Worlds Inc. Patent history and litigation summary
November 13, 1995 Worlds files provisional patent application 60/020,296 for a Scalable virtual world chat client-server system
August 3, 2000 Worlds filed additional claims as a continuance to our 1995 patent application.
April 17, 2001 US Patent 6,219,045 issued for Scalable virtual world chat client-server system.
February 20, 2007 US patent 7,181,690 System and method for enabling users to interact in a virtual space issued as a continuation of patent 6219045.
December 11, 2008 Worlds retained Lerner David Littenberg Krumholz & Mentlik LLP (LDLKM), to enforce Worlds' patents. 6,219,045; 7,181,690; 7,493,558
December 24, 2008 Lerner David Littenberg Krumholz & Mentlik LLP files patent enforcement action against NC Soft on behalf of Worlds.
April 2, 2010 Lerner David Littenberg Krumholz & Mentlik LLP settles patent enforcement action against NC Soft on behalf of Worlds.
May 14, 2011 Worlds 4th US patent 7,945,856 is issued over prior art presented in NC Soft litigation
December 20, 2011 Worlds 5th US patent 8,082,501 is issued over prior art presented in NC Soft litigation
February 12, 2012 The Company entered into a confidential legal contingency agreement with Susman Godfrey L.L.P. for enforcement of its patent portfolio
March 27, 2012 Worlds 6th US patent 8,145,998 is issued over prior art presented in NC Soft litigation
March 30, 2012 Susman Godfrey LLP files patent enforcement action against Activision Blizzard on behalf of Worlds Inc.
April 17, 2012 Worlds 7th US patent 8,161,385 is issued over prior art presented in NC Soft litigation
January 26, 2014 Worlds 8th patent 8,640,028 is issued over prior art presented in NC Soft litigation
October 3, 2014 - U.S. District Judge Denise J. Casper held a patent claim construction hearing; the Markman hearing, in Worlds Inc. vs. Activision Blizzard, Inc.
May 26, 2015 – Bungie Inc. developer of the video game Destiny distributed by Activision files a petition for an Inter Party Review (IPR) at the USPTO seeking to invalidate Worlds patents
June 26, 2015 U.S. District Judge Denise J. Casper issues a favorable Markman order upholding claim construction of Worlds major patent claims.
August 18, 2015 - Worlds receives 10th patent 9,110567 issued by the USPTO
November 30, 2015 – The USPTO institutes an Inter Party Review (IPR) on Worlds patents as filed by Bungie Inc. Worlds formal response due March 15, 2016, oral arguments before the Patent Trial and Appeal Board (PTAB) scheduled August 10, 2016.
February 11, 2016 U.S. District Judge Denise J. Casper entered order granting Motion to Stay pending IPR proceedings.
Dec 1, 2016 - The U.S. Patent & Trademark Office (PTAB) validated six patent claims by Worlds Inc. following Patent Trial and Appeal Board (PTAB) Validated claims were: Claims 4, 8, 13, and 16 of Patent 7,181,690 B1 - IPR2015-01268 and claims 5 and 7 of Patent 7,493,558 B2 - IPR2015-01269.
January 12, 2017, February 7, 2017, and January 30, 2017, respectively, the Company appealed the outcomes in IPR2015-01264, IPR2015-01319, and IPR2015-01321 to the United States Court of Appeals for the Federal Circuit (“CAFC”). These three cases have been consolidated.
June 26, 2017 The company filed formal appeal briefs with the United States Court of Appeals for the Federal Circuit (“CAFC”)
August 28, 2017 Bungie Inc.files respond to Worlds appeal before the CAFC.
September 22, 2017 World’s final response to CAFC appeal filed.
January 20, 2018 Oral arguments have been scheduled by the CAFC for March 9, 2018 at 10:00 AM with an expected decision by summer 2018.
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