Worlds Inc (WDDD)

[rolvram]

THE UNITED STATES DISTRICT COURT
FOR THE 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. 1:12-CV-10576 (DJC)
ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. AND
ACTIVISION PUBLISHING, INC.’S FOURTH SUPPLEMENTAL
INVALIDITY DISCLOSURE RE: THE ‘690, ‘558, ‘856, ‘501 AND ‘998 PATENTS
Pursuant to the August 6, 2012 Joint Scheduling Statement (D.I. 27), the Court’s
August 13, 2012, September 25, 2012 and November 26, 2012 Orders (D.I. 29, D.I. 35, and D.I.
40, respectively) modifying the Joint Scheduling Statement, and Plaintiff’s July 27, 2015 Sixth
Supplemental Disclosure of the Claims Infringed (D.I. 160), Defendants Activision Blizzard,
Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Activision”)
hereby disclose their Fourth Supplemental Invalidity Disclosure. Activision contends that each
of the claims asserted by plaintiff Worlds, Inc. (“Worlds”) is invalid under at least 35 U.S.C.
§§ 101, 102, 103, and/or 112, and/or for obviousness-type double patenting.
I. THE ASSERTED CLAIMS
Worlds has served Activision with inter alia its Sixth Supplemental Disclosure of the
Claims Infringed, alleging infringement of U.S. Patent Nos. 7,181,690 (“the ‘690 patent”),
7,493,558 (“the ‘558 patent”), 7,945,856 (“the ‘856 patent”), 8,082,501 (“the ‘501 patent”) and
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 1 of 32 -2-
8,145,998 (“the ‘998 patent”) (collectively “the Patents-in-Suit”). Specifically, Worlds has
alleged that Activision infringes claims 1–8, 10–17, and 19 of the ‘690 patent, claims 4-9 of the
‘558 patent, claim 1 of the ‘856 patent, claims 1-8, 10, 12 and 14-16 of the ‘501 patent, and
claims 1, 18, and 20 of the ‘998 patent (collectively, “Asserted Claims”).1
Pursuant to the Joint
Scheduling Statement ¶ 4.B, Activision does not provide any contentions regarding any claims
not asserted in Worlds’ Sixth Supplemental Disclosure of the Claims Infringed. To the extent
that Worlds asserts additional claims against Activision in the future, Activision reserves the
right to disclose new or supplemental invalidity contentions regarding such claims.
II. PRELIMINARY INVALIDITY DISCLOSURE
A. Identification of Prior Art
Pursuant to the Joint Scheduling Statement ¶ 4.B, and based on Activision’s current
understanding of Worlds’ Sixth Supplemental Disclosure of the Claims Infringed, Activision
identifies the following references and disclosures set forth in Table 1 as prior art that anticipates
or renders obvious one or more Asserted Claims of the Patents-in-Suit. As set forth in the charts
in Exhibits A-F2
, the prior art listed in Table 1 demonstrates that the alleged inventions claimed
in the Patents-in-Suit were well known and obvious as of the time of filing of the Patents-in-Suit.

1
On April 17, 2013, counsel for Worlds notified counsel for Activision via e-mail that
Worlds is no longer asserting infringement of ‘558 patent claims 1-3 and ‘998 patent claim 21
against Activision. On July 27, 2015, Worlds further withdrew assertion of ‘690 patent claims 9,
18, and 20 and ‘998 patent claims 2, 3, 7, 8, 11–17 and 19, all of which were found by the Court
to contain an indefinite limitation. (D.I. 160 at 4). Although ‘998 patent claim 21 is still listed in
Exhibits I and J provided with Worlds’ Sixth Supplemental Disclosure of the Claims Infringed,
this appears to be in error, in view of the April 17, 2013 statement above and the absence of
claim 21 from Worlds’ statement of asserted claims. Id.
2
Exhibits A-D were first served and filed on December 3, 2012 with Activision’s
Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856 and ‘501 patents (D.I. 41).
Exhibit E was first served and filed on December 20, 2012 with Activision’s First Supplemental
Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856, ‘501 and ‘998 patents (D.I.
47). Exhibit F was first served and filed on May 24, 2015 with Activision’s Second
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 2 of 32 -3-
TABLE 1
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Durward et al. U.S. Patent No. 5,659,691, titled
Virtual Reality Network With
Selective Distribution And Updating
Of Data To Reduce Bandwidth
Requirements, filed September 23,
1993 (“Durward patent”)
August 19,
1997
(issued)
Anticipation
and obviousness
Rick Kazman Making WAVES: On the Design of
Architecture for Low-end Distributed
Virtual Environments, Proceedings of
IEEE Virtual Reality Annual
International Symposium, Seattle,
WA, September 18-22, 1993, pp. 443-
49 (“Kazman Article”)
September
1993
Anticipation
and obviousness
Michael
Snoswell
Overview of Cyberterm, a Cyberspace
Protocol Implementation (“Snoswell
Article”)
July 17,
1992
Anticipation
and obviousness
Miroslav Stanic Surf’s Up – Things to see and do on
the Internet, Issue #2, pp. 4-6 (“Surf’s
Up Article”)
May 1995 Anticipation
and obviousness
Michael
Snoswell
Cyberterm system,
(See, e.g., Snoswell Article; Surf’s Up
Article)
Publicly
known
and/or used
by
1992
Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior MANUAL.txt, Air
Warrior Version 0.8, Preliminary
Draft (“First Air Warrior Manual”)
1988 Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior Manual, Version 1.2
(“Second Air Warrior Manual”)
December
1989
Anticipation
and obviousness
Kesmai Super VGA Air Warrior Flight
Manual (“SVGA AW Manual”) (See
also SVGA Air Warrior game
packaging)
1992 Anticipation
and obviousness

Supplemental Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856, ‘501 and ‘998
patents (D.I. 73). Updated versions of Exhibits A–F were provided by Activision on July 27,
2015 with its Third Supplemental Invalidity Disclosure (D.I. 162). Activision provides herewith
further updated versions of Exhibits A-F.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 3 of 32 -4-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Andrew Reese,
Gregg Perlman
Online With Start - Kesmai Air
Warrior, Start Magazine, Vol. 3, No.
