Trials@uspto.gov
`571-272-7822
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` Paper 42
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` Date: December 6, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BUNGIE, INC.,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01319
`Patent 8,082,501 B2
`____________
`
`
`Before KARL D. EASTHOM, KERRY BEGLEY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`CHUNG, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

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`IPR2015-01319
`Patent 8,082,501 B2
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`
`I.
`
`INTRODUCTION
`
`Petitioner, Bungie, Inc., filed a Petition to institute an inter partes
`review of claims 1–8, 10, 12, and 14–16 of U.S. Patent No. 8,082,501 B2
`(“the ’501 patent”). Paper 3 (“Pet.”). Patent Owner, Worlds Inc., filed a
`Preliminary Response pursuant to 35 U.S.C. § 313. Paper 12 (“Prelim.
`Resp.”). Upon consideration of the Petition and Preliminary Response, on
`November 30, 2015, we instituted an inter partes review of claims 1–8, 10,
`12, and 14–16 (“instituted claims”), pursuant to 35 U.S.C. § 314. Paper 14
`(“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 20 (“PO Resp.”)) and a Supplement to the Response
`(Paper 22 (“Supp. Resp.”)). Petitioner filed a Reply to Patent Owner’s
`Response. Paper 31 (“Reply”). Patent Owner filed a Motion to Exclude
`(Paper 33 (“Mot.”) and Petitioner filed an Opposition to the Motion to
`Exclude (Paper 36 (“Opp.”)), to which Patent Owner filed a Reply (Paper 38
`(“Mot. Reply”)). An oral hearing was held on August 17, 2016, and a
`transcript of the hearing is included in the record. Paper 41(“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has
`shown by a preponderance of the evidence that claims 1–8, 10, 12, and 14–
`16 of the ’501 patent are unpatentable. See 35 U.S.C. § 316(e).
`
`A.
`
`Related Matters
`
`The ’501 patent is involved in a district court proceeding, Worlds Inc.
`v. Activision Blizzard, Inc., Case No. 1:12-cv-10576 (D. Mass.) (“District
`Court Case”). Paper 5. In addition, the ’501 patent is related to the patents
`
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`at issue in IPR2015-01264, IPR2015-01268, IPR2015-01269,
`IPR2015-01321, and IPR2015-01325. Id.
`
`B.
`
`The Asserted Grounds
`
`We instituted inter partes review on the following grounds of
`unpatentability asserted by Petitioner:
`
`Reference(s)
`Funkhouser
`(Ex. 1005)1 and Sitrick
`(Ex. 1013)2
`Funkhouser, Sitrick,
`and Wexelblat
`(Ex. 1020)4
`Funkhouser, Sitrick,
`and Funkhouser ’93
`(Ex. 1017)5
`Durward (Ex. 1008)6
`
`Basis
`
`Instituted Claim(s)
`
`§ 103(a)3
`
`1–6, 12, 14, and 15
`
`§ 103(a)
`
`7 and 16
`
`§ 103(a)
`
`8 and 10
`
`§ 102(a)
`
`1–6, 12, 14, and 15
`
`§ 103(a)
`
`7 and 16
`
`Durward and
`Wexelblat
`
`1 Thomas A. Funkhouser, RING: A Client-Server System for Multi-User
`Virtual Environments, in 1995 SYMPOSIUM ON INTERACTIVE 3D GRAPHICS
`(1995).
`2 U.S. Patent No. 4,521,014, issued June 4, 1985.
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`revised 35 U.S.C. § 103 and the relevant sections took effect on March 16,
`2013. Because the application from which the ’501 patent issued was filed
`before that date, our citations to Title 35 are to its pre-AIA version.
`4 U.S. Patent No. 5,021,976, issued June 4, 1991.
`5 Thomas A. Funkhouser & Carlo H. Séquin, Adaptive Display Algorithm
`for Interactive Frame Rates During Visualization of Complex Virtual
`Environments, in COMPUTER GRAPHICS PROCEEDINGS: ANNUAL
`CONFERENCE SERIES (1993).
`6 U.S. Patent No. 5,659,691, filed Sept. 23, 1993, issued Aug. 19, 1997.
`
`3
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`Patent 8,082,501 B2
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`
`Reference(s)
`Durward and
`Schneider (Ex. 1019)7
`
`
`
`Basis
`
`Instituted Claim(s)
`
`§ 103(a)
`
`8 and 10
`
`C.
