UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`_______________
`
`
`BUNGIE, INC.,
`Petitioner
`
`v.
`
`WORLDS INC.,
`Patent Owner
`
`_______________
`
`Case IPR2015-01325
`Patent 8,145,998
`
`_______________
`
`
`PATENT OWNER WORLDS INC.’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`BUNGIE - EXHIBIT 1054
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
`
`

`

` 
`
`
`
` 
`
`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 4
`a. About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”) ................... 4
`b. The Petition Challenges Claims 1-3, 7-8, and 11-20 of the ‘998 Patent .......... 7
`c. Claim Construction ......................................................................................... 10
`d. Petitioners’ Grounds of Challenge Rely On Art Already Considered by the
`USPTO Examiner ................................................................................................. 11
`III. Argument ........................................................................................................ 13
`a. Petitioner’s Theories of Obviousness Fail to Consider Each Recited Feature,
`and Fail to Establish a Reason for the Alleged Modification of Durward ........... 13
`i. Durward’s Purpose is to Limit Data Communications in a Virtual Reality
`Network ................................................................................................................. 13
`ii. Petitioner’s Proposed Combination is Not Supported by Evidence, and
`Marathon’s View-Switching Feature is Not Compatible with Durward’s Reduced
`Data Communications Scheme ............................................................................. 14
`iii. Even if Combinable, Durward, Tracey, and Marathon Fail to Disclose all
`Relied-upon Features ............................................................................................ 20
`b. Petitioner’s Challenges Also Fail to Establish Obviousness of the Dependent
`Claims ................................................................................................................... 21
`c. The Challenge of Ground 4 Fails to Establish Obviousness of Claim 19 ...... 22
`d. The Petition Fails to Name All Real Parties in Interest ................................. 24
`IV. Conclusion ...................................................................................................... 32
` 
`
`
`
`
`
`ii 
` 
`
`

`

`Cases 
`
`TABLE OF AUTHORITIES
`
`Askeladden LLC v. McGhie et al., IPR2015-00122 (PTAB Mar. 16, 2015) (Paper
`34) ......................................................................................................................... 31
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453 (PTAB
`Jan. 6, 2015) (Paper 88) ........................................................................................ 24
`Gonzalez v. Banco Cent. Corp., 27 F.3d 751 (1st Cir. 1994) .................................. 25
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .......................... 10, 25
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 17
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01092
`(PTAB Jan. 13, 2015) (Paper 9) ........................................................................... 17
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 25
`Statutes 
`
`35 U.S.C. § 312(a)(2) ........................................................................................ 24, 31
`35 U.S.C. § 325(d) ................................................................................................... 13
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ........ 10, 25
`Rules 
`
`37 C.F.R. § 42.8(b)(1) ....................................................................................... 24, 31
`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 26
`37 C.F.R. § 42.65(a) ................................................................................................. 16
`37 C.F.R. § 42.100(b) .............................................................................................. 10
`
`
`
`
`
`iii 
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`

`

`
`
`Exhibit
`
`2001
`
`2002
`
`
`2003
`
`
`2004
`
`
`2005
`
`
`2006
`
`
`2007
`
`
`2008
`
`
`2009
`
`
`2010
`
`
`2011
`
`
`
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`
`
`Description
`
`Transcript of Conference Call of July 23, 2015
`
`“Exhibit 1” to Exhibit 2001 (Software Publishing and
`Development Agreement, dated April 16, 2010)
`
`Proof of Service in Worlds Inc. v. Activision Blizzard, Inc., et
`al., Case No. 1:12-cv-10576 (D. Mass.)
`
`Letter dated November 13, 2014, from Worlds’ litigation
`counsel to Activision’s litigation counsel
`
`Patent Owner’s First [Proposed] Set of Requests for Production
`of Documents and Things to Petitioner (Nos. 1-6)
`
`Claim Construction Order dated June 26, 2015 in Worlds Inc. v.
`Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
`Mass.)
`
`Complaint in Worlds Inc. v. Activision Blizzard, Inc., et al.,
`Case No. 1:12-cv-10576 (D. Mass.)
`
`Copilevitz, Todd, “Here’s a chat room worth talking about,”
`The Dallas Morning News, June 11, 1995
`
`Smith, Gina, “Whole new Worlds on-line,” San Francisco
`Examiner, May 14, 1995
`
`Amended Complaint in Worlds Inc. v. Activision Blizzard, Inc.,
`et al., Case No. 1:12-cv-10576 (D. Mass.)
`
`Proof of Service of Amended Complaint in Worlds Inc. v.
`Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
`Mass.)
`
`
`
`iv 
` 
`
`

