| | Worlds Inc
Founded in 1994, Worlds Inc. invented and patented technology to solve problems associated with large-scale 3D multi-user environments, known as virtual worlds.
Worlds secured an early priority date by filing a provisional application with the USPTO in Nov, 1995. Within a year, Worlds filed a non-provisional patent application, claiming the priority date of their 1995 provisional application.
Worlds has pursued additional claims associated with their invention through a series of continuing patent applications, amassing a substantial patent portfolio:
|Filing Date ||Patent Number ||Issue Date |
|Nov 13, 1995 ||app 60/020,296 ||provisional |
|Nov 12, 1996 ||6,219,045 ||Apr 17, 2001 |
|Aug 3, 2000 ||7,181,690 ||Feb 20, 2007 |
|Nov 2, 2006 ||7,493,558 ||Feb 17, 2009 |
|Jan 13, 2009 ||7,945,856 ||May 17, 2011 |
|Mar 19, 2009 ||8,082,501 ||Dec 20, 2011 |
|Mar 19, 2009 ||8,145,998 ||Mar 27, 2012 |
|Apr 8, 2011 ||8,161,385 ||Apr 17, 2012 |
|Apr 11, 2011 ||8,407,592 ||Mar 26, 2013 |
|Jun 16, 2011 ||8,640,028 ||Jan 28, 2014 || |
Their patent portfolio remains in force until Nov, 2016 (20 years from the filing date of their first non-provisional patent application).
Worlds v. Activision
On Mar 30, 2012, Worlds filed a patent infringement lawsuit against Activision. Worlds’ lawsuit seeks monetary damages as well as a permanent injunction barring the manufacture and sale of infringing devices. Additionally, the complaint accuses Activision of willfully infringing and seeks an award of exemplary damages, attorneys' fees, and related court costs.
Susman Godfrey is representing Worlds, without fee, unless the lawsuit is successful or is favorably settled out of court. Susman Godfrey is considered the top litigation boutique in the country. Max Tribble, lead counsel of Susman Godfrey, is the lead counsel for Worlds. Tribble has an extensive track record of patent infringement lawsuit wins and settlements for plaintiffs in lawsuits against large corporations, including:
Paltalk v. Microsoft
Mass Engineered Design v. Ergotron & Dell, et al
Sky Technologies v. Oracle
Sky Technologies v. IBM
November 30, 2016
The Unites States Patent Trial and Appeal Board (PTAB) issued a ruling in Bungie, Inc (Developer Partner of Activision Blizzard) v. Worlds, Inc. validating certain key patent claims governing multiplayer interaction. 12 Claims were validated over 3 Patents. IPR PTAB Validation on Worlds Patent 8145998 Claims 2,3,7,8, 11-18
IPR PTAB Validation on Worlds Patent 7493558 Claims 5, 7
IPR PTAB Validation on Worlds Patent 7181690 Claims 4, 8, 13, 16
December 5th 2016:
Worlds (WDDD) as well owns 9.3% of Marimed (Nasdaq; MRMD) as of the 12/31/16 financial statement
December 6th 2016
Worlds Inc. (OTC QB:WDDD) is a leading intellectual property developer and licensee of patents related to 3D online virtual worlds. The Company has a portfolio of 9 US patents (6,219,045; 7,181,690; 7,493,558; 7,945,856; 8,082,501; 8,145,998; 8,161,385 8,407,592& 8,640,028) for multi-server technology in 3D applications, notably Virtual Worlds. The earliest of these patents issued on an application filed November 12, 1996. A provisional patent application, serial number 60/020,296, was filed on November 13, 1995.
These patents are related to each other and disclose and claim systems and methods for enabling users to interact in a virtual space. Worlds Inc. filed a patent infringement lawsuit against Activision Blizzard, Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. in the United States District Court for the District of Massachusetts on March 30, 2012.
Activision's World of Warcraft and Call of Duty video games have been identified in the complaint as infringing on Worlds' patents. Max L Tribble, lead counsel of Susman Godfrey L.L.P, will be lead counsel for Worlds in the suit.
The Markman hearing for the patent infringement suit by Worlds Inc. against Activision Blizzard, Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. (Activision Blizzard et al) (Nasdaq: ATVI), was held October 3, 2014 to address various aspects of the infringement suit claims and how the words in the 11 disputed 'constructions' in the claims should be construed for jury consideration. On June 26, 2015 Judge Denise Casper of the United District Court for the District of Massachusetts ruled in favor of certain Worlds key definitions and interpretations governing the construction claims. Activision Blizzard the defendant in this action became “time-barred” to file an action to challenge the Patents using the only “other” venue that has the authority to disqualify the patents, The United States Patent Trial and Appeal Board.
