Worlds Inc (WDDD)

[rolvram]

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
)))))))))))))
Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
PROPOSED SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
CONCERNING INDEFINITENESS
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I. INTRODUCTION
On June 2, 2014, the U.S. Supreme Court issued its decision in Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. ____ (2014). The Court defined a new legal standard for assessing
whether a patent claim is invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2. The Court
expressly rejected the Federal Circuit’s standard that a claim term is indefinite only if it is
insolubly ambiguous or not amenable to construction.
In the present action, the parties filed claim construction briefs in April and May of 2013
(D.I. 62, 63, 68, 69). Defendant Activision’s briefs explained that several terms of Worlds’
asserted patent claims are indefinite, or indefinite if not construed as urged by Activision (D.I. 63
and 69). Worlds argued to the contrary (D.I. 62 and 68). Both parties’ showings and arguments
in this regard were based on the Federal Circuit’s standard for indefiniteness that the Supreme
Court rejected in Nautilus and replaced with the new legal standard. Accordingly, Activision
submits this brief to address its indefiniteness arguments pursuant to the new standard.
II. THE NEW LEGAL STANDARD FOR INDEFINITENESS
As noted in Activision’s Opening Claim Construction Brief, the Federal Circuit’s
standard prior to Nautilus was, “[o]nly claims ‘not amenable to construction’ or ‘insolubly
ambiguous’ are indefinite.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347
(Fed. Cir. 2005); D.I. 63 at 32. Worlds’ claim construction briefs cited Exxon Research & Eng’g
Co. v. U.S., 265 F.3d 1371, 1375 (Fed. Cir 2001), and Energizer Holdings v. Int’l Trade
Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006), which were to the same effect. D.I. 62 at 20-21;
D.I. 68 at 14-15.
In Nautilus, the Supreme Court expressly rejected this standard and set forth the
following new standard, which lowered the bar for showing indefiniteness:
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In place of the “insolubly ambiguous” standard, we hold that a patent is invalid
for indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention.
Nautilus, Slip Op. at 1. The Court identified Datamize and Exxon Research & Engineering as
examples of Federal Circuit decisions that were based on the improper, rejected standard for
indefiniteness. Id., Slip Op. at 12-13 n.9.
The Court noted that the definiteness requirement of Section 112, ¶ 2, “entails a ‘delicate
balance’” between competing considerations. Id. at 9 (citation omitted). “On the one hand, the
definiteness requirement must take into account the inherent limitations of language.” Id. On
the other hand:
… a patent must be precise enough to afford clear notice of what is claimed,
thereby “‘appris[ing] the public of what is still open to them.’” Otherwise there
would be “[a] zone of uncertainty which enterprise and experimentation may
enter only at the risk of infringement claims.” And absent a meaningful
definiteness check, we are told, patent applicants face powerful incentives to
inject ambiguity into their claims. Eliminating that temptation is in order, and
“the patent drafter is in the best position to resolve the ambiguity in … patent
claims.”
Id. at 10-11 (citations omitted).
The Court found that the Federal Circuit’s standard had set the bar too high for finding
claims to be invalid for indefiniteness (and too low for finding claims to comply with the
definiteness requirement):
It cannot be sufficient that a court can ascribe some meaning to a patent’s claims;
the definiteness inquiry trains on the understanding of a skilled artisan at the time
of the patent application, not that of a court viewing matters post hoc. To tolerate
imprecision just short of that rendering a claim “insolubly ambiguous” would
diminish the definiteness requirement’s public-notice function and foster the
innovation-discouraging “zone of uncertainty,” against which this Court has
warned.
Id. at 12 (citations omitted).
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III. CLAIM TERMS AFFECTED BY THE NEW LEGAL STANDARD FOR
INDEFINITENESS
Activision’s claim construction briefs (D.I. 63 and 69) demonstrated that four claim terms
discussed below are either invalid for indefiniteness or indefinite if not construed as urged by
Activision. Activision made this showing pursuant to the rejected “insolubly ambiguous” or “not
amenable to construction” standard, which the Supreme Court found set the bar too high for
finding indefiniteness. Because this change in the legal standard makes indefiniteness easier to
prove, all of the facts and arguments set forth in Activision’s claim construction briefs are
equally applicable in showing indefiniteness under the new Nautilus standard – namely, “a patent
is invalid for indefiniteness if its claims, read in light of the specification delineating the patent,
and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention.”
A common trait shared by all of the four claim terms that are the subject of Activision’s
indefiniteness arguments is that the terms do not appear in the shared specification of Worlds’
asserted patents. In the hope of gaining broad coverage for its asserted patent claims, Worlds
injected ambiguity into the claims by choosing to use these terms that are not clearly described in
the specification.
Activision provides the following explanation to assist the Court’s consideration of the
relevant claim terms in light of the new Nautilus standard.
