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
`PRELIMINARY RESPONSE
`
`
`
`

`
` 
`
`TABLE OF CONTENTS
`
` 
`
`
`
`Introduction .......................................................................................................... 1
`I.
`II. Background .......................................................................................................... 4
`a. About U.S. Patent No. 8,082,501 (the “‘501 patent” or “Leahy”) ................... 4
`b. The Petition Challenges Claims 1-8, 10, 12, and 14-16 of the ‘501 Patent ..... 7
`c. Petitioner Failed to Conduct a Proper Claim Construction Analysis and
`Applied Unreasonably Broad Interpretations of the Claim Terms ......................... 9
`d. Petitioners’ Grounds of Challenge Rely On Art Already Considered by the
`USPTO Examiner ................................................................................................. 12
`III. Argument ........................................................................................................ 14
`a. Petitioner’s Theories of Invalidity Fail to Identify Each Recited Feature of
`the Challenged Claims in the Cited References ................................................... 14
`b. Ground 1’s Challenge Based on Funkhouser in view of Sitrick Fails to
`Identify all Features of the Independent Claims ................................................... 14
`c. Ground 4’s Challenge Based on Durward Also Fails to Disclose all Features
`of Claims 1, 12, and 14 ......................................................................................... 25
`d. The Petition’s Obviousness-Based Challenges Also Fail Due to
`Shortcomings of the Secondary References ......................................................... 32
`e. The Petition Fails to Name All Real Parties in Interest ................................. 39
`IV. Conclusion ...................................................................................................... 48
`
`ii 
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`

`
`TABLE OF AUTHORITIES
`
`
`Cases 
`
`Askeladden LLC v. McGhie et al., IPR2015-00122 (PTAB Mar. 16, 2015) (Paper
`34) ......................................................................................................................... 47
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453 (PTAB
`Jan. 6, 2015) (Paper 88) ........................................................................................ 40
`Gonzalez v. Banco Cent. Corp., 27 F.3d 751 (1st Cir. 1994) .................................. 40
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) ................................... 9
`Loral Space & Comms., Inc. v. Viasat, Inc., IPR2014-00236 (PTAB Apr. 21, 2014)
`(Paper 7) ................................................................................................................ 47
`Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) ..................... 28
`St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258 (PTAB Oct.
`16, 2013) (Paper 29) ............................................................................................. 47
`Taylor v. Sturgell, 553 U.S. 880 (2008) ................................................................... 40
`Universal Remote Control, Inc. v. Universal Elecs., Inc., IPR2013-00168 (PTAB
`Aug. 26, 2013) (Paper 9) ...................................................................................... 47
`Statutes 
`
`35 U.S.C. § 102(a) ................................................................................................... 15
`35 U.S.C. § 312(a)(2) ........................................................................................ 39, 46
`35 U.S.C. § 315(b) .................................................................................. 3, 43, 47, 48
`35 U.S.C. § 325(d) ................................................................................................... 13
`Other Authorities 
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) .......... 9, 40
`Rules 
`
`37 C.F.R. § 42.8(b)(1) ....................................................................................... 39, 46
`37 C.F.R. § 42.22(a)(2) ..................................................................................... 14, 22
`37 C.F.R. § 42.51(b)(1)(iii) ...................................................................................... 41
`37 C.F.R. § 42.65(a) ................................................................................................. 18
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 22
`
`iii 
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`

`
`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
`
`
`
`
`
`
`Exhibit
`
`2001
`
`2002
`
`
`2003
`
`
`2004
`
`
`2005
`
`
`2006
`
`
`2007
`
`
`2008
`
`
`2009
`
`
`
`iv 
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`

`
`IPR2015-01319
`U.S. Patent No. 8,082,501
` 
`
`
`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”) (Ex. 1005), in view of U.S. Patent No. 4,521,014 to
`
`Sitrick (“Sitrick”) (Ex. 1013).
`
`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).
`
` 
`
`1 
`
`