`

`IPR2015-01325
`U.S. Patent No. 8,145,998
` 
`
`
`I.
`
`Introduction
`
` 
`
`Bungie, Inc. (“Bungie” or “Petitioner”) filed the current Petition (“Petition”)
`
`for inter partes review of claims 1-3, 7-8, and 11-20 of U.S. Patent No. 8,145,998
`
`(“the ’998 patent” or “Leahy”) on June 1, 2015. In the Petition, Bungie challenges
`
`claims 1-3, 7, 8, 11, 12, 16, 18, and 20 of the ‘998 patent as allegedly obvious over
`
`three references, including U.S. Patent No. 5,659,691 issued to Durward et al.
`
`(“Durward”) (Ex. 1008), an article entitled Touring Virtual Reality Arcades by
`
`David Tracey (“Tracey”) (Ex. 1025), and a manual for the computer game
`
`Marathon (“Marathon”) (Ex. 1021).
`
`In Grounds 2-3, Bungie also challenges claims 13-15 and 17as allegedly
`
`obvious over Durward in view of Tracey and Marathon, further in view of separate
`
`secondary references, including U.S. Patent No. 5,021,976 to Wexelblat et al.
`
`(“Wexelblat”) (Ex. 1020), and U.S. Patent No. 5,777,621 to Schneider
`
`(“Schneider”) (Ex. 1019). Finally, in Ground 4, Bungie challenges claim 19 as
`
`allegedly obvious over Durward in view of “A Software Architecture for the
`
`Construction and Management of Real-Time Virtual Worlds” by David Pratt
`
`(“Pratt”) (Ex. 1027).
`
` 
`
`1 
`
`

`

`But the Petition includes crucial gaps in establishing even a reasonable
`
`likelihood of success on its foundational combinations of Durward and Marathon,
`
`and these gaps are fatal to each of this Petition’s obviousness-based challenges.
`
`Durward seeks to “reduce the amount of data communicated” in a virtual
`
`reality network such that access is available to “multiple users located at different
`
`remote physical locations” and who are communicating via “conventional dialup
`
`telephone lines.” Durward at 1:35-51; 2:1-16. To achieve this, Durward explains
`
`that the “data communicated to the user typically corresponds to the portion of the
`
`virtual space viewed from the perspective of the virtual being.” Id. at 1:65-67. As
`
`part of the reduction of data communicated to the virtual user, Durward
`
`purposefully does not transmit data necessary for a user to view the virtual space
`
`from other uses.
`
`Marathon, which Petitioner relies upon to modify Durward, implements
`
`exactly the opposite scheme from Durward. Namely, Marathon “lets you switch
`
`views to the other players in the game by pressing the delete key.” Marathon at 18.
`
`But in order to switch views, the workstation cannot only receive the reduced data
`
`per Durward. Rather, the workstation must receive all information necessary to
`
`view the virtual space from other points of view so it is capable of switching views
`
`“to the other players.” The Petitioner’s proposed combination of Marathon and
`
`Durward has the effect of completely frustrating and undoing Durward’s scheme
`
`2 
` 
`
`

`

`for reducing data communications. Further, Petitioner and its expert never
`
`recognize, much less reconcile this hindrance to the combination.
`
`Further, Petitioner’s proposed modification of Durward with Pratt suffers
`
`from the same defect; the combination of these references completely frustrates
`
`Durward’s scheme of reducing data communications.
`
`Further, the Petition fails to identify all real parties in interest, and
`
`particularly excludes real party in interest Activision Publishing, Inc.
`
`(“Activision”), which has been engaged in infringement litigation with Patent
`
`Owner Worlds Inc. on (inter alia) the ‘998 patent since 2012. See Ex. 2010 at 10-
`
`11; Ex. 2011. Through a pre-existing substantive legal relationship with Petitioner,
`
`Activision possessed the contractual right to review and approve Petitioner’s legal
`
`reviews related to intellectual property, including the legal reviews underlying this
`
`Petition. Additionally, Activision provided funding to Bungie for the development
`
`of a software gaming product. This funding was intended by Activision and Bungie
`
`to cover all tasks under their agreement, including the legal review underlying this
`
`Petition. Based on these factors, Activision is an unnamed real party in interest
`
`having at least an opportunity to control this proceeding through its
`
`review/approval and funding. This failure to name Activision renders the Petition
`
`defective on its face.
`
`3 
` 
`
`