`
`The ’501 Patent
`
`The ’501 patent discloses a “client-server architecture” for a
`“graphical, multi-user, interactive virtual world system.” Ex. 1001, [57],
`3:6–8. In the preferred embodiment, each user chooses an avatar to
`“represent the user in the virtual world,” id. at 3:25–27, and “interacts with a
`client system,” which “is networked to a virtual world server,” id. at 3:14–
`15. “[E]ach client . . . sends its current location, or changes in its current
`location, to the server.” Id. at 3:40–44; see id. at 2:44–47. The server, in
`turn, sends each client “updated position information” for neighbors of the
`client’s user. Id. at [57], 2:44–49, 3:40–44, 14:28–32.
`The client executes a process to render a “view” of the virtual world
`“from the perspective of the avatar for that . . . user.” Id. at [57], 2:40–42,
`3:30–35, 4:54–56, 7:55–57. This view shows “avatars representing the other
`users who are neighbors of the user.” Id. at [57], 2:42–44.
`
`D.
`
`The Instituted Claims
`
`Of the instituted claims 1–8, 10, 12, and 14–16, claims 1, 12, and 14
`are independent claims. Id. at 19:20–20:65. Claim 1 is illustrative and
`reproduced below:
`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
`
`7 U.S. Patent No. 5,777,621, filed June 7, 1995, issued July 7, 1998.
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`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;
`information
`receiving, by
`the client device, position
`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.
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill in the Art
`
`We begin our analysis by addressing the level of ordinary skill in the
`art. Petitioner argues, and Dr. Zyda opines, that a person of ordinary skill in
`the art relevant to the ’501 patent would have had “through education or
`practical experience, the equivalent of a bachelor’s degree in computer
`science or a related field and at least an additional two years of work
`experience developing or implementing networked virtual environments.”
`Pet. 7; Ex. 1002 ¶ 55. Mr. Pesce similarly testifies that a person of ordinary
`skill in the art would have had “at least a bachelor’s degree or equivalent in
`computer science, with two or more years of experience in coding related to
`both virtual environments and computer networking.” Ex. 2017 ¶ 33.
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`The parties’ proposals for the level of ordinary skill in the art have
`slight differences in wording, yet we do not find them to have meaningful
`distinctions (e.g., “at least” two years versus “two or more years,”
`“networked virtual environments” versus “virtual environments and
`computer networking”). Neither party asserts that there is any such
`distinction. Based on the testimony of the parties’ experts as well as our
`review of the ’501 patent, the types of problems and solutions described
`therein, and the prior art involved in this proceeding, we adopt the following
`as the level of ordinary skill in the art: the equivalent, through education or
`practical experience, of a bachelor’s degree in computer science or a related
`field, and at least two years of experience developing, coding, or
`implementing networked virtual environments, or virtual environments and
`computer networking.
`
`B. Mr. Pesce’s Qualifications as an Expert
`
`Petitioner argues the testimony of Mr. Pesce, Patent Owner’s
`declarant, should be given no weight because it “often is inconsistent, lacks
`objective support, and/or was incapable of being substantiated during . . .
`cross examination,” providing examples of these alleged deficiencies in
`Mr. Pesce’s testimony regarding claim construction and the timing of the
`invention of the ’501 patent. Reply 1–3. Petitioner further argues that “[i]t
`is not clear how Mr. Pesce qualifies as an expert in this field,” citing
`Mr. Pesce’s deposition testimony regarding the amount of experience he had
`in 19958 and his lack of an educational degree beyond high school. Reply 3
`
`
`8 The ’501 patent claims priority to provisional application no. 60/020,296
`(“’296 provisional”), filed on November 13, 1995. Ex. 1001, [60].
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`(citing Ex. 1046, 18:12–19:2, 21:8–15, 40:10–20; Ex. 2017 ¶ 35). Petitioner
`also asserts that “Mr. Pesce was unwilling to address his documented . . . use
`of psychedelic drugs during the 1990s (Ex. 1041) and whether that drug use
`affected his recollection of events during the period relevant to the [’501]
`patent[]. See also, Ex. 1046 at 46:11–47:21, 50:25–53.” Reply 3.
