Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 1 of 37
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`Civil Action No. 1:12-CV-10576-DJC
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§§§§§§
`
`WORLDS, INC.,
`v.
`ACTIVISION BLIZZARD, INC., BLIZZARD
`ENTERTAINMENT, INC., and ACTIVISION
`PUBLISHING, INC.,
`
`Defendants.
`
`WORLDS’ OPENING CLAIM CONSTRUCTION BRIEF
`
`2658941v9/013049
`
`1
`
`MS 1009
`
`

`

`
`
`
`
`I.
`
`II.
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`III.
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`IV.
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 2 of 37
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`TABLE OF CONTENTS
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`Page
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`Introduction ..........................................................................................................................1
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`Legal Principles of Claim Construction ...............................................................................1
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`Background ..........................................................................................................................4
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`Discussion of Disputed Terms .............................................................................................5
`
`A.
`
`B.
`
`C.
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`D.
`
`E.
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`F.
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`G.
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`H.
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`“determining, from the received positions, [a/the] set of the other
`users’ avatars that are to be displayed” ....................................................................6
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`“position of less than all of the other users’ avatars” .............................................12
`
`“programmed to limit the number of remote user avatars shown on the
`graphic display” .....................................................................................................15
`
`“client process” / “server process” .........................................................................18
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`“condition” / “participant condition” .....................................................................20
`
`“avatar” ..................................................................................................................23
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`“third user perspective” ..........................................................................................24
`
`“switch between a rendering in which all of a perspective view of a
`local user avatar of the local user is displayed and a rendering in which
`less than all of the perspective view is displayed” .................................................26
`
`I.
`
`“synchronously disseminating” .............................................................................29
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`V.
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`Conclusion .........................................................................................................................31
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`
`ii
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`2
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 3 of 37
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`TABLE OF AUTHORITIES
`
`
`
`
`
`
`Cases
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d
`(quoting Phillips, 415 F.3d at 1315) ................................................................................... 8
`
`Boston Scientific Corp. v. Micrus Corp.,
`556 F. Supp. 2d 1045, 1054 (N.D. Cal. 2012) .................................................................... 8
`
`Cybor Corp. v. FAS Techs., Inc.,
`138 F.3d 1448 (Fed. Cir. 1998)........................................................................................... 1
`
`E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,
`849 F.2d 1430, 1433 (Fed. Cir. 1988)........................................................................... 3, 11
`
`Edward Lifesciences LLC v. Cook Inc.,
`582 F.3d 1322, 1329 (Fed. Cir. 2009)................................................................................. 6
`
`Energizer Holdings v. International Trade Com’n,
`435 F.3d 1366 (Fed. Cir. 2006)......................................................................................... 21
`
`Exxon Research & Eng’g Co. v. United States,
`265 F.3d 1371 (Fed. Cir. 2001)................................................................................... 20, 21
`
`Finisar Corp. v. DirecTV Group, Inc.,
`523 F.3d 1323 (Fed. Cir. 2008)........................................................................................... 2
`
`Honeywell Int’l, Inc. v. Int’l Trade Comm’n,
`341 F.3d 1332 (Fed. Cir. 2003)......................................................................................... 21
`
`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111 (Fed. Cir. 2004)........................................................................................... 2
`
`Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
`887 F.2d 1050 (Fed. Cir. 1989)........................................................................................... 2
`
`Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp.,
`309 F.3d 1365, 1371 (Fed. Cir. 2002)............................................................................... 10
`
`Markman v. Westview Instruments, Inc.,
`52 F.3d 967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) ........................................ 1, 2, 21
`
`Omega Eng’g, Inc, v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)..................................................................................... 3, 23
`
`
`
`iii
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`3
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`

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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 4 of 37
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`
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).................................................................................. passim
`
`Renishaw PLC v. Marposs Societa’ per Azioni,
`158 F.3d 1243 (Fed. Cir. 1998)........................................................................................... 2
`
`Robotic Vision Sys., Inc. v. View Eng’g, Inc.,
`189 F.3d 1370, 1376 (Fed. Cir. 1999 .................................................................................. 9
`
`SanDisk Corp. v. Memorex Prods., Inc.,
`415 F.3d 1278 (Fed. Cir. 2005)........................................................................................... 3
`
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.,
`242 F.3d 1337 (Fed. Cir. 2001)........................................................................................... 2
`
`Southwall Techs., Inc. v. Cardinal IG Co.,
`54 F.3d 1570, 1579 (Fed. Cir. 1995)................................................................................... 8
`
`Union Pac. Res. Co. v. Chesapeake Energy Corp.,
`236 F.3d 684 (Fed. Cir. 2001)........................................................................................... 20
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)....................................................................................... 2, 24
`
`
`
`iv
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`4
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 5 of 37
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`
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`I.
