UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BUNGIE, INC.,
`Petitioner
`
`v.
`
`WORLDS INC.,
`Patent Owner
`
`_______________
`
`Case IPR2015-01325
`Patent 8,145,998
`
`_______________
`
`PATENT OWNER WORLDS INC.’S
`RESPONSE
`
`BUNGIE - EXHIBIT 1060
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
`
`

`

`TABLE OF CONTENTS
`
`
`Introduction .......................................................................................................... 1 
`I. 
`II.  Background ....................................................................................................... 5 
`a.  About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”) ................... 5 
`b.  The Petition Challenges Claims 1-3, 7-8, and 11-20 of the ‘998 Patent .......... 7 
`c.  Petitioner Failed to Conduct a Proper Claim Construction Analysis and
`Applied Unreasonably Broad Interpretations of the Claim Terms ................ 10 
`d.  Petitioner’s Grounds of Challenge ................................................................. 17 
`III.  Argument ........................................................................................................ 17 
`a.  Durward Fails to Disclose an “Avatar” According to the Challenged Claims
`
`17 
`b.  Claims 13-15 Independently Survive this Inter Partes Review ..................... 19 
`c.  Claims 11-12 Survive Petitioner’s Challenge Because Durward Fails to
`Disclose the Claimed Features ....................................................................... 23 
`d.  Petitioner’s Proposed Modification Frustrates the Purpose of Durward ....... 26 
`i.  Durward’s Purpose is to Limit Data Communications in a Virtual Reality
`Network .......................................................................................................... 26 
`ii.  Petitioner’s Proposed Combination is Not Supported by Evidence, and
`Marathon’s View-Switching Feature is Not Compatible with Durward’s
`Reduced Data Communications Scheme ....................................................... 27 
`e.  Like Perspective-Switching, Teleportation is Equally Incompatible with
`Funkhouser ..................................................................................................... 36 
`f.  The Petition Fails to Name All Real Parties in Interest ................................. 39 
`g.  An Invalidity Ruling in This Case Constitutes an Impermissible Taking of a
`Private Right Without Article III Oversight ................................................... 45 
`IV.  Conclusion ...................................................................................................... 47 
`
`ii 
` 
`
`

`

`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Cammeyer v. Newton, 94 U.S. 225 (1876) .............................................................. 45
`Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC, IPR2012-00001 (PTAB March 5,
`2013) ..................................................................................................................... 42
`James v. Campbell, 104 U.S. 356 (1881) ................................................................ 45
`K.J. Pretech Co., Ltd. v. Innovative Display Techs. LLC, IPR2015-01866-68
`(PTAB Nov. 20, 2015) .......................................................................................... 43
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 30
`LG Display Co., Ltd. v. Innovative Display Technologies LLC, IPR2014-01092
`(PTAB Jan. 13, 2015) ........................................................................................... 30
`Loral Space & Comms., Inc. v. Viasat, Inc., IPR2014-00236 (PTAB Apr. 21, 2014)
` ............................................................................................................................... 44
`McCormick Harvesting Mach. Co. v. Aultman, 169 U.S. 606 (1898) .............. 45, 46
`Michigan Land and Lumber Co. v. Rust, 168 U.S. 589 (1897) ............................... 46
`Moore v. Robbins, 96 U.S. 530 (1878) .................................................................... 46
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P.,
`IPR2014-00265 (PTAB Oct. 31, 2013) ................................................................ 11
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ...................... 11, 13, 14, 15
`RPX Corp. v. Virnetx Inc., IPR2014-00171 (PTAB June 5, 2014) ................. 39, 44
`Seymour v. Osborne, 11 Wall. 516 (1870) .............................................................. 45
`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258 (PTAB Oct.
`16, 2013) ............................................................................................................... 44
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 41
`United States v. Am. Bell Telephone Co., 128 U.S. 315 (1888) ....................... 45, 46
`United States v. Palmer, 128 U.S. 262 (1888) ......................................................... 45
`United States v. Schurz, 102 U.S. 378 (1880) .......................................................... 45
`Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2013-00168 (PTAB
`Aug. 26, 2013) ...................................................................................................... 44
`Statutes 
`
`35 U.S.C. § 102 ........................................................................................................ 46
`
`iii 
` 
`
`

`

`35 U.S.C. § 103 ........................................................................................................ 46
`35 U.S.C. § 154(a)(2) ............................................................................................... 11
`35 U.S.C. § 154(a)(3) ............................................................................................... 11
`35 U.S.C. § 312(a)(2) ............................................................................................... 44
`35 U.S.C. § 315(b) ................................................................................ 39, 41, 43, 44
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ........ 10, 42
`Rules 
`
`37 C.F.R. § 42.8(b)(1) .............................................................................................. 44
`37 C.F.R. § 42.65(a) .......................................................................................... 18, 29
`37 C.F.R. § 42.100(b) .............................................................................................. 10
`37 C.F.R. § 42.100(c) ............................................................................................... 13
`
`
`
`
`iv 
` 
`
`

