District Judge Yvonne Gonzalez Rogers has denied a motion brought by Acceleration Bay, LLC that exposes an “apparent loophole left by the statutory scheme governing [inter partes review (IPR)] availability”, as indicated by the court. In July 2019, Epic Games filed a complaint seeking declaratory judgments of noninfringement—but not of invalidity—of seven patents held by Acceleration Bay. The patentholder answered that complaint, bringing affirmative claims of infringement. Epic Games then replied to Acceleration Bay’s answer, joining the issue of the asserted patents’ invalidity for the first time, through affirmative defenses and counterclaims. Acceleration Bay moved to strike those “counterclaims-in-reply”, arguing that Epic Games “seeks an end-run around rules” governing the availability of IPR, but Judge Gonzalez Rogers denied the motion under current law, lamenting along the way that “[i]n theory, a declaratory judgment counterclaimant may fully litigate the issue of patent validity in the district court, lose on the issue, and then seek a ‘redo’ before the PTAB while being subject to no estoppel or time limit whatsoever”.
Bot M8 LLC, an NPE with apparent ties to Acceleration Bay, LLC, has filed suit against Sony (1:19-cv-07529) in the Southern District of New York over the provision of the PlayStation 4, PlayStation 4 Slim, and PlayStation 4 Pro consoles, the PlayStation Network online service, and Sony-developed video games that include “balanced multiplayer matchmaking or mutual authentication functionality”. The NPE asserts six gaming patents received, among several other US patents and international counterparts, from Japanese company Universal Entertainment in an assignment with effective date on October 13, 2016. The “confidential” patent purchase agreement, filed with the USPTO, identifies payment and timing terms that indicate a target of $96M to have been paid to Universal Entertainment months ago.
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