2, Special Issue #4, p. 73 (“Start
Magazine”)
1988 Anticipation
and obviousness
Video Games
& Computer
Entertainment
Worlds of Kesmai Article, Video
Games & Computer Entertainment,
pp. 75-76 (“Worlds of Kesmai”)
August
1989
Anticipation
and obviousness
Jerry Michalski Multi-User Virtual Environments, Part
I, Release 1.0, Esther Dyson’s
Monthly Report, (“Michalski Article”)
June 27,
1994
Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior Game
(See, e.g., First Air Warrior Manual;
Second Air Warrior Manual; SVGA
AW Manual; SVGA Air Warrior game
packaging; Start Magazine; Worlds of
Kesmai; Michalski Article; Air
Warrior Source Code and
Executables)
Publicly
known
and/or used
by
1986
Anticipation
and obviousness
Thomas
Funkhouser
RING: A Client-Server System for
Multi-User Virtual Environments,
1995 IEEE Symposium on Interactive
3D Graphics, pp. 85-92 (April 9-12,
1995) (“Funkhouser Article”)
April 12,
1995
Anticipation
and obviousness
Thomas
Funkhouser,
AT&T Bell
Labs
Network Services for Multi-User
Virtual Environments, IEEE Network
Realities ‘95, Boston, MA (“Second
Funkhouser Article”)
October
1995
Anticipation
and obviousness
Thomas
Funkhouser
U.S. Patent No. 5,784,570, titled
Server for Applying a Recipient Filter
and Compressing the Input Data
Stream Based Upon a Set of at Least
One Characteristics in a Multiuser
Interactive Virtual Environment
(“Funkhouser Patent”)
July 21,
1998
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 4 of 32 -5-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Thomas
Funkhouser,
Carlo H. Séquin
Adaptive Display Algorithm for
Interactive Frame Rates
During Visualization of Complex
Virtual Environments, presented at
20th Annual Conference on Computer
Graphics and Interactive Techniques,
Aug. 1-6, 1993, Anaheim, CA (“1993
Funkhouser Article”)
August
1993
Obviousness
Thomas
Funkhouser
RING System (See, e.g., Funkhouser
Article; Second Funkhouser Article;
Funkhouser Patent; 1993 Funkhouser
Article; Visualization and Interaction
in Large 3D Virtual Environments,
Thomas A. Funkhouser (Abstract of
Nov. 22, 1994 presentation, available
at
http://graphics.stanford.edu/glunches/1
994-1995/nov22.html;
ACTV00070176 at 1:00:40 – 1:05:53)
Publicly
known
and/or used
by
November
1994
Anticipation
and obviousness
Rick Kazman HIDRA: An Architecture for Highly
Dynamic Physically Based MultiAgent
Simulations (“HIDRA Article”)
1993 Anticipation
and obviousness
Michael
Macedonia,
Michael Zyda,
David Pratt,
Paul Barham,
Steven Zeswitz
NPSNET: A Network Software
Architecture for Large Scale Virtual
Environments, Presence, Vol. 3, No. 4
(“NPSNET Article”)
Fall 1994 Anticipation
and obviousness
Michael
Macedonia
A Network Software Architecture for
Large Scale Virtual Environments,
Naval Postgraduate School
(“Macedonia Dissertation”)
June 1995 Anticipation
and obviousness
David Pratt A Software Architecture for the
Construction and Management of
Real-Time Virtual Worlds, Naval
Postgraduate School (“Pratt
Dissertation”)
June 1993 Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 5 of 32 -6-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Michael
Macedonia,
Michael Zyda,
David Pratt,
Paul Barham,
Steven Zeswitz
NPSNET system
(See, e.g., NPSNET Article;
Macedonia Dissertation; Pratt
Dissertation; Network Software
Architectures for Real-Time
Massively-Multiplayer Online Games,
R. Delano, P. McFarlane (Feb. 2,
2005), pp. 64-68; NPSNET: A 3D
Visual Simulator for Virtual World
Exploration and Experience, D. Pratt,
M. Zydga, in Tomorrow’s Realities
(July 1991), p. 30); NPSNET Videos
(ACTV00070163– ACTV00070186))
Publicly
known
and/or used
by August
1993
Anticipation
and obviousness
Brad
Lineberger
Kingdom of Drakkar
(See, e.g., Kingdom of Drakkar Source
Code)
Publicly
known
and/or used
by
1989
Anticipation
and obviousness
Chip
Morningstar, F.
Randall Farmer
The Lessons of Lucasfilm’s Habitat,
Cyberspace: First Steps (1991)
(“Habitat A”)
1991 Anticipation
and obviousness
Lucasfilm Ltd. The Official Avatar Handbook: A
Comprehensive Guide To
Understanding Habitat (“Habitat B”)
1987 Anticipation
and obviousness
Kathy Yakal Habitat - A Look At The Future of
Online Games, Compute!, Issue 77, p.
32 (“Habitat C”)
October
1986
Anticipation
and obviousness
Chip
Morningstar
The Ghu Guide, Lucasfilm Ltd.
Games Division (“Habitat D”)
March 9,
1987
Anticipation
and obviousness
Margaret
Morabito
Enter The On-line World Of
Lucasfilm, Margaret Morabito
(“Habitat E”)
1986 Anticipation
and obviousness
Quantum
Comp. Tech.
Club Caribe Guidebook
(“Habitat F”)
1989 Anticipation
and obviousness
Kazutomo
Fukuda,
Tadayuki
Tahara, Toru
Miyoshi
Hypermedia Personal Computer
Communication System: Fujitsu
Habitat (“Habitat G”)
1990 Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 6 of 32 -7-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Lucasfilms, F.
