Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 14
`
` Entered: December 7, 2015
`
`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.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Bungie, Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–8, 10, 12, and 14–16 of U.S. Patent No. 8,082,501 B2
`(Ex. 1001, “the ’501 patent”). Paper 3 (“Pet.”). Worlds Inc. (“Patent
`Owner”) filed a Preliminary Response. Paper 12 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless “the information presented in the petition . . . and any response
`. . . shows that there is a reasonable likelihood that the petitioner would
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Having considered the Petition and the Preliminary Response, we conclude
`that there is a reasonable likelihood that Petitioner would prevail in showing
`that claims 1–8, 10, 12, and 14–16 of the ’501 patent are unpatentable.
`I. BACKGROUND
`A. THE ’501 PATENT
`The ’501 patent discloses a “client-server architecture” for a “three-
`dimensional 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.
`B. ILLUSTRATIVE CLAIM
`Claims 1, 12, and 14 of the ’501 patent are independent claims.
`Id. at 19:20–20:65. Claim 1 is illustrative:
`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;
`2
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`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.
`
`C. ASSERTED PRIOR ART
`The Petition relies upon the following references, as well as the
`Declaration of Michael Zyda, D.Sc. (Ex. 1002):
`U.S. Patent No. 4,521,014 (issued June 4, 1985) (Ex. 1013, “Sitrick”);
`
`U.S. Patent No. 5,021,976 (issued June 4, 1991) (Ex. 1020, “Wexelblat”);
`
`U.S. Patent No. 5,659,691 (filed Sept. 23, 1993) (issued Aug. 19, 1997)
`(Ex. 1008, “Durward”);
`
`
`U.S. Patent No. 5,777,621 (filed June 7, 1995) (issued July 7, 1998)
`(Ex. 1019, “Schneider”);
`
`
`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 247 (1993) (Ex. 1017, “Funkhouser ’93”); and
`
`
`Thomas A. Funkhouser, RING: A Client-Server System for Multi-User
`Virtual Environments, in 1995 SYMPOSIUM ON INTERACTIVE 3D
`GRAPHICS 85 (1995) (Ex. 1005, “Funkhouser”).
`
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 9.
`
`
`
`3
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`Reference(s)
`Challenged Claims Basis
`1–6, 12, 14, and 15
`§ 103 Funkhouser and Sitrick
`7 and 16
`§ 103 Funkhouser, Sitrick, and Wexelblat
`8 and 10
`§ 103 Funkhouser, Sitrick, and Funkhouser ’93
`1–6, 12, 14, and 15
`§ 102 Durward
`7 and 16
`§ 103 Durward and Wexelblat
`8 and 10
`§ 103 Durward and Schneider
`
`
`
`II. ANALYSIS
`A. CLAIM INTERPRETATION
`We interpret claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[they] appear[].”1 37 C.F.R. § 42.100(b); see In re Cuozzo Speed Techs.,
`LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015). Under this standard, we
`presume a claim term carries its “ordinary and customary meaning.” In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Here, Petitioner proffers claim terms for construction. Pet. 9–12.
`Patent Owner responds to the asserted grounds using Petitioner’s proposed
`constructions. Prelim. Resp. 9–10. For purposes of this Decision, we
`determine that none of the claim terms requires an express construction to
`resolve the issues currently presented by the patentability challenges. See
`
`
`1 The parties agree that the broadest reasonable interpretation standard
`applies to the ’501 patent. See id.; Prelim. Resp. 9. Based on our review of
`the patent, however, the patent may have expired recently or may be
`expiring shortly. See Ex. 1001, [60], [63]. For expired patents, we apply the
`claim construction standard in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005). Our analysis in this Decision is not impacted by whether we
`apply the broadest reasonable interpretation or the Phillips standard. We,
`however, 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 and if necessary to address this issue, to file Provisional
`Application No. 60/020,296 as an exhibit.
`4
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that only claim terms that “are in controversy” need to be
`construed and “only to the extent necessary to resolve the controversy”). 
