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It is strange how within the Camera in the Court room Judge Casper stated, " I see at least one infringement." She also espoused at the depth of her review she had completed and the knowledge she had regarding the case. Fast forward to recent events. In my opinion there are only a few possibilities as to why she changed her mind.
1. Did the relevant facts change? I do not believe so.
2. Did WDDD change its argument? I do not believe so.
3. Did the US Code change? I do not think so.
4. Did Judge Casper's grasp of the English language change? Apparently considering her decision does not align with her words many years ago.
I realize as a human she has a right to change her mind. However, she does not have the right to write law as she deems necessary. If her conviction years ago about one infringement were correct then they should be correct now considering her original words and depth of knowledge of the case.
Feel free to fill in the blanks I may have left out in order to make this a cogent thought process.
Judge Casper has previously stated there is at least one infringement several years ago. Deep breathe. She will wait to the last minute. It serves her not to rapidly make a decision.
ATVI lawyer has already stated there is billions at stack.
Whether Judge Casper sets the date for April 2021 or next October 2021 the facts and words of both parties cannot be erased or changed in a twisted fashion.
Many of us have been here for years. A few more months will not matter.
She will wait until the absolute last minute before we see anything. She gains nothing by releasing a decision early. She does not want to have an appeal which may question her judgement. Deep breathe there is game theory and strategy to all of this.
Latest and Greatest
Case: Worlds, Inc. v. Activision Blizzard, Inc. et al (mad-1:2012-cv-10576)
Court: District of Massachusetts
NOTICE re Status Conference. This hearing will be conducted by video conference. Counsel of record will receive a video conference invite at the email registered in CM/ECF. If you have technical or compatibility issues with the technology, please notify the sessions courtroom deputy as soon as possible. (filed: 07/16/2020)
Judge Denise J. Casper: Standing Order Regarding Appearance of Counsel Via Telephone or Videoconference (filed: 07/16/2020)
Excellent summation. I thought the same as you. Needless to say not selling any time soon.
Latest and Greatest 2 of 2
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC., Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
and ACTIVISION PUBLISHING, INC.,
Defendants.
Civil Action No. 1:12-CV-10576 (DJC)
DEFENDANTS’ REPLY TO PLAINTIFF’S STATEMENT OF MATERIAL FACTS
AND OBJECTIONS AND RESPONSES TO DEFENDANTS’ STATEMENT OF
UNDISPUTED MATERIAL FACTS IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT THAT THE ASSERTED
PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. § 101
Pursuant to Local Rule 56.1, Defendants Activision Blizzard, Inc., Blizzard
Entertainment, Inc., and Activision Publishing, Inc. (collectively “Activision” or “Defendants”)
submit this reply to Plaintiff Worlds, Inc.’s (“Worlds”) Statement of Material Facts and
Objections and Responses to Defendants’ Statement of Undisputed Material Facts in Support of
Their Motion for Summary Judgment that the Asserted Patent Claims Are Invalid Under 35 U.S.C. § 101.
See Dkts. 275, 277.
Pursuant to the Court’s guidance on dispositive motions, each paragraph of Worlds’ Statement of Material Facts and Objections and Responses to Defendants’ Statement of Undisputed Material Facts, Dkt. 277, is reproduced in full below, excluding citations to exhibits previously filed by Worlds. Activision’s replies follow each paragraph.
Case 1:12-cv-10576-DJC Document 283 Filed 06/23/20 Page 1 of 22
- 2 -
U.S. Patent No. 7,181,690
1. U.S. Patent No. 7,181,690 (the “’690 Patent”) was filed on August 3, 2000 and
issued on February 20, 2007.
Activision’s Reply:
Activision does not dispute Paragraph 1 of Worlds’ Rule 56.1
Statement. 2.
Worlds does not dispute Paragraphs 1–21 of Defendants’ Statement of Undisputed
Material Facts.
Activision’s Reply:
No response is necessary.
3.On February 9, 2018, the USPTO issued an INTER PARTES REVIEW
CERTIFICATE for U.S. Patent No. 7,181,690, reflecting the determination in IPR2015-01268
and confirming that claims 4, 8, 13, and 16 were found patentable. These patentable claims are
currently asserted against Defendants. Dkt. 269.
Activision’s Reply:
Activision does not dispute that the United States Patent and Trademark Office (“USPTO”) issued an Inter-Partes Review Certificate for the ’690 Patent on February 9, 2018. Activision further does not dispute that, in IPR2015-01268, claims 4, 8, 13, and 16 of the ’690 Patent were found patentable over the specific invalidity grounds raised in IPR2015-01268. Activision further does not dispute that claims 4, 8, 13, and 16 of the ’690 Patent are currently asserted against Defendants. Activision disputes Worlds’ characterization that claims 4, 8, 13, and 16 are patentable.
4.The “Background of the Invention” section of the specification of the ’690 Patent
states, at 1:10–2:20:
The present invention relates to the field of packet communications. More specifically, in one embodiment the invention provides an efficient communications network for client-server networks with large numbers of clients.
Case 1:12-cv-10576-DJC Document 283 Filed 06/23/20 Page 2 of 22
Full Text
2 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS WORLDS, INC.,)) Plaintiff,)) v.) Civil Action No. 1:12-CV-10576 (DJC)) ACTIVISION BLIZZARD, INC.,) BLIZZARD ENTERTAINMENT, INC.) and ACTIVISION PUBLISHING, INC.,)) Defendants.)) DEFENDANTS' REPLY TO PLAINTIFF'S STATEMENT OF MATERIAL FACTS AND OBJECTIONS AND RESPONSES TO DEFENDANTS' STATEMENT OF UNDISPUTED MATERIAL FACTS IN SUPPORT OF DEFENDANTS' MOTION FOR SUMMARY JUDGMENT THAT THE ASSERTED PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. § 101 Pursuant to Local Rule 56.1, Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc. (collectively "Activision" or "Defendants") submit this reply to Plaintiff Worlds, Inc.'s ("Worlds") Statement of Material Facts and Objections and Responses to Defendants' Statement of Undisputed Material Facts in Support of Their Motion for Summary Judgment that the Asserted Patent Claims Are Invalid Under 35 U.S.C. § 101. See Dkts. 275, 277. Pursuant to the Court's guidance on dispositive motions, each paragraph of Worlds' Statement of Material Facts and Objections and Responses to Defendants' Statement of Undisputed Material Facts, Dkt. 277, is reproduced in full below, excluding citations to exhibits previously filed by Worlds. Activision's replies follow each paragraph.
-1- 2 U.S. Patent No. 7,181,690 1. U.S. Patent No. 7,181,690 (the "'690 Patent") was filed on August 3, 2000 and issued on February 20, 2007. Activision's Reply: Activision does not dispute Paragraph 1 of Worlds' Rule 56.1 Statement.
2. Worlds does not dispute Paragraphs 1 - 21 of Defendants' Statement of Undisputed Material Facts. Activision's Reply: No response is necessary. 3. On February 9, 2018, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 7,181,690, reflecting the determination in IPR2015-01268 and confirming that claims 4, 8, 13, and 16 were found patentable. These patentable claims are currently asserted against Defendants. Dkt. 269.
Activision's Reply: Activision does not dispute that the United States Patent and Trademark Office ("USPTO") issued an Inter Partes Review Certificate for the '690 Patent on February 9, 2018.
Activision further does not dispute that, in IPR2015-01268, claims 4, 8, 13, and 16 of the '690 Patent were found patentable over the specific invalidity grounds raised in IPR2015-01268. Activision further does not dispute that claims 4, 8, 13, and 16 of the '690 Patent are currently asserted against Defendants.
Activision disputes Worlds' characterization that claims 4, 8, 13, and 16 are patentable. 4. The "Background of the Invention" section of the specification of the '690 Patent states, at 1:10 2:20: The present invention relates to the field of packet communications. More specifically, in one embodiment the invention provides an efficient communications network for client-server networks with large numbers of clients.
-2- 2 A client-server network is a network where one or more servers are coupled to one or more clients over a communications channel. Typically, each server and each client is assigned an address so that each can determine which network messages are directed to it. While such a system may have only one server, it typically has many clients. A server object is one which waits for a request from a client object and then performs some service in response to the client request. A client is an object that makes the request. The designation of a particular object (computer hardware and/or software process) as a "server" object or a "client" object is not fixed. Thus, a given object can be a server for some services and a client of other services. A typical computer network has one or more file and print servers with a number of clients, where the clients are the desktop computers or workstations of the computer users, all coupled to a high-speed network cable. Client-server communications in such a network are easily handled for several reasons. When clients are not all communicating with the server at once the server need not be designed to handle all the clients at one time. Another reason is that the network traffic is much less than the network capacity furthermore, the clients in a typical computer network need not necessarily be communicating in real-time with the server. However, where many client machines or processes are communicating with each other in real-time through the server, several problems arise. For example, where a client-server system is used for real-time exchange of information, such as a distributed virtual reality network where users at client machines visually and aurally interact with other users at other client machines, communication is much more difficult, especially where the information is high- bandwidth data such as audio streams, graphic images and image streams. One application of such a client-server system is for game playing, where the positions and actions of each user need to be communicated between all the players to inform each client of the state changes (position, actions, etc.) which occurred at the other clients. The server might maintain global state information and serve as a data server for the clients as they request visual, program and other data as the game progresses. Some game systems use a peer-to-peer architecture. In a peer-to-peer architecture, a copy of the data which is common to all clients is kept by the client and information which needs to pass between clients is broadcast over the network. This limits the number of clients which can be connected to the network, because the number of messages passing between clients is on the order of the square of the number of clients. With true broadcasting, one message is, sent and all clients listen for it, but not all network topologies can handle broadcasts. Where less than all the clients are participating in a game, for example, messages cannot be broadcast because there are clients which should not be receiving the broadcast message. Instead, the broadcast between the players is handled by generating one message to each player client. This architecture is further limited where the network is not a dedicated network, but is an open network, such as the Internet. As used herein, the term "Internet" refers
-3- 2 to the global inter-network of networks which communicates primarily using packets sent according to TCP/IP (Transport Control Protocol/Internet Protocol) standards well known in the art of computer intercommunication. With Internet communications, true broadcasting is not even possible because the network's extent is not known or fixed. Thus, messages to all players must be sent as separate messages. An additional problem with Internet communications is that packet delivery is not guaranteed nor is it even as reliable as a dedicated network. Therefore, what is needed is an efficient system for communication between many client systems over dedicated or open networks to provide graphical interaction between users operating the client systems. Activision's Reply: Activision does not dispute Paragraph 4 of Worlds' Rule 56.1
Statement. 5. The "Summary of the Invention" section of the specification of the '690 Patent states: The present invention provides a highly scalable architecture for a three-dimensional graphical, multi-user, interactive virtual world system. In a preferred embodiment a plurality of users interact in the three-dimensional, computer-generated graphical space where each user executes a client process to view a virtual world from the perspective of that user. The virtual world shows avatars representing the other users who are neighbors of the user viewing the virtual word. In order that the view can be updated to reflect the motion of the remote user's avatars, motion information is transmitted to a central server process which provides positions updates to client processes for neighbors of the user at that client process. The client process also uses an environment database to determine which background objects to render as well as to limit the movement of the user's avatar. A further understanding of the nature and advantages of the inventions herein may be realized by reference to the remaining portions of the specification and the attached drawings. Activision's Reply: Activision does not dispute Paragraph 5 of Worlds' Rule 56.1 Statement. U.S. Patent No. 7,493,558 6. U.S. Patent No. 7,493,558 (the "'558 Patent") was filed on November 2, 2006 and issued on February 17, 2009. -4- 2
Activision's Reply: Activision does not dispute Paragraph 6 of Worlds' Rule 56.1 Statement. 7. Worlds does not dispute Paragraphs 22 -35 of Defendants' Statement of Undisputed Material Facts.
Activision's Reply: No response is necessary.
8. On February 20, 2018, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 7,493,558, reflecting the determination in IPR2015-01269 and confirming that claims 5 and 7 were found patentable. These patentable claims are currently asserted against Defendants. Dkt. 269.
Activision's Reply: Activision does not dispute that the USPTO issued an Inter Partes Review Certificate for the '558 Patent on February 20, 2018. Activision further does not dispute that, in IPR2015-01269, claims 5 and 7 of the '558 Patent were found patentable over the specific invalidity grounds raised in IPR2015-01269.
Activision further does not dispute that claims 5 and 7 of the '558 Patent are currently asserted against Defendants.
Activision disputes Worlds' characterization that claims 5 and 7 are patentable.
9. From the section labeled "Background of the Invention" to the patent claims, the specification of the '558 Patent is identical to the specification of the '690 Patent. In particular, the "Background of the Invention" and "Summary of the Invention" sections of the '558 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. Activision's Reply: Activision disputes that "the 'Background of the Invention' and 'Summary of the Invention' sections of the '558 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein." To the extent that Worlds intended to refer to -5- 2 "Paragraphs 4 and 5 herein,"
Activision does not dispute Paragraph 9 of Worlds' Rule 56.1 Statement. U.S. Patent No. 7,945,856 10. U.S. Patent No. 7,945,856 (the '856 Patent") was filed on January 13, 2009 and issued on May 17, 2011. Activision's Reply: Activision does not dispute Paragraph 10 of Worlds' Rule 56.1
Statement. 11. Worlds does not dispute Paragraphs 36-47 and 49-51 of Defendants' Statement of Undisputed Material Facts.
Worlds objects to Paragraph 48 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33.
Activision's Reply: Activision disputes Worlds' objection to Paragraph 48 of Activision's Statement of Undisputed Material Facts. Activision's dispute is set forth below in its replies to Paragraphs 27-33. Activision further responds that Worlds' objection relates to Activision's reliance on the subsequently vacated Final Written Decision in IPR2015- 01264. However, Paragraph 48 of Defendants' Statement of Undisputed Material Facts relates to the Federal Circuit's decision in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed Cir. 2018). 12. From the section labeled "Background of the Invention" to the patent claims, the specification of the '856 Patent is identical to the specification of the '690 Patent. In particular, the "Background of the Invention" and "Summary of the Invention" sections of the '856 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. Activision's Reply: Activision disputes that "the 'Background of the Invention' and 'Summary of the Invention' sections of the '856 Patent are identical to the sections -6- 2 reproduced in Paragraphs 3 and 4, herein." To the extent that Worlds intended to refer to "Paragraphs 4 and 5 herein,"
Activision does not dispute Paragraph 12 of Worlds' Rule 56.1 Statement. U.S. Patent No. 8,082,501 13. U.S. Patent No. 8,082,501 (the '501 Patent") was filed on March 19, 2009 and issued on December 20, 2011. Activision's Reply: Activision does not dispute Paragraph 13 of Worlds' Rule 56.1 Statement.
14. Worlds does not dispute Paragraphs 52-55, 69-76, and 78-91 of Defendants' Statement of Undisputed Material Facts. Worlds denies that Paragraphs 56-68 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶56.
Worlds objects to Paragraph 77 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33. Activision's Reply: Activision disputes Worlds' objection to Paragraph 77 of Activision's Statement of Undisputed Material Facts.
Activision's dispute is set forth below in its replies to Paragraphs 27-33. Activision further responds that Worlds' objection relates to Activision's reliance on the subsequently vacated Final Written Decision in IPR2015- 01319. However, Paragraph 77 of Defendants' Statement of Undisputed Material Facts relates to the Federal Circuit's decision in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed Cir. 2018). 15. From the section labeled "Background of the Invention" to the patent claims, the specification of the '501 Patent is identical to the specification of the '690 Patent. In particular, -7- 2 the "Background of the Invention" and "Summary of the Invention" sections of the '501 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. Activision's Reply: Activision disputes that "the 'Background of the Invention' and 'Summary of the Invention' sections of the '501 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein." To the extent that Worlds intended to refer to "Paragraphs 4 and 5 herein," Activision does not dispute Paragraph 15 of Worlds' Rule 56.1 Statement.
16. With regard to Paragraphs 56-68 of Defendants' Statement of Undisputed Materials Facts, Worlds does not dispute that the Examiner made the statements, and issued the rejections, referenced by Defendants. Worlds disputes Activision's characterization of the Examiner's conclusions and denies that Paragraphs 56-68 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶56. Worlds further disputes that Shiio and/or Suzuki (which Defendants' have not attached to their Motion for Summary Judgment) anticipate or make obvious the asserted claims. The PTO later issued the '501 Patent over Shiio and Suzuki.
Activision's Reply: Activision disputes the validity of the asserted claims of the '501 Patent and maintains that those claims are invalid. Activision otherwise does not dispute Paragraph 16 of Worlds' Rule 56.1 Statement.
