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That sticky is still relevant
no idea what you keep talking about but don't see how it has anything to do with the discussion of this stock. you got the wrong board perhaps?
This is good news! I am still afraid we'll drift down for the next 10-12 months but then as we have a firm trial date and get to about a month before trial we should be moving north. This is when I plan to get back in unless there's dumping with conversions that drive the stock down to a good entry point (3-4 cents).
VRNG news is not going to help. The big guys seem to steamroll over the small entrepreneurial companies, what a shame.
I hear you. My point had more to do with the time factor. If the "drawing" is a year or more from now vs another "ticket" that has a "drawing" in say, a month I'd take the shorter time.
Everybody must make their own judgement. I have been involved in patent litigation cases for 20 years now, not always successful mind you.
Experience is the best teacher but the tuition can be high.
Best of luck to all.
Not a bad plan but a few "if's" more than I like. I am, however, keeping an eye!
stark: I believe WDDD has a good case! However, looking at various factors I, as an investor, believe my money can work better elsewhere for the next 12 months, maybe longer:
1. Trial date was not set at the last conference, instead we got new discovery and depositions happening.
2. The firm looks to need money as they need to pay the IPR attorneys and other expenses - on the low end they spend about $500K/year not counting accumulated salaries.
3. The company currently has a cap around $7M
4. Current Liabilities are north of $3M
5. Note holders are about to convert and it is not a given they will take a worse deal, at best a further diluting deal but these guys do not want to wait forever for ROI
6. MSJ is an obstacle in lieu of "Alice" - nobody can guess the outcome and ruling
7. IPR is another obstacle, this looks on the face of it harmless but again we do not know - if that goes forward Casper will surely approve a motion to delay this case
8. The timeline we received tells us that there will not be a trial for at least a year
soooo..... as an investor do you 1. buy/hold the stock here fully knowing there are no positive catalysts on the horizon short term (settlement does not seem reasonable pre-trial) OR 2. do you take your money and play a different table and keep an eye to see if risk/reward balance shifts?
I choose 2, not because I do not believe in their chances BUT because the table looks to be "dead" for 12 months and chances to MAKE money in that period looks very slim. Money needs to multiply, that's why people buy stock in the first place. If you can buy a lottery ticket for a drawing tomorrow, would you chose that instead of the ticket that gets drawn in a year?
just my 2c and don't forget my first line
does not sound like a trial until 2017-18:
"Initial Pretrial Conference set for 9/29/2016 02:00 PM in Courtroom 11 before Judge Denise J. Casper. The parties shall confer regarding the topics identified under Local Rule 16.5(d) and shall prepare and submit a joint pretrial memorandum in accordance with Local Rule 16.5(d) no later than five (5) business days prior to the pretrial conference. The pretrial memorandum shall also propose deadlines for the filing of motions in limine, proposed jury instructions, proposed jury voir dire and a proposed trial date."
Motions in limine could take the good judge a year to rule on
sorry, dead money for a while but hope they win in the end
I think you're correct. selling at 5.5 cents at that time would be a good return. keep in mind they will convert i stages and probably play games - they know how to make money.
if the price is 8 cents that means their cost is around 3.5 cents
the problem I saw as there was no trial date set. I seriously doubt the trial date start will be in 2016 as they are filled up with new discovery for 3/4 of that year. That is what did not happen at the last conference and that is why we see the selling imho
This is pretty obviously dead money for a year+ now. When you don't sell that means you would buy at these prices, I would not. There are no positive catalysts in the near future but there are a couple that could be negative: 1. MSJ - don't think ACTV will prevail here but the good judge could take a year to rule and 2. IPR - if that case goes to review ACTV will immediately ask for a stay and there goes another year, minimum. On top of that we will see increased shares outstanding in a couple of weeks and that in my estimate could be somewhere from 5-25M shares.
Does WDDD have a great case? I think so but the wheels of justice are so slow that money here might have a better opportunity to grow elsewhere.
Let's not forget there are no revenues, this is a pure patent play betting on settlement/royalty and patent soon expire. There are other infringers but like someone said, they will probably wait until there's a precedent as any new case probably would be stayed pending outcome here.
Good luck to all and if you can wait and don't mind the, hopefully temporary, loss then so be it
Dead money for 12 months or more. Do not see any positive catalysts here until trial starts and doubt ACTV will settle before trial. Still looming is both MSJ and IPR but I do not think these will happen. If IPR is decided to be heard this case would be stayed. Seen this before with RMBS. Still a great investment I believe but 12 months from now.
no, hearing on MSJ in November
3853000v1/013049 1
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
JURY TRIAL DEMANDED
JOINT PROPOSED PRETRIAL SCHEDULE
Pursuant to the Court’s request at the September 9, 2015 scheduling conference
(D.I. 178), the Parties hereby file a joint proposed pretrial schedule. The parties have
conferred and agree on the following proposed pretrial dates.
Event Agreed Date
Close of Fact Discovery February 1, 2016
Opening Expert Reports March 1, 2016
Rebuttal Expert Reports April 1, 2016
Close of Expert Discovery April 22, 2016
Deadline to file Dispositive/Daubert Motions May 20, 2016
Opposition to Dispositive/Daubert Motions June 20, 2016
Reply ISO Dispositive/Daubert Motions (5 pages max) July 11, 2016
Hearing on Dispositive Motions July 2016
Pretrial Conference/Trial 30-60 days after ruling on
dispositive motions
Case 1:12-cv-10576-DJC Document 180 Filed 09/14/15 Page 1 of 33853000v1/013049 2
Dated: September 14, 2015
Respectfully submitted,
By: /s/ Ryan V. Caughey By: /s/ Matthew J. Moffa
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
Joel R. Leeman
jleeman@sunsteinlaw.com
BBO # 292070
SUNSTEIN KANN MURPHY &
TIMBERS LLP
125 Summer Street
Boston, MA 02110-1618
T: (617) 443-9292
F: (617) 443-0004
ATTORNEYS FOR PLAINTIFF
WORLDS, INC.
Matthew Moffa (pro hac vice)
matthew.moffa@ropesgray.com
BBO # 681965
Jesse J. Jenner (pro hac vice)
jesse.jenner@ropesgray.com
Gene W. Lee (pro hac vice)
gene.lee@ropesgray.com
Brian P. Biddinger (pro hac vice)
brian.biddinger@ropesgray.com
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: (212) 596-9000
F: (212) 596-9050
Kathryn N. Hong (pro hac vice)
kathryn.hong@ropesgray.com
ROPES & GRAY LLP
1900 University Avenue
6th Floor
East Palo Alto, CA 94303-2284
T: (650) 617-4000
F: (650) 617-4090
Samuel Brenner
BBO# 677812
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: (617) 951-7000
F: (617) 951-7050
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING, INC.
Case 1:12-cv-10576-DJC Document 180 Filed 09/14/15 Page 2 of 33853000v1/013049 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/ Ryan V. Caughey
Ryan V. Caughey
Case 1:12-cv-10576-DJC Document 180 Filed 09/14/15 Page 3 of 3
Obviously ACTV did NOT ask for a stay pending IPR, I see that as a huge positive and believe they know it does not have merit. The SJM based on Alice I view as not happening. Dates being set and moving to trial / net positive. It might be a 2016 story but could be a very good one. Let\s see what dates are revealed Monday.
REH/Long
I know but had ears in court
i THINK YOU WILL SEE PROPOSED DATES BY BOTH PARTIES NEXT WEEK (DUE MONDAY). THEN IT IS UP TO THE JUDGE TO SET THE DATES FOR DISCOVERY, DEPOS ETC AND TRIAL. SHE CAN DO THAT IN AN ORDER OR SHE CAN WAIT FOR THE NOVEMBER HEARING.
United States District Court
District of Massachusetts (Boston)
CIVIL DOCKET FOR CASE #: 1:12-cv-10576-DJC
Worlds, Inc. v. Activision Blizzard, Inc. et al
Assigned to: Judge Denise J. Casper
Cause: 28:1338 Patent Infringement
Date Filed: 03/30/2012
Jury Demand: Both
Nature of Suit: 830 Patent
Jurisdiction: Federal Question
Date Filed # Docket Text
09/09/2015 178 ELECTRONIC Clerk's Notes for proceedings held before Judge Denise J. Casper: Status Conference held on 9/9/2015. Court hears from counsel re: scheduling of the case through trial. Counsel to file proposed schedule by 9/14/15. Hearing on pending summary judgment motion set for 11/10/15 at 2:30PM. (Court Reporter: Debra Joyce at joycedebra@gmail.com.)(Attorneys present: Joel Leeman and Ryan Caughey for the plaintiff. Brian Biddinger and Jesse Jenner for the defendants.) (Hourihan, Lisa) (Entered: 09/10/2015)
09/09/2015 179 ELECTRONIC NOTICE Setting Hearing on Motion 174 MOTION for Summary Judgment that the Asserted Patent Claims are Invalid under 35 U.S.C. 101 : Motion Hearing set for 11/10/2015 02:30 PM in Courtroom 11 before Judge Denise J. Casper. (Hourihan, Lisa) (Entered: 09/10/2015)
MSJ hearing early November it looks like. was on Pacer, now gone.
SSDD
Transcript of Markman Hearing held on October 3, 2014, 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 an d Contact Information: Debra Joyce at joycedebra@gmail.com Redaction Request due 8/6/2015. Redacted Transcript Deadline set for 8/17/2015. Release of Transcript Restriction set for 10/14/2015. (Scalfani, Deborah)
1
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)
MOTION FOR SUMMARY JUDGMENT THAT THE
ASSERTED PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. § 101
Pursuant to Fed. R. Civ. P. 56 and L.R. 56.1, Defendants Activision Blizzard, Inc.,
Blizzard Entertainment, Inc., and Activision Publishing, Inc. (collectively “Activision”) move
for summary judgment that the asserted claims of U.S. Patent Nos. 7,181,690 (“the ’690 patent”),
7,493,558 (“the ’558 patent”), 7,945,856 (“the ’856 patent”), 8,082,501 (“the ’501 patent”), and
8,145,998 (“the ’998 patent”) (collectively “the Patents-In-Suit”) are invalid under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter.
In support of this motion, Activision is filing, contemporaneously herewith:
(1) Activision’s Memorandum in Support of Its Motion for Summary Judgment That The
Asserted Patent Claims Are Invalid Under 35 U.S.C. § 101; (2) Activision’s Statement of
Undisputed Material Facts; and (3) the Declaration of Matthew J. Moffa in Support of
Activision’s Motion and accompanying Exhibits 1–9.
For the reasons set forth in Activision’s Memorandum in Support of Its Motion for
Summary Judgment, Activision respectfully requests that the Court enter summary judgment that
Case 1:12-cv-10576-DJC Document 174 Filed 09/04/15 Page 1 of 3 2
all asserted claims of the ’690 patent, ’558 patent, ’856 patent, ’501 patent and ’998 patent are
invalid.
REQUEST FOR ORAL ARGUMENT
Pursuant to Local Rule 7.1(d), Activision respectfully requests oral argument on the
matter to aid in resolution of the motion.
Dated: September 4, 2015
Respectfully submitted,
By: /s/ Matthew J. Moffa
Matthew J. Moffa (pro hac vice)
BBO#681965
Jesse J. Jenner (pro hac vice)
Gene W. Lee (pro hac vice)
Brian P. Biddinger (pro hac vice)
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: (212) 596-9000
F: (212) 596-9050
Kathryn N. Hong (pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
T: (650) 617-4000
F: (650) 617-4090
Samuel Brenner
BBO# 677812
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: (617) 951-7000
F: (617) 951-7050
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING,
INC.
Case 1:12-cv-10576-DJC Document 174 Filed 09/04/15 Page 2 of 3CERTIFICATE OF CONFERENCE
Pursuant to Local Rule 7.1, I hereby certify that counsel for Activision has conferred with
Plaintiff Worlds, Inc.’s, counsel in an attempt in good faith to resolve or narrow the issues
presented by this motion.
Dated: September 4, 2015 By: /s/Matthew J. Moffa
Matthew J. Moffa
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 4th day of September, 2015.
