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Is that based on your informed depth of knowledge. Clearly you know next to nothing about this patent play.
Do some DD on the specifics of this case, the SCOTUS hearing tomorrow coupled with the shifting PTAB's and recent Fed Circuit decisions.
There was no split of WORX shares
False information posted to scare and shake loose shares
This is an undervalued stock with real revenue and assets in the MJ space.
Expect rapid appreciation once eyes are on this one.
Each time a proxy is filed, the company needs to receive approval to
Authorize a reverse at the Boards discretion as it has in all prior filings.
Given the cost of the IPRs and the cost of keeping the company compliant with the SEC these steps appear standard and necessary.
4 During the Conference Call with the Board on July 23, 2015 and while discussing the Agreement, Petitioner’s counsel represented to the Board that they had “not received a copy of this document that [Patent Owner was] referring to from the L. A. Times.” Ex. 2001 at 28:14-16. Later, in Petitioner’s Opposition to Patent Owner’s Motion for Discovery, Petitioner backtracked and admitted that it was “aware of the [A]greement.” Paper 10 at 3, n.1.
Had Activision desired to file an IPR petition against the challenged patent, it would have had until April 4, 2013, to do so. It did not. On November 13, 2014, Patent Owner’s litigation counsel notified Activision that it intended to add the Destiny products to the litigation, Ex. 2004, and a few months later, on May 26, 2015, the present Petition was filed by Bungie.
The PTAB has oral hearing on the IPR on Aug. 10 and a final ruling by Nov. 30.
Below is the press release on Worlds filing of the IPR responses.
http://www2.marketwire.com/mw/release_html_b1?release_id=1249381
UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
Filing Courtesy Notice
Please note the following filing:
Case Number:
IPR2015-01264
Filer:
Worlds Inc. of Brookline, MA
Filing Date:
3/15/2016
Document List
Paper Name
Type
Paper / Exhibit Number
Patent Owner's Response
Notice
20
Transcript of Deposition of Dr. Michael Zyda
Exhibit
2016
Declaration of Mark D. Pesce
Exhibit
2017
Declaration of Thom Kidrin
Exhibit
2018
Declaration of Ron Britvich
Exhibit
2019
U.S. Provisional Application No. 60/020,296
Exhibit
2020
Worlds Press Release
Exhibit
2021
Wall Street Journal, Apr. 3, 1995
Exhibit
2022
District Court Memorandum and Order
Exhibit
2023
PPC Broadband, Inc. v. Corning Optical Communications
Exhibit
2024
Declaration of Ken Locker
Exhibit
2025
Declaration of David Marvit
Exhibit
2027
NYPL Email to Kidrin
Exhibit
2031
Release 1.0 (Esther Dyson)
Exhibit
2032
Bloomberg Business Apr 10, 1995
Exhibit
2033
Worlds Chat FROBVPLA code module
Exhibit
2034
Worlds Chat RSRoom code
Exhibit
2035
Worlds Chat Source code CHANGELOG
Exhibit
2036
Declaration of Conor Laffan
Exhibit
2038
U.S. Patent No. 7,181,690
Exhibit
2041
U.S. Patent No. 7,493,558
Exhibit
2042
Questions regarding this receipt should be directed to the Patent Trial and Appeal Board at 571-272-7822.
This e-mail is computer-generated. Do not reply because this e-mail address is not monitored.
United States District Court
District of Massachusetts
The following transaction was entered on 2/11/2016 at 11:24 AM EST and filed on 2/11/2016
Case Name:
Worlds, Inc. v. Activision Blizzard, Inc. et al
Case Number:
1:12-cv-10576-DJC
Filer:
Document Number:
201(No document attached)
Docket Text:
Judge Denise J. Casper: ELECTRONIC ORDER entered granting [198] Motion to Stay pending IPR proceedings for 3 months. Counsel to file joint status report by 5/11/16. (Hourihan, Lisa)
Writ of Certiorari
http://patentlyo.com/media/2015/10/Cuozzo-Speed-Technologies-LLC-v-Michelle-K-Lee-Petition-for-a-Writ-of-Certiorari.pdf
Amicus brief in support of Certiorari
https://www.pbwt.com/content/uploads/2015/11/15-446-ac-New-York-Intellectual-Property-Law-Association.pdf
SCOTUS to review IPR legality
http://www.reuters.com/article/us-usa-court-patents-idUSKCN0UT2O3
The Supreme Court on Friday agreed to consider whether new procedures for challenging patents have made it too difficult for inventors to defend their claims.
At the heart of the case are regulations issued by the U.S. Patent and Trademark Office after Congress in 2011 passed legislation to overhaul the nation's patent system. The law came amid concerns there were too many weak patents in the system and it was too expensive and time-consuming to challenge them.
Now, some in the business community say the momentum has shifted too far in the other direction.
The law created several procedures that allowed individuals or companies to bring speedier, more efficient patent challenges directly at the Patent Office, instead of in federal court litigation.
Critics, including companies and industry groups that favor strong patent rights, say the procedures are problematic because the Patent Office has instituted rules for considering challenges that differ from those followed by federal judges.
The Patent Office says its rules are consistent with long-standing policy and the intent of Congress.
The case before the high court involves Cuozzo Speed Technologies, a firm that owns a patent for an invention that alerts drivers when they are speeding. GPS technology company Garmin Ltd. brought a challenge at the Patent Office, which invalidated key claims of the Cuozzo patent on the grounds that the claims weren't truly innovative in light of prior inventions.
Cuozzo's petition to the high court argues the Patent Office interprets claims in a way that makes them more vulnerable to challenges than they would be in a federal court.
The company said more than 80% of the challenges brought under one new Patent Office procedure have resulted in the cancellation of some or all claims contained in the patent under review.
A specialized federal appeals court in Washington upheld the Patent Office rules, but several judges on the court criticized the ruling.
More than a dozen companies, including Johnson & Johnson, Monsanto Co. and Pfizer Inc., and trade groups representing the pharmaceutical and biotechnology industries filed briefs urging the high court to hear Cuozzo's appeal.
The court is likely to hear oral arguments in the spring, with a decision expected by July.
Wrong, if conceptualization occurred after Nov.16, 1994 it is acceptable within the time lines of one year prior to filing of the provisional patent Nov.16 1995
Conceptualization and reduction to practice can occur up to one year prior to the provisional patent application which puts it back to Nov 1994 which is when Worlds was spun out of Knowledge Adventure as KAWorlds then dropped the KA.
As in all software development
There is an evolution in features and functionality to deal with technical challenges which then become claim elements in the patent application and ultimately become reduced to practice in the product.
The Wall Street Journal
April 3, 1995 first reported on Worlds Chat under an article entitled Talking Blowfish to Enliven the Internet by Jared Sanberg
Judge Casper more than likely would have granted a stay pending the IPR decision. As has been written on this board it is the statistical norm with IPR's. Instead of fighting the inevitable it seems Worlds went for a joint stay with a joint stipulation binding Activision to the PTAB decision. That provides Worlds, if successful in the IPR with unimpeachable validity of the patents and a higher likelihood of a settlement.
IMO
Susman is a patent litigation law firm
Davidson et al is an IPR specialist law firm. Two entirely different areas of patent law requiring different unique skill sets. I would wager that both firms are working together on Worlds behalf.
There is no correlation between the trading in Worlds shares and the hearing.
If you read Worlds recent supplemental filing on the recent 101 denial in California you would understand that the courts are differentiating 101 invalidity challenges from generic abstract ideas. If you subscribe to ATVI's characterization of worlds patents as abstract than you shouldn't be in this stock and haven't read Susman's filings.
I have stated the facts here as i have seen snd interpreted them. The notion that some sort of promote has been perpetrated for a 3 cent bump is moronic.
The PTAB denied Worlds preliminary discovery request to prove the Bungie has been working with Activision as a unnamed third party in the IPR. This is in no way a loss of the IPR all. it is not requiring Bungie to turn over emails and any other communications between them and Activision on the funding and strategy in filing the IPR in the preliminary phase of review. If a formal IPR is initiated Worlds will seek discovery of documents to prove the relationship between Activision and Bungie beyond the publicly available development agreement between them.
The PTAB is basically saying at this preliminary phase we are not going to order Bungie to turn over internal documents based on the Activision/Bungie contract until and unless they decide if they are going to institute a full inquiry
I was there and her exact quote to Gene Lee, Activision's lead counsel was " I am struggling with your term beyond abstraction, the patent is describing how to filter and focusing on the method of relative positioning"
Meaning that Activisions claim that Worlds patents are obvious and an abstract idea that was generally known and not patentable subject matter just doesn't jib with her understanding of the precise methods that they teach and were construed in her Markman order.
Check the transcript when it's released.
One of the insightful and pointed questions by Judge Casper at todays hearing was asking Activision's lawyers who were trying to paint Worlds patents as purely filtering and therefore obvious and not inventive " I'm having trouble understanding why these claims don't rise above the level of obviousness"
The hearing for the 101 validity challenge is Nov. 10th.
Activision is time bared from filing a PTAB IPR, however they used their strategic development partnership with Bungie to file an IPR in June, Worlds filed preliminary responses in Sept. Among other challenges to Bungie's standing was Worlds claim that Activision is a related party of interest in the IPR.
The PTAB determination on whether to institute a full review should occur in Dec.
The court has already ordered trial dates to be submitted which both sides have done as well as stating in the order that the case will be completed in 2016. I expect the court to issue the trial date shortly.
Susmans history speaks to my confidence in their ability. They have won patent litigation settlements from Activision already. Any jury verdict can be appealed that's the system but settlements are final.
Court order this morning
Looks like Judge Casper is getting
annoyed with Activision delaying tactics and wants the case to move to trial with a firm date
United States District Court
District of Massachusetts
Notice of Electronic Filing
The following transaction was entered on 10/5/2015 at 10:35 AM EDT and filed on 10/5/2015
Case Name: Worlds, Inc. v. Activision Blizzard, Inc. et al
Case Number: 1:12-cv-10576-DJC
Filer:
Document Number:186(No document attached)
Docket Text:
Judge Denise J. Casper: ELECTRONIC ORDER entered. In light of the schedule adopted on
9/16/15 thru initial pretrial conference, the Court is inclined to adopt a final pretrial conference
and trial date to allow for appropriate advance scheduling by the Court and counsel. Parties
shall confer and jointly propose and final pretrial conference and trial date along with an
estimated length of trial (assuming 9AM - 1PM trial days). Such proposal shall be filed by
10/13/15. The Court anticipates trial to be conducted before the end of 2016.(Hourihan, Lisa)
He is bs, s/p never was $.88 and wants Kidrin to sell his house to help him make a few cents. A freeloader bringing no value to this board.
Worlds 101 Response
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
vs.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
)
))))))
)
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
WORLDS, INC.’S OPPOSITION TO DEFENDANTS’
MOTION FOR SUMMARY JUDGMENT UNDER 35 U.S.C. § 101
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 1 of 26
i
TABLE OF CONTENTS
INTRODUCTION ...........................................................................................................................1
BACKGROUND .............................................................................................................................2
I. Worlds, Inc. ..............................................................................................................2
II. Patents-in-Suit ..........................................................................................................3
LEGAL STANDARD ......................................................................................................................4
I. 35 U.S.C. § 101 ........................................................................................................4
II. Presumption of Validity ...........................................................................................6
ARGUMENT ..................................................................................................................................6
I. Step 1: Worlds’ Patents Are Not “Directed To” a Patent-Ineligible
Abstract Idea ............................................................................................................6
A. A claim satisfies § 101 if it provides a solution rooted in
computer technology to overcome a problem arising in the
realm of computer networks. .......................................................................7
B. The asserted claims are not directed to an abstract idea. .............................8
C. Activision has not proven by clear and convincing evidence
that the asserted claims are directed to an abstract idea.............................11
II. Step 2: The Asserted Claims Include an Inventive Concept ..................................13
A. Inventive application of an abstract idea satisfies § 101. ...........................14
B. Worlds’ patents teach a specific approach to client-server
architecture that includes an inventive concept. ........................................15
C. The asserted claims do not preempt a building block of
ingenuity. ...................................................................................................19
CONCLUSION ..............................................................................................................................20
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 2 of 26
ii
TABLE OF AUTHORITIES
Cases
Alice Corp. v. CLS Bank International,
134 S. Ct. 2347 (2014). .............................................................................................. Passim
Ameritox, Ltd. v. Millennium Health,
2015 WL 728501 (W.D. Wis. Feb. 19, 2015) ....................................................... 13, 15, 18
BASCOM Global Internet Services v. AT&T Mobility,
2015 WL 2341074 (N.D. Tex., May 15, 2015) ................................................................ 12
Bilski v. Kappos,
561 U.S. 593 (2010). ........................................................................................................... 5
buySAFE v. Google,
765 F.3d 1350 (Fed. Cir. 2014)........................................................................................... 7
California Institute of Technology v. Hughes Communications Inc.,
59 F. Supp. 3d 974 (C.D. Cal. 2014) ................................................................ 5, 14, 17, 18
Card Verification Solutions v. Citigroup,
2014 WL 4922524 (N.D. Ill. Sept. 29, 2014). ............................................................ 16, 19
CLS Bank Int’l v. Alice Corp. Pty.,
717 F.3d 1269 (Fed. Cir. 2014)........................................................................................... 6
DataTern, Inc. v. Microstrategy, Inc.,
2015 WL 5190715 (D. Mass. Sept. 4, 2015) ...................................................... 6, 7, 10, 11
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014).................................................................................. Passim
Dealertrack v. Huber,
674 F.3d 1315 (Fed. Cir. 2012)........................................................................................... 6
Diamond v. Diehr,
450 U.S. 175 (1981) .................................................................................................... 17, 18
Enfish, LLC v. Microsoft,
56 F. Supp. 3d 1167 (C.D. Cal. 2014). ............................................................................... 7
Execware, LLC v. BJ’s Wholesale Club, Inc.,
2015 WL 4275314 (D. Del. July 15, 2015); ......................................................... 6, 8, 9, 11
Fuzzysharp Technologies v. Intel Corp.,
2013 WL 5955668 (N.D. Cal. Nov. 6, 2013) ............................................................. 12, 13
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 3 of 26
iii
Helios Software, LLC v. SpectorSoft Corp.,
2014 WL 4796111 (D. Del. Sept. 18, 2014). ...................................................................... 8
Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
2015 WL 1941331 (S.D.N.Y. April 28, 2015), .......................................................... 13, 14
KSR Int’l v. Teleflex,
550 U.S. 398 (2007). ......................................................................................................... 17
Mayo Collaborative Servs. v. Prometheus Labs.,
132 S. Ct. 1289 (2012) .................................................................................................... 5, 9
Market Track, LLC v. Efficient Collaborative Retail Marketing,
2015 WL 3637740 (N.D. Ill. June 11, 2015). ................................................................... 14
Patents Corp. v. Active Network,
2015 WL 3852975 (Fed. Circ. 2015) .................................................................................. 8
Prism Technologies, LLC v. T-Mobile USA,
No. 8:12-cv-00124 (D. Neb. Sept. 22, 2015) .................................................................... 19
Research Corp. Technologies v. Microsoft,
627 F.3d 859 (Fed. Cir. 2010)............................................................................................. 2
TQP Dev., LLC v. Intuit Inc.,
2014 WL 651935 (E.D. Tex. Feb. 19, 2014) .................................................................... 16
Ultramercial, Inc. v. Hulu, LLC,
722 F.3d 1335 (Fed Cir. 2013).............................................................................. 11, 12, 14
Wolf v. Capstone Photography, Inc.,
2014 WL 7639820 (C.D. Cal. Oct. 28, 2014) ..................................................................... 6
Statutes
35 U.S.C. § 101 ...................................................................................................................... Passim
35 U.S.C. § 102 ....................................................................................................................... 14, 17
35 U.S.C. § 103 ................................................................................................................. 14, 17, 19
35 U.S.C. § 282 ............................................................................................................................... 6
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 4 of 26
1
INTRODUCTION
Activision’s Motion for Summary Judgment is based on a misapprehension of what constitutes
patentable subject matter under 35 U.S.C. § 101. In DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) — a case Activision does not even address, much less distinguish
— the Federal Circuit held that a claim is patent-eligible under § 101 when “the claimed
solution is necessarily rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” That is precisely the case here.
Worlds’ patents tackle a significant problem in multiplayer software: given limited
bandwidth, how can a plurality of remote users interact seamlessly in a complex 3-D environment?
The asserted claims solve that problem by teaching a specific approach to client-server
architecture: multi-criteria filtering of avatar position and state information, both at the client
side and the server side. The Court already recognized as much in its claim construction order:
This lawsuit involves patents that are directed to a client-server network that enables
large numbers of computer users to interact in a “virtual world” displayed on
a computer screen.
D.I. 153 at 1. Accordingly, the claims make no attempt to patent an abstract principle — a mental
process, economic practice, or mathematical formula that exists independently of computers
— or implement such principles on a general purpose computer. Rather, the question posed, and
the improvement taught, exists specifically and exclusively in the realm of network computing.
That ends the § 101 inquiry: the asserted claims are directed to eligible subject matter.
Further, irrespective whether Worlds’ patents are directed to an abstract idea — they are
not — the asserted claims satisfy § 101 because they teach an inventive combination of steps that
culls avatar position and state data at multiple levels of a client-server computer architecture. Activision
has presented no evidence, clear and convincing or otherwise, calling into question the
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 5 of 26
2
fact that the claimed innovation improved upon prior approaches to networked 3-D virtual
worlds software. See Research Corp. Techs. v. Microsoft, 627 F.3d 859, 868–69 (Fed. Cir. 2010)
(“[I]nventions with specific applications or improvements to technologies … are not likely to be
so abstract that they override the statutory language ... of the Patent Act”). Because Worlds’ patents
uniquely enable core functionality of networked software, the asserted claims satisfy § 101.