`Here, Petitioner has not moved to exclude Mr. Pesce’s testimony. Nor
`has Petitioner taken an express and affirmative position that Mr. Pesce is not
`qualified as an expert. See id. (“It is not clear how Mr. Pesce qualifies as an
`expert in this field.”) (emphasis added). To the extent Petitioner is
`suggesting as much, we disagree.
`Federal Rule of Evidence (“Rule”) 702 provides that a “witness who
`is qualified as an expert by knowledge, skill, experience, training, or
`education may testify in the form of an opinion if (a) the expert’s knowledge
`will help the trier of fact to understand the evidence or to determine a fact in
`issue; (b) the testimony is based upon sufficient facts or data; (c) the
`testimony is the product of reliable principles and methods; and (d) the
`
`
`Petitioner uses the provisional filing date in its analysis in its briefing and
`Dr. Zyda’s declaration (see, e.g., Pet. 4–11; Reply 2–5; Ex. 1002 ¶¶ 53–55),
`and represented at the hearing that it does not contest, for purposes of this
`proceeding, priority to the provisional (Tr. 195:1–7). Patent Owner also
`takes the position that the ’501 patent is entitled to priority to the provisional
`and represented at the hearing that its specification is nearly identical to that
`of the ’501 patent. See, e.g., id. at 90:5–91:3, 92:10–15; Ex. 2017 ¶ 34.
`Based on our review of the ’296 provisional, we agree with Patent Owner’s
`representation that its specification is nearly identical to the ’501 patent
`specification, and we accept the parties’ agreement that the ’501 patent is
`entitled to priority to the ’296 provisional. See Ex. 2020. None of our
`determinations in this Decision would change if the ’501 patent were not
`entitled to this priority date.
`
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`witness has applied the principles and methods reliably to the facts of the
`case.” Fed. R. Evid. 702. Under this standard, testimony on the issue of
`unpatentability proffered by a witness who is not “qualified in the pertinent
`art” generally is not admissible. Sundance Inc. v. DeMonte Fabricating
`Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Rule 702, however, does not
`“require[] a witness to possess something more than ordinary skill in the art
`to testify as an expert” and a “witness possessing merely ordinary skill will
`often be qualified to present expert testimony.” Id. at 1363. Nor does the
`Rule require a perfect match or complete overlap between the witness’s
`technical qualifications and the field of the invention. See SEB S.A. v.
`Montgomery Ward & Co., 594 F.3d 1360, 1372–73 (Fed. Cir. 2010).
`In his declaration and curriculum vitae, Mr. Pesce details his relevant
`work experience from 1984 to the present as well as his teaching experience
`and numerous technical publications and presentations. See Ex. 2017 ¶¶ 3–
`19, 35–42, pp. 67–82; see also Ex. 1046, 19:8–21:16, 39:11–40:20. Having
`reviewed this experience and Mr. Pesce’s technical testimony, we find his
`knowledge, skill, and experience in the relevant field of networked virtual
`environments, as well as computer networking and virtual reality more
`generally, sufficient to render him qualified to offer expert testimony in this
`proceeding under Rule 702.
`We do not find the evidence to which Petitioner points persuasive on
`this issue. First, Petitioner refers to Mr. Pesce’s declaration testimony that
`“as of 1995, [he] possessed more than 5 years of experience in the computer
`graphics industry with an emphasis on virtual reality” and his admission
`during his deposition that he was working in the field “from 1991” so “five
`years” is accurate, rather than “more than five years” as he stated in his
`
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`declaration. Ex. 2017 ¶ 33; Ex. 1046, 39:13–40:20; see Reply 3. We do not
`find this admitted minor misstatement of Mr. Pesce’s experience to
`undermine his qualifications, or credibility, as an expert. Mr. Pesce worked
`on virtual reality environments beginning in 1991 and continuing through
`the relevant time of invention of the ’501 patent, and for many years
`thereafter. See, e.g., Ex. 2017 ¶¶ 5–19, 35–42, pp. 67–82; Ex. 1046, 39:13–
`40:20. Second, as to Mr. Pesce’s lack of an educational degree beyond high
`school, Petitioner and Dr. Zyda, as well as Mr. Pesce, agree that experience
`can overcome a lack of a formal technical education in satisfying the
`standard for a person of ordinary skill in the art, and we have so determined
`in our finding in § II.A regarding the level of ordinary skill in the art.
