Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 42
`
` Entered: November 28, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01269
`Patent 7,493,558 B2
`____________
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and JASON J. CHUNG,
`Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`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 4–9 (“challenged claims”) of U.S. Patent No. 7,493,558 B2
`(Ex. 1001, “’558 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 unpatentability and instituted inter partes
`
`BUNGIE - EXHIBIT 1062
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
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`IPR2015-01269
`Patent 7,493,558 B2
`review of these claims on certain asserted grounds of unpatentability.
`Paper 13 (“Inst. Dec.”).
`After institution, Patent Owner Worlds Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 20 (“Resp.”)) and a Supplement to the
`Response (Paper 22 (“Supp. Resp.”)). Petitioner filed a Reply to Patent
`Owner’s Response. Paper 31 (“Reply”).
`Patent Owner filed a Motion to Exclude. Paper 33 (“Mot.”).
`Petitioner filed an Opposition to the Motion (Paper 36 (“Opp.”)), to which
`Patent Owner filed a Reply (Paper 38 (“Mot. Reply”)).
`An oral hearing was held before the Board. Paper 41 (“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 4, 6, 8, and 9 of the ’558 patent are unpatentable. See 35 U.S.C.
`§ 316(e). Petitioner, however, has not demonstrated by a preponderance of
`the evidence that claims 5 and 7 are unpatentable.
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties indicate that Patent Owner has asserted the ’558 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. 10; Paper 6. In
`addition, patents related to the ’558 patent are the subject of inter partes
`reviews, based on petitions filed by Petitioner: IPR2015-01264, challenging
`U.S. Patent No. 7,945,856 B2; IPR2015-01268, challenging U.S. Patent No.
`7,181,690 B1 (“’690 patent”); IPR2015-01319, challenging U.S. Patent No.
`8,082,501 B2 (“’501 patent”); IPR2015-01321 and IPR2015-01325,
`2
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`IPR2015-01269
`Patent 7,493,558 B2
`challenging U.S. Patent No. 8,145,998 B2 (“’998 patent”). See Pet. 10;
`Paper 6.
`
`B. THE ’558 PATENT
`The ’558 patent discloses a highly-scalable “client-server
`architecture” for a “graphical, multi-user, interactive virtual world system.”
`Ex. 1001, [57], 2:30–32, 3:1–3. In the preferred embodiment, each user
`chooses an avatar to “represent the user in the virtual world,” id. at 3:19–21,
`and “interacts with a client system,” which “is networked to a virtual world
`server,” id. at 3:8–9. “[E]ach client . . . sends its current location, or changes
`in its current location, to the server.” Id. at 3:35–38; see id. at 2:39–42.
`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 5:32–36; see id. at 2:61–63. “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 5:37–41; see id. at 13:19–21. 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, 13:22–25, 14:29–34. “[A]s part of crowd
`control,” the server notifies client 60 for a user “regarding changes in the N
`closest remote avatars and their locations.” Id. at 14:34–40. 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.
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`IPR2015-01269
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`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 2:61–63, 4:51–64, Fig. 4. “Current avatar
`position register 114 contains the current position and orientation of [user]
`A’s avatar in the virtual world.” Id. at 5:21–22. Remote avatar position
`table 112, in turn, “contains the current positions of the ‘in range’ avatars
`near [user] A’s avatar.” Id. at 5:31–32; 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], 2:34–36,
`3:24–27, 4:44–50, 7:48–52. 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 2:61–63, 4:44–50. “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 7:40–43. “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 7:48–56; see id. at 6:39–41,
`7:34–39.
`
`C. ILLUSTRATIVE CLAIM
`Challenged claims 4, 6, and 8 of the ’558 patent are independent
`claims. Id. at 21:58–23:5. Claim 4 is illustrative of the recited subject
`matter and is reproduced below.
`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
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`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.
`Id. at 21:58–22:13.
`D. INSTITUTED GROUNDS OF UNPATENTABILITY
`We instituted inter partes review of claims 4–9 of the ’558 patent on
`the following grounds of unpatentability asserted in the Petition. Inst.
`Dec. 36.