`
`Introduction
`
`Plaintiff Worlds, Inc. (“Worlds” or “Plaintiff”) asserts that Defendants Activision
`
`Blizzard, Inc.; Blizzard Entertainment, Inc.; and Activision Publishing, Inc. (collectively,
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`“Defendants”) infringe certain claims of U.S. Patent Nos. 7,181,690 (the “’690 Patent”);
`
`7,493,558 (the “’558 Patent”); 7,945,856 (the “’856 Patent”); 8,082,501 (the “’501 Patent”); and
`
`8,145,998 (the “’998 Patent”) (collectively, the “Worlds Patents”).1
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`Defendants make, use, sell, and offer for sale several infringing video games in the highly
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`successful Call of Duty and World of Warcraft franchises. In making their proposed claim
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`constructions, Defendants attempt to avoid liability for their infringement by proposing
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`constructions unsupported by the intrinsic evidence. Defendants have also proposed to
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`improperly import limitations from the specification of the Worlds Patents into the asserted
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`claims. As explained below, the Court should adopt Worlds’ proposed claim constructions and
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`reject Defendants’.
`
`II.
`
`Legal Principles of Claim Construction
`
`A determination of patent infringement involves two steps. First, the patent claims are
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`construed. Second, the claims are compared to the allegedly infringing device. Cybor Corp. v.
`
`FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed. Cir. 1998) (en banc). Claim construction is a legal
`
`question for the courts. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
`
`1995) (en banc), aff’d, 517 U.S. 370 (1996). The Federal Circuit reexamined the legal principles
`
`of claim construction in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), where
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`it expressly reaffirmed the principles of claim construction set forth in Markman, Vitronics Corp.
`
`
`1 For the Court’s reference, the Worlds Patents are attached as Exhibits B through F. However, for the sake of
`clarity, in the body of this document the patents are cited according to their patent number rather than to their exhibit
`number.
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 6 of 37
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`
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`v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), and Innova/Pure Water, Inc. v. Safari
`
`Water Filtration Sys., Inc., 381 F.3d 1111 (Fed. Cir. 2004).
`
`Under Phillips, a claim term should be given “the meaning it would have to a person of
`
`ordinary skill in the art at the time of the invention.” Phillips, 415 F.3d at 1313. The claims
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`themselves provide substantial guidance as to the meaning of the terms. Id. at 1314. Indeed,
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`“the claim construction inquiry . . . begins and ends in all cases with the actual words of the
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`claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).
`
`“Generally, [the Federal Circuit] gives claim terms their ordinary and customary meanings,
`
`according to the customary understanding of an artisan of ordinary skill at the time of the
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`invention.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008). The
`
`Federal Circuit has repeatedly held “that courts cannot alter what the patentee has chosen to
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`claim as his invention, that limitations appearing in the specification will not be read into claims,
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`and that interpreting what is meant by a word in a claim is not to be confused with adding an
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`extraneous limitation appearing in the specification, which is improper.” Intervet Am., Inc. v.
`
`Kee-Vet Labs., Inc., 887 F.2d 1050, 1053 (Fed. Cir. 1989) (quotation marks omitted).
