts, like the exact same
21 argument listing advance in all of the cases.
22 With regard to the litigation
23 between Activision and Worlds, it remains true
24 that that has never involved Bungie. And we
25 could go on PACER and pull documents from that,
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2 from the caption listing of that case, to show
3 that that's true.
4 Some of the other facts that I think
5 would be helpful -- I'll have to go through the
6 record. But for example, I had mentioned that
7 Bungie's video game product didn't even exist
8 at the time Worlds is asserting a bar date
9 exists. So basic press release information or
10 substantiating when the Destiny product was
11 released, I think, would be helpful.
12 Those are the types of
13 non-testimonial evidence information that I'm
14 referring to.
15 ADMINISTRATIVE PATENT JUDGE: Okay.
16 MR. ROSATO: As far as testimonial
17 evidence, we -- and again, this is proving a
18 negative. But we're willing to submit a
19 declaration from someone at Bungie who's
20 familiar with the matter, and they can attest
21 to the fact that Activision was not -- was not
22 a -- that Bungie was not filing things at the
23 behest of Activision, and they can address the
24 control funding issue.
25 And if Worlds would like to
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2 cross-examine that person, they're welcome to
3 do so.
4 I don't think we should have
5 attorneys from -- you know, absent a litigation
6 situation -- well, I would say it's not
7 necessary then to go through some invasive
8 exploration or reopen the discovery requests
9 that were denied and never appealed.
10 ADMINISTRATIVE PATENT JUDGE: Okay.
11 So to recap, on the non-testimonial
12 evidence -- and for the most part, it does seem
13 noncontroversial -- first category, you were
14 talking about papers filed in other IPRs in the
15 PTAB, is my understanding; and then documents
16 pulled from PACER, presumably to show that
17 Bungie was not involved in the Activision case;
18 and then documents to show when Destiny was
19 released. Is that correct?
20 MR. ROSATO: That's -- yes. I mean,
21 if there is anything --
22 ADMINISTRATIVE PATENT JUDGE: I'm
23 not going to hold you to this.
24 MR. ROSATO: Thank you.
25 ADMINISTRATIVE PATENT JUDGE: I'm
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Page
48
2 just making sure I understand what you're
3 talking about. Okay.
4 MR. ROSATO: Yes, that's correct.
5 ADMINISTRATIVE PATENT JUDGE: Thank
6 you.
7 And then testimonial, possibly, a
8 declaration from somebody who is going to
9 basically support your position that there was
10 no control and no financing. And you're
11 willing to offer cross-examination of that
12 person.
13 All right. Mr. Helge, what's your
14 response to that offer?
15 MR. HELGE: Well, Your Honor, I
16 think on the noncontroversial evidence, just
17 regarding the documents from PACER and Destiny
18 being released, I recognize -- and in fact, I
19 think we would agree, it may actually already
20 be in the record in some form that Destiny was
21 never added to the litigation.
22 Again, I don't think that's the
23 issue here, because, again, we've got a letter
24 where -- correspondence between counsel
25 between -- for Worlds and for Activision
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2 identified Destiny as a product that might be
3 added to the case. And then obviously
4 resulting from that, Bungie came in and filed
5 the IPRs.
6 Now, I think the IPR and time bar
7 statute doesn't -- it doesn't talk about the
8 date when an accused product was released or
9 anything like that. And I think even -- and I
10 believe it's the Samsung v. Adaptics IPR is
11 going back -- this is going back to probably
12 2014 or so.
13 Samsung had been sued -- I'm sorry.
14 Was it Adaptics? It may have been Fractus.
15 But it was one of these cases where Samsung had
16 a judgment against them and they tried to file
17 a new set of IPRs.
18 And the Board said, no. You have
19 been served with a complaint, not just the
20 latest complaint, but a complaint more than a
21 year ago. You're time barred.
22 And in fact, I don't think that
23 Bungie here in these cases has ever taken the
24 position that if Activision were deemed an IPR,
25 that these cases wouldn't be time barred. So I
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2 think that the details here about PACER, about
3 Destiny, I think we could probably handle that
4 stuff with a pretty simple stipulation about
5 the timing of Destiny or the relevance here,
6 but it doesn't have any importance, frankly, to
7 the time bar.
8 So I don't see any of the
9 noncontroversial evidence that we've
10 identified, this non-testimony, as being
11 relevant to the RPI question.
