Trials@uspto.gov
`571-272-7822
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` Paper 42
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`Date: November 28, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01325
`Patent 8,145,998 B2
`____________
`
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`BUNGIE - EXHIBIT 1063
`Bungie, Inc. v. Worlds Inc.
`IPR2015-01264, -01319, -01321
`
`

`

`IPR2015-01325
`Patent 8,145,998 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Bungie, Inc., filed a Petition to institute an inter partes
`review of claims 1–3, 7, 8, and 11–20 (“the challenged claims”) of U.S.
`Patent No. 8,145,998 B2 (“the ’998 patent”). Paper 3 (“Pet.”). Patent
`Owner, Worlds Inc., filed a Preliminary Response pursuant to
`35 U.S.C. § 313. Paper 12 (“Prelim. Resp.”). Upon consideration of the
`Petition and Preliminary Response, on November 30, 2015, we instituted an
`inter partes review of claims 1–3, 7, 8, 11–18, and 20 (“instituted claims”),
`pursuant to 35 U.S.C. § 314. Paper 13 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20 (“PO 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.”) and Petitioner filed an Opposition to the Motion to Exclude (Paper
`36 (“Opp”)), to which Patent Owner filed a Reply (Paper 38 (“Mot.
`Reply”)). An oral hearing was held on August 17, 2016, and a transcript of
`the hearing is included in the record (Paper 41 (“Tr.”)).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1 and 20 of the
`’998 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`Related Matters
`A.
`The ’998 patent is involved in a district court proceeding, Worlds Inc.
`v. Activision Blizzard, Inc., Case No. 1:12-cv-10576 (D. Mass.) (“District
`Court Case”). Paper 6. In addition, the ’998 patent is the subject of
`
`2
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`

`IPR2015-01325
`Patent 8,145,998 B2
`
`IPR2015-01321 and related to the patents at issue in IPR2015-01264,
`IPR2015-01268, IPR2015-01269, and IPR2015-01319. Id.
`
`The Asserted Grounds
`B.
`We instituted inter partes review on the following grounds of
`unpatentability asserted by Petitioner:
`
`
`Reference(s)
`Durward (Ex. 1008),1
`Tracey (Ex. 1025),2
`and Marathon
`(Ex. 1021)3
`Durward, Tracey,
`Marathon, and
`Schneider (Ex. 1019)5
`Durward, Tracey,
`Marathon, and
`Wexelblat (Ex. 1020)6
`
`
`
`Basis
`
`Instituted Claim(s)
`
`§ 103(a)4
`
`1–3, 7, 8, 11, 12, 16,
`18, and 20
`
`§ 103(a)
`
`13–15
`
`§ 103(a)
`
`17
`
`
`1 U.S. Patent No. 5,659,691, filed Sept. 23, 1993.
`2 David Tracey, Touring Virtual Reality Arcades, Int’l Herald Trib. (Paris),
`May 7, 1993, at 8.
`3 Marathon, Bungie Products Software Corporation (1994).
`4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. § 103 and the relevant sections took effect on March 16,
`2013. Because the application from which the ’998 patent issued was filed
`before that date, our citations to Title 35 are to its pre-AIA version.
`5 U.S. Patent No. 5,777,621, filed June 7, 1995.
`6 U.S. Patent No. 5,021,976, issued June 4, 1991.
`
`3
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`IPR2015-01325
`Patent 8,145,998 B2
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`
`The ’998 Patent
`C.
`The ’998 patent is directed to a graphical, multi-user, interactive
`virtual world system that includes highly scalable architecture. Ex. 1001,
`Abs. The system disclosed in the ’998 patent displays avatars representing
`other users neighboring the user viewing the virtual world. Id. Motion
`information from the remote users’ avatars is transmitted to a central server
`process that provides positions updates to client processes for neighbors of
`the user at that client process. Id. The client process also determines which
`background objects to render. Id.
`
`The Instituted Claims
`D.
`Of the instituted claims 1–3, 7, 8, 11–18, and 20, claims 1, 2, and 18
`are independent claims. Claim 1 is illustrative and reproduced below:
`1.
`A method for displaying interactions of a local
`user avatar of a local user and a plurality of remote user avatars
`of remote users interacting in a virtual environment, the method
`comprising:
`receiving, at a client processor associated with the local
`user, positions associated with less than all of the remote user
`avatars in one or more interaction rooms of the virtual
`environment, wherein the client processor does not receive
`position information associated with at least some of the remote
`user avatars in the one or more rooms of the virtual
`environment, each avatar of the at least some of the remote user
`avatars failing to satisfy a condition imposed on displaying
`remote avatars to the local user;
`generating, on a graphic display associated with the client
`processor, a rendering showing position of at least one remote
`user avatar; and switching between a rendering on the graphic
`display that shows at least a portion of the virtual environment
`to the local user from a perspective of one of the remote user
`
`4
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`IPR2015-01325
`Patent 8,145,998 B2
`
`avatars and a rendering that allows the local user to view the
`local user avatar in the virtual environment.
`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 ’998 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 ¶ 58. 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 asserted that there is any such
`distinction. Based on the testimony of the parties’ experts as well as our
`review of the ’998 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
`
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`IPR2015-01325
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`implementing networked virtual environments, or virtual environments and
`computer networking.
`
`B. Mr. Pesce’s Qualifications 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 ’998 patent. Reply 1–3. Petitioner further argues that “[i]t
`is not clear how Mr. Pesce qualifies as an expert in this field,” citing
`Mr. Pesce’s deposition testimony regarding the amount of experience he had
`in 19957 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; Ex. 2017 ¶ 35). Petitioner
`also asserts that “Mr. Pesce was unwilling to address his documented . . . use
`
`
`7 The ’998 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. 4–11; Reply 2–5; Ex. 1002 ¶¶ 56–58),
`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 ’998 patent is entitled to priority to the provisional
`and represented at the hearing that its specification is nearly identical to that
`of the ’998 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 ’998 patent
`specification, and we accept the parties’ agreement that the ’998 patent is
`entitled to priority to the ’296 provisional. See Ex. 2020. None of our
`determinations in this Decision would change if the ’998 patent were not
`entitled to this priority date.
`
`6
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`of psychedelic drugs during the 1990s (Ex. 1041) and whether that drug use
`affected his recollection of events during the period relevant to the [’998]
`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. (“It is not clear how Mr. Pesce qualifies as an
`expert in this field.”) (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).
`
`7
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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 ’998 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.
`
`8
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`