`

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

`

`2012 - 2015
`
`Reserved
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`Transcript of Deposition of Dr. Michael Zyda, dated February
`11-12, 2016
`
`Declaration of Mark D. Pesce (“Pesce”)
`
`Declaration of Thom Kidrin (“Kidrin”)
`
`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)
`
`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,
`
`vi 
`
`

`

`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`
`
`
`
`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
`
`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
`
`U.S. Patent No. 7,493,558
`
`U.S. Patent No. 8,082,501
`
`Reserved
`
`vii 
` 
`
`

`

`
`
` 
`
`I. Introduction
`
`Bungie, Inc. (“Bungie” or “Petitioner”) filed the current Petition (“Petition”)
`
`for inter partes review of claims 1-3, 7-8, and 11-20 of U.S. Patent No. 8,145,998
`
`(“the ‘998 patent” or “Leahy”) on June 1, 2015. In the Petition, Bungie challenges
`
`claims 1-3, 7, 8, 11, 12, 16, 18, and 20 of the ‘998 patent as allegedly obvious over
`
`three references, including U.S. Patent No. 5,659,691 issued to Durward et al.
`
`(“Durward”) (Ex. 1008), an article entitled Touring Virtual Reality Arcades by
`
`David Tracey (“Tracey”) (Ex. 1025), and a manual for the computer game
`
`Marathon (“Marathon”) (Ex. 1021).
`
`But as explained below, and with the support of the Declaration of Mark D.
`
`Pesce (Ex. 2017) (“Pesce”), the challenged claims are not invalidated based on
`
`Durward and the secondary references.
`
`Durward fails to disclose all relied-upon features of the challenged claims.
`
`For example, while the challenged claims expressly recite 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, and Durward’s specification provides no
`
`basis for a person of ordinary skill in the art to reach a different conclusion.
`1 
` 
`
`

`

`Additionally, neither Petitioner nor its technical declarant, Dr. Zyda, have
`
`overcome the barriers to modifying Durward’s scheme with Marathon’s
`
`perspective-switching. Durward seeks to “reduce the amount of data
`
`communicated” in a virtual reality network such that access is available to
`
`“multiple users located at different remote physical locations” and who are
`
`communicating via “conventional dialup telephone lines.” Durward at 1:35-51;
`
`2:1-16. To achieve this, Durward explains that the “data communicated to the user
`
`typically corresponds to the portion of the virtual space viewed from the
`
`perspective of the virtual being.” Id. at 1:65-67. As part of the reduction of data
`
`communicated to the virtual user, Durward purposefully does not transmit data
`
`necessary for a user to view the virtual space from other users’ perspectives.
`
`Marathon, which Petitioner relies upon to modify Durward, implements
`
`exactly the opposite scheme from Durward. Namely, Marathon “lets you switch
`
`views to the other players in the game by pressing the delete key.” Marathon at 18.
`
`But in order to switch views, the workstation cannot only receive the reduced data
`
`per Durward. Rather, the workstation must receive information necessary to view
`
`the virtual space from other points of view so it is capable of switching views “to
`
`the other players.” As supported by the Declaration of Mark Pesce, and as
`
`conceded by Petitioner’s declarant, Dr. Zyda, the Petitioner’s proposed
`
`combination of Marathon and Durward has the effect of completely frustrating and
`
`2 
` 
`
`

`

`undoing Durward’s scheme for reducing data communications. Further, Petitioner
`
`and its expert never recognize, much less reconcile this hindrance to the
`
`combination.
`
`Dr. Zyda discussed possible solutions to teleportation and perspective
`
`changes: “if someone hits the teleport button, you stall them a couple frames while
`
`you quickly download everything.” Ex. 2016 at 164:8-19. Users will think “this is
`
`sluggish.” Id. As another option, “we can put them over there [at the new location]
`
`immediately and have things pop on the screen slowly. … [T]hat’s horrible.” Id. at
`
`165:2-14. Both solutions are undesirable from a user’s perspective and would
`
`detract from, rather than enhance the user experience. Indeed, Dr. Zyda says that
`
`such sluggish response would cause people to “get pretty unhappy.” Id. at 166:13-
`
`15.
`
`Petitioner and Dr. Zyda have also failed to show all features of claims 11-12
`
`in the asserted combination of references. In claim 11, the client’s “first processor
`
`is further programmed to limit the number of remote user avatars shown on the
`
`graphic display based on the proximity of the remote user avatars relative to the
`
`local user avatar,” and claim 12 performs a similar limiting based on “orientation
`
`of the remote user avatars.” Notwithstanding Durward’s failure to disclose any
`
`“avatar” according to the proper construction of that term here, Petitioner’s theory
`
`presumes that Durward’s virtual being receives entity information beyond the
`
`3 
` 
`
`

