Worlds Inc (WDDD)

[Lowhndcpr]

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_________________________________________
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
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Civil Action No. 12-10576-DJC
MEMORANDUM AND ORDER
CASPER, J. June 26, 2015
I. Introduction
Plaintiff Worlds, Inc., (“Worlds”) alleges that Activision Blizzard, Inc., Blizzard
Entertainment, Inc. and Activision Publishing, Inc. (collectively, the “Defendants”) infringe
certain claims of United States Patents Nos. 7,181,690 (“‘690”), 7,493,558 (“‘558”), 7,945,856
(“‘856”), 8,082,501 (“‘501”) and 8,145,998 (“‘998”) (collectively, the “Patents-In-Suit”). The
parties now seek construction of eleven disputed claims terms. After extensive briefing and a
Markman hearing, the Court’s claim construction follows.
II. Patents-in-Suit
This lawsuit involves patents that are directed to a client-server network that enables
large numbers of computer users to interact in a “virtual world” displayed on a computer screen.
D. 62-2, 62-3, 62-4, 62-5, 62-6. Worlds alleges that Defendants infringe the following patent
claims: ‘690 claims 1-20; ‘558 claims 4-9; ‘856 claim 1; ‘501 claims 1-8, 10, 12, 14-16; ‘998
claims 1-3, 7, 8, 11-20. See Worlds, Inc. v. Activision Blizzard, Inc., No. 12-cv-10576-DJC,
2
2014 WL 972135, at *1 (D. Mass. Mar. 13, 2014). The Patents-in-Suit are all part of the same
patent family and share a common specification. D. 62-2, 62-3, 62-4, 62-5, 62-6.1 The ‘690
patent was filed on August 3, 2000 and issued on February 20, 2007. Worlds, Inc., 2014 WL
972135, at *1. The ‘558 patent was filed on November 2, 2006 and issued on February 17, 2009.
Id. The ‘856 patent was filed on January 13, 2009 and issued on May 17, 2011. Id. The ‘501
patent was filed on March 19, 2009 and issued on December 20, 2011. Id. at *2. The ‘998
patent was filed on March 19, 2009 and issued on March 27, 2012. Id.
III. Procedural History
Worlds instituted this action on March 30, 2012, D. 1, and later filed an amended
complaint. D. 32. The Defendants moved for summary judgment on June 18, 2013. D. 83. The
Court subsequently allowed the Defendants’ motion for summary judgment, concluding that the
Patents-in-Suit were not entitled to claim priority to November 13, 1995, the filing date of
Worlds’s Provisional Application. D. 124. Worlds, however, has continued to allege
infringement as from the issuance of the certificates of correction by the PTO on September 24,
2013 for the ‘045 and ‘690 patents (of which the ‘558, ‘856, ‘501 and ‘998 are continuations)
through the lives of the Patents-in-Suit. D. 127. After claim construction briefing, the Court
held a Markman hearing and took the matter under advisement. D. 147.
IV. Standard of Review
The construction of disputed claim terms is a question of law. Markman v. Westview
Instruments, 517 U.S. 370, 372 (1996). For claim construction, a court must construe “the
meaning that the term would have to a person of ordinary skill in the art in question at the time of
. . . the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303,
1 As all of the patents share a common specification, when citing the specification the
Court will cite to the ‘690 patent, D. 62-2.
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1313 (Fed. Cir. 2005). To do so, the Court must look to “the words of the claims themselves,
the remainder of the specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at
1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
(Fed. Cir. 2004)).
A. The Claims
The analysis must always begin with the language of the claim, which “define[s] the
invention to which the patentee is entitled the right to exclude.” Id. at 1312 (citing Innova, 381
F.3d at 1115). “[T]he context in which a term is used in the asserted claim can be highly
instructive.” Id. at 1314. Courts may find that the claim itself provides the means for construing
the term where, for example, the claim term is used consistently throughout the patent. Id. In
that case, “the meaning of a term in one claim is likely the meaning of that same term in
another.” Abbott GmbH & Co., KG v. Centocor Ortho Biotech, Inc., No. 09-11340-FDS, 2011
WL 948403, at *3 (D. Mass. Mar. 15, 2011) (citing Phillips, 415 F.3d at 1314). Furthermore,
“the presence of a dependent claim that adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the independent claim.” Phillips, 415 F.3d at
1315.
B. The Specification
Nevertheless, the claims “do not stand alone” but “are part of a fully integrated written
instrument, consisting principally of a specification,” which “is always highly relevant to the
claim construction analysis.” Id. “Usually, [the specification] is dispositive; it is the single best
guide to the meaning of a disputed term.” Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996)). “[T]he scope and outer boundary of claims is set by the
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patentee’s description of his invention” and, therefore, “claims cannot be of broader scope than
the invention that is set forth in the specification.” On Demand Mach. Corp. v. Ingram Indus.,
Inc., 442 F.3d 1331, 1338-40 (Fed. Cir. 2006); see also Phillips, 415 F.3d at 1315–17, 1323
(noting that “the interpretation to be given a term can only be determined and confirmed with a
full understanding of what the inventors actually invented and intended to envelop with the
claim,” but “expressly reject[ing] the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to that embodiment”).
The Court must “us[e] the specification [only] to interpret the meaning of a claim,” and must be
careful not to “import[ ] limitations from the specification into the claim.” Phillips, 415 F.3d at
1323. This standard may “be a difficult one to apply in practice,” id., but “[t]he construction that
stays true to the claim language and most naturally aligns with the patent’s description of the
invention will be, in the end, the correct construction.” Id. at 1316 (citing Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
C. The Prosecution History
After the claims themselves and the specification, “a court should also consider the
patent’s prosecution history, if it is in evidence.” Id. at 1317 (quoting Markman, 52 F.3d at 980)
(internal quotation mark omitted). “Like the specification, the prosecution history provides
evidence of how the [United States Patent and Trademark Office] and the inventor understood
the patent” and “can often inform the meaning of the claim language by demonstrating how the
inventor understood the invention and whether the inventor limited the invention in the course of
prosecution, making the claim scope narrower than it would otherwise be.” Id. (citing Vitronics,
90 F.3d at 1582–83). The prosecution history should be given less weight than the claims and
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the specification, however, because “it often lacks [] clarity . . . and thus is less useful for claim
construction purposes.” Id.
D. Extrinsic Evidence
Courts may also consider extrinsic sources, which “can help educate the court regarding
the field of the invention and can help the court determine what a person of ordinary skill in the
art would understand claim terms to mean.” Id. at 1319. In particular, “dictionaries and treatises
can be useful in claim construction” as they may assist the court in understanding the underlying
technology and “can assist the court in determining the meaning of particular terminology to
those of skill in the art of the invention.” Id. at 1318. “[W]hile extrinsic evidence can shed
useful light on the relevant art,” however, “it is less significant than the intrinsic record in
determining the legally operative meaning of claim language.” Id. at 1317 (citations and internal
quotation marks omitted). In general, extrinsic evidence is viewed “as less reliable than the
patent and its prosecution history in determining how to read claim terms . . . .” Id. at 1318.
Therefore, extrinsic evidence is “unlikely to result in a reliable interpretation of patent claim
scope unless considered in the context of the intrinsic evidence.” Id. at 1319.
E. Indefiniteness
A patent claim is invalid for indefiniteness if its claims, when read in light of the
specification and the prosecution history, “fail to inform, with reasonable certainty, those skilled
in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., ___ U.S.
___, 134 S. Ct. 2120, 2124 (2014). “The definiteness requirement must take into account the
inherent limitations of language, but at the same time, the patent must be precise enough to
afford clear notice of what is claimed, thereby apprising the public of what is still open to them.”
Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14-CV-2972, 2015 WL 1034275, at *4
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(S.D. Tex. Mar. 10, 2015) (quoting Nautilus, 134 S. Ct. at 2128–29). Patents are presumed to be
valid, 35 U.S.C. § 282, and indefiniteness must be proved by the more demanding standard of
clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P’ship, ___ U.S. ___, 131 S. Ct.
2238, 2242 (2011).
V. Construction of Disputed Claims
The parties dispute the meaning of the following terms and the Court resolves these
disputes as discussed below:
A. “Position of Less than All of the Other Users’ Avatars”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
position of less than all of
the other users’ avatars
No construction necessary positions for up to a set maximum
number of the other users’ avatars,
which is less than the total number
of other users’ avatars
The phrase “position of less than all of the other users’ avatars,” or one of its eleven
variations, appears in all of the asserted claims. D. 71 at 5 n.2. For example, claim 1 of the ‘690
patent provides:
A method for enabling a first user to interact with other users in a virtual space,
wherein the first user and the other users each have an avatar and a client process
associated therewith, and wherein each client process is in communication with a
server process, wherein the method comprises:
(a) receiving a position of less than all of the other users’ avatars from the
server process; and
(b) determining, from the received positions, a set of the other users’
avatars that are to be displayed to the first user,
wherein steps (a) and (b) are performed by the client process associated
with the first user.
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‘690, D. 62-2 at 17. In other words, subpart (a) describes a method of communication where a
client receives a “position of less than all of the other users’ avatars” from the server and subpart
(b) explains that after receiving “less than all of the other users’ avatars,” the client determines
which of the received avatars to display to the user. The Court focuses here on subpart (a),
which the parties agree should be construed in the same manner across all claims. D. 71 at 5 n.2.
To begin, Worlds emphasizes the “heavy presumption that claim terms carry their full
ordinary and customary meaning” that a person of ordinary skill in the art would understand,
Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed. Cir. 2009), and argues that
Defendants are improperly “seek[ing] to import an entirely new limitation – up to a set
maximum number” into the claim language. D. 62 at 16 (internal quotations omitted). Worlds
argues that this limiting language “is untethered to (and in many ways, expressly contrary to)
language from the patents’ claims, specifications, or prosecution histories.” Id. In fact, Worlds
points out that “the specification never uses the phrase ‘up to a set maximum number of other
users’ avatars,’ never says ‘a set maximum number’ is the determining factor for positions the
server sends, and never focuses on a ‘set maximum number’ when describing how the server
sends client positions.” D. 68 at 9 (emphasis in original).
Worlds readily agrees with Defendants’ argument that under a plain reading of the claim
language “if a client receives positions for 999 out of 1000 other users, this would literally
constitute receiving a position of ‘less than all of the other users,’ even though the client has
received positions for the vast majority of other users.” Id. at 11 (quoting D. 63 at 16-17). In
fact, Worlds argues that Defendants’ argument itself shows that the ordinary meaning of “less
than all” is clear. Id. Further, Worlds contends that nothing in its patents or specifications
excludes the system from sending the positions of a “vast majority of the other users” if the
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various factors allow and that these factors also prevent the claims from being too broad because
the claims are “defined (or confined) by proximity, orientation, filtering conditions, computing
resources, user selections, and other filtering factors disclosed in the Worlds Patents and claims.”
Id. at 12.
The Defendants argue, however, that “when the claims are read in light of the invention
described in the specification, it is apparent that ‘less than all’ must refer to the set maximum
number of other users that each client receives from the server.” D. 63 at 17. Noting that claims
“must be read in view of the specification, of which they are a part,” Philips, 415 F.3d at 1315,
Defendants point out that the specification never uses the term “less than all” and directs the
Court to several sections of the specification that they argue support their proposed construction.
D. 63 at 17 (noting, for example, that “[s]erver 61 maintains a variable, N, which sets the
maximum number of other avatars A will see”) (citing ‘690 patent, D. 62-2 at 10, 14-15).
At oral argument, Worlds did not deny that a maximum filter is one way that the server or
the client could filter avatars, but argued that the specification is not restrictive in what sorts of
filtering criteria can be applied. Worlds acknowledged that the invention is designed to
accomplish crowd control, but argued that this crowd control function can be accomplished in a
flexible and variable manner.
After review of the specification, the Court agrees that the specification discloses an
invention to solve the problem of “crowd control.” See, e.g., ‘690, D. 62-2 at 10, 14 (explaining
that “[w]hether another avatar is in range is determined a ‘crowd control’ function” and that
“[c]rowd control is one of the tougher problems solved by the present system”). Contrary to
Defendants arguments, however, the Court does not read the specification to require that this
“crowd control” function must be accomplished by sending the client positions for up to a set
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maximum number of avatars. Indeed, the specification explains that at “a ‘crowd control’
function” is only “needed in some cases.” Id. at 10. For instance, the specification explains that
the server can set the “variable N, which sets the maximum number of other avatars” at a “very
high value.” Id. “If server 61 sets a very high value for N, then the limit set by client 60 is the
only controlling factor,” and “client 60” is not required to limit the view. Id. Therefore, the
specification makes clear that if “client 60 has not limited the view to less than N avatars” and
the server has set the variable N at a “very high value,” the client will in fact receive the position
for a vast majority of the other users (for example, 999 out of 1000). Id.
Moreover, the specification makes clear that the system contemplates proximity filters
that do not require a maximum number limit on the amount of other users that would be
displayed. See, e.g., id. (explaining that the “[r]emote avatar position table 112 contains the
current positions of the ‘in range’ avatars” and that “[w]hether another avatar is in range is
determined [by] a crowd control function” “needed in some cases,” but that “n any case,
remote avatar position table 112 contains an entry for each neighboring avatar . . .”).
Consequently, filters applied to display only “neighboring” avatars, for example, may display
two avatars or twenty – there is no “set maximum.”
Accordingly, based on a review of patent record, the Court concludes that there is nothing
to suggest that the term “position of less than all of the other users’ avatars” was meant to carry
anything but its ordinary meaning and the Court concludes that no construction is necessary.
B. “Determining, from the Received Positions, [a/the] Set of the Other Users’
Avatars that are to be Displayed”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
determining, from the
received positions, [a/the]
No construction necessary selecting [a/the] set consisting of
up to a set maximum number of
10
set of the other users’
avatars that are to be
displayed
the other users’ avatars to be
displayed based on the received
positions
The parties similarly dispute the meaning of the phrase “determining, from the received
positions, [a/the] set of the other users’ avatars that are to be displayed.” D. 62 at 10; D. 63 at
20. This term implicates client-side filtering, as opposed to the server-side filtering discussed
above, and the language, or a variation thereof, appears in a number of claims, including claim 1
of the ‘690 patent, quoted in full above, which provides, in part:
A method for enabling a first user to interact with other users in a virtual space,
wherein the first user and the other users each have an avatar and a client process
associated therewith, and wherein each client process is in communication with a
server process, wherein the method comprises . . .
(b) determining, from the received positions, a set of the other users’
avatars that are to be displayed to the first user . . .
‘690, D. 62-2 at 17. As with the above, the parties agree the phrase should be construed in the
same manner across all claims. D. 71 at 6 n.4.
1. Determining versus Selecting
The language at issue here provides that the client “determin[es]” from the positions that
it has received from the server, which avatars to display. If the client receives twenty positions
from the server, the client will use criteria to decide which of those twenty avatars to display.
The Defendants first argue that the word “determining” should be replaced with “selecting.” D.
63 at 21. In support, Defendants point out that while claim 1 of ‘690 requires “determining, from
the received positions, a set of the other users’ avatars that are to be displayed to the first user,”
dependent claim 2 requires an additional step of “displaying the set of the other users’ avatars
from based on the orientation of the first user’s avatar . . . .” Id. (quoting ‘690, D. 64-1 at 18).
