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Pacer posted 02/01/2022
FORM 33. Response to Notice of Oral Argument Form 33
July 2020
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RESPONSE TO NOTICE OF ORAL ARGUMENT
Case Number:
Short Case Caption:
Filing Party
Instructions. No more than two counsel may argue per side and no more than one
counsel may argue per party without leave of court. See Fed. Cir. R. 34(e). Each
arguing counsel must complete and submit a separate form.
If a party intends to waive argument, please check the waiver box; do not indicate
argument is for zero minutes. For non-waived argument, please complete the
remainder of the form indicating for which parties counsel will argue and the amount
of time counsel will argue. Rebuttal time is only allowed for Appellants and CrossAppellants. Unless otherwise ordered, panel cases must not exceed 15 mins; en banc
cases must not exceed 30 mins.
Oral Argument Waiver: The filing party intends to waive oral argument.
For Non-Waived Argument, List
All Parties Arguing on Behalf of:
(Attach additional pages if needed)
Arguing Counsel Name:
Phone: Argument Time: Rebuttal Time:
Arguing counsel is dividing time with counsel for another party or set of
parties (additional counsel must file a separate Response).
I acknowledge that (1) oral argument is scheduled as stated in the court’s notice
and may proceed even if I have waived argument, see Fed. R. App. P. 34(e)–(f));
(2) arguing counsel can only change through filing an amended version of this form;
and (3) counsel who have not entered appearances in the case and are not listed on
this form cannot present oral argument.
Date: _________________ Signature:
Name:
2021-1990
Worlds Inc. v. Activision Blizzard Inc.
Worlds Inc.
Worlds Inc.
Wayne M. Helge
(571) 765-7700 12 min 3 min
02/01/2022 /s/ wayne m. helge
Wayne M. Helge
Case: 21-1990 Document: 33 Page: 1 Filed: 02/01/2022
FORM 33A. Certificate of Compliance with Revised Protocols Form 33A (p. 1)
December 2021
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
CERTIFICATION OF COMPLIANCE WITH REVISED PROTOCOLS FOR
IN-PERSON ARGUMENT
Case Number:
Short Case Caption:
Filing Party
Instructions: Please review the Revised Protocols for In-Person Arguments and
check the box confirming your agreement with each item. Please file this
Certification along with your Response to Notice of Oral Argument, unless
otherwise ordered by the Clerk’s Office. Counsel may contact the Clerk’s Office at
202-275-8035 with any questions.
I have read, understand, and will comply with the Revised Protocols for InPerson Arguments (“Revised Protocols”).
In light of the Revised Protocols, I am advising the court that I am selecting
one of the following for my scheduled argument:
To appear in person at argument.
To appear by videoconference at argument (no separate motion to appear
is required).
? I understand and agree that, as an officer of the court, I am personally
responsible for ensuring all individuals attending argument with me have
also read and will comply with the Revised Protocols. I further understand
and agree that it is my responsibility to ensure that all individuals attending
argument with me remain in compliance with the Revised Protocols while in
the National Courts Building.
I understand and agree that I have an obligation to advise the Clerk’s Office
as soon as possible if I am no longer able to attend argument in person due to
COVID-19 related intervening events.
I understand and agree that by entering the National Courts Building on the
day of my argument, I am affirmatively representing to the court that I and
all individuals attending argument with me do not have any COVID-19
related symptoms and are in compliance with the Revised Protocols.
I understand and agree that upon entering the National Courts Building on
the day of my argument, I and all individuals attending argument with me
will provide proof of required negative test results required by the Revised
2021-1990
Worlds Inc. v. Activision Blizzard Inc.
Worlds Inc.
X
X
X
X
X
X
X
Case: 21-1990 Document: 33 Page: 2 Filed: 02/01/2022
FORM 33A. Certificate of Compliance with Revised Protocols Form 33A (p. 2)
December 2021
Protocols.
I further understand that any person not providing the required negative test
results will not be permitted in the Nationals Courts Building on the day of
argument, which may impact the ability to present at argument.
As arguing counsel in the above case, I certify my compliance with the above
provisions and that my failure to abide by any of above provisions may subject
me to discipline pursuant to Rule 2(d) of the Federal Circuit Attorney Discipline
Rules.
Signature:
Name:
X
Date: ____ 02/01_____________ /2022 /s/ wayne m. helge
Wayne M. Helge
Case: 21-1990 Document: 33 Page: 3 Filed: 02/01/2022
From the September 10q
As of September 30, 2021, the Company still owns approximately 1.75 million shares of MariMed Inc. common stock.
I don't believe S&G is handling the appeal for World's. In past appeals World's had other law firms handle them so I believe World's is paying the legal fees.
Below is a Pacer document the shows who their attorney is in this appeal, Wayne Helge'
Case: 21-1990 Document: 25 Page: 1 Filed: 11/29/2021
No. 2021-1990
United States Court of Appeals
for the Federal Circuit
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC.,
ACTIVISION PUBLISHING, INC.,
Defendants-Appellees
On Appeal from the United States District Court for the District of Massachusetts
in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
STATEMENT OF ARGUING COUNSEL IN SUPPORT OF RESPONSE TO
ADVISE OF SCHEDULING CONFLICTS
I respectfully believe an oral argument scheduled on March 9, March 10, or
March 11, 2022 in this case would present a scheduling conflict for me, due to my
obligations as primary local counsel for the plaintiffs in Conti Temic
Microelectronic GmbH, et al., v. Arigna Tech. Ltd., Civil Action No. 1:21-cv-826-
AJT-JFA, currently pending before the United States District Court for the Eastern
District of Virginia (Alexandria Division).
The Rule 16(B) Scheduling Order issued in that case sets the close-ofdiscovery deadline for March 11, 2022, and establishes the week of March 7-11,
Case: 21-1990 Document: 25 Page: 2 Filed: 11/29/2021
2022 for any rebuttal expert depositions that may occur. In my opinion, I
anticipate numerous activities to occur near the close-of-discovery deadline that
will require immediate and proper attention and diligence by me as local counsel,
including briefing and oral hearing obligations before the District Court during the
period of March 9-11, 2022. I respectfully request that this Court accept my
obligations in this co-pending lawsuit as good cause for the identified conflict
during March 9-11, 2022.
Should this conflict be resolved or any other conflicts arise before argument
is scheduled, I will promptly supplement this statement and notice.
November 29, 2021 Respectfully submitted,
/s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Plaintiff-Appellant
Worlds Inc
There is nothing new on the Court of Appeals Pacer site.
Pacer Document -
FORM 32. Response to Notice to Advise of Scheduling Conflicts Form 32
July 2020
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RESPONSE TO NOTICE TO ADVISE OF SCHEDULING CONFLICTS
Case Number:
Short Case Caption:
Party Name(s)
Name of Arguing Counsel
Dates Unavailable
List up to ten dates of
unavailability within the specific
sessions identified by the court in
the Notice to Advise of Scheduling
Conflicts in this case.
Attach a statement showing
good cause for each listed
date. Dates listed without a
supporting statement will not be
considered in scheduling
argument. See Fed. Cir. R. 34(d);
Practice Notes to Rule 34.
Potential Other Conflicts
Please list other pending cases
before this court in which above
counsel intends to argue
(regardless of case status).
I certify the above information and any attached statement is complete and
accurate. I further certify that I will update my notice should new conflicts arise
or existing conflicts change.
Date: _________________ Signature:
Name:
2021-1990
Worlds Inc. v. Activision Blizzard Inc.
Activision Blizzard Inc., Blizzard Entertainment, Inc., Activision Publishing, Inc.
Kevin S. Prussia
02/07/2022
02/08/2022
02/09/2022
02/10/2022
02/11/2022
04/04/2022
05/06/2022
11/30/2021 /s/ Kevin S. Prussia
Kevin S. Prussia
Case: 21-1990 Document: 26 Page: 1 Filed: 11/30/2021
- 1 -
No. 2021-1990
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC., ACTIVISION
PUBLISHING, INC.,
Defendants-Appellees.
On Appeal from the United States District Court for the District of Massachusetts
in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
STATEMENT OF KEVIN S. PRUSSIA
REGARDING SCHEDULING CONFLICTS
1. I am of counsel to Defendants-Appellees Activision Blizzard Inc.,
Blizzard Entertainment, Inc., and Activision Publishing, Inc. (“Appellees”) in this
appeal and will be arguing on behalf of Appellees. I am unavailable for certain days
during the Court’s upcoming February, April, and May 2022 argument sessions. As
explained below, good cause exists for each of these conflicts.
2. I have a conflict February 7-11, 2022 during the Court’s February 2022
session. I am co-lead trial counsel for the defendants in Bioverativ Inc. v. CSL
Case: 21-1990 Document: 26 Page: 2 Filed: 11/30/2021
- 2 -
Behring LLC, No. 1:17-cv-00914-RGA-SRF (D. Del.). The case is scheduled for a
jury trial beginning on January 31, 2022 in Wilmington, Delaware, and may continue
to the week of February 7.
3. I also have a conflict on April 4, 2022 during the Court’s April 2022
session. I am teaching a course at Boston University School of Law which is
scheduled to meet that day and will require my presence in Boston, Massachusetts.
4. I also have a conflict on May 6, 2022 during the Court’s May 2022
session. I am co-lead trial counsel for the plaintiff in Exelixis, Inc. v. MSN
Laboratories Private Limited, No. 1:19-cv-02017-RGA-SRF (D. Del). The case has
a Pretrial Conference set for May 6, 2022, which will require my presence in
Wilmington, Delaware.
Pursuant to 28 U.S.C. § 1746, I declare under penalty of perjury that the
foregoing is true and correct.
Case: 21-1990 Document: 26 Page: 3 Filed: 11/30/2021
- 3 -
Dated: November 30, 2021 Respectfully submitted,
/s/ Kevin S. Prussia
KEVIN S. PRUSSIA
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-60000
Counsel for Defendants-Appellees
Case: 21-1990 Document: 26 Page: 4 Filed: 11/30/2021
Pacer Document -
FORM 32. Response to Notice to Advise of Scheduling Conflicts Form 32
July 2020
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RESPONSE TO NOTICE TO ADVISE OF SCHEDULING CONFLICTS
Case Number:
Short Case Caption:
Party Name(s)
Name of Arguing Counsel
Dates Unavailable
List up to ten dates of
unavailability within the specific
sessions identified by the court in
the Notice to Advise of Scheduling
Conflicts in this case.
Attach a statement showing
good cause for each listed
date. Dates listed without a
supporting statement will not be
considered in scheduling
argument. See Fed. Cir. R. 34(d);
Practice Notes to Rule 34.
Potential Other Conflicts
Please list other pending cases
before this court in which above
counsel intends to argue
(regardless of case status).
I certify the above information and any attached statement is complete and
accurate. I further certify that I will update my notice should new conflicts arise
or existing conflicts change.
Date: _________________ Signature:
Name:
2021-1990 Worlds Inc. v. Activision Blizzard Inc. Worlds Inc. Wayne M. Helge 03/09/2022 03/10/2022 03/11/2022 11/29/2021 /s/ wayne m. helge Wayne M. Helge
Case: 21-1990 Document: 25 Page: 1 Filed: 11/29/2021
No. 2021-1990
United States Court of Appeals
for the Federal Circuit
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC.,
ACTIVISION PUBLISHING, INC.,
Defendants-Appellees
On Appeal from the United States District Court for the District of Massachusetts
in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
STATEMENT OF ARGUING COUNSEL IN SUPPORT OF RESPONSE TO
ADVISE OF SCHEDULING CONFLICTS
I respectfully believe an oral argument scheduled on March 9, March 10, or
March 11, 2022 in this case would present a scheduling conflict for me, due to my
obligations as primary local counsel for the plaintiffs in Conti Temic
Microelectronic GmbH, et al., v. Arigna Tech. Ltd., Civil Action No. 1:21-cv-826-
AJT-JFA, currently pending before the United States District Court for the Eastern
District of Virginia (Alexandria Division).
The Rule 16(B) Scheduling Order issued in that case sets the close-ofdiscovery deadline for March 11, 2022, and establishes the week of March 7-11,
Case: 21-1990 Document: 25 Page: 2 Filed: 11/29/2021
2022 for any rebuttal expert depositions that may occur. In my opinion, I
anticipate numerous activities to occur near the close-of-discovery deadline that
will require immediate and proper attention and diligence by me as local counsel,
including briefing and oral hearing obligations before the District Court during the
period of March 9-11, 2022. I respectfully request that this Court accept my
obligations in this co-pending lawsuit as good cause for the identified conflict
during March 9-11, 2022.
Should this conflict be resolved or any other conflicts arise before argument
is scheduled, I will promptly supplement this statement and notice.
November 29, 2021 Respectfully submitted,
/s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Plaintiff-Appellant
Worlds Inc.
Case: 21-1990 Document: 25 Page: 3 Filed: 11/29/2021
Documents posted on Pacer - All administrative with no substance
11/17/2021 20 Joint Statement of Compliance with Fed. Cir. R. 33 for Appellees Activision Blizzard Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. and Appellant Worlds Inc.. Service: 11/17/2021 by email. [813089] [21-1990] [Wayne Helge] [Entered: 11/17/2021 12:28 PM]
11/22/2021 21 Certificate of Compliance with Fed. Cir. R. 25.1(c)(2) for Appellees Activision Blizzard Inc., Activision Publishing, Inc., Blizzard Entertainment, Inc. and Appellant Worlds Inc.. Service: 11/22/2021 by email. [814058] [21-1990] [Wayne Helge] [Entered: 11/22/2021 12:12 PM]
11/22/2021 22 MODIFIED ENTRY: APPENDIX FILED by Appellant Worlds Inc. and Appellees Activision Blizzard Inc., Activision Publishing, Inc., and Blizzard Entertainment, Inc. Service: 11/22/2021 by email. [814064] --[Edited 11/23/2021 by EKD - compliance review complete] [Wayne Helge] [Entered: 11/22/2021 12:18 PM]
11/23/2021 23 Outstanding paper copies of all briefs and appendices must be submitted within five business days from the date of issuance of this notice. See Fed. Cir. R. 25(c)(3)(A). [814392] [EKD] [Entered: 11/23/2021 10:39 AM]
11/23/2021 24 Notice to Advise of Scheduling Conflicts. Arguing counsel must advise of, and show good cause for, any scheduling conflicts during the upcoming court session months listed in the attached notice. The Response to Notice to Advise of Scheduling Conflicts can be found here. The Oral Argument Guide can be found here. [814393] [EKD] [Entered: 11/23/2021 10:40 AM]
Pacer document - Worlds reply
No. 2021-1990
United States Court of Appeals
for the Federal Circuit
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC.,
ACTIVISION PUBLISHING, INC.,
Defendants-Appellees
On Appeal from the United States District Court for the District of
Massachusetts in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
REPLY BRIEF FOR APPELLANT
WAYNE M. HELGE
JAMES T. WILSON
ALDO NOTO
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
jwilson@dbjg.com
anoto@dbjg.com
Counsel for Appellant Worlds Inc.
NOVEMBER 16, 2021
Case: 21-1990 Document: 19 Page: 1 Filed: 11/16/2021
REPRESENTATIVE CLAIM - CLAIM 4 OF U.S. PATENT NO. 7,181,690
1. A method for enabling a first user to interact with other users in a virtual
space, wherein the first user and the other users each have an avatar and a client
process associated therewith, and wherein each client process is in communication
with a server process, wherein the method comprises:
(a) receiving a position of less than all of the other users’ avatars from the
server process; and
(b) determining, from the received positions, a set of the other users’ avatars
that are to be displayed to the first user,
wherein steps (a) and (b) are performed by the client process associated with
the first user.
4. The method of claim 1, wherein step (1b) comprises
(b)(1) determining from the received positions an actual number of the other
users’ avatars;
(b)(2) determining a maximum number of the other users’ avatars to be
displayed; and
(b)(3) comparing the actual number to the maximum number to determine
which of the other users’ avatars are to be displayed
wherein steps (b)(1)–(b)(3) are performed by the client process associated
with the first user.
Case: 21-1990 Document: 19 Page: 2 Filed: 11/16/2021
i
CERTIFICATE OF INTEREST
In accordance with Federal Circuit Rule 47.4(a) and (b), counsel for
Appellant Worlds Inc. certifies the following:
1. Represented Entities (Fed. Cir. R. 47.4(a)(1)): Worlds Inc.
2. The real party in interest (Fed. Cir. R. 47.4(a)(2)): None/Not
Applicable
3. Parent Corporations and Stockholders (Fed. Cir. R. 47.4(a)(3)):
None/Not Applicable
4. Legal Representatives (Fed. Cir. R. 47.4(a)(4)):
Alan A. Wright, Gregory A. Krauss, Donald L. Jackson, Walter D.
Davis. Jr. of DAVIDSON BERQUIST JACKSON & GOWDEY, LLP;
Max L. Tribble, Chanler Langham, Ryan Caughey, Brian D.
Melton, Joseph S. Grinstein, Sandeep Seth of SUSMAN GODFREY
LLP; and
Joel R. Leeman, Jack C. Schecter, Meredith L. Ainbinder of
SUNSTEIN LLP
5. Statement of Related Cases (Fed. Cir. R. 47.4(a)(5) and 47.5)
(Fed. Cir. R. 47.5(a)):
(1)Worlds Inc. v. Bungie, Inc., Case Nos. 2017-1481, 2017-1546, and
2017-1583 (consolidated).
Case: 21-1990 Document: 19 Page: 3 Filed: 11/16/2021
ii
(2)September 7, 2018.
(3)Chief Judge Prost, Circuit Judge O’Malley, and Circuit Judge
Taranto.
(4)Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
(Fed. Cir. R. 47.4(b)):
None/Not Applicable
6. Organizational Victims and Bankruptcy Cases (Fed. Cir. R.
47.4(a)(6)):
None/Not Applicable
November 16, 2021 /s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 19 Page: 4 Filed: 11/16/2021
iii
TABLE OF CONTENTS
CERTIFICATE OF INTEREST.......................................................................... i
TABLE OF CONTENTS................................................................................... iii
TABLE OF AUTHORITIES...............................................................................v
I. INTRODUCTION.....................................................................................1
II. ARGUMENT.............................................................................................2
A. The District Court and Activision Impermissibly
Deviate from this Court’s Step One Precedent...............................2
1. Despite the District Court finding that Worlds solved a
specific problem in multiplayer games, Activision
impermissibly equates the claims to “bare filtering” in its
attempt to distinguish binding precedent ...................................2
2. Worlds’ inventive “crowd control” method includes
filtering, but does not eliminate players from a game ...............4
3. Worlds’ Blue Brief did not include new arguments
describing the technical innovation contained within its
claims .........................................................................................8
B. Step Two: Granting Summary Judgment Was Legally
Erroneous Where the Record Evidence Supported
Eligibility.......................................................................................11
1. Step Two requires consideration of the ordered
combination, on which Activision presented no reliable
evidence....................................................................................12
2. Under BASCOM and other precedent, Worlds’ claims
include an inventive concept and satisfy Step Two.................16
3. Worlds’ unrefuted evidence established a genuine issue of
material fact regarding whether the claims were “wellknown, routine, and conventional” ..........................................19
Case: 21-1990 Document: 19 Page: 5 Filed: 11/16/2021
iv
4. The District Court committed reversible error in
concluding that vacated IPR decisions were persuasive
while also ignoring the non-vacated IPR decision
upholding patentability of the Representative Claim ..............22
5. World’s unclean hands argument is not forfeited because
Activision admitted after the summary judgment briefing
that it was a real party in interest, and this issue is only
relevant to the weight to be given to the vacated IPR
decisions...................................................................................28
6. Worlds’ claims do not preempt “any form of filtering
position information within” a computer.................................30
III. CONCLUSION AND RELIEF REQUESTED.......................................31
Case: 21-1990 Document: 19 Page: 6 Filed: 11/16/2021
v
TABLE OF AUTHORITIES
Page(s)
Cases
Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336 (Fed. Cir. 2013)................................................................ 18
Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208 (2014) ................................................................................... 1
Ancora Techs., Inc. v. HTC Am., Inc.,
908 F.3d 1343 (Fed. Cir. 2018)................................................................ 16
Apple v. International Trade Commission,
725 F.3d 1356 (Fed. Cir. 2013)................................................................ 28
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016)...................................................... 2, 17, 18
Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018).......................................................... 20, 21
buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014)................................................................ 15
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass'n,
776 F.3d 1343 (Fed. Cir. 2014)................................................................ 18
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356 (Fed. Cir. 2018)........................................................ 1, 4, 15
CosmoKey Solutions GMBH & Co. KG v. Duo Security LLC,
15 F.4th 1091 (Fed. Cir. 2021)................................................................. 15
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)................................................................ 22
Delta and Pine Land Co. v. Sinkers Corp.,
177 F.3d 1343 (Fed. Cir. 1999)................................................................ 28
Ellis v. Fid. Mgmt. Tr. Co.,
883 F.3d 1 (1st Cir. 2018) ............................................................ 20, 23, 27
Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016)............................................................ 3, 14
Case: 21-1990 Document: 19 Page: 7 Filed: 11/16/2021
vi
Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363 (Fed. Cir. 2015)................................................................ 18
Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307 (Fed. Cir. 2016).......................................................... 10, 21
Nelson v. Adams USA, Inc.,
529 U.S. 460 (2000) ................................................................................... 8
Packet Intelligence LLC v. NetScout Systems, Inc.,
965 F.3d 1299 (Fed. Cir. 2020).................................................................. 4
Pfizer, Inc. v. Lee,
811 F.3d 466 (Fed. Cir. 2016).................................................................... 8
Singleton v. Wulff,
428 U.S. 106 (1976) ................................................................................. 28
TecSec, Inc. v. Adobe Inc.,
978 F.3d 1278 (Fed. Cir. 2020).......................................................... 4, 5, 7
Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
874 F.3d 1329 (Fed. Cir. 2017).......................................................... 15, 26
Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014).................................................................. 18
United States v. Young,
846 F. App’x 179 (4th Cir. 2021)............................................................. 27
Walsh v. TelTech Sys., Inc.,
821 F.3d 155 (1st Cir. 2016) .................................................................... 20
Warner-Lambert Co. v. Teva Pharms. USA, Inc.,
418 F.3d 1326 (Fed. Cir. 2005).................................................................. 9
Worlds Inc. v. Bungie, Inc.,
903 F.3d 1237 (Fed. Cir. 2018).......................................................... 23, 27
Yee v. City of Escondido, Cal.,
503 U.S. 519 (1992) ................................................................................... 9
Case: 21-1990 Document: 19 Page: 8 Filed: 11/16/2021
1
I. INTRODUCTION
Activision’s analysis under Step One of the Alice1 inquiry fails to appreciate
that Worlds’ claims are directed to solving specific problems in the field of
computer-based virtual worlds, namely how to implement a virtual world with a
large number of users, each with equipment having different capabilities. That
solution, as claimed and as disclosed, defines a specific computer network
architecture with requirements on what information is received by the server from
the clients, what avatar position information is distributed from the server to a
client, and how the client uses that position information to render the virtual world
to the user. Under Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356 (Fed. Cir. 2018), which also involved “displaying a limited set of information
to the user” in a new interface method, Worlds’ claims are plainly patent-eligible.
Id. at 1363. Activision however reduces Worlds’ technical solution to “bare
filtering” performed by computer, without consideration for the claimed
improvements in the client-server architecture itself. Properly evaluated in view of
this Court’s § 101 jurisprudence, Activision’s approach led the District Court to
legal error.
Activision’s argument under Step Two also reinforces the District Court’s
error in relying on three vacated IPR decisions to find the Representative Claim not
1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).
Case: 21-1990 Document: 19 Page: 9 Filed: 11/16/2021
2
inventive, despite the Representative Claim being found patentable in a non-vacated
IPR decision. Inconsistently, Activision asks this Court to disregard that nonvacated IPR decision, while still relying on the vacated IPR decisions. But once the
vacated IPR decisions are disregarded—as they should be—Activision is left with
no evidence to show that the ordered combination of the Representative Claim was
“well-known, routine, and conventional.” Further, Activision’s Red Brief (“Red
Br.”) cannot cleanse the District Court’s error of failing to view Worlds’ own Step
Two evidence, including its specification disclosures, in the light most favorable to
non-movant Worlds. Under the record evidence, Worlds’ claims satisfy Step Two
under BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
Because the District Court should have denied Activision’s summary
judgment motion, Worlds respectfully asks that this Court reverse the District
Court’s ruling under § 101.
II. ARGUMENT
A. The District Court and Activision Impermissibly Deviate from
this Court’s Step One Precedent
1. Despite the District Court finding that Worlds solved a
specific problem in multiplayer games, Activision
impermissibly equates the claims to “bare filtering” in its
attempt to distinguish binding precedent
On Step One, Activision argues that Worlds’ claims are directed to
“filtering,” Worlds’ claims do not provide a specific solution to a technical problem,
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3
and Worlds’ cited cases supporting eligibility are inapposite. Red Br., 18-36. But
Activision’s brief concedes that the Representative Claim recites a client-server
architecture (Red Br., 4 (“claimed client-server architecture”)), and concedes, as the
District Court found, that the limitations of the Representative Claim “resolve
bandwidth issues with multiplayer games through multi-criteria filtering of avatar
position and state information.” Red. Br., 29. Under this Court’s precedent
governing specific solutions in computer processes, these facts and findings
establish eligibility. See Blue Br., 28-30. Nevertheless, Activision asserts that these
facts “confirm the district court’s conclusion of ineligibility.” Id. at 30.
Moreover, Activision does not and cannot dispute that the District Court
erroneously overlooked this Court’s precedent on specific computer-process
solutions under § 101, such as Core Wireless and Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016), and why that precedent applies to Worlds’ claims
under the District Court’s finding. While the District Court did not distinguish this
line of cases, Activision’s distinctions are all founded upon its position that the
Worlds claims are directed to “bare filtering.” Red Br., 31 (arguing that “none of
the cases cited by Worlds involve patents directed to bare filtering.”). But once
Activision’s over-simplification of the Worlds claims is corrected, its attempts to
distinguish this Court’s precedent melt away.
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4
And contrary to Activision’s insinuation, there is no blanket rule in this Court
that the use of “filtering” results in the claim being patent-ineligible. Rather, this
Court has found claims that involve filtering information to be patent eligible in the
context of technical innovations. See Packet Intelligence LLC v. NetScout Systems,
Inc., 965 F.3d 1299, 1309-10 (Fed. Cir. 2020) (technical problem solved by
“refining a conversational flow”); Core Wireless, 880 F.3d at 1363) (“a specific
manner of displaying a limited set of information to the user”).
The claims satisfy Step One, and it was error for the District Court to
conclude otherwise.
2. Worlds’ inventive “crowd control” method includes
filtering, but does not eliminate players from a game
Reflecting a central error in Activision’s Step One analysis, Activision does
not approach “the Step 1 ‘directed to’ inquiry by asking ‘what the patent asserts to
be the focus of the claimed advance over the prior art.’” TecSec, Inc. v. Adobe Inc.,
978 F.3d 1278, 1292 (Fed. Cir. 2020) (quotation and citation omitted). Instead,
Activision over-simplifies the claims and reduces them to nothing more than “bare
filtering.” See, e.g., Red Br., 34.
Under TecSec, the correct Step One “directed to” analysis “depends on an
accurate characterization of what the claims require and of what the patent asserts to
be the claimed advance.” TecSec, 978 F.3d at 1294. Confirming that the Worlds
claims do provide a specific solution to a technical problem, the Worlds patents
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5
disclose their objective to create a network architecture for multiplayer virtual
worlds that avoids drawbacks of prior network architectures. See Blue Br., § III.C.
Contrary to Activision’s allegation, Worlds did not concede “to the district
court and the PTAB that the asserted claims are directed to the idea of filtering
position information to effect crowd control.” Red Br., 19-20, 36, 57. In its attempt
to define what the patent is “directed to,” Activision cites out of context to Worlds’
claim construction explanation of individual terms (such as determining).2
Red Br.,
19-20, 36. Activision’s approach to focus on individual elements within a claim,
rather than what the claim is “directed to,” suffers from the over-generalization that
this Court has warned about in the context of § 101. See TecSec, 978 F.3d at 1293
(a court should take caution against overgeneralizing claims in the § 101 analysis).
Moreover, Activision argues that the term “determining” includes “any
particular type, manner, or degree of filtering.” Red Br., 10 (“any filtering of
information … achieves ‘crowd control’”) (emphasis in original); id., 20; id., 28
(“Worlds’[] patent claims … do not provide any specific way of filtering
information”). But it overlooks that the Representative Claim specifically recites
2 To support its argument that Worlds only claims filtering, Activision cites to a
single statement in Worlds’ infringement contentions regarding a server’s
decision not to transmit an avatar position. Red Br., 27. But this statement lacks
context with the remaining limitations of that claim. In any event, the claim
being discussed was dropped as an asserted claim months before the District
Court ruled on Activision’s § 101 motion. Appx1716-1719; see also Blue Br., 14
n.8.
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how a client process determines a set of other user avatars to display, by comparing
the actual number of other users’ avatars to the client process’s maximum number.
See Appx0154 (19:38-42, 19:55-64).
Activision also contends that the Worlds’ claims are directed to the goal of
limiting or eliminating players’ participation, and equates “crowd control” with
“filtering” players out of the game, (see Red Br., 23; see also id., 2, 16 (“crowd
control through “filtering”)). For example, Activision compares Worlds’ claims to
reducing crowds in a “crowded restaurant,” and views the invention as simply a
measure to avoid “overwhelming the client and resulting in a breakdown of service
to a user.” Red Br., 29. But Activision’s inapposite analogy is equivalent to
limiting the number of players who can access a game at any single time. This is
indicative of Activision’s fundamental misunderstanding of Worlds’ innovation.3
In the context of the claimed client-server architecture, the Representative
Claim defines that a server selectively limits the distribution of some avatar position
information it receives to the clients, and an individual client can choose not to
process some of the position information it receives, all without removing any
3 Activision’s air-traffic-control analogy should be disregarded. The analogy is
supported by no evidence of long-standing practices, and is pure attorney
argument, right down to Activision’s statement that air traffic controllers would
dispute Worlds’ dismissal of the analogy as “unrealistic.” Red Br., 29 n.8. The
analogy is unsupported by evidence, and illogically asserts that ATCs would
prefer to see only a fraction of the planes in the sky at any given time. It has no
bearing on the Step One analysis.
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player from the game or restricting the number of players who can access the virtual
world.
Activision argues that the claims in fact do limit the population of the virtual
world. Red Br., 27 (“Nowhere in the claims is there any requirement … that the
alleged invention result in an increase in the number of users in the virtual world. In
fact, the claims require the exact opposite.”). For support, Activision cites to what it
calls a “‘maximum number’ of users” recitation. Id. (emphasis omitted). But the
“maximum number” recitation is not directed to the virtual world’s user population.
Rather, it is directed to the “maximum number of the other users’ avatars to be
displayed” as set for a user’s individual “client process.” Appx0154 (19:38-42,
19:55-64). Unlike a restaurant capacity limit, Worlds’ architecture does not turn
away potential players once any given client’s maximum number limit is hit,
because the claimed “maximum number” limit is a local user limit, not a global
limit of the virtual world.
Activision’s Red Brief also fails to acknowledge that the recognized
improvement in TecSec, which sought to more efficiently distribute information to a
“large audience,” is directly comparable to Worlds’ improvement. 978 F.3d at 1296
(the improvement in a data network provided “an efficient way for the sender to
permit different parts of the audience to see different parts of the file.”). While
Activision quotes this same passage, it offers no meaningful analysis to distinguish
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8
this precedent from Worlds’ technology, and simply characterizes the TecSec
claims as “genuinely directed to technical problems inherently grounded in
computer technology and that offered specific technical solutions.” See Red Br., 32.
There is no way to equate Worlds’ technical solution, which exists only in the
realm of virtual world technology, to the real world. As the District Court correctly
held, “the Patents-In-Suit resolve bandwidth issues with multiplayer games through
multi-criteria filtering of avatar position and state information.” Appx0003. Just as
in TecSec, this finding compels patent-eligibility under Step One.
3. Worlds’ Blue Brief did not include new arguments
describing the technical innovation contained within its
claims
Unable to refute the computer-process solution that Worlds introduced for
virtual world architecture, Activision instead contends that Worlds now advances a
new argument on appeal. Specifically, Activision claims that Worlds never argued
that its claims “increas[e] the number of user in the virtual world” to the District
Court. Red Br., 3 (emphasis in original).
“Waiver exists to ensure that ‘the lower court be fairly put on notice as to the
substance of the issue.’ ‘Once a federal claim is properly presented, a party can
make any argument in support of that claim; parties are not limited to the precise
arguments they made below.’” Pfizer, Inc. v. Lee, 811 F.3d 466, 471 (Fed. Cir.
2016) (citing Nelson v. Adams USA, Inc., 529 U.S. 460, 469–70 (2000) and Yee v.
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9
City of Escondido, Cal., 503 U.S. 519, 534–35 (1992)); see also Warner-Lambert
Co. v. Teva Pharms. USA, Inc., 418 F.3d 1326, 1338 n.11 (Fed. Cir. 2005). Not
only was the complained-about argument advanced to the District Court, it was
central to Worlds’ explanation of its technical innovation.
Throughout Worlds’ briefing and with support in the specification, Worlds
explained to the District Court that Worlds’ claimed solution was directed to
overcoming the technical limitations surrounding a virtual world populated by more
users than the individual clients and the server could accommodate. See Appx1345
(citing Appx0145 (1:14–2:20)); Appx1350 (“there is no real-world analogue to the
problem addressed by Worlds’ claimed computer network architecture, i.e., the risk
that due to a large number of people in a room, one’s consciousness may shut down,
or people move erratically, stop talking, or disappear.”).
Worlds also tied the invention’s protocols to allowing interaction to occur in
popular virtual worlds, pointing out that Worlds’ invention solves the problem of
“the crowds of avatars likely to occur in a popular virtual world.” Appx1351 (citing
Appx0147 (5:65–67, 5:33-35)); see also Appx1352 (discussing the problems
resulting from “a large number of other user avatars inhabiting a virtual world”);
Appx1353 (addressing the “flexible protocols” that permit client devices to access
“a largely-populated, online 3-D virtual world.”); Appx1361 (citing Appx0146-
0147 (3:41-46, 5:29-67)). Worlds even specifically raised the “counterintuitive”
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10
nature of its solution to the District Court: “[T]his counterintuitive solution, which
is designed to bring remote users together in the virtual space even where individual
network and processing limitations might otherwise be exceeded, is directed toward
‘improving the functionality of computers and computer networks themselves.’”
Appx1356 (emphasis added) (citation omitted).
Both Activision and the District Court incorrectly equated the virtual space
problem solved by Worlds as “the generic problem of crowd control” applicable to
“elevators,” “restaurants,” and “other physical spaces.” Appx0016; Appx0017; Red
Br., 3, 13. But unlike the claims in Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307 (Fed. Cir. 2016), Worlds’ claims are not directed to computerizing a
“long-prevalent practice.” Id. at 1314 (sorting mail by computer); Red Br., 22.
Worlds explained to the District Court how the real-world capacity limits of a
restaurant did not apply to virtual worlds, which lack physical constraints:
[W]e're talking about a virtual world where there is a
goal for people to come together. … When we think
about that in the context of the real world, like a
restaurant, it doesn't really apply. Because the problem
with the restaurant is, again, you m[a]y have a fire code
restriction, 250 people limit. Once you hit that limit,
nobody else comes in. That's not how it is in the virtual
wo[r]ld and the Worlds engineers realized back in
1995 that there were in effect an unlimited number of
people that could come in … .
And Worlds' invention and under their claims and the
specification, people could keep coming in, even once
you hit a limit … [T]o you it seems like it is just you
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and one other person, in fact, the space could be filled
way beyond that 250 [person limit].
Appx1668-1669 (emphasis added). Under Worlds’ claims, improvements in
computer processes at both the server-side and client-side permit the individual
components to avoid being overloaded by an expanding virtual world populace.
This is not a new argument on appeal, and compels eligibility under Step One.
B. Step Two: Granting Summary Judgment Was Legally Erroneous
Where the Record Evidence Supported Eligibility
Activision’s Red Brief fails to justify the District Court’s erroneous handling
of Step Two. Even if the District Court was correct to reach Step Two, it should not
have relied on Activision’s evidence of vacated IPR decisions. This is made even
more apparent through Activision’s current attempt to insulate itself from its own
role in encouraging the District Court’s reliance on those decisions. And without
the vacated IPR decisions, Activision lacks any evidence on Step Two, much less
clear and convincing evidence. To the contrary, Worlds submitted evidence that its
claims—viewed as an ordered combination—satisfy Step Two under BASCOM,
and the submitted evidence was sufficient to at least raise a factual dispute. The
District Court’s Order granting summary judgment was improper, and reversible
error.
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1. Step Two requires consideration of the ordered
combination, on which Activision presented no reliable
evidence
Activision’s current Step Two analysis departs from the flawed analysis
performed by the District Court. In particular, by both rejecting and embracing
portions of the District Court’s opinion, Activision’s Red Brief continuously
dodges the insufficient record below on the ordered combination recited in the
Representative Claim.
As explained in the Blue Brief, the District Court framed its analysis by
looking to vacated PTAB decision to conclude that the individual elements of
“client-side and server-side filtering of position information [are] not inventive.”
Blue Br., 44-46 (citing Appx0008-0009). The District Court cited to no evidence
to support its conclusion that “there is nothing in the ordering of the steps in the
claims (i.e., receiving, determining, comparing) that make them inventive.”
Appx0019.
In response, Activision effectively abandons the District Court’s
conclusion and its own prior reliance on the vacated PTAB decisions,
4 pointing
only to the “claim language” as evidence available to support the District Court’s
reliance on Step Two. Red Br., 44 (“claim language”), 50 (“claims themselves”),
4 Worlds addresses Activision’s confusing position on the vacated PTAB
decisions in Section II.B.5.
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51 (“claim language”). This reliance on “claim language” only confirms that it
has no evidence on the ordered combination of claim elements. See Red Br., 40,
50, 51. Activision mimics the District Court’s Order by stating—also without
evidence—that the representative claim steps are “organized in a completely
conventional way.” Red Br., 40. Without supporting evidence, this argument is
insufficient to prove, by clear and convincing evidence, that Worlds’ claims fail
to satisfy Step Two.
Indeed, on appeal, Activision cites to materials outside of the summary
judgment record to contend that the Representative Claim is invalid. Red Br. 45
n.13 (citing Appx2434-2447; Appx2452-2457); see also id., 48 (claiming
“Activision had ample evidence of invalidity” without citing to any evidence).
These outside materials, Appx2434-2447 and Appx2452-2457, were not exhibits
to Activision’s summary judgment briefing (see, e.g., Appx0464-0466), and
should not be considered now.
Activision’s other arguments are also unsupported by evidence. Activision
argues that “even as an ordered combination, there is no inventive concept that
would render the claims patent eligible at Step Two.” Red Br., 37. Activision
continues, “Worlds’[] patent claims do nothing more than implement the abstract
idea of filtering position information on generic computer components
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performing well-understood and routine functions in a conventional way.” Red
Br., 37-38. These statements lack any citation to evidence. Id.
Activision also looks to the specification to argue that the claimed
“invention can be carried out using known and conventional hardware, software,
and functions.” Red Br., 38. Indeed, the Worlds inventors realized that their
invention enabled the technical improvements of even legacy computers
accessing a virtual world. Appx1361 (citing Appx0146 (3:41-46), Appx0147
(5:29-67). And the ability to run a software innovation on legacy hardware or a
general purpose computer does not undercut § 101 compliance or otherwise
“doom[] the claims.” Enfish, LLC, 822 F.3d at 1338.
Importantly, nowhere does Activision consider the ordered combination of
the Representative Claim as required under Step Two. See Red Br., 38. This
deficiency continues in the paragraphs that follow, where Activision purports to be
addressing the ordered combination, but actually addresses claim elements
individually—“server process,” “client process,” “less than all,” and comparisons of
data values. Red Br., 38-40.
Looking beyond those individual elements, Activision claims that limiting
the representative claim to a “virtual space” “does not save the claim.” Red Br.,
42. But Activision’s viewpoint for this statement is about claiming an abstract
idea in a “particular technological environment,” such as claiming the use of an
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15
abstract idea on “on the Internet.” buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014). This viewpoint only serves to reiterate Step One
compliance. As Worlds explained to the District Court, “the concept of allowing
users to interact in a virtual world specifically arises in the realm of networked
computers.” Appx1352-1353, Appx1343. Under this Court’s precedent,
including Core Wireless, claims necessarily rooted in computer technology are
eligible under § 101. See, e.g., Core Wireless, 880 F.3d at 1363).
