Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 44
`
` Entered: November 30, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01268
`Patent 7,181,690 B1
`____________
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Bungie, Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–20 of U.S. Patent No. 7,181,690 B1 (Ex. 1001,
`“’690 patent”). Paper 3 (“Pet.”). Pursuant to 35 U.S.C. § 314(a), we
`determined the Petition showed a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of claims 1–8, 10–17, and 19
`(“instituted claims”), and instituted inter partes review of these claims on
`
`BUNGIE - EXHIBIT 1061
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
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`IPR2015-01268
`Patent 7,181,690 B1
`certain asserted grounds of unpatentability. Paper 17 (“Inst. Dec.”). We,
`however, did not institute review of claims 9, 18, and 20, because we
`determined the Petition did not show a reasonable likelihood that Petitioner
`would prevail with respect to these claims. Id. at 4–8.
`After institution, Patent Owner Worlds Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 23 (“Resp.”)) and a Supplement to the
`Response (Paper 25 (“Supp. Resp.”)). Petitioner filed a Reply to Patent
`Owner’s Response. Paper 34 (“Reply”).
`Patent Owner filed a Motion to Exclude. Paper 36 (“Mot.”).
`Petitioner filed an Opposition to the Motion (Paper 39 (“Opp.”)), to which
`Patent Owner filed a Reply (Paper 41 (“Mot. Reply”)).
`An oral hearing was held before the Board. Paper 43 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`
`and 37 C.F.R. § 42.73. Having considered the record before us, we
`determine Petitioner has shown by a preponderance of the evidence that
`claims 1–3, 5–7, 10–12, 14, 15, 17, and 19 of the ’690 patent are
`unpatentable. See 35 U.S.C. § 316(e). Petitioner, however, has not
`demonstrated by a preponderance of the evidence that claims 4, 8, 13,
`and 16 are unpatentable.
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties indicate that Patent Owner has asserted the ’690 patent in
`
`a case before the U.S. District Court for the District of Massachusetts
`(“District Court”), Worlds, Inc. v. Activision Blizzard, Inc., Case No.
`1:12-cv-10576-DJC (D. Mass.) (“District Court Case”). Pet. 7–8; Paper 6.
`In addition, patents related to the ’690 patent are the subject of inter partes
`reviews, based on petitions filed by Petitioner: IPR2015-01264, challenging
`2
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`IPR2015-01268
`Patent 7,181,690 B1
`U.S. Patent No. 7,945,856 B2 (“’856 patent”); IPR2015-01269, challenging
`U.S. Patent No. 7,493,558 B2 (“’558 patent”); IPR2015-01319, challenging
`U.S. Patent No. 8,082,501 B2 (“’501 patent”); IPR2015-01321 and
`IPR2015-01325, challenging U.S. Patent No. 8,145,998 B2 (“’998 patent”).
`See Pet. 7–8; Paper 6.
`
`B. THE ’690 PATENT
`The ’690 patent discloses a highly-scalable “client-server
`architecture” for a “graphical, multi-user, interactive virtual world system.”
`Ex. 1001, [57], 2:24–26, 2:62–66. In the preferred embodiment, each user
`chooses an avatar to “represent the user in the virtual world,” id. at 3:15–18,
`and “interacts with a client system,” which “is networked to a virtual world
`server,” id. at 3:4–5. “[E]ach client . . . sends its current location, or changes
`in its current location, to the server.” Id. at 3:31–34; see id. at 2:32–36.
`In the preferred embodiment, the system implements a “crowd
`control” function, which determines “[w]hether another avatar is in range”
`and “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 5:29–35; see id. at 2:57–58. “Server 61 maintains a variable,
`N, which sets the maximum number of other avatars [user] A will see,”
`whereas client 60 “maintains a variable, N’, which might be less than N,”
`indicating “the maximum number of avatars client 60 wants to see and/or
`hear.” Id. at 5:35–41; see id. at 13:27–29. These limits of N and N’ avatars
`“[g]enerally” “control how many avatars [user] A sees.” Id. at 5:55–58.
