Trials@uspto.gov
`571-272-7822
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` Paper 13
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`Date: November 30, 2015
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`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 B2
`____________
`
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`INTRODUCTION
`I.
`Petitioner, Bungie, Inc., filed a Petition to institute an inter partes
`review of claims 1–3, 7, 8, and 11–20 (“the challenged claims”) of U.S.
`Patent No. 8,145,998 B2 (“the ’998 patent”). Paper 3 (“Pet.”). Patent
`
`BUNGIE - EXHIBIT 1057
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
`
`

`

`IPR2015-01325
`Patent 8,145,998 B2
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`Owner, Worlds Inc., filed a Preliminary Response pursuant to
`35 U.S.C. § 313. Paper 12 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the
`Petition and the Preliminary Response, and for the reasons explained below,
`we determine that the information presented shows a reasonable likelihood
`that Petitioner would prevail with respect to claims 1–3, 7, 8, 11–18, and 20.
`See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of
`these claims.
`
`Related Matters
`A.
`The ’998 patent is involved in a district court proceeding, Worlds Inc.
`v. Activision Blizzard, Inc., Case No. 1:12-cv-10576 (D. Mass.). Paper 6. In
`addition, the ’998 patent is the subject of IPR2015-01321 and is related to
`the patents at issue in IPR2015-01264, IPR2015-01268, IPR2015-01269,
`and IPR2015-01319. Id.
`
`The Asserted Grounds
`B.
`Petitioner identifies the following as asserted grounds of
`unpatentability:
`
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`Patent 8,145,998 B2
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`
`Reference(s)
`Durward (Ex. 1008),1
`Tracey (Ex. 1025),2
`and Marathon
`(Ex. 1021)3
`Durward, Tracey,
`Marathon, and
`Schneider (Ex. 1019)5
`Durward, Tracey,
`Marathon, and
`Wexelblat (Ex. 1020)6
`Durward and Pratt
`(Ex. 1027)7
`
`
`
`Basis
`
`Challenged Claim(s)
`
`§ 103(a)4
`
`1–3, 7, 8, 11, 12, 16,
`18, and 20
`
`§ 103(a)
`
`13–15
`
`§ 103(a)
`
`17
`
`§ 103(a)
`
`19
`
`The ’998 Patent
`C.
`The ’998 patent is directed to a three-dimensional graphical, multi-
`user, interactive virtual world system that includes highly scalable
`architecture. Ex. 1001, Abs. The system disclosed in the ’998 patent
`displays avatars representing other users neighboring the user viewing the
`
`
`1 U.S. Patent No. 5,659,691, filed Sept. 23, 1993.
`2 David Tracey, Touring Virtual Reality Arcades, Int’l Herald Trib. (Paris),
`May 7, 1993, at 8.
`3 Marathon, Bungie Products Software Corporation, 1994.
`4 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`from which the ’998 patent issued was filed before that date, our citations to
`Title 35 are to its pre-AIA version.
`5 U.S. Patent No. 5,777,621, filed June 7, 1995.
`6 U.S. Patent No. 5,021,976, issued June 4, 1991.
`7 David R. Pratt, A Software Architecture for the Construction and
`Management of Real-Time Virtual Worlds (1993) (unpublished doctoral
`dissertation, Naval Postgraduate School).
`
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`virtual world. Id. Motion information from the remote users’ avatars is
`transmitted to a central server process that provides positions updates to
`client processes for neighbors of the user at that client process. Id. The
`client process also determines which background objects to render. Id.
`
`The Challenged Claims
`D.
`Petitioner challenges claims 1–3, 7, 8, and 11–20. Pet. 4. Claims 1, 2,
`18, and 19 are independent. Claim 1 is illustrative and reproduced below:
`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.
`II. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, the Board construes claim terms in an
`unexpired patent using their broadest reasonable construction in light of the
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`specification of the patent in which they appear.8 37 C.F.R. § 42.100(b);
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015).