`IPR2015-01325
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`
`Pet. 11 (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 ¶ 58 (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 1041,8
`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.J; 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
`
`
`8 Exhibit 1041 is a subject of Patent Owner’s motion to exclude, which we
`address below in § II.J. We consider Exhibit 1041 here only for the limited
`purpose for which we find it relevant and admissible in § II.J.
`
`9
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`IPR2015-01325
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`
`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 regarding specific alleged
`deficiencies in Mr. Pesce’s testimony on claim construction 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 Construction
`In our Institution Decision, we raised the issue of the impending
`expiration of the ’998 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. 5 n.8; 37 C.F.R. § 42.100(b) (2012)9; Cuozzo
`
`
`9 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
`
`10
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`

`

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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 claim 1–3, 7, 8, 11–18, and 20 of
`the ’998 patent.” Inst. Dec. 5 n.8.
`In its Response, Patent Owner represented that the ’998 patent expires
`on June 8, 2017, with an explanation supporting the calculation of this
`expiration date. See PO Resp. 10–13. In its Supplement to its Response,
`Patent Owner changed the expiration date of the ’998 patent to
`November 12, 2016 because it inadvertently did not account for a terminal
`disclaimer when initially calculating the expiration date. See Supp. Resp.;
`Tr. 89:1–7. 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 ’998 patent expired on November 12, 2016.
`See, e.g., Ex. 1001, [22], [60], [63]; Ex. 1004, 322, 339.
`
`
`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).
`
`11
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`

