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
`
`_______________
`
`
`PATENT OWNER WORLDS INC.’S
`RESPONSE
`
`
`
`
`
`BUNGIE - EXHIBIT 1059
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
`
`

`

` 
`
` 
`
`TABLE OF CONTENTS
`
`
` 
` 
`
`I. 
`     Introduction ...................................................................................................... 1 
`II.  Background ....................................................................................................... 3 
`a.  About U.S. Patent No. 7,493,558 (the “‘558 patent” or “Leahy”) ................... 3 
`b.  The Petition Challenges Claims 4-9 of the ‘558 Patent ................................... 5 
`c.  Petitioner Failed to Conduct a Proper Claim Construction Analysis and
`Applied Unreasonably Broad Interpretations of the Claim Terms .................. 8 
`III.  Argument ........................................................................................................ 25 
`a.  Petitioner’s Theories of Anticipation Fail to Identify Each Recited Feature of
`the Challenged Claims .................................................................................... 25 
`b.  Funkhouser Fails to Disclose all Features of Claim 4 .................................... 25 
`c.  Ground 3’s Challenge Based on Durward Also Fails to Identify all Features
`of the Challenged Claims ............................................................................... 31 
`d.  The Petition’s Obviousness-Based Challenges Also Fail Due to
`Shortcomings of the Secondary References ................................................... 36 
`e.  The Petition Fails to Name All Real Parties in Interest ................................. 49 
`f.  An Invalidity Ruling in This Case Constitutes an Impermissible Taking of a
`Private Right Without Article III Oversight ................................................... 55 
`g.  Funkhouser ’95 is Not Prior Art to All Challenged Claims ........................... 57 
`IV.  Conclusion ...................................................................................................... 60 
`
`ii 
` 
`
`

`

`
`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Cammeyer v. Newton, 94 U.S. 225 (1876) .............................................................. 56
`Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC, IPR2012-00001 (PTAB March 5,
`2013) ..................................................................................................................... 52
`IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109 (Fed. Cir. 2011) ............................ 15
`In re Guan Inter Partes Reexamination Proceeding, Control No. 95/001,045,
`Decision Vacating Filings Date (Aug. 25, 2008) ................................................. 52
`In re Rambus, Inc., 694 F.3d 42 (Fed. Cir. 2012) ...................................................... 8
`James v. Campbell, 104 U.S. 356 (1881) ................................................................ 56
`K.J. Pretech Co., Ltd. v. Innovative Display Techs. LLC, IPR2015-01866-68
`(PTAB Nov. 20, 2015) .................................................................................... 53-54
`Loral Space & Comms., Inc. v. Viasat, Inc., IPR2014-00236 (PTAB Apr. 21, 2014)
` ............................................................................................................................... 54
`McCormick Harvesting Mach. Co. v. Aultman, 169 U.S. 606 (1898) .............. 55, 55
`Michigan Land and Lumber Co. v. Rust, 168 U.S. 589 (1897) ............................... 56
`Moore v. Robbins, 96 U.S. 530 (1877) .................................................................... 56
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P.,
`IPR2014-00265 (PTAB Oct. 31, 2013) . ................................................................ 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .................................... 8, 11
`RPX Corp. v. Virnetx Inc., IPR2014-00171 (PTAB June 5, 2014) .................. 49, 54
`Seymour v. Osborne, 11 Wall. 516 (1870) .............................................................. 56
`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258 (PTAB Oct.
`16, 2013) ............................................................................................................... 55
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 51
`United States v. Am. Bell Telephone Co., 128 U.S. 315 (1888) ....................... 55, 56
`United States v. Palmer, 128 U.S. 262 (1888) ......................................................... 56
`United States v. Schurz, 102 U.S. 378 (1880) .......................................................... 55
`Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2013-00168 (PTAB
`Aug. 26, 2013) ...................................................................................................... 55
`
` 
`
`iii 
` 
`
`

