Worlds Inc (WDDD)

[DataStream]

Worlds 101 Response


UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
vs.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
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Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
WORLDS, INC.’S OPPOSITION TO DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101
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TABLE OF CONTENTS
INTRODUCTION ...........................................................................................................................1
BACKGROUND .............................................................................................................................2
I. Worlds, Inc. ..............................................................................................................2
II. Patents-in-Suit ..........................................................................................................3
LEGAL STANDARD ......................................................................................................................4
I. 35 U.S.C. § 101 ........................................................................................................4
II. Presumption of Validity ...........................................................................................6
ARGUMENT ..................................................................................................................................6
I. Step 1: Worlds’ Patents Are Not “Directed To” a Patent-Ineligible
Abstract Idea ............................................................................................................6
A. A claim satisfies § 101 if it provides a solution rooted in
computer technology to overcome a problem arising in the
realm of computer networks. .......................................................................7
B. The asserted claims are not directed to an abstract idea. .............................8
C. Activision has not proven by clear and convincing evidence
that the asserted claims are directed to an abstract idea.............................11
II. Step 2: The Asserted Claims Include an Inventive Concept ..................................13
A. Inventive application of an abstract idea satisfies § 101. ...........................14
B. Worlds’ patents teach a specific approach to client-server
architecture that includes an inventive concept. ........................................15
C. The asserted claims do not preempt a building block of
ingenuity. ...................................................................................................19
CONCLUSION ..............................................................................................................................20
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TABLE OF AUTHORITIES
Cases
Alice Corp. v. CLS Bank International,
134 S. Ct. 2347 (2014). .............................................................................................. Passim
Ameritox, Ltd. v. Millennium Health,
2015 WL 728501 (W.D. Wis. Feb. 19, 2015) ....................................................... 13, 15, 18
BASCOM Global Internet Services v. AT&T Mobility,
2015 WL 2341074 (N.D. Tex., May 15, 2015) ................................................................ 12
Bilski v. Kappos,
561 U.S. 593 (2010). ........................................................................................................... 5
buySAFE v. Google,
765 F.3d 1350 (Fed. Cir. 2014)........................................................................................... 7
California Institute of Technology v. Hughes Communications Inc.,
59 F. Supp. 3d 974 (C.D. Cal. 2014) ................................................................ 5, 14, 17, 18
Card Verification Solutions v. Citigroup,
2014 WL 4922524 (N.D. Ill. Sept. 29, 2014). ............................................................ 16, 19
CLS Bank Int’l v. Alice Corp. Pty.,
717 F.3d 1269 (Fed. Cir. 2014)........................................................................................... 6
DataTern, Inc. v. Microstrategy, Inc.,
2015 WL 5190715 (D. Mass. Sept. 4, 2015) ...................................................... 6, 7, 10, 11
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014).................................................................................. Passim
Dealertrack v. Huber,
674 F.3d 1315 (Fed. Cir. 2012)........................................................................................... 6
Diamond v. Diehr,
450 U.S. 175 (1981) .................................................................................................... 17, 18
Enfish, LLC v. Microsoft,
56 F. Supp. 3d 1167 (C.D. Cal. 2014). ............................................................................... 7
Execware, LLC v. BJ’s Wholesale Club, Inc.,
2015 WL 4275314 (D. Del. July 15, 2015); ......................................................... 6, 8, 9, 11
Fuzzysharp Technologies v. Intel Corp.,
2013 WL 5955668 (N.D. Cal. Nov. 6, 2013) ............................................................. 12, 13
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Helios Software, LLC v. SpectorSoft Corp.,
2014 WL 4796111 (D. Del. Sept. 18, 2014). ...................................................................... 8
Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
2015 WL 1941331 (S.D.N.Y. April 28, 2015), .......................................................... 13, 14
KSR Int’l v. Teleflex,
550 U.S. 398 (2007). ......................................................................................................... 17
Mayo Collaborative Servs. v. Prometheus Labs.,
132 S. Ct. 1289 (2012) .................................................................................................... 5, 9
Market Track, LLC v. Efficient Collaborative Retail Marketing,
2015 WL 3637740 (N.D. Ill. June 11, 2015). ................................................................... 14
Patents Corp. v. Active Network,
2015 WL 3852975 (Fed. Circ. 2015) .................................................................................. 8
Prism Technologies, LLC v. T-Mobile USA,
No. 8:12-cv-00124 (D. Neb. Sept. 22, 2015) .................................................................... 19
Research Corp. Technologies v. Microsoft,
627 F.3d 859 (Fed. Cir. 2010)............................................................................................. 2
TQP Dev., LLC v. Intuit Inc.,
2014 WL 651935 (E.D. Tex. Feb. 19, 2014) .................................................................... 16
Ultramercial, Inc. v. Hulu, LLC,
722 F.3d 1335 (Fed Cir. 2013).............................................................................. 11, 12, 14
Wolf v. Capstone Photography, Inc.,
2014 WL 7639820 (C.D. Cal. Oct. 28, 2014) ..................................................................... 6
Statutes
35 U.S.C. § 101 ...................................................................................................................... Passim
35 U.S.C. § 102 ....................................................................................................................... 14, 17
35 U.S.C. § 103 ................................................................................................................. 14, 17, 19
35 U.S.C. § 282 ............................................................................................................................... 6
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INTRODUCTION
Activision’s Motion for Summary Judgment is based on a misapprehension of what constitutes
patentable subject matter under 35 U.S.C. § 101. In DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) — a case Activision does not even address, much less distinguish
— the Federal Circuit held that a claim is patent-eligible under § 101 when “the claimed
solution is necessarily rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” That is precisely the case here.