`

`For at least these reasons presented above and explained in more detail
`
`below, this Petition for inter partes review of the ‘998 patent should be denied with
`
`no trial instituted.
`
`II.
`
`Background
`
` 
`
`a. About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”)
`
`In Petitioner’s Opposition to Patent Owner’s Motion for Routine or
`
`Additional Discovery (paper 10), Petitioner opens its Background discussion by
`
`characterizing Patent Owner Worlds Inc. as a “notorious patent assertion entity.”
`
`Paper 10 at 2 (though citing no evidence for this derogatory characterization).
`
`Whatever negative connotation was intended by Bungie through this statement, it
`
`is undermined by Worlds’ reputation at the dawn of 3-D virtual reality
`
`development, when Worlds unveiled a 3-D virtual space referred to as “Worlds
`
`Chat” in 1995 and distributed it to the public for free. Articles written that year and
`
`published in such periodicals as the Dallas Morning News touted Worlds Chat as
`
`“the hottest innovation the Internet will see this year,” and noteworthy for “the
`
`potential it brings to cyberspace.” Ex. 2008. In an article published in the San
`
`Francisco Examiner, Gina Smith reported that Worlds Chat is “one of the first
`
`examples of virtual reality on the Internet I’ve seen.” Ex. 2009 at 1. Perhaps as a
`
`result, Worlds drew the attention of Steven Spielberg, who “announced that his
`
`4 
` 
`
`

`

`nonprofit Starbright Foundation is working with Worlds, Intel, UB Networks and
`
`Sprint to create a 3-D environment where hospitalized children can play and
`
`socialize with each other.” Id. at 3.
`
`Further deflating Petitioner’s characterization of Patent Owner Worlds Inc.
`
`as a “notorious patent assertion entity,” Worlds’ employees developed the
`
`technology leading to the ‘998 patent, rather than acquiring it for the sole purpose
`
`of pursuing litigation. Coming out of Worlds’ innovation associated with Worlds
`
`Chat was the technology that provides the backbone for the patent at issue here.
`
`The ‘998 patent was filed as U.S. Patent Application No. 12/406,970 on March 19,
`
`2009, and claims priority to and the benefit of U.S. Provisional Patent Application
`
`No. 60/020,296, filed on November 13, 1995. Linking the ‘998 patent to this
`
`provisional application, the ‘998 patent also claims priority to a chain of U.S. non-
`
`provisional patent applications, including U.S. Patent Application Nos.
`
`12/353,218; 11/591,878; 09/632,154; and 08/747,420. The title of the ‘998 patent
`
`is “SYSTEM AND METHOD FOR ENABLING USERS TO INTERACT IN A
`
`VIRTUAL SPACE.”
`
`In the Background of the ‘998 patent, Leahy describes the difficulty of a
`
`“client-server system” for 3-D virtual reality “game playing, where the positions
`
`and actions of each user need to be communicated between all the players to
`
`inform each client of the state changes (position, actions, etc.) which occurred at
`
`5 
` 
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`

