Worlds Inc (WDDD)

[Savy Investors]

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
[phone]
SONAL N. MEHTA
JENNIFER J. JOHN
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
[phone]
[e-mail]
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
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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
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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
[phone]
Case: 21-1990 Document: 14 Page: 4 Filed: 10/13/2021
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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
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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
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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).
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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
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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
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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
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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).
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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’
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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”).
Case: 21-1990 Document: 14 Page: 39 Filed: 10/13/2021
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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
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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
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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
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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.
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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
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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.
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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.
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Respectfully submitted,
/s/ Sonal N. Mehta
KEVIN S. PRUSSIA
WILMER CUTLER PICKERING
HALE AND DORR LLP
60 State Street
Boston, MA 02109
[phone]
SONAL N. MEHTA
JENNIFER J. JOHN
WILMER CUTLER PICKERING
HALE AND DORR LLP
2600 El Camino Real, Suite 400
Palo Alto, CA 94306
[phone]
[e-mail]
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
[phone]
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
[phone]
October 13, 2021
Case: 21-1990 Document: 14 Page: 71 Filed: 10/13/2021