Worlds’ patents tackle a significant problem in multiplayer software: given limited
bandwidth, how can a plurality of remote users interact seamlessly in a complex 3-D environment?
The asserted claims solve that problem by teaching a specific approach to client-server
architecture: multi-criteria filtering of avatar position and state information, both at the client
side and the server side. The Court already recognized as much in its claim construction order:
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.I. 153 at 1. Accordingly, the claims make no attempt to patent an abstract principle — a mental
process, economic practice, or mathematical formula that exists independently of computers
— or implement such principles on a general purpose computer. Rather, the question posed, and
the improvement taught, exists specifically and exclusively in the realm of network computing.
That ends the § 101 inquiry: the asserted claims are directed to eligible subject matter.
Further, irrespective whether Worlds’ patents are directed to an abstract idea — they are
not — the asserted claims satisfy § 101 because they teach an inventive combination of steps that
culls avatar position and state data at multiple levels of a client-server computer architecture. Activision
has presented no evidence, clear and convincing or otherwise, calling into question the
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fact that the claimed innovation improved upon prior approaches to networked 3-D virtual
worlds software. See Research Corp. Techs. v. Microsoft, 627 F.3d 859, 868–69 (Fed. Cir. 2010)
(“[I]nventions with specific applications or improvements to technologies … are not likely to be
so abstract that they override the statutory language ... of the Patent Act”). Because Worlds’ patents
uniquely enable core functionality of networked software, the asserted claims satisfy § 101.
The Court should deny Activision’s Motion for Summary Judgment.
BACKGROUND
I. Worlds, Inc.
Worlds, Inc. was an original innovator in the field of internet-based, multiplayer, 3-D
entertainment software. Exs. 9–10.1 In the mid-1990s, Worlds developed and released two
groundbreaking software programs — Worlds Chat and AlphaWorld — that enabled remote
users to chat, over the internet, in graphically rich 3-D virtual environments. Ex. 8 ¶¶ 9–10.
Released in 1995, Worlds Chat was acclaimed in the press as “the hottest innovation the Internet
will see this year,” and deemed noteworthy for “the potential it brings to cyberspace.” Ex. 9. The
San Francisco Examiner called Worlds Chat “one of the first examples of virtual reality on the
Internet.” Ex. 10. Perhaps as a result, Worlds drew the attention of Steven Spielberg, who
“announced that his nonprofit Starbright Foundation [was] working with Worlds, Intel, UB
Networks and Sprint to create a 3-D environment where hospitalized children can play and
socialize with each other.” Id.
In connection with developing virtual worlds software, four Worlds employees
discovered novel solutions to problems in the field of computer networks. They initially set forth
their inventions in a provisional patent application filed on November 13, 1995. Worlds’ first
1 Numbered exhibits refer to the exhibits to the attached Declaration of Ryan V. Caughey.
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patent, U.S. Patent No. 6,219,045, issued on April 17, 2001. The patents-in-suit are continuations
of the ’045 Patent. Worlds, Inc. is the original assignee of the patents-in-suit.
II. Patents-in-Suit
The patents-in-suit are 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 8,145,998 (the
“’998 Patent”). They share a common specification and are all titled “System and Method for
Enabling Users to Interact in a Virtual Space.”
Worlds’ patents tackle a problem unique to networked multiuser software: how to facilitate
seamless interaction among a plurality of remote users in a 3-D world, given limitations in
network capacity. ’690 Pat. 1:38–2:32. The asserted claims solve that problem by teaching a
method for implementing a scalable client-server architecture that facilitates the efficient interaction
of remote users in a 3-D, multi-user, interactive virtual environment. Id. 1:24–42. For example,
the asserted claims disclose an invention whereby a client and server cull data associated
with users’ avatars to preserve bandwidth and enhance user experience. Id. 19:32–20:2. The disclosed
client-server system is relevant to multiplayer 3-D video games and internet chat programs,
where the positions and actions of each avatar must be communicated to other users. Id.
1:48–55. Claim 1 of the ’690 Patent and Claim 1 of the ’501 Patent are representative:
’690 Patent, Claim 1 (19:31–42) ’501 Patent, Claim 1 (19:20–38)
1. 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
1. 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 in-
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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.
formation 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;
determining, by the client device, a displayable
set of the other user avatars associated
with the client device display; and
displaying, on the client device display, the
displayable set of the other user avatars associated
with the client device display.