`The claim language should be read in light of the specification as it would be
`interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
`Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We must apply the broadest
`reasonable meaning to the claim language, taking into account any
`definitions presented in the specification. Id. (citing In re Bass, 314 F.3d
`575, 577 (Fed. Cir. 2002)). The “ordinary and customary meaning” is that
`which the term would have to a person of ordinary skill in the art in
`question. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proffers proposed constructions of several claim
`terms. Pet. 11–13. At this stage of the proceeding, Patent Owner does not
`challenge Petitioner’s construction. Prelim. Resp. 10–11. For the purposes
`of this Decision, and on this record, we determine that no claim term needs
`express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms that are in
`
`
`8 The parties agree that the broadest reasonable interpretation standard
`applies to the ’998 patent. See Pet. 13; Prelim. Resp. 10. 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 outlined 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 1–3, 7, 8, 11–18, and 20 of
`the ’998 patent, and if necessary to address this issue, to file a copy of
`Provisional Application No. 60/020,296, as an exhibit in this case.
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`controversy need to be construed and only to the extent necessary to resolve
`the controversy).
`
`B. Obviousness of Claims 1–3, 7, 8, 11, 12, 16, 18, and 20 in View of
`Durward, Tracey, and Marathon
`
`Durward (Ex. 1008)
`1.
`Durward describes a virtual reality system with a database defining
`three-dimensional virtual spaces. Ex. 1008, Abs. Figure 5 is reproduced
`below.
`
`
`Durward’s Figure 5 illustrates assigning virtual relevant spaces 200
`and 204 to virtual beings 182 and 184, respectively. Durward discusses that
`virtual beings 182 and 184 may view those elements that are within their
`visual relevant spaces, such as objects 194 and 196. Id. at 4:61–5:5.
`Durward describes only communicating the position, orientation, and/or
`movement of elements within the visual relevant space of a virtual being
`defining a user and those elements outside of the visual relevant space may
`or may not be visible to the user. Id. at 5:5–20.
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`
`Tracey (Ex. 1025)
`2.
`We have considered Petitioner’s argument that Tracey has a
`publication date of May 7, 1993. Pet. 8. 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).
`Page 2 of the International Herald Tribune is reproduced below.
`
`
`Petitioner has made a sufficient showing that Tracey has a publication
`date of May 7, 1993 because page 2 of Exhibit 1025 states it is a “Global
`Newspaper Edited and Published in Paris” and “Published with The New
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`York Times and The Washington Post” with a date of “Friday, May 7, 1993”
`(emphasis added). Pet. 8; Ex. 1025, 2. Moreover, we are persuaded, at this
`juncture of the proceeding, that Petitioner has established adequately that
`Tracey qualifies as prior art under 35 U.S.C. § 102(a) because Petitioner has
`proffered adequate evidence that an interested ordinarily skilled artisan,
`“exercising reasonable diligence,” could have obtained Tracey no later than
`May 7, 1993—the day the International Herald Tribune article was made
`available. See Bruckelmyer, 445 F.3d at 1378.
`Tracey describes a virtual racing game that features a button on a
`panel that switches the driver’s perspective from a cockpit view to a view
`hovering overhead to provide an out-of-body experience. Ex. 1025, 4.
`
`3. Marathon (Ex. 1021)
`According to the Declaration of Michael Durkin filed by Petitioner,
`Marathon is a computer game software instruction manual that was included
`with each copy of the software that Petitioner sold and distributed beginning
`in December 1994. Pet. 7–8; Ex. 1022 ¶¶ 1–2. Mr. Durkin, an employee of
`Petitioner since August 2010, also declares that Marathon was obtained from
`one of the originally packaged boxes available for sale by Petitioner in
`December 1994. Ex. 1022 ¶¶ 1–3. In addition, Mr. Durkin declares the box
`was stored, unopened, and in its original shrink wrap until it was opened on
`May 22, 2015. Id. ¶ 3. Mr. Durkin personally witnessed the opening of the
`box, Marathon’s removal from the box, and photocopying Marathon as
`Exhibit 1021. Id. Accordingly, we are persuaded, at this juncture of the
`proceeding, that Petitioner has made a sufficient showing that Marathon
`qualifies as prior art under 35 U.S.C. § 102(a) because Petitioner has
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`proffered adequate evidence that an interested ordinarily skilled artisan,
`“exercising reasonable diligence,” could have obtained Marathon no later
`than December 1994—when Marathon began sales. See Bruckelmyer, 445
`F.3d at 1378.
