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02/11/2021 326 Judge Denise J. Casper: ELECTRONIC ORDER entered. REFERRING MOTION 323 MOTION to Compel 30(B)(6) Testimony and to Extend the Deposition of Thomas Kidrin filed by Blizzard Entertainment, Inc., Activision Blizzard, Inc., Activision Publishing, Inc. to Magistrate Judge Cabell(Hourihan, Lisa) Motions referred to Donald L. Cabell. (Entered: 02/11/2021)
I seen that on level 2 it skipped
The bid hit the two below on light volume
It’s also misleading investors because it
made a lower low on that trade skewing
the chart prior to that trade the low was the open
at .59 cents. Interesting I think your explanation
and 30 years experience tells me we go higher
on shortage of tradable shares. Thanks for sharing
GLTA Longs
02/03/2021 320 Joint MOTION for Entry of Order Concerning Remote Depositions by Activision Blizzard, Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc.. (Attachments: # 1 Exhibit A)(Mehta, Sonal) (Entered: 02/03/2021)
02/09/2021 321 Judge Denise J. Casper: ELECTRONIC ORDER entered granting 320 Joint Motion for Order Concerning Remote Depositions. (Currie, Haley) (Entered: 02/09/2021)
02/09/2021 322 Judge Denise J. Casper: ORDER entered. ORDER Concerning Remote Depositions.(Currie, Haley) (Entered: 02/09/2021)
No idea?
It was Op1 who
Cryptically suggested it
With his response
MARA???
Who knows I hope he’s right all
Interest is good
If they’ve been accumulating and
they get enough that they have to declare
and file. That would be significant news
Marathon Patent Group???
Is that the rumour on the floor?
Partnership,Purchase, Accumulating stock???
I hope he forces ATVI to provide all that Worlds
has asked for. This is a great opportunity for
Worlds to really tighten the vice on Bungie and ATVI
But we wait and wait and wait
However waiting is a lot easier with volume and price appreciation
Cadillac couldn’t agree more about informed decisions
I wish you well. But I have to admit after this recent run
I may go buy some Pom Poms. Hopefully we will receive
two favourable rulings in the near future I check Pacer
in Mass and West Texas 20 times a day and still we wait.
Judge Cabell spoke as if he would have ruled a week ago
But what can you do but wait. I personally see a 75-100 million
Valuation coming soon based on previous price activity
Hope I’m right. Would be really nice if like OP1 is always saying
News soon I hope he’s right one of these time too but we must
All admit volume and price movements have recently been very
Impressive
Mad and Cadillac
I personally am all for hearing all sides
of every debate but the one thing I don’t understand
from you both at times is the only reason anyone buys
is to profit. The ultimate risk versus reward scenario
at work here. You both say you have positions already. So
It seems to me you both have weighed the risks and decided
the reward is worth it. If this is true I may be wrong it would seem
you are the ones investing beyond your comfort levels and should
not have bought shares if you aren’t comfortable with your position
and the potential risks that are still here and shall remain for a little while longer.
That is not my business and I intend no offence it’s merely an observation based on all
the negativity uncertainty and unanswered questions in some of your posts.
I do however take offence to being told I’m blindly investing I’m sure I’ll get over it but
like your business that is my business. I’m not the rah rah kind
of guy but I would hope since you’re both invested here get comfortable
and enjoy the ride up. It won’t go up forever. It’s much better to enjoy they
flight than to scream we’re going to crash all the time it gets old.
I wish you both well in your investing. We are all about to make a lot
more money than we already have made here.
GLTA Longs
Mad post #39944
Mad Microsoft has already filed an additional IPR
101 from Judge Casper correct
Also a ruling from Magistrate Judge
Donald Cabell on Activisions refusal
To provide the deep discovery Worlds
has requested
Quilt thank you
Spot on finally a reasonable explanation
Now it makes much more sense
Huge amount of bargaining power
To be gained if Judge allows the discovery
To go deep
Any opinion on the decision to come by
Judge Donald??
From my previous post
My guess is motion denied because as stated in the first line of the judges scheduling order issued today
SCHEDULING ORDER
Upon motion of the parties, and upon good cause shown, the court enters the following
schedule for this action:
Another win for WDDD
MSFT did file an IPR and asked for a Stay
The judge moved forward with the court schedule
So I assumed the Stay had been denied
Also Savy
Status Conference set for 3/15/2021 02:00 PM in Remote Proceeding : Boston before Judge Denise J. Casper. (Hourihan, Lisa) (Entered: 01/12/2021)
My guess is $1.40 - $1.80
Market cap of $75million to $100 million
I believe a fair estimate
Volume will dictate price action
As always
GLTA Longs
After listening to Judge Cabell at the hearing
my guess is we will have a ruling on this protective
order motion by this Friday. He was adamant about speed
of submission of docs and said he would rule quickly
as to not upset Judge Casper
THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
and ACTIVISION PUBLISHING, INC.,
Defendants.
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Civil Action No. 1:12-CV-10576 (DJC)
WORLDS, INC’S SUPPLEMENTAL SUBMISSION IN OPPOSITION TO
DEFENDANTS’ MOTION FOR PROTECTIVE ORDER
On January 13, 2021, the Court conducted a hearing on Defendants’ Motion for
Protective Order (Dkt. 292, the “Motion”), in which Defendants sought relief from responding to
Worlds’ Requests for Production (“RFPs”) Nos. 128-143. As Worlds explained in its opposition,
these RFPs are relevant to Defendants’ status as a real-party-in-interest (“RPI”) to IPR petitions
filed by Bungie, Inc., and therefore they are relevant to the applicability of statutory prior art
estoppel under 35 U.S.C. § 315(e)(2) here. See generally Dkt. 301. Worlds also explained that
its RFPs are relevant to other disputed issues in this proceeding. See Dkt. 301 at 11-12.
While Defendants’ Motion suggested to the Court that Defendants were not aware
whether any responsive documents even exist,
1
this was just another instance of Defendants
hiding the ball. Not only did Defendants file their Motion knowing that responsive documents
exist, but during the hearing of January 13, 2021, Defendants represented for the first time that
1
See Dkt. 293 at 17-18 (Defendants seeking protection from producing responsive documents
“if they exist” and “to the extent there are any responsive documents… .”).
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 1 of 8
2
they might agree to be treated as an RPI to Bungie’s IPRs.2
Under these circumstances, the
Court asked Worlds whether Defendants should be required to respond to Worlds’ RFPs.
Worlds responded affirmatively, and is submitting this supplemental brief pursuant to the
Court’s instruction to further expound on its response.
I. RELEVANT, RESPONSIVE DOCUMENTS EXIST
Worlds served its complaint asserting patent infringement of the patents-at-issue against
Defendants in 2012 (Dkts. 5, 6, 7, 32). Had Defendants wished to file their own IPR petitions
against the patents-at-issue, they would have had to do so within one year of being served. See
35 U.S.C. § 315(b). They did not do so.
In November 2014, Worlds notified Defendants that it intended to add a software-based
game called “Destiny,” developed by Bungie and distributed by Activision, as an accused
product. Though Destiny was not added as an accused product to this case, Bungie nevertheless
filed its IPR petitions against the very patents and claims asserted against Defendants in this
proceeding. Although Bungie claimed to be the sole RPI to its IPR petitions, Worlds’
investigation discovered a pre-existing Software Development and Publishing Agreement
between the Bungie and Activision dated April 16, 2010 (“Agreement”), and published online by
the L.A. Times. Per that Agreement, Bungie was to develop, and Activision was to publish and
distribute Destiny. Worlds argued—both to the PTAB and to the Federal Circuit—that Bungie’s
and Activision’s mutual rights and obligations set forth in the Agreement were sufficient to
question whether Activision was an unnamed RPI to Bungie’s IPRs; the Federal Circuit agreed.
See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244-46, 1247 (Fed. Cir. 2018).
2 Cf. Dkt. 242 at 7 (representing to the Court that “[e]ven if Activision were a real-party-ininterest to Bungie (it is not and the PTAB did not find as such), estoppel cannot apply to
Activision.”) (emphasis added).
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 2 of 8
3
As discussed by the Federal Circuit, the Agreement requires that Bungie conduct “legal
reviews” of the Destiny Products to “ensure that all Intellectual Property and other rights are
fully cleared for use,” and these legal reviews are subject to Activision’s “prior review and
approval,” with the budget for such reviews to be mutually agreed upon. Id. at 1244-45. These
Agreement provisions, along with Bungie’s decision to challenge the very claims and patents
asserted against Defendants based on prior art identified and charted by Defendants, indicate that
communications between Defendants and Bungie should exist regarding the asserted patents on a
myriad of relevant issues, as explained further below. Moreover, Defendants have not denied the
existence of responsive communications and other documents.
II. RESPONSIVE DOCUMENTS ARE RELEVANT TO PATENT VALIDITY
As argued in Worlds’ Opposition and during the hearing on January 13, 2021, and as further
explained here, Worlds’ RFPs are relevant to the validity of the asserted patents. Dkt. 301 at 11-12.
For example, RFP No. 128 seeks “documents referring or relating to any communications between
YOU and BUNGIE relating to the validity, enforceability, infringement, scope, or licensing of the
ASSERTED PATENTS or of any claim thereof, and any continuing-in-part patent claims or patent
applications owned by Worlds.” Dkt. 294-1 at 8. The prior art asserted by Bungie in its IPR
petitions is a small subset of the prior art asserted by Defendants in this case’s invalidity
contentions. Given the Agreement between Activision and Bungie, their respective obligations
under the Agreement, and the overlapping prior art found in both Defendants’ invalidity contentions
and Bungie’s IPR petitions, it is likely that communications exist in which Defendants and Bungie
discuss the merits of Defendants’ prior art, the relative strength of the various prior art references,
and ways in which the various prior art references might be combined to address admitted
shortcomings in those references. The communications may also include an indication as to why
certain prior art references from Defendants’ invalidity contentions were selected over others for the
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 3 of 8
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Bungie IPR petitions, or why Bungie chose to challenge validity in IPR rather than in District Court.