`
`Five other petitions for inter partes review of patents related to the ‘501
`
`patent have also been filed by Bungie. These other petitions also look to
`
`Funkhouser and Durward as allegedly anticipatory, or as primary references in
`
`asserted obviousness combinations. But Funkhouser and Durward each include
`
`crucial gaps in their disclosure; these gaps are fatal to this Petition’s anticipation-
`
`based and obviousness-based challenges.
`
`For example, Petitioner alleges that both Funkhouser and Durward disclose
`
`claim 1’s feature of “determining, by the client device, a displayable set of the
`
`other user avatars associated with the client device display.” Pet. at 21, 46. But the
`
`Petition never points to precise disclosures in these references for even a client
`
`workstation’s capability to perform this feature of the challenged claims and for
`
`good reason, since both Funkhouser and Durward fail to expressly disclose such
`
`features. To gloss over this shortcoming, both the Petition and Dr. Michael Zyda,
`
`whose testimony is submitted as Ex. 1002 to the Petition, try to fill in the gaps in
`
`disclosure with mischaracterizations about the references’ operations, and pure
`
`conjecture about how their technology could be implemented 1. Indeed, Petitioner
`
`diverges toward the theory that those features are inherently disclosed in
`
`Funkhouser and Durward, without satisfying the threshold showing that such
`
`features must necessarily be present, as required under a theory of inherency.
`
`2 
` 
`
`

`
`Further, the Petition fails to identify all real parties in interest, and
`
`particularly excludes real party in interest Activision Publishing, Inc.
`
`(“Activision”), which has been engaged in infringement litigation with Patent
`
`Owner Worlds Inc. on (inter alia) the ‘501 patent since 2012. Through a pre-
`
`existing substantive legal relationship with Petitioner, Activision possessed the
`
`contractual right to review and approve Petitioner’s legal reviews related to
`
`intellectual property, including the legal reviews underlying this Petition.
`
`Additionally, Activision provided funding to Bungie for the development of a
`
`software gaming product. This funding was intended by Activision and Bungie to
`
`cover all tasks under their agreement, including the legal review underlying this
`
`Petition. Based on these factors, Activision is an unnamed real party in interest
`
`having at least an opportunity to control this proceeding through its
`
`review/approval and funding. This failure to name Activision renders the Petition
`
`defective on its face. Moreover, since Activision was served with a complaint for
`
`infringement of the ‘501 patent in 2012, Activision’s status as a real party in
`
`interest to this Petition requires the Petition to be dismissed in its entirety under 35
`
`U.S.C. § 315(b).
`
`For at least these reasons presented above and explained in more detail
`
`below, this Petition for inter partes review of the ‘501 patent should be denied with
`
`no trial instituted.
`
`3 
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`

`
`II.
`
`Background
`
` 
`
`a. About U.S. Patent No. 8,082,501 (the “‘501 patent” or “Leahy”)
`
`In Petitioner’s Opposition to Patent Owner’s Motion for Routine or
`
`Additional Discovery (paper 10), Petitioner opens its Background discussion by
`
`characterizing Patent Owner Worlds Inc. as a “notorious patent assertion entity.”
`
`Paper 10 at 2 (though citing no evidence for this derogatory characterization).
`
`Whatever negative connotation was intended by Bungie through this statement, it
`
`is undermined by Worlds’ reputation at the dawn of 3-D virtual reality
`
`development, when Worlds unveiled a 3-D virtual space referred to as “Worlds
`
`Chat” in early 1995 and distributed it to the public for free. Articles written that
`
`year and published in such periodicals as the Dallas Morning News touted Worlds
`
`Chat as “the hottest innovation the Internet will see this year,” and noteworthy for
`
`“the potential it brings to cyberspace.” Ex. 2008. In an article published in the San
`
`Francisco Examiner, Gina Smith reported that Worlds Chat is “one of the first
`
`examples of virtual reality on the Internet I’ve seen.” Ex. 2009 at 1. Perhaps as a
`
`result, Worlds drew the attention of Steven Spielberg, who “announced that his
`
`nonprofit Starbright Foundation is working with Worlds, Intel, UB Networks and
`
`Sprint to create a 3-D environment where hospitalized children can play and
`
`socialize with each other.” Id. at 3.
`
`4 
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`