By: /s/ Matthew J. Moffa
Matthew J. Moffa
Case 1:12-cv-10576-DJC Document 174 Filed 09/04/15 Page 3 of 3
159 Status Conference 07/21/2015 09/09/2015
at 03:00 PM
174 Response Deadline 09/04/2015 09/25/2015
155 Release of Transcript Restrict 07/16/2015 10/14/2015
Don't think the good judge will like this last motion and attempt at second bite of the apple
52128632_10
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)
MEMORANDUM IN SUPPORT OF DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT THAT THE
ASSERTED PATENT CLAIMS ARE INVALID UNDER 35 U.S.C. § 101
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 1 of 27ii
TABLE OF CONTENTS
I. INTRODUCTION .............................................................................................................. 1
II. STATEMENT OF RELEVANT FACTS ........................................................................... 1
A. The Claims Of The ’690 And ’856 Patents .............................................................3
B. The Claims Of The ’558 Patent ...............................................................................4
C. The Claims Of The ’501 Patent ...............................................................................5
D. The Claims Of The ’998 Patent ...............................................................................6
III. THE APPLICABLE LAW ................................................................................................. 7
A. Summary Judgment And Section 101......................................................................7
B. Patent-Eligible Subject Matter Under Section 101 ..................................................8
C. The Machine-Or-Transformation Test .....................................................................9
D. The Significance Of The Alice Decision ...............................................................10
IV. STATEMENT OF REASONS WHY ACTIVISION’S MOTION FOR SUMMARY
JUDGMENT SHOULD BE GRANTED.......................................................................... 10
A. The Representative Claims Of The ’690, ’856, And ’558 Patents Are Invalid .....10
1. Step 1 Of The Mayo/Alice Test: Worlds’ Representative Patent Claims
Are Directed To An Abstract Idea ............................................................ 11
2. Step 2 Of The Mayo/Alice Test: Worlds’ Representative Patent Claims
Do Not Transform The Abstract Idea ....................................................... 14
3. Worlds’ Representative Patent Claims Do Not Satisfy The “Machine Or
Transformation” Test ................................................................................ 17
B. The Other Asserted Claims Of The ’690 And ’558 Patents Are Also Invalid ......17
C. The Asserted Claims Of The ’501 And ’998 Patents Are Invalid .........................18
V. CONCLUSION ................................................................................................................. 20
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 2 of 27iii
TABLE OF AUTHORITIES
Page(s)
CASES
Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336 (2013) .........................................................................................................15, 18
Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347 (2014) ..................................................................................................... passim
Allvoice Develop. US, LLC v. Microsoft Corp., No. 2014-1258,
2015 WL 2445055 (Fed. Cir. May 22, 2015) ..........................................................................10
Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada,
771 F. Supp. 2d 1054 (E.D. Mo. Feb. 24, 2011)........................................................................7
Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
687 F.3d 1266 (Fed. Cir. 2012)................................................................................................18
Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd.,
731 F.2d 831 (Fed. Cir. 1984)....................................................................................................7
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
--- F. Supp. 3d ----, 2015 WL 2341074 (N.D. Texas, May 15, 2015) ...............................12, 13
Bilski v. Kappos,
561 U.S. 602 (2010) .......................................................................................................9, 18, 20
buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014)........................................................................................ passim
Comcast IP Holdings I, LLC v. Sprint Communs. Co. L.P.,
55 F. Supp. 3d 544 (D. Del. 2014) ...........................................................................................17
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343 (Fed. Cir. 2014)................................................................................................10
CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011)................................................................................................18
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)................................................................................................10
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 8:12-cv-1324,
2013 WL 3946579 (C.D. Cal. July 31, 2013) ............................................................................7
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 3 of 27iv
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344 (Fed. Cir. 2014)................................................................................................10
Ex parte Shirley, Appeal 2009-2352,
2009 WL 1359080 (BPAI May 14, 2009) ...............................................................................16
Fuzzysharp Techs., Inc. v. Intel Corp., 12-cv-4413(YGR),
2013 WL 5955668 (N.D. Cal. Nov. 6, 2013) .................................................................. passim
Fuzzysharp Techs., Inc. v. Intel Corp.,
595 Fed. App’x 996 (2015) ................................................................................................10, 12
In re Bilski,
545 F.3d 943 (Fed. Cir. 2008)..............................................................................................7, 19
In re Goodman,
11 F.3d 1046 (Fed. Cir. 1993)..................................................................................................19
Intellectual Ventures I v. Capital One Bank (USA)
792 F.3d 1363 (Fed. Cir. 2015)............................................................................................7, 10
Intellectual Ventures I v. Capital One Fin. Corp., 13-cv-740,
2014 WL 1513273 (E.D. Va. April 16, 2014) ...........................................................................7
Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
2015 WL 1941331 (S.D.N.Y. April 28, 2015) ........................................................................14
Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343 (Fed. Cir. 2015)............................................................................................7, 10
Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574 (1986) ...................................................................................................................7
Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289 (2012) ..................................................................................................... passim
Myspace, Inc. v. Graphon Corp.,
672 F.3d 1250 (Fed. Cir. 2012)..................................................................................................7
OIP Techs. v. Amazon.com,
788 F.3d 1359 (Fed. Cir. 2015)................................................................................................10
Planet Bingo, LLC v. VKGS, LLC,
961 F. Supp. 2d 840 (W.D. Mi. 2013) .......................................................................................7
Planet Bingo, LLC v. VKGS LLC,
576 Fed. App’x 1005 (Fed. Cir. 2014) .....................................................................................10
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 4 of 27v
Retirement Capital Access Mgmt. Co. LLC v. U.S. Bancorp, 15-1039,
slip op. (Fed. Cir. Aug.7, 2015) (per curiam) ..........................................................................10
Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014).......................................................................................... passim
Versata Dev. Grp. v. SAP Am., Inc.,
793 F.3d 1306 (Fed. Cir. 2015)................................................................................................10
STATUTES
35 U.S.C. § 101 ...................................................................................................................... passim
OTHER AUTHORITIES
Fed. R. Civ. P. 56(a) ........................................................................................................................7
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 5 of 27 1
52128632_10
Defendants Activision Blizzard, Inc.; Blizzard Entertainment, Inc.; and Activision
Publishing, Inc., (collectively “Activision”) submit this Memorandum in support of their Motion
For Summary Judgment That The Asserted Patent Claims Are Invalid Under 35 U.S.C. § 101.
I. INTRODUCTION
On June 19, 2014, the U.S. Supreme Court issued its decision in Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347 (2014). This was a sea change in the law concerning the patent
eligibility under 35 U.S.C. § 101 for patent claims that involve abstract ideas. Following Alice, a
wave of decisions from the federal courts and the Patent Trial and Appeal Board of the U.S.
Patent and Trademark Office have found patent claims that involve abstract ideas invalid under
Section 101.
By straightforward application of Alice and its progeny, and this Court’s findings in claim
construction, all of Worlds’ asserted patent claims are invalid under Section 101 for being
directed to an abstract idea and not adding any inventive concept that transforms the claims into
patent-eligible subject matter.
Worlds’ asserted patent claims are directed to the abstract idea of filtering position
information in a computer network. When one considers the elements of the asserted patent
claims both individually and as an ordered combination, they do not add anything beyond this
abstract idea that transforms the claims into patent-eligible subject matter. Many decisions since
Alice have found patent claims that involve using computers to filter information to be directed
to an abstract idea and to be invalid under Section 101. Worlds’ asserted patent claims fall
squarely within such precedent
II. STATEMENT OF RELEVANT FACTS
Worlds has serially filed 12 patent applications based on a single common disclosure. In
Worlds’ words, each application “relates to the field of packet communication” and “provides an
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 6 of 27 2
52128632_10
efficient communication network for client-server networks with large numbers of clients.”
(Decl. Ex. 1 at 1:10–13.1
) Each filing states that Worlds’ invention “can be used in a variety of
applications,” but provides as an example the client-server architecture of a virtual world chat
system. (Id. at 2:60–65.)
Worlds’ asserted patents derive from a provisional application filed in 1995 and a
nonprovisional patent application filed in 1996, which issued as non-asserted U.S. Patent
No. 6,219,045. Worlds subsequently prosecuted a series of continuation applications that issued
as the five asserted patents: 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”) (collectively, the “patents-in-suit”). Worlds asserts 40 patent claims that cover various
aspects of a single invention, including the actions of the server, the actions of the client, the type
of information that is filtered, the criteria by which filtering of information occurs, method
claims, system claims, and claims to instructions on a computer-readable medium. Because all
of Worlds’ asserted claims are part of “continuation” patents, all of these claims are directed to
Worlds’ same, single purported invention. MPEP 201.07, 9th Ed. (“A continuation is a second
application for the same invention claimed in a prior nonprovisional application and filed before
the original prior application becomes abandoned or patented.” (emphasis added).)
The asserted claims of the patents-in-suit are discussed below, and are reproduced in their
entirety in the Statement Of Undisputed Material Facts filed herewith (“56.1 Stmt.”).
1
“Decl. Ex. nn” refers to an exhibit of the concurrently-filed Declaration of Matthew J.
Moffa In Support Of Defendants’ Motion That The Asserted Patent Claims Are Invalid Under 35
U.S.C. § 101. This citation refers to column 1, lines 10-13, of U.S. Patent No. 7,181,690.
References to patents in this format of “AA:BB-CC” refer to column AA, lines BB-CC, of the
patent. As the patents-in-suit share a common specification, all specification citations herein are
made to the ’690 patent.
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 7 of 27 3
52128632_10
A. The Claims Of The ’690 And ’856 Patents
Worlds asserts claims 1-8, 10-17, and 19 of the ’690 patent and claim 1 of the ’856 patent.
For purposes of this motion, claim 1 of the ’690 patent is substantively the same as claim 1 of
the ’856 patent, and these two claims are representative:
’690 Patent, Claim 1 ’856 Patent, Claim 1
1. A method for enabling a first user
to interact with other users in a virtual
space, wherein the first user and the other
users each have an avatar and a client
process associated therewith, and wherein
each client process is in communication
with a server process, wherein the method
comprises:
(a) receiving a position of less than all
of the other users' avatars from the
server process; and
(b) determining, from the received
positions, a set of the other users'
avatars that are to be displayed to
the first user,
wherein steps (a) and (b) are
performed by the client process
associated with the first user.
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.
(Decl. Ex. 1 at 19:31-42; Ex. 3 at 21:7-21.)
Independent claim 1 of the ’690 patent claims a method by which a client process
“receiv[es] a position of less than all of the other users' avatars” from a server process. Its
dependent claims require monitoring and receiving “orientation” information as well as position
information (claims 2 and 3), and specify particular comparisons and limits for determining
which avatars to display (claims 4 and 5). Independent method claim 6 and system claim 10 are
similar to claim 1, but add that each client process also monitors an avatar position and transmits
it to the server. Their dependent claims include “automatic[]” transmission of positions from
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server to client (claim 7), and specific comparisons for determining which avatars to display
(claim 8). Claims 11-17 and 19 are directed to software programs recorded on a machinereadable
medium, and are essentially software-type counterparts to claims 1-8 and 10.
B. The Claims Of The ’558 Patent
Worlds asserts claims 4-9 of the ’558 patent. For purposes of this motion, these are
substantively the same as certain claims of the ’690 patent. Claim 6 is representative:
6. A computer readable medium with a software program recorded therein,
the software program being for enabling a plurality of users to interact in a virtual
space, wherein each user has a computer associated therewith, wherein each
computer has a client process associated therewith, wherein each client process
has an avatar associated therewith, and wherein each client process is in
communication with a server process, wherein the software program includes
instructions for:
(a) monitoring, by each client process, a position of the avatar associated with
the client process;
(b) transmitting, by each client process to the server process, the position of
the avatar associated with the client process;
(c) transmitting, by the server process to each client process, the positions of
less than all of the avatars that are not associated with the client process;
and
(d) determining from the positions transmitted in step (c), by each client
process, a set of the avatars that are to be displayed.
(Decl. Ex. 2 at 22:24-42.)
Independent claim 6 is essentially another software-type counterpart of method claim 6 of
the ’690 patent. Claim 6 and its dependent claim 7 parallel claims 15 and 16 of the ’690 patent.
Independent claim 4 and its dependent claim 5 are software-type claims that parallel
claims 6 and 7, except that claims 4 and 5 include only steps taken by the clients, while claims 6
and 7 include steps taken by the thing that interacts with the clients (that is, the server).
Independent claim 8 and its dependent claim 9 are method claims that parallel claims 4
and 5, except that those two claims are written in terms of steps taken by the clients, while
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claims 8 and 9 are written in terms of steps taken by a server.
C. The Claims Of The ’501 Patent
Worlds asserts claims 1-8, 10, 12, 14-16 of the ’501 patent. Claim 1 is representative:
1. A method for enabling a first user to interact with other users in a virtual
space, each user of the first user and the other users being associated with a three
dimensional avatar representing said each user in the virtual space, the method
comprising the steps of:
customizing, using a processor of a client device, an avatar in response to
input by the first user;
receiving, by the client device, position information associated with fewer
than all of the other user avatars in an interaction room of the virtual
space, from a server process, wherein the client device does not receive
position information of at least some avatars that fail to satisfy a
participant condition imposed on avatars displayable on a client device
display of the client device;
determining, by the client device, a 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.
(Decl. Ex. 4 at 19:20–38 (emphasis added).)
This claim is similar to claim 1 of the ’690 patent but adds limitations for customizing
avatars using a “processor of a client device,” specifies that server filtering is based on avatars
not satisfying a “participant condition,” and includes an express step of displaying avatars at the
client device. Dependent claims 2-8 and 10 add criteria for filtering avatars (claims 2, 5, 8, and
10), criteria for customizing avatars (claims 3, 4, and 6), and a step of teleporting an avatar from
one virtual room to another (claim 7).
Independent claim 12 is a client device capable of carrying out the method of claim 1.
Independent claim 14 is an article of manufacture for storing computer code for carrying out
instructions for the method of claim 1. Dependent claims 15 and 16 parallel claims 5 and 7.
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D. The Claims Of The ’998 Patent
Worlds asserts claims 1, 18, and 20 of the ’998 patent. Claim 1 is representative:
1. A method for displaying interactions of a local user avatar of a local user
and a plurality of remote user avatars of remote users interacting in a virtual
environment, the method comprising:
receiving, at a client processor associated with the local user, positions
associated with less than all of the remote user avatars in one or more
interaction rooms of the virtual environment, wherein the client processor
does not receive position information associated with at least some of the
remote user avatars in the one or more rooms of the virtual environment,
each avatar of the at least some of the remote user avatars failing to satisfy
a condition imposed on displaying remote avatars to the local user;
generating, on a graphic display associated with the client processor, a
rendering showing position of at least one remote user avatar; and
switching between a rendering on the graphic display that shows at least a
portion of the virtual environment to the local user from a perspective of
one of the remote user avatars and a rendering that allows the local user to
view the local user avatar in the virtual environment.
(Decl. Ex. 5 at 19:12-30 (emphasis added).)
Claim 1 is similar to the broad method claims of the ’690, ’856, and ’558 patents but adds
limitations for a “client processor,” server filtering based on avatars not satisfying a “condition,”
rendering avatars, and switching perspectives in rendering avatars. Its dependent claim 20 adds
the step of displaying the plurality of avatars on a display device.
Independent claim 18 is directed to a system and is similar to the method of claim 1 but
additionally requires that the system receive orientation information for less than all other remote
user avatars, generate a rendering of less than all remote user avatars based on the received
orientation and position information, and change the perspective view of the rendering in
response to user input.
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III. THE APPLICABLE LAW
A. Summary Judgment And Section 101
Summary judgment is appropriate “if the movant shows that 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). When the facts underlying an invalidity determination are not in dispute, the Court
determines “whether summary judgment of invalidity is correct by applying the law to the
undisputed facts.” Myspace, Inc. v. Graphon Corp., 672 F.3d 1250, 1257 (Fed. Cir. 2012)
(quotations omitted). Once a prima facie case of invalidity is shown, the nonmoving party must
come forward with rebutting material evidence to avoid summary judgment. See Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). “Denials or conclusory
statements are insufficient” and will not defeat the moving party’s motion. Barmag Barmer
Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984).
Patent eligibility under Section 101 is a question of law. In re Bilski, 545 F.3d 943, 951
(Fed. Cir. 2008), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010). Patents have been found
to be invalid under Section 101 by summary judgment in numerous decisions. E.g., Intellectual
Ventures I v. Capital One Fin. Corp., 13-cv-740, 2014 WL 1513273, at *6 (E.D. Va. April 16,
2014), aff’d sub nom at Intellectual Ventures I v. Capital One Bank (USA), 792 F.3d 1363 (Fed.
Cir. 2015); Fuzzysharp Techs., Inc. v. Intel Corp., 12-cv-4413(YGR), 2013 WL 5955668, at *13
(N.D. Cal. Nov. 6, 2013), aff’d, 595 Fed. App’x 996 (Fed. Cir. 2015); Planet Bingo, LLC v.
VKGS, LLC, 961 F. Supp. 2d 840, 857 (W.D. Mi. 2013), aff’d, 576 Fed. App’x 1005 (Fed. Cir.
2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 8:12-cv-1324, 2013 WL 3946579,
at *10 (C.D. Cal. July 31, 2013), aff’d, 758 F.3d 1344 (Fed. Cir. 2014); Bancorp Servs. L.L.C. v.
Sun Life Assur. Co. of Canada, 771 F. Supp. 2d 1054, 1058 (E.D. Mo. Feb. 24, 2011), aff’d, 687
F.3d 1266 (Fed. Cir. 2012).
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Claim construction can be helpful in assessing the validity of patent claims under
Section 101. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed.
Cir. 2015) (“[T]he threshold of § 101 must be crossed; an event often dependent on the scope
and meaning of the claims.”).
B. Patent-Eligible Subject Matter Under Section 101
Section 101 defines patent-eligible subject matter as follows:
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.
“[T]his provision contains an important exception. ‘[L]aws of nature, natural phenomena, and
abstract ideas’ are not patentable.” Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 132 S. Ct. 1289, 1293 (2012) (citations omitted). The reason for this exception is,
“‘concern that patent law not inhibit further discovery by improperly tying up the future use of’
these building blocks of human ingenuity.” Alice, 134 S. Ct. at 2354 (citations omitted).