The Court should deny Activision’s Motion for Summary Judgment.
BACKGROUND
I. Worlds, Inc.
Worlds, Inc. was an original innovator in the field of internet-based, multiplayer, 3-D
entertainment software. Exs. 9–10.1 In the mid-1990s, Worlds developed and released two
groundbreaking software programs — Worlds Chat and AlphaWorld — that enabled remote
users to chat, over the internet, in graphically rich 3-D virtual environments. Ex. 8 ¶¶ 9–10.
Released in 1995, Worlds Chat was acclaimed in the press as “the hottest innovation the Internet
will see this year,” and deemed noteworthy for “the potential it brings to cyberspace.” Ex. 9. The
San Francisco Examiner called Worlds Chat “one of the first examples of virtual reality on the
Internet.” Ex. 10. Perhaps as a result, Worlds drew the attention of Steven Spielberg, who
“announced that his nonprofit Starbright Foundation [was] working with Worlds, Intel, UB
Networks and Sprint to create a 3-D environment where hospitalized children can play and
socialize with each other.” Id.
In connection with developing virtual worlds software, four Worlds employees
discovered novel solutions to problems in the field of computer networks. They initially set forth
their inventions in a provisional patent application filed on November 13, 1995. Worlds’ first
1 Numbered exhibits refer to the exhibits to the attached Declaration of Ryan V. Caughey.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 6 of 26
3
patent, U.S. Patent No. 6,219,045, issued on April 17, 2001. The patents-in-suit are continuations
of the ’045 Patent. Worlds, Inc. is the original assignee of the patents-in-suit.
II. Patents-in-Suit
The patents-in-suit are U.S. Patent Nos. 7,181,690 (the “’690 Patent”); 7,493,558 (the
“’558 Patent”); 7,945,856 (the “’856 Patent”); 8,082,501 (the “’501 Patent”); and 8,145,998 (the
“’998 Patent”). They share a common specification and are all titled “System and Method for
Enabling Users to Interact in a Virtual Space.”
Worlds’ patents tackle a problem unique to networked multiuser software: how to facilitate
seamless interaction among a plurality of remote users in a 3-D world, given limitations in
network capacity. ’690 Pat. 1:38–2:32. The asserted claims solve that problem by teaching a
method for implementing a scalable client-server architecture that facilitates the efficient interaction
of remote users in a 3-D, multi-user, interactive virtual environment. Id. 1:24–42. For example,
the asserted claims disclose an invention whereby a client and server cull data associated
with users’ avatars to preserve bandwidth and enhance user experience. Id. 19:32–20:2. The disclosed
client-server system is relevant to multiplayer 3-D video games and internet chat programs,
where the positions and actions of each avatar must be communicated to other users. Id.
1:48–55. Claim 1 of the ’690 Patent and Claim 1 of the ’501 Patent are representative:
’690 Patent, Claim 1 (19:31–42) ’501 Patent, Claim 1 (19:20–38)
1. A method for enabling a first user to interact
with other users in a virtual space,
wherein the first user and the other users
each have an avatar and a client process associated
therewith, and wherein each client
process is in communication with a server
process, wherein the method comprises:
a) receiving a position of less than all of the
other users’ avatars from the server process;
and
1. A method for enabling a first user to interact
with other users in a virtual space, each
user of the first user and the other users being
associated with a three dimensional avatar
representing said each user in the virtual
space, the method comprising the steps of:
customizing, using a processor of a client device,
an avatar in response to input by the
first user;
receiving, by the client device, position in-
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 7 of 26
4
b) determining, from the received positions, a
set of the other users’ avatars that are to be
displayed to the first user,
wherein steps (a) and (b) are performed by
the client process associated with the first
user.
formation associated with fewer than all of
the other user avatars in an interaction
room of the virtual space, from a server
process, wherein the client device does not
receive position information of at least
some avatars that fail to satisfy a participant
condition imposed on avatars displayable
on a client device display of the client
device;
determining, by the client device, a displayable
set of the other user avatars associated
with the client device display; and
displaying, on the client device display, the
displayable set of the other user avatars associated
with the client device display.
In line with these representative claims, the core features of the invention are (1) a user in
a virtual world (represented by a 3-D avatar), (2) with an associated client process, which
(3) monitors and sends position information to a server. In turn, the server (4) filters the received
avatar information, and (5) sends to each client position and state information for less than all of
the other users’ avatars. Finally, the client (6) determines whether to display some or all of the
avatars for which it has received position information, and (7) displays avatars as relevant.2
LEGAL STANDARD
I. 35 U.S.C. § 101
Patent protection is available for “any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof ….” 35 U.S.C. § 101. “In
choosing such expansive terms modified by the comprehensive ‘any,’ Congress plainly contemplated
that the patent laws would be given wide scope.”3 Bilski v. Kappos, 561 U.S. 593, 601
2 The claims also cover other innovations, including: (1) avatar customization (’501 Pat., Cl. 1);
(2) application of “participant conditions,” which affect display of an avatar (’998 Pat., Cl. 1); (3) monitoring avatar
orientation (’998 Pat., Cl. 18); and (4) switching between first- and third-person views (’998 Pat., Cl. 1).
3 All emphasis in this Opposition is added.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 8 of 26
5
(2010). However, patent protection is not available for laws of nature, natural phenomena, or abstract
ideas. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). The rationale behind
this exclusion is “one of preemption” — a “concern that patent law not inhibit further discovery
by improperly tying up the future use of [ ] building blocks of human ingenuity.” Id.
The Supreme Court has cautioned courts to “tread carefully in construing [§ 101’s] exclusionary
principle lest it swallow all of patent law,” because “[a]t some level, all inventions
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”
Id.; see also Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289, 1293 (2012)
(“[T]oo broad an interpretation of this exclusionary principle could eviscerate patent law.”); Cal.
Inst. of Tech. v. Hughes Comm’cns Inc., 59 F. Supp. 3d 974 (C.D. Cal. 2014) (“CalTech”)
(“[M]ost inventions today build on what is known in the art, and an improvement to software
will almost inevitably be an algorithm or concept which, when viewed in isolation, will seem
abstract.”). As such, “an invention is not rendered ineligible for patent simply because it involves
an abstract concept.” Alice, 134 S. Ct. at 2354. Inventions that apply an abstract concept “to a
new and useful end … remain eligible for patent protection.” Id. (quotation omitted).
The Supreme Court has created a two-step “framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 132 S. Ct. at 2355. First, a court must “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.” Id. Second, if the answer
to the first question is “yes,” a court must “consider the elements of each claim both individually
and as an ordered combination to determine whether the additional elements transform
the nature of the claim into a patent-eligible application.” Id.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 9 of 26
6
II. Presumption of Validity
Patents are presumed valid. See 35 U.S.C. § 282. This presumption applies to challenges
of ineligibility under 35 U.S.C. § 101. See CLS Bank Int’l v. Alice Corp. Pty., 717 F.3d 1269,
1304–05 (Fed. Cir. 2014). Therefore, as the party challenging the eligibility of Worlds’ patents
under § 101, Activision must prove ineligibility by clear and convincing evidence. See, e.g.,
DataTern, Inc. v. Microstrategy, Inc., 2015 WL 5190715, at *4 (D. Mass. Sept. 4, 2015).
Accordingly, in assessing patentability under § 101, the court should read the patents “in
the light most favorable to [Worlds].” Execware, LLC v. BJ’s Wholesale Club, Inc., 2015 WL
4275314, at *12 (D. Del. July 15, 2015); see also, e.g., Dealertrack v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (“[F]or abstractness to invalidate a claim it must exhibit itself so manifestly
as to override the broad statutory categories of eligible subject matter and the statutory context
that directs primary attention on the patentability criteria of the rest of the Patent Act.”); Wolf v.
Capstone Photography, Inc., 2014 WL 7639820, at *5 (C.D. Cal. Oct. 28, 2014) (“[A] patent
claim can be found directed towards patent ineligible subject matter if the only plausible reading
of the patent must be that there is clear and convincing evidence of ineligibility.”).
ARGUMENT
The asserted claims satisfy both steps of the § 101 analysis. First, Worlds’ patents address
eligible subject matter because they teach a specific solution to a problem unique to 3-D multiuser
software. Second, irrespective how the Court defines the purpose of the asserted claims,
Worlds’ patents add an inventive concept to the practice of filtering.
I. Step 1: Worlds’ Patents Are Not “Directed To” a Patent-Ineligible Abstract Idea
The question in Step 1 is whether the asserted claims are “directed to” a patent-ineligible
subject. Alice Corp., 134 S. Ct. at 2355. Activision contends that the asserted claims are directed
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 10 of 26
7
to the abstract idea of “filtering.” MSJ at 1. Activision is wrong because the claims teach a novel
approach to client-server architecture that solves a problem unique to 3-D multiuser software.
A. A claim satisfies § 101 if it provides a solution rooted in computer technology to
overcome a problem arising in the realm of computer networks.
The first step of the § 101 analysis involves “determin[ing] what the claimed invention is
trying to achieve — and ask[ing] whether the purpose is abstract.” Enfish, LLC v. Microsoft, 56
F. Supp. 3d 1167, 1173 (C.D. Cal. 2014). “The ‘abstract ideas’ category embodies the longstanding
rule that ‘[a]n idea [ ] itself is not patentable.’” Alice, 134 S. Ct. at 2355 (quotation omitted).
The “abstract idea” question regularly arises in the context of software patents. Case law
on this issue falls into two categories. On the one hand, courts have declared ineligible claims
that call for nothing more than automation of longstanding practices using computer technology
— e.g., risk hedging (on a computer), intermediated settlement (on a computer), or other basic
practices of commerce that people used before the computing age. See, e.g., buySAFE v. Google,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to abstract ideas were “squarely about
creating a contractual relationship … that is beyond question of ancient lineage”).
On the other hand, claims that “effect an improvement in [some] technology or technical
field” are not impacted by the abstract-idea exclusion. Alice, 134 S. Ct. at 2359. As the Federal
Circuit recently explained in DDR, 773 F.3d at 1257, a computer-related claim satisfies § 101 if
“the claimed solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” In line with that standard, the
Federal Circuit and lower courts have upheld computer patents under § 101 that “stand apart because
they do not merely recite the performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the Internet.” Id.; see also, e.g.,
DataTern, 2015 WL 5190715, at *4 (rejecting § 101 challenge because, “when read as a whole,
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the patent [at issue did] not recite a computer as a post-solution limitation or a specific application
of a more generic abstract idea”); Execware, 2015 WL 4275314, at *11–12 (rejecting § 101
challenge because a computer patent improved upon prior computing methods); Helios Software,
LLC v. SpectorSoft Corp., 2014 WL 4796111, at *16–18 (D. Del. Sept. 18, 2014).
B. The asserted claims are not directed to an abstract idea.
Activision argues that, under Alice, the asserted claims are “directed to” the abstract idea
of “filtering.” MSJ at 1, 10. Activision is wrong because the claims teach a specific solution to a
problem unique to multiuser interaction over the internet.
In its claim construction order, the Court recognized that the asserted claims are directed
to solving a problem unique to networked multiuser software:
This lawsuit involves patents that are directed to a client-server network that enables
large numbers of computer users to interact in a “virtual world” displayed on
a computer screen.
D.I. 153 at 1; see also, e.g., id. at 8 (“[T]he specification discloses an invention to solve the problem
of ‘crowd control.’”); id. at 20–23 (construing the term “avatar” as a “three-dimensional representation
of a user,” and noting that “the specification consistently refers to a threedimensional
virtual world”). The Court’s interpretation is correct. The asserted claims are directed
to the challenge of facilitating interaction among remote users in a 3-D virtual world.
The Problem. At the outset, Worlds’ patents identify the problem to be solved. In “game
playing, [ ] the positions and actions of each user need to be communicated between all the players
to inform each client of the state changes (position, actions, etc.) which occurred at the other
clients.” ’690 Pat. 1:49–53.4 But “where many client machines or processes are communicating
4 To “ascertain[ ] the basic character of the subject matter” of a patent, a court should consider not only the
claim language but also a patent specification’s description of the invention. Execware, 2015 WL 4275314, at *12;
Patents Corp. v. Active Network, 2015 WL 3852975, at *4–6 (Fed. Circ. 2015) (using specification to identify “the
character of the claimed invention” as “the idea of retaining information in the navigation of online forms”).
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with each other in real-time through the server, several problems arise.” Id. 1:37–40. For example,
“where a client-server system is used for real-time exchange of information, such as a …
virtual reality network where users … visually and aurally interact with other users … communication
is much more difficult, especially where the information is high-bandwidth data such as
audio streams, graphic streams, and image streams.” Id. 1:42–48.
That problem — the “difficulty” of using a “client-server system” for “real-time exchange
of information … where the information is high-bandwidth data” — exists only in networked
multiuser software. That fact is critical because, in DDR, the Federal Circuit rejected a
§ 101 challenge in large part because there was no real-world analogue to the “cyberspace” problem
at issue.5 The problem in DDR was that a website may lose visitors if an internet user clicks
on a hyperlink and is transported to a third-party site. 773 F.3d at 1258. The court could not identify
a real-world equivalent: “there is … no possibility that by walking up to [a] kiosk, the customer
will be suddenly and completely transported outside the … store and relocated to a separate
physical venue associated with the third-party — the analog of what ordinarily occurs in
‘cyberspace’ after the simple click of a hyperlink.” The situation here is the same. There is no
real-world analogue of the problem Worlds’ inventors faced, i.e., the risk that due to a large
number of remote users, a system could crash or performance could become sluggish. Indeed,
there is no real-life situation where, due to the presence of too many individuals in a room, one’s
consciousness shuts down, or people begin moving more slowly, stop talking, or disappear.
Worlds’ Solution. Worlds was not the first to tackle the problem of remote user interaction.
An early approach involved “peer-to-peer” architecture, where each user communicated
5 The Federal Circuit in DDR did not specify whether it found that the asserted claims satisfied Step 1 or
Step 2 of the Mayo inquiry, or both. Lower courts are not in accord on the issue. In any event, “In DDR Holdings,
the Federal Circuit strongly implied that the claims of a patent relating to the handling of Internet hyperlinks in an
online store were not directed to an abstract idea under step one.” Execware, 2015 WL 4275314, at *10 n.14 (citing
cases).
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directly with all other users. Id. 1:56–59. But peer-to-peer communication imposed heavy processing
loads and, as such, limited “the number of clients which can be connected to the network.”
Id. 1:56–61. A superior approach used a server to “broadcast” information to all users,
but as transmissions swelled in size, a broadcast approach was neither “efficient” nor “reliable”
and, in an “open network[ ] such as the Internet … [was] not even possible.” Id. 2:4–16.
As an improvement, Worlds’ patents teach an invention where a server and a client both
perform a specific culling function — filtering avatars using various criteria — to control
crowds, minimize network loads, and thus facilitate interaction of remote users in a 3-D world.
The present invention provides a highly scalable architecture for a threedimensional,
graphical, multi-user, interactive virtual world system. In a preferred
embodiment a plurality of users interact in the three-dimensional, computergenerated
graphical space where each user executes a client process to view the
virtual world from the perspective of that user.
Id. 2:24–32. As such, the asserted claims describe a virtual world server that, compared with prior
approaches to networking, is “much more discriminating as to what data is provided to each
client[]” — sending position and state information only for certain user avatars. Id. 3:42–44.
Then, to efficiently process received information, a client determines which remote user avatars
to display (which is “needed in some cases to ensure that neither client [ ] nor user [ ] get overwhelmed
by the crowds of avatars likely to occur in a popular virtual world.”). Id. 5:65–67,
5:35–37. Iterations of this innovation are disclosed in the asserted claims, including, for example
the first claims of the ’690, ’501, ’856, and’998 Patents.
Therefore, the asserted claims are like those in DDR and its progeny— and unlike claims
involving an age-old idea executed by a general purpose computer. For example:
?? In DataTern, 2015 WL 5190715, at *8, the District of Massachusetts applied DDR and
found that a software patent was not directed to an abstract idea because, “when read as a
whole,” the claims did not “recite a computer as a post-solution limitation or a specific
application of a more generic abstract idea.” The claims covered eligible subject matter
because they proposed a solution in the realm of “object-oriented programs,” which “ex-
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ists only in the realm of computers,” and because “relational databases are utilized primarily,
if not exclusively, on computers.” Id.
?? In Execware, 2015 WL 4275314, at *11, the District of Delaware applied DDR and rejected
a defendant’s § 101 challenge because the claims’ “proffered solution” was “rooted
in computer technology in order to overcome a problem specifically rooted in the
realm of computer[s].” The claims taught a method by which a computer could “rapidly
[ ] reformat displays of text data objects in terms of parameters chosen by the user, without
the aid of an instruction manual and without extensive computer training.” Id. The
court found the specification “demonstrate[d] that the most important aspect of the invention
[was] not the alleged abstract idea of ‘displaying, classifying, and organizing unspecified
information’ generally,” but was rather “the creation of an improved user interface
for more easily interacting with database and spreadsheet programs on a computer.” Id.
Accordingly, like in DDR and DataTern, the asserted claims here “specify how interactions
with [clients and servers] are manipulated to yield a desired result — a result that overrides
the routine and conventional sequence of events ordinarily [involved in client-server architecture].”