December 6th 2016:
Worlds current Federal Trial is on mutual consent hold pending the disposition of the validation or denial action of the PTAB. The Company's principle goal will be to continue to grow its IP portfolio, while protecting and monetizing it through patent infringement litigation. In addition, Worlds Inc. intends to be active in the creation and acquisition of related digital media technologies and patents that complement their current patent portfolio and that broaden the features, versatility and reach of the technology to allow for its utilization in the broadest possible way.
December 20th 2016
Worlds to Appeal to Federal Circuit on PTAB Rulings, Claims Marketwire "Press Releases" August 25, 2017
BOSTON, MA -- (Marketwired) -- 12/20/16 -- Worlds Inc. (OTCQB: WDDD) intends to file an appeal of recent Patent Trial and Appeal Board (PTAB) rulings to the United States Court of Appeals for the Federal Circuit regarding Worlds' seminal technology that has been fundamental to the development of massively multiplayer online role-playing gaming (MMORPG) into a $20-billion dollar industry. Worlds' current investors plan to exercise their warrants to fund the appeals and ongoing business operations.
Appellate Case #17-1481
Bungie, Inc. files a reply to the Unites States Court Of Appeals arguing that Worlds IPR case should be upheld from the previous PTAB (Patent Trial and Appeal Board) Order. The PTAB is an Executive Branch Agency empowered by Congress under the American Invents Act- Currently under scrutiny by the Supreme Court under Oil States Energy Services LLC v. Greene’s Energy Group, LLC Case 16-712 ). The filing for Bungie is open as of 8/29/2017 included below:
**UPDATED** Worlds Reply Brief to Bungies Reply of the above 9/22/2017
***UPDATED** 10/23/2017 Worlds case is partially dependent on the Wi-Fi One En Banc Appellate decision due out anytime. Worlds alleges that Bungie is acting in concert (privity)with Activision Blizzard ( a time barred Plaintiff for IPR purposes). Today there is no precedent to allow the PTAB Director or Board to be challenged with Judicial Review from the Courts. Wi-Fi one asks the courts to reverse Achaides and allow "judicial review"
"Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?"
***UPDATED** 1/8/2018 Wi-Fi One WINS ruling on Judicail Review for the Time Bar. Worlds can advance the argument the PTAB erred in allowing Bungie, Inc to file as they were Time Barred.
BOSTON, March 12, 2018 (GLOBE NEWSWIRE) -- Worlds Inc.’s (OTCQB:WDDD) oral argument in its appeal of three Inter Partes Review (IPR) decisions issued in 2016 from the U.S. Patent & Trademark Office Patent Trial & Appeal Board (USPTO PTAB), was held before U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, March 9, 2018. All three of the judges handling Worlds’ appeal, Chief Judge Prost, Judge O’Malley, and Judge Taranto, were in the majority opinion in an earlier case, Wi-Fi One, LLC v. Broadcom Corp., in which the CAFC confirmed that patent owners could appeal whether an IPR petition was filed too late under the law and therefore had to be vacated. CAFC decisions usually take three to four months to issue after oral argument, and a ruling on World’s appeal could issue by early- to mid-summer of 2018.
Since Wi-Fi One’s significant, precedent-setting ruling on January 8, 2018, Worlds’ appeal is the first case before the CAFC to seek the federal court’s oversight of the PTAB’s handling of the time-bar question.
“We are pleased with the CAFC selection of the judiciary panel which heard and will determine the outcome of our appeal,” stated Thom Kidrin, CEO of Worlds Inc. “The Court allotted extra time during the oral arguments, indicating the Judges’ keen interest in the Related Party of Interest (RPI) issues pertaining to Bungie’s relationship with Activision in our case, and whether Bungie’s IPR Petitions were filed too late under the law as a result of that relationship. Thanks to the Wi-Fi One ruling, which established the CAFC’s right to review how the PTAB is handling RPI questions, the CAFC panel was very prepared and engaged.”
“The probing and pointed questions of the Judges indicated a firm grasp of the details and nuances of Worlds’ case, and a desire for equity as well as a proper application of the law in their inquiry,” added Mr. Kidrin.
The oral arguments can be heard at: http://oralarguments.cafc.uscourts.gov/Audiomp3/2017-1481.mp3
The CAFC has the authority to vacate the PTAB ruling or remand the matter of the appealed IPRs back to the PTAB for reconsideration with guidance from the CAFC.
Worlds was represented before the Federal Circuit by Wayne M. Helge of Davidson, Berquist, Jackson & Gowdey, LLP, who handled the IPRs before the PTAB, and is represented in the federal district court litigation by Susman Godfrey L.L.P.
More information on the lawsuit and Worlds’ patents can be found on the Worlds.com website.