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Go ahead or just talk.
Kidrin hasn’t drawn a salary from RLBD for over 3 years. Has in fact loaned the company $500k. Do you ever read 10ks?
To be clear, Worlds incorporated the license to the IP/patents within the agreements with the named entities that Worlds developed products for and with.
Those products generated $millions in revenue from 1905-2022. (SEC filings) There still is revenue, albeit small from ViP memberships.
By way of IP license fees, Worlds had 2 clients (E- New Media and CokeChina) that paid over $3 Mil for the license and development as well as an ongoing royalty.
The amount of money generated by patent license fees is not and should not be a determinate in the validity of a patent.
Worlds paid for and maintained the patents issued after years of review by the USPTO which by definition were valid or the Federal Court would never have taken the case.
The true problem Worlds had to deal with was the changing patent litigation landscape that the AIA ie IPRs brought to the table which was backed by big tech who benefited buy invalidating the very IP they were infringing and didn’t want to pay royalties on. Thus the patent troll narrative was born.
It’s no coincidence the Michelle Lee, former head of Google patent litigation was named the USPTO commissioner at Eric Schmit’s recommendation and she brought the lawyers from Google and the other tech giants into the patent office and suddenly over 75% of valid patents were invalidated and guess who benefited?
Incorrect, Worlds developed publicly available products for Aerosmith, British Telecom, MTV, DMC, NY Yankees, WWE, ShinWa Telecomm Japan, Coke China, and the VA with its technology and continued to develop the technology.
The outcome in the courts would not have changed as Worlds is not or has never been a “patent troll” that is a moniker attributed to Worlds by Activision and other infringers. There is no truthful basis in that accusation or any legal merit.
The tech was developed and practiced by Worlds from 1996-2022.
The filing with SCOTUS is based on that court requesting an opinion from the Solicitor General on the many issues raised by101and the internal disputes on 101 rulings by the CAFC and Federal District courts.
These comments reflect an underlying lack of understanding of Worlds history, and it’s ongoing positioning.
The major significance in today’s environment are:
Accessible high speed internet connectivity
Faster processors with graphic capabilities
A cultural familiarity with online games and multiuser environments
Zuckerberg’s commitment of $ Billions to the”Metaverse”
All of that costs money and many
$ millions were spent on development between 1997-2001 and again in 2007-2009
That was the point of the infringement litigation, to fund development.
Oh really, what was Bowie World, Aerosmith World, DMC World, WWE World, NYYankees World, British Telecom World, Hanson World, MTV , Coca Cola China World and Worlds Chat still up and running since 1998? Nothing with the patents!
Grifters? That clearly articulates your true position.
You’re a Monday morning quarterback.
IPR defense, says you, is not $1mil only $500 K. Based on what? Your gut, get real!
S&G is a patent litigation firm on contingency, not an IPR and Appeal defense firm on contingency.
Threats of lawsuits against law firms for frivolous lawsuits, whether baseless or not cost money. Are you the shareholder paying for that?
You’re so self assured that TX was a path to victory. perhaps money grows on trees.
The one thing you are right about is you don’t know what you don’t know and that’s quite a lot to have such so certain opinions on.
1 it’s spelled Kidrin not Kidron
2. Kidrin doesn’t control the courts docket
12 years is what it took not because there was any controllable delay
3. Software dev costs money. BTW did you approach the company to invest in a PPM as other so called friends and insiders did or did you just buy a lottery ticket
4. As far as Old Owl, if he had been in for 12 years then he had a windfall with the tax free dividend of Marimed. 100k shares was worth over $750k for free. His being offended by Kidrin comment as I understand it was based on his incessant calling for updates and to shoot the shit multiple times weekly until he was told to keep his power dry and back off.
Well guess what, Microsoft filed an IPR that was allowed, which would have been another $1mil and 1 year of a rerun.
No thanks!
Stay tuned
Would you like to wager all of your shares on that statement?
You’ve been obsessed with Kidrin’s salary for quite a while.
Has he kept Worlds alive for 23 years?
BTW, He drew no salary from 2001-2007.
Never took a raise in employment agreements for 23 years.
Gave up to the company 7.5 mil or his own 15 mil options to avoid default on Hudson Bay’s death spiral note conversation .
Repriced his 7.5 mil options left at a option price twice as high as his original options.
Spun off Worlds Online as a tax free dividend with Worlds keeping 18% enabling it to operate without dilution for years.
Got Susman Godfrey on a contingency agreement with their lead litigator Max Tribble as Worlds lead attorney based on the quality of the patents.
Raised $ millions to fight the IPR and won.
Funded the appeal which was today denied.
I guess in your world he should have done all this for free for you and other shareholders to benefit if successful otherwise he’s entitled to nothing?
Your logic is about as sound as Putin’s invasion of Ukraine
it seems they are strictly reading what the claim states and not the specification and the dependency on claim 1
Judge Hughes stated he believes there is a valid patent based on the history and press but can he persuade the other 2 is the question
The overarching issue is that non of Judge Casper’s ruling should stand as she relied on the IPR rulings prior to remand and as Chief Judge Moore stated” the IPR has no bearing here”
https://cafc.uscourts.gov/home/oral-argument/daily-schedule/
At 9am tomorrow, this page should be updated to list the Tuesday judges assigned to different panels. Click Room 201 for Worlds panel, and then there should be a link for streaming, which should begin around 10am. I believe Worlds argument may go off around 11 or 11:15am (best guess).
Worlds Inc. vs. Microsoft in Patent Infringement Lawsuit Related to “Minecraft ”
Boston, MA, Sept. 29, 2020 (GLOBE NEWSWIRE) -- Worlds Inc. (OTCQB: WDDD), a leading intellectual property developer and licensor of patents related to 3D online virtual worlds, on Sept. 25th, 2020 filed a complaint, for patent infringement against Microsoft Corporation, a Washington corporation based in Redmond, Washington. In the complaint, Worlds accuses Microsoft and its “Minecraft” video game product of infringing Worlds' U.S. Patent No. 8,082,501, titled “System and Method for Enabling Users to Interact in a Virtual Space” (the “’501 Patent”).
The ’501 Patent was previously asserted against Activision Blizzard, Inc., though that litigation was temporarily suspended after the patent’s validity was challenged in 2015 in an inter partes review petition filed by Bungie, Inc. with the U.S. Patent & Trademark Office’s Patent Trial and Appeal Board (PTAB). The defense of the ’501 Patent included a trip to the U.S. Court of Appeals for the Federal Court (CAFC), where Worlds’ legal team, led by Wayne M. Helge of Davidson, Berquist, Jackson & Gowdey, LLP (DBJG), convinced the CAFC that the PTAB had applied an incorrect test as part of its analysis. Finally, on January 14, 2020, the ’501 Patent emerged from the inter partes review process with all claims intact.