`B. OBVIOUSNESS OVER FUNKHOUSER AND SITRICK
`1. Funkhouser – Printed Publication
`Petitioner has shown sufficiently that Funkhouser qualifies as prior art
`under 35 U.S.C. § 102(a), because Funkhouser was a printed publication by
`April 12, 1995—before the earliest priority date of the ’501 patent,
`November 13, 1995. Pet. 4–5; Ex. 1001, [60]. In determining whether a
`reference is a “printed publication,” “the key inquiry is whether or not [the]
`reference has been made ‘publicly accessible.’” In re Klopfenstein, 380 F.3d
`1345, 1348 (Fed. Cir. 2004). A reference is “publicly accessible” if the
`reference “has been disseminated or otherwise made available to the extent
`that persons interested and ordinarily skilled in the subject matter . . .
`exercising reasonable diligence, can locate it and recognize and comprehend
`therefrom the essentials of the claimed invention without need of further
`research or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445
`F.3d 1374, 1378 (Fed. Cir. 2006) (citations omitted).
`Funkhouser (Ex. 1005) is an article that appears in a collection of
`articles, titled 1995 SYMPOSIUM ON INTERACTIVE 3D GRAPHICS (Ex. 1006)
`(“1995 Symposium Book”). Ex. 1005; Ex. 1006, cover, 1–3, 85; Ex. 1002
`¶ 41. The 1995 Symposium Book was compiled for a symposium sponsored
`by the Association for Computing Machinery (“ACM”), held on April 9–12,
`1995 (“1995 Symposium”). Ex. 1006, cover, 1–3, 85; Ex. 1002 ¶¶ 41–42.
`Dr. Zyda—who was the chairperson of the 1995 Symposium—testifies that
`the symposium gathered “many of the top researchers in the fields of virtual
`reality systems, computer graphics, and real-time interactive 3D.” Ex. 1002
`5
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`¶¶ 41–42; Ex. 1006, cover. According to Dr. Zyda, “[o]ver 250 participants
`attended the 1995 [S]ymposium and each was provided with a copy of the
`1995 [Symposium Book].” Ex. 1002 ¶ 42. In addition, Dr. Zyda testifies
`that copies of the book were available from the ACM. Id.; see Ex. 1006,
`copyright page (“A limited number of copies are available at the ACM
`member discount.”). The 1995 Symposium Book and Funkhouser feature a
`1995 copyright date and permit copying, generally without a fee and with “a
`fee and/or specific permission” if for “direct commercial advantage.”
`Ex. 1006, copyright page, 85; Ex. 1005, 85.
`In light of this evidence of Funkhouser’s distribution and accessibility,
`Petitioner has proffered adequate evidence that an interested ordinarily
`skilled artisan, “exercising reasonable diligence,” could have obtained
`Funkhouser no later than April 12, 1995—the last day of the 1995
`Symposium. See Mass. Inst. of Tech. v. Ab Fortia, 774 F.2d 1104, 1109
`(Fed. Cir. 1985) (holding paper to be a prior art printed publication where
`the paper was “disseminated without restriction to at least six persons” and
`“between 50 and 500” ordinary artisans were “informed of its contents by
`[an] oral presentation” before the critical date).
`Patent Owner “denies that Funkhouser was published” before the date
`of invention of the challenged claims of the ’501 patent, as it must have been
`to qualify as prior art under 35 U.S.C. § 102(a). Prelim. Resp. 15 & n.3.
`Patent Owner appears to take the position that the subject matter recited in
`the ’501 patent claims was conceived and reduced to practice before
`Funkhouser was published, arguing that by April 12, 1995, its Worlds Chat
`“was released to the public and [was] drawing . . . attention,” with a
`supporting citation to two articles. Id. (citing Ex. 2008, 2009). These
`articles, however, were published in May 1995 and June 1995—after
`6
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`April 12, 1995. Ex. 2008; Ex. 2009, 3. In addition, Patent Owner fails to
`make any showing regarding how these articles or Worlds Chat connect to
`the claim language. Thus, on the present record, there is insufficient
`evidence that the subject matter recited in the challenged claims of the ’501
`patent was invented before April 12, 1995.