17. On November 2, 2011, the PTO Examiner issued a Notice of Allowability allowing claims 4â??20 (all claims) in Patent Application No. 12/406,968 (the Application that matured into the '501 Patent) over prior art. In that Notice of Allowability, the Examiner concluded in the "Reasons for Allowance": Claims 4 - 20 are allowed over the prior art of records. 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, -8- 2 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. Activision's Reply: Activision disputes the validity of the asserted claims of the '501 Patent and maintains that those claims are invalid. Although not relevant to the motion, Activision further disputes Worlds' characterization of the Examiner's decision to the extent that it is misquoted. Activision otherwise does not dispute Paragraph 17 of Worlds' Rule 56.1 Statement. U.S. Patent No. 8,145,998 18. U.S. Patent No. 8,145,998 (the '998 Patent") was filed on March 19, 2009 and issued on March 27, 2012.
Activision's Reply: Activision does not dispute Paragraph 18 of Worlds' Rule 56.1 Statement.
19. Worlds does not dispute Paragraphs 92-95, 101-109, and 111-119 of Defendants' Statement of Undisputed Material Facts. Worlds denies that Paragraphs 96-100 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶96. Worlds objects to Paragraph 110 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33.
Activision's Reply: Activision disputes Worlds' objection to Paragraph 110 of Activision's Statement of Undisputed Material Facts. Activision's dispute is set forth below in its replies to Paragraphs 27-33. Activision further responds that Worlds' objection relates to -9- 2 Activision's reliance on the subsequently vacated Final Written Decision in IPR2015- 01321. However, Paragraph 110 of Defendants' Statement of Undisputed Material Facts relates to the Federal Circuit's decision in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed Cir. 2018). 20. On May 20, 2020, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 8,145,998, reflecting the determination in IPR2015-01325 and confirming that claims 2, 3, 7, 8, and 11-18 were found patentable. Patentable claim 18 is currently asserted against Defendants. Dkt. 269.
Activision's Reply: Activision does not dispute that the USPTO issued an Inter Partes Review Certificate for the '998 Patent on May 20, 2020. Activision further does not dispute that, in IPR2015-01325, claims 2, 3, 7, 8, and 11-18 of the '998 Patent were found patentable over the specific invalidity grounds raised in IPR2015-01325.
Activision further does not dispute that claim 18 of the '998 Patent is currently asserted against Defendants. Activision disputes Worlds' characterization that claims 2, 3, 7, 8, and 11-18 are patentable.
21. With regard to Paragraphs 96-100 of Defendants' Statement of Undisputed Materials Facts, Worlds does not dispute that the Examiner made the statements, and issued the rejections, referenced by Defendants. Worlds disputes Activision's characterization of the Examiner's conclusions and denies that Paragraphs 96-100 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶96. Worlds further disputes that Shiio (which Defendants' have not attached to their Motion for Summary Judgment) anticipates or makes obvious claim 20 of the '998 Patent, which is not currently being asserted against Defendants. The PTO later issued the '998 Patent over Shiio.
- 10 - 2 Activision's Reply: Activision disputes the validity of the asserted claim of the '998 Patent and maintains that this claim is invalid.
Activision otherwise does not dispute Paragraph 21 of Worlds' Rule 56.1 Statement. 22. On February 8, 2012, the PTO Examiner issued a Notice of Allowability allowing claims 4â??24 (all claims) in Patent Application No. 12/406,970 (the Application that matured into the '998 Patent) over prior art. In that Notice of Allowability, the Examiner concluded in the section titled "Allowable Subject Matter": Claims 4â??24 are allowable over the prior art of record. 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 receiving, at a client processor associated with the local user, positions information 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 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 avatar in the virtual environment. These features are not found or suggested in the prior art. Id. at
3. Activision's Reply: Activision does not dispute that the USPTO issued a Notice of Allowability for Patent Application No. 12/406,970 as to the then-pending claims; however, although not relevant to the motion, Activision disputes the date of issue, as the Notice of Allowability issued on February 10, 2012. Moreover, although not relevant to the motion, Activision also disputes Worlds' characterization of the Examiner's decision to the extent that it is misquoted. Activision further disputes the validity of the asserted claim of the '998 Patent and maintains that the claim is invalid.
11 - 2 Worlds, Inc. and Worlds Chat 23. On May 2, 2014, Worlds President Thom Kidrin submitted a declaration in support of Worlds' Motion to Transfer Venue. In that declaration, Kidrin asserted, "In 1995, four [ ] Worlds employees â?? Bo Adler, S. Mitra Ardron, Judith Challinger, and Dave Leahy (the 'named inventors') â?? conceived of the inventions disclosed in the patents asserted in this lawsuit." Kidrin further asserted, "[the named inventors] arrived at their inventions â?¦ while developing Worlds' virtual-worlds software platforms, Worlds Chat and AlphaWorld â?? both of which were first introduced in 1995." Activision's Reply: Activision does not dispute that Thomas Kidrin, President of Worlds, submitted a declaration in support of Worlds' motion to transfer venue. Activision disputes portions of the content therefrom. Specifically, Activision disputes that the patents-in-suit encompass a patentable invention. Further, although not material to the motion, Activision disputes that such invention was invented by Mr. Adler, Mr. Ardron, Ms. Challinger, and Mr. Leahy, and that such invention was conceived of and made while developing the Worlds Chat and AlphaWorld software platforms. Furthermore, Activision objects to the inclusion of Mr. Kidrin's statements to the extent they constitute inadmissible evidence, including but not limited to inadmissible hearsay under Federal Rule of Evidence 802. 24. In 1995, Worlds, Inc. released Worlds Chat, a software program, which was a virtual worlds software application that allowed remote users to chat, over the internet, in a visually rich 3- D virtual world. Worlds' Press Release announcing the availability of Worlds Chat on April 25, 1995, describes Worlds Chat as "the first on-line 3-D chat environment for the PC." The Press Release also states that "Worlds['] mission is to offer people compelling shared VR experiences. A radical leap from menu-driven, icon-based interfaces, Worlds' ground breaking technology connects 3-D interactive environments over regular phone lines today. Hardware requirements are - 12 - 2 a 9600 baud modem or better and a 486 PC or better. Macintosh availability will follow later this Spring."
Activision's Reply: Activision does not dispute that Business Wire published an article on April 25, 1995 entitled "Worlds Inc. Announces 'Worlds Chat.'" Activision disputes that it is a "Press Release" from "Worlds." Moreover, Worlds has not sufficiently demonstrated the authenticity of the corresponding document it provided. Activision submits that the document may not be relied on for the statements and characterizations therein, which Activision further submits are immaterial to the motion. Moreover, although not material to the motion, Activision disputes that Worlds Chat was "the first on-line 3-D chat environment for the PC." Furthermore, Activision objects to the inclusion of the article's contents on the grounds that it is hearsay and thus inadmissible evidence under Federal Rule of Evidence 802. 25. On May 14, 1995, the San Francisco Examiner published an article entitled "S.F. Startup Making Waves with 3-D Virtual Reality World on the Internet." The article states, "Worlds â?? a spin off of La Crescenta-based edutainment firm Knowledge Adventure â?? has created Worlds Chat. It is one of the first examples of virtual reality on the Internet I've seen." The article further states, "Worlds Chat is a virtual reality, multiuser 3-D world that you can walk through and meet people in." The article further states, "Worlds Chat is different. This isn't just text, it's a graphical environment." The article further states, "Last week, movie director Steven Spielberg announced that his nonprofit Starbright Foundation is working with Worlds, Intel, UB Networks, and Sprint to create a 3-D environment where hospitalized children can play and socialize with each other."
Activision's Reply: Activision does not dispute that the San Francisco Examiner published an article entitled "Whole New Worlds On-line: S.F. Startup Making Waves with 3D Virtual - 13 - 2 Reality World on the Internet" on May 14, 1995. However, Worlds has not sufficiently demonstrated the authenticity of the corresponding document it provided, including but not limited to the extent it is a redacted version of Dkt. 184-10. Activision submits that the document may not be relied on for the statements and characterizations therein, which Activision further submits are immaterial to the motion. Further, although not material to the motion, Activision disputes that Worlds Chat was "one of the first examples of virtual reality on the Internet." Activision further disputes the relevance and materiality of the sentence concerning Steven Spielberg and Starbright Foundation, because there is no nexus to Worlds' asserted patents. Although not relevant to the motion, Activision further disputes Paragraph 25 of Worlds' Rule 56.1 Statement to the extent the article is misquoted. Furthermore, Activision objects to the inclusion of the article on the grounds that it is hearsay and thus inadmissible evidence under Federal Rule of Evidence 802. 26. On June 11, 1995, the Dallas Morning News published an article titled "Here's an internet chat room worth talking about." The article states, "Worlds Chat is the hottest innovation the Internet will see this year. Write it down, take it to the bank. It may well be the most important, too, not just for the innovation it marks but the potential it brings to cyberspace." The article further states, "Worlds Chat is a new service from Worlds Inc. of San Francisco. It uses direct Internet connections, the type offered by local service providers and CompuServe, to gather users from around the world."
Activision's Reply: Activision does not dispute that The Dallas Morning News published an article entitled "Here's a Chat Room Worth Talking About" on June 11, 1995. However, Worlds has not sufficiently demonstrated the authenticity of the corresponding document it provided, including but not limited to the extent it is a redacted version of Dkt. 184-11. - 14 - 2 Activision submits that the document may not be relied on for the statements and characterizations therein, which Activision further submits are immaterial to the instant motion. In particular, although not material to the motion, Activision disputes that Worlds Chat was "the hottest innovation the Internet [saw] [in 1995]." Activision furthers disputes that Worlds Chat was "the most important â?¦ innovation" of 1995. Furthermore, Activision objects to the inclusion of the article on the grounds that it is hearsay and thus inadmissible evidence under Federal Rule of Evidence 802. Worlds' Objects to Activision's Use of Vacated Decisions in Inter Partes Review 27. On September 7, 2018, the Federal Circuit vacated and remanded back to the Patent Trial and Appeal Board ("PTAB") the Final Written Decisions in IPR2015-01264 (related to U.S. Patent No. 7,945,856), IPR2015-01319 (related to U.S. Patent No. 8,082,501), and IPR2015- 01321 (related to U.S. Patent No. 8,145,998). See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
Activision's Reply: Activision does not dispute Paragraph 27 of Worlds' Rule 56.1 Statement. 28. On January 14, 2020, the USPTO's PTAB issued a Termination Vacating Institutions and Dismissing Proceedings on Remand in IPR2015-01264 (related to U.S. Patent No. 7,945,856), IPR2015-01319 (related to U.S. Patent No. 8,082,501), and IPR2015-01321 (related to U.S. Patent No. 8,145,998) (collectively, the "Vacated Final Written Decisions").
Activision's Reply: Activision does not dispute Paragraph 28 of Worlds' Rule 56.1 Statement. - 15 - 2 29.
Worlds objects to Activision's use of the Vacated Final Written Decisions under Fed R. Evid. 402 and 403 and containing inadmissible hearsay. See Dtk. 274 (Exs. 7-9); Dtk. 275, ¶¶46, 75, 108. Activision's Reply: Activision submits that Worlds did not, in fact, dispute the facts relating to the subsequently vacated Final Written Decisions in IPR2015-01264, IPR2015- 01319, and IPR2015-01321 in Defendants' Statement of Material Facts. See Dkt. 275 ¶ 46 ("The PTAB issued a Final Written Decision in IPR2015-01264 on November 10, 2016, finding that claim 1 of the '856 Patent is unpatentable."); id. ¶ 75 (similar for '501 Patent); id. ¶ 108 (similar for '998 Patent in IPR2015-01321); Dkt. 277 11 (Worlds admitting it "does not dispute Paragraphs 36-47 � of Defendants' Statement of Undisputed Facts");
14 ("Worlds does not dispute Paragraphs â?¦ 69-76 â?¦ of Defendants' Statement of Undisputed Material Facts.");
19 ("Worlds does not dispute Paragraphs â?¦ 101-109 â?¦ of Defendants' Statement of Undisputed Material Fact.").
30. Vacated decisions have no precedential effect. See County of Los Angeles v. Davis, 440 U.S. 625, 634 n. 6 (1979) ("Of necessity our decision 'vacating the judgment of the Court of Appeals deprives that court's opinion of precedential effect'") (quoting O'Connor v. Donaldson, 422 U.S. 563, 577-78 n. 12 (1975)); see also Tollett v. City of Kemah, 285 F.3d 357, 366 (5th Cir. 2002) ("It goes without saying that, as a result of the revised sanctions [order] being vacated, the findings of fact and conclusions of law in the district court's post-remand orders, . . . are vacated as well."). As such, the Vacated Final Written Decisions lack relevance under Fed. R. Evid. 402. Further, any probative value of a vacated decision, including vacated findings set forth therein, is substantially outweighed by the unfair prejudice to Worlds under Fed. R. Evid. 403. The Vacated Final Written Decisions should be disregarded as irrelevant and unfairly prejudicial.
16 - 2 Activision's Reply: Activision submits that the subsequently vacated Final Written Decisions are relevant under Federal Rule of Evidence 401. The PTAB is an administrative body with the authority to determine whether patent claims are patentable and should issue. The PTAB's view as to the patentability of the asserted claims of the '856, '501, and '998 Patents "has a tendency to make a fact more or less probable than it would be without the evidence i.e., that the asserted claims are not patentable and "is of consequence in determining the action." See Fed. R. Evid. 401. Activision further submits that the Federal Circuit expressly declined to address the merits of the PTAB's findings in IPR2015-01264, IPR2015-01319, and IPR2015-01321 that the asserted claims of the '856, '501, and '998 Patents are unpatentable. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1248 (Fed. Cir. 2018) ("We therefore vacate the Board's merits decisions in their entirety, without speaking to the merits of the Board's analysis." (emphasis added)). Furthermore, Worlds has not met its burden of demonstrating that the probative value of the subsequently vacated Final Written Decisions in IPR2015-01264, IPR2015-01319, and IPR2015-01321 "is substantially outweighed by the danger of unfair prejudice." United States v. Tse, 375 F.3d 148, 164 (1st Cir. 2004) (emphasis in original). In fact, Worlds has not articulated any prejudice. 31. Further, the Vacated Final Written Decisions constitute inadmissible hearsay. The Federal Rules of Evidence prohibit the admission of hearsay, subject only to specifically enumerated exceptions. See Fed. R. Evid. 802 ("Hearsay is not admissible unless any of the following provides otherwise: a federal statute; these rules; or other rules prescribed by the Supreme Court."). A court judgment "is hearsay 'to the extent that it is offered to prove the truth of the matters asserted in the judgment.'" United States v. Sine, 493 F.3d 1021, 1036 (9th Cir. 2007) (quoting United States v. Boulware, 384 F.3d 794, 806 (9th Cir. 2004)); accord Herrick v. Garvey, 298 F.3d 1184, 1191-92 - 17 - 2 (10th Cir. 2002) (holding that a court judgment offered to prove ownership of documents was hearsay and could not be considered in response to a motion for summary judgment); Nipper v. Snipes, 7 F.3d 415, 417 (4th Cir. 1993) (reaching the same conclusion and noting "that at common law a judgment from another case would not be admitted").
Activision's Reply: Activision submits that the subsequently vacated Final Written Decisions in IPR2015-01264, IPR2015-01319, and IPR2015-01321 are not inadmissible hearsay. In the alternative, Activision submits that the subsequently vacated Final Written Decisions in IPR2015-01264, IPR2015-01319, and IPR2015-01321 are admissible under the public records exception to the rule against hearsay. Davignon v. Hodgson, 524 F.3d 91, 113 (1st Cir. 2008) ("The Supreme Court has interpreted this 'public records' exception to the hearsay rule broadly to include both conclusions and opinions of public offices and agencies." (citations omitted)); Fed. R. Evid. 803(8). Activision further submits that the Court may take judicial notice of the PTAB's subsequently vacated Final Written Decisions in IPR2015-01264, IPR2015-01319, and IPR2015-01321. See Manguriu v. Lynch, 794 F. 3d 119, 121 (1st Cir. 2015) ("We note, moreover, that courts normally can take judicial notice of agency determinations."); Kowalski v. Gagne, 914 F.2d 299, 305 (1st Cir. 1990) ("It is well-accepted that federal courts may take judicial notice of proceedings in other courts if those proceedings have relevance to the matters at hand."); Lopes v. Riendeau, 177 F. Supp. 3d 634, 666 (D. Mass. 2016) ("A court may also take judicial notice of judicial decisions. This rule allows a court to take judicial notice of its own orders." (citations omitted)); see also Fed. R. Evid. 201. Additionally, inclusion of the Federal Circuit's decision and the subsequently vacated Final Written Decisions is appropriate because a "court may consider matters of public record" when considering a 12(b)(6) motion.
- 18 - 2 Giragosian v. Ryan, 547 F.3d 59, 66 (1st Cir. 2008) (upholding the district court's consideration of a state-court judgment when deciding a motion to dismiss, as the state court adjudication was a matter of public record and its use was "not a 'surprise' or otherwise 'unfair'"); Lopes, 177 F. Supp. 3d at 666 n.33 (applying Giragosian v. Ryan when considering a motion for summary judgment).