`

`the other clients.” Leahy at 1:61-64 (emphasis added). Per Leahy, the prior “peer-
`
`to-peer architecture” required many messages to provide the state change updates,
`
`and because of the heavy processing loads and limited capabilities of a workstation
`
`in a 3-D environment, this requirement to process many messages limited “the
`
`number of clients which can be connected to the network.” Id. at 2:1-6.
`
`As an improvement, Leahy describes an embodiment in which the virtual
`
`world server is “much more discriminating as to what data is provided to each
`
`client[].” Id. at 3:52-53. Additionally, to handle the remote avatar positions
`
`received by a client, the client includes “a way to filter out avatars” for display
`
`using, according to various embodiments, proximity, user ID, or a crowd control
`
`function (which is “needed in some cases to ensure that neither client 60 nor user A
`
`get overwhelmed by the crowds of avatars likely to occur in a popular virtual
`
`world.”). Id. at 6:4-5; 5:39-41.
`
`In an embodiment, N represents a server variable setting the “maximum
`
`number of other avatars A will see,” and N’ represents a client variable setting the
`
`“maximum number of avatars client 60 wants to see and/or hear.” Id. at 5:42-46.
`
`Through the server’s application of such criteria, the server can implement the
`
`crowd control function. For example, the server 61 can include a “user object 64,”
`
`which “maintains a list of the N nearest neighboring remote avatars … in the
`
`room.” Id. at 14:32-34. Leahy describes the “process of notifying client 60 of only
`
`6 
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`
`

`

`the N nearest neighbors … as part of crowd control” on the server side. Id. at
`
`14:38-40. The client may then use “position data to select N’ avatars from the N
`
`avatars provided by the server” for display of the N’ avatars. Id. at 6:12-13.
`
`Thus, according to the disclosed embodiments discussed above, Leahy
`
`discloses server-side selection of avatars, such that the server may notify the client
`
`of the positions of only certain relevant neighbors, and the client has the capability
`
`to further determine the avatars to be displayed based on the received positions.
`
`b. The Petition Challenges Claims 1‐3, 7‐8, and 11‐20 of the ‘998
`Patent
`
`In this Petition, Petitioner challenges the validity of claims 1-3, 7-8, and 11-
`
`20 of the ‘998 patent. Among these claims, claims 1, 2, 18, and 19 are independent.
`
`Claim 1 is a method claim for “displaying interactions of a local user avatar … and
`
`a plurality of remote user avatars.” Among the steps of this method is “generating”
`
`a rendering, and also “switching” between two claimed renderings. Claim 2 is a
`
`system claim reciting a processor’s instructions to “generate” and “switch” in a
`
`manner similar to those features of claim 1. Claim 18 is also a system claim and
`
`includes similar “generate” instructions but also recites a “change” instruction of
`
`the “perspective view of the rendering.” Finally, claim 19 (like claim 2) is also a
`
`system claim reciting a processor’s instructions to “generate” and “switch”
`
`between renderings.
`
`7 
` 
`
`

`

`Claim 1 is presented below for reference:
`
`1. A method for displaying interactions of a local user avatar of
`a local user and a plurality of remote user avatars of remote users
`interacting in a virtual environment, the method comprising:
`receiving, at a client processor associated with the local user,
`positions associated with less than all of the remote user avatars in
`one or more interaction rooms of the virtual environment, wherein the
`client processor does not receive position information associated with
`at least some of the remote user avatars in the one or more rooms of
`the virtual environment, each avatar of the at least some of the remote
`user avatars failing to satisfy a condition imposed on displaying
`remote avatars to the local user;
`generating, on a graphic display associated with the client
`processor, a rendering showing position of at least one remote user
`avatar; and
`switching between a rendering on the graphic display that
`shows at least a portion of the virtual environment to the local user
`from a perspective of one of the remote user avatars and a rendering
`that allows the local user to view the local user avatar in the virtual
`environment.
`(emphasis added). Independent claim 2 includes features similar to the above-
`
`emphasized features of claim 1. For example, claim 2 recites (in relevant part) a
`
`“processor programmed using the instructions to: receive position information
`
`associated with less than all of the remote user avatars …” and also to “switch
`
`between a rendering on the graphic display that shows the virtual world to the local
`
`8 
` 
`
`

`

`user from a third user perspective and a rendering that allows the local user to view
`
`the local user avatar in the virtual world.”
`
`Claims 18 and 19 also recite similar “processor programmed using the
`
`instructions” features; though the claim 18 recites “a processor programmed using
`
`the instructions to: … change in three dimensions the perspective view of the
`
`rendering on the graphic display of the virtual world in response to user input,” and
`
`claim 19’s processor is programmed to (inter alia) “switch between a rendering in
`
`which all of a perspective view of a local user avatar of the local user is displayed
`
`and a rendering in which less than all of the perspective view is displayed.”
`
`According to an embodiment, the ‘998 patent describes renderings on the
`
`graphic display to show views other than views of the local user’s avatar:
`
`Each user interacts with a client machine (not shown) which
`produces a display similar to screen display 10, but from the
`perspective of the avatar for that client/user. Screen display 10 is the
`view from the perspective of a third user, D, whose avatar is not
`shown since D's avatar is not within D's own view. Typically, a user
`cannot see his or her own avatar unless the chat system allows “ou[t]
`of body” viewing or the avatar's image is reflected in a mirrored
`object in the virtual world.
`Leahy at 1:30-38. As such, claim 1 recites two renderings, one of which displays
`
`“at least a portion of the virtual environment … from a perspective of one of the
`
`9 
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`