`2. Funkhouser
`Funkhouser discloses a system, with a “client-server design,” that
`“supports real-time visual interaction between a large number of users in a
`shared 3D virtual environment.” Ex. 1005, 85. In the system, each user is
`represented “by an entity,” and each entity is managed by a client
`workstation. Id. at 85, 87. Servers manage the communication between
`clients. Id. at 87. Specifically, “[c]lients do not send messages directly to
`other clients, but instead send [messages] to servers[,] which forward them
`to other client and server workstations.” Id.
`“The key feature of [Funkhouser’s] system” is its “[s]erver-based
`message culling,” which is based on “precomputed” “[c]ell-to-cell
`visibility.” Id. at 85, 87. Before the simulation, the virtual environment “is
`partitioned into a spatial subdivision of cells” and “[a] visibility
`precomputation is performed in which the set of cells potentially visible to
`each cell is determined.” Id. at 87 (emphasis omitted). Figure 6 of
`Funkhouser is reproduced below.
`
`
`
`
`
`7
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`Figure 6 depicts a source cell, in a dark box, and shows, in stipple, the
`“[c]ell-to-cell visibility” of the source cell, i.e., the “set of cells reached by
`some sight-line from anywhere in the source cell.”2 Id. As shown in
`Figure 6, this cell-to-cell visibility “overestimate[s] . . . the visibility of any
`entity resident in the source cell.” Id.
`Then, during the simulation, servers use the precomputed cell-to-cell
`visibility to process update messages, using “cell visibility ‘look-ups,’”
`“rather than more exact real-time entity visibility computations.” Id. The
`servers “forward” update messages “only to servers and clients containing
`entities inside some cell visible to the one containing the updated entity.” Id.
`Clients, in turn, use the update messages to maintain and update
`surrogates for “remote entities visible to at least one entity local to the
`client.” Id. at 87–88; see id. at 92, 209. “Surrogates contain (often
`simplified) representations for the entity’s geometry and behavior.” Id.
`at 87. “When a client receives an update message for an entity managed by
`another client, it updates the geometric and behavioral models for the
`entity’s local surrogate.” Id. Between update messages, each client
`simulates the behavior of its surrogates. Id.
`In addition, “[c]lients execute the programs necessary to generate
`behavior for their entities” and “[t]hey may . . . include viewing capabilities
`in which the virtual environment is displayed on the client workstation
`screen from the point of view of one or more of its entities.” Id.; see id.
`at 85, 209.
`Figures 4 and 7 of Funkhouser are reproduced below.
`
`
`2 We have reproduced Figure 6 from Exhibit 1006, the 1995 Symposium
`Book. In Exhibit 1005, Funkhouser, the stipple is not visible.
`8
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`
`
`
`
`
`
`Figure 4
`Figure 7
`Figure 4 shows the visual interactions of entities A, B, C, and D in a virtual
`environment. Id. at 86, Fig. 4. Figure 7 depicts clients A, B, C, and D for
`these entities, as arranged in Figure 4, with arrows to show the “flow of
`update messages” and “small squares” to depict surrogates of these clients.
`Id. at 87, Fig. 7. As Figure 4 depicts, “only one visual interaction is possible
`– entity A can see entity B.” Id. at 86. Figure 7 shows that the forwarding
`of update messages to clients is not limited by the visibility of the entities
`managed by the clients. See id. at 86–88, Figs. 4, 7. As shown in Figure 7,
`“[i]f entity A is modified,” the servers forward the update message to
`client B; “[i]f entity B is modified,” the servers forward the update message
`to clients A and C; “[i]f entity C is modified,” the servers forward the update
`message to client B; and “[i]f entity D is modified,” server Z does not
`forward the message to any other server or client “because no other entity
`can potentially see entity D.” Id. at 88, Fig. 7 (emphases omitted).
`3. Sitrick
`Sitrick describes a multi-player video gaming system in which each
`
`user can “create” and “select[],” by input from a video, keyboard, joy stick,
`or switch, “a distinguishable visual image . . . by which that user is
`identified.” Ex. 1013, [57], 11:35–50. The user may create and select
`
`
`
`9
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`“color, size[,] or shape” as well as imagery, such as a digitized image of the
`user’s face, spacecraft, or race car. Id. at [57], 11:45–47.