12 Mr. Rosato mentioned a declaration
13 from somebody at Bungie who knows about the
14 situation. You know, I think we certainly
15 would want a cross-examination of anybody who
16 submits a declaration, but I don't think that
17 discharges the routine discovery obligation.
18 Now, what I could possibly draw a
19 comparison to is situations that we've been in
20 litigation, for example, in the Eastern
21 District of Texas where the Court has a
22 standing order that certain types of
23 information must be produced without a
24 discovery request.
25 And what we could do is put together
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2 a list -- you know, I think it would be a few
3 pages long -- put together a list for the
4 Board's review on what we believe would fall
5 under the routine discovery information that
6 would be required to be produced. And I think,
7 you know, that would include identification of
8 people that perhaps Bungie is speaking to to
9 find this person, or people that may have
10 informed this person of the facts that they're
11 then going to declare and testify to.
12 Because again, the problem is -- and
13 I think Your Honor was a hundred percent
14 correct before -- that Bungie's offering to
15 give us information that they want to give.
16 But routine discovery, while
17 self-executing, I think, demands some oversight
18 by Your Honors. And you know, the -- how would
19 I say it -- perhaps the pressure and the
20 insurance is that in fact a thorough
21 investigation was conducted to ensure that
22 Bungie is complying with that.
23 Like I've mentioned before, I
24 believe it's Pages 4 and 5 of the motion -- or
25 the opposition to our motion for discovery
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2 where Bungie mentions that they have discharged
3 their obligation for routine discovery.
4 Now, maybe under the cost and
5 control that was true. But certainly the
6 information, the people that Bungie talked to,
7 the people that -- the facts and the
8 information that Bungie had when it made its
9 representations to the Court and this Board,
10 they were never made available to Patent Owner.
11 And so that critical aspect of the test of this
12 information just didn't exist in the earlier
13 stages of these proceedings, Your Honor.
14 ADMINISTRATIVE PATENT JUDGE: Okay.
15 In response to something you said,
16 let me make it clear that the panel has neither
17 the time nor the inclination to want to referee
18 discovery disputes.
19 So I'm going to -- whatever happens,
20 if we open up discovery, the parties will
21 conduct many meet and confer sessions and will
22 try to work out everything they can work out,
23 and only if there's a dispute, come to the
24 Board.
25 MR. HELGE: Fully understood, Your
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2 Honor, of course.
3 ADMINISTRATIVE PATENT JUDGE:
4 Mr. Rosato, would you like to respond to
5 anything?
6 MR. ROSATO: I guess I can reiterate
7 that -- well, I would say I have confidence
8 that the Board can look at evidence and weigh
9 it to attribute the appropriate weight, if it's
10 a witness testimony through a declaration and
11 cross-examination, and evaluate the credibility
12 and the appropriate weight.
13 I think we're getting way ahead of
14 ourselves when we're speculating about unnamed
15 people and unnamed communications. I don't
16 even know how to respond to that, to be honest,
17 but it's very premature and amorphous. I don't
18 know what Mr. Helge's talking about, to be
19 honest.
20 ADMINISTRATIVE PATENT JUDGE: Well,
21 he and I may not be thinking the same thing,
22 but -- and I agree it's a bit speculative, but
23 I think at this point I need to speculate a
24 little bit. I want to know how this is going
25 to play out.
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2 And it's going to play out based on
3 whether we authorize the opening of the record
4 and any discovery. Because my fear is you've
5 put forth a declaration that's probably going
6 to say, hey, nothing to see here, we had no
7 control, no financial thing, there was no
8 benefit to -- I guess it would be Activision.
9 And then Patent Owner can depose
10 that person. But the Patent Owner's going to
11 want more discovery related to that to test the
12 veracity. Otherwise --
13 MR. ROSATO: And that was -- yeah,
14 and that could occur through cross-examination,
15 should we get there.
16 You know, I guess -- and I guess I
17 would return -- let me return to the evidence
18 issue, and then I can put forth a suggestion
19 that we can see if it's acceptable.
20 But on the evidence issue, I do
21 think that this case, under the -- when
22 evaluated under the right standard -- and it's
23 not the standard that Mr. Helge has alluded to,
24 but the one I had mentioned being repeated
25 throughout the Practice Guide and all of these
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2 relevant Federal Circuit decisions, and that is
3 you're looking at the equity. It's an
4 equitable test, and it looks at the equities in
5 the practical situation.