`Marathon discusses playing a video game over a network with other
`players. Ex. 1021, 17. A setup network game menu is reproduced below.
`
`
`The figure illustrates setting up teams, colors, etc. in an options menu.
`Id. In addition, Marathon shows an overhead map of all players and using
`the delete key to switch views to other players in the game. Id. at 18.
`
`4.
`
`The Parties’ Contentions for Claims 1–3, 7, 8, 11, 12, 16, 18, and 20
`Petitioner asserts that the subject matter of claims 1–3, 7, 8, 11, 12,
`16, 18, and 20 would have been obvious in view of Durward, Tracey, and
`Marathon under 35 U.S.C. § 103(a). Pet. 13–42. Petitioner provides a
`limitation-by-limitation analysis of where each limitation of claims 1–3, 7, 8,
`11, 12, 16, 18, and 20 is allegedly taught in Durward, Tracey, and Marathon.
`Id.
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`The present record supports Petitioner’s contention that Durward
`teaches a local user receiving position information associated with less than
`all of the remote user avatars in one or more rooms of a virtual environment
`because some of the avatars that do not send position information fail to
`satisfy a condition, as required in claims 1, 2, and 18. Pet. 17–42 (citing
`Ex. 1008 (pinpoint citations omitted). The present record also supports the
`contention that Durward teaches displaying some of the remote user avatars
`representing other users to the local user viewing the virtual environment, as
`required in claims 1, 2, and 18. Pet. 17–42 (citing Ex. 1008 (pinpoint
`citations omitted)). In addition, the present record supports the contention
`that Tracey teaches switching to a rendering on a display that shows the
`virtual environment to the local user from a perspective of a rendering that
`allows the local user to view the local user avatar in the virtual environment.
`Pet. 23–25, 29–30, 33–35; Ex. 1025, 4. The present record also supports the
`contention that Marathon teaches switching between a rendering on a
`display that shows 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. Pet. 23–
`25, 29–30, 33–35 (citing Ex. 1021 (pinpoint citations omitted)).
`Petitioner relies on Durward’s user specifying the virtual being using
`primitives 199A-F in any desired combination to teach or suggest the
`limitations of claim 3. Pet. 35; Ex. 1008, 3:29–31, 7:26–40.
`Petitioner relies on Durward’s audio processor generating and routing
`messages associated with audio received from a remote user device,
`including sounds received from each user, and then communicated to other
`users to teach or suggest the limitations of claim 7. Pet. 35–36; Ex. 1008,
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`2:15–24, Fig. 2. Petitioner also relies on Marathon’s sending a voice
`message to other players in a game using a microphone to teach or suggest
`the limitations of claim 7. Pet. 36; Ex. 1021, 9, 11, 19.
`Petitioner relies on Durward’s client workstation copying the entire
`virtual space, including primitive data, to teach or suggest the limitations of
`claim 8. Pet. 36–37; Ex. 1008, 3:50–54; 4:17–29; 6:55–62.
`Petitioner relies on Durward’s disclosure regarding defining a user’s
`visual relevant space by the field of view of the virtual being and close
`proximity areas to teach or suggest the limitations of claim 11. Pet. 37–38
`(citing Ex. 1008 (pinpoint citations omitted)).
`Petitioner relies on Durward’s discussion regarding defining a user’s
`visual relevant space by the position, orientation, and movement of the user
`to teach or suggest the limitations of claim 12. Pet. 38–39 (citing Ex. 1008
`(pinpoint citations omitted)).