32. The Administrative Law Judges at the PTAB were acting in an adjudicatory capacity, not as an investigative body, in rendering the Vacated Final Written Decisions. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) ("It's the petitioner, not the Director, who gets to define the contours of the proceeding"); 35 U.S.C. §§ 316(c), 318(a). Thus, no public-records exception to hearsay (Fed. R. Evid. 803(8)) applies. See Nipper, 7 F.3d at 417 (holding that judicial findings of fact are inadmissible hearsay). Moreover, the status of the decisions as vacated should more than satisfy "circumstances [that] indicate a lack of trustworthiness" of the reasoning in the Vacated Final Written Decisions. See Fed. R. Evid. 803(8)(B).
Activision's Reply: Activision incorporates by reference its response to Paragraph 31 of Worlds' Rule 56.1 Statement. Activision further submits that the Federal Circuit expressly declined to address the merits of the PTAB's findings in IPR2015-01264, IPR2015-01319, and IPR2015-01321 that the asserted claims of the '856, '501, and '998 Patents are unpatentable. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1248 (Fed. Cir. 2018) ("We therefore vacate the Board's merits decisions in their entirety, without speaking to the merits of the Board's analysis." (emphasis added)). Accordingly, contrary to Worlds' assertions, nothing in the Federal Circuit's decision suggests that the substance of the decisions, and the underlying reasoning, lacks trustworthiness. - 19 - 2 33. It follows that any factual finding and legal conclusion contained in the Vacated Final Written Decisions is inadmissible hearsay. See, e.g., Sine, 493 F.3d at 1036 ("It is even more plain that the introduction of discrete judicial fact findings and analysis underlying the judgment to prove the truth of those findings and that analysis constitutes the use of hearsay."); accord Herrick, 298 F.3d at 1192 (holding that "judicial findings of fact in a prior, unrelated case" are inadmissible hearsay); United States v. Jones, 29 F.3d 1549, 1554 (11th Cir. 1994) (holding that findings of fact and references to testimony in a separate district court's order "were not admissible evidence and should not have been considered by the district court"); Nipper, 7 F.3d at 417 (holding that judicial findings of fact are inadmissible hearsay).
Activision's Reply: Activision incorporates by reference its responses to Paragraphs 31 and 32 of Worlds' Rule 56.1 Statement.
- 20 - 2 Respectfully submitted, Dated: June 23, 2020 By: /s/ Sonal N. Mehta Sonal N. Mehta (pro hac vice) Sonal.Mehta@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, CA 94304 Tel.: (650) 858-6000 Fax: (650) 858-6100 Kevin S. Prussia (BBO# 666813) Kevin.Prussia@wilmerhale.com Claire M. Specht (BBO# 687952) Claire.Specht@wilmerhale.com Scott Bertulli (BBO# 690958) Scott.Bertulli@wilmerhale.com Rian M. Rossetti (BBO# 703878) Rian.Rossetti@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Tel.: (617) 526-6000 Fax: (617) 526-5000 Attorneys for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc. - 21 - 2 CERTIFICATE OF SERVICE I hereby certify that the foregoing document filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) this 23rd day of June, 2020. By: /s/ Sonal N. Mehta
The latest and greatest 1 0f 2
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff, v. ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. and ACTIVISION PUBLISHING, INC., Defendants.
Civil Action No. 1:12-CV-10576 (DJC) DEFENDANTS’ REPLY MEMORANDUM IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT THAT THE ASSERTED PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. § 101 Case 1:12-cv-10576-DJC Document 281 Filed 06/23/20 Page 1 of 16
TABLE OF CONTENTS I.ALICE STEP ONE: THE ASSERTED CLAIMS ARE DIRECTED TO AN ABSTRACT IDEA.
2A. The Asserted Claims Are Directed to the Abstract Idea of Performing Crowd Control by Filtering Information.
2B. The Problem Addressed by Worlds’ Patents Is Not Necessarily Rooted in Computer Technology.
5C. Worlds’ Patents Do Not Offer a Technological Means for Solving the Problem. ........
7II. ALICE STEP TWO: THE ASSERTED PATENTS DO NOT CLAIM AN INVENTIVE CONCEPT.
8A. Worlds’ Alleged Invention Is Carried Out Using Generic Computer Technology.
8B. Worlds’ Patents Contain No Inventive Concept.
9III.CONCLUSION
10Case 1:12-cv-10576-DJC Document 281 Filed 06/23/20 Page 2 of 16
Full Text IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS) WORLDS, INC.,)) Plaintiff,)) v.) Civil Action No. 1:12-CV-10576 (DJC)) ACTIVISION BLIZZARD, INC.,) BLIZZARD ENTERTAINMENT, INC. and) ACTIVISION PUBLISHING, INC.,))) Defendants.)
DEFENDANTS' REPLY MEMORANDUM IN SUPPORT OF THEIR MOTION FOR SUMMARY JUDGMENT THAT THE ASSERTED PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. 101 TABLE OF CONTENTS I. ALICE STEP ONE: THE ASSERTED CLAIMS ARE DIRECTED TO AN ABSTRACT IDEA.
2 A. The Asserted Claims Are Directed to the Abstract Idea of Performing Crowd Control by Filtering Information.
2 B. The Problem Addressed by Worlds' Patents Is Not Necessarily Rooted in Computer Technology.
5 C. Worlds' Patents Do Not Offer a Technological Means for Solving the Problem. ........7 II. ALICE STEP TWO: THE ASSERTED PATENTS DO NOT CLAIM AN INVENTIVE CONCEPT.
8 A. Worlds' Alleged Invention Is Carried Out Using Generic Computer Technology.
8 B. Worlds' Patents Contain No Inventive Concept.
9 III. CONCLUSION
10 -i- 6 TABLE OF AUTHORITIES Page(s) Federal Cases Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014)
2 Am. Well Corp. v. Teladoc, Inc., 191 F. Supp. 3d 135 (D. Mass. 2016)
6 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
4, 10 Bridge & Post, Inc. v. Verizon Commc'ns, Inc., 778 F. App'x 882 (Fed. Cir. 2019)
9 Celotex Corp. v. Catrett, 477 U.S. 317 (1986)
9 ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019)....................................................................................................7 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343 (Fed. Cir. 2014)..................................................................................................6 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)..................................................................................................7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)..............................................................................................5, 6 FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016)..................................................................................................8 Fuzzysharp Techs., Inc. v. Intel Corp., 595 F. App'x 996 (2015) ...........................................................................................................4 Fuzzysharp Techs., Inc. v. Intel Corp., 2013 WL 5955668 (N.D. Cal. Nov. 6, 2013) ............................................................................4 Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F. App'x 996 (Fed. Cir. 2018), .....................................................................................4, 10 Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017)..................................................................................................7 - ii - 6 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)..................................................................................................4 Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015)............................................................................4 Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335 (Fed. Cir. 2018)..................................................................................................7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)..................................................................................................8 Smartflash LLC v. Apple Inc., 680 F. App'x 977 (Fed. Cir. 2017) ............................................................................................6 Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017)............................................................................................8, 10 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)....................................................................................................4 Federal Statutes 35 U.S.C. § 101 ......................................................................................................................2, 6, 10 - iii - 6 Worlds, Inc. ("Worlds") seeks to cloak its alleged invention in technological jargon by describing it as "a specific approach to client-server interactions that define how avatar position and state information is processed and communicated, at both the client side and server side of a network." Dkt. 276 ("Opp.") at 1. But the Worlds patents, on their face, admit that virtual worlds operating in a client-server network were "typical" at the time Worlds filed its applications. Stripped away of the technical jargon relating to conventional computer networks, all that remains in Worlds' patents is the abstract of idea of limiting or filtering some of the information transmitted in those "typical" networks. But the idea of filtering information to resolve traffic or crowding is not something that "specifically arose in the realm of computer networks." Opp. at 8. It is a basic method of organizing information and human activity. Consistently and repeatedly, Worlds has characterized its patents as directed to a method of "crowd control." Worlds did so in its patent specification: "Crowd control is one of the tougher problems solved by the present system." Dkt. 274-1 at 13:23-24. It did so during inter partes review proceedings: "Claim 4 clearly finds written description support in the concept of 'crowd control' described in the specification." E.g., Dkt. 274-6 at 20; Dkt. 274-13 at 154:21-24 ("I think there is one point in the '690 patent â?¦ where they say crowd control was one of the most important things we had to overcome."). And it did so in this case: "Defendants are correct that the Worlds Patents disclose a solution to the 'crowd control problem.'"1 Dkt. 68 at 4; id. ("'[C]rowd control' necessitates only that a crowd be controlled by filtering information using some means."). Now, Worlds seeks to run away from its own representations about the nature of its alleged inventionsâ??arguing in its opposition that such a characterization of its patents "over-simplifies" and "misapprehends what is claimed." Opp. at 1. The reason for Worlds' about-face is clear: it 1 Emphases added and internal citations omitted throughout, unless otherwise noted. -1- 6 cannot explain why its supposed method of performing crowd control in a virtual world is any different from performing that same concept in the real world. Worlds' patents are not limited to any specific form or implementation of filtering. Notably, Worlds never once identifies what "specific approach" is taught by the claims or how it is performed. Indeed, Worlds' opposition never once refers to the language of any claim. That is because the claims do nothing more than recite a general client-server computer architecture to perform routine functions of filtering information to address the generic problem of crowd control. In doing so, Worlds seeks to capture any computer network in which some position information is not transmitted, via any method whatsoeverâ??exactly what § 101 was intended to forbid. I. ALICE STEP ONE: THE ASSERTED CLAIMS ARE DIRECTED TO AN ABSTRACT IDEA. A. The Asserted Claims Are Directed to the Abstract Idea of Performing Crowd Control by Filtering Information. As Activision explained in its Motion, Worlds' asserted claims are directed to the idea of filtering information2â??i.e., in Worlds' own words, a form of "crowd control." See Dkt. 273 ("Mot.") at 10-13. Indeed, the Court acknowledged the same during its Markman Order. See, e.g., Dkt. 153 at 8 ("Worlds acknowledged that the invention is designed to accomplish crowd control, but argued that this crowd control function can be accomplished in a flexible and variable manner. After review of the specification, the Court agrees that the specification discloses an invention to solve the problem of 'crowd control.'"). While Worlds asserts that "[t]his is wrong," Opp. at 6, notably absent from Worlds' opposition is any discussion of what is actually claimed. Take, for 2 That Worlds' patents are directed to filtering a particular category of informationâ?? "position information"â??does not save it from being abstract. See Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208, 223 (2014) ("limiting the use of an abstract idea 'to a particular technological environment'" "is not enough for patent eligibility"). -2- 6 example, claim 1 of the '856 patent (Dkt. 274-3): 3 '856 Patent, Claim 1 1. A method for enabling a first user to interact with second users in a virtual space, wherein the first user is associated with at first avatar and a first client process, the first client process being configured for communication with a server process, and each second user is associated with a different second avatar and a second client process configured for communication with the server process, at least one second client process per second user, the method comprising: (a) receiving by the first client process from the server process received positions of selected second avatars; and (b) determining, from the received positions, a set of the second avatars that are to be displayed to the first user; wherein the first client process receives positions of fewer than all of the second avatars. As Worlds explained to the Court during Markman, the "determining" step is the crucial step where the "crowd control" happens. At Worlds' behest, the Court construed that step as being directed to nothing more than "filtering"â??and specifically client-side filtering. While Worlds' opposition touts the invention as "including improved protocols," Opp. at 3, the only such "protocols" actually claimed relate to "receiving" from a server "positions of fewer than all of the" other users' avatars and then "determining" from the received positions which avatars to display at the user's computer. Nothing in the claim specifies how the "determining" is done; rather, as Worlds itself argued during claim construction, the "determining" limitation "we all agree, is client-side filtering" requires only that "the client determines from the positions it has received which avatars to display," without specifying what criteria are used to filter that result. See Ex. 18 (Oct. 3, 2014 Hrg. Tr.) at 70:13-25; see also Mot. at 8-9, 17-19. Because the two key steps (the "determining" and "receiving" steps) are directed to bare filtering, and filtering data was the solution to the crucial problem that the alleged invention is 3 Worlds does not dispute that the claims Activision advances in its Motion are representative. Worlds takes it a step further and collapses the asserted patents into a single group. Opp. at 6. -3- 6 intended to solve, the claims are "directed to" filtering under Alice step one. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content."); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016) (claims with steps of "receiving, on a processing system, file content identifiers" and "determining, on the processing system, whether each received content identifier matches a characteristic of other identifiers," directed to filtering e-mails). As the Federal Circuit has concluded, claims directed to filtering data based on a set of rulesâ??like the "positional information" or "condition" at issue hereâ??claim an abstract idea. See, e.g., Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F. App'x 996, 998 (Fed. Cir. 2018) (non-precedential), cert. denied, 140 S. Ct. 114, 205 L. Ed. 2d 34 (2019) (finding claims directed to "deliver the allowable content and inhibit the communication of other content" abstract); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("We agree with the district court that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract."); Mot. at 11-13. 4 4 Worlds' attempts to distinguish Fuzzysharp Techs. Inc. v. Intel Corp., 595 F. App'x 996 (Fed. Cir. 2015) (non-precedential), and Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015) ("IV II"), are without merit. Opp. at 14-15. As to Fuzzysharp, the court found the filtering of information claimed in the patent at issue there was an abstract idea. Fuzzysharp Techs. Inc. v. Intel Corp., 2013 WL 5955668, at *10 (N.D. Cal. Nov. 6, 2013). As to IV II, Worlds argues that, unlike the patents in that case, "the Worlds claims recite â?¦ specific operating principles." Opp. at 15. Tellingly, Worlds does not identify what those principles are. That is because Worlds' claims fail for the same reasons as the claims in IV II: they recite filtering information based on a set of undefined rules. 2015 WL 1941331, at *8 ("The patent does not describe the nature of the rule, what â?¦ determines the rule to be selected, how the rule determines who may access the packet and to what degree, or anything about the rule itself."). -4- 6 B. The Problem Addressed by Worlds' Patents Is Not Necessarily Rooted in Computer Technology. Worlds argues that the filtering its claims are directed to is "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." Opp. at 6 (original emphasis omitted). In doing so, it attempts to differentiate the problems solved by its patents from those faced in the real world, arguing there is no risk that "due to a large number of people in a room, one's consciousness may shut down, or people move erratically, stop talking, or disappear." Opp. at 8. This argument fails. The issues resulting from the influx of too much traffic (network or crowds)â?? overwhelming the client and resulting in a breakdown of service to the individual userâ??is familiar to anyone who has ever received poor service in a crowded restaurant or been the overwhelmed waiter on the other side. Indeed, even the specific constraints of displaying too much information is well-knownâ??take for example, Activision's example of filtering the crowded display of an air traffic control radar based on numerical, positional, or other "conditions." Mot. at 1-2, 11. 5 Worlds attempts to narrow the problem solved by its patents to a list of very specific issues: "one's consciousness may shut down, or people move erratically, stop talking, or disappear." Opp. at 8. But the claims are not limited to filtering information to avoid a specific network failureâ?? rather, Worlds broadly asserts the claims against any information not transmitted in a network. Regardless, even these extreme issues Worlds cites as unique to computing have real-world analogues: an overcrowded space may very well limit the movement of people in the room or make it impossible to converse or see others in the crowd. Worlds' citation to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. 5 Worlds does not meaningfully dispute that this example is an analogue to the asserted claims; it just summarily concludes that it is "unrealistic." Opp. at 12 n.6. -5- 6 Cir. 2014), is inapposite. The Federal Circuit has cautioned that, despite the specific holding in DDR, "'not all claims purporting to address Internet-centric challenges are eligible for patent'" if those claims merely recite an abstract idea. E.g., Smartflash LLC v. Apple Inc., 680 F. App'x 977, 983-84 (Fed. Cir. 2017) (non-precedential) (considering DDR as part of Alice step two; finding patents claiming "reading, receiving, and responding to payment validation data and, based upon the amount of payment, and access rules, allowing access to multimedia content" abstract). In DDR, the problem described in the patent was "third-party merchants â?¦ 'lur[ing] the [host website's] visitor traffic away' from the host website because visitors would be taken to the third-party merchant's website when they clicked on the merchant's advertisement on the host site." 773 F.3d at 1248. The example Worlds pulls from the case (the court's reasoning that "there is â?¦ no possibility that by walking up to [a] kiosk, the customer will be suddenly and completely transported outside the â?¦ store and relocated to a separate physical venue associated with the third-partyâ??the analog[ue] of what ordinarily occurs in 'cyberspace' after the simple click of a hyperlink") was a close analogue to the specific problem that patent solved. Here, by contrast, Worlds has proposed analogues covering an artificially narrowed conception of the problem. In any event, Worlds is incorrect that a concept must have a literal real-world analogue to be unpatentable under § 101. E.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (rejecting argument that because "human minds are unable to process and recognize the stream of bits output by a scanner," claims were not directed to an abstract idea); Am. Well Corp. v. Teladoc, Inc., 191 F. Supp. 3d 135, 144 (D. Mass. 2016) (finding claims embodied abstract idea of connecting a patient with an available doctor even if there was no pre-internet analogue for instantaneously tracking present availability of doctors). -6- 6 C. Worlds' Patents Do Not Offer a Technological Means for Solving the Problem. Worlds' argument that "the concept of allowing users to interact in a virtual world specifically arises in the realm of networked computers," Opp. at 10-11, fails because merely limiting the abstract concept (filtering information) to a particular technological environment (networked computers) is not sufficient under Alice. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) ("[S]uch limitations do not make an abstract concept any less abstract under step one."); see also ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019) (the "idea of communication over a network for interacting with a device" was abstract even when "applied to the context of electric vehicle charging stations"). Worlds cites Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018), for the proposition that Worlds' patents improve upon technological limitations in electronic devices. Opp. at 11. In Core Wireless the court declined to "distill[] the technical invention down to an abstract idea achieved by the computer device's interface (i.e., an index)," and instead described the claimed concept as "a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer." 880 F.3d at 1363. However, unlike Worlds' claims, the claims at issue in Core Wireless clearly specified how to filter the information at issue (by listing the available data in summary form and allowing a user to select certain data via the user interface). 6 Id. at 1363-64; see also Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018) (claims that were results-based and failed to instruct "how to engineer or program the display of the second 6 Worlds argues that "the Worlds patents are directed to solving the network and processing requirements for client devices accessing an online virtual world by providing two opportunities to limit the data that is rendered by a client computer," Opp. at 10. But "providing opportunities" to filter does not explain how that information is filtered, much less filtered in an inventive way. -7- 6 data set in a way that does not interfere with the first data set" were abstract) (emphasis in original). McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016), is also distinguishable. In McRO, the claimed process included rules for automating the animation of characters' facial expressions, rather than claiming the idea of using computer-implemented rules to automate that process. Id. at 1313 ("[T]he claims are limited to rules with specific characteristics."). Worlds' patent claims contain no such specifics. Moreover, in McRO, the claimed process also "produced â?¦ results in fundamentally different ways" from how human artists produced the same results (of animating characters' facial expressions). FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016). That is not the case here. Determining whether to allow certain avatars (i.e., people) to show up in a virtual world based on selected criteria is not "fundamentally different" than the way that a human would approach the crowd control problem in the real world: by filtering based on some criteria. II. ALICE STEP TWO: THE ASSERTED PATENTS DO NOT CLAIM AN INVENTIVE CONCEPT. A. Worlds' Alleged Invention Is Carried Out Using Generic Computer Technology. Worlds' efforts to reframe the asserted claims as directed to "a novel computer architecture" are without merit and belied by the claim language itself. Rather than being a "novel computer architecture," the claims themselves are directed to generic computer components, such as a generic client and a generic server. E.g., 274-1 at cl. 4 ("client process" and "server process"); Dkt. 274-4 at cl. 1 ("client device" and "server process"); Dkt. 274-5 at cl. 18 ("a database," "a memory," and "a processor"). The fact that Worlds is ignoring the words of its own claims is telling. See, e.g., Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir. 2017) ("The main problem that Two-Way Media cannot overcome is that the claimâ??as opposed to something purportedly described in the specificationâ??is missing an inventive -8- 6 concept." (emphasis in original)); see also Bridge & Post, Inc. v. Verizon Commc'ns, Inc., 778 F. App'x 882, 886 (Fed. Cir. 2019) (non-precedential) (claim language is focus of Alice step 1). Worlds asserts there is no evidence that the claimed steps can be carried out using known and conventional hardware, software, and functions. Opp. at 19. Quite the contrary. Nothing in the substance of the claims requires them to be carried out on anything but a generic computer, and, as Activision explained, the evidence conclusively demonstrates they canâ??and are claimed toâ?? be. Mot. at 14-15, 20. One need not look further than Worlds' own infringement contentions to reject its argument. Worlds accuses the same games operating on entirely different consoles (e.g., Xbox, PlayStation, PC) as infringing, demonstrating that any hardware is suitable. Dkt. 160 at 2. Indeed, Worlds does not even limit its allegations to client-server networks. Dkt. 173 at 7. Further, Worlds alleges that the "filtering" can be infringed by any software, even if that software does not itself actively filter. For example, Worlds alleges that not receiving position information for a person not even in the game can satisfy the claims. Dkt. 275 ¶ 50. In doing so, Worlds seeks to preempt within conventional computer systems any form of filtering of position information. Such preemptive claiming of an abstract idea is precisely what Alice and its progeny sought to end. B. Worlds' Patents Contain No Inventive Concept. Ultimately, Worlds has not met its burden to show there is any dispute of material fact on the issue of whether its patents contain an inventive concept. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Worlds had at its disposal more than three years of fact discovery, full inter partes review proceedings, and the opportunity to submit an expert declaration or some other evidence with its opposition. Instead, Worlds attempts to meet its burden with bare assertions supported only by attorney argument, the patent claims, and file histories. Worlds asserts that, even if the patents-in-suit are directed to an abstract concept, the elements of the asserted claims "as an ordered combination" include an inventive concept -9- 6 sufficient to pass muster under Alice step two. Opp. at 17. But Worlds does not articulate what is inventive about any particular element of the asserted claims, nor the elements of the claims in an ordered combination. Rather, "receiving" information and "determining" what information to display is a routine and conventional combination of steps to achieve the abstract concept of filtering information. Two-Way Media, 874 F.3d at 1337 (claims describing "functional results of 'converting,' 'routing,' 'controlling,' 'monitoring,' and 'accumulating records'" did not "sufficiently describe how to achieve these results in a non-abstract way."). Moreover, the determining step does not necessarily require any filtering at allâ??i.e., in some instances, the claims cover just server filtering. See Dkt. 187 at 5; Ex. 19 (Nov. 10, 2015 Hrg. Tr.) at 8:4-12. Worlds' reliance on BASCOM is misplaced. Opp. at 16-17. In BASCOM, the court accepted that "the inventive concept rest[ed] on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account." 827 F.3d at 1350. Unlike Worlds' claims, the claims in BASCOM do not simply recite the generic step(s) that are inherent in almost any act of filtering. Rather, Worlds' claims are more akin to those addressed in Glasswall, which "recite steps that do not amount to anything more than an instruction to apply the abstract idea of filtering nonconforming data â?¦ plus the generic steps needed to implement the idea." 754 F. App'x at 999. As in Glasswall, Worlds' claims fail to claim how the filtering is carried out beyond "wholly functional" terms. Id. (claims do not claim "how it parses the content according to predetermined rules into allowable and nonconforming data") (emphasis in original). III. CONCLUSION Activision respectfully requests that the Court find all of the asserted patent claims invalid under 35 U.S.C. §101. - 10 - 6 Respectfully submitted, Dated: June 23, 2020 By: /s/ Sonal N. Mehta Sonal N. Mehta (pro hac vice) Sonal.Mehta@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel.: (650) 858-6000 Fax: (650) 858-6100 Kevin S. Prussia (BBO# 666813) Kevin.Prussia@wilmerhale.com Claire M. Specht (BBO# 687952) Claire.Specht@wilmerhale.com Scott Bertulli (BBO# 690958) Scott.Bertulli@wilmerhale.com Rian M. Rossetti (BBO# 703878) Rian.Rossetti@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, Massachusetts 02109 Tel.: (617) 526-6000 Fax: (617) 526-5000 Attorneys for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc. - 11 - 6 CERTIFICATE OF SERVICE I hereby certify that the foregoing document filed through the ECF system will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) this 23rd day of June, 2020. By: /s/ Sonal N. Mehta
Worlds, Inc. v. Activision Blizzard, Inc. et al (mad-1:2012-cv-10576)
Court: District of Massachusetts
Transcript of Motion Hearing held on November 10, 2015, before Judge Denise J. Casper. The Transcript may be purchased through the Court Reporter, viewed at the public terminal, or viewed through PACER after it is released. Court Reporter Name and Contact Information: Debra Joyce at joycedebra@gmail.com Redaction Request due 7/8/2020. Redacted Transcript Deadline set for 7/20/2020. Release of Transcript Restriction set for 9/15/2020. (filed: 06/17/2020)
NOTICE is hereby given that an official transcript of a proceeding has been filed by the court reporter in the above-captioned matter. Counsel are referred to the Court's Transcript Redaction Policy, available on the court website at http://www.mad.uscourts.gov/attorneys/general-info.htm (filed: 06/17/2020)
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Civil Justice Reform Act Reports, required to be
filed under the Civil Justice Reform Act of 1990
(CJRA). Under the act, federal courts are required to file semi-annual reports broken down
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Yes I am. They have been willful and premeditated in their actions. Now we should return the favor and send a clear and loud message to all those that have acted in the same manner.
IMHO
I agree with your assessment. I will give them a A+ for holding on like a rabid dog. However, I see no way they will win at this point. They are arguing against items that have already been decided within the past few months. I do not want a settlement.
1 THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF MASSACHUSETTSWORLDS, INC.,Plaintiff,v. ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. and ACTIVISION PUBLISHING, INC.,Defendants.)) ) ) ) ) ) ) ) ) ) )Civil Action No. 1:12-CV-10576 (DJC)WORLDS, INC.’S STATEMENT OF MATERIAL FACTS, AND OBJECTIONS AND RESPONSES TODEFENDANTS’ STATEMENT OF UNDISPUTED MATERIAL FACTSPursuant to Local Rule 56.1, Worlds submits this Statement of Material Facts, which alsoobjects and responds to Defendants’ Statement of Undisputed Material Facts. Worlds submits this Statement in support of its Opposition to Defendants’ Motion that the Asserted Patent Claims Are Invalid under 35 U.S.C. § 101. U.S. Patent No. 7,181,690 1.U.S. Patent No. 7,181,690 (the “’690 Patent”) was filed on August 3, 2000 and issued on February 20, 2007. Ex. A.12.Worlds does not dispute Paragraphs 1–21 of Defendants’ Statement of Undisputed Material Facts.1 As used herein, “Ex. nn” refers to correspondingly numbered exhibits of the concurrently filed Declaration of Wayne M. Helge in support of Worlds, Inc.’s Opposition to Defendants’ Motion for Summary Judgment Under 35 U.S.C. § 101.Case 1:12-cv-10576-DJC Document 277 Filed 06/09/20 Page 1 of 13
3.On February 9, 2018, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 7,181,690, reflecting the determination in IPR2015-01268 and confirming that claims 4, 8, 13, and 16 were found patentable. Ex. F. These patentable claims are currently asserted against Defendants. Dkt. 269.4.The “Background of the Invention” section of the specification of the ’690 Patent states, at 1:10–2:20:The present invention relates to the field of packet communications. More specifically, in one embodiment the invention provides an efficient communications network for client-server networks with large numbers of clients. A client-server network is a network where one or more servers are coupled to one or more clients over a communications channel. Typically, each server and each client is assigned an address so that each can determine which network messages are directed to it. While such a system may have only one server, it typically has many clients. A server object is one which waits for a request from a client object and then performs some service in response to the client request. A client is an object that makes the request. The designation of a particular object (computer hardware and/or software process) as a “server” object or a “client” object is not fixed. Thus, a given object can be a server for some services and a client of other services.A typical computer network has one or more file and print servers with a number of clients, where the clients are the desktop computers or workstations of the computer users, all coupled to a high-speed network cable. Client- server communications in such a network are easily handled for several reasons. When clients are not all communicating with the server at once the server need not be designed to handle all the clients at one time. Another reason is that the network traffic is much less than the network capacity furthermore, the clients in a typical computer network need not necessarily be communicating in real-time with the server. However, where many client machines or processes are communicating with each other in real-time through the server, several problems arise.For example, where a client-server system is used for real-time exchange of information, such as a distributed virtual reality network where users at client machines visually and aurally interact with other users at other client machines, communication is much more difficult, especially where the information is high-bandwidth data such as audio streams, graphic images and image streams. One application of such a client-server system is for game playing, where the positions and actions of each user need to be communicated between all the players to inform each client of the state changes (position, actions, etc.) which occurred at the other clients. Case 1:12-cv-10576-DJC Document 277 Filed 06/09/20 Page 2 of 13
The server might maintain global state information and serve as a data server for the clients as they request visual, program and other data as the game progresses.Some game systems use a peer-to-peer architecture. In a peer-to-peer architecture, a copy of the data which is common to all clients is kept by the client and information which needs to pass between clients is broadcast over the network. This limits the number of clients which can be connected to the network, because the number of messages passing between clients is on the order of the square of the number of clients. With true broadcasting, one message is, sent and all clients listen for it, but not all network topologies can handle broadcasts. Where less than all the clients are participating in a game, for example, messages cannot be broadcast because there are clients which should not be receiving the broadcast message. Instead, the broadcast between the players is handled by generating one message to each player client.This architecture is further limited where the network is not a dedicated network, but is an open network, such as the Internet. As used herein, the term “Internet” refers to the global inter-network of networks which communicates primarily using packets sent according to TCP/IP (Transport Control Protocol/Internet Protocol) standards well known in the art of computer intercommunication. With Internet communications, true broadcasting is not even possible because the network's extent is not known or fixed. Thus, messages to all players must be sent as separate messages. An additional problem with Internet communications is that packet delivery is not guaranteed nor is it even as reliable as a dedicated network.Therefore, what is needed is an efficient system for communication between many client systems over dedicated or open networks to provide graphical interaction between users operating the client systems.5.The “Summary of the Invention” section of the specification of the ’690 Patent states:The present invention provides a highly scalable architecture for a three- dimensional graphical, multi-user, interactive virtual world system. In a preferred embodiment a plurality of users interact in the three-dimensional, computer-generated graphical space where each user executes a client process to view a virtual world from the perspective of that user. The virtual world shows avatars representing the other users who are neighbors of the user viewing the virtual word. In order that the view can be updated to reflect the motion of the remote user's avatars, motion information is transmitted to a central server process which provides positions updates to client processes for neighbors of the user at that client process. The client process also uses an environment database to determine which background objects to render as well as to limit the movement of the user’s avatar.Case 1:12-cv-10576-DJC Document 277 Filed 06/09/20 Page 3 of 13
Full Text
3 THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS WORLDS, INC.,)) Plaintiff,)) v.) Civil Action No. 1:12-CV-10576 (DJC)) ACTIVISION BLIZZARD, INC.,) BLIZZARD ENTERTAINMENT, INC.) and ACTIVISION PUBLISHING, INC.,)) Defendants.)) WORLDS, INC.'S STATEMENT OF MATERIAL FACTS, AND OBJECTIONS AND RESPONSES TO DEFENDANTS' STATEMENT OF UNDISPUTED MATERIAL FACTS Pursuant to Local Rule 56.1, Worlds submits this Statement of Material Facts, which also objects and responds to Defendants' Statement of Undisputed Material Facts. Worlds submits this Statement in support of its Opposition to Defendants' Motion that the Asserted Patent Claims Are Invalid under 35 U.S.C. § 101. U.S. Patent No. 7,181,690 1. U.S. Patent No. 7,181,690 (the "'690 Patent") was filed on August 3, 2000 and issued on February 20, 2007. Ex. A. 1 2. Worlds does not dispute Paragraphs 1â??21 of Defendants' Statement of Undisputed Material Facts. 1 As used herein, "Ex. nn" refers to correspondingly numbered exhibits of the concurrently filed Declaration of Wayne M. Helge in support of Worlds, Inc.'s Opposition to Defendants' Motion for Summary Judgment Under 35 U.S.C. § 101. 1 3 3. On February 9, 2018, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 7,181,690, reflecting the determination in IPR2015-01268 and confirming that claims 4, 8, 13, and 16 were found patentable. Ex. F. These patentable claims are currently asserted against Defendants. Dkt. 269. 4. The "Background of the Invention" section of the specification of the '690 Patent states, at 1:10â??2:20: The present invention relates to the field of packet communications. More specifically, in one embodiment the invention provides an efficient communications network for client-server networks with large numbers of clients. A client-server network is a network where one or more servers are coupled to one or more clients over a communications channel. Typically, each server and each client is assigned an address so that each can determine which network messages are directed to it. While such a system may have only one server, it typically has many clients. A server object is one which waits for a request from a client object and then performs some service in response to the client request. A client is an object that makes the request. The designation of a particular object (computer hardware and/or software process) as a "server" object or a "client" object is not fixed. Thus, a given object can be a server for some services and a client of other services. A typical computer network has one or more file and print servers with a number of clients, where the clients are the desktop computers or workstations of the computer users, all coupled to a high-speed network cable. Client- server communications in such a network are easily handled for several reasons. When clients are not all communicating with the server at once the server need not be designed to handle all the clients at one time. Another reason is that the network traffic is much less than the network capacity furthermore, the clients in a typical computer network need not necessarily be communicating in real-time with the server. However, where many client machines or processes are communicating with each other in real-time through the server, several problems arise. For example, where a client-server system is used for real-time exchange of information, such as a distributed virtual reality network where users at client machines visually and aurally interact with other users at other client machines, communication is much more difficult, especially where the information is high- bandwidth data such as audio streams, graphic images and image streams. One application of such a client-server system is for game playing, where the positions and actions of each user need to be communicated between all the players to inform each client of the state changes (position, actions, etc.) which occurred at the other clients. 