`
`Further deflating Petitioner’s characterization of Patent Owner Worlds Inc.
`
`as a “notorious patent assertion entity,” Worlds’ employees developed the
`
`technology leading to the ‘501 patent, rather than acquiring it for the sole purpose
`
`of pursuing litigation. Coming out of Worlds’ innovation associated with 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. The ‘501 patent also claims priority
`
`to 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.”
`
`In the Background of the ‘501 patent, Leahy 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 because of the heavy processing loads and limited capabilities of a workstation
`
`5 
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`

`
`in a 3-D environment, this requirement to process many messages 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
`
`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, N represents a server variable setting the “maximum
`
`number of other avatars A will see,” and N’ represents a client variable setting the
`
`“maximum number of avatars client 60 wants to see and/or hear.” Id. at 5:42-46.
`
`Through the server’s application of such criteria, the server can implement the
`
`crowd control function. For example, the server 61 can include a “user object 64,”
`
`which “maintains a list of the N nearest neighboring remote avatars … in the
`
`room.” Id. at 14:25-30. 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.
`
`6 
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`
`

`
`Thus, according to the disclosed embodiments discussed above, Leahy
`
`discloses server-side selection of avatars, such that the server may notify the client
`
`of the positions of only certain relevant neighbors, and the client has the capability
`
`to further determine the avatars to be displayed based on the received positions.
`
`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.”
`
`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:
`
`7 
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`

`
`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
`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. The Petition
`
`was also supported by the Declaration of Dr. Michael Zyda. Ex. 1002. But as will
`
`be explained below, the Petition fails to establish each feature of the ‘501 patent’s
`
`claims 1, 12, and 14 within the cited disclosures of Funkhouser and Durward, and
`
`fails to justify the combination of references in the manner presented. Similarly,
`
`even assuming that Schneider is prior art (which Patent Owner does not concede),
`
`the Petition fails to establish each feature of the challenged dependent claims in the
`
`cited art.
`
`8 
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`
`

`
`c. Petitioner Failed to Conduct a Proper Claim Construction Analysis
`and Applied Unreasonably Broad Interpretations of the Claim
`Terms
`
`The standard for construing claim terms in this proceeding is not in dispute.
`
`Since the ‘501 patent is not expired, 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). Under the broadest
`
`reasonable construction standard, claim terms are given their ordinary and
`
`customary meaning, as would be understood by one of ordinary skill in the art at
`
`the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`
`Cir. 2007).
`
`For the purpose of this preliminary stage of the inter partes review, the
`
`Board need not construe any of the claim terms to recognize that Petitioner’s
`
`alleged grounds of challenge fail to establish even the likelihood of success against
`
`the ‘501 patent’s claims. To simplify this Preliminary Response only, and without
`
`waiving its right to identify terms for construction, or present constructions or
`
`evidence in support in a Response (should one be necessary), Patent Owner will
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`9 
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`