`

` 
`
`Statutes 
`
`5 U.S.C. § 554(d) ..................................................................................................... 44
`35 U.S.C. § 102 ........................................................................................................ 56
`35 U.S.C. § 103 ........................................................................................................ 56
`35 U.S.C. § 103(a) ................................................................................................... 46
`35 U.S.C. § 154(a)(2) ................................................................................................. 9
`35 U.S.C. § 154(a)(3) ................................................................................................. 9
`35 U.S.C. § 312(a)(2) ............................................................................................... 54
`35 U.S.C. § 315(b) ................................................................................ 49, 51, 53, 54
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ................. 8
`Rules 
`
`37 C.F.R. § 1.131(b) ................................................................................................ 58
`37 C.F.R. § 42.8(b)(1) .............................................................................................. 54
`37 C.F.R. § 42.65(a) .................................................................................... 15, 33, 46
`37 C.F.R. § 42.100(b) ................................................................................................ 8
`37 C.F.R. § 42.100(c) ............................................................................................... 10
`
`
`
`iv 
` 
`
`

`

`LIST OF PATENT OWNER’S EXHIBITS
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`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
`
`2010-2015
`
`Reserved
`
`2016
`
`2017
`
`2018
`
`Transcript of Deposition of Dr. Michael Zyda, dated February
`11-12, 2016
`
`Declaration of Mark D. Pesce (“Pesce”)
`
`Declaration of Thom Kidrin (“Kidrin”)
`
`v 
`
`

`

`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`Declaration of Ron Britvich (“Britvich”)
`
`U.S. Provisional Application No. 60/020,296 filed on Nov. 13,
`1995
`
`Press Release issued from Worlds, Inc. on April 25, 1995
`
`“Talking Blowfish to Enliven the Internet”, Sandberg, J., Wall
`Street Journal, Apr. 3, 1995, pg. B2
`
`Memorandum and Order of United States District Court,
`District of Massachusetts dated March 13, 2014 in Worlds Inc.
`v. Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
`Mass.)
`
`PPC Broadband, Inc. v. Corning Optical Communications RF,
`LLC, Case No. 2015-1361 et al. (Fed. Cir. Feb. 22, 2016) (also
`cited as 2016 WL 692368 (Fed. Cir. Feb. 22, 2016))
`
`Declaration of Ken Locker (“Locker”)
`Reserved
`
`Declaration of David Marvit (“Marvit”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Email correspondence between Thom Kidrin and The New
`York Public Library (copies@nypl.org) dated February 18,
`2016
`
`Release 1.0, vol. 2-95, Esther Dyson’s Monthly Report dated
`23 February 1995
`
`“Now, a ‘space station’ in your PC”, Eng, P. M., Business
`Week, Apr. 10, 1995, pg. 134
`
`vi 
`
`

`

`Worlds Chat FROBVPLA.CPP C++ code module
`
`Worlds Chat RSRoom.cc code
`
`Worlds Chat Source code CHANGELOG
`
`Reserved
`
`
`
`Declaration of Conor Laffan
`
`Reserved
`
`U.S. Patent No. 7,945,856
`
`U.S. Patent No. 7,181,690
`
`Reserved
`
`U.S. Patent No. 8,082,501
`
`U.S. Patent No. 8,145,998
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`
`
`
`vii 
` 
`
`