In line with these representative claims, the core features of the invention are (1) a user in
a virtual world (represented by a 3-D avatar), (2) with an associated client process, which
(3) monitors and sends position information to a server. In turn, the server (4) filters the received
avatar information, and (5) sends to each client position and state information for less than all of
the other users’ avatars. Finally, the client (6) determines whether to display some or all of the
avatars for which it has received position information, and (7) displays avatars as relevant.2
LEGAL STANDARD
I. 35 U.S.C. § 101
Patent protection is available for “any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof ….” 35 U.S.C. § 101. “In
choosing such expansive terms modified by the comprehensive ‘any,’ Congress plainly contemplated
that the patent laws would be given wide scope.”3 Bilski v. Kappos, 561 U.S. 593, 601
2 The claims also cover other innovations, including: (1) avatar customization (’501 Pat., Cl. 1);
(2) application of “participant conditions,” which affect display of an avatar (’998 Pat., Cl. 1); (3) monitoring avatar
orientation (’998 Pat., Cl. 18); and (4) switching between first- and third-person views (’998 Pat., Cl. 1).
3 All emphasis in this Opposition is added.
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(2010). However, patent protection is not available for laws of nature, natural phenomena, or abstract
ideas. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). The rationale behind
this exclusion is “one of preemption” — a “concern that patent law not inhibit further discovery
by improperly tying up the future use of [ ] building blocks of human ingenuity.” Id.
The Supreme Court has cautioned courts to “tread carefully in construing [§ 101’s] exclusionary
principle lest it swallow all of patent law,” because “[a]t some level, all inventions
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”
Id.; see also Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289, 1293 (2012)
(“[T]oo broad an interpretation of this exclusionary principle could eviscerate patent law.”); Cal.
Inst. of Tech. v. Hughes Comm’cns Inc., 59 F. Supp. 3d 974 (C.D. Cal. 2014) (“CalTech”)
(“[M]ost inventions today build on what is known in the art, and an improvement to software
will almost inevitably be an algorithm or concept which, when viewed in isolation, will seem
abstract.”). As such, “an invention is not rendered ineligible for patent simply because it involves
an abstract concept.” Alice, 134 S. Ct. at 2354. Inventions that apply an abstract concept “to a
new and useful end … remain eligible for patent protection.” Id. (quotation omitted).
The Supreme Court has created a two-step “framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 132 S. Ct. at 2355. First, a court must “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.” Id. Second, if the answer
to the first question is “yes,” a court must “consider the elements of each claim both individually
and as an ordered combination to determine whether the additional elements transform
the nature of the claim into a patent-eligible application.” Id.
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II. Presumption of Validity
Patents are presumed valid. See 35 U.S.C. § 282. This presumption applies to challenges
of ineligibility under 35 U.S.C. § 101. See CLS Bank Int’l v. Alice Corp. Pty., 717 F.3d 1269,
1304–05 (Fed. Cir. 2014). Therefore, as the party challenging the eligibility of Worlds’ patents
under § 101, Activision must prove ineligibility by clear and convincing evidence. See, e.g.,
DataTern, Inc. v. Microstrategy, Inc., 2015 WL 5190715, at *4 (D. Mass. Sept. 4, 2015).
Accordingly, in assessing patentability under § 101, the court should read the patents “in
the light most favorable to [Worlds].” Execware, LLC v. BJ’s Wholesale Club, Inc., 2015 WL
4275314, at *12 (D. Del. July 15, 2015); see also, e.g., Dealertrack v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (“[F]or abstractness to invalidate a claim it must exhibit itself so manifestly
as to override the broad statutory categories of eligible subject matter and the statutory context
that directs primary attention on the patentability criteria of the rest of the Patent Act.”); Wolf v.
Capstone Photography, Inc., 2014 WL 7639820, at *5 (C.D. Cal. Oct. 28, 2014) (“[A] patent
claim can be found directed towards patent ineligible subject matter if the only plausible reading
of the patent must be that there is clear and convincing evidence of ineligibility.”).
ARGUMENT
The asserted claims satisfy both steps of the § 101 analysis. First, Worlds’ patents address
eligible subject matter because they teach a specific solution to a problem unique to 3-D multiuser
software. Second, irrespective how the Court defines the purpose of the asserted claims,
Worlds’ patents add an inventive concept to the practice of filtering.
I. Step 1: Worlds’ Patents Are Not “Directed To” a Patent-Ineligible Abstract Idea
The question in Step 1 is whether the asserted claims are “directed to” a patent-ineligible
subject. Alice Corp., 134 S. Ct. at 2355. Activision contends that the asserted claims are directed
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to the abstract idea of “filtering.” MSJ at 1. Activision is wrong because the claims teach a novel
approach to client-server architecture that solves a problem unique to 3-D multiuser software.
A. A claim satisfies § 101 if it provides a solution rooted in computer technology to
overcome a problem arising in the realm of computer networks.
The first step of the § 101 analysis involves “determin[ing] what the claimed invention is
trying to achieve — and ask[ing] whether the purpose is abstract.” Enfish, LLC v. Microsoft, 56
F. Supp. 3d 1167, 1173 (C.D. Cal. 2014). “The ‘abstract ideas’ category embodies the longstanding
rule that ‘[a]n idea [ ] itself is not patentable.’” Alice, 134 S. Ct. at 2355 (quotation omitted).
The “abstract idea” question regularly arises in the context of software patents. Case law
on this issue falls into two categories. On the one hand, courts have declared ineligible claims
that call for nothing more than automation of longstanding practices using computer technology
— e.g., risk hedging (on a computer), intermediated settlement (on a computer), or other basic
practices of commerce that people used before the computing age. See, e.g., buySAFE v. Google,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to abstract ideas were “squarely about
creating a contractual relationship … that is beyond question of ancient lineage”).