Randall Farmer,
Chip
Morningstar
Habitat
(See, e.g., Habitat A-G; Habitat Source
Code; Habitat Videos)

Publicly
known
and/or used
by
1986
Anticipation
and obviousness
Greg
Thompson,
Mark Horowitz,
George
Woltman
The MAZE game (“Maze War H”) 1976 Anticipation
and obviousness
Callisto Super Maze Wars Brochure (“Maze
War I”)
1992 Anticipation
and obviousness
MacroMind Maze Wars+ Brochure (“Maze War
J”) 1987 (upon
information
and belief)
Anticipation
and obviousness
Oracle Maze at INTEROP Brochure (“Maze
War K”)
1992 Anticipation
and obviousness
Oracle Oracle at INTEROP 92 (“Maze War
L”)
October
1992
Anticipation
and obviousness
Greg Thompson
et al.
Maze War
(See, e.g., Maze War A-O3
)
Publicly
known
Anticipation
and obviousness

3
Maze War A-G and M-O are as follows: Webpage found at http://www.digibarn.com/
collections/games/xerox-maze-war/index.html, DigiBarn Computer Museum (Printed on
10/15/2009) (“Maze War A”); Webpage found at http://www.digibarn.com/collections/
games/maze-war/other-mazes/MazeWar-for-Alto.html, DigiBarn Computer Museum (Printed on
10/15/2009) (“Maze War B”); Webpage found at http://www.digibarn.com/history/04-VCF7-
MazeWar/stories/colley.html, DigiBarn Computer Museum (Printed on 10/15/2009) (“Maze War
C”); Webpage found at http://www.digibarn.com/history/04-VCF7-MazeWar/stories/
guyton.html, DigiBarn Computer Museum (Printed on 10/15/2009) (“Maze War D”); Webpage
found at http://www.digibarn.com/history/04-VCF7-MazeWar/stories/lebling.html, DigiBarn
Computer Museum (Printed on 10/15/2009) (“Maze War E”); Webpage found at
http://www.digibarn.com/history/04-VCF7-MazeWar/panelists.html, DigiBarn Computer
Museum (Printed on 10/15/2009) (“Maze War F”); The aMazing History of Maze, Greg
Thompson (2004) (“Maze War G”); Video of Maze War game in play on the Imlac PDS-1D
hardware, found at http://www.digibarn.com/collections/games/maze-war/imlacs-pds1-
maze/movies/tom-uban-mazewar-demo-400.mov, DigiBarn Computer Museum (Downloaded on
10/16/2009) (“Maze War M”); Video of Maze War game in play on Xerox Alto and 6085
hardware, found at http://www.digibarn.com/collections/games/xerox-maze-war/movies/don-onxerox-6085-maze.mov,
DigiBarn Computer Museum (Downloaded on 10/16/2009) (“Maze War
N”); Video found at http://www.digibarn.com/collections/games/xerox-maze-war/movies/mazeCase
1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 7 of 32 -8-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
and/or used
by 1975
J. Calvin,
A. Dickens,
B. Gaines,
P. Metzger,
D. Miller,
D. Owen
The SIMNET Virtual World
Architecture, Virtual Reality Annual
International Symposium, 1993 IEEE
(“SIMNET Article”)
1993 Anticipation
and obviousness
Kevin Kelly The First Online Sports Game, Wired
(“Kelly Article”)
December
1993
Anticipation
and obviousness
Jonathan
Shekter
The Netrek Newbie Manual, Rev. 1.3
(“Netrek Manual”)
November
1995
Anticipation
and obviousness
Kevin Smith,
Scott Silvey
Netrek
(See, e.g., Declaration of Kevin Smith
(Dec. 17, 2007) (“Smith Dec.”);
Declaration of Kevin Smith (Oct. 9,
2008) (“Second Smith Dec.”);
Declaration of Andrew T. McFadden
(Oct. 13, 2008) (“McFadden Dec.”);
Declaration of Andrew T. McFadden
(Oct. 21, 2008) (“Second McFadden
Dec.”); Kelly Article; Netrek Manual;
Netrek Source Code)
Publicly
known
and/or used
by
1991
Anticipation
and obviousness
Matthew S. Fell The Unofficial Doom Specs, Release
v1.666 (“Doom Specs”)
December
15, 1994
Obviousness
id Software The Doom v1.2 Manual, readme.exe
file (“Doom v1.2 Manual”)
February
16, 1994
Obviousness
id Software Doom
(See, e.g., Doom Specs; Doom v1.2
Manual; http://everything2.com/title/
The+Doom+rendering+engine?display
type=printable (“Doom Rendering
Engine”); http://doom.wikia.com/
wiki/Doom_networking_component
(“Doom Networking Component”);
Doom Source Code and Executables)
Publicly
known
and/or used
by February
1993
Obviousness

on-alto-fastart.mov, DigiBarn Computer Museum (Downloaded on 10/16/2009) (“Maze War
O”).
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 8 of 32 -9-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Sierra On-line Shadow of Yserbius Manual 1993 Anticipation
and obviousness
Sierra On-line Shadow of Yserbius
(See, e.g., Shadow of Yserbius
Manual; Shadow of Yserbius and INN
Executables)
Publicly
known
and/or used
by
1992
Anticipation
and obviousness
Bralick et al. Using a Multi-User Dialogue System
to Support Software Engineering
Distance Education, 7th SEI CSEE
Conference, SOFTWARE
ENGINEERING EDUCATION,
January 5-7, 1994 (“Bralick Article”)
January
1994
Anticipation
and obviousness
James Aspnes TinyMUD
(See, e.g., TinyMUD Source Code)
Publicly
known
and/or used
by
1989
Anticipation
and obviousness
MUDs
(See, e.g., Declaration of John K.