`Pet. 11 (proffering definition of one of ordinary skill in the art as “someone
`who had, through education or practical experience, the equivalent of a
`bachelor’s degree in computer science or a related field”) (emphasis added);
`Ex. 1002 ¶ 55 (same); Ex. 2017 ¶ 33; see id. ¶¶ 3, 35; Reply 3; Opp. 7. We
`note that Mr. Pesce did attend the Massachusetts Institute of Technology
`(“MIT”) for four semesters. Ex. 2017 ¶ 3; Ex. 1046, 19:8–14; see id. at
`19:15–21:16. As we explain above, we find Mr. Pesce’s experience, skill,
`and knowledge in the relevant field sufficient to render him qualified to offer
`expert testimony in this proceeding.
`Third, we turn to Petitioner’s citation and reference to Exhibit 1041,9
`an excerpt from a 1999 interview of Mr. Pesce at the AllChemical Arts
`conference in which he discusses how his use of psychedelic drugs,
`
`
`9 Exhibit 1041 is a subject of Patent Owner’s motion to exclude, which we
`address below in § II.M. We consider Exhibit 1041 here only for the limited
`purpose for which we find it relevant and admissible in § II.M.
`
`9
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`beginning in college, has impacted and facilitated his career and work, and
`Mr. Pesce’s related deposition testimony in which he states he does not
`recall the interview and the specific contents thereof. Reply 3 (citing
`Ex. 1041; Ex. 1046, “46:11-47:21, 50:25–53”); Ex. 1041; Ex. 1046, 46:11–
`47:21, 50:25–57:10. We have considered Exhibit 1041 in assessing
`Mr. Pesce’s capacity to perceive and recall developments and details from
`the relevant art in the 1990s about which he testifies, as well as the reliability
`of his perception and recollection. See infra § II.M; see, e.g., Ex. 2017
`¶¶ 36–44, 49.a.iv, 59; Ex. 1046, 85:4–21, 89:10–90:7, 204:12–205:20,
`222:1–223:6. We do not find Exhibit 1041, which lacks detailed
`information regarding the extent and regularity of any drug use, to
`undermine Mr. Pesce’s capacity to perceive and recall such events or the
`reliability of his relevant testimony. Nor do we find his inability to
`remember the specifics of this one particular interview given nearly twenty
`years ago to undermine his credibility, reliability, or qualifications as a
`witness. Having carefully reviewed his testimony in this proceeding, we
`find his technical testimony, and particularly his testimony on issues related
`to the development of the art in the early to mid-1990s, cogent. We consider
`Mr. Pesce’s testimony throughout our analysis below and where we discount
`or disagree with his testimony, it is for reasons other than the contents of
`Exhibit 1041 and his deposition testimony regarding this exhibit.
`Petitioner’s remaining arguments regarding specific alleged
`deficiencies in Mr. Pesce’s testimony on claim construction go to the weight
`to be accorded to Mr. Pesce’s testimony on these particular substantive
`issues. See Reply 1–3. We have considered these alleged deficiencies and
`
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`address them, as appropriate, in our analysis below of the issues to which
`they pertain.
`
`C. Claim Construction
`
`In our Institution Decision, we raised the issue of the impending
`expiration of the ’501 patent and its potential impact on the applicable claim
`construction standard, given that the Board construes unexpired patents
`under the broadest reasonable interpretation standard but expired patents
`under the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005). See Inst. Dec. 4 n.1; 37 C.F.R. § 42.100(b) (2012)10; Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (holding that
`37 C.F.R. § 42.100(b), under which the Board applies the broadest
`reasonable interpretation standard to unexpired patents, “represents a
`reasonable exercise of the rulemaking authority that Congress delegated to
`the . . . Office”); Black & Decker, Inc. v. Positec USA, Inc., 646 Fed. App’x
`1019, 1024 (Fed. Cir. 2016) (holding that in an inter partes review,
`“[c]laims of an expired patent are given their ordinary and customary
`meaning in accordance with our opinion in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc)”). Because neither party had addressed this
`issue, we stated that we “expect the parties to address, with particularity, in
`their future briefing the expiration date of the ’501 patent claims on which
`we institute inter partes review.” Inst. Dec. 4 n.1.