`Server 61 tracks the location and orientation of each user’s avatar and
`maintains a list of the “N nearest neighboring remote avatars” for each
`user’s avatar. Id. at 5:45–49, 13:30–33, 14:38–43. “[A]s part of crowd
`control,” the server notifies client 60 for a user “regarding changes in the N
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`IPR2015-01268
`Patent 7,181,690 B1
`closest remote avatars and their locations.” Id. at 14:43–49. On the
`client-side, “[w]here N’ is less than N, the client also uses position data to
`select N’ avatars from the N provided by the server.” Id. at 6:6–8.
`The specification explains that in the preferred embodiment, client 60,
`used by user A, features remote avatar position table 112 and current avatar
`position register 114. Id. at 2:57–58, 4:49–62, Fig. 4. “Current avatar
`position register 114 contains the current position and orientation of [user]
`A’s avatar in the virtual world.” Id. at 5:19–20. Remote avatar position
`table 112, in turn, “contains the current positions of the ‘in range’ avatars
`near [user] A’s avatar.” Id. at 5:29–31; see id. at 5:53–54, 6:1–6.
`The client executes a process to render a “view” of the virtual world
`“from the perspective of the avatar for that . . . user.” Id. at [57], 2:28–30,
`3:20–23, 4:42–48, 7:50–54. In the preferred embodiment, client system 60
`executes a graphical rendering engine program to “generate[] the user’s view
`of the virtual world.” Id. at 2:57–58, 4:42–48. “In rendering a view,
`client 60 requests the locations, orientations and avatar image pointers of
`neighboring remote avatars from server 61 and the server’s responses are
`stored in remote avatar position table 112.” Id. at 7:42–45. “Rendering
`engine 120 then reads register 114 [and] remote avatar position table 112,”
`as well as databases holding avatar images and the layout of the virtual
`world, and “renders a view of the virtual world from the view point (position
`and orientation) of [user] A’s avatar.” Id. at 7:50–59; see id. at 6:40–42,
`7:36–41.
`
`C. ILLUSTRATIVE CLAIM
`Of the instituted claims, claims 1, 6, 10, 11, and 15 of the ’690 patent
`are independent. Id. at 19:30–22:13. Claim 1 is illustrative of the recited
`subject matter and is reproduced below.
`4
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`IPR2015-01268
`Patent 7,181,690 B1
`1. A method for enabling a first user to interact with other
`users in a virtual space, wherein the first user and the other
`users each have an avatar and a client process associated
`therewith, and wherein each client process is in communication
`with a server process, wherein the method comprises:
`(a) receiving a position of less than all of the other users’
`avatars from the server process; and
`(b) determining, from the received positions, a set of the
`other users’ avatars that are to be displayed to the first
`user,
`wherein steps (a) and (b) are performed by the client process
`associated with the first user.
`Id. at 19:31–42. In this Decision, we refer to step (a) as the “receiving step”
`and step (b) as the “determining step.”
`D. INSTITUTED GROUNDS OF UNPATENTABILITY
`We instituted inter partes review of claims 1–8, 10–17, and 19 of the
`’690 patent on the following grounds of unpatentability asserted in the
`Petition. Inst. Dec. 39.
`Reference(s)
`Claims
`Basis
`§ 1021 Thomas A. Funkhouser, RING: A Client-Server
`1–3, 5–7,
`System for Multi-User Virtual Environments, in
`10–12, 14,
`1995 SYMPOSIUM ON INTERACTIVE 3D GRAPHICS 85
`15, 17, 19
`(1995) (Ex. 1005, “Funkhouser”)
`§ 103 Funkhouser, and Thomas A. Funkhouser & Carlo
`H. Séquin, Adaptive Display Algorithm for
`Interactive Frame Rates During Visualization of
`Complex Virtual Environments, in COMPUTER
`GRAPHICS PROCEEDINGS: ANNUAL CONFERENCE
`SERIES 247 (1993) (Ex. 1017, “Funkhouser ’93”)
`§ 102 U.S. Patent No. 5,659,691 (filed Sept. 23, 1993)
`(issued Aug. 19, 1997) (Ex. 1008, “Durward”)
`
`1–3, 5–7,
`10–12, 14,
`15, 17, 19
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29
`(2011), revised 35 U.S.C. §§ 102–103, effective March 16, 2013. Because
`the ’690 patent has an effective filing date before this date, we refer to the
`pre-AIA versions of §§ 102 and 103 throughout this Decision.