In defining the excluded categories, the Court has ruled that the exclusion
applies if a claim involves a natural law or phenomenon or abstract idea, even if
the particular natural law or phenomenon or abstract idea at issue is narrow.
Mayo, 132 S. Ct. at 1303. The Court in Mayo rejected the contention that the very
narrow scope of the natural law at issue was a reason to find patent eligibility,
explaining the point with reference to both natural laws and one kind of abstract
idea, namely, mathematical concepts.
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014).
The Supreme Court has established a two-part test for assessing whether patent claims
are eligible for patent production under Section 101:
First, we determine whether the claims at issue are directed to one of those patentineligible
concepts. If so, we then ask, “[w]hat else is there in the claims before
us?” To answer that question, we 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, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294 (citations omitted; emphasis added)).
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“At Mayo step two, we must examine the elements of the claim to determine whether it
contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patenteligible
application.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1294, 1298). “[T]he
‘prohibition against patenting abstract ideas “cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment.”’” Mayo, 132 S. Ct. at 1294
(citations omitted); see also buySAFE, 765 F.3d at 1354, Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715-16 (Fed. Cir. 2014); Fuzzysharp, 2013 WL 5955668, at *11.
Claim limitations for conventional or obvious pre-solution or post-solution activity do not
transform an abstract idea into patentable subject matter. See Mayo, 132 S. Ct. at 1298.
Additional steps that “consist of well-understood, routine, conventional activity,” which, “when
viewed as a whole, add nothing significant beyond the sum of their parts” will not save an
otherwise patent-ineligible claim. Id. “[M]ere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while
adding the words “apply it”’ is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358
(citation omitted).
C. The Machine-Or-Transformation Test
The “machine-or-transformation” test provides that a claimed process is patent eligible if
it “is tied to a particular machine or apparatus,” or “transforms a particular article into a different
state or thing.” Bilski v. Kappos, 561 U.S. 593, 602 (2010). This is not the sole test for assessing
patent eligibility, but it “is a useful and important clue, an investigative tool,” for assessing
patent eligibility for some claimed inventions under Section 101. Id. at 604; Ultramercial, 772
F.3d at 716-17. Recitation by a patent claim of a general purpose computer or the Internet is not
sufficient to satisfy the “machine” prong of this test. Ultramercial, 772 F.3d at 716-17.
Furthermore, a patent claim that does not transform any article to a different state or thing does
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not meet the “transformation” prong of the test. Id.
D. The Significance Of The Alice Decision
The Alice decision was a sea change in the law of patent eligibility for patent claims that
involve abstract ideas. Following Alice, scores of decisions by federal courts and the Patent Trial
and Appeal Board of the USPTO have found such claims to be invalid under Section 101. The
Court of Appeals for the Federal Circuit has issued 13 post-Alice decisions involving invalidity
challenges under Section 101 for patent claims that were directed to abstract ideas. In 12 of
these 13 decisions, the Federal Circuit found the challenged claims to be invalid.2
All 12 of
these decisions involved claims that were directed to abstract ideas implemented using
computers.
IV. STATEMENT OF REASONS WHY ACTIVISION’S MOTION FOR SUMMARY
JUDGMENT SHOULD BE GRANTED
A. The Representative Claims Of The ’690, ’856, And ’558 Patents Are Invalid
Representative claim 1 of the ’690 patent and claim 1 of the ’856 patent have two simple
steps: (1) a client process for a first user receives from a server process “a position of less than
all of the other users' avatars” (that is, the server process filters information that it sends to the
client process), and (2) the client process determines, from the received positions, a set of the
2
The 12 decisions finding invalidity under Section 101 are (1) Digitech, 758 F.3d 1344
(Fed. Cir. 2014); (2) Planet Bingo, LLC v. VKGS LLC, 576 Fed. App’x 1005 (Fed. Cir. 2014);
(3) buySAFE, 765 F.3d 1350 (Fed. Cir. 2014); (4) Ultramercial, 772 F.3d 709 (Fed. Cir. 2014);
(5) Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir.
2014); (6) Fuzzysharp Techs., 595 Fed. App’x 996 (Fed. Cir. 2015); (7) Allvoice Develop. US,
LLC v. Microsoft Corp., No. 2014-1258, 2015 WL 2445055 (Fed. Cir. May 22, 2015); (8) OIP
Techs. v. Amazon.com, 788 F.3d 1359 (Fed. Cir. 2015); (9) Internet Patents Corp., 790 F.3d
1343 (Fed. Cir. 2015); (10) Intellectual Ventures I, 792 F.3d 1363 (Fed. Cir. 2015); (11) Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); and (12) Retirement Capital Access
Mgmt. Co. LLC v. U.S. Bancorp, 15-1039, slip op. (Fed. Cir. Aug.7, 2015) (per curiam). The
sole decision finding patent eligible subject matter is DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014).
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other users' avatars that are to be displayed to the user associated with the first user’s client
process (that is, the client process may further filter the received information) (see p. 3 above).
Representative claim 6 of the ’558 patent is similar and adds steps that each client process
monitors the position of its avatar and transmits the position to the server process (see p. 4).
1. Step 1 Of The Mayo/Alice Test: Worlds’ Representative Patent
Claims Are Directed To An Abstract Idea
The claims of the patents-in-suit are directed to the abstract idea of filtering position
information in a computer network. “[T]he exclusion [from patent eligibility] applies if a claim
involves a natural law or phenomenon or abstract idea, even if the particular natural law or
phenomenon or abstract idea at issue is narrow.” buySAFE, 765 F.3d at 1353; see, e.g., Mayo,
132 S. Ct. at 1294 (“the ‘prohibition against patenting abstract ideas “cannot be circumvented by
attempting to limit the use of the formula to a particular technological environment”’” (citations
omitted)); buySAFE, 765 F.3d at 1354; Ultramercial, 772 F.3d at 715-16.
a. Claim Construction
The Court’s findings and Worlds’ arguments in claim construction show that Worlds’
representative patent claims are directed to this abstract idea. The Court noted that the two steps
of Worlds’ claims are directed to filtering: “This term [the ‘determining step’] implicates clientside
filtering, as opposed to the server-side filtering discussed above [for the ‘receiving’ step].”
(Decl. Ex. 9 (D.I. 153) (Markman Order) at 10 (emphasis added).) At Worlds’ urging, the Court
determined that the claim terms for these two filtering steps should be construed according to
their ordinary meanings and that no constructions were necessary. (Id. at 6-14.) As asserted by
Worlds, the two filtering steps are not limited to any particular method, type, or degree of
filtering. (Id. at 8-9.)
Worlds has applied the “ordinary meaning” of the filtering claim terms so broadly that
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they encompass scenarios that indisputably do not involve anything new or inventive. For
example, Worlds asserts that infringement occurs whenever a “remote user ha[s] disconnected or
left the game” and thereby caused the other clients to cease receiving information about it.
(Worlds’ Sixth Suppl. Disclosure of the Claims Infringed, Ex. F-13 at 3.)
b. Using Computers To Filter Information Is An Abstract Idea
Filtering information in a computer system is a fundamental and well-known concept that
has been determined in multiple court decisions to be an abstract idea. See BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, --- F. Supp. 3d ----, 2015 WL 2341074 at *12 (N.D.
Texas, May 15, 2015) (finding invalid claims to “no more than an Internet iteration of the basic
concept of filtering content, ... a well-known method of organizing human activity”).
The Federal Circuit recently affirmed a summary judgment of invalidity under
Section 101 in a case that is instructive. Fuzzysharp Techs., Inc. v. Intel Corp., 595 Fed. App’x
996 (2015) (affirming 12-cv-4413(YGR), 2013 WL 5955668, at *13 (N.D. Cal. Nov. 6, 2013)).
The asserted patent claims in Fuzzysharp involved 3-D computer graphics technology and were
very similar to Worlds’ asserted patent claims. The following claim was illustrative:
1. A method of reducing the visibility related computations in 3-D computer
graphics, the visibility related computations being performed on 3-D surfaces or
their sub-elements, or a selected set of both, the method comprising:
identifying grid cells which are under or related to the projections or extents
of projections associated with at least one of said 3-D surfaces or their subelements;
comparing data associated with said at least one of 3-D surfaces or their subelements
with stored data associated with the grid cells;
determining which of said at least one of 3-D surfaces or their sub-elements
is always invisible or always visible to a viewpoint or a group of viewpoints
by projection based computations prior to a visibility computation; and
ignoring said determined at least one of the 3-D surfaces or their subelements
during said visibility computation.
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Fuzzysharp, 2013 WL 5955668, at *3 (emphasis added).
The claimed invention purported to improve the rendering of 3-D objects by categorizing
surface portions of an object as (1) totally visible, (2) totally hidden, or (3) neither totally visible
nor totally hidden, and then not doing visibility computations for surfaces that are totally visible
or totally hidden. Id. at *5–*6. In other words, the patent claims were directed to filtering
surface portions to do full visibility computations only for surfaces that are neither totally visible
nor totally hidden (category 3). The District Court found Fuzzysharp’s asserted patent claims to
be directed to the abstract idea of “‘decreasing the number of computational operations required
to perform prior art visibility computations’ ‘in the field of three-dimensional graphics’ … or ‘to
produce a 3-D image.’” Id. at *10. The Court quoted the following passage from Fuzzysharp’s
patent specification, which referred to this process as “filtering” surface portions:
"[a]fter the filtering off of totally invisible patches by the invisibility technique,
the visibility technique detects totally visible and non-hiding patches .... The
remaining patches are not totally invisible. They are also not totally visible/nonhiding."
Id. at *6 (emphasis added). The Court held the asserted claims to be directed to an abstract idea,
as the patent purported to cover “all applications” of filtering (“reduction in computations”) “in
the field of ‘3D graphics.’” See id. at *11.
In BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, --- F. Supp. 3d ----, 2015
WL 2341074 at *2 (N.D. Texas, May 15, 2015), the Court also found that claims “directed
toward the abstract idea of filtering Internet content” were invalid. Id. at *8. Claim 1 was
representative:
1. A content filtering system for filtering content retrieved from an Internet
computer network by individual controlled access network accounts, said
filtering system comprising:
a local client computer generating network access requests for said individual
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controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet
computer network, said ISP server associating each said network account to
at least one filtering scheme and at least one set of filtering elements, said
ISP server further receiving said network access requests from said client
computer and executing said associated filtering scheme utilizing said
associated set of logical filtering elements.
The Court characterized the claims as “no more than an Internet iteration of the basic
concept of filtering content.” Id. at *12. Because the claimed method merely filtered Internet
content in the same way that “content observed, read, and interacted with through other
mediums” might be filtered, the Court held that the claims were invalid, and dismissed the case
with prejudice. See id. at *11–12.
In Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 1941331 (S.D.N.Y.
April 28, 2015), an asserted patent claimed “a method for filtering ‘a packet’ of information
based on the contents of two or more packets.” Id. at *8. The Court construed “packet” to be “a
‘[d]iscrete unit of information being routed through a computer network, often to a designated
addressee.’” Id. at *1. The Court found that the claims mirrored in breadth those invalidated by
the Federal Circuit in Digitech, which at their core “‘describe[d] a process of organizing
information through mathematical correlations.’” Id. at *11 (quoting Digitech, 758 F.3d at
1351). The Court thus found the asserted claims to be directed to abstract ideas, id. at *8, and
granted summary judgment of invalidity under Section 101.
2. Step 2 Of The Mayo/Alice Test: Worlds’ Representative Patent
Claims Do Not Transform The Abstract Idea
The claims of Worlds’ ’690, ’856, and ’558 patents do not add any inventive concept that
transforms the abstract idea into patent eligible subject matter, when the elements are considered
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both individually and as an ordered combination.
Beyond the abstract idea of filtering information, Worlds’ claims are directed to the
interaction of avatars with positions and orientations in a virtual space, operating in a clientserver
network. Worlds, however, did not invent client-server networks, virtual worlds, avatars,
or position and orientation information. These limitations merely reflect a particular field of use
of filtering of information, which does not make the claims patent eligible. The Supreme Court
has squarely held that “the ‘prohibition against patenting abstract ideas “cannot be circumvented
by attempting to limit the use of the formula to a particular technological environment.”’” Mayo,
132 S. Ct. at 1294 (citations omitted)); see also buySAFE, 765 F.3d at 1354; Ultramercial, 772
F.3d at 715-16. Worlds in fact concedes that the “client-server architecture for use in a virtual
world ‘chat’ system” described in its patents is merely a descriptive “example” among a “variety
of applications” for its purported invention. (Decl. Ex. 1 at 2:60–65.)
The computer-related elements of Worlds’ patent claims—such as a “client process” and
“server process”—are generic and do not transform the claims into patent eligible subject matter.
e.g., Alice, 134 S. Ct. at 2358; Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336 (2013) (claims with generic computer elements such as a “task library database,”
“client component,” “server component” found to be invalid); BASCOM, 2015 WL 2341074, at
*15 (“There can be little dispute that the featured elements … —‘local client computer’ ‘remote
ISP server,’ and ‘Internet computer network,’ are well-known, generic computer components.”).
“Client process” is a generic term that was argued by Worlds and construed by the Court to mean
“a program executed, stored, or accessible on a user’s computer to provide access to a server.”
(Decl. Ex. 9 at 25–28.) “Server process” is also generic and was argued by Worlds and
construed by the Court to mean “a program executed, stored, or accessible by one or more
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computers that provide one or more services to users of computers across a network.” Id.
The specification of Worlds’ patents concedes that the claimed computer elements and
functions are generic, well-understood, routine, and conventional. The Background of the
Invention section describes existing client-server networking technology and problems with
communications in prior art networks. (Decl. Ex 1 at 1:14 to 2:16.) The specification states that
one application for client-server networks in which difficulties in communications have arisen is
game playing, “where 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.” (Id. at 1:42-55.) By discussing these network technologies and applications
exclusively as “background,” Worlds acknowledged them as prior art. See Ex parte Shirley,
Appeal 2009-2352, 2009 WL 1359080, at *9-13 (BPAI May 14, 2009).
The specification further admits that the purported invention can be carried out using
known and conventional computer hardware, software, and functions:
Typically, but not always, each client 20 is implemented as a separate
computer and one or more computer systems are used to, implement virtual world
server 22. As used here, the computer system could be a desktop computer as are
well known in the art, which use CPU's available from Intel Corporation,
Motorola, SUN Microsystems, Inc., International Business Machines (IBM), or
the like and are controlled by operation systems such as the Windows® program
which runs under the MS-DOS operating system available from Microsoft
Corporation, the Macintosh® O/S from Apple Computer, or the Unix® operating
system available from a variety of vendors. Other suitable computer systems
include notebook computers, palmtop computers, hand-held programmable
computing devices, special purpose graphical game machines (e.g., those sold by
Sony, SEGA, Nintendo, etc.), workstations, terminals, and the like.
* * *
Referring now to FIG. 3, a block diagram is shown of a world system 54
in which a user A, at a first client system 60 (client A), interacts with a user B at a
second client system 60 (client B) via a server 61. Client system 60 includes
several databases, some of which are fixed and some of which are modifiable.
