UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`
`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
`RESPONSE
`
`
`
`

`
` 
`
` 
`
`TABLE OF CONTENTS
`
`
`I. 
`     Introduction ...................................................................................................... 1 
`II.  Background ....................................................................................................... 3 
`a.  About U.S. Patent No. 8,082,501 (the “‘501 patent” or “Leahy”) ................... 3 
`b.  The Petition Challenges Claims 1-8, 10, 12, and 14-16 of the ‘501 Patent ..... 6 
`c.  Petitioner Failed to Conduct a Proper Claim Construction Analysis and
`Applied Unreasonably Broad Interpretations of the Claim Terms .................. 7 
`d.  The Instituted Grounds of Challenge ............................................................. 19 
`III.  Argument ........................................................................................................ 20 
`a.  Petitioner’s Theories of Invalidity Fail to Identify Each Recited Feature of
`the Challenged Claims in the Cited References ............................................. 20 
`b.  Ground 1’s Challenge Based on Funkhouser in view of Sitrick Fails to
`Identify all Features of the Independent Claims ............................................ 20 
`c.  Ground 4’s Challenge Based on Durward Also Fails to Disclose all Features
`of Claims 1, 12, and 14 ................................................................................... 22 
`d.  The Petition’s Obviousness-Based Challenges of Claims 8 and 10 Fail Due to
`Shortcomings of the Secondary References ................................................... 24 
`e.  Wexelblat’s Teleportation is Incompatible with Funkhouser and Durward .. 31 
`f.  The Petition Fails to Name All Real Parties in Interest ................................. 36 
`g.  An Invalidity Ruling in This Case Constitutes an Impermissible Taking of a
`Private Right Without Article III Oversight ................................................... 42 
`IV.  Conclusion ...................................................................................................... 44 
`
`ii 
` 
`
`

`
`
`
`Cases 
`
`TABLE OF AUTHORITIES
`
`Cammeyer v. Newton, 94 U.S. 225 (1876) .............................................................. 43
`Garmin Int’l, Inc. v. Cuozzo Speed Techs LLC, IPR2012-00001 (PTAB March 5,
`2013) ..................................................................................................................... 40
`IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109 (Fed. Cir. 2011) ............................ 13
`James v. Campbell, 104 U.S. 356 (1881) ................................................................ 43
`K.J. Pretech Co., Ltd. v. Innovative Display Techs. LLC, IPR2015-01866-68
`(PTAB Nov. 20, 2015) .......................................................................................... 41
`Loral Space & Comms., Inc. v. Viasat, Inc., IPR2014-00236 (PTAB Apr. 21, 2014)
` ............................................................................................................................... 42
`McCormick Harvesting Mach. Co. v. Aultman, 169 U.S. 606 (1898) .............. 42, 43
`Michigan Land and Lumber Co. v. Rust, 168 U.S. 589 (1897) ............................... 43
`Moore v. Robbins, 96 U.S. 530 (1877) .................................................................... 43
`Omron Oilfield & Marine, Inc. v. MD/TOTCO, a Division of Varco, L.P.,
`IPR2014-00265 (PTAB Oct. 31, 2013) .................................................................. 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) .............................. 8, 10, 11
`RPX Corp. v. Virnetx Inc., IPR2014-00171 (PTAB June 5, 2014) ........... 36, 41, 42
`Seymour v. Osborne, 11 Wall. 516 (1870) .............................................................. 43
`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258 (PTAB Oct.
`16, 2013) ............................................................................................................... 42
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 39
`United States v. Am. Bell Telephone Co., 128 U.S. 315 (1888) .............................. 43
`United States v. Palmer, 128 U.S. 262 (1888) ......................................................... 43
`United States v. Schurz, 102 U.S. 378 (1880) .......................................................... 43
`Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2013-00168 (PTAB
`Aug. 26, 2013) ...................................................................................................... 42
`Statutes 
`
`35 U.S.C. § 102 ........................................................................................................ 44
`35 U.S.C. § 103 ........................................................................................................ 44
`35 U.S.C. § 154(a)(2) ................................................................................................. 8
`35 U.S.C. § 154(a)(3) ................................................................................................. 8
`
`iii 
` 
`
`

