`
`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`_________________________________________
`
`Civil Action No. 12-10576-DJC
`
`)))))))))))))
`
`WORLDS, INC.,
`
`Plaintiff
`
`v.
`
`ACTIVISION BLIZZARD, INC.,
`BLIZZARD ENTERTAINMENT, INC. and
`ACTIVISION PUBLISHING, INC.,
`
`Defendants.
`_________________________________________
`
`MEMORANDUM AND ORDER
`
`CASPER, J.
`
`March 13, 2014
`
`I.
`
`
`
`Introduction
`
`In this patent dispute, Plaintiff Worlds, Inc., (“Worlds”) alleges that Activision Blizzard,
`
`Inc., Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Defendants”)
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`infringe United States Patents Nos. 7,181,690 (“‘690”), 7,493,558 (“‘558”), 7,945,856 (“‘856”),
`
`8,082,501 (“‘501”) and 8,145,998 (“‘998”) (collectively, the “Patents-In-Suit”). The Defendants
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`have filed a motion for summary judgment seeking a ruling that all of the asserted claims in the
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`Patents-In-Suit are invalid. D. 83. For the following reasons, the Court ALLOWS the
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`Defendants’ motion.
`
`II.
`
`Factual Background
`
`A.
`
`Patents-in-Suit
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`
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`This lawsuit involves patents that teach an invention enabling large numbers of computer
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`users to interact over a client-server network in a “virtual world” displayed on a computer screen.
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`D. 62-2, 62-3, 62-4, 62-5, 62-6. Plaintiff Worlds alleges that the Defendants infringe the
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`following patent claims: ‘690 claims 1-20; ‘558 claims 4-9; ‘856 claim 1; ‘501 claims 1-8, 10,
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`12, 14-16; ‘998 claims 1-3, 7, 8, 11-20.1 ¶ 1. Worlds asserts that the Patents-In-Suit are entitled
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`to an effective filing date of November 13, 1995, which is the filing date of U.S. Provisional
`
`Application No. 60/020,296 (“the Provisional Application”). ¶ 2. All of the Patents-in-Suit
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`reference U.S. Patent No. 6,219,045 (“the ‘045 patent”). ¶¶ 7, 13, 16, 19, 22. The ‘045 patent
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`was filed on November 12, 1996 and issued on April 17, 2001. ¶ 8. The ‘045 patent does not
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`claim priority to any earlier filed application and does not contain any reference to the
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`Provisional Application. ¶¶ 9-11. The ‘045 patent is not asserted in this action. ¶ 7.
`
`
`
`The ‘690 patent was filed on August 3, 2000 and issued on February 20, 2007. ¶ 3. The
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`‘690 patent does not contain any reference to the Provisional Application. ¶ 6. The ‘690 patent
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`states that it is a “[c]ontinuation of application No. 08/747,420, filed on Nov. 12, 1996, now Pat.
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`No. 6,219,045,” i.e., the ‘045 patent not asserted in this action. ¶ 7.
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`
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`The ‘558 patent was filed on November 2, 2006 and issued on February 17, 2009. ¶ 12.
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`The ‘558 patent states that it is a “[c]ontinuation of application No. 09/632,154, filed on Aug. 3,
`
`2000, now Pat. No. 7,181,690, which is a continuation of application No. 08/747,420, filed on
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`Nov. 12, 1996, now Pat. No. 6,219,045.” ¶ 13. Unlike the ‘045 or ‘690 patents, the first
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`sentence of the specification of the ‘558 patent states: “This application . . . claims priority from
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`provisional application No. 60/020,296, filed Nov. 13, 1995.” ¶ 14.
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`1 Unless otherwise noted, all references are to the Defendants’ statement of facts, D. 85.
`“Worlds does not dispute the facts set forth in Defendants’ Statement of Undisputed Material
`Facts.” Pl. Opp., D. 89 at 8 n.2. Worlds asserts additional facts in its opposition to summary
`judgment. D. 89 at 8-13. Many of these facts recite public documents found in the prosecution
`histories of the ‘045 and ’690 patents and the authenticity of these documents are not contested.
`To the extent that Worlds introduces new facts beyond these public documents, the Court finds
`no genuine dispute of material fact that prevents an award of summary judgment as a matter of
`law.
