Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 13
`
` Entered: November 30, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01269
`Patent 7,493,558 B2
`
`____________
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Bungie, Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 4–9 of U.S. Patent No. 7,493,558 B2 (Ex. 1001, “the
`’558 patent”). Paper 3 (“Pet.”). Worlds Inc. (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 12 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`
`BUNGIE - EXHIBIT 1056
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
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`IPR2015-01269
`Patent 7,493,558 B2
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, we
`conclude that there is a reasonable likelihood that Petitioner would prevail in
`establishing the unpatentability of claims 4–9 of the ’558 patent.
`I. BACKGROUND
`A. THE ’558 PATENT
`The ’558 patent discloses a “client-server architecture” for a “three-
`dimensional graphical, multi-user, interactive virtual world system.”
`Ex. 1001, [57], 3:1–3. In the preferred embodiment, each user chooses an
`avatar to “represent the user in the virtual world,” id. at 3:19–22, and
`“interacts with a client system,” which “is networked to a virtual world
`server,” id. at 3:8–10. “[E]ach client . . . sends its current location, or
`changes in its current location, to the server.” Id. at 3:35–38; see id. at 2:39–
`42. The server, in turn, sends each client “updated position information” for
`neighbors of the client’s user. Id. at [57], 2:39–42, 3:35–38, 14:29–36.
`The client executes a process to render a “view” of the virtual world
`“from the perspective of the avatar for that . . . user.” Id. at [57], 2:32–35,
`3:27–29, 4:48–50, 7:50–52. This view shows “avatars representing the other
`users who are neighbors of the user.” Id. at [57], 2:35–37.
`B. ILLUSTRATIVE CLAIM
`Challenged claims 4, 6, and 8 of the ’558 patent are
`independent claims. Id. at 21:58–23:5. Claim 4 is illustrative:
`4. A machine-readable medium having a program stored in the
`medium, the program enabling a plurality of users to interact in
`a virtual space, wherein each user of the plurality of users is
`associated with a different client process on a different
`computer, wherein each client process has an avatar associated
`
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`with said each client process, and wherein said each client
`process is configured for communication with a server process,
`wherein the program comprises instructions for:
`(a) monitoring, by said each client process, a position of the
`avatar associated with said each client process;
`(b) transmitting, by said each client process to the server
`process, the position of the avatar associated with said
`each client process;
`(c) receiving, by said each client process from the server
`process, the positions of avatars in a set associated with
`said each client process, wherein the set associated with
`said each client process does not include at least one
`avatar of the avatars associated with the client processes
`of the plurality of users, the at least one avatar not being
`associated with said each client process; and
`(d) determining from the positions received in step (C), by
`said each client process, avatars that are to be displayed
`to the user associated with said each client process.
`Id. at 21:58–22:13.
`
`C. ASSERTED PRIOR ART
`The Petition relies upon the following references:
`U.S. Patent No. 5,659,691 (filed Sept. 23, 1993) (issued Aug. 19, 1997)
`(Ex. 1008, “Durward”);
`
`
`U.S. Patent No. 5,777,621 (filed June 7, 1995) (issued July 7, 1998)
`(Ex. 1019, “Schneider”);
`
`
`Thomas A. Funkhouser & Carlo H. Séquin, Adaptive Display Algorithm for
`Interactive Frame Rates During Visualization of Complex Virtual
`Environments, in COMPUTER GRAPHICS PROCEEDINGS: ANNUAL
`CONFERENCE SERIES 247 (1993) (Ex. 1017, “Funkhouser ’93”); and
`
`
`Thomas A. Funkhouser, RING: A Client-Server System for Multi-User
`Virtual Environments, in 1995 SYMPOSIUM ON INTERACTIVE 3D
`GRAPHICS 85 (1995) (Ex. 1005, “Funkhouser”).
`
`
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`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 11.
`Challenged Claims Basis
`Reference(s)
`4, 6, 8, and 9
`§ 102 Funkhouser
`5 and 7
`§ 103 Funkhouser and Funkhouser ’93
`4, 6, 8, and 9
`§ 102 Durward
`5 and 7
`§ 103 Durward and Schneider
`
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`We interpret claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].”1 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Under this standard, we
`presume a claim term carries its “ordinary and customary meaning.” In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Here, Petitioner proffers claim terms for construction. Pet. 11–14.