All of these issues are relevant to the validity of the asserted patents. Further, these communications
are not likely to be duplicative of Defendants’ produced documents to date.
Similarly, RFP No. 130 seeks “documents referring or relating to any communications
between YOU and BUNGIE relating to prior art to the ASSERTED PATENTS or of any claim
thereof, and any continuing-in-part patent claims or patent applications owned by Worlds.” Dkt.
294-1 at 8. For the same reasons provided for RFP No. 128 above, RFP No. 130 is also relevant to
the merits of the validity of the asserted patents. Moreover, RFP Nos. 133, 134, and 143 also seek
documents relevant to validity for the same reasons provided above.
III. RESPONSIVE DOCUMENTS ARE RELEVANT TO INFRINGEMENT AND
WILLFULNESS
Worlds’ RFPs are also relevant to whether Defendants infringed the asserted patents, and
whether that infringement was willful. As noted above, RFP No. 128 seeks documents relating to
communications between Defendants and Bungie relating to, among other things, the scope and
infringement of the asserted patents. Bungie’s obligation to clear Destiny vis-à-vis the Worlds
patents may have led to communications between Defendants and Bungie on the scope of the
asserted patents, how the claims of the asserted patents read on the accused products or Destiny, and
Bungie’s decision to challenge the patents in IPR. Such communications would be relevant to
Defendants’ infringement. And if those communications demonstrate Defendants’ knowledge that
they infringed the asserted patents while continuing to release new Call of Duty and World of
Warcraft titles containing the accused features, then those communications are also relevant to
willful infringement. See Halo Electronics, Inc. v. Pulse Electronics, Inc. 136 S. Ct. 1923, 1933
(2016) (“the subjective willfulness of a patent infringer, intentional or knowing, may warrant
enhanced damages, without regard to whether his infringement was objectively reckless.”).
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 4 of 8
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IV. RESPONSIVE DOCUMENTS ARE RELEVANT TO THE SCOPE OF ESTOPPEL
Under 35 U.S.C. § 315(e)(2), an RPI is estopped from asserting not just the art and grounds
that were raised in an IPR, but also “any ground that the petitioner … could have raised during that
[IPR].” Worlds’ RFP Nos. 128, 130, 133, and 139 all bear on the factual component of whether
Bungie could have raised other grounds in its IPRs, and therefore on the scope of prior art estoppel.
V. RESPONSIVE DOCUMENTS ARE RELEVANT TO DAMAGES
Worlds’ RFPs are also relevant to damages. RFP No. 136 seeks “documents referring or
relating to communications between YOU and BUNGIE related to indemnification or other
warranty or agreement to indemnify (or the lack thereof), or receiving indemnification or other
warranty against any claim for infringement by DESTINY.” Dkt. 294-1 at 9. Given that Bungie
filed its IPRs only after Destiny was identified in correspondence from Worlds, it is likely that
communications responsive to RFP No. 136 exist, including Activision’s communication of
Worlds’ letter regarding the Destiny game to Bungie (see also Dkt. 294-1 at 8 (RFP No. 129
directed to communications related to this letter)), discussions of what forms Bungie’s
indemnification might take, and Bungie’s decision to file IPRs against the very claims and
patents asserted against Defendants. Those communications may include discussions relevant to
damages, such as the value of this case, what Bungie might have been willing to pay for a license
to Worlds’ patents, or an agreed-upon budget to pursue Bungie’s IPRs.
VI. RESPONSIVE DOCUMENTS ARE RELEVANT TO “EXCEPTIONAL CASE”
Prior to the January 13, 2021 hearing, Defendants and their business partner Bungie insisted
for years that Defendants were unequivocally not an RPI. Even if Defendants’ late concession on
this issue confirms that Defendants knew they were an RPI all along, discovery is still needed to
confirm that Defendants’ prior denials of their RPI status were made in subjective bad faith or were
objectively baseless, and that this case is an “exceptional case.” See Octane Fitness, LLC v. ICON
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 5 of 8
6
Health & Fitness, Inc., 572 U.S. 545 (2014). RFP No. 138 asks Defendants to produce documents
that tend to “negate any assertion” that Defendants were an RPI. Dkt. 294-1 at 9-10. If there are no
documents responsive to this request, then Defendants’ denials of their RPI status have been
unfounded and objectively baseless. Similarly, if Defendants possess no common interest
agreement with Bungie for the requested communications (see Dkt. 294-1 at 10-11 (RFP No. 143)),
that lack of evidence would refute their recent claim of a common interest privilege with Bungie.
Moreover, Defendants’ sudden about-face on their RPI status, once there was a chance that
they would be ordered to produce relevant documents, already hints at an exceptional case, but the
exceptional case analysis also weighs the degree of the misconduct. Octane Fitness, 572 U.S. at
554 (considering the “unreasonable manner in which the case was litigated.”). Worlds’ RFPs are
relevant to the degree of Defendants’ prior conduct of hiding their IPR status to violate the IPR
time-bar limitations of 35 U.S.C. § 315(b) and to attempt to gain two bites at the invalidity apple.
As noted above, Defendants previously represented to this Court that they are not an RPI to
Bungie’s petitions (see, e.g., Dkt. 242 at 7), and failed to reveal their RPI status to the Court or to
Worlds when asking this Court to stay the litigation pending Bungie’s IPR proceedings. Under
these circumstances, Defendants should not be able to sterilize their behavior by conceding RPI
status. They should be required to produce their prejudicial documents relevant to their
involvement in Bungie’s IPRs and their efforts to hide their RPI status from Worlds and this Court.
Each of RFP Nos. 128-143 is indisputably relevant to Defendants’ knowledge in 2015 that
they were an RPI to Bungie’s IPR petitions, and each RFP is also relevant to the exceptional case
evaluation.
VII. CONCLUSION
For these reasons, Worlds respectfully asks that the Court deny Defendants’ Motion, and
instead Order Defendants to respond to Worlds’ RFP Nos. 128-143.
Case 1:12-cv-10576-DJC Document 318 Filed 01/15/21 Page 6 of 8
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Dated: January 15, 2021 Respectfully submitted,
/s/ Wayne M. Helge
Wayne M. Helge (pro hac vice)
My guess is motion denied because as stated in the first line of the judges scheduling order issued today
SCHEDULING ORDER
Upon motion of the parties, and upon good cause shown, the court enters the following
schedule for this action:
Another win for WDDD
Sorry no time to clean it up but this is the docket report from Dec 11 2020 up to today
12/11/2020 23 Response in Opposition to Motion, filed by Worlds Inc., re 22 Opposed MOTION to Stay Case Pending Inter Partes Review of the Patent-in-Suit filed by Defendant Microsoft Corporation (Attachments: # 1 Ex A Multimedia Content Management LLC v. DISH Network L.L.C., Dkt 73, # 2 Ex B Affinity Labs of Texas, LLC v. Netflix, Inc., Dkt 95, # 3 Ex C WDTX-6-20-cv-00200-20200802, # 4 Ex D WDTX-7-18-cv-00147-20200722, # 5 Proposed Order)(Loveless, Ryan) (Entered: 12/11/2020)
12/11/2020 24 STATUS REPORT as to Case Readiness by Worlds Inc.. (Loveless, Ryan) (Entered: 12/11/2020)
12/17/2020 25 NOTICE of Filing of Petition for Inter-Partes Review by Worlds Inc. (Etheridge, James) (Entered: 12/17/2020)
12/18/2020 26 REPLY to Response to Motion, filed by Microsoft Corporation, re 22 Opposed MOTION to Stay Case Pending Inter Partes Review of the Patent-in-Suit filed by Defendant Microsoft Corporation (Attachments: # 1 Exhibit 13, # 2 Exhibit 14, # 3 Exhibit 15, # 4 Exhibit 16, # 5 Exhibit 17)(Shelton, Barry) (Entered: 12/18/2020)
12/18/2020 27 Response in Opposition to Motion, filed by Worlds Inc., re 21 Motion to Dismiss for Failure to State a Claim filed by Defendant Microsoft Corporation (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit)(Loveless, Ryan) (Entered: 12/18/2020)
12/21/2020 28 NOTICE of Compliance Regarding Service of Preliminary Infringement Contentions by Worlds Inc. (Etheridge, James) (Entered: 12/21/2020)
12/28/2020 29 REPLY to Response to Motion, filed by Microsoft Corporation, re 21 Motion to Dismiss for Failure to State a Claim filed by Defendant Microsoft Corporation (Shelton, Barry) (Entered: 12/28/2020)
01/11/2021 30 Joint MOTION for Entry of Disputed Amended Scheduling Order by Worlds Inc.. (Attachments: # 1 Exhibit A - Proposed Scheduling Order)(Etheridge, James) (Entered: 01/11/2021)
01/15/2021 31 SCHEDULING ORDER: Markman Hearing set for 6/11/2021 09:30 AM before Judge Alan D Albright. Joinder of Parties due by 7/23/2021. Amended Pleadings due by 10/2/2021. Motions due by 12/20/2021. Pretrial Conference set for 2/21/2022 before Judge Alan D Albright. Jury Selection and Jury Trial set for 3/14/2022 before Judge Alan D Albright. Motions terminated: 30 Joint MOTION for Entry of Disputed Amended Scheduling Order filed by Worlds Inc.. Signed by Judge Alan D Albright. (am) (Entered: 01/15/2021)
With this new scheduling order issued and signed by the Judge can we
assume the motion to stay the case pending IPR outcome has been denied.
Anybody?????
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
WORLDS INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.