Bennett and exhibits (Oct. 28, 2008)
(“Bennett Decl.”); Bralick Article;
TinyMUD Source Code)
Publicly
known
and/or used
by
at least
1989
Anticipation
and obviousness
MicroProse CyberStrike: Intense multiplayer
action in Cyberspace (Instruction
Manual) (“CyberStrike A”)
1994 Anticipation
and obviousness
MicroProse CyberStrike: Technical Supplement
(“CyberStrike B”)
1994 Anticipation
and obviousness
Simutronics CyberStrike
(See, e.g., CyberStrike A; CyberStrike
B)
Publicly
known
and/or used
by
1994
Anticipation
and obviousness
Honda U.S. Patent No. 6,020,885, titled
Three-Dimensional Virtual Reality
Space Sharing Method and System
Using Local and Global Object
Identification Codes, filed July 9, 1995
(“Honda patent”)
February 1,
2000
(issued)
Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 9 of 32 -10-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Worlds, Inc. Worlds Ware Publicly
known
and/or used
by October
1994
Anticipation
and obviousness
Worlds, Inc. AlphaWorld Publicly
known
and/or used
by July
1995
Anticipation
and obviousness
Worlds, Inc. Worlds Chat Publicly
known
and/or used
by July
1995
Anticipation
and obviousness
Suzuki et al. U.S. Patent No. 5,736,982, titled
Virtual Space Apparatus With Avatars
And Speech, filed August 1, 1995
(“Suzuki patent”)
April 7,
1998
(issued)
Obviousness
Nitta U.S. Patent No. 5,347,306, titled
Animated Electronic Meeting Place,
filed December 17, 1993 (“Nitta
patent”)
September
13, 1994
(issued)
Obviousness
Benford and
Fahlén
A Spatial Model of Interaction In
Large Virtual Environments,
Proceedings of the Third European
Conference on Computer-Supported
Cooperative Work, September 13-17,
1993, Milan, Italy (“Benford Article”)
September
1993
Obviousness
Benford et al. Managing Mutual Awareness in
Collaborative Virtual Environments,
Virtual Reality Software &
Technology, Proceedings of the VRST
’94 Conference, August 23-26, 1994,
Singapore (“Second Benford Article”)
August
1994
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 10 of 32 -11-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Virtual
Universe Corp.
The Parallel Universe
From: [e-mail] (Virtual
Universe Product Information)
Newsgroups: comp.groupware
Subject: Multi-user, Real-time
environments - New Product
Date: Tue, 23 Aug 1994 18:58:49
GMT (“Virtual Univ. Newsgroup”)
August 23,
1994
Obviousness
Foley, Van
Dam, Feiner &
Hughes
Computer Graphics: Principles and
Practice, 2d ed. (“Foley & Van Dam”)
1990 Obviousness
Shaun Bangay Parallel Implementation Of A Virtual
Reality System On A Transputer
Architecture (“Bangay Dissertation”)
November
1993
Obviousness
Myers U.S. Patent No. 5,490,239, titled
Virtual Reality Imaging System, filed
September 8, 1994 (“Myers patent”)
February 6,
1996
(issued)
Obviousness
Bolas et al. U.S. Patent No. 5,513,129, titled
Method and System for Controlling
Computer-Generated Virtual
Environment in Response to Audio
Signals, filed July 14, 1993 (“Bolas
patent”)
April 30,
1996
(issued)
Obviousness
Maes et al. U.S. Patent No. 5,563,988, titled
Method and System for Facilitating
Wireless, Full-Body, Real-Time User
Interaction with a Digitally
Represented Visual Environment, filed
August 1, 1994 (“Maes patent”)
October 8,
1996
(issued)
Obviousness
Shiio et al. U.S. Patent No. 5,491,743, titled
Virtual Conference System and
Terminal Apparatus Therefor, filed
May 24, 1994 (“Shiio patent”)
February
13, 1996
(issued)
Obviousness
Itai et al. U.S. Patent No. 5,880,709, titled
Image Processing Devices and
Methods, filed August 29, 1995 (“Itai
patent”)
March 9,
1999
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 11 of 32 -12-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Schneider et al. U.S. Patent No. 5,777,621, titled
Quality Control Mechanism for ThreeDimensional
Graphics Rendering
(“Schneider patent”)
July 7, 1998
(issued)
Obviousness
Sitrick U.S. Patent No. 4,521,014, titled
Video Game Including User Visual
Image (“Sitrick patent”)
June 4,
1985
(issued)
Obviousness
Michael
Benedikt
Cyberspace: Some Proposals,
Cyberspace: First Steps (1991)
(“Benedikt Chapter”)
1991 Obviousness
Meredith
Bricken
Virtual Worlds: No Interface to
Design, Cyberspace: First Steps
(1991) (“Bricken Chapter”)
1991 Obviousness
Calvin et al. STOW Realtime Information Transfer
and Networking System Architecture
(“STOW Paper”)
March,
1995
Obviousness
Van Jacobson,
Michael J.
Karels
Congestion Avoidance and Control
(“Jacobson Article”)
November
1988
Obviousness
Brent et al. U.S. Patent No. 5,315,591, titled
Method and Apparatus for Controlling
Congestion in Packet Switching
Networks (“Brent patent”)
May 24,
1994
(issued)
Obviousness
Lakshman et al. U.S. Patent No. 5,650,993, titled Drop
from Front of Buffer Policy in
Feedback Networks (“Lakshman
patent”)
July 22,
1997
(issued)
Obviousness
Newman U.S. Patent No. 5,457,687, titled
Method and Apparatus for Backward
Explicit Congestion Notification
(BECN) in an ATM Network
(“Newman patent”)
October 10,
1995
(issued)
Obviousness
Bustini et al. U.S. Patent No. 5,313,454, titled
Congestion Control for Cell Networks
(“Bustini patent”)
May 17,
1994
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 12 of 32 -13-
1. Worlds Chat and AlphaWorld
Worlds asserts that the Worlds Chat and AlphaWorld systems embody one or more of the
Asserted Claims. Activision’s investigation into the features and functionality of Worlds Chat
and AlphaWorld is ongoing. To the extent that Worlds Chat and/or AlphaWorld (including any
of its predecessor systems, including, e.g. Worlds Ware and related prototype systems) was
publicly known or used more than one year prior to the effective filing date of the Patents-inSuit,
one or more of the Asserted Claims are anticipated and/or obvious in view of Worlds Chat
and/or AlphaWorld.