On the other hand, claims that “effect an improvement in [some] technology or technical
field” are not impacted by the abstract-idea exclusion. Alice, 134 S. Ct. at 2359. As the Federal
Circuit recently explained in DDR, 773 F.3d at 1257, a computer-related claim satisfies § 101 if
“the claimed solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” In line with that standard, the
Federal Circuit and lower courts have upheld computer patents under § 101 that “stand apart because
they do not merely recite the performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the Internet.” Id.; see also, e.g.,
DataTern, 2015 WL 5190715, at *4 (rejecting § 101 challenge because, “when read as a whole,
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the patent [at issue did] not recite a computer as a post-solution limitation or a specific application
of a more generic abstract idea”); Execware, 2015 WL 4275314, at *11–12 (rejecting § 101
challenge because a computer patent improved upon prior computing methods); Helios Software,
LLC v. SpectorSoft Corp., 2014 WL 4796111, at *16–18 (D. Del. Sept. 18, 2014).
B. The asserted claims are not directed to an abstract idea.
Activision argues that, under Alice, the asserted claims are “directed to” the abstract idea
of “filtering.” MSJ at 1, 10. Activision is wrong because the claims teach a specific solution to a
problem unique to multiuser interaction over the internet.
In its claim construction order, the Court recognized that the asserted claims are directed
to solving a problem unique to networked multiuser software:
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.I. 153 at 1; see also, e.g., id. at 8 (“[T]he specification discloses an invention to solve the problem
of ‘crowd control.’”); id. at 20–23 (construing the term “avatar” as a “three-dimensional representation
of a user,” and noting that “the specification consistently refers to a threedimensional
virtual world”). The Court’s interpretation is correct. The asserted claims are directed
to the challenge of facilitating interaction among remote users in a 3-D virtual world.
The Problem. At the outset, Worlds’ patents identify the problem to be solved. In “game
playing, [ ] 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.” ’690 Pat. 1:49–53.4 But “where many client machines or processes are communicating
4 To “ascertain[ ] the basic character of the subject matter” of a patent, a court should consider not only the
claim language but also a patent specification’s description of the invention. Execware, 2015 WL 4275314, at *12;
Patents Corp. v. Active Network, 2015 WL 3852975, at *4–6 (Fed. Circ. 2015) (using specification to identify “the
character of the claimed invention” as “the idea of retaining information in the navigation of online forms”).
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with each other in real-time through the server, several problems arise.” Id. 1:37–40. For example,
“where a client-server system is used for real-time exchange of information, such as a …
virtual reality network where users … visually and aurally interact with other users … communication
is much more difficult, especially where the information is high-bandwidth data such as
audio streams, graphic streams, and image streams.” Id. 1:42–48.
That problem — the “difficulty” of using a “client-server system” for “real-time exchange
of information … where the information is high-bandwidth data” — exists only in networked
multiuser software. That fact is critical because, in DDR, the Federal Circuit rejected a
§ 101 challenge in large part because there was no real-world analogue to the “cyberspace” problem
at issue.5 The problem in DDR was that a website may lose visitors if an internet user clicks
on a hyperlink and is transported to a third-party site. 773 F.3d at 1258. The court could not identify
a real-world equivalent: “there is … no possibility that by walking up to [a] kiosk, the customer
will be suddenly and completely transported outside the … store and relocated to a separate
physical venue associated with the third-party — the analog of what ordinarily occurs in
‘cyberspace’ after the simple click of a hyperlink.” The situation here is the same. There is no
real-world analogue of the problem Worlds’ inventors faced, i.e., the risk that due to a large
number of remote users, a system could crash or performance could become sluggish. Indeed,
there is no real-life situation where, due to the presence of too many individuals in a room, one’s
consciousness shuts down, or people begin moving more slowly, stop talking, or disappear.
Worlds’ Solution. Worlds was not the first to tackle the problem of remote user interaction.
An early approach involved “peer-to-peer” architecture, where each user communicated
5 The Federal Circuit in DDR did not specify whether it found that the asserted claims satisfied Step 1 or
Step 2 of the Mayo inquiry, or both. Lower courts are not in accord on the issue. In any event, “In DDR Holdings,
the Federal Circuit strongly implied that the claims of a patent relating to the handling of Internet hyperlinks in an
online store were not directed to an abstract idea under step one.” Execware, 2015 WL 4275314, at *10 n.14 (citing
cases).
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directly with all other users. Id. 1:56–59. But peer-to-peer communication imposed heavy processing
loads and, as such, limited “the number of clients which can be connected to the network.”
Id. 1:56–61. A superior approach used a server to “broadcast” information to all users,
but as transmissions swelled in size, a broadcast approach was neither “efficient” nor “reliable”
and, in an “open network[ ] such as the Internet … [was] not even possible.” Id. 2:4–16.
As an improvement, Worlds’ patents teach an invention where a server and a client both
perform a specific culling function — filtering avatars using various criteria — to control
crowds, minimize network loads, and thus facilitate interaction of remote users in a 3-D world.