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Case No. 6:20-cv-872-ADA
SCHEDULING ORDER
Upon motion of the parties, and upon good cause shown, the court enters the following
schedule for this action:
Deadline Item
12/21/2020
Plaintiff serves preliminary[1] infringement contentions in the form of a
chart setting forth where in the accused product(s) each element of the
asserted claim(s) are found. Plaintiff shall also identify the earliest
priority date (i.e. the earliest date of invention) for each asserted claim
and produce: (1) all documents evidencing conception and reduction to
practice for each claimed invention, and (2) a copy of the file history for
each patent in suit.
[1] The parties may amend preliminary infringement contentions and
preliminary invalidity contentions without leave of court so long as
counsel certifies that it undertook reasonable efforts to prepare its
preliminary contentions and the amendment is based on material
identified after those preliminary contentions were served, and should do
so seasonably upon identifying any such material. Any amendment to add
patent claims requires leave of court so that the Court can address any
scheduling issues.
1/11/2021
The Parties shall submit an agreed Scheduling Order. If the parties cannot
agree, the parties shall submit a separate Joint Motion for entry of each
Order briefly setting forth their respective positions on items where they
cannot agree. Absent agreement of the parties, the Plaintiff shall be
responsible for the timely submission of this and other Joint filings
Case 6:20-cv-00872-ADA Document 31 Filed 01/15/21 Page 1 of 5
– 7 –
Deadline Item
1/11/2021 Deadline for Motions to Transfer
2/15/2021
Defendant serves preliminary invalidity contentions in the form of (1) a
chart setting forth where in the prior art references each element of the
asserted claim(s) are found, (2) an identification of any limitations the
Defendant contends are indefinite or lack written description under
section 112, and (3) an identification of any claims the Defendant
contends are directed to ineligible subject matter under section 101.
Defendant shall also produce (1) all prior art referenced in the invalidity
contentions, and (2) technical documents, including software where
applicable, sufficient to show the operation of the accused product(s)
No sales summaries need be produced on this date.
3/5/2021 Parties exchange claim terms for construction.
3/19/2021 Parties exchange proposed claim constructions.
4/2/2021
Parties disclose extrinsic evidence. The parties shall disclose any
extrinsic evidence, including the identity of any expert witness they may
rely upon with respect to claim construction or indefiniteness. With
respect to any expert identified, the parties shall identify the scope of the
topics for the witness’s expected testimony.[2] With respect to items of
extrinsic evidence, the parties shall identify each such item by production
number or produce a copy of any such item if not previously produced.
[2] Any party may utilize a rebuttal expert in response to a brief where
expert testimony is relied upon by the other party.
4/2/2021 Deadline to meet and confer to narrow terms in dispute and exchange
revised list of terms/constructions.
4/9/2021 Plaintiff files Opening claim construction brief, including any arguments
that any claim terms are indefinite.
4/30/2021 Defendant files Responsive claim construction brief.
Case 6:20-cv-00872-ADA Document 31 Filed 01/15/21 Page 2 of 5
– 8 –
Deadline Item
5/14/2021 Plaintiff files Reply claim construction brief.
5/28/2021 Defendant files Sur-Reply claim construction brief.
5/31/2021
Parties submit Joint Claim Construction Statement.
See General Issues Note #8 regarding providing copies of the briefing to
the Court and the technical adviser (if appointed).
6/4/2021
Parties submit optional technical tutorials to the Court and technical
adviser (if appointed).[3]
[3] The parties should contact the law clerk to request a Box link so that
the party can directly upload the file to the Court’s Box account.
6/11/2021 Markman Hearing at 9:30 a.m. for one hour
6/12/2021 Fact Discovery opens; deadline to serve Initial Disclosures per Rule
26(a).
7/23/2021 Deadline to add parties.
8/6/2021
Deadline to serve Final Infringement and Invalidity Contentions. After
this date, leave of Court is required for any amendment to Infringement
or Invalidity contentions. This deadline does not relieve the Parties of
their obligation to seasonably amend if new information is identified after
initial contentions.
10/2/2021
Deadline to amend pleadings. A motion is not required unless the
amendment adds patents or patent claims. (Note: This includes
amendments in response to a 12(c) motion.)
9/13/2021
Deadline for the first of two meet and confers to discuss significantly
narrowing the number of claims asserted and prior art references at issue.
Unless the parties agree to the narrowing, they are ordered to contact the
Court’s Law Clerk to arrange a teleconference with the Court to resolve
the disputed issues.
10/11/2021 Close of Fact Discovery
10/18/2021 Opening Expert Reports
11/15/2021 Rebuttal Expert Reports
12/6/2021 Close of Expert Discovery
Case 6:20-cv-00872-ADA Document 31 Filed 01/15/21 Page 3 of 5
– 9 –
Deadline Item
12/13/2021
Deadline for the second of two meet and confer to discuss narrowing the
number of claims asserted and prior art references at issue to triable
limits. To the extent it helps the parties determine these limits, the parties
are encouraged to contact the Court’s Law Clerk for an estimate of the
amount of trial time anticipated per side. The parties shall file a Joint
Report within 5 business days regarding the results of the meet and
confer.
12/20/2021
Dispositive motion deadline and Daubert motion deadline.
See General Issues Note #8 regarding providing copies of the briefing to
the Court and the technical adviser (if appointed).
1/3/2022 Serve Pretrial Disclosures (jury instructions, exhibits lists, witness lists,
discovery and deposition designations).
1/17/2022 Serve objections to pretrial disclosures/rebuttal disclosures.
1/24/2022 Serve objections to rebuttal disclosures and File Motions in-limine.
1/31/2022
File Joint Pretrial Order and Pretrial Submissions (jury instructions,
exhibits lists, witness lists, discovery and deposition designations); file
oppositions to motions in limine.
2/7/2022
File Notice of Request for Daily Transcript or Real Time Reporting. If a
daily transcript or real time reporting of court proceedings is requested
for trial, the party or parties making said request shall file a notice with
the Court and e-mail the Court Reporter, Kristie Davis at
kmdaviscsr@yahoo.com
Deadline to meet and confer regarding remaining objections and disputes
on motions in limine.
2/18/2022 File joint notice identifying remaining objections to pretrial disclosures
and disputes on motions in-limine.
2/21/2022 Final Pretrial Conference. The Court expects to set this date at the
conclusion of the Markman Hearing.
3/14/2022 Jury Selection/Trial. The Court expects to set this date at the conclusion
of the Markman Hearing.
Case 6:20-cv-00872-ADA Document 31 Filed 01/15/21 Page 4 of 5
– 10 –
ORDERED this _____ day of ____________, 2021.
_____________________________
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE
All dates posted above have recently been pushed out
5 weeks or so read through my posts the new times are there
Would love to hear from any of the legal eagles on this board about the hearing
Motion to compel discovery went well in my opinion
Judge had Atvi admit to being an RPI for the purposes of this case only and
Helge said sorry not good enough we need that discovery it goes to damages and WILLFULNESS. ATVI said Worlds wants too much irrelevant to the case and Worlds said the discovery is necessary. Judge didn't want to allow a fishing expedition but very clearly knew ATVI was up to all the dirty RPI tricks with delay. Judge even empathized on the frustration at all the delays. Now a 3-5 page brief to the judge from Helge in the next couple of days to further clarifying why this discovery at this time late in the case is so necessary. Atvi will have a day or two to respond and the judge said he will rule quickly. Estopple was danced around all day as an aside.
Ruling by next Friday I would guess.
this is the disputed portion
02/15/2021
PLAINTIFF’S POSITION: Defendant shall also produce summary,
annual sales information for the accused product(s) for the two years
preceding the expiration of the patent-in-suit.
DEFENDANT’S POSITION: No sales summaries need be produced on
this date.
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
WORLDS INC.,
Plaintiff,
v.
MICROSOFT CORPORATION;
Defendant.
CIVIL ACTION NO. 6:20-cv-872-ADA
JOINT MOTION FOR ENTRY OF DISPUTED
AMENDED SCHEDULING ORDER
TO THE HONORABLE COURT:
Pursuant to the Court’s OGP Version 3.2 (“OGP 3.2”), the Parties jointly submit this
disputed scheduling order. The only dispute concerns whether Defendant should be required to
produce the summary sales information listed in Paragraph 5 of OGP 3.2. Each sides’ respective
position is set forth below, followed by a proposed schedule set forth in Exhibit A, with highlighted
text indicating the Parties’ dispute.
Plaintiff’s Position
Consistent with the Court’s Order Governing Proceedings – Patent Case (Ver. 3.2), on the
deadline date corresponding to “7 weeks after CMC”—February 15, 2021 in this case—Plaintiff
proposes that Defendant serves, along with the other required disclosures for this entry:
(3) summary, annual sales information for the accused product(s) for the two years
preceding the expiration of the ’501 patent at issue in this case.
See OGP 3.2 at 2 n.1. This disclosure is consistent with the requirements of OGP 3.2. Paragraph
5 of OGP 3.2 states the following:
Case 6:20-cv-00872-ADA Document 30 Filed 01/11/21 Page 1 of 4
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Defendant shall also produce . . . summary, annual sales information for the accused
product(s) for the two years preceding the filing of the Complaint,1
unless the
parties agree to some other timeframe.
Footnote 1 states:
With regard to expired patents, the sales information shall be provided for the two
years preceding expiration.
In the Parties’ meet and confer to discuss this issue, held on January 7, 2021,
Defendant indicated that it need not comply with OGP 3.2’s summary sales information
requirement because the Court is considering making such a requirement optional in a
future version of its OGP. However, to Plaintiff’s knowledge, the OGP has not yet been
updated to modify or delete this required disclosure. Plaintiff is guided by the Court’s
current Orders, including OGP 3.2.
Confirming the usefulness of an early sales disclosure by Defendant, during the
Parties’ meet and confer, Defendant disputed Plaintiff’s understanding of Defendant’s
publicly-disclosed sales data. See, e.g. Dkt. 1-25 (reporting Microsoft’s sales
announcements concerning accused product Minecraft). Defendant was unwilling to
confirm or deny whether such publicly-available sales numbers were correct, and disputed
whether such sales numbers were applicable to the accused products in this case.