`Patent Owner responds to the asserted grounds using Petitioner’s proposed
`constructions. Prelim. Resp. 10. For purposes of this Decision, we
`determine that none of the claim terms requires an express construction to
`resolve the issues currently presented by the patentability challenges. See
`
`1 The parties agree that the broadest reasonable interpretation standard
`applies to the ’558 patent. See id.; Prelim. Resp. 9. Based on our review of
`the patent, however, the patent may have expired recently or may be
`expiring shortly. See Ex. 1001, [60], [63]. For expired patents, we apply the
`claim construction standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005). Our analysis in this Decision is not impacted by whether we
`apply the broadest reasonable interpretation or the Phillips standard. We,
`however, expect the parties to address, with particularity, in their future
`briefing the expiration date of claims 4–9 of the ’558 patent and if necessary
`to address this issue, to file Provisional Application No. 60/020,296 as an
`exhibit.
`
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that only claim terms that “are in controversy” need to be
`construed and “only to the extent necessary to resolve the controversy”). 
`B. ANTICIPATION BY FUNKHOUSER
`We turn to Petitioner’s assertion that Funkhouser anticipates claims 4,
`
`6, 8, and 9 of the ’558 patent. Pet. 15–31.
`1. Printed Publication
`Petitioner has made a sufficient showing that Funkhouser qualifies as
`prior art under 35 U.S.C. § 102(a),2 because Funkhouser was a printed
`publication by April 12, 1995—before the earliest priority date of the
`’558 patent, November 13, 1995. Id. at 6–7; Ex. 1001, [60]. In determining
`whether a reference is a “printed publication,” “the key inquiry is whether or
`not [the] reference has been made ‘publicly accessible.’” In re Klopfenstein,
`380 F.3d 1345, 1348 (Fed. Cir. 2004). A reference is “publicly accessible”
`if the reference “has been disseminated or otherwise made available to the
`extent that persons interested and ordinarily skilled in the subject matter . . .
`exercising reasonable diligence, can locate it and recognize and comprehend
`therefrom the essentials of the claimed invention without need of further
`research or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445
`F.3d 1374, 1378 (Fed. Cir. 2006) (citations omitted).
`Funkhouser (Ex. 1005) is an article that appears in a collection of
`articles, titled 1995 SYMPOSIUM ON INTERACTIVE 3D GRAPHICS (Ex. 1006)
`(“1995 Symposium Book”). Ex. 1005; Ex. 1006, cover, 1–3, 85; Ex. 1002
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29
`(2011), revised 35 U.S.C. §§ 102–103, effective March 16, 2013. Because
`the ’558 patent has an effective filing date before this date, we refer to the
`pre-AIA version of §§ 102 and 103.
`
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`¶ 41. The 1995 Symposium Book was compiled for a symposium sponsored
`by the Association for Computing Machinery (“ACM”), held on April 9–12,
`1995 (“1995 Symposium”). Ex. 1006, cover, 1–3, 85; Ex. 1002 ¶¶ 41–42.
`Dr. Michael Zyda—who was the chairperson of the 1995 Symposium—
`testifies that the symposium gathered “many of the top researchers in the
`fields of virtual reality systems, computer graphics, and real-time interactive
`3D.” Ex. 1002 ¶¶ 41–42; Ex. 1006, cover. According to Dr. Zyda, “[o]ver
`250 participants attended the 1995 [S]ymposium and each was provided
`with a copy of the 1995 [Symposium Book].” Ex. 1002 ¶ 42. In addition,
`Dr. Zyda testifies that copies of the book were available from the ACM. Id.;
`see Ex. 1006, copyright page (“A limited number of copies are available at
`the ACM member discount.”). The 1995 Symposium Book and Funkhouser
`feature a 1995 copyright date and permit copying, generally without a fee
`and with “a fee and/or specific permission” if for “direct commercial
`advantage.” Ex. 1006, copyright page, 85; Ex. 1005, 85.