“Our expert legal team at DBJG defended the ’501 Patent before the PTAB, and convinced the CAFC to reverse and remand unfavorable PTAB decisions against Worlds’ patents," stated Thom Kidrin, Worlds Inc. CEO. “The CAFC’s ruling instructed the PTAB to reconsider the methods it used to evaluate the relationship between Activision and Bungie, and provided strong guidance on the rules to follow on remand. In January of this year, the PTAB dismissed all of Bungie’s challenges against the ’501 Patent. Then in April, Worlds successfully convinced the U.S. District Court in Massachusetts to lift the stay on Worlds’ active litigation against Activision, and that case is now proceeding toward trial. Meanwhile, Worlds asserted another of its patents against Linden Lab’s “Second Life” product. Bringing this latest case against Microsoft is the next step in our ongoing process of enforcing Worlds’ intellectual property rights against companies that have been using our proprietary technology.”
In addition to DBJG, Worlds has the experienced litigation team at the Etheridge Law Group of Southlake Texas, including Jim Etheridge and Ryan Loveless, providing support in enforcement of Worlds’ patent rights.
Kidrin noted, “Our ’501 Patent is a fundamental building block to the functionality and success of numerous 3-D, computer-generated, multi-user, interactive virtual world systems and games that have been developed over multiple years and are enjoyed by millions of people globally. While we are excited by the popularity of these games, we want to ensure that we and our shareholders receive just compensation for the system and method we developed that helped make these types of products possible.”
# # #
About Worlds Inc.
Worlds, Inc. (OTCQB: WDDD), is a leading intellectual property developer and licensee of patents related to 3D online virtual worlds. The Company has a portfolio of 10 U.S. patents for multi-server technology for 3D applications. 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. For additional information about Worlds, Inc., please visit: www.Worlds.com.
About Davidson, Berquist, Jackson & Gowdey, LLP
DBJG ranked as one of the top 15 law firms or corporate legal departments measured by the number of representations in Inter Partes Review, Covered Business Method, and Post-Grant Review proceedings before PTAB in 2015. Docket Navigator's 2015 Year in Review identified DBJG’s Wayne Helge as a top 10 attorney in the PTAB. https://www.davidsonberquist.com/
About Etheridge Law Group –
Etheridge Law Group, has developed a reputation as a trusted advisor in every aspect of developing Intellectual Property, including litigation, licensing, and negotiations. The Group has been involved in over 550 patent litigations and has been lead counsel in the past 300 cases. To date, Etheridge Law Group has cost-effectively handled 100+ Inter Parties Reviews (IPRs) proceedings before the Patent Trial and Appeal Board (PTAB).
Forward-Looking Statements
This release contains certain forward-looking statements and information relating to Worlds Inc. that are based on the beliefs of Worlds' management, as well as assumptions made by and information currently available to the Company. Such statements reflect the current views of the Company with respect to future events including estimates and projections about its business based on certain assumptions of its management, including those described in this Release. These statements are not guarantees of future performance and involve risk and uncertainties that are difficult to predict. Additional risk factors are included in the Company’s public filings with the SEC. Should one or more of these underlying assumptions prove incorrect, actual results may vary materially from those described herein as “hoped,” “anticipated,” “believed,” “estimated,” “should,” “preparing,” “expected” or words of a similar nature. The Company does not intend to update these forward-looking statements.
Contacts:
Media Relations: Julie Shepherd, Accentuate PR, julie@accentuatepr.com, 847 275 3643
Investors: Thom Kidrin, Thom@worlds.com, (617) 725-8900
https://public.mad.uscourts.gov/seating-signup.html
Tomorrow hearing open to public,
Must register before hand.
Management doesn’t engage in meaningless PR without substance.
Strategic plans put out in press releases and posted on message board are also read by targets and used to prepare defenses. What team or company let’s their opponent know their game strategy in advance.
For what? To pimp a stock?
That’s not the company’s MO.
Foolish suggestions.
Case: 17-1481 Document: 47-1 Page: 1 Filed: 09/07/2018
United States Court of Appeals for the Federal Circuit
______________________
WORLDS INC.,
Appellant
v.
BUNGIE, INC.,
Appellee
______________________
2017-1481, 2017-1546, 2017-1583
______________________
Appeals from the United States Patent and Trade- mark Office, Patent Trial and Appeal Board in Nos. IPR2015-01264, IPR2015-01319, IPR2015-01321.
______________________
Decided: September 7, 2018
______________________
WAYNE MICHAEL HELGE, Davidson Berquist Jackson & Gowdey, LLP, McLean, VA, argued for appellant. Also represented by GREGORY A. KRAUSS, ALDO NOTO.
MICHAEL T. ROSATO, Wilson, Sonsini, Goodrich & Rosati, PC, Seattle, WA, argued for appellee. Also repre- sented by MATTHEW A. ARGENTI, Palo Alto, CA; RICHARD TORCZON, Washington, DC.
______________________
Before PROST, Chief Judge, O’MALLEY and TARANTO, Circuit Judges.
Case: 17-1481 Document: 47-1 Page: 2 Filed: 09/07/2018
2 WORLDS INC. v. BUNGIE, INC.
PROST, Chief Judge.
Appellant Worlds Inc. (“Worlds”) appeals the final de- cisions of the Patent Trial and Appeal Board (“Board”) invalidating three patents in three inter partes reviews (“IPRs”). Because we hold that the Board erred in its real-party-in-interest analysis, we vacate its decisions and remand for proceedings consistent with this opinion.
I
This consolidated appeal involves three related pa- tents: U.S. Patent Nos. 7,945,856 (“the ’856 patent”); 8,082,501 (“the ’501 patent”); and 8,145,998 (“the ’998 patent”) (collectively, the “patents-on-appeal”).1 These patents generally relate to the computer-generated dis- play of avatars in a virtual world, including methods and systems to determine which particular avatars are dis- played in a given situation.
In 2012, Worlds asserted the patents-on-appeal, among other patents, against Activision Publishing, Inc. (“Activision”) and other related entities in the District of Massachusetts. J.A. 2992–3002 (Compl.), 4902–04 (Am. Compl.). Activision develops, publishes, licenses, and distributes videogames. In the district court litigation against Activision, Worlds accused certain videogames, such as Call of Duty, of infringing claims of Worlds’s patents.
Appellee Bungie, Inc. (“Bungie”) is an independent videogame developer that has developed games such as Halo. Bungie also developed the series of products rele- vant to these appeals—the Destiny products. Destiny is developed by Bungie and distributed by Activision.
The case numbers of the IPRs on appeal are: IPR2015-01264 (the ’856 patent); IPR2015-01319 (the ’501 patent); and IPR2015-01321 (the ’998 patent).
1
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WORLDS INC. v. BUNGIE, INC. 3
Bungie is not a party to the litigation between Worlds and Activision. In November 2014, however, Worlds notified Activision that it intended to add Destiny as an additional accused product in the district court litigation. J.A. 2944. Approximately six months after Worlds noti- fied Activision of its intent to add Bungie’s products to the litigation, Bungie filed six IPR petitions, including the three IPRs at issue in this case, challenging Worlds’s patents.2 These petitions were filed more than one year after Activision had been served with a complaint alleging infringement of the patents challenged in the IPR peti- tions.