The present invention provides a highly scalable architecture for a threedimensional,
graphical, multi-user, interactive virtual world system. In a preferred
embodiment a plurality of users interact in the three-dimensional, computergenerated
graphical space where each user executes a client process to view the
virtual world from the perspective of that user.
Id. 2:24–32. As such, the asserted claims describe a virtual world server that, compared with prior
approaches to networking, is “much more discriminating as to what data is provided to each
client[]” — sending position and state information only for certain user avatars. Id. 3:42–44.
Then, to efficiently process received information, a client determines which remote user avatars
to display (which is “needed in some cases to ensure that neither client [ ] nor user [ ] get overwhelmed
by the crowds of avatars likely to occur in a popular virtual world.”). Id. 5:65–67,
5:35–37. Iterations of this innovation are disclosed in the asserted claims, including, for example
the first claims of the ’690, ’501, ’856, and’998 Patents.
Therefore, the asserted claims are like those in DDR and its progeny— and unlike claims
involving an age-old idea executed by a general purpose computer. For example:
?? In DataTern, 2015 WL 5190715, at *8, the District of Massachusetts applied DDR and
found that a software patent was not directed to an abstract idea because, “when read as a
whole,” the claims did not “recite a computer as a post-solution limitation or a specific
application of a more generic abstract idea.” The claims covered eligible subject matter
because they proposed a solution in the realm of “object-oriented programs,” which “ex-
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ists only in the realm of computers,” and because “relational databases are utilized primarily,
if not exclusively, on computers.” Id.
?? In Execware, 2015 WL 4275314, at *11, the District of Delaware applied DDR and rejected
a defendant’s § 101 challenge because the claims’ “proffered solution” was “rooted
in computer technology in order to overcome a problem specifically rooted in the
realm of computer[s].” The claims taught a method by which a computer could “rapidly
[ ] reformat displays of text data objects in terms of parameters chosen by the user, without
the aid of an instruction manual and without extensive computer training.” Id. The
court found the specification “demonstrate[d] that the most important aspect of the invention
[was] not the alleged abstract idea of ‘displaying, classifying, and organizing unspecified
information’ generally,” but was rather “the creation of an improved user interface
for more easily interacting with database and spreadsheet programs on a computer.” Id.
Accordingly, like in DDR and DataTern, the asserted claims here “specify how interactions
with [clients and servers] are manipulated to yield a desired result — a result that overrides
the routine and conventional sequence of events ordinarily [involved in client-server architecture].”
DDR, 773 F.3d at 1258. Instead of a typical client-server architecture where all avatar position
and state information would be broadcast to all users — the pre-Worlds approach — the
asserted claims teach a method of minimizing network loads while controlling crowds and improving
user experience. That subject matter is patent-eligible under § 101.
C. Activision has not proven by clear and convincing evidence that the asserted claims
are directed to an abstract idea.
Activision argues that the asserted claims are directed to “the abstract idea of filtering position
information on a computer network,” which Activision says is ineligible subject matter
under § 101. MSJ at 1. Beyond the central flaw in Activision’s argument — its complete failure
to address DDR — Activision is wrong for additional reasons.
First, Activision misreads Worlds’ patents. The Federal Circuit “has long-recognized that
any claim can be stripped down, simplified, generalized, or paraphrased to remove all of its concrete
limitations, until at its core, something that could be characterized as an abstract idea is revealed.”
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed Cir. 2013). Therefore, “[a]
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court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations
of the invention the patentee actually claims.” Id. Flouting this rule, Activision’s motion attempts
to strip all meaning from Worlds’ patents except for the basic concept of “filtering.” In so doing,
Activision ignores the true purpose and subject matter of the asserted claims. For example, claim
1 of the ’501 Patent and claim 1 of the ’690 Patent do not disclose filtering in the abstract, but
rather a multistep process for culling 3-D avatars in a virtual world.
Second, Activision misapplies § 101 case law. To begin, Activision contends that
BASCOM Global Internet Services v. AT&T Mobility, 2015 WL 2341074 (N.D. Tex., May 15,
2015), rejected “filtering claims” analogous to the claims here. Not so. The claims in BASCOM
taught a method of censoring internet content with the purpose of, for example, shielding
children from explicit materials. Worlds’ patents are different because, among other reasons, in
BASCOM there was a real-world analogue. AT&T offered evidence showing that “filtering
Internet content ha[d] a well-known concrete analog that goes back decades, when parents and
libraries forbade children from reading certain books.” Id. at *6. In turn, the court found that
AT&T’s identification of a “non-technological analog” was dispositive, explaining that the
“application of the idea [of censoring] to the internet” was ineligible under § 101. Id. But here,
Activision has not identified any real-world analogue to the identified problem or claimed
solution, neither of which has meaning outside of network computing. BASCOM is inapposite.
Activision’s citation to Fuzzysharp Technologies v. Intel Corp., 2013 WL 5955668, at
*13 (N.D. Cal. Nov. 6, 2013), aff’d 595 Fed. App’x 996 (Fed. Cir. 2015), is similarly unpersuasive.