`Reference(s)
`Claims Basis
`§ 1021 Thomas A. Funkhouser, RING: A Client-Server
`4, 6, 8,
`System for Multi-User Virtual Environments, in 1995
`and 9
`SYMPOSIUM ON INTERACTIVE 3D GRAPHICS 85 (1995)
`(Ex. 1005, “Funkhouser”)
`5 and 7 § 103 Funkhouser, and Thomas A. Funkhouser & Carlo H.
`Séquin, Adaptive Display Algorithm for Interactive
`Frame Rates During Visualization of Complex Virtual
`
`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 ’558 patent has an effective filing date before this date, we refer to the
`pre-AIA versions of §§ 102 and 103 throughout this Decision.
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`IPR2015-01269
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`Claims Basis
`
`Reference(s)
`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)
`4, 6, 8,
`(issued Aug. 19, 1997) (Ex. 1008, “Durward”)
`and 9
`Durward was listed in an Information Disclosure Statement filed during
`prosecution of the ’558 patent. Pet. 4–5; Ex. 1004, 77, 126.
`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 ’558 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. 10; 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
`
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`distinctions (e.g., “at least” two years versus “two or more years,”
`“networked virtual environments” versus “virtual environments and
`computer networking”). Neither party asserted that there is any such
`distinction. Based on the testimony of the parties’ experts as well as our
`review of the ’558 patent, the types of problems and solutions described
`therein, and the prior art involved in this proceeding, we adopt the following
`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 the ’558 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
`
`
`2 The ’558 patent claims priority to provisional application no. 60/020,296
`(“’296 provisional”), filed on November 13, 1995. Ex. 1001, [60].
`Petitioner uses the provisional filing date in its analysis in its briefing and
`Dr. Zyda’s declaration (see, e.g., Pet. 3, 10; 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 ’558 patent is entitled to priority to the provisional
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`(citing Ex. 1046, 18:12–19:2, 21:8–15, 40:10–20; 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
`[’558] 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
`
`and represented at the hearing that its specification is nearly identical to that
`of the ’558 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 ’558 patent
`specification, and we accept the parties’ agreement that the ’558 patent is
`entitled to priority to the ’296 provisional. See Ex. 2020. None of our
`determinations in this Decision would change if the ’558 patent were not
`entitled to this priority date.
`
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`“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).
`
`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 ’558 patent, and for many years
`thereafter. See, e.g., Ex. 2017 ¶¶ 5–19, 35–42, pp. 67–82; Ex. 1046, 39:13–
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`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. 10 (proffering definition of one of ordinary skill in the art as “someone
`who 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
`
`
`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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`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
`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
`certain claims of the ’558 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 ’558 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
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`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
`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 claims 4–9 of the ’558 patent.”
`Inst. Dec. 4 n.1.
`In its Response and the Supplement to its Response, Patent Owner
`represented that the ’558 patent expires on November 30, 2016, with an
`explanation supporting the calculation of this expiration date. Resp. 8–10;
`Supp. Resp. 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 ’558 patent expires on
`
`
`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.
`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). Moreover,
`we note that neither party requested permission to file a motion
`contemplated by the amended rule. See, e.g., Resp. 8–11; Reply 3–4.
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`November 30, 2016—one year from the date of the Institution Decision,
`which issued on November 30, 2015—and, therefore, has not yet expired.
`See, e.g., Ex. 1001, [22], [60], [63], “(*) Notice”; Inst. Dec. 1; see generally
`Ex. 1004.
`Because the ’558 patent is unexpired, we interpret its claims using the
`“broadest reasonable construction in light of the specification of the
`patent.”5 37 C.F.R. § 42.100(b) (2012); Cuozzo, 136 S. Ct. at 2144–46. The
`broadest reasonable construction of a claim term cannot be so broad that the
`construction is “unreasonable under general claim construction principles.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`(emphasis omitted). Rather, the claims must be “read in light of the
`
`
`5 Although we apply the broadest reasonable interpretation standard in this
`Decision, our claim interpretations would not differ under the Phillips
`standard, applicable to expired patents. Rather, having considered the issue,
`we would reach the same claim interpretations under the Phillips standard.