`5
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`4, 8, 13, 16
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`Durward was listed in an Information Disclosure Statement filed during
`prosecution of the ’690 patent. Pet. 3; Ex. 1004, 400, 453.
`Petitioner supports its challenge with a Declaration executed by
`Michael Zyda, D.Sc. on May 26, 2015 (Ex. 1002) and a Second Declaration
`executed by Dr. Zyda on March 4, 2016 (Ex. 1038). Patent Owner relies on
`a Declaration executed by Mr. Mark D. Pesce on March 15, 2016
`(Ex. 2017).
`
`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL IN THE ART
`We begin our analysis by addressing the level of ordinary skill in the
`art. Petitioner argues, and Dr. Zyda opines, that a person of ordinary skill in
`the art relevant to the ’690 patent would have had “through education or
`practical experience, the equivalent of a bachelor’s degree in computer
`science or a related field and at least an additional two years of work
`experience developing or implementing networked virtual environments.”
`Pet. 7; Ex. 1002 ¶ 55. Mr. Pesce similarly testifies that a person of ordinary
`skill in the art would have had “at least a bachelor’s degree or equivalent in
`computer science, with two or more years of experience in coding related to
`both virtual environments and computer networking.” Ex. 2017 ¶ 33.
`The parties’ proposals for the level of ordinary skill in the art have
`slight differences in wording, yet we do not find them to have meaningful
`distinctions (e.g., “at least” two years versus “two or more years,”
`“networked virtual environments” versus “virtual environments and
`computer networking”). Neither party asserts that there is any such
`distinction. Based on the testimony of the parties’ experts as well as our
`review of the ’690 patent, the types of problems and solutions described
`therein, and the prior art involved in this proceeding, we adopt the following
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`IPR2015-01268
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`as the level of ordinary skill in the art: the equivalent, through education or
`practical experience, of a bachelor’s degree in computer science or a related
`field, and at least two years of experience developing, coding, or
`implementing networked virtual environments, or virtual environments and
`computer networking.
`B. MR. PESCE’S QUALIFICATION AS AN EXPERT
`Petitioner argues the testimony of Mr. Pesce, Patent Owner’s
`
`declarant, should be given no weight because it “often is inconsistent, lacks
`objective support and/or was incapable of being substantiated during . . .
`cross-examination,” providing examples of these alleged deficiencies in
`Mr. Pesce’s testimony regarding claim construction and the timing of the
`invention of claims 1 and 11 of the ’690 patent. Reply 1–3. Petitioner
`further argues that “[h]ow Mr. Pesce qualifies as an expert in this field is
`unclear,” citing Mr. Pesce’s deposition testimony regarding the amount of
`experience he had in 19952 and his lack of an educational degree beyond
`high school. Reply 3 (citing Ex. 1046, 18:12–19:2, 21:8–15, 40:10–20;
`
`
`2 The ’690 patent claims priority to provisional application no. 60/020,296
`(“’296 provisional”), filed on November 13, 1995. Ex. 1001, Cert. of Corr.
`Petitioner uses the provisional filing date in its analysis in its briefing and
`Dr. Zyda’s declaration (see, e.g., Pet. 2, 7; Reply 6; Ex. 1002 ¶¶ 51–55), and
`represented at the hearing that it does not contest, for purposes of this
`proceeding, priority to the provisional (Tr. 195:1–7). Patent Owner also
`takes the position that the ’690 patent is entitled to priority to the provisional
`and represented at the hearing that its specification is nearly identical to that
`of the ’690 patent. See, e.g., id. at 90:5–91:3, 92:10–15; Ex. 2017 ¶ 34.
`Based on our review of the ’296 provisional, we agree with Patent Owner’s
`representation that its specification is nearly identical to the ’690 patent
`specification, and we accept the parties’ agreement that the ’690 patent is
`entitled to priority to the ’296 provisional. See Ex. 2020. None of our
`determinations in this Decision would change if the ’690 patent were not
`entitled to this priority date.
`
`
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`IPR2015-01268
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`Ex. 2017 ¶ 35). Petitioner also asserts that “Mr. Pesce was unwilling to
`address his documented . . . use of psychedelic drugs during the 1990s
`(Ex. 1041) and whether that drug use affected his recollection of events
`during the period relevant to the [’690] patent[]. See also, Ex. 1046 at
`46:11-47:21, 50:25-53.” Reply 3.