`
`The claims, however, must be read in light of the specification, of which they are part.
`
`Phillips, 415 F.3d at 1315. As the Federal Circuit has often stated, the specification “is always
`
`highly relevant to the claim construction analysis” and “is the single best guide to the meaning of
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`a disputed term.” Id. (citing Markman and Vitronics). Despite the weight given to the
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`specification, care should be taken not to import limitations from the specification into the
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`claims. Id. at 1319–20; see also SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., 242
`
`F.3d 1337, 1340 (Fed. Cir. 2001) (describing the importation of a limitation from the written
`
`description into the claims as “one of the cardinal sins of patent law”). Indeed, it is entirely
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`2
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`6
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 7 of 37
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`
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`“improper” to import “extraneous limitation[s] appearing in the specification.” E.I. du Pont de
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`Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An
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`“extraneous” limitation is “a limitation read into a claim from the specification wholly apart from
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`any need to interpret what the patentee meant by particular words or phrases in the claim.” Id.
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`The Court may also consider the patent’s prosecution history. Phillips, 415 F.3d at 1317.
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`Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent and “whether the inventor limited the invention in the course of
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`prosecution, making the claim scope narrower than it would otherwise be.” Id. However, the
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`prosecution history is accorded far less weight than the specification as a guide to understanding
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`claim terms because “it often lacks the clarity of the specification and thus is less useful for
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`claim construction purposes.” Id. Thus, while “clear and unmistakable prosecution arguments
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`limiting the meaning of a claim term” may be used to limit a claim term’s ordinary meaning, an
`
`ambiguous statement has no such effect. SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278,
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`1286 (Fed. Cir. 2005).
`
`“There is no ‘clear and unmistakable’ disclaimer if a prosecution argument is subject to
`
`more than one reasonable interpretation, one of which is consistent with a proffered meaning of
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`the disputed term.” Id. at 1287. “[T]he alleged disavowing statements [must] be both so clear as
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`to show reasonable clarity and deliberateness and so unmistakable as to be unambiguous
`
`evidence of disclaimer.” Omega Eng’g, Inc., v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir.
`
`2003) (citations omitted).
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`Finally, extrinsic evidence can shed useful light on the relevant art but is “unlikely to
`
`result in a reliable interpretation of patent claim scope unless considered in the context of the
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`3
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`7
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 8 of 37
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`intrinsic evidence.” Id. at 1318–19. Expert and inventor testimony, dictionaries, and learned
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`treatises are all considered extrinsic evidence. Id. at 1317.
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`III. Background
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`In 1995, four Worlds employees — Stephen Adler, S. Mitra Ardon, Judith Challinger,
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`and David Leahy (the “named inventors”) — discovered several novel inventions that solved
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`crucial problems in the area of software development. They arrived at these solutions while
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`developing Worlds’ groundbreaking software platforms, which enabled remote users to interact
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`in graphically rich, three-dimensional virtual environments. The Worlds Patents reflect the novel
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`inventions of those Worlds employees.
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` The named inventors initially set forth their inventions in a provisional patent
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`application filed on November 13, 1995. Worlds’ first patent, U.S. Patent No. 6,219,045 (the
`
`“’045 Patent”), issued on April 17, 2001. Each of the Worlds Patents, as identified above, is a
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`continuation of the ’045 Patent. As such, they all share a common specification. The ’690
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`Patent issued on February 20, 2007; the ’558 Patent issued on February 17, 2009; the ’856 Patent
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`issued on May 17, 2011; the ’501 Patent issued on December 20, 2011; and the ’998 Patent
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`issued on March 27, 2012. Each of these patents is entitled to a November 13, 1995 priority
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`date.