2. The Asserted Claims of the Patents-in-Suit Are Obvious In View Of
The Prior Art
The U.S. Supreme Court decision in KSR Int’l Co. v. Teleflex Inc., et al., 127 S. Ct. 1727,
1739 (2007) held that a claimed invention can be obvious even if there is no explicit, written
teaching, suggestion, or motivation for combining the prior art to produce that invention. In
summary, KSR holds that patents that are based on new combinations of elements or components
already known in a technical field may be found to be obvious. See generally KSR, 127 S. Ct.
1727. Specifically, the Court in KSR rejected a rigid application of the “teaching, suggestion, or
motivation [to combine]” test. Id. at 1741. “In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim.” Id. at 1741-1742. “Under the
correct analysis, any need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Id. at 1742. In particular, in KSR, the Supreme Court emphasized the principle that “[t]he
combination of familiar elements according to known methods is likely to be obvious when it
does no more than yield predictable results.” Id. at 1739. A key inquiry is whether the
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“improvement is more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
In view of the Supreme Court’s KSR decision, the PTO issued a set of new Examination
Guidelines. See Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103 in
view of the Supreme Court Decision in KSR International Co. v. Teleflex, Inc., 72 Fed. Reg.
57526 (October 10, 2007). Those Guidelines summarized the KSR decision, and identified
various rationales for finding a claim obvious, including those based on other precedents. Those
rationales include:
(A) Combining prior art elements according to known methods to yield predictable
results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products) in the
same way;
(D) Applying a known technique to a known device (method, or product) ready for
improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either
the same field or a different one based on design incentives or other market forces if the
variations would have been predictable to one of ordinary skill in the art;
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(G) Some teaching, suggestion, or motivation in the prior art that would have led one
of ordinary skill to modify the prior art reference or to combine prior art reference teachings to
arrive at the claimed invention.
Id. at 57529.
Activision contends that one or more of these rationales apply in considering the
obviousness of the Asserted Claims of the Patents-in-Suit. The claim charts in Exhibits A-E
provide example sections within the prior art references that teach or suggest each and every
element of the Asserted Claims of the Patents-in-Suit. To the extent that any elements of the
Asserted Claims are not found in a particular reference, or to the extent that Worlds argues that
any of the charted references does not disclose every element of an Asserted Claim, it would
have been obvious to combine such reference with other references listed in Table 1 or with the
knowledge of a person of ordinary skill in the art. Exemplary combinations and motivations to
combine references for specific elements of the Asserted Claims of the Patents-in-Suit are set
forth in Exhibit F.
A person of ordinary skill at the time of the alleged inventions of the Patents-in-Suit had
reason to combine or modify the references listed in Table 1 in light of the knowledge of a
person of ordinary skill in the art at the time of the alleged inventions and information in the
prior art cited herein. As a general matter, all of the references charted in Exhibits A-E relate to
systems and methods that provide for the interaction of multiple users in a networked virtual
environment. As such, they are all within the same field of art and would have been within the
knowledge of a person of ordinary skill in the art. The motivation to combine these references is
evident from the fact that they are each directed to the same field of technology and each address
similar problems and propose similar solutions. Thus, a person of ordinary skill in the art at the
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time of filing of the Patents-in-Suit would be motivated to combine elements of any of these and
similar references and recognize that the combination of any of these systems and methods is a
predictable use of elements known in the art to solve a known problem and a use of known
techniques to solve a known problem in the same way.
B. Claim Charts
Activision provides in Exhibits A-F claim charts comparing the references listed in
Table 1 with the Asserted Claims of the Patents-in-Suit, setting forth example sections within the
prior art that teach or suggest each and every element of the Asserted Claims of the Patents-inSuit
and explaining why, for each contention of obviousness, the prior art renders the Asserted
Claim obvious. Activision’s identification of specific portions of prior art references that
disclose the elements of the Asserted Claims of the Patents-in-Suit is based, at least in part, on its
present understanding of the Asserted Claims, its present understanding of Worlds’ Sixth
Supplemental Disclosure of the Claims Infringed, its present understanding of the prior art,
and/or its present understanding of the qualifications and skill level of one of ordinary skill in the
art.
The claim charts of Exhibits A-F provide Activision’s contentions about which claim
elements are taught by or obvious in view of the prior art references. In this regard, they identify
representative portions within the prior art references that disclose the elements of the Asserted
Claims of the Patents-in-Suit. The cited portions are merely exemplary and do not necessarily
reflect or include every portion of the prior art references that discloses or teaches particular
claim terms or claim limitations. It should be recognized that a person of ordinary skill in the art
would generally read a prior art reference as a whole and in the context of other publications,
literature, and general knowledge in the field. To understand and interpret any specific statement
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or disclosure in a prior art reference, a person of ordinary skill in the art would rely upon other
information including other publications and general scientific or engineering knowledge. In the
future, if necessary, Activision might cite additional portions of the cited references to
demonstrate and/or evidence the invalidity of the Asserted Claims of the Patents-in-Suit.
Where Activision identifies a particular figure in a prior art reference, the identification
should be understood to encompass the caption and description of the figure as well as any text
relating to the figure in addition to the figure itself. Similarly, where an identified portion of text
refers to a figure or other material, the identification should be understood to include the
referenced figure or other material as well.
C. Claim Construction
The Court issued its Claim Construction ruling on June 26, 2015. Activision’s Fourth
Supplemental Invalidity Disclosure is based on the Court’s claim constructions. Activision
expressly reserves the right to argue that certain claim terms, phrases, and elements, even as
construed, are indefinite, lack written description, are not enabled, are not patentable or are
otherwise invalid under 35 U.S.C. § 101 or § 112.
D. Inter Partes Review
On May 26, 2015, Bungie, Inc., petitioned the Patent Trial and Appeal Board of the U.S.
Patent and Trademark Office (“PTAB”) for inter partes review (“IPR”) of various claims of the
‘690, ‘558, and ‘856 patents, including all claims presently asserted by Worlds in this action. On
June 1, 2015, Bungie, Inc., further petitioned the PTAB for IPR of various claims of the ‘501 and
‘998 patents, again including all claims presently asserted by Worlds in this action. Six PTAB
IPR proceedings are presently pending against the patents-in-suit, to which Worlds is a party.