Client system 60 also includes storage for program routines. Mechanisms for
storing, reading and modifying data on computers such as client system 60 are
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well known in the art, as are methods and means for executing programs and
displaying graphical results thereof. One such program executed by client system
60 is a graphical rendering engine which generates the user's view of the virtual
world.
(E.g., Decl. Ex. 1 at 3:47–4:48 (emphasis added).)
Worlds’ patent claims recite functions of “receiving,” “determining,” and “transmitting”
information, which are also well-understood, routine, and conventional functions in computer
networks. See, e.g., BASCOM, 2015 WL 2341074, at *15 (see representative claim above);
Fuzzysharp, 2013 WL 5955668, at *12–*13 (see representative claim above); Comcast IP
Holdings I, LLC v. Sprint Communs. Co. L.P., 55 F. Supp. 3d 544 (D. Del. 2014) (method for
optimizing a telephony network involving “receiving” a request and “determining” whether it
requires a user prompt). At Worlds’ urging, the Court determined that the “receiving” and
“determining” steps should have their ordinary meanings. (Decl. Ex. 9 at 6-14.)
3. Worlds’ Representative Patent Claims Do Not Satisfy The “Machine
Or Transformation” Test
The “machine or transformation” test provides further evidence that Worlds’ patent
claims are not directed to patent eligible subject matter. Worlds’ patent claims recite generic
computer elements. As such, they are not tied to any particular “machine.” Ultramercial, Inc.,
772 F.3d at 716-17. The recitation of “generalized software components arranged to implement
an abstract concept on a computer” is insufficient to render that concept patentable. Accenture
Global Servs., 728 F.3d at 1345-46. Furthermore, the “mere manipulation or reorganization of
data” will not satisfy the “transformation” prong. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011); accord Bancorp, 687 F.3d at 1273.
B. The Other Asserted Claims Of The ’690 And ’558 Patents Are Also Invalid
The other asserted claims of the ’690 and ’558 patents are also invalid under Section 101.
Some claims (e.g., ’690 patent claims 11-17 and 19; ’558 patent claim 8) are substantively the
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 22 of 27 18
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same as the representative claims except directed to a different claim type—for example, method
versus system versus software program. These are invalid for the same reason as the
representative claims because the mere difference in claim type is immaterial. See Alice, 134 S.
Ct. at 2360; Accenture Global Servs., 728 F.3d at 1346.
Other asserted claims merely specify the inputs or criteria for filtering (e.g. ’690 patent
claims 2–5 and 8; ’558 patent claims 5, 7, and 9), and/or add the routine and conventional step of
displaying results after filtering (e.g., claim 2 of the ’690 patent). Such additional limitations are
insignificant pre-solution and post-solution activity, respectively (that is, steps that occur as
preparation for and as consequences of the filtering step); neither can transform the underlying
abstract idea into patent eligible subject matter. Mayo, 132 S. Ct. at 1298; see also Bilski v.
Kappos, 561 U.S. at 612 (finding unpatentable claims which merely “establish some of the
inputs” to otherwise unpatentable method). They also do not meet the “machine or
transformation” test. Ultramercial, Inc., 772 F.3d at 716-17. Therefore, all of the asserted
claims of the ’690, ’856, and ’558 patents are invalid under Section 101.
C. The Asserted Claims Of The ’501 And ’998 Patents Are Invalid
Representative claim 1 of the ’501 patent is similar to the representative claims of the
’690, ’856, and ’558 patents but adds limitations for customizing avatars using a “processor of a
client device,” server filtering based on avatars not satisfying a “participant condition,” and
displaying avatars. System claim 12 and software-type claim 14 apply the steps of method
claim 1. The asserted dependent claims add criteria for filtering avatars, a database or a pointer
for customizing avatars, or teleporting an avatar from one virtual room to another.
Representative claim 1 of the ’998 patent is similar to the representative claims of the
’690, ’856, and ’558 patents but adds limitations for a “client processor,” server filtering based
on avatars not satisfying a “condition,” rendering avatars, and switching perspectives in
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 23 of 27 19
52128632_10
rendering avatars. Claim 18 includes additional inputs for filtering, and claim 20 includes an
additional step of displaying the filtered results.
The asserted claims of the ’501 and ’998 patents add only generic computer elements,
conventional activity, or routine or insignificant pre-solution and post-solution activity over the
elements of the representative claims of the ’690, ’856, and ’558 patents. Again, these elements
cannot transform the underlying abstract idea into patent eligible subject matter. Mayo, 132 S.
Ct. at 1298; see also In re Bilski, 545 F.3d at 957 n.14 (noting that same reasoning applies to
“insignificant extra-solution activity”).
In fact, the USPTO confirmed during prosecution that the ’501 and ’998 patents merely
capture obvious variations of the same invention claimed in Worlds’ earlier patents, issuing
“obviousness-type double patenting” rejections against Worlds where subject matter claimed in
each later patents was “fully disclosed in [and] covered by” an earlier patent. (See 56.1 Stmt. at
¶¶40 (rejecting all claims of the ’501 patent in view of the ’690 patent), 70–71 (rejecting all
claims of the ’998 patent in view of the ’501 patent.) Worlds never challenged these rejections,
but merely obviated them by executing “terminal disclaimers” involving each of the five patentsin-suit.
(See Decl. Ex. 6 at 17–18 (disclaiming ’501 patent against ’690 and ’558 patents); Ex. 7
at 14 (disclaiming ’998 patent against ’501 patent)).3
None of the additional features of the ’501 and ’998 patents provide a non-abstract idea
or inventive concept.
The additional features of customized avatars, teleporting avatars, and displaying avatars
are mere “extra-solution” manipulations of the filtered data, see In re Bilski, 545 F.3d at 957
3
A terminal disclaimer allows a patent owner to overcome a double patenting rejection by
voluntarily relinquishing any extended patent protection it might gain from having two patents to
the same invention. See In re Goodman, 11 F.3d 1046, 1052 (Fed. Cir. 1993).
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 24 of 27 20
52128632_10
n.14, and were found by the examiner to have been known in the prior art. (See 56.1 Stmt. ¶¶44–
52 (citing U.S. Patent No. 5,736,982 to Suzuki et al. and U.S. Patent No. 5,491,743 to Shiio for
these features), 73–74 (citing U.S. Patent No. 5,491,743 to Shiio)). And the filtering of
information based on a “condition” or “participant condition” is no less abstract that the filtering
of information without specifying the basis. See Bilski v. Kappos, 561 U.S. at 612.
The remaining features of the ’501 and ’998 claims, rendering views and switching
perspectives, cannot confer patent eligibility because they are the same post-solution display
activity “that would be performed even if the claimed method were not used.” Fuzzysharp, 2013
WL 5955668, at *12; see also id. (quoting the Court’s earlier order that “projecting 3D images
on a computer screen” does not “impose any meaningful limitation on the claim scope because it
merely serve[s] to perform” the claimed method (citation, quotation marks omitted)).
Finally, as generic implementations of Worlds’ method, none of the asserted claims of
the ’501 and ’998 patents meets the “machine or transformation” test. Ultramercial, Inc., 772
F.3d at 716-17.
Therefore, all asserted claims of the ’501 and ’998 patents are invalid under Section 101.
V. CONCLUSION
For the foregoing reasons, Activision respectfully requests that the Court grant
Activision’s Motion For Summary Judgment and find all of Worlds’ asserted patent claims
invalid under Section 101.
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 25 of 27 21
52128632_10
Dated: September 4, 2015
Respectfully submitted,
By: /s/ Matthew J. Moffa
Matthew J. Moffa (pro hac vice)
BBO#681965
Jesse J. Jenner (pro hac vice)
Gene W. Lee (pro hac vice)
Brian P. Biddinger (pro hac vice)
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: (212) 596-9000
F: (212) 596-9050
Kathryn N. Hong (pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
T: (650) 617-4000
F: (650) 617-4090
Samuel Brenner
BBO# 677812
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: (617) 951-7000
F: (617) 951-7050
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING,
INC.
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 26 of 27 22
52128632_10
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 4th day of September, 2015.
By: /s/ Matthew J. Moffa________
Matthew J. Moffa
BBO#681965
Case 1:12-cv-10576-DJC Document 175 Filed 09/04/15 Page 27 of 27
09/04/2015 174 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..(Moffa, Matthew) (Entered: 09/04/2015)
09/04/2015 175 MEMORANDUM in Support re 174 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.. (Moffa, Matthew) (Entered: 09/04/2015)
09/04/2015 176 AFFIDAVIT in Support re 174 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.. (Attachments: # 1 Exhibit U.S. Patent No. 7,181,690, # 2 Exhibit U.S. Patent No. 7,493,558, # 3 Exhibit U.S. Patent No. 7,945,856, # 4 Exhibit U.S. Patent No. 8,082,501, # 5 Exhibit U.S. Patent No. 8,145,998, # 6 Exhibit Excerpts from the certified file history of U.S. Patent No. 8,082,501, # 7 Exhibit Excerpts from the certified file history of U.S. Patent No. 8,145,998, # 8 Exhibit Worlds Inc.s Sixth Supplemental Disclosure of the Claims Infringed (D.I. 160), # 9 Exhibit Courts Markman Order of June 26, 2015 (D.I. 153))(Moffa, Matthew) (Entered: 09/04/2015)
09/04/2015 177 Statement of Material Facts L.R. 56.1 re 174 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.. (Moffa, Matthew) (Entered: 09/04/2015)
Yes. That kind of post, if not true, can get him in some serious trouble
AGAIN, WHERE DO YOU SEE THIS? LINK PLEASE. WHAT YOU ARE CLAIMING IS IN THEIR LATEST 10K (WHICH IS FROM FEBRUARY) MAKES NO SENSE AND I CANNOT SEE ANY SUCH WORDING IN THERE.
please provide a link. I have looked at the last 10K, 10Q and 8K and do not find the word "worlds" in there anywhere
When that happens watch out for new issue and massive dilution and complete control by Dror
YES
United States District Court
District of Massachusetts (Boston)
CIVIL DOCKET FOR CASE #: 1:12-cv-10576-DJC
Worlds, Inc. v. Activision Blizzard, Inc. et al
Assigned to: Judge Denise J. Casper
Cause: 28:1338 Patent Infringement
Date Filed: 03/30/2012
Jury Demand: Both
Nature of Suit: 830 Patent
Jurisdiction: Federal Question
Date Filed # Docket Text
08/27/2015 172 Judge Denise J. Casper: ELECTRONIC ORDER entered granting 169 Motion to Seal Exhibits 1-10 of Activisions Seventh Supplemental Preliminary Non-Infringement Contentions. by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. (Hourihan, Lisa) (Entered: 08/27/2015)
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)
ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. AND
ACTIVISION PUBLISHING, INC.’S FOURTH SUPPLEMENTAL
INVALIDITY DISCLOSURE RE: THE ‘690, ‘558, ‘856, ‘501 AND ‘998 PATENTS
Pursuant to the August 6, 2012 Joint Scheduling Statement (D.I. 27), the Court’s
August 13, 2012, September 25, 2012 and November 26, 2012 Orders (D.I. 29, D.I. 35, and D.I.
40, respectively) modifying the Joint Scheduling Statement, and Plaintiff’s July 27, 2015 Sixth
Supplemental Disclosure of the Claims Infringed (D.I. 160), Defendants Activision Blizzard,
Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Activision”)
hereby disclose their Fourth Supplemental Invalidity Disclosure. Activision contends that each
of the claims asserted by plaintiff Worlds, Inc. (“Worlds”) is invalid under at least 35 U.S.C.
§§ 101, 102, 103, and/or 112, and/or for obviousness-type double patenting.
I. THE ASSERTED CLAIMS
Worlds has served Activision with inter alia its Sixth Supplemental Disclosure of the
Claims Infringed, alleging infringement of U.S. Patent Nos. 7,181,690 (“the ‘690 patent”),
7,493,558 (“the ‘558 patent”), 7,945,856 (“the ‘856 patent”), 8,082,501 (“the ‘501 patent”) and
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 1 of 32 -2-
8,145,998 (“the ‘998 patent”) (collectively “the Patents-in-Suit”). Specifically, Worlds has
alleged that Activision infringes claims 1–8, 10–17, and 19 of the ‘690 patent, claims 4-9 of the
‘558 patent, claim 1 of the ‘856 patent, claims 1-8, 10, 12 and 14-16 of the ‘501 patent, and
claims 1, 18, and 20 of the ‘998 patent (collectively, “Asserted Claims”).1
Pursuant to the Joint
Scheduling Statement ¶ 4.B, Activision does not provide any contentions regarding any claims
not asserted in Worlds’ Sixth Supplemental Disclosure of the Claims Infringed. To the extent
that Worlds asserts additional claims against Activision in the future, Activision reserves the
right to disclose new or supplemental invalidity contentions regarding such claims.
II. PRELIMINARY INVALIDITY DISCLOSURE
A. Identification of Prior Art
Pursuant to the Joint Scheduling Statement ¶ 4.B, and based on Activision’s current
understanding of Worlds’ Sixth Supplemental Disclosure of the Claims Infringed, Activision
identifies the following references and disclosures set forth in Table 1 as prior art that anticipates
or renders obvious one or more Asserted Claims of the Patents-in-Suit. As set forth in the charts
in Exhibits A-F2
, the prior art listed in Table 1 demonstrates that the alleged inventions claimed
in the Patents-in-Suit were well known and obvious as of the time of filing of the Patents-in-Suit.
1
On April 17, 2013, counsel for Worlds notified counsel for Activision via e-mail that
Worlds is no longer asserting infringement of ‘558 patent claims 1-3 and ‘998 patent claim 21
against Activision. On July 27, 2015, Worlds further withdrew assertion of ‘690 patent claims 9,
18, and 20 and ‘998 patent claims 2, 3, 7, 8, 11–17 and 19, all of which were found by the Court
to contain an indefinite limitation. (D.I. 160 at 4). Although ‘998 patent claim 21 is still listed in
Exhibits I and J provided with Worlds’ Sixth Supplemental Disclosure of the Claims Infringed,
this appears to be in error, in view of the April 17, 2013 statement above and the absence of
claim 21 from Worlds’ statement of asserted claims. Id.
2
Exhibits A-D were first served and filed on December 3, 2012 with Activision’s
Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856 and ‘501 patents (D.I. 41).
Exhibit E was first served and filed on December 20, 2012 with Activision’s First Supplemental
Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856, ‘501 and ‘998 patents (D.I.