The claims in Fuzzysharp taught a method of “identifying the parts of the surfaces in a 3-D
representation that are always visible or always invisible from a set of viewpoints, and then skipping
the calculations for that part in further rendering of the image.” Id. at *10. The court found
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that this subject matter was ineligible under § 101. Worlds’ patents are different because, in
Fuzzysharp, the claims “suggest[]ed purely mathematical efficiencies, and d[id] not require an
extensive computer interface involving multiple steps and limitations.” Id. at *13. The claimed
invention in Fuzzysharp merely taught line-of-sight occlusion for a given surface in a 3-D environment,
a geometric reality intrinsic to the translation of 3-D imagery into two dimensions. Id.
at *5. But here, the claimed improvement is much more than a “mathematical efficiency.”
Worlds’ innovation is a determinative multistep process that effected a fundamental improvement
to network architecture responsible for providing large-scale, avatar-based user interaction.
Finally, Activision relies on Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
2015 WL 1941331, at *11 (S.D.N.Y. April 28, 2015), which involved the “process of organizing
information through mathematical correlations.” The claims in Intellectual Ventures II did not
satisfy § 101 because they “fail[ed] to describe the claimed process at any level of specificity.”
Id. The court contrasted DDR, which “recited specific steps to accomplish the desired result of
retaining website traffic.” Id. Further, the court noted that the claims in DDR taught an innovation
that “change[d] [ ] the standard structure of the internet and [created] a new composite web
page.” Id. Worlds’ claims are similar to those in DDR: they recite several specific steps that
combine to teach a novel approach to remote user interaction.
Because Activision has not shown by clear and convincing evidence that the asserted
claims are directed to an abstract idea, the Court should reject Activision’s § 101 challenge.6
II. Step 2: The Asserted Claims Include an Inventive Concept
Because Worlds’ patents are not directed to an abstract idea, the Court need not reach
step two of the § 101 analysis. But irrespective how the Court characterizes the asserted claims,
6 Cf. Ameritox, Ltd. v. Millennium Health, LLC, 2015 WL 728501, at *23 (W.D. Wis. Feb. 19, 2015)
(“Nothing in Millennium’s summary judgment materials rebuts what was plainly identified on the face of the specification
as a problem in the field, nor directly rebuts the solution that the patent provided.”).
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the claims satisfy § 101 because they “contain[] an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357.
A. Inventive application of an abstract idea satisfies § 101.
An invention is not rendered ineligible simply because it involves an abstract idea. Applications
of abstract concepts “to a new and useful end” remain patentable. Alice, 134 S.Ct. at
2354. Claims directed to an abstract idea are patentable if they contain an “inventive concept” —
that is, “an element or combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. at 2355.
To determine whether a claim includes an “inventive concept,” courts assess the elements
of the asserted claims (1) “individually” and (2) “as an ordered combination” to “determine
whether the additional elements [beyond the abstract idea] transform the nature of the claim into
a patent-eligible application.” Id. at 2355. “The [ ] inquiry is whether a claim, as a whole, includes
meaningful limitations restricting it to an application, rather than merely an abstract idea.”
Ultramercial, Inc. v. Hulu, 722 F.3d 1335, 1344 (Fed. Cir. 2013).
As relevant here, “problems that arise uniquely in computing or in an internet context
weigh in favor of finding an ‘inventive concept.’” Mkt. Track, LLC v. Efficient Collaborative Retail
Mktg., 2015 WL 3637740, at *4–5 (N.D. Ill. June 11, 2015). Conversely, merely using a
computer to implement an abstract idea is not an inventive concept under § 101. See, e.g., Intellectual
Ventures I LLC v. Capital One Bank, 2015 WL 4068798, at *3 (Fed. Cir. July 6, 2015).
Finally, it bears highlighting that the question of eligibility under § 101 is separate from
the anticipation and obviousness tests under 35 U.S.C. §§ 102(a) and 103. The § 101 question is
not whether individual or combined steps had ever been disclosed in the prior art, but instead
whether a step or combination of steps added a meaningful limitation to the abstract idea. See,
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e.g., CalTech, 59 F. Supp. 3d at 989 (“[N]ovelty is of no relevance when determining patentability….
[N]either Mayo nor any other precedent defines conventional elements to include everything
found in prior art.”). Thus, as the party seeking summary judgment on invalidity, Activision
must show by clear and convincing evidence that the inventive concepts in Worlds’ patents
were “well-known” or “conventional.” Ameritox, Ltd. v. Millennium Health, 2015 WL
728501, at *23 (W.D. Wis. Feb. 19, 2015) (despite submitting an expert affidavit and prior art,
defendant did not prove by clear and convincing evidence that ordered combination of claim elements
was conventional).
B. Worlds’ patents teach a specific approach to client-server architecture that
includes an inventive concept.
The asserted claims individually and as an ordered combination disclose inventive concepts
beyond the idea of filtering. The following claims are representative:
’501 Patent, Claim 1 ’998 Patent, Claim 1
1. 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;
determining, by the client device, a dis-
1. 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;
generating, on a graphic display associated
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playable set of the other user avatars associated
with the client device display;
and
displaying, on the client device display,
the displayable set of the other user avatars
associated with the client device
display.
with the client processor, a rendering
showing position of at least one remote
user avatar; and
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.
Activision wrongly contends that the asserted claims do nothing more than teach “the
idea of filtering information” on a computer. MSJ at 1, 10. In fact, Worlds’ patents teach a method
of facilitating remote user interaction in 3-D software that is neither routine nor conventional.