`In light of this evidence of Funkhouser’s distribution and accessibility,
`Petitioner has proffered adequate evidence that an interested ordinarily
`skilled artisan, “exercising reasonable diligence,” could have obtained
`Funkhouser no later than April 12, 1995—the last day of the 1995
`Symposium. See Mass. Inst. of Tech. v. Ab Fortia, 774 F.2d 1104, 1109
`(Fed. Cir. 1985) (holding paper to be a prior art printed publication where
`the paper was “disseminated without restriction to at least six persons” and
`“between 50 and 500” ordinary artisans were “informed of its contents by
`[an] oral presentation” before the critical date).
`Patent Owner “denies that Funkhouser was published” before the date
`of invention of the challenged claims of the ’558 patent, as it must have been
`to qualify as prior art under 35 U.S.C. § 102(a). Prelim. Resp. 15 & n.3.
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`Patent Owner appears to take the position that the subject matter recited in
`the ’558 patent claims was conceived and reduced to practice before
`Funkhouser was published, arguing that by April 12, 1995, its Worlds Chat
`“was released to the public and drawing . . . attention,” with a supporting
`citation to two articles. Id. (citing Ex. 2008, 2009). These articles, however,
`were published in May 1995 and June 1995—after April 12, 1995.
`Ex. 2008; Ex. 2009, 3. Moreover, Patent Owner fails to make any showing
`regarding how these articles or Worlds Chat connect to the claim language.
`Thus, on the present record, there is insufficient evidence that the subject
`matter recited in the challenged claims of the ’558 patent was invented
`before April 12, 1995.
`
`2. Funkhouser
`Funkhouser discloses a system, with a “client-server design,” that
`“supports real-time visual interaction between a large number of users in a
`shared 3D virtual environment.” Ex. 1005, 85. In the system, each user is
`represented “by an entity,” and each entity is managed by a client
`workstation. Id. at 85, 87. Servers manage the communication between
`clients. Id. at 87. Specifically, “[c]lients do not send messages directly to
`other clients, but instead send [messages] to servers[,] which forward them
`to other client and server workstations.” Id.
`“The key feature of [Funkhouser’s] system” is its “[s]erver-based
`message culling,” which is based on “precomputed” “[c]ell-to-cell
`visibility.” Id. at 85, 87. Before the simulation, the virtual environment “is
`partitioned into a spatial subdivision of cells” and “[a] visibility
`precomputation is performed in which the set of cells potentially visible to
`each cell is determined.” Id. at 87 (emphasis omitted). Figure 6 of
`Funkhouser is reproduced below.
`
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`Figure 6 depicts a source cell, in a dark box, and shows, in stipple, the
`“[c]ell-to-cell visibility” of the source cell, i.e., the “set of cells reached by
`some sight-line from anywhere in the source cell.”3 Id. As shown in
`Figure 6, this cell-to-cell visibility “overestimate[s] . . . the visibility of any
`entity resident in the source cell.” Id.
`Then, during the simulation, servers use the precomputed cell-to-cell
`visibility to process update messages, using “cell visibility ‘look-ups,’”
`“rather than more exact real-time entity visibility computations.” Id. The
`servers “forward” update messages “only to servers and clients containing
`entities inside some cell visible to the one containing the updated entity.” Id.
`Clients, in turn, use the update messages to maintain and update
`surrogates for “remote entities visible to at least one entity local to the
`client.” Id. at 87–88; see id. at 92, 209. “Surrogates contain (often
`simplified) representations for the entity’s geometry and behavior.” Id.
`at 87. “When a client receives an update message for an entity managed by
`another client, it updates the geometric and behavioral models for the
`entity’s local surrogate.” Id. Between update messages, each client
`simulates the behavior of its surrogates. Id.
`
`
`3 We have reproduced Figure 6 from Exhibit 1006, the 1995 Symposium
`Book. In Exhibit 1005, Funkhouser, the stipple is not visible.
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`In addition, “[c]lients execute the programs necessary to generate
`behavior for their entities” and “[t]hey may . . . include viewing capabilities
`in which the virtual environment is displayed on the client workstation
`screen from the point of view of one or more of its entities.” Id.; see id.
`at 85, 209.
`Figures 4 and 7 of Funkhouser are reproduced below.
`
`
`
`
`
`
`Figure 4
`Figure 7
`Figure 4 shows the visual interactions of entities A, B, C, and D in a virtual
`environment. Id. at 86, Fig. 4. Figure 7 depicts clients A, B, C, and D for
`these entities, as arranged in Figure 4, with arrows to show the “flow of
`update messages” and “small squares” to depict surrogates of these clients.
