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`Plaintiff
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`Defendants.
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`_________________________________________
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`_________________________________________
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`WORLDS, INC.,
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`
`
`
`
`Civil Action No. 12-10576-DJC
`
`v.
`
`
`ACTIVISION BLIZZARD, INC.,
`BLIZZARD ENTERTAINMENT, INC. and
`ACTIVISION PUBLISHING, INC.,
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`
`
`
`
`CASPER, J.
`
`I.
`
`Introduction
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`MEMORANDUM AND ORDER
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`April 30, 2021
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`
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`Plaintiff Worlds, Inc., (“Worlds”) alleges that Defendants Activision Blizzard, Inc.,
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`Blizzard Entertainment, Inc. and Activision Publishing, Inc. (collectively, “Activision”) infringe
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`United States Patents Nos. 7,181,690 (“‘690”), 7,493,558 (“‘558”), 7,945,856 (“‘856”), 8,082,501
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`(“‘501”) and 8,145,998 (“‘998”) (collectively, the “Patents-In-Suit”). Activision has moved for
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`summary judgment seeking a ruling that the remaining claims of the Patents-In-Suit at issue are
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`invalid as a matter of law. D. 272. For the following reasons, the Court ALLOWS Activision’s
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`motion.
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`II.
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`Factual Background
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`The following material facts are based upon Activision’s Statement of Material Facts, D.
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`177, Worlds’ Statement of Material Facts, D. 185, and/or the documents referenced in same and
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`are undisputed.
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`
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`
`
`1
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`Patent Owner's Exhibit 2100
`Page 1 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 2 of 19
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`A.
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`Patents-In-Suit
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`At this juncture, Worlds presses that Activision infringes the following twenty-one claims
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`of the Patents-In-Suit: ‘690 claims 4, 8, 13 and 16; ‘558 claims 5 and 7; ‘856 claim 1; ‘501 claims
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`1-8, 10, 12 and 14-16; and ‘998 claim 18. D. 269 at 2; D. 283 at 10. As Worlds has explained,
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`the Patents-In-Suit resolve bandwidth issues with multiplayer games through “multi-criteria
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`filtering of avatar position and state information, but at the client side and the server side,” i.e.,
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`“crowd control.” D. 183 at 5. The remaining claims at issue achieve crowd control by some form
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`of filtering of information, D. 183 at 8, but in slightly different ways: i.e., by “fewer than all” in
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`the ‘856 patent; a “maximum number” in the ‘690 patent and ‘558 patent; and by “condition” in
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`the ‘501 patent and the ‘998 patent. D. 273 at 6.
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`U.S. Patent No. 7,181,690 (“the’690 patent”)
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`
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`The ‘690 patent, “a system and method for enabling users to interact in a virtual space,”
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`was filed on August 3, 2000 and issued on February 20, 2007. D. 275 ¶ 1; D. 274-1 at 2. It
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`provides a “highly scalable architecture for a three-dimensional, graphical, multi-user, interactive
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`virtual world system.” Id. So that a user’s view “can be updated to reflect the motion of the remote
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`user’s avatars, motion, information is transmitted to a central server process which provides
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`positions updates to client processes for neighbors of the user at that client process.” Id. “The
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`client process also uses an environment database to determine which background objects to render
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`as well as to limit the movement of the user’s avatar.” Id.
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`Claims 4, 8, 13 and 16 of the ‘690 patent are currently at issue. Claim 4 (incorporating
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`the method of claim 1 which is a “method for enabling a first user to interact with other users in a
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`virtual space”) involves determining the maximum number of the other users’ avatars to be
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`displayed by comparing the actual number to the maximum number of other users’ avatars to be
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`
`
`2
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`Patent Owner's Exhibit 2100
`Page 2 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 3 of 19
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`displayed. D. 274-01 at 13. Claim 8 (incorporating the method of claim 6 which is a “method for
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`enabling a plurality of users to interact in a virtual space”) also involves a maximum number of
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`avatars by comparing the actual number of avatars that are not associated with the client process
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`based on the positions transmitted by the server process to the maximum number of avatars that
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`can be displayed. D. 274-1 at 13. Claim 13 (incorporating the software program of claim 11)
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`provides instructions for determining the other users’ avatars to be displayed by comparing the
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`actual number of the other users’ avatars (from the received positions) to the maximum number of
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`the other users’ avatars to be displayed. D. 274-1 at 14. Claim 16 (incorporating the software
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`program of claim 15) provides instructions for determining which avatars to be displayed from
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`comparing the determination of the actual number of avatars that are not associated with the client
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`process based on the positions transmitted by the server process to the maximum number of avatars
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`that can be displayed. D. 274-1 at 14.