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`2
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`
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`The ‘856 patent was filed on January 13, 2009 and issued on May 17, 2011. ¶ 15. The
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`‘856 patent states that it is a “[c]ontinuation of application No. 11/591,878, filed on Nov. 2,
`
`2006, now Pat. No. 7,493,558, which is a continuation of application No. 09/632,154, filed on
`
`Aug. 3, 2000, now Pat. No. 7,181,690, which is a continuation of application No. 08/747,420,
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`filed on Nov. 12, 1996, now Pat. No. 6,219,045.” ¶ 16. The first sentence of the specification of
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`the ‘856 patent states: “This application . . . claims priority from U.S. provisional patent
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`application No. 60/020,296, filed Nov. 13, 1995.” ¶ 17.
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`
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`The ‘501 patent was filed on March 19, 2009 and issued on December 20, 2011. ¶ 18.
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`The ‘501 patent states that it is a “[c]ontinuation of application No. 12/353,218, filed on Jan. 13,
`
`2009, now Pat. No. 7,945,856, which is a continuation of application No. 11/591,878, filed on
`
`Nov. 2, 2006, now Pat. No. 7,493,558, which is a continuation of application No. 09/632,154,
`
`filed on Aug. 3, 2000, now Pat. No. 7,181,690, which is a continuation of application No.
`
`08/747,420, filed on Nov. 12, 1996, now Pat. No. 6,219,045.” ¶ 19. The first sentence of the
`
`specification of the ‘501 patent states: “This application . . . claims priority from U.S.
`
`Provisional patent application Ser. No. 60/020,296, filed Nov. 13, 1995.” ¶ 20.
`
`
`
`The ‘998 patent was filed on March 19, 2009 and issued on March 27, 2012. ¶ 21. The
`
`‘998 patent states that it is a “[c]ontinuation of application No. 12/353,218, filed on Jan. 13,
`
`2009, which is a continuation of application No. 11/591,878, filed on Nov. 2, 2006, now Pat. No.
`
`7,493,558, which is a continuation of application No. 09/632,154, filed on Aug. 3, 2000, now
`
`Pat. No. 7,181,690, which is a continuation of application No. 08/747,420, filed on Nov. 12,
`
`1996, now Pat. No. 6,219,045.” ¶ 22. The first sentence of the specification of the ‘998 patent
`
`states: “This application . . . claims priority from U.S. Provisional Patent Application Ser. No.
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`60/020,296, filed Nov. 13, 1995.” ¶ 23.
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`3
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`
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`To illustrate the relation of these patents, the Court reproduces here a graphic found in the
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`Defendants’ memorandum supporting summary judgment, D. 84 at 5:
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`
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`Although Worlds does not dispute these facts, D. 89 at 8 n.2, Worlds cites three examples
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`where the Provisional Application is mentioned in documents that are part of the ‘045 patent’s
`
`prosecution history: (1) an application transmittal letter, D. 89-10 at 4; (2) the inventors’
`
`declarations, D. 89-10 at 42-47; and (3) a request for corrected filing receipt, D. 89-10 at 48.
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`The application transmittal letter and the inventors’ declarations were filed in 1996 and cite the
`
`correct Provisional Application serial number but incorrectly list the Provisional Application’s
`
`filing date as June 24, 1996. D. 89-10 at 4, 42-52. The request for a corrected filing receipt was
`
`filed on August 18, 2000 and identifies the correct serial number and filing date for the
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`Provisional Application. Id.2
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`2 Worlds also cites several documents in the prosecution history of the ‘690 patent that
`mention the Provisional Application. D. 89 at 11-12.
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`4
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`
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`Worlds further submits a screen-shot of a public website operated by the United States
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`Patent and Trademark Office (“USPTO”) indicating that according to the website the ‘045 patent
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`claims priority to the Provisional Application. D. 89 at 11. Worlds also states that on July 5,
`
`2013, it requested that the USPTO issue certificates of correction “to include references to the
`
`1995 provisional application on the front pages of the ‘045 and ‘690 patents and at the beginning
`
`of their specifications.” D. 89 at 12-13. The USPTO granted these requests on September 24,
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`2013. D. 107 at 1.
`
`B.
`
`Invention Reduced to Practice
`
`
`
`In 1995, Worlds created two software products called Worlds Chat and AlphaWorld.
`
`Worlds Chat was first demonstrated and publically released in April 1995. ¶¶ 31-32. Worlds
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`Chat embodied all of the asserted claims of the Patents-in-Suit at least as early as April 1995.
