Worlds Inc (WDDD)

[rolvram]

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS




WORLDS, INC., Plaintiff,
v.

ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. and ACTIVISION PUBLISHING, INC.,



Defendants.

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) Civil Action No. 1:12-CV-10576 (DJC)
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JOINT SUBMISSION CONCERNING SUMMARY JUDGMENT





Pursuant to the Court’s order of March 13 (D.I. 124) allowing Activision Blizzard’s motion for summary judgment, the parties make this joint submission:
Worlds Portion Of Joint Submission

In its Summary Judgment Order, the Court recognized that “Worlds alleges continued infringement through the lives of the Patents-in-Suit,” and that “nothing about the Court’s order prevents Worlds from asserting infringement from the date of the certificate going forward.”
D.I. 124. at 18 n.1. In light of this analysis, the Court ordered the parties to consider whether the Court should “dismiss the instant action (without preventing Worlds from commencing a new action alleging infringement from the date of the certificates going forward), or merely confine this decision to infringement allegedly occurring from the dates of the patents issued through the lives of the Patents-in-Suit.” Id. The parties have conferred and agree that the most appropriate course of action is for the Court to allow this case to proceed, without dismissal or refiling, as to post-correction infringement. The parties’ primary disputes are over whether an amended complaint is necessary, and over the management of the parties’ dispute.
To begin, the parties’ agreed plan to allow Worlds to pursue its post-correction causes of action without refiling is the correct one. Other federal courts have taken exactly that approach. See, e.g., Lamoureaux v. AnazoHealth Corp., 669 F. Supp. 2d 227, 234–36 (D. Conn. 2009) (applying a certificate of correction that was applied for and issued after suit was filed, and recognizing that “the critical date for purposes of determining whether the certificate of correction applies is the date the cause of action arose, i.e., the date the infringing conduct occurred, and not the date the complaint was filed”); Masonite Corp. v. Craftmaster Manufacturing, Inc., 2011 WL 1642518 (N.D. Ill. Apr. 29, 2011) (for “claims directed to infringement occurring on or after the dates the certificate of correction issued, the certificates will be effective in this lawsuit as to those claims”).





Furthermore, contrary to Activision’s position, this case can proceed without an amended complaint. As the Court recognized in its Order, Worlds’ Amended Complaint already “alleges continued infringement through the lives of the Patents-in-Suit.” D.I. 124 at 18 n.10. The Amended Complaint as pleaded is valid because, “as to all causes of action accruing after [the certificates were issued], the certificate[s] of correction [are] to be treated as part of the original patent.” Lamoureaux, 669 F. Supp. 2d at 234. Indeed, because the Amended Complaint already includes claims for infringement occurring after the certificates of correction were issued and through the life of the patents, the Complaint remains valid and operative. The Court need not take any action for this case to proceed. Cf. D.I. 124 n.10 (recognizing that one option is to “merely confine [the Court]’s decision” and allow the case to proceed).
Finally, the Court should be aware that, to facilitate the efficient resolution of the parties’ disputes, Worlds may move to consolidate its disputes with Activision. As the Court knows, after Worlds filed this lawsuit, Activision sued Worlds in the Central District of California, alleging that Worlds’ products — the exact same Worlds products at issue in Activision’s
Motion for Summary Judgment — infringe patents that Activision recently purchased. Both cases, which are proceeding simultaneously on separate coasts, involve many of the same issues, technologies, witnesses, and prior art references. To avoid such gross inefficiency, Worlds has proposed consolidating the parties’ disputes, but Activision will agree neither to transfer the California case to Massachusetts nor to transfer the Massachusetts case to California. Worlds’ desire is straightforward — to resolve the parties’ disputes expediently, and without undue expense or burden, in one case, one trial, and one appeal. Accordingly, Worlds may seek consolidation of the parties’ disputes in one forum.





Activision Portion Of Joint Submission

Pursuant to the Court’s order of March 13 (D.I. 124) allowing Activision Blizzard’s motion for summary judgment, counsel for the parties met and conferred on March 26 about the appropriate course for the future of this action. During the meet and confer, Worlds asked if Activision would be willing to transfer the present action to the Central District of California and consolidate it with Activision’s lawsuit against Worlds Inc. and Worlds Online Inc. In that lawsuit, Activision has brought claims for patent infringement against Worlds based on two patents that are not at issue in this litigation, and directed to different technologies from the Worlds patents-in-suit here. Because there is little, if any, overlap between Activision’s California lawsuit against Worlds and the present action pending before this Court, Activision stated that it would not agree to consolidate the present action with the California lawsuit.
Worlds further asked (1) whether Activision Blizzard would be willing to consent to

Worlds filing an amended complaint in Massachusetts to assert the corrected patents, and (2) whether Activision Blizzard would be willing to agree to toll the deadline for Worlds to pursue an appeal if the Court issues a final judgment. On the night of March 26, Activision responded by email as follows:
On the first question, Activision Blizzard is willing to agree to proceed on the basis of an amended complaint filed in Massachusetts, if Worlds agrees that any further litigation involving its patents against Activision Blizzard would occur in Massachusetts. We believe that such an agreement would obviate your second question. In any event, we believe that your second question is jurisdictional in nature, and we question whether Activision Blizzard’s agreement or consent would have any effect on the timeframe for Worlds to pursue an appeal.