`

`remote user avatars,” and the other displays a “view [of] the local user avatar in the
`
`virtual environment.”
`
`Petitioner alleges that claims 1, 2, and 18 are obvious over Durward in view
`
`of Tracey, further in view of Marathon, and alleges that claim19 is obvious over
`
`Durward in view of Pratt. The Petition was also supported by the Declaration of
`
`Dr. Michael Zyda. Ex. 1002. But as will be explained below, the Petition fails to
`
`establish each feature of the ‘998 patent’s claim 1 within the disclosures of
`
`Durward, Tracey, and Marathon, and further fails to justify the modification of
`
`Durward by Marathon. On a similar basis, the Petition fails to meet its burden as to
`
`each of the remaining independent claims of the ‘998 patent.
`
`c. Claim Construction
`
`The standard for construing claim terms in this proceeding is not in dispute.
`
`Since the ‘998 patent is not expired, the Board will interpret claims using the
`
`broadest reasonable interpretation as understood by one of ordinary skill in the art
`
`and consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
`
`10 
` 
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`

`

`For the purpose of this preliminary stage of the inter partes review, the
`
`Board need not construe any of the claim terms to recognize that Petitioner’s
`
`alleged grounds of challenge fail to establish the requisite likelihood of success
`
`against the ‘998 patent’s claims. To simplify this Preliminary Response only, and
`
`without waiving its right to identify terms for construction, or present constructions
`
`or evidence in support in a Response (should one be necessary), Patent Owner will
`
`respond to Petitioner’s challenges based on Petitioner’s proposed constructions.1
`
`d. Petitioners’ Grounds of Challenge Rely On Art Already Considered
`by the USPTO Examiner
`
`The purported grounds of rejection are as follows:
`
`Ground Basis
`
`References
`
`1
`
`Obviousness of Claims 1-3,
`
`Durward in view of Tracey, further in
`
`7, 8, 11, 12, 16, 18, and 20
`
`view of Marathon
`
`                                                            
`1 Patent Owner notes that the standards of construction applied in this proceeding
`
`are different from the standards applied in the related litigation. The District Court
`
`Claim Construction Order, issued June 26, 2015, is attached as Ex. 2006, but
`
`Patent Owner reserves its right to present its claim construction arguments in a full
`
`Response, should one be necessary. 
`
`11 
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`

`

`2
`
`Obviousness of Claim 13-15 Durward in view of Tracey, further in
`
`view of Marathon, further in view of
`
`Schneider
`
`3
`
`Obviousness of Claim 17
`
`Durward in view of Tracey, further in
`
`view of Marathon, further in view of
`
`Wexelblat
`
`4
`
`Obviousness of Claim 19
`
`Durward in view of Pratt
`
`
`
`Throughout this Preliminary Response, for ease of understanding, Patent
`
`Owner will refer to these prior art references by the names indicated above, rather
`
`than by exhibit number. These prior art references are described below at Section
`
`III, in conjunction with the arguments presented in this Preliminary Response.2
`
`Further, the Petition’s Grounds rely upon Durward, but Durward was
`
`already considered by the examiner during prosecution, and the claims of the ‘998
`
`patent issued over this subject matter. Indeed, Durward is listed in the References
`
`Cited portion of the ‘998 patent. See Ex. 1001 at 2.
`                                                            
`2 Patent Owner reserves all right to present further argument and evidence related
`
`to these prior art references and the content of the Petition and supporting Exhibits
`
`if Inter Partes Review is instituted, consistent with the Board’s Rules and practice.
`
`No waiver is intended by any argument withheld at this stage of the proceeding. 
`
`12 
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`
`