`
`¶ 37. AlphaWorld was first demonstrated in June 1995 and was released on approximately June
`
`29, 1995. ¶¶ 24-25. At least as of September 1995, AlphaWorld practiced all of the asserted
`
`claims of the Patents-In-Suit and subsequent versions of AlphaWorld also practiced the asserted
`
`claims. ¶ 27. Thus, AlphaWorld and Worlds Chat practiced all of the asserted claims of the
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`Patents-In-Suit and were in public use more than one year before November 12, 1996, which is
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`the filing date of the ‘045 patent. ¶¶ 33-34; see also D. 89 at 8.
`
`III.
`
`Standard of Review
`
`
`
`The Court will grant a moving party’s motion for summary judgment when there is no
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`genuine dispute of material fact and the moving party is entitled to judgment as a matter of law.
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`Fed. R. Civ. P. 56(a). A dispute is genuine if “the evidence about the fact is such that a
`
`reasonable jury could resolve the point in favor of the nonmoving party,” Vélez–Rivera v.
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`Agosto–Alicea, 437 F.3d 145, 150 (1st Cir. 2006) (quoting United States v. One Parcel of Real
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`5
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`Prop., 960 F.2d 200, 204 (1st Cir. 1992)) (internal quotation marks omitted), and a fact is
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`material if it is “one that might affect the outcome of the suit under the governing law.” Id.
`
`(quoting Morris v. Gov’t Dev. Bank of P.R., 27 F.3d 746, 748 (1st Cir. 1994)) (internal quotation
`
`marks omitted). In resolving a motion for summary judgment, the Court scrutinizes the record in
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`the light most favorable to the summary judgment opponent and draw all reasonable inferences
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`in that party’s favor. Alliance of Auto. Mfrs. v. Gwadosky, 430 F.3d 30, 34 (1st Cir. 2005).
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`IV.
`
`Analysis
`
`A.
`
`Statutory and Regulatory Background
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`
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`Patents are entitled to a presumption of validity. 35 U.S.C. § 282(a). To overcome that
`
`presumption, a party must demonstrate by clear and convincing evidence that the patent is
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`invalid. State Contracting & Eng’g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir.
`
`2003). With certain exceptions (namely for disclosures made one year or less before the
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`effective filing date of the claimed invention under 35 U.S.C. §§ 102 (b)), “[a] person shall be
`
`entitled to a patent unless—(1) the claimed invention was patented, described in a printed
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`publication, or in public use, on sale or otherwise available to the public before the effective
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`filing date of the claimed invention; . . . .” 35 U.S.C. §§ 102 (a)(1). That is, the filing date of the
`
`patent normally becomes the “priority date” and the date twelve months prior is the invention’s
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`“critical date.” Eakin Enters., Inc. v. Specialty Sales LLC, No. 1:11-cv-02008-LJO-SKO, 2012
`
`WL 2445154, at *5 (E.D. Cal. June 26, 2012). Accordingly, “[i]f any “public use or . . . sale”
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`occurred before the critical date, the patent is invalid.” Id.
`
`
`
`A patent’s effective filing date, the “priority date,” is usually the date on which the patent
`
`application is filed with the USPTO, unless the patentee claims the benefit of an earlier-filed
`
`application. See, e.g., Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331-32 (Fed.
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`Cir. 2009). “Determination of a priority date is purely a question of law if the facts underlying
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`that determination are undisputed.” Bradford Co. v. Conteyor N. Am., Inc., 603 F.3d 1262, 1268
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`(Fed. Cir. 2010) (citation omitted).
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`
`
`35 U.S.C. § 119 describes when a patent application may benefit from the earlier filing
`
`date of a provisional application. For patent claims filed prior to November 29, 2000 including
`
`the ‘045 patent, the statute provides that:
`
`An application for patent . . . for an invention disclosed . . . in a provisional
`application . . . shall have the same effect, as to such invention, as though filed on
`the date of the provisional application . . . if the application for patent . . . is filed
`not later than 12 months after the date on which the provisional application was
`filed and . . . contains or is amended to contain a specific reference to the
`provisional application.
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`35 U.S.C. § 119(e)(1) (1994).3
`
`B.