Activision’s revisiting of Two-Way Media Ltd. v. Comcast Cable
Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017) also falls short. Drawing
comparisons with this Court’s holding in Two-Way Media, Activision argues that
Worlds’ Representative Claim recites “quintessential computer functions and
ordered in a conventional way.” Red Br., 56. Despite Activision carrying the
burden of proof, there is no evidence to support this statement. See Red Br., 37-38,
50, 51. Rather, record evidence submitted by Worlds, including statements in the
specification, establishes that the Representative Claim recites features that were not
conventional and never previously implemented in virtual reality technology. See,
e.g., Appx1365-1368, Appx1372-1373.
In CosmoKey Solutions GMBH & Co. KG v. Duo Security LLC, 15 F.4th
1091, 1098-1099 (Fed. Cir. 2021), this Court held that the patent’s “claims and
specification recite a specific improvement to authentication” with disclosed
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benefits (citing to the specification of the patent-at-issue), and that the specification
disclosed “how the particular arrangement of steps in claim 1 provides a technical
improvement over conventional authentication methods.” Id. As in Ancora, the
Court confirmed that a “non-abstract computer-functionality improvement” can be
achieved by “a specific technique that departs from earlier approaches to solve a
specific computer problem.” Id. (quoting Ancora Techs., Inc. v. HTC Am., Inc., 908
F.3d 1343, 1349 (Fed. Cir. 2018)). The logic supporting Ancora and CosmoKey is
directly on point here. As explained to the District Court, Worlds’ inventors
recognized faults in prior techniques for distributing avatar positions and rendering
virtual worlds, and improved upon them. See Blue Br., 7-9; Appx1344-1346,
Appx1349-1354; Appx0146 (3:41-44); Appx0147 (5:41-45). The disclosed
innovation, which is also captured in Worlds’ claims, satisfies Step Two.
Accordingly, Activision failed to provide evidence supporting the District
Court’s conclusion that the claims, as an ordered combination, were “well
understood, routine, and conventional.”
2. Under BASCOM and other precedent, Worlds’ claims
include an inventive concept and satisfy Step Two
Activision tries to take Worlds to task for “fail[ing] to articulate what—in
any of the asserted claims—the ordered combination is that allegedly provides the
inventive concept.” Red Br., 41. Worlds did so, drawing close comparisons to the
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importance given to the claimed location of filtering and customizable filtering
ability from BASCOM. Blue Br., 50-51.
On the other hand, Activision’s argument suffers from a disregard for claim
features determined to be important in the Step Two analysis under this Court’s
precedent. See, e.g., BASCOM, 827 F.3d at 1350, 1352. In particular, despite
Activision’s statement to the contrary, BASCOM confirms that the location and
flexibility of the filtering can “supply the necessary inventive concept” to satisfy
Step Two. See Red Br., 42 (citing BASCOM, 827 F.3d at 1350-51).
Attempting to distinguish Worlds’ claims from the eligible claim in
BASCOM, Activision mischaracterizes the representative claim as “merely
recit[ing] the abstract idea of filtering content along with the requirement to
perform it on the Internet, or to perform it on a set of generic computer
components.” Red Br., 53 (quoting BASCOM, 827 F.3d at 1350).5
Once that
mischaracterization is corrected, Activision is left with no distinction at all, as
BASCOM confirms.
Specifically, BASCOM’s claims were distinguished by this Court from
previous cases that claimed “an abstract idea implemented on generic computer
components, without providing a specific technical solution beyond simply using
5 Earlier in its brief, Activision accurately characterizes Worlds’ claims as being
directed to “client-server architecture,” but this concession is carefully avoided
while Activision addresses Step One and Step Two of Alice. See Red Br., 4.
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generic computer concepts in a conventional way.” BASCOM, 827 F.3d at 1352
(citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015); Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass'n, 776 F.3d 1343, 1348 (Fed. Cir. 2014); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013)). Unlike in
those cases, BASCOM’s claims “do not preempt the use of the abstract idea of
filtering content on the Internet or on generic computer components performing
conventional activities.” BASCOM, 827 F.3d at 1352. Similarly, Worlds’ claims
do not preempt the use of filtering content on the Internet or on generic computer
components performing conventional activities.
Below, the District Court noted that in BASCOM, the “necessary, inventive
concept” was provided by “the ‘installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features specific
to each end user.’” Appx0019 n.2. But just as the District Court failed to see the
clear parallels between that description and the Worlds claims, Activision fails to
meaningfully distinguish BASCOM. Instead, Activision simply recites
BASCOM’s claim language and repeats the District Court’s stated distinction.
Red Br., 53-54. Nowhere does Activision actively address the fact that Worlds’
claims, like BASCOM’s claims, recite a specific location for the claimed filtering
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19
tool and allow for a client-side customizable filtering feature in the form of a
user’s “maximum number” of other avatars to display. Given these similarities,
BASCOM is binding precedent establishing that Worlds’ claims satisfy Step Two.
See Red Br., 53-54.
Notably, Activision’s minimal discussion of BASCOM is not surprising, as
Activision’s initial motion under § 101 strongly analogized Worlds’ claims to
BASCOM’s. Appx0326-0328. That analogy was based on the district court’s
holding that BASCOM’s claimed failed to satisfy § 101, and before this Court
reversed the district court in BASCOM. Thereafter, Activision reversed course.
See Appx0452 n.6; see also Appx1606 (“Unlike Worlds’ claims, the claims in
BASCOM do not simply recite the generic step(s) that are inherent in almost any
act of filtering.”). Having previously compared Worlds’ claims to BASCOM’s,
Activision continuously displays an inability to draw a meaningful distinction.
For the same reason that the claims at issue in BASCOM satisfy Step Two, so do
Worlds’ claims.
3. Worlds’ unrefuted evidence established a genuine issue of
material fact regarding whether the claims were “wellknown, routine, and conventional”
Activision’s Red Brief acknowledges that summary judgment is only
“appropriate when there is no genuine dispute of material fact.” Red Br., 18. But
Activision fails to meaningfully address the evidence submitted by Worlds that
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20
was overlooked by the District Court. This evidence must be considered, and
must be viewed in the manner most favorable to Worlds. See Ellis v. Fid. Mgmt.
Tr. Co., 883 F.3d 1, 3 (1st Cir. 2018) (quoting Walsh v. TelTech Sys., Inc., 821
F.3d 155, 157-58 (1st Cir. 2016)). Weighed against Activision’s lack of
evidence, Worlds’ evidence establishes that the District Court erred by granting
Activision’s summary judgment motion.
Worlds cited to evidence in the form of the ’690 Patent’s specification
throughout its statement of material facts. See Appx1365-1367. These
statements were admitted by Activision. See Appx1621. These disclosures also
serve as evidence establishing the improvements of Worlds’ claimed technology
over the prior art, and it was error for the District Court to overlook this evidence.
See Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) (specification
disclosures in the patent-at-issue constituted evidence sufficient to create a
genuine dispute of material fact under Step Two).
Activision states that “[s]ummary judgment cannot be defeated with the use
of conclusory allegations or improbable inferences.” Red Br., 18. But under
Berkheimer, evidence including specification disclosures are not “conclusory
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21
allegations or improbable inferences.” Berkheimer, 881 F.3d at 1370.
6
Indeed, the
District Court even found that “the Patents-In-Suit resolve bandwidth issues with
multiplayer games through multi-criteria filtering of avatar position and state
information, but at the client side and the server side.” Appx0003; see also Blue
Br., 43. Nothing submitted or argued by Activision contradicts this undisputed
finding.
Worlds also presented contemporaneous articles demonstrating that its
invention was recognized in the industry to the District Court. Appx1372-1373,
Appx1379-1380.7
Worlds explained that these “contemporaneous articles
addressing the Worlds system … show an inventive concept that improved upon
computer network architecture for 3-D virtual worlds.” Appx1344-1345; see also
Appx1379-1380 (¶¶15-18). While this evidence raised a genuine dispute of
6 Activision incorrectly claims that “it is error to rely on” a patent specification to
find an inventive concept. Red Br., 51 (citing Intellectual Ventures I, 838 F.3d at
1322). To the contrary, in Berkheimer, the district court finding on Step Two was
remanded precisely because there was “at least a genuine issue of material fact in
light of the specification” regarding whether the claims improved upon
conventional methods. Berkheimer, 881 F.3d at 1370. On that basis, summary
judgment was improper. Id. Moreover, both before the District Court and in its
Blue Brief, Worlds noted the clear factual disputes raised by, inter alia, its
specification disclosures. Appx1360-1362; Blue Br., 3-11, 46.
7 Activision claims that these arguments “were never advanced” below and are
forfeited. Red Br., 51. This is plainly incorrect.
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22
material fact on Step Two, the evidence was overlooked by the District Court
without comment. At summary judgment, this is error.
The evidence before the District Court establishes that the Representative
Claim’s elements, taken together as an ordered combination, were not wellknown, routine, and conventional. On the record evidence, the District Court
could only conclude that the Representative Claim “recite[s] an invention that is
not merely the routine or conventional use of [a client-server computer network
architecture for a virtual world].” See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1259 (Fed. Cir. 2014). At minimum, Worlds’ evidence created a
genuine dispute of material fact that warranted denial of Activision’s summary
judgment motion. Activision’s Red Brief cannot rebut this clear basis for
reversal.
The District Court clearly erred by overlooking Worlds’ evidence on Step
Two, and Activision offers no authority to the contrary. Granting Activision’s
motion for summary judgment over Worlds’ evidence was reversible error.
4. The District Court committed reversible error in
concluding that vacated IPR decisions were persuasive
while also ignoring the non-vacated IPR decision
upholding patentability of the Representative Claim
As discussed in Worlds’ Blue Brief, the Representative Claim evaluated by
the District Court survived IPR and was held patentable by the PTAB over
challenges in which Activision was a real-party-in-interest (“RPI”). See Appx1384;
Case: 21-1990 Document: 19 Page: 30 Filed: 11/16/2021
23
Appx1621 (Activision admitting that the Representative Claim was found
patentable in IPR2015-01268). Three other Worlds patents were the subject of IPR
final written decisions that were vacated by this Court based on Activision’s RPI
status. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
In its Order, the District Court stated that it found the three vacated PTAB
decisions “persuasive” in reaching its own decision. See Appx0008-0009. But the
District Court found nothing persuasive about the PTAB decision upholding the
patentability of the Representative Claim. Id. This was error on multiple levels.
First, eligibility was not at issue in the IPRs, as Worlds pointed out to the District
Court. Appx0444 n.1. Second, to the extent any PTAB decision could serve as a
“data point in the Section 101 analysis” (see Red Br., 49), it was error for the
District Court to view the merits analysis in three vacated decisions as more
persuasive than the merits analysis in the non-vacated decision addressing the
Representative Claim.
8
Last, it was error to view the PTAB decisions in the light
most favorable to the movant, rather than Worlds, by overlooking that the
Representative Claim was found patentable in its IPR. See Ellis, 883 F.3d at 3.
8 Responsive to Activision’s footnote 15, Worlds’ admission of what the PTAB
did in the three vacated decisions is not an admission—“mplicit” or
otherwise—that the PTAB was correct in those decisions, which Worlds
successfully appealed. See Red Br., 47 n.15.
Case: 21-1990 Document: 19 Page: 31 Filed: 11/16/2021
24
Moreover, Activision cannot escape its own role in encouraging the District
Court to rely on the vacated IPR decisions. Before the District Court, Activision
strongly urged for reliance on those decisions. Appx0444-0446 (section entitled
“Worlds’ Positions—and the PTAB’s Findings—in Related IPR Proceedings
Confirm the Patents-in-Suit Are Patent Ineligible.”); Appx1636 (“Activision
submits that the subsequently vacated Final Written Decisions are relevant under
Federal Rule of Evidence 401”). Notably, Activision submitted only the three
PTAB decisions vacated by this Court, not the non-vacated decisions, and it argued
that the “the substance of the PTAB’s prior [vacated] rulings confirms that the basic
idea of client-side and server-side filtering of position information was not
inventive” (Appx0445), a nearly verbatim quote of the District Court’s finding at
Appx0008-0009.
Worlds responded that the District Court should not rely on the IPR decisions
and, if it did, it should consider the IPR decision upholding the patentability of the
claims, including the Representative Claim. Appx1359 n.7; Appx1360-1361;
Appx1373-1375. Worlds explained that “Activision’s attempt to leverage the
USPTO’s inter partes review proceedings (‘IPRs’), including three vacated
decisions, has no bearing on this question [of subject-matter eligibility]. … As
Activision admits, eligibility was not at issue in the IPRs. Id. at 3 n.1.” Appx1359
n.7. Worlds also submitted a statement of material fact that the Representative
Case: 21-1990 Document: 19 Page: 32 Filed: 11/16/2021
25
Claim was found patentable in IPR2015-01268, and Activision admitted this before
this District Court and this Court. Appx1366 (¶3); Appx1621; Red Br., 45.
During oral argument, the District Court inquired, “what, if any, reliance
should I or can I make on any of the PTAB’s analysis and findings” and “what, if
any, reliance should I make on any findings that were made there?” Appx1645-
1646. In response, Activision stated that the District Court could “feel free” to
“consider the record before the PTAB” and which it argues “confirms that the
Patent Office thought that most of their claims were invalid based on the record
presented.” Appx1664-1665.
Now retreating from this confession of error, the Red Brief injects a
counternarrative to how Activision urged the district court to use those vacated
decisions. Activision contends that “[t]he district court did not rely upon those
decisions but noted they are ‘persuasive authority ….’,” and “the district court did
not rely on the PTAB’s decisions … in its Alice Step Two analysis.” Red Br. 15
(citing Appx0008); Red Br. 46 (citing Appx0018-0020).
To the contrary, the link between the District Court’s reliance on the vacated
PTAB decisions and the § 101 inquiry is plainly apparent when considered in light
of Activision’s briefing and clear statement that the District Court could rely on
those decisions, and the District Court’s near-verbatim recitation of the position set
Case: 21-1990 Document: 19 Page: 33 Filed: 11/16/2021
26
forth in Activision’s opening brief on summary judgment. Compare Appx0444-
0446 with Appx0008-0009.
Moreover, Activision now takes a contradictory approach regarding the
District Court’s reliance on PTAB decisions that were later vacated, while ignoring
the non-vacated PTAB decision that upheld the patentability of the Representative
Claim. Red Br., 44-50.
On one hand, Activision firmly argues that “[e]ligibility and novelty are
separate inquiries.” See, e.g., Red Brief at 44 (citing Two-Way Media, 874 F.3d at
1340). Activision argues that the PTAB decision upholding patentability of the
representative claim (claim 4 of the ’690 Patent) is of no “legal significance” to the
Section 101 inquiry.9
Red Br., 45.
But Activision then spends five pages of its brief (Red Br., 46-50) supporting
the District Court’s reliance on the vacated IPR decisions. In particular, Activision
argues that “the PTAB’s merits reasoning in those [vacated] decisions remains
9 In exchange for the District Court’s order staying the litigation pending the
IPRs, Activision “agree[d] to be bound in this lawsuit by the PTAB’s final written
decisions on Bungie’s IPR Petitions as to the specific invalidity grounds
adjudicated in the final written decisions.” Appx0411. And there is no dispute
that the PTAB’s final written decision on the ’690 Patent confirmed the
patentability of the representative claim.
Case: 21-1990 Document: 19 Page: 34 Filed: 11/16/2021
27
persuasive.” 10 Red Br., 46. Activision even goes so far as to suggest a
cherrypicked view of the ’690 Patent’s final written decision in IPR2015-01268,
crediting the PTAB’s canceling of certain claims while ignoring its decision
upholding patentability of the Representative Claim. Red Br., 47.
But under either approach, the District Court was wrong to grant summary
judgment. If the District Court was permitted to look to the PTAB’s patentability
analysis in its final written decisions, then it should have viewed that evidence in the
manner most favorable to non-movant Worlds. Ellis, 883 F.3d at 3. It did not do
so, as it failed to consider the favorable decision addressing the Representative
Claim while crediting three vacated decisions. Appx0008-0009. On the other hand,
if eligibility and novelty are separate inquiries, as Worlds argued to the District
Court and Activision now seemingly agrees with, then the District Court was wrong
to view any of the PTAB’s final written decisions as persuasive on the question of
eligibility. Under either approach, the District Court erred. Correction of this error
is achieved by reversing the District Court’s grant of summary judgment.
10 Activision argues that “the unchallenged portion of an opinion containing a
vacated judgment is at least persuasive authority.” Red Br., 46-47 (quoting
United States v. Young, 846 F. App’x 179, 182 (4th Cir. 2021)). But Worlds’
appeal of the later-vacated PTAB decisions included arguments challenging the
PTAB’s “invalidity” conclusions, as this Court acknowledged. See Worlds, 903
F.3d at 1246-48 (“[W]e need not address the merits of the parties’ invalidity
arguments at this time.”).
Case: 21-1990 Document: 19 Page: 35 Filed: 11/16/2021
28
Finally, the District Court’s error in considering vacated PTAB decisions was
not harmless error since there was no other evidence presented by Activision to
support its Step Two conclusion. Thus, disregarding the vacated PTAB decisions,
as it should have, would have changed the outcome. See Delta and Pine Land Co.
v. Sinkers Corp., 177 F.3d 1343,1352 (Fed. Cir. 1999) (error is not harmless if it
“may make a difference” in the court’s decision); Apple v. International Trade
Commission, 725 F.3d 1356, 1366-1367 (Fed. Cir. 2013).
5. World’s unclean hands argument is not forfeited because
Activision admitted after the summary judgment briefing
that it was a real party in interest, and this issue is only
relevant to the weight to be given to the vacated IPR
decisions
Related to the District Court’s improper handling of the PTAB decisions,
Activision argues that Worlds’ “unclean hands” argument is “forfeited” because it
alleges that “Worlds never made this argument below.” Red Br., 48. Worlds
properly raised this issue on appeal in support of its argument below that the District
Court should not have considered the vacated IPR decisions, and this Court has
discretion to consider it. See Singleton v. Wulff, 428 U.S. 106, 121 (1976).
Case: 21-1990 Document: 19 Page: 36 Filed: 11/16/2021
29
Many months after the briefing on summary judgment was closed, Activision
agreed it was an RPI in Bungie’s IPRs for all purposes11 in exchange for avoiding
discovery into the issue. Appx1726, Appx2758. As a result, the degree of
Activision’s actual involvement in Bungie’s IPRs remains unanswered. See
Appx1736 (“During oral argument [before the Federal Circuit], Judge O’Malley …
asked Bungie’s counsel, ‘If this was such a pristine thing on your part, and
Activision had nothing to do with it, why was there no declaration?’ See Worlds
Inc. v. Bungie, Inc. Oral Argument Recording (Mar. 9, 2018), available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2017-1481.mp3 at 45:49-
45:56).”).
Even after this Court’s ruling, and the PTAB’s order terminating the IPRs—
and even to this day, Activision refuses to admit the true facts. In its briefing to the
District Court, Activision repeatedly referred to the IPRs as being filed by a “third
party.” Appx0444; Appx1664. By the time of the District Court’s ruling on
summary judgment, Activision had negotiated continued secrecy on this issue with
11Activision misstates the record when it contends that “Activision agreed not to
dispute that it was a real-party-in-interest.” Red Br., 48. Activision, in fact,
conceded it was an RPI to Bungie’s IPRs. See Appx1726 (the Activision entities
“admit for purposes of the present action that they were real-parties-in-interest”).
This difference is material. Additionally, Activision’s contention that discovery
into this relationship would have been “sweeping and invasive” (Red Br., 48) and
“burdensome” (Red Br., 49) only reinforces the admission. If there was no
relationship, any discovery obligation would be minimal, not sweeping, invasive,
and burdensome.
Case: 21-1990 Document: 19 Page: 37 Filed: 11/16/2021
30
the District Court in exchange for an admission that Activision had a substantial
role in Bungie’s untimely IPR petitions.
In any event, Worlds’ “unclean hands” argument is purely related to the
weight to be given to the PTAB’s vacated decisions. As Activision finally agrees
that eligibility and novelty are separate questions, the District Court was plainly
wrong in giving any weight to vacated PTAB decisions.
6. Worlds’ claims do not preempt “any form of filtering
position information within” a computer
Within its Step Two analysis, Activision’s Red Brief includes an
unwarranted warning of preemption. Activision states that “under Worlds’ broad
interpretation of its claims, the claims would preempt any form of filtering
position information within conventional computer systems.” Red Br., 43. But
this warning is divorced from the actual elements of the representative claim.
Worlds’ claims are directed to a client-server virtual world architecture, as even
Activision concedes early in its Red Brief. Red Br., 4 (discussing Worlds’
“claimed client-server architecture”). The claims include an inventive
combination of steps that culls avatar position data at multiple levels of the clientserver computer architecture. Activision’s warning of preemption lacks any
logical relationship to the actual recited elements of Worlds’ claims, which are
not merely directed to “bare filtering” or “filtering . . . on the Internet.” Red Br.,
31, 34, 53.
Case: 21-1990 Document: 19 Page: 38 Filed: 11/16/2021
31
III. CONCLUSION AND RELIEF REQUESTED
The Worlds patents disclose and claim a specific computer-process
solution to a technical problem that exists solely in the realm of virtual worlds.
Under this Court’s precedent, including Core Wireless, the District Court erred by
failing to properly determine what Worlds’ claims are “directed to.” Under the
proper analysis, Worlds’ claims are eligible under Step One.
Despite the District Court’s error on Step One, it should have concluded
that the Worlds’ claims satisfy § 101 under Step Two based on Worlds’ evidence
of an inventive concept. At minimum, this evidence was sufficient to raise a
genuine dispute of material fact, and granting summary judgment despite this
question of material fact was error.
For the foregoing reasons, Worlds’ asserted claims are patent-eligible, and
Worlds respectfully asks that the Court reverse, or alternatively remand the
District Court’s Summary Judgment of Invalidity Under § 101.
Case: 21-1990 Document: 19 Page: 39 Filed: 11/16/2021
32
November 16, 2021 Respectfully submitted,
/s/ wayne m. helge
WAYNE M. HELGE
JAMES T. WILSON
ALDO NOTO
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
jwilson@dbjg.com
anoto@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 19 Page: 40 Filed: 11/16/2021
CERTIFICATE OF FILING AND SERVICE
I hereby certify that, on November 16, 2021, I electronically filed the
foregoing with the Clerk of Court using the CM/ECF System, which will send
notice of such filing to all registered users.
I further certify that, upon acceptance and request from the Court, the
required paper copies of the foregoing will be deposited with United Parcel
Service for delivery to the Clerk, UNITED STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT, 717 Madison Place, N.W., Washington, D.C. 20439.
November 16, 2021 Respectfully submitted,
/s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 19 Page: 41 Filed: 11/16/2021
CERTIFICATE OF COMPLIANCE
1. This brief complies with the type-volume limitation of Federal Circuit Rule
32(b)(1):
X The brief contains 6,972 words, excluding the parts of the brief
exempted by Federal Rule of Appellate Procedure 32(f) and Federal
Circuit Rule 32(b)(2).
2. This brief complies with the typeface requirements of Federal Rule of
Appellate Procedure 32(a)(5) and the typestyle requirements of Federal Rule of
Appellate Procedure 32(a)(6):
X The brief has been prepared in a proportionally spaced typeface
with serifs using MS Word (Office365) in a 14 point Times New
Roman font.
Dated: November 16, 2021 /s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 19 Page: 42 Filed: 11/16/2021
World's response is due 11/17.
Pacer posting granting Worlds 14 day extension -
10/21/2021 18 **TEXT ONLY** ORDER granting motion to extend time to file brief [17] filed by Appellant Worlds Inc. The reply brief is due 11/17/2021. Service as of this date by the Clerk of Court. This order has been issued without an attached document and is official and binding. [807363] [JCW] [Entered: 10/21/2021 03:27 PM]
Pacer document posted 10/21 - Worlds requesting 14 day extension on reply
No. 2021-1990
United States Court of Appeals
for the Federal Circuit
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC.,
ACTIVISION PUBLISHING, INC.,
Defendants-Appellees
On Appeal from the United States District Court for the District of
Massachusetts in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
PLAINTIFF-APPELLANT WORLDS INC.’S UNOPPOSED MOTION
FOR A 14-DAY EXTENTION OF TIME TO FILE REPLY BRIEF
WAYNE M. HELGE
JAMES T. WILSON
ALDO NOTO
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
jwilson@dbjg.com
anoto@dbjg.com
Counsel for Appellant Worlds Inc.
OCTOBER 21, 2021
Case: 21-1990 Document: 17 Page: 1 Filed: 10/21/2021
1
Pursuant to Federal Rule of Appellate Procedure 26(b) and Federal Circuit
Rule 26(b), Plaintiff-Appellant Worlds Inc. (“Worlds”) respectfully moves for a
14-day extension of the time within which Worlds may file its reply brief. Counsel
for Defendants-Appellees Activision Blizzard Inc., Blizzard Entertainment, Inc.,
and Activision Publishing, Inc. (“Appellees”) has informed counsel for Worlds
that Appellees do not oppose this motion and will not file a response.
Worlds’ reply brief is currently due November 3, 2021. Worlds
respectfully requests that the briefing schedule be revised such that the deadline is
extended by 14 days. If Worlds’ request is granted, its reply brief would be due
November 17, 2021. Worlds has not previously sought an extension of time for
filing their reply brief.
There is good cause forthe requested 14-day extension. Worldsrequeststhis
extension of time in order to prepare and submit a reply brief that can best assist
the Court in deciding the issues raised in this appeal. Additionally, Worlds’
counsel has intervening deadlines and professional obligations leading up to the
current due date of November 3, 2021, and this extension will allow Worlds and
its counsel sufficient time to prepare Worlds’ reply brief in light of those
intervening deadlines and professional obligations.
Worlds respectfully requests that this motion be granted.
Case: 21-1990 Document: 17 Page: 2 Filed: 10/21/2021
2
Dated: October 21, 2021 Respectfully submitted,
/s/ wayne m. helge
WAYNE M. HELGE
JAMES T. WILSON
ALDO NOTO
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
jwilson@dbjg.com
anoto@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 17 Page: 3 Filed: 10/21/2021
CERTIFICATE OF INTEREST
In accordance with Federal Circuit Rule 47.4(a) and (b), counsel for
Appellant Worlds Inc. certifies the following:
1. Represented Entities (Fed. Cir. R. 47.4(a)(1)): Worlds Inc.
2. The real party in interest (Fed. Cir. R. 47.4(a)(2)): None/Not Applicable
3. Parent Corporations and Stockholders (Fed. Cir. R. 47.4(a)(3)):
None/Not Applicable
4. Legal Representatives (Fed. Cir. R. 47.4(a)(4)):
Alan A. Wright, Gregory A. Krauss, Donald L. Jackson, Walter D.
Davis. Jr. of DAVIDSON BERQUIST JACKSON & GOWDEY, LLP;
Max L. Tribble, Chanler Langham, Ryan Caughey, Brian D. Melton,
Joseph S. Grinstein, Sandeep Seth of SUSMAN GODFREY LLP; and
Joel R. Leeman, Jack C. Schecter, Meredith L. Ainbinder of
SUNSTEIN LLP
5. Statement of Related Cases (Fed. Cir. R. 47.4(a)(5) and 47.5)
(Fed. Cir. R. 47.5(a)):
(1)Worlds Inc. v. Bungie, Inc., Case Nos. 2017-1481, 2017-1546, and
2017-1583 (consolidated).
(2)September 7, 2018.
Case: 21-1990 Document: 17 Page: 4 Filed: 10/21/2021
2
(3)Chief Judge Prost, Circuit Judge O’Malley, and Circuit Judge
Taranto.
(4)Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018).
(Fed. Cir. R. 47.5(b)): None/Not Applicable
6. Organizational Victims and Bankruptcy Cases (Fed. Cir. R. 47.4(a)(6)):
None/Not Applicable
October 21, 2021 /s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 17 Page: 5 Filed: 10/21/2021
3
CERTIFICATE OF COMPLIANCE
The foregoing filing complies with the relevant type-volume limitation of
the Federal Rules of Appellate Procedure and Federal Circuit Rules because:
1. The filing has been prepared using a proportionally-spaced typeface and
includes 212 words.
2. The brief has been prepared in proportionally spaced typeface using
Microsoft Word Office365 in 14 point Times New Roman font. As permitted by
Fed. R. App. P. 32(g), the undersigned has relied upon the word count feature of
this word processing system in preparing this certificate.
Dated: October 21, 2021 /s/ wayne m. helge
WAYNE M. HELGE
DAVIDSON BERQUIST JACKSON
& GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
whelge@dbjg.com
Counsel for Appellant Worlds Inc.
Case: 21-1990 Document: 17 Page: 6 Filed: 10/21/2021
Activision filing from Pacer
No. 2021-1990
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
WORLDS INC.,
Plaintiff-Appellant,
v.
ACTIVISION BLIZZARD INC., BLIZZARD ENTERTAINMENT, INC., ACTIVISION
PUBLISHING, INC.,
Defendants-Appellees.
On Appeal from the United States District Court for the District of Massachusetts
in Case No. 1:12-cv-10576-DJC, Judge Denise J. Casper
BRIEF FOR DEFENDANTS-APPELLEES
KEVIN S. PRUSSIA
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
SONAL N. MEHTA
JENNIFER J. JOHN
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
(650) 858-6000
Sonal.Mehta@wilmerhale.com
Attorneys for Defendants-Appellees
October 13, 2021
Case: 21-1990 Document: 14 Page: 1 Filed: 10/13/2021
REPRESENTATIVE PATENT CLAIM
Claim 4 of U.S. Patent No. 7,181,690
1. A method for enabling a first user to interact with other users in a virtual space,
wherein the first user and the other users each have an avatar and a client process
associated therewith, and wherein each client process is in communication with a
server process, wherein the method comprises:
(a) receiving a position of less than all of the other users’ avatars from
the server process; and
(b) determining, from the received positions, a set of the other users’
avatars that are to be displayed to the first user,
wherein steps (a) and (b) are performed by the client process associated
with the first user.
4. The method of claim 1, wherein step (1b) comprises
(b)(1) determining from the received positions an actual number of the
other users’ avatars;
(b)(2) determining a maximum number of the other users’ avatars to be
displayed; and
(b)(3) comparing the actual number to the maximum number to
determine which of the other users’ avatars are to be displayed wherein
steps (b)(1)–(b)(3) are performed by the client process associated with
the first user.
Case: 21-1990 Document: 14 Page: 2 Filed: 10/13/2021
- i -
CERTIFICATE OF INTEREST
Counsel for Defendants-Appellees Activision Blizzard Inc., Blizzard
Entertainment, Inc. and Activision Publishing, Inc. certifies the following:
1. Represented Entities. Fed. Cir. R. 47.4(a)(1). Provide the full names
of all entities represented by undersigned counsel in this case.
Activision Blizzard Inc., Blizzard Entertainment, Inc. and Activision
Publishing, Inc.
2. Real Party in Interest. Fed. Cir. R. 47.4(a)(2). Provide the full names
of all real parties in interest for the entities. Do not list the real parties if they are the
same as the entities.
None.
3. Parent Corporations and Stockholders. Fed. Cir. R. 47.4(a)(3).
Provide the full names of all parent corporations for the entities and all publicly held
companies that own 10% or more stock in the entities.
Activision Entertainment Holdings, Inc.
4. Legal Representatives. List all law firms, partners, and associates that
(a) appeared for the entities in the originating court or agency or (b) are expected to
appear in this court for the entities. Do not include those who have already entered
an appearance in this court. Fed. Cir. R. 47.4(a)(4).
WILMER CUTLER PICKERING HALE AND DORR LLP: Scott W. Bertulli, Claire
M. Specht, Rian M. Rossetti (former)
ROPES & GRAY LLP: Samuel L. Brenner, David S. Chun, Jesse J. Jenner,
Brian P. Biddinger (former), Matthew R. Clements (former), Blake B. Greene
(former), Christopher J. Harnett (former), Kathryn N. Hong (former), Gene
W. Lee (former), Sharon Lee (former), Matthew J. Moffa (former)
KENNEY & SAMS, P.C.: Christopher A. Kenney, David R. Kerrigan, Eric B.
Goldberg (former)
Case: 21-1990 Document: 14 Page: 3 Filed: 10/13/2021
- ii -
5. Related Cases. Provide the case titles and numbers of any case known
to be pending in this court or any other court or agency that will directly affect or be
directly affected by this court’s decision in the pending appeal. Do not include the
originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
R. 47.5(b).
None.
6. Organizational Victims and Bankruptcy Cases. Provide any
information required under Fed. R. App. P. 26.1(b) (organizational victims in
criminal cases) and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R.
47.4(a)(6).
None.
Dated: October 13, 2021 /s/ Sonal N. Mehta
SONAL N. MEHTA
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
(650) 858-6000
Case: 21-1990 Document: 14 Page: 4 Filed: 10/13/2021
- iii -
TABLE OF CONTENTS
Page
PATENT CLAIMS AT ISSUE
CERTIFICATE OF INTEREST ................................................................................. i
TABLE OF AUTHORITIES ..................................................................................... v
STATEMENT OF RELATED CASES ..................................................................... 1
INTRODUCTION ..................................................................................................... 2
STATEMENT OF ISSUE ON APPEAL ................................................................... 5
STATEMENT OF THE CASE .................................................................................. 5
A. The Parties ............................................................................................. 5
B. The Asserted Patents ............................................................................. 5
C. Litigation And Agency Proceedings ................................................... 10
D. The Decision Under Review ............................................................... 12
SUMMARY OF THE ARGUMENT ...................................................................... 15
ARGUMENT ........................................................................................................... 17
I. STANDARD OF REVIEW ................................................................................... 17
II. THE ASSERTED PATENT CLAIMS ARE DIRECTED TO ABSTRACT
IDEAS AT ALICE STEP ONE .............................................................................. 18
A. The District Court Correctly Determined That The
Asserted Claims Are Directed To The Abstract Idea Of
Filtering ............................................................................................... 19
B. Worlds’s Step One Arguments Are Misguided .................................. 26
1. The Claims Do Not Provide a Specific Solution to
a Technological Problem .......................................................... 26
Case: 21-1990 Document: 14 Page: 5 Filed: 10/13/2021
- iv -
2. Worlds’s Attempts to Save Its Claims by Citing to
Inapposite Cases Should Be Rejected ....................................... 31
III. THE ASSERTED PATENT CLAIMS RECITE NO INVENTIVE CONCEPT
AT ALICE STEP TWO ....................................................................................... 36
A. No “Inventive Concept” Transforms The Claims’
Abstract Idea Into Patent-Eligible Subject Matter .............................. 37
B. Worlds’s Remaining Step Two Arguments Fail ................................. 44
1. Worlds’s Arguments That the Record Requires
Finding an Inventive Concept Are Inconsistent
with Precedent and Forfeited .................................................... 44
a. The PTAB’s finding as to the representative
claim does not affect the district court’s
determination. ................................................................. 44
b. The district court did not err with respect to
PTAB decisions related to the ’856, ’501,
and ’998 Patents. ............................................................. 46
c. The district court properly relied on claim
language and Worlds’s forfeited argument
as to third-party articles does not affect the
analysis. .......................................................................... 51
2. Precedent Supports the District Court’s Conclusion
That the Asserted Claims Contain No Inventive
Concept ..................................................................................... 52
CONCLUSION ........................................................................................................ 57
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE
Case: 21-1990 Document: 14 Page: 6 Filed: 10/13/2021
- v -
TABLE OF AUTHORITIES
CASES
Page(s)
Accenture Global Services., GmbH v. Guideware Software, Inc.,
728 F.3d 1336 (Fed. Cir. 2013) .......................................................................... 39
Affinity Labs of Texas, LLC v. DIRECTV LLC,
838 F.3d 1253 (Fed. Cir. 2016) .......................................................................... 19
Alice Corp. Pty. v. CLS Bank International,
573 U.S. 208 (2014) .....................................................................................passim
Amdocs (Israel) Ltd. v. Opennet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016) .......................................................................... 54
Ancora Technologies, Inc. v. HTC America, Inc.,
908 F.3d 1343 (Fed. Cir. 2018) .......................................................................... 33
Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371 (Fed. Cir. 2015) .............................................................. 17, 18, 43
Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd.,
731 F.2d 831 (Fed. Cir. 1984) ............................................................................ 18
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) ...................................................................passim
Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018) .................................................................... 18, 25
Braemar Manufacturing, LLC v. ScottCare Corp.,
816 F. App’x 465 (Fed. Cir. 2020) (nonprecedential) .................................passim
Bridge & Post, Inc. v. Verizon Communications, Inc.,
778 F. App’x 882 (Fed. Cir. 2019) (nonprecedential) ........................................ 50
Brown v. Kelly,
609 F.3d 467 (2d Cir. 2010) ............................................................................... 47
BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281 (Fed. Cir. 2018) .................................................................... 42, 53
Case: 21-1990 Document: 14 Page: 7 Filed: 10/13/2021
- vi -
buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014) .......................................................................... 42
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) ............................................................................................ 18
ChargePoint, Inc. v. SemaConnect, Inc.,
920 F.3d 759 (Fed. Cir. 2019) ................................................................ 26, 42, 53
Content Extraction & Transmission LLC v. Wells Fargo Bank,
National Association,
776 F.3d 1343 (Fed. Cir. 2014) .................................................................... 16, 24
Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
880 F.3d 1356 (Fed. Cir. 2018) .......................................................................... 34
Data Engine Technologies LLC v. Google LLC,
906 F.3d 999 (Fed. Cir. 2018) ............................................................................ 33
DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) .................................................................... 34, 35
Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) .................................................................... 24, 39
Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) .................................................................... 23, 30
Exergen Corp. v. Kaz USA, Inc.,
725 F. App’x 959 (Fed. Cir. 2018) (nonprecedential) ........................................ 18
Fast 101 Pty Ltd. v. CitiGroup Inc.,
834 F. App’x 591 (Fed. Cir. 2020) (nonprecedential) ........................................ 28
Finjan, Inc. v. Blue Coat Systems, Inc.,
879 F.3d 1299 (Fed. Cir. 2018) .......................................................................... 33
Fuzzysharp Technologies Inc. v. Intel Corp.,
595 F. App’x 996 (Fed. Cir. 2015) (nonprecedential) ............................ 24, 35, 55
Fuzzysharp Technologies Inc. v. Intel Corp.,
No. 12-cv-4413, 2013 WL 5955668 (N.D. Cal. Nov. 6, 2013),
aff’d, 595 F. App’x 996 (Fed. Cir. 2015) ............................................... 24, 35, 55
Case: 21-1990 Document: 14 Page: 8 Filed: 10/13/2021
- vii -
Glasswall Solutions Ltd. v. Clearswift Ltd.,
754 F. App’x 996 (Fed. Cir. 2018) (nonprecedential) ................21, 23, 24, 33, 41
Golden Bridge Technology, Inc. v. Nokia, Inc.,
527 F.3d 1318 (Fed. Cir. 2008) ........................................................ 26, 48, 50, 51
Golden v. United States,
955 F.3d 981 (Fed. Cir. 2020) ............................................................................ 47
In re Google Technology Holdings LLC,
980 F.3d 858 (Fed. Cir. 2020) ...................................................................... 48, 51
In re TLI Communications LLC Patent Litigation,
823 F.3d 607 (Fed. Cir. 2016) ............................................................................ 39
Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332 (Fed. Cir. 2017) .......................................................................... 30
Intellectual Ventures I LLC v. Erie Indemnity Co.,
850 F. 3d 1315 (Fed. Cir. 2017) ......................................................................... 39
Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307 (Fed. Cir. 2016) ........................................................ 22, 41, 45, 51
Intellectual Ventures II LLC v. JP Morgan Chase & Co.,
No. 13-cv-3777, 2015 WL 1941331 (S.D.N.Y. Apr. 28, 2015) ......................... 35
Mancini v. City of Providence,
909 F.3d 32 (1st Cir. 2018) ................................................................................. 18
Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012) ........................................................................................ 37, 42
Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Flanders-Borden,
11 F.4th 12 (1st Cir. 2021) .................................................................................. 17
Packet Intelligence LLC v. NetScout Systems, Inc.,
965 F.3d 1299 (Fed. Cir. 2020) .................................................................... 33, 34
PersonalWeb Technologies LLC v. Google LLC,
8 F.4th 1310 (Fed. Cir. 2021) ............................................................................. 28
Case: 21-1990 Document: 14 Page: 9 Filed: 10/13/2021
- viii -
Prism Technologies LLC v. T-Mobile USA, Inc.,
696 F. App’x 1014 (Fed. Cir. 2017) (nonprecedential) ................................ 39, 40
Sage Products, Inc. v. Devon Industries, Inc.,
126 F.3d 1420 (Fed.Cir.1997) ............................................................................ 26
SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161 (Fed. Cir. 2018) .................................................................... 45, 55
Singleton v. Wulff,
428 U.S. 106 (1976) ............................................................................................ 26
Smart Systems Innovations, LLC v. Chicago Transit Authority,
873 F.3d 1364 (Fed. Cir. 2017) .................................................................... 23-24
Smartflash LLC v. Apple, Inc.,
680 F. App’x 977 (Fed. Cir. 2017) (nonprecedential) .................................. 28, 35
SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312 (Fed. Cir. 2006) .......................................................................... 37
SRI International, Inc. v. Cisco Systems, Inc.,
930 F.3d 1295 (Fed. Cir. 2019) .................................................................... 32, 33
Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138 (Fed. Cir. 2016) .................................................................... 19, 51
TecSec, Inc. v. Adobe Inc.,
978 F.3d 1278 (Fed. Cir. 2020) .......................................................................... 32
Two-Way Media Ltd. v. Comcast Cable Communications, LLC,
874 F.3d 1329 (Fed. Cir. 2017) ...................................................................passim
Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014) ............................................................................ 42
Uniloc USA, Inc. v. LG Electronics USA, Inc.,
957 F.3d 1303 (Fed. Cir. 2020) .......................................................................... 33
United States v. Young,
846 F. App’x 179 (4th Cir. 2021) (nonprecedential) .......................................... 46
Case: 21-1990 Document: 14 Page: 10 Filed: 10/13/2021
- ix -
Universal Secure Registry LLC v. Apple Inc.,
10 F.4th 1342 (Fed. Cir. 2021) ..................................................................... 36, 37
Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253 (Fed. Cir. 2017) .......................................................................... 34
Western Express Bancshares, LLC v. Green Dot Corp.,
816 F. App’x 485 (Fed. Cir. 2020) (per curiam) ................................................ 28
WhitServe LLC v. Dropbox, Inc.,
854 F. App’x 367 (Fed. Cir. 2021) (nonprecedential) ............................ 37, 39, 40
Worlds Inc. v. Bungie, Inc.,
903 F.3d 1237 (Fed. Cir. 2018) ............................................................ 1, 4, 12, 46
Yu v. Apple Inc.,
1 F.4th 1040 (Fed. Cir. 2021) ........................................................... 44, 51, 55, 56
STATUTES AND RULES
35 U.S.C.
§ 101 .............................................................................................................passim
§ 102 .................................................................................................. 11, 45, 52, 55
§ 103 .................................................................................................. 11, 45, 52, 55
§ 311(b) ............................................................................................................... 31
Fed. R. Civ. P. 56(a) ................................................................................................. 18
Case: 21-1990 Document: 14 Page: 11 Filed: 10/13/2021
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STATEMENT OF RELATED CASES
No other appeal in or from the same civil action has previously been before
this Court or any other appellate court. This Court has addressed certain inter partes
review decisions for U.S. Patent Nos. 7,945,856, 8,082,501, and 8,145,998 at issue
in these appeals in Worlds Inc. v. Bungie, Inc., Nos. 2017-1481, 2017-1546,
2017-1583, 903 F.3d 1237 (Fed. Cir. Sept. 7, 2018) (Prost, C.J., O’Malley &
Taranto, JJ.).