`

`Thus, even if the Petition were not deficient in its grounds of challenge
`
`based on these references for the reasons discussed below, 35 U.S.C. § 325(d)
`
`gives the Board statutory discretion to dismiss the Petition since the same or
`
`substantially the same prior art was previously presented to the USPTO: “[i]n
`
`determining whether to institute or order a proceeding under this chapter, chapter
`
`30, or chapter 31, the Director may take into account whether, and reject the
`
`petition or request because, the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” (emphasis added). The
`
`claims of the ‘998 patent were rightfully allowed over Durward. The Board should
`
`not disturb the examiner’s correct conclusion.
`
`III. Argument
`a. Petitioner’s Theories of Obviousness Fail to Consider Each Recited
`Feature, and Fail to Establish a Reason for the Alleged
`Modification of Durward
`i. Durward’s Purpose is to Limit Data Communications in a
`Virtual Reality Network
`
`Durward’s background introduces the concept of interaction in a multi-user
`
`virtual reality network, and discusses that virtual reality “is often available to the
`
`general public without great inconvenience.” Durward at 1:40-43. In order to allow
`
`multiple users to communicate “via conventional dialup telephone lines,” a
`
`“system periodically updates the [central] database and communicates the updated
`
`13 
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`
`

`

`portions of the virtual space to the users.” Id. at 2:5-9. However, rather than
`
`sending all updates to all users, “the data communicated to the user typically
`
`corresponds to the portion of the virtual space viewed from the perspective of the
`
`virtual being.” Id. at 1:65-67.
`
`Durward’s scheme therefore limits the amount of data communicated to
`
`each user such that the user only receives the data for “the perspective of the
`
`virtual being.” Id. The converse of this disclosure means that users do not receive
`
`data for the perspectives of other users’ viewpoints, and therefore cannot display
`
`the virtual reality space from another user’s perspective. Petitioner’s theory of
`
`obviousness seeks to change that aspect of Durward, and in the process completely
`
`frustrates Durward’s entire purpose.
`
`ii. Petitioner’s Proposed Combination is Not Supported by
`Evidence, and Marathon’s View‐Switching Feature is Not
`Compatible with Durward’s Reduced Data Communications
`Scheme
`
`Petitioner’s theory of challenge characterizes the “switching” element of
`
`claim 1 as a “perspective-switching feature” and alleges that this feature was
`
`“common in interactive games” prior to the ‘998 patent’s earliest effective date.
`
`Pet. at 7. According to Petitioner, the Marathon manual allows users to “switch
`
`views to the other players in the game by pressing the delete key.” Pet. at 8 (citing
`
`Marathon at 18; Ex. 1002 at ¶49). What the Marathon manual fails to explain is
`
`why this particular feature is included or desirable in Marathon.
`
`14 
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`
`