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`The ‘045 Patent May Not Claim Priority to the Provisional Application
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`The Code of Federal Regulations defines more precisely how this “specific reference”
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`must be made. 37 C.F.R. § 1.78(a). The parties dispute which version of 37 C.F.R. § 1.78
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`should govern here to determine if Worlds may claim an earlier priority date by reference to a
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`provisional application. See Def. Mem., D. 84 at 17 (stating that the regulation effective in 1996
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`should apply); Pl. Opp., D. 89 at 14 (arguing that the November 29, 2000 version of the statute
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`should apply). The Federal Register indicates, however, that “the changes to . . . Rule 1.78 . . .
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`apply to any patent application filed on or after November 29, 2000.” 65 F.R. 57024. It is
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`3 The Court focuses here on the statutes and regulations affecting whether the ‘045 patent
`could claim priority to the Provisional Application. The ‘045 patent was filed within twelve
`months after the date of the Provisional Application. Compare D. 89-3 at 2 (provisional
`application filed on Nov. 13, 1995) with D. 89-4 at 2 (‘045 patent filed on Nov. 12, 1996). By
`contrast, the ‘690 patent was filed more than 12 months after the date of the Provisional
`Application, and so any benefit to the ‘690 patent would be outside the scope of § 119(e). See D.
`62-2 at 2 (‘690 patent filed on Aug. 3, 2000). The ‘690 patent as a continuation of the earlier
`‘045 patent relies on the ‘045 patent’s effective filing date for its own priority. See 35 U.S.C.
`§ 120.
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`Case 1:12-cv-10576-DJC Document 124 Filed 03/13/14 Page 8 of 19
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`undisputed that the applications for both of the patents-in-suit were filed before this date. See D.
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`62 Exh. 2 at 2 (‘690 patent filed on Aug. 3, 2000); D. 89 Exh. 4 at 2 (‘045 patent filed on Nov.
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`12, 1996).
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`The 1996 version of the regulation requires reference to a “prior provisional application”
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`“in the first sentence of the specification following the title.” 37 C.F.R. § 1.78(a)(4) (1996).
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`There is no dispute that neither the ‘690 patent nor the ‘045 patent reference the provisional
`
`application in the first sentence following the title. Accordingly, neither patent can claim priority
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`to the provisional application.
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`Even if the 2000 version of the regulation did apply, the Patents-In-Suit could not claim
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`priority to the provisional application. The November 29, 2000 version of the regulation states
`
`that:
`
`Any nonprovisional application claiming the benefit of one or more prior filed
`copending provisional applications must contain a reference to each such prior
`provisional application, identifying it as a provisional application, and including
`the provisional application number (consisting of series code and serial number).
`Unless the reference required by this paragraph is included in an application data
`sheet (§ 1.76), the specification must contain or be amended to contain such
`reference in the first sentence following any title.
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`37 C.F.R. § 1.78(a) (2000). Thus, according to that regulation, any reference to the Provisional
`
`Application must be either in “the specification . . . in the first sentence following any title” or in
`
`an “application data sheet.” See E.I. du Pont de Nemours & Co. v. MacDermid Printing
`
`Solutions, LLC, 525 F.3d 1353, 1360-61 (Fed. Cir. 2008) (stating that “35 U.S.C. § 119(e)(1)
`
`requires, for a claim of priority, that the non-provisional application contain ‘a specific reference
`
`to the provisional application.’ Under MPEP [the Manual of Patent Examining Procedure] §
`
`201.11, the specific reference can be either in the first sentence of the specification or in the
`
`application data sheet”). An “application data sheet” (“ADS”) is a specific document that was
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`defined for the first time by 37 C.F.R. § 1.76 on September 8, 2000. See 65 F.R. 54604-01
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`(September 8, 2000) (describing the creation of “[a] new [section] 1.76 . . . added to provide for
`
`the voluntary inclusion of an application data sheet in provisional and nonprovisional
`
`applications” and describing the ADS as a sheet “containing bibliographic data, which is
`
`arranged in a format specified by the [USPTO]”). The PTO’s specifications for an ADS require
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`that “[t]he top of a Patent Application Data Sheet should begin with the heading: ‘Application
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`Data Sheet.’” PTO Patent Application Data Sheet Format, D. 93-9 at 5 (emphasis in original).
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`Accordingly, an ADS must be “clearly labeled” as such. Id. at 6.
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`
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`As discussed above, the ‘045 patent contains no reference to the Provisional Application
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`in “the specification . . . in the first sentence following any title.” See 37 C.F.R. § 1.78(a).