A. “Participant Condition” And “Condition”
The term “participant condition” appears in all asserted claims of the ‘501 patent, and the
similar term “condition” appears in all but one of the asserted claims of the ‘998 patent. The
following representative claim elements illustrate the context in which these terms are used:
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• “wherein the client device does not receive position information of at least some avatars
that fail to satisfy a participant condition imposed on avatars displayable on a client
device display of the client device”; ‘501 patent, claim 1 (emphasis added).
• “wherein the processor does not receive position information associated with at least
some of the remote user avatars in the virtual world, each avatar of the at least some of
the remote user avatars failing to satisfy a condition” ‘998 patent, claim 2 (emphasis
added).
The terms “participant condition” and “condition” do not appear anywhere in the
specification that is shared by Worlds’ patents (D.I. 63 at 21) – rather, they appeared for the first
time in the claims of the ‘501 and ‘998 patents. (Worlds’ assertion (at D.I. 62 at 22) that these
terms are used in the shared specification of the asserted patents is flatly incorrect.)
Accordingly, one must look to Worlds’ patent specification for any disclosure that provides
support for “participant condition” and “condition” using other words. The only potential
support in this regard is a condition that is set by the client – for example, the variable N’. D.I.
63 at 21-24.
If “participant condition” and “condition” are not construed to refer to a condition that is
set by the client (as urged by Activision), these terms are indefinite because, when read in light
of the specification and the prosecution history, they would fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention. Nautilus, Slip Op. at 1.
Worlds’ proposed constructions for these claim terms highlight the concern about indefiniteness.
Worlds’ proposed constructions are expressed in terms of things that “affect[] the status or
display of an avatar.” However, Worlds’ position is circular because, in the context of the
surrounding language of the patent claims, “participant condition” and “condition” determine
whether position information for avatars is received, which affects the status or display of an
avatar. In effect, Worlds contends that things that affect the status or display of an avatar should
be defined as “things that affect the status or display of an avatar.” If these terms are not
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construed as proposed by Activision, their scope would be ambiguous and boundless, creating
the impermissible “zone of uncertainty” that members of the public could enter only at the risk of
infringement about which the Supreme Court warned. Nautilus, Slip Op. at 10-12.
To illustrate this point, “participant condition” and “condition” could potentially be read
to embrace, among other things, arbitrary conditions such as the day of the week on which an
avatar is being used, or the gender, height, weight, age, ethnicity, and/or species of an avatar or
the user of an avatar – despite the fact that none of these potential conditions is discussed in
Worlds’ patent specification or prosecution histories. Without some sort of defining boundary,
“participant condition” and “condition” are totally malleable so that Worlds could mold these
terms to fit any theory of infringement and any accused activities, which is precisely the danger
about which the Supreme Court warned in Nautilus.
The uncertainty created by the terms “participant condition” and “condition” is similar to
the claims at issue in Broussard v. Go-Devil Mfg. Co. of Louisiana, Inc., 3:08-cv-00124, 2014
U.S. Dist. LEXIS 94352 (M.D. La., July 9, 2014). In Broussard, the Court applied the new
standard set forth in Nautilus and found asserted patent claims to be invalid for indefiniteness.
The patents at issue were generally directed to outboard motors for boats, and the asserted claims
included the terms “elongated drive housing” and “drive shaft.” Id. at *130-134. Although the
patent specifications discussed minimum lengths for the “elongated drive housing” and “drive
shaft,” they did not provide any limitation on the maximum length. Id. at *134-136. Because of
this failure, the Court found these terms to be impermissibly ambiguous and to have expanded
“the reach of Mr. Broussard’s Patents well-beyond the scope of his invention.” Id. at *134-138.
As in Broussard, absent a construction that “participant condition” and “condition” refer
to conditions that are set by the client, the claims containing these terms are boundless and
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extend far beyond the scope of the alleged inventions described in the specification of Worlds’
patents.
B. “Third User Perspective”
The term “third user perspective” appears in independent claim 2 and dependent
claims 3-17 of the ‘998 patent as follows (emphasis added):
switch between a rendering on the graphic display that shows the virtual world to
the local user from a third user perspective and a rendering that allows the local
user to view the local user avatar in the virtual world
This claim limitation refers to switching between two renderings: (1) “a rendering on the
graphic display that shows the virtual world to the local user from a third user perspective,” and
(2) “a rendering that allows the local user to view the local user avatar in the virtual world.”
“Third user perspective” is indefinite because, when read in light of the specification and
the prosecution history, it fails to inform, with reasonable certainty, those skilled in the art about
the scope of the invention. Nautilus, Slip Op. at 1; Broussard, D.I. 132 at *130-134. The claim
limitation in which “third user perspective” appears states that (1) the rendering that shows the
virtual world from the “third user perspective” is different from (2) the rendering that allows the
local user to view his or her local user avatar. “Third user perspective” in this context is not just
ambiguous, it is nonsensical. Whatever the “third user perspective” is, the claim limitation
specifies that it is different from a perspective where the local user can view his or her local user
avatar. Such a scenario is not described by the specification or prosecution history of the ‘998
patent, nor is it even possible to conceptualize.