`4. Claim 1
`a. “Determining” Step
`Turning to claim 1 of the ’501 patent, the parties dispute whether
`Funkhouser teaches or suggests “determining, by the client device, a
`displayable set of the other user avatars associated with the client device
`display” (“the ‘determining’ step”).” Ex. 1001, 19:34–36. Based on our
`review of the record, Petitioner has shown sufficiently that Funkhouser
`teaches this step. See Pet. 20–23; Prelim. Resp. 14–24.
`As Petitioner points out, in Funkhouser’s “[s]erver-based message
`culling,” servers cull update messages based on precomputed “[c]ell-to-cell
`visibility,” which determines the “set of cells potentially visible to each
`cell.” Ex. 1005, 87 (emphases added). Thus, servers forward an update
`message, received from another client, to a client if that client contains an
`entity “inside some cell visible to the [cell] containing the updated entity.”
`Id. (emphasis added). Because this culling is based on pre-computed
`visibility of the cell in which the entity resides—rather than more “exact
`real-time entity visibility computations”—it “conservatively over-
`estimate[s]” the “visibility of any entity resident in the . . . cell.” Id.
`(emphases added).
`As a result, as Petitioner argues and Dr. Zyda testifies, the servers
`may send update messages to clients for more entities than are “presently”
`visible to, and “within the . . . field of view” of, any entity managed by the
`client. Pet. 21; Ex. 1002 ¶ 93. For example, entity B in Figures 4 and 6 is
`not visible to entity C, because entity C is facing away from entity B.
`Ex. 1002 ¶ 93; Ex. 1005, 86, Figs. 4, 6. Thus, entity C will not “actually
`10
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`see” any change in position of entity B. Ex. 1002 ¶ 93. Nonetheless, when
`“entity B is modified,” the server “forward[s]” an “update message” to
`client C, because entity C is in a cell “potentially visible” to the cell where
`entity B is located. Ex. 1005, 87–88, Fig. 7 (emphasis omitted).
`The client—after receiving update messages that may relate to entities
`outside the field of view of any entity it manages—processes the messages
`for remote entities visible to any of the client’s entities and executes
`programs to display the environment from a particular entity’s point of view.
`Each client “maintain[s] surrogates” for “remote entities visible to at least
`one entity local to the client,” id. at 88, and uses the messages it receives to
`“update[] the geometric and behavioral models for the entity’s local
`surrogate,” id. at 87; see id. at 209. Funkhouser explains that its clients
`“execute . . . programs necessary to generate behavior for their entities” and
`that “[t]hey . . . may include viewing capabilities in which the virtual
`environment is displayed on the client workstation screen from the point of
`view of one or more of its entities.” Id. at 87; see id. at 85 (“[U]sers run an
`interactive interface program . . . [that] simulates the experience of
`immersion in a virtual environment by rendering images of the environment
`as perceived from the user’s . . . viewpoint.”). Funkhouser also includes
`Plate II, which shows an “environment rendered from [the] viewpoint of one
`entity,” omitting many other entities in the environment.3 Ex. 1005, 209.
`Dr. Zyda testifies that “after receiving the filtered positional updates from
`the server, the client performs its own calculations, including updating the
`
`3 We agree with Patent Owner that the Petition and Dr. Zyda’s testimony
`lack persuasive support regarding the precise number of remote entities for
`which the entity from whose viewpoint Plate II depicts the environment
`receives updates. See Pet. 21, 23; Ex. 1002 ¶ 96; Prelim. Resp. 17–18, 22.
`In this Decision, we do not rely on these numbers.
`11
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`surrogates of the remote entities, in order to determine which of the remote
`entities to display within the client’s field of view.” Ex. 1002 ¶ 96.