DDR, 773 F.3d at 1258. Instead of a typical client-server architecture where all avatar position
and state information would be broadcast to all users — the pre-Worlds approach — the
asserted claims teach a method of minimizing network loads while controlling crowds and improving
user experience. That subject matter is patent-eligible under § 101.
C. Activision has not proven by clear and convincing evidence that the asserted claims
are directed to an abstract idea.
Activision argues that the asserted claims are directed to “the abstract idea of filtering position
information on a computer network,” which Activision says is ineligible subject matter
under § 101. MSJ at 1. Beyond the central flaw in Activision’s argument — its complete failure
to address DDR — Activision is wrong for additional reasons.
First, Activision misreads Worlds’ patents. The Federal Circuit “has long-recognized that
any claim can be stripped down, simplified, generalized, or paraphrased to remove all of its concrete
limitations, until at its core, something that could be characterized as an abstract idea is revealed.”
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344 (Fed Cir. 2013). Therefore, “[a]
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court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations
of the invention the patentee actually claims.” Id. Flouting this rule, Activision’s motion attempts
to strip all meaning from Worlds’ patents except for the basic concept of “filtering.” In so doing,
Activision ignores the true purpose and subject matter of the asserted claims. For example, claim
1 of the ’501 Patent and claim 1 of the ’690 Patent do not disclose filtering in the abstract, but
rather a multistep process for culling 3-D avatars in a virtual world.
Second, Activision misapplies § 101 case law. To begin, Activision contends that
BASCOM Global Internet Services v. AT&T Mobility, 2015 WL 2341074 (N.D. Tex., May 15,
2015), rejected “filtering claims” analogous to the claims here. Not so. The claims in BASCOM
taught a method of censoring internet content with the purpose of, for example, shielding
children from explicit materials. Worlds’ patents are different because, among other reasons, in
BASCOM there was a real-world analogue. AT&T offered evidence showing that “filtering
Internet content ha[d] a well-known concrete analog that goes back decades, when parents and
libraries forbade children from reading certain books.” Id. at *6. In turn, the court found that
AT&T’s identification of a “non-technological analog” was dispositive, explaining that the
“application of the idea [of censoring] to the internet” was ineligible under § 101. Id. But here,
Activision has not identified any real-world analogue to the identified problem or claimed
solution, neither of which has meaning outside of network computing. BASCOM is inapposite.
Activision’s citation to Fuzzysharp Technologies v. Intel Corp., 2013 WL 5955668, at
*13 (N.D. Cal. Nov. 6, 2013), aff’d 595 Fed. App’x 996 (Fed. Cir. 2015), is similarly unpersuasive.
The claims in Fuzzysharp taught a method of “identifying the parts of the surfaces in a 3-D
representation that are always visible or always invisible from a set of viewpoints, and then skipping
the calculations for that part in further rendering of the image.” Id. at *10. The court found
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that this subject matter was ineligible under § 101. Worlds’ patents are different because, in
Fuzzysharp, the claims “suggest[]ed purely mathematical efficiencies, and d[id] not require an
extensive computer interface involving multiple steps and limitations.” Id. at *13. The claimed
invention in Fuzzysharp merely taught line-of-sight occlusion for a given surface in a 3-D environment,
a geometric reality intrinsic to the translation of 3-D imagery into two dimensions. Id.
at *5. But here, the claimed improvement is much more than a “mathematical efficiency.”
Worlds’ innovation is a determinative multistep process that effected a fundamental improvement
to network architecture responsible for providing large-scale, avatar-based user interaction.
Finally, Activision relies on Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
2015 WL 1941331, at *11 (S.D.N.Y. April 28, 2015), which involved the “process of organizing
information through mathematical correlations.” The claims in Intellectual Ventures II did not
satisfy § 101 because they “fail[ed] to describe the claimed process at any level of specificity.”
Id. The court contrasted DDR, which “recited specific steps to accomplish the desired result of
retaining website traffic.” Id. Further, the court noted that the claims in DDR taught an innovation
that “change[d] [ ] the standard structure of the internet and [created] a new composite web
page.” Id. Worlds’ claims are similar to those in DDR: they recite several specific steps that
combine to teach a novel approach to remote user interaction.
Because Activision has not shown by clear and convincing evidence that the asserted
claims are directed to an abstract idea, the Court should reject Activision’s § 101 challenge.6
II. Step 2: The Asserted Claims Include an Inventive Concept
Because Worlds’ patents are not directed to an abstract idea, the Court need not reach
step two of the § 101 analysis. But irrespective how the Court characterizes the asserted claims,
6 Cf. Ameritox, Ltd. v. Millennium Health, LLC, 2015 WL 728501, at *23 (W.D. Wis. Feb. 19, 2015)
(“Nothing in Millennium’s summary judgment materials rebuts what was plainly identified on the face of the specification
as a problem in the field, nor directly rebuts the solution that the patent provided.”).
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the claims satisfy § 101 because they “contain[] an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357.
A. Inventive application of an abstract idea satisfies § 101.
An invention is not rendered ineligible simply because it involves an abstract idea. Applications
of abstract concepts “to a new and useful end” remain patentable. Alice, 134 S.Ct. at
2354. Claims directed to an abstract idea are patentable if they contain an “inventive concept” —
that is, “an element or combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. at 2355.
To determine whether a claim includes an “inventive concept,” courts assess the elements
of the asserted claims (1) “individually” and (2) “as an ordered combination” to “determine
whether the additional elements [beyond the abstract idea] transform the nature of the claim into
a patent-eligible application.” Id. at 2355. “The [ ] inquiry is whether a claim, as a whole, includes
meaningful limitations restricting it to an application, rather than merely an abstract idea.”
Ultramercial, Inc. v. Hulu, 722 F.3d 1335, 1344 (Fed. Cir. 2013).
As relevant here, “problems that arise uniquely in computing or in an internet context
weigh in favor of finding an ‘inventive concept.’” Mkt. Track, LLC v. Efficient Collaborative Retail
Mktg., 2015 WL 3637740, at *4–5 (N.D. Ill. June 11, 2015). Conversely, merely using a
computer to implement an abstract idea is not an inventive concept under § 101. See, e.g., Intellectual
Ventures I LLC v. Capital One Bank, 2015 WL 4068798, at *3 (Fed. Cir. July 6, 2015).
Finally, it bears highlighting that the question of eligibility under § 101 is separate from
the anticipation and obviousness tests under 35 U.S.C. §§ 102(a) and 103. The § 101 question is
not whether individual or combined steps had ever been disclosed in the prior art, but instead
whether a step or combination of steps added a meaningful limitation to the abstract idea. See,
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e.g., CalTech, 59 F. Supp. 3d at 989 (“[N]ovelty is of no relevance when determining patentability….
[N]either Mayo nor any other precedent defines conventional elements to include everything
found in prior art.”). Thus, as the party seeking summary judgment on invalidity, Activision
must show by clear and convincing evidence that the inventive concepts in Worlds’ patents
were “well-known” or “conventional.” Ameritox, Ltd. v. Millennium Health, 2015 WL
728501, at *23 (W.D. Wis. Feb. 19, 2015) (despite submitting an expert affidavit and prior art,
defendant did not prove by clear and convincing evidence that ordered combination of claim elements
was conventional).
B. Worlds’ patents teach a specific approach to client-server architecture that
includes an inventive concept.
The asserted claims individually and as an ordered combination disclose inventive concepts
beyond the idea of filtering. The following claims are representative:
’501 Patent, Claim 1 ’998 Patent, Claim 1
1. A method for enabling a first user to interact
with other users in a virtual space, each
user of the first user and the other users being
associated with a three dimensional avatar
representing said each user in the virtual
space, the method comprising the steps of:
customizing, using a processor of a client
device, an avatar in response to input by
the first user;
receiving, by the client device, position information
associated with fewer than all
of the other user avatars in an interaction
room of the virtual space, from a server
process, wherein the client device does
not receive position information of at
least some avatars that fail to satisfy a
participant condition imposed on avatars
displayable on a client device display of
the client device;
determining, by the client device, a dis-
1. A method for displaying interactions of
a local user avatar of a local user and a plurality
of remote user avatars of remote users
interacting in a virtual environment, the
method comprising:
receiving, at a client processor associated
with the local user, positions associated
with less than all of the remote user avatars
in one or more interaction rooms of
the virtual environment, wherein the client
processor does not receive position information
associated with at least some of the
remote user avatars in the one or more
rooms of the virtual environment,
each avatar of the at least some of the remote
user avatars failing to satisfy a condition
imposed on displaying remote avatars
to the local user;
generating, on a graphic display associated
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playable set of the other user avatars associated
with the client device display;
and
displaying, on the client device display,
the displayable set of the other user avatars
associated with the client device
display.
with the client processor, a rendering
showing position of at least one remote
user avatar; and
switching between a rendering on the graphic
display that shows at least a portion of
the virtual environment to the local user
from a perspective of one of the remote
user avatars and a rendering that allows
the local user to view the local user avatar
in the virtual environment.
Activision wrongly contends that the asserted claims do nothing more than teach “the
idea of filtering information” on a computer. MSJ at 1, 10. In fact, Worlds’ patents teach a method
of facilitating remote user interaction in 3-D software that is neither routine nor conventional.
That is true both when claim elements are taken individually and as an ordered combination.
First, individual elements of the asserted claims qualify as inventive concepts. Activision
admits that “Worlds’ claims are directed to the interaction of avatars with positions and orientations
in a virtual space, operating in a client-server network.” MSJ at 15. The asserted claims also
disclose avatar customization, view shifting, and interaction rooms. See, e.g.,’501 Pat., Cl. 1;
’998 Pat., Cl. 1. Activision urges the Court to ignore these features because they allegedly were
“conventional.”7 MSJ at 15. But Activision provides no clear and convincing evidence supporting
that assertion. Activision’s only evidence at all is a passing citation to two file histories,
which Activision says prove that certain claim elements were known in the art when Worlds’
patents were issued. MSJ at 16. Worlds disputes that assertion — Activision’s “evidence” does
7 Activision also argues that the asserted claims are ineligible because they allegedly fail the “machine-ortransformation”
test. MSJ at 17. That argument carries minimal weight because the machine-or-transformation test
is unhelpful when “the objective of the patent is to improve the function of computer software.” See, e.g., Execware,
2015 WL 4275314, at *13 n.19; DDR, 773 F.3d at 1258–59 (holding that software claims were patent eligible, without
applying the machine-or-transformation test, after questioning the test’s helpfulness as to evaluation of claims
involving computer-related limitations); TQP Dev., LLC v. Intuit Inc., 2014 WL 651935, at *5–7 (E.D. Tex. Feb. 19,
2014) (claim that did not appear to meet either prong of the machine-or-transformation test was nonetheless patent
eligible because it resulted in “concrete and valuable effects in the field of electronic communications”); Card Verification,
2014 WL 4922524, at *5–6 (claim was patent eligible where it resulted in “concrete effects in the field”
even if it did not involve “the physical transformation of matter”).
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not include the alleged prior art or establish anticipation or obviousness8 — but Activision’s argument
is beside the point for two reasons. First, Activision’s argument implicitly and improperly
urges the Court to conduct a truncated obviousness inquiry under § 103. But the Supreme
Court has long held that the question whether a patent “fails to satisfy the statutory conditions of
novelty under § 102 or nonobviousness under § 103” does “not affect the determination that [the
asserted] claims recited subject matter which was eligible for patent protection under § 101.” Diamond
v. Diehr, 450 U.S. 175, 191 (1981); see also id. at 190 (“The question therefore of whether
a particular invention is novel is ‘wholly apart from whether the invention falls into a category
of statutory subject matter.’”). In addition, the law is clear that a claim element “is not conventional
just because it appears in prior art.” Caltech, 59 F. Supp. 3d at 992. Rather, an element is
“conventional” only if it “is ubiquitous in the field, insignificant or obvious.” Id. Activision offers
no evidence that the elements of the asserted claims were “ubiquitous” or “conventional.”
Second, the asserted claim elements as an ordered combination disclose an inventive concept.
As the Supreme Court explained in Diamond v. Diehr and reaffirmed in Alice, improvement
of a technological process is an inventive concept that satisfies § 101:
8 Defendants urge the Court to conduct a truncated obviousness inquiry and find the patents to be ineligible for
patenting based on specific prior art references, all without actually considering (1) the scope and content of the prior
art, (2) differences between the prior art and each claim limitation, (3) the level of ordinary skill in the art, and (4)
secondary considerations of non-obviousness. KSR Int’l v. Teleflex, 550 U.S. 398, 406 (2007). That is improper. In
any event, Activision’s argument fails. Activision plucks individual PTO rejections from the file histories of the
’501 and ’998 Patents, but the Examiner later allowed Worlds’ claims, stating, for example:
Applicant has claimed uniquely distinct features in the instant invention which are not found in the prior art
either singularly or in combination. They are customizing, using a processor of a client device, an avatar in
response to input by the first user; receiving, by the client device, position information associated with fewer
than all of the other user avatars in an interaction room of the virtual space, from a server process,
wherein the client device does not receive position information of at least some avatars that fail to satisfy a
participant condition imposed on avatars displayable on a client device display of the client device; determining,
by the client device, a displayable set of the other user avatars associated with the client device
display; and displaying, on the client device display, the displayable set of the other user avatars associated
with the client device display. Those features are not found or suggested in the prior art.
Ex. 5 at 5; see also Ex. 7 at 3.
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[A] new combination of steps in a process may be patentable even though all the
constituents of the combination were well known and in common use before the
combination was made. The “novelty” of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable subject
matter.
Diehr, 450 U.S. at 188–89; see also CalTech, 59 F. Supp. 3d at 980 (“[C]ourts should remember
that a series of conventional elements may together form an unconventional, patentable combination.”).
That is the case here. Irrespective whether any individual claim element is an “inventive
concept,” the asserted claims as a whole teach a multistep process whereby a server receives position
information of avatars associated with network clients; the server filters the received positions
and then sends bespoke packets to each client; and the client, in turn, can further determine
which avatars to display. That combination was inventive and not overbroad. On this point, Activision
provides no evidence — no expert testimony, no evidence of the state of the art, and no
prior art other than a passing reference to the file histories of two of the five patents-in-suit —
that the ordered combination of elements was “conventional.” That alone is fatal to Activision’s
position. Discussion from the recent case of Ameritox v. Millennium Health is instructive:
Millennium argues that … the detection and normalization steps must be discounted
because they exist in the prior art, leaving only an abstract idea at the
comparative step. Essentially, Millennium appears to assert that any additional
steps beyond the abstract idea do not elevate the claim to “inventive concept,”
because each step was either “established” or “conventional.” Not so under Alice….
Millennium infers that because creatinine normalization was mentioned in the
George article, someone skilled in the art would know to simply combine the
normalization step with the detection and comparative steps. Millennium argues
that this finding is also supported by Dr. Wu, who opined that for § 101 purposes,
“neither the individual claim steps of the patented methods nor the series of claim
steps in the patented methods are novel.”
In reviewing the experts’ reports, however, there is nothing that supports a finding
that the combination of the steps is routine and conventional. For example,
Dr. Wu merely isolates the prior art in disparate references, but provides no meaningful
rationale for why they would be combined….
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When looking at a combination patent, what courts most want to know is: who
would have thought to combine the known elements in the first place and why.
Providing such evidence is even more important for a moving party in the summary
judgment context, where all “reasonable inferences” are made in the light
most favorable to “the nonmoving party.” When, as here, Millennium is asking
the court to infer that the combination of elements is conventional, it must supply
some evidence to convince the trier of fact to accept its version of events.
Since those facts are lacking here, Millennium's position is necessarily rejected….
[E]vidence of combination helps to guard against hindsight bias. To ignore this
concern would provide a ‘blank check’ to all those who challenge patents without
sufficient legal or evidentiary basis. Given that Alice now expressly requires
that courts look at patented elements in combination when assessing inventive
concept (as did Mayo), the concern of hindsight bias has as much relevance to a
§ 101 challenge as it does a § 103 challenge.
2015 WL 728501, at *24–25 (citations omitted); see also Prism Techs., LLC v. T-Mobile USA,
No. 8:12-cv-00124 (D. Neb. Sept. 22, 2015) (order denying summary judgment under § 101);
Card Verif. Sol’ns v. Citigroup, 2014 WL 4922524, at *5 (N.D. Ill. Sept. 29, 2014).
Here, Activision provides no rationale for why, even if any elements were disclosed in
the prior art, one skilled in the art would think to combine them. And the evidence from Worlds’
patents — which describe the problem faced and the claimed improvement — shows that the
claims here, like those in DDR, do “not broadly and generically claim ‘use of the Internet’ to perform
an abstract business practice”; instead, they “specify how interactions with the Internet are
manipulated to yield a desired result — a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink.” DDR, 773 F.3d at 1259. When
considered as an ordered combination, the asserted claims cover eligible subject matter.
C. The asserted claims do not preempt a building block of ingenuity.
The § 101 inquiry is motivated in large part by concerns of preempting basic tools of human
ingenuity. Alice, 134 S. Ct. at 2354. Preemption, however, is no concern here. The asserted
claims include significant limitations — including the notable limitation that the claims apply
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 23 of 26
20
only to the culling of “avatars,” which the Court interpreted as a “three-dimensional representation
of a user” — that eliminate any risk of the claims preempting broad other applications of the
concept of “filtering.” Moreover, Worlds’ patents claim only one specific solution to facilitating
remote user interaction. Worlds’ patents leave open other potential approaches to minimizing
network loads in the context of remote user interaction — for example, by reducing graphical
complexity, limiting the type of objects that can appear, or constraining the actions an avatar
could undertake. Worlds’ patents therefore do not attempt to claim the “building blocks of human
ingenuity,” but rather they claim “patent-eligible applications” of technology-enhancing
concepts. Id. at 2354.