`
`respond to Petitioner’s challenges based on Petitioner’s proposed constructions,
`
`with one clarification.1
`
`Claims 1 and 14 each recite, in relevant part, “determining, by the client
`
`device, a displayable set of the other user avatars associated with the client device
`
`display.” As noted above, claim 12 also uses the “determine” term.
`
`Petitioner identifies the “determining” term for the Board’s construction.
`
`Pet. at 10. Specifically, Petitioner contends that the “the step of determining, as
`
`recited in the claims, can herein reasonably be construed in light of the
`
`specification as including executing a client process to determine, from user
`
`positions received from the server, other users’ avatar(s) located within a point of
`
`view or perspective (e.g., field of view) of the first user.” Id. at 11. In applying this
`
`proposed construction, however, Petitioner fails to differentiate between
`
`“[determining/determine] … a displayable set of the other user avatars associated
`
`with the client device display,” as that feature is recited in claims 1, 12, and 14
`
`(emphasis added) and both the act of displaying “the client workstation screen
`                                                            
`1 Patent Owner notes that the standards of construction applied in this proceeding
`
`are different from the standards applied in the related litigation. The District Court
`
`Claim Construction Order, issued June 26, 2015, is attached as Ex. 2006 but Patent
`
`Owner reserves its right to present its claim construction arguments until a full
`
`Response, should one be necessary. 
`
`10 
` 
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`

`
`from the point of view of one or more of its entities,” as disclosed by Funkhouser
`
`(see Pet. at 14), and updating “the images viewed and sounds heard with the new
`
`positional and sound data,” as disclosed by Durward (see Pet. at 39-40). In each
`
`ground of rejection, the Petitioner does not identify any expressly disclosed
`
`“determining … a displayable set of the other user avatars associated with the
`
`client device display,” in Funkhouser and Durward (both of which fail to disclose
`
`such features). Rather, Petitioner focuses on what is displayed in these references,
`
`without regard for how such display is achieved.
`
`As such, Petitioner proposes a construction of the “determining” recited in
`
`claims 1, 12, and 14, but fails to apply that proposed construction in its challenges
`
`of the claim.
`
`In evaluating the Petition, the Board should apply the broadest reasonable
`
`construction consistent with the specification for the claimed “determining, by the
`
`client device, a displayable set of the other user avatars associated with the client
`
`device display.” (emphasis added). But even the broadest reasonable interpretation
`
`consistent with the specification of this term is not so broad as to blur the
`
`difference between “determining” a displayable set of avatars and displaying those
`
`avatars. That interpretation would effectively rewrite the claim, where its very
`
`language makes clear that this step is directed toward a client’s capability to
`
`determine a displayable set, and not simply the step of displaying.
`
`11 
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`

`
`d. Petitioners’ Grounds of Challenge Rely On Art Already Considered
`by the USPTO Examiner
`
`The purported grounds of rejection are as follows:
`
`Ground Basis
`
`Reference
`
`Obviousness of Claims 1-6,
`
`Funkhouser in view of Sitrick
`
`12, 14, and 15
`
`Obviousness of Claims 7 & 16 Funkhouser in view of Sitrick, further in
`
`view of Wexelblat
`
`Obviousness of Claims 8 & 10 Funkhouser in view of Sitrick, further in
`
`view of Funkhouser ‘93
`
`Anticipation of Claims 1-6,
`
`Durward
`
`12, 14, and 15
`
`Obviousness of Claims 7 & 16 Durward in view of Wexelblat
`
`Obviousness of Claims 8 & 10 Durward in view of Schneider
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`
`
`Throughout this Preliminary Response, for ease of understanding, Patent
`
`Owner will refer to these prior art references by the names indicated above, rather
`
`12 
` 
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`

`
`than by exhibit number. These prior art references are described below at Section
`
`III, in conjunction with the arguments presented in this Preliminary Response.2
`
`Notwithstanding the many substantive defects of Durward and Funkhouser,
`
`as explained below, the Board possesses the discretion to deny the Petition in full.
`
`Indeed, there is no reason for the Board to institute an inter partes review based in
`
`any part on Durward and Funkhouser. The Petition’s Grounds of Challenge each
`
`rely upon Funkhouser and Durward, but these references were already considered
`
`by the examiner during prosecution, and the claims of the ‘501 patent issued over
`
`this subject matter. See Leahy at 2; 7.
`
`Thus, even if the Petition were not deficient in its grounds of challenge
`
`based on these references for the reasons discussed below, 35 U.S.C. § 325(d)
`
`gives the Board statutory discretion to dismiss the Petition’s Grounds of Challenge
`
`since the same or substantially the same prior art was previously presented to the
`
`USPTO: “[i]n determining whether to institute or order a proceeding under this
`
`chapter, chapter 30, or chapter 31, the Director may take into account whether, and
`
`reject the petition or request because, the same or substantially the same prior
`                                                            
`2 Patent Owner reserves all right to present further argument and evidence related
`
`to these prior art references and the content of the Petition and supporting Exhibits
`
`if Inter Partes Review is instituted, consistent with the Board’s Rules and practice.
`
`No waiver is intended by any argument withheld at this stage of the proceeding. 
`
`13 
` 
`
`