`Petitioner relies on Durward’s database storing data for multiple
`virtual spaces to teach or suggest the limitations of claim 16. Pet. 39; Ex.
`1008, 4:30–42.
`Petitioner relies on Durward displaying a plurality of avatars on a
`display associated with the client processor to teach or suggest the
`limitations of claim 20.9 Pet. 39–40; Ex. 1008, 3:50–54, Fig. 1.
`
`
`9 We note that claim 20 states “displaying the plurality of avatars.” “[T]he
`plurality of avatars” lacks explicit antecedence. We can construe “the
`plurality of avatars” as either: 1) displaying both “the local user avatar” and
`“the remote user avatars”; or 2) as merely displaying “the remote user
`avatars.” We are persuaded that Marathon teaches both constructions.
`Ex. 1021, 18. Specifically, Marathon teaches an overhead map of all players
`and using the delete key to switch views to other players in the game,
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`Petitioner concludes that one of ordinary skill in the art would have
`combined Durward’s assigning of virtual relevant spaces, Tracey’s
`perspective-switching feature, and Marathon’s interacting users in a three-
`dimensional virtual environment switching their perspective to another
`player’s perspective in order to reduce the amount of data communication to
`the user, thereby increasing a user’s enjoyment. Pet. 40–42; Exs. 1008,
`1021, and 1025 (pinpoint citations omitted).
`Patent Owner argues that there is no rationale to combine Durward,
`Tracey, and Marathon because the combination is merely legal conclusions
`and lacks any citation to evidence as to why Durward’s virtual system would
`have been obvious to modify to include Tracey and Marathon’s view-
`switching features. Prelim. Resp. 13–17. On this record, we disagree with
`Patent Owner.
`At this stage of the proceeding, we are persuaded that Petitioner’s
`assertion that a person of ordinary skill in the art would have combined
`Durward, Tracey, and Marathon to reduce the amount of data
`communication to the user, thereby increasing a user’s enjoyment, provides
`articulated reasoning with rational underpinning to support combining the
`teachings of Durward, Tracey, and Marathon. See KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 989 (Fed.
`Cir. 2006)).
`In addition, Patent Owner argues that there is no rationale to combine
`Durward, Tracey, and Marathon because Durward’s users will receive data
`for a larger portion of virtual space, and not just relevant and priority spaces
`
`
`thereby teaching the limitations in claim 20 under either construction. Id.
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`for that user, whereas Tracey and Marathon provide perspective switching of
`users. Prelim. Resp. 17–19. Moreover, Patent Owner contends the
`combination would destroy or frustrate the purpose of Durward because it
`drastically increases the amount of data transmission from the central
`controller to each user’s workstation and would require an increase in the
`user’s workstation processing power. Id. At this stage of the proceeding,
`we disagree with Patent Owner.
`Tracey and Marathon’s perspective switching would not necessarily
`affect Durward’s limiting communication to the position, orientation, and/or
`movement of elements within the visual relevant space of a virtual being
`defining a user because Durward’s limiting communication could be applied
`immediately prior to the client determining which remote user perspective to
`display and what should be included in that display. Pet. 42. Thus, we are
`not persuaded that Petitioner’s proposed combination would destroy or
`frustrate the purpose of Durward.
`Patent Owner argues that although Durward discloses a computer,
`Durward does not inherently disclose a processor. Prelim. Resp. 20. We
`disagree with Patent Owner, on the present record. Patent Owner concedes
`Durward discloses a computer. Prelim. Resp. 20. At this stage of the
`proceeding, we are persuaded that Durward’s computer 42 inherently has a
`processor because Durward teaches that computer 42 includes a keyboard
`for entering control information and a monitor for displaying the control
`information. Pet. 26–35; Ex. 1008, 3:2–6.
`We have reviewed the proposed ground challenging claims 1–3, 7, 8,
`11, 12, 16, 18, and 20 as obvious over Durward, Tracey, and Marathon, and
`we are persuaded, at this juncture of the proceeding, that Petitioner has
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`established a reasonable likelihood of prevailing in its challenge to claims 1–
`3, 7, 8, 11, 12, 16, 18, and 20 on this ground.