Therefore, the Defendants assert that “determining” and “displaying” must be distinct, and argue
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that while the specification explains that “displaying” requires the “rendering engine” to read
“[1] register 114, [2] remote avatar position table 112, [3] rooms database 70 and [4] avatar
image databases” to “render[] a view of the virtual world from the view point (position and
orientation) of A’s avatar,” the specification discloses only one “determining” function – the
selection of the other user’s avatars to include in “remote avatar position table 112.” Id.
(quoting ‘690, D. 64-1 at 12). To support this reading, Defendants argue that because the
specification states that “[w]here N’ is less than N, the client also uses position data to select N’
avatars from the N avatars provided by the server,” ‘690, D. 62-2 at 10, that “determining”
necessarily means that the client is “selecting a set consisting of up to a set maximum number of
the other users’ avatars to be displayed based on the received positions.” D. 63 at 22.
Worlds argues, however, that the Defendants’ construction would require “selecting” in
every instance, while the specification requires selection to occur only in some instances, D. 62
at 11 (quoting ‘690, D. 62-2 at 10). As noted above, the specification details that the “remote
avatar position table 112” “contains the current positions of the ‘in range’ avatars near A’s
avatar” and “[w]hether another avatar is in range is determined [by] a ‘crowd control’ function,”
but “user A might have a way to filter out avatars on other variables in addition to proximity,
such as user ID.” ‘690, D. 62-2 at 10. In fact, the specification notes that the “remote avatar
position table 112” contains a number of entry data points, including position, orientation and
user identification, which the client uses to determine which avatar images to display. Id. So,
each entry in the “remote avatar position table” provides a variety of data points that may be
used in various combinations to determine which avatars will ultimately be displayed.
Furthermore, while the specification states that the client “also uses position data to select N’
avatars,” that phrasing necessarily implies that the client “also uses” other data to select the
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avatars. If the client only considered one metric, such as position, to determine which avatars
would be displayed, then the Defendants’ construction might be more appropriate. Here,
however, it seems clear that the client considers a number of factors to determine the avatars to
display and therefore is not making necessarily making a simple selection, but is potentially
considering various information points and making a determination. Accordingly, without more,
the Court will not replace the word “determining” with the word “selecting.”
2. Set Maximum Number
As discussed above, the specification provides that “[c]lient 60” maintains a variable N’
which represents the maximum number of avatars the client wants to view. ‘690, D. 62-2 at 10.
The specification allows for the possibility that the number N’ set by the client might be less than
N or greater than N. If N’ is greater than N, the number of avatars – N – will be used. If,
however, the server sets a very high value for N, the limit set by the client, N’, if lower, will be
the main controlling factor on the number of avatars displayed. See id. The question here is
whether N’ is a hard coded number – i.e., a set maximum – or whether N’ is variable. Based
upon a review of the specification, the Court concludes that N’ is intended to be flexible and user
specific.
Indeed, at oral argument the Defendants conceded that N’ is not a hard coded number for
all applications and can be user specific. Defendants further acknowledge that N’ is variable to
the extent that the number can be chosen from application to application. Nevertheless, the
Defendants argue that even though N’ is variable between applications, “for the system to work
N and N’ must at some point be assigned actual values (i.e., definable numbers, such as N = 2).”
D. 69 at 11. In essence, Defendants make a temporal argument – that the variable limit must at
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some point become a specific number and, at that point, the system is necessarily selecting a “set
maximum number” when it determines “a set of the other users’ avatars that are to be displayed.”
As Worlds argues, however, the Defendants’ construction would put the disputed claims
directly at odds with several of the Defendants’ claims, for example, dependent claim 4 of ‘690.
See ‘690, D. 62-2 at 17; see also ‘690 claims 8, 13, 16, D. 62-2 at 17-18. Indeed, “the presence
of a dependent claim that adds a particular limitation gives rise to a presumption that the
limitation in question is not present in the independent claim.” Philips, 415 F.3d. at 1315. The
Defendants contend, however, that claim 4 merely provides a specific way of selecting a set
maximum number that involves comparison (of an actual and maximum number), and that
because claim 1 could be practiced without comparison at all, claim 1 is still broader than claim
4 even incorporating the set maximum number language. D. 69 at 10. Contrary to the
Defendants’ arguments that claim 4 “is in complete alignment” with Defendants’ construction,
however, the Court reads claim 4 as plainly providing for a narrower method of claim 1 that
explicitly requires the client to determine a maximum number limit. Claim differentiation must
apply where, as here, “there is a dispute over whether a limitation found in a dependent claim
should be read into an independent claim, and that limitation is the only meaningful difference
between the two claims.” Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233
(Fed. Cir. 2001).
Finally, the Defendants argue that its proposed construction is supported by the
prosecution history. D. 69 at 9. They contend that during the prosecution of the ‘045 patent,
unasserted here, “the applicants explained that ‘determining’ required limiting the number of
avatars displayed.” Id.; see also, D. 64-7 at 6 (providing that “claim 8 includes a ‘means for
determining from said list of avatars a set of avatars to be displayed at each client process,
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wherein said means for determining is located at each client process.’ Thus, each target client
limits the number [of] avatars displayed at that target client based on, for example, target client
processing capacity”). The prosecution history cited by the Defendants does not use the “set
maximum number” language, however, and does not provide that the client is limiting the
number of avatars displayed to a “set maximum number.” The prosecution history also does not
clearly disavow an invention that omits the “set maximum” limit. See GE Lighting Solutions,
LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (noting that “[t]he standards for
finding lexicography and disavowal are exacting” and “[t]o act as its own lexicographer, a
patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an
intent to define the term,’” while “disavowal requires that ‘the specification [or prosecution
history] make[] clear that the invention does not include a particular feature’” (citations
omitted)).
Accordingly, the Court concludes that there is nothing in the patent record to suggest that
the phrase “determining, from the received positions, [a/the] set of the other users’ avatars that
are to be displayed” was meant to carry anything but its ordinary meaning and the Court
concludes that no construction is necessary.
C. “A Participant Condition” / “A Condition”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
A participant condition No construction necessary
Or, alternatively,
A condition imposed on an
avatar, its controlling user, or
its associated client device that
affects the status or display of
an avatar
A condition set by the client
Or, alternatively,
Indefinite under 35 U.S.C. § 112,
¶ 2
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A condition No construction necessary
Or, alternatively,
An expression in a software
program that affects the status
or display of an avatar
A condition set by the client
Or, alternatively,
Indefinite under 35 U.S.C. § 112,
¶ 2
The term “participant condition” appears in all of the claims of the ‘501 patent. For
example, claim 1 of the ‘501 patent provides:
A method for enabling a first user to interact with other users in a virtual space,
each user of the first user and the other users being associated with a three
dimensional avatar representing said each user in the virtual space, the method
comprising the steps of:
customizing, using a processor of a client device, an avatar in response to
input by the first user;
receiving, by the client device, position information associated with fewer
than all of the other user avatars in an interaction room of the virtual
space, from a server process, 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, D. 62-5 at 22. The term “condition” appears in several of the claims of the ‘998 patent.
For example, claim 1 of the ‘998 patent provides, in part:
A method for displaying interactions of a local user avatar of a local user and a
plurality of remote user avatars of remote users interacting in a virtual
environment, the method comprising: receiving, at a client processor associated
with the local user, positions associated with less than all of the remote user
avatars in one or more interaction rooms of the virtual environment, wherein the
client processor does not receive position information associated with at least
some of the remote user avatars in the one or more rooms of the virtual
environment, each avatar of the at least some of the remote user avatars failing to
satisfy a condition imposed on displaying remote avatars to the local user;
‘998, D. 62-6 at 22. The terms “participant condition” and “condition” do not appear in the
specification of the Patents-in-Suit. Nor do these terms appear in any of the claims of the earlier
filed patents.