47). Exhibit F was first served and filed on May 24, 2015 with Activision’s Second
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 2 of 32 -3-
TABLE 1
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Durward et al. U.S. Patent No. 5,659,691, titled
Virtual Reality Network With
Selective Distribution And Updating
Of Data To Reduce Bandwidth
Requirements, filed September 23,
1993 (“Durward patent”)
August 19,
1997
(issued)
Anticipation
and obviousness
Rick Kazman Making WAVES: On the Design of
Architecture for Low-end Distributed
Virtual Environments, Proceedings of
IEEE Virtual Reality Annual
International Symposium, Seattle,
WA, September 18-22, 1993, pp. 443-
49 (“Kazman Article”)
September
1993
Anticipation
and obviousness
Michael
Snoswell
Overview of Cyberterm, a Cyberspace
Protocol Implementation (“Snoswell
Article”)
July 17,
1992
Anticipation
and obviousness
Miroslav Stanic Surf’s Up – Things to see and do on
the Internet, Issue #2, pp. 4-6 (“Surf’s
Up Article”)
May 1995 Anticipation
and obviousness
Michael
Snoswell
Cyberterm system,
(See, e.g., Snoswell Article; Surf’s Up
Article)
Publicly
known
and/or used
by
1992
Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior MANUAL.txt, Air
Warrior Version 0.8, Preliminary
Draft (“First Air Warrior Manual”)
1988 Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior Manual, Version 1.2
(“Second Air Warrior Manual”)
December
1989
Anticipation
and obviousness
Kesmai Super VGA Air Warrior Flight
Manual (“SVGA AW Manual”) (See
also SVGA Air Warrior game
packaging)
1992 Anticipation
and obviousness
Supplemental Preliminary Invalidity Disclosure relating to the ‘690, ‘558, ‘856, ‘501 and ‘998
patents (D.I. 73). Updated versions of Exhibits A–F were provided by Activision on July 27,
2015 with its Third Supplemental Invalidity Disclosure (D.I. 162). Activision provides herewith
further updated versions of Exhibits A-F.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 3 of 32 -4-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Andrew Reese,
Gregg Perlman
Online With Start - Kesmai Air
Warrior, Start Magazine, Vol. 3, No.
2, Special Issue #4, p. 73 (“Start
Magazine”)
1988 Anticipation
and obviousness
Video Games
& Computer
Entertainment
Worlds of Kesmai Article, Video
Games & Computer Entertainment,
pp. 75-76 (“Worlds of Kesmai”)
August
1989
Anticipation
and obviousness
Jerry Michalski Multi-User Virtual Environments, Part
I, Release 1.0, Esther Dyson’s
Monthly Report, (“Michalski Article”)
June 27,
1994
Anticipation
and obviousness
Kesmai
(Kelton Flinn)
Air Warrior Game
(See, e.g., First Air Warrior Manual;
Second Air Warrior Manual; SVGA
AW Manual; SVGA Air Warrior game
packaging; Start Magazine; Worlds of
Kesmai; Michalski Article; Air
Warrior Source Code and
Executables)
Publicly
known
and/or used
by
1986
Anticipation
and obviousness
Thomas
Funkhouser
RING: A Client-Server System for
Multi-User Virtual Environments,
1995 IEEE Symposium on Interactive
3D Graphics, pp. 85-92 (April 9-12,
1995) (“Funkhouser Article”)
April 12,
1995
Anticipation
and obviousness
Thomas
Funkhouser,
AT&T Bell
Labs
Network Services for Multi-User
Virtual Environments, IEEE Network
Realities ‘95, Boston, MA (“Second
Funkhouser Article”)
October
1995
Anticipation
and obviousness
Thomas
Funkhouser
U.S. Patent No. 5,784,570, titled
Server for Applying a Recipient Filter
and Compressing the Input Data
Stream Based Upon a Set of at Least
One Characteristics in a Multiuser
Interactive Virtual Environment
(“Funkhouser Patent”)
July 21,
1998
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 4 of 32 -5-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Thomas
Funkhouser,
Carlo H. Séquin
Adaptive Display Algorithm for
Interactive Frame Rates
During Visualization of Complex
Virtual Environments, presented at
20th Annual Conference on Computer
Graphics and Interactive Techniques,
Aug. 1-6, 1993, Anaheim, CA (“1993
Funkhouser Article”)
August
1993
Obviousness
Thomas
Funkhouser
RING System (See, e.g., Funkhouser
Article; Second Funkhouser Article;
Funkhouser Patent; 1993 Funkhouser
Article; Visualization and Interaction
in Large 3D Virtual Environments,
Thomas A. Funkhouser (Abstract of
Nov. 22, 1994 presentation, available
at
http://graphics.stanford.edu/glunches/1
994-1995/nov22.html;
ACTV00070176 at 1:00:40 – 1:05:53)
Publicly
known
and/or used
by
November
1994
Anticipation
and obviousness
Rick Kazman HIDRA: An Architecture for Highly
Dynamic Physically Based MultiAgent
Simulations (“HIDRA Article”)
1993 Anticipation
and obviousness
Michael
Macedonia,
Michael Zyda,
David Pratt,
Paul Barham,
Steven Zeswitz
NPSNET: A Network Software
Architecture for Large Scale Virtual
Environments, Presence, Vol. 3, No. 4
(“NPSNET Article”)
Fall 1994 Anticipation
and obviousness
Michael
Macedonia
A Network Software Architecture for
Large Scale Virtual Environments,
Naval Postgraduate School
(“Macedonia Dissertation”)
June 1995 Anticipation
and obviousness
David Pratt A Software Architecture for the
Construction and Management of
Real-Time Virtual Worlds, Naval
Postgraduate School (“Pratt
Dissertation”)
June 1993 Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 5 of 32 -6-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Michael
Macedonia,
Michael Zyda,
David Pratt,
Paul Barham,
Steven Zeswitz
NPSNET system
(See, e.g., NPSNET Article;
Macedonia Dissertation; Pratt
Dissertation; Network Software
Architectures for Real-Time
Massively-Multiplayer Online Games,
R. Delano, P. McFarlane (Feb. 2,
2005), pp. 64-68; NPSNET: A 3D
Visual Simulator for Virtual World
Exploration and Experience, D. Pratt,
M. Zydga, in Tomorrow’s Realities
(July 1991), p. 30); NPSNET Videos
(ACTV00070163– ACTV00070186))
Publicly
known
and/or used
by August
1993
Anticipation
and obviousness
Brad
Lineberger
Kingdom of Drakkar
(See, e.g., Kingdom of Drakkar Source
Code)
Publicly
known
and/or used
by
1989
Anticipation
and obviousness
Chip
Morningstar, F.
Randall Farmer
The Lessons of Lucasfilm’s Habitat,
Cyberspace: First Steps (1991)
(“Habitat A”)
1991 Anticipation
and obviousness
Lucasfilm Ltd. The Official Avatar Handbook: A
Comprehensive Guide To
Understanding Habitat (“Habitat B”)
1987 Anticipation
and obviousness
Kathy Yakal Habitat - A Look At The Future of
Online Games, Compute!, Issue 77, p.
32 (“Habitat C”)
October
1986
Anticipation
and obviousness
Chip
Morningstar
The Ghu Guide, Lucasfilm Ltd.
Games Division (“Habitat D”)
March 9,
1987
Anticipation
and obviousness
Margaret
Morabito
Enter The On-line World Of
Lucasfilm, Margaret Morabito
(“Habitat E”)
1986 Anticipation
and obviousness
Quantum
Comp. Tech.
Club Caribe Guidebook
(“Habitat F”)
1989 Anticipation
and obviousness
Kazutomo
Fukuda,
Tadayuki
Tahara, Toru
Miyoshi
Hypermedia Personal Computer
Communication System: Fujitsu
Habitat (“Habitat G”)
1990 Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 6 of 32 -7-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Lucasfilms, F.
Randall Farmer,
Chip
Morningstar
Habitat
(See, e.g., Habitat A-G; Habitat Source
Code; Habitat Videos)
Publicly
known
and/or used
by
1986
Anticipation
and obviousness
Greg
Thompson,
Mark Horowitz,
George
Woltman
The MAZE game (“Maze War H”) 1976 Anticipation
and obviousness
Callisto Super Maze Wars Brochure (“Maze
War I”)
1992 Anticipation
and obviousness
MacroMind Maze Wars+ Brochure (“Maze War
J”) 1987 (upon
information
and belief)
Anticipation
and obviousness
Oracle Maze at INTEROP Brochure (“Maze
War K”)
1992 Anticipation
and obviousness
Oracle Oracle at INTEROP 92 (“Maze War
L”)
October
1992
Anticipation
and obviousness
Greg Thompson
et al.
Maze War
(See, e.g., Maze War A-O3
)
Publicly
known
Anticipation
and obviousness
3
Maze War A-G and M-O are as follows: Webpage found at http://www.digibarn.com/
collections/games/xerox-maze-war/index.html, DigiBarn Computer Museum (Printed on
10/15/2009) (“Maze War A”); Webpage found at http://www.digibarn.com/collections/
games/maze-war/other-mazes/MazeWar-for-Alto.html, DigiBarn Computer Museum (Printed on
10/15/2009) (“Maze War B”); Webpage found at http://www.digibarn.com/history/04-VCF7-
MazeWar/stories/colley.html, DigiBarn Computer Museum (Printed on 10/15/2009) (“Maze War
C”); Webpage found at http://www.digibarn.com/history/04-VCF7-MazeWar/stories/
guyton.html, DigiBarn Computer Museum (Printed on 10/15/2009) (“Maze War D”); Webpage
found at http://www.digibarn.com/history/04-VCF7-MazeWar/stories/lebling.html, DigiBarn
Computer Museum (Printed on 10/15/2009) (“Maze War E”); Webpage found at
http://www.digibarn.com/history/04-VCF7-MazeWar/panelists.html, DigiBarn Computer
Museum (Printed on 10/15/2009) (“Maze War F”); The aMazing History of Maze, Greg
Thompson (2004) (“Maze War G”); Video of Maze War game in play on the Imlac PDS-1D
hardware, found at http://www.digibarn.com/collections/games/maze-war/imlacs-pds1-
maze/movies/tom-uban-mazewar-demo-400.mov, DigiBarn Computer Museum (Downloaded on
10/16/2009) (“Maze War M”); Video of Maze War game in play on Xerox Alto and 6085
hardware, found at http://www.digibarn.com/collections/games/xerox-maze-war/movies/don-onxerox-6085-maze.mov,
DigiBarn Computer Museum (Downloaded on 10/16/2009) (“Maze War
N”); Video found at http://www.digibarn.com/collections/games/xerox-maze-war/movies/mazeCase
1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 7 of 32 -8-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
and/or used
by 1975
J. Calvin,
A. Dickens,
B. Gaines,
P. Metzger,
D. Miller,
D. Owen
The SIMNET Virtual World
Architecture, Virtual Reality Annual
International Symposium, 1993 IEEE
(“SIMNET Article”)
1993 Anticipation
and obviousness
Kevin Kelly The First Online Sports Game, Wired
(“Kelly Article”)
December
1993
Anticipation
and obviousness
Jonathan
Shekter
The Netrek Newbie Manual, Rev. 1.3
(“Netrek Manual”)
November
1995
Anticipation
and obviousness
Kevin Smith,
Scott Silvey
Netrek
(See, e.g., Declaration of Kevin Smith
(Dec. 17, 2007) (“Smith Dec.”);
Declaration of Kevin Smith (Oct. 9,
2008) (“Second Smith Dec.”);
Declaration of Andrew T. McFadden
(Oct. 13, 2008) (“McFadden Dec.”);
Declaration of Andrew T. McFadden
(Oct. 21, 2008) (“Second McFadden
Dec.”); Kelly Article; Netrek Manual;
Netrek Source Code)
Publicly
known
and/or used
by
1991
Anticipation
and obviousness
Matthew S. Fell The Unofficial Doom Specs, Release
v1.666 (“Doom Specs”)
December
15, 1994
Obviousness
id Software The Doom v1.2 Manual, readme.exe
file (“Doom v1.2 Manual”)
February
16, 1994
Obviousness
id Software Doom
(See, e.g., Doom Specs; Doom v1.2
Manual; http://everything2.com/title/
The+Doom+rendering+engine?display
type=printable (“Doom Rendering
Engine”); http://doom.wikia.com/
wiki/Doom_networking_component
(“Doom Networking Component”);
Doom Source Code and Executables)
Publicly
known
and/or used
by February
1993
Obviousness
on-alto-fastart.mov, DigiBarn Computer Museum (Downloaded on 10/16/2009) (“Maze War
O”).
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 8 of 32 -9-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Sierra On-line Shadow of Yserbius Manual 1993 Anticipation
and obviousness
Sierra On-line Shadow of Yserbius
(See, e.g., Shadow of Yserbius
Manual; Shadow of Yserbius and INN
Executables)
Publicly
known
and/or used
by
1992
Anticipation
and obviousness
Bralick et al. Using a Multi-User Dialogue System
to Support Software Engineering
Distance Education, 7th SEI CSEE
Conference, SOFTWARE
ENGINEERING EDUCATION,
January 5-7, 1994 (“Bralick Article”)
January
1994
Anticipation
and obviousness
James Aspnes TinyMUD
(See, e.g., TinyMUD Source Code)
Publicly
known
and/or used
by
1989
Anticipation
and obviousness
MUDs
(See, e.g., Declaration of John K.
Bennett and exhibits (Oct. 28, 2008)
(“Bennett Decl.”); Bralick Article;
TinyMUD Source Code)
Publicly
known
and/or used
by
at least
1989
Anticipation
and obviousness
MicroProse CyberStrike: Intense multiplayer
action in Cyberspace (Instruction
Manual) (“CyberStrike A”)
1994 Anticipation
and obviousness
MicroProse CyberStrike: Technical Supplement
(“CyberStrike B”)
1994 Anticipation
and obviousness
Simutronics CyberStrike
(See, e.g., CyberStrike A; CyberStrike
B)
Publicly
known
and/or used
by
1994
Anticipation
and obviousness
Honda U.S. Patent No. 6,020,885, titled
Three-Dimensional Virtual Reality
Space Sharing Method and System
Using Local and Global Object
Identification Codes, filed July 9, 1995
(“Honda patent”)
February 1,
2000
(issued)
Anticipation
and obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 9 of 32 -10-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Worlds, Inc. Worlds Ware Publicly
known
and/or used
by October
1994
Anticipation
and obviousness
Worlds, Inc. AlphaWorld Publicly
known
and/or used
by July
1995
Anticipation
and obviousness
Worlds, Inc. Worlds Chat Publicly
known
and/or used
by July
1995
Anticipation
and obviousness
Suzuki et al. U.S. Patent No. 5,736,982, titled
Virtual Space Apparatus With Avatars
And Speech, filed August 1, 1995
(“Suzuki patent”)
April 7,
1998
(issued)
Obviousness
Nitta U.S. Patent No. 5,347,306, titled
Animated Electronic Meeting Place,
filed December 17, 1993 (“Nitta
patent”)
September
13, 1994
(issued)
Obviousness
Benford and
Fahlén
A Spatial Model of Interaction In
Large Virtual Environments,
Proceedings of the Third European
Conference on Computer-Supported
Cooperative Work, September 13-17,
1993, Milan, Italy (“Benford Article”)
September
1993
Obviousness
Benford et al. Managing Mutual Awareness in
Collaborative Virtual Environments,
Virtual Reality Software &
Technology, Proceedings of the VRST
’94 Conference, August 23-26, 1994,
Singapore (“Second Benford Article”)
August
1994
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 10 of 32 -11-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Virtual
Universe Corp.