Plaintiff also submits that accurate and early disclosure of sales data for the two
years preceding expiration of the patent-in-suit could facilitate settlement discussions
between the parties, and therefore could conserve judicial resources.
Finally, during the meet and confer, Defendant indicated that it might have
alternative proposals, and Plaintiff was willing to consider any alternative proposals. But
Defendant ultimately presented no alternatives for Plaintiff to review in the intervening
days.
Case 6:20-cv-00872-ADA Document 30 Filed 01/11/21 Page 2 of 4
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Defendant’s Position
Defendant requests to be relieved from the requirement of submitting summary sales
information in connection with the invalidity contentions.
Summary sales of the Accused Products without the context of other damages discovery
will be meaningless in this case. It will not foster settlement and may have the opposite effect.
Indeed, both parties agree that there are at least two non-infringing modes of operation for the
Accused Products (1) single player mode; and/or (2) using default (not customized) avatars.
Thus, the royalty base for damages will not be the same as the summary sales of the Accused
Products. Further, Plaintiff’s asserted claims are directed to a narrow networking feature that
does not drive demand of the Accused Products. Without the full scope of damages discovery
regarding consumer demand, the summary sales will not be useful.
Moreover, there is no counterpart requirement for Plaintiff. If the Court orders Defendant
to produce summary sales despite the foregoing, Defendant requests that Plaintiff be required to
produce forthwith all agreements concerning the patent-in-suit and its related family members,
including patent license agreements.
DATED: January 11, 2021
Of Counsel:
DAVIDSON BERQUIST JACKSON & GOWDEY,
LLP
ETHERIDGE LAW GROUP, PLLC
Wayne M. Helge (Pro Hac Vice)
Alan A. Wright (Pro Hac Vice)
Donald L. Jackson (Pro Hac Vice)
James T. Wilson (Pro Hac Vice)
8300 Greensboro Drive, Suite 500
McLean, VA 22102
/s/ James L. Etheridge
James L. Etheridge, TX Bar No. 24059147
Ryan S. Loveless, TX Bar No. 24036997
2600 E. Southlake Blvd., Suite 120 / 324
Southlake, TX 76092
Tel.: (817) 470-7249
Jim@EtheridgeLaw.com
Case 6:20-cv-00872-ADA Document 30 Filed 01/11/21 Page 3 of 4
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Tel: (571) 765-7700
whelge@dbjg.com
awright@dbjg.com
djackson@dbjg.com
jwilson@dbjg.com
Attorneys for Plaintiff Worlds, Inc.
FAEGRE, DRINKER BIDDLE &
REATH, LLP
Kirstin Stoll-DeBell (Pro Hac Vice)
1144 15th Street, Suite 3400
Denver, CO 80202
Kirstin.StollDebell@faegredrinker.com
(303) 607-3500 (Telephone)
Carrie A. Beyer (Pro Hac Vice)
191 N. Wacker Dr., Suite 3700
Chicago, IL 60606
Carrie.Beyer@faegredrinker.com
(312) 569-1000 (Telephone)
Bethany N. Mihalik (Pro Hac Vice)
1500 K Street NW, Suite 1100
Washington, DC 20005
Bethany.Mihalik@faegredrinker.com
(202) 842-8800 (Telephone)
Kirsten L. Elfstrand (Pro Hac Vice)
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
Kirsten.Elfstrand@faegredrinker.com
(612) 766-7000 (Telephone)
SHELTON COBURN LLP
/s/ Barry K. Shelton
Barry K. Shelton
Texas State Bar No. 24055029
311 RR 620, Suite 205
Austin, TX 78734-4775
bshelton@sheltoncoburn.com
(512) 263-2165 (Telephone)
(512) 263-2166 (Facsimile)
Attorneys for Microsoft Corporation
CERTIFICATE OF SERVICE
I certify that the foregoing document was served upon all counsel of record via the Court's
CM/ECF electronic filing system in accordance with the Federal Rules of Civil Procedure on
January 11, 2021.
/s/ James L. Etheridge
James L. Etheridge
Case 6:20-cv-00872-ADA Document 30 Filed 01/11/21 Page 4 of 4
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EXHIBIT A
Case 6:20-cv-00872-ADA Document 30-1 Filed 01/11/21 Page 1 of 6
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
WORLDS INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.
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Case No. 6:20-cv-872-ADA
[PROPOSED] SCHEDULING ORDER
Upon motion of the parties, and upon good cause shown, the court enters the following
schedule for this action:
Deadline Item
12/21/2020
Plaintiff serves preliminary[1] infringement contentions in the form of a
chart setting forth where in the accused product(s) each element of the
asserted claim(s) are found. Plaintiff shall also identify the earliest
priority date (i.e. the earliest date of invention) for each asserted claim
and produce: (1) all documents evidencing conception and reduction to
practice for each claimed invention, and (2) a copy of the file history for
each patent in suit.
[1] The parties may amend preliminary infringement contentions and
preliminary invalidity contentions without leave of court so long as
counsel certifies that it undertook reasonable efforts to prepare its
preliminary contentions and the amendment is based on material
identified after those preliminary contentions were served, and should do
so seasonably upon identifying any such material. Any amendment to add
patent claims requires leave of court so that the Court can address any
scheduling issues.
1/11/2021
The Parties shall submit an agreed Scheduling Order. If the parties cannot
agree, the parties shall submit a separate Joint Motion for entry of each
Order briefly setting forth their respective positions on items where they
cannot agree. Absent agreement of the parties, the Plaintiff shall be
responsible for the timely submission of this and other Joint filings
Case 6:20-cv-00872-ADA Document 30-1 Filed 01/11/21 Page 2 of 6
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Deadline Item
1/11/2021 Deadline for Motions to Transfer
2/15/2021
Defendant serves preliminary invalidity contentions in the form of (1) a
chart setting forth where in the prior art references each element of the
asserted claim(s) are found, (2) an identification of any limitations the
Defendant contends are indefinite or lack written description under
section 112, and (3) an identification of any claims the Defendant
contends are directed to ineligible subject matter under section 101.
Defendant shall also produce (1) all prior art referenced in the invalidity
contentions, and (2) technical documents, including software where
applicable, sufficient to show the operation of the accused product(s)
PLAINTIFF’S POSITION: Defendant shall also produce summary,
annual sales information for the accused product(s) for the two years
preceding the expiration of the patent-in-suit.
DEFENDANT’S POSITION: No sales summaries need be produced on
this date.
3/5/2021 Parties exchange claim terms for construction.
3/19/2021 Parties exchange proposed claim constructions.
4/2/2021
Parties disclose extrinsic evidence. The parties shall disclose any
extrinsic evidence, including the identity of any expert witness they may
rely upon with respect to claim construction or indefiniteness. With
respect to any expert identified, the parties shall identify the scope of the
topics for the witness’s expected testimony.[2] With respect to items of
extrinsic evidence, the parties shall identify each such item by production
number or produce a copy of any such item if not previously produced.
[2] Any party may utilize a rebuttal expert in response to a brief where
expert testimony is relied upon by the other party.
4/2/2021 Deadline to meet and confer to narrow terms in dispute and exchange
revised list of terms/constructions.
4/9/2021 Plaintiff files Opening claim construction brief, including any arguments
that any claim terms are indefinite.
4/30/2021 Defendant files Responsive claim construction brief.
Case 6:20-cv-00872-ADA Document 30-1 Filed 01/11/21 Page 3 of 6
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Deadline Item
5/14/2021 Plaintiff files Reply claim construction brief.
5/28/2021 Defendant files Sur-Reply claim construction brief.
5/31/2021
Parties submit Joint Claim Construction Statement.
See General Issues Note #8 regarding providing copies of the briefing to
the Court and the technical adviser (if appointed).
6/4/2021
Parties submit optional technical tutorials to the Court and technical
adviser (if appointed).[3]
[3] The parties should contact the law clerk to request a Box link so that
the party can directly upload the file to the Court’s Box account.
6/11/2021 Markman Hearing at 9:30 a.m. for one hour
6/12/2021 Fact Discovery opens; deadline to serve Initial Disclosures per Rule
26(a).
7/23/2021 Deadline to add parties.
8/6/2021
Deadline to serve Final Infringement and Invalidity Contentions. After
this date, leave of Court is required for any amendment to Infringement
or Invalidity contentions. This deadline does not relieve the Parties of
their obligation to seasonably amend if new information is identified after
initial contentions.
10/2/2021
Deadline to amend pleadings. A motion is not required unless the
amendment adds patents or patent claims. (Note: This includes
amendments in response to a 12(c) motion.)
9/13/2021
Deadline for the first of two meet and confers to discuss significantly
narrowing the number of claims asserted and prior art references at issue.
Unless the parties agree to the narrowing, they are ordered to contact the
Court’s Law Clerk to arrange a teleconference with the Court to resolve
the disputed issues.
10/11/2021 Close of Fact Discovery
10/18/2021 Opening Expert Reports
11/15/2021 Rebuttal Expert Reports
12/6/2021 Close of Expert Discovery
Case 6:20-cv-00872-ADA Document 30-1 Filed 01/11/21 Page 4 of 6
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Deadline Item
12/13/2021
Deadline for the second of two meet and confer to discuss narrowing the
number of claims asserted and prior art references at issue to triable
limits. To the extent it helps the parties determine these limits, the parties
are encouraged to contact the Court’s Law Clerk for an estimate of the
amount of trial time anticipated per side. The parties shall file a Joint
Report within 5 business days regarding the results of the meet and
confer.
12/20/2021
Dispositive motion deadline and Daubert motion deadline.
See General Issues Note #8 regarding providing copies of the briefing to
the Court and the technical adviser (if appointed).
1/3/2022 Serve Pretrial Disclosures (jury instructions, exhibits lists, witness lists,
discovery and deposition designations).
1/17/2022 Serve objections to pretrial disclosures/rebuttal disclosures.