`

`Petitioner also concedes that Durward fails to disclose “switching the
`
`displayed perspective among multiple viewpoints.” Pet. at 16. In order to remedy
`
`this shortcoming of Durward, Petitioner looks to both Tracey’s “out-of-body”
`
`perspective and Marathon’s alleged “perspective-switching feature.” Petitioner
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`specifically argues that “to the extent that Durward does not expressly disclose
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`switching between a display showing the perspective of one of the remote user
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`avatars and a rendering that allows the local user to view the local user avatar in
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`the virtual environment,” this would have been allegedly obvious to one of
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`ordinary skill in view of Tracey and Marathon. Pet. at 24; 16-17.
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`The basis for Durward’s modification, according to Petitioner, is that
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`Marathon and Tracey allegedly “describe video games” that allegedly include
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`“features designed to increase a user’s enjoyment and use of the virtual
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`environment product.” Pet. at 41. This allegation, however, lacks citation to any
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`evidence at all. Petitioner continues by alleging that the “ability to switch the
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`display among the perspectives of multiple users and to an out-of-body view are
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`two such features.” Id. (citing to Ex. 1002, ¶207). Later, again without support,
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`Petitioner alleges that these features are “consumer-friendly gaming features.” Pet.
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`at 41. But even the Zyda declaration’s ¶207 provides no evidence in support of
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`Petitioner’s characterizations of Marathon’s and Tracey’s view-switching features.
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`Zyda declaration (Ex. 1002, ¶207) in fact presents the exact same argument as the
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`Petition, alleging that Marathon and Tracey include “features designed to increase
`
`a user’s enjoyment and use of the virtual environment product” and that the
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`“ability to switch the display among the perspectives of multiple users is one such
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`feature.” Ex. 1002, ¶207. But Ex. 1002 also fails to include any basis for Dr.
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`Zyda’s allegation, thus rendering it worthy of little to no weight. Indeed, Dr. Zyda
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`fails to clarify whether this conclusion is his own or the conclusion that would
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`have been reached by a person of ordinary skill in the art. Dr. Zyda further fails to
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`establish how his conclusion regarding “features designed to increase a user’s
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`enjoyment and use of the virtual environment product” would be known to a
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`person of ordinary skill in the art according to his own standard for that person.
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`In essence, Dr. Zyda has parroted the conclusions asserted by Petitioner,
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`without presenting any evidence to substantiate those conclusions. Compare Ex.
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`1002, ¶¶206-2103 with Pet. at 40-42. Paragraphs 206-210 of Ex. 1002 lack the
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`underlying basis for Dr. Zyda’s conclusions and therefore should be accorded little
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`to no weight. See 37 C.F.R. § 42.65(a).
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`The Petitioner also argues that “there would be no particular reason
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`precluding the proposed combination” of Durward, Tracey, and Marathon. Pet. at
`                                                            
`3 Although the Petition is focused on combinations based on Durward, the rationale
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`paragraph beginning on p. 40 of the Petition begins by incorrectly discussing the
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`Funkhouser reference from IPR2015-01321.
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`42. But the law of obviousness does not presume a combination to be appropriate
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`in all instances, unless rebutted by some reason precluding it. Indeed, even if all
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`elements of the challenged claims were in existence as of the ‘998 patent’s earliest
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`effective filing date, the law makes clear that the mere existence of the claimed
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`elements in the prior art is not enough to establish obviousness of the challenged
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`claims. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a patent
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`composed of several elements is not proved obvious merely by demonstrating that
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`each of its elements was, independently, known in the prior art.”). The Board is
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`also well aware of and applies this standard. See e.g. LG Display Co., Ltd. v.
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`Innovative Display Technologies LLC, IPR2014-01092, slip. op. at 8 (PTAB Jan.
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`13, 2015) (Paper 9).
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`Further, since Grounds 1-3 all depend upon Petitioner’s alleged modification
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`of Durward with Tracey and Marathon, and since Petitioner has only presented
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`unsubstantiated legal conclusions without any evidence to support the
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`modification, each of these Grounds 1-3 is deficient on its face and should be
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`dismissed without institution.
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`Moreover, Petitioner is completely wrong that “there would be no particular
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`reason precluding the proposed combination” of Durward, Tracey, and Marathon
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`in the manner proposed. Pet. at 42. Marathon discloses that users may “switch
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`views to the other players in the game by pressing the delete key.” Marathon at 18.
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`But as Petitioner concedes, Durward is directed to reducing “the amount of data
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`communicated between the [central] computer and each user.” Pet. at 7 (citing
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`Durward at 2:9-12). As a result, Durward discloses that “[p]referably, the data
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`communicated to the user typically corresponds to the portion of the virtual space
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`viewed from the perspective of the virtual being.” Durward at 1:65-67. To limit the
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`transmission of unnecessary data, the processor at Fig. 2’s central control unit
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`“determines which user is to receive which data according to the relevant and
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`priority spaces defined for that user.” Id. at 6:41-44.
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`But Marathon’s view-switching would require Durward’s users to receive
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`data for a much greater portion of the virtual space, and not just the relevant and
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`priority spaces for that user. Indeed, each user would need to possess the
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`perspective data for all “other players in the game” so that a rendering from any of
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`the other players’ remote user avatars’ perspective could be achieved “by pressing
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`the delete key.” Marathon at 18. Petitioner fails to acknowledge that this revision
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`would completely nullify Durward’s goal of reducing “the amount of data
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`communicated between the [central] computer and each user.” Durward at
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`Abstract; 2:9-12.Even Dr. Zyda purports to incorporate Marathon’s alleged
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`“consumer-friendly gaming features” with Durward to create “a networked virtual
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`environment system combining