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In brief, the parties’ dispute centers on whether “a condition” may be set by the server.
Worlds does not dispute that a condition may be set by the client, but argues that the condition
may be set by the server as well. D. 68 at 17. Worlds contends that, contrary to the Defendants’
proposed construction, nothing in the patents and specification suggests “that the client must
‘set’ anything, or that any setting must be made ‘by the client,’” D. 62 at 26, or that the patentees
sought to give “condition” or “participant condition” any special meaning inconsistent with the
ordinary understanding of those terms. Id. at 25. Worlds further argues that its proposed
constructions reflect the “dictionary-based meanings” of the words and captures the words “plain
and ordinary meanings.” Id. at 25; see also D. 146 at 5 (noting that “[a]ccording to the IBM
Dictionary of Computing, a ‘condition’ is ‘[a]n expression in a program or procedure that can be
evaluated as either true or false when the program or procedure is running’” (citation omitted)).
In contrast, the Defendants argue that nothing in the specification suggests that the condition can
be set by the server. D. 69 at 20-22.
It is not disputed that the “condition” limitations at issue here concern “what information
the server will send to each client.” D. 63 at 25. The Defendants further concede that
“[a]lthough the specification gives only a few examples of conditions that may be imposed on
avatars displayable on a client device display, [they] [do] not seek to limit the types of conditions
that may be used.” D. 69 at 22. Indeed, the specification clearly contemplates that the client
“‘might have a way to filter out avatars on other variables in addition to proximity.’” Id.
(emphasis in original) (quoting ‘690, D. 62-2 at 10) (explaining that “user A might have a way to
filter out avatars on other variables in addition to proximity, such as user ID”). Instead, the
Defendants argue that the context of the claims and the specification indicates that the conditions
must be set by the client. D. 63 at 25-27. For example, the Defendants point out that it is “the
17
client” that “may set a value of N’, which is less than N, and send that value to the server” and
that it is “the client” that “may send specific user IDs to the server to identify specific avatars
that the client wants to block (so that the client does not receive any position information for
such avatars) because those avatars are ‘unfriendly.’” Id. at 27 (citations omitted).
All of the claims of the Patents-in-Suit require that the client receive position information
of “fewer than all” or “less than all” of the other users avatars. Specifically, the claims of the
‘501 and ‘998 patents require that the client device receive “position information associated with
fewer than all of the other user avatars.” See ‘501, D. 64-4 at 23. While the claims of the ‘690,
‘558 and ‘856 patents require the client to receive positions for “less than all” of the other users.
See ‘690, D. 62-2 at 17. The claims of the ‘501 and ‘998 patents, at issue here, then further
require that “at least some” of the avatars for which the client does not receive position
information “fail to satisfy” “a condition” or “a participant condition.” See ‘501, D. 64-4 at 23.
Claim 1 of ‘501 details, for example, that “the client device” receives “position information”
from the “server process” and that “the client device does not receive position information of at
least some avatars that fail to satisfy a ‘participant condition.’” Id. Claim 1 does not explicitly
indicate whether “the server process” or the “client device” imposes the condition, id., and the
specification does suggest that the server has the ability to filter avatars in order to determine the
other avatars a user will see. See, e.g., ‘690, D. 62-2 at 10 (explaining the “‘crowd control’
function”). Nevertheless, read in context, the “at least some” language appears to represent an
additional limitation – beyond the selection of the N avatars by the server – to determine whether
or not avatar position information will be sent to the client.
The Court agrees with the Defendants, therefore, that the “conditions” constitute
additional limits and that in the ‘501 and ‘998 patents: “(1) the client receives position
18
information for less than all of the other users’ avatars, and (2) at least some, but not necessarily
all, of the avatars for which the client does not receive position information are ones that failed to
satisfy a ‘participant condition’ or ‘condition.’” D. 63 at 25-26. The “conditions” contemplated
in the ‘501 and ‘998 patents then must be distinct from the server conditions described in the
specification and are properly construed to be consistent with the user or client conditions
contemplated by the specification, including user ID and “other variables in addition to
proximity.” ‘690, D. 62-2 at 10. And while the specification explicitly considers that there may
be a wide range of variables that a client might set, nothing in the patent record suggests that the
server will set these additional conditions.
Accordingly, the Court construes the terms “participant condition” and “condition” to
mean “a condition set by the client.”2
D. “Programmed to Limit the Number of Remote User Avatars Shown on the
Graphic Display”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
programmed to limit the
number of remote user
avatars shown on the
graphic display
No construction necessary programmed to restrict the number
of remote user avatars shown on
the graphic display to a maximum
number of avatars allowed
This term appears in claims 11-15 of the ‘998 patent. ‘998, D. 64-5 at 23. These claims
address the ways in which the system limits the avatars displayed:
11. The system according to claim 2, wherein the first processor is further
programmed to limit the number of remote user avatars shown on the graphic
2 Because the Court adopts Defendants’ proposed construction, the Court need not
address the Defendants’ separate argument that the terms are indefinite under 35 U.S.C. § 112,
¶ 2. Energizer Holdings v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (noting
that “[a] claim that is amenable to construction is not invalid on the ground of indefiniteness”).
19
display based on the proximity of the remote user avatars relative to the local user
avatar.
12. The system according to claim 2, wherein the first processor is further
programmed to limit the number of remote user avatars shown on the graphic
display based on the orientation of the remote user avatars relative to the local
user avatar.
13. The system according to claim 2, wherein the first processor is further
programmed to limit the number of remote user avatars shown on the graphic
display based on computing resources available to the local user graphic display.
14. The system according to claim 2, wherein the first processor is further
programmed to limit the number of remote user avatars shown on the graphic
display based on a selection made by the local user.
15. The system according to claim 14, wherein the selection is independent of the
relative position of the local avatar and the remote user avatars not shown on the
graphic display.
Id.
Here, the Defendants argue that the phrase “limit the number,” which is contained in the
disputed phrase, “should be construed to mean ‘restrict the number . . . to a maximum number . .
. allowed.’” D. 69 at 17.3 The Defendants contend that the ordinary meaning of “limit the
number” necessarily “imposes a maximum number limit” in to the claim. Id. Worlds argues,
however, that claims 11-15 of ‘998 are particularly “clear, precise, and easily understood” and
that “[e]verything in these claims suggests that the ‘limit’ applies in the express manner
disclosed.” D. 68 at 20.
3 To the extent that the Defendants also argue that the word “limit” is consistent with the
word “restrict,” D. 63 at 30-31, the Court agrees with Worlds that “[s]wapping one common,
ordinary word for its synonym adds no clarity to the meaning” and provides no basis for the
Defendants proposed substitution. D. 62 at 20 (noting that the word “restrict” does not appear in
the ‘998 patent at all while the word “limit” is used consistently throughout all of the Patents-In-
Suit). Regardless, in the Defendants’ Reply Claim Construction Brief, Defendants concede that
they do not actually “propose that ‘limit’ means ‘restrict,’” rather Defendants propose only “that
‘limit the number’ should be construed to mean ‘restrict . . . to the maximum number . . .
allowed.’” D. 69 at 17 n.6. Therefore, the Court will focus on this argument.
20
The independent claim 2 details “[a] system for displaying interactions in a virtual world
among a local user avatar of a local user and a plurality of remote user avatars . . . .” ‘998, D.