`Here, Petitioner has not moved to exclude Mr. Pesce’s testimony. Nor
`has Petitioner taken an express and affirmative position that Mr. Pesce is not
`qualified as an expert. See id. (“How Mr. Pesce qualifies as an expert in this
`field is unclear.”) (emphasis added). To the extent Petitioner is suggesting
`as much, we disagree.
`
`Federal Rule of Evidence (“Rule”) 702 provides that a “witness who
`is qualified as an expert by knowledge, skill, experience, training, or
`education may testify in the form of an opinion if (a) the expert’s knowledge
`will help the trier of fact to understand the evidence or to determine a fact in
`issue; (b) the testimony is based upon sufficient facts or data; (c) the
`testimony is the product of reliable principles and methods; and (d) the
`witness has applied the principles and methods reliably to the facts of the
`case.” Fed. R. Evid. 702. Under this standard, testimony on the issue of
`unpatentability proffered by a witness who is not “qualified in the pertinent
`art” generally is not admissible. Sundance Inc. v. DeMonte Fabricating
`Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Rule 702, however, does not
`“require[] a witness to possess something more than ordinary skill in the art
`to testify as an expert” and a “witness possessing merely ordinary skill will
`often be qualified to present expert testimony.” Id. at 1363. Nor does the
`Rule require a perfect match or complete overlap between the witness’s
`technical qualifications and the field of the invention. See SEB S.A. v.
`Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010).
`8
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`
`In his declaration and curriculum vitae, Mr. Pesce details his relevant
`work experience from 1984 to the present as well as his teaching experience
`and numerous technical publications and presentations. See Ex. 2017 ¶¶ 3–
`19, 35–42, pp. 67–82; see also Ex. 1046, 19:8–21:16, 39:11–40:20. Having
`reviewed this experience and Mr. Pesce’s technical testimony, we find his
`knowledge, skill, and experience in the relevant field of networked virtual
`environments, as well as computer networking and virtual reality more
`generally, sufficient to render him qualified to offer expert testimony in this
`proceeding under Rule 702.
`
`We do not find the evidence to which Petitioner points persuasive on
`this issue. First, Petitioner refers to Mr. Pesce’s declaration testimony that
`“as of 1995, [he] possessed more than 5 years of experience in the computer
`graphics industry with an emphasis on virtual reality” and his admission
`during his deposition that he was working in the field “from 1991” so “five
`years” is accurate, rather than “more than five years” as he stated in his
`declaration. Ex. 2017 ¶ 33; Ex. 1046, 39:13–40:20; see Reply 3. We do not
`find this admitted minor misstatement of Mr. Pesce’s experience to
`undermine his qualifications, or credibility, as an expert. Mr. Pesce worked
`on virtual reality environments beginning in 1991 and continuing through
`the relevant time of invention of the ’690 patent, and for many years
`thereafter. See, e.g., Ex. 2017 ¶¶ 5–19, 35–42, pp. 67–82; Ex. 1046, 39:13–
`40:20. Second, as to Mr. Pesce’s lack of an educational degree beyond high
`school, Petitioner and Dr. Zyda, as well as Mr. Pesce, agree that experience
`can overcome a lack of a formal technical education in satisfying the
`standard for a person of ordinary skill in the art, and we have so determined
`in our finding in § II.A regarding the level of ordinary skill in the art. Pet. 7
`(proffering definition of one of ordinary skill in the art as “someone who
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`had, through education or practical experience, the equivalent of a
`bachelor’s degree in computer science or a related field”) (emphasis added);
`Ex. 1002 ¶ 55 (same); Ex. 2017 ¶ 33; see id. ¶¶ 3, 35; Reply 3; Opp. 7. We
`note that Mr. Pesce did attend the Massachusetts Institute of Technology
`(“MIT”) for four semesters. Ex. 2017 ¶ 3; Ex. 1046, 19:8–14; see id.
`at 19:15–21:16. As we explain above, we find Mr. Pesce’s experience, skill,
`and knowledge in the relevant field sufficient to render him qualified to offer
`expert testimony in this proceeding.