As explained in Activision’s Opening and Responsive Claim Construction briefs (D.I. 63
at 34-36; D.I. 69 at 20-22), the specification does not use or explain the term “third user
perspective,” and the term has no ordinary meaning. In this respect, the recent decision in Light
Transformation Techs. LLC v. Lighting Sci. Group Corp., 2014 U.S. Dist. LEXIS 94090 at *26-
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31 (E.D. Tex. July 10, 2014), is instructive. In that case, in its claim construction opinion and
order, the Court applied the Nautilus standard and concluded that the term “axis of light
direction” was indefinite. According to the Court, there was no ordinary meaning for the term
because “light propagates in three-dimensions on an infinite number of axes.” Id. at *28.
Furthermore, because the specification depicted “numerous exemplary axes of light directions
for any given viewpoint ... a person of ordinary skill in the art would be unable to determine
which one of these exemplary axes is the “axis of light direction.” Id. at *28-29.
Similarly, although the specification here contains some discussion of rendering views
from the perspective of a user (e.g., ‘690 patent at 3:18-25), there is no way for a person of
ordinary skill in the art to determine what perspective constitutes a “third user perspective.” For
this reason, the claims containing this phrase are indefinite.
C. “A Rendering In Which All Of A Perspective View Of A Local User
Avatar Of The Local User Is Displayed”
The term “a rendering in which all of a perspective view of a local user avatar of the local
user is displayed” appears in independent claim 19 of the ‘998 patent as follows (emphasis
added):
switch between a rendering in which all of a perspective view of a local user
avatar of the local user is displayed and a rendering in which less than all of the
perspective view is displayed
The phrase “all of a perspective view” is similar to the phrase “third user perspective” in
that it is not used in the specification and has no ordinary meaning. There is no basis on which a
person of ordinary skill in the art can determine how much of a particular view must be
displayed in order to constitute all of a perspective view, or what constitutes less than all of that
same view, as opposed to an entirely different view. Thus, when read in light of the specification
and the prosecution history, the term fails to inform, with reasonable certainty, those skilled in
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the art about the scope of the invention. Nautilus, Slip Op. at 1; Light Transformation Techs.
LLC, 2014 U.S. Dist. LEXIS 94090 at *28-29.
Worlds tries to ignore this deficiency by arguing that “all of the perspective view” is
simply the entire field of view of the local user. D.I. 62 at 26-29 and D.I. 68 at 23-24. This
argument, however, merely begs the question of what the entire field of view of the user is. As
discussed in Activision’s Opening and Responsive Briefs (D.I. 63 at 36-38; D.I. 69 at 22-23),
replacing “perspective view” with “field of view” is not supported by the specification, nor does
it resolve the ambiguity in this term. The ‘998 patent fails to provide any boundaries or
parameters on what constitutes the entire field of view. The ‘998 patent does not refer to the
number of degrees or radians of the field of view that would constitute “all of the perspective
view,” nor does it specify whether the principle applies to the horizontal field of view, the
vertical field of view, or both. Furthermore, the entire field of view at one moment in time might
be different from the entire field of view at a different time or in a different setting, especially if
the field of view is configurable by the user. Accordingly, the scope of the term “all of the
perspective view” is indeterminable.
D. “Synchronously Disseminating … Positions”
The limitation “synchronously disseminating less than all of the positions of the avatars
not associated with a particular client process to each of the other client processes” appears in
independent claims 9 and 19 and dependent claim 20 of the ‘690 patent. As discussed in
Activision’s claim construction briefs, this limitation is ambiguous because “synchronously” has
multiple different meanings and is not explained or defined in the specification of the ‘690
patent. D.I. 63 at 32-34 and D.I. 69 at 23-24. Furthermore, the specification uses the term
“asynchronously,” but in a way that does not provide any guidance as to the meaning of
“synchronously.” Id.
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For the same underlying reasons, “synchronously disseminating” is indefinite under the
new Nautilus standard because, when read in light of the specification and the prosecution
history, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the
invention. Nautilus, Slip Op. at 1.
IV. CONCLUSION
Activision respectfully requests that the Court issue a claim construction Order in
accordance with the new indefiniteness standard set forth in Nautilus and the positions set forth
in Activision’s claim construction briefs and this supplemental paper.
Dated: August 22, 2014
Respectfully submitted,
By: /s/ Matthew J. Moffa
Matthew J. Moffa (pro hac vice)
BBO#681965
[e-mail]
Jesse J. Jenner (pro hac vice)
[e-mail]
Gene W. Lee (pro hac vice)
[e-mail]
Brian P. Biddinger (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: [phone]
F: [phone]
Samuel L. Brenner (BBO #677812)
[e-mail]
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, Massachusetts 02199-3600
T: [phone]
F: [phone]
Case 1:12-cv-10576-DJC Document 143-1 Filed 08/22/14 Page 10 of 11
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Kathryn N. Hong (pro hac vice)
[e-mail]
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303-2284
T: [phone]
F: [phone]
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING,
INC.
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