Case: 21-1990 Document: 14 Page: 12 Filed: 10/13/2021
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INTRODUCTION
The district court correctly determined that the asserted claims of the
patents-in-suit (now expired for nearly five years) are directed to unpatentable
subject matter under 35 U.S.C. § 101. The asserted claims fail the two-step test for
patent subject-matter eligibility the Supreme Court set out in Alice Corp. Pty. v. CLS
Bank International, 573 U.S. 208 (2014).
The claims at issue here exemplify the sort of abstract ideas that are not patent
eligible under the Supreme Court’s and this Court’s precedents. As the district court
correctly found, and as Plaintiff-Appellant Worlds, Inc. (“Worlds”) repeatedly
admitted both before the district court and the Patent Trial and Appeal Board
(“PTAB”), the claims relate to a method of “crowd control” through filtering. The
claims accomplish such crowd control through the basic concept of filtering position
information (i.e., data). The claims implement this filtering—not through any
specialized or novel computer framework—but through what the specification
admits is a “well-known” architecture (i.e., a server and a client). This Court has
consistently held that claims aimed at the filtering of content through mere
manipulation of data on a generic computer architecture are abstract and not patent
eligible. The claims at issue here do nothing more. Accordingly, the district court
correctly found that the claims are not eligible for patenting under Alice.
Case: 21-1990 Document: 14 Page: 13 Filed: 10/13/2021
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On appeal, Worlds does not meaningfully dispute that its claims are directed
to the basic concept of “filtering” information, although it goes through pains to
avoid using the word, for crowd control. Br. 33 (explaining that the claims “place
restrictions on what is communicated from the server to each user”). Instead, Worlds
makes a new argument—never presented to the district court—that the claims are
not abstract under Alice Step One because they “enable[] an increase in the number
of users who can participate in the virtual world at a given time” (Br. 28) by
“counterintuitively restricting the quantity of avatar position information” (Br. 29).
Worlds’s new argument is unsupported by the claims, which explicitly refer to a
“maximum number” of users and make no mention at all of increasing the number
of users in the virtual world. It is also inconsistent with Worlds’s own interpretation
of the scope of its claims, where Worlds’s infringement theories seek to capture a
user leaving the virtual world by disconnecting from it—i.e., reducing the number
of users in the virtual world. In any case, Worlds’s post-hoc recharacterization of
its claimed invention should be rejected for the same reason as its other failed
arguments—because they are entirely divorced from the claims. As the district court
correctly concluded, “‘the claims do nothing more than recite a general client-server
computer architecture to perform routine functions of filtering information to
address the generic problem of crowd control.’” Appx15-16.
Case: 21-1990 Document: 14 Page: 14 Filed: 10/13/2021
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With respect to Alice Step Two, Worlds does not contest the district court’s
finding that the claims “involve generic computer components” and are not “limited
to ‘any specific form or implementation of filtering.’” Appx19. Instead, Worlds
resorts to arguing (incorrectly) that the asserted claims recite an inventive concept
as an “ordered combination.” But, as the district court correctly found, there is
“nothing in the ordering of the steps in the claims (i.e., receiving, determining,
comparing) that make them inventive; the ‘steps are organized in a completely
conventional way.’” Id. In searching to find fault with that conclusion on appeal,
Worlds does not point to anything in the actual patents suggesting that its claimed
client-server architecture is not conventional. Rather, Worlds rests its argument on
the sole fact that the PTAB found the representative claim (but not 15 of the other
asserted claims)1
patentable over the prior art presented in an inter partes review
(“IPR”) proceeding.
Worlds’s argument is misguided. Indeed, this Court has rejected the same
argument numerous times over because “[e]ligibility and novelty are separate
inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1340 (Fed. Cir. 2017). Worlds’s asserted claims are patent ineligible under § 101,
and the district court’s judgment should be affirmed.
1
Certain PTAB decisions were ultimately vacated on procedural grounds.
Worlds, 903 F.3d at 1248.
Case: 21-1990 Document: 14 Page: 15 Filed: 10/13/2021
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STATEMENT OF ISSUE ON APPEAL
Whether the district court properly ruled that the asserted claims claim
patent-ineligible subject matter under 35 U.S.C. § 101, where the claims are directed
to the abstract idea of filtering position information to effect crowd control and
implement that abstract idea using generic computer components performing
well-known and routine functions in a conventional way.
STATEMENT OF THE CASE
A. The Parties
Defendants-Appellees Activision Blizzard, Inc., Blizzard Entertainment, Inc.,
and Activision Publishing, Inc. (together, “Activision”) are leading global
developers and publishers of interactive entertainment content and services,
including interactive gaming. Activision’s gaming franchises include World of
Warcraft and Call of Duty.
Plaintiff-Appellant Worlds is the owner of the asserted patents. Worlds
currently offers no products.
B. The Asserted Patents
The asserted patents—U.S. Patent Nos. 7,181,690 (“the ’690 Patent”),
7,493,558 (“the ’558 Patent”), 7,945,856 (“the ’856 Patent”), 8,082,501 (“the ’501
Patent”), and 8,145,998 (“the ’998 Patent”)—are members of the same patent
family, share a common specification, and (now) claim priority to a provisional
Case: 21-1990 Document: 14 Page: 16 Filed: 10/13/2021
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patent application filed in 1995, decades before the Supreme Court clarified the
limits of § 101 patent eligibility under Alice Corp. Pty. Ltd. v. CLS Bank
International, 573 U.S. 208 (2014). See, e.g., Appx138; Appx156;2 see also
Appx64-82. The asserted patents all expired in 2016.
There are twenty-one asserted claims: claims 4, 8, 13, and 16 of the ’690
Patent; claims 5 and 7 of the ’558 Patent; claim 1 of the ’856 Patent; claims 1-8, 10,
12, and 14-16 of the ’501 Patent; and claim 18 of the ’998 Patent.3
Appx3;
Appx430-431.
The shared specification among the asserted patents describes the bandwidth
problems that arise when too many clients are interacting with a common server in
a client-server network, such as when too much information is flowing from the
server to client in a multi-user interactive system. Appx145(1:10-2:20). The
specification states that an efficient communication system between many client
systems is necessary among the multiple users operating such client systems, such
that communications do not become too slow or unreliable. Id. According to
Worlds, “crowd control,” or the “multi-criteria filtering of avatar position and state
2
All citations to the common specification are to the ’690 Patent.
3
Well after Activision filed its motion for summary judgment, Worlds further
narrowed the asserted claims pursuant to the district court’s scheduling order;
however, it reserved “the right to modify” that list of asserted claims.
Appx1716-1717.
Case: 21-1990 Document: 14 Page: 17 Filed: 10/13/2021
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information, both at the client side and the server side,” assists in providing effective
communication in such contexts. E.g., Appx3; Appx31-32; Appx365;
Appx1317(¶8); Appx1334(¶106); see also Appx1365(¶2); Appx1370(¶19);
Appx1614(70:15-25). The claims achieved this “crowd control” function by
“filtering information using some means.” Appx2045; see also Appx491; Appx496;
Appx1614(70:15-25); Appx1648-1650(7:16-9:7).
The specification of the asserted patents describes issues arising when client
devices interact with a common server in a client-server network.
Appx145(1:38-41). The specification claims that the problems associated with this
network include communication between clients becoming unreliable.
Appx145(1:10-2:20). The specification purports to describe a “virtual world ‘chat’
system” where “a user at each client system interacts with one or more other users
at other client systems by inputting messages and sounds and by performing actions,
where these messages and actions are seen and acted upon by other clients.”
Appx145-146(2:60-3:2). Each client is a user represented by an unspecified avatar.
Appx145(2:30-32); Appx146(3:29-34); Appx154(19:32-34).
The purported solution described by the asserted patents “is an efficient
system for communication between many client systems over dedicated or open
networks to provide graphical interaction between users operating the client
systems.” Appx145(2:17-20). The specification states that the virtual world may
Case: 21-1990 Document: 14 Page: 18 Filed: 10/13/2021
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include several rooms and hundreds of users and their avatars. Appx146(3:35-41).
It also explains that when many avatars are present in a room of the virtual world,
they “are filtered out for crowd control.” Appx146(3:44-46). The specification
further reiterates that a user “might have a way to filter out avatars on other variables
in addition to proximity, such as user ID.” Appx147(5:55-67).
As Worlds concedes (Br. at Front Cover), claim 4 of the ’690 Patent is
representative of all claims at issue:
1. A method for enabling a first user to interact with other users in a
virtual space, wherein the first user and the other users each have an
avatar and a client process associated therewith, and wherein each client
process is in communication with a server process, wherein the method
comprises:
(a) receiving a position of less than all of the other users’ avatars
from the server process; and
(b) determining, from the received positions, a set of the other
users’ avatars that are to be displayed to the first user,
wherein steps (a) and (b) are performed by the client process
associated with the first user.
4. The method of claim 1, wherein step (1b) comprises
(b)(1) determining from the received positions an actual number
of the other users’ avatars;
(b)(2) determining a maximum number of the other users’
avatars to be displayed; and
(b)(3) comparing the actual number to the maximum number to
determine which of the other users’ avatars are to be displayed
wherein steps (b)(1)–(b)(3) are performed by the client process
associated with the first user.
Case: 21-1990 Document: 14 Page: 19 Filed: 10/13/2021
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Appx154(19:32-42, 19:54-64).
The claim thus involves three steps. The first is a “client process” receives
“less than all” avatar position information “from the server process.”
Appx154(19:32-37, 19:41-42). The second is that the “client process” determines
the set of “avatars that are to be displayed.” Appx154(19:38-42). And the third is
that the “client process” determines the displayable set by “comparing the actual
number to the maximum number.” Appx154(19:60-64). That is it.
The specification further explains that the alleged invention can be
implemented on a generic computer, such as “a desktop computer as [is] well known
in the art.” Appx146(3:56-4:4) (“Typically … each client 20 is implemented as a
separate computer and one or more computers system are used to, implement virtual
world server 22. As used here, the computer system could be a desktop computer as
are well known in the art. … Other suitable computer systems include notebook
computers, palmtop computers, hand-held programmable computing devices,
special purpose graphical game machines (e.g., those sold by Sony, SEGA,
Nintendo, etc.), workstations, terminals, and the like.”). Moreover, the specification
describes that the purported invention can be carried out using conventional software
and functions “well known” to “[a] person of ordinary skill in the art of computer
programming.” Appx146(4:25-35, 4:42-48).
Case: 21-1990 Document: 14 Page: 20 Filed: 10/13/2021
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The other claims of the ’690 Patent and the claims of the ’558 Patent likewise
recite filtering avatar position information based on comparing an actual number to
a maximum number. See, e.g., Appx154(20:24-32); Appx176(22:43-51). The claim
of the ’856 Patent recites filtering less than all avatar position information. See
Appx202(21:7-21). The claims of the ’501 and ’998 Patents recite filtering based
on generic “conditions.” See, e.g., Appx225(19:21-39); Appx247-248(20:45-
21:05).
Under Worlds’s broad interpretation of the asserted claims, any filtering of
information in virtually any scenario by some means achieves “crowd control.”
Appx1614(70:15-25); Appx496; Appx861-862; Appx918; Appx2045. For example,
Worlds contends that infringement occurs whenever a “remote user ha[s]
disconnected or left the game” and thereby caused the other clients to cease receiving
information about it. Appx1323-1324(¶50); Appx1368(¶11) (“Worlds does not
dispute Paragraphs 36-47 and 49-51 of Defendants’ Statement of Undisputed
Material Facts.”).
C. Litigation And Agency Proceedings
Worlds first initiated this lawsuit against Activision in 2012, claiming that
Activision had infringed dozens of claims across the patents-in-suit, many of which
are no longer being asserted. On March 13, 2014, the district court granted
Activision’s motion for summary judgment as to invalidity, finding that the
Case: 21-1990 Document: 14 Page: 21 Filed: 10/13/2021
- 11 -
patents-in-suit were not entitled to claim priority to the filing date of Worlds’s
provisional application. Appx9; Appx64-82. The court held a Markman hearing
and, on June 26, 2015, issued a Markman order. Appx9; Appx24-63. On September
4, 2015, Activision initially moved for summary judgment that Worlds’s patent
claims are invalid under 35 U.S.C. § 101. Appx113-114. The parties briefed the
issue, and the district held argument on the motion in November 2015.
Appx113-116.
In May and June of 2015, a series of IPR petitions were filed challenging the
validity of the asserted claims of the asserted patents under 35 U.S.C. §§ 102 and
103. The PTAB instituted six IPRs, and, in February 2016, the district court case
was stayed pending the IPRs. Appx418. At this point, the parties were well into
fact discovery and had previously exchanged multiple iterations of invalidity,
infringement, and non-infringement contentions. See Appx98-117. Activision’s
motion for summary judgment was still pending when the case was stayed.
Appx113-117.
The IPR petitions challenged the validity of all claims at issue in this appeal,
as well as 19 other claims from the asserted patents not asserted here, for a total of
40 claims. Final Written Decisions were issued in all the IPR proceedings, with all
but six of the 40 claims being held unpatentable. For the surviving six claims, the
PTAB found that the petitioner had not shown by a preponderance of the evidence
Case: 21-1990 Document: 14 Page: 22 Filed: 10/13/2021
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that the claims were invalid based on the specific evidence and arguments presented
in those proceedings. See Appx158; Appx179. In response to the Final Written
Decisions, Worlds appealed the PTAB’s decisions as to certain claims in the ’856
Patent (IPR2015-01264), ’501 Patent (IPR2015-01319), and ’998 Patent
(IPR2015-01321), but chose not to appeal all invalidated claims of the
patents-in-suit. See Appx539-654; Appx656-719; Appx721-808. Without
addressing the PTAB’s substantive findings, this Court vacated and remanded the
appealed Final Written Decisions on procedural grounds. See Worlds, 903 F.3d at
1248 (“Because of our conclusions with respect to the real-party-in-interest issue,
we need not address the merits of the parties’ invalidity arguments at this time. We
therefore vacate the Board’s merits decisions in their entirety, without speaking to
the merits of the Board’s analysis.”). On remand, the PTAB vacated the institution
decisions for those three IPR petitions. Appx1392-1438.
Notably, claim 1 of the ’856 Patent, claims 1-8, 10, 12, and 14-16 of the ’501
Patent, and claim 18 of the ’998 Patent are only subject to this appeal due to this
Court’s procedural decision to vacate the Final Written Decisions in those IPRs.
See Worlds, 903 F.3d at 1248.
D. The Decision Under Review
In May 2020—five years after the district court’s Markman order and well
into fact discovery—Activision moved for summary judgment, arguing that the
Case: 21-1990 Document: 14 Page: 23 Filed: 10/13/2021
- 13 -
remaining asserted claims were directed to patent-ineligible subject matter under
§ 101. E.g., Appx124(Dkt.272); Appx434-463.4
The district court granted the
motion as to all asserted claims (’690 Patent, claims 4, 8, 13, 16; ’558 Patent, claims
5, 7; ’856 Patent, claim 1; ’501 Patent, claims 1-8, 10, 12, 14-16; and ’998 Patent,
claim 18).
At Alice Step One, the district court agreed with Activision—and Worlds’s
prior admissions—that the asserted claims were directed to “accomplish[ing] crowd
control through filtering.” Appx15. The district court determined that “[s]uch
filtering is … ‘a fundamental and well-known concept for organizing human
activity,’ and is patent ineligible.” Id. In doing so, it relied on this Court’s finding
in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016), that “‘filtering content is an abstract idea because it is a
longstanding, well-known method of organizing human behavior, similar to
concepts previously found to be abstract.’” Appx15-16. The district court
concluded that “‘the claims do nothing more than recite a general client-server
computer architecture to perform routine functions of filtering information to
address the generic problem of crowd control.’” Appx16. The district court noted
“[t]his is true of all of the remaining claims,” finding that “[c]laim 1 of the ’856
4
Activision’s 2015 motion for summary judgment based on § 101 was denied
as moot. Appx122(Dkt.263).
Case: 21-1990 Document: 14 Page: 24 Filed: 10/13/2021
- 14 -
patent filters information for ‘fewer than all’ of the avatars,” that “the remaining
claims of the ’558 patent are directed to filtering information at a maximum value,”
and that “[t]he claims in the ’501 patent and the ’998 patent achieve the filtering by
a set of conditions that governs what position information the client receives.”
Appx17 n.1.
Under Alice Step Two, the district court determined that regardless of whether
the elements of the asserted claims were considered individually or as an ordered
combination, the patent claims did not add the requisite inventive concept.
Appx18-20. In particular, the district court reasoned that “[t]he steps of the claims
here use only ‘generic functional language to achieve the purported solution’ of
filtering of position information for crowd control” and “involve generic computer
components.” Appx19. Furthermore, the district court explained that “there is
nothing in the ordering of the steps in the claims (i.e., receiving, determining,
comparing) that makes them inventive; the ‘steps are organized in a completely
conventional way.’” Id. Additionally, the district court reasoned that the simple fact
that the asserted claims are being applied to the technological environment of a
virtual world does not transform the well-known process into one that is inventive.
Appx19-20. Citing Alice, the district court concluded the asserted claims “use a
general-purpose computer to employ well known filtering or crowd control methods
and means that ultimately use same to display graphical results and generate a view
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of the virtual world, none of which is inherently inventive or sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application.” Appx20.
The district court reviewed the PTAB’s Final Written Decisions in
IPR2015-01264 (related to the ’856 Patent), IPR2015-01319 (related to the ’501
Patent), and IPR2015-01321 (related to the ’998 Patent) in connection with its
summary judgment opinion. Appx18-20. The district court did not rely upon those
decisions but noted they are “persuasive authority ….” Appx8. Notably, Worlds
did not dispute that the claims at issue in the PTAB’s decisions for those IPRs were
found unpatentable. See, e.g., Appx1323(¶46) (“The PTAB issued a Final Written
Decision in IPR2015-01264 on November 10, 2016, finding that claim 1 of the ’856
Patent is unpatentable.”); Appx1368(¶11) (“Worlds does not dispute Paragraphs
36-47 … of Defendants’ Statement of Undisputed Material Facts.”);
Appx1327(¶75); Appx1334(¶108); Appx1369(¶14); Appx1370(¶19) (similar for
’501 and ’998 Patents).
SUMMARY OF THE ARGUMENT
The district court correctly determined that the claims of the asserted patents
claim unpatentable subject matter under 35 U.S.C. § 101. The asserted claims fail
the two-step test for patent subject-matter eligibility the Supreme Court set out in
Alice, 573 U.S. 208 (2014).
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At Step One, the asserted claims are directed to crowd control through
filtering. The claims thus fall squarely within this Court’s precedent holding that
filtering data, data collection, and data manipulation are abstract. See, e.g., Braemar
Manufacturing, LLC v. ScottCare Corp., 816 F. App’x 465, 470 (Fed. Cir. 2020)
(nonprecedential); BASCOM, 827 F.3d at 1348; Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). For
the first time on appeal, Worlds seeks to characterize the asserted claims as directed
to “enabl[ing] an increase in the number of users who can participate in the virtual
world at a given time.” Br. 28, 33. But Worlds’s contention that the patents claim
a specific technology improvement is unsupported. Worlds previously represented
to both the district court and the PTAB that its claims cover filtering for effecting
crowd control. And, as the claim language shows, the asserted claims cover filtering
broadly, with the representative claim consisting of: receiving less than all position
information and determining from the received data the data to display by comparing
two data values. Nothing more.
At Step Two, the claims fail to recite an inventive concept. The claims’
elements—whether considered individually or as an ordered combination—simply
implement the abstract idea of filtering using conventional computer components
performing well-understood and routine functions. Indeed, Worlds implicitly
concedes that the asserted claims’ elements individually do not recite an inventive
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concept. As to an ordered combination, the asserted claims are organized in an
entirely conventional way. The representative claim recites receiving less than all
data and determining the set of data to display by comparing two data values. There
is nothing inventive about that ordering of elements. None of Worlds’s contrary
arguments move the needle, including its misguided assertion that the PTAB’s
finding that the representative claim was patentable over specific prior art presented
in that IPR proceeding required the district court to find that the asserted claims
recited an inventive concept. This Court has rejected that argument numerous times
over because “[e]ligibility and novelty are separate inquiries.” Two-Way Media, 874
F.3d at 1340. Nor did any factual issues preclude the district court’s summary
judgment ruling.
Worlds’s asserted claims are patent ineligible under 35 U.S.C. § 101, and the
district court’s judgment should be affirmed.
ARGUMENT
I. STANDARD OF REVIEW
This Court reviews the grant of summary judgment under the law of the
regional circuit, here, the First Circuit. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1375 (Fed. Cir. 2015). The First Circuit reviews orders granting
summary judgment de novo. Merrill Lynch, Pierce, Fenner & Smith, Inc. v.
Flanders-Borden, 11 F.4th 12, 20 (1st Cir. 2021).
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Summary judgment is appropriate when there is no genuine dispute of
material fact, and the moving party is entitled to judgment as a matter of law. Fed.
R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Summary judgment cannot be defeated with the use of conclusory allegations or
improbable inferences. Mancini v. City of Providence, 909 F.3d 32, 38 (1st Cir.
2018); Barmag Barmer Maschinenfabrik AG v. Murata Mach., Ltd., 731 F.2d 831,
836 (Fed. Cir. 1984).
This Court also reviews de novo the question of whether a claim is invalid
under 35 U.S.C. § 101. Ariosa, 788 F.3d at 1375. “[W]hether a claim is directed to
patentable subject matter is a question of law based on underlying facts,” but “not
every § 101 determination contains disputes over the underlying facts.” Exergen
Corp. v. Kaz USA, Inc., 725 F. App’x 959, 965 (Fed. Cir. 2018) (nonprecedential);
see also Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
II. THE ASSERTED PATENT CLAIMS ARE DIRECTED TO ABSTRACT IDEAS AT
ALICE STEP ONE
In Alice, the Supreme Court outlined a two-step process for “distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” 573 U.S. at 217. At Alice
Step One, the Court must “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. The Court looks “at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’
Case: 21-1990 Document: 14 Page: 29 Filed: 10/13/2021
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is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV LLC,
838 F.3d 1253, 1257 (Fed. Cir. 2016). Worlds’s asserted claims are directed to
abstract ideas.
A. The District Court Correctly Determined That The Asserted
Claims Are Directed To The Abstract Idea Of Filtering
As the district court explained, the asserted claims “are designed to
accomplish crowd control through filtering.” Appx15. The district court correctly
concluded that “[s]uch filtering is … ‘a fundamental and well-known concept for
organizing human activity,’ and is patent ineligible.” Id. That the claims are directed
to the abstract idea of filtering data is evident from the claim language. See, e.g.,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016)
(“The § 101 inquiry must focus on the language of the Asserted Claims
themselves.”). Claim 4 of the ’690 Patent—which Worlds concedes is
representative (e.g., Br. 27)—recites a “client process” receiving position
information for “less than all” avatars from the “server process” (i.e., receiving less
than all data), and the “client process” determines, from that set, a set of avatars “that
are to be displayed” by “comparing the actual number to the maximum number.”
Appx154(19:32-42, 19:54-64). Put differently, the claims manipulate data by
receiving information, comparing information, and determining data to display.
Worlds conceded to the district court and the PTAB that the asserted claims
are directed to the idea of filtering position information to effect crowd control. As
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the district court noted, “Worlds maintained its position in this case … and in the
IPR proceedings that its patents were directed at a method of ‘crowd control’ and
that these claims are the filtering function to do so.” Appx15. During claim
construction, the district court concluded that steps within the asserted claims—
“determining” and “receiving”—are directed to “filtering”: “This term [the
‘determining step’] implicates client-side filtering, as opposed to the server-side
filtering discussed above [for the ‘receiving’ step].” Appx33. The district court
came to this conclusion on Worlds’s insistence that the claim terms should be
construed according to their ordinary meanings. Appx29-37. Worlds argued that
the ordinary meaning of these terms does not require any particular type, manner, or
degree of filtering. Instead, according to Worlds, the terms encompass any scenario
where there is some form of filtering information. Appx31-32; Appx2045. Indeed,
during the parties’ Markman hearing, Worlds argued that the “determining”
limitation “is client-side filtering” and that the limitation only requires that “the
client determines from the positions it has received which avatars to display.”
Appx1614(70:15-25); see also Appx1709 (Worlds’s Markman presentation before
U.S. District Court for the District of Delaware; describing Worlds’s purported
solution as “Server-Side and Client-Side Filtering”); Appx1715 (“Filtering
Capabilities”).
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Moreover, before the PTAB, Worlds confirmed that the “determining”
limitation is linked to the concept of “crowd control.” In its Patent Owner Response
for the ’690 Patent, Worlds argued that the representative claim “clearly finds
written description support in the concept of ‘crowd control’ described in the
specification.” Appx496; Appx861 (same); Appx918 (same); Appx1318(¶10);
Appx1365(¶2). Worlds further emphasized that “crowd control” is one of the crucial
aspects of the invention and that the recited “determining” step of the remaining
claims is where the “crowd control” occurs. Appx1114(155:20-24) (“[F]iguring out
crowd control was one of the crucial aspects of the invention.”);
Appx1060-1061(101:25-102:4) (“[I]f I had to tell you how is that determining
occurring, it would be with respect to the data that’s in the remote avatar position
table before it is read by the rendering engine. That’s where the determining occurs.
That’s the crowd control.”). Thus, by Worlds’s own admission, the asserted claims
are directed to “crowd control” through “filtering” by “determining” and
“receiving.”
Filtering data is an abstract idea. For example, this Court has found that
claims directed to a computer system “filtering in the allowable content” is abstract.
Glasswall Sols. Ltd. v. Clearswift Ltd., 754 F. App’x 996, 998-999 (Fed. Cir. 2018)
(nonprecedential). The claims at issue here are no different, except that instead of
filtering in, Worlds’s claims filter out content. In BASCOM, this Court found “that
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filtering content is an abstract idea because it is a longstanding, well-known method
of organizing human behavior, similar to concepts previously found to be abstract.”
827 F.3d at 1348.5
The same is true here.
Worlds’s asserted claims are similar to claims found ineligible in Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016). In Intellectual
Ventures I, the claims called for receiving data, determining whether the received
data matched certain characteristics, and outputting data based on the determining
step. Id. at 1313. The claims were “directed to methods of screening emails and
other data files for unwanted content.” Id. at 1311. The Court concluded that “it
was long-prevalent practice for people receiving paper mail to look at an envelope
and discard certain letters … based on characteristics of the mail.” Id. at 1314.
Computerizing this practice to a “particular technological environment” changed
nothing. Id. The Court, therefore, ruled that “filtering files/e-mail—is an abstract
idea.” Id. at 1313.
In Braemar, 816 F. App’x at 470, the Court found that “the purported
improvement [of the claims] is the abstract idea of classification and filtering of
data.” “On their face, the claims are directed to collecting (‘receiving a cardiac
5
Worlds apparently concedes that this Court’s holding in BASCOM applies.
Br. 49-51. But BASCOM only weakens Worlds’s Step One position. BASCOM, 827
F.3d at 1348.
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biological signal’), classifying (‘classifying the events’), and filtering data into
groups based on identifying characteristics (‘determining a measure of merit,’
‘comparing the measure of merit’), and transmitting the data for review.” Id. The
Court concluded that “the claims are directed to the abstract idea of collecting,
classifying, and filtering data.” Id. The Court directed that “claims that ‘merely
collect, classify or otherwise filter data’ are ineligible for patent under § 101.” Id.
Like the claims in Braemar and Intellectual Ventures I, the claims at issue
here “‘merely collect, classify, or otherwise filter data’” and are therefore abstract.
Braemar, 816 F. App’x at 470. Crowd control, achieved through filtering
information, is a function that humans have always performed. Claims that amount
to “computer implementation of” longstanding practices are not patent-eligible.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338-1339 (Fed. Cir. 2016). As the
district court properly concluded, these claims involve an abstract idea—“achieving
crowd control thru the filtering of information. … The steps are open-ended and
instruct the audience to ‘engage in well-understood, routine, conventional activity.’”
Appx16. “‘[T]he claims do nothing more than recite a general client-server
computer architecture to perform routine functions of filtering information to
address the generic problem of crowd control.’” Id.
This Court has “often held similar conventional data manipulation to be
abstract.” Glasswall, 754 F. App’x at 998 (citing Smart Sys. Innovations, LLC v.
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Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017); Electric Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Content Extraction, 776
F.3d at 1347). Indeed, this Court ruled that claims directed to “1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that recognized
data in a memory” are abstract. Content Extraction, 776 F.3d at 1347; see also
Fuzzysharp Techs. Inc. v. Intel Corp., 595 F. App’x 996 (Fed. Cir. 2015)
(nonprecedential), aff’ing No. 12-cv-4413, 2013 WL 5955668, at *5-6, 11, 13 (N.D.
Cal. Nov. 6, 2013) (patent claims directed to filtering surface portions to do full
visibility computations, including “‘identifying,’ ‘comparing,’ or ‘determining’
data,” are directed to an abstract idea); Electric Power, 830 F.3d at 1353 (“collecting
information, analyzing it, and displaying certain results of the collection and
analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept”).
As explained in Glasswall, “claims [that] merely require the conventional
manipulation of information by a computer,” like filtering, are abstract. 754 F.
App’x at 997-999.
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The other asserted claims fare no better6
—they are likewise directed to the
abstract idea of filtering position information to accomplish crowd control. Appx17
n.1 (“This is true of all of the remaining claims.”). The asserted claim of the ’856
Patent relates to filtering information for “fewer than all” avatars.
Appx202(21:7-21); see also Appx17 n.1. The remaining asserted claims of the ’690
Patent and the asserted claims of the ’558 Patent also require filtering avatars by
comparing the actual number to a maximum number. E.g., Appx154-155(20:3-19,
20:24-33, 21:6-19, 21:28-36, 21:43-22:23) (claims 8, 13, 16);
Appx176(21:58-22:51) (claims 5, 7); see also Appx17 n.1 (“Like claim 4 of the ’690
patent, the remaining claims of the ’558 patent are directed to filtering information
at a maximum value.”). The claims of the ’501 and ’998 Patents achieve filtering
based on generic “conditions.” Appx225(19:20-20:4, 20:7-11, 20:14-29, 20:32-63)
(claims 1-8, 10, 12, 14-16); Appx247-248(20:45-21:5) (claim 18); see also Appx17
n.1 (“The claims in the ’501 patent and the ’998 patent achieve the filtering by a set
of conditions that governs what position information the client receives.”).
6
Worlds does not argue or suggest that its remaining claims can survive if the
representative claim falls. Any arguments about other claims independently
surviving Section 101 are therefore waived. See Berkheimer, 881 F.3d at 1365
(“Courts may treat a claim as representative in certain situations, such as if the
patentee does not present any meaningful argument for the distinctive significance
of any claim limitations not found in the representative claim or if the parties agree
to treat a claim as representative.”).
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B. Worlds’s Step One Arguments Are Misguided
1. The Claims Do Not Provide a Specific Solution to a
Technological Problem
Running away from its repeated characterizations that its patents are directed
to “crowd control” through “filtering” (see supra at pp.19-21), Worlds seeks to
recharacterize (for the first time)7
the asserted claims as directed to “something
different—they place restrictions on what is communicated from the server to each
user, and what each user must process to render a view of the virtual world, in order
to permit more users, rather than fewer users, to access and interact in the virtual
world.” Br. 33 (original emphases omitted); id. 28 (arguing that the purported
invention “enables an increase in the number of users who can participate in the
virtual world at a given time”). Not so.
The question under § 101 is what technological improvements are actually
claimed. See, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed.
Cir. 2019). As Worlds concedes, representative claim 4 of the ’690 Patent does
7
Worlds improperly raises a new argument for the first time on appeal. See
Appx1348-1358. Indeed, “it is the general rule that a federal appellate court does
not consider an issue not passed upon below.” Golden Bridge Tech., Inc. v. Nokia,
Inc., 527 F.3d 1318, 1322 (Fed. Cir. 2008) (internal quotation marks omitted)
(quoting Singleton v. Wulff, 428 U.S. 106, 120 (1976)). This Court has explained
that its “precedent generally counsels against entertaining arguments not presented
to the district court.” Id.; Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420,
1426 (Fed. Cir. 1997) (“In short, this court does not ‘review’ that which was not
presented to the district court.”). Worlds’s new argument should be rejected.
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nothing more than “receive[] position information for fewer than all of the other
users’ avatars from the server process;” “determin[e] from the received positions an
actual number of the other users’ avatars; determin[e] a maximum number of the
other users[’] avatars to be displayed; and compar[e] the actual number to the
maximum number to determine which of the other users’ avatars are to be
displayed.” Br. 27 (internal quotation marks omitted). Nowhere in the claims is
there any requirement—as Worlds now contends—that the alleged invention result
in an increase in the number of users in the virtual world. In fact, the claims require
the exact opposite. For example, the representative claim explicitly sets a
“maximum number” of users. Appx154(19:54-64) (emphasis added). Further, one
of Worlds’s infringement theories is premised on a user leaving the virtual world by
disconnecting from it. Appx1323-1324(¶50) (“Worlds states that ‘[s]everal factors,
such as the remote user having disconnected or left the game … cause a remote
avatar’s position not to be transmitted by the server and thus the position not to be
received by the client.’”); Appx1368(¶11) (“Worlds does not dispute Paragraphs
36-47 and 49-51 of Defendants’ Statement of Undisputed Material Facts.”). In short,
Worlds’s attempt to recharacterize the claims as doing something more than mere
filtering is belied by the claims themselves.
Worlds’s asserted claims do nothing more than apply the concept of “crowd
control” via “filtering” to a virtual world. Such claim language fails to provide an
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improvement in the functionality of computers themselves. E.g., PersonalWeb
Techs. LLC v. Google LLC, 8 F.4th 1310, 1318 (Fed. Cir. 2021) (rejecting
technological improvement argument under Step One and concluding “‘the focus of
the claims is not on … an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools’”); Smartflash LLC v.
Apple, Inc., 680 F. App’x 977, 982-983 (Fed. Cir. 2017) (nonprecedential) (claims
directed to abstract idea of “conditioning and controlling access to data based on
payment” “invoke[d] computers merely as tools” rather than providing an
improvement to computer functionality). To wit, Worlds’s patent claims are
directed to filtering information but do not provide any specific way of filtering
information and essentially seek to patent the benefits that flow from performing an
abstract idea in conjunction with a well-understood computer structure. The
purported benefits that flow from a “fundamental characteristic” of an abstract idea
do not render an otherwise invalid claim patentable. See Western Express
Bancshares, LLC v. Green Dot Corp., 816 F. App’x 485, 487 (Fed. Cir. 2020) (per
curiam); Fast 101 Pty Ltd. v. CitiGroup Inc., 834 F. App’x 591, 594 (Fed. Cir. 2020)
(nonprecedential) (rejecting argument that purported technological improvements
justified patent eligibility, as “the so-called improvements resulting from the claimed
method are simply improvements attendant to using electronic systems”).
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The issues arising from too much traffic—network or crowds—overwhelming
the client and resulting in a breakdown of service to a user is not something that
specifically arises in the realm of computer networks. For example, that issue can
be applied to anyone receiving poor service in a crowded restaurant. Even the
specific constraints of displaying too much information are well-known. Take, for
example, an air traffic control radar. On a busy day, the air controller may face a
crowded radar display that makes it difficult to properly track air traffic. The
solution is straightforward—apply a filter, such as: (1) limiting the radius of the air
traffic displayed; (2) limiting the display to a maximum number of aircraft; or (3)
applying some condition such as altitude, aircraft size, or airplanes seeking to land.8
Worlds argues that its claims are “‘directed to’ a computer network
improvement and thus patent-eligible subject matter,” and that the “District Court
erred by failing to account for this Court’s precedent directed to claims necessarily
rooted in computer technology.” Br. 29-30, 32, 34. Far from it.
Worlds’s argument assumes that the district court’s statement that “the
Patents-In-Suit resolve bandwidth issues with multiplayer games through
multi-criteria filtering of avatar position and state information” means that the
8
Tellingly, Worlds never meaningfully responded to or disputed this example
as an analogue to the asserted claims before the district court. Instead, Worlds
summarily dismissed the example as “unrealistic.” Appx1354 n.6. Air traffic
controllers responsible for crowded airspace might beg to differ.
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claims are necessarily rooted in computer technology and thus patent eligible. Br.
29-30 (emphasis added). To the contrary, the district court’s description of the patent
claims only confirms the district court’s conclusion of ineligibility: “‘the claims do
nothing more than recite a general client-server computer architecture to perform
routine functions of filtering information to address the generic problem of crowd
control.’” Appx15-16.
Worlds argues that the district court “required more of Worlds, incorrectly
stating that ‘[t]his description [that the claim is “directed to a novel client-server
computer network architecture for 3-D virtual worlds”] alone does not convert the
patents into patent-eligible inventions.’” Br. 31. Not so. The district court correctly
rejected Worlds’s attempt to rewrite the claims to try to make them patent eligible.
Worlds did not explain to the district court, and does not explain to this Court, how
and why applying crowd control concepts or bare filtering concepts to virtual worlds
would convert its claims to patent-eligible subject matter. As this Court has
previously explained, “computer implementation of” longstanding practices are not
patent-eligible, Enfish, 822 F.3d at 1338-1339, and attempting to limit the claims to
a particular technological environment is insufficient. E.g., Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (“[S]uch
limitations do not make an abstract concept any less abstract under step one.”). At
bottom, claims “directed to the abstract idea of collecting, classifying, and filtering
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data” are patent ineligible. Braemar, 816 F. App’x at 470. Worlds’s attempt to
avoid this precedent by relying on generic computer structures should be rejected.