3 The server might maintain global state information and serve as a data server for the clients as they request visual, program and other data as the game progresses. Some game systems use a peer-to-peer architecture. In a peer-to-peer architecture, a copy of the data which is common to all clients is kept by the client and information which needs to pass between clients is broadcast over the network. This limits the number of clients which can be connected to the network, because the number of messages passing between clients is on the order of the square of the number of clients. With true broadcasting, one message is, sent and all clients listen for it, but not all network topologies can handle broadcasts. Where less than all the clients are participating in a game, for example, messages cannot be broadcast because there are clients which should not be receiving the broadcast message. Instead, the broadcast between the players is handled by generating one message to each player client. This architecture is further limited where the network is not a dedicated network, but is an open network, such as the Internet. As used herein, the term "Internet" refers to the global inter-network of networks which communicates primarily using packets sent according to TCP/IP (Transport Control Protocol/Internet Protocol) standards well known in the art of computer intercommunication. With Internet communications, true broadcasting is not even possible because the network's extent is not known or fixed. Thus, messages to all players must be sent as separate messages. An additional problem with Internet communications is that packet delivery is not guaranteed nor is it even as reliable as a dedicated network. Therefore, what is needed is an efficient system for communication between many client systems over dedicated or open networks to provide graphical interaction between users operating the client systems. 5. The "Summary of the Invention" section of the specification of the '690 Patent states: The present invention provides a highly scalable architecture for a three- dimensional graphical, multi-user, interactive virtual world system. In a preferred embodiment a plurality of users interact in the three-dimensional, computer-generated graphical space where each user executes a client process to view a virtual world from the perspective of that user. The virtual world shows avatars representing the other users who are neighbors of the user viewing the virtual word. In order that the view can be updated to reflect the motion of the remote user's avatars, motion information is transmitted to a central server process which provides positions updates to client processes for neighbors of the user at that client process. The client process also uses an environment database to determine which background objects to render as well as to limit the movement of the user's avatar. 3 A further understanding of the nature and advantages of the inventions herein may be realized by reference to the remaining portions of the specification and the attached drawings. U.S. Patent No. 7,493,558 6. U.S. Patent No. 7,493,558 (the "'558 Patent") was filed on November 2, 2006 and issued on February 17, 2009. Ex. B. 7. Worlds does not dispute Paragraphs 22â??35 of Defendants' Statement of Undisputed Material Facts. 8. On February 20, 2018, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 7,493,558, reflecting the determination in IPR2015-01269 and confirming that claims 5 and 7 were found patentable. Ex. G. These patentable claims are currently asserted against Defendants. Dkt. 269. 9. From the section labeled "Background of the Invention" to the patent claims, the specification of the '558 Patent is identical to the specification of the '690 Patent. In particular, the "Background of the Invention" and "Summary of the Invention" sections of the '558 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. U.S. Patent No. 7,945,856 10. U.S. Patent No. 7,945,856 (the '856 Patent") was filed on January 13, 2009 and issued on May 17, 2011. Ex. C. 11. Worlds does not dispute Paragraphs 36-47 and 49-51 of Defendants' Statement of Undisputed Material Facts. Worlds objects to Paragraph 48 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33. 12. From the section labeled "Background of the Invention" to the patent claims, the specification of the '856 Patent is identical to the specification of the '690 Patent. In particular, the 3 "Background of the Invention" and "Summary of the Invention" sections of the '856 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. U.S. Patent No. 8,082,501 13. U.S. Patent No. 8,082,501 (the '501 Patent") was filed on March 19, 2009 and issued on December 20, 2011. Ex. D. 14. Worlds does not dispute Paragraphs 52-55, 69-76, and 78-91 of Defendants' Statement of Undisputed Material Facts. Worlds denies that Paragraphs 56-68 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶56. Worlds objects to Paragraph 77 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33. 15. From the section labeled "Background of the Invention" to the patent claims, the specification of the '501 Patent is identical to the specification of the '690 Patent. In particular, the "Background of the Invention" and "Summary of the Invention" sections of the '501 Patent are identical to the sections reproduced in Paragraphs 3 and 4, herein. 16. With regard to Paragraphs 56-68 of Defendants' Statement of Undisputed Materials Facts, Worlds does not dispute that the Examiner made the statements, and issued the rejections, referenced by Defendants. Worlds disputes Activision's characterization of the Examiner's conclusions and denies that Paragraphs 56-68 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶56. Worlds further disputes that Shiio and/or Suzuki (which Defendants' have not attached to their Motion for Summary Judgment) anticipate or make obvious the asserted claims. The PTO later issued the '501 Patent over Shiio and Suzuki. Ex. J. 3 17. On November 2, 2011, the PTO Examiner issued a Notice of Allowability allowing claims 4â??20 (all claims) in Patent Application No. 12/406,968 (the Application that matured into the '501 Patent) over prior art. Ex. J. In that Notice of Allowability, the Examiner concluded in the "Reasons for Allowance": Claims 4â??20 are allowed over the prior art of records. 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. Id. at 5. U.S. Patent No. 8,145,998 18. U.S. Patent No. 8,145,998 (the '998 Patent") was filed on March 19, 2009 and issued on March 27, 2012. Ex. E. 19. Worlds does not dispute Paragraphs 92-95, 101-109, and 111-119 of Defendants' Statement of Undisputed Material Facts. Worlds denies that Paragraphs 96-100 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶96. Worlds objects to Paragraph 110 of Activision's Statement of Undisputed Material Facts, for the reasons set forth below in ¶¶27-33. 20. On May 20, 2020, the USPTO issued an INTER PARTES REVIEW CERTIFICATE for U.S. Patent No. 8,145,998, reflecting the determination in IPR2015-01325 and confirming that claims 2, 3, 7, 8, and 11-18 were found patentable. Ex. H. Patentable claim 18 is currently asserted against Defendants. Dkt. 269. 3 21. With regard to Paragraphs 96-100 of Defendants' Statement of Undisputed Materials Facts, Worlds does not dispute that the Examiner made the statements, and issued the rejections, referenced by Defendants. Worlds disputes Activision's characterization of the Examiner's conclusions and denies that Paragraphs 96-100 of Defendants' Statement of Undisputed Material Facts are "relevant to this motion." See Dtk. 275, ¶96. Worlds further disputes that Shiio (which Defendants' have not attached to their Motion for Summary Judgment) anticipates or makes obvious claim 20 of the '998 Patent, which is not currently being asserted against Defendants. The PTO later issued the '998 Patent over Shiio. Ex. K. 22. On February 8, 2012, the PTO Examiner issued a Notice of Allowability allowing claims 4â??24 (all claims) in Patent Application No. 12/406,970 (the Application that matured into the '998 Patent) over prior art. Ex. K. In that Notice of Allowability, the Examiner concluded in the section titled "Allowable Subject Matter": Claims 4â??24 are allowable over the prior art of record. 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 receiving, at a client processor associated with the local user, positions information 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 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 avatar in the virtual environment. These features are not found or suggested in the prior art. Id. at 3. 3 Worlds, Inc. and Worlds Chat 23. On May 2, 2014, Worlds President Thom Kidrin submitted a declaration in support of Worlds' Motion to Transfer Venue. Ex. L. In that declaration, Kidrin asserted, "In 1995, four [ ] Worlds employees â?? Bo Adler, S. Mitra Ardron, Judith Challinger, and Dave Leahy (the 'named inventors') â?? conceived of the inventions disclosed in the patents asserted in this lawsuit." Ex. L, ¶9. Kidrin further asserted, "[the named inventors] arrived at their inventions â?¦ while developing Worlds' virtual-worlds software platforms, Worlds Chat and AlphaWorld â?? both of which were first introduced in 1995." Ex. L, ¶10. 24. In 1995, Worlds, Inc. released Worlds Chat, a software program, which was a virtual worlds software application that allowed remote users to chat, over the internet, in a visually rich 3- D virtual world. Exs. M, N, O. Worlds' Press Release announcing the availability of Worlds Chat on April 25, 1995, describes Worlds Chat as "the first on-line 3-D chat environment for the PC." Ex. O. The Press Release also states that "Worlds['] mission is to offer people compelling shared VR experiences. A radical leap from menu-driven, icon-based interfaces, Worlds' ground breaking technology connects 3-D interactive environments over regular phone lines today. Hardware requirements are a 9600 baud modem or better and a 486 PC or better. Macintosh availability will follow later this Spring." Ex. O. 25. On May 14, 1995, the San Francisco Examiner published an article entitled "S.F. Startup Making Waves with 3-D Virtual Reality World on the Internet." Ex. M. The article states, "Worlds â?? a spin off of La Crescenta-based edutainment firm Knowledge Adventure â?? has created Worlds Chat. It is one of the first examples of virtual reality on the Internet I've seen." The article further states, "Worlds Chat is a virtual reality, multiuser 3-D world that you can walk through and meet people in." The article further states, "Worlds Chat is different. This isn't just text, it's a graphical environment." The article further states, "Last week, movie director Steven 3 Spielberg announced that his nonprofit Starbright Foundation is working with Worlds, Intel, UB Networks, and Sprint to create a 3-D environment where hospitalized children can play and socialize with each other." 26. On June 11, 1995, the Dallas Morning News published an article titled "Here's an internet chat room worth talking about." Ex. N. The article states, "Worlds Chat is the hottest innovation the Internet will see this year. Write it down, take it to the bank. It may well be the most important, too, not just for the innovation it marks but the potential it brings to cyberspace." The article further states, "Worlds Chat is a new service from Worlds Inc. of San Francisco. It uses direct Internet connections, the type offered by local service providers and CompuServe, to gather users from around the world." Worlds' Objects to Activision's Use of Vacated Decisions in Inter Partes Review 27. On September 7, 2018, the Federal Circuit vacated and remanded back to the Patent Trial and Appeal Board ("PTAB") the Final Written Decisions in IPR2015-01264 (related to U.S. Patent No. 7,945,856), IPR2015-01319 (related to U.S. Patent No. 8,082,501), and IPR2015- 01321 (related to U.S. Patent No. 8,145,998). See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018). 28. On January 14, 2020, the USPTO's PTAB issued a Termination Vacating Institutions and Dismissing Proceedings on Remand in IPR2015-01264 (related to U.S. Patent No. 7,945,856), IPR2015-01319 (related to U.S. Patent No. 8,082,501), and IPR2015-01321 (related to U.S. Patent No. 8,145,998) (collectively, the "Vacated Final Written Decisions"). Ex. I. 29. Worlds objects to Activision's use of the Vacated Final Written Decisions under Fed R. Evid. 402 and 403 and containing inadmissible hearsay. See Dtk. 274 (Exs. 7-9); Dtk. 275, ¶¶46, 75, 108. 3 30. Vacated decisions have no precedential effect. See County of Los Angeles v. Davis, 440 U.S. 625, 634 n. 6 (1979) ("Of necessity our decision 'vacating the judgment of the Court of Appeals deprives that court's opinion of precedential effect. . . .'") (quoting O'Connor v. Donaldson, 422 U.S. 563, 577-78 n. 12 (1975)); see also Tollett v. City of Kemah, 285 F.3d 357, 366 (5th Cir. 2002) ("It goes without saying that, as a result of the revised sanctions [order] being vacated, the findings of fact and conclusions of law in the district court's post-remand orders, . . . are vacated as well."). As such, the Vacated Final Written Decisions lack relevance under Fed. R. Evid. 402. Further, any probative value of a vacated decision, including vacated findings set forth therein, is substantially outweighed by the unfair prejudice to Worlds under Fed. R. Evid. 403. The Vacated Final Written Decisions should be disregarded as irrelevant and unfairly prejudicial. 31. Further, the Vacated Final Written Decisions constitute inadmissible hearsay. The Federal Rules of Evidence prohibit the admission of hearsay, subject only to specifically enumerated exceptions. See Fed. R. Evid. 802 ("Hearsay is not admissible unless any of the following provides otherwise: a federal statute; these rules; or other rules prescribed by the Supreme Court."). A court judgment "is hearsay 'to the extent that it is offered to prove the truth of the matters asserted in the judgment.'" United States v. Sine, 493 F.3d 1021, 1036 (9th Cir. 2007) (quoting United States v. Boulware, 384 F.3d 794, 806 (9th Cir. 2004)); accord Herrick v. Garvey, 298 F.3d 1184, 1191-92 (10th Cir. 2002) (holding that a court judgment offered to prove ownership of documents was hearsay and could not be considered in response to a motion for summary judgment); Nipper v. Snipes, 7 F.3d 415, 417 (4th Cir. 1993) (reaching the same conclusion and noting "that at common law a judgment from another case would not be admitted"). 32. The Administrative Law Judges at the PTAB were acting in an adjudicatory capacity, not as an investigative body, in rendering the Vacated Final Written Decisions. See SAS 3 Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) ("It's the petitioner, not the Director, who gets to define the contours of the proceeding"); 35 U.S.C. §§ 316(c), 318(a). Thus, no public-records exception to hearsay (Fed. R. Evid. 803(8)) applies. See Nipper, 7 F.3d at 417 (holding that judicial findings of fact are inadmissible hearsay). Moreover, the status of the decisions as vacated should more than satisfy "circumstances [that] indicate a lack of trustworthiness" of the reasoning in the Vacated Final Written Decisions. See Fed. R. Evid. 803(8)(B). 33. It follows that any factual finding and legal conclusion contained in the Vacated Final Written Decisions is inadmissible hearsay. See, e.g., Sine, 493 F.3d at 1036 ("It is even more plain that the introduction of discrete judicial factfindings and analysis underlying the judgment to prove the truth of those findings and that analysis constitutes the use of hearsay."); accord Herrick, 298 F.3d at 1192 (holding that "judicial findings of fact in a prior, unrelated case" are inadmissible hearsay); United States v. Jones, 29 F.3d 1549, 1554 (11th Cir. 1994) (holding that findings of fact and references to testimony in a separate district court's order "were not admissible evidence and should not have been considered by the district court"); Nipper, 7 F.3d at 417 (holding that judicial findings of fact are inadmissible hearsay). Dated: June 9, 2020 Respectfully submitted, /s/ Wayne M. Helge Wayne M. Helge (pro hac vice) whelge@dbjg.com Aldo Noto (pro hac vice) anoto@dbjg.com Alan A.Wright (pro hac vice) awright@dbjg.com Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com James T. Wilson (pro hac vice) jwilson@dbjg.com 3 DAVIDSON BERQUIST JACKSON & GOWDEY, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102 T: (571) 765-7700 Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002 T: (713) 651-9366 Joel R. Leeman (BBO # 292070) jleeman@sunsteinlaw.com SUNSTEIN KANN MURPHY & TIMBERS 125 Summer Street Boston, MA 02110-1618 T: (617) 443-9292 ATTORNEYS FOR PLAINTIFF, WORLDS, INC. 3 CERTIFICATE OF SERVICE I hereby certify that this document filed through the ECF systems will be sent electronically to the registered participants as identified on the Notice of Electronic Filing on the above date. /s/ Wayne M. Helge Wayne M. Helge
THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF MASSACHUSETTSWORLDS, INC.,Plaintiff,v. ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. and ACTIVISION PUBLISHING, INC.,Defendants.)) ) ) ) ) ) ) ) ) ) )Civil Action No. 1:12-CV-10576 (DJC)WORLDS, INC’S OPPOSITION TO DEFENDANTS’MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101Case 1:12-cv-10576-DJC Document 276 Filed 06/09/20 Page 1 of 26
i TABLE OF CONTENTSINTRODUCTION ................................................................................................................... 1BACKGROUND ..................................................................................................................... 2I.Worlds, Inc. ...................................................................................................... 2II.Patents-in-Suit .................................................................................................. 3LEGAL STANDARD .............................................................................................................. 4I.35 U.S.C. § 101 ................................................................................................ 4II.Summary Judgment, Presumption of Validity, and the Burden of Proof ........ 5ARGUMENT ........................................................................................................................... 5I.Step One: Worlds’ Patents Are Not “Directed To” a Patent-Ineligible Abstract Idea .................................................................................................... 6A.A claim satisfies § 101 when it improves computer technology by solving a computer-based problem ............................................................ 6B.The asserted claims recite an improvement to computer technology by providing a novel computer network architecture for 3-D virtual worlds. ........................................................................................................ 7C.Activision has not proven that the asserted claims are patent-ineligible. 12i.Activision oversimplifies the asserted claims while alleging them to be directed to nothing more than “filtering.” ................................................ 12ii.Activision misapplies § 101 case law ...................................................... 14II.Step Two: The Asserted Claims Include an Inventive Concept .................... 16A.Under step two, an inventive application of an abstract idea satisfies §101............................................................................................................ 16B.Worlds’ patents teach a specific approach to a computer network architecture that includes an inventive concept. ...................................... 17C.The asserted claims do not preempt any abstract idea. ............................ 20CONCLUSION ...................................................................................................................... 20Case 1:12-cv-10576-DJC Document 276 Filed 06/09/20 Page 2 of 26