64-5 at 23. Based on a plain reading, then, it is clear that the system will display the plurality of
remote user avatars. Each of the dependent claims, at issue here, then explicitly set forth precise
limiting criteria. The claims unambiguously provide that the limits are based on “‘the proximity
of the remote user avatars relative to the local user avatar’ (claim 11); ‘the orientation of the
remote user avatars relative to the local user avatar’ (claim 12); ‘computing resources available
to the local user graphic display’ (claim 13); ‘a selection made by the local user’ (claim 14); and
‘a selection made by the local user,’ wherein ‘the selection is independent of the relative position
of the local avatar and the remote user avatars not shown on the graphic displays’ (claim 15).”
D. 62 at 20-21 (quoting ‘998, D. 62-6 at 23). Nothing in these claims suggest that an additional
“maximum number” limit is necessary or implied. If, as in claim 12, the first processor limits the
number of avatars shown based on the “orientation of the remote user avatars relative to the local
user avatar” the only articulated limit to the system displaying a plurality of the remote user
avatars – no matter that number – is their orientation relative to the local use avatar. Nowhere
does the Court detect an additional “maximum number” limit.
Accordingly, the Court concludes that the phrase “programmed to limit the number of
remote user avatars shown on the graphic display” is unambiguous and that no construction is
necessary.
E. “Avatar”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
avatar graphical representation of a
user in three-dimensional form
a graphical representation of a
user
21
The parties agree that the term “avatar” should be construed, in part, as “a graphical
representation of the user.” D. 62 at 27; D. 63 at 32. The parties dispute, however, whether the
term avatar is properly construed as “a graphical representation of the user in three-dimensional
form,” or whether the “graphical form” could be represented in two-dimensions. D. 62 at 27; D.
63 at 32. Review of the specification suggests, however, that the patentees sought to limit their
patent to three-dimensional virtual worlds and, correspondingly, three-dimensional avatars. For
example, the first sentences of the “Abstract” and the “Summary of the Invention” for each of
the Patents-In-Suit provide that “[t]he present invention provides a highly scalable architecture
for a three-dimensional graphical, multi-user, interactive virtual world system” and in the
“preferred embodiment” users would “interact in the three-dimensional, computer-generated
graphical space . . . .” ‘690, D. 62-2 at 1, 8. The specification also explains that the avatar’s
orientation “is needed for rendering because the avatar images are three-dimensional and look
different (in most cases) from different angles.” Id. at 10. Further, the specification provides an
illustration of a client screen display, describing the illustrative avatar as “a three dimensional
figure chosen by a user to represent the user in the virtual world.” Id. at 9. Moreover, as both
parties acknowledged at oral argument, the “crowd control” issue at the heart of this patent is an
issue implicated by the more complex three-dimensional system, as opposed to the twodimensional
systems that did not require as much strain on computing resources.
In response, the Defendants make three main arguments for their proposed construction.
First, the Defendants note that the ordinary meaning of avatar to a person of ordinary skill in the
art is not limited to a graphical representation in three-dimensional form. D. 63 at 32 (citing
Webster’s New World Dictionary of Computing Terms (6th ed. 1997), D. 64-12 at 4 (defining
avatar as “[a] graphical representation of a person that appears on the computer screen in an
22
interactive game or communication system”); Microsoft Computer Dictionary (4th ed. 1999), D.
64-13 at 4 (defining avatar, in part, as “a graphical representation of a user” that is typically “a
generic picture or animation of a human of either gender, a photograph or caricature of the user,
a picture or animation of an animal, or an object chosen by the user to depict his or her virtualreality
‘identity’”)). As the Defendants acknowledge, however, a person of ordinary skill in the
art is not meant to determine the ordinary meaning of a disputed term in a vacuum. See D. 63 at
12. Rather, “[t]he person of ordinary skill in the art is deemed to read the claim term not only in
the context of the particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification.” Phillips, 415 F.3d at 1313. The proper inquiry then is
to determine the meaning of avatar “to the ordinary artisan after reading the patent,” id. at 1321,
and the Court will focus its analysis on Defendants’ contextual arguments.
Second, the Defendants point out that particular claims of the ‘501 and ‘998 patents
“expressly require that the avatars are three-dimensional.” D. 63 at 32 (internal quotation mark
omitted). For example, claim 1 of ‘501 reads: “A method for enabling a first user to interact
with other users in a virtual space, each user of the first user and the other users being associated
with a three dimensional avatar representing said each user in the virtual space . . . .” D. 62-5 at
22. While claim 1 of ‘690 provides, for example: “A method for enabling a first user to interact
with other users in a virtual space, wherein the first user and the other users each have an avatar .
. . .” D. 62-2 at 17. The Defendants argue that “construing the term avatar to require a threedimensional
form” across all the Patents-In-Suit “would improperly render this language in the
claims of the ‘501 and ‘998 patents superfluous.” D. 63 at 32-33 (citing Bicon, Inc. v. The
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); Merck & Co. v. Teva Pharm. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005)). Construing the term “avatar” to include two-dimensional
23
graphical representations, however, would improperly read the three-dimensional limiting
language out of the patent record. Claims “must be read in view of the specification, of which
they are a part.” Phillips, 415 F.3d at 1315. And while the Court must be careful to distinguish
“between using the specification to interpret the meaning of a claim and importing limitations
from the specification into the claim,” id. at 1323, “where the specification makes clear at
various points that the claimed invention is narrower than the claim language might imply, it is
entirely permissible and proper to limit the claims.” Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d
1361, 1370 (Fed. Cir. 2003) (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001)).
Here, the specification consistently refers to a three-dimensional virtual world, ‘690, D.
62-2 at 1, 8, where the users choose a “three-dimensional figure” as their “avatar.” Id. at 9. The
“construction that stays true to the claim language and most naturally aligns with the patent’s
description,” Phillips, 415 F.3d at 1316, is, therefore, “a graphical representation of the user in
three-dimensional form.” See SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1285
(Fed. Cir. 2005) (noting that “[a] claim construction that excludes a preferred embodiment,
moreover, “‘is rarely, if ever, correct’”) (citing Vitronics, 90 F.3d at 1583). Another construction
would improperly divorce the claim “from the context of the written description.” Cf. Nystrom
v. Trex Co. Inc., 424 F.3d 1136, 1144-45 (Fed. Cir. 2005); see also Curtiss-Wright Flow Control
Corp. v. Velan, Inc., 438 F.3d 1374 (Fed. Cir. 2006) (rejecting district court’s broad construction
of the term “adjustable” because it placed too much emphasis on the ordinary meaning without
adequate grounding within the context of the specification).
Third, and finally, the Defendants argue that “the term ‘three-dimensional’ is used in the
specification to refer to an avatar that is actually comprised of multiple two-dimensional panels,”
24
which the Defendants contend shows that – if based solely on the specification – a proper
construction of the term avatar “would be a graphical representation made from two-dimensional
panels that looks different from different angles.”4 D. 63 at 33 (quoting ‘690, D. 62-2 at 10
(explaining that “[t]he orientation is needed for rendering because the avatar images are threedimensional
and look different (in most cases) from different angles. . . . n a simple
embodiment, each avatar image comprises M panels (where M is greater than two with eight
being a suitable number) and the i-th panel is the view of the avatar at an angle of 360*i/M
degrees”)); see also ‘690, D. 62-2 at 11 (explaining that “[t]he avatars in fixed avatar image
database or custom avatar images database contain entries which are used to render the[] avatars.
A typical entry in the database comprises N two-dimensional panels, where the i-th panel is the
view of the avatar from an angle of 360*i/N degrees”). The specification language relied on by
the Defendants explicitly states, however, that even in a “simple embodiment” “the avatar
images are three-dimensional” and explains that when the “three-dimensional” “avatar images”
are rendered the “simple embodiment” comprises at least three panels “with eight being a
suitable number.” ‘690, D. 62-2 at 10. The specification makes clear then that even a simple
embodiment requires at least three panels. The specification also explains that the avatar
database contains entries that are used to render the avatars and that some of these entries are
comprised of “N two-dimensional panels.” Id. at 11. The specification only states, however,
that these entries are used to render the avatars, the avatars themselves are consistently described
as “three-dimensional” images. See id.