`

`
`
` 
`
`I. Introduction
`
`Bungie, Inc. (“Bungie” or “Petitioner”) filed the current Petition (“Petition”)
`
`for inter partes review of claims 4-9 of U.S. Patent No. 7,493,558 (“the ‘558
`
`patent” or “Leahy”) on May 26, 2015. In the Petition, Bungie challenges claims 4,
`
`6, 8, and 9 of the ‘558 patent as allegedly anticipated by two references, “RING: A
`
`Client-Server System for Multi-User Virtual Environments” authored by Thomas
`
`A. Funkhouser (“Funkhouser” or “Funkhouser ‘95”) (Ex. 1005) and U.S. Patent
`
`No. 5,659,691 issued to Durward et al. (“Durward”) (Ex. 1008).
`
`But as explained below, and with the support of the Declaration of Mark D.
`
`Pesce (Ex. 2017) (“Pesce”), claims 4-9 survive Petitioner’s challenges based on
`
`Funkhouser and Durward. Claim 4 recites in part “determining from the positions
`
`received in step (C) … avatars that are to be displayed,” and the ‘558 specification
`
`teaches one of ordinary skill in the art that this “determining” step of “avatars that
`
`are to be displayed” occurs prior to the rendering pipeline. Petitioner does not
`
`allege that Funkhouser and Durward disclose such features. Rather, Petitioner and
`
`its technical declarant Dr. Zyda look solely to point-of-view/perspective
`
`computations in the rendering pipeline to allegedly anticipate independent claims 4
`
`and 6. But Petitioner’s interpretation of the “determining” step is not just broad; it
`
`is unreasonably broad and lacks any support in the ‘558 patent. Further, there is no
`1 
` 
`
`

`

`dispute that neither Funkhouser nor Durward disclose a “crowd control” function,
`
`such as disclosed in the ‘558 patent, prior to the rendering pipeline. And there
`
`should be no dispute that Funkhouser and Durward fail to disclose the recited step
`
`of “determining from the positions received in step (C) … avatars that are to be
`
`displayed” according to the proper construction of that term.
`
`Durward also independently fails to disclose all features of claims 4-9. For
`
`example, while these claims expressly recites features related to “avatars,” which
`
`are properly construed to refer to three-dimensional graphical representations of
`
`users, Durward discloses no such “avatars.” Durward’s virtual world is disclosed to
`
`be three-dimensional, but Durward fails to disclose that the virtual entities are
`
`three-dimensional. Durward’s Fig. 4, which is a diagram of the “virtual space,”
`
`merely portrays the virtual beings as two-dimensional stick figures, and Durward’s
`
`specification provides no basis for a person of ordinary skill in the art to reach a
`
`different conclusion.
`
`Bungie also challenges claims 5 and 7 as allegedly obvious over Funkhouser
`
`in view of Thomas A. Funkhouser, Adaptive Display Algorithm for Interactive
`
`Frame Rates During Visualization of Complex Virtual Environments (“Funkhouser
`
`‘93”) (Ex. 1017). But Funkhouser ’93 does not compute maximum numbers of
`
`objects, or omit objects beyond that maximum number. Rather, Funkhouser ’93
`
`teaches adjusting object texture or geometry according to a level-of-detail
`
`2 
` 
`
`

`

`algorithm within the rendering pipeline, and not before it. This teaching does not
`
`reach the features of claims 5 and 7, which are also directed to pre-rendering
`
`pipeline “determining” steps.
`
`II. Background
`
` 
`
`a. About U.S. Patent No. 7,493,558 (the “‘558 patent” or “Leahy”)
`
`Petitioner has previously characterized Patent Owner Worlds Inc. in this
`
`record as a “notorious patent assertion entity.” Paper 10 at 2. This negative
`
`connotation is undermined by Worlds’ reputation at the dawn of 3-D virtual reality
`
`development, when Worlds publicly distributed a 3-D virtual space referred to as
`
`“Worlds Chat” in early 1995 to the public for free (Ex. 2021). In addition to the
`
`Dallas Morning News (Ex. 2008) and the San Francisco Examiner (Ex. 2009 at 1),
`
`Worlds’ achievements were written up in the Wall Street Journal on April 3, 1995
`
`(Ex. 2022) and Business Week (Ex. 2033). The company also drew the attention of
`
`Steven Spielberg, who “announced that his 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.” Ex. 2009 at 3.
`
`Coming out of Worlds’ innovation associated with Worlds Chat was the
`
`technology that provides the backbone for the patent at issue here. The ‘558 patent
`
`was filed as U.S. Patent Application No. 11/591,878 on November 2, 2006, and
`
`3 
` 
`
`