The Parallel Universe
From: info@virtual.cuc.ab.ca (Virtual
Universe Product Information)
Newsgroups: comp.groupware
Subject: Multi-user, Real-time
environments - New Product
Date: Tue, 23 Aug 1994 18:58:49
GMT (“Virtual Univ. Newsgroup”)
August 23,
1994
Obviousness
Foley, Van
Dam, Feiner &
Hughes
Computer Graphics: Principles and
Practice, 2d ed. (“Foley & Van Dam”)
1990 Obviousness
Shaun Bangay Parallel Implementation Of A Virtual
Reality System On A Transputer
Architecture (“Bangay Dissertation”)
November
1993
Obviousness
Myers U.S. Patent No. 5,490,239, titled
Virtual Reality Imaging System, filed
September 8, 1994 (“Myers patent”)
February 6,
1996
(issued)
Obviousness
Bolas et al. U.S. Patent No. 5,513,129, titled
Method and System for Controlling
Computer-Generated Virtual
Environment in Response to Audio
Signals, filed July 14, 1993 (“Bolas
patent”)
April 30,
1996
(issued)
Obviousness
Maes et al. U.S. Patent No. 5,563,988, titled
Method and System for Facilitating
Wireless, Full-Body, Real-Time User
Interaction with a Digitally
Represented Visual Environment, filed
August 1, 1994 (“Maes patent”)
October 8,
1996
(issued)
Obviousness
Shiio et al. U.S. Patent No. 5,491,743, titled
Virtual Conference System and
Terminal Apparatus Therefor, filed
May 24, 1994 (“Shiio patent”)
February
13, 1996
(issued)
Obviousness
Itai et al. U.S. Patent No. 5,880,709, titled
Image Processing Devices and
Methods, filed August 29, 1995 (“Itai
patent”)
March 9,
1999
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 11 of 32 -12-
Author or
Inventor
Title or Patent Number of Prior Art Date Relevance
Schneider et al. U.S. Patent No. 5,777,621, titled
Quality Control Mechanism for ThreeDimensional
Graphics Rendering
(“Schneider patent”)
July 7, 1998
(issued)
Obviousness
Sitrick U.S. Patent No. 4,521,014, titled
Video Game Including User Visual
Image (“Sitrick patent”)
June 4,
1985
(issued)
Obviousness
Michael
Benedikt
Cyberspace: Some Proposals,
Cyberspace: First Steps (1991)
(“Benedikt Chapter”)
1991 Obviousness
Meredith
Bricken
Virtual Worlds: No Interface to
Design, Cyberspace: First Steps
(1991) (“Bricken Chapter”)
1991 Obviousness
Calvin et al. STOW Realtime Information Transfer
and Networking System Architecture
(“STOW Paper”)
March,
1995
Obviousness
Van Jacobson,
Michael J.
Karels
Congestion Avoidance and Control
(“Jacobson Article”)
November
1988
Obviousness
Brent et al. U.S. Patent No. 5,315,591, titled
Method and Apparatus for Controlling
Congestion in Packet Switching
Networks (“Brent patent”)
May 24,
1994
(issued)
Obviousness
Lakshman et al. U.S. Patent No. 5,650,993, titled Drop
from Front of Buffer Policy in
Feedback Networks (“Lakshman
patent”)
July 22,
1997
(issued)
Obviousness
Newman U.S. Patent No. 5,457,687, titled
Method and Apparatus for Backward
Explicit Congestion Notification
(BECN) in an ATM Network
(“Newman patent”)
October 10,
1995
(issued)
Obviousness
Bustini et al. U.S. Patent No. 5,313,454, titled
Congestion Control for Cell Networks
(“Bustini patent”)
May 17,
1994
(issued)
Obviousness
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 12 of 32 -13-
1. Worlds Chat and AlphaWorld
Worlds asserts that the Worlds Chat and AlphaWorld systems embody one or more of the
Asserted Claims. Activision’s investigation into the features and functionality of Worlds Chat
and AlphaWorld is ongoing. To the extent that Worlds Chat and/or AlphaWorld (including any
of its predecessor systems, including, e.g. Worlds Ware and related prototype systems) was
publicly known or used more than one year prior to the effective filing date of the Patents-inSuit,
one or more of the Asserted Claims are anticipated and/or obvious in view of Worlds Chat
and/or AlphaWorld.
2. The Asserted Claims of the Patents-in-Suit Are Obvious In View Of
The Prior Art
The U.S. Supreme Court decision in KSR Int’l Co. v. Teleflex Inc., et al., 127 S. Ct. 1727,
1739 (2007) held that a claimed invention can be obvious even if there is no explicit, written
teaching, suggestion, or motivation for combining the prior art to produce that invention. In
summary, KSR holds that patents that are based on new combinations of elements or components
already known in a technical field may be found to be obvious. See generally KSR, 127 S. Ct.
1727. Specifically, the Court in KSR rejected a rigid application of the “teaching, suggestion, or
motivation [to combine]” test. Id. at 1741. “In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim.” Id. at 1741-1742. “Under the
correct analysis, any need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Id. at 1742. In particular, in KSR, the Supreme Court emphasized the principle that “[t]he
combination of familiar elements according to known methods is likely to be obvious when it
does no more than yield predictable results.” Id. at 1739. A key inquiry is whether the
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 13 of 32 -14-
“improvement is more than the predictable use of prior art elements according to their
established functions.” Id. at 1740.
In view of the Supreme Court’s KSR decision, the PTO issued a set of new Examination
Guidelines. See Examination Guidelines for Determining Obviousness Under 35 U.S.C. § 103 in
view of the Supreme Court Decision in KSR International Co. v. Teleflex, Inc., 72 Fed. Reg.
57526 (October 10, 2007). Those Guidelines summarized the KSR decision, and identified
various rationales for finding a claim obvious, including those based on other precedents. Those
rationales include:
(A) Combining prior art elements according to known methods to yield predictable
results;
(B) Simple substitution of one known element for another to obtain predictable
results;
(C) Use of known technique to improve similar devices (methods, or products) in the
same way;
(D) Applying a known technique to a known device (method, or product) ready for
improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable
solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either
the same field or a different one based on design incentives or other market forces if the
variations would have been predictable to one of ordinary skill in the art;
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 14 of 32 -15-
(G) Some teaching, suggestion, or motivation in the prior art that would have led one
of ordinary skill to modify the prior art reference or to combine prior art reference teachings to
arrive at the claimed invention.
Id. at 57529.
Activision contends that one or more of these rationales apply in considering the
obviousness of the Asserted Claims of the Patents-in-Suit. The claim charts in Exhibits A-E
provide example sections within the prior art references that teach or suggest each and every
element of the Asserted Claims of the Patents-in-Suit. To the extent that any elements of the
Asserted Claims are not found in a particular reference, or to the extent that Worlds argues that
any of the charted references does not disclose every element of an Asserted Claim, it would
have been obvious to combine such reference with other references listed in Table 1 or with the
knowledge of a person of ordinary skill in the art. Exemplary combinations and motivations to
combine references for specific elements of the Asserted Claims of the Patents-in-Suit are set
forth in Exhibit F.
A person of ordinary skill at the time of the alleged inventions of the Patents-in-Suit had
reason to combine or modify the references listed in Table 1 in light of the knowledge of a
person of ordinary skill in the art at the time of the alleged inventions and information in the
prior art cited herein. As a general matter, all of the references charted in Exhibits A-E relate to
systems and methods that provide for the interaction of multiple users in a networked virtual
environment. As such, they are all within the same field of art and would have been within the
knowledge of a person of ordinary skill in the art. The motivation to combine these references is
evident from the fact that they are each directed to the same field of technology and each address
similar problems and propose similar solutions. Thus, a person of ordinary skill in the art at the
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 15 of 32 -16-
time of filing of the Patents-in-Suit would be motivated to combine elements of any of these and
similar references and recognize that the combination of any of these systems and methods is a
predictable use of elements known in the art to solve a known problem and a use of known
techniques to solve a known problem in the same way.
B. Claim Charts
Activision provides in Exhibits A-F claim charts comparing the references listed in
Table 1 with the Asserted Claims of the Patents-in-Suit, setting forth example sections within the
prior art that teach or suggest each and every element of the Asserted Claims of the Patents-inSuit
and explaining why, for each contention of obviousness, the prior art renders the Asserted
Claim obvious. Activision’s identification of specific portions of prior art references that
disclose the elements of the Asserted Claims of the Patents-in-Suit is based, at least in part, on its
present understanding of the Asserted Claims, its present understanding of Worlds’ Sixth
Supplemental Disclosure of the Claims Infringed, its present understanding of the prior art,
and/or its present understanding of the qualifications and skill level of one of ordinary skill in the
art.
The claim charts of Exhibits A-F provide Activision’s contentions about which claim
elements are taught by or obvious in view of the prior art references. In this regard, they identify
representative portions within the prior art references that disclose the elements of the Asserted
Claims of the Patents-in-Suit. The cited portions are merely exemplary and do not necessarily
reflect or include every portion of the prior art references that discloses or teaches particular
claim terms or claim limitations. It should be recognized that a person of ordinary skill in the art
would generally read a prior art reference as a whole and in the context of other publications,
literature, and general knowledge in the field. To understand and interpret any specific statement
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 16 of 32 -17-
or disclosure in a prior art reference, a person of ordinary skill in the art would rely upon other
information including other publications and general scientific or engineering knowledge. In the
future, if necessary, Activision might cite additional portions of the cited references to
demonstrate and/or evidence the invalidity of the Asserted Claims of the Patents-in-Suit.
Where Activision identifies a particular figure in a prior art reference, the identification
should be understood to encompass the caption and description of the figure as well as any text
relating to the figure in addition to the figure itself. Similarly, where an identified portion of text
refers to a figure or other material, the identification should be understood to include the
referenced figure or other material as well.
C. Claim Construction
The Court issued its Claim Construction ruling on June 26, 2015. Activision’s Fourth
Supplemental Invalidity Disclosure is based on the Court’s claim constructions. Activision
expressly reserves the right to argue that certain claim terms, phrases, and elements, even as
construed, are indefinite, lack written description, are not enabled, are not patentable or are
otherwise invalid under 35 U.S.C. § 101 or § 112.
D. Inter Partes Review
On May 26, 2015, Bungie, Inc., petitioned the Patent Trial and Appeal Board of the U.S.
Patent and Trademark Office (“PTAB”) for inter partes review (“IPR”) of various claims of the
‘690, ‘558, and ‘856 patents, including all claims presently asserted by Worlds in this action. On
June 1, 2015, Bungie, Inc., further petitioned the PTAB for IPR of various claims of the ‘501 and
‘998 patents, again including all claims presently asserted by Worlds in this action. Six PTAB
IPR proceedings are presently pending against the patents-in-suit, to which Worlds is a party.
Activision incorporates by reference, as if expressly set forth in these contentions, all present and
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 17 of 32 -18-
future filings in Bungie’s six IPR petitions. Activision does not adopt as its own the positions
and arguments of Bungie, Worlds, or their experts, but expressly reserves the right to rely in the
future on any argument, references, or testimony presented in these IPRs.
E. Doctrine of Equivalents
Worlds’ Sixth Supplemental Disclosure of the Claims Infringed does not allege
infringement under the doctrine of equivalents, and states that “each element of each asserted
claim is present literally in the Accused Products.”
Activision contests Worlds’ statement that it further “reserves the right to contend that
the Accused Products still infringe under the doctrine of equivalents.” Worlds’ First through
Fifth Disclosures provided insufficient contentions regarding infringement under the doctrine of
equivalents. Worlds has never provided detailed contentions that identify each specific claim
limitation allegedly infringed under the doctrine of equivalents and its alleged equivalent element
in the accused products, or the basis for Worlds’ position regarding each such limitation and its
alleged equivalent. Accordingly, Activision contends that Worlds should be precluded from
asserting infringement under the doctrine of equivalents. If, however, Worlds provides
additional information and is permitted to rely on the doctrine of equivalents, Activision reserves
the right to amend and supplement these invalidity contentions as appropriate.
F. Other Grounds For Invalidity
Pursuant to the Joint Scheduling Statement ¶ 4.B, Activision contends that certain claims
of the Patents-in-Suit are invalid under 35 U.S.C. §§ 101, 112, or the doctrine of obviousnesstype
double patenting (“ODP”) because: (1) the claims are not directed to patentable subject
matter; (2) the claims lack adequate written description; (3) the claims are not enabled; (4) the
claims are indefinite; and/or (5) the claims are not patentably distinct from claims in other
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 18 of 32 -19-
patents obtained by Worlds for the same invention. Activision’s contentions that the following
claims are invalid under 35 U.S.C. §§ 101, 112, or for ODP are made in the alternative and do
not constitute, and should not be interpreted as, admissions regarding the construction or scope
of the claims of the Patents-in-Suit, or that any of the claims of the Patents-in-Suit are not
anticipated or rendered obvious by prior art.
1. Invalidity Under 35 U.S.C. § 101
Activision contends that the Asserted Claims are invalid under 35 U.S.C. § 101 because
the claims are not directed to patentable subject matter. In particular, none of these claims is
patentable because the claims are directed to abstract ideas and well-understood, routine,
conventional activity already engaged in by those in the field.
2. Invalidity Under 35 U.S.C. § 112, ¶ 1
The following claims are invalid under § 112, first paragraph, because the specification
does not contain a written description of the invention claimed, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled
in the art to which it pertains, or with which it is most nearly connected, to make and use the
same:
(a) ‘690 patent claims 1, 6, 10, 11 and 15, ‘558 patent claims 4 and 6, ‘856 patent
claim 1, and the claims that depend from these independent claims, include the phrases
“determining, from the received positions, a set of the other users’ avatars that are to be
displayed to the first user,” “determining from the positions transmitted in step (c), by each client
process, a set of the avatars that are to be displayed,” “determine from the received positions a
set of the other users’ avatars that are to be displayed,” “determining from the positions received
in step (c), by said each client process, avatars that are to be displayed to the user associated with
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 19 of 32 -20-
said each client process,” and “determining, from the received positions, a set of the second
avatars that are to be displayed to the first user.” These limitations are not disclosed expressly or
inherently in the specification as viewed by one of ordinary skill in the art. Therefore, these
claims fail to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “determining, from the received positions, a set of the other users’
avatars that are to be displayed to the first user,” “determining from the positions transmitted in
step (c), by each client process, a set of the avatars that are to be displayed,” “determine from the
received positions a set of the other users’ avatars that are to be displayed,” “determining from
the positions received in step (c), by said each client process, avatars that are to be displayed to
the user associated with said each client process,” or “determining, from the received positions, a
set of the second avatars that are to be displayed to the first user.” Accordingly, ‘690 patent
claims 1, 6, 10, 11, and 15, ‘558 patent claims 4 and 6, ‘856 patent claim 1, and the claims that
depend from these independent claims, are also invalid under 35 U.S.C. § 112, first paragraph,
because the specification fails to provide an enabling disclosure for the above claim elements.