`IPR2015-01325
`Patent 8,145,998 B2
`
`The ’998 patent is now expired.10 In an inter partes review, the
`proper claim construction standard in an expired patent is set forth in
`Phillips, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See In re Rambus Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims of an
`expired patent is similar to that of a district court’s review.”). Under the
`Phillips standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire patent disclosure. Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365-66 (Fed. Cir. 2012).
`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.
`
`
`10 Although we apply the Phillips standard in this Decision, our claim
`interpretation would not differ under the broadest reasonable interpretation
`standard, applicable to unexpired patents. Rather, having considered the
`issue, we would reach the same claim interpretation under the broadest
`reasonable interpretation standard.
`
`12
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`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 construction of the term “avatar.”
`Pet. 12; PO Resp. 15–17; Reply 4–6. Petitioner also proffers a construction
`for the recited “rendering” and “third user perspective.” Pet. 12–13. Based
`on our review of the arguments and evidence of record, we determine that
`we must address only the interpretation of “avatar,” 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”).
`
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`The parties’ post-institution arguments require that we address the
`proper scope of the claim term “avatar.” Pet. 12; PO Resp. 15–17; Reply 4–
`6. In the Petition, Petitioner argues that “avatar” should be construed to
`mean “a graphical representation of a user,” citing as support the ’998 patent
`specification’s explanation that “[t]he virtual word shows avatars
`representing the other users who are neighbors of the user viewing the
`virtual world.” Pet. 12 (quoting Ex. 1001, 2:42–44). With supporting
`testimony from Dr. Zyda as well as a definition from THE MICROSOFT
`COMPUTER DICTIONARY (3d. ed. 1997), Petitioner contends that its proposed
`construction is consistent with how one of ordinary skill would have
`understood the term. Id. (citing Ex. 1002 ¶ 62; Ex. 1010).
`In its Response, Patent Owner argues that the proper construction of
`“avatar,” under either the broadest reasonable interpretation or the Phillips
`standard, is “a three-dimensional graphical representation of a user.”
`PO Resp. 15 (emphasis added). Patent Owner directs our attention to the
`District Court’s construction of “avatar” as “a graphical representation of the
`user in three-dimensional form.” Id. at 15–16 (citing Ex. 2006, 20–24);
`Tr. 126:17–20. Patent Owner, with supporting testimony from Mr. Pesce,
`contends that a construction limiting an avatar to a “three-dimensional” form
`is “consistent with the [’998 patent] specification . . . and the interpretation
`that would be reached by a person of ordinary skill in the art.” PO Resp. 16
`(citing Ex. 2017 ¶ 49.a). Patent Owner asserts that the ’998 patent is
`“consistent in” its description of an avatar as “three-dimensional.” Id. at 16
`(citing Ex. 1001, 3:25–27, 6:13–16, 7:41–44). Moreover, at the hearing,
`Patent Owner argued that column 3, lines 25–27 of the ’998 patent
`
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`specification11 comes “fairly close to” and is “practically lexicography,”
`given the quotation marks around the term “avatar.” Tr. 127:17–129:6,
`130:14–15, 135:16–19, 140:7–12. In addition, Patent Owner argues that the
`District Court properly recognized that “the ‘crowd control’ issue at the
`heart of [the ’998] patent is an issue implicated by the more complex
`three-dimensional system.” PO Resp. 16 (quoting Ex. 2006, 21); see
`Tr. 130:15–21, 140:14–21.
`Petitioner responds that its proposed construction of “avatar” is proper
`under both the broadest reasonable interpretation and the Phillips standards.
`Reply 3–6. Petitioner contends Patent Owner’s attempt to limit the term to
`“three-dimensional” representations “improperly import[s] a term” from the
`specification “that could have been recited in the claims, but was not.” Id.
`at 4; Tr. 174:20–175:2, 180:16–18. Petitioner asserts that the ’998 patent
`does not define an “avatar” to be three-dimensional and the specification is
`explicit that column 3, lines 22–25, to which Patent Owner cites, is referring
`to a specific “example” in Figure 1, which is “illustrative and not
`restrictive”—not a fundamental aspect of the invention. Reply 4 (quoting
`Ex. 1001, 3:6–13, 3:22–20, 15:64–16:3); see Tr. 39:11–15.
`Moreover, Petitioner contends that the specification, even when
`describing avatars that it refers to as “three-dimensional,” does not describe
`“true-three dimensional renderings”—which contradicts Patent Owner’s
`
`
`11 We held a consolidated hearing on this and the other inter partes reviews
`listed in § I.A involving related patents with specifications nearly identical
`to the ’998 patent. As a result, the hearing arguments sometimes refer to the
`specification of one of the related patents, rather than to the ’998 patent.
`Throughout this Decision, we have adjusted relevant citations from the
`hearing to refer to the specification of the ’998 patent.
`
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`attempt to limit the term to precisely three-dimensional figures. Reply 4;
`Tr. 43:8–45:10, 164:17–25. According to Petitioner, the specification’s
`explanation that an avatar “comprises N two-dimensional panels, where the