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`Defendants contend that no application data sheet exists in the prosecution history of the ‘045
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`patent. See D. 91 at 10-11. As noted above, the “ADS” regulation had not been promulgated
`
`when the application for what became the ‘045 patent was filed on November 12, 1996.4 Cf. 65
`
`F.R. 54604-01 (describing the “new § 1.76” effective as of September 8, 2000). Defendants
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`argue that Worlds did not later add an ADS to the application before the patent issued on April
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`17, 2001. D. 91 at 10-11.
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`
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`Worlds asserts that it referenced the Provisional Application in “data sheets” filed during
`
`prosecution of the ‘045 patent and that Worlds is entitled to the November 13, 1995 priority date.
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`Id. Although Worlds in its brief and again at oral argument referred to documents in the
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`prosecution history as “data sheets,” this characterization appears to be descriptive of a variety of
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`documents, including application transmittals, inventor declarations, requests for corrected filing
`
`receipts, bib data sheets, amendments and petitions to make special. To that end, Worlds
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`4 The same observation is true as to the ‘690 patent filed on August 3, 2000.
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`identifies references to the Provisional Application in an application transmittal letter, the
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`inventors’ declarations and in a request for a correct filing receipt dated almost four years after
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`the ‘045 patent’s application had been filed. D. 89-10 at 4, 42-48. The references in the
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`application transmittal form and inventors’ declarations do not list the correct filing date of the
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`Provisional Application.5 Id. However, none of the documents that Worlds identifies are
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`“clearly labeled” “Application Data Sheet.” See D. 89-10 at 4 (referencing Provisional
`
`Application, but not clearly labeled “Application Data Sheet”); id. at 42-48 (same); id. at 50
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`(same). Furthermore, the PTO requires that an ADS “may not contain any other application data
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`(i.e., abstract, amendments, transmittal letter, etc.).” D. 93-9 at 6. Indeed, some of the
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`documents that Worlds identifies do not comply with this requirement either. D. 89-10 at 42-47
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`(including inventor declaration).
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`
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`Because the ‘045 patent application does not reference the Provisional Application in
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`either of the two locations specified by the regulation, the Defendants argue that Worlds has not
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`satisfied the regulation and is therefore is not entitled to claim an earlier priority date as to the
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`‘045 patent (and by the priority chain of continuation applications, as to the other Patents-In-
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`Suit). D. 84 at 18-20; D. 91 at 9-13.6
`
`5 In addition, Worlds argues that a screen-shot of the USPTO’s public website/database
`(also known as “PAIR”) indicates that the ‘045 patent claims priority to the Provisional
`Application. D. 89 at 11. That assertion, however, is not relevant where the proper inquiry
`focuses on the steps required by federal statute and regulation and whether Worlds’s actions
`entitle it to a priority date that is not otherwise apparent on the face of the ‘045 patent.
`Moreover, the PAIR database’s entry for the ‘690 patent does not reference the provisional
`application. D. 93-17 at 2.
`6 The Court is in receipt of Defendants’ Notice of Supplemental Authority, D. 115, which
`addresses Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741 F.3d 1359, 1366
`(Fed. Cir. 2014). In this case, the Federal Circuit further cemented its interpretation of the
`“specific reference” requirement, noting that “[a]llocating the responsibility of disclosure
`through specific references to the patentee eliminates the inefficiencies associated with having
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`Case 1:12-cv-10576-DJC Document 124 Filed 03/13/14 Page 11 of 19
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`
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`Worlds counters that these errors are “harmless scriveners’ errors.” D. 89 at 6. However,
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`other courts confronted with similar facts have held that stray mentions of a provisional
`
`application within documents that are part of a patent’s prosecution history do not overcome
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`non-compliance with federal statute and regulation.7 For example, in Carotek, Inc. v. Kobayashi
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`Ventures, LLC, 875 F. Supp. 2d 313, 334 (S.D.N.Y. 2012), the plaintiff’s patent application
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`included inventors’ declarations that referenced an earlier application. The Court held that
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`“[t]hese declarations, however, do not satisfy the “specific reference” requirement. . . . The
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`language of the regulation is unequivocal: to claim the benefit of an earlier patent, “the
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`specification must contain or be amended to contain such reference in the first sentence(s)
`
`following the title,” id. (citing 37 C.F.R. § 1.78), or, as is true under the 2000 version of the
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`regulation, be referenced in the ADS. In Eakin Enters., Inc., 2012 WL 2445154, at *5, the
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`plaintiff’s patent application referenced an earlier provisional application and listed the correct
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`provisional patent date but made a typographical error in the serial number of the provisional
`
`application. The patent “issued without reference to the provisional application.” Id. The Court
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`found that “because of this error, the . . . Patent does not permit [the Plaintiff] to take advantage
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`of the provisional application’s priority date.” Id.8
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`the public expend efforts to unearth information when such information is readily available to the
`patentee.” Id. (citation omitted).