Accordingly, the Court construes the term “avatar” to mean “a graphical representation of
the user in three-dimensional form.”
4 Defendants nevertheless argue that when avatar is construed in accordance with its
ordinary meaning it means “a graphical representation of a user.” Id. at 33-34.
25
F. “Client Process” / “Server Process”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
client process a program executed, stored, or
accessible on a user’s
computer to provide access to
a server
a program being executed by a
user’s computer that receives
services from a server
server process a program executed, stored, or
accessible by one or more
computers that provide one or
more services to users of
computers across a network
a program being executed by a
computer that provides services to
a client
The dispute regarding the terms “client process” and “server process” concerns the proper
construction of the word “process.” The question is whether a “client process” or a “server
process” refers to: (1) a program being executed; or (2) a program executed, stored, or
accessible. In other words, the question is whether a program must be in the state of being
executed to be considered a “process.”
Worlds argues that “to qualify as a ‘client process’ or a ‘server process,’ a program . . .
must only be capable of being executed (e.g., ‘executed, stored, or accessible,’)” and contends
that its construction is consistent with the ordinary meaning of “process.” D. 62 at 22 (emphasis
in original); see D. 68 at 24 (citing The IEEE Standard Dictionary of Electrical and Electronics
Terms (6th ed. 1996), D. 68-2 at 3 (defining “process” to mean “[a]n executable unit managed by
an operating system scheduler”)). The Defendants counter though that under its ordinary
meaning “‘process’ refers to a software program that is being executed on a processor” and that
Worlds’s construction improperly equates “process” with “software.” D. 63 at 34; see also D.
64-14 at 4, The Dictionary of Computer Graphics and Virtual Reality (2d ed. 1995) (defining
“process” as “a program while being executed, usually as one of several in a multiprogramming
environment”).
26
In support of their proposed constructions, the parties rely upon the same language from
the specification. D. 62 at 22-23; D. 63 at 34. The relevant section reads:
A person of ordinary skill in the art of computer programming will also
understand that where a process is described with reference to a client or server,
that process could be a program executed by a CPU in that client or server system
and the program could be stored in a permanent memory, such as a hard drive or
read-only memory (ROM), or in temporary memory, such as random access
memory (RAM). A person of ordinary skill in the art of computer programming
will also understand how to store, modify and access data structures which are
shown to be accessible by a client or server.
‘690, D. 64-1 at 10. Worlds argues that this language should be read as defining “client process”
and “server process” broadly and reads the passage as indicating that the patentees viewed the
“client process” and “server process” as flexible – as “a program executed by a CPU” or as a
program “stored in a permanent memory.” D. 62 at 22-23. The Court agrees with the
Defendants, however, that, under a plain reading, the description of how “the program could be
stored” is only meant to refer to the program just referenced. ‘690, D. 64-1 at 10; D. 69 at 18-19.
Therefore, the above section only confirms that “process could be a program executed by a
CPU” and that the “program executed by a CPU” could be stored in “permanent memory” or in
“temporary memory.” ‘690, D. 64-1 at 10. Nevertheless, the Court does not read the cited
passage as dispositive to the meaning of the term since it provides only that a process “could be a
program executed by a CPU.” Id. The passage is, therefore, only illustrative of one example of
what a process “could be,” but does not necessarily disallow that a process could also be stored
or accessible. The Court, therefore, examined other claims and the rest of the specification for
guidance.
On this point, the Defendants argue that the Patents-In-Suit use the words “process,”
“processor,” “software program” and “program stored” in distinct ways, D. 63 at 35, and that the
use of the word “process” in the claims makes clear that a program that stored is different than a
27
“process.” D. 69 at 19. Specifically, the Defendants point to claim 4 of ‘558, which reads, in
part:
A machine-readable medium having a program stored in the medium, the program
enabling a plurality of users to interact in a virtual space, wherein each user of the
plurality of users is associated with a different client process on a different
computer, wherein each client process has an avatar associated with said each
client process, and wherein said each client process is configured for
communication with a server process, wherein the program comprises instructions
for: (a) monitoring, by said each client process, a position of the avatar associated
with said each client process; (b) transmitting, by said client process to the server
process, the position of the avatar associated with said each client process;
‘558, D. 64-2 at 19. The Defendants argue that claim 4 of ‘558 makes clear that: (1) “a
program” is “stored” in the medium and (2) this stored program comprises the instructions for
the “client process” to carry out (e.g.., “monitoring,” “transmitting,” etc.). D. 69 at 19.
Therefore, the Defendants argue that “[t]he program is what is stored in memory” and “[t]he
process is the active execution of the program by a computer.” Id. This argument is persuasive
in so far as the text cited above does refer to a client process in its active state and to a stored
program. Like the first passage cited, however, it is not clear that the above section requires the
client process to be an active program at all times.
While the word “process” is often used in an active context throughout the specification,
see, e.g., ‘690, D. 62-2 at 8 (explaining that “where many client machines or processes are
communicating with each other in real-time through the server, several problems arise” and
noting that “n order that the view can be updated to reflect the motion of the remote user’s
avatars, motion information is transmitted to a central server process which provides positions
updates to client processes for neighbors of the user at that client process. The client process also
uses an environment database to determine which background objects to render as well as to
28
limit the movement of the user’s avatar”), the patent never explicitly disallows the alternate
“capable of being executed” construction of “client process” and “server process.”
In contrast, the “Abstract” and the “Summary of the Invention” provides that “n a
preferred embodiment a plurality of users interact in the three-dimensional, computer-generated
graphical space where each user executes a client process to view a virtual world from the
perspective of that user.” See, e.g., ‘690, D. 62-2 at 1, 8. The Court reads this language as
allowing for the possibility of a non-executing “client process.” If the “client process” was only
“a program being executed” it would be circular to say that the user “executes” a “program being
executed by the user.” This language makes eminently more sense if the user executes the
program that is “capable of being executed” and is otherwise “stored, or accessible on the user’s
computer.”
Accordingly, the Court construes the term “client process” to mean “a program executed,
stored, or accessible on a user’s computer to provide access to a server” and construes the term
“server process” to mean “a program executed, stored, or accessible by one or more computers
that provide one or more services to users of computers across a network.”
G. “Synchronously Disseminating . . . Positions”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
synchronously
disseminating . . .
positions
No construction necessary
Or, alternatively,
Transmitting in a manner that
is synchronized or coordinated
Indefinite under 35 U.S.C. § 112,
¶ 2
29
Claims 9 and 18 of the ‘690 patent contain the term “synchronously disseminating.” For
example, claim 9 provides:
A method for operating a server to enable a plurality of users to interact in a
virtual space, wherein each user has a computer associated therewith, wherein
each computer has a client process associated therewith, wherein each client
process has an avatar associated therewith, wherein the server has a process
associated therewith, and wherein each client process is in communication with
the server process, comprising:
(a) receiving, from each client process by the server process, data
indicating a position of the avatar associated with the client process; and
(b) 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 so that the particular client process can determine from
the positions a set of avatars that are to be displayed.