Soon after Bungie filed its IPR petitions, Worlds moved under 37 C.F.R. § 42.51(b) for routine discovery or, alternatively, additional discovery, requesting infor- mation regarding whether Activision should have been named as a real party in interest to the proceedings, thus making the petitions time-barred under 35 U.S.C. § 315(b). J.A. 394–405.3 To support its request for dis- covery, Worlds submitted evidence of a Software Publish- ing and Development Agreement (“DevPub Agreement”) between Bungie and Activision.4
The DevPub Agreement provides that the Destiny products would be developed by Bungie and published by Activision. Under the Agreement, Bungie is responsible for conducting “legal reviews of the Products to ensure
2
The case numbers of the IPRs that are not on ap-
peal are: IPR2015-01325 (the ’998 patent); IPR2015-
01268 (U.S. Patent No. 7,181,690); and IPR2015-01269
(U.S. Patent No. 7,493,558). Worlds did not appeal the
final written decisions in these three IPRs.
The same motion was filed in all six pending
3
IPRs. J.A. 394 n.1.
Worlds discovered the DevPub Agreement
4
through its own independent investigation. See J.A. 400.
Case: 17-1481 Document: 47-1 Page: 4 Filed: 09/07/2018
4 WORLDS INC. v. BUNGIE, INC.
that all Intellectual Property and other rights are fully cleared for use.” J.A. 2924. Such “legal reviews” are “subject to prior review and approval of Activision, (budg- et to [sic] mutually approved) such approval not to be unreasonably withheld.” Id. The Agreement also con- tains certain representations and warranties, as well as indemnity provisions. J.A. 2933–36. And, the Agreement contemplates financial support from Activision to Bungie for development of the Destiny products. J.A. 2928–29.
Based on the DevPub Agreement, Worlds’s discovery motion contained six specific requests for production seeking further details of the relationship between Ac- tivision and Bungie. J.A. 394–97. Bungie opposed the motion for discovery, J.A. 407–18, and the Board denied the motion in its entirety, J.A. 423–32. In doing so, the Board concluded that Worlds had not shown more than a “mere allegation” that something useful would have been found through the requested discovery. J.A. 430.
Four days later, Worlds filed its pre-institution Pre- liminary Response, arguing that Bungie should have named Activision as a real party in interest. J.A. 434–77, 3841–49, 5047–57. In its decisions to institute, the Board rejected Worlds’s argument, concluding that “Patent Owner has not demonstrated that Activision is an un- named real party in interest in this proceeding.” J.A. 511, 3878, 5095.
The Board issued final written decisions in these three IPRs on November 10, 2016; November 28, 2016; and December 6, 2016. In these final decisions, the Board reiterated its rejection of Worlds’s real-party-in-interest argument by referring back to the analysis in its institu- tion decisions. J.A. 106–07, 194–95, 258–59. Finding the petitions not time-barred, the Board proceeded to address the patentability of the instituted claims.
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WORLDS INC. v. BUNGIE, INC. 5
Worlds timely appealed each final written decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
II
This consolidated appeal presents two issues. First, Worlds contends that Bungie’s IPR petitions were time- barred because an alleged real party in interest, Ac- tivision, had been served with a complaint alleging in- fringement of these patents over one year prior to the IPRs’ filing dates. Second, Worlds appeals the Board’s substantive obviousness analysis.
A
Under 35 U.S.C. § 312(a)(2), an IPR petition “may be considered only if . . . the petition identifies all real par- ties in interest.” Correctly identifying all real parties in interest with respect to each IPR petition is important, as the determination may impact whether a petition may be instituted. See 35 U.S.C. § 315(a)(1) (concerning a real party in interest’s civil action challenging the patent’s validity); id. § 315(b) (concerning a patent owner’s civil action against a real party in interest). It may also limit the arguments available in subsequent proceedings. See id. § 315(e). In this case, Worlds argues that Bungie’s IPR petitions were time-barred under § 315(b) because they were filed over one year after Worlds served Ac- tivision, the alleged real party in interest, with a com- plaint alleging infringement of the challenged patents.5
The parties’ briefing in this case occurred prior to this court’s en banc decision in Wi-Fi One, LLC v. Broad- com Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc). As such, Bungie in its briefing relied on Achates Reference Publishing, Inc. v. Apple Inc. to argue that the Board’s real-party-in-interest determination for purposes of
5
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6
WORLDS INC. v. BUNGIE, INC.
On appeal, Worlds contends that the Board placed the burden of persuasion on the patent owner to prove that Bungie’s petitions were time-barred under § 315(b) be- cause Activision was a real party in interest, and that this allocation of the burden was error. These appeals there- fore require us to determine the appropriate burden framework for analyzing the real-party-in-interest deter- minations in these IPRs. Worlds has not sought review of the Board’s order denying Worlds’s motion for discovery on this issue.
1
Absent from the Board’s analysis of the real-party-in- interest issue is any clear statement of what, if any, burden framework the Board used to analyze the evidence presented in these IPRs, including an identification of which party the Board viewed as bearing the burden of persuasion.
Both Worlds and Bungie point us to Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. as representing a burden framework used by other Board panels in the real- party-in-interest analysis. See IPR2013-00453, Paper 88 (P.T.A.B. Jan. 6, 2015). Although there is no indication that the Board relied on Atlanta Gas Light in these ap- peals, we find it appropriate to begin our analysis with that decision, given the parties’ focus on that framework.
evaluating the time bar under § 315(b) is not subject to review by this court. 803 F.3d 652, 659 (Fed. Cir. 2015), overruled by Wi-Fi One, 878 F.3d at 1367. In Wi-Fi One, the court overruled Achates and held that the § 314(d) bar on the appeal of the Director’s determination of whether to institute an IPR proceeding does not apply to the Board’s time-bar determinations under § 315(b), thus making such time-bar determinations reviewable on appeal. Wi-Fi One, 878 F.3d at 1367.
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WORLDS INC. v. BUNGIE, INC. 7
Under Atlanta Gas Light, the Board generally accepts an IPR petitioner’s identification of the real parties in interest at the time the petition is filed. Atlanta Gas Light, Paper 88 at 7 (citing ZOLL Lifecor Corp. v. Philips Elec. N. Am. Corp., IPR2013-00606, Paper 13 at 7 (P.T.A.B. Mar. 20, 2014), which cites 77 Fed. Reg. at 48,695).6 Atlanta Gas Light explained that this initial acceptance “acts as a rebuttable presumption” that bene- fits the IPR petitioner. Id. Quoting Federal Rule of Evidence 301, the Board stated that “[t]he party against whom a presumption is directed has the burden of produc- ing evidence to rebut the presumption. But this rule does not shift the burden of persuasion, which remains on the party who had it originally.” Id. at 8 (quoting Fed. R. Evid. 301 (emphasis in Board’s opinion)). From this, the Board in Atlanta Gas Light explained that, where “a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of a petition- er’s identification of the real parties in interest, the bur- den remains with the petitioner to establish that it has complied with the statutory requirement to identify all the real parties in interest.” Id.