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`The claims of the Worlds Patents generally describe a system and method for
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`implementing a highly scalable, client-server architecture that facilitates the efficient interaction
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`of users in a three-dimensional, graphical, multi-user, interactive virtual environment. (See, e.g.,
`
`’690 Patent at 1:24–42.) For example, the Worlds Patents disclose an invention whereby a client
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`device and associated server can efficiently filter the number of visible avatars so as to preserve
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`bandwidth, optimize processing capabilities, and enhance the user experience. (See, e.g., id. at
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`19:32–20:2 (Claims 1–5).) The disclosed client-server system is highly relevant to multi-user
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`4
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`8
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 9 of 37
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`video games, where the positions and actions of each user must be communicated to other users
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`to inform them of the state changes (e.g., position, actions, etc.) of the other user’s avatars. (See,
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`e.g., id. 1:48–55.) The Worlds Patents also disclose other inventions important to the
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`development of multi-user video games. For example, the patents describe how software
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`programs can facilitate the creation and customization of avatars, teleportation of users,
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`switching of views, and other key features that enhance user experiences. (See, e.g., ’501 Patent
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`at 19:25–26 (Claim 1), 19:61–64 (Claim 7), 20:20–21 (Claim 12); ’998 Patent at 19:25–30
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`(Claim 1).)
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`IV. Discussion of Disputed Terms
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`Worlds’ constructions are clear and well-supported by the Worlds Patents and the
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`relevant intrinsic evidence.2 By contrast, Defendants’ constructions are unwieldy and laden with
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`extraneous limitations not required or even suggested by the language of the claims. As a result,
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`the Court should adopt Worlds’ proposed constructions.
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`2 A chart of the disputed terms and the parties’ proposed constructions is attached as Exhibit A.
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 10 of 37
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`A.
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`“determining, from the received positions, [a/the] set of the other users’
`avatars that are to be displayed” 3
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`Claim Term (Claim)
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`“determining, from the
`received positions, [a/the] set
`of the other users’ avatars that
`are to be displayed” (’690
`Claims 1–5, 11–14, 19)
`
`Plaintiff’s Proposed
`Construction
`No construction needed.
`
`
`Defendants’ Proposed
`Construction
`“selecting [a/the] set
`consisting of up to a set
`maximum number of the other
`users’ avatars to be displayed
`based on the received
`positions”
`
`
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`The parties agree that the term “avatar” should be construed, as set forth in section IV.F
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`below. However, the other words in this term are so common and simple that jurors will have no
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`difficulty understanding them. See Phillips, 415 F.3d at 1314. Thus, this disputed phrase
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`contains no technical terms requiring separate construction. Defendants implicitly acknowledge
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`this, as their proposed construction simply reuses the words they seek to define. Defendants’
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`proposed construction is improperly restrictive, lacks any evidentiary support, and should be
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`rejected.
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`
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`There is a “heavy presumption” that claim terms carry their ordinary and customary
`
`meaning as a person of ordinary skill in the art would understand them. Epistar Corp. v. Int’l
`
`Trade Comm’n, 566 F.3d 1321, 1334 (Fed. Cir. 2009). A party seeking to overcome that heavy
`
`presumption must show that the patentee “clearly” relinquished the claim’s scope or acted as his
`
`or her own lexicographer. Id.; see also Edward Lifesciences LLC v. Cook Inc., 582 F.3d 1322,
`
`1329 (Fed. Cir. 2009) (“[W]e will adopt a definition that is different from the ordinary meaning
`
`when the patentee acted as his own lexicographer and clearly set forth a definition of the
`
`
`3 In their Proposed Constructions for Claim Terms to Be Construed, served on March 29, 2013, Defendants
`proposed constructions for a lengthy series of claim terms functionally identical to this disputed claim term. On
`April 17, 2013, to avoid having to discuss each disputed term individually, the parties agreed to use “determining,
`from the received positions, [a/the] set of the other users’ avatars that are to be displayed” as a representative term
`for purposes of claim construction briefing. Therefore, the parties agree that the Court’s construction of this term
`will affect the construction of other claims terms in the Worlds Patents. A complete list of the terms that will be
`impacted by the construction of this exemplar term is included in Exhibit A.