6 I think under the evidence that
7 exists of the record and then any further
8 noncontroversial, non-testimonial evidence,
9 that there is more than adequate evidence to
10 reach the same conclusions the Board had
11 previously reached, and with that conclusion
12 being supported by evidence of record.
13 The control issue is -- I agree with
14 Mr. Helge on that, that is not the test. And,
15 you know, if there had been previous panels
16 that had overemphasized the control issue, then
17 they've overemphasized the control issue
18 without focusing on the equitable, practical
19 circumstances test. That is -- that is not the
20 situation here.
21 But if the control issue, if that's
22 what Worlds is now alleging -- remember, their
23 initial allegation was that their dev-pub
24 agreement had a provision that, according to
25 Worlds, covered these IPRs. That argument
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2 is -- has been addressed by the Board, and the
3 Federal Circuit found no issue with that.
4 But if we are to address this
5 control issue, it is proving a negative. We
6 can submit evidence on this. And the type of
7 evidence we're proposing is exactly what the
8 Federal Circuit had suggested at oral argument,
9 that -- and I would -- I think those arguments
10 are still available. But the Court had asked,
11 you know, if it's control issue, why not just
12 submit a declaration that attests to that fact.
13 This is the type of information.
14 Now, as far as how to handle this in
15 remand, I wonder if it's possible to even defer
16 the issue, where the parties submit their
17 initial briefs, or Bungie submits its initial
18 brief, with the current record and the
19 non-testimonial evidence that I'm referring to.
20 And the parties can then meet and confer
21 whether additional evidence is warranted.
22 We're happy to discuss it with the Board.
23 But if at that point there is an
24 exchange between the parties of a declaration,
25 we'd be willing -- we're open to that too. And
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2 we're open to handling this in a way where we
3 don't have to go to Your Honor and ask for
4 policing of discovery requests.
5 ADMINISTRATIVE PATENT JUDGE: Okay.
6 Let's discuss some hypotheticals.
7 Hypothetically, we authorize
8 briefing, and let's assume it's serial with
9 what Petitioner had proposed there towards the
10 end, Petitioner would go first, then Patent
11 Owner, and then Petitioner reply.
12 What are we thinking on the page
13 quantity and timing?
14 MR. ROSATO: I'm happy to address
15 that first, Your Honor.
16 On the collateral estoppel issue, we
17 could turn that around very quickly. It would
18 take a little more -- again, we had read the
19 Court's decision as bifurcating, so we've been
20 working on the briefing on the collateral
21 estoppel issue.
22 We would need a little bit more time
23 on the RPI briefing. If that is going to be
24 ordered to occur simultaneously, I would say
25 with the holidays approaching, if a month was
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2 given for the initial opening brief, that would
3 be helpful.
4 Page count, I think 15 pages for
5 each brief would be sufficient.
6 ADMINISTRATIVE PATENT JUDGE: When
7 you say "each brief," are you talking
8 collateral estoppel and then another brief on
9 RPI?
10 MR. ROSATO: Yes.
11 ADMINISTRATIVE PATENT JUDGE: Okay.
12 Mr. Helge, what do you think about
13 that proposal?
14 MR. HELGE: Your Honor, we were
15 thinking -- we do have some numbers here -- for
16 opening brief and response, we think 15 pages
17 is probably not going to be sufficient.
18 The collateral estoppel issues,
19 obviously there's policy issues. There's --
20 again, we have the solicitor's brief from, I
21 think it's the BioDelivery case that was filed
22 up in the Federal Circuit where the solicitor
23 said, for the PTO, stated that collateral
24 estoppel does not apply between IPRs. We have
25 that. That's, I think, seven or eight pages,
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2 that argument, thereabouts, I think, in terms
3 of the actual restatements on collateral
4 estoppel, the factors, the reasons why those
5 wouldn't apply.
6 You know, I think we're probably
7 pushing 15 to 20 pages on the collateral
8 estoppel, to give the Board what we think would
9 be a fair picture on that point.
10 On the RPI, obviously I think Your
11 Honor knows we've briefed that issue based on
12 the evidence we have before, and I think we've
13 generally spent about eight to ten pages on
14 that.
15 You know, if the record is limited
16 to what we have, I think Your Honor is probably
17 going to know what it is we're going to say.