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`
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` U.S. Patent No. 7,493,558 (“the ‘558 patent”)
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`
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`The ‘558 patent, a “system and method for enabling users to interact in a virtual space,”
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`was filed on November 2, 2006 and issued on February 17, 2009. D. 275 ¶ 22; D. 274-2 at 1.
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`Worlds continues to assert claims 5 and 7 of the ‘558 patent in this litigation. Similar to the claims
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`in the ‘690 patent, these claims achieve crowd control by filtering through a maximum number.
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`Claim 5 (incorporates the machine-readable medium of claim 40) provides that the avatars to be
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`displayed is determined by comparing “an actual number of avatars in the set associated said each
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`client process based on the positions transmitted by the server process” to “a maximum number of
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`avatars that can be displayed to the user associated with said each client process.” D. 274-2 at 14.
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`Claim 7 (incorporates the computer readable medium of claim 6) determines the avatars to be
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`displayed by comparing “an actual number of avatars that are not associated with the client process
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`
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`3
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`Patent Owner's Exhibit 2100
`Page 3 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 4 of 19
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`based on the positions transmitted by the server process” with “a maximum number of avatars that
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`can be displayed.” D. 274-2 at 14.
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`U.S. Patent No. 7,945,856 (“the ‘856 patent”)
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`
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`The ‘856 patent, a “system and method for enabling users to interact in a virtual space.”
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`was filed on January 13, 2009 and issued on May 17, 2011. D. 275 ¶ 36; D. 274-3 at 1. This
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`patent serves to achieve crowd control by filtering information by “fewer than all” methods.
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`Worlds presses claim 1 of the ‘856 patent. Claim 1 is a “method for enabling a first user to interact
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`with second users in a virtual space . . . , the method comprising: (a) receiving by the first client
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`process from the server process received positions of selected second avatars; and (b) determining,
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`from the received positions, a set of the second avatars that are to be displayed to the first user,
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`wherein the first client process receives positions of fewer than all of the second avatars. D. 274-
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`3 at 24.
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`U.S. Patent No. 8,082, 501 (“the ‘501 patent”)
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`
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`The ‘501 patent, a “system and method for enabling users to interact in a virtual space,”
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`was filed on March 19, 2009 and issued on December 20, 2011. D. 275 ¶ 52; D. 274-4 at 1. This
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`patent also achieves crowd control through filtering information by a condition or conditions.
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`Worlds asserts claims 1-8, 10, 12, and 14-16 of the ‘501 patent.
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`
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`Claim 1-8 concern a “method for enabling a first user to interact with other users in a virtual
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`space, . . ., the method comprising the steps” that vary with each claim. D. 274-4 at 23. In claim
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`one, the steps involve customizing “an avatar in response to input by the first user,” receiving
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`“position information associated with fewer than all of the other user avatars in an interaction room
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`of the virtual space, from a server process, wherein the client device does not receive position
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`information of at least some avatars that fail to satisfy a participant condition imposed on avatars
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`
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`4
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`Patent Owner's Exhibit 2100
`Page 4 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 5 of 19
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`displayable on a client device display of the client device; determining, . . . a displayable set of the
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`other user avatars associated with the client device displayed; and displaying, . . . the displayable
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`set of the other user avatars associated with the client device display.” Id. Claims 2-8 and 10 add
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`or alter the conditions of the method in Claim 1. Id.
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`
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`Claim 12 is a “client device for enabling a first user to interact with other users in a virtual
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`space” and is comprised of “a memory storing instructions” and “a processor programmed using
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`the instructions” for various conditions for “determin[ing] a set of the other users’ avatars
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`displayable on a screen associated with the client device.” Id. at 23. Claim 14 is an “article of
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`manufacture comprising at least one memory storing computer code for enabling a first user to
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`interact with other users in a virtual space, . . . the computer code comprising instructions for
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`conditions for customizing, receiving, determining and then displaying the other user avatars.” Id.