`
`C. Obviousness of Claims 13–15 in View of Durward, Tracey, Marathon,
`and Schneider
`
`Schneider (Ex. 1019)
`1.
`Schneider discusses a user adjusting the quality of a three-dimensional
`graphics rendering that results in a respective trade-off in rendering speed.
`Ex. 1019, Abs. In addition, Schneider describes culling objects from a scene
`before rendering the scene. Id. at 5:27–47.
`
`The Parties’ Contentions for Claims 13–15
`2.
`Petitioner relies on Durward, Tracey, and Marathon displaying avatars
`and Schneider’s user adjusting the quality of a three-dimensional graphics
`rendering that results in a respective trade-off in rendering speed to teach or
`suggest the limitations of claims 13–15. Pet. 42–47.
`Petitioner concludes that one of ordinary skill in the art would have
`combined Durward, Tracey, and Marathon’s interacting users in a three-
`dimensional virtual environment, limiting messages to the user by culling,
`and Schneider’s culling objects in the display to further reduce processing
`requirements of client workstations. Id. at 45–47.
`Patent Owner argues that the combination of Durward, Tracey,
`Marathon, and Sitrick suffer from the same shortcomings as Durward,
`Tracey, and Marathon. Prelim. Resp. 21. We note Sitrick was not included
`in the alleged grounds of unpatentability and Schneider was included. Thus,
`Patent Owner’s arguments, with respect to Sitrick, are misplaced. In
`addition, we are not persuaded by Patent Owner’s assertions regarding the
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`alleged deficiencies in Petitioner’s proposed combination of Durward,
`Tracey, and Marathon, for the reasons explained above in Part II.B.4.
`We have reviewed the proposed ground challenging claims 13–15 as
`obvious over Durward, Tracey, Marathon, and Schneider, and we are
`persuaded, at this juncture of the proceeding, that Petitioner has established a
`reasonable likelihood of prevailing in its challenge to claims 13–15 on this
`ground.
`
`D. Obviousness of Claim 17 in View of Durward, Tracey, Marathon, and
`Wexelblat
`
`1. Wexelblat (Ex. 1020)
`Wexelblat discusses an artificial reality with interacting users.
`Ex. 1020, 6:61–7:10. In addition, Wexelblat discusses a user teleporting
`from a current location to another location. Id.
`
`The Parties’ Contentions for Claim 17
`2.
`Petitioner relies on Wexelblat’s user teleporting from a current
`location to a library to teach or suggest the limitations of claim 17. Pet. 47–
`48.
`
`Petitioner concludes that one of ordinary skill in the art would have
`combined Durward, Tracey, and Marathon’s interacting users in a three-
`dimensional virtual environment limiting messages and Wexelblat’s
`teleportation to allow the users to navigate from room to room with greater
`ease. Id. at 48.
`Patent Owner argues that Durward, Tracey, Marathon, and Wexelblat
`would not have been obvious to combine because in claim 16, Petitioner
`maps Durward’s “multiple virtual spaces” that correspond to different
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`applications (i.e., computer aided design (“CAD”), gaming virtual space,
`etc.). Prelim. Resp. 21–22; Ex. 1020, Fig. 3, 4:30–42. Specifically, Patent
`Owner contends combining Durward’s different applications with
`Wexelblat’s teleportation results in a combination that would not have been
`obvious, which is navigating between CAD, gaming virtual spaces, etc.
`Prelim. Resp. 21–22. On this record, we disagree with Patent Owner.
`Durward does not preclude database 104 from having multiple
`gaming virtual spaces with the same functions. Ex. 1020, Fig. 3, 4:30–42.