That is true both when claim elements are taken individually and as an ordered combination.
First, individual elements of the asserted claims qualify as inventive concepts. Activision
admits that “Worlds’ claims are directed to the interaction of avatars with positions and orientations
in a virtual space, operating in a client-server network.” MSJ at 15. The asserted claims also
disclose avatar customization, view shifting, and interaction rooms. See, e.g.,’501 Pat., Cl. 1;
’998 Pat., Cl. 1. Activision urges the Court to ignore these features because they allegedly were
“conventional.”7 MSJ at 15. But Activision provides no clear and convincing evidence supporting
that assertion. Activision’s only evidence at all is a passing citation to two file histories,
which Activision says prove that certain claim elements were known in the art when Worlds’
patents were issued. MSJ at 16. Worlds disputes that assertion — Activision’s “evidence” does
7 Activision also argues that the asserted claims are ineligible because they allegedly fail the “machine-ortransformation”
test. MSJ at 17. That argument carries minimal weight because the machine-or-transformation test
is unhelpful when “the objective of the patent is to improve the function of computer software.” See, e.g., Execware,
2015 WL 4275314, at *13 n.19; DDR, 773 F.3d at 1258–59 (holding that software claims were patent eligible, without
applying the machine-or-transformation test, after questioning the test’s helpfulness as to evaluation of claims
involving computer-related limitations); TQP Dev., LLC v. Intuit Inc., 2014 WL 651935, at *5–7 (E.D. Tex. Feb. 19,
2014) (claim that did not appear to meet either prong of the machine-or-transformation test was nonetheless patent
eligible because it resulted in “concrete and valuable effects in the field of electronic communications”); Card Verification,
2014 WL 4922524, at *5–6 (claim was patent eligible where it resulted in “concrete effects in the field”
even if it did not involve “the physical transformation of matter”).
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not include the alleged prior art or establish anticipation or obviousness8 — but Activision’s argument
is beside the point for two reasons. First, Activision’s argument implicitly and improperly
urges the Court to conduct a truncated obviousness inquiry under § 103. But the Supreme
Court has long held that the question whether a patent “fails to satisfy the statutory conditions of
novelty under § 102 or nonobviousness under § 103” does “not affect the determination that [the
asserted] claims recited subject matter which was eligible for patent protection under § 101.” Diamond
v. Diehr, 450 U.S. 175, 191 (1981); see also id. at 190 (“The question therefore of whether
a particular invention is novel is ‘wholly apart from whether the invention falls into a category
of statutory subject matter.’”). In addition, the law is clear that a claim element “is not conventional
just because it appears in prior art.” Caltech, 59 F. Supp. 3d at 992. Rather, an element is
“conventional” only if it “is ubiquitous in the field, insignificant or obvious.” Id. Activision offers
no evidence that the elements of the asserted claims were “ubiquitous” or “conventional.”
Second, the asserted claim elements as an ordered combination disclose an inventive concept.
As the Supreme Court explained in Diamond v. Diehr and reaffirmed in Alice, improvement
of a technological process is an inventive concept that satisfies § 101:
8 Defendants urge the Court to conduct a truncated obviousness inquiry and find the patents to be ineligible for
patenting based on specific prior art references, all without actually considering (1) the scope and content of the prior
art, (2) differences between the prior art and each claim limitation, (3) the level of ordinary skill in the art, and (4)
secondary considerations of non-obviousness. KSR Int’l v. Teleflex, 550 U.S. 398, 406 (2007). That is improper. In
any event, Activision’s argument fails. Activision plucks individual PTO rejections from the file histories of the
’501 and ’998 Patents, but the Examiner later allowed Worlds’ claims, stating, for example:
Applicant has claimed uniquely distinct features in the instant invention which are not found in the prior art
either singularly or in combination. They are 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; determining,
by the client device, a displayable set of the other user avatars associated with the client device
display; and displaying, on the client device display, the displayable set of the other user avatars associated
with the client device display. Those features are not found or suggested in the prior art.
Ex. 5 at 5; see also Ex. 7 at 3.
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[A] new combination of steps in a process may be patentable even though all the
constituents of the combination were well known and in common use before the
combination was made. The “novelty” of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable subject
matter.
Diehr, 450 U.S. at 188–89; see also CalTech, 59 F. Supp. 3d at 980 (“[C]ourts should remember
that a series of conventional elements may together form an unconventional, patentable combination.”).
That is the case here. Irrespective whether any individual claim element is an “inventive
concept,” the asserted claims as a whole teach a multistep process whereby a server receives position
information of avatars associated with network clients; the server filters the received positions
and then sends bespoke packets to each client; and the client, in turn, can further determine
which avatars to display. That combination was inventive and not overbroad. On this point, Activision
provides no evidence — no expert testimony, no evidence of the state of the art, and no
prior art other than a passing reference to the file histories of two of the five patents-in-suit —
that the ordered combination of elements was “conventional.” That alone is fatal to Activision’s
position. Discussion from the recent case of Ameritox v. Millennium Health is instructive:
Millennium argues that … the detection and normalization steps must be discounted
because they exist in the prior art, leaving only an abstract idea at the
comparative step. Essentially, Millennium appears to assert that any additional
steps beyond the abstract idea do not elevate the claim to “inventive concept,”
because each step was either “established” or “conventional.” Not so under Alice….
