Bungie Inc v. Acceleration Bay LLC

1. Case Identification

• Case #: IPR2017-01601
• Patent #: 6,829,634
• Filed: June 16, 2017
• Petitioner(s): Bungie, Inc.
• Patent Owner(s): Acceleration Bay, LLC
• Challenged Claims: 19-24

2. Patent Overview

• Title: BROADCASTING NETWORK
• Brief Description: The ’634 patent describes a method for adding a new participant to an existing computer network of participants. The method involves the new participant locating a "portal computer" to identify neighbor participants, dropping the connection between those neighbors, and then establishing new connections to them to join the network, maintaining specific topological properties like being "m-regular" and "m-connected."

3. Grounds for Unpatentability

Ground 1: Claims 19-24 are obvious over Gilbert in view of Francis.

• Prior Art Relied Upon: Gilbert (Patent 6,490,247) and Francis (a 1999 publication titled "Yallcast: Extending the Internet Multicast Architecture").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gilbert alone discloses nearly every element of the challenged claims. Gilbert teaches a dynamically reconfigurable logical ring network (which is 2-regular and 2-connected) and a method for adding a new node. This method involves using a designated "primary node" or "gatekeeper" (the claimed "portal computer") to identify two adjacent nodes. These adjacent nodes then drop their connection to each other and each establishes a new connection to the joining node, thereby inserting it into the ring. Petitioner contended that to the extent any claimed features are not fully disclosed by Gilbert, such as a higher degree of network regularity or the use of TCP/IP, they are rendered obvious by Francis. Francis discloses a logical mesh network topology where each node has three or four neighbors (i.e., m=3 or m=4), using a "rendezvous host" to manage the addition of new nodes. Francis explicitly teaches that its system can run over TCP/IP. Petitioner asserted that Francis’s rendezvous host performs the same function as Gilbert’s gatekeeper and the ’634 patent’s portal computer.
  • Motivation to Combine: Petitioner argued that a person of ordinary skill in the art (POSITA) would have been motivated to combine the teachings of Gilbert and Francis because both references address dynamic logical/overlay computer networks and the use of designated nodes to manage the addition of new participants. A POSITA seeking to improve the scalability, efficiency, and robustness of Gilbert’s 2-regular ring topology would have looked to Francis’s teachings on higher-degree m-regular mesh topologies. Adopting a 3-regular or 4-regular mesh topology would reduce the risk of bottlenecks and mitigate the effects of node failure, representing a natural and predictable extension of Gilbert’s system. Furthermore, a POSITA would combine Francis’s teachings to implement the system over the internet using the well-known TCP/IP protocol.
  • Expectation of Success: Petitioner asserted that a POSITA would have had a reasonable expectation of success in combining the references. Because both Gilbert and Francis describe similar systems with designated nodes for managing network joins, importing concepts such as a higher-degree m-regular topology or the use of TCP/IP from Francis into Gilbert’s framework would be a predictable application of known techniques to improve a known system.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the petition should not be time-barred under 35 U.S.C. §315(b). Although related litigations were served more than one year prior, they were dismissed without prejudice for lack of standing and therefore did not trigger the time bar. The currently pending litigations were served within the one-year window.
• Petitioner further contended that institution would not be an undue burden on the Patent Owner or the Board. The petition presented a single, new ground of unpatentability based on a combination of references (Gilbert and Francis) never before considered during prosecution or in any prior inter partes review (IPR) proceeding involving the ’634 patent.

5. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 19-24 of the ’634 patent as unpatentable.