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`6
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`10
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 11 of 37
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`
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`disputed claim term in either the specification or the prosecution history.”). Defendants cannot
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`overcome this heavy presumption. The patentees did not assign a particular meaning to the
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`phrase “position of less than all of the other users’ avatars,” nor did they distinguish the term
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`from its ordinary meaning.
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`To begin, rather than clarifying ambiguous claim language (which is the point of claim
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`construction), Defendants materially alter the meaning of the claim in two ways. First,
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`Defendants replace the word “determining” with the word “selecting.” Second, defendants
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`inelegantly inject the limiting phrase “a set maximum number” into the claim. Defendants’
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`proposed construction must be rejected for the following reasons.
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`First, Defendants improperly urge the Court to replace the claim word “determining”
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`with their word “selecting.” The specification’s use of the word “selecting” makes clear that the
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`patentees never intended to define that term. Worlds anticipates that Defendants will focus on
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`one description of one embodiment described in the specification and make the flimsy argument
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`that, because the client can “select N’ avatars from the N avatars provided by the server,”
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`“determining” must mean “selecting.” (’690 Patent at 6:7–8.) Defendants are wrong, and the
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`common specification itself debunks this argument.
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`Indeed, reading from the beginning of the “selecting” sentence tells us that this
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`embodiment only “selects” in the specific instance “[w]here N’ is less than N.” (Id. at 6:6–7.)
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`Thus, when N’ is equal to or greater than N, no selection is needed; there’s no need to “pick out”
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`avatars if all are going to be displayed. See Ex. N at 1111 (Webster’s College Dictionary
`
`(Random House, 2001) (definition of “select”)). Put simply, Defendants’ construction requires
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`selection in every instance; the preferred embodiment, however, requires selection in only some
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`instances. (See e.g., ’690 Patent at 5:66–67 (“[U]ser A might have a way to filter out avatars on
`
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`7
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`11
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`

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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 12 of 37
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`
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`other variables in addition to proximity, such as user ID.”)) Accordingly, Defendants’
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`construction makes no sense in the full context of the specification. As a matter of law, a
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`construction, like Defendants’ proposal, that reads out part of a preferred embodiment “is rarely,
`
`if ever, correct and would require highly persuasive evidentiary support.” Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Defendants do not and cannot provide
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`any evidentiary support — much less the highly persuasive evidentiary support that is required
`
`— to rebut this presumption. Defendants’ construction should be rejected.
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`Defendants’ next improper proposal is to insert a “set maximum number” limitation into
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`this term definition. Defendants’ proposed construction would put the disputed claims directly at
`
`odds with several dependent claims, such as claim 4 of the ’690 Patent, that do expressly
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`contemplate a maximum-number limitation. Under the doctrine of claim differentiation, “the
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`presence of a dependent claim that adds a particular limitation gives rise to a presumption that
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`the limitation in question is not present in the independent claim.” Aspex Eyewear, Inc. v.
`
`Marchon Eyewear, Inc., 672 F.3d (quoting Phillips, 415 F.3d at 1315). Furthermore, claim
`
`terms must be interpreted consistently. Phillips, 415 F.3d at 1314; see also Southwall Techs.,
`
`Inc. v. Cardinal IG Co., 54 F.3d 1570, 1579 (Fed. Cir. 1995) (“The fact that we must look to
`
`other claims using the same claim term when interpreting a term in an asserted claim mandates
`
`that the term be interpreted consistently.”); Boston Scientific Corp. v. Micrus Corp., 556 F. Supp.
`
`2d 1045, 1054 (N.D. Cal. 2012) (citing Southwall for same).
`
`Here, if defendants’ proposed construction of claim 1 is accepted, then to practice claim 1
`
`of the ‘690 patent, a client process would have to “select” a “set consisting of up to a set
`
`maximum number of the other users’ avatars to be displayed based on the received positions.”