Activision attempts to avoid this analysis by pointing to Worlds’ purported “concession”
that the client-server architecture disclosed in the patents is only an “example” among a “variety
of applications.” MSJ at 15. Activision draws the wrong conclusion. To be certain, the approach
disclosed in Worlds’ patents has built-in flexibility. Worlds’ innovations can be used, for example,
in multiplayer video games, internet chat rooms, or 3-D business-to-business software applications.
That is typical of patents: an internal combustion engine, for instance, could be used in a
car, airplane, or factory. But flexibility does not render an innovation abstract. See, e.g., CalTech,
59 F. Supp. 3d at 990 (“The court must be wary about overstating this [preemption] concern. By
definition, every patent preempts an area of technology. A patentee with a groundbreaking invention
is entitled to monopolize a segment of technology ….”). Worlds’ patents are directed to
a specific improvement to multiuser 3-D software and extend no further.
CONCLUSION
The Court should deny Activision’s Motion for Summary Judgment.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 24 of 26
21
Dated: September 25, 2015 Respectfully submitted,
Worlds, Inc.
By its attorneys,
By: /s/ Ryan V. Caughey________
Max L. Tribble (admitted pro hac vice)
mtribble@susmangodfrey.com
Chanler Langham (pro hac vice pending)
clangham@susmangodfrey.com
Ryan Caughey (admitted pro hac vice)
rcaughey@susmangodfrey.com
Susman Godfrey L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: (713) 651-9366
Facsimile: (713) 654-6666
Joel R. Leeman (BBO # 292070)
jleeman@sunsteinlaw.com
SUNSTEIN KANN MURPHY & TIMBERS LLP
125 Summer Street
Boston, MA 02110-1618
Telephone: (617) 443-9292
Facsimile: (617) 443-0004
Attorneys for Plaintiff Worlds, Inc.
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 25 of 26
CERTIFICATE OF SERVICE
I certify that on the above date, this document was filed through the ECF system and
thereupon sent electronically to the registered participants as identified on the Notice of Electronic
Filing (NEF).
/s/ Ryan V. Caughey
Ryan V. Caughey
Case 1:12-cv-10576-DJC Document 183 Filed 09/25/15 Page 26 of 26
A Markman ruling is not a verdict, it is a ruling on the interpretation of the patent claims language meaning. The jury will determined a verdict, until then no court will issue a cease and desist or provide any injunctive relief.
An injunction is only possible after a successful verdict in Worlds favor
In order to receive injunctive relief Worlds would have to show the court that the continued sale of Activision games is doing irreparable harm to Worlds. The court won't buy that and Worlds would have an adverse ruling, that's a no win option.
not apply.
United States District Court
District of Massachusetts
Notice of Electronic Filing
The following transaction was entered on 9/16/2015 at 12:54 PM EDT and filed on 9/16/2015
Case Name:
Worlds, Inc. v. Activision Blizzard, Inc. et al
Case Number:
1:12-cv-10576-DJC
Filer:
Document Number:
182(No document attached)
Docket Text:
ELECTRONIC NOTICE of Hearing. Daubert/Dispositive Motion Hearing set for 7/20/2016 02:00 PM in Courtroom 11 before Judge Denise J. Casper. 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. (Hourihan, Lisa)
United States District Court
District of Massachusetts
Notice of Electronic Filing
The following transaction was entered on 9/16/2015 at 12:51 PM EDT and filed on 9/16/2015
Case Name:
Worlds, Inc. v. Activision Blizzard, Inc. et al
Case Number:
1:12-cv-10576-DJC
Filer:
Document Number:
181(No document attached)
Docket Text:
Judge Denise J. Casper: ORDER entered. SCHEDULING ORDER. The Court adopts the Joint Pretrial Schedule as outlined in D. 180. Fact discovery to be completed by 2/1/16. Opening expert reports by 3/1/16. Rebuttal expert reports by 4/1/16. Expert discovery to be completed by 4/22/16. Dispositive/Daubert Motions to be filed by 5/20/16. Opposition to Dispositive/Daubert Motions to be filed by 6/20/16. Reply ISO Dispositive/Daubert Motions not to exceed 5 pages to be filed by 7/11/16. Hearing on Dispositive/Daubert Motions set for 7/20/16 at 2:00PM. Initial Pretrial Conference set for 9/29/16 at 2:00PM.(Hourihan, Lisa)
And you likely work for them
If any of you read Markman Runup's valuation analysis you know that the stock is worth between $2 & $8 not counting the $45 mil NOL value of $.16 p/sh
So how does dome minor dilution to keep the company compliant and your shares trading effect that in any significant way? It doesn't, just a lot of mindless chatter. I'd suggest you sell whatever small position you may have and get off this board, you don't have the capacity to offer anything of value.
And what is your brilliant structure to fund the company under these circumstances. Remember KIdrin has more to gain and lose than all of the posters on this board combined. I hear a lot of complaining but not one intelligent solution.
The answer is that any new suit will be stayed pending the outcome of the 101 MSJ and IPR. I'm sure Susman doesn't want to spend money and time on the technical expert analysis on each game that other companies have infringed until they have a clear path and a better chance of getting a settlement based on an Activision win.
Great Section 101 opinion that came out *last week* in the District of Massachusetts (not our judge, unfortunately). The Court relied on DDR Holdings, a Susman victory, to deny an MSJ under Section 101. Obviously the patents were different, and it's impossible to predict how Casper will come out, but it's a nice case.
Particularly on pg.7 Judge Saylor in his ruling states: " Rather, the '502 patent is directed at solving a problem that specifically arises in the realm of computing; indeed, object-oriented programs exist only in the realm of computers, and relational databases are utilized primarily, if not exclusively, on computers. In that respect, the claimed solution of the '502 patent is “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” See DDR Holdings, 773 F.3d at 1257; see also CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1302 (Fed. Cir.2013)
This has bearing on WDDD MSJ hearing in Nov.
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 1
2015 WL 5190715
Only the Westlaw citation is currently available.
United States District Court,
D. Massachusetts.
DataTern, Inc., Plaintiff,
v.
Microstrategy, Inc.; Epicor Software
Corporation; Carl Warren & Co., Inc.; Lancet
Software Development, Inc.; Teradata
Corporation; Premier, Inc.; and Airlines
Reporting Corporation, Defendants.
Civil Action Nos. 11-11970-FDS, 11-12220-
FDS | Signed September 04, 2015
Attorneys and Law Firms
Daniel J. Kelly, David Himelfarb, Erik Paul Belt, Kara
Ann Lynch, Kia L. Freeman, Lee C. Bromberg, William A.
Zucker, McCarter & English, LLP, Boston, MA, Scott J.
Nathan, Ashland, MA, for Plaintiff.
Jeremy A. Younkin, Sarah S. Burg, Foley Hoag LLP,
Brian P. Voke, Brandon L. Arber, Campbell, Campbell,
Edwards & Conroy, PC, Derek B. Domian, Richard J.
Rosensweig, Goulston & Storrs, PC, Matthew E. Leno, Sarah
Chapin Columbia, Hasan M. Rashid, McDermott, Will &
Emery LLP, Gregory A. Madera, Adam J. Kessel, Fish &
Richardson, P.C., Dominic E. Massa, Wilmer Hale LLP,
Leslie Pearlson, Wilmer Cutler Pickering Hale and Dorr LLP,
Boston, MA, Stephen R. Buckingham, Lowenstein Sandler
PC, Roseland, NJ, Justin H. Perl, Keiko L. Sugisaka, Maslon
Edelman Borman Brand LLP, Minneaplis, MN, Benjamin K.
Thompson, Fish & Richardson PC, Atlanta, GA, Sivananda
K. Reddy, Zoll Medical Corporation, Chelmsford, MA, for
Defendants.
MEMORANDUM AND ORDER ON
MOTIONS FOR SUMMARY JUDGMENT
Saylor, District Judge
*1 This is a patent dispute concerning a claimed
method for facilitating the interaction between software and
computerized databases. The claimed patent, U.S. Patent
No. 6,101,502, recites “[a] method for interfacing an object
oriented software application with a relational database.”
'502 patent claim 1. Plaintiff DataTern, Inc. asserts patent
infringement on the part of defendant MicroStrategy, Inc. and
a number of its customers. The parties have agreed that the
liability of the customer defendants turns on the liability of
MicroStrategy.
The case is currently on remand from the Federal Circuit, after
a prior entry of judgment for defendants. That judgment was
based on a stipulation by DataTern that it could not prove
infringement if the Court adopted the claim construction of
a particular term (“to create at least one interface object”)
that had been determined by the United States District
Court for the Southern District of New York in a separate
case involving the '502 patent. Because the Court adopted
that construction, it entered a judgment of non-infringement
in favor of all defendants. On December 19, 2014, the
Federal Circuit vacated the judgment, finding that the claim
construction of the New York court had been incorrect.
MicroStrategy has now filed two separate motions for
summary judgment, one based on invalidity and another
based on non-infringement. For the reasons set forth below,
both motions will be denied.
I. Background
A. The '502 Patent
The Federal Circuit has described the '502 patent as follows:
The '502 patent is directed to
interfacing an object oriented software
application to access data stored in a
relational database. '502 patent col. 1
ll. 22-24, 53-55. An object oriented
application cannot easily interface
with a relational database because of
the structural differences between the
objects in the application and the tables
in the database. Id. col. 1 ll. 25-49.
To solve this problem, the '502 patent
discloses creating “interface objects”
that act as intermediaries between
the object oriented application and
the relational database. Id. col. 2 ll.
34-38. The patent discloses selecting
an “object model,” generating a map
between the database schema and
the object model, and creating the
interface object using the map. Id. col.
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 2
2 ll. 28-34, 40-44. A “runtime engine”
accesses data in the relational database
using the interface object. Id. col. 2 ll.
34-38, Fig. 1.
DataTern, Inc. v. Epicor Software Corp., 599 Fed.Appx. 948,
950 (2014).
Claim 1 of the '502 patent is representative and reads:
A method for interfacing an object oriented software
application with a relational database, comprising the steps
of
selecting an object model;
generating a map of at least some relationships between
schema in the database and the selected object model;
employing the map to create at least one interface
object associated with an object corresponding to a class
associated with the object oriented software application;
and
utilizing a runtime engine which invokes said at least one
interface object with the object oriented application to
access data from the relational database.
*2 '502 patent claim 1.
DataTern alleges infringement of the '502 patent by
MicroStrategy's Business Intelligence Platform (“Business
Platform”). Broadly, the Business Platform “facilitates the
analysis of large volumes of data by providing the ability to
view the data from intuitive perspectives, such as in custom
summary reports.” (Def. SMF II ¶ 51). The Business Platform
utilizes something called a “Logical Data Model” to organize
data. (Id. ¶ 53). DataTern has alleged that the Logical Data
Model constitutes an infringing object model.
B. Procedural Background
On November 7, 2011, DataTern filed a complaint
against Blazent, Inc., a customer of MicroStrategy, alleging
infringement of the '502 patent. Shortly thereafter, between
November 15 and December 14, 2011, it filed similar
complaints against eight other MicroStrategy customers and
MicroStrategy itself. 1
On February 24, 2012, this Court (Stearns, J.) entered an order
consolidating the latter nine cases and naming case No. 11-
cv-12220, that against MicroStrategy, as the lead case. At
that time, the case with Blazent as the defendant was not yet
consolidated.
On May 10, 2012, MicroStrategy moved for judgment on the
pleadings on the basis of invalidity. The Court (Stearns, J.)
denied the motion without prejudice on July 31, 2012.
During the same period of time, DataTern was involved
in two consolidated declaratory-judgment actions in the
United States District Court for the Southern District of New
York, captioned as Microsoft Corporation v. Datatern, Inc.
(11-cv-02365-KBF), and SAP AG and SAP of America v.
DataTern, Inc., (11-cv-02648-KBF). On August 24, 2012,
the New York court issued an order on claim construction
in which it construed the terms “object model” and “to
create at least one interface object,” among others in the
'502 patent. It construed the term “object model” to mean
“a template with a predetermined standardized structure
both relating to an object-oriented software application and
including object classes and inheritance relationships among
classes.” Microsoft Corp. v. DataTern, Inc., Nos. 11-cv-2365,
11-cv-2648, 2012 WL 3682915, at *14 (S.D.N.Y. Aug. 24,
2012) (“Microsoft I”). It construed the term “to create at
least one interface object” to mean “to generate code for
at least one class and instantiate an object from that class,
where the object is not part of or generated by the object
oriented application and is used to access the database.” Id.
On December 26, 2012, the New York court issued a final
judgment in the consolidated cases before it.
DataTern then conceded in this Court that if the New York
court had correctly construed the term “to create at least one
interface object,” the accused MicroStrategy product could
not be held to infringe the '502 patent. Specifically, under
that construction, the accused product here would not meet
the claim limitation to “create at least one interface object”
because it does not “generate code for at least one class and
instantiate an object from that class.”
*3 On January 4, 2013, the Court granted a motion by
DataTern to consolidate the cases before it; at that point,
case number 11-cv-11970-FDS became the lead case in these
matters.
On January 24, 2013, DataTern appealed the judgment of the
New York court to the Federal Circuit.
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 3
On February 7, 2013, based on the concession by DataTern
that MicroStrategy could not be held to have infringed the
'502 patent based on the New York court's construction of
“create at least one interface object,” this Court granted
summary judgment to MicroStrategy. (Dkt. No. 108, No. 11-
cv-12220-FDS). DataTern appealed that order to the Federal
Circuit on March 5, 2013.
On May 5, 2014, the Federal Circuit issued an opinion in
which it upheld the New York court's judgment of noninfringement
on the part of the plaintiffs in that case; in so
doing, it upheld the district court's construction that “object
model” included classes. Microsoft Corp. v. DataTern, Inc.,
755 F.3d 899, 909 (Fed. Cir. 2014) (“Microsoft II”). 2
The court did not review the district court's construction
of “to create at least one interface object,” as that proved
unnecessary to render its decision.
On December 19, 2014, the Federal Circuit vacated this
Court's order of summary judgment, finding that the New
York court's construction of “to create at least one interface
object” had been incorrect. DataTern, Inc. v. Epicor Software
Corp., 599 Fed.Appx. 948, 949 (Fed. Cir. 2014). It construed
the term “to create at least one interface object” as “to
instantiate at least one interface object from a class.” Id. at
951. As a result, it remanded the case to this Court for further
proceedings.
On February 11, 2015, MicroStrategy filed two separate
motions for summary judgment—one on the basis of
invalidity and the other on the basis of non-infringement.
II. Legal Standard
The role of summary judgment is to “pierce the pleadings and
to assess the proof in order to see whether there is a genuine
need for trial.” Mesnick v. General Elec. Co., 950 F.2d
816, 822 (1st Cir. 1991) (internal quotation marks omitted).
Summary judgment is appropriate when the moving party
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). “Essentially, Rule 56[ ] mandates the
entry of summary judgment ‘against a party who fails to make
a showing sufficient to establish the existence of an element
essential to that party's case, and on which that party will
bear the burden of proof at trial.’ ” Coll v. PB Diagnostic
Sys., 50 F.3d 1115, 1121 (1st Cir. 1995) (quoting Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986)). In making
that determination, the court must view “the record in the
light most favorable to the nonmovant, drawing reasonable
inferences in his favor.” Noonan v. Staples, Inc., 556 F.3d
20, 25 (1st Cir. 2009). When “a properly supported motion
for summary judgment is made, the adverse party ‘must set
forth specific facts showing that there is a genuine issue for
trial.’ ” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250
(1986) (quoting Fed. R. Civ. P. 56(e)). The non-moving party
may not simply “rest upon mere allegation or denials of his
pleading,” but instead must “present affirmative evidence.”
Id. at 256-57.
III. Analysis
A. Invalidity
1. Statutory Framework
*4 Section 101 of the Patent Act provides that “[w]hoever
invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.” 35 U.S.C.
§ 101 (2010). 3 In choosing such broad categories of patenteligible
subject matter, Congress “plainly contemplated that
the patent laws would be given wide scope.” Diamond v.
Chakrabarty, 447 U.S. 303, 308 (1980).
Despite the relative breadth of patent-eligible subject matter,
the Supreme Court has recognized a limited exception from
patent eligibility for “laws of nature, natural phenomena,
and abstract ideas.” See, e.g., Diamond v. Diehr, 450 U.S.
175, 185 (1981). The exception is intended to prevent
“monopolization” of “the basic tools of scientific and
technological work,” because patents covering such topics
“might tend to impede innovation more than it would tend to
promote it.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012).
“The [Supreme] Court has recognized, however, that too
broad an interpretation of this exclusionary principle could
eviscerate patent law.” Id. at 1293. “[A]ll inventions at some
level embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Id. While fundamental
natural laws and abstract ideas cannot be protected by patents,
“an application of a law of nature or mathematical formula to
a known structure or process may well be deserving of patent
protection.” Diehr, 450 U.S. at 187 (emphasis in original).
The issues of novelty and obviousness do not bear on the
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 4
question of subject-matter eligibility. Diehr, 450 U.S. at
188-89.
In Mayo, the Supreme Court “set forth a framework for
distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patenteligible
applications of those concepts.” Alice Corp. Pty. Ltd.
v. CLS Bank Intern., 134 S. Ct. 2347, 2355 (2014) (citing
Mayo, 132 S. Ct. at 1296-97). The first step is to “determine
whether the claims at issue are directed to one of those patentineligible
concepts.” Id. (citing Mayo, 132 S. Ct. at 1296-97).