`Id. at 87, Fig. 7. As Figure 4 depicts, “only one visual interaction is possible
`– entity A can see entity B.” Id. at 86. Figure 7 shows that the forwarding
`of update messages to clients is not limited by the visibility of the entities
`managed by the clients. See id. at 86–88, Figs. 4, 7. As shown in Figure 7,
`“[i]f entity A is modified,” the servers forward the update message to
`client B; “[i]f entity B is modified,” the servers forward the update message
`to clients A and C; “[i]f entity C is modified,” the servers forward the update
`message to client B; and “[i]f entity D is modified,” server Z does not
`forward the message to any other server or client “because no other entity
`can potentially see entity D.” Id. at 88, Fig. 7 (emphases omitted).
`
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`3. Claim 4
`a. “Determining” Step
`Turning to claim 4 of the ’558 patent, the parties dispute whether
`Funkhouser discloses step (d), “determining from the positions received in
`step (c), by said each client process, avatars that are to be displayed to the
`user associated with said each client process” (“the ‘determining’ step”).
`Based on our review of the record, Petitioner has shown sufficiently that
`Funkhouser discloses the limitation. See Pet. 24–28; Prelim. Resp. 14–24.
`As Petitioner points out, in Funkhouser’s “[s]erver-based message
`culling,” servers cull update messages based on precomputed “[c]ell-to-cell
`visibility,” which determines the “set of cells potentially visible to each
`cell.” Ex. 1005, 87 (emphases added). Thus, servers forward an update
`message, received from another client, to a client if that client contains an
`entity “inside some cell visible to the [cell] containing the updated entity.”
`Id. (emphasis added). Because this culling is based on pre-computed
`visibility of the cell in which the entity resides—rather than more “exact
`real-time entity visibility computations”—it “conservatively over-
`estimate[s]” the “visibility of any entity resident in the . . . cell.” Id.
`(emphases added).
`As a result, as Petitioner argues and Dr. Zyda testifies, the servers
`may send update messages to clients for more entities than are “presently”
`visible to, and “within the . . . field of view” of, any entity managed by the
`client. Pet. 25–26; Ex. 1002 ¶ 86. For example, entity B in Figures 4 and 6
`is not visible to entity C, because entity C is facing away from entity B.
`Ex. 1002 ¶ 86; Ex. 1005, 86, Figs. 4, 6. Thus, entity C will not “actually
`see” any change in position of entity B. Ex. 1002 ¶ 86. Nonetheless, when
`“entity B is modified,” the server “forward[s]” an “update message” to
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`client C, because entity C is in a cell “potentially visible” to the cell where
`entity B is located. Ex. 1005, 87–88, Fig. 7 (emphasis omitted).
`The client—after receiving update messages that may relate to entities
`outside the field of view of any entity it manages—processes the messages
`for remote entities visible to any of the client’s entities and executes
`programs to display the environment from a particular entity’s point of view.
`Each client “maintain[s] surrogates” for “remote entities visible to at least
`one entity local to the client,” id. at 88, and uses the messages it receives to
`“update[] the geometric and behavioral models for the entity’s local
`surrogate,” id. at 87; see id. at 209. Funkhouser explains that its clients
`“execute . . . programs necessary to generate behavior for their entities” and
`that “[t]hey . . . may include viewing capabilities in which the virtual
`environment is displayed on the client workstation screen from the point of
`view of one or more of its entities.” Id. at 87; see id. at 85 (“[U]sers run an
`interactive interface program . . . [that] simulates the experience of
`immersion in a virtual environment by rendering images of the environment
`as perceived from the user’s . . . viewpoint.”). Funkhouser also includes
`Plate II, which shows an “environment rendered from [the] viewpoint of one
`entity,” omitting many other entities in the environment.4 Ex. 1005, 209.
`Dr. Zyda testifies that “after receiving the filtered positional updates from
`the server, the client performs its own calculations, including updating the
`surrogates of the remote entities, in order to determine which of the remote
`entities to display within the client’s field of view.” Ex. 1002 ¶ 89.