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`8
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`12
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 13 of 37
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`(Emphasis added.) But claim 4 of the ’690 patent, which is dependent on claim 1 of that patent,
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`already includes the maximum-number limitation that defendants seek to import into claim 1(b):
`
`4. The method of claim 1, wherein step (1b) comprises
`(b)(1) determining from the received positions an actual number of the other
`users’ avatars;
`(b)(2) determining a maximum number of the other users’ avatars to be
`displayed; and
`(b)(3) comparing the actual number to the maximum number to determine
`which of the other users’ avatars are to be displayed where in steps (b)(1)–
`(b)(3) are performed by the client process associated with the first user.
`
`
`(’690 Patent at 19:55–64 (Claim 4) (emphasis added).) Numerous other dependent claims
`
`incorporate a maximum number limitation on the number of avatars as well. (See, e.g., ’690
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`Patent at 20:25–33 (Claim 8), 21:28–36 (Claim 13), 22:14–23 (Claim 16).) However, such a
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`limitation is expressly omitted from the associated independent claims. That differentiation is
`
`significant — and eliminating this differentiation would improperly alter the meaning of the
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`carefully drafted claims.
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`Further, the above-referenced dependent claims show that, when the patentees wanted to
`
`include a maximum-number limitation in a claim, they were well aware of how to do so. They
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`certainly would not have inserted that limitation by implication only. Ultimately, the Court
`
`should recognize that awkwardly shoehorning a maximum-number limitation into claim 1 (and
`
`the other similar claims raised by Defendants) when it already exists in claim 4 (and several
`
`other dependent claims) would create redundancy and run afoul of the principle that independent
`
`claims must be broader than (and distinguishable from) their dependent claims. See Robotic
`
`Vision Sys., Inc. v. View Eng’g, Inc., 189 F.3d 1370, 1376 (Fed. Cir. 1999 (“View’s construction
`
`incorrectly attributes the requirement of separately fabricated index pads to an independent claim
`
`when it is clear that a claim that depends from that independent claim does not incorporate that
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`9
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`13
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 14 of 37
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`limitation.”); see also Inverness Med. Switzerland GmbH v. Princeton Biomeditech Corp., 309
`
`F.3d 1365, 1371 (Fed. Cir. 2002).
`
`Further proof of the inappropriateness of Defendants’ proposed construction is provided
`
`by the fact that the embodiment in the common Worlds specification does not discuss the
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`concept of a “maximum number” of avatars in any sense that is directly relevant to the disputed
`
`term. That embodiment uses the term “maximum number” in two contexts. First, the
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`embodiment describes a server that “maintains a variable, N, which sets the maximum number of
`
`other avatars A will see. Client also maintains a variable, N’, which might be less than N, which
`
`indicates the maximum number of avatars client wants to see and/or hear.” (’690 Patent at 5:36–
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`39.) In focusing myopically on the “maximum number” language, Defendants lose sight of the
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`fact that, by definition, N and N’ are variables. That is, N and N’ are “named storage locations
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`capable of containing a certain type of data that can be modified during program execution”;
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`they are not fixed, hardcoded numerical values. Ex. L at 408 (Microsoft Press Computer
`
`Dictionary (2d ed., 1994)). Adding a “set maximum number” limitation into the construction, as
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`Defendants propose to do, would exclude the patentee’s own preferred embodiment. The
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`embodiment allows a variable, multi-criteria approach to filtering avatars; it does not require an
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`overly constrained, “set maximum number” approach to filtering.
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`The common specification of the Worlds Patents also uses the term “maximum number”
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`in the context of disclosing that the “maximum number of avatars, N, is determined by server,
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`but might also be determined for each client.” (’690 Patent at 13:27–29.) In other words, the
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`common specification explicitly discloses that a “maximum number of avatars” need not be
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`fixed, but rather can be a dynamic, adjustable variable. This specification provision offers no
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`help to Defendants. Defendants’ construction simply cuts against the plain disclosures in the
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`14
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 15 of 37
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`specification, adding unsupported limitations the patentees specifically addressed with dependent
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`claims.