D. 62-2 at 17.
In Nautilus, the Supreme Court recently clarified “the proper reading of the [Patent Act’s]
clarity and precision demand.”5 Nautilus, 134 S. Ct. at 2124. Overturning the previous
“insolubly ambiguous” standard, the Supreme Court held “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.” Id. “The definiteness requirement, so understood, mandates clarity,
while recognizing that absolute precision is unattainable.” Id. at 2129. “The Supreme Court
explained that a patent does not satisfy the definiteness requirement of § 112 merely because ‘a
court can ascribe some meaning to a patent’s claims.’” Interval Licensing LLC v. AOL, Inc.,
766 F.3d 1364, 1371 (Fed. Cir. 2014) (quoting Nautilus, 134 S. Ct. at 2130). Rather, “[t]he
5 The parties requested, and were granted, the opportunity to submit supplemental briefs
addressing the impact of Nautilus in this case.
30
claims, when read in light of the specification and the prosecution history, must provide
objective boundaries for those of skill in the art.” Id.
Here, the Defendants argue that the term “synchronously disseminating” does not have
any “ordinary meaning” and, in fact, may have different meanings depending on its context. D.
63 at 36. They cite to a variety of dictionaries to show that “‘synchronously disseminating’
could mean disseminating positions (1) at the same time, (2) at equal time intervals, (3) with a
predictable time relationship, (4) upon the occurrence of a specific event, (5) only after a specific
activity is completed, (6) at the same rate while maintaining a desired phase relationship, or (7)
one exchange at a time.” D. 69 at 28; see also D. 63 at 36 (quoting Webster’s II New College
Dictionary, D. 64-9 at 5 (defining “synchronous” to mean both “[h]appening at the same time”
and “[h]aving identical periods”)). The Defendants acknowledge that ambiguity of the term does
not necessarily render the term indefinite as long as the specification clarifies the meaning of the
term. D. 63 at 37 (noting that “[a]s a general matter, a claim that contains an ambiguous term is
not indefinite when the meaning of the term may be readily ascertained from the description in
the specification” (citing Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369
(Fed. Cir. 2006)). They argue, however, that the specification does not provide clarity here. Id.
In response, Worlds argues that its construction reflects the ordinary, dictionary-based
meaning of the term that a person of ordinary skill in the art would understand. D. 68 at 25-26;
see D. 62-11 at 2, IBM Dictionary of Computing (defining “synchronous” as “[p]ertaining to two
or more processes that depend upon the occurrence of specific events such as common timing
signals”); D. 62-12 at 2, Computer Dictionary (defining “synchronous operation” as “[g]enerally,
any operation that proceeds under control of a clock or timing mechanism”); D. 62-13 at 2, The
IEEE Standard Dictionary (defining “synchronous” as “[a] mode of transmission in which the
31
sending and receiving terminal equipment are operating continuously at the same rate and are
maintained in a desired phase relationship by an appropriate means”). Worlds also contends that
the patent “more than sufficiently discloses the scope and meaning of the term” so that a person
of ordinary skill in the art would understand the term to be consistent with Worlds proposed
construction. D. 62 at 34. For instance, Worlds notes that the specification “details the
mechanics of data transmissions across multiple client and server machines,” providing that:
where a client-server system is used for real-time exchange of information, such
as a distributed virtual reality network where users at client machines visually and
aurally interact with other users at other client machines, communication is much
more difficult, especially where the information is high-bandwidth data such as
audio streams, graphic images and image streams. One application of such a
client-server system is for game playing, where the positions and actions of each
user need to be communicated between all the players to inform each client of the
state changes (position, actions, etc.) which occurred at the other clients. The
server might maintain global state information and serve as a data server for the
clients as they request visual, program and other data as the game progresses.
D. 62 at 34-35 (emphases omitted) (quoting ‘690, D. 62-2 at 8); see also ‘690, D. 62-2 at 9
(addressing how the system works to communicate position information). Worlds argues that
this language from the specification provides the appropriate context to conclude that “[a]
method for operating a server to enable a plurality of users to interact in a virtual space,” ‘690,
D. 62-2 at 17, must occur in a “coordinated and synchronized” manner. See D. 62 at 34-35; D.
68 at 25. In contrast, the Defendants rely upon the specification’s use of the term
“asynchronously” to argue that the meaning of the claim term is ambiguous. The specification
provides that:
In rendering a view, client 60 requests the locations, orientations and avatar image
pointers of neighboring remote avatars from server 61 and the server’s responses
are stored in remote avatar position table 112. Server 61 might also respond with
entries for short object ID lookup table 110. Alternatively, the updates can be
done asynchronously, with server 61 sending periodic updates in response to a
client request or automatically without request.
32
D. 62-2 at 11. The Defendants assert that this disclosure “is nonsensical” because “both
descriptions refer to updates made by a server in response to a client request” and, therefore, the
sections “shed[] no light on the meaning of ‘synchronously disseminating.’” D. 63 at 37.
After a careful review of the specification, the Court agrees with the Defendants that the
specification does not sufficiently clarify the meaning of the term. For synchronization to have
any reasonably certain meaning, see Nautilus, 134 S. Ct. at 2124, at the very least, it must be
apparent what is being synchronized to (e.g., timing signals or a clock). Here, it is unclear how
the data transmission is being synchronized and with what it is being coordinated. The sections
of the specification cited by Worlds indicate only the importance of the server and the client
communicating with each other, but do not assist in determining how this communication might
be “coordinated” and to what it would be “synchronized.” Moreover, the passage highlighted by
the Defendants indicates that asynchronous communications happen periodically, but provides
no guidance in determining how synchronous communications might happen.
Accordingly, the Courts concludes by clear and convincing evidence that the term
“synchronously disseminating . . . positions” is indefinite under 35 U.S.C. § 112, ¶ 2.
H. “Third User Perspective”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
third user perspective View from the perspective of
the user
Indefinite under 35 U.S.C. § 112,
¶ 2
The term “third user perspective” appears in claim 2 of the ‘998 patent, which provides,
in part:
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
33
‘998, D. 62-6 at 22. It is not disputed that the claim describes a switch between two renderings:
(1) “a rendering . . . 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.” Id. The parties
also seem to agree that the latter rendering allows the user to view her own avatar. See D. 63 at
40 (noting that “it would be nonsensical to switch from an ‘out of body’ view to a view that
allows the local user to see his avatar”); D. 68 at 27 (noting that “the specification makes clear
that . . . an ‘out of body’ viewing corresponds to a view or ‘rendering that allows the local user to
view the local user avatar in the virtual world’”) (citations omitted). The Defendants argue,
however, that the term “third user perspective” is indefinite under 35 U.S.C. § 112, ¶ 2 because
“there is no way for a person of ordinary skill in the art to determine what perspective constitutes
a ‘third user perspective.’” D. 145 at 8.
In response, Worlds asserts that a person of ordinary skill in the art would understand the
term to mean “a view from the perspective of the user.” D. 146 at 7. And the specification does
explain that the preferred embodiment allows the user to view the virtual world “from the
perspective of that user.” ‘690, D. 62-2 at 8. For instance, the specification provides that:
In a preferred embodiment a plurality of users interact in the three-dimensional,
computer-generated graphical space where each user executes a client process to
view a virtual world from the perspective of that user.
Id. Worlds also argues that the term “third user perspective” is clearly shown in Figure 1 of the
specification:
34
D. 62 at 29; see also ‘690, D. 62-2 at 3. The specification explains that:
FIG. 1 is an illustration of a client screen display 10 seen by one user in the chat
system. Screen display 10 is shown with several stationary objects (wall, floor,
ceiling and clickable object 13) and two ‘avatars’ 18. Each avatar 18 is a three
dimensional figure chosen by a user to represent the user in the virtual world.
Each avatar 18 optionally includes a label chosen by the user. In this example,
two users are shown: ‘Paula’ and ‘Ken’, who have chosen the ‘robot’ avatar and
the penguin avatar, respectively. Each user interacts with a client machine (not
shown) which produces a display similar to screen display 10, but from the
perspective of the avatar for that client/user. Screen display 10 is the view from
the perspective of a third user, D, whose avatar is not shown since D’s avatar is
not within D’s own view. Typically, a user cannot see his or her own avatar
unless the chat system allows ‘[out] of body’ viewing or the avatar's image is
reflected in a mirrored object in the virtual world.