`
`
`10 The Office amended rule 37 C.F.R. § 42.100(b) after the Institution
`Decision in this proceeding. The amended rule does not apply to this
`proceeding, because it applies only to petitions filed on or after May 2, 2016.
`See Amendments to the Rules of Practice for Trials Before the Patent Trial
`and Appeal Board, 81 Fed. Reg. 18,750, 18,766 (Apr. 1, 2016).
`
`11
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`In its Response, Patent Owner represented that the ’501 patent expires
`on November 12, 2016, with an explanation supporting the calculation of
`this expiration date. See PO Resp. 7–12. In its Supplement to the Response,
`Patent Owner reiterated the expiration date of the ’501 patent to be
`November 12, 2016. See Supp. Resp. At the oral hearing, Patent Owner
`confirmed this expiration date and Petitioner indicated that it agrees with and
`does not challenge this date. See Tr. 14:1–16, 88:8–89:7. Based on the
`parties’ agreement and our review of the record, we agree that the
`’501 patent expired on November 12, 2016. See, e.g., Ex. 1001, [22], [60],
`[63]; Ex. 1004, 322, 339.
`The ’501 patent is now expired.11 In an inter partes review, the
`proper claim construction standard in an expired patent is set forth in
`Phillips, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See In re Rambus Inc.,
`694 F.3d 42, 46 (Fed. Cir. 2012) (“[T]he Board’s review of the claims of an
`expired patent is similar to that of a district court’s review.”). Under the
`Phillips standard, claim terms are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire patent disclosure. Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`
`
`11 Although we apply the Phillips standard in this Decision, our claim
`interpretation would not differ under the broadest reasonable interpretation
`standard, applicable to unexpired patents. Rather, having considered the
`issue, we would reach the same claim interpretation under the broadest
`reasonable interpretation standard.
`
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`
`1. Determining
`
`In the Petition, Petitioner argues the scope of the “determining” step
`of claims 1 and 14 and the “determine” limitation of claim 12 (collectively,
`the “determining limitations”) “at least includes 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.” Pet. 10 (citing Ex. 1002 ¶ 61).
`In response, Patent Owner advances several arguments as to why
`Petitioner’s proposed claim scope is incorrect (see PO Resp. 12–17), but
`ultimately “submits that no construction is necessary for the full
`‘determining’ steps of claims 1, 12, and 14” (id. at 17).
`In reply, Petitioner recognizes that Patent Owner argues the
`determining limitations need no construction and points out that Patent
`Owner “does not contest disclosure of this element in the prior art”
`(Reply 4), but Petitioner still provides several arguments as to why its
`proffered scope of the determining limitations is correct. Id. at 4–6.
`The parties’ arguments regarding the instituted grounds, however, do
`not hinge on the Board resolving the proper interpretation of the determining
`limitations of claims 1, 12, and 14, and in particular, the issue of claim scope
`raised by Petitioner. See, e.g., Resp. 20–36; Reply 4 (“[Patent Owner] does
`not contest disclosure of this element in the prior art.”). Accordingly, based
`on our review of the arguments and evidence of record, we need not address
`Petitioner’s proposed scope of the determining limitations or otherwise
`construe these limitations to resolve the issues presented in this case. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
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`1999) (holding that only claim terms that “are in controversy” need to be
`construed and “only to the extent necessary to resolve the controversy”).
`
`2. Avatar
`
`Independent claims 1, 12, and 14 of the ’501 patent recite “avatar” in
`several contexts. For instance, claims 1 and 14 recite in their preambles
`“each user of the first user and the other users being associated with a three
`dimensional avatar” (emphasis added), and claim 12 includes a similar
`recitation in its preamble. Ex. 1001, 19:20–23, 20:15–16, 20:34–36. As
`another example, claims 1 and 14 recite in their bodies “customizing, using a
`processor of a client device, an avatar in response to input by the first user”
`(emphasis added), and the body of claim 12 features a similar limitation. Id.
`at 19:25, 20:20, 20:38. In addition, claims 1, 12, and 14 recite “the other
`user avatars.” Id. at 19:28, 19:35, 19:38, 20:23, 20:26, 20:41, 20:47–48,
`20:51. Claims 1, 12, and 14 additionally recite in their bodies “avatars,” by
`itself, without “the other user” modifier. Id. at 19:31–32, 20:27, 20:44–45.