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`Moreover, at most, when the common Worlds specification discusses the concept of a
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`“maximum number,” it does so only to provide simple examples of how crowd control may be
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`accomplished. There are of course other methods, including (among others), proximity, user ID,
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`orientation, strain on computing resources, local user selection, or any other participant
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`condition. (See, e.g., ’998 Patent at 20:17–41 (Claims 11–15); ’690 Patent at 5:66–67 (“[U]ser A
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`might have to find a way to filter out avatars on other variables in addition to proximity, such as
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`user ID.”).)
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`Ultimately, absent “highly persuasive evidentiary support,” which Defendants do not and
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`cannot offer, the Court should reject Defendant’s improper attempt to import “extraneous
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`limitation[s] appearing in the specification.” E.I. du Pont de Nemours & Co. v. Phillips
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`Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (explaining that “extraneous” refers to “a
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`limitation read into a claim from the specification wholly apart from any need to interpret what
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`the patentee meant by particular words or phrases in the claim”). Defendants’ “maximum
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`number” limitation is a textbook extraneous limitation.
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`In sum, there no support for including Defendants’ proposed limitations in the
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`construction of this term. The claim term, which was written in plain English, should not be
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`construed.
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`11
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`15
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 16 of 37
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`B.
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`“position of less than all of the other users’ avatars”4
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`Claim Term (Claim)
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`“position of less than all of the
`other users’ avatars” (’690
`claims 1–5)
`
`Plaintiff’s Proposed
`Construction
`No construction needed.
`
`
`Defendants’ Proposed
`Construction
`“positions for up to a set
`maximum number of the other
`users’ avatars, which is less
`than the total number of other
`users’ avatars”
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`
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`Again, aside from the term “avatar” (construed separately), the words in this disputed
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`term are common and easy to understand; in fact, it is impossible to derive a simpler, more
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`straightforward version of the claim. See Phillips, 415 F.3d at 1314. As explained, there is a
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`“heavy presumption” that claim terms carry their ordinary and customary meaning as a person of
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`ordinary skill in the art would understand them. Epistar Corp., 566 F.3d at 1334. Defendants
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`cannot overcome this presumption, as nothing in the intrinsic evidence even hints that the
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`“position of less than all of the other users” has any meaning other than its everyday meaning.
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`Accordingly, the Court should reject Defendants’ second attempt to import a “maximum
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`number” limitation into a clearly worded claim term. This term needs no construction.
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`Defendants again improperly seek to import an entirely new limitation — “up to a set
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`maximum number” — that is untethered to (and in many ways, expressly contrary to) language
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`from the patents’ claims, specifications, or prosecution histories. There is not a shred of intrinsic
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`evidence showing that that the patentees sought to define “less than all” in terms of a “set
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`maximum number . . . , which is less than the total number.” In fact, the intrinsic evidence
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`forecloses the insertion of any such limitation.
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`
`4 In their Proposed Constructions for Claim Terms to Be Construed, served on March 29, 2013, Defendants
`proposed constructions for a lengthy series of claim terms functionally identical to this disputed claim term. On
`April 17, 2013, to avoid having to discuss each disputed term individually, the parties agreed to use “position of less
`than all of the other users’ avatars” as a representative term for purposes of claim construction briefing. Therefore,
`the parties agree that the Court’s construction of this term will affect the construction of various claims in the
`Worlds Patents. A complete list of the terms that will be impacted by the construction of this exemplar term is
`included in Exhibit A.
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`16
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`Case 1:12-cv-10576-DJC Document 62 Filed 04/22/13 Page 17 of 37
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`Whereas the term at issue plainly includes only one limitation — namely, that the client
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`receive the positions of “less than all” of the total number of avatars in a virtual space —
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`defendants’ proposed construction includes two discrete limitations, requiring not only (1) that
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`the client receive position data for “less than the total number of other users’ avatars” but also (2)
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`that the client receive position data for fewer than an undefined “set maximum number” of
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`avatars. Worlds can only speculate as to the source of this second limitation. The patents’
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`shared specification does not suggest that “less than all”