`7 The MPEP also recognizes that strict compliance with the CFR is necessary to claim
`priority to a prior application. See MPEP § 201.11.
`8 Worlds cites E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, LLC,
`525 F.3d 1353 (Fed. Cir. 2008) as a case where “based on the undisputed facts contained in the
`prosecution history, the non-provisional application was entitled to the filing date of the
`provisional application as a matter of law [and that] [a] reasonable person reading the language
`in the [application data sheet] would have concluded that the applicant was claiming priority to
`an earlier provisional application.” D. 89 at 18 (quoting E.I. du Pont de Nemours & Co., 525
`F.3d at 1361, 1363). That case is distinguishable where the patent application in that case (filed
`in 2002) contained an ADS and where “it [was] undisputed that the ADS contained a reference to
`the provisional application.” Id. at 1361.
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`These cases are in line with the public policy requiring a patentee’s reasonable
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`compliance with patent regulations. A patent grants the powerful “right to exclude others from
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`making, using, offering for sale, or selling the invention throughout the United States.” Edwards
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`Lifesciences AG v. CoreValue, Inc., 699 F.3d 1305, 1314 (Fed. Cir. 2012) (quoting 35 U.S.C.
`
`§ 154). Determining whether one is actually excluded from making an invention is supposed to
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`be a relatively straightforward process; the public should not be obliged to hunt through
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`hundreds of documents in a lengthy prosecution history to find a patent’s priority date. See
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`Kelly C. McKinney, The Patent Reform Act of 2007 and International Patent Law
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`Harmonization, 31 Hous. J. Int’l L. 125, 141 (2008) (advocating for priority rule that will
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`enhance legal certainty in the patent system). “The purpose of the ‘specific reference’
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`requirement is clearly to ensure that someone examining a patent claiming the benefit of one
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`earlier filed is readily able to assess the patent’s priority date.” Carotek, Inc., 875 F. Supp. 2d at
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`335. This requirement is more than a mere technicality:
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`Although [the “specific reference” requirement] might appear to be a technical
`provision, it embodies an important public policy. The information required to be
`disclosed is information that would enable a person searching the records of the
`Patent Office to determine with a minimum of effort the exact filing date upon
`which a patent applicant is relying to support the validity of his application or the
`validity of a patent issued on the basis of one of a series of applications. In cases
`such as this, in which two or more applications have been filed and the validity of
`a patent rests upon the filing date of an application other than that upon which the
`patent was issued, a person, even if he had conducted a search of the Patent Office
`records, could unwittingly subject himself to exactly this type of infringement suit
`unless the later application adequately put him on notice that the applicant was
`relying upon a filing date different from that stated in the later application. As the
`court said in Sticker Industrial Supply Corp. v. Blaw-Knox Co., [405 F.2d 90, 93
`(7th Cir. 1968):
`
`“Congress may well have thought that [this requirement] was necessary to
`eliminate the burden on the public to engage in long and expensive search of
`previous applications in order to determine the filing date of a later patent. . . .
`The inventor is the person best suited to understand the relation of his
`applications, and it is no hardship to require him to disclose this information.”
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`Case 1:12-cv-10576-DJC Document 124 Filed 03/13/14 Page 13 of 19
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`Sampson v. Ampex Corp., 463 F.2d 1042, 1045 (2d Cir. 1972) (internal citation omitted). This
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`is not a case falling into one of the potential equitable exceptions that some Courts have applied
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`when considering defects in disclosure of a patent’s priority date. Cf. Carotek, Inc., 875 F. Supp.
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`2d at 335 (finding that a correct reference to a prior application on a published patent’s cover
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`page provided sufficient notice); Broadcast Innovation, L.L.C., 420 F.3d at 1368 (finding that a
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`later patent’s correct reference to a prior U.S. patent entitled the later patent to claim priority to
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`the prior patent’s international application filing date in accordance with federal statute). The
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`references here (i.e., an application transmittal form, inventors’ declarations and a request for a
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`corrected filing receipt) are not the types of references that other courts, in some limited
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`instances, have relied upon to allow claim to an earlier priority date.