If it is, the court must then “consider the elements of each
claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1297). This second step of the
analysis involves a “search for an ‘inventive concept’—i.e.,
an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’ ” Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
Although the Court has declined to “delimit the precise
contours of the ‘abstract ideas' category,” it has established
certain principles to guide the analysis of lower courts. See
Alice, 134 S. Ct. at 2356-57. For example, a claim is not
patentable if it “wholly pre-empt[s]” the use of or “effectively
grants a monopoly over” an abstract idea. Gottschalk v.
Benson, 409 U.S. 63, 72 (1972); Bilski v. Kappos, 561 U.S.
593, 612 (2010). Instead, a patent-eligible claim must include
elements that add “significantly more” to the basic principle.
Mayo, 132 S. Ct. at 1294. “[M]ethods which can be performed
mentally, or which are the equivalent of human mental work,
are unpatentable abstract ideas—‘the basic tools of scientific
and technological work’ that are open to all.” CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed.
Cir. 2011) (quoting Gottschalk, 409 U.S. at 67). That may be
true “even when a practical application s claimed.” In re
Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009).
*5 As for the second part of the Mayo framework, “[s]imply
appending conventional steps, specified at a high level of
generality, [is] not enough to supply an inventive concept.”
Alice, 134 S. Ct. at 2357 (internal quotation marks omitted)
(emphasis in original). Similarly, “[t]he introduction of a
computer into the claims does not alter the analysis at Mayo
step two.” Id.; see DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[R]ecitation of
generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). “The relevant inquiry is
whether a claim, as a whole, includes meaningful limitations
restricting it to an application, rather than merely an abstract
idea.” Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1344
(Fed. Cir. 2013) (Ultramercial II).
Finally, in conducting the § 101 analysis, courts must take
care not to interpret the statute “in ways that make patent
eligibility ‘depend simply on the draftsman's art’ without
reference to the ‘principles underlying the prohibition against
patents for natural laws.’ ” Mayo Collaborative Servs., 132
S. Ct. at 1294 (quoting Parker v. Flook, 437 U.S. 584, 593
(1978)). Thus, courts will not allow parties to circumvent
the prohibition against patenting abstract ideas by limiting
the use of their claim to a particular field, or by reciting
insignificant post-solution limitations. See Bilski, 561 U.S. at
610-11; Diehr, 450 U.S. at 191-92.
2. Recent Precedent
Because the Supreme Court has chosen not to “delimit the
precise contours of the ‘abstract ideas' category,” Alice,
134 S. Ct. at 2357, “it is not always easy to determine
the boundary between abstraction and patent-eligible subject
matter.” Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1347 (Fed. Cir. 2015). For that reason, it will be
useful to examine some recent (post-Alice) Federal Circuit
decisions to clarify the contours of the doctrine.
In Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 712 (Fed.
Cir. 2014) (Ultramercial III), the Federal Circuit addressed
a patent directed to “a method for distributing copyrighted
media products over the Internet where the consumer receives
a copyrighted media product at no cost in exchange for
viewing an advertisement.” 4 The court held that the claims
of the patent were not directed to patent-eligible subjectmatter,
because they merely recited the abstract idea “that
one can use [an] advertisement as an exchange or currency”
without adding any “inventive concept” to that abstract idea.
Id. at 714-16. The fact that the claims invoked the Internet
was “not sufficient to save [the] otherwise abstract claims
from ineligibility.” Id. at 716. The court held that reciting
the Internet was merely an “ ‘attempt [ ] to limit the use’ of
the abstract idea ‘to a particular technological environment,’
which is insufficient to save a claim.” Id. (quoting Alice, 134
S. Ct. at 2358).
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 5
Similarly, in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014), the court invalidated a patent
directed to “methods and machine-readable media encoded
to perform steps for guaranteeing a party's performance of
its online transaction.” Noting that the claims were “squarely
about creating a contractual relationship—a ‘transaction
performance guaranty’—that is beyond question of ancient
lineage,” the court held that they “d[id] not push or even test
the boundaries of the Supreme Court precedents under section
101.” Id. at 1354-55. It also reaffirmed the principle from
Alice that, without more, “invocation of computers adds no
inventive concept.” Id. at 1355.
*6 By contrast, in DDR Holdings, 773 F.3d at 1248,
1255, the Federal Circuit upheld the eligibility of a patent
that was “directed to systems and methods of generating a
composite web page that combines certain visual elements
of a ‘host’ website with content of a third-party merchant.”
The patent described a system for generating a web page that
could, for example, “combine the logo, background color,
and fonts of the host website with product information from
the merchant”; the purpose of the invention was to allow
a website to “display a third-party merchant's products, but
retain its visitor traffic by displaying the product information
from within a generated web page that ‘gives the viewer of
the page the impression that she is viewing pages served by
the host’ website.” Id. at 1248-49 (quoting U.S. Patent No.
6,629,135 at 2:56-63, 3:20-22).
In evaluating the patent-eligibility question, the DDR
Holdings court initially noted that “identifying the precise
nature of the abstract idea [wa]s not as straightforward as
in Alice or some of [the] other recent abstract idea cases.”
Id. at 1257 (listing the various options proposed by the
defendant, “including ‘making two web pages look the same,’
‘syndicated commerce on the computer using the Internet,’
and ‘making two e-commerce web pages look alike by using
licensed trademarks, logos, color schemes and layouts.’ ”).
It went on to distinguish the claims then under suit from
those in other recent cases—including Ultramercial and
buySAFE—by stating that they “st[oo]d apart because they
d[id] not merely recite the performance of some business
practice known from the pre-Internet world along with the
requirement to perform it on the Internet.” Id. Instead, the
court held that “the claimed solution [wa]s necessarily rooted
in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id.
On that basis, the court concluded “that the asserted claims of
the [patent in suit] clear[ed] the § 101 hurdle.” Id. at 1255.
In stating its holding, the court was careful to clarify that “not
all claims purporting to address Internet-centric challenges
are eligible for patent.” Id. at 1258. The claims then in suit
were eligible specifically because they “recite[d] an invention
that is not merely the routine or conventional use of the
Internet.” Id. at 1259.
More recently, in Content Extraction and Transmission LLC
v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1345, 1351
(Fed. Cir. 2014), the court held invalid claims that “recite[d]
a method of 1) extracting data from hard copy documents
using an automated digitizing unit such as a scanner, 2)
recognizing specific information from the extracted data, and
3) storing that information in a memory.” 5 The court found
that the patents were drawn to the “undisputedly well-known”
concept of “data collection, recognition, and storage,” and
that “humans ha[d] always performed th[o]se functions.” Id.
at 1347. It further held that the recitation of a scanner and
computer did not supply a sufficient limitation to “transform
the claims into a patent-eligible application.” Id. at 1347-48.
Finally, in Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369-71 (2015), the Federal Circuit
considered a patent that claimed “[a] system for providing
web pages accessed from a web site in a manner which
presents the web pages tailored to an individual user.”
U.S. Patent No. 7,603,382 claim 1. The court held that
“customizing information based on (1) information known
about the user and (2) navigation data” was an abstract idea,
in part because other media outlets—such as newspapers and
television broadcasts—had utilized variants of that technique
“for decades.” Intellectual Ventures, 792 F.3d at 1369-70. 6
The court went on to find that the patent claims contained no
inventive concept, because they
*7 consist[ed] of nothing more
tha[n] the entry of data into a
computer database, the breakdown
and organization of that entered
data according to some criteria, ...
and the transmission of information
derived from that entered data to a
computer user, all through the use of
conventional computer components,
such as a database and processors,
operating in a conventional manner.
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 6
Id. at 1371 (quoting Intellectual Ventures I LLC v. Capital
One Financial Corp., No. 13-cv-00740, 2014 WL 1513273,
at *3 (E.D. Va. 2014)).
3. Burden of Proof
Before proceeding to evaluate the patent-eligibility of the
'502 patent, a threshold question must be addressed. DataTern
contends that the '502 patent is entitled to a presumption
of validity, and that MicroStrategy therefore has the burden
to prove its invalidity by clear and convincing evidence.
For that proposition, it cites to Microsoft Corp. v. i4i Ltd.
Partnership, 131 S. Ct. 2238, 2244-53 (2011). In i4i, 131
S. Ct. at 2243-44, the petitioner had argued at trial that the
patent at issue was invalid for lack of novelty (specifically,
for having previously been on sale). To the Supreme Court,
the petitioner maintained that “a defendant in an infringement
action need only persuade the jury of an invalidity defense
by a preponderance of the evidence.” Id. at 2244. The Court
unanimously rejected that argument and held that because
patents are entitled to a presumption of validity pursuant to
35 U.S.C. § 282, invalidity generally must be proved by clear
and convincing evidence. Id. at 2244, 2253.
Since i4i, however, the continued vitality of the clear-andconvincing
standard in the context of a Section 101 challenge
has come into doubt. In a concurring opinion in Ultramercial
III, 772 F.3d at 720-21, Judge Mayer of the Federal Circuit
forcefully argued both that the presumption of validity was
“unwarranted” in the context of an eligibility challenge, and
that the Supreme Court had impliedly indicated as much. He
first opined that “ecause the PTO ha[d] for many years
applied an insufficiently rigorous subject matter eligibility
standard, no presumption of eligibility should attach when
assessing whether claims meet the demands of section 101.”
Id. at 720. He then noted that in the four recent Supreme
Court cases addressing the issue of subject-matter eligibility
(Bilski, Mayo, Alice, and Ass'n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)), the Court
“never mentioned—much less applied—any presumption
of eligibility.” Id. at 721. He concluded: “The reasonable
inference, therefore, is that while a presumption of validity
attaches in many contexts, no equivalent presumption of
eligibility applies in the section 101 calculus.” Id. at 721
(citations omitted).
It is, of course, not the role of this Court to determine whether
a presumption of validity should apply as a matter of policy.
Instead, the Court must determine only whether it does apply
under existing law. And to answer that question, the Court
cannot ignore the holding of i4i. There, the Supreme Court
directly and unanimously stated: “We consider whether [35
U.S.C.] § 282 requires an invalidity defense to be proved
by clear and convincing evidence. We hold that it does.”
i4i, 131 S. Ct. at 2242. Judge Mayer may well be correct
that an exception should apply in the area of subject-matter
eligibility, but the Supreme Court has not so directed. Nor
can such an exception be conclusively read into the Supreme
Court's silence in its four recent opinions under section 101.
*8 Accordingly, this Court will apply the presumption of
validity and the clear-and-convincing standard to the '502
patent.
4. The '502 Patent
In applying the test set forth in Mayo, 132 S.Ct. at 1296-97,
(and articulated by Alice, 134 S. Ct. at 2355), the first task is to
determine whether the claims of the '502 patent are “ ‘directed
to’ a patent-ineligible abstract idea.” DDR Holdings, 773 F.3d
at 1256-57. “To do so, the court must identify the purpose
of the claim—in other words, determine what the claimed
invention is trying to achieve—and ask whether the purpose
is abstract.” Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d
1167, 1173 (C.D. Ca. 2014).
MicroStrategy contends that the purpose of the patent is
found in the first two steps recited in claim 1 of the
'502 patent—“selecting an object model” and “generating
a map”—and that those steps are activities that can be
performed by the human mind. It further contends that the
latter two steps of claim 1—“employing the map to create at
least one interface object” and “utilizing a runtime engine”—
merely recite “generic computer components configured to
implement the [ ] idea.” See Alice, 134 S. Ct. at 2360. It
concludes that the purpose and limitations of the '502 patent
are therefore analogous to those in cases like buySAFE,
765 F.3d at 1355 (“creating a contractual relationship”
online) and Content Extraction, 776 F.3d at 1347 (“data
collection, recognition, and storage” performed by a scanner
and computer).
To be sure, “a method that can be performed by human
thought alone is merely an abstract idea.” CyberSource,
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 7
654 F.3d at 1373. If MicroStrategy is correct that the '502
patent merely claims a variant of the conventional activity
of mapping before reciting generic computer components
as post-solution limitations, then it would be properly
invalidated under Section 101.
However, when read as a whole, the patent here does not
recite a computer as a post-solution limitation or a specific
application of a more generic abstract idea. See Alice, 134
S. Ct. at 2357 (“[T]ransformation into a patent-eligible
application requires ‘more than simply stat[ing] the [abstract
idea] while adding the words ‘apply it.’ ” (quoting Mayo,
132 S. Ct. at 1294)). Rather, the '502 patent is directed at
solving a problem that specifically arises in the realm of
computing; indeed, object-oriented programs exist only in
the realm of computers, and relational databases are utilized
primarily, if not exclusively, on computers. In that respect,
the claimed solution of the '502 patent is “necessarily rooted
in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” See
DDR Holdings, 773 F.3d at 1257; see also CLS Bank Intern.
v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1302 (Fed. Cir.
2013) (“The key to this inquiry is whether the claims tie the
otherwise abstract idea to a specific way of doing something
with a computer, or a specific computer for doing something;
if so, they likely will be patent eligible, unlike claims directed
to nothing more than the idea of doing that thing on a
computer.”) (emphasis in original), aff'd by Alice, 134 S. Ct.
at 2360.
*9 Moreover, here, as in DDR Holdings, 773 F.3d at
1257, “identifying the precise nature of the abstract idea is
not as straightforward as in Alice or some of [the] other
recent abstract idea cases.” MicroStrategy has described the
purpose of the '502 patent as “mapping between an objectoriented
program and a relational database,” (Def's Reply
at 1-2), and “bridging the object-relational mismatch” (at
oral argument). Those descriptions do not appear to “cover
a ‘fundamental ... practice long prevalent in our system ....’,
Intellectual Ventures, 792 F.3d at 1369 (quoting Alice, 134
S. Ct. at 2356), in contrast to the abstract ideas present
in Ultramercial, 772 F.3d at 716 (“using advertising as
a currency”), buySAFE, 765 F.3d at 1355 (“creating ... a
‘transaction performance guaranty’ ”), Content Extraction,
776 F.3d at 1347 (“data collection, recognition, and storage”),
and Intellectual Ventures, 792 F.3d at 1369-70 (tailoring
content based on information known about the consumer).
For those reasons, to the extent that the '502 patent could be
described as encompassing the abstract concept of “mapping
out relationships between two databases,” the claims of the
patent would appear to be sufficiently limited in scope as
to supply an “inventive concept.” See Ultramercial II, 722
F.3d at 1344 (“The relevant inquiry is whether a claim, as
a whole, includes meaningful limitations restricting it to an
application, rather than merely an abstract idea.”).
Therefore, MicroStrategy has not demonstrated by clear and
convincing evidence that the subject matter of the '502 patent
is ineligible for patent protection under § 101. Accordingly,
the motion for summary judgment on the basis of invalidity
will be denied.
B. Infringement
MicroStrategy's motion for summary judgment on the basis
of non-infringement is based on a straightforward set of
premises, all but one of which are uncontested. They are: (1)
the claims of the '502 patent recite an “object model,” see
'502 patent, clams 1, 10; (2) the Federal Circuit has previously
construed the term “object model” in the '502 patent as
requiring classes, see Microsoft II, 755 F.3d at 909; (3) the
MicroStrategy Business Platform does not utilize an object
model that includes classes. As to the third premise (which
is the sole point of dispute), MicroStrategy contends that the
data model utilized by the Business Platform is not an object
model, both because it “is simply a user's understanding of
how various components of that user's business data relate
to one another” (and is thus not embodied in software) and
because it does not contain programmatic “classes.”
In opposing summary judgment, DataTern has provided
the expert declaration of Dr. Geoff A. Cohen. According
to his declaration, Dr. Cohen has a Ph.D. in computer
science from Duke University, where he studied, among
other things, “methods to bridge object-oriented applications
with underlying system services.” (Cohen Dec. I, ¶ 3). He
currently works as a computer scientist at Elysium Digital
LLP, and he is a member of the Association for Computing
Machinery. (Id. ¶¶ 2, 6). He also holds five patents for
software inventions, “including on methods for constructing
object-oriented applications.” (Id., ¶ 7).
In his declaration, Dr. Cohen cites to MicroStrategy literature
entitled “Architecture for Enterprise Business Intelligence:
An Overview of the MicroStrategy Platform Architecture for
Big Data, Cloud BI, and Mobile Applications” (“Overview”).
(Cohen Dec. II, ¶ 14 (citing Overview at 17)). That document
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 8
states, at page 17: “The MicroStrategy platform is built on
one, unified, organically-developed architecture. To achieve
the eight design tenets for Enterprise BI, the underlying
architectural design establishes: 1. A single, unified object
model to define and construct objects that represent any
business.” (Overview at 17) (emphasis added). On the same
page, it further states: “The MicroStrategy object model is the
genius of the MicroStrategy platform.” (Id.).
*10 Dr. Cohen goes on to further analyze the purported
“object model” (also referred to as a “Logical Data Model”
or just a “data model”) and concludes that it is physically
manifested in the software and that it contains classes. In
support of the first conclusion, Dr. Cohen again cites to
the Overview. The Overview states: “The MicroStrategy
metadata is the manifestation of the object model. The
metadata contains the building blocks or objects necessary to
represent an enterprise's business. The metadata stores these
objects in a database for efficient re-use, manageability, and
performance.” (Id.) (emphasis added).
Dr. Cohen further cites to a publicly available video
put out by MicroStrategy entitled “MicroStrategy on
AWS: Architect Demo.” See MicroStrategy on AWS:
Architect Demo, YOUTUBE, https://www.youtube.com/
watch?v=gbj7R1j-sv4&feature=youtu.be (last visited Aug.