`
`35 U.S.C. § 315(b) ...................................................................................... 36, 39, 41
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012)......... 7, 39
`Rules 
`
`37 C.F.R. § 42.8(b)(1) ....................................................................................... 41, 42
`37 C.F.R. § 42.65(a) .......................................................................................... 15, 23
`37 C.F.R. § 42.100(b) ................................................................................................ 7
`37 C.F.R. § 42.100(c) ............................................................................................... 10
`
`
`
`iv 
` 
`
`

`
`
`
`
`Exhibit
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`LIST OF PATENT OWNER’S EXHIBITS
`
`Description
`
`Transcript of Conference Call of July 23, 2015
`
`“Exhibit 1” to Exhibit 2001 (Software Publishing and
`Development Agreement, dated April 16, 2010)
`
`Proof of Service in Worlds Inc. v. Activision Blizzard, Inc., et
`al., Case No. 1:12-cv-10576 (D. Mass.)
`
`Letter dated November 13, 2014, from Worlds’ litigation
`counsel to Activision’s litigation counsel
`
`Patent Owner’s First [Proposed] Set of Requests for Production
`of Documents and Things to Petitioner (Nos. 1-6)
`
`Claim Construction Order dated June 26, 2015 in Worlds Inc. v.
`Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
`Mass.)
`
`Complaint in Worlds Inc. v. Activision Blizzard, Inc., et al.,
`Case No. 1:12-cv-10576 (D. Mass.)
`
`Copilevitz, Todd, “Here’s a chat room worth talking about,”
`The Dallas Morning News, June 11, 1995
`
`Smith, Gina, “Whole new Worlds on-line,” San Francisco
`Examiner, May 14, 1995
`
`2010 - 2015
`
`Reserved
`
`2016
`
`2017
`
`2018
`
`Transcript of Deposition of Dr. Michael Zyda, dated February
`11-12, 2016
`
`Declaration of Mark D. Pesce (“Pesce”)
`
`Declaration of Thom Kidrin (“Kidrin”)
`
`v 
` 
`
`

`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`Declaration of Ron Britvich (“Britvich”)
`
`U.S. Provisional Application No. 60/020,296 filed on Nov. 13,
`1995
`
`Press Release issued from Worlds, Inc. on April 25, 1995
`
`“Talking Blowfish to Enliven the Internet”, Sandberg, J., Wall
`Street Journal, Apr. 3, 1995, pg. B2
`
`Memorandum and Order of United States District Court,
`District of Massachusetts dated March 13, 2014 in Worlds Inc.
`v. Activision Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D.
`Mass.)
`
`PPC Broadband, Inc. v. Corning Optical Communications RF,
`LLC, Case No. 2015-1361 et al. (Fed. Cir. Feb. 22, 2016)
`
`Declaration of Ken Locker (“Locker”)
`Reserved
`
`Declaration of David Marvit (“Marvit”)
`
`Reserved
`
`Reserved
`
`Reserved
`
`Email correspondence between Thom Kidrin and The New
`York Public Library (copies@nypl.org) dated February 18,
`2016
`
`Release 1.0, vol. 2-95, Esther Dyson’s Monthly Report dated
`23 February 1995
`
`“Now, a ‘space station’ in your PC”, Eng, P. M., Business
`Week, Apr. 10, 1995, pg. 134
`
`vi 
`
`