1/24/2022 Serve objections to rebuttal disclosures and File Motions in-limine.
1/31/2022
File Joint Pretrial Order and Pretrial Submissions (jury instructions,
exhibits lists, witness lists, discovery and deposition designations); file
oppositions to motions in limine.
2/7/2022
File Notice of Request for Daily Transcript or Real Time Reporting. If a
daily transcript or real time reporting of court proceedings is requested
for trial, the party or parties making said request shall file a notice with
the Court and e-mail the Court Reporter, Kristie Davis at
kmdaviscsr@yahoo.com
Deadline to meet and confer regarding remaining objections and disputes
on motions in limine.
2/18/2022 File joint notice identifying remaining objections to pretrial disclosures
and disputes on motions in-limine.
2/21/2022 Final Pretrial Conference. The Court expects to set this date at the
conclusion of the Markman Hearing.
3/14/2022 Jury Selection/Trial. The Court expects to set this date at the conclusion
of the Markman Hearing.
Case 6:20-cv-00872-ADA Document 30-1 Filed 01/11/21 Page 5 of 6
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ORDERED this _____ day of ____________, 2021.
_____________________________
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE
Status Conference rescheduled by Casper looks to be in the exact same position as before right after narrowing of prior art
Not the actions of a Judge who is about to issue a 101 ruling against Worlds in my opinion.
ELECTRONIC NOTICE OF RESCHEDULING
This hearing will be conducted by video conference. Counsel of record will receive a video conference invite at the email registered in CM/ECF. If you have technical or compatibility issues with the technology, please notify the session's courtroom deputy as soon as possible.
Access to the hearing will be made available to the media and public. In order to gain access to the hearing, you must sign up at the following address: https://forms.mad.uscourts.gov/courtlist.html.
For questions regarding access to hearings, you may refer to the Court's general orders and public notices available on www.mad.uscourts.gov or contact media@mad.uscourts.gov.
Status Conference set for 3/15/2021 02:00 PM in Remote Proceeding : Boston before Judge Denise J. Casper. (Hourihan, Lisa) (Entered: 01/12/2021)
Judge Denise J. Casper: ELECTRONIC ORDER entered granting 299 Motion to Amend Schedule. Fact discovery to be completed by 2/18/21. Worlds Narrowing of Asserted Claims 2/25/21. Activision's Narrowing of Prior Art by 3/11/21. Opening Expert Reports by 3/25/21. Rebuttal Expert Reports by 4/29/21. Close of Expert Discovery by 5/20/21. Dispositive Motions and Daubert Motions by 6/17/21. Opposition to Dispositive Motions and Daubert Motions by 7/15/21. Reply Briefs in Support of Dispositive and Daubert Motions by 7/29/21. (Hourihan, Lisa) (Entered: 01/07/2021)
Judge Denise J. Casper: ELECTRONIC ORDER entered. REFERRING CASE to Magistrate Judge Donald L. Cabell Referred for: Events Only (e). Motions referred: [296] MOTION to Compel DISCOVERY REGARDING DEFENDANTS NEW PRODUCTS, [292] MOTION fo
No
It's because of Discovery they
need more time to depose people and
go through Docs because Activision
has been resisting turning over discovery
items requested
It appears both parties have agreed to
push all future scheduled dates by about a month each
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
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Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
JOINT MOTION TO AMEND THE SCHEDULING ORDER
Plaintiff Worlds, Inc. (“Worlds”) and Defendants Activision Blizzard, Inc., Blizzard
Entertainment, Inc., and Activision Publishing, Inc. (collectively, “Activision”) respectfully and
jointly request to extend the following pre-trial deadlines set forth in the Scheduling Order, Dkt.
264:
Case 1:12-cv-10576-DJC Document 299 Filed 12/21/20 Page 1 of 5
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EVENT CURRENT DEADLINE PROPOSED DATE
Close of Fact Discovery January 14, 2021 February 18, 2021
Worlds’ Narrowing of Asserted
Claims January 21, 2021 February 25, 2021
Activision’s Narrowing of Prior Art February 4, 2021 March 11, 2021
Status Conference February 8, 2021 March 15, 2021, or at
the Court’s convenience
Opening Expert Reports February 18, 2021 March 25, 2021
Rebuttal Expert Reports March 25, 2021 April 29, 2021
Close of Expert Discovery April 15, 2021 May 20, 2021
Dispositive Motions & Daubert
Motions May 13, 2021 June 17, 2021
Opposition to Dispositive Motions
& Daubert Motions June 10, 2021 July 15, 2021
Reply Briefs in Support of
Dispositive & Daubert Motions June 24, 2021 July 29, 2021
The parties respectfully submit that good cause exists for this requested extension. The parties
have been negotiating on numerous discovery disputes. Although the parties have brought certain
limited issues to the Court’s attention in separate filings, the parties were able to reach agreement
on many issues. The additional time for fact discovery is now needed to accommodate the
schedules of the parties and their deposition witnesses, including around the holidays, and to allow
for resolution of certain discovery issues. This Motion does not seek to alter the schedule in this
action in any respects other than the deadlines listed above.
Case 1:12-cv-10576-DJC Document 299 Filed 12/21/20 Page 2 of 5
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Respectfully submitted this 21st day of December, 2020.
IT IS SO ORDERED:
Date The Honorable Denise J. Casper
United States District Judge
I know it’s exhibit A in their reply
Part of Worlds response to DENY A Stay of proceedings
Came out today
Exhibit A
In the case vs Microsoft
Notice the Judges name at the bottom
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
MULTIMEDIA CONTENT §
MANAGEMENT LLC, §
Plaint §
§
v. §
§
DISH NETWORK L.L.C., §
Defendant. §
CIVIL NO. 6:18-C V-00207-ADA
p1
ORDER DENYING MOTION TO STAY PENDING INTER PARTES REVIEW OF U.S.
PATENT NUMBERS 8,799A68 AND 9,465g925
Before the Court is Defendant Dish Network L.L.C.'s Opposed Motion to Stay Pending
Inter Partes Review of U.S. Patent Nos. 8,799,468 and 9,465,925. Document Number 67.
Plaintiff Multimedia Content Management LLC filed a Response on May 21, 2019. Document
Number 69. Dish filed a Reply on May 28, 2019. Document Number 71. After carefully
reviewing the Parties' briefs, the Court finds that Dish's Opposed Motion to Stay should be
denied for the following reasons.
Background
On July 25, 2018, MCM filed this action against Dish alleging the infringement of two
patents: U.S. Patent Nos. 8,799,468 and 9,465,925 (the "468 Patent" and the "925 Patent"
respectively). In Dish's Motion to Stay, Dish urges the Court to stay the proceedings in this
litigation for six months on the basis that it is seeking an Inter Partes Review ("IPR") which has
yet to be instituted. Def.'s Mot. at 1. On April 23, 2019, Dish filed two IPR petitions against all
asserted claims of the '468 Patent and the '925 Patent. As such, Dish seeks a short stay until the
United States Patent Trial and Appeal Board's ("PTAB") institution decisions, which are due by
1
Case 6:20-cv-00872-ADA Document 23-1 Filed 12/11/20 Page 2 of 8 Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 1 of 7
November 2019 and thereafter during the pendency of any instituted PTAB proceeding.
Moreover, Dish has stated that should the PTAB not institute as to all challenged claims, then the
Court can revisit the stay in November 2019.
Legal Standard
A district court has the inherent power to control its own docket, including the power to
stay proceedings before it. See Clinton v. Jones, 520 U.S. 681, 706 (1997) ("The District Court
has broad discretion to stay proceedings as an incident to its power to control its own docket.").
flow to best manage the court's docket "calls for the exercise of judgment, which must weigh
competing interests and maintain an even balance." Landis v. N Am. Co., 299 U.S. 248, 254-55
(1936); Gonzalez v. Infostream Grp., Inc., Case No. 2:14-CV-906, 2015 WL 12910770, at *1
(E.D. Tex. Mar. 2, 2015). In particular, the question whether to stay proceedings pending inter
partes review of a patent is a matter committed to the district court's discretion. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). A stay is particularly justified when "the
outcome of a PTO proceeding is likely to assist the court in determining patent validity or
eliminate the need to try infringement issues." Evolutionary Intelligence, LLC v. Millennial
Media, Inc., No. 5:13-CV-4206, 2014 WL 2738501, at *2 (N.D. Cal. June 11, 2014); see also
3rd Eye Surveillance, LLC v. Stealth Monitoring, Inc., No. 6:1 4-CV- 162, 2015 WL 179000, at
*1 (E.D. Tex. Jan. 14, 2015).
"District courts typically consider three factors when determining whether to grant a stay
pending inter partes review of a patent in suit: (1) whether the stay will unduly prejudice the
nonmoving party, (2) whether the proceedings before the court have reached an advanced stage,
including whether discovery is complete and a trial date has been set, and (3) whether the stay
will likely result in simplif'ing the case before the court." NFC Techs. LLC v. HTC Am., Inc.,
Case 6:20-cv-00872-ADA Document 23-1 Filed 12/11/20 Page 3 of 8 Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 2 of 7
No. 2:13-CV-1058-WCB, 2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015). "Essentially,
courts determine whether the benefits of a stay outweigh the inherent costs based on these
factors." EchoStar Techs. Corp. v. TiVo, Inc., No. 5:05-CV-81, 2006 WL 2501494, at *1 (E.D.
Tex. July 14, 2006).
Analysis
1. Relevant Facts
There can be no dispute that both parties have already expended considerable time and
resources into the claim construction process. In fact, the Court has already conducted a
Markman hearing, which was held on April 26, 2019. At the end of this hearing, the Court
informed the Parties of how it was construing the disputed claim terms.
Furthermore, the Court finds that Dish could have filed its IPR Petitions more quickly.
Instead, Dish elected to file their Petitions long after suit was filed and even waited until after the
Markman hearing. The Court does not intend to critique Dish's decisionDish was free to
choose when to file for the IPRs. However, having waited this long to file is a factor that the
Court will consider.