(b) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrases “determining, by the client device, a displayable set of
the other user avatars associated with the client device display” and “determine a set of the other
users’ avatars displayable on a screen associated with the client device.” These limitations are
not disclosed expressly or inherently in the specification as viewed by one of ordinary skill in the
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 20 of 32 -21-
art. Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “determining, by the client device, a displayable set of the other user
avatars associated with the client device display” or “determine a set of the other users’ avatars
displayable on a screen associated with the client device.” Accordingly, ‘501 patent claims 1, 12
and 14, and the claims that depend from these independent claims, are also invalid under 35
U.S.C. § 112, first paragraph, because the specification fails to provide an enabling disclosure for
the above claim elements.
(c) ‘690 patent claims 4, 8, 13 and 16 and ‘558 patent claims 5 and 7 include the
phrase “comparing the actual number to the maximum number to determine which of the . . .
avatars are to be displayed.” This limitation is not disclosed expressly or inherently in the
specification as viewed by one of ordinary skill in the art. Therefore, these claims fail to comply
with the written description requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “comparing the actual number to the maximum number to determine
which of the . . . avatars are to be displayed.” Accordingly, ‘690 patent claims 4, 8, 13 and 16
and ‘558 patent claims 5 and 7 are also invalid under 35 U.S.C. § 112, first paragraph, because
the specification fails to provide an enabling disclosure for the above claim element.
(d) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrase “fail to satisfy a participant condition imposed on avatars
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 21 of 32 -22-
displayable on a . . . display of the client device.” This limitation is not disclosed expressly or
inherently in the specification as viewed by one of ordinary skill in the art. Therefore, these
claims fail to comply with the written description requirement of 35 U.S.C. § 112, first
paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “fail to satisfy a participant condition imposed on avatars displayable on
a . . . display of the client device.” Accordingly, ‘501 patent claims 1, 12 and 14, and the claims
that depend from these independent claims, are also invalid under 35 U.S.C. § 112, first
paragraph, because the specification fails to provide an enabling disclosure for the above claim
element.
(e) ‘998 patent claims 1 and 20 include the phrase “failing to satisfy a condition
imposed on displaying remote avatars to the local user.” This limitation is not disclosed
expressly or inherently in the specification as viewed by one of ordinary skill in the art.
Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “failing to satisfy a condition imposed on displaying remote avatars to
the local user.” Accordingly, ‘998 patent claims 1 and 20 are also invalid under 35 U.S.C. § 112,
first paragraph, because the specification fails to provide an enabling disclosure for the above
claim element.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 22 of 32 -23-
(f) ‘998 patent claim 18 includes the phrase “failing to satisfy a condition.” This
limitation is not disclosed expressly or inherently in the specification as viewed by one of
ordinary skill in the art. Therefore, this claim fails to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “failing to satisfy a condition.” Accordingly, ‘998 patent claim 18 is
also invalid under 35 U.S.C. § 112, first paragraph, because the specification fails to provide an
enabling disclosure for the above claim element.
(g) ‘501 patent claims 1, 12 and 14, the claims that depend from these independent
claims, and ‘998 patent claim 3 include the phrases “customizing, using a processor of a client
device, an avatar in response to input by the first user,” “create a custom avatar in response to
input by the first user” and “a custom avatar created based on input from the local user.” These
limitations are not disclosed expressly or inherently in the specification as viewed by one of
ordinary skill in the art. Therefore, these claims fail to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “customizing, using a processor of a client device, an avatar in response
to input by the first user,” “create a custom avatar in response to input by the first user” or “a
custom avatar created based on input from the local user.” Accordingly, ‘501 patent claims 1, 12
and 14, the claims that depend from these independent claims, and ‘998 patent claim 3 are also
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 23 of 32 -24-
invalid under 35 U.S.C. § 112, first paragraph, because the specification fails to provide an
enabling disclosure for the above claim elements.
(h) ‘501 patent claims 1, 12 and 14, ‘998 patent claim 18, and the claims that depend
from these independent claims, include the phrases “a three dimensional avatar” and “three
dimensional renderings of the less than all of the remote user avatars.” These limitations are not
disclosed expressly or inherently in the specification as viewed by one of ordinary skill in the art.
Therefore, these claims fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph.
Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitations absent
undue experimentation: “a three dimensional avatar” or “three dimensional renderings of the less
than all of the remote user avatars.” Accordingly, ‘501 patent claims 1, 12 and 14, ‘998 patent
claim 18, and the claims that depend from these independent claims, are also invalid under 35
U.S.C. § 112, first paragraph, because the specification fails to provide an enabling disclosure for
the above claim elements.
(i) ‘998 patent claim 1, and the claim that depends from this independent claim,
include the phrase “switching between a rendering on the graphic display that shows at least a
portion of the virtual environment to the local user from a perspective of one of the remote user
avatars and a rendering that allows the local user to view the local user avatar in the virtual
environment.” This limitation is not disclosed expressly or inherently in the specification as
viewed by one of ordinary skill in the art. Therefore, these claims fail to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph.
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Moreover, nowhere in the specification do applicants disclose the details that would be
needed to enable one of ordinary skill in the art to implement the following limitation absent
undue experimentation: “switching between a rendering on the graphic display that shows at
least a portion of the virtual environment to the local user from a perspective of one of the
remote user avatars and a rendering that allows the local user to view the local user avatar in the
virtual environment.” Accordingly, ‘998 patent claim 1, and the claim that depends from this
independent claim, are also invalid under 35 U.S.C. § 112, first paragraph, because the
specification fails to provide an enabling disclosure for the above claim elements.
3. Invalidity Under 35 U.S.C. § 112, ¶ 2
The following claims are invalid under § 112, second paragraph, for failure to
particularly point out and distinctly claim the subject matter which the applicants regarded as
their alleged inventions:
(a) All Asserted Claims include a limitation that refers to filtering of avatar position
information by the server – for example, “receiving a position of less than all of the other users’
avatars from the server process” (’690 patent, claim 1), “transmitting, by the server process to
each client process, the positions of less than all of the avatars that are not associated with the
client process” (’558 patent, claim 6), “the first client process receives positions of fewer than all
of the second avatars” (’856 patent, claim 1), “receiving, by the client device, position
information associated with fewer than all of the other user avatars” (’501 patent, claim 1),
“receiving, at a client processor associated with the local user, positions associated with less than
all of the remote user avatars” (’998 patent, claim 1). In view of the manner in which these
claim terms have been applied in Worlds’ infringement disclosures of August 27, 2015, the
Asserted Claims, read in light of the specification and the prosecution history, fail to inform,
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 25 of 32 -26-
with reasonable certainty, those skilled in the art about the scope of the invention, and are thus in
violation of 35 U.S.C. § 112 ¶ 2.
(b) ‘690 patent claims 1, 6, 10, 11 and 15, ‘558 patent claims 4 and 6, ‘856 patent
claim 1, and the claims that depend from these independent claims, include the phrases
“determining, from the received positions, a set of the other users’ avatars that are to be
displayed to the first user,” “determining from the positions transmitted in step (c), by each client
process, a set of the avatars that are to be displayed,” “determine from the received positions a
set of the other users’ avatars that are to be displayed,” “determining from the positions received
in step (c), by said each client process, avatars that are to be displayed to the user associated with
said each client process,” and “determining, from the received positions, a set of the second
avatars that are to be displayed to the first user.” These phrases do not particularly and distinctly
claim subject matter that the patent applicants regard as their invention, and do not apprise a
person of ordinary skill in the art of its scope. Thus, all claims which include these phrases are
in violation of 35 U.S.C. § 112 ¶ 2.
(c) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrases “determining, by the client device, a displayable set of
the other user avatars associated with the client device display” and “determine a set of the other
users’ avatars displayable on a screen associated with the client device.” These phrases do not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(d) ‘690 patent claims 4, 8, 13 and 16 and ‘558 patent claims 5 and 7 include the
phrase “comparing the actual number to the maximum number to determine which of the . . .
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 26 of 32 -27-
avatars are to be displayed.” This phrase does not particularly and distinctly claim subject matter
that the patent applicants regard as their invention, and does not apprise a person of ordinary skill
in the art of its scope. Thus, all claims which include this phrase are in violation of 35 U.S.C. §
112 ¶ 2.
(e) ‘690 patent claims 2 and 12 include the phrase “displaying the set of the other
users’ avatars from based on the orientation of the first user’s avatar.” This phrase does not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and does not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(f) ‘501 patent claims 1, 12 and 14, and the claims that depend from these
independent claims, include the phrase “fail to satisfy a participant condition imposed on avatars
displayable on a . . . display of the client device.” This phrase does not particularly and distinctly
claim subject matter that the patent applicants regard as their invention, and does not apprise a
person of ordinary skill in the art of its scope. Thus, all claims which include this phrase are in
violation of 35 U.S.C. § 112 ¶ 2.
(g) ‘998 patent claims 1 and 20 include the phrase “failing to satisfy a condition
imposed on displaying remote avatars to the local user.” This phrase does not particularly and
distinctly claim subject matter that the patent applicants regard as their invention, and does not
apprise a person of ordinary skill in the art of its scope. Thus, all claims which include this
phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(h) ‘998 patent claim 18 includes the phrase “failing to satisfy a condition.” This
phrase does not particularly and distinctly claim subject matter that the patent applicants regard
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as their invention, and does not apprise a person of ordinary skill in the art of its scope. Thus, all
claims which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
(i) ‘501 patent claims 1, 12 and 14, the claims that depend from these independent
claims, and ‘998 patent claim 3 include the phrases “customizing, using a processor of a client
device, an avatar in response to input by the first user,” “create a custom avatar in response to
input by the first user” and “a custom avatar created based on input from the local user.” These
phrases do not particularly and distinctly claim subject matter that the patent applicants regard as
their invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all
claims which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(j) ‘501 patent claims 1, 12 and 14, ‘998 patent claim 18, and the claims that depend
from these independent claims, include the phrases “a three dimensional avatar” and “three
dimensional renderings of the less than all of the remote user avatars.” These phrases do not
particularly and distinctly claim subject matter that the patent applicants regard as their
invention, and do not apprise a person of ordinary skill in the art of its scope. Thus, all claims
which include these phrases are in violation of 35 U.S.C. § 112 ¶ 2.
(k) ‘501 patent claim 16 includes the phrase “the method.” This phrase has no
antecedent basis and does not particularly and distinctly claim subject matter that the patent
applicants regard as their invention, and does not apprise a person of ordinary skill in the art of
its scope. Thus, claim 16 is in violation of 35 U.S.C. § 112 ¶ 2.
(l) ‘998 patent claim 1, and the claim that depends from this independent claim,
include the phrase “switching between a rendering on the graphic display that shows at least a
portion of the virtual environment to the local user from a perspective of one of the remote user
avatars and a rendering that allows the local user to view the local user avatar in the virtual
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environment.” This phrase does not particularly and distinctly claim subject matter that the
patent applicants regard as their invention, and do not apprise a person of ordinary skill in the art
of its scope. Thus, all claims which include this phrase are in violation of 35 U.S.C. § 112 ¶ 2.
4. Obviousness-type Double Patenting
The asserted claims of the ‘558 patent are unpatentable on the ground of nonstatutory
obviousness-type double patenting over one or more claims of Worlds’ other patents, including
at least the ‘856, ‘501, and ‘998 patents.
The ‘558 patent purports to claim an invention or inventions not patentably distinct from
the claims of the ‘856, ‘501, and ‘998 patents. As a non-limiting example, all the asserted claims
of the ‘558 patent are patentably indistinct from claim 1 of the ‘856 patent. Although the
conflicting claims are not identical, they are not patentably distinct from each other because
applicant merely uses slightly different claim language to claim the same invention. Because the
references are in the same field, address the same technology, and are intended to solve the same
general problem, one of ordinary skill in the art would have found it obvious to modify the
references, rendering the ‘558 patent obvious.
III. DOCUMENT PRODUCTION
To date, Activision has produced all prior art identified pursuant to the Joint Scheduling
Statement ¶ 4.B. The production numbers for this prior art are found within the following ranges
of documents: ACTV0000001 – ACTV0002513; ACTV00033180 – ACTV00033409;
ACTV00053307 – ACTV00053322; ACTV00070055 – ACTV00070287. A production of
newly-identified prior art accompanies the filing of these contentions, at the following range:
ACTV00070288 – ACTV00070403.
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IV. ONGOING DISCOVERY AND DISCLOSURES
Discovery and Activision’s investigation, including Activision’s search for prior art, is
ongoing. Activision might further supplement, amend, or alter the positions taken and
information disclosed in this Fourth Supplemental Invalidity Disclosure including, without
limitation, the prior art and grounds of invalidity set forth herein, to take into account
information or defenses that may come to light as a result of these continuing efforts. Activision
hereby incorporates by reference the testimony of any fact witnesses that are deposed, that
provide declarations, or that otherwise testify in this lawsuit. Activision also hereby incorporates
by reference the reports and testimony of Activision’s expert witnesses regarding invalidity of
the Patents-in-Suit.
For certain items of prior art, Activision is seeking discovery from third parties, as
appropriate. Activision is also seeking discovery from Worlds including, e.g., discovery
regarding conception and reduction to practice, commercial embodiments, etc. Activision,
therefore, may supplement or amend this Fourth Supplemental Invalidity Disclosure if and when
further information becomes available.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 30 of 32 -31-
Respectfully Submitted,
Dated: August 26, 2015 By: /s/ Matthew J. Moffa
Jesse J. Jenner (pro hac vice)
Gene W. Lee (pro hac vice)
Brian P. Biddinger (pro hac vice)
Matthew J. Moffa (pro hac vice)
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: (212) 596-9000
F: (212) 596-9050
Kathryn N. Hong (pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
T: (650) 617-4000
F: (650) 617-4090
Samuel Brenner (BBO# 677812)
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: (617) 951-7000
F: (617) 951-7050
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING, INC.
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 31 of 32CERTIFICATE OF SERVICE
I hereby certify that this document and all attachments filed through the ECF
system will be sent electronically to the registered participants as identified on the Notice of
Electronic Filing (NEF) and that paper copies will be sent to those non-registered participants (if
any) on August 26, 2015.
/s/ Matthew J. Moffa
Matthew J. Moffa
Case 1:12-cv-10576-DJC Document 171 Filed 08/26/15 Page 32 of 32
1
52398769_2
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
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Civil Action No. 1:12-cv-10576-DJC
JURY TRIAL DEMANDED
ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING, INC.’S SEVENTH SUPPLEMENTAL
PRELIMINARY NON-INFRINGEMENT CONTENTIONS
Pursuant to the August 6, 2012, Joint Scheduling Statement (D.I. 27), the Court’s
August 13, 2012, September 25, 2012, and November 26, 2012 Orders (D.I. 29, D.I. 35, and D.I.
40, respectively) modifying the Joint Scheduling Statement, and Plaintiff’s July 27, 2015 Sixth
Supplemental Disclosure of the Claims Infringed (D.I. 160), Defendants Activision Blizzard,
Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively “Activision”),
provide the following Seventh Supplemental Preliminary Non-Infringement Contentions.
Activision submits that none of the asserted claims are infringed by Activision. Activision notes
that the parties are currently engaged in discovery, these contentions are preliminary in nature,
and the Court’s order concerning the Joint Scheduling Statement provides for the possibility of
further amending and supplementing these Non-infringement Contentions. Accordingly,
Activision might further supplement, amend, and/or modify these contentions as this action
proceeds.