We largely concur with the burden framework used in Atlanta Gas Light. As explained below, we agree that the IPR petitioner bears the burden of persuasion to demon- strate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in
The Federal Register notice cited in Atlanta Gas Light includes the PTO’s responses to public comments. In response to a question regarding burdens of proof and persuasion in a challenge to the real-party-in-interest identification, the PTO stated: “The Office generally will accept the petitioner’s ‘real party-in-interest’ identifica- tion at the time of filing the petition.” Part III, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012).
6
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8 WORLDS INC. v. BUNGIE, INC.
interest more than a year earlier. We also agree that an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner. And although we disagree with treating this initial acceptance as a “rebuttable presumption” that formally shifts a burden of production to the patent owner, we agree that a patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest.
At the outset, there can be no doubt that the IPR peti- tioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest more than a year earlier. On this point, the relevant statute is clear. Under § 556(d) of the Administrative Procedure Act (“APA”), “[e]xcept as otherwise provided by statute, the proponent of a rule or order has the burden of proof.” 5 U.S.C. § 556(d); see also id. § 551(6) (defining “order” to mean “the whole or a part of a final disposition, whether affirmative, negative, injunctive, or declaratory in form, of an agency in a matter other than rule making but including licensing”). The Supreme Court has ex- plained that this provision of the APA refers to the bur- den of persuasion. Dir., Office of Workers’ Comp. Programs, Dep’t of Labor v. Greenwich Collieries, 512 U.S. 267, 276 (1994) (“[W]e understand the APA’s unadorned reference to ‘burden of proof’ to refer to the burden of persuasion.”). Thus, because the IPR petitioner is the party seeking an order from the Board, § 556(d) requires the petitioner to bear the burden of persuasion. And, while § 556(d) allows for exceptions to be provided by statute, no such exception exists here.
This allocation of the burden of persuasion makes sense. First, it is consistent with the general rule that “[a]bsent some reason to believe that Congress intended otherwise, . . . we will conclude that the burden of persua- sion lies where it usually falls, upon the party seeking
Case: 17-1481 Document: 47-1 Page: 9 Filed: 09/07/2018
WORLDS INC. v. BUNGIE, INC. 9
relief.” Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49, 57– 58 (2005); see also id. at 57 (indicating that § 556(d) reflects the “general rule” that the party seeking court action bears the burden of persuasion regarding the essential aspects of the party’s claims).7 And as this court held in Wi-Fi One, “[t]he timely filing of a petition under § 315(b) is a condition precedent to the Director’s authori- ty to act.” 878 F.3d at 1374; see also 35 U.S.C. § 312(a)(2) (requiring an IPR petitioner to identify all real parties in interest). Second, an IPR petitioner will usually be in a better position, at least relative to the patent owner, to access evidence relevant to the real-party-in-interest inquiry. See United States v. N.Y., New Haven & Hart- ford R.R. Co., 355 U.S. 253, 256 n.5 (1957) (“The ordinary rule, based on considerations of fairness, does not place the burden upon a litigant of establishing facts peculiarly within the knowledge of his adversary.”).
Having identified the party bearing the burden of per- suasion, we turn to the proper procedure for analyzing whether a petition should be time-barred based on a complaint served on a real party in interest more than a year earlier. As discussed above, the Board in Atlanta Gas Light explained that its practice of “initially accept- ing the identification of real parties in interest in a peti- tion as accurate acts as a rebuttable presumption that
Although exceptions to this general rule exist, for example, where elements of a plaintiff’s claim “can fairly be characterized as affirmative defenses or exemptions,” Schaffer, 546 U.S. at 57, we do not view § 315(b) as an affirmative defense. Instead, unlike a traditional statute of limitations defense, “[t]he timely filing of a petition under § 315(b) is a condition precedent to the Director’s authority to act,” and “[it] sets limits on the Director’s statutory authority to institute.” Wi-Fi One, 878 F.3d at 1374.
7
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10 WORLDS INC. v. BUNGIE, INC.
benefits petitioners.” Atlanta Gas Light, Paper 88 at 7. Referring to Federal Rule of Evidence 301, the Board indicated that such a presumption shifts the burden of production to the patent owner, who then must produce evidence sufficient to “reasonably bring[] into question the accuracy of a petitioner’s identification of the real parties in interest.” Id. at 8.
Initially, we question the Board’s practice of creating a “presumption” by its acceptance of a petitioner’s initial identification of the real parties in interest. Generally, for a party to gain the benefit of a presumption, the party must prove certain basic facts from which the presumed fact is then inferred according to the relevant substantive law. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1035–37 (Fed. Cir. 1992) (en banc) (ex- plaining that the presumption of laches, which was a defense available in patent cases prior to SCA Hygiene, arose upon proof that the patentee delayed filing suit for more than six years after actual or constructive knowledge of the defendant’s alleged infringing activi- ty), abrogated on other grounds by SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017); 21B Charles A. Wright & Kenneth W. Gra- ham, Jr., Federal Practice and Procedure: Evidence § 5122 (2d ed. 2005) (“[A] true presumption cannot arise without proof of some ‘basic fact’. . . .”). In the real-party- in-interest context at issue here, the relevant statute and regulations do not require evidentiary proof of such basic facts. See 35 U.S.C. § 312(a)(2) (requiring a petition to “identif[y] all real parties in interest”); 37 C.F.R. § 42.8(b)(1) (requiring a party to “dentify each real party-in-interest for the party”); see also id. § 42.104(a) (requiring a petitioner to “certify . . . that the petitioner is not barred or estopped from requesting an inter partes review challenging the patent claims on the grounds identified in the petition”).
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WORLDS INC. v. BUNGIE, INC. 11
Moreover, presumptions are usually created based on certain policy considerations, such as correcting an imbal- ance due to one party’s superior access to sources of proof, or promoting efficiency by presuming a fact to be true where the existence of certain basic facts makes the truth of the presumed fact highly probable. See 2 George E. Dix, et al., McCormick on Evidence § 343 (7th ed. 2016). In the real-party-in-interest context, however, we see no particular need to create a formal presumption— especially a presumption that would disfavor the party that likely has inferior access to potential sources of proof.
Regardless, we agree that an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner. But instead of viewing this as a presumption, we simply view this as practical. In short, we see no reason for the Board to question an IPR petitioner’s identification of the real parties in interest unless and until a patent owner has chosen to raise the issue.
The next question then becomes: what must a patent owner do to sufficiently raise the issue? In Atlanta Gas Light, the Board viewed the “presumption” created by the IPR petitioner’s initial identification of the real parties in interest as shifting the burden of production to the patent owner. From this, the Board explained that, where “a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of a petition- er’s identification of the real parties in interest, the burden remains with the petitioner to establish that it has com- plied with the statutory requirement to identify all the real parties in interest.” Atlanta Gas Light, Paper 88 at 8 (emphasis added). As explained above, we disagree with the use of a presumption in this context. We agree, however, that a patent owner must produce some evidence that tends to show that a particular third party should be
Case: 17-1481 Document: 47-1 Page: 12 Filed: 09/07/2018
12 WORLDS INC. v. BUNGIE, INC.
named a real party in interest.8 A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.