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6 THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS WORLDS, INC.,)) Plaintiff,)) v.) Civil Action No. 1:12-CV-10576 (DJC)) ACTIVISION BLIZZARD, INC.,) BLIZZARD ENTERTAINMENT, INC.) and ACTIVISION PUBLISHING, INC.,)) Defendants.)) WORLDS, INC'S OPPOSITION TO DEFENDANTS' MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101 6 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. Summary Judgment, Presumption of Validity, and the Burden of Proof ........ 5 ARGUMENT ........................................................................................................................... 5 I. Step One: Worlds' Patents Are Not "Directed To" a Patent-Ineligible Abstract Idea .................................................................................................... 6 A. A claim satisfies § 101 when it improves computer technology by solving a computer-based problem ............................................................ 6 B. The asserted claims recite an improvement to computer technology by providing a novel computer network architecture for 3-D virtual worlds......................................................................................................... 7 C. Activision has not proven that the asserted claims are patent-ineligible. 12 i. Activision oversimplifies the asserted claims while alleging them to be directed to nothing more than "filtering." ................................................ 12 ii. Activision misapplies § 101 case law ...................................................... 14 II. Step Two: The Asserted Claims Include an Inventive Concept .................... 16 A. Under step two, an inventive application of an abstract idea satisfies § 101............................................................................................................ 16 B. Worlds' patents teach a specific approach to a computer network architecture that includes an inventive concept. ...................................... 17 C. The asserted claims do not preempt any abstract idea. ............................ 20 CONCLUSION ...................................................................................................................... 20 i 6 TABLE OF AUTHORITIES Cases Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014) ................................................................................................... passim Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)......................................................................................... 16 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).................................................................................. passim Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Circ. 2018) ............................................................................... 2, 5, 17 Bilski v. Kappos, 561 U.S. 593 (2010) .......................................................................................................... 19 buySAFE v. Google, 765 F.3d 1350 (Fed. Cir. 2014)........................................................................................... 6 CLS Bank Int'l v. Alice Corp. Pty., 717 F.3d 1269 (Fed. Cir. 2014)........................................................................................... 5 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)............................................................................... 9, 10, 11 County of Los Angeles v. Davis, 440 U.S. 625 (1979) .......................................................................................................... 17 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).................................................................................. passim Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)..................................................................................... 2, 14 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)............................................................................... 5, 10, 19 Exergen Corp. v. KAZ USA, Inc., 725 F. App'x 959 (Fed. Cir. 2018) ................................................................................... 20 Fuzzysharp Techs. Inc. v. Intel Corp., 2013 WL 5955668 (N.D. Cal. Nov. 6, 2013) ................................................................... 14 Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 1941331 (S.D.N.Y. April 28, 2015) ................................................................. 15 ii 6 Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66 (2012) .......................................................................................................... 4, 5 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)......................................................................................... 11 O'Connor v. Donaldson, 422 U.S. 563 (1975) .......................................................................................................... 17 Research Corp. Techs. v. Microsoft, 627 F.3d 859 (Fed. Cir. 2010)............................................................................................. 6 SRI Int'l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295 (Fed. Cir. 2019)......................................................................................... 14 Ultramercial, Inc. v. Hulu, 722 F.3d 1335 (Fed. Cir. 2013) ......................................................................................... 16 Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed Cir. 2013).......................................................................................... 12 Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020)........................................................................................... 7 Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Circ. 2017) ....................................................................................... 11 Statutes 35 U.S.C. § 101 ....................................................................................................................... 1, 4, 5 35 U.S.C. § 102 ............................................................................................................................. 17 35 U.S.C. § 103 ............................................................................................................................. 17 35 U.S.C. § 282 ............................................................................................................................... 5 Rules Fed. R. Civ. P. 56(a) ....................................................................................................................... 5 iii 6 INTRODUCTION Activision's Motion for Summary Judgment of ineligibility under 35 U.S.C. § 101 over- simplifies the subject matter of Worlds' asserted patents and misapprehends what is claimed. Properly understood, the asserted Worlds claims constitute patent-eligible subject matter because they provide particular computer network architectures for multiplayer 3-D virtualized worlds that solve a problem unaddressed by prior computer network architectures: given limited network bandwidth and varying processing capabilities of users' computers, how can a plurality of remote users interact seamlessly in a complex 3-D environment? As a solution, the Worlds patents teach a specific approach to client-server interactions that define how avatar position and state information is processed and communicated, at both the client side and server side of a network. The claims make no attempt to cover an abstract principle that exists independently of computers, or to implement an abstract principle over the Internet or on a general purpose computer. Rather, the challenges posed, and the improvements taught, exist specifically in the realm of network computing used to enable avatar interaction in virtual worlds. That ends the § 101 inquiry: the asserted claims are not directed to an unpatentable abstract idea, but rather to improved technology, which makes them directed to eligible subject matter. Although Activision represented to the Court that "in view of intervening law since 2015, the Court should determine a schedule for supplementing the briefing on Activision's pending motion under 35 U.S.C. § 101 (Dkt. No. 174)," (Dkt. 242 at 6), Activision's Motion provides little analysis of the Federal Circuit's intervening § 101 jurisprudence. While addressing step one of the Alice test, 1 Activision cites to, but does not analyze, only one precedential Federal Circuit decision, 1 Worlds refers to the patent eligibility test as the Alice test, after Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Activision calls this the "Mayo / Alice" test. See, e.g., Dkt. 273 ("Mem.") at 10, 13. 1 6 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). But unlike the Worlds claims, the claims in Electric Power were directed to using computers to collect, analyze, and display power grid information, rather than improving the functionality of computer and network technology. Perhaps because no comparison exists, Activision instead focuses its step one analysis on two district court cases, one of which was decided before the Alice test was even announced. While the Court can (and should) deny Activision's Motion without reaching step two of the Alice test, the asserted claims also satisfy this step by teachingâ??at least as an ordered combinationâ?? the inventive concept of culling avatar position and state data at multiple levels of a client-server computer network architecture. Indeed, contemporaneous articles addressing the Worlds system, the specification itself, and Worlds' success in defending its claims in inter partes review show an inventive concept that improved upon computer network architecture for 3-D virtual worlds. Moreover, recent Federal Circuit case law, which Activision ignores, has made clear that "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field [in step 2 of Alice] is a question of fact" and "must be proven by clear and convincing evidence." Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Circ. 2018). Activision presents no such evidence, and fails to demonstrate that any Worlds claim recites an "element or combination of elements" that is "well-understood, routine and conventional to a skilled artisan in the relevant field." Id. BACKGROUND I. Worlds, Inc. Worlds, Inc. was an original innovator in the field of internet-based, multiplayer, 3-D virtual worlds. Exs. M, N, O, P.2 In the mid-1990s, Worlds developed and released two groundbreaking 2 Lettered exhibits refer to the exhibits to the attached Declaration of Wayne M. Helge. 2 6 programsâ??Worlds Chat and AlphaWorldâ??that enabled remote users to chat, over the internet, in graphically-rich 3-D virtual environments. Ex. L ¶¶ 9â??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. N. The San Francisco Examiner called Worlds Chat "one of the first examples of virtual reality on the Internet." Ex. M. Worlds also drew the attention of Steven Spielberg, who announced a partnership with Worlds and other entities to "create a 3-D environment where hospitalized children can play and socialize with each other." Id. In connection with these developments, four Worlds employees discovered novel solutions to technical limitations present in prior computer network architectures relating to 3-D virtual worlds.3 These solutions were disclosed in the patents-in-suit, assigned to Worlds, Inc. 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." These patents tackle a problem present in implementing networked 3-D virtual worlds: how to enable interaction among an unknown number of remote users in a 3-D world, given uncertain limitations in network capacity and varying processing capabilities of client computers. Ex. A ('690 Pat.), 1:14â??2:20. The asserted claims are directed to implementing a novel computer network architecture, including improved protocols to facilitate more efficient client-server interaction. Id., 2:24â??42. The computer network architecture explains how the positions and actions of avatars are communicated 3 A "computer network architecture" can be defined as the "logical structure and the operating principles, including those concerning services, functions, and protocols, of a computer network." Ex. Q. 3 6 to other users and processed. Id., 3:47â??6:51. Under this architecture both a client and server cull data associated with other users' avatars to preserve bandwidth, reduce processing burdens, and enhance user experience. Id., 19:32â??22:23. The features of exemplary Claim 4 of the '690 Patent (reproduced in Mem. at 9) include (1) a user in a virtual world (represented by a 3-D avatar), (2) associated with a client process, that (3) monitors and sends position information to a server. Accounting for network restrictions, the server (4) filters the received avatar information, and (5) sends to a client the position information for less than all the other users' avatars. Finally, from the information received from the server, the client (6) determines whether to display avatars for which it has received position information according to its criteria, and (7) displays avatars as relevant.4 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 â?¦." 35 U.S.C. § 101. While laws of nature, natural phenomena, and abstract ideas cannot be patented, see Alice, 573 U.S. at 216, 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 â?¦ embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'" Id. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., 566 U.S. 66, 71 (2012)). To determine patent eligibility, the Supreme Court has created a two-step "framework for distinguishing patents that claim â?¦ abstract ideas from those that claim patent-eligible applications 4 The asserted claims also cover other innovations, including: (1) avatar customization ('501 Pat., Cl. 1); (2) application of "conditions"/"participant conditions," which affect server-selected updates of avatars for transmission ('501 Pat., Cl. 1, '998 Pat., Cl. 18); and (3) criteria used by the client to determine which other avatars to display ('690 Pat.; '558 Pat.; '501 Pat., Cl. 8, 10). 4 6 of those concepts." Alice, 573 U.S. at 217. Under the first step, a court "determine[s] whether the claims at issue are directed to one of those patent-ineligible concepts." Id. Courts should "ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). If a court determines that the claims are directed to patent-ineligible concepts, the second step is to "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." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79). "The question [under the second step] of whether a claim element or combination of elements is well- understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Circ. 2018). II. Summary Judgment, Presumption of Validity, and the Burden of Proof Summary judgment is only appropriate if "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Further, patents are presumed valid (35 U.S.C. § 282) and this presumption applies to challenges under 35 U.S.C. § 101. See CLS Bank Int'l v. Alice Corp. Pty., 717 F.3d 1269, 1304â??05 (Fed. Cir. 2014). As the party challenging the eligibility of Worlds' patents under § 101, Activision's entire challenge fails if it cannot prove "[a]ny fact â?¦ that is pertinent to the invalidity conclusion â?¦ by clear and convincing evidence." Berkheimer, 881 F.3d at 1368. ARGUMENT When accurately evaluated under Alice step one, Worlds' claims are patent-eligible because they are directed to a specific computer network architecture for 3-D virtual worlds and overcome problems present in prior computer network architectures. Should the Court evaluate Alice step two, Worlds' claims also recite inventive concepts to define how computer network architectures enable 5 6 interaction of avatars in a virtual space, and thereby achieve specific improvements to such systems. I. Step One: Worlds' Patents Are Not "Directed To" a Patent-Ineligible Abstract Idea The question under step one is whether the asserted claims are "directed to" a patent-ineligible concept. Alice, 573 U.S. at 218. While Activision later 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," (Mem. at 13), Activision argues in step one that the asserted claims are directed to the abstract idea of "filtering." Mem. at 10. This is wrong. Interpreted correctly, Worlds' claims are directed to a novel client-server computer network architecture for 3-D virtual worlds.5 A. A claim satisfies § 101 when it improves computer technology by solving a computer-based problem The first step of the Alice test includes determining whether the claims are directed to an abstract idea. Alice, 573 U.S. at 217. Evaluating computer technology, courts have declared claims ineligible where they use a computer or the Internet to perform longstanding practices, e.g., risk hedging or intermediated settlement. See, e.g., buySAFE v. Google, 765 F.3d 1350, 1355 (Fed. Cir. 2014). On the other hand, claims that "effect an improvement in [some] technology or technical field" are not impacted by the abstract-idea exclusion. Alice, 573 U.S. at 225; see also Research Corp. Techs. v. Microsoft, 627 F.3d 859, 868â??69 (Fed. Cir. 2010) ("[I]nventions with specific applications or improvements to technologies â?¦ are not likely to be so abstract that they override the statutory language ... of the Patent Act"). As the Federal Circuit has explained, 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." DDR Holdings, LLC v. Hotels.com, L.P., 5 While Activision divides the asserted Worlds patents into two groups, Activision's analysis of both groups is functionally identical. Compare Mem., 10-16 with 19-20. 6 6 773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added). In line with this standard, courts have upheld computer patents 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. Indeed, the Federal Circuit's "precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself." Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1309 (Fed. Cir. 2020). B. The asserted claims recite an improvement to computer technology by providing a novel computer network architecture for 3-D virtual worlds. The Worlds claims teach a specific computer network architecture to enable multiple users to interact, via avatars, in a 3-D virtual world over the internet, and the specification confirms this teaching. The Court's claim construction order similarly explained that this case "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." Dkt. 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 20â??23 (construing "avatar" as a "three-dimensional representation of a user," and noting that "the specification consistently refers to a three-dimensional virtual world"). The Problem. From 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., 1:49â??53. But "where many client machines or processes are communicating with each other in real-time through the server, several problems arise." Id., 1:37â??40. For example, "where a client- server system is used for real-time exchange of information, such as a â?¦ virtual reality network where users â?¦ visually and aurally interact with other users â?¦ communication is much more difficult, 7 6 especially where the information is high-bandwidth data such as audio streams, graphic streams, and image streams." Id., 1:42â??48. This problem specifically arose in the realm of computer networks, i.e. in the operating protocols of prior computer network architectures. In DDR, the Federal Circuit rejected a § 101 challenge where there was no real-world analogue to the "cyberspace" problem at issue. 773 F.3d at 1258. There, the problem was that a website may lose visitors who click a hyperlink and are transported to a third-party site. Id. The court could not identify a real-world equivalent: "there is â?¦ no possibility that by walking up to [a] kiosk, the customer will be suddenly and completely transported outside the â?¦ store and relocated to a separate physical venue associated with the third-partyâ??the analog[ue] of what ordinarily occurs in 'cyberspace' after the simple click of a hyperlink." Id. Similarly, there is no real-world analogue to the problem addressed by Worlds' claimed computer network architecture, i.e., the risk that due to a large number of people in a room, one's consciousness may shut down, or people move erratically, stop talking, or disappear. Worlds' Solution. Worlds was not the first to tackle the problem of remote user interaction. An earlier approach involved a "peer-to-peer" computer network architecture, where each user was considered equal and communicated directly with all other users. Ex. A ('690 Pat.), 1:56â??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., 1:56â??63. Another computer network architecture described in the background employed 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 â?¦ [was] not even possible." Id., 1:63-2:16. As an improved computer network architecture, Worlds' patents redefine how a server and a client are configured by establishing protocols that set forth the information exchanged between the 8 6 server and client, and requirements on how the client and server perform particular culling functions of avatars. Id., 5:19-6:20. These protocols are implemented to minimize network loads, reduce processing burdens, and thus facilitate interaction of remote users in a computer-based 3-D virtual world. Id. As such, the asserted claims describe a virtual world computer network architecture with a server that, compared with prior approaches to networking, is "much more discriminating as to what data is provided to each client[]"â??sending position and state information only for certain user avatars. Id., 3:41â??44. Then, to potentially reduce processing burdens, a client in the novel computer network architecture determines which remote user avatars to display (which is "needed in some cases to ensure that neither client [ ] nor user [ ] get over-whelmed by the crowds of avatars likely to occur in a popular virtual world."). Id., 5:65â??67, 5:33-35. The Federal Circuit has addressed similar claims necessarily rooted in computer technology in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). There, the asserted claims were "directed to an improved interface for computing devices, not to the abstract idea of an index." Id. at 1362. Rather than distilling the technical invention down to an abstract idea achieved by the computer device's interface (i.e., an index), the Federal Circuit recognized that the claims were "directed to a particular manner of summarizing and presenting information in electronic devices." Id. The Court interpreted this concept as "a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer." Id. at 1363. The Federal Circuit also looked to the specification of the patent-at-issue, noting that the "claims disclose an improved user interface for electronic devices, particularly those with small screens." Id. After discussing numerous improvements in speed and efficiency resulting from the claimed invention, the Federal Circuit concluded that the "claims are directed to an improvement in the functioning of computers, 9 6 particularly those with small screens" and held that the claims satisfied step one of Alice. Id. According to this reasoning, the Worlds claims satisfy step one of Alice. First, Core Wireless confirms that solutions to technical limitations in electronic devices are patent-eligible. That patent-at-issue was directed to solving user interface complexities for devices with small screens by limiting the lists of commonly-accessed functions available to the user through a main menu. Id. Similarly, the Worlds patents are directed to solving the network and processing requirements for client devices accessing an online virtual world by providing two opportunities to limit the data that is rendered by a client computer. Just as a small-screen device in Core Wireless might benefit the most from the invention at issue there, an aged or overburdened processor in a client computer might benefit the most from the Worlds patents. Second, the Federal Circuit refused to interpret the claims as an "'abstract idea' for which computers are invoked merely as a tool." Id. at 1362 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). Although LG asked the Court to interpret Core Wireless's invention as the "generic idea of summarizing information" with a computer invoked as a tool, the Federal Circuit recognized that the claims were "directed to a particular manner of summarizing and presenting information in electronic devices." Id. Similarly, Worlds' claims are not merely directed the abstract idea of filtering information using a computer. Now, Activision asks this Court to view the Worlds claims as directed to "filtering" as "a basic method of organizing human activity that is well-known." Mem. at 1. This assertion is divorced from any reasonable interpretation of the asserted claims. Just as there is no real-world equivalent to the patent-at-issue in DDR, there is no real-world equivalent to a client process that becomes sluggish or crashes due to the processing and network loads created by a large number of other user avatars inhabiting a virtual world. Indeed, the concept of allowing users to interact in a 10 6 virtual world specifically arises in the realm of networked computers. Thus, it is incorrect to view the Worlds patents as performing a pre-internet business or technique over the internet. See DDR, 773 F.3d at 1257 (finding claims patent-eligible where "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."). Core Wireless is comparable to another case involving a patent directed to a flexible solution for interacting with hardware of varying capabilities. In Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Circ. 2017), the patent-at-issue was directed to an improved memory system that could be tailored to different processor types. Id. at 1259. This patent-eligible solution "obviated the need to design a separate memory system for each type of processor." Core Wireless, 880 F.3d at 1362 (citing Visual Memory, 867 F.3d at 1259). Under this reasoning, there are clear parallels to Worlds' claims, which set forth a computer network architecture having flexible protocols to enable client devices with varying capabilities to manage network and processing loads while accessing a largely-populated, online 3-D virtual world. Finally, while the operating principles of the computer network architecture claimed in Worlds' patents results in the display of avatars in a virtual world, displaying an end-result is not fatal to their eligibility, contrary to Activision's argument otherwise. See Mem., 12-13. The Federal Circuit has held as patent-eligible a process that "uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016). Once again, this reasoning leads to clear parallels with the Worlds patents, which also implement an improved computer network architecture to create desired results: a virtual world populated by three-dimensional graphical representations of other users. 