PTAB

IPR2017-01600

Bungie Inc v. Acceleration Bay LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: JOINING A BROADCAST CHANNEL
  • Brief Description: The ’069 patent describes a method for adding a new participant to an existing computer network where each participant is connected to three or more other participants. The core method involves identifying a pair of connected nodes, disconnecting them from each other, and then connecting the new participant to each of the two disconnected nodes.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-8, and 11-13 are obvious over Francis in view of Gilbert.

  • Prior Art Relied Upon: Francis (“Yallcast: Extending the Internet Multicast Architecture,” Sep. 30, 1999) and Gilbert (Patent 6,490,247).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of Francis and Gilbert taught all limitations of the challenged claims. Independent claim 1 recites a method for a joining node to enter a network by: (1) contacting a "fully connected portal computer"; (2) having the portal send connection requests to randomly selected neighboring nodes; (3) disconnecting the selected pair of nodes from each other; and (4) connecting the joining node to that pair.
      • Petitioner argued Francis, which describes the "Yallcast" protocol, teaches a mesh network where each node connects to 3-4 randomly selected neighbors. Francis discloses a "rendezvous host" that functions as a portal, serving as a bootstrap mechanism for new nodes. New nodes join by contacting this rendezvous host to learn of existing members, and then connect to randomly selected members via a "random walk" discovery message.
      • Petitioner contended that Gilbert, which was considered during prosecution but distinguished on different grounds, remedies any elements not explicitly taught by Francis. Gilbert discloses a dynamically reconfigurable ring network. Crucially, it teaches a method of adding a new node by having two adjacent nodes drop their connection to each other and connect to the new node. Gilbert also discloses that this process can be executed by a "network manager" or "gatekeeper" node (a portal) that receives a join request and initiates the connection process.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to combine the teachings of Francis and Gilbert. Francis’s goal is to maintain a mesh topology with a fixed number of neighbors per node. Gilbert provides an explicit, well-known technique for adding a node to such a topology by disconnecting an existing link to make room for the new node's connections. A POSITA seeking to improve the node-addition process in Francis’s system would have looked to Gilbert’s explicit disconnect-and-reconnect mechanism to maintain the desired network structure. Furthermore, both references teach the advantages of using a designated portal/rendezvous node for managing network entry, such as for security and administrative efficiency, providing a clear reason to integrate Gilbert's portal-initiated connection requests into Francis's system.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references. The combination involves applying a known technique (Gilbert’s node insertion method) to a known type of system (Francis’s overlay network) to achieve the predictable result of efficient node addition while preserving network topology. The systems are highly compatible as both relate to managing dynamic logical networks.

4. Key Claim Construction Positions

  • "fully connected portal computer": Petitioner argued this term should be given a flexible interpretation beyond its conventional meaning of a node connected to every other node in the network. The petition contended that, based on the ’069 patent’s specification and its prosecution history, the term should be construed more broadly to mean a node that is simply established on the network. During prosecution, the applicant described a "portal node" in Gilbert's ring topology—which is not connected to all other nodes—as "fully connected to the network." This broader construction is critical for Petitioner's argument, as it allows the "rendezvous host" in Francis and the "network manager" in Gilbert, neither of which are fully meshed, to meet this claim limitation.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition is not time-barred under §315(b). Although the Patent Owner had filed lawsuits more than one year prior, those cases were dismissed without prejudice for lack of standing, which Petitioner asserted nullifies the complaint for time-bar purposes. The petition was filed within one year of a subsequent litigation where service was effective.
  • Petitioner also argued that institution would not be an undue burden or prejudicial to the Patent Owner. The petition asserted a single ground with only two references (Francis and Gilbert). This ground is substantially different from those considered in a previously denied IPR on the ’069 patent (IPR2016-00726), which relied on different prior art (Obraczka, Denes, and Shoubridge). As Francis was never considered during original prosecution, Petitioner contended the Board should review the patentability of the claims in light of this new combination.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5, 7-8, and 11-13 of the ’069 patent as unpatentable.