`
`art or arguments previously were presented to the Office.” (emphasis added). The
`
`claims of the ‘501 patent were rightfully allowed over Durward and Funkhouser.
`
`The Board should not disturb the examiner’s correct conclusion.
`
`III. Argument
`a. Petitioner’s Theories of Invalidity Fail to Identify Each Recited
`Feature of the Challenged Claims in the Cited References
`
`As shown below, Petitioner’s theories of challenge fail to consider the full
`
`claim language of independent claims 1, 12, and 14. Specifically, in each
`
`challenge, Petitioner fails to explain, as required under 37 C.F.R. § 42.22(a)(2),
`
`how the full features of the claim elements are separately disclosed by Durward
`
`and by Funkhouser in view of Sitrick. This failure is fatal to the Petition, which
`
`should be denied without institution.
`
`b. Ground 1’s Challenge Based on Funkhouser in view of Sitrick Fails
`to Identify all Features of the Independent Claims
`
`Funkhouser discloses a system of communicating entity state changes to
`
`clients in a virtual environment. Funkhouser’s system, RING, uses algorithms “to
`
`compute the region of influence for each state change, and then update messages
`
`are sent only to the small subset of workstations to which the update is relevant.”
`
`Funkhouser at 02. “Real-time update messages are propagated only to servers and
`
`clients containing entities inside some cell visible to the one containing the updated
`
`entity.” Id. at 03. However, Funkhouser is completely silent regarding how the
`
`14 
` 
`
`

