UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`BUNGIE, INC.,
`Petitioner
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`v.
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`WORLDS INC.,
`Patent Owner
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`_______________
`
`Case IPR2015-01319
`Patent 8,082,501
`
`_______________
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`
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`PATENT OWNER WORLDS INC.’S
`NOTICE OF APPEAL
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`
`
`_______________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`_______________
`
`BUNGIE, INC.,
`Petitioner
`
`v.
`
`WORLDS INC.,
`Patent Owner
`
`_______________
`
`Case IPR2015-01319
`Patent 8,082,501
`
`_______________
`
`
`
`PATENT OWNER WORLDS INC.’S
`NOTICE OF APPEAL
`
`
`
`Case No. IPR2015-01319
`Patent No. 8,082,501
`
`
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
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`Worlds Inc. appeals under 35 U.S.C. § 141 to the United States Court of Appeals
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`for the Federal Circuit from the Final Written Decision entered on December 6,
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`2016 (Paper 42) and from all underlying orders, decisions, rulings and opinions
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`regarding U.S. Patent No. 8,082,501 (“the ’501 Patent”) including the DECISION
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`- Institution of Inter Partes Review entered on December 7, 2015 (Paper 14), and
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`the ORDER denying Patent Owner’s Motion for Routine or Additional Discovery
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`entered on September 4, 2015 (Paper 11).
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner anticipates that the issues on
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`appeal may include, but are not limited to, the following, as well as any underlying
`
`findings, determinations, rulings, decisions, opinions, or other related issues:
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` Whether judicial review is available, including under 5 U.S.C. §§ 704
`
`& 706, for a patent owner to challenge the Patent Trial and Appeal
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`Board’s determination
`
`that a petition satisfied
`
`the statutory
`
`requirements of 35 U.S.C. §312(a)(2);
`
` Whether judicial review is available, including under 5 U.S.C. §§ 704
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`& 706, for a patent owner to challenge the Patent Trial and Appeal
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`Board’s determination
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`that a petitioner satisfied
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`the statutory
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`timeliness requirements of 35 U.S.C. §315(b);
`
`
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`1
`
`
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`Case No. IPR2015-01319
`Patent No. 8,082,501
`
`
` Whether the Patent Trial and Appeal Board made an error of law by
`
`applying the incorrect legal standard to the review of Patent Owner’s
`
`evidence rebutting the Petition’s identification of all Real Parties-in-
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`Interest as required under 35 U.S.C. §312(a)(2);
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` Whether the Patent Trial and Appeal Board’s decision on the
`
`correctness and completeness of Petition’s identification of all Real
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`Parties-in-Interest was based upon no evidence and was therefore
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`“arbitrary, capricious, an abuse of discretion, or … without
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`observance of procedure required by law; [or] unsupported by
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`substantial evidence … .” 5 U.S.C. § 706(2)(A)-(E);
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` Whether according a filing date to a Petition that was incomplete for
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`failure to name all Real Parties-in-Interest under 35 U.S.C. §312(a)(2)
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`was an error of law;
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` Whether the Patent Trial and Appeal Board’s decision not to dismiss
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`the Petition as time-barred under 35 U.S.C. § 315(b) was “arbitrary,
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`capricious, an abuse of discretion, or otherwise not in accordance with
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`law; … in excess of statutory jurisdiction, authority or limitations, or
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`… without observance of procedure required by law; [or] unsupported
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`by substantial evidence … .” 5 U.S.C. § 706(2)(A)-(E);
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`
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`2
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`Case No. IPR2015-01319
`Patent No. 8,082,501
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` Whether the Patent Trial and Appeal Board’s decision denying Patent
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`Owner’s Motion for Routine or Additional Discovery (Paper 9) was
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`“an abuse of discretion, or otherwise not in accordance with law; ….
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`[or] without observance of procedure required by law … .” 5 U.S.C.
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`§ 706(2)(A)-(E); and
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` Whether the Patent Trial and Appeal Board’s decision finding that
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`claims 1-8, 10, 12, and 14-16 of the ’501 patent are unpatentable was
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`“arbitrary, capricious, an abuse of discretion, or otherwise not in
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`accordance with law; … in excess of statutory jurisdiction, authority
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`or limitations, or … without observance of procedure required by law;
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`[or] unsupported by substantial evidence … .” 5 U.S.C. § 706(2)(A)-
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`(E).
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`
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`Simultaneous with the electronic submission of this Notice of Appeal to the
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`Patent Trial and Appeal Board, a copy of this Notice of Appeal is being filed with
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`the United States Patent and Trademark Office by way of hand delivery to the
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`Office of General Counsel to:
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`Office of the General Counsel
`United States Patent and Trademark Office
`Madison East
`10B20 600 Dulany Street
`Alexandria, Virginia 22314
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`
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`3
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`
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`Case No. IPR2015-01319
`Patent No. 8,082,501
`
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`In addition, consistent with Federal Circuit Rules 15(a)(1) and 25(b)(1), this
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`Notice of Appeal, along with the required docketing fees and a copy of the
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`decision and order of the agency for which review is sought, are being filed
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`electronically with the United States Court of Appeals for the Federal Circuit, and
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`one paper copy of the Notice of Appeal is being provided to the Clerk’s Office:
`
`Clerk of Court
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, NW, Room 401
`Washington, DC 20439
`Any required fees to the United States Patent and Trademark Office may be
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`charged to Deposit Account No. 50-1860.
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`Respectfully submitted,
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`By: /s/ Wayne M. Helge
`Wayne M. Helge (Reg. No. 56,905)
`Aldo Noto (Reg. No. 35,628)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: 571-765-7700
`Fax: 571-765-7200
`Email: whelge@dbjg.com
`Email: anoto@dbjg.com
` Counsel for Patent Owner
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`
`
`
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`4
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`Dated: February 7, 2017
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`
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`
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`Case No. IPR2015-01319
`Patent No. 8,082,501
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 7, 2017, a true and correct copy of the
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`
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`foregoing Patent Owner’s Notice of Appeal was served via email, by consent, to
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`Petitioner by serving the correspondence email addresses of record as follows:
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`Matthew A. Argenti
`Reg. No. 61,836
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`Telephone: (650) 354-4154
`Facsimile: (650) 493-6811
`E-mail: margenti@wsgr.com
`
`
`
`Michael T. Rosato
`Reg. No. 52,182
`Andrew S. Brown
`Reg. No. 74,177
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Ave.
`Suite 5100
`Seattle, WA 98104-7036
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`E-mail: mrosato@wsgr.com
`E-mail: asbrown@wsgr.com
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`By: /s/ Wayne M. Helge
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`Registration No. 56,905
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`Counsel for Patent Owner
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`5
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