`

`visual relevant space and then filters that information from the displayed entities
`
`based on proximity. This is simply not the case. According to Durward, other
`
`entities beyond the visual relevant space are either a) not sent to the virtual being
`
`(and therefore not further filtered at the entity), or b) sent to the virtual being and
`
`displayed without processing updates. In either instance, the virtual being does not
`
`further “limit the number of remote user avatars … based on the proximity … .” or
`
`“orientation of the remote user avatars.”
`
`In Grounds 2-3, Bungie also challenges claims 13-15 and 17 as allegedly
`
`obvious over Durward in view of Tracey and Marathon, further in view of separate
`
`secondary references, including U.S. Patent No. 5,021,976 to Wexelblat et al.
`
`(“Wexelblat”) (Ex. 1020), and U.S. Patent No. 5,777,621 to Schneider
`
`(“Schneider”) (Ex. 1019). But Wexelblat’s teleportation also presents barriers to
`
`Durward’s scheme, without solution from Petitioner or Dr. Zyda.
`
`Further, Petitioner contends that Schneider’s disclosure reaches the features
`
`of claims 13-15, directed to methods for limiting the number of remote user avatars
`
`shown on a display. Schneider’s disclosure is about the culling of objects before
`
`rendering, but Schneider fails to disclose any basis by which those objects are
`
`culled, and fails to refer specifically to disclose “avatars” as that term is properly
`
`construed according to the ‘998 patent. At least dependent claims 13-15 are
`
`independently patentable over the art of record.
`
`4 
` 
`
`

`

`II. Background
`
` 
`
`a. About U.S. Patent No. 8,145,998 (the “‘998 patent” or “Leahy”)
`Petitioner has previously characterized Patent Owner Worlds Inc. 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 of Worlds Chat was the technology that
`
`provides the backbone for the patent at issue here. The ‘998 patent was filed as
`
`U.S. Patent Application No. 12/406,970 on March 19, 2009, and claims priority to
`
`and the benefit of U.S. Provisional Patent Application No. 60/020,296, filed on
`
`November 13, 1995. As a link to this provisional application, the ‘998 patent also
`
`claims priority to a chain of U.S. non-provisional patent applications, including
`
`5 
` 
`
`

`

`U.S. Patent Application Nos. 12/353,218; 11/591,878; 09/632,154; and
`
`08/747,420.
`
`The title of the ‘998 patent is “SYSTEM AND METHOD FOR ENABLING
`
`USERS TO INTERACT IN A VIRTUAL SPACE.” The Background of the ‘998
`
`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 1:61-64
`
`(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 2:1-6.
`
`As an improvement, Leahy describes an embodiment in which the virtual
`
`world server is “much more discriminating as to what data is provided to each
`
`client[].” Id. at 3:52-53. Additionally, to handle the remote avatar positions
`
`received by a client, the client includes “a way to filter out avatars” for display
`
`using, according to various embodiments, proximity, user ID, or a crowd control
`
`function (which is “needed in some cases to ensure that neither client 60 nor user A
`
`get overwhelmed by the crowds of avatars likely to occur in a popular virtual
`
`world.”). Id. at 6:4-5; 5:39-41.
`
`6 
` 
`
`

`

`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 5:42-46.
`
`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 6:12-13.
`
`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 7:55-57.
`
`b. The Petition Challenges Claims 1-3, 7-8, and 11-20 of the ‘998
`Patent
`
`In this Petition, Petitioner challenges the validity of claims 1-3, 7-8, and 11-
`
`20 of the ‘998 patent. Claim 19 was not instituted, per the Board’s Institution
`
`Decision (“Inst. Dec.”). Of the instituted claims, claims 1, 2, and 18 are
`
`independent. Claim 1 is a method claim for “displaying interactions of a local user
`
`avatar … and a plurality of remote user avatars.” Among the steps of this method
`
`is “generating” a rendering, and also “switching” between two claimed renderings.
`
`7 
` 
`
`