`Based on Petitioner’s arguments and Dr. Zyda’s testimony, we are
`persuaded that Petitioner has shown sufficiently that Funkhouser’s client
`determines which entities (“other user avatars”) to display, namely those
`entities that are within the field of view of a particular entity managed by the
`client, based on positional updates received from the servers, which may
`include the positions of entities outside the field of view of any entity
`managed by the client. Thus, Petitioner has shown adequately that
`Funkhouser teaches the client “determining” a “displayable set of the other
`user avatars associated with the client device display,” as claim 1 requires.
`On this record, we are not persuaded by Patent Owner’s arguments
`disputing Petitioner’s showing. Patent Owner asserts that Petitioner relies
`on an inherency theory because Funkhouser “fails to expressly disclose”
`“client-side ‘determining,’” including how or whether the client workstation
`determines which entities to display on the workstation. Prelim. Resp. 15–
`16, 18–19, 22–23. Patent Owner argues that this theory is deficient because
`Petitioner has not shown that Funkhouser necessarily discloses the client
`performing the “determining” step. Id. at 15–16, 22–24. Moreover, Patent
`Owner disputes Petitioner’s arguments relying on Funkhouser’s update
`messages to support the client performing the “determining” step, asserting
`that Funkhouser “does not disclose a client using an ‘update message’ for
`anything other than updating the ‘geometric and behavioral models for the
`entity’s local surrogate.’” Id. at 16–17. Patent Owner also contends that
`Funkhouser could “use the updated ‘geometric and behavioral models’ of
`the surrogate stored by the client, rather than the positions received from the
`server, to determine which entities to display. Id. at 24.
`12
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`
`Patent Owner’s arguments generally overlook that because this is an
`obviousness ground, Petitioner need not show that Funkhouser “expressly
`disclose[s]” the client performing the “determining” step and instead must
`establish only that Funkhouser teaches or suggests these actions. Id.
`at 17, 19; see generally id. at 14–24. Moreover, Patent Owner does not
`persuasively respond to or address the disclosures in Funkhouser to which
`Petitioner cites, particularly those referring to the clients executing programs
`and including viewing capabilities to display the environment from an
`entity’s point of view: “[c]lients execute the programs necessary to generate
`behavior for their entities” and “[t]hey . . . may include viewing capabilities
`in which the virtual environment is displayed on the client workstation
`screen from the point of view of one or more of its entities.” Ex. 1005, 87;
`see id. at 85; Pet. 20–23; Prelim. Resp. 14–24. As outlined above, we are
`persuaded that this discussion in Funkhouser—combined with Funkhouser’s
`disclosures that the servers send positional update messages to clients based
`on an “overestimate” of the visibility of the clients’ entities and that the
`clients process the messages to maintain and update their surrogates of
`remote entities—sufficiently teaches that the client in Funkhouser
`determines which remote entities to display to the user.
`
`In addition, we are not persuaded by Patent Owner’s speculation that
`Funkhouser could “use the ‘updated geometric and behavioral models’ of
`the surrogate stored by the client, rather than any ‘received positions,’” to
`determine entities to display. Prelim. Resp. 24. Patent Owner has not
`addressed whether the “determining” step requires that the recited “client
`device” perform the determining based on the “position information”
`“receiv[ed]” from the “server process.” Ex. 1001, 19:27–33. Having
`considered the language of claim 1, we are not persuaded that this is a
`13
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`requirement of the claim. Even if it were, Patent Owner’s assertions are
`unpersuasive. In Funkhouser, the update messages, which the server
`forwards to clients, include positional updates. See Ex. 1005, 87, 89. The
`clients use these messages to “update[] the geometric and behavioral
`models” for the surrogates they maintain. Id. at 87. Thus, even if
`Funkhouser’s clients use these models to determine which entities to display,
`as Patent Owner posits, this determining still would be from the positions
`received from the server.
`b. “Customizing” Step
`Petitioner argues the combination of Funkhouser and Sitrick teaches
`or suggests “customizing, using a processor of a client device, an avatar in
`response to input by the first user” (“the ‘customizing’ step”) of claim 1.
`Ex. 1001, 19:25–26; Pet. 17. Patent Owner has not disputed this assertion.