28, 2015). The video appears to demonstrate the use
of MicroStrategy Architect, a software component of the
Business Platform. In the video, the presenter shows a data
model on the screen; at one point, he states: “The next step
for us to do is to actually use this set of objects to create
reports ..., so let's make sure we save and close ... and
Architect will actually ask us to update the schema, just to
make sure that everything we did is actually saved within that
particular project and all the relationships that we've created
are now known by MicroStrategy.” See Architect Demo at
15:20-16:20. Referring to that excerpt from the video, Dr.
Cohen states: “I understand ‘known by MicroStrategy’ to
mean that the data model has been incorporated into the
software. This lends further support to my opinion that
a representation of the Logical Data Model exists in the
metadata.” (Cohen Dec. II ¶ 21).
As to his second conclusion (that the MicroStrategy object
model contains classes), Dr. Cohen begins by defining “class”
as “the definition of a particular kind of object” or “the
blueprint or template for an object.” (Id. ¶¶ 7, 28). As an
example, he states that “individual customers [c]ould be
represented by different objects, each an instance of the class
Customer.” (Id. ¶ 28). He then cites to a document in the
record entitled “MicroStrategy Project Design Guide” for
the proposition that each component of the Logical Data
Model, “such as a ‘fact’ or ‘attribute’[,] represents a template
or blueprint” for each object, such as “[t]he actual records
for individual customers.” (Id. ¶ 29 (citing MicroStrategy
Project Design Guide, Dkt. No. 80, Ex. C at 33-34 (“For
example, you create an attribute called Customer to represent
customers in your system, and it is part of the Customer
hierarchy.”))). He further notes that “MicroStrategy explicitly
refers to these components as ‘object definitions.’ ” (Id. ¶
30 (citing Overview at 58 (“If the metadata information is
not cached, a connection is made to the metadata repository
to retrieve the required object definitions.”))). Based on the
definition of a class as “the definition of a particular kind of
object,” Dr. Cohen concludes that the MicroStrategy object
model contains classes.
In response, MicroStrategy contends that Dr. Cohen and
DataTern have used an inaccurate definition for the term
“class.” It notes that in the New York litigation—which
involved the same patent—DataTern stipulated to a definition
of “class” as “a definition that specifies attributes and
behavior of objects, and from which objects can be
instantiated.” Microsoft I, 2012 WL 3682915, at *4. The
Federal Circuit pointed to the same stipulation in its opinion
affirming the District Court's opinion of noninfringement.
See Microsoft II, 755 F.3d at 909 (“DataTern agreed to,
and is bound by virtue of its stipulation to, [the particular]
construction of class[ ].”). MicroStrategy contends that the
stipulated definition is correct and that DataTern should
be bound by its earlier stipulation. It further contends
that because DataTern has put forth no evidence that the
“object definitions” in MicroStrategy's Business Platform
can instantiate objects, it cannot meet its burden to prove
infringement.
*11 The first issue is whether the previously stipulated
definition of “class” is accurate, and therefore should be
accepted by this Court. MicroStrategy cites the declarations
of experts for both the plaintiffs and DataTern in the New
York litigation as evidence. See Microsoft I, 2012 WL
3682915, at *4 (“Hosking describes classes ‘as a template
or cookie cutter from which individual objects are stamped
out.” (quoting ¶ 25 of the declaration of Dr. Antony Hosking,
expert for the plaintiffs in the New York litigation)); Gupta
Declaration ¶ 12, Dkt. No. 85, Ex. A (“I understand the
parties have agreed to construe the claim phrase “a class”
in the '502 patent ... to mean: ‘a definition that specifies
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 9
attributes and behavior of objects, and from which objects can
be instantiated.’ This construction is consistent with how a
person of ordinary skill would define the word [class] as used
in the context of object-oriented programming.”). 7
Based on that evidence alone, however, the Court is not
prepared to accept MicroStrategy's proposed definition of
the term “class.” The parties have not undergone claim
construction in this proceeding and there has been only
minimal briefing on the proper construction of the term
“class.” Although the current record evidence may well
support the construction proposed by MicroStrategy, it would
be more prudent to defer constructing the term at this stage
and under these circumstances.
The second issue is whether DataTern should be held to its
earlier stipulation, which it submitted to the court in New
York (and which turned out to be dispositive). As a general
matter, the doctrine of judicial estoppel precludes a party
from “taking a litigation position that is inconsistent with
a litigation position successfully asserted by him ... in an
earlier court proceeding.” Perry v. Blum, 629 F.3d 1, 8 (1st
Cir. 2010); see Patriot Cinemas, Inc. v. General Cinemas
Corp., 834 F.2d 208 (1st Cir. 1987). 8 Although the contours
of the doctrine are “hazy,” courts “generally require the
presence of three things before introducing the doctrine into a
particular case”: (1) “a party's earlier and later positions must
be clearly inconsistent,” (2) “the party must have succeeded in
persuading a court to accept the earlier position,” and (3) “the
party seeking to assert the inconsistent position must stand to
derive an unfair advantage if the new position is accepted by
the court.” Perry, 629 F.3d at 8.
Here, DataTern's positions as to the meaning of “class” in
the two proceedings are clearly inconsistent. 9 Furthermore,
the courts in the earlier proceeding accepted and relied upon
the stipulation. The question, then, appears to be whether
DataTern would derive an unfair advantage if its new position
is accepted by the Court.
*12 Although the inconsistency is obviously troublesome,
rather than address the issue at this stage, the Court will
instead defer its consideration. MicroStrategy appears to have
raised the issue of the binding stipulation for the first time in
its reply memorandum, and did little, if anything, to develop
the estoppel argument. Under the circumstances, the Court
will not grant summary judgment on the basis of judicial
estoppel without, at a minimum, additional briefing from
the parties. The Court will therefore deny the motion for
summary judgment on the issues of (1) whether the term
“class” should be construed as “a definition that specifies
attributes and behavior of objects, and from which objects
can be instantiated” and (2) whether the doctrine of judicial
estoppel, or any other equitable doctrine, precludes DataTern
from asserting an inconsistent position in this litigation. That
denial is without prejudice to the ability of defendants to raise
either or both issues in the future and on an appropriate record.
For those reasons, the motion for summary judgment on the
basis of non-infringement will be denied.
IV. Conclusion
For the reasons set forth above, the motions for summary
judgment by defendant MicroStrategy, Inc. are DENIED.
So Ordered.
All Citations
Slip Copy, 2015 WL 5190715
Footnotes
1 Between November 7 and November 15, 2011, DataTern filed seventeen lawsuits in this Court alleging infringement of
the '502 patent. (SMF II ¶ 1). The lawsuit against Blazent was the first filed.
2 The court initially issued its opinion on April 4, 2014, but issued a corrected version (vacating the original opinion) on May
5, 2014. The corrected version did not alter the court's analysis with respect to the term “object model.”
3 As set forth in § 100(b), the term “process” means “process, art, or method, and includes a new use of a known process,
machine, manufacture, composition of matter, or material.”
4 The Ultramercial case reached the Federal Circuit on three separate occasions: once pre-Mayo, once post-Mayo but
pre-Alice, and once post-Alice. Ultramercial, III, 772 F.3d at 711.
5 The method “c[ould] be performed by software on an automated teller machine (ATM) that recognizes information written
on a scanned check, such as the check's amount, and populates certain data fields with that information in a computer's
memory.” Content Extraction, 776 F.3d at 1345.
DataTern, Inc. v. Microstrategy, Inc., Slip Copy (2015)
© 2015 Thomson Reuters. No claim to original U.S. Government Works. 10
6 The court specifically referred to two examples: a newspaper's “advertis[ing] based on the customer's location” and the
practice of “tailor[ing television] advertisements based on the time of day during which the advertisement w[ould be]
viewed.” Intellectual Ventures, 792 F.3d at 1369-70.
7 The declaration of Gupta contains what appears to be a typographical error in which Gupta mistakenly substituted the
word “object” for the word “class.” The context makes the meaning clear.
8 It appears that the doctrine of issue preclusion does not apply; that doctrine applies only “[w]hen an issue of fact or law
is actually litigated and determined by a valid and final judgment.” B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S.
Ct. 1293, 1303 (2015) (citing RESTATEMENT (SECOND) OF JUDGMENTS § 27, p. 250 (1980). It is well-settled that
an issue is not “actually litigated if it is the subject of a stipulation between the parties.” Id. § 27, cmt. e. For that reason,
DataTern is not bound by the doctrine of issue preclusion to accept the definition of “class” to which it stipulated in the
New York litigation.
9 There is no evidence in the record that DataTern limited its stipulation in any way. Cf. Pfizer, Inc., v. Teva Pharmaceuticals,
USA, Inc., 429 F.3d 1364, 1376 (Fed. Cir. 2005) (holding that doctrine of issue preclusion did not apply where two of
the parties had stipulated in separate litigation as to the construction of a particular term where, among other things, the
stipulation “specifically stated that it was for the purposes of the litigation only.”).
End of Document © 2015 Thomson Reuters. No claim to original U.S. Government Works.
IPR response filed with USPTO
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BUNGIE, INC.,
Petitioner
v.
WORLDS INC.,
Patent Owner
_______________
Case IPR2015-01325
Patent 8,145,998
_______________
PATENT OWNER WORLDS INC.’S
PRELIMINARY RESPONSE
ii
TABLE OF CONTENTS
I. Introduction.......................................................................................................... 1
II. Background .......................................................................................................... 4
a. About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”) ................... 4
b. The Petition Challenges Claims 1-3, 7-8, and 11-20 of the ‘998 Patent .......... 7
c. Claim Construction ......................................................................................... 10
d. Petitioners’ Grounds of Challenge Rely On Art Already Considered by the
USPTO Examiner ................................................................................................. 11
III. Argument ........................................................................................................ 13
a. Petitioner’s Theories of Obviousness Fail to Consider Each Recited Feature,
and Fail to Establish a Reason for the Alleged Modification of Durward ........... 13
i. Durward’s Purpose is to Limit Data Communications in a Virtual Reality
Network................................................................................................................. 13
ii. Petitioner’s Proposed Combination is Not Supported by Evidence, and
Marathon’s View-Switching Feature is Not Compatible with Durward’s Reduced
Data Communications Scheme ............................................................................. 14
iii. Even if Combinable, Durward, Tracey, and Marathon Fail to Disclose all
Relied-upon Features ............................................................................................ 20
b. Petitioner’s Challenges Also Fail to Establish Obviousness of the Dependent
Claims ................................................................................................................... 21
c. The Challenge of Ground 4 Fails to Establish Obviousness of Claim 19 ...... 22
d. The Petition Fails to Name All Real Parties in Interest ................................. 24
IV. Conclusion ...................................................................................................... 32
iii
TABLE OF AUTHORITIES
Cases
Askeladden LLC v. McGhie et al., IPR2015-00122 (PTAB Mar. 16, 2015) (Paper
34) ......................................................................................................................... 31
Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453 (PTAB
Jan. 6, 2015) (Paper 88) ........................................................................................ 24
Gonzalez v. Banco Cent. Corp., 27 F.3d 751 (1st Cir. 1994) .................................. 25
In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .......................... 10, 25
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 17
LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01092
(PTAB Jan. 13, 2015) (Paper 9) ........................................................................... 17
Taylor v. Sturgell, 553 U.S. 880 (2008)................................................................... 25
Statutes
35 U.S.C. § 312(a)(2) ........................................................................................ 24, 31
35 U.S.C. § 325(d) ................................................................................................... 13
Other Authorities
Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ........ 10, 25
Rules
37 C.F.R. § 42.8(b)(1) ....................................................................................... 24, 31
37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 26
37 C.F.R. § 42.65(a)................................................................................................. 16
37 C.F.R. § 42.100(b) .............................................................................................. 10
iv
LIST OF PATENT OWNER’S EXHIBITS
Exhibit Description
2001 Transcript of Conference Call of July 23, 2015
2002 “Exhibit 1” to Exhibit 2001 (Software Publishing and
Development Agreement, dated April 16, 2010)
2003 Proof of Service in Worlds Inc. v. Activision Blizzard, Inc., et
al., Case No. 1:12-cv-10576 (D. Mass.)
2004 Letter dated November 13, 2014, from Worlds’ litigation
counsel to Activision’s litigation counsel
2005 Patent Owner’s First [Proposed] Set of Requests for Production
of Documents and Things to Petitioner (Nos. 1-6)
2006 Claim Construction Order dated June 26, 2015 in Worlds Inc. v.
Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
Mass.)
2007 Complaint in Worlds Inc. v. Activision Blizzard, Inc., et al.,
Case No. 1:12-cv-10576 (D. Mass.)
2008 Copilevitz, Todd, “Here’s a chat room worth talking about,”
The Dallas Morning News, June 11, 1995
2009 Smith, Gina, “Whole new Worlds on-line,” San Francisco
Examiner, May 14, 1995
2010 Amended Complaint in Worlds Inc. v. Activision Blizzard, Inc.,
et al., Case No. 1:12-cv-10576 (D. Mass.)
2011 Proof of Service of Amended Complaint in Worlds Inc. v.
Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
Mass.)
IPR2015-01325
U.S. Patent No. 8,145,998
1
I. Introduction
Bungie, Inc. (“Bungie” or “Petitioner”) filed the current Petition (“Petition”)
for inter partes review of claims 1-3, 7-8, and 11-20 of U.S. Patent No. 8,145,998
(“the ’998 patent” or “Leahy”) on June 1, 2015. In the Petition, Bungie challenges
claims 1-3, 7, 8, 11, 12, 16, 18, and 20 of the ‘998 patent as allegedly obvious over
three references, including U.S. Patent No. 5,659,691 issued to Durward et al.
(“Durward”) (Ex. 1008), an article entitled Touring Virtual Reality Arcades by
David Tracey (“Tracey”) (Ex. 1025), and a manual for the computer game
Marathon (“Marathon”) (Ex. 1021).
In Grounds 2-3, Bungie also challenges claims 13-15 and 17as allegedly
obvious over Durward in view of Tracey and Marathon, further in view of separate
secondary references, including U.S. Patent No. 5,021,976 to Wexelblat et al.
(“Wexelblat”) (Ex. 1020), and U.S. Patent No. 5,777,621 to Schneider
(“Schneider”) (Ex. 1019). Finally, in Ground 4, Bungie challenges claim 19 as
allegedly obvious over Durward in view of “A Software Architecture for the
Construction and Management of Real-Time Virtual Worlds” by David Pratt
(“Pratt”) (Ex. 1027).
2
But the Petition includes crucial gaps in establishing even a reasonable
likelihood of success on its foundational combinations of Durward and Marathon,
and these gaps are fatal to each of this Petition’s obviousness-based challenges.
Durward seeks to “reduce the amount of data communicated” in a virtual
reality network such that access is available to “multiple users located at different
remote physical locations” and who are communicating via “conventional dialup
telephone lines.” Durward at 1:35-51; 2:1-16. To achieve this, Durward explains
that the “data communicated to the user typically corresponds to the portion of the
virtual space viewed from the perspective of the virtual being.” Id. at 1:65-67. As
part of the reduction of data communicated to the virtual user, Durward
purposefully does not transmit data necessary for a user to view the virtual space
from other uses.
Marathon, which Petitioner relies upon to modify Durward, implements
exactly the opposite scheme from Durward. Namely, Marathon “lets you switch
views to the other players in the game by pressing the delete key.” Marathon at 18.
But in order to switch views, the workstation cannot only receive the reduced data
per Durward. Rather, the workstation must receive all information necessary to
view the virtual space from other points of view so it is capable of switching views
“to the other players.” The Petitioner’s proposed combination of Marathon and
Durward has the effect of completely frustrating and undoing Durward’s scheme
3
for reducing data communications. Further, Petitioner and its expert never
recognize, much less reconcile this hindrance to the combination.
Further, Petitioner’s proposed modification of Durward with Pratt suffers
from the same defect; the combination of these references completely frustrates
Durward’s scheme of reducing data communications.
Further, the Petition fails to identify all real parties in interest, and
particularly excludes real party in interest Activision Publishing, Inc.
(“Activision”), which has been engaged in infringement litigation with Patent
Owner Worlds Inc. on (inter alia) the ‘998 patent since 2012. See Ex. 2010 at 10-
11; Ex. 2011. Through a pre-existing substantive legal relationship with Petitioner,
Activision possessed the contractual right to review and approve Petitioner’s legal
reviews related to intellectual property, including the legal reviews underlying this
Petition. Additionally, Activision provided funding to Bungie for the development
of a software gaming product. This funding was intended by Activision and Bungie
to cover all tasks under their agreement, including the legal review underlying this
Petition. Based on these factors, Activision is an unnamed real party in interest
having at least an opportunity to control this proceeding through its
review/approval and funding. This failure to name Activision renders the Petition
defective on its face.
4
For at least these reasons presented above and explained in more detail
below, this Petition for inter partes review of the ‘998 patent should be denied with
no trial instituted.
II. Background
a. About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”)
In Petitioner’s Opposition to Patent Owner’s Motion for Routine or
Additional Discovery (paper 10), Petitioner opens its Background discussion by
characterizing Patent Owner Worlds Inc. as a “notorious patent assertion entity.”
Paper 10 at 2 (though citing no evidence for this derogatory characterization).
Whatever negative connotation was intended by Bungie through this statement, it
is undermined by Worlds’ reputation at the dawn of 3-D virtual reality
development, when Worlds unveiled a 3-D virtual space referred to as “Worlds
Chat” in 1995 and distributed it to the public for free. Articles written that year and
published in such periodicals as the Dallas Morning News touted Worlds Chat as
“the hottest innovation the Internet will see this year,” and noteworthy for “the
potential it brings to cyberspace.” Ex. 2008. In an article published in the San
Francisco Examiner, Gina Smith reported that Worlds Chat is “one of the first
examples of virtual reality on the Internet I’ve seen.” Ex. 2009 at 1. Perhaps as a
result, Worlds drew the attention of Steven Spielberg, who “announced that his
5
nonprofit Starbright Foundation is working with Worlds, Intel, UB Networks and
Sprint to create a 3-D environment where hospitalized children can play and
socialize with each other.” Id. at 3.