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`Claims 15 and 16 incorporate the article of manufacture in Claim 14 and add or alter the conditions
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`for displaying the other user avatars. Id.
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`
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`U.S. Patent No. 8,145,998 (“the ‘998 patent”)
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`The ‘998 patent, a “system and method for enabling users to interact in a virtual space, was
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`filed on March 19, 2009 and issued on March 27, 2012. D. 275 ¶ 92; D. 274-5 at 1. Similar to
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`claims in the ‘501 patent, the claims in this patent achieve crowd control through filtering
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`information by conditions. Worlds asserts Claim 18 here. D. 283 at 10. Claim 18 is a “system
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`for displaying interactions in a virtual world among a local user and a plurality of remote users,
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`comprising a database . . .; a memory storing instructions and a processor programmed using
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`instructions to receive position information [based on certain conditions], receive orientation
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`information [based on certain conditions], generate on a graphic display a rendering of a
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`perspective view of the virtual world in three dimensions [based on certain conditions], and change
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`5
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`Patent Owner's Exhibit 2100
`Page 5 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 6 of 19
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`in three dimensions the perspective view of the rendering of the graphic display of the virtual world
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`in response to user input.” D. 274-5 at 22-23.
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`
`
`B.
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`Inter Partes Review before the PTAB
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`In May and June 2015, a third party, Bungie, Inc., filed a series of IPR petitions challenging
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`the validity of the asserted claims of the Patents-In-Suit under 35 U.S.C. § 102 and 103. The Patent
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`Trial and Appeal Board (“PTAB”) held six IPRs covering all forty claims asserted in this lawsuit
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`before the stay, issuing final written decisions in all six proceedings. The PTAB determined that
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`34 of the claims were unpatentable: claim 1 of the ‘856 patent, claims 1-3, 5-7, 10-12, 14, 15, 17
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`and 19 of the ‘690 patent, claims 4, 6, 8 and 9 of the ‘558 patent, claims 1, 18 and 20 of the ‘998
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`patent, and claims 1-8, 10, 12, 14-16 of the ‘501 patent. D. 273 at 8-9.
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`The PTAB determined that the petitioner did not demonstrate by a preponderance of
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`evidence that claims 4, 8, 13 and 16 of the ‘690 patent and claims 5 and 7 of the ‘558 patent were
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`invalid based on the evidence and arguments presented in the proceedings. Id. at 9. Worlds
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`appealed the PTAB’s decisions regarding the ‘856 patent (IPR2015-01264), the ‘501 patent
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`(IPR2015-01319) and the ‘998 patent (IPR2015-01321). In Worlds Inc. v. Bungie, Inc., 903 F.3d
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`1237 (Fed. Cir. 2018), the Federal Circuit vacated and remanded these final written decisions on
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`procedural grounds, and without addressing the PTAB’s substantive findings. Id. On September
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`7, 2018, the Federal Circuit vacated and remanded Final Written Decisions in IPR2015-01264
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`(related to ‘856 patent), IPR2015-01319 (related to ‘501 patent) and IPR2015-01321 (related to
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`‘998 patent) back to the PTAB. D. 283 at 15 (citing Worlds, 903 F.3d at 1237). On January 14,
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`2020, the PTAB issued a Termination Vacating Institutions and Dismissing Proceedings on
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`Remand in IPR2015-01264 (related to ‘856 patent), IPT2015-01319 (related to ‘501 patent) and
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`IPR2015-01321 (related to ‘998 patent). Id.
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`
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`6
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`Patent Owner's Exhibit 2100
`Page 6 of 19
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`
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 7 of 19
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`
`
`1.
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`PTAB findings
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`The PTAB’s IPR decision may be relied upon as persuasive authority before this Court.
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`Ultratec, Inc. v. Sorenson Comms., Inc., No 14-cv-66-jdp, 2015 WL 5330284, at *14 (W.D. Wis.
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`Sept. 11, 2015) (noting that the court was “not bound by the PTAB decision, but its reasoning is
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`persuasive”); DSS Tech. Mgmt., Inc. v. Apple, Inc., No. 14-cv-05330-HSG, 2015 WL 1967878,
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`at *4 (N.D. Cal. May 1, 2015) (observing that “PTAB's invalidity analyses ‘would likely prove
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`helpful to this Court,’ whether or not the standard applied is identical to the one this Court must
`
`apply in the litigation.”) (quoting Black Hills Media, LLC v. Pioneer Electronics (USA) Inc., No.