`We are persuaded that Sitrick’s disclosures, outlined above, regarding
`a user creating and selecting a customized image, by input from a video,
`keyboard, joy stick, or switch, teaches “customizing . . . an avatar in
`response to input by the user.” See Ex. 1013, [57], 11:35–47. In addition,
`Dr. Zyda testifies that Funkhouser’s “client workstations” contain a
`processor. See Ex. 1002 ¶ 81 (citing Ex. 1005, 87)). Thus, Petitioner has
`shown sufficiently that the combination of Funkhouser and Sitrick teaches or
`suggests the “customizing” step.
`
`In addition, Petitioner has proffered sufficient evidence that a person
`of ordinary skill in the art would have had reason to add Sitrick’s
`customization feature to Funkhouser’s system, with a reasonable expectation
`of success. See Pet. 30–31; Ex. 1002 ¶¶ 76–77. In particular, Dr. Zyda
`testifies that a skilled artisan would have recognized that Sitrick’s
`customization feature is “consumer-friendly” and would have added this
`14
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`feature to Funkhouser’s system to “increase system functionality and user
`enjoyment.” Ex. 1002 ¶¶ 76–77. According to Dr. Zyda, this addition to
`Funkhouser “would have been nothing more than a combination of known
`elements . . . according to known methods to yield predictable results.” Id.
`c. Remaining Limitations
`On this record, we are persuaded by the Petition’s argument and
`evidence regarding the additional limitations of claim 1, which includes a
`limitation-by-limitation analysis of where Funkhouser allegedly teaches or
`suggests each limitation. Pet. 13–24. Patent Owner has not disputed
`Petitioner’s showing regarding these limitations. See Prelim. Resp. 14–24.
`5. Claims 2–6, 12, 14, and 15
`For independent claims 12 and 14, the Petition addresses similarities
`and differences between these claims and independent claim 1. The Petition
`also features a claim chart, with citations to Funkhouser and Sitrick, the
`Petition’s analysis of claim 1, and Dr. Zyda’s testimony, to support
`Petitioner’s position that the claims would have been obvious in view of
`Funkhouser and Sitrick. Pet. 24–27. For dependent claims 2–6 and 15, the
`Petition features a limitation-by-limitation analysis addressing where
`Funkhouser and Sitrick allegedly teach or suggest each limitation. Id. at 27–
`30. In response, Patent Owner disputes that Funkhouser teaches the
`“determining” limitations of claims 12 and 14 based on the same arguments
`as the “determining” step of claim 1. Prelim. Resp. 14–24.
`
`Based on our review of the Petition and its supporting evidence, we
`are persuaded that the Petition sufficiently supports Petitioner’s position that
`Funkhouser and Sitrick teach or suggest each limitation of claims 2–6, 12,
`14, and 15. See Pet. 24–30. For claims 12 and 14, Petitioner has adduced
`adequate evidence that Funkhouser teaches the “determining” limitations of
`15
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`these claims for the reasons explained above for the corresponding
`“determining” step of claim 1. See supra § II.B.4.a.
`6. Conclusion
`Based on our review of the record and our analysis above, Petitioner
`
`has shown a reasonable likelihood that it would prevail in establishing that
`Funkhouser and Sitrick render obvious claims 1–6, 12, 14, and 15.
`C. OBVIOUSNESS OVER FUNKHOUSER, SITRICK, AND WEXELBLAT
`1. Wexelblat
`Wexelblat discusses an artificial reality in which users may “teleport
`
`instantly from one location to another.” Ex. 1020, 6:61–67. “For example,
`the user could move from his current location within a cyberspace to a
`library . . . and then teleport back to the original location.” Id. at 7:5–10.
`2. Discussion
`Petitioner asserts that claims 7 and 16 of the ’501 patent would have
`
`been obvious in view of Funkhouser, Sitrick, and Wexelblat. Pet. 32–33.
`Patent Owner has not contested this assertion, beyond disputing that claim 1
`would have been obvious over Funkhouser and Sitrick.