18 Obviously, we'll address -- and you know,
19 Mr. Rosato characterized our argument -- I
20 think now he's saying we're relying on control.
21 Well, no. In fact, we're relying on
22 Applications in Internet Time, and we're
23 relying upon what the Federal Circuit said in
24 the World v. Bungie case, Page 17 of the Slip
25 opinion, where they say that: "Determining
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2 whether a party is a real party-in-interest
3 demands a flexible approach that takes into
4 account both equitable and practical
5 considerations with an eye toward determining
6 whether the nonparty is a clear beneficiary and
7 has a preexisting, established relationship
8 with the Petitioner."
9 Under that standard, Your Honor, you
10 know, we think -- I would say roughly 40 pages.
11 What I'm thinking in word counts is
12 probably about 10,000 words for, you know, an
13 opening and a responsive brief. In terms of
14 reply, sur-reply, maybe 10 pages would do it.
15 MR. ROSATO: I'm confused, Your
16 Honor. I thought we were talking about
17 Bungie's opening briefs and then an opposition
18 followed by a Bungie reply.
19 ADMINISTRATIVE PATENT JUDGE: That's
20 sort of my working assumption at the moment.
21 MR. ROSATO: Okay.
22 ADMINISTRATIVE PATENT JUDGE: So
23 what I heard you say is roughly 30 pages to
24 cover both issues. You'd like about a month.
25 Patent Owner was kind of in that
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2 ballpark, maybe 40 pages.
3 MR. HELGE: Correct, Your Honor.
4 ADMINISTRATIVE PATENT JUDGE: Okay.
5 MR. HELGE: Your Honor, this is
6 Mr. Helge for Worlds.
7 May I make a quick point about the
8 timing of the briefing, Your Honor?
9 ADMINISTRATIVE PATENT JUDGE: Sure.
10 MR. HELGE: Thank you, Your Honor.
11 I'll be quick.
12 Your Honor, in terms of the
13 timing -- and I apologize. Your hypo -- your
14 hypothetical that you set forth may have
15 addressed it, and I apologize if I forgot.
16 But in terms of the timing between
17 Bungie's opening brief, you know, in which it
18 has to carry the day on both RPI and collateral
19 estoppel, I think that the timing for Worlds'
20 opposition brief, or responsive brief, should
21 be somewhat flexible just to allow if the Board
22 were to order discovery or allow discovery or
23 police some of the routine discovery that
24 Bungie may or may not have produced with that
25 opening brief.
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2 ADMINISTRATIVE PATENT JUDGE: I'm
3 sorry. Can you say that again, please.
4 MR. HELGE: Apologize, Your Honor.
5 Yeah. We -- our thought is that the
6 timing between Bungie's opening brief and
7 Worlds' opening brief should be, I'm thinking,
8 maybe two months roughly, if there is going to
9 be some discovery that's going to occur between
10 those two briefings.
11 ADMINISTRATIVE PATENT JUDGE: Okay.
12 So you're saying after you would
13 receive Petitioner's opening brief, if
14 discovery's involved, you would want two months
15 before you had to file your opposition?
16 MR. HELGE: That's right, Your
17 Honor.
18 I'm trying to give -- I recognize
19 that the panel is under some obligation or some
20 desire under SOP 9 to try to issue the remand
21 decision within about six months from the
22 mandate. And I know we're already about a
23 month into that time period.
24 Our thought, however, is, if there's
25 going to be a declaration from someone at
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2 Bungie, that there would be some
3 cross-examination, obviously coordination of
4 schedules, and there may need to be, like you
5 mentioned before, the multiple meet and confers
6 to ensure that the routine discovery has been
7 produced that we're entitled to.
8 ADMINISTRATIVE PATENT JUDGE: Okay.
9 I don't want to continue to beat
10 this dead horse. I think I've got enough --
11 the panel has enough to go on here.
12 We've -- just to put the parties on
13 notice, there's an elephant in the room for me.
14 And Mr. Rosato may have touched on it. But if
15 we do order briefing, I'm going to want to see
16 some discussion on the equitable aspects
17 concerning Patent Owner's conduct.
18 My understanding is, is Patent Owner
19 effectively is arguing its actions through the
20 letter to add Destiny is what created the RPI
21 status.