Activision incorporates by reference, as if expressly set forth in these contentions, all present and
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future filings in Bungie’s six IPR petitions. Activision does not adopt as its own the positions
and arguments of Bungie, Worlds, or their experts, but expressly reserves the right to rely in the
future on any argument, references, or testimony presented in these IPRs.
E. Doctrine of Equivalents
Worlds’ Sixth Supplemental Disclosure of the Claims Infringed does not allege
infringement under the doctrine of equivalents, and states that “each element of each asserted
claim is present literally in the Accused Products.”
Activision contests Worlds’ statement that it further “reserves the right to contend that
the Accused Products still infringe under the doctrine of equivalents.” Worlds’ First through
Fifth Disclosures provided insufficient contentions regarding infringement under the doctrine of
equivalents. Worlds has never provided detailed contentions that identify each specific claim
limitation allegedly infringed under the doctrine of equivalents and its alleged equivalent element
in the accused products, or the basis for Worlds’ position regarding each such limitation and its
alleged equivalent. Accordingly, Activision contends that Worlds should be precluded from
asserting infringement under the doctrine of equivalents. If, however, Worlds provides
additional information and is permitted to rely on the doctrine of equivalents, Activision reserves
the right to amend and supplement these invalidity contentions as appropriate.
F. Other Grounds For Invalidity
Pursuant to the Joint Scheduling Statement ¶ 4.B, Activision contends that certain claims
of the Patents-in-Suit are invalid under 35 U.S.C. §§ 101, 112, or the doctrine of obviousnesstype
double patenting (“ODP”) because: (1) the claims are not directed to patentable subject
matter; (2) the claims lack adequate written description; (3) the claims are not enabled; (4) the
claims are indefinite; and/or (5) the claims are not patentably distinct from claims in other
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patents obtained by Worlds for the same invention. Activision’s contentions that the following
claims are invalid under 35 U.S.C. §§ 101, 112, or for ODP are made in the alternative and do
not constitute, and should not be interpreted as, admissions regarding the construction or scope
of the claims of the Patents-in-Suit, or that any of the claims of the Patents-in-Suit are not
anticipated or rendered obvious by prior art.
1. Invalidity Under 35 U.S.C. § 101
Activision contends that the Asserted Claims are invalid under 35 U.S.C. § 101 because
the claims are not directed to patentable subject matter. In particular, none of these claims is
patentable because the claims are directed to abstract ideas and well-understood, routine,
conventional activity already engaged in by those in the field.
2. Invalidity Under 35 U.S.C. § 112, ¶ 1
The following claims are invalid under § 112, first paragraph, because the specification
does not contain a written description of the invention claimed, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled
in the art to which it pertains, or with which it is most nearly connected, to make and use the
same:
(a) ‘690 patent claims 1, 6, 10, 11 and 15, ‘558 patent claims 4 and 6, ‘856 patent
claim 1, and the claims that depend from these independent claims, include the phrases
“determining, from the received positions, a set of the other users’ avatars that are to be
displayed to the first user,” “determining from the positions transmitted in step (c), by each client
process, a set of the avatars that are to be displayed,” “determine from the received positions a
set of the other users’ avatars that are to be displayed,” “determining from the positions received
in step (c), by said each client process, avatars that are to be displayed to the user associated with
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said each client process,” and “determining, from the received positions, a set of the second
avatars that are to be displayed to the first user.” These limitations are not disclosed expressly or
inherently in the specification as viewed by one of ordinary skill in the art. Therefore, these
claims fail to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “determining, from the received positions, a set of the other users’
avatars that are to be displayed to the first user,” “determining from the positions transmitted in
step (c), by each client process, a set of the avatars that are to be displayed,” “determine from the
received positions a set of the other users’ avatars that are to be displayed,” “determining from
the positions received in step (c), by said each client process, avatars that are to be displayed to
the user associated with said each client process,” or “determining, from the received positions, a
set of the second avatars that are to be displayed to the first user.” Accordingly, ‘690 patent
claims 1, 6, 10, 11, and 15, ‘558 patent claims 4 and 6, ‘856 patent claim 1, and the claims that
depend from these independent claims, are also invalid under 35 U.S.C. § 112, first paragraph,
because the specification fails to provide an enabling disclosure for the above claim elements.
(b) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrases “determining, by the client device, a displayable set of
the other user avatars associated with the client device display” and “determine a set of the other
users’ avatars displayable on a screen associated with the client device.” These limitations are
not disclosed expressly or inherently in the specification as viewed by one of ordinary skill in the
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art. Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “determining, by the client device, a displayable set of the other user
avatars associated with the client device display” or “determine a set of the other users’ avatars
displayable on a screen associated with the client device.” Accordingly, ‘501 patent claims 1, 12
and 14, and the claims that depend from these independent claims, are also invalid under 35
U.S.C. § 112, first paragraph, because the specification fails to provide an enabling disclosure for
the above claim elements.
(c) ‘690 patent claims 4, 8, 13 and 16 and ‘558 patent claims 5 and 7 include the
phrase “comparing the actual number to the maximum number to determine which of the . . .
avatars are to be displayed.” This limitation is not disclosed expressly or inherently in the
specification as viewed by one of ordinary skill in the art. Therefore, these claims fail to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “comparing the actual number to the maximum number to determine
which of the . . . avatars are to be displayed.” Accordingly, ‘690 patent claims 4, 8, 13 and 16
and ‘558 patent claims 5 and 7 are also invalid under 35 U.S.C. § 112, first paragraph, because
the specification fails to provide an enabling disclosure for the above claim element.
(d) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrase “fail to satisfy a participant condition imposed on avatars
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displayable on a . . . display of the client device.” This limitation is not disclosed expressly or
inherently in the specification as viewed by one of ordinary skill in the art. Therefore, these
claims fail to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “fail to satisfy a participant condition imposed on avatars displayable on
a . . . display of the client device.” Accordingly, ‘501 patent claims 1, 12 and 14, and the claims
that depend from these independent claims, are also invalid under 35 U.S.C. § 112, first
paragraph, because the specification fails to provide an enabling disclosure for the above claim
element.