Moreover, the Court finds that the Parties should have been on notice that the Court
anticipated that discovery would commence very quickly after the completion of the Markman
hearing, which is made evident from the Court's form scheduling order with respect to patent
cases. Finally, the Court has set this case for jury trial on July 20, 2020. It is unlikely that,
assuming institution, the PTAB's final written decisions in Dish's IPRs will be due, without any
extension, any earlier than one year after the Institution Decision, which is November 15, 2020.
3
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2. Undue Prejudice
Dish argues that MCM will not suffer undue prejudice from a stay; however, the Court
disagrees for the following reasons. As a patent holder, MCM has "an interest in the timely
enforcement of its patent right." MiMedx Group, Inc. v. Tissue Transplant Tech. Ltd., 2015 WL
11573771, at *2 (W.D. Tex. Jan 5, 2015) (internal citations omitted). Here, trial is set for July
2020; thus, a stay will prejudice MCM by depriving it of a timely jury trial in the summer of
2020. The Court doubts that Dish would disagree with this. While a November 15, 2019
institution decision deadline might mean a November 15, 2020 deadline for a final written
decisionassuming institution occursthere is uncertainty to this date. Although 35 U.S.C. §
31 6(a)(1 1) and 37 C.F.R. § 42.100 indicate that a final written decision should "normally" issue
no more than a year after the institution decision, they also state that the one-year period can be
extended up to six months for good cause. If this were to occur, then the November 15, 2020
deadline would be pushed to May 15, 2021, which is more than a year after the Court's predicted
trial date. Furthermore, this does not account for any potential Federal Circuit appeal of the final
written decisions, which would add even more time and therefore create an even longer delay. At
any rate, even under the best of scenarios, the final decision at the PTAB would come months
after the jury trial that is scheduled for July 2020. Accordingly, the Court concludes that this
factor weighs against granting a stay.
3. Stage of Proceedings
If "the court has expended significant resources, then courts have found that this factor
weighs against a stay." CAN VS Corp. v. US., 118 Fed. Cl. 587, 595-96 (2014) (quoting
Universal Elecs., Inc. v. Universal Remote Control, Inc., 943 F. Supp.2d 1028, 103 1-32 (C.D.
Cal. 2013) ("The Court's expenditure of resources is an important factor in evaluating the stage
Case 6:20-cv-00872-ADA Document 23-1 Filed 12/11/20 Page 5 of 8 Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 4 of 7
of the proceedings.")); SenoRx, Inc. v. Hologic, Inc., No. 12-173-LPS-CJB, 2013 WL 144255, at
*5 (D. Del. Jan. 11, 2013) ("{Once] the Court and the parties have already expended
significant resources . . . the principle of maximizing the use of judicial and litigant resources is
best served by seeing the case through to its conclusion."). As stated earlier, the Court has
invested significant resources and time in construing all the contested claim tenns. On the other
hand, the Court acknowledges that discovery has not yet begun, and that the Parties will incur
great expense in the future preparing for trial. However, the Court finds particularly critical, at
least in this case, Dish's delay in filing for a stay after the Parties had briefed and argued claim
construction at the Markman hearing. As such, the Court finds that this outweighs any future
expense that the Parties might incur.
The Court also considers "whether the defendant acted with reasonable dispatch in filing
its petitions for inter partes review and then, after the petitions were granted, in filing its motion
for a stay." NEC Tech. LLC v. HTC Am., Inc., No. 2:13-CV-1058-WCB, 2015 WL 1069111, at
*3 (E.D. Tex. March 11, 2015). As discussed above, Dish waited until long after MCM filed suit
and the conclusion of the Markman hearing to file its IPR petitions. Therefore, the Court finds
that Dish failed to act with reasonable dispatch in filing their petitions for inter partes review and
their subsequent motion to stay. In short, in view of the advanced nature of the Court's
proceedings, including the completion of the Markman hearing, the rendering of claim
constructions by the Court, and the fact that a jury trial has been set for July 2020, the Court
finds that this factor weighs against granting a stay
4. Simplification of Issues
"[T]he most important factor bearing on whether to grant a stay in this case is the
prospect that the inter partes review proceeding will result in simplification of issues before the
5
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Court." NEC Tech., 2015 WL 1069111 at *4 The Court finds that this factor strongly favors
denying a stay. At the time this Motion was filed, the IPR Petition had not been instituted or
denied by the PTAB; therefore, any simplification of the issues at trial after a PTAB decision
will likely be minimal. Moreover, Dish admits that since there is no guarantee that the PTAB
will grant institution, then there is no guarantee that granting a stay will simplify any issues in
this litigation. Thus, were the PTAB to ultimately deny institution, then the trial in this case
would be needlessly delayed. Admittedly, if the PTAB does grant institution, then there is the
possibility that some claims might be invalidated. As a result, Dish can argue nothing more than
that there is a potential simplification of issues that favors granting a stay.
Additionally, the Court finds that even if institution is granted, Dish's IPRs would not
simplify the issues in this case. The Court has already resolved the meaning of the claim terms as
a matter of law. However, in its IPR Petitions, Dish includes the claim constructions that they
proffered prior to the Court's Markman hearing instead of the Court's final constructions. Def.'s
Mot. Ex. A at 7-13; Id. Ex. B at 8-18. For example, in the IPR Petitions, Dish construes the
"selectively transmit" limitation of the asserted claims as "transmitting all content requests to
take place within the service provider network in response to the controller instructions' decision
to transmit the content requests." Id. Ex. A at 13. The Court, however, construed the "selectively
transmit" limitation differently than what Dish submitted in its IPR Petitions. This is also further
support for a determination that a grant of a stay at this point would result in unfair prejudice (see
factor one discussed in Part 2 of this Order). Accordingly, the Court finds that this factor strongly
weighs against granting a stay.
Case 6:20-cv-00872-ADA Document 23-1 Filed 12/11/20 Page 7 of 8 Case 6:18-cv-00207-ADA Document 73 Filed 05/30/19 Page 6 of 7
Conclusion
After considering the relevant factors and for the reasons stated above, the Court finds
that Defendant Dish Network L.L.C.'s Opposed Motion to Stay Pending Inter Partes Review of
U.S. Patent Nos. 8,799,468 and 9,465,925 should be and hereby is DENIED.
SIGNED this 30th day of May 2019.
Alan D Albright
UNITED STATES DISTRICT JUDGE
Quilt there is the 200k note to CASH Canadian American Hemp which
Is now Real Brands. I’ve looked everywhere for the number of shares of MRMD
Possibly the balance of the 590k is the Shares of MRMD which was
somewhere around $0.15 cents September 30th so maybe 3 or 4 million however a poster
On the board says his last correspondence with Thom was basically
All shares are gone and shouldn’t be considered in valuations anymore
So I like you am quite confused and trying to get to the bottom of it.
In the 690 patent claims 4,8,13 &16 survived PTAB
In the 558 patent claims 5 &7 survive PTAB
All patents have since been restored in the Activision suit due to RPI issue
Microsoft is sued using only the 501 patent where no claims
Survived the initial Bungie IPR hmmmm
Now Microsoft files an IPR on the 501
Worlds lawyers knew this was coming
Now Activision can’t wait to notify Casper of the new IPR
All the while waiting on the 101 ruling
Activision may ask to Stay the case again awaiting IPR results
The timing of the Microsoft case and applying only
the 501 patent. Just wondering about the strategy Worlds
Lawyers are using. I know I’m missing something. Please
Help. Please don’t misunderstand me I think Worlds
Lawyers are great I’m just having trouble connecting the
dots. Anything from Anyone open to discuss
GLTA Longs
Quilt
With the request for producing the documents Worlds is asking from Activision being slow rolled and After a favorable 101 decision. In your opinion will this apply enough pressure to spur serious settlement talks before Activision is forced to reveal how corrupt their dealings with Bungie actually were. I know Bungie doesn't want those documents released.
It seems like an extreme amount of pressure is building on both even though we currently have no suit with Bungie....
I appreciate your thoughts.
GLTA Longs
Case 1:12-cv-10576-DJC Document 294-13 Filed 12/08/20 Page 1 of 6
EXHIBIT 13
Case 1:12-cv-10576-DJC
Document 294-13
Filed 12/08/20
Page 2 of 6
From: Sent: To: Cc:
Subject:
Wayne,
The requests for production and interrogatories that Worlds is attempting to “reissue” were not “pending” at the time the parties entered into the stipulation in December of 2015. In fact, they were each served more than two years before the parties’ stipulation. Tellingly, you have not identified any specific basis for your understanding of the parties’ agreement. Accordingly, as Activision previously explained, for discovery requests which were served and answered before the stipulation, Activision believes both sides have an obligation to supplement their discovery responses and document productions in accordance with the Federal Rules, the Local Rules, and any court order. Please confirm Worlds will proceed accordingly. If not, we should plan to tee this issue up for the Court to resolve.
As to the draft stipulation, the draft stipulation itself makes clear that it is only addressing the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Indeed, Worlds was clear that its inquiry into estoppel was limited to 35 U.S.C. §
315(e)(2). E.g., Dkt. 256 at 3 (Words specifically referencing “the scope of Activision’s estoppel under 35 U.S.C. § 315(e)(2)”). Activision’s approach to the ’998 Patent and to invalidity based on system and product prior art is consistent with the law and fair. In fact, Worlds confirmed during the parties’ meet-and-confer on May 1 that system and product prior art would not be subject to estoppel under 35 U.S.C. § 315(e)(2). Moreover, if the parties agree to a scope of estoppel, any estoppel-related discovery would be irrelevant. In any case, your comments only highlight why we need to see Worlds’ proposal on estoppel to have a productive meet and confer As you know, the parties previously stipulated to a specific scope of estoppel. See Dkt. 197 at 2. If Worlds believes that any broader scope of estoppel should apply than the prior stipulation, please specifically state what it is and provide us with your edits to our discussion draft of the stipulation for us to consider in advance of a meet and confer.