`

`claims priority to and the benefit of U.S. Provisional Patent Application No.
`
`60/020,296 (Ex. 2020), filed on November 13, 1995. As a link to this provisional
`
`application, the ‘558 patent also claims priority to U.S. Patent Application Nos.
`
`09/632,154; and 08/747,420.
`
`The title of the ‘558 patent is “SYSTEM AND METHOD FOR ENABLING
`
`USERS TO INTERACT IN A VIRTUAL SPACE.” The Background of the ‘558
`
`patent 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 the other clients.” Leahy at 1:56-59
`
`(emphasis added). Per Leahy, the prior “peer-to-peer architecture” required many
`
`messages to provide the state change updates, and this limited “the number of
`
`clients which can be connected to the network.” Id. at 1:63-2:1.
`
`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 3:46-47. Additionally, to handle the remote avatar positions
`
`received by a client, the client includes the capability to determine which avatars to
`
`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
`
`4 
` 
`
`

`

`nor user A get overwhelmed by the crowds of avatars likely to occur in a popular
`
`virtual world.”). Id. at 5:65-67; 5:32-36.
`
`In an embodiment, the server sets a variable N representing the “maximum
`
`number of other avatars A will see,” and N’ represents a client variable of the
`
`“maximum number of avatars client 60 wants to see and/or hear.” Id. at 5:37-41.
`
`Leahy describes the “process of notifying client 60 of only 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 6:7-8.
`
`Thus, according to the disclosed embodiments discussed above, Leahy
`
`discloses server-side crowd control, and the client also has the capability to
`
`determine the avatars to be displayed. This crowd control function is performed
`
`before the rendering process, which outputs the graphical display from the view of
`
`the client’s avatar. Id. at 7:50-52.
`
`b. The Petition Challenges Claims 4‐9 of the ‘558 Patent
`
`In this Petition, Petitioner challenges the validity of claims 4-9 of the ‘558
`
`patent. Claims 4, 6, and 8 are each independent claims. Claims 4 is a method claim
`
`reciting features performed “by said each client process,” claim 6 is a method
`
`claim including steps performed by both “each client process” and “the server
`
`5 
` 
`
`

`

`process,” and claim 8 is a method of features that could be performed by a server
`
`process in communication with first client process and second client computers.
`
`Claim 4 is presented below for reference:
`
`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 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.
`
`
`6 
` 
`
`

`

`According to these recited features of claim 4, the claimed method includes
`
`“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.” (emphasis added). Claim 6 includes a similar “determining” step.
`
`Petitioner alleges that claims 4, 6, and 8 are separately anticipated by both
`
`Funkhouser and Durward. The Petition was also supported by the Declaration of
`
`Dr. Michael Zyda. Ex. 1002. But both the Petition and Dr. Zyda fail to show each
`
`feature of claims 4 and 6 within the disclosures of Funkhouser and Durward.
`
`Further, every feature of claim 8 is not disclosed by Durward, and Funkhouser is
`
`not prior art to claim 8.
`
`The Petition is flawed in its challenges of the dependent claims as well. For
`
`example, according to claim 5 (which depends from claim 4), the “determining”
`
`step of claim 4 is further clarified to include “determining a maximum number of
`
`avatars that can be displayed,” and “comparing the actual number [of avatars] to
`
`the maximum number.” Similar features are recited in claim 7. The Petition relies
`
`upon secondary reference Funkhouser ’93 to disclose these features. But while
`
`Funkhouser ’93 discloses an algorithm that simplifies geometry and adjusts the
`
`detail or texture on an object, this reference also fails to disclose the pre-rendering
`
`pipeline “determining” of any object much less any “avatars.” Hence, the Petition
`
`7 
` 
`
`