`Claim 12 also recites in its body “the other users’ avatars.” Id. at 20:28.
`The parties only dispute whether “avatar” must be
`“three-dimensional,” as Patent Owner urges. See Pet. 10; PO Resp. 17–19;
`Reply 7–9; Tr. 127:6–11. Specifically, Petitioner proposes “avatar” is “a
`graphical representation of a user” (see Pet. 10; Reply 7–9), whereas Patent
`Owner proposes “avatar” is “a three-dimensional graphical representation of
`a user” (see PO Resp. 17–19).
`To resolve the parties’ dispute, we consider whether the phrases “each
`user of the first user and the other users being associated with a three
`dimensional avatar” recited in the preamble of claims 1 and 14 and “each
`
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`user being associated with a three dimensional avatar” recited in the
`preamble of claim 12 are limiting. Petitioner assumes but does not concede
`that the preamble is limiting. Pet. 40; see also Pet. 15.
`In response, although Patent Owner does not argue affirmatively
`whether the preamble is limiting (see generally PO Resp.), Patent Owner
`states “[i]ndeed, to remove all doubt, the preambles of claims 1, 12, and 14
`expressly recite that the claims ‘avatar’ is three-dimensional” (id. at 18).
`Moreover, during the oral hearing, Patent Owner acknowledged that “three
`dimensional” as recited in claims 1, 12, and 14 of the preamble of the
`’501 patent rendered superfluous the additional “three-dimensional”
`requirement of its proposed construction of “avatar.” Tr. 129:22–130:12
`(Patent Owner responding to question regarding whether its proposed
`construction, when “plugged” into claims of the ’501 patent and other patent
`claims requiring a “three-dimensional” avatar would render
`“three-dimensional” superfluous with “I think it has to, Your Honor.”); see
`also Ex. 1046, 100:1–19, 104:13–105:4.
`The determination of whether a preamble limits a claim is made on a
`case-by-case basis in light of the facts in each case; there is no litmus test
`defining when a preamble limits the scope of a claim. Catalina Mktg. Int’l
`v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). “Preamble
`language that merely states the purpose or intended use of an invention is
`generally not treated as limiting the scope of the claim.” Bicon, Inc. v.
`Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). However, “[w]hen
`limitations in the body of the claim rely upon and derive antecedent basis
`from the preamble, then the preamble may act as a necessary component of
`the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332,
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`1339 (Fed. Cir. 2003) (citing e.g., Electro Sci. Indus. v. Dynamic Details,
`Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002)). Also, “a claim preamble has
`the import that the claim as a whole suggests for it. In other words, when
`the claim drafter chooses to use both the preamble and the body to define the
`subject matter of the claimed invention, the invention so defined, and not
`some other, is the one the patent protects.” Bell Commc’ns Research, Inc. v.
`Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995).
`Here, the body of claims 1, 12, and 14 recite “the first user” and “the
`other user avatars.” Ex. 1001, 19:26, 20:21–22, 20:39, 19:28, 19:35, 19:38,
`20:23, 20:26, 20:41, 20:47–48, 20:51. The phrases “the first user” and “the
`other user avatars” have antecedence, by implication, to “each user of the
`first user and the other users being associated with a three dimensional
`avatar” (emphasis added) recited in the preamble of claims 1 and 14 and
`similarly recited in the preamble of claim 12. Compare e.g., id. at 19:21–22,
`with id. at 19:26, 19:28, 19:34–35, 19:38. Moreover, the phrases “the first
`user” and “the other user avatars” have antecedence, by implication, to
`“each user being associated with a three dimensional avatar” (emphasis
`added) recited in the preamble of claim 12. Compare, e.g., id. at 20:15–16,
`with id. at 20:20–21, 20:23, 20:26. In addition, the body of claim 12 recites
`“the other users’ avatars” that, by implication, has antecedence to “each user
`being associated with a three dimensional avatar” as recited in the preamble
`of claim 12. Compare id. at 20:28, with id. at 20:15–16.