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 1 of 112
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I. THE ASSERTED CLAIMS
Worlds, Inc. (“Worlds”) alleges that Activision’s accused products infringe the
following claims of United States Patents 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”) (collectively the “patents-in-suit”):
• ’690 patent claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, and 19;
• ’558 patent claims 4, 5, 6, 7, 8, and 9;
• ’856 patent claim 1;
• ’501 patent claims 1, 2, 3, 4, 5, 6, 7 (World of Warcraft only), 8, 10, 12, 14, 15, and
16 (World of Warcraft only); and
• ’998 patent claims 1, 18, and 20.1
Activision’s Seventh Supplemental Preliminary Non-Infringement Contentions do
not address any claims not asserted in Worlds’ Infringement Contentions. To the extent that the
Court permits Worlds to supplement, amend, and/or modify its contentions or to assert additional
claims against Activision in the future, Activision might seek to supplement, amend, and/or
modify its responses to Worlds’ contentions.
1 Worlds’ Infringement Contentions originally alleged that Activision’s accused products
also infringed ’558 patent claims 1-3 and ’998 patent claim 21. D.I. 34 at 3-4, D.I. 58 at 3-4. On
April 17, 2013, counsel for Worlds notified counsel for Activision that Worlds was no longer
asserting infringement of these claims against Activision. On May 24, 2013, Worlds dropped
these claims against Activision in its Second Supplemental Infringement Contentions. D.I. 77 at
3-4. On July 27, 2015, in its Sixth Supplemental Infringement Contentions, Worlds further
withdrew assertion of ‘690 patent claims 9, 18, and 20 and ‘998 patent claims 2, 3, 7, 8, 11–17
and 19, all of which were found by the Court to contain an indefinite limitation. (D.I. 160 at 4).
Although ‘998 patent claim 21 is still listed in Exhibits I and J provided with Worlds’ Sixth
Supplemental Disclosure of the Claims Infringed, this appears to be in error, in view of the April
17, 2013 statement above and the absence of claim 21 from Worlds’ statement of asserted
claims. Id.
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II. THE ACCUSED PRODUCTS
Worlds has alleged that Activision has infringed, either directly or indirectly, and
either literally or under the doctrine of equivalents, the patents-in-suit by Activision’s
manufacture, sale, offer for sale, and use of their Call of Duty and World of Warcraft products
(“the Accused Products”) in the United States. Activision’s Call of Duty and World of Warcraft
products include numerous titles, versions, and other variations of the games across many
different platforms.
In Worlds’ Sixth Supplemental Disclosure of the Claims Infringed, Worlds
specifically alleges infringement against, “across all platforms: World of Warcraft; World of
Warcraft: Burning Crusade (expansion set); World of Warcraft: Wrath of the Litch King (expansion
set); World of Warcraft: Cataclysm (expansion set); World of Warcraft: Mists of Pandaria (expansion
set); World of Warcraft: Warlords of Draenor (expansion set).” Worlds also alleges infringement
against “the Call of Duty franchise includ[ing] the following games and all versions thereof,
across all non-mobile platforms (including PC, Mac, PlayStation 2, PlayStation 3, PlayStation 4,
Xbox, Xbox 360, Xbox One, Wii, and Wii-U)2
: Call of Duty; Call of Duty: United Offensive
(expansion pack); Call of Duty 2; Call of Duty 2: Big Red One; Call of Duty 3; Call of Duty 4:
Modern Warfare; Call of Duty 4: Modern Warfare “Reflex Edition”; Call of Duty: World at
War; Call of Duty; Modern Warfare 2; Call of Duty: Black Ops: Call of Duty: Modern Warfare
3; Call of Duty: Ghosts; and Call of Duty: Advanced Warfare.” (Worlds’ Sixth Supplemental
Disclosure of the Claims Infringed, p. 2).
On June 21, 2013, counsel for Worlds notified counsel for Activision that Worlds
was no longer asserting infringement against Call of Duty: Finest Hour (Gamecube), Call of
Duty 2: Big Red One (Gamecube), Call of Duty 3 (Wii), and Call of Duty World at War: Final
Fronts and “any of the mobile versions (for Playstation Vita or iPhone OS) of Call of Duty.”
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Worlds’ Sixth Supplemental Disclosure of the Claims Infringed (p. 2, n.2) also states that
“Worlds does not allege that any mobile versions of Call of Duty or World of Warcraft are
infringing products” and further do not allege infringement against Call of Duty: Finest Hour
(Playstation 2, Xbox). Activision thus understands that Worlds is no longer asserting
infringement against at least the following products:
Call of Duty Title Platform
Call of Duty: Finest Hour Playstation 2
Xbox
Gamecube
Call of Duty 2: Big Red One Gamecube
Call of Duty 3 Wii
Call of Duty: Roads to Victory Playstation Portable
Call of Duty 4: Modern Warfare Nintendo DS
Mobile
Call of Duty: World at War Nintendo DS
Mobile
Call of Duty: World at War: Final Fronts Playstation 2
Call of Duty: Modern Warfare 2 Force Recon Mobile
Call of Duty: Modern Warfare: Mobilized Nintendo DS
Call of Duty: World at War Zombies I iPhone OS
Call of Duty: World at War Zombies II iPhone OS
Call of Duty: Black Ops Nintendo DS
Mobile
Call of Duty: Modern Warfare 3 Defiance Nintendo DS
Call of Duty: Black Ops Zombies iPhone OS/ Mobile
Call of Duty: Black Ops Declassified Playstation Vita
In addition, despite Activision making available for inspection source code for
Call of Duty 4: Modern Warfare “Reflex Edition” (Wii) and Call of Duty: Modern Warfare 3
(Wii), Worlds has not provided any supplemental contentions containing source code citations
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 4 of 115
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related to these products. The functionality of the accused products at issue here directly
involves source code, and Activision is entitled to know exactly which products are alleged to
infringe each asserted claim and specifically how each asserted claim limitation is allegedly met
by each accused product. Thus, to the extent Worlds alleges infringement against these products,
Worlds’ Infringement Contentions are deficient and do not provide any bases to support its
allegations. Moreover, Activision is unable to respond to Worlds’ infringement allegations
against these products. To the extent that Worlds is permitted to supplement its Infringement
Contentions to provide charts with citations to source code for these products, Activision might
supplement, amend, and/or modify these contentions.
Likewise, to the extent that Worlds generally asserts infringement against all titles
and/or versions across all platforms of the Call of Duty accused products, Worlds is required to
set forth its infringement theories regarding each title, version, and/or variation for each platform
on a product-by-product basis. Accordingly, Activision is unable to respond to Worlds’
infringement allegations against the Accused Products for which Worlds has not provided any
bases (including citations to source code and/or other material) to support an assertion of
infringement. Notwithstanding the foregoing, Activision submits that none of the asserted
claims are infringed by any title, version, or variation of the Accused Products for any platform.
Should Worlds be permitted to supplement its Infringement Contentions to provide charts with
citations to source code and/or other material for additional titles, versions, or variations of the
Accused Products, Activision might supplement, amend, and/or modify these contentions.
In addition, to the best of Activision’s current knowledge, the features and
functions of World of Warcraft that Worlds has accused of infringement operate similarly across
the accused titles and/or versions of World of Warcraft. Should Worlds seek to supplement its
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Infringement Disclosures in a manner that implicates features and functions that are not similar
for different titles, versions, or variations of World of Warcraft, Activision might supplement,
amend, and/or modify these contentions.
In addition, to the extent that Worlds seeks to assert infringement of the patentsin-suit
against any products other than Activision’s Call of Duty and World of Warcraft
products, Activision objects to the inclusion of such products in this suit as improper.
III. ACTIVISION’S RESPONSE TO WORLDS’ INFRINGEMENT CONTENTIONS
Notwithstanding the deficiencies of Worlds’ Infringement Contentions raised
herein and to the extent that Activision understands Worlds’ Infringement Contentions,
Activision provides herewith an explanation in its Seventh Supplemental Exhibits 1, 3, 5, 7, and
9 for why it believes that World of Warcraft does not infringe any of the asserted claims, and an
explanation in its Seventh Supplemental Exhibits 2, 4, 6, 8, and 10 explaining why it believes
that the Call of Duty products referenced in Worlds’ Infringement Contention charts do not
infringe any of the asserted claims. Activision states that the bases for non-infringement set forth
in these Seventh Supplemental Exhibits 1-10 apply to the products accused of infringement in
Worlds’ Sixth Supplemental Disclosure of the Claims Infringed.
In addition, Activision contends that its Call of Duty products do not infringe the
asserted claims requiring a “server,” or a “client process” insofar as the Court’s construction of
that term requires a “server,” and further that none of its products infringe the asserted claims
requiring a “client process” insofar as the Court’s construction of that term requires a “user’s
computer.”
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In addition, the following Call of Duty products do not infringe the asserted
claims because these products utilize a peer-to-peer system in which each client broadcasts
information to other clients:
Call of Duty Title Platform
Call of Duty 2: Big Red One Playstation 2
Xbox
Call of Duty 3 Playstation 2
Playstation 3
Xbox
Xbox 360
Activision further contends that any acts by or on behalf of Activision with
respect to any of the accused products prior to September 24, 2013 cannot constitute
infringement of any asserted claim of the patents-in-suit because, pursuant to the Court’s March
13, 2014 Order, the patents-in-suit were invalid prior to September 24, 2013.
A. INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
Worlds states in its contentions that “if there are any differences between the
claim elements in the aforementioned claims and the accused systems or methods, the
differences are insubstantial and infringement would exist under the doctrine of equivalents.”
(Worlds’ Sixth Supplemental Disclosure of the Claims Infringed, p. 4). Worlds does not provide
any specificity as to how or why the Accused Products would infringe the asserted claims under
the doctrine of equivalents.
Should Worlds amend its contentions to add any specific allegations of
infringement under the doctrine of equivalents, Activision might supplement, amend, and/or
modify its contentions. Notwithstanding the foregoing, Activision believes it does not infringe,
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 7 of 118
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either literally or under the doctrine of equivalents, any of the asserted claims of the patents-insuit.
B. DIRECT AND INDIRECT INFRINGEMENT
Worlds’ Infringement Contentions also lack sufficient information concerning
Worlds’ grounds for alleging direct and indirect infringement. Worlds makes only a general
allegation in its Infringement Contentions “that each element of each asserted claim is directly
infringed by Defendants” and that “f for any reason the Accused Products are not found to
directly meet each element of an asserted claim, Worlds alleges that Defendants are contributing
to the infringement of such claim or inducing its infringement by others because the accused
functionalities have no substantial non-infringing use, and because Defendants are aware that
they are inducing the direct infringement by its users and customers of the Accused Products.”
(Worlds’ Sixth Supplemental Disclosure of the Claims Infringed, p. 3). Worlds does not provide
any specificity beyond these allegations as to why or how Activision “directly” and/or
“indirectly” infringes the patents-in-suit. Moreover, Worlds does not specify on a claim-byclaim
basis which claims it asserts that Activision infringes under a theory of direct
infringement, joint infringement, induced infringement, and/or contributory infringement.
Notwithstanding the foregoing, Activision believes it does not infringe, either
directly or indirectly, any of the asserted claims of the patents-in-suit. Should Worlds amend its
contentions regarding its theories of direct and indirect infringement, Activision might
supplement, amend, and/or modify its contentions.
IV. DOCUMENT PRODUCTION
Pursuant to the Joint Scheduling Statement ¶ 4.B (D.I. 27), as of December 3,
2012, Activision has made and will continue to make available for inspection source code
relating to the Accused Products that is sufficient to show the operation of the accused product(s)
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 8 of 119
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or method(s) that Worlds identified in its preliminary infringement disclosure. The source code
is available for inspection at the following locations in accordance with the terms of the
Stipulated Protective Order (D.I. 39):
Source Code relating to World of Warcraft:
Blizzard Entertainment, Inc.
16215 Alton Parkway
Irvine, California 92618
Source Code relating to Call of Duty:
Activision Blizzard, Inc.
3100 Ocean Park Blvd.
Santa Monica, California 90405
V. ONGOING DISCOVERY AND DISCLOSURES
The parties are currently engaged in discovery and Activision’s investigation is
ongoing. Activision might seek to supplement, amend, and/or modify the positions taken and
information disclosed in these charts including, without limitation, the grounds of noninfringement
set forth herein, to take into account information or defenses that may come to light
as a result of these continuing efforts.
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 9 of 1110
52398769_2
Respectfully Submitted,
Dated: August 26, 2015 By: /s/ Matthew J. Moffa
Jesse J. Jenner (pro hac vice)
Gene W. Lee (pro hac vice)
Brian P. Biddinger (pro hac vice)
Matthew J. Moffa (pro hac vice)
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: (212) 596-9000
F: (212) 596-9050
Kathryn N. Hong (pro hac vice)
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
T: (650) 617-4000
F: (650) 617-4090
Samuel Brenner (BBO# 677812)
ROPES & GRAY LLP
Prudential Tower
800 Boylston Street
Boston, MA 02199-3600
T: (617) 951-7000
F: (617) 951-7050
ATTORNEYS FOR DEFENDANTS,
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
AND ACTIVISION PUBLISHING, INC.
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 10 of 1152398769_2
CERTIFICATE OF SERVICE
I hereby certify that this document and all attachments filed through the ECF
system will be sent electronically to the registered participants as identified on the Notice of
Electronic Filing (NEF) and that paper copies will be sent to those non-registered participants (if
any) on August 26, 2015.
/s/ Matthew J. Moffa
Matthew J. Moffa
Case 1:12-cv-10576-DJC Document 170 Filed 08/26/15 Page 11 of 11
08/26/2015 169 MOTION to Seal Exhibits 1-10 of Activisions Seventh Supplemental Preliminary Non-Infringement Contentions. by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc..(Moffa, Matthew) (Entered: 08/26/2015)
08/26/2015 170 Preliminary Invalidity and Non-Infringement Contentions by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc.. (Moffa, Matthew) (Entered: 08/26/2015)
08/26/2015 171 Preliminary Invalidity and Non-Infringement Contentions by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc.. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F)(Moffa, Matthew) (Entered: 08/26/2015)
VPOR has 5 late filings past 24 months
The OTC Bulletin Board has a more specific “three-strikes” rule, FINRA Rule 6530(e), that prohibits the OTCBB from quoting the securities of any issuer that is delinquent in its reporting obligations three times in a 24-month period.
There are no exceptions to the rule
For the purpose of determining the extent to which an issuer has filed its periodic financial reports in a timely fashion or has filed its periodic financial reports within the applicable grace period (in the case of an issuer that did not meet the initial filing deadline), the periodic financial report in question must have been received and time stamped by the Commission's EDGAR system no later than 5:30 p.m. EST on the day the report was due or the last day of the applicable grace period. For the purpose of determining an issuer's eligibility for quotation on the OTCBB, no exceptions to the 5:30 p.m. EST cut off will be made absent the existence of extraordinary circumstances in the sole discretion of SEC staff. - See more at: http://www.finra.org/industry/faq-otcbb-frequently-asked-questions#sthash.9rKKSI54.dpuf
Now, 5 times inside last two years....
extraordinary?