11 6 Like in DDR, Worlds' claims "specify how interactions with [clients and servers] are manipulated to yield a desired resultâ??a result that overrides the routine and conventional sequence of events ordinarily [involved in client-server architecture]." DDR, 773 F.3d at 1258. Where a conventional client-server architecture would broadcast all avatar position and state information to all users, the asserted claims provide a computer network architecture that minimizes network loads, allows for processing burdens to be reduced, and improves the user experience. Like the asserted claims in DDR, Core Wireless, Visual Memory, McRo, and their progeny, the asserted Worlds claims are not directed to an abstract idea under step one of Alice and are patent-eligible under § 101. C. Activision has not proven that the asserted claims are patent-ineligible. i. Activision oversimplifies the asserted claims while alleging them to be directed to nothing more than "filtering." Activision argues that "each claim is directed to the abstract idea of filtering position information in a computer network, i.e., crowd control." Mem. at 10. Activision also asserts that "the very notion of filtering to process information or resolve crowd control problems is a basic method of organizing human activity that is well-known," (id. at 1), and that "the fundamental concept of filtering people to maintain crowds below a maximum capacity â?¦ has been known and used to effectively manage human behaviors and interactions." Id. at 2. But as already explained above, there is no real-world comparison to Worlds patented invention. 6 The Federal Circuit has warned 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] court cannot go hunting for abstractions by ignoring the concrete, 6 Activision's air traffic control analogy is also unrealistic. See Mem. at 1-2. What aviation community would use an air traffic control system that omits the positions of other planes? 12 6 palpable, tangible limitations of the invention the patentee actually claims." Id. Activision violates this tenet, and inaptly compares the Worlds claims to "taking reservations, distributing access tickets or passes, or allowing entry on a first come, first served basis." Mem. at 2. But the Worlds claims are not directed to a computerized method for taking reservations, distributing access tickets or passes, or allowing entry on a first come, first served basis, or even to a method for restricting access to a virtual world once the virtual world is fully occupied. Rather, the asserted claims enable a client to determine a displayable set of other user avatars from among the reduced number of avatars sent by the server in the virtual space according to that particular client's processing and network capabilities. Confirming this technically-focused solution, the asserted claims do not claim filtering data in the abstract, or even filtering data using a computer, but instead claim the protocols of a computer network architecture that uses culling of 3-D avatars in a virtual world both by a server and on a client-by-client basis. Moreover, Activision acknowledged these protocols during claim construction, and even based its arguments around them. At Activision's urging, the Court held that the asserted '501 and '998 Patent claims are limited to a defined interaction between a client and server, as the avatar positions that a server sends to a client relate to "a condition set by the client." Dkt. 153 at 14-18. Activision now chooses to ignore these requirements in its step one analysis. These limitations show that the claims are not directed to abstract data "filtering," but to how the claim elements implement an improved client-server computer network architecture for user interactions in a virtual world. These particular recitations regarding how "filtering" is used and applied to improve processing in the systems shows that the claims do not preempt all "filtering" using a computer, or even "filtering" in systems implementing 3-D avatars in a virtual world. 13 6 ii. Activision misapplies § 101 case law The only precedential Federal Circuit case cited by Activision in its step one argument is Electric Power v. Alstom (Mem. at 12), but this case is easily distinguished. Activision relies generally on Electric Power to argue that "claims directed to collecting, analyzing, and displaying dataâ??even on a computerâ??are not patent eligible." Id. But the Federal Circuit itself recognized that Electric Power found those claims patent-ineligible because they "were drawn to using computers as tools to solve a power grid problem, rather than improving the functionality of computers and computer networks themselves." SRI Int'l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019) (citing Electric Power, 830 F.3d at 1354). Like the patent-at-issue in SRI, the Worlds claims "actually prevent the normal, expected operation of a conventional computer network." SRI Int'l, 930 F.3d at 1304. Rather than broadcasting all avatar positions from a server to a client, the server limits what avatar data is sent to the client, and the client process includes an intervening step of determining whether to display all received avatars, even if the received avatar positions would otherwise display the associated avatar in the client process's field of view. This is not the normal, expected operation of a conventional client process. Instead, this counterintuitive solution, which is designed to bring remote users together in the virtual space even where individual network and processing limitations might otherwise be exceeded, is directed toward "improving the functionality of computers and computer networks themselves." Id. Activision's other citations are accompanied by inapposite analysis. Fuzzysharp Techs. Inc. v. Intel Corp., 2013 WL 5955668 (N.D. Cal. Nov. 6, 2013), which was decided pre-Alice and did not include a full two-step Alice analysis, addressed a patent directed to improving the rendering of 3D objects by performing visibility calculations only for surfaces that were neither totally visible nor totally hidden. 2013 WL 5955668 at **5-6. While Fuzzysharp found the reduction of calculations to be abstract and therefore patent-ineligible, Activision misleadingly characterizes the patent's 14 6 omission of unnecessary calculations as "filtering." Mem. at 12. Additionally, Fuzzysharp was decided based on the pre-Alice machine-or-transformation test, which is unduly restrictive. See DDR, 773 F.3d at 1258â??59 (holding that software claims were patent eligible without applying the machine- or-transformation test). In any event, Worlds' innovation effected a fundamental improvement to computer network architecture protocols for providing large-scale, avatar-based user interaction in a virtual space, and not just a mathematical efficiency. Activision also 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." Those claims 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 DDR claims taught an innovation that "change[d] [ ] the standard structure of the internet and [created] a new composite web page." Id. Activision does not attempt to distinguish Worlds' claims from those in DDR; the Worlds claims recite several specific operating principles for a computer network architecture that provides a novel approach for user interaction in a virtual world among multiple users having unknown and potentially varying processing and network capabilities. This entails substantially more than organizing information using mathematical correlations. While Activision no longer relies upon the patent-at-issue in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), it is important to note that the Worlds claims are distinct at the step one analysis from that patent. In BASCOM, the Federal Circuit found that the claims-at-issue were directed to "'a method and system for filtering Internet content.'" Id. at 1348 (quoting the specification of the patent-at-issue). The claims in BASCOM taught a method of censoring internet content for, e.g., shielding children from explicit materials. Id. at 1346. Among 15 6 other reasons, Worlds' patents are different because in BASCOM there was a real-world analogue for parental and library-based censorship. Here, Activision cannot identify any real-world analogue to Worlds' identified problem or claimed solution, neither of which has meaning outside of network computing. BASCOM is inapposite. Because the Worlds claims satisfy step one of Alice, the Court should deny Activision's § 101 challenge. II. Step Two: The Asserted Claims Include an Inventive Concept Irrespective of how the Court characterizes the asserted claims, the claims also satisfy § 101 because they "contain[] an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Alice, 573 U.S. at 211. Activision ignores that the Federal Circuit has found even claims directed to "filtering" as patent-eligible where they recite "an inventive concept through the system's distributed architecture." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1302-05 (Fed. Cir. 2016); see also BASCOM, 827 F.3d at 1345, 1349-52. A. Under step two, an inventive application of an abstract idea satisfies § 101. Claims directed to an abstract idea are patentable where they contain an "inventive concept" "that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself." Alice, 573 U.S. at 217-18 (citations omitted). Courts must assess the elements of the asserted claims both "individually" and "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 217 (citations omitted). "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). While merely using a computer to implement an abstract idea is not an inventive concept under § 101, claims can be found patent-eligible where they "do not merely 16 6 recite the abstract idea â?¦ along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components." BASCOM, 827 F.3d at 1350-51 (collecting cases). Finally, the step two inquiry under § 101 is more onerous than the anticipation and obviousness tests under §§ 102 and 103. As the party seeking summary judgment of ineligibility, Activision must show by clear and convincing evidence that the inventive concepts in Worlds' patents were "well-known" or "conventional." Berkheimer, 881 F.3d at 1368. It fails to do so.7 B. Worlds' patents teach a specific approach to a computer network architecture that includes an inventive concept. Activision's motion completely fails to address whether the elements of the asserted claims include an "inventive concept" when considered "as an ordered combination." See Mem. at 13-16, 19-20. This alone would be fatal to its Motion, but Activision also fails to address intervening law on step two of Alice, and buries the outcome from BASCOM in a footnote. See Mem. at 11 n.6. In its original motion under § 101, Activision relied upon the District Court's decision that BASCOM's claims were directed to patent-ineligible subject matter and drew comparisons between Worlds' Patent claims and BASCOM's claims. Dkt. 175 at 15. On appeal, the Federal Circuit reversed that decision, holding instead that BASCOM's claims were patent-eligible under step two of Alice. BASCOM, 827 F.3d at 1352. Now, Activision's renewed Motion is noticeably and awkwardly silent regarding the Federal Circuit's reversal in BASCOM. 7 Activision's attempt to leverage the USPTO's inter partes review proceedings ("IPRs"), including three vacated decisions, has no bearing on this question. See Mem. at 3-4. As Activision admits, eligibility was not at issue in the IPRs. Id. at 3 n.1. Additionally, as reflected in Worlds' objection to Activision's Statement of Undisputed Material Facts, the vacated PTAB decisions have no precedential effect and should be disregarded. See County of Los Angeles v. Davis, 440 U.S. 625, 634 n. 6 (1979) ("Of necessity our decision `vacating the judgment of the Court of Appeals deprives that court's opinion of precedential effect. . . .'") (quoting O'Connor v. Donaldson, 422 U.S. 563, 577-78 n. 12 (1975)). 17 6 In BASCOM, the Federal Circuit confirmed that an inventive concept, searched for under step two of the Alice test, "may arise in one or more of the individual claim limitations or in the ordered combination of the limitations." Id. at 1349. Further, an "inventive concept can be found in the non- conventional and non-generic arrangement of known, conventional pieces." Id. at 1350. In the BASCOM patent, the inventive concept was "the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user." Id. The Federal Circuit further found that, on that record, "this specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic." Id. Like the patent-at-issue in BASCOM, the Worlds claims "do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components." Id. Further, the Worlds patents "describe[ ] how its particular arrangement of elements is a technical improvement over prior art ways of" managing avatars in a virtual space. Id. This was a problem existing solely in computer technology, just as BASCOM's and DDR's patents were. Activision also overlooks the evidence that establishes that the claim elements, viewed as an ordered combination, disclose 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 selected packets to each client; the client, in turn, can further determine which avatars to display. That combination was inventive and not overbroad. Indeed, per the three valid final written decisions issued by the PTAB, claims 4, 8, 13, and 16 of the '690 Patent, claims 5 and 7 of the '558 Patent, and claim 18 of the '998 Patent were confirmed as patentable over Bungie's prior art challenges. Exs. F, G, H. Activision cannot refute this evidence, and produces no contrary evidence that the ordered combination of elements in any asserted claim, 18 6 including the claims of the '856 and '501 Patents, was well-understood, routine, and conventional. Mem. at 13-16, 19-20. This is fatal to Activision's Motion. In addition to the PTAB's findings that the asserted claims of the '690 Patent,'558 Patent, and'998 Patent are patentable in their ordered combinations, the individual elements of the asserted claims also qualify as inventive concepts. Activision attacks the individual elements of certain claims, but its evidence that Worlds' claimed invention can be carried out by conventional computer hardware, software, and functions is substantially limited to Worlds' patent specifications. Id. at 13- 16. Worlds' specification discloses a client system 60, which could be a conventional desktop computer, executing a "graphical rendering engine which generates the user's view of the virtual world." Id. at 15 (quoting Ex. 1 at 3:47-4:48). Activision incorrectly contorts this statement into an admission that Worlds' invention "can be carried out using known and conventional computer hardware, software, and functions." Id. Nothing in this quoted portion of Worlds' specification establishes that Worlds' claimed inventions, including the operating protocols of the computer network architecture that can be run as software, were well-understood at the time of filing. Id. Moreover, the ability of an invention to run on a general-purpose computer does not "doom[] the claims." Enfish, 822 F.3d at 1338. This would be tantamount to a wholesale ban on software- based inventions, which the Federal Circuit has rejected. Id. (citing Bilski v. Kappos, 561 U.S. 593, 603-04 (2010)). Indeed, the Worlds invention was developed to enable even legacy computers, with limited processing power and network capabilities, to interact in a multi-user virtual space. Ex. A ('690 Pat.), 3:41-46, 5:29-67. Activision also urges the Court to ignore "avatar customization, view shifting, and interaction rooms" from the '501 and '998 Patents as "extra-solution manipulations of the filtered data." Mem. at 19 (citation omitted). Even though these claims were issued by USPTO (see Exs. J, K), Activision 19 6 asks the Court to conduct a truncated obviousness inquiry under § 103 based on isolated examiner statements, contrary to the higher standard needed to show what is well-understood, routine, and conventional. See Exergen Corp. v. KAZ USA, Inc., 725 F. App'x 959, 965 (Fed. Cir. 2018) (non- precedential) (something is not necessarily well-understood, routine, and conventionally used in the art simply because it is disclosed in an obscure prior art reference). Activision also makes no showing that a server enforcing client-side "conditions"/"participant conditions" (see '501 Pat., Cl. 1, '998 Pat., Cl. 18), which affect server-selected avatar updates for transmission, was well-known, routine, or conventional. As a result, Activision lacks evidence, much less clear and convincing evidence, to establish that the computer network architectures claimed in the Worlds' patents lack an inventive concept. C. The asserted claims do not preempt any abstract idea. Finally, preemption is of no concern. Contrary to Activision's hyperbole, Worlds' claims do not preempt "any scenario in which there is some filtering of information." Mem. at 10 (emphasis in original). The asserted claims include significant limitationsâ??including that the claims apply only to the culling of "avatars," which the Court interpreted as a "three-dimensional representation of a user." There is no risk of the claims preempting the abstract idea of filtering. See BASCOM, 827 F.3d at 1352. CONCLUSION For these reasons, Worlds' asserted claims are patent-eligible, and Worlds respectfully asks that the Court deny Activision's Motion for Summary Judgment. 20 6 Dated: June 9, 2020 Respectfully submitted, /s/ Wayne M. Helge Wayne M. Helge (pro hac vice) whelge@dbjg.com Aldo Noto (pro hac vice) anoto@dbjg.com Alan A.Wright (pro hac vice) awright@dbjg.com Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com James T. Wilson (pro hac vice) jwilson@dbjg.com DAVIDSON BERQUIST JACKSON & GOWDEY, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102 T: (571) 765-7700 Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002 T: (713) 651-9366 Joel R. Leeman (BBO # 292070) jleeman@sunsteinlaw.com SUNSTEIN KANN MURPHY & TIMBERS 125 Summer Street Boston, MA 02110-1618 T: (617) 443-9292 ATTORNEYS FOR PLAINTIFF, WORLDS, INC. 21 6 CERTIFICATE OF SERVICE I hereby certify that this document filed through the ECF systems will be sent electronically to the registered participants as identified on the Notice of Electronic Filing on the above date. /s/ Wayne M. Helge Wayne M. Helge
Everything I reviewed was literally the old patents and old documents that in my opinion has been regurgitated to ad nauseum. There was a few lines of protest but for the life of me I do not understand why. When this went back thru the the PTAB review it is my understanding a few things were rejected the remainder was adjudicated as valid. It looks like to me they are grasping at straws.