`
`client workstation uses the update messages to generate the resulting image
`
`displayed on the workstation. For example, while claim 1 recites the step of
`
`“determining, by the client device, a displayable set of the other user avatars
`
`associated with the client device display,” Funkhouser fails to expressly disclose
`
`how or even whether the client workstation possesses the capability to determine
`
`displayable avatars. Moreover, as will be explained below, Petitioner implicitly
`
`concedes this disclosure failure in Funkhouser since Petitioner trends toward a
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`theory of inherent disclosure without establishing that such features are necessarily
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`disclosed as required under such a theory.
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`As such, even if Funkhouser is a proper prior art publication, which Patent
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`Owner does not concede3, Petitioner fails to establish all features of claim 1 in
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`Funkhouser in view of Sitrick. Thus, this combination necessarily fails to render
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`claim 1 obvious.
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`According to Petitioner, Funkhouser discloses both “server-side filtering”
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`that reduces the number of positional update messages sent from the server to the
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`3 Petitioner alleges a publication date for Funkhouser of no later than April 12,
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`1995 (see Pet. at 7), while Worlds Chat was released to the public and drawing the
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`attention of technology journalists nearly contemporaneously. See Ex. 2008, 2009.
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`Patent Owner denies that Funkhouser was published prior to the “date of
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`invention,” as required under 35 U.S.C. § 102(a).
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`client workstation, and also “client processing” that reduces the number of entities
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`further for display on the client workstation. Pet. at 5. But contrary to Petitioner’s
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`position, Funkhouser fails to disclose at least “determining, by the client device, a
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`displayable set of the other user avatars associated with the client device display,”
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`as recited in claims 1 and 14. Funkhouser similarly fails to disclose the relied-upon
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`features of the ‘501 patent’s other independent claim 12.
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`One source of Petitioner’s error is the reliance on Funkhouser’s disclosure
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`that an “entity’s visibility is conservatively over-estimated.” Funkhouser at 03;
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`Pet. at 21. Petitioner presents this quotation as support that the client receives
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`more positions than “a narrower set of updates that are actually visible based on
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`the client’s line of sight.” Pet. at 21. Based on this quotation, Petitioner argues that
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`the client determines “a displayable set of the other user avatars associated with the
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`client device display,” as recited in claim 1. Pet. at 21. But this characterization of
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`Funkhouser is not consistent with Funkhouser’s express disclosure, and is entitled
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`to no weight.
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`Specifically, according to Funkhouser, each client maintains surrogates for
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`the “subset of remote entities visible to at least one entity local to the client.”
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`Funkhouser at 04. A surrogate represents a client’s model of the other entity, and
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`contains “representations for the entity’s geometry and behavior.” Id. at 03.
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`Notably, Funkhouser does not disclose a client using an “update message” for
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`anything other than updating the “geometric and behavioral models for the entity’s
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`local surrogate.” Id. Further, per Funkhouser, “[b]etween updates, surrogate
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`behavior is simulated by every client.” Id.
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`Funkhouser also discloses that “[c]lient workstations must store, simulate,
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`and process update messages only for the subset of entities visible to one of the
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`client’s local entities.” Id. at 04 (emphasis added). But according to Funkhouser,
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`this processing is limited to updating the “geometric and behavioral models for the
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`entity’s local surrogate.” Id. at 03. Funkhouser does not expressly disclose any
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`other use of update messages, and fails to expressly disclose at least “determining,
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`by the client device, a displayable set of the other user avatars associated with the
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`client device display,” as recited in claims 1 and 14.
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`Compounding Petitioner’s error is Dr. Zyda’s argument that Funkhouser
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`Plate II “describes that the client received and processed updates for 14 remote
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`entities but, as shown in the picture, determines a set of four entities to display
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`based on the user’s field of view.” Pet. at 23 (citing to Funkhouser at 09, Plate II;
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`Ex. 1002 at ¶96). Dr. Zyda also testifies that:
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`[A]fter receiving the filtered positional updates from the server, the
`client performs its own calculations, including updating the surrogates
`of the remote entities, in order to determine which of the remote
`entities to display within the client’s field of view. This is further
`illustrated by the Funkhouser’s Plate II (showing a user’s viewpoint)
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`and the corresponding caption, which describes that the client
`received and processed updates for 14 remote entities but, as shown in
`the picture, determined a set of four entities to display based on the
`user’s field of view. Id. at 09 (Plate II).
`Ex. 1002 at ¶96 (citing to Funkhouser at 09 (Plate II)). As should be evident above,
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`Dr. Zyda provides no citation for his assertion that the “client performs its own
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`calculations … in order to determine which of the remote entities to display within
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`the client’s field of view.” Dr. Zyda is conjecturing about what happens between
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`Funkhouser’s updating of local surrogates and displaying the field of view, without
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`any express support from Funkhouser. The “further illustrat[ion]” allegedly
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`provided by Funkhouser’s Plate II does not support Dr. Zyda’s position.
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`Specifically, neither Plate II nor any other portion of Funkhouser discloses that the
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`client of Plate II “received and processed updates for 14 remote entities” and from
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`those 14 remote entities “determined a set of four entities to display based on the
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`user’s field of view.” This assertion is not supported by Funkhouser, and Dr.
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`Zyda’s unsupported characterization and conclusion should be entitled to little or
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`no weight under 37 C.F.R. § 42.65(a). Even the image caption of Plate II speaks
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`only of processing update message, but makes no reference to client-side
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`“determining” as recited in claims 1 and 14.
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`Funkhouser’s discussion of Plate II occurs in Section 5, Experimental
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`Resu