22 So I don't want to hear from the
23 parties right now. But if we order briefing,
24 I'm going to want to see a discussion as to
25 whether that's even a factor under the RPI
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2 test. Maybe it's not. And if it is, I'd like
3 the parties to address it.
4 Anything else from Petitioner before
5 we close up for the day?
6 MR. ROSATO: No.
7 I appreciate that comment, Your
8 Honor. And we certainly will.
9 On timing, I would just ask that any
10 timing be roughly -- at least roughly
11 equivalent, if not equivalent.
12 You know, I don't want to promise
13 you very rapid dates on our end and have, you
14 know, some discrepancy there. So if -- an
15 evenhanded approach would be appreciated.
16 ADMINISTRATIVE PATENT JUDGE:
17 Understood. Yeah, I appreciate that. But you
18 do raise a good point.
19 If, say, assuming arguendo, we give
20 you a month for your principal brief, that's
21 going to put it due early December. And that
22 would mean -- and if there's discovery tied
23 with that or any kind of evidence tied with
24 that -- and I'm not saying that we will. But
25 if there is, there would be need to be a
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2 deposition during the period before Patent
3 Owner would respond. And we're talking about
4 winter breaks and holidays and such in there.
5 Is -- do you foresee issues with
6 producing a witness for deposition during that
7 period, the end of December or --
8 MR. ROSATO: I don't -- I don't.
9 ADMINISTRATIVE PATENT JUDGE: Okay.
10 MR. ROSATO: But I mean, we can --
11 obviously, we'd have to work out schedules.
12 But I don't anticipate at this point any issue
13 with that.
14 ADMINISTRATIVE PATENT JUDGE: Okay.
15 All right.
16 Mr. Helge, anything else?
17 MR. HELGE: Your Honor, just a very
18 quick point.
19 You mentioned about the equitable
20 issue of Patent Owner Worlds identifying
21 Destiny as a possible product in the litigation
22 and the equitable relationship. If I -- I may
23 have to ask Your Honor for a clarification on
24 that.
25 I think that we had raised this
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2 issue below, and the idea, I think, is simply
3 that there is an indemnification requirement
4 that is triggered or that could have been
5 triggered -- we think it was triggered -- when
6 Destiny was -- or when Activision was put on
7 notice of Destiny as a possible infringing
8 product. And the communications between
9 Activision and Bungie that followed seemed to
10 be what led to the filing of the IPRs.
11 I'm just curious if Your Honor had
12 another concern related to the equitable issue.
13 I'm trying to understand perhaps if Your Honor
14 is suggesting that Bungie was put on notice as
15 a sort of a trigger. Or maybe the desire was
16 to prohibit Bungie from filing IPRs?
17 ADMINISTRATIVE PATENT JUDGE: Well,
18 I don't want to dive into the merits here. And
19 if we do briefing, it's probably going to be
20 Petitioner setting forth their position first,
21 and then you can respond.
22 MR. HELGE: Certainly.
23 ADMINISTRATIVE PATENT JUDGE: But
24 you were describing the facts that I was
25 thinking about.
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2 MR. HELGE: Understood, Your Honor.
3 Thank you.
4 ADMINISTRATIVE PATENT JUDGE: Okay.
5 Well, I have nothing further.
6 If -- again, I would like the
7 parties to get together and just file one
8 transcript as an exhibit.
9 And if something is left unresolved
10 from this conversation, unless it really needs
11 to get us on the phone, then just send an
12 e-mail to the trials box. But certainly we're
13 here if we do need to get back on the phone.
14 So with that, we will take this
15 under consideration.
16 Have a lovely afternoon, everyone.
17 MR. HELGE: Thank you, Your Honor.
18 MR. ROSATO: Thank you, Your Honor.
19 You too.
20 (Time Noted: 4:17 p.m.)
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1 District of Columbia, to wit:
2 I, Stacey L. Daywalt, a Notary
3 Public of the District of Columbia, do hereby
4 certify that the proceedings were recorded
5 stenographically by me and this transcript is a
6 true record of the proceedings.
7 I further certify that I am not of
8 counsel to any of the parties, nor an employee
9 of counsel, nor related to any of the parties,
10 nor in any way interested in the outcome of
11 this action.
12 As witness my hand and Notarial Seal
13 this 9th day of November, 2018.
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15
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17 Stacey L. Daywalt, Notary Public
18 My Commission Expires: 4/14/2021
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