2
In view of this burden framework, we next turn to the Board’s analysis of the evidence in this case. In its IPR petitions, Bungie listed itself—and only itself—as the real party in interest.9 J.A. 354, 3728, 4918. Worlds then presented evidence that a particular third party, Ac- tivision, was an unnamed real party in interest, includ- ing: (1) the DevPub Agreement between Bungie and Activision, which related to development of Destiny; (2) the November 2014 letter indicating Worlds’s intent to add Bungie’s Destiny products to the Activision litigation; and (3) the fact that the five patents asserted in the Activision litigation were the same five patents Bungie challenged in its IPR petitions.
8
For purposes of deciding this case, we need not
address the quantum of support required from a patent
owner. If it were not framed in terms of a presumption,
the standard used in Atlantic Gas Light—evidence that
“reasonably brings into question the accuracy of a peti-
tioner’s identification of the real parties in interest”—may
prove useful. In this case, it suffices to say that, as dis-
cussed below, Worlds presented more than enough evi-
dence to sufficiently put this issue into dispute.
Bungie’s identification of the real parties in inter- est reads, in its entirety: “Bungie, Inc. is the real party- in-interest.” J.A. 354, 3728, 4918. Given the statutory requirement that an IPR petition list “all real parties in interest,” 35 U.S.C. § 312(a)(2) (emphasis added), Bungie’s statement effectively represents that Bungie is the sole real party in interest.
9
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WORLDS INC. v. BUNGIE, INC. 13
Worlds focused much of its argument on Recital 7A.15 of the DevPub Agreement, which Worlds views as giving Activision an opportunity to control the instant IPRs.10 This provision is found in the section of the DevPub Agreement titled “Activision’s Responsibilities” and provides that Bungie is responsible for “[c]onducting legal reviews of the Products to ensure that all Intellectual Property and other rights are fully cleared for use.” J.A. 2924, Recital 7A.15.11 The section further provides that these legal reviews “shall be subject to prior review and approval of Activision, (budget to [sic] mutually approved) such approval not to be unreasonably with- held.” Id. From this evidence, Worlds argued before the Board that these IPRs are “legal reviews” necessary to clear intellectual property rights, and that Activision had the opportunity to control the IPRs, making Activision a real party in interest. In response, Bungie presented a different interpretation of the “legal reviews” provision, arguing that, in the context of a videogame development agreement, a “legal review[]” refers to “reviewing the title, script, and visual and audio assets to ensure that any appropriate rights have been obtained and that they do
10
Worlds also emphasized other portions of the
DevPub Agreement, such as the section regarding Ac-
tivision’s participation in Bungie’s Board of Directors’
meetings, J.A. 2938, Recital 18.2, as well as the section
requiring Activision to pay “development advances” to
Bungie to “fully fund [Bungie’s] operations directly relat-
ed to the development of the Products,” J.A. 2928–29,
Recital 10.1. And it also pointed to representations and
warranties made by Bungie, including that the products
would not violate the rights of others. See J.A. 2933,
Recital 14.1.2.
“Intellectual Property” is defined in the DevPub Agreement to include patents and patent rights. J.A. 2919, Recital 6.1.
11
Case: 17-1481 Document: 47-1 Page: 14 Filed: 09/07/2018
14 WORLDS INC. v. BUNGIE, INC.
not infringe any trademarks or copyrights.” J.A. 415 (Opp. to Worlds’s Discovery Mot.).12
The Board flatly rejected Worlds’s argument that Bungie’s IPRs could be considered “legal review[s] of a ‘Product,’” first in its order denying Worlds’s discovery motion, then again in its institution decisions. J.A. 429 (Discovery Order) (stating that “[a] legal review of a ‘Product’ under the Agreement and other provisions do not specify, require, or necessarily include filing an IPR against a patent”); J.A.507, 3874, 5092 (Institution Decisions) (stating that Worlds’s argument was based on a faulty assumption that “legal reviews” could include IPRs). The Board’s institution decisions explained that the IPRs involved a patent rather than a product, and thus the IPRs could not be considered “legal reviews of a Product” that would give Activision a right of review and approval. J.A. 507 (“The only subject of this proceeding is the ’856 patent; this proceeding does not involve any product. Thus, Patent Owner has not shown that this proceeding falls within the scope of a ‘legal review[] of the Products’ . . . .” (citation omitted)); see also J.A. 3874, 5092.
After rejecting each of Worlds’s other arguments re- garding the DevPub Agreement, the Board concluded that “Patent Owner has not demonstrated that the Agreement gives Activision any opportunity to control this proceed- ing.” J.A. 509, 3877, 5094. In so doing, the Board also relied on statements in Bungie’s Opposition to Worlds’s Motion for Discovery, including that “Bungie is solely responsible for the cost and control of the IPRs against [Worlds’s] patents,” J.A.409–10, and that “Activision’s payment of development advances to Bungie funded the development of the Destiny videogame, not these IPRs,”
The parties maintain their respective interpreta-
12
tions of this provision on appeal.
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WORLDS INC. v. BUNGIE, INC. 15
J.A. 416. See J.A. 510, 3877, 5094–95 (relying on these statements). In Bungie’s briefing, those statements were made without citations to any evidence. See J.A. 409–10, 416. Nonetheless, from these statements, the Board concluded that “Petitioner has expressly denied any control or funding of this proceeding by Activision,” and “[o]n this record, we accept Petitioner’s express represen- tations that Activision is not controlling or funding this proceeding.” J.A. 509–10, 3877, 5094–95. The Board ultimately concluded its real-party-in-interest analysis by stating that “Patent Owner has not demonstrated that Activision is an unnamed real party in interest in this proceeding. Accordingly, Patent Owner has not estab- lished that the Petition violates 35 U.S.C. § 312(a)(2) or that institution of review is barred under 35 U.S.C. § 315(b).” J.A. 511, 3878, 5095. The Board reaffirmed this analysis in its final written decisions. J.A. 106–07, 194–95, 258–59.
Under the framework we have outlined above, the Board was entitled to rely, at least initially, on Bungie’s list of all real parties in interest, which raised no time-bar issues under the facts presented. Here, however, Worlds presented evidence sufficient to put Bungie’s identifica- tion of itself as the sole real party in interest into dispute. Thus, in this circumstance, the Board could no longer merely rely upon Bungie’s initial identification of the real parties in interest. Instead, the Board was required to make any factual determinations necessary to evaluate whether Bungie had satisfied its burden to demonstrate that its petition was not time-barred based on the com- plaints served upon Activision, the alleged real party in interest.
This marks the point in the analysis at which the burden of persuasion becomes essential. There is here a complete absence of any statement as to which party should bear the burden of persuasion. At the same time, the Board rejected the patent owner’s arguments because
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16 WORLDS INC. v. BUNGIE, INC.
the Board was “unpersuaded that there is sufficient evidence that Activision is an unnamed real party in interest for the reasons given in the Institution Decision.” J.A. 107, 195, 259. This implies that the Board assumed the burden of persuasion rests with the patent owner. Moreover, the Board’s potential reliance on the rebuttable presumption from Atlanta Gas Light may have effectively skewed the burden of persuasion despite Atlanta Gas Light’s statement that it was not approving such a shift. Under these circumstances, we cannot discern whether the Board placed the burden on Worlds, the patent owner, to persuade the Board that Bungie failed to list a real party in interest that would render the petitions time- barred under § 315(b). As discussed above, this would have been improper.