`

`also fails to establish the features of dependent claims 5 and 7 within the disclosure
`
`of Funkhouser ’93.
`
`c. Petitioner Failed to Conduct a Proper Claim Construction Analysis
`and Applied Unreasonably Broad Interpretations of the Claim
`Terms
`
`The parties agree that for an unexpired patent, 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).
`
`However, as the Board noted in its Institution Decision, for expired patents,
`
`the claim construction standard is not according to the broadest reasonable
`
`interpretation. Rather, the Board reviews the claims of an expired patent according
`
`to a district court’s standard. See In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir.
`
`2012). In Phillips v. AWH Corp., the court set forth the principle that words of a
`
`claim “are generally given their ordinary and customary meaning” as understood
`
`by a person of ordinary skill in the art in question at the time of the invention,
`
`construed to preserve validity in case of ambiguity. 415 F.3d 1303, 1312, 1327
`
`(Fed. Cir. 2005) (en banc); see also Omron Oilfield & Marine, Inc. v. MD/TOTCO,
`
`a Division of Varco, L.P., IPR2014-00265, slip op. at 7 (PTAB Oct. 31, 2013)
`
`(paper 11).
`
`8 
` 
`
`

`

`For applications filed on or after June 8, 1995, the expiration date of the
`
`patent is 20 years from the filing date of the earliest related application. 35 U.S.C.
`
`§ 154(a)(2). This filing date of the earliest related application does not go back to
`
`the provisional application, but rather to the earliest related non-provisional
`
`application. Id.; see also 35 U.S.C. § 154(a)(3).1 Each of the Worlds patents being
`
`challenged by Bungie in six related IPRs claims benefit to an earliest filed non-
`
`provisional application No. 08/747,420, filed on Nov. 12, 1996. See, e.g., Ex. 1001
`
`at 1; Ex. 2040 at 1; Ex. 2041 at 19; Ex. 2043 at 1; Ex. 2044 at 1.
`
`Thus, the expiration date of each Worlds patents is 20 years from Nov. 12,
`
`1996, or Nov. 12, 2016, plus any patent term adjustment or extension. The patent
`
`term adjustment/extension set forth on the face of each patent at issue is as follows:
`                                                            
`1 In their mandatory notices, Petitioner and Patent Owner both identified co-
`
`pending litigation in the U.S. District Court for the District of Massachusetts. In
`
`ruling on a motion for summary judgment in that case, the District Judge noted that
`
`certificates of correction were necessary in the ‘690 patent and its parent to link
`
`each of the current patents-at-issue to the Provisional Application No. 60/020,296,
`
`filed on Nov. 13, 1995. See Ex. 2023. Because the proper method for calculating
`
`the expiration date measures term from the first-filed non-provisional application,
`
`the certificates of correction signed and sealed on September 24, 2013 are not
`
`relevant to the issue of expiration dates of these patents.
`
`9 
` 
`
`

`

`U.S. Patent No. Matter No.
`
`Patent Term
`
`Expiration Date
`
`Adjustment/Extension
`
`7,181,690
`
`IPR2015-01268
`
`89 days
`
`February 9, 2017
`
`7,493,558
`
`IPR2015-01269
`
`18 days
`
`7,945,856
`
`IPR2015-01264
`
`0 days
`
`8,082,501
`
`IPR2015-01319
`
`0 days
`
`8,145,998
`
`IPR2015-01321,
`
`208 days
`
`Nov. 30, 2016
`
`Nov. 12, 2016
`
`Nov. 12, 2016
`
`June 8, 2017
`
`-01325
`
`
`
`Further, a final written decision in this inter partes review must be issued no
`
`more than twelve months from the date of institution, or Nov. 30, 2016. 37 C.F.R.
`
`§ 42.100(c). Thus, the overwhelming likelihood is that this inter partes review will
`
`be completed and a final written decision will issue after the ‘856 patent and ‘501
`
`patent are expired, and concomitantly with the expiration of the ‘558 patent.
`
`Further, the terms being construed in the ‘558 patent are substantially identical to
`
`the terms being construed in at least the ‘856 patent and the ‘690 patent.
`
`The proper standard for claim construction in this inter partes review is the
`
`standard when the inter partes review is completed and when the final written
`
`decision issues. On this basis, the claim construction standard for at least the
`
`10 
` 
`
`