`Although the antecedent from the body of the claim is not a verbatim
`recitation of the preamble in every instance, antecedent basis can be present
`by implication. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d 1113,
`1116 (Fed. Cir. 1987). In this case, we determine the antecedent basis for
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`“the first user” and “the other user avatars” recited in the body of claims 1,
`12, and 14 of the ’501 patent refers to, by implication, “each user of the first
`user and the other users being associated with a three dimensional avatar”
`(emphasis added) as recited in the preamble of claims 1 and 14 and as
`similarly recited in the preamble of claim 12. Compare, e.g., Ex. 1001,
`19:21–22, with id. at 19:26, 19:28, 19:34–35, 19:38. Moreover, we
`determine the antecedent basis for the phrases “the first user” and “the other
`user avatars” recited in the body of claim 12 refers to, by implication, “each
`user being associated with a three dimensional avatar” (emphasis added)
`recited in the preamble of claim 12. Compare, e.g., id. at 20:15–16, with id.
`at 20:20–21, 20:23, 20:26. We also determine the antecedent basis for “the
`other users’ avatars” recited in the body of claim 12 refers to, by implication,
`“each user being associated with a three dimensional avatar” as recited in the
`preamble of claim 12. Compare id. at 20:28, with id. at 20:15–16.
`Accordingly, the phrases “each user of the first user and the other users
`being associated with a three dimensional avatar” recited in the preamble of
`claims 1 and 14 and “each user being associated with a three dimensional
`avatar” recited in the preamble of claim 12 are limiting.
`In the ’501 patent, by using antecedent basis as determined above, the
`inventors chose to “use both the preamble and the body to define the subject
`matter of the claimed invention, the invention so defined, and not some
`other, is the one the patent protects.” See Bell, 55 F.3d at 620. The
`’501 patent describes a “three dimensional figure chosen by the user” as a
`preferred embodiment. Ex. 1001, 3:25–27. In contrast, in related cases
`involving patents related to the ’501 patent, the Board determined the
`inventors sought broader protection for a more generic avatar not limited to
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`three dimensions. See infra note 12; Pitney Bowes, Inc. v. Hewlett-Packard
`Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999); Jansen v. Rexall Sundown, Inc.,
`342 F.3d 1329, 1333 (Fed. Cir. 2003). Here, however, the existence of
`antecedent basis from the body of the ’501 patent claims for the phrase
`“each user of the first user and the other users being associated with a three
`dimensional avatar” (emphasis added) (Ex. 1001, 19:21–22, 20:34–36)
`recited in the preamble of claims 1 and 14 and similarly recited in claim 12,
`and defining the invention in terms of the preamble and body of the claim,
`also shows that the preamble is necessary to give life, meaning, and vitality
`into the claims.
` Therefore, because the phrases “each user of the first user and the
`other users being associated with a three dimensional avatar” (emphasis
`added) (id. at 19:21–22, 20:34–36) recited in the preamble of claims 1
`and 14 and “each user being associated with a three dimensional avatar”
`(emphasis added) (id. at 20:15–16) recited in the preamble of claim 12 are
`limiting, the terms “an avatar” (id. at 19:25, 20:20, 20:38), “the other user
`avatars” (id. at19:28, 19:35, 19:38, 20:23, 20:26, 20:41, 20:47–48, 20:51),
`“avatars” (id. at 19:31–32, 20:27, 20:44–45), and “the other users’ avatars”
`(id. at 20:28) must be three-dimensional.12
`
`
`12 If the phrases “each user of the first user and the other users being
`associated with a three dimensional avatar” (emphasis added) (Ex. 1001,
`19:21–22, 20:34–36) recited in the preamble of claims 1 and 14 and “each
`user being associated with a three dimensional avatar” (emphasis added)
`(Ex. 1001, 20:15–16) recited in the preamble of claim 12 were not limiting,
`then we would agree with Petitioner that an “avatar” is “a graphical
`representation of a user” without a three-dimensional requirement, as the
`Board has determined in related cases involving related patents. See
`IPR2015-01264, slip op. at 40–56 (PTAB Nov. 10, 2016) (Paper 42);
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`E. Obviousness of Claims 1–6, 12, 14, and 15 in View of Funkhouser and
`Sitrick
`
`1.
`
`Funkhouser (Ex. 1005)
`
`Petitioner argues Funkhouser constitutes a “printed publication” under
`§ 102(a) and was published “no later than April 12, 1995.” Pet. 6, 13.
`Patent Owner does not contest, and appe