Moreover, Worlds’s argument that “the specific steps recited in the
Representative Claim, including its claimed structure and features of a client-server
architecture of a virtual world, were confirmed patentable by the PTAB over IPR
challenges” (Br. 31) is a red herring. IPR proceedings, by statute, cannot consider
the patent eligibility of challenged claims. See 35 U.S.C. § 311(b) (permitting IPRs
only on grounds that “could be raised under section 102 or 103”). Moreover,
“[e]ligibility and novelty are separate inquiries.” Two-Way Media, 874 F.3d at
1339-1340 (rejecting argument that district court erred in not relying on certain
material that “was relevant to a novelty and obviousness analysis” and concluding
“the district court correctly determined that the patents were ineligible under § 101
on the basis of the representative claims and [plaintiff’s] proposed constructions”).
2. Worlds’s Attempts to Save Its Claims by Citing to Inapposite
Cases Should Be Rejected
In an attempt to save its abstract claims, Worlds cites a long list of inapposite
cases that it contends are comparable to this one—even though in most instances it
provides no clear explanation of why that is. Tellingly, none of the cases cited by
Worlds involve patents directed to bare filtering, and all were found to include true
improvement in computer functionality wholly absent here.
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For example, in TecSec, Inc. v. Adobe Inc., this Court found claims directed
to “an ‘object-oriented key manager’ and specified uses of a ‘label’ as well as
encryption for … access management” patent eligible. 978 F.3d 1278, 1295 (Fed.
Cir. 2020). In TecSec, unlike here, the claims were genuinely directed to technical
problems inherently grounded in computer technology and that offered specific
technical solutions. Indeed, this Court found that “the claims [in TecSec were]
directed to improving a basic function of a computer-distribution network, namely,
network security …. The patent makes clear that the focus of the claimed advance
is on improving such a data network used for broadcasting a file to a large audience,
with the improvement assertedly being an efficient way for the sender to permit
different parts of the audience to see different parts of the file.” Id. at 1296.
Moreover, in SRI International, Inc. v. Cisco Systems, Inc., this Court found
patent eligible a claim that “recites using network monitors to detect suspicious
network activity based on analysis of network traffic data, generating reports of that
suspicious activity, and integrating those reports using hierarchical monitors.” 930
F.3d 1295, 1303 (Fed. Cir. 2019). In reaching this conclusion, the Court found that
“the human mind is not equipped to detect suspicious activity by using network
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monitors and analyzing network packets as recited by the claims.” Id. at 1304.9
In
contrast to these cases, this Court has previously concluded that filtering is an
activity that is abstract. E.g., Glasswall, 754 F. App’x at 998-999; Braemar, 816 F.
App’x at 479; BASCOM, 827 F.3d at 1348.
Worlds also cites to Packet Intelligence LLC v. NetScout Systems, Inc., 965
F.3d 1299 (Fed. Cir. 2020). But in that case, as Worlds concedes, the claims were
directed to “identifying and refining a conversational flow such that different
9
The additional cases Worlds cites in support of its positions fare no better: In
Ancora Technologies, Inc. v. HTC America, Inc., the Court found that the claimed
method improved security “in an assertedly unexpected way: a structure containing
a license record is stored in a particular, modifiable, non-volatile portion of the
computer’s BIOS, and the structure in that memory location is used for verification
by interacting with the distinct computer memory that contains the program to be
verified.” 908 F.3d 1343, 1348-1349 (Fed. Cir. 2018). The Court in Data Engine
Technologies LLC v. Google LLC found that the asserted patents “provid[ed] a
highly intuitive, user-friendly interface with familiar notebook tabs for navigating
the three-dimensional worksheet environment.” 906 F.3d 999, 1008 (Fed. Cir.
2018). The Court in Finjan, Inc. v. Blue Coat Systems, Inc. found that the claims
“employ[ed] a new kind of file that enables a computer security system to do things
it could not do before” including allowing “access to be tailored for different users,”
ensuring “threats are identified before a file reaches a user’s computer,” and
“allow[ing] the system to accumulate and utilize newly available, behavior-based
information about potential threats.” 879 F.3d 1299, 1305 (Fed. Cir. 2018). The
Court’s decision in Uniloc USA, Inc. v. LG Electronics USA, Inc., concerned claims
directed to “the reduction of latency experienced by parked secondary stations in
communication systems.” 957 F.3d 1303, 1307-1308 (Fed. Cir. 2020). “The
claimed invention … eliminates or reduces the delay present in conventional
systems where the primary station alternates between polling and sending inquiry
messages.” Id. Worlds cannot plausibly argue that these cited cases—which do not
concern filtering or crowd control—are comparable to the asserted claims here. Br.
28-29.
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connection flows can be associated with each other and ultimately with an
underlying application or protocol.” Id. at 1309-1310. Unlike here, the claims in
Packet Intelligence “detail[ed] how [the invention] is achieved in several steps,”
including through the use of a claimed “parser subsystem,” “flow-entry memory,”
“lookup engine,” and a “flow insertion engine.” Id. The asserted claims here are far
more generic and come nowhere close to the subject matter claimed in Packet
Intelligence. Here, the asserted claims outline nothing more than bare filtering.
For the same reasons, Worlds’s reliance on Core Wireless Licensing S.A.R.L.
v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), is also misplaced. In Core
Wireless, the Court described the claimed invention as “a specific manner of
displaying a limited set of information to the user, rather than using conventional
user interface methods to display a generic index on a computer.” 880 F.3d at 1363.
The Court concluded, unlike the asserted patents here, that the claims specifically
identified the manner to filter the information at issue: by listing the available data
in summary form and allowing a user to select certain data via the user interface. Id.
In Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1260 (Fed. Cir.
2017), the claims were directed to “a memory system with a main memory and a
cache memory, where the memory system is configured by a computer to store a
type of data in the cache memory based on the type of processor connected to the
memory system.” The claimed invention in DDR Holdings, LLC v. Hotels.com,
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L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), recited a method for “retaining website
visitors that, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be instantly transported away from a host’s website.” The
claims recited a method to “instruct[] an Internet web server of an ‘out-source
provider’ to construct and serve to the visitor a new, hybrid web page that merges
content associated with the products of the third-party merchant with the stored
‘visually perceptible elements’ from the identified host website.” Id. Further, with
respect to DDR, the Court warned that “not all claims purporting to address
Internet-centric challenges are eligible for patent” if those claims merely recite an
abstract idea. Smartflash, 680 F. App’x at 983-984 (considering DDR as part of
Alice Step Two; finding patents claiming “reading, receiving, and responding to
payment validation data and, based upon the amount of payment, and access rules,
allowing access to multimedia content” abstract).
Furthermore, contrary to Worlds’s arguments (Br. 39-40), the district court
properly relied on Fuzzysharp Technologies Inc. v. Intel Corp., No. 12-cv-4413,
2013 WL 5955668, at *13 (N.D. Cal. Nov. 6, 2013), aff’d, 595 F. App’x 996 (Fed.
Cir. 2015), Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777,
2015 WL 1941331, at *8 (S.D.N.Y. Apr. 28, 2015), and BASCOM for its Step One
analysis. As an initial matter, Worlds cannot and does not claim that the cited
authority was overturned, miscited, or misquoted by the district court. Br. 39-40.
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Instead, Worlds repeatedly argues that the asserted claims “are not simply directed
to ‘filtering’ using a computer” (Br. 40) but fails to adequately address its statements
to the contrary made to both the district court during claim construction and the
PTAB. Indeed, contrary to Worlds’s statements now, it did represent to the district
court that the determining limitation only requires that “the client determines from
the positions it has received which avatars to display.” Appx1614(70:15-25).
Worlds also repeatedly linked the “determining” limitation to “crowd control.” E.g.,
Appx496; Appx1060-1061(101:25-102:4). Worlds cannot now be heard to fault the
district court for its conclusions that are in line with Worlds’s own arguments simply
because it now seeks to abandon them to save its patent claims.
* * *
At bottom, the patents’ claims recite nothing more than filtering position
information for crowd control. The claims are therefore directed to an abstract idea
at Alice Step One.
III. THE ASSERTED PATENT CLAIMS RECITE NO INVENTIVE CONCEPT AT ALICE
STEP TWO
“If the claims are directed to a patent-ineligible concept, the second step of
the Alice test requires a court to ‘examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.’” Universal Secure Registry LLC v.
Apple Inc., 10 F.4th 1342, 1346 (Fed. Cir. 2021). “This inventive concept must do
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more than simply recite ‘well-understood, routine, conventional activity.’” Id.; see
also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79-80
(2012). “To uphold a patent at step two, an inventive concept ‘must be evident in
the claims.’” WhitServe LLC v. Dropbox, Inc., 854 F. App’x 367, 371 (Fed. Cir.
2021) (nonprecedential) (quoting Two-Way Media, 874 F.3d at 1338). Worlds’s
asserted claims do not contain an inventive concept.
A. No “Inventive Concept” Transforms The Claims’ Abstract Idea
Into Patent-Eligible Subject Matter
Worlds does not argue that the elements of its asserted claims individually
recite an inventive concept—Worlds argues only that the asserted claims recite an
inventive concept as an ordered combination.10 E.g., Br. 43 (“Representative
Claim’s elements, taken together as an ordered combination”); id. (arguing that “the
specific arrangement or combination … is novel”); id. at 46 (“when taken together
as the ordered combination claimed in the Representative Claim”). Quite the
contrary: even as an ordered combination, there is no inventive concept that would
render the claims patent eligible at Step Two. Worlds’s patent claims do nothing
more than implement the abstract idea of filtering position information on generic
10 Worlds should not be heard to argue otherwise in its reply brief. See
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006)
(“Our law is well established that arguments not raised in the opening brief are
waived.”).
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computer components performing well-understood and routine functions in a
conventional way.
Focusing on the actual language of representative claim 4 of the ’690 Patent—
which Worlds evades throughout its brief—the claim language merely recites the
use of a “client process” and a “server process” where the “client process” receives
“less than all” avatar position information from the “server process” (i.e., receive
less than all data) and determines from that data “a set of the other users’ avatars”
“to display” (i.e., determine the data to display) by comparing an “actual number to
the maximum number” (i.e., comparing two data values). Appx154(19:31-42,
19:54-64). The specification explains that the purported invention can be carried out
using known and conventional hardware, software, and functions.
Appx146(3:56-4:48) (“Typically, but not always, each client 20 is implemented as
a separate computer and one or more computer systems are used to, implement
virtual world server 22. As used here, the computer system could be a desktop
computer as are well known in the art …. Mechanisms for storing, reading and
modifying data on computers such as client system 60 are well known in the art, as
are methods and means for executing programs and displaying graphical results
thereof.”).
“Server process” and “client process” cannot provide the requisite inventive
concept because they are merely “generic computer” components performing
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“generic computer functions”—sending, receiving, and comparing data. See, e.g.,
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1017-1018 (Fed. Cir.
2017) (nonprecedential) (holding that “authentication server,” “access server,” and
“client computer device” were “generic computer components” under Step Two); In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (holding
that “server fails to add an inventive concept” where it performed “‘well-understood,
routine, [and] conventional activities’”); see also Accenture Global Servs., GmbH v.
Guideware Software, Inc., 728 F.3d 1336, 1338, 1343-1344 (Fed. Cir. 2013) (claims
reciting “a client component” and “a server component” held invalid under § 101).
Nor can the “client process” receiving “less than all” avatar position
information from the “server process” provide the inventive concept. As this Court
has held, “‘sending and receiving information’ over a network are ‘routine computer
functions.’” See Whitserve, 854 F. App’x at 372 (citing Intellectual Ventures I LLC
v. Erie Indemnity Co., 850 F. 3d 1315, 1329 (Fed. Cir. 2017)).
Similarly, comparisons of data values—i.e., comparing an actual number to a
maximum number—and decisions based on the outcome of such comparisons are
generic computer functions that cannot provide an inventive concept. See, e.g.,
Two-Way Media, 874 F.3d at 1340-1341 (“[N]othing in these claims requires
anything other than conventional computer and network components operating
according to their ordinary functions.”); Electric Power, 830 F.3d at 1355 (claims
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failed Step Two where “[n]othing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional computer,
network, and display technology for gathering, sending, and presenting the desired
information.”); see also WhitServe, 854 F. App’x at 372 (“The claims recite generic
computer components performing routine conventional functions.”).
Moreover, as the district court correctly recognized, representative claim 4 of
the ’690 Patent similarly lacks an inventive concept when viewed as “an ordered
combination” because “[t]he steps are organized in a completely conventional way.”
See Two-Way Media, 874 F.3d at 1341; see also, e.g., Prism Techs., 696 F. App’x
at 1018 (“Viewed as an ordered combination, the asserted claims recite no more than
the sort of ‘perfectly conventional’ generic computer components employed in a
customary manner ….”); Appx19 (“Moreover, there is nothing in the ordering of the
steps in the claims (i.e., receiving, determining, comparing) that make them
inventive; the ‘steps are organized in a completely conventional way.’”). The claim
amounts to receiving filtered information (i.e., “less than all” data) and then, from
the filtered information, determining the set of information that is to be displayed by
comparing data values (i.e., comparing an actual number to a maximum number).
See Appx154(19:31-42, 19:54-64). There is nothing unconventional about that
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ordering.11 See, e.g., Intellectual Ventures I, 838 F.3d at 1333 (claims calling for
receiving data, determining whether the received data matched certain
characteristics, and outputting data based on the determining step failed Step Two);
Glasswall, 754 F. App’x at 998-999 (holding that claims that “deliver the allowable
content and inhibit the communication of other content” failed Step Two because
“[t]he claims merely require the conventional manipulation of information by a
computer.”).
Tellingly, Worlds fails to articulate what—in any of the asserted claims—the
ordered combination is that allegedly provides the inventive concept. See Br. 43
(merely referencing “multi-criteria filtering”). Indeed, it fails to address any claim
language in its Step Two analysis. See Two-Way Media, 874 F.3d at 1338 (“The
main problem that [the patentee] cannot overcome is that the claim—as opposed to
something purportedly described in the specification—is missing an inventive
concept.”). To the extent that Worlds contends that “multi-criteria filtering” supplies
the inventive concept (Br. 43), that is nothing more than the abstract idea itself. See
11 Indeed, it is not clear what other order of steps would allow the purported
invention to function: for example, the filtering by comparing two data values cannot
be performed before the data set is received.
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supra at Section II.A.12 But the abstract idea to which the patent claims are directed
cannot supply the necessary inventive concept. E.g., ChargePoint, 920 F.3d at 774
(“But network control is the abstract idea itself, and ‘a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”); BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290-1291 (Fed. Cir. 2018).
That representative claim 4 of the ’690 Patent is tied to a “virtual space” does
not save the claim. As the Supreme Court held, “[t]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use … to a
particular technological environment.’” Mayo, 566 U.S. at 73; see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-716 (Fed. Cir. 2014); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“At best, that narrowing
is an ‘attempt to limit the use’ of the abstract guarantee idea ‘to a particular
technological environment,’ which has long been held insufficient to save a claim in
this context.”). And, in any event, Worlds concedes that the client-server
architecture for use in a “virtual world ‘chat’ system” described in its patents is
12 Worlds has taken the position that its claims do not actually require client-side
filtering. E.g., Appx2011-2012 (Worlds arguing that “determining” step “requires
selection in only some instances”); Br. 50 (noting that claim allows for
“consideration” of client-based filtering); see also Appx1618(8:9-12).
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merely a descriptive “example” among a “variety of applications” for its purported
invention. Appx145(2:60-65).
The other asserted claims fare no better, as the district court concluded. E.g.,
Appx176(21:58-22:23) (maximum number-based claim); Appx202(21:7-21) (fewer
than all-based claim); Appx225(19:20-38) (condition-based claim);
Appx247-248(20:45-21:5) (condition-based claim); see also Appx20 n.3 (“This
is … not just true of claim 4 of the ‘690 as the representative claim, but also of the
remaining claims including those claims that teach filtering of position information
by ‘fewer than all’ or conditions on the filtering which, when considered per claim
as individual elements or an ordered combination of elements, do not provide the
necessary inventive concept.”); Appx454-457; Appx460-461; supra at p.25 n.6.
Tellingly, under Worlds’s broad interpretation of its claims, the claims would
preempt any form of filtering position information within conventional computer
systems. For example, Worlds alleges that not receiving position information for a
person who leaves the game can satisfy the claims. Appx1323-1324(¶50);
Appx1368(¶11); see also supra at p.10; Appx2045 (Worlds arguing that “‘crowd
control’” only requires “filtering information using some means”). Such preemptive
claiming of an abstract idea is precisely what Alice and its progeny sought to end.
See, e.g., Alice, 573 U.S. at 223 (noting that “pre-emption concern … undergirds our
§ 101 jurisprudence”); Ariosa, 788 F.3d at 1379 (“The Supreme Court has made
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clear that the principle of preemption is the basis for the judicial exceptions to
patentability.”).
B. Worlds’s Remaining Step Two Arguments Fail
The patent claim language compels the conclusion that the asserted claims do
not contain an inventive concept. Worlds argues that “the only conclusion that could
be reached is that the claims include an inventive concept” or “reflects clear factual
disputes.” Br. 42. But Worlds’s evidence in support of this argument relates to
novelty—which is a distinct inquiry under this Court’s precedent. Moreover, many
of Worlds’s arguments are waived, forfeited, or otherwise ignore facts to which
Worlds admitted.
1. Worlds’s Arguments That the Record Requires Finding an
Inventive Concept Are Inconsistent with Precedent and
Forfeited
a. The PTAB’s finding as to the representative claim does
not affect the district court’s determination.
Worlds’s primary argument (e.g., Br. 42-44) is that, because the PTAB found
that representative claim 4 of the ’690 Patent was patentable over the specific
references presented in the IPR proceeding, the district court was obligated to
conclude the asserted claims contain an inventive concept. That is incorrect.
As this Court has recognized on multiple occasions, “[e]ligibility and novelty
are separate inquiries.” Two-Way Media, 874 F.3d at 1340; see also, e.g., Yu v.
Apple Inc., 1 F.4th 1040, 1045 (Fed. Cir. 2021) (“[E]ven if claim 1 recites novel
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subject matter, that fact is insufficient by itself to confer eligibility.”); SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“Nor is it enough for
subject-matter eligibility that claimed techniques be novel and nonobvious in light
of prior art, passing muster under 35 U.S.C. §§ 102 and 103.”); Intellectual Ventures
I, 838 F.3d at 1315 (holding that jury’s finding that “particular prior art references
do not … render obvious the asserted claims does not resolve the question of whether
the claims embody an inventive concept at the second step of Mayo/Alice.”).13
Accordingly, contrary to Worlds’s contention otherwise, the fact that claim 4 of the
’690 Patent was found patentable over specific prior art asserted in an IPR did not
require the district court to deny summary judgment.14
Nor did it create a genuine dispute of material fact. The parties did not dispute
that the PTAB found claim 4 of the ’690 Patent patentable over the prior art asserted
in that IPR. Appx1621(¶3). Instead, the parties dispute the legal significance of that
fact. As this Court has held, that fact is not determinative of the Section 101 inquiry.
E.g., SAP, 898 F.3d at 1163; Intellectual Ventures I, 838 F.3d at 1315.
13 In any event, Activision maintains that the asserted claims—including claim
4 of the ’690 Patent—are invalid in view of the prior art, including system prior art
that could not have been raised before the PTAB. See, e.g., Appx2434-2447;
Appx2452-2457.
14 Worlds refers to the “PTAB decisions.” Br. 49. But the PTAB’s written
decisions as to the ’690 Patent, ’558 Patent, and one of the written decisions related
to the ’998 Patent are not part of the summary judgment record.
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b. The district court did not err with respect to PTAB
decisions related to the ’856, ’501, and ’998 Patents.
Worlds further argues (Br. 44-47) that the district court erred in relying on
certain of the PTAB’s decisions related to whether the asserted claims were
patentable in its summary judgment order. As an initial matter, the district court did
not rely on the PTAB’s decisions related to the ’856, ’501, and ’998 Patents in its
Alice Step Two analysis. Appx18-20. But, even if the district court did, Worlds’s
remaining arguments related to these PTAB decisions are without merit.
Worlds incorrectly contends that the district court erred in considering the
PTAB’s merits decisions on the ’856, ’501, and ’998 Patents because they were
ultimately vacated. Br. 44-45. But this Court vacated those decisions on procedural
grounds, and expressly declined to address the merits of those decisions. Worlds,
903 F.3d at 1246-1248 (“Because of our conclusions with respect to the
real-party-in-interest issue, we need not address the merits of the parties’ invalidity
arguments at this time. We therefore vacate the Board’s merits decisions in their
entirety, without speaking to the merits of the Board’s analysis.” (emphasis added)).
Accordingly, the PTAB’s merits reasoning in those decisions remains persuasive
authority. See, e.g., United States v. Young, 846 F. App’x 179, 182 (4th Cir. 2021)
(nonprecedential) (“Although the Supreme Court later vacated [a decision] on
different grounds, we—in line with some of our sister circuits—hold that the
unchallenged portion of an opinion containing a vacated judgment is at least
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persuasive authority.”) (collecting cases); Golden v. United States, 955 F.3d 981,
987 n.4 (Fed. Cir. 2020) (noting where decision was vacated on other grounds, the
analysis with respect to the issues not addressed remained “persuasive authority”);
Brown v. Kelly, 609 F.3d 467, 476-477 (2d Cir. 2010) (treating decision vacated on
other grounds as “persuasive authority”); see also Appx8 (“The PTAB’s IPR
decision may be relied upon as persuasive authority before this Court.”).15
Further, the general principle that “client-side and server-side filtering of
position information is not inventive” (Appx8-9) is supported by the PTAB’s
non-vacated decisions. The PTAB issued a Final Written Decision—that was never
vacated—finding thirteen claims of the ’690 Patent invalid. See, Appx1318(¶15)
(invalidating claims 1-3, 5-7, 10-12, 14, 15, 17, and 19 of the ’690 Patent);
Appx1365(¶2). During those proceedings, Worlds argued that the ’690 Patent
relates to filtering. E.g., Appx491 (Worlds arguing that ’690 Patent relates to
15 Moreover, Worlds admitted that the PTAB found the asserted claims of the
’856, ’501, and ’998 Patents unpatentable. Appx1323(¶46) (“The PTAB issued a
Final Written Decision in IPR2015-01264 on November 10, 2016, finding that claim
1 of the ’856 Patent is unpatentable.”); Appx1368(¶11) (“Worlds does not dispute
Paragraphs 36-47 … of Defendants’ Statement of Undisputed Material Facts.”); see
also Appx1327(¶75); Appx1334(¶108); Appx1369(¶14); Appx1370(¶19) (similar
for ’501 and ’998 Patents). Implicit in Worlds’s admission is the PTAB’s
determination that the concept of filtering avatar position information at both the
server and client level was not inventive. See Appx8-9; Appx365 (Worlds
characterizing asserted claims as “multi-criteria filtering of avatar position and state
information, both at the client side and the server side”); Appx491.
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server-side and client-side filtering); compare, e.g., Appx154(19:31-42), with, e.g.,
Appx202(21:7-21).
Worlds tries to sidestep these undisputed facts by arguing that the district
court’s “reliance on the vacated IPR decisions” for the ’856, ’501, and ’998 Patents
is barred by “[t]he doctrine of unclean hands.” Br. 45-46. This argument fails at
multiple levels and for multiple reasons.
At the outset, Worlds never made this argument below, and it is forfeited.
Appx1373-1375(¶¶29-33) (objecting to those IPR decisions “under Fed. R. Evid.
402 and 403” and “hearsay” grounds only); see, e.g., In re Google Tech. Holdings
LLC, 980 F.3d 858, 862-863 (Fed. Cir. 2020); Golden Bridge, 527 F.3d at
1322-1323.16
Beyond that, Worlds’s reasoning is meritless. Ultimately, because it was a
non-issue (Activision had ample evidence of invalidity irrespective of any estoppel
effect of the IPR petitions), Activision agreed not to dispute that it was a
real-party-in-interest to avoid Worlds’s sweeping and invasive discovery relating to
whether or not Activision was a real-party-in-interest to Bungie Inc.’s IPRs. See
16 Worlds routinely took the position below—just as it does to this Court (Br.
13)—that, on remand, the PTAB found that Activision was a real-party-in-interest.
E.g., Appx2749. Although Activision disagrees with that characterization of the
PTAB’s remand decision, under Worlds’s view, nothing prevented it from raising
this argument at the time it submitted its summary judgment opposition.
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Appx2728 (explaining that Worlds’s requests for production “seek[] overbroad and
irrelevant discovery that is not only disconnected from any live dispute but also
improperly delves into privileged information.”); Appx2758 (“During the January
13, 2021 hearing, the Court posited a potential resolution of [Defendants’] motion
for protective order whereby the Court would grant Defendants’ motion if
Defendants would stipulate for the purposes of determining the scope of prior art
estoppel … in this proceeding, and no other proceeding, that Defendants would not
dispute they were real-parties-in-interest to the [IPRs] filed by Bungie, Inc., thereby
mooting the need for Plaintiff Worlds, Inc.’s … Fourth Set of Requests for
Production …. Defendants stated they would agree to such a resolution.” (emphasis
added)); Appx1726 (“Should Activision object, the court would most likely order
that the RPI discovery be produced as requested ….”). A stipulation to narrow issues
and avoid burdensome discovery does not give rise to unclean hands. Nor would
unclean hands preclude a district court from considering the IPR record as a data
point in the Section 101 analysis even if the moving party had been a party to—or a
real-party-in-interest to—an IPR.
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In any case, although the unclean hands argument is meritless, nothing
prevented Worlds from raising it in opposition to Activision’s summary judgment
motion. It simply chose not to.17
Moreover, even if the district court erred in reviewing the vacated IPR
decisions (it did not), any such error would be harmless. See, e.g., Bridge & Post,
Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 894 (Fed. Cir. 2019)
(nonprecedential). For the reasons discussed above, the district court’s conclusion
that the asserted claims do not recite an inventive concept is supported by the claims
themselves—which the district court analyzed throughout its Step Two analysis. See
supra at Section III.A; Appx18-20 (discussing “[t]he steps of the claims” and “the
steps in the claims”). And Worlds has not shown how any such error could be
prejudicial in any case.
17 Worlds had multiple opportunities to do so, as the district court did not issue
its Section 101 opinion until nearly two months after Activision entered into the
stipulation. See Appx1726 (dated March 4, 2021); Appx2 (dated April 30, 2021);
Golden Bridge, 527 F.3d at 1322-1323 (holding argument raised for first time on
appeal waived where litigant “[did] not argue to this court that it was in any way
prevented from raising this argument in opposition to the summary judgment
motion” and where litigant “had multiple opportunities to present its arguments” it
belatedly raised).
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c. The district court properly relied on claim language and
Worlds’s forfeited argument as to third-party articles
does not affect the analysis.
Worlds incorrectly contends that the district court’s “step two analysis … cites
to no evidence to show what was well-known, routine, and conventional.” Br. 46.
The opinion relies on the claim language of claim 4 of the ’690 Patent. E.g.,
Appx19 (“The steps of the claims here use only ‘generic functional language to
achieve the purported solution’ of filtering position information for crowd control.”
(emphasis added)). It is proper for courts to focus on claim language at Step Two—
just as the district court did here. E.g., Synopsys, 839 F.3d at 1149 (“The § 101
inquiry must focus on the language of the Asserted Claims themselves.”); see also
Two-Way Media, 874 F.3d at 1338-1339; Yu, 1 F.4th at 1045. Indeed, this Court has
held that it is error to rely on “technological details set forth in the patent’s
specification and not set forth in the claims to find an inventive concept.”
Intellectual Ventures I, 838 F.3d at 1322.
In its last salvo to scour the record for support that the asserted claims recite
an inventive concept (they do not), Worlds attempts to rely on third-party articles
discussing Worlds Chat. Br. 46. Worlds never advanced this argument below; it is
thus forfeited. Appx1358-1362; see Google Tech. Holdings, 980 F.3d at 862-863;
Golden Bridge, 527 F.3d at 1322. Even setting that aside, Worlds yet again conflates
the inventive concept inquiry under § 101 with the novelty inquiry under
Case: 21-1990 Document: 14 Page: 62 Filed: 10/13/2021
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§§ 102-103. As discussed above, this Court has rejected the argument Worlds
advances here. Moreover, contrary to Worlds’s assertion otherwise (Br. 46), nothing
in those articles supports that the purported invention of the patents-in-suit “was not
previously known to the industry” (id.), much less that the asserted claims contain
an inventive concept. Appx1492-1500; Appx1543-1545.
2. Precedent Supports the District Court’s Conclusion That the
Asserted Claims Contain No Inventive Concept
Worlds incorrectly argues that the district court’s legal “analysis was
conclusory and failed to appreciate the distinctions between Worlds’s claims and
technology addressed in those cases.” Br. 47-48. The district court’s ruling is amply
supported by precedent, see supra at Section III.A, and Worlds’s attempts to
distinguish the cases the district court relied on at Step Two depend on incorrect
presumptions.
Worlds reprises its argument from Step One that its claims are purportedly
directed to a technological advancement in computers. E.g., Br. 48 (“But this
conclusion is directly contradicted by the language of the claims, which are
expressly directed to a specific improvement in computer network architecture.”).
For the reasons discussed above, the asserted claims are not directed to a specific
improvement in computer technology. See supra at Section II.B.1; see also supra
at Section II.B.2. Instead, they are directed to the abstract idea of filtering position
information for crowd control. See supra at Section II.A. The abstract idea to which
Case: 21-1990 Document: 14 Page: 63 Filed: 10/13/2021
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the patent claims are directed cannot supply the necessary inventive concept. E.g.,
ChargePoint, 920 F.3d at 774; BSG, 899 F.3d at 1290-1291.
Worlds principally relies on BASCOM, 827 F.3d 1341, to support its argument
that the claims allegedly contain an inventive concept (they do not). Br. 49-51.
Worlds’s reliance on BASCOM is misplaced. There, the Court accepted that “the
inventive concept rest[ed] on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP server, and to associate
a request for Internet content with a specific individual account.” BASCOM, 827
F.3d at 1350. In particular, “the inventive concept harnesses this technical feature
of network technology in a filtering system by associating individual accounts with
their own filtering scheme and elements while locating the filtering system on an
ISP server.” Id.
No such elements exist here. Unlike the claims in BASCOM, the claims here
“merely recite the abstract idea of filtering content along with the requirement to
perform it on the Internet, or to perform it on a set of generic computer components.”
827 F.3d at 1350. Worlds’s claims are limited to the client process receiving less
than all data from the server process, and then, using that set of data it received, the
client process determines a set of data to display after comparing two data values.
Compare Appx154(19:31-42, 19:54-64), with BASCOM, 827 F.3d at 1345 (reciting
“a remote ISP server coupled to said client computer and said Internet computer
Case: 21-1990 Document: 14 Page: 64 Filed: 10/13/2021
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network, said ISP server associating each said network account to at least one
filtering scheme and at least one set of filtering elements, said ISP server further
receiving said network access requests from said client computer and executing said
associated filtering scheme utilizing said associated set of logical filtering
elements”). But “[f]iltering content on the Internet was already a known concept.”
BASCOM, 827 F.3d at 1350. And, as the district court reasoned, Worlds’s claims
“cannot be said to be as specific” as BASCOM’s and “no language in the claims
suggests that [the maximum number filtering] is done through any sort of
‘customizable filtering features specific to each end user,’ but rather through a
generically stated determination of the maximum number of the other users’ avatars
to be displayed.” Appx19 n.2.
Worlds’s reliance on Amdocs (Israel) Ltd. v. Opennet Telecom, Inc., 841 F.3d
1288 (Fed. Cir. 2016) (Br. 48), is similarly misplaced. There, the claim language
specifically required computer code that was “‘correlated to enhance the first
network accounting record.’” Amdocs, 841 F.3d at 1299. This Court specifically
pointed to the “enhance” language—which was construed as “being dependent upon
the invention’s distributed architecture”—as what “requires that these generic
components operate in an unconventional manner[.]” Id. at 1300-1301. There is
nothing comparable in the claims at issue here—nor does Worlds point to any.
Case: 21-1990 Document: 14 Page: 65 Filed: 10/13/2021
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Perhaps recognizing that BASCOM and Amdocs do not compel the result it
seeks, Worlds halfheartedly attempts to distinguish Fuzzysharp (Br. 48)—a decision
this Court affirmed on appeal. 2013 WL 5955668, at *11-12, aff’d 595 F. App’x
996 (Fed. Cir. 2015). Similar to the claims in Fuzzysharp, Worlds’s asserted claims
have: (1) a preamble that states the method is for a certain field of use (e.g., “virtual
space”); (2) steps related to receiving less than all data and mathematic
manipulations of data (e.g., “determining” and “comparing”); and (3) references to
“generic computing structures” (e.g., “client process” and “server process”).
Appx154(19:31-42, 19:54-64); see 2013 WL 5955668, at *11; see also Appx18.
Worlds’s first response to Fuzzysharp is a reprise of its argument from Step
One that the claims are “directed to a specific improvement in computer network
architecture.” Br. 48. But, for the reasons already discussed above, Worlds’s claims
are not so directed, and its argument is belied by the asserted claims’ actual language.
See, e.g., Two-Way Media, 874 F.3d at 1339. Worlds’s second response is that the
district court erred in characterizing Worlds’s claims as “conventional” relying on
Fuzzysharp because the PTAB determined that claim 4 of the ’690 Patent (and
certain other claims) was patentable in view of the references presented in that IPR.
Br. 49-50. As previously discussed, this Court has already rejected attempts to
conflate novelty under §§ 102-103 and patent eligibility under § 101. See, e.g., Yu,
1 F.4th at 1045; SAP, 898 F.3d at 1163. Accordingly, contrary to Worlds’s
Case: 21-1990 Document: 14 Page: 66 Filed: 10/13/2021
- 56 -
argument, the PTAB’s conclusion as to the representative claim cannot create a
genuine issue of material fact. See, e.g., Yu, 1 F.4th at 1045 (“But even if claim 1
recites novel subject matter, that fact is insufficient by itself to confer eligibility.”
(emphasis added)).
Worlds also attempts to distinguish Two-Way Media by arguing that the
claims at issue in Two-Way Media “required nothing ‘other than conventional
computer and network components operating according to their ordinary
functions.’” Br. 51-52. But that is precisely what Worlds’s claims do. See supra at
Section III.A. Examining the claimed steps of representative claim 4 of the ’690
Patent, the steps consist of: (1) receiving less than all data and (2) determining the
set of data to display by (3) comparing a set of data values. Appx154(19:31-42,
19:54-64).18 These are quintessential computer functions and ordered in a
conventional way. Two-Way Media, 874 F.3d at 1339 (holding claim as an “ordered
combination of these limitations” was not inventive because “[t]he claim uses a
conventional order of steps—first processing the data, then routing it, controlling it,
and monitoring its reception—with conventional technology to achieve its desired
18 Again, conspicuously absent from Worlds’s argument is citation to any
language in the claims (or any other record support). Br. 52. “The main problem
that [Worlds] cannot overcome is that the claim—as opposed to something
purportedly described in the specification—is missing an inventive concept.”
Two-Way Media, 874 F.3d at 1338-1339.
Case: 21-1990 Document: 14 Page: 67 Filed: 10/13/2021
- 57 -
result”). As the district court correctly concluded, “[t]he steps of the claims here use
only ‘generic functional language to achieve the purported solution’ of filtering of
position information for crowd control.” Appx19 (quoting Two-Way Media, 874
F.3d at 1339).
CONCLUSION
Worlds’s asserted patent claims are ineligible under § 101. Worlds’s claims
fail Alice Step One because they are directed to the abstract idea of filtering position
information to effect crowd control—a characterization Worlds advanced before
both the district court and the PTAB. Worlds’s claims likewise fail Alice Step Two
because they do not recite an inventive concept. Instead, they recite generic
computer components, performing routine computer functions, in a predictable and
conventional way. Those components are insufficient to supply an inventive
concept.
This Court should affirm the district court’s ruling that claims 4, 8, 13, and 16
of the ’690 Patent, claims 5 and 7 of the ’558 Patent, claim 1 of the ’856 Patent,
claims 1-8, 10, 12, and 14-16 of the ’501 Patent, and claim 18 of the ’998 Patent are
invalid under § 101.
Case: 21-1990 Document: 14 Page: 68 Filed: 10/13/2021
- 58 -
Respectfully submitted,
/s/ Sonal N. Mehta
KEVIN S. PRUSSIA
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
(617) 526-6000
SONAL N. MEHTA
JENNIFER J. JOHN
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
(650) 858-6000
Sonal.Mehta@wilmerhale.com
Attorneys for Defendants-Appellees
October 13, 2021
Case: 21-1990 Document: 14 Page: 69 Filed: 10/13/2021
CERTIFICATE OF SERVICE
I hereby certify that, on this 13th day of October, 2021, I filed the foregoing
Brief for Defendants-Appellees with the Clerk of the United States Court of Appeals
for the Federal Circuit via the CM/ECF system, which will send notice of such filing
to all registered CM/ECF users.
/s/ Sonal N. Mehta
SONAL N. MEHTA
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
(650) 858-6000
Case: 21-1990 Document: 14 Page: 70 Filed: 10/13/2021
CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
LIMITATIONS
The foregoing filing complies with the relevant type-volume limitation of the
Federal Rules of Appellate Procedure and Federal Circuit Rules because:
1. The filing has been prepared using a proportionally-spaced typeface
and includes 13,028 words.
2. The brief has been prepared using Microsoft Word for Office 365 in
14-point Times New Roman font. As permitted by Fed. R. App. P. 32(g), the
undersigned has relied upon the word count feature of this word processing system
in preparing this certificate.
/s/ Sonal N. Mehta
SONAL N. MEHTA
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
(650) 858-6000
October 13, 2021
Case: 21-1990 Document: 14 Page: 71 Filed: 10/13/2021
Posted on Court of Appeals Pacer 8/11 -
08/11/2021 13 **TEXT ONLY** ORDER granting motion to extend time to file brief [12] filed by Appellees Activision Publishing, Inc., Blizzard Entertainment, Inc. and Activision Blizzard Inc. The response brief is due 10/13/2021. Service as of this date by the Clerk of Court. This order has been issued without an attached document and is official and binding. [791856] [JCW] [Entered: 08/11/2021 09:10 AM]
There is nothing new posted on Pacer related to the Activision versus Worlds case.
From world's 10k
NOTE 11 – CONVERTIBLE NOTE RECEIVABLE – RELATED PARTY
The Company made an investment in the form of a convertible note in the amount of $200,000 to Canadian American Standard Hemp (CASH). The convertible note has a 7% annual interest rate and matures in 2 years. Interest and principle is payable at maturity. The note can be converted at any time, either all or part of the amount due can be converted into the borrowers equity. During the year ended December 31, 2020, CASH merged with Real Brands, Inc. The convertible note and accrued interest of $17,267 can be converted into 26,696,153 shares of Real Brands common stock at a conversion price of $0.008139. If converted into common stock, the Company would own approximately 1% of Real Brands Inc. Messrs. Kidrin, Toboroff and Christos are Directors of Real Brands and Mr. Kidrin is the CEO and Mr. Ryan is the CFO of Real Brands.