`
`C.
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`
`
`The ‘690, ‘558, ‘856, ‘501 and ‘998 Patents, as Continuations in a Chain from
`the ‘045 Patent, Cannot Claim a Priority Date Earlier Than the ‘045 Patent’s
`Filing Date
`
`
`
`In this case, Worlds attempts to assert claims defined in the ‘690 patent, which is a
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`continuation of the ‘045 patent and makes no reference to the Provisional Application. Worlds
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`also attempts to assert claims defined in the ‘558 patent (a continuation of the ‘690 patent), the
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`‘856 patent (a continuation of the ‘558 patent) and the ‘501 and ‘998 patents (both continuations
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`of the ‘856 patent). All of the ‘558, ‘856, ‘501 and ‘998 patents purport to claim benefit from the
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`Provisional Application. None of these patents were filed “within 12 months after the date on
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`which the provisional application was filed” and thus cannot claim the Provisional Application’s
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`priority date under 35 U.S.C. § 119(e). Instead, any entitlement to priority would arise from a
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`“priority chain” of applications pursuant to 35 U.S.C. § 120. Encyclopaedia Britannica, Inc. v.
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`Alpine Elec. of America, Inc., 609 F.3d 1345, 1351 (Fed. Cir. 2010) (quoting 35 U.S.C. § 120).
`
`That statute allows an application for a patent “to have the same effect, as to such invention, as
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`Case 1:12-cv-10576-DJC Document 124 Filed 03/13/14 Page 14 of 19
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`though filed on the date of the prior application.” 35 U.S.C. § 120. As the Federal Circuit has
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`ruled, “35 U.S.C. § 120 requires an intermediate application in a priority chain to ‘contain a
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`specific reference to the earlier filed application.’” Encyclopaedia Britannica, Inc., 609 F.3d at
`
`1349 (affirming that “each application in a series of continuing applications must contain a
`
`specific reference to the original application”).
`
`
`
`Here, because neither the ‘045 nor the ‘690 patents reference the Provisional Application,
`
`none of the asserted Patents-in-Suit, i.e., the ‘690, ‘558, ‘856, ‘501 and ‘998 patents, are entitled
`
`to claim the November 13, 1995 filing date of the Provisional Application. See id. at 1350-51
`
`(stating that “[t]here is nothing in the language or legislative history of § 120 to suggest that an
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`application is entitled to an earlier priority date even if it fails to make a specific reference to an
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`earlier application. . . . Later applications cannot amend [an earlier] application and restore its
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`entitlement to priority. . . . Britannica’s claim that a later application can cure this defect and
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`restore the priority chain cannot be correct”).
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`D.
`
`The Court Cannot “Correct” the Issued Patents
`
`
`
`Worlds argues that this Court should use its power to “correct” the ‘045 and ‘690
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`patents.9 D. 89 at 7, 20-24. “Absent evidence of culpability or intent to deceive by delaying
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`formal correction, a patent should not be invalidated based on an obvious administrative error.”
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`Hoffer v. Microsoft Corp., 405 F.3d 1326, 1331 (Fed. Cir. 2005). “When a harmless error in a
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`patent is not subject to reasonable debate, it can be corrected by the court . . . .” Id. (directing
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`the district court to correct a typographic error made by the USPTO that was “apparent from the
`
`face of the patent”). Cf. Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed.
`
`9 The Defendants contend that this Court is limited in its power to correct the ‘045 patent
`where the ‘045 patent is not a patent in suit. D. 91 at 14-15. The Court need not reach that issue
`where given there is a “reasonable debate” as to whether the errors in the ‘045 and ‘690 patents
`are “harmless,” Hoffer, 405 F.3d at 1331, the Court otherwise declines to correct the patents.
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`Case 1:12-cv-10576-DJC Document 124 Filed 03/13/14 Page 15 of 19
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`Cir. 2005) (contrasting Hoffer with a scenario where “[t]he error . . . is not evident on the face of
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`the patent [and] one cannot discern what language is missing simply by reading the patent. The
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`district court does not have authority to correct the patent in such circumstances”); TracBeam,
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`L.L.C. v.