`Third, we turn to Petitioner’s citation and reference to Exhibit 1041,3
`an excerpt from a 1999 interview of Mr. Pesce at the AllChemical Arts
`conference in which he discusses how his use of psychedelic drugs,
`beginning in college, has impacted and facilitated his career and work, and
`Mr. Pesce’s related deposition testimony in which he states he does not
`recall the interview and the specific contents thereof. Reply 3 (citing
`Ex. 1041; Ex. 1046, “46:11-47:21, 50:25-53”); Ex. 1041; Ex. 1046, 46:11–
`47:21, 50:25–57:10. We have considered Exhibit 1041 in assessing
`Mr. Pesce’s capacity to perceive and recall developments and details from
`the relevant art in the 1990s about which he testifies, as well as the reliability
`of his perception and recollection. See infra § II.H; see, e.g., Ex. 2017
`¶¶ 36–44, 49.a.iv, 59; Ex. 1046, 85:4–21, 89:10–90:7, 204:12–205:20,
`222:1–223:6. We do not find Exhibit 1041, which lacks detailed
`information regarding the extent and regularity of any drug use, to
`undermine Mr. Pesce’s capacity to perceive and recall such events or the
`reliability of his relevant testimony. Nor do we find his inability to
`
`
`3 Exhibit 1041 is a subject of Patent Owner’s motion to exclude, which we
`address below in § II.H. We consider Exhibit 1041 here only for the limited
`purpose for which we find it relevant and admissible in § II.H.
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`IPR2015-01268
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`remember the specifics of this one particular interview given nearly twenty
`years ago to undermine his credibility, reliability, or qualifications as a
`witness. Having carefully reviewed his testimony in this proceeding, we
`find his technical testimony, and particularly his testimony on issues related
`to the development of the art in the early to mid-1990s, cogent. We consider
`Mr. Pesce’s testimony throughout our analysis below and where we discount
`or disagree with his testimony, it is for reasons other than the contents of
`Exhibit 1041 and his deposition testimony regarding this exhibit.
`Petitioner’s remaining arguments as to specific alleged deficiencies in
`Mr. Pesce’s testimony on claim construction and the date of invention of
`claims 1 and 11 of the ’690 patent go to the weight to be accorded to
`Mr. Pesce’s testimony on these particular substantive issues. See Reply 1–3.
`We have considered these alleged deficiencies and address them, as
`appropriate, in our analysis below of the issues to which they pertain.
`C. CLAIM INTERPRETATION
`We now consider the meaning of the claim language.
`1. Applicable Legal Standards
`In our Institution Decision, we raised the issue of the impending
`expiration of the ’690 patent and its potential impact on the applicable claim
`construction standard, given that the Board construes unexpired patents
`under the broadest reasonable interpretation standard but expired patents
`under the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005). See Inst. Dec. 4 n.1; 37 C.F.R. § 42.100(b) (2012)4; Cuozzo
`
`
`
`
`4 The Office amended rule 37 C.F.R. § 42.100(b) after the Institution
`Decision in this proceeding. The amended rule does not apply to this
`proceeding, because it applies only to petitions filed on or after May 2, 2016.
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`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that
`37 C.F.R. § 42.100(b), under which the Board applies the broadest
`reasonable interpretation standard to unexpired patents, “represents a
`reasonable exercise of the rulemaking authority that Congress delegated to
`the . . . Office”); Black & Decker, Inc. v. Positec USA, Inc., 646 Fed. App’x
`1019, 1024 (Fed. Cir. 2016) (holding that in an inter partes review,
`“[c]laims of an expired patent are given their ordinary and customary
`meaning in accordance with our opinion in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc)”). Because neither party had addressed this
`issue, we stated that we “expect the parties to address, with particularity, in
`their future briefing the expiration date of [the] ’690 patent claims on which
`we institute inter partes review.” Inst. Dec. 4 n.1.
`In the Supplement to its Response, Patent Owner represented that the
`expiration date of the ’690 patent is November 12, 2016, with an explanation
`supporting the calculation of this date. Supp. Resp.; see Resp. 7–9. At the
`oral hearing, Patent Owner confirmed this expiration date and Petitioner
`indicated that it agrees with and does not challenge this date. See Tr. 14:1–
`16, 88:8–89:7. Based on the parties’ agreement and our review of the
`record, we agree that the ’690 patent expired on November 12, 2016. See,
`e.g., Ex. 1001, [22], [63], “(*) Notice”; Ex. 1004, 161, 550, 580.