`
`Worlds Chat FROBVPLA.CPP C++ code module
`
`Worlds Chat RSRoom.cc code
`
`Worlds Chat Source code CHANGELOG
`
`Reserved
`
`
`
`Declaration of Conor Laffan
`
`Reserved
`
`U.S. Patent No. 7,945,856
`
`U.S. Patent No. 7,181,690
`
`U.S. Patent No. 7,493,558
`
`Reserved
`
`U.S. Patent No. 8,145,998
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`
`
`vii 
` 
`
`

`
`
`
` 
`
`I. Introduction
`
`Bungie, Inc. (“Bungie” or “Petitioner”) filed the current Petition (“Petition”)
`
`for inter partes review of claims 1-8, 10, 12, and 14-16 of U.S. Patent No.
`
`8,082,501 (“the ‘501 patent” or “Leahy”) on June 1, 2015. In the Petition, Bungie
`
`challenges claims 1-6, 12, 14, and 15 of the ‘501 patent as allegedly anticipated by
`
`U.S. Patent No. 5,659,691 issued to Durward et al. (“Durward”) (Ex. 1008), and
`
`challenges claims 1-6, 12, 14, and 15 as allegedly obvious over “RING: A Client-
`
`Server System for Multi-User Virtual Environments” authored by Thomas A.
`
`Funkhouser (“Funkhouser” or “Funkhouser ‘95”) (Ex. 1005), in view of U.S.
`
`Patent No. 4,521,014 to Sitrick (“Sitrick”) (Ex. 1013).
`
`But as explained below, and with the support of the Declaration of Mark D.
`
`Pesce (Ex. 2017) (“Pesce”), these claims survive Petitioner’s challenges based on
`
`Funkhouser in view of Sitrick, and Durward alone. For example, while claim 1
`
`expressly recites features related to “avatars,” which are properly construed to refer
`
`to three-dimensional graphical representations of users, Durward discloses no such
`
`“avatars.” Durward’s virtual world is disclosed to be three-dimensional, but
`
`Durward fails to disclose that the virtual entities are three-dimensional. Indeed, in
`
`1993, even state-of-the-art systems represented virtual entities in two dimensions.
`
`1 
` 
`
`

`
`Similarly, each of the independent claims require the step of “customizing
`
`… an avatar” or “creat[ing] a custom avatar.” Petitioner relies upon Sitrick as
`
`disclosing these claimed steps in combination with Funkhouser, but Sitrick was
`
`first filed on Sept. 30, 1982 (Ex. 1013 at 1) and like Durward fails to disclose any
`
`“avatar” as that term is properly construed. The “visual images” disclosed in
`
`Sitrick are clearly not three-dimensional, and cannot be characterized as such.
`
`Further, neither Sitrick nor Funkhouser recognizes the additional complexity of
`
`customizing a three-dimensional avatar rather than a two-dimensional virtual
`
`entity.
`
`Bungie also challenges claims 7-8, 10, and 16 as allegedly obvious over
`
`Funkhouser in view of Sitrick, and Durward, each in view of separate secondary
`
`references including Thomas A. Funkhouser, Adaptive Display Algorithm for
`
`Interactive Frame Rates During Visualization of Complex Virtual Environments
`
`(“Funkhouser ‘93”) (Ex. 1017), U.S. Patent No. 5,021,976 to Wexelblat et al.
`
`(“Wexelblat”) (Ex. 1020), and U.S. Patent No. 5,777,621 to Schneider
`
`(“Schneider”) (Ex. 1019).
`
`Claims 7 and 16 each recite the step of “teleporting,” and Petitioner proposes
`
`to modify primary references Funkhouser and Durward with secondary reference
`
`Wexelblat. But this modification would frustrate the fundamental purposes of
`
`Funkhouser and Durward, and a person of ordinary skill in the art would not have
`
`2 
` 
`
`