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`CV 14-00471 SJO (PJWx), 2014 WL 4638170, at *6 (C.D. Cal. May 8, 2014)); Black Hills, 2014
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`WL 4638170, at *6 (noting that the “Court may also derive benefit from the PTAB's claim
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`construction for the patents under review” and that “[w]hile the PTAB interprets claim terms using
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`the ‘broadest reasonable construction,’ 37 C.F.R. § 42.100(b), its analysis would likely prove
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`helpful to this Court, no matter its final determination”); CANVS Corp. v. United States, 118 Fed.
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`Cl. 587, 593 (2014) (observing that “even if [certain claims] were to survive PTAB review, the
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`PTAB's final decision sustaining these claims would contain analysis that would be helpful to the
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`court”). Accordingly, although not bound by its findings or rulings, this Court may consider the
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`PTAB findings as persuasive authority in determining whether the Patents-In-Suit are patent
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`eligible.
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`With nineteen of the forty original asserted claims having been fully adjudicated, Worlds
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`is asserting the remaining twenty-one claims in this suit: claim 1 of the ‘856 patent, claims 4, 8,
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`13 and 16 of the ‘690 patent, claims 5 and 7 of the ‘558 patent, claims 1-8, 10, 12 and 14-16 of the
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`‘501 patent and claim 18 of the ‘998 patent. D. 269 at 2. Although now vacated, the substance of
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`the PTAB’s prior rulings serves to support the Court’s analysis below that the client-side and
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`
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`7
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`Patent Owner's Exhibit 2100
`Page 7 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 8 of 19
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`server-side filtering of position information is not inventive. D. 274-7 (PTAB’s Final Written
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`Decision on the ‘856 patent); D. 274-8 (PTAB’s Final Written Decision on the ‘501 patent); D.
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`274-9 (PTAB’s Final Written Decision on the ‘998 patent).
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`C.
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`Relevant Procedural History
`
`On March 30, 2012, Worlds initiated this action. D. 1. The Court allowed Defendants’
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`
`
`
`motion for summary judgment as to invalidity, D. 83, concluding that the Patents-In-Suit were not
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`entitled to claim priority on November 13, 1995, the filing date of Worlds’ Provisional
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`Application. D. 124. Worlds has pressed the remaining infringement claims as to infringement
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`from the issuance of the certificates of correction by the PTO. D. 127 at 2. After a Markman
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`hearing, the Court constructed disputed claim terms in an Order issued June 26, 2015. D. 153.
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`The parties then exchanged updated infringement and invalidity contentions. D. 160, 164. The
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`Court issued a Scheduling Order on September 16, 2015, adopting the pretrial schedule proposed
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`by the parties. D. 181. On December 16, 2015, the parties jointly moved to stay this proceeding
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`pending resolution of the IPR petitions before the PTAB. D. 198. The Court allowed that motion
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`and issued a stay and ordered periodic status updates. D. 201. Over the course of the next few
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`years, while the IPR proceedings were ongoing, the parties filed periodic status reports and
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`requests to extend the stay, which the Court allowed. See D. 201 to 235. At the request of Worlds
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`seeking a status conference, D. 239, and after briefing from the parties regarding the status of the
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`matter, the Court held a status conference on April 16, 2020 and then set a further schedule for this
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`case, including a deadline by which Activision could file the now pending motion. D. 262, 264.
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`On May 19, 2020, Activision filed this motion for summary judgment that the remaining patent
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`claims are invalid under 35 U.S.C § 101. D. 272. The Court heard arguments and took the matter
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`under advisement. D. 286.
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`
`
`8
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`Patent Owner's Exhibit 2100
`Page 8 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 9 of 19
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`III.
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`
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`Standard of Review
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`A court will grant a moving party’s motion for summary judgment when there is no genuine
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`dispute of material fact and the moving party is entitled to judgment as a matter of law. Fed. R.