`Because the ’690 patent has expired, we interpret its claims using the
`Phillips standard.5 See 37 C.F.R. § 42.100(b) (2012); Black & Decker,
`
`
`See Amendments to the Rules of Practice for Trials Before the Patent Trial
`and Appeal Board, 81 Fed. Reg. 18,750, 18,766 (Apr. 1, 2016).
`5 Although we apply the Phillips standard in this Decision, our claim
`interpretations would not differ under the broadest reasonable interpretation
`standard, applicable to unexpired patents. Rather, having considered the
`issue, including our interpretations of an identical claim term and similar
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`646 Fed. App’x at 1024; CSB-Sys., 832 F.3d at 1338, 1340–42 (“[O]nce a
`patent expires, the [Board] should apply the Phillips standard for claim
`construction.”) (holding that where the patent at issue expired during the
`reexamination proceeding, the Board should have applied the Phillips claim
`construction standard in its reexamination decision). Under the Phillips
`standard, claim terms “are generally given their ordinary and customary
`meaning,” which is the “meaning the term would have to a person of
`ordinary skill in the art . . . at the time of the invention” when read “in the
`context of” the specification and prosecution history. Phillips, 415 F.3d at
`1312–14; Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
`(Fed. Cir. 2012) (citing Phillips, 415 F.3d at 1313); Aventis Pharma S.A. v.
`Hospira, Inc., 675 F.3d 1324, 1329 (Fed. Cir. 2012) (citing Phillips, 415
`F.3d at 1312).
`A claim term will be interpreted more narrowly than its ordinary and
`customary meaning only under two circumstances: (1) the “patentee sets out
`a definition and acts as [its] own lexicographer,” or (2) the “patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Aventis, 675 F.3d at 1330. To act as a lexicographer, the
`patentee “must clearly set forth a definition of the disputed claim term other
`
`claim language in the related ’856 and ’558 patents under the broadest
`reasonable interpretation standard in IPR2015-01264 and IPR2015-01269,
`respectively, we would reach the same claim interpretations if we were to
`apply the broadest reasonable interpretation standard. See IPR2015-01264,
`Paper 42, at 20–56; IPR2015-01269, Paper 42, at 11–53; see, e.g., In re
`CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1340–42 (Fed. Cir. 2016) (recognizing
`that “[i]n many cases, the claim construction will be the same under the
`Phillips and the [broadest reasonable interpretation] standards” and holding
`that for the particular claim constructions at issue, “the Board’s use of
`[broadest reasonable interpretation] did not produce a different result than
`the one we reach using the Phillips standard”).
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`than its plain and ordinary meaning,” or in other words, “must clearly
`express an intent to redefine the term.” Id. (internal citations and quotations
`omitted). “This clear expression . . . may be inferred from clear limiting
`descriptions of the invention in the specification or prosecution history.” Id.
`Similarly, to disavow claim scope, “the specification or prosecution
`history [must] make clear that the invention does not include a particular
`feature.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`(Fed. Cir. 2014) (internal citation, quotation, and alterations omitted). To do
`so, the patentee may “include[] in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope.”
`Aventis, 675 F.3d at 1330 (internal quotations omitted). Ambiguous
`language does not constitute disavowal. Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314, 1323–26 (Fed. Cir. 2003). Nor is it sufficient “that the only
`embodiments, or all of the embodiments, contain a particular limitation.”
`Aventis, 675 F.3d at 1330.
`“A patent that discloses only one embodiment is not necessarily
`limited to that embodiment.” GE Lighting, 750 F.3d at 1309. “It is
`improper to read limitations from a preferred embodiment described in the
`specification—even if it is the only embodiment—into the claims absent a
`clear indication in the intrinsic record that the patentee intended the claims
`to be so limited.” Id.
`Here, both parties address the scope of the “determining” step or
`limitation recited in independent claims 1, 6, 10, 11, and 15 and the
`construction of the term “avatar” recited in each instituted claim of the
`’690 patent. Pet. 9–11; Resp. 7–23; Reply 3–12. Petitioner also proffers a
`construction for the recited “server process” and “client process.” Pet. 11–
`
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`12.6 Based on our review of the arguments and evidence of record, we
`determine that we must address only the issues of claim interpretation
`discussed below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (holding that only claim terms that “are in
`controversy” need to be construed and “only to the extent necessary to
`resolve the controversy”).