Does Worlds agree to proceed as suggested above?

On the morning of March 27, Worlds declined to agree to this proposal.

To the extent that Worlds would like to assert its corrected patents against Activision for post-correction accused activities, Activision consents to Worlds filing an amended complaint in





the present action to pursue such infringement claims, subject to the possibility of Activision asserting that such infringement claims are barred by res judicata or other legal principles. It is necessary for Worlds to file an amended complaint to assert the corrected patents in this action. The patents that are currently at issue in this action are the uncorrected versions of the asserted patents. Given the Court’s determination that the uncorrected patents are invalid, Worlds cannot continue to claim infringement by Activision on the basis of the existing complaint. Thus, an amended pleading is needed to define Worlds’ legal claims going forward.
Worlds urges that the present action should continue without the filing of an amended complaint, citing Lamoureux v. AnazaoHealth Corp., 669 F. Supp. 2d 227, 236 (D. Conn. 2009), and Masonite Corp. v. Craftmaster Mfg., Inc., 2011 WL 1642518, at *3 (N.D. Ill. Apr. 29, 2011). But both of those cases actually involved an amended or supplemental complaint to assert
patents for which certificates of correction had issued. As explained in Masonite, 2011 WL

1642518 at *3:

Thus, in the present case, there are two applicable time periods for each corrected patent: before the certificate issued, and after. When the lawsuit was filed, Masonite’s Complaint alleged only infringement of the uncorrected patents. (See generally Compl.) Accordingly, the certificates are not considered a part of the patent for the causes of action alleged in the initial complaint. Under the precedent and authority discussed above, this court concludes that if Masonite is allowed to supplement its pleadings to add claims directed to infringement occurring on or after the dates the certificate of correction issued, the certificates will be effective in this lawsuit as to those claims.

Thus, the cases cited by Worlds show that the present action may not proceed without an amended complaint.
Further, based on the recent communications between counsel for the parties, Worlds will seek to consolidate this action with Activision’s lawsuit against Worlds Inc. and Worlds Online Inc., either in this Court or in the Central District of California. Activision expects to oppose
this. Contrary to Worlds’ assertion of overlap, the two lawsuits involve totally different and





unrelated asserted patents and accused products. For example, the accused products in the present action are Activision’s videogames, not Worlds’ virtual world systems. And Worlds’ prior art systems that are relevant to this action existed in 1995 – an eternity ago in the computer age. In Activision’s California action, the accused products are Worlds’ and Worlds Online’s current and recent virtual world systems, not Worlds’ systems of 19 years ago. Moreover, the relevant witnesses, documents, and other evidence will be almost entirely different between the two lawsuits. Given these differences and this Court’s familiarity with some of the important facts and issues in this action, Activision believes that each lawsuit should proceed in the Court in which it was brought. In any event, transfer or consolidation are issues for another day.





Dated: March 27, 2014

Respectfully submitted,




Worlds, Inc.

By: /s/ Ryan V. Caughey Activision Blizzard, Inc.; Blizzard Entertainment, Inc.; and Activision Publishing, Inc.

By: /s/ Blake B. Greene
Max L. Tribble (admitted pro hac vice)
[e-mail]
Brian D. Melton (admitted pro hac vice)
[e-mail]
Chanler Langham (pro hac vice pending)
[e-mail]
Ryan V. Caughey (admitted pro hac vice)
[e-mail]
SUSMAN GODFREY L.L.P.
1000 Louisiana Street, Suite 5100
Houston, Texas 77002
Telephone: [phone]
Facsimile: [phone]

Joel R. Leeman (BBO # 292070)
[e-mail]
SUNSTEIN KANN MURPHY & TIMBERS LLP
125 Summer Street
Boston, MA 02110-1618
Telephone: [phone]
Facsimile: [phone]

ATTORNEYS FOR PLAINTIFF WORLDS, INC. Blake B. Greene (BBO #681781)
[e-mail] ROPES & GRAY LLP Prudential Tower
800 Boylston Street
Boston, Massachusetts 02199-3600 [phone]

Jesse J. Jenner (pro hac vice) [e-mail] Gene W. Lee (pro hac vice) [e-mail]
Brian P. Biddinger (pro hac vice) [e-mail] Matthew Moffa (pro hac vice) [e-mail] ROPES & GRAY LLP
1211 Avenue of the Americas
New York, New York 10036-8704
T: [phone]
F: [phone]

Kathryn N. Hong (pro hac vice) [e-mail] ROPES & GRAY LLP
1900 University Avenue
6th Floor
East Palo Alto, CA 94303-2284
T: [phone]
F: [phone]

ATTORNEYS FOR DEFENDANTS, ACTIVISION BLIZZARD, INC., BLIZZARD ENTERTAINMENT, INC. AND ACTIVISION PUBLISHING, INC.





CERTIFICATE OF SERVICE

I certify that on the above date, this document was filed through the ECF system and thereupon sent electronically to the registered participants as identified on the Notice of Electronic Filing (NEF).
/s/ Blake B. Greene Blake B. Greene