Further deflating Petitioner’s characterization of Patent Owner Worlds Inc.
as a “notorious patent assertion entity,” Worlds’ employees developed the
technology leading to the ‘998 patent, rather than acquiring it for the sole purpose
of pursuing litigation. Coming out of Worlds’ innovation associated with Worlds
Chat was the technology that provides the backbone for the patent at issue here.
The ‘998 patent was filed as U.S. Patent Application No. 12/406,970 on March 19,
2009, and claims priority to and the benefit of U.S. Provisional Patent Application
No. 60/020,296, filed on November 13, 1995. Linking the ‘998 patent to this
provisional application, the ‘998 patent also claims priority to a chain of U.S. nonprovisional
patent applications, including U.S. Patent Application Nos.
12/353,218; 11/591,878; 09/632,154; and 08/747,420. The title of the ‘998 patent
is “SYSTEM AND METHOD FOR ENABLING USERS TO INTERACT IN A
VIRTUAL SPACE.”
In the Background of the ‘998 patent, Leahy describes the difficulty of a
“client-server system” for 3-D virtual reality “game playing, where the positions
and actions of each user need to be communicated between all the players to
inform each client of the state changes (position, actions, etc.) which occurred at
6
the other clients.” Leahy at 1:61-64 (emphasis added). Per Leahy, the prior “peerto-
peer architecture” required many messages to provide the state change updates,
and because of the heavy processing loads and limited capabilities of a workstation
in a 3-D environment, this requirement to process many messages limited “the
number of clients which can be connected to the network.” Id. at 2:1-6.
As an improvement, Leahy describes an embodiment in which the virtual
world server is “much more discriminating as to what data is provided to each
client[].” Id. at 3:52-53. Additionally, to handle the remote avatar positions
received by a client, the client includes “a way to filter out avatars” for display
using, according to various embodiments, proximity, user ID, or a crowd control
function (which is “needed in some cases to ensure that neither client 60 nor user A
get overwhelmed by the crowds of avatars likely to occur in a popular virtual
world.”). Id. at 6:4-5; 5:39-41.
In an embodiment, N represents a server variable setting the “maximum
number of other avatars A will see,” and N’ represents a client variable setting the
“maximum number of avatars client 60 wants to see and/or hear.” Id. at 5:42-46.
Through the server’s application of such criteria, the server can implement the
crowd control function. For example, the server 61 can include a “user object 64,”
which “maintains a list of the N nearest neighboring remote avatars … in the
room.” Id. at 14:32-34. Leahy describes the “process of notifying client 60 of only
7
the N nearest neighbors … as part of crowd control” on the server side. Id. at
14:38-40. The client may then use “position data to select N’ avatars from the N
avatars provided by the server” for display of the N’ avatars. Id. at 6:12-13.
Thus, according to the disclosed embodiments discussed above, Leahy
discloses server-side selection of avatars, such that the server may notify the client
of the positions of only certain relevant neighbors, and the client has the capability
to further determine the avatars to be displayed based on the received positions.
b. The Petition Challenges Claims 1-3, 7-8, and 11-20 of the ‘998
Patent
In this Petition, Petitioner challenges the validity of claims 1-3, 7-8, and 11-
20 of the ‘998 patent. Among these claims, claims 1, 2, 18, and 19 are independent.
Claim 1 is a method claim for “displaying interactions of a local user avatar … and
a plurality of remote user avatars.” Among the steps of this method is “generating”
a rendering, and also “switching” between two claimed renderings. Claim 2 is a
system claim reciting a processor’s instructions to “generate” and “switch” in a
manner similar to those features of claim 1. Claim 18 is also a system claim and
includes similar “generate” instructions but also recites a “change” instruction of
the “perspective view of the rendering.” Finally, claim 19 (like claim 2) is also a
system claim reciting a processor’s instructions to “generate” and “switch”
between renderings.
8
Claim 1 is presented below for reference:
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.
(emphasis added). Independent claim 2 includes features similar to the aboveemphasized
features of claim 1. For example, claim 2 recites (in relevant part) a
“processor programmed using the instructions to: receive position information
associated with less than all of the remote user avatars …” and also to “switch
between a rendering on the graphic display that shows the virtual world to the local
9
user from a third user perspective and a rendering that allows the local user to view
the local user avatar in the virtual world.”
Claims 18 and 19 also recite similar “processor programmed using the
instructions” features; though the claim 18 recites “a processor programmed using
the instructions to: … change in three dimensions the perspective view of the
rendering on the graphic display of the virtual world in response to user input,” and
claim 19’s processor is programmed to (inter alia) “switch between a rendering in
which all of a perspective view of a local user avatar of the local user is displayed
and a rendering in which less than all of the perspective view is displayed.”
According to an embodiment, the ‘998 patent describes renderings on the
graphic display to show views other than views of the local user’s avatar:
Each user interacts with a client machine (not shown) which
produces a display similar to screen display 10, but from the
perspective of the avatar for that client/user. Screen display 10 is the
view from the perspective of a third user, D, whose avatar is not
shown since D's avatar is not within D's own view. Typically, a user
cannot see his or her own avatar unless the chat system allows “ou[t]
of body” viewing or the avatar's image is reflected in a mirrored
object in the virtual world.
Leahy at 1:30-38. As such, claim 1 recites two renderings, one of which displays
“at least a portion of the virtual environment … from a perspective of one of the
10
remote user avatars,” and the other displays a “view [of] the local user avatar in the
virtual environment.”
Petitioner alleges that claims 1, 2, and 18 are obvious over Durward in view
of Tracey, further in view of Marathon, and alleges that claim19 is obvious over
Durward in view of Pratt. The Petition was also supported by the Declaration of
Dr. Michael Zyda. Ex. 1002. But as will be explained below, the Petition fails to
establish each feature of the ‘998 patent’s claim 1 within the disclosures of
Durward, Tracey, and Marathon, and further fails to justify the modification of
Durward by Marathon. On a similar basis, the Petition fails to meet its burden as to
each of the remaining independent claims of the ‘998 patent.
c. Claim Construction
The standard for construing claim terms in this proceeding is not in dispute.
Since the ‘998 patent is not expired, the Board will interpret claims using the
broadest reasonable interpretation as understood by one of ordinary skill in the art
and consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed.
Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest
reasonable construction standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the art at
the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007).
11
For the purpose of this preliminary stage of the inter partes review, the
Board need not construe any of the claim terms to recognize that Petitioner’s
alleged grounds of challenge fail to establish the requisite likelihood of success
against the ‘998 patent’s claims. To simplify this Preliminary Response only, and
without waiving its right to identify terms for construction, or present constructions
or evidence in support in a Response (should one be necessary), Patent Owner will
respond to Petitioner’s challenges based on Petitioner’s proposed constructions.1
d. Petitioners’ Grounds of Challenge Rely On Art Already Considered
by the USPTO Examiner
The purported grounds of rejection are as follows:
Ground Basis References
1 Obviousness of Claims 1-3,
7, 8, 11, 12, 16, 18, and 20
Durward in view of Tracey, further in
view of Marathon
1 Patent Owner notes that the standards of construction applied in this proceeding
are different from the standards applied in the related litigation. The District Court
Claim Construction Order, issued June 26, 2015, is attached as Ex. 2006, but
Patent Owner reserves its right to present its claim construction arguments in a full
Response, should one be necessary.
12
2 Obviousness of Claim 13-15 Durward in view of Tracey, further in
view of Marathon, further in view of
Schneider
3 Obviousness of Claim 17 Durward in view of Tracey, further in
view of Marathon, further in view of
Wexelblat
4 Obviousness of Claim 19 Durward in view of Pratt
Throughout this Preliminary Response, for ease of understanding, Patent
Owner will refer to these prior art references by the names indicated above, rather
than by exhibit number. These prior art references are described below at Section
III, in conjunction with the arguments presented in this Preliminary Response.2
Further, the Petition’s Grounds rely upon Durward, but Durward was
already considered by the examiner during prosecution, and the claims of the ‘998
patent issued over this subject matter. Indeed, Durward is listed in the References
Cited portion of the ‘998 patent. See Ex. 1001 at 2.
2 Patent Owner reserves all right to present further argument and evidence related
to these prior art references and the content of the Petition and supporting Exhibits
if Inter Partes Review is instituted, consistent with the Board’s Rules and practice.
No waiver is intended by any argument withheld at this stage of the proceeding.
13
Thus, even if the Petition were not deficient in its grounds of challenge
based on these references for the reasons discussed below, 35 U.S.C. § 325(d)
gives the Board statutory discretion to dismiss the Petition since the same or
substantially the same prior art was previously presented to the USPTO: “n
determining whether to institute or order a proceeding under this chapter, chapter
30, or chapter 31, the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior art or
arguments previously were presented to the Office.” (emphasis added). The
claims of the ‘998 patent were rightfully allowed over Durward. The Board should
not disturb the examiner’s correct conclusion.
III. Argument
a. Petitioner’s Theories of Obviousness Fail to Consider Each Recited
Feature, and Fail to Establish a Reason for the Alleged
Modification of Durward
i. Durward’s Purpose is to Limit Data Communications in a
Virtual Reality Network
Durward’s background introduces the concept of interaction in a multi-user
virtual reality network, and discusses that virtual reality “is often available to the
general public without great inconvenience.” Durward at 1:40-43. In order to allow
multiple users to communicate “via conventional dialup telephone lines,” a
“system periodically updates the [central] database and communicates the updated
14
portions of the virtual space to the users.” Id. at 2:5-9. However, rather than
sending all updates to all users, “the data communicated to the user typically
corresponds to the portion of the virtual space viewed from the perspective of the
virtual being.” Id. at 1:65-67.
Durward’s scheme therefore limits the amount of data communicated to
each user such that the user only receives the data for “the perspective of the
virtual being.” Id. The converse of this disclosure means that users do not receive
data for the perspectives of other users’ viewpoints, and therefore cannot display
the virtual reality space from another user’s perspective. Petitioner’s theory of
obviousness seeks to change that aspect of Durward, and in the process completely
frustrates Durward’s entire purpose.
ii. Petitioner’s Proposed Combination is Not Supported by
Evidence, and Marathon’s View-Switching Feature is Not
Compatible with Durward’s Reduced Data Communications
Scheme
Petitioner’s theory of challenge characterizes the “switching” element of
claim 1 as a “perspective-switching feature” and alleges that this feature was
“common in interactive games” prior to the ‘998 patent’s earliest effective date.
Pet. at 7. According to Petitioner, the Marathon manual allows users to “switch
views to the other players in the game by pressing the delete key.” Pet. at 8 (citing
Marathon at 18; Ex. 1002 at ¶49). What the Marathon manual fails to explain is
why this particular feature is included or desirable in Marathon.
15
Petitioner also concedes that Durward fails to disclose “switching the
displayed perspective among multiple viewpoints.” Pet. at 16. In order to remedy
this shortcoming of Durward, Petitioner looks to both Tracey’s “out-of-body”
perspective and Marathon’s alleged “perspective-switching feature.” Petitioner
specifically argues that “to the extent that Durward does not expressly disclose
switching between a display showing the 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 would have been allegedly obvious to one of
ordinary skill in view of Tracey and Marathon. Pet. at 24; 16-17.
The basis for Durward’s modification, according to Petitioner, is that
Marathon and Tracey allegedly “describe video games” that allegedly include
“features designed to increase a user’s enjoyment and use of the virtual
environment product.” Pet. at 41. This allegation, however, lacks citation to any
evidence at all. Petitioner continues by alleging that the “ability to switch the
display among the perspectives of multiple users and to an out-of-body view are
two such features.” Id. (citing to Ex. 1002, ¶207). Later, again without support,
Petitioner alleges that these features are “consumer-friendly gaming features.” Pet.
at 41. But even the Zyda declaration’s ¶207 provides no evidence in support of
Petitioner’s characterizations of Marathon’s and Tracey’s view-switching features.
Zyda declaration (Ex. 1002, ¶207) in fact presents the exact same argument as the
16
Petition, alleging that Marathon and Tracey include “features designed to increase
a user’s enjoyment and use of the virtual environment product” and that the
“ability to switch the display among the perspectives of multiple users is one such
feature.” Ex. 1002, ¶207. But Ex. 1002 also fails to include any basis for Dr.
Zyda’s allegation, thus rendering it worthy of little to no weight. Indeed, Dr. Zyda
fails to clarify whether this conclusion is his own or the conclusion that would
have been reached by a person of ordinary skill in the art. Dr. Zyda further fails to
establish how his conclusion regarding “features designed to increase a user’s
enjoyment and use of the virtual environment product” would be known to a
person of ordinary skill in the art according to his own standard for that person.
In essence, Dr. Zyda has parroted the conclusions asserted by Petitioner,
without presenting any evidence to substantiate those conclusions. Compare Ex.
1002, ¶¶206-2103 with Pet. at 40-42. Paragraphs 206-210 of Ex. 1002 lack the
underlying basis for Dr. Zyda’s conclusions and therefore should be accorded little
to no weight. See 37 C.F.R. § 42.65(a).
The Petitioner also argues that “there would be no particular reason
precluding the proposed combination” of Durward, Tracey, and Marathon. Pet. at
3 Although the Petition is focused on combinations based on Durward, the rationale
paragraph beginning on p. 40 of the Petition begins by incorrectly discussing the
Funkhouser reference from IPR2015-01321.
17
42. But the law of obviousness does not presume a combination to be appropriate
in all instances, unless rebutted by some reason precluding it. Indeed, even if all
elements of the challenged claims were in existence as of the ‘998 patent’s earliest
effective filing date, the law makes clear that the mere existence of the claimed
elements in the prior art is not enough to establish obviousness of the challenged
claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a patent
composed of several elements is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.”). The Board is
also well aware of and applies this standard. See e.g. LG Display Co., Ltd. v.
Innovative Display Technologies LLC, IPR2014-01092, slip. op. at 8 (PTAB Jan.
13, 2015) (Paper 9).
Further, since Grounds 1-3 all depend upon Petitioner’s alleged modification
of Durward with Tracey and Marathon, and since Petitioner has only presented
unsubstantiated legal conclusions without any evidence to support the
modification, each of these Grounds 1-3 is deficient on its face and should be
dismissed without institution.
Moreover, Petitioner is completely wrong that “there would be no particular
reason precluding the proposed combination” of Durward, Tracey, and Marathon
in the manner proposed. Pet. at 42. Marathon discloses that users may “switch
views to the other players in the game by pressing the delete key.” Marathon at 18.
18
But as Petitioner concedes, Durward is directed to reducing “the amount of data
communicated between the [central] computer and each user.” Pet. at 7 (citing
Durward at 2:9-12). As a result, Durward discloses that “[p]referably, the data
communicated to the user typically corresponds to the portion of the virtual space
viewed from the perspective of the virtual being.” Durward at 1:65-67. To limit the
transmission of unnecessary data, the processor at Fig. 2’s central control unit
“determines which user is to receive which data according to the relevant and
priority spaces defined for that user.” Id. at 6:41-44.
But Marathon’s view-switching would require Durward’s users to receive
data for a much greater portion of the virtual space, and not just the relevant and
priority spaces for that user. Indeed, each user would need to possess the
perspective data for all “other players in the game” so that a rendering from any of
the other players’ remote user avatars’ perspective could be achieved “by pressing
the delete key.” Marathon at 18. Petitioner fails to acknowledge that this revision
would completely nullify Durward’s goal of reducing “the amount of data
communicated between the [central] computer and each user.” Durward at
Abstract; 2:9-12.Even Dr. Zyda purports to incorporate Marathon’s alleged
“consumer-friendly gaming features” with Durward to create “a networked virtual
environment system combining the optimization benefits of Durward,” yet does so
19
without recognizing that the very combination would destroy Durward’s alleged
optimization benefits and reduction of communicated data. See Ex. 1002 at ¶209.
Thus, this purported modification of Durward with Tracey and Marathon
actually frustrates the entire purpose of Durward by increasing drastically the
amount of data transmitted from central control unit to each user’s workstation,
and by increasing the necessary processing power for each user’s workstation to be
able to render a display from the perspective of any other player in response to a
user’s pressing the delete key, per Marathon. Neither Petitioner nor Dr. Zyda
recognized nor reconciled this flat inconsistency in the scheme of Durward and the
purported modification allegedly inspired by Tracey and Marathon. The references
are plainly inconsistent, and this inconsistency further drives a wedge between any
possible modification of Durward with Tracey and Marathon.
As to independent claims 2 and 18, Petitioner argues that these claims “are
obvious in view of Durward, Tracey, and Marathon for reasons similar to those
discussed above for claim 1.” Pet. at 26 (citing by reference to thirty paragraphs of
Ex. 1002). For the same reasons expressed above, including without limitation
Petitioner’s failure to present evidence in support of its purported modification of
Durward by Tracey and Marathon and the failure to reconcile the inconsistencies
in these references, Petitioner’s obviousness-based challenges of claims 2 and 18
should be denied without institution.
20
iii. Even if Combinable, Durward, Tracey, and Marathon Fail to
Disclose all Relied-upon Features
Even assuming that Petitioner’s basis for modifying Durward with Tracey
and Marathon were not deficient (which it is), the combination fails to teach or
disclose all claimed features of the challenged claims of Grounds 1-3.