`
`4 We agree with Patent Owner that the Petition and Dr. Zyda’s testimony
`lack persuasive support regarding the precise number of remote entities for
`which the entity from whose viewpoint Plate II depicts the environment
`receives updates. See Pet. 27; Ex. 1002 ¶ 89; Prelim. Resp. 17–18, 22. In
`this Decision, we do not rely on these numbers.
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`At this stage of the proceeding, we are not persuaded by Patent
`Owner’s arguments disputing Petitioner’s showing that Funkhouser
`discloses the “determining” step. Patent Owner asserts that Petitioner relies
`on an inherency theory because Funkhouser “fails to expressly disclose”
`“client-side ‘determining,’” including how or whether the client workstation
`determines which entities to display on the workstation. Prelim. Resp. 14–
`15, 18, 22–23. Patent Owner argues that this theory is deficient because
`Petitioner has not shown that Funkhouser necessarily discloses the client
`performing the “determining” step. Id. at 14–17, 22–23. Moreover, Patent
`Owner disputes Petitioner’s arguments relying on Funkhouser’s update
`messages to support the client performing the “determining” step, asserting
`that Funkhouser “does not disclose a client using an ‘update message’ for
`anything other than updating the ‘geometric and behavioral models for the
`entity’s local surrogate.’” Id. at 16–17. Patent Owner also contends that
`Funkhouser “could use the updated ‘geometric and behavioral models’ of
`the surrogate stored by the client,” rather than the “positions received”—as
`required by claim 4 of the ’558 patent—to determine which entities to
`display. Id. at 24.
`
`Patent Owner does not persuasively respond to or address the
`disclosures in Funkhouser to which Petitioner cites, particularly those
`referring to the client executing programs and including viewing capabilities
`to display the environment from an entity’s point of view: “[c]lients execute
`the programs necessary to generate behavior for their entities” and “[t]hey
`. . . may include viewing capabilities in which the virtual environment is
`displayed on the client workstation screen from the point of view of one or
`more of its entities.” Ex. 1005, 87; see id. at 85; Pet. 24–28; Prelim.
`Resp. 14–24. As outlined above, we are persuaded that this discussion in
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`Funkhouser—combined with Funkhouser’s disclosures that the servers send
`positional update messages to clients based on an “overestimate” of the
`visibility of the clients’ entities and that the clients process the messages to
`maintain and update their surrogates of remote entities—sufficiently
`discloses that the client in Funkhouser determines which remote entities to
`display to the user.
`
`Moreover, we are not persuaded by Patent Owner’s speculation that
`Funkhouser “could use the ‘updated geometric and behavioral models’ of
`the surrogate stored by the client,” rather than any positions received, to
`determine entities to display. Prelim. Resp. 24. In Funkhouser, the update
`messages, which the server forwards to clients, include positional updates.
`See Ex. 1005, 87, 89. The clients use these messages to “update[] the
`geometric and behavioral models” for the surrogates they maintain. Id.
`at 87. Thus, even if Funkhouser’s clients use these models to determine
`which entities to display, as Patent Owner posits, this determining still
`would be “from the positions received” from the server, as the claim
`requires.
`
`b. “Receiving” Step
`Patent Owner also contests Petitioner’s showing that Funkhouser
`
`discloses step (c) (“the ‘receiving’ step”) of claim 4, including “receiving, by
`said each client process from the server process, the positions of avatars in a
`set associated with said each client process.” Ex. 1001, 22:4–10; see
`Pet. 22–24; Prelim. Resp. 24–25. On this record, we are persuaded by
`Petitioner’s showing that Funkhouser discloses the limitation. See Pet. 22–
`24; Ex. 1002 ¶¶ 81–84. As Petitioner explains, Funkhouser implements
`server-based message culling in which the servers forward positional
`
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`updates to clients, but only to clients “with entities that can potentially
`perceive” “the effects of the update.” Ex. 1005, 85, 87; Pet. 23.