`
`been motivated to make this modification. Similarly, claims 8 and 10 include
`
`“filtering” features not disclosed by Durward or Funkhouser, and Petitioner’s
`
`proposed modifications of these references, even if possible, still fail to disclose all
`
`features of these claims.
`
`For at least these reasons, this inter partes review of the ‘501 patent should
`
`conclude with a final written decision confirming the patentability of the claims
`
`over Petitioner’s challenges.
`
`II. Background
`
` 
`
`a. About U.S. Patent No. 8,082,501 (the “‘501 patent” or “Leahy”)
`Petitioner has previously characterized Patent Owner Worlds Inc. in this
`
`record as a “notorious patent assertion entity.” Paper 10 at 2. This negative
`
`connotation is undermined by Worlds’ reputation at the dawn of 3-D virtual reality
`
`development, when Worlds publicly distributed a 3-D virtual space referred to as
`
`“Worlds Chat” in early 1995 to the public for free (Ex. 2021). In addition to the
`
`Dallas Morning News (Ex. 2008) and the San Francisco Examiner (Ex. 2009 at 1),
`
`Worlds’ achievements were written up in the Wall Street Journal on April 3, 1995
`
`(Ex. 2022) and Business Week (Ex. 2033). The company also drew the attention of
`
`Steven Spielberg, who “announced that his nonprofit Starbright Foundation is
`
`3 
` 
`
`

`
`working with Worlds, Intel, UB Networks and Sprint to create a 3-D environment
`
`where hospitalized children can play and socialize with each other.” Ex. 2009 at 3.
`
`Coming out of Worlds’ innovation of Worlds Chat was the technology that
`
`provides the backbone for the patent at issue here. The ‘501 patent was filed as
`
`U.S. Patent Application No. 12/406,968 on March 19, 2009, and claims priority to
`
`and the benefit of U.S. Provisional Patent Application No. 60/020,296, filed on
`
`November 13, 1995. Linking the ‘501 patent to the provisional application is a
`
`chain of U.S. non-provisional patent applications, including U.S. Patent
`
`Application Nos. No. 12/353,218; 11/591,878; 09/632,154; and 08/747,420.
`
`The title of the ‘501 patent is “SYSTEM AND METHOD FOR ENABLING
`
`USERS TO INTERACT IN A VIRTUAL SPACE.” The Background describes the
`
`difficulty of a “client-server system” for 3-D virtual reality “game playing, where
`
`the positions and actions of each user need to be communicated between all the
`
`players to inform each client of the state changes (position, actions, etc.) which
`
`occurred at the other clients.” Leahy at 1:63-66 (emphasis added). Per Leahy, the
`
`prior “peer-to-peer architecture” required many messages to provide the state
`
`change updates, and this limited “the number of clients which can be connected to
`
`the network.” Id. at 2:3-8.
`
`As an improvement, Leahy describes an embodiment in which the virtual
`
`world server is “much more discriminating as to what data is provided to each
`
`4 
` 
`
`

`
`client[].” Id. at 3:52-53. Additionally, to handle the remote avatar positions
`
`received by a client, the client includes the capability to determine which avatars to
`
`display using, according to various embodiments, proximity, user ID, or a crowd
`
`control function (which 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 6:4-5; 5:39-41.
`
`In an embodiment, the server sets a variable N representing the “maximum
`
`number of other avatars A will see,” and N’ represents a client variable of the
`
`“maximum number of avatars client 60 wants to see and/or hear.” Id. at 5:42-46.
`
`Leahy describes the “process of notifying client 60 of only the N nearest neighbors
`
`… as part of crowd control” on the server side. Id. at 14:34-36. The client may then
`
`use “position data to select N’ avatars from the N avatars provided by the server”
`
`for display of the N’ avatars. Id. at 6:12-13.
`
`Thus, according to the disclosed embodiments discussed above, Leahy
`
`discloses server-side crowd control, and the client also has the capability to
`
`determine the avatars to be displayed. This crowd control function is performed
`
`before the rendering process, which later outputs the graphical display from the
`
`view of the client’s avatar. Id. at 7:55-57.
`
`5 
` 
`
`