Millennium infers that because creatinine normalization was mentioned in the
George article, someone skilled in the art would know to simply combine the
normalization step with the detection and comparative steps. Millennium argues
that this finding is also supported by Dr. Wu, who opined that for § 101 purposes,
“neither the individual claim steps of the patented methods nor the series of claim
steps in the patented methods are novel.”
In reviewing the experts’ reports, however, there is nothing that supports a finding
that the combination of the steps is routine and conventional. For example,
Dr. Wu merely isolates the prior art in disparate references, but provides no meaningful
rationale for why they would be combined….
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When looking at a combination patent, what courts most want to know is: who
would have thought to combine the known elements in the first place and why.
Providing such evidence is even more important for a moving party in the summary
judgment context, where all “reasonable inferences” are made in the light
most favorable to “the nonmoving party.” When, as here, Millennium is asking
the court to infer that the combination of elements is conventional, it must supply
some evidence to convince the trier of fact to accept its version of events.
Since those facts are lacking here, Millennium's position is necessarily rejected….
[E]vidence of combination helps to guard against hindsight bias. To ignore this
concern would provide a ‘blank check’ to all those who challenge patents without
sufficient legal or evidentiary basis. Given that Alice now expressly requires
that courts look at patented elements in combination when assessing inventive
concept (as did Mayo), the concern of hindsight bias has as much relevance to a
§ 101 challenge as it does a § 103 challenge.
2015 WL 728501, at *24–25 (citations omitted); see also Prism Techs., LLC v. T-Mobile USA,
No. 8:12-cv-00124 (D. Neb. Sept. 22, 2015) (order denying summary judgment under § 101);
Card Verif. Sol’ns v. Citigroup, 2014 WL 4922524, at *5 (N.D. Ill. Sept. 29, 2014).
Here, Activision provides no rationale for why, even if any elements were disclosed in
the prior art, one skilled in the art would think to combine them. And the evidence from Worlds’
patents — which describe the problem faced and the claimed improvement — shows that the
claims here, like those in DDR, do “not broadly and generically claim ‘use of the Internet’ to perform
an abstract business practice”; instead, they “specify how interactions with the Internet are
manipulated to yield a desired result — a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink.” DDR, 773 F.3d at 1259. When
considered as an ordered combination, the asserted claims cover eligible subject matter.
C. The asserted claims do not preempt a building block of ingenuity.
The § 101 inquiry is motivated in large part by concerns of preempting basic tools of human
ingenuity. Alice, 134 S. Ct. at 2354. Preemption, however, is no concern here. The asserted
claims include significant limitations — including the notable limitation that the claims apply
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only to the culling of “avatars,” which the Court interpreted as a “three-dimensional representation
of a user” — that eliminate any risk of the claims preempting broad other applications of the
concept of “filtering.” Moreover, Worlds’ patents claim only one specific solution to facilitating
remote user interaction. Worlds’ patents leave open other potential approaches to minimizing
network loads in the context of remote user interaction — for example, by reducing graphical
complexity, limiting the type of objects that can appear, or constraining the actions an avatar
could undertake. Worlds’ patents therefore do not attempt to claim the “building blocks of human
ingenuity,” but rather they claim “patent-eligible applications” of technology-enhancing
concepts. Id. at 2354.
Activision attempts to avoid this analysis by pointing to Worlds’ purported “concession”
that the client-server architecture disclosed in the patents is only an “example” among a “variety
of applications.” MSJ at 15. Activision draws the wrong conclusion. To be certain, the approach
disclosed in Worlds’ patents has built-in flexibility. Worlds’ innovations can be used, for example,
in multiplayer video games, internet chat rooms, or 3-D business-to-business software applications.
That is typical of patents: an internal combustion engine, for instance, could be used in a
car, airplane, or factory. But flexibility does not render an innovation abstract. See, e.g., CalTech,
59 F. Supp. 3d at 990 (“The court must be wary about overstating this [preemption] concern. By
definition, every patent preempts an area of technology. A patentee with a groundbreaking invention
is entitled to monopolize a segment of technology ….”). Worlds’ patents are directed to
a specific improvement to multiuser 3-D software and extend no further.
CONCLUSION
The Court should deny Activision’s Motion for Summary Judgment.
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Dated: September 25, 2015 Respectfully submitted,
Worlds, Inc.
By its attorneys,
By: /s/ Ryan V. Caughey________
Max L. Tribble (admitted pro hac vice)
[e-mail]
Chanler Langham (pro hac vice pending)
[e-mail]
Ryan Caughey (admitted pro hac vice)
[e-mail]
Susman Godfrey L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]
Joel R. Leeman (BBO # 292070)
[e-mail]
SUNSTEIN KANN MURPHY & TIMBERS LLP
125 Summer Street
Boston, MA 02110-1618
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff Worlds, Inc.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 25 of 26
CERTIFICATE OF SERVICE
I certify that on the above date, this document was filed through the ECF system and
thereupon sent electronically to the registered participants as identified on the Notice of Electronic
Filing (NEF).
/s/ Ryan V. Caughey
Ryan V. Caughey
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