`

`expired patents in these proceeding is according to Phillips v. AWH Corp., 415
`
`F.3d 1303 (Fed. Cir. 2005), not the broadest reasonable interpretation standard.
`
`On the differences between these standards, the Federal Circuit’s recent
`
`Opinion in PPC Broadband, Inc. v. Corning Optical Commc’ns, Case No. 2015-
`
`1361 et al. (Fed. Cir. Feb. 22, 2016) (Ex. 2024) is instructive. The Federal Circuit
`
`compared the outcomes of claim construction according to both the Phillips
`
`standard and the broadest reasonable interpretation (“BRI”) standard. In describing
`
`the difference between the Phillips standard and the BRI standard applied by the
`
`Board, the Federal Circuit explained:
`
`District courts, by contrast, do not assign terms their broadest
`reasonable interpretation. Instead, district courts seek out the correct
`construction—the construction that most accurately delineates the
`scope of the claimed invention—under the framework laid out in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`Ex. 2024 at 7. In that case, the term at issue was a “continuity member” contacting
`
`a coupler/nut and post of a “coaxial cable connector.” Under the BRI, the Board’s
`
`construction required “that the continuity member need only make contact with the
`
`coupler/nut and the post to establish an electrical connection there,” but did not
`
`require “consistent or continuous contact” between these elements. Id. at 11.
`
`Specifically, the Board did not require the “continuity member” to maintain
`
`contact “through the post and the nut.” Id. While the Board’s interpretation was not
`
`11 
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`

`

`entirely consistent with the specification, the Federal Circuit found “some language
`
`in the specification to support” this interpretation. Thus, the Federal Circuit
`
`concluded that spatial continuity in the form of an unbroken physical route, though
`
`not temporal continuity, was consistent with the “broadest reasonable
`
`interpretation.” Id.
`
`However, the Federal Circuit also noted that this construction was not the
`
`“correct construction under Phillips.” Id. To reach the correct construction under
`
`Phillips, i.e. “the construction that most accurately delineates the scope of the
`
`claimed invention,” the Federal Circuit looked to the patent specification, which
`
`“discloses in multiple places that the continuity member should maintain a
`
`consistent and continuous connection.” Id. at 9-10 (emphasis added). The Federal
`
`Circuit explained:
`
`In light of the ordinary meaning of “continuity” and the specification,
`which is replete with discussion of the “continuous” or “consistent”
`contact established by the continuity member, the correct construction
`of “continuity member” under the framework laid out in Phillips, 415
`F.3d 1303, requires “consistent or continuous contact with the
`coupler/nut and the post to establish an electrical connection.”
`
` Id. at 10. Therefore, under a Phillips analysis, it is not enough to find “some
`
`language” to support a particular interpretation. Rather, it is essential to determine
`
`the correct construction, i.e. “the construction that most accurately delineates the
`
`12 
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`scope of the claimed invention.” Id. at 7. That determination requires a more
`
`detailed analysis of the specification.
`
`Construction of “determining”
`
`Claim 1 recites, in relevant part, “determining from the positions received in
`
`step (C), by said each client process, avatars that are to be displayed to the user….”
`
`Of the claims at issue in this instituted proceeding, independent claim 6 includes a
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`similar “determining” feature.
`
`Petitioner identifies only the “determining” term for the Board’s
`
`construction, separate from the remaining language of the claimed step. Pet. at 12.
`
`Specifically, Petitioner contends that the “step of determining, as recited in the
`
`claims, can herein be reasonably construed in light of the specification as including
`
`executing a client process to determine, from user positions received from the
`
`server, other users’ avatar(s) located within a point of view or perspective (e.g.,
`
`field of view) of the first user.” Pet. at 14. However, this interpretation is not
`
`supported by the disclosure of the challenged patent, and is not a proper
`
`construction under either the Phillips analysis or the broadest reasonable
`
`interpretation standard.
`
`Under either claim construction standard, the judicial body is required to
`
`determine the construction that would be reached by a person having ordinary skill
`
`in the art, having read the specification. The difference between the standards, per
`
`13 
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`