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`Civ. P. 56(a). A dispute is genuine if “the evidence about the fact is such that a reasonable jury
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`could resolve the point in favor of the nonmoving party,” Vélez–Rivera v. Agosto–Alicea, 437
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`F.3d 145, 150 (1st Cir. 2006) (quoting United States v. One Parcel of Real Prop., 960 F.2d 200,
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`204 (1st Cir. 1992)) (internal quotation marks omitted), and a fact is material if it is “one that might
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`affect the outcome of the suit under the governing law.” Id. (quoting Morris v. Gov’t Dev. Bank
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`of P.R., 27 F.3d 746, 748 (1st Cir. 1994)) (internal quotation marks omitted). In resolving a motion
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`for summary judgment, the Court scrutinizes the record in the light most favorable to the summary
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`judgment opponent and draws all reasonable inferences to that party’s advantage. Alliance of
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`Auto. Mfrs. v. Gwadosky, 430 F.3d 30, 34 (1st Cir. 2005).
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`
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`An issued patent is presumed valid. 35 U.S.C. § 282. This “statutory presumption of
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`validity” applies when a party challenges a patent under 35 U.S.C. § 101. CLS Bank Intern. V.
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`Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir. 2013). “[T]he burden is on the party
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`challenging the validity of a patent to show that it is invalid by clear and convincing evidence.”
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`Minnesota Min. & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002); see Budde
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`v. Harley-Davidson, Inc., 250 F.3d 1369, 1376 (Fed. Cir. 2001). Consequently, “a moving party
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`seeking to invalidate a patent at summary judgment must submit such clear and convincing
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`evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly Co. v. Barr Labs.,
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`Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). When facts associated with a patent invalidity are not in
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`dispute, the court determines “whether summary judgment of invalidity is correct by applying the
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`law to the undisputed facts.” Myspace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1257 (Fed. Cir.
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`
`
`9
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`Patent Owner's Exhibit 2100
`Page 9 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 10 of 19
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`2012) (citing Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1366 (Fed. Cir. 2011)). For the
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`reasons stated below, the Court concludes, on this undisputed record, that the remaining patent
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`claims are invalid as a matter of law under §101.
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`IV. Discussion
`
`
`A.
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`Patent Eligibility Under 35 U.S.C. § 101
`
`
`1. Legal Framework
`
`
`Under the Patent Act, “[w]hoever invents or discovers any new and useful process,
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`machine, manufacture, or composition of matter, or any new and useful improvement thereof, may
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`obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101.
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`The claims asserted here as to the Patents-In-Suit describe a “process,” defined as a “process, art
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`or method, and includ[ing] a new use of a known process, machine, manufacture, composition of
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`matter, or material.” Id. § 100(b). Activision challenges that this process is patentable under §
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`101.
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`Under § 101, certain categories are not eligible for patent protection. Diamond v.
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`Chakrabarty, 447 U.S. 303, 308 (1980). “Phenomena of nature, though just discovered, mental
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`processes, and abstract intellectual concepts are not patentable, as they are the basic tools of
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`scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Although “too
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`broad an interpretation of this exclusionary principle could eviscerate patent law,” since “all
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`inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural
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`phenomena, or abstract ideas,” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
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`71 (2012), “monopolization of those tools [of scientific and technological work] through the grant
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`of a patent might tend to impede innovation more than it would tend to promote it.” Id.
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`
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`10
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`Patent Owner's Exhibit 2100
`Page 10 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 11 of 19
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`Mayo is instructive in this regard. In that case, the Supreme Court addressed the patent
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`eligibility of claims covering processes that help doctors determine the appropriate dosage of
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`thiopurine drugs for patients with autoimmune diseases. Mayo, 566 U.S. at 74-75. The claims
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`described the relationships between the quantity of certain thiopurine metabolites in the blood and
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`the likelihood that a drug would be ineffective or produce unwanted side effects. Id. at 74. More
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`specifically, the patent claimed a process of administering a drug containing a metabolite to a
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`subject and determining the subject's level of that metabolite, where a certain reading of the
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`metabolite would indicate the need to change the dose of the drug. Id. at 75.
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`The Supreme Court concluded that the patent was invalid under § 101 because the patent
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`effectively claimed a law of nature, “namely, relationships between concentrations of certain
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`metabolites in the blood and the likelihood that a dosage of a thiopurine drug will prove ineffective
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`or cause harm.” Id. at 75. The Supreme Court reviewed each element in the patent beyond the
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`recitation of this natural chemical relationship and then all the elements together to determine
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`whether the claims added enough to qualify as a patent-eligible process “applying” a natural law.