Pacer 7/6
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
DEFENDANTS’ RESPONSE TO PLAINTIFF’S MOTION FOR DISALLOWANCE OF
DEFENDANTS’ AMENDED BILL OF COSTS
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 1 of 17- i -
TABLE OF CONTENTS
I. INTRODUCTION............................................................................................................. 1
II. LEGAL STANDARD........................................................................................................ 1
III. ARGUMENT.................................................................................................................... 2
A. Defendants’ Amended Bill of Costs Is Timely............................................................... 2
B. Worlds’s Allegations of Litigation Misconduct Are Baseless......................................... 4
C. Defendants Certified That Their Costs Were Correct and Necessarily Incurred in This
Action.......................................................................................................................... 5
D. Defendants’ Costs as Outlined in Their Amended Bill of Costs Are Recoverable............ 5
1. Defendants’ Request for Costs for Service of Process Is Appropriate Under 28
U.S.C. § 1920......................................................................................................... 5
2. Defendants’ Request for Costs of Deposition Materials Is Appropriate Under 28
U.S.C. § 1920......................................................................................................... 6
3. Defendants’ Request for Costs of Hearing Transcripts Is Appropriate Under 28
U.S.C. § 1920......................................................................................................... 9
4. Defendants’ Requests for Witness Costs Is Appropriate Under 28 U.S.C. § 1821
and § 1920............................................................................................................ 10
IV. CONCLUSION ............................................................................................................... 11
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 2 of 17- ii -
TABLE OF AUTHORITIES
Cases Page(s)
600 LB Gorillas, Inc. v. Fieldbrook Foods Corp.,
Civ. A. No. 15-13991-ADB, 2018 WL 6332494 (D. Mass. Dec. 4, 2018).......................... 10
Animal Hosp. of Nashua, Inc. v. Antech Diagnostics,
No. 11-CV-448-LM, 2015 WL 13844702 (D.N.H. Jan. 5, 2015)....................................... 11
ASIS Internet Servs. v. Optin Global, Inc.,
Civ. A. No. 05-5124 JCS, 2008 WL 5245931 (N.D. Cal. Dec. 17, 2008)............................ 10
Bilinsky v. American Airlines, Inc.,
No. 16 C 4253, 2019 WL 10836082 (N.D. Ill. Jan. 31, 2019).............................................. 3
Billings v. Cape Cod Child Dev. Program, Inc.,
270 F. Supp. 2d 175 (D. Mass. 2003).................................................................................. 5
Crawford Fitting Co. v. J. T. Gibbons, Inc.,
482 U.S. 437 (1987)......................................................................................................... 11
Fantroy v. Greater St. Louis Lab. Council, AFL-CIO,
511 F. Supp. 70 (E.D. Mo. 1980).....................................................................................3, 4
Hilton v. Braunskill,
481 U.S. 770 (1987)........................................................................................................... 3
In re Two San Juan Dupont Plaza Hotel Fire Litig.,
994 F.2d 956, 963 (1st Cir. 1993)....................................................................................... 2
James v. Wash Depot Holdings, Inc.,
242 F.R.D. 645 (S.D. Fla. May 14, 2007)........................................................................... 8
Martinez v. Cui,
Civ. A. No. 06-40029FDS, 2009 WL 3298080 (D. Mass. Apr. 13, 2009).................. 6, 7, 8, 9
Personal Web Techs., LLC v. EMC Corp.,
No. 5:13-cv-01358-EJD, 2020 WL 1557441 (N.D. Cal. Apr. 1, 2020)................................. 3
Roggio v. Grasmuck,
18 F. Supp. 3d 49 (D. Mass. 2014)..................................................................................... 5
Templeman v. Chris Craft Corp.,
770 F.2d 245 (1st Cir. 1985)............................................................................................... 6
Trustees of Bos. Univ. v. Everlight Elecs. Co.,
392 F. Supp. 3d 120 (D. Mass. 2019)...........................................................................2, 7, 8
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 3 of 17- iii -
WBIP, LLC v. Kohler Co.,
Civ. A. No. 11-10374-NMG, 2014 WL 4471412 (D. Mass. Sept. 8, 2014)........................... 7
Federal Statutes
28 U.S.C. § 1821................................................................................................................... 10
28 U.S.C. § 1821(a)............................................................................................................... 11
28 U.S.C. § 1920.............................................................................................................passim
28 U.S.C. § 1924..................................................................................................................... 5
35 U.S.C. § 101..............................................................................................................4, 5, 10
35 U.S.C. § 285....................................................................................................................... 3
Federal Rules
Fed. R. Civ. P. 26(a)(1)............................................................................................................ 9
Fed. R. Civ. P. 30(b)(6)........................................................................................................7, 9
Fed. R. Civ. P. 54(d)................................................................................................................ 1
Fed. R. Civ. P. 54(d)(1)........................................................................................................... 1
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 4 of 17- 1 -
I. INTRODUCTION
As the prevailing party in this case, Defendants Activision Blizzard, Inc., Blizzard
Entertainment, Inc., and Activision Publishing, Inc. (collectively, “Defendants”) are entitled to the
taxable costs they expended in defending themselves against Plaintiff Worlds, Inc.’s (“Plaintiff”
or “Worlds”) objectively baseless claims. Contrary to the strong presumption favoring awarding
costs, Worlds seeks to avoid paying for any of Defendants’ necessarily incurred costs. Indeed,
Worlds does an about-face from its position as to the timing of fees and costs, attempting to hold
taxable costs in abeyance while simultaneously insisting that consideration of attorney’s fees
should proceed. An award of taxable costs should proceed now; Worlds does not come close to
meeting its burden to establish that a stay of costs is warranted. Moreover, Worlds ignores that
these costs: (1) were incurred because of Worlds’s own litigation conduct, such as insisting on
proceeding with certain depositions; (2) relate to issues Worlds has indicated it will raise on appeal;
and (3) are directly authorized under applicable law. The Court should deny Worlds’s motion for
disallowance of costs in its entirety, and Defendants should be awarded their taxable costs.
II. LEGAL STANDARD
Pursuant to 28 U.S.C. §1920, Federal Rule of Civil Procedure 54(d)(1), and Taxation of
Costs Procedures for the District of Massachusetts (“D. Mass”), Defendants are entitled to recover
a portion of their costs as the prevailing parties. See Fed. R. Civ. P. 54(d)(1) (“[C]osts … should
be allowed to the prevailing party.”); District of Massachusetts, Taxation of Costs, Procedures for
Filing Bill of Costs (“Under Fed. R. Civ. P. 54(d) and 28 U.S.C. § 1920, a prevailing party may
request the Courtroom Deputy Clerk to tax allowable costs in a civil action as part of a judgment
or decree.”). Prevailing parties must file their bill of costs within 15 days of “the earlier of (i) the
expiration of the time allowed for appeal of the final judgment or decree, or (ii) receipt by the
Clerk of the Mandate of the Court of Appeals.” District of Massachusetts, Taxation of Costs,
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 5 of 17- 2 -
Procedures for Filing Bill of Costs, at 2. The Court has broad discretion when deciding to award
costs to a prevailing party, but “that discretion ‘operates in the long shadow of a background
presumption favoring cost recovery for prevailing parties.’” See Trustees of Bos. Univ. v. Everlight
Elecs. Co., 392 F. Supp. 3d 120, 134 (D. Mass. 2019) quoting In re Two San Juan Dupont Plaza
Hotel Fire Litig., 994 F.2d 956, 963 (1st Cir. 1993).
III. ARGUMENT
Worlds makes four arguments in seeking to disallow Defendants’ costs, each of which is
without merit. First, Worlds argues that Defendants’ Amended Bill of Costs is premature. See
Dkt. 382 at 4. But Defendants’ Amended Bill of Costs is timely, consistent with this District’s
local practices, and it is expeditious to consider it now. Second, Worlds contends that no costs
should be awarded because of alleged litigation misconduct. Id. at 4-5. Defendants did no such
thing, and Worlds’s hyperbole ignores the circumstances surrounding Defendants’ stipulation in
connection with a discovery dispute. Third, Worlds argues that Defendants did not certify that the
costs were correct and necessarily incurred. E.g., id. at 5-6. But it is Worlds who ignores language
in the Amended Bill of Costs in which Defendants declared just that. Finally, contrary to Worlds’s
suggestion otherwise (id. at 6-10), Defendants’ requests for costs related to service of process,
deposition materials, hearing transcripts, and witness costs are in alignment with the Federal Rules
and this District’s local practices. Accordingly, Defendants are entitled to their requested taxable
costs.
A. Defendants’ Amended Bill of Costs Is Timely.
Worlds argues that Defendants prematurely filed theirAmended Bill of Costs because they
did not wait to file within fifteen days after receipt by the Clerk of the mandate of the U.S. Court
of Appeals for the Federal Circuit. Dkt. 382 at 4. Although the District’s guidance provides that
submission of a bill of costs is timely where a party files a bill of costs within 15 days of “the
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 6 of 17- 3 -
earlier of (i) the expiration of the time allowed for appeal of the final judgment or decree, or (ii)
receipt by the Clerk of the Mandate of the Court of Appeals,” District of Massachusetts, Taxation
of Costs, Procedures for Filing Bill of Costs at 2, nothing precludes Defendants from filing their
bill of costs before such time expires. That is precisely what Defendants did. 1 Courts routinely
address taxable costs while a case is pending on appeal. E.g., Personal Web Techs., LLC v. EMC
Corp., No. 5:13-cv-01358-EJD, 2020 WL 1557441, at *1 (N.D. Cal. Apr. 1, 2020) (denying
motion to stay costs pending Federal Circuit appeal); Bilinsky v. American Airlines, Inc., No. 16
C 4253, 2019 WL 10836082, at *1 (N.D. Ill. Jan. 31, 2019) (“‘[A] pending appeal is not a good
reason to postpone consideration’ of defendant’s bill of costs.’”) (citation omitted); Fantroy v.
Greater St. Louis Lab. Council, AFL-CIO, 511 F. Supp. 70, 71 (E.D. Mo. 1980) (denying
plaintiff’s motion to stay any determination of costs, expenses or fees pending appeal in order to
“facilitate complete, economical appellate review of all facets of [the] litigation”). And, in any
event, Worlds has not met its burden of showing why a stay of an award of costs should be granted.
See Hilton v. Braunskill, 481 U.S. 770, 776 (1987) (reciting standard for determining whether to
stay an award of costs); see also Personal Web, 2020 WL 1557441, at *2, n.2.
Moreover, Worlds’s about-face argument that “[h]olding the Bill of Costs in abeyance
would be an efficient use of the Court’s and the parties’ resources” (Dkt. 382 at 4) is at odds with
the positions it previously took in connection with fees and costs. Defendants previously suggested
that the parties defer any requests for attorney’s fees and certain costs until after appeal. Dkt.
362-1 at 5. Worlds rejected the proposal. See generally id.; see also Dkt. 363 at 2-3. Given that
the Court is already considering whether Worlds is liable for attorney’s fees under 35 U.S.C. § 285
1 Worlds filed its notice of appeal on May 28, 2021. Dkt. 366. Defendants filed their bill of
costs on June 14, 2021 (Dkts. 377, 378), and an amended bill of costs on June 23, 2021 (Dkts. 379,
380) after conferring with counsel for Worlds.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 7 of 17- 4 -
(Dkts. 367, 368), it is most efficient to address taxable costs at this time as well. See, e.g., Fantroy,
511 F. Supp. at 71.
B. Worlds’s Allegations of Litigation Misconduct Are Baseless.
To try to avoid costs Worlds forced Defendants to necessarily incur in defending
themselves against Worlds’s objectively baseless claims, Worlds contends that Defendants
engaged in litigation misconduct by instituting IPR proceedings and misleading the USPTO. Dkt.
382 at 4-5. That claim is yet again baseless. Although Defendants agreed to “admit for purposes
of the present action that they were real parties-in-interest to the inter partes review petitions filed
by … Bungie, Inc., concerning patents held by Worlds Inc.” (Dkt. 343 at 7), Defendants did so to
avoid broad-sweeping, burdensome, and disproportionate document requests served by Worlds
that sought access to privileged documents. E.g., Dkt. 293 at 1 (“The Fourth Set of Requests for
Production (Nos. 128-143) served by Plaintiff Worlds, Inc. … seeks overbroad and irrelevant
discovery that is not only disconnected from any live dispute but also improperly delves into
privileged information.”); see also id. at 15-17; Dkt. 315 at 5-6. Furthermore, Worlds’s suggestion
that Defendants engaged in misconduct by seeking full re-briefingand hearing on patent eligibility
under 35 U.S.C. § 101 ignores Worlds’s own statements to the Court that re-briefing on Section
101 was necessary. E.g., Dkt. 239 at 6 (Worlds stating that “n view of intervening law from the
Federal Circuit since 2015, a schedule for supplementing the briefing on Activision’s pending
motion under 35 U.S.C. § 101 … currently taken under advisement by the Court” was necessary);
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 8 of 17- 5 -
Dkt. 330 at 9:2-17 (counsel for Worlds agreeing “there should be rebriefing” on Section 101).
2 At
bottom, Worlds’s allegations of litigation misconduct are unfounded. They should not prevent the
recovery of costs.
C. Defendants Certified That Their Costs Were Correct and Necessarily
Incurred in This Action.
Throughout its memorandum, Worlds incorrectly claims Defendants did not comply with
28 U.S.C. § 1924 because the Specht Declaration “is silent as to the correctness and necessity of
the items of cost claimed.” E.g., Dkt. 382 at 6. Not so. The first page of Defendants’ Amended
Bill of Costs declares “that the foregoing costs are correct and were necessarily incurred in this
action and that the services for which fees have been charged were actually and necessarily
performed.” Dkt. 379 at 1 (emphases added). Thus, Defendants have complied with 28 U.S.C.
§ 1924.
D. Defendants’ Costs as Outlined in Their Amended Bill of Costs Are
Recoverable.
1. Defendants’ Request for Costs for Service of Process Is Appropriate
Under 28 U.S.C. § 1920.
Under 28 U.S.C. §1920, Defendants seek costs associated with the service of 13 document
and deposition subpoenas. Dkt. 380 ¶ 8; Dkt. 380-1. Costs associated with service of subpoenas
are recoverable under 28 U.S.C. § 1920(3). See Roggio v. Grasmuck, 18 F. Supp. 3d 49, 62 (D.
Mass. 2014) (“Costs for subpoenas of witnesses are taxable under 28 U.S.C. § 1920(3).”); Billings
2 Notably, Defendants initially proposed that fact discovery be stayed pending resolution of
Defendants’ motion for summary judgment that the asserted claims were invalid as a matter of law
under 35 U.S.C. § 101—which would have obviated some of the costs Defendants now seek to
recover that they incurred in connection with defending themselves against Worlds’s invalid patent
claims. Dkt. 256 at 3. Worlds opposed that schedule. See id. at 4; Dkt. 330 at 9:16-25 (“We don’t
think this 101 issue is something that should hold up discovery.”).
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v. Cape Cod Child Dev. Program, Inc., 270 F. Supp. 2d 175, 178 (D. Mass. 2003) (“[T]he court
finds appropriate the costs billed for the service of subpoenas”).
Worlds’s primary argument for disallowance of these costs is that Defendants did not
certify that costs were accurately listed and necessarily incurred (Dkt. 382 at 6-7), but, as addressed
above, Defendants did so. See supra at Section III.C. Moreover, Defendants included the invoices
that reflect the total cost of each attempt at service for every subpoena and an explanation as to the
relevance of each of the witnesses for which they issued a subpoena. Dkt. 380 ¶ 8; Dkt. 380-1.
To the extent Worlds suggests that costs for unsuccessful service attempts are not recoverable
(Dkt. 382 at 6-7), there is nothing in this District’s practices or rules to suggest that costs for
unsuccessful, but reasonable, attempts at service are unrecoverable.3 Defendants should be
awarded their requested service of process costs in the amount of $7,147.23.
2. Defendants’ Request for Costs of Deposition Materials Is Appropriate
Under 28 U.S.C. § 1920.
Under 28 U.S.C. § 1920, Defendants seek deposition material costs for eight witnesses—
John Bojorquez, Ron Britvich, George John Cash, Michael Elliot, Patrick Griffith, Neal Hubbard,
Rob Kostich, and Christopher Ryan. Dkt. 380-2. Worldssuggests that deposition transcripts must
be introduced into evidence, used at trial, or filed in support of a successful motion for summary
judgment in order to be recoverable. See Dkt. 382 at 7-8. This is not true.
Rather, the court has the discretion to grant “deposition costs if special circumstances
warrant it, even though the depositions were not put in evidence or used at the trial.” Templeman
v. Chris Craft Corp., 770 F.2d 245, 249 (1st Cir. 1985); see also Martinez v. Cui, Civ. A. No.
3 Worlds’s suggestion that Acceleration Bay LLC is “an entity with an address listed in
Wilmington, DE” (Dkt. 382 at 7)ignores that Acceleration Bay’s website listed its address as being
in San Mateo, California at the time the subpoena issued. See Ex. 1 at 2.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 10 of 17- 7 -
06-40029FDS, 2009 WL 3298080, at *2 (D. Mass. Apr. 13, 2009) (“Necessity is determined as of
the time of taking, and the fact that a deposition is not actually used at trial is not controlling.”);
(internal quotation marks and citation omitted); Trustees of Bos. Univ., 392 F. Supp. 3d 120 at 135
(taking “a case-by-case approach to determining whether ‘special circumstances’ exist to award
transcript costs”). Such circumstances include if witnesses are being deposed at the request of the
party opposing the costs, if the opposing party designates individuals as potential witnesses, or
both. See Martinez, 2009 WL 3298080, at *2; Trustees of Bos. Univ., 392 F. Supp. 3d at 136
(“While Plaintiff is correct that the transcripts were not necessary for trial, Defendants are correct
that the transcripts were necessary at the time they were obtained because Plaintiff intended to use
them at trial.”); see also WBIP, LLC v. Kohler Co., Civ. A. No. 11-10374-NMG, 2014 WL
4471412, at *3 (D. Mass. Sept. 8, 2014) (“Under the circumstances, it was appropriate for counsel
for [Plaintiff] to obtain the transcripts as part of its preparation for trial.”). Both circumstances
apply here.
As an initial matter, Worlds—the party opposing costs—was the party who aggressively
pursued depositions, noticing six of the eight witnesses for which Defendants are seeking costs.
See Ex. 2; Ex. 3; Ex. 4; Ex. 5; Ex. 6; Ex. 7. Moreover, Defendants requested that Worlds
withdraw its deposition notices to Messrs. Elliot and Griffith to streamline the depositions as they
would be duplicative of testimony Worlds would receive through Rule 30(b)(6) testimony. See,
e.g., Ex. 8 at 4; Ex. 9 at 2-3. Yet Worlds insisted on proceeding with the depositions.4 See, e.g.,
Ex. 8 at 1-2; Ex. 9 at 1-2. Accordingly, because these witnesses were deposed at Worlds’s
insistence and not for Defendants’ convenience, Defendants are entitled to recover the costs they
4 Five of these depositions took place before the close of fact discovery, and the parties
agreed to proceed with Mr. Griffith’s deposition on the day after the close of fact discovery.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 11 of 17- 8 -
seek related to those depositions. See Martinez, 2009 WL 3298080, at *2 (approving costs in part
when “witnesses were…deposed at the request of plaintiff” because “there can hardly be any
suggestion that these depositions were taken for defendant’s investigative or discovery purposes
or purely for defense counsel’s convenience.”) (citation omitted).
The remaining two witnesses for which Defendants seek deposition costs are Ron Britvich
and Christopher Ryan. See Dkt. 380 at 4-5. 5 As to Mr. Britvich, he is a consultant to Worlds who
was listed on Worlds’s initial disclosures as an individual who “may possess information that
Worlds may use to support its claims,” including for “prosecution of the patents-in-suit, the
technologies disclosed in the patents-in-suit, and the development, testing, and marketing of
Worlds’s products.” Ex. 10 at 2. Based on this representation, it was both appropriate and
necessary for Defendants to notice Mr. Britvich for deposition and assume that Worlds intended
to rely upon Mr. Britvich’ s testimony either as part of its preparation for trial or as a potential
witness at trial. Therefore, costs for Mr. Britvich’s transcript are appropriately recoverable to
Defendants. See Trustees of Bos. Univ., 392 F. Supp. 3d at 136 (awarding costs for deposition
transcripts “for witnesses that Plaintiff listed in [its] pretrial disclosures as ‘expects to call’
witnesses”);see also James v. Wash Depot Holdings, Inc., 242 F.R.D. 645, 650 (S.D. Fla. May
14, 2007) (awarding deposition costs where “depositions sought to be taxed … are of witnesses
who appear on the [losing parties’] Rule 26(a)(1) initial disclosure list”).
Mr. Ryan, Worlds’s Chief Financial Officer, was Worlds’s Rule 30(b)(6) designee on a
number of financial-related topics. Defendants relied on and cited to Mr. Ryan’s deposition
testimony in connection with responding to interrogatories propounded by Worlds and such
5 Both of these depositions took place before the close of fact discovery.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 12 of 17- 9 -
testimony was necessarily obtained to rebut Worlds’s damages theories.6 Mr. Ryan’s deposition
was thus necessary at the time of taking and costs for his transcript are recoverable to Defendants.
See Martinez, 2009 WL 3298080, at *2 (“Necessity is determined as of the time of taking, and the
fact that a deposition is not actually used at trial is not controlling.”).
Worlds contends—without support—that costs associated with exhibits should not be
awarded. See Dkt. 382 at 9 (referencing “Exhibits” and “Exhibits – Scanned and Hyperlinked”
costs). But exhibits are part and parcel to the deposition transcript itself. Accordingly, Defendants
are entitled to costs associated with the accompanying exhibits for the deposition transcripts.
In sum, Defendants should be awarded their deposition material costs.
3. Defendants’ Request for Costs of Hearing Transcripts Is Appropriate
Under 28 U.S.C. § 1920.
Under 28 U.S.C. § 1920, Defendants seek transcript costs for hearings held before this
Court: the Court’s Markman hearing, the Court’s Section 101 hearings, and the parties’ status
conference held in April 2020. 7 Worlds argues that these costs are not recoverable because the
“hearing transcripts were not introduced in evidence, used at trial, or filed in support of a successful
motion for summary judgment.” Dkt. 382 at 8. But Worlds cites no authority supporting that such
a showing is required. See id. at 8-9 (citing to cases addressing costs associated with depositions).
To the contrary, “transcripts need not be ‘indispensable’ to be eligible for recovery.” See 600 LB
Gorillas, Inc. v. Fieldbrook Foods Corp., Civ. A. No. 15-13991-ADB, 2018 WL 6332494, at *4
6 Moreover, both parties cited to and relied on Mr. Ryan’s deposition testimony in
connection with filings in this case. See Dkt. 333 at 11 (Worlds citing to Mr. Ryan’s deposition
transcript in connection with opposition to Defendants’ motion to compel); Dkt. 368-1 (Defendants
citing to Mr. Ryan’s deposition transcript in connection with their motion for entitlement of
attorney’s fees).
7 Defendants withdraw their request for $198.85 for costs in connection with an April 30,
2015 motion hearing transcript—this invoice was erroneously submitted. See Dkt. 380-3 at 3
(Invoice No. 20152041, dated July 29, 2015).
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 13 of 17- 10 -
(D. Mass. Dec. 4, 2018). For that reason alone, Worlds’s motion to disallow fails, and Defendants
should be awarded their hearing transcript costs.
Moreover, the hearing transcripts are relevant to and necessary for Worlds’s currently
pending appeal. In its notice of appeal, Worlds indicates that it appeals, inter alia: (1) the Court’s
Markman order; and (2) the Court’s determination that the asserted claims were invalid as a matter
of law for claiming patent ineligible subject matter under 35 U.S.C. § 101. See Dkt. 366 (citing to
Dkts. 153, 358). The hearing transcripts for the Court’s Markman hearing and the Section 101
hearings relate directly to those issues. Accordingly, costs for those hearing transcripts should be
awarded. See ASIS Internet Servs. v. Optin Global, Inc., Civ. A. No. 05-5124 JCS, 2008 WL
5245931, at *3 (N.D. Cal. Dec. 17, 2008) (finding prevailing party was “entitled to the costs of
hearing transcripts because they are relevant to and necessary for the appeal” “[r]egardless of
whether the request for the transcript occurred before or after summary judgment.”).
4. Defendants’ Requests for Witness Costs Is Appropriate Under 28
U.S.C. § 1821 and § 1920.
Under 28 U.S.C. § 1821, Defendants seek per diem fees for deposition attendance for
Defendants’ six witnesses who Worlds insisted on deposing. Dkt. 379 at 2; Dkt. 380 ¶¶ 18-19.
Worlds suggests that, for Defendants to recover witness fees, the witness must either attend trial
or sit for a deposition related to the entry of judgment. See Dkt. 382 at 9-10. Worlds misstates the
law.
Pursuant to 28 U.S.C. § 1821(a), “a witness in attendance … before any person authorized
to take his deposition pursuant to any rule or order of a court of the United States, shall be paid the
fees and allowances provided by this section.” See also 28 U.S.C. § 1920(3) (“[f]ees and
disbursements for … witnesses” are recoverable). Witness fees for depositions do not need to be
related to the entry of judgment; instead, such fees must be “necessarily obtained for use in the
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 14 of 17- 11 -
case.” See Animal Hosp. of Nashua, Inc. v. Antech Diagnostics, No. 11-CV-448-LM, 2015 WL
13844702, at *3 (D.N.H. Jan. 5, 2015) (allowing recovery of witness fees that secured the
appearance of a witness at a deposition when the depositions were “necessarily obtained for use in
the case.”); see also Crawford Fitting Co. v. J. T. Gibbons, Inc., 482 U.S. 437, 441 (1987)
(permitting the recovery of witness fees). As explained above, it was Worlds that noticed and
insisted on the depositions for each of these witnesses in connection with this case.
Therefore, Defendants should be awarded costs for witness fees in the amount of $240.00.
IV. CONCLUSION
For the foregoing reasons, Defendants respectfully request that the Court deny Worlds’s
motion for disallowance of costs and grant Defendants’ request for taxable costs in the amount of
$20,317.87.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 15 of 17- 12 -
Dated: July 6, 2021 Respectfully submitted,
By: /s/Kevin S. Prussia
Kevin S. Prussia (BBO# 666813)
Kevin.Prussia@wilmerhale.com
Claire M. Specht (BBO# 687952)
Claire.Specht@wilmerhale.com
Scott Bertulli (BBO# 690958)
Scott.Bertulli@wilmerhale.com
WILMER CUTLER PICKERING HALE AND
DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
Sonal N. Mehta (pro hac vice)
Sonal.Mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE AND
DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Tel.: (650) 858-6000
Fax: (650) 858-6100
Attorneys for Defendants Activision Blizzard,
Inc., Blizzard Entertainment, Inc., and
Activision Publishing, Inc.
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 16 of 17- 13 -
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
this 6th day of July, 2021.
By: /s/ Kevin S. Prussia
Kevin S. Prussia
Case 1:12-cv-10576-DJC Document 383 Filed 07/06/21 Page 17 of 1
7/6 Pacer
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
DECLARATION OF KEVIN S. PRUSSIA IN SUPPORT OF DEFENDANTS’
RESPONSE TO PLAINTIFF’S MOTION FOR DISALLOWANCE OF
DEFENDANTS’ AMENDED BILL OF COSTS
I, Kevin S. Prussia, hereby declare:
1. I am a counsel with the law firm of Wilmer Cutler Pickering Hale and Dorr LLP,
counsel for Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing,
Inc. (collectively, “Defendants”) in the above-captioned litigation. I am licensed to practice law
in the Commonwealth of Massachusetts and am admitted to practice before this Court.
2. I submit this declaration in support of Defendants’ Response to Plaintiff’s Motion
for Disallowance of Defendants’ Amended Bill of Costs.
3. Attached hereto as Exhibit 1 is a true and correct copy of Acceleration Bay, LLC’s
website www.accelerationbay.com, as of February 3, 2020 as recorded on the Wayback Machine.
4. Attached hereto as Exhibit 2 is a true and correct copy of Plaintiff’s Notice of
Deposition of John Cash, dated October 27, 2015.
Case 1:12-cv-10576-DJC Document 384 Filed 07/06/21 Page 1 of 4- 2 -
5. Attached hereto as Exhibit 3 is a true and correct copy of Plaintiff’s Notice of
Deposition of Neil Hubbard, dated October 27, 2015.
6. Attached hereto as Exhibit 4 is a true and correct copy of Plaintiff’s Notice of
Deposition of Jon Bojorquez, dated October 30, 2020.
7. Attached hereto as Exhibit 5 is a true and correct copy of Plaintiff’s Notice of
Deposition of Mike Elliot, dated October 30, 2020.
8. Attached hereto as Exhibit 6 is a true and correct copy of Plaintiff’s Notice of
Deposition of Rob Kostich, dated October 30, 2020.
9. Attached hereto as Exhibit 7 is a true and correct copy of Plaintiff’s Notice of
Deposition of Pat Griffith, dated January 27, 2021.
10. Attached hereto as Exhibit 8 is a true and correct copy of correspondence dated
January 27, 2021, sent from counsel for Worlds to counsel for Defendants.
11. Attached hereto as Exhibit 9 is a true and correct copy of correspondence dated
February 4, 2021, sent from counsel for Worlds to counsel for Defendants.
12. Attached hereto as Exhibit 10 is a true and correct copy of Plaintiff’s Initial
Disclosures, dated August 17, 2012.
I declare under penalty of perjury that the foregoing is true and correct to the best of my
knowledge.
Case 1:12-cv-10576-DJC Document 384 Filed 07/06/21 Page 2 of 4- 3 -
Executed this 6th day of July, 2021, in Boston, Massachusetts.
/s/ Kevin S. Prussia
Kevin S. Prussia (BBO# 666813)
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
kevin.prussia@wilmerhale.com
Attorney for Activision Blizzard, Inc.,
Blizzard Entertainment, Inc., and
Activision Publishing, Inc.
Case 1:12-cv-10576-DJC Document 384 Filed 07/06/21 Page 3 of 4- 4 -
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
this 6th day of July, 2021.
By: /s/ Kevin S. Prussia
Kevin S. Prussia
Case 1:12-cv-10576-DJC Document 384 Filed 07/06/21 Page 4 of
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
DECLARATION OF CLAIRE M. SPECHT IN SUPPORT OF
DEFENDANTS’ BILL OF COSTS
I, Claire M. Specht, hereby declare:
1. I am a counsel with the law firm of Wilmer Cutler Pickering Hale and Dorr LLP,
counsel for Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing,
Inc. (collectively, “Defendants”) in the above-captioned litigation. I am licensed to practice law
in the Commonwealth of Massachusetts and am admitted to practice before this Court.
2. I submit this declaration in support of Defendants’ Bill of Costs, as Defendants are
the prevailing parties in this case. As set forth in the Bill of Costs, Defendants seek to recover
taxable costs from the Plaintiff, Worlds, Inc. (“Worlds” or “Plaintiff”).
3. On April 30, 2021, the Court entered judgment in favor of Defendants. Dkt. No.
359. The judgment was based on the Court’s ruling granting summary judgment with respect to
all asserted claims of the patents-in-suit patents based on invalidity for failure to satisfy 35 U.S.C.
§ 101. Dkt. Nos. 358, 359.
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 1 of 9- 2 -
4. Based on the ruling and the judgment, Defendants are now the prevailing parties
and are therefore entitled to recover a portion of their costs. See Fed. R. Civ. P. 54(d)(1)
(“[C]osts … should be allowed to the prevailing party.”); District of Massachusetts, Taxation of
Costs, Procedures for Filing Bill of Costs (“Under Fed. R. Civ. P. 54(d) and 28 U.S.C. § 1920, a
prevailing party may request the Courtroom Deputy Clerk to tax allowable costs in a civil action
as part of a judgment or decree.”).
5. In the following paragraphs, I itemize the taxable costs Defendants expended in
defending themselves against Plaintiff’s claims totaling $21,516.72:
A. Fees of the Clerk
6. “Fees of the clerk” are recoverable costs pursuant to 28 U.S.C. § 1920(1).
7. Defendants seek $1,000 in costs they incurred for enteringpro hac vice appearances
for the following attorneys:
Attorney Docket No. Receipt Number Fee
Jesse J. Jenner Dkt. No. 16 0101-3990093 $100
Gene W. Lee Dkt. No. 16 0101-3990093 $100
Christopher J. Harnett Dkt. No. 16 0101-3990093 $100
David S. Chun Dkt. No. 16 0101-3990093 $100
Brian P. Biddinger Dkt. No. 16 0101-3990093 $100
Matthew R. Clements Dkt. No. 16 0101-3990093 $100
Kathryn N. Hong Dkt. No. 43 0101-4229442 $100
Matthew J. Moffa Dkt. No. 110 0101-4686018 $100
Sharon Lee Dkt. No. 192 0101-5832576 $100
Sonal N. Mehta Dkt. No. 249 0101-8168292 $100
TOTAL $1,000
8. Attached as Exhibit A are true and correct copies of the receipts for these costs.
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 2 of 9- 3 -
B. Costs of Service of Process
9. Costs associated with service of subpoenas on third parties are also recoverable
under 28 U.S.C. § 1920(3). See Billings v. Cape Cod Child Dev. Program, Inc., 270 F. Supp. 2d
175, 178 (D. Mass. 2003) (“[T]he court finds appropriate the costs billed for the service of
subpoenas….”); Roggio v. Grasmuck, 18 F. Supp. 3d 49, 62 (D. Mass. 2014) (“Costs for
subpoenas of witnesses are taxable under 28 U.S.C. § 1920(3).”).
10. Defendants seek reimbursement of $7,147.23 associated with the service of
document and/or deposition subpoenas on the following third parties:
Third Party Relevance Date(s) of
Subpoena(s)
Costs
Paltalk, Inc. Worlds communicated with
Paltalk regarding the Patentsin-Suit
2021-01-27 $298
$198.16
Fortress Investment
Group, LLC
Worlds communicated with
Fortress regarding potential
recovery in the litigation
2021-01-27 $298
$157
$298
$198.16
Acceleration Bay,
LLC
Worlds communicated with
Acceleration Bay regarding
the Patents-in-Suit
2021-01-27 $513
$283.16
David Gobel Founder of Knowledge
Adventure Worlds
(predecessor to Worlds,
Inc.); had potential
information regarding
Worlds products from 1990s
2015-11-12 $314
$120
Philip H. Albert Prosecuting attorney that
signed declaration for the
parent patent application
2013-01-11 $366
General Patent
Corporation
Licensing agent to Worlds,
Inc. and manager of
Worlds’s patent portfolio
2015-11-12
2012-12-13
$280.25
$320
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 3 of 9- 4 -
Third Party Relevance Date(s) of
Subpoena(s)
Costs
David J. Leahy, Ph.D. Named inventor of the
asserted patents
2012-11-07 $366
Thomas Adler Named inventor of the
asserted patents
2013-01-11 $366
Kilpatrick Townsend
& Stockton
Law firm involved in the
prosecution of the asserted
patents
2013-01-11 $92.50
Daniel Tagliaferri Prosecution of the ‘690
patent
2013-01-11 $366
Neil Cohen Prosecution of the ’690 and
’558 patents
2012-12-13 $366
$320
$421
Jean-Marc
Zimmerman
Prosecution of the ’690
patent
2012-12-13 $280
Anatoly Weiser Prosecution of the ’558, ’856
and ’501 patents
2012-12-13 $606
$320
TOTAL $7,147.23
11. Attached as Exhibit B are true and correct copies of the invoices for these costs.
C. Deposition Materials and Hearing Transcripts
12. “Fees for printed or electronically recorded transcripts necessarily obtained for use
in the case” are recoverable costs pursuant to 28 U.S.C. § 1920(2).
13. Defendants seek $13,129.49 for reimbursement of costs they incurred for
deposition transcripts, deposition exhibits, and hearing transcripts. Courts, including the Federal
Circuit, have made clear that a prevailing party may recover these costs. See In re Ricoh Co.
Patent Litig., 661 F.3d 1361, 1369-1370 (Fed. Cir. 2011); eBay Inc. v. Kelora Sys., LLC, Nos. C
10–4947 CW (LB), C 11–1398 CW (LB), C 11–1548 CW (LB), 2013 WL 1402736, at *10 (N.D.
Cal. Apr. 5, 2013) (granting costs for depositions as “commonplace”). These costs do not include
fees from the videographer as outlined in this District’s guidance on taxable costs. See District
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 4 of 9- 5 -
of Massachusetts, Taxation of Costs, Procedures for Filing Bill of Costs at 3 (“Video depositions
are not taxable without prior permission of the Court.”).
14. Defendants seek costs for the transcripts and exhibits for the following depositions:
Deposition Relevance Date Costs
John Bojorquez Activision 30(b)(6)
designee regarding
technical topics
2021-02-17 $1,404.85
Ron Britvich Consultant to Worlds,
Inc. and former
employee of Worlds;
previously searched
for prior art to
invalidate the
Patents-in-Suit
2013-04-16 $1,612.80
George Cash Blizzard 30(b)(6)
designee regarding
technical topics
2015-11-05 $1,259.50
Michael Elliot Blizzard technical
witness
2021-02-04 $1,394.70
Patrick Griffith Activision technical
witness
2021-02-19 $1,294.30
Neal Hubbard Blizzard 30(b)(6)
designee regarding
marketing topics
2015-11-03 $909.20
Rob Kostich Activision and
Blizzard 30(b)(6)
designee regarding
business, financial,
marketing topics
2021-02-11 $1,538.60
Christopher Ryan CFO of Worlds, Inc.;
30(b)(6) designee
regarding financial
topics for Worlds
2021-02-12 $2,311.89
TOTAL $11,725.84
15. Attached as Exhibit C are true and correct copies of the corresponding invoices
(with highlighting of relevant costs). Defendants seek reimbursement for transcripts, exhibits,
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 5 of 9- 6 -
processing of exhibits, and shipping and handling.
16. Defendants also seek costs for the transcripts for the following hearings:
Transcript Date of Hearing Costs
Transcript of Markman hearing
before Hon. Denise J. Casper held
on 10/03/2014
2014-10-03 $688.50
Transcript of motion hearing before
Hon. Denise J. Casper held on
04/30/2015
2015-04-30 $198.85
Transcript of motion hearing before
Hon. Denise J. Casper held on
11/10/2015
2015-11-10 $194.00
Transcript of motion hearing before
Hon. Denise J. Casper held on
07/22/2020
2020-07-22 $213.40
Transcript of status conference
before Hon. Denise J. Casper held
on 04/16/2020
2020-04-16 $108.90
TOTAL $1,403.65
17. Attached as Exhibit D are true and correct copies of the corresponding invoices.
D. Witness Costs
18. Finally, “[f]ees and disbursements for … witnesses” are recoverable. 28 U.S.C.
§ 1920(3); see also 28 U.S.C. § 1821(b)-(d) (authorizing the recovery of witness attendance fee,
as well as travel and subsistence costs); Crawford Fitting Co. v. J. T. Gibbons, Inc., 482 U.S. 437,
441 (1987) (permitting the recovery of witness fees).
19. Defendants incurred the following costs for witness expenses for depositions,
$240.00, which is summarized below:
Witness Description Amount
John Bojorquez (Activision) 1-day attendance at deposition $40.00
George Cash (Blizzard) 1-day attendance at deposition $40.00
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 6 of 9- 7 -
Witness Description Amount
Michael Elliot (Blizzard) 1-day attendance at deposition $40.00
Neal Hubbard (Blizzard) 1-day attendance at deposition $40.00
Rob Kostich (Activision) 1-day attendance at deposition $40.00
Patrick Griffith (Activision) 1-day attendance at deposition $40.00
TOTAL $240.00
20. These costs reflect the per diem fees for deposition attendance specified by statute.
28 U.S.C. § 1821(b) (“A witness shall be paid an attendance fee of $40 per day for each day’s
attendance.”). As part of this Bill of Costs, Defendants are not seeking travel-related costs for
any witnesses.
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 7 of 9- 8 -
I declare under penalty of perjury that the foregoing is true and correct to the best of my
knowledge.
Executed this 14th day of June, 2021, in Boston, Massachusetts.
/s/ Claire M. Specht
Claire M. Specht (BBO# 687952)
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
claire.specht@wilmerhale.com
Attorney for Activision Blizzard, Inc.,
Blizzard Entertainment, Inc., and
Activision Publishing, Inc.
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 8 of 9- 9 -
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
this 14th day of June, 2021.
By: /s/ Claire M. Specht
Claire M. Specht
Case 1:12-cv-10576-DJC Document 378 Filed 06/14/21 Page 9 of
Pacer 6/16/2021 - Format is not very good - Total cost $21,516.72
AO 133 (Rev. 12/09) Bill of Costs
UNITED STATES DISTRICT COURT
for the
__________ District of __________
)
)
)
)
)
v. Case No.:
BILL OF COSTS
Judgment having been entered in the above entitled action on against , Date
the Clerk is requested to tax the following as costs:
Fees of the Clerk . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $
Fees for service of summons and subpoena ..............................................
Fees for printed or electronically recorded transcripts necessarily obtained for use in the case . . . . . .
Fees and disbursements for printing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Fees for witnesses (itemize on page two) ...................................................
Fees for exemplification and the costs of making copies of any materials where the copies are
necessarily obtained for use in the case. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Docket fees under 28 U.S.C. 1923 .....................................................
Costs as shown on Mandate of Court of Appeals . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
Compensation of court-appointed experts ...............................................
Compensation of interpreters and costs of special interpretation services under 28 U.S.C. 1828 .....
Other costs (please itemize) .............................................................
TOTAL $
SPECIAL NOTE: Attach to your bill an itemization and documentation for requested costs in all categories.
Declaration
I declare under penalty of perjury that the foregoing costs are correct and were necessarily incurred in this action and that the
services for which fees have been charged were actually and necessarily performed. A copy of this bill has been served on all parties
in the following manner:
u Electronic service u First class mail, postage prepaid
u Other:
s/ Attorney:
Name of Attorney:
For: Date:
Name of Claiming Party
Taxation of Costs
Costs are taxed in the amount of and included in the judgment.