(e) ‘998 patent claims 1 and 20 include the phrase “failing to satisfy a condition
imposed on displaying remote avatars to the local user.” This limitation is not disclosed
expressly or inherently in the specification as viewed by one of ordinary skill in the art.
Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “failing to satisfy a condition imposed on displaying remote avatars to
the local user.” Accordingly, ‘998 patent claims 1 and 20 are also invalid under 35 U.S.C. § 112,
first paragraph, because the specification fails to provide an enabling disclosure for the above
claim element.
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(f) ‘998 patent claim 18 includes the phrase “failing to satisfy a condition.” This
limitation is not disclosed expressly or inherently in the specification as viewed by one of
ordinary skill in the art. Therefore, this claim fails to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “failing to satisfy a condition.” Accordingly, ‘998 patent claim 18 is
also invalid under 35 U.S.C. § 112, first paragraph, because the specification fails to provide an
enabling disclosure for the above claim element.
(g) ‘501 patent claims 1, 12 and 14, the claims that depend from these independent
claims, and ‘998 patent claim 3 include the phrases “customizing, using a processor of a client
device, an avatar in response to input by the first user,” “create a custom avatar in response to
input by the first user” and “a custom avatar created based on input from the local user.” These
limitations are not disclosed expressly or inherently in the specification as viewed by one of
ordinary skill in the art. Therefore, these claims fail to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “customizing, using a processor of a client device, an avatar in response
to input by the first user,” “create a custom avatar in response to input by the first user” or “a
custom avatar created based on input from the local user.” Accordingly, ‘501 patent claims 1, 12
and 14, the claims that depend from these independent claims, and ‘998 patent claim 3 are also
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invalid under 35 U.S.C. § 112, first paragraph, because the specification fails to provide an
enabling disclosure for the above claim elements.
(h) ‘501 patent claims 1, 12 and 14, ‘998 patent claim 18, and the claims that depend
from these independent claims, include the phrases “a three dimensional avatar” and “three
dimensional renderings of the less than all of the remote user avatars.” These limitations are not
disclosed expressly or inherently in the specification as viewed by one of ordinary skill in the art.
Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “a three dimensional avatar” or “three dimensional renderings of the less
than all of the remote user avatars.” Accordingly, ‘501 patent claims 1, 12 and 14, ‘998 patent
claim 18, and the claims that depend from these independent claims, are also invalid under 35
U.S.C. § 112, first paragraph, because the specification fails to provide an enabling disclosure for
the above claim elements.
(i) ‘998 patent claim 1, and the claim that depends from this independent claim,
include the phrase “switching between a rendering on the graphic display that shows at least a
portion of the virtual environment to the local user from a perspective of one of the remote user
avatars and a rendering that allows the local user to view the local user avatar in the virtual
environment.” This limitation is not disclosed expressly or inherently in the specification as
viewed by one of ordinary skill in the art. Therefore, these claims fail to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
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Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “switching between a rendering on the graphic display that shows at
least a portion of the virtual environment to the local user from a perspective of one of the
remote user avatars and a rendering that allows the local user to view the local user avatar in the
virtual environment.” Accordingly, ‘998 patent claim 1, and the claim that depends from this
independent claim, are also invalid under 35 U.S.C. § 112, first paragraph, because the
specification fails to provide an enabling disclosure for the above claim elements.
3. Invalidity Under 35 U.S.C. § 112, ¶ 2
The following claims are invalid under § 112, second paragraph, for failure to
particularly point out and distinctly claim the subject matter which the applicants regarded as
their alleged inventions:
(a) All Asserted Claims include a limitation that refers to filtering of avatar position
information by the server – for example, “receiving a position of less than all of the other users’
avatars from the server process” (’690 patent, claim 1), “transmitting, by the server process to
each client process, the positions of less than all of the avatars that are not associated with the
client process” (’558 patent, claim 6), “the first client process receives positions of fewer than all
of the second avatars” (’856 patent, claim 1), “receiving, by the client device, position
information associated with fewer than all of the other user avatars” (’501 patent, claim 1),
“receiving, at a client processor associated with the local user, positions associated with less than
all of the remote user avatars” (’998 patent, claim 1). In view of the manner in which these
claim terms have been applied in Worlds’ infringement disclosures of August 27, 2015, the
Asserted Claims, read in light of the specification and the prosecution history, fail to inform,
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with reasonable certainty, those skilled in the art about the scope of the invention, and are thus in
violation of 35 U.S.C. § 112 ¶ 2.
(b) ‘690 patent claims 1, 6, 10, 11 and 15, ‘558 patent claims 4 and 6, ‘856 patent
claim 1, and the claims that depend from these independent claims, include the phrases
“determining, from the received positions, a set of the other users’ avatars that are to be
displayed to the first user,” “determining from the positions transmitted in step (c), by each client
process, a set of the avatars that are to be displayed,” “determine from the received positions a
set of the other users’ avatars that are to be displayed,” “determining from the positions received
in step (c), by said each client process, avatars that are to be displayed to the user associated with
said each client process,” and “determining, from the received positions, a set of the second
avatars that are to be displayed to the first user.” These phrases do not particularly and distinctly
claim subject matter that the patent applicants regard as their invention, and do not apprise a
person of ordinary skill in the art of its scope. Thus, all claims which include these phrases are
in violation of 35 U.S.C. § 112 ¶ 2.
(c) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrases “determining, by the client device, a displayable set of
the other user avatars associated with the client device display” and “determine a set of the other
users’ avatars displayable on a screen associated with the client device.” These phrases do not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(d) ‘690 patent claims 4, 8, 13 and 16 and ‘558 patent claims 5 and 7 include the
phrase “comparing the actual number to the maximum number to determine which of the . . .