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`The “administering” step simply referred to a pre-existing audience of doctors treating patients
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`with certain diseases. Id. at 77. The “wherein” clauses informed the doctor of the relevant natural
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`laws: the relationships between the metabolite concentration in the blood and the necessary drug
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`dosage adjustment. Id. The “determining” step instructed the doctor to measure the level of the
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`relevant metabolite through any process of the doctor's choosing. Id. Finally, the steps together
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`amounted to “nothing significantly more than an instruction to doctors to apply the applicable laws
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`when treating their patients.” Id. at 78. Mayo ruled each of these elements insufficient to transform
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`the underlying natural law into something patentable: “the claims inform a relevant audience about
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`certain laws of nature; any additional steps consist of well-understood, routine, conventional
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`11
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`Patent Owner's Exhibit 2100
`Page 11 of 19
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`Case 1:12-cv-10576-DJC Document 358 Filed 04/30/21 Page 12 of 19
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`activity already engaged in by the scientific community; and those steps, when viewed as a whole,
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`add nothing significant beyond the sum of their parts taken separately.” Id. at 80.
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`Even when a process involves a computer-generated process, it still may not be patent-
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`eligible under § 101. In Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014), the Supreme Court
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`ruled that a computerized scheme for mitigating settlement risk was not patent eligible under §
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`101. As Alice framed the analysis in Mayo, a patent that claims a law of nature, natural
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`phenomenon or an abstract idea is not patent eligible unless it has an element or combination of
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`elements that provide an “inventive concept” beyond that law, phenomenon or abstract idea. Id.
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`at 216. If in the first step, the patent claims a law of nature, natural phenomenon or an abstract
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`idea, in the second step, a court proceeds to the “search for an ‘inventive concept’—i.e., an element
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`or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to
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`significantly more than a patent upon the ineligible concept itself.’” Id. at 217-18 (quoting Mayo,
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`566 U.S. at 74–77). In Alice, the Supreme Court applied this two-step analysis to a patent claiming
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`a method of using a third party to mitigate settlement risk. Id. at 213–214. In doing so, the court
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`concluded that the claims were directed to the abstract idea of intermediated settlement and
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`proceeded to consider whether the elements of the claim, either individually or in combination,
`
`were sufficient to transform the claims into a patentable invention. Id. at 216–218. Ruling that
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`the “claims at issue amount to nothing significantly more than an instruction to apply the abstract
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`idea of intermediated settlement using some unspecified, generic computer,” the Supreme Court
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`held the patent invalid for want of an inventive concept. Id. at 225. Like Mayo, the claim elements
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`were well-understood, routine and conventional activities known in the industry. Id. “[E]ach step
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`does no more than require a generic computer to perform generic computer functions.” Id. The
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`claims do “nothing significantly more” than “instruct to apply the abstract idea of intermediated
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`settlement using some unspecified, generic computer.” Id. at 226.
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`Also as in Mayo, Alice distinguished the patent held to be patent eligible in Diamond v.
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`Diehr, 450 U.S. at 175 (1981). The patent in Diehr claimed a method for molding raw rubber into
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`cured products using a mathematical formula. Alice, 573 U.S. at 223 (citing Diehr, 450 U.S. at
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`177-78). The rubber-molding method in Diehr was patentable: because it employed a “well-
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`known” mathematical equation, but it used that equation in a process designed to solve a
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`technological problem in “conventional industry practice.” Id. (quoting Diehr, 450 U.S. at 177-
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`178). The invention in Diehr used a “thermocouple” to record constant temperature measurements
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`inside the rubber mold—something “the industry ha[d] not been able to obtain.” Id. at 178. The
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`temperature measurements were then fed into a computer, which repeatedly recalculated the
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`remaining cure time by using the mathematical equation. Id. at 178–79. These additional steps,
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`“transformed the process into an inventive application of the formula.” Alice, 573 U.S. at 223
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`(quoting Mayo, 566 U.S. at 76).
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`The parties do not dispute that the claims that Activision focuses upon in its motions, claim
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`1 of ‘856 patent, claim 4 of the ‘690 patent, claim 1 of the ‘501 patent, and claim 18 of the ‘998
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`patent are representative claims of those that remain. D. 281 at 7 n.3; see D. 276 at 8. Since
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`Worlds in its opposition focuses on claim 4 of the ‘690 patent, D. 276 at 8, the Court does so here.