By:
Clerk of Court Deputy Clerk Date
District of Massachusetts
Worlds, Inc.
1:12-cv-10576 (DJC)
Activision Blizzard, Inc., Blizzard Entertainment,
Inc. and Activision Publishing, Inc.
04/30/2021 Worlds, Inc.
1,000.00
7,147.23
13,129.49
240.00
21,516.72
?
/s/ Claire M. Specht
Claire M. Specht
Activision Blizzard, Inc., Blizzard Entertainment, Activision Publishing, Inc. 06/14/2021
Case 1:12-cv-10576-DJC Document 377 Filed 06/14/21 Page 1 of 2AO 133 (Rev. 12/09) Bill of Costs
UNITED STATES DISTRICT COURT
Witness Fees (computation, cf. 28 U.S.C. 1821 for statutory fees)
ATTENDANCE SUBSISTENCE MILEAGE
Total Cost
NAME , CITY AND STATE OF RESIDENCE Total
Cost
Total
Cost
Total
Cost
Each Witness
Days Days Miles
TOTAL
NOTICE
Section 1924, Title 28, U.S. Code (effective September 1, 1948) provides:
“Sec. 1924. Verification of bill of costs.”
“Before any bill of costs is taxed, the party claiming any item of cost or disbursement shall attach thereto an affidavit, made by himself or by
his duly authorized attorney or agent having knowledge of the facts, that such item is correct and has been necessarily incurred in the case and
that the services for which fees have been charged were actually and necessarily performed.”
See also Section 1920 of Title 28, which reads in part as follows:
“A bill of costs shall be filed in the case and, upon allowance, included in the judgment or decree.”
The Federal Rules of Civil Procedure contain the following provisions:
RULE 54(d)(1)
Costs Other than Attorneys’ Fees.
Unless a federal statute, these rules, or a court order provides otherwise, costs — other than attorney's fees — should be allowed to the
prevailing party. But costs against the United States, its officers, and its agencies may be imposed only to the extent allowed by law. The clerk
may tax costs on 14 day's notice. On motion served within the next 7 days, the court may review the clerk's action.
RULE 6
(d) Additional Time After Certain Kinds of Service.
When a party may or must act within a specified time after service and service is made under Rule5(b)(2)(C), (D), (E), or (F), 3 days are
added after the period would otherwise expire under Rule 6(a).
RULE 58(e)
Cost or Fee Awards:
Ordinarily, the entry of judgment may not be delayed, nor the time for appeal extended, in order to tax costs or award fees. But if a
timely motion for attorney's fees is made under Rule 54(d)(2), the court may act before a notice of appeal has been filed and become
effective to order that the motion have the same effect under Federal Rule of Appellate Procedure 4(a)(4) as a timely motion under Rule 59.
John Bojorquez (Activision), Studio City, California
(Remote Deposition) 1 40.00 $40.00
George Cash (Blizzard), Irvine, California
(Deposition) 1 40.00 $40.00
Mike Elliot (Bizzard), Tarbuco Canyon, California
(Remote Deposition) 1 40.00 $40.00
Neal Hubbard (Blizzard), Irvine, California
(Deposition) 1 40.00 $40.00
Rob Kostich (Activision), Santa Monica, California
(Remote Deposition) 1 40.00 $40.00
Patrick Griffth (Activision), Sherman Oaks,
California (Remote Desposition) 1 40.00 $40.00
$240.00
Case 1:12-cv-10576-DJC Document 377 Filed 06/14/21 Page 2 of
ATVI Requesting Attorney's fees
- 1 -
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
))
)
)
Civil Action No. 1:12-CV-10576 (DJC)
JURY TRIAL DEMANDED
*Oral Argument Requested*
DEFENDANTS’ MOTION DECLARING THAT WORLDS, INC. IS LIABLE FOR
ATTORNEY’S FEES UNDER 35 U.S.C. §285
Pursuant to 35 U.S.C. § 285 and Federal Rule of Civil Procedure 54(d)(2), Defendants
Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc.
(collectively, “Defendants”), respectfully submit this motion for an award of their attorney’s fees
from 2020 to present. Specifically, consistent with Defendants’ Motion to Extend the Deadline
for Motion for Attorney’s Fees and Nontaxable Costs and to Bifurcate the Briefing Schedule filed
on May 12, 2021 (Dkts. 360, 361), Defendants seek a determination that Plaintiff Worlds, Inc.
(“Worlds”) is liable for attorney’s fees.1
In support of this motion, Defendants are filing contemporaneously herewith: (1)
Defendants’ Memorandum in Support of Their Motion Declaring That Worlds, Inc. Is Liable for
1
If the Court determines that Worlds is liable for attorney’s fees, Defendants will thereafter
submit the amount of any fees on a schedule to be set by the Court.
Case 1:12-cv-10576-DJC Document 367 Filed 05/28/21 Page 1 of 4- 2 -
Attorney’s Fees Under 35 U.S.C. § 285; and (2) the Declaration of Claire M. Specht in Support of
Defendants’ Motion and accompanying Exhibits 1-29.
For the reasons set forth in Defendants’ Memorandum in Support of Their Motion
Declaring That Worlds, Inc. Is Liable for Attorney’s Fees Under 35 U.S.C. § 285, Defendants
respectfully request that the Court grant Defendants’ motion and enter an order finding this case
exceptional under 35 U.S.C. § 285 and declaring that Worlds is liable for Defendants’ attorney’s
fees.
REQUEST FOR ORAL ARGUMENT
Pursuant to Local Rule 7.1(d), Defendants respectfully request oral argument on the matter
to aid in resolution of the motion.
Case 1:12-cv-10576-DJC Document 367 Filed 05/28/21 Page 2 of 4- 3 -
Dated: May 28, 2021 Respectfully submitted,
By: /s/ Sonal N. Mehta
Sonal N. Mehta (pro hac vice)
Sonal.Mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE AND
DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Tel.: (650) 858-6000
Fax: (650) 858-6100
Kevin S. Prussia (BBO# 666813)
Kevin.Prussia@wilmerhale.com
Claire M. Specht (BBO# 687952)
Claire.Specht@wilmerhale.com
Scott Bertulli (BBO# 690958)
Scott.Bertulli@wilmerhale.com
WILMER CUTLER PICKERING HALE AND
DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
Attorneys for Defendants Activision Blizzard,
Inc., Blizzard Entertainment, Inc., and
Activision Publishing, Inc.
Case 1:12-cv-10576-DJC Document 367 Filed 05/28/21 Page 3 of 4- 4 -
CERTIFICATE OF CONFERENCE
I certify that, in accordance with Local Rule 7.1(a)(2), counsel for Plaintiff and counsel for
Defendants conferred in good faith regarding this motion. Counsel for Plaintiff opposes this
motion.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF)
this 28th day of May, 2021.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
Case 1:12-cv-10576-DJC Document 367 Filed 05/28/21 Page 4 of
120
FORM 7. Appeal Information Sheet
FEDERAL CIRCUIT APPEAL INFORMATION SHEET
___ United States District Court for the ____________________________________
___ United States Court of International Trade
___ United States Court of Federal Claims
___ United States Court of Appeals for Veterans Claims
Type of case: ________________________________________
_____________________ v. _____________________
(List all parties. Use an asterisk to indicate dismissed or withdrawn parties. Use a separate sheet
if needed. Explain any discrepancy with the caption used on the judgment, order, or opinion.)
Docket No. _____________________ Date of Judgment or Order __________________
Cross or related appeal? __________ Date of Notice of Appeal __________________
Appellant is: _____ Plaintiff _____Defendant _____Other (explain)_________________
FEES: Court of Appeals docket fee paid? _____Yes _____No
U.S. Appeal? _____Yes _____No
In forma pauperis? _____Yes _____No
Is this matter under seal? _____Yes _____No
COUNSEL: (List name, firm, address, and telephone of lead counsel for each party. Indicate
party represented. Use separate sheet if needed.)
____________________________ _______________________________________________
____________________________ _______________________________________________
____________________________ _______________________________________________
____________________________ _______________________________________________
COURT REPORTER: (Name and telephone): _______________________________________
IMPORTANT: Attach a copy of the judgment or order appealed from and any supporting
opinion or memorandum. Forward together with a copy of the notice of appeal and certified
docket entries.
Clerk of Court
United States Court of Appeals for the Federal Circuit
717 Madison Place, NW
Washington, DC 20439
Form 7
? District of Massachusetts
Patent Infringement
Worlds, Inc . Activision Blizzard, Inc. et al
12cv10576-DJC April 30, 2021
May 28, 2021
?
?
?
?
?
Wayne M. Helge
Davidson Berquist Jackson Gowdey LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
(571) 765-7700
Email: whelge@davidsonberquist.com
Christopher J. Harnett
Maynard Cooper & Gale, LLP
551 Fifth Avenue, Suite 2000
New York, NY 10176
646-609-9287
Email: charnett@maynardcooper.com
Debra Joyce (joycedebra@gmail.com)
Case 1:12-cv-10576-DJC Document 370 Filed 05/28/21 Page 1 of
Appeal Filed on Pacer -
1
THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
PLAINTIFF WORLDS, INC’S NOTICE OF APPEAL
Notice is hereby given that Plaintiff Worlds, Inc. hereby appeals to the United States
Court of Appeals for the Federal Circuit from the Judgment entered by the Court on April 30,
2021 (Dkt. # 359), the Court’s Memorandum and Order of the same date (Dkt. # 358), the
Electronic Order entered by the Court on March 4, 2021 (Dkt. # 345), the Court’s Memorandum
and Order on claim construction, entered on June 26, 2015 (Dkt. # 153), the Court’s
Memorandum and Order entered on March 13, 2014 (Dkt. # 124), and all other interlocutory
orders entered in this action.
Dated: May 28, 2021 Respectfully submitted,
/s/ Wayne M. Helge
Wayne M. Helge (pro hac vice)
whelge@dbjg.com
Aldo Noto (pro hac vice)
anoto@dbjg.com
Alan A.Wright (pro hac vice)
awright@dbjg.com
Gregory A. Krauss (pro hac vice)
Case 1:12-cv-10576-DJC Document 366 Filed 05/28/21 Page 1 of 32
GKrauss@dbjg.com
James T. Wilson (pro hac vice)
jwilson@dbjg.com
Donald L. Jackson (pro hac vice)
djackson@dbjg.com
Walter D. Davis, Jr. (pro hac vice)
wdavis@dbjg.com
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500
McLean, VA 22102
T: (571) 765-7700
Max L. Tribble (pro hac vice)
mtribble@susmangodfrey.com
Chanler Langham (pro hac vice)
clangham@susmangodfrey.com
Ryan Caughey (pro hac vice)
rcaughey@susmangodfrey.com
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
T: (713) 651-9366
Joel R. Leeman (BBO # 292070)
jleeman@sunsteinlaw.com
SUNSTEIN KANN MURPHY &
TIMBERS
125 Summer Street
Boston, MA 02110-1618
T: (617) 443-9292
ATTORNEYS FOR PLAINTIFF,
WORLDS, INC.
Case 1:12-cv-10576-DJC Document 366 Filed 05/28/21 Page 2 of 3CERTIFICATE OF SERVICE
I hereby certify that this document filed through the ECF systems will be sent electronically
to the registered participants as identified on the Notice of Electronic Filing on the above date.
/s/ Wayne M. Helge
Wayne M. Helge
Case 1:12-cv-10576-DJC Document 366 Filed 05/28/21 Page 3 of
AO 120 (Rev. 08/10)
TO: Mail Stop 8
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
REPORT ON THE
FILING OR DETERMINATION OF AN
ACTION REGARDING A PATENT OR
TRADEMARK
In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
filed in the U.S. District Court on the following
G Trademarks or G Patents. ( G the patent action involves 35 U.S.C. § 292.):
DOCKET NO. DATE FILED U.S. DISTRICT COURT
PLAINTIFF DEFENDANT
PATENT OR
TRADEMARK NO.
DATE OF PATENT
OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BY
G Amendment G Answer G Cross Bill G Other Pleading
PATENT OR
TRADEMARK NO.
DATE OF PATENT
OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT
CLERK (BY) DEPUTY CLERK DATE
Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
for the District of Delaware
?
9/20/2019 for the District of Delaware
WORLDS INC. LINDEN RESEARCH, INC., d/b/a LINDEN LAB
US 7,181,690 B1 2/20/2007 Worlds Inc.
Dismissed - see attached
John A. Cerino /s/ Mark D. Buckson, Jr. 5/17/2021
C
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE
WORLDS INC.,
Plaintiff,
v.
LINDEN RESEARCH, INC., d/b/a
LINDEN LAB,
Defendant.
)
)
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No. 19-cv-1773-MN
JOINT STIPULATION AND ORDER OF DISMISSAL
WHEREAS, Plaintiff Worlds Inc. (“Worlds”) and Defendant Linden Research, Inc., d/b/a
Linden Lab (“Linden”) have resolved Worlds’ claims for relief against Linden asserted in this
case.
NOW, THEREFORE, Worlds and Linden, through their attorneys of record, request this
Court to dismiss Worlds’ claims against Linden with prejudice, and with all attorneys’ fees, costs
of court, and expenses borne by the party incurring the same.
Dated: May 14, 2021
RATNERPRESTIA
By: /s/ Jeffrey B. Bove
POTTER ANDERSON & CORROON LLP
By: /s/ Bindu A. Palapura
Jeffrey B. Bove (#998)
Karen R. Poppel (#5373)
1007 Orange Street, Suite 205
Wilmington, Delaware 19801
Tel: (302) 778-2500
jbove@ratnerprestia.com
kpoppel@ratnerprestia.com
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Stephanie E. O’Byrne (#4446)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: (203) 984-6000
C
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 TO STAY CASE
Plaintiff Worlds Inc. (“Worlds”) and Defendant Microsoft Corporation (“Microsoft”)
(collectively “Parties”) provide notice that on April 30, 2021 Judge Casper with the U.S. District
Court for the District of Massachusetts issued a summary judgment order finding all of the asserted
claims of U.S. Patent No. 8,082,501 at issue in the instant case invalid under 35 U.S.C. § 101.
Worlds Inc. v. Activision Blizzard Inc., No. 12-10576-DJC (Dkt. 358) (Ex. 1). The District of
Massachusetts entered final judgment the same day. See id. (Dkt. 359) (Ex. 2). Worlds intends to
appeal the summary judgment order and final judgment.
Accordingly, the parties respectfully request that the Court stay this case until completion
of the appeals process in World, Inc. v. Activision Blizzard, Inc., et al, Case No. 1:12-cv-10576 (D.
Mass.). Accordingly, the requested stay is not for delay but only to allow for an orderly resolution
of this lawsuit.
Granting this joint motion will preserve the Court’s and parties’ resources by suspending
all district court activity on the ’501 patent until resolution of the above appeal proceedings.
Case 6:20-cv-00872-ADA Document 40 Filed 05/07/21 Page 1 of 3DATED: May 7, 2021
Of Counsel:
DAVIDSON BERQUIST JACKSON & GOWDEY,
LLP
ETHERIDGE LAW GROUP, PLLC
Wayne M. Helge
Alan A.Wright
Donald L. Jackson
James T. Wilson
8300 Greensboro Drive, Suite 500
McLean, VA 22102
Tel: (571) 765-7700
whelge@dbjg.com
awright@dbjg.com
djackson@dbjg.com
jwilson@dbjg.com
/s/ Ryan S. Loveless .
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
Attorneys for Plaintiff Worlds, Inc.
FAEGRE, DRINKER BIDDLE &
REATH, LLP
/s/ Kristin Stoll-DeBell (with permission)
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
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
Case 6:20-cv-00872-ADA Document 40 Filed 05/07/21 Page 2 of 3CERTIFICATE 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 May
7, 2021.
/s/ Ryan S. Loveless
Ryan S. Loveless
Case 6:20-cv-00872-ADA Document 40 Filed 05/07/21 Page 3 of
Worlds vs Linden
Delaware District 1:19-cv-01773
Settlement filed 4/8 - case stayed to 5/10/2021
Pacer Document - Microsoft replay to claim construction - posted 4/30/2021
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
WORLDS INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.
§
§
§
§
§
§
§
§
§
§
§
§
CIVIL ACTION 6:20-cv-00872-ADA
DEFENDANT MICROSOFT CORPORATION’S
RESPONSIVE CLAIM CONSTRUCTION BRIEF
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 1 of 26i
TABLE OF CONTENTS
I. INTRODUCTION .............................................................................................................. 1
II. THE ’501 PATENT ............................................................................................................ 2
III. BACKGROUND ON RELATED MATTERS ................................................................... 4
IV. THE PROPER CONSTRUCTION OF THE DISPUTED TERMS ................................... 5
A. “PARTICIPANT CONDITION” .............................................................................. 5
1) Microsoft’s Footnote is supported by Case Law and Necessary to
Resolve a Disputed Issue of Claim Scope .................................................. 7
2) As Judge Casper Found in her Order, the Plain Language of Claim
1 Requires that the Server Use the Participant Condition to Decide
What Position Information the Client Receives .......................................... 7
3) Intrinsic Evidence Supports the Finding that Claim 1 Requires that
the Server Use the Participant Condition to Decide What Position
Information is Received by the Client ...................................................... 10
4) Plaintiff Narrowed the Scope of Claim 1 to Exclude an Alternate
Embodiment during Prosecution............................................................... 12
B. “THREE-DIMENSIONAL [AVATAR]” ............................................................... 15
1) The term “Three-Dimensional” Needs Construction ................................ 15
2) The Intrinsic Evidence Supports Microsoft’s Proposed
Construction .............................................................................................. 16
3) The Extrinsic Evidence is Also Consistent with the Intrinsic
Evidence .................................................................................................... 18
4) Plaintiff’s Attempt to Exclude Quasi-3D Avatars from the Scope
of the Asserted Claims Would Exclude the Only Embodiment in
the Specification........................................................................................ 19
C. “CUSTOMIZING . . . AN [AVATAR]” ................................................................ 19
V. CONCLUSION ................................................................................................................. 20
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 2 of 26ii
TABLE OF AUTHORITIES
Page(s)
FEDERAL CASES
Ancora Techs., Inc. v. LG Elecs. Inc.
2020 WL 4825716 (W.D. Tex. Aug. 19, 2020) .........................................................................6
Baran v. Med. Device Techs., Inc.,
616 F.3d 1309 (Fed. Cir. 2010)................................................................................................13
Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc.,
749 F.3d 1349 (Fed. Cir. 2014)................................................................................................19
Bungie, Inc. v. Worlds Inc.,
IPR2015-01319, Paper 42 (PTAB Dec. 6, 2016) .......................................................................5
Bungie, Inc. v. Worlds Inc.,
IPR2015-01319, Paper 62 (PTAB Jan. 14, 2020) ......................................................................5
ContentGuard Holdings, Inc. v. Amazon.com, Inc.,
2015 WL 4944514 (E.D. Tex. Aug. 19, 2015) ..........................................................................7
Kyocera Wireless Corp. v. Int'l Trade Comm'n,
545 F.3d 1340 (Fed. Cir. 2008)..................................................................................................8
Methode Elecs., Inc. v. DPH-DAS LLC,
2012 WL 1559770 (E.D. Mich. Apr. 30, 2012) .......................................................................13
NobelBiz, Inc. v. Glob. Connect, L.L.C.,
701 F. App'x 994 (Fed. Cir. 2017) .........................................................................................6, 7
O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................7
Phillips v. AWH Corp.,
415 F.3d 1303 (Fed. Cir. 2005)......................................................................................1, 16, 18
PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
815 F.3d 747 (Fed. Cir. 2016)............................................................................................12, 13
SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd.,
983 F.3d 1367 (Fed. Cir. 2021)................................................................................................12
Source Vagabond Sys. Ltd. v. Hydrapak, Inc.,
753 F.3d 1291 (Fed. Cir. 2014)..................................................................................................8
Worlds Inc. v. Bungie, Inc.,
903 F.3d 1237 (Fed. Cir. 2018)..................................................................................................5
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 3 of 26iii
FEDERAL STATUTES
35 U.S.C. § 315(b) ...........................................................................................................................5
OTHER AUTHORITIES
Microsoft Press Computer Dictionary (Microsoft Press, ©1991) ................................................19
Microsoft Press Computer Dictionary Third Edition (Microsoft Press, ©1997) ..........................19
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 4 of 261
I. INTRODUCTION
Plaintiff Worlds, Inc. (“Plaintiff”) alleges that Microsoft Corporation (“Microsoft”)
directly infringed four method claims of U.S. Patent No. 8,082,501 (“the ’501 patent”). (Dkt. 38
at 1).1
The terms in dispute are: “participant condition,” “three-dimensional [avatar],” and
“customizing . . . an [avatar].”
As explained below, Microsoft proposes constructions for the disputed terms that are
consistent with how a person of ordinary skill in the art (a “POSITA”) would have interpreted
the claim terms in 1995. These constructions are rooted in the intrinsic evidence, including the
language of the claims themselves as read in light of the patent specification and admissions
made by Plaintiff during the prosecution histories. Thus, Microsoft adheres to the Federal
Circuit’s view that “[t]he construction that stays true to the claim language and most naturally
aligns with the patent’s description of the invention will be, in the end, the correct construction.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).
Plaintiff’s approach to claim construction, on the other hand, is contrary to law and
inconsistent with the intrinsic evidence. In most instances, rather than interpret the claim
language based on the specification, Plaintiff seeks to avoid resolution of the parties’ disputes
and takes the position that no construction is necessary. Although Plaintiff asserts that it is
relying on the unspecified “ordinary meaning” of these terms, Plaintiff’s position is simply an
effort to ignore the plain language of the entire claim and the disclosure of the patent, to read the
claim in a vacuum, and to preserve the ability to argue claim construction to the jury. Plaintiff
further illogically asserts that a jury will understand the plain and ordinary meaning of these
1 Microsoft denies that it directly infringed any of the asserted claims (see Microsoft’s Motion to
Dismiss, Dkt. 21) and further denies that it made, used, sold, and/or offered for sale many of the
accused versions of Minecraft (for example, the Java editions and certain other editions).
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 5 of 262
terms in 2022 despite the fact that: 1) the terms relate to complex technology; 2) they should be
interpreted in light of what a POSITA would have understood in 1995; and 3) the relevant
technology has changed drastically in the last 27 years.
II. THE ’501 PATENT
The ’501 patent has a priority date of November 13, 1995. It is directed to a client-server
network system for enabling multiple users to interact with each other in a virtual world. The
patent explains that “[a] client-server network is a network where one or more servers are
coupled to one or more clients over a communications channel.” ’501 patent at 1:29-31 (Dkt. 38-
1). “The term ‘client’ generally refers to a client machine, system and/or process, but is also used
to refer to the client and the user controlling the client.” Id. at 3:15-21.
The ’501 patent explains that “[t]he present invention provides a highly scalable
architecture for a three-dimensional graphical, multi-user, interactive virtual world system.” Id.
at Abstract. Each user is represented visually in the virtual space by a graphical object called an
“avatar” and interacts with a client system that “is networked to a virtual world server.” Id. at
3:14-15. Each user is free to move her avatar around in the virtual world. Id. at 3:39-44. The
server process keeps track of every avatar’s position and movement in the virtual world. Id. As
an avatar moves in the virtual space, its client device sends the server its updated position
information. Id. The server maintains a database of position information for each avatar and
sends updates on position information of the avatars to the client devices so that they can see and
interact with other users’ avatars in the virtual world. Id.
Asserted Claim 1. Each of the four asserted claims are method claims that depend from
claim 1. Claim 1 has a preamble and four distinct elements that relate to different aspects:
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 6 of 263
(color highlighting and commentary added, italicized emphasis added to the disputed terms).
Avatar Customization. The ’501 patent teaches that a user may begin a session in the
virtual world either by selecting a predefined avatar provided from a fixed avatar database of the
client device or by creating a custom avatar. Id. at 6:59-61; 7:11-13.
Server Filtering. The ’501 patent states that for “the virtual world [to be] scalable to a
large number of clients, the virtual world server must be much more discriminating as to what
data is provided to each client[].” Id. at 3:51-53. The patent refers to this need for the server to be
selective as “crowd control.” Id. at 13:12-13 (emphasis added). According to the ’501 patent,
“‘crowd control’ … is needed in some cases to ensure that neither client 60 nor user A get[s]
overwhelmed by the crowds of avatars likely to occur in a popular virtual world.” Id. at 5:39-41.
To allow a user to interact effectively with a large number of other users in a virtual space, the
server must limit how much information about the other users it sends to each client. At the time
of the effective filing date of the ’501 patent in 1995, limiting the amount of data sent by the
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 7 of 264
server to each client was necessary because of the constraints on network capacity and the
processing power of client computers at that time. Id. at 1:56-2:34; 5:46-50. Thus, if the server
sent data about a large number of avatars to a client, the client might be “overwhelmed” because
it might not be able to handle processing such a large amount of data. The ’501 patent purports to
solve this problem of “crowd control” by providing server filters to limit the number of other
user avatars that the server will send to each client. The ’501 patent describes two kinds of server
filters: (1) a server filter based on a server-set condition; and (2) an additional server filter based
on client-set conditions. For example, the server maintains a variable, N, which sets the
maximum number of other avatars A will see. Id. at 5:42-44. A client also maintains a variable,
N’, which indicates the maximum number of avatars that client wants to see and/or hear. The
client can send the value of N’ to the server. Id. at 5:44-46. Once the number of avatars to be sent
to the client is determined, server determines which N (or N’) avatars are closest to A’s avatar –
these are referred to as A’s “neighboring avatars.” Id. at 5:54-59. The server notifies a client of
position and orientation information for only those “neighboring” avatars. Id. at 14:28-36.
Client Display Filtering. In addition to the server filtering of avatars sent to the client by
the server, the ’501 patent also discloses that each client may further filter the number of avatars
that it displays. In other words, the client may not display every avatar it receives from the
server. For example, the client device displays the virtual world from the viewpoint of the avatar
of that client/user. Id. at 3:30-34. Avatars outside of the client’s viewpoint may not be displayed.
III. BACKGROUND ON RELATED MATTERS
Plaintiff has filed another lawsuit based on the ’501 patent and its family members
against Activision Blizzard, Inc. in the U.S. District Court for the District of Massachusetts (the
“Activision case”). In 2015, Judge Casper issued a Markman Order in the Activision case and
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 8 of 265
construed, among other terms, the scope of “participant condition” in the ’501 patent. Worlds,
Inc. v. Activision Blizzard, Inc., Memorandum and Order, No. 1:12-cv-10576-DJC (Dkt. 153)
(“Activision Markman Order”) (Dkt. 38-2 herein).
Additionally, the ’501 patent and several of its related patents were involved in IPR
proceedings filed by Bungie, Inc. in 2015 (the “IPR Proceedings”). The PTAB issued a final
written decision finding all the ’501 patent claims asserted in this case unpatentable. Bungie, Inc.
v. Worlds Inc., IPR2015-01319, Paper 42 (PTAB Dec. 6, 2016) (Dkt. 22-2). On appeal, the
Federal Circuit found that the PTAB erred in its real-party-in-interest analysis and vacated the
final written decision on that basis alone. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1248 (Fed.
Cir. 2018). On remand, the PTAB found that Bungie failed to meet its burden to show that the
petition was not time-barred under 35 U.S.C. § 315(b) based on the complaint filed against
Activision, a purported real-party-in-interest to Bungie’s IPR, and the PTAB terminated the
proceedings regarding the ’501 patent. Bungie, Inc. v. Worlds Inc., IPR2015-01319, Paper 62 at
45 (PTAB Jan. 14, 2020) (Dkt. 22-1).
IV. THE PROPER CONSTRUCTION OF THE DISPUTED TERMS
A. “PARTICIPANT CONDITION”
The term “participant condition” appears in the second element of asserted claim 1 of
the ’501 patent, which states in full:
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;
(Dkt. 38-1) (color highlighting and emphasis added). The parties agree that the Court should
instruct the jury that “participant condition” means “a condition set by the client,” which is the
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 9 of 266
same construction reached by Judge Casper in the Activision case. Activision Markman Order at
14-18 (Dkt. 38-2). The parties disagree, however, concerning the proper scope of this
construction within the context of the rest of the language of claim element . (Dkt. 38 at 4).
Importantly, Judge Casper’s order specifically found that claim 1 requires that the server process
use the participant condition “to determine whether or not avatar position information will be
sent [from the server] to the client.” (Dkt. 38-2 at 17) (emphasis added). However, Plaintiff
disputes that this is a requirement of claim 1. In contrast, Microsoft asserts that both Judge
Casper’s claim construction and the reasoning underlying it are correct and should govern the
arguments made by the parties in this case. As such, much like the Court did in Ancora Techs.,
Inc. v. LG Elecs. Inc. last year, Microsoft requests that the Court clarify the scope of this
language in the form of a footnote that states:
This construction is based on the construction and reasons supporting the
construction set forth in the Worlds v. Activision Markman Order, No. 12-10576-
DJC (Dkt. 153) at pp. 14-18, including that the server uses the participant condition
to determine whether or not avatar position information will be sent to the client.
No. 1-20-CV-00034-ADA, 2020 WL 4825716, at *12 (W.D. Tex. Aug. 19, 2020) (Ex. 1). In
Ancora, the Court rejected defendant’s proposed construction but noted that it could not grant the
term its plain and ordinary meaning as advocated by plaintiff because “both parties dispute the
entirety of the term.” Id. Instead, the Court provided a claim construction for the jury and
attached “a footnote not for the jury” that further resolved the claim scope dispute between the
parties. Id. (emphasis added). The same procedure is appropriate in this case.
Thus, the issue of whether or not claim 1 requires that the participant condition be used to
determine which avatar information will be sent to the client is a dispute as to claim scope that
must be resolved by the Court. See, e.g., NobelBiz, Inc. v. Glob. Connect, L.L.C., No. 2016-1104,
2016-1105, 701 F. App'x 994, 997 (Fed. Cir. 2017) (“The district court must provide a
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 10 of 267
construction because ‘the parties disputed not the meaning of the words themselves, but the
scope that should be encompassed by th[e] claim language.’”) (citing O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008)).
1) Microsoft’s Footnote is supported by Case Law and Necessary to
Resolve a Disputed Issue of Claim Scope
Contrary to Plaintiff’s assertion, Microsoft is not advocating for different constructions
for the parties and the jury. Rather, the purpose of Microsoft’s footnote is to resolve a dispute
between the parties as to claim scope, which dispute should not be heard by the jury. O2 Micro,
521 F.3d at 1360. Much like a ruling on a motion in limine, the footnote will govern what
arguments the parties are allowed to make to the jury regarding claim scope. See, e.g.,
ContentGuard Holdings, Inc. v. Amazon.com, Inc., No. 2:13–CV–1112–JRG, 2015 WL
4944514, at *4 (E.D. Tex. Aug. 19, 2015) (Ex. 2) (entering an order barring parties and their
experts from asserting any positions contrary to court's claim constructions or equivalent to a
claim construction position the court considered and rejected). Without the footnote, Plaintiff
will argue that the claims do not require the server to use the participant condition to decide what
avatar information to send—and Microsoft will argue that use of the participant condition is
required to decide what avatar position to send. The question of claim scope will be
impermissibly left to the jury. Instead, the Court should resolve this claim scope dispute now and
require Plaintiff to use the agreed construction of “participant condition” within the context of the
plain meaning of the claim element . Further, resolving this dispute now will save resources
by requiring the parties to focus discovery and expert reports on the correct claim scope.
2) As Judge Casper Found in her Order, the Plain Language of Claim 1
Requires that the Server Use the Participant Condition to Decide
What Position Information the Client Receives
“[A] claim construction analysis must begin and remain centered on the claim language
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itself, for that is the language the patentee has chosen to particularly point[ ] out and distinctly
claim[ ] the subject matter which the patentee regards as his invention.” Source Vagabond Sys.
Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (citations omitted). While certain
phrases may be at the center of the claim construction debate, the context of the surrounding
words of the entire claim also must be considered in determining the meaning of those disputed
phrases. See Kyocera Wireless Corp. v. Int'l Trade Comm'n, 545 F.3d 1340, 1347 (Fed. Cir.
2008) (citations omitted).
Thus, the term “participant condition” must be read within the context of the entire
element , which is focused on deciding which avatar’s position information the server will
send to the client. More specifically, the first clause of element (highlighted dark green)
requires that the client receive, from a server, “position information associated with fewer than
all of the other user avatars” (emphasis added). The first clause is modified by a “wherein”
clause (highlighted light green) that further requires that “at least some,” but not necessarily all,
of the other user avatars for which the client does not receive position information “fail to satisfy
a participant condition imposed on avatars displayable on a client device display of the client
device.” Thus, the “participant condition” is an additional limitation—beyond whatever serverset conditions the server uses to decide which avatars to send (and not send) to the client—that is
also used by the server to decide which avatars’ position information should be sent (or not sent)
to the client. In other words, the server uses two conditions, or filters, to decide which avatars’
position information should be received by the client.
Further, claim element should be read in conjunction with the preamble, which states:
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:
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 12 of 269
. . .
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;
(Dkt. 38-1) (emphasis added). The “at least some avatars” refers back to the “fewer than all of
the other user avatars” in the first clause of element , which refers back to the emphasized
definition of avatar in the preamble (shown above). As such, the plain language of claim 1
requires that some, but not necessarily all, of the other user avatars that are not sent to the client
are those other user avatars that failed to satisfy the participant condition. According to claim 1,
the server process is the thing that sends some, but not all, avatar position information to the
client device. Therefore, the server must be the thing that decides which avatar position
information will be sent and not be sent because it fails to satisfy the participant condition or for
some other reason.
Judge Casper interpreted the plain meaning of element of claim 1 in the same way:
All of the claims of the Patents-in-Suit require that the client receive position
information of “fewer than all” or “less than all” of the other users avatars.
Specifically, the claims of the ’501 and ’998 patents require that the client device
receive “position information associated with fewer than all of the other user
avatars.” While the claims of the ’690, ’558 and ’856 patents require the client to
receive positions for “less than all” of the other users. The claims of the ’501 and
’998 patents, at issue here, then further require that “at least some” of the
avatars for which the client does not receive position information “fail to
satisfy” “a condition” or “a participant condition.” Claim 1 of ’501 details, for
example, that “the client device” receives “position information” from the “server
process” and that “the client device does not receive position information of at least
some avatars that fail to satisfy a ‘participant condition.’” Claim 1 does not
explicitly indicate whether “the server process” or the “client device” imposes the
condition, and the specification does suggest that the server has the ability to filter
avatars in order to determine the other avatars a user will see. Nevertheless, read
in context, the “at least some” language appears to represent an additional
limitation – beyond the selection of the N avatars by the server – to determine
whether or not avatar position information will be sent to the client.
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 13 of 2610
Activision Markman Order at 17 (Dkt. 38-2) (internal citations omitted) (emphasis added). Thus,
like Judge Casper, this Court should find that the “participant condition” when read in context of
the plain language of the rest of claim 1 requires that the server use the “participant condition” to
“determine whether or not avatar position information will be sent to the client.” Id.
3) Intrinsic Evidence Supports the Finding that Claim 1 Requires that
the Server Use the Participant Condition to Decide What Position
Information is Received by the Client
With regard to sending position information for “less than all” of the other users’ avatars,
the specification first discloses that the server selects up to “N” avatars to send to the client based
on proximity. The “N variable” is a condition set by the server. ’501 patent at 5:35-54 (Dkt. 38-
1). However, the parties agree that the “participant condition” is a “condition set by the client.”
(emphasis added). The specification discusses how the client also sets condition(s) that the client
sends to the server for the server to use in selecting the avatars to send to that particular client.
Id. at 5:42-59. It explains that different clients have different needs, which is why one client may
want to set different conditions for how many avatars it receives than another client might set. Id.
The client sets a value of N’, which is less than N, and sends the value of N’ to the server:
• “Client 60 also maintains a variable, N’, which might be less than N, which
indicates the maximum number of avatars client 60 wants to see and/or hear. The
value of N’ can be sent by client 60 to server 61. One reason for setting N’ less
than N is where client 60 is executed by a computer with less computing power
than an average machine and tracking N avatars would make processing and
rendering of the virtual world too slow. . . . If there are less than N avatars in a
room . . . and client 60 has not limited the view to less than N avatars, A will
see all the avatars in the room. Those avatars are thus “neighboring” which means
that client 60 will display them.” Id. at 5:42-59 (emphasis added).
• “Generally, the limit set by server 61 of N avatars and the limit set by client
60 of N’ avatars control how many avatars A sees. If server 61 sets a very high
value for N, then the limit set by client 60 is the only controlling factor.” Id. at
5:60-6:5 (emphasis added).
• “In a typical situation, the number of avatars in a room is too large to be handled
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 14 of 2611
by client 60 and displayed on display 122. The maximum number of avatars, N, is
determined by server 61, but might also be determined for each client.” Id. at
13:12-18 (emphasis added).
Judge Casper relied on this embodiment to support her claim construction:
Indeed, the specification clearly contemplates that the client “‘might have a way to
filter out avatars on other variables in addition to proximity.’” . . . For example, the
Defendants point out that it is “the client” that “may set a value of N’, which is
less than N, and send that value to the server” and that it is “the client” that
“may send specific user IDs to the server to identify specific avatars that the
client wants to block (so that the client does not receive any position
information for such avatars) because those avatars are ‘unfriendly.’”
Activision Markman Order at 16-17 (Dkt. 38-2) (internal citations omitted) (emphasis
added).
The “conditions” contemplated in the ’501 and ’998 patents then must be distinct
from the server conditions described in the specification and are properly
construed to be consistent with the user or client conditions contemplated by the
specification, including user ID and “other variables in addition to proximity.”
Id. at 18 (emphasis added).
The embodiment of the specification relied on by Judge Casper and claimed in claim 1
can be graphically shown in the following example:
• In this example, if the server-setting N = 4, the
server sends to Client A information for four other
users (i.e., “less than all”) of the total other user
avatars in the virtual space.
• The server will send to Client A position
information for 4 users total who are closest in
proximity to the Client A.
• However, if the Client A wishes to block “Other
User 1” and “Other User 2,” the Client A can set a
“participant condition” blocking these users, which
condition is sent to and used by the server.
• The server will not send to Client A position
information for Other Users 1 and 2 (even though
they are closer in proximity to Client A than Other
Users 5 and 6), and Other Users 7-100.
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 15 of 2612
• The server does not send information about Other Users 1 and 2 because they have “failed
to satisfy a participant condition” and does not send information about Other Users 7-100
because they are not among the four users who are in closest proximity to the Client.
• Other Users 1 and 2 have “failed to satisfy a participant condition” and constitute “at least
some” of the users for which the Client did not receive position information.
As such, the specification supports Microsoft’s position that the scope of claim 1 requires
that the “participant condition,” which is a condition set by the client, be used by the server to
determine whether or not avatar position information will be sent to the client.
4) Plaintiff Narrowed the Scope of Claim 1 to Exclude an Alternate
Embodiment during Prosecution
Plaintiff may argue that an alternate embodiment in the specification teaches away from
Microsoft’s proposed construction of the scope of claim 1 with regard to the participant
condition. In the alternate embodiment, the client-set variable N’ (e.g., a participant condition), is
used by the client, not the server, to decide what avatars to display. ’501 patent at 6:6-24 (Dkt.
38-1). This is in contrast to the claimed embodiment, discussed above, where the client-set
variable N’ is sent from the client to the server for the server to use to determine which avatars to
send to the client. Id. at 5:42-6:5; 13:12-18. This Court should find that the asserted claims cover
the claimed embodiment to the exclusion of the alternate embodiment.
The Federal Circuit has repeatedly held that language of the claim controls, and the
proper claim construction need not encompass all disclosed embodiments in the
specification. See, e.g., SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983
F.3d 1367, 1379 (Fed. Cir. 2021) (“Specifically, and most importantly for this case, we have
repeatedly explained that ‘[a]lthough reluctant to exclude an embodiment, this court must not
allow the disclosed embodiment to ‘outweigh the language of the claim, especially when the
court's construction is supported by the intrinsic evidence.’’”); PPC Broadband, Inc. v. Corning
Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016) (rejecting the proposition that
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 16 of 2613
“each and every claim ought to be interpreted to cover each and every embodiment”); Baran v.
Med. Device Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that each
claim read on every embodiment.”). “If the words of the claims limit the claim to
one embodiment to the exclusion of another embodiment, such is how the claims must be
construed.” Methode Elecs., Inc. v. DPH-DAS LLC, No. 09-CV-13078, 2012 WL 1559770, at *9
(E.D. Mich. Apr. 30, 2012). (Ex. 3).
In this case, the plain language of claim 1 makes clear that the participant condition is
used by the server to decide what avatars the client receives because this term is part of server
filtering element , and this term is not part of the client filtering element [c] that relates to the
client deciding what to display:
(Dkt. 38-1) (color highlighting and commentary added).