`
`On this record, we are not persuaded by Patent Owner’s argument that
`Petitioner has not shown how Funkhouser discloses “receiving, by each
`client process,” because client D in Funkhouser’s Figure 7 does not receive
`an update message. Prelim. Resp. 24–25 (emphasis added). Figure 7
`displays the flow of update messages for four entities based on their
`particular orientation and arrangement in Figure 4. See Ex. 1005, 86–87,
`Fig. 4, Fig. 7. Thus, Patent Owner’s argument is limited to the moment in
`time depicted by Figures 4 and 7, in which “the cell containing entity D is
`not in the cell-to-cell visibility” of the cells containing the other entities. See
`id.; Prelim. Resp. 24–25. These figures, however, are merely illustrative and
`do not limit Funkhouser’s disclosures. For example, entity D is not
`precluded from moving within the environment and based on Funkhouser’s
`disclosures, if entity D moved to a different cell “visible to” a cell containing
`another entity, client D would receive update messages. See Ex. 1005, 86–
`88. Thus, we are not persuaded that the alleged failure of Figure 7 to meet
`each claim limitation undermines Petitioner’s position that Funkhouser is
`anticipatory.
`
`c. Undisputed Limitations
`In addition, on the present record, Petitioner has made a sufficient
`
`showing that Funkhouser discloses the remaining limitations of claim 4 of
`the ’558 patent, which Patent Owner does not contest. See Pet. 15–21;
`Prelim. Resp. 14–25. In particular, Petitioner has made an adequate showing
`that Funkhouser discloses steps (a) and (b) of claim 4, because Funkhouser’s
`clients send update messages, including entity position, to servers. See
`Pet. 20–21; Ex. 1005, 87, 89; see Ex. 1002 ¶¶ 78–80.
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`4. Claims 6, 8, and 9
`For claims 6, 8, and 9, the Petition addresses similarities and
`differences between these claims and independent claim 4, and features a
`claim chart, with citations to Funkhouser, the Petition’s analysis of the
`limitations of claim 4, and Dr. Zyda’s testimony, to support Petitioner’s
`position that Funkhouser anticipates these claims. Pet. 28–31. We are
`persuaded, on this record, that the Petition sufficiently supports Petitioner’s
`position that Funkhouser discloses each limitation of claims 6, 8, and 9. See
`id.
`
`On the present record, we are not persuaded by Patent Owner’s
`assertions disputing Petitioner’s showing regarding independent claims 6
`and 8. Prelim. Resp. 25–27. For claim 6, Patent Owner argues Petitioner
`has failed to show that Funkhouser discloses step (d) of claim 6, “[f]or
`reasons similar” to the corresponding “determining” step of claim 4. Id. at
`25. For the same reasons we explain above for the “determining” step of
`claim 4, however, Petitioner has proffered sufficient evidence that
`Funkhouser discloses step (d) of claim 6. See supra § II.B.3.a.
`Patent Owner also refers to Figure 7 of Funkhouser to dispute
`Petitioner’s showing for claims 6 and 8. Prelim. Resp. 25–27. On this
`record, we are not persuaded for the reasons given in our analysis of Patent
`Owner’s arguments relying on Figure 7 for claim 4. See supra § II.B.3.b.
`5. Conclusion
`Accordingly, based on our review of the arguments and evidence of
`
`record and our analysis above, we determine that Petitioner has shown a
`reasonable likelihood that it would prevail in establishing that claims 4, 6, 8,
`and 9 of the ’558 patent are anticipated by Funkhouser.
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`C. OBVIOUSNESS OVER FUNKHOUSER AND FUNKHOUSER ’93
`Petitioner argues claims 5 and 7 of the ’558 patent would have been
`obvious over Funkhouser and Funkhouser ’93. Pet. 31–39.
`1. Funkhouser ’93 – Printed Publication
`Petitioner has shown adequately that Funkhouser ’93 was a printed
`publication by August 6, 1993 and, thus, constitutes § 102(b) prior art to the
`’558 patent. See id. at 9. Funkhouser ’93 (Ex. 1017) is an article included in
`a collection of presentation materials (Ex. 1018, “1993 Conference Book”),
`compiled for a conference sponsored by the ACM and held on August 1–6,
`1993. Ex. 1018, cover, 1–8, 247; Ex. 1002 ¶ 48. Dr. Zyda testifies that all
`conference participants, including Dr. Zyda, received a copy of the 1993
`Conference Book. Ex. 1002 ¶ 48. Funkhouser ’93 and the 1993 Conference
`Book feature a 1993 copyright date and permit copying, generally without a
`fee and with “a fee and/or specific permission” if for “direct commercial
`advantage.” Ex. 1018, 2, 247; Ex. 1017, 247. The 1993 Conference Book
`also provides ordering information for ACM and non-ACM members.