As an aside, we have some concern that the Board may have relied on attorney argument as evidence that Activision was not controlling or funding these IPRs. See J.A. 510, 3877, 5095 (citing Bungie’s briefing and stating that “[o]n this record, we accept Petitioner’s express representations that Activision is not controlling or fund- ing this proceeding”); see also Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). This is particular- ly concerning given that the Board’s apparent reliance on such statements seemed to outweigh the actual evidence presented by Worlds. Instead of citing evidence to sup- port this factual conclusion, the Board merely cited attor- ney argument from Bungie’s briefing—attorney argument that itself failed to cite evidence, such as affidavits or declarations. See J.A. 510, 3877, 5095 (Institution Deci- sions); J.A. 409–10, 416 (Bungie’s briefing).
In light of these concerns, we find it appropriate to remand this case to the Board for further consideration of the real-party-in-interest issue. In doing so, we do not speak to how the evidence should be weighed, and we do not prejudge what conclusion the Board, applying a
Case: 17-1481 Document: 47-1 Page: 17 Filed: 09/07/2018
WORLDS INC. v. BUNGIE, INC. 17
proper analysis, may reach as to whether Activision is a real party in interest in these proceedings. We note, however, that we have issued opinions since the Board issued its final written decisions that clarify the meaning of the term “real party in interest” in the context of § 315(b). See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (explaining that determining whether a party is a real party in inter- est “demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relation- ship with the petitioner”); Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018) (noting that the Board, in rendering § 315(b) determinations, “seeks to determine whether some party other than the petitioner is the ‘party or parties at whose behest the petition has been filed’” (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). We remand with instructions for the Board to weigh the evidence in a manner that places the ultimate burden of persuasion on Bungie, the IPR petitioner, and to do so in a manner consistent with our recent precedent.
3
Bungie briefly argues on appeal that, in light of issue preclusion principles, Worlds should be estopped from contesting the Board’s real-party-in-interest determina- tion. Bungie bases its preclusion argument on the three other IPRs that proceeded on a similar time frame as the three IPRs now on appeal.13 In those IPRs, Worlds ar-
The Board issued final written decisions in the three IPRs on appeal on November 10, 2016; November 28, 2016; and December 6, 2016. Meanwhile, the Board issued final written decisions in the three unappealed
13
Case: 17-1481 Document: 47-1 Page: 18 Filed: 09/07/2018
18 WORLDS INC. v. BUNGIE, INC.
gued, as it does here, that Bungie should have named Activision as a real party in interest. The Board disa- greed. Worlds did not appeal the Board’s final written decisions in those IPRs, and the time for appeal has now expired.
The general rule for issue preclusion (also called col- lateral estoppel) is “[w]hen an issue of fact or law is actually litigated and determined by a valid and final judgment, and the determination is essential to the judgment, the determination is conclusive in a subsequent action between the parties, whether on the same or a different claim.” B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303 (2015) (quoting Restatement (Second) of Judgments § 27 (1982)). This general rule is “subject to certain well-known exceptions.” Id. (citing Restatement (Second) of Judgments § 28 (1982) as listing exceptions).
Bungie devotes just two pages of its briefing to argu- ing that the basic requirements of issue preclusion are satisfied in this case. Appellee’s Br. 62–63. In similarly cursory fashion, Worlds’s Reply Brief compiles a handful of conclusory assertions in an attempt to avoid issue preclusion. Reply Br. 30–32. And because of the timing of the six IPRs, the Board did not consider issue preclu- sion.
In this case, such a limited record is insufficient for this court to decide, for the first time on appeal, whether issue preclusion should apply to this unusual set of facts. The record before us is scant on details regarding the issues raised in the three unappealed IPRs. Based on the limited record before us, we cannot say that the “issue” is the same between the now-final IPRs and the IPRs cur-
IPRs on November 28, 2016 (for two proceedings) and November 30, 2016.
Case: 17-1481 Document: 47-1 Page: 19 Filed: 09/07/2018
WORLDS INC. v. BUNGIE, INC. 19
rently on appeal. Bungie, of course, views the “issue” as the ultimate determination of whether Activision is a real party in interest. See Appellant’s Br. 63. But in our view, the determination of whether a party is a real party in interest may differ from one IPR to the next, even among a set of seemingly related IPRs. Without a more compre- hensive understanding of the issues raised in each case, we decline to apply collateral estoppel. Instead, given that we are already remanding this case with regard to the merits of the real-party-in-interest analysis, we find it appropriate to have the Board analyze in the first in- stance whether issue preclusion should apply under these particular circumstances. In doing so, the Board should develop a more complete record that explains the differ- ences, if any, between the issues raised in present IPRs and the unappealed IPRs. The Board should also consider any relevant exceptions to issue preclusion raised by the parties and explain why such exceptions do or do not apply to these facts. See Restatement (Second) of Judg- ments § 28 (1982); see also In re Cygnus Telecomms. Tech., LLC, Patent Litig., 536 F.3d 1343, 1349–50 (Fed. Cir. 2008) (regarding issue preclusion where a party did not appeal all cases consolidated in a multi-district litiga- tion proceeding).
B
Because of our conclusions with respect to the real- party-in-interest issue, we need not address the merits of the parties’ invalidity arguments at this time. We there- fore vacate the Board’s merits decisions in their entirety, without speaking to the merits of the Board’s analysis. On remand, if the Board determines that the IPRs are not time-barred, the Board may use its prior merits analysis in new final written decisions, and a future panel of the court will have occasion to review the merits of the Board’s analysis at that time, should the parties choose to appeal.
Case: 17-1481 Document: 47-1 Page: 20 Filed: 09/07/2018
20
WORLDS INC. v. BUNGIE, INC.
III
For the foregoing reasons, the Board’s final written decisions in these three consolidated appeals are vacated. On remand, the Board should first address whether Worlds is estopped from arguing the real-party-in-interest issue. The Board should thoroughly consider the posture of the related proceedings, as well as any relevant excep- tions to collateral estoppel. If the Board determines that collateral estoppel does not apply, the Board should then reevaluate the merits of the real-party-in-interest issue. And, in light of this court’s recent guidance on the sub- stantive real-party-in-interest inquiry, the Board, in its discretion, should consider whether to allow for additional discovery on this issue.14
VACATED AND REMANDED
COSTS
The parties shall bear their own costs.
See Applications in Internet Time, 897 F.3d 1336; Wi-Fi One, 887 F.3d 1329; cf. WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018).
14
Trials@uspto.gov Paper: 66 571-272-7822 Entered: January 30, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE ____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________
BUNGIE, INC., Petitioner,
v.