‘690, D. 62-2 at 9. Worlds argues that this explanation “makes abundantly clear the term ‘third
user perspective’ means a ‘view from the perspective of the user’” or what is commonly
35
understood to be a first-person view. D. 68 at 26. To be sure, the view in Figure 1, shown
above, is described as “the perspective of the third user.” It is not clear to the Court, however,
that the above passage actually defines “third user.” Rather, as the Defendants point out, the
description appears to refer “to a ‘third user’ simply because it has already referred to a first and
second user (i.e., the two users shown in the display).” D. 69 at 25. If the figure had shown four
users, it seems entirely possible that the specification would have said that “[s]creen display 10 is
the view from the perspective of a [fifth] user, D, whose avatar is not shown since D’s avatar is
not within D’s own view.” ‘690, D. 62-2 at 9.
Defendants further argue that the claim language itself shows that when the patentees
wanted to reference a “local user” they did so explicitly, and that “it makes no sense that the
patentees would claim a ‘third user perspective’ instead of simply claiming a ‘local user
perspective.’” D. 69 at 25; see, e.g., ‘998, claim 2, D. 64-5 at 23 (describing a “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”). Based on a review of the claims and the specification, the Court agrees that it is not
clear that the patentees consistently use “third user” to mean “local user.” See, e.g., ‘998, D. 64-
5 at 23 (describing “a rendering that allows the local user to view the local user avatar in the
virtual world”). Moreover, the term “third user perspective” does not ordinarily hold the
customary meaning of, essentially, first-person view. In fact, based on its ordinary meaning and
when read in light of the specification, it seems equally likely that the term could refer to: (1) the
perspective of an avatar other than the local user; or (2) a third-person perspective. In the
context of the specific claim at issue, however, these definitions make little sense since claim 1
of the ‘998 patent explicitly refers to “a perspective of one of the remote user avatars” and since
36
“third-person” perspective is the view described in the latter, undisputed portion of claim 2. See
‘998, D. 64-5 at 23.
Admittedly, Worlds construction could make sense in the context of claim 2, but it is at
odds with the patentees’ use of the terms “third user” and “local user” elsewhere in the
specification and is therefore not reasonably certain. See Nautilus, 134 S. Ct. at 2124. Without
more, the Court cannot convert the term “third user perspective” into, essentially, “first-person
view.” See id. (holding “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”).
Given this ambiguity, the Court concludes by clear and convincing evidence that the term
“third user perspective” is indefinite as the patent record would not convey to one of skill in the
art with reasonable certainty the meaning of the term.
I. “Switch Between a Rending 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”
Term Worlds’s Proposed
Construction
Activision’s Proposed
Construction
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
No construction necessary
Or, alternatively,
Switch between a graphical
representation in which all of a
local user’s field of view is
displayed, and a graphical
representation in which less
than all of a local user’s field
of view is displayed
Indefinite under 35 U.S.C. § 112,
¶ 2
The final disputed claim appears in claim 19 of the ‘998 patent, which provides, in part:
37
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.
‘998, D. 62-6 at 23. Here, the Defendants argue that the patent does not make clear what the
term “perspective view” means, how “all of a perspective view is displayed” or how “less than
all of a perspective view is displayed” and, as a result, the term is indefinite under 35 U.S.C.
§ 112, ¶ 2. D. 63 at 40-41.
First, the Defendants argue that the term “perspective view” is ambiguous. Id. at 40. The
Defendants read the specification to allow the viewing of a virtual world from the perspective of
particular users and, as a result, “perspective,” as generally used in the specification, only means
the “viewpoint” of a particular user. Id. at 41. Under the Defendants’ reading of the
specification, then, “perspective view” means only the “viewpoint view,” which does not clarify
the disputed term. The Court concludes, however, that when read in context of the claims as a
whole, the term “perspective view” is easily construed to mean “the view from the perspective of
the user.” The disputed term does not read: “switch between a rendering in which all of a
perspective view is displayed . . . .” The term states: “switch between a rendering in which all
of a perspective view of a local user avatar of the local user is displayed . . . .” ‘998, D. 64-5 at
24. Therefore, this section does explicitly refer to the perspective of a particular user, the “local
user.” This distinction is important because even if the Defendants “viewpoint view”
construction was adopted, the phrase would read: “a viewpoint view of a local user avatar of the
local user is displayed.” Given the specifications consistent explanations that “each user
executes a client process to view a virtual world from the perspective of that user” and the
ordinary meaning of the words in the phrase, the Court concludes that a person of ordinary skill
38
in the art would understand that claim 19 uses “perspective view” to mean a “view from the
perspective of the user.” ‘998, D. 62-6 at 14.
The Defendants also argue, however, that the phrase “all of a perspective view” is
indefinite because it is impossible to know “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.” D. 145 at 8. In response, Worlds contends that the terms
“all of a perspective view” and “less than all of a perspective view” need no construction because
an ordinary person skilled in the art would understand that “all of a perspective view” references
“the user’s entire field of view” and that the term “less than all of a perspective view” means
“something less than the entire or full field of view of the user, such as a view that is zoomed in
on or focused on a particular avatar or object within the user’s virtual world environment.” D.
146 at 8-9. As the Defendants point out, however, this construction does not address what
exactly constitutes the “full field of view” or the “entire field of view.” D. 63 at 41; see also D.
69 at 26 (questioning whether “all of the field of view” means “a 360-degree field of view? A
180-degrgee field of view? The maximum field of view setting?”); D. 145 at 9 (noting that “[t]he
‘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” and noting that “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”). Nor does
Worlds’s proposed construction address what constitutes less than all of the same view, as
opposed to an entirely different view. Here, Worlds only response is to argue that a person of
ordinary skill would understand that the “scope” of the “entire field view” would include a view
39
with other avatars, “walls, floors, ceilings, and other stationary objects within the avatars line of
sight.” D. 68 at 27-28 (referencing Figure 1 of the ‘998 patent). This explanation lacks the
specificity needed to clarify the term. How is the avatar’s line of sight determined? The patent
provides no boundaries on what constitutes “all of a perspective view.”
Accordingly, the Courts agrees that there is no basis on which a person of ordinary skill
in the art would be able to determine how much of a “perspective view” would need to be
displayed to constitute “all” of that view. As a result, a person of ordinary skill in the art would
be equally unable to determine what would constitute “less than all” of a “perspective view.”
The Court concludes by clear and convincing evidence, therefore, that the term “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” is indefinite under 35
U.S.C. § 112, ¶ 2.
VI. Conclusion
For the foregoing reasons, the disputed claim terms are construed as follows:
1. the term “position of less than all of the other users’ avatars” does not require
construction;
2. the term “determining, from the received positions, [a/the] set of the other users’
avatars that are to be displayed” does not require construction;
3. the terms “condition” and “participant condition” mean “a condition set by the
client;”
4. the term “programmed to limit the number of remote user avatars shown on the
graphic display” does not require construction;
40
5. the term “avatar” means a “graphical representation of a user in three-dimensional
form;”
6. the term “client process” means “a program executed, stored, or accessible on a user’s
computer to provide access to a server;”
7. the term “server process” means “a program executed, stored, or accessible by one or
more computers that provide one or more services to users of computers across a
network;” and
8. the terms “synchronously disseminating . . . positions,” “third user perspective” and
“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” are indefinite under 35 U.S.C. § 112, ¶ 2.
So Ordered.
/s/ Denise J. Casper
United States District Judge