`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 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”). In addition, we note that the parties agree that the
`proper interpretation of the “determining” steps and “avatar,” which we
`address below, does not depend on the applicable claim construction
`standard, whether Phillips or the broadest reasonable interpretation. See
`Reply 4 (“[Petitioner]’s proposed constructions are correct under either
`standard.”); Resp. 13, 23–25 (arguing Patent Owner’s proposed construction
`of “avatar” is proper “under either claim construction standard,” whereas
`Petitioner’s proposed scope of the determining steps “is not a proper
`construction under either . . . standard” because “[u]nder either claim
`construction standard,” the steps are “properly interpreted” as separate from
`the “rendering/display process of the rendering engine”).
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`specification,” and the prosecution history “should [be] consult[ed],” to
`reach a construction “consistent with the one that those skilled in the art
`would reach.” Id. (internal citations and quotations omitted).
`Under the broadest reasonable interpretation standard, we presume a
`claim term carries its “ordinary and customary meaning,” which “is the
`meaning that the term would have to a person of ordinary skill in the art” at
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). 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 Pharma S.A. v. Hospira, Inc., 675 F.3d
`1324, 1330 (Fed. Cir. 2012). To act as a lexicographer, the patentee “must
`clearly set forth a definition of the disputed claim term other than its plain
`and ordinary meaning,” or in other words, “must clearly express an intent to
`redefine the term.” Id. at 1330 (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
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`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” steps recited
`in independent claims 4 and 6 (step d in each claim) and the construction of
`the term “avatar” recited in each instituted claim. Pet. 11–13; Resp. 8–25;
`Reply 3–12. Petitioner also proffers a construction for the recited “server
`process” and “client process.” Pet. 14. 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 Steps (Independent Claims 4 and 6)
`Independent claims 4 and 6 of the ’558 patent recite similar
`“determining” steps, featured as “step (d)” in each claim (individually, the
`“determining step” and collectively, the “determining steps”). Ex. 1001,
`22:11–15, 22:40–44. Specifically, claim 4, as noted above, recites
`“(d) determining from the positions received in step (C), by said each client
`process, avatars that are to be displayed to the user associated with said each
`client process.” Id. at 22:11–12. Claim 6, in turn, features the following
`step: “(d) determining from the positions transmitted in step (c), by each
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`client process, a set of the avatars that are to be displayed.” Id. at 22:40–42.
`The parties dispute the proper scope of these steps. See Pet. 12–14;
`Resp. 13–23; Reply 4–10.
`
`Petitioner argues that, under either the broadest reasonable
`interpretation or Phillips standard, the determining step of claim 4
`and claim 6 encompasses “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. 12–13; Reply 4. Patent Owner does not proffer a construction of the
`determining steps, see Resp. 13–23; 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. 13, 15.
`According to Patent Owner, each determining step, when read consistent
`with the ’558 patent specification, “is properly interpreted as a step separate
`from the ‘view point’ rendering/display process of the rendering engine.”
`Id. at 23; see Tr. 96:14–97:22.
`
`As an initial matter, we note that in the District Court Case, Patent
`Owner argued that the determining steps required no construction, because
`the claim language “was written in plain English,” with “common” and
`“simple” terms, and the presumption that the claim language carries its
`ordinary meaning had not been overcome by a showing of lexicography or
`relinquishment of claim scope. Ex. 1009, 6–7, 11 & n.3. The District Court
`agreed, concluding that “there is nothing in the patent record to suggest that”
`each determining step “was meant to carry anything but its ordinary
`meaning” and, thus, determined “no construction” was necessary.
`Ex. 2006, 9–10, 14.
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`For the reasons given below, we agree with the District Court that the
`’558 patent specification and prosecution history do not evidence any intent
`to stray from the ordinary meaning of the claim language. We further
`conclude that this ordinary meaning, in light of the specification, is broad
`enough to include a client performing a field-of-view determination using
`the positions of other users’ avatars received from the server, as Petitioner
`argues in this proceeding.
`We first consider the claim language. Petitioner argues its proffered
`claim scope is consistent with the plain meaning of the language of each
`determining step and Patent Owner’s position to the contrary is “at odds”
`with this plain meaning, which Patent Owner argued was the proper
`understanding before the District Court. Pet. 13–14; Reply 5; Tr. 8:3–6,
`17:6–25. Patent Owner contends that because the language of each
`determining step recites that the “determining” is of avatars “to be
`displayed,” the claimed determining is distinguished from, and must be
`performed in advance of, the display. Resp. 17–18. Petitioner responds that
`“this is a distinction of no moment because [Petitioner]’s