WORLDS INC., Patent Owner. ____________
IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2) ____________
Before KARL D. EASTHOM, KEN B. BARRETT, and JASON J. CHUNG, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
ORDER
Conduct of the Proceedings 37 C.F.R. § 42.5(a)
IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
Pursuant to our Order (e.g., IPR2015-01264, Paper 65), the Termination (e.g., IPR2015-01264, Paper 64) in each of the above-captioned cases was entered as a non-public version because it might refer to information that is the subject of a Motion to Seal. The parties, also pursuant to that Order, each since have sent to the Board an email confirming that the Termination may be made publicly available without any redactions. Accordingly, it is appropriate to remove the confidentially designation on the Termination.
It is ORDERED that the Termination in each of the above-captioned cases—IPR2015-01264, Paper 64; IPR2015-01319, Paper 62; and IPR2015-01321, Paper 63—shall be made available for public viewing.
2
IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
PETITIONER:
Michael T. Rosato Matthew A. Argenti Andrew Brown
Jad Mills
WILSON SONSINI GOODRICH& ROSATI mrosato@wsgr.com
margenti@wsgr.com
asbrown@wsgr.com
jmills@wsgr.com
PATENT OWNER:
Wayne M. Helge
Michael R. Casey
Aldo Noto
DAVIDSON BERQUIST JACKSON & GOWDEY, LLP whelge@dbjg.com
mcasey@dbjg.com djackson@dbjg.com anoto@davidsonberquist.com
3
Law 360 article on ruling.
Years After Axing Game IP, PTAB Junks IPRs As Time-Barred
By Tiffany Hu
Law360 (January 15, 2020, 8:41 PM EST) --
The Patent Trial and Appeal Board is throwing out inter partes reviews on patents on “virtual world” technology, finding that the maker of the video game Destiny is time-barred from challenging the patents due to previous litigation involving its former collaborator Activision.
The PTAB on Tuesday issued a nonpublic order that terminated review proceedings against three Worlds Inc. patents, which had been challenged by video game developer Bungie Inc. The PTAB had previously reviewed and invalidated the patents, but the Federal Circuit in 2018 ruled that the board did not properly analyze whether Bungie’s petitions for inter partes review were filed too late under the America Invents Act’s time-bar provision.
The appeals court said the PTAB may have erred in rejecting Worlds’ argument that an agreement between Bungie and Activision, which was sued by Worlds in 2012 over the patents, could have made Activision an interested party in Bungie’s petitions. Bungie and Activision reportedly ended their longtime business relationship early last year.
More than a year after the Federal Circuit ruling, the PTAB on Tuesday agreed with the appeals court and dismissed the reviews, a decision that Worlds CEO Thom Kidrin said was prompted by evidence revealing that the relationship between Bungie and Activision prevented Bungie from challenging the patents at issue under the AIA.
“Worlds has had to endure the legal and financial gauntlet at the PTAB and Federal Circuit for over 4½ years while combating the challenges brought by Bungie, but we have ultimately prevailed with important claims intact in each challenged patent,” Kidrin said in a statement.
Kidrin said Worlds’ infringement suit against Activision, which has been stayed pending the board’s review of the disputed patents, will now proceed in district court. With Bungie’s remaining petitions for review now dismissed, he added, Worlds plans to assert its patents against “all parties that are infringing upon them.”
Representatives for Bungie and Activision did not immediately respond to requests for comment Wednesday.
The AIA's time-bar provision states that petitions for inter partes review must be filed within one year of the date the petitioner or its real party in interest is served with a complaint alleging infringement. The Federal Circuit held for the first time in January 2018 that whether a petition is time-barred is an appealable issue.
Worlds sued Activision in 2012, alleging that the company's Call of Duty games infringed its patents on computer-generated display of avatars in a virtual world. In 2014, Worlds notified Activision that it intended to add Destiny, which was developed by Bungie and is published by Activision, as an additional accused product in the case. Bungie then challenged Worlds' patents in inter partes review petitions.
Bungie told the PTAB that it was the sole real party in interest in the petition. However, Worlds argued that the publishing and development agreement between Bungie and Activision meant that Activision is an interested party, which would mean that Bungie's petitions were filed too late. The PTAB rejected that argument and ultimately invalidated Worlds’ patents.
In its September 2018 ruling, the Federal Circuit noted that the PTAB did not state which party it viewed as having the burden of persuasion on whether Activision was a real party in interest to Bungie's petitions, though the board appeared to place it on Worlds by saying it was not persuaded Activision was an interested party. The appeals court began its opinion by analyzing whether that was correct.
It concluded that "there can be no doubt that the IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred." The court then said the petitioner's identification of the real parties in interest should be accepted "unless and until it is disputed by the patent owner" and that the patent owner must produce some evidence that shows a third party should be named a real party in interest, beyond a mere assertion.
The Federal Circuit said that Worlds had produced such evidence in this case by pointing to the development and publishing agreement between Bungie and Activision. The agreement states that Bungie is responsible for conducting "legal reviews of the products" to ensure that all intellectual property is cleared for use, and that such reviews are subject to approval by Activision.
The patents-in-suit are U.S. Patent Nos. 7,945,856, 8,082,501and 8,145,998.
Bungie is represented by Michael T. Rosato, Matthew A. Argenti and Jad Mills of Wilson Sonsini Goodrich & Rosati PC.
Worlds is represented by Wayne M. Helge and Aldo Noto of Davidson Berquist Jackson & Gowdey LLP.
The case is Bungie Inc. v. Worlds Inc., case numbers IPR2015-01264, IPR2015-01319 and IPR2015-01321, before the Patent Trial and Appeal Board.
--Additional reporting by Ryan Davis. Editing by John Campbell.
For a reprint of this article, please conta
Dismissal of the institution order means no appeal! It’s as if the whole IPR process never occurred. Bungie was found to be a related third party to Activision therefore they are time barred from filing an IPR. case dismissed, no appeal!
There is no appeal permitted. The case was dismissed.
We won!
Precisely
Gencanna already has a processing plant up and running! The new one is what you have your panties twisted on.
As has been posted on this board multiple times. The general time line is 6 months from the remand certification, there is no hard fixed legal requirement. That is roughly around now.
The PTAB ruling will be the update you all
are looking for. “PR sleeping” is a moronic statement. What PR are they suppose to do until there is a ruling. The company has consistently refrained from promoting the stock with out supporting factual news of merit.
Health issues are personal matters that limit ones time commitments and obligations.
If you read the detailed PTAB rulings on the claims that were denied, you’ll see that there was specificity in their analysis.
Worlds clearly disagreed with that analysis which was included in Worlds appeal to the CAFC, which didn’t bother to address those challenges rather focusing on the CE and RPI issues as overarching to the claims appeal.
The simple answer is that anyone can file an IPR with the PTAB regardless of the outcome in the RPI and CE matters.
The threshold for new IPR’s will be higher and more stringent in the PTAB’s determination to allow another IPR to proceed based on the rebalancing adjustments that the PTAB has been imposing to the backlash of the anti patent holder rulings that the AIA resulted in.
Any new IPR’s allowed would give Worlds the opportunity to craft responses that rebuke the earlier PTAB claims previously argued.