For example, Petitioner fails to establish that Durward discloses the
“processor programmed using the instructions” of claims 2 and 18. Petitioner notes
that Durward discloses a computer, but neither Petitioner nor Dr. Zyda explain
why an undisclosed “processor” must necessarily exist in computer 42. Dr. Zyda’s
declaration in fact is devoid of any explanation about what would be understood by
a person of ordinary skill in the art in light of Durward, and instead simply repeats
the attorney argument of the Petition, p. 28. Further, neither Petitioner nor Dr.
Zyda contend that a “processor” is inherently disclosed in the computer 42. The
conclusion reached by Petitioner and Dr. Zyda lacks explanation, and lacks
foundational evidence supporting the conclusion. Even Dr. Zyda’s ¶40, regarding
“necessary aspects” of a networked computer system is conclusory, and lacks
explanation about the understanding that would have been possessed by a person
of ordinary skill in the art at the time of Leahy’s invention.
21
b. Petitioner’s Challenges Also Fail to Establish Obviousness of the
Dependent Claims
Petitioner’s asserted challenges and arguments in favor of modifying
Durward with, separately, Sitrick and Wexelblat suffer from the same
shortcomings identified above with respect to Durward and Marathon. Namely,
each combination includes no evidence for the purported modification, is
supported by Dr. Zyda’s unexplained conclusions without discussion of the
underlying basis, fails to tie the knowledge alleged by Dr. Zyda to one of ordinary
skill in the art, and further is inconsistent with the purpose and goals of Durward.
Further, Petitioner’s purported modification of Durward by Wexelblat lacks
any logical explanation in view of Petitioner’s prior characterizations of Durward.
In challenging claim 16, Petitioner characterizes each of Durward’s “multiple
virtual spaces” as “rooms.” See Pet. at 39. According to Durward, each virtual
space is a separate virtual environment, i.e. a CAD virtual space 160, a game
virtual space 164, and a task virtual space 168. See Durward, Fig. 3. In now
challenging claim 17, Petitioner seeks to modify Durward with Wexelblat in order
to “allow an avatar to teleport between the rooms associated with the virtual
world.” Pet. at 47.
But Durward’s different virtual spaces are not part of the same virtual world,
and are directed to separate activities, i.e. CAD, gaming, and tasks. The
teleportation explained by Wexelblat exists according to a user’s prior locations.
22
See Ex. 1020 at 6:61-7:10; see also Pet. at 48 (arguing that Wexelblat allows users
to “quickly return to a location of interest after an initial visit”). Petitioner’s argued
basis for the modification is to allow “users to navigate from room to room in a
virtual environment with greater ease, particularly rooms separated by a long
distance.” Id. But that rationale fails logic in Durward, where the different virtual
spaces provide for entirely different functions and do not correspond to prior
locations. In essence, Petitioner alleges that it would have been obvious to allow a
virtual being to teleport from the CAD virtual space to the task virtual space to the
gaming virtual space, even though the functions provided in each space are
different and do not even expressly allow initial visits or return trips in the manner
of Wexelblat. Thus, there is no reason why a person of ordinary skill in the art
would have had reason to combine the features of Durward with Wexelblat,
according to the characterizations presented by Petitioner.
c. The Challenge of Ground 4 Fails to Establish Obviousness of
Claim 19
Petitioner’s asserted challenges and arguments in favor of modifying
Durward with Pratt also suffer from the same shortcomings identified above with
respect to Durward and Marathon. For example, even assuming Pratt constitutes
prior art (which Patent Owner does not concede), Petitioner’s proposed
23
modification of Durward with Pratt in order to reach the claimed features of claim
19 actually frustrates the goals and purpose of Durward.
Petitioner relies upon Pratt to disclose a zoom function, whereby “icons in
the distance appear closer since they now occupy a larger portion of the screen.”
Pet. at 51. Petitioner then argues in favor of incorporating this zoom function into
Durward to provide “users with a zoom telescope function, simulating, for
example, a view through binoculars or a rifle scope.” Id. at 53. The usefulness of
incorporating this feature into Durward is alleged in the Petition with minimal
explanation of the underlying evidence. Id. (arguing that “[s]uch a feature would
have been equally desirable in the virtual reality system disclosed in Durward.”).
Further, Petitioner offers no analysis on the affect this zoom function would
have on Durward’s stated purpose of reducing data communications, and for good
reason. In effect, this zoom function changes the position used to determine the
perspective view of a user’s virtual being, and this change in position would
require the local user to receive data communication in order to view the virtual
space from the perspective of any virtual being in the virtual space, contrary to the
scheme and purpose intended by Durward. Thus, just as with Marathon, the
proposed modification of Durward with Pratt serves to undo and ultimately
frustrate Durward’s stated goal of limiting the data communications in the multi24
user virtual reality space. And once again, Petitioner neither recognized nor
reconciled this conflict of purposes in its Petition.
On this basis, the references are inconsistent, and this inconsistency
prohibits any possible modification of Durward to include zoom function disclosed
by Pratt.
d. The Petition Fails to Name All Real Parties in Interest
Finally, under 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1), a petition
for inter partes review must identify all real parties in interest and may not be
considered if it fails to do so.
Factors relevant to this determination include the following: “(1) whether the
third party agrees to be bound by the determination of issues in the proceeding; (2)
whether a pre-existing substantive legal relationship with the party named in the
proceeding justifies binding the third party; (3) ‘in certain limited circumstances,’
whether the third party is adequately represented by someone with the same
interests; (4) whether the third party exercised or could have exercised control over
the proceeding; (5) whether the third party is bound by a prior decision and is
attempting to rehear the matter through a proxy; and (6) whether a statutory
scheme forecloses successive hearing by third parties.” Atlanta Gas Light Co. v.
Bennett Regulator Guards, Inc., IPR2013-00453, slip. op. at 9 (PTAB Jan. 6,
2015) (Paper 88) (Decision Terminating Inter Partes Review by APJ Boucher for a
25
panel consisting of APJs Bisk, Arpin, and Boucher) (citing to Taylor v. Sturgell,
553 U.S. 880, 893 n.6 (2008)). There is no “bright-line test” as to the fourth control
concept. 77 Fed. Reg. at 48,759 (citing Gonzalez v. Banco Cent. Corp., 27 F.3d
751, 759 (1st Cir. 1994). Nevertheless, in the current case, at least the second and
the fourth factors are satisfied as to an entity other than Petitioner. The Petitioner
only identifies itself as the real party-in-interest, and not any other having an
interest in the outcome and desiring review of the ‘998 patent. Pet. at 11. This is
insufficient and renders the Petition defective on its face.
Among the related matters identified on pp. 11-12 of the Petition is Worlds,
Inc. v. Activision Blizzard, Inc. et al., Case No. 1:12-cv-10576-DJC (D. Mass.) (the
“litigation”). The amended complaint in that litigation named Activision
Publishing, Inc. (“Activision”) as defendant, and identified patents related to the
‘998 patent as infringed by Activision. Ex. 2010 at 10-11.4 At the time of the filing
of this Petition, Activision and Bungie possessed a pre-existing substantive legal
relationship, and Activision indirectly funded and possessed at least a contractual
opportunity to control this proceeding. Bungie has come forward with no evidence
to establish that Activision and Bungie performed in a manner other than strictly
according to the terms of the Agreement.
4 The ‘998 patent was added to the lawsuit by amended complaint in 2012.
26
Specifically, on April 16, 2010, Activision Publishing and Bungie, LLC
entered into a Software Development and Publishing Agreement. Ex. 2002 (the
“Agreement”).5 Under this Agreement, Bungie and Activision entered “into a longform
software development and publishing agreement with respect to the Destiny
Property,” which is a software game developed by Bungie and published by
Activision. Ex. 2002 at 1 (Recital B; D). The Term of the Agreement was expected
to be through the release of Destiny’s Comet #4 expansion, tentatively scheduled
for 2020. Id. at 2 (Sec. 1A); Id. at 3 (Sec. 4.1). Bungie’s obligations under the
Agreement include the obligation to conduct “legal reviews of the Products to
ensure that all Intellectual Property and other rights are fully cleared for use.” Ex.
5 Despite the requirements for routine discovery under 37 C.F.R. § 42.51(b)(1)(iii),
Patent Owner did not receive a copy of the Agreement from Petitioner. Rather,
through independent investigation, Patent Owner discovered that the Agreement
was published by the L.A. Times website. During the Conference Call with the
Board on July 23, 2015 and while discussing the Agreement, Petitioner’s counsel
represented to the Board that they had “not received a copy of this document that
[Patent Owner was] referring to from the L. A. Times.” Ex. 2001 at 28, ll. 14-16.
Later, in Petitioner’s Opposition to Patent Owner’s Motion for Discovery,
Petitioner backtracked and admitted that it was “aware of the [A]greement.” Paper
10 at 3, n.1.
27
2002 at 10 (Sec. 7A.15(j)). This obligation is pursuant to Bungie’s warranty that
“the use, development, distribution and publishing [of the Product Intellectual
Property] as contemplated by and set forth in this Agreement, shall not infringe
upon or violate the rights of, nor require consent of, any other party.” Ex. 2002 at
19 (Sec. 14.1.2). This warranty raises the issue of Bungie’s knowledge of patents
since it is subject to “the best of [Bungie’s] knowledge with respect to patents.” Id.
Additionally, while Bungie is obligated to perform the legal reviews for IP
clearance, the legal reviews for IP clearance performed by Bungie are subject to
Activision’s “prior review and approval.” Ex. 2002 at 10 (Sec. 7A.15).
The Agreement also provides for financial support from Activision to
Bungie for development of the Destiny products. Per the Agreement, Activision
and Bungie “understand and acknowledge that the Development Advances shall
fully fund [Bungie’s] operations directly related to the development of the
Products (including overhead costs associated therewith, but excluding any built-in
profit margin) during the Development Term.” Ex. 2002 at 15 (Sec. 10.1)
(emphasis added). These “operations” include the funding of the legal reviews
required under Sec. 7A.15(j), which were intended by Bungie and Activision to
come from the Development Advances paid by Activision for development of the
Destiny products. Bungie in fact warrants this funding usage to Activision: “All
Development Advances paid by Activision to [Bungie] hereunder shall be utilized
28
by [Bungie] solely to fund the costs of creation and development of the Products
and otherwise cover day-to-day overhead and operational expenses that are
reasonably necessary and related to the creation and development of the Products
… .” Ex. 2002 at 20 (Sec. 14.1.4).
Further, on November 13, 2014, by letter correspondence during the
litigation (the “notice letter”), Activision was put on notice by Patent Owner’s
litigation counsel that the Destiny product, the subject of the Agreement developed
by Bungie and published by Activision, was intended to be added to the litigation.
Ex. 2004. This notice triggered Bungie’s duties under the Agreement. Those duties
included Bungie’s obligation to conduct “legal reviews of the Products to ensure
that all Intellectual Property and other rights are fully cleared for use.” Ex. 2002 at
10 (Sec. 7A.15(j)). This obligation is pursuant to Bungie’s warranty that “the use,
development, distribution and publishing [of the Product Intellectual Property] as
contemplated by and set forth in this Agreement, shall not infringe upon or violate
the rights of, nor require consent of, any other party.” Ex. 2002 at 19 (Sec. 14.1.2).
This warranty is subject to “the best of [Bungie’s] knowledge with respect to
patents.” Id.
During the July 23, 2015 Conference call between the Board, Petitioner, and
Patent Owner, Patent Owner noted that Destiny had not been formally added as an
accused product to the litigation. Ex. 2001 at 16. But Bungie’s warranty of non29
infringement to Activision under Sec. 14.1.2, according to its express terms, is not
limited by or triggered only by the inclusion of Destiny as an accused product in a
litigation. The warranty instead is defined by Bungie’s “knowledge” of a patent,
and the results of its legal review for IP clearance. This interpretation is supported
by Bungie’s warranty regarding its knowledge as of the Effective Date of the
Agreement: “there are no claims, demands or actions pending or threatened
against [Bungie] with respect to the Licensor Product Intellectual Property.” Ex.
2002 at 20 (Sec. 14.1.9) (emphasis added).
Moreover, the funding of all development, including legal reviews required
under Sec. 7A.15(j), was intended by Bungie and Activision to come from the
Development Advances paid by Activision to Bungie to develop the Destiny
products. Bungie in fact warrantees this funding usage to Activision: “All
Development Advances paid by Activision to [Bungie] hereunder shall be utilized
by [Bungie] solely to fund the costs of creation and development of the Products
and otherwise cover day-to-day overhead and operational expenses that are
reasonably necessary and related to the creation and development of the Products
… .” Ex. 2002 at 20 (Sec. 14.1.4).
Therefore, by pre-existing contractual obligation, Bungie was required to
perform legal reviews for IP clearance, subject to Activision’s contractual right to
review and approve the legal reviews. Moreover, Activision was entitled by the
30
Agreement to “designate one person to attend and participate as a non-voting
observer in all meetings of the Board of Directors of [Bungie] during the
Development Term.” Ex. 2002 at 24 (Sec. 18.2). This member has the right to
“receive all materials provided to the members of [Bungie’s] Board of Directors
and to participate fully (except voting) in all meetings … .” Id. Activision also
possessed the “sole discretion” to review and approve/deny any “Change of
Control” of Bungie up until a time certain (this time certain was estimated as Fall
of 2016 in the Agreement). Ex. 2002 at 24 (Sec. 18.1). These contractual
oversights of Bungie’s management further confirm that Activision had at
minimum the opportunity to control these IPR proceedings.
By the express terms of the Agreement, Activision had at minimum an
opportunity to control this IPR through its contractual right to review and approve
Bungie’s legal reviews performed for IP clearance, its participation in the meetings
of Bungie’s Board of Directors, and its funding of these IPRs indirectly through
payment of Development Advances warranted by Bungie to be used “solely” for
development (such “development” to include the legal reviews for IP clearance) of
the Destiny products.
Under the second and fourth Taylor factors, including “whether a preexisting
substantive legal relationship with the party named in the proceeding
justifies binding the third party” and “whether the third party exercised or could
31
have exercised control over the proceeding,” Activision is a real party in interest
and must be named in the currently-incomplete Petition. As a result, the Petition
as-filed is not in compliance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1)
and is therefore incomplete. A petition that is incomplete will not be accorded a
filing date until the deficiency is corrected. This includes the addition of unnamed
real parties in interest. See, e.g., Askeladden LLC v. McGhie et al., IPR2015-00122
(PTAB Mar. 16, 2015) (Paper 34).
Patent Owner has sought routine discovery from Petitioner, or in the
alternative additional discovery related to categories relevant to the real party in
interest calculus. These requests were denied by the Board on September 4, 2015.
See Paper 11.
Patent Owner maintains that the Agreement establishes, at minimum,
Activision’s ability to control the legal reviews underlying Bungie’s requests for
inter partes review, even assuming that Bungie’s uncited attorney argument is
factually accurate. See Paper 11 at 8 (“Petitioner counters that ‘development
advances to [Petitioner] funded the development of the Destiny videogame, not
these IPRs.’”).
Patent Owner reserves all rights to renew its requests and to seek discovery
into the real parties in interest in the Petition for Inter Partes Review, and the
Petitioner’s failure to name all such real parties in interest in the Petition.
32
IV. Conclusion
For the many reasons discussed above, including both substantive and policy
reasons, the Petition should be denied and no trial instituted. Patent Owner
therefore respectfully requests that the Board deny all grounds of challenge,
dismiss the Petition, and decline to institute inter partes review of claims 1-3, 7-8,
and 11-20 of the ‘998 patent.
Dated: September 14, 2015 Respectfully submitted,
By: /s/ Wayne M. Helge
Wayne M. Helge (Reg. No. 56,905)
Donald L. Jackson (Reg. No. 41,090)
Michael R. Casey (Reg. No. 40,294)
DAVIDSON BERQUIST JACKSON & GOWDEY,
LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
Telephone: 571-765-7700
Fax: 571-765-7200
Email: whelge@dbjg.com
Email: djackson@dbjg.com
Email: mcasey@dbjg.com
Counsel for Patent Owner
33
CERTIFICATE OF SERVICE
I hereby certify that on September 14, 2015, a true and correct copy of the
foregoing Patent Owner’s Preliminary Response, including exhibits, is being
served via email, by consent, to the Petitioner at the correspondence addresses of
record as follows:
Michael T. Rosato
Reg. No. 52,182
Wilson Sonsini Goodrich & Rosati
701 Fifth Ave.
Suite 5100
Seattle, WA 98104-7036
Telephone: (206) 883-2529
Facsimile: (206) 883-2699
E-mail: mrosato@wsgr.com
Matthew A. Argenti
Reg. No. 61,836
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, CA 94304
Telephone: (650) 354-4154
Facsimile: (650) 493-6811
E-mail: margenti@wsgr.com
By: /s/ Wayne M. Helge
USPTO Reg. No. 56,905
Counsel for Patent Owner
Exactly what is it that Kidrin should be promoting and where. He issued a national coverage press release on Marketwire. He can't fabricate news. What you don't understand is that pumping fluff can come back and bite Worlds because Activision's lawyers will use it in court to paint the company as a troll and its CEO as a promoter which will negatively influence the judge.
Why don't you offer some constructive ideas to increase the SP value and broader market awareness if your so bright and such a wiz marketer.
Case Name:
Worlds, Inc. v. Activision Blizzard, Inc. et al
Case Number:
1:12-cv-10576-DJC
Filer:
Document Number:
178(No document attached)
Docket Text:
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)
Worlds has won the most important claims in the Markman Order