`

`Claim 2 is a system claim reciting a processor’s instructions to “generate” and
`
`“switch” in a manner similar to those features of claim 1. Claim 18 is also a system
`
`claim and includes similar “generate” instructions but also recites a “change”
`
`instruction of the “perspective view of the rendering.”
`
`Claim 1 is presented below for reference:
`
`1. A method for displaying interactions of a local user avatar of
`a local user and a plurality of remote user avatars of remote users
`interacting in a virtual environment, the method comprising:
`receiving, at a client processor associated with the local user,
`positions associated with less than all of the remote user avatars in
`one or more interaction rooms of the virtual environment, wherein the
`client processor does not receive position information associated with
`at least some of the remote user avatars in the one or more rooms of
`the virtual environment, each avatar of the at least some of the remote
`user avatars failing to satisfy a condition imposed on displaying
`remote avatars to the local user;
`generating, on a graphic display associated with the client
`processor, a rendering showing position of at least one remote user
`avatar; and
`switching between a rendering on the graphic display that
`shows at least a portion of the virtual environment to the local user
`from a perspective of one of the remote user avatars and a rendering
`that allows the local user to view the local user avatar in the virtual
`environment.
`
`8 
` 
`
`

`

`(emphasis added). Independent claim 2 includes features similar to the above-
`
`emphasized features of claim 1. For example, claim 2 recites (in relevant part) a
`
`“processor programmed using the instructions to: receive position information
`
`associated with less than all of the remote user avatars …” and also to “switch
`
`between a rendering on the graphic display that shows the virtual world to the local
`
`user from a third user perspective and a rendering that allows the local user to view
`
`the local user avatar in the virtual world.”
`
`Claim 18 also recites similar “processor programmed using the instructions”
`
`features; though the claim 18 recites “a processor programmed using the
`
`instructions to: … change in three dimensions the perspective view of the
`
`rendering on the graphic display of the virtual world in response to user input.”
`
`According to an embodiment, the ‘998 patent describes renderings on the
`
`graphic display to show views other than views of the local user’s avatar:
`
`Each user interacts with a client machine (not shown) which
`produces a display similar to screen display 10, but from the
`perspective of the avatar for that client/user. Screen display 10 is the
`view from the perspective of a third user, D, whose avatar is not
`shown since D's avatar is not within D's own view. Typically, a user
`cannot see his or her own avatar unless the chat system allows “ou[t]
`of body” viewing or the avatar's image is reflected in a mirrored
`object in the virtual world.
`
`9 
` 
`
`

`

`Leahy at 1:30-38. As such, claim 1 recites two renderings, one of which displays
`
`“at least a portion of the virtual environment … from a perspective of one of the
`
`remote user avatars,” and the other displays a “view [of] the local user avatar in the
`
`virtual environment.”
`
`Petitioner alleges that claims 1, 2, and 18 are obvious over Durward in view
`
`of Tracey, further in view of Marathon. The Petition was also supported by the
`
`Declaration of Dr. Michael Zyda. Ex. 1002. But as will be explained below, the
`
`Petition fails to establish each feature of the ‘998 patent’s claims within the
`
`disclosures of Durward, Tracey, and Marathon, and further fails to justify the
`
`modification of Durward by Marathon.
`
`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
`
`10 
` 
`
`

`

`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); 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).
`
`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
`                                                            
`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,
`
`11 
` 
`
`

`

`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. 2042 at 1; Ex. 2043 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:
`
`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
`                                                                                                                                                                                                
`the certificates of correction signed and sealed on September 24, 2013 are not
`
`relevant to the issue of expiration dates of these patents.
`
`12 
` 
`
`

`

`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 “avatar” term should be construed consistently in each of the six
`
`related IPR matters before the Board. Pesce at ¶ 49.a.
`
`As such, 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 to be
`
`applied for at least the 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
`
`13 
` 
`
`

`

`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
`
`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
`
`14 
` 
`
`

`

`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
`
`scope of the claimed invention.” Id. at 7. That determination requires a more
`
`detailed analysis of the specification.
`
`Construction of “avatar”
`
`This term appears in each challenged Worlds patent, and appears in many of
`
`the Worlds patents’ claims. Bungie and Dr. Zyda propose a construction of “a
`
`graphical representation of a user.” Pet. at 12. In the District Court’s claim
`
`construction order, the District Court interpreted “avatar” as a “graphical
`
`representation of a user in three-dimensional form.” See Ex. 2006 at 20-24. The
`
`District Court’s construction is consistent with the specification of the challenged
`
`15 
` 
`
`

`

`patent and the interpretation that would be reached by a person of ordinary skill in
`
`the art. Pesce at ¶ 49.a.
`
`According to the Worlds patents, “[e]ach avatar 18 is a three dimensional
`
`figure chosen by a user to represent the user in the virtual world.” Ex. 1001 at
`
`3:25-27. The Worlds patents are consistent in this description. The Worlds patents
`
`also explain that “orientation is needed for rendering because the avatar images are
`
`three-dimensional and look different (in most cases) from different angles.” Id. at
`
`6:13-16. And the av