Regards, Claire
Claire M. Specht | WilmerHale +1 617 526 6924 (t) claire.specht@wilmerhale.com
From: Wayne M. Helge <whelge@davidsonberquist.com>
Sent: Friday, May 29, 2020 5:29 PM
To: Specht, Claire <Claire.Specht@wilmerhale.com>; WH Activision Blizzard Worlds Service <WHActivisionBlizzardWorldsService@wilmerhale.com>; Mehta, Sonal <Sonal.Mehta@wilmerhale.com>
Cc: Max Tribble <MTRIBBLE@SusmanGodfrey.com>; Aldo Noto <anoto@davidsonberquist.com>; Alan A. Wright <awright@davidsonberquist.com>; Greg Krauss <gkrauss@davidsonberquist.com>; James Wilson <jwilson@davidsonberquist.com>; jleeman@sunsteinlaw.com; Ryan Caughey <rcaughey@susmangodfrey.com>; Chanler Langham <clangham@SusmanGodfrey.com>; Ethan Song <esong@davidsonberquist.com>
Subject: RE: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
Specht, Claire
Monday, June 1, 2020 4:39 PM
Wayne M. Helge; WH Activision Blizzard Worlds Service; Mehta, Sonal
Max Tribble; Aldo Noto; Alan A. Wright; Greg Krauss; James Wilson; jleeman@sunsteinlaw.com; Ryan Caughey; Chanler Langham; Ethan Song
RE: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
EXTERNAL SENDER
1
Hi Claire,
Case 1:12-cv-10576-DJC Document 294-13 Filed 12/08/20 Page 3 of 6
As I explained on Wednesday, Worlds believes that reissuing Worlds’ discovery requests to Activision is appropriate and reasonable given the parties’ prior stipulation to withdraw all pending discovery requests, and the Court’s lifting of the stay and recent re-opening of discovery. If Activision has a different solution to address discovery requests that issued prior to the stay and parties’ stipulation, Worlds would be happy to consider it.
As to Activision’s proposed estoppel stipulation, Activision has twice refused my requests of May 18 and May 27 for a call to discuss the estoppel stipulation proposed by Activision. Had you agreed to my request for a call, I would have asked for clarification of Activision's position on a number of topics, including Activision’s general approach of trying to identify issues that are not subject to estoppel instead of focusing on what issues are estopped due to the IPRs. This raises concern to Worlds as estoppel can arise from situations other than IPRs, such as assignor estoppel, and Worlds would like to know Activision’s position in this regard. Further, Activision’s proposal for different treatment of estoppel concerning the ‘998 patent claim 18 despite its patentability being upheld after a final written decision (IPR2015-01325), Activision’s proposal as it relates to estoppel on systems described by a patent or printed publication, and Activision’s proposal to bar estoppel-related discovery are each inconsistent with the law.
Finally, with regard to Worlds’ Fourth Set of RFPs to Activision, Worlds would also like to correct that these RFPs are not solely directed to discovery into whether Activision was an RPI in the IPR proceedings.
Please let me know when you're available for a call to discuss the estoppel stipulation. Best,
Wayne
Wayne M. Helge, Esq.
Registered Patent Attorney
Davidson Berquist Jackson & Gowdey, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102
Email: whelge@davidsonberquist.com Tel: 571-765-7708 www.davidsonberquist.com
From: Specht, Claire <Claire.Specht@wilmerhale.com>
Sent: Thursday, May 28, 2020 4:20 PM
To: Wayne M. Helge <whelge@davidsonberquist.com>; WH Activision Blizzard Worlds Service <WHActivisionBlizzardWorldsService@wilmerhale.com>; Mehta, Sonal <Sonal.Mehta@wilmerhale.com>
Cc: Max Tribble <MTRIBBLE@SusmanGodfrey.com>; Aldo Noto <anoto@davidsonberquist.com>; Alan A. Wright <awright@davidsonberquist.com>; Greg Krauss <gkrauss@davidsonberquist.com>; James Wilson <jwilson@davidsonberquist.com>; jleeman@sunsteinlaw.com; Ryan Caughey <rcaughey@susmangodfrey.com>; Chanler Langham <clangham@SusmanGodfrey.com>; Ethan Song <esong@davidsonberquist.com>
Subject: RE: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
2
Case 1:12-cv-10576-DJC Document 294-13 Filed 12/08/20 Page 4 of 6
*EXTERNAL EMAIL*
Activision disagrees. Contrary to your statement, the parties did not agree to withdraw “all issued discovery
requests.” The stipulation made clear that only “pending” requests were withdrawn, which we understand to refer to requests that had been served but were unanswered. At the time the parties filed the joint stipulation, fact discovery was set to close approximately 2 months later. Under Worlds’ view, the over 3 years of discovery the parties engaged in before the stay would be null. That approach is non-sensical, and would be a waste of the parties’ time and
resources. If you have some specific basis for your understanding of the parties’ agreement, can you please point us to it? Otherwise, please confirm that Worlds agrees that it will supplement discovery responses as required under the Federal Rules.
With respect to the draft stipulation, given that “Worlds is not ... ‘fine with the draft as sent by Activision,’” Activision renews its request that Worlds provide redlines to the draft that we sent over three weeks ago. See May 19 Email from Specht to Helge; May 26 Email from Specht to Helge. Once we have Worlds’ position on the draft stipulation, we are happy to set up a call to discuss. Worlds has had over three weeks to consider Activision’s position which is set forth in detail in the draft stipulation; in order to have a productive meet and confer, we need to see Worlds’ proposal. If you are refusing to provide Worlds’ position, let us know, and we will proceed accordingly.
Regards, Claire
Claire M. Specht | WilmerHale +1 617 526 6924 (t) claire.specht@wilmerhale.com
From: Wayne M. Helge <whelge@davidsonberquist.com>
Sent: Wednesday, May 27, 2020 4:08 PM
To: Specht, Claire <Claire.Specht@wilmerhale.com>; WH Activision Blizzard Worlds Service <WHActivisionBlizzardWorldsService@wilmerhale.com>; Mehta, Sonal <Sonal.Mehta@wilmerhale.com>
Cc: Max Tribble <MTRIBBLE@SusmanGodfrey.com>; Aldo Noto <anoto@davidsonberquist.com>; Alan A. Wright <awright@davidsonberquist.com>; Greg Krauss <gkrauss@davidsonberquist.com>; James Wilson <jwilson@davidsonberquist.com>; jleeman@sunsteinlaw.com; Ryan Caughey <rcaughey@susmangodfrey.com>; Chanler Langham <clangham@SusmanGodfrey.com>; Ethan Song <esong@davidsonberquist.com>
Subject: RE: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
EXTERNAL SENDER
Claire,
Worlds does not understand the basis of your objection to Worlds’ reissued discovery requests, which are warranted given the parties’ prior agreement to withdraw all issued discovery requests and the Court’s lifting of the stay and recent re-opening of discovery.
Regarding Activision’s proposed stipulation on the scope of prior art estoppel, Worlds remains willing to continue the discussion and I would suggest again that another phone call would be helpful to discuss Activision’s proposal. Worlds is not, as you previously inquired, “fine with draft as sent by Activision.”
I am available Thursday and Friday generally to discuss.
Wayne,
3
Case 1:12-cv-10576-DJC
Document 294-13
Filed 12/08/20
Page 5 of 6
Regards, Wayne
Wayne M. Helge, Esq.
Registered Patent Attorney
Davidson Berquist Jackson & Gowdey, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102
Email: whelge@davidsonberquist.com Tel: 571-765-7708 www.davidsonberquist.com
From: Specht, Claire <Claire.Specht@wilmerhale.com>
Sent: Tuesday, May 26, 2020 5:01 PM
To: Wayne M. Helge <whelge@davidsonberquist.com>; WH Activision Blizzard Worlds Service <WHActivisionBlizzardWorldsService@wilmerhale.com>; Mehta, Sonal <Sonal.Mehta@wilmerhale.com>
Cc: Max Tribble <MTRIBBLE@SusmanGodfrey.com>; Aldo Noto <anoto@davidsonberquist.com>; Alan A. Wright <awright@davidsonberquist.com>; Greg Krauss <gkrauss@davidsonberquist.com>; James Wilson <jwilson@davidsonberquist.com>; jleeman@sunsteinlaw.com; Ryan Caughey <rcaughey@susmangodfrey.com>; Chanler Langham <clangham@SusmanGodfrey.com>; Ethan Song <esong@davidsonberquist.com>
Subject: RE: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
*EXTERNAL EMAIL*
Wayne,
It is not clear why Worlds is “reissu[ing]” certain discovery requests, and Activision objects to Worlds’ attempt to do so. Activision believes both sides have an obligation to supplement their discovery responses and document productions in accordance with the Federal Rules, the Local Rules, and any court order. Does Worlds agree?
As to Worlds’ Fourth Set of RFPs, Activision will serve its objections and responses in accordance with the schedule. But, Worlds’ service of this set of RFPs—which are directed to discovery into whether Activision was a RPI in the IPR proceedings—only highlights the issues arising from Worlds’ failure to engage in discussions with Activision on the draft stipulation. It has been three weeks since Activision sent a draft stipulation to facilitate the parties’ discussion about IPR estoppel; however, Worlds has not responded despite multiple requests from Activision.