`2. The Determining Limitations (Claims 1, 6, 10, 11, and 15)
`Each instituted independent claim of the ’690 patent, claims 1, 6, 10,
`11, and 15, recites a similar “determining” step or limitation (collectively,
`the “determining limitations”). Ex. 1001, 22:11–15, 22:40–44. Specifically,
`claims 1 and 11 recite the same determining step, “determining, from the
`received positions, a set of the other users’ avatars that are to be displayed to
`the first user,” and specify that the step must be performed by “the client
`process associated with the first user.” Id. at 19:38–42, 21:12–19. Claim 10
`recites a very similar limitation that “the client process is operable” to
`perform: “determine from the received positions a set of the other users’
`avatars that are to be displayed.” Id. at 21:1–5. Claims 6 and 15, in turn,
`feature the following as “step (d)” in each claim: “(d) determining from the
`positions transmitted in step (c), by each client process, a set of the avatars
`that are to be displayed.” Id. at 20:17–24, 22:11–15.
`The parties dispute the proper scope of these determining limitations.
`See Pet. 10–11; Resp. 12–22; Reply 4–10. Petitioner argues that, under
`
`
`6 The parties also address the construction of “synchronously
`disseminating,” as recited in claims 9 and 18. Pet. 12; Resp. 54–55. We
`addressed the construction of this term in the Institution Decision. Inst.
`Dec. 3–8. We did not institute inter partes review of independent claims 9
`and 18 or claim 20, which depends from claim 18. Id. at 7–8, 39. Thus, we
`do not rely on this construction in this Final Written Decision.
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`either the broadest reasonable interpretation or Phillips standard, the
`determining limitations of claims 1, 6, 10, 11, and 15 encompass “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.” See Pet. 10–11; Reply 4. Patent Owner does
`not proffer a construction of the determining limitations, see Resp. 12–22;
`Tr. 96:14–97:8, yet disputes Petitioner’s proposal regarding their scope.
`Patent Owner argues Petitioner’s proposal is “not supported by” and is “not
`consistent with the specification . . . , which does not correlate the
`‘determining’ step with a field of view.” Resp. 12, 14. According to Patent
`Owner, each determining limitation, when read consistent with the
`’690 patent specification, “is properly interpreted as a step separate from the
`‘view point’ rendering/display process of the rendering engine.” Id. at 21–
`22; see Tr. 96:14–97:22.
`
`As an initial matter, we note that Petitioner and Patent Owner agree
`that the proper interpretation of the determining limitations of claims 1, 6,
`10, 11, and 15 does not depend on the applicable claim construction
`standard, whether Phillips or the broadest reasonable interpretation. See
`Resp. 12–13, 21–22 (arguing that Petitioner’s proposed interpretation “is not
`a proper construction under either the Phillips analysis or the broadest
`reasonable interpretation standard” and “[u]nder either claim construction
`standard,” the determining limitations are “properly interpreted” as separate
`from the “rendering/display process of the rendering engine”); Reply 4
`(“[Petitioner]’s proposed constructions are correct under either standard.”).
`As we note above, we have considered the issue, including our interpretation
`of similar determining limitations in the related ’856 and ’558 patents under
`the broadest reasonable interpretation standard in IPR2015-01264 and
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`IPR2015-01269, respectively, and we would reach the same determinations
`and conclusions we reach below under the Phillips standard if we were to
`use the broadest reasonable interpretation standard. See infra note 5;
`IPR2015-01264, Paper 42, at 20–40; IPR2015-01269, Paper 42, at 15–37;
`see, e.g., CSB-Sys., 832 F.3d at 1340–43 (recognizing that “[i]n many cases,
`the claim construction will be the same under the Phillips and the [broadest
`reasonable interpretation] standards” and holding that for the particular
`claim terms at issue, “the Board’s use of [broadest reasonable interpretation]
`did not produce a different result than the one we reach using the Phillips
`standard,” because “[e]ven under the Phillips standard, there is no basis for
`limiting the claims as narrowly as [patent owner] argues”). We proceed to
`our analysis, applying the Phillips standard.
`We note that in the District Court Case, in which Phillips was the
`governing claim construction standard, Patent Owner argued that the
`determining limitat