`i-th panel is the view of the avatar from an angle of 360*i/N degrees”
`demonstrates that the avatars are “two-dimensional panels” and the panel
`displayed depends on the user’s viewing angle, a technique similar to that
`which Mr. Pesce described as “quasi-3D.” Reply 4–5 (quoting Ex. 1001,
`7:39–44; Ex. 1046, 204:12–205:20); Tr. 43:8–45:10, 164:17–25.
`In addition, Petitioner proffers a claim differentiation argument,
`asserting that the related ’501 patent includes a claim, for example, that
`expressly recites a “three dimensional avatar” and, thus, construing the term
`“avatar” alone to require “three-dimensional” would render meaningless the
`additional claim language in violation of governing precedent. Reply 5–6
`(emphasis added); Tr. 37:20–25, 39:5–40:11, 41:3–5, 43:1–7, 178:4–7.
`According to Petitioner, Patent Owner’s decision to include the term “three
`dimensional” before “avatar” in some claims reflects that the plain and
`ordinary meaning of “avatar” is not so limited. See Reply 10, 12; Tr. 39:16–
`40:11.
`Petitioner also argues that Mr. Pesce’s testimony in support of Patent
`Owner’s attempt to limit the term “avatar” to be three-dimensional is “not
`credible,” “unsubstantiated,” “inconsistent,” and in conflict with the record,
`including the THE MICROSOFT COMPUTER DICTIONARY’s definition.
`Reply 5; Tr. 45:13–46:9.
`Here, both Petitioner and Patent Owner’s proposed constructions
`represent that an “avatar” is a “graphical representation of a user.” Pet. 12;
`PO Resp. 15–16. The parties dispute only whether that representation must
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`be “three-dimensional,” as Patent Owner urges. See Pet. 12; PO Resp. 15–
`16; Reply 4–6; Tr. 127:6–11. We address each issue in turn.
`First, as noted above, there is no dispute in the record that an “avatar”
`is a “graphical representation of a user,” as the parties, their experts, and the
`construction adopted by the District Court are in agreement on this point.
`See, e.g., Pet. 12; PO Resp. 15–16; Ex. 2006, 24; Tr. 127:6–11; see also
`Ex. 1002 ¶ 62; Ex. 2017 ¶ 49.a.ii–iii. Having reviewed the intrinsic record
`of the ’998 patent, we agree that “avatar” refers to a “graphical
`representation of a user.” Instituted claim 1 recites “[a] method for
`displaying interactions,” which involves “a plurality of remote user avatars
`of remote users interacting in a virtual environment” and “receiving . . .
`positions associated with less than all of the remote user avatars . . . [and]
`generating, on a graphic display . . . the local user avatar.” Ex. 1001, 19:12–
`30. Independent claims 2 and 18, in turn, each provides for a system, which
`displays at least one remote user avatar. Id. at 19:31–56, 20:45–21:5. The
`written description explains that in the preferred embodiment, “[t]he virtual
`world shows avatars representing other users who are neighbors of the user
`viewing the virtual world” and each avatar is a figure “chosen by the user to
`represent the user in the virtual world.” Id. at [57], 2:42–47, 3:25–27, Fig. 1.
`This claim language and description demonstrate that an avatar represents a
`particular user in a graphical virtual space. Neither party points us to any
`relevant prosecution history, nor do we see any. See generally Pet.; Resp.;
`Reply; Ex. 1004. Accordingly, the intrinsic record demonstrably supports
`the parties’ positions that an avatar is a “graphical representation of a user.”
`Considering the submitted extrinsic evidence, we find it to
`persuasively support that “avatar” refers to a “graphical representation of a
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`user.” THE MICROSOFT COMPUTER DICTIONARY (3d. ed. 1997),12 proffered
`by Petitioner, defines “avatar” as: “In virtual-reality environments such as
`certain types of Internet chat rooms, a graphical representation of a user.”
`Ex. 1010, 38 (emphasis added); see Pet. 12. Moreover, Dr. Zyda and
`Mr. Pesce testify in agreement on this issue. Ex. 1002 ¶ 63; Ex. 2017
`¶ 49.a.ii–iii.
`Second, we consider the contested issue of whether the “graphical
`representation of a user” must be “three-dimensional” to come within the
`meaning of “avatar.” We conclude, under the Phillips standard, the ordinary
`and customary meaning of the term, in the context of the ’998 patent
`specification, is not so limited.
`We acknowledge that the District Court, applying the Phillips
`standard, answered this disputed question in the affirmative, determining
`that the patent limits the meaning of “avatar” to three-dimensional graphical
`representations. Ex. 2006, 20–24; see PO Resp. 15–16. Although the
`District Court’s interpretation is informative, we are not bound by that
`construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326
`(Fed. Cir. 2015) (“There is no dispute that the board is not generally bound
`by a prior judicial construction of a claim term.”). Moreover, Petitioner is
`not a named party in the District Court Case and the supporting arguments
`
`
`12 THE MICROSOFT COMPUTER DICTIONARY has a copyright date of 1997,
`which is after the filing of the ’296 provisional, to which the parties agree,
`for purposes of this proceeding, the ’998 patent is entitled to priority. See
`Ex. 1001, [60]; supra n.7. Neither party raised this issue. Nonetheless, we
`determine that the 1997 dictionary is sufficiently contemporaneous to the
`filing date of the ’296 provisional, November 13, 1995, to inform the
`ordinary meaning of the term at the relevant time period.
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`and evidence in the record before us are not identical to those proffered to
`t