Regards, Claire
Claire M. Specht | WilmerHale +1 617 526 6924 (t) claire.specht@wilmerhale.com
From: Wayne M. Helge <whelge@davidsonberquist.com>
Sent: Tuesday, May 19, 2020 5:27 PM
To: WH Activision Blizzard Worlds Service <WHActivisionBlizzardWorldsService@wilmerhale.com>; Specht, Claire <Claire.Specht@wilmerhale.com>; Mehta, Sonal <Sonal.Mehta@wilmerhale.com>
Cc: Wayne M. Helge <whelge@davidsonberquist.com>; Max Tribble <MTRIBBLE@SusmanGodfrey.com>; Aldo Noto
4
Case 1:12-cv-10576-DJC Document 294-13 Filed 12/08/20 Page 6 of 6
<anoto@davidsonberquist.com>; Alan A. Wright <awright@davidsonberquist.com>; Greg Krauss <gkrauss@davidsonberquist.com>; James Wilson <jwilson@davidsonberquist.com>; jleeman@sunsteinlaw.com; Ryan Caughey <rcaughey@susmangodfrey.com>; Chanler Langham <clangham@SusmanGodfrey.com>; Ethan Song <esong@davidsonberquist.com>
Subject: Worlds Inc. v. Activision Blizzard, Inc. et al.: Service of Discovery on Defendants
EXTERNAL SENDER
Counsel,
Please see the attached correspondence, reissued discovery, and Worlds’ 4th set of RFPs on Activision (Nos. 128-143), served by email on this date.
Regards,
Wayne M. Helge, Esq.
Registered Patent Attorney
Davidson Berquist Jackson & Gowdey, LLP 8300 Greensboro Drive, Suite 500 McLean, VA 22102
Email: whelge@davidsonberquist.com Tel: 571-765-7708 www.davidsonberquist.com
nternet.
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TDoBJh+eGlp protect your privacy, Microsoft Office prevented automatic download of this picture from the I
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5
Case 1:12-cv-10576-DJC Document 294-11 Filed 12/08/20 Page 1 of 5
EXHIBIT 11
Case 1:12-cv-10576-DJC
Document 294-11 Filed 12/08/20 Page 2 of 5
Via Electronic Mail
October 23, 2020
Sonal N. Mehta sonal.mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE AND DORR LLP
950 Page Mill Road
Palo Alto, CA 94304
Kevin S. Prussia kevin.prussia@wilmerhale.com Claire M. Specht claire.specht@wilmerhale.com Rian M. Rossetti rian.rossetti@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
Boston, MA 02109
Re: Worlds Inc. v. Activision Blizzard Inc., et al. (D. Mass.) Case No. 1:12-CV-10576 (DJC)
Dear Kevin:
I write to you regarding Defendants’ (collectively, “Activision”) Letter of October 16, 2020 (“Letter”), which responds to my October 9, 2020 email identifying the references/contentions in Activision’s Fourth Supplemental Invalidity Disclosure that Worlds contends are subject to estoppel under 35 U.S.C. § 315(e)(2). In my email of October 9, 2020, I identified seventy-four prior art references asserted by Activision in its Fourth Supplemental Invalidity Disclosure that Worlds believes are subject to estoppel. Based on your letter of October 16, 2020, I understand that there remain some disagreements between Worlds and Activision on the proper scope of estoppel under 35 U.S.C. § 315(e)(2).
First, you state in your Letter that the final written decision as to the ’998 patent was “vacated.” See page. 2. Activision ignores that there was a final written decision on the ’998 patent that was not vacated in IPR2015-01325. In that final written decision, only claims 1 and 20 were determined to be unpatentable, and claims 2-3, 7, 8, and 11-18 were found not to be unpatentable. As there is a valid final written decision as to the ’998 patent, estoppel applies to this patent under 35 U.S.C. § 315(e)(2). Activision has identified no authority for its position that estoppel does not attach to this final written decision. Indeed, Worlds is aware of no such authority.
8300 Greensboro Dr., Suite 500 | McLean, VA 22102 | tel. 571.765.7700 | www.davidsonberquist.com
Case 1:12-cv-10576-DJC Document 294-11 Filed 12/08/20 Page 3 of 5
Kevin S. Prussia, Esq. October 23, 2020 Page 2
Second, you state that Activision is “willing to agree to not rely on the references identified in Plaintiff’s October 9 email as invalidating prior art under 35 U.S.C. § 102 for the ’690 and ’558 patents, except the following as identified in Table 1 of Defendants’ Fourth Supplemental Invalidity Disclosure:
• Air Warrior Game
• NPSNET System
• Habitat
• Netrek
• Doom
• Shadow of Yserbius
• TinyMUD
• CyberStrike”
See pp. 2-3. Worlds does not agree to Activision’s carve-out of these references from the scope of estoppel as to the ’690, ’558, and ’998 patents. While Activision characterizes these references as “games,” (see p. 2), Activision’s charts for these references rely heavily, and in some instances, exclusively, on printed publications. A survey of the ’690 patent charts confirms this to be true.
Activision’s Fourth Supplemental Invalidity Disclosure Against the ’690 Patent
Activision’s chart based on the Air Warrior Game includes the following footnote identifying no fewer than six printed publications:
This chart relies on the following documents and things to describe the features and functionality of “Air Warrior”: First Air Warrior Manual; Second Air Warrior Manual; SuperVGA Air Warrior Flight Manual (1992) (“SVGA AW Manual”); Worlds of Kesmai Article, Video Games & Computer Entertainment, August 1989 (“Worlds of Kesmai”); Kesmai Air Warrior, Online With Start, Start Magazine, Vol. 3, No. 2, Special Issue #4, p. 73 (“Start Magazine”); Multi-User Virtual Environments, Part I, Release 1.0, June 27, 1994, Jerry Michalski (“Michalski Article”); and Air Warrior Source Code and Executables.
Dkt. 171-1 at 150 n.1 (Ex. A6 directed to the “Air Warrior Game”). Activision’s Air Warrior Game chart relies heavily on these printed publications.
Case 1:12-cv-10576-DJC Document 294-11 Filed 12/08/20 Page 4 of 5
Kevin S. Prussia, Esq. October 23, 2020 Page 3
Activision’s chart based on NPSNET does not chart a system, but rather what Activision defines as the “NPSNET Article.” Dkt. 171-1 at 255 (Ex. A10 directed to the “NPSNET Article”).
Activision’s chart based on Habitat does not chart a system, but a combination of printed publications defined as Habitat A through Habitat G. Dkt. 171-1 at 368 n.1 (Ex. A14 directed to “Habitat”). While Activision’s footnote also identifies Habitat Source Code generally, there are no citations to Habitat Source Code in any charted entry for Exhibit A14.
Activision’s chart based on Netrek does not chart a system, but a combination of printed publications including declarations dated years before Bungie’s IPR petitions were filed. Dkt. 171-1 at 487 n.1 (Ex. A17 directed to “Netrek”). While Activision’s footnote also identifies Netrek Source Code generally, there are no citations to Netrek Source Code in any charted entry for Exhibit A17.
Activision’s chart based on Doom relies heavily on printed publications, including Doom Specs, a Doom Manual, and Wiki pages. Dkt. 171-1 at 513 n.1 (Ex. A18 directed to “Doom”).
Activision’s chart based on Shadow of Yserbius relies heavily on the Shadow of Yserbius Manual. Dkt. 171-1 at 540 n.1 (Ex. A19 directed to “Shadow of Yserbius”).
Activision’s chart based on Multi-User Dungeon (TinyMUD) does not chart a system, but a collection of printed publications including a declaration dated years before Bungie’s IPR petitions were filed and a CSEE Conference Article. Dkt. 171-1 at 578 n.1 (Ex. A20 directed to “TinyMUD”). While Activision’s footnote also identifies TinyMUD Source Code generally, there are no citations to TinyMUD Source Code in any charted entry for Exhibit A20.
Activision’s chart based on CyberStrike does not chart a system, but rather a combination of two printed publications: the CyberStrike Instruction Manual and Technical Supplement. Dkt. 171-1 at 597 n.1 (Ex. A21 directed to the “CyberStrike”).
These Eight “Games” Are Subject to Estoppel Under 35 U.S.C. § 315(e)(2)
Both 35 U.S.C. § 315(e)(2) and Activision’s own case law supports estoppel as to these eight references. An assertion of any of these systems, relying on combinations of the printed publications set forth in Activision’s Fourth Supplemental Invalidity Disclosure, would clearly constitute a “printed publication theory in disguise.” SPEX Techs. Inc. v. Kingston Tech. Corp., No. 16-cv-01790, 2020 WL 4342254, at *15 (C.D. Cal. June 16, 2020).
Further, Activision’s discussion of cases addressing the scope of § 315(e)(2) estoppel ignores the decisions that interpret estoppel more broadly than did the SPEX Techs. Court. For example, in Biscotti Inc. v. Microsoft Corp., the Court prevented Microsoft from using patents and printed publications for any purpose other than “establishing the date on which the . . .
Case 1:12-cv-10576-DJC Document 294-11 Filed 12/08/20 Page 5 of 5
Kevin S. Prussia, Esq. October 23, 2020 Page 4
systems were in public use or on sale.” Biscotti Inc. v. Microsoft Corp., No. 2:13-CV-01015- JRG-RSP, 2017 WL 2537021, at *1 (E.D. Tex. May 30, 2017). Activision’s charts for these eight references do not survive under Biscotti, given Activision’s heavy/exclusive reliance on printed publications.
Under the rationale from either SPEX Techs. or Biscotti, Worlds maintains that Air Warrior, NPSNET, Habitat, Netrek, Doom, Shadow of Yserbius, TinyMUD, and CyberStrike are subject to estoppel under § 315(e)(2) and should not be relied upon by Activision against the ’690, ’558, and ’998 patent.
Finally, as we agreed during our October 6, 2020 meet-and-confer, and as confirmed by my email to you on October 7, 2020, “If Activision does not agree with Worlds’ list, the parties agree that they are at an impasse on Worlds RFP Nos. 128-143.” Based on your letter of October 16, 2020, it is clear that the parties are not in agreement on the scope of estoppel here, and the parties are at an impasse on Worlds RFP Nos. 128-143. If Activision will reconsider its position on these eight references, please let me know by October 29, 2020.
Regards,
DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
/s/ Wayne M. Helge
Wayne M. Helge
Attorney for Plaintiff Worlds Inc.