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avatars are to be displayed.” This phrase does not particularly and distinctly claim subject matter
that the patent applicants regard as their invention, and does not apprise a person of ordinary skill
in the art of its scope. Thus, all claims which include this phrase are in violation of 35 U.S.C. §
112 ¶ 2.
(e) ‘690 patent claims 2 and 12 include the phrase “displaying the set of the other
users’ avatars from based on the orientation of the first user’s avatar.” This phrase does not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and does not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(f) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrase “fail to satisfy a participant condition imposed on avatars
displayable on a . . . display of the client device.” This phrase does not particularly and distinctly
claim subject matter that the patent applicants regard as their invention, and does not apprise a
person of ordinary skill in the art of its scope. Thus, all claims which include this phrase are in
violation of 35 U.S.C. § 112 ¶ 2.
(g) ‘998 patent claims 1 and 20 include the phrase “failing to satisfy a condition
imposed on displaying remote avatars to the local user.” This phrase does not particularly and
distinctly claim subject matter that the patent applicants regard as their invention, and does not
apprise a person of ordinary skill in the art of its scope. Thus, all claims which include this
phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(h) ‘998 patent claim 18 includes the phrase “failing to satisfy a condition.” This
phrase does not particularly and distinctly claim subject matter that the patent applicants regard
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 27 of 32 -28-
as their invention, and does not apprise a person of ordinary skill in the art of its scope. Thus, all
claims which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(i) ‘501 patent claims 1, 12 and 14, the claims that depend from these independent
claims, and ‘998 patent claim 3 include the phrases “customizing, using a processor of a client
device, an avatar in response to input by the first user,” “create a custom avatar in response to
input by the first user” and “a custom avatar created based on input from the local user.” These
phrases do not particularly and distinctly claim subject matter that the patent applicants regard as
their invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all
claims which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(j) ‘501 patent claims 1, 12 and 14, ‘998 patent claim 18, and the claims that depend
from these independent claims, include the phrases “a three dimensional avatar” and “three
dimensional renderings of the less than all of the remote user avatars.” These phrases do not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(k) ‘501 patent claim 16 includes the phrase “the method.” This phrase has no
antecedent basis and does not particularly and distinctly claim subject matter that the patent
applicants regard as their invention, and does not apprise a person of ordinary skill in the art of
its scope. Thus, claim 16 is in violation of 35 U.S.C. § 112 ¶ 2.
(l) ‘998 patent claim 1, and the claim that depends from this independent claim,
include the phrase “switching between a rendering on the graphic display that shows at least a
portion of the virtual environment to the local user from a perspective of one of the remote user
avatars and a rendering that allows the local user to view the local user avatar in the virtual
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 28 of 32 -29-
environment.” This phrase does not particularly and distinctly claim subject matter that the
patent applicants regard as their invention, and do not apprise a person of ordinary skill in the art
of its scope. Thus, all claims which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
4. Obviousness-type Double Patenting
The asserted claims of the ‘558 patent are unpatentable on the ground of nonstatutory
obviousness-type double patenting over one or more claims of Worlds’ other patents, including
at least the ‘856, ‘501, and ‘998 patents.
The ‘558 patent purports to claim an invention or inventions not patentably distinct from
the claims of the ‘856, ‘501, and ‘998 patents. As a non-limiting example, all the asserted claims
of the ‘558 patent are patentably indistinct from claim 1 of the ‘856 patent. Although the
conflicting claims are not identical, they are not patentably distinct from each other because
applicant merely uses slightly different claim language to claim the same invention. Because the
references are in the same field, address the same technology, and are intended to solve the same
general problem, one of ordinary skill in the art would have found it obvious to modify the
references, rendering the ‘558 patent obvious.
III. DOCUMENT PRODUCTION
To date, Activision has produced all prior art identified pursuant to the Joint Scheduling
Statement ¶ 4.B. The production numbers for this prior art are found within the following ranges
of documents: ACTV0000001 – ACTV0002513; ACTV00033180 – ACTV00033409;
ACTV00053307 – ACTV00053322; ACTV00070055 – ACTV00070287. A production of
newly-identified prior art accompanies the filing of these contentions, at the following range:
ACTV00070288 – ACTV00070403.
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IV. ONGOING DISCOVERY AND DISCLOSURES
Discovery and Activision’s investigation, including Activision’s search for prior art, is
ongoing. Activision might further supplement, amend, or alter the positions taken and
information disclosed in this Fourth Supplemental Invalidity Disclosure including, without
limitation, the prior art and grounds of invalidity set forth herein, to take into account
information or defenses that may come to light as a result of these continuing efforts. Activision
hereby incorporates by reference the testimony of any fact witnesses that are deposed, that
provide declarations, or that otherwise testify in this lawsuit. Activision also hereby incorporates
by reference the reports and testimony of Activision’s expert witnesses regarding invalidity of
the Patents-in-Suit.
For certain items of prior art, Activision is seeking discovery from third parties, as
appropriate. Activision is also seeking discovery from Worlds including, e.g., discovery
regarding conception and reduction to practice, commercial embodiments, etc. Activision,
therefore, may supplement or amend this Fourth Supplemental Invalidity Disclosure if and when
further information becomes available.

Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 30 of 32 -31-
Respectfully Submitted,
Dated: August 26, 2015 By: /s/ Matthew J. Moffa
Jesse J. Jenner (pro hac vice)
Gene W. Lee (pro hac vice)
Brian P. Biddinger (pro hac vice)
Matthew J. Moffa (pro hac vice)
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: [phone]
F: [phone]
Kathryn N. Hong (pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
T: [phone]
F: [phone]
Samuel Brenner (BBO# 677812)
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: [phone]
F: [phone]
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING, INC.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 31 of 32CERTIFICATE OF SERVICE
I hereby certify that this document and all attachments filed through the ECF
system will be sent electronically to the registered participants as identified on the Notice of
Electronic Filing (NEF) and that paper copies will be sent to those non-registered participants (if
any) on August 26, 2015.
/s/ Matthew J. Moffa
Matthew J. Moffa
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 32 of 32