In fact, the alternate embodiment was excluded from the scope of claim 1 by amendment
during prosecution to attempt to distinguish the cited prior art. As originally drafted, claim 1 was
arguably broad enough to cover both the claimed embodiment and the alternate embodiment.
The participant condition limitation was not originally part of claim 1 (numbered claim 4 during
prosecution). The participant condition limitation was added to element —not element [c]—
by examiner’s amendment to obtain allowance of the claims over the “closest prior art” patents:
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 17 of 2614
’501 patent File History, 11/4/2011 Notice of Allowance at 2-3 (Ex. 4). Indeed, in the Reasons
for Allowance, the Examiner noted:
The closest prior arts, Shiio and Suzuki disclose a conventional animate
characteristics representing operators in virtual conference; either singularly or in
combination, fail to anticipate or render the above underline limitation obvious.
Id. at 5 (emphasis added).
By adding a participant condition (which is set by the client) to the claim element that
relates to server filtering of avatars the server sends to the client, Plaintiff effectively narrowed
the scope of claim 1 so that it does not cover the alternate embodiment. As such, claim 1’s plain
language, as well as the prosecution history, limits claim 1 to the embodiment where the server
uses the client-set (i.e., participant) condition to determine what avatar information is received by
the client to the exclusion of the alternate embodiment that uses a client-set condition to decide
what avatars to display.
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 18 of 2615
B. “THREE-DIMENSIONAL [AVATAR]”
The term “three-dimensional” is used to describe the avatars in the preamble of 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:
(Dkt. 38-1) (emphasis added). The parties agree that “avatar” should mean “a graphical
representation of a user.” However, the parties dispute the construction for “three-dimensional.”
Plaintiff essentially asserts that “three-dimensional” needs no construction as Plaintiff’s proposed
construction “in three-dimensional form” re-uses the disputed term. Microsoft asserts that “threedimensional” should be construed to mean “appears to have length, width, and depth.”
1) The term “Three-Dimensional” Needs Construction
This Court should construe “three-dimensional” because (1) the parties dispute the scope
of this term; and (2) a lay jury in 2022 will not understand the scope of this term from the
viewpoint of a POSITA in the context of the ’501 patent, which dates back to 1995.
More specifically, Plaintiff appears to dispute that “three-dimensional” covers a
technology used commonly in early 1990 video games referred to as “quasi-3D” or “2.5D” even
though quasi-3D is the same technology described as the preferred (and only) embodiment of the
’501 patent for rendering three-dimensional avatars (as will be detailed below).
By way of technological background, in the 1990s quasi-3D was often used as an
alternative to “true 3D” for rendering objects in video games. See Declaration of Garry Kitchen
at ¶¶ 54-62 (“Kitchen Decl.”) (Ex. 5). Quasi-3D uses graphical techniques, such as viewing
angles, to make one or more 2D images appear to the player to have depth (e.g., three
dimensions). Id. at ¶¶ 59-62. “True 3D” is a different rendering method that starts with a fully
3D, wireframe computer model of polygons that is ultimately, through a number of complicated
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 19 of 2616
steps, rendered with a 3D renderer onto a two-dimensional surface. Id. at ¶¶ 47-53, 57-58. It
cannot be disputed that true 3D rendering is not described in the ’501 patent.
Further, the term “three-dimensional” will be confusing to a jury sitting in 2022, who will
be tasked with applying the meaning of this term to one of ordinary skill in art as it was
understood in 1995 in the context of virtual worlds and video games displayed on a twodimensional display. Phillips, 415 F.3d at 1313 (claim construction aims to determine the
“meaning that the term would have to a person of ordinary skill in the art in question at the time
of the invention, i.e., as of the effective filing date of the patent application.” (emphasis added)).
This task is made all the more difficult by the fact that three-dimensional rendering technology
has changed drastically in last 27 years. Kitchen Decl. at ¶¶ 47-62 (Ex. 5).
If this Court declines to construe “three-dimensional,” the jury will be left to decide,
among other things, whether quasi-3D avatars in the prior art meet the “three-dimensional
avatar” claim language. This will require the parties to argue about the meaning of this term in
light of the specification, which describes only quasi-3D avatars, and expert testimony as to how
“three-dimensional” objects were understood more than 25 years ago. In essence, the jury will be
left to construe the claims.
2) The Intrinsic Evidence Supports Microsoft’s Proposed Construction
The claimed “three-dimensional avatars” are displayed on a two-dimensional display.
Indeed, the fourth element [d] of claim 1 requires “displaying, on the client device display, the
displayable set of other user avatars . . . .” Thus, the displayed three-dimensional avatars as
claimed do not actually have depth, they just appear to have depth. As such, Microsoft’s
proposed definition of “three-dimensional” is consistent with the plain language of claim 1.
Contrary to Plaintiff’s Opening Brief (Dkt. 38 at 11), the ’501 patent inventors did find it
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 20 of 2617
necessary to explain what was meant by “three-dimensional avatar.” The ’501 patent
specification describes a three-dimensional avatar as series of two-dimensional panels that are
rotated about an axis so that the avatar appears different from different angles:
• “The orientation is needed for rendering because the avatar images are threedimensional and look different (in most cases) from different angles. . . . In a simple
embodiment, each avatar image comprises M panels (where M is greater than two
with eight being a suitable number) and the i-th panel is the view of the avatar at an
angle of 360*i/M degrees . . . .” ’501 patent at 6:13-22 (Dkt. 38-1).
• “The avatars in fixed avatar image database 71 or custom avatar images database
108 contain entries which are used to render the avatars. A typical entry in the
database comprises N two-dimensional panels, where the i-th panel is the view of
the avatar from an angle of 360*i/N degrees. Each entry includes a tag used to
specify the avatar.” Id. at 7:39-44 (emphasis added).
• FIG. 5 shows the avatar 2D panels rotated to various angles. Id. at 15:59-60.
As noted by Plaintiff’s expert in the IPR Proceedings, using 2D shapes to create the appearance
of 3D objects is called “quasi-3-D.” Bungie Inc. v. Worlds, Inc., 5/17/2016 Deposition of Mark
D. Pesce at 204:17-205:20 (Ex. 6). Thus, the only embodiment described in the ’501 patent for
three dimensional avatars is quasi-3D. See also Kitchen Decl. at ¶¶ 63-64, 66 (Ex. 5).
Further, contrary to its position now, Plaintiff agreed with Microsoft’s proposed
construction in arguments it made to the PTAB, which are part of the file history for the ’501
patent. During the hearing in the IPR Proceedings, Plaintiff’s counsel defined “threedimensional” as creating an “appearance” of depth and three dimensions:
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 21 of 2618
JUDGE EASTHOM: Well, even if you have two [two-dimensional panels], do you
have to display both of them?
MR. HELGE: Well, Your Honor, you display them based on rotation, based on
your position relative to that other avatar.
JUDGE EASTHOM: Correct, I understand that, but that's how you get your 3-D,
but if you only display one then you don’t have 3-D, right?
MR. HELGE: I think it depends on how the panel is portrayed, Your Honor. . . .
But, I mean, if you had a very flat fish and you could see one side and you could
walk around and see the other side, they may not have had an avatar to cover the
front or the back. I don't know. But I don't think that precludes the possibility
of that fish or penny or something thin still from being in a 3-D appearance or
being portrayed as 3-D, portraying some sort of depth through arrangement
of the graphics.
. . . .
JUDGE CHUNG: Do you have an interpretation of three-dimensional?
MR. HELGE: Your Honor, I think the way that the patent talks about threedimensional would be my interpretation. So, for example, when they say each
avatar is a three-dimensional avatar, I would accept that to be whatever threedimensional meant at that time.
In the previous slide here, slide 21, avatar images that are three-dimensional look
different in most cases from different angles. I think what they are talking about
here is you can create a three-dimensional appearance by having different
views around the avatar, and as you walk around you get different views. I don't
believe that these usages of three-dimensional are inconsistent with probably what
was being used at the time.
Bungie, Inc. v. Worlds, Inc., Record of Oral Hearing United States Patent and Trademark Office
at 141-144 (P.T.A.B. Sept. 12, 2016) (Ex. 7) (emphasis added).
As such, the proper construction for the term “three-dimensional [avatar]” in the context
of the intrinsic evidence, is an avatar that “appears to have length, width, and depth.”
3) The Extrinsic Evidence is Also Consistent with the Intrinsic Evidence
The Court may also consider extrinsic evidence in claim construction – including
dictionaries, treatises, and expert testimony. Phillips, 415 F.3d at 1317.
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 22 of 2619
Although the specification does not expressly specify that the three dimensions are
length, width, and depth, this was commonly understood by a POSITA in the 1990s. Indeed, two
computer dictionaries from the 1990s explain this understanding:
• “3D graphic: any graphical image that depicts one or more objects in three
dimensions–height, width, and depth. A 3-D graphic is rendered on a twodimensional medium; the third dimension, depth, is indicated by means of
perspective and by techniques such as shading or gradient use of color.” Microsoft
Press Computer Dictionary at 1 (Microsoft Press, ©1991) (Ex. 8) (emphasis added).
• “3-D: Short for three-dimensional. Of, pertaining to, or being an object or image
having or appearing to have all three spatial dimensions (length, width, and
depth).” Microsoft Press Computer Dictionary Third Edition at 4 (Microsoft Press,
©1997) (Ex. 9) (emphasis added).
Likewise, Microsoft Expert Garry Kitchen agrees that one of ordinary skill in the art in
1995 would have understood that the term “three-dimensional [avatar]” to mean an avatar that
“appears to have length, width and depth.” Kitchen Decl. at ¶¶ 35-46, 65 (Ex. 5). Such avatars
could have been created using a number of rendering methods, including quasi-3D. Id. at 65-66.
4) Plaintiff’s Attempt to Exclude Quasi-3D Avatars from the Scope of
the Asserted Claims Would Exclude the Only Embodiment in the
Specification
As detailed above, the ’501 patent specification describes only one rendering technique
for three-dimensional avatars – using a series of 2D panels to create the appearance of three
dimensions – which is otherwise known as quasi-3D (or 2.5D). As such, the scope of the claimed
“three-dimensional avatars” must be construed to cover quasi-3D avatars or it would exclude the
only embodiment described in the specification. Such a construction is rarely, if ever, correct.
See, e.g., Braintree Lab’ys, Inc. v. Novel Lab’ys, Inc., 749 F.3d 1349, 1356 (Fed. Cir. 2014).
C. “CUSTOMIZING . . . AN [AVATAR]”
The term “customizing . . . an avatar” appears in the first element [a] of claim 1:
[a] customizing, using a processor of a client device, an avatar in response to
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 23 of 2620
input by the first user;
Worlds proposes that this term be construed to mean “generating and storing … a custom avatar
image.” (Dkt. 38 at 9). The parties’ dispute relates to the meaning of the term “customizing.”
Microsoft proposes “customizing” means: “generating an avatar that is not a predefined avatar
provided to the user.”
The ’501 patent explains that when a client starts a virtual world session, the user can
select an avatar from the fixed avatar database 71 or create a custom avatar:
In operation, client 60 starts a virtual world session with user A selecting an avatar
from fixed avatar image database 71 or generating a custom avatar image. In
practice, custom avatar image database 108 might be combined with fixed avatar
image database 71 into a modifiable avatar image database. In either case, user A
selects an avatar image and a pointer to the selected image is stored in current avatar
position register 114.
’501 patent at 6:59-66 (Dkt. 38-1). It further explains that the avatars in the fixed avatar database
71 (i.e., not the custom avatars) comprise “bitmaps used to render various predefined avatars
provided with the client system.” Id. at 7:11-13 (emphasis added). Thus a custom avatar is
anything other than a predefined avatar provided by the client device.
There are many ways to customize an avatar, so it makes more sense to define a custom
avatar by what it is not – it is not something that is already defined/created and merely provided
for selection by the user on the client device. Indeed, Plaintiff does not appear to dispute that
selecting a predefined avatar provided by the client device for use in the virtual space is not
“customizing . . . an avatar.” This is what the specification says and, thus, this is how this term
should be construed by the Court.
V. CONCLUSION
For the foregoing reasons, Microsoft respectfully requests that the Court adopt its
proposed constructions and reject those proposed by Plaintiff.
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 24 of 2621
Dated: April 30, 2021 Respectfully submitted,
FAEGRE DRINKER BIDDLE & REATH LLP
/s/ Kirstin Stoll-DeBell
Kirstin Stoll-DeBell (Pro Hac Vice)
1144 15th Street, Suite 3400
Denver, CO 80202
Kirstin.StollDebell@faegredrinker.com
Tel: (303) 607-3500
Carrie A. Beyer (Pro Hac Vice)
191 N. Wacker Dr., Suite 3700
Chicago, IL 60606
Carrie.Beyer@faegredrinker.com
Tel: (312) 569-1000
Bethany N. Mihalik (Pro Hac Vice)
1500 K Street NW, Suite 1100
Washington, DC 20005
Bethany.Mihalik@faegredrinker.com
Tel: (202) 842-8800
Kirsten L. Elfstrand (Pro Hac Vice)
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
Kirsten.Elfstrand@faegredrinker.com
Tel: (612) 766-7000
SHELTON COBURN LLP
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
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 25 of 26CERTIFICATE OF SERVICE
I certify that on April 30, 2021, I electronically filed the foregoing with the Clerk of
Court using the CM/ECF system, which will send notification of such filing to all counsel
of record.
/s/ Kirstin Stoll-DeBell
Kirstin Stoll-DeBell
Case 6:20-cv-00872-ADA Document 39 Filed 04/30/21 Page 26 of 2
Pacer Document -
Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 1 of 19
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_________________________________________
)
WORLDS, INC.,
Plaintiff
v.
Civil Action No. 12-10576-DJC
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
_________________________________________
MEMORANDUM AND ORDER
CASPER, J. April 30, 2021 I. Introduction
Plaintiff Worlds, Inc., (“Worlds”) alleges that Defendants Activision Blizzard, Inc.,
Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Activision”) infringe
United States Patents Nos. 7,181,690 (“‘690”), 7,493,558 (“‘558”), 7,945,856 (“‘856”), 8,082,501 (“‘501”) and 8,145,998 (“‘998”) (collectively, the “Patents-In-Suit”). Activision has moved for
summary judgment seeking a ruling that the remaining claims of the Patents-In-Suit at issue are invalid as a matter of law. D. 272. For the following reasons, the Court ALLOWS Activision’s motion.
II. Factual Background
The following material facts are based upon Activision’s Statement of Material Facts, D. 177, Worlds’ Statement of Material Facts, D. 185, and/or the documents referenced in same and are undisputed. 1
Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 2 of 19
A. Patents-In-Suit
At this juncture, Worlds presses that Activision infringes the following twenty-one claims
of the Patents-In-Suit: ‘690 claims 4, 8, 13 and 16; ‘558 claims 5 and 7; ‘856 claim 1; ‘501 claims
1-8, 10, 12 and 14-16; and ‘998 claim 18. D. 269 at 2; D. 283 at 10. As Worlds has explained,
the Patents-In-Suit resolve bandwidth issues with multiplayer games through “multi-criteria
filtering of avatar position and state information, but at the client side and the server side,” i.e.,
“crowd control.” D. 183 at 5. The remaining claims at issue achieve crowd control by some form
of filtering of information, D. 183 at 8, but in slightly different ways: i.e., by “fewer than all” in
the ‘856 patent; a “maximum number” in the ‘690 patent and ‘558 patent; and by “condition” in the ‘501 patent and the ‘998 patent. D. 273 at 6.
U.S. Patent No. 7,181,690 (“the’690 patent”)
The ‘690 patent, “a system and method for enabling users to interact in a virtual space,”
was filed on August 3, 2000 and issued on February 20, 2007. D. 275 ¶ 1; D. 274-1 at 2. It
provides a “highly scalable architecture for a three-dimensional, graphical, multi-user, interactive
virtual world system.” Id. So that a user’s view “can be updated to reflect the motion of the remote
user’s avatars, motion, information is transmitted to a central server process which provides
positions updates to client processes for neighbors of the user at that client process.” Id. “The
client process also uses an environment database to determine which background objects to render as well as to limit the movement of the user’s avatar.” Id.
Claims 4, 8, 13 and 16 of the ‘690 patent are currently at issue. Claim 4 (incorporating
the method of claim 1 which is a “method for enabling a first user to interact with other users in a
virtual space”) involves determining the maximum number of the other users’ avatars to be
displayed by comparing the actual number to the maximum number of other users’ avatars to be
2
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displayed. D. 274-01 at 13. Claim 8 (incorporating the method of claim 6 which is a “method for
enabling a plurality of users to interact in a virtual space”) also involves a maximum number of
avatars by comparing the actual number of avatars that are not associated with the client process
based on the positions transmitted by the server process to the maximum number of avatars that
can be displayed. D. 274-1 at 13. Claim 13 (incorporating the software program of claim 11)
provides instructions for determining the other users’ avatars to be displayed by comparing the
actual number of the other users’ avatars (from the received positions) to the maximum number of
the other users’ avatars to be displayed. D. 274-1 at 14. Claim 16 (incorporating the software
program of claim 15) provides instructions for determining which avatars to be displayed from
comparing the determination of the actual number of avatars that are not associated with the client
process based on the positions transmitted by the server process to the maximum number of avatars that can be displayed. D. 274-1 at 14.
U.S. Patent No. 7,493,558 ( “the ‘558 patent ”)
The ‘558 patent, a “system and method for enabling users to interact in a virtual space,”
was filed on November 2, 2006 and issued on February 17, 2009. D. 275 ¶ 22; D. 274-2 at 1.
Worlds continues to assert claims 5 and 7 of the ‘558 patent in this litigation. Similar to the claims
in the ‘690 patent, these claims achieve crowd control by filtering through a maximum number.
Claim 5 (incorporates the machine-readable medium of claim 40) provides that the avatars to be
displayed is determined by comparing “an actual number of avatars in the set associated said each
client process based on the positions transmitted by the server process” to “a maximum number of
avatars that can be displayed to the user associated with said each client process.” D. 274-2 at 14.
Claim 7 (incorporates the computer readable medium of claim 6) determines the avatars to be
displayed by comparing “an actual number of avatars that are not associated with the client process
3
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based on the positions transmitted by the server process” with “a maximum number of avatars that can be displayed.” D. 274-2 at 14.
U.S. Patent No. 7,945,856 ( “the ‘856 patent ”)
The ‘856 patent, a “system and method for enabling users to interact in a virtual space.”
was filed on January 13, 2009 and issued on May 17, 2011. D. 275 ¶ 36; D. 274-3 at 1. This
patent serves to achieve crowd control by filtering information by “fewer than all” methods.
Worlds presses claim 1 of the ‘856 patent. Claim 1 is a “method for enabling a first user to interact
with second users in a virtual space . . . , the method comprising: (a) receiving by the first client
process from the server process received positions of selected second avatars; and (b) determining,
from the received positions, a set of the second avatars that are to be displayed to the first user,
wherein the first client process receives positions of fewer than all of the second avatars. D. 274- 3 at 24.
U.S. Patent No. 8,082, 501 ( “the ‘501 patent ”)
The ‘501 patent, a “system and method for enabling users to interact in a virtual space,”
was filed on March 19, 2009 and issued on December 20, 2011. D. 275 ¶ 52; D. 274-4 at 1. This
patent also achieves crowd control through filtering information by a condition or conditions. Worlds asserts claims 1-8, 10, 12, and 14-16 of the ‘501 patent.
Claim 1-8 concern a “method for enabling a first user to interact with other users in a virtual
space, . . ., the method comprising the steps” that vary with each claim. D. 274-4 at 23. In claim
one, the steps involve customizing “an avatar in response to input by the first user,” receiving
“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
4
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displayable on a client device display of the client device; determining, . . . a displayable set of the
other user avatars associated with the client device displayed; and displaying, . . . the displayable
set of the other user avatars associated with the client device display.” Id. Claims 2-8 and 10 add or alter the conditions of the method in Claim 1. Id.
Claim 12 is a “client device for enabling a first user to interact with other users in a virtual
space” and is comprised of “a memory storing instructions” and “a processor programmed using
the instructions” for various conditions for “determin[ing] a set of the other users’ avatars
displayable on a screen associated with the client device.” Id. at 23. Claim 14 is an “article of
manufacture comprising at least one memory storing computer code for enabling a first user to
interact with other users in a virtual space, . . . the computer code comprising instructions for
conditions for customizing, receiving, determining and then displaying the other user avatars.” Id.
Claims 15 and 16 incorporate the article of manufacture in Claim 14 and add or alter the conditions for displaying the other user avatars. Id.
U.S. Patent No. 8,145,998 ( “the ‘998 patent ”)
The ‘998 patent, a “system and method for enabling users to interact in a virtual space, was
filed on March 19, 2009 and issued on March 27, 2012. D. 275 ¶ 92; D. 274-5 at 1. Similar to
claims in the ‘501 patent, the claims in this patent achieve crowd control through filtering
information by conditions. Worlds asserts Claim 18 here. D. 283 at 10. Claim 18 is a “system
for displaying interactions in a virtual world among a local user and a plurality of remote users,
comprising a database . . .; a memory storing instructions and a processor programmed using
instructions to receive position information [based on certain conditions], receive orientation
information [based on certain conditions], generate on a graphic display a rendering of a
perspective view of the virtual world in three dimensions [based on certain conditions], and change
5
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in three dimensions the perspective view of the rendering of the graphic display of the virtual world in response to user input.” D. 274-5 at 22-23.
B. Inter Partes Review before the PTAB
In May and June 2015, a third party, Bungie, Inc., filed a series of IPR petitions challenging
the validity of the asserted claims of the Patents-In-Suit under 35 U.S.C. § 102 and 103. The Patent
Trial and Appeal Board (“PTAB”) held six IPRs covering all forty claims asserted in this lawsuit
before the stay, issuing final written decisions in all six proceedings. The PTAB determined that
34 of the claims were unpatentable: claim 1 of the ‘856 patent, claims 1-3, 5-7, 10-12, 14, 15, 17
and 19 of the ‘690 patent, claims 4, 6, 8 and 9 of the ‘558 patent, claims 1, 18 and 20 of the ‘998 patent, and claims 1-8, 10, 12, 14-16 of the ‘501 patent. D. 273 at 8-9.
The PTAB determined that the petitioner did not demonstrate by a preponderance of
evidence that claims 4, 8, 13 and 16 of the ‘690 patent and claims 5 and 7 of the ‘558 patent were
invalid based on the evidence and arguments presented in the proceedings. Id. at 9. Worlds
appealed the PTAB’s decisions regarding the ‘856 patent (IPR2015-01264), the ‘501 patent
(IPR2015-01319) and the ‘998 patent (IPR2015-01321). In Worlds Inc. v. Bungie, Inc., 903 F.3d
1237 (Fed. Cir. 2018), the Federal Circuit vacated and remanded these final written decisions on
procedural grounds, and without addressing the PTAB’s substantive findings. Id. On September
7, 2018, the Federal Circuit vacated and remanded Final Written Decisions in IPR2015-01264
(related to ‘856 patent), IPR2015-01319 (related to ‘501 patent) and IPR2015-01321 (related to
‘998 patent) back to the PTAB. D. 283 at 15 (citing Worlds, 903 F.3d at 1237). On January 14,
2020, the PTAB issued a Termination Vacating Institutions and Dismissing Proceedings on
Remand in IPR2015-01264 (related to ‘856 patent), IPT2015-01319 (related to ‘501 patent) and IPR2015-01321 (related to ‘998 patent). Id.
6
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1. PTAB findings
The PTAB’s IPR decision may be relied upon as persuasive authority before this Court.
Ultratec, Inc. v. Sorenson Comms., Inc. , No 14-cv-66-jdp, 2015 WL 5330284, at *14 (W.D. Wis.
Sept. 11, 2015) (noting that the court was “not bound by the PTAB decision, but its reasoning is
persuasive”); DSS Tech. Mgmt., Inc. v. Apple, Inc., No. 14-cv-05330-HSG, 2015 WL 1967878,
at *4 (N.D. Cal. May 1, 2015) (observing that “PTAB's invalidity analyses ‘would likely prove
helpful to this Court,’ whether or not the standard applied is identical to the one this Court must
apply in the litigation.”) (quoting Black Hills Media, LLC v. Pioneer Electronics (USA) Inc. , No.
CV 14-00471 SJO (PJWx), 2014 WL 4638170, at *6 (C.D. Cal. May 8, 2014)); Black Hills, 2014
WL 4638170, at *6 (noting that the “Court may also derive benefit from the PTAB's claim
construction for the patents under review” and that “[w]hile the PTAB interprets claim terms using
the ‘broadest reasonable construction,’ 37 C.F.R. § 42.100(b), its analysis would likely prove
helpful to this Court, no matter its final determination”); CANVS Corp. v. United States , 118 Fed.
Cl. 587, 593 (2014) (observing that “even if [certain claims] were to survive PTAB review, the
PTAB's final decision sustaining these claims would contain analysis that would be helpful to the
court”). Accordingly, although not bound by its findings or rulings, this Court may consider the
PTAB findings as persuasive authority in determining whether the Patents-In-Suit are patent eligible.
With nineteen of the forty original asserted claims having been fully adjudicated, Worlds
is asserting the remaining twenty-one claims in this suit: claim 1 of the ‘856 patent, claims 4, 8,
13 and 16 of the ‘690 patent, claims 5 and 7 of the ‘558 patent, claims 1-8, 10, 12 and 14-16 of the
‘501 patent and claim 18 of the ‘998 patent. D. 269 at 2. Although now vacated, the substance of
the PTAB’s prior rulings serves to support the Court’s analysis below that the client-side and
7
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server-side filtering of position information is not inventive. D. 274-7 (PTAB’s Final Written
Decision on the ‘856 patent); D. 274-8 (PTAB’s Final Written Decision on the ‘501 patent); D. 274-9 (PTAB’s Final Written Decision on the ‘998 patent).
C. Relevant Procedural History
On March 30, 2012, Worlds initiated this action. D. 1. The Court allowed Defendants’
motion for summary judgment as to invalidity, D. 83, concluding that the Patents-In-Suit were not
entitled to claim priority on November 13, 1995, the filing date of Worlds’ Provisional
Application. D. 124. Worlds has pressed the remaining infringement claims as to infringement
from the issuance of the certificates of correction by the PTO. D. 127 at 2. After a Markman
hearing, the Court constructed disputed claim terms in an Order issued June 26, 2015. D. 153.
The parties then exchanged updated infringement and invalidity contentions. D. 160, 164. The
Court issued a Scheduling Order on September 16, 2015, adopting the pretrial schedule proposed
by the parties. D. 181. On December 16, 2015, the parties jointly moved to stay this proceeding
pending resolution of the IPR petitions before the PTAB. D. 198. The Court allowed that motion
and issued a stay and ordered periodic status updates. D. 201. Over the course of the next few
years, while the IPR proceedings were ongoing, the parties filed periodic status reports and
requests to extend the stay, which the Court allowed. See D. 201 to 235. At the request of Worlds
seeking a status conference, D. 239, and after briefing from the parties regarding the status of the
matter, the Court held a status conference on April 16, 2020 and then set a further schedule for this
case, including a deadline by which Activision could file the now pending motion. D. 262, 264.
On May 19, 2020, Activision filed this motion for summary judgment that the remaining patent
claims are invalid under 35 U.S.C § 101. D. 272. The Court heard arguments and took the matter under advisement. D. 286.
8
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III. Standard of Review
A court will grant a moving party’s motion for summary judgment when there is no genuine
dispute of material fact and the moving party is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A dispute is genuine if “the evidence about the fact is such that a reasonable jury
could resolve the point in favor of the nonmoving party,” Vélez –Rivera v. Agosto –Alicea, 437
F.3d 145, 150 (1st Cir. 2006) (quoting United States v. One Parcel of Real Prop., 960 F.2d 200,
204 (1st Cir. 1992)) (internal quotation marks omitted), and a fact is material if it is “one that might
affect the outcome of the suit under the governing law.” Id. (quoting Morris v. Gov ’t Dev. Bank
of P.R., 27 F.3d 746, 748 (1st Cir. 1994)) (internal quotation marks omitted). In resolving a motion
for summary judgment, the Court scrutinizes the record in the light most favorable to the summary
judgment opponent and draws all reasonable inferences to that party’s advantage. Alliance of Auto. Mfrs. v. Gwadosky, 430 F.3d 30, 34 (1st Cir. 2005).
An issued patent is presumed valid. 35 U.S.C. § 282. This “statutory presumption of
validity” applies when a party challenges a patent under 35 U.S.C. § 101. CLS Bank Intern. V.
Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir. 2013). “[T]he burden is on the party
challenging the validity of a patent to show that it is invalid by clear and convincing evidence.”
Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002); see Budde
v. Harley-Davidson, Inc. , 250 F.3d 1369, 1376 (Fed. Cir. 2001). Consequently, “a moving party
seeking to invalidate a patent at summary judgment must submit such clear and convincing
evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly Co. v. Barr Labs.,
Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). When facts associated with a patent invalidity are not in
dispute, the court determines “whether summary judgment of invalidity is correct by applying the
law to the undisputed facts.” Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1257 (Fed. Cir.
9
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2012) (citing Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1366 (Fed. Cir. 2011)). For the
reasons stated below, the Court concludes, on this undisputed record, that the remaining patent claims are invalid as a matter of law under §101.
IV. Discussion
A. Patent Eligibility Under 35 U.S.C. § 101
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Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 16 of 19
1
This is true of all of the remaining claims. Claim 1 of the ‘856 patent filters position
information for “fewer than all” of the avatars, D. 274-3 at 24. Like claim 4 of the ‘690 patent, the remaining claims of the ‘558 patent are directed to filtering information at a maximum value. D. 274-2 at 14. The claims in the ‘501 patent and the ‘998 patent achieve the filtering by a set of conditions that governs what position information the client receives. D. 274-4 at 23 (‘501 patent); D. 274-5 at 22-23 (‘998 patent). The use of “fewer than all” or “conditions” for the filtering in these claims, however, does not make the claims any less of an abstract idea than the claim 4 of the ‘690 claim as discussed above.
16
Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 17 of 19
17
Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 18 of 19
2
The ruling as in Bascom, 827 F.3d at 1350, does not warrant another result here. There,
the Federal Circuit ruled at step 2 of the Mayo/Alice analysis that the “installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user” provided the necessary, inventive concept. Id. That is not the case here. The method outlined here, as represented by claim 4 of the ‘690 patent, cannot be said to be as specific. Particularly, claim 4 provides for a method performed by the client process associated with the first user that receives a position of less than all of the other users, determines “a maximum number of the other users’ avatars to be displayed,” and then compares “the actual number to the maximum number to determine which of the other users’ avatars are to be displayed.” D. 274-1. While the “filtering” of the maximum number of other users’ avatars to be displayed involves the client process associated with the first user, no language in the claim suggests that this is done through any sort of “customizable filtering features specific to each end user,” but rather through a generically stated determination of the maximum number of the other users’ avatars to be displayed. This claim, like the other remaining claims, is distinguishable from the inventive concept that the court found in Bascom.
18
Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 19 of 19
V. Conclusion
For the foregoing reasons, the Court ALLOWS Activision’s motion for summary judgment, D. 272.
So Ordered.
/s/ Denise J. Casper
United States District Judge
3
This is true not just true of claim 4 of the ‘690 as the representative claim, but also of the
other remaining claims including those claims that teach filtering of position information by “fewer than all” or conditions on the filtering which, when considered per claim as individual elements or an ordered combination of elements, do not provide the necessary inventive concept.
Here is a copy of the Pacer Document for the settlement -
Case 1:19-cv-01773-MN Document 81 Filed 04/08/21 Page 1 of 3 PageID #: 1650
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF DELAWARE
WORLDS INC.,
Plaintiff,
v.
LINDEN RESEARCH, INC., d/b/a
LINDEN LAB,
Defendant.
Civil Action No. 19-cv-1773-MN
JOINT STIPULATION TO STAY
It is hereby stipulated and agreed by and between the undersigned counsel for Plaintiff
Worlds Inc. and Defendant Linden Research, Inc., d/b/a Linden Lab, subject to the approval of the
Court, that this case is stayed for 30 days until May 10, 2021.The parties request this stay because
they have reached a settlement in principle and require a short period to finalize the settlement
agreement.
Dated: April 8, 2021
RATNERPRESTIA
By: /s/ Jeffrey B. Bove Jeffrey B. Bove (#998)
Karen R. Poppel (#5373) 1007 Orange Street, Suite 205 Wilmington, Delaware 19801
Tel: (302) 778-2500
jbove@ratnerprestia.com
kpoppel@ratnerprestia.com
POTTER ANDERSON & CORROON LLP By: /s/ Bindu A. Palapura
David E. Moore (#3983)
Bindu A. Palapura (#5370)
Stephanie E. O’Byrne (#4446)
Hercules Plaza, 6th Floor
1313 N. Market Street
Wilmington, DE 19801
Tel: (302) 984-6000
1
Case 1:19-cv-01773-MN Document 81 Filed 04/08/21 Page 2 of 3 PageID #: 1651
dmoore@potteranderson.com
Of Counsel:
Wayne M. Helge
Aldo Noto
Alan A. Wright
Gregory A. Krauss
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500 McLean, VA 22102
Tel: (571) 765-7700
whelge@dbjg.com
anoto@dbjg.com
awright@dbjg.com
gkrauss@dbjg.com
Attorneys for Plaintiff
bpalapura@potteranderson.com
sobyrne@potteranderson.com
Of Counsel:
Michael J. Sacksteder
Jessica Benzler
M. Conner Hutchisson
FENWICK & WEST LLP 555 California Street, 12th Floor San Francisco, CA 94104
Tel: (415) 875-2300
msacksteder@fenwick.com
jbenzler@fenwick.com
chutchisson@fenwick.com
Attorneys for Defendant
SO ORDERED this _______day of _________, 2021.
________________________________
UNITED STATES DISTRICT JUDGE
5208828
2
Case 1:19-cv-01773-MN Document 81 Filed 04/08/21 Page 3 of 3 PageID #: 1652
CERTIFICATE OF SERVICE
I hereby certify that on April 8, 2021, I caused a true and correct copy of the foregoing
JOINT STIPULATION TO STAY to be filed electronically with the Clerk of the Court using CM/ECF, which will send notification of such filing to all counsel of record.
/s/ Jeffrey B. Bove
Jeffrey B. Bove (#998)
I believe the document in post 40358 is related to the IPR discussion.
The Microsoft vs Worlds scheduling order was posted to Pacer on 1/15/2021.
PACER Document - Microsoft vs Worlds schedule
I don't believe anyone posted this previously, this document was entered 1/15/2021
It was a table so it does not format properly
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION
WORLDS INC.,
Plaintiff,
v.
MICROSOFT CORPORATION,
Defendant.
)
)
)
)
)
)
)
)
)
)
)
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
I have only been following the Activision case on Pacer. I found the Microsoft case on Pacer and here is a recent document on Worlds claim construction. For everyone's information, a pacer account is free to use for quite a large amount of activity per quarter. I do not monitor Pacer on a daily basis so I may not timely post documents. That is not because I am trying to manipulate the stock , which I don't believe I could if I wanted to, it's just that I haven't seen the Pacer post.
I tried to format the document, but it is difficult on this site.
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
PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF
Case 6:20-cv-00872-ADA
Document 38
Filed 04/09/21
Page 1 of 15i
TABLE OF CONTENTS
I. INTRODUCTION .............................................................................................................. 1
II. LEGAL PRINCIPLES OF CLAIM CONSTRUCTION .................................................... 1
III. BACKGROUND ................................................................................................................ 1
IV. AGREED CONSTRUCTIONS .......................................................................................... 3
1. “server process” ...................................................................................................... 3
2. “avatar” ................................................................................................................... 4
V. DISCUSSION OF DISPUTED TERMS ............................................................................ 4
3. “participant condition”............................................................................................ 4
4. “three dimensional” ................................................................................................ 6
5. “customizing . . . an avatar”.................................................................................... 9
VI. CONCLUSION................................................................................................................. 11
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 2 of 15
ii TABLE OF AUTHORITIES
Cases Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323 (Fed. Cir. 2008)........................................................................................... 1
Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050 (Fed. Cir. 1989)........................................................................................... 1
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996) ................................... 5
O2 Micro Intern. v. Beyond Innov. Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008)........................................................................................... 5
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)....................................................................... 1, 8
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996)............................................................................................. 8
Worlds Inc. v. Activision Blizzard, Inc., et al., 2015 WL 3932369 (D. Mass. June 26, 2015)..................................................................... 5
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 3 of 15
1 I. INTRODUCTION
Plaintiff Worlds Inc. (“Worlds” or “Plaintiff”) asserts that Defendant Microsoft Corporation (“Microsoft” or “Defendant”) infringes claims 1, 2, 5, and 10 of U.S. Patent No. 8,082,501 (the “’501 Patent”) (the ’501 Patent is attached to this brief as Exhibit A).
Defendant Microsoft makes, uses, sells, and offers for sale its accused Minecraft products and services, including Minecraft Java servers and Minecraft Java Edition server software products. In making its proposed claim constructions, Microsoft attempts to avoid liability for its infringement by proposing constructions that improperly import limitations from the specification into the asserted claims. Additionally, Microsoft’s proposed constructions add uncertainty and ambiguity, rather than interpretating the terms from the viewpoint or a person of ordinary skill in the art at the time of the invention. As explained below, the Court should adopt Worlds’ proposed claim constructions and reject Defendant’s.
II. LEGAL PRINCIPLES OF CLAIM CONSTRUCTION
Worlds will not repeat the basic principles and rules of claim construction, of which this Court is fully cognizant. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008), Intervet Am., Inc. v. Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989).
III. BACKGROUND
In 1995, four Worlds employees — Stephen Adler, S. Mitra Ardron, Judith Challinger, and David Leahy (the “named inventors”) — discovered several inventions that solved crucial problems in the area of software development. They arrived at these solutions while developing Worlds’ software platforms, which enabled remote users to interact in graphically rich, three dimensional virtual environments while also accounting for the technical limitations of network
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 4 of 152
and computer processing restrictions. The ’501 Patent reflects the inventions of those Worlds employees.
The named inventors initially set forth their inventions in a provisional patent application filed on November 13, 1995. Worlds’ first non-provisional application claimed the benefit of this provisional application and issued as U.S. Patent No. 6,219,045 (the “’045 Patent”) on April 17, 2001. The current ’501 Patent also claims the benefit of the provisional patent application and is a continuation claiming priority back to the ’045 Patent. These two patents share a common specification. The ’501 Patent issued on December 20, 2011 and is entitled to the November 13, 1995 priority date.
The ’501 Patent is titled: “System and Method for Enabling Users to Interact in a Virtual Space.” The disclosed client-server system is highly relevant to multi-user video games and virtual worlds, where the positions and actions of each user’s virtual-world avatar are communicated to other users’ client devices, such as computers, to inform them of any state changes (e.g., changes in position, actions, etc.) of avatars. See, e.g., ’501 Patent at 1:56–2:2. As described in the Background of the ’501 Patent, there were difficulties in a conventional “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 the other clients.” Id. at 1:63-66 (emphasis added).
Similarly, a prior “peer-to-peer architecture” required many messages to provide the state change updates of all avatars in the virtual world, and because of the heavy processing loads and limited capabilities of a workstation in a 3-D environment, this requirement to process many messages “limits the number of clients which can be connected to the network.” Id. At
2:4-8. Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 5 of 153
The ’501 Patent describes an improved system in which “the virtual world server must be much more discriminating as to what data is provided to each client[].” Id. at 3:51-53. To handle the remote avatar positions received from the server, the client also can include “a way to filter out avatars” for display using, according to various embodiments, proximity, user ID, or a crowd control function. Id. at 6:3-5.
Thus, the ’501 Patent discloses a server-side crowd control function, such that the server may notify the client of the positions of only certain relevant neighboring avatars. From the received positions, the client performs a determination of the avatars to be displayed based on, for example, the received avatar positions from the server, and application of these additional filtering and/or crowd control functions. The client’s rendering engine 120 then generates the graphical display from the point of view (position and orientation) of the client’s avatar. Id. at 7:55-57.
IV. AGREED CONSTRUCTIONS
During the claim construction meet-and-confer process, the parties reached agreement on the following constructions. 1. “server process” Claim Term (Claim) Agreed Construction “server process” (claim 1) “a program executed, stored, or accessible by one or more computers that provide one or more services to users of computers across a network”
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 6 of 154
2. “avatar” Claim Term (Claim) Agreed Construction [three dimensional] “avatar” (claim 1) “a graphical representation of a user”1
V. DISCUSSION OF DISPUTED TERMS
Worlds’ constructions are clear and well-supported by the ’501 Patent and the relevant intrinsic evidence. By contrast, Microsoft’s constructions are unwieldy and laden with extraneous limitations that do nothing to aid the jury in understanding the asserted claims. Confirming that Microsoft is approaching claim construction with an improper eye, it even proposes a note to accompany one term’s construction that is “NOT FOR THE JURY.” Microsoft’s proposed constructions should be rejected, and the Court should adopt Worlds’ proposed constructions.