`Ex. 1018, 2. We are persuaded that this evidence sufficiently shows that an
`interested ordinarily skilled artisan, exercising reasonable diligence, could
`have obtained Funkhouser ’93 by August 6, 1993—the last day of the
`conference. See Mass. Inst. of Tech., 774 F.2d at 1109.
`2. Funkhouser ’93
`Funkhouser ’93 discloses an optimization algorithm that produces the
`
`“‘best’ image possible” within a user-specified target frame rate. Ex. 1017,
`247, 251. The algorithm “choos[es] a set of object tuples to render each
`frame” by “add[ing] object tuples . . . in descending order of” value
`(benefit/cost) “until the maximum cost is completely claimed.” Id. at 250–
`51. Figure 11 features images of a library rendered at different target frame
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`rates, with the benefit heuristic limited to object size. Id. at 253–54, Fig. 11.
`The image rendered at the lowest target frame rate, Figure 11c, shows the
`“omission of books on bookshelves.” Id.
`3. Discussion
`Claim 5 of the ’558 patent, which depends from claim 4, recites
`
`additional requirements for the “determining” step, step (d), of claim 4:
`(d)(1) determining an actual number of avatars in the set
`associated said each client process based on the positions
`transmitted by the server process;
`(d)(2) determining a maximum number of avatars that can be
`displayed to the user associated with said each client process;
`and
`(d)(3) comparing the actual number to the maximum number to
`determine which of the avatars are to be displayed.
`Ex. 1001, 22:14–23. Claim 7, which depends from claim 6, recites similar
`limitations. See id. at 22:43–51; Ex. 1002 ¶¶ 122–24. Petitioner, with
`supporting testimony from Dr. Zyda, asserts that a person of ordinary skill
`would have had reason to combine Funkhouser and Funkhouser ’93, and that
`the combination of these references teaches or suggests each limitation of
`claims 5 and 7. Pet. 31–39; Ex. 1002 ¶¶ 105–24. Patent Owner, however,
`argues that the cost-benefit heuristics in Funkhouser ’93’s optimization
`algorithm, including the “object size” benefit heuristic used to generate
`Figure 11c, “do not include a ‘maximum number’ of objects or a
`comparison” between an actual number of objects and a maximum number,
`as claims 5 and 7 require. Prelim. Resp. 38.
`
`We are persuaded by Petitioner’s showing, including Dr. Zyda’s
`testimony, that Funkhouser’s disclosures regarding its servers sending a
`client an update message where an entity of the client is potentially visible to
`the updated entity, and its clients executing programs and including viewing
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`capabilities to show the environment from the point of view of a particular
`entity teach or suggest step (d)(1) of claims 5 and 7, including “determining
`an actual number of avatars . . . based on the positions transmitted by the
`server process.” See supra § II.B.3.a; Pet. 34–35; Ex. 1002 ¶¶ 115, 122.
`Turning to step (d)(2), the Petition and Dr. Zyda’s supporting
`testimony make a sufficient showing that Funkhouser ’93 teaches or
`suggests “determining a maximum number of avatars that can be displayed”
`in order to maintain a specified targeted frame rate—regardless of which
`benefit heuristics are considered in determining which objects to render. See
`Pet. 35; Ex. 1002 ¶¶ 116–17, 123. Funkhouser ’93 explains that its
`optimization algorithm “selects” certain objects to include in a rendering by
`adding objects in “descending order” of value until the maximum cost is
`claimed, and that this may require “omission” of objects (e.g., books in
`Figure 11c) in order to meet the “user-specified target frame rate.”
`Ex. 1017, 247, 251, 253–54, Fig. 11. Moreover, optimization, by definition,
`is “[t]he procedure used in the design of a system to maximize or minimize
`some performance index,” which “[m]ay entail the selection of a component,
`a principle of operation, or a technique.” Ex. 3001 (IEEE STANDARD
`DICTIONARY OF ELECTRICAL AND ELECTRONICS TERMS (3d. ed. 1984)), 604.
`Likewise, on this record, we are persuaded that the combined teachings of
`Funkhouser and Funkhouser ’93 teach or suggest to a person of ordinary
`skill to compare the det