Nestle specifically pertains to claim construction in regard to CE. Bungie raises the issue in regard to RPI. Different issues that Bungie is attempting to tie together.
Since Bungie raised the issue of CE, it became incumbent on them to distinguish the differences between the IPR’s or the exact same arguments in each respective IPR. Besides a general lawyers statement that they are the same in all IPR’s there is nothing in the initial or response brief that details the precise same language in all 6 IPR’s on RPI cited by Bungie.
Precisely
As has been stated on this board today, Bungie has provided a smoke and mirrors lawyers argument but no factual evidence to refute what the CAFC found to vacate the PTAB’s past ruling. The burden is on Bungie to prove they are not an RPI to Activision, that is why the CAFC vacated and remanded. In all the bluster of Bungie’s brief have you seen any proof?
Their offer of a self serving declaration was unacceptable to the PTAB and Worlds, only a full scale discovery would have been accepted and Bungie didn’t want that so the PTAB declined a limited discovery of a hand picked declaration by Bungie.To state that Worlds did not identify an RPI is to be willfully blind. activision is the RPI as has been clearly stated in Worlds brief. Did you bother to even read it?
Bottom line is a lot of hand waving and defensive posturing but nothing that addresses the CE issue to refute the Solicitors position on CE nor the shifting of proof from Worlds to Bungie on the RPI analysis as the CAFC clearly directed in it’s remand order.
A bunch of non lawyers evaluating a complex and nuanced reply brief that does not address the core remand issues is nothing more than entertainment.
Trials@uspto.gov Paper 57 571-272-7822 Entered: February 14, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE ____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________
BUNGIE, INC., Petitioner,
v.
WORLDS INC., Patent Owner. ____________
Case IPR2015-01264 (Patent 7,945,856 B2) Case IPR2015-01319 (Patent 8,082,501 B2) Case IPR2015-01321 (Patent 8,145,998 B2) ____________
Before KARL D. EASTHOM, KEN B. BARRETT, and JASON J. CHUNG, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
ORDER
Granting Patent Owner’s Unopposed Motion to Seal and
Entry of Protective Order
37 C.F.R. § 42.54
IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
Patent Owner filed, in each of the above-captioned cases, an unopposed motion to seal certain portions of “Petitioner Bungie’s Brief on Remand from CAFC” (e.g., IPR2015-01264, Paper 51; “Petitioner’s Brief on Remand”). IPR2015-01264, Paper 54; IPR2015-01319, Paper 54; and IPR2015-01321, Paper 55. We previously, in response to Patent Owner’s request, placed the subject brief under seal pending resolution of the present motion. See Paper 53.1 Patent Owner also filed in each case a proposed Protective Order and, as an exhibit, a copy of the subject brief showing Patent Owner’s proposed redactions on pages 18–19. E.g., IPR2015-01264, Exhibits 2100, 2101. Patent Owner represents that Petitioner does not oppose this motion. Paper 54, 1.
There is a strong public policy in favor of making information filed in an inter partes review open to the public, especially because the proceeding determines the patentability of claims in an issued patent and, therefore, affects the rights of the public. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper 34). Under 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, the default rule is that all papers filed in an inter partes review are open and available for access by the public; however, a party may file a motion to seal and the information at issue is sealed pending the outcome of the motion. It is only “confidential information” that is protected from disclosure. 35 U.S.C.
§ 316(a)(7); see Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
1 Unless otherwise indicated, we refer to the papers and exhibits filed in IPR2015-01264. Patent Owner filed substantively the same or similar papers and exhibits in the other cases listed in the caption.
2
IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
48,760 (Aug. 14, 2012). The standard for granting a motion to seal is “good cause.” 37 C.F.R. § 42.54(a). The party moving to seal bears the burden of proof in showing entitlement to the requested relief and must explain why the information sought to be sealed constitutes confidential information. See 37 C.F.R. § 42.20(c). As set forth in the Trial Practice Guide (77 Fed. Reg. at 48,761), there is an expectation that information will be made public if identified in the Final Written Decision.
Patent Owner explains that it seeks to seal certain portions of Petitioner’s Brief on Remand—namely, that which Petitioner contends is quoted material contained in what is characterized as Statements of Material Fact Nos. 7, 10, and 11—because those portions contain information that “[Petitioner] Bungie contends are quoted contents (including ‘terms’) of settlement communications between Bungie’s counsel and Worlds’ counsel.” Paper 54, 2–3. Patent Owner asserts that such information falls within the category of business confidential information and that it should not be revealed to the public. Id. Specifically, Patent Owner notes that the Board frequently grants motions to treat executed settlement agreements as business confidential information, see id. at 3–4, and argues, “[j]ust as an executed settlement agreement deserves protection from unsealed filings and public disclosure, so do Bungie’s [statements characterized as settlement communications]. Id. at 4. Patent Owner further argues:
As a policy matter, it would do little good to treat a settlement agreement as business confidential information, but permit unsealed filing of settlement discussions leading to that settlement agreement. Moreover, the risk of permitting unsealed filing of settlement communications is likely to chill such
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IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
settlement communications from even occurring in the first place.
Id. at 4–5.
On the specific facts of this case, we determine that Patent Owner has
demonstrated good cause for sealing portions of Petitioner’s Brief on Remand in the above-captioned cases.
Additionally, we have reviewed the proposed Protective Order, which we understand to be the Board’s Default Protective Order (Ex. 2100), and find it acceptable.
We remind the parties that confidential information that is subject to a protective order ordinarily would become public after final judgment in a trial. See 37 C.F.R. § 42.14; Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,761. The parties may move to expunge confidential information from the record after final judgment (and appeals, if any). 37 C.F.R.
§ 42.56.
It is
ORDERED that Patent Owner’s unopposed motion to seal is granted; and
FURTHER ORDERED that the unredacted version of “Petitioner Bungie’s Brief on Remand from CAFC” (IPR2015-01264, Paper 51; IPR2015-01319, Paper 51; and IPR2015-01321, Paper 52) shall remain under seal;
FURTHER ORDERED that the protective order submitted by Patent Owner (Ex. 2100 in each captioned case) is hereby entered; and
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IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
FURTHER ORDERED that Patent Owner shall file, as a paper in each captioned case, the redacted version of “Petitioner Bungie’s Brief on Remand from CAFC.”
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IPR2015-01264 (Patent 7,945,856 B2) IPR2015-01319 (Patent 8,082,501 B2) IPR2015-01321 (Patent 8,145,998 B2)
For PETITIONER:
Michael T. Rosato
Matthew A. Argenti
Andrew Brown
WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com
margenti@wsgr.com asbrown@wsgr.com
For PATENT OWNER:
Wayne M. Helge
Michael Casey
Aldo Noto
DAVIDSON BERQUIST JACKSON & GOWDEY, LLP whelge@dbjg.com
mcasey@dbjg.com anoto@davidsonberquist.com
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Can someone send me the link to the video of Activisions lawyer stating the Worlds case could potentially cost billions
You obviously don’t understand what consolidation of a burgeoning industry costs. Sell your shares and move on.