`
`b. The Petition Challenges Claims 1-8, 10, 12, and 14-16 of the ‘501
`Patent
`
`In this Petition, Petitioner challenges the validity of claims 1-8, 10, 12, and
`
`14-16 of the ‘501 patent. Claims 1, 12, and 14 are each independent claims. Claim
`
`1 is a method claim reciting features performed “by the client device,” claim 12 is
`
`an apparatus claim directed to a “client device,” and claim 14 is an article claim
`
`that recites computer code comprising instructions to perform certain steps. Each
`
`of claims 1 and 14 includes a features of “determining, by the client device, a
`
`displayable set of the other user avatars associated with the client device display,”
`
`and claim 12 recites “a processor programmed using the instructions to …
`
`determine a set of the other users’ avatars displayable on a screen associated with
`
`the client device.” Further, each independent claim includes a step of “customizing
`
`… an avatar” or “creat[ing] a custom avatar.”
`
`Claim 1 is presented in full below for reference:
`
`1. A method for enabling a first user to interact with other users
`in a virtual space, each user of the first user and the other users being
`associated with a three dimensional avatar representing said each user
`in the virtual space, the method comprising the steps of:
`customizing, using a processor of a client device, an avatar in
`response to input by the first user;
`receiving, by the client device, position information associated
`with fewer than all of the other user avatars in an interaction room of
`the virtual space, from a server process, wherein the client device does
`
`6 
` 
`
`

`
`not receive position information of at least some avatars that fail to
`satisfy a participant condition imposed on avatars displayable on a
`client device display of the client device;
`determining, by the client device, a displayable set of the other
`user avatars associated with the client device display; and
`displaying, on the client device display, the displayable set of
`the other user avatars associated with the client device display.
`
`Petitioner alleges that independent claims 1, 12, and 14 are each anticipated
`
`by Durward, and rendered obvious by Funkhouser in view of Sitrick. But none of
`
`these references disclose a customizing step of an “avatar” as that term is properly
`
`construed in the ‘501 patent. As will be explained below, at least dependent claims
`
`7-8, 10, and 16 also independently survive Petitioner’s challenges.
`
`c. Petitioner Failed to Conduct a Proper Claim Construction
`Analysis and Applied Unreasonably Broad Interpretations of the
`Claim Terms
`
`For an unexpired patent, the Board will interpret claims using the broadest
`
`reasonable interpretation as understood by one of ordinary skill in the art and
`
`consistent with the disclosure. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48766 (Aug. 14, 2012); 37 C.F.R. § 42.100(b). As the Board noted in its
`
`Institution Decision, the claim construction standard for expired patents is not
`
`according to the broadest reasonable interpretation. Rather, the Board reviews the
`
`7 
` 
`
`

`
`claims of an expired patent according to a district court’s standard. See In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
`
`In Phillips v. AWH Corp., the court set forth the principle that words of a
`
`claim “are generally given their ordinary and customary meaning” as understood
`
`by a person of ordinary skill in the art in question at the time of the invention,
`
`construed to preserve validity in case of ambiguity. 415 F.3d 1303, 1312, 1327
`
`(Fed. Cir. 2005) (en banc); see also Omron Oilfield & Marine, Inc. v. MD/TOTCO,
`
`a Division of Varco, L.P., IPR2014-00265, slip op. at 7 (PTAB Oct. 31, 2013)
`
`(paper 11).
`
`For applications filed on or after June 8, 1995, the expiration date of the
`
`patent is 20 years from the filing date of the earliest related application. 35 U.S.C.
`
`§ 154(a)(2). This filing date of the earliest related application does not go back to
`
`the provisional application, but rather to the earliest related non-provisional
`
`application. Id.; see also 35 U.S.C. § 154(a)(3).1 Each of the Worlds patents being
`                                                            
`1 In their mandatory notices, Petitioner and Patent Owner both identified co-
`
`pending litigation in the U.S. District Court for the District of Massachusetts. In
`
`ruling on a motion for summary judgment in that case, the District Court Judge
`
`noted that certificates of correction were necessary in the ‘690 patent and its parent
`
`to link each of the current patents-at-issue to the Provisional Application No.
`
`60/020,296, filed on Nov. 13, 1995. See Ex. 2023. Because the proper method for
`
`8 
` 
`
`