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`Claim 4 of the ‘690 patent, D. 274-01, provides as follows:
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`2. Step One: Claims are Directed to an Abstract Idea
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`As noted above, the first step in the § 101 analysis asks, “whether the claims at issue are
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`directed to one of [the] patent-ineligible concepts,” namely laws of nature, natural phenomena, or
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`abstract ideas. Alice, 573 U.S. 208, 216. The parties dispute whether World’s patents are directed
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`to patent-ineligible concepts, namely the abstract idea of “filtering” (here of “position
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`information”) which amounts to “crowd control.” D. 276 at 6; D. 281 at 2 n.2. Worlds contends
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`that their claims are “directed to a novel client-server computer network architecture for 3-D virtual
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`worlds.” Id. This description alone does not convert the patents into patent-eligible inventions.
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`This Court’s Markman Order acknowledged that the claims, including the representative ‘690
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`patent claim, are designed to accomplish crowd control through filtering (i.e., the “determining”
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`and “receiving” steps), D. 153 at 8-10, See. e.g., D. 274-1 at 5, 13. Worlds maintained its position
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`in this case, D. 281 at 5 (citing Worlds in D. 68 at 4) and in the IPR proceedings that its patents
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`were directed at a method of “crowd control” and that these claims are the filtering function to do
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`so. D. 273 at 15-16 (citing Worlds’ statements and filings before PTAB).
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`Such filtering is, as Activision asserts, “a fundamental and well-known concept for
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`organizing human activity,” and is patent ineligible. D. 273 at 16; see Bascom Global Internet
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`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (agreeing, under step
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`one of the Mayo/Alice analysis that “filtering content is an abstract idea because it is a
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`longstanding, well-known method of organizing human behavior, similar to concepts previously
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`found to be abstract”). That is, “the claims do nothing more than recite a general client-server
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`computer architecture to perform routine functions of filtering information to address the generic
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`problem of crowd control.” D. 281 at 2.
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`Such conclusion is consistent with the first-step analysis in Mayo and Alice and the rulings
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`in other patent cases involving filtering information claims. These claims, like those in Mayo,
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`involve a natural phenomenon, that is achieving crowd control thru the filtering of information.
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`As the representative claim, the receiving step of claim 4 of the ‘690 patent is about receiving
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`position information and the determining step tells the relevant audience to determine the
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`maximum number by whatever method and the comparing is to compare the actual number to the
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`determined maximum number to determine which of the other users’ avatars are displayed. The
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`steps are open-ended and instruct the audience to “engage in well-understood, routine,
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`conventional activity.” Mayo, 566 U.S. at 79. That is, “to consider the three steps as an ordered
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`combination adds nothing to the laws of nature that is not already present when the steps are
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`considered separately.” Id. This is true whether focusing on the “maximum number” claims as in
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`the ‘690 patent and ‘558 patent, or the “fewer than all” claim in the ‘856 patent or the “condition”
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`steps in the ‘501 patent and the ‘998 patent.
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`The rulings in other cases support this conclusion as well. For one example, in Fuzzysharp
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`Techs. Inc. v. Intel Corp., No. 12-cv-4413, 2013 WL 5955668, at *13 (N.D. Cal. Nov. 6, 2013),
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`aff’d, 595 F. Appx 996 (Fed. Cir. 2015), the court addressed claims that stated a method “for
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`reducing the visibility related computation calculations in a certain field of use (such as ‘3-D
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`computer graphics’) followed by method steps to perform the reduction.” Id. at *11. The court
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`there held that the claims were directed to an abstract idea as the patent purported to cover all
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`applications of such filtering in the field of 3D computer graphics. Id. at *11. For another example,
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`in Intellectual Ventures II LLC v. JP Morgan Chase & Co., No. 13-cv-3777, 2015 WL 1941331,
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`at *8 (S.D.N.Y. Apr. 28, 2015), the court considered a patent for a method for filtering a packet of
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`information based upon the contents of two or more such packets. Id. at *1. The court in that case
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`concluded that the asserted claims were patent ineligible at step 1 of the Mayo/Alice analysis for
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`three reasons. First, the claim amounted to a “mental process” for filtering a packet of information
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`and does not provide anything “concrete” to make it patent eligible. Id. Second, the claim was
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`broad enough to raise “concerns of preemption.” Id. Since it is not limited to a particular
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`application, but “covers all network filtering by an