3. “participant condition” Claim Term (Claim) Plaintiff’s Proposed Construction Defendant’s Proposed Construction “participant condition” (claim 1) “a condition set by the client” “A condition set by the client.” (NOTE NOT FOR THE JURY: This construction is based on the construction and reasons supporting the construction set forth in the Worlds v. Activision Markman Order, No. 12-10576-DJC (Dkt. 153) at pp. 14-18, including that the server uses the participant condition to determine whether or not avatar position information will be sent to the client).
1 Worlds has taken the position in other active cases that the term “avatar” alone, without the “three dimensional” modifier, still requires the “graphical representation of the user” to be in three dimensional form. Worlds believes that construction is not at issue here since the asserted claims 1, 2, 5, and 10 of the ’501 Patent expressly require the claimed “avatar” to be “three-dimensional.” See ’501 Patent at 19:23 (claim 1 expressly claiming a “three dimensional avatar”).
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 7 of 155
Claim 1 of the ’501 Patent recites, in relevant part, the step of “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.” ’501 Patent at 19:27-33 (emphasis added).
The Parties do not dispute that a “participant condition” as claimed is a “condition set by the client.” The construction comports with the construction reached by District Judge Casper, after full briefing and a claim construction hearing in the co-pending litigation, Worlds v. Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D. Mass.). See Worlds Inc. v. Activision Blizzard, Inc., et al., No. 1:12-cv-10576-DJC, 2015 WL 3932369 (D. Mass. June 26, 2015) (attached as Exhibit B). The only dispute here is whether Defendant’s “NOTE NOT FOR THE JURY” should be adopted. It should not.
First, Microsoft has no support in the law for a claim construction that does not apply to how the jury should understand the term “participant condition.” “The purpose of claim construction is to ‘determin[e] the meaning and scope of the patent claims asserted to be infringed.’” O2 Micro Intern. v. Beyond Innov. Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996). That meaning and scope should have one understanding, equally applicable to the parties and the jury. By trying to change the construction depending on the reader will only sow confusion.
Second, Microsoft’s “note” is unclear as to what additional limitation(s) it seeks to incorporate into the term, and it fails to point to claim language that would justify such additional
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 8 of 156
limitation(s). The plain language of claim 1 of the ’501 Patent provides the full context needed to understand the claimed “participant condition”: “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.” See ’501 Patent at 19:30–38 (Claim 1). Microsoft’s wholesale incorporation of four pages of analysis from Judge Casper’s claim construction Order into its proposed construction lacks any specificity of what is being incorporated, or how the incorporation changes the proper interpretation of the term. Further, Microsoft’s plea for Judge Casper’s analysis to be written into a construction of the term “participant condition” is self-contradicting, as Judge Casper construed the term as a “condition set by the client” without incorporating any “note” into her construction or otherwise. Thus, Microsoft’s note is unnecessary and unsupported, and Judge Casper’s construction reached at the conclusion of her analysis matches Worlds’ proposed construction: “a condition set by the client.” Ex. B at 18. Microsoft’s proposed “note” should be rejected.
4. “three dimensional” Claim Term (Claim) Plaintiff’s Proposed Construction Defendant’s Proposed Construction “three dimensional” [avatar] (claim 1) No construction necessary for “three dimensional” Or, alternatively, “[a graphical representation of a user] in three dimensional form” “[A graphical representation of a user] that appears to have length, width, and depth.”
The parties agree that an “avatar” is a graphical representation of a user. The main dispute about the term is what it means for the claimed “avatar” to be three-dimensional. The ’501 Patent confirms that no construction is needed for this term. Additionally, Microsoft’s proposed construction adds ambiguity without basis.
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 9 of 157
The specification makes clear that the patentees sought to limit their patent to three dimensional virtual worlds and associated avatars. For example, the first sentence of the Patent’s Summary of Invention reads: “The present invention provides a highly scalable architecture for a three-dimensional graphical, multi-user, interactive virtual world system.” See, e.g., ’501 Patent at 2:24–26. Even the Abstract discloses a preferred embodiment where “a plurality of users interact in the three-dimensional, computer-generated graphical space”:
The present invention provides a highly scalable architecture for a three dimensional graphical, multi-user, interactive virtual world system. In a preferred embodiment a plurality of users interact in the three-dimensional, computer generated graphical space where each user executes a client process to view a virtual world from the perspective of that user. The virtual world shows avatars representing the other users who are neighbors of the user viewing the virtual word.
’501 Patent at 2:24–30 (emphasis added).
Elsewhere in the specification the patentees explained that “[e]ach avatar 18 is a three dimensional figure chosen by a user to represent the user in the virtual world.” Id. at 3:25–27
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 10 of 158
(emphasis added). The Detailed Description further discloses that “the avatar images are three dimensional and look different (in most cases) from different angles.” Id. at 6:14–16 (emphasis added). Fig. 5 of the ’501 Patent, which is “an illustration of an avatar” (Id. at 2:67), shows how an avatar may be illustrated to look different when rotated at various angles (id., at 15:59-60):
Notably, in these cited portions of the ’501 Patent specification, the inventors did not find it necessary to explain what was meant by “three-dimensional.” “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d 1312–13. In fact, “the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, the specification of the ’501 Patent confirms that even in 1995, the inventors did find it necessary to explain to a POSITA what was meant by “three-dimensional.” That term was easily understood without additional explanation. Further, a jury in 2021 or 2022 would not be confused by the term, “three dimensional.”
Moreover, Defendant’s proposed construction adds uncertainty where none should exist. Specifically, Defendant proposes that a “three dimensional” avatar be construed to mean an avatar “that appears to have length, width, and depth.” This particular interpretation of the phrase “three dimensional” does not exist in the specification of the ’501 Patent, nor do the terms “length,” “width,” and “depth” appear in the specification of the ’501 Patent (save for the inapplicable phrase “subcommand is of fixed length” at 12:24). Moreover, Microsoft’s proposed construction introduces unnecessary uncertainty by adding the subjective term “appears.” This term is also not used in the ’501 Patent, whether to describe the meaning of “three-dimensional” or otherwise. It
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 11 of 159
is a term of Microsoft’s manufacture and is simply unnecessary where the plain and ordinary meaning of the term is sufficient to convey the scope of the claim.
If a construction is adopted, which Worlds submits is unnecessary, the construction should simply confirm that a “three-dimensional” avatar is an avatar “in three-dimensional form.”
5. “customizing . . . an avatar” Claim Term (Claim) Plaintiff’s Proposed Construction Defendant’s Proposed Construction “customizing . . . an avatar” (claim 1) No construction necessary Or, alternatively, “generating and storing … a custom avatar image” “generating an avatar that is not a predefined avatar provided to the user”
As noted above in Section IV, the parties agree that an “avatar” is a graphical representation of a user. The main dispute about the “customizing … an avatar” term is what it means to perform the step of “customizing.” Worlds respectfully submits “customizing” is used in the ’501 Patent in its ordinary sense and that no additional construction is needed.
First, the full claim term, provided in context and without ellipses, already provides sufficient clarity to set forth the metes and bounds of this claim term. In particular, the full claim term recites, “customizing, using a processor of the client device, an avatar in response to input by the first user.” See ’501 Patent at 19:25-26 (claim 1). This phrase confirms that “customizing” an avatar requires user input, which is consistent with both the understood meaning of “customizing” and with the specification of the ’501 Patent.
Claims 3 and 4, while not currently asserted in this case, also shed light on what is meant by “customizing.” Claim 3 introduces a “first database containing custom avatar images,” while claim 4 recites, in relevant part, that the step of “customizing” “further comprises selecting from the first database information that is used to render the avatars in the displayable set.” Id. at 19:45-
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 12 of 1510
51 (claim 3 and claim 4). These claims further confirm that customizing can include selecting information used to render avatars. This is supported by the specification, which discloses that “client 60 starts a virtual world session with user A selecting an avatar from fixed avatar image database 71 or generating a custom avatar image. In practice, custom avatar image database 108 might be combined with fixed avatar image database 71 into a modifiable avatar image database. In either case, user A selects an avatar image and a pointer to the selected image is stored in current avatar position register 114.” ’501 Patent at 6:59-66 (emphasis added).
Thus, the scope of “customizing” includes but is not expressly limited to a user uploading a specific image for their customized avatar image, and can also include accessing a database of selectable options that are combinable to generate the custom avatar image. While Worlds maintains that no construction is needed for this term, incorporating Worlds’ alternative construction into the claim term confirms that Worlds has the better approach: “generating and storing, using a processor of a client device, a custom avatar image in response to input by the first user.”2
Microsoft’s proposed construction takes the approach of trying to define “customizing” through a negative definition, i.e. by stating what is not included in “customizing.” This tortured approach confirms that a jury would understand “customizing” better than Microsoft’s proposed construction. Further, Microsoft’s proposed construction raises other unanswered questions. What does it mean for an “avatar” to be “predefined?” How is this “predefined avatar” “provided to the user?” By raising these unanswered questions about what is expressly excluded from the
2 The underlined text reflects Worlds’ alternative proposed construction, while the remaining text is the claim language as written.
Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 13 of 1511
claim scope, Microsoft’s proposed construction seems improperly directed toward a non infringement position, rather than providing clarity to the claim term at issue.
Accordingly, adopting Microsoft’s proposed construction would lead to increased jury confusion, and does not advance the goals of claim construction. Worlds maintains that no construction is needed. However, if the Court concludes that a construction is needed, it is enough to construe this claim term to confirm that the client device’s processor is “generating and storing … a custom avatar image.”
VI. CONCLUSION
For the foregoing reasons, this Court should adopt Plaintiff’s proposed constructions.
Dated: April 9, 2021
Respectfully submitted, Of Counsel: DAVIDSON BERQUIST JACKSON & GOWDEY, LLP Wayne M. Helge Alan A.Wright Donald L. Jackson James T. Wilson 8300 Greensboro Drive, Suite 500 McLean, VA 22102 Tel: (571) 765-7700 whelge@dbjg.com awright@dbjg.com djackson@dbjg.com jwilson@dbjg.com ETHERIDGE LAW GROUP, PLLC /s/ Ryan S. Loveless . 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 Attorneys for Plaintiff Worlds, Inc. Case 6:20-cv-00872-ADA Document 38 Filed 04/09/21 Page 14 of 15CERTIFICATE 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 April 9, 2021. /s/ Ryan S. Loveless Ryan S. Loveles
Pacer Doc - Schedule Change Request
Case 1:12-cv-10576-DJC Document 357 Filed 04/09/21 Page 1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
Civil Action No. 1:12-CV-10576 (DJC)
v.
JURY TRIAL DEMANDED
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
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 Court’s January 7, 2021 Scheduling Order, Dkt. 307:
EVENT CURRENT DEADLINE PROPOSED DATE
Rebuttal Expert Reports April 29, 202 May 13, 2021
Close of Expert Discovery May 20, 2021 June 3, 2021
Dispositive Motions & Daubert
Motions June 17, 2021 July 1, 2021
Opposition to Dispositive Motions
& Daubert Motions July 15, 2021 July 29, 2021
Reply Briefs in Support of Dispositive & Daubert Motions
July 29, 2021 August 12, 2021
The parties respectfully submit that good cause exists for this requested extension. The additional time for expert discovery is needed to accommodate the schedules of Activision ’s rebuttal experts,
- 1 -
Case 1:12-cv-10576-DJC Document 357 Filed 04/09/21 Page 2 of 4
one of whom will be at trial for another matter in April. This motion does not seek to alter the schedule in this action in any respects other than the deadlines listed above.
Respectfully submitted this 9th day of April, 2021.
IT IS SO ORDERED:
Date The Honorable Denise J. Casper
United States District Judge
By: /s/ Wayne M. Helge By: /s/ Kevin S. Prussia
Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com
SUSMAN GODFREY L.L.P. 1000 Louisiana Street, Suite 5100 Houston, Texas 77002
T: (713) 651-9366
F: (713) 654-6666
Wayne M. Helge (pro hac vice) whelge@dbjg.com
Aldo Noto (pro hac vice) anoto@dbjg.com
Alan A.Wright (pro hac vice) awright@dbjg.com
Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com
James T. Wilson (pro hac vice) jwilson@dbjg.com
Sonal N. Mehta (pro hac vice) sonal.mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE
AND DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Tel.: (650) 858-6000
Fax: (650) 858-6100
Kevin S. Prussia (BBO# 666813) kevin.prussia@wilmerhale.com
Claire M. Specht (BBO# 687952) claire.specht@wilmerhale.com
Scott Bertulli (BBO# 690958)
scott.bertulli@wilmerhale.com
WILMER CUTLER PICKERING HALE
AND DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
- 2 -
Case 1:12-cv-10576-DJC Document 357 Filed 04/09/21 Page 3 of 4
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500 McLean, VA 22102
T: (571) 765-7700
Joel R. Leeman
jleeman@sunsteinlaw.com
BBO # 292070
SUNSTEIN KANN MURPHY & TIMBERS 125 Summer Street
Boston, MA 02110-1618
T: (617) 443-9292
F: (617) 443-0004
Attorneys for Plaintiff Worlds, Inc.
Attorneys for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc.
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Case 1:12-cv-10576-DJC Document 357 Filed 04/09/21 Page 4 of 4
CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1(a)(2)
I certify that, in accordance with Local Rule 7.1(a)(2), counsel for Plaintiff and counsel for
Defendants conferred in good faith in an attempt to resolve the issues raised in this motion. The parties have agreed to file this motion jointly.
/s/ Kevin S. Prussia
CERTIFICATE OF SERVICE
I certify that a true copy of the above document was filed through the Court’s ECF system
on the above date and will be sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF).
/s/ Kevin S. Prussia
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Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
)
WORLDS, INC.,
Plaintiff,
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
v.
)
)
JURY TRIAL DEMANDED
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
)
)
)
DEFENDANTS’ UNOPPOSED MOTION FOR LEAVE TO FILE A RESPONSE TO
WORLDS’S OBJECTIONS TO MAGISTRATE JUDGE CABELL’S ORDER DENYING WORLDS’S MOTION TO COMPEL DISCOVERY OF NON-ACCUSED GAMES
Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision
Publishing, Inc. (collectively, “Defendants”), hereby move for leave of Court to file a Response to
Plaintiff Worlds Inc.’s (“Worlds”) Objections to Magistrate Judge Cabell’s Order Denying
Worlds’s Motion to Compel Discovery of Non-Accused Games. Defendants believe that their
proposed response will be helpful to the Court in assessing the merits, or lack thereof, of the
arguments presented in Worlds’s Objections to Magistrate Judge Cabell’s Order (Dkt. 353). The
proposed response is approximately 3.5 pages long and is being filed within 14 days of when
Worlds’s Objections to Magistrate Judge Cabell’s Order were filed. Worlds does not oppose the motion. A copy of the proposed response is attached hereto as Exhibit A.
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Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 2 of 3
Cated: April 1, 2021 Respectfully submitted,
By: /s/ Sonal N. Mehta
Sonal N. Mehta (pro hac vice)
Sonal.Mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE AND DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Tel.: (650) 858-6000
Fax: (650) 858-6100
Kevin S. Prussia (BBO# 666813) Kevin.Prussia@wilmerhale.com
Claire M. Specht (BBO# 687952) Claire.Specht@wilmerhale.com
Scott Bertulli (BBO# 690958)
Scott.Bertulli@wilmerhale.com
WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
Attorneys for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc.
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Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 3 of 3
CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1(a)(2)
I certify that, in accordance with Local Rule 7.1(a)(2), counsel for Defendants conferred in
good faith with counsel for Worlds regarding the relief requested herein. Worlds stated that it does not oppose the motion.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) this 1st day of April, 2021.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
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Pacer 4/1 -
Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 1 of 3
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
)
WORLDS, INC.,
Plaintiff,
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
v.
)
)
JURY TRIAL DEMANDED
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.,
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
)
)
)
DEFENDANTS’ UNOPPOSED MOTION FOR LEAVE TO FILE A RESPONSE TO
WORLDS’S OBJECTIONS TO MAGISTRATE JUDGE CABELL’S ORDER DENYING WORLDS’S MOTION TO COMPEL DISCOVERY OF NON-ACCUSED GAMES
Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision
Publishing, Inc. (collectively, “Defendants”), hereby move for leave of Court to file a Response to
Plaintiff Worlds Inc.’s (“Worlds”) Objections to Magistrate Judge Cabell’s Order Denying
Worlds’s Motion to Compel Discovery of Non-Accused Games. Defendants believe that their
proposed response will be helpful to the Court in assessing the merits, or lack thereof, of the
arguments presented in Worlds’s Objections to Magistrate Judge Cabell’s Order (Dkt. 353). The
proposed response is approximately 3.5 pages long and is being filed within 14 days of when
Worlds’s Objections to Magistrate Judge Cabell’s Order were filed. Worlds does not oppose the motion. A copy of the proposed response is attached hereto as Exhibit A.
- 1 -
Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 2 of 3
Cated: April 1, 2021 Respectfully submitted,
By: /s/ Sonal N. Mehta
Sonal N. Mehta (pro hac vice)
Sonal.Mehta@wilmerhale.com
WILMER CUTLER PICKERING HALE AND DORR LLP
2600 El Camino Real
Suite 400
Palo Alto, CA 94306
Tel.: (650) 858-6000
Fax: (650) 858-6100
Kevin S. Prussia (BBO# 666813) Kevin.Prussia@wilmerhale.com
Claire M. Specht (BBO# 687952) Claire.Specht@wilmerhale.com
Scott Bertulli (BBO# 690958)
Scott.Bertulli@wilmerhale.com
WILMER CUTLER PICKERING HALE AND DORR LLP
60 State Street
Boston, MA 02109
Tel.: (617) 526-6000
Fax: (617) 526-5000
Attorneys for Defendants Activision Blizzard, Inc., Blizzard Entertainment, Inc., and Activision Publishing, Inc.
- 2 -
Case 1:12-cv-10576-DJC Document 354 Filed 04/01/21 Page 3 of 3
CERTIFICATE OF COMPLIANCE WITH LOCAL RULE 7.1(a)(2)
I certify that, in accordance with Local Rule 7.1(a)(2), counsel for Defendants conferred in
good faith with counsel for Worlds regarding the relief requested herein. Worlds stated that it does not oppose the motion.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
CERTIFICATE OF SERVICE
I hereby certify that the foregoing document filed through the ECF system will be sent
electronically to the registered participants as identified on the Notice of Electronic Filing (NEF) this 1st day of April, 2021.
By: /s/ Sonal N. Mehta
Sonal N. Mehta
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Pacer Document from 3/17
Case 1:12-cv-10576-DJC Document 352 Filed 03/17/21 Page 1 of 5
THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC. and
ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
PLAINTIFF WORLDS, INC.’S RESPONSE TO DEFENDANTS’ NOTICE OF SUPPLEMENTAL PROCEEDINGS IN SUPPORT OF DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT UNDER 35 U.S.C. § 101
On February 23, 2021, Defendants filed a Notice of Supplemental Proceedings in support
of Defendants’ Motion for Summary Judgment Under 35 U.S.C. § 101. Dkt. 332. Defendants
characterize this Notice as a “Notice of Supplemental Authority,” (Dkt. 332 at 1) but cite to no
additional authority. Rather, Defendants cite to Plaintiff Worlds’ techn ology tutorial and slides
from a co-pending case filed by Worlds, and argue that there is an inconsistency between
Worlds’ tutorial presented in that co-pending case and Worlds’ Opposition to Defendants’
Motion for Summary Judgment Under 35 U.S.C. § 101 filed in this case. See Dkt. 332 at 1-3.
First, Worlds’ tutorial and the slides cited in Defendants’ Notice, along with Worlds’
consistent tutorial discussions, were presented during the technology tutorial in this case, to this
Court. See also Dkt. 62 at 4 (Plaintiff Worlds’ Opening Claim Construction Brief) (explaining
that “the Worlds Patents disclose an invention whereby a client device and associated server can
efficiently filter the number of visible avatars so as to preserve bandwidth, optimize processing
Case 1:12-cv-10576-DJC Document 352 Filed 03/17/21 Page 2 of 5
capabilities, and enhance the user experience.”). There is nothing new or “supplemental” about
Defendants’ recent filing regarding the very tutorial discussions provided by Worlds to this Court in 2014.
Additionally, there is no inconsistency in Worlds’ position. Defendants assert that
Worlds argued that its “claims are not directed to filtering and that there is no real-world
analogue.” Id. at 2. The tutorial slides excerpted by Defendants, reflecting a Virtual Space, do
not display a real-world analogue. Moreover, Worlds’ technical explanations in the co-pending
litigation are entirely consistent with Worlds’ Opposition filed in this matter regarding avatar culling in a virtual world. As Worlds explained in its Opposition:
[T]he asserted claims enable a client to determine a displayable set of other user
avatars from among the reduced number of avatars sent by the server in the virtual
space according to that particular client’s processing and network capabilities.
Confirming this technically-focused solution, the asserted claims do not claim
filtering data in the abstract, or even filtering data using a computer, but instead
claim the protocols of a computer network architecture that uses culling of 3-D avatars in a virtual world both by a server and on a client-by-client basis.
Moreover, Activision acknowledged these protocols during claim construction, and
even based its arguments around them. At Activision’s urging, the Court held that the
asserted ’501 and ’998 Patent claims are limited to a defined interaction between a
client and server, as the avatar posit ions that a server sends to a client relate to “a
condition set by the client.” Dkt. 153 at 14 -18. Activision now chooses to ignore
these requirements in its step one analysis. These limitations show that the claims are
not directed to abstract data “filtering,” but to how the claim elements implement
an improved client-server computer network architecture for user interactions in a
Case 1:12-cv-10576-DJC Document 352 Filed 03/17/21 Page 3 of 5
virtual world . These particular recitations regarding how “filtering” is used and
applied to improve processing in the systems shows that the claims do not preempt
all “filtering” using a computer, or even “filtering” in systems implementing 3 -D avatars in a virtual world .
Dkt. 276 at 13 (emphasis added).
Dated: March 17, 2021 Respectfully submitted,
/s/ Wayne M. Helge
Wayne M. Helge (pro hac vice) whelge@dbjg.com
Aldo Noto (pro hac vice) anoto@dbjg.com
Alan A. Wright (pro hac vice) awright@dbjg.com
Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com
James T. Wilson (pro hac vice) jwilson@dbjg.com
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500 McLean, VA 22102
T: (571) 765-7700
Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100 Houston, Texas 77002
T: (713) 651-9366
Joel R. Leeman (BBO # 292070) jleeman@sunsteinlaw.com
SUNSTEIN KANN MURPHY &
TIMBERS
125 Summer Street
Case 1:12-cv-10576-DJC Document 352 Filed 03/17/21 Page 4 of 5
Boston, MA 02110-1618
T: (617) 443-9292
ATTORNEYS FOR PLAINTIFF,
WORLDS, INC.
Posted on Pacer Yesterday -
Case 1:12-cv-10576-DJC Document 353 Filed 03/18/21 Page 1 of 11
THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
WORLDS, INC.,
Plaintiff,
v.
ACTIVISION BLIZZARD, INC.,
BLIZZARD ENTERTAINMENT, INC.
and ACTIVISION PUBLISHING, INC.,
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No. 1:12-CV-10576 (DJC)
WORLDS, INC’S OBJECTIONS TO MAGISTRATE JUDGE CABELL’S ORDER REGARDING WORLDS’ MOTION TO COMPEL
DISCOVERY OF NEW ACTIVISION PRODUCTS
Case 1:12-cv-10576-DJC Document 353 Filed 03/18/21 Page 2 of 11
Pursuant to Federal Rule of Civil Procedure 72, Plaintiff Worlds, Inc. (“Worlds”) respectfully submits this set of objections to Magistrate Cabell’s March 4, 2021 Order denying Worlds’ motion to compel discovery into the New Call of Duty Products and the New World of Warcraft Product. See Dkt. 345 (Mag. J. Cabell’s Order); and Dkt. 297 at 2-3 (defining “New Call of Duty Products and New World of Warcraft Product”). Magistrate Cabell denied Worlds’ motion as seeking irrelevant information and untimely given the current stage of the case. Worlds respectfully objects to Magistrate Cabell’s Order and submits that Worlds’ motion sought relevant information and was filed timely after the parties’ negotiations over the requested discovery reached an impasse.
I. WORLDS’ REQUESTED DISCOVERY IS RELEVANT
Worlds’ motion sought discovery into the New Products, which had all been released after the court’s claim construction hearing. Magistrate Cabell denied this motion under the “good cause” standard, which is the standard governing amendments to infringement contentions after the claim construction hearing. Dkt. 345 (citing Dkt. 27 at 8-9). Finding that the products for which Worlds sought discovery were not included in Worlds’ infringement contentions, Magistrate Cabell found that Worlds’ requested discovery was not relevant. Magistrate Cabell also considered the current stage of this case in his analysis of relevance.
a. The Sales Data for World of Warcraft: Legion (Expansion Set) is Relevant Initially, Magistrate Cabell may not have appreciated that the New World of Warcraft
Product (hereinafter, “Legion”) is an expansion set of the World of Warcraft product already included in Worlds’ infringement contentions. Worlds ’ motion pointed to evidence that confirmed
Herein, the terms “New Call of Duty Products” and “New World of Warcraft Product”
are collectively referred to as “New Products.”
1
Case 1:12-cv-10576-DJC Document 353 Filed 03/18/21 Page 3 of 11
that Legion is “an expansion set for the accused World of Warcraft game” and uses “the same underlying software and engine as the accused World of Warcraft game” included in Worlds’ infringement contentions. See Dtk. 297 at 5. Activision did not dispute this fact. Indeed, Worlds has already charted in its infringement contentions the World of Warcraft game engine, which is representative of all the accused World of Warcraft games and Legion. See Dkt. 298-10. Because Worlds’ charted World of Warcraft source code is representative of the Legion source code, Worlds requested “sales data” for World of Warcraft: Legion (Expansion Set) from Defendants but not additional source code. Id.
Thus, Activision has not disputed that World of Warcraft: Legion (Expansion Set) is substantially similar to the infringement contentions already served by Worlds on the World of Warcraft products. Additionally, producing sales data for a single World of Warcraft Expansion Set would have been simple, and would not have been prejudicial or burdensome to Defendants regardless of the stage of this case.
At minimum, Worlds respectfully submits that Activision should have been ordered to produce sales data for the World of Warcraft: Legion (Expansion Set) game, as Worlds’ infringement chart already sets forth Worlds’ infringement theory as to this game on the basis of the representative World of Warcraft source code produced by Defendants, and Defendants would not have been prejudiced by this warranted and targeted production of relevant information.
b. The Requested Information for the New Call of Duty Products is Also Relevant Magistrate Cabell’s analysis on relevance of the New Call of Duty Products is consistent
with Activision’s lead argument in opposition, which stated that if the products are not listed in the infringement contentions, they are “non-accused products,” and thus, discovery into those products is not relevant. See Dkt. 310 at 10-14. But Activision’s argument reverses the proper
2
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order of actions. If the New Products are “reasonably similar” to the products explicitly listed in the infringement contention—which Worlds asserted and Activision never disputed—Activision should have been required to provide discovery into those New Products. After the discovery is produced, Worlds can seek to amend its infringement contentions if warranted to identify the products, and provide any variations on the infringement theory that may be necessary. Indeed, this is where the “good cause” standard should be applied, since Activision’s withholding of the requested discovery supports Worlds’ “good cause” for seeking amendments to infringement contentions to add products that were first released by Activision after the claim construction hearing.
Additionally, Worlds’ suggested process is outlined in the cases cited by Worlds. As Worlds’ Motion explained, in Nidec Corp. v. LG Innotek Co., Ltd., 2009 WL 3673253 (E.D. Tex. Sept. 2, 2009), the court noted that “[d]iscovery is not necessarily limited to the products explicitly identified in a plaintiff’s infringement contentions.” Id. at *2. The court explained that discovery into non-identified products is “appropriate when: 1) the infringement contentions give notice of a specific theory of infringement; and 2) the products for which a plaintiff seeks discovery operate in a manner reasonably similar to that theory.” Id. Thus, the discovery is provided first and then the contentions can be amended thereafter. That is exactly what Worlds seeks to do here – first obtain the discovery into reasonably similar products, and then modify its contentions if appropriate based on the discovery.
Magistrate Cabell’s Order distinguishes the cases cited by Worlds, including the Nidec case, “because in those cases discovery was allowed on related but non-accused products at an early stage in a case, notably before a claim construction hearing had taken place.” Dkt. 345. But here the New Products were not released until after this case’s claim construction hearing
3
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occurred. See Dkt. 297 at 3 (“Each of these four products were introduced to market by Activision after Worlds served its [post-claim construction Order] infringement contentions.”). This fact confirms that Worlds could not have added these New Products to its infringement contentions as a matter of right before the claim construction hearing, and establishes Worlds’ “good cause” for seeking discovery on these New Products after the claim construction hearing.
Finally, Magistrate Cabell’s Order indicates that Worlds did not demonstrate that the New Call of Duty Products are “sufficiently similar” to the products listed in the infringement contentions. Dkt. 345. To the contrary, Worlds presented uncontested evidence that the New Call of Duty Products were reasonably similar to the Call of Duty products listed in the infringement contentions based on the same or similar game engines used in the various products. See Dkt. 297 at 4-5 and evidence cited therein. Activision, on the other hand, offered no evidence on this point. Instead, Activision created a straw-man argument that Worlds was relying on the fact that the New Products are from the same “Call of Duty” franchise as the basis to assert that they are reasonably similar. See Dkt. 310 at 19. That is clear error. Worlds provided evidence establishing that the New Call of Duty Products used the same or similar game engines (not simply the same franchise name) to show that they are reasonably similar. Dkt. 297 at 4-5.
Because Activision offered no evidence to the contrary, the only conclusion that reasonably could be drawn is that the New Products are reasonably similar, and discovery into these New Products is therefore relevant.
Worlds addresses this factor for World of Warcraft: Legion (Expansion Set) in Section
I.a, supra.
4
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II. WORLDS’ REQUESTED DISCOVERY WAS TIMELY
Magistrate Cabell also accepted Activision’s argument that it is too late in this case to provide discovery into the New Products. But Worlds notified Defendants that it was seeking discovery into the New Products on May 19, 2020 when it served its “Fourth Requests for Production of Documents (Nos. 128-143),” which defined “accused products” for the purposes of discovery only (not Worlds’ infringement contentions) to include the New Products. See Dkt. 297 at 1. Fact discovery did not close until February 18, 2021, or nine months after Worlds began seeking discovery of the New Products. See Dkt. 307. There was clearly enough time for Activision to provide the requested discovery.
Magistrate Cabell accepted Activision’s argument that its objection to Worlds’ definition of “accused products” to include the New Products put Worlds on notice that Activision would not be providing discovery into the New Products. Worlds respectfully disagrees. In Activision’s June 18, 2020 response to Worlds’ Fourth Requests for Production of Documents, Activision objected to Worlds’ definition, but did not indicate that it was withholding any discovery or supplementation regarding the New pProducts. The Federal Rules of Civil Procedure require more to put a party on notice of withheld documents. See Fed. R. Civ. P. 34(b)(2)(C) (“[a]n objection must state whether any responsive materials are being withheld on the basis of that objection.”).
Magistrate Cabell also accepted Activision’s claim that Worlds was at fault for not filing
its motion to compel early enough. But it was error to start Worlds’ clock for filing a motion compel with Activision’s objection found in the response to the Fourth Set of Requests for Production. From the lifting of the stay until September 27, 2020, Activision did not produce any supplemental discovery, be it for old products or new. On September 9, 2020, Activision
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represented that it was “actively working to supplement its production,” but had not yet done so. Dkt. 298-3 at 7.
Activision then provided, for the first time, confirmation that the New Products existed by serving a supplemental response to Worlds’ Interrogatory No. 1 on October 16, 2020. Dkt. 298-5. Just four days later, Worlds wrote Activision advising Activision that Worlds expected Activision to provide discovery on these new products. Dkt. 298-10. On October 30, 2020, Worlds sent a more fulsome explanation of why discovery into the new products was appropriate. Dkt. 298-11. That same day, Activision sent an email proposing a compromise stipulation that included Activision providing discovery on the New Products as well as limitations on Worlds’ ability to conduct discovery regarding the prior art estoppel issue. Dkt. 298-12. On November 30, 2020, Activision wrote to say that Worlds was not entitled to discovery on the New Products but Activision reiterated that it envisioned producing discovery into the New Products as part of a larger compromise stipulation. Dkt. 298-13. Thus, even as of November 30, 2020, Activision was behaving as though discovery on the New Products was forthcoming under certain conditions. The parties’ discussions and attempts to conclude a compromise stipulation continued through October, November and early December, but ended on December 8, 2020 when Activision filed its motion for a protective order to prohibit discovery into the prior art estoppel issue. See Dkt. 292.
The parties conducted a final meet and confer call on December 15, 2020. Activision maintained its position that Worlds is not entitled to any discovery on these new games, and thus for the first time confirmed that the parties were at an impasse. Worlds filed the present motion three days later, on December 18, 2020. See Dkt. 296. Activision even joined Worlds in filing a joint motion to allow time for resolution of Worlds’ motion to compel before fact discovery
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would close. Dkt. 299. Under these circumstances, Worlds submits that it diligently pursued discovery of the New Products and rightfully delayed filing a motion to compel until the parties reached an impasse.
Finally, Magistrate Cabell accepted Activision’s claim that Worlds was at fault for delay because the New Products were publicly introduced in 2015 and 2016 and easily discoverable. But the requested source code and sales data for the New Products is not publicly available and were proper subjects of discovery. Further, the parties filed a joint motion to stay all proceedings on December 16, 2015 (Dkt. 198) in view of inter partes reviews that Activision now admits it had a hand in. Dkt. 343. The Court did not lift the stay until April 17, 2020, and discovery did not resume until April 21, 2020. See Dkt. 264. Three out of four of the New Products were released during the stay. See Dkt. 298-5 at 3-4. The fourth product was released in November 2015 – just one month before the parties filed their joint motion to stay all proceedings. See Dkt. 298-5 at 3 (Call of Duty: Black Ops III). Worlds began seeking discovery of the New Products in May 2020 – one month after discovery opened. At most, Worlds is chargeable with one month’s delay in 2015 before the motion to stay was filed (and only for the Call of Duty: Black Ops III product), and one month in 2020 from when discovery resumed until Worlds requested production into the New Products. On the other hand, Activision did not admit the existence of the New Products in this case until October 16, 2020, six months after the stay was lifted, and did not reveal its intent to withhold discovery on the New Products until October 30, 2020. Dkt. 298-5; Dkt. 298-12.
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III. CONCLUSION
For the foregoing reasons, Worlds respectfully requests that the Court sustain Worlds’ objections to Magistrate Cabell’s March 4, 2021 Order and grant Worlds’ motion to compel (Dkt. 296).
Dated: March 18, 2021 Respectfully submitted,
/s/ Wayne M. Helge
Wayne M. Helge (pro hac vice) whelge@dbjg.com
Aldo Noto (pro hac vice) anoto@dbjg.com
Alan A. Wright (pro hac vice) awright@dbjg.com
Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com
James T. Wilson (pro hac vice) jwilson@dbjg.com
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500 McLean, VA 22102
T: (571) 765-7700
Max L. Tribble (pro hac vice)
mtribble@susmangodfrey.com
Chanler Langham (pro hac vice) clangham@susmangodfrey.com
Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100 Houston, Texas 77002
T: (713) 651-9366
Joel R. Leeman (BBO # 292070) jleeman@sunsteinlaw.com
SUNSTEIN KANN MURPHY &
TIMBERS
125 Summer Street
Boston, MA 02110-1618
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Case 1:12-cv-10576-DJC Document 353 Filed 03/18/21 Page 10 of 11
T: (617) 443-9292
ATTORNEYS FOR PLAINTIFF,
WORLDS, INC.
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Case 1:12-cv-10576-DJC Document 353 Filed 03/18/21 Page 11 of 11
CERTIFICATE OF SERVICE
I hereby certify that this document filed through the ECF systems will be sent electronically
to the registered participants as identified on the Notice of Electronic Filing on the above date.
/s/ Wayne M. Helge
Wayne M. Helge
Docket report from Pacer -
Date Filed # Docket Text
03/15/2021 351 Electronic Clerk's Notes for proceedings held before Judge Denise J. Casper: Status Conference held on 3/15/2021 by videoconference. Plaintiff moves to withdraw their Motion to Amend (D. 327) in open court. The Court allows the oral motion and deems the motion withdrawn in light of colloquy with counsel. Parties discuss status of case and additional issues for the Court's attention. 327 Motion to Amend Withdrawn. (Court Reporter: Rachel Lopez at raeufp@gmail.com.)(Attorneys present: Wayne Helge, James Wilson and Joel Leeman for the plaintiff. Kevin Prussia, Clair Specht and Sonal Mehta for the defendant.) (Hourihan, Lisa) (Entered: 03/15/2021)
PACER Service Center
Transaction Receipt
03/16/2021 13:31:13
PACER Login: xxxxxxx Client Code:
Description: Docket Report Search Criteria: 1:12-cv-10576-DJC Start date: 3/14/2021 End date: 3/16/2021
An order was posted on Pacer related to the below amendment to the scheduling order. I believe it was canceled. I cannot open the order on Pacer -
Case 1:12-cv-10576-DJC Document 327 Filed 02/12/21 Page 1 of 3
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)
PLAINTIFF WORLDS, INC.’S OPPOSED MOTION TO
AMEND THE SCHEDULING ORDER
Plaintiff Worlds, Inc. ( “Plaintiff” or “Worlds”) respectfully submits this Opposed Motion to extend the pre-trial deadlines set forth in the Scheduling Order, Dkt. 264, as already amended once by Joint Motion, Dkt. 307. Good cause exists for this requested extension.
In support of this motion, Plaintiff Worlds is filing contemporaneously herewith: (1) Plaintiff Worlds Inc.’s Memorandum in Support of Its Motion to Amend the Scheduling Order, and (2) the Declaration of Wayne M. Helge in Support of Plaintiff Worlds’ Motion and accompanying Exhibits 1-2.
For the reasons set forth in Plaintiff Worlds’ Memorandum in Support of Its Motion to Amend the Scheduling Order, Plaintiff Worlds respectfully asks for an additional extension of the fact discovery period (a) to allow time for the Court’s disposition of the pending discovery motions, (b) to allow time for conducting follow-on fact discovery that complies with said dispositions, and (c) to avoid the inefficiencies that would result from a fact discovery period that both ends-in-part and continues-in-part.
Case 1:12-cv-10576-DJC Document 327 Filed 02/12/21 Page 2 of 3
Cated: February 12, 2021 Respectfully submitted,
/s/ Wayne M. Helge
Wayne M. Helge (pro hac vice) whelge@dbjg.com
Aldo Noto (pro hac vice) anoto@dbjg.com
Alan A. Wright (pro hac vice) awright@dbjg.com
Gregory A. Krauss (pro hac vice) GKrauss@dbjg.com
James T. Wilson (pro hac vice) jwilson@dbjg.com
DAVIDSON BERQUIST JACKSON &
GOWDEY, LLP
8300 Greensboro Drive, Suite 500 McLean, VA 22102
T: (571) 765-7700
Max L. Tribble (pro hac vice) mtribble@susmangodfrey.com Chanler Langham (pro hac vice) clangham@susmangodfrey.com Ryan Caughey (pro hac vice) rcaughey@susmangodfrey.com
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100 Houston, Texas 77002
T: (713) 651-9366
Joel R. Leeman (BBO # 292070) jleeman@sunsteinlaw.com
SUNSTEIN KANN MURPHY &
TIMBERS
125 Summer Street
Boston, MA 02110-1618
T: (617) 443-9292
ATTORNEYS FOR PLAINTIFF,
WORLDS, INC.
Screen shot from Pacer -
1:12-cv-10576-DJC Worlds, Inc. v. Activision Blizzard, Inc. et al
Denise J. Casper, presiding
Date filed: 03/30/2012
Date of last filing: 03/15/2021
Related Transactions
Note: Each selected transaction in this case is shown below in a box with any other transactions to which it is related.
Doc. No. Event Name Event Filed Event Terminated
351 Order on Motion to Amend 03/15/2021
264 Order 04/17/2020
327 Motion to Amend 02/12/2021 03/15/2021
351 Status Conference 03/15/2021