`
`challenged by Bungie in six related IPRs claims benefit to an earliest filed non-
`
`provisional application No. 08/747,420, filed on Nov. 12, 1996. See, e.g., Ex. 1001
`
`at 1; Ex. 2040 at 1; Ex. 2041 at 19; Ex. 2042 at 1; Ex. 2044 at 1.
`
`Thus, the expiration date of each Worlds patents is 20 years from Nov. 12,
`
`1996, or Nov. 12, 2016, plus any patent term adjustment or extension. The patent
`
`term adjustment/extension set forth on the face of each patent at issue is as follows:
`
`U.S. Patent No. Matter No.
`
`Patent Term
`
`Expiration Date
`
`Adjustment/Extension
`
`7,181,690
`
`IPR2015-01268
`
`89 days
`
`February 9, 2017
`
`7,493,558
`
`IPR2015-01269
`
`18 days
`
`7,945,856
`
`IPR2015-01264
`
`0 days
`
`8,082,501
`
`IPR2015-01319
`
`0 days
`
`8,145,998
`
`IPR2015-01321,
`
`208 days
`
`Nov. 30, 2016
`
`Nov. 12, 2016
`
`Nov. 12, 2016
`
`June 8, 2017
`
`-01325
`
`
`
`Further, a final written decision in this inter partes review must be issued no
`
`more than twelve months from the date of institution, or Dec. 7, 2016. 37 C.F.R. §
`                                                                                                                                                                                                
`calculating the expiration date measures term from the first-filed non-provisional
`
`application, the certificates of correction signed and sealed on September 24, 2013
`
`are not relevant to the issue of expiration dates of these patents.
`
`9 
` 
`
`

`
`42.100(c). Thus, the overwhelming likelihood is that this inter partes review will
`
`be completed and a final written decision will issue after the ‘856 patent and ‘501
`
`patent are expired, and concomitantly with the expiration of the ‘558 patent.
`
`Further, the “avatar” term appears and should be construed consistently in each of
`
`the six related IPR matters before the Board.
`
`The proper standard for claim construction in this inter partes review is the
`
`according to when the inter partes review is completed and the final written
`
`decision issues. On this basis, the claim construction standard to be applied for at
`
`least the earliest-expired Worlds patents is according to Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc), not the broadest reasonable
`
`interpretation standard.
`
`On the differences between these standards, the Federal Circuit’s recent
`
`Opinion in PPC Broadband, Inc. v. Corning Optical Commc’ns, Case No. 2015-
`
`1361 et al. (Fed. Cir. Feb. 22, 2016) (Ex. 2024) is instructive. The Federal Circuit
`
`compared the outcomes of claim construction according to both the Phillips
`
`standard and the broadest reasonable interpretation (“BRI”) standard. In describing
`
`the difference between the Phillips standard and the BRI standard applied by the
`
`Board, the Federal Circuit explained:
`
`District courts, by contrast, do not assign terms their broadest
`reasonable interpretation. Instead, district courts seek out the correct
`construction—the construction that most accurately delineates the
`
`10 
` 
`
`