Yes I reviewed the regurgitation; and your point with the exception of the fat lady singing?
I was hoping for originality and creativity.
Source of information https://www.uspto.gov/
I personally like the fourth requirement. I find it amusing that the PTAB spent much time reviewing the data and yet they did not kick out any patent only a few claims.
2104 Inventions Patentable - Requirements of 35 U.S.C. 101 [R-08.2017]
35 U.S.C. 101 Inventions patentable
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 101 has been interpreted as imposing four requirements.
First, whoever invents or discovers an eligible invention may obtain only ONE patent therefor. This requirement forms the basis for statutory double patenting rejections when two applications claim the same invention, i.e. claim identical subject matter. See MPEP § 804 for a full discussion of the prohibition against double patenting.
Second, the inventor(s) must be the applicant in an application filed before September 16, 2012, (except as otherwise provided in pre-AIA 37 CFR 1.41(b)) and the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. See MPEP § 2137.01 for a detailed discussion of inventorship, MPEP § 602.01(c)et seq. for details regarding correction of inventorship, and MPEP § 706.03(a), subsection IV, for rejections under 35 U.S.C. 101 and 115 (and pre-AIA 35 U.S.C. 102(f) for applications subject to pre-AIA 35 U.S.C. 102) for failure to set forth the correct inventorship.
Third, a claimed invention must be eligible for patenting. As explained in MPEP § 2106, there are two criteria for determining subject matter eligibility: (a) first, a claimed invention must fall within one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter; and (b) second, a claimed invention must be directed to patent-eligible subject matter and not a judicial exception (unless the claim as a whole includes additional limitations amounting to significantly more than the exception). See MPEP § 2106 for a detailed discussion of the subject matter eligibility requirements and MPEP § 2105 for special considerations for living subject matter.
Fourth, a claimed invention must be useful or have a utility that is specific, substantial and credible. See MPEP § 2107 for a detailed discussion of the utility requirement
Latest and Greatest.
Will these guys ever stop
MOTION for Summary Judgment that the Asserted Patent Claims are Invalid Under 35 U.S.C. ? 101 by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. (filed: 05/19/2020)
MEMORANDUM in Support re [272] MOTION for Summary Judgment that the Asserted Patent Claims are Invalid Under 35 U.S.C. ? 101 filed by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. (filed: 05/19/2020)
DECLARATION re [272] MOTION for Summary Judgment that the Asserted Patent Claims are Invalid Under 35 U.S.C. ? 101 by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. (filed: 05/19/2020)
Statement of Material Facts L.R. 56.1 re [272] MOTION for Summary Judgment that the Asserted Patent Claims are Invalid Under 35 U.S.C. ? 101 filed by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. (filed: 05/19/2020)
Old Owl,
What would your son say about this withdrawal? This is the same firm as Max Tribble is a partner. I have no other details.
05/14/2020 Judge Denise J. Casper: ELECTRONIC ORDER entered granting Motion to Withdraw as Attorney. Attorney Joseph S. Grinstein terminated
https://www.susmangodfrey.com/attorneys/joseph-s-grinstein/
This is the latest filing. I do not know the back story for their withdrawal.
Ropes and Gray are the attorneys for Activision. My question is why are three members of Activision law firm withdrawing?
I find it interesting that Max Tribble and the boutique law firm Susman Godfrey have not dropped out. The patent attorneys for Worlds have not dropped out. Why would Activision attorneys drop out?
In my opinion attorneys that drop out are either not being compensated, they are being replaced, or maybe they know nothing of substance is available to prevail.
Speculate all you want but this is all the new information I have. Perhaps someone else here can connect the dots.
Perhaps, Mr. Old OWl can ask his son why attorneys drop out?
________________________________________________________________________
NOTICE of Withdrawal of Appearance by Samuel L. Brenner (Notice of Withdrawal of Jesse J. Jenner, David S. Chun, and Samuel L. Brenner) (filed: 05/11/2020)
https://www.ropesgray.com/en/biographies/b/samuel-brenner
ropesgray.com/en/biographies/j/jesse-j-jenner
https://www.ropesgray.com/en/biographies/c/David-Chun
Standard language they have been using in their filings for years
Huggie Bear...I am in need of a mental exercise today and I have a challenge for you.
Explain your assertion that, " it is a scam and nothing here." After you post your hypothesis I will give you a rebuttal of fact.
Perhaps you have a view I have not considered in the past.
Long term ...no. Thank you
tradetrak I believe if you go to post #38719 authored by quilt all your questions should be answered.
Long Term.....yes
I do not believe it is any thing to worry over. The PTAB had disallowed these. However, many remain.
As for a jumbled mess. WHat you saw is what I saw with the exception the bold which I did for emphasis.
I posted the filing for all to read.
LongTerm
I did not waste my time. He has been practising for seven years versus the decades of a boutique law firm. You can google him and find out.
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS) WORLDS, INC.,)) Plaintiff,)) vs.)) Civil Action No. 1:12-CV-10576 (DJC) ACTIVISION BLIZZARD, INC.,) BLIZZARD ENTERTAINMENT, INC. and) JURY TRIAL DEMANDED ACTIVISION PUBLISHING, INC.,)) Defendants.) WORLDS INC.'S NOTICE OF NARROWED ELECTION OF ASSERTED CLAIMS Pursuant to this Court's Electronic Order of April 17, 2020 (Dkt. 264) requiring Plaintiff Worlds, Inc. ("Worlds'") to narrow its election of asserted claims by May 5, 2020, Worlds hereby provides Notice that it has complied with the Court's Order by notifying counsel for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc. (collectively, "Activision"), via separate letter, that it has withdrawn Worlds' assertion of those claims canceled by the U.S. Patent & Trademark Office's Patent Trial & Appeal Board ("PTAB") via final written decisions in IPR2015-01268, IPR2015-01269, and IPR2015-01325, as follows: 1 U.S. Patent No. Claims Previously Claims Withdrawn Claims Asserted Asserted1 7,181,690 claims 1, 2, 3, 4, 5, 6, claims 1, 2, 3, 5, 6, 7, claims 4, 8, 13, 16 7, 8, 10, 11, 12, 13, 14, 10, 11, 12, 14, 15, 17, 15, 16, 17, and 19 and 19 7,493,558 claims 4, 5, 6, 7, 8, and claims 4, 6, 8, and 9 claims 5 and 7 9 7,945,856 claim 1 N/A claim 1 8,082,501 claims 1, 2, 3, 4, 5, 6, N/A claims 1, 2, 3, 4, 5, 6, 7, 7, 8, 10, 12, 14, 15, and 8, 10, 12, 14, 15, and 16 16 8,145,998 claims 1, 18, and 20 claims 1 and 20 claim 18 Dated: May 5, 2020 Respectfully submitted, By: /s/ Wayne M. Helge Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002 T: (713) 651-9366 F: (713) 654-6666 Wayne M. Helge (pro hac vice) whelge@dbjg.com Aldo Noto (pro hac vice) anoto@dbjg.com Alan A.Wright (pro hac vice) 1 See Worlds Inc.'s Sixth Supplemental Disclosure of the Claims Infringed (Dkt. 160), July 27, 2015. 2 awright@dbjg.com Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com James T. Wilson (pro hac vice) jwilson@dbjg.com DAVIDSON BERQUIST JACKSON & GOWDEY, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102 T: (571) 765-7700 Joel R. Leeman jleeman@sunsteinlaw.com BBO # 292070 SUNSTEIN KANN MURPHY & TIMBERS 125 Summer Street Boston, MA 02110-1618 T: (617) 443-9292 F: (617) 443-0004 ATTORNEYS FOR PLAINTIFF WORLDS, INC. 3 CERTIFICATE OF SERVICE I certify that a true copy of the above document was filed through the Court's ECF system on the above date and will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF). /s/ Wayne M. Helge Wayne M. Helge 4
OPPOSITION ATTORNEY
https://www.linkedin.com/in/scottbertulli
Nothing against Mr. Bertulli but he has seven years experience versus a boutique law firm.
05/04/2020NOTICE of Appearance by Scott W. Bertulli on behalf of Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc.
05/05/2020NOTICE by Worlds, Inc. Joint Notice of Parties' Compliance with Court's Order Requiring Meet and Confer on Estoppel
05/05/2020NOTICE by Worlds, Inc. of Compliance with Court's Order to Narrow its Election of Asserted Claims
Long Term...I believe this topic was hashed over several years ago. Below is the lay persons definition of Laches. If you will notice it is a form of estoppel. I believe one of the upcoming dates will be about estoppel. If you read the lay persons definition and go back thru due diligence I believe all will understand what is happening. The legal team spent nine months before they decided to take this case on a contingency. There are several reasons they were willing to forego payment in the present and wait until the end.
Laches is the legal doctrine that an unreasonable delay in seeking a remedy for a legal right or claim will prevent it from being enforced or allowed if the delay has prejudiced the opposing party. The doctrine is an equitable defense that seeks to prevent "legal ambush" from a party who is negligent in failing to timely make a claim. It recognizes that the opposing party's ability to obtain witnesses and other evidence diminishes over time, due to unavailability, fading memory, or loss. Disallowing the negligent party's action on the ground of laches is a form of estoppel.
Laches is an equitable form of estoppel based on delay. The theory behind allowing the defense is that the law shouldn't aid those who "sleep on their rights". For a defense of laches to succeed, it must be proven that the party invoking the doctrine has changed its position as a result of the delay, resulting in being in a worse position now than at the time the claim should have been brought. For example, the delay in bringing the claim may have caused much larger potential damages to be awarded; the ability to pay the claim is lacking due to assets being otherwise used in the meantime; the property sought to be recovered has already been sold; or evidence or testimony may no longer be available to defend against the claim.
I posted that it is possible. Read the United States Code. It is in black and white and a ten year old can understand the verbiage.
For every year of benefit a patent owner did not receive the benefit of that patent; that time can be added to the end of the patent.
Read the USC regarding patents and the years that the patent owner did not recieve benefit of the patent.It is in plain English and you do not have to be a lawyer to comprehend the words. You do have to put time into completing your own due diligence.
Then go back and read what counsel said years ago about what the path would be after a positive ruling is granted WDDD. Again, plain English.
I am not counsel (refer to USC).... but if you have a positive ruling from Judge Caspers court; and patents have run out of time; but you have not received the benefit of the patents; and you have completed all requirements by law to keep the patents valid throughout the years; It would seem to me you ask the courts to restore your benefit of the patent(s) to the end of the life of the patent. In other words if a patent is 15 years; and you never received compensation during those 15 years; then you would cite the USC and other case law to receive 15 additional years.
Again in my opinion WDDD has lost nothing. Yes the longs will have to wait a while longer to receive there day in court. Yes noone likes this fact. All longs want a ROI. Add into that counsel has won many cases for large sums of money against some of the largest IT companies in the US. Counsel has also taken this case on contingency after studying the case for nine months before agreeing to take the case.
I encourage all longs to read the United States Code, USC, that applies to patents. Then review counsels background, the law firms back ground, and decide for yourself.
The USC allows for each year the benfit of the patent was lost to be added to the end of the patent. WDDD has lost nothing.
04/17/2020 ELECTRONIC NOTICE of Hearing. Status Conference set for 2/8/2021 02:00 PM in Courtroom 11 before Judge Denise J. Casper.
04/17/2020 ELECTRONIC NOTICE Setting Hearing on Motion Activision's 35 U.S.C. 101 motion. Motion Hearing set for 7/22/2020 03:00 PM in Courtroom 11 before Judge Denise J. Casper.
04/15/2020 Proposed MOTION to Withdraw as Attorney Joseph Grinstein by Worlds, Inc.
1 Attachment ?
26304/17/2020 Judge Denise J. Casper: ELECTRONIC ORDER entered denying [174] Motion for Summary Judgment as moot in light of the new motion & briefing scheduling the Court will now adopt
Case 1:12-cv-10576-DJC Document 261-1 Filed 04/15/20 Page 1 of 1
___________________________________________________________________
THIS IS THE ATTACHMENT REFERENCED ABOVE
_______________________________________________________________
WORLDS, INC.,
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS
Plaintiff, §
§
v. §
ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC., and ACTIVISION PUBLISHING, INC.,
Defendants.
§ Civil Action No. 1:12-CV-10576-DJC
§
§ JURY TRIAL DEMANDED
§
[PROPOSED] ORDER GRANTING PLAINTIFF’S UNOPPOSED MOTION TO WITHDRAW ATTORNEY OF RECORD
On this day came on to be heard Worlds, Inc.’s Unopposed Motion to Withdraw Attorney of Record. After due consideration, it is hereby ORDERED that Joseph Grinstein be removed as counsel of record for Worlds, Inc., be removed from all service lists, and the Court shall stop sending electronic notices via ECF in this case.
Denise J. Casper
United States District Judge
04/17/2020 Judge Denise J. Casper: ELECTRONIC ORDER entered. D. 256: In light of the parties' joint status report and yesterday's status conference regarding same and in consideration of the parties' various arguments, the Court ORDERS as follows: Fact discovery resumes April 21, 2020. Date by which counsel to meet/confer regarding estoppel issue May 5, 2020. Worlds' narrowed election of asserted claims May 5, 2020. Activision's 35 U.S.C. 101 motion due May 19, 2020. Worlds' opposition to the 35 U.S.C. 101 motion due June 9, 2020. Activision's 35 U.S.C. 101 reply brief due June 23, 2020. Hearing on Activision's 35 U.S.C. 101 motion July 22, 2020 at 3:00 p.m. Close of Fact Discovery January 14, 2021. Worlds' Narrowing of Asserted Claims (No more than 3 claims per patent; 15 claims maximum) January 21, 2021. Activision's Narrowing of Prior Art (No more than 7 prior art references per patent; 20 references total) February 4, 2021. Status conference February 8, 2021 at 2:00 p.m. Opening expert reports February 18, 2021. Rebuttal expert reports March 25, 2021. Close of Expert Discovery April 15, 2021. Dispositive motions (can address estoppel issue If still disputed)/Daubert motions due May 13, 2021. Opposition to Dispositive motions/Daubert motions due June 10, 2021. Reply briefs in support of Dispositive motions/Daubert motions due June 24, 2021. Hearing on dispositive motions/Daubert hearing TBD. Final Election deadlines and FPTC TBD. As to briefing for various motions noted above, the page limitation for opening briefs and opposition (except for Daubert motions) shall be 20 pages and reply briefs shall be 10 pages. As to Daubert motions, the page limitation for opening briefs and opposition shall be 10 pages and reply briefs shall be 5 pages. Given that there will be oral argument, the Court does not anticipate allowing surreply briefs.
How much? 1 billion with treble =3 billion total plus a royalty agreement for the next 15years per the USC.
Ladies and Gentlemen,
Many of you are speculating on share price. I believe each and every one of you are undervaluing. Consider the following....Are you taking into account the average attorneys portion of the win, taxes, the multiple that will be given per share, you speculate on the special dividend Thom promised.
Have any of you looked at the wins and there associated dollar anounts counsel has produced? Have you privately investigated the multiple for a stockand compare it to other similar technology companies? Do you think counsel would have studied this case for 9 months before they accepted on contingency only to go after pennies in a court house step settlement when there are dollars to be picked up?
Remember a clear cut undisputable judgement was the original stated goal as I understand from my original research that began 7 plus years ago. Counsel has publicly stated how he will thru the legal process be able to attain 15 years against each judged offender.(Review USC statutues I have posted in the past)
Spend time in the former postings, links, United States Code, and history of counsel as well as his firm. Then ask yourself 500 million?
Or do you mean 1 or 2 billion plus treble damages?
I believe this stock after all is said and done on the ATVI case realistically has legs to be pushed to $10 - $40p/s, not a few dollars that some have suggested.
Some will scoff and I have thick skin. I have been here since 2013. I have spent 1000 hours researching this before I placed my bet and have watched the show with amusement as counsel sat in the court room and calmly said little but said volumes simultaneously. The opposition has already stated there are BILLIONS at stake. Let me repeat. ATVI's own counsel stated , " their are BILLIONS at stake." Ladies and gentlemen the cat was let out of the bag when this statemnt was made by ATVI legal representation in the video from "Cameras in the Courtroom program." Judge Casper in the same video also stated that AT LEAST ONE INFRINGEMENT HAD BEEN COMMITTED by ATVI. Review the video for yourself.
Happy Hunting for the longs... for those without skin in the game or are all hat and no cattle, please refrain from your Monday morning quarterbacking. It does noone any good.
This is my opinion but if you speculate please include all variable.
I fully realize it is not up to Tom. However, he could communicate.