`Specifically, Durward states “[d]atabase 104 may contain . . . a game virtual
`space 164 which allows users to play a game . . . and other virtual spaces,”
`id. at 4:32–37 (emphasis added), which means the other virtual spaces can
`correspond to different gaming virtual spaces. In addition, Wexelblat
`teaches teleporting from one location to another location, which teaches or
`suggests teleporting between rooms, as required in claim 17. Pet. 48;
`Ex. 1020, 6:61–7:10.
`Accordingly, based on our review of the proposed ground challenging
`claim 17 as obvious over Durward, Tracey, Marathon, and Wexelblat, we
`are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood of prevailing in its challenge to claim 17
`on this ground.
`
`E. Obviousness of Claim 19 in View of Durward and Pratt
`
`Pratt (Ex. 1027)
`1.
`Petitioner argues that Pratt has a printed publication date no later than
`October 26, 1993. Pet. 49–50. Petitioner relies on the title page of Pratt that
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`is dated June 1993 and states “[a]pproved for public release; distribution is
`unlimited.” Ex. 1027, Title Page.
`In addition, Petitioner relies on Dr. Zyda’s Declaration. Pet. 50.
`According to the Declaration, Dr. Zyda was an advisor to David Pratt on the
`dissertation shown as Exhibit 1027. Ex. 1002 ¶ 180. Dr. Zyda kept two
`copies, distributed two copies to the Defense Technical Information Center
`(“DTIC”), two copies to the library at the Naval Postgraduate School, one
`copy to the Director of Research Administration, four copies to the author,
`David. R. Pratt, one copy to Major David Neyland, and one copy to
`Lieutenant Colonel Michael D. Proctor. Pet. 56; Ex. 1002 ¶ 180; Ex. 1027,
`147.
`
`In addition, Petitioner states the
`DTIC “provide[s] the general public and industry with access to
`unclassified, unlimited information” to meet its responsibility to
`“[s]timulate innovation with public and industry access to DoD
`(Department of Defense) funded research and digital data.” Ex.
`1028. A pre-1995 document describing the use of DTIC
`information, products and services states that “DTIC also
`provides some limited services to the general public and foreign
`requestors. Unclassified and unlimited DoD documents are
`announced and made generally available through a contractual
`arrangement with NTIS [National Technical Information
`Service].”
`Pet. 50; Exs. 1028 and 1029. We disagree with Petitioner.
`“Public accessibility” is the touchstone for determining whether a
`reference constitutes a printed publication. In re Hall, 781 F. 2d 897, 898–
`99 (Fed. Cir. 1986). A reference is “publicly accessible” upon a satisfactory
`showing that such document has been disseminated or otherwise made
`available to the extent that persons interested and ordinarily skilled in the
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`subject matter or art exercising reasonable diligence, can locate it.
`Bruckelmyer, 445 F.3d at 1378. In this case, Petitioner’s reliance on the
`June 1993 and “[a]pproved for public release; distribution is unlimited”
`language in Pratt is not sufficient to show that the thesis was publicly
`accessible in June 1993 because Petitioner has not shown sufficiently that
`Pratt was disseminated or otherwise made available to the extent that
`persons interested and ordinarily skilled in the subject matter or art
`exercising reasonable diligence, could have located it in June 1993. Id.
`Next, although Dr. Zyda states (Ex. 1002 ¶ 180 (citing Ex. 1027, 147,
`title page)) copies of Pratt were disseminated to other parties on the list
`shown on page 147 of Exhibit 1027, Petitioner has not alleged or shown that
`the listed parties were persons interested and ordinarily skilled in the subject
`matter or art. We are not persuaded that distribution to these individuals is
`sufficient to demonstrate that persons interested and ordinarily skilled in the
`subject matter, exercising reasonable diligence, could have located Pratt
`before the earliest priority date of the ’998 patent. See Bruckelmyer, 445
`F.3d at 1378.
`Regarding Petitioner’s contention that DTIC’s website shows public
`accessibility, we note DTIC’s website states “[m]ore than 50 percent of the
`research records in the collection are available . . . and provid[ing] the
`general public and industry with access to unclassified, unlimited
`information, including many full text downloadable documents.”