`
`scope of the claimed invention—under the framework laid out in
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`
`Ex. 2024 at 7. In that case, the term at issue was a “continuity member” contacting
`
`a coupler/nut and post of a “coaxial cable connector.” Under the BRI, the Board’s
`
`construction required “that the continuity member need only make contact with the
`
`coupler/nut and the post to establish an electrical connection there,” but did not
`
`require “consistent or continuous contact” between these elements. Id. at 11.
`
`Specifically, the Board did not require the “continuity member” to maintain
`
`contact “through the post and the nut.” Id. While the Board’s interpretation was not
`
`entirely consistent with the specification, the Federal Circuit found “some language
`
`in the specification to support” this interpretation. Thus, the Federal Circuit
`
`concluded that spatial continuity in the form of an unbroken physical route, though
`
`not temporal continuity, was consistent with the “broadest reasonable
`
`interpretation.” Id.
`
`However, the Federal Circuit also noted that this construction was not the
`
`“correct construction under Phillips.” Id. To reach the correct construction under
`
`Phillips, i.e. “the construction that most accurately delineates the scope of the
`
`claimed invention,” the Federal Circuit looked to the patent specification, which
`
`“discloses in multiple places that the continuity member should maintain a
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`consistent and continuous connection.” Id. at 9-10 (emphasis added). The Federal
`
`Circuit explained:
`
`In light of the ordinary meaning of “continuity” and the specification,
`which is replete with discussion of the “continuous” or “consistent”
`contact established by the continuity member, the correct construction
`of “continuity member” under the framework laid out in Phillips, 415
`F.3d 1303, requires “consistent or continuous contact with the
`coupler/nut and the post to establish an electrical connection.”
`
` Id. at 10. Therefore, under a Phillips analysis, it is not enough to find “some
`
`language” to support a particular interpretation. Rather, it is essential to determine
`
`the correct construction, i.e. “the construction that most accurately delineates the
`
`scope of the claimed invention.” Id. at 7. That determination requires a more
`
`detailed analysis of the specification.
`
`Construction of the “determining” step of claim 1
`
`Claim 1 recites, in relevant part, “determining, by the client device, a
`
`displayable set of the other user avatars associated with the client device display.”
`
`Of the claims at issue in this instituted proceeding, independent claims 12 and 14
`
`include similar “determine”/”determining” features.
`
`In the Petition’s section on claim construction, Petitioner focuses solely on
`
`the “determining” term rather than on this claimed phrase as a whole. Pet. at 10-11.
`
`Petitioner contends that “determining,” as recited in the claims, “at least includes
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`executing a client process to determine, from user positions received from the
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`server, other users’ avatar(s) located within a point of view or perspective (e.g.,
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`field of view) of the first user.” Id. at 10. But Petitioner errs by attempting to
`
`construe the “determining” term separately from the remainder of the claimed
`
`“determining” step. “Extracting a single word from a claim divorced from the
`
`surrounding limitations can lead construction astray. Claim language must be
`
`construed in the claim in which it appears.” IGT v. Bally Gaming Int’l, Inc., 659
`
`F.3d 1109, 1117 (Fed. Cir. 2011). This error leads Petitioner to submit the identical
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`construction for the “determining” term in this case and in the related IPRs
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`covering the ‘856, ‘690, and ‘558 patents without regard for the differences in the
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`claimed steps in which the term appears.
`
`For example, in claim 2 of the ‘501 patent, the claimed “determining” step
`
`of claim 1 is narrowed. Per claim 2, the “step of determining comprises filtering
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`the other user avatars based on the monitored orientation of the first user avatar.”
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`Thus, in the ‘501 patent, the implementation of orientation is expressly claimed as
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`an element of the “determining” step. But per claim 2 of the ‘690 patent, the
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`implementation of orientation is expressly claimed as a step separate from claim
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`1(b)’s “determining” step. Claim 2 of the ‘690 patent recites, in relevant part, “(d)
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`displaying the set of the other users’ avatars from based on the orientation of the
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`first user’s avatar as monitored in step (c).” The ‘501 specification implements the
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`“view point (position and orientation) of A’s avatar” solely as part of the process