`PPC Broadband, is the difference between “some language” in the specification
`
`and the construction that accurately delineates the claimed invention. Ex. 2024 at
`
`7.
`
`Here, Petitioner argues its proposed construction for the “determining” term
`
`based on the declaration testimony of Dr. Zyda. Notably, however, Dr. Zyda
`
`admitted in deposition that he opined on the construction of the “determining” term
`
`without ever having checked the specifications of the patents being challenged.
`
`Therefore, he was unable to testify whether the specifications support his proposed
`
`construction under either standard.
`
`So you told me a few minutes ago that your technique
`Q.
`[for claim construction] was to look at the claims and look at the
`spec[ification]. Is this an instance where you looked at the claims and
`felt it wasn’t necessary to look at the specification?
`A.
`I felt it [the interpretation of “determining”] was pretty
`straightforward.
`Q.
`Based on the claims?
`A. Yeah.
`Q.
`So you don’t know whether anything in the
`spec[ification] contradicts this construction then?
`A. No.
`Ex. 2016 at 158:16-159:2. Dr. Zyda continuously confirmed throughout his
`
`deposition that he reviewed the claims, abstract, and illustrations of the patents
`
`being challenged, but never testified that he read the entire specification of any
`
`14 
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`

`

`challenged patent. Ex. 2016 at 209:10-18 (read the claim, abstract, and title of the
`
`‘501 patent); 228:24-229:12 (read the claim, abstract, and illustrations of the ‘998
`
`patent); 254:13-255:6 (read the claims, abstract, and illustrations of the ‘856
`
`patent). Under Phillips, “the person of ordinary skill in the art is deemed to read
`
`the claim term not only in the context of the particular claim in which the disputed
`
`term appears, but in the context of the entire patent, including the specification.”
`
`Phillips, 415 F.3d at 1313. Dr. Zyda admitted that his analysis did not meet this
`
`standard. As such, Dr. Zyda’s opinions on the proper construction of
`
`“determining” should be entitled to little to no weight by the Board. See 37 C.F.R.
`
`§ 42.65(a).
`
`Further, Dr. Zyda’s and Petitioner’s proposed construction for “determining”
`
`is not consistent with the specification of the challenged patent, which does not
`
`correlate the “determining” step with a field of view. In great part, Bungie’s
`
`erroneous construction stems from its extraction of the “determining” term from
`
`the remaining claim language. “Extracting a single word from a claim divorced
`
`from the surrounding limitations can lead construction astray. Claim language must
`
`be construed in the claim in which it appears.” IGT v. Bally Gaming Int’l, Inc., 659
`
`F.3d 1109, 1117 (Fed. Cir. 2011).
`
`In order to properly interpret the claimed phrase, “determining from the
`
`positions received in step (C), by said each client process, avatars that are to be
`
`15 
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`

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`displayed to the user,” a more thorough analysis of the challenged patent disclosure
`
`is necessary.
`
`The ‘558 patent discloses a methodology by which a server can limit the
`
`number of other avatars that will be displayed to a client, and a client-side crowd
`
`control scheme can further limit the avatars being displayed to the user. According
`
`to the challenged patent, a client includes this “crowd control” function that 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.” Ex. 1001 at
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`5:32-36. Technical limitations existed for computers with “less computing power
`
`than an average machine,” whereby a number N of visible avatars sent from th