`Ex. 1028, 1 (emphasis added); Ex. 1029. Petitioner has not shown
`sufficiently that Pratt is among set of 50 percent of the available research
`records or among the set of the full text downloadable documents. In
`addition, although Exhibit 1027 features an October 26, 1993 date from the
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`DTIC and an October 21, 1993 date on the title page, these dates do not
`show that the DTIC made Pratt publicly accessible. Specifically, Petitioner
`has not shown what these dates represent, i.e., whether the October 26, 1993
`date from the DTIC and the October 21, 1993 date represent a receipt date,
`partial text availability date, public accessibility date, etc.
`As for Petitioner’s argument that Pratt was publicly accessible
`because it was sent to the library at the Naval Postgraduate School (Pet. 50;
`Ex. 1002 ¶ 180), Petitioner has not shown sufficiently that Pratt was
`catalogued, indexed, or shelved. See In re Hall, 781 F. 2d 897, 898–99 (Fed.
`Cir. 1986) (“In the present case, Dr. Will’s affidavits give a rather general
`library procedure as to indexing, cataloging, and shelving of theses”); Voter
`Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d 1374, 1380 (Fed.
`Cir. 2012) (“[I]ndexing is a relevant factor in determining accessibility of
`potential prior art, particularly library-based references”); In re Bayer, 568
`F.2d 1357 (CCPA 1978) (holding that a thesis housed, but neither shelved
`nor catalogued, within a university library was not publicly accessible).
`Even if Petitioner was able to show that Pratt was catalogued,
`indexed, or shelved, which it has not, Petitioner has not shown Pratt was
`catalogued, indexed, or shelved in a meaningful way such that Pratt was
`publicly accessible. In In re Cronyn, 890 F.2d 1161 (Fed. Cir. 1989), for
`example, a thesis was catalogued and indexed in a college’s main library
`using thousands of individual cards that contained only a student’s name and
`the title of their thesis, which was searchable by the student’s name. The
`actual theses themselves, however, were not included in the index. The
`Federal Circuit held that because the theses were only presented to a handful
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`of faculty members and “had not been cataloged or indexed in a meaningful
`way,” they were not sufficiently publicly accessible to constitute prior art.
`Accordingly, Petitioner has not shown sufficiently that Pratt was
`publicly accessible before the earliest priority date of the ’998 patent.
`Because Petitioner has not made a sufficient showing that Pratt is prior art to
`the ’998 patent, Petitioner has not demonstrated a reasonable likelihood that
`it would prevail in showing that claim 19 of the ’998 patent would have been
`obvious over Durward and Pratt.
`
`F. Patent Owner’s 35 U.S.C. § 325(d) Arguments
`We have considered Patent Owner’s argument that the Petition should
`be denied under 35 U.S.C. § 325(d) because Durward was previously
`presented to the Patent Office. Prelim. Resp. 12–13. Although 35 U.S.C.
`§ 325(d) permits the Board to reject a petition merely for the reason that the
`same or substantially the same prior art or arguments were considered
`previously in another proceeding before the Office, it does not require the
`Board to do so. In this case, we decline to exercise our discretion to reject
`the Petition under 35 U.S.C. § 325(d).
`
`G. Real Parties-in-Interest
`Patent Owner argues that Activision Publishing, Inc. (“Activision”) is
`
`an unnamed real party in interest in this proceeding. Prelim. Resp. 24–31.
`Thus, according to Patent Owner, the Petition fails to name all real parties in
`interest as required by 35 U.S.C. § 312(a)(2) and institution of review is
`barred under 35 U.S.C. § 315(b). Id.
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`1. Factual Background
`Petitioner and Activision entered into a Software Publishing and
`
`Development Agreement (“the Agreement”), effective April 16, 2010.
`Ex. 2002, 1. Under the Agreement, Petitioner “agreed to develop” a series
`of software products with the title Destiny (“the Destiny Products” or “the
`Products”), “to be exclusively published and distributed by Activision.” Id.