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`of rendering the view of the virtual world. ‘501 patent at 7:55-57; see also ‘690
`
`patent at 7:52-54. This disclosure in the specification and the comparative structure
`
`of the claims in, e.g., the ‘501 patent and ‘690 patent, confirm that the
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`interpretation of “determining” cannot be determined in isolation.2
`
`Here, Petitioner argues its proposed construction for the “determining” term
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`based on the declaration testimony of Dr. Zyda. Notably, however, Dr. Zyda
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`admitted in deposition that he opined on the construction of the “determining” term
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`without ever having checked the specifications of the patents being challenged.
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`Therefore, he was unable to testify whether there is any support for his
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`construction in the specification, as would be necessary to satisfy even the BRI
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`standard.
`
`So you told me a few minutes ago that your technique
`Q.
`[for claim construction] was to look at the claims and look at the
`spec[ification]. Is this an instance where you looked at the claims and
`felt it wasn’t necessary to look at the specification?
`A.
`I felt it [the interpretation of “determining”] was pretty
`straightforward.
`
`                                                            
`2 Patent Owner explains the proper constructions for the “determining” steps
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`recited in the ‘856, ‘690, and ‘558 patents in the Responses filed in IPR2015-
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`01264, -01268, and -01269, respectively.
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`Based on the claims?
`Q.
`A. Yeah.
`Q.
`So you don’t know whether anything in the
`spec[ification] contradicts this construction then?
`A. No.
`Ex. 2016 at 158:16-159:2. Dr. Zyda confirmed throughout his deposition that he
`
`reviewed the claims, abstract, and illustrations of the patents being challenged, but
`
`never testified that he read the entire specification of any challenged patent. Ex.
`
`2016 at 209:10-18 (read the claim, abstract, and title of the ‘501 patent); 228:24-
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`229:12 (read the claim, abstract, and illustrations of the ‘998 patent); 254:13-255:6
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`(read the claims, abstract, and illustrations of the ‘856 patent). Under Phillips, “the
`
`person of ordinary skill in the art is deemed to read the claim term not only in the
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`context of the particular claim in which the disputed term appears, but in the
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`context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313.
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`Dr. Zyda admitted that his analysis did not meet this standard. As such, Dr. Zyda’s
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`opinions on the proper claim constructions should be entitled to little to no weight
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`by the Board. See 37 C.F.R. § 42.65(a).
`
`Further, it appears Dr. Zyda did not read the claims of the ‘501 patent
`
`closely. During deposition, he was shown claims 1 and 2 of the ‘501 patent and
`
`asked about his interpretation of “determining” in view of these two claims. His
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`conclusion was that the “determining” term from claim 1 was redefined in claim 2.
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`Q. Am I correct that in the 501 patent, Claim 2 is describing
`
`the step of determining from Claim 1?
`
`
`
`MR. BROWN: Objection.
`
`A.
`
`I think in the 501 patent, we now have two definitions for
`
`determining, whereas I think in Claim 1 of the 501, it says
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`“determining by the client device displayable set of the other user’s
`
`avatar associated with the client device’s display.” And then when you
`
`get into Claim 2 it redefines determining by filtering the other avatars
`
`based just on the monitored orientation of the first user’s avatar, which
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`doesn’t work unless we have a field of view, which we get out of
`
`Claim 1. So you have two different determinings. … .
`
`Ex. 2016 at 213:11-214:8. He also testified that he thinks “the determining step of
`
`Claim 1 has to have a field of view, it has to have the orientation [claimed in claim
`
`2] in there and we don’t need Claim 2.” Id. at 212:14-16. But the dependent claims
`
`of the challenged patent provide further confirmation that Petitioner’s
`
`interpretation cannot be correct. For example, claim 2 also adds an additional step
`
`to claim 1: “monitoring an orientation of the first user avatar”. By the patentee’s
`
`claim structure, it is clear that “monitoring an orientation” is not subsumed into the
`
`“determining” step of claim 1.
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`Petitioner did not acknowledge this distinction, and incorrec