`Claims 7 and 16 depend from claims 1 and 14, respectively, and
`include limitations regarding two (or more) virtual rooms and “teleporting”
`an avatar from the first room to the second room. Ex. 1001, 19:61–64,
`20:59–63. On this record, we are persuaded that both Funkhouser and
`Wexelblat teach or suggest two or more virtual rooms, and that Wexelblat
`teaches or suggests teleporting an avatar between rooms, as claims 7 and 16
`require. In particular, Funkhouser discloses “separate regions of the virtual
`environment” and “partition[ing]” a virtual environment “into a spatial
`subdivision of cells.” Ex. 1005, 87, 91 (emphasis omitted); Ex. 1002 ¶ 135;
`
`
`
`16
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`Pet. 19. Wexelblat refers to teleporting a user from “one location to
`another,” e.g., from a “current location” to “a library.” Ex. 1020, 6:61–7:10.
`We also are persuaded by Dr. Zyda’s testimony that a person of
`ordinary skill would have incorporated Wexelblat’s teleportation feature into
`Funkhouser’s system, modified to include the customization feature of
`Sitrick as explained supra in § II.B.4.b, to allow users to navigate the virtual
`environment with greater ease. Ex. 1002 ¶ 138. In addition, according to
`Dr. Zyda, adding Wexelblat’s teleportation feature to Funkhouser “would
`have been nothing more than the predictable use of known elements
`according to their established functions.” Id.
`
`Thus, Petitioner has shown a reasonable likelihood that it would
`prevail in establishing that claims 7 and 16 would have been obvious in view
`of Funkhouser, Sitrick, and Wexelblat.
`
`D. OBVIOUSNESS OVER FUNKHOUSER, SITRICK, AND FUNKHOUSER ’93
`1. Funkhouser ’93 – Printed Publication
`Petitioner has shown adequately that Funkhouser ’93 was a printed
`publication by August 6, 1993 and, thus, constitutes § 102(b) prior art to the
`’501 patent. See Pet. 6. Funkhouser ’93 (Ex. 1017) is an article included in
`a collection of presentation materials (Ex. 1018, “1993 Conference Book”),
`compiled for a conference sponsored by the ACM and held on August 1–6,
`1993. Ex. 1018, cover, 1–8, 247; Ex. 1002 ¶ 48. Dr. Zyda testifies that all
`conference participants, including Dr. Zyda, received a copy of the 1993
`Conference Book. Ex. 1002 ¶ 48. Funkhouser ’93 and the 1993 Conference
`Book feature a 1993 copyright date and permit copying, generally without a
`fee and with “a fee and/or specific permission” if for “direct commercial
`advantage.” Ex. 1018, 2, 247; Ex. 1017, 247. The 1993 Conference Book
`also provides ordering information for ACM and non-ACM members.
`17
`
`
`
`

`
`IPR2015-01319
`Patent 8,082,501 B2
`Ex. 1018, 2. We are persuaded that this evidence sufficiently shows that an
`interested ordinarily skilled artisan, exercising reasonable diligence, could
`have obtained Funkhouser ’93 by August 6, 1993—the last day of the
`conference. See Mass. Inst. of Tech., 774 F.2d at 1109.
`2. Funkhouser ’93
`Funkhouser ’93 discloses an optimization algorithm that produces the
`
`“‘best’ image possible” within a “user-specified” target frame rate.
`Ex. 1017, 247, 251. The algorithm “choos[es] a set of object tuples to
`render each frame” by “add[ing] object tuples . . . in descending order of”
`value (benefit/cost) “until the maximum cost is completely claimed.” Id. at
`250–51. Figure 11 features images of a library rendered at different target
`frame rates, with the benefit heuristic limited to object size. Id. at 253–54,
`Fig. 11. The image rendered at the lowest target frame rate, Figure 11c,
`shows the “omission of books on bookshelves.” Id.
`3. Discussion
`Claims 8 and 10 of the ’501 patent depend from claim 1. Claim 8
`
`recites the step of “monitoring an orientation of the first user avatar” and
`specifies that the “determining” step of claim 1 “comprises filtering the other
`user avatars based on at least one variable other than (1) positions of the
`other user avatars, and (2) orientation of the first user avatar.” Ex. 1001,
